[00:00:02] Speaker 01:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:07] Speaker 01:
God save the United States and this honorable court.

[00:00:12] Speaker 03:
Good morning.

[00:00:13] Speaker 03:
The first case for argument this morning is 19-1-7-0-8, Twitter, Inc.

[00:00:19] Speaker 03:
versus VidStream.

[00:00:21] Speaker 03:
Mr. McCombe, whenever you're ready.

[00:00:24] Speaker 01:
Good morning.

[00:00:24] Speaker 01:
This is David McCombe.

[00:00:26] Speaker 01:
May it please the court.

[00:00:28] Speaker 01:
The board's error was applying the wrong test for obviousness.

[00:00:31] Speaker 01:
There's no requirement that the claim feature be identically disclosed in the prior art like in a Section 102 analysis.

[00:00:38] Speaker 01:
In this case, the board's own fact findings establish obviousness as a matter of law when the correct test is applied.

[00:00:46] Speaker 01:
The issues distill down to Lathi's teaching of a frame rate constraint for capturing video or in the 506 patent, the video length.

[00:00:54] Speaker 01:
Is it part of the Mobicon app downloaded from the server or is it just part of the phone's default camera settings?

[00:01:00] Speaker 01:
So the two possibilities are server option with instructions supplied by Mobicon and phone option with instructions supplied by the native phone.

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To the heart of the matter, a key fact finding the board made is that between the server option and the phone option, either could provide the instructions.

[00:01:20] Speaker 01:
Let's see the board at appendix 22.

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And the cotton owner's expert also went further to say that both options are equally consistent at appendix 2428.

[00:01:30] Speaker 03:
Mr. McCombs, this is Judge Prost.

[00:01:35] Speaker 03:
I understand your argument, and I appreciate it.

[00:01:38] Speaker 03:
And you make it with some heft in your appeal brief.

[00:01:42] Speaker 03:
What I'm missing is where this argument was really put forth clearly to the board.

[00:01:50] Speaker 03:
We can't ignore the fact that the board talked in several places where they talked about what Lottie teaches or suggests.

[00:02:01] Speaker 03:
I think they discussed Dr. Olivier's declaration, and even though he said something, he didn't provide any support in terms of the suggestion argument of why someone skilled in the art would have read Lottie that way as an alternative.

[00:02:16] Speaker 03:
So I'm kind of missing where in the record the board went astray and why you say the board never considered or even entertained the possibility of a suggestion where it said it did.

[00:02:33] Speaker 01:
Your Honor, the petition always framed Lathi's teachings as one of obviousness, not identical disclosure.

[00:02:42] Speaker 03:
The board never articulated a test that required identical disclosure, or at least I'm not seeing it.

[00:02:50] Speaker 01:
Yeah, the board always, at Appendix 17, the board required that there be expressed disclosure, and that was what they thought was the test.

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In this case, the petitioner always did frame this as what would

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have been obvious to a person of skill in view of the art.

[00:03:11] Speaker 01:
The discussion was, if you look at appendix 11 of 2 and other portions, the analysis was always an opinion as to what the subject matter as a whole would have been, you know, would have suggested to a person of skill in the art.

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In his discussion, in Dr. Ho's discussion, he always framed things as his understanding based on what the teachings of latte was.

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And so in particular, in this case, there were two recognized options.

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Both were obvious.

[00:03:49] Speaker 01:
The facts here are similar to the Google versus Phillips case that was cited in our reply brief.

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And this goes back to the KSR test, which says that where there's a finite number of known and predictable solutions, which in this instance is two, it would have been obvious to implement the one recited in the claim.

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like in Google, the frame rate parameter being supplied from the server or being supplied from the phone are both obvious since they are both appreciated and recognized as the two possible sources of video control.

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And if we look at what Dr. Ho said and reviewed, we submit that a skilled person is guided to the server option as being the most likely and predictable of the two since, as he pointed out,

[00:04:38] Speaker 01:
The frame rate of 15 frames per second is only specified when referring to how Mobicon works, not how a phone works.

[00:04:45] Speaker 03:
Well, except there's substantial evidence review here.

[00:04:49] Speaker 03:
And at JA, I think it's JA22, the board specifically calls out, I think, or JA23 or beyond that, that Dr. Ho simply didn't explain how Lottie provides the conclusion that Twitter tries to draw from it.

[00:05:07] Speaker 03:
So the board considered that argument and just didn't think that your expert has the substantial specificity or a sufficient specificity to draw the conclusion you wanted the board to reach.

[00:05:22] Speaker 03:
Why under substantial evidence review isn't that a problem for you?

[00:05:26] Speaker 01:
Well, I think that highlights the board's error of requiring express disclosure, that the MOBICON parameter must be there as opposed to the phone option.

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Under KSR, such a precise teaching is not the test.

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Under KSR, the precise teachings are not required.

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The court can rely on inferences and creative steps.

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And if we do look at what the board actually did say that was expressed in latte, if you look at fact findings in appendix 14 and around in that area,

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It was pretty clear that the board did find that Latte says that the Mobicon app did control aspects of the phone and that Mobicon coordinates video capture.

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And while it said that when Mobicon is used, it was clear that when Mobicon is used, recording did occur at 15 frames per second.

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What was not there was an exact statement that,

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when recording occurred must be from the server instructions.

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However, the understanding clearly from Dr. Ho was that it was there and the expert, Dr. Olivier, agreed with that, that either were equally consistent.

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Counselor, this is Judge Garena.

[00:06:58] Speaker 02:
It seems to me that your argument is based mostly on the decision that the board adopted the wrong legal standard in its obviousness analysis and that they strayed because they read the prior literally and looking at the function as opposed to whether

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that prior teachers suggest the obvious.

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Is that your argument?

[00:07:37] Speaker 01:
Yes, Your Honor.

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This is not a 102 test where you require a blueprint.

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In this case, Latte discloses the limitation because from the statements in Latte, Dr. Ho understood that the frame rate came from Obicon.

[00:07:55] Speaker 02:
So you're saying that the underlying obviousness analysis, this differences between the experts, that the board may have gotten that correct, but they applied the wrong legal standard.

[00:08:09] Speaker 02:
So the factual findings may be correct, but the wrong legal standard was applied.

[00:08:15] Speaker 02:
Is that also correct?

[00:08:17] Speaker 01:
Yes, Your Honor.

[00:08:19] Speaker 01:
This is not a case where there is a dispute as to the salient facts

[00:08:25] Speaker 01:
I don't think those are in dispute.

[00:08:27] Speaker 01:
The existing fact findings support obviousness as a matter of law where, in this case, it funnels down to two possible options, the phone option or the server option.

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As a matter of law, under Google and KSR and the case law, that supplies a predictable solution that either would be obvious.

[00:08:53] Speaker 02:
Okay, thank you.

[00:08:59] Speaker 01:
All right, so that brings us then to the question of the reply.

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And in this case, the reply arguments were proper and it was an abuse to ignore them.

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But I will say that because there is agreement on the facts that both options can supply the parameters, the court can decide this case on the obviousness test and does not need to reach the abuse of discretion issue for failure to consider the reply evidence.

[00:09:27] Speaker 01:
Nonetheless, the reply should have been considered.

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The first, the reply did not prejudice the patent owner because the patent owner was provided a surreply.

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And in fact, if anything, the prejudice works the other direction.

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By striking the petitioner reply but allowing the patent owner surreply, the petitioner had no voice in the trial after the petition.

[00:09:54] Speaker 03:
But at the end of the day, the board and the alternative considered everything, including your additional arguments, right?

[00:10:02] Speaker 01:
Well, we're confused on that as well.

[00:10:05] Speaker 01:
The board said we need not and do not consider the reply.

[00:10:10] Speaker 01:
And then to the extent that there is discussion, is that dicta?

[00:10:14] Speaker 01:
How are we to tell on a clear record?

[00:10:18] Speaker 01:
And in any case, when they did make those discussions,

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those discussions were incorrectly relying on the express disclosure requirement.

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And so in this case, we're not seeing that the arguments in the reply could have been predicted.

[00:10:41] Speaker 01:
You know, at the petition stage, the whole argument about the similarity of the phone native parameters,

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specified by Mobicon, that wasn't foreseeable because Latte never mentioned the default parameters of any user phones for comparison purposes.

[00:10:58] Speaker 02:
Does your appeal, your argument, hinge on whether or not the board considered that reply?

[00:11:09] Speaker 01:
No, it does not.

[00:11:10] Speaker 01:
I think the record, the facts,

[00:11:14] Speaker 01:
are sufficiently clear at the petition stage.

[00:11:19] Speaker 01:
There's really no dispute and the board and the patent owner agreed with the key fact findings that both the server option and the phone option for video capture were recognized alternatives.

[00:11:37] Speaker 01:
If there are no further questions, I'll reserve my time.

[00:11:40] Speaker 01:
Okay.

[00:11:41] Speaker 01:
Thank you.

[00:11:42] Speaker 03:
Let's hear from the other side.

[00:11:45] Speaker 03:
Ms.

[00:11:45] Speaker 03:
DeBrow?

[00:11:47] Speaker 00:
Good morning, Your Honors, and may it please the Court, this is Stephanie DeBrow on behalf of VidStream.

[00:11:53] Speaker 00:
You've heard a lot from Twitter today and in its brief about the purported legal errors committed by the Board, as well as the Board's supposed disregard for evidence and arguments in its reply.

[00:12:03] Speaker 00:
But the only issue that this Court needs to address

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is whether the board's factual findings regarding what Lottie would or would not suggest to a person of skill in the art are supported by substantial evidence.

[00:12:16] Speaker 00:
All of Twitter's arguments boil down to a disagreement with the board's finding that a person of the skill in the art would not understand from Lottie that the Mobicon application, as opposed to the phone's operating system or software associated with the phone's camera, supplies the video recording parameters referenced in Lottie.

[00:12:35] Speaker 00:
Twitter's disagreement with that.

[00:12:38] Speaker 03:
Let me interrupt you.

[00:12:39] Speaker 03:
Apologize.

[00:12:40] Speaker 03:
But let me interrupt you.

[00:12:41] Speaker 03:
But why are they not right that under the KSR test, if there were only two options where the video parameters can come from, that it would have been obvious for a person skilled in the art to try both?

[00:13:00] Speaker 03:
You did, and they cited in their brief, and I think they referred to it in argument this morning, that you did make the statement before the board that it is equally consistent.

[00:13:27] Speaker 03:
Okay, I think we're in business again.

[00:13:29] Speaker 03:
Mr. Brow, did you understand or hear my question?

[00:13:34] Speaker 00:
Yes, Your Honor.

[00:13:36] Speaker 00:
There's a couple of issues there.

[00:13:38] Speaker 00:
One is that the presence of two options appreciated in hindsight is not sufficient evidence that a person of skill and the art at the time of Lottie would understand both of those options to be available.

[00:13:51] Speaker 00:
And Twitter makes a lot of

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noise about the statements regarding equally consistent that were made by Vidstream's expert, but it takes those statements out of context dramatically.

[00:14:04] Speaker 00:
The board summarized the statements in its final written decision in what we think is a fairly accurate way.

[00:14:09] Speaker 00:
Vidstream argued below that Lottie does not disclose that the video capture parameters are provided by the Mobicon application, and that because it was commonplace at the time Lottie was published,

[00:14:20] Speaker 00:
for mobile devices to record video in accordance with the 3GPP specification, which includes the video capture parameters that are listed in Lottie, that it would be equally consistent with recording using a device's native capabilities.

[00:14:37] Speaker 00:
And then Vidstream went on to say, because there's no indication in Lottie that the Mobicon application controls the video recording parameters,

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A person of skill in the art reviewing Lottie would understand that the Mobicon application simply used the phone's native parameters.

[00:14:54] Speaker 00:
At the end of the day, the evidentiary failing in this appeal that this court needs to address and look at is that Twitter failed to connect the dots for the board.

[00:15:04] Speaker 00:
There's no evidence about why a person of skill in the art would understand the Mobicon application to be controlling the video parameters.

[00:15:12] Speaker 00:
And indeed, there is substantial evidence showing that a person of skill in the art would not understand that and, in fact, would understand the phone's native camera application to be performing those parameters.

[00:15:24] Speaker 00:
Lottie, can you give me again... I'm sorry.

[00:15:27] Speaker 03:
Let me interrupt.

[00:15:27] Speaker 03:
Can you give me again, at the beginning of your response, you provided a site to the board's opinion where it discussed your equally consistent language.

[00:15:36] Speaker 03:
Can you give me that again?

[00:15:41] Speaker 00:
Sorry, I had cited, I think, the appendix pages where we made the argument below and not the board's site for that.

[00:15:49] Speaker 03:
Okay, so the board didn't deal with that particular argument?

[00:15:53] Speaker 00:
The board did, and I apologize, Your Honor.

[00:15:56] Speaker 00:
I just don't have that site at my fingertips at the moment.

[00:16:00] Speaker 00:
I can pull it together and give it to you after the argument or if I find it while we're talking.

[00:16:05] Speaker 00:
But the relevant pages of Vidstream's brief below is appendix

[00:16:10] Speaker 00:
386 through 390.

[00:16:16] Speaker 00:
The important point to take away from this, I think, is that it's Appendix 16 is where the board discusses that, Your Honor.

[00:16:26] Speaker 03:
Okay.

[00:16:26] Speaker 03:
Thank you.

[00:16:28] Speaker 00:
The important point I think that we want to make to take away from this is that in hindsight,

[00:16:32] Speaker 00:
the parties are recognizing that both of these options would be available but there's no evidence of record that a person of skill in the art at the time of Lottie or at the time of the patent would have appreciated that both options were available.

[00:16:47] Speaker 00:
There's certainly no indication in Lottie itself and there's no other evidence of record.

[00:16:51] Speaker 00:
Twitter merely asserted that a person of skill in the art would appreciate that but didn't provide any evidence showing

[00:16:58] Speaker 00:
why or how that would be true, and that's what the board got hung up on, that there was not sufficient evidence to allow the board to conclude that a person of skill in the art would have appreciated that feature.

[00:17:13] Speaker 02:
Hello?

[00:17:17] Speaker 02:
Hello?

[00:17:19] Speaker 02:
Yeah, I've been trying to ask a question, but haven't gotten through.

[00:17:23] Speaker 03:
Oh, Katrina, we can hear you now.

[00:17:28] Speaker 02:
Okay.

[00:17:31] Speaker 02:
I'm sorry.

[00:17:34] Speaker 02:
I've been asked the question for a while now, and it just didn't seem like, you know, um, you could hear me.

[00:17:40] Speaker 02:
We did not hear you.

[00:17:41] Speaker 02:
I did not hear you trying to do it, but please proceed.

[00:17:45] Speaker 02:
So I'm back now.

[00:17:46] Speaker 02:
Anyway, I wanted to ask Councilor DeBrow, um, why is it that a person of ordinary skill in the art looking at what's, uh, before that person at the time of the invention,

[00:17:58] Speaker 02:
not apply practical judgment under KSR and consider both options.

[00:18:05] Speaker 02:
Why should the person with skill, or their skill nor be limited to a single option when it seems that practical experience would say, well, what about the other option?

[00:18:23] Speaker 00:
Your Honor, there's evidence in the record that

[00:18:26] Speaker 00:
The phone itself was more likely to control the video capture parameters than the Mobicon application.

[00:18:33] Speaker 00:
There's no evidence of the record that the Mobicon application could do that, contemplated doing that, and there's also no evidence of record about why a person of skill and the art would be motivated to control the video capture parameters through the Mobicon application.

[00:18:50] Speaker 00:
Twitter's expert never explained why that would be done, indeed how it would be done, the evidence that they put in regarding the use of other software developer kits or APIs to program that function.

[00:19:04] Speaker 00:
Again, it's insufficient because they never explained whether those could be used.

[00:19:11] Speaker 00:
In fact, Twitter's expert conceded that he wasn't aware of any software developer kit or API that could be used to externally control the video recording parameters.

[00:19:20] Speaker 00:
And they never explained or put in any evidence about why a person of skill in the art would want to do that in the context of the Mobicon application.

[00:19:29] Speaker 03:
And there's evidence also.

[00:19:31] Speaker 03:
Well, why wouldn't, if you made a concession up front, if your TWIP, the other side makes a concession that if their two were equally consistent, why doesn't that end it?

[00:19:43] Speaker 03:
How is it they've been on notice that they needed to put on evidence about that if they thought that it wasn't a fairly disputed point?

[00:19:51] Speaker 00:
Your Honor, to be fair, we didn't make a concession that the two were equally consistent.

[00:19:56] Speaker 00:
In the context of the argument that we made, we were stating that there's no indication in Lottie that that functionality was controlled by the Mobicon application.

[00:20:07] Speaker 00:
There's also no express statement that it's controlled by the phone, but given all of the other evidence about the video recording parameters that were available in phones at the time and that phones

[00:20:18] Speaker 00:
were typically programmed to record, according to this 3GPP specification, that Lottie's disclosure was consistent with the phone controlling that functionality.

[00:20:29] Speaker 00:
And in the absence of any evidence that the Mobicon application would do that or that a person of skill in the art would understand that to be possible, that this is insufficient to show that that feature would have been obvious in light of Lottie.

[00:20:46] Speaker 00:
Twitter never made the argument, importantly, that implementing this feature in Mobicon would have been obvious to try.

[00:20:52] Speaker 00:
And that's the argument that they would have had to make for this equally consistent evidence that they're relying on now to make sense, that it would have been obvious for a person to try to implement that in Mobicon.

[00:21:06] Speaker 00:
And that sort of evidence is just not present in the record here.

[00:21:13] Speaker 03:
Judge Raina, are you still with us?

[00:21:16] Speaker 03:
Yes, I am.

[00:21:17] Speaker 03:
Oh, good.

[00:21:17] Speaker 03:
Good.

[00:21:18] Speaker 03:
I got worried about our previous... Anything further from the court, from judges?

[00:21:26] Speaker 03:
Okay.

[00:21:29] Speaker 03:
Finally, we're going to have a little time, but... The final point I would leave you with is that... Do you want to respond, by the way, to the reply and the surreply issue?

[00:21:42] Speaker 03:
You started off with that, but I don't think we let you get to it.

[00:21:46] Speaker 00:
Sure, Your Honor.

[00:21:47] Speaker 00:
The board's decision here includes two alternative holdings relating to Twitter's reply.

[00:21:52] Speaker 00:
The first is that it raises new issues and the board doesn't have to consider it.

[00:21:56] Speaker 00:
The second, an alternative holding, is even considering those additional arguments, there's nonetheless insufficient evidence to show that Lottie would feature suggest the disputed claim element.

[00:22:06] Speaker 00:
Twitter has to win on both of those to get a remand, but if the court agrees with the board on the second holding, it doesn't have to reach the first one.

[00:22:14] Speaker 00:
And as the stream explained in our brief, the board devoted five pages of its final written decision to its analysis of the evidence in Twitter's reply.

[00:22:24] Speaker 00:
So it's hard to understand how one could argue that the board did not thoroughly consider and address that evidence.

[00:22:31] Speaker 03:
And all of the board finding... I think your friend characterized it, if I understood him correctly, that that was dicta.

[00:22:39] Speaker 03:
Do you think... Why is that not dicta?

[00:22:43] Speaker 00:
Your Honor, our position is that it's an alternative holding, and the board couched it as that.

[00:22:48] Speaker 00:
They held first that they didn't need to consider the evidence, but then they made the alternative holding that we are going to go on and consider this evidence, and even considering it, it's insufficient to show that Lottie would teach or suggest the disputed claim element.

[00:23:03] Speaker 00:
The board found the same evidentiary failings in the reply evidence that it found with the evidence that was cited in Twitter's petition, which is that at no point did Twitter or its expert or any other evidence that they offered demonstrate why a person of skill in the AR would understand that Mobicon was providing the video capture parameters.

[00:23:25] Speaker 00:
And Twitter made some arguments in its opening that, you know, the board repeatedly relied on the supposed expressed disclosure of Lottie and pointed you to some holdings early in the board's opinion where the board did find Lottie doesn't expressly disclose that.

[00:23:41] Speaker 00:
But what Twitter didn't acknowledge is the countless pages after that where the board goes on to evaluate what exactly Lottie would suggest to a person of skill and the art in the absence of an expressed disclosure.

[00:23:53] Speaker 00:
And, you know, as we've talked a lot about here today and as we had in our brief, there's not evidence about why a person of skill in the art would understand this feature to be present in Lottie.

[00:24:04] Speaker 00:
Twitter and its expert just merely assert that that would be the case, but they fail to connect the dots for the board, and that is not sufficient.

[00:24:12] Speaker 00:
They've not met their evidentiary burden, and in the absence of that, the board's fact findings are supported by substantial evidence and should be affirmed here.

[00:24:22] Speaker 02:
This is Judge Raina.

[00:24:24] Speaker 02:
I'm intrigued by the fact that the board did make an alternative finding.

[00:24:28] Speaker 02:
And that causes questions that I have to the extent to which Twitter's argument, the main argument it's making here today, hinges on its reply.

[00:24:45] Speaker 00:
Well, Your Honor, I think Twitter conceded earlier.

[00:24:48] Speaker 00:
Mr. McCombs can correct me if I'm misrepresenting this, but that their argument does not hinge on their reply.

[00:24:57] Speaker 00:
Okay.

[00:24:57] Speaker 00:
And as we pointed out, even if they do allege that the reply evidence is necessary and that it hinges on that, the board did go on to consider that and gave this court ample pages with its analysis of that evidence and the fact findings that it made on that evidence.

[00:25:18] Speaker 02:
Okay, thank you.

[00:25:24] Speaker 00:
If there are no further questions, I will cede the rest of my time.

[00:25:27] Speaker 03:
Thank you very much.

[00:25:30] Speaker 03:
Mr. McCombs, you've got, I think, four minutes remaining or something close to that.

[00:25:36] Speaker 01:
Thank you.

[00:25:36] Speaker 01:
I do have a few points.

[00:25:38] Speaker 01:
First, this is not a hindsight situation.

[00:25:41] Speaker 01:
Everyone agrees that the two options are equally consistent.

[00:25:44] Speaker 01:
And if you look at appendix 2428, the declaration from the patent owner's expert is very clear on that, very clear.

[00:25:54] Speaker 01:
Secondly, the board also agreed with the fact finding that either

[00:25:59] Speaker 01:
either option was possible.

[00:26:02] Speaker 01:
So I don't think there's any dispute as to the fact that this does funnel down to two specific options.

[00:26:08] Speaker 01:
On the whole issue of context in latte, I think from the very beginning, if you look at Dr. Ho's declaration, he said that at appendix 1107, he noted that a teaching of latte is to provide restrictions on the nature of the videos being uploaded

[00:26:28] Speaker 01:
including defining formats and video quality that will be accepted.

[00:26:32] Speaker 01:
This supplies a good reason and design need for why he understood the Mobicon app would set the format for the frame rate, not just the default phone settings.

[00:26:44] Speaker 01:
So here, again, it distills down to really what is the proper test for obviousness under KSR.

[00:26:52] Speaker 01:
The express disclosure requirement is not what is at its issue here.

[00:26:58] Speaker 01:
Predictable solutions under KSR does not rise to a requirement of must be present.

[00:27:12] Speaker 01:
And if there are no questions, I have, I'll see the rest of my time.

[00:27:17] Speaker 01:
Okay.

[00:27:18] Speaker 01:
Thank you.

[00:27:19] Speaker 01:
We thank both sides and the case is submitted.