[00:00:05] Speaker 03: The first case for argument this morning is 191164, Uber Technologies versus X1. [00:00:11] Speaker 03: Mr. Dreier. [00:00:24] Speaker 00: Good morning, Honors. [00:00:25] Speaker 00: And may it please the Court. [00:00:27] Speaker 00: Chris Dreier for Uber Technologies, Incorporated. [00:00:30] Speaker 00: The Board's decision [00:00:31] Speaker 00: upholding the challenged claims of the 593 patent should be set aside. [00:00:37] Speaker 00: The board identified only a single difference between the prior Okubo reference and the challenged claims. [00:00:44] Speaker 00: That difference was a binary choice between regarding where to perform a basic data processing step, in this case where to plot locations on a map. [00:00:57] Speaker 00: either on a server before you transmit the information? [00:01:00] Speaker 01: On page 25 of the blue brief, you argue that Konishi shows that server-side plotting was one of only two identified predictable solutions for displaying a plotted map in a location sharing application. [00:01:21] Speaker 01: But the board found that this argument represented impermissible hindsight. [00:01:25] Speaker 01: Is there any record evidence that supports that server-side plotting is a mere design choice and implementation detail? [00:01:34] Speaker 00: I think there is, Your Honor. [00:01:35] Speaker 00: And the evidence is... Yeah, record evidence. [00:01:39] Speaker 00: The record evidence, first of all, starts with the 593 patent itself, which doesn't attribute any significance to this choice. [00:01:46] Speaker 00: I mean, the written description is totally silent about how to implement the teachings and the functionality of the 593 patent. [00:01:54] Speaker 00: especially with regards to the server side versus terminal side plotting, it doesn't give it any significance. [00:02:01] Speaker 00: And so that by itself already tells you that the patentee was relying on the knowledge of the person of skill and the art to be able to know how to do that and to know whether that would be suitable for their goals. [00:02:15] Speaker 00: Second of all, beyond the 593 patent itself, there is the [00:02:21] Speaker 00: references Okubo and Kenichi, which disclosed the two alternative implementations under the board's own findings. [00:02:28] Speaker 00: Beyond that, there's the testimony of Uber's expert, Dr. Bartone, who explained that there were several design choices involved in implementing these systems. [00:02:41] Speaker 00: And I believe that's at page [00:02:49] Speaker 00: 1068 to 1069 of the appendix. [00:02:56] Speaker 00: And he explains that a person with ordinary skill in the art would have considered it an obvious design choice to have server-side software, for example, software on the position information storage system 5 in Okuba, obtain a map, plot the location of group members, and then transmit the map. [00:03:11] Speaker 01: You said, on page 37, that the board [00:03:17] Speaker 01: erroneously thought you needed to provide sufficient rationale to combine Kanishi's teachings in combination with Okubo. [00:03:28] Speaker 01: Did you not need to establish motivation to combine? [00:03:35] Speaker 00: I think that's not quite right. [00:03:36] Speaker 00: We did need to establish motivation to combine, but what KSR says is that in this type of a situation where you have a finite number of identified predictable solutions, that [00:03:48] Speaker 00: That provides, and I'm just going to read right away. [00:03:51] Speaker 01: I know you don't think there's any difference between them, but they sound substantially different to me being on a base or on the mobile. [00:04:00] Speaker 00: The Supreme Court says in KSR, and I'm reading from page 421 of the opinion, is that in this situation where there's a finite number of identified predictable solutions, a person of ordinary skill has good reason to pursue known options. [00:04:14] Speaker 00: Good reason, that is motivation. [00:04:16] Speaker 00: So when you have that [00:04:17] Speaker 00: You've established those predicate facts that there is a finite number of identified predictable solutions that is responsive to a market pressure. [00:04:27] Speaker 00: That suffices to show a motivation of a buy. [00:04:29] Speaker 00: Supposing they're finite, predictable solutions, and they're totally different? [00:04:35] Speaker 00: I think the fact of whether they're totally different or not is not really the right inquiry. [00:04:40] Speaker 00: It's less whether they're different and more whether the difference is patentably significant. [00:04:45] Speaker 00: If the patentee here had come up with some previously unknown advantage to server-side plotting and had described that in her specification, then we would have a very different case. [00:04:56] Speaker 00: Even if the patent itself was silent and X1 had decided to introduce evidence of unexpected results or other secondary considerations, we still might have a very different case. [00:05:05] Speaker 00: But here, there's just none of that. [00:05:06] Speaker 00: There's nothing pointing to this choice being significant in any way. [00:05:13] Speaker 02: So, but there's no question, but there's a motivation to have a map on the mobile device. [00:05:20] Speaker 02: The only question is, gee, does the map get there because it's created the server or on the mobile device, right? [00:05:27] Speaker 00: I think that's right. [00:05:28] Speaker 00: I mean, the map is going to have to get on the mobile device somewhere. [00:05:30] Speaker 00: So I think the real question is where you [00:05:32] Speaker 00: where you perform that plotting step. [00:05:34] Speaker 00: You could either send the map separately and then do the plotting step on the device, or you could do the plotting step on the server and then send it all at once. [00:05:42] Speaker 00: Either way, you're transmitting all the same information and you're just changing the order of operations slightly. [00:05:52] Speaker 00: Now, again, to get back to what I was just saying to Judge Wallach's question, [00:05:57] Speaker 00: This is a particularly clear case because there are no secondary considerations. [00:06:01] Speaker 00: There is no allegation of teaching away. [00:06:04] Speaker 00: Both solutions to this problem are known in the prior, and that's undisputed. [00:06:09] Speaker 00: And so it falls squarely within KSR and with this court's cases that apply KSR to find that a feature of the claims is an obvious design choice. [00:06:20] Speaker 00: For example, in the ACO, [00:06:23] Speaker 00: Brands, Assist, CRFD, Eufa, and Wires cases. [00:06:26] Speaker 00: There were only two options. [00:06:27] Speaker 00: That's the same here. [00:06:29] Speaker 00: Both choices were shown to be known in the prior art, just like in the Assist, Wires, and Slot Speaker cases. [00:06:36] Speaker 00: As in the Perfect Web case, this is not a situation where we need to develop an unexpected new technological approach. [00:06:43] Speaker 00: In fact, the patent itself says the invention does not require development of new cell phone or PDA technology. [00:06:49] Speaker 03: Now, one of the cases you cite, CRFD research, seems very, very close to this case. [00:06:57] Speaker 03: I think it is. [00:06:58] Speaker 03: The other side's response, as far as I recall, was simply to say, well, the parties there weren't disputing that there were only two design choices. [00:07:07] Speaker 03: Your response to that? [00:07:15] Speaker 00: So I may have missed your question, but I don't think there's any dispute in this case that there's only two design choices. [00:07:22] Speaker 03: Well, on 38 of red, which is 38 and 39, I think, is the only discussion of this case, which, as I said, I think is very, very close to our case. [00:07:35] Speaker 03: And it says, the patent owner admitted that design choices were equally likely. [00:07:40] Speaker 00: OK, now I understand. [00:07:41] Speaker 03: That is not true here, where the proposed alteration will result in wholesale modification of Okubo, and et cetera, et cetera. [00:07:50] Speaker 00: So before the board, it was Uber's view, and we still think this is right, although we haven't challenged the board in this respect, that Okuba was silent one way or the other about where it does the plotting. [00:08:02] Speaker 03: Yeah, but that's the substantial evidence. [00:08:03] Speaker 00: Right, exactly. [00:08:04] Speaker 00: And that's why we haven't challenged that. [00:08:06] Speaker 00: Our view is that even assuming the board is right about that, it doesn't change the result. [00:08:12] Speaker 00: So I think that is a distinction from CRFD, but it's not a distinction that changes the result because [00:08:20] Speaker 00: it's always going to be, in most obviousness cases, a modification. [00:08:24] Speaker 00: If it didn't need to be a modification, we'd be talking about anticipation, not obviousness. [00:08:29] Speaker 00: So the fact that the board found it to be a wholesale modification rather than a design choice is really a false dichotomy, because it's usually going to be that. [00:08:38] Speaker 00: You may have situations like CRFT where the prior is just silent. [00:08:41] Speaker 00: And we thought that was the case here. [00:08:43] Speaker 00: But even under the board's approach, where they read a Kubo is doing terminal side plotting, it's still not [00:08:50] Speaker 00: It's still not a difference that actually matters. [00:08:53] Speaker 03: One thing that seemed to matter to the board was that a kubu was successful on its own. [00:08:59] Speaker 03: So the issue here is whether or not there was motivation. [00:09:03] Speaker 03: And the board seems to me, we lied on that fact. [00:09:06] Speaker 03: Do you think that was a valid assessment by the board? [00:09:10] Speaker 00: I think the board lied almost entirely on that fact. [00:09:14] Speaker 00: And I think that was not a valid basis for the board's decision because, again, it's usually going to be the case that a prior reference is achieving its objectives. [00:09:25] Speaker 00: If it's a prior patent, then it's got to have a neighboring disclosure. [00:09:28] Speaker 03: So where was the board coming from? [00:09:29] Speaker 03: I mean, they've got considerable experience in evaluating these cases, including the motivation. [00:09:34] Speaker 03: So what was this about in this case? [00:09:37] Speaker 00: To be honest with you, I don't really know the answer to that. [00:09:41] Speaker 00: became really fixated on this idea that we were starting with Okubo and then the inquiry was whether to modify it. [00:09:48] Speaker 00: But that was never really the argument Uber was making. [00:09:51] Speaker 00: Uber's argument was always that if you start with both of these references in front of you and you look at their teachings together, it confirms that this is just a design choice and that you could go either way. [00:10:03] Speaker 00: I think, you know, I don't want to [00:10:07] Speaker 00: put my friends on the other side too much. [00:10:09] Speaker 00: But they tried to cash our argument more in the modifying Okubo sense. [00:10:13] Speaker 00: And Bohr, I think, bought into that wrongly. [00:10:21] Speaker 03: I think you're just about in your rebuttals. [00:10:23] Speaker 00: All right. [00:10:23] Speaker 00: I'll reserve my time. [00:10:24] Speaker 00: Thank you. [00:10:34] Speaker 05: Thank you, and may it please the court, Dori Hines, on behalf of X1. [00:10:39] Speaker 05: Judge Prost, I wanted to address a question you just asked about where the board was coming from in its analysis. [00:10:45] Speaker 03: Do you disagree that that was their assessment or a principal basis of their assessment was that Okuba was working just fine, it was successful, so therefore there would be no motivation to fuss around with it? [00:10:57] Speaker 05: Well, what the board was doing was considering Uber's arguments, and what Uber said was, [00:11:02] Speaker 05: The primary reference does not need modification. [00:11:06] Speaker 05: And that's at appendix 2754. [00:11:09] Speaker 03: Well, let's look at the board opinion and what it said on that. [00:11:12] Speaker 03: Do they cite that language? [00:11:15] Speaker 03: They do. [00:11:16] Speaker 04: I will find that for you. [00:11:20] Speaker 03: On page 22, that may be where you want to go. [00:11:23] Speaker 03: It says, moreover, petitioner asserts that based on Okupu's teachings alone, a person of ordinary skirt [00:11:29] Speaker 03: Art will have a reasonable expectation of success implementing Okubo. [00:11:34] Speaker 03: Okubo was successful in achieving this result. [00:11:39] Speaker 03: That's right. [00:11:40] Speaker 03: Why does that get you to the legal conclusion that I think maybe you'll disagree, that we agree that the board made was that because Okubo was successful, there would have been no motivation to look elsewhere? [00:11:57] Speaker 05: The board goes on to say at Appendix 22, petitioner argues that the primary reference does not need modification. [00:12:07] Speaker 02: And that's... That will be true every time there are two design choices, each of which is satisfactory. [00:12:13] Speaker 02: You wouldn't need to modify one of those choices, but you'd still have the alternative to it. [00:12:20] Speaker 02: And the cases seem to suggest that having two alternatives, each of which is satisfactory, [00:12:25] Speaker 02: its factory leads to a finding of obviousness. [00:12:30] Speaker 05: Well, there are two points here, and let me address both. [00:12:34] Speaker 05: Uber's argument was that Okubo did not need modification and that it was looking to Konishi just for implementation details. [00:12:42] Speaker 05: And the board rejected that and said Okubo discloses implementation details and discloses a system that operates correctly. [00:12:50] Speaker 05: As to design choices, [00:12:54] Speaker 05: What the board said was this represented impermissible hindsight. [00:12:59] Speaker 05: and represented a wholesale modification to Okubo. [00:13:02] Speaker 05: Said that on appendix 22 and 23. [00:13:04] Speaker 02: OK, I know that that's what the board said. [00:13:06] Speaker 02: But it looks from the record here as though we have two alternatives here. [00:13:13] Speaker 02: It's not clear whether either one of them is better than the other. [00:13:17] Speaker 02: And our cases seem to suggest where that's the situation, that that leads to a finding of obviousness. [00:13:25] Speaker 05: Well, respectfully, Your Honor, what the PTAB relied on in concluding that Konishi would be a wholesale modification of Okubo at Appendix 2367, this was the declaration of Uber's expert at Paragraph 86, and this is relied on by the PTAB at Appendix 23. [00:13:49] Speaker 02: Do you agree that if you have two equally satisfactory design choices, [00:13:55] Speaker 02: that can lead to a finding of obviousness. [00:14:00] Speaker 05: That's true, but that's not the case here. [00:14:02] Speaker 02: Okay, why is that not the case here? [00:14:04] Speaker 05: Because one of skill in the art, as X1's experts said, would not have been motivated to send maps in Okubo. [00:14:12] Speaker 05: And why is that? [00:14:13] Speaker 05: Because Okubo is related to a completely different system. [00:14:17] Speaker 05: Okubo, as the PTAB found. [00:14:19] Speaker 02: I'm not understanding how that's consistent with the concession that you just made. [00:14:23] Speaker 05: Well, because in this case, the design choices are not equally acceptable. [00:14:28] Speaker 05: These are not recognized alternatives that would be equally successful. [00:14:33] Speaker 05: The modification of Okubo with Konishi would not be successful. [00:14:37] Speaker 02: Did you argue with the patent say that one's preferable over the other? [00:14:40] Speaker 05: Does the 593 patent? [00:14:42] Speaker 05: Yeah. [00:14:43] Speaker 05: The 593 patent does not say that, nor is that required. [00:14:47] Speaker 05: Uber's reference. [00:14:48] Speaker 02: Did you have any evidence that one was preferable over the other? [00:14:52] Speaker 05: Well, as the PTAB recognized, what Uber, excuse me, X1's experts said, that the modification with Konishi would be unacceptable because Okubo looked to save bandwidth, decrease the risk of incomplete data transmissions, [00:15:10] Speaker 05: improve efficiency, was more reliable, and would avoid unpredictability. [00:15:15] Speaker 05: These are statements and evidence that the PTAB credited from X1's expert in explaining why Konishi was not a design choice for Okubo. [00:15:29] Speaker 05: That's accepted and referenced by the PTAB on appendix page 23. [00:15:35] Speaker 03: Where is that on page 23? [00:15:39] Speaker 03: And are we talking about the DG? [00:15:44] Speaker 03: You spend a lot of time on your brief talking about this problem with modifying Okubo, right? [00:15:52] Speaker 03: The DGPS? [00:15:54] Speaker 03: That's right. [00:15:56] Speaker 03: But I promise you spent a lot of time on it, but I didn't see what you're suggesting is what the experts said. [00:16:03] Speaker 03: I didn't see the boards adopting any of those findings. [00:16:06] Speaker 03: I didn't see the board making any findings with respect to the DGPS system. [00:16:12] Speaker 03: And you seem to rely heavily on that, but I don't see where the board did. [00:16:17] Speaker 05: Well, if you look at appendix 23, what the board says on the second line, petitioner does not identify any teaching or suggestion in Okubo that a plotted map is transmitted from DGPS station four of figure one or transmitted from anywhere else. [00:16:37] Speaker 05: In addition, the board cites exhibit 2004 paragraph 86 and [00:16:46] Speaker 05: That's at Appendix 2367. [00:16:48] Speaker 05: There, X1's expert is addressing DGPS systems, stating they did not have the bandwidth to transmit map data. [00:17:01] Speaker 05: He also says, once skilled in the art, [00:17:03] Speaker 05: would have applied a technique that could be performed over the low data transmissions of DGPS systems. [00:17:11] Speaker 03: Based on what the... Yeah, the difficulty I'm having is look at that paragraph on Appendix 23. [00:17:19] Speaker 03: Towards the end of the paragraph, it says, and further, as discussed above, the record supports a skilled artisan's understanding that a kubu sufficiently teaches the implementation of plotting the locations of group members on a map at its mobile terminal. [00:17:34] Speaker 03: OK. [00:17:35] Speaker 03: Therefore, we are not persuaded by petitioner's assertion that one of the ordinary skirt and the art would seek out kunishi as a design choice for combination. [00:17:46] Speaker 03: I guess. [00:17:48] Speaker 03: Just because it teaches the fact that a reference teaches one solution doesn't foreclose a design choice, right? [00:17:57] Speaker 03: I'm not seeing the connection the board was making there. [00:18:00] Speaker 05: Well, the board was making the connection to the argument Uber actually made. [00:18:04] Speaker 05: I mean, Uber said the primary reference does not need modification. [00:18:09] Speaker 05: Uber said [00:18:10] Speaker 05: that Okubo teaches everything but omits implementation details. [00:18:17] Speaker 05: And what the board said was, that's wrong. [00:18:21] Speaker 05: Okubo does teach implementation details and teaches them... I don't understand the relevance of this. [00:18:26] Speaker 02: Of course Okubo teaches one alternative here and it doesn't need modifications since that alternative is okay. [00:18:35] Speaker 02: But there's another alternative which is to do it on the server, right? [00:18:40] Speaker 05: And what the PTAB said was that that was rejected. [00:18:44] Speaker 05: That design choice argument was rejected because it represented impermissible hindsight and a wholesale modification to it. [00:18:54] Speaker 02: Well, I understand what they said. [00:18:55] Speaker 02: But where is the suggestion that this design choice wouldn't work equally well? [00:19:02] Speaker 05: Well, from what the PTAB relied on, that's at Appendix 2367. [00:19:10] Speaker 05: which is paragraph 86 of X1's expert. [00:19:15] Speaker 01: In essence, it wouldn't send enough data fast enough. [00:19:20] Speaker 05: Yes, because DGPS was a low data rate system that could not send maps. [00:19:25] Speaker 05: It could only send position information and coordinates. [00:19:29] Speaker 05: It would not and could not send maps. [00:19:32] Speaker 05: As a result, there was not a successful, there could not be a successful implementation [00:19:38] Speaker 05: of a design choice with a completely separate system. [00:19:42] Speaker 05: These were not two known design choices that were readily interchangeable. [00:19:47] Speaker 05: And the evidence submitted and accepted by the PTAB recognizes that and recognizes the substantial difference. [00:19:55] Speaker 05: in bandwidth, in the risk of incomplete data transmissions. [00:20:00] Speaker 05: If you forced a system to send a map that's suggested in Konishi with the system in Okubo, you would not have a successful implementation because you had incomplete data transmissions. [00:20:13] Speaker 01: It would be less reliable. [00:20:15] Speaker 01: that it wouldn't work for the design purpose. [00:20:17] Speaker 05: That's exactly right. [00:20:19] Speaker 05: And that was the evidence that was submitted and accepted by the PTAB in finding that Konishi was not an acceptable workable choice for the Okubo system. [00:20:32] Speaker 01: You know, you rely on 86, I guess. [00:20:37] Speaker 01: I found 82 through, 82 and 83. [00:20:43] Speaker 01: particularly enlightening regarding the rates. [00:20:50] Speaker 05: In fact, Your Honor, there's a substantial section of Mr. Sturz's declaration that addresses why DGBS systems would not be implemented with a solution such as in Konishi. [00:21:07] Speaker 05: And that's addressed at paragraph 77 to 91 of his [00:21:13] Speaker 05: Declaration which is at appendix 2361 through 2373 And your honor mentioned paragraphs 82 and 83 and And that is correct the I mean that's the core of what I was saying to you So where did the board make those findings well? [00:21:38] Speaker 05: What the board said was that? [00:21:42] Speaker 05: it would be a wholesale modification. [00:21:44] Speaker 05: The board specifically pointed to paragraph 86 of Mr. Stewart's declaration. [00:21:51] Speaker 03: And that's the only citation or reference or reliance on that, right, in the board's opinion. [00:21:58] Speaker 03: And they say, the record supports a skilled artisan's understanding that Okubo sufficiently teaches implementation of plotting locations on its map. [00:22:12] Speaker 03: That's the citation to 86, right? [00:22:19] Speaker 05: That's correct. [00:22:20] Speaker 05: And the PTAB also notes that the petitioner did not identify any teaching or suggestion in Okubo that a plotted map is transmitted from the DGPS Station 4, recognizing again that Okubo is, in fact, a DGPS system. [00:22:39] Speaker 02: But it isn't a suggestion here, and maybe I'm misunderstanding, that by using Kenishi instead of the server-side plotting, that you'd avoid these problems that are identified in connection with the Akushi, whatever the name of the system. [00:22:57] Speaker 05: That's never an argument that Uber made. [00:23:00] Speaker 05: And in fact, the evidence that X1 presented shows exactly the opposite, that in a system such as a Kubo, you are limited to low data rate transfers. [00:23:10] Speaker 02: What's the difference between the two systems? [00:23:12] Speaker 05: I'm sorry? [00:23:12] Speaker 02: What's the difference between two systems? [00:23:15] Speaker 05: Well, Okubo discloses a GPS or DGPS system. [00:23:19] Speaker 05: It doesn't even disclose a cell phone system. [00:23:21] Speaker 02: Well, that's a problem because I think there's suggestion that it does disclose a cell phone system. [00:23:29] Speaker 02: The only network... Wait, wait, wait. [00:23:31] Speaker 02: The problems identified that you're referring to don't relate to a cell phone system, right? [00:23:40] Speaker 05: The problems that are... No, no, no. [00:23:41] Speaker 02: Answer my question. [00:23:42] Speaker 02: Is that correct? [00:23:45] Speaker 02: No, because the only network disclosed... No, no, let's assume, just accept my hypothetical, let's assume Akushu, whatever it is, discloses a cell phone system as an alternative, okay? [00:23:59] Speaker 02: Let's assume that. [00:24:00] Speaker 05: Okay. [00:24:01] Speaker 02: These problems that you're identifying don't apply to a cell phone system, right? [00:24:13] Speaker 01: a properly configured cell phone system, put it that way. [00:24:17] Speaker 05: They would not, but that completely changes what Okubo teaches. [00:24:21] Speaker 05: Okubo only teaches two-way communications. [00:24:25] Speaker 02: So our problem here is whether you're right that Okubo doesn't teach the cell phone system as an alternative. [00:24:35] Speaker 05: Uber, in its petition, when it was arguing... Well, then I'll answer my question. [00:24:41] Speaker 02: side is whether Okushu teaches a cell phone system, and if it does, you agree that the problems that you identified don't apply to that. [00:24:54] Speaker 05: Okubo does not teach a cell phone system. [00:24:56] Speaker 02: Okay, well that's the question. [00:24:57] Speaker 05: Okubo only teaches GPS and DGPS, which are low data rate transmissions. [00:25:03] Speaker 05: In its petition [00:25:04] Speaker 05: Uber, recognize that. [00:25:06] Speaker 03: So what prevents the combination? [00:25:08] Speaker 03: I mean, that's what we do in obviousness. [00:25:10] Speaker 03: We've got two pieces of prior art, and we're talking about combining them. [00:25:17] Speaker 03: Obviously, there might be deficiencies in one of the references, but that's the reason for combining them. [00:25:25] Speaker 05: Well, we don't combine them because, as the PTAP said, substantial evidence supports [00:25:31] Speaker 05: That system would not work. [00:25:34] Speaker 05: It would not operate. [00:25:37] Speaker 05: It would not operate to transmit the map data. [00:25:41] Speaker 05: Data would be lost. [00:25:42] Speaker 05: It would be incomplete. [00:25:44] Speaker 05: It simply would not be used. [00:25:46] Speaker 05: That's why it would not be combined. [00:25:49] Speaker 05: Thank you. [00:25:50] Speaker 05: Thank you. [00:25:56] Speaker 01: No, don't sit down. [00:25:57] Speaker 01: You need to start some time. [00:26:06] Speaker 01: A GPS system triangulates off a satellite, and the data itself is pretty low rate. [00:26:15] Speaker 05: That's correct. [00:26:16] Speaker 01: And you're operating off a base map in the vehicle, which is there. [00:26:25] Speaker 05: That's correct. [00:26:26] Speaker 01: And it's been downloaded years ago. [00:26:29] Speaker 05: Well, some time ago. [00:26:30] Speaker 01: We don't know when, but yes, it's there. [00:26:32] Speaker 01: Yeah, in the past. [00:26:35] Speaker 01: The transmission of map data is massively more intense. [00:26:41] Speaker 01: Am I correct on that? [00:26:42] Speaker 05: It is, absolutely. [00:26:43] Speaker 05: And the claims require that that data be updated. [00:26:47] Speaker 05: So you not only have the transmission of a massive amount of map data, you have the updating of that information, which would require repeated transmission of a massive amount of data. [00:27:00] Speaker 05: which is not possible in the system that Okubo discloses. [00:27:04] Speaker 02: But it is possible in a cell phone system. [00:27:08] Speaker 05: Which Okubo is not. [00:27:10] Speaker 05: Okubo was not a cell phone system. [00:27:12] Speaker 02: So we come back again to whether it was obvious to use a cell phone system. [00:27:17] Speaker 05: which is an argument, respectfully, that Uber never made and never provided evidence to support. [00:27:23] Speaker 05: Uber's argument was that Okubo teaches everything but implementation details and does not need to be modified. [00:27:31] Speaker 05: Changing the DGPS system of Okubo is what the board said, a wholesale modification. [00:27:37] Speaker 05: It completely changes the type of system, the type of data and how that data would be transmitted. [00:27:43] Speaker 05: And the evidence supports that that would be unacceptable in the system Okubo actually disposes. [00:27:50] Speaker 01: And to be clear, you can have a GPS system, an app, GPS app on a cell phone, but it's a GPS app. [00:27:57] Speaker 05: Today you can, yes. [00:27:59] Speaker 05: Yes you can. [00:28:15] Speaker 00: So I'd like to pick up where we left off with this DGPS argument. [00:28:21] Speaker 00: First of all, the argument is sort of a red herring, because even if you were to accept the idea that Okubo alone is limited to this DGPS transmission, Kenishi undisputedly uses- Do you dip ways in? [00:28:39] Speaker 01: You don't dispute that, do you? [00:28:40] Speaker 01: I mean, it is limited to GPS. [00:28:42] Speaker 00: We do dispute that. [00:28:43] Speaker 00: In fact, we don't think the board could have possibly reached that conclusion. [00:28:46] Speaker 00: And the reason for that, Your Honor, is that it's undisputed that Okubo uses two-way communications, transmits to the server and then back. [00:28:56] Speaker 00: And it's also undisputed that DGPS can't do that. [00:28:59] Speaker 00: It can only broadcast one way. [00:29:02] Speaker 00: And so X1's argument was essentially that they must be mysteriously proposing to somehow modify DGPS, but that's not the reasonable reading of Okubo. [00:29:11] Speaker 00: The reasonable reading of Okubo is that there's a cellular network being used for the two-way communications. [00:29:17] Speaker 00: And it was just so well known at the time that Okubo didn't need to spell it out. [00:29:22] Speaker 01: What information is that transmitting? [00:29:25] Speaker 00: That's where you actually transmit the location data [00:29:29] Speaker 00: See, DGPS isn't used for that in Okubo. [00:29:32] Speaker 00: It's only used to transmit corrections to the raw GPS data. [00:29:36] Speaker 00: That's what DGPS is. [00:29:39] Speaker 00: It's a system for correcting little errors in GPS. [00:29:43] Speaker 00: And that's what Okubo uses it for. [00:29:44] Speaker 00: And that's all Okubo says it uses it for. [00:29:47] Speaker 00: But it's silent about how it's actually doing the two-way transmissions. [00:29:53] Speaker 00: And we think, very clearly, the only reasonable reading is that that has to be a cell phone network. [00:29:58] Speaker 00: But even if you started by saying that even if that were correct. [00:30:01] Speaker 00: But even if that weren't the case, it's really wrong because Kenishi uses a cellular network. [00:30:07] Speaker 00: And so the idea when you're combining the references that you have to treat this DGPS feature, if it was even a feature of Okubo, as sort of a fixed property, it becomes a bodily incorporation argument. [00:30:18] Speaker 00: You're trying to bodily incorporate [00:30:21] Speaker 00: the server-side plotting of Kenishi into Okubo with making no other changes. [00:30:25] Speaker 00: But an obvious inquiry is much more expansive and flexible than that under KSR. [00:30:29] Speaker 01: Did you argue to the board that Okubo was not limited to GPS and DGPS? [00:30:35] Speaker 00: Yes, we did. [00:30:36] Speaker 01: And how much data did you tell the board was transmitted? [00:30:41] Speaker 00: I don't think we got into that level of detail, Your Honor. [00:30:44] Speaker 00: But we certainly addressed the DGPS argument at length before the board. [00:30:49] Speaker 00: And the board [00:30:50] Speaker 00: I think contrary to what X1 said, never really made any findings one way or the other on that. [00:30:55] Speaker 01: Well, they seem to have accepted. [00:30:57] Speaker 01: I mean, the paragraphs of the expert's affidavit which preceded 86, 84 and 85, or 83 and 84, I think. [00:31:10] Speaker 00: Well, they do cite to it, Your Honor. [00:31:12] Speaker 00: But it's only in the context of either describing what the argument is, and then in their actual analysis, they don't come back to it. [00:31:18] Speaker 00: Well, they cite this one paragraph, 86, in their analysis, but they cite it for a totally different proposition. [00:31:24] Speaker 00: And so neither of those- Are you talking about the citation of 86 on 23? [00:31:27] Speaker 00: On 23, yes. [00:31:28] Speaker 00: Yes. [00:31:30] Speaker 00: And then I think Council President Flores also mentioned the fact that they mentioned DGPS Station up higher on the page, appendix 23. [00:31:39] Speaker 00: And it's true that Okubo calls this intermediary server between its database and its mobile terminals a DGPS Station. [00:31:46] Speaker 00: But that's because DGPS was actually part of the novelty in Okubo, whereas using a cellular network is not. [00:31:54] Speaker 00: But if you look at that same figure where it says DGPS station, which is on appendix 1145, it shows a two-way arrow going back and forth, which totally contradicts the notion that the only communications it's engaged in is DGPS. [00:32:11] Speaker 00: Because X1 itself says, is that the? [00:32:15] Speaker 03: Looking at it now, it seems like that's the board's only reference to DGPS. [00:32:22] Speaker 00: Certainly, once it gets past describing the party's arguments, that's correct, yes. [00:32:25] Speaker 01: What in Okubo changes the map? [00:32:30] Speaker 00: Changes the map? [00:32:31] Speaker 01: Yeah. [00:32:32] Speaker 01: I think that's sort of core of where we're talking about. [00:32:36] Speaker 00: So, Your Honor, I think that gets into Okubo's lack of discussion of its implementation details, which is not really [00:32:45] Speaker 00: is not really essential to the argument. [00:32:47] Speaker 00: I mean, certainly we did point that out as one reason why kinesia would be significant, but it wasn't what our argument hinged on. [00:32:54] Speaker 00: But I do think that's a feature that Okuba doesn't really provide the detail on. [00:32:58] Speaker 00: It doesn't say exactly where and how it's changing the map. [00:33:03] Speaker 03: And your argument is that Okuba doesn't have to do that, because that's what you get from the argument. [00:33:07] Speaker 00: Exactly. [00:33:07] Speaker 00: I mean, that's why you have obviousness. [00:33:09] Speaker 00: That's why we combine references, and we look at all the prior art as a whole. [00:33:14] Speaker 00: unless there are any further questions. [00:33:17] Speaker 00: Thank you. [00:33:17] Speaker 00: We thank both sides and the cases.