[00:00:00] Speaker 04:
Okay, you've reserved three minutes I'll let you know if you run into that Revital time, okay, you may proceed Mr. Ostro.

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

[00:00:11] Speaker 04:
Okay.

[00:00:12] Speaker 03:
Yes.

[00:00:12] Speaker 03:
Good morning.

[00:00:13] Speaker 03:
Your honors may please the court.

[00:00:15] Speaker 03:
I'm Seth Ostro I represent the appellant and patent owners spring ventures.

[00:00:20] Speaker 03:
We are appealing a ruling by the board of patent trial appears in an IP in an IPR that the claims of the

[00:00:29] Speaker 03:
The patent owners patent were invalid as obvious over a combination of references in particular a patent to Belfour combined with the teachings of a product called echo search as Described as described into an article to current and a patent to Sotomayor in the blue brief at 42 you assert that Google's expert dr. Seamus is not qualified to be an expert by his own admission

[00:00:56] Speaker 04:
And in the appendix at 44, the PTAB rejects your characterization.

[00:01:04] Speaker 04:
They list that Dr. Shane has designed and taught university courses on design and implementation of user interfaces for web-based applications.

[00:01:13] Speaker 04:
He's a technical advisor to an internet search engine, was the founder and president of two computer software companies, has a PhD in computer science,

[00:01:24] Speaker 04:
and is a distinguished career professor at Carnegie Mellon.

[00:01:27] Speaker 04:
How is he not a qualified expert?

[00:01:30] Speaker 03:
Our opinion was that Dr. Shameless has some expertise.

[00:01:36] Speaker 03:
This case required specific expertise in search engine technology, which in the time, the relevant time frame of our invention, the mid to late 1990s, Dr. Shameless was not working in that field and was actually working as a patent attorney.

[00:01:53] Speaker 03:
A lot of what your honors described came afterwards.

[00:01:56] Speaker 03:
And since then, he certainly has acquired expertise in general computer science knowledge and so forth.

[00:02:02] Speaker 03:
What we were trying to do was contrast Dr. Shamos' lack of expertise in the search engine field with the expertise of the three experts that Spring Ventures put forth reports on who were working in that exact field in this time frame.

[00:02:18] Speaker 04:
Google asserts.

[00:02:22] Speaker 04:
that you repeatedly misquote Dr. Shamos in your briefing.

[00:02:27] Speaker 04:
Specifically, in the red brief at 37, Google provides a quote from your analysis in the blue brief at 2930 regarding the translator entity software and the browser software, and then provides the actual quote.

[00:02:46] Speaker 04:
The actual quote is at page 37 of the red brief.

[00:02:51] Speaker 04:
And I checked the appendix of 2642, and it's correct.

[00:02:59] Speaker 04:
You exclude the initial clause of Dr. Seamus' statement in which he says, if that's the case.

[00:03:07] Speaker 04:
How isn't that outright misleading?

[00:03:13] Speaker 04:
OK.

[00:03:16] Speaker 04:
Let me back up.

[00:03:17] Speaker 04:
Let's stick with the first one.

[00:03:19] Speaker 04:
How is that not a misrepresentation of the record?

[00:03:21] Speaker 03:
So I pulled up your honor reference page 37 yes brief so the point at least that we were trying to make here was that the claim refers to there's a translator input window, which is generated by a translator entity and Dr. Shamos had testified that the translator input window is separate from the browser window and he had also testified that the translator input window is caused by

[00:03:48] Speaker 03:
One of our points is caused by the translator entity, generated by it, not the browser.

[00:03:55] Speaker 03:
So the conclusion from that is that he's taking the position that the translator entity is separate software from the browser.

[00:04:03] Speaker 04:
I believe that is what's... Okay, and then on the same page, 37, Google says you misquote Dr. Seamus because you exclude that initial clause.

[00:04:15] Speaker 04:
You quote him as saying, a browser can't be operatively coupled to itself.

[00:04:25] Speaker 04:
You delete if that's the case.

[00:04:29] Speaker 04:
Is that not an outright misrepresentation of his statement?

[00:04:37] Speaker 03:
So I apologize.

[00:04:38] Speaker 03:
I don't remember exactly what the Google does not explain in the brief.

[00:04:44] Speaker 03:
What the assumption was, the underlying assumption that he was saying, if that's the case.

[00:04:49] Speaker 03:
But I don't believe that that underlying assumption was something that could be reasonably disputed, so that it was the case.

[00:04:56] Speaker 03:
I think that was the point, is that

[00:04:59] Speaker 03:
Whatever that underlying assumption was, Dr. Shamos and I, during his deposition, had a somewhat engaged in some sophistry about what it means for two parts of something to be operatively coupled to one another, and whether someone's head could be operatively coupled to their hand, and so forth.

[00:05:16] Speaker 03:
It was this kind of discussion.

[00:05:17] Speaker 03:
So whatever that underlying assumption was, in our view, it's not in dispute.

[00:05:23] Speaker 03:
So that is the case.

[00:05:25] Speaker 03:
So that's the case.

[00:05:26] Speaker 04:
Well, I have it.

[00:05:27] Speaker 04:
It's at 2760.

[00:05:28] Speaker 04:
Do you have the record in front of you?

[00:05:31] Speaker 03:
OK.

[00:05:35] Speaker 04:
Your question is, so then under paragraph 62's assumption, we discussed it at length, so I'm not going to repeat it again.

[00:05:41] Speaker 04:
Just under the assumption of paragraph 62, in order to meet the element of a translator entity and the combination, you need to take functionality from Belfiore's auto search and search engine and part of the functionality of echo search and combine

[00:05:58] Speaker 04:
Is that what's happening to become the translator entity?

[00:06:02] Speaker 04:
Yes, if that's the case.

[00:06:06] Speaker 04:
That you can't be operatively coupled to a component of yourself.

[00:06:11] Speaker 04:
The way you cited is misleading.

[00:06:16] Speaker 03:
apologize I'm not sure that I agree he said yes he agreed with the underlying assumption so and then he said if that's the case meaning yes he agrees with the assumption and this is the conclusion from it that's how we read that testimony that's weak okay go ahead

[00:06:37] Speaker 03:
well what We believe that the board is has made several errors one of them is really that they haven't provided substantial and sufficient evidence or explanation to Justify why they ignored spring ventures evidence this is relates both to claim construction issues there were three claim construction issues here as well as the ultimate

[00:07:03] Speaker 00:
You have a lot of issues that you're raising today.

[00:07:06] Speaker 00:
Are there the particular ones that you wanted to focus on with your time?

[00:07:10] Speaker 03:
I probably should get to that given the time that's left.

[00:07:14] Speaker 03:
The key issue probably is really the motivation to combine, whether it really would have been obvious to want to steal in the art to combine the teachings of Belfiore with the search engine aspects of Echo Search.

[00:07:25] Speaker 03:
And the board in its conclusion

[00:07:30] Speaker 03:
In our view, really just ignored most of the evidence that was put into the record and failed to make any explanation why or acknowledgement of the evidence or how they reached their conclusion based on that.

[00:07:43] Speaker 03:
And they're also mistaken about the conclusion.

[00:07:45] Speaker 03:
So now I'm looking at page 32 of the board's decision, and I'm trying to cut to the chase.

[00:07:50] Speaker 03:
This is appendix 32, the same page number.

[00:07:54] Speaker 03:
And the board has reached several conclusions here about what's taught by the prior art, which does not get to the issue of whether it would have been obvious to combine.

[00:08:03] Speaker 03:
The reason is, stepping back for a moment, the echo search system was teaching search engine technology.

[00:08:12] Speaker 03:
Search engine technology was, and even to this day, but at the time, producing lists of search results.

[00:08:19] Speaker 03:
As all the experts acknowledged, people using search engines expected to get search results.

[00:08:23] Speaker 03:
Even Dr. Shamos repeatedly said a number of different times, never cited by the board, never acknowledged by the board, but Dr. Shamos repeatedly said that if he does his search, he expects to get search results.

[00:08:35] Speaker 03:
He wants to get search results.

[00:08:36] Speaker 03:
That's the point of doing the search.

[00:08:38] Speaker 03:
These quotes are in our briefs in their fullest.

[00:08:42] Speaker 03:
What the board has done here,

[00:08:43] Speaker 03:
is they say, well, Corrin teaches, and now I'm about three lines down.

[00:08:47] Speaker 03:
It says, thus, Corrin teaches the desirability of limiting or focusing search results, not just expanding or diversifying the search area, as Patanoner argues.

[00:08:57] Speaker 03:
And he says, accordingly, we are not persuaded by Patanoner's argument that Corrin teaches away.

[00:09:02] Speaker 03:
So what the board is acknowledging, this is an echo search, teaches having search results, just having fewer search results, or perhaps better search results, but limiting the search results, but still teaching getting search results.

[00:09:15] Speaker 03:
So when someone used echo search, they always got results, meaning they got a list of URLs and links, and they got to look at what came and pick one.

[00:09:25] Speaker 03:
All the experts agreed, this is how search engines work.

[00:09:28] Speaker 03:
This is how everyone expected them to work.

[00:09:30] Speaker 03:
And nobody contemplated doing otherwise.

[00:09:32] Speaker 03:
Even Dr. Shamos, who, as a lawyer at the time, was consulting with one of the original search engine companies, which is now defunct.

[00:09:39] Speaker 03:
Well, they're all defunct, except for Peli.

[00:09:42] Speaker 03:
But then the board goes on to say, a little later on in the page, that one of the questions for a different court.

[00:09:50] Speaker 03:
Understood.

[00:09:51] Speaker 03:
I'm sure there are some startups who would disagree with what I said, but it is what it is.

[00:09:56] Speaker 03:
Bankruptcy.

[00:09:57] Speaker 03:
Indeed.

[00:09:58] Speaker 03:
The board then says one of ordinary skill in the art, for example, would have been motivated to incorporate Delphiore's redirect feature, i.e.

[00:10:07] Speaker 03:
directly retrieve the top search result into Echo Search because the user would desire a redirect feature for multiple search engine results.

[00:10:14] Speaker 03:
This is really the heart of the decision.

[00:10:17] Speaker 03:
All the board is saying here is that one of ordinary skill would have been motivated to combine features from this

[00:10:24] Speaker 03:
prior art because they would desire it.

[00:10:26] Speaker 03:
That's just a tautology.

[00:10:28] Speaker 03:
Motivation and desire are the same thing.

[00:10:31] Speaker 03:
In addition, the board has acknowledged that Coran still teaches getting search results.

[00:10:37] Speaker 03:
The board never makes the leap how you would get from something that teaches showing results to something that does not show results.

[00:10:44] Speaker 03:
That instead, in Belfiore, simply navigated the user to the web page that it thought the user wanted without

[00:10:51] Speaker 03:
without showing the user even a list of one, not even a list of one, no option, just the relevant teaching of Belfiore, simply the user types in some non-correct URL and they're just taken to whatever

[00:11:05] Speaker 03:
the browser has determined that it thinks the user is looking for.

[00:11:09] Speaker 03:
The board never makes the leap how you can get from something that teaches having even limited search results but still search results to something that doesn't do that.

[00:11:19] Speaker 03:
There's no motivation shown other than the board simply stating that there was a desire.

[00:11:24] Speaker 03:
What desire?

[00:11:26] Speaker 00:
The board... Does the board say that it comes from Belfiore?

[00:11:31] Speaker 00:
The desire.

[00:11:33] Speaker 03:
Well, Belphegor shows the feature.

[00:11:35] Speaker 03:
So in that sense, you could call that.

[00:11:37] Speaker 00:
And Belphegor says that feature is something that's desirable?

[00:11:40] Speaker 03:
It's an option in Belphegor.

[00:11:41] Speaker 03:
The other option is to show search results.

[00:11:44] Speaker 03:
There's two options.

[00:11:45] Speaker 03:
But the record is replete with evidence, both from the three experts that were working in the field at the time that Spring Ventures put forth their reports.

[00:11:55] Speaker 03:
as well as Dr. Shamos himself repeatedly admitting that when people used search engines, much like the echo search one, they expected and would get search results and would not think, there'd be no motivation to not provide those search results, but rather simply to navigate the user to whatever they determined was the top result.

[00:12:17] Speaker 03:
So in our view, this is both- You're in your rebuttal time.

[00:12:21] Speaker 03:
I'm aware of that, your honor.

[00:12:22] Speaker 03:
I'm trying to sum up, unless the board has any questions.

[00:12:25] Speaker 03:
But the point is that the board has simply gotten this wrong.

[00:12:31] Speaker 03:
and, in addition, has failed to provide the support and acknowledge and explain why it didn't consider any of the evidence.

[00:12:40] Speaker 03:
Not once in the discussion of claim one, which is the relevant point of view, the relevant discussion, did the board ever acknowledge or mention any of the experts that Spring Ventures put forth.

[00:12:51] Speaker 03:
They're not even named.

[00:12:53] Speaker 03:
It's not even mentioned at all.

[00:12:55] Speaker 03:
The board could have at least said they read the reports, and they're wrong.

[00:12:59] Speaker 03:
We disagree because something.

[00:13:01] Speaker 03:
They provided some rationale.

[00:13:03] Speaker 03:
So this, in our view, is very much like other cases that this court has decided, like evasive and intellectual adventures versus Google, where it's simply when there's inadequate consideration of the evidence in a board's decision, at the very least, the board needs to take a second look at this.

[00:13:20] Speaker 03:
And we ask the court to at least remand it to the board to do that.

[00:13:24] Speaker 03:
But more importantly, in our view, the board simply fails to bring this to the finish line.

[00:13:29] Speaker 03:
The motivation that the board is claiming is here is unsupported.

[00:13:33] Speaker 03:
And it's the wrong.

[00:13:35] Speaker 03:
It's just wrong motivation.

[00:13:38] Speaker 01:
But if we revamped it, then that would give them a chance to declare it ineligible for a patent in the first place, right?

[00:13:44] Speaker 01:
I'm sorry, Your Honor.

[00:13:45] Speaker 01:
We passed on that question.

[00:13:47] Speaker 03:
The 101 issue?

[00:13:48] Speaker 03:
Is that what Your Honor was asking?

[00:13:51] Speaker 03:
That issue would have come up as part of the motion to amend the claims, and they passed on that, yes.

[00:14:00] Speaker 03:
All right, I'll save my minute and ten seconds.

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

[00:14:16] Speaker 02:
I'd like to just clarify what the assumption that was embedded in paragraph 62 was.

[00:14:23] Speaker 02:
This is at appendix 186.

[00:14:27] Speaker 02:
Paragraph 62 says, to the extent that patent owner argues that Belfiore's auto search is not operatively coupled to the browser because

[00:14:39] Speaker 02:
it is built into the browser.

[00:14:42] Speaker 02:
That was the assumption.

[00:14:43] Speaker 02:
The assumption is that two things that are part of the same large entity cannot be operatively coupled.

[00:14:49] Speaker 02:
So on that assumption, he answered, then they would not be operatively coupled.

[00:14:55] Speaker 02:
Notably, on page 2761, which is just really the next page, next answer given by Dr. Seamus, he says,

[00:15:08] Speaker 02:
It refers to the example of one's hand and arm being operatively coupled to the brain, although they're all part of me.

[00:15:14] Speaker 02:
It makes perfect sense to say that one part of something can be operatively coupled to a part of another part of something.

[00:15:22] Speaker 02:
So he specifically disagrees with the assumption that was embedded in paragraph 62.

[00:15:29] Speaker 02:
And that's why we call that out in the brief.

[00:15:32] Speaker 00:
We should just to clarify you said appendix page twenty seven fifty one for sixty one.

[00:15:38] Speaker 02:
I'm sorry if I miss both.

[00:15:41] Speaker 02:
Going to the to the motivation to combine the principal references of bel fiore and echo search the board on pages thirty one and thirty two of its decision which are also pages thirty one thirty two of the appendix clearly provides

[00:15:59] Speaker 02:
its explanation and the basis for this conclusion.

[00:16:02] Speaker 02:
Now remember that a motivation combined the court has said in Inrei Garzai is a pure question of law.

[00:16:10] Speaker 02:
It's reviewed by this court for substantial evidence.

[00:16:13] Speaker 02:
And the board amply provides

[00:16:15] Speaker 02:
the basis.

[00:16:16] Speaker 02:
It starts with something on page 31 that appellant doesn't reference.

[00:16:22] Speaker 02:
And that is the fact that both Belfiore and Echo Search are directed to the common objective of text search and website retrieval on the internet.

[00:16:32] Speaker 02:
So it's not just in the general field of internet searching, but specifically searching using text rather than URLs, and then translating that text to find the appropriate URL.

[00:16:45] Speaker 02:
And moreover, the board pointed out the fact that they point in the same direction because Coran, like Belfiore, expressly teaches the desirability of focusing the number of search results.

[00:17:01] Speaker 02:
And they're referencing, this is at Appendix 1659,

[00:17:06] Speaker 02:
where Corn explicitly calls out the frustration of having to wade through what he calls the dross of extensive search results.

[00:17:18] Speaker 02:
And so he is

[00:17:20] Speaker 02:
Actually, whereas the patent owner had argued before the board that Corrin taught away from Belfiore, the board says, no, actually Corrin likewise teaches toward focusing the search results.

[00:17:33] Speaker 02:
It clearly does not teach redirection to the single topic.

[00:17:38] Speaker 02:
hit, but what the board said is that would be a logical extension.

[00:17:42] Speaker 02:
And of course, this is not something that we're presupposing in hindsight because Belfiore itself specifically discloses that redirection to the top hit.

[00:17:54] Speaker 02:
And so when it's true that the author of Coran says, I kind of like to see my homework

[00:18:01] Speaker 02:
Likewise, Dr. Shamos, in his deposition, said, well, I personally kind of like to see a number of results so that I can make my own judgment about this.

[00:18:12] Speaker 02:
That's not the question.

[00:18:13] Speaker 02:
The question is whether it would have been obvious to take what Belfiore has already disclosed as, in some circumstances, a desirable thing, which is just take me to the top hit.

[00:18:24] Speaker 00:
And the point is that in this article,

[00:18:27] Speaker 00:
That the author didn't want to limit the search results to 10 doesn't mean that somebody else wouldn't want to limit it to one or two That's right.

[00:18:34] Speaker 02:
That's right And and so there's no teaching away because we're trying to focus It's only focusing at 10 at echo search, but you know another person would have seen the desirability of redirecting automatically

[00:18:48] Speaker 02:
to one.

[00:18:49] Speaker 02:
And so the board is explicitly referencing the evidence.

[00:18:55] Speaker 02:
It's explicitly referencing the testimony of the experts.

[00:19:00] Speaker 02:
And I think that, given the standard of review, there's no question that there is ample substantial evidence to support that finding.

[00:19:12] Speaker 02:
If the court has no further questions about the other issues on the appeal, thank you very much.

[00:19:24] Speaker 04:
Mention the magic words, standard of review.

[00:19:32] Speaker 03:
Just for the record, to clarify, that discussion between myself and Dr. Chemers is exactly what I was referring to.

[00:19:41] Speaker 03:
The disagreement as to whether two things that are components of something can be coupled versus something that's a component being coupled to the entirety of the body.

[00:19:50] Speaker 03:
Again, I characterize it as sophistry.

[00:19:53] Speaker 03:
I don't want to waste time with this, but that is exactly the point that I was trying to make earlier, that Seamus and I were having trouble communicating on that issue.

[00:20:01] Speaker 03:
Your head could be coupled to your arm, but in our position, your arm can't be coupled to your body because it's part of your body.

[00:20:09] Speaker 03:
So part of something can't be coupled to the entirety because it's already in it.

[00:20:15] Speaker 03:
Discussion that council was referring to from the next page.

[00:20:18] Speaker 03:
This is what I was trying to describe earlier Nothing council said this disputes the fact that Corrin still was teaching getting search results and all of the experts including a police expert Acknowledged that that's how this worked at the time knowing when when dr. Shamos said this was his preference He's their expert from someone who supposedly consulted with a like us and an early search engine company

[00:20:43] Speaker 03:
Nobody thought of designing it this way.

[00:20:46] Speaker 03:
That's our point.

[00:20:46] Speaker 03:
I see my time is out, so unless the court has any questions about it.

[00:20:50] Speaker 03:
Thank you, counsel.

[00:20:51] Speaker 04:
The matter will stand submitted.