[00:00:27] Speaker 02:
Good morning, Your Honors.

[00:00:38] Speaker 03:
May it please the Court, Chris Granigan, on behalf of the Appellant, first face.

[00:00:42] Speaker 03:
The Court should reverse the Board's final written decision because the Board's findings on motivation to combine are not supported by substantial evidence.

[00:00:50] Speaker 03:
Now, the claim at issue here, the claim term at issue, is what the parties have called the simultaneously limitations.

[00:00:57] Speaker 03:
which appear in both independent claims that are issued here, claims one and nine.

[00:01:02] Speaker 03:
In both, I'm sorry, claims one and nine.

[00:01:04] Speaker 03:
In both essentially require that when a user presses what's called an activation button, the device simultaneously activates the display and performs a user identification function.

[00:01:17] Speaker 03:
Now the board has construed the term simultaneously by the agreement of the parties

[00:01:22] Speaker 03:
as, and this is on page 9 of the appendix, as when a user just presses the activation button, both the user identification function and the switching from the inactive state of the display unit to the active state of the display unit are performed without additional steps.

[00:01:41] Speaker 03:
Now the board, despite finding that none of the prior art individually disclosed this limitation,

[00:01:46] Speaker 03:
found that a person of ordinary skill in the art would have been motivated to combine references to achieve that claim limitation.

[00:01:52] Speaker 03:
And it found so on two grounds.

[00:01:54] Speaker 03:
I'll take the return.

[00:01:55] Speaker 03:
The first ground was based on a prior art reference called Fidel in view of another reference called Gagnerode.

[00:02:04] Speaker 03:
Now, it's not disputed that neither Fidel nor Gagnerode discloses the simultaneously limitations.

[00:02:10] Speaker 03:
Fidel, for its part, is about embedding a sensor in a device itself to achieve authentication quickly and seamlessly.

[00:02:17] Speaker 03:
It is not about the timing of authentication relative to activating a display, which is what the claims of the 557 patent are about.

[00:02:26] Speaker 03:
To the extent Fidel says anything about the timing of authentication,

[00:02:30] Speaker 03:
Relative to turning on a display is in the context of figure 15 of Fidel, which is on page 792 of the appendix.

[00:02:37] Speaker 03:
And what it shows is a sequential authentication mechanism in which a user is only permitted access to restricted resources upon completion of authentication.

[00:02:47] Speaker 03:
Now the board found and the appellees have not disputed that in the case of Fidel, a display itself can be a restricted resource.

[00:02:55] Speaker 03:
So to the extent Fidel says anything about the timing of authentication relative to turning on a display,

[00:03:00] Speaker 03:
sequential operation in which a user first authenticates and then is given access to the display.

[00:03:07] Speaker 03:
Gagnon, the second reference underground one, on the other hand, says nothing about activating the display.

[00:03:13] Speaker 03:
It is only about authenticating a user while powering on a device.

[00:03:19] Speaker 01:
And the board found that to be similar to waking up a device, right?

[00:03:25] Speaker 01:
The initial interaction between a user and a device, there's something analogous between waking up a device and turning on a device.

[00:03:36] Speaker 03:
It did, Your Honor, and we think that that finding is not supported by substantial evidence.

[00:03:41] Speaker 01:
The reason... The reference in Fidel to talking about quickly and seamlessly authenticating a user whenever the user is turning on a device or unlocking a device or waking up a device and talking about Fidel paragraph 4.

[00:03:59] Speaker 01:
that statement by Fidel doesn't count as substantial evidence to support the board's finding that there is some kind of Analogy between waking up a device and powering on a device I don't think it does your honor and the reason is that Fidel while it uses the term wakes here and

[00:04:20] Speaker 03:
It never anywhere else in its disclosure says what wakes mean, what wakes means.

[00:04:27] Speaker 03:
So we don't.

[00:04:27] Speaker 02:
That doesn't seem to be responsive to the question.

[00:04:30] Speaker 02:
The question is why isn't turning on and off similar to changing from sleep to awake state?

[00:04:41] Speaker 03:
And I'm not saying that

[00:04:42] Speaker 03:
Turning on a device is never similar to waking from a sleep state.

[00:04:47] Speaker 03:
But I think what we have to look at here is the reasons that the board and the appellees gave for finding a motivation to combine.

[00:04:54] Speaker 03:
And I don't think those are supported by substantial evidence.

[00:04:57] Speaker 02:
One of those... Not supported by substantial evidence to say that turning on and off and waking are not similar?

[00:05:06] Speaker 03:
I don't... What I don't think is supported by substantial evidence is the fact that those might be similar don't

[00:05:13] Speaker 03:
give a person of ordinary skill and the art a motivation to combine to change the exact timing mechanism of authentication relative to turning on a display of Fidel.

[00:05:27] Speaker 03:
And one of the reasons for that is that Fidel itself, as I stated earlier, already discloses a timing mechanism.

[00:05:36] Speaker 03:
Gaggro, on the other hand, discloses a different timing mechanism.

[00:05:39] Speaker 03:
A person of ordinary skill in the art would not be motivated to change the timing mechanism of Fidel in light of Gaggro, given that both appear to already authenticated users successfully.

[00:05:50] Speaker 03:
Now, I do want to come back to what Fidel says about waking, because the board seemed to take some inconsistent findings on Fidel.

[00:06:02] Speaker 03:
On the one hand, it found that we don't know what Fidel means by wakes.

[00:06:06] Speaker 03:
It never uses the term wakes beside in paragraph four.

[00:06:09] Speaker 03:
And paragraph four, by the way, is on step 93 of the appendix.

[00:06:12] Speaker 01:
What would be an alternative understanding of wakes, the device, as that statement is used by Fidel, other than waking up a device from a sleep state?

[00:06:27] Speaker 03:
It could be waking a device from a sleep state, but I don't think that necessarily means that the screen itself is turning on.

[00:06:33] Speaker 03:
Now, of course, we all know today that when you wake a device, it usually turns on the display.

[00:06:40] Speaker 03:
But we don't know.

[00:06:42] Speaker 01:
I guess your burden is you have to convince this court that it was unreasonable for the board to read the phrase, wakes the device,

[00:06:55] Speaker 01:
as meaning waking up a device from a sleep state.

[00:06:59] Speaker 01:
And why, therefore, is that an unreasonable reading by the board of the reference?

[00:07:08] Speaker 03:
Well, I don't think it's necessarily unreasonable to say that waking means waking from a sleep state.

[00:07:14] Speaker 03:
What I don't think is reasonable is the finding that waking necessarily has something to do with turning on the display.

[00:07:23] Speaker 03:
Again, it never uses the term wake besides paragraph four.

[00:07:26] Speaker 03:
We don't know that wake has anything to do with turning on the display.

[00:07:30] Speaker 03:
It could be, for example, the device is on but in some standby mode.

[00:07:34] Speaker 03:
Waking wakes it somehow, but it doesn't wake the display.

[00:07:39] Speaker 03:
It maybe activates some kind of other function.

[00:07:41] Speaker 03:
So again, we don't know what Fidel actually means by wake relative to turning on a device.

[00:07:47] Speaker 03:
And so I don't think the board could reach the conclusion necessarily that

[00:07:53] Speaker 03:
a person of ordinary skill and the art, based on this mere disclosure about wakes would combine the teachings of gag road and its timing of authentication.

[00:08:03] Speaker 01:
I don't recall.

[00:08:05] Speaker 01:
Does your side have some expert testimony about how, in the context of Fidel, what Fidel was meaning when it said wakes the device is something very likely different than what the board found wakes the device to mean in Fidel?

[00:08:23] Speaker 03:
I don't believe so that we have anything specifically beyond what is in our papers, if that makes sense.

[00:08:30] Speaker 03:
And I don't believe it appears in the appendix.

[00:08:36] Speaker 03:
If I may turn to the second reason that the board gave for finding a motivation to combine Fidel with Gagnarone, it was based on the similarity of the references of Fidel and Gagnarone and specifically that both relate to

[00:08:50] Speaker 03:
whether a user is indicating an initial interaction with the device and whether a user should be allowed to interact with the device.

[00:08:58] Speaker 03:
One, that was based solely on expert testimony.

[00:09:00] Speaker 03:
It wasn't based on any kind of evidence.

[00:09:02] Speaker 03:
But second, and I think more importantly, that motivation says nothing about the timing of authentication relative to turning on a display.

[00:09:09] Speaker 03:
It doesn't tell us that a person of an ordinary skill may or would be motivated to combine the timing of authentication relative to powering on a device with Fidel to achieve the specific timing of the claims of the 557 patent.

[00:09:26] Speaker 03:
Turning to ground two, which is Gertz in view of Herfit.

[00:09:31] Speaker 03:
As with ground one, neither Gertz nor Herfit discloses the simultaneously limitations.

[00:09:36] Speaker 03:
Gertz for its part, like Fidel, discloses a sequential operation in which a user presses a button, is prompted to authenticate, and then authenticates.

[00:09:46] Speaker 03:
So in this case, the screen turns on before authentication.

[00:09:50] Speaker 03:
In Herfit, on the other hand, authentication occurs when turning on the device, like Gaggenrode does.

[00:09:59] Speaker 03:
And Herfit is actually explicit on this point.

[00:10:01] Speaker 03:
On page 1127 of the appendix, at column three, it says,

[00:10:04] Speaker 03:
that there is a direct relationship between use, i.e.

[00:10:07] Speaker 03:
switching on slash off and authentication.

[00:10:11] Speaker 03:
Again, we'd submit that the board erred by finding a motivation to combine Gertz with Herfit.

[00:10:17] Speaker 03:
It found two bases for finding a motivation to combine.

[00:10:21] Speaker 03:
One, an express motivation based on Herfit's statement that it allows authentication without additional effort for the user.

[00:10:29] Speaker 03:
Now this is just a goal.

[00:10:31] Speaker 03:
It doesn't tell us why a person of ordinary skill in ER would

[00:10:35] Speaker 03:
Combine the references to achieve the specific timing considerations of the 557 patent.

[00:10:44] Speaker 03:
And I think there's a good reason why a person with organized skill in the art would not.

[00:10:49] Speaker 03:
Herfit, for its part, as I said, it discloses that there's a direct relationship between use switching on and off.

[00:10:58] Speaker 03:
And in fact, it discloses what it calls a renewed switch-on procedure, where if a user

[00:11:05] Speaker 03:
doesn't use the device for a specific period of time.

[00:11:07] Speaker 03:
It goes into a standby state.

[00:11:09] Speaker 03:
And then to re-authenticate, the user must engage in a renew switch-on process, which would, in fact, require turning off the device and then turning it back on, which is a pretty convoluted process.

[00:11:24] Speaker 03:
And it would not make sense to combine that with Fidel to achieve limitations of the 557 patent.

[00:11:34] Speaker 02:
Other questions, I'll reserve the remainder of my time for rebuttal.

[00:12:02] Speaker 00:
Thank you.

[00:12:02] Speaker 00:
May it please the court.

[00:12:05] Speaker 00:
The only question on appeal with respect to the 557 is whether the board had substantial evidence to find a motivation to combine.

[00:12:13] Speaker 00:
And because there were two entirely independent grounds on which the board relied, petitioner or appellant rather, would have to succeed as to both of them in order to prevail.

[00:12:26] Speaker 00:
The board extensively discussed the motivation to combine over

[00:12:30] Speaker 00:
ten pages with respect to the first, over six with respect to the second, referring back to its earlier discussion.

[00:12:37] Speaker 00:
In the course of that extensive discussion, the board cited and credited the testimony of Petitioner's Expert five times on pages 31, twice on page 34, 36, page 41.

[00:12:53] Speaker 00:
Specifically, with respect to the issues raised by petitioner in their opening argument, the board credited Dr. Peterson's statement that waking from a sleep state, as in Fidel,

[00:13:07] Speaker 00:
and powering on a device, as in Gagnorod, were analogous initial interactions, situations, by virtue of what was known in the art.

[00:13:18] Speaker 00:
And in the reply brief, he actually cited a further resource, pain, for that purpose, but also citing the fact that Fidel itself

[00:13:27] Speaker 00:
cites these three initial interactions powering on unlocking and waking in a single discussion of why it would be desirous to authenticate and turn the device on or wake or unlock very efficiently.

[00:13:48] Speaker 00:
quickly and so this court has said in the acoustic technologies case that the board can rely exclusively on expert technology testimony if it's well supported and that is well supported in this case so that alone would be sufficient

[00:14:06] Speaker 00:
The suggestion that figure 15 of Fidel is limiting, the board considered and rejected.

[00:14:13] Speaker 00:
It noted that Fidel specifically says that the screen may or may not be restricted.

[00:14:21] Speaker 00:
And the board cited that appellant does not even discuss that discussion.

[00:14:28] Speaker 00:
Appellant's own expert acknowledged that Fidel was not about timing.

[00:14:34] Speaker 00:
So even if that one embodiment was about a sequential thing, Fidel doesn't describe the timing.

[00:14:43] Speaker 00:
And the board didn't rely on Fidel for the timing.

[00:14:46] Speaker 00:
The board relied on Gaggenrod.

[00:14:49] Speaker 00:
Gaggenrod, over the course of three pages, three times, specifically says that powering on

[00:14:55] Speaker 00:
and authenticating the fingerprint happen simultaneously or concurrently, as Gagnerow says.

[00:15:03] Speaker 00:
So the board is relying on Gagnerow, which also puts together the scanner and the power on button for the simultaneously aspect, and relying on Fidel in light of iOS for the activating with use of the home button.

[00:15:19] Speaker 00:
And again, it's not just Fidel, because appellant wants only to talk about Fidel.

[00:15:25] Speaker 00:
They ignore that the board on page 30 specifically cites to iOS, noting that iOS discloses that activating the home button is what switches the display screen from an inactive to an active state.

[00:15:44] Speaker 00:
The similarities of the technology, each of which describes embedding the fingerprint scan with the button, the home button or the power on button, the similarities of what they're describing, these initial interactions with the device and the fact that

[00:16:02] Speaker 00:
together they disclose that simultaneously when applying Gagnaro's teaching to Fidel is sufficient.

[00:16:10] Speaker 00:
With respect to the motivation, the board relied on Fidel's own motivation in paragraph four, in which it recites the goal of quick and seamless authentication.

[00:16:23] Speaker 00:
But again, Fidel talks mostly about where to put the scanner, not about how to achieve that timing.

[00:16:30] Speaker 00:
Gagnerode comes along and says explicitly how to do that concurrently, and moreover says that doing so, time is saved, user friendliness is increased, and thus ties it all back together.

[00:16:44] Speaker 00:
The same goal that was recited by Fidel.

[00:16:47] Speaker 00:
That is more than sufficient to suffice under the substantial evidence standard.

[00:16:54] Speaker 00:
And with respect to the second ground, which was also well

[00:16:58] Speaker 00:
supported.

[00:16:59] Speaker 00:
I want mostly to just reference the fact that the appellant discussed their Herfit disclosure and with respect to its renewed switch-on process, the board specifically credited Dr. Peterson's testimony that that would not have entailed powering all the way down in order to power back

[00:17:21] Speaker 00:
on, that would be defeat the purpose of a standby mode.

[00:17:25] Speaker 00:
A standby mode is meant to allow you to get back to activated status more easily.

[00:17:32] Speaker 00:
The board credited that.

[00:17:33] Speaker 00:
That is more than sufficient.

[00:17:35] Speaker 00:
But also, more importantly, the board did not rely on that because the board was relying on Gertz to disclose the activating with the press of the button.

[00:17:51] Speaker 00:
It was relying on Herpet to disclose simultaneously.

[00:17:56] Speaker 00:
So unless the court has questions, we will rely on our brief.

[00:18:02] Speaker 00:
Thank you.

[00:18:03] Speaker 00:
Okay, thank you.

[00:18:08] Speaker 02:
Mr. Feinahan, you've got four minutes here if you need it.

[00:18:27] Speaker 03:
Thank you, Your Honor.

[00:18:28] Speaker 03:
Just a couple of points.

[00:18:32] Speaker 03:
Councilor DiPelli's mentioned expert testimony about the similarity of the references.

[00:18:37] Speaker 03:
That expert testimony, as I said in my opening argument, was essentially that both Fidel and Gaggarot, on the one hand, and Gertz and Hartford, on the other hand, are about fundamental human-computer interactions.

[00:18:50] Speaker 03:
And for that reason, that they would be combined.

[00:18:53] Speaker 03:
The only thing that he cited in his initial

[00:18:57] Speaker 03:
The declaration was his own say so.

[00:18:58] Speaker 03:
It was conclusory testimony.

[00:19:00] Speaker 03:
He did, as counsel stated, come back with an additional reference that he says supported his position.

[00:19:07] Speaker 03:
But as the board found, and this is on page 34 of the appendix, that new evidence showed only that issues pertaining to whether a user is granted access to a device when he or she indicates a desire to access it were well known in the art.

[00:19:21] Speaker 03:
That again says nothing about why a person of an ordering skill in the art would be motivated to combine the references to achieve the specific timing of authentication relative to turning on the display that's claimed by the 557 patent.

[00:19:36] Speaker 03:
The one other thing that I wanted to respond to was the board's finding that Herford's renewed switch-on process does not actually disclose turning the device off and all the way back on because it would,

[00:19:50] Speaker 03:
defeat the purpose of standby mode.

[00:19:52] Speaker 03:
The board did find that.

[00:19:53] Speaker 03:
That finding is wrong.

[00:19:54] Speaker 03:
It's inconsistent with Herford's statement that there's a direct relationship between use and authentication and switching on and off a device.

[00:20:03] Speaker 03:
And it would not defeat the purpose of standby mode.

[00:20:05] Speaker 03:
Stepping back a little bit, Herford is about a television in which a user can authenticate him or herself for fee-based services.

[00:20:14] Speaker 03:
So for example, a TV channel that requires a subscription

[00:20:19] Speaker 03:
can access him or herself while turning on a device.

[00:20:23] Speaker 03:
After not using the device for a certain amount of time, the device can go into standby mode, in which case fee-based services, the access to fee-based services would be cut off.

[00:20:35] Speaker 03:
Herfit is explicit that

[00:20:37] Speaker 03:
If a user does not authenticate, the user can still get access to non-fee based services.

[00:20:42] Speaker 03:
And so even if the user didn't authenticate in standby mode, there would still be access to these non-fee based services.

[00:20:49] Speaker 03:
So for that reason, the standby mode in Herfit does require, would require turning the device off and then back on to authenticate the user.

[00:20:59] Speaker 03:
Unless there are no further questions, we'd ask that the board reverse, I'm sorry, the court reverse the board's final decision.

[00:21:07] Speaker 02:
Thank you.

[00:21:08] Speaker 02:
Thank both counsel.

[00:21:09] Speaker 02:
The case is submitted.

[00:21:10] Speaker 02:
I suggest you just keep your seats rather than switch tables.