[00:00:00] Speaker 03:
You all are in the right place today, right?

[00:00:02] Speaker 00:
We are indeed.

[00:00:03] Speaker 03:
The first case for argument is 17-2227, Google versus Lee.

[00:00:12] Speaker 03:
Mr. Castania.

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

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

[00:00:17] Speaker 00:
At a minimum, Your Honors, this case has to be remanded to the board under SAS Institute for consideration of the non-instituted anticipation ground on Furuya.

[00:00:28] Speaker 03:
Well, if we were to.

[00:00:30] Speaker 03:
Hypothetically, if we were to agree with you on Claim 79, there's nothing left of this.

[00:00:35] Speaker 00:
That is exactly my second point, but we don't think a remand will be necessary here because the board made an analytical error in treating Claim 79.

[00:00:43] Speaker 00:
It added a quote used to select the roadmap that is displayed requirement to Claim 79 when none appears not only in that claim limitation or even in the claim itself.

[00:00:56] Speaker 00:
And when that legal error is corrected,

[00:00:58] Speaker 00:
The record compels a finding of obviousness because the Dagawa reference discloses the selected at least one section map limitation, the board so found, and the patent owner never argued that it was absent under the plain and ordinary.

[00:01:10] Speaker 03:
Is your argument, because this is all very technical and very detailed, is this has to do with at which step the display is required and the board's construction suggests that it's earlier on the process and you're saying it's required at step four?

[00:01:24] Speaker 00:
Actually, I think it's more fundamental than that because I think if you look at step four, Irana, all it says is that you have to produce an information containing image data in accordance with said graphic file, which is to be applied to a display panel.

[00:01:38] Speaker 00:
It doesn't even say it has to be a map.

[00:01:40] Speaker 00:
It could very well be words.

[00:01:43] Speaker 00:
But the point is that an additional limitation of selecting the map for display

[00:01:48] Speaker 00:
was created and applied no fewer than six times.

[00:01:51] Speaker 00:
And I can go through those with you from pages A37 and A38 of the board's opinion, if you would like.

[00:01:59] Speaker 00:
But I can show you every time, and this was not included at all in the institution decision, but it made its appearance in large part because somehow or another a comment that Google made in its petition about the de Galo reference itself and what it disclosed.

[00:02:14] Speaker 00:
That was at page 50 of the petition.

[00:02:16] Speaker 00:
which is at 174 of the appendix.

[00:02:19] Speaker 00:
Somehow or another, that comment about Dagawa, about how the mesh map number is selected so that the correct rectangular map division is displayed, that morphed into a claim limitation.

[00:02:31] Speaker 01:
But if we agree with you that the board misconstrued the claim, don't we have to send it back on because of the new claim construction, right?

[00:02:44] Speaker 01:
And there were other grounds.

[00:02:45] Speaker 00:
No, there weren't any other grounds.

[00:02:47] Speaker 00:
The patent owner was warned in the order after the grant of inter partes review that the response was the time to put your defenses up.

[00:03:01] Speaker 00:
And the only defense that they put up with regard to this limitation was the argument that this had to be a line.

[00:03:12] Speaker 00:
It had to be a line instead of

[00:03:14] Speaker 00:
something that was in more dimensions than just a line.

[00:03:17] Speaker 00:
They said each section having a line shape.

[00:03:20] Speaker 00:
And this was the only argument that was put forth against us.

[00:03:23] Speaker 00:
And in fact, when you look at the board's opinion at page 37, the board finds explicitly that mesh map number J3 identifies a mesh map.

[00:03:33] Speaker 00:
And Judge Lurie, in our view, this case is exactly like the Owens-Cording versus Fastfeld case that we cited in our brief.

[00:03:40] Speaker 00:
There's only one possible evidence-supported finding here

[00:03:44] Speaker 00:
and the board's rejection of Google's challenge when the correct construction is applied is not supported by substantial evidence.

[00:03:50] Speaker 01:
You're saying there were no non-instituted grounds?

[00:03:54] Speaker 00:
There was one non-instituted ground, but that's a different reference.

[00:03:59] Speaker 01:
Well, then, if we agree with you on the clamp construction, we still have to send it back, right?

[00:04:06] Speaker 00:
No, because as we've shown in our brief, correct the claim construction with regard to the section map limitation

[00:04:14] Speaker 00:
That's it for Claim 79.

[00:04:15] Speaker 00:
That was the Chief Judge process question to me, starting out.

[00:04:19] Speaker 00:
You don't have to send it back on the other ground.

[00:04:20] Speaker 00:
If you agree with us, and you apply Owens-Corning versus Fastfeld, Claim 79 is done.

[00:04:25] Speaker 00:
That's it.

[00:04:26] Speaker 00:
There hasn't been a contrary argument.

[00:04:28] Speaker 03:
It would automatically all of the other grounds, if they didn't institute forfeit, if we invalidated it.

[00:04:33] Speaker 00:
I mean, if you invalidate that claim, there's no reason for us to go back on another ground and try to invalidate it under a different ground.

[00:04:41] Speaker 00:
And that's really the crux of our submission here.

[00:04:44] Speaker 00:
And unless the court has further questions for me, I'll return to give rebuttal on this and then respond to my friend's cross appeal.

[00:04:53] Speaker 00:
Thank you.

[00:05:03] Speaker 02:
It may please the court, James Hoppenfeld for Lee.

[00:05:07] Speaker 02:
I want to talk, I'm going to start with just

[00:05:10] Speaker 02:
I think what would be helpful here is to take a little step back and talk about what these claims are and what the invention is.

[00:05:16] Speaker 02:
And then I'm going to talk briefly about Nogawa and what the board found with Nogawa and why the finding of non-obviousness with respect to Nogawa was supported by substantial evidence.

[00:05:28] Speaker 02:
So we're just talking now about claim 79.

[00:05:30] Speaker 02:
Yeah.

[00:05:31] Speaker 02:
First, I'm going to talk about claim 79.

[00:05:33] Speaker 02:
Then I'm going to move to the root information claim 64 and 77.

[00:05:37] Speaker 02:
OK?

[00:05:38] Speaker 02:
And I realized I have limited time to do that.

[00:05:41] Speaker 02:
So there is a fundamental difference between the invention here and all the prior art that you're going to see in this case and the next case.

[00:05:50] Speaker 02:
What the invention is here is the idea that you can create a map by superimposing two maps on each other.

[00:06:01] Speaker 02:
One map is a time variant map, and the other is a basic map, like the standard geographical map.

[00:06:08] Speaker 02:
you won't find anywhere in the prior art this notion of taking map that's time variant and superimposing it on another map.

[00:06:16] Speaker 02:
And all of these claims are directed to variations of that.

[00:06:20] Speaker 02:
So let's get claim seven and nine out, because what this is directed to is one embodiment of that particular concept.

[00:06:28] Speaker 02:
And in this embodiment, there's, let me step back, there's two embodiments.

[00:06:32] Speaker 02:
One embodiment is you send the time variant map

[00:06:36] Speaker 02:
And then it is superimposed locally on the time invariant map, which is like a basic geographical map with roads and things like that.

[00:06:45] Speaker 02:
Another embodiment is where you send traffic information and time variant data.

[00:06:52] Speaker 02:
That is used to create the time invariant map, which is in turn superimposed.

[00:06:58] Speaker 02:
That is what claim 79 is about.

[00:07:01] Speaker 02:
And that is why selection is so important here, and I'm going to explain.

[00:07:05] Speaker 02:
So in claim 79, you have this time variant data, like your traffic information, and that is sent to some receiver.

[00:07:13] Speaker 02:
The receiver takes that time variant information and it creates this time variant map.

[00:07:21] Speaker 02:
That's why you have this map identifier and it's taking the section map.

[00:07:25] Speaker 02:
That section map plus the time variant data is used to create the time variant map.

[00:07:32] Speaker 02:
That time variant map itself does not exist anywhere in the prior art.

[00:07:36] Speaker 02:
Once you have made this time variant map, it only has one use and that is to superimpose on a basic map.

[00:07:42] Speaker 02:
And although you don't see the basic map in this claim, it doesn't need to be there because what you've done is you've created the time variant map.

[00:07:50] Speaker 02:
Now let's turn to Degawa.

[00:07:52] Speaker 02:
What Degawa does is it's just like all the other prior references here.

[00:07:57] Speaker 02:
It takes the time variant information, it already has one map which is already in storage,

[00:08:02] Speaker 02:
And then it takes that information and it superimposes one image on it.

[00:08:07] Speaker 02:
There is no creation of a time-variant map.

[00:08:10] Speaker 02:
And that's why we heard the question as well, what about this claim construction issue if it's right or wrong?

[00:08:16] Speaker 02:
The board separately found there's no time-variant map in Dagawa, let alone selection of a map.

[00:08:23] Speaker 02:
So we don't even have the time-variant map.

[00:08:26] Speaker 02:
Now that is a big difference.

[00:08:28] Speaker 02:
Because what happens with Digawa, when you only have your basic map that's in memory, and I realize this is highly technical, and all you're doing is superimposing an image one at a time, you don't have the same flexibility, and data structures are totally different.

[00:08:41] Speaker 02:
So how you divide the information in the processors is totally different.

[00:08:47] Speaker 02:
And that's why what is disclosed here and claimed here is so powerful.

[00:08:52] Speaker 02:
The board seized on this.

[00:08:53] Speaker 02:
when they recognize that what Daigawa does is Daigawa doesn't, there's no map selection by any of the information that comes in.

[00:09:01] Speaker 02:
It just is a identifier.

[00:09:03] Speaker 02:
The map is already pre-selected by the GPS receiver.

[00:09:08] Speaker 02:
The GPS receiver in Daigawa receives the GPS signal and then it determines what map is displayed.

[00:09:15] Speaker 02:
And it doesn't even matter what map is displayed.

[00:09:18] Speaker 02:
Now, why is, again, selection is very important here because

[00:09:23] Speaker 02:
In the patent and what's claimed, you're taking the map identifier and you're selecting a section map, which is for just creation of that first layer.

[00:09:32] Speaker 02:
In Degawa, the only thing that link number does is just says, here's where you put this image.

[00:09:38] Speaker 02:
That's all it is.

[00:09:41] Speaker 02:
The map is selected and regardless of whether or not it's placed, the only thing, and this is- Regardless of whether or not, what did you say?

[00:09:48] Speaker 02:
Regardless of the issue of display,

[00:09:51] Speaker 02:
The only map that is selected in Dagawa is the selection that's made by the GPS signal.

[00:09:57] Speaker 02:
That finding by the board... This is all very technical.

[00:10:01] Speaker 03:
Sorry.

[00:10:01] Speaker 03:
Just help me out here in terms of focusing on the specifics of the board's claim construction on 79 and your friend's argument as to this additional limitation being imposed.

[00:10:13] Speaker 03:
Can you sort of direct, you've been talking globally and I appreciate it, but there are lots of claims here and it's hard to decipher what's in one claim and what's in the other.

[00:10:21] Speaker 03:
So can you just focus on at least one of their arguments, which is this display, the board's putting this display into the selecting second step.

[00:10:32] Speaker 02:
There's two elements to that.

[00:10:33] Speaker 02:
First of all, the board didn't put display in there.

[00:10:39] Speaker 02:
The board is simply reading the claim as it is.

[00:10:43] Speaker 02:
Okay, and we explained in our brief how when you are taking the time-variant information, you're taking that, selecting a map, and then you're gonna have a component.

[00:10:52] Speaker 02:
There's only one thing you can possibly do with that, which is to overlay it and display it.

[00:10:57] Speaker 02:
So it makes no sense to say that there isn't display.

[00:10:59] Speaker 02:
And we cited in our brief many times where there were repeated admissions, repeated admissions by both the other side's expert and in their argument papers that display is required.

[00:11:09] Speaker 02:
But even if you say,

[00:11:11] Speaker 02:
display is not required, even if you set that requirement aside.

[00:11:14] Speaker 02:
The question is, is there a selection?

[00:11:17] Speaker 02:
The final decision of the board was that there wasn't even a selection.

[00:11:21] Speaker 02:
And the reason there isn't a selection is because a selection has to happen.

[00:11:25] Speaker 02:
It's not just an identification.

[00:11:27] Speaker 02:
Identification and selection are two things.

[00:11:30] Speaker 02:
The only thing their expert ever said is, hey, this mesh map number in Degawa, it identifies a map.

[00:11:38] Speaker 02:
But that's not the same as selecting a map.

[00:11:40] Speaker 02:
And again, in the patent, the reason you're selecting a map is because you're taking that map out of memory, creating this time variant map, and then superimposing it.

[00:11:48] Speaker 03:
But at a minimum, based on just our little brief discussion here, that suggests that at least a reman might be in order if we're, I mean, the board was the one that introduced, the board is talking about display, right?

[00:11:59] Speaker 02:
We didn't know that on the other show.

[00:12:01] Speaker 02:
The claims do require display.

[00:12:04] Speaker 02:
And we walked through this in the brief because the only thing you can do with this selected map is to display it.

[00:12:10] Speaker 02:
So when the board was talking about display, again, they admitted that display was in there, number one.

[00:12:15] Speaker 02:
But number two, there has to be display because what the board is construing is not just the claim element.

[00:12:21] Speaker 02:
Their argument that display is not in the claim element is not the same as saying that display is not in the claim.

[00:12:27] Speaker 02:
Display is in the claim.

[00:12:29] Speaker 02:
So when the board said, yes, this has to be displayed, it's because subsequent elements require that display.

[00:12:35] Speaker 02:
You're not going to have a map that's not displayed.

[00:12:40] Speaker 02:
So what the board did is it said, when it said yes, when it used the word for display in the opinion, not only, again, were they mimicking what was already in Google's own arguments, it's what's in the claim.

[00:12:53] Speaker 02:
Because if you look at the subsequent- Can you just bear with me a little?

[00:12:56] Speaker 03:
I'm sorry.

[00:12:56] Speaker 03:
Isn't what is displayed, I mean, Google is arguing that claim 79 is clear, that what is displayed is the information containing image data.

[00:13:05] Speaker 03:
And that's produced two steps down.

[00:13:10] Speaker 03:
Am I missing something?

[00:13:11] Speaker 02:
Or do you want to respond to that?

[00:13:13] Speaker 02:
Are they wrong about that?

[00:13:15] Speaker 02:
It doesn't answer the question.

[00:13:19] Speaker 02:
Because the question is, is the map that's being selected displayed?

[00:13:24] Speaker 02:
And if you follow through, and we walked through this in the brief, it says, OK, we're going to select a selection map.

[00:13:29] Speaker 02:
That selection map has a component, which is time variant.

[00:13:32] Speaker 02:
That produces a graphic file.

[00:13:35] Speaker 02:
So that graphic file,

[00:13:37] Speaker 02:
is the section map plus the time variant information, which must be displayed.

[00:13:42] Speaker 02:
There is nothing else you can do with it.

[00:13:44] Speaker 02:
And that is clear from the last element of the claim.

[00:13:47] Speaker 02:
It says, producing an information image data in courts with a graphic file, which is to be supplied to a display panel.

[00:13:52] Speaker 02:
So there is no question that the map that is selected is displayed.

[00:13:57] Speaker 02:
It cannot be any other way.

[00:13:58] Speaker 01:
If we agree with you, weren't there other grounds and references that weren't instituted and that need remand?

[00:14:06] Speaker 02:
No.

[00:14:07] Speaker 02:
And that has to do with the SAS case, Your Honor.

[00:14:10] Speaker 02:
OK, so there was one other thing.

[00:14:11] Speaker 02:
And first, it's very important to note that that one other ground, the Patent Office in its institution decision made very clear there was no reasonable likelihood of success on that.

[00:14:23] Speaker 02:
And you do not have to institute.

[00:14:25] Speaker 02:
And we have a procedural issue here, because you do not have to remand.

[00:14:29] Speaker 02:
There is a case, PGS.

[00:14:32] Speaker 02:
Now, its procedural circumstances are different.

[00:14:34] Speaker 02:
It's not cited in our brief, but it is cited in theirs.

[00:14:37] Speaker 02:
where Judge Toronto wrote an opinion where he made it clear that it's effectively a discretionary thing whether or not you remand.

[00:14:45] Speaker 02:
Here, you should not remand because we already have a finding that there's no reasonable likelihood of success.

[00:14:51] Speaker 02:
If this appeal is under 706, then the question is whether any remand would be above prejudice, and that is harmless error in 706.

[00:14:58] Speaker 02:
It's a harmless error if they did make a mistake because they were right on the merits, and they've never complained about the merits.

[00:15:05] Speaker 02:
So you shouldn't remand because that would be in violation of the Rule 706 Harmless Error Standard.

[00:15:11] Speaker 02:
But even if you set aside the Harmless Error Standard, they would have had to move for remand before this appeal.

[00:15:17] Speaker 02:
And they didn't do it.

[00:15:18] Speaker 02:
So what they're really asking for is for piecemeal appeals.

[00:15:21] Speaker 02:
What they're saying is do this appeal, asking for remand after the appeal, which in case that goes through, there would be a second appeal.

[00:15:30] Speaker 02:
And if you read PGS or even any of the other cases that they cited,

[00:15:34] Speaker 02:
It's very clear that we're trying to discourage piecemeal appeals here.

[00:15:38] Speaker 02:
So the time to address that issue has passed.

[00:15:44] Speaker 03:
Do you want to move to the cross field?

[00:15:46] Speaker 02:
Yes, I'd like to talk to the cross field.

[00:15:49] Speaker 02:
I want to focus on the claims once more, Your Honor, real quick.

[00:15:51] Speaker 02:
I don't know how much time I have, because I'm worried that I'm into my rebuttal.

[00:15:55] Speaker 02:
You are into your rebuttal.

[00:15:57] Speaker 02:
Can I reserve a little bit of time?

[00:15:59] Speaker 03:
Well, it's your time, so either you leave some of it or you're down.

[00:16:03] Speaker 02:
For the cross appeal, when you look at the claims, these again are claims that are slightly different than claim 79, because you have to receive the whole map.

[00:16:15] Speaker 02:
Here, instead of traffic information, it's route information.

[00:16:19] Speaker 02:
And the key to remember here is that Kakihara is just like Degawa.

[00:16:23] Speaker 02:
There are no

[00:16:24] Speaker 02:
superimposition of maps.

[00:16:26] Speaker 02:
Same thing with Zirani.

[00:16:27] Speaker 02:
Zirani doesn't even tell you even how the information gets.

[00:16:31] Speaker 02:
It's all about how you divide up the data for a map that's already been pre-stored.

[00:16:36] Speaker 02:
Neither of these references have the superimposition of maps.

[00:16:39] Speaker 02:
And when you combine them together, as the board did, you don't even get one of the claim elements.

[00:16:46] Speaker 02:
One of the claim elements is missing, which is the receipt of the attribute designated statement.

[00:16:51] Speaker 02:
And the reason why that's missing is because this whole concept of superimposing maps is in neither prior art reference.

[00:16:58] Speaker 02:
And how the board got there is an error for the reasons that we discussed, I think, pretty clearly in our brief.

[00:17:04] Speaker 02:
I think it's also important to note for the cross appeal, you have here a very unique case, because this would be the first case ever, at least that I have seen from all the federal circuit cases I've read on obviousness,

[00:17:15] Speaker 02:
where you actually would have found an upheld defining of obviousness where a prior art reference was structurally modified and then combined with another reference in order to find obviousness.

[00:17:28] Speaker 02:
That requires double inference.

[00:17:30] Speaker 02:
KSR counsels against the types of hindsight.

[00:17:34] Speaker 02:
The Gore case, that is an error of law in just the obviousness analysis.

[00:17:39] Speaker 02:
And it would be unique to this case itself.

[00:17:42] Speaker 02:
I'd like to reserve whatever time I have left.

[00:17:44] Speaker 03:
Can I just ask you, you just mentioned in passing when we were talking about SAS, the PGS case.

[00:17:49] Speaker 03:
And you said it's the one they cited in their briefs.

[00:17:52] Speaker 03:
And I was just looking.

[00:17:53] Speaker 03:
Do you recall whether it was maybe this case or the other case?

[00:17:55] Speaker 03:
Because I can't find it.

[00:17:56] Speaker 02:
You know, I don't recall your number.

[00:17:58] Speaker 02:
I can tell you that it's PGS Geophysical V.E.

[00:18:02] Speaker 02:
Yankee.

[00:18:02] Speaker 03:
No, I know the case.

[00:18:03] Speaker 03:
I just can't find it in the briefs.

[00:18:04] Speaker 02:
All right, that's fine.

[00:18:05] Speaker 03:
I'm sorry about that.

[00:18:06] Speaker 03:
All right, we'll reserve the two minutes for rebuttal and the cross-gala.

[00:18:16] Speaker 00:
Thank you, Your Honor.

[00:18:17] Speaker 00:
To address the question you were just asking my friend, in the PGS case, Judge Toronto wrote for the court that neither party in that case was seeking or wanted a remand.

[00:18:27] Speaker 01:
That's what I recall.

[00:18:28] Speaker 00:
And in fact, I'm going to read to you right from that decision, quote, we do not rule on whether a different conclusion might be warranted in a case in which a party has sought SAS-based relief from us.

[00:18:40] Speaker 00:
That's this case.

[00:18:41] Speaker 00:
We're asking for SAS-based relief.

[00:18:43] Speaker 00:
As for the rebuttal on claim 79, my friend posed the question is, the question is, is the selected map being displayed?

[00:18:54] Speaker 00:
It isn't.

[00:18:55] Speaker 00:
And it's not just two steps removed, Chief Judge Prost, it's actually about seven steps removed.

[00:18:59] Speaker 00:
Because the way the claim reads is, you start by selecting a section map, and then that section map involves sections.

[00:19:08] Speaker 00:
Each section of that section map has a component.

[00:19:12] Speaker 00:
Each component

[00:19:13] Speaker 00:
has to have an attribute that is designated.

[00:19:17] Speaker 00:
That attribute in turn has to produce a graphic file.

[00:19:20] Speaker 00:
The graphic file then has to be used to produce image data, and then the image data, step seven, has to be applied to the display panel.

[00:19:28] Speaker 00:
And that image data isn't necessarily a map.

[00:19:31] Speaker 00:
As I said before, it could be any type of image data.

[00:19:34] Speaker 00:
That's not what the claims require.

[00:19:36] Speaker 00:
My friend ran far away from the notion that the board had inserted an additional limitation.

[00:19:43] Speaker 00:
He didn't answer our arguments.

[00:19:46] Speaker 00:
And six different times, rather, at pages 37 and 38, the board inserted this additional limitation.

[00:19:53] Speaker 00:
So we are at the very least entitled to a remand, but we also think that because of the board's findings, because of the unrebutted expert testimony from Dr. Michelson, you'll notice that their expert, Mr. Cole, didn't even address claim 79.

[00:20:07] Speaker 00:
He addressed the other two claims that we'll talk about in a moment.

[00:20:09] Speaker 00:
But he didn't address Claim 79 at all.

[00:20:11] Speaker 00:
So there's no conflicting expert testimony on this.

[00:20:15] Speaker 03:
Can I just ask you a question?

[00:20:16] Speaker 03:
Sure.

[00:20:16] Speaker 03:
You may know the answer to it.

[00:20:17] Speaker 03:
It's a little removed from this case.

[00:20:20] Speaker 03:
But let's assume we were to sort of agree with your arguments on Claim 79, but send it back as a remand, just because we think the board ought to take a look at it itself.

[00:20:31] Speaker 03:
Is SAS alive, too?

[00:20:33] Speaker 03:
Is the board nonetheless going to have to, if we do that, decide it

[00:20:38] Speaker 03:
on all the uninstituted grounds?

[00:20:40] Speaker 00:
I think you have to remand on the one, there's only one uninstituted ground here and that's the anticipation under Friuya.

[00:20:48] Speaker 03:
Okay, so then when it goes back to the board they'd have to revisit this under Dagawa and then also do the other end.

[00:20:54] Speaker 00:
Right, I mean consistent with whatever this court's mandate would be.

[00:20:57] Speaker 00:
But again, our principal contention is you don't have to do cases like the Fast-Feld case.

[00:21:03] Speaker 00:
It's like Belden versus Birktek.

[00:21:05] Speaker 00:
The holdings of the board and the undisputed testimony show that there really is only one correct outcome here with regard to Claim 79.

[00:21:12] Speaker 00:
Now, as to the other claims.

[00:21:18] Speaker 00:
My friend suggested that this would be some sort of breathtaking case if you were to affirm because of the modification of a prior reference.

[00:21:27] Speaker 00:
KSR itself, if I remember correctly, and I was in the process of pulling up

[00:21:35] Speaker 00:
the KSR decision.

[00:21:36] Speaker 00:
But my recollection is that one of the prior references there had to be modified in order to put together the two references that the court ruled as a matter of law were combinable and resulted in obviousness at the Supreme Court level.

[00:21:49] Speaker 00:
And this court, in cases like Classco, which is cited in our brief, make very clear that the flexible approach does not require the sort of puzzle piece approach, where this one has to fit in perfectly.

[00:22:05] Speaker 00:
So I think that this court's decisions, as well as KSR, show incorrect the notion that my friend has been arguing, that you can't modify a prior reference in this way.

[00:22:16] Speaker 00:
And when you take away that legal, that claim of legal error, this case becomes a substantial evidence case.

[00:22:23] Speaker 00:
And the board gave two reasons supported by much substantial evidence as to why one would combine Kakahara and Asrani.

[00:22:33] Speaker 00:
I'm happy to go through those with you, but they're in our brief.

[00:22:37] Speaker 00:
The court furthermore had ample substantial evidence supporting why the elements that the board thought were missing from Israni were taught or suggested by Kakihara.

[00:22:48] Speaker 00:
And that can be found in the board's decision at, I believe, pages 27 and 28.

[00:22:55] Speaker 00:
And it's supported by our experts' declaration, which was found credible over their experts' declaration.

[00:23:01] Speaker 00:
at paragraphs 81, 84, and 85, among others.

[00:23:06] Speaker 00:
So, unless the court has further questions on the cross-appeal, we're happy to rest on the argument already given and on our briefs.

[00:23:15] Speaker 02:
Thank you.

[00:23:16] Speaker 02:
Your Honor, in the time I have left, I'd like to address the case law that we just heard about, which is in particular, KSR and CLASCO.

[00:23:23] Speaker 03:
And that's just on the cross-appeal.

[00:23:25] Speaker 02:
And this is just on the cross-appeal.

[00:23:26] Speaker 02:
And why this is so different, okay?

[00:23:29] Speaker 02:
So, CLASCO is a good example.

[00:23:32] Speaker 02:
In CLASCO, which you had to do a caller ID case, all of the elements of the claim were in one particular element.

[00:23:42] Speaker 02:
The only thing that was missing was a speaker that does two functions.

[00:23:48] Speaker 02:
In another prior reference, we had a speaker that did two functions.

[00:23:52] Speaker 02:
So when you combine those two things together, you got the whole invention.

[00:23:56] Speaker 02:
So all you had to do was take the function

[00:23:59] Speaker 02:
of this speaker that was combined in and modify it according to what the function already was in the first prior art reference.

[00:24:06] Speaker 02:
That is standard, it's just like KSR.

[00:24:09] Speaker 02:
Here we have something totally different because here you need two suggestions to get there.

[00:24:14] Speaker 02:
Here you have to modify the reference and even when you modify the reference and you combine the modified reference with Izrani, you still don't have the invention, you still have to do further modification to get there.

[00:24:28] Speaker 02:
That's this double suggestion inference on inference.

[00:24:32] Speaker 02:
So there's no question that KSR says, yes, you can do a modification.

[00:24:37] Speaker 02:
What KSR does not allow you to do, or at least has not been done, is to do hindsight analysis.

[00:24:43] Speaker 02:
And when you're doing double layers of modification, that is, I need a suggestion not just to combine, but I need a suggestion also to modify the reference.

[00:24:53] Speaker 02:
And when you modify the reference, and that still doesn't get you the invention when you combine them, and you need further suggestion in order to get to obviousness, which is what happened here, well, at that point, you might as well open up obviousness to any type of hindsight reconstruction that you want, because then it doesn't matter what's in the prior art.

[00:25:11] Speaker 02:
You can just take whatever's in the prior art, modify it as you see fit, and if so factor, you have obviousness.

[00:25:17] Speaker 02:
If that's obviousness, if you can do that kind of obviousness analysis, we've changed obviousness analysis, and you might as well take Gore,

[00:25:23] Speaker 02:
and all the cases that KSR even cited, and throw them out the window.

[00:25:27] Speaker 02:
KSR is not just a case that says you can always find obviousness.

[00:25:31] Speaker 02:
It cited earlier Supreme Court cases that found non-obviousness on facts that were not even as strong as this case, like the Adams case.

[00:25:41] Speaker 02:
So I finish my remarks by commending the Court to look at those cases in the way I suggest.

[00:25:48] Speaker 02:
Thank you.

[00:25:48] Speaker 02:
We thank both sides, and the case is submitted.