[00:00:00] Speaker 00:
Go ahead.

[00:00:03] Speaker 00:
Thank you, honor, and may it please the court.

[00:00:06] Speaker 00:
The test board made two errors in finding evidence of a motivation to combine.

[00:00:10] Speaker 00:
Each is an independent basis to reverse of a case the board's incorrect finding of non-artisan.

[00:00:16] Speaker 00:
First, the board erroneously concluded that the skilled artisan would not combine the court reference with Swanson's disclosure of paired unidirectional fibers as an alternative to bidirectional fiber, even though that alternative was well known in the art.

[00:00:30] Speaker 02:
Council?

[00:00:30] Speaker 02:
Second.

[00:00:31] Speaker 02:
Council, this is Judge Wallach.

[00:00:34] Speaker 02:
On page 21 of the Blue Brief, Sienna asserts without any supporting citation that the use of separate unidirectional fibers for bidirectional communication was a well-known alternative to the use of a single directional fiber like that described in the report.

[00:00:54] Speaker 02:
Or where does Cork provide support for this assertion?

[00:01:01] Speaker 00:
Joanna, you're referring to, on page 21 was a summary of the argument, so we did not place the record citations there, but they would be in the remainder of our blue briefs.

[00:01:10] Speaker 00:
But in response to your specific question, Cork itself describes alternative implementations of a system that use paired unidirectional fibers.

[00:01:19] Speaker 00:
And the best example is figure one, which is on appendix page 1286.

[00:01:24] Speaker 02:
On page 29 of the blue brief,

[00:01:29] Speaker 02:
Sienna cites Fulton and contends that the decision is particularly instructive.

[00:01:36] Speaker 02:
How does Fulton help Sienna establish legal error in the PTAB's factual findings or conclusion of non-obviousness?

[00:01:45] Speaker 00:
Johanna, what Fulton teaches is that, and also this is a teaching that we submit was reaffirmed by this court recently, Emubert Technologies versus X1, is

[00:01:58] Speaker 00:
Fulton teaches that where there is an easily identified alternative that is known in the prior art.

[00:02:06] Speaker 00:
And when the first reference teaches everything but that alternative, there is a motivation, there would be a motivation to combine the first reference with the finite known alternative.

[00:02:18] Speaker 00:
And you want to, in uber technologies, this court really made it clear because there the court

[00:02:23] Speaker 00:
was faced with a priority that revealed two known methods of transmitting location information to a mobile device.

[00:02:30] Speaker 00:
And the court explained that these methods represented the finite number of identified predictable solutions.

[00:02:36] Speaker 00:
And the person with ordinary skill would have faced a simple design choice.

[00:02:41] Speaker 00:
And in that situation, the differences between those solutions, where the novelty of the patent is not related to those differences, as it is not related here,

[00:02:50] Speaker 00:
those differences between the two solutions would be insufficient, would be sufficient, would be not sufficient to reject a finding of motivation to combine.

[00:03:00] Speaker 03:
Mr. Tomofayev, this is Judge Chen.

[00:03:03] Speaker 03:
How would we reconcile cases like Uber with another line of cases like Medi-Chem, Winner, and Henny Penny, which talk about trade-offs?

[00:03:17] Speaker 03:
with respect to different potential choices to make.

[00:03:22] Speaker 03:
And so therefore, if there's some real disadvantages, it can all of a sudden become a fact question as to whether to modify the primary reference to incorporate something from a secondary reference that could be regarded as an alternative, but at the same time, something that's not

[00:03:47] Speaker 03:
desirable or not as desirable for various performance reasons?

[00:03:53] Speaker 00:
Johanna, we're not challenging the line of cases like MEDICAM or like a lie directing, but we think the way that over technology in this case can be reconciled is

[00:04:05] Speaker 00:
In this case, there are two exactly known alternatives.

[00:04:10] Speaker 00:
And even the patent itself treats those types of fibers as interchangeable alternatives.

[00:04:14] Speaker 00:
And we think the reason that the board here made an error is because it insisted that one alternative would be the preferred alternative.

[00:04:22] Speaker 00:
So we admit that the board can weigh the advantages over disadvantages.

[00:04:26] Speaker 00:
But that is not what the board did here.

[00:04:30] Speaker 03:
Let me explain how I understand what the board did.

[00:04:35] Speaker 03:
What the board found was that Cork talks about certain advantages of having a bidirectional fiber.

[00:04:46] Speaker 03:
And the board relied on Dr. Goosen for this, about how you can detect any problems with quality of data transmission on the fiber, as well as it being less expensive to go with a single bidirectional fiber than two unidirectional fibers.

[00:05:04] Speaker 03:
So the board's made these findings as to advantages of keeping cork as is, just using a single bi-directional fiber, rather than borrowing from the secondary reference, I believe it's Swanson, which alternatively talks about the idea of using two fibers.

[00:05:26] Speaker 03:
And so then that goes right into the heart of these cases like Medi-Chem, Winner, Henny Penny, which talks about when

[00:05:36] Speaker 03:
you can delineate between possible alternatives, advantages and disadvantages, and you see that there are disadvantages from dislodging from the primary reference a particular element and replacing it with some secondary reference element, then there can be a fact finding that there isn't a motivation

[00:06:05] Speaker 03:
to go ahead and do that replacement.

[00:06:07] Speaker 03:
And that's what the board did here.

[00:06:09] Speaker 03:
And so therefore, a case like Uber, which as I understand it, there was no argument at all as to whether or not either of the design choices was better or worse than the other possibility.

[00:06:25] Speaker 03:
And so therefore, what you were dealing with in Uber was two true interchangeable equivalents.

[00:06:35] Speaker 03:
Then, therefore, what we've got here is just a simple fact question as to the board's findings that, well, going with two unidirectional fibers is just not desirable.

[00:06:47] Speaker 03:
You would keep cork as is using a single bidirectional fiber.

[00:06:52] Speaker 03:
So where is, in that explanation of how I understand the board's decision, does the board's reasoning break down in such a way that it committed legal error?

[00:07:04] Speaker 00:
Yolanda, we think that the board made legal error because once it identified the certain disadvantages to the substitution of even directional fibers, it then effectively discounted the combined alternative which uses those fibers.

[00:07:19] Speaker 00:
And in doing so, the board actually limited the teaching of quarks to just the monitoring of the fiber quality.

[00:07:27] Speaker 00:
Whereas Cork is broader, Cork actually teaches, which I think I counseled in the prior, as you mentioned, Cork also teaches route monitoring and protection and the ability to switch from one fiber to a second redundant fiber.

[00:07:39] Speaker 00:
So what the board did is the board set, in our view, the board set up a very high standard and then it discounted the, it elevated the disadvantages and it also discounted the advantages because we submitted evidence that the event of EDFA, which was becoming an industry standard,

[00:07:56] Speaker 00:
would motivate a skilled artisan to combine the teaching of Swanson and use the unilateral fibers with cork because... Right, and the EDFA point that you made, you made it for the first time in the reply, right?

[00:08:12] Speaker 03:
This is the argument you made that the board found was waived because it wasn't presented as a motivation theory in the petition.

[00:08:22] Speaker 03:
Is that correct?

[00:08:24] Speaker 00:
Your Honor, we did, and I know that the board viewed it as late.

[00:08:28] Speaker 00:
We responded in our blue brief on page 34.

[00:08:31] Speaker 00:
We explained that the argument was fully responsive to Oyster's attack on challenge to Dr. McFarlane's testimony, and Oyster's challenge was on attending page 224 and 225.

[00:08:46] Speaker 00:
And so we argue there is no waiver.

[00:08:48] Speaker 00:
Oyster itself really does not press waiver on this appeal, as you can see in the red brief on page 52.

[00:08:54] Speaker 00:
They refer to the fact that the board addressed from the merits.

[00:08:57] Speaker 00:
If I may, I see that my time is elapsing.

[00:08:59] Speaker 00:
I would like to also address the second out, second ground, which is combination of Turing to Salva.

[00:09:05] Speaker 00:
But of course, I would be happy to answer any questions about the court ground as well.

[00:09:12] Speaker 00:
So with respect to choice security in DeSalva, the board made two run-year findings.

[00:09:17] Speaker 00:
The board's first impermissibly limited DeSalva's key chain to one of its claims embodiments, where the board held that DeSalva's key chain is placing the EDFI preamplifier before the multiplexer.

[00:09:27] Speaker 00:
And that was a legal error, because DeSalva's key chains are not so limited.

[00:09:32] Speaker 00:
DeSalva teaches that the multiplexing process weakens the optical signal, and the solution is to incorporate an EDFA preamplifier, which will overcome those losses,

[00:09:41] Speaker 00:
filter out the noise, and boost the signal.

[00:09:44] Speaker 00:
But that teaching does not depend on the location of the preamplifier.

[00:09:47] Speaker 00:
These are either the multiplexers.

[00:09:49] Speaker 00:
And our expert, Dr. McFarland, testified that, in fact, you may want to place the EFA repeater further down the transmission line because the initial preamplifier may not remedy those transmission losses that occur downspeed.

[00:10:04] Speaker 03:
So let me see if I understand your argument.

[00:10:08] Speaker 03:
To solve those preamplifiers located

[00:10:12] Speaker 03:
before DeSalvo's multiplexer, is that right?

[00:10:16] Speaker 00:
That is the position that's disclosed in the embodiments, but DeSalvo itself never teaches that you must locate the preamplifier before the multiplexer.

[00:10:25] Speaker 03:
And then you're saying, well, your expert explains that you could just pop the preamplifier over onto the other side, and it would end up on Choi's LRC card, right?

[00:10:37] Speaker 00:
That is correct, Your Honor.

[00:10:39] Speaker 03:
And then the problem is this

[00:10:42] Speaker 03:
duplication concern.

[00:10:44] Speaker 00:
That was the board's reasoning.

[00:10:47] Speaker 00:
That was the reason, the sole reason that the board rejected our argument and our evidence.

[00:10:52] Speaker 03:
And then to what extent did Sienna ever respond to that duplication concern?

[00:10:58] Speaker 00:
You honor with this, and we actually responded, this was both, Mr. McFarlane responded to that.

[00:11:04] Speaker 00:
This is in his declaration on Appendix Pages 869, 870.

[00:11:09] Speaker 00:
And that must be combined, which is the central point of respect to showing the salvo.

[00:11:13] Speaker 00:
It must be combined viewed in light of the salvo's Figure 1, which is on Appendix Page 1304.

[00:11:19] Speaker 00:
Because figure 1 actually shows the inline EDF repeater, which is the multiplexer.

[00:11:25] Speaker 00:
And from there, the still multiplex signal goes to the star coupler from which it goes to signal branches, which are O and 1, O and 2, and so on.

[00:11:37] Speaker 00:
And each of those branches contains its own receiver unit.

[00:11:40] Speaker 00:
And that receiver unit is number 21 on figure 1.

[00:11:44] Speaker 00:
And each of those receiver units actually includes a separate preamplifier, which is the low-noise EDFA number 22.

[00:11:49] Speaker 00:
So the duplication that Dr. Goosin testified to and that the board accepted as the reason for rejecting our testimony is expressly shown and thought in the cell itself.

[00:12:01] Speaker 03:
Did you argue this notion that there's a preamplifier on the receiver card below?

[00:12:09] Speaker 00:
You want to we argue that?

[00:12:11] Speaker 03:
If you could just give me a site to somewhere in your IPR reply where it says, hey, there's a preamplifier in the receiver unit.

[00:12:23] Speaker 03:
That's what DeSalvo says.

[00:12:26] Speaker 00:
Yes, Your Honor.

[00:12:27] Speaker 00:
The best answer is to this argument, and we argue that you can place the preamplifier anywhere, including under... No, no.

[00:12:33] Speaker 03:
Where did you say that the preamplifier... There is already a preamplifier in DeSalvo's receiver unit.

[00:12:40] Speaker 03:
Where did you say that in the SPR reply?

[00:12:43] Speaker 00:
Your Honor, the best citations would be our reply, which is appendix pages 476 and also the subsequent two pages 477 and 78.

[00:12:53] Speaker 03:
I would also refer to... A476 to A478 is going to show me that?

[00:13:00] Speaker 00:
They will show that we argue that you can place the preamplifier anywhere, and it doesn't have to be placed before the multiplexer.

[00:13:10] Speaker 03:
Okay, but I just want to be clear about something.

[00:13:13] Speaker 03:
If I read A476-78 in response to my question as to whether these pages

[00:13:22] Speaker 03:
state that DeSalvo already discloses that there is a preamplifier located on its receiver unit.

[00:13:33] Speaker 03:
Am I going to see that on those pages or not?

[00:13:37] Speaker 00:
Yes or no?

[00:13:39] Speaker 00:
Johanna, I want to be very careful in response to your answer because the... It's a simple yes or no question.

[00:13:47] Speaker 03:
Am I going to see that statement here in your IPR reply at

[00:13:52] Speaker 03:
476-78.

[00:13:52] Speaker 03:
Yes or no?

[00:13:54] Speaker 00:
On those pages combined with figure one of the solver, I believe that those do actually show that point.

[00:14:06] Speaker 03:
Where?

[00:14:07] Speaker 00:
And also, I think, you know, that would be shown on, in Dr. Murpham's test declaration on page appendix 949.

[00:14:15] Speaker 03:
No, no, I am asking about your IPR reply.

[00:14:20] Speaker 03:
I'm trying to figure out whether this is a preserved argument.

[00:14:24] Speaker 03:
So I'm looking for a sentence in your IPR reply.

[00:14:32] Speaker 02:
John, I'm running through those pages now.

[00:14:36] Speaker 02:
You're running up on your 15 minutes, by the way.

[00:14:43] Speaker 00:
Johanna, I believe that we have those pages are the best support where we argued that because we made the point that the preamplifier can be located anywhere.

[00:14:53] Speaker 00:
It does not have to be placed on the multiplexer.

[00:14:55] Speaker 03:
That's a different point than the point you're trying to make to me now that you argued below that DeSalvo already teaches that there is a preamplifier located on its receiver unit.

[00:15:10] Speaker 00:
Joana, I believe that point is made there and also on page 929, which is Mr. McFarland demonstrated.

[00:15:22] Speaker 00:
No, no, no.

[00:15:23] Speaker 03:
Your IPR reply.

[00:15:32] Speaker 00:
Joana, I believe that the best support you would have is those pages I have cited.

[00:15:40] Speaker 03:
OK.

[00:15:41] Speaker 03:
All right.

[00:15:41] Speaker 03:
On your reply, you can tell me exactly which sentence is your best sentence for that.

[00:15:47] Speaker 02:
You've used up all your time for your reply, counsel.

[00:15:51] Speaker 02:
I'm going to let you have a minute since you reserved three.

[00:15:58] Speaker 02:
Go ahead, opposing counsel.

[00:16:01] Speaker 01:
Thank you, your honor.

[00:16:02] Speaker 01:
May it please the court.

[00:16:03] Speaker 01:
Your honor,

[00:16:04] Speaker 01:
Once again, the board's decision is not infected with legal error.

[00:16:09] Speaker 01:
And in fact, Your Honor, this is one instance where this case differs from the prior cases.

[00:16:15] Speaker 01:
Here, Sienna only disputes the factual findings by the board in its second challenge based on Choi and DeSalvo.

[00:16:23] Speaker 01:
And Sienna accepts, as is admitted, the board's factual findings on the Cork and Swanson combination.

[00:16:33] Speaker 01:
Oyster reads Uber exactly as Judge Chen resided a few moments ago.

[00:16:38] Speaker 01:
Uber does not actually deal with a factual dispute whether there are two substitutable alternatives.

[00:16:45] Speaker 01:
Here, Sienna has accepted, as supported by substantial evidence, the board's findings that using a separate unit directional fiber, or actually a set of separate unit directional fibers in Cork's bidirectional embodiment,

[00:17:01] Speaker 01:
would have been undesirable.

[00:17:03] Speaker 01:
And that finding was supported by the board's extensive reading of Cork, a number of disclosures in Cork that stressed the importance of using the received signal on the bidirectional fiber to measure and determine fiber integrity for transmitting on that same fiber.

[00:17:21] Speaker 01:
The board also referred to Dr. Gosin's extensive testimony regarding this point.

[00:17:26] Speaker 01:
And even at one point looked to Dr. McFarland's admissions during deposition where he conceded that making the substitution of bidirectional fiber in cork's bidirectional embodiment by substituting out separate unidirectional fibers is contrary to cork's teaching because it would result in in effect a completely undetected fiber which could be damaged separately from one of the other fibers and I'm happy to go through that.

[00:17:54] Speaker 01:
that litany of logic if Uranus would like.

[00:17:57] Speaker 01:
But in essence, Uranus, the board looked to all of that evidence.

[00:18:02] Speaker 01:
Cork, Dr. Gosin's testimony, Dr. McFarlane's testimony, reached a factual finding that a person of ordinary skill in the art would not have made this proposed change in Cork.

[00:18:13] Speaker 01:
In effect, under Uber, where there was no evidence of acceptable trade-offs, or excuse me, acceptable alternatives,

[00:18:22] Speaker 01:
Here we have a board finding that Sienna now asked this court to jettison under a question of law rather than giving deference to the board's factual findings which are in effect undisputed.

[00:18:34] Speaker 01:
Other cases that are probably more applicable here as Judge Chen mentioned are Winter International which the board specifically cited and of course Henny Penny as well where there is a weighing.

[00:18:44] Speaker 01:
Now, Your Honor, an important point here which I think got lost a little bit in opposing counsel's argument

[00:18:51] Speaker 01:
is despite their reliance on Uber, they still in their reply brief, in their gray brief, page 10, do seem to be asking this court to weigh benefits versus advantages.

[00:19:03] Speaker 01:
This is about two-thirds of the way down in their gray brief, and they state the proper inquiry the board should have pursued, however, is not whether these known advantages are sufficient to support the proposed motivation to combine.

[00:19:16] Speaker 01:
absent proof of unidirectional fibers as a known viable alternative was already sufficient, they say.

[00:19:21] Speaker 01:
They continue, but whether these benefits are outweighed by the alleged disadvantages.

[00:19:26] Speaker 01:
We think this sentence points to Sienna's reliance really on that weighing test that the board conducted under Winder, that the board, or excuse me, that this court encourages under Henny Penny, Charvascular, and that line of case law.

[00:19:46] Speaker 01:
As Judge Chen correctly noted, the reliance on the erbium doped fiber amplifier as what they called sort of an industry standard was an argument that they first raised in their reply.

[00:19:59] Speaker 01:
One point to note here, Your Honor, is they still are not arguing to include the EDFA or the EDFAs in CORC, and they make that point clear on page 34 of their blue brief.

[00:20:14] Speaker 01:
The point is not that a skilled artisan would have wanted to use EDFAS with Cork system.

[00:20:19] Speaker 01:
So there they're admitting that there is no argument below to incorporate EDFAS into Cork.

[00:20:24] Speaker 01:
And therefore the question is why would a person of ordinary skill in the art make a decision about fibers based on EDFAS when there is no motivation or reason to add those to Cork system.

[00:20:36] Speaker 01:
They continue rather as EDFAS were becoming the industry standard

[00:20:40] Speaker 01:
and the bi-directional fibers were ill-suited to EDFAs, one of ordinary skill in the art would have been motivated to replace Cork's bi-directional fiber with the alternative arrangement disclosed by Swanson, that of paired unidirectional fibers.

[00:20:52] Speaker 01:
This sentence really highlights the logical flaw that they've made on EDFAs, even though they've waived it.

[00:20:58] Speaker 01:
And that is, if they're not going to incorporate it in Cork, why would a person of ordinary skill in the art make a decision in Cork based on something that isn't there, an EDFA?

[00:21:07] Speaker 01:
That simply is illogical and does not support reversal here.

[00:21:12] Speaker 01:
Your Honor, regarding the Choi and DeSalvo arguments, the board's finding was, again, supported by substantial evidence.

[00:21:18] Speaker 01:
It was clear it was based on the teachings of Choi, DeSalvo, the explanation by Dr. Gosin, who explained both schemes of what they call demultiplexing in one reference and the star coupler, which includes a bandpass filter in DeSalvo.

[00:21:37] Speaker 01:
Neither reference teaches applying an EDFA or an amplifier after the demultiplexing occurs.

[00:21:43] Speaker 01:
The only argument for that is from Sienna's experts.

[00:21:46] Speaker 01:
What Sienna has done here on appeal is they've developed, in effect, a new argument related to the importance of putting an EDFA on a card, and they're trying to use that as a new factor for weighing the evidence.

[00:21:59] Speaker 01:
That was not an argument they made below.

[00:22:02] Speaker 01:
Once again, Your Honors, the board's findings were supported by substantial evidence for the arguments that were made to them.

[00:22:08] Speaker 01:
There was no legal error.

[00:22:09] Speaker 01:
And unless Your Honors have any other questions, I will see the rest of my time.

[00:22:15] Speaker 02:
I don't hear any.

[00:22:19] Speaker 02:
OK.

[00:22:23] Speaker 02:
We have one minute for rebuttal.

[00:22:28] Speaker 00:
Yes, Your Honor.

[00:22:29] Speaker 00:
Let me just start with the citations, because in response to your earlier question, starting with our petition, that's where we repeatedly argued that the solid features that the EDFA preamplifies located on the receiver card.

[00:22:41] Speaker 00:
This can be seen on Appendix 101.

[00:22:44] Speaker 00:
It can also be seen in our detailed explanation of a grounds of unsententability.

[00:22:48] Speaker 00:
That's in Appendix 139.

[00:22:50] Speaker 00:
Turning to the reply, the best sentence I have for Your Honor is a sentence on page Appendix 476, where we said,

[00:22:57] Speaker 00:
Oyster's argument ignores Petitioner's explanation of why an amplifier would be useful in the receiver itself apart from any amplification done on the line before the multiplexing.

[00:23:06] Speaker 00:
We cited Dr. McFarland's testimony on paragraphs 93 and 94, and if you want to look at those paragraphs on pages, appendix 869 and 870, it expressly refers to

[00:23:21] Speaker 00:
to the optical receiver unit, including the EDF preamplifier 22, paragraph 93.

[00:23:26] Speaker 00:
And then the chart below shows in a box, EDF preamplifier in receiver unit.

[00:23:33] Speaker 00:
OK.

[00:23:34] Speaker 02:
We have any questions from the other judges?

[00:23:39] Speaker 02:
Your time's expired.

[00:23:40] Speaker 02:
Thank you, counsel.

[00:23:42] Speaker 00:
Thank you, Your Honor.

[00:23:43] Speaker 02:
Matter stand submitted.

[00:23:46] Speaker 02:
That concludes the arguments.

[00:23:50] Speaker 03:
The honorable court is adjourned until tomorrow morning at 10 a.m.