[00:00:00] Speaker 03:
Our third case this morning is number 241457LBTIP versus Uber Technologies.

[00:00:08] Speaker 03:
OK, Mr. Bradley.

[00:00:10] Speaker 00:
May it please the court?

[00:00:11] Speaker 00:
The board's finding of a motivation to combine the Robert and Curatolo prior art references was not supported by substantial evidence.

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It was based on impermissible hindsight reconstruction, using our patent as a blueprint or a roadmap for what they were trying to accomplish.

[00:00:29] Speaker 00:
The Robert reference was from 1994, before GPS was prevalent.

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And what Robert did was he said, we want to track these targets, this fleet of vehicles that are going to be driving around.

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We can't afford, they're too big, we can't put GPS in each one of these.

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So what we'll do instead, Robert said, was we'll have some mobile roving tracking stations, other vehicles.

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And we'll just put a couple out there.

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Those will have GPS.

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And then we'll triangulate the positions of all these vehicles, much more efficient back then in 94.

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A decade later, nearly a decade later, in 2003 with Curatolo, now GPS is far advanced.

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Curatolo says GPS are super small.

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You can hide them in a bracelet and a shoe.

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We'll just track them directly, send them to a monitoring station.

[00:01:24] Speaker 00:
Totally different system.

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And what the board did, using hindsight, was take Curatolo's monitoring station and tack it onto

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Robert system that already was monitoring in a different way, wouldn't need that.

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It made no sense to add the Curatola monitoring station on top of the Robert system that was already complete.

[00:01:48] Speaker 01:
And Robert emphasized... Wouldn't having a monitoring station improve Robert?

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It would not under what Robert was trying to accomplish.

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Robert emphasized that it is a, quote, truly mobile system where, quote, all of the components are mobile.

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And the notion of putting a centralized monitoring station that's fixed somewhere for Robert on top of the roving receive stations that are already- It doesn't have to be consistent with Robert's purpose.

[00:02:19] Speaker 03:
I'm sorry?

[00:02:20] Speaker 03:
It doesn't have to be consistent with Robert's purpose.

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if there's a motivation to add a monitoring station for other reasons.

[00:02:29] Speaker 00:
The problem was there was not a motivation.

[00:02:31] Speaker 01:
If a person of skill in the art... Well, it would be a motivation if it would improve, Robert.

[00:02:37] Speaker 01:
If it would improve, Robert... Even if you disagree that the improvement is somehow consequential.

[00:02:46] Speaker 01:
If it's an improvement, it's an improvement.

[00:02:48] Speaker 01:
That would be a motivation, would it not?

[00:02:51] Speaker 00:
If that were true, then yes, it would qualify.

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But here, it's not an improvement to Robert.

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Robert was going out of its way to indirectly triangulate the locations of the targets.

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And it did so without a monitoring station.

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The receive station that determined the target's locations itself would monitor.

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There was no, as the claims of our patent require, there was no sending of a signal to a separate centralized monitoring station.

[00:03:21] Speaker 00:
There was no communication with that monitoring station back to a user control, a user terminal.

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Robert's remote control that starts the system has no capability whatsoever to receive information from a monitoring station or otherwise.

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There were at least those three changes that the board had to make in order to combine these two references.

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And the way they did it.

[00:03:46] Speaker 01:
But it seems to me you're describing some limitations of Robert that would, that one of our skill in the art might be very interested in overcoming.

[00:03:59] Speaker 00:
It's not if you stay true to the Robert approach of having a truly mobile system.

[00:04:05] Speaker 00:
There was no motivation.

[00:04:07] Speaker 03:
One of the Robert claims, 36, talks about monitoring, right?

[00:04:12] Speaker 00:
Quaint 36 talks about a

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remote station, but under the evidence...

[00:04:20] Speaker 00:
No.

[00:04:21] Speaker 00:
No, Your Honor.

[00:04:21] Speaker 00:
It's not a monitoring station.

[00:04:23] Speaker 03:
I thought claim 36 used the word monitor.

[00:04:28] Speaker 03:
What page do we find claim 36?

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It does say, claim 36 does say that it can monitor.

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We don't dispute that the Robert system can monitor.

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The receive stations indeed monitor, and they can take action, such as if there's a problem, they can drive to the target.

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They can notify the authorities.

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Those receive stations are already monitoring.

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And the evidence, as to claim 36, was that the remote station discussed there was just another one of these triangulation stations.

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that itself was calculating the location of the target.

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After calculating the GPS location, at no point was it sent off to a separate station, as our claims require, where that separate station, the actual monitoring station, was connected back to the user terminal, which Robert did not have a user terminal that could receive any information.

[00:05:23] Speaker 00:
The board's analysis here was based on hindsight, and the way they did it was by cherry-picking parts of the references.

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When we emphasized these differences between the systems and why a person of skill in the art would not have been motivated to combine them, the board said, well, we're only looking at Curatolo for its remote monitoring station teachings, not its location determination features.

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But that misses the point.

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Under this court's case law, this court has said time and again, this is Eli Lilly versus Act Davis, quote, it is impermissible to pick and choose from any one reference, only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference barely suggests to one of ordinary skill in the art.

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Here, if a person of skill in the art in 2005, at the time of our invention,

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If they had Robert and Curitolo in front of them and asked, OK, what are you motivated to do based on these?

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Well, respectfully, they would look at Robert and say, we don't need your complicated, decentralized network of triangulation stations.

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Because now, as Curitolo says, GPS is miniaturized.

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It's small.

[00:06:39] Speaker 00:
You can easily hide it in a bracelet.

[00:06:41] Speaker 00:
We'll just do that.

[00:06:42] Speaker 00:
There's no reason to take Robert's outdated system of triangulation systems

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that itself could already monitor a fleet of vehicles, and that Robert emphasized was a truly mobile system where all the components are mobile.

[00:06:57] Speaker 03:
I'm still confused.

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If we look at 1446 and claim 36 of Robert, it talks about a display device being located at a remote station that communicates with said processor indicating the position of said target.

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Why isn't that the kind of monitoring

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the combination contemplates.

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Because when you look at what Robert is talking about for that remote station, that is just another, the board acknowledged that that remote station determines the target's location.

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It is not, as in our patent,

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There's a separate device that determines the target's location.

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And then there's a claimed signal that sends it off to a different station.

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The remote station in claim 36 of Robert is just another triangulation station.

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The board acknowledged that in a footnote.

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Uber's expert admitted it during his testimony.

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And so there is no separate monitoring station that gets a signal that connects back to a user terminal.

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The board's findings, when we presented this and explained how there's no motivation to combine, the board said that our arguments amounted to attacking the references individually.

[00:08:20] Speaker 00:
But that misunderstood our arguments.

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Our argument was not that we're attacking the references individually.

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We were demonstrating how there was no motivation to combine.

[00:08:30] Speaker 00:
Again, a person at the time, a person of skill and the art at the time,

[00:08:34] Speaker 00:
with Robert and Curitolo and asked, what are you motivated to do based on these?

[00:08:40] Speaker 00:
There's no reason to keep Robert's system that does not have GPS in the targets because it couldn't afford it if it was too big back then and put them in these roving stations and say, well, we'll do all that and we'll add a monitoring station on top when Robert was already monitoring through its mechanism.

[00:09:01] Speaker 00:
monitoring station that the board tacked on was redundant of the functionality that Robert's receive stations were already doing.

[00:09:10] Speaker 00:
And in the end, you know, this court's law, KSR's law... You're not arguing that Robert anticipates

[00:09:19] Speaker 00:
They have a ground that they say Robert renders obvious these claims, which is the ground under Claim 36, to your comment, Judge Dyke, to your question.

[00:09:31] Speaker 00:
That ground was not reached by the board.

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Here we're only talking about the combination

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of Robert and Curitolo, we'd be very pleased to go back and explain to the board on remand about why ground one, based on Curitolo alone, including claim 36, isn't enough.

[00:09:50] Speaker 00:
We don't have that here.

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Instead, what we have here is the combination.

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And again, the view that Curitolo would be combined.

[00:10:00] Speaker 03:
If 36 suggests that monitoring would be useful, which helps to suggest why you would take that from Sarandolo,

[00:10:07] Speaker 00:
monitoring but Robert was already monitoring it was already doing it in a different way and there's no basis to add a second monitoring system that now defies what Robert is emphasizing which is a truly mobile system where all the components are mobile and the board would say well we're gonna force upon you anyway this centralized static separate monitoring station that there's no disclosure communicates back to the user terminal

[00:10:36] Speaker 00:
even though the claims require it.

[00:10:39] Speaker 00:
So the point is there's no motivation.

[00:10:42] Speaker 00:
The board erred by just using hindsight.

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And this court should reverse on this ground two and send it back to address ground one, which is based on Curitolo alone, and claim 36, that disclosure, and ground three.

[00:10:56] Speaker 00:
But that only addresses two claims.

[00:10:57] Speaker 00:
So it's not a concern for us, because it's not relevant anyway.

[00:11:03] Speaker 00:
So we would ask for that relief.

[00:11:04] Speaker 00:
I'll reserve the rest of my time.

[00:11:07] Speaker 03:
Okay Mr. Haber.

[00:11:20] Speaker 04:
Thank you, honors.

[00:11:21] Speaker 04:
May please the court Benjamin Haver for Appellee Uber.

[00:11:24] Speaker 04:
I wanted to just mention a few things that aren't disputed here because I think it's important.

[00:11:28] Speaker 04:
The appellant doesn't dispute the board's expressed claim construction determinations, doesn't dispute the substantial evidence that the board found that Robert and Kurt Tolo teach all of these claim elements, and they frankly don't dispute the substantial evidence that the board found that one of skill in the art would have these two references together when they were trying to solve

[00:11:45] Speaker 04:
this problem.

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Instead, they raise only the following two issues on appeal.

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Appellant believes that Robert and Curatola would have been combined, but they would have been combined differently than the board found.

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And appellant believes that the evidence relied upon by the board for its motivations findings are insufficient.

[00:12:00] Speaker 04:
All of these complaints really just boil down to arguing against the substantial evidence on which the board's decision is based and does not approach the high burden for reversing such questions on appeal.

[00:12:13] Speaker 04:
I think to level set here, the combination that the board found by substantial evidence is important to have in mind.

[00:12:18] Speaker 04:
First, the board relied on Roberts's teachings for nearly all of the claim elements.

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Those are the elements related to the first and second tracking devices, the transmitted signals and identifications, determining the location of the tracked object.

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That all comes from Robert.

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That's set out in the board's final written decision at appendix 26 through 32.

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Second, the board brought in Corotolo for its teachings related to the backend monitoring stations and reporting functionalities.

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Specifically, the board relied on Corotolo Elements 105, which is the monitoring station, and 107, the remote receiver that's set out in the appendix at 3334.

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And lastly, the board relied on substantial evidence from both references as to what the combination would be.

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The combined system would allow for the performance of centralized tasks such as logging and monitoring the positions of a large number of vehicles such as a fleet of vehicles at a remote location.

[00:13:10] Speaker 04:
And that finding is at Appendix 34.

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The board's conclusions are plainly rooted in substantial evidence as the board set out in a bulletized list, setting out some of that evidence at appendix page 43.

[00:13:21] Speaker 04:
That is evidence from Robert regarding taking appropriate actions such as notifying authorities, logging positions,

[00:13:29] Speaker 04:
As Your Honor noted, they also relied on the teachings from Roberts Claim 36 that are suggestive of remote monitoring, that's at Appendix 1446.

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And they also relied on Roberts's specific teachings of monitoring fleets of vehicles, that's at Appendix 1438.

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And then turning to Corotolo, augmenting Robert's teachings, Corotolo teaches benefits of centralized monitoring.

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That's in its figure two at appendix 1449.

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And then Corotolo also teaches, similar to Robert, some benefits of doing the centralized monitoring, such as logging,

[00:14:05] Speaker 04:
vehicles, and that's at paragraphs 81 and 82 of Corotolo, appendix 1456.

[00:14:11] Speaker 04:
In addition to the references themselves, there is substantial unrebutted expert testimony from both Uber's expert and appellant's expert that the board relied on.

[00:14:24] Speaker 04:
for example, found that everything would have been implemented with routine and understood technology at the time.

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And they relied on these credibility determinations of expert testimony in supporting their opinion.

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And ultimately, all of this is substantial evidence supporting the board.

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And frankly, nothing that appellant argues in response undermines that substantial evidence.

[00:14:49] Speaker 04:
Appellant makes a few arguments.

[00:14:52] Speaker 04:
One, they argue that there was some burden that was placed on them.

[00:14:56] Speaker 04:
That is just not accurate.

[00:14:58] Speaker 04:
What the board did was made an express findings of motivations and expectations of success.

[00:15:02] Speaker 04:
And then the board, as it is instructed to do by this court, resolved all of the counter arguments that appellant made below regarding alleged differences between the references, regarding the argument that one of scale and the other would have added GPS or done something different than what the board said.

[00:15:18] Speaker 04:
Those were all refuted by the evidence itself.

[00:15:21] Speaker 04:
They were refuted by Roberts and Curatolo.

[00:15:26] Speaker 04:
I wanted to respond to a couple points that

[00:15:30] Speaker 04:
appellant made specifically as to the underlying decision.

[00:15:35] Speaker 04:
They argue that the board's decision was based on some improper timing.

[00:15:39] Speaker 04:
I think we have to take the board at its word and the board told us at appendix seven in the final written decision that they were going to consider obviousness at the time of invention and in fact they did.

[00:15:49] Speaker 04:
They relied on substantial expert testimony from both of the experts regarding technological complexities associated with GPS

[00:15:56] Speaker 04:
reasons why from Robert and from our technical experts explanation why one of skilling art would would take the path that they took, which is to maintain Robert's triangulation approach and add a monitoring station and they specifically relied on benefits that were taught by

[00:16:13] Speaker 04:
Curitolo of centralized control.

[00:16:16] Speaker 04:
So when there is a fleet of vehicles and those vehicles need to be monitored and there's a large number of those vehicles, you want to have a system operator, which is what Robert teaches, and you want to have that control done in a centralized fashion.

[00:16:28] Speaker 04:
And that benefit was specifically implemented by Curitolo's remote monitoring station, suggested by Robert, claim 36, and then in fact implemented by express teachings of Curitolo

[00:16:42] Speaker 04:
Another argument that patent owner makes is that there was some sort of redundancy that would be implied in this combination.

[00:16:48] Speaker 04:
That argument was presented below.

[00:16:49] Speaker 04:
It was rejected below.

[00:16:51] Speaker 04:
The system is not redundant.

[00:16:53] Speaker 04:
There is a set of functionality that is done in Robert's remote transmit and receive stations that is done in a decentralized ad hoc one-on-one type way.

[00:17:05] Speaker 04:
Robert suggests that it might be better to centralize that as time 36 and in fact in the combination That's what the curatola of teaching does it takes some of that functionality that is done in a one-on-one Point-based ad hoc approach and puts it into a remote monitoring station.

[00:17:21] Speaker 04:
So there is no redundancy In fact, it is an improvement on specific tracking functionality that is implemented by the teachings of curatola

[00:17:43] Speaker 04:
One other point that I wanted to make is regard to the board's treatment of this court's opinion in Tel Aviv Qualcomm.

[00:17:52] Speaker 04:
The board considered appellant's arguments and they acknowledged that what appellant was essentially arguing is that one of skill in the art would do something different in their view better than what petitioner was suggesting.

[00:18:05] Speaker 04:
The board rejected that argument because as this court held,

[00:18:08] Speaker 04:
It is not necessary to show that a combination is the best option, only that it is a suitable option.

[00:18:12] Speaker 04:
And after finding a motivation to combine and an expectation of success, they rejected patent owners' argument that there was some better way to do things, and held under KSR that the combination was nothing more than a predictable use of known elements for their intended purpose, and thus the claims were obvious under the applicable legal standards.

[00:18:32] Speaker 04:
So with that, unless your honors have any additional questions, I would ask your honors to affirm the finding of the board.

[00:18:39] Speaker 04:
And I thank you for your time.

[00:18:40] Speaker 03:
Thank you.

[00:18:42] Speaker 03:
Mr. Bradley.

[00:18:49] Speaker 00:
Just a few comments.

[00:18:51] Speaker 00:
So my opponent here said at the beginning that

[00:18:55] Speaker 00:
We, LBT, agree that Robert and Curitolo would have been combined by a person of skill in the art, but it would have done it for a different reason.

[00:19:03] Speaker 00:
I'm not sure if he's drawing a finer line than I have in mind here, but that is not true.

[00:19:07] Speaker 00:
We don't agree that a person of skill in the art would have combined Robert and Curitolo, and certainly not in the way that the board did here.

[00:19:16] Speaker 00:
He also argued to the court that

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Robert has essentially everything except for the monitoring station and specifically he said that Robert has all the transmitted signals that too is not true the monitoring station is required under the claims to get a second reply signal that is missing also the

[00:19:39] Speaker 00:
Monitoring station has to be connected back to the user terminal that is also missing and there was no basis to combine Curitolo with Robert to add all these functionalities when Robert had a complete system that was already successfully Monitoring the fleet of vehicles that were involved

[00:19:59] Speaker 00:
He also talked about the board's finding that it would have been suitable to make this combination.

[00:20:06] Speaker 00:
As the court knows, suitability is not enough.

[00:20:10] Speaker 00:
The court has been clear that obvious concerns, whether a skilled artisan not only could have made

[00:20:17] Speaker 00:
the combination, but would have been motivated to make.

[00:20:20] Speaker 00:
And our core point is that in 2005, a skilled artisan would not have been motivated to keep Robert's outdated, decentralized network of roving GPS.

[00:20:34] Speaker 00:
stations when, as Robert, excuse me, as Carl Tolo teaches, you could just put the GPS directly in the target.

[00:20:41] Speaker 00:
There's no reason a person of skill in the art would have kept the old Robert system and added on top of it a redundant monitoring station.

[00:20:50] Speaker 00:
And the board's view otherwise is hindsight.

[00:20:54] Speaker 00:
And if this court means what it says and if KSR meant what it said when it talked about the dangers of hindsight and talked about the importance of recognizing how a person of skill in the art needs to have a reason or a motivation to modify the prior art, this is that case.

[00:21:12] Speaker 00:
There is no motivation, and the board's finding otherwise should be reversed.

[00:21:18] Speaker 03:
unless there are questions.