[00:00:03] Speaker 01:
The first case for argument is 182365, Freibit v. Bose.

[00:00:07] Speaker 01:
Ms.

[00:00:07] Speaker 01:
Fenton, whenever you're ready.

[00:00:09] Speaker 01:
Thank you, Your Honor.

[00:00:14] Speaker 00:
May it please the Court, Tia Fenton, on behalf of Appellant Freibit, this is an appeal from two IPRs in which the Board found the claims of Freibit 436 and 995 patents obvious over the Berg, Barming, and Aber references.

[00:00:29] Speaker 00:
Freebit's patents were issued over the bird reference based on a contact surface with a curvature that has one, it conforms or substantially conforms to the concha and two, it fits closely against the concha including at the extension of the cruise of the helix.

[00:00:46] Speaker 00:
It is this curvature that's the focus of the appeal.

[00:00:50] Speaker 00:
The board committed legal error in its ultimate obviousness conclusion

[00:00:54] Speaker 00:
and in its failure to conduct the analysis using the actual language of the claims.

[00:01:00] Speaker 00:
The board also erred by making factual findings about the references that are inconsistent with the documents themselves.

[00:01:08] Speaker 00:
One such error was finding that the prior art does not teach away.

[00:01:12] Speaker 00:
The law is clear that if a reference leads in a direction divergent from a path taken by free bit.

[00:01:17] Speaker 01:
But is the law also not clear that all that's required is a person of ordinary skill would have merely favored one disclosed over another?

[00:01:28] Speaker 01:
I mean, picking from several options, some portions have some benefit and some not.

[00:01:36] Speaker 01:
And it's gains and costs.

[00:01:39] Speaker 01:
And I don't see a teaching away here just because someone emphasizes preferences with regard to selection of one option.

[00:01:47] Speaker 01:
That doesn't foreclose or teach away the other option, in my view.

[00:01:52] Speaker 01:
So tell me why I'm wrong.

[00:01:53] Speaker 00:
Your Honor, I respectfully, obviously, disagree, because I think with respect to that case law that you're referring to, that's a different factual situation than here.

[00:02:03] Speaker 00:
Here we have a reference that specifically discredits the primary reference, Berg, and also other references.

[00:02:11] Speaker 03:
Well, no, it doesn't discredit Berg.

[00:02:14] Speaker 03:
It only says that the C-shaped pad is uncomfortable, right?

[00:02:19] Speaker 00:
No, it actually gives, it criticizes Berg stating that it has four problems, poor sound, trapped sweat, it's uncomfortable, and it slips from the ear.

[00:02:30] Speaker 00:
And it attributes all of these problems to the large C-shaped surface of Berg.

[00:02:34] Speaker 03:
So since the reference says these things about Berg, you think that means nobody would be motivated to take Berg

[00:02:43] Speaker 03:
and try to cure one or more of these problems with a different version that is similar to Berg, but hmm, I can cure discomfort by doing this, hmm, I can cover sweat or smell or whatever by doing this.

[00:02:55] Speaker 03:
I mean, don't you think that you could make iterative improvements on Berg, and wouldn't those actually be suggested by this reference, that it would be good for people to take Berg and make some improvements on it?

[00:03:06] Speaker 00:
We think this isn't a situation that you're referring to that requires a weighing of advantages and disadvantages as posited by the board.

[00:03:16] Speaker 03:
I read farming as actually suggesting that somebody should undertake the process of making Berg

[00:03:26] Speaker 03:
more comfortable.

[00:03:27] Speaker 03:
I actually read it as providing the motivation to combine these things.

[00:03:33] Speaker 03:
You think it teaches a way and I think it's telling you there's a problem with this reference and that somebody needs to fix these problems and that's what the

[00:03:43] Speaker 03:
Pat, in this case, did.

[00:03:44] Speaker 03:
It fixed one of the problems.

[00:03:45] Speaker 00:
Well, in varming, though, it gives a solution to this problem.

[00:03:49] Speaker 03:
But that doesn't mean there aren't other solutions, right?

[00:03:51] Speaker 03:
I mean, it's too hot in here, or it's too cold in here.

[00:03:54] Speaker 03:
There are two solutions.

[00:03:55] Speaker 03:
You can put on a jacket, or you could turn the heat up.

[00:03:58] Speaker 00:
I mean, varming calls it this gap, this pad with the gaps and the voids.

[00:04:07] Speaker 00:
At appendix 2389, it says that it's the most important element of this invention.

[00:04:12] Speaker 00:
And because it specifically criticizes and distinguishes over devices like the prior art, like a continuous earpiece or a C shape or similar, it seems to be the epitome of a teaching away reference.

[00:04:27] Speaker 00:
It expressly distinguishes over the primary reference.

[00:04:31] Speaker 00:
It tells the actual importance of maintaining these gaps, especially at an area right where our patent claims are directed to having a curved surface that fits closely and substantially conforms.

[00:04:41] Speaker 00:
varming on the other hand says no Leave it.

[00:04:44] Speaker 00:
It's very important.

[00:04:45] Speaker 00:
No matter what embodiment.

[00:04:46] Speaker 00:
We have a varming.

[00:04:47] Speaker 00:
It's very important to leave a gap here And it discredits and discourages investigation and the case law like de puy spine and gal derma It this fits squarely in that case law.

[00:04:58] Speaker 00:
I would represent it speaking representing.

[00:05:01] Speaker 04:
I've got a question for you sure

[00:05:04] Speaker 04:
At 39, the blue brief says, Dr. Caselli also acknowledged under cross-examination that Abrish's use of the term partially embraced would indicate to a person of skill in the art that the groove would only, quote, touching part, close quote, testifying that, quote, embrace could be taken to imply touching and partially would be in part touching.

[00:05:32] Speaker 04:
At 30 of the red brief,

[00:05:34] Speaker 04:
The RedBrief says this is not an accurate description of Dr. Caselli's testimony.

[00:05:42] Speaker 04:
Rather, he stated, I don't know exactly what Aber intended with the difference of the words partially embrace versus partially surround in claim number six.

[00:05:54] Speaker 04:
However, partially surround can connote that it is indeed over the rib-like portion, at least in part, but not necessarily requiring touching it.

[00:06:05] Speaker 04:
I think they have a pretty good argument that's not a fair statement of his testimony.

[00:06:11] Speaker 04:
And I want you to be able to respond to that.

[00:06:13] Speaker 00:
Sure.

[00:06:14] Speaker 00:
I think the context of us saying that that, or quoting that testimony.

[00:06:20] Speaker 00:
In part, you know.

[00:06:21] Speaker 00:
In part, is it gets to the root of this issue.

[00:06:27] Speaker 00:
And that's how the board compounded.

[00:06:30] Speaker 04:
It gets to the, wait a minute, it gets to the root of it as you quote it.

[00:06:35] Speaker 04:
But your problem is that it's not accurately quoted.

[00:06:41] Speaker 04:
I believe we changed the meaning of what he said in that in that entire phrase for a set of phrases.

[00:06:49] Speaker 00:
I think it's difficult to obviously that was not intentional, but I think it's difficult to understand what Dr. Casale

[00:06:57] Speaker 00:
or was testifying about, because what happens here is- But then you can't, but that's okay, then you can't rely on him.

[00:07:05] Speaker 04:
What you're saying in the blue brief that he made an admission, but you're right.

[00:07:11] Speaker 04:
It's ambiguous, and he in effect says that, I don't know.

[00:07:16] Speaker 04:
And you left that out.

[00:07:17] Speaker 00:
We took that to mean, in our quoting of that particular quote, if I remember correctly, that was- Your quote's on page 39.

[00:07:30] Speaker 04:
And I get what you're trying to use it for.

[00:07:32] Speaker 04:
The problem is, I think it's at best for you, ambiguous, that he's saying, I don't know.

[00:07:41] Speaker 04:
And then he says, it could connote that.

[00:07:45] Speaker 00:
I think it's because if you look at his testimony in the full context, the problem is we're relying on this accommodation term.

[00:07:51] Speaker 00:
And there's no definition of this term.

[00:07:54] Speaker 00:
It's not in the claim limitations.

[00:07:56] Speaker 04:
That's not my beef.

[00:07:58] Speaker 00:
Okay, I'm sorry.

[00:07:59] Speaker 00:
Maybe I misunderstood.

[00:07:59] Speaker 04:
My beef is that you're inaccurately representing what he said in order to try and get an admission, which isn't there.

[00:08:07] Speaker 04:
That's my beef.

[00:08:14] Speaker 04:
And they pointed it out in the red brief, so you should be prepared to respond to that.

[00:08:19] Speaker 00:
Yes, that was our understanding of his testimony, though, Your Honor.

[00:08:24] Speaker 04:
that he used the term partially surround to connote a structure that is either it can be partially embrace or touch in part or not touch at all okay i'm not going to eat up all your time on this but i was hoping for more of an explanation then well that's how we understood it keep going

[00:08:52] Speaker 00:
I will look at it more closely and reserve some time to address it more appropriately.

[00:08:57] Speaker 00:
Thank you, Your Honor.

[00:09:02] Speaker 00:
And so getting back to the teaching away reference and coming back to some of Your Honor's other questions, again, we think that the case law, for instance, like Bayer, and cases like that are not on point.

[00:09:18] Speaker 00:
Because this isn't a situation where you weigh simultaneous advantages and disadvantages.

[00:09:24] Speaker 00:
Burming teaches no advantages of a continuous contact surface.

[00:09:28] Speaker 00:
It only criticizes it.

[00:09:30] Speaker 00:
It only insists on a void at the cruise of the helix.

[00:09:33] Speaker 00:
And it only teaches advantages associated with its two or three pad configuration.

[00:09:38] Speaker 00:
And this isn't a matter of preference here when you look at the prior art.

[00:09:42] Speaker 00:
Varming says a large continuous contact surface like Berg is workable.

[00:09:47] Speaker 00:
You know, where Varming says it's workable, but the preference for the disclosed solution with gaps.

[00:09:53] Speaker 00:
So it's not a situation where there's a better or best solution here.

[00:10:00] Speaker 00:
Varming's solutions and its criticisms and discouragement against the references like Berg

[00:10:05] Speaker 00:
teach away, and we think takes that outside of the case law, where maybe it's not clear, like in Medi-Chem, the disclosure isn't clear with respect to teaching away.

[00:10:15] Speaker 00:
And we think it puts it squarely in the case law, like to Pui, Spine, and Galderma, where they specifically say that a reference or prior teaches away if it discourages investigation into something that is the claimed invention.

[00:10:32] Speaker 00:
And here we think that varming in these references discourage against investigating into the claimed earpiece, which does have a continuous contact surface that substantially conforms and fits closely to the concha at the cruise of the helix.

[00:10:46] Speaker 00:
And, Your Honors, even when the references are, if they are properly combinable, we believe the Board erred in finding that the claim elements are met.

[00:10:55] Speaker 00:
ABER teaches that horn-like extension as what produces the secure holding effect of the ear unit.

[00:11:02] Speaker 00:
And according to ABER, because the grooves that are labeled 18 and 20 partially surround or partially embrace the portions of the ear, they also assist in retaining the earpiece.

[00:11:12] Speaker 00:
So the board found that the disclosure of this partially surrounding or embracing an ear portion satisfies both of Freebit's claim limitations such that ABER's groove substantially conforms and fits closely to the cruise of the helix.

[00:11:25] Speaker 00:
But this finding isn't supported by the substantial evidence.

[00:11:29] Speaker 00:
This may be referring to the testimony that you're talking about, but it's our understanding that Bose's expert even testified that abor teaches a groove that either does not touch or only partially touches the ear anatomy it's surrounding.

[00:11:43] Speaker 00:
And so assuming bodily incorporation, a groove that only partially touches or doesn't touch the ear anatomy at all does not substantially conform or fit closely to the contra wall.

[00:12:00] Speaker 00:
And the board, we think that a lot of the issues here are based on the board compounding these errors by relying on an alleged synonym, accommodate, to find that the claim limitations are met.

[00:12:18] Speaker 00:
Bose introduced this accommodating term in the underlying proceedings to try to force the prior art to read on the curvature of Freebit's claims.

[00:12:26] Speaker 00:
And throughout its analysis, the board errs by adopting this approach, focusing on whether accommodation is achieved.

[00:12:33] Speaker 00:
But none of the claims are directed to accommodating a cruise of the helix.

[00:12:37] Speaker 00:
In fact, that accommodation word is not even present in any of the claims.

[00:12:43] Speaker 00:
And in the board's analysis, there's no indication of what accommodation actually means.

[00:12:49] Speaker 00:
Sometimes it means a gap.

[00:12:51] Speaker 00:
Sometimes it means to partially surround or embrace.

[00:12:54] Speaker 00:
Sometimes it means to straddle.

[00:12:56] Speaker 00:
Sometimes it means touching or not touching.

[00:12:58] Speaker 00:
And sometimes it means aligned with.

[00:13:01] Speaker 00:
And so this accommodation term cannot be a substitute for the actual claim language.

[00:13:06] Speaker 00:
Substantially conforms and fits closely.

[00:13:08] Speaker 00:
And certainly not when it has all of these various meanings.

[00:13:11] Speaker 00:
And when the board and the expert and the Bose are applying a different meaning at different times, it's undefined.

[00:13:21] Speaker 00:
and this use of the term to conduct the John Deere analysis and defined obviousness is so far removed from the actual claim language that it constitutes reversible error.

[00:13:53] Speaker 02:
Good morning, Your Honors.

[00:13:54] Speaker 02:
Andrew Kapsidis of Fish and Richardson on behalf of Appellee Bowes Corporation.

[00:14:00] Speaker 04:
On page three of the red brief, you say, the freebit patents purported invention thus involved no more than the use of a known solution to a known problem with no assertion of its unexpected results or other secondary considered consideration.

[00:14:16] Speaker 04:
Do you agree this is a straightforward obviousness of determination?

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

[00:14:21] Speaker 02:
This is classic obviousness in KSR style.

[00:14:26] Speaker 02:
The problem that the Freebit patents allegedly solve is a very old one, as is the solution to it.

[00:14:32] Speaker 02:
There are some very old patents in there.

[00:14:34] Speaker 02:
Exactly.

[00:14:36] Speaker 02:
The problem, as Your Honor is acknowledging, was first recognized, at least according to our records, in the ABER patent in 1928.

[00:14:43] Speaker 02:
this problem of having to accommodate for or do something to not interfere with the Crucifelix or the Contra Ridge, as it's otherwise known.

[00:14:54] Speaker 02:
And logic dictates that when you have a straight piece that's interfering with the ridge, that you have two and likely only two solutions.

[00:15:07] Speaker 02:
One is to just remove the part of the flat piece that interferes.

[00:15:10] Speaker 02:
And the other is to form some sort of groove in it so that it conforms to the ridge.

[00:15:16] Speaker 02:
And this is exactly the kind of situation where there were two finite solutions that yielded nothing more than predictable results.

[00:15:27] Speaker 02:
ABER opted for the groove solution, and Varming opted for the gap solution.

[00:15:34] Speaker 02:
So you have the groove and the gap, two solutions known in the prior art well before the time of Freebit's patents.

[00:15:44] Speaker 02:
In opting for the groove solution, so Eber discloses a groove, 18, that quote, partially embraces the cruce of the helix or the contra rich.

[00:15:55] Speaker 04:
I'd like, I don't know about my brethren, but I'd like you to focus on the Caselli test only because

[00:16:04] Speaker 04:
That's where everything that I think your, your opposing counsel hang their entire hat on attacking his testimony in one fashion or another.

[00:16:18] Speaker 04:
And, and, um, I've pointed out what I think that the fundamental flaws, I had other questions, but for your opposing counsel, but they all circle around.

[00:16:32] Speaker 04:
their view of what his testimony is.

[00:16:36] Speaker 04:
And so I'd like you to address that.

[00:16:39] Speaker 02:
Well, I think Your Honor is exactly right that the quoting and paraphrasing and describing of Dr. Casale's testimony was not accurate.

[00:16:51] Speaker 04:
It's not a question of just not accurate.

[00:16:53] Speaker 04:
My view is I don't see a nefarious

[00:16:58] Speaker 04:
action by your opposing counsel.

[00:17:01] Speaker 04:
But what I do see is it looks to me like it's all attorney argument.

[00:17:06] Speaker 04:
And they're trying to argue that he's saying something and picking and choosing very carefully to do that.

[00:17:13] Speaker 02:
I think that's correct, Your Honor.

[00:17:15] Speaker 02:
Obviously, the standard here is substantial evidence, not preponderance.

[00:17:20] Speaker 02:
And the board's final written decisions in both of these IPRs are extremely well buttressed with testimony of Dr. Casale.

[00:17:32] Speaker 02:
Over and over again, they state, we find Dr. Casale's testimony credible and persuasive.

[00:17:37] Speaker 02:
We agree with Dr. Casale.

[00:17:39] Speaker 02:
uh... we credit this testimony and things like that uh... and this goes to the findings of no teaching away the disclosures of what abor and farming uh... disclosed uh... as well as the ultimate conclusion that the proposed combination meets every single limitation of the claims including separately the substantially conforming and closely fitting all those points are uh...

[00:18:07] Speaker 02:
you know, extremely well cited in the written description, in the written decisions of the board with sites not just to Dr. Casale's testimony but also to the prior art references themselves.

[00:18:23] Speaker 02:
I would like to speak for a moment about the teaching away issue.

[00:18:30] Speaker 02:
I think it's important to note that

[00:18:35] Speaker 02:
Varming never criticizes Aber or the prior art groove solution.

[00:18:42] Speaker 02:
They never criticized that.

[00:18:44] Speaker 02:
Instead, Varming criticizes the Berg reference, and he criticizes it on the basis that it doesn't do any solution for the crucifelix problem.

[00:18:56] Speaker 02:
It doesn't do, it does neither a groove nor a gap.

[00:18:59] Speaker 02:
So that's what, so the fact, so I think the criticism that Freebit relies on is misplaced because everybody acknowledges that Berg 307 had a problem and Varming solved it one way and Aver solved it another.

[00:19:15] Speaker 04:
That's the, if our final written decision at 32 more or less.

[00:19:22] Speaker 02:
That's correct, your honor.

[00:19:25] Speaker ?:
Yeah.

[00:19:28] Speaker 02:
So varming addresses the exact same problem as the freebit patents, how to accommodate the crucifelix.

[00:19:38] Speaker 02:
So it states specifically that Berg's lack of any accommodation, lack of addressing this issue, causes instability and discomfort.

[00:19:48] Speaker 02:
That's in Appendix 2385 in the varming reference.

[00:19:52] Speaker 02:
And there's really no debate that the criticisms in varming are leveled directly at Berg itself for not proposing any solution.

[00:20:01] Speaker 02:
In opting for his gap solution,

[00:20:04] Speaker 02:
in varming, as opposed to the prior art groove solution.

[00:20:09] Speaker 02:
It's because he wants to maximize airflow.

[00:20:12] Speaker 02:
He wants to create an earpiece that allows more ventilation to avoid perspiration, but also to let ambient sound penetrate the ear.

[00:20:21] Speaker 02:
And that's fine.

[00:20:22] Speaker 02:
That's a designer's choice.

[00:20:23] Speaker 02:
But he explicitly recognizes the balance that he's making, the trade-offs at appendix 2389 and 90,

[00:20:33] Speaker 02:
he recognizes the trade-offs that he is sacrificing some comfort and stability by having less contact surface area.

[00:20:44] Speaker 02:
And obviously from that, Dr. Casale opined that a person of ordinary skill in the art seeking to focus instead on stability and comfort would be clearly drawn to the solutions involving more contact surface such as ABER.

[00:21:04] Speaker 02:
Lastly, I would just like to address the two cases that Ms.

[00:21:13] Speaker 02:
Fenton raised.

[00:21:15] Speaker 02:
The first was the Galderma case, which I actually think is a very good case for us, in that Galderma states that

[00:21:24] Speaker 02:
this had to do with a chemical composition and it states a teaching that a composition may be optimal or standard does not criticize discredit or otherwise discourage investigation into other compounds and that's exactly what we have here at most I think varming does provide the motivation to combine but even if you look at it is somehow

[00:21:48] Speaker 02:
favoring the gap solution over the groove solution, it certainly doesn't amount to a discouragement or a criticizing of that.

[00:21:57] Speaker 02:
In fact, it's quite silent on that.

[00:21:59] Speaker 02:
It's a balancing, of course.

[00:22:01] Speaker 02:
Absolutely, Your Honor.

[00:22:02] Speaker 02:
Um, and then to please fine, I won't dwell on it, but again, this is, this is a case that stands for the proposition that a reference doesn't teach away if it merely expresses a general preference for one alternative over another.

[00:22:19] Speaker 02:
And that's exactly what we have with Barman.

[00:22:24] Speaker 02:
Unless the court has any other questions, I will yield the remainder of my time.

[00:22:28] Speaker 02:
Thank you.

[00:22:34] Speaker 00:
Thank you, your honor.

[00:22:35] Speaker 00:
Just to address your earlier question.

[00:22:37] Speaker 04:
Yes, please.

[00:22:40] Speaker 04:
Yes, please.

[00:22:41] Speaker 00:
I looked at the testimony and it does say that Dr. Casale said he didn't know but he didn't stop there.

[00:22:47] Speaker 00:
What we quoted was accurate and he went on to make this concession or partial concession and I actually think it's consistent with the remainder of his testimony for instance at Appendix 3257.

[00:22:59] Speaker 00:
So I just wanted to make the record if the record somehow indicated that

[00:23:05] Speaker 00:
What we quoted was incorrect.

[00:23:08] Speaker 04:
I thought it was misleading.

[00:23:10] Speaker 04:
I really did And I as I said thought it was attorney argument.

[00:23:15] Speaker 04:
I'm not Slamming you and I would if I thought you were doing something bad and Making a misrepresentation of the court kind of thing

[00:23:26] Speaker 00:
And just to summarize and I know I have like 50 seconds left But we we do not think that this is the usual teaching way argument.

[00:23:36] Speaker 00:
We think that this There's an express discrediting and discouraging away from free bits invention and I would like to with respect to the claim construction issue.

[00:23:46] Speaker 00:
I would just like to

[00:23:48] Speaker 00:
direct your attention to appendix 13 through 14 and 63 through 64.

[00:23:53] Speaker 00:
I don't have time to read it now.

[00:23:55] Speaker 00:
But I think it's a very good snapshot of how the board's findings and all of the testimony and all of the argument is premised on whether there's motivation to and the ability to accommodate the extension of the cruise of the helix, not whether there was substantial confirmation or a close fit to the concha, which are actually the claim limitations.

[00:24:17] Speaker 00:
And so we respectfully submit that this fact alone constitutes reversible error at a minimum remand so that the board can evaluate the art and the obviousness using the actual claim terms.

[00:24:29] Speaker 01:
Thank you.