[00:00:00] Speaker 04:
And our next case is number 24-1419, Apple Inc.

[00:00:04] Speaker 04:
versus Smart Mobile Technologies, LLC.

[00:00:09] Speaker 04:
Okay, Ms.

[00:00:10] Speaker 04:
Fiorella.

[00:00:11] Speaker 00:
Good morning, Your Honors.

[00:00:12] Speaker 00:
May it please the court, Natika Fiorella on behalf of the appellant, Apple.

[00:00:16] Speaker 00:
Now, the board here erred in three separate ways, and any one of them independently is grounds for vacating and remanding this case.

[00:00:24] Speaker 00:
First, the board erred by narrowly construing the claims

[00:00:28] Speaker 00:
to require that some antennas within the plurality of antennas must both receive and transmit data, even though there's no such limitations in the claims.

[00:00:38] Speaker 00:
Second, the board violated the APA when it failed to adequately explain why it rejected Apple's alternative argument that even under the board's narrow construction, the prior art still teaches the challenge limitation.

[00:00:51] Speaker 00:
And third, Your Honors, the board erred because substantial evidence does not support its finding

[00:00:56] Speaker 00:
that the prior art does not actually teach the challenge limitation.

[00:01:00] Speaker 00:
I'm going to start with the claim construction argument, but happy to pivot to either issue two or three, as your honors would like.

[00:01:07] Speaker 00:
Claim one requires a network device that has a plurality of antennas.

[00:01:12] Speaker 00:
And it says that network device is configured to use the plurality of antennas to transmit data simultaneously.

[00:01:20] Speaker 00:
We'll call that the transmitting limitation.

[00:01:22] Speaker 01:
Transmit a plurality of data signals, right?

[00:01:25] Speaker 00:
Yeah.

[00:01:25] Speaker 01:
Using the plurality of antennas.

[00:01:28] Speaker 00:
Exactly.

[00:01:29] Speaker 01:
And receive a plurality of signals using the plurality of antennas.

[00:01:35] Speaker 00:
Exactly.

[00:01:36] Speaker 00:
So that's what the claim requires.

[00:01:37] Speaker 01:
The plurality of antennas are both receiving and transmitting data signals.

[00:01:41] Speaker 00:
We agree.

[00:01:42] Speaker 00:
So this antecedent basis argument, we're not disputing.

[00:01:45] Speaker 00:
When the claims say the plurality of antennas, both in the transmitting and the receiving limitations, we agree they're talking about the full plurality of antennas.

[00:01:55] Speaker 00:
The question is whether that means the collective, the group of antennas need to transmit or receive.

[00:02:01] Speaker 05:
What work does simultaneously do in the claim?

[00:02:04] Speaker 05:
I mean, it says simultaneously transmitting using the plurality of antennas and simultaneously receiving using the plurality of antennas.

[00:02:16] Speaker 05:
So I'm reading that and thinking maybe simultaneously means every one of them simultaneously.

[00:02:22] Speaker 05:
has to send, and then every one of them simultaneously has to receive.

[00:02:27] Speaker 05:
But I don't see what else works simultaneously as doing the claim.

[00:02:30] Speaker 00:
So what I think it's doing is say you have five antennas, and you have five data streams that are coming in.

[00:02:36] Speaker 00:
You're going to be transmitting, for example, the data across each of those five antennas at the same time.

[00:02:42] Speaker 00:
That's what the simultaneously is saying in the transmitting limitation.

[00:02:45] Speaker 00:
And then you get to the receiving limitation, and it's again saying you have these five antennas

[00:02:50] Speaker 00:
that are receiving five different data streams, those data streams are coming across the five antennas at the same time.

[00:02:58] Speaker 00:
But that does not go to their point or the board's point.

[00:03:02] Speaker 00:
That means that every single one of the antennas within the plurality must both be doing that transmitting and that receiving.

[00:03:09] Speaker 00:
It just means that when you are transmitting, you're using all five of the antennas.

[00:03:13] Speaker 00:
And when you're receiving, you're using all five of the antennas.

[00:03:16] Speaker 04:
There's no contention that a single antenna has to receive and send at the same time, right?

[00:03:22] Speaker 00:
No.

[00:03:23] Speaker 00:
And that's our point.

[00:03:24] Speaker 00:
That's not in the claims, and that's not in the specification, any requirement.

[00:03:27] Speaker 04:
The board didn't say that either.

[00:03:29] Speaker 00:
The board did not.

[00:03:30] Speaker 00:
Yet if we follow the board's logic.

[00:03:31] Speaker 04:
As I understand, what the board is saying is it has to be able to switch from sending to receiving, not that it has to do the sending and receiving at the same time.

[00:03:41] Speaker 00:
Agreed.

[00:03:41] Speaker 00:
The board's construction appears to be that within the plurality of antennas, some of the antennas, which I'll get to in a minute.

[00:03:48] Speaker 05:
The reason why I ask that question is to me, if simultaneously sending and simultaneously receiving by the plurality of antennas, it seems that you can't pick and choose which ones are in the plurality.

[00:04:01] Speaker 05:
You can't say that some of them can just send and some of them can just receive.

[00:04:06] Speaker 05:
that simultaneously works with the antecedent basis point to suggest that at least within the plurality, they all have to send and receive.

[00:04:14] Speaker 00:
I think it depends on where you're looking.

[00:04:15] Speaker 00:
So if you're looking at the transmission side, at the same time, you want to use each antenna, because that's the whole purpose of the purported invention.

[00:04:23] Speaker 00:
Before you had one antenna, now you have five.

[00:04:25] Speaker 00:
So you can use all five antennas to transmit data, and you'll have greater bandwidth.

[00:04:31] Speaker 00:
But that's just talking again about when you were transmitting data, you were using all five.

[00:04:36] Speaker 00:
that does not necessarily mean that one of those antennas that you're transmitting also has to receive.

[00:04:42] Speaker 05:
Well, it says the.

[00:04:44] Speaker 05:
Simultaneously receiving using the plurality of antennas.

[00:04:48] Speaker 05:
So it's the plurality of antennas.

[00:04:49] Speaker 05:
So the ones that are simultaneously sending, all of them of the plurality, are also simultaneously receiving all of them of the plurality.

[00:04:59] Speaker 00:
Let me step back.

[00:05:00] Speaker 05:
Let me step back, too, because I would say you only have to have two that are bidirectional.

[00:05:04] Speaker 05:
Obviously, because it's a polarity claim, and it's an open-ended comprising claim.

[00:05:09] Speaker 00:
Yes.

[00:05:10] Speaker 00:
So let me step back.

[00:05:10] Speaker 00:
So when they're talking about the transmitting limitation, say I want to use a plurality of data streams, and I'm saying that there's five data streams that I want to transmit.

[00:05:20] Speaker 00:
I'm going to use five antennas in order to do that.

[00:05:23] Speaker 00:
Now, the plurality could have 10 antennas.

[00:05:25] Speaker 00:
So I think that's maybe where the disconnect was.

[00:05:27] Speaker 00:
It's being limited by the data stream.

[00:05:29] Speaker 00:
So if you have a plurality of data streams you're wanting to send, you're sending the five data streams.

[00:05:34] Speaker 00:
across five antennas, and you're doing that simultaneously in order to increase the bandwidth.

[00:05:39] Speaker 00:
But that doesn't mean that there are not other antennas within that plurality that can just be being used for the receiving aspect.

[00:05:47] Speaker 00:
And so that's what we're trying to look for.

[00:05:48] Speaker 00:
Is there anything that suggests you need each antenna within the plurality to both do the transmitting and the receiving?

[00:05:59] Speaker 00:
And one thing I'd like to point out there, Your Honors, is the board's construction really doesn't even follow from this logic that we're talking about.

[00:06:05] Speaker 00:
So they ground their construction in this idea that the, in the plurality of antennas, because of the entity and basis, means that the plurality, each antenna within the plurality, has to be doing the transmitting and the receiving.

[00:06:20] Speaker 00:
But if we look at their actual construction.

[00:06:21] Speaker 05:
It doesn't matter, does it?

[00:06:22] Speaker 05:
I mean, we review client construction de novo.

[00:06:24] Speaker 05:
So it doesn't matter if we don't.

[00:06:27] Speaker 05:
Does it matter if we have slightly different?

[00:06:30] Speaker 00:
Only in the sense that it shows that the board's logic here is flawed.

[00:06:34] Speaker 00:
So if you were to use their antecedent basis argument in order to say, OK, yes, the claims require that the antennas both transmit and receive, then there's a flaw there.

[00:06:45] Speaker 00:
Because the board's construction doesn't even flow from its own logic.

[00:06:49] Speaker 00:
And one of the reasons why I think that's especially important is because it seems like the board was trying to find a middle ground here, because it seems like a lot, to put on the word the, that every single one of the plurality of antennas has to both transmit and receive.

[00:07:03] Speaker 04:
They're not saying every single one.

[00:07:04] Speaker 04:
They're saying that some antennas have to be switchable, as I understand it, from a receive mode to a transmit mode.

[00:07:13] Speaker 05:
Don't they say at least two?

[00:07:14] Speaker 00:
So Appendix 13, they just say we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving.

[00:07:24] Speaker 00:
But again, that logic doesn't follow from their, that conclusion doesn't follow from their own logic.

[00:07:30] Speaker 01:
So if we conclude that this claim contemplates a plurality of antennas in which the plurality need to, all the antennas or the plurality of antennas

[00:07:42] Speaker 01:
need to be capable of both transmitting and receiving data signals, what else do you have for us today?

[00:07:48] Speaker 00:
Then we would go to our alternative argument, Your Honor, which is that the prior art discloses that exact switching even under the board's construction.

[00:07:58] Speaker 00:
So that is our alternative argument under Paul Raj.

[00:08:02] Speaker 00:
And the board, with respect to this argument, made two errors as well.

[00:08:05] Speaker 00:
So the first error is an APA violation.

[00:08:08] Speaker 00:
The second is substantial evidence.

[00:08:09] Speaker 00:
Both are based on the same disclosures in Paul Raj, so I'd like to go straight there.

[00:08:14] Speaker 00:
I'm at 566, which is the Paul Raj reference.

[00:08:18] Speaker 00:
And in the Paul Raj reference, what it's describing is you have this base transceiver station 12, and you have wireless networks 14.

[00:08:28] Speaker 00:
And it's saying, I'm here in column five, it's describing how this base transceiver station 12 has a set of antennas, transmit antennas 18A through 18M.

[00:08:38] Speaker 00:
Then you have the wireless

[00:08:40] Speaker 00:
devices, 14, which has its own set of antennas, 34A to 34N.

[00:08:45] Speaker 00:
And it's describing how you transmit using those transmit antennas received using the 34A through N receive antennas.

[00:08:53] Speaker 00:
But what it specifically says is that it's describing the downlink communication in what I just described for explanation purposes.

[00:09:01] Speaker 00:
In the very same paragraph, line 56 at appendix 566, it says, of course, the same method can be used in uplink communication

[00:09:10] Speaker 00:
from wireless units 14 to BTS12.

[00:09:14] Speaker 00:
And that's important because the only set of antennas that are being described with respect to either of those devices are 18A through 18N for BTS12 and 34A to 34N for wireless units 14.

[00:09:28] Speaker 01:
Is it possible that the board believe that

[00:09:31] Speaker 01:
Those antennas were transmit antennas, 18A through X and receive antennas, 34A through N. And so therefore, to do an uplink communication, it would necessarily require a different set of transmit antennas and receive antennas in light of the way they might have read figures three and four.

[00:09:54] Speaker 00:
So I have two responses to that, Your Honor.

[00:09:56] Speaker 00:
First is we don't know because the board didn't explain why it rejected our argument.

[00:10:01] Speaker 00:
And we actually think it rejected our argument solely because it viewed it as an improper reply, which under axonics is simply incorrect.

[00:10:07] Speaker 00:
But the second argument, the second response I have, Your Honor, is Paul Raj says it's the same method that's being used.

[00:10:15] Speaker 00:
And then if we look at column six, it describes what method is of the invention.

[00:10:21] Speaker 00:
So at line 26, it says specifically the method of the invention uses BTS-12 with its transmit antennas to transmit.

[00:10:30] Speaker 00:
to the 34 A through N antennas receiving for wireless units 14.

[00:10:35] Speaker 00:
So if we're talking about the method and you're just simply flipping it, I honestly don't see how the board would come to the conclusion that you're using some other antennas when you're doing the uplink as opposed to the only set of antennas that are being described with each of those devices.

[00:10:48] Speaker 00:
And it expressly says, we're just talking about transmit and receive and labeling these antennas for explanation purposes.

[00:10:55] Speaker 00:
not to say 18A through 18M can only ever transmit because we've called them transmit.

[00:11:01] Speaker 04:
But your contention is that Paul Raj shows or states specifically that the antennas are switchable, that the receiving antennas can be switched to a transmit mode.

[00:11:13] Speaker 00:
Yes, Your Honor.

[00:11:15] Speaker 00:
I think that that's the fair reading of Paul Raj where it says the same method can be used in uplink communication from wireless.

[00:11:21] Speaker 04:
And just to be clear, I don't understand the board

[00:11:24] Speaker 04:
To be saying that an antenna has to send and receive at the same time, which is probably an impossibility anyway.

[00:11:35] Speaker 00:
I don't believe that they are requiring that now.

[00:11:40] Speaker 00:
But so when we get to what the board.

[00:11:42] Speaker 01:
We don't have any fact findings on all this.

[00:11:44] Speaker 01:
So at best, you need a remand on this for the board to actually address the content of figures one and two and its associated written description.

[00:11:57] Speaker 00:
Exactly, Your Honor.

[00:11:57] Speaker 00:
So our APA violation is based on that exactly.

[00:12:00] Speaker 00:
We don't know why the board rejected our argument, what it found lacking in this disclosure of Paul Raj.

[00:12:05] Speaker 00:
If we look at what the board said here on Appendix 17,

[00:12:09] Speaker 00:
First, it says improper reply.

[00:12:11] Speaker 00:
Sounds like even Smart Mobile's not arguing Exxonix shows this is not an improper reply.

[00:12:17] Speaker 00:
But then after that, it says, moreover, we agree with Dr. Kuklev that Paul Raj is consistent in describing separate transmit units and receive units throughout his disclosure.

[00:12:27] Speaker 00:
And without inappropriate mapping of Paul Raj's alleged teachings to the challenge claims in the petition, petitioner has not carried its burden.

[00:12:36] Speaker 00:
So even in the line that Smart Mobile

[00:12:39] Speaker 00:
emphasizes as potentially dealing with the merits.

[00:12:42] Speaker 01:
I'm curious, what if we were to read that statement by the board as also trying to say that you never did an appropriate mapping at any point in time, including in your reply?

[00:12:53] Speaker 01:
What would you say in response to that in terms of what you submitted in your reply?

[00:12:56] Speaker 00:
I would say that that's just not accurate, Your Honor.

[00:13:00] Speaker 00:
So if we look at our reply, which is that Appendix 1618 to 1619,

[00:13:05] Speaker 00:
We walk through how the transmit antennas 18A through 18M in Paul Raj when transmitting in the downlink mode are doing the transmitting and when they are receiving in the uplink mode are doing the receiving.

[00:13:18] Speaker 00:
So I think we have mapped it, but to answer your question another way.

[00:13:21] Speaker 01:
Did you have a supplemental declaration?

[00:13:23] Speaker 01:
I'm sorry?

[00:13:23] Speaker 01:
Did you have a supplemental declaration to that effect?

[00:13:25] Speaker 00:
We did, Your Honor, and that's at 1692 to 1695.

[00:13:29] Speaker 00:
Our expert in paragraphs 10, 12, and 15 walk through that exact point

[00:13:35] Speaker 00:
But to answer your question in a second way, not only do I think that would not be a fair reading of what the board did, we simply don't know.

[00:13:44] Speaker 00:
And so the board didn't provide any reasoned explanation for what your honor just said.

[00:13:50] Speaker 00:
If they did believe that we didn't map it properly in the reply, they didn't explain that either.

[00:13:55] Speaker 00:
So at a minimum, it needs to go back to the board to give this court adequate explanation for which it can review the decision.

[00:14:04] Speaker 00:
I see I'm in my rebuttal time.

[00:14:06] Speaker 00:
So if Your Honor is there.

[00:14:07] Speaker 04:
We'll give you two minutes for rebuttal.

[00:14:09] Speaker 00:
Thank you.

[00:14:10] Speaker 04:
Mr. Graves.

[00:14:20] Speaker 02:
Thank you, Your Honor.

[00:14:21] Speaker 02:
May it please the court, Philip Graves, for Smart Mobile Technologies.

[00:14:25] Speaker 04:
So just to be clear about this, the board's construction requires that

[00:14:30] Speaker 04:
at least some of the antennas in the plurality be switchable between a receive and ascend mode, right?

[00:14:37] Speaker 02:
That's correct, Your Honor.

[00:14:38] Speaker 04:
Not that it be done simultaneously, right?

[00:14:41] Speaker 02:
That's correct, Your Honor.

[00:14:42] Speaker 02:
Yeah.

[00:14:43] Speaker 02:
Really, this comes down to an issue of grammar, simple English grammar.

[00:14:46] Speaker 02:
As the court has repeatedly held, it is supposed to follow the precepts of English grammar in construing claims.

[00:14:54] Speaker 02:
And so what this boils down to is the plurality of antennas.

[00:14:58] Speaker 02:
is a singular collective noun.

[00:15:01] Speaker 04:
Well, I mean, but that doesn't necessarily follow.

[00:15:04] Speaker 04:
For example, if somebody says the team pitches well and hits well, that doesn't mean that every member of the team has to do both, right?

[00:15:12] Speaker 02:
Right.

[00:15:13] Speaker 02:
But the team isn't actually doing the pitching.

[00:15:15] Speaker 02:
The team wins or loses.

[00:15:17] Speaker 02:
Particular members of the team might pitch or catch or whatever.

[00:15:21] Speaker 02:
But the team as a unit

[00:15:23] Speaker 02:
wins or loses.

[00:15:24] Speaker 02:
It doesn't perform the subsidiary specific functions of different members within the team.

[00:15:31] Speaker 02:
So in the example that Ample gave in its reply brief, the entire colony of ants doesn't lay eggs.

[00:15:38] Speaker 02:
Only the queen does that.

[00:15:39] Speaker 02:
We wouldn't say the colony lays eggs.

[00:15:42] Speaker 02:
That would be grammatically incorrect.

[00:15:43] Speaker 02:
We wouldn't say the troop of actors plays Romeo.

[00:15:46] Speaker 02:
That would be grammatically incorrect.

[00:15:48] Speaker 02:
The rules of grammar here stipulate

[00:15:51] Speaker 02:
that plurality of antennas is a collective noun.

[00:15:55] Speaker 02:
When it's preceded by a plurality, that refers to the group in the plural.

[00:16:01] Speaker 02:
When it's preceded by the plurality, it's a singular collective noun.

[00:16:05] Speaker 04:
So that's hard to say that English grammar requires that the board read it that way.

[00:16:12] Speaker 04:
I think that's just a tough argument.

[00:16:14] Speaker 02:
Well, we cited to authority to that effect and those are the applicable rules here.

[00:16:21] Speaker 02:
Apple has nothing except to hand wave it away.

[00:16:25] Speaker 05:
So you're relying on, what are you relying on besides that plain claim language?

[00:16:30] Speaker 05:
Anything else?

[00:16:32] Speaker 02:
So the specification is also supportive of that construction.

[00:16:35] Speaker 02:
If you go through the briefs filed by the parties, you'll see that there are examples in the spec of multiple antennas

[00:16:45] Speaker 02:
being used.

[00:16:46] Speaker 02:
There's no example.

[00:16:47] Speaker 05:
No embodiments in which there's not multiple.

[00:16:50] Speaker 02:
Separate sets of transmit and receive antennas.

[00:16:53] Speaker 02:
Exactly right.

[00:16:54] Speaker 02:
And the examples.

[00:16:55] Speaker 04:
You said repeatedly that that doesn't necessarily mean that the claims are limited to the disclosed embodiment.

[00:17:02] Speaker 02:
Oh, absolutely.

[00:17:03] Speaker 02:
Absolutely agreed.

[00:17:04] Speaker 02:
And there's no real issue here of limitations from the specification being incorporated into the claims.

[00:17:11] Speaker 02:
The point there is that the specification

[00:17:14] Speaker 02:
is supportive of the construction that the board arrived at, which is that in limitations 1D and 1E and the equivalent limitations of the other three.

[00:17:25] Speaker 04:
I think all you can say is it's not inconsistent with the board's construction.

[00:17:29] Speaker 02:
I would say that is true and I would go farther and say that it is supportive because the specification repeatedly discusses the benefits to be obtained by applying the invention.

[00:17:42] Speaker 02:
For example, the ability to process multiple incoming data streams and signal streams in parallel to improve throughput and so on.

[00:17:55] Speaker 02:
And the examples they give show dual band systems with like multiple incoming frequency bands being received by multiple antennas, right?

[00:18:07] Speaker 02:
Each antenna.

[00:18:08] Speaker 02:
covering a different frequency band.

[00:18:10] Speaker 05:
Your view that the claim requires simultaneously, so each of the receivers and each of the transmitters are being used?

[00:18:17] Speaker 02:
Yes, when the claim language recites simultaneously receiving or simultaneously transmitting, that's exactly right.

[00:18:26] Speaker 02:
So on the claim construction issue, we would submit that grammar resolves this, the specification is supportive,

[00:18:33] Speaker 02:
I think we adequately addressed their arguments regarding the Smith case.

[00:18:37] Speaker 04:
Looking back at some of the prior patents that are issued using the same specification, if I read some of those past patents correctly, they are having separate receiving and sending antennas.

[00:18:52] Speaker 04:
Is that not the case?

[00:18:55] Speaker 02:
Are you talking about patents in the family of the 083 patent?

[00:18:59] Speaker 02:
Yeah.

[00:18:59] Speaker 02:
I do not believe that's true.

[00:19:01] Speaker 02:
No, I don't believe that there are

[00:19:04] Speaker 02:
And unfortunately, Your Honor, I'm not prepared with a recent review of all the patents in the family.

[00:19:10] Speaker 02:
But I can say I'm not aware and do not recall any patents in this family that recite claims directed to separate sets of transmitting and receiving antennas.

[00:19:22] Speaker 02:
I freely admit that I could be wrong in overlooking a particular example.

[00:19:28] Speaker 02:
But I do not believe that there are any claims with that particular limitation.

[00:19:34] Speaker 05:
What about Axonics?

[00:19:40] Speaker 05:
What is your response to that?

[00:19:42] Speaker 05:
Because it seems pretty applicable here.

[00:19:45] Speaker 02:
We're not arguing that the Axonics case would have supported the board in simply refusing to consider the argument that they made in their reply concerning the disclosure and scope of Paul Rush.

[00:20:02] Speaker 05:
We're not arguing... Instead reading this sentence that's on page A-17 is saying that the board addressed the reply.

[00:20:09] Speaker 02:
Correct.

[00:20:09] Speaker 02:
That's absolutely right.

[00:20:11] Speaker 05:
What do you make of the fact that it says this language where it refers back to the petition without an appropriate mapping in the petition?

[00:20:18] Speaker 02:
Well, I think the board's correct.

[00:20:20] Speaker 02:
So if you look at the petition and in particular, and we cited the relevant portions of the petition... I thought that their reply arguments were in light of the new claim construction.

[00:20:30] Speaker 05:
They're allowed to

[00:20:32] Speaker 05:
further develop and be responsive to that new claim construction under axonics.

[00:20:38] Speaker 02:
Why not?

[00:20:40] Speaker 02:
That is correct.

[00:20:40] Speaker 02:
Here, though, I think you have something, and this could be an appropriate case for the court to revisit and possibly narrow axonics because I think we have a different- To rule for you, we have to do that.

[00:20:53] Speaker 03:
What's that?

[00:20:54] Speaker 03:
To rule for you, we have to do that.

[00:20:55] Speaker 02:
Oh, absolutely not.

[00:20:56] Speaker 02:
No, no.

[00:20:57] Speaker 02:
That's not the argument I'm making at all, regardless

[00:21:00] Speaker 02:
Look, I think the board clearly addressed their argument on the merits.

[00:21:04] Speaker 02:
The board was correct.

[00:21:06] Speaker 02:
And the court should affirm on that basis.

[00:21:09] Speaker 02:
But here, we don't just have a further development.

[00:21:12] Speaker 01:
If the court were to conclude that this was not nearly enough analysis, then you would concede that we would have to vacate and remand this board decision for further fact finding on the question of whether or not the petitioners reply arguments.

[00:21:29] Speaker 01:
based on your claim construction raising the patent owner response is good enough to teach for Paul Raj to teach this limitation?

[00:21:37] Speaker 02:
If the court were to find an APA violation for failure to adequately explain its reasoning, the result would be a remand, not a reversal.

[00:21:45] Speaker 02:
That's correct.

[00:21:46] Speaker 02:
Well, let's address that because they focus on one page or actually one sentence of the board's FWD.

[00:21:55] Speaker 02:
But actually, the board addressed the scope and disclosure of Paul Raj

[00:21:59] Speaker 02:
which is the issue that the board is addressing with respect to their reply argument throughout numerous pages of the FWD.

[00:22:07] Speaker 02:
If you look at appendix 8 to 11, the board recounts Apple's argument concerning what Paul Raj discloses in detail in sites to the relevant portions of the petition and also Apple's expert, Dr. Jensen's,

[00:22:26] Speaker 04:
I think that's a good point.

[00:22:32] Speaker 04:
I think that's a good point.

[00:22:41] Speaker 02:
I think that's a good point.

[00:22:45] Speaker 02:
I think that's a good point.

[00:22:48] Speaker 02:
Well, it explains, because Paul Raj does not disclose switchable antennas.

[00:22:52] Speaker 02:
Paul Raj discloses expressly, and Apple's expert admitted this.

[00:22:57] Speaker 02:
He outlined this mapping in his first declaration, and he admitted this in his deposition, that Paul Raj discloses two separate sets of antennas.

[00:23:08] Speaker 04:
One set of antennas, which repeatedly refers to... He discloses that, but it also says it could be switchable.

[00:23:15] Speaker 04:
It does not say... He doesn't address that.

[00:23:18] Speaker 04:
The expert doesn't address that language.

[00:23:20] Speaker 02:
No.

[00:23:21] Speaker 04:
Wait, he's not addressing that language, correct?

[00:23:24] Speaker 02:
Well, that's Apple's characterization.

[00:23:26] Speaker 02:
Paul Raj never says.

[00:23:27] Speaker 01:
At one point, Paul Raj is very clear that these examples in the Paul Raj patent are showing a downlink communication.

[00:23:37] Speaker 01:
However, you can do everything in reverse and do an uplink communication.

[00:23:42] Speaker 02:
Correct.

[00:23:42] Speaker 01:
We all agree Paul Raj says that.

[00:23:44] Speaker 02:
Yeah, Paul Raj absolutely.

[00:23:45] Speaker 01:
And we also all agree that the board never speaks to that statement about everything that can be done downlink can be done uplink so that, you know, the house now is the transmitter and the BTS is now the receiver.

[00:23:59] Speaker 02:
Actually the board did speak to that and that's where the board said that Apple failed to provide an appropriate mapping because if you look at Apple's mapping... It's in the petition though.

[00:24:08] Speaker 02:
We're talking about the reply arguments by Apple.

[00:24:12] Speaker 02:
No, that's in the board's response to Apple's reply argument.

[00:24:15] Speaker 04:
I had the mapping question.

[00:24:17] Speaker 04:
What's the answer to what Judge Chin just called your attention to, this part of Polaroid?

[00:24:25] Speaker 04:
Why does that not show switchable antennas?

[00:24:29] Speaker 02:
Well, because the uplink, what Polaroid discloses is, again, two separate sets of transmit units and receive units in transmit antennas and receive antennas.

[00:24:41] Speaker 02:
And there's nothing suggesting that that architecture would not be used for both the uplink and the downlink.

[00:24:48] Speaker 02:
In other words, the uplink goes out over the... I'm not understanding what you're saying.

[00:24:52] Speaker 04:
Why is that language not described as switchable antennas?

[00:24:55] Speaker 02:
So allow me to explain.

[00:24:56] Speaker 02:
So the uplink will go out over the transmit antennas and the downlink is received over the receive antennas on both ends.

[00:25:05] Speaker 02:
That's what Paul Raj discloses.

[00:25:07] Speaker 02:
And not only that,

[00:25:08] Speaker 02:
But a key point here is that is how Apple and Dr. Jensen described Paul Roche in the petition and in Dr. Jensen's first declaration and in his deposition.

[00:25:21] Speaker 02:
Now, certainly in his reply declaration, he comes back and completely contradicts himself.

[00:25:27] Speaker 02:
and says, oh no.

[00:25:28] Speaker 04:
You're not explaining.

[00:25:29] Speaker 04:
You're not answering my question.

[00:25:30] Speaker 04:
Why is that language in Paul Raj not showing switchable antennas?

[00:25:34] Speaker 04:
It says you can change the receive to the send and the send to the receive.

[00:25:39] Speaker 02:
But it does not say you can change the receive to the send and the send or receive.

[00:25:43] Speaker 02:
That's the answer.

[00:25:44] Speaker 02:
Paul Raj doesn't say that.

[00:25:46] Speaker 02:
If you look at Paul Raj, it's one sentence and it just says the same method can be used in the uplink.

[00:25:53] Speaker 02:
And what Paul Raj discloses

[00:25:55] Speaker 02:
is two separate sets of receive units, of units, a receive unit and a transmit unit and two separate sets of coupled antennas.

[00:26:06] Speaker 02:
Receive antennas and transmit antennas.

[00:26:08] Speaker 04:
Suppose we interpreted Paul Raj as saying you can use the receive antennas to send and the send antennas to receive if you wish.

[00:26:17] Speaker 04:
Would that be sufficient?

[00:26:19] Speaker 04:
I'm sorry, if you... If Paul Raj

[00:26:23] Speaker 04:
Paul Raj said explicitly, you can use the send antennas to receive and the receive antennas to send.

[00:26:32] Speaker 04:
Would that be sufficient?

[00:26:33] Speaker 02:
If there were such a description or disclosure in Paul Raj.

[00:26:36] Speaker 02:
Yes, it would be sufficient.

[00:26:38] Speaker 02:
Arguably it would be sufficient, but there is no such disclosure in Paul Raj.

[00:26:42] Speaker 02:
And in fact, Apple's mapping that it provided is completely contrary to that.

[00:26:46] Speaker 02:
If you look at Appendix 101,

[00:26:49] Speaker 02:
in Appendix 103.

[00:26:50] Speaker 01:
Is this the petition or the reply?

[00:26:52] Speaker 01:
This is the petition.

[00:26:54] Speaker 01:
We only care about the reply for purposes of understanding this particular argument.

[00:26:59] Speaker 02:
Well, but the petition and, more importantly, Dr. Jensen's mapping and his initial declaration, which is his testimony as to what Paul Raj discloses, and that's at Appendix... Did he not also file a second declaration?

[00:27:14] Speaker 02:
He did, but he didn't provide any subsequent mapping.

[00:27:17] Speaker 02:
He did not provide a substitute.

[00:27:19] Speaker 01:
Didn't he say that these antennas are capable of both transmitting and receiving in Paul Raj?

[00:27:26] Speaker 02:
He did say that, but that is contrary to the first declaration that he filed.

[00:27:31] Speaker 02:
So here, I mean, this is not an example of just developing an argument.

[00:27:36] Speaker 01:
I think the real problem, let's take a step back.

[00:27:38] Speaker 01:
We don't have any analysis by the board on any of this.

[00:27:42] Speaker 01:
clearly was controlled by its view that all of this was waived and didn't, and so it didn't even need to consider it, and then gave a throwaway sentence saying it wasn't impressed with this argument anyway, referencing figure three by Dr. Kuklov, but obviously not evaluating any of this discussion of figures one and two that were in the petitioner's reply.

[00:28:07] Speaker 01:
and then further explicated by the expert's supplemental declaration.

[00:28:14] Speaker 01:
We don't have any of that here.

[00:28:15] Speaker 01:
It's all a guessing game.

[00:28:17] Speaker 01:
You're citing to things that you think help you that Apple's expert conceded, and maybe he did, maybe he didn't.

[00:28:23] Speaker 01:
But that would be a bunch of fact finding that we cannot do.

[00:28:27] Speaker 01:
This, I think, I'm afraid, has to be remanded.

[00:28:30] Speaker 02:
But the board actually found the facts.

[00:28:32] Speaker 01:
That's the thing here.

[00:28:33] Speaker 01:
I'm looking at A17, and that is a tough call to say about A17.

[00:28:41] Speaker 02:
But if you look at the entirety of the board analysis, including at A15 to 16, that's not specifically addressing the reply argument explicitly, but it is addressing the exact issue, which is what does Paul Raj disclose?

[00:29:00] Speaker 02:
That's what the entirety of the board's analysis in a appendix 8 to 11 and appendix 15 to 16, that's what the board is analyzing.

[00:29:10] Speaker 02:
It's the same issue.

[00:29:12] Speaker 02:
It's just, you know, presented under a different package.

[00:29:15] Speaker 02:
It is the exact same issue.

[00:29:17] Speaker 02:
What does Paul Raj disclose, all right?

[00:29:20] Speaker 02:
And the board cites to obviously the petition,

[00:29:24] Speaker 02:
and Dr. Jensen's declaration testimony but also his deposition testimony.

[00:29:30] Speaker 02:
The board said, look, you know, Dr. Jensen and the petition both say, you know, that Paul Raj includes a transmit unit and its respective transmit antennas and a receive unit and its respective receive antennas.

[00:29:47] Speaker 02:
And the way they mapped this onto Paul Raj's modem

[00:29:52] Speaker 02:
right, which is what they were trying to map on the claim one.

[00:29:56] Speaker 01:
If you want to say anything about why it's so special and necessary to have unidirectional antennas.

[00:30:05] Speaker 02:
No, it does not.

[00:30:06] Speaker 02:
It does not.

[00:30:06] Speaker 01:
But if you look at up and default out there to go out there and use unidirectional antennas for communication or to use two way antennas that are capable of both transmitting and receiving all the doctor

[00:30:22] Speaker 02:
Jensen says about that is that it's a design choice as to what types of antennas to use.

[00:30:28] Speaker 02:
But he doesn't submit, there's no evidence of any motivation to modify Paul Raj to use

[00:30:36] Speaker 02:
bidirectional, to use a single antenna bank.

[00:30:39] Speaker 05:
Let me interrupt you for a minute.

[00:30:40] Speaker 05:
I'm not sure I agree with what you just said.

[00:30:42] Speaker 05:
And the reason why is because even in the reply brief, and you agree bidirectional antennas exist, right?

[00:30:48] Speaker 05:
They're conventional, they're often used.

[00:30:50] Speaker 05:
So the language I see in the reply is that it, you know, because the answer is because antennas were well known to be both for both transmitting and receiving signals.

[00:31:03] Speaker 05:
That is the motivation to modify.

[00:31:05] Speaker 05:
that's provided in the reply brief and not addressed by the board, right?

[00:31:09] Speaker 02:
Well, so they were known, right?

[00:31:13] Speaker 02:
Certainly there was, there's evidence in the record.

[00:31:15] Speaker 05:
I don't know what the board thinks of that argument because they haven't addressed it, right?

[00:31:20] Speaker 02:
So they did not address it expressly, but again, looking at the analysis that the board provided concerning the disclosure of Paul Raj, they do address what Paul Raj discloses.

[00:31:34] Speaker 02:
citing to evidence, copious amounts of evidence, actually.

[00:31:40] Speaker 02:
So here, you know, we have the board explaining what it did, right?

[00:31:45] Speaker 02:
It rejected the reply argument on the merits.

[00:31:48] Speaker 02:
We have it explaining why, because all Raj consistently discloses separate transmit and receive units.

[00:31:56] Speaker 04:
I think we're out of time, unless there are other questions.

[00:32:01] Speaker 02:
Thank you.

[00:32:02] Speaker 04:
All right.

[00:32:03] Speaker 04:
Thank you, Your Honor.

[00:32:06] Speaker 04:
Ms.

[00:32:06] Speaker 04:
Fiorella.

[00:32:13] Speaker 00:
Thank you, Your Honor.

[00:32:13] Speaker 00:
Just two quick points.

[00:32:15] Speaker 00:
I think we've pretty much covered this, but the pages where the board is describing Paul Raj say nothing about uplink.

[00:32:22] Speaker 00:
So the disclosure that we're relying on, they don't talk about it.

[00:32:25] Speaker 00:
Again, that's because they didn't consider it, because they thought that it was an improper reply, which Exana says is wrong.

[00:32:31] Speaker 00:
And to your honor's point, Judge Stoll, in addition to in our reply, Dr. Jensen at 1693 expressly says, well-known full duplex communication transmits, well, notably well-known full duplex communication transmits data on one frequency and receives data on another frequency, allowing both transmission and reception to occur simultaneously, citing

[00:32:54] Speaker 00:
A number of pieces of evidence.

[00:32:55] Speaker 05:
Can I ask you one question?

[00:32:56] Speaker 05:
Yes.

[00:32:57] Speaker 05:
I'd read your reply to have two arguments.

[00:32:59] Speaker 05:
One is that a person of ordinary scale in the art reading Paul Raj would understand that it teaches bidirectional antennas as an embodiment.

[00:33:06] Speaker 05:
And the second is that even if that's not true, it would have been obvious to do so because bidirectional antennas are well known, conventional, blah, blah, blah.

[00:33:14] Speaker 05:
So am I reading that correctly?

[00:33:16] Speaker 00:
Yes, you are, Your Honor.

[00:33:17] Speaker 00:
Thank you.

[00:33:18] Speaker 00:
Thank you.

[00:33:18] Speaker 01:
Are you allowed to make that second argument on the reply?

[00:33:23] Speaker 01:
In other words, your petition argument, was your petition theory at all alternatively premised on Paul Raj, and it would be obvious to modify Paul Raj to meet the plurality of antennas limitation?

[00:33:37] Speaker 00:
So our petition was based on an obviousness argument.

[00:33:39] Speaker 00:
We did.

[00:33:40] Speaker 01:
Well, but this specific limitation, did you say in the petition, if to the extent Paul Raj doesn't disclose this limitation, a 102-type theory

[00:33:50] Speaker 01:
it nevertheless would have been obvious to modify Paul Raj to meet this plurality of antennas limitation, i.e.

[00:33:57] Speaker 01:
a 103-type theory for this specific limitation.

[00:34:00] Speaker 00:
So in the petition, because again, at this point, we are thinking of the claim construction to require separate ones.

[00:34:07] Speaker 00:
But we did say that it would be obvious to use the transmit and receive units.

[00:34:15] Speaker 00:
I'm just trying to find the exact site.

[00:34:19] Speaker 01:
Well, let me ask you differently.

[00:34:22] Speaker 01:
If it turns out the petition didn't make that alternative argument, a 103-type theory about the plurality of antennas limitation vis-a-vis Paul Raj, then wouldn't it be inappropriate for you in your petition reply to now include a 103-type theory with respect to your cited reference Paul Raj?

[00:34:44] Speaker 00:
Given that it is based on a different claim construction, I'm not sure that it would be incorrect, but we don't need to reach that issue here because we certainly made the primary argument.

[00:34:51] Speaker 01:
Well, if there is a remand here, it might, in fact, be pretty vital to figure out exactly whether or not it's permissible for you to go above and beyond the theory that you presented in the petition if it was, in fact, just a 102-type theory for the plurality of antennas limitation.

[00:35:10] Speaker 00:
So, Your Honor, what I'd say there is

[00:35:13] Speaker 00:
It's because there is a different claim construction argument here.

[00:35:15] Speaker 01:
But did anything in Axonics or Parker Vision or any other case suggest that the petitioner can now migrate away from the particular theory in the petition 102 versus 103 and now do something else in response to a patent owner claim construction argument?

[00:35:36] Speaker 00:
The cases don't say that you can do that, but they also don't expressly say you can't do that.

[00:35:40] Speaker 00:
So Exxonix, for example, says it's leaving for another day, whether or not you could use different embodiments and so forth.

[00:35:46] Speaker 00:
Can't use a different piece of prior art, but maybe you could use it.

[00:35:48] Speaker 01:
We know that part of it.

[00:35:50] Speaker 00:
So what I would say here, though, is if the change in theory, assuming that there is one, is tied to the fact that now there is a different claim construction, then I think arguably you should be able to make that.

[00:36:01] Speaker 00:
Because otherwise, you're going to have the same types of gamesmanship issues that Exxonix

[00:36:06] Speaker 00:
you know, counsels against or tries to protect against.

[00:36:09] Speaker 00:
If you can just have a different claim construction and on the basis of that, the same exact disclosure in the prior art still renders that limitation unpatentable, whether it be through a direct disclosure or because it's so well known in the art that you would do it one way or the other way, that is an argument that I believe that should be allowed to be made in this circumstance.

[00:36:31] Speaker 04:
All right, thank you.

[00:36:32] Speaker 04:
Thank both counsels.