[00:00:00] Speaker 03:
The next case on the docket is Court Photonics versus Apple, appeal number 22-1340.

[00:00:07] Speaker 03:
Mr. Liddell, whenever you're ready.

[00:00:12] Speaker 03:
Thank you.

[00:00:14] Speaker 01:
Good morning and may it please the court, Brian Liddell for Court Photonics.

[00:00:19] Speaker 01:
I'll start by saying that this appeal and the next certainly share a great deal of commonality on some of the core issues.

[00:00:25] Speaker 01:
So I'll do my best not to be too repetitive on those.

[00:00:29] Speaker 01:
But the core issue here from our perspective is that the board never made a proper finding that was properly supported that the art relied on, the primary references, were within the proper scope of the prior art as would be required as a showing underground.

[00:00:49] Speaker 01:
Essentially, there is no dispute that in its petition, Apple failed to show that the references on which it relied were properly analogous are within the scope of the fair.

[00:01:01] Speaker 02:
I think that is disputed.

[00:01:02] Speaker 02:
It's not their lead argument, but I think they say that their one sentence can easily be read by a reasonable person as making a comparison to the challenge patterns.

[00:01:13] Speaker 01:
They do argue that.

[00:01:15] Speaker 01:
The board certainly found otherwise.

[00:01:16] Speaker 02:
Well, by the way, if they do argue that, why are you saying it's undisputed?

[00:01:19] Speaker 01:
I think it's undisputed that the petition had paired the two references to one another, not to the art.

[00:01:28] Speaker 01:
I think if that were so meaningfully disputed, we wouldn't have Apple completely rearticulating a completely different position in its reply.

[00:01:36] Speaker 01:
I think they recognized and the board said this was wrong, that you submitted the wrong analysis.

[00:01:42] Speaker 01:
And this court said in the recent Sanofi decision that that's the wrong analysis, that comparing the references to one another cannot be a showing of

[00:01:52] Speaker 01:
Analogous art it cannot meet the standard it cannot meet the petitioners burden and that it cannot be Supported if that's what the board relies on now the board said that's not it wasn't in the petition and From our perspective that should end the inquiry I mean the board made an express finding that the petition

[00:02:11] Speaker 02:
But what about Sanofi, which you've already put on the table?

[00:02:14] Speaker 02:
Sure.

[00:02:14] Speaker 02:
Doesn't that give them a chance to do it in the reply room?

[00:02:17] Speaker 01:
So I think two thoughts on Sanofi.

[00:02:21] Speaker 01:
First, the sentence that is quoted by Apple from Sanofi regarding using the reply

[00:02:29] Speaker 01:
is one, dicta in Sanofi, because there was no suggestion in that case that the petitioner actually did offer a different position in reply.

[00:02:38] Speaker 01:
They simply doubled down on the position that they offered in their petition.

[00:02:42] Speaker 01:
So there's no holding to that effect in Sanofi.

[00:02:45] Speaker 01:
I also don't think that it would be a proper holding.

[00:02:47] Speaker 01:
Sanofi doesn't really analyze this consistent with Graham and consistent with section 312.

[00:02:54] Speaker 01:
or section 42.104 of the CFR regulations governing petitions.

[00:03:00] Speaker 03:
So it's your position that petitions must

[00:03:05] Speaker 03:
present an argument on analogous art in every single petition?

[00:03:10] Speaker 01:
Yes, because that is the first step of the Graham analysis for obviousness.

[00:03:15] Speaker 01:
So the statute requires that a petitioner has to include all of the grounds and the argument for why it meets, in this case, section 103 for obviousness.

[00:03:27] Speaker 03:
So the first Graham factor is scope and content of the prior art?

[00:03:30] Speaker 01:
That's correct.

[00:03:31] Speaker 03:
So you're saying you have to go so far as to explain that it's prior art?

[00:03:35] Speaker 01:
Well, the scope and content of the prior art, how we determine what that is, is the analogousness test.

[00:03:41] Speaker 01:
That's what Clay says.

[00:03:42] Speaker 01:
That's what Sanofi Aventis actually says, that the analogousness test is a determination of whether a reference that you're relying on is within the scope of the prior art or not.

[00:03:53] Speaker 04:
Well, the same could be said for what the effective

[00:03:57] Speaker 04:
filing date is or what the effective date of a reference might be.

[00:04:02] Speaker 04:
Are all these things part and parcel of the obligation to make a prima facie case or can a party simply say I believe the claim is obvious A in view of B?

[00:04:14] Speaker 01:
So I think you have to meet the Graham factors, one of which is showing that the reference is within the prior art.

[00:04:20] Speaker 01:
And you have to make that prima facie showing in your petition.

[00:04:23] Speaker 04:
Now, can't you do that by just simply citing the references?

[00:04:28] Speaker 01:
Well, no, because there is a factual determination that, as Graham, Clay, Vigio all make clear, you have to show that it's an analogous reference.

[00:04:38] Speaker 01:
You can't just make a conclusory assertion that it's in the prior art.

[00:04:41] Speaker 03:
Why don't you make a prima facie case that something's an analogous reference, just by describing what you're relying on it for?

[00:04:49] Speaker 03:
In some cases, that is enough.

[00:04:52] Speaker 03:
I mean, in many cases, historically, parties haven't been including this in petitions, nor have patent examiners been including it in their office actions.

[00:05:03] Speaker 03:
So there's been some sort of understanding that by describing the prior art itself, you're satisfying gram factor one.

[00:05:11] Speaker 01:
Well, I think that's certainly not what the court found in Sanofi Aventis.

[00:05:18] Speaker 01:
This court said, you have to show that it's analogous art.

[00:05:22] Speaker 03:
Now- I understand.

[00:05:23] Speaker 03:
We're just talking about whether, step one, do you have to have it in your petition?

[00:05:28] Speaker 01:
Sure.

[00:05:28] Speaker 03:
Or is it OK to have it in your reply?

[00:05:31] Speaker 03:
So- After it's been raised and the patent owner's response, right?

[00:05:36] Speaker 03:
That's what we're talking about right now.

[00:05:38] Speaker 03:
Well, but I think the analogy- I agree, of course, that once the patent owner raises it, then there has to be something for him to show.

[00:05:44] Speaker 01:
Sure.

[00:05:45] Speaker 01:
So I think the analogy would be when a party asserts motivation to combine and says a person of skill in the art would be motivated to combine these references, if they do so in just a shorthand fashion and say, oh, and these other references, you'd combine them for the same reason,

[00:06:02] Speaker 01:
This court has said, that's not sufficient.

[00:06:05] Speaker 01:
And you can't come back and fix that after the petition, because you didn't put it in your petition.

[00:06:10] Speaker 01:
And correcting that kind of a failure isn't fair game for the reply.

[00:06:15] Speaker 01:
I think that's the Wasica case.

[00:06:17] Speaker 01:
I think intelligent biosystems certainly are to that point.

[00:06:22] Speaker 01:
Where the court has suggested that there is a possibility of supplementing or adding to a position are, frankly, pretty narrow circumstances.

[00:06:32] Speaker 01:
The board cited dynamic drinkware.

[00:06:34] Speaker 01:
But dynamic drinkware is a unique case where the patent owner swore behind the reference.

[00:06:40] Speaker 01:
So the petitioner made the prima facie showing that the reference was within the prior art in their petition in dynamic drinkware.

[00:06:47] Speaker 01:
But the patent owner essentially changed the date that was needed in the response.

[00:06:53] Speaker 01:
And the court found that that's a circumstance which is unique in which there is a burden of production on the patent owner.

[00:07:01] Speaker 01:
on which there is not about the scope and content of the prior art, for example.

[00:07:05] Speaker 01:
But if you're changing the date, the priority date of the challenge claims, that's something the patent owner has a burden of production on in the first instance.

[00:07:14] Speaker 01:
And so then it is fair to respond and reply.

[00:07:17] Speaker 01:
And that's what dynamic drinkware was about.

[00:07:19] Speaker 01:
That's not this case.

[00:07:21] Speaker 01:
There's no changing position, there's no burden of production on the patent owner to show that something's not within the prior art.

[00:07:29] Speaker 01:
It's the affirmative burden of the petitioner to show that the reference is within the prior art.

[00:07:34] Speaker 01:
That's one of the, it's the first Graham factor.

[00:07:38] Speaker 01:
And if you fail to meet that in your petition, you haven't satisfied the requirements of the petition.

[00:07:43] Speaker 01:
That should be the end of the inquiry.

[00:07:47] Speaker 01:
Now, we submit that even if that's not correct,

[00:07:51] Speaker 01:
that even if this is something that you could remedy in a reply, Apple didn't remedy it in their reply here.

[00:08:04] Speaker 01:
So on reply, Apple reformulated its suggestion as to why the art was analogous.

[00:08:11] Speaker 01:
And the board expressly did not accept Apple's formulations.

[00:08:19] Speaker 01:
recited them in the final written decisions, but it then adopted a different formulation itself of what it thought the references were going to be.

[00:08:26] Speaker 03:
This is the argument that the board is referring to field of view as a point of view

[00:08:33] Speaker 03:
It's a field of view, right?

[00:08:35] Speaker 01:
Well, that's part of it.

[00:08:37] Speaker 01:
So first, if you look, and I'll use the first of the two final decisions, although in this instance they're identical on this point, at pages 32 to 33 of the appendix.

[00:08:50] Speaker 01:
The board talks first about what Apple asserted the references were directed to.

[00:08:59] Speaker 01:
Sorry, I'll give you a second to get there.

[00:09:03] Speaker 01:
And lists what Apple suggested were either the field of endeavor first or the problem to which the patent and the references were supposedly directed.

[00:09:17] Speaker 01:
It recites Apple's formulations of those, but it doesn't adopt either one of them.

[00:09:21] Speaker 01:
It then goes on.

[00:09:22] Speaker 01:
This is sort of starting at the last paragraph of the text on page 32 of the appendix.

[00:09:30] Speaker 01:
They recite what they think Golan is, what its field of endeavor is, as relates to the patent.

[00:09:37] Speaker 01:
That's not Apple's formulation.

[00:09:38] Speaker 01:
And then on page 33, they recite.

[00:09:42] Speaker 03:
You probably want to be a little more specific.

[00:09:44] Speaker 03:
And we're very familiar with your arguments on both sides.

[00:09:48] Speaker 03:
So maybe specifically tell us, this is the language that shows to me why it is that they were reciting something different.

[00:09:55] Speaker 03:
The way I'm reading these two, their recitation of what was argued and how they find, I'm reading them as just using different words to pretty much mean the same thing.

[00:10:05] Speaker 03:
So you want to show me why I'm wrong.

[00:10:08] Speaker 01:
So they say that the petitioner asserts that Golan and Martin are each pertinent to the problem of the 233 patent.

[00:10:16] Speaker 01:
Namely a quote jump, this is middle part of page 32.

[00:10:21] Speaker 01:
Namely a quote jump discontinuous image change when a dual aperture camera switches the camera output between sub cameras or points of view.

[00:10:32] Speaker 01:
And then I'm gonna focus on Martin here because I think this is the more egregious of the changes.

[00:10:39] Speaker 01:
When we go to 33, the

[00:10:42] Speaker 01:
The board says, we're persuaded that Martin is reasonably pertinent, this is at the top of 33, to the problem faced by the inventor, reducing an image jump effect seen in video output images when switching between cameras that have different fields of view.

[00:10:59] Speaker 01:
Now, Apple argues that this language should be rewritten and that the board's actual language should be ignored and that they should be deemed to have meant points of view when they wrote field of view.

[00:11:10] Speaker 01:
There's nothing to suggest that that's an accurate characterization.

[00:11:14] Speaker 01:
Indeed, the claims are actually directed to switching between cameras with different fields of view.

[00:11:19] Speaker 01:
The claims are directed to having a telecamera and a wider camera and switching between them.

[00:11:25] Speaker 01:
Well, those are two cameras with different fields of view.

[00:11:29] Speaker 01:
And there was extensive evidence in the record that Martin doesn't actually do that.

[00:11:33] Speaker 01:
And in its briefing, Apple concedes that Martin doesn't do that.

[00:11:37] Speaker 02:
Was the distinction between point of view and field of view at all material to the analogous art skewed?

[00:11:44] Speaker 01:
Absolutely.

[00:11:45] Speaker 01:
Because the camera, the patent, and the analogous art issue, the challenge claims have to do with switching in a zoom context, where you're changing the focal length.

[00:11:56] Speaker 02:
That's field of view.

[00:11:57] Speaker 01:
And that's field of view.

[00:11:59] Speaker 01:
You're switching from a narrower field of view camera to a wider field of view camera, or vice versa.

[00:12:04] Speaker 01:
And how do you do so in a smooth fashion and change from those fields of view?

[00:12:10] Speaker 01:
Martin, admittedly, I think, I don't want to overstate this, but I don't think that... It's about any point of view because it's two, it's maybe two cameras.

[00:12:18] Speaker 02:
It's the same camera.

[00:12:19] Speaker 02:
Okay, but in both instances, the pertinent problem, it seems to me, is to smooth things out so that the viewer doesn't see a jump.

[00:12:28] Speaker 01:
I don't think that that's correct.

[00:12:32] Speaker 01:
And I don't think the board found that.

[00:12:37] Speaker 01:
So I think that we start by taking the board at its word.

[00:12:42] Speaker 03:
I'm going to interrupt you right there.

[00:12:44] Speaker 03:
I see the board saying, reducing an image jump effect seen in video output images.

[00:12:50] Speaker 03:
And then when they characterize Apple's argument, they refer to a jump discontinuous image change.

[00:12:58] Speaker 01:
Why are those different?

[00:13:01] Speaker 01:
I think you're right.

[00:13:03] Speaker 01:
They're talking about discontinuous changes, and they're saying each is talking in some way perhaps about discontinuous changes, but very different kinds of discontinuous changes.

[00:13:15] Speaker 03:
Because one is caused by the field of view, and one is caused by the point of view.

[00:13:20] Speaker 01:
The point of view, that's right.

[00:13:21] Speaker 03:
OK.

[00:13:21] Speaker 03:
But also, we all agree that Martin is directed to what is the languages.

[00:13:27] Speaker 03:
parallax effects that are caused by points of view.

[00:13:32] Speaker 01:
Martin is directed, I would say Martin is directed to creating parallax effects or facilitating their display as opposed to minimizing them.

[00:13:41] Speaker 03:
Do you agree that parallax effects are caused by different points of view?

[00:13:47] Speaker 01:
Parallax effects are caused by different points of view.

[00:13:50] Speaker 03:
Are they caused by different fields of view?

[00:13:52] Speaker 01:
No, not necessarily.

[00:13:54] Speaker 01:
That's not a parallax problem.

[00:13:56] Speaker 01:
If I have a wide point of view, I might see all three of your honors through that view.

[00:14:03] Speaker 01:
a narrow point of view I might only see Judge Stoll.

[00:14:06] Speaker 01:
And those differentiations and trying to avoid discontinuities when you're transitioning between them is the focus of the challenge claim.

[00:14:17] Speaker 01:
And I know I'm in my room.

[00:14:19] Speaker 02:
So what about how this paragraph on 33 ends?

[00:14:24] Speaker 02:
Martin, the board says, describes the problem in terms of its solution.

[00:14:27] Speaker 02:
And then it talks about achieving stability

[00:14:32] Speaker 02:
granted stability in connection with shifting points of view but why can't that be pertinent to the problem of achieving stability or lack of jump when you're shifting between fields of view just as the board said well but the board didn't say they were the same and it didn't say it sort of

[00:14:54] Speaker 01:
It said Martin's directed to this.

[00:14:55] Speaker 01:
And it does suggest, in the preceding sentence or a couple sentences above, that Golan and Martin, and this is clearly factual error that I think even Apple concedes is an error, have multiple cameras with differing fields of view.

[00:15:10] Speaker 01:
That's the board's statement.

[00:15:11] Speaker 02:
Martin does not.

[00:15:12] Speaker 01:
And Martin, undisputedly, does not have that.

[00:15:15] Speaker 01:
And so, one, there's no substantial evidence for that finding.

[00:15:19] Speaker 01:
But two, there's no, that's not,

[00:15:23] Speaker 01:
The problem, in other words, the board can't articulate the problem one way and say, well, this reference, which doesn't meet that problem, is somehow still analogous.

[00:15:34] Speaker 01:
It articulated the problem as differing fields of view, and there's no dispute that the reference doesn't actually address that problem.

[00:15:42] Speaker 01:
Martin really isn't, from our perspective, Martin is wide a field of the problems to which the path is going.

[00:15:48] Speaker 03:
I have a couple questions for you.

[00:15:49] Speaker 03:
If Martin doesn't have two cameras, why don't, why do I...

[00:15:54] Speaker 03:
see them, two cameras in figure one of Martin.

[00:15:57] Speaker 01:
So Martin, it doesn't have two different field of view cameras.

[00:16:00] Speaker 01:
It can either have one camera or two cameras.

[00:16:03] Speaker 01:
So Martin describes basically taking multiple images of the same scene from a different location and creating the effect.

[00:16:12] Speaker 03:
It's a different position.

[00:16:13] Speaker 01:
Yes, from a different, so one.

[00:16:15] Speaker 03:
So can I ask you something?

[00:16:17] Speaker 03:
On page 25, A25, the board says,

[00:16:21] Speaker 03:
Gohan and Martin both involve parallax effects caused by tube cameras in different fields of view.

[00:16:28] Speaker 03:
That's an typo, right?

[00:16:29] Speaker 03:
It should be points of view.

[00:16:31] Speaker 03:
Or it's a technical error, using the wrong vocabulary.

[00:16:34] Speaker 01:
It's wrong.

[00:16:35] Speaker 03:
But if I were to read this correctly, and I see parallax effects, those are not caused by different fields of view.

[00:16:43] Speaker 03:
They're caused by different points of view, right?

[00:16:47] Speaker 01:
And I'm sorry, you're looking at page 25?

[00:16:49] Speaker 03:
Page 25 at the bottom.

[00:16:53] Speaker 03:
Parallax, Golan and Martin both involve parallax effects caused by two cameras with different fields of view.

[00:17:01] Speaker 03:
That should be points of view, right?

[00:17:05] Speaker 01:
That's, I would say, so Golan is directed, albeit it doesn't use the techniques that are required for the claim, but Golan does actually have different fields of view.

[00:17:17] Speaker 03:
When we refer to parallax effects, that's caused by points of view.

[00:17:23] Speaker 03:
Right?

[00:17:24] Speaker 03:
That's what you agreed to earlier.

[00:17:26] Speaker 01:
Yes.

[00:17:27] Speaker 01:
Parallax effects can be caused by different points of view.

[00:17:30] Speaker 03:
OK.

[00:17:30] Speaker 03:
And they're not caused by fields of view.

[00:17:33] Speaker 01:
I would say, generally speaking, you wouldn't necessarily characterize it as a parallax effect, the different aspects that you would see from a... I don't think that would be a common characterization.

[00:17:48] Speaker 02:
Can I ask one more?

[00:17:49] Speaker 02:
I know we're well over, but...

[00:17:53] Speaker 02:
Apple argues in the reply that Martin is analogous under both tests.

[00:17:59] Speaker 02:
Yes.

[00:18:00] Speaker 02:
The field of endeavor and the pertinent problem.

[00:18:02] Speaker 02:
We've been talking about pertinent problem, right?

[00:18:06] Speaker 02:
Correct.

[00:18:06] Speaker 02:
On field of endeavor, the board never makes any finding about whether Martin is within the same field of endeavor.

[00:18:13] Speaker 02:
If I were persuaded by you that there's a problem on the pertinent problem analysis, shouldn't I be for remanding for the board to consider whether it's in the same field of endeavor as Apple argued alternatively?

[00:18:26] Speaker 01:
I would say no, because I think that the framing that the board uses constitutes a rejection of Apple's argument.

[00:18:35] Speaker 02:
That's at best implicit.

[00:18:37] Speaker 01:
Well, but they note that Apple argued same field of endeavor for both references.

[00:18:42] Speaker 01:
They accept that that's correct for Martin, but not for Boland, but not for Martin.

[00:18:47] Speaker 01:
So I think it's more than just a sort of loose inference.

[00:18:52] Speaker 01:
If I'm the board, when I write a decision and say, they argued these two things, I accept this one, I think that's a rejection of the other.

[00:19:00] Speaker 01:
They didn't say both are correct, which I think might suggest something different.

[00:19:07] Speaker 01:
We believe, and I think substantial evidence supports, rejecting the first and only accepting a different formulation of the second that Apple didn't argue and that was incorrect.

[00:19:23] Speaker 03:
You can proceed whenever you're ready.

[00:19:25] Speaker 00:
May it please the court?

[00:19:26] Speaker 00:
Debbie McComas on behalf of Apple.

[00:19:29] Speaker 00:
I'm going to jump straight to Sanofi.

[00:19:31] Speaker 00:
And Sanofi says the petitioner is not required to anticipate and raise analogous arguments in its petition.

[00:19:40] Speaker 00:
I would suggest we're bound by that.

[00:19:43] Speaker 03:
If it's, assuming for a minute that we're not, why is that a good rule?

[00:19:48] Speaker 00:
Because for the reasons your honor already articulated in asking the questions to to my friend from core photonics that the standard here that we have between 312 and

[00:20:01] Speaker 00:
is to state with particularity the grounds.

[00:20:06] Speaker 00:
You do not have to delineate every single theory, anticipate every single possible theory that could come up that you might have to come up with and respond to in response.

[00:20:18] Speaker 00:
What we're required to do under KSR, it's a flexible standard for motivation to combine.

[00:20:24] Speaker 00:
As Your Honor pointed out, there could be instances

[00:20:27] Speaker 00:
And I think this is one of them where it's so evident how a certain piece of art fits within the framework in the field that that should not be an issue we're having to waste a ton of time and paper on in the petition.

[00:20:42] Speaker 00:
There are other instances in Sanofi, for example, where they were trying to compare

[00:20:47] Speaker 00:
a medical device to a car part, they should have better explained how that related to the invention.

[00:20:57] Speaker 00:
Here we're in a very different position.

[00:20:59] Speaker 03:
So your answer would be otherwise we have to think about how far afield these things are to think that somebody should have anticipated it by putting it in their petition.

[00:21:09] Speaker 03:
How far afield the priority is from the claimed invention so that there's like an extra inquiry.

[00:21:15] Speaker 03:
Well you should have known that

[00:21:17] Speaker 03:
you needed to include this in your petition because it's so far afield.

[00:21:21] Speaker 03:
Are you suggesting we would include something like that or that that would be hard to manage?

[00:21:25] Speaker 00:
I think that would be entirely hard to manage.

[00:21:28] Speaker 00:
I think the suggestion is that if you identify the prior art references and you identify why there's a motivation combined implicit in that is going to be the analysis that KSR tells us we have to apply

[00:21:42] Speaker 00:
as to why those prior art references are relevant.

[00:21:45] Speaker 00:
And I think then if the patent owner has a specific challenge to why looking at that motivation combined, that the art doesn't fit within the parameters of prior art that we should be analyzing,

[00:21:59] Speaker 00:
they can raise that and there's room in the reply to explain that further.

[00:22:03] Speaker 00:
I do believe that, as you said, it's a bit of a sliding scale in a certain case as to how evident and how clear that would be with respect to whether you're trying to write a bright line rule on that.

[00:22:16] Speaker 00:
I think that the bright line rule that's written in system of fee is correct, which is that a petitioner is not required to state explicitly a separate section and analyze.

[00:22:28] Speaker 00:
We don't pick bright line rules, but okay.

[00:22:30] Speaker 02:
Would you place any limits, though, on what can be done in the reply?

[00:22:35] Speaker 02:
So let's say the petition says they are analogous because they're in the same field of endeavor and then the patent owner responds with lots of good reasons why they're not.

[00:22:46] Speaker 02:
Can the reply then go off on the pertinent problem, even though it wasn't flagged in the petition?

[00:22:53] Speaker 00:
I would say yes.

[00:22:54] Speaker 00:
And the reason being is, as you have in this case, you have clear articulation in the petition necessarily in anticipating the motivation to combine.

[00:23:04] Speaker 00:
You have an explanation of why it's pertinent.

[00:23:06] Speaker 00:
It's going to be clear.

[00:23:07] Speaker 00:
And the reason why Senna V is such a good example on the far field that is not this case

[00:23:13] Speaker 00:
is because it wasn't clear, right?

[00:23:16] Speaker 00:
And even when they had the opportunity to explain, and even in that case, the court said you could have done it in reply, but you stubbornly refused to do the analysis and tell me how it applies to the patented invention.

[00:23:30] Speaker 00:
So I would suggest that it is pretty broad in the context of analogous art on what you're allowed to raise in reply.

[00:23:37] Speaker 00:
But we do have guidelines already from this court, specifically as to what belongs in a reply brief and how far you can go with that.

[00:23:46] Speaker 00:
And the case law, I think, is relatively established between Genzyme and Provisor by example as to what you can say in reply, that it can include new evidence as long as it's responsive to the response.

[00:23:58] Speaker 00:
What you can't do

[00:23:59] Speaker 00:
or create new grounds.

[00:24:01] Speaker 00:
In other words, you cannot come up with a new combination.

[00:24:05] Speaker 00:
You can't add a new reference and talk about a new reference in reply.

[00:24:10] Speaker 00:
We already have those cases well established.

[00:24:12] Speaker 02:
Why isn't my example analogous to new grounds?

[00:24:17] Speaker 02:
the grounds for analogousness in the petition was same field of endeavor.

[00:24:23] Speaker 02:
The grounds for analogousness in the reply is now switched pertinent problem.

[00:24:28] Speaker 02:
Why should you be allowed to do that?

[00:24:30] Speaker 00:
Well, I respectfully disagree that that's a grounds.

[00:24:32] Speaker 00:
The ground is the motivation to combine, the basis for the motivation to combine.

[00:24:36] Speaker 02:
The question is, is it so analogous to grounds that a petitioner should be limited from moving that step away in their reply brief?

[00:24:47] Speaker 00:
No, because I think those are all still within the grounds of the motivation to combine between Golan and Martin in this example, or between your prior art references.

[00:24:59] Speaker 00:
If you raised a new prior art reference and said, oh, it would be pertinent,

[00:25:03] Speaker 00:
or this would make it pertinent, that would be beyond, from my reading of the Genzyme Covizur in those cases, I think that would be, but let's go back to our case because I think our case is in the comfort zone where we're not having to make those bright line determinations.

[00:25:20] Speaker 00:
And I want to address specifically the findings and whether they were adequate by the court, unless the court has more questions along the lines of that.

[00:25:28] Speaker 02:
Am I right that you are doing that your one sentence in the petition was adequate here on analogousness?

[00:25:35] Speaker 00:
I would suggest that it's not just one sentence.

[00:25:38] Speaker 00:
There's a paragraph that specifically says that these two, Golan and Martin, both are within the same field of endeavor and defines the field of endeavor.

[00:25:48] Speaker 00:
I would suggest there's quite a bit more in this petition.

[00:25:51] Speaker 02:
And that that was adequate in your view.

[00:25:52] Speaker 00:
Correct.

[00:25:53] Speaker 00:
Correct.

[00:25:54] Speaker 00:
Even though the court found that there was an improper comparison between Golan and Martin that didn't tie back to the prior, to the invention itself, I would suggest to you that there's a clear statement from the very beginning that identifies what the petition's stated purpose is and what the problem to be solved is and that that's throughout the entire petition.

[00:26:20] Speaker 00:
Does that answer your Honor's question?

[00:26:21] Speaker 02:
It does.

[00:26:22] Speaker 02:
And this may be where you are headed, but I'm very curious about this typographical error argument.

[00:26:28] Speaker 02:
In fact, I mean, you are very bold, I think, at page 45 in saying no reasonable person can read the decisions without understanding that the reference to fields of view is a typographical error.

[00:26:40] Speaker 02:
I don't know that you have to meet that high of a burden, and perhaps I'm unreasonable, but it's not at all clear to me it's a typographical error.

[00:26:48] Speaker 02:
Could you help me try to see why it is in your view?

[00:26:52] Speaker 00:
Sure, and I think my friend almost got there and conceding with Judge Stoll that it would be a typographical error, that when we're talking about the parallax effect caused by, that it would be caused by different points of view.

[00:27:05] Speaker 02:
That was an earlier page, though.

[00:27:08] Speaker 00:
Correct, correct.

[00:27:10] Speaker 00:
I would suggest to you, and I think you alluded to it in your questioning as well, Judge Stark, specifically, if you look at the explanation that the Board gives at Appendix 33 as to why

[00:27:21] Speaker 00:
Martin addresses the problem.

[00:27:24] Speaker 00:
It's the sentence that says, critical alignment corresponds to a condition where the degree of alignment is sufficient to achieve a stable 3D stereoscopic display.

[00:27:35] Speaker 00:
And stability of the whole image may not be required provided that a particular region of interest ROI display is stable.

[00:27:42] Speaker 00:
That is the explanation by the board as to why Martin

[00:27:47] Speaker 00:
is relevant to the problem to be solved.

[00:27:49] Speaker 00:
And it starts by saying, Martin describes the problem through its proposed solution.

[00:27:56] Speaker 00:
And if you look at that sentence, and that sentence alone, that's what's relevant here in the board's finding is to what

[00:28:05] Speaker 00:
as to what is the problem to be solved and how Martin reads on that.

[00:28:10] Speaker 00:
And that is supported by the substantial evidence, and we shouldn't have to go further than that.

[00:28:14] Speaker 00:
So I'm kind of working around your question a little bit in that I don't think you have to make the final determination on whether that's a typographical error.

[00:28:23] Speaker 00:
to find that substantial evidence supports the board's finding that Martin fits within the problem to be solved here.

[00:28:30] Speaker 00:
And because of that sentence, and that's the explanation, I would suggest to you that the reference to field of view is an accident.

[00:28:39] Speaker 00:
It's a typographical error, a misunderstanding.

[00:28:41] Speaker 00:
I would also take issue with my opponent's suggestion that the field of view and point of view is what's really in dispute when we're talking about

[00:28:51] Speaker 00:
either the field of endeavor or the problem to be solved here.

[00:28:54] Speaker 00:
It may have been relevant ultimately to whether someone would have been motivated to combine, but as far as whether or not it feels within the field of whether it solves the problem, addresses the problem, I would suggest to you that the board found and that Martin supports solving the same problem of discontinuous jump.

[00:29:15] Speaker 03:
What about the concern that has been raised about Martin

[00:29:20] Speaker 03:
which says Martin describes the problem in terms of its solution.

[00:29:25] Speaker 03:
What's the response to that?

[00:29:26] Speaker 03:
I mean, the concern raised is that they should be showing that Martin identifies the problem.

[00:29:33] Speaker 03:
We're talking about reasonably pertinent to the problem, not just that Martin comes up with the solution.

[00:29:38] Speaker 03:
So why is that not hindsight?

[00:29:40] Speaker 00:
Well, I think the question is, would a postita, would a person of skill in the art be looking to this prior art reference as something to consider?

[00:29:50] Speaker 00:
in making a combination, right?

[00:29:52] Speaker 00:
That's our ultimate question, the penultimate question.

[00:29:54] Speaker 00:
Is it prior art?

[00:29:56] Speaker 00:
Is it something I would go to to look for that, to look for this look?

[00:30:00] Speaker 00:
And if my problem is, if my problem is trying to decide how to address the jump effect and the discontinuity, would I as a posita look to this prior art reference?

[00:30:14] Speaker 00:
And maybe I'm not saying it clearly enough.

[00:30:16] Speaker 00:
What I'm saying, the board found by explaining that that's what Martin does, that Martin necessarily addresses that same problem.

[00:30:25] Speaker 00:
And here's its explanation for that, that the board is finding consistent with the evidence that Episcita would have looked to that reference.

[00:30:35] Speaker 00:
Did I answer that the way you needed me to?

[00:30:37] Speaker 03:
I think that's a perfectly adequate answer, and I think you're explaining that there's substantial evidence, right?

[00:30:46] Speaker 00:
Right, exactly.

[00:30:47] Speaker 02:
You do concede that Martin has nothing to say about field of view, correct?

[00:30:54] Speaker 00:
I would concede that the words in Martin are all addressing point of view.

[00:31:00] Speaker 00:
That that's what Martin really talks about.

[00:31:02] Speaker 02:
And really not just the words.

[00:31:04] Speaker 02:
There's just nothing about field of view.

[00:31:06] Speaker 02:
It's not at all concerned with field of view.

[00:31:08] Speaker 00:
It's not the issue in Martin.

[00:31:10] Speaker 00:
That's correct.

[00:31:11] Speaker 00:
I mean it shows multiple cameras.

[00:31:13] Speaker 00:
Conceivably there could be fields of view, but it's just not the issue, right?

[00:31:17] Speaker 00:
I mean it's not what we're talking about.

[00:31:19] Speaker 02:
So the board is mistaken in at least a couple places when it talks about Martin having something to do a field of view.

[00:31:26] Speaker 00:
It's a typographical error and the board cites even just before that our reference and quote of Martin with how do I decide if it's

[00:31:34] Speaker 02:
a typographical error that I can maybe just look the other way from versus a substantial error that perhaps reveals the board didn't understand Martin.

[00:31:46] Speaker 00:
Because it's not the point of view versus field of view question, like you said, it's not what Martin is addressing.

[00:31:54] Speaker 00:
The board quotes Apple's explanation and evidence explaining how Martin operates and that it relates to point of view consistently.

[00:32:04] Speaker 00:
So, for instance, at appendix 12.

[00:32:06] Speaker 00:
It describes Martin early on as manipulating parallax images, two or more images with overlapping visual fields with different points of view.

[00:32:15] Speaker 00:
So the board understood how Martin worked.

[00:32:17] Speaker 00:
And then it cites to Apple's expert testimony defining Martin in terms of the points of view.

[00:32:22] Speaker 00:
It does that at appendix 21 to 22.

[00:32:25] Speaker 00:
And there it's citing appendix 5414, which is Duran's testimony.

[00:32:29] Speaker 02:
Do I have to say that these errors at 32 and 33 are typographical?

[00:32:35] Speaker 02:
in order to affirm what the board did here.

[00:32:39] Speaker 00:
I don't think so.

[00:32:40] Speaker 00:
I think there's substantial evidence without getting to whether it feels like a point of view.

[00:32:44] Speaker 02:
Even granting that it's a non-typographical substantive error, how do I say there's substantial evidence?

[00:32:52] Speaker 00:
Because of what the board relies on as far as Martin defining the problem, which isn't related to fill the viewer point of view.

[00:33:02] Speaker 03:
I think, can I ask you this?

[00:33:03] Speaker 03:
Are you saying that

[00:33:04] Speaker 03:
It doesn't matter whether the problem is caused by point of view or field of view.

[00:33:08] Speaker 03:
The point, the idea, is that you have a, they're solving the problem of the image jump.

[00:33:19] Speaker 00:
Correct.

[00:33:20] Speaker 00:
Correct.

[00:33:21] Speaker 00:
Yeah, I think you articulated it better than I did.

[00:33:23] Speaker 02:
Well, in that regard, none of this is how Apple articulated it below, right?

[00:33:29] Speaker 02:
The board went off on its own, if you're right about what they're saying here.

[00:33:37] Speaker 00:
No, I don't think so.

[00:33:38] Speaker 00:
Everyone has always identified the problem to be solved as the jump at the back.

[00:33:42] Speaker 02:
Sorry, you didn't say Martin is about field of view.

[00:33:47] Speaker 00:
No, we said Martin is pertinent to the problem because it solves the jump or discontinuity.

[00:33:54] Speaker 00:
That's been the point.

[00:33:57] Speaker 00:
Martin does it in addressing point of view.

[00:34:00] Speaker 00:
But the point, I think, is that the problem to be solved here is the jump or the discontinuity when there's been a shift.

[00:34:09] Speaker 02:
And I would suggest... Isn't it correct that the pertinent problem the board found that Martin was trying to solve is different than the pertinent problem you asked them to find that Martin was trying to solve?

[00:34:23] Speaker 00:
I would suggest to you, and maybe, let me try it one more time, that I think the confusion and why we believe you have to see this as a typographical error is because it's incompatible to, in one sentence, say,

[00:34:39] Speaker 00:
that the problem to be solved is solving the jump in the context of field of view and then explain exactly how Martin does that.

[00:34:49] Speaker 00:
And in the prior paragraph, you explained that Martin does that through point of view.

[00:34:54] Speaker 00:
The only way you can answer that question

[00:34:56] Speaker 00:
And again, I believe my opponent agreed that the explanation earlier also made the same type of graphical error.

[00:35:04] Speaker 00:
I would point out this is kind of a common error.

[00:35:07] Speaker 00:
It happens frequently, and it's actually in claim one of the two through three patent does the same thing.

[00:35:13] Speaker 00:
It uses field of view and point of view interchangeably.

[00:35:16] Speaker 00:
If the court has no further questions.

[00:35:18] Speaker 00:
No, thank you, Ms.

[00:35:19] Speaker 00:
McComas.

[00:35:20] Speaker 03:
Mr. Liddell.

[00:35:24] Speaker 01:
I will give you three minutes.

[00:35:41] Speaker 01:
Two things.

[00:35:41] Speaker 01:
First, I do think that this suggestion that the board's findings and how the board articulated its articulation of the problem to which Martin was allegedly directed can't just be ignored.

[00:35:55] Speaker 01:
That we can't just set that aside and say, well, we can just throw out what the board said and decide they meant something different.

[00:36:01] Speaker 01:
that that doesn't work and I Did not really hear a meaningful dispute that the board's formulation was indeed not what Apple had argued and articulated I want to go back to this this question about the sort of is this something that needs to be in the petition and and I think that the

[00:36:24] Speaker 01:
When we talk about what needs to be in the petition and what's fair game for changing in the reply, I do think that the Intelligent Biosystems case is a pretty good guide here, because there, we all know that showing motivation to combine is something you have to put in your petition.

[00:36:41] Speaker 01:
But Intelligent Biosystems tells us that if you say you'd combine for reason A in your petition, you can't come back and reply and say, oh, actually, you'd combine for reason B.

[00:36:53] Speaker 01:
Even though you said you'd combine these two references and a person skilled in the art would be motivated to do it, you have to actually articulate the rationale, the reason, in the petition.

[00:37:03] Speaker 01:
And you can't change that in reply and expect that to be accepted.

[00:37:08] Speaker 01:
I think here what we're talking about is the exact same thing, to use the question that Judge Stark posed.

[00:37:13] Speaker 01:
If you articulate that the references are in the same field of endeavor in your petition, you can't then come back later and say, OK, we changed our mind.

[00:37:22] Speaker 01:
Now we're going to say they're directed to the same common problem.

[00:37:26] Speaker 01:
That's the same kind of change that intelligent biosystems suggested is not appropriate.

[00:37:32] Speaker 01:
And I would argue that the guidelines from the Patent Office, the governing regulations, make that pretty clear.

[00:37:40] Speaker 01:
So in the discussion

[00:37:44] Speaker 01:
of the rules behind what can be in a reply, the original guidelines say that a petition must identify how the construed claim is unpatentable over the relevant evidence.

[00:37:59] Speaker 01:
The reply cannot raise a new issue or belatedly present evidence.

[00:38:04] Speaker 01:
Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of a claim.

[00:38:17] Speaker 01:
That's what's going on here.

[00:38:18] Speaker 01:
They put in a new issue that the rules say that's not permissible.

[00:38:24] Speaker 01:
And I don't think that we should understand Sanofi Aventis to have changed that rule or to create a new system.