[00:00:00] Speaker 04:
All right.

[00:00:00] Speaker 04:
The next case is number 20, 1971, in Ray South ULLC.

[00:00:06] Speaker 04:
Mr. Burnett, please proceed.

[00:00:11] Speaker 02:
May I please the court?

[00:00:13] Speaker 02:
I'm Alan Burnett, representing Appellant South ULLC.

[00:00:19] Speaker 02:
This, all rejections on appeal cannot stand and must be reversed.

[00:00:25] Speaker 02:
I would like to begin with the prima facie case of obviousness.

[00:00:29] Speaker 02:
which was not established for any claims and in particular was not established for claim one by either the examiner during prosecution or by the PTAP decision.

[00:00:42] Speaker 02:
There are a couple elements in claim one that are not even addressed and those elements include a limitation to a mobile device and a limitation to a touch sensor display.

[00:00:58] Speaker 02:
During the, I would like to also go in and discuss briefly claim construction.

[00:01:09] Speaker 02:
So the scope of claim one, if I can draw your attention to page 25 of the blue brief is a pictorial representation of what is being claimed in claim one.

[00:01:27] Speaker 02:
And what's that showing is a New York Times web page as it sits on the New York Times web server and how that page is rendered on an emulation of a wireless device running the soft use software.

[00:01:48] Speaker 02:
And in this case, if you look at the page, it's 25

[00:01:58] Speaker 02:
of the blue brief?

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

[00:02:03] Speaker 02:
Got it.

[00:02:09] Speaker 02:
Okay.

[00:02:09] Speaker 02:
So what needs to be focused on here is what is being preserved.

[00:02:15] Speaker 02:
And the only rational way you can interpret this claim is the HTML-based webcon defining the original page layout functionality design that is received.

[00:02:28] Speaker 02:
because all that is received is translated and then that is what's preserved.

[00:02:34] Speaker 03:
Mr. Bernick, this is just Toronto.

[00:02:36] Speaker 03:
Can I ask you this question?

[00:02:38] Speaker 03:
Doesn't the claim cover the simplest imaginable web page?

[00:02:46] Speaker 03:
A claim reads on something where the website is a single page with five words and a rectangle.

[00:02:55] Speaker 03:
And if that's preserved, then the claim element is satisfied.

[00:03:01] Speaker 03:
You don't need anything as complicated as

[00:03:03] Speaker 03:
you know, the very complicated front page of the New York Times.

[00:03:08] Speaker 02:
Yes, yes, you're correct.

[00:03:10] Speaker 03:
So why doesn't the prior art that was relied on here with the testimony suffice to establish that now hypothetical incredibly simple, dull

[00:03:27] Speaker 02:
HTML webpage would be preserved in what is taught in the... In that particular page, there is evidence on the record that there is no way to confirm whether that page is actually rendered correctly.

[00:03:55] Speaker 02:
In the director's brief,

[00:03:57] Speaker 02:
The director acknowledges that and then says, at the very least, it suggests preserving it.

[00:04:05] Speaker 02:
Now, your question goes to... Is that not enough?

[00:04:11] Speaker 01:
Is that not enough for a procedure to combine the suggestion of?

[00:04:17] Speaker 02:
It is, and I'm going to segue into the motivation to combine, because that's...

[00:04:26] Speaker 02:
very important here.

[00:04:28] Speaker 02:
So, as KSR has held, this consideration must be, you know, whether a FACEDA would combine the references to a payment claimed invention at the time of the invention, not at any other time, at the time of the invention, which is in the 2000-2001 timeframe.

[00:04:49] Speaker 03:
Right, but just to cut to the chase, don't you have this giant problem that the references themselves say, this would be really useful for personal digital assistance?

[00:05:03] Speaker 02:
No.

[00:05:05] Speaker 03:
Why is that not significant?

[00:05:07] Speaker 02:
No.

[00:05:07] Speaker 02:
Okay, so that is significant as applied to Add++.

[00:05:14] Speaker 02:
It is not significant as applied to the browser because there's never any statement

[00:05:19] Speaker 02:
has acknowledged by the director anywhere where any assertion is made as it would be desirable to have the browser.

[00:05:28] Speaker 03:
Does the claim speak of a browser?

[00:05:36] Speaker 02:
Well, it speaks of a web page that's being preserved.

[00:05:41] Speaker 02:
So that implies the use of a web browser.

[00:05:46] Speaker 02:
to do so.

[00:05:46] Speaker 02:
So let me draw your attention to page 32.

[00:05:51] Speaker 02:
Are the hyperlinks preserved?

[00:05:55] Speaker 02:
The hyperlinks under PAD++ were preserved.

[00:06:00] Speaker 01:
They were?

[00:06:01] Speaker 01:
Yes.

[00:06:02] Speaker 01:
Why is it that enough?

[00:06:06] Speaker 02:
Can I proceed with the motivations combined?

[00:06:10] Speaker 02:
Sure.

[00:06:11] Speaker 02:
Okay.

[00:06:11] Speaker 02:
So on page 32,

[00:06:15] Speaker 02:
of the BlueBreeze is a set of renderings that is using Pad++, the window port of the software, of an exemplary set of pages.

[00:06:29] Speaker 02:
And this is what a Focita would do in 2000, 2001 times.

[00:06:38] Speaker 02:
You're looking in your screen, suggesting if you're going to combine

[00:06:42] Speaker 02:
at PAD++ in 2001.

[00:06:48] Speaker 02:
And my objective here is, in 2001, is to render pages that are commonly viewed on the internet in 2001 on any site device, including a mobile device.

[00:07:03] Speaker 02:
And the claims are through a mobile device.

[00:07:06] Speaker 02:
So I want to clarify, this is not KFR

[00:07:12] Speaker 02:
level subject matter.

[00:07:14] Speaker 02:
And what I mean by that, under KSR, a simple substitution of an electronic sensor in the location of a pivot.

[00:07:24] Speaker 02:
They might take a skilled FACETA in the mechanical part, you know, perhaps a week to figure out.

[00:07:32] Speaker 02:
This is a case where you're looking at, if you're going to port, this FACETA is going to port PADS++ to a PDA,

[00:07:41] Speaker 02:
They're looking on the level of a year or more man years of effort with an extraordinary level of

[00:07:48] Speaker 02:
experimentation.

[00:07:50] Speaker 03:
That's why I just want to come back to what I asked about.

[00:07:54] Speaker 03:
It seems to me you had a lot of very persuasive evidence that it was a major effort to make a commercially useful zoom type product for users to be able to use across

[00:08:17] Speaker 03:
the universe or even some significant part of the universe of web pages.

[00:08:21] Speaker 03:
But the claim doesn't require that.

[00:08:24] Speaker 03:
The claim would be satisfied by a simple page that was nothing other than what Ben Peterson's home page with, you know, seven lines of or nine lines of text on it that is shrunk down to appear on the small PDA screen with the same indentations and line spacing.

[00:08:49] Speaker 03:
Why is that, and which I think, I gather that's essentially what the board said and what's relied on in the government.

[00:08:57] Speaker 02:
Well, that's what they're relying, but then they're, okay, so then they're looking at motivations combined and part of the motivations combined is centered around a false statement that is demonstrably false in the favor of Peterson 5 where

[00:09:16] Speaker 02:
He said that it's being designed, and not was designed, but is being designed to operate on, and that included a PD.

[00:09:25] Speaker 02:
Ben Peterson himself acknowledged that was not a true statement, that what it was targeted for was Linux and systems running X Windows on a desktop.

[00:09:39] Speaker 02:
And that's confirmed also in Peterson 4, which is actually the paper that

[00:09:45] Speaker 02:
describes in detail what they actually implemented.

[00:09:48] Speaker 02:
But if I could draw your attention to page 32 of the blue brief, it's showing what the rendering of these pages look like.

[00:10:03] Speaker 02:
And folks see that before they're going to spend an inordinate amount of time, an inordinate effort,

[00:10:10] Speaker 02:
Because in the end, they have to obtain the claimed invention.

[00:10:14] Speaker 02:
So this has to be on a mobile device.

[00:10:18] Speaker 02:
Before they do that, they're going to, especially in a case where the software is downloadable, they're going to test it.

[00:10:25] Speaker 02:
And they're going to look and see, OK, what am I going to end up with the result?

[00:10:29] Speaker 02:
So the result at the end is this is what the pages would look like.

[00:10:34] Speaker 02:
There would be zero.

[00:10:36] Speaker 02:
commercial motivation to do this.

[00:10:39] Speaker 02:
There'd be no motivation for a FOSITA to do this.

[00:10:42] Speaker 02:
You know, KSR has to mention the consideration of market conditions or motivation by market forces.

[00:10:51] Speaker 02:
There would be none.

[00:10:52] Speaker 02:
There's just no motivation here.

[00:10:56] Speaker 02:
In addition, as argued elsewhere in both the opening and reply brief, is that

[00:11:04] Speaker 02:
it would be inoperative.

[00:11:06] Speaker 02:
It would be unusable.

[00:11:10] Speaker 02:
So to give you an example, I trust that all of you are familiar with deep pinch zooming on say an iPhone or an Android device.

[00:11:24] Speaker 02:
So imagine if you did a deep pinch zoom and you moved your fingers

[00:11:30] Speaker 02:
And nothing happened.

[00:11:32] Speaker 02:
Nothing changed in 20 seconds later.

[00:11:34] Speaker 02:
It just, there was an arbitrary different zoom level.

[00:11:39] Speaker 02:
That would be completely unusual.

[00:11:41] Speaker 02:
How are you going to control, you want to zoom in on something, how would you be able to do that?

[00:11:46] Speaker 02:
And that would be the result.

[00:11:49] Speaker 02:
That would be the result, you know, that 20 seconds in this example, on the fastest PDA processor available at the time of the invention.

[00:12:00] Speaker 02:
And under, you know, the other thing I want to look at, and this applies, this does grow into claim one, and it applies to claim two, which is to a mobile phone, is that the board did not, for those claims, for claim two, did not back up the examiner.

[00:12:23] Speaker 02:
They came up with their new, ordinary creativity rejection because they realized,

[00:12:30] Speaker 04:
Please continue your thought.

[00:12:32] Speaker 02:
Okay.

[00:12:33] Speaker 02:
So they realized that they couldn't support the examiners' rejections.

[00:12:39] Speaker 02:
They came up, you know, this creative... I see they're using ordinary creativity would have, you know, changed the technical requirements and the director raised this, you know, a level further and saying they would have matched it to their requirements.

[00:12:59] Speaker 02:
And in doing so,

[00:13:01] Speaker 02:
They're basing that on testimony of Scott Forstall from Apple of what Apple did as a huge team of engineers six and five to six years later.

[00:13:13] Speaker 02:
It's just, it's not tied to any rational basis.

[00:13:18] Speaker 02:
It also doesn't identify any PDA.

[00:13:23] Speaker 02:
I mean, the expectation is that somehow they would, this person of ordinary skill in the art

[00:13:31] Speaker 02:
would create a processor that didn't exist and implement it in a PDA that didn't exist using an operating system that they don't identify, using a browser that they don't identify.

[00:13:43] Speaker 02:
I mean, I just cannot... Zofiu argues that you cannot establish a prima facie case of obviousness in view of personal web versus Apple in other presidential cases of this court

[00:13:59] Speaker 02:
based on those, that rationale.

[00:14:05] Speaker 04:
Okay.

[00:14:06] Speaker 04:
Any questions for Mr. Burnett at the moment?

[00:14:08] Speaker 02:
We'll have another... I'd like to reserve, yeah, I'd like to reserve the rest for rebuttal.

[00:14:13] Speaker 02:
Thank you.

[00:14:14] Speaker 04:
Yes, then you'll have your rebuttal time.

[00:14:16] Speaker 04:
All right, Mr. Foreman.

[00:14:20] Speaker 00:
Thank you, and may it please the court.

[00:14:22] Speaker 00:
First, I'd like to address the preserving limitation, which was just discussed by the panel.

[00:14:28] Speaker 00:
The preserving limitation requires that the original page layout and functionality and design of the website must be preserved after doing the zooming.

[00:14:39] Speaker 00:
And pad++ shows this, you know, in the pad++ tour reference, appendix pages 1067,

[00:14:52] Speaker 00:
through 1069, and it shows the simple Ben Peterson home page in the normal view, and then the same page in a zoomed in view with the layout preserved and hyperlinks preserved.

[00:15:07] Speaker 00:
And I think the discussion about whether Pad++ needs to be able to render every website in existence

[00:15:20] Speaker 00:
at the time is misleading because, you know, there's evidence here that this website could be preserved and that's certainly sufficient to meet the claim limitation.

[00:15:32] Speaker 00:
So I don't think there's any question about the preserving limitation.

[00:15:36] Speaker 00:
And, you know, in our brief we said, you know, even if it was questionable, then there's at least the suggestion here.

[00:15:46] Speaker 00:
the preserving limitation, which is all that's required in an obviousness analysis.

[00:15:52] Speaker 00:
The next issue I'd like to discuss is the motivation combined.

[00:15:58] Speaker 00:
I mean, here we have about as clear of a motivation combined as you're going to get in the case, where the references themselves, multiple places, are telling the reader that

[00:16:10] Speaker 00:
Pad++ would be ideal for a PDA.

[00:16:15] Speaker 00:
So for example, the references say that the system is designed to operate on platforms ranging from high-end graphics workstations to PDAs, and that Pad++ was created to provide effective access to information on smaller displays, and that the system would be especially attractive for

[00:16:39] Speaker 00:
devices with small screens such as PDAs.

[00:16:42] Speaker 00:
And I think regardless of what was actually done with Pad++, you have to take the references for what they say at face value.

[00:16:51] Speaker 00:
And these references are pointing a skilled artisan directly to the claimed invention to run a zoomable browser on a PDA.

[00:17:03] Speaker 00:
I guess going to

[00:17:05] Speaker 03:
Does it matter in your view that the claim language doesn't use the term browser?

[00:17:12] Speaker 03:
I think Mr. Burnett indicated yes it doesn't, but it does implicitly because the software that's being talked about in the claim, browser is just a shorthand word for that.

[00:17:29] Speaker 00:
Well, I think the claim clearly requires displaying web content in a browser is what is commonly used to display web content, especially in the 2001 timeframe.

[00:17:43] Speaker 00:
So I don't see an issue with that.

[00:17:45] Speaker 00:
Okay.

[00:17:47] Speaker 03:
What about his point that on motivation, nobody would have, I'm not quite sure how to make the point, but I think it is something like a skilled artisan would not have had the motivation to

[00:18:03] Speaker 03:
go down this path because there is no bang for the buck unless you went through the kind of development effort to do what Apple, for example, ultimately did and that's

[00:18:27] Speaker 03:
that requires being able to get this to work on some very, very wide range of web material that handheld device users would want access to, something like that.

[00:18:43] Speaker 00:
So I guess I have a couple of responses.

[00:18:45] Speaker 00:
First, this seems like an argument that wasn't really raised or developed in the brief, that motivation combined is tied to a commercial aspect

[00:18:57] Speaker 00:
that the product would need to be commercially viable.

[00:19:00] Speaker 00:
There would need to be evidence that it would be commercially viable in order to make the combination.

[00:19:05] Speaker 00:
Second, I don't think we have evidence on that point at all.

[00:19:11] Speaker 00:
I mean, we have evidence from software use experts about their attempts to run the pad++ software on a pared down processor.

[00:19:23] Speaker 00:
But that doesn't necessarily go to this point about commercial viability.

[00:19:29] Speaker 00:
And I guess third of all, there was some discussion about the board allegedly relying on testimony from Mr. Forstall and Apple.

[00:19:38] Speaker 00:
And I'm confused by that.

[00:19:41] Speaker 00:
I don't know where that comes from, because I think that there was testimony introduced about Apple's difficulties

[00:19:53] Speaker 00:
the amount of time Apple spent making the iPhone, but the board said that that testimony wasn't necessarily relevant to the obviousness analysis here.

[00:20:02] Speaker 00:
And that's the point that we made in our brief, that just because it took Apple a long time to create its fully formed, commercially viable iPhone product, that doesn't tell you one way or the other whether these claims are

[00:20:23] Speaker 00:
obvious in view of the pad++ references.

[00:20:27] Speaker 00:
Moving on to the issue of reasonable expectation success, as this course has made clear, there doesn't have to be evidence of certainty.

[00:20:42] Speaker 00:
It just has to be reasonable.

[00:20:44] Speaker 00:
And I think that the evidence we have here that

[00:20:48] Speaker 00:
The references themselves suggest running this on a PDA.

[00:20:51] Speaker 00:
You have testimony from Professor Peterson saying that a PDA is just a general purpose computer and that, in his view, certainly by the 1999 time frame, which is still two years prior to 2001, the relevant 2001 date that we have here, that it would have been possible to run PAD++ on a PDA.

[00:21:14] Speaker 00:
That's sufficient to meet the reasonable expectation of success.

[00:21:17] Speaker 00:
the testimony or the evidence that SOPHIE wants to rely on, where they were able to download a copy of Pad++ that was never designed or intended for a PDA and try to run it on a simulated device or device that would simulate the conditions of a PDA,

[00:21:43] Speaker 00:
I mean, that's as clear of a case of bodily incorporation as possible.

[00:21:48] Speaker 00:
And this court has, on numerous occasions, said that the obvious analysis does not require bodily incorporation.

[00:21:54] Speaker 00:
So the idea that one of ordinary skill in the art would just take the existing PAD++ software, not do anything to it, not try to make any modifications to it, and just stick it on a PDA, and if it works,

[00:22:08] Speaker 00:
that would show obviousness.

[00:22:09] Speaker 00:
And if it didn't work, it wouldn't show obviousness.

[00:22:12] Speaker 00:
I mean, that's just not the analysis.

[00:22:14] Speaker 00:
That's not the test.

[00:22:17] Speaker 00:
So I think that a lot of this testing is just irrelevant to the analysis.

[00:22:21] Speaker 00:
And even if the testing is relevant, I mean, it shows that it did perform the zooming.

[00:22:28] Speaker 00:
The experts said that the zooming was slow and somewhat unpredictable.

[00:22:33] Speaker 00:
You know, there's no speed requirements in the claim or any other metrics required in the claim.

[00:22:43] Speaker 00:
I mean, the metrics that SOFIA is relying on come from the PAD++ references, and those were explicitly stated as, you know, intended requirements but not necessary requirements.

[00:22:57] Speaker 00:
And so this idea that because

[00:23:00] Speaker 00:
the testing didn't show a fast animation rate that means there's no reasonable expectation of success.

[00:23:08] Speaker 00:
I mean, it's totally divorced from the claim language, which is nothing about animation rate.

[00:23:13] Speaker 00:
And so I think Judge Stronto was talking about earlier that even though the claim doesn't require a perfectly commercially polished product, it just requires that

[00:23:30] Speaker 00:
there'd be zooming in and zooming out while preserving the website.

[00:23:34] Speaker 00:
And if the zooming in and out are done slower than is commercially acceptable, especially to what we expect now with iPhones, then that doesn't affect the office's analysis.

[00:23:51] Speaker 00:
I guess one last point I want to make is that there was this argument that, well,

[00:23:57] Speaker 00:
The references to a PDA in the pad++ articles only talk about, don't talk about it in the context of the pad++ browser.

[00:24:08] Speaker 00:
And I think that that's not really a relevant argument because they're talking about pad++ is what they call a zooey.

[00:24:20] Speaker 00:
It's a zooming user interface.

[00:24:21] Speaker 00:
And it had multiple applications that use the zooming user interface.

[00:24:26] Speaker 00:
one of which just had plus plus browser.

[00:24:30] Speaker 00:
So the fact that the references say, well, the zooming user interface would be useful on a PDA means that I read it as any application running the zooming user interface would be beneficial on a PDA, and that includes the browser.

[00:24:49] Speaker 00:
So the fact that the references to the PDA don't appear in the specific parts of the

[00:24:56] Speaker 00:
documents discussed in the browser don't disqualify those references.

[00:25:05] Speaker 00:
So, I have nothing further.

[00:25:10] Speaker 00:
I'm happy to answer any questions of the panel.

[00:25:13] Speaker 00:
Any more questions to Mr. Foreman?

[00:25:15] Speaker 00:
No.

[00:25:17] Speaker 02:
No.

[00:25:17] Speaker 04:
Okay.

[00:25:18] Speaker 04:
Thank you.

[00:25:18] Speaker 04:
Mr. Burnett, you have your rebuttal time.

[00:25:21] Speaker 02:
Thank you.

[00:25:22] Speaker 02:
First of all,

[00:25:24] Speaker 02:
The directors just said that there is no argument concerning marketplace demand or anything related to that.

[00:25:33] Speaker 02:
I draw your attention to page 21 of the gray brief, the reply brief.

[00:25:39] Speaker 02:
And it specifically says, it specifically identifies that TSR explains that the facts relative to whether rationale combined exist include the effects of demands known to the design community or present in the marketplace.

[00:25:55] Speaker 02:
Further on the same page, just above that, Ben Peterson acknowledged that they dropped development of the browser.

[00:26:04] Speaker 02:
There's a question, what did you do with the browser?

[00:26:06] Speaker 02:
And they said, since 1995, the web has advanced greatly.

[00:26:09] Speaker 02:
And we realized that we didn't want to get into the business of competing with major web browser companies.

[00:26:15] Speaker 02:
That's a polite way to say there's zero chance they would have been able to do that.

[00:26:18] Speaker 02:
And this was in, he was recognizing the statement about 1998.

[00:26:23] Speaker 02:
between 1995 and 2000, HTML went from something extremely simple to something very complicated and requiring with the standardization of HTML4 and cascading style sheets too.

[00:26:40] Speaker 02:
This is what I proceed at the time of the invention would want to support.

[00:26:49] Speaker 02:
Secondly,

[00:26:50] Speaker 02:
With respect to the comment regarding Scott Forstall, in the appeal board decision, it correctly addresses that.

[00:27:02] Speaker 02:
At page 18, which is appendix page 18 as well, they discuss what Forstall identified were problems.

[00:27:12] Speaker 02:
And then, in the following page, they say, a coordinator, one of ordinary skill in the art and demonstrating ordinary creativity

[00:27:20] Speaker 02:
would experiment with the technical features, window size, touch interface, performance, processor, speed of data, and memory, such that pad++ could run on a mobile device.

[00:27:30] Speaker 02:
And then they even say the iPhone.

[00:27:32] Speaker 02:
The iPhone was seven years later.

[00:27:34] Speaker 02:
And then following that, they say they recognize that the art of record, which is the Apple, Newton, and Nokia communicator in a Palm 7, it says,

[00:27:49] Speaker 02:
Even if the patent owners correct that there is a lack of motivation to combine pad++ with a mobile phone, they identified Apple phone and then Apple, Nokia, and Palm.

[00:27:59] Speaker 02:
It says Apple, Nokia, and Palm are cumulative references.

[00:28:04] Speaker 02:
The evidence was it wouldn't be able to be used with those, not by just a small amount, but the nearest one was 2,700 times too slow to meet the animation requirements.

[00:28:17] Speaker 02:
If you drop the animation requirements, which are 10 frames per second, if you drop those to one frame per second, it's still 207 times slower.

[00:28:27] Speaker 02:
Finally, I want to address this comment with regard to the software.

[00:28:35] Speaker 02:
So with regard to the software, what that modeling represented is if someone implemented the software based on

[00:28:47] Speaker 02:
the design, which is actually reflected more than anything else by the source code, this is the expectation they would see.

[00:28:56] Speaker 02:
This is actually something that a Focita, again, would do before expending a year worth of effort.

[00:29:03] Speaker 02:
They're going to look at it and say, wow, this is designed to run on a Pentium Pro PC with a numeric processing unit.

[00:29:15] Speaker 02:
We're considering on a mobile device without that.

[00:29:20] Speaker 02:
And they're going to immediately recognize, no, it's not going to be possible to implement this.

[00:29:25] Speaker 02:
So we're not even going to go down that road.

[00:29:30] Speaker 04:
Okay.

[00:29:30] Speaker 04:
Any more questions, Mr. Burnett?

[00:29:34] Speaker 02:
No, ma'am.

[00:29:35] Speaker 04:
Okay.

[00:29:36] Speaker 04:
Thank you.

[00:29:36] Speaker 04:
Thanks to both counsel.

[00:29:38] Speaker 04:
The case is taken under submission.

[00:29:43] Speaker 02:
The honorable court is adjourned until tomorrow morning at 10 a.m.