[00:00:33] Speaker 05: Next case is Polycom versus Fullview, 2018-1829. [00:00:39] Speaker 05: Mr. Tamburo, when you're ready. [00:00:56] Speaker 03: May it please the court. [00:00:57] Speaker 03: Good morning, Your Honors. [00:00:58] Speaker 03: Sal Timberlake, blank roll for repelling Polycom. [00:01:02] Speaker 03: I'm going to use 12 minutes now and save three for a bottle, at least that's the plan. [00:01:07] Speaker 03: Polycom is here asking this court to reinstate two different grounds of rejection of the 7-11 patent. [00:01:14] Speaker 03: First is the first ground is obviousness over LeLong and Uehara. [00:01:19] Speaker 03: Second ground is anticipation over the LeLong reference. [00:01:23] Speaker 03: I'll talk about the obviousness grounds first. [00:01:26] Speaker 03: the PTAB entered a ground of rejection based on the Long and Yuihira and the full view elected to reopen prosecution and that's what they did and on reopen prosecution the examiner withdrew that obviousness rejection and it came back to the PTAB and the only reason for affirming that withdrawal of the obviousness rejection by the PTAB was [00:01:55] Speaker 03: It's misreading of the claims to require a substantial offset. [00:01:59] Speaker 03: And it also read the LeLong reference to disclose only a small offset. [00:02:04] Speaker 03: And so it didn't believe that that limitation was met by LeLong. [00:02:09] Speaker 03: So the claim does not require a substantial offset, Your Honors. [00:02:15] Speaker 03: The claim requires, I'll just quote it. [00:02:19] Speaker 03: It says, two fields of view corresponding to images that are merged has a portion [00:02:25] Speaker 03: where the images are merged, that has viewing directions that are substantially similar to the viewing directions of the other portion, and wherein the viewing directions within each one of such two portions appear to originate substantially from a point that is offset from the point for the other one of such two portions. [00:02:45] Speaker 03: That's a lot of words. [00:02:46] Speaker 03: I can direct you to the appendix at 128, which is figure 14 of the 711 patent, which illustrates this claim perfectly. [00:02:55] Speaker 03: It shows that you have these four merged images, these four wedges in the figure. [00:03:01] Speaker 03: And when you have two adjacent portions or two adjacent images, there's a portion that is on the edge of each image that's adjacent to the portion of the next image. [00:03:15] Speaker 03: So in figure 14, you have a portion that's labeled 520, and that's one portion, and another portion labeled 518. [00:03:23] Speaker 03: which have substantially similar viewing directions, which are both pointing northeast in that figure. [00:03:30] Speaker 03: And as you can see, the point of origin of those portions is offset, which is at the center of the figure. [00:03:38] Speaker 03: It's not a large offset, small offset. [00:03:40] Speaker 03: It's just an offset. [00:03:41] Speaker 03: That's exactly what the claim says. [00:03:44] Speaker 03: Le Long discloses the same offset. [00:03:47] Speaker 03: Le Long says that there's no absolute size of the offset [00:03:51] Speaker 03: It describes it in terms of 5 to 10 centimeters as one example. [00:03:56] Speaker 03: And it says that could be considered small in light of or only in relation to the distance to the viewed scene. [00:04:03] Speaker 03: So if I'm standing here at 5 to 10 centimeters and I'm this far away from you, say 5 meters away, this could be considered a small offset. [00:04:14] Speaker 03: But the patent, and it says if the ratio is [00:04:17] Speaker 03: 50 or higher. [00:04:18] Speaker 05: Are you arguing anticipation of obviousness here? [00:04:21] Speaker 03: Right now it's obviousness, Your Honor. [00:04:24] Speaker 03: I'm arguing that the claim does not say substantially offset, and it just says offset, and the law discloses offset. [00:04:32] Speaker 03: And when that error is corrected, that was the only basis for affirming the examiner's withdrawal of the obviousness rejection. [00:04:41] Speaker 03: When that error is corrected, [00:04:43] Speaker 03: Polycom believes the obviousness rejection should be reinstated. [00:04:48] Speaker 03: So LeLong talks about the offset in relative terms. [00:04:54] Speaker 03: If I'm standing a foot before your honors, that same 5 to 10 centimeters could be a larger offset, clearly. [00:05:02] Speaker 03: So LeLong, when you read it properly, discloses an offset. [00:05:06] Speaker 03: The claim discloses an offset. [00:05:07] Speaker 03: It's met by LeLong. [00:05:09] Speaker 03: The rejection should be reinstated. [00:05:11] Speaker 03: based on Polycom's opinion. [00:05:13] Speaker 01: Supposing we find that the PTAB abused its discretion by reaching the new ground of rejection. [00:05:25] Speaker 01: That leaves us with the original, which is what you want. [00:05:29] Speaker 01: But the PTAB didn't address the other elements of the asserted claims. [00:05:37] Speaker 01: And it didn't render a decision as to whether LaLonde anticipates. [00:05:42] Speaker 03: Your Honor, the only limitation that the PTAB addressed on the anticipation, you talk about the anticipation rejection, the only limitation addressed was mirrors because that's the only limitation the examiner found was missing. [00:05:58] Speaker 03: So the examiner withdrew. [00:05:59] Speaker 03: The examiner originally had entered a rejection on anticipation on the long. [00:06:05] Speaker 03: She withdrew it because she didn't find that the long disclosed mirrors because there's some disclosure in the long. [00:06:10] Speaker 03: It says mirrors are not necessary under certain circumstances. [00:06:14] Speaker 03: The PTAD said, you're wrong, examiner. [00:06:17] Speaker 03: They vehemently disagreed. [00:06:18] Speaker 03: That's the only limitation they addressed. [00:06:22] Speaker 03: They found it was disclosed by LeLong, and we think we don't understand it. [00:06:27] Speaker 04: They raised that conclusion about the mirrors in LeLong. [00:06:30] Speaker 04: They automatically then moved to the new ground. [00:06:33] Speaker 04: They didn't actually have a [00:06:35] Speaker 04: full decision on 102. [00:06:37] Speaker 03: You're right, Your Honor. [00:06:37] Speaker 04: I mean, that's exactly... We read it and we were wondering when the next... When the time came for you to complain on the rehearing, you did not raise 102. [00:06:46] Speaker 04: That's true. [00:06:47] Speaker 04: And the rules require you to raise that on rehearing in order to preserve it for appeal here. [00:06:52] Speaker 03: Your Honor, I don't think the rules require us to request a rehearing on an issue in order to preserve it for appeal. [00:06:59] Speaker 03: I think the opposite is true, Your Honor. [00:07:01] Speaker 04: Well, we can disagree about that, but our case law is such that if you don't present an issue on a rehearing before the board, then that issue is gone. [00:07:11] Speaker 03: I think Magnum says differently, Your Honor, but that's what we understand. [00:07:18] Speaker 03: We didn't have to file a rehearing request. [00:07:20] Speaker 04: You didn't have to file a rehearing, but when you do, and the reason for it is in order to give the board a chance to recoup, so as possibly to save even appeal up here. [00:07:31] Speaker 04: So if you had presented your 102 issue to the board on rehearing, the board would have been able to say what it would say. [00:07:38] Speaker 04: I understand, Your Honor. [00:07:40] Speaker 04: And so by having failed to raise the issue in your rehearing, and the rules clearly require you to raise every issue that you want to have the board consider on rehearing, and the rehearing decision becomes the decision that's appealed up here, and the second board opinion from which you took a rehearing but didn't include 102, [00:08:01] Speaker 04: is a roll-up of the previous board as well. [00:08:04] Speaker 04: So the 102 problem that you wanted to raise the time in my judgment for you to raise it was on your rehearing. [00:08:11] Speaker 04: Well, Your Honor, you know, our understanding is if you're going to, if you, you don't have to file a rehearing request and you don't have to, you don't have to appeal, you don't have to request a hearing when every three of the judges... Of course you're not obligated to file a petition of rehearing. [00:08:28] Speaker 04: Nobody's saying you're obligated. [00:08:30] Speaker 04: But if you do, then there are a set of rules you play by. [00:08:34] Speaker 03: OK, Your Honor. [00:08:35] Speaker 03: That's not our understanding under magnum, but thank you. [00:08:39] Speaker 03: So I think we just discussed anticipation. [00:08:43] Speaker 03: We think that that should be reinstated because the one limitation was found. [00:08:48] Speaker 03: On obviousness, we brought the misreading of the limitation to the board's attention in a request for rehearing. [00:08:58] Speaker 03: And on their rehearing decision, they actually compounded the error by misreading the claim now to require an insubstantial offset. [00:09:10] Speaker 03: So they went from a substantial offset. [00:09:12] Speaker 04: Was the disagreement at the board, I mean the dissent on this very issue, refresh my recollection? [00:09:20] Speaker 03: Yeah, the dissent corrected the board saying it's an offset. [00:09:25] Speaker 04: the the board so there's a debate between inside the board on this offset issue uh i believe there was your honor i believe that's what i'm trying to get at i mean because it's a i i i can confirm that on rebuttal your honor um but but i i know that and part of the offset issue is what does the prior art teach [00:09:46] Speaker 04: Yeah. [00:09:47] Speaker 04: You've got a combo, if you will, of a claim construction issue, which is a de novo review, and then you have a what does a records teach, which is a substantial evidence review. [00:09:56] Speaker 03: Right. [00:09:56] Speaker 03: And if I can, so they found there was a substantial offset originally, then they found an insubstantial offset. [00:10:04] Speaker 03: And then when they were defending their finding of an insubstantial offset, they went to LeLong, which says a mirror is not necessary when the offset is small. [00:10:16] Speaker 03: So then they found another reason to uphold the withdrawal of the obviousness rejection by saying, well, the claim now says insubstantial offset. [00:10:27] Speaker 03: So we're going to read LeLong to say you don't need a mirror. [00:10:31] Speaker 03: So you're not going to be performing the redirecting limitation when you have an insubstantial offset. [00:10:36] Speaker 03: Both readings are wrong. [00:10:38] Speaker 03: The claim just says offset. [00:10:39] Speaker 03: LeLong discloses an offset. [00:10:42] Speaker 03: And we think that that limitation is met. [00:10:46] Speaker 03: When the correct reading of the claim is, if this court would read the claim correctly as it's written, and it reads LeLong as it's written, you think that it really should be reinstated, this rejection of obviousness based on LeLong and you were here. [00:11:04] Speaker 04: So just to come back to a point that Judge Wallen made reference to, which is going to be part of the argument from your colleague, your view is that the [00:11:15] Speaker 04: quote, authority issue, the power of the board to raise the 103 anew. [00:11:23] Speaker 04: I think you're saying that your adversary can't raise that issue because he didn't file a cross appeal? [00:11:28] Speaker 03: That's one of the things we're saying, Your Honor. [00:11:29] Speaker 04: Well, why is that? [00:11:31] Speaker 04: So why is what your adversary arguing enlarging the judgment? [00:11:36] Speaker 03: He's asking for a modification of the judgment. [00:11:38] Speaker 03: He's saying that the obviousness rejection never should have been included in the first place. [00:11:43] Speaker 03: He's not saying it should be affirmed. [00:11:45] Speaker 03: He's saying it should be modified to be stricken from the original order from the PTAB. [00:11:50] Speaker 01: Isn't that effectively a jurisdictional question? [00:11:54] Speaker 03: I'm not sure I understand. [00:11:55] Speaker 01: Well, there's an argument to be made that the PTAB's decision to reach a new ground is effectively a question of its jurisdiction because the relevant language derives from the statute. [00:12:15] Speaker 03: That may be, I never thought of it until those terms, Your Honor, but the PTAB was pretty clear under 41.77, it has the authority. [00:12:23] Speaker 03: And now it's not unlimited authority. [00:12:25] Speaker 03: The QI Press case from this court kind of put some structure around that. [00:12:29] Speaker 03: It says that if the references were already before the board, as they were here, and in that case, in particular, QI Press, there was an inconsistency, at least as this court perceived by the board, [00:12:42] Speaker 03: were the examiner's decision. [00:12:43] Speaker 03: It entered some grounds of rejection, and then it didn't enter another ground, but this court believed that it was totally inconsistent, and it said the board, under its authority, under 4177, should have had the obligation to enter a new ground of rejection, which is exactly what the board did here. [00:13:01] Speaker 03: It saw that the references were already before it, and it saw an inconsistency [00:13:07] Speaker 03: with the examiners rejecting the claims. [00:13:09] Speaker 03: The examiner rejected the claims based on anticipation. [00:13:12] Speaker 04: I think the case is a little different here because what happened was that after the first cut was made about what grounds were going to be instituted, there was an appeal up to the director. [00:13:23] Speaker 04: And the appeal up to the director, which came down, the director said, under no circumstances should you review 102 under LeLong. [00:13:31] Speaker 04: And under no circumstances should you review 103 under a combination of your references. [00:13:36] Speaker 04: That's very clear from the director saying, do not do it. [00:13:41] Speaker 03: Yes, your honor. [00:13:42] Speaker 04: And yet the board, and presumably the board was unaware of that? [00:13:46] Speaker 03: No, they were aware of it. [00:13:48] Speaker 03: That preclusion was on Polycom. [00:13:51] Speaker 03: Polycom could not appeal it. [00:13:54] Speaker 03: The examiner could not review it. [00:13:56] Speaker 04: But the board... But if you have a situation where someone comes in and asks for a re-exam, [00:14:01] Speaker 04: And the first person that looks at it on behalf of the director of the examiner says, well, I'll institute on this. [00:14:07] Speaker 04: And you don't like that result. [00:14:09] Speaker 04: You want more. [00:14:10] Speaker 04: You go up to the director, right? [00:14:12] Speaker 04: That right of appeal. [00:14:14] Speaker 04: And the director in this case absolutely said, do not, you may not re-examine 102 on LeLong. [00:14:22] Speaker 04: And you may not re-examine 103 on the combination of LeLong and the other reference. [00:14:30] Speaker 04: Nonetheless, the board [00:14:31] Speaker 03: The board found the authority in 4177 because of the inconsistencies that it perceived below. [00:14:39] Speaker 03: There was a rejection. [00:14:41] Speaker 04: I understand. [00:14:42] Speaker 04: So your argument would be that the board can tell the director to go jump in the lake. [00:14:49] Speaker 01: Yeah. [00:14:52] Speaker 01: How did they have the authority to do that? [00:14:54] Speaker 03: The authority is, 4177 is pretty broad. [00:14:56] Speaker 04: The regulation makes very clear that they have the authority to enter a new ground of rejection. [00:15:03] Speaker 04: And they have to then allow the party to go back and do some more exam if they'd like to do that. [00:15:07] Speaker 03: And that's exactly what happened. [00:15:08] Speaker 03: They had their opportunity to re-argue with below. [00:15:11] Speaker 03: But the inconsistency, if I could just get this point out, the inconsistency that the board saw was that there was a rejection on anticipation of LeLond. [00:15:19] Speaker 03: There was a rejection on obviousness of anticipation on Uehira. [00:15:24] Speaker 03: yet there was no rejection of obviousness in light of the two. [00:15:29] Speaker 03: So the board said, how can that stand? [00:15:32] Speaker 03: You have an anticipation on one, an anticipation on the other, yet the combination. [00:15:36] Speaker 04: I mean, anticipation was, there was no authority to do that. [00:15:42] Speaker 04: I mean, the short of the matter is that the director cut off, said, you may not review this patent for anticipation under LeLond. [00:15:55] Speaker 04: Right? [00:15:56] Speaker 04: And you read the director's decision on the appeal up to the director? [00:16:01] Speaker 04: Right. [00:16:05] Speaker 04: So when the board is saying, well, golly, they got this problem under 102, which is causing me to think I should go to 103, they shouldn't have been thinking about 102 at all. [00:16:16] Speaker 03: Well, that was what was appealed to the board. [00:16:18] Speaker 03: The withdrawal of the 102 rejection was appealed to the board. [00:16:22] Speaker 03: There was a rejection under 102. [00:16:24] Speaker 04: Why wouldn't the board have looked at it and said, why was the examiner looking at 102 under LeLong in the first place? [00:16:31] Speaker 04: Because he'd been told he can't do it. [00:16:34] Speaker 04: Well, it was appealed. [00:16:35] Speaker 04: What happened here was the examiner got out in front of the board, in front of the director, right? [00:16:41] Speaker 03: No, Your Honor, there was an anticipation rejection under LeLong. [00:16:44] Speaker 03: It's not like the director told the examiner she cannot [00:16:48] Speaker 03: decide LeLong anticipation. [00:16:51] Speaker 03: There was a rejection of LeLong on anticipation that was withdrawn. [00:16:56] Speaker 03: And then that was what was appealed by Polycom. [00:17:00] Speaker 03: And the examiner, the PTAB, disagreed with the examiner and did not enter the ultimate rejection on 102. [00:17:10] Speaker 03: There was a rejection, Your Honor, Appendix 275. [00:17:13] Speaker 03: There's the... Well, all I'm saying is that [00:17:17] Speaker 04: Appendix 674, we have the director's decision on appeal up to the director about the question of what is going to be fair game for the re-example, right? [00:17:28] Speaker 04: So look at page 674, and it's in the second paragraph from the bottom. [00:17:37] Speaker 04: As such, the request does not present a reasonable concord that the request will prevail on any rejection which will long and solely relied on to teach the reflective area limitation. [00:17:50] Speaker 04: page 674, that's the director when a challenge has been raised to whether the grounds that were going forward were proper. [00:18:05] Speaker 04: So the director says, keep your hands off of LeLong for teaching the reflective area limitation. [00:18:11] Speaker 04: That's the mirrors. [00:18:15] Speaker 04: And the board didn't. [00:18:16] Speaker 04: The board didn't. [00:18:17] Speaker 04: The examiner. [00:18:19] Speaker 04: How can the examiner [00:18:20] Speaker 04: talk about LeLong and reflection. [00:18:26] Speaker 03: The examiner found LeLong has no mirror. [00:18:30] Speaker 04: Where did the examiner get the authority to say that when the director has said keep your hands off of that? [00:18:39] Speaker 04: And then if you go down a little lower in the final opinion, you'll see there that the director said as to issue W, [00:18:48] Speaker 04: which is the combination of LeLong, and I can't pronounce the other one under 103, he said keep your hands off that, too. [00:18:59] Speaker 05: Counsel, your time has expired. [00:19:01] Speaker 05: We'll give you three minutes. [00:19:03] Speaker 05: Thank you, Your Honor. [00:19:05] Speaker 05: At which time you will have thought through the answer. [00:19:08] Speaker 05: Thank you. [00:19:10] Speaker 05: Mr. Lazaroff. [00:19:14] Speaker 02: May it please the Court, I'd like to [00:19:18] Speaker 02: address the question of whether the board misconstrued the term substantially in its decision after the reopened prosecution. [00:19:33] Speaker 04: We're on this other topic. [00:19:34] Speaker 04: Can we just clear air here on the one thing before we move back to the 103? [00:19:39] Speaker 04: This is on the sort of power authority issue. [00:19:43] Speaker 04: Why is it that you don't have to file a cross-appeal in order to raise that issue? [00:19:48] Speaker 02: Well, our view is that we are only using that as an alternative in the event that, for some reason, the court should not affirm the board on the obviousness issue. [00:20:01] Speaker 04: But you had a different decision. [00:20:03] Speaker 02: Well, it was. [00:20:06] Speaker 04: You don't get a decision that claims are not obvious. [00:20:11] Speaker 02: Well, here's the... Right? [00:20:14] Speaker 04: Right? [00:20:15] Speaker 02: Right. [00:20:16] Speaker 04: On the 103 issue, [00:20:17] Speaker 04: You'd get a decision if you win that says, well, the board was right. [00:20:21] Speaker 04: These claims are not obvious. [00:20:23] Speaker 04: And on your power issue, you get an entirely different order. [00:20:33] Speaker 04: In order of sweeping consequences that apply well beyond the limits of this particular case. [00:20:41] Speaker 04: The 103 is very particular just to you. [00:20:45] Speaker 02: Well, the only issue here then is whether the board exceeded its authority. [00:20:51] Speaker 04: I know that, but the question is whether or not we have... I want to stick with the question of whether or not you had to file a cross-appeal, because we don't have any jurisdiction if you don't have a cross-appeal. [00:21:04] Speaker 02: The case that is cited against us is a granite management case, and in this, the government [00:21:14] Speaker 02: One, on summary judgment and the court in the preceding ruled that it had entered into a contract. [00:21:23] Speaker 02: And on appeal, the government asked for both affirmance of the summary judgment and specifically, in its request for relief, reversal of the decision on agreement. [00:21:40] Speaker 02: The court in that case said, [00:21:43] Speaker 02: Because they were asking for a reversal, in addition to the affirmance, they needed to file a cross-appeal. [00:21:51] Speaker 02: Court said they could have argued the same issue simply in affirmance of the grant of summary judgment. [00:22:01] Speaker 02: So our view is that we're not asking for any relief beyond affirmance of the board's decision. [00:22:13] Speaker 02: If you affirm the board's decision, we don't care if you go further and even address the issue of whether the board abused its discretion in issuing a new ground of rejection. [00:22:28] Speaker 04: So the question for us is whether or not that being said, whether or not you're enlarging the size of the decision in order to get your result. [00:22:39] Speaker 02: And if our papers are in any way ambiguous, I would say, right? [00:22:44] Speaker 04: Assuming for purposes of not to interrupt you, but your time is short. [00:22:48] Speaker 04: Assuming for purposes of argument that I would say, well, you should have filed a cross appeal. [00:22:52] Speaker 04: If the question before us is a jurisdictional question as opposed to a non-jurisdictional question, then we would be required to greet the issue even if you hadn't filed a cross appeal. [00:23:06] Speaker 04: Of course. [00:23:09] Speaker 04: The question of whether or not there is a jurisdictional issue here is novel and interesting. [00:23:17] Speaker 04: It may be informed by our recent decisions in this court after the fallout from the so-called SAS case that you may be aware of, the Supreme Court case that dealt with whether the PTAB was allowed to institute one of the new [00:23:35] Speaker 04: free exams on less than all the grounds are served. [00:23:40] Speaker 04: And there was a question about whether or not that was a question of the jurisdiction of the PTAB to do so. [00:23:47] Speaker 04: And yet, nonetheless, when the case came up to us, we decided that was not a jurisdictional issue for purposes of our review. [00:23:58] Speaker 04: So the question in my mind is, why isn't this situation similar to the SAS situation in which we said, [00:24:05] Speaker 04: Well, the ultra-various notion that was a field at the PTO, a jurisdictional issue, nevertheless, was not a jurisdictional issue here. [00:24:17] Speaker 02: Well, we framed our argument as an abusive discretion, saying that the rule gives the board discretion to issue a new ground of rejection, but for them to exercise that discretion in the face of the statutory [00:24:35] Speaker 02: primacy of the director to decide what should be reexamined is an abuse of that discretion. [00:24:45] Speaker 02: And we're only looking for a very narrow decision here that for the board to take a particular issue, issue W, which had been twice turned down, was that abuse of discretion. [00:25:09] Speaker 04: Well, I think it's a fascinating but very difficult issue, the question of the collision between the authority, clear authority of the board to raise up a new ground for rejection. [00:25:23] Speaker 02: Well, unless the court should decide that it's a jurisdictional issue, I would point out that an affirmance on the obviousness issue pretty much makes it a simple case. [00:25:38] Speaker 02: If the patent is not obvious based on the two references, it's not obvious based on each one individually. [00:25:47] Speaker 04: We've got a very difficult issue in front of us to decide, potentially. [00:25:52] Speaker 04: Are you saying, what you just said, are you saying that in the event the court were to affirm on the 103 issue, you would withdraw your challenge? [00:26:01] Speaker 04: Yes. [00:26:02] Speaker 02: Well, inasmuch as we've always considered it to be an alternative. [00:26:06] Speaker 04: Well, that's what I mean. [00:26:07] Speaker 04: I'm simply looking for a ground here to say so. [00:26:11] Speaker 04: You're saying that in the event that there's an affirmance on the 103, you'd withdraw your challenge on what I'm calling the authority issue. [00:26:19] Speaker 02: Yes. [00:26:19] Speaker 04: OK. [00:26:20] Speaker 02: No question. [00:26:22] Speaker 02: So why should the court decide the 103 issue in our favor? [00:26:28] Speaker 02: I wanted to respond to the [00:26:32] Speaker 02: alleged claim misconstruction. [00:26:35] Speaker 02: And this shows up not in the context of construing a claim, but in the board's response to what it viewed as an argument of Lelong that's from pages appendix 26 and, oh, excuse me, 27 and 28. [00:26:51] Speaker 02: In other words, according to Requestor's initial argument, Lelong discloses that viewpoints are both substantially similar, but at the same time are substantially offset. [00:27:03] Speaker 02: And it was in response to that argument that the board down below talks about the substantial offset. [00:27:14] Speaker 02: There's some clarification of this given to us in Judge Baumeister's concurring opinion on appendix page 15. [00:27:25] Speaker 02: He says, [00:27:27] Speaker 02: The majority, in using the phrase substantially offset, was merely following the shorthand convention the patent owner and requester employed. [00:27:37] Speaker 02: And he references a footnote in the page 819 of the appendix that [00:27:56] Speaker 02: where the requester says we kind of got into this bind where we started using substantial in both places as shorthand. [00:28:08] Speaker 02: And he says it started with our own experts declaration in paragraph 19 at appendix page 758 where he does it. [00:28:18] Speaker 02: So I think it's a mistake to [00:28:23] Speaker 02: take what the board says here as a misconstruction of the claim. [00:28:28] Speaker 02: And in fact, if you take this shorthand and unpack it into the constituent elements that the shorthand is supposed to represent, it is very true that that is what is required by the claim. [00:28:43] Speaker 02: Assuming, for the sake of argument, that the board did drop the ball and make a mistake in determining there was substantial offset [00:28:53] Speaker 02: I think there are four reasons why the board should still have rejected this Li-Long construction that they provided. [00:29:03] Speaker 02: One is the very reason that the board concludes with is that in any event, they don't explain sufficiently how you can have two inconsistent conditions existing simultaneously. [00:29:16] Speaker 02: And those inconsistent conditions will be there whether the offset is big or small. [00:29:23] Speaker 02: So in that sense, if they misconstrued it, it was immaterial because the reasoning would apply. [00:29:29] Speaker 02: Reason number two is the reason given by the majority opinion in the rehearing, which is that in response to Polycom's argument that it doesn't have to be big, it can be tiny. [00:29:45] Speaker 02: And the board in its majority said, well, if it's really tiny, then [00:29:52] Speaker 02: you bump up against the statement in Leelong that in this situation, a reflective surface is unnecessary. [00:30:03] Speaker 02: So there would be no motivation to add that element, which is an element of every claim. [00:30:08] Speaker 02: The third reason is the one given by the concurring opinion, Judge Baumeister, who essentially says, I [00:30:22] Speaker 02: interpreted this as negligible versus non-negligible. [00:30:27] Speaker 02: Patent calls for a non-negligible offset, whereas Lelong essentially says, we're trying as hard as we can to make these things consistent. [00:30:36] Speaker 02: So the offset there, which he never refers to offset, but only non-coincident, is a third reason for throwing away the [00:30:52] Speaker 02: The argument, the fourth one, is the one that shows up on pages 61 through 64 of our brief. [00:31:05] Speaker 02: And that is the argument that if you took the figure that is in the appellant's brief, page 12, to allegedly show this [00:31:22] Speaker 02: situation, you would have the very same, you would develop the blind regions and that Li Long, one would not be motivated to make the offsets that way because Li Long says absolutely all the details of the panoramic scene are recorded by one or the other camera so that no object under surveillance is left out. [00:31:53] Speaker 02: So you would be contradicting if you did that. [00:31:58] Speaker 02: With respect to that figure 1G that is shown there, I would note that on page 12 of the appellant's brief that this is not a figure that appears in Lelon. [00:32:14] Speaker 02: This is a construct of council. [00:32:18] Speaker 02: And so far as I can tell, it doesn't show up in the record any place [00:32:23] Speaker 02: before this. [00:32:25] Speaker 02: The last point I would like to make in the minute and a half that I have left is our contention that this is a case that is based on substantial factual evidence, the evidence that was required [00:32:50] Speaker 02: to be produced for the examiner to overcome the new ground of rejection, the declarations of Dr. Metrovalli and Dr. Fantone that were the basis of the examiner's determination and were affirmed by the board in its decision. [00:33:14] Speaker 02: And our argument is that this constitutes the sort of substantial [00:33:20] Speaker 02: evidence that persuaded the board and was to be given deference. [00:33:28] Speaker 02: The dissent confirms really that that is what... So because the dissent says [00:33:48] Speaker 02: Contrary to the examiner's determination and the majority's conclusion, in my view, Nitrovalli doesn't overcome the new ground of rejection. [00:33:57] Speaker 02: And later, he says, basically, I view the evidence differently than the majority does. [00:34:06] Speaker 02: And we cited the Elbit case, which I believe is a case that Judge Wallach wrote for the proposition that when the evidence will support two different [00:34:18] Speaker 02: conclusions, it's the epitome of the kind of case where the decision to take one has to be treated as substantial evidence. [00:34:29] Speaker 02: Thank you. [00:34:30] Speaker 05: Thank you, counsel. [00:34:32] Speaker 05: Mr. Tamburo has some rebuttal time, three minutes. [00:34:37] Speaker 05: Yes, your honor. [00:34:40] Speaker 03: Back to the original question about the petition. [00:34:44] Speaker 03: or the decision on petition. [00:34:45] Speaker 03: If you'll note on Appendix 663, this petition was addressing only claims 22 to 24 of Ground W, or 22 and 24 at all. [00:34:58] Speaker 03: Everything else had been instituted. [00:34:59] Speaker 03: This was a petition on the decision not to institute 22 to 24. [00:35:05] Speaker 03: We are not looking to have 22 to 24 anticipated by LeLong. [00:35:10] Speaker 03: That's not in part of the claims that we're appealing. [00:35:14] Speaker 03: So this this whole decision with these preclusions were directed only to those three claims your honor If I can I'm on 663 and 664 I can Move on The there's no question that the p-tab misread the claim I'd like to just read some quotes what the p-tab said and [00:35:43] Speaker 03: about substantial offset. [00:35:46] Speaker 03: It said, in view of the explicit disclosure of the long, that such an offset would be considered small. [00:35:52] Speaker 03: We do not agree with Requestor's original argument that one of skill in the art would have considered such an offset to be substantial as recited in claim one. [00:36:01] Speaker 03: That's Appendix 28. [00:36:03] Speaker 03: There's another quote in Appendix 28 which says it again. [00:36:09] Speaker 03: It says, Requestor does not explain sufficiently how the same viewpoints of LeLong would have been considered by those of skill in the art to be both substantially similar and substantially offset from each other at the same time. [00:36:20] Speaker 03: That's an example from 28. [00:36:23] Speaker 03: Again, at appendix 10 in the rehearing decision, Requestor now argues claim one does not recite or require that the offset points be substantial. [00:36:35] Speaker 03: even assuming requester to be correct that claim one does not require the claimed offset to be substantial. [00:36:41] Speaker 03: Appendix 10. [00:36:42] Speaker 03: These are again and again misreading the claim limitation to require a substantial offset. [00:36:49] Speaker 03: There's no inconsistency in the claim. [00:36:52] Speaker 03: What's substantially similar is the viewing direction, and then there's an offset which is not substantially large or substantially small. [00:37:00] Speaker 03: It's just an offset, Your Honors. [00:37:03] Speaker 03: There's some discussion, I'd like to take a moment, exhibit C, which is at appendix 165. [00:37:11] Speaker 03: There's an accusation that it was Polycom that kind of mixed up the two concepts of a viewpoint and a viewing direction. [00:37:20] Speaker 03: Not so. [00:37:21] Speaker 03: There's a limitation in this claim chart on 165 where we're pointing to figure 1G in the long patent as disclosing the substantially similar viewing directions. [00:37:33] Speaker 03: And then the next limitation is the viewpoints having an offset, which is that we're reciting to column seven of LeLong. [00:37:40] Speaker 03: We're not confusing any of these limitations at all, Your Honor. [00:37:45] Speaker 03: I'd like to say a word about Dr. Netrovalli. [00:37:47] Speaker 05: I'll just say a sentence. [00:37:49] Speaker 03: Yes. [00:37:50] Speaker 05: We need three minutes extra, so. [00:37:52] Speaker 05: I appreciate it, Your Honor. [00:37:53] Speaker 05: It's your argument. [00:37:53] Speaker 03: One sentence. [00:37:54] Speaker 03: Dr. Netrovalli did not address LeLong at all, especially nothing about what the PTAB decided about LeLong. [00:38:02] Speaker 03: And the dissent pointed that out at 33. [00:38:09] Speaker 03: And if you look at his declaration at 712 to 717, he just says not one word about the disclosure of the law. [00:38:16] Speaker 03: So the board cannot rely on Netrovale to overturn its original rejection of obviousness based on anything Netrovale said. [00:38:26] Speaker 03: Thank you, Your Honors. [00:38:27] Speaker 03: Thank you, counsel. [00:38:27] Speaker 03: We'll take the case under advisement. [00:38:31] Speaker 04: All rise. [00:38:34] Speaker 04: The honorable court is adjourned from tomorrow morning. [00:38:36] Speaker 04: It's an o'clock a.m.