[00:00:21] Speaker 01:
Mr. Stewart, please proceed.

[00:00:23] Speaker 00:
I may please the court.

[00:00:24] Speaker 00:
My name is Chris Stewart.

[00:00:25] Speaker 00:
I represent Rem Holdings in this appeal of a inter-partisan re-examination.

[00:00:29] Speaker 00:
At time permitting, I'd like to address three issues that are particularly significant in the board's decisions that this is not an exhaustive list.

[00:00:36] Speaker 00:
First, their disregard for the presumption of nexus in secondary considerations.

[00:00:41] Speaker 00:
Second, the flawed claim construction of audio output, a term in claim 14.

[00:00:45] Speaker 00:
And third, time permitting the pervasive use of hindsight bias, particularly in claim seven.

[00:00:51] Speaker 00:
So starting with the secondary considerations issue, the reason this is so significant is because we submit that if the board's analysis of the presumption of nexus here was allowed to stand, it would render that presumption essentially meaningless.

[00:01:03] Speaker 00:
What the board found was that there was an acknowledged presumption of nexus for the majority of the asserted claims or the claimed inventions and the commercial products, with one exception, the V3 square reader.

[00:01:17] Speaker 00:
which the office argues was not mapped against Claim 14, but Square itself, who was the manufacturer, that reader didn't dispute that it practiced Claim 14.

[00:01:29] Speaker 00:
So with that one exception, there was a presumption of nexus as between those commercial embodiments for which there was record evidence and the claimed inventions.

[00:01:36] Speaker 00:
and yet the board proceeded to analyze that evidence by finding the presumption rebutted simply because certain other factors may have contributed to the success of Square and its the other copycats commercial readers.

[00:01:50] Speaker 03:
In the gray brief at 17 to 19, you say that you argued for a construction of audio output before the p-tab.

[00:02:01] Speaker 03:
But the citations you gave us seemed only show that you raised the issue of proper construction to the examiner.

[00:02:09] Speaker 03:
Can you cite where you raised the construction to the P tab and explicitly pro-offered that argued for construction?

[00:02:20] Speaker 00:
Certainly.

[00:02:20] Speaker 00:
First of all, the point as to waiver of the client construction position is

[00:02:26] Speaker 00:
Flawed by the mere fact that the only time this issue came up on appeal to the board was on a cross appeal that Square brought.

[00:02:32] Speaker 00:
We had won on claims 14 through 20 at the original appeal stage.

[00:02:36] Speaker 00:
So we obviously didn't appeal the claim construction issue because we had won and didn't need to.

[00:02:41] Speaker 00:
On cross appeal, even though we didn't expressly call it claim construction,

[00:02:46] Speaker 00:
It's at Appendix 1290 where we specifically talked about this issue, if not by calling it claim construction in substance.

[00:02:57] Speaker 00:
So at Appendix 1290, when discussing why the board should affirm the examiner's finding that Odegiri did not disclose an audio output, we said, and I'm quoting from that page, to the extent that an input associated with a host device, e.g.

[00:03:14] Speaker 00:
a headset jack,

[00:03:15] Speaker 00:
and an audio output, e.g.

[00:03:17] Speaker 00:
output signal, have been equated by the office such as an error.

[00:03:20] Speaker 00:
So we addressed it in the context of whether Otagiri disclosed an audio output.

[00:03:25] Speaker 00:
But that argument in substance is our claim construction position.

[00:03:28] Speaker 00:
Even though we didn't have to raise it, because as we cited in our briefing, an appellee does not have an obligation to raise all alternative grounds for affirmance in a cross-appeal, we nevertheless raised it in substance.

[00:03:40] Speaker 00:
And then because of the sort of odd procedural posture of this case, when it went back down to the examiner and we reopened prosecution, we weren't allowed to raise claim construction arguments at that point.

[00:03:50] Speaker 03:
So when it went back up to the board... Why couldn't you raise the claim construction issue?

[00:03:54] Speaker 00:
Well, the rules of reopened prosecution are that you can't re-urge new arguments, you can only... Well, but you said it's the same argument.

[00:04:02] Speaker 00:
I'm sorry?

[00:04:03] Speaker 03:
But you said it was raised in the first one, as in the cross appeal.

[00:04:09] Speaker 00:
So in the cross-appeal, we did discuss it, and it was raised as right.

[00:04:12] Speaker 00:
But when you reopen the prosecution, the restriction is actually that you can only present new evidence or amend plans.

[00:04:20] Speaker 00:
That's what the restriction says.

[00:04:22] Speaker 00:
We could have potentially, I guess,

[00:04:24] Speaker 00:
moved for a further re-hearing after the reopen prosecution and the renewed decision by the board.

[00:04:29] Speaker 00:
But at that point, it was optional.

[00:04:30] Speaker 00:
At that point, it was no longer a new ground of rejection.

[00:04:32] Speaker 00:
And we, in the interest of speed and efficiency, decided to come straight to this court, because we think the board squarely addressed the issue of that claim construction, has a clear position on it, that Odegiri's headset jack as a whole can constitute the audio output.

[00:04:46] Speaker 00:
And so there's nothing more for the board to review.

[00:04:48] Speaker 00:
And this court can address that claim construction issue.

[00:04:52] Speaker 00:
If it's all right, I'll go back to my points about secondary considerations.

[00:04:57] Speaker 00:
Again, the office's response to this notion of the board repeatedly allowing speculative May evidence to rebut the presumption of nexus is simply to say, oh, no, they didn't do that.

[00:05:08] Speaker 00:
They looked at a bunch of other evidence in addition to talking about the presumption.

[00:05:12] Speaker 03:
Speaking of speculative, even in the blue brave, you discussed commercial success figures taken from

[00:05:20] Speaker 03:
squares public filings and publicly traded stock information and ask us to take judicial notice of those numbers.

[00:05:29] Speaker 03:
That information wasn't on record before the PTL, was it?

[00:05:33] Speaker 00:
Yes, Your Honor, and the reason we asked the court to take judicial notice of it is because those proceedings or those developments all occurred after the case was entirely submitted.

[00:05:41] Speaker 03:
Well, what authority allows us to consider numbers not available to the agency?

[00:05:46] Speaker 03:
reviewing an obviousness determination.

[00:05:49] Speaker 00:
I think it's that Federal Rule of Appeal Procedure 201F and that Ayurvedic case we cited in our footnote in our brief.

[00:05:55] Speaker 00:
The point of judicial notice is something that's not reasonably in dispute.

[00:05:59] Speaker 03:
I don't think there's any way that... It may well be it's not reasonably in dispute, although it may be reasonably in dispute.

[00:06:06] Speaker 03:
I'm not going to get there, but the PTO didn't have it.

[00:06:10] Speaker 00:
But the PTO did have similar evidence of Square's success and market presence at the time.

[00:06:17] Speaker 03:
So you could have argued that.

[00:06:19] Speaker 00:
Well, Your Honor, we did argue that.

[00:06:20] Speaker 03:
That was also... I mean, you could have argued that to us rather than asking us to take judicial notice of something.

[00:06:27] Speaker 00:
Your Honor, I would submit that we are arguing both.

[00:06:29] Speaker 00:
We're suggesting that the evidence expressly before the PTO was sufficient and decisive of non-obviousness by itself.

[00:06:36] Speaker 00:
And then in addition, the fact that Square has continued to garner additional market share and grow its market cap on the backs of this invention, even after these proceedings, is further evidence that when this court does its de novo review of obviousness, in light of these secondary considerations, it should find the claims not obvious.

[00:06:56] Speaker 00:
So wrapping up on the secondary considerations point, eco-lochem and democo are cases from this court that say it's legal error.

[00:07:04] Speaker 00:
retain the presumption of nexus between the success and the claimed inventions unless it's fully rebutted.

[00:07:11] Speaker 00:
You cannot fully rebut a presumption of nexus by simply saying that other things may have also contributed.

[00:07:16] Speaker 00:
And Ecolochem even says that even where other things did contribute, unless they actually have disproven the contribution of the claimed inventions, you have to consider that.

[00:07:25] Speaker 01:
Why do you think you get the presumption of nexus in this case?

[00:07:29] Speaker 01:
Why do you think you're entitled to a presumption of nexus?

[00:07:31] Speaker 00:
Because the claimed inventions are coextensive with the commercial products for which there was success.

[00:07:36] Speaker 01:
Well, you're saying that, but your expert didn't articulate, even though he identified where each of the various elements was, he didn't articulate one of them.

[00:07:47] Speaker 01:
And then you made an argument, well, it's present in version two of Square, so it must be present in version three.

[00:07:52] Speaker 01:
The board didn't have to accept that argument.

[00:07:55] Speaker 01:
Lots of versions have changes.

[00:07:57] Speaker 01:
They don't have to accept that.

[00:07:58] Speaker 01:
You have to establish that they're coextensive.

[00:08:00] Speaker 01:
That's your burden.

[00:08:02] Speaker 00:
Right.

[00:08:02] Speaker 00:
Your Honor, in the context of this case, we believe that, especially when you're talking about a premeditation case of next court, which is just a sufficient evidence for a reasonable fact-finder to infer the fact in dispute, and when you have a circumstance where this is somewhat non-public information, the actual circuit design of squares of E3 reader wasn't publicly available,

[00:08:21] Speaker 00:
RAM and Square was the requester across the aisle and obviously could have produced circuits that disprove the presence of a signal setting device if that was a dispute.

[00:08:30] Speaker 01:
But you have to prove coextensive.

[00:08:32] Speaker 01:
Before you can get that presumption, you have to prove that they're coextensive.

[00:08:36] Speaker 01:
So whether it's hard for you to prove or not is not relevant to what your burden is.

[00:08:40] Speaker 00:
And our argument is that we did prove it by presenting everything but that one element, circumstantial evidence of that element, and then by the time the board was considering it and determining whether the presumption was met or not.

[00:08:50] Speaker 01:
What is the circumstantial evidence of the one element?

[00:08:52] Speaker 01:
The fact that it was in an earlier version?

[00:08:54] Speaker 00:
The fact that it was in an earlier version, the fact that the board's construction of signal setting device is broad enough to implement this.

[00:08:58] Speaker 01:
And that would be a substantial evidence question, because it's a question of fact, right?

[00:09:04] Speaker 01:
How in the world do you think I can overturn on substantial evidence a board's determination that because one version of Square had a particular element, it cannot necessarily infer that a subsequent version of Square also had that same element on a substantial evidence review standard?

[00:09:21] Speaker 00:
I think the key point, Your Honor, is the fact that Square did not dispute it, and as we cited in our brief, even effectively admitted it.

[00:09:26] Speaker 00:
They said at the point when we were talking about the commercial success of the V3 reader something to the effect of, well,

[00:09:33] Speaker 00:
even if you do consider that success, it's only relevant to Claim 14 and not to prior claims, effectively acknowledging it is relevant to Claim 14 because Claim 14 practices the v3 reader, or the v3 reader practices Claim 14.

[00:09:46] Speaker 00:
So when Square, who is the person who manufactures the device, doesn't dispute it and accepts that Claim 14 and the v3 reader are coextensive, and the board is considering that evidence and determining whether the presumption has been met, we contend that there is no

[00:10:01] Speaker 00:
substantial evidence that could say the presumption has not been met, especially in a prima facie matter.

[00:10:07] Speaker 00:
I want to turn to the claim construction point again, having addressed the waiver argument Judge Wallach raised.

[00:10:14] Speaker 00:
The claim construction of the term audio output was so unreasonably broad as to essentially vitiate the term audio from the claim

[00:10:23] Speaker 00:
and make it inconsistent with other language within the same claim element.

[00:10:27] Speaker 00:
Not just a claim differentiation argument between both claims, but within the same claim and the same claim element.

[00:10:33] Speaker 00:
As to the first point about audio being digital, Odegiri, which is the reference the examiner relied upon, shows the absurdity of this construction.

[00:10:42] Speaker 00:
Odegiri has a circuit switching mechanism that when you play in its peripheral digital camera, switches away from audio circuitry to imaging and data transfer circuitry.

[00:10:51] Speaker 00:
It also has a dedicated power line that is distinct from the standard left-right audio contacts, and yet that was still held to be an audio output simply because in some other configuration not relevant to the combination, it can support audio.

[00:11:06] Speaker 00:
That, as the court said in Inray Man Machine with regard to a thumb switch, it just disregards the first word of the term.

[00:11:12] Speaker 00:
A thumb switch in Inray Man Machine couldn't be something really capable of actuation by a thumb, because why do they say thumb?

[00:11:18] Speaker 00:
Here, audio output can't be something nearly capable of sometimes producing audio, because it's an audio output.

[00:11:25] Speaker 00:
The second point is with respect to the claim element itself.

[00:11:28] Speaker 00:
It says there is an output plug adapted to be inserted into an input associated with the host device, and then further says that the audio output provides power.

[00:11:41] Speaker 00:
That claim element all by itself makes clear that the input associated with the host device is the jack, which receives the plug.

[00:11:47] Speaker 00:
The audio output is something subsidiary.

[00:11:50] Speaker 00:
And with that reading, RAM's construction is the only one that makes sense.

[00:11:54] Speaker 00:
I see I'm into my rebuttal time, so if there are any questions, I'll respond.

[00:11:58] Speaker 01:
We'll reserve the rest of your time for rebuttal.

[00:12:00] Speaker 01:
Ms.

[00:12:00] Speaker 01:
Craven, please proceed.

[00:12:08] Speaker 02:
Good morning, Your Honors, and may it please the court.

[00:12:11] Speaker 02:
Starting with the presumption of nexus, there are two reasons why the board did not have to apply the presumption of nexus for the V3 version.

[00:12:19] Speaker 02:
One, as you've discussed, is the REM didn't show that V3 reader had all the limitations of the claims.

[00:12:28] Speaker 02:
Second, this is an inter-parties re-exam, so it's not a contested case like an inter-parties review or a district court case.

[00:12:34] Speaker 03:
What about Classco, Inc.

[00:12:35] Speaker 03:
versus Apple?

[00:12:37] Speaker 02:
So in Glasgow, that also was a re-examine.

[00:12:39] Speaker 02:
This court made a statement that the presumption would apply for a product that had all the limitations of the claim.

[00:12:47] Speaker 02:
However, that was not contested among the applicants.

[00:12:50] Speaker 02:
The briefs didn't go into whether a presumption should apply.

[00:12:53] Speaker 02:
So there really wasn't a chance for an opportunity for this court to really dig into the issue and make a determination if, in a re-exam,

[00:13:03] Speaker 02:
in a party's re-exam, the presumption should apply.

[00:13:06] Speaker 02:
And we're arguing here the office's position is it shouldn't apply.

[00:13:09] Speaker 02:
This isn't, as the regulations say, it's not a contested case.

[00:13:14] Speaker 02:
There's not an opportunity for discovery.

[00:13:16] Speaker 02:
After there's been found a substantial question of patentability, the third party requester doesn't necessarily stay in the case.

[00:13:25] Speaker 02:
Obviously, Square isn't here now.

[00:13:27] Speaker 02:
And so it's the examiner's burden in those cases, just like ex parte re-examine, just like prosecution, to set forth the prima facie case for the rejection.

[00:13:41] Speaker 02:
And the board here.

[00:13:42] Speaker 02:
weighed all the evidence of the secondary considerations and found that for V1 and V2, the board did apply a nexus, that that nexus was rebutted.

[00:13:52] Speaker 02:
And for V3, that there wasn't sufficient evidence of a nexus.

[00:13:56] Speaker 02:
And therefore, that didn't credit any of the commercial success.

[00:14:00] Speaker 02:
The board also did say that if they did have a fine nexus, that it still wouldn't have outweighed the strong prior evidence of obviousness.

[00:14:11] Speaker 02:
Unless there's any other questions about the secondary considerations, I'll turn to Claim 14 and the construction of audio output.

[00:14:19] Speaker 01:
I guess, Matt, why don't you go back over why you think the nexus shouldn't apply here.

[00:14:23] Speaker 01:
I understand that you think this is not a contested proceeding according to CTO regulations of what amounts to a contested proceeding.

[00:14:31] Speaker 01:
But when we use the word contested proceeding in WBIP to distinguish between IPRs and sort of ex parte

[00:14:38] Speaker 01:
I don't remember if we referenced the board regulation, but I don't think so.

[00:14:41] Speaker 01:
I think we used it in the colloquial sense, that it is a proceeding in which there are two parties and therefore an opportunity.

[00:14:49] Speaker 01:
Hwang was the original case, the ex parte case way back when that says you can't apply the nexus in a pure ex parte scenario because the PTO shouldn't be burdened with having to develop or respond to evidence like that.

[00:15:01] Speaker 01:
And we completely agreed, but then said when there's somebody on the other side, it's then not

[00:15:06] Speaker 01:
the PTO's burden to do that, it's the other side's burden.

[00:15:09] Speaker 01:
So why, assuming I'm not just going to rely on the fact that in a regulation, you defined what you meant by contested proceeding, that's not necessarily what I meant by contested proceeding when I used the word.

[00:15:21] Speaker 01:
Why do you think from a practical matter?

[00:15:23] Speaker 01:
You said no opportunity for discovery.

[00:15:24] Speaker 01:
I'd like to know all your reasons.

[00:15:26] Speaker 02:
So there's no opportunity for discovery.

[00:15:27] Speaker 02:
So the inner parties review proceedings, the new AIA proceedings, and the district court proceedings have opportunities for discovery so that you could go out and actually get, in the interest of justice, I think, for the IPR, get discovery about sales of the other party or other aspects that a third party might need to have in order to respond to

[00:15:47] Speaker 02:
evidence of secondary consideration.

[00:15:49] Speaker 02:
So there's none of that opportunity in the ex parte.

[00:15:52] Speaker 01:
I don't understand.

[00:15:52] Speaker 01:
We're just talking about nexus.

[00:15:54] Speaker 01:
So the only question there is coextensiveness.

[00:15:57] Speaker 01:
That's the only question.

[00:15:58] Speaker 01:
So why would discovery somehow

[00:16:02] Speaker 01:
impact to the ability to properly argue co-extensiveness.

[00:16:05] Speaker 02:
Because you have to rebut the presumption.

[00:16:06] Speaker 01:
So if you don't have the ability to go out and get... But you don't get to the presumption until they've proven co-extensiveness.

[00:16:11] Speaker 02:
Right.

[00:16:11] Speaker 02:
So once they prove the co-extensivity, then there's no opportunity for you to go out and get evidence perhaps that you would need to rebut the presumption as opposed to evidence that usually lies with the patent owner who is asserting the commercial success.

[00:16:23] Speaker 02:
This is a bit of an unusual situation where the patent owner and

[00:16:27] Speaker 02:
the person with the commercial success or an opposite side of the V. But normally it's the Patent Owner.

[00:16:32] Speaker 01:
So they're asserting squares, commercial success.

[00:16:35] Speaker 01:
The square would be in possession of all of that information.

[00:16:37] Speaker 01:
But you're saying in the normal case, the Patent Owner would be asserting its own commercial success.

[00:16:42] Speaker 01:
And is there not then any opportunity in an inter parte re-exam for the challenger to

[00:16:50] Speaker 01:
solicit or obtain or present evidence.

[00:16:53] Speaker 02:
They can present evidence, comments, and evidence is accepted, but they wouldn't have an ability to get any discovery from the patent owner, like you would in a district court or perhaps in the IPR or CDM setting.

[00:17:04] Speaker 01:
I'm kind of wondering, you say perhaps, because that's what I was thinking.

[00:17:07] Speaker 01:
Really, how much discovery really is there in these IPRs?

[00:17:10] Speaker 01:
And what really are the rights?

[00:17:12] Speaker 01:
Because we've said this applies in an IPR.

[00:17:14] Speaker 01:
So what are the rights in an IPR to do that?

[00:17:16] Speaker 02:
Right.

[00:17:17] Speaker 02:
There is an opportunity if you

[00:17:20] Speaker 02:
a motion to the board.

[00:17:21] Speaker 01:
You have to file a petition to the director and say in the interest of justice.

[00:17:25] Speaker 01:
Yes.

[00:17:26] Speaker 01:
In your experience, are you aware of any case where that's ever occurred?

[00:17:29] Speaker 02:
I am not standing here today aware of any.

[00:17:31] Speaker 01:
Yeah, me neither.

[00:17:32] Speaker 01:
It's an interesting proposition.

[00:17:33] Speaker 01:
Kind of like amendments.

[00:17:35] Speaker 02:
But we know, we absolutely know in the re-exam context that they can't get that discovery if they want it.

[00:17:40] Speaker 02:
And there's also the problem for the office if an inner party's re-exam is started and then the third party drops out,

[00:17:49] Speaker 02:
we're still in the same sort of situation in the office, unable to get that information.

[00:17:53] Speaker 01:
Theoretically, that could happen known in IPR as well.

[00:17:55] Speaker 01:
And we've already said in the IPR context, the nexus of lies.

[00:17:59] Speaker 02:
That's true.

[00:17:59] Speaker 02:
I think in that context, the petition is largely the bulk of everything in the IPR, where then, I mean, they obviously they have the opportunity to apply after the IPR is instituted.

[00:18:11] Speaker 02:
But here in the inter-parties re-exam, it's going back and forth with the examiner making the decision.

[00:18:17] Speaker 02:
And if the examiner then

[00:18:19] Speaker 02:
doesn't have that third party, they're in the same position as they would be with the ex parte re-exam, where all they have is what the patent owner is giving them.

[00:18:27] Speaker 02:
And that's why we think the presumption shouldn't apply.

[00:18:29] Speaker 02:
Turning then to claim 14 and the construction of audio output, it's our position that they waive the argument.

[00:18:37] Speaker 02:
They didn't raise it as an alternative ground on their first appeal to the board.

[00:18:43] Speaker 02:
They say that they obviously made the blanket statement that audio output is a signal, but they didn't provide any argument about why it's a signal like they initially did for the examiner.

[00:18:53] Speaker 02:
Also, when you go back, when you choose to open prosecution, there is opportunity to introduce new evidence.

[00:18:59] Speaker 02:
Obviously, the board has found facts that the examiner can't overrule.

[00:19:04] Speaker 02:
But you can introduce new testimony on the claim construction.

[00:19:08] Speaker 02:
You can also then preserve the argument for the second board appeal.

[00:19:11] Speaker 02:
And there was no argument to the board presented to them for decision in the second appeal process.

[00:19:18] Speaker 02:
And so this court is facing the claim construction issue for the first time.

[00:19:24] Speaker 02:
Though, if you want to find that they have a way to decide the claim construction, I think based on the claim differentiation and the disclosure of the specification, audio output construed as an audio signal is too narrow a construction.

[00:19:41] Speaker 02:
If you look at claim 15, that further defines the audio output.

[00:19:50] Speaker 02:
says the audio output has a left audio out channel.

[00:19:54] Speaker 02:
And that's a structure in itself.

[00:19:56] Speaker 02:
So it's hard to construe audio output as a signal, because a signal doesn't have a channel.

[00:20:01] Speaker 02:
But an audio output structure then does have that additional structure.

[00:20:05] Speaker 02:
And that's why we think that audio output cannot be construed as just the audio signal.

[00:20:11] Speaker 02:
And therefore, under the examiner's construction, Odigera either directly teaches using the headset

[00:20:19] Speaker 02:
unmodified or one of skill and art, would have made the modification.

[00:20:23] Speaker 02:
So unless there's any questions, I will leave the rest of the meeting on my time.

[00:20:27] Speaker 01:
Thank you, Ms.

[00:20:27] Speaker 01:
Craven.

[00:20:28] Speaker 01:
Thank you so much.

[00:20:29] Speaker 01:
Mr. Stewart, you have some rebuttal time.

[00:20:34] Speaker 00:
May it please the court, on this notion of the presumption applying in this proceeding, I'll first note that that was not actually raised by square in the proceedings below or raised by the examiner.

[00:20:46] Speaker 00:
The board treated the presumption as applicable in this case.

[00:20:49] Speaker 00:
So that argument is technically waived for being raised for the first time in a footnote in this appeal.

[00:20:54] Speaker 00:
But even considering it, the notion of no discovery, well, the third party requester here was Square, the company that was responsible for the manufacture of the products and their commercial success.

[00:21:08] Speaker 00:
And so any dearth of discovery because of the procedure here was remedied by the fact that they themselves were part of it.

[00:21:14] Speaker 01:
But I think Ms.

[00:21:15] Speaker 01:
Craven's point is that if we

[00:21:17] Speaker 01:
make a holding that the presumption applies and inter partes re-exams, it's going to be a holding that applies to everybody.

[00:21:24] Speaker 01:
And there might not be prejudice in this particular case because Square is in possession of all the data.

[00:21:29] Speaker 01:
You're absolutely right, they wouldn't be prejudiced.

[00:21:31] Speaker 01:
But in the average normal case, and she's certainly right, it is the patent owner alleging their own commercial success normally.

[00:21:38] Speaker 01:
And so that

[00:21:41] Speaker 01:
situation would create a problem with prejudice because the petitioner or the opponent in the IPR would have no basis for securing that information.

[00:21:50] Speaker 01:
So your problem isn't really to tell me that in this case the prejudice wouldn't occur, but am I being asked to adopt a rule of law in most cases where it would?

[00:21:59] Speaker 00:
Well, the rule of law issue I think is covered by the fact that again, that this particular issue or this particular problem was waived.

[00:22:06] Speaker 00:
in this case, so you wouldn't be making a rule of law for all cases, you would just be saying that in this case the board applied the presumption and it was assumed and therefore in this case we're going to hold them to that treatment of the presumption.

[00:22:19] Speaker 00:
I want to also address the notion of waiver that was mentioned at the very end.

[00:22:25] Speaker 00:
The board's finding that Odegiri

[00:22:28] Speaker 00:
disclosing audio output was something that Rem had to assume true in that reopen re-examination.

[00:22:35] Speaker 00:
Even though Rem could introduce new evidence, it couldn't contradict the actual findings of the board.

[00:22:40] Speaker 00:
And I think, although I don't have a site for you, in a footnote to our briefing on remanded examiner in that reopen prosecution, we even expressly observed we still disagree with this claim construction, but we simply understand we are not allowed to raise it at this point.

[00:22:55] Speaker 00:
That's why we waited to raise it to this court.

[00:22:57] Speaker 00:
We think the board's position is clear, and there's nothing further for this court to consider other than actually overturning that claim construction.

[00:23:06] Speaker 00:
Finally, I want to highlight with my remaining time the point about claim seven.

[00:23:13] Speaker 00:
The court's use of hindsight bias in evaluating the von Mueller combination

[00:23:17] Speaker 00:
That combination simply described an obscure situation where when hot-sinking the card reader to a PC, you would be unable to swipe cards.

[00:23:29] Speaker 00:
And the examiner used hindsight to imply that a person of skill looking at that very innocuous problem, easily corrected by simply removing the hot-sink cable, would motivate a person of skill to create a redundant secondary input using the headset jack.

[00:23:46] Speaker 00:
That is only a possible motivation with the use of hindsight, knowing the benefits of Dr. Morley's invention.

[00:23:53] Speaker 00:
And so that's another reason why, especially given the lack of consideration of secondary considerations, which provide a check on hindsight, that combination in claim seven was error.

[00:24:03] Speaker 00:
My time is up, and so thank you.

[00:24:05] Speaker 01:
Thank you, Mr. Stewart.

[00:24:06] Speaker 01:
I thank both counsel for their argument.

[00:24:07] Speaker 01:
The case is taken under submission.