[00:00:00] Speaker 02: is Roe v. Guides versus Comcast Cable, 2019-11-88, Ms. [00:00:11] Speaker 02: Kelly. [00:00:18] Speaker 01: Thank you, Your Honors. [00:00:18] Speaker 01: May it please the Court. [00:00:20] Speaker 01: Christina Kajano Kelly on behalf of Appellant Roe v. Guides. [00:00:25] Speaker 01: The board in this case aired when it failed its mandate to decide the patentability of every claim limitation on the merits and point to evidence in the record supporting its decision. [00:00:38] Speaker 01: In this case, the board observed during the oral hearing that Comcast had failed to present a preponderance of evidence that the Wigofsky reference discloses a set-top box. [00:00:52] Speaker 01: Comcast asked the parties, or sorry, the board asked the parties to address the issue. [00:00:58] Speaker 01: Comcast did not at the hearing point to any evidence in the record, but instead presented [00:01:04] Speaker 01: what was sort of a means plus function analysis of the claim language. [00:01:07] Speaker 03: But the board certainly pointed to evidence in its decision, right? [00:01:10] Speaker 03: It didn't just rely on your failure to raise the issue. [00:01:16] Speaker 01: Well, if we look at the final written decision that's at the appendix at page 32, at the top of the page, the board first states, the parties do not dispute that Wigofsky teaches a set-top box and cites C generally to patent owner's response. [00:01:34] Speaker 01: First, [00:01:35] Speaker 01: That is false as a matter of fact, because at the oral hearing, when the board raised the issue and asked Council for Roevey, do you dispute this limitation, Council for Roevey said, yes, we do. [00:01:45] Speaker 01: Wigowski does not teach a set-top box. [00:01:48] Speaker 01: A set-top box is in the specification at Figure 2. [00:01:52] Speaker 01: And computer convergence environments are an alternative. [00:01:55] Speaker 01: That is Figure 3. [00:01:56] Speaker 01: And we should win on that basis. [00:01:59] Speaker 01: So first, the board is... [00:02:02] Speaker 01: has mischaracterized it, and by citing generally only to patent owner's response and ignoring what happened at the hearing, the premise of the board's decision is wrong. [00:02:11] Speaker 01: If we go to the next paragraph, which is what I think your question was originally getting at, having considered the evidence we agree with petitioner, the board then goes on. [00:02:21] Speaker 01: There is a string cite. [00:02:22] Speaker 01: None of the evidence cited is explained as to why it supports the board's decision. [00:02:27] Speaker 01: These citations are to the petitioner's briefs. [00:02:30] Speaker 01: They do parenthetically cite the evidence cited in the petitioner's brief, but don't identify why that evidence supports the decision. [00:02:38] Speaker 01: If you look at the parenthetical that follows the string cite, that parenthetical is representative of the types of things the board is citing to in that string cite. [00:02:50] Speaker 01: And it's sentences from the petition that say things like, therefore, computer 110 [00:02:57] Speaker 01: in parentheses, a set-top box has the recited control circuitry. [00:03:03] Speaker 01: That is not evidence that a computer is a set-top box. [00:03:06] Speaker 01: That is an argument that assumes its premise that a computer is a set-top box. [00:03:11] Speaker 01: It identifies the computer and then says parenthetically this is a set-top box and then goes on to talk about the control circuitry. [00:03:20] Speaker 01: That paragraph, and so if we go on to the rest of the paragraph of the board's final written decision, this paragraph being the entirety of the board's analysis, that paragraph goes on then to talk about television viewing functionality. [00:03:39] Speaker 01: It does not say ever that one of skill and the art would understand a computer to literally be a set-top box. [00:03:47] Speaker 02: Ms. [00:03:48] Speaker ?: Kelly. [00:03:48] Speaker 02: Why hasn't Roe v. Wade its argument that Bukowski doesn't teach a set-top box? [00:03:56] Speaker 01: I think this court's precedent in Magnum Oil is clear that in the IPR setting, the burden of production and the burden of persuasion never shifts the patent owner. [00:04:08] Speaker 03: It's not talking about your obligation to dispute something. [00:04:13] Speaker 03: It's talking about the burden of production and the burden of persuasion. [00:04:17] Speaker 03: People have the obligation to raise issues. [00:04:19] Speaker 03: And if you concede an issue, too bad, right? [00:04:22] Speaker 01: I would agree with that, but I would say in this case, there is no concession at the oral hearing when the board asked Roevey, do you concede this issue? [00:04:30] Speaker 01: If counsel for Roevey had said, we're not disputing this, then I would agree with you that issue would be waived. [00:04:37] Speaker 01: But that was not counsel's response. [00:04:38] Speaker 01: Counsel's response was, yes, we dispute this. [00:04:42] Speaker 01: And the board correctly recognized in the hearing that even though Roevey did not raise the issue in its brief, [00:04:48] Speaker 01: The burden nonetheless remained on the petitioner to articulate the evidence and nonetheless remained on the board to decide that Wigofsky discloses a set-top box. [00:04:59] Speaker 01: That was the board's stated reason for asking the question and asking the parties to address the issue at the hearing. [00:05:11] Speaker 01: If you look to appendix, it starts, I believe, on appendix 657. [00:05:18] Speaker 03: Where does Petitions Council say we're disputing this? [00:05:39] Speaker 01: That is on that is it that was if you go to page I think 682 Yes So it starts at the very bottom of that page and then at the at the top of page 683 and [00:06:01] Speaker 01: That is where Roewe's council states, just briefly on the topic of set-top box, relating back to the board's previously asked question when Comcast council was before it. [00:06:13] Speaker 01: I would draw the panel's attention to column two, line 18, where it mentions that the user equipment may include a set-top box. [00:06:20] Speaker 01: Figure 2 explicitly labels that figure a set-top box. [00:06:24] Speaker 01: Figure 3 does not. [00:06:26] Speaker 03: This is relating back to a previous... I don't see that as saying we're disputing the set-top box. [00:06:32] Speaker 03: I thought you said that counsel explicitly said that. [00:06:35] Speaker 03: Where is counsel explicitly saying that? [00:06:36] Speaker 01: That's if you go to the next paragraph. [00:06:39] Speaker 01: The only evidence of record as to the definition of set-top box is entirely consistent with Figure 2. [00:06:44] Speaker 01: So I think as an initial matter, the board could dispatch the Wachowski grounds on that aspect of the claims alone. [00:06:50] Speaker 01: Some of this is a little difficult to understand because it comes out of context. [00:06:56] Speaker 01: He's referring back to a previous exchange between the board and Council for Comcast. [00:07:01] Speaker 01: So when he says, when he's referring to Figure 2 and Figure 3, the board and Comcast already had an exchange in which they discussed that Figure 2 explicitly labels a set-top box. [00:07:13] Speaker 01: Figure 3 discusses a TV-computer convergence environment. [00:07:18] Speaker 01: And Figure 2 is what declaims, and Figure 3 is more of what the Wolgowski reference is relating to. [00:07:27] Speaker 03: And if you look in the specification where it describes the differences... Well, all it says is Figure 2 explicitly labels that figure a set-top box, Figure 3 does not. [00:07:37] Speaker 03: I mean, he doesn't say that Figure 3 doesn't show a set-top box. [00:07:44] Speaker 01: Right, because the board previously stated that earlier in the transcript, in the board's exchange with Council for Comcast. [00:07:51] Speaker 01: So what happened was Roe v.' [00:07:52] Speaker 01: 's council essentially stood up and said, remember that conversation you just had where you identified this problem between figure two and figure three? [00:08:01] Speaker 01: You are correct. [00:08:03] Speaker 01: We agree with your problem, and we should win because of that. [00:08:06] Speaker 01: He did not restate everything the board had previously stated. [00:08:10] Speaker 01: But if you look back as to what the board had stated. [00:08:15] Speaker 03: Don't you think that somebody having not raised the issue in the brief had an obligation to raise it more clearly in the oral argument before the board? [00:08:25] Speaker 01: Well, I think what happened was at that point, the judges had already discussed at length what the problem was. [00:08:36] Speaker 01: And so counsel Ferrovia essentially said, what you just said, Your Honors, you're absolutely correct. [00:08:42] Speaker 01: And he didn't go on to then restate it so that it would be in the record in his words. [00:08:46] Speaker 01: He said, yes, figure two labels the set-top box. [00:08:50] Speaker 01: Figure three does not, summarizing the conclusion that the board had previously drawn. [00:08:54] Speaker 01: then went on to say there is no evidence of record that the set-top box is anything other than figure 2 which as the board had already stated is not Wigofsky and the specification expressly says is an alternative the set-top box is an alternative to a computer convergence environment like that in Wigofsky and then he stated the board [00:09:18] Speaker 01: should dispatch the Wachowski grounds on that aspect of the claims alone. [00:09:22] Speaker 01: Meaning, because a set-top box is not in the claims, Roe v. should win. [00:09:26] Speaker 01: And in doing so, that was enough to preserve the issue as one that was not conceded. [00:09:35] Speaker 01: And the board, although what Roe v.' [00:09:39] Speaker 01: 's counsel then put into the record, you know, [00:09:43] Speaker 01: may not have been sufficient on its own to rebut anything, the patent owner doesn't have an obligation under Magnum Oil. [00:09:50] Speaker 01: The patent owner does not have an obligation to rebut something as long as he did not concede it and the board acknowledged that there was a problem in the record and the burden is on them to resolve it on the merits, pointing to specific evidence. [00:10:08] Speaker 01: And that did not happen. [00:10:10] Speaker 01: And I think at no point, even if the board asks a question during oral hearing, at no point does it shift the obligation to patent owner. [00:10:20] Speaker 02: Does Figure 3 show a set-top box? [00:10:28] Speaker 01: It does not. [00:10:29] Speaker 01: If you want to look by comparison to Figure 2, so you'll find that at Appendix at page 129, Figure 2 expressly labels a set-top box and shows a set-top box [00:10:42] Speaker 01: system in which that is the device that is converting the television signals. [00:10:48] Speaker 01: If you turn the page to Appendix 130, Figure 3 does not include a set-top box. [00:10:57] Speaker 02: And if you want to go to the... Well, I'm talking about Figure 3 of Wolgowski. [00:11:03] Speaker 01: Oh, I'm sorry. [00:11:04] Speaker 02: We know that there's a set-top box in your patent because it's in the claims. [00:11:10] Speaker 01: Yes. [00:11:11] Speaker 02: But how about in Lugosky and how about in figure three? [00:11:18] Speaker 01: The board and Comcast did not point to anything in Figure 3 as being the set-top box of Rogowski. [00:11:28] Speaker 01: The analysis of the board is that Computer 110 is the set-top box because it performs the function that the set-top box performs. [00:11:38] Speaker 01: So regardless of whether Wigofsky discloses a set-top box in some other embodiment, that is not what the board relied on, and that cannot be a basis for affirmance under Chenery. [00:11:51] Speaker 02: You are into your rebuttal time, and let's stop the clock, Mr. Woodard. [00:11:57] Speaker 02: I want to ask you, you are presumably registered to practice in the Patent Office? [00:12:03] Speaker 01: I am. [00:12:04] Speaker 02: What do you understand the purpose of citing prior art references to be? [00:12:10] Speaker 01: During prosecution? [00:12:11] Speaker 02: During prosecution, yes. [00:12:13] Speaker 01: So that the examiner may consider them in whether to allow the claims. [00:12:17] Speaker 02: In other words, they're relevant [00:12:21] Speaker 02: to patentability. [00:12:23] Speaker 01: They are. [00:12:23] Speaker 02: This patent, I'm sure you didn't draft it, but you're standing here. [00:12:28] Speaker 02: This patent has 22 columns of cited references, probably between 1,500 and 2,000. [00:12:38] Speaker 02: It's very difficult to escape the conclusion that the applicant was trying to bury. [00:12:45] Speaker 02: It didn't even cite Rogowski. [00:12:49] Speaker 02: What can be the sound purpose in citing 1,500 to 2,000 references other than to bury the examiner? [00:12:59] Speaker 01: Well, Roe v. has, then the Roe v. family of companies have a lot of different patent applications, all related to similar technologies. [00:13:10] Speaker 01: And I know that there is an obligation when you have multiple patents that are related to cite all of the [00:13:18] Speaker 01: cite all of the prior art references. [00:13:20] Speaker 02: So five references, 10 references, 22 columns? [00:13:24] Speaker 01: They do tend to accumulate when you have large patent portfolios, because if you don't cite all of the prior art references you cited for another patent that has your name on it, then the implication is that, well, you purposefully didn't cite it. [00:13:37] Speaker 01: I can tell you, though, that the Wigofsky reference was expressly discussed [00:13:42] Speaker 01: by the examiner in his examination of the parent application for this patent and was distinguished on the basis that, or on one of the bases, that the patent owner distinguished it before the board below. [00:13:57] Speaker 01: And the exact same examiner was the examiner on this patent and was very aware of the Wolgowski reference. [00:14:03] Speaker 02: Well, you've given pretty good defense, and I commend you for that. [00:14:08] Speaker 02: But it's not convincing with respect to the citation of 1,500 [00:14:12] Speaker 02: references and would you filter back to the originators of this patent that at least with respect to one judge it doesn't sit very well? [00:14:22] Speaker 02: It doesn't leave a good impression of patent prosecution. [00:14:26] Speaker 01: I was not involved in the prosecution. [00:14:29] Speaker 01: I only know that generally large patent portfolios tend to have lots of cited references. [00:14:35] Speaker 03: The answer is yes, I'll take it back. [00:14:37] Speaker 01: I will do that, thank you. [00:14:47] Speaker 00: Good morning, Your Honors, and we are pleased to court Blair Silver on behalf of Comcast Cable Communications. [00:14:53] Speaker 00: The board's decision here is correct, because substantial evidence underlies the set-top box determination and the other two limitations, which my opposing counsel did not mention today, so I won't address them in my opposing remarks today. [00:15:04] Speaker 00: But I will note that additional deference is warranted in this case beyond substantial evidence, because in every paper, and every expert, and every party agreed throughout the proceeding that Wachowski taught a set-top box and that no construction was necessary for set-top box. [00:15:19] Speaker 00: That determination is found on a page 32 of the appendix, where the board specifically noted that Roby did not contest the issue of set-top box. [00:15:27] Speaker 00: And we review such determinations on appeal as an abuse of discretion. [00:15:31] Speaker 00: And Roby has not alleged that the board abused its discretion in that determination. [00:15:35] Speaker 00: Now turning to the issue of set-top box, as I mentioned, no dispute. [00:15:39] Speaker 00: Every paper, Wachowski discloses a set-top box. [00:15:42] Speaker 00: That's the only evidence of record below. [00:15:45] Speaker 00: And Comcast expert was found to be credible and well reasoned with detailed citations to Wachowski by the board. [00:15:51] Speaker 00: That was on appendix page 34. [00:15:53] Speaker 00: He testified that computer 110 is a set-top box because it converts content signals, such as cable television signals, to an input signal. [00:16:02] Speaker 00: to a television set or similar display device. [00:16:05] Speaker 00: That is consistent with the person of ordinary skills understanding that he testified to for the plain meaning of set-top box and the dictionary definition that Comcast provided in the record at appendix page 1507. [00:16:17] Speaker 00: Indeed, Roevey and its expert repeatedly referred to Wigowski as having a set-top box in its papers, and we cite a number of those citations on page 27 of our response. [00:16:27] Speaker 00: Now, Roe v. has accused the board of limiting its analysis to a single conclusory sentence, and it did that in its brief. [00:16:32] Speaker 00: Today, it acknowledged that there was at least a paragraph on the issue. [00:16:36] Speaker 00: In truth, there are three pages of discussion on the set-top box issue in the opinion. [00:16:40] Speaker 00: And so this is not a circumstance where the board failed to provide a rationale and shifted the burden, as Roe v. alleges. [00:16:48] Speaker 00: With regard to the issue of waiver, [00:16:50] Speaker 00: Every IPR has a scheduling order. [00:16:53] Speaker 00: And in that scheduling order, every patent owner is warned arguments not raised in the patent owner response will be deemed waived. [00:17:00] Speaker 00: It is thus not surprising that the board, in its final written decision, having not had an issue raised in the patent owner response, noted that Roewe did not directly challenge Comcast construction of set-top box, or that dispute that Wigowski teaches a set-top box. [00:17:13] Speaker 00: And that's on appendix page 15. [00:17:17] Speaker 00: Indeed, we know there was no dispute because Roe v. was citing the Vivitec case in its patent owner response with regard to set-top box, where this court held that you only need to construe claims subject to dispute. [00:17:30] Speaker 00: And my counsel on the other side noted that the board had an exchange with Comcast Council at the IPR and said that we failed to meet our burden. [00:17:38] Speaker 00: That is incorrect. [00:17:39] Speaker 00: And if you turn to Appendix page 61 to 62, you will see an exchange from one PTAB judge to Comcast Council asking for clarification on the differences between Figure 2 and Figure 3. [00:17:51] Speaker 00: The fact that Roevey's counsel later got up, went on its turn, and argued for seven lines of an appendix [00:17:57] Speaker 00: is not enough to preserve an issue for appeal. [00:17:59] Speaker 00: And we know that from the Google vSimpler case and the MCM case that we cite in our brief. [00:18:04] Speaker 00: But even if those comments had appeared in a brief earlier, I submit they were insufficient to preserve an issue for appeal, because as my opposing counsel just mentioned, they were difficult to understand. [00:18:19] Speaker 00: Moreover, Roevey hasn't articulated any meaning of set-top box that would exclude a computer. [00:18:24] Speaker 00: And it provided a number of potential definitions, none of which categorically would eliminate a computer that contains functionality of a set-top box. [00:18:31] Speaker 00: Indeed, we know that set-top box does not exclude computers under the broadest reasonable interpretation because the claims in spec only describe the set-top box in terms of its functionality, receiving and processing intelligent program listings and tuning desired channels. [00:18:44] Speaker 00: And there's no dispute that Wygowski's computer 110 can do this. [00:18:49] Speaker 00: Indeed, Wigasi's computer 110 is not just a computer. [00:18:53] Speaker 00: And we know this, again, because it's designed to address a problem in the set-top box, which the board acknowledged on page 18 of the appendix. [00:19:01] Speaker 00: And Comcast expert testified, as a result of its convergence environment, it is thus an improved set-top box, which he said on appendix page 1030. [00:19:10] Speaker 00: And this is consistent with the dictionary definition of set-top box in the record. [00:19:16] Speaker 02: Has this patent expired? [00:19:18] Speaker 00: It has not. [00:19:20] Speaker 00: Finally, on the issue between figure 2 and figure 3, which I think is just the heart of the matter on my opponent's argument, figure 2 is described as a schematic block diagram illustrative of the user television equipment that happens to have a box labeled figure 2, a set-top box. [00:19:36] Speaker 00: Figure 3 is described as a generalized schematic block diagram of portions of figure 2. [00:19:41] Speaker 00: There is no divergence between figures 2 and figures 3. [00:19:44] Speaker 00: They are related. [00:19:45] Speaker 00: But the specification goes on, on appendix page 142 in column 5, [00:19:50] Speaker 00: lines 48 to 53, to state that figure three's control circuitry may be in the set-top box arrangement of figure two. [00:19:58] Speaker 00: And it's that term arrangement that's key. [00:20:00] Speaker 00: They try to read out that term from the specification. [00:20:03] Speaker 00: But the arrangement of components in figure two includes other items not depicted in figure three, a remote control, a secondary storage device that is directly between the set-top box and the display, [00:20:16] Speaker 00: Those are not there. [00:20:17] Speaker 00: All that specification states is that the arrangement of the set-top box in Figure 2 could be in Figure 3. [00:20:25] Speaker 00: But it does not mean that a set-top box can never be a computer. [00:20:30] Speaker 00: So if the court doesn't have any further questions, that deals with the issues I want to talk about today. [00:20:35] Speaker 02: Thank you, Mr. Silver. [00:20:40] Speaker 02: Miss Kelly has some rebuttal time, three and a half minutes or so. [00:20:46] Speaker 01: Yes. [00:20:48] Speaker 01: In discussing the meaning of a set-top box, what my colleague here just said to this court is very similar to what Comcast said below. [00:20:58] Speaker 01: They provided a means plus function analysis. [00:21:01] Speaker 01: They have told you that anything that performs the functions of tuning television and relaying those signals to a processor is a set-top box because it provides the function of that control circuitry. [00:21:14] Speaker 01: If Comcast wanted to do a means plus function analysis for the term set-top box, then they could have done so. [00:21:20] Speaker 01: There was no means plus function analysis done. [00:21:23] Speaker 01: Instead, Comcast's position was that Wigofsky's computer 110 is literally a set-top box, and that is not a proper construction of the word set-top box. [00:21:33] Speaker 01: A set-top box [00:21:35] Speaker 01: just like a television, just like a computer. [00:21:38] Speaker 01: That is the name of a household object. [00:21:40] Speaker 01: We all know what a set-top box is. [00:21:43] Speaker 01: It's the little box that sits nearby the television. [00:21:49] Speaker 01: Roe v could have said that but under no no roe v didn't but roe v did point the board upon the board asking at the oral hearing roe v did point the board to the difference between figure two and figure three and if you look at the portion of the specification that my colleague cited to you describing the difference between figure two and figure three it states that appendix 142 [00:22:11] Speaker 01: The functions of control circuitry 42 may be provided using the set-top box arrangement of figure 2. [00:22:18] Speaker 01: Alternatively, these functions may be integrated into an advanced television receiver, personal computer television, or other suitable arrangement. [00:22:27] Speaker 01: The specification specifically says that a set-top box is an alternative to a PC convergence environment. [00:22:36] Speaker 01: A set-top box arrangement, that is the name of a particular structure, and a set-top box is not literally a computer. [00:22:44] Speaker 01: Those are two different objects. [00:22:45] Speaker 01: They have two different names. [00:22:47] Speaker 01: And by saying that the computer was literally a set-top box, [00:22:51] Speaker 01: That was an error that I think is directly in contradiction to what the specification says and the error that the board raised at the oral hearing. [00:23:01] Speaker 02: What a reference teaches is a question of fact and we owe deference to the board on that question of fact. [00:23:08] Speaker 01: Had the board cited this and then also provided some sort of analysis as to why a computer was literally a set-top box, or had the board provided a means-plus-function analysis of the term set-top box, I agree we would owe deference, or you would owe deference to them. [00:23:26] Speaker 01: But none of that is in the record. [00:23:28] Speaker 01: The board did not cite any of that. [00:23:29] Speaker 01: The board didn't cite any evidence at all. [00:23:31] Speaker 01: The board cited only two portions of petitioner's brief [00:23:35] Speaker 01: that discussed the computer 110 being a set-top box, but those were just statements that already assumed the premise. [00:23:50] Speaker 01: The board noted during the oral argument that regardless of what Roe v. raised in its brief, it had an obligation to do this. [00:23:58] Speaker 01: And then it didn't satisfy that obligation. [00:24:01] Speaker 01: And I think while you may not have much sympathy for Roe v. in this case, the board still has an obligation, and the board still fails. [00:24:11] Speaker 02: Sympathy isn't involved. [00:24:13] Speaker 01: I appreciate that. [00:24:14] Speaker 01: Thank you. [00:24:16] Speaker 01: I think the board still has an obligation, regardless of what patent owner ever does, in order to point to evidence in the record and articulate a specific rationale for every single claim limitation. [00:24:30] Speaker 01: And here the board did not do that. [00:24:32] Speaker 01: And Magnum Oil tells us that the board needs to do this even if patent owner never raises the argument at all. [00:24:39] Speaker 01: In this case, when the board raised the argument and asked Roevey, do you contest this limitation, Roevey's counsel said, yes, we do, and basically said, on the same basis, you just identified the difference between finger two and three. [00:24:53] Speaker 02: Thank you, counsel. [00:24:54] Speaker 02: Your light is on. [00:24:54] Speaker 01: Thank you. [00:24:55] Speaker 02: We will take the case from the advisement that is submitted.