[00:00:45] Speaker 02: May I proceed? [00:00:47] Speaker 02: You may. [00:00:49] Speaker 02: You're reserving three, right? [00:00:51] Speaker 02: That's correct, Your Honor. [00:00:53] Speaker 02: May it please the Court, my name is Jim Dowd, and together with Russell Spivak, I represent the appellant Apple. [00:00:58] Speaker 02: I plan to focus on three questions with my time. [00:01:01] Speaker 02: First, I'd like to start by explaining how straightforward the combination, the modification, and question is here, and why the board's decision on the motivation to make that modification was error. [00:01:13] Speaker 02: to focus on the reasonable expectation of success in light of the very simple modification and how the board erred as legal matter in its application of that standard. [00:01:23] Speaker 02: And finally, to address how the Frye reference anticipates claims one and three and how the board's analysis of the close to one limitation was error. [00:01:32] Speaker 01: In the blue brief at 37. [00:01:35] Speaker 01: You say that PTAP found facts that demonstrate that if Solr and Fry are directed to similar types of error correcting codes, [00:01:48] Speaker 01: And in the red brief at 28, Caltech says that PTAB didn't do that. [00:01:55] Speaker 01: What does similar types mean by your definition? [00:01:58] Speaker 02: Yes, Your Honor. [00:01:59] Speaker 02: So they're similar in a number of fundamental ways. [00:02:03] Speaker 02: And the first is they are both related to a specific type of error correction code called a turbo-like code. [00:02:10] Speaker 02: That type of code has a specific structure that is the same in both FRY and DIVSILAR. [00:02:17] Speaker 02: It's a repeater. [00:02:18] Speaker 02: followed by something called an interleaver that changes the order of bits, followed by a second coder, which is a convolutional coder in both cases. [00:02:28] Speaker 02: And so I believe the findings are at A19 and [00:02:33] Speaker 02: 23 or 4 right around there. [00:02:37] Speaker 02: With respect to DivSilar, what the board found was that it describes these turbo-like codes that have this structure of a repeater followed by an accumulator separated by an interleaver. [00:02:50] Speaker 02: And then what the board found, I believe it's either a 23 or 4, was that what Fry teaches is to modify that specific type of code, a turbo code, by making the repeater irregular. [00:03:03] Speaker 02: It's that one modification that we say produces everything in the claim. [00:03:08] Speaker 02: And we can see that because DivSolar, for example, DivSolar's figure three, which is at, I believe, A81050, shows exactly the same structure as the patent, 710 patent claim, sorry, figure two, that embodiment. [00:03:24] Speaker 02: It's a repeater followed by an interleaver followed by an accumulator. [00:03:29] Speaker 02: If you make the single modification that Fry teaches, [00:03:32] Speaker 02: to take the repeater and instead of repeating every bit, for example, five times, I'm going to repeat half the bits three and the other half seven. [00:03:40] Speaker 02: That single modification, which is simple, [00:03:44] Speaker 02: yields exactly what's shown in the figure two embodiment and what is claimed in the claims of the 710 pad. [00:03:50] Speaker 00: Why aren't the reasons at page A27 of the appendix, which is the board's opinion, if there's a paragraph or two there where the board provides its reasons for why it would not have been obvious to make that modification, why aren't those reasons supported by substantial evidence? [00:04:08] Speaker 00: They don't need a whole bunch of reasons, but if there's at least one reason that is supported by substantial evidence, don't you lose? [00:04:17] Speaker 02: There are at least two or three reasons why, Your Honor. [00:04:20] Speaker 02: And the reasons really come down to the line of decisions that [00:04:26] Speaker 02: It starts with an evasive, which is cited in our brief. [00:04:29] Speaker 00: Yeah, but OK. [00:04:30] Speaker 00: So look at page A27. [00:04:32] Speaker 00: I'm familiar with it. [00:04:33] Speaker 00: And in particular, it's the second full paragraph. [00:04:35] Speaker 00: And maybe right in light of the paragraph above that, I don't walk away from this opinion not understanding the discernible path that the board was presenting. [00:04:48] Speaker 00: And so explain to me, I mean, under an evasive, it's only if you can't figure out a discernible path that there's an evasive problem, right? [00:04:54] Speaker 00: And then secondly, [00:04:56] Speaker 00: The question is whether there's substantial evidence to support these findings. [00:05:00] Speaker 02: Well, I think it falls within evasive. [00:05:03] Speaker 02: And it's actually quite close to the, I believe it's the Microsoft versus parallel networks case, which we cite as well, where you have expert testimony in the record from Drs. [00:05:12] Speaker 02: Fry and Drs. [00:05:13] Speaker 02: Davis, in our case, that lays out exactly the factors that we say give the motivation. [00:05:20] Speaker 02: One of which, for example, is this email. [00:05:23] Speaker 02: that is quite extraordinary, because it is an email from the author of one of the references, the Frey reference. [00:05:29] Speaker 00: You're not answering my question. [00:05:31] Speaker 00: My question is, why aren't the reasons provided here good enough? [00:05:36] Speaker 00: Why aren't they supported by substantial evidence? [00:05:40] Speaker 00: The patent owner argues that Frey acknowledges that finding good profile regularity is not trivial. [00:05:45] Speaker 00: We agree. [00:05:45] Speaker 00: OK. [00:05:46] Speaker 00: Why isn't that supported by substantial evidence? [00:05:48] Speaker 02: Well, two reasons for that, Your Honor. [00:05:50] Speaker 02: First is, it just says, [00:05:52] Speaker 02: The patent owner argues, we agree. [00:05:54] Speaker 02: It doesn't explain why it rejects the four or five reasons that Apple had put forward for the motivation to combine. [00:06:01] Speaker 00: For why regularity is not trivial. [00:06:04] Speaker 00: That's the one sentence that's provided there. [00:06:07] Speaker 00: There's a dispute about whether finding a good profile for regularity is trivial or not trivial. [00:06:15] Speaker 00: And as I understand it, Frey has maybe 32 different combinations, and only one of them would work here. [00:06:20] Speaker 00: Is that right? [00:06:21] Speaker 02: Well, that actually was not a finding below. [00:06:23] Speaker 02: So that is not correct. [00:06:24] Speaker 02: There's no finding of fact that anything in Frey wouldn't work. [00:06:28] Speaker 02: What Frey actually teaches repeatedly, over and over and over again, is that this is a small change to use Frey's words, a trivial change to use Frey's words, that results in improved performance. [00:06:41] Speaker 02: And there's no statement in Frey. [00:06:44] Speaker 00: And you're saying the next thing, patent owner argues that raised profiles yielded only one functional result. [00:06:50] Speaker 00: Furthermore, petitioner fails to explain how an ordinary skilled artisan would have incorporated FIS or regular repetition into the DSLR. [00:06:59] Speaker 02: And so, Your Honor, there are really, I think, analytically a couple of different points here. [00:07:05] Speaker 02: The first is that [00:07:07] Speaker 02: With respect to the requirement to provide a good profile, which the board imposed on us, there is no such requirement for a motivation to combine. [00:07:16] Speaker 02: And specifically, this I think relates to the reasonable expectation of success as well. [00:07:22] Speaker 02: The reasonable expectation of success only requires an expectation of succeeding in proving what was claimed would have been obvious. [00:07:30] Speaker 02: And there is no profile claimed in any of these claims, good or otherwise. [00:07:34] Speaker 00: That goes a little bit more to your reasonable expectation of success argument. [00:07:39] Speaker 02: It does. [00:07:39] Speaker 02: But it also, I think, goes to the motive as well. [00:07:42] Speaker 02: Because if we read this, all the board is saying is patent owner argues, we agree. [00:07:50] Speaker 02: And then it doesn't actually make a finding as to the next two sentences. [00:07:54] Speaker 00: Actually, I think the last sentence for sure is a finding, right? [00:07:57] Speaker 00: The dictionary fails to explain. [00:07:59] Speaker 00: how an ordinarily skilled arsonist would have incorporated frags or regular repetition into deep salar. [00:08:05] Speaker 00: How is that not a finding? [00:08:06] Speaker 02: On that one, actually, that is explained. [00:08:09] Speaker 02: That actually is not supported by substantial evidence because in the petition, specifically in the petition at starting at, I believe it's A753 and it goes over through [00:08:25] Speaker 02: to 756, there is an example given there of if you started from repeat three, which is what Divselar, one of the examples of Divselar, and you modified that in light of Fry's teaching to have some bits repeated twice and others four times, that would give you everything that's claimed. [00:08:44] Speaker 02: That is a specific example in the petition that is supported by Dr. Davis's declaration. [00:08:52] Speaker 02: What were you just reading from? [00:08:54] Speaker 02: This is on pages 7053 through 7054. [00:09:01] Speaker 02: That's in the petition itself. [00:09:03] Speaker 02: That's supported by Dr. Davis' declaration. [00:09:05] Speaker 02: And then it's also supported by Dr. Frye's declaration and the simulations that he performed, where he, again, this is something the board discounted. [00:09:15] Speaker 02: It did not give it any weight. [00:09:17] Speaker 02: Incorrectly, we would propose. [00:09:20] Speaker 02: Dr. Frye gives the example of starting from [00:09:24] Speaker 02: in encoding, using a simulator, exactly what Divselar teaches. [00:09:30] Speaker 02: And he confirmed that it was exactly what Divselar teaches by reproducing the exact results that Fry got in one of Fry's figures. [00:09:39] Speaker 02: So he starts exactly from, sorry, in Divselar's figures. [00:09:42] Speaker 02: So he started from exactly what Divselar teaches, and he said, okay, I'm gonna take the teaching of Fry, which was to make some bits repeated a different number of times than others, [00:09:53] Speaker 02: So he started where everything's repeated five times. [00:09:57] Speaker 02: And he said, OK, I'm going to change that based on Fry's teaching alone. [00:10:01] Speaker 02: And that's all I'm looking at. [00:10:02] Speaker 02: And I'm going to make it some repeated three, others repeated seven. [00:10:08] Speaker 02: And that with one change, which took him, he said, 30 minutes to do, yielded exactly what's claimed. [00:10:14] Speaker 02: It also yielded the improved performance that the board was requiring us to show, even though that wasn't required, because the claims don't require any improved performance. [00:10:24] Speaker 02: So it's a simple modification. [00:10:28] Speaker 02: Getting back to your honor's question, we think it is exactly within the Invasive case, the Parallel case, the Microsoft versus Parallel networks, the Emerson case, because the board first did not actually address, for example, the 1999 email between the authors of these two references suggesting this combination when it was deciding whether or not there's a motivation here. [00:10:54] Speaker 02: It was, we would say, very clearly in error to say in the footnote where it says this. [00:10:59] Speaker 00: And that would be, you would argue, an abuse of discretion on failure to consider that evidence. [00:11:04] Speaker 02: I believe so, Your Honor. [00:11:06] Speaker 02: But it's also just simply wrong, because there were multiple declarations from Dr. Fry corroborating the email itself. [00:11:13] Speaker 00: Is this also where the board disregarded the simulation, or is that any other IP? [00:11:19] Speaker 02: That is a separate argument, but it applies as well. [00:11:25] Speaker 02: So in the first instance, with respect to the 1999 email, that's an email from Dr. Frey to Dr. Divselar that says we should combine our references, in effect. [00:11:38] Speaker 00: It says- It doesn't say combine our references. [00:11:41] Speaker 03: What it does is it says- I like your work. [00:11:44] Speaker 03: Maybe we should try to continue it. [00:11:46] Speaker 03: It says, have you read my- [00:11:48] Speaker 02: pretty wide range of work, right? [00:11:50] Speaker 02: It says, have you read my paper? [00:11:52] Speaker 02: We should apply my paper's teaching to the work that you and your co-author on the Dibsler reference have been doing. [00:12:01] Speaker 02: And in Dr. Frye's declaration explaining that, he actually explains the two conferences where these were presented. [00:12:07] Speaker 02: One was in 1998 at a conference called Allerton, where he attended and Dr. Bob McLeese, who's the co-author on Dibsler, presented the Dibsler paper. [00:12:16] Speaker 02: And then he also explains that [00:12:18] Speaker 02: He presented it, the 1999 version of the same conference, and that Dr. McLeese attended his presentation of that Frye paper. [00:12:26] Speaker 02: And so you see that these two things are pointing to each other and that there is a motivation to combine based on that email. [00:12:34] Speaker 02: And we would suggest that's pretty extraordinary evidence for the board to just not consider at all when the basis for not considering it is the mistaken belief that there was no testimony from Frye to corroborate the authenticity of the email. [00:12:48] Speaker 02: when in fact there were two declarations that did exactly that. [00:12:52] Speaker 02: And what we have here at the end then on the motivation is there were multiple reasons why there was a motivation, including both references are from the same field, both references describe turbo codes, both have the same structure. [00:13:07] Speaker 02: Frey teaches in figure one, specifically making the modification that we propose would be obvious, which is to take a regular repetition and make it irregular. [00:13:18] Speaker 02: Frey teaches that doing so will result in performance. [00:13:22] Speaker 02: This is also key. [00:13:24] Speaker 02: Performance that is as good as the Richardson Urbanki 1999 paper, that was the best performing code in the world at that time. [00:13:35] Speaker 02: And what Fry is saying is that if you make this what he calls tweak or small change. [00:13:41] Speaker 00: Can I ask you something about that email? [00:13:43] Speaker 00: Is it true that in the 219 IPR that the Fry-Diffseler email was actually considered and it was found not to be persuasive? [00:13:53] Speaker 02: I would say two things on that, Your Honor. [00:13:55] Speaker 02: So first is the 219 was about the combination of [00:13:59] Speaker 02: Dibsilar with a different reference called Luby. [00:14:01] Speaker 00: It was with Luby, but it also relied on Frey as motivation to combine Dibsilar with Luby. [00:14:06] Speaker 00: So Frey was in the mix, right? [00:14:08] Speaker 02: But it's a different combination of different references, and so we would say it doesn't squarely apply. [00:14:13] Speaker 02: And then the second is, in the passage I believe Your Honor is pointing to, what the board I believe said was, [00:14:20] Speaker 02: It doesn't teach a specific implementation of irregularity. [00:14:25] Speaker 02: So it didn't have a specific irregular profile. [00:14:29] Speaker 02: That is similar. [00:14:30] Speaker 02: We think that's the same error as requiring a good profile or improved performance, because it doesn't actually, none of the claims require a specific irregular. [00:14:41] Speaker 02: Actually, the wording is, and this is A56, a particular irregular code. [00:14:47] Speaker 02: These claims don't require a particular irregular code. [00:14:50] Speaker 02: They just require irregularity, which is what would have been obvious based on Frye. [00:14:56] Speaker 02: And with that, unless there are other questions, I do want to reserve a bit of time. [00:15:02] Speaker 01: You got it? [00:15:03] Speaker 02: Thank you. [00:15:06] Speaker 01: We ate up a little bit of yours. [00:15:08] Speaker 01: I'll give you two minutes on response. [00:15:09] Speaker 01: Thank you, Your Honor. [00:15:20] Speaker 04: Thank you, and may it please the court. [00:15:23] Speaker 04: If I may, absent immediate questions, I'd like to turn to the issue of reviewability that was brought up. [00:15:31] Speaker 04: And as Your Honor pointed out, there [00:15:38] Speaker 04: The key analysis here is whether the board's path can be discerned here. [00:15:42] Speaker 04: And it clearly can. [00:15:43] Speaker 04: And that's laid out in the board's decisions. [00:15:46] Speaker 04: And it's important to note what was offered as the stated motivation. [00:15:50] Speaker 00: Can I push back on that a little bit, what you said? [00:15:53] Speaker 00: I mean, what about, I mean, a lot of this discussion is petitioner argues this, patent owner argues that. [00:16:00] Speaker 00: And even in the paragraph that I cited to, which I think is probably the best place for where the board actually makes its own findings, there's a sentence in the middle of it where, in order to support their finding, they say, indeed, patent owner argues. [00:16:13] Speaker 00: They're not even adopting the patent owner's argument. [00:16:15] Speaker 00: Or maybe they are. [00:16:16] Speaker 00: I can't tell. [00:16:17] Speaker 00: So how do you respond to that? [00:16:19] Speaker 00: Again, that's on page A27. [00:16:20] Speaker 00: And this is with respect to the first IPR, the 210. [00:16:25] Speaker 04: Sure. [00:16:26] Speaker 04: I think there are several areas. [00:16:28] Speaker 04: They do do a lot of that. [00:16:29] Speaker 04: They identify the arguments and state which ones they find persuasive. [00:16:32] Speaker 04: There are other areas that I think are a little bit more clear as findings of fact. [00:16:37] Speaker 04: But what is clear, and this is stated at 826 and 827, is that the argument that was being advanced by Apple was that this notion that modifying DIVSLR would have been a trivial thing to do, and it would have resulted in improved performance. [00:16:53] Speaker 04: This is stated [00:16:54] Speaker 04: On A26, there the board is representing what petitioner argued right in the middle of the page there. [00:17:00] Speaker 04: They're saying petitioner argues that Fry's teaching of better performance and then goes on to represent their argument about it being a trivial modification. [00:17:13] Speaker 04: We point this out in the red brief that the petition materials are littered with this type of commentary, that it was improved performance in a simple trivial modification. [00:17:24] Speaker 04: integral to their argument. [00:17:26] Speaker 04: So the board's identifying what their argument was, identifying their response of argument, saying they agree with it, and going through and highlighting some things. [00:17:35] Speaker 04: And one of the things that they highlight is the Frey reference itself as supporting patent owner's argument and Dr. Mitz and Macher's testimony that this was not a trivial modification. [00:17:47] Speaker 00: So that's the only thing where they say, they say patent owner argues, Fry acknowledges that finding a good profile for regularity is not trivial. [00:17:55] Speaker 00: We agree. [00:17:56] Speaker 00: It's the only thing they say they agree with. [00:17:59] Speaker 04: Well, and there they're citing right to the Fry reference, which above they're identifying, on A27 there, they're identifying patent owner's response, the key argument there, and saying they agree with it, and then going through and highlighting some things. [00:18:13] Speaker 04: One of the things they're highlighting that Your Honor points to [00:18:16] Speaker 04: is the statement in the Frey reference itself, which is describing the modifications using the term not trivial. [00:18:24] Speaker 04: So it was striking that the petitioner, Apple, is arguing, you would have done this because it would have been simple and trivial. [00:18:31] Speaker 04: And they're pointing to a reference that actually states explicitly, this was really hard. [00:18:35] Speaker 04: This was not trivial. [00:18:37] Speaker 04: So it was a key piece of information, given the argument that was advanced. [00:18:41] Speaker 04: There are other aspects, Your Honor, the very next [00:18:45] Speaker 04: paragraph. [00:18:46] Speaker 04: This is something we point out in our briefing, the red brief as well. [00:18:49] Speaker 04: One of the key pieces of evidence that Apple relied on to support this argument notion that this all would have been simple and trivial was they went to this Kandikar thesis. [00:19:00] Speaker 04: Dr. Kandikar is one of the co-inventors. [00:19:03] Speaker 04: They submitted his thesis that came out after the filing date and tried to use that as support for this argument that it would have been very trivial based on figures he was presenting. [00:19:13] Speaker 00: They do have a lot of rationale here for why they didn't find Kandakar persuasive, but that was surely not Apple's only argument. [00:19:21] Speaker 00: That was not Apple's only argument. [00:19:23] Speaker 04: Their primary argument was the trivial modification, and the candy car was key to that. [00:19:27] Speaker 04: The board does go on, I would turn to A28, and this gets to the notion of the improved modification that was being argued. [00:19:36] Speaker 04: There are several instances where the board is saying, we looked at the evidence, and we agree with patent owner that Frye is not teaching improved performance. [00:19:45] Speaker 04: Its testing actually illustrates degraded performance. [00:19:50] Speaker 04: So there's another. [00:19:51] Speaker 00: This is, though, on page 28. [00:19:53] Speaker 00: Now, they've moved on, and they're talking about reasonable expectation of success, right? [00:19:58] Speaker 04: I don't think so, Your Honor. [00:19:59] Speaker 04: I think right there, actually, they [00:20:03] Speaker 04: They do mention reasonable expectation. [00:20:07] Speaker 04: I think they're talking about the two things together. [00:20:10] Speaker 04: I think they're talking about motivation with a reasonable expectation rather than bifurcating that. [00:20:14] Speaker 00: Where do you see them mentioning motivation here? [00:20:19] Speaker 04: Well, here, the first paragraph says vague and unsupported statements regarding the combination and their proposed modification. [00:20:29] Speaker 04: They specifically mention reasonable expectation. [00:20:32] Speaker 04: So I would say there, it's a little bit more specific to reasonable expectation. [00:20:37] Speaker 00: And I would try to... And the next paragraph also talks about failing to establish reasonable expectation. [00:20:43] Speaker 04: It does, Your Honor. [00:20:44] Speaker 04: And then at A30, they sort of loop this all back together and say, this is all part of our analysis under Graham. [00:20:51] Speaker 04: We are tasked with evaluating this in view of the state of the art, ascertaining the scope and content, as we're supposed to do in view of Graham, KSR, and many decisions from this court. [00:21:01] Speaker 03: What in your view is the success that must be reasonably expected? [00:21:10] Speaker 03: And second, what do you think the board's understanding is of a success that must be reasonably expected? [00:21:18] Speaker 04: I would absolutely take issue with this notion [00:21:21] Speaker 04: or the argument that was advanced, that the board was requiring improved performance. [00:21:25] Speaker 04: It absolutely was not. [00:21:28] Speaker 04: What the board was doing, and what I would say is a measure of success, in a case where you have a moving party with a heavy burden of proof, that there must be some argument about it. [00:21:43] Speaker 04: So that was one of the key problems in this case, is there really was very little argument about what the reasonable expectation was to suppose [00:21:51] Speaker 03: At least in one possible understanding, Apple's position is, if you could make the code, that is success. [00:22:01] Speaker 03: And so the only argument on that view that they would need to make is, we could make the code. [00:22:09] Speaker 03: Not we, but the artisan at the priority date could make the code. [00:22:14] Speaker 03: Wouldn't have been a problem. [00:22:15] Speaker 04: And what is that code? [00:22:18] Speaker 04: It can't be used to decode if it doesn't decode anything. [00:22:21] Speaker 03: What is the success that, in your view, must be reasonably expected? [00:22:27] Speaker 04: It has to be able to function as a code. [00:22:30] Speaker 00: What do you mean by function as a code? [00:22:32] Speaker 04: That's a good question. [00:22:34] Speaker 04: Can it properly decode with a sufficient number or a sufficiently less number? [00:22:39] Speaker 04: Yeah, and there is objective measures in the art that are pointed out and just explained by Dr. Mitz and Mocker with supporting evidence about... No flatlining or whatever that's called. [00:22:52] Speaker 04: About sort of what folks in the art viewed as a generally acceptable error threshold, right? [00:23:00] Speaker 04: If the objective is to decode your signal, [00:23:03] Speaker 04: You can tolerate some errors, but there are levels of errors that are intolerable. [00:23:09] Speaker 04: And when you get a code that no matter how high you crank up that signal to noise... [00:23:15] Speaker 03: Are you saying that on the assumption that some functionality as understood within the coding industry is required, which is more than we can just make a code, their proof failed because they didn't have any proof above the threshold of we could make the code? [00:23:37] Speaker 04: I think that's true. [00:23:39] Speaker 04: I would also caveat what I believe the board did was to weigh the evidence about the high degree of complexity and unpredictability in the art and state that that type of state of the art weighs in favor of non-obviousness. [00:23:56] Speaker 04: They also then went on to make findings as to why they were rejecting the argument that was being advanced trying to turn these facts around and say, well, [00:24:05] Speaker 04: OK, but this is a creative argument. [00:24:08] Speaker 04: I'll give Apple credit for this. [00:24:10] Speaker 04: It just doesn't work. [00:24:11] Speaker 04: And that argument was, well, if it's highly unpredictable and lots of experimentation is required, that means experimentation becomes routine, which sort of turns the whole analysis around. [00:24:23] Speaker 04: And I would respectfully submit it doesn't really make sense or comport with the legal requirements. [00:24:30] Speaker 00: Going back to reasonable expectation of success in your view of what's required, [00:24:34] Speaker 00: Do you think your view is consistent with cases like intelligent biosystems that say you're just supposed to have a reasonable expectation of success in meeting the claim limitations, not some standard beyond what's expressed in the claim? [00:24:50] Speaker 04: I agree with that. [00:24:50] Speaker 04: And I would say it's consistent with intelligent biosystems for two reasons. [00:24:54] Speaker 04: One of the other notable aspects of that decision is the emphasis on the responsibility of the moving party to actually state their case and lay it out with some degree of particularity. [00:25:03] Speaker 04: That was a very important part of that case, absent the reasonable expectation. [00:25:08] Speaker 04: So that's a problem here. [00:25:10] Speaker 04: There was no reasonable expectation argument in the petition. [00:25:13] Speaker 04: There was no identification of the state of the art, which everyone later agreed was a highly complicated and highly unpredictable state of the art. [00:25:22] Speaker 00: Did you agree also that your claim doesn't have a measure of success in it, expressly, right? [00:25:28] Speaker 04: Well, to answer your question, I would agree with the Intelligent Biosystems case that a party can't invent a requirement and then tailor expectation to that requirement that's not embedded in the claim. [00:25:45] Speaker 04: I would say that doesn't present here when we're talking about error correction codes, which we ask, what does that mean for something to be an error correction code? [00:25:55] Speaker 04: At a minimum, you'd have to look at [00:25:57] Speaker 04: what the art accepts as a suitable threshold. [00:26:03] Speaker 04: And what we've identified in evidence, what Dr. Mitzmacher explained and what he substantiated with evidence, is there is this general threshold that people recognize. [00:26:13] Speaker 04: And also people recognize that if you tested codes, they ran into these error floors, you discarded them. [00:26:21] Speaker 04: In the previous case, we talked a lot about a Mackay reference. [00:26:24] Speaker 00: Where in your claim am I supposed to see error correction code? [00:26:28] Speaker 00: Excuse me? [00:26:28] Speaker 00: Where in your claim am I supposed to see error correction code? [00:26:33] Speaker 04: Well, it's a method. [00:26:34] Speaker 00: It's a pretty broad claim. [00:26:37] Speaker 04: I believe they're a method of encoding signal. [00:26:41] Speaker 04: Opening the 210. [00:26:43] Speaker 04: A coding system. [00:26:46] Speaker 04: And in the context of [00:26:48] Speaker 04: of the patent. [00:26:50] Speaker 04: This is very much talking about error correction codes. [00:26:54] Speaker 00: So I should read that in from the spec? [00:26:56] Speaker 00: Well, I don't think you need to do that. [00:26:58] Speaker 04: I want to be really clear. [00:26:59] Speaker 04: I think this is a false narrative that the board set this standard of requiring improved performance. [00:27:06] Speaker 04: I would very much push back on that. [00:27:09] Speaker 04: I think what the board did was credit the state of the art at the time and note correctly that a highly unpredictable state of the art [00:27:17] Speaker 04: That tends to weigh in favor of non-obviousness. [00:27:20] Speaker 04: And then they came back and noted, petitioner hasn't given us anything else to push back on that. [00:27:28] Speaker 04: So when we're talking about reasonable expectation, there was no argument about reasonable expectation in the petition materials. [00:27:35] Speaker 04: And the board said, let me point to the specific reference. [00:27:40] Speaker 04: In A31, the board says, in the absence of evidence rooted in the petition, [00:27:45] Speaker 04: that substantiates why you would be doing this thing and expecting a positive outcome, just reliance on the no need for experimentation isn't sufficient to support an obviousness rationale. [00:27:58] Speaker 00: You agree in a lot of electrical type inventions though, this reasonable expectation of success doesn't even come up, right? [00:28:04] Speaker 04: I would agree in the predictable arts it's less important. [00:28:07] Speaker 04: I would also say that there's agreement between the parties, this is not the predictable arts, this is a highly unpredictable field. [00:28:13] Speaker 04: Which is probably why it sort of caught him off guard as petitioners. [00:28:16] Speaker 04: You look at this and you think electrical engineering, this is generally predictable arts. [00:28:21] Speaker 04: But as you get into talking with the experts, including their own expert who testified that it's mathematically impossible to predict these things in advance, we came to understand in the course of a developing trial, this is a very highly unpredictable area. [00:28:35] Speaker 00: So it's not surprising. [00:28:38] Speaker 00: Something I want to make sure you're able to address for me, which is [00:28:41] Speaker 00: In the 219 IPR, where do you think is the best place for me to understand what the board had to say about motivation to combine? [00:28:50] Speaker 00: Because again, much of the discussion is focusing on petitioner argues this, patent owner argues that, and then there's a lot of discussion about reasonable expectation of success. [00:29:01] Speaker 00: But I don't really see a clear path on motivation. [00:29:04] Speaker 00: Can you tell me what you think the best place is for me to look at? [00:29:07] Speaker 04: Yes. [00:29:08] Speaker 04: I would say there are a few things there that add on top of, I think there's the same rationale regarding the trivial modification improved performance as it relates to the fry and the candy car thesis. [00:29:21] Speaker 00: I mean, I think it might be beneficial for you to point out to me, if you can, where that is. [00:29:27] Speaker 04: Sure. [00:29:30] Speaker 04: The Kandikar thesis is at A52, discussion of Frye. [00:29:36] Speaker 00: Not the Kandikar thesis, but the trivial, the finding that this is not trivial, and that therefore, because it's not trivial, the underlying basis for combining Luby with Deep Salar is missing. [00:29:49] Speaker 04: Yeah, so further down on A52, after the dispense with the Kandikar argument, that was, again, [00:29:58] Speaker 04: I know Apple would like to dismiss this, but that was a critical part of their argument. [00:30:04] Speaker 04: But then it goes on to talk about Frye in more detail. [00:30:07] Speaker 04: And it's crediting the argument and evidence that despite the representations that Frye would motivate a person to include these modifications for the purpose of improving performance, [00:30:21] Speaker 04: That's not what the Frye reference reported. [00:30:24] Speaker 00: There was an argument by Apple, and I think that it's acknowledged on page 51, that Apple relied on Luby itself for a suggestion that he would want to [00:30:37] Speaker 00: modify Dave Szilard in view of Luby because Luby says it would be, I don't know what this is, but there are some adjectives suggested. [00:30:46] Speaker 00: So just Luby standalone is a motivation to come back. [00:30:50] Speaker 04: This is an important part and I appreciate you drawing attention to that. [00:30:53] Speaker 04: There are two things about Luby. [00:30:55] Speaker 04: One, their initial petition [00:30:58] Speaker 04: They just flatly misapprehended the reference. [00:31:00] Speaker 04: They pointed to Luby as teaching a regular repetition of information bits. [00:31:04] Speaker 04: And what was explained and developed during trial is that reference doesn't, when it talks about irregularity, it's talking about irregular bipartite graphs, which is an entirely different concept. [00:31:15] Speaker 04: That was explained by Dr. Mitzenmacher, one of the authors. [00:31:19] Speaker 01: That's at 6620. [00:31:22] Speaker 04: Yes. [00:31:22] Speaker 01: In the appendix. [00:31:23] Speaker 04: Yep. [00:31:24] Speaker 04: It's explained throughout in his deposition. [00:31:26] Speaker 04: It's all over the record to the point where Apple really backed away from that. [00:31:30] Speaker 04: And they sort of went to this in Ray Latham type pivot where they're initially relying on reference for teaching something. [00:31:39] Speaker 04: And then they sort of retreat from that and say, well, OK, but he could have taught that. [00:31:43] Speaker 04: And it starts to get in the pivot to this Frye reference in place. [00:31:47] Speaker 04: But that was an important aspect of that case. [00:31:50] Speaker 01: You're going to need to wrap up briefly. [00:31:51] Speaker 04: Yeah, can I just mention one thing really quickly, if I may, Your Honor? [00:31:55] Speaker 04: And that's this idea that the board disregarded the email. [00:31:58] Speaker 04: I would contest that representation. [00:32:01] Speaker 04: I think the body of it, there's a footnote in one of the decisions. [00:32:04] Speaker 01: Basically, they're saying that it lacks competent foundation. [00:32:10] Speaker 04: Yeah, that it wasn't authenticated or proved to be hearsay. [00:32:14] Speaker 04: We would concede for purposes of appeal that it was authenticated. [00:32:16] Speaker 04: It's not hearsay. [00:32:17] Speaker 04: That's a footnote. [00:32:19] Speaker 04: where they say that in the body of the board's decision in both cases. [00:32:23] Speaker 04: The footnote only appears in one case. [00:32:24] Speaker 04: In the body of the footnote, the board does go through and explains. [00:32:27] Speaker 04: It's footnote seven. [00:32:29] Speaker 04: Correct, Your Honor. [00:32:29] Speaker 04: Footnote seven. [00:32:31] Speaker 03: What does the body of the text say about why the email doesn't do what Apple wants it to do on the assumption it has been authenticated? [00:32:41] Speaker 03: Yes. [00:32:42] Speaker 04: So it says two things. [00:32:43] Speaker 04: One, it's addressing this argument that Apple advanced [00:32:46] Speaker 04: that the known need for experimentation would provide a motivation and expectation that you would conduct such experimentation and arrive at a result when the board pushed back and said, essentially, this is at best an invitation to experiment. [00:33:02] Speaker 04: And even a recognized need for experimentation, this is at A30, [00:33:08] Speaker 04: does not establish what that particular experimentation would be or why you would expect it to produce a successful result. [00:33:16] Speaker 04: And then goes through and cites some of the cases that support the notion that unpredictability and the need for experimentation actually is a factor that weighs in favor of non-obviousness. [00:33:25] Speaker 04: And I say that to both. [00:33:26] Speaker 04: Thank you so much, Your Honor. [00:33:35] Speaker 00: Is there a fact finding anywhere in the board's opinion on whether Luby in fact teaches irregular codes as required by the claims? [00:33:47] Speaker 02: I don't believe the board found one way or the other on that. [00:33:50] Speaker 00: Was it disputed? [00:33:51] Speaker 02: Well, the argument that was made based on Luby, specifically in the 210, was that [00:33:58] Speaker 02: there was a distinct trend in this industry which helped supply motivation. [00:34:03] Speaker 02: And I'm looking here at Appendix 7057 that the benefits of adding irregularity to regular codes had been demonstrated by a number of different researchers in the field. [00:34:15] Speaker 03: But it's not disputed any longer that the irregularity that Luby used was not irregularity on the encoding side as to the information [00:34:26] Speaker 02: Well, it is actually, in Luby, it is irregularity in the encoding as well. [00:34:32] Speaker 02: But I believe so, Your Honor. [00:34:34] Speaker 02: But the point is, though. [00:34:36] Speaker 03: As to the information bits, how often, how many times you, how much you have each information bit contribute to the code word? [00:34:45] Speaker 02: Yes, Your Honor, because in Luby, what Luby's talking about is irregularity of the code word, where the code word is comprised of both parity bits [00:34:53] Speaker 02: and systematic bits, which would be information bits in the language of the site. [00:34:56] Speaker 03: I thought Mitz and Mocker explained that the irregularity in Luby was about what was happening on the host input. [00:35:06] Speaker 02: No. [00:35:06] Speaker 02: In Luby 97, there's discussion of irregularity on the encoding side as well. [00:35:12] Speaker 02: And then in Luby 98, there's discussion about why that encoding produces a good result. [00:35:17] Speaker 02: There was, I think, in the language of Luby 98, [00:35:19] Speaker 02: the intuition of the authors about why it produces a good result. [00:35:23] Speaker 02: But the key point that I would want to bring your honors to is that what we have here is a trend. [00:35:29] Speaker 01: I think 6620 is devastating to that argument. [00:35:33] Speaker 01: That's the page, I think, to which Judge Trano was referring. [00:35:39] Speaker 02: And I think just I don't wish to sidestep this, but with limited time, the point that I'm making is that with respect to the combination of Frye with Dibsilar, [00:35:50] Speaker 02: What the Luby references do is to teach people or to demonstrate that there is, in this art, a trend toward adding irregularity. [00:36:00] Speaker 02: And in Luby, it's in an LDPC code, in Luby 97, then Luby 98, and then Richardson or Banke in 99. [00:36:08] Speaker 02: And these are all cited at 7057. [00:36:09] Speaker 02: And then Frye itself, which says, I read Luby, and I applied the irregularity to the repeater. [00:36:18] Speaker 02: And then that repetition, the irregularity of the repetition in fry is what would we say have resulted in the combination with div salar because those two are so closely aligned. [00:36:29] Speaker 02: Are we now back on the 210 proceeding? [00:36:31] Speaker 02: I am, Your Honor, and I would focus on the 210 for this. [00:36:35] Speaker 02: And the point that I'm making is that it's a clear trend in this industry to add irregularity [00:36:43] Speaker 02: leading up to Frye, which does it at the specific point that matters for these claims. [00:36:47] Speaker 02: And it's that Frye disclosure that makes it obvious when combined with Divselar. [00:36:52] Speaker 00: So it's not Luby alone. [00:36:53] Speaker 00: It's Luby as supported by Frye's. [00:36:57] Speaker 00: And that's how you view it? [00:36:59] Speaker 02: I would view the combination as Divselar is the base reference. [00:37:02] Speaker 00: Yeah, got it. [00:37:03] Speaker 02: Frye teaches you to make Divselar's repeater irregular. [00:37:06] Speaker 00: Got it. [00:37:06] Speaker 02: And that's against the backdrop in this industry of years of teams from different places. [00:37:12] Speaker 00: So that's even for the 219 IPR? [00:37:13] Speaker 00: I just want to make sure I understand what your position is. [00:37:17] Speaker 02: That's specifically for the 210 IPR. [00:37:19] Speaker 02: And I'm referring to the petition in the 210 here. [00:37:21] Speaker 02: For the 219, I think the combination is just the generalized teaching of Luby's irregularity would have motivated somebody to introduce irregularity in DivSilar. [00:37:33] Speaker 02: But I would focus, Your Honors, on the combination of Diff's law and fraud. [00:37:36] Speaker 00: What about the argument that you were pivoting in response to the disclosure on page A6620? [00:37:42] Speaker 02: Thank you for that, because I think that goes to this issue about experimentation. [00:37:48] Speaker 02: And we were not pivoting on experimentation at all. [00:37:51] Speaker 02: I think the argument that you just heard, and part of the error with the board below, is on what [00:37:57] Speaker 02: This experimentation really is. [00:37:59] Speaker 02: Our position has been and always was. [00:38:01] Speaker 02: You need to wrap up, counsel. [00:38:02] Speaker 02: You're well over. [00:38:03] Speaker 02: I gave you extra time. [00:38:05] Speaker 02: I'll just finish this answer, and then I will stand down. [00:38:09] Speaker 02: Our position below is and was, and this is in Fry itself, that to achieve the good results that Fry reports, where he shows a coding gain [00:38:24] Speaker 02: that is close to the best known codes in the world, the reference 3 to Richardson, is done based on just a simple tweak or small change. [00:38:35] Speaker 02: And what he then says is, we get those results from the simple change, the small change. [00:38:41] Speaker 02: We could go on and try to optimize to find a good profile. [00:38:47] Speaker 02: And that, the optimization, could get difficult, could get beyond the trivial. [00:38:52] Speaker 02: But by that point, you're beyond the claim. [00:38:54] Speaker 02: because the claim doesn't require me to get all the way to the optimized code, the best performing code, the best version of an irregular profile. [00:39:02] Speaker 02: The claim covers every profile there is with irregularity. [00:39:07] Speaker 02: That was your last sentence. [00:39:09] Speaker 02: I think you have the point. [00:39:10] Speaker 02: Thank you, Your Honor.