[00:00:02] Speaker 04:
The first case for argument this morning is 171161, Ultratech v. Sorenson Communications.

[00:00:10] Speaker 04:
Ms.

[00:00:11] Speaker 04:
Noelle?

[00:00:12] Speaker 00:
Thank you, Your Honor.

[00:00:20] Speaker 00:
May it please the court, Kristen Noel appearing on behalf of Appellants Ultra Tech and CapTel.

[00:00:26] Speaker 00:
In overturning the jury's verdict of non-obviousness, the district court made several errors, material errors, including taking improper inferences in favor of Sorensen, making findings that were not supported or contradicted in the record, and disregarding substantial evidence of lack of motivation to combine.

[00:00:48] Speaker 00:
Can I ask you just

[00:00:49] Speaker 04:
a tangential question, which is you spend a great deal of time or sometime in both briefs, blue and yellow, pushing back on whether or not Cap Tech, whatever, I don't know what the name is, is prior art.

[00:01:04] Speaker 04:
Now the judge, the jury considered it to be prior art, right?

[00:01:08] Speaker 04:
So I guess

[00:01:10] Speaker 04:
I was wondering why you spend, I mean, is it an alternative argument?

[00:01:14] Speaker 04:
I mean, why are you spending so much time?

[00:01:15] Speaker 04:
Because you're asking us to find substantial evidence with the jury's verdict.

[00:01:19] Speaker 04:
The jury already considered that as prior art.

[00:01:22] Speaker 04:
So you don't want us to overturn, you know, I don't understand why you're spending so much time on that issue.

[00:01:29] Speaker 00:
That's correct, Your Honor.

[00:01:31] Speaker 00:
The jury assumed and was instructed that the CapTel trials were in fact prior art.

[00:01:37] Speaker 00:
notwithstanding the fact that that ruling, the jury considered the CAPTEL trials and the 685 publication.

[00:01:45] Speaker 00:
And in light of the evidence, the substantial evidence.

[00:01:49] Speaker 04:
No, I know.

[00:01:49] Speaker 04:
But when you're arguing that they shouldn't have considered it, is that just an alternative argument?

[00:01:53] Speaker 04:
Yes, Your Honor.

[00:01:54] Speaker 04:
Oh, OK.

[00:01:54] Speaker 04:
So that's an alternative.

[00:01:55] Speaker 04:
So if we were to find that we would affirm the district court on the JMAW, you would say that we shouldn't do that for the additional alternative reason, that they shouldn't consider that.

[00:02:05] Speaker 02:
That's exactly right.

[00:02:06] Speaker 02:
So that would be a request for a new trial as opposed to being a reversal of that.

[00:02:11] Speaker 00:
That's correct, Your Honor.

[00:02:12] Speaker 00:
And that's why our primary appeal is on the substantial evidence argument, because that would obviate the need for a new trial.

[00:02:21] Speaker 01:
The substantial evidence argument is based on improper finding of motivation to combine?

[00:02:28] Speaker 00:
That's correct, Your Honor.

[00:02:30] Speaker 00:
And I can give a couple of examples.

[00:02:32] Speaker 01:
There's no question but that the features

[00:02:35] Speaker 01:
here that are in the patent or in the prior art, the two-line system and the echo cancellation, right?

[00:02:48] Speaker 00:
Subject to the fact that there is no prior art of an echo-canceler

[00:02:54] Speaker 00:
in a captioned telephone to cancel the voice of the assisted user.

[00:02:58] Speaker 00:
So there would have to be a modification of the combination to come up with the full invention.

[00:03:03] Speaker 01:
And that's basically your argument about motivation to combine, right?

[00:03:08] Speaker 01:
Right.

[00:03:09] Speaker 01:
There's no question that there was plenty of evidence showing the advantages of a two-line system and plenty of evidence showing the advantages of echo cancellation, right?

[00:03:23] Speaker 00:
There was indeed, but even with those two advantages in the prior art, there was never prior to the invention one telephone that a deaf or hard of hearing person could use that would have all the benefits which fall under the umbrella of functional equivalence.

[00:03:43] Speaker 01:
But both your witness and the other side's witness said that it would be logical

[00:03:50] Speaker 01:
in making the combination to move from the relay to the captioned telephone for the echo-canceler.

[00:03:59] Speaker 00:
Not so, Your Honor.

[00:04:00] Speaker 00:
The District Court and Sorenson repeatedly make this statement, and with reference to Mr. Ludwig, Ultratech's expert, they cite to the testimony which is found in the appendix at 15,009.

[00:04:14] Speaker 00:
And if the court looks to that testimony,

[00:04:19] Speaker 00:
you will find that there's a rather garbled question, followed by a really unremarkable circular answer.

[00:04:31] Speaker 00:
Question.

[00:04:33] Speaker 01:
Well, wait a second.

[00:04:35] Speaker 00:
15,009.

[00:04:35] Speaker 00:
And nine, Your Honor.

[00:04:48] Speaker 01:
OK.

[00:04:49] Speaker 00:
If I may, Your Honor.

[00:04:51] Speaker 00:
Question.

[00:04:53] Speaker 00:
You would agree with me that the logical place to put the echo cancellation in a two-line for two-line captioned telephones is within the telephone, correct?

[00:05:03] Speaker 00:
Answer.

[00:05:03] Speaker 00:
If one has already made the decision to place an echo canceler in a phone, then the logical place would be in the phone.

[00:05:14] Speaker 00:
Question.

[00:05:15] Speaker 00:
In the phone?

[00:05:16] Speaker 00:
Answer.

[00:05:17] Speaker 00:
If one has made the decision that an echo counselor is needed in the phone, yes, then it has to go there.

[00:05:25] Speaker 00:
That is hardly an admission that that was the logical place or obvious place.

[00:05:31] Speaker 00:
It's simply a circular statement that if you decide to put it in the phone, it goes in the phone.

[00:05:37] Speaker 04:
Let me ask you about, I'm looking now, for instance, on page eight of your yellow brief, because you talk about the evidence you rely on

[00:05:47] Speaker 04:
for this inoperability or this.

[00:05:50] Speaker 04:
And the two highlights of this, and you have a few other things, but I think the two main points is you've got Mr. Ludwig, as you've admit, summarized the incompatible architecture.

[00:06:02] Speaker 04:
And if you look at the site you have for that, it's a conclusory summary statement.

[00:06:07] Speaker 04:
Would you agree with that?

[00:06:08] Speaker 00:
I agree that that cited statement is a conclusory statement.

[00:06:11] Speaker 00:
However, in the record, Mr. Ludwig was asked extensively

[00:06:15] Speaker 00:
about the prior testimony of Mr. Colwell.

[00:06:18] Speaker 00:
And Mr. Colwell gave extensive testimony on a couple of things that are very notable.

[00:06:25] Speaker 04:
Well, firstly, the site in your brief is only to that one site.

[00:06:28] Speaker 04:
But on Mr. Colwell, let me ask you, because you talked about him before that, and you said he explained the different configuration and why technology used in one would not be expected to work in the other.

[00:06:41] Speaker 04:
I mean, those are key kind of trigger words.

[00:06:44] Speaker 04:
And frankly, maybe you can show me, because I couldn't find where he said that in the site.

[00:06:49] Speaker 00:
Absolutely.

[00:06:49] Speaker 00:
I believe the most probative site would be to appendix 22000.

[00:06:54] Speaker 04:
Well, why don't you look at what you cited to us, which was 15778 to 15780, because that's what I looked at, because that's what you cited us to.

[00:07:04] Speaker 00:
I will pull that, but I will say, Your Honor, I believe elsewhere in the brief we cited to 22,667 through 70.

[00:07:11] Speaker 04:
Yeah, that was a C also, yeah.

[00:07:14] Speaker 00:
Okay, and that I think is the most probative evidence, and in there, Mr. Colwell describes... What page?

[00:07:23] Speaker 00:
What's the other page?

[00:07:24] Speaker 00:
22,667 through 70.

[00:07:27] Speaker 04:
Okay.

[00:07:28] Speaker 00:
And Mr. Colwell walks through the differences

[00:07:31] Speaker 00:
between when you would have echo cancellation at the relay.

[00:07:34] Speaker 00:
It's literally in a very well contained environment where, for example, if they have problems with the echo canceler, they can make the telephone signal stronger or weaker.

[00:07:45] Speaker 00:
In sharp contrast, if you have to put an echo canceler... No, but I'm looking.

[00:07:50] Speaker 04:
Why don't you show me then?

[00:07:51] Speaker 04:
Because what you characterize it as is he explained

[00:07:56] Speaker 04:
the different signal paths and why the technology used in one would not be expected to work with the other.

[00:08:01] Speaker 04:
So a lot of this is very technical, but can you sort of point to me, did he conclude or did he talk about this wouldn't be expected to work with the other?

[00:08:10] Speaker 04:
Can you just point to me to where that is?

[00:08:16] Speaker 00:
Well, I'm looking, Your Honor, at 22,667

[00:08:20] Speaker 00:
When you were developing a two-line phone, did you have any concerns about the environment you were going to put that into in the real world?

[00:08:29] Speaker 00:
Yes, we did.

[00:08:30] Speaker 00:
Explain that, please.

[00:08:32] Speaker 00:
Well, in one-line CapTel, we used this box that was referred to as a DSPCOM, and it sits by a CA, that's Call Assistant Agent Station, and the telephone line signals come through a special PBX,

[00:08:45] Speaker 00:
I don't know if you're familiar with the term.

[00:08:47] Speaker 04:
OK, well, I don't want to take all your time, because this goes on for several paragraphs.

[00:08:51] Speaker 00:
I'm just looking for... If I could also note, Your Honor, Mr. Colwell also testified that, in fact, when they went to the two-line system, they didn't even originally think to use the echo cancellation for two reasons.

[00:09:11] Speaker 00:
The first reason is they were having such problems getting the echo canceler to work in the one line system that they didn't want to use that.

[00:09:19] Speaker 04:
Is that analysis included in what you just cited us?

[00:09:22] Speaker 04:
Do you know where that is in the record?

[00:09:24] Speaker 04:
Is that here?

[00:09:24] Speaker 00:
It is in the record.

[00:09:25] Speaker 00:
And your honor, I believe that would be appendix 22,670.

[00:09:30] Speaker 00:
So the first reason he gives is because of the troubles that echo cancellation was giving them at the critical date in the one line system.

[00:09:41] Speaker 00:
And the second reason was this difference in architecture, that even if you could get it to work in one line, you would have such greater variability and lack of control, was their working theory.

[00:09:52] Speaker 01:
What's the conclusion that's reached about that?

[00:09:55] Speaker 01:
Because any time you're going to combine pieces of prior art under an obviousness analysis, there are going to be changes that have to be made to the prior art.

[00:10:06] Speaker 01:
What is the suggestion here?

[00:10:09] Speaker 01:
that it appeared to be so difficult to do that, that it would have deterred someone from doing it?

[00:10:15] Speaker 01:
Where does he say that?

[00:10:17] Speaker 00:
That is precisely our argument.

[00:10:20] Speaker 01:
That's your argument, but where's the testimony that supports it?

[00:10:23] Speaker 00:
The testimony that supports it is that the inventors themselves were having such problems with the one-line system that they didn't even think to use it themselves.

[00:10:32] Speaker 00:
It was a year later.

[00:10:34] Speaker 00:
They launched the two-line system in earnest on research and development,

[00:10:39] Speaker 01:
I'm sorry, what do you mean that the inventors found it so difficult, the one-line system, they didn't even think of using it.

[00:10:45] Speaker 01:
Using it for what?

[00:10:46] Speaker 01:
Using it with a two-line system?

[00:10:47] Speaker 00:
To block the voice.

[00:10:48] Speaker 00:
To block the voice in the two-line system, that's correct.

[00:10:51] Speaker 00:
They originally thought of a different method to split the voices, tapping at the earpiece of the CA.

[00:10:57] Speaker 00:
And it was for two reasons.

[00:10:58] Speaker 01:
All of the difficulties... Where is the testimony that someone skilled in the art would have been deterred from approaching it this way because of these likely difficulties?

[00:11:09] Speaker 00:
Well, Mr. Caldwell's testimony at 22,670 establishes the fact that the jury was allowed to consider Mr. Caldwell relied upon those facts and summarized it.

[00:11:22] Speaker 01:
But he doesn't actually say that someone would have been deterred, right?

[00:11:26] Speaker 00:
Well, he said they were deterred.

[00:11:28] Speaker 00:
Where does he say that?

[00:11:33] Speaker 00:
At 22,670.

[00:11:34] Speaker 00:
Where?

[00:11:42] Speaker 01:
I don't see where he says they were deterred.

[00:11:44] Speaker 04:
Well, he says, well, if we're having some problem with the echo counselor in the one line, are there other ways we could do it in a two line?

[00:11:51] Speaker 04:
And we talked about actually taking the audio off the earpiece and sending it to the CA, but we didn't, in fact, find that acceptable or do that.

[00:12:02] Speaker 04:
But I don't know why.

[00:12:04] Speaker 04:
Does he explain why it was

[00:12:06] Speaker 04:
why they didn't do it anymore that we didn't find that acceptable?

[00:12:10] Speaker 00:
Only the citations that I've given you that he compared the two systems.

[00:12:15] Speaker 02:
Your response to the Chief's first question, which is where did he say that the two are different, that actually starts a little earlier than you first cited us, doesn't that start at 2266 and go over into the

[00:12:30] Speaker 02:
I mean, it actually does begin the discussion of how there are differences between the two.

[00:12:36] Speaker 00:
Yes, Your Honor.

[00:12:37] Speaker 00:
And this is all evidence from which the jury had the right to take a reasonable inference that a person of ordinary skill in the art, looking at all the problems they were having with the CapTel trials, wouldn't think to go to this prior art and wouldn't think to combine it.

[00:12:55] Speaker 00:
The question before this court, for the district court, and now de novo before this court,

[00:13:00] Speaker 00:
isn't to look for substantial evidence in support of Sorensen.

[00:13:05] Speaker 00:
The jury could have ruled that way.

[00:13:07] Speaker 00:
They didn't.

[00:13:08] Speaker 00:
And they made several important factual findings.

[00:13:11] Speaker 00:
We have to respect those implied factual findings because they are supported by substantial evidence.

[00:13:19] Speaker 01:
But this isn't substantial evidence of teaching away, right?

[00:13:23] Speaker 00:
I think, Your Honor, under the recently

[00:13:32] Speaker 00:
Thank you.

[00:13:33] Speaker 00:
I'm in my rebuttal time.

[00:13:35] Speaker 00:
Under the standard recently set forth in Arctic Cat versus Bombardier, which is a case decided after the briefing, you don't need a full teaching away.

[00:13:46] Speaker 00:
But if you look at the prior art reference, and here we have this living, breathing prior art reference of the full Capptill trials, and all the problems they were having, including past the critical date, the documents, you don't even have to believe the witnesses, the documents we cited say,

[00:14:00] Speaker 00:
echo cancellation is in development, does not work, continue to have problems.

[00:14:06] Speaker 00:
It was the number one complaint through the critical date.

[00:14:09] Speaker 00:
The POSA would be charged with all of that knowledge and you can't simply look to one teaching of the prior art reference

[00:14:17] Speaker 04:
as we learned in our... You just said, they said, does not work, whatever.

[00:14:22] Speaker 04:
Is that the citation you were already talking about or is that somewhere else?

[00:14:27] Speaker 00:
Some of the documents that would support that would be found at appendix 23,616 and 23,615.

[00:14:33] Speaker 00:
And those documents say it doesn't work?

[00:14:39] Speaker 00:
Line Echo, client hears its own voice.

[00:14:41] Speaker 00:
Echo Canceler is currently under development.

[00:14:44] Speaker 00:
Testers report client still hears Echo.

[00:14:47] Speaker 00:
Echo problem is still quite prevalent, exclamation point.

[00:14:51] Speaker 04:
I'm sorry, can you give me the site again?

[00:14:54] Speaker 00:
Sure.

[00:14:54] Speaker 00:
23,615 and 23,600.

[00:14:57] Speaker 01:
What's the development of the single line echo cancelers?

[00:15:04] Speaker 01:
Are those documents related to?

[00:15:06] Speaker 00:
They relate to August and September of 2003 and the critical date, I believe, in February 2003.

[00:15:14] Speaker 00:
So all these problems, a POSA would be charged with knowing when deciding how to develop this system.

[00:15:21] Speaker 01:
But before the critical date, the one-line echo canceler was being used and used extensively, right?

[00:15:28] Speaker 00:
It was being tested extensively, and it was failing.

[00:15:32] Speaker 00:
And Ms.

[00:15:33] Speaker 01:
Frazier testified... I thought there was representation to the FCC that it worked.

[00:15:38] Speaker 00:
Oh, no, Your Honor.

[00:15:39] Speaker 00:
And that is a fundamental

[00:15:42] Speaker 00:
I think, misstatement of the evidence.

[00:15:45] Speaker 00:
The FCC was told that the CAPTEL trials as a whole were succeeding.

[00:15:51] Speaker 00:
But there is no mention of echo cancellation.

[00:15:54] Speaker 00:
And the data in that FCC document, it is undisputed that the data in that document was based on testing done not in the trials themselves, but in the lab.

[00:16:08] Speaker 00:
They were using plain one-sided tapes

[00:16:11] Speaker 00:
just the hearing user's voice and having a call assistant test the other technology because this was part of a much larger project where they were testing a brand new revoicing system.

[00:16:26] Speaker 00:
And so the fact, the representations that it worked or the accuracy and speed they were achieving, that was test done without echo cancellation.

[00:16:38] Speaker 00:
And the reason why

[00:16:41] Speaker 00:
that they had to do it that way, is it would violate the FCC rules.

[00:16:46] Speaker 00:
Ultratech was not allowed to tape these live calls.

[00:16:50] Speaker 00:
So there's no way to test speed and accuracy unless you're retaining what the other user is saying.

[00:16:57] Speaker 00:
So that is absolutely evidence of nothing as to how well the agrarians were.

[00:17:02] Speaker 01:
So your position is that because there were problems with the one line system,

[00:17:07] Speaker 01:
someone would not have thought to use echo cancellation in the two-line system.

[00:17:11] Speaker 00:
That's precisely right, and that's at least, Your Honor, a reasonable inference.

[00:17:16] Speaker 00:
And it is an implicit finding by the fact finder that this court has to respect.

[00:17:21] Speaker 04:
I know you've passed your time, but we control that.

[00:17:23] Speaker 04:
Thank you, Your Honor.

[00:17:24] Speaker 04:
Let me ask you to comment briefly about the secondary consideration.

[00:17:28] Speaker 04:
Yes, Your Honor.

[00:17:28] Speaker 04:
Because that was a little unclear on what the district court actually was doing.

[00:17:34] Speaker 04:
He considers them supported by substantial evidence.

[00:17:37] Speaker 04:
So you don't have any problem with that.

[00:17:39] Speaker 04:
Correct.

[00:17:40] Speaker 04:
So what's the problem?

[00:17:42] Speaker 04:
I mean, he's giving them credit, and then he's doing a weighing thing, which is arguably a legal thing to do at the end of the day.

[00:17:49] Speaker 04:
So what's the problem with what he did?

[00:17:51] Speaker 00:
So under this court's authority, including WBIB versus Kohler, there's not just one factual finding that the district court has to respect.

[00:18:00] Speaker 00:
There are three.

[00:18:01] Speaker 00:
The first one is the existence of secondary consideration.

[00:18:04] Speaker 00:
The district court at least gave lip service to that.

[00:18:07] Speaker 00:
But what he didn't respect was the implicit finding by the fact finder that there was a nexus between those secondary considerations and the claimed invention.

[00:18:16] Speaker 00:
Well, he wouldn't have said that there is evidence.

[00:18:19] Speaker 04:
I mean, that's what I'm confused about, frankly, because he wouldn't have said, if he didn't think there was nexus, then he would have said they shouldn't have considered those as indicia of non-obviousness.

[00:18:30] Speaker 04:
And he said the opposite.

[00:18:32] Speaker 04:
And then I understand.

[00:18:34] Speaker 04:
I mean, he says, then he goes on to say, was very weakly tied.

[00:18:39] Speaker 04:
Is that what you think?

[00:18:41] Speaker 04:
He was talking about the nexus there?

[00:18:43] Speaker 00:
Yes, he's criticizing nexus, even though there is a presumption of nexus, because the unrebutted testimony was.

[00:18:48] Speaker 04:
But even though he had said previously that he was kind of crediting.

[00:18:53] Speaker 04:
So I'm really just asking you for how you're reading.

[00:18:57] Speaker 00:
We are reading this at.

[00:19:00] Speaker 00:
The district court heard Brenda Batot's testimony on secondary considerations.

[00:19:05] Speaker 00:
And immediately after, he ruled on the record that Ms.

[00:19:09] Speaker 00:
Batot's testimony alone is substantial evidence to find non-obviousness.

[00:19:14] Speaker 00:
And he said that a couple of times.

[00:19:16] Speaker 00:
It was only a year later when he's reweighing the evidence and looking to how perhaps the district court thought this case should have been tried.

[00:19:27] Speaker 00:
And he looked to functional equivalence, that's Ms.

[00:19:29] Speaker 00:
Patat's same testimony, and said that supports a motivation to combine.

[00:19:33] Speaker 00:
So you can't do that as a district court on a judgment as a matter of law.

[00:19:38] Speaker 00:
You must give a reasonable inference.

[00:19:40] Speaker 00:
No, but I'm asking about the secondary considerations.

[00:19:42] Speaker 00:
Yes, and that was Ms.

[00:19:43] Speaker 00:
Patat's testimony.

[00:19:44] Speaker 00:
The judge actually looked at secondary considerations and said that was evidence of a motivation to combine, which is an impermissible inference for him to take.

[00:19:53] Speaker 00:
Perhaps Sorensen could have, should have argued that to the jury.

[00:19:57] Speaker 00:
For the record, they never argued the district court's stated motivation to combine to the jury.

[00:20:03] Speaker 00:
They never offered functional equivalence as a reason why.

[00:20:06] Speaker 00:
So the judge looked at the evidence, agreed with us on substantial evidence, a year later changed his mind.

[00:20:14] Speaker 02:
But with respect to the question that the chief was asking, initially what he said was, OK, there's a nexus, but I just don't think it's a good nexus.

[00:20:24] Speaker 02:
Is that what he was saying?

[00:20:27] Speaker 02:
criticizing- A strong nexus?

[00:20:29] Speaker 00:
A strong nexus.

[00:20:30] Speaker 00:
But he had to concede there was a nexus.

[00:20:32] Speaker 00:
He did concede it, but then, Your Honor, he clearly didn't apply it, because there was not just a presumption, but there was also direct evidence supporting nexus.

[00:20:41] Speaker 00:
The third factual determination, implicit determination under WBIP, which the judge disregarded, is that the jury had to make the factual determination of the probative value of the secondary considerations.

[00:20:56] Speaker 00:
And the judge doesn't address that at all.

[00:20:59] Speaker 00:
In fact, he gives his own view of the probative value, which is improper on a judgment as a matter of law.

[00:21:07] Speaker 04:
OK.

[00:21:07] Speaker 04:
I'll always start some rebuttal.

[00:21:08] Speaker 04:
Let's hear from the other side.

[00:21:09] Speaker 04:
Thank you, Your Honor.

[00:21:17] Speaker 04:
Good morning.

[00:21:18] Speaker 03:
Thank you.

[00:21:19] Speaker 03:
May it please the court that the Exchequer for Sorenson Communications and caption call.

[00:21:24] Speaker 03:
The trial record reveals agreement

[00:21:26] Speaker 03:
between both sides' witnesses on three material points underlying the obviousness determination.

[00:21:32] Speaker 03:
First, the prior art, namely the 685 publication and the CapTel trials, disclosed all the claimed features of the patents at issue.

[00:21:40] Speaker 03:
Second, there were undisputed benefits of combining the two-line caption telephone system from the 685 with the echo cancellation feature from the CapTel trials.

[00:21:52] Speaker 03:
And third, a person of ordinary skill in the art

[00:21:56] Speaker 03:
would find only one logical configuration to make that combination work.

[00:22:02] Speaker 03:
That is moving the echo-canceler from the relay to the caption-type system.

[00:22:08] Speaker 04:
None of that, that's fine.

[00:22:10] Speaker 04:
But can you turn now to the two issues we were discussing, starting with motivation, because none of those, what you say, were undisputed facts.

[00:22:18] Speaker 04:
Sure.

[00:22:19] Speaker 04:
Half the question of whether or not there was sufficient motivation.

[00:22:22] Speaker 04:
And in doing so, just as a background, I'm sure you know,

[00:22:25] Speaker 04:
Whether you have a lot of evidence of that doesn't matter so much at this juncture.

[00:22:29] Speaker 04:
It's really with respect to their evidence.

[00:22:31] Speaker 03:
No.

[00:22:32] Speaker 03:
Absolutely understood, Your Honor.

[00:22:34] Speaker 03:
I mean, this is the rare case, and this is why we rely primarily on their expert's testimony to make the case to do it.

[00:22:40] Speaker 02:
Well, you just heard the dispute, especially as to that last point, as to whether that was a fair statement for you to make from the record.

[00:22:46] Speaker 02:
And frankly, when I went back and looked at what you cited, I didn't think there was strong evidence for that proposition.

[00:22:54] Speaker 03:
OK.

[00:22:55] Speaker 03:
head on the two pieces of evidence that they cite that say, cut the other way.

[00:22:59] Speaker 02:
And I think this is undisputed, that all five experts and we have all the- So you're just ignoring the fact that your third point that you say cuts really in your favor really isn't in the record.

[00:23:11] Speaker 03:
Well, no, Your Honor.

[00:23:12] Speaker 03:
It is in the record.

[00:23:13] Speaker 03:
And let me explain that.

[00:23:14] Speaker 03:
Let me take that head on.

[00:23:15] Speaker 03:
First of all, all five experts did say, if you were going to use echo cancellation in this device at all, there's only one place any person of ordinary skill in the art would put it.

[00:23:25] Speaker 03:
Those sites are on page 46, 45, 46, 47 of our brief.

[00:23:29] Speaker 03:
All five experts, four on their side and our side agree with that.

[00:23:33] Speaker 03:
And you should just, you can read them for yourselves and see that, but there shouldn't be any dispute about that.

[00:23:39] Speaker 03:
The two pieces of evidence that they cite that they say creates a substantial, that say supports substantial evidence against a motivation decline.

[00:23:47] Speaker 03:
Let me take those head on now.

[00:23:49] Speaker 03:
The first one is the stuff about incompatible architecture.

[00:23:53] Speaker 03:
We have no disagreement that there,

[00:23:55] Speaker 03:
expert says that, and our expert agreed that if you just take these two pieces of art as you find them, the two-line system and the echo cancellation from the CapTel trials, they would be incompatible.

[00:24:06] Speaker 03:
But that's legally irrelevant.

[00:24:08] Speaker 03:
As the Supreme Court said in KSR and as this court has said numerous times, including the Icahn Health case cited in our brief, it will often be the case

[00:24:17] Speaker 03:
that if you just take two pieces of prior and put them together, they'll be incompatible.

[00:24:21] Speaker 03:
They will not work.

[00:24:22] Speaker 03:
There has to be a modification here.

[00:24:24] Speaker 03:
But the key point here and the reason our expert agreed it was incompatible architecture, but our expert also said, and therefore experts agreed that in order to put echo cancellation into the two line system,

[00:24:37] Speaker 03:
There's only one possible way you could do it.

[00:24:40] Speaker 03:
You put it in the captioned telephone.

[00:24:43] Speaker 03:
So the incompatible architecture is legally irrelevant under CSI.

[00:24:46] Speaker 02:
It's not really irrelevant when you think about the question that we have to be asking.

[00:24:50] Speaker 02:
And you keep asking the wrong question.

[00:24:52] Speaker 02:
The question is whether or not there was substantial evidence from which a jury could conclude that you didn't prove by proof beyond, by clear and convincing evidence, that

[00:25:06] Speaker 02:
There was a motivation to combine.

[00:25:08] Speaker 02:
That's a very different question than the one you want us to answer.

[00:25:12] Speaker 02:
You want us to look at the record as if we are the trier of fact and decide which side we think has the better call on this.

[00:25:19] Speaker 02:
But that's not what our job is.

[00:25:21] Speaker 03:
No, Your Honor.

[00:25:22] Speaker 03:
I don't want you to do that.

[00:25:23] Speaker 03:
I completely agree with the test.

[00:25:25] Speaker 03:
I completely agree with everything.

[00:25:26] Speaker 03:
And that is why I want to rely on their experts.

[00:25:29] Speaker 03:
Look, there was a clear motivation to combine these two things.

[00:25:34] Speaker 03:
Everyone agreed.

[00:25:35] Speaker 03:
It's great to have a two line system.

[00:25:37] Speaker 03:
It allows greater convenience to those with hard of hearing.

[00:25:40] Speaker 03:
They can call people directly.

[00:25:41] Speaker 03:
They can call 911.

[00:25:42] Speaker 03:
Everyone agreed, there's no dispute about this in record, that echo cancellation of the assisted user's voice is a good thing.

[00:25:50] Speaker 03:
You would want that every time because it makes the call assistance job easier.

[00:25:55] Speaker 02:
an end result doesn't give you a motivation to combine two pieces of prior art.

[00:26:00] Speaker 02:
When you say clear motivation to combine, you're talking about a clear desire to get an end result.

[00:26:05] Speaker 02:
That actually, in some ways, would be a secondary consideration that would cut against obvious.

[00:26:11] Speaker 03:
Sure, Your Honor, but if I could connect that.

[00:26:14] Speaker 03:
Look, everyone agrees that you would want these two things together.

[00:26:17] Speaker 03:
You would want the benefits of it.

[00:26:19] Speaker 03:
So then the question is, would a person of ordinary skill in the art have a reasonable expectation of success?

[00:26:24] Speaker 03:
Would they have a reason to combine these two things?

[00:26:26] Speaker 03:
They want all of the benefits.

[00:26:28] Speaker 03:
Do they have a technical way to get there?

[00:26:30] Speaker 03:
Right.

[00:26:30] Speaker 04:
And we had a witness, and your friend pointed it out to some of the testimony.

[00:26:34] Speaker 04:
And that witness went on and on and on, talking about the complexities and the difficulties in doing that.

[00:26:40] Speaker 04:
And also on 22670, she pointed us to his statement, which talked about how hard it had been, all the problems they had engaged in one lie.

[00:26:51] Speaker 04:
OK, so.

[00:26:53] Speaker 04:
You're right.

[00:26:54] Speaker 04:
I mean, as a juror, I might not find that compelling.

[00:26:56] Speaker 04:
But why isn't that enough to dispel the clear and convincing evidence?

[00:27:02] Speaker 03:
Sure.

[00:27:02] Speaker 03:
So the reason why, a couple of reasons.

[00:27:05] Speaker 03:
One is you have to look at the time.

[00:27:07] Speaker 03:
The question for obviousness is not as of the time of the capitol trial in December.

[00:27:12] Speaker 03:
And if you look at that testimony, it says the time period which Mr. Colwell is testifying, and this is on the

[00:27:20] Speaker 03:
22669, the page before they cite, December 2001 to December 2002.

[00:27:26] Speaker 03:
That is not the relevant period for a person of ordinary skill in the art in the obviousness inquiry.

[00:27:31] Speaker 03:
It's at the time of invention, February 2004.

[00:27:35] Speaker 03:
By February 2004, everyone agrees that the echo-canceler in the one-line system had been reduced to practice and was working fine.

[00:27:44] Speaker 04:
So let me just ask you about that point.

[00:27:46] Speaker 04:
In 2260,

[00:27:49] Speaker 04:
operative paragraph, he said, when we were designing, are you, is it absolutely indisputed that when we were designing, the timeframe there is the 2001-2002 timeframe?

[00:28:02] Speaker 03:
Well, I mean, here's the question.

[00:28:04] Speaker 03:
It says, during that time period, did you have any meetings and discussions with your senior engineers about development?

[00:28:11] Speaker 03:
Yes.

[00:28:11] Speaker 03:
And did that occur over that entire year-long period?

[00:28:14] Speaker 03:
That's December 2001 to December 2002.

[00:28:17] Speaker 03:
And so that is the time period in which he's talking about it.

[00:28:20] Speaker 03:
And that makes sense.

[00:28:21] Speaker 03:
Look, when they were first thinking about it at that time, there was some uncertainty because they were still developing the CAPTEL 1 trials.

[00:28:29] Speaker 03:
But the question is, at the time of invention, at February 2004, CAPTEL 1 trials.

[00:28:34] Speaker 02:
So where do you have evidence, where do you have evidence, that at 2004, at the time of invention, there is no dispute that

[00:28:46] Speaker 02:
there would have been a motivation to combine these two things.

[00:28:51] Speaker 02:
So let's look at your evidence.

[00:28:53] Speaker 03:
Sure.

[00:28:54] Speaker 03:
So let me walk through it.

[00:28:56] Speaker 03:
So first is our expert, which I'll start with our expert.

[00:29:00] Speaker 03:
I think the best pages are 15574 to 15577 of the record.

[00:29:07] Speaker 03:
And there's our expert talking about why it would make sense to take this

[00:29:16] Speaker 03:
echo-canceler and move it from the relay into the captain telephone.

[00:29:21] Speaker 03:
The reason why, Your Honor, and this again, this testimony, all five experts agreed on this.

[00:29:26] Speaker 01:
I think we're getting a little confused here because I think there are two separate issues.

[00:29:33] Speaker 01:
One issue is whether echo-cancelation in the one-line system

[00:29:39] Speaker 01:
was so problematic that one wouldn't have been motivated to pursue that.

[00:29:44] Speaker 01:
And that's one of the arguments that they're making.

[00:29:46] Speaker 01:
The other argument has to do with moving the echo canceler from the relay to the captioned phone.

[00:29:54] Speaker 01:
Could you address those separately so that we don't get confused?

[00:29:58] Speaker 01:
Address first, perhaps, the suggestion that because of problems with the one line phone echo cancellation

[00:30:07] Speaker 01:
that someone would not have seen that advantage as a motivation to use it.

[00:30:13] Speaker 03:
Well, sure, Your Honor.

[00:30:14] Speaker 03:
Look, their one-line cap-tell, everyone agrees, was functioning perfectly well by February 2004.

[00:30:23] Speaker 03:
The critical date for obviousness is what would a person of ordinary skill in the art known at the time of invention?

[00:30:30] Speaker 03:
That is February 2004.

[00:30:32] Speaker 03:
It's not February 2003, the cutoff for the on-sale bar.

[00:30:35] Speaker 03:
It's not December

[00:30:36] Speaker 03:
2001 to 2002 when Colwell was first developing, when they were first thinking about it.

[00:30:42] Speaker 03:
Sure, when they were first thinking about it, they said, look, we're having some problems in the CAPTEL-1 trial.

[00:30:47] Speaker 03:
Are there other ways to do it?

[00:30:48] Speaker 03:
And then of course he says, look, we thought about the other ways, but we didn't do those.

[00:30:53] Speaker 03:
They ended up doing the echo cancellation.

[00:30:55] Speaker 03:
But the question is, at the time of the invention, at the time CAPTEL-1 was working and they were getting FCC reimbursements for actually using it, and it was up and running,

[00:31:06] Speaker 03:
Would a person of ordinary skill in the art thought, OK, here's an echo canceler of the assisted user's voice in Capital One.

[00:31:15] Speaker 03:
Would I combine it with a two-line system in the 685 publication so that I can get echo cancellation and get both benefits?

[00:31:22] Speaker 03:
There's undisputed benefits of combining it, an expert

[00:31:26] Speaker 03:
any person of ordinary skill in the art would want to do it.

[00:31:28] Speaker 02:
And here is the kicker on this, even if there's some... You haven't pointed me to anything in your evidence that clearly says what you're saying.

[00:31:36] Speaker 02:
Anyone would have wanted to do this.

[00:31:39] Speaker 02:
And again, the question is not whether

[00:31:41] Speaker 02:
anyone might have wanted to do it, but whether there was sufficient evidence from which the jury could conclude that you didn't prove that.

[00:31:47] Speaker 02:
That you're not proving it to me.

[00:31:49] Speaker 02:
I'm beginning to understand why the jury didn't think you proved it to me.

[00:31:54] Speaker 03:
OK, well, maybe I'm sorry if I'm doing a poor job.

[00:31:56] Speaker 03:
But Shenoy at 15591, he says, look, it is a natural progression when you move from a one-line system to a two-line system that you would want to have the echo cancellation of the assisted user's voice.

[00:32:10] Speaker 03:
At 1557, so that's the first part, I guess, to Judge Dyke's question, if I take them separately.

[00:32:17] Speaker 03:
The second part is, okay, if you want the... Slow down, slow down.

[00:32:21] Speaker 03:
Okay, sorry.

[00:32:22] Speaker 02:
All right.

[00:32:24] Speaker 02:
We're still talking about the relay.

[00:32:29] Speaker 03:
Right?

[00:32:29] Speaker 03:
So here, I guess, if you start on 15590, it says, I'd like to walk you through the opinions.

[00:32:37] Speaker 03:
on why a person of ordinary skill in the art would have combined the teachings as you've testified.

[00:32:44] Speaker 03:
Will you please explain this slide to the jury?

[00:32:45] Speaker 03:
So this slide refers to motivation to combine is that why a person of ordinary skill in the art looks at what's around in the pieces and puts together.

[00:32:52] Speaker 03:
The prior art included teachings and motivations to combine a two line caption telephone with the use of echo cancellation.

[00:33:00] Speaker 03:
It would arise naturally from the transition from a one line caption telephone

[00:33:05] Speaker 03:
to a two-line caption system.

[00:33:07] Speaker 03:
Also, echo cancellation was already used in one-line system for canceling echoes of the voice assisted user.

[00:33:15] Speaker 02:
So that is saying it'll just naturally occur.

[00:33:19] Speaker 02:
That's supposed to be sufficient evidence.

[00:33:21] Speaker 02:
No.

[00:33:21] Speaker 03:
What he's saying is that a person of ordinary skill in the art would want to take... Would want to do it.

[00:33:27] Speaker 03:
Yes.

[00:33:27] Speaker 03:
And then the second piece of it is would know how to do that.

[00:33:31] Speaker 03:
So the first piece, just to answer judge's questions, would they have been motivated, would they have thought to do it based on CAPTEL?

[00:33:38] Speaker 03:
On CAPTEL, yes.

[00:33:39] Speaker 03:
The answer is as of February 2004, CAPTEL is successfully blocking... Well, but what's your response to your friend's argument on the other side?

[00:33:48] Speaker 02:
That what you pointed to with respect to the FCC and the statements to the FTC was not actually what's at issue here.

[00:33:54] Speaker 03:
Okay, so it's conflating two different things, Your Honor, if I can clarify.

[00:33:58] Speaker 03:
That is with respect to the, whether it is prior art, the priority date, the priority cutoff date for the public use bar is February 2003.

[00:34:07] Speaker 03:
It doesn't matter what was happening in February 2003.

[00:34:09] Speaker 03:
Their argument there is it wasn't working perfectly as of February 2003.

[00:34:15] Speaker 03:
They have never argued, nor would they argue in February 2004, when this service is up and running, capital trials are over, they've conclusively determined it works.

[00:34:25] Speaker 03:
That would do it.

[00:34:27] Speaker 03:
Obviousness is, of course, the date of the invention.

[00:34:30] Speaker 03:
That's February 2004.

[00:34:30] Speaker 03:
It's not the priority cutoff date for on-sale bars.

[00:34:33] Speaker 03:
So that's the legal response.

[00:34:35] Speaker 03:
As a factual matter on the FCC petition, that was filed in April 2002.

[00:34:40] Speaker 03:
So that's the time frame we're talking about, not the relevant time frame.

[00:34:43] Speaker 03:
But if we want to even talk about that time frame in that petition, this is what they said.

[00:34:48] Speaker 03:
This is at appendix page 25, 327.

[00:34:51] Speaker 03:
And this is a quote.

[00:34:53] Speaker 03:
The CapTel trial already has proven

[00:34:57] Speaker 03:
that there is now a viable technology.

[00:34:59] Speaker 03:
Now, what they now say is, oh, well, we meant the CAPTEL trial without the echo counselor.

[00:35:05] Speaker 03:
They never said that to the FCC.

[00:35:07] Speaker 03:
This petition to the FCC is to get reimbursement for a working service.

[00:35:12] Speaker 03:
It's not to get, there's a fund that the FCC has set up for when you provide telecommunication services to the deaf and hard of hearing.

[00:35:19] Speaker 03:
This is a petition that says pay us because we are providing working service

[00:35:25] Speaker 03:
to the deaf and hard of hearing.

[00:35:28] Speaker 03:
They never mentioned to the FCC, oh, that this excludes the echo cancel.

[00:35:33] Speaker 03:
Nor could they have done that, because then it wouldn't be a working service.

[00:35:36] Speaker 03:
A critical part of this working service is the echo canceler so that the call assistant can transcribe the conversation.

[00:35:44] Speaker 03:
So for them to come back now and say, it didn't mean the echo cancel.

[00:35:48] Speaker 03:
And if you look at the inventor's own testimony, and this is at 15705, that's where he says, look, echo cancellation was

[00:35:54] Speaker 03:
a component of the CAPTEL trials for which we were seeking reimbursement.

[00:35:59] Speaker 03:
And that's at 15705.

[00:36:01] Speaker 03:
That's their own inventor.

[00:36:03] Speaker 03:
So one, as a factual matter, it just doesn't work.

[00:36:07] Speaker 03:
They were asking the FCC to reimburse them for a working service.

[00:36:11] Speaker 03:
The fact that they now say their system worked without echo cancellation, well, you wouldn't get reimbursement if that was the case.

[00:36:18] Speaker 03:
Because if the echo cancel didn't work, then the service doesn't work as they've represented it.

[00:36:22] Speaker 03:
to the FCC.

[00:36:24] Speaker 03:
But again, that's irrelevant because the relevant time period is February 2004.

[00:36:28] Speaker 03:
They have never contested that echo cancellation did not work, nor could they, since that was after the capitol trial.

[00:36:35] Speaker 04:
The clock is running, so let me just have you spend a little time talking about the secondary considerations and the discussion we had with your friend about exactly what the district court judge was saying we're doing here.

[00:36:48] Speaker 03:
Sure.

[00:36:48] Speaker 03:
So I think what the district court was doing is what

[00:36:51] Speaker 03:
This court is suggested as the court's role, for example, in Richardson vix, where it says, look.

[00:36:58] Speaker 03:
And I think the district court said, look, there's some evidence here of secondary consideration.

[00:37:02] Speaker 03:
But ultimately, it's a legal balancing inquiry.

[00:37:05] Speaker 03:
I have to look at the evidence under all the Graham Factors.

[00:37:07] Speaker 03:
I have to weigh the evidence of obviousness under the first three.

[00:37:11] Speaker 04:
When he says that he uses the term, we're very weakly tied, do you agree he must have been saying there wasn't really

[00:37:18] Speaker 04:
a nexus show?

[00:37:19] Speaker 04:
I think he's talking about nexus there.

[00:37:22] Speaker 04:
And isn't there kind of in our law presumption of nexus?

[00:37:25] Speaker 04:
And wasn't there sufficient basis for the jury to conclude there was nexus on this record?

[00:37:29] Speaker 03:
Well, Your Honor, I don't think here that you would get the presumption of nexus.

[00:37:35] Speaker 03:
And that's because the cap tell service to which they were tying the praise, the licensing and sales and all of that thing, that was not coextensive with the claimed invention.

[00:37:45] Speaker 03:
The cap tell service

[00:37:46] Speaker 03:
also encompassed a one-line service.

[00:37:49] Speaker 03:
That is, it wasn't limited to the two-line invention in the 398.

[00:37:53] Speaker 03:
It wasn't co-extensive.

[00:37:54] Speaker 03:
It also, capital service as it exists, encompasses both two-line and one-line, which was the prior invention.

[00:38:02] Speaker 01:
I thought they separated out the number of calls that were processed in the two-line system.

[00:38:06] Speaker 03:
They didn't separate out the number of calls, the minutes of usage.

[00:38:10] Speaker 03:
The only thing they say, and this is only with respect to the commercial success factor, is they said they sold

[00:38:15] Speaker 03:
uh... uh... more more two-line phones and one-line phones but two-line phones can also do one-line service there's no evidence they present any evidence of what they don't have had to say

[00:38:27] Speaker 02:
that your evidence was sufficient to overcome the presumption of nexus.

[00:38:32] Speaker 02:
And that's not what the judge said.

[00:38:34] Speaker 02:
Well, Your Honor, I guess... The judge just said there's a nexus, there's a presumption of nexus, but it's not great.

[00:38:40] Speaker 03:
No, Your Honor, the judge never found a presumption of nexus.

[00:38:44] Speaker 02:
Well, then that would have been a mistake right there.

[00:38:46] Speaker 03:
Well, no, no, I don't think so for the reason that I just gave, that is, capital service is not coextensive with the claimed invention.

[00:38:51] Speaker 03:
Capital service includes both two-line, and this is undisputed,

[00:38:54] Speaker 03:
and one line service.

[00:38:56] Speaker 03:
One line service is not part of the patent 398.

[00:38:59] Speaker 03:
That was a prior thing.

[00:39:02] Speaker 03:
So capital service, when they're talking about the praise, all the licensing sales, all of that stuff, that encompasses one line.

[00:39:08] Speaker 03:
So the presumption of nexus applies when it's co-extended.

[00:39:13] Speaker 03:
Then you get the presumption that, okay, well, all of your evidence of secondary considerations were here.

[00:39:18] Speaker 03:
So you don't get it.

[00:39:18] Speaker 03:
But even if you did have some sort of nexus, I think the district court was within its bounds in saying,

[00:39:25] Speaker 03:
It's relatively weak here.

[00:39:26] Speaker 03:
But ultimately, as this court said in Richards and Vicks, and Richards and Vicks is actually a tougher case there, just like in this case, the jury found obviousness.

[00:39:34] Speaker 03:
There, just like in this case, the judge ruled for JNOV, judgment notwithstanding the verdict on obviousness.

[00:39:39] Speaker 03:
But unlike here, the judge made an error and said, I think secondary considerations are irrelevant.

[00:39:44] Speaker 03:
He had some basis to say that I'm disregarding the secondary considerations of evidence in that case.

[00:39:49] Speaker 03:
What this court said is, look, the district court was wrong.

[00:39:53] Speaker 03:
on disregarding the secondary considerations of evidence.

[00:39:56] Speaker 03:
There was substantial evidence supporting secondary considerations.

[00:39:59] Speaker 03:
But ultimately, it is a legal balancing under the Graham factors.

[00:40:04] Speaker 03:
We have to look at that.

[00:40:05] Speaker 03:
And court has to decide.

[00:40:07] Speaker 03:
And we, the federal circuit, are going to say, look, even though the district court gave short shrift to that, we think ultimately he got it right because of the overwhelming evidence box.

[00:40:16] Speaker 04:
Is there anything in the opinion where he articulates the weakness argument that you make here?

[00:40:21] Speaker 04:
that it had the one line and the two line, for example, taking the commercial success.

[00:40:26] Speaker 04:
Is he articulating his agreement that that was the basis?

[00:40:31] Speaker 03:
The secondary considerations portion of the opinion doesn't directly address that.

[00:40:40] Speaker 03:
He does say in a number of places that you couldn't connect it to the claimed features.

[00:40:50] Speaker 03:
you know, the praise or the licensing or the commercial success.

[00:40:54] Speaker 03:
And, you know, to me, that's where you can draw the fact that this invention wasn't, in fact, coincident with the 398.

[00:41:01] Speaker 03:
And so that's, to me, the closest you get it.

[00:41:06] Speaker 03:
You also have... But ultimately, I guess what I would come down to is the district court did credit some evidence of substantial

[00:41:16] Speaker 03:
did credit some evidence of secondary considerations, but then did what this court says a court is supposed to do.

[00:41:22] Speaker 03:
Ultimately, it's still a legal question as to whether under the Graham Factors, the evidence of obviousness under the Graham Factors outweigh the evidence of non-obviousness under the secondary considerations.

[00:41:33] Speaker 03:
And what the district court said is that yes, as a matter of law here, given all the evidence of obviousness here, that it would outweigh.

[00:41:41] Speaker 03:
And so that, I think, that mode of analysis is correct as a matter of law and it goes exactly to the bifurcation between the jury's role and the judge's role that this court has set out.

[00:41:54] Speaker 04:
Thank you.

[00:41:55] Speaker 04:
Thank you, Your Honor.

[00:42:03] Speaker 00:
Your Honor, a few clarifying points.

[00:42:06] Speaker 01:
Can I just ask you a couple of questions?

[00:42:08] Speaker 01:
Of course, Your Honor.

[00:42:10] Speaker 01:
If we look at February 2004, is there evidence in the record that there was concern that the echo cancellation wouldn't work in the one line system?

[00:42:22] Speaker 00:
If we look exclusively to the one line system, I believe the last record evidence takes us out at least through August 2003.

[00:42:32] Speaker 00:
And then there was, you know, from that, it is such a small timeframe that Jerry certainly could take a reasonable inference that everything wasn't perfect.

[00:42:44] Speaker 00:
But, you know, we're looking at this timeframe and deciding whether another POSA would have been motivated to combine.

[00:42:52] Speaker 00:
And if you look at all of UltraTech's evidence, there is a lot of evidence that would dissuade a POSA because of the two years of problems

[00:43:01] Speaker 00:
that CapTel had during the trials.

[00:43:04] Speaker 01:
OK.

[00:43:05] Speaker 01:
The other question I have is, was there any evidence that someone would anticipate difficulty in moving the echo canceler from the relay to the caption foam?

[00:43:21] Speaker 01:
I know you argue that the testimony that we were talking about earlier wasn't a concession, that it would have been logical to do it.

[00:43:29] Speaker 01:
But did you have any testimony

[00:43:32] Speaker 01:
that it would have been difficult to move the echo canceler from the relay to the caption phone.

[00:43:39] Speaker 00:
Yes, Your Honor, and I would circle back to the sites I provided at the beginning of argument.

[00:43:44] Speaker 00:
Mr. Caldwell said the thought was you wouldn't be able to control the echo canceler.

[00:43:53] Speaker 00:
You couldn't strengthen or decline, for example, the strength of the telephone signal if the echo canceler was failing.

[00:44:01] Speaker 00:
If it's in every single phone, thousands of phones across the country, he lacks control as opposed to one box at his relay station that he can modify as there are problems.

[00:44:11] Speaker 00:
The other thing he testified to were the varying conditions of the literally thousands of telecom companies across the country.

[00:44:19] Speaker 00:
He doesn't have control over that.

[00:44:22] Speaker 00:
And so he said that was a reason why they didn't even think to try to use the echo cancellation

[00:44:30] Speaker 00:
at the beginning, and in fact, they didn't put echo cancellation.

[00:44:34] Speaker 01:
That doesn't really address, I mean, what I'm asking is, did your witness specifically address a difficulty in moving the echo canceler from the relay to the captioned phone?

[00:44:48] Speaker 00:
Do you mean as a question of fact when Ultratech did it, or do you?

[00:44:52] Speaker 01:
No, it is that someone would have been deterred from making this combination because of the difficulty

[00:45:00] Speaker 01:
in moving the echo canceler from the relay to the captioned phone.

[00:45:05] Speaker 01:
You pointed out to us testimony, you said that doesn't stand for the opposite proposition, but where is the testimony that says that someone would have been deterred because of the difficulty in moving from the relay to the captioned phone?

[00:45:20] Speaker 00:
I would have to refer, Your Honor, once again to the testimony of Mr. Colwell that I've already cited, that not only would someone be deterred, but he was deterred.

[00:45:29] Speaker 01:
No, but that doesn't address the movement from the relay to the caption phone.

[00:45:34] Speaker 01:
I'm asking not in a general matter whether someone would have been deterred, but whether one would have been deterred from the necessity of making this one movement.

[00:45:44] Speaker 00:
Yes, Your Honor, because once you move it from the relay to the phones, the caption telephone service provider would lack control.

[00:45:55] Speaker 00:
So when there are problems with it, when the echo canceler fails, for example,

[00:45:58] Speaker 00:
What do you do about it?

[00:46:00] Speaker 00:
He lacks control.

[00:46:01] Speaker 00:
He can't go to 10,000 telephones across the country.

[00:46:05] Speaker 00:
He also testified at length that I can't begin to do justice to, but the same site I referred to you, that the varied conditions of telephone lines provided by thousands of various telecom companies explain why that would deter someone from thinking that you would want to move the echo canceler

[00:46:28] Speaker 00:
to the phones.

[00:46:34] Speaker 00:
The various testimony on the incompatible architecture signal flow and that Mr. Ludwig summarized as well.

[00:46:44] Speaker 00:
Based on that testimony, he came to that conclusion as an expert.

[00:46:49] Speaker 00:
Speaking of the experts, just to clarify a couple of points that Council made.

[00:46:54] Speaker 00:
as far as UltraTech's four experts all agreeing that this was a modest place or it was the reasonable place to go.

[00:47:02] Speaker 00:
First of all, obviously, their expert was impeached and the jury had the right to disregard.

[00:47:07] Speaker 00:
But as far as the four experts of UltraTech, that is Mr. Ludwig, and we read that testimony.

[00:47:16] Speaker 00:
He didn't make that admission.

[00:47:18] Speaker 00:
The other three are the inventors.

[00:47:24] Speaker 00:
Standard Oil, for example, cited in our brief, you don't look to the aha moment what the inventor's persons of extraordinary skill actually thought.

[00:47:34] Speaker 00:
Wait a second.

[00:47:34] Speaker 01:
It's not automatically true that an inventor is someone of extraordinary skill.

[00:47:39] Speaker 01:
We have plenty of cases where we've relied on inventor testimony as being POSA testimony.

[00:47:45] Speaker 00:
Okay.

[00:47:46] Speaker 00:
Two responses to that, Your Honor.

[00:47:47] Speaker 00:
You're correct.

[00:47:48] Speaker 00:
First of all, just so we're clear, none of the inventors said a person of ordinary skill in the art would have done this, or found it obvious or reasonable.

[00:47:57] Speaker 00:
They never said that.

[00:47:59] Speaker 00:
As far as the skill of these three inventors, they invented the entire captioned telephone, put a period there.

[00:48:10] Speaker 00:
They invented all the software, the hardware, all the methods.

[00:48:13] Speaker 01:
There was not- Was their background different from someone who was opposing?

[00:48:18] Speaker 00:
You mean their educational background, Your Honor?

[00:48:23] Speaker 01:
There was a stipulation about what a POSA was.

[00:48:26] Speaker 01:
Do they not fit within that category?

[00:48:28] Speaker 00:
No, Your Honor, they do not.

[00:48:31] Speaker 01:
Because of the background?

[00:48:32] Speaker 00:
Because of their achievements and expertise and experience, which you would rely upon.

[00:48:39] Speaker 01:
If you have a certain level of achievements?

[00:48:44] Speaker 00:
One should not go about determining obviousness under section 103 by inquiring what patentees, i.e.

[00:48:51] Speaker 00:
inventors, would have known.

[00:48:53] Speaker 00:
That is Standard Oil versus American Cyamid, 774F2nd, 448 from this court.

[00:49:02] Speaker 00:
Do you have a final point?

[00:49:03] Speaker 00:
Yes, Your Honor.

[00:49:09] Speaker 00:
As far as the nexus and secondary considerations,

[00:49:13] Speaker 00:
I believe counsel misspoke.

[00:49:16] Speaker 00:
In fact, the evidence, as is referred to in our brief, does separate the one-line minute from the two-line minute.

[00:49:22] Speaker 00:
And there was never a challenge to commercial embodiment at trial.

[00:49:29] Speaker 00:
So this question of nexus is a red herring.

[00:49:35] Speaker 00:
Finally, as far as the FCC, it wasn't

[00:49:39] Speaker 00:
There was unrebutted testimony as to what that testing was in that petition.

[00:49:45] Speaker 00:
And if the court has any concerns as far as what the FCC would have known, or frankly what Sorensen knows about recording telephone calls, if you look to the evidence that we cited in support of praise, for example, there are multiple documents from Sorensen

[00:50:08] Speaker 00:
where they repeatedly script for their call assistance, FCC rules prohibit any recording of calls, and we are audited regularly by the FCC.

[00:50:21] Speaker 00:
The FCC rules prohibit any recordings of your calls, so your calls are never recorded.

[00:50:26] Speaker 00:
That's a really undisputed fact.

[00:50:29] Speaker 00:
So there is no way that the FCC would have known that UltraTech was recording calls

[00:50:36] Speaker 00:
which is how you would have tested with echo cancellation.

[00:50:39] Speaker 00:
Okay, thank you.

[00:50:40] Speaker 04:
We thank both sides and the case is submitted.

[00:50:47] Speaker 04:
Next case for argument is 171828.