[00:00:03] Speaker 04:
The first case for argument this morning is 181053, exact wear solutions versus Eagle View.

[00:00:10] Speaker 04:
Mr. Nikolsky?

[00:00:13] Speaker 02:
Good morning, Your Honor.

[00:00:25] Speaker 02:
I'd like to reserve three minutes of rebuttal time, if I could.

[00:00:32] Speaker 02:
Your honors, this case is a consolidated appeal of four inter-parties review proceedings involving legal views 454, 770, 152, and 737 patents.

[00:00:43] Speaker 02:
I believe that there are three central issues that require discussion today.

[00:00:47] Speaker 02:
The first issue addresses whether the board committed legal error in its analysis of secondary considerations of non-obviousness.

[00:00:54] Speaker 02:
And that issue impacts all four patents in this case.

[00:00:58] Speaker 02:
The second issue, your honors, is whether

[00:01:00] Speaker 02:
the board improperly excluded ExactWare's arguments that the Abrahami reference teaches the movement limitation, and that issue pertains to the 770 patent in particular.

[00:01:10] Speaker 02:
And the third and final issue, Your Honors, is whether the board failed to conduct an adequate and substantive analysis of the prior art with respect to dependent claims 10, 15, and 25 of the 152 patent.

[00:01:23] Speaker 00:
On page 34 of the blue brief, you argued

[00:01:30] Speaker 00:
Quote, because the patent and inventions of each of the 152, the 454, the 737, and the 770 patent are merely components of the Twister and Renderhouse products, the co-extensive requirement of the presumption of nexus standard can't be satisfied.

[00:01:48] Speaker 00:
Yes, Your Honor.

[00:01:49] Speaker 00:
If you have a product which embodies two patents you hold, are both patents at issue and both patents are at issue.

[00:01:59] Speaker 00:
Are you barred from showing the grand factors because both patents contribute to success?

[00:02:05] Speaker 02:
Your Honor, I think the answer to that question is that you have to show, again, that the claims, even though there might be two patents, that the claims themselves are coextensive with whatever is alleged to be commercially successful.

[00:02:16] Speaker 02:
There are some case law, I think, that the parties have cited which have dealt with two patents, for example.

[00:02:21] Speaker 02:
One patent actually dealt with a pharmaceutical composition, and the second patent dealt with a method of manufacturing the pharmaceutical composition.

[00:02:28] Speaker 02:
There it was shown that they were both coextensive with the product that was alleged to be successful.

[00:02:32] Speaker 00:
You say that a statement from Eagle View that it's doing business with one-fifth of the contractor market doesn't indicate market share because there's no evidence of actual sales.

[00:02:47] Speaker 00:
What's your authority for that?

[00:02:49] Speaker 02:
Well, Your Honor, I believe what we're saying there is that

[00:02:53] Speaker 02:
there's no evidence of the comparison of the sales to how much was actually their sales to how much is actually done in the marketplace itself.

[00:03:01] Speaker 02:
The case law authority for that, I could bring up on rebuttal, Your Honours, if I could.

[00:03:08] Speaker 02:
So, Your Honours, with respect to... You don't have any siding.

[00:03:12] Speaker 02:
Understood, Your Honour.

[00:03:13] Speaker 04:
Can I ask you further about this Nexus question?

[00:03:17] Speaker 04:
Yes.

[00:03:17] Speaker 04:
There's a whole lot of ink spilled between you and your friend about the cases and does a body mean co-extensive?

[00:03:24] Speaker 04:
Does is mean is?

[00:03:25] Speaker 04:
At the end of the day though, I'm looking at the record.

[00:03:29] Speaker 04:
Yes, you're right.

[00:03:30] Speaker 04:
And the patent owner puts in on questions of secondary consideration, I'm not sure they mentioned presumption or not, but they keep saying the patented invention, the products are the patented invention, are or is.

[00:03:46] Speaker 04:
You come in and all of your pages on secondary considerations never go to that argument at all.

[00:03:56] Speaker 04:
It's my view of what you say in response is simply you're going after their witness, their expert, and kind of saying, well, he didn't prove that the reports that were issued even practice the twister and whatever.

[00:04:13] Speaker 04:
goes on for three pages that they don't even practice the claims.

[00:04:19] Speaker 04:
You have one phrase that says, and not some other feature, which has no site to the record.

[00:04:27] Speaker 04:
Now, you have a lot of sites in your briefs that have different portions of that and different arguments.

[00:04:33] Speaker 04:
I see none of that in the record that was before the board.

[00:04:37] Speaker 04:
So even if you're right.

[00:04:39] Speaker 04:
in terms of the legal niceties of what we've said about coextensive and embody, I don't see how here, whether it was for presumption of nexus or for a nexus at all, you made a sufficient case before the board to result in their concluding anything other than they concluded.

[00:04:58] Speaker 02:
In response to that, I would argue that we did sufficiently present that argument to the board and that there was sufficient evidence that we pointed to.

[00:05:05] Speaker 06:
Okay.

[00:05:05] Speaker 06:
Show me where.

[00:05:05] Speaker 02:
So in the petitioner's reply, for example, where we talk about – What page number?

[00:05:11] Speaker 06:
I'm on 1787.

[00:05:12] Speaker 06:
I'm assuming that's where you're going to be.

[00:05:14] Speaker 02:
That's correct, Your Honor.

[00:05:14] Speaker 02:
Yes.

[00:05:15] Speaker 02:
And where?

[00:05:15] Speaker 02:
1786 to 1788.

[00:05:16] Speaker 02:
Yep.

[00:05:16] Speaker 02:
That's exactly right.

[00:05:18] Speaker 02:
And I believe we make the statement there, Your Honors – and I'm asking my colleague to give me a copy of the opinion so I can have it in front of me – we make the statement that there is no evidence of record

[00:05:28] Speaker 02:
that the reports for which there were commercial sales were actually generated using the patented method claims.

[00:05:35] Speaker 02:
That appears later in the argument, Your Honors, I believe towards the end of that section.

[00:05:40] Speaker 04:
And that is really... No, no, I understand.

[00:05:42] Speaker 04:
You're saying your whole argument, that's what I thought I was saying, that your whole argument was these reports aren't even using the patented methods.

[00:05:51] Speaker 04:
And the board rejected that argument on the experts, and you didn't have an expert.

[00:05:58] Speaker 04:
And it seems to me, well, let me ask you, if you conclude that there was substantial evidence for the board to reject your argument that who cares about these reports of the product that was sold, and they have nothing to do with the twister, et cetera.

[00:06:12] Speaker 04:
If the board rejected that, then we don't even really get to the nuances of a nexus argument.

[00:06:18] Speaker 04:
That's just a different side of it, right?

[00:06:20] Speaker 04:
So are you telling me you argued something other than that?

[00:06:23] Speaker 02:
Your Honors, I believe we did argue what you're talking about.

[00:06:26] Speaker 02:
OK, show me where.

[00:06:27] Speaker 02:
And I believe it is in the pages that we put up.

[00:06:30] Speaker 06:
Read me the sentences.

[00:06:32] Speaker 02:
Yeah.

[00:06:34] Speaker 02:
Again, I'm looking for my colleague for the actual page of where we had the argument.

[00:06:39] Speaker 02:
So your honors, I'm looking here.

[00:06:43] Speaker 02:
So the page citation here is on 1787 at the bottom.

[00:06:47] Speaker 02:
Importantly, patent donor has failed to prove a nexus between the claims of the 454 patent and the purported commercial success or industry praise.

[00:06:55] Speaker 02:
In attempt to demonstrate commercial success, the patent donor

[00:06:58] Speaker 02:
uh... inundated with a plethora of evidence of reports providing much of an explanation without providing much of an explanation of what is being shown.

[00:07:04] Speaker 05:
Okay.

[00:07:04] Speaker 02:
And then as we go further here, Your Honor, as we say here, although the patent owner claims that its reports were generated using the Twister and RenderHouse software, there is no evidence that the reports were generated using the specific claimed method steps of the four or five-core patent.

[00:07:18] Speaker 02:
And Judge Prost, I think that goes to the heart of the issue with respect to Nexus.

[00:07:22] Speaker 02:
That they have alleged, their expert has alleged, Dr. Bajaj, that the software, the Twister and RenderHouse software

[00:07:28] Speaker 02:
could embody the claims of these particular four patents.

[00:07:31] Speaker 02:
What they have not shown, and what Dr. Bajaj has not shown, is that the merits of those patent claims, the merits of the 770, which calls for specific GUI steps that are undertaken by GUIMI Graphical User Interface, steps that are taken to generate... Can I just ask you, I'm looking at what you cited.

[00:07:46] Speaker 04:
There's no record site to any of this.

[00:07:49] Speaker 04:
Now you say, in the first sentence you wrote, it says see generally 2012 to 2015.

[00:07:56] Speaker 04:
But this other paragraph that you're talking about here, there's nothing in the record, right?

[00:08:03] Speaker 02:
In this particular document, there's no citation, Your Honor, correct?

[00:08:06] Speaker 06:
Well, and the sentence after the sentence you read says, therefore, patent owner has failed to prove a nexus because there's no evidence the roof reports sold by patent owner and praised by the industry were created using the claimed features and not some other feature.

[00:08:20] Speaker 06:
I mean, I guess I'm

[00:08:23] Speaker 06:
having the same concern that Judge Prost is that you have pretty significantly shifted your argument on appeal into something that I'm having trouble seeing that you raised below in these two pages.

[00:08:39] Speaker 02:
Yes, Your Honor, and I understand the point.

[00:08:42] Speaker 02:
I believe that we're not confined just to these two pages.

[00:08:45] Speaker 06:
I think if we look at the totality of the red... So the only pages you cited in your entire red brief, you cited 1767 to 17

[00:08:52] Speaker 06:
1786 to 1788.

[00:08:55] Speaker 06:
You cited no other pages in your brief.

[00:08:57] Speaker 02:
I think that was exemplary of the other hearings as well, where we talked about the other patents as well, but it was a similar argument.

[00:09:04] Speaker 06:
They argued waiver.

[00:09:06] Speaker 06:
In your reply brief, you knew that they were saying you waived this argument.

[00:09:11] Speaker 06:
And all that you can point me to right now are the same two pages that you pointed me to in your brief.

[00:09:15] Speaker 06:
But you're saying, but it exists magically somewhere else in the record, but you're not prepared to show me where or tell me where?

[00:09:19] Speaker 02:
Your Honors, I think that is the crux of the case in chief before the PTAB.

[00:09:24] Speaker 02:
That was where that argument was raised in the reply brief.

[00:09:26] Speaker 02:
So we are not disputing that.

[00:09:28] Speaker 02:
But what we are submitting to this court, though, is that there was legal error in the application.

[00:09:32] Speaker 02:
And it is within the power of this court to look at the legal record, to look at the evidence that's already of record in the case underlying it.

[00:09:41] Speaker 02:
establish whether there was a proper legal conclusion of secondary considerations?

[00:09:45] Speaker 04:
Well, frankly, the only two things I'd respond to you there are one, even if there were a legal error, it would be harmless error if in fact you put on nothing and it wasn't clear to the board that you were even arguing this point before the board.

[00:10:03] Speaker 04:
And the board does use the term embody

[00:10:09] Speaker 04:
But it also, in its conclusions, uses the term coextensive.

[00:10:14] Speaker 04:
So even to find legal error, if we found it had some impact on this case, which I think we're all having a little struggle doing that, the board used the term coextensive.

[00:10:26] Speaker 04:
I mean, I'm not going to say that our precedent is necessarily 1,000% crystal clear.

[00:10:34] Speaker 04:
We use the word coextensive frequently, and we've used the word embody.

[00:10:38] Speaker 04:
The board kind of did the same thing, but at the end, its conclusions were it is coextensive.

[00:10:45] Speaker 04:
So tell me why, under those circumstances, we get to a leak error determination.

[00:10:52] Speaker 02:
I think in the actual written opinion, Your Honor, really all it was was a recitation of the law, a recitation of Brennan versus Williamson.

[00:11:00] Speaker 02:
If we look at Appendix 23, for example, which is the board's opinion in the 454 decision,

[00:11:07] Speaker 02:
The board quotes this court's reasoning.

[00:11:10] Speaker 02:
The product embodies the claim features and is coextensive with them, but then conducts, after that, no actual application of the law or no actual application or analysis of the coextensive requirement to the facts of the case.

[00:11:24] Speaker 04:
And you're asking us whether or not there's substantial evidence.

[00:11:28] Speaker 02:
I think it's both, Your Honor.

[00:11:29] Speaker 02:
I think it's both.

[00:11:31] Speaker 00:
I think it's a legal error in the application of the law.

[00:11:33] Speaker 04:
That's a substantial evidence.

[00:11:35] Speaker 00:
And when you get into the substantial evidence, they put in a lot.

[00:11:40] Speaker 02:
Your Honor, we don't dispute that there was a volume of evidence that was submitted by their side.

[00:11:43] Speaker 02:
However, we do submit that that evidence was available for us to make our point that there was no prima facie case of nexus in the first instance.

[00:11:52] Speaker 02:
And we pointed to the declaration testimony of Dr. Bajaj, who does not actually- Did you ever say those words to the board?

[00:11:59] Speaker 04:
Which words, Your Honor?

[00:12:00] Speaker 04:
There is no evidence to establish a prima facie case of nexus.

[00:12:04] Speaker 01:
I believe we used, I'm going back to the quote that we had prior, which I apologize.

[00:12:12] Speaker 01:
Here we go.

[00:12:12] Speaker 02:
1787.

[00:12:14] Speaker 02:
1788?

[00:12:16] Speaker 02:
1788, that's correct, Your Honor.

[00:12:18] Speaker 02:
The board failed to approve the nexus.

[00:12:20] Speaker 02:
And by that, I believe we met a prima facie case of nexus.

[00:12:23] Speaker 04:
Well, you say the word nexus.

[00:12:24] Speaker 04:
I mean, that's why.

[00:12:26] Speaker 04:
Whether the board decided to apply a presumption or just said, OK, there's no presumption, let's look at the nexus.

[00:12:33] Speaker 04:
and they're evaluating the evidence, and we're reviewing that evidence based on substantial evidence, I see what you're putting forward.

[00:12:43] Speaker 04:
There's no evidence.

[00:12:45] Speaker 04:
I mean, there's no citation.

[00:12:47] Speaker 04:
It's your response to what their expert said.

[00:12:50] Speaker 04:
And essentially, you are arguing about the almost admissibility of the reports, whether they're connected at all to the patented features.

[00:12:58] Speaker 04:
Fine, maybe you were right.

[00:13:00] Speaker 04:
If it were not a substantial evidence review here, maybe we'd take a careful look at that.

[00:13:07] Speaker 04:
But that's where I am.

[00:13:08] Speaker 04:
So tell me where I'm wrong.

[00:13:10] Speaker 02:
And Your Honor, I think that there is evidence that this court can look at that's already of record.

[00:13:15] Speaker 02:
And that is, for example, the deposition testimony that we took of Dr. Bajaj.

[00:13:19] Speaker 02:
I deposed him and my colleague Mr. Christie deposed him on issues of secretary's consideration.

[00:13:24] Speaker 02:
And there, it was established, and Dr. Bajaj admitted,

[00:13:28] Speaker 02:
that this report, which Eagleview alleges was commercially successful, was actually an old report that was from 2014.

[00:13:35] Speaker 02:
We pointed that out to the board.

[00:13:36] Speaker 02:
We pointed out that deposition testimony to the board at the oral hearing as well and in our trial materials.

[00:13:43] Speaker 02:
Additionally, Your Honors, I think you can look to the evidence that... What about Mr. Johnson's testimony?

[00:13:47] Speaker 02:
Mr. Johnson, yes, Your Honors.

[00:13:48] Speaker 02:
And I think that his testimony does not cure the deficiencies of Dr. Bajaj's testimony because Mr. Johnson only declares

[00:13:57] Speaker 02:
that there were substantial sales of these rules reports, and that they were made using the Twister and RenderHouse software programs.

[00:14:03] Speaker 02:
He says absolutely nothing with respect to the merits of the patent claims of any of these patents.

[00:14:08] Speaker 02:
Were they actually made using these method steps of these patent claims?

[00:14:12] Speaker 02:
Neither expert does that, Your Honors.

[00:14:14] Speaker 02:
And that's what's critical here to a showing of whether there is nexus in commercial success.

[00:14:20] Speaker 02:
And Your Honors, you can look to

[00:14:22] Speaker 02:
the user manuals that Eagleview provided in this case.

[00:14:24] Speaker 02:
And I don't think that we're prohibited from looking at that either.

[00:14:27] Speaker 02:
And in fact, we did in the proceedings below.

[00:14:29] Speaker 06:
I'm sorry, but on page 26 of the board's opinion, they cite Mr. Johnson's testimony that the reports submitted into evidence, quote, reflect sales of reports created using Twister and RenderHouse products.

[00:14:40] Speaker 06:
Correct, Your Honor, but it doesn't... So I don't understand how, under a substantial evidence standard,

[00:14:44] Speaker 06:
You'd like me to say that that isn't testimony that these reports were created using Twister and Renderhouse.

[00:14:50] Speaker 02:
We don't dispute created using Twister and Renderhouse, Your Honor.

[00:14:53] Speaker 02:
What we dispute is created using the claims, the merits of the patent claims.

[00:14:58] Speaker 02:
And that is what the caseload requires.

[00:14:59] Speaker 02:
The DeMarco case, for example, says that.

[00:15:02] Speaker 02:
The patent team must show a legally sufficient relationship between that which is patented and that which is sold.

[00:15:07] Speaker 02:
The analysis there goes toward what are the claims.

[00:15:09] Speaker 00:
We presume that such a nexus applies for objective indicia

[00:15:14] Speaker 00:
when the patentee shows that the asserted objective evidence is tied to a specific product, and that product embodies the claim features and is coextensive with them.

[00:15:23] Speaker 00:
Polaris.

[00:15:26] Speaker 00:
Where haven't they?

[00:15:27] Speaker 02:
Well, they have not, Your Honors, because if you look at the Twister and RenderHouse packages themselves, and you compare that software package, the allegedly commercially successful product, to what the claims are that are recited in each of these patents, the claims cover very limited GUI functions for generating a roof estimate report.

[00:15:43] Speaker 02:
The 770 patent talks about using visual markers that are superimposed in aerial images, ultimately to create a roof estimate report.

[00:15:51] Speaker 06:
If we go to the other patent... This is all attorney argument by you.

[00:15:54] Speaker 06:
You chose not to introduce an expert who could have possibly put into evidence, which would be evidence as opposed to attorney argument, some sort of rebuttal of their expert's claim that all this was embodied.

[00:16:08] Speaker 06:
Your attorney argument falls on deaf ears.

[00:16:10] Speaker 02:
Well, Your Honor, we think that the burden did not properly shift to us at that point as a matter of law for us to adduce evidence of our own by way of our own expert.

[00:16:21] Speaker 02:
It was our argument that there was never a case of nexus to begin with, and certainly there was no presumption of nexus because that never appeared until the final written opinion in the case.

[00:16:30] Speaker 02:
But again, Judge Moore, just to point you to where there is evidence, we do submit that it is proper for us to look at the testimony of Dr. Bajaj,

[00:16:38] Speaker 02:
to look at their roof estimate reports, and in particular, to consider the cross-examination that we had conducted.

[00:16:44] Speaker 02:
In the IPR proceedings, Your Honors, that's a mechanism for the petitioner to adduce further evidence by taking a cross-examination of an expert's direct testimony.

[00:16:53] Speaker 02:
That's evidence that we adduced.

[00:16:54] Speaker 02:
In fact, we spent a lot of time going over with Mr. Bajaj, Dr. Bajaj, what actually had he looked at.

[00:17:00] Speaker 02:
And he candidly admitted, you know, this is a 2014 copy of a report that was generated from the system.

[00:17:06] Speaker 02:
He does not tie it in any way, shape, or form

[00:17:08] Speaker 02:
to the thousands of reports that Eagleview claims was commercially testable.

[00:17:11] Speaker 04:
OK, so this case comes down to the board considered your argument on appeal, although I'm not clear.

[00:17:17] Speaker 04:
Certainly in your reply, you didn't cite a lot of record evidence.

[00:17:21] Speaker 04:
But they considered your argument about appeal.

[00:17:23] Speaker 04:
And they said, Pratt and Oner has provided extensive evidence that the products are co-extensive with 26.

[00:17:29] Speaker 04:
And we are persuaded that nexus exists, the products at issue.

[00:17:32] Speaker 04:
So you're saying that on a substantial evidence review, if we look at the record,

[00:17:36] Speaker 04:
and the arguments you presented with respect to the record, which, as far as we're all agreed, consists of these three pages, right?

[00:17:44] Speaker 04:
And that's enough to dislodge central evidence.

[00:17:49] Speaker 04:
It's our fault that we're way over time.

[00:17:51] Speaker 04:
We'll reserve some rebuttal.

[00:17:52] Speaker 02:
Thank you very much, Your Honor.

[00:17:58] Speaker 03:
Thank you, Chief Judge Prost.

[00:17:59] Speaker 03:
And may it please the court, John O'Quinn, on behalf of Eagleview,

[00:18:02] Speaker 03:
The board upheld the patentability of the claims at issue based on the facts before it.

[00:18:07] Speaker 03:
On appeal, as the panel has heard, Zachtware tries to manufacture legal issues out of those factual findings because it regrets not putting on any rebuttal evidence to the objective indicia of non-obviousness.

[00:18:18] Speaker 03:
Evidence that included Zachtware's own praise of the technology at appendix 1471, as well as its parents' offer to buy it for $650 million.

[00:18:28] Speaker 04:
The problem for Zachtware.

[00:18:29] Speaker 04:
And all of that has little to do with

[00:18:31] Speaker 04:
the difference between presumption of nexus or nexus.

[00:18:35] Speaker 04:
That's all nexus testimony, right?

[00:18:37] Speaker 03:
I think that's right, Chief Judge Prost.

[00:18:39] Speaker 03:
All of that is testimony about the commercial success, about the praise of others.

[00:18:44] Speaker 04:
Of the patented teachers.

[00:18:46] Speaker 03:
That's right.

[00:18:47] Speaker 03:
And so the arguments that they do make, Chief Judge Prost, are arguments that are either waived or foreclosed by precedent, for example.

[00:18:57] Speaker 04:
Well, a waiver on a little waivers

[00:19:00] Speaker 04:
not a popular thing in all instances.

[00:19:02] Speaker 04:
So is it fair to say we're not really talking about waiver?

[00:19:07] Speaker 04:
We're talking of the failure to make an argument, let alone put on evidence along the lines they're arguing here?

[00:19:16] Speaker 03:
I think that's absolutely right, Chief Judge Prost.

[00:19:18] Speaker 03:
You could call it forfeiture as opposed to waiver.

[00:19:21] Speaker 03:
This is simply not an argument that they presented to the board.

[00:19:26] Speaker 03:
They didn't argue to the board

[00:19:28] Speaker 03:
that you can't have nexus when there are multiple patents.

[00:19:32] Speaker 03:
They didn't argue to the board that you can't have nexus when there are unclaimed features.

[00:19:37] Speaker 03:
And indeed, such an argument would be inconsistent with a long line of this court's cases like WBIP versus Kohler, PPC broadband, the Kolo Kim, Polaris versus Arctic Cat.

[00:19:48] Speaker 03:
And so they didn't make any of those arguments.

[00:19:51] Speaker 04:
And even if they had a conclusion with regard to nexus,

[00:19:55] Speaker 04:
says coextensive.

[00:19:56] Speaker 04:
So why are we even arguing this?

[00:19:58] Speaker 04:
When you say, in your petition, you said repeatedly, this is the patented invention.

[00:20:06] Speaker 04:
What we sold is the patented invention.

[00:20:09] Speaker 04:
What we sold are the patented features.

[00:20:11] Speaker 04:
And then the board concludes it's coextensive.

[00:20:14] Speaker 04:
Do you think that was not supported by substantial evidence?

[00:20:17] Speaker 03:
No, it absolutely is supported, Chief Judge Prost.

[00:20:19] Speaker 03:
And there was no evidence put on to the contrary.

[00:20:23] Speaker 03:
I think this case is

[00:20:24] Speaker 03:
is much like WBIP and much like Polaris in terms of the board's finding of Nexus.

[00:20:30] Speaker 03:
And it's not even ultimately clear to me that the board had to rely on the presumption.

[00:20:35] Speaker 03:
If you look at Appendix 31, for example, they find that the patent owner has shown strong evidence of Nexus between the Twister and RenderHouse products and the claim.

[00:20:44] Speaker 03:
So I think either way that you look at it, the board found that there was Nexus.

[00:20:48] Speaker 03:
And there's evidence to support that.

[00:20:50] Speaker 04:
You relied and the board relied on industry praise.

[00:20:54] Speaker 04:
And that industry praise was definitely focused on the technological advances of the claims, correct?

[00:21:01] Speaker 03:
That's absolutely right, Chief Judge Prost.

[00:21:02] Speaker 03:
If you look, for example, at Appendix 1471, their own CEO referred to our technology as, quote, key technology.

[00:21:11] Speaker 03:
They recited to their investors that our technology was used by 24 out of 25 insurance companies

[00:21:17] Speaker 03:
30,000 building contractors.

[00:21:20] Speaker 03:
That's all at appendix 1479 on an investor.

[00:21:23] Speaker 00:
What's a top insurance company?

[00:21:25] Speaker 03:
I think that they mean insurance companies with a nationwide presence or substantial insurance companies.

[00:21:31] Speaker 03:
There are obviously thousands of insurance companies across the country, Judge Wallach.

[00:21:36] Speaker 00:
That was my only marginal question.

[00:21:39] Speaker 03:
Well, if the court has no further questions, I'm happy to cede back the balance of my time.

[00:21:45] Speaker 03:
Thank you, Chief Judge Probst.

[00:21:54] Speaker 02:
We'll restore two minutes.

[00:21:56] Speaker 02:
Thank you, your honor.

[00:21:57] Speaker 02:
So your honor, just in rebuttal, I think it's important for us to keep track of the timeline of this case in particular and as it went forward in the PTAB.

[00:22:06] Speaker 02:
Eagleview argued first in their patent donor's reply that there was this evidence of commercial success.

[00:22:13] Speaker 02:
We argued that there was not any evidence of nexus between commercial success and the merits of the patent claim.

[00:22:19] Speaker 02:
that was proper for us to do, and we submit, Your Honors, that there was additional evidence that we adduced by virtue of the deposition testimony of Dr. Bajaj, which supported that argument that there was no nexus.

[00:22:29] Speaker 02:
There was a candid admission by him that the report that he pointed to was not the ones that were actually commercially successful, and certainly not the body of reports that Dr. Johnson says were commercially successful.

[00:22:41] Speaker 02:
So I think this Court can look to that and can make the conclusion that there was evidence adduced, at least on our side.

[00:22:48] Speaker 02:
As I mentioned earlier, we also believe that it is proper for all of the parties in these proceedings to look at the evidence, no matter who proffers the evidence, and use it to the party's best arguments.

[00:23:00] Speaker 02:
That happened here with respect to the user manuals themselves, Your Honors.

[00:23:03] Speaker 02:
We argued that the user manuals talk about functionality that goes way beyond the claims at issue in the particular patents.

[00:23:10] Speaker 04:
Where is that?

[00:23:12] Speaker 04:
That's part of the argument that we've- I saw the argument in gray in our brief here, but

[00:23:18] Speaker 02:
I believe at the oral hearing, Your Honors, and we can try to track down a... Oh, okay, but I'm not looking... I'm looking at the re-plot.

[00:23:24] Speaker 02:
Yes, not in the actual reading documents, correct.

[00:23:27] Speaker 06:
So you made the arguments but didn't put them in the appendix?

[00:23:30] Speaker 02:
I don't think we did that, Your Honors.

[00:23:32] Speaker 02:
I will confirm.

[00:23:34] Speaker 06:
Can I just ask you something?

[00:23:35] Speaker 06:
Sure.

[00:23:35] Speaker 06:
Is it your view, because our case law says... the start of our case law was reasonably commensurate.

[00:23:41] Speaker 05:
Yes.

[00:23:42] Speaker 06:
Okay.

[00:23:42] Speaker 06:
Is it your view that reasonably commensurate means

[00:23:46] Speaker 06:
that if it has any bells or whistles that aren't articulated in the claim, that it would not be reasonably commensurate in scope?

[00:23:55] Speaker 02:
I don't think it's that broad, Your Honors.

[00:23:57] Speaker 02:
But I think, for example, if we look at the Brown and Williamson case.

[00:23:59] Speaker 06:
Because wouldn't it be then that no comprising claim would probably ever be entitled to a presumption of nexus?

[00:24:05] Speaker 06:
Because comprising claims on their face allow for the open-ended introduction of additional elements.

[00:24:12] Speaker 05:
Yes.

[00:24:13] Speaker 06:
And so I'm trying to understand

[00:24:15] Speaker 06:
what your view of coextensive or reasonably commensurate in scope and our very first case on this said reasonably commensurate and later cases paraphrased it as coextensive.

[00:24:25] Speaker 06:
So I'm just trying to understand where you draw the line because I think that is most of your argument on appeal that there are these other claims or features in the product

[00:24:34] Speaker 06:
And therefore, the presumption would not appropriately have attached.

[00:24:37] Speaker 06:
So I'm trying to understand where you draw that line.

[00:24:39] Speaker 02:
And I think, Your Honor, it goes to the actual claim language itself.

[00:24:42] Speaker 02:
So we've got to look at the claim language of, for example, the 454 patent, which recites five or six, by memory I'm going, steps that occurred before there's a generation of the actual roof estimate report.

[00:24:52] Speaker 02:
Patent Office found, by the way, that that last limitation was printed matter.

[00:24:56] Speaker 02:
So really, the merits of the actual patent claim are what's recited earlier on it, displaying a first area limit, displaying a second area limit.

[00:25:02] Speaker 02:
displaying a visual marker on the first one, moving the first marker, indicating the movement on the second aerial image, etc.

[00:25:08] Speaker 02:
That's the patentable merits of the claim here.

[00:25:11] Speaker 02:
So, Your Honor, to your point, I think the coextensiveness requirement has to look at, let us first identify what the merits of the claim are, and then let's look at the product.

[00:25:19] Speaker 02:
Now, they have chosen to draft their claims in a certain way.

[00:25:21] Speaker 02:
They've chosen to claim this functional procedure within this larger software package called Twister and RenderHouse.

[00:25:27] Speaker 02:
And the evidence firmly establishes, Your Honor,

[00:25:30] Speaker 02:
This package is a massive system that has multiple different ways of generating reports.

[00:25:34] Speaker 02:
They didn't draft a patent claim that covers the entire system.

[00:25:38] Speaker 02:
And I think that there is a gray area, Your Honor, absolutely, and I'm not disputing that.

[00:25:42] Speaker 02:
But I think it has to be a very laser focus of the claims.

[00:25:45] Speaker 00:
Without the patented claims, would the product be usable or saleable?

[00:25:50] Speaker 02:
That is... I think so, Your Honor, because I think there... Now, we're not talking about evidence of record here, so I'm not making any representations.

[00:25:59] Speaker 02:
If we look at, for example, the user manuals of the packages themselves, the software packages, they disclose multiple different ways of generating roof estimate reports.

[00:26:07] Speaker 02:
And we try to put that in the diagram that we have in our reply here, Your Honors.

[00:26:10] Speaker 02:
It talks about adjusting, setting roof planes, roof pitches.

[00:26:13] Speaker 02:
None of these patents talk about pitches.

[00:26:16] Speaker 04:
It's your brief, but I thought some of that was marked confidential.

[00:26:19] Speaker 04:
Am I wrong about that?

[00:26:20] Speaker 04:
I just want you to be cautious.

[00:26:21] Speaker 02:
OK.

[00:26:21] Speaker 02:
I will stop there.

[00:26:23] Speaker 02:
So thank you, Your Honors, unless there's any further questions.

[00:26:27] Speaker 04:
Thank you.

[00:26:27] Speaker 04:
We thank both parties and the case is submitted.