[00:00:02] Speaker 03:
We have three argued cases this morning.

[00:00:05] Speaker 03:
The first is number 21-1179, Google LLC versus IPA Technologies.

[00:00:13] Speaker 03:
Mr. Modi.

[00:00:19] Speaker 02:
Yes.

[00:00:20] Speaker 02:
Just hold on one second.

[00:00:23] Speaker 02:
Now, you go ahead.

[00:00:24] Speaker 02:
I was asking Mr. Modi.

[00:00:26] Speaker 02:
Can you hear me?

[00:00:29] Speaker 02:
Yes.

[00:00:32] Speaker 02:
Yes.

[00:00:35] Speaker 01:
Yes.

[00:00:40] Speaker ?:
Okay.

[00:00:42] Speaker 04:
Good morning, Your Honors.

[00:00:43] Speaker 04:
May it please the court?

[00:00:44] Speaker 04:
The board committed 20 legal errors that require reversal.

[00:00:48] Speaker 04:
First, once Google came forward with evidence that the Martin reference was prior art, the board failed to shift the burden to IPA to prove that the relevant portions of the Martin paper will represent the work of the named in manners and their work alone.

[00:01:04] Speaker 00:
And when you use the word prove there, you mean burden of production, right?

[00:01:08] Speaker 04:
Yes, Your Honor.

[00:01:08] Speaker 04:
OK.

[00:01:09] Speaker 04:
Second, and relatedly, the board failed to require IPA to make any showing, much less a showing with corroborative evidence that the Martin reference

[00:01:19] Speaker 04:
co-author Dr. Moran did not contribute to the conception of the relevant portions of the Martin reference, because the board's factual findings compelled the conclusion that Dr. Moran did contribute to the conception of the relevant portions of the Martin reference, and because the board did not find that IPA had any corroborative evidence that showed that the named inventors, that this was their work alone, we request that this court reverse.

[00:01:45] Speaker 04:
Let me explain in detail.

[00:01:47] Speaker 04:
So turning first to the burden shifting point, Judge Toronto, that's precisely our argument.

[00:01:52] Speaker 04:
The board committed a legal error by not placing any burden on IPA in this case.

[00:01:58] Speaker 04:
Of course, Google certainly understands it has the burden of persuasion in this case.

[00:02:03] Speaker 04:
It also understands that it has the burden of production.

[00:02:06] Speaker 04:
It more than met its burden.

[00:02:07] Speaker 04:
When you look at the face of the reference, it lists Dr. Moran.

[00:02:11] Speaker 04:
It came forward with a detailed declaration from Dr. Moran.

[00:02:14] Speaker 04:
that spelled out his contributions.

[00:02:17] Speaker 04:
At that point, under this court's case law, the board should have shifted the burden to IPA to come forward with evidence that was corroborated.

[00:02:26] Speaker 03:
But let me tell you what the problem that I see here is, first, the board said everybody was credible.

[00:02:34] Speaker 03:
But there does seem to be some conflict in the testimony.

[00:02:41] Speaker 03:
Dr. Moran,

[00:02:44] Speaker 03:
said that he contributed the facilitator and the sub-goals, which seemed to be potentially significant aspects of the invention.

[00:02:59] Speaker 03:
Yet, one of the named inventors testified that he didn't contribute to the facilitator or the sub-goals, at least as I read the testimony.

[00:03:11] Speaker 03:
So it seems to be

[00:03:13] Speaker 03:
an evidentiary conflict here, which really didn't get

[00:03:19] Speaker 03:
Can you address that?

[00:03:21] Speaker 04:
Is that the case?

[00:03:22] Speaker 04:
I absolutely can, Your Honor.

[00:03:24] Speaker 04:
I think the issue here is that you're absolutely right that Dr. Moran and his testimony showed that he contributed to the facilitator, which is one of the key concepts.

[00:03:35] Speaker 04:
It's in the claims.

[00:03:36] Speaker 04:
It's in the Martin paper.

[00:03:38] Speaker 04:
And then what's more, Your Honor, is that the board actually found, as you pointed out, that Dr. Moran was credible, as they found the other DMNers also.

[00:03:45] Speaker 04:
But I think the key issue here is that

[00:03:47] Speaker 04:
The board found that, and this is that appendix,

[00:03:51] Speaker 04:
Because I do think this, I want to make sure you have this.

[00:03:53] Speaker 04:
It's at appendix 17.

[00:03:55] Speaker 04:
The board found that Dr. Moran contributed to foundational concepts in the Martin reference.

[00:04:01] Speaker 04:
And when you couple that with what IPA said in its red brief at 44, they said the Martin paper is directed to the fundamental architecture of OAA.

[00:04:09] Speaker 04:
When you couple those two, we believe it's fatal to the argument.

[00:04:13] Speaker 04:
Because under American and this court's case law, whether you look at Allergan, you look at Cass,

[00:04:17] Speaker 04:
If you look at any of the cases, IPA had the burden to come forward with more than just conclusory inventor testimony in this case to prove that the Martin, those references of the Martin paper were solely the work of Mr. Martin and Mr. Taram and their work alone.

[00:04:31] Speaker 03:
If you look at 88-19 to 21, for example, and this is the Shayer, however you pronounce it, testimony.

[00:04:42] Speaker 03:
he says and really talks about having multiple facilitators architectures and recursive structure that clearly existed before he became involved with the project so I mean that's not a conflict in testimony

[00:04:57] Speaker 04:
So Your Honor, that's what he says, right?

[00:04:59] Speaker 04:
So I think the issue here is that they agreed that the Martin paper goes to the fundamental architecture of OAA.

[00:05:09] Speaker 04:
You have Dr. Moran coming in, who was the most senior scientist on the team, and who comes in and says, well, he contributed to the facilitated architecture, for example.

[00:05:17] Speaker 04:
But you don't have anything additional from IPA.

[00:05:20] Speaker 04:
And in fact, if you look at Dr. Moran's testimony, it was corroborated, Your Honor.

[00:05:23] Speaker 04:
If you look at, there were at least four pieces

[00:05:27] Speaker 03:
I mean, yes, that appears to be the case, but don't we have a conflict in the testimony that needs to be resolved?

[00:05:38] Speaker 03:
In other words, it may be that you're entitled to a remand, but I think a reversal is difficult.

[00:05:43] Speaker 04:
Sure, Your Honor.

[00:05:43] Speaker 04:
We certainly would be happy with a remand if that's what Your Honor's field is the right remedy.

[00:05:48] Speaker 04:
I think our point here is that the board applied the wrong framework.

[00:05:52] Speaker 04:
When you look at Mr. Martin's testimony and Mr. Shah's testimony, actually, if you look at their testimony, the only place where the board credited that testimony was actually in Google's favor.

[00:06:00] Speaker 04:
Your Honor, the only thing that they relied on to find

[00:06:04] Speaker 04:
that we didn't meet our burden was the conclusory declarations during prosecution.

[00:06:08] Speaker 04:
And under this court's case law, whether you look at America, again, look at Allergan, any of those cases, they needed to do more.

[00:06:14] Speaker 04:
And they're simply, when you have the evidence is so one-sided under Allergan,

[00:06:19] Speaker 04:
Certainly, this court can remand, but we feel there's enough here for reversal.

[00:06:25] Speaker 00:
And just to be clear, you don't think that the patent office's acceptance of the two 132 declarations, which then generates a legal presumption of the correctness of the name of the inventors on things, is not enough to meet the burden of production?

[00:06:46] Speaker 04:
Your Honor, it's not.

[00:06:48] Speaker 04:
Absolutely not.

[00:06:49] Speaker 04:
So in this case, you would never have a case, then, if you were to always look at just the declarations that were submitted during prosecution.

[00:06:56] Speaker 04:
You would never have a case where you had someone else coming in and saying, well, I contributed to the foundational concepts of the paper.

[00:07:03] Speaker 04:
You would never have another case.

[00:07:05] Speaker 04:
I didn't understand that.

[00:07:07] Speaker 04:
So my point is, Your Honor, it is not enough.

[00:07:09] Speaker 00:
The simple answer is it was not enough.

[00:07:11] Speaker 00:
Typically, burdens of production

[00:07:12] Speaker 00:
Pretty darn easy to meet and then we're into the realm of what's persuasive.

[00:07:17] Speaker 00:
Sure.

[00:07:18] Speaker 00:
I guess I read this board decision as having got to that and not improperly either as having got to that.

[00:07:25] Speaker 00:
And then the question is, did the board make a, you know, a

[00:07:31] Speaker 00:
affirmable finding that is based on substantial evidence that your evidence simply wasn't persuasive because basically because it wasn't tied specifically enough to the precise portions of the Martin reference

[00:07:50] Speaker 00:
and explain that that were used for the anticipatory disclosures and indicate that Dr. Moran contributed to those and that those precise portions were themselves the kind of things that are invented, which is to say not already in the prior art and significant.

[00:08:10] Speaker 00:
And there just wasn't any detail like that.

[00:08:12] Speaker 00:
That's how I read the board decision.

[00:08:14] Speaker 04:
So, Your Honor, I agree with your reading of the board's decision, but we think the board erred on multiple ways.

[00:08:21] Speaker 04:
So let me address, I think there are two or three different points I want to respond with.

[00:08:25] Speaker 04:
First, going back to your point, well, do the declarations carry their burden of production?

[00:08:31] Speaker 04:
Absolutely not.

[00:08:32] Speaker 04:
If you had Americam, in Americam you even had in an IPR proceeding, you had the inventor come in with a sworn declaration he was subject to cross-examination, and this board required much more.

[00:08:42] Speaker 04:
And certainly, we think under Americam and this court's case law, they needed to come more than that.

[00:08:47] Speaker 04:
And if you actually look at the declarations, even during prosecution, Judge Toronto.

[00:08:50] Speaker 00:
Just remind me, in Americam, this is the IA.

[00:08:55] Speaker 00:
the putative inventor coming in?

[00:08:58] Speaker 00:
Or somebody that the patent office had already blessed as the inventor?

[00:09:04] Speaker 04:
So it was one of the inventors who had obviously submitted a declaration, not a 132 declaration.

[00:09:09] Speaker 04:
They came in during the IPR proceeding and came in with their declaration.

[00:09:13] Speaker 04:
So that was the situation in America.

[00:09:16] Speaker 04:
And their declaration, if you compare it to the declaration here, their actual declaration said more.

[00:09:22] Speaker 04:
If you remember, there's testimony in the record here.

[00:09:24] Speaker 00:
And one of the reasons, and the board actually agreed with us during institution, that this declaration was not enough, precisely because it actually did not address the key question, which is- So in the Moran Declaration here, actually, but more either there or in any other evidence, did you have evidence that the facilitator just all by itself

[00:09:43] Speaker 00:
was not already in the prior art?

[00:09:49] Speaker 00:
Because if it was, then maybe the Panou principle that says merely telling somebody something that's already in the prior art doesn't make you a co-inventor might apply, and other things like that too.

[00:10:00] Speaker 00:
There are pieces of the Martin reference that go beyond what's in the exact claims.

[00:10:05] Speaker 00:
Having contributed to a piece in the prior art reference that's not actually used,

[00:10:10] Speaker 00:
for the disclosure for the 102 or 103 case is probably not enough either and I think what I read the board is saying is those are the kinds of details that just aren't there and therefore we're not persuaded notwithstanding that sentence in footnote whatever it is saying we credit everybody for what they say it's just that for Moran I don't think the board thought that he said enough

[00:10:39] Speaker 04:
So to Toronto, I think if you look at the record here, there is no dispute that I don't think IPA has alleged this, that the facilitator, the architecture that's claimed, they're alleging obviously it's new and there was no evidence.

[00:10:50] Speaker 04:
So I think if you look at, and I did one, I'm glad you brought us back to Dr. Moran's declaration.

[00:10:55] Speaker 04:
Because if you look at Dr. Moran's declaration, paragraph 39, Judge Dyke, you also pointed to this, that the facilitator.

[00:11:01] Speaker 00:
I'm sorry.

[00:11:03] Speaker 00:
If it's your burden, why isn't it your burden to say the facilitator was new?

[00:11:09] Speaker 00:
which you might not want to say, because your friends in the next case are saying, no, no, even that was on.

[00:11:15] Speaker 00:
But if it's your burden, don't you have to say that to put Moran into the position of an inventive contribution maker?

[00:11:23] Speaker 04:
So Your Honor, I guess I would cobble with you a little bit there in terms of the case, but at least as we see it, for example, in the Allergan case, this court found

[00:11:30] Speaker 04:
that whether or not someone is an inventor of the patent, that's not the question.

[00:11:36] Speaker 04:
The key question here, under Katz, under Allergan, under any of the cases, is who contributed to the subject matter, right?

[00:11:44] Speaker 04:
That's at the heart of the Martin paper, and clearly we have been paid for with evidence.

[00:11:47] Speaker 03:
Well, it isn't just that.

[00:11:48] Speaker 03:
It's that because you'd have to show also that the

[00:11:53] Speaker 03:
inventive feature of the Martin paper was carried over as an inventive feature of the patents.

[00:12:01] Speaker 04:
And we believe it was, Your Honor, here.

[00:12:03] Speaker 04:
So if you look at our mapping that we provided, this is also laid out in our blue brief on pages 13 to 14.

[00:12:10] Speaker 04:
We showed that Dr. Moran contributed to the key concepts.

[00:12:13] Speaker 04:
The board called them foundational concepts in the Martin paper, one of them being the facilitator.

[00:12:18] Speaker 04:
And then if you look at, again, our blue brief 13 to 14, and for example, our petition at appendix 211 to 214, we relied on those portions of the Martin reference

[00:12:29] Speaker 04:
right, in showing why they taught the limitations of the claims here.

[00:12:33] Speaker 04:
So we more than met our burden of whether you want to call it production, Your Honor, and persuasion.

[00:12:40] Speaker 04:
Whereas what did they have?

[00:12:41] Speaker 04:
Your Honor, they had all the evidence.

[00:12:42] Speaker 04:
All they came forward with were the prosecution declarations.

[00:12:46] Speaker 03:
Where in the petition do you connect the

[00:12:49] Speaker 03:
a facilitator concept to the inventive concept in the patent?

[00:12:54] Speaker 04:
Sure, Your Honor.

[00:12:56] Speaker 04:
So I think if you look at, for example, we can look at it together if you like.

[00:13:00] Speaker 04:
It's on pages appendix 211 to 212.

[00:13:03] Speaker 03:
That's volume one?

[00:13:05] Speaker 04:
Yes, Your Honor.

[00:13:15] Speaker 04:
So if you look at pages 211 to 212,

[00:13:19] Speaker 04:
Those are pages of our petition for the 560 patent.

[00:13:23] Speaker 04:
And they go to claim 22.

[00:13:26] Speaker 04:
So if you look at 211 to 212, you'll see on page 211, there's Roman numeral sub 3 that lays out the claim language and talks about the facilitator, Judge.

[00:13:39] Speaker 04:
Your Honor, did you see that?

[00:13:40] Speaker 04:
And then, if you go on pages 211 and 212, we cite to the relevant portions of the Martin paper that are directed to the facilitator.

[00:13:49] Speaker 04:
And then, of course, then you circle that back with Dr. Moran's testimony in paragraph 39, where he said he contributed to those concepts.

[00:13:57] Speaker 04:
So it would be more than that.

[00:14:00] Speaker 04:
Yes, sir.

[00:14:01] Speaker 04:
At least the facilitator concept.

[00:14:02] Speaker 00:
Right, but just, I guess.

[00:14:06] Speaker 00:
What I'm not sure about is the following.

[00:14:08] Speaker 00:
So this claim element says a facilitator that's capable of a very particular thing, getting a goal, tearing it apart into subgoals.

[00:14:20] Speaker 00:
And it may well be, in fact, again, your friends in the next case say it is the case, that the idea of a facilitator is old.

[00:14:29] Speaker 00:
What the foundational concept is, or the key in this element, is a facilitator that these particular things

[00:14:36] Speaker 00:
Does paragraph 39 of the Moran Declaration say that, that he contributed to this particular functionality of a facilitator?

[00:14:45] Speaker 04:
So, Your Honor, I think you have to look at it, step back and look at it.

[00:14:49] Speaker 04:
So if you look at paragraph 39, what it tells us is that Dr. Moran contributed to the facilitator as described in, for example, section 4.1 of the Martin paper, Your Honor.

[00:15:00] Speaker 04:
You can see, and if you like, we can go through that.

[00:15:03] Speaker 04:
Then on pages 211, but again, maybe the only thing he did was say hey, let's use a facilitator, right?

[00:15:11] Speaker 04:
But I think your honor he did more than that So again, I think we should spend if you would indulge me I think we should look at paragraph 39 of his declaration Because I do think it would be helpful and it's at

[00:15:33] Speaker 04:
3669, Your Honor.

[00:15:35] Speaker 04:
So here's what he said.

[00:15:38] Speaker 04:
He said, I, in particular, I'm looking at the middle of the paragraph.

[00:15:41] Speaker 04:
He said, in particular, I played a significant role regarding the distributed agent-based approach, and in particular, using a facilitator as described in the OA paper at section four and

[00:15:52] Speaker 04:
4.1 through 4.5.

[00:15:54] Speaker 04:
And then he said, I also played a significant role in the approach of using recursion to decompose base goals into subgoals that were then dispatched to agents.

[00:16:04] Speaker 04:
Those are precisely the concepts that are in that claim element.

[00:16:07] Speaker 04:
Is recursion claimed?

[00:16:08] Speaker 04:
So recursion that you may not see that particular word at least in claim 22 your honor But the concept of taking a goal and then subdividing it that's precisely what that limitation is directed to and which is why if you look at pages 211 to 212 of the petition now it seems to me you've gone from something that might be too broad that is I contributed to a facilitator comma

[00:16:33] Speaker 00:
as described in the claim, not the facilitator as described without a stop saying this very precise one to recursion, something that's not even in the claim that's merely one possible technique for accomplishing

[00:16:50] Speaker 00:
the broader claim decomposition function.

[00:16:56] Speaker 00:
Right.

[00:16:56] Speaker 04:
So I think if you look at the heart of their patent, Your Honor, here, it does talk about recursion and kind of taking claims.

[00:17:01] Speaker 04:
And I can find the site for you on the bottle for that.

[00:17:04] Speaker 04:
That they do sort of decompose goals into sub-goals.

[00:17:07] Speaker 04:
And that's precisely what's claimed in that claim element 22B that we looked at.

[00:17:11] Speaker 04:
And then so Dr. Moran did contribute to those concepts, whether you want to call them inventive.

[00:17:16] Speaker 04:
He certainly did contribute to them.

[00:17:19] Speaker 04:
And he was very specific about his contributions, and then we connected them in the petition.

[00:17:24] Speaker 04:
So we believe we more than met our burden, and this court should, at a minimum, remit.

[00:17:28] Speaker 04:
Unless we have any other questions, to the extent I have any time left, I'll save it.

[00:17:32] Speaker 03:
We'll give it to him, Mr. Obama.

[00:17:34] Speaker 03:
Thank you.

[00:17:36] Speaker 03:
Mr. Harshal?

[00:17:36] Speaker 01:
Good morning, Your Honor.

[00:17:39] Speaker 01:
Please record, Stephen Hart, Solicitor-General of Derby, here on behalf of IPA Technologies.

[00:17:44] Speaker 03:
I have a concern about some of the statements that are made in the red brief, which seem to me not accurate.

[00:17:58] Speaker 03:
For example, if you look at page 35 and 36,

[00:18:02] Speaker 03:
There's a statement, although Moran is named as a co-inventor in the patents, and on other patents related to other facets of the LFA project, he is not named in the patents in suit.

[00:18:14] Speaker 03:
And with good reason, he provided no inventive contribution whatsoever, a fact which Moran himself readily agrees.

[00:18:24] Speaker 03:
And there is no citation for that proposition.

[00:18:26] Speaker 03:
Can you tell me where the record shows that Moran

[00:18:30] Speaker 03:
agreed that he made no inventive contribution?

[00:18:35] Speaker 01:
Show me where he said he doesn't make an inventive contribution.

[00:18:46] Speaker 03:
Where he readily agreed that he didn't make an inventive contribution.

[00:18:50] Speaker 03:
Where do I find

[00:19:04] Speaker 01:
Your Honor, Dr. Moran never read the claims related to this patent.

[00:19:11] Speaker 03:
This statement is inaccurate, is it not?

[00:19:13] Speaker 03:
Is this statement inaccurate?

[00:19:16] Speaker 01:
Your Honor, the statement probably isn't.

[00:19:19] Speaker 03:
There are other places in there, too, and I won't take the time to go through them, where it seems to me that your brief overstates the record.

[00:19:26] Speaker 03:
I think you should not do that.

[00:19:29] Speaker 01:
I apologize, Your Honor.

[00:19:32] Speaker 01:
I would like to address, though, what Your Honors have pointed out today, and that has to do with burden shifting in this case.

[00:19:41] Speaker 01:
Now, as Google readily admits, it bears the burden of persuasion, which also, as was pointed out in IPR proceeding, necessarily includes establishing references that just relies on our prior heart.

[00:19:54] Speaker 01:
And in this case, Google did not meet its burden.

[00:19:59] Speaker 01:
So what Google has presented is Google before Dr. Moran's declaration.

[00:20:03] Speaker 03:
If you believe Dr. Moran, he did make a contribution.

[00:20:11] Speaker 03:
Isn't that the case?

[00:20:13] Speaker 01:
Your Honor, Dr. Moran was affiliated with the OEA project.

[00:20:18] Speaker 01:
We're not denying that he's affiliated with the OEA project in some shape or form.

[00:20:22] Speaker 01:
But as it pertains to the claims, what is claimed in these patents, there, Dr. Moran

[00:20:30] Speaker 01:
We do not believe he made a contribution.

[00:20:32] Speaker 01:
His declaration just states that he had a role in some contexts and he played a high-level role.

[00:20:38] Speaker 01:
But as your honor pointed out, there is not a lot of meat on the bones in his declaration.

[00:20:43] Speaker 01:
There's not a lot of detail.

[00:20:47] Speaker 03:
He refers specifically to the parts of the paper where he contributed.

[00:20:56] Speaker 03:
He said he made significant contribution to the facilitator, as described in there, and the division of goals into sub-goals.

[00:21:07] Speaker 01:
Yes, he does state that, Your Honor, but as the board found, those are just high-level statements with not a lot of detail.

[00:21:18] Speaker 01:
There's no detail specifying what he did or how he did it, and at the end of the day,

[00:21:23] Speaker 01:
The board, throughout the final decision in multiple places, said this is what they found to be lacking, is there was nothing really tying that contribution.

[00:21:34] Speaker 01:
And the board made this decision based on the whole record of this case, which included all the testimony from Dr. Moran, Mr. Shire, and Mr. Martin.

[00:21:45] Speaker 01:
And there was ample testimony from Mr. Shire and Mr. Martin that Dr. Moran's role in the project was administrative in nature,

[00:21:53] Speaker 01:
You're working on presentations, working on clients, and that sort of thing.

[00:21:56] Speaker 03:
OK, there may be contrary testimony, but the problem is the board said it believed everybody.

[00:22:03] Speaker 01:
Your Honor, yes.

[00:22:04] Speaker 01:
So I would say that we don't believe that Google made out its prime official case and never carried its initial burden of production.

[00:22:13] Speaker 01:
However, assuming that Google did with the Moran Declaration,

[00:22:17] Speaker 01:
I came responding, and we responded with all of the testimony from Dr. Moran admitting that there was nothing corroborating, all the testimony from Mr. and Mr. Martin talking about Dr. Moran, you know, him being the administrative lead of the project, that he didn't, their testimony that Dr. Moran did not at, did not offer any

[00:22:40] Speaker 01:
Suggestions are even changing the overall architecture of the OA project.

[00:22:46] Speaker 01:
That's all fine.

[00:22:47] Speaker 03:
That's all fine.

[00:22:48] Speaker 03:
But the problem is the board said it believed everybody.

[00:22:52] Speaker 03:
If there's conflicting testimony, you can't believe everybody.

[00:22:56] Speaker 01:
But then at the end of the day, though, the board considered the entire record and found that Google's arguments and evidence lacking in persuasion.

[00:23:07] Speaker 01:
We don't believe that Google ever sustained its initial burden of production.

[00:23:11] Speaker 01:
But even if it did, we responded with a mountain of evidence.

[00:23:15] Speaker 01:
And the board considered all that evidence, which is very factual in nature.

[00:23:19] Speaker 01:
And they found that, at best, the evidence points out, the evidence shows that Dr. Moran was affiliated with the OAA project, yes.

[00:23:28] Speaker 01:
But there was not enough time to find any inventive concept that he came up with in the Martin reference itself.

[00:23:37] Speaker 00:
Mr. Hartzell, am I right that the board cited almost none of the Chire and Martin deposition evidence that you offer as support for you?

[00:23:59] Speaker 01:
Your Honor, the board doesn't, I admit the board doesn't regurgitate all of the information, but the board in multiple places in its final written decision says that they're relying on the entire record

[00:24:11] Speaker 01:
It makes statements based on all the record and all the evidence used to trial.

[00:24:15] Speaker 00:
OK.

[00:24:15] Speaker 00:
I wasn't making a point about what legal significance the absence of more particular citations might be.

[00:24:24] Speaker 00:
But just in fact, the board didn't say Mr. Chayer testified to Dr. Moran's limited role and what he played.

[00:24:33] Speaker 00:
And that supports.

[00:24:34] Speaker 00:
It just didn't say that, right?

[00:24:36] Speaker 01:
They didn't say that, Your Honor.

[00:24:38] Speaker 01:
I will point out that.

[00:24:40] Speaker 01:
There are various places in court in the board's final decision where they can cite two swaths of the briefing where a lot of that testimony is.

[00:24:51] Speaker 01:
For example, like on Appendix 24, you can see in the footnote where they cite things like at an owner's survey plight, 10 to 11.

[00:25:00] Speaker 01:
They do that throughout their opinion where they're citing various portions of part of the briefing and the evidence contained therein.

[00:25:07] Speaker 01:
But I admit they didn't regurgitate it all.

[00:25:09] Speaker 01:
And I think, I mean, it's only speculation on my part, but at the end of the day, the board, considering all this evidence, still came to the conclusion that Google had incurred a burden of persuasion, that paragraph 39 of the Moran Declaration was insufficient.

[00:25:27] Speaker 01:
It didn't go far enough and offer enough evidence or facts to establish that Dr. Moran made an advance of contribution.

[00:25:38] Speaker 01:
And I do think that has to be considered.

[00:25:40] Speaker 00:
Can I ask you, can you say something about Mr. Modi's argument about, to the effect, as I understood it, that IPA didn't meet a burden of production to in turn then

[00:25:56] Speaker 00:
require Google to carry the burden of persuasion.

[00:26:00] Speaker 00:
Anyways, I understand what Mr. Modi said is that the Rule 132 declarations are not enough to meet the burden of production, even though they were accepted and memorialized in the actual PTO assignment of inventorship to them.

[00:26:24] Speaker 01:
Yeah, Your Honor.

[00:26:26] Speaker 01:
The declarations do not stand alone.

[00:26:29] Speaker 01:
I understand who wants to make the argument that the only thing the board considered were the Rule 132 declarations.

[00:26:37] Speaker 01:
But as I just pointed out a minute ago, the board said they consider all of the evidence in this case, all of the testimony.

[00:26:44] Speaker 01:
And they found all of the testimony credible.

[00:26:46] Speaker 01:
And some of that testimony, and we cited it in our brief, was testimony from Mr. Shire and Mr. Martin.

[00:26:53] Speaker 01:
looking at the Martin reference itself and saying, no, that's our work.

[00:26:58] Speaker 00:
I think Mr. Modi was focusing, at least in part, maybe more than in part, on how what you rely on to satisfy your burden of production is all testimonial and not corroborated.

[00:27:13] Speaker 00:
What do you say to that?

[00:27:15] Speaker 00:
Either that, no, it was corroborated or corroboration in this context isn't required.

[00:27:22] Speaker 01:
Well, Your Honor, I do believe it's corroborated.

[00:27:24] Speaker 01:
So if you're going back to the original prosecution, 132 declarations, there are two of them.

[00:27:30] Speaker 01:
And they are from each inventor.

[00:27:33] Speaker 01:
That in itself is two people saying the same thing.

[00:27:35] Speaker 01:
That is some of them are corroboration.

[00:27:37] Speaker 01:
But then we also have the evidence from the recent depositions of Mr. Shire and Mr. Martin saying the same thing, confirming that the work of the Martin reference is theirs.

[00:27:50] Speaker 01:
Mr. Shire had testimony in the record.

[00:27:53] Speaker 01:
I believe it's on page 30.

[00:27:57] Speaker 03:
How is that corroborating?

[00:27:59] Speaker 03:
I mean, you mean they corroborated each other?

[00:28:01] Speaker 03:
That's not enough.

[00:28:03] Speaker 01:
Well, yes, each of Mr. Shire and Mr. Martin individually corroborated each other at two various points in time.

[00:28:12] Speaker 03:
I think we have cases saying that that's not corroboration, the testimony of co-inventors who

[00:28:18] Speaker 03:
have the same interest.

[00:28:20] Speaker 03:
It's not corroboration.

[00:28:22] Speaker 01:
But we have that testimony.

[00:28:24] Speaker 01:
And then in addition, we also have the evidence and arguments we put forward in the brief and before the board that, as you may recall, when the applications were filed, there was approximately 130 pages of source code that was included in there.

[00:28:41] Speaker 01:
It was included so that a practitioner could actually implement the invention.

[00:28:47] Speaker 01:
All of that source code

[00:28:48] Speaker 01:
is written by Mr. Shire.

[00:28:53] Speaker 03:
How does that corroborate testimony that supposedly Moran was not involved in the inventive concepts?

[00:29:02] Speaker 03:
I mean, I don't understand.

[00:29:04] Speaker 01:
Because the source code, it was supplied so that practitioners could implement the invention.

[00:29:12] Speaker 01:
And the source code was implementing facilitators in various aspects.

[00:29:16] Speaker 01:
of that.

[00:29:17] Speaker 01:
That code is written by Mr. Shia and Mr. Martin.

[00:29:20] Speaker 01:
I would say this is akin to, I think, the De Bon case where the inventor's testimony was corroborated by the drawing, and that was sufficient in that case.

[00:29:32] Speaker 01:
Here we've got actual code implementing some of these foundational concepts.

[00:29:38] Speaker 01:
And that was written by Mr. Shire and Mr. Martin and not Dr. Ram.

[00:29:43] Speaker 00:
Can I ask this?

[00:29:45] Speaker 00:
I think I remember reading somewhere maybe in your filings before the board, and I don't remember whether you made a point of this in this court, that at least Mr. Shire was not an interested party.

[00:30:00] Speaker 00:
that he wasn't working, he was not employed by IPA or something like that.

[00:30:08] Speaker 00:
Can you?

[00:30:09] Speaker 01:
That's correct, your honor.

[00:30:10] Speaker 01:
Both Mr. Scheier and Mr. Martin, at the time of their deposition, I believe were both employed by Samsung.

[00:30:20] Speaker 01:
And they were not allowed to voluntarily testify or participate in these proceedings.

[00:30:26] Speaker 01:
You had to subpoena them.

[00:30:28] Speaker 01:
And we had to

[00:30:30] Speaker 01:
and it's something that, uh, it's a position that Google fought vigorously, but the board did ultimately allow us to subpoena them and get this, to get this information testimony.

[00:30:41] Speaker 03:
Sure, but don't they, they have an interest, don't they, in being named the Sullen-Venters?

[00:30:48] Speaker 01:
I'm not sure that they have an interest with you.

[00:30:50] Speaker 01:
Uh, I'm not sure if we put it in our brief, but Mr., Mr. Shire is very candid, is very candid in his deposition that,

[00:30:58] Speaker 01:
He doesn't really care what happens to these patents.

[00:31:01] Speaker 01:
He doesn't care who wins or who loses.

[00:31:03] Speaker 01:
He said, all he cares about is not being subpoenaed to sit in depositions.

[00:31:07] Speaker 01:
So from that perspective, Mr. Shire was pretty forthright.

[00:31:11] Speaker 01:
And I don't think he's interested.

[00:31:13] Speaker 03:
Do you think that testimony is enough to show that he's not interested?

[00:31:21] Speaker 01:
That is his statement, Your Honor.

[00:31:22] Speaker 01:
I mean, the man is very clearly doesn't

[00:31:26] Speaker 01:
doesn't want to be bothered any further, doesn't really care if it happens, what happens, happens.

[00:31:33] Speaker 00:
Well, can I ask another record question?

[00:31:37] Speaker 00:
So I'm looking at the Moran Declaration, paragraph 39, and looking in particular at the sentence that refers to using a facilitator as described in sections 4 and 4.1 to 4.5 of the reference.

[00:31:55] Speaker 00:
At least when I'm looking at this quickly, it's just 4.5.

[00:32:03] Speaker 00:
of that reference that is headed facilitation that seems to address the facilitator.

[00:32:10] Speaker 00:
And the opening sentence of that is, facilitation plays a central role in OAA.

[00:32:15] Speaker 00:
At its core, our notion of facilitation is similar to that proposed by generous site number seven, which is to a 1994, I guess, unpublished manuscript.

[00:32:31] Speaker 00:
Um, was there any record development?

[00:32:35] Speaker 00:
This ties into this issue that I was exploring a little bit with Mr. Modi about whether the, the facilitator without more was old and therefore not inventive, which maybe this suggests, although maybe an unpublished manuscript from 1994 doesn't count.

[00:32:55] Speaker 00:
Was this sort of thing explored in the record?

[00:32:58] Speaker 01:
No, Your Honor, this sort of thing was not explored in this record.

[00:33:02] Speaker 01:
But to your point earlier, the facilitator that's playing has to do a lot of other things, and very specific and unique things, all of which, as you pointed out earlier, Dr. Moran doesn't say that he contributed work.

[00:33:19] Speaker 01:
And Your Honor, I see that I'm out of time.

[00:33:21] Speaker 03:
Well, he says it's described in Paragraphs 4.1, 4.5, right?

[00:33:29] Speaker 01:
He makes a generic statement, that generic statement, yes, your honor, but that covers a lot of ground.

[00:33:36] Speaker 01:
And I do think it's important that, especially when your assessment will be relied on to essentially validate a patent, that his declaration needed to be a little bit more specific.

[00:33:46] Speaker 01:
And this is what the board found ultimately, and persuasively.

[00:33:56] Speaker 03:
Okay, thank you.

[00:33:59] Speaker 03:
Mr. Modi, you've got two minutes.

[00:34:02] Speaker 04:
Your Honor, just a few points.

[00:34:05] Speaker 04:
I heard them say again that Dr. Moran's contribution was only administrative.

[00:34:10] Speaker 04:
Of course, the record does support that.

[00:34:12] Speaker 04:
The board found in the appendix that Dr. Moran's contribution was to the foundational concepts and that his contribution to OA was not, that it's not a close question, that he did contribute technically to the OA project.

[00:34:28] Speaker 04:
Second, I heard them say that the testimony, Judge Rauner, going to your question, you're absolutely right.

[00:34:34] Speaker 04:
If you look at the board's decision when they cite to shy Mr. Carter.

[00:34:37] Speaker 00:
Why does that matter?

[00:34:38] Speaker 04:
It's a legal matter.

[00:34:38] Speaker 00:
Substantial evidence is judged on the record as a whole.

[00:34:42] Speaker 04:
So the reason it matters, Your Honor, is because the board did say that the only thing they found in IPA's favor

[00:34:47] Speaker 04:
is are the 132 declarations themselves, right?

[00:34:51] Speaker 04:
They said that at appendix 23 to 24, that was the only thing that they found would rely on an IPA's favor.

[00:34:57] Speaker 04:
But then when you step back and look at the evidence, when decided to Mr. Shire and Mr. Martin, it was only in favor of Google and in favor of what Dr. Moran's contributions were.

[00:35:06] Speaker 04:
So we do think that's pertinent.

[00:35:09] Speaker 04:
And then they said, I heard them use the term mountain of evidence.

[00:35:12] Speaker 04:
All we had was the two declarations that were conclusory, clearly not enough under American.

[00:35:18] Speaker 04:
They talked about the Marion and Shire deposition testimony that I already addressed.

[00:35:22] Speaker 04:
They cited the source code.

[00:35:23] Speaker 04:
And I think Judge Reich, you're right.

[00:35:24] Speaker 04:
The source code doesn't answer the relevant question whether they, in fact,

[00:35:28] Speaker 04:
were the only ones who contributed to the subject matter of the Martin paper.

[00:35:33] Speaker 04:
And we simply, they utterly failed to make that showing.

[00:35:36] Speaker 04:
They had the evidence.

[00:35:37] Speaker 04:
They acquired these patents from SRI.

[00:35:40] Speaker 04:
SRI's witnesses came into this proceeding, yet they came forward with no evidence.

[00:35:44] Speaker 04:
The stuff that they're asking that we should have provided, they had access to it.

[00:35:48] Speaker 04:
They didn't.

[00:35:48] Speaker 04:
And ultimately, if you look at the record,

[00:35:51] Speaker 00:
You don't mean literally no evidence.

[00:35:54] Speaker 00:
You mean no non-testimonial evidence.

[00:35:58] Speaker 00:
That's right.

[00:35:59] Speaker 04:
And in fact, if you look at, for example, the contemporaneous papers, the other papers that we cite too, they completely support Dr. Moran's testimony.

[00:36:05] Speaker 04:
This is not present-day testimony.

[00:36:07] Speaker 04:
That's what he said in 2003 in the other papers.

[00:36:10] Speaker 04:
Finally, Judge Tronnell, I just want to give you a side to that whole recursion concept, the decomposing goals concept.

[00:36:15] Speaker 04:
If you look at, again, Appendix 3049, that's the Martin paper that talks about decomposing requests into sub-requests.

[00:36:22] Speaker 04:
Then you can compare that, for example, to Appendix 118, which is the patent.

[00:36:26] Speaker 04:
at column 12, lines 5 through 8.

[00:36:28] Speaker 00:
Right, to spec.

[00:36:29] Speaker 00:
No, no, no.

[00:36:30] Speaker 00:
No doubt about the spec.

[00:36:30] Speaker 00:
Right, right.

[00:36:31] Speaker 04:
But then I think those concepts of decomposing goals into sub-goals is in the claims, for example, in claim 22.

[00:36:38] Speaker 00:
Can I ask you one sort of administrative question?

[00:36:41] Speaker 00:
Do I understand correctly that on the current state of board rulings, the only claim in this case

[00:36:50] Speaker 00:
that still stands is claim 63.

[00:36:53] Speaker 00:
There's one more.

[00:36:56] Speaker 04:
Claim 28.

[00:36:57] Speaker 04:
28 and 68 also.

[00:36:59] Speaker 04:
Yes.

[00:37:02] Speaker 03:
Okay.

[00:37:02] Speaker 04:
Thank you.

[00:37:03] Speaker 03:
Thank you.