[00:00:04] Speaker 02:
Our first case is PGS Geophysical.

[00:00:07] Speaker 02:
Are counsel ready to proceed?

[00:00:10] Speaker 02:
Yes, Your Honor.

[00:00:11] Speaker 02:
You want 10 and 5?

[00:00:12] Speaker 02:
Yes, please.

[00:00:17] Speaker 01:
Good morning.

[00:00:18] Speaker 01:
David Burrell for PGS Geophysical.

[00:00:22] Speaker 01:
May it please the court.

[00:00:24] Speaker 01:
This case raises the question of whether a claim may be rendered obvious by a proposed combination

[00:00:31] Speaker 01:
that the parties and the board agreed confers no benefit whatsoever and that in fact exacerbates the very problem that the lead reference was directed to solve.

[00:00:43] Speaker 03:
Can I interrupt and ask you about the SAS issue, which I know you submitted a joint filing on this morning.

[00:00:55] Speaker 03:
That at least leaves some questions

[00:01:01] Speaker 03:
Not about whether you have waived any right you may have, which you say you have, not whether Western GECO has by its silence and its settlement and whatnot waived any rights, but about whether the absence of institution on certain claims

[00:01:28] Speaker 03:
let's say is in fact waivable or whether it has the character of certain kinds of jurisdictional issues, whether agency jurisdiction, I'm not sure that term matters in the agency context, but ours it matters.

[00:01:42] Speaker 03:
And therefore, whether we have a final written decision in front of us that we can exercise jurisdiction

[00:01:55] Speaker 03:
over the analogy obviously being if there were unadjudicated claims in a district court, we wouldn't have a final judgment.

[00:02:06] Speaker 03:
We may be asking for more briefing on that kind of question, but do you have anything preliminary to say about why this is all waivable and we can stop thinking about it?

[00:02:19] Speaker 01:
Sure.

[00:02:19] Speaker 01:
A few things I'm happy to submit briefing if your honors would desire, but

[00:02:24] Speaker 01:
We didn't interpret the Supreme Court and SAS to be announcing a jurisdictional rule.

[00:02:29] Speaker 01:
There is a final decision in this case.

[00:02:31] Speaker 01:
And it is a final decision on all claims that are presently in dispute between the parties.

[00:02:37] Speaker 01:
The Supreme Court's decision in SAS recognizes that the final decision could involve a separate set of claims than the initial institution decision.

[00:02:47] Speaker 01:
For example, if the patent owner amended claims during the proceeding.

[00:02:50] Speaker 01:
And the statute is open to that.

[00:02:52] Speaker 01:
Here, we have a final decision on a different set of claims than the petition attacked, in part because of a settlement, but the issue at its core remains the same.

[00:03:02] Speaker 01:
All of the claims that are disputed here

[00:03:06] Speaker 01:
And all of the claims that are disputed at the time of the final decision, those are all now before the court for adjudication.

[00:03:12] Speaker 01:
We don't want more claims to be adjudicated.

[00:03:15] Speaker 01:
The Patent Office doesn't want more claims to be adjudicated.

[00:03:18] Speaker 01:
And Western GECO is not here asking for more claims to be adjudicated.

[00:03:21] Speaker 01:
So there's no harm here.

[00:03:24] Speaker 01:
All of the claims that are in dispute are before the court.

[00:03:26] Speaker 01:
And we see no reason that that's not an appropriate final decision per SAS for this court to take jurisdiction and decide the case.

[00:03:34] Speaker 01:
If we did send it back down,

[00:03:36] Speaker 01:
who would represent whom with what position?

[00:03:38] Speaker 01:
That's a great question.

[00:03:39] Speaker 01:
I'm not sure that there are really any answers to that.

[00:03:41] Speaker 01:
I suppose the PTO could try to put state, you know, place themselves in the petitioner's shoes.

[00:03:47] Speaker 01:
They'd then be judged jury and executioner in the same case.

[00:03:50] Speaker 02:
That would seem... It met the enemy and he is us.

[00:03:52] Speaker 01:
Indeed.

[00:03:53] Speaker 01:
And so it's sort of a kabuki theater that I suppose would happen on remand.

[00:03:58] Speaker 01:
I'm not sure exactly what would happen, but again, no one's asking for that.

[00:04:02] Speaker 01:
We are only disputing certain claims

[00:04:04] Speaker 01:
The Patent Office is only trying to defend the board's decision as to certain claims, and those claims are before the court.

[00:04:11] Speaker 01:
There's no requirement in SAS that all of the claims in the petition be before this court in order for this court to have jurisdiction over the case.

[00:04:21] Speaker 04:
Would you also say that even if those claims should have been included in the proceedings and part of the final decision,

[00:04:31] Speaker 04:
the fact that they weren't would be an error that could be waived by you.

[00:04:36] Speaker 01:
I think that's certainly right.

[00:04:37] Speaker 01:
I think the Patent Office probably has stronger views on that than we do.

[00:04:39] Speaker 01:
But if that's a way that your honor and the court wants to arrive at a place where jurisdiction is conferred so that we could have raised this but we waived it, I'm perfectly willing to stand here and say that we waived any right to have those additional non-instituted claims adjudicated.

[00:04:56] Speaker 01:
Those rights were waived.

[00:04:57] Speaker 04:
Or that the petitioner did.

[00:04:59] Speaker 01:
Right.

[00:04:59] Speaker 01:
Whether the petitioner did, or we did, or anyone did.

[00:05:02] Speaker 01:
But the point is, no one's asking for any of those claims to be resolved here.

[00:05:06] Speaker 01:
They're done.

[00:05:06] Speaker 01:
They're gone.

[00:05:07] Speaker 01:
We're just asking for these claims that are the subject of the appeal to be decided.

[00:05:11] Speaker 01:
And that's all the Patent Office wants decided as well.

[00:05:15] Speaker 01:
Does that answer your Honor's question?

[00:05:17] Speaker 04:
Do you have any case law or anything that you would cite to support that position at this point?

[00:05:22] Speaker 01:
Well, I mean, I think SAS itself, as I said, sort of

[00:05:25] Speaker 01:
foresees the possibility of not all claims that were in the petition end up before a court.

[00:05:31] Speaker 01:
If we had, for example, dropped some claims or amended near the end of the opinion,

[00:05:37] Speaker 01:
The Supreme Court says, well, that can certainly happen.

[00:05:40] Speaker 01:
And there can be a delta, therefore, between the petitioner's claims that he included in the petition and the claims that are subject to the final decision, and then, of course, the review by this court.

[00:05:50] Speaker 01:
And here we have the exact same result for a different reason, because of a settlement.

[00:05:54] Speaker 01:
But that poses no jurisdictional problem, it seems, per SAS.

[00:05:57] Speaker 01:
And I would just say that it can be extended to this situation, certainly with the party's permission.

[00:06:04] Speaker 01:
With your honor's permission, I'd like to return to the dispute that the parties have.

[00:06:10] Speaker 01:
I observe that a unique nature of this.

[00:06:12] Speaker 01:
I'm going to give you an extra five minutes on that.

[00:06:15] Speaker 01:
And I appreciate that, your honor.

[00:06:17] Speaker 01:
Most cases of obviousness involve a balancing between the perceived benefits of a combination and its detriments.

[00:06:24] Speaker 01:
This case, I would submit, is quite unique.

[00:06:27] Speaker 01:
There is no benefit

[00:06:28] Speaker 01:
that the petitioner ever identified to combining the two prior art references at issue here, Beasley and Eddington?

[00:06:36] Speaker 04:
One of the arguments that's made in the petition, or at least maybe it's in the expert evidence provided by the petitioner, is that the primary reference says any encoding technique could be amused, and then the secondary reference teaches an encoding technique that it claims is beneficial

[00:06:59] Speaker 04:
Why wouldn't that be a motivation to combine?

[00:07:01] Speaker 04:
That is, the primary reference says you can use any encoding in the secondary references.

[00:07:05] Speaker 04:
Here's one that's particularly good.

[00:07:07] Speaker 04:
Why is that not a motivation to combine?

[00:07:10] Speaker 01:
So if I could answer the question in two ways.

[00:07:12] Speaker 01:
First, the primary reference does not say use any kind of coding.

[00:07:15] Speaker 01:
It says use any desired type of coding.

[00:07:18] Speaker 01:
And there was no finding by the board whatsoever that the Eddington

[00:07:22] Speaker 01:
time delay embodiment was a desired type of coding.

[00:07:25] Speaker 01:
That factual predicate is missing from the board's opinion.

[00:07:29] Speaker 01:
And in fact, there's good reason for it.

[00:07:31] Speaker 01:
They didn't just forget to put that word in.

[00:07:33] Speaker 01:
There was no evidence in the record to support that idea.

[00:07:37] Speaker 01:
The evidence was, and it was undisputed, that making that combination of Beasley plus Eddington, putting the kind of time delay that Eddington uses in combination with Beasley would not be desired at all.

[00:07:51] Speaker 01:
On the contrary, it would create a smearing problem, a lack of spatial resolution.

[00:07:56] Speaker 04:
This is kind of your teaching away argument.

[00:07:58] Speaker 01:
Well, we presented that, in a sense, as a separate argument.

[00:08:02] Speaker 01:
And I think it's a separate reason that the court can reverse.

[00:08:07] Speaker 01:
But it's part and parcel of the same issue.

[00:08:09] Speaker 01:
I think that teach away is simply the flip side of motivation.

[00:08:12] Speaker 01:
And per KSR and this court's case law, they can be put together in an inquiry of, is there motivation?

[00:08:18] Speaker 01:
Is there a reason, as the Supreme Court put it, to combine these two things?

[00:08:22] Speaker 02:
Do you dispute that a person of skill would have looked

[00:08:27] Speaker 02:
the land seismic techniques of Eddington when designing the marine seismic techniques?

[00:08:34] Speaker 01:
It would not have excluded Eddington on the basis that it's a land technique.

[00:08:38] Speaker 01:
We certainly agree with that.

[00:08:40] Speaker 01:
But then what happens when you combine Beasley and Eddington?

[00:08:43] Speaker 01:
And I think it's important to tease this out for a moment, if I may, because I think this got lost a little bit in the briefing, and the PTO never responded to this.

[00:08:51] Speaker 01:
And I think this is the core issue in the case.

[00:08:54] Speaker 01:
And it's as follows.

[00:08:56] Speaker 01:
Beasley has two separate embodiments, a so-called sequential firing embodiment and a simultaneous or near simultaneous embodiment.

[00:09:04] Speaker 01:
In the sequential embodiment, what happens is source one fires and then after what it calls half an interval, source two fires.

[00:09:12] Speaker 01:
So it goes once and waits and then the second source fires.

[00:09:17] Speaker 01:
Dr. Lin explained how long that delay is.

[00:09:20] Speaker 01:
At page A884, he says half an interval, that's half of a shot time, and that is five seconds, because there are 10 seconds between shots.

[00:09:29] Speaker 01:
And there's a further explanation that in those five seconds, a vessel moves about 12 and a half meters.

[00:09:36] Speaker 01:
So what you have in the sequential embodiment of Beasley is source one fires, 12 and a half meters of movement, and then source two fires.

[00:09:44] Speaker 01:
And those two sources are treated as having been fired from the same place.

[00:09:48] Speaker 01:
And what Beasley says is that creates what he calls in column seven a lack of commonality due to the time delay.

[00:09:56] Speaker 01:
That is 12 and a half meters of separation, a lack of commonality, and that's not good.

[00:10:02] Speaker 01:
That creates a loss of spatial resolution.

[00:10:05] Speaker 01:
Your picture is fuzzy.

[00:10:06] Speaker 01:
And of course, the whole purpose of this enterprise is to get a good picture of the ocean subsurface so that oil companies know where to look for gas and oil.

[00:10:15] Speaker 01:
Then compare that to Beasley's second simultaneous source embodiment.

[00:10:20] Speaker 01:
He says the advantage of my simultaneous source embodiment is it gets rid of this loss of spatial resolution.

[00:10:27] Speaker 01:
I've solved it because I've fired both of these sources at the same time.

[00:10:33] Speaker 01:
I've used a way to separate them based on what's called dip filtering, based on their location, and I have solved the spatial resolution problem.

[00:10:41] Speaker 01:
That's my advantage of my second and preferred embodiment.

[00:10:46] Speaker 01:
Now observe what happens when one takes that embodiment of Beasley that solved the smearing problem, that solved the spatial resolution problem, and combine it with Eddington.

[00:10:56] Speaker 01:
That's the proposed combination in this case.

[00:10:59] Speaker 01:
Eddington, and this is undisputed.

[00:11:01] Speaker 01:
Dr. Lin explains it, for example, at A1155 and A1192.

[00:11:07] Speaker 01:
Eddington takes eight successive shots and it sums them as if they were all shot from the same place.

[00:11:16] Speaker 01:
But since every shot happens only once every 10 seconds and the boat is moving in this combination of Beasley plus Eddington, what happens is

[00:11:25] Speaker 01:
Shots that are fired 100 meters or 200 meters apart are treated as if they were fired from the exact same place.

[00:11:33] Speaker 01:
100 to 200 meters is what Dr. Lin says at A1192.

[00:11:39] Speaker 01:
And again, there's no refutation of this.

[00:11:41] Speaker 01:
It's all agreed upon and undisputed.

[00:11:44] Speaker 01:
So what do we have when we combine Beasley and Eddington?

[00:11:47] Speaker 01:
We have Beasley that says, look at my simultaneous source embodiment.

[00:11:52] Speaker 01:
I have solved.

[00:11:53] Speaker 01:
the spatial resolution problem.

[00:11:55] Speaker 01:
I've solved the smearing problem.

[00:11:57] Speaker 01:
I don't have this lack of commonality of 12.5 meters half a shot.

[00:12:02] Speaker 01:
And what is this argument that is being advanced now by the PTO to combine Beasley with Eddington?

[00:12:08] Speaker 01:
What they would have the person of ordinary skill do is say, I'll take Beasley, which says it's advantageous because it solved the smearing problem,

[00:12:16] Speaker 01:
I'll get rid of that.

[00:12:18] Speaker 01:
I'll no longer stop the smearing problem because I'm now firing at a time delay and stacking or summing sequential shots as if they were from the same place.

[00:12:28] Speaker 01:
And rather than solving that problem, I'm going to make it eight to 16 times worse.

[00:12:33] Speaker 01:
Rather than having a lack of commonality of 12 and a half meters, like the undesired sequential firing embodiment of Beasley, I'm going to separate them by 100 to 200 meters.

[00:12:46] Speaker 01:
eight to 16 times worse, and treat them as if they were from the same place.

[00:12:50] Speaker 01:
That's a disaster.

[00:12:52] Speaker 01:
That's not obviousness.

[00:12:53] Speaker 01:
That's madness.

[00:12:54] Speaker 01:
There is no way on earth that a person of ordinary skill would have done that.

[00:12:58] Speaker 01:
And we explain that, and there's no response whatsoever from the PTO.

[00:13:03] Speaker 01:
We explain this on page 36 of our brief.

[00:13:05] Speaker 01:
And what the PTO does is it pouts the benefits of Beasley and says, look at Beasley.

[00:13:11] Speaker 01:
Beasley says that it solved the smearing problem.

[00:13:14] Speaker 01:
And our response is, that's right.

[00:13:15] Speaker 01:
Beasley does solve the smearing problem when Beasley is used in its simultaneous source embodiment.

[00:13:21] Speaker 01:
When they're fired at the same time, no time delays.

[00:13:25] Speaker 01:
But when you combine Beasley plus Eddington, that solution not only goes away, the problem gets much worse.

[00:13:31] Speaker 03:
And how do your claims avoid the disaster?

[00:13:34] Speaker 01:
We don't sum sequential shots as if they came from the same source.

[00:13:39] Speaker 01:
This is shown at page 13 of our brief where we sort of show all the traces and how they're summed.

[00:13:44] Speaker 01:
And it's explained by Dr. Lin at page A1133.

[00:13:49] Speaker 01:
What happens is that the time delays are chosen so that they are asynchronous when something called CMP gathers are used.

[00:13:58] Speaker 01:
And so rather than summing successive shots,

[00:14:00] Speaker 01:
The time delays are arranged in a way that different kinds of shots in a different kind of collection can be summed.

[00:14:07] Speaker 01:
And you get rid of the smearing problem.

[00:14:09] Speaker 01:
And it's much better.

[00:14:10] Speaker 02:
Other than lawyer argument, what evidence says that that particular level of smearing from the combination of Beasley and Eddington is unacceptable?

[00:14:20] Speaker 01:
So you have Dr. Lin's undisputed testimony.

[00:14:24] Speaker 01:
And you can find this at A1192 and 1193, where he says that the combination produces significant smearing.

[00:14:32] Speaker 01:
And again, it's unacceptable.

[00:14:34] Speaker 01:
Because you use the word unacceptable.

[00:14:36] Speaker 01:
So he says significant at A1193.

[00:14:40] Speaker 01:
He says that it will have a deleterious effect on the data at A1125.

[00:14:45] Speaker 01:
You're right.

[00:14:45] Speaker 01:
The word unacceptable came from our patent owner response at A267.

[00:14:51] Speaker 01:
It is, I submit, impossible to read Dr. Lin's testimony any other way but to say that one wouldn't have done this because the smearing is bad.

[00:14:59] Speaker 01:
And he explains what I just explained to the court, that it's treating these shots that are taken 100 or 200 meters apart as if they come from the same place.

[00:15:09] Speaker 01:
And you would never do that.

[00:15:10] Speaker 01:
That is 8 to 16 times worse than the undesired embodiment of Beasley.

[00:15:17] Speaker 01:
So I think the point is.

[00:15:19] Speaker 02:
OK, your red light's on.

[00:15:20] Speaker 02:
You've got five minutes.

[00:15:22] Speaker 02:
I'll let you eat it now or use it in your reply, but keep in mind that it will come out of your reply.

[00:15:30] Speaker 01:
OK.

[00:15:31] Speaker 01:
And I understand that.

[00:15:33] Speaker 01:
I'd just like to make one minor additional point, which is that this combination

[00:15:41] Speaker 01:
which produces eight to 16 times more smearing and defeats the entire purpose of the enterprise.

[00:15:46] Speaker 01:
And that's more evidence, if Your Honor would like it, at A1193, which is paragraph 195 of Dr. Lin's expert declaration.

[00:15:55] Speaker 01:
Western GCO could have come back during the proceedings and said, Dr. Lin is wrong.

[00:16:00] Speaker 01:
The smearing is not that bad.

[00:16:02] Speaker 01:
It would have been easy to correct.

[00:16:04] Speaker 01:
It's no big deal.

[00:16:05] Speaker 01:
No one cares about smearing.

[00:16:06] Speaker 01:
They could have said any of those things.

[00:16:07] Speaker 01:
They said nothing.

[00:16:08] Speaker 01:
The record in this case stands unrebutted that there's a significant smearing problem that is occasioned by the combination and there's no evidence on the other side.

[00:16:17] Speaker 01:
Again, this is not a situation where there's a bad result that has to be weighed against a good result like winner versus wang or this case struggle with how you do that.

[00:16:25] Speaker 01:
This is just

[00:16:26] Speaker 03:
When there is a pre-KSR case, it may be not good for everything it says.

[00:16:32] Speaker 01:
Well, even if that's so, Your Honor, we essentially challenge the Patent Office in our brief to come up with one case, any case, that holds a patent claim obvious without any advantage conferred by the combination.

[00:16:46] Speaker 03:
If there are a couple or three or four, some very small number of known alternatives, it might well under KSR be obvious

[00:16:56] Speaker 03:
all four of them, even for the three that are less advantageous than the first.

[00:17:01] Speaker 01:
So under that part of KSR's rubric, I think there are two factual predicates that must be demonstrated.

[00:17:06] Speaker 01:
Number one, that there are a limited number of options.

[00:17:09] Speaker 01:
That's never been

[00:17:11] Speaker 01:
observed here at all.

[00:17:12] Speaker 01:
That's never been advanced by Western GCO.

[00:17:14] Speaker 01:
We explained at A264 in our patent owner response that there are lots of coding techniques.

[00:17:19] Speaker 01:
We provided frequency coding, phase coding, polarity coding as examples, and cited a laundry list of prior art references.

[00:17:27] Speaker 01:
So the factual predicate of a limited number of options is missing here, and the board didn't find otherwise.

[00:17:32] Speaker 01:
But more importantly, I think, KSR says where there are a limited number of options,

[00:17:38] Speaker 01:
and each of them provides the anticipated success, then all of them can be rendered obvious.

[00:17:43] Speaker 01:
But again, the only evidence in this case is that rather than anticipated success, one would have expected Beasley plus Eddington to create a big problem.

[00:17:53] Speaker 01:
So it's not as if you have each of the options having predictable success.

[00:17:59] Speaker 01:
Here there's no finding of predictability, and on the contrary, there's a finding that the person of ordinary skill would have expected smearing to result from the combination.

[00:18:07] Speaker 01:
That's at page 28 of the board's opinion.

[00:18:10] Speaker 01:
So subject to further questions.

[00:18:12] Speaker 04:
I was just going to say, I mean, if we were to affirm on the

[00:18:16] Speaker 04:
finding of teaching away.

[00:18:18] Speaker 04:
If we were to say, I guess there's substantial evidence there.

[00:18:20] Speaker 04:
I might not have decided it were myself if I were the fact finder, but there's substantial evidence.

[00:18:25] Speaker 04:
How does your motivation argument work?

[00:18:28] Speaker 04:
You still have a motivation argument?

[00:18:29] Speaker 01:
Absolutely.

[00:18:30] Speaker 04:
Based on the lack of explanation of why it would be desirable and what you are saying there's a lack of evidence that there's a limited universe of possibility.

[00:18:39] Speaker 01:
Absolutely.

[00:18:40] Speaker 01:
And even if the evidence about smearing were somehow insufficient to

[00:18:45] Speaker 01:
meet the level of a teachaway, it still must be considered in the context of motivation, because one has to consider all of the expected effects of combining Beasley plus Eddington, including the smearing effect.

[00:18:57] Speaker 01:
So whether you call it a teachaway or a reason not to do it or evidence on our side, again, this case is not about taking the bitter with the sweet like most obviousness cases.

[00:19:06] Speaker 01:
This is about taking the bitter with the bitter for no reason at all.

[00:19:09] Speaker 01:
So, at the end of the day, they have no evidence about any advantage, and there's evidence, whether you call it a teach-away or not, that this is bad.

[00:19:16] Speaker 01:
And the board even accepted as a factual finding that this is going to create smearing, and there's nothing sweet on the other side.

[00:19:22] Speaker 01:
There's just no reason to do it.

[00:19:23] Speaker 01:
So, teach-away or none, I think that reversal is mandated here.

[00:19:27] Speaker 01:
With the court's permission, I'll reserve the rest of my time.

[00:19:30] Speaker 01:
Thank you.

[00:19:35] Speaker 00:
Good morning.

[00:19:36] Speaker 00:
May it please the court?

[00:19:38] Speaker 00:
To address counsel's arguments about whether or not there is a motivation here, the board found that the motivation is within the references themselves.

[00:19:47] Speaker 00:
You have Beasley, which talks about you can have any desired type of encoding.

[00:19:51] Speaker 04:
Where is that in the board's decision that you think that they actually said it's based on the references themselves?

[00:19:57] Speaker 00:
Well, the board didn't make that quote.

[00:19:59] Speaker 00:
This is based on the references themselves.

[00:20:00] Speaker 00:
The board

[00:20:01] Speaker 00:
basically said the petitioner was arguing that you could take the encoding of Eddington, put it into Beasley's system, and that there would be a predictable result.

[00:20:11] Speaker 00:
That was the petitioner's argument.

[00:20:13] Speaker 00:
And then the board went through and assessed the combination of Beasley and Eddington.

[00:20:18] Speaker 00:
And then in the end said they were persuaded by petitioners' arguments and evidence that the claims were obvious.

[00:20:27] Speaker 00:
based on this two combination.

[00:20:29] Speaker 00:
There is not a place, Judge Stoll, that I can point to you in the record that says, we are making this finding for this reason.

[00:20:36] Speaker 00:
But if you look at the references, Beasley basically encapsulates what, or I'm sorry, and I don't want to use the word anticipate.

[00:20:43] Speaker 00:
Beasley basically assumes Eddington when it says any type of desired coding.

[00:20:51] Speaker 00:
Eddington is solving the problem of trying to find a way to isolate these sources, just like Beasley is.

[00:20:57] Speaker 00:
And it is a type of desired coding.

[00:20:59] Speaker 04:
What about the argument that I heard counsel make about desired and emphasizing desired, and if there's no finding at all of why Eddington's technique would be desired in Beasley?

[00:21:11] Speaker 00:
So I think the way that counsel is looking at desired is like desirable.

[00:21:15] Speaker 00:
And I think it could be read as any type of desired coding, as in any type of coding that you would like to use, desired as in a want.

[00:21:23] Speaker 00:
And it doesn't have to be better.

[00:21:25] Speaker 00:
It just has to be obvious.

[00:21:28] Speaker 00:
You don't have to find a reason as to why you would use one thing over another.

[00:21:33] Speaker 00:
When you have a reference saying you can use something else here, you just have to show that it is obvious.

[00:21:39] Speaker 00:
In Gurley and in In Re Mutet, this court said that just because there are better alternatives that exist in the prior art, it doesn't mean that an inferior combination is an act for obviousness purposes.

[00:21:53] Speaker 00:
So I just think of an example, if you'll indulge me for a second.

[00:21:56] Speaker 00:
If you had, let's say, a patent for a way to put sneakers on your feet and someone is using laces for that purpose.

[00:22:05] Speaker 00:
If there is a, I'm sorry, if you had a piece of prior art that had, you can use laces to put sneakers on your feet.

[00:22:10] Speaker 00:
And you had another piece of prior art that said in order to put sandals on, you can use Velcro.

[00:22:16] Speaker 00:
Someone could combine those references to put Velcro

[00:22:19] Speaker 00:
on sneakers and they wouldn't have to show that Velcro is somehow better than laces or that there is something inferior about laces.

[00:22:27] Speaker 00:
It's obvious and I know that's a very simple hypothetical and I just wanted to sort of use it as an example to say, if it's obvious, that is enough.

[00:22:36] Speaker 00:
That is the standard.

[00:22:38] Speaker 00:
And as for this notion about smearing and whether or not this is somehow teaching away,

[00:22:44] Speaker 00:
Everyone acknowledges, the board acknowledges, the petitioner acknowledges, and obviously the patent owner acknowledges that smearing is an issue.

[00:22:50] Speaker 00:
That is not in dispute here.

[00:22:52] Speaker 00:
What comes up, though, is what is the level of smearing?

[00:22:56] Speaker 00:
And when the patent owner's expert had the burden of production to show evidence that there was a problem with smearing, so basically the petitioner, I see your face, the petitioner has the burden of proof as to obviousness, absolutely.

[00:23:11] Speaker 00:
But then when there's an argument for teaching away,

[00:23:13] Speaker 00:
You have PGS having to show, well, how does it teach away?

[00:23:16] Speaker 00:
You're saying this is an issue.

[00:23:18] Speaker 00:
And you had expert Lin, Dr. Lin, excuse me, saying, well, there's significant smearing here.

[00:23:24] Speaker 00:
But it's a conclusory statement.

[00:23:26] Speaker 00:
There were no evidence.

[00:23:27] Speaker 00:
There was no facts.

[00:23:28] Speaker 00:
They didn't produce anything to show, well, what is significant?

[00:23:32] Speaker 00:
What does that mean?

[00:23:33] Speaker 02:
Or what's unacceptable.

[00:23:35] Speaker 00:
Or what's unacceptable.

[00:23:36] Speaker 00:
And the patent owner themselves, during oral argument to the board, admitted that their own patent has smearing.

[00:23:43] Speaker 00:
So it can't be that smearing is somehow adverse to combining these references when the patent itself has smearing.

[00:23:50] Speaker 00:
It might be a little bit of smearing.

[00:23:51] Speaker 00:
It might be a lot of smearing.

[00:23:52] Speaker 00:
We don't know.

[00:23:53] Speaker 00:
And that is what the board found.

[00:23:54] Speaker 00:
They just weren't persuaded by Dr. Lin's testimony.

[00:23:58] Speaker 02:
It's almost an economic argument, really, unarticulated, which is what lets you find the oil.

[00:24:05] Speaker 00:
I agree, Your Honor.

[00:24:06] Speaker 00:
And so that is why the board said, OK, we

[00:24:11] Speaker 00:
We're not persuaded by this argument.

[00:24:13] Speaker 00:
And in addition, the claims are broad enough that they don't exclude smearing.

[00:24:17] Speaker 00:
So there's nothing in the claim that says there's a problem with smearing.

[00:24:20] Speaker 00:
And if you read the patent itself, the patent and the specification doesn't have any discussion about smearing or avoiding smearing being some sort of benefit.

[00:24:27] Speaker 04:
I don't understand what you're saying, but I think the argument doesn't necessarily require consideration of whether the claims require smearing or not.

[00:24:33] Speaker 04:
Because the argument isn't, do the claims require smearing?

[00:24:36] Speaker 04:
And is that taught by the reference?

[00:24:38] Speaker 04:
Instead, the argument is, would one of ordinaries film yard

[00:24:41] Speaker 04:
not demotivated to make this combination because it would actually increase smearing.

[00:24:46] Speaker 00:
I understand, Your Honor, and I just go back to my first point about this smearing is something that is known.

[00:24:51] Speaker 00:
A person with ordinary scoliosis understands that some smearing would be involved, but we don't know the level at which it would deter a person from combining the references because having an expert say there is significant smearing isn't facts and it isn't evidence to convince, it wasn't facts and evidence to convince the board

[00:25:09] Speaker 00:
that that would be some reason to teach away from the combination.

[00:25:13] Speaker 04:
What about PGS's counsel referred to language about a deleterious effect?

[00:25:20] Speaker 04:
It's on page 1125.

[00:25:22] Speaker 04:
Do you have a response to that?

[00:25:26] Speaker 04:
And I'm not sure from this part of the expert's declaration if they're talking about the combination

[00:25:34] Speaker 04:
They're talking about something called vertical stacking.

[00:25:36] Speaker 04:
But do you have a view on this?

[00:25:37] Speaker 04:
Because this was one of the sites that was provided.

[00:25:40] Speaker 04:
And it's not just that it's significant.

[00:25:43] Speaker 04:
It's talking about a deleterious effect.

[00:25:47] Speaker 00:
Yeah, I would say the same thing.

[00:25:50] Speaker 00:
I mean, the board read Dr. Lin's expert report and said that it wasn't persuaded by the arguments.

[00:25:57] Speaker 00:
I mean, they weren't just pointing to the part that I mentioned about the significant, but they weren't persuaded that there was

[00:26:03] Speaker 04:
But what is your take?

[00:26:04] Speaker 04:
Do you have a particular technological view on this language that was pointed to us?

[00:26:09] Speaker 04:
I mean, setting aside the board has certain deference and they weren't convinced.

[00:26:14] Speaker 04:
Do you know what this means and what they're saying here?

[00:26:17] Speaker 00:
I'd have to look at it more closely, Your Honor, as I stand here.

[00:26:20] Speaker 00:
If you want, I can look at it really quickly and try to figure out, but I don't.

[00:26:25] Speaker 00:
I apologize.

[00:26:26] Speaker 00:
At this moment, I just need to sort of read it and figure out what it's saying.

[00:26:30] Speaker 00:
But again, I would just say that

[00:26:32] Speaker 00:
Regardless of my views on it, the board wasn't persuaded by this report.

[00:26:38] Speaker 00:
And so just to be clear, there is a motivation.

[00:26:41] Speaker 00:
It's within the references themselves.

[00:26:43] Speaker 00:
Beasley said any desired type of encoding, Eddington offers that.

[00:26:49] Speaker 00:
As far as teaching away, the board was not persuaded that there was a reason not to combine these references.

[00:26:55] Speaker 00:
And I'd also add that in terms of the argument that there was burden shifting, that did not occur here.

[00:27:00] Speaker 00:
The board looked to Western GECO to satisfy its burden.

[00:27:07] Speaker 00:
And if there are no further questions, I yield my time.

[00:27:11] Speaker 01:
Thank you.

[00:27:11] Speaker 01:
Thank you, Council.

[00:27:13] Speaker 01:
In a minute, Council.

[00:27:15] Speaker 01:
If I could make three quick points.

[00:27:18] Speaker 01:
First, look at page 26 of the PTO's brief.

[00:27:22] Speaker 01:
I submit that gives the game away.

[00:27:24] Speaker 01:
That's the only page in their brief where they address the question of whether Beasley plus Eddington creates smearing.

[00:27:31] Speaker 01:
They say it's no big deal.

[00:27:32] Speaker 01:
You can read those two pages in vain for any discussion, citation, or reference to Eddington at all.

[00:27:40] Speaker 01:
Because they have nothing to say about Beasley plus Eddington.

[00:27:43] Speaker 01:
It clearly produces smearing.

[00:27:45] Speaker 01:
What they're saying in that section is Beasley alone has not much smearing.

[00:27:49] Speaker 01:
Well, when you add it to Eddington, it has a lot of smearing.

[00:27:51] Speaker 01:
How much, Your Honor, wanted to know?

[00:27:53] Speaker 01:
Is it a big deal?

[00:27:54] Speaker 01:
Is it unacceptable?

[00:27:55] Speaker 01:
I submit Beasley answers that question.

[00:27:58] Speaker 01:
Beasley says, the advantage of my simultaneous embodiment is that it gets rid of smearing when they're 12 and 1 half meters apart.

[00:28:06] Speaker 01:
That's a big deal for Beasley.

[00:28:08] Speaker 01:
Aforsiori, 8 to 16 times as much smearing necessarily is a big deal.

[00:28:14] Speaker 01:
If they want to focus on the references themselves, the references themselves answer the question that 8 to 16 times more than Beasley is avoiding is unacceptable.

[00:28:22] Speaker 01:
And my last sentence is to deal with their Velcro example.

[00:28:25] Speaker 01:
This case is like their Velcro example.

[00:28:27] Speaker 01:
If, in addition to the prior art teaching that Velcro was a possibility to fasten shoes, it also taught that Velcro would undermine the entire purpose of the shoes by shredding them.

[00:28:39] Speaker 01:
That's exactly what Beasley plus Eddington does.

[00:28:41] Speaker 01:
Wait that one second.

[00:28:42] Speaker 01:
It was a run-on, and I apologize, Your Honor.

[00:28:44] Speaker 01:
It makes everything worse.

[00:28:47] Speaker 01:
Thank you.