[00:00:01] Speaker 04:
We have three argued cases this morning.

[00:00:03] Speaker 04:
The first is number 18-1067, Blast Motion, Hink versus Yanku.

[00:00:09] Speaker 04:
Mr. Argenti.

[00:00:13] Speaker 03:
Good morning.

[00:00:17] Speaker 03:
Matt Argenti on behalf of Appellant Blast Motion.

[00:00:19] Speaker 03:
May it please the court.

[00:00:21] Speaker 03:
The issues in this case all stem from terribly deficient IPR petitions.

[00:00:26] Speaker 03:
It's important to consider at the outset what those deficiencies look like.

[00:00:29] Speaker 03:
The petitioner didn't explain what the prior art was teaching in various embodiments and in fact didn't even acknowledge that there were various different embodiments.

[00:00:38] Speaker 03:
The petitioner lumped disparate aspects of disclosure together in string citations without explaining whether or how they related to each other.

[00:00:46] Speaker 03:
The petition lacked any discussion of rationale to combine.

[00:00:50] Speaker 03:
And the petition was so generally sloppy that the board expressly refused to consider anything cited in the supporting materials but not in the petition itself.

[00:00:59] Speaker 03:
Because of this, once the board decided to institute, it had no record upon which it could explain obviousness in a manner consistent with control and law, and that's reflected in the decision.

[00:01:10] Speaker 03:
The patent claims at issue are directed to methods of capturing and analyzing motions.

[00:01:14] Speaker 03:
For example, in the sports performance context, like analyzing a golf swing or baseball swing.

[00:01:19] Speaker 03:
The claims have two main components.

[00:01:21] Speaker 03:
One, a motion capture hardware element that captures motion data and transmits it wirelessly.

[00:01:27] Speaker 03:
And two, a mobile device that receives and analyzes that data and displays the associated information.

[00:01:34] Speaker 03:
In finding the patent claims obvious, the board erred with respect to both of those two main components, each of which independently warrants remand.

[00:01:43] Speaker 03:
I'm going to address the display requirement first, which is a different order than what we talked about it in the briefing.

[00:01:48] Speaker 03:
But I think there are undisputed issues that have been clarified in the briefing that are dispositive and merit remand.

[00:01:55] Speaker 04:
Do you think the claims require simultaneous display?

[00:01:59] Speaker 04:
No, that's not our position.

[00:02:01] Speaker 04:
Then what is your position since the prior art pretty clearly talks about being able to display both past swings and real-time swings?

[00:02:15] Speaker 03:
Our position is that the display does require display of two sets of information, which is the data that's previously recited in the claim as being collected,

[00:02:24] Speaker 03:
as well as separate previously stored data.

[00:02:28] Speaker 03:
And when you look to the Mahajan reference, there are a couple of issues.

[00:02:33] Speaker 03:
And one is that there's a lot of post-hoc rationalization going on.

[00:02:37] Speaker 03:
It's been a moving target as far as what the disclosure is exactly that's being relied on.

[00:02:42] Speaker 03:
And as I just mentioned, and as we've pointed out.

[00:02:44] Speaker 04:
The board is pretty clear that they talk about the parts of Mahajan that talk about you can either

[00:02:53] Speaker 04:
save the data or see it in real time.

[00:02:56] Speaker 04:
What's the matter with seeing that as a disclosure?

[00:02:59] Speaker 03:
Well, the board misinterpreted that disclosure.

[00:03:01] Speaker 03:
And I don't think that was the board's interpretation of the prior or what the claims require, because what the board pointed to was displaying a single set of data, a single set of motion captured data, either in real time as you collected and analyze it or saving it and displaying it later.

[00:03:21] Speaker 03:
And that's not what the claims require.

[00:03:22] Speaker 03:
The claims require a display of two sets of data, both the currently collected and analyzed data that's recited earlier in the claim, as well as previously stored data, which is different.

[00:03:33] Speaker 03:
That seems to be an argument that has to be done simultaneously.

[00:03:38] Speaker 04:
I'm not following what you're saying.

[00:03:40] Speaker 03:
It's not going to a simultaneous display, but what it does require is that there have to be two sets of data.

[00:03:47] Speaker 03:
And displaying data now or displaying that same data later

[00:03:51] Speaker 03:
is not displaying two sets of data.

[00:03:53] Speaker 01:
Why isn't the board's reference to, I think is it paragraph 66 of Mahajan, which I think it referred to a handful of times, enough even if some other stuff the board said would not be enough?

[00:04:10] Speaker 03:
Paragraph 66 of Mahajan at best describes collecting and storing data.

[00:04:17] Speaker 03:
It does not describe anything about the display of data.

[00:04:25] Speaker 04:
Well, it's 60.

[00:04:26] Speaker 04:
It talks about multiple swings, compilation of this data, or statistical number of golf swings.

[00:04:37] Speaker 03:
Exactly.

[00:04:38] Speaker 03:
So collecting, analyzing the data is not the same thing as displaying the data.

[00:04:43] Speaker 03:
What that paragraph doesn't say is anything like the display that's recited in our claims.

[00:04:48] Speaker 01:
Right, but a display system for multiple swings.

[00:04:52] Speaker 01:
Since multiple swings occur over

[00:04:56] Speaker 01:
a period of time that sure sounds like at least two data packages.

[00:05:04] Speaker 01:
And the display system for that would seem to be a system for displaying that.

[00:05:09] Speaker 01:
Maybe not on a split screen, but you're not arguing for a simultaneous showing on a split screen, but that the display system has to be able to show two different data packages.

[00:05:21] Speaker 01:
Why doesn't that say that?

[00:05:23] Speaker 03:
It doesn't say it because, again, there's a disconnect between the disclosure that refers to collecting and analyzing the data and separate disclosure that refers to displaying data.

[00:05:33] Speaker 03:
To the extent it talks about displaying data, it is not talking about, or at least it hasn't been explained that it's talking about displaying the two sets of data as recited in the claims.

[00:05:46] Speaker 03:
So another thing I want to point out with respect to the analysis and the director's brief in particular, and even the board,

[00:05:52] Speaker 03:
is, again, that this has been a moving target all along.

[00:05:55] Speaker 03:
This is post hoc rationalization to the extent they're pointing to something and offering explanation that petitioner never offered in the petition.

[00:06:12] Speaker 03:
So unless there are any more questions on that particular issue, I just want to point out

[00:06:18] Speaker 03:
It's undisputed that the board applied the incorrect claim construction.

[00:06:22] Speaker 03:
This is something that we argued in our opening brief, and the director had no response to.

[00:06:26] Speaker 03:
So the fact that the board applied the wrong claim construction... I mean, it's literally undisputed, but it's not agreed to.

[00:06:36] Speaker 03:
That's great.

[00:06:37] Speaker 03:
They have no response.

[00:06:39] Speaker 03:
And so this is something that... And I think it's plain from reading the board's decision that the board was pointing to disclosure

[00:06:46] Speaker 03:
regarding displaying information now or displaying the same set of data later.

[00:06:50] Speaker 03:
That's not what the claims require.

[00:06:53] Speaker 03:
So that merits vacating that aspect of the decision and remanding for consideration under the proper construction and consideration limited to the evidence that's cited in the petition.

[00:07:04] Speaker 03:
Now, there's a second issue with respect to the display limitation.

[00:07:08] Speaker 03:
And that's that it's likewise undisputed that the board interpreted Mahajan in a way that was never proposed by either party.

[00:07:15] Speaker 03:
Mahajan has a discrete multi-user embodiment involving a pitcher, catcher, and host hardware components.

[00:07:22] Speaker 03:
And in that embodiment, the catcher and the host are discrete physical devices.

[00:07:27] Speaker 03:
Mahajan describes them as a laptop and a wireless receiver that are connected via a serial cable.

[00:07:33] Speaker 03:
Petitioner never asserted that the catcher and the host could be contained in a single cell phone or PDA.

[00:07:39] Speaker 03:
The first time anyone heard that was in the board's final written decision.

[00:07:42] Speaker 03:
It was improper for the board to apply a new theory in the final written decision.

[00:07:47] Speaker 03:
So at minimum, that aspect of the decision should also be vacated and remanded so that BLAST has an opportunity to address it with briefing and evidence, including expert testimony.

[00:07:57] Speaker 03:
But more importantly, the board's conclusion on that point is plainly incorrect, as it is irreconcilable with Mahajan's expressed description of the catcher and the host as two different physical devices.

[00:08:09] Speaker 03:
You see that in, for example, paragraph 75 of Mahajan.

[00:08:12] Speaker 04:
How does that affect the result if we were to conclude that these other references in paragraph 63 and 66, for example, disclose this claim limitation?

[00:08:27] Speaker 03:
I agree that if the court were to find the disclosure in paragraph 63 and 66, which again were analyzed under an improper claim construction and don't get to the specific display that's recited, but if the court were to disagree with us on that point,

[00:08:41] Speaker 03:
then the pitcher-catcher host doesn't change that conclusion.

[00:08:45] Speaker 03:
They're really two separate issues.

[00:08:51] Speaker 03:
Now, those two issues aren't the only errors that the board made with respect to the display limitation.

[00:08:58] Speaker 03:
But just considering those issues, which again, we say are undisputed, it demonstrates that the decision should be vacated and remanded.

[00:09:09] Speaker 04:
Are there errors with respect to the claim limitation about this part?

[00:09:12] Speaker 04:
What are the other errors?

[00:09:14] Speaker 03:
I think as we pointed out, in particular the post-hoc rationalization, those are some of the problems.

[00:09:21] Speaker 03:
The fact that the board was reaching conclusions beyond just the cell phone and PDA issue on the multi-user embodiment, the board reached conclusions that were

[00:09:34] Speaker 03:
not really laid out in the petition in any way, because again, the petition really just presented a number of string sites without any explanation.

[00:09:42] Speaker 03:
So there were a lot of problems, but I think at this point, it's been distilled down to two undisputed issues that are dispositive.

[00:09:50] Speaker 03:
Unless there are any other questions on the display limitation, I'll turn to the memory limitation.

[00:09:56] Speaker 03:
The board's errors with respect to the motion capture hardware element provide a second independent basis for remand.

[00:10:02] Speaker 03:
Here, the issue is one of motivation to combine.

[00:10:04] Speaker 03:
Simply put, neither the petitioner nor the board ever explained why a skilled artisan would have modified the motion capture device described in Mahajan by adding separate memory hardware.

[00:10:15] Speaker 03:
Well, they say that there's an advantage in avoiding the need for a radio transmission.

[00:10:23] Speaker 03:
But that's, I'm not sure that they actually do say that.

[00:10:26] Speaker 03:
The director might say it, but I'm not sure that that was a good question.

[00:10:28] Speaker 03:
No, I think it's there in the decision.

[00:10:33] Speaker 03:
That's also inconsistent, though, with, I'm sorry, did you want to point to an aspect?

[00:10:48] Speaker 04:
Well, go ahead.

[00:10:49] Speaker 04:
I'm not finding the reference right now.

[00:10:50] Speaker 01:
I think they did say something about, what is it, 22 and 23 or something of the appendix.

[00:10:56] Speaker 01:
And I think your point was

[00:10:58] Speaker 01:
Since the claim requires the radio, you can't get to the claim by saying who needs the radio.

[00:11:03] Speaker 03:
The claim requires wireless transmission.

[00:11:05] Speaker 03:
The claim requires that the motion capture device include both a memory and a radio.

[00:11:10] Speaker 03:
And not only that, but when you look to Mahajan, Mahajan clearly says that what we are doing is providing real-time transmission using a radio.

[00:11:19] Speaker 02:
Does Mahajan incorporate Li by reference, and Li does show memory?

[00:11:25] Speaker 03:
Mahajan does say that it incorporates Li-Bai reference.

[00:11:30] Speaker 02:
And Li discloses the memory you're talking about.

[00:11:32] Speaker 03:
That's correct.

[00:11:33] Speaker 02:
What Li discloses... Well, how much motivation does one require?

[00:11:38] Speaker 02:
I mean, it's already there, right?

[00:11:40] Speaker 03:
Well, what Li discloses is a prior motion capture device that includes a microcontroller and a memory, but no radio.

[00:11:47] Speaker 03:
What Mahajan does is look to Li

[00:11:50] Speaker 03:
say, that's the old way of doing it.

[00:11:52] Speaker 03:
Here are some drawbacks.

[00:11:53] Speaker 03:
It presents drawbacks.

[00:11:53] Speaker 03:
That's undisputed by the experts in the case.

[00:11:57] Speaker 03:
And then it says, here's a better way of doing it.

[00:11:59] Speaker 03:
And the better way of doing it includes a microcontroller and a radio, but no memory.

[00:12:04] Speaker 03:
So there's no disclosure.

[00:12:05] Speaker 02:
Why wouldn't the procedure get the memory and lead and just bring it over to Mahjong and combine it?

[00:12:14] Speaker 03:
That's not our burden to answer that question.

[00:12:16] Speaker 03:
That was petitioner's burden to present the case of why somebody would have done it.

[00:12:20] Speaker 03:
And that's simply nowhere to be found in the record.

[00:12:24] Speaker 03:
So we actually did present evidence to explain why a person of ordinary skill in the art would not have done it.

[00:12:30] Speaker 03:
But I want to make sure that I'm being clear that petitioner was the one who had to explain why it would have happened.

[00:12:37] Speaker 03:
And that is completely lacking in the record.

[00:12:40] Speaker 03:
But as far as why a person of ordinary skill.

[00:12:42] Speaker 04:
They relied on Lee, didn't they?

[00:12:43] Speaker 04:
the incorporation of lead?

[00:12:45] Speaker 03:
Correct, but all that is is disclosure of a motion capture device using microcontroller and a memory.

[00:12:52] Speaker 03:
There is absolutely no explanation anywhere.

[00:12:55] Speaker 02:
So what's your argument that there is no motivation to combine or there's motivation to combine, but it was just not put forward in sufficient terms?

[00:13:07] Speaker 03:
I don't know that I can separate those two.

[00:13:09] Speaker 03:
The argument is that the record

[00:13:11] Speaker 03:
in the IPR where petitioner had the burden doesn't present any motivation to comply.

[00:13:16] Speaker 02:
So you're saying the petitioner did not meet the motivation to comply?

[00:13:20] Speaker 03:
Absolutely.

[00:13:23] Speaker 03:
But as I was going to say, we went beyond that.

[00:13:25] Speaker 03:
It was not our burden to prove that someone would not have added memory to the Mahajan device, but we did present evidence on that point.

[00:13:33] Speaker 03:
We presented at least two categories.

[00:13:34] Speaker 04:
Well, you had claimed that the board said that those arguments that you made about the disadvantages

[00:13:41] Speaker 04:
weren't sufficient, right?

[00:13:43] Speaker 03:
Well, but the board didn't even consider one of the two categories of evidence that we presented.

[00:13:48] Speaker 03:
We presented both evidence regarding design considerations, saying that these motion capture devices need to be as streamlined and unobtrusive as possible.

[00:13:58] Speaker 03:
And that would lead a person of ordinary skill in the art away from adding memory, where it's not really relevant to what Mahajan's doing with its real-time transmission.

[00:14:07] Speaker 03:
So the design considerations that are unique to these types of devices

[00:14:10] Speaker 03:
was one category of evidence.

[00:14:12] Speaker 03:
And the court did address that.

[00:14:13] Speaker 03:
The board did address it, but it was addressed in a very flawed fashion following the same logic that we find in Polaris v. Arctic hat.

[00:14:22] Speaker 03:
And there's no way that can stand up.

[00:14:24] Speaker 04:
Polaris seems to me somewhat different in the sense that the subjective preference theory was used in Polaris

[00:14:39] Speaker 04:
address a teaching away argument and to dismiss a teaching away argument.

[00:14:43] Speaker 04:
We don't have a teaching away argument here, right?

[00:14:46] Speaker 04:
Is that correct?

[00:14:47] Speaker 04:
We argue that it could be considered a teaching away argument.

[00:14:51] Speaker 04:
Is it correct that there's no teaching away argument here?

[00:14:54] Speaker 03:
I would not say that's correct.

[00:14:55] Speaker 03:
I think the board is the one that... Where do you argue in your brief that there's a teaching away argument?

[00:15:02] Speaker 03:
We can get you that site.

[00:15:03] Speaker 03:
In the meantime, I see I'm running low on time.

[00:15:05] Speaker 03:
I just wanted to point out that we also presented a second category of evidence as to why a person of ordinary skill in the art would not have done this.

[00:15:12] Speaker 03:
And that goes to the fact that it would not have improved the functionality of the Mahajan real-time transmission device.

[00:15:18] Speaker 03:
That's addressed in a footnote on page seven, I believe, of our reply brief.

[00:15:23] Speaker 03:
The board never addressed that evidence at all.

[00:15:28] Speaker 04:
OK.

[00:15:28] Speaker 03:
Well, we'll give you two minutes for rebuttal.

[00:15:30] Speaker 03:
OK.

[00:15:30] Speaker 03:
Thank you.

[00:15:30] Speaker 03:
I'll have that site mentioned.

[00:15:38] Speaker 04:
Okay, Ms.

[00:15:39] Speaker 04:
Stewart.

[00:15:40] Speaker 00:
Good morning, may it please the court.

[00:15:42] Speaker 00:
I think what we have here with Mahajan is virtually an anticipation reference.

[00:15:47] Speaker 00:
And I think out of an abundance of caution, what the petitioner and the board were trying to do is say, well, if we don't find a literal teaching here because we have it so close, you know, where would we look?

[00:15:59] Speaker 00:
And starting with, and we agree, there are basically three elements in Mahajan, but starting with the general system,

[00:16:05] Speaker 00:
It says, you know, we don't really need an onboard memory because we do this real-time wireless transmission.

[00:16:11] Speaker 00:
But then it incorporates Lee by reference, which has the onboard memory.

[00:16:16] Speaker 00:
And then it points out in its third embodiment, we can modify our sensor to add storage.

[00:16:22] Speaker 00:
Does that mean it's all right in the reference between the incorporation of Lee and also the reference to the third embodiment?

[00:16:30] Speaker 00:
And in terms of the motivation,

[00:16:32] Speaker 00:
That third embodiment, which is called the body motion capture embodiment, says that you'd add the memory for storage of data.

[00:16:40] Speaker 01:
What are you pointing to specifically in Mahajan?

[00:16:43] Speaker 00:
That's paragraph 127, Your Honor.

[00:16:45] Speaker 00:
And that was pointed to in the petition at APPX 0320.

[00:16:52] Speaker 00:
And that was also referenced in the expert declarations.

[00:16:58] Speaker 00:
And I think that

[00:17:01] Speaker 00:
in and of itself states the rationale and is a sufficient rationale for the combination.

[00:17:13] Speaker 00:
And additionally, we don't see Mahajan as discrediting Lee's use of memory.

[00:17:20] Speaker 00:
We see Mahajan as complementing Lee's use of memory.

[00:17:27] Speaker 00:
And if you look at Lee and the

[00:17:29] Speaker 00:
the experts for both parties talk about this, Lee says, you know, you might lose your connection.

[00:17:34] Speaker 00:
You might have a signal.

[00:17:36] Speaker 00:
You might be transmitting a signal, but maybe the club gets too far from the receiver and you lose your connection.

[00:17:43] Speaker 00:
And so it would be helpful, you know, kind of as a backup to have this data storage feature.

[00:17:49] Speaker 00:
So frankly, we think really there's an explicit teaching here in the embodiment itself, but there's certainly other teachings and a sufficient motivation to combine.

[00:17:59] Speaker 00:
in the view of the director.

[00:18:01] Speaker 01:
In terms of- And this is all kind of independent of the borrowing of some of the Polaris language that we disapproved in our review of Polaris.

[00:18:18] Speaker 00:
Yes.

[00:18:18] Speaker 00:
And as your honors pointed out, in that, it was really a different situation, because they hadn't really established a strong Prumafacia case, because you had this safety issue.

[00:18:29] Speaker 00:
So, you know, placing a gas tank under a seat in an SUV or an ATV and raising it up and creating instability problems is far different than what we have here, which is really a teaching of different options.

[00:18:41] Speaker 04:
My recollection in Polaris, and you can correct me if I'm wrong about this, is that the problem there was that the board didn't analyze the advantages or disadvantages of having the fuel tank where it was.

[00:18:53] Speaker 04:
It just says, you know, this is a subjective preference.

[00:18:58] Speaker 00:
Yes.

[00:18:59] Speaker 00:
In fact, in Polaris, there wasn't even a separate analysis of those claims.

[00:19:03] Speaker 00:
They just incorporated by reference an analysis of other claims and set for the same reasons.

[00:19:09] Speaker 00:
It would be obvious here as well.

[00:19:10] Speaker 00:
So the Polaris decision was lacking in many respects.

[00:19:14] Speaker 00:
And as Your Honor pointed out, the court found that they failed to consider teaching away at all.

[00:19:19] Speaker 00:
And they wholly disregarded other teachings in that reference, which would have taught away.

[00:19:25] Speaker 00:
So we think it's distinguishable from the case here.

[00:19:30] Speaker 00:
But in terms of the rebuttal evidence, the board did consider the rebuttal evidence.

[00:19:35] Speaker 00:
It considered the weight limitations that the inventor was attempting to achieve, trying to keep it light, but also considering the flexibility of even with a small and light apparatus of having different functions.

[00:19:51] Speaker 00:
So that was considered by the board.

[00:19:53] Speaker 00:
And in terms of the board never considering the fact that it wouldn't be necessary, the board addressed this argument

[00:20:00] Speaker 00:
Whether or not a feature is necessary doesn't really go to the fact of whether it would be obvious to combine, and it's not really a teaching away.

[00:20:08] Speaker 00:
Turning next, if your honors have no more questions on memory, to the display limitation, which is the other limitation in dispute.

[00:20:19] Speaker 00:
We do feel that there is a claim construction.

[00:20:23] Speaker 00:
There's kind of a hidden claim construction issue here, which is,

[00:20:28] Speaker 00:
Do you have to have the real-time data and the previously stored data displayed at the same time?

[00:20:34] Speaker 00:
Frankly, I think the office is a little bit confused about what BLAST's position is on that.

[00:20:39] Speaker 00:
And that is the reason why both the board and the office is presenting evidence under both constructions.

[00:20:46] Speaker 00:
So if you don't have to display the data at the same time, if it's the real-time data and at some point in time previously stored data, we have that explicitly in the reference.

[00:20:57] Speaker 00:
They do have to be displayed at the same time.

[00:20:59] Speaker 00:
You have the multi-swing embodiment, which talks about looking at multiple pieces of data at the same time.

[00:21:08] Speaker 01:
Display at the same time, simultaneous display, think split screen.

[00:21:18] Speaker 01:
they don't contend that there has to be a split screen so that you can actually compare them right next to each other.

[00:21:25] Speaker 01:
They do contend that on that screen you have to be able to show data from two different time periods.

[00:21:33] Speaker 00:
Yes.

[00:21:33] Speaker 01:
Namely, you know, the first of the multi swings and the second of the multi swings.

[00:21:37] Speaker 00:
Right, or data.

[00:21:38] Speaker 01:
Watch this, then watch this, then watch this.

[00:21:40] Speaker 01:
Let's go back to the first one.

[00:21:42] Speaker 00:
Right, and I think that's an even easier case, frankly, for the office to make.

[00:21:47] Speaker 00:
You know, paragraph 66 in Mahajan says that the transmitted information, and here they're talking about multiple swings from different golfers and necessarily at different times, are stored by the computer analysis and display system.

[00:22:04] Speaker 00:
So there's, so Blast is saying, you know, the office is confusing analysis and display, but it's, the system goes hand in hand.

[00:22:13] Speaker 00:
That's what's taught in paragraph 66.

[00:22:16] Speaker 00:
And also,

[00:22:18] Speaker 00:
whether it's a split screen or not in the multiple user embodiment.

[00:22:22] Speaker 00:
And now I'm looking at paragraph 77.

[00:22:24] Speaker 00:
Mahajan says that the instructor is looking at the data from the students at a single glance.

[00:22:32] Speaker 00:
So that means necessarily that data is being presented at the same time for the instructor.

[00:22:40] Speaker 00:
I think a point of dispute.

[00:22:42] Speaker 00:
if you start looking at the multiple user embodiment, is that it then lacks a separate feature required by the claims, which is that it's on a cell phone or some kind of wireless device that has a wireless receiver combined with a wireless analysis and display.

[00:23:02] Speaker 00:
And here is where we get into the dispute of, well, did the board come up with this theory for the first time?

[00:23:11] Speaker 00:
is not accurate.

[00:23:12] Speaker 00:
This issue, the relationship between Paragraph 33 and Mahajan, which talks about the wireless transmission and the mobile device, and Paragraph 75, which defines what the pitcher, the catcher, and the host are, this was a theme that was really discussed throughout the entire IPR proceedings.

[00:23:31] Speaker 00:
Sometimes Paragraph 33 was discussed, and sometimes Paragraph 75 was discussed, and sometimes they were discussed together.

[00:23:38] Speaker 00:
And that's really why the office makes the point to blast that.

[00:23:43] Speaker 00:
If you have this issue with who brought it up when and was it raised in a sufficient manner before the board came decision, bring that to the board in the first instance.

[00:23:54] Speaker 00:
Say that there has been a problem.

[00:23:56] Speaker 00:
You don't feel like you've had a sufficient opportunity to respond.

[00:24:01] Speaker 00:
But don't flag the problem and then bring it for the first time to this court.

[00:24:07] Speaker 00:
you know, to be discussed.

[00:24:09] Speaker 00:
Because what happened was the specific argument wasn't raised in the petition, but the patent owner then rebutted it.

[00:24:15] Speaker 00:
So the petitioner raised it in the response.

[00:24:18] Speaker 00:
And then it came up again in oral argument.

[00:24:20] Speaker 00:
And then it came up again in the slides that were presented at oral argument.

[00:24:23] Speaker 01:
So it's not surprising after this back and forth between the parties that the board's... I'm sorry, what do you mean by it wasn't presented in the petition, but the patent owner's response presented

[00:24:35] Speaker 01:
I'm not sure what the point, the patent owner response is not going to be making the argument for the petitioner.

[00:24:43] Speaker 01:
Did the respondent, did the patent owner say something other than, and by the way, the petition hasn't argued the following and really couldn't argue the following.

[00:24:53] Speaker 00:
Well, the patent owner said, you're lacking this feature, you're lacking the mobile device portion and the multi-user embodiment.

[00:25:04] Speaker 00:
And the petitioner came back in his reply in support of his petition.

[00:25:08] Speaker 00:
And he pointed to paragraph 75, the disputed paragraph.

[00:25:14] Speaker 00:
And then the proceedings continued.

[00:25:16] Speaker 04:
It can make this a lot more complicated than it needs to be.

[00:25:19] Speaker 00:
Well, it could be, Your Honor.

[00:25:22] Speaker 00:
But the point that we're trying to make, and I think the office is sensitive to it, that the board is not trying to make new arguments for the first time in the final written decision, that there was a back and forth throughout the proceedings.

[00:25:32] Speaker 00:
that culminated in the board's decision on this issue.

[00:25:36] Speaker 00:
And if your honors have no more questions, we rest on the briefs.

[00:25:40] Speaker 04:
OK.

[00:25:41] Speaker 04:
Thank you, Ms.

[00:25:41] Speaker 04:
Stewart.

[00:25:42] Speaker 04:
Thank you.

[00:25:43] Speaker 04:
Mr. Argenti, you have two minutes.

[00:25:50] Speaker 03:
With regard to the court's earlier question asking whether we had addressed teaching away in our briefing, I would refer the court to pages 44 and 46 of our opening brief.

[00:26:00] Speaker 03:
and also pages six and seven of our reply brief.

[00:26:05] Speaker 03:
And an important point is where you refer to teaching awareness.

[00:26:16] Speaker 03:
On page 44, it's in the last few lines above the footnote, where we

[00:26:22] Speaker 03:
Quote language that the board's analysis encouraged the fact finder to outright discard evidence relevant to both teaching away and whether a skilled artisan would have been motivated to combine references.

[00:26:33] Speaker 03:
So that goes to the point that I was going to make that I don't think that's a quote from Polaris.

[00:26:37] Speaker 03:
That's not your argument.

[00:26:40] Speaker 03:
I think the argument is implicit in the quote, Your Honor.

[00:26:45] Speaker 03:
That's the best you've got.

[00:26:47] Speaker 03:
Well, I would also refer to those other pages.

[00:26:51] Speaker 03:
the best I have of him.

[00:26:52] Speaker 03:
But the important point that I was trying to make is that Polaris is not strictly about teaching away.

[00:26:57] Speaker 03:
And Polaris also recognizes that even if evidence doesn't rise to the level of teaching away, it can still be relevant to reasons that would be disadvantages of the combination, reasons that would discourage a person of ordinary skill in the art from making it.

[00:27:11] Speaker 04:
Well, they addressed the disadvantages, right?

[00:27:14] Speaker 03:
I'm sorry?

[00:27:15] Speaker 04:
The board addressed the disadvantages.

[00:27:17] Speaker 03:
Again, the board improperly dismissed

[00:27:20] Speaker 03:
portion of the disadvantages that we presented under the flawed Polaris analysis.

[00:27:24] Speaker 03:
There were disadvantages that we presented regarding the failure of the addition of memory to improve the functionality of Mahajan.

[00:27:34] Speaker 03:
That evidence was never addressed in the decision, and that evidence is cited in the footnote, I believe, on page 7 of our reply brief.

[00:27:44] Speaker 03:
That's an entire category of evidence that was not addressed before.

[00:27:48] Speaker 01:
And that was just your reply brief, not in the blue brief?

[00:27:54] Speaker 01:
OK.

[00:27:55] Speaker 03:
We may have mentioned it in the opening brief.

[00:27:56] Speaker 03:
I'm sure it's cited, including the underlying evidence in the reply brief in that footnote.

[00:28:01] Speaker 02:
So where in the reply brief do you address teaching away?

[00:28:05] Speaker 03:
In the reply brief, I believe the relevant pages would be six and seven.

[00:28:12] Speaker 03:
But again, our argument is not strictly based on teaching away.

[00:28:15] Speaker 03:
Our argument is that there's evidence that the board didn't even consider whether it rose to the level of teaching away.

[00:28:22] Speaker 03:
We presented argument and evidence regarding disadvantages of the combination that a person of ordinary skill in the art would have recognized.

[00:28:29] Speaker 03:
And the board improperly dismissed some of it based on a flawed legal standard and didn't even address some of the rest of it.

[00:28:36] Speaker 04:
OK.

[00:28:36] Speaker 04:
Thank you, Mr. Archer.

[00:28:38] Speaker 03:
Thank you.