[00:00:01] Speaker 04:
our first order of business today is actually a motion by Judge Reynolds.

[00:00:05] Speaker 04:
I'll turn the microphone over to him.

[00:00:07] Speaker 00:
Thank you, Judge Moore.

[00:00:10] Speaker 00:
I have a pleasure to move for admission to this court, Timothy Rossum.

[00:00:16] Speaker 00:
There's an old adage by an old, wise person that says that time flies for law clerks when they work very hard and produce great work.

[00:00:30] Speaker 00:
And I made that up.

[00:00:33] Speaker 00:
There was no old saying.

[00:00:35] Speaker 00:
But I think it's true.

[00:00:37] Speaker 00:
I think it's true that time flies when you're fully engaged and your production is excellent.

[00:00:46] Speaker 00:
And that's been the result of your clerkship with me.

[00:00:52] Speaker 00:
Your presence and your participation

[00:00:57] Speaker 00:
in my chambers this past year and a half has been exceptional.

[00:01:01] Speaker 00:
And it's been to the benefit and to attribute both to my chambers and to the court as a whole and to the legal profession.

[00:01:11] Speaker 00:
So I tell my colleagues that before us stands a person who is an excellent legal practitioner and who I'm sure will be a bright leading star in the legal profession.

[00:01:24] Speaker 00:
And for that reason, I move for his admission.

[00:01:27] Speaker 00:
So colleagues, I move for the admission of Timothy Rawson.

[00:01:34] Speaker 00:
He's a member of the bar and is in good standing with the highest court of both California and Texas.

[00:01:41] Speaker 00:
I have knowledge of his credentials and I'm satisfied that he possesses the necessary qualifications.

[00:01:46] Speaker 03:
I fully favor the motion.

[00:01:48] Speaker 03:
Tim certainly has served as an exceptional clerk.

[00:01:52] Speaker 04:
I agree we've had the opportunity to

[00:01:55] Speaker 04:
I've heard firsthand about your work product from my own clerks, and so I'm happy to likewise join in with Judge Stoll and approve your admission to our bar.

[00:02:06] Speaker 04:
So I look forward to seeing you on that side of the podium again sometime.

[00:02:10] Speaker 04:
Please turn towards our clerk of court to be sworn in.

[00:02:27] Speaker 00:
Thank you.

[00:02:28] Speaker 04:
Absolutely.

[00:02:29] Speaker 04:
Okay, our first case for today, 2018-2331 in Ray Gates.

[00:02:35] Speaker 04:
Mr. Lucas, please proceed.

[00:02:41] Speaker 01:
On behalf of Appellants Gates and Black, may it please the Court.

[00:02:46] Speaker 01:
We ask that the Court reverse the Board's decision finding claims 1 through 9 of the 668 application unpatentable and specifically because

[00:02:58] Speaker 01:
All claims rise and fall based on claim one.

[00:03:01] Speaker 01:
We ask that the board reverse the decision finding claim one unpatentable as anticipated based on the Tiffane reference.

[00:03:14] Speaker 01:
The board found that the Tiffane reference expressly anticipated the claim one of the 668 patent and

[00:03:23] Speaker 01:
We believe that that is not correct, that in order for a reference to expressly anticipate the claim, it must disclose all the limitations of the claim arranged or combined in the same way as in the claim one, the computer readable media claim.

[00:03:44] Speaker 01:
We've gone through, there's these two embodiments, and both embodiments do not disclose all the limitations as claimed.

[00:03:53] Speaker 01:
I could just briefly touch on them, because I think they kind of set the stage for the fact that what the board did

[00:04:02] Speaker 01:
was an impermissible obviousness determination instead of an anticipation finding by combining references that didn't disclose all of the limitations.

[00:04:16] Speaker 01:
And even together, don't disclose all the limitations.

[00:04:19] Speaker 01:
I want to talk quickly about the first embodiment.

[00:04:22] Speaker 01:
And I think you've obviously the courts read about it.

[00:04:24] Speaker 01:
And that one, that embodiment failed to disclose a two transmission device limitation.

[00:04:30] Speaker 01:
And that's, as the courts are aware, claim one is a computer readable media claim, but really what it does is it provides a mouse that when

[00:04:41] Speaker 01:
It has sensors and signals and then when it is removed from a flat surface, it turns into some type of, it turns into a remote or a presentation device.

[00:04:52] Speaker 00:
And that happens automatically, I gather.

[00:04:54] Speaker 01:
It does happen automatically.

[00:04:56] Speaker 01:
What happens is, it's not just the mode changing, it's also the fact that you now need to use a new transmission device.

[00:05:03] Speaker 00:
So in the Tefane reference, that type of switching happens, but you have to unplug from the computer first, correct?

[00:05:10] Speaker 01:
Well, actually, no.

[00:05:11] Speaker 01:
In the first embodiment,

[00:05:13] Speaker 01:
It does, excuse me, the mode changes in the first Tiffane embodiment.

[00:05:18] Speaker 01:
The mode does change if you pick up the mouse or the device.

[00:05:24] Speaker 01:
But the problem is, it's very clear in that embodiment that it's only wired

[00:05:29] Speaker 01:
or wireless.

[00:05:30] Speaker 01:
So what happens is by doing that, you're not changing the transmission device.

[00:05:34] Speaker 01:
There's no second transmission device.

[00:05:36] Speaker 01:
And that's conceded that it's always consistently one transmission device.

[00:05:41] Speaker 01:
So it doesn't go from RF to IR, for example.

[00:05:44] Speaker 01:
It can't happen in that tethane embodiment.

[00:05:46] Speaker 01:
So therefore, it doesn't disclose the two transmission device limitation.

[00:05:52] Speaker 01:
Similarly, it doesn't disclose the wear-in clause because, yes, you're right in that embodiment.

[00:05:57] Speaker 01:
You can switch the modes based on that sensor and signal, but that change is not configured to switch the transmission devices.

[00:06:06] Speaker 01:
It can't.

[00:06:06] Speaker 04:
Can I try to make it a little simpler for you?

[00:06:08] Speaker 01:
Yeah.

[00:06:08] Speaker 04:
So am I understanding the patent to require when you lift the mouse off of the operational surface, when you lift it off of the surface, two things happen.

[00:06:17] Speaker 01:
Yes.

[00:06:17] Speaker 04:
Number one thing that happens is it changes from being a mouse to being

[00:06:22] Speaker 04:
And the second thing that happens is it goes from being wired to wireless.

[00:06:28] Speaker 04:
It still may be plugged into the computer, but it's now going to transmit its data wirelessly.

[00:06:33] Speaker 04:
Is that right?

[00:06:34] Speaker 01:
So our central embodiment actually would just be a different type.

[00:06:39] Speaker 01:
It could do that.

[00:06:39] Speaker 01:
It could do that, yes.

[00:06:40] Speaker 01:
It could do that.

[00:06:41] Speaker 01:
That would be a different transmission device, correct.

[00:06:43] Speaker 01:
But ours is like, the preferred embodiment is like IR to RF.

[00:06:47] Speaker 04:
I didn't ask about the embodiment.

[00:06:48] Speaker 04:
I asked about the claims.

[00:06:49] Speaker 01:
Claims, yes.

[00:06:50] Speaker 01:
Yes, it would change the transmission mechanism, correct.

[00:06:53] Speaker 01:
By doing that, that's correct.

[00:06:55] Speaker 04:
One example would be from wired to wireless.

[00:06:57] Speaker 01:
Correct, yes.

[00:06:58] Speaker 04:
And so your argument about typhane first embodiment is that when they lift it up,

[00:07:04] Speaker 04:
It does transition from being a mouse to being a pointer, so it meets the operational mode portion of claim one.

[00:07:11] Speaker 04:
But it doesn't mean that the transition mode change that's required in claims.

[00:07:15] Speaker 01:
That's correct.

[00:07:16] Speaker 01:
OK.

[00:07:17] Speaker 04:
So why don't you move on to the second embodiment?

[00:07:18] Speaker 04:
Tell us about that slacking.

[00:07:19] Speaker 01:
OK.

[00:07:20] Speaker 01:
So the second embodiment doesn't have a sensor signal.

[00:07:23] Speaker 01:
So there's no way it can detect whether it's been lifted up from the table.

[00:07:29] Speaker 01:
What it does have is it has a mechanism whereby if you plug it into the computer,

[00:07:36] Speaker 01:
it knows to go to mouse mode.

[00:07:41] Speaker 01:
And then if you unplug it, it goes to presentation mode.

[00:07:46] Speaker 04:
So you're saying the second embodiment doesn't have the operational mode switch when you lift it off the surface, as required by claim one, correct?

[00:07:53] Speaker 04:
Correct.

[00:07:53] Speaker 04:
And it really doesn't have the transition mode switch either, because the transition mode in the claim is triggered by the same, lifting it off the surface.

[00:08:02] Speaker 04:
And in embodiment two,

[00:08:04] Speaker 04:
The transition, it does transition, but only if you literally unplug it.

[00:08:07] Speaker 01:
I would agree with that.

[00:08:08] Speaker 01:
So anyway, so we get there and then, and so we have these two embodiments that don't disclose all the limitations.

[00:08:15] Speaker 04:
So you seem right.

[00:08:17] Speaker 04:
What else is there?

[00:08:18] Speaker 01:
Okay.

[00:08:18] Speaker 01:
Well, I do think I'm right.

[00:08:22] Speaker 03:
What is your response to

[00:08:24] Speaker 03:
the point made in the red brief about how they take the position that these are just two embodiments and that there's different possible features disclosed in the patent and that one of ordinary Stoney are looking at the patent

[00:08:42] Speaker 03:
Would I guess somehow think that readily understand that there's a third embodiment that meets the limitations the claims I mean, I don't see that in the board's opinion so I see that in their brief I appreciate the question and I I think that's a problem right there I actually went through the bird their brief and I noticed there was the words ordinary skill and

[00:09:04] Speaker 01:
and they are skilled artisan, and that has no place in an anticipation argument.

[00:09:10] Speaker 03:
Wait, wait, but how a person of ordinary skill would read a reference does have place in anticipation.

[00:09:18] Speaker 01:
Right, but you can't combine embodiments to create the claim dimension.

[00:09:25] Speaker 01:
And so that's my first argument.

[00:09:28] Speaker 04:
Unless the patent were to say something like that.

[00:09:31] Speaker 04:
If the patent were to say, obviously, the patent were to indicate features of one could possibly be combined with features of the other, or just describe these as features that could be included in any embodiment.

[00:09:41] Speaker 01:
Right.

[00:09:41] Speaker 01:
I agree with that.

[00:09:42] Speaker 01:
So we have the patent.

[00:09:43] Speaker 04:
I hear we don't have that is what you're saying.

[00:09:45] Speaker 01:
We don't have that.

[00:09:45] Speaker 01:
And then secondly, they cited two cases for that proposition.

[00:09:49] Speaker 01:
And I think this is kind of interesting.

[00:09:50] Speaker 01:
They got Wrigley and Kenamental metal.

[00:09:53] Speaker 01:
You see that a bunch of times.

[00:09:54] Speaker 01:
It shows up at 15 of their brief, and then again at 17, because blue calypso cites it.

[00:10:00] Speaker 01:
So I went to those two cases.

[00:10:02] Speaker 01:
I went to Wrigley.

[00:10:03] Speaker 01:
I think this is really important.

[00:10:04] Speaker 01:
Even if you take the position that the body was together disclosed.

[00:10:07] Speaker 01:
And we disagree with that.

[00:10:09] Speaker 01:
Both those cases cite the net money case that Judge Moore should be familiar with.

[00:10:14] Speaker 01:
That's 545 F-1359.

[00:10:18] Speaker 01:
And it says, for example, in net money, this court held that an internet payment system was not anticipated by a priorite reference that disclosed all the components.

[00:10:29] Speaker 01:
of the invention because the reference disclosed two separate payment protocols, each of which contained only a subset of the components claimed in the patented issue.

[00:10:40] Speaker 01:
And that's from Wrigley at 1361, so 683 F.

[00:10:45] Speaker 01:
3rd, 1361, citing the net money case.

[00:10:50] Speaker 01:
So we don't even have the situation where all the embodiments are disclosed, where all the limitations are disclosed.

[00:10:55] Speaker 01:
But the point is, from that net money case,

[00:10:59] Speaker 01:
You just can't pick and choose that immediately you're getting into an obvious analysis by picking and choosing.

[00:11:06] Speaker 03:
In some cases, you might not.

[00:11:07] Speaker 03:
But you're saying in this case, you're definitely getting into an obvious analysis.

[00:11:11] Speaker 01:
In this case.

[00:11:12] Speaker 03:
How would you have to modify that second embodiment in order to make it meet the claims?

[00:11:16] Speaker 01:
You see, I think that's another issue because I don't even know if you can combine them.

[00:11:20] Speaker 01:
We didn't make this argument because it was obviously not an obvious issue.

[00:11:24] Speaker 01:
But because of the, I think you'd have to add a sensor

[00:11:28] Speaker 01:
Into the device because at that point it doesn't it says it doesn't have it and then some signaling mechanisms such that I think you then have to I guess get rid of Or maybe it could be complementary the bill the change when you plug in versus unplug Because that would probably conflict with moving it up and down potentially But you definitely would have to add a sensor and a signal that that or as the the patent application talks about that would allow you to be able to determine whether

[00:11:57] Speaker 04:
the mouse was on the sensor, but all the associated hardware that would then make the assessment.

[00:12:02] Speaker 01:
Correct.

[00:12:02] Speaker 01:
And so software software too.

[00:12:04] Speaker 01:
Yes.

[00:12:04] Speaker 01:
Yes.

[00:12:05] Speaker 01:
Um, so, um, and I think to conclude, I mean, I think the embodied each embodiment, um,

[00:12:14] Speaker 01:
The other point of the net money case is that they say each embodiment might anticipate a claim directed to that embodiment, but it doesn't anticipate the claim as claim, the actual specific claim language here.

[00:12:27] Speaker 01:
And I think that would be the point.

[00:12:28] Speaker 01:
That's even if all the limitations were disclosed.

[00:12:32] Speaker 01:
So we would ask that the court reverse this decision and find the claims patentable.

[00:12:42] Speaker 04:
Okay, Mr. Lucas, we'll save the remainder of your time for rebuttal.

[00:12:46] Speaker 04:
How do I pronounce your name?

[00:12:49] Speaker 04:
Dang.

[00:12:49] Speaker 04:
I wasn't sure how many of the words were part of the last name.

[00:12:53] Speaker 04:
That was the problem for me.

[00:12:54] Speaker 04:
So Ms.

[00:12:55] Speaker 04:
Dang, please proceed.

[00:12:57] Speaker 02:
May it please the court.

[00:12:58] Speaker 02:
I'd like to begin with just pointing out the claim language.

[00:13:02] Speaker 02:
On Appendix 13, we can look at Claim 1.

[00:13:05] Speaker 02:
And appellants are arguing that there is a dependency between the mode switching and the transmission device switching.

[00:13:19] Speaker 02:
And if you look at claim one, the very last paragraph in claim one, the wearing clause, what it requires actually is that in the first mode, the handheld device is configured to use the first transmission device

[00:13:35] Speaker 02:
in response to an activation of some input elements and the same for the second operational mode.

[00:13:41] Speaker 02:
And our position is that that doesn't require automatic switching between the transmission devices.

[00:13:50] Speaker 04:
Okay, where did that position appear in the board decision below?

[00:13:53] Speaker 04:
It feels like an awfully new position that you're taking for the first time on appeal.

[00:13:58] Speaker 02:
The board decision on Appendix 6 where it quotes the examiner's

[00:14:03] Speaker 02:
response to argument of the appeal brief.

[00:14:08] Speaker 02:
They emphasize the same mechanical means.

[00:14:11] Speaker 02:
They say that- I've got the board decision.

[00:14:13] Speaker 02:
Where in the board decision would you like me to look?

[00:14:15] Speaker 02:
Appendix 6, kind of in the middle of the page.

[00:14:18] Speaker 02:
The paragraph starts, the handheld device 110 in the first embodiment and the second embodiment has the same mechanical means.

[00:14:24] Speaker 04:
Paragraph 6 of the opinion or Appendix 6?

[00:14:27] Speaker 02:
Sorry, Appendix 6.

[00:14:29] Speaker 02:
The paragraphs are in the middle.

[00:14:31] Speaker 03:
So you're referring to that block, the last paragraph of the block indented paragraph?

[00:14:36] Speaker 02:
Yes.

[00:14:37] Speaker 03:
Okay.

[00:14:37] Speaker 02:
And there's a section of that quoted block where the board talks about the same mechanical means.

[00:14:44] Speaker 02:
And that mechanical means is the mechanics that do the automatic switching when you are setting it on the table and lifting it off the table.

[00:14:53] Speaker 03:
But doesn't, now the second embodiment doesn't actually have that though.

[00:14:56] Speaker 03:
There's no disclosure of that in the second embodiment.

[00:14:59] Speaker 03:
In the second embodiment, the way it changes from wired to wireless or changes modes is by unplugging it.

[00:15:05] Speaker 03:
So that's not even true.

[00:15:07] Speaker 02:
I would say what the board found was that the embodiment, as Appellant calls it in paragraph 36, includes that switching.

[00:15:20] Speaker 03:
That was it.

[00:15:22] Speaker 02:
Reference does it actually say that so if I may just Talk about the passages and the reference that that were that are at issue Maybe that will this will answer your question.

[00:15:33] Speaker 03:
So it's your position that in the second embodiment there is a sensor that determines whether it's whether the mouse is placed on a table or lifted up and

[00:15:45] Speaker 02:
Yes, that is our position, and that was what the examiner and the board did find.

[00:15:51] Speaker 02:
And if you look at Tefane in the passages that are at issue here, paragraphs 25 through 29 discuss in Tefane ways to switch ways.

[00:16:02] Speaker 03:
Hang on just a second.

[00:16:03] Speaker 02:
Sure.

[00:16:04] Speaker 03:
Can you tell me where paragraphs 25 through 28 is?

[00:16:06] Speaker 03:
I'm sorry.

[00:16:07] Speaker 03:
I just want to make sure I'm looking at the right spot.

[00:16:09] Speaker 02:
I can.

[00:16:10] Speaker 02:
Appendix 185.

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

[00:16:12] Speaker 03:
Thank you.

[00:16:13] Speaker 02:
So appendix 185 and 186 are where most of the passages at issue are.

[00:16:19] Speaker 02:
And in paragraphs 25 through 29, so that goes across the page,

[00:16:28] Speaker 02:
That's where Tefane is discussing the ways to switch modes.

[00:16:33] Speaker 02:
Paragraph 25 talks about a switch, like a three-position hardware switch, I would call it.

[00:16:38] Speaker 02:
And then 28 talks about that switching where you put it on the table and lift it off the table.

[00:16:46] Speaker 02:
And 29 talks about a software switch.

[00:16:49] Speaker 02:
So this whole section is talking about how you switch between the mouse mode and the remote mode.

[00:16:58] Speaker 02:
and then paragraphs 34 through 36, which starts at appendix 186 and goes to 187.

[00:17:07] Speaker 02:
In that section, Tufane is talking about how to communicate between the device and the host computer.

[00:17:14] Speaker 02:
So 34 talks about

[00:17:17] Speaker 02:
wired and wireless, and 35 also talks about the advantages of wireless, and then 36 is where it talks about a device that has a combined wired and wireless.

[00:17:29] Speaker 04:
And so... But 36 says that you switch by unplugging it, right?

[00:17:37] Speaker 04:
Yes, it does.

[00:17:39] Speaker 04:
What paragraph talks about switching the transition or transmission mode

[00:17:45] Speaker 04:
by lifting it off the table.

[00:17:46] Speaker 04:
I agree with you that 28 talks about switching operational modes.

[00:17:51] Speaker 04:
Yes.

[00:17:52] Speaker 04:
But where does it talk about switching transmission modes by lifting it off the table?

[00:17:57] Speaker 02:
By lifting it off the table.

[00:17:57] Speaker 02:
Yes.

[00:17:58] Speaker 04:
Because I don't see that anywhere in this disclosure for anybody.

[00:18:01] Speaker 02:
Well, it's not in the claims.

[00:18:03] Speaker 02:
If you look at claim the last paragraph of appendix 13, what's claimed is that in the first operational mode,

[00:18:16] Speaker 02:
the device is configured to use the first command transmission device in response to it.

[00:18:22] Speaker 04:
So that means when it's on the table, it's transmitting wirelessly, just to make it simple so we can both communicate wirely.

[00:18:29] Speaker 04:
I'm making up words.

[00:18:31] Speaker 02:
Go ahead.

[00:18:33] Speaker 02:
So in the proceeding paragraph, it says causing the handheld device to automatically transition.

[00:18:39] Speaker 02:
So they claim at line 10 on appendix 13,

[00:18:45] Speaker 02:
automatic transition when you lift it off the table.

[00:18:48] Speaker 04:
I have the claim in front of me.

[00:18:50] Speaker 04:
What limitation are you talking about?

[00:18:52] Speaker 02:
Causing the handheld device to automatically transmission.

[00:18:54] Speaker 03:
So on page 13, are there particular lines you would direct us to?

[00:19:03] Speaker 02:
Lines 10 to 15 is the clause that claims the automatic switch between modes.

[00:19:12] Speaker 02:
And if you look at lines 16 through the end, there's nothing requiring an automatic switch between transmission devices.

[00:19:26] Speaker 02:
That's the wherein clause.

[00:19:28] Speaker 02:
And the wearing clause has a configure to, and it has a, it claims that the transmission device.

[00:19:38] Speaker 03:
So just to make sure I understand, your argument is that you definitely have to transition from one operational mode to a second operational mode based on

[00:19:48] Speaker 03:
determining whether the handheld device is lifted or not.

[00:19:52] Speaker 03:
But now you're saying that this wearing clause, when it talks about switching from different transmission modes, it doesn't say exactly how that occurs.

[00:20:06] Speaker 02:
That's exactly right.

[00:20:07] Speaker 02:
And it definitely doesn't say automatically transition, which we know they know how to claim, because in line 10,

[00:20:17] Speaker 03:
I think, for all I know, that could be a good argument.

[00:20:19] Speaker 03:
One of the concerns I have is that we do review these cases under the APA, just like any other decisions from the board.

[00:20:27] Speaker 03:
And what you've just said and a lot of the things in your red brief find no basis at all in the board's opinion.

[00:20:34] Speaker 03:
So what are we supposed to do as a reviewing court here?

[00:20:38] Speaker 03:
How is that fair notice to the appellant who was relying on the board's decision

[00:20:45] Speaker 03:
and not this new ground that the government is presenting here on appeal?

[00:20:49] Speaker 02:
Well, Your Honor, I would point you to the appeal brief and the reply brief at the board.

[00:20:54] Speaker 02:
And the first time we heard the word dependency or dependent was in the blue brief.

[00:21:01] Speaker 02:
The board didn't pass on the issue of whether these things were dependent on each other.

[00:21:09] Speaker 02:
In the reply brief, they seemed to try to get at some kind of something close to that, but it didn't become clear until the blue brief that they were arguing that the transmission devices are dependent on this mechanical thing of laying it on the table and lifting it.

[00:21:30] Speaker 04:
I guess I have the same concern that Judge Stold did.

[00:21:34] Speaker 04:
I mean, there's no meat to the board's opinion.

[00:21:36] Speaker 04:
This is definitely a vegetarian opinion.

[00:21:39] Speaker 04:
And when you look at appendix page six, the only meat in the entire opinion is this basically one paragraph or two paragraphs quoted from the examiner.

[00:21:49] Speaker 04:
And in it, it talks about a second command transmission device while in second operational mode, and in parentheses, tabletop mode, mouse mode.

[00:22:01] Speaker 04:
I mean, it sounds to me like the examiner was focused on just having two different transition modes and those transition modes switching when you actually switch operational modes.

[00:22:14] Speaker 04:
This paragraph read to me by the examiner suggests to me that the examiner shared

[00:22:19] Speaker 04:
the same view that the patentee or applicant did, which is the mode switches when operational mode switches.

[00:22:27] Speaker 04:
And so I'm struggling to understand or to see where the examiner or the board said that was not actually required by the patent, because the paragraphs I'm reading by the examiner suggests that he thinks Typhane discloses that, not that it's not required by the claims.

[00:22:46] Speaker 02:
If I may point you to the appeal brief at appendix one 16 and 17 is where the argument starts.

[00:22:55] Speaker 02:
Um, if you, uh, actually let's go appendix one 17.

[00:23:02] Speaker 02:
That's the appeal brief and on page, it starts on page one 17, but the meat of the argument is on page one 18.

[00:23:13] Speaker 02:
Um, it starts about a third of the way down the page.

[00:23:16] Speaker 02:
And they argue in the first described embodiment in which the computer input device will use either a wired or a wireless connection.

[00:23:27] Speaker 02:
So they're arguing that this paragraph doesn't have the combination of both.

[00:23:32] Speaker 02:
The computer input device will not function to use a first command transmission device when they quote the claim language.

[00:23:40] Speaker 02:
And what they're saying in that paragraph is that paragraph

[00:23:46] Speaker 02:
28 doesn't have the two transmission devices.

[00:23:51] Speaker 02:
And in the next paragraph they argue that paragraph 36 doesn't have the automatic switching of lifting up the device up from the table and putting it down.

[00:24:02] Speaker 02:
And that's pretty much the argument in the appeal brief.

[00:24:06] Speaker 02:
That generally that the two modes or that the two embodiments that they call it are mutually exclusive.

[00:24:13] Speaker 02:
They didn't use those words, but that was the argument in the appeal brief.

[00:24:17] Speaker 02:
So the board wasn't really presented with the actual question of, do the transmission devices automatically change when the thing is lifted off the table?

[00:24:33] Speaker 02:
And I'll ask no further questions.

[00:24:35] Speaker 04:
OK.

[00:24:36] Speaker 04:
Thank you, Ms.

[00:24:36] Speaker 04:
Dang.

[00:24:37] Speaker 04:
Mr. Lucas, you have some available time.

[00:24:44] Speaker 01:
Just briefly, I think the claim is very clear that

[00:24:49] Speaker 01:
The modes need to automatically transition and then the when that happens that the the claims are very clear that it's configured to use the first In a certain mode in a first mode.

[00:25:01] Speaker 01:
It's configured to use a first transmission device and in a second mode It's configured to use a second transmission device There has to be some switching right in the switching is indicated in the wearing clause as occurring by virtue of moving from the first mode to

[00:25:18] Speaker 04:
to the second mode.

[00:25:20] Speaker 01:
Agreed.

[00:25:20] Speaker 04:
I mean, I don't know how else that would occur.

[00:25:24] Speaker 04:
I'm trying to even mentally imagine how.

[00:25:27] Speaker 01:
No, I don't either.

[00:25:28] Speaker 01:
I mean, I think that's very clear.

[00:25:30] Speaker 04:
And that's what the patent discloses as well.

[00:25:33] Speaker 01:
Right.

[00:25:33] Speaker 01:
And that's just not disclosed in the second embodiment or the first embodiment.

[00:25:39] Speaker 01:
And so the argument that was not presented, the claims speak for themselves, and the arguments were made.

[00:25:47] Speaker 04:
Did the PTO argue waiver on appeal of this issue?

[00:25:51] Speaker 01:
I think strictly with respect to obviousness issues.

[00:25:56] Speaker 01:
So that was it.

[00:25:59] Speaker 01:
This also appears to be a new argument for the appellant.

[00:26:04] Speaker 01:
And we would suggest that it's waived, but I also don't think it

[00:26:11] Speaker 01:
it has any legs because of the way the claims are written.

[00:26:15] Speaker 01:
I think that they're very clear that Tefane does not anticipate the claims.

[00:26:22] Speaker 04:
Thank you, Mr. Lucas.

[00:26:23] Speaker 04:
I thank both counsel for their arguments.

[00:26:25] Speaker 04:
The case is taken under submission.