[00:00:09] Speaker 01: We have five cases on the calendar this morning, four patent cases, three from the PTAB and one from a district court, and an employee case from the MSPB that is submitted on the briefs and will not be argued. [00:00:26] Speaker 01: First case is Chamberlain Group versus One World Technologies, 2019, 13-14, and 13-15, Ms. [00:00:37] Speaker 01: Vidal. [00:00:43] Speaker 03: Thank you, Your Honor. [00:00:46] Speaker 03: May it please the court, the final written decision in IPR 2017-1132 and 2017-1137 was fundamentally in error. [00:01:01] Speaker 03: The red read at page 29 admits the only issue before this court when it comes to the one network, one device claim limitation, [00:01:11] Speaker 03: is express anticipation, not inherency. [00:01:14] Speaker 03: The board's decision in both of those petitions applied the wrong test. [00:01:22] Speaker 03: The board applied Henry Baxter, Daco, and Eli Lilly, all standing for the proposition that the dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior references teaching [00:01:41] Speaker 03: that every claim element was disclosed in that single reference. [00:01:45] Speaker 03: That particular test is not a test for express anticipation. [00:01:50] Speaker 03: That is a test for inherency. [00:01:55] Speaker 03: Since the board applied the wrong test, that is grounds alone for reversal of the board's decision. [00:02:02] Speaker 03: But even under the proper test, there was not substantial evidence that that element existed or was taught by Menard. [00:02:11] Speaker 01: What's the key claim limitation here? [00:02:15] Speaker 01: Responding to requests? [00:02:18] Speaker 01: And isn't that in Menard? [00:02:23] Speaker 03: So the key claim limitation is that the request for a status update and the response have to be transmitted on the same network. [00:02:32] Speaker 03: That's in every single one of the claims. [00:02:34] Speaker 03: With regard to claim 12 and that claim set, there is an additional claim limitation that relates to it being transmitted and received by the same device. [00:02:43] Speaker 03: So that's the only real dispute with regard to all of the claims. [00:02:49] Speaker 03: And with regard to that, if you look at the record as a whole, at most you could say that the record is ambiguous. [00:02:56] Speaker 03: That said, if you focus on the extrinsic evidence, the extrinsic evidence suggests [00:03:02] Speaker 03: that there's not one network on which those transmissions are made. [00:03:06] Speaker 03: And in fact, to show that there's one network, one world's position is that the pager and the pager network, the two-way pager network disclosed in paragraph 50 of Menard discloses this concept of one network, and it does not. [00:03:23] Speaker 03: If you actually turn to paragraph 50, [00:03:32] Speaker 03: The language that One World Technology is relying on is a language at the very bottom of the paragraph that says, the outbound signal, e.g. [00:03:42] Speaker 03: indicating the door position, may be transmitted to the pager on a predetermined schedule or upon inquiry, and that's the key language, or upon a change of position of the door or actuator at any time. [00:03:57] Speaker 03: One World Technology is taking the position that [00:04:01] Speaker 03: the upon inquiry is met by the pager network, that it's only the pager that's going to make that inquiry. [00:04:08] Speaker 03: And that is not consistent with figure eight of the patent. [00:04:15] Speaker 03: If you turn to figure eight, figure eight shows the process [00:04:29] Speaker 03: by which the garage door opener communicates with the user. [00:04:33] Speaker 03: And if you look at Figure 8, the process that's being disclosed is a process that is fundamentally different than the process taught in the 977 patent. [00:04:43] Speaker 03: The 977 patent teaches a process relating to status updates and a user being able to initiate a session in order to get the status of the garage door opener. [00:04:56] Speaker 03: Figure 8 discloses something much different. [00:04:58] Speaker 03: It actually discloses more of a notification or alert system. [00:05:04] Speaker 03: So if you look at Figure 8, it starts with Block 360 where the very first step is establishing a communication channel. [00:05:13] Speaker 03: And if you look at all the rest of the steps, these are the steps that are employed once the communication channel is established. [00:05:22] Speaker 03: So if you step through it, the very first communication between the garage door opener and the pager would be to notify the pager of the door position. [00:05:31] Speaker 01: It's funny. [00:05:32] Speaker 01: I don't have a figure eight. [00:05:35] Speaker 03: The figure eight in Menard is at? [00:05:37] Speaker 01: Oh, in Menard. [00:05:38] Speaker 01: I thought you were talking about your passage. [00:05:39] Speaker 03: Oh, no. [00:05:40] Speaker 03: I'm talking about Menard and what Menard discloses. [00:05:42] Speaker 03: So if you look at figure eight, [00:05:52] Speaker 03: The very first communication between the pager and the garage door opener is a signal that is sent from the garage door opener to the pager notifying the pager of the door position. [00:06:06] Speaker 03: But both parties agree that as a predicate to everything that's happening in Figure 8, you must first determine the status of the garage door. [00:06:14] Speaker 03: You must have a status to actually transmit. [00:06:16] Speaker 03: So that must occur outside of this figure and must occur before step 360 where the communication channel is established between the pager and the garage door opener. [00:06:30] Speaker 03: So for that reason alone, the intrinsic record suggests that the pager cannot be sending the status signal or sending the status request and then receiving the status signal on a single network. [00:06:50] Speaker 03: Even if inherency were before the court, which it is not, the board got the test wrong even as to inherency. [00:06:59] Speaker 03: And in fact, the board's opinion suggests that there's a bigger issue brewing, that there's some confusion as to the legal framework for anticipation. [00:07:09] Speaker 03: First of all, the board applied this inference test. [00:07:13] Speaker 03: from Enri Baxter in the context of expressed anticipation and not inherent anticipation, suggesting there may be some confusion there. [00:07:22] Speaker 03: But with regard to inherency itself, if the inference test is not bounded by the necessary disclosure test, then the test that was applied was improper. [00:07:35] Speaker 03: And so there's some confusion there, because if you were to look at the board's decisions, the board decision [00:07:42] Speaker 03: only relies on part of the test and suggests that if there's just an inference to one of skill in the art that the element is there, that is sufficient for inherency. [00:07:52] Speaker 03: And it is not under this court's jurisprudence. [00:08:00] Speaker 03: What the court actually did, in view of the fact that it was applying the wrong tests, is engaged in gap-filling based on conclusory expert testimony. [00:08:09] Speaker 03: It used the 977 patent as a roadmap to recombine the elements of Menard to try and meet the claim elements of the 977 patent. [00:08:22] Speaker 03: Obviousness is not before this court, so it was not before the board, so it was improper for them to do that. [00:08:30] Speaker 03: It's also not before this court. [00:08:31] Speaker 03: It would be improper under SAS for that to be a ground for the court to consider. [00:08:36] Speaker 03: And it's a ground that one world technology has waived. [00:08:53] Speaker 03: The only other issue before this court is whether the TCPIP network interface limitation in claim nine, whether that was present in Menard and whether the board's decision on that was correct. [00:09:08] Speaker 03: The board's decision suffers from some of the same issues as with regard to the initial claim element. [00:09:14] Speaker 03: First of all, although the board did make it express that it was applying the Inherency Standard, it only applied this inference test. [00:09:22] Speaker 03: It didn't actually determine whether the element was necessarily present. [00:09:27] Speaker 03: So on that ground alone, that finding should be reversed. [00:09:32] Speaker 03: Beyond that, there was no substantial evidence in the record to support the board's decision. [00:09:42] Speaker 03: Lastly, I want to address very briefly [00:09:44] Speaker 03: the red brief and a few of the issues that I noted in the red brief. [00:09:48] Speaker 03: First, One World Technology actually repeats the board's misstatements of law and relies on the same inference tests that I've been referring to. [00:09:57] Speaker 03: They also misrepresent the record. [00:10:00] Speaker 03: At red brief 28 to 29, [00:10:03] Speaker 03: They truncate Dr. Davis's testimony. [00:10:06] Speaker 03: He was one of CGI's expert in order to make their point. [00:10:10] Speaker 03: They also truncate Chamberlain's counsel's arguments in order to make their points. [00:10:15] Speaker 03: We've addressed all of that at Gray brief 6 to 9 and page 14. [00:10:19] Speaker 03: They also invite this court to ignore black letter administrative law and make factual findings in the first instance. [00:10:29] Speaker 03: If there are no questions, I'll reserve my time. [00:10:32] Speaker 01: We will save it for you, Ms. [00:10:33] Speaker 01: Vidal and Mr. Peterson. [00:10:50] Speaker 02: Thank you. [00:10:51] Speaker 02: May it please the court. [00:10:53] Speaker 02: Your Honor, in a thorough and well-reasoned opinion, the board considered and projected the arguments raised by Chamberlain, choosing instead to credit the testimony of one world's expert. [00:11:03] Speaker 02: Substantial evidence supports the board's findings, and its decision should be affirmed. [00:11:09] Speaker 02: Obviously there's a clear disagreement between my friend and myself over the standard for anticipation and as we understand the standard for express anticipation, anticipation is a question viewed from the perspective of one of skill in the art and the question for express anticipation is whether one skilled in the art would reasonably understand or infer that every claim element is disclosed. [00:11:32] Speaker 02: My friend quarrels with that standard. [00:11:34] Speaker 02: I'll note she did not cite any case for you that suggested that there was a different test for express anticipation. [00:11:41] Speaker 02: Didn't cite any case that said it is improper to consider anticipation from the perspective of one of skill in the arts. [00:11:49] Speaker 02: And that's precisely what the board did here. [00:11:51] Speaker 02: The board looked at the disclosure of Menard. [00:11:53] Speaker 02: including paragraph 15. [00:11:54] Speaker 01: Well, a claim limitation does have to be in the prior art. [00:11:59] Speaker 02: Absolutely, Your Honor. [00:12:00] Speaker 02: It certainly does need to be disclosed in the prior art, but we ask, look at that prior art from the perspective of one of ordinary skill in the art, as we look at virtually everything in patent law. [00:12:11] Speaker 02: And so when we look at this earlier [00:12:13] Speaker 02: When we look at the Menard reference, we don't simply look, I believe my friend is suggesting a four corners rule, that it has to be apparent to a lay person on the face of the reference in order for there to be express anticipation. [00:12:26] Speaker 02: And there's no authority that supports that. [00:12:29] Speaker 02: Express anticipation and the prior art is viewed from the perspective of one of ordinary skill in the art. [00:12:35] Speaker 02: Here the board looking at paragraph 50 credited the testimony of one world's expert that the reference to the inquiry in the third sentence of paragraph 50 was referring to an inquiry sent from the two-way pager that Menard was referencing in the previous sentence and that grammatical rule that the pager is [00:12:54] Speaker 02: is referring to the same pager referenced in the previous sentence, is the very same rule that the board applied in concluding that the inquiry needs to be sent and responded to over the same network. [00:13:05] Speaker 02: So it's hardly surprising that the board would apply that same principle here. [00:13:09] Speaker 02: And the question, of course, is in context, what is that inquiry referring to? [00:13:14] Speaker 02: Obviously one of skill in the art is fully aware that a two-way pager communicates bi-directionally unlike a one-way pager it both sends and receives messages over the two-way pager network and the board not only looked at this in paragraph 50 But noted that this understanding of Menard was consistent with the broader purpose of an art and I'll point you to appendix page 32 where the board [00:13:38] Speaker 02: credited and relied on Menard's explanation of its purpose. [00:13:41] Speaker 02: Menard said that one of the problems it was trying to solve was the very same problem that the 977 patent was trying to solve, that garage door openers lack any feedback to indicate the position of the door to the user. [00:13:54] Speaker 02: And Menard specifically notes the problems of users that have driven out of view and need feedback on the position of the door. [00:14:02] Speaker 02: Board said, if we understand that this inquiry comes from the two-way pager that the user uses to communicate, then the user receives feedback on that door position and Menard solves the problem. [00:14:15] Speaker 02: That's communication back and forth over the two-way pager network. [00:14:19] Speaker 02: But the board's analysis of Menard wasn't limited to paragraph 50. [00:14:25] Speaker 02: If you look on appendix page 28, you'll see the board quotes Menard [00:14:31] Speaker 02: Noting, Menard makes clear that its system allows remote control and management of single or multiple door openers using a wired or wireless communications device, including a cellular telephone, a pager, a personal digital assistant, a computer, or other device that communicates using a network. [00:14:50] Speaker 02: And as part of that remote control and management, the board concluded, if you look at the carryover sentence from Appendix Page 32 to Appendix Page 33, [00:15:02] Speaker 02: that one of skill in the art, an ordinarily skilled artisan, would have understood that requesting and receiving the door position status are basic steps for operating the door remotely. [00:15:15] Speaker 02: I don't understand my friend's argument with respect to figure eight. [00:15:20] Speaker 02: The board considered this. [00:15:22] Speaker 02: You'll see its analysis on appendix pages 29 to 33 and concluded that nothing in figure eight was inconsistent with the pager sending the inquiry. [00:15:32] Speaker 02: both experts testified about this I'm looking at the testimony of Chamberlain's expert on appendix page 943 to 944 of [00:15:43] Speaker 02: where he explains that none of the three conditions in paragraph 50 are described with respect to figure eight, but all of those three triggers for the inquiry and the transmission of the status position, quote, would result in this flowchart being exercised. [00:15:59] Speaker 02: The board relied on that testimony in finding that Menard disclosed the transmission and receipt of a status request over the same network. [00:16:09] Speaker 02: Unless the panel has questions, I'd like to turn briefly to claim nine. [00:16:14] Speaker 02: And that's the generating a web page accessible from the internet, inherently disclosing TCP IP communications. [00:16:23] Speaker 02: The board credited the testimony of one world's expert on this point. [00:16:30] Speaker 02: Specifically testimony, you'll see this on appendix page 112, that data that can be accessed using an internet browser is sent over TCP IP. [00:16:42] Speaker 02: And similarly, on appendix page 114, the board credited the testimony of Mr. Lipov that there were no internet web servers in use at the time of the invention, or at the time of NARD, that did not support and use TCP. [00:16:58] Speaker 02: Menard expressly teaches not just the internet as a whole, but generating web pages accessible from the internet, or a WAP server that generates data that can be accessed using an internet browser. [00:17:10] Speaker 02: Our expert testified that generating data, accessing data using an internet browser, and generating web pages requires use of the TCPIP interface. [00:17:19] Speaker 02: The board credited that, and we believe substantial evidence supports that finding. [00:17:26] Speaker 02: Unless the panel has questions, I'm happy to yield the remainder of my time. [00:17:30] Speaker 01: Thank you, counsel. [00:17:31] Speaker 01: We will receive it. [00:17:35] Speaker 01: Ms. [00:17:35] Speaker 01: Vidal has some rebuttal time. [00:17:39] Speaker 03: Thank you, Your Honor. [00:17:41] Speaker 03: ENRI BAXTER stands for the proposition that expert testimony under anticipation can be used to explain a reference but not expand the reference. [00:17:51] Speaker 03: And that's what One World Technology is trying to do here. [00:17:54] Speaker 03: They're using conclusory expert testimony to try and expand the reference and gap fill in this limitation that the request for a status and the response is transmitted over the same network. [00:18:06] Speaker 03: There is no express disclosure of that anywhere within Menard. [00:18:12] Speaker 03: And in fact, if you look at the intrinsic record, the only two-way communication disclosed [00:18:19] Speaker 03: with regard to the pager is in paragraph 50 of Menard, and that discloses only two steps. [00:18:26] Speaker 03: First, on one channel, the pager will receive the status. [00:18:31] Speaker 03: So it will receive, for example, whether the garage door is open or closed. [00:18:35] Speaker 03: And then on the other channel, it can submit a command to close or open the door. [00:18:39] Speaker 03: If you turn to Figure 8 of Menard, it shows those two steps as 370 and 380. [00:18:48] Speaker 03: First, the user is notified of the door position and then can submit on the other channel a request for the garage door to be closed or open or to change status. [00:19:02] Speaker 03: And the reason I think Figure 8 is so dispositive of this is that both parties agree that the last sentence in Figure 50 talking about the status inquiry, that that has to occur before you go through the steps of Figure 8. [00:19:20] Speaker 03: If you look at petitioners' reply to the patent owner's response, [00:19:25] Speaker 03: It says, and this is at Appendix 674, Figure 8, however, is limited to the later operations of receiving door position information and controlling the door from a remote location. [00:19:40] Speaker 03: A person of ordinary skill in the art would have understood that the status inquiry necessarily occurs before determining and transmitting the door status [00:19:54] Speaker 03: over the network. [00:19:55] Speaker 03: So the parties agree that that precondition of having an inquiry as to the status has to occur before the steps in Figure 8. [00:20:05] Speaker 03: And if you look at step 360, that is when the pager is actually first connected to the garage door opener. [00:20:12] Speaker 03: So the pager cannot be requesting status updates when it's not even connected. [00:20:18] Speaker 03: So the intrinsic record itself suggests that the pager cannot be sending requests and receiving responses over the same network. [00:20:30] Speaker 03: And at most, the issue is ambiguous as to whether the prior art teaches it, and that's not sufficient under this court's jurisprudence. [00:20:39] Speaker 01: Thank you, Your Honor. [00:20:41] Speaker 01: Thank you, Ms. [00:20:41] Speaker 01: Vidal. [00:20:42] Speaker 01: The case is submitted.