[00:00:39] Speaker 02:
Okay, the next argued case is number 17, 1866.

[00:00:44] Speaker 02:
Emerson Electric Company against Shipco, LLC.

[00:01:01] Speaker 02:
John Nyer, when you're ready.

[00:01:04] Speaker 01:
May it please the court.

[00:01:05] Speaker 01:
Doug Holger-Driemer on behalf of Emerson Electric.

[00:01:09] Speaker 01:
The evidence showed two different grounds on which someone known to the art would have been motivated to combine the Kahn reference with the admitted prior art in the 732 patent.

[00:01:29] Speaker 01:
The two motivations were the flexibility to redeploy easily and rapidly

[00:01:39] Speaker 01:
prior art with the wireless technology provided by Khan, and then the cost savings of doing so because you would not need to utilize the wires and the installation that was a very costly endeavor.

[00:01:57] Speaker 01:
The board rejected both of those motivations to combine.

[00:02:01] Speaker 01:
That finding lacks substantial evidence.

[00:02:06] Speaker 01:
First of all, on the record,

[00:02:09] Speaker 01:
before the board, it was notable that in the institution decision, the board recognized that we had demonstrated the motivation to combine it the least on the cost-saving measure.

[00:02:23] Speaker 01:
The board recognized that in the admitted prior art, it was a- This is in the institution decision.

[00:02:30] Speaker 01:
This is in the institution decision.

[00:02:31] Speaker 01:
Taking a quite preliminary view.

[00:02:35] Speaker 01:
It is, but it was a recognition that there was a description in the admitted prior art to the saving of the expensive proposition of the wiring of existing facilities, the installation of the wires.

[00:02:55] Speaker 02:
That doesn't bind them.

[00:02:58] Speaker 02:
as they proceed.

[00:02:59] Speaker 02:
So let's talk about what we finally did at the trial and decided.

[00:03:03] Speaker 01:
So in the final written decision, they rejected that very same evidence on the ground that it was hindsight.

[00:03:10] Speaker 01:
But it's not hindsight, Your Honor.

[00:03:12] Speaker 01:
It is permissible to point to where the inventor has acknowledged that there is already a well-known need and problem.

[00:03:22] Speaker 04:
Let me stop you there.

[00:03:23] Speaker 04:
I mean, there's no doubt at all that the patent says

[00:03:28] Speaker 04:
The wired system is expensive.

[00:03:30] Speaker 04:
Um, I don't actually think it says, and everybody knew that.

[00:03:34] Speaker 04:
Um, and I also have been having a hard time finding, um, in your petition, the assertion that the patent not only says it's expensive, but also admits that the prior art recognized the costs, which accounts, I think, for the fact that the board never

[00:03:58] Speaker 04:
addresses a contention, because I don't really think there was one that the patent itself contains an admission about prior art knowledge.

[00:04:09] Speaker 01:
Well, Your Honor, in the Heppey Declaration at paragraph 30, there was a reference to... Is that page 435?

[00:04:16] Speaker 01:
That's 435, yes, in the appendix.

[00:04:19] Speaker 01:
There's a reference to column five, lines 48 to 61, and specifically, Heppey draws from that

[00:04:28] Speaker 01:
the conclusion that the applicants note the expense of connecting the sensors and actuators with the local controller.

[00:04:38] Speaker 01:
So there, Heppy is acknowledging that they're in the description.

[00:04:42] Speaker 01:
This is in the background section of the Admitted Priorities and Recognitions.

[00:04:45] Speaker 01:
On column five?

[00:04:46] Speaker 01:
In column five.

[00:04:47] Speaker 03:
Column five is the detailed description of the preferred inviting item.

[00:04:50] Speaker 01:
I'm sorry.

[00:04:51] Speaker 01:
There's another reference earlier.

[00:04:55] Speaker 03:
Which one did Mr. Heppy refer to?

[00:04:57] Speaker 01:
He referred to column five there for the purpose of establishing it was an expensive proposition.

[00:05:05] Speaker 01:
That's the same language.

[00:05:07] Speaker 01:
It's the same language that the board relied on in its institution decision.

[00:05:11] Speaker 01:
It's also the same language that the board has relied on since in the decision in the 780 patent to establish that the patent itself, the 780 patent, which has the exact same language,

[00:05:26] Speaker 01:
as the language that we relied on here in the 732 patent establishes that this was known to those who were knowledgeable in the art at the time.

[00:05:38] Speaker 01:
This is a question of fact on which the board cannot hold at the same time both proposition not x and x. It seems to me that you were quite right to start your argument by saying the board

[00:05:54] Speaker 04:
that you had two theories for why there was a motivation to combine both basically rooted in con.

[00:06:00] Speaker 04:
One had to do with costs.

[00:06:01] Speaker 04:
The other had to do with flexibility and rapidity.

[00:06:04] Speaker 04:
And I was actually particularly interested in the flexibility, rapidity.

[00:06:09] Speaker 04:
Can you address that?

[00:06:11] Speaker 04:
And then we can talk about the relationship between this case, which I think is actually, at least to my mind, painfully complicated.

[00:06:23] Speaker 04:
and the October 25th, 2017 decision in the 780, is that what the 780 had in mind?

[00:06:28] Speaker 01:
Yes.

[00:06:29] Speaker 01:
And you're right with respect to going to the Kahn prior art and what it demonstrated and disclosed about a motivation to combine, because it doesn't present some of these questions about whether the description of the expense in the APA discussion reflects knowledge of those knowledgeable in the art, because Kahn itself calls out

[00:06:53] Speaker 01:
the desirability of the flexibility, rapid redeployment and reconfiguration that was possible with the mobile systems that were disclosed by Khan and that were not possible with fixed plant systems.

[00:07:08] Speaker 01:
And so Khan specifically contrasts these two systems, the mobile system that Khan is describing and existing fixed plant systems.

[00:07:20] Speaker 01:
The board rejected that in the final written decision because, in their language, Khan did not specifically tie this concern to physical cables and wires.

[00:07:33] Speaker 01:
But in this language, Khan, although he doesn't use those words, there is no requirement that he use magic words.

[00:07:41] Speaker 01:
That's the kind of rigid application that the Supreme Court rejected in KSR.

[00:07:47] Speaker 04:
In your view, as it must be your view, because you began your argument this way, that these points about costs of installation is a distinct point from flexibility and redeployment.

[00:08:01] Speaker 01:
I think that they are interrelated, but one supports the other.

[00:08:06] Speaker 01:
But I do think that each could stand alone independently.

[00:08:09] Speaker 01:
And Khan very clearly talks about

[00:08:13] Speaker 01:
the flexibility in rapid deployment and reconfiguration not currently possible with most fixed plant systems, and that's CON 1469, column 1, that's A377.

[00:08:25] Speaker 01:
That specific language is called out in the HEPI declaration.

[00:08:30] Speaker 01:
It's quoted at paragraph 31 at A436, and he really calls out the fact of this contrast between

[00:08:43] Speaker 01:
the mobile systems and the fixed plant systems.

[00:08:49] Speaker 01:
And what that discusses is that- And what did the board say about that?

[00:08:53] Speaker 04:
It's 11 to 12, in its opinion, right?

[00:08:56] Speaker 01:
The board simply- It's turning from cost to flexibility.

[00:09:00] Speaker 01:
What does it say?

[00:09:01] Speaker 01:
The board simply says that it rejects this because, quote, petitioner does not identify

[00:09:11] Speaker 01:
discussion of physical cables or wires in Khan.

[00:09:15] Speaker 01:
That's an A11.

[00:09:17] Speaker 01:
So although we've put forward the motivation for flexibility, and they don't dispute that flexibility, rapid redeployment, would be a sufficient motivation, they simply say Khan doesn't describe that because it doesn't talk about the problem of wires.

[00:09:36] Speaker 01:
In that passage that I've just quoted, and that's clearly there, relied on in the petition, relied on in the happy declaration, calls out the benefits of the mobile system as compared to the fixed plant installations.

[00:09:52] Speaker 01:
Mobile refers to wireless.

[00:09:54] Speaker 01:
Fixed plant installations refers to wired.

[00:09:57] Speaker 01:
That is a reference to wire if one was necessary, even though we don't think one is necessary.

[00:10:03] Speaker 04:
Can I now take you back to this?

[00:10:06] Speaker 04:
at least to my mind, quite troubling circumstance of the October 25th decision.

[00:10:12] Speaker 04:
And I guess I have a variety of questions.

[00:10:15] Speaker 04:
One is, are we allowed under the APA, if we were so inclined, can I put one thing to one side, assume for purposes of this discussion that the board was permissively said, we got to ignore grieves, came in too late.

[00:10:33] Speaker 04:
The other proceeding had grieves, so let's assume that those two are different.

[00:10:38] Speaker 04:
The other proceeding, the board wrote an opinion that invoked grieves three or four times, each time with words like confirmation, support, corroboration, leaving at least me unclear whether without grieves that particular decision would have come out any differently.

[00:10:59] Speaker 04:
leaving therefore the question whether, again, putting Grieves, if Grieves was only confirmation, is there an unexplained inconsistency between these two decisions?

[00:11:11] Speaker 04:
Is there something we can do about that?

[00:11:12] Speaker 01:
Well, I think there is.

[00:11:14] Speaker 01:
I think the court should at the very least

[00:11:16] Speaker 01:
vacate this and remand it to the board to explain that.

[00:11:21] Speaker 04:
Why do we do that under the APA?

[00:11:22] Speaker 04:
Last year we had a decision called VICOR against SYNCOR in which there were simultaneous board decisions that among other things we remanded for reconsideration because we weren't seeing the explanation for a disparity in results.

[00:11:36] Speaker 04:
Simultaneous is maybe different, but from what we have here, which is a later decision, we did cite

[00:11:44] Speaker 04:
DC Circuit decision from 1975, notably in the pre-Vermont Yankee era, that I think as I read it, remanded NLRB ruling number one, because later ruling number two came out and there seemed to be a disparity and the DC Circuit said, you got to tell us how to relate these.

[00:12:05] Speaker 04:
And the thing that I'm worried about, maybe you can help me with,

[00:12:09] Speaker 04:
is that as I understand the APA and law under it, we're required in an adjudication, which this is to evaluate the agency decision solely on the record in this adjudication.

[00:12:21] Speaker 04:
How do we look at some post adjudication development?

[00:12:25] Speaker 01:
Well, although that's true, Your Honor, in APA review, one ground on which to challenge it is that the agency has acted in a manner that's arbitrary and capricious.

[00:12:37] Speaker 01:
And one basis on which to establish that the agency has acted arbitrarily is that the ruling in this case is inconsistent with the ruling in another case.

[00:12:48] Speaker 01:
Granted, in most instances, it would be an earlier case.

[00:12:51] Speaker 01:
Right, do you have any authority for the later one?

[00:12:53] Speaker 01:
I have not found that.

[00:12:55] Speaker 01:
I will note that the court does now have both the 732 decision and the 780 decision before it, because there has been a notice of appeal filed in the 780 case.

[00:13:08] Speaker 01:
And so we are in a situation in which both of those decisions are presently before the court at the same time.

[00:13:16] Speaker 01:
The 780 is not fully briefed yet.

[00:13:18] Speaker 04:
This is a related question.

[00:13:19] Speaker 04:
I realize it's getting ahead of things.

[00:13:23] Speaker 04:
that we were to affirm this decision, and it becomes final.

[00:13:28] Speaker 04:
Would that generate issue preclusion for the 780 decision?

[00:13:34] Speaker 01:
Well, I assume that in that instance, we would be citing to the fact that they relied on Greaves there.

[00:13:43] Speaker 04:
Right, but issue preclusion doesn't mean you get to do a better job the second time than you did the first time.

[00:13:50] Speaker 04:
Unless there was some impediment to your having done the better job the first time, which there wasn't.

[00:13:56] Speaker 04:
You just didn't get to Grieves until too late.

[00:13:58] Speaker 01:
Well, I think it would depend on what one thought the subsidiary facts were that were found.

[00:14:06] Speaker 01:
But I do think that that prospect only heightens the need to correct the error here.

[00:14:14] Speaker 01:
And I will point to the fact that Grieves, although it was not

[00:14:19] Speaker 01:
cited in the reply, it was part of the record.

[00:14:22] Speaker 01:
You mentioned that the court has to review the record, the administrative record.

[00:14:26] Speaker 01:
The administrative record here includes Greaves because it was submitted by the patent owner, so they can't claim surprise.

[00:14:33] Speaker 01:
On page one of Greaves, the same page that is cited by the patent owner, it discusses the fact that cost savings in applying wireless technologies to systems related to monitoring water

[00:14:49] Speaker 01:
plants has been established.

[00:14:52] Speaker 01:
So that's on their own evidence.

[00:14:55] Speaker 01:
What they have said with respect to the admitted prior art, Your Honor, is that, no, that's not a discussion of what was known by others.

[00:15:03] Speaker 01:
That's a discussion of what our inventor discovered.

[00:15:07] Speaker 01:
He discovered that wires are costly.

[00:15:09] Speaker 01:
Their own evidence just proves it.

[00:15:12] Speaker 01:
And I think that it was not reasonable.

[00:15:15] Speaker 01:
It was, in fact, arbitrary and capricious.

[00:15:17] Speaker 01:
for the board having evidence submitted by the patent owner themselves that disproves that very assertion by them about what's disclosed in their patent.

[00:15:28] Speaker 01:
To have ignored that as opposed to rely on it as they did in the 780 is merely confirming what it is that the APA discussion, the APA already seems to say.

[00:15:42] Speaker 01:
But apart from that even, the fact that in the 780,

[00:15:47] Speaker 01:
the board refers to the same quote from Kahn about flexibility and redeployability and acknowledges that the reference to mobile means wireless and the reference to fixed plant installations means wired cannot be squared with their refusal to acknowledge the force of the same language when cited in this case because, on their explanation, Kahn doesn't refer

[00:16:17] Speaker 01:
the cables and wires.

[00:16:18] Speaker 01:
It did.

[00:16:19] Speaker 01:
And their later ruling acknowledges that very fact.

[00:16:24] Speaker 01:
So I see that my time is almost up.

[00:16:26] Speaker 01:
I hope to reserve a little bit.

[00:16:27] Speaker 02:
We'll save you a little bit of time, Mr. John Meyer.

[00:16:29] Speaker 02:
Thank you very much.

[00:16:35] Speaker 02:
Mr. Gonzales.

[00:16:37] Speaker 00:
Good morning, Your Honor.

[00:16:39] Speaker 00:
My name is Dr. Gregory Gonzales, and I'll be representing IPCO before this proceeding today.

[00:16:48] Speaker 00:
The board actually did a very careful analysis of Dr. Heppy's testimony.

[00:16:56] Speaker 00:
It even copied a portion of Dr. Heppy's declaration, paragraph 31, right into its final written decision.

[00:17:06] Speaker 00:
And then it went through point by point at the portions of Kahn that Dr. Heppy referenced and explained why that would not provide

[00:17:16] Speaker 00:
a motivation to combine Khan's teaching of a packet radio network with the Priorat, which is a wired system consisting of a local controller, sensors, actuators, and repeaters.

[00:17:32] Speaker 00:
The board did a very careful analysis.

[00:17:34] Speaker 00:
If you look at the final written decision at page 10, it indicated that Khan does not discuss costs related to installation of wiring, and it's little wonder why

[00:17:45] Speaker 00:
the board made that observation because Khan nowhere mentions a sensor or an actuator at all throughout its disclosure.

[00:17:57] Speaker 00:
There's not one mention of a control system containing one sensor or one actuator.

[00:18:03] Speaker 00:
Khan was based upon mobile devices that people can carry around in their pockets.

[00:18:09] Speaker 00:
It wasn't directed to what is in the

[00:18:14] Speaker 00:
discussion of the Priorot and the 732 patent, which is a hardwired network of sensors and actuators with a local controller.

[00:18:26] Speaker 00:
And he talked about the types of systems in the Priorot in the discussion of the 732 patent that it's directed to.

[00:18:35] Speaker 00:
It's directed to air conditioning systems, for example.

[00:18:39] Speaker 00:
Now, air conditioning systems are not the type of mobile devices

[00:18:44] Speaker 00:
that was the subject of Khan.

[00:18:50] Speaker 00:
Khan talked about having a packet radio network for mobile devices, not for air conditioners.

[00:18:58] Speaker 00:
I mean, my air conditioner isn't mobile, for example.

[00:19:01] Speaker 00:
And the other things that Khan talks about that the board specifically discussed is he's talking about delay, throughput, and cost are intricately related

[00:19:12] Speaker 00:
because lower delay usually means higher data rates, which in turn implies higher throughput and greater cost.

[00:19:19] Speaker 00:
That has nothing to do with taking a wired network of sensors, a local controller, an actuator, and a repeater and motivating a person of ordinary skill and they ought to change that to use a packet radio network.

[00:19:34] Speaker 00:
The board also acknowledged that Khan speaks to costs associated with providing a sufficient number of relays.

[00:19:40] Speaker 00:
in order to provide adequate coverage in a particular area and notes that this cost could be acceptable if the user population is sufficiently dense.

[00:19:49] Speaker 00:
That passage is also not directed to motivating a person of ordinary skill in the art to converting to a packet radio network.

[00:19:57] Speaker 00:
It's talking about how many relays that a network engineer would place in order to make sure that there was appropriate coverage for the people having mobile devices.

[00:20:10] Speaker 00:
Khan also states that all routes in a passage that was referenced by Dr. Heppi, petitioner's experts, all routes are assigned by the station to minimize packet radio cost and complexity.

[00:20:25] Speaker 00:
But that was directed to where you're going to put the processing power and software in order to do routing in the network.

[00:20:35] Speaker 00:
For instance, if you had it in the packet radios,

[00:20:38] Speaker 00:
then each packet radio would have to have the processing power and the software in order to determine how to route messages in the network.

[00:20:47] Speaker 00:
But if you move that to the station, then each packet radio wouldn't have to have that hardware and software, thereby making the packet radio less expensive.

[00:20:58] Speaker 00:
So many of these passages that are referenced by Dr. Heppy and Kahn do not relate and would not motivate a person

[00:21:08] Speaker 00:
to moving toward a packet radio net.

[00:21:12] Speaker 03:
What about the language at appendix A378 under rapid and convenient deployment that talks about deployment of the packet radio net should be rapid and convenient, requiring little more than mounting equipment at the desired location?

[00:21:29] Speaker 03:
Why does that not suggest the lack of wires?

[00:21:34] Speaker 04:
And something mounted as opposed to

[00:21:38] Speaker 04:
in your packet.

[00:21:42] Speaker 00:
Okay, so there's two different concepts.

[00:21:44] Speaker 00:
One is the end device.

[00:21:45] Speaker 00:
So the reason why you have a network is for a purpose.

[00:21:48] Speaker 00:
It has to communicate certain information.

[00:21:51] Speaker 00:
So you have to separate the packet radios that are in the network from its ultimate purpose.

[00:21:58] Speaker 00:
In Khan, the ultimate purpose was to provide a packet radio network for people that had mobile devices, devices that they could carry.

[00:22:07] Speaker 00:
So that

[00:22:08] Speaker 00:
passage that you just referred to is in the context of people having mobile devices.

[00:22:18] Speaker 00:
It's not in the context of the prior art that was described in the 732 patent, which is air conditioning systems or other systems that need to be controlled which aren't mobile.

[00:22:34] Speaker 00:
So you have to separate the

[00:22:40] Speaker 00:
the devices in the network from the devices that the network is supposed to support.

[00:22:47] Speaker 00:
In Kahn, the devices in the network are supposed to support mobile devices that can be carried by people.

[00:22:55] Speaker 00:
In the 732 patent and its description of the prior art, the network is supposed to support sensors and actuators, which are not mobile.

[00:23:05] Speaker 03:
Because you're saying this when it talks about mounting the equipment, that's not talking about mounting sensors.

[00:23:11] Speaker 03:
So one of the ordinary scale in the yard wouldn't put the two together.

[00:23:15] Speaker 00:
Absolutely not.

[00:23:16] Speaker 00:
Because there's no mention of a sensor or an actuator anywhere in Kahn.

[00:23:21] Speaker 00:
The mounting on the wall refers to packet radios that are part of the packet radio network.

[00:23:26] Speaker 00:
You can put an antenna and a packet radio on there.

[00:23:29] Speaker 00:
So people with mobile devices could communicate with it.

[00:23:32] Speaker 00:
But the entirety of Kahn

[00:23:34] Speaker 00:
And the reason why, one of the reasons it doesn't provide the motivation to modify the Priorat system of a wired system of sensors, actuators, and a local controller is because Khan is directed to a completely different context.

[00:23:51] Speaker 00:
It's the context of supporting the end user in Khan is people that have mobile devices.

[00:23:58] Speaker 00:
There's no mention of us, and you can do it yourself.

[00:24:01] Speaker 00:
You have a soft copy, electronic copy of Khan

[00:24:04] Speaker 00:
do a search on sensor, do a search on actuator, you won't find any hits because that's not what the article is directed to.

[00:24:14] Speaker 04:
Can you address what, if anything, we should do with the 780 patent IPR decision from end of October?

[00:24:26] Speaker 04:
I don't mean what we should do in the appeal of that.

[00:24:29] Speaker 04:
I mean what we should do here about

[00:24:34] Speaker 04:
decision that on a number of points seems to draw quite different conclusions from some of this art, even putting aside Greaves, than the conclusions that the board drew here.

[00:24:52] Speaker 00:
Well, I think in that decision with respect to the other patent that the record was very different in that case.

[00:24:59] Speaker 00:
It wasn't just Greaves, but there were different expert declarations.

[00:25:03] Speaker 00:
Obviously the claim is different.

[00:25:05] Speaker 00:
There are a lot of differences between that case and this case.

[00:25:10] Speaker 00:
And so I don't think the decision in that case, which we're also appealing on different issues, bears here because I think the, from what I just told you, there is no motivation to combine teachings of a packet radio network

[00:25:29] Speaker 00:
with the prior rot in the 732 patent, which was a high-wide system of sensors and actuators.

[00:25:36] Speaker 00:
The other mistake that was made, in fact, in this case, Dr. Heppey, his position is based upon multiple errors that he made.

[00:25:52] Speaker 00:
For example, he mistakenly referred to a discussion of the application of the principles of

[00:25:57] Speaker 00:
the invention of the 732 patent to a remote irrigation control system as being priorat.

[00:26:03] Speaker 00:
It clearly wasn't anywhere near the background section which talks about the priorat.

[00:26:11] Speaker 00:
He also mistakenly referred to a discussion of an application of the principles of the invention to an automated parking system as being priorat.

[00:26:20] Speaker 00:
Again, that was in column 13 of the patent that was nowhere near a discussion.

[00:26:26] Speaker 00:
The petitioner's position here is based upon expert testimony that is flawed and that was shown to be incorrect by our expert, Dr. Almorov.

[00:26:35] Speaker 00:
Again, when Dr. Heppey reads the 732 patent and he indicates that there was an admission by David Pettit, the inventor of the 732 patent, that these problems with the wine system were known,

[00:26:52] Speaker 00:
That's also inaccurate.

[00:26:54] Speaker 00:
If you look at the patent and read it carefully, the invented David Pettit is describing a priorot system of hardwired sensors, actuators, and a local controller, but at no point does he ever say that the problems with that particular priorot system were known.

[00:27:13] Speaker 00:
This is something that David Pettit recognized himself and what motivated him

[00:27:20] Speaker 00:
to come up with a claimed invention.

[00:27:22] Speaker 04:
Can I go back to the question I asked you about 780?

[00:27:25] Speaker 04:
You said something about the expert testimony there being different.

[00:27:29] Speaker 04:
And I guess I'm just looking at the 780 final written decision.

[00:27:34] Speaker 04:
And there are big block quotes from Dr. Heppi about Khan, which, I mean, how is he saying anything there different from what he said here?

[00:27:45] Speaker 00:
Well, I think there are probably awesome similarities.

[00:27:48] Speaker 00:
But I think that they're all

[00:27:50] Speaker 00:
the declaration that he submitted in that case.

[00:27:53] Speaker 04:
As a procedural matter, do you have any views about, if we were scratching our heads for purposes of this question, assume that, about how to reconcile these two things, except for obviously the difference between Greaves being in one and not in the other, but Greaves' talk in 780, as I say, confirmation, support, corroboration,

[00:28:20] Speaker 04:
not, it's not talked about as essential.

[00:28:22] Speaker 04:
And suppose one of the things we were scratching our heads about is, how could this board panel say what it said there and say what it said here?

[00:28:33] Speaker 04:
We sure would like them to explain that.

[00:28:36] Speaker 00:
Can we?

[00:28:38] Speaker 00:
Well, I don't think that would be appropriate.

[00:28:39] Speaker 00:
And the reason is, is because the record in this case is different from the record in the more recent case.

[00:28:46] Speaker 00:
And you mentioned Greece, for example, and in fact,

[00:28:49] Speaker 00:
If you look at the opinion that came out in the more recent case, the judge that wrote that opinion specifically indicated that Greaves was of record in that case, and Greaves was not of record in that case.

[00:29:02] Speaker 04:
Right.

[00:29:02] Speaker 04:
Footnote 9 says difference.

[00:29:05] Speaker 04:
Too late in the old one, not too late here.

[00:29:07] Speaker 00:
So the record is very different.

[00:29:09] Speaker 00:
And I don't think Greaves was just confirming.

[00:29:11] Speaker 00:
I think they heavily relied on Greaves in the most recent decision.

[00:29:17] Speaker 00:
to say that there was a motivation to combine a packet radio network with the discussion of the hardwired system of the Pryrod and the 732 pad or the 780 pad.

[00:29:29] Speaker 00:
I think that the records are very different.

[00:29:31] Speaker 00:
There are two different records.

[00:29:34] Speaker 00:
I think the judges there in the more recent decision explicitly indicated why the records were different and why there was a different decision reached in that case than in this case.

[00:29:45] Speaker 00:
And we also believe

[00:29:46] Speaker 00:
And I'll also be making some of the same arguments that we believe the board erred in that more recent decision.

[00:29:56] Speaker 04:
If there is some problem of confusion about whether there's consistency, do we have within our authority the power to remand this one to

[00:30:16] Speaker 04:
have the board clarify, and it could clarify by saying, oops, we were wrong in one or the other, or it could say, no, no, here's the crucial difference, without prejudging what they would do in response to a remand to explain the relation between the two cases.

[00:30:34] Speaker 00:
Well, I think the board has already indicated in its final written decision in the more

[00:30:39] Speaker 00:
So it was a procedural.

[00:30:41] Speaker 04:
Footnote nine made only the procedural point that Graves is in one and not the other.

[00:30:45] Speaker 00:
Well, I think it's saying that it did not make a mistake in this case that's before you.

[00:30:50] Speaker 00:
It said that under the record that was before it in this case, they ruled correctly.

[00:30:57] Speaker 00:
It's in that footnote that the board mentioned.

[00:31:03] Speaker 00:
So on this record, in this case,

[00:31:07] Speaker 00:
I think it's clear with all the mistakes that Dr. Heppy made as to what was known in the Priorot and what wasn't known in the Priorot, as well as Kahn being directed to users, the end users having mobile devices, very, very different.

[00:31:23] Speaker 00:
It doesn't mention a sensor or an actuator.

[00:31:25] Speaker 00:
Very, very different from the systems that's described in the 732 patent as being Priorot.

[00:31:31] Speaker 00:
which is things like air conditioning systems and other types of control systems that need to be monitored via a network.

[00:31:49] Speaker 00:
I also think it's clear that grief should not be considered in this proceeding because the first argument that was made with respect to griefs

[00:32:00] Speaker 00:
It was not made until the oral hearing.

[00:32:04] Speaker 00:
And there, only one paragraph of grieves was mentioned.

[00:32:09] Speaker 00:
In the briefing before this court, many different parts of grieves were mentioned in the briefing from the petitioner.

[00:32:16] Speaker 00:
So that's wrong for two reasons.

[00:32:19] Speaker 00:
Number one reason for not, I think the board was correct in not considering it at the PTAB.

[00:32:30] Speaker 00:
because it's clear from the decisions of this court, like the Dell case, for example, that raising an argument at the oral hearing is too late.

[00:32:39] Speaker 00:
And it doesn't depend on the content of the argument, as the petitioner suggested.

[00:32:44] Speaker 00:
Rather, it depends on when the argument was made.

[00:32:47] Speaker 00:
If you make it for the first time in the oral argument at the P-Tab, it's too late.

[00:32:53] Speaker 00:
The Greaves was introduced as a reference

[00:32:57] Speaker 00:
to show that wireless networks had problems with delays and that was put in our patent owner response.

[00:33:03] Speaker 00:
The petitioner had an opportunity when it filed its reply or when it filed its supplemental expert declaration with its reply to address that.

[00:33:14] Speaker 00:
If they would have addressed it, then we could have asked the board to file a surreply or I could have asked the doctor happy questions about it at his deposition on his supplemental declaration.

[00:33:25] Speaker 00:
It didn't do that.

[00:33:26] Speaker 00:
It didn't give any reasons why it didn't mention anything about grieves in the reply or in their expert supplemental declaration.

[00:33:37] Speaker 00:
So it's too late to raise it at the oral hearing at the PTAB.

[00:33:44] Speaker 00:
And it's also much too late to raise arguments directed to portions of grieves that weren't even mentioned below at the PTAB here in the briefing.

[00:33:55] Speaker 00:
So without grieves and just relying on Dr. Heppey's declaration, which relies on Kahn and what the 732 patent itself discloses, there's not nearly enough evidence to show that the board erred in its factual refinement.

[00:34:17] Speaker 02:
Okay, let's move on with this case.

[00:34:20] Speaker 02:
We'll hear some rebuttal and then we'll continue

[00:34:23] Speaker 02:
the discussion with the next case.

[00:34:25] Speaker 00:
Thank you.

[00:34:28] Speaker 02:
Mr. Howard driving there.

[00:34:30] Speaker 01:
Thank you.

[00:34:31] Speaker 01:
First, I want to

[00:34:33] Speaker 01:
provide the citation to where in HEPI declaration there was a citation to the background discussion of cost in the 723 patent.

[00:34:44] Speaker 01:
That is HEPI paragraph 38 and the citation is to the discussion of the APA at column 2, lines 37 to 43, which references the expense of connecting functional sensors with the local

[00:34:58] Speaker 01:
controller.

[00:35:00] Speaker 01:
So there is a reference to cost even there in the background section, but I apologize it was the other that the board had relied on in the institution decision.

[00:35:09] Speaker 01:
With respect to the different record, Your Honors, I have reviewed very carefully the discussion both of the con motivation of flexibility and rapid redeployment on pages 40 to 41

[00:35:27] Speaker 01:
paragraph that carries over between those two pages and every quotation citation to con or to the happy declaration in that paragraph appears verbatim in the discussion or those citations appear similarly here in this case in the happy declaration in the quotations that were offered.

[00:35:50] Speaker 01:
Likewise with respect to the discussion of cost on pages 44

[00:35:56] Speaker 01:
to 45, it's a description of the same provisions in the 780 patent that were cited in that case, as are also cited in this case where they appear in the 732 patent.

[00:36:09] Speaker 01:
And that was also about the same since the 780 patent.

[00:36:17] Speaker 01:
Yes.

[00:36:19] Speaker 01:
First, I guess I wanted to point out that with respect to Kahn, the patent owner does not

[00:36:25] Speaker 01:
defend the rationale of the board that somehow Kahn doesn't discuss this because Kahn doesn't reference physical cables and wires.

[00:36:35] Speaker 01:
That was the reasoning of the board.

[00:36:39] Speaker 01:
The patent owner tries to suggest a different argument, which is that Kahn can't be physically incorporated in Toto into the admitted prior art.

[00:36:50] Speaker 01:
But that's not the test.

[00:36:52] Speaker 01:
This court rejected that test in Moutet.

[00:36:55] Speaker 01:
And so it doesn't matter that Kahn doesn't talk about sensors and actuators.

[00:37:00] Speaker 01:
What it talks about is the desirability to use a wireless network to achieve the goals of flexibility, rapid redeployment, and the like.

[00:37:14] Speaker 01:
And that could be used on a mobile system as some of the prior or fixed system that's just geographically distributed as some of the other

[00:37:25] Speaker 01:
admitted prior art.

[00:37:30] Speaker 01:
In the end, we think that the board's rejection, especially of Kahn, and the basis of that rejection, which is that he didn't discuss physical cables or wired, cannot be squared with the evidence that was before them.

[00:37:47] Speaker 01:
The record reflected that they had before them the references in Kahn, both the one

[00:37:55] Speaker 01:
that I cited earlier about the physical fixed plant installations, but also the other reference that your honor cited that talks more generally about the desirability of this for mobile applications.

[00:38:13] Speaker 01:
And for them to say that Kahn doesn't teach what it plainly does teach because it doesn't specifically reference wires, when it talks about fixed plant installation, that is,

[00:38:25] Speaker 01:
a wired installation does not provide substantial evidence for their ruling.

[00:38:33] Speaker 01:
And it should be reversed on that ground.

[00:38:38] Speaker 01:
If there are no further questions, thank you.

[00:38:41] Speaker 02:
Is this case just concerned?

[00:38:45] Speaker 02:
Thank you.

[00:38:46] Speaker 02:
We'll go on to the next case.

[00:38:48] Speaker 02:
No need to move.

[00:38:50] Speaker 02:
You can stay put.

[00:38:51] Speaker 02:
We'll keep it straight.