[00:00:00] Speaker 04:
First case for argument is 191353, the Genera versus Cisco.

[00:00:07] Speaker 04:
Mr. Quigley, whenever you're ready.

[00:00:22] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:00:25] Speaker 00:
My name is James Quigley, and I represent Appellant in Genera, Inc.

[00:00:29] Speaker 00:
The board made two errors of law in this case.

[00:00:32] Speaker 01:
Quick question.

[00:00:33] Speaker 01:
Do you agree that independent claim one of the 044 is representative of the claims on appeal?

[00:00:38] Speaker 01:
Yes, your honor.

[00:00:39] Speaker 01:
OK, good.

[00:00:39] Speaker 00:
Thank you.

[00:00:41] Speaker 00:
So as I noted, the board made two independent errors of law in this case, both of which weren't reversal.

[00:00:46] Speaker 00:
The first is that the board failed to apply this court's rule of reason to its priority analysis.

[00:00:52] Speaker 00:
Contrary to this court's instructions in cases like NFC, the board ignored the evidence that was in front of it.

[00:00:59] Speaker 00:
The board failed to consider all of the evidence to test the credibility of the inventor's story.

[00:01:04] Speaker 00:
And this applies both to conception and reduction to practice.

[00:01:08] Speaker 00:
The board's second error of law is in failing to consider the full scope and context of the prior art in this case.

[00:01:15] Speaker 00:
As this court instructed us in Bosch and later cases, the full scope and context of the prior art needs to be considered

[00:01:21] Speaker 00:
when doing a proper obviousness analysis.

[00:01:24] Speaker 00:
And here, the board applied nothing more than hindsight, stripping away all of the context of Ma, and using it as a mere dictionary in its analysis.

[00:01:34] Speaker 04:
The arguments you raise are difficult for me because they're all nebulous.

[00:01:39] Speaker 04:
And you know we have various principles the board doesn't need to address every single issue for us to be satisfied that they actually considered the record.

[00:01:47] Speaker 04:
And then you've got globbed on top of that in your case that they thought your presentation of some of the evidence for cooperation.

[00:01:58] Speaker 04:
What do they call it, an archaeological?

[00:02:00] Speaker 04:
This is an archaeological dig where we have to dig through stuff and get an explanation.

[00:02:05] Speaker 04:
So I'd like you to be much more specific, because your general complaints aren't helpful to me in trying to ascertain whether the board did a good enough job in this case.

[00:02:17] Speaker 04:
Just let me know that.

[00:02:19] Speaker 00:
Yes, Your Honor.

[00:02:20] Speaker 00:
In this case, EGENERA did present its evidence to the board.

[00:02:23] Speaker 00:
EGENERA put that evidence in its brief, its patent-owner response brief.

[00:02:28] Speaker 00:
It brought that evidence forth in the form of witness testimony.

[00:02:31] Speaker 00:
And it explained it at the hearing.

[00:02:32] Speaker 04:
And the board did address some of that.

[00:02:35] Speaker 04:
I mean, the board's not compelled to address every single document that you put in.

[00:02:39] Speaker 04:
But the board did give a detailed explanation of why it was concluding what it was concluding.

[00:02:45] Speaker 04:
And it did refer to portions of the evidence, right?

[00:02:50] Speaker 01:
didn't accept in the inventor testimony is properly corroborated.

[00:02:54] Speaker 00:
So I think the failure on the part of the board is that for the single disputed limitation, there was a particular document that was in front of the board exhibit 2024, appendix pages 2212 to 2213, which was talked about by inventor Geng in his declaration at paragraph

[00:03:11] Speaker 00:
21, appendix pages 1823 to 1824.

[00:03:15] Speaker 00:
And this was the document when it was in the brief, it was excerpted, and it was annotated.

[00:03:21] Speaker 00:
And there was a parenthetical site to Mr. Gang in the brief, appendix page 394.

[00:03:27] Speaker 00:
And when the board asked at the hearing, what evidence do you have as to this missing limitation?

[00:03:30] Speaker 00:
There was a single disputed limitation here as the conception, the failover logic, including the virtual MAC address.

[00:03:37] Speaker 00:
That document and Mr. Gang's testimony was what we pointed to.

[00:03:41] Speaker 00:
The board did not discuss that document or that paragraph from Mr. Gang in its final written decision.

[00:03:49] Speaker 00:
We're not asking your honors to reweigh the evidence here.

[00:03:51] Speaker 00:
The evidence was never weighed.

[00:03:54] Speaker 00:
We were asked the question, what evidence do you have?

[00:03:57] Speaker 00:
And we pointed to it, and then there was no discussion of it in the final written decision.

[00:04:02] Speaker 04:
Okay, well it's just difficult to ascertain.

[00:04:05] Speaker 04:
There were a large number of documents here that you presented, right?

[00:04:10] Speaker 00:
That's correct.

[00:04:10] Speaker 04:
So you're not suggesting that the board has to discuss every one of us, every one of those documents for us to be satisfied that the board reviewed it and applied the proper standard to it, right?

[00:04:22] Speaker 04:
So you say there's something special about this document because this was the number one thing that you were relying on?

[00:04:28] Speaker 00:
Yes, you're right.

[00:04:29] Speaker 00:
I think you're right.

[00:04:30] Speaker 00:
What document are you talking about again?

[00:04:33] Speaker 00:
In front of the board, it was exhibit number 2024.

[00:04:35] Speaker 00:
Where in the appendix is it?

[00:04:38] Speaker 00:
Sorry, 2212 to 2213.

[00:04:39] Speaker 01:
Where in 2212 to 2213 does it mention reassigning a virtual MAC address?

[00:04:47] Speaker 00:
So on page 2212, it mentions that the networking configuration has a virtual ethernet interface.

[00:04:54] Speaker 00:
And that virtual ethernet interface, according to Mr. Gang and his testimony,

[00:04:58] Speaker 00:
is what includes the virtual MAC address.

[00:05:01] Speaker 00:
So it doesn't.

[00:05:03] Speaker 00:
Sorry, Your Honor?

[00:05:04] Speaker 00:
So it doesn't.

[00:05:05] Speaker 00:
It does not use the word virtual MAC address in that document.

[00:05:08] Speaker 00:
So here, inventor Gang explained the document in the context of how he as an inventor understood it.

[00:05:14] Speaker 00:
There are other documents from Egenera that were also cited in front of the board in the briefing that explained that Egenera was not using Ethernet as its underlying physical network.

[00:05:23] Speaker 00:
It was using something called GigaNet.

[00:05:25] Speaker 00:
It knew, and as the document showed, they had to simulate MAC addresses.

[00:05:29] Speaker 03:
Wait, can you go back?

[00:05:30] Speaker 03:
So you said you agree this document doesn't actually specify a virtual MAC address, but your expert says it's equivalent to it.

[00:05:39] Speaker 03:
Where in that expert testimony does he say that?

[00:05:43] Speaker 00:
You were pointing us to 1824, I think.

[00:05:45] Speaker 00:
Is that where it is?

[00:05:46] Speaker 00:
I apologize.

[00:05:47] Speaker 00:
That's not the expert.

[00:05:47] Speaker 00:
That's inventor Scott Gang.

[00:05:49] Speaker 00:
It was 1823 to 1824.

[00:05:50] Speaker 03:
Well, where does he say that?

[00:05:52] Speaker 00:
In his declaration, I think it's earlier paragraphs, starting with paragraph 1415, which I believe appendix.

[00:06:01] Speaker 01:
How do you deal with Jepson v. Egli?

[00:06:04] Speaker 01:
I apologize, Your Honor.

[00:06:05] Speaker 01:
It's a CCPA 1956 case.

[00:06:10] Speaker 01:
Your expert testimony as a matter of law can't make up the deficiency where it's not mentioned.

[00:06:15] Speaker 00:
Here, we're not speaking to expert testimony.

[00:06:18] Speaker 00:
It's an inventor testimony.

[00:06:20] Speaker 00:
And the inventor's story, under the rule of reason, is what we test using corroborating evidence.

[00:06:24] Speaker 00:
And his story, inventor Gang's story, is corroborated by this evidence.

[00:06:28] Speaker 00:
There's nothing that contradicts him.

[00:06:30] Speaker 04:
OK, so tell us again what we're talking about on 1824.

[00:06:33] Speaker 00:
1823 to 1824 is paragraph 21, where inventor Gang is discussing this document, what

[00:06:42] Speaker 00:
was exhibit 2024, but is now 2212 to 2213 in the appendix.

[00:06:48] Speaker 00:
And he's discussing how the document includes storage and networking configurations that would include the virtual interface and would include the things that he had discussed previously in his declaration that are part of that, the virtual MAC address.

[00:07:03] Speaker 01:
But in 14, paragraph 14 in his declaration, it's circular.

[00:07:09] Speaker 01:
He says,

[00:07:09] Speaker 01:
Our solution did this in part through the use of virtualized media access control addresses, MAC addresses.

[00:07:19] Speaker 01:
That statement presumes the conclusion that's not in the discussion in the pet.

[00:07:29] Speaker 00:
I apologize, Your Honor.

[00:07:30] Speaker 01:
I'm not following.

[00:07:32] Speaker 01:
There's no mention of

[00:07:36] Speaker 01:
a virtual MAC address, is there?

[00:07:39] Speaker 00:
In that document?

[00:07:40] Speaker 00:
Right.

[00:07:40] Speaker 00:
In that document, there is not the statement virtual MAC address.

[00:07:43] Speaker 00:
There's a virtual ethernet interface, which is what one would understand would include the MAC address.

[00:07:47] Speaker 00:
Because to use ethernet, you need a MAC address.

[00:07:51] Speaker 00:
And as he generates other documents noted, for instance.

[00:07:54] Speaker 03:
Where does it specifically say in his declaration that the ethernet is the same as the virtual MAC address?

[00:08:02] Speaker 00:
That the virtual ether interface is the same?

[00:08:05] Speaker 00:
It's not that they're the same.

[00:08:06] Speaker 00:
It's that the interface has to have a MAC address to communicate.

[00:08:08] Speaker 00:
Where does it say that?

[00:08:10] Speaker 00:
I don't have that site in front of me.

[00:08:11] Speaker 00:
I apologize, Your Honor.

[00:08:12] Speaker 03:
Well, I mean, you're acting.

[00:08:14] Speaker 03:
I mean, your suggestion is that there's such incontrovertible evidence that the board, a reasonable person, could not have come to the opposite conclusion.

[00:08:21] Speaker 03:
But you're basing it on a bunch of pretty big inferences and general testimony.

[00:08:27] Speaker 03:
This is the problem.

[00:08:28] Speaker 03:
The document you point to us doesn't say anything about virtual MAC addresses.

[00:08:32] Speaker 03:
And you can't point to anything in the inventor testimony other than a conclusory statement about our solution did this, but it doesn't explain how it did it in a certain amount of time or have any corroboration.

[00:08:47] Speaker 00:
I think there are other documents that do corroborate.

[00:08:49] Speaker 03:
Well, this is the document you pointed to.

[00:08:51] Speaker 03:
I assume you would have said relied on your best evidence first and not saved it for later.

[00:08:57] Speaker 00:
So in this case, the inventors do not have a single document that describes something in the level of detail of the patent.

[00:09:04] Speaker 00:
This was a product that they were working on in the year 2000 through 2001.

[00:09:09] Speaker 00:
And these are specification documents that they had put together over time.

[00:09:13] Speaker 00:
And to them, virtual ethernet interface was clear that it included a virtual MAC address.

[00:09:20] Speaker 00:
Because as they said in other documents, they were not using ethernet.

[00:09:23] Speaker 00:
They had to simulate ethernet, and therefore,

[00:09:26] Speaker 00:
use simulated MAC addresses.

[00:09:30] Speaker 00:
So that evidence was in front of the board.

[00:09:33] Speaker 00:
Those other documents were also in front of the board.

[00:09:35] Speaker 04:
As were numerous others.

[00:09:38] Speaker 04:
And the board did, I mean, actually it did cite to I think exhibit 2024.

[00:09:44] Speaker 04:
You're right, it didn't go through a detailed analysis of each one of those exhibits, but I'm not sure I understand or appreciate why that was necessary.

[00:09:56] Speaker 04:
I mean, they do have an analysis, they do complain that

[00:10:01] Speaker 04:
It's hard to get through all of this and to understand the significance, but they do their best to try to do that.

[00:10:08] Speaker 04:
And under these circumstances, given the size of the record and the arguments that were made, I'm having a hard time.

[00:10:14] Speaker 04:
Is it really just on that one document that you think that document was of such significance?

[00:10:20] Speaker 04:
They knew it was of such significance, and they failed to explain it?

[00:10:25] Speaker 04:
Concern?

[00:10:26] Speaker 00:
I think that's right, Your Honor.

[00:10:26] Speaker 00:
It's that document in context of others.

[00:10:28] Speaker 00:
And that was the document that was brought up at the hearing in front of the board when this limitation was raised.

[00:10:35] Speaker 00:
This wasn't a document that was buried.

[00:10:36] Speaker 00:
This wasn't inventor testimony that was buried.

[00:10:39] Speaker 00:
This was material that was presented in response to the board's questioning in appendix pages 571 to 573.

[00:10:44] Speaker 00:
So that's conception.

[00:10:51] Speaker 00:
As to diligence, we think the evidence here shows, and the board again didn't consider the evidence, including some of Mentor Mankus' testimony, that egenera from November of 2000 through January of 2002... Does diligence matter if we agree with the board that you haven't shown conception prior to the relevant date?

[00:11:12] Speaker 00:
You would not need to reach diligence if you found against us as to conception.

[00:11:18] Speaker 04:
And your comment, which you just made five seconds ago, which is the board didn't consider.

[00:11:22] Speaker 04:
We don't know whether the board considered or not.

[00:11:25] Speaker 04:
Your argument is more clearly the board did not address, right?

[00:11:30] Speaker 00:
The only evidence that we have of what the board considered is what is in its written decision, which here doesn't cite to that document.

[00:11:37] Speaker 03:
The evidence of what the board considered is what was in the record, and we presume that the APJs properly considered the record before them.

[00:11:45] Speaker 03:
We're not grading them on the exhaustiveness of their opinion.

[00:11:48] Speaker 03:
Our standard of review is whether they're substantial evidence.

[00:11:52] Speaker 03:
It seems to me that you're re-arguing it de novo and pointing to a bunch of evidence that you think should have carried the day.

[00:12:00] Speaker 03:
Your friend is going to get up on the other side and say, here's the evidence we put forth that supports the board's decision.

[00:12:06] Speaker 03:
This is not our job to reweigh the evidence.

[00:12:09] Speaker 03:
You can point to a bunch of evidence in the record that you think the board didn't properly consider,

[00:12:14] Speaker 03:
But we're presuming that they did.

[00:12:16] Speaker 03:
And unless you have the equivalent of a smoking gun that says, we invented this on X date, and here's our lab notes that show all this, then I think you're going to have a hard time.

[00:12:28] Speaker 03:
We've given you the opportunity on conception to show that document.

[00:12:32] Speaker 03:
And you pointed to what you think is the best document.

[00:12:36] Speaker 03:
Do you have anything else on this?

[00:12:38] Speaker 00:
And that document is our best document at that level of detail with the understanding from other documents that the virtual MAC address was being used.

[00:12:46] Speaker 01:
Well, at that point, if we don't accept your conception argument, it looks like you're abandoning the rest of the combination arguments.

[00:13:02] Speaker 00:
A word.

[00:13:04] Speaker 00:
So I've talked about diligence.

[00:13:05] Speaker 00:
We still have the obviousness issue.

[00:13:08] Speaker 00:
We do.

[00:13:08] Speaker 00:
And you have, what, two and a quarter minutes?

[00:13:10] Speaker 00:
We'll do this really quick.

[00:13:11] Speaker 00:
As to obviousness, the board was required to consider the full scope and context of the prior art.

[00:13:17] Speaker 00:
The board didn't do that for Ma here.

[00:13:19] Speaker 00:
The board, you can see this in its own written decision on appendix pages 33 to 34.

[00:13:24] Speaker 00:
There's about a half a page discussion of Ma.

[00:13:26] Speaker 00:
Ma was used as a dictionary here for the sole purpose of the phrase virtual MAC address.

[00:13:30] Speaker 00:
or it's stripped all the context away.

[00:13:32] Speaker 00:
You can see that by looking at those appendix pages.

[00:13:34] Speaker 00:
Ma teaches a group of network devices, not computer processors, as Ma makes clear, that are all pre-assigned a single virtual MAC address.

[00:13:44] Speaker 00:
Not two, not three, but one.

[00:13:47] Speaker 00:
And when the primary device fails, the ownership of that single MAC address is transferred to a secondary device.

[00:13:55] Speaker 00:
Now, the board explains that on pages 33 to 34 in the appendix as part of its final written decision.

[00:14:02] Speaker 00:
But when we get to how the board distills Ma down to the claims on appendix page 60, the board says Ma teaches virtual MAC addresses that are reassignable upon failover to a replacement device.

[00:14:17] Speaker 00:
But Ma doesn't teach virtual MAC addresses.

[00:14:19] Speaker 00:
It teaches a virtual MAC address.

[00:14:21] Speaker 00:
And the claims here require multiple.

[00:14:24] Speaker 00:
Ma doesn't teach reassignment.

[00:14:25] Speaker 00:
It teaches transfer.

[00:14:27] Speaker 00:
The MAC address is already assigned to the group that the network device is a part of.

[00:14:31] Speaker 00:
And third and finally, Ma doesn't teach any generic replacement device.

[00:14:36] Speaker 00:
Ma teaches a network device.

[00:14:39] Speaker 00:
Ma, on appendix page 1042, differentiates between network devices and host, where host would be computer processors.

[00:14:47] Speaker 00:
Ma isn't concerned about hosts.

[00:14:49] Speaker 00:
Ma is concerned with network devices, bridges, switches, and routers, things that our computers might use to access a network.

[00:14:56] Speaker 00:
And so the board doesn't explain.

[00:14:57] Speaker 00:
There's no explanation from appendix pages 33 to 34 to appendix page 60 of how the board distilled Ma down to that phrase, other than using hindsight.

[00:15:10] Speaker 04:
OK.

[00:15:10] Speaker 04:
You've exhausted your rebuttal.

[00:15:28] Speaker 02:
Good morning.

[00:15:29] Speaker 02:
May it please the court, Theo Foster on behalf of Happily Cisco Systems.

[00:15:33] Speaker 02:
I'd like to direct the court's attention to Appendix Page 40, where the board did discuss very similar disclosure in Egenera's alleged corroboration evidence dealing with a software configuration.

[00:15:45] Speaker 02:
So that's a different phrase than the node configuration that Mr. Quigley was directing the court to on Appendix Page 2212.

[00:15:56] Speaker 02:
The board did address Egenera's evidence regarding the movability of a configuration.

[00:16:04] Speaker 02:
And it noted that there was no evidence that the configurations that would be moved included a virtual MAC address.

[00:16:10] Speaker 02:
So I believe that the board did have in front of it the evidence that Egenera is bringing to the court's attention today and found it wanting.

[00:16:19] Speaker 02:
Regarding the obvious miscase, I would direct the court's attention

[00:16:26] Speaker 02:
to the board's detailed analysis of the obviousness combination, beginning on the appendix page 58 or so.

[00:16:37] Speaker 02:
And note that the board referred extensively to both Aziz and Ma and the detailed testimony of Dr. Chinoy, and then additionally to the Marcus prior art reference, which showed.

[00:16:52] Speaker 02:
You can assume we read it.

[00:16:54] Speaker 02:
If the court doesn't have any questions for me, I'll cede my time.

[00:17:01] Speaker 04:
Thank you.

[00:17:13] Speaker 00:
Very briefly, Your Honors.

[00:17:14] Speaker 00:
I just want to reiterate the point on conception that there's a single limitation in this case that's in dispute.

[00:17:20] Speaker 00:
It's a single document that we pointed to at the hearing that's supported by inventor testimony, as well as expert testimony.

[00:17:26] Speaker 00:
The board said nothing about that in its final written decision.

[00:17:30] Speaker 00:
We think that's inappropriate under the NFC case.

[00:17:34] Speaker 04:
Well, you say there's a single document.

[00:17:35] Speaker 04:
How many documents did you submit in this case?

[00:17:41] Speaker 04:
Here, the suggestion is that all we needed was this one document.

[00:17:44] Speaker 04:
This one document was a smoking gun, and it did it for us.

[00:17:47] Speaker 04:
How many exhibits were there?

[00:17:51] Speaker 00:
in terms of the corroboratory exhibits, seven or eight.

[00:17:55] Speaker 00:
But I think it's important to remember that those were submitted in terms of all six claims as to a number of different limitations.

[00:18:02] Speaker 00:
So not all of them were necessarily cited to the board.

[00:18:05] Speaker 00:
And we're not talking about the board having to dig into the documents on its own.

[00:18:08] Speaker 00:
We're talking about the excerpts that were provided to the board in the patent owner response.

[00:18:12] Speaker 04:
Did you file a motion for reconsideration here?

[00:18:14] Speaker 00:
We did not know.

[00:18:15] Speaker 04:
We started waving the flag and saying, hey, you forgot something.

[00:18:19] Speaker 04:
You missed something.

[00:18:20] Speaker 04:
You didn't deal with the most important document in this case, just to call it to the board's attention.

[00:18:25] Speaker 00:
We did not file such a motion.

[00:18:26] Speaker 03:
Was there argument or argument before the board?

[00:18:30] Speaker 00:
I apologize.

[00:18:30] Speaker 00:
That's what I mean by the hearing.

[00:18:32] Speaker 00:
When the board at the hearing asked about this single limitation, this was the document that we talked about.

[00:18:38] Speaker 03:
Well, how does that help you?

[00:18:39] Speaker 03:
I mean, you pointed out to them specifically, they were aware of it.

[00:18:43] Speaker 03:
You know, we presume that they considered it and rejected it as insufficient.

[00:18:51] Speaker 00:
From the board's opinion, when the board says there's no corroboration as to this limitation, and that's the corroboration that we pointed to for the board, we think that's inappropriate.

[00:18:57] Speaker 03:
They find it insufficient.

[00:19:03] Speaker 00:
Under NFC, we think that the board was in error here, but that's all I have, Your Honors.

[00:19:08] Speaker 00:
Thank you for your time.

[00:19:08] Speaker 04:
Thank you.

[00:19:09] Speaker 04:
We thank both sides of cases submitted.