[00:00:03] Speaker 00:
The first case on calendar is ABS Global.

[00:00:09] Speaker 00:
Mr. Horowitz, are you ready to proceed?

[00:00:13] Speaker 00:
You may.

[00:00:13] Speaker 01:
Thank you, Your Honor.

[00:00:21] Speaker 01:
You may please the Court.

[00:00:22] Speaker 01:
Surely.

[00:00:23] Speaker 01:
The leery reference at the center of this appeal is an article from a scientific journal.

[00:00:29] Speaker 01:
It is exactly what this Court said in Duramed could be treated

[00:00:32] Speaker 01:
as a printed publication, as a matter of law, and without the need for a bench trial on the question of public existence.

[00:00:37] Speaker 00:
Let me ask you a question.

[00:00:38] Speaker 00:
I didn't see I in the record, but I'm curious.

[00:00:43] Speaker 00:
Was that paper cited in anything else that was published prior to 28 March of 2003?

[00:00:49] Speaker 01:
This specific paper in this record, we don't have a citation to this paper.

[00:00:54] Speaker 01:
We have other citations that you saw in our briefs to other papers from this journal, but not to the Lear reference itself.

[00:01:00] Speaker 00:
So you didn't find anything.

[00:01:02] Speaker 01:
What I can say is that it's not in the record.

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

[00:01:05] Speaker 04:
Yeah.

[00:01:05] Speaker 04:
Isn't that your problem here?

[00:01:06] Speaker 04:
I mean, this to me seems like it should have been considered prior art based upon the relevant context and circumstances, but the board made a contrary factual conclusion, and it's a substantial evidence standard.

[00:01:20] Speaker 04:
How can we overturn that?

[00:01:21] Speaker 01:
Well, I think the reason is that the board's factual conclusion was based on a pair of independent legal errors, either one of which would compel vacater in this case,

[00:01:30] Speaker 01:
And in fact, it's undisputed that these errors, if committed, would be legal errors compelling bigotry.

[00:01:34] Speaker 01:
The only question is whether they happen.

[00:01:36] Speaker 01:
So let me go over them.

[00:01:37] Speaker 04:
The first is, the board assessed the evidence and factors supporting public accessibility in isolation from one another rather than in... Sure, but that's, I mean, how else are they going to assess the different pieces of evidence except to go through them and discuss, you know, whether they're good enough?

[00:01:49] Speaker 04:
They may not have made the ultimate conclusion that, you know, even put together, they're not good enough, but they looked at all of the evidence.

[00:01:57] Speaker 01:
Well, there's two points I'd make on that specific error.

[00:02:00] Speaker 01:
And of course, there's a second I'll get to in a moment.

[00:02:02] Speaker 01:
The first is that the board identified four categories of evidence.

[00:02:06] Speaker 01:
So if that had exhausted the field, the point that they didn't consider all of them, you might, the argument that they didn't make the final statement might be a stronger argument.

[00:02:15] Speaker 01:
But the four categories of evidence themselves do not exhaust the field.

[00:02:18] Speaker 01:
And particularly, the board did not consider the big picture question, which is,

[00:02:22] Speaker 01:
What kind of article is this?

[00:02:23] Speaker 01:
What kind of publication is this?

[00:02:24] Speaker 01:
This is a printed publication that is to say, this is a article in a scientific journal.

[00:02:28] Speaker 01:
Each of the four factors.

[00:02:29] Speaker 04:
But they were clearly aware of that.

[00:02:30] Speaker 04:
They looked at all of that.

[00:02:31] Speaker 04:
They knew that this was, you know, whatever evidence was on the record.

[00:02:36] Speaker 04:
And they decided that, put together, it wasn't enough.

[00:02:39] Speaker 04:
I think they're wrong, but it's a substantial evidence standard.

[00:02:42] Speaker 01:
Right.

[00:02:42] Speaker 01:
And they certainly did say that.

[00:02:45] Speaker 01:
They also said, though, with regard to each one of them, for example, on page 16 of the board's opinion, it says, the date stamp

[00:02:51] Speaker 01:
You can't rely simply on the date stamp.

[00:02:53] Speaker 01:
You need more than that.

[00:02:53] Speaker 01:
Or the copyright without more, copyright registration without more is not sufficient evidence.

[00:02:57] Speaker 01:
But they didn't put it all together in particular in the context.

[00:03:00] Speaker 03:
Can you stop me for a second?

[00:03:00] Speaker 03:
You've referred to the Leary article as being part of a scientific journal a couple times.

[00:03:06] Speaker 01:
Yes.

[00:03:07] Speaker 03:
And so are you saying that these proceedings are something that every member of the society receives and it's something that's published on a monthly or quarterly basis?

[00:03:18] Speaker 01:
The record reflects that it is a regularly published set of proceedings with a continuous set of volume numbers, one after another.

[00:03:24] Speaker 01:
Right.

[00:03:25] Speaker 03:
It's not a, there's no evidence that it's like a journal, like a monthly journal or a quarterly journal, like how I typically think of a scientific technical journal that's published by society.

[00:03:39] Speaker 01:
In terms of what the record has in terms of the regularity, we have two things that I would point to.

[00:03:43] Speaker 01:
One is the receipt three.

[00:03:45] Speaker 01:
One is received by a serials department, which is to say that that's where it would have been shelved, so it's consistent with the journal.

[00:03:51] Speaker 01:
The second is the fact that it has an ISSN number, which is to say not merely an international standard book number, BN, but an international standard serial number.

[00:04:01] Speaker 03:
We know that the society, this engineering society, received a block of ISSN numbers and ISBN numbers and assigned an individual unique ISBN number and ISSN number to this particular

[00:04:14] Speaker 03:
publication, this particular proceeding.

[00:04:17] Speaker 03:
What we don't know right now is what did they do with it?

[00:04:21] Speaker 03:
Is this something that they push out, they make 10,000 copies of this publication and then push it out to every single member of the society, assuming there's 10,000?

[00:04:30] Speaker 03:
Or is it something that they keep and then anybody that somehow learns about that particular technical conference, which this publication compiles all the articles that were presented,

[00:04:44] Speaker 03:
can call up the society and then get access to it that way if they know about the technical conference.

[00:04:51] Speaker 01:
So a few things.

[00:04:52] Speaker 01:
First, you certainly don't need 10,000 copies.

[00:04:54] Speaker 01:
In the Hall case, you had a single thesis in the Freiburg University in Germany.

[00:04:57] Speaker 03:
We're trying to figure out what indicia do we have that what they do with it after they give it a number and after they assign a copyright date to it.

[00:05:07] Speaker 01:
Right.

[00:05:08] Speaker 01:
So the indicia we have in terms of how far it goes,

[00:05:12] Speaker 01:
include, number one, the copy that we have in the record is from Carbondale, Illinois.

[00:05:17] Speaker 01:
The conference was in San Jose, California.

[00:05:19] Speaker 01:
So we know that at least one copy traveled halfway across the country.

[00:05:22] Speaker 01:
Additionally, on the copyright page of the reference... Is that the university copy?

[00:05:25] Speaker 01:
It's in the Morris Library of the Southern Illinois University.

[00:05:29] Speaker 01:
Additionally, we have at page 3381 of the Joint Appendix a statement on the copyright page that interested researchers are free to copy the article

[00:05:39] Speaker 01:
if they wish, so long as they send a $15 check to a copyright clearinghouse.

[00:05:43] Speaker 01:
So I can't tell you that there are 10,000 copies out there.

[00:05:46] Speaker 01:
I can tell you that at least one traveled across the country and that anyone who took it out from the library was free to make a copy.

[00:05:52] Speaker 01:
But I'd like also to get to the second independent legal error that, even if you were not persuaded that the board failed to consider the evidence in the aggregate, this second error would necessarily compel Baker to be independent of that, which is the board imposed upon ABS the obligation to establish

[00:06:08] Speaker 01:
public accessibility as of a particular date.

[00:06:11] Speaker 01:
It's clear as day, if you look from page 15 to 16 of its opinion, it says, ABS has failed to meet its burden to establish accessibility as of a particular date.

[00:06:21] Speaker 03:
What if we were to read the board decision as making a finding that they just couldn't assign any particular publication date in terms of public accessibility because the evidence and argument presented to it on that score was just too

[00:06:37] Speaker 03:
meager and underdeveloped for it to have any confidence that it actually got pushed out and was made publicly accessible by any given certain date.

[00:06:46] Speaker 01:
So I think that if that one statement was read in isolation, it would be possible perhaps to read the board's opinion in that way.

[00:06:54] Speaker 01:
But the board then repeated this particular date requirement and expressly articulated it as a burden to establish a particular date five additional times thereafter.

[00:07:03] Speaker 04:
But you did have a burden to establish that it was

[00:07:06] Speaker 04:
So you have a burden to establish a date range and all they were responding to, at least in the pages you cited, were the notion that the date stamp was sufficient.

[00:07:17] Speaker 04:
And so they're saying you have to show more than just a date stamp because that doesn't necessarily correlate with the public accessibility date.

[00:07:26] Speaker 04:
I mean, I don't read their decision as saying in order to establish a printed publication, you have to show the exact date it became

[00:07:35] Speaker 04:
publicly accessible.

[00:07:36] Speaker 04:
You have to show a date before the, you know, priority date when it was publicly accessible.

[00:07:43] Speaker 04:
That can be a range of dates.

[00:07:44] Speaker 04:
That can be likely, you know, anything.

[00:07:47] Speaker 04:
It's going to key on certain dates, generally.

[00:07:50] Speaker 04:
Certainly.

[00:07:50] Speaker 04:
So the particular page I mentioned... They didn't... I mean, if they'd said, well, we're convinced that this was probably publicly available prior to the priority date, or the relevant date, whatever you...

[00:08:04] Speaker 04:
because petitioner hasn't shown the exact date, we still won't use it, that would be legal error.

[00:08:12] Speaker 04:
But how do you read what they're saying is, you just haven't shown any date good enough to establish that it was actually prior art.

[00:08:18] Speaker 01:
So they didn't say any date good enough.

[00:08:20] Speaker 01:
The pages I cited at 15 to 16, that was in the context of the date stamp.

[00:08:24] Speaker 01:
But then they repeated on page 18 in connection with the copyright.

[00:08:27] Speaker 01:
And then on 20, 22, 23, and 25, and they don't just use particular date, although I think that that's quite telling.

[00:08:33] Speaker 04:
It's the same issue with the copyright, though.

[00:08:36] Speaker 04:
The copyright doesn't necessarily correlate to public accessibility.

[00:08:42] Speaker 04:
And so they're faulting you for not showing public accessibility by pointing to a date that doesn't prove that.

[00:08:48] Speaker 01:
It doesn't prove public.

[00:08:49] Speaker 01:
If they had stopped at public accessibility issues, I would agree.

[00:08:52] Speaker 01:
But what they said was accessibility as of a particular date.

[00:08:56] Speaker 01:
Again, that's on 16.

[00:08:57] Speaker 01:
It's on 18 with the copyright.

[00:08:58] Speaker 01:
Again, 20, 22, 23, 25.

[00:09:01] Speaker 04:
To the extent that in particular... Again, I'm looking at 22.

[00:09:03] Speaker 04:
The problem with your argument is it's the same thing that they're responding to.

[00:09:07] Speaker 04:
You put forward all these different dates connected to events and they said none of these events are sufficient for us to find that it was publicly accessible because you could draw the equal inference that mere copyright or mere deposit in a university library doesn't show public accessibility.

[00:09:27] Speaker 01:
Again, I think that the statement particular date is quite clear.

[00:09:29] Speaker 01:
But if that one isn't, they also say, and I forget exactly which of those pages that I just mentioned, they also use the formulation date certain.

[00:09:35] Speaker 01:
It might be 20, it might be 22.

[00:09:37] Speaker 01:
But the point is that, now, if you thought the opinion is unclear and could be read either way, the point still would be the same.

[00:09:43] Speaker 01:
The result would be the same, which is that this court has repeatedly held that when a board decision can be read in multiple ways, one of which would be based on an impermissible basis, based on legal error, the correct course is simply to vacate and remand to allow the board

[00:09:56] Speaker 01:
to more clearly articulate its reasons and more clearly apply the correct legal standard.

[00:10:02] Speaker 00:
Let me ask you this.

[00:10:06] Speaker 00:
When the paper was presented, the inside cover of the proceedings journal says, papers were selected by the conference program committee to be presented in oral or poster format.

[00:10:22] Speaker 00:
Was the paper presented in

[00:10:25] Speaker 00:
a poster format?

[00:10:27] Speaker 01:
The record doesn't reflect which one it is, and we are not relying on a poster in the way that Klopfenstein relied on slides to suggest that the date was January of 2002.

[00:10:35] Speaker 01:
Our argument is that that indication in the inside cover reflects the practices of the organization, particularly the timely dissemination point.

[00:10:44] Speaker 01:
And it's clear that the purpose, and this is something that the court has emphasized in multiple cases, that when the purpose of a particular reference is for the public dissemination to interested and skilled members of the art,

[00:10:53] Speaker 01:
then it's more likely to be a printed publication.

[00:10:55] Speaker 04:
So let me ask you this.

[00:10:56] Speaker 04:
I assume in your petition you pointed to this, the board accepted this as prior art for purposes of institution.

[00:11:03] Speaker 04:
In the reply or in the patented response, they disputed this.

[00:11:08] Speaker 04:
Why didn't you come back with additional evidence in forms of an affidavit or something, either from somebody at the library or somebody at the society or something that said, you know,

[00:11:20] Speaker 04:
this is publicly available in the ordinary course of business.

[00:11:24] Speaker 01:
In terms of affidavits, what we had in the petition supporting the petition was the affidavit or declaration of our expert who's a member of the society and offered the opinion that it was publicly available as of June of 2002.

[00:11:34] Speaker 01:
That point wasn't disputed by their expert, also a member of the society, but it's just not in the record.

[00:11:39] Speaker 04:
But they did dispute that it was publicly available.

[00:11:41] Speaker 01:
They did dispute that it was publicly available and in light of this course cases and in light of the nature of the reference that we had, we thought the record was sufficient.

[00:11:47] Speaker 01:
I'd just like to close by pointing out this one.

[00:11:50] Speaker 03:
What's the specific inference you want us to accept?

[00:11:54] Speaker 03:
Is it that this society had a website that announced that it had this publication of these proceedings from 2002, as of 2002, and then therefore anybody could find Leary through some electronic index of their

[00:12:16] Speaker 03:
publications on the web?

[00:12:18] Speaker 03:
Or do you want us to accept some inference that every member of the society just gets copies of these publications and so therefore it was distributed to every single member?

[00:12:29] Speaker 03:
Or do you want us to accept the inference that something else happened that introduced this publication into the storehouse of public knowledge?

[00:12:40] Speaker 03:
What is the specific inference you want us to accept other than just saying,

[00:12:44] Speaker 03:
It was timely disseminated.

[00:12:46] Speaker 03:
That's too conclusory.

[00:12:47] Speaker 03:
What's the specific act the society did that you want us to believe is inferred from this record?

[00:12:52] Speaker 01:
I don't think that we're asking the court to make any of those specific inferences.

[00:12:55] Speaker 01:
I think that we're asking the court to follow the guidance in the Duramed footnote indicating that when you have a scientific journal article and all of the evidence points in the same direction, in the absence of contrary evidence consistent with the Stamps.com case, you should conclude that it's a printed publication.

[00:13:09] Speaker 04:
And I'll close with one point, which is that... You have to posit a theory of how it became publicly accessible.

[00:13:14] Speaker 04:
It's not just suddenly magically publicly accessible because it's a scientific journal.

[00:13:20] Speaker 04:
I would have thought your answer would have been, we offer proof that it was deposited in a university library where it was cataloged and made available.

[00:13:29] Speaker 04:
That would be the inference you'd like us to draw.

[00:13:32] Speaker 01:
I don't think cataloging is necessary.

[00:13:34] Speaker 01:
I certainly think the evidence would support a conclusion that it is in a university library, again, halfway across the country from the conference.

[00:13:40] Speaker 01:
and that it is the sort of article that would be treated as a publication.

[00:13:42] Speaker 01:
You're well into your rebuttal time.

[00:13:43] Speaker 00:
I understand.

[00:13:43] Speaker 01:
I'd just like to make one point, which is that if there had been a single case in which this court had ever treated a scientific journal article as something other than a printed publication, Ingram would have cited it.

[00:13:52] Speaker 01:
No such case exists.

[00:13:54] Speaker 01:
Thank you.

[00:13:58] Speaker 00:
Mr. King?

[00:14:00] Speaker 02:
Good morning.

[00:14:01] Speaker 02:
May it please the court.

[00:14:02] Speaker 02:
Julius Chen on behalf of the Appellee Ingram LLC.

[00:14:06] Speaker 02:
I'd like to start with Judge Hughes's point about the substantial evidence standard, because I think that's really the key here.

[00:14:11] Speaker 02:
And I think it's because this case is not the one.

[00:14:14] Speaker 04:
Let me flip that for you.

[00:14:15] Speaker 04:
Sure.

[00:14:15] Speaker 04:
If the board had drawn the opposite conclusion based upon the same set of facts, would that be supported by substantial evidence as well?

[00:14:23] Speaker 02:
We still don't think that would get all the way to.

[00:14:26] Speaker 02:
And why not?

[00:14:27] Speaker 02:
I think for all the reasons that Judge Chen was pointing out about all of the inferences that need to be drawn.

[00:14:32] Speaker 04:
Are you saying the board can't look at a set of facts

[00:14:36] Speaker 04:
and draw the ultimate inference that it was publicly accessible, that it needs direct evidence in the form of documents or testimony or the like?

[00:14:43] Speaker 02:
Well, Judge Hughes, I think the board is free to draw inferences, but those inferences... No, no.

[00:14:47] Speaker 04:
Can you answer that question?

[00:14:49] Speaker 04:
Does the board require, or do you think the board should require, direct evidence rather than looking at a contextual set of evidence and being able to draw the final inference?

[00:15:00] Speaker 02:
I don't think it necessarily requires direct evidence, but the point here I would make, again, let me ask you.

[00:15:06] Speaker 04:
Given that this is a apparently respected society that both of the experts in this case belong to, that they both published articles in this, that the conference well preceded the priority date, the publication well precedes the priority date, there's evidence that it was deposited at a university library and the like and was catalogued, then why couldn't the board draw an inference that it was publicly accessible based upon those facts?

[00:15:33] Speaker 02:
Well, I still think that there are inferences that are not supported by the record.

[00:15:37] Speaker 02:
And that's the key to me.

[00:15:39] Speaker 00:
Let me ask you this along those lines.

[00:15:45] Speaker 00:
And that is, what about the negative pregnant?

[00:15:48] Speaker 00:
That is, you have two experts, as Judge Hughes said, both of whom are members of the society, both of whom provided affidavits, and neither of whom, including yours, said, I did not receive this.

[00:16:01] Speaker 00:
Isn't there an implication?

[00:16:02] Speaker 02:
No, Your Honor.

[00:16:03] Speaker 00:
Don't you interrupt me.

[00:16:05] Speaker 02:
I'm sorry.

[00:16:06] Speaker 02:
I thought your question was done.

[00:16:08] Speaker 02:
I'm sorry.

[00:16:08] Speaker 00:
Isn't there an implication that at least your expert, who's a member of the society, would have said, I didn't get it in the mail?

[00:16:19] Speaker 02:
Well, Your Honor, I think that would flip the burden.

[00:16:21] Speaker 02:
And I think we would look first to their expert, which did address public accessibility in his affidavit.

[00:16:27] Speaker 02:
And all he said was,

[00:16:29] Speaker 02:
This was received by a library.

[00:16:31] Speaker 02:
That's derivative of the date stamp.

[00:16:33] Speaker 02:
If you wanted to rely on expert evidence, the way that ABS should have proven this case was to have its expert actually say, I was a member of SPIE at this point in time.

[00:16:42] Speaker 02:
Our expert was not in 2002.

[00:16:44] Speaker 02:
But have their expert, who was a member of SPIE since 1998, actually say, I received this, or I know that SPIE is well known and reputable.

[00:16:54] Speaker 02:
Those are the types of things that are missing in this case.

[00:16:56] Speaker 02:
And I think this this this case is similar to the Lister case in which it is certainly possible that the story that was told based on the evidence somebody could have made an inference about public accessibility.

[00:17:08] Speaker 02:
But the court said that that would be pure speculation and that we need more of a record basis.

[00:17:14] Speaker 02:
And so here, I think there are just too many inferences to be made.

[00:17:18] Speaker 02:
We don't know what the publishing practices are.

[00:17:21] Speaker 02:
We don't know what the membership is.

[00:17:23] Speaker 02:
We don't know why it ended up in this library.

[00:17:25] Speaker 03:
And I have with your argument and I think perhaps the board's analysis.

[00:17:31] Speaker 03:
Articles are relied on all the time as prior art for doing any kind of patentability or validity analysis.

[00:17:41] Speaker 03:
Patent, there's 8,000 patent examiners.

[00:17:43] Speaker 03:
Not only do they rely on

[00:17:45] Speaker 03:
publishing US patents or foreign patents, but they rely on all kinds of non-patent literature.

[00:17:51] Speaker 03:
And if we take your position to the logical extreme, every single time an examiner wants to rely on non-patent literature, it's going to have to do some kind of extra level fact finding to develop a declaration from the publishing house of that particular article

[00:18:13] Speaker 03:
to guarantee that not only was it published on a given date, but it was actually somehow publicly disseminated by that date.

[00:18:20] Speaker 03:
And that just feels like a lot of make-work.

[00:18:23] Speaker 03:
And it doesn't really make any common sense.

[00:18:27] Speaker 03:
So what's your response to that?

[00:18:29] Speaker 02:
Sure.

[00:18:30] Speaker 02:
I would point to two things.

[00:18:32] Speaker 02:
The first is that we're not asking the board to abandon common sense, or we're not trying to restrict its ability to make inferences here.

[00:18:39] Speaker 02:
And I would point to the Erickson versus IV PTAB decision.

[00:18:42] Speaker 03:
What's the answer?

[00:18:43] Speaker 03:
What's the answer?

[00:18:44] Speaker 03:
Don't talk about cases right now.

[00:18:46] Speaker 03:
Just talk to me about what makes sense.

[00:18:48] Speaker 02:
So one, I think that depending on the record, it is possible that, for example, in the Duramed case, just since they brought that up,

[00:18:56] Speaker 02:
There we don't know exactly why because the court didn't explain it.

[00:18:59] Speaker 02:
It was addictive footnote.

[00:19:00] Speaker 02:
But what we know was that that scientific journal quote unquote was a December 1995 issue.

[00:19:07] Speaker 02:
So I think there you might be able to draw the inference that look it says December 1995.

[00:19:12] Speaker 02:
It looks like a monthly periodical.

[00:19:14] Speaker 02:
It's regularly distributed.

[00:19:15] Speaker 02:
Here we don't have that.

[00:19:16] Speaker 02:
This is a conference.

[00:19:17] Speaker 02:
We don't know if they distribute after every conference or how often they do.

[00:19:22] Speaker 02:
We don't know what their publishing practices are.

[00:19:24] Speaker 02:
This is not a regular publication in the sense of a monthly periodical.

[00:19:30] Speaker 03:
The other thing I would say is that... So are you saying that if a patent examiner were to find an article in a particular volume of Scientific American that

[00:19:41] Speaker 03:
they could just take official notice that that was, in fact, not only printed on the date that's on the cover, but it was actually publicly accessible as of the date that's printed on the cover.

[00:19:52] Speaker 02:
Well, I think it would again sort of depend on... What would it depend on?

[00:19:56] Speaker 02:
So it would depend on sort of this common sense point, and I think your official notice point is right, because if it were Scientific American, I do think that the board is free to draw inferences

[00:20:08] Speaker 02:
based on official notice.

[00:20:10] Speaker 02:
So, for example, in the Erickson v. Ivy case that I was referencing below, that was a reference that was published in the IEEE.

[00:20:19] Speaker 02:
That's the standard setting organization.

[00:20:21] Speaker 02:
And the board simply said, look, we know IEEE is a standard setting organization.

[00:20:26] Speaker 02:
We know its membership is large.

[00:20:28] Speaker 02:
We know that it is well known and reputable.

[00:20:30] Speaker 02:
So we're going to take official notice of that fact.

[00:20:32] Speaker 02:
Now, we point out here that they didn't do this.

[00:20:35] Speaker 03:
Do you take any, I don't know,

[00:20:37] Speaker 03:
Contradictory view on what the board did in that Erickson case?

[00:20:41] Speaker 02:
No, Your Honor.

[00:20:42] Speaker 02:
We think that... What if the board has done that here?

[00:20:45] Speaker 03:
Taking judicial notice of the fact that this society, this engineering organization known as SPIE, has been around for a very, very long time.

[00:20:53] Speaker 03:
It has a very large international membership.

[00:20:57] Speaker 03:
And it's been publishing all kinds of things, journals as well as these publications, compiling articles presented at technical conferences for decades and decades and decades.

[00:21:07] Speaker 03:
Would that have been a problem for the board to take judicial notice?

[00:21:12] Speaker 02:
No, Your Honor.

[00:21:13] Speaker 02:
I'll just patent judge notice.

[00:21:15] Speaker 02:
No, Your Honor.

[00:21:15] Speaker 02:
And we think that's fine.

[00:21:16] Speaker 02:
And we think that gets to the process point, to be honest.

[00:21:19] Speaker 04:
Because here, the board simply... Isn't it the problem that the board refused to look at the entire context and draw reasonable inferences from this case?

[00:21:26] Speaker 04:
And what they seem to have done, and what they've seemed to have been doing in other of these print and publication cases, is imposing a much more strict standard of requiring some type

[00:21:35] Speaker 04:
of direct evidence, either through affidavits or actual evidence of public accessibility, rather than just allowing a factual view of the context.

[00:21:46] Speaker 02:
Well, Your Honor, my response to that is actually to go back to the process point.

[00:21:50] Speaker 04:
And so here, I would point the board to Appendix 699, where this... Do you agree that if they have imposed some type of direct evidence requirement, that they have to have affirmative evidence of actual public accessibility

[00:22:03] Speaker 04:
and can't rely on inferences, that that would be legally incorrect?

[00:22:07] Speaker 02:
Yes, Your Honor.

[00:22:08] Speaker 02:
But there would still need to be a record basis for each inference.

[00:22:11] Speaker 02:
And we think of that as the critical link here.

[00:22:13] Speaker 02:
And if I could just go back to Lister quickly.

[00:22:16] Speaker 02:
There it says, we need at least some evidence of general practice that tells us.

[00:22:21] Speaker 02:
And we're fine with that.

[00:22:22] Speaker 02:
That's the type of inferential thing that I think you could get to.

[00:22:26] Speaker 02:
Or you could have official notice.

[00:22:28] Speaker 02:
There are other ways to get there through inference, but you need to have some sort

[00:22:33] Speaker 02:
of record basis.

[00:22:34] Speaker 02:
And just to go back to the process point and the sort of holistic inquiry, I think it's very telling here what happened.

[00:22:40] Speaker 02:
ABS at appendix 581 said, these are the categories of evidence we're going to rely on.

[00:22:45] Speaker 02:
And in this particular case, the board asked repeatedly, this is from 697 to 700, it asked several times, you've given us publication information.

[00:22:54] Speaker 02:
What else do you have to link publication to public accessibility?

[00:22:59] Speaker 02:
And they rely only on, and specifically the ISBN,

[00:23:02] Speaker 02:
the copyright date, the date stamp, and the speed website printout with the publication date.

[00:23:07] Speaker 02:
So the board asks again, and I'm pointing now at Appendix 699.

[00:23:11] Speaker 04:
That doesn't seem to be helping your case.

[00:23:12] Speaker 04:
That seems to be hurting your case.

[00:23:14] Speaker 04:
It seems like they're asking over and over again for direct evidence of public accessibility, which is the problem.

[00:23:20] Speaker 04:
If that's the standard they're imposing, they're legally incorrect.

[00:23:24] Speaker 02:
Well, Your Honor, this goes further.

[00:23:28] Speaker 02:
And so what I would say with respect to the holistic

[00:23:32] Speaker 02:
inquiry is that they say, well, you know, this is quoting ABS.

[00:23:38] Speaker 02:
I think when we look at this in the aggregate, all these facts support each other.

[00:23:41] Speaker 02:
And the only facts that they actually give to the board when it's asking, tell us how we get from publication to public accessibility, it points to only those parts of the record.

[00:23:53] Speaker 02:
And so all I would say is that when the board is... The point I think you're trying to make is that the

[00:24:00] Speaker 03:
petitioner didn't present any evidence of either regular practice from the Southern Illinois University Library of how long it ordinarily takes them upon receipt of a book to get it up on the shelf and index and catalog it so it can be publicly accessible to anybody that visits the library, nor did they present any kind of general practice information from the society itself that once it publishes one of these publications of the technical conference,

[00:24:29] Speaker 03:
that it does something extra with it in terms of trying to get it out to the public.

[00:24:34] Speaker 03:
Does it distribute any?

[00:24:36] Speaker 03:
How many does it distribute?

[00:24:37] Speaker 03:
Who does it distribute it to?

[00:24:39] Speaker 03:
And so on and so on.

[00:24:40] Speaker 03:
And because there isn't that kind of general information knowledge of the practice of accessibility, there's a problem here.

[00:24:49] Speaker 02:
That's correct.

[00:24:50] Speaker 03:
And because of that, we can't make an inference of, well, was it out by June 2002?

[00:24:55] Speaker 03:
or May 31, 2002, or July 4, 2002?

[00:24:59] Speaker 02:
That's correct, Your Honor.

[00:25:01] Speaker 02:
Both those questions were specifically asked at the hearing, 699-700.

[00:25:06] Speaker 02:
Do you have the indexing?

[00:25:08] Speaker 02:
Do you have the publication, you know, general practice evidence?

[00:25:11] Speaker 02:
And they said no both times.

[00:25:12] Speaker 02:
And so in the end, what the board did, and I think it's very clear from the final written decision, is it first recounts very carefully, and specifically at appendix 13 to 14, that ABS has confirmed that there was no such evidence in this record.

[00:25:25] Speaker 02:
It then goes through the pieces of evidence that AV has proffered and says, you know, we don't know what to draw, for example, from the ISBN and ISSN numbers.

[00:25:36] Speaker 02:
We have neither argument nor evidence to explain the significance of those items to us.

[00:25:41] Speaker 00:
And it ultimately concludes that... Mr. Chen, would common sense allow us to take some sort of notice that all of these scientific organizations exist in some sort of guild

[00:25:55] Speaker 00:
atmosphere where part of their purpose is to set a standard for their members' publications, their members' submissions, and then push them out into the community.

[00:26:10] Speaker 00:
And that's a large part of their purpose.

[00:26:14] Speaker 02:
Well, Your Honor, two responses.

[00:26:15] Speaker 02:
One, I don't think it would be this Court's role to make that judicial notice.

[00:26:18] Speaker 02:
I think that would be the Board's role to make in the first instance and for this Court to review.

[00:26:23] Speaker 02:
The second thing I would say is that I think that would be a very sweeping statement.

[00:26:26] Speaker 02:
There are different types of organizations out there.

[00:26:30] Speaker 04:
This happens to be an organization that both the party's experts belong to and published in that journal.

[00:26:38] Speaker 04:
This is not a unrelated professional organization.

[00:26:43] Speaker 02:
That's correct, Your Honor.

[00:26:44] Speaker 02:
But we are looking at a specific time frame of 2002.

[00:26:46] Speaker 02:
Our expert was not a member at that time, I believe,

[00:26:50] Speaker 02:
And we don't know if that was the nascent period of this organization.

[00:26:55] Speaker 02:
We should have some basis to be able to draw a conclusion to say that this was, in fact, a well-known and reputable scientific organization that was succeeding in all of the things that it wanted to do in terms of timely disseminating.

[00:27:09] Speaker 00:
You seem to make some sort of a hearsay argument on the red braid.

[00:27:13] Speaker 00:
Did you preserve that below at all?

[00:27:15] Speaker 02:
So yes, Your Honor.

[00:27:17] Speaker 02:
We preserved it.

[00:27:18] Speaker 02:
Did you move to exclude it?

[00:27:19] Speaker 02:
We did not move to exclude.

[00:27:21] Speaker 02:
And so I want to be very clear here.

[00:27:23] Speaker 02:
We are not saying, and the board did not ultimately exclude.

[00:27:26] Speaker 02:
What we argued was that it went to the weight of the evidence.

[00:27:29] Speaker 02:
And we're free to make that argument in our substantive patent owner response without moving to exclude.

[00:27:38] Speaker 02:
And the board has clear precedent on this, that if you are going to argue about weight, then you can do it in your patent owner response or in your substantive brief if you're going to move to exclude altogether.

[00:27:49] Speaker 02:
then you can do it in a motion to exclude.

[00:27:51] Speaker 02:
And so here, I just don't think it matters because there was ultimately no exclusion by the final written decision.

[00:27:57] Speaker 02:
And so all you have is the board saying very clearly, at the very least, we believe it's hearsay, but we just don't know what to draw from it.

[00:28:04] Speaker 02:
And so we don't think the hearsay point really sort of shakes out.

[00:28:09] Speaker 02:
Is that a pivot from your red brief?

[00:28:10] Speaker 02:
What's that?

[00:28:11] Speaker 02:
Nothing.

[00:28:12] Speaker 02:
Go ahead.

[00:28:12] Speaker 02:
Keep going.

[00:28:14] Speaker 02:
I'm sorry.

[00:28:16] Speaker 02:
Those are all the points I had.

[00:28:17] Speaker 02:
If the court has no further questions, I'm happy to.

[00:28:19] Speaker 02:
Thank you, counsel.

[00:28:20] Speaker 02:
Thank you.

[00:28:24] Speaker 00:
You've got about a minute and a half.

[00:28:26] Speaker 01:
Yes, thank you, your honor.

[00:28:27] Speaker 01:
It is, in fact, Judge Chen, a pivot from the red brief if you look at page 22.

[00:28:30] Speaker 01:
It's clear that they argued that this was inadmissible.

[00:28:33] Speaker 01:
In terms of the dates, Judge Chen, you mentioned July, May, June.

[00:28:37] Speaker 01:
It could even have been August or September.

[00:28:38] Speaker 01:
Any date in 2002 would be sufficient to get behind the March 2003 priority date.

[00:28:44] Speaker 01:
And that's why the board's apparent reliance on a particular date requirement is so significant here.

[00:28:50] Speaker 01:
I'd like to emphasize that not only did both experts publish in this journal, their experts' CV, 20% of his publications, are in this journal.

[00:28:59] Speaker 01:
So there's no doubt that this is the kind of journal that at least these experts... Going back to when?

[00:29:04] Speaker 01:
What?

[00:29:04] Speaker 01:
Going back to when?

[00:29:05] Speaker 01:
2004 is his earliest.

[00:29:07] Speaker 01:
This is 2002.

[00:29:08] Speaker 01:
But we have something before that in the record.

[00:29:10] Speaker 03:
So the article that we cite at page 31 of the book... Just to be fair to the patent board,

[00:29:15] Speaker 03:
everything that's coming out of your mouth right now was never actually presented to the board, either in a patent owner response or by your attorneys at oral argument in front of the board.

[00:29:25] Speaker 03:
Is that fair to say?

[00:29:26] Speaker 01:
It's fair to say that the specifics regarding the CV and the publications, those were not specifically mentioned.

[00:29:31] Speaker 01:
The broader point about SPIE being a well-known and reputable organization was presented both in 581 of the appendix.

[00:29:37] Speaker 03:
Right, there was a sentence that was

[00:29:41] Speaker 03:
drafted by the attorney for the client.

[00:29:44] Speaker 03:
It wasn't something that was supported by anything, by pointing to something in the record to establish that as a fact.

[00:29:50] Speaker 03:
Is that fair to say?

[00:29:51] Speaker 01:
The record we have is just Professor Robinson's declaration that this was publicly available, not the additional point.

[00:29:56] Speaker 01:
Right.

[00:29:56] Speaker 03:
So the statement in the Pat Nohner response that this is a well-known reputable organization, that's just the attorney talking right there in that sentence.

[00:30:03] Speaker 03:
Is that fair to say?

[00:30:04] Speaker 01:
That's fair to say.

[00:30:05] Speaker 01:
If it had been disputed, we would have presented additional evidence.

[00:30:08] Speaker 03:
Time's up.

[00:30:08] Speaker 01:
Thank you, Your Honor.

[00:30:09] Speaker 01:
Thank you.