[00:00:00] Speaker 01:
Our next case is Google LLC versus EcoFactor 8, document number 22-1750.

[00:01:07] Speaker 01:
Thank you, Your Honor.

[00:01:14] Speaker 04:
May it please the Court, Matthew Smith, for the appellants.

[00:01:17] Speaker 04:
I'd like to touch on three issues today, the first being the disputed claim construction and the intrinsic evidence related to that, the second being the board's analysis under the Becton case, and the third being the forfeiture argument.

[00:01:33] Speaker 04:
The claim limitation at issue, limitation 1M, is pretty easy to understand in general.

[00:01:39] Speaker 04:
It's simply relating to a calculation where an output value first time prior to set target time, but it's just a number, is determined, quote unquote, based at least in part on five other numbers, which we've been calling the inputs, or inputs one through five.

[00:01:55] Speaker 04:
And I'll probably use that nomenclature unless specifically called for otherwise.

[00:02:00] Speaker 04:
Now that language in and of itself, one number determined based at least in part on five other numbers is already pretty broad.

[00:02:09] Speaker 04:
There's no restriction on how those five input elements are used.

[00:02:14] Speaker 04:
No restriction on how simple or complex that calculation can be.

[00:02:19] Speaker 04:
in what order the inputs are used.

[00:02:21] Speaker 04:
Even the board called this a black box sort of calculation on Appendix Pages 24 and 25.

[00:02:27] Speaker 04:
So what did the board find wrong with the petition in this case?

[00:02:31] Speaker 04:
And this is really the key set of facts.

[00:02:34] Speaker 04:
Although the petition... Yes?

[00:02:36] Speaker 01:
Just the fact that we're dealing with five inputs and each one of them is set out separately and distinctly, a distinct component.

[00:02:45] Speaker 01:
And those become distinct components in the claim.

[00:02:59] Speaker 04:
I would agree with the first part of that, Judge Reyna, that each one of them needs to be distinct in the prior art, and they were in fact mapped to distinct numbers in the prior art.

[00:03:10] Speaker 04:
So this is not a case where we picked out one number in the prior art and said it could represent two inputs or something like that.

[00:03:16] Speaker 04:
All five inputs were initially mapped to different numbers in the prior art.

[00:03:21] Speaker 04:
The problem the board had with it is that one of the inputs, namely input 3, the first internal temperature the third time, was used to calculate another of the inputs, which was input 1.

[00:03:34] Speaker 04:
And that's where the board said it lacked this characteristic of distinctness.

[00:03:39] Speaker 04:
And I would like to point out something else.

[00:03:41] Speaker 04:
And that is that this claim element, by its very terms, requires that you produce one number, the output number,

[00:03:47] Speaker 04:
from five input numbers.

[00:03:50] Speaker 04:
And the only way that can happen is for the five input numbers to be somehow mathematically combined into the output.

[00:03:57] Speaker 04:
So at some point during the combination, if those five inputs are to contribute to the output as the claim requires, they have to be mathematically combined.

[00:04:07] Speaker 04:
So you end up in this odd situation

[00:04:10] Speaker 04:
where the board has placed a requirement against combination in a claim that ultimately requires the combination of all five inputs.

[00:04:20] Speaker 04:
Now, how did the board do that?

[00:04:21] Speaker 04:
It certainly wasn't looking at the specification of the 753 patent, because the specification of the 753 patent, in fact, contradicts the board's interpretation of the claim.

[00:04:32] Speaker 01:
Maybe the focus on combining this is misplaced.

[00:04:37] Speaker 01:
And instead, we should be focusing on

[00:04:40] Speaker 01:
Um, whether you can get one of the inputs and I don't want to say combined, but the use of one of the inputs negates having to use another like number three.

[00:04:55] Speaker 04:
I'm not sure I would agree with that entirely, Judge Raina.

[00:05:00] Speaker 04:
And that's because I think the claim does require that each of the five inputs be identified in the prior art.

[00:05:06] Speaker 04:
That's undisputed.

[00:05:08] Speaker 04:
I think the claim does require that each of the five inputs needs to contribute to the output, because the output is based, at least in part, on each of the five inputs.

[00:05:16] Speaker 01:
But you disagree that each contribution has to be distinct.

[00:05:21] Speaker 04:
I would disagree that there's any restriction on how those inputs are ultimately combined to reach the output.

[00:05:29] Speaker 04:
I think the claim is, as the board said it was, a black box in that effect.

[00:05:33] Speaker 04:
There just is no restriction in the claim.

[00:05:36] Speaker 04:
And in fact, the specification of the 753 patent works in all relevant respects in the same way as the prior art.

[00:05:43] Speaker 04:
That is, the specification of the 753 patent

[00:05:45] Speaker 04:
is using inputs, some inputs, and combining them to reach another input, which is then ultimately used to finish off the calculation of the output.

[00:05:55] Speaker 04:
So if the board's interpretation is to be used, it would effectively exclude the specification of the 753 patent.

[00:06:03] Speaker 04:
And that matters, because there should be a presumption that if the board's interpretation.

[00:06:07] Speaker 01:
But if your argument is accepted, then we would effectively be rewriting the claim.

[00:06:14] Speaker 04:
I'm not sure, Your Honor, how would you be rewriting the claims?

[00:06:17] Speaker 04:
In what sense?

[00:06:20] Speaker 01:
We're negating the distinctness of one of the inputs.

[00:06:24] Speaker 01:
We're saying you don't have to.

[00:06:25] Speaker 04:
Oh, I see.

[00:06:26] Speaker 04:
I don't think you would have to do that at all, Your Honor, because each of the inputs is mapped to a separate number in the prior art.

[00:06:32] Speaker 04:
So those inputs are initially distinct.

[00:06:34] Speaker 04:
It's just that they have to be combined at some point to reach the output.

[00:06:39] Speaker 04:
And that's all the claim requires, that in some way the inputs are

[00:06:43] Speaker 04:
in some way contributing to the output.

[00:06:45] Speaker 04:
The output is based at least in part on the input.

[00:06:47] Speaker 04:
So there's no restriction on how the inputs are ultimately combined, transformed, etc.

[00:06:53] Speaker 04:
to reach the output.

[00:06:54] Speaker 04:
At some point they have to be.

[00:06:56] Speaker 04:
but you don't have to read out the separate recitation of each of the inputs, because each of the inputs exists as a separate number in the prior art.

[00:07:06] Speaker 04:
And in fact, if you try to do that, if the board tries to do that, then the board's interpretation would be excluding effectively the specification of the 753 pattern.

[00:07:16] Speaker 04:
And I think the easiest way to see that is with input number five, which is the forecasted temperature, because that, I understand,

[00:07:23] Speaker 04:
disputed by EcoFactor, the only way in which input number five is used and contributes to the calculation of the output in limitation 1M.

[00:07:33] Speaker 04:
is via the calculation of input one.

[00:07:36] Speaker 04:
So it's exactly analogous to the way the board is excluding the prior arc in input three.

[00:07:41] Speaker 04:
And that matters because the board's interpretation and the logic they use to get there should apply equally to each of the inputs.

[00:07:49] Speaker 04:
The board is just saying the inputs are recited separately in the claims.

[00:07:53] Speaker 04:
Therefore, they must remain distinct to the calculation, at least until you get to the output.

[00:07:58] Speaker 04:
And therefore, that should apply equally to each of the inputs.

[00:08:01] Speaker 04:
And the fact that we have one input, input five, to forecast the temperature, which is undisputedly used to calculate input one, and that is the only way it contributes to the calculation of the output.

[00:08:13] Speaker 04:
you can fairly easily conclude that the board's interpretation of the claims would exclude everything that's relevant in the 7x3 patent.

[00:08:21] Speaker 04:
And there should be a presumption that that's an incorrect interpretation based on that.

[00:08:26] Speaker 03:
You've mentioned twice that the board recognized that what happens here can be in a black box.

[00:08:32] Speaker 03:
The board also said they agree with you that you can indirectly calculate or there's no requirement that the first internal temperature must be used to directly determine the first time prior to said target time.

[00:08:46] Speaker 03:
They agreed with you on those points.

[00:08:50] Speaker 03:
How is it that we could conclude that they then somehow disagreed with you on this implicit claim construction that they didn't even tell us they were doing?

[00:09:00] Speaker 04:
Well, I think they ultimately found for eco-factor, correct?

[00:09:04] Speaker 04:
And they didn't take issue with the way we presented it in the petition.

[00:09:09] Speaker 04:
They said, OK, we recognize what petitioners did in the petition.

[00:09:13] Speaker 04:
And we note that petitioners say input number three is used to calculate input number one.

[00:09:20] Speaker 04:
And that's what we have a problem with because of, effectively, the application of the Becht and Dickinson case to this matter.

[00:09:28] Speaker 04:
And I think what the board was thinking there was that Bechtin represented a sort of per se black letter rule of claim construction.

[00:09:37] Speaker 03:
But they don't say any of that.

[00:09:39] Speaker 03:
That's a bunch of sort of trying to read between the lines.

[00:09:42] Speaker 03:
Why isn't it that they're just making a fact finding as to what your prior art disclosed, and they're just finding it didn't disclose element or subfactor three of 1M?

[00:09:55] Speaker 04:
I think it's because, Your Honor,

[00:09:57] Speaker 04:
There is no issue as to what the prior art says.

[00:10:01] Speaker 04:
Nobody disagrees with that.

[00:10:03] Speaker 04:
There is no issue as to how the petition presented it.

[00:10:06] Speaker 04:
There is only an issue as to how the board interprets the claims to say that the prior art does not have this limitation.

[00:10:15] Speaker 04:
And of course, there are always two steps in these cases, right?

[00:10:18] Speaker 04:
There is always a statement, how do we understand the claims?

[00:10:21] Speaker 04:
Sometimes it's so clear you don't have to spell that out, but there's always that understanding in the background.

[00:10:26] Speaker 04:
And then you take the understanding of the claims and measure that against the prior art.

[00:10:31] Speaker 04:
So you always have this two-part analysis.

[00:10:35] Speaker 04:
And our dispute comes with the first part of the board's analysis.

[00:10:39] Speaker 04:
I don't see a counter-argument where EcoFactor, for example, says, well, either way, under

[00:10:45] Speaker 04:
Google's construction or under the board's construction of the claims, the prior art wouldn't meet the claim limitation.

[00:10:54] Speaker 04:
It's really coming down to how the board interpreted the claims applying the Becton-Dickinson case, and I think they did that improperly.

[00:11:01] Speaker 03:
You think or argue that the board assumed that all of the elements were disclosed in your prior art.

[00:11:11] Speaker 03:
I'm not sure I saw that in the board's opinion.

[00:11:14] Speaker 03:
Did they come right out and say we're finding or we're assuming that everything is in the prior art that you pointed to?

[00:11:19] Speaker 04:
No, I don't think they said they found it, certainly.

[00:11:24] Speaker 04:
I think they accepted it as a premise for the basis of the decision.

[00:11:27] Speaker 03:
Is there somewhere you can point us to in the opinion?

[00:11:32] Speaker 04:
I believe it would be, and it may simply be implicit, Your Honor.

[00:11:43] Speaker 04:
The one thing they don't do in the opinion is to say, we have a problem with the way the petition presented it different from the application of Becton Dickinson in this case.

[00:11:59] Speaker 04:
But for the application of Becton Dickinson and the separately recited claim elements, there would be no issue as to the way the board wrote the opinion here.

[00:12:09] Speaker 02:
Can I just ask you, I think this is related.

[00:12:13] Speaker 02:
Did the board make a finding about, and was there a dispute about whether a first internal temperature measured at a third time, that's the 1H?

[00:12:30] Speaker 02:
First of all, everybody agrees that the corresponding item in 1M refers to that third

[00:12:38] Speaker 02:
temperature, right?

[00:12:40] Speaker 02:
Correct.

[00:12:40] Speaker 04:
So 1M3 refers to 1H.

[00:12:42] Speaker 02:
Right.

[00:12:44] Speaker 02:
And was there a dispute about whether wetikin shows such a third temperature being measured?

[00:12:56] Speaker 04:
There was a dispute in the patent owner response.

[00:13:02] Speaker 04:
And the dispute centered around whether or not the third temperature was newly acquired.

[00:13:10] Speaker 02:
I'm not sure if that's the same thing.

[00:13:13] Speaker 02:
And so one, I guess, version of the question is you rely on equation 12.

[00:13:20] Speaker 02:
Correct.

[00:13:21] Speaker 02:
And I think, just tell me if this is right, that you need the index j from 1 to n. You need n to be greater than 2.

[00:13:30] Speaker 02:
Correct.

[00:13:31] Speaker 02:
Why do we know that's greater than two?

[00:13:34] Speaker 04:
Because Vatican says that it's continuously measuring temperature.

[00:13:38] Speaker 02:
And two just wouldn't be enough for that.

[00:13:39] Speaker 04:
Two just wouldn't be enough for that.

[00:13:41] Speaker 04:
And you can look at the text right above that equation on appendix page 580 where it says we're taking n measurements.

[00:13:47] Speaker 04:
It is going to have at least three measurements.

[00:13:52] Speaker 04:
And the argument below was by EcoFactor, the claim requires at least three internal temperature measurements, two of which are characterized as historic, one of which is simply the first internal temperature the third time, but with no restriction on when that third time is.

[00:14:09] Speaker 04:
And so EcoFactor said, and this is one of the arguments rejected by the board, was that the third time, because it's not characterized as a historic time, has to be taken at a specific later point in time.

[00:14:22] Speaker 04:
And our argument was there simply is no restriction on how or when that first internal temperature, as long as it's a third time.

[00:14:31] Speaker 04:
And there's no restriction preventing it from being used to calculate the thermal performance value, which is input number one.

[00:14:38] Speaker 04:
The claim just doesn't have that sort of negative limitation.

[00:14:43] Speaker 04:
Let me proceed to the

[00:14:46] Speaker 04:
Beckton-Dickinson analysis for a second.

[00:14:48] Speaker 04:
I think one of the problems with the board's analysis under Beckton-Dickinson.

[00:14:53] Speaker 01:
You're into your rebuttal time.

[00:14:55] Speaker 04:
Oh, I'm into my rebuttal time?

[00:14:56] Speaker 04:
OK, let me just quickly talk about the forfeiture argument for a second, because it follows on what Judge Toronto asked.

[00:15:04] Speaker 04:
The argument that EcoFactor made below, I think, was fundamentally different than the rationale that the board ultimately used to find in favor of EcoFactor under Becton Dickinson.

[00:15:15] Speaker 04:
It had to do with whether or not this first internal temperature was newly acquired.

[00:15:20] Speaker 04:
But even if it were the same thing, such that we should have been on the notice

[00:15:25] Speaker 04:
of the Beckton-Dickinson analysis, which hadn't been briefed by anyone or mentioned by anyone up until the final written decision.

[00:15:32] Speaker 04:
We responded to Ecofactor's argument by making essentially the same arguments we're making here, i.e.

[00:15:38] Speaker 04:
claim limitation 1M is broadly formulated.

[00:15:42] Speaker 04:
the specification in relevant respects operates in the same way as the prior route that is some inputs are used to calculate other inputs which are then used to finish off the determination of the output and that position has been consistent for the petitioners throughout the case.

[00:15:58] Speaker 04:
Thank you.

[00:16:12] Speaker 00:
Good morning, Your Honors.

[00:16:15] Speaker 00:
Good morning.

[00:16:17] Speaker 00:
I think that as an initial matter, Google did forfeit its claim interpretation here.

[00:16:25] Speaker 00:
Google filed the petition.

[00:16:27] Speaker 00:
It identified the issues for the board to consider.

[00:16:30] Speaker 00:
It identified claim construction issues in its petition.

[00:16:33] Speaker 00:
nowhere does it indicate that the five data elements or input elements in limitation 1M should not be separate and distinct.

[00:16:42] Speaker 00:
In fact, when you look at the petition and how they set them out, Google is the one who listed them as five separate elements.

[00:16:50] Speaker 03:
How could they have had any sense that you thought that they had to be separate and distinct and remain separate and distinct all the way, I guess, up until the point where they're combined?

[00:17:02] Speaker 00:
Google was the one who separated them and addressed them each separately.

[00:17:08] Speaker 00:
And certainly, they don't need to be distinct after or during that determination of that first time.

[00:17:16] Speaker 00:
It's based on that.

[00:17:16] Speaker 00:
The step of 1M is determining a first time prior to set target time.

[00:17:21] Speaker 00:
It's based on these five.

[00:17:23] Speaker 00:
And there's going to be some mixing.

[00:17:24] Speaker 00:
But beforehand, they need to be

[00:17:26] Speaker 00:
separate starting points, if you will.

[00:17:29] Speaker 03:
Well, then what's wrong with their theory?

[00:17:31] Speaker 03:
What did the board find was missing from their theory?

[00:17:34] Speaker 00:
What the board found that was missing was that element three, which is the first temperature at a third time, was not distinct.

[00:17:45] Speaker 00:
Because what Google did was they said, here in Weedikin are these thermal performance values.

[00:17:51] Speaker 00:
And they're based on these temperatures.

[00:17:54] Speaker 00:
And because those temperatures include a first temperature at a third time, that also meets claim element three.

[00:18:02] Speaker 00:
And that's what the board found.

[00:18:03] Speaker 03:
And what precludes that from being a legitimate theory of invalidity?

[00:18:09] Speaker 00:
What precludes that is that then

[00:18:11] Speaker 00:
element three and element one are not separate and distinct from each other.

[00:18:14] Speaker 03:
And isn't that a claim construction statement?

[00:18:17] Speaker 03:
What requires them to be separate and distinct?

[00:18:19] Speaker 00:
The actual language of the claims.

[00:18:21] Speaker 03:
Meaning it's a claim construction question.

[00:18:24] Speaker 00:
I would argue it's not a claim construction issue, your honor, because what's happening here is the board

[00:18:31] Speaker 00:
When doing an invalidity analysis, it's a two-step process, as Google's counsel noted.

[00:18:38] Speaker 00:
The first is you look to the language of the claim.

[00:18:41] Speaker 00:
And that's what the board did.

[00:18:42] Speaker 00:
It looked at the language.

[00:18:43] Speaker 00:
It looked at the words.

[00:18:44] Speaker 00:
It looked to see whether there was antecedent basis.

[00:18:46] Speaker 00:
How did that affect the understanding of the claims?

[00:18:50] Speaker 00:
And then it applied that.

[00:18:52] Speaker 00:
And so if that's considered claim construction, then claim construction occurs at every analysis of invalidity for every term in a claim.

[00:19:02] Speaker 00:
And so I don't think what happened here was truly claim construction, where they gave it a special meaning.

[00:19:08] Speaker 00:
What happened here was that the board looked at the claim language and said, all right, what does this require?

[00:19:15] Speaker 00:
It noted that there were five separate inputs that were distinctly listed out, and noted that that determination step is based on those five distinct elements.

[00:19:26] Speaker 01:
Now, the example that Google gave in... Doesn't that set out some boundaries as to how the claims operate?

[00:19:34] Speaker 01:
Absolutely, it does.

[00:19:35] Speaker 01:
Well, we have said in Network LLC versus Central Court that claim construction establishes a scope and boundaries of the subject matter that is pandit.

[00:19:47] Speaker 01:
Why isn't that what happened here?

[00:19:50] Speaker 00:
What happened here, Your Honor, is the

[00:19:53] Speaker 00:
board looked at the language of the claims, which is what's required.

[00:19:58] Speaker 01:
And it interpreted the language.

[00:20:01] Speaker 00:
But it certainly did interpret the language insofar as it looked at the actual word, the context, again, whether there was antecedent basis, how those things interpreted or influenced its understanding.

[00:20:14] Speaker 00:
But that would occur under every analysis in validity.

[00:20:23] Speaker 00:
throughout any claim limitation.

[00:20:26] Speaker 00:
And so what they did here was use the language of the claims to understand what they meant.

[00:20:31] Speaker 00:
That is, for example, looking at the language that it was said first temperature at said third time.

[00:20:40] Speaker 00:
Well, to understand what did that mean, the court is required to look at, or the board is required to look at, limitation 1H, which provides acquiring said first temperature

[00:20:51] Speaker 00:
at the third time and provides additional information about it.

[00:20:56] Speaker 00:
That is, that antecedent basis provides context to how the board is going to understand and map that claim to the prior art.

[00:21:05] Speaker 00:
I would submit that's not claim construction in the sense of what you may be thinking of where a court provides a special definition or is required to look at the specification to understand what a particular term meant.

[00:21:18] Speaker 00:
Rather, it's just normal, everyday analysis of the claim limitations that's performed for invalidity or even infringement.

[00:21:33] Speaker 03:
Maybe it's a presumption that when you separately list elements in a claim that they're maybe meant to be separate.

[00:21:41] Speaker 03:
Do you think that the board treated our Becton decision as a per se rule that those things listed separately have to remain separate?

[00:21:50] Speaker 00:
No, Your Honor, I don't.

[00:21:51] Speaker 00:
And you can see it in the board's decision.

[00:21:53] Speaker 00:
Give me a second to get to that page.

[00:21:57] Speaker 00:
Page 26.

[00:21:58] Speaker 00:
Actually, page 25 is where they first cite to the Beckton case and quote it, and then include references to both Gauss and Engel industries, including a parenthetical on Engel.

[00:22:13] Speaker 00:
But the very next full sentence that begins there toward the top of page 26 is, there is nothing in the asserted claims to suggest that one piece of data can be used to satisfy multiple inputs.

[00:22:26] Speaker 00:
I read that to say, Beckton gives us this understanding.

[00:22:29] Speaker 00:
This is what we would expect.

[00:22:31] Speaker 00:
But it's not a per se rule.

[00:22:32] Speaker 00:
It's a rule of reason.

[00:22:33] Speaker 00:
We look to say here.

[00:22:35] Speaker 00:
But we assume that as a starting point.

[00:22:38] Speaker 00:
But then we look to the language of the claims to see.

[00:22:39] Speaker 03:
And it would be wrong to treat it as a per se rule, correct?

[00:22:42] Speaker 02:
Correct.

[00:22:44] Speaker 02:
Doesn't at that point it matter that?

[00:22:48] Speaker 02:
Since the language is not telling us whether any of the five items can be mathematically related to the others that the view the board took would have troubling effects on what the spec covers.

[00:23:07] Speaker 00:
I don't know that I would agree your honor the language of the claims is silent on that.

[00:23:13] Speaker 00:
When you look at both

[00:23:14] Speaker 02:
When you list five mathematical entities, why would one think without something more that entity number three cannot be part of the calculation of entity number one?

[00:23:32] Speaker 00:
The antecedent basis for all five of those inputs gives us

[00:23:39] Speaker 02:
That understanding well if there were if there was something in the antecedent basis for the the bigger one That said you cannot use a third internal temperament temperate temperature measurement Maybe but it doesn't

[00:23:58] Speaker 00:
No, it talks about historical temperature data.

[00:24:01] Speaker 00:
I presume you're talking about the thermal performance values and how it uses those first and second.

[00:24:05] Speaker 02:
That's the ones that's at issue here.

[00:24:07] Speaker 02:
That incorporates a third internal temperature measure, as the board said, since that's a no-no.

[00:24:18] Speaker 02:
in Vatican.

[00:24:20] Speaker 00:
Right.

[00:24:21] Speaker 00:
What Vatican doesn't disclose is using any of those internal temperatures along with the thermal performance value and inputting that or using that as a basis for making this determination.

[00:24:40] Speaker 00:
All Vatican shows is using those internal temperatures

[00:24:45] Speaker 00:
and external temperatures and creating the thermal performance values.

[00:24:49] Speaker 00:
And then from there, Vatican then uses that along with the other three inputs.

[00:24:57] Speaker 00:
It never takes that thermal performance value, the characteristics of the climate control system, the external temperature,

[00:25:06] Speaker 00:
at a third time, the weather forecast, and that first internal temperature at a third time, and uses those five as a group as a basis.

[00:25:16] Speaker 00:
So those are never together there at the start like that.

[00:25:24] Speaker 00:
What Vatican does is it takes that internal temperature and uses that to make that calculation.

[00:25:33] Speaker 00:
Now, in the reply.

[00:25:35] Speaker 02:
The third.

[00:25:36] Speaker 00:
The third, yes.

[00:25:37] Speaker 00:
In the reply, Google offered up at page 17 in their reply brief the simplistic model of five inputs and you would add them.

[00:25:49] Speaker 00:
Right?

[00:25:50] Speaker 00:
And it would, the idea was that they then said, well, it would be easy if you were adding them, you would add input one and input two and you would get some intermediate value.

[00:25:59] Speaker 00:
And that would be the simple way to do it.

[00:26:03] Speaker 00:
would move forward and add three and get intermediate, add four, and then add five.

[00:26:08] Speaker 00:
But that's not what Vatican is doing, and that's why this doesn't work.

[00:26:13] Speaker 00:
Because what Vatican is doing is it's taking three and adding it to something to get one.

[00:26:20] Speaker 00:
So it is then adding one to two, but then two to four, and then adding five.

[00:26:26] Speaker 00:
It's never adding three again, which is what the claims are talking about.

[00:26:30] Speaker 00:
The claims are showing those five distinct

[00:26:33] Speaker 00:
inputs as the starting point for that determining a first time prior to the target time based on those five distinct inputs that it sets forth and provides the antecedent basis for how each of those five are obtained.

[00:26:53] Speaker 00:
They're each obtained distinctly and separately.

[00:26:56] Speaker 03:
Can I take you back to 25 and 26 where the board is citing Tibetan

[00:27:04] Speaker 03:
Why should we not read these as statements about claim construction?

[00:27:10] Speaker 03:
Whether the board got it right or wrong, it's just a clear implication that they should remain separate or they always have to remain separate.

[00:27:18] Speaker 03:
Isn't that a statement of claim construction?

[00:27:20] Speaker 00:
I would argue, Your Honor, that that is a statement of guidance as to how they are reading the

[00:27:31] Speaker 00:
words of the claim, and particularly claim limitation 1M.

[00:27:35] Speaker 03:
And did the parties have any dispute about the application affected to these claims in front of the board?

[00:27:42] Speaker 00:
No, Your Honor.

[00:27:43] Speaker 00:
I don't recall that there was any specific dispute on that issue.

[00:27:47] Speaker 03:
So wouldn't that have been a surprise to the petitioner here to see that they're basically losing the IPR

[00:27:59] Speaker 03:
based on an application of effectant that was never raised by the parties to the board?

[00:28:07] Speaker 00:
I don't think it was raised.

[00:28:08] Speaker 00:
It wasn't raised by the parties, Your Honor, because there was no dispute over how the claims could be read onto the prior art until the appeal here.

[00:28:23] Speaker 00:
Again, Google's petition was the one that

[00:28:26] Speaker 00:
set these five out separately and distinctly.

[00:28:30] Speaker 00:
EcoFactor followed on with that.

[00:28:31] Speaker 00:
And certainly, Google appeared to do the same thing as Reply, and we filed in our certify with that.

[00:28:38] Speaker 00:
So now the board followed that, agreed with the parties, and explained why with this.

[00:28:48] Speaker 00:
And so I don't think that that is something that was a surprise.

[00:28:53] Speaker 01:
But assuming that,

[00:28:56] Speaker 01:
the court did engage in, I mean the board engaged in 10 construction.

[00:29:03] Speaker 01:
Just looking at the record, that would have been a suicide ruling with the board made.

[00:29:09] Speaker 00:
If you assume that that was, that what the board did here with claim 1M was claimant's construction, then yes, that was something that was not raised by either party.

[00:29:20] Speaker 01:
Right, the court did it on its own.

[00:29:21] Speaker 01:
I mean the board did it on its own.

[00:29:23] Speaker 00:
That's correct.

[00:29:24] Speaker 01:
Under those circumstances, how can we say that Google had opportunity to address that construction?

[00:29:32] Speaker 00:
Well, I think that if you make that assumption that this was claim construction and that it wasn't a normal analysis of the claims and understanding the claim language so you can map them, then the concern is,

[00:29:54] Speaker 01:
We should send it back.

[00:29:56] Speaker 00:
Well, I would submit, Your Honor, that what the board did here is absolutely consistent with how Google presented the claims.

[00:30:05] Speaker 00:
And it's explicit construction, if you will.

[00:30:09] Speaker 00:
If you call this a claim construction, what Google explicitly did was, in its petition,

[00:30:17] Speaker 00:
and the petition is at 437 and 438 of the record, it set forth these five inputs individually as distinct inputs.

[00:30:27] Speaker 00:
This is something Google offered up.

[00:30:28] Speaker 00:
So to the extent that this is now a construction, I don't see how they can say this was unfair or that they did not have notice of this when they were the ones who did it.

[00:30:38] Speaker 02:
Can I ask you a question?

[00:30:40] Speaker 02:
Sure, absolutely.

[00:30:41] Speaker 02:
On the assumption, which I know you disagree, that we agree with Google, that this is a claim construction issue and that the board got it wrong, and that there's no requirement in this claim element that the various, you know, we rely on will be, are mathematically unrelated.

[00:31:01] Speaker 02:
Is this an outright reversal or is there something to remand?

[00:31:05] Speaker 00:
Well, I think then if this is a, if the issue is that this is a suede-spun decline construction, that the board, then I think... I just want to say, I don't care how we get to the proposition that this is a claim construction and that Google is right about it.

[00:31:23] Speaker 02:
Let's assume that.

[00:31:24] Speaker 02:
What's our proper disposition?

[00:31:25] Speaker 02:
Is there something to remand, or is it an outright reversal, because there's no remaining dispute about the application of that construction?

[00:31:33] Speaker 00:
I don't think there's a dispute about the underlying prior art.

[00:31:38] Speaker 00:
I would submit, Your Honor, that if you feel that Google is correct on this, then I would argue, though, that it was an insufficient briefing, because there is, since neither side would have been on,

[00:31:51] Speaker 00:
notice, there may be prosecution history issues and full understanding of the specification as to whether this is in fact the proper one.

[00:32:01] Speaker 00:
But if the court is, after looking at everything, is certain that Google is correct, then the proper decision would be then to reverse.

[00:32:14] Speaker 01:
Any other questions?

[00:32:27] Speaker 01:
Mr. Steph, we're going to restore you back to four minutes.

[00:32:31] Speaker 04:
Thank you, Your Honor.

[00:32:33] Speaker 04:
I have one quick point to make, and then I'd like to respond to Judge Stark's early question about the final written decision of the board.

[00:32:43] Speaker 02:
I don't want to miss this.

[00:32:44] Speaker 02:
Isn't there an issue that the board did not address about the combination of Wettekind and Ehlers for obviousness for a remand?

[00:32:54] Speaker 04:
I'm not sure what that would be, Your Honor.

[00:32:56] Speaker 02:
No?

[00:32:56] Speaker 04:
Okay.

[00:33:00] Speaker 04:
I think that my counterpart is correct in stating that Google treated the claim elements in the petition as separate and distinct.

[00:33:10] Speaker 04:
We did, in fact.

[00:33:11] Speaker 04:
We recognize that they are separate and distinct.

[00:33:14] Speaker 04:
And we mapped each of them against different numbers in the prior art.

[00:33:19] Speaker 04:
The next requirement for claim limitation 1M is that the output has to be based at least in part on each of those inputs that we separately mapped.

[00:33:28] Speaker 04:
And we demonstrated that too.

[00:33:30] Speaker 04:
It's just that input number three, the way in which it is contributing to the output is via input number one.

[00:33:38] Speaker 04:
But there's no restriction in the claim language that would prevent that.

[00:33:43] Speaker 04:
And so I think maybe there's a little bit of a straw man argument going on here.

[00:33:49] Speaker 04:
The straw man argument.

[00:33:50] Speaker 01:
Yes.

[00:33:51] Speaker 01:
But the clay language doesn't say to do that.

[00:33:54] Speaker 01:
You're doing something that the clay language does not say.

[00:33:58] Speaker 04:
I agree the claim language doesn't say to do that, but it doesn't say to do anything.

[00:34:01] Speaker 04:
It leaves the manner of the calculation completely open, Your Honor.

[00:34:05] Speaker 04:
And so I think mathematical combination of these inputs is entirely expected, especially because that's the way the specification of the 753 patent itself works.

[00:34:14] Speaker 04:
There's no way to do it and still have written descriptions for it in the specification of the 753 patent for the contribution of inputs three, four, and five to the output.

[00:34:26] Speaker 04:
without finding that the board's interpretation of the claims is simply incorrect.

[00:34:31] Speaker 01:
At the end of the day, does it really matter whether the board engaged in claim construction or not?

[00:34:40] Speaker 01:
Given that it seems to me that in both instances, the findings that the board made were factually based and were dealing with substantial evidence that are standard here.

[00:34:52] Speaker 04:
I think it makes a difference, Your Honor, in the sense that the reason the board excluded the prior art here is because of its understanding of a restriction in claim limitation 1M based on the Bechtin case.

[00:35:06] Speaker 04:
And I think this dovetails with the answer to Judge Stark's question.

[00:35:11] Speaker 04:
And that is, Judge Stark, if you look at appendix pages 18 and 19 of the final written decision, the board goes over its understanding of the petition's arguments and does there acknowledge that the input number three, the first internal temperature, the third time this is the bottom of appendix page 18, is mapped to a temperature in the prior argument.

[00:35:32] Speaker 04:
and that the thermal performance value is mapped to something else in the prior art.

[00:35:38] Speaker 04:
It then takes that understanding to Appendix Page 26.

[00:35:43] Speaker 04:
And in the quote that begins in the first full paragraph on Appendix Page 26, the board said in the second sentence, according to petitioner, Vatican base is T3.

[00:35:57] Speaker 04:
This is the output value of claim limitation 1M.

[00:36:00] Speaker 04:
which petitioner maps to the first time prior to set target time on the first internal temperature because the first internal temperature is used to determine the thermal performance values of said structure.

[00:36:11] Speaker 04:
So it's recognizing that those two things are separate at that point.

[00:36:15] Speaker 04:
And then after the quotations, it says, doing so effectively ignores the claim limitation by double counting the one or more thermal performance values of said structure.

[00:36:25] Speaker 04:
So the board here isn't saying, hey, Google, you took one number and mapped it against two elements.

[00:36:31] Speaker 04:
The board is saying, we recognize that there are two elements, but when the math requires them to be combined, that's excluded by our analysis under Becton Dickinson.

[00:36:41] Speaker 04:
And that's why that's a claim construction analysis.

[00:36:43] Speaker 04:
Thank you.