[00:00:00] Speaker 04: Okay, good morning everyone. [00:00:02] Speaker 04: The first augured case this morning is number 21, 1992, Universal Electronics Incorporated against Roku Incorporated, Mr. Nicodemus. [00:00:17] Speaker 00: Good morning, Your Honor. [00:00:18] Speaker 00: Please support [00:00:20] Speaker 00: And the first issue I'd like to address is the board's finding that there was a motivation to combine Misha, Rye, and Karras references with the Karras signal modulation of Dubil or Skerlos. [00:00:32] Speaker 00: In making that finding, the board committed reversible error. [00:00:35] Speaker 00: It was not based on substantial evidence. [00:00:38] Speaker 00: Now, if the court agrees with me, this finding applies to all the challenge patents, all the grounds of unpatentability, and all the challenge claims. [00:00:47] Speaker 00: So if there was not a sufficient motivation to combine the references, the board's unpatentability judgment should be reversed. [00:00:56] Speaker 00: Now, the board was obligated to articulate an affirmative reason why a person of ordinary skill would combine references. [00:01:03] Speaker 00: It's not enough to show that references could be combined, and it's not enough to say that something was known in the art. [00:01:09] Speaker 00: Because something being known in the art is a matter of disclosure, and motivation to combine is a separate. [00:01:15] Speaker 03: Counsel, what about Dr. Russ's declaration and the expert testimony? [00:01:21] Speaker 03: And as I understand it, those primary references suggest using IR [00:01:28] Speaker 03: And then the secondary references teach pulse width modulation in which to do that. [00:01:34] Speaker 03: Why isn't it? [00:01:38] Speaker 03: Why wasn't the board's finding that modification of the first reference and lighted the second reference in order to have the implementation details for the pulse width modulation? [00:01:52] Speaker 03: Why isn't that a sufficient reason for modification? [00:01:55] Speaker 00: Because all Dr. Russ did was say that carrier signal modulation [00:02:01] Speaker 00: was known out of the many other wireless transmission techniques. [00:02:06] Speaker 03: He didn't refer to the secondary references at all in saying that? [00:02:09] Speaker 00: Well, what he said was, I can read you, this is that appendix page A1057. [00:02:15] Speaker 00: It's his paragraph 82. [00:02:17] Speaker 00: Now the board relied on paragraphs 82 to 93 of Dr. Russ's declaration finding motivation to combine. [00:02:25] Speaker 00: The full appendix page span for that is 1057 through 1062. [00:02:30] Speaker 00: All he does [00:02:31] Speaker 00: in those paragraphs is cite references to show why carrier signal modulation was known. [00:02:37] Speaker 00: And I think if we look in paragraph 82, Your Honor, his introduction to his discussion of those references tells it all. [00:02:45] Speaker 00: This is what he says, quote, Opposer would have known to transmit key codes by modulating the key codes onto carrier signals, period. [00:02:53] Speaker 00: For example, it was well known to utilize modulation techniques to wirelessly transmit key codes. [00:03:00] Speaker 00: So all he's saying there, to my reading, is that carrier signal modulation was known. [00:03:06] Speaker 00: Now, Dr. Russ admits, as did the board, that UEI's expert Dr. Sprengler, in his declaration, [00:03:15] Speaker 00: gave an opinion that there were several options for transmitting an IR or RF signal in the art at the time. [00:03:22] Speaker 00: He specifies what the other options are. [00:03:24] Speaker 03: What about, I mean, I see what you're pointing to there, but what about like page A1083? [00:03:29] Speaker 03: I mean, you're looking under a section that's got the heading, transmitting key codes via modulating key codes onto carrier signals as well. [00:03:39] Speaker 03: And that's true. [00:03:40] Speaker 03: That is with the following multiple paragraph support. [00:03:44] Speaker 03: But what about, you know, there's, for example, paragraph 125, 126, where it talks about how what Mishra teaches and how Oppose would have understood the wireless transmission would have been, it doesn't explicitly describe the modulation. [00:04:05] Speaker 03: And then, as previously explained, if the opposer did not know the operational details, the opposer would look to other references, such as De Bill describing protocols for performing this transmission. [00:04:16] Speaker 00: I think that's official. [00:04:17] Speaker 00: I'm sorry, Your Honor. [00:04:18] Speaker 00: I don't think he's saying anything different there than he's saying in paragraph 82, that he looked to that reference, like De Bill, because [00:04:27] Speaker 00: carrier signal modulation was known. [00:04:29] Speaker 00: I think what he's doing is he's looking at the claim element and engaging in a hindsight reconstruction. [00:04:35] Speaker 00: Now, we have to look at what the board relied on. [00:04:37] Speaker 00: They relied on paragraphs 82 to 93 of Dr. Russ's declaration to come to their conclusion. [00:04:45] Speaker 00: And in those paragraphs, all he talks about is that carrier signal modulation was known. [00:04:50] Speaker 00: Now, there's no dispute there. [00:04:52] Speaker 01: Why isn't that enough that it's known in the art? [00:04:56] Speaker 01: Why wouldn't a postal look at modulation to find that it was well-known in the analogous art, and to better understand how to have a combination with respect to modulation? [00:05:10] Speaker 00: Sure, Your Honor. [00:05:12] Speaker 00: Now, most patents, if not all patent claims, are based on a combination of things that are known. [00:05:19] Speaker 00: And if you look at the cases we cited, for example, the nuvasive case, [00:05:25] Speaker 00: disclosure in the art, what is known, is different than is there a motivation combined. [00:05:30] Speaker 00: Because whether the skilled artisan is relying on personal knowledge of something to be known or a secondary reference of something to be known, there still has to be the motivation to put the two together. [00:05:44] Speaker 00: It's not enough to say, well, this is known. [00:05:46] Speaker 00: It's obvious. [00:05:48] Speaker 03: What about the motivation is to implement the modulation technique? [00:05:53] Speaker 03: Like, for example, again, looking at page A1085, Dr. Russell's declaration at paragraph 128 talks about how it would have been predictable and desirable to implement the well-known modulation techniques described in the bill. [00:06:07] Speaker 03: to transmit the control code in the primary reference. [00:06:10] Speaker 03: Why isn't that enough? [00:06:12] Speaker 03: I mean, the primary references say, I want to use IR, but they don't give the implementation details. [00:06:18] Speaker 03: Multiple secondary references give the implementation details of exactly how to do that modulation. [00:06:24] Speaker 03: And so therefore showing that that which the first reference hints at is actually well known and easily modulated, why isn't that a good reason to combine? [00:06:36] Speaker 00: Because what he's doing in that analysis, Your Honor, is looking at the claim element and then saying, OK, I need modulation. [00:06:42] Speaker 00: Now let me find a reference that discloses modulation. [00:06:45] Speaker 03: That's a factual question, right? [00:06:46] Speaker 03: You're arguing hindsight, which is a factual question. [00:06:49] Speaker 00: Well, I'm arguing that his motivation to combine is legally insufficient, because all he did was say, if something is known, I can choose it, even though there were many other alternatives. [00:06:59] Speaker 00: Now if you look at the declaration of Dr. Sprangler, [00:07:03] Speaker 00: He says that Dr. Russ did not conduct an analysis of whether to use modulation in the first place. [00:07:08] Speaker 03: How many modulation techniques were known? [00:07:10] Speaker 03: How many ways to send the IR? [00:07:12] Speaker 03: Are you making an argument that there's so many different ways that a person with ordinary scaling art wouldn't have been motivated to pick this particular one? [00:07:20] Speaker 00: Well, I'm relying on paragraphs 144 to 149 of Dr. [00:07:25] Speaker 00: Sprangler's Declaration where he says there are several different techniques and the board recognizes, he specifies what the other options are, he describes various trade-offs that a person of ordinary skill might consider in selecting among those various options. [00:07:39] Speaker 03: The problem I'm having with your argument is that this is a substantial evidence question. [00:07:44] Speaker 03: And the question is whether the board's analysis was reasonable, whether its fact finding was reasonable. [00:07:51] Speaker 03: And I understand you're pointing to alternative expert testimony presented by your client. [00:07:58] Speaker 03: But why can't the board rely on the expert testimony provided by Roku? [00:08:07] Speaker 00: Sure. [00:08:07] Speaker 00: I'm saying, Your Honor, that it was an error of law for the board to do that because all Dr. Rust did is say, [00:08:16] Speaker 00: carrier signal modulation was known. [00:08:18] Speaker 00: And I think it's significant to look at why the board. [00:08:22] Speaker 01: Council, why is that here? [00:08:24] Speaker 01: Help me with understanding this party argument. [00:08:27] Speaker 01: Are you saying that it's not enough that something be known in the prior art, that there has to be more, that you have to also show, for example, through evidence that the prior art is analogous? [00:08:42] Speaker 00: No. [00:08:43] Speaker 00: I think you have to show an affirmative motivation [00:08:45] Speaker 00: why, out of several alternatives that are known, the skilled artisan chose one of them. [00:08:55] Speaker 00: Now, I think it's important to look at how the board tried to discount Dr. Sprengler's testimony. [00:09:01] Speaker 00: And I think the board made an error of law there, too. [00:09:04] Speaker 00: They cited this case in Ray Moet, this court's case from 2012, [00:09:09] Speaker 00: Knowing that Dr. Sprangler said there are many different alternatives, and there are trade-offs, et cetera. [00:09:17] Speaker 00: So the board cites Inray Moet for the proposition that the availability of better alternatives in the prior art does not mean that an inferior combination is in act for obviousness purposes. [00:09:27] Speaker 00: But if you look at the case, it's a teaching away case. [00:09:32] Speaker 00: This is not a teaching away situation. [00:09:34] Speaker 00: The question here is whether Dr. Russ and the board conducted a proper motivation and combined analysis by relying on the fact that carrier signal modulation was known while failing to explain why a person of ordinary skill would have chosen that over all the other known methods. [00:09:51] Speaker 03: What does your patent specification say about carrier signal modulation? [00:09:56] Speaker 00: The inventor said that carrier signal modulation is a known technique. [00:10:01] Speaker 00: So there are many other known techniques for wireless transmission. [00:10:05] Speaker 03: Does it say why it's so valuable or why that's important? [00:10:09] Speaker 03: Is there anything in your specification that explains [00:10:14] Speaker 03: Is that an important aspect of the invention? [00:10:17] Speaker 00: Well, it's part of the claim, so all the claim elements are important. [00:10:21] Speaker 03: I don't think it says one way or the other, Joe. [00:10:22] Speaker 03: You're saying that the specification, as I understand it when I read the specification, it says it's well known. [00:10:28] Speaker 03: It also doesn't seem to suggest that it was really important to pick that particular modulation technique. [00:10:35] Speaker 03: But maybe I missed it. [00:10:36] Speaker 00: Yeah, I don't think it says one way or the other. [00:10:38] Speaker 03: OK. [00:10:40] Speaker 00: I'm looking at my clock. [00:10:42] Speaker 00: If your honors don't have any other questions on this matter, I'd like to address one other issue. [00:10:47] Speaker 00: That is the board's claim construction of the generating step. [00:10:53] Speaker 00: that involves grounds 1 and 2 and claims 1 to 4, 6, 7, 8, 9 and 2 to 25 of the 642 patent and ground 1 and claims 2 to 3 of the 389 patent. [00:11:05] Speaker 00: So the full claim element reads generating a key code within a key code generator device using the keystroke indicator signal. [00:11:14] Speaker 00: Now the board construed that term to mean that the key code can be generated by merely translating it or converting the code [00:11:23] Speaker 00: into another format and that generating just doesn't mean identifying a key code. [00:11:30] Speaker 01: Did you raise this argument before the board? [00:11:33] Speaker 00: Yes. [00:11:34] Speaker 00: If you look at appendix pages 24 to 27, the board went into a detailed analysis of the ordinary meaning of the term generating based on the specification in terms of the generating step. [00:11:52] Speaker 01: Let me have a citation to appendix page 24 to 27. [00:11:57] Speaker 03: I also wanted to ask you a question about this issue. [00:12:02] Speaker 03: I'm trying to understand why the claim construction matters. [00:12:07] Speaker 03: And the reason why is because I see two places where the board says, for example, at page A56 to 57, they say that we agree with the petitioner that Rye does not simply convert the format of the signal, but instead performs an active selection of a key code and wirelessly transmits this key code using IR emitter 48. [00:12:29] Speaker 03: And then similarly, when talking about NISRA, [00:12:32] Speaker 03: They say it's not just, it actually transmits a key code so that the master set-top box can identify the corresponding key code. [00:12:41] Speaker 03: 38, A38. [00:12:43] Speaker 03: So I'm wondering, it seemed to me that the board was saying, hey, the partner teaches the claims as you construe them anyway. [00:12:52] Speaker 03: And so I'm wondering why we should be second guessing the board's construction when it seems to be addressing your claim construction. [00:13:00] Speaker 00: Well, I think what the board actually found, Your Honor, is that Mischa and Ra disclosed merely translating or converting a received key code into another format and not identifying, simply identifying. [00:13:11] Speaker 00: There wouldn't have been that fight between the parties if they disclosed anything else. [00:13:16] Speaker 00: And the appendix pages I can cite for you are appendix page 29. [00:13:21] Speaker 00: 31, 39, 54 to 55, and 122. [00:13:27] Speaker 03: Can you address my concern about pages 56 to 57? [00:13:30] Speaker 03: Sure. [00:13:31] Speaker 00: Sure. [00:13:33] Speaker 03: It's the paragraph that starts on page 56 and goes down to 57, and talking specifically about Rye, and saying we agree with the petitioner that Rye doesn't simply convert. [00:13:48] Speaker 03: the format. [00:13:50] Speaker 03: I think you're arguing that the board erred by interpreting the claim to simply require and convert the format. [00:13:57] Speaker 00: So if we look at 54 and 55, petitioner argues that Rye does not explicitly describe the back-end operational details between the wireless transmission of key codes. [00:14:06] Speaker 00: He says Rye teaches the wireless transmission of control codes, key codes, [00:14:10] Speaker 00: to an electronic consumer device by the transceiver using an IR emitter, a person who were near skill in the art looking to understand these operational details would have known to look to references such as Dubil. [00:14:22] Speaker 00: So again, there's a combination going on here. [00:14:25] Speaker 00: Because if I'm looking at these other pages, such as appendix page 29, 31, [00:14:35] Speaker 03: Do you not read the paragraph that starts on page 856 and goes to 857 the same way I do? [00:14:43] Speaker 00: I don't. [00:14:44] Speaker 00: I don't believe that that paragraph says that these references degenerating means identifying. [00:14:52] Speaker 00: I believe that if you read the board's opinion in its entirety, including the pages I cited, the board was saying Mishra and Rai [00:15:02] Speaker 00: disclose merely translating or converting. [00:15:05] Speaker 03: Just so you know, I did read it in its entirety. [00:15:07] Speaker 00: Oh, I'm sure you did, Your Honor. [00:15:09] Speaker 03: I didn't mean to suggest otherwise. [00:15:10] Speaker 03: These two sections that I was referring to just really gave me pause. [00:15:14] Speaker 03: I was trying to understand. [00:15:15] Speaker 03: Thank you. [00:15:17] Speaker 00: And I see I have 30 seconds. [00:15:20] Speaker 00: Well, now it's counting up. [00:15:21] Speaker 00: OK. [00:15:22] Speaker 04: We will save your rebuttal time. [00:15:24] Speaker 04: Do you need a last word at the moment, or should we hear from the other side? [00:15:29] Speaker 00: I'll save this for my rebuttal. [00:15:30] Speaker 00: OK. [00:15:31] Speaker 00: Thank you, Your Honor. [00:15:31] Speaker 04: I appreciate it. [00:15:33] Speaker 04: Mr. Brash? [00:15:35] Speaker 02: Thank you, Your Honor, and may it please the court. [00:15:38] Speaker 02: I'll begin, as counsel did, with the modulation limitation. [00:15:43] Speaker 02: Carrier signal modulation was a conventional and routine and well-known way [00:15:52] Speaker 02: transmit information via RF and via IR well before the time of invention. [00:15:59] Speaker 01: There may be the case, but isn't the board required to provide a reason under KSR for motivation? [00:16:11] Speaker 02: Well, for yes, the board's required to articulate a motivation. [00:16:15] Speaker 02: But the motivation under KSR doesn't have to be kind of expressly in the references. [00:16:21] Speaker 02: And what Dr. Russ testified to and what the board relied on. [00:16:25] Speaker 01: But wouldn't you agree that in this case, it's kind of left up to the court to kind of put things together to connect the dots? [00:16:38] Speaker 02: I think Dr. Russ connected the dots, and the board relied on Dr. Russ's testimony. [00:16:45] Speaker 02: So if you look at appendix 45, for example, there the board is talking about in the middle paragraph, [00:17:00] Speaker 02: And in the middle of the middle paragraph, although Mishra may not be explicit in suggesting carrier signal modulation, Dr. Russ provides sufficient basis, in light of the well-known practice of using carrier signal modulation for RF and IR transmission, that a person of skill in the art would have understood such a suggestion from Mishra's disclosure of such a transmission technique. [00:17:21] Speaker 02: And if we turn to Dr. Russ's testimony, [00:17:36] Speaker 01: That deepens the mystery for me. [00:17:41] Speaker 01: You say that although Mishra may not be explicit in suggesting, I mean, doesn't KSR require at least some degree of explicitness in order to fully understand what the motivation is? [00:17:54] Speaker 02: Yes, and Mishra does suggest that to the skilled artisan. [00:17:59] Speaker 02: So Dr. Russ explained in his declaration this was [00:18:03] Speaker 02: Paragraphs, well, it said appendix 1057 all the way through 1062. [00:18:08] Speaker 02: He relies on no less than five other prior art references to show that these carrier signal modulation was well known for RF and IR transmission. [00:18:22] Speaker 03: So Mishra is the primary reference? [00:18:24] Speaker 03: Yes. [00:18:25] Speaker 03: And then so Mishra doesn't explain, it doesn't say expressly, that it would use carrier signal modulation. [00:18:32] Speaker 03: But these five secondary references explain the use of carrier signal modulation. [00:18:38] Speaker 03: Are they in remote control embodiments or other embodiments? [00:18:43] Speaker 02: I'm not sure. [00:18:46] Speaker 02: OK. [00:18:48] Speaker 02: At paragraph 126, Judge Stolwich appointed to where Dr. Russ is actually talking about the application of MISRA to the modulation step. [00:18:58] Speaker 02: And this is at appendix 1083. [00:18:59] Speaker 02: Dr. Russ says that while the skilled artisan would have understood that the wireless transmission of a control code using radio frequency or an infrared frequency would have been performed, [00:19:17] Speaker 02: via the modulation of the control code onto a carrier signal, Miescher doesn't explicitly describe the modulation. [00:19:25] Speaker 02: But because Miescher describes transmission via IR and transmission via RF, the skilled artist in reading that would know that at the time of the invention, that that was conventionally done. [00:19:37] Speaker 02: That's your argument. [00:19:39] Speaker 01: The board doesn't say that. [00:19:40] Speaker 02: I think the board does say that in appendix 45 in almost the same words as Dr. Russ. [00:19:47] Speaker 02: Although Mishra may not be explicit in suggesting carrier signal modulation, Dr. Russ provides sufficient basis. [00:19:55] Speaker 02: In light of the well-known practice of using carrier signal modulation for RF and IR transmission, [00:20:00] Speaker 02: that a person of skill in the art would have understood such a suggestion from Mishra's disclosure. [00:20:06] Speaker 02: And that's what Dr. Russ said, that given that there's wireless transmission using radio frequency and infrared, that modulation would have been what the skilled artisan would have used. [00:20:19] Speaker 02: Now, a lot of their argument hinges on [00:20:24] Speaker 02: Their allegation that Dr. Springer testified that, oh, there were many other ways to transmit information over IR and RF besides modulation. [00:20:33] Speaker 02: But when you peek under the hood, you can look high and low through UEI's briefing. [00:20:38] Speaker 02: They don't call out any of those alternate ways to transmit information wirelessly via IR and RF. [00:20:48] Speaker 03: Did he say many different? [00:20:51] Speaker 03: What exactly did he say? [00:20:52] Speaker 02: Right. [00:20:53] Speaker 02: So Dr. Springer's declaration, you can see at appendix 2869, [00:21:16] Speaker 02: And it's paragraphs 145 and 146. [00:21:23] Speaker 02: And when you read it carefully, in paragraph 145, Dr. Springer claims that modulation onto a carrier signal is only one of several options for transmitting a signal. [00:21:35] Speaker 02: And let me be clear that modulation onto a carrier signal, that is what modulation is. [00:21:42] Speaker 02: changing a carrier signal so that you can send information. [00:21:45] Speaker 01: So far, all you've shown is that this is known in the ART. [00:21:50] Speaker 01: You haven't yet, I think, pointed to a reason for the motivation to combine. [00:21:55] Speaker 01: There's got to be a reason. [00:21:58] Speaker 02: Right. [00:21:58] Speaker 02: And the reason is that when you use and when the prior ART references call out IR transmission and RF transmission, [00:22:11] Speaker 02: those two forms of wireless transmission. [00:22:14] Speaker 02: What Dr. Russ explained in detail is that the skilled artisan would have recognized that for that form of transmission, carrier signal modulation is the conventional and routine and thus obvious way of transmitting information. [00:22:32] Speaker 02: And the board relied on Dr. Russ' testimony [00:22:35] Speaker 02: to make that factual finding and that's entitled to substantial deference. [00:22:39] Speaker 02: But when you look at what Dr. Springer is saying at paragraph, so if you go to paragraph 146 where he says in fact there are other approaches the skilled artisan could take advantage of to increase error resiliency. [00:22:55] Speaker 02: And then when he goes down and says there are a number of alternative approaches to using intermediate carrier frequency, he says, oh, well, such methods include different signal modulation. [00:23:06] Speaker 02: Well, that's still modulation. [00:23:08] Speaker 02: Line code encoding schemes, well, those are ways of putting information onto a signal that then gets modulated. [00:23:16] Speaker 02: And then parity information and error checking or correcting or a combination thereof, those are techniques that are used with modulation. [00:23:24] Speaker 04: I would have thought that the issue to be developed was whether or not the technology existed to make this combination, not whether it would have been obvious to make the combination if the technology existed. [00:23:41] Speaker 04: But I didn't see that that was discussed by the experts by either side. [00:23:47] Speaker 04: Is that actually a non-issue? [00:23:52] Speaker 02: Well, I think, Dr. Ross, [00:23:54] Speaker 02: did both. [00:23:56] Speaker 02: He explained that for IR and RF transmission, that carrier signal modulation was the conventional and well-known way to go about transmitting information. [00:24:09] Speaker 02: And he testified that the skilled artist in dust, looking at Mishra and Rye, which both, sorry, yeah, looking at the primary references, Mishra and Rye, that they both [00:24:22] Speaker 02: call out RF and IR transmission, and the skilled artisan would have recognized from that disclosure that the conventional and well-known way to go about carrying out that transmission of information is with carrier signal modulation. [00:24:39] Speaker 02: And when you peek under the hood, the only non-modulation technique that Dr. Springer actually suggested was somehow turning on and off an IR signal. [00:24:52] Speaker 02: That was it. [00:24:53] Speaker 02: And the board never made a finding. [00:24:55] Speaker 04: OK, you're not answering my question. [00:24:57] Speaker 02: OK. [00:24:59] Speaker 04: To get to the foundation of all of this, if it was so obvious to make this combination all these years, with wireless transmission as standard, all of the ins and outs are known, how come it wasn't done until these inventors did so? [00:25:19] Speaker 02: Use of carrier signal modulation. [00:25:22] Speaker 02: to transmit information via IR and RF was done. [00:25:27] Speaker 04: Yes, exactly. [00:25:28] Speaker 04: That's the problem. [00:25:30] Speaker 04: It was done. [00:25:30] Speaker 04: It was the combination that they tell us is what's special of the two forms of wireless transmission, IR and RF. [00:25:41] Speaker 02: I don't think the particular combination of IR and RF is what's novel here. [00:25:49] Speaker 02: is one way that the remote control can communicate with the set-top box. [00:25:57] Speaker 02: And IR is a way that the remote control can communicate directly with the television. [00:26:02] Speaker 02: But that's not the point of novelty, the combination of IR and RF. [00:26:08] Speaker 03: Council? [00:26:09] Speaker 02: Yes. [00:26:10] Speaker 03: Why is it that you think that your primary reference doesn't give the implementation detail that your secondary references provide? [00:26:19] Speaker 02: Because it was so well known in the art. [00:26:23] Speaker 03: That they just didn't give that detail? [00:26:25] Speaker 02: And the patents at issue here don't give the detail either. [00:26:30] Speaker 02: In fact, they say expressly that different modulation techniques were well known in the art. [00:26:36] Speaker 02: This is absolutely not an invention about [00:26:38] Speaker 02: modulation at all. [00:26:42] Speaker 02: The patent repeatedly says that modulation techniques were well known in the art. [00:26:49] Speaker 01: I think the bottom line is that the board... What's your legal authority for the position that you seem to be arguing that all you have to say is that it was well known in the art and that you meet the requirements for [00:27:07] Speaker 01: motivation to combine under KSO? [00:27:12] Speaker 02: Well, I don't think that's our position. [00:27:14] Speaker 02: What Dr. Russ testified, and this is, again, paragraph 126 of appendix 1083, and this is what the board relied on to make its fact finding, is that the skilled artisan would have understood, reading Mishra, [00:27:31] Speaker 02: In view of Mishra's disclosure of RF and IR transmission, the skilled artisan would have understood that that would have been done via carrier signal modulation. [00:27:44] Speaker 02: And he provides ample background support for that earlier in the background section of his testimony. [00:27:52] Speaker 02: And the board expressly relied on that testimony. [00:27:55] Speaker 02: And that finding is entitled to deference. [00:27:59] Speaker 03: What about, are you relying also on the finding that it would have been predictable and desirable to implement the well-known modulation techniques described into Bill to transmit the code in the primary reference? [00:28:12] Speaker 03: I'm looking at page 1085, where it talks about predictable and desirable and yielding predictable results. [00:28:20] Speaker 03: It's paragraph 128. [00:28:22] Speaker 02: Right. [00:28:24] Speaker 02: prong of obviousness is reasonable expectation of success and the predictability of the art. [00:28:30] Speaker 02: And again, this was all well known probably for decades prior to the invention. [00:28:39] Speaker 02: And again, the board relied heavily on Dr. Russ's testimony all the way through on this point. [00:28:50] Speaker 03: I don't read this paragraph to only talk about reasonable results or expected success, because it does say motivation in this paragraph. [00:29:02] Speaker 03: Am I misreading the paragraph? [00:29:04] Speaker 03: It says, I suppose it would have been motivated. [00:29:06] Speaker 02: I'm sorry. [00:29:07] Speaker 02: Where are you exactly? [00:29:08] Speaker 03: I'm on page A1085. [00:29:11] Speaker 03: We're on the middle of the page. [00:29:15] Speaker 03: It says, because Debil discloses an organized framework, Debil being the remote control secondary reference, because Debil discloses an organized framework for transmitting, storing, and using remote control commands, APOZA would have been motivated to implement the teachings of Debil and Mishra, motivated the teachings of Debil with Mishra. [00:29:37] Speaker 03: See, in other words, I read that sentence. [00:29:39] Speaker 03: Maybe I'm wrong. [00:29:40] Speaker 03: But it says, because the secondary reference, Debil, teaches, [00:29:44] Speaker 03: one way, an organized framework for sending remote control commands, opposed to what had been motivated to implement that in Mishra, which teaches another remote control. [00:29:56] Speaker 03: Am I misreading that sentence? [00:29:59] Speaker 02: I don't think you're misreading it, but again, this is not [00:30:08] Speaker 02: patent on carrier signal modulation or modulation. [00:30:12] Speaker 03: No, I'm just asking you. [00:30:13] Speaker 03: This is a separate statement in Dr. Russ's declaration supporting a motivation of combined. [00:30:19] Speaker 03: That's all I'm asking. [00:30:20] Speaker 02: Yeah. [00:30:21] Speaker 02: OK. [00:30:22] Speaker 02: I don't think you're misreading it at all. [00:30:23] Speaker 02: OK. [00:30:28] Speaker 02: So I'm getting short on my time. [00:30:31] Speaker 02: I'm happy to address any other issues, including the generating mutation. [00:30:38] Speaker 04: Let's proceed, please. [00:30:43] Speaker 02: So with respect to the generating limitation, I think Judge Stoll, you're absolutely correct to peek under the hood and look at what's going on in Mishra and Rye. [00:30:54] Speaker 02: And the board showed that it peeked under the hood when it was looking at what is happening in Mishra and Rye. [00:31:00] Speaker 02: And what each of those references disclose is virtually indistinguishable from the [00:31:07] Speaker 02: embodiment that is described in the patents that are at issue here. [00:31:16] Speaker 02: So if we look at Mishra, for example, at paragraph 20, and this is that Appendix 1188, [00:31:40] Speaker 02: What Mishra does use the word translate here. [00:31:46] Speaker 02: And at paragraph 20, Mishra says, having received a command signal, that is the keystroke indicator, from the remote control, system 12 can translate the command into a format appropriate for controlling a particular device 16. [00:32:01] Speaker 02: So what does Mishra mean when it uses the word translate here? [00:32:06] Speaker 02: In the middle of paragraph 20, [00:32:08] Speaker 02: in the sentence that starts with when the RCU transmits a signal corresponding to a well-known function, that's the keystroke indicator signal, and then this parenthetical is very important. [00:32:20] Speaker 02: Which signal may not be particularly adapted to work with any particular device [00:32:26] Speaker 02: System 12 can translate that signal and send the information back to the RCU, to the remote control, to enable the RCU to control the target appliance. [00:32:36] Speaker 02: So Mishra takes in a signal, the keystroke indicator, that is not formatted or appropriate for any particular device. [00:32:45] Speaker 02: Mishra reaches into its database, which is disclosed at the [00:32:50] Speaker 02: in paragraph 33, it's at the top of the first column of 1189, Misha reaches into a database, identifies the appropriate key code for a particular device, and then takes that key code, modulates it onto [00:33:06] Speaker 02: the carrier signal in combination with Dubiel and sends it back to the remote control. [00:33:10] Speaker 02: That is precisely what is happening in the challenged patents. [00:33:15] Speaker 02: So setting aside what translating means or converting means or identifying, these are all just semantic word games. [00:33:23] Speaker 02: When we peek under the hood, what Mishra does is exactly the same, and what Rai does is exactly the same as well. [00:33:30] Speaker 02: And the board understood that. [00:33:33] Speaker 02: And if we look at Appendix 37, for example, in the board's decision, the board says that Mishra, this is in the second full paragraph on Appendix 37, the board says Mishra recognizes that the command signal may not be particularly adapted, the command signal is the key code indicator signal, may not be particularly adapted to work [00:33:59] Speaker 02: any particular device. [00:34:01] Speaker 02: Thus, after a user presses channel up so that the remote control transmits the command to the master, the system can translate the command to a format appropriate for controlling a particular device. [00:34:12] Speaker 02: The board absolutely understood, and then when it comes to the generating limitations, so what I was reading from there on Appendix 37 was from the receiving limitation, but on Appendix 39, [00:34:24] Speaker 02: when the board is talking about the generating limitation in the second paragraph, the board says, for the reasons discussed in connection with the receiving limitation, we disagree with the patent owner's arguments that translation was expressly disclaimed during prosecution and that there's no keystroke indicator disclosed by Mishra. [00:34:43] Speaker 02: And importantly, at appendix 38, [00:34:47] Speaker 02: at the top and in the second paragraph, the board resolved the factual dispute about what Mishra teaches in Roku's favor by relying on Dr. Russ' testimony in that regard. [00:34:59] Speaker 02: And then Judge Stoll additionally, the board understood what was happening in Rai, as you mentioned, at appendix 56 to 57. [00:35:09] Speaker 02: That Rai's conversion, although he uses the word convert, Rai is identifying [00:35:14] Speaker 02: a key code from the database that is specific to a bunch of different devices. [00:35:20] Speaker 02: And I can point you to where Ry discloses that database, but the board peeked under the hood and the board was absolutely correct when it declined UEI's invitation [00:35:30] Speaker 02: to exclude the word translating or the word converting from the generating step. [00:35:39] Speaker 02: Even if we go with the narrowest interpretation of the generating step, which is taking the construction of the key code generator device and the structure of identifying a database and identifying thereafter a [00:35:53] Speaker 02: key code from that database. [00:35:55] Speaker 02: Even under that narrowest construction of the generating step, when you peek under the hood, that is exactly what Mishra and Rai are doing. [00:36:06] Speaker 04: Any more questions for Mr. Rai? [00:36:09] Speaker 02: Thank you. [00:36:13] Speaker 00: Thank you. [00:36:15] Speaker 00: Thank you, Judge. [00:36:18] Speaker 00: I think it's important to look at [00:36:21] Speaker 00: Dr. Russ's deposition testimony, specifically appendix page 3411 and 12, to dispel any suggestion that Mishra [00:36:34] Speaker 00: suggests carry signal modulation, because he was asked that very specific question. [00:36:40] Speaker 00: It's appended page 3411. [00:36:41] Speaker 00: On 3411, beginning at line 19, here was the question posed to Dr. Russ. [00:36:47] Speaker 00: Would you agree that Mishra itself doesn't suggest any specific methods if it doesn't explicitly talk about how signals are transmitted at all? [00:36:57] Speaker 00: Answer? [00:36:57] Speaker 00: I think the way I would put it is that Mishra did not need to disclose it. [00:37:04] Speaker 00: because modulation onto carrier frequencies for both IR and RF are well known in the art. [00:37:09] Speaker 00: So a person of ordinary skill reading MISRA would understand there are multiple possible ways to accomplish the aims of the MISRA disclosure. [00:37:19] Speaker 00: So he's conceding here that it does not disclose, does not suggest carrier signal modulation. [00:37:24] Speaker 00: And he's also saying there are multiple ways to accomplish the aims of wireless transmission, which is what Springer says, Dr. Springer says. [00:37:34] Speaker 00: So when the board suggested that Misha has some suggestion to carry signal modulation, look at what the board relied on. [00:37:47] Speaker 00: Those same paragraphs, 82 to 93 of Dr. Russ's declaration, and all those paragraphs say is that carrier signal modulation was known. [00:37:59] Speaker 00: So we come full circle. [00:38:00] Speaker 03: Doesn't he say, though, there's multiple possible ways to accomplish the aims of the Mishra disclosure, right? [00:38:07] Speaker 00: Yes. [00:38:09] Speaker 00: OK. [00:38:10] Speaker 00: Yes. [00:38:12] Speaker 00: Now, Your Honor had pointed to a portion of Dr. Russ's declaration where he talks about predictability, desirability. [00:38:26] Speaker 00: We have to go back to what the board actually decided on appendix pages 44 to 45. [00:38:32] Speaker 00: The board didn't rely on those opinions. [00:38:35] Speaker 00: The board, at every turn, relied on paragraphs 82 to 93 of Dr. Russ's declaration, which just discussed the question of whether carrier signal modulation was known. [00:38:52] Speaker 00: Now, if we look at appendix page [00:38:59] Speaker 00: 1084. [00:39:01] Speaker 03: How do you read this? [00:39:03] Speaker 03: It says, although Mishra is not explicit in suggesting carrier signal, Dr. Russ provides sufficient basis, in light of well-known practice, that a person of early-scale near would have understood such a suggestion from Mishra's disclosure. [00:39:19] Speaker 00: And he cites the paragraphs 82 to 93. [00:39:22] Speaker 03: I understand. [00:39:23] Speaker 00: How do I read what the board said? [00:39:25] Speaker 00: Yeah. [00:39:26] Speaker 00: I read what the board said is that if you're relying on paragraphs 82 to 93, carrier signal modulation was known. [00:39:33] Speaker 00: We keep coming full circle. [00:39:35] Speaker 04: OK. [00:39:40] Speaker 00: Just a couple of points on the generating step. [00:39:46] Speaker 00: Council pointed to appendix pages 37, 38. [00:39:51] Speaker 00: And in the second and last full paragraph, it says the system can translate the command into a format appropriate for controlling a particular device. [00:40:00] Speaker 00: And then on the very next page at the top, it says that is why only mere translation into an appropriate format, such as RF and IR, is needed. [00:40:11] Speaker 00: That's why it's our position that Misha discloses translating, but not [00:40:20] Speaker 00: but not identifying. [00:40:22] Speaker 00: And I just wanted to make two quick points on the claim construction issue. [00:40:29] Speaker 00: We briefed this extensively. [00:40:31] Speaker 00: The term key code generator device is part of the generating step. [00:40:35] Speaker 00: And it was construed as a means plus function claim. [00:40:38] Speaker 00: The function is to generate a key code, which is the beginning language of the generating step. [00:40:43] Speaker 00: And it does so by performing two steps of identification, identifying the code set, [00:40:48] Speaker 00: and identifying the key code. [00:40:50] Speaker 00: Nothing there about translating, nothing there about converting. [00:40:53] Speaker 00: And the specification is consistent. [00:40:56] Speaker 00: The specification is always the most important claim construction tool. [00:40:59] Speaker 00: And if you look at the flow chart for the 642-PAT in Figure 2, it talks about the generating step. [00:41:08] Speaker 00: And in the specification at column 4, lines 24 to beginning of lines 24, [00:41:16] Speaker 00: The specification says, next step 102, key code generator revised 12, determines which key code of the code set previously identified in step 100 corresponds to the press key. [00:41:28] Speaker 00: It's not talking about translating or converting. [00:41:30] Speaker 00: And if we look in the specification further, the only time the terms generating, the only times the terms converting or translating are used are in column five. [00:41:42] Speaker 00: Translating is at column 5, lines 45 to 49, and converting is in column 5, line 54. [00:41:50] Speaker 00: And that has to do with steps that come after the generating step, after the modulating step, and after the transmitting step. [00:41:58] Speaker 00: It has nothing to do with the generating step. [00:42:02] Speaker 00: And the last point I wanted to make on this is another term that's part of the generating step is keystroke indicator signal. [00:42:11] Speaker 00: The board construed that term to mean as follows. [00:42:15] Speaker 00: A signal distinct from a key code corresponding to a press key on the remote control with the clarification that the keystroke indicator signal cannot contain the claimed key code. [00:42:26] Speaker 00: Now, why is that important? [00:42:28] Speaker 00: Well, if you put that construction into the generating step, here's what you get. [00:42:33] Speaker 00: Generating a key code within a key code generator device using a signal distinct from the key code that cannot contain the key code. [00:42:42] Speaker 00: And why is that important? [00:42:43] Speaker 00: Because the specification discloses that a key code that has been translated or converted into another format from a received key code still contains the received key code. [00:42:54] Speaker 00: So if we look at appendix page 247, column 4, lines 35 to 37 of the patent, 642 patent, they talk about creating a first key code signal. [00:43:10] Speaker 00: by doing this. [00:43:11] Speaker 00: The key code generator device modulates the key code onto a carrier signal generating a first key code signal 19. [00:43:18] Speaker 00: So key code signal 19 contains the key code. [00:43:22] Speaker 00: Then it goes on. [00:43:24] Speaker 00: Column 5, lines 45 to 49. [00:43:27] Speaker 01: Did you make these arguments below? [00:43:29] Speaker 00: Yes. [00:43:31] Speaker 00: This is all part of the intrinsic record that the board considered. [00:43:35] Speaker 01: Did you argue this? [00:43:38] Speaker 01: The argument you're making now, did you make it before the board? [00:43:42] Speaker 00: I don't believe we made this specific claim construction argument. [00:43:45] Speaker 00: But it's not a different claim construction we're asserting. [00:43:48] Speaker 00: We're just showing further evidence in the record that the board considered in reaching its claim construction decision. [00:43:55] Speaker 01: If you didn't argue it below, you shouldn't argue it now. [00:44:02] Speaker 00: Well, what we did argue below is the specification [00:44:05] Speaker 00: And the first part of the specification that I just talked about having to do with when the generating step where it says determining the appropriate key code. [00:44:17] Speaker 00: And the board hit that right on the head. [00:44:20] Speaker 00: And the only time that converting and translating is used in the patent is in column five with respect to steps that are far removed from the generating step. [00:44:33] Speaker 00: And with that, I will thank you for your time. [00:44:37] Speaker ?: OK. [00:44:37] Speaker 04: Thank you. [00:44:38] Speaker 04: Thanks to both counsel. [00:44:40] Speaker 04: This case is taken under submission.