[00:00:00] Speaker 01:
As we can tell from the fact that we have a full courtroom today, we have several arguments.

[00:00:05] Speaker 01:
We have five cases on the docket, one of which has been submitted on the briefs.

[00:00:10] Speaker 01:
The other four cases are being argued today.

[00:00:13] Speaker 01:
The first is Ironberg Investments versus Valcorp.

[00:00:19] Speaker 01:
It's an appeal from the decision.

[00:00:22] Speaker 01:
The case number is 181432.

[00:00:28] Speaker 01:
Mr. Becker, you want five minutes for rebuttal?

[00:00:35] Speaker 01:
Yes.

[00:00:48] Speaker 03:
Good morning.

[00:00:49] Speaker 03:
May I please the court?

[00:00:50] Speaker 03:
My name is Robert Becker.

[00:00:51] Speaker 03:
I'm with Minat, Phelps, and Phillips, and I represent the patent holder, Ironberg Inventions.

[00:00:57] Speaker 03:
The patent holder in this case invented a very unique video game controller, and a key aspect of it is that it is a handheld controller.

[00:01:07] Speaker 03:
In the video game industry, there are roughly two types of controllers.

[00:01:12] Speaker 03:
There's an Atari type machine that you can walk up to, put your hands on controls and control it, but you don't hold it in your hands and you don't walk away with it and you can't move around with it.

[00:01:24] Speaker 03:
You move to it, it is supported typically by the floor, but it could be a table, and you play with it with your hands.

[00:01:32] Speaker 03:
And that's how that operates.

[00:01:33] Speaker 01:
We're under BRI here though, right?

[00:01:35] Speaker 01:
We're still under the reasonable interpretation that this is before the change.

[00:01:41] Speaker 01:
You are correct.

[00:01:42] Speaker 01:
So I understand your arguments, but given that distinction that you just made, the one that you can't move around with, if you can move around and

[00:01:54] Speaker 01:
put part of it between your legs, why doesn't that satisfy that distinction?

[00:01:58] Speaker 03:
Well, you can't move around with it.

[00:02:01] Speaker 03:
You put it between your legs to anchor it.

[00:02:03] Speaker 03:
You essentially become part of the seat and the floor, and your legs clamp on it so that it can't move.

[00:02:10] Speaker 03:
And in fact, with respect to the Tosaki reference and the steering wheel that it is, it is meant to mimic

[00:02:18] Speaker 03:
an actual steering wheel in a car such that the base of the whole thing is fixed so that you can turn the wheel and by doing that, give it inputs, the base has to be fixed in order for it to work in that faction.

[00:02:33] Speaker 03:
If it was a handheld controller and you turned it, the whole thing would turn

[00:02:38] Speaker 03:
And you wouldn't have the rotational aspect that the Tosaki reference relies on.

[00:02:42] Speaker 03:
It is an actual steering wheel and it works just like the one in your car except for it sends an electronic signal to a game as opposed to driving a car.

[00:02:52] Speaker 01:
But I think... Could that Tosaki steering wheel be turned without it being anchored?

[00:02:57] Speaker 03:
There's no evidence of that and I don't believe it does, no.

[00:03:00] Speaker 01:
So what's the best support in your own spec for the proposition that fully operable in your hands alone is required?

[00:03:10] Speaker 03:
Well, it's the totality, but I can go through the examples.

[00:03:15] Speaker 03:
It is stated in the preamble, in the claims, in the summary of the invention as being a handheld controller.

[00:03:22] Speaker 03:
And that means, in the art, a controller that you hold in your hands, as I was explaining before.

[00:03:27] Speaker 03:
There's the fixed kind, and there's the handheld kind.

[00:03:30] Speaker 00:
But it's not necessarily restricted to a controller

[00:03:36] Speaker 00:
that doesn't have other support.

[00:03:39] Speaker 03:
Well, we got into this discussion before the board because they said, well, what about if you have a controller at Best Buy?

[00:03:47] Speaker 03:
And it's attached to a wall so that you won't steal it.

[00:03:52] Speaker 03:
And it was asked whether that would still be a handheld controller.

[00:03:56] Speaker 03:
And I think that that sort of twists the invention, twists the claim language, and twists the inquiry.

[00:04:02] Speaker 03:
The inquiry is whether the thing, whether you've bolted it to the wall or not, is a handheld controller.

[00:04:08] Speaker 00:
Well, the focus of the claim, the focus of the entire invention, is all about the controls and the placement of various controls on the front and the back and providing additional capabilities by

[00:04:21] Speaker 00:
adding to the controller that controls on the back.

[00:04:25] Speaker 00:
That's, it seems to me, from a fair reading of both of these patents, that's the thrust of the inventions here.

[00:04:35] Speaker 00:
Whether the controller itself is big, small, large, attached, not attached,

[00:04:45] Speaker 00:
is it seems to me as sort of a secondary consideration and I don't read anything in this specification that places any restrictions on the

[00:04:55] Speaker 00:
Invention on the basis of support.

[00:04:59] Speaker 03:
Actually, it's a primary consideration.

[00:05:01] Speaker 03:
I'm just holding up one of the figures of the patents, but it shows the controller in the hands of a user.

[00:05:09] Speaker 03:
The size and the shape.

[00:05:11] Speaker 04:
But the importance of your invention is not to move from those old arcade-style games that are in a big box on the floor to a handheld controller.

[00:05:21] Speaker 04:
You've added new buttons and new capacity.

[00:05:23] Speaker 04:
So even if Tosaki isn't completely handheld, what we're concerned about is it teaches the new elements.

[00:05:34] Speaker 04:
I know that you think it's just not useful at all as art because it's not a handheld controller, but if we agree with the board that under BRI, handheld doesn't have to be exclusively handheld, but the controller part is what's being held by the hand and used, why isn't that good enough?

[00:05:51] Speaker 03:
Well, I think what the board says was it can have support other than the hands, and that essentially eviscerates the whole handheld limitation.

[00:05:59] Speaker 03:
If we accept that argument, there is no handheld limitation, because something can be completely supported on this desk, and all I have to do is come up and touch a control with a finger.

[00:06:08] Speaker 04:
That would eviscerate a- When you say handheld limitation, are you relying on a preamble for that?

[00:06:14] Speaker 03:
Well, it's the preamble, but the handheld aspect runs through the claims because it talks about positioning with respect to your fingers.

[00:06:21] Speaker 04:
Sure, but that goes back, I think, to what I was talking about in the sense that it's talking about the controller itself being held by the hands in the various places where you can have buttons and stuff.

[00:06:33] Speaker 04:
If you read every time, or at least when I do, where they're talking about being held in the hand, it's followed by positioning of thumbs or fingers or things like that.

[00:06:43] Speaker 04:
And if that's what we're looking at is whether this controller, whether the controls are all in the hands as opposed to some other place.

[00:06:51] Speaker 04:
I mean, some arcade games have pedals if they're a driving game or, you know, all other kinds of things.

[00:06:57] Speaker 04:
And they're not exclusively held in the hands.

[00:07:00] Speaker 04:
Then why doesn't Tazaki teach all of those things?

[00:07:02] Speaker 03:
Well, the challenges are different when you have a handheld controller because your fingers have to be in the correct place.

[00:07:09] Speaker 03:
You don't have the luxury of letting go

[00:07:12] Speaker 03:
and touching while something else supports the controller.

[00:07:17] Speaker 03:
It's meant to be movable.

[00:07:19] Speaker 03:
It's meant to be positioned such that your hands curve around it, unlike other controllers, and that you can move around and play a game.

[00:07:30] Speaker 03:
That problem doesn't exist with other controllers.

[00:07:34] Speaker 01:
If we agree with you on handheld, then that

[00:07:38] Speaker 01:
means that the anticipation finding was improper.

[00:07:42] Speaker 02:
That's correct.

[00:07:42] Speaker 01:
But what does that do with respect to the obviousness determination?

[00:07:47] Speaker 01:
It doesn't necessarily end the inquiry, does it?

[00:07:49] Speaker 03:
You are correct about that.

[00:07:54] Speaker 03:
You're correct about that.

[00:07:55] Speaker 03:
Let me bring one more point with respect to the claim construction.

[00:07:58] Speaker 03:
The claims also, with respect to the handheld controller, they say you have a handheld controller that has an outer case with a front and a back.

[00:08:08] Speaker 03:
So that's the front and the back of the outer case.

[00:08:11] Speaker 03:
And then the controls are on the back.

[00:08:14] Speaker 03:
And the back is a reference back to the antecedent bases, which is the back of the outer case.

[00:08:20] Speaker 03:
Again, Tosaki doesn't have, even if it has steering wheel controls, it doesn't have controls on the back of the case.

[00:08:27] Speaker 03:
If we were to say that whole thing satisfies the limitation of being a handheld controller, the controls are not on the back of the outer case of Tosaki.

[00:08:36] Speaker 03:
If anything, they're inside the steering wheel, and you can access them from the back, but they're not on the back, and they're certainly not on the back of the outer case, which would be where your knees are when it's locked between your knees.

[00:08:50] Speaker 03:
On the question you raised, the obviousness finding by the board was based on the assertion of N-right.

[00:08:59] Speaker 03:
Enright, in combination with Tosaki, Enright was used for the independent claim one, for all of the limitations, so that would include everything, except for length.

[00:09:16] Speaker 03:
And it said that Tosaki satisfied the length requirements, because Enright just has little hard buttons on the back.

[00:09:22] Speaker 03:
They're described as mode buttons.

[00:09:24] Speaker 03:
So you can imagine these are not firing buttons.

[00:09:27] Speaker 03:
They're mode A or mode B. They're like a setting.

[00:09:31] Speaker 03:
So what was said by the petitioner was that Tosaki's extra long paddles could be used instead of these mode buttons.

[00:09:41] Speaker 03:
The problem was that they didn't say anything about flexibility, which was a key limitation in the claims, that the controls had to have inherent flexibility.

[00:09:51] Speaker 03:
The reason for that is you rapid fire with your fingers on the back of a controller and they

[00:09:55] Speaker 03:
flutter around.

[00:09:56] Speaker 03:
A switch that you just push that's hard doesn't do that.

[00:10:00] Speaker 00:
The controls in Tosaki are both resilient and flexible.

[00:10:06] Speaker 03:
Isn't that right?

[00:10:08] Speaker 03:
Well, that was asserted, yes.

[00:10:10] Speaker 03:
But that was not the basis for what was instituted and was not argued by Valve.

[00:10:16] Speaker 04:
Valve said, and in fact... What was it in the reply brief after the board came up with a new construction?

[00:10:22] Speaker 04:
Wasn't it?

[00:10:22] Speaker 03:
Well, the board

[00:10:24] Speaker 03:
No, the board came up.

[00:10:26] Speaker 03:
I think the construction, we made an argument that.

[00:10:32] Speaker 04:
In their petition, they argued for a certain construction.

[00:10:36] Speaker 04:
You had a response.

[00:10:37] Speaker 04:
Yes.

[00:10:37] Speaker 04:
When the board instituted, they disagreed with the petitioner's construction.

[00:10:42] Speaker 04:
I don't know if they agreed with yours or if they came up with their own.

[00:10:46] Speaker 04:
But after that, since they had argued under construction that was rejected, they came forth with a new argument

[00:10:53] Speaker 04:
Admittedly, a new argument, I think, but based upon the same prior arc references for why they won even under the new construction.

[00:11:01] Speaker 04:
Why isn't that permissible?

[00:11:02] Speaker 03:
Well, I think even that is a stretch.

[00:11:05] Speaker 03:
If you look at their petition, they did talk about the flexibility of Tosaki, as Your Honor just questioned.

[00:11:11] Speaker 03:
They did talk about that.

[00:11:12] Speaker 04:
But because they argued that because it was called inherently resilient and flexible, that those meant exactly the same thing.

[00:11:22] Speaker 04:
And the board found them to be two different limiting terms.

[00:11:25] Speaker 03:
They said that with respect to Enright.

[00:11:29] Speaker 03:
When they were dealing with Tosaki, they said Tosaki is flexible.

[00:11:32] Speaker 01:
You're in your rebuttal.

[00:11:33] Speaker 01:
But before you sit down, let me understand.

[00:11:35] Speaker 01:
The flexibility only relates to the group three claims, right?

[00:11:39] Speaker 01:
Well, yes.

[00:11:42] Speaker 01:
OK.

[00:11:42] Speaker 01:
But the board made obviousness findings with respect to the other claims and just found that Enright satisfied the hand-held concept.

[00:11:52] Speaker 03:
Enright satisfied handheld, and the length of the controls was satisfied by Tosaki.

[00:11:58] Speaker 03:
We contend that there are just mere conclusions in the evidence that says it would be obvious to add these without any articulated reasoning.

[00:12:07] Speaker 01:
Do you want to save the rest?

[00:12:08] Speaker 01:
I would, please.

[00:12:09] Speaker 03:
Thank you.

[00:12:24] Speaker 02:
The Board's determination for the Group 1 claims that they were anticipated by Tasaki is supported by substantial evidence and should be affirmed.

[00:12:37] Speaker 02:
Likewise, the Board's obviousness determination with respect to the Group 2 claims

[00:12:43] Speaker 02:
that its findings underlying obviousness were supported by substantial evidence and its legal conclusion as to obviousness was correct as a matter of law and that also should be confirmed.

[00:12:55] Speaker 01:
So basically what you're saying is let's forget about handheld and anticipation and let's just look at obviousness?

[00:13:02] Speaker 01:
I'll address.

[00:13:05] Speaker 01:
I have to say I think that would be a smart move from my perspective because I have a hard time with the handheld thing.

[00:13:13] Speaker 01:
I think I will.

[00:13:15] Speaker 01:
You can see that the preamble is limiting, right?

[00:13:19] Speaker 02:
Well, whether the preamble is limiting or not, I don't think makes a difference.

[00:13:24] Speaker 02:
What matters are all the limitations of the body of the claim met.

[00:13:30] Speaker 02:
We don't disagree that there's a handheld requirement with respect to claim one of the 525 patent.

[00:13:37] Speaker 02:
The claim one of the 770 patent recites a video

[00:13:42] Speaker 02:
a video game controller, and it doesn't refer, I mean, it has handles recited in the claim, but it doesn't have the same hand-type structure of what's in the 525 patent.

[00:13:54] Speaker 02:
Nonetheless, each of the limitations that are recited in those claims are met by Tosaki, and there is no additional requirement that somehow the device itself must be

[00:14:08] Speaker 02:
handheld for every purpose.

[00:14:12] Speaker 04:
Can I just clarify, because I'm a little confused?

[00:14:16] Speaker 04:
Sure.

[00:14:16] Speaker 04:
There aren't overlapping, completely overlapping, obviousness and anticipation findings for the Group 1 claims, are there?

[00:14:25] Speaker 04:
If we disagreed with you on anticipation, we couldn't still affirm everything under obviousness on the 525.

[00:14:33] Speaker 02:
Yes, well, yes and no.

[00:14:37] Speaker 02:
You could because there is an overlap in the group three claims where we think that there was... No, but the group three claims you lost on largely.

[00:14:45] Speaker 02:
We did lose on the group three claims.

[00:14:47] Speaker 04:
Don't argue those yet.

[00:14:48] Speaker 04:
I mean, we can get back to those.

[00:14:49] Speaker 04:
I know those are overlapping, but if we're just dealing with group one and group two,

[00:14:54] Speaker 04:
for obviousness, maybe I've got this wrong, but I thought that the board only found obviousness for the 525 on claim 20, and that they had to rely on anticipation for all the other 525 claims.

[00:15:09] Speaker 04:
That's my understanding as well.

[00:15:11] Speaker 04:
That is correct.

[00:15:12] Speaker 04:
Right.

[00:15:12] Speaker 04:
So you don't want, you're not going to concede that anticipation, that we don't need to reach anticipation for

[00:15:20] Speaker 04:
by 25.

[00:15:20] Speaker 04:
Oh, that's correct.

[00:15:24] Speaker 04:
Right.

[00:15:24] Speaker 04:
Because that's a bunch of claims.

[00:15:26] Speaker 02:
That is, that's a bunch of claims.

[00:15:27] Speaker 04:
Are covered only by the anticipation rejection under Tizaki.

[00:15:32] Speaker 02:
That is correct.

[00:15:33] Speaker 04:
Although I will- I mean, I get that you think, although even group three doesn't seem to cover all of that group one claims either, it covers more of it than group two, but it still doesn't cover everything.

[00:15:47] Speaker 02:
That's correct.

[00:15:48] Speaker 02:
Although the valve did assert at the board that the same claims that were anticipated by Tasaki would also have been rendered obvious.

[00:15:58] Speaker 02:
If you look at the appendix 287, footnote one, there was an assertion of obviousness on the alternative for the group one claims as well.

[00:16:07] Speaker 02:
The board didn't separately address obviousness with respect to the claims that it found to be anticipated by Tasaki.

[00:16:20] Speaker 04:
Was that a ground for institution in your brief?

[00:16:23] Speaker 04:
I'm sorry to be so technical.

[00:16:25] Speaker 04:
So it was separately.

[00:16:27] Speaker 04:
So when you're talking about the group one claims, well group one is anticipation, but when you're talking about all the 525 claims, did you argue for

[00:16:38] Speaker 04:
for anticipation under Tosaki and obviousness under Tosaki and in right for all of the claims in the petition.

[00:16:46] Speaker 02:
Valve noted that the same claims on which it was asserting anticipation by Tosaki would all in the alternative would be rendered obvious into the board Institute on all those arguments.

[00:16:58] Speaker 02:
The board instituted on anticipation.

[00:17:02] Speaker 04:
And it didn't institute on obviousness?

[00:17:04] Speaker 02:
It instituted on?

[00:17:08] Speaker 04:
I'm confused, procedure.

[00:17:10] Speaker 04:
When we have overlapping patents, overlapping claims, overlapping grounds for invalidity, our precedent

[00:17:17] Speaker 04:
makes clear that the board has to look at all of them, SAS makes clear.

[00:17:22] Speaker 04:
And also means that there's some procedural niceties about how we have to address them.

[00:17:29] Speaker 04:
And it wasn't clear to me that the board looked at obviousness for the 525 claims except for claim 20.

[00:17:37] Speaker 02:
It didn't look at it based on Tosaki alone.

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

[00:17:44] Speaker 01:
All right, so then getting back to handheld, one of my biggest problems is sports reliance on the word comprising.

[00:17:49] Speaker 01:
I mean, it's a basic grammatical mistake.

[00:17:52] Speaker 01:
I mean, they say comprising relates to handheld, and yet the words before the word comprising are game controller.

[00:18:01] Speaker 01:
So you look to the last antecedent to see what the comprising modifies, right?

[00:18:09] Speaker 01:
Sure, yes, your honor.

[00:18:11] Speaker 01:
Okay, so wasn't it improper for the board to rely on comprising with respect to the issue of handheld?

[00:18:19] Speaker 02:
Well, I think what's claimed is the structural limitations of the claim.

[00:18:25] Speaker 02:
So the board said that the language of claims 1 and 20 requires the controller to be handheld and to have a particular shape that's permitting the user's thumbs to be positioned to operate the front control, and then it would be the fingers on the back control.

[00:18:46] Speaker 02:
And that handheld means that it has to be being held in the hand and operable and so held.

[00:18:53] Speaker 02:
So it needs to be held in the hand and operable so held for what is recited in the claims.

[00:19:01] Speaker 02:
If there's other structure that's added, I mean, suddenly a steering wheel in a car doesn't become not handheld, not held by one's grips because it's also connected to a chassis.

[00:19:12] Speaker 02:
So the issue of portability and movability is not something that is a requirement of the claim.

[00:19:25] Speaker 02:
Did that answer your honor's question?

[00:19:28] Speaker 02:
Did I confuse things further?

[00:19:31] Speaker 02:
No, go ahead, keep going.

[00:19:33] Speaker 01:
You're almost in your friend's time though, so be careful.

[00:19:40] Speaker 02:
Yes.

[00:19:42] Speaker 02:
Let me move to – unless there's any other questions about handheld, I will – I'll move to – over to obviousness.

[00:19:49] Speaker 02:
So first, with respect to obviousness – I mean, you're almost out of time.

[00:19:52] Speaker 04:
Can you move to your argument on your cross-field on the three claims?

[00:19:56] Speaker 04:
Yes.

[00:19:58] Speaker 04:
unsympathetic that you've got a new claim construction and that you should get a reply and the board should consider it although when I think about it more it seems to me like you set out a theory of invalidity that said Let me just give it hypothetically because I don't want to go to that one reference shows these two things another reference shows a third thing and based upon our claim construction and the board comes in and

[00:20:23] Speaker 04:
with the new claim construction, and you say, well, based upon that new claim construction, we're going to switch the references around.

[00:20:32] Speaker 04:
We're going to use the same references, but we're going to use them in ways that we didn't ask for institution on.

[00:20:40] Speaker 04:
How is that permissible?

[00:20:42] Speaker 04:
To me, that seems like the same way as saying, if you get a new claim construction where your references don't provide the answer, you get to say, well, this other reference we didn't cite at all.

[00:20:52] Speaker 04:
would provide the answer.

[00:20:54] Speaker 04:
And that clearly wouldn't be permissible.

[00:20:56] Speaker 04:
Why going to a reference that you didn't cite for a certain element after a new claim construction?

[00:21:02] Speaker 04:
Why is that permissible?

[00:21:04] Speaker 02:
Well, I think it's permissible under the Erickson case, under Erickson versus Intellectual Ventures.

[00:21:11] Speaker 04:
That is where- Was it going to a different reference, or was it going to different parts of the same reference?

[00:21:20] Speaker 04:
Because, look, the problem is you relied on in-write for the buttons, right?

[00:21:31] Speaker 04:
The flexible and resilient buttons.

[00:21:33] Speaker 04:
Correct.

[00:21:33] Speaker 04:
And in-write doesn't show flexible buttons.

[00:21:35] Speaker 04:
It may show resilient buttons.

[00:21:37] Speaker 04:
You didn't really rely on Suzuki for that.

[00:21:41] Speaker 04:
And so that's almost like, it seems like you're bringing in a new reference for that point, even though Tozaki was relying on for something else.

[00:21:48] Speaker 04:
If you were going to a different part of in-right that showed flexibility, then that would seem perfectly permissible.

[00:21:54] Speaker 04:
But why is adding Tozaki as a new reference for the flexibility point okay?

[00:22:01] Speaker 02:
Well, what we're looking at here is, first of all, there's two bases on which this court could reverse or vacate and remand with respect to the group three claims.

[00:22:12] Speaker 02:
One is that we believe that the claim construction of flexible was incorrect.

[00:22:20] Speaker 02:
Now, in terms of why would it be OK under

[00:22:24] Speaker 02:
I guess, the second position, which is the court erred in its, the board erred in its determination of obviousness based on all the findings that were in the record.

[00:22:35] Speaker 02:
So we've got, there's no real dispute about the scope and content of the prior art.

[00:22:40] Speaker 02:
There's no real dispute about the differences between the prior art and the claimed invention, nor the level of skill in the art.

[00:22:46] Speaker 01:
What we're talking about is- Putting aside whether or not your argument was even timely, we would have to

[00:22:53] Speaker 01:
to overrule the board's conclusion that you didn't submit substantial evidence to support your position, even if timely.

[00:23:02] Speaker 01:
That's an uphill climb, given the deferential standard overview, right?

[00:23:07] Speaker 02:
Well, I think in this case, say no.

[00:23:11] Speaker 02:
This is one of those rare circumstances.

[00:23:13] Speaker 02:
What we're talking about, the only difference we're talking about is whether these elongated members would be considered flexible or made of flexible material under the board's construction.

[00:23:26] Speaker 02:
That is just an immaterial or an unpatentable distinction, and it would be an obvious design choice.

[00:23:34] Speaker 01:
Virtually used all of your friends time, but we'll give you six minutes rather than seven.

[00:23:38] Speaker 01:
You've really only got three left, so Okay, I want such any further questions.

[00:23:45] Speaker 03:
I'll save the rest of my time Briefly, I just like to follow up on a few of these points.

[00:23:53] Speaker 01:
Oh, I'm sorry.

[00:23:54] Speaker 01:
I thought you guys I'm sorry.

[00:23:57] Speaker 01:
I was looking at the wrong you've got three more minutes I

[00:24:02] Speaker 02:
I have three more minutes now?

[00:24:03] Speaker 02:
Yes.

[00:24:05] Speaker 01:
It's been a while since I sat in the center.

[00:24:08] Speaker 00:
I'm looking at the wrong list.

[00:24:12] Speaker 00:
He stopped the clock.

[00:24:13] Speaker 00:
Actually, three and a half minutes.

[00:24:14] Speaker 02:
Let me clarify, because I was observing three minutes for rebuttal.

[00:24:17] Speaker 02:
Oh, OK.

[00:24:18] Speaker 02:
All right.

[00:24:20] Speaker 02:
We got it.

[00:24:21] Speaker 01:
Got it.

[00:24:22] Speaker 01:
You got your three and a half minutes.

[00:24:23] Speaker 02:
I'll save three and a half minutes for rebuttal.

[00:24:25] Speaker 02:
OK.

[00:24:31] Speaker 03:
I guess that means it's me.

[00:24:35] Speaker 03:
With respect to the definitions proposed by the petitioner in the petition for flexible, there wasn't any.

[00:24:44] Speaker 03:
What the petitioner did with respect to Tosaki

[00:24:48] Speaker 03:
when it charted Tosaki for anticipation, it said, Tosaki expressly describes a situation where the shift levers are resilient and flexible.

[00:24:58] Speaker 03:
And then it quotes, in the modification shown in figures 23 and 24, the integrally formed shift lever will be, and then underlined, italicized, and bold, elastically deformed.

[00:25:13] Speaker 03:
So it did contemplate that flexible meant that you had to have some sort of deformation.

[00:25:20] Speaker 03:
It was only when it went to Enright, which obviously did not have that, where it sort of closed its eyes and said, well, Enright is flexible because it moves.

[00:25:30] Speaker 03:
You can push it over here.

[00:25:33] Speaker 03:
Obviously, that's not flexible.

[00:25:34] Speaker 01:
That reads flexible right out of the- But what about the board's conclusion that

[00:25:40] Speaker 01:
you've got two different concepts here, inherently resilient and flexible, and the board thought they had to mean something different.

[00:25:48] Speaker 03:
They absolutely do mean something different, and I agree with the board's construction.

[00:25:52] Speaker 03:
The board said that there's inherent characteristics of this lever, and essentially you have to be able to deform it, and it has to be resilient such that it'll pop back.

[00:26:02] Speaker 04:
But why shouldn't they get to respond based on the exact same prior art that's in the record to the board's new claim construction?

[00:26:11] Speaker 04:
Let's assume, you probably disagree, but let's just assume Tozaki discloses flexibility.

[00:26:17] Speaker 04:
They're not pointing to anything new.

[00:26:20] Speaker 04:
You're on notice about what Tozaki discloses, and all they're doing is

[00:26:26] Speaker 04:
Reacting to a claim instruction that they didn't know the board was going to adopt and their reply brief And if you had wanted to submit a sir reply, the board probably would have let you What's wrong with that when the prior art that was used in this case?

[00:26:42] Speaker 04:
Discloses the flexibility and all the board is relying on is this kind of nitpicky procedural requirement that they didn't point to Zaki for flexibility.

[00:26:51] Speaker 04:
They only appointed to end right and

[00:26:53] Speaker 04:
Well, I believe there's mostly because they didn't know that the board was going to use them as two separate requirements because that's not what they posed in their petition.

[00:27:04] Speaker 03:
Well, I respectfully disagree with the premise based on what I just read is they did know that there was a deformation requirement in addition to... Yeah, but that's not what they argued.

[00:27:15] Speaker 03:
The board came up with the claim construction that disagreed with theirs.

[00:27:18] Speaker 03:
I don't believe it did.

[00:27:20] Speaker 03:
They fought it after the fact.

[00:27:21] Speaker 03:
Let's assume it did, because that's not my reading of the record.

[00:27:25] Speaker 03:
They said A, Tosaki is resilient, excuse me, is deformable, elastically deformable, and therefore it is flexible.

[00:27:35] Speaker 03:
And that is consistent with the board's construction.

[00:27:39] Speaker 03:
It's only because Enright doesn't have any flexibility at all under any construction that can be put forth with a straight face.

[00:27:47] Speaker 03:
that has anything to do with flexing.

[00:27:51] Speaker 03:
It was only because of that that they took issue with the board because it would read out how they were trying to rely on Enright.

[00:27:58] Speaker 04:
Also, they did submit... I'm not sure how that answer helps you if you just said Tazaki shows flexibility.

[00:28:06] Speaker 04:
I mean, that seems again to suggest that

[00:28:08] Speaker 04:
The prior arc here discloses the resiliency and flexibility claims.

[00:28:15] Speaker 03:
What I'm saying is they argued it discloses flexibility in the petition.

[00:28:20] Speaker 03:
They knew it was a requirement.

[00:28:21] Speaker 03:
They were required to set forth a claim construction.

[00:28:25] Speaker 03:
for this term, they didn't.

[00:28:27] Speaker 03:
If they did, they acknowledged that it had to be deformable.

[00:28:30] Speaker 03:
So this isn't something new that happened because the board sprang it on them.

[00:28:34] Speaker 03:
They had the initial burden.

[00:28:36] Speaker 03:
They satisfied it with Tosaki or attempted to by saying Tosaki was elastically deformable.

[00:28:41] Speaker 03:
It's only an issue with respect to their other reference that they're trying to pretend had flexibility when they know it didn't have any flexibility.

[00:28:51] Speaker 03:
Also, they did have an opportunity to respond to our arguments.

[00:28:58] Speaker 04:
So even though in the anticipation case, Tazaki is sufficient to show flexibility, because of the particular way they argued it, they can't go back to Tazaki to show flexibility in the obviousness case?

[00:29:11] Speaker 03:
Yes.

[00:29:12] Speaker 03:
And especially in this case?

[00:29:13] Speaker 04:
This seems like a big waste of time.

[00:29:15] Speaker 04:
I mean, if you ever try to assert these patents, they're clearly going to be invalid under a combination of Tazaki and in-right.

[00:29:23] Speaker 03:
Well, I don't know about that.

[00:29:25] Speaker 03:
There's a different standard in district court, among other things.

[00:29:28] Speaker 03:
But in this case, in this IPR, they specifically stated that Ironberg, in their patent owner's response to, excuse me, their reply to our patent owner's response, they say that petitioner continues to rely upon the structure of N-rights mode switches themselves and uses Tosaki only for the suggestion to make those switches longer.

[00:29:51] Speaker 03:
They disclaimed any reliance on these very elements of Tosaki that we're now discussing.

[00:30:00] Speaker 03:
They said it in response to arguments that we were making.

[00:30:03] Speaker 03:
They disclaimed any reliance on that.

[00:30:05] Speaker 03:
Also, they had an obviousness argument based on Tosaki that the board didn't institute on.

[00:30:13] Speaker 03:
They were required under this court's rules and precedent, I believe, after SAS came down to ask for remand back down to have those arguments considered, and they didn't.

[00:30:24] Speaker 03:
So I would contend that they waived it.

[00:30:25] Speaker 01:
OK, you're out of time.

[00:30:26] Speaker 03:
Thank you.

[00:30:27] Speaker 03:
Thank you.

[00:30:39] Speaker 01:
Why don't you address that last point?

[00:30:42] Speaker 01:
Why didn't you have an obligation to ask the board to reconsider the things that they did not institute on under SAS?

[00:30:53] Speaker 01:
I mean, you're basically saying, well, we didn't go back and say after SAS you needed to institute on everything, but we're allowed to argue it anyway.

[00:31:02] Speaker 02:
Actually, that's, well, that's not what, I don't believe that's what we're saying.

[00:31:07] Speaker 04:
So although- Well, you were saying, at least when you were back up here the last time around, that you actually did argue obviousness for all of the claims based upon Tozaki and in right, based upon using Tozaki as the flexibility thing.

[00:31:26] Speaker 04:
But that's not the way I read this.

[00:31:31] Speaker 04:
Right, so – well, if this –

[00:31:39] Speaker 04:
What I understand is the Group 2 claims, and we're only talking about the 525, not the 770, the only thing that was rejected as obvious in Group 2 for the 525 was Claim 20.

[00:31:51] Speaker 04:
There's no obvious considerations of anything else in 525.

[00:31:56] Speaker 04:
And you said you asserted obviousness arguments as to all those other 525 claims, but the board didn't address them.

[00:32:03] Speaker 04:
You didn't ask the board to address them, and you didn't ask us after you

[00:32:07] Speaker 04:
you know, to file, to remand on SAS to have them address them, which they're required to do.

[00:32:14] Speaker 04:
So there's separate grounds, even if they're both grounds for invalidity after SAS, they would have been required to do that.

[00:32:20] Speaker 04:
But at this point, I think you're way too late.

[00:32:25] Speaker 02:
I understand your question, Your Honor, and I disagree in this respect.

[00:32:30] Speaker 02:
While there were grounds on which the board did not specifically institute, that it addressed and did not institute, the obviousness based on Tasaki alone was asserted in the alternative to anticipation.

[00:32:46] Speaker 02:
So should this court decide that?

[00:32:49] Speaker 02:
That's a different ground, though.

[00:32:51] Speaker 04:
I mean you've got anticipation based upon Tosaki and you've got obviousness based on Tosaki.

[00:32:57] Speaker 04:
There is no discussion whatsoever of obviousness based on Tosaki alone.

[00:33:03] Speaker 02:
I think the proper relief in this instance would be if for some reason the court would find that the

[00:33:11] Speaker 02:
anticipation of the Group 1 claim shouldn't be affirmed, then it would be further to remand to the board, then to address the alternative grounds.

[00:33:22] Speaker 01:
Even without a timely request, post SAS.

[00:33:27] Speaker 04:
In this instance, yes.

[00:33:28] Speaker 04:
I mean, pre-SAS, we wouldn't have done that, because it would have been an uninstituted ground, and we wouldn't have reviewed the non-institution decision.

[00:33:38] Speaker 04:
And after SAS, we agreed that we had to remand, but only if you timely preserve the argument.

[00:33:45] Speaker 04:
And I don't see one jot of argument.

[00:33:46] Speaker 04:
This is the first time I've heard of this argument at all.

[00:33:51] Speaker 04:
I have much less emotion for remand based upon SAS.

[00:33:57] Speaker 02:
Well, we're not asking for remand based on SAS, assuming that there's affirmance on the group one and group two grounds.

[00:34:07] Speaker 00:
You are asking for remand based on the fact that you asserted an alternative theory.

[00:34:12] Speaker 02:
That's correct.

[00:34:13] Speaker 02:
That would be correct.

[00:34:14] Speaker 02:
But that would be on those specific claims.

[00:34:18] Speaker 02:
May I turn briefly to?

[00:34:21] Speaker 02:
Thirty seconds.

[00:34:22] Speaker 02:
Thirty seconds, okay.

[00:34:25] Speaker 02:
We do think that the board's claim construction with respect to the term flexible was unreasonable and it was inconsistent with the specification.

[00:34:35] Speaker 02:
The board relied on a dictionary definition for flexible that was inconsistent with the intrinsic evidence.

[00:34:42] Speaker 02:
If it had correctly construed flexible, it should have construed it to mean able to be moved to a biased position by a user's finger.

[00:34:51] Speaker 02:
That is, by limiting it to being just capable to be bend or flex, the board excluded embodiments of the alleged claimed invention.

[00:35:11] Speaker 02:
And that was improper.

[00:35:16] Speaker 01:
But what about the point that it says inherently resilient and flexible?

[00:35:22] Speaker 01:
Are you saying that we're not supposed to assume that those are two different things?

[00:35:27] Speaker 02:
Well, I think they are.

[00:35:28] Speaker 02:
And they're pointed out actually in the specification as two different things as well.

[00:35:35] Speaker 02:
inherently resilient is specifically defined as

[00:35:50] Speaker 02:
is specifically defined at column 3, lines 33 to 34 to 35, which means that they return to an unbiased position and are not under load.

[00:36:02] Speaker 02:
Flexible is something else.

[00:36:04] Speaker 02:
Flexible deals with the ease of movement, the ease of movement to a biased position with the user's fingers.

[00:36:09] Speaker 02:
The resilience deals with the

[00:36:14] Speaker 02:
more with the tendency of the elongated member to be able to return to a biased position.

[00:36:19] Speaker 01:
Those are two different properties.