[00:00:00] Speaker 00:
Our first case for argument today is 21-1435, BMW of North America versus Terram Technologies.

[00:00:09] Speaker 00:
Mr. Lavineux, please proceed.

[00:00:12] Speaker 02:
Thank you, Your Honor.

[00:00:13] Speaker 02:
This is Lionel Lavineux from Finnegan for BMW, and we're here to talk about an IPR appeal that deals with three issues, three claim groups.

[00:00:22] Speaker 02:
I'd like to take the first claim group that we talk about.

[00:00:26] Speaker 02:
It's actually in our briefing, it's listed as claim group number two,

[00:00:30] Speaker 02:
and its claims 10 through 12.

[00:00:32] Speaker 02:
And the reason I've selected claim group number two as the first item to talk about is because of the clarity of the error by the board.

[00:00:41] Speaker 02:
And that is, this deals with measuring a range rate.

[00:00:44] Speaker 02:
And in measuring a range rate, it was argued by BMW that the prior art references a relative velocity.

[00:00:53] Speaker 02:
And when one of ordinary skill in the art understands that

[00:00:59] Speaker 02:
Under mere math, a relative velocity is a rate of change over a rate of time with a direction.

[00:01:06] Speaker 02:
That's the same exact thing as a range rate, which is a rate of range over a rate of time without a direction.

[00:01:14] Speaker 02:
The board at the oral hearing specifically asked me whether or not a calculation was required in order to convert the relative velocity of the Kodabe reference

[00:01:26] Speaker 02:
into a range rate which is in the claim.

[00:01:29] Speaker 02:
And I specifically said that no calculation is required.

[00:01:33] Speaker 02:
Not only did I say that at the oral hearing, but we also briefed that no calculation was required.

[00:01:39] Speaker 02:
Despite the level of clarity on that exact issue as to whether or not a calculation is required, the board found that a calculation was required.

[00:01:50] Speaker 02:
And because a calculation was required,

[00:01:52] Speaker 02:
they found that we had not satisfied the obviousness requirements for claims 10 through 12.

[00:01:59] Speaker 02:
So that is simply an error that the board made that one of ordinary skill in the art would have understood that a relative velocity is a disclosure of a range rate, the only difference being the relative velocity has a directional aspect.

[00:02:16] Speaker 02:
So that is the first and we believe the simplest argument that we present with regard to claims 10 through 12.

[00:02:23] Speaker 02:
As far as the second claim group, it is a similar issue but perhaps not as clearly an error and that is the second claim group that I'd like to talk about is what we refer to as claim group number three and that's claims five and nine.

[00:02:39] Speaker 02:
Now in the original petition that we filed, we explained that there was the BMW brochure

[00:02:47] Speaker 02:
And when the BMW brochure was combined with the Schmidt reference, that that satisfied claims five and nine.

[00:02:54] Speaker 02:
The board found that we had met our prima facie showing that there was unpatentability.

[00:03:00] Speaker 00:
And... Mr. Laveau, let me please back you up to your first argument.

[00:03:04] Speaker 00:
I'm on the appendix during the hearing, pages 1002 to 10028.

[00:03:11] Speaker 00:
And I guess I'm not sure that it's as clear as you're suggesting that no math was involved in ascertaining or getting to the range rate.

[00:03:30] Speaker 00:
In that testimony, or it's not testimony since you're a lawyer, but in your attorney argument, I guess the judge says that he or she, Judge Tornquist,

[00:03:40] Speaker 00:
wasn't clear what you said in your reply and what had to happen that there still has to be some math that's completed from the data.

[00:03:48] Speaker 00:
And you say, well, there's math in that there's a math.

[00:03:51] Speaker 00:
It's a mathematical fact.

[00:03:54] Speaker 00:
And then you say, it's different from the change in y'all rate where there's a calculation, but the rate rate, there is no calculation.

[00:04:02] Speaker 00:
When we refer to math, we're just saying simple math.

[00:04:05] Speaker 00:
I guess simple math is still math, Mr. Labineau.

[00:04:08] Speaker 00:
I don't understand

[00:04:09] Speaker 00:
I don't understand your argument today as how it seems to mesh with the actual hearing testimony or hearing argument.

[00:04:19] Speaker 02:
Yes, Your Honor.

[00:04:21] Speaker 02:
And that's perfectly understandable.

[00:04:23] Speaker 02:
And perhaps we did not use the right term when Dr. Eskidarian explained what he meant by mere math.

[00:04:30] Speaker 02:
And what Dr. Eskidarian meant when he explained that it's mere math, he means that if you look at it, then you can see that range rate

[00:04:40] Speaker 02:
and relative velocity are the same, and that there's no calculation.

[00:04:44] Speaker 02:
So for example, on page 46 of our brief, we have a demonstrative that we used at the oral hearing with respect to the question that you just mentioned.

[00:04:54] Speaker 02:
And in that demonstrative, it lists for the board the calculations, or not the calculations, but the formula for relative velocity and range rate.

[00:05:06] Speaker 03:
Mr. Levin, doesn't the demonstrator itself say that it's not evidence?

[00:05:11] Speaker 02:
The demonstrative itself is not evidence, Your Honor, but the demonstrative does cite to the evidence of record, which is the escadarian deposition.

[00:05:26] Speaker 03:
Yeah, but the escadarian deposition doesn't have the same information in it as the demonstrative has.

[00:05:34] Speaker 02:
That is true.

[00:05:35] Speaker 03:
I read your expert declaration to be, well, math is math.

[00:05:39] Speaker 03:
Everybody knows that, but he didn't explain why.

[00:05:42] Speaker 03:
And I understood you to be using the demonstrative to explain why.

[00:05:47] Speaker 02:
Well, if I limit it only to what Dr. Eskidarian said in his supplemental declaration, which is paragraph 101, Dr. Eskidarian said.

[00:05:58] Speaker 03:
What page is that in the record news?

[00:06:05] Speaker 02:
That is page 962.

[00:06:13] Speaker 02:
And so if we look at that under paragraph 101, Dr. Eskidarian says, if one simply views, this is paragraph 101, if one simply views the relative velocity without considering the velocity's direction of motion, they will see the object range rate.

[00:06:31] Speaker 02:
So that is Dr. Eskidarian.

[00:06:34] Speaker 02:
illustrating that it can be seen from the formula.

[00:06:38] Speaker 02:
So the confusion that the board had is that he says right before that, only mere math is needed.

[00:06:45] Speaker 02:
So in his mind, when he says math, he doesn't mean a calculation.

[00:06:50] Speaker 02:
What he means is that it's merely looking at the formula.

[00:06:55] Speaker 02:
It's a mathematical fact.

[00:06:57] Speaker 02:
It's a fact of nature, not that it's a calculation.

[00:07:01] Speaker 02:
That's what Dr. Eskaderian intended to say with his mere math analogy.

[00:07:06] Speaker 00:
Perhaps that was not the best.

[00:07:07] Speaker 00:
Well, that's what you would like him to have said, but that isn't in fact what he said.

[00:07:11] Speaker 00:
And we, this is a substantial evidence question.

[00:07:15] Speaker 00:
How the board understood his testimony, we reviewed for substantial evidence and

[00:07:21] Speaker 00:
He, quite frankly, didn't say what you wish he had said.

[00:07:25] Speaker 00:
He didn't say what was in your demonstrative.

[00:07:26] Speaker 00:
He said something different.

[00:07:28] Speaker 00:
And it's hard for me to imagine that the board didn't have substantial evidence for its conclusion.

[00:07:33] Speaker 00:
And when he said near math is needed, that required a calculation.

[00:07:37] Speaker 00:
Near math wouldn't be needed to look at two things and know that they are absolutely identical.

[00:07:41] Speaker 00:
If you had an identical twin sitting here, I wouldn't need near math to figure that out.

[00:07:48] Speaker 02:
Well, we believe, Your Honor, that

[00:07:50] Speaker 02:
What Dr. Eskaderian says when he explains what he meant by mere math is needed is not that a calculation is needed, but what he says directly after that, which is, quote, if one simply views the relative velocity without considering the velocity's direction of motion, they will see the object range rate, end quote.

[00:08:10] Speaker 02:
So that's him quoting specifically what one would understand from the formula.

[00:08:17] Speaker 00:
I can see how that's your argument, but the problem is you're stuck with the actual expert declaration, which says mere math is needed.

[00:08:26] Speaker 00:
How do I conclude that the board didn't have substantial evidence for its determination when the declaration actually said that?

[00:08:34] Speaker 00:
You're telling me now it said something, but I shouldn't understand it to have its plain meaning, but I don't review it in the first instance.

[00:08:40] Speaker 00:
It's a substantial evidence question.

[00:08:42] Speaker 00:
The board reviewed it.

[00:08:43] Speaker 00:
It says what it says.

[00:08:45] Speaker 02:
But the reason that we're trying to explain this, Your Honor, is Dr. Eskaderian did not say mere math is needed in a calculation.

[00:08:54] Speaker 02:
What Dr. Eskaderian said is mere math is needed by looking what one would understand from looking at the formula.

[00:09:01] Speaker 02:
So perhaps it was not the best phrase.

[00:09:05] Speaker 03:
When you say that, Mr. Lavineau, you're suggesting to me that there are two ways to understand what your expert was saying.

[00:09:12] Speaker 03:
So let's assume for purposes of argument there are two ways of understanding what your expert was trying to say.

[00:09:19] Speaker 03:
Why does your version of what he was trying to say prevail?

[00:09:25] Speaker 02:
It's because our version is what one of ordinary skill in the art would have understood.

[00:09:30] Speaker 03:
Where is the substantial evidence saying that one of ordinary skill in the art would understand what your expert was saying?

[00:09:39] Speaker 02:
Well, the substantial evidence is that

[00:09:41] Speaker 02:
when one looks at the formula, one has to go no further.

[00:09:46] Speaker 02:
The formula itself illustrates without math that one can get the range rate from the relative velocity.

[00:09:53] Speaker 02:
We can all see that.

[00:09:54] Speaker 02:
We have to go no further.

[00:09:56] Speaker 02:
And so one of ordinary skill in the art can also look at the formula.

[00:10:00] Speaker 03:
I don't think you're answering my question.

[00:10:02] Speaker 03:
I mean, you're unwilling to grasp that there might be a second understanding.

[00:10:06] Speaker 03:
That is to say that some kind of math

[00:10:09] Speaker 03:
meaning some type of a calculation is necessary.

[00:10:15] Speaker 03:
And so let's assume that there is unclarity on the record.

[00:10:18] Speaker 03:
And if the unclarity on the record is deposited there as a result of the petitioner's instance, then why is it that the petitioner's view of the ambiguity should prevail?

[00:10:37] Speaker 02:
Well, the reason that it goes with the petitioner and not with the patent owner is because it's what one of ordinary skill in the art, not what- That's being circular because you're saying one of ordinary skill in the art would understand that no math calculation is necessary.

[00:10:52] Speaker 03:
But you are an expert, as I believe the chief judge has pointed out, made a statement that certainly could be construed by an ordinary reader to say that a mathematical calculation is necessary.

[00:11:06] Speaker 03:
Now, if it was a goof, then suppose that that goof would have been recognized at the moment it was happening, and someone might have said, well, let us be clear.

[00:11:19] Speaker 03:
At the time he was giving, making his statement in 101, presumably that was carefully prepared by counsel.

[00:11:28] Speaker 02:
Well, perhaps if I approach it from a different perspective, Your Honor, the expert not only said,

[00:11:34] Speaker 02:
that one simply has to look at the relative velocity as you get the range rate.

[00:11:39] Speaker 02:
But also, as paragraph.

[00:11:42] Speaker 03:
Where did he say exactly that?

[00:11:45] Speaker 02:
It's paragraph 101.

[00:11:47] Speaker 03:
OK, 101, I see that.

[00:11:49] Speaker 02:
Yes, paragraph 101 is he explains what he meant by mere math by saying one simply looks at the formula.

[00:11:55] Speaker 02:
But to even confirm that, if one looks at paragraph 99 and 100, he also explains

[00:12:04] Speaker 02:
that it's basic physics.

[00:12:06] Speaker 02:
And so when he says, when you look at a formula, it's basic physics to understand what the formula means.

[00:12:12] Speaker 02:
And in paragraph 100, he says, as such, quote, the relative velocity disclosed by Kodabe already includes the claimed object range rate, end quote.

[00:12:24] Speaker 02:
So one can see there that he's not referring to a calculation.

[00:12:27] Speaker 02:
He's referring to a fact.

[00:12:29] Speaker 02:
And the fact is that the formula from Kodabe

[00:12:33] Speaker 02:
already includes the range rate, which is in the claim.

[00:12:38] Speaker 02:
And so no calculation is needed.

[00:12:40] Speaker 00:
Mr. Lavineux, your time is up, and you're into your rebuttal time.

[00:12:44] Speaker 00:
Do you want to save, or do you want to touch on any of your other arguments?

[00:12:49] Speaker 02:
Yes, Your Honor.

[00:12:50] Speaker 02:
For the other two arguments, they are similarly situated where the board used a higher requirement for obviousness than one of ordinary skill in the art.

[00:12:59] Speaker 02:
And I'll save the remaining two minutes for rebuttal to address any arguments that my colleague, Mr. Bach, raises.

[00:13:07] Speaker 00:
OK.

[00:13:08] Speaker 00:
Thank you, Mr. Lavineau.

[00:13:09] Speaker 00:
Mr. Bach, please proceed.

[00:13:12] Speaker 01:
Thank you, Your Honor.

[00:13:14] Speaker 01:
May I please record Andy Bach from Bartlebeck on behalf of Param Technologies.

[00:13:20] Speaker 01:
The through line of BMW's various arguments on appeal and today is to ask this court to reweigh the evidence considered by the board anew with little deference to the board's various factual findings.

[00:13:32] Speaker 01:
And to ask this court to second guess the board's determinations of which arguments were properly reported.

[00:13:39] Speaker 01:
There's no basis to do so, particularly given the governing standards of review.

[00:13:44] Speaker 01:
The board's final written decision set forth careful consideration of the party's positions and weighed the evidence, and on critical issues, chose to credit the position of our expert over that of BMW's.

[00:13:57] Speaker 01:
Those are precisely the sort of determinations that are committed to the board in the first instance, and the mere fact that BMW wishes the board had weighed the evidence differently is no basis to grant relief on appeal.

[00:14:09] Speaker 01:
This court should affirm.

[00:14:11] Speaker 03:
Mr. Bach, Mr. Bach, almost all of Mr. Platt and his argument was dealt with the mere math issue on the second claim group, third claim, pardon me, second claim group.

[00:14:26] Speaker 03:
So he is pointing out in his mind that the board made a mistake when the board said as a fact finding that a calculation is necessary.

[00:14:37] Speaker 03:
What calculation was the board talking about?

[00:14:41] Speaker 01:
I'm going to turn to claim group two.

[00:14:44] Speaker 01:
So I think the board was addressing that some inferential step.

[00:14:48] Speaker 01:
So while there may be a mathematical, if you credit BMW's expert position, there's a mathematical relationship between relative velocity and range and range rate, which is what claims actually require.

[00:15:01] Speaker 01:
And that there's an inferential step, a mathematical relationship that would allow you to derive one of those things.

[00:15:07] Speaker 01:
So whether it's characterized as a calculation or mere math or mere physics doesn't matter, the fact remains that an inferential step is needed.

[00:15:17] Speaker 01:
And the reason that's important is... What's the inferential step?

[00:15:24] Speaker 01:
I think the position of BMW would be it's to ignore the directional component of relative velocity.

[00:15:30] Speaker 01:
But again, that doesn't give BMW where it needs to go, because it's taken the position consistently, both in front of this court, and this is on every page 47 and 48, and below, Appendix 350.

[00:15:43] Speaker 01:
BMW's position has always been clear.

[00:15:45] Speaker 01:
It does not need to provide a motivation to calculate object range rate in Kodaki.

[00:15:52] Speaker 01:
So if it's not going to provide that motivation,

[00:15:55] Speaker 01:
It must demonstrate that Kodabi itself uses object range rates.

[00:16:00] Speaker 01:
And on that point, the concessions that the BMW's counsel made at argument, while certainly not the only evidence supporting the board's position, however, is fatal.

[00:16:09] Speaker 01:
The board asked this very question.

[00:16:11] Speaker 03:
Well, you only need the motivation if you agree that there is this step of ignoring direction, right?

[00:16:18] Speaker 03:
That's correct, Your Honor, but I don't think... One Mr. Lavine's argument is that there is an inherent

[00:16:23] Speaker 03:
teaching almost like anticipation.

[00:16:25] Speaker 03:
There's an inherent teaching in the reference, period, as a result of mathematics.

[00:16:33] Speaker 03:
Well, I'd say first, if his position on that fails, if we agree with your view and what the board's view was, was that some additional step was required, then he isn't even arguing that he could prevail on the motivation to combine.

[00:16:50] Speaker 03:
He's not challenged that.

[00:16:52] Speaker 03:
I think all of his eggs are in the basket saying there was an absolute disclosure in the reference of the limitation.

[00:17:02] Speaker 01:
Well, I think that was true until the reply brief where BMW has tried to suggest now that even if some inferential step is required, as BMW conceded repeatedly, mere math, mere physics, it could be figured out.

[00:17:16] Speaker 01:
Even if that step is required, since it would have been simple, an artisan would have been able to do it.

[00:17:22] Speaker 03:
So I do think the... Well, I appreciate that argument.

[00:17:25] Speaker 03:
I frankly had a lot of trouble in this case figuring out who made which argument when and who had waived what.

[00:17:32] Speaker 03:
And so my head was spinning by the time I got to the library.

[00:17:36] Speaker 03:
But on the... I understand, Your Honor.

[00:17:38] Speaker 03:
Taking the case the way it was presented to us on this particular issue, Mr. Lavin, I mean, he can say something when he gets up on rebuttal, but it seemed to me that

[00:17:47] Speaker 03:
his case is over unless he can make the case that math means math and no additional calculations necessary.

[00:17:57] Speaker 01:
I think that's right, Your Honor.

[00:17:58] Speaker 01:
And again, page 350, this small logical step argument, that's their argument below.

[00:18:04] Speaker 01:
They never made this small logical step argument until this reply brief, so it is indeed waived.

[00:18:09] Speaker 01:
And I think you're correct to focus on this narrow issue on Claims Group 2.

[00:18:13] Speaker 01:
But whether framed as inherently, which is not how BMW argued it below, even inherently itself is still a factual question.

[00:18:20] Speaker 01:
And on a substantial evidence review, it's hard to fault the board for concluding that CODABE does not disclose object range rate when petitioners counsel admitted that it uses relative velocity, not range rate.

[00:18:34] Speaker 01:
And that's from the oral argument page 1028.

[00:18:38] Speaker 01:
But then again, to the extent they're trying to discredit the board, it's hard to criticize the board

[00:18:43] Speaker 01:
for deciding that a math inferential step was needed when that is what BMW said time and again, starting with the petition.

[00:18:51] Speaker 01:
Page 106 of the petition, near math.

[00:18:55] Speaker 01:
Page 774, paragraph 99 of BMW's expert declaration, again, acknowledging that an inferential step was required in the same position both in the reply by BMW

[00:19:09] Speaker 01:
It's page 350.

[00:19:10] Speaker 01:
And again, it's the oral argument.

[00:19:12] Speaker 01:
So whether it's been characterized in different ways and it's been characterized slightly different here today, none of those particular fine distinctions matter.

[00:19:19] Speaker 01:
The key fact is the concession that Kodagi does not use object range rate itself, the board's own finding after reviewing Kodagi that it does not use object range right, and then whether it's near math, near physics, or it can be figured out, some step is needed.

[00:19:36] Speaker 01:
And that is fatal to the way BMW has approached claims of two.

[00:19:40] Speaker 01:
If there's no other questions on Claim Group 2, I want to turn back to Claim Group 1.

[00:19:45] Speaker 01:
Claim Group 1, the board's ruling rests on multiple independent grounds, any one of which is adequate to affirm.

[00:19:54] Speaker 01:
But I want to say a word first about waiver, because I think the board's finding is very straightforward there.

[00:20:00] Speaker 01:
The board concluded that BMW failed to provide

[00:20:04] Speaker 01:
any reasoned explanation of why one of ordinary skill would have wanted to calculate lateral acceleration rate using a change in yaw rate when such data is already available from a lateral acceleration sensor at page 30.

[00:20:20] Speaker 01:
Now, we pointed out that failure in our response brief, and in reply, BMW for the very first time offered its higher confidence argument.

[00:20:31] Speaker 01:
That's exactly the kind of reply argument that is improper under the board's trial guidance.

[00:20:36] Speaker 01:
And none of the cases that either side cites on waiver, whether it's Apple or the others, allow a petitioner to come in and backfill and provide a motivation to combine for the first time in reply.

[00:20:48] Speaker 01:
And you can just see how that would prove unworkable if you could merely provide the headline

[00:20:53] Speaker 01:
A skilled practitioner would be motivated to combine with no explanation.

[00:20:57] Speaker 01:
The patent owner comes back and points out the failure of proof.

[00:21:00] Speaker 01:
And then the reply is provided for the first time.

[00:21:04] Speaker 01:
Whatever an appropriate reply argument is under this court's precedent and the board's practices, that cannot be it.

[00:21:12] Speaker 03:
And so we're talking about it.

[00:21:14] Speaker 03:
That's right.

[00:21:14] Speaker 03:
I understood Mr. Lavine on behalf of his clients main worry over this particular group view that the board applied an incorrect legal test.

[00:21:25] Speaker 03:
To the question that instead of looking to a motivation to mine issue, the board.

[00:21:33] Speaker 03:
sort of took a lead from what your clients council said they were argument and turn this into reasonable expectation success case.

[00:21:43] Speaker 03:
Did you understand him to be making that argument?

[00:21:46] Speaker 03:
I think that's one of their arguments.

[00:21:48] Speaker 01:
And I'll address that, Your Honor.

[00:21:49] Speaker 03:
As I read the brief, it was the first argument that showed up on the group.

[00:21:57] Speaker 03:
So I took it to be the lead argument.

[00:21:58] Speaker 03:
What's your response to that argument?

[00:22:01] Speaker 03:
If indeed the board had said, well, we're not going to worry about a motivation combiner.

[00:22:07] Speaker 03:
We think there's no reasonable expectation success.

[00:22:10] Speaker 03:
We'd have a very different case here on appeal, would we not?

[00:22:13] Speaker 01:
Potentially, but not one, your honor, that I think would affect the outcome.

[00:22:17] Speaker 01:
So first, the board did not use the phrase reasonable expectation of success.

[00:22:22] Speaker 01:
And I don't think it's, I don't think it's the fairest reading or the appropriate reading of the board's opinion, which instead in the relevant analysis.

[00:22:29] Speaker 01:
appears to turn on credibility determinations crediting our expert on whether there would have been a motivation to buy.

[00:22:36] Speaker 01:
And I think that's the best way of passing that reference that oral argument to reasonable expectation of success.

[00:22:42] Speaker 01:
I don't think alters that the board's opinion focuses on the failure to establish a motivation to buy.

[00:22:48] Speaker 01:
So that's one.

[00:22:49] Speaker 01:
Two, as I've already indicated, this point is fairly academic.

[00:22:52] Speaker 01:
There are multiple other grounds to sustain the board's finding, including that the prosecution history taught away from this motivation divide, a finding on which the board credited our expert.

[00:23:03] Speaker 03:
Isn't it the prosecution history that drives the board to want to have the how question answered?

[00:23:12] Speaker 03:
The prosecution history raises a question

[00:23:15] Speaker 03:
and to the pertinence of the formula in the reference to trying to be used.

[00:23:21] Speaker 03:
I think that's right, Your Honor.

[00:23:22] Speaker 03:
The board is saying, well, given that fact, then somebody has to explain to me how this would function in the claim.

[00:23:32] Speaker 01:
But I believe that's correct.

[00:23:34] Speaker 01:
And the testimony or the portion of the transcript the BMW complained about is simply a response from our council to a question of the board.

[00:23:43] Speaker 01:
And that was my third point, your honor, which is the board is free.

[00:23:46] Speaker 01:
And this is the very holding of fan rule, which I would think that.

[00:23:50] Speaker 03:
In all fairness to Mr. Lavender, Mr. Lavender has a hook in the board's opinion at J-29 when the board says petitioner doesn't explain officially how

[00:24:01] Speaker 03:
He grabs onto that to say, woo, the board here is asking the how question, not the why question.

[00:24:07] Speaker 03:
And when you ask the how question, you're asking reasonable expectation of success.

[00:24:13] Speaker 01:
Even if the board, though, if the hook is correct, Your Honor, the board is free to reject BMW's obviousness case on any grounds it sees fit, regardless of the arguments advanced by us.

[00:24:25] Speaker 01:
So I like to think that we're capable counsel and we marshal good arguments.

[00:24:29] Speaker 01:
But if the board spots a gap in BMW's obviousness case, it is free to reject the petition on that ground.

[00:24:36] Speaker 01:
That is the very holding of Fandl.

[00:24:38] Speaker 01:
And in Fandl itself,

[00:24:39] Speaker 01:
The patent owner didn't even dispute the issue and didn't offer any expert testimony.

[00:24:45] Speaker 01:
And the board still rejected the petitioner's position.

[00:24:47] Speaker 01:
And this court affirms saying, yes, because the burden always remains on the petitioner, BMW here, and it never shifts.

[00:24:55] Speaker 01:
If the board spots another issue, it's free to rely on that.

[00:24:59] Speaker 01:
But Your Honor, regardless, there still are separate independent grounds in Claims Group 1.

[00:25:03] Speaker 01:
So elevating this reasonable expectation of success issue still wouldn't change the outcome because the board was in its rights to credit our expert's view that the prosecution history and the prior art taught that the measured lateral acceleration was more reliable.

[00:25:21] Speaker 01:
So this so-called check would not make any sense.

[00:25:24] Speaker 01:
Let me just touch briefly on a couple other claim one related items before saying something about claim group three.

[00:25:30] Speaker 01:
On Claim Group 1, there's also, and Judge, you mentioned the lead argument in the opening brief was reasonable expectation success.

[00:25:39] Speaker 01:
In the reply brief, it's the suggestion that the board applied the wrong obviousness standard.

[00:25:44] Speaker 01:
Now, I underlined that when I read it, but I don't think there's, and the only page BMW points to is Tenants 29.

[00:25:52] Speaker 01:
I don't think there's a sentence there, and BMW doesn't identify one, that even arguably misdates the law of obviousness.

[00:26:00] Speaker 01:
Two additional quick points on claim group one that were raised in the reply.

[00:26:04] Speaker 01:
One is the suggestion that the board should have credited the testimony of Dr. Eskinderian in his deposition as to how to reconcile conflicting values.

[00:26:14] Speaker 01:
That's wrong for a number of reasons, including for the fact that it doesn't counter our expert's view that measured lateral acceleration is more reliable.

[00:26:22] Speaker 01:
But it doesn't matter.

[00:26:23] Speaker 01:
It's weight.

[00:26:24] Speaker 01:
BMW, in its reply, never cited Dr. Eskandarian's testimony as part of its motivations.

[00:26:33] Speaker 01:
And it's too late to do so now.

[00:26:35] Speaker 01:
Second, in Reply, BMW also makes much of safety as a motivation.

[00:26:40] Speaker 01:
And again, safety was never raised as a justification to combine a Shuzu with the brochure.

[00:26:48] Speaker 01:
And if you look at appendix 88 to 90, 99 to 101, and 340 to 344, those are the key pages discussing this motivation.

[00:26:57] Speaker 01:
Safety is never mentioned.

[00:27:00] Speaker 01:
It's too late to do so now.

[00:27:02] Speaker 01:
The only page BMW points to is page 337, which was discussing an unrelated issue about the motivation to combine Schmidt and the brochure.

[00:27:11] Speaker 01:
So while BMW may regret not raising a safety argument below, it's too late to do so now.

[00:27:19] Speaker 01:
Since I'm coming up on time, I'll just say a quick word about Plaint Group 3.

[00:27:23] Speaker 01:
Plaint Group 3, I read BMW's opening brief as an invitation for this court to simply re-weigh the evidence.

[00:27:29] Speaker 01:
But there's a key shift in reply, and BMW now seems to be suggesting that we somehow conceded that the brochure taught this predetermined limit on lateral acceleration.

[00:27:41] Speaker 01:
Respectfully, that is not a fair reading of the record, and I would direct this court to pages 307 to 312 of our response.

[00:27:48] Speaker 01:
and pages 1127 and 1132 of our expert declaration.

[00:27:53] Speaker 01:
This was one of the most contested issues below, and the board simply elected to credit the careful explanation of our expert over the one paragraph and one sentence position of petitioner's expert.

[00:28:05] Speaker 01:
The substantial evidence more than supports the board's findings.

[00:28:09] Speaker 01:
Unless there are any further questions for the reason set forth in our brief and discussed today, we'd ask this court to affirm.

[00:28:14] Speaker 00:
I'm on page 307, so where is it that you raised this argument?

[00:28:21] Speaker 00:
Where is it that you disputed whether or not the brochure disclosed?

[00:28:26] Speaker 01:
It's 307 to 312, and so there's numerous reasons given.

[00:28:37] Speaker 01:
If you go to 311, where it discusses that, it's starting with the paragraph 310 at the bottom, the import, which is that this was one of the reasons, our expert gave multiple reasons, and that was on pages 1127 and 1132.

[00:28:52] Speaker 00:
I'm sorry, I don't see what you're talking about.

[00:28:54] Speaker 00:
Can you please walk me through it?

[00:28:56] Speaker 00:
Where on page 311 do you say that you raised this argument?

[00:29:00] Speaker 04:
Sure.

[00:29:01] Speaker 00:
To me, like the board came up with it on its own, which may very well be within its purview to do since they had the burden of proof, but I'm, you've instead depended on the ground that you in fact raised it.

[00:29:12] Speaker 00:
So the board didn't come up with it on its own.

[00:29:14] Speaker 00:
So I'd like to see precisely where you raised it.

[00:29:17] Speaker 01:
Stir.

[00:29:17] Speaker 01:
So 309 at the bottom, going up to 310.

[00:29:22] Speaker 01:
A person of ordinary skill would understand the brochure's reference data cannot be the same.

[00:29:28] Speaker 01:
Is this JA309?

[00:29:30] Speaker 01:
309 to top of 310.

[00:29:33] Speaker 00:
Yeah, I can't find whatever it is that you are thinking.

[00:29:36] Speaker 03:
We're talking about different pieces of paper, I think, sir.

[00:29:41] Speaker 01:
Yeah, I'm in appendix page 310, page 56 of our response.

[00:29:47] Speaker 01:
All right.

[00:29:48] Speaker 01:
A person, so here's just a quote.

[00:29:50] Speaker 01:
This is one of the arguments we advanced.

[00:29:52] Speaker 01:
A person with ordinary skill would understand the brochures, disclose reference data, cannot be the same as the claims, lateral acceleration, predetermined limit.

[00:30:01] Speaker 01:
So that's one place where we discussed that.

[00:30:03] Speaker 00:
I'm sorry, I can't find wherever you're reading.

[00:30:07] Speaker 03:
That's at the top of page 310.

[00:30:10] Speaker 01:
Top of page 310, same on 309 with the paragraph starting, for example.

[00:30:18] Speaker 01:
We explained that it cannot be the reference data.

[00:30:21] Speaker 01:
And this is with the discussion starting with assuming that the predetermined limit cannot be the reference data because the brochure provides that there's any deviation that's breaking.

[00:30:31] Speaker 01:
And that would not work.

[00:30:32] Speaker 01:
So that's the discussion starting with the full paragraph on 309, for example.

[00:30:37] Speaker 01:
And then the last explanation, and again, this is what the board credited, starting at the bottom of 310, with the paragraph starting with the imports and the full paragraph that goes to 311, the reference data at best suggests intervening when multivariables are measured.

[00:30:58] Speaker 01:
And that means there cannot be a single variable, a lateral acceleration limit, as the claims provide.

[00:31:09] Speaker 01:
And then the punch line on page 3.

[00:31:10] Speaker 03:
And I'm looking at what you just said.

[00:31:13] Speaker 03:
Where is that on 311?

[00:31:16] Speaker 01:
The paragraph, the sentence starting or, comma, put another way, six lines from the bottom.

[00:31:25] Speaker ?:
OK.

[00:31:34] Speaker 03:
Okay, so happy to answer any questions with the punch line.

[00:31:37] Speaker 03:
What you what you just said a moment ago is your characterization of those those lines, correct?

[00:31:43] Speaker 01:
That's correct.

[00:31:44] Speaker 03:
That's paraphrasing your honor, but characterizing, I believe.

[00:31:49] Speaker 01:
Sure.

[00:31:50] Speaker 03:
Okay.

[00:31:52] Speaker 01:
I just close by saying I think a fair reading of these pages and the pages we cite to our expert declaration suggests that we contested hotly whether the predetermined limit reference was met by the brochure and the board's decision to credit that testimony was entirely proper.

[00:32:08] Speaker 01:
Unless there are any questions, I'm long into my time and I'll wrap up.

[00:32:11] Speaker 01:
Thank you.

[00:32:12] Speaker 00:
Thank you, Mr. Bach.

[00:32:13] Speaker 00:
Mr. Lavineau, I'd like to restore additional rebuttal time because Mr. Bach went over.

[00:32:19] Speaker 00:
So Joseph, how much time does Mr. Lavineau have left already?

[00:32:23] Speaker 00:
Two minutes.

[00:32:23] Speaker 00:
Why don't you raise it up to five minutes?

[00:32:26] Speaker 02:
That's your honor.

[00:32:27] Speaker 00:
Thank you.

[00:32:30] Speaker 02:
Thank you, your honor.

[00:32:31] Speaker 02:
So first to go back really quickly to Claim Group 2 and our mathematical calculation issue.

[00:32:37] Speaker 02:
I'll note that my colleague, Mr. Bach, he did not actually say, if I'm questioning by your honors, that a mathematical calculation is required.

[00:32:47] Speaker 02:
He simply said that we had argued that he thought that a mathematical calculation was required.

[00:32:53] Speaker 02:
In fact, he conceded that if one ignores the relative velocity, that is not a calculation.

[00:33:00] Speaker 02:
And that is our argument.

[00:33:01] Speaker 02:
There's no inferential step that's needed.

[00:33:03] Speaker 00:
So basically... Do you mean ignore the relative velocity or do you mean ignore the directional component?

[00:33:09] Speaker 02:
Ignore the directional component, Your Honor.

[00:33:11] Speaker 02:
Correct.

[00:33:12] Speaker 02:
Thank you.

[00:33:13] Speaker 02:
And so I think that that really makes the point that even Mr. Bach recognizes that even upon questioning, he did not argue that a mathematical calculation is required.

[00:33:23] Speaker 02:
And so that is our point for claim group number two.

[00:33:27] Speaker 02:
For claim groups number one and claim group number three,

[00:33:30] Speaker 02:
Our arguments are really exactly as Judge Clevenger noted, and that is that the board seemed to create its own argument as to why it believed that both of these claim groups did not have what they required for there to be unpatentability, which they're entitled to do under Fandual.

[00:33:49] Speaker 02:
But our argument is that they were not entitled to take an approach that's inconsistent with what one of ordinary skill in the art would have taken.

[00:33:58] Speaker 02:
And that is exactly what happened in both situations.

[00:34:01] Speaker 02:
For example, in Claim Group 1, with respect to the lateral acceleration, whether or not the lateral acceleration is or is not factored in, and whether or not there was a reasonable expectation of success for the use of the lateral acceleration between the two references, Ishizu and BMW brochure, that was discussed by Dr. Eskaderian in his deposition at Appendix 1169

[00:34:27] Speaker 02:
where he goes into great detail explaining why one could use both of those lateral accelerations.

[00:34:33] Speaker 02:
It was then the patent owner that chose not to raise that argument in its response brief, but the board then raised that issue for the first time at the hearing, and they then relied upon that.

[00:34:48] Speaker 02:
Caram then raised the argument based upon what the board did, and that is the violation that we're focusing on.

[00:34:55] Speaker 02:
It's not the fact that the board raised it for the first time, it's the fact that Caram jumped up, not Caram, I'm sorry, that the patent owner jumped on that, and the board is obligated to dismiss a patent owner's untimely argument raised for the first time at the oral argument, and that's the Dell v. Acceleron case.

[00:35:13] Speaker 02:
So that is what we believe happened for the claim group one.

[00:35:18] Speaker 02:
For claim group three, this is another situation where the board seemed to have a very high level of curiosity about whether or not the predetermined limit that was disclosed in the BMW brochure did or did not include the level of detail that it thought was required for the lateral acceleration.

[00:35:39] Speaker 02:
But that, again, was an argument that we had addressed in our reply brief and in our responses

[00:35:47] Speaker 02:
papers, and in fact, Dr. Eskaderian pointed specifically to the BMW brochure.

[00:35:53] Speaker 02:
Remember that the BMW brochure that's used here was for an actual functioning system in a BMW 7 Series that was actually driving around and being used four years before the filing of the patent application.

[00:36:07] Speaker 02:
So this system that was described, when it refers to a predetermined limit and the use of lateral acceleration for that predetermined limit,

[00:36:16] Speaker 02:
One of ordinary skill in the art would certainly have understood, and in fact, I believe that the questioning by Mr. Bach even illuminated that fact, that he recognized that, and this was the quotations that your honors was asking Mr. Bach to find, all of those quotations, if you go back and look at those quotations, the patent owner acknowledges

[00:36:38] Speaker 02:
that the predetermined limit, one of the factors was lateral acceleration.

[00:36:42] Speaker 02:
They don't dispute that.

[00:36:43] Speaker 02:
So the reference data that's used for the predetermined limit, they don't dispute that it includes lateral acceleration.

[00:36:50] Speaker 02:
What they dispute is whether or not it includes this super high level of detail that they believe is required.

[00:36:57] Speaker 02:
And that super high level of detail is not required when all of the evidence indicates that

[00:37:04] Speaker 02:
a one of ordinary skill in the art would have understood how the BMW brochure worked with the Schmidt reference.

[00:37:10] Speaker 00:
And this is the Pueblo case from the court of claims from 1964, which says... Counsel, your problem is you argued that one of ordinary skill understood it, but you didn't proffer that evidence to the board in this instance.

[00:37:23] Speaker 00:
I mean, they found that you tried to argue this in the petition in a very cursory way without supporting evidence.

[00:37:33] Speaker 00:
And Dr. Eskidarian had a single sentence of analysis and they found that it was inadequate to meet your burden of proof.

[00:37:42] Speaker 00:
That all can be true even if Karen didn't dispute it.

[00:37:45] Speaker 00:
You had the burden.

[00:37:49] Speaker 02:
Well, that is understood, Your Honor, but we did explain during the deposition of Dr. Eskidarian exactly the questions that the board had when they asked at the oral hearing.

[00:38:01] Speaker 02:
And that is on Appendix 1169 as well, where Dr. Eskidarian specifically explained why one would have used the lateral acceleration with a predetermined limit in the BMW brochure.

[00:38:17] Speaker 02:
And in fact, it's because Caram acknowledged that Appendix 310, that they never disputed that point on use of lateral acceleration.

[00:38:26] Speaker 02:
And at appendix 1131, their expert also acknowledged that that could be used.

[00:38:31] Speaker 02:
It was this super high level of requirement that the board came up with that is not consistent with the placida.

[00:38:39] Speaker 02:
And that's the inconsistency that we're complaining about is the board has to look at it not from their super omniscient view of obviousness, but more of one of ordinary still in the art would have understood.

[00:38:50] Speaker 02:
That's the complaint that we've raised here.

[00:38:55] Speaker 00:
Okay, I think that concludes our time for today.

[00:38:57] Speaker 00:
I thank both council and this case is taken under submission.