[00:00:00] Speaker 03:
22-1387, Sisvel International versus DeAro Meyer.

[00:00:07] Speaker 01:
Good morning.

[00:00:07] Speaker 01:
May it please the court?

[00:00:08] Speaker 01:
Robert Guyarza on behalf of Appellant Sisvel.

[00:00:11] Speaker 01:
There are several issues presented in this case, and I'd be happy to answer the panel's questions about any of them.

[00:00:16] Speaker 01:
But if I may, I would like to focus on the board's decision on the motion to amend, and specifically start with the patentability decision by the board.

[00:00:26] Speaker 01:
Because I think the board's error is there.

[00:00:28] Speaker 01:
also highlight the board's errors in terms of the enlargement of scope or the purported enlargement of the scope of the proposed claims.

[00:00:36] Speaker 03:
I'm happy to have you start there, but let me ask you a preliminary question, which is you would need to prevail on the two issues, right?

[00:00:43] Speaker 03:
One is whether it enlarge the scope, and the other is whether it was obvious, irrespective of whether it enlarge the scope.

[00:00:50] Speaker 03:
And you need to win on both of those questions in order to prevail.

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

[00:00:55] Speaker 01:
Thank you.

[00:00:57] Speaker 01:
I agree.

[00:00:58] Speaker 01:
The board in addressing the patentability of the proposed medical claims on APEX 75 said that the additional claim limitations beyond the RRC protocol, that Sysable did not explain the effect of those additional limitations on the motivation to combine or on the patentability.

[00:01:17] Speaker 01:
And if you look at APEX 75, what the board cited for that proposition was only the reply brief by Sysable.

[00:01:25] Speaker 01:
See it at 4 to 5 on Apex 75.

[00:01:29] Speaker 01:
The reason that the board couldn't find those arguments is because they weren't in the reply brief.

[00:01:33] Speaker 01:
They were in the opening brief on the motion to amend at Apex 822 to 828.

[00:01:40] Speaker 01:
And if you recall, the board's patentability decision on the proposed amended claims had three separate grounds with four pieces of prior art.

[00:01:48] Speaker 01:
First was the TS reference.

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That was the base for all three.

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And then you had Killian.

[00:01:53] Speaker 01:
KISSY and the CS0005 reference.

[00:01:57] Speaker 01:
On Apex 823, in Sisyphil's opening brief, addressing KALIN, which is the top paragraph there, Sisyphil explained that the mobile station monitors the signal strengths on the identified channels and selects the channel to retry.

[00:02:14] Speaker 01:
This is in contrast to the proposed Substitute 36, where the network selects it.

[00:02:20] Speaker 01:
And that was a key distinction in these other claim limitations that the board did not recognize.

[00:02:26] Speaker 01:
Namely, in that setting limitation, the third limitation, it was changed to set a value for a frequency parameter, and it also had to use the frequency parameter that was coming down from the network.

[00:02:38] Speaker 01:
Meaning that instead of the mobile station having choice, it had to use whatever the network was telling it to use for the frequency parameter as the frequency parameter itself.

[00:02:47] Speaker 04:
So are you contending that is a new argument in favor of the patentability of the substitute claims that you did not make or have to make when you were trying to preserve the original claims?

[00:02:58] Speaker 04:
Correct, Your Honor.

[00:02:59] Speaker 04:
And where do you make that argument to the board, that new argument in connection with the motion to amend?

[00:03:04] Speaker 01:
So that is on the Apex 823 that I was reading from.

[00:03:07] Speaker 01:
That is the opening brief.

[00:03:09] Speaker 01:
In the board's opinion on Apex 75,

[00:03:12] Speaker 01:
The board only addressed the reply brief.

[00:03:14] Speaker 01:
That's what they said, id at four to five.

[00:03:16] Speaker 01:
They did not address the opening brief.

[00:03:19] Speaker 01:
And so in that opening brief is where we specifically said the mobile station is selecting the channel to retry in Killian, for example.

[00:03:27] Speaker 01:
That's in contrast to the proposed substitute claim where the network selects.

[00:03:31] Speaker 01:
And again, that's the ordinary meaning of using.

[00:03:34] Speaker 04:
Let's assume we agreed with you on all that.

[00:03:38] Speaker 04:
And we'll put aside the broadening for a moment.

[00:03:41] Speaker 04:
Would we remand to the board?

[00:03:42] Speaker 04:
Or would we say, you get your substitute claims?

[00:03:45] Speaker 01:
You'd remand to the board, Your Honor.

[00:03:47] Speaker 01:
Because the board simply did not address it.

[00:03:49] Speaker 01:
And it was a simple, straightforward mistake.

[00:03:51] Speaker 01:
because the board didn't cite to the opening brief and didn't discuss these arguments.

[00:03:58] Speaker 01:
But if we walk through that opening brief, and I would like to take the court through it, all of the pieces of prior art are addressed in those pages.

[00:04:05] Speaker 01:
Killian, for example, says that.

[00:04:06] Speaker 01:
I just read that.

[00:04:07] Speaker 01:
Kissy, the second piece of prior art, is in the middle of Apex 823.

[00:04:12] Speaker 01:
Again, the channels are generated from the mobile station, and there is no frequency parameter indicated by a network as proposed substitute claim 36.

[00:04:20] Speaker 01:
Those statements, again, for Killian and Kissi are repeated on Apex 825 and 826.

[00:04:28] Speaker 01:
For Killian, for example, five lines from the bottom of Apex 825, because the mobile station ultimately selects the channel and does not use only the channel sent by the network, it's fundamentally different than the connection rejection message as further limited in proposed substitute claim 36.

[00:04:46] Speaker 01:
The same on Apex 826 for Kissi.

[00:04:50] Speaker 01:
As it says, as with Kalin, because the mobile station ultimately selects and does not use only the channel sent, the director retry message is fundamentally different than the connection rejection message as further limited in substitute claim 36.

[00:05:07] Speaker 01:
For CS0005, the same thing.

[00:05:10] Speaker 01:
Again, on the bottom of 823, in CS0005, it says that the channel assignment message is directed to a specific channel.

[00:05:19] Speaker 01:
The frequency parameter, though, is different in substitute claim 36.

[00:05:24] Speaker 01:
Therefore, in the next page, CS0005 does not contain a teaching or suggestion for the mobile station to use a frequency parameter indicated by the network.

[00:05:35] Speaker 01:
And so that is what was being said about these additional limitations in the opening brief on the motion to amend below that the board did not cite.

[00:05:43] Speaker 01:
And this aligns also with the patentability of the claims, because it traverses exactly what the board was saying

[00:05:49] Speaker 01:
in its findings on Killian and Kissi.

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For instance, on Apex 31, the board finds on the bottom of that page, in the middle, that the mobile station selects the channel.

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The same thing for Kissi, and this is on Apex 40.

[00:06:05] Speaker 01:
Kissi's mobile station uses this information to set a channel.

[00:06:10] Speaker 01:
Again, Kissi's mobile station sets a channel or other optional parameters.

[00:06:15] Speaker 01:
That is exactly what the board found

[00:06:17] Speaker 01:
for the patentability of the original claims, that in those pieces of prior art, the mobile station was selected.

[00:06:24] Speaker 01:
In the amended claims, it's a network that is selecting those limitations.

[00:06:29] Speaker 04:
And again, so if we accept all of that and that those are new arguments and the board overlooked them, that would lead to a remand subject to the other issues in the appeal.

[00:06:39] Speaker 01:
Yes, Your Honor.

[00:06:40] Speaker 04:
Are there any other

[00:06:42] Speaker 04:
new arguments you made for the patentability of the substitute claims that you didn't have to make for the original claims that you say the board overlooked, or have you now put them all sort of out there for us?

[00:06:53] Speaker 01:
I've put them out there except for the TS standard, which is the base reference.

[00:06:57] Speaker 01:
That's on Apex 828, Your Honor.

[00:06:59] Speaker 01:
That does not include a frequency parameter.

[00:07:01] Speaker 01:
The board actually agreed with that in its analysis of the merits of the original claims.

[00:07:05] Speaker 01:
It agreed with that on Apex 55, where it said the petitioner acknowledges

[00:07:09] Speaker 01:
that there's no frequency parameter coming down from the network in the TS standard.

[00:07:15] Speaker 04:
The board did consider that point, right?

[00:07:17] Speaker 01:
It considered that point because that point was also made for the original one for the TS standard, Your Honor.

[00:07:24] Speaker 01:
The error that the board made here also highlights how the amended claims were narrower, too, because what this control from the network coming down and using that frequency parameter saying

[00:07:36] Speaker 01:
is the definition of using that last additional claim limitation that was added in the amended claims.

[00:07:41] Speaker 03:
Can you just, I'm sorry, just before you go, can you show me where that argument was made in blue?

[00:07:46] Speaker 03:
I mean, I know you had a lot of issues going on in blue, but the argument that the board failed to consider these arguments made in blue.

[00:07:53] Speaker 01:
Absolutely.

[00:07:54] Speaker 01:
Is it on page 28 of the blue brief, Your Honor?

[00:07:58] Speaker 01:
We say the board did not analyze any of the other revisions to substitute claim 36 that demonstrate the patentability to substitute claim 36 in its dependent claims over the prior arc.

[00:08:07] Speaker 01:
On the next page, we also talk on page 29 of the proof brief.

[00:08:10] Speaker 01:
We talk about the motivation to combine.

[00:08:13] Speaker 01:
Those issues also address the motivation to combine.

[00:08:15] Speaker 01:
We cite Apex 822 on that page.

[00:08:18] Speaker 01:
And that's the start of the discussion that I was talking to the panel about also.

[00:08:24] Speaker 01:
And Red even cited that section of the opening brief

[00:08:28] Speaker 01:
in its own brief on page 30 of the red brief.

[00:08:30] Speaker 01:
They acknowledged that those arguments were made.

[00:08:32] Speaker 01:
The problem here, though, is that the board simply forgot about them, it seems, when they were talking about the reply brief.

[00:08:39] Speaker 01:
But in terms of the narrowness of the claims.

[00:08:43] Speaker 04:
Just to follow up on Judge Proves, the citation to A823, A828, the emphasis on the network, where in the blue brief do you point out to us that that's the specific points that the board overlooked?

[00:08:57] Speaker 01:
So the blue brief included the citation to that general argument.

[00:09:00] Speaker 01:
And it made the basic argument, which is the same one we're making now, which is that the board did not consider the additional limitations.

[00:09:07] Speaker 01:
And it's a very basic argument.

[00:09:09] Speaker 04:
I'm taking that as an admission that you didn't make the specific point that you started with in your argument.

[00:09:16] Speaker 01:
The additional clarity of which points and where the argument was made was not made directly in the blue brief.

[00:09:21] Speaker 01:
But the argument itself was preserved.

[00:09:23] Speaker 01:
It's not a very complex argument.

[00:09:25] Speaker 01:
The citation to the board's opinion was there, 73 to 75, and we said it did not address the other limitations.

[00:09:32] Speaker 01:
There's only a certain number of limited ways to actually say the board didn't say something.

[00:09:36] Speaker 01:
And so what I'm trying to do for your honors is lead you through exactly why that was also the case too.

[00:09:43] Speaker 01:
But as Judge Proce pointed out, we would have to succeed on both.

[00:09:47] Speaker 01:
And I believe that the patentability, how the board approached patentability and patentability arguments themselves, show how the claim was narrowed.

[00:09:55] Speaker 01:
Again, using the frequency parameter, which is the last limitation, the board agreed on Apex 72, I believe, that that was a limiting addition to the claims itself.

[00:10:06] Speaker 01:
But the board did not consider that using the frequency parameter

[00:10:10] Speaker 01:
in context of saying that the claims were expanded, once you took out the other original claim language of setting the value based at least in part on the information in the frequency parameter.

[00:10:21] Speaker 01:
Right.

[00:10:21] Speaker 04:
So if you could focus on that last part, because it's your burden to show that the claims were either narrowed or kept at the same scope in all respects.

[00:10:32] Speaker 04:
If they were broadened in even a tiny incidental respect, then you can't get your motion for amended claims granted, correct?

[00:10:40] Speaker 01:
Not exactly, Your Honor.

[00:10:42] Speaker 01:
I would disagree with that in part.

[00:10:44] Speaker 01:
If there is something that is covered by the new claims that was not covered by the original claims, then yes.

[00:10:50] Speaker 04:
OK.

[00:10:51] Speaker 04:
So the board talks about on A71 and thereabouts that in the substitute claims,

[00:10:59] Speaker 04:
the frequency parameter could be used, for instance, just its existence could be used, whereas in the original claims it was narrower because the system had to use information from the frequency parameter.

[00:11:13] Speaker 04:
And they're saying therefore your amended claims would capture at least some embodiment that wouldn't have been captured by the original claims.

[00:11:21] Speaker 04:
Did I characterize correctly what the board said?

[00:11:22] Speaker 04:
And if so, why are they wrong?

[00:11:24] Speaker 01:
So I would disagree, Your Honor, because I'm not sure that's exactly what the board said.

[00:11:29] Speaker 01:
If you look carefully at what the board said on Apex 71 to 72, what the board is simply doing is, on Apex 71, the example that Your Honor gave about the existence, that's from the petitioner.

[00:11:41] Speaker 01:
And the board is simply saying, in opposition, petitioner argues.

[00:11:44] Speaker 04:
OK, and you're right to point that out.

[00:11:47] Speaker 04:
If they go on at 72 and 73, I thought to adopt what the petitioner's analysis was.

[00:11:52] Speaker 01:
So again, Your Honor, there's no adopting that argument from the board.

[00:11:55] Speaker 01:
There's nothing in 72 and 73 saying we adopt it.

[00:11:58] Speaker 01:
What the board said simply was that eliminating this limitation of setting a value.

[00:12:04] Speaker 04:
Help me with that, then.

[00:12:05] Speaker 04:
At bottom of 72, is the board speaking now, I think, indisputably in claim 10, setting a value is limited to being based, at least in part, on information.

[00:12:18] Speaker 04:
in proposed substitute claim 36, setting a value is not limited to being based, at least in part, on information.

[00:12:26] Speaker 04:
That's what they said, and that seemed to be adopting the petitioner's argument.

[00:12:30] Speaker 01:
So that's not exactly adopting the petitioner's argument.

[00:12:32] Speaker 01:
What the petitioner said is they gave an example of how other information in the prime... So let's assume it's not adopting the petitioner's argument.

[00:12:39] Speaker 04:
Isn't it saying that's a way the claims are being broadened?

[00:12:42] Speaker 01:
That is what the board is saying, and I would disagree with that specifically for the reason that using

[00:12:48] Speaker 01:
at using the frequency parameter from the network itself is setting that value.

[00:12:53] Speaker 01:
And that's what we told the board.

[00:12:55] Speaker 01:
The simple example is when the power goes out of my home and my oven clock flashes 12, I know I have to reset that time.

[00:13:03] Speaker 01:
So I attempt a new time setup attempt.

[00:13:05] Speaker 01:
If my claimed algorithm was that time setup attempt using the time on my cell phone,

[00:13:11] Speaker 01:
One would know from that that I'm going to set the time on the clock to the time of my cell phone.

[00:13:15] Speaker 01:
And that's exactly what we told the board here in terms of the using, which the board recognized at the top of FX72.

[00:13:23] Speaker 01:
Using that frequency parameter means you use all the information in it.

[00:13:26] Speaker 01:
The frequency parameter in the new connection setup attempt is set to that.

[00:13:31] Speaker 01:
And in that context, it's actually narrower than saying based at least in part on the information.

[00:13:36] Speaker 01:
It's not just based on the information.

[00:13:38] Speaker 01:
It is the information.

[00:13:39] Speaker 01:
It is the time itself.

[00:13:41] Speaker 01:
So that is what it's specific.

[00:13:42] Speaker 01:
And indeed, that's how, as the pages I read to you before in APEX 822 to 828, we were traversing the prior art and saying that the prior art didn't teach that.

[00:13:54] Speaker 01:
It didn't teach using the network.

[00:13:56] Speaker 01:
And those statements themselves should also have import to the board and import to the meaning of these amended claims.

[00:14:04] Speaker 03:
It seems like what you've deleted, the based on, was in connection with setting a value.

[00:14:11] Speaker 03:
Is that matter, the new language you added, the using language, is that the connection with the first part, setting a value of at least, or is that something different?

[00:14:23] Speaker 01:
So it is the same, Your Honor.

[00:14:25] Speaker 01:
So setting a value in the amended claims, you're still setting a value.

[00:14:28] Speaker 01:
It's narrower, though, and what you're setting a value for is the frequency parameter now.

[00:14:33] Speaker 01:
And what the claims also then explain is that the setup attempt that you're attempting where you're setting this value is you're using the frequency parameter

[00:14:41] Speaker 01:
from the network.

[00:14:43] Speaker 01:
And as we explained repeatedly to the board, as the board acknowledged on the top of APEC 72, also at 822 to 828, that setting the value of the frequency parameter in the amended claims, you were going to use the frequency parameter to set that value.

[00:14:57] Speaker 01:
Just like the clock example I gave you, Your Honors.

[00:14:59] Speaker 01:
It's going to take that time, that frequency parameter, and you're going to use it to set the first one.

[00:15:04] Speaker 01:
That is narrower than the original claims.

[00:15:07] Speaker 01:
That's narrower than original claims because it's not setting it at least in part on some information.

[00:15:11] Speaker 01:
It's the same thing.

[00:15:13] Speaker 01:
It's the exact time.

[00:15:13] Speaker 03:
Well, it says, I mean, the differences, and they're all words.

[00:15:16] Speaker 03:
But I mean, the board says in the proposed claim, the value that is set need not be based in whole or in part on the information.

[00:15:23] Speaker 03:
on information in the connection.

[00:15:26] Speaker 03:
They construe using as I presume they're assuming using is a broader concept.

[00:15:33] Speaker 01:
And that's exactly the problem, Your Honor, is we don't know what they meant about using, how they construe using.

[00:15:38] Speaker 01:
They didn't construe using.

[00:15:39] Speaker 01:
There's an applied construction potentially here where they rejected the idea of what Sisyphil said below repeatedly, that using the parameter means you use it.

[00:15:50] Speaker 01:
But again, at the very least,

[00:15:51] Speaker 01:
when in this initial prosecution of these amended claims, where we're saying that's the distinction over prior art, that should be given weight and said that should be the proper.

[00:16:01] Speaker 03:
So what are you suggesting that there needs to be a remand for the board to address further some of the arguments that are being made?

[00:16:08] Speaker 01:
Absolutely, Your Honor.

[00:16:09] Speaker 03:
I mean, that was part one, but now on the scope thing, that a remand is what's in order?

[00:16:13] Speaker 01:
Yes, Your Honor.

[00:16:14] Speaker 01:
So they would have to at least define what using is.

[00:16:16] Speaker 01:
If you look at 822 to 828,

[00:16:20] Speaker 01:
in application, which is also supported by expert testimony there in exhibit 2008.

[00:16:24] Speaker 01:
And that's, again, in contrast to the example about this using the existence in APEX 71 that was the example given by Petitioner.

[00:16:33] Speaker 01:
If you look through to that citation, the opposition to the motion to amend, that's at 879 to 880 of the record.

[00:16:40] Speaker 01:
There is no reference to an expert opinion to support this idea that you can use the frequency parameter and just the existence of it.

[00:16:50] Speaker 01:
Because quite frankly, it just doesn't make sense.

[00:16:53] Speaker 03:
What's the standard of review here?

[00:16:55] Speaker 03:
Because I think you would suggest abuse of discretion or substantial evidence.

[00:17:00] Speaker 03:
I mean, there are some cases that talk about this as a claim construction dispute.

[00:17:04] Speaker 03:
It starts to feel like that a little on the one hand.

[00:17:07] Speaker 03:
But you didn't advocate sort of a de novo claim construction review, did you?

[00:17:12] Speaker 01:
No.

[00:17:12] Speaker 01:
It would fall under arbitrary and capricious.

[00:17:14] Speaker 01:
And specifically for the motion to amend under Veritas, it would be unreasonableness.

[00:17:18] Speaker 01:
and that would also be in terms of the unreasonableness of the procedure that was applied.

[00:17:23] Speaker 01:
And that also is something that this Court has repeatedly addressed.

[00:17:26] Speaker 00:
At the end of the day, aren't we just involved in claim construction?

[00:17:30] Speaker 01:
No, Your Honor, it's also a procedure.

[00:17:31] Speaker 01:
So we've identified two specific things that the board did not address.

[00:17:35] Speaker 01:
It's these additional claim limitations.

[00:17:37] Speaker 01:
And as this Court has repeatedly held, that all the arguments for and against in the IPR have to be considered by the board.

[00:17:43] Speaker 01:
And they clearly did not consider these other things.

[00:17:45] Speaker 03:
So that goes back to the first argument on the obviousness question, not on the scope.

[00:17:49] Speaker 01:
On the scope also, Your Honor, because they didn't even consider the effect of using.

[00:17:55] Speaker 01:
At one hand, you can call that a claim construction argument.

[00:17:58] Speaker 01:
But on the other, you can say,

[00:18:00] Speaker 01:
very clearly that that is the effect of that additional limitation using on removing the rest of the language.

[00:18:09] Speaker 01:
And what the board said is they simply said on the top of APEX 73, if you remove this limitation, it's broader.

[00:18:16] Speaker 01:
In a vacuum, that is of course true.

[00:18:18] Speaker 01:
If you remove a limitation, it's going to be broader.

[00:18:21] Speaker 01:
But you have to consider the claim as a whole.

[00:18:23] Speaker 01:
and the additional language that was used.

[00:18:25] Speaker 01:
And that's exactly what we said.

[00:18:27] Speaker 01:
And as this court has repeatedly held, again, that as a matter of APA procedure, you have to consider that.

[00:18:32] Speaker 01:
The board has to consider that, the arguments for and against, and also consider the arguments that were made and it's error or otherwise.

[00:18:41] Speaker 01:
And it's unreasonable, as in the Veritas case.

[00:18:43] Speaker 03:
We're way beyond our time, so we'll restart when we're done.

[00:18:47] Speaker 02:
Thank you, Your Honor.

[00:18:49] Speaker 02:
May it please the court, Guy and I, for the petitioners.

[00:18:54] Speaker 02:
There's a few issues to respond to, but I note that my colleague focused on the motion to amend, so I will forgo argument on the other briefed issues.

[00:19:08] Speaker 02:
With regard to the enlarging, the broadening of the scope,

[00:19:13] Speaker 02:
I think we can think of some examples where used is broader than based on.

[00:19:20] Speaker 02:
The basic change from the original claims was setting the value based on as opposed to the amended claim used using the parameter.

[00:19:34] Speaker 02:
And we can find trivial examples I grant, but there are certainly examples where

[00:19:40] Speaker 02:
you can use something.

[00:19:41] Speaker 03:
Well, let's look at what the board said, though.

[00:19:44] Speaker 03:
I know the board talked about based, but did the board go into a discussion of based versus using?

[00:19:51] Speaker 02:
Yes, it did.

[00:19:53] Speaker 03:
Okay, where is that?

[00:19:55] Speaker 02:
The broadening issues in the... It should be 72.

[00:19:59] Speaker 02:
In the 70s, yeah.

[00:20:02] Speaker 02:
So the discussion is at pages 69.

[00:20:06] Speaker 02:
toward the end and the, it's at 72, 73.

[00:20:15] Speaker 02:
One example we might think of is if I took the parameter, if I calculated the frequency, I took this frequency parameter and I calculated frequency by multiplying and then dividing by the same frequency parameter.

[00:20:29] Speaker 02:
I've used it.

[00:20:30] Speaker 02:
But the end result will not be based on that.

[00:20:33] Speaker 03:
But I'm focusing on what the board said about this.

[00:20:35] Speaker 03:
And I'm seeing they were clearly talking about the deletion of the base, at least in part on, right?

[00:20:43] Speaker 02:
That's right, Your Honor.

[00:20:44] Speaker 03:
Where do they juxtapose the using is broader?

[00:20:49] Speaker 03:
Where do they talk about the scope of the using limitation?

[00:20:53] Speaker 02:
Well, I think in part they say that it's the patent owner's burden to show that it does not

[00:20:59] Speaker 02:
enlarge the scope and that they fail to do that.

[00:21:02] Speaker 03:
Where are you reading from?

[00:21:03] Speaker 03:
There are only two pages, so can you point me to sort of which paragraph you're talking about?

[00:21:07] Speaker 02:
At 71, in the revised motion to the man, Penn owner fails to address whether deleting the phrase enlarges the scope.

[00:21:13] Speaker 03:
We're still talking about the phrase, deleting the phrase.

[00:21:17] Speaker 03:
Are you asking whether, where they specifically thought about... You came up here and reasonably started talking about the scope of using vis-a-vis the scope of based on.

[00:21:26] Speaker 03:
And I couldn't recall seeing where the board contrasted or compared the scope of those two sort of phrases.

[00:21:35] Speaker 03:
That's what I'm looking for.

[00:21:37] Speaker 03:
Because that was your argument, right?

[00:21:38] Speaker 03:
I mean, you were going to talk to us about using versus... Yes, Your Honor.

[00:21:41] Speaker 02:
The closest I... Well, I see at 72, they talk about, we agree that adding an element, right?

[00:21:48] Speaker 02:
Adding, using.

[00:21:49] Speaker 02:
This is at the top middle of 72.

[00:21:55] Speaker 02:
We agree with Pat and Honor that adding the third and last limitation using the frequency parameter narrows.

[00:22:00] Speaker 02:
However, we do not agree that deleting

[00:22:03] Speaker 02:
the phrase based at least in part simply as for the clarity and does not broaden so we we have to remember in context that the board gave preliminary guidance on these claims uh... and in the preliminary guidance the board was already indicating to patent owner that this language would be brought and so they were given an opportunity to clarify this is that appendix page seven seventy where there's preliminary guidance saying that

[00:22:32] Speaker 02:
indicating that this is a broadening, and the board went into considerable detail at that point at pages 770 to 772.

[00:22:42] Speaker 02:
So while some of that did not make it into the final written decision, the board was certainly indicating to Patanoner that this was a broadening of the scope, and yet Patanoner

[00:22:54] Speaker 02:
insisted on this play on the front of the scope in the board's view was the deletion of the based on it wasn't the inclusion of the use no not merely included if it had retained both of those if it had said using such-and-such and setting the primer based on that would have been a narrow okay if this kind of a simply intended the same thing so so reading books trying to fairly understand the board the board was really

[00:23:22] Speaker 03:
Their focus was deleting the based on.

[00:23:25] Speaker 02:
I think that's right, Your Honor.

[00:23:26] Speaker 03:
And where do they explain why that matters or why that isn't sort of made up for when you talk about using?

[00:23:33] Speaker 03:
Why based on using isn't the same as based on?

[00:23:38] Speaker 03:
That's what I'm kind of looking for, which I thought was where you started.

[00:23:41] Speaker 03:
You were going to make that argument, and I interrupted you.

[00:23:44] Speaker 03:
No, I'm sorry.

[00:23:45] Speaker 03:
I did.

[00:23:46] Speaker 02:
Well, at page 72 in the bottom,

[00:23:49] Speaker 02:
They write, in proposed substitute claim 36, setting a value is not limited to being based at least in part on information in a frequency parameter.

[00:24:01] Speaker 02:
And carrying on to page 73, the value that is set need not be based on information, and thus claim 36 is broader.

[00:24:11] Speaker 02:
I am not sure there's much more detail about

[00:24:15] Speaker 02:
But the board certainly did consider the arguments.

[00:24:19] Speaker 02:
And the question of whether there was substantial basis, I think, is satisfied.

[00:24:26] Speaker 03:
So what is your view of what it means to be using the frequency parameter contained within the connection?

[00:24:33] Speaker 02:
I think it could be used in any fashion.

[00:24:37] Speaker 02:
rather than that the result reflects that issue.

[00:24:43] Speaker 02:
So the way I think of it is that when, in the original claim language, there was a language, the frequency is set based on the frequency parameter.

[00:24:56] Speaker 02:
And so to me, there's a direct relationship between the input and the output, between the frequency parameter and the resulting frequency.

[00:25:07] Speaker 02:
Whereas if you say using, that focuses a bit more on the process.

[00:25:13] Speaker 02:
It's anywhere in the mix, but it need not be reflected in the output.

[00:25:18] Speaker 02:
And so the example I was trying to give was if I take the frequency parameter and I use it in any fashion, for example, I multiply and then divide by the same number, then I've used it, but the result is not based on that parameter.

[00:25:34] Speaker 04:
Can you help me on the top of 73?

[00:25:37] Speaker 04:
The board says the value that is set need not be based in whole or in part on information in the connection rejection message, and thus claim 36 is broader in this respect than claim 10.

[00:25:50] Speaker 04:
Is that a whole separate argument or basis for why the board is finding that the substitute claim 36 is broader than the original claim 10?

[00:26:00] Speaker 02:
i think it's related to our i i i i cannot say that i i can distinguish between those two in my mind i've thought of them as this is one in the same that some further explanation of what you've been discussed with judge pros or how does it fit together in your mind i think it does because they they say the value need not the value that is set need not be based in whole or in part and the example that i gave is how i you know example that i would come up with two

[00:26:25] Speaker 02:
to illustrate how something can be used and yet the results not be based on.

[00:26:32] Speaker 04:
And just so I understand, when you say multiply and then divide, you're basically saying you haven't done anything.

[00:26:37] Speaker 04:
You have a number, if you multiply and then divide by that same number, you're going to end up with what you started with.

[00:26:42] Speaker 04:
But I've used it.

[00:26:43] Speaker 04:
You've used it.

[00:26:43] Speaker 04:
Yes.

[00:26:44] Speaker 04:
But it hasn't done anything, so it'd be hard to say the result is based on.

[00:26:47] Speaker 04:
Correct.

[00:26:48] Speaker 04:
And so you see this as just a further explanation of that whole single reason?

[00:26:55] Speaker 02:
Yes, Your Honor.

[00:26:55] Speaker 02:
If I were more clever, I would think of a perfectly simple analogy.

[00:27:01] Speaker 04:
And how do you think that single reason, as you see it, that the board gives relates to what the board is characterizing as your argument or the petitioner's argument at page 71?

[00:27:11] Speaker 04:
Is the board adopting the petitioner's argument, or is it coming up with some other reasoning, referring to the big block quote at the bottom?

[00:27:18] Speaker 02:
Yes, I think that because it does not specify how it is used.

[00:27:23] Speaker 02:
To me, it's the key sentence there that

[00:27:27] Speaker 02:
Again, when you say based on, that focuses on the result.

[00:27:31] Speaker 02:
And if you say used in some vague fashion, but we don't know that the result is necessarily based on that.

[00:27:38] Speaker 02:
So to me, those issues were related.

[00:27:41] Speaker 02:
I cannot say that the board thought of it in the same way, but to me, yes, those are related because they're focused on the same part of the claim element.

[00:27:49] Speaker 03:
Before your time runs out, I want you to address what Mr. Guyarza talked about in the first instance, which is the second thing that he also has to prevail on, which is the obviousness.

[00:28:00] Speaker 03:
And his main argument seems to be a process argument, which is that the board ignored all the stuff that he said in their original submission.

[00:28:12] Speaker 02:
Well, this was not really fleshed out in the briefs.

[00:28:14] Speaker 02:
And I would say that other than that,

[00:28:20] Speaker 02:
broad argument, I would say any further technical detail, the argument may be waived because the significance of this frequency parameter limitation is not discussed in the blue brief at all.

[00:28:35] Speaker 02:
But I will point out, for example, at the appendix page 30, that one of the references, for example, Callan, does expressly disclose the

[00:28:48] Speaker 02:
base station indicating to the mobile station channels for it to consider.

[00:28:55] Speaker 02:
So the frequency parameter had been considered in connection with the original claims, claims 10, 11, et cetera.

[00:29:08] Speaker 02:
And all of the references had this frequency parameter that was used in setting the value

[00:29:14] Speaker 02:
in the reattempt.

[00:29:17] Speaker 02:
So this was not something newly introduced.

[00:29:19] Speaker 02:
This was something that had been in the prior art and you can see graphically at page 30 where

[00:29:24] Speaker 02:
there are these two words that are transmitted to the mobile station, including six channels for the mobile station to monitor, and it is one of those that it will use when it reconnects.

[00:29:37] Speaker 02:
I won't go into great detail in the other references, such as KISSY and CS0005, but suffice it to say that the board found that they anticipated, as well as render obvious, together with the technical specification,

[00:29:53] Speaker 02:
using the basing the frequency on a frequency parameter in the communication from the base station.

[00:30:01] Speaker 03:
OK.

[00:30:02] Speaker 03:
Leaving aside the question of waiver, can you just come around to Mr. Gaillard's appointed to, well, the argument starts at 819 and the appendix and goes on for quite a while.

[00:30:14] Speaker 03:
And I understood his contention to be that the board really ignored that, that they didn't

[00:30:22] Speaker 03:
So are you saying, assuming there's no waiver problem here, are you saying that the board did address this or that the board didn't have to address this because it was the same as the original petition that they had already addressed for a while?

[00:30:37] Speaker 02:
Well, for one thing, the board found that the claims had been enlarged.

[00:30:41] Speaker 02:
So we're past that.

[00:30:47] Speaker 02:
Your honest question was, did the board consider the

[00:30:51] Speaker 03:
The arguments made in that portion of the half-numbers.

[00:30:59] Speaker 03:
I mean, I understand.

[00:31:01] Speaker 03:
This is its argument on the substitute claims, right?

[00:31:05] Speaker 02:
Yes, that's right.

[00:31:06] Speaker 03:
So is it your view that the board adequately considered and addressed that?

[00:31:11] Speaker 03:
Because I don't think it's cited to this right.

[00:31:14] Speaker 03:
cited to the reply or the response.

[00:31:16] Speaker 03:
But the board didn't seem to cite to the argument made in this document.

[00:31:21] Speaker 02:
I think the court focused indeed on the RRC protocol element of the substitute claims, which it found was obvious in light of the technical specification.

[00:31:33] Speaker 02:
As to whether there was a specific

[00:31:36] Speaker 02:
discussion about the frequency parameter, I think the board understood that those were essentially co-extensive with the original claims.

[00:31:47] Speaker 03:
Did it say that?

[00:31:49] Speaker 03:
Can you find a place where the suggestion was made?

[00:31:52] Speaker 02:
I think at page 74, by focusing on the RRC protocol, the board is indicating that it understood this to be the principal distinction, and then it

[00:32:05] Speaker 02:
At 75, it talks about the arguments previously advanced that it had considered, and I understand that includes the frequency parameter.

[00:32:15] Speaker 04:
So what would you have us do if we were to conclude that the substitute claims are not improperly enlarging and that the argument we heard today from Mr. Garza is not waived in the blue brief?

[00:32:32] Speaker 04:
Would we remand, or do you still win?

[00:32:34] Speaker 02:
I think based on the extensive discussion of the prior art, including the frequency parameter in the prior art, such as Callan Kissi CS0005, I think the court can affirm based on perhaps harmless error or

[00:32:55] Speaker 02:
I don't think it matters because the references that were discussed... Wait a minute.

[00:33:02] Speaker 03:
You're not saying that we could affirm the board on a harmless error standard?

[00:33:06] Speaker 03:
Is that what you're suggesting?

[00:33:08] Speaker 02:
I would think so because there's no... If the error were mere failure to address that element, it is harmless because had

[00:33:20] Speaker 02:
the board addressed it, it would have found that element to be found in the prior art based on the discussion of the original claims.

[00:33:33] Speaker 02:
We have the board's decision on the original claims which talk about the frequency parameter and the

[00:33:42] Speaker 02:
references that were discussed in connection with the original claims show exactly how the frequency parameter is used by the mobile station in setting the frequency.

[00:33:54] Speaker 03:
I'm assuming, I don't recall exactly now, but that red didn't really respond to this argument, but I think your answer to me would be because it really wasn't made directly in blue.

[00:34:04] Speaker 02:
Yes, that's right, your honor.

[00:34:06] Speaker 03:
Thank you.

[00:34:07] Speaker 02:
Thank you.

[00:34:08] Speaker 03:
we'll restore two minutes of it.

[00:34:11] Speaker 01:
Just a few quick rebuttal points, Your Honors, if I may.

[00:34:15] Speaker 01:
On the forfeiture point of the argument not being raised in blue, again, I just want to highlight that we're not asking for a reversal here.

[00:34:22] Speaker 01:
We're not asking for a decision on the merits.

[00:34:24] Speaker 01:
All we're saying in blue, and what I'm saying today, is that there was a procedural error by the board.

[00:34:29] Speaker 01:
And that's what blue said.

[00:34:31] Speaker 03:
OK.

[00:34:32] Speaker 03:
I'm sorry.

[00:34:32] Speaker 03:
I'll give you a couple more minutes, because I really want you to show me where Blue really raised this procedural error of failing to address it, because I'm still having trouble.

[00:34:43] Speaker 01:
So it's a very simple argument.

[00:34:45] Speaker 01:
The argument that Blue raised on page 28 of the Blue brief is that these additional revisions to substitute claim 36 that demonstrated the patentability of substitute claim 36 and his dependent claims of the prior art were not addressed.

[00:35:00] Speaker 01:
And then it goes on to also say that the patent owner.

[00:35:02] Speaker 03:
Why does it say that, or not address the board?

[00:35:06] Speaker 03:
OK, so it says the only claim limitation that the board analyzed was this.

[00:35:12] Speaker 03:
The board did not analyze any other revisions?

[00:35:15] Speaker 01:
Yes, Your Honor.

[00:35:16] Speaker 01:
And so I think that aligns with what my friend said, is that, yes, the board did talk about RRC protocol.

[00:35:22] Speaker 01:
And that was the primary argument.

[00:35:24] Speaker 01:
But there were these other arguments on these six pages that addressed exactly what the board was looking for in its opinion.

[00:35:30] Speaker 01:
The board simply looked at a reply instead of the opening.

[00:35:33] Speaker 01:
And this is a very simple, basic procedural argument.

[00:35:35] Speaker 01:
The same thing on page 29, where we're talking about the motivation to combine, is that the board didn't address these additional limitations in the motivation to combine.

[00:35:43] Speaker 04:
That's a very simple... Help me.

[00:35:44] Speaker 04:
Put yourself in my shoes, or some other Federal Circuit judge's shoes, preparing for argument.

[00:35:51] Speaker 04:
How am I to know, in assessing your argument,

[00:35:55] Speaker 04:
that your argument is the board overlooked a bunch of things.

[00:35:59] Speaker 04:
I have to assess, did the board overlook a bunch of things?

[00:36:02] Speaker 04:
Don't I need to know what those bunch of things are in order to review and be prepared to figure out, if you're right, that the board overlooked it?

[00:36:09] Speaker 04:
It can't just be that you can say the board overlooked a bunch of things, and then I don't know till

[00:36:15] Speaker 04:
I come into court what those bunch of things are.

[00:36:18] Speaker 04:
That can't be fair, can it?

[00:36:20] Speaker 01:
No.

[00:36:20] Speaker 01:
Saying a bunch of things would not be fair, Your Honor.

[00:36:22] Speaker 04:
But here we didn't say... Where did you say the bunch of things that you specifically started with for five minutes today?

[00:36:27] Speaker 01:
We specifically said the other revisions to substitute Claim 36.

[00:36:32] Speaker 01:
That's what the board overlooked.

[00:36:33] Speaker 04:
But how was I to know, let's just say, in preparing for today?

[00:36:39] Speaker 04:
what those other substitute revisions were, and then go back and look carefully at what the board did and see that they didn't talk about those.

[00:36:49] Speaker 01:
Oh, I don't think there's any question that we discussed the other revisions, Your Honor.

[00:36:53] Speaker 01:
That's on pages 25, 26, and 27 of the blue brief.

[00:36:57] Speaker 01:
We specifically said what these other revisions were.

[00:37:00] Speaker 01:
And then on page 28, we said the board didn't address those other revisions.

[00:37:03] Speaker 03:
25 and 26 were all about this enlargement.

[00:37:07] Speaker 03:
It wasn't about the obviousness, right?

[00:37:11] Speaker 01:
Yes.

[00:37:11] Speaker 01:
It's talking about the scope of the claim, what revisions were made there.

[00:37:16] Speaker 01:
The original claim included these parameters, but it was changed to add these other parameters.

[00:37:22] Speaker 01:
That's what was being discussed there.

[00:37:24] Speaker 01:
So I think on 28, where we're saying the other revisions, it should be clear that the other revisions

[00:37:30] Speaker 01:
particularly in context of the sentence before, is that the board did analyze RRC protocol, but it didn't analyze the other revisions.

[00:37:38] Speaker 03:
And other, it says, did not address the other prior art references.

[00:37:43] Speaker 03:
Are we supposed to know what you're talking about there?

[00:37:47] Speaker 03:
It's at the bottom of 28.

[00:37:48] Speaker 01:
So that's talking about the TS-331 and substitute claim.

[00:37:52] Speaker 01:
That's slightly different.

[00:37:54] Speaker 01:
What we're talking about is a sentence right before.

[00:37:57] Speaker 01:
where we essentially said they addressed the RRC protocol, but they did not address these other claim limitations.

[00:38:02] Speaker 01:
And I would submit that if you look at the board's opinion on 75, it's very clear what the board did wrong.

[00:38:08] Speaker 01:
The board simply cited the reply.

[00:38:11] Speaker 01:
And I think also in Appellee's brief on page 30, they cited to that whole section that I just discussed with your honors.

[00:38:20] Speaker 01:
that was in the appellee's brief.

[00:38:22] Speaker 01:
So it certainly was on notice.

[00:38:25] Speaker 01:
And even if there were some type of forfeiture, which I don't agree there was, because of the narrow issue here, the court should consider it.

[00:38:33] Speaker 01:
Because as the appellee's brief shows, they were aware of these pages.

[00:38:39] Speaker 01:
They listed them in their brief itself.

[00:38:41] Speaker 01:
But just to go quickly.

[00:38:43] Speaker 04:
If I might.

[00:38:45] Speaker 04:
The argument that you say the board overlooked is captured at A 819 and the page is following it, right?

[00:38:54] Speaker 01:
A 22 to 28.

[00:38:55] Speaker 01:
822.

[00:38:55] Speaker 04:
822.

[00:38:59] Speaker 04:
OK, there.

[00:39:02] Speaker 01:
Apex 822.

[00:39:03] Speaker 04:
So if I go back and reread your blue brief,

[00:39:07] Speaker 04:
what's going to clue me into the fact I need to go turn to A 822 to 828 to understand what you're talking about.

[00:39:15] Speaker 01:
So 822 cited on the next page on Bluebrief page 29 where we're talking about the motivation to combine.

[00:39:22] Speaker 01:
That section of the record below 822 to 828 was talking about motivation to combine the actual references that the board was relying on.

[00:39:33] Speaker 01:
And so we did cite to that start of that opening

[00:39:36] Speaker 01:
discussion at 822.

[00:39:38] Speaker 04:
And do you ever argue in the blue brief, hey, what the board did was only cite to our reply brief on the motion to amend.

[00:39:45] Speaker 04:
They overlooked our opening brief on the motion to amend.

[00:39:48] Speaker 01:
That argument specifically was not made.

[00:39:50] Speaker 01:
I believe that would be apparent from reading the board's opinion in it.

[00:39:54] Speaker 03:
And that argument is just to reiterate.

[00:39:56] Speaker 03:
You said this argument on 822 is exclusively about motivation.

[00:40:01] Speaker 01:
That's where it starts, 822, and it goes on to 828.

[00:40:04] Speaker 01:
And I believe that's why Red, in their brief, even cited the full range, 822 to 828, when they're talking about motivation to come on.

[00:40:14] Speaker 01:
And so I believe that is in the appeal.

[00:40:19] Speaker 01:
In terms of the specific response, if I may, my friend mentioned Kalin in saying that the board found that it did this, but ultimately,

[00:40:28] Speaker 01:
Kalin itself selects the channel, not the other way around.

[00:40:32] Speaker 01:
And in terms of the meaning of the thought, because we're way above time.

[00:40:36] Speaker 01:
Sure.

[00:40:36] Speaker 01:
In terms of the meaning of use, I would point the court to column three, lines 27 to 35 of the patent, where the term using actually appears.

[00:40:47] Speaker 03:
Hold on.

[00:40:48] Speaker 03:
Let me turn to it.

[00:40:49] Speaker 03:
Column three, you said?

[00:40:51] Speaker 01:
Column three, lines 27 to 35.

[00:40:53] Speaker 01:
And so it's talking about using

[00:40:57] Speaker 01:
Here, the example is using a carrier frequency.

[00:41:00] Speaker 01:
What using in the ART simply means is that it's in use.

[00:41:04] Speaker 01:
The argument that the board referenced from petitioners on the bottom of APEC 71 about the existence that wasn't supported by expert testimony.

[00:41:12] Speaker 01:
The analysis on 822 to 828 was.

[00:41:15] Speaker 01:
And the meaning of using in context of this patent is very clear as being in use.

[00:41:18] Speaker 01:
And that's why it's narrower in that context.

[00:41:21] Speaker 01:
Unless there's any other questions?

[00:41:23] Speaker 03:
Thank you.

[00:41:24] Speaker 03:
We thank both sides.

[00:41:25] Speaker 03:
The case is submitted.

[00:41:26] Speaker 03:
That concludes our presentation.

[00:41:27] Speaker 03:
Thank you.