[00:00:00] Speaker 05:
The first case for argument this morning is 181163, Chestnut Hill versus Apple.

[00:00:08] Speaker 05:
Ms.

[00:00:09] Speaker 05:
Moser, whenever you're ready.

[00:00:28] Speaker 03:
Good morning.

[00:00:29] Speaker 03:
May it please the court, I'm Alexis Mosser from Caldwell Cassidy & Curry.

[00:00:33] Speaker 03:
I'm very proud to be here on behalf of Chestnut Hills Sound.

[00:00:37] Speaker 03:
This morning I have several topics I'd like to cover with the court.

[00:00:41] Speaker 03:
They can loosely be grouped into two categories.

[00:00:44] Speaker 03:
The first category relates to the problems that we've relayed to the court regarding the board's final written decision.

[00:00:50] Speaker 03:
This written decision wholesale adopts Apple's analysis, which in turn relies wholesale on Dr. Mercer's testimony.

[00:00:56] Speaker 03:
Essentially three paragraphs of Dr. Mercer's testimony are supposed to pull together the entire analysis, paragraphs 25 through 27.

[00:01:03] Speaker 03:
But those paragraphs are conclusory with scant citations to the record and should not be relied upon.

[00:01:10] Speaker 03:
Second, I'd like to spend just a few moments talking about the unconstitutionality of the application of the AIA statute to pre-AIA patents.

[00:01:18] Speaker 03:
The board was unable to consider this issue as it was outside the scope of their statutory grant.

[00:01:22] Speaker 03:
Thus, we raise it for the first time before this court.

[00:01:27] Speaker 03:
As the court has told the board a number of times, it's not enough to simply say, here are the elements of the prior art, and therefore we conclude your patent is obvious.

[00:01:37] Speaker 03:
There must be a reasoned analysis to get us from the elements to the conclusion.

[00:01:42] Speaker 03:
Our brief is primarily disposed to discussing the analysis based on the standard of known methods leading to predictable results.

[00:01:49] Speaker 03:
And this is because that's exactly how Apple and the court and Dr. Mercer evaluated these facts.

[00:01:57] Speaker 03:
And I'm happy also to discuss the grand factors, because I feel that the board failed to recite anything relating to factor two, as did Apple and Dr. Mercer.

[00:02:06] Speaker 03:
So under either evaluation, I don't believe that we meet the standard for obviousness under the court's jurisprudence.

[00:02:14] Speaker 05:
So can we talk about motivation specifically for a while?

[00:02:17] Speaker 05:
Motivation to combine.

[00:02:18] Speaker 05:
So you agree, do you not, that after KSR, it's not necessary to have an explicit written statement in the prior art with regard to motivation?

[00:02:32] Speaker 05:
Do you agree with that?

[00:02:34] Speaker 03:
I would agree that while it need not be explicit, it cannot be simply a desire to make a better product, which is all that we have here.

[00:02:43] Speaker 03:
And without some motivation, even an implicit motivation, there's no reason.

[00:02:48] Speaker 05:
What would have been necessary here or sufficient here to establish a motivation?

[00:02:55] Speaker 03:
I think establishing a motivation should have been some discovery in the prior art that there was a desire to create this bimodal invention, to manage the content in a way that easily and seamlessly transitioned between the first mode and the second mode, providing access in one user interface

[00:03:12] Speaker 03:
to both local and remote storage.

[00:03:14] Speaker 03:
And I don't think that the record before us shows that they found a motivation to combine the references in this way, whether implicit or explicit.

[00:03:24] Speaker 05:
But what kind of implicit?

[00:03:26] Speaker 05:
So give me an example hypothetically of the kind of evidence that would have to exist in the prior art sufficient to establish this implicit motivation.

[00:03:39] Speaker 05:
somebody saying something, somebody just trying to?

[00:03:44] Speaker 03:
Your Honor, I haven't considered what would have established an implicit motivation.

[00:03:47] Speaker 03:
And that's likely because, obviously, Apple had the burden to bring an implicit motivation or an explicit motivation.

[00:03:54] Speaker 03:
And thus, I'm not sure that I'm prepared to answer that question today.

[00:03:57] Speaker 03:
But I'm happy to show you why I don't think that Clements and Barton, which are the references I believe that they rely upon, don't provide an implicit motivation.

[00:04:04] Speaker 05:
Well, they do.

[00:04:05] Speaker 05:
I don't know where this is exactly in the briefing.

[00:04:08] Speaker 05:
But they provide, arguably, five different motivations to combine the references, right?

[00:04:15] Speaker 03:
Well, I agree that in one paragraph, they recite several things that they allege are motivations to combine.

[00:04:21] Speaker 03:
However, these alleged motivations to combine mirror almost exactly the motivations to combine that the court evaluated in the active video case.

[00:04:30] Speaker 03:
And if we go look at the court's analysis in that case, we find that those motivations to combine were conclusory and were not substantial enough to reach the result that

[00:04:42] Speaker 03:
that Apple is proposing here.

[00:04:44] Speaker 03:
So example, the expert's testimony on obviousness was conclusive because he didn't provide factual basis for his assertions.

[00:04:52] Speaker 03:
He didn't explain how the specific references could be combined, which combinations of elements and specific references would yield a predictable result, or how any specific combination would operate or read on the

[00:05:04] Speaker 03:
the asserted claims and obviously that doesn't directly answer your question but the direct answer to your question is his answer is a motivation to combine would be because you wanted to build something better you wanted a system that was more efficient cheaper or you wanted a system that had more features makes it more attractive to your customers

[00:05:22] Speaker 03:
Because by combining these two things, you could do something new that hadn't been able to do before.

[00:05:26] Speaker 03:
And that's almost exactly what Dr. Mercer said the motivation to combine was here.

[00:05:31] Speaker 03:
He said you'd want to have less equipment.

[00:05:33] Speaker 03:
You'd like to have it in one box with fewer power cords.

[00:05:36] Speaker 01:
Isn't that a degree of specificity that does constitute, particularly coming from the mouth of an expert, a real explanation of the factual basis for the motivation?

[00:05:52] Speaker 01:
and I'm reading from paragraph 26 of his declaration, reducing the amount of equipment a user needs to configure and maintain.

[00:06:01] Speaker 01:
That seems like a reasonable fact-based reference to why you would want to combine two things together.

[00:06:11] Speaker 01:
Ditto, reducing the space the equipment consumes and enabling one set of connections to the television.

[00:06:19] Speaker 01:
That all seems to me not just

[00:06:22] Speaker 01:
conclusory, but to be based on factual considerations that bear on whether this is something that somebody would want to do, don't they?

[00:06:33] Speaker 03:
Well, I think that it is something everybody wants to do.

[00:06:35] Speaker 03:
I mean, with the development of the microprocessor, clearly everything is trending towards smaller, more efficient, and faster.

[00:06:41] Speaker 03:
And I think that's why the active video court said these elements are generic and bear no relation to any specific combination of prior art elements.

[00:06:50] Speaker 03:
And it fails to explain why a person of ordinary skill would have combined elements in the way the claim convention does.

[00:06:56] Speaker 01:
So there's ample- Isn't he explaining that the person of ordinary skill would want to have fewer wires and connections and would want to have a reduced amount of equipment that needs to be configured and maintained?

[00:07:13] Speaker 01:
I'm not sure how you get more granular than that.

[00:07:16] Speaker 01:
What are you looking for that wasn't there?

[00:07:18] Speaker 01:
I guess I would put it that way.

[00:07:20] Speaker 03:
I think the granularity of it is probably irrelevant to the fact that it's simply a statement that you'd like it to be smaller.

[00:07:26] Speaker 03:
So a similar statement that would have no import to why this is a motivation to combine would be, I'd like to put the components closer together.

[00:07:33] Speaker 03:
It's the same thing.

[00:07:34] Speaker 03:
I'd like them to be cheaper because I put them closer together.

[00:07:38] Speaker 03:
And I don't think that that is the kind of specificity about why you would combine these references in that way that the court is typically looking for.

[00:07:45] Speaker 03:
in its jurisprudence.

[00:07:47] Speaker 03:
And I think more importantly is the second part of this statement.

[00:07:50] Speaker 03:
It fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.

[00:07:59] Speaker 03:
And that's sort of the delta between where the prior art was and where our invention was and how you cross that bridge.

[00:08:06] Speaker 03:
So we do have these motivations in some form or fashion, if I accept the court's interpretation.

[00:08:11] Speaker 03:
But those motivations don't necessarily lead us to the combination that's identified in the 309 patent.

[00:08:17] Speaker 03:
And the board and the declaration in Apple all rely on, again, as I said, these three paragraphs, 25 through 27, to find that crossing the bridge between the prior arch and the invention.

[00:08:31] Speaker 03:
But it's simply absent here.

[00:08:32] Speaker 03:
What they'd like to rely upon are the references of Clements and Barton.

[00:08:37] Speaker 03:
The references of Clements and Barton are only discussed in passing.

[00:08:40] Speaker 03:
There's one citation to them in the entirety of the expert reports.

[00:08:44] Speaker 03:
And the expert doesn't say how these references help us understand the mapping of these claim limitations from the prior art onto the 309 patent.

[00:08:55] Speaker 03:
And the board's decision doesn't give us any more understanding of the analysis of why Clements and Barton lead us to map the prior art onto the claims in any particular way or leads to a predictable result.

[00:09:07] Speaker 03:
And this is the thrust of what's missing from this analysis.

[00:09:11] Speaker 03:
Without some sort of help getting from point A to point B, we can't have a determination of obviousness.

[00:09:16] Speaker 03:
And what I would argue to the board is that in this case, it's even, well, I would say fairly egregious, because Chestnut Hill attempts to develop the record below on exactly this matter.

[00:09:27] Speaker 03:
Chestnut Hill notes that he says in his declaration, known methods.

[00:09:31] Speaker 03:
And they ask at the deposition, could you please identify the known method that you are saying will get you from point A to point B?

[00:09:38] Speaker 03:
And of course, we accept Dr. Mercer's testimony as a technical expert who should have these known methods within his body of knowledge or be able to find them within the prior art references.

[00:09:49] Speaker 00:
But if we... I agree.

[00:09:51] Speaker 00:
It's a close question.

[00:09:52] Speaker 00:
And I think that one always wonders when you have

[00:09:56] Speaker 00:
But when the prior art is in the same field of the invention and all of a sudden along comes this inventor and takes another step, if it was so obvious to combine these references, why isn't there some sort of suggestion in the prior art that we're looking at?

[00:10:17] Speaker 00:
However technology advances, the problems to be solved are somewhat different and

[00:10:26] Speaker 00:
As things work, the burden now is really to show the contrary, that a person of ordinary skill would not routinely have made this combination.

[00:10:42] Speaker 00:
And there we need to show where the board went wrong.

[00:10:46] Speaker 03:
And Your Honor, I agree with your analysis completely, of course.

[00:10:50] Speaker 03:
However, I think that in order to reach the point where we as the patentee have to show that it wouldn't have been obvious as an affirmative burden,

[00:10:59] Speaker 03:
Apple and the board have to show that it would have been obvious and as I alluded to earlier they didn't make that showing here because the second step of or the second factor of Graham is the differences between the claimed subject matter and the art and also because the fourth factor of Graham is the secondary considerations which were given short shrift by both Apple and the board so first I feel like we've discussed a little bit this idea that the differences between the claim subject matter and art and that's that Delta that I keep talking about and

[00:11:28] Speaker 03:
For them to be able to force us to provide affirmative evidence why this isn't obvious, they have to show that that delta is easily crossable.

[00:11:36] Speaker 03:
And this is what I was getting at with the idea that Dr. Mercer, as a technical expert, should have some indication for Chestnut Hill and for the board why they would have been able to make this analysis.

[00:11:47] Speaker 03:
In his declaration, the only time he talks about, and I do say known method, is how you would make this jump between the prior art and the 309 patent.

[00:11:57] Speaker 03:
is paragraph 26, where he states his conclusion that a posita would have modified the device operable to access a DVD jukebox over a network to include the PBR functionality of Baumgartner, because such a motivation amounts to simply combining prior art elements according to known methods to yield predictable results.

[00:12:16] Speaker 03:
And of course, this is the KSR standard, not the Graham Factors standard, but that's illuminating for our discussion of how you cross this delta between

[00:12:24] Speaker 03:
the claim subject matter in the art.

[00:12:26] Speaker 03:
And when we discussed this with Dr. Mercer and said, well, what known method are you referring to in the first sentence of paragraph 26?

[00:12:33] Speaker 03:
He says, so what's really being said there, as I think about it, is you have two sets of ideas.

[00:12:39] Speaker 03:
Those exist in the mind.

[00:12:40] Speaker 03:
a single person probably, or a team, but those are minds.

[00:12:44] Speaker 03:
It's a mind or mind of ordinary skill in the art.

[00:12:46] Speaker 03:
And then the point here is there's a process of synthesis with respect to any kind of creation.

[00:12:52] Speaker 03:
And one common way that synthesis occurs is to take ideas and to put those ideas together, or parts of these ideas, to accomplish something that's different than either one of these ideas by themselves.

[00:13:03] Speaker 03:
So this is what Dr. Mercer and Apple and the board rely on in order to say that they can reach the second factor of Graham to show that the differences between the claim subject matter and the art are not so substantive as to shift the burden to us to provide affirmative evidence that the patent isn't obvious.

[00:13:24] Speaker 03:
And Your Honor, Judge Newman, you did say that this could be a very small delta.

[00:13:31] Speaker 03:
I don't consider it close, obviously, because this is my client.

[00:13:35] Speaker 03:
But if we do consider it close, if we do say it's a small leap, how do you make the leap?

[00:13:42] Speaker 03:
How do you get from point A to point B?

[00:13:44] Speaker 03:
And don't we as Chestnut Hill have a due process right to understand how you're getting from point A to B so that we can provide testimony or evidence to say you didn't make it from point A to B?

[00:13:56] Speaker 03:
And that's what's completely lacking here.

[00:13:58] Speaker 03:
The board's analysis is

[00:14:00] Speaker 03:
expansive on the prior art elements.

[00:14:03] Speaker 03:
Expansive.

[00:14:05] Speaker 03:
But what both they and the Declaration are relying on is Barton and Clements to pull it all together.

[00:14:10] Speaker 03:
And there are no citations within Barton and Clements to help us understand how you would pull it all together.

[00:14:16] Speaker 03:
I see I'm running a little low on time.

[00:14:18] Speaker 05:
You're into your rebuttals.

[00:14:20] Speaker 03:
Oh, dear.

[00:14:22] Speaker 03:
Secondary considerations co-anticipated this completely during the prosecution.

[00:14:27] Speaker 03:
The examiner said that.

[00:14:28] Speaker 03:
There's no greater nexus than saying it was anticipated.

[00:14:32] Speaker 03:
The case that Apple cites to say that it shouldn't be a stop from arguing that is a stop from applying this is an estoppel case.

[00:14:42] Speaker 03:
So it doesn't tell us anything about how strongly related the patents are.

[00:14:45] Speaker 03:
And those secondary considerations are extremely strong and should be considered by the board.

[00:14:49] Speaker 05:
Thank you.

[00:14:50] Speaker 05:
I will reserve the remainder here from the other side.

[00:14:57] Speaker 04:
Thank you.

[00:14:57] Speaker 04:
Good morning, may it please the court.

[00:15:00] Speaker 04:
Just to do a reset here on the claim that we're looking at.

[00:15:04] Speaker 04:
This was an extremely broad claim that simply involved a device, a single device, where you would be able to access both local content and remote content.

[00:15:15] Speaker 04:
Appellate mentioned something about the ability to transfer seamlessly between the first mode and the second mode.

[00:15:21] Speaker 04:
There is nothing in the claim.

[00:15:23] Speaker 04:
about that.

[00:15:23] Speaker 04:
This is simply a device with the first mode that is local content and an explanation of that and a second mode.

[00:15:31] Speaker 04:
So it was undisputed that every element of the claim could be found in these two prior art references and it was undisputed that the two prior art references were in the exact field.

[00:15:43] Speaker 04:
They both played recorded digital content on television.

[00:15:47] Speaker 04:
So then the next question would be

[00:15:49] Speaker 04:
Well, where's the motivation to combine those two references, which is much of what your honors were discussing?

[00:15:55] Speaker 04:
And the expert in this case, unchallenged, Chestnut Hill presented no expert testimony, detailed at length what that motivation would be and gave five different motivations, all at paragraph 26.

[00:16:06] Speaker 00:
The motivation is in hindsight.

[00:16:09] Speaker 00:
We did combine it.

[00:16:11] Speaker 00:
But if it's so clear, how come none of these references even remotely suggest it?

[00:16:20] Speaker 04:
There is no, as your honor pointed out in your previous question, under KSR you don't have to find the motivation from... KSR does not say you never have to show a motivation.

[00:16:32] Speaker 00:
KSR says that you look at the facts and it says you don't have to always find it an explicit motivation.

[00:16:41] Speaker 00:
It doesn't say you never needed an explicit motivation.

[00:16:44] Speaker 04:
Oh, absolutely, Your Honor.

[00:16:46] Speaker 04:
I was just saying the KSR says you don't have to find it in the prior art references themselves, the two that you're using, for example, that you can find it elsewhere.

[00:16:54] Speaker 04:
For example, there are market pressures, there are design pressures to create a single device.

[00:17:01] Speaker 04:
And that's what essentially Dr. Mercer was talking about.

[00:17:04] Speaker 04:
is that the market gave the motivation to take a device where everybody would like to be able to access both their remote content and their local without having to have two controllers.

[00:17:15] Speaker 05:
So is it your view that just the same thing over and over again, the reduction in the amount of equipment, the increase in the efficiency,

[00:17:25] Speaker 05:
the reduction in the size, or that in and of itself is the motivation that we can just assume with respect to every obviousness case?

[00:17:36] Speaker 04:
No, Your Honor, because we had more here.

[00:17:38] Speaker 04:
I mean, we have that, which are very practical motivations, and also that would then enable you to have one remote controller, one plug,

[00:17:45] Speaker 04:
Those are all very positive motivations to reduce the device from two into one.

[00:17:50] Speaker 04:
But on top of that, what Dr. Mercer pointed out in paragraph 27 of his declaration is that it actually had been done before in other type of media devices, and that's where the citation of Barton Clements made.

[00:18:05] Speaker 04:
He could have just stopped and said, and it's been known to combine them in this fashion in the field

[00:18:10] Speaker 04:
full stop, and that would have been sufficient.

[00:18:12] Speaker 04:
But as the board found, he enhanced his credibility by actually pointing specific references to Barton and Clements.

[00:18:20] Speaker 01:
And I don't think here what the issue that Barton is the DVR and the DVD player?

[00:18:27] Speaker 04:
Yes, Your Honor.

[00:18:28] Speaker 04:
OK.

[00:18:29] Speaker 04:
And then I think Clements was the PVR.

[00:18:31] Speaker 04:
Right.

[00:18:32] Speaker 04:
OK.

[00:18:32] Speaker 04:
Go ahead.

[00:18:33] Speaker 04:
And I think what really, though, we're hearing from appellant is it's a somewhat shifting argument, which is

[00:18:39] Speaker 04:
They don't dispute that there were set out by Dr. Mercer actual motivations.

[00:18:45] Speaker 04:
And they don't dispute that the prior art references have all of the elements.

[00:18:50] Speaker 04:
What I heard at the end is where Dr. Mercer allegedly failed, and therefore why the board's opinion is not supported by substantial evidence, is that he failed to say how you would combine those two references.

[00:19:03] Speaker 04:
Now, that argument first came up in Appellant's reply brief.

[00:19:06] Speaker 04:
So we haven't had an opportunity to really respond to it.

[00:19:09] Speaker 04:
But assuming what they're saying is that Dr. Mercer and the board failed to explain how physically you would attach Abiezi to Baumgartner, I would respectfully submit that's actually not the law.

[00:19:24] Speaker 04:
And I would refer the court.

[00:19:27] Speaker 04:
And again, this is not in our briefing because the how came up in the reply brief.

[00:19:30] Speaker 04:
But one example that addresses this is the Inray-Berwin-Eder case that can be found at 756 F.

[00:19:39] Speaker 04:
2nd, 852.

[00:19:43] Speaker 04:
And in that case, this was in a re-exam proceeding, the same issue came up.

[00:19:49] Speaker 04:
And what the court held is that Eder's assertions that Azure cannot be incorporated into Ambrosio are basically irrelevant.

[00:20:00] Speaker 04:
being not whether the references could be physically combined, but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.

[00:20:11] Speaker 04:
And so this how argument that just came up has already been addressed and rejected in the past.

[00:20:18] Speaker 01:
The patent, I don't think the claim has any specific reference to any

[00:20:27] Speaker 01:
particular way of combining the two.

[00:20:29] Speaker 01:
I mean, they could be glued together.

[00:20:31] Speaker 01:
They could be nailed together.

[00:20:33] Speaker 01:
They would all be within the scope of the patent together, right?

[00:20:37] Speaker 04:
Absolutely.

[00:20:38] Speaker 04:
The patent is silent as to how you even go from one mode to another, or whether you even have to have one mode playing and the other mode not.

[00:20:46] Speaker 04:
You could be playing both at the same time.

[00:20:49] Speaker 04:
It's a very, very broad claim.

[00:20:51] Speaker 04:
And while appellants cite one portion of Dr. Mercer's testimony on this Howe issue, I would submit and cite another.

[00:21:01] Speaker 04:
At Appendix 1194, Dr. Mercer was asked the specific question, can you identify any known methods familiar to a skilled artisan

[00:21:12] Speaker 04:
in the first sentence of paragraph 26 of your declaration.

[00:21:15] Speaker 04:
And he said, sure.

[00:21:17] Speaker 04:
I mean, probably the simplest one is you take two separate things, and if they're compatible, you plug them together.

[00:21:24] Speaker 04:
And if they're not compatible, you form some sort of interface and plug them together.

[00:21:29] Speaker 04:
So he actually did explain even the physical how of combining Baumgartner and Aviesi, even though he wasn't required to.

[00:21:38] Speaker 04:
And if we look again at paragraph 26 of his declaration, it doesn't just lay out the motivation as to why.

[00:21:46] Speaker 04:
He actually even gets more specific as to the how and these two references in particular.

[00:21:52] Speaker 04:
He says, a posita would have modified the device of abiesi.

[00:21:57] Speaker 04:
So he's saying start with abiesi.

[00:21:59] Speaker 04:
He's not just saying just put them together.

[00:22:01] Speaker 04:
Start with abiesi.

[00:22:03] Speaker 04:
operable to access the DVD jukebox over a network and include the PVR functionality of Baumgartner.

[00:22:11] Speaker 04:
So he's actually teaching how to physically do this combination.

[00:22:17] Speaker 04:
And then he goes on and says, and here we have the why and the how almost kind of merging together, that you would then reduce the amount of equipment that a user would need to configure and maintain

[00:22:30] Speaker 04:
You would reduce the space the equipment consumes in the user's television cabinet.

[00:22:35] Speaker 04:
You would facilitate using the devices with a common remote control.

[00:22:39] Speaker 04:
So he's teaching, after you put them together, have one remote control.

[00:22:43] Speaker 04:
And you would then enable one set of connections to the television.

[00:22:48] Speaker 04:
So he's really kind of teaching a physical how, even though, again, he's not required to.

[00:22:53] Speaker 04:
But what's even more telling is that on page 21 of Appellant's blue brief,

[00:23:00] Speaker 04:
They concede, and I want to get the language exact, there are countless features a Posita could put in a set-top box.

[00:23:11] Speaker 04:
Video conferencing, DVR, music jukebox, photo editing tools, home movie storage, et cetera.

[00:23:19] Speaker 04:
While a Posita might have the technical ability to combine those features in one box, that does not mean any possible combination of those features is obvious.

[00:23:29] Speaker 04:
And we agree.

[00:23:31] Speaker 04:
And we're not talking about, would it have been obvious to combine in one box photo editing tools with home movie storage?

[00:23:39] Speaker 04:
We're simply talking about, would it have been obvious to combine in one box the ability to access your local content and your remote content?

[00:23:47] Speaker 04:
And the answer is yes.

[00:23:49] Speaker 04:
And Appellant has conceded at page 21 in their blue brief that a posita would indeed have the technical ability to do so.

[00:23:56] Speaker 04:
I have one minute left, which I have to give to my counsel if Your Honor wants to hear about the unconstitutionality.

[00:24:05] Speaker 01:
The local and remote is, Clements has that feature, correct?

[00:24:11] Speaker 05:
Yes, Clements also has that feature, Your Honor.

[00:24:13] Speaker 05:
But actually, no, this is your time.

[00:24:15] Speaker 05:
We gave you 10 minutes on your clock.

[00:24:16] Speaker 04:
Oh, you did?

[00:24:16] Speaker 04:
Oh, thank you very much.

[00:24:17] Speaker 05:
So you haven't cut into the other.

[00:24:18] Speaker 04:
I thought I had.

[00:24:20] Speaker 04:
Thank you.

[00:24:21] Speaker 04:
Then I will go, unless your honors have some more questions about that, and describe briefly and address briefly COE and whether or not COE actually provides secondary considerations.

[00:24:32] Speaker 04:
So it's interesting, because at the board, Appellant argued that COE showed a long-felt need.

[00:24:41] Speaker 04:
And the board rejected that and said, no, you didn't do any mapping of COE to the 309 claims.

[00:24:48] Speaker 04:
You just looked at the abstract.

[00:24:49] Speaker 04:
So it doesn't meet the criteria of you showing a secondary consideration of non-obviousness.

[00:24:57] Speaker 04:
Then Appellant in their blue brief at page 28 says that the PTAB considered Coe as a secondary consideration, and they cite appendix 38.

[00:25:06] Speaker 04:
And it's true they did, because that was what Appellant urged them to do.

[00:25:10] Speaker 04:
Now they argue this evidence is not rightly any of these.

[00:25:14] Speaker 04:
It is essentially sworn testimony from Apple's engineers regarding the state of the art.

[00:25:20] Speaker 04:
So this is a new argument for why you should listen to Co.

[00:25:23] Speaker 04:
So then at page 35 of the red brief, we cite Wires versus Master Lock and quote, what Master Lock's employees subjectively knew or believed at the time they filed their patent is irrelevant.

[00:25:37] Speaker 04:
So in other words, this directly addresses their new use of Co.

[00:25:41] Speaker 04:
Now, on page 17 of the reply brief, appellant reverts back to arguing that CO is a secondary consideration.

[00:25:49] Speaker 04:
And once again, that was rejected by the board because there was no analysis done of CO, simply looking at the abstract of CO without doing any mapping to the 309 claims at issue.

[00:26:00] Speaker 04:
So CO is really an irrelevancy here as the court, as the board rightfully found.

[00:26:07] Speaker 04:
Thank you.

[00:26:08] Speaker 04:
Thank you very much, Your Honors.

[00:26:21] Speaker 02:
Good morning, and may it please the court.

[00:26:22] Speaker 02:
Courtney Dixon for the United States.

[00:26:24] Speaker 02:
We've intervened to address the constitutional issues.

[00:26:27] Speaker 05:
So we've seen this argument before.

[00:26:30] Speaker 02:
Absolutely, Your Honor.

[00:26:31] Speaker 05:
But it's usually with Ms.

[00:26:32] Speaker 05:
Allen, right?

[00:26:33] Speaker 05:
Are you the new substitute?

[00:26:34] Speaker 02:
We're shaking up the batting order today.

[00:26:37] Speaker 02:
As Your Honor mentioned, there are a lot of these cases currently pending before this court.

[00:26:41] Speaker 02:
In at least one of those cases, the issue was preserved before the board.

[00:26:46] Speaker 02:
In this case, of course, Chestnut Hill.

[00:26:48] Speaker 05:
Is that the golf?

[00:26:49] Speaker 05:
something or other case.

[00:26:51] Speaker 02:
Agarwal versus Topgolf, Your Honor.

[00:26:52] Speaker 02:
That's 18.

[00:26:53] Speaker 05:
We heard about that last month when we were on a panel.

[00:26:56] Speaker 02:
I know it's starting to sound like deja vu, Your Honor.

[00:26:58] Speaker 02:
And of course, we think even if this court reaches the merits, those are easily disposed of.

[00:27:02] Speaker 02:
I'm happy to not go into any more detail unless the court has specific questions.

[00:27:10] Speaker 01:
I guess I would like to ask one question, which is whether the Department of Justice has settled on a position with respect to the question

[00:27:18] Speaker 01:
of whether the board has the authority to decide the constitutionality of the procedure.

[00:27:24] Speaker 02:
Well, as we mentioned in our brief, Your Honor, and I think this has been consistent across our briefs, we think that absolutely parties can and should raise these issues to the board.

[00:27:31] Speaker 01:
I understand that you've certainly said, but the question on which I think there's been, I don't know if I'd go so far as to say waffling, but there's at least been, for me, some lack of precision and clarity as to the department's position is

[00:27:47] Speaker 01:
How far can the board go by way of doing constitutional analysis in a challenge that's directed to its own procedures?

[00:27:59] Speaker 02:
Your Honor, I apologize for any imprecision.

[00:28:01] Speaker 02:
And I think it does depend on what you mean by addressing the constitutional question.

[00:28:05] Speaker 02:
Of course, we don't think the board could strike down an act of Congress as the board.

[00:28:09] Speaker 01:
But the board would say that you don't think they could strike down an act of Congress?

[00:28:13] Speaker 02:
No, Your Honor, but the board could, of course.

[00:28:15] Speaker 01:
Well, perhaps it wouldn't have the effect of invalidating the act of Congress.

[00:28:21] Speaker 01:
But my question is, can the board say, you know what?

[00:28:24] Speaker 01:
We have looked at this.

[00:28:25] Speaker 01:
We've analyzed all the constitutional arguments.

[00:28:29] Speaker 01:
We believe they are correct.

[00:28:31] Speaker 01:
And therefore, we hold that we don't have the power to conduct this proceeding.

[00:28:37] Speaker 02:
I think so, Your Honor.

[00:28:38] Speaker 02:
And as we've mentioned in these other cases, the board could, of course, decline to institute proceedings if you thought there was a serious constitutional.

[00:28:47] Speaker 01:
I've heard you make that argument, or the department make that argument before a bullet.

[00:28:51] Speaker 01:
I haven't heard whether they could actually say, OK, without saying we're not going to proceed in this case because we're nervous about the constitutional issues, can they

[00:29:03] Speaker 01:
Implement, can they take a case and then decide the constitutional question front and center?

[00:29:10] Speaker 01:
Can an agency, in other words, more broadly, can an administrative agency issue an order saying that its own statute is unconstitutional, whether it's the NLRB, the Merit Systems Protection Board, or the board?

[00:29:27] Speaker 02:
I hesitate, I guess, to go too far outside of what we've said in our brief, Your Honor, which is that we think, of course, that the board

[00:29:33] Speaker 02:
can address these issues?

[00:29:34] Speaker 01:
But you've said in the brief that they can do so by saying we're not going to institute.

[00:29:40] Speaker 01:
But you haven't gone any farther than that.

[00:29:42] Speaker 01:
And I'm wondering whether your position is they could institute in the case and then decide, no, the statute is unconstitutional.

[00:29:52] Speaker 01:
We cannot grant the relief that the petitioner is looking for.

[00:29:56] Speaker 02:
I think declining to institute is a version of that, Your Honor.

[00:29:59] Speaker 02:
And I would say that the Supreme Court in Elgin.

[00:30:01] Speaker 01:
Suppose that they institute and then they decide that they want to reach the constitutional question.

[00:30:07] Speaker 01:
I'm just, this decline to institute, I'm not satisfied that that actually grapples with the question of whether the agency has this authority or not.

[00:30:17] Speaker 02:
Well, the Supreme Court in Elgin stated that the board or an agency could, of course, reach threshold issues.

[00:30:21] Speaker 02:
So if the board had thought that there was a serious constitutional problem, it could, of course,

[00:30:26] Speaker 02:
and set out its views on the issue, as opposed to whether, again, we don't think that it could hold a provision of Congress unconstitutional.

[00:30:33] Speaker 02:
We think, as we said, the remedy would be either to decline to institute, which

[00:30:38] Speaker 02:
That would be what the board would do.

[00:30:39] Speaker 05:
Typically, I mean, the cases we've seen include, I mean, the board wrestles with this issue once they've instituted.

[00:30:46] Speaker 05:
So it wouldn't be declining to institute.

[00:30:47] Speaker 05:
It would be vacating their institution.

[00:30:51] Speaker 05:
Is there a procedure they're doing?

[00:30:52] Speaker 02:
Perhaps I'm struggling to answer this question, because it just hasn't happened yet.

[00:30:56] Speaker 02:
In the Topgolf case, the board resolved the constitutional issue in a couple of paragraphs by citing to this court's opinion in Patlex.

[00:31:02] Speaker 05:
Because is there a difference between the actual constitutional question that arises?

[00:31:07] Speaker 05:
Because there is, and we've got our, I can't think of the name now, but we've got our precedent.

[00:31:12] Speaker 05:
In some certain, particularly due process issues, the board would have the ability, arguably, to provide relief in certain circumstances.

[00:31:23] Speaker 05:
Whereas if we're dealing with a taking issue, not so much, right?

[00:31:27] Speaker 05:
So is that a factor that might differentiate, in other words, the type of claim that's being made in terms of what the authority is of the agency?

[00:31:37] Speaker 02:
I think the type of constitutional claim matters.

[00:31:38] Speaker 02:
And of course, this court in DBC, which involved an appointments clause claim, held that claim forfeited when the party didn't raise it before the board.

[00:31:45] Speaker 02:
Because in that circumstance, the board could have taken actions to correct the constitutional problems that were raised before it.

[00:31:51] Speaker 02:
So I do think that looking claim by claim is a helpful way of approaching this.

[00:31:56] Speaker 02:
But here, of course, we think that it could have been raised in the first instance.

[00:31:59] Speaker 02:
The board could have addressed several threshold issues, even if it didn't reach the ultimate constitutional question.

[00:32:04] Speaker 02:
But of course, if the board were to reach the question, like we think if this court were to reach the question, the merits are easily disposed of.

[00:32:11] Speaker 02:
As we've noted numerous times in our brief, we think the retroactivity question is foreclosed by Patlex.

[00:32:17] Speaker 02:
I'll also note that in this case in particular, Chestnut Hills patent was issued after the effective date of the AIA, so their retroactivity challenge can be rejected on that basis alone.

[00:32:29] Speaker 02:
Thank you very much.

[00:32:37] Speaker 05:
You've got some rebuttal time.

[00:32:39] Speaker 05:
We'll restore two minutes.

[00:32:50] Speaker 03:
Your Honors, Apple has characterized our briefing as only belatedly addressing how these references might be combined.

[00:32:58] Speaker 03:
How is essentially the known methods of combination, which we assert are not addressed here.

[00:33:04] Speaker 03:
Barton and Clements are what they rely on to show that they combined these methods, or excuse me, combined these references and how it would have been done.

[00:33:12] Speaker 03:
Barton is a patent that is on its face addressed to digital video recording systems with integrated DVD recordings.

[00:33:20] Speaker 03:
If you look at the figures, it doesn't appear on its face to relate, and there's no mapping to how it might relate.

[00:33:26] Speaker 03:
The only citation in the record is that one line in paragraph 26.

[00:33:30] Speaker 03:
Likewise, Clements is even worse.

[00:33:32] Speaker 03:
It's a client-side caching of streaming media content.

[00:33:36] Speaker 03:
So it deals a lot with modulating and demodulating, depending on how the content comes in.

[00:33:43] Speaker 03:
This is not a mapping of their prior art onto our claims.

[00:33:51] Speaker 03:
Essentially, I like to think of this mapping that we are looking for, or the how, or the known methods as kind of like a reverse enablement.

[00:33:58] Speaker 03:
Did the expert in this case enable

[00:34:01] Speaker 03:
the prior art references to achieve the 309.

[00:34:04] Speaker 03:
And he did not.

[00:34:05] Speaker 03:
And Apple accuses us of not showing how these references would have been combined.

[00:34:11] Speaker 03:
And they say that this testimony on 1194 is enough.

[00:34:14] Speaker 03:
You just plug two things in.

[00:34:17] Speaker 03:
But clearly, it's more than just plugging two things in.

[00:34:20] Speaker 03:
And if you read our patent figures 1 and 12 show how we would have plugged them in, plug being the wrong word here.

[00:34:26] Speaker 03:
It requires so much more.

[00:34:27] Speaker 03:
It requires processors.

[00:34:29] Speaker 03:
It requires a discussion of,

[00:34:30] Speaker 03:
mechanical, electrical, potentially Wi-Fi access in order to meet the limitations of 309.

[00:34:38] Speaker 03:
That analysis is not done simply by citing to Clements and Barton and saying, well, something that we say is similar might be out there.

[00:34:47] Speaker 03:
They didn't show how it's similar.

[00:34:49] Speaker 03:
As to the takings, it's futile to bring them before the board.

[00:34:52] Speaker 03:
The board has said repeatedly under your Riggins precedent that they're not going to hear them, and it's outside the statutory grant, which is what Riggins say.

[00:34:59] Speaker 03:
says, the patent term adjustment we've argued predates what should have been the issuance of our patent to June 19, 2009.

[00:35:05] Speaker 03:
It's not uncommon for the government to assign, and I see that I'm over, I beg your indulgence here, but it's not uncommon for the government to view a patent sort of differently in terms of the issue date than the general public would.

[00:35:18] Speaker 03:
And I would point you to

[00:35:21] Speaker 03:
The Invention Security Act and the government use statute of 1910, of course the government use statute of 1910 allowing a takings claim for government infringement and the section 1498 saying that this is keeping everything secret.

[00:35:35] Speaker 03:
The patentee has the option to obtain damages for the government's use of a patent prior to its issuance or prior to its applications publication pursuant to require withholding under the Invention Secrecy Act.

[00:35:44] Speaker 03:
So clearly as a public policy matter,

[00:35:46] Speaker 03:
We have no problem with evaluating the issuance date differently for the government versus the public.