[00:00:00] Speaker 03:
That leads to our final case this morning, number 241526, LBT IP versus UD Technologies.

[00:00:10] Speaker 03:
OK, Mr. Howell.

[00:00:13] Speaker 00:
Morning, Your Honors, and may it please the Court.

[00:00:15] Speaker 00:
The board found unpatentability of all challenged claims based on a misreading of the Hashimoto reference, particularly Hashimoto's call signal and how the central system in Hashimoto at step S35 evaluates whether the central system can communicate with the portable terminal.

[00:00:35] Speaker 00:
Based on that misreading, the board incorrectly determined that limitations 11D, 11E, and 11F, the only independent challenge claim, were obvious when they were not.

[00:00:45] Speaker 00:
Thus, LBT contends that this court should reverse the PTAP's decision.

[00:00:51] Speaker 00:
First, I'd like to focus on limitation 11D.

[00:00:55] Speaker 00:
All of the parties agree that step S35 does an evaluation of availability.

[00:01:00] Speaker 00:
That's not disputed.

[00:01:02] Speaker 00:
That's a selection of what is really two signals.

[00:01:05] Speaker 00:
The first of those is the call signal that goes from the central system to the portable terminal.

[00:01:12] Speaker 00:
And then there's a second signal there.

[00:01:14] Speaker 00:
And those are not the claimed first and second signals.

[00:01:16] Speaker 00:
That's something different.

[00:01:18] Speaker 00:
The second signal is a response signal that goes back.

[00:01:21] Speaker 00:
The determination of availability is based at the central system in S35.

[00:01:26] Speaker 00:
And it's based on that response signal.

[00:01:28] Speaker 00:
It's not based on the call signal.

[00:01:31] Speaker 00:
That's not, again, Uber pointed to the first signal, the call signal, as what's claimed in the 855 patent.

[00:01:38] Speaker 00:
So that's what it is limited to on appeal.

[00:01:41] Speaker 00:
It's tried to pivot to other signals, but we really need to focus on that first call signal.

[00:01:46] Speaker 00:
And it's at step S35.

[00:01:49] Speaker 00:
It's really the central system.

[00:01:50] Speaker 03:
There's three steps here.

[00:01:51] Speaker 03:
There's a call signal, there's a response, and then I guess there's a third signal, which I call a command signal.

[00:01:57] Speaker 00:
Yes, Your Honor.

[00:01:59] Speaker 03:
And before the board, the parties didn't seem to distinguish very carefully between what's called a call signal and what I've now called a command signal.

[00:02:08] Speaker 00:
Well, Your Honor, I think there were some pretty clear distinguishings.

[00:02:11] Speaker 00:
One is Uber's.

[00:02:12] Speaker 03:
But if the command signal is the first signal,

[00:02:19] Speaker 03:
The S-36 is something that occurs at the tracking device, correct?

[00:02:27] Speaker 00:
The S-36 does occur in the tracking device.

[00:02:29] Speaker 03:
They identified what I call the command signal.

[00:02:33] Speaker 03:
There wouldn't be a problem here.

[00:02:36] Speaker 03:
I'm sorry, Your Honor, I didn't... If they had identified the commands, what I call the command signal, but I don't think it was called that.

[00:02:45] Speaker 03:
as the first signal, that would have been adequate, right?

[00:02:50] Speaker 00:
No, Your Honor, because again, I think the selection is what occurs in S-35.

[00:02:54] Speaker 00:
It's not just evaluating the- I'm 36.

[00:02:57] Speaker 03:
36.

[00:02:58] Speaker 00:
No, Your Honor, S-35.

[00:02:59] Speaker 03:
No, no, no, I'm talking about 36.

[00:03:01] Speaker 00:
I understand, Your Honor.

[00:03:02] Speaker 03:
Because the board referred to both 35 and 36.

[00:03:04] Speaker 00:
Correct.

[00:03:05] Speaker 00:
But my point is that S36 is not selecting the signal.

[00:03:09] Speaker 00:
That's the limitation we're talking about.

[00:03:11] Speaker 00:
It's not necessarily just evaluating availability.

[00:03:15] Speaker 00:
It's then using that as a criteria.

[00:03:17] Speaker 00:
The limitation is selection criteria, referring to signal selection criteria.

[00:03:22] Speaker 00:
So in S36, when the portable terminal gets that request signal or the command signal, as you call it,

[00:03:29] Speaker 00:
It's not selecting that signal as being one on which the whole location determination is based.

[00:03:36] Speaker 00:
That determination is done... The whole thing is based on it.

[00:03:40] Speaker 03:
Certainly the command signal, what I've called the command signal, is a feature that helps to determine location.

[00:03:49] Speaker 03:
It's part of the chain of location determination.

[00:03:54] Speaker 00:
That's right, your honor.

[00:03:55] Speaker 00:
It does help the system, but really what we're looking at is what selects the signal, what is the criteria, and that is done in S35.

[00:04:04] Speaker 00:
As Hashimoto tells us, and this is throughout columns eight and nine on appendix 1183 and 84, it's the central system that's doing the checking and the judging and the commanding and the requesting.

[00:04:16] Speaker 00:
Those are the actions of selecting a signal.

[00:04:19] Speaker 00:
What the portable terminal does, it does not select a signal ever.

[00:04:22] Speaker 00:
It simply takes orders.

[00:04:24] Speaker 00:
That's not the same thing If you look to and also your honor just to address your point That command signal that was never addressed by the board It was not raised by uber in the ipr proceedings below the parties below didn't really distinguish between the call signal and the command signal

[00:04:42] Speaker 00:
Your Honor, with respect, I believe they did and you can see that both the petition page 25 and then you can see this even in Uber's appeal brief, the red brief at pages 17 through 18, it goes through the three signals.

[00:04:55] Speaker 00:
So the board clearly understood what signals it was referring to and it just got it wrong.

[00:05:01] Speaker 00:
This was not a case of any kind of ambiguity or unclarity in the

[00:05:06] Speaker 00:
in the briefings below, it was that Uber had picked the call signal and then picked step S-36 and that was that.

[00:05:13] Speaker 00:
And I'll find the petition at page 25 where this was argued.

[00:05:24] Speaker 00:
So this is Uber's petition, it's appendix 138 and

[00:05:33] Speaker 00:
What they tell you is the central system slash monitoring station transmits a call signal, the claimed first signal.

[00:05:40] Speaker 00:
So Uber there is very clearly identifying that it's calling that call signal the first signal.

[00:05:46] Speaker 00:
And then it says to the portable terminal to determine, and that again is referring to the central system determining,

[00:05:54] Speaker 00:
if the portable terminal slash tracking device can respond that's that second signal the response signal and receive a command that's the third signal for a position update and then going on again it says when it has been determined that the remote terminal can receive the call that's receiving the call signal at element s 35

[00:06:14] Speaker 00:
the central system commands that's referring to your call signal so that's uber in the petition very clearly talking about the three different signals and it very clearly only tells us that it's the first signal the call signal that it's pointing to and not the second or third and that's why if we go back to the board's decision the board's decision was very clear to that it was not relying

[00:06:41] Speaker 00:
Under the command or the request signal is relying on that first call signal on 149 And that's right That's why there is not substantial evidence is because they took one signal the call signal and then said it was evaluated at s36 when it was not and

[00:07:08] Speaker 03:
The command signals evaluated 36, right?

[00:07:11] Speaker 00:
Yes, again, but that's not selected using a selection criteria at the portable terminal.

[00:07:18] Speaker 00:
At that point, S35 has already selected which signals to use.

[00:07:24] Speaker 00:
Again, all the parties agree that S35 performs a signal selection.

[00:07:29] Speaker 00:
S35 says one of two things.

[00:07:30] Speaker 00:
Either we follow the yes branch to the left,

[00:07:33] Speaker 00:
and then we have the three signal process of the portable terminal or alternatively we go through that S39 branch down to the bottom.

[00:07:41] Speaker 00:
But the important point there is the signal selection criteria, the claim language, is referring to selecting which signals to use and it's the central system that does all of that.

[00:07:52] Speaker 00:
If the call signals received and responded to it's the central system that says let's go down as 35 and it's also the central system that says I'm going to send out this command signal and you're going you portable terminal are going to do what I said to do and using the signals that I selected again that's the central system that's not.

[00:08:12] Speaker 00:
the portable terminal doing that.

[00:08:14] Speaker 00:
And again, it's just rooted throughout columns 8 and 9 where the central system is judging and checking.

[00:08:20] Speaker 00:
That's not language that's used by the portable terminal.

[00:08:24] Speaker 00:
As Your Honor has characterized it, it's receiving a command.

[00:08:27] Speaker 00:
It's being told what to do.

[00:08:28] Speaker 00:
It's not getting to select anything.

[00:08:34] Speaker 02:
The board seemed to be relying on

[00:08:40] Speaker 02:
this factor of availability with respect to each signal.

[00:08:46] Speaker 02:
And it seems to me that that is sort of a critical point with respect to this call signal.

[00:08:55] Speaker 02:
Was the board correct in analyzing these signals on the basis of whether they were available?

[00:09:03] Speaker 00:
I think the board analyzed the availability part correctly but where the board faulted is it treated availability itself and availability determination is sufficient.

[00:09:14] Speaker 00:
But the issue is we're looking at signal selection criteria, not just availability.

[00:09:20] Speaker 00:
So signals can be available or unavailable.

[00:09:22] Speaker 00:
But the question is, which part of the system is making determinations about the flow of the system based on those signals?

[00:09:30] Speaker 00:
Which component is determining which signals are going to matter in terms of the location process?

[00:09:37] Speaker 03:
It would seem as though the tracking device is making that determination with respect to the command signal.

[00:09:43] Speaker 00:
Only for the claimed second, third, and fourth signals, not that first command signal.

[00:09:48] Speaker 02:
Well, but if the first command signal is not available, then the second, third, and fourth signals are not examined.

[00:09:57] Speaker 00:
Sure, but in that case, the portable terminal does nothing, right?

[00:10:00] Speaker 00:
The central system has done everything.

[00:10:03] Speaker 00:
So you still don't have the selection criteria being done.

[00:10:06] Speaker 03:
36 is at the tracking device.

[00:10:10] Speaker 00:
Well, the issue with step S. It is.

[00:10:12] Speaker 00:
Yeah, it is.

[00:10:13] Speaker 00:
Correct, Your Honor.

[00:10:13] Speaker 00:
I don't dispute that.

[00:10:14] Speaker 00:
The issue is that it steps S36, that selection has already been made.

[00:10:21] Speaker 00:
The portable terminal isn't determining that it should receive the request signal.

[00:10:26] Speaker 00:
That's the central system that's making that determination.

[00:10:28] Speaker 00:
That's what's selecting the importance of the request signal.

[00:10:32] Speaker 00:
It's the central system that determines whether the request signal should be sent or whether the path should go through to S39.

[00:10:44] Speaker 00:
Unless your honors have any other questions on 11D, I'll turn to 11E.

[00:10:50] Speaker 00:
The quick point on 11E is that the board was simply incorrect when it said the dispute was undisputed, or the limitation was undisputed.

[00:11:01] Speaker 03:
They discussed that under 11C.

[00:11:04] Speaker 00:
They did discuss some of it, Your Honor, but they didn't discuss two key points that I want to raise, Your Honors.

[00:11:10] Speaker 00:
They did not discuss the unavailability of the first signal.

[00:11:14] Speaker 00:
And the issue is, when the board said that this limitation was not disputed, it pointed only to Uber's petition at appendix 155 through 157.

[00:11:26] Speaker 00:
And that's the 11E section from Uber's petition.

[00:11:29] Speaker 00:
And the analysis that Uber sets out there

[00:11:32] Speaker 00:
is with respect to the unavailability.

[00:11:34] Speaker 00:
It's not with respect to availability.

[00:11:36] Speaker 00:
So all of those points about 11C that relate to availability, that's not Uber's argument in the petition.

[00:11:43] Speaker 00:
That's appendix 155 through 157.

[00:11:46] Speaker 00:
And to your point, Your Honor, the issue is

[00:11:48] Speaker 00:
If the board had said, and we address these issues elsewhere, it would have made a lot more sense.

[00:11:54] Speaker 00:
The problem is the board said that it was not disputed.

[00:11:57] Speaker 00:
It didn't cite to those other 11 C limitations.

[00:12:00] Speaker 00:
And the bigger problem is it left unaddressed.

[00:12:03] Speaker 00:
Number one, you have an unavailable call signal that you can't select that and you can't determine location based on that.

[00:12:10] Speaker 00:
Never address that argument, even though that's the focus of the parts of the petition that it cited.

[00:12:16] Speaker 00:
at appendix 155 through 157.

[00:12:18] Speaker 00:
Those points are unaddressed.

[00:12:20] Speaker 00:
It's also unaddressed how then you can take an unavailable signal, go through S39, and still meet all of the other surrounding limitations.

[00:12:29] Speaker 00:
And, Your Honors, I see that amount of time.

[00:12:31] Speaker 00:
I'm happy to answer any other questions that you may have.

[00:12:33] Speaker 00:
Otherwise, I'll reserve my time.

[00:12:36] Speaker 03:
Thank you, Your Honor.

[00:12:48] Speaker 01:
May it please the court, William Fink for Uber?

[00:12:50] Speaker 01:
Your honors, LBT's arguments seem designed to deconstruct the record and confuse issues that aren't very complicated, so I'll just try to clarify the issues disputed on appeal.

[00:13:04] Speaker 01:
So the three limitations you heard... Is the first signal the call signal or the command signal?

[00:13:09] Speaker 01:
Uber argued that the first signal is the call signal and the board agreed with that.

[00:13:16] Speaker 03:
S35 is not at the tracking device Which is where the call signals evaluated?

[00:13:25] Speaker 01:
That's correct, so s35 is Determined after the tracking device responds to the call signal So then there is a command sent from s35 to s36 s36 is waiting for its in a loop waiting for a command to initiate the tracking

[00:13:46] Speaker 01:
And so S-36 happens only after a call signal is received and responded to, Your Honor.

[00:13:53] Speaker 01:
And that was, essentially, you could argue that there were two signals.

[00:13:58] Speaker 01:
Uber didn't try to make that.

[00:14:00] Speaker 01:
That would have been more than necessary to satisfy the claim.

[00:14:05] Speaker 01:
So Uber said, okay, well, the first thing that has to happen is there's a call signal.

[00:14:10] Speaker 01:
and there's a response and the board acknowledged that in their final written decision that before you even get to S-35 there or at the point of S-35 there is a call and it's been responded to so that's the that's the evidence that Uber pointed to I think Judge Dyke to your point and I don't know if this was your point but I think it's fair to say the arrow going from S-35 to S-36 in figure two could have also that's a command signal

[00:14:40] Speaker 01:
That also could have been a first signal.

[00:14:43] Speaker 01:
It's not necessary to to go there, but it is the beginning of It is the beginning of the next step in the process which is to Have the tracking device search for three additional signals, and that's in figure two And I don't think the board and I don't think I

[00:15:05] Speaker 01:
Lbt's seriously disputed that availability of a signal is a selection criteria in claim 11 the claim 11 D so with respect to limitation 11 e The first of all the board addressed all of Lbt's arguments on the merits of claim 11 e where it found them and that was when addressing the 11 C arguments and

[00:15:34] Speaker 01:
And so what it says with respect to 11E when it got to 11E was to say, you know, we don't see additional arguments, we accept the evidence, and they moved on because there wasn't anything presented as a standalone argument under 11E.

[00:15:54] Speaker 01:
So on the merits, the board's fact findings on this limitation are similarly supported by substantial evidence.

[00:16:03] Speaker 01:
One thing that LVT raised was that 11E seemed to rely on Uber's argument that the signal was unavailable and what happens when the signal is unavailable and that's just not true.

[00:16:19] Speaker 01:
And it wouldn't make sense to rely on an unavailable signal.

[00:16:22] Speaker 01:
The point of the tracking device is to first get a command or first get a call and a command to initiate tracking

[00:16:29] Speaker 01:
and that's all done entirely on the left side of figure six at the tracking device and to start that it's available and the board understood that it was relying on an available signal it does this at appendix 44 for example

[00:16:50] Speaker 01:
Patent owner concedes if we accept petitioners arguments concerning a call signal as we do this scenario and it's referring to a four signal scenario in this scenario Hashimoto teaches the consumption and analysis of all four signals in certain situations so it's also at appendix 46 Hashimoto does teach determining at the remote terminal whether a call signal is available

[00:17:13] Speaker 01:
whether or not a rival is possible is judged depending on whether or not the portable terminal is sent a response signal in reply to a call signal.

[00:17:20] Speaker 01:
So that's happening at the portable terminal.

[00:17:27] Speaker 01:
And then finally for, the patent owner didn't raise 11F here, but the board's findings there are supported by substantial evidence.

[00:17:42] Speaker 01:
And so,

[00:17:44] Speaker 01:
I think unless there are other questions, I... Okay, thank you.

[00:17:56] Speaker 00:
Thank you, Your Honor.

[00:18:00] Speaker 00:
Two brief points.

[00:18:01] Speaker 00:
One, I think you heard Uber acknowledge that they pointed to the call signal in their petition, and that's what they had relied on.

[00:18:09] Speaker 00:
Call signal is not evaluated at S36 or S37, as the board incorrectly found.

[00:18:15] Speaker 00:
There's no substantial evidence backing that point.

[00:18:18] Speaker 00:
Reversal on that point has to be warranted.

[00:18:21] Speaker 00:
The only times the call signal is evaluated is either at steps 35 or before.

[00:18:27] Speaker 00:
Uber didn't point to those steps, and that's not what the board found at all.

[00:18:31] Speaker 00:
That's a lack of substantial evidence that requires reversal.

[00:18:35] Speaker 00:
Now, the second point is on 11E.

[00:18:38] Speaker 00:
The board was very specific in its order.

[00:18:41] Speaker 00:
It said that this was not a disputed element when it was.

[00:18:44] Speaker 00:
And it was raised at appendix 364 through 365.

[00:18:48] Speaker 00:
That's Uber's patent owner response.

[00:18:50] Speaker 00:
And it was also raised at appendix 470 and 471.

[00:18:54] Speaker 00:
And it was also briefly addressed at the end of the oral argument.

[00:19:01] Speaker 00:
And we asked the board if they had any questions.

[00:19:05] Speaker 00:
And they said no.

[00:19:06] Speaker 00:
And that was the time to figure out if 11E

[00:19:08] Speaker 00:
was disputed.

[00:19:09] Speaker 00:
One more quick point I want to make there.

[00:19:13] Speaker 00:
I think I heard Uber acknowledge that it would not make sense to rely on an unavailable signal.

[00:19:20] Speaker 00:
But that's the problem with what the board did.

[00:19:22] Speaker 00:
The board was free to cite any part of Uber's petition or the earlier proceedings in that 11E section on Appendix 47.

[00:19:30] Speaker 00:
But it didn't.

[00:19:31] Speaker 00:
It cited just one section of Uber's brief, the Uber 11E section, which is found

[00:19:38] Speaker 00:
at appendix 155 to 157.

[00:19:41] Speaker 00:
And the board didn't cite any of the other pages that Uber raised just now.

[00:19:47] Speaker 00:
Appendix 47, 48, none of those pages were addressed.

[00:19:52] Speaker 00:
It was only in that one section on 11E.

[00:19:55] Speaker 00:
And in that part, it only talked about Uber's petition on 11E.

[00:19:59] Speaker 00:
That's it.

[00:19:59] Speaker 00:
No other pages.

[00:20:01] Speaker 00:
Unless there's any other questions, Your Honor.

[00:20:03] Speaker 03:
Thank you.

[00:20:03] Speaker 03:
OK.

[00:20:04] Speaker 03:
Thank you.

[00:20:04] Speaker 03:
Thank you both, Counsel.

[00:20:06] Speaker 03:
Please, Assistant Judge, that concludes our session for this morning.