[00:00:00] Speaker 02:
Our next case for argument is 24-1741, Mizzito versus Apple.

[00:00:06] Speaker 02:
Ms.

[00:00:07] Speaker 02:
Addy, please proceed.

[00:00:09] Speaker 00:
Good morning, Your Honors.

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

[00:00:10] Speaker 00:
This case turns on whether the prior art to Tedesco, which deals with an aid for disabled persons, is reasonably pertinent to the patent which claims selection of a temporary payment card in a mobile wallet.

[00:00:29] Speaker 00:
The board legally aired in holding that Tedesco was reasonably pertinent to the problems faced in the 692 patent, which are more easily changing temporary payment card.

[00:00:41] Speaker 00:
First, the board's sua sponte determined that the problem faced by the 692 patent was, quote, display of time for certain payment related activities.

[00:00:52] Speaker 01:
Yet that is not what either party argued.

[00:00:57] Speaker 01:
There was a fair bit of flexibility.

[00:01:01] Speaker 01:
I don't mean to be pejorative.

[00:01:03] Speaker 01:
There was flexibility at various stages with the board, first with respect to the paragraph and the petition, but then with respect to the change from your patent owner response to your so reply.

[00:01:18] Speaker 01:
As to all of which, I think everybody had plenty of fair notice.

[00:01:22] Speaker 01:
So I don't see you're getting much

[00:01:28] Speaker 01:
making much progress in saying that there was some sort of procedural footfall.

[00:01:34] Speaker 01:
So can you focus on the substance of why, and I guess I take the board to have said this, if you look at what these inventors were trying to do was to make a very user-friendly way on screens of handling this payment card process.

[00:01:54] Speaker 01:
Part of what that goal was, was the user knowing when a timeout was about to occur.

[00:02:06] Speaker 01:
And with respect to that, therefore, there is an inherent what the board called sub-problem of making the notification of when the timeout is about to arrive user-friendly.

[00:02:23] Speaker 01:
Why isn't that enough?

[00:02:26] Speaker 01:
And you all agree here that even though we're doing a lot of reading of the spec, this is a fact question.

[00:02:35] Speaker 00:
I don't agree, Your Honor, that it's a fact question.

[00:02:37] Speaker 00:
And the way you phrased it is a fact question, but let me try to address it a little differently.

[00:02:47] Speaker 00:
You're right, Your Honor, the determination of the problem posed

[00:02:54] Speaker 00:
by the invention or the purpose of the invention as step two of the analogous art test says.

[00:02:59] Speaker 00:
The problem the inventor was trying to solve.

[00:03:02] Speaker 00:
Exactly and I think that's where in this case we get a little sideways because we don't talk about the problem the inventor was trying to solve which is set forth in the patent under the technical problem section and it is more easily changing a temporary payment card.

[00:03:21] Speaker 00:
Instead

[00:03:22] Speaker 00:
Without explaining why the board doesn't adopt that problem, the board goes to the solution section and it adopts the display of time for certain payment related activities.

[00:03:36] Speaker 00:
And there's no explanation for how it gets to the patent owner's stated problem from there and why that's not sufficient to the statement of a display of time, which is not really a problem at all.

[00:03:50] Speaker 00:
It's a statement.

[00:03:52] Speaker 00:
However, I think.

[00:03:54] Speaker 01:
If this is a substantial evidence question, then among other things, we get to look at evidence that might not have been cited by the board, right?

[00:04:07] Speaker 01:
The question of substantial evidence is on the record as a whole.

[00:04:12] Speaker 01:
But kind of in any event,

[00:04:15] Speaker 01:
The one paragraph technical problem statement includes this idea of resetting the setting of the temporary payment card when a payable time passes and other aspects of the spec make it reasonably clear that the inventor was trying to solve a problem that

[00:04:38] Speaker 01:
that included the user's knowledge of when that time passing would occur.

[00:04:44] Speaker 00:
But Your Honor, that's where I disagree, respectively.

[00:04:47] Speaker 00:
The patent owner was trying to solve the problem of more easily exchanging temporary payment cards.

[00:04:57] Speaker 00:
How he decided to do that, there are many different ways, how he decided to do that resulted in a timer.

[00:05:06] Speaker 00:
a petitioner combined four different references, but it couldn't find a timer in the relevant art, so it had to go to admittedly non-analogous art.

[00:05:16] Speaker 01:
Can I just ask, there's a reference not in the specific discussion of the analogous art, but I guess in the combination discussion in both their expert Huff's

[00:05:31] Speaker 01:
declaration and I think paragraph 123 and the petition at page 40 and the board cites this that says it was well known to use a, I forget the language, to use a timer or something like that and citing a video gaming patent.

[00:05:52] Speaker 01:
Does that have any bearing here?

[00:05:56] Speaker 00:
No, because they didn't use that for dealing with

[00:05:59] Speaker 00:
the analogous art, the admittedly non-analogous art reference that they relied on.

[00:06:04] Speaker 02:
Who's saying admittedly non-analogous arts?

[00:06:06] Speaker 02:
Who admitted it's not analogous arts?

[00:06:08] Speaker 00:
So I think it's helpful to walk through the procedure for a minute.

[00:06:10] Speaker 02:
No, who admitted it?

[00:06:11] Speaker 02:
I don't see any admission.

[00:06:13] Speaker 00:
The petitioner only argued step two of the analogous art.

[00:06:18] Speaker 00:
I'm sorry, the analogous art.

[00:06:19] Speaker 00:
So it admitted that it's not, I'm sorry, from the same field of invention.

[00:06:24] Speaker 00:
Okay.

[00:06:24] Speaker 04:
All right.

[00:06:25] Speaker 04:
Well, of course they admitted that it's not the same field of invention.

[00:06:27] Speaker 04:
That's why we're under the reasonably pertinent test.

[00:06:30] Speaker 04:
By definition, it's not in the same field of endeavor.

[00:06:34] Speaker 04:
If it was in the same, if the requirement was for analogous art was that it had to be in the same field of endeavor, that prong two would go away.

[00:06:44] Speaker 04:
So I don't understand why we're talking about it anymore.

[00:06:45] Speaker 00:
It doesn't have to be in the same field of endeavor, but step two says.

[00:06:48] Speaker 04:
But you keep trying to define the field that the relevant art as

[00:06:54] Speaker 04:
as so narrowly that it's the same field of endeavor.

[00:06:57] Speaker 00:
With all due respect, Your Honor, there was no determination of what the field of endeavor was because we skipped over step one and went straight to step two.

[00:07:05] Speaker 00:
And so generally the field of endeavor is something broad like digital wallet payment systems.

[00:07:13] Speaker 00:
And the patent specifically says here that the problem it was trying to solve, which is the

[00:07:20] Speaker 00:
test specifically, what is the problem the inventor was trying to solve, is that it was trying to make temporary payment cards more easy to swap out.

[00:07:29] Speaker 04:
And if your view is you can't go outside of temporary payment cards, then you are getting rid of step two, because temporary payment cards, all are for temporary payment cards would be in the same field of endeavor.

[00:07:45] Speaker 04:
So we, by definition, if we're on step two, we're outside of temporary payment cards.

[00:07:50] Speaker 04:
So when we're looking at whether something is reasonably pertinent or not, we have to be looking at a broader problem.

[00:07:59] Speaker 00:
Your honor, I don't disagree with you, but at the same time, if you go so broad as Apple's statement of the problem, visual tech.

[00:08:07] Speaker 00:
These are both about interfaces, right?

[00:08:09] Speaker 04:
The patent is an interface for using

[00:08:13] Speaker 04:
payment cards on, I'm assuming it doesn't have to be cell phones, but that's the best example.

[00:08:18] Speaker 00:
So that's the field of attention.

[00:08:20] Speaker 04:
The analogous art is an interface for disabled children to use cell phones with a timer.

[00:08:27] Speaker 04:
Why are those two interface things not reasonably pertinent to each other?

[00:08:32] Speaker 04:
At least enough to support a substantial evidence standard.

[00:08:38] Speaker 00:
Because one of skill in the art

[00:08:43] Speaker 04:
Let me take a step back.

[00:08:45] Speaker 04:
Do you think that if there's interface art out there, that one of skill and the art would confine themselves to financial technology and not look at interface technology for video games, for other kinds of things, even though they're on the same devices?

[00:09:00] Speaker 00:
I think the difference here is in how you define the problem.

[00:09:04] Speaker 00:
And let me say the board failed to consider Mosito's argument that Tedesco was not reasonably pertinent because of the definition of the problem.

[00:09:13] Speaker 00:
And it said, the patent owner failed to address the second prong.

[00:09:18] Speaker 00:
And yet, Mosito did address the second prong in four pages in its sir reply brief.

[00:09:24] Speaker 00:
And it was directly responsive to the first time that Apple had presented the analogous art argument in its reply brief after the decision to institute invited Apple to do so.

[00:09:37] Speaker 00:
And so, I want to go back to there's a legal error here.

[00:09:42] Speaker 00:
because the board failed to consider Mizoda's argument.

[00:09:47] Speaker 00:
The board relied on its own statement, and we disagree that it's the same statement, but at any event, if you think that that's an appropriate statement.

[00:09:58] Speaker 04:
Let's just assume we disagree with you about the legal argument error.

[00:10:02] Speaker 04:
Why is there a lack of substantial evidence that an interface patent with a timer used on a phone is reasonably pertinent to this?

[00:10:12] Speaker 00:
they didn't present substantial evidence.

[00:10:15] Speaker 00:
The only evidence that Apple relied on and the board relied on is Dr. Howe stating that Tedesco is analogous art because it's reasonably pertinent to the problem, which is visual display techniques.

[00:10:27] Speaker 00:
But there's no explanation for how you get there.

[00:10:30] Speaker 00:
How do you get from the problem set forth by the patent owner to this statement that's not really a problem at all?

[00:10:37] Speaker 00:
And they have to explain it.

[00:10:39] Speaker 00:
If the board doesn't explain it, then that is an error.

[00:10:42] Speaker 00:
And they only cited to Dr. Howe.

[00:10:46] Speaker 00:
Additionally.

[00:10:47] Speaker 01:
Can I ask, would there be something wrong?

[00:10:50] Speaker 01:
There may well be.

[00:10:51] Speaker 01:
So with saying the following, Dr. Howe stated a somewhat too general statement of the problem, because it didn't even make reference to timing at all.

[00:11:09] Speaker 01:
And the board said, that's a little too broad.

[00:11:12] Speaker 01:
Actually, the problem, it's important to say the general problem is as broad as you say, but there's an aspect of this when we look at the spec that includes a concern with the user knowing something about timing.

[00:11:31] Speaker 01:
Is there anything wrong with the board?

[00:11:34] Speaker 01:
exercising its judgment when it gets some evidence that it thinks is too broad and adjusting it by saying with enough support and giving you notice to respond.

[00:11:46] Speaker 00:
Two points on that, Your Honor.

[00:11:48] Speaker 00:
First, the board didn't do that.

[00:11:50] Speaker 00:
If it had talked about how it merged its statement of the problem with Apple's statement of the problem, that would be something we could analyze.

[00:12:00] Speaker 00:
But the board didn't do that.

[00:12:02] Speaker 00:
the board just adopted its own statement and didn't explain how it got from Apple's to its statement and your honor that's like the Corphonix case where I believe the statement was a little different and the court held we can't tell what the board was relying on and it remanded but in this case we're in a different situation because yes you could remand but I think you have to remand to require the board to address

[00:12:29] Speaker 00:
both problem statements, our problem statement that it ignored, and this statement.

[00:12:35] Speaker 00:
And when you look at Apple's statement, the support that's provided for Apple's statement is purely circular.

[00:12:43] Speaker 00:
So there's no reason really to remand, you can reverse, because there's no argument that under our statement of the problem, it's not analogous art.

[00:12:54] Speaker 00:
Let me reserve my time if there are no questions.

[00:13:02] Speaker 03:
Good morning, Your Honors.

[00:13:04] Speaker 03:
May it please the Court?

[00:13:06] Speaker 03:
Substantial evidence supports the Board's findings that Tedesco is reasonably pertinent to the problem of displaying time for certain payment-related activities with which the alleged inventor of the 692 patent was involved.

[00:13:18] Speaker 02:
What is the substantial evidence that Tedesco is, as you just said, reasonably pertinent to the timers problem?

[00:13:30] Speaker 03:
Yes, Your Honor.

[00:13:31] Speaker 03:
As some of the questions illustrated earlier, these were about mobile phone interfaces.

[00:13:38] Speaker 02:
No, you just said reasonably pertinent to the timer problem.

[00:13:42] Speaker 02:
So I want to know where the substantial evidence is that it is reasonably pertinent to the timer problem.

[00:13:48] Speaker 03:
Yes, Your Honor.

[00:13:50] Speaker 03:
Board at appendix 37 to 38 cites to Dr. Who's testimony and his citations to Tedesco.

[00:13:57] Speaker 02:
So where is the testimony?

[00:13:59] Speaker 02:
That's the evidence, right?

[00:14:00] Speaker 02:
That's the board.

[00:14:01] Speaker 02:
The board's opinion is not evidence.

[00:14:02] Speaker 02:
So where is the evidence, the substantial evidence?

[00:14:04] Speaker 03:
That's correct, Your Honor.

[00:14:05] Speaker 03:
Appendix 4580 to 4581.

[00:14:08] Speaker 03:
This is column two, lines three to five of Tedesco.

[00:14:13] Speaker 03:
And there it's discussing mobile terminal, a mobile terminal using appropriate, this is a quote, using appropriate graphical elements, end quote.

[00:14:22] Speaker 03:
And it provides an example, graphical countdown timers.

[00:14:25] Speaker 02:
Yeah, I certainly agree that Tedesco is related to countdown timers.

[00:14:32] Speaker 02:
What I'm looking for is where the board was presented with the idea that that is the problem.

[00:14:41] Speaker 02:
That's what I'm looking for.

[00:14:43] Speaker 02:
on the inventor side.

[00:14:45] Speaker 02:
For this inventor.

[00:14:46] Speaker 02:
This inventor was approaching that problem.

[00:14:50] Speaker 03:
I misunderstood the question.

[00:14:51] Speaker 03:
I apologize.

[00:14:52] Speaker 02:
That's okay.

[00:14:54] Speaker 03:
Going back to the 692 patent.

[00:14:56] Speaker 03:
So the 692 patent does start out in column one.

[00:15:00] Speaker 03:
As Judge Toronto referenced earlier, this is appendix 88, lines 47 to 57.

[00:15:07] Speaker 02:
It's talking about... Column one, there are lines

[00:15:11] Speaker 02:
47 to 57?

[00:15:12] Speaker 03:
Yeah.

[00:15:14] Speaker 03:
And there it's talking about resetting the setting of a temporary payment card when a payable time passes and doing so into... Hold on.

[00:15:22] Speaker 02:
I might be... Maybe I'm in the wrong place here.

[00:15:24] Speaker 02:
Where are you?

[00:15:26] Speaker 02:
I'm column one of the patent.

[00:15:27] Speaker 02:
We're talking the 692 patent, right?

[00:15:28] Speaker 03:
That's correct, Jenner.

[00:15:30] Speaker 02:
Column one, what page?

[00:15:31] Speaker 03:
That's Appendix 88.

[00:15:33] Speaker 02:
Okay, but column one, line

[00:15:35] Speaker 03:
47 just says technical problem.

[00:15:39] Speaker 02:
So are you in the technical problem?

[00:15:41] Speaker 02:
Is that where you are?

[00:15:42] Speaker 03:
That's correct.

[00:15:43] Speaker 03:
47 to 57 and it's at line 53.

[00:15:47] Speaker 03:
So it talks about resetting the setting of the temporary payment card when a payable time passes.

[00:15:54] Speaker 03:
And then it goes on to discuss.

[00:15:56] Speaker 02:
Okay, sure.

[00:15:56] Speaker 02:
But that doesn't, nothing in there

[00:15:59] Speaker 02:
has anything to do with a visual display for a user to be aware that this is the action of the resetting, the switcheroo that's going to take place, but not the presentation of information.

[00:16:12] Speaker 03:
Correct.

[00:16:13] Speaker 03:
I just, I'm trying to point to three different places.

[00:16:16] Speaker 02:
But no, but I want, but I just want to make sure that we agree with each of these things.

[00:16:19] Speaker 02:
So that doesn't say anything about visual display that's about

[00:16:24] Speaker 02:
And all those little fun little adverbs that they throw in there, easily, swiftly, naturally, amusingly, intuitively, none of those have anything to do with visual display.

[00:16:33] Speaker 02:
They have to do with the need to make the switch in the payment system less cumbersome and more easy, correct?

[00:16:41] Speaker 03:
I would respectfully disagree in the sense that they have to do with visual display.

[00:16:45] Speaker 03:
That information has to be communicated in some way.

[00:16:48] Speaker 03:
Otherwise, there's no way to interact or have

[00:16:52] Speaker 03:
have the user be able to use this mobile device without visually displaying the information somehow.

[00:16:59] Speaker 03:
That the board thing goes on.

[00:17:01] Speaker 02:
Wait, no, no.

[00:17:03] Speaker 02:
I don't see that in the technical problem.

[00:17:04] Speaker 02:
I don't see what you just said, and I want you to show me where that is.

[00:17:07] Speaker 02:
This says one or more exemplary embodiments provide a method for setting a temporary payment card.

[00:17:14] Speaker 02:
So setting a temporary card, okay?

[00:17:17] Speaker 02:
which sets as a temporary card a mobile payment card which is moved by the user from among mobile payments in a list.

[00:17:24] Speaker 02:
So what you have to have on display is the ability to move it.

[00:17:28] Speaker 02:
You gotta see it on a list, you gotta be able to move it, right?

[00:17:30] Speaker 02:
That's what you have to have.

[00:17:32] Speaker 02:
And then it says, and resets the setting of the temporary payment card when the payable time passes.

[00:17:39] Speaker 02:
Now, that has nothing to do with the user.

[00:17:41] Speaker 02:
That's the system.

[00:17:42] Speaker 02:
Resets it when the payable time passes

[00:17:46] Speaker 02:
Why do you need a timer for that?

[00:17:48] Speaker 02:
Why is the timer relevant for that?

[00:17:50] Speaker 02:
Surely there is a timer, but why is there a visual display of the timer at all relevant to the solution of that problem?

[00:17:57] Speaker 03:
Because the passage goes on to then describe so that a user can change the temporary payment card more easily, swiftly, naturally, amusingly, intuitively.

[00:18:06] Speaker 02:
Yeah, but the changing has nothing to do with the timer.

[00:18:08] Speaker 02:
The timer is what puts it back to the default.

[00:18:11] Speaker 02:
So you have a default card in your wallet, your mobile wallet, and you have the ability to slide another card over temporarily in place of the default card.

[00:18:20] Speaker 02:
And then when the time runs out, the default card pops back in.

[00:18:25] Speaker 02:
And so what does anything about that problem as described with all those fun little adverbs

[00:18:31] Speaker 02:
have anything to do with there being a clock that communicates to the user when the process will take place.

[00:18:38] Speaker 02:
This is about the switcheroo process, not about the user knowing the timing of the switcheroo process.

[00:18:45] Speaker 03:
Your Honor, the user doesn't know or wouldn't know what card is active without being given some sort of indication.

[00:18:51] Speaker 02:
Sure they would.

[00:18:52] Speaker 02:
It's the one on the screen.

[00:18:53] Speaker 02:
Oh my goodness, you look at all the pictures.

[00:18:54] Speaker 02:
The one that's active is the one right in the middle of the screen, right?

[00:18:57] Speaker 02:
Like, bingo, here's your card.

[00:18:59] Speaker 03:
Right, and the whole point of this, Your Honor, though, is such that the user can then use that card, right?

[00:19:04] Speaker 02:
Because they see it right there on the screen.

[00:19:05] Speaker 03:
Right, but to know how quickly they would need to tap the card or if they need to reset the timer, what have you.

[00:19:10] Speaker 03:
But the board's evident.

[00:19:11] Speaker 02:
How quickly?

[00:19:12] Speaker 02:
When it's not on screen anymore and a different card is on screen, then you know it's not on screen.

[00:19:17] Speaker 02:
You don't need a timer for that, do you?

[00:19:18] Speaker 03:
I need a timer for that?

[00:19:20] Speaker 02:
I mean, I can see one card on the screen, and then I see a different card on the screen.

[00:19:24] Speaker 03:
Your Honor, if there's only one second, for example, that wouldn't be enough time to tap the card or whatever we do.

[00:19:29] Speaker 02:
But the board's analysis doesn't... So the problem here is avoiding inadvertent tapping of wrong cards?

[00:19:33] Speaker 02:
I don't see that problem in this.

[00:19:34] Speaker 03:
Your Honor, the board's analysis isn't limited to the technical problem section, nor should it be, and it does cite two in column two as well as column five.

[00:19:44] Speaker 03:
And the reason it shouldn't be limited to the technical problem section is because it's improper for an inventor to be able to say, okay, my technical problem is this very narrow passage or this very narrow topic to exclude large swaths of evidence.

[00:19:59] Speaker 03:
That's why this court and the board, when it reviews this question, doesn't limit itself to one particular passage of the patent, but instead it looks to the patent as a whole to see what were the problems being addressed.

[00:20:12] Speaker 03:
One of those problems here, and this is also make.

[00:20:15] Speaker 02:
So here's the, here's the concern I have.

[00:20:17] Speaker 02:
There are lots of patents that say, here's the problem the inventor is challenged with and facing.

[00:20:23] Speaker 02:
And then over in the advantages section, usually they'll say, oh, and my, my might also have the advantage of being cheaper.

[00:20:31] Speaker 02:
Now, the problem the inventor was not trying to solve is how to be cheaper.

[00:20:34] Speaker 02:
But like the patentee might just articulate a lot of advantages.

[00:20:38] Speaker 02:
Another advantage of mine, I'm going to make it red, and that way people will see it more often.

[00:20:42] Speaker 02:
That doesn't mean this inventor started with the base problem of wanting people to see it more often.

[00:20:49] Speaker 02:
Isn't it possible that a lot of advantages could flow from an invention that are not the problem that motivated this inventor to make this solution?

[00:20:57] Speaker 03:
So here, Your Honor, I'm not talking about an invention.

[00:20:59] Speaker 02:
Yes or no question.

[00:21:00] Speaker 02:
Isn't it possible there are a lot of advantages listed in a patent, not every one of which has to be treated as the problem the inventor was trying to solve.

[00:21:08] Speaker 03:
That's correct.

[00:21:09] Speaker 03:
And I would agree with that here.

[00:21:10] Speaker 03:
We're not speaking about an advantage.

[00:21:12] Speaker 03:
We're talking about an additional problem that the inventor was trying to solve.

[00:21:16] Speaker 03:
For example, as the board points to a column two lines four to five.

[00:21:20] Speaker 02:
A method from a furthering additional probably better start to solve.

[00:21:23] Speaker 02:
I'm now going to be very circular on you and the reason we'd be very circular is because Your argument your expert testimony is timers are well known in the art and gotta be honest with you I think timers are well known in the art at that time But but that's a totally different and discreet question whether to desk goes analogous are but tired I think timers were awfully well known So why would this inventor be trying to solve the problem of visual timers on interfaces?

[00:21:47] Speaker 03:
The problem would be how to display that time, how to display the timer.

[00:21:53] Speaker 03:
There is, I agree with you, timers are well known, that concept is well known.

[00:21:57] Speaker 03:
The problem though is how to convey this particular, how to display the time for these certain payment related activities.

[00:22:06] Speaker 03:
And that's what the board points to at column two, lines four to five when it says there, it says the method may further include displaying a remaining payable time.

[00:22:16] Speaker 02:
And it doesn't.

[00:22:18] Speaker 02:
Okay, that language is as squish as it comes.

[00:22:21] Speaker 02:
It might do this.

[00:22:22] Speaker 02:
You know, how is that, I mean, if something is really the problem the inventor is trying to solve, you don't usually frame it in terms of, and you might also throw this in, you know, like you might do this as well.

[00:22:33] Speaker 03:
The board's analysis doesn't stop there, Your Honor.

[00:22:36] Speaker 03:
It continues on to column five as well through the testimony of Dr. Who, lines 40.

[00:22:42] Speaker 02:
Let me tell you.

[00:22:42] Speaker 02:
Look, the problem for me is it's not

[00:22:46] Speaker 02:
that I want to collapse the reasonably pertinent problem into the field of endeavor.

[00:22:51] Speaker 02:
But I do think they're integrated problems, they're integrated, the two factors are integrated.

[00:22:58] Speaker 02:
It has to be that a reasonably, an ordinarily skilled artisan, that person, you know, who say, I'll say Posa because he's not here, he doesn't like Posa.

[00:23:08] Speaker 02:
But it has to be that that person would choose to look to this.

[00:23:12] Speaker 02:
And I'm just finding it impossible to believe that a person working in the field of mobile banking and mobile payments and mobile wallets would go to a tool for autistic children so that their parents can tell them when to brush their teeth.

[00:23:27] Speaker 02:
Like that is just so far afield.

[00:23:30] Speaker 02:
I'll be honest with you, if you had just said or your expert just said that these things are well known in the art, full stop, I'd have been like, done, you know, check the box.

[00:23:39] Speaker 02:
But you didn't.

[00:23:39] Speaker 02:
You relied on this patent for this proposition that to me just seems like something a skilled artist would never have looked to.

[00:23:47] Speaker 02:
It reminds me of a case we had.

[00:23:48] Speaker 02:
We had Apple Samsung.

[00:23:50] Speaker 02:
And in this case, it was about the slide to unlock feature.

[00:23:52] Speaker 02:
And the slide to unlock feature was known to have been created to prevent butt tiling.

[00:23:57] Speaker 02:
And one of the pieces of prior art was the thermostat on the wall.

[00:24:00] Speaker 02:
Well, that's very unusual.

[00:24:02] Speaker 02:
Nobody's butt goes onto a thermostat.

[00:24:04] Speaker 02:
So I don't know how a slide to unlock on a thermostat patent is going to solve the butt tiling problem.

[00:24:09] Speaker 02:
That's kind of what this feels like.

[00:24:11] Speaker 02:
It feels like this tool for developmentally disabled children does not show, have any relevance to me and my little brain to mobile wallets and financial payments on the mobile system.

[00:24:24] Speaker 02:
I mean, that's the problem.

[00:24:26] Speaker 02:
That's where my heart is on this one.

[00:24:27] Speaker 02:
I'm just like, I'm really struggling.

[00:24:31] Speaker 03:
Your Honor, I appreciate the question.

[00:24:32] Speaker 03:
And I think it goes back to that point of this is interface art.

[00:24:37] Speaker 03:
This is a 692 patent.

[00:24:39] Speaker 03:
Talking about a mobile phone, how do we display time to communicate that to a user?

[00:24:43] Speaker 03:
We have Tedesco, which again is talking about mobile phones.

[00:24:47] Speaker 03:
How do we display time to communicate that to a user?

[00:24:50] Speaker 03:
And to Judge Toronto, your question earlier about what's well known in the art, and should judge more to your point as well.

[00:24:58] Speaker 03:
The board relies on that to help show why Tedesco would have logically commended itself

[00:25:04] Speaker 03:
to the attention of the inventor because it is well known to use timers in this field.

[00:25:09] Speaker 03:
And this is an example of using a timer on a mobile phone, which provides substantial evidence to support the board's findings here.

[00:25:21] Speaker 02:
I mean, if you win for me, it's going to be that substantial evidence standard that's going to be your winning saving grace because I just don't, I can't fathom a skilled artisan in the mobile payment method looking to a device whose purpose is to literally get autistic children to know when to brush their teeth.

[00:25:42] Speaker 02:
I mean, like that is just so far afield that I just can't imagine somebody really taxed

[00:25:49] Speaker 02:
with financial security and internet transactions thinking it would go to a tool for scheduling the day of a disabled child.

[00:25:58] Speaker 02:
It's just, you see my problem.

[00:26:02] Speaker 03:
And Your Honor, I think that's why we are not, when we are looking at step two of the analogous inquiry, we are not bound to a particular field of endeavor.

[00:26:10] Speaker 03:
We look at instead what logically would have commended itself to the

[00:26:16] Speaker 03:
It is a substantial.

[00:26:17] Speaker 04:
And the position basically comes down to this is interface hard.

[00:26:21] Speaker 04:
And software designers, when they're looking at ways to implement certain things in interfaces, are not going to combine themselves to one field of endeavor.

[00:26:30] Speaker 04:
They're going to look at how interfaces are used in other fields of endeavor.

[00:26:34] Speaker 04:
And if we agree with that, then you will.

[00:26:37] Speaker 04:
And I guess if we don't, if we find there's no substantial evidence for that, you don't win.

[00:26:42] Speaker 03:
That's correct, Your Honor.

[00:26:44] Speaker 03:
If there wouldn't be substantial evidence for that, it would be a remand back to the board to explain it further.

[00:26:50] Speaker 03:
And there are other issues remaining as well before the board on that.

[00:26:54] Speaker 03:
But we would ask this court to affirm.

[00:26:56] Speaker 03:
Thank you.

[00:26:56] Speaker 03:
Thank you, counsel.

[00:27:04] Speaker 00:
Thank you, Your Honors.

[00:27:05] Speaker 00:
I want to quickly address the question that Judge Toronto had on paragraph 123 of the Howe Declaration.

[00:27:11] Speaker 00:
that paragraph is directed to motivation to combine.

[00:27:16] Speaker 00:
And in order to get to motivation to combine, you've already decided that the reference is analogous.

[00:27:22] Speaker 00:
And so that does not support the substantial evidence that the Tedesco reference is analogous.

[00:27:29] Speaker 00:
Now, it did.

[00:27:31] Speaker 01:
But the board did cite that in the analogous art discussion at page 38.

[00:27:36] Speaker 00:
Yes, it did.

[00:27:37] Speaker 00:
But it doesn't support a determination that Tedesco is analogous.

[00:27:41] Speaker 00:
because it deals with motivation to combine, which comes later.

[00:27:45] Speaker 02:
And... I understand.

[00:27:46] Speaker 02:
You think a statement made in one place, which is a statement of fact about something, can't be utilized by the board for another aspect of the analysis?

[00:27:59] Speaker 00:
I would say sometimes it can and sometimes it can't.

[00:28:02] Speaker 00:
But here, Dr. Howell said specifically, a posito would have been motivated to use Tedesco

[00:28:09] Speaker 00:
countdown with Hurdle and Chitty and as modified by Spodak and that's assuming Tedesco's already in the mix and we haven't gotten to that point yet.

[00:28:23] Speaker 00:
Additionally, it's improper to say that the problem, while I understand the issue that the court has that the problem can't be the field of endeavor, I understand that, but it also can't be

[00:28:36] Speaker 00:
The problem the inventor was trying to solve is one limitation in a claim out of eight limitations that all go together to solve the inventor's problem.

[00:28:45] Speaker 00:
And indeed, it has to be the problem the inventor was seeking to solve, not this one little element, because it's an obviousness determination.

[00:28:53] Speaker 00:
Finally, my last point is that Apple had the burden, not Mozzito, and Apple didn't satisfy that burden.

[00:29:03] Speaker 00:
In fact, Apple didn't put forth any evidence in its petition.

[00:29:06] Speaker 00:
about analogous art.

[00:29:08] Speaker 00:
It had one boilerplate statement at 128.

[00:29:10] Speaker 00:
It wasn't until the decision to institute that the board recognized that patent owner, Mozzito, had put analogous art at issue.

[00:29:19] Speaker 00:
And then Apple addressed that issue for the first time in its reply, and that's where it came up with its statement of the problem, visual display techniques for integrating with a user.

[00:29:30] Speaker 00:
The fact that that may be different from the board's problem, that's Apple because it has the burden

[00:29:37] Speaker 00:
Thank you, Your Honors.

[00:29:38] Speaker 00:
I appreciate it.

[00:29:40] Speaker 00:
This case should be reversed.

[00:29:41] Speaker 00:
We thank both counsel.

[00:29:42] Speaker 00:
The case is taken under submission.