[00:00:23] Speaker 03:
Our next case is Google, LLC versus Phillips, NV, 2019, 1234, Mr. Trask.

[00:00:50] Speaker 01:
Good morning, Your Honors.

[00:00:52] Speaker 01:
May it please the Court?

[00:00:54] Speaker 01:
Andrew Trask for Appellant Google.

[00:00:57] Speaker 01:
There's only one claim step alleged here to be missing from the PriorArt, and that is the step of returning the keypad to the default state.

[00:01:05] Speaker 01:
Phillips agrees that all of the other claim steps, including the step of providing the keypad in the default state in the first instance, is disclosed by the PriorArt Cicada2 reference.

[00:01:16] Speaker 01:
The prior art, therefore, left the person of ordinary skill with a binary choice.

[00:01:20] Speaker 01:
After performing all of the other steps, the keypad either returns to the default state or it doesn't.

[00:01:26] Speaker 05:
What do you mean the prior art left the person with a binary choice?

[00:01:30] Speaker 05:
At least as described in your petition, the prior art said,

[00:01:39] Speaker 05:
Replace the key that you initially pressed with the item you selected on the little menu that that pops up behind it

[00:01:54] Speaker 05:
So I'm not sure.

[00:01:56] Speaker 05:
You now say, look at claim one, which I'm going to assume, because you just did not argue claim one in the petition to the board, so that all CICADA actually taught was the replacement of the selected backup key item onto the original key.

[00:02:19] Speaker 01:
So the cicada 2 reference does teach character substitution in figure 8 embodiment.

[00:02:26] Speaker 01:
So as your honor described, taking the secondary character that was just selected and replacing the underlying key.

[00:02:34] Speaker 01:
Of course, all of the other keys in the cicada 2 keypad remain unchanged.

[00:02:39] Speaker 05:
But there's nothing behind them that pops up when you press any of the keys.

[00:02:46] Speaker 05:
Let's call them the letter characters.

[00:02:48] Speaker 01:
Well, there's a number of keys on the Sakata 2 keyboard that can undergo second, that can be the pop-up secondary character menu.

[00:02:57] Speaker 05:
More than the 10 in the right-hand columns?

[00:02:59] Speaker 01:
That's right.

[00:03:00] Speaker 05:
Just the 10.

[00:03:01] Speaker 04:
Those are the only ones that change, right?

[00:03:04] Speaker 01:
That's correct.

[00:03:05] Speaker 01:
That's correct, yeah.

[00:03:07] Speaker 01:
So there are a number of keys that can undergo substitution within Sakata 2.

[00:03:11] Speaker 01:
When a secondary character is selected in the figure 8 embodiment,

[00:03:14] Speaker 01:
one of the keys undergoes character substitution.

[00:03:17] Speaker 01:
The others do not.

[00:03:19] Speaker 01:
And as we explained throughout the proceeding.

[00:03:22] Speaker 05:
And the ones that you haven't tapped.

[00:03:25] Speaker 01:
That's right.

[00:03:26] Speaker 05:
You tap only one of the 10.

[00:03:28] Speaker 05:
That one undergoes substitution.

[00:03:30] Speaker 05:
Then the other nine don't, because you haven't tapped them.

[00:03:33] Speaker 01:
That's correct.

[00:03:34] Speaker 01:
Now, of course, as Your Honor mentioned, there's the claims of Cicada II, which are also prior art to the patented issue here.

[00:03:43] Speaker 01:
and the testimony supports this, teach.

[00:03:47] Speaker 05:
My problem with that is that I don't think it is really reasonable to say that you made that point in your petition.

[00:03:53] Speaker 01:
Well, the petition, so that point was not raised in the petition, Your Honor.

[00:03:56] Speaker 01:
It was raised in the... Phillips asked a question to Google's declarant at his deposition.

[00:04:03] Speaker 01:
This was before Phillips ever filed his patent owner response.

[00:04:06] Speaker 05:
The point does get developed later in the proceeding.

[00:04:09] Speaker 01:
And Phillips has an opportunity to address that embodiment of Cicada 2 directly.

[00:04:15] Speaker 01:
Phillips also never alleged at any point during the proceeding that

[00:04:20] Speaker 01:
Google's reliance on the claims of cicada 2 was belated or untimely.

[00:04:25] Speaker 01:
Phillips could have objected to the reliance on that embodiment.

[00:04:29] Speaker 01:
Phillips did not.

[00:04:30] Speaker 01:
Phillips was asked by the board at the oral hearing about the claims of cicada 2.

[00:04:36] Speaker 01:
Not only did Phillips not note that the reliance on that embodiment was somehow belated, but Phillips actually agreed that the claims do not

[00:04:45] Speaker 01:
undergo character substitution.

[00:04:47] Speaker 01:
So there are two options that secatitude discloses, either returning to the default state or not doing so.

[00:04:57] Speaker 01:
And it's undisputed here that the keypad contemplated by the 913 patent is the keypad.

[00:05:03] Speaker 04:
When you say returning to the default state or not doing so,

[00:05:07] Speaker 04:
Don't you mean that CICATA 2 discloses staying with the substitution are not necessarily doing so?

[00:05:15] Speaker 01:
That's right, Judge Breslin.

[00:05:16] Speaker 04:
But the default is not expressly disclosed in CICATA, as I understand it, even in the independent claims.

[00:05:24] Speaker 04:
It simply leaves off any reference.

[00:05:26] Speaker 04:
And your inference from that is, well, there are only two choices, and therefore it must, by implication, have disclosed the second choice.

[00:05:35] Speaker 04:
Right?

[00:05:36] Speaker 01:
That's your argument, right?

[00:05:37] Speaker 01:
Not just my inference.

[00:05:38] Speaker 01:
It was also the inference.

[00:05:39] Speaker 01:
It would have been the inference of the person of ordinary skill, as shown by the testimony of record, which, of course, is evidence in itself.

[00:05:45] Speaker 04:
And that was Dr. Coburn's.

[00:05:49] Speaker 01:
Dr. Coburn, that's right.

[00:05:50] Speaker 01:
Coburn.

[00:05:50] Speaker 01:
Yeah.

[00:05:51] Speaker 04:
That was his understanding, right?

[00:05:54] Speaker 01:
That's right.

[00:05:54] Speaker 01:
And he testified to that effect.

[00:05:56] Speaker 01:
So there's evidence of record saying that the person of ordinary skill would have understood to gratitude to disclose two options in following the selection of a secondary character.

[00:06:05] Speaker 01:
Now, if that weren't enough to demonstrate that this final limitation is peripheral and trivial to the claimed invention, we also have here almost a unique circumstance where we've got a reissued patent, which itself isn't particularly common, and then we've got admissions by the patent owner to the patent office during reissue acknowledging that the returning to the default state

[00:06:30] Speaker 01:
does not confer patentability on the claims.

[00:06:32] Speaker 01:
It's not central to the claim.

[00:06:33] Speaker 01:
So this is, of course, Phillips first of all acknowledged error in the original claims, which contained the identical returning the keypad to the default state limitation.

[00:06:43] Speaker 03:
In any event, isn't returning to the default state in Buxton?

[00:06:48] Speaker 01:
Of course, that's right as well, Your Honor.

[00:06:49] Speaker 01:
Yes, it's expressly disclosed in Buxton as well.

[00:06:52] Speaker 03:
This is a combination rejection on obviousness.

[00:06:55] Speaker 01:
That's right.

[00:06:55] Speaker 01:
Both grounds are obviousness.

[00:06:56] Speaker 03:
It's either a single- Not a rejection, assertion.

[00:06:59] Speaker 01:
That's right.

[00:07:00] Speaker 01:
There's two grounds.

[00:07:01] Speaker 01:
One is Cicada 2 alone.

[00:07:03] Speaker 01:
The other is Cicada 2 plus Buxton, where Buxton supplies expressly the missing limitation, the purportedly missing limitation from Cicada 2.

[00:07:12] Speaker 01:
So we've got admissions by the patent order that this exact claim limitation does not, quote, improve on the state of the art, unquote.

[00:07:19] Speaker 01:
That's Appendix 513.

[00:07:20] Speaker 01:
That's Philip's own words to the Patent Office.

[00:07:24] Speaker 01:
And that's referring to the original claims that were submitted for reissue, claims which Phillips itself admitted contained an error.

[00:07:31] Speaker 01:
The error, according to Phillips, was that the claim claimed more than Phillips had the right to claim.

[00:07:36] Speaker 01:
So what did Phillips do?

[00:07:37] Speaker 01:
It narrowed that claim, and it narrowed it by adding new limitations to independent claim one.

[00:07:42] Speaker 01:
Those limitations are the predetermined time period limitations.

[00:07:45] Speaker 01:
They have nothing to do with returning to the default state.

[00:07:49] Speaker 01:
So the board here,

[00:07:51] Speaker 01:
made a legal error in its analysis of the first round of unpatentability.

[00:07:55] Speaker 01:
And that legal error is failing under this court's precedent to understand the character of the missing limitation before considering whether common sense could be applied to that limitation.

[00:08:06] Speaker 01:
this court's body of precedent.

[00:08:08] Speaker 04:
The character being the peripheral nature of the limitation, is that your Arendt argument?

[00:08:13] Speaker 01:
That's right.

[00:08:14] Speaker 01:
So it's peripheral versus central.

[00:08:16] Speaker 01:
There's some other words that are used in these cases, but that's essentially the nub of it.

[00:08:19] Speaker 04:
Let me ask you this question before you get into that argument.

[00:08:22] Speaker 04:
But assuming that we do not agree with your characterization of Arendt and the associated cases, Perfect Web and Here Where,

[00:08:30] Speaker 04:
And instead, think that those cases were really saying you can't use this untethered common sense to supply a limitation, especially in cases in which the limitation is central.

[00:08:49] Speaker 04:
Assuming we don't agree with you on that, and assuming therefore that we agree with the board's construction of a rendee, do you think you still have a path to winning the case?

[00:08:59] Speaker 04:
And if so, what is it?

[00:09:00] Speaker 01:
I do, Judge Bryce.

[00:09:02] Speaker 01:
And the answer is that there isn't simply a bare common sense here that's capable of being applied to this missing limitation.

[00:09:10] Speaker 01:
There is, in fact, underlying documentary evidence as well as underlying expert testimony, which supports the application of common sense.

[00:09:17] Speaker 01:
So this isn't a case that maybe was contemplated by some of these cases where you have common sense and nothing else.

[00:09:23] Speaker 01:
Now, the perfect web case is actually that case where the court said,

[00:09:26] Speaker 01:
This is such a simple limitation.

[00:09:28] Speaker 01:
It's just returning to a prior step, which was known in the prior art.

[00:09:31] Speaker 01:
Same here, a step which returns to a prior step, which was known in the art.

[00:09:37] Speaker 01:
And because of the manifest simplicity of that limitation, it's appropriate to apply common sense with nothing more.

[00:09:45] Speaker 01:
And what this court said in perfect web is that expert testimony is not required in that instance.

[00:09:49] Speaker 01:
But even if this court disagreed with that reading of perfect web, which I think is quite plain from perfect web itself,

[00:09:56] Speaker 04:
Well, the court, I guess, in Orende said that that was really an outlier case.

[00:10:01] Speaker 04:
I think that's a fair reading.

[00:10:03] Speaker 01:
The court in Orende said that perfect web is the exception, not the rule.

[00:10:06] Speaker 01:
And I submit to your honor that this case before you today is that exception.

[00:10:11] Speaker 01:
This is an unusual case where we've got a reissue patent, and we've got admissions by the patent owner directly to the Patent Office bearing on the precise claim limitation at issue here.

[00:10:21] Speaker 04:
OK, now what besides, in Dr. Covern's

[00:10:26] Speaker 04:
declaration and deposition.

[00:10:28] Speaker 04:
What is there to support his argument that this is common sense?

[00:10:36] Speaker 04:
The board complained that there was no support for his expression of personal opinion in that regard.

[00:10:43] Speaker 01:
Right.

[00:10:43] Speaker 01:
So I don't think the board actually considered his testimony.

[00:10:47] Speaker 01:
This is at appendix page 2785.

[00:10:51] Speaker 01:
which is that the person of ordinary skill would understand that Cicada II contemplated no character substitution at all, and he was referring there to the claims of Cicada II.

[00:10:59] Speaker 01:
The board never acknowledged the claims of Cicada II, certainly never found that Google had raised them belatedly, but never even considered that aspect of the disclosure at all.

[00:11:10] Speaker 01:
And there's testimony that was brought to the board's attention through.

[00:11:13] Speaker 01:
You mean the independent claim, dependent claim relationship.

[00:11:17] Speaker 01:
Right.

[00:11:17] Speaker 04:
Well, of course, the board discussed that in the oral argument.

[00:11:20] Speaker 04:
So they obviously were aware of it.

[00:11:21] Speaker 01:
That's right.

[00:11:22] Speaker 01:
And they didn't mention it at all in the final written decision.

[00:11:25] Speaker 01:
Right.

[00:11:25] Speaker 04:
But that in and of itself isn't enough to sink the board's judgment, do you think?

[00:11:31] Speaker 04:
I mean, there are often issues that the board or a court may decide are not worthy of discussion, as long as it's

[00:11:39] Speaker 04:
clear that they were brought to the board's attention and the board was aware of it.

[00:11:44] Speaker 01:
That's true.

[00:11:44] Speaker 01:
I mean, although your Honor's question was, what is the evidence that the person with ordinary skill would have understood that common sense could be applied to this claim?

[00:11:53] Speaker 01:
OK.

[00:11:54] Speaker 04:
But besides the independent, dependent claim, is there anything else supporting Dr. Coburn's opinion in that regard?

[00:12:01] Speaker 01:
Sure.

[00:12:02] Speaker 01:
So within CICADA to itself, there's also

[00:12:05] Speaker 01:
the reference in Cicada 2 to the fact that the claims may be that the characters may be substituted.

[00:12:11] Speaker 01:
This is at Appendix 309.

[00:12:14] Speaker 01:
And there's other aspects of the Cicada 2 reference, the abstract.

[00:12:17] Speaker 01:
This is at Appendix 306, the effect of the invention section at Appendix 312, all of which disclose entry of a secondary character

[00:12:25] Speaker 01:
but no subsequent substitution of the character.

[00:12:28] Speaker 01:
And according to the expert testimony of record, these are disclosures that a person of ordinary skill would have understood to be teaching this choice of either you substitute or you don't.

[00:12:39] Speaker 05:
There's, of course, the- Can I just ask a question?

[00:12:46] Speaker 05:
This term maybe.

[00:12:49] Speaker 05:
seems to me pretty plainly can have a couple of different meanings, one of which can help you, one of which perhaps doesn't.

[00:12:56] Speaker 05:
Is there any issue of translation here?

[00:12:59] Speaker 05:
That is, does the, it's kind of too as an English translation of the Japanese.

[00:13:04] Speaker 05:
Has anybody raised any question about whether in Japanese the term that got translated into the English maybe has

[00:13:14] Speaker 05:
Here are some options, or this allows you to do this, or a number of other things.

[00:13:22] Speaker 01:
I understand your question, Judge Toronto.

[00:13:24] Speaker 01:
To my knowledge, no one has raised that issue.

[00:13:26] Speaker 01:
I'm well into my rebuttal time.

[00:13:28] Speaker 01:
If the court would allow, I'd like to reserve the rest of that time.

[00:13:31] Speaker 03:
We will save it for you.

[00:13:33] Speaker 01:
Thank you.

[00:13:43] Speaker 03:
Mr. Oliver, I think I might have seen you yesterday.

[00:13:45] Speaker 03:
You did, Your Honor.

[00:13:50] Speaker 02:
Good morning.

[00:13:50] Speaker 02:
May it please the court?

[00:13:53] Speaker 02:
Google asked this court to set aside the board's proper finding of fact and in its place mandate acceptance of common sense.

[00:14:01] Speaker 02:
This fails for two primary reasons.

[00:14:03] Speaker 02:
First, the board did consider the common sense theory offered by Google, but simply found it to be deficient.

[00:14:08] Speaker 02:
The board found that, and I quote, Dr. Cockburn's testimony is insufficient to overcome Sakata II's explicit teaching.

[00:14:16] Speaker 02:
Essentially, what Google argued below is despite Sakata II saying this is the efficient way to do things, it would be obvious to do the exact opposite and base that nothing more on the unsupported opinion testimony of Dr. Cockburn.

[00:14:29] Speaker 02:
However, the board found that the declaration testimony in this regard, again quoting, was not grounded in underlying facts and data.

[00:14:37] Speaker 02:
The second error is that

[00:14:38] Speaker 02:
Google tries to argue here that the Arendt case mandates acceptance of common sense.

[00:14:43] Speaker 05:
Can I set you this?

[00:14:44] Speaker 05:
Put aside the whole discussion about Arendt.

[00:14:49] Speaker 05:
Put aside even claim one of Cicada, too.

[00:14:54] Speaker 05:
When you press on a key and there's a little menu of 10 alternatives that come up and you select one of them, there are basically only two things that can happen when you're done with that.

[00:15:05] Speaker 05:
The original item on the key returns to the key, or the one you tapped goes on the key.

[00:15:13] Speaker 05:
I can imagine some alternatives where you are given an option.

[00:15:17] Speaker 05:
Which one do you want?

[00:15:18] Speaker 05:
But it's a tiny number, or in KSR terms, a finite number, an extremely finite number of pretty self-evident options.

[00:15:28] Speaker 05:
Why is that not the right basis for resolving this case?

[00:15:32] Speaker 02:
Well, that came up during the oral hearing below as well, specifically in the appendix.

[00:15:40] Speaker 02:
at APX 3384 and 3385 and what follows.

[00:15:45] Speaker 02:
And basically, the discussion there was this.

[00:15:47] Speaker 02:
We have to understand the time at which all of these took place, Cicada II, the Invention, and Hoxton, and those others.

[00:15:53] Speaker 02:
This was at a time where we were sort of springboarding from standard physical keyboards into how are we going to fit all of this into these small mobile devices, particularly mobile devices that had touchpads.

[00:16:05] Speaker 02:
And that was difficult to do.

[00:16:06] Speaker 02:
There were several things that had to be solved.

[00:16:09] Speaker 02:
Buxton went to solve one problem.

[00:16:11] Speaker 02:
On a standard keyboard, you have to press two keys at once to get functions, shift and a letter, control and a letter, and you can't do it on a touchpad.

[00:16:18] Speaker 02:
Buxton dealt with that.

[00:16:20] Speaker 02:
Now each other sort of area jumped into a different direction.

[00:16:25] Speaker 02:
Some solutions offered at that time, and again, this is in the infancy of these keyboards, jumped into what were called predictive keyboards, and that's discussed in the appendix at 41, column 2.

[00:16:36] Speaker 02:
These predictive keyboards, when you touch the key, it would change the entire keyboard based on what it predicted you might want to touch next.

[00:16:44] Speaker 02:
There were also multi-tap keyboards, where you can only fit a number of keys, and there are multiple characters assigned to each key.

[00:16:53] Speaker 02:
So you would tap the number of times, depending on whether you wanted the first key, the second character, or the third character.

[00:16:59] Speaker 02:
And then there were adaptive keyboards, which is the type of Cicada II.

[00:17:03] Speaker 02:
And so what Cicada II said is for the keys 21, which were most akin to letters, we're going to keep them the way they are.

[00:17:10] Speaker 02:
They're never going to change.

[00:17:11] Speaker 02:
But for keys 22 were these specialized characters.

[00:17:14] Speaker 02:
The types of characters don't really appear on a keyboard.

[00:17:17] Speaker 02:
The types you would get from going into a menu using a mouse.

[00:17:21] Speaker 02:
How are we going to get to those keys?

[00:17:22] Speaker 02:
And what Cicada 2 said, if we're jumping from a manual keyboard and mouse into that, we need to find an efficient way to get to these specialized characters.

[00:17:30] Speaker 02:
And what they said is you're going to have to adapt to the way the user works.

[00:17:34] Speaker 02:
So to say there's one way to do these things is simply not really understanding what was going on at the time.

[00:17:39] Speaker 05:
But why isn't the right frame for applying the obvious to try, particularly that paragraph of KSR, one that is well past

[00:17:56] Speaker 05:
all of the range of possible keyboards and choices and adaptive keyboards and predictive keyboards and double key selection mechanisms to, what does Cicada say?

[00:18:09] Speaker 05:
Cicada says, here in the prior art, here's one way to get more options before the user, have a number of keys in which by holding it a little bit long, you get some more options.

[00:18:20] Speaker 05:
Now at that point,

[00:18:23] Speaker 05:
There are really only two things that can happen once you've made your selection.

[00:18:29] Speaker 02:
Well, there are a number of ways to combine the different ideas.

[00:18:33] Speaker 02:
What CICATA 2 really said is that dealing with these characters other than the 50 sound characters, the letter type things, that there was this heavy burden in these specialized keys.

[00:18:42] Speaker 02:
And that's stated in the appendix at 308, paragraph 6 through 8.

[00:18:46] Speaker 02:
And what CICATA specifically said to do for these types of special character keys, it is quicker and more efficient.

[00:18:52] Speaker 02:
They actually said carried out more quickly to perform this adaptive function.

[00:18:56] Speaker 02:
So what the board acknowledges is that the primary reference says, do this.

[00:19:00] Speaker 02:
And the board is basically saying, if you're going to tell us to do the exact opposite of what the reference explicitly says to do, you can't provide us only with unsupported opinion testimony.

[00:19:10] Speaker 02:
You must provide us some sort of factual underpinning or other evidence or support for doing the exact opposite of what the primary reference teaches.

[00:19:18] Speaker 02:
And the board said there's simply not sufficient evidence for that.

[00:19:22] Speaker 05:
But I guess one of the reasons that

[00:19:25] Speaker 05:
stop on this, but it seems to me that one of the distinctive things about the obviousness to try way of establishing obviousness is that you don't really need a particularly good reason

[00:19:41] Speaker 05:
to try this tiny number of predictably successful things.

[00:19:46] Speaker 05:
If it's a small enough number and it's perfectly clear what's going to happen with each of them, it's not really an answer, I think, under the obviousness to try paragraph of KSR to say, well, what we had was kind of good enough or it might even be

[00:20:02] Speaker 05:
the other options together, two options or three options, or here perhaps one option, might not serve an additional purpose.

[00:20:13] Speaker 05:
Somebody would try them.

[00:20:14] Speaker 05:
And here it's beyond that.

[00:20:16] Speaker 05:
Well, let me just stop on that.

[00:20:18] Speaker 02:
Well, first and foremost, I'd note that even

[00:20:21] Speaker 02:
Dr. Cockburn, Google's expert, acknowledged in the appendix of 2680 and 2681 that there are a myriad ways to pick and choose among different designs and to combine different designs.

[00:20:33] Speaker 05:
But I keep wondering if that's going much too far back in the process of fire art.

[00:20:39] Speaker 05:
If you start with Sadaka, and so you now have, here's a technique for getting more choices.

[00:20:45] Speaker 05:
holding the keys for slightly longer to give you other options.

[00:20:49] Speaker 05:
At that point, the range of possibilities shrinks to something extremely small.

[00:20:55] Speaker 02:
We have to think about what Google argued for the basis for doing so.

[00:20:58] Speaker 02:
Their argument was that it would be obvious to do so because you'd want to go back to a standard familiar layout.

[00:21:04] Speaker 02:
The problem with that was that these are not standard familiar keys.

[00:21:08] Speaker 02:
It's the millimeter character.

[00:21:09] Speaker 02:
It's not something that appears on a keyboard.

[00:21:11] Speaker 02:
There was no standard familiar layout for these specialized characters.

[00:21:16] Speaker 02:
Because these were specialized characters and not the sound characters equivalent of letters,

[00:21:22] Speaker 02:
For that, they were teaching a very specialized thing.

[00:21:26] Speaker 02:
That for these unusual characters, how are we going to access them in a keyboard?

[00:21:31] Speaker 02:
They weren't thinking of what's the option given these

[00:21:36] Speaker 02:
You know, click menus.

[00:21:37] Speaker 02:
They were trying to figure out how to get a user selection in, for instance, like using a mouse and going up to a menu to get an unusual key, how to fit that into a keyboard.

[00:21:49] Speaker 02:
And they were trying to figure out how's the most efficient way to do that.

[00:21:52] Speaker 02:
They did that by saying, if you're going to use these, if you're using a millimeter key, it makes sense to adapt to the millimeter key.

[00:21:58] Speaker 02:
Now, what Your Honor is saying is, well, why wouldn't you do it the other way?

[00:22:01] Speaker 02:
Well, you don't do it the other way simply because the theory given for doing it the other way is that you want the familiar layout.

[00:22:08] Speaker 02:
That, from Google's burden, requires an underlying factual consideration.

[00:22:14] Speaker 02:
If your theory is you would do it because you want to go back to the familiar layout, you have to prove that there was a familiar layout to go back to.

[00:22:22] Speaker 02:
And here, there's simply an absence of that.

[00:22:24] Speaker 02:
We're not talking about a QWERTY keyboard.

[00:22:27] Speaker 02:
We're not talking about letters.

[00:22:28] Speaker 02:
We're talking about keys for which there was no familiar layout.

[00:22:32] Speaker 02:
And if your reason for going back is that, you need to prove that predicate.

[00:22:38] Speaker 02:
And it was Google's burden to prove that predicate and simply failed to do so.

[00:22:41] Speaker 04:
Well, I understood Google's argument on the familiar layout point to be that you want to have a keyboard which stays looking the same

[00:22:52] Speaker 04:
throughout the user's use of that keyboard for however many months or years the user uses that keyboard, except when you punch one of these keys and momentarily have a different group of selections.

[00:23:05] Speaker 04:
But the familiarity factor, as I understand the argument, is that the default keyboard and the keyboard including features that will return to the default will be the same.

[00:23:19] Speaker 02:
With respect to that, Your Honor, that is something that was asserted, this golden rule of consistency.

[00:23:27] Speaker 02:
But what the board found is that that was not what the golden rule of consistency found.

[00:23:31] Speaker 02:
They considered the testimony from two experts.

[00:23:34] Speaker 02:
And with respect to consistency,

[00:23:36] Speaker 02:
This idea of consistency was consistent operations, not consistent keyboard layouts.

[00:23:41] Speaker 02:
A predictive keyboard always is changing, but it's consistently doing that.

[00:23:46] Speaker 02:
The idea of consistency in terms of what a personal risk on the out understood was not a layout issue, but an operation issue.

[00:23:55] Speaker 02:
And what the board found in that regard

[00:23:58] Speaker 02:
that Dr. Cockburn, this is the appendix 21, failed to support the idea of cicada 2 violating that golden rule and credited Dr. Porter on this, also in the appendix of 21 and 22.

[00:24:09] Speaker 02:
What the board acknowledges is that that idea of consistency covers a wide range of concepts, not just a layout of a keyboard.

[00:24:18] Speaker 02:
Layouts can change.

[00:24:19] Speaker 02:
as long as they change consistently and they respond to the user consistently.

[00:24:24] Speaker 02:
So what was really at issue here is Dr. Cockburn's testimony being unsubstantiated.

[00:24:31] Speaker 02:
His statement concerning what was consistent was incorrect.

[00:24:34] Speaker 02:
His understanding of the characters in Sakata 2 was incorrect, even though some of them were

[00:24:42] Speaker 02:
were translated therein.

[00:24:44] Speaker 02:
His understanding of what a standard keyboard looks like in Japanese was incorrect.

[00:24:49] Speaker 02:
So it was the lack of supporting evidence and his incorrect assumptions about what was needed in consistency, what was needed as far as standard layouts.

[00:25:00] Speaker 02:
And the board simply said, if you're going to be providing us only opinion testimony, you must have more than that.

[00:25:06] Speaker 02:
So the consistency is not the keyboard layout, but the operation and user experience.

[00:25:13] Speaker 04:
In your brief, I think it's fair to say in passing, you make a suggestion that Google has waived the argument that it now makes about the distinction between claims one and four and six and nine.

[00:25:33] Speaker 04:
Do you press that argument?

[00:25:35] Speaker 04:
You didn't use the term waiver.

[00:25:36] Speaker 04:
I think you used the term belated.

[00:25:38] Speaker 04:
Are you making a waiver argument?

[00:25:40] Speaker 02:
Yes, Your Honor.

[00:25:40] Speaker 04:
You are.

[00:25:41] Speaker 04:
And their answer to that, I guess, is twofold.

[00:25:45] Speaker 04:
One is that you raised the teaching away argument in your patent owner response.

[00:25:52] Speaker 04:
And their argument about the claim one, claim four, and claim six, and claim nine disclosures was in response to that, which is legitimate under the board's rules.

[00:26:05] Speaker 04:
And also, that you didn't make any objection

[00:26:09] Speaker 04:
to that evidence on the ground that it was belated before the board.

[00:26:15] Speaker 04:
Can you respond to those points?

[00:26:16] Speaker 02:
With respect to what took place before the board, that was not made as an objection, because what we understood is, and what the board understood, is that the actual argument being presented was an argument for modifying CICADA 2.

[00:26:29] Speaker 04:
Well, but the whole point, and made, I think, at some length in the reply, is of the petitioner and discussed by Dr. Coburn.

[00:26:39] Speaker 04:
was that claim one discloses, by implication at least, the alternative to substitution, that alternative being default.

[00:26:53] Speaker 02:
With respect to that, the argument that was made below, and let me just find here

[00:27:03] Speaker 02:
specifically in the appendix at 88 and 89, and also in 83 and 84, was specifically modifying keys 22, the operation of keys 22.

[00:27:13] Speaker 02:
And what they referred to it as was an insubstantial change.

[00:27:18] Speaker 02:
They were changing Cicada II.

[00:27:20] Speaker 02:
And then they went on in the appendix of 90 and 92 to explain why they were changing Cicada II.

[00:27:25] Speaker 02:
What the board found below, and the reason we never objected to it, is because both the board and Phillips did not think that they were changing their theory on Cicada II as to whether or not there would be a change.

[00:27:36] Speaker 02:
The board specifically stated in the appendix at 17, the parties agree that CICATA 2 does not meet this limitation and dispute whether a person of minority skill in the art would have modified CICATA 2.

[00:27:49] Speaker 02:
We didn't object to their raising claim 1 because we didn't think it was changing their underlying premise that they're proposing a modification of CICATA 2.

[00:27:57] Speaker 02:
On appeal, it seems to be that they're no longer proposing a modification of CICATA 2.

[00:28:02] Speaker 02:
They're somehow proposing that this May language is an explicit teaching.

[00:28:07] Speaker 02:
That argument is certainly waived because the petition expressly relied upon modifying SCADA 2, the board's decision acknowledged that it relied upon modifying SCADA 2, and it simply found that its basis for modifying SCADA 2 was unsupported opinion testimony.

[00:28:24] Speaker 02:
Google simply didn't make or didn't provide the evidence necessary to meet the preponderance of evidence standard with respect to modifying special key characters 22 and Cicada 2.

[00:28:35] Speaker 02:
Now, I know their briefing here says, well, it would be obvious to use this on a QWERTY keyboard.

[00:28:40] Speaker 02:
Again, not an argument made below.

[00:28:42] Speaker 02:
If they're talking about QWERTY keyboards, they'd be talking about keys 21 of Cicada 2, which are closest to letters.

[00:28:48] Speaker 02:
There was a very specific argument here.

[00:28:51] Speaker 02:
Would you do something differently for Keys 22 than what CICADA 2 explicitly tells you to do so?

[00:28:57] Speaker 02:
Their basis for changing that explicit teaching was unsupported opinion testimony that fell apart.

[00:29:04] Speaker 02:
And with my remaining time, I'll point out a few places where the board explained why it fell apart.

[00:29:10] Speaker 03:
How much remaining time do you think you have?

[00:29:12] Speaker 02:
20 seconds, I believe, Your Honor.

[00:29:14] Speaker 03:
I'll give you 20 seconds.

[00:29:16] Speaker 03:
That's a red light, not a yellow.

[00:29:18] Speaker 02:
Oh, I'm sorry, Your Honor.

[00:29:19] Speaker 02:
I'm over by 20.

[00:29:20] Speaker 03:
I'll give you 20 seconds.

[00:29:22] Speaker 02:
The board stated that there were defects in Dr. Cochran's testimony, that it was insufficient to establish a preponderance of evidence, that his testimony was unsubstantiated, was not grounded in underlying facts or data, and rested on a fundamental misunderstanding of the characters about which he testified.

[00:29:39] Speaker 02:
That was the reason for the decision below, and that reasoning was correct.

[00:29:43] Speaker 03:
Thank you, Mr. Oliver.

[00:29:44] Speaker 03:
Mr. Trask has two minutes plus to rebut.

[00:29:56] Speaker 01:
So briefly on rebuttal, Your Honors.

[00:29:59] Speaker 01:
First of all, Judge Toronto, you asked a question pertaining to, aren't there just two options here, returning to the default state or not?

[00:30:06] Speaker 01:
And I heard my friend on the other side mention a number of design choices like predictive entry, multi-tap.

[00:30:13] Speaker 01:
I think your insight on that is correct, Your Honor, which is that Phillips is just turning back the clock too far.

[00:30:18] Speaker 01:
I mean, everyone agrees that predictive keyboards and multi-tap keyboards are things that existed in the prior art.

[00:30:25] Speaker 01:
But they're not things that were ever contemplated by the person with ordinary skill in reviewing the Cicada II reference.

[00:30:32] Speaker 01:
Those are other technologies that are further afield from what's actually disclosed in the reference.

[00:30:37] Speaker 01:
Based on Cicada II itself, the only testimony in this case is that the person with ordinary skill would have had two options, returning to the default keypad or not.

[00:30:44] Speaker 01:
Same with respect to the reference to the myriad ways in Dr. Coburn's testimony.

[00:30:49] Speaker 01:
He was talking about the variety of design choices one had in the prior art for

[00:30:55] Speaker 01:
keyboards.

[00:30:56] Speaker 01:
He wasn't talking specifically about the options available to the person of ordinary skill based upon the secatitude disclosure.

[00:31:03] Speaker 01:
Second of all, Judge Bryce, in your point with respect to KSR, it's right that the obvious to try discussion in KSR really doesn't contemplate kind of a concrete reason.

[00:31:15] Speaker 01:
It's enough if there's a limited number of choices and they're available to the person of ordinary skill.

[00:31:20] Speaker 01:
Here, of course, it's undisputed, however,

[00:31:23] Speaker 01:
there was a reason for the person of ordinary skill to either substitute the character or not.

[00:31:29] Speaker 01:
And that reason is that, as Philip's own expert acknowledged, and this is on appendix page 3284, characters are used with different frequencies, quote, depending on the context.

[00:31:40] Speaker 01:
And Philip's, in its own brief on page 15, acknowledges that

[00:31:44] Speaker 01:
The declarants from both parties acknowledged that how often particular characters would be used was context dependent, varying based on the user and the situation.

[00:31:53] Speaker 01:
In other words, sometimes it's more efficient to substitute the character.

[00:31:56] Speaker 01:
Sometimes it's more efficient to return to the default state.

[00:31:59] Speaker 01:
So although KSR doesn't require necessarily a firm reason, if there's a finite number of identified predictable solutions, we have that reason here in the record.

[00:32:08] Speaker 05:
What was that citation?

[00:32:11] Speaker 05:
Some people would prefer one.

[00:32:12] Speaker 05:
Some people would prefer the other.

[00:32:14] Speaker 01:
Right, so there was the Phillips expert, Dr. Porter, on 3284 of the appendix said that the characters used with different frequencies, quote, depend on the context.

[00:32:28] Speaker 01:
And then Phillips, in its own brief, acknowledged in describing the case history here on page 15 that declarants from both parties acknowledged that how often.

[00:32:35] Speaker 05:
So I guess the way that I might understand that is a chemist might prefer to have the millimeter replaced by a milligram, but a carpenter might

[00:32:43] Speaker 05:
really prefer to keep the millimeter.

[00:32:46] Speaker 01:
That's exactly right.

[00:32:47] Speaker 01:
And your honor may be referring to the testimony of Philip's own expert who acknowledged his deposition at page 3284 that a chemist would be more likely to use a milligram than a millimeter.

[00:32:56] Speaker 01:
And in that particular context, it wouldn't make sense to substitute the millimeter character with the milligram character for that purpose.

[00:33:05] Speaker 01:
I see him over my time.

[00:33:07] Speaker 03:
You don't need 20 more seconds.

[00:33:09] Speaker 01:
I'll just ask that the court, for the reasons stated in our briefs and here today at oral argument, that the court reverse the board's decision.

[00:33:15] Speaker 03:
Thank you, Mr. Graske.

[00:33:16] Speaker 03:
The case will be taken on the submission.