[00:00:01] Speaker 03:
The next case is Huawei Technologies versus Bethlehem Vidal, 2022-1553.

[00:00:10] Speaker 03:
Mr. Courtney.

[00:00:13] Speaker 01:
Thank you, Judge Lurie.

[00:00:14] Speaker 01:
It pleases the court to begin with what we view as the primary error in the board's decision in this appeal, and that's its failure to apply the legal guardrails that this court and the Supreme Court have put in place to guide the reason to combine analysis and avoid the inherent risk of corruption by bias, and particularly hindsight bias.

[00:00:34] Speaker 01:
There's two aspects of that that we think the board's decision went afoul of.

[00:00:38] Speaker 01:
The first is the instruction that the reason to combine if it's going to support an obviousness determination must be specific and it must specifically map the theory of obviousness that's been presented by the challenger.

[00:00:51] Speaker 01:
It must start at the challenger's starting point, which is in this case the carry device, and it must be supported by specific evidence about what is it about that carry device

[00:01:02] Speaker 01:
that would cause an ordinary artisan prior to the claimed invention not just to make modifications to carry in a general way, but to make specific modifications that lead all the way to an embodiment of the claims.

[00:01:13] Speaker 01:
And we think the board erred in that respect.

[00:01:16] Speaker 01:
Its reason to combine analysis is highly generic, and there's nothing about it that is linked to the underlying

[00:01:22] Speaker 01:
starting point, the theory that was being presented.

[00:01:24] Speaker 01:
And then second, in a related error, the board also failed to apply the guardrails, emphasizing the board's role as an adjudicator of evidence and not a filler of gaps.

[00:01:35] Speaker 01:
This is an adversarial proceeding.

[00:01:38] Speaker 01:
The board's role is not to rescue the petitioner from unforced errors.

[00:01:41] Speaker 01:
The board's role is not to supplement the record.

[00:01:44] Speaker 01:
The board has expertise.

[00:01:46] Speaker 01:
It may apply it in interpreting the record, but it may not use it as a substitute for the record.

[00:01:51] Speaker 01:
So I'll start there.

[00:01:51] Speaker 01:
I'd like to come to the claim construction issue.

[00:01:54] Speaker 02:
Your argument is that the board legally erred and made it in its decision on motivation to combine.

[00:02:01] Speaker 02:
That it was legal error.

[00:02:03] Speaker 01:
We would say that its determination of obviousness, which is a legal determination, was wrong because its inquiry into the underlying facts applied the wrong legal framework.

[00:02:12] Speaker 02:
I agree with that.

[00:02:13] Speaker 02:
Now aren't you putting yourself in a substantial evidence situation?

[00:02:19] Speaker 01:
Respectfully, I don't think so.

[00:02:20] Speaker 01:
I think when this court reviews the board's legal framework, the record shows that the board did not apply the correct legal framework.

[00:02:31] Speaker 01:
The underlying conclusion, if the board applies the correct legal framework, then we review for substantial evidence.

[00:02:37] Speaker 01:
I say we.

[00:02:37] Speaker 01:
This court reviews for substantial evidence.

[00:02:39] Speaker 01:
However, when there's an error in the underlying framing that the board has applied, there's no deference accorded to that.

[00:02:45] Speaker 01:
That would be de novo review.

[00:02:47] Speaker 01:
I think correction, reversal is required here under either standard of review.

[00:02:51] Speaker 01:
I want to emphasize that.

[00:02:53] Speaker 01:
But I do believe that when we look to see whether the board's analysis comports with active video, comports with TQ delta, comports with KSR, that is a de novo review.

[00:03:03] Speaker 01:
And active video, I think, underlines that.

[00:03:05] Speaker 01:
In active video, just like in this case, we see a challenger whose theory of the reason to combine is highly generic.

[00:03:13] Speaker 04:
In that case... You say that, but it struck me in reading the materials here that these two prior art references that are at issue here are extremely similar.

[00:03:24] Speaker 04:
They come from very closely analogous art, and that it doesn't take a great leap from one

[00:03:32] Speaker 04:
area of art to another completely different area of law by saying, well, there's a general motivation to combine.

[00:03:41] Speaker 04:
When you've got two prior art references that are so similar, it looks to me as I read what the board has done, and you can correct me if you think this is a misapprehension, is to take these two references and say one of them leads right up to a certain point and the other finishes the job.

[00:04:00] Speaker 04:
Why isn't that a very specific

[00:04:02] Speaker 04:
use of the motivation to combine?

[00:04:05] Speaker 01:
A couple responses.

[00:04:06] Speaker 01:
I think first, if we had a record where the evidence indicated that these were close, we'd be having a different conversation.

[00:04:12] Speaker 01:
However, we have a record.

[00:04:13] Speaker 04:
Do you think these are not close references?

[00:04:16] Speaker 01:
Respectively, I think the evidence teaches that they're not close references.

[00:04:19] Speaker 01:
We have Dr. Davis's declaration to the board, substantially unrebutted by the petitioner here, explained how the Cary reference is in its core conception

[00:04:29] Speaker 01:
a device located at the center of a network whose primary configuration is to avoid mixing of material on different VLANs, and whose main job is to allow a customer to select whatever VLAN identifier the customer might prefer without compromising the insurance that data the customer wants to keep in a single VLAN will not mix with data from other customers or other VLANs.

[00:04:52] Speaker 01:
That was Cary's core operating principle.

[00:04:54] Speaker 01:
Dr. Davis described that, and there was no rebuttal.

[00:04:58] Speaker 04:
Similarly, Dr. Davis described how... Both of the prior references deal with converting and transferring communications over VLANs through an input port, through a switch, through an output port in a way that would be able to be done at level 2 without having to go to level 3.

[00:05:21] Speaker 04:
That seems like we're talking about the same art here.

[00:05:24] Speaker 04:
I think unless that art is your universe, there's nothing else out there.

[00:05:31] Speaker 01:
Two responses.

[00:05:31] Speaker 01:
I think I do understand the point that's being made.

[00:05:34] Speaker 01:
I will say that neither of these references actually connected two VLANs to one another.

[00:05:39] Speaker 01:
That's important to recognize.

[00:05:41] Speaker 01:
Both of these references, if a customer said,

[00:05:45] Speaker 01:
I'm defining VLAN as VLAN 1 is these communications and VLAN 2 is these communications.

[00:05:49] Speaker 01:
Neither reference provided a facility to cross from one to the other.

[00:05:53] Speaker 01:
The combination that's been proposed by the petitioner here would enable that, but neither reference did.

[00:05:57] Speaker 01:
So that's one thing I'd like to isolate and emphasize.

[00:06:02] Speaker 01:
And I would also emphasize that network infrastructure matters in this field.

[00:06:06] Speaker 01:
The goals of Cary, which Cary itself described,

[00:06:11] Speaker 01:
uh... miss kerry said my goal is to prevent mixing of these materials and my other goal is to prevent the flooding problem which is what happens it's a natural part of layer two networking uh... when a message doesn't have a known destination it gets flooded out to all potential recipients and miss kerry said my design is such

[00:06:29] Speaker 01:
There is no risk of customer who has data on their network, on their VLAN, that the flooding process causes it to reach someone that the customer doesn't want.

[00:06:38] Speaker 01:
Ms.

[00:06:38] Speaker 01:
Carey specifically identified that as a design criteria.

[00:06:42] Speaker 01:
The combination proposed by the petitioner here really undermines that.

[00:06:48] Speaker 01:
The flooding problem comes back to the fore in a major way.

[00:06:52] Speaker 01:
And again, Dr. Davis described that.

[00:06:54] Speaker 01:
And again, the petitioner did not submit rebuttal evidence.

[00:06:57] Speaker 01:
So we had some conversation earlier today, Judge Bryson, about carrying a burden where evidence is believed and unrebutted.

[00:07:06] Speaker 01:
Now, the record here shows evidence of technical incompatibility between the two references.

[00:07:11] Speaker 01:
It was not rebutted.

[00:07:12] Speaker 01:
We know that.

[00:07:14] Speaker 01:
But the board did not make any findings that Dr. Davis was not credible.

[00:07:17] Speaker 01:
It did not make any findings that Dr. Davis applied the wrong standards of his field.

[00:07:22] Speaker 01:
The board simply reasoned in, I think, a conclusory and unsupported way that the concerns Dr. Davis had raised were somehow not real or not sufficient to defeat the proposed combination.

[00:07:34] Speaker 01:
But that is not the board's role.

[00:07:35] Speaker 01:
The board's role is to weigh evidence in a proceeding such as this.

[00:07:38] Speaker 04:
It sounds like you're perhaps not quite saying, but coming close to saying that in order for the petitioner to be able to make its case, it has to introduce rebuttal

[00:07:51] Speaker 04:
evidence in the form of, say, Dr. Badacharji coming in with a reply report saying none of what Mr. Davis says is true.

[00:08:04] Speaker 01:
I think on this record that is what could and should have happened and it's not the board's role to rescue the petitioner.

[00:08:09] Speaker 01:
However, another path the petitioner has is in the

[00:08:13] Speaker 01:
supporting evidence to anticipate the objections that its adversary might bring up, and for its initial declaration to say, a person of skill would have traversed those or would not have viewed them as undermining the motivation to combine references, and here's why.

[00:08:27] Speaker 01:
There is that opportunity that the petitioner has.

[00:08:32] Speaker 01:
They get two bites at the apple.

[00:08:34] Speaker 01:
They get the petition, and they get the reply.

[00:08:36] Speaker 01:
In this one, the petitioner forwent the opportunity to reply evidence, and then the board

[00:08:43] Speaker 01:
weeks contend on this record said we're going to forgive the petitioner that error and supplement the board's expertise to fill in that gap and that's improper.

[00:08:54] Speaker 01:
I do think active video and TQ Delta are germane here.

[00:08:57] Speaker 01:
Active video was a case involving a cable system and the provision of interactive services that were going to be provided over the cable TV system generated at the head end, not at the Fox.

[00:09:09] Speaker 01:
All those components were known in the art.

[00:09:11] Speaker 01:
That wasn't disputed.

[00:09:12] Speaker 01:
and the expert, the challenger, came in with a theory that combining these devices to reach the challenge claims would have added features that customers liked, it would have been efficient, it would have generally increased value.

[00:09:24] Speaker 01:
And this court held, as a matter of law, on an affirmed JMAW that that was insufficient, that it was excessively conclusory, and that Challenger cannot carry their burden on the reason to combine merely by assessing that making the proposed combination would have made things better.

[00:09:43] Speaker 01:
And in fact, the desire to make things better is often the cornerstone of invention.

[00:09:47] Speaker 01:
That's why we require specific, particularized analysis that takes the starting point the challenger has identified.

[00:09:54] Speaker 01:
Here it's Carrie, operating in the center of a network, expressly dedicated to not crossing material from one VLAN to another or one customer network to another.

[00:10:04] Speaker 01:
The burden was on the petitioner here to explain why a skilled artisan, starting from that starting point, would have been driven

[00:10:13] Speaker 01:
towards a design that is radically different.

[00:10:16] Speaker 01:
It requires a fairly extensive conversion of Kerry into something different so as to practice the claim.

[00:10:22] Speaker 01:
And we contend that the board simply did not accomplish that.

[00:10:27] Speaker 01:
My colleague from the director's office, I think as Judge Bryson did, raises points of, well, this is analogous art, right?

[00:10:34] Speaker 01:
They raised points of the generic motivation to combine.

[00:10:40] Speaker 01:
But those are not sufficient.

[00:10:42] Speaker 01:
They raised points that some of this technology was well known or had a reasonable expectation of success.

[00:10:47] Speaker 01:
Those are all collateral to the underlying inquiry of why would a person of skill, starting with Cary, which has such a clear design focus, have reached out and said, I'm going to convert Cary into something different than it is by adding this facility for

[00:11:04] Speaker 01:
translating the output VLAN ID.

[00:11:06] Speaker 01:
That's not a facility that Cary had.

[00:11:08] Speaker 01:
It's not a facility that Cary needed.

[00:11:10] Speaker 01:
And we submit that the board did not identify any reason why Cary would benefit from that redesign, other than the hindsight motivation to practicing the claims.

[00:11:24] Speaker 01:
With my remaining time, I'd like to talk briefly about the claim construction error, because I think it's equally serious, and I think it also requires reversal.

[00:11:31] Speaker 01:
This is another area where the board extended its hand to correct what may have been an unforced error by the petitioner, but it was the petitioner's responsibility to put its arguments in this petition.

[00:11:41] Speaker 01:
It's unambiguous that the petition relies, for limitation 1.3, solely on the carry reference.

[00:11:48] Speaker 01:
We would contend that there's no reasonable dispute that had the board adopted the construction Huawei proposed in this case, there's no way the petitioner could have prevailed.

[00:11:59] Speaker 01:
Limitation 1.3 requires a VSI under Huawei's proposed construction, which, by the way, was the construction that the petitioner had itself proposed in district court.

[00:12:10] Speaker 01:
A VSI would have required both a doublet of VLAN ID and input port and output VLAN ID and output port.

[00:12:18] Speaker 01:
Cary has nothing like that.

[00:12:20] Speaker 01:
The director's contention that this would not have affected the outcome we think is unsupportable.

[00:12:25] Speaker 01:
The idea that a petitioner could point to a single reference

[00:12:29] Speaker 01:
in its petition and then be unable to find the limitation as construed by its adversary's construction in that reference.

[00:12:38] Speaker 01:
The idea that that doesn't make a difference, we would respectfully submit, is unjustifiable.

[00:12:43] Speaker 01:
I think the correct action here is reversal.

[00:12:45] Speaker 01:
This petition can't be rewritten.

[00:12:46] Speaker 01:
The board lacks that power.

[00:12:48] Speaker 01:
It may have been an unforced error by the petitioner, but it is the petitioner's responsibility.

[00:12:51] Speaker 04:
Now, the petition does refer to Kerry as having

[00:12:54] Speaker 04:
referencing the output port.

[00:12:57] Speaker 04:
What's your position with respect to why Kari doesn't satisfy at least the general parameters of the 1.3?

[00:13:07] Speaker 01:
Certainly.

[00:13:08] Speaker 01:
Kari has no facility for mapping based on output VLAN ID.

[00:13:11] Speaker 01:
The VLAN ID is the same both on the input side and on the output side.

[00:13:16] Speaker 04:
If it did, it would anticipate.

[00:13:20] Speaker 01:
It's easy to see that hypothetical.

[00:13:22] Speaker 01:
But it didn't have that.

[00:13:24] Speaker 01:
There's no doublet comprising an output VLAN ID in Kari's system.

[00:13:32] Speaker 04:
And you think there actually has to be a doublet in Kari in order to satisfy 1.3?

[00:13:38] Speaker 01:
Under Huawei's proposed construction, that was expressly a requirement.

[00:13:41] Speaker 01:
And by the way, that's the construction that the petitioner had initially proposed to the district court.

[00:13:45] Speaker 01:
It was on notice of that construction.

[00:13:47] Speaker 01:
And we don't think there was a basis for the board to rescue the petitioner in the way that it did.

[00:13:55] Speaker 01:
Thank you, Judge Laurie.

[00:13:58] Speaker 00:
Good morning, Your Honors.

[00:14:03] Speaker 00:
It may please the court.

[00:14:05] Speaker 00:
The main issue in dispute on this appeal is whether substantial evidence supports the finding that there was a motivation to combine Hawthorne's and Kerry's teachings.

[00:14:15] Speaker 00:
And I'd like to review three main areas where that substantial evidence exists in the record.

[00:14:22] Speaker 00:
First is the Hawthorne reference itself, which

[00:14:27] Speaker 00:
identifies both the problem with Carey's system and the solution to that shortcoming.

[00:14:37] Speaker 00:
So first at appendix page 1342, paragraph 9.

[00:14:41] Speaker 04:
Hawthorne had predated Carey.

[00:14:44] Speaker 04:
So it seems the feel in the briefs is that Hawthorne was a

[00:14:50] Speaker 00:
Yes, the timing is a little quirky, but nevertheless, if we're looking at what would have been within the knowledge of a person of ordinary skill at the art at the critical time for this patent, that's what the person of ordinary skill in the art would have known.

[00:15:12] Speaker 00:
And so Cawthorn at page 1346, paragraph 59 says that the way that you deal with the shortcoming that was present in Kerry is to translate the VLAN IDs.

[00:15:25] Speaker 00:
So you get unique VLAN IDs upon output.

[00:15:31] Speaker 00:
And therefore, one does not have to maintain separate ports to do that.

[00:15:39] Speaker 00:
The second area in the record where substantial evidence exists is Dr. Bhattacharjee's testimony.

[00:15:47] Speaker 00:
And in his declaration that was submitted with the IPR petition, Dr. Bhattacharjee pointed to these areas of hot foreign that I just reviewed, appendix page 1172, paragraphs 120 to 121.

[00:16:06] Speaker 00:
And Dr. Bhattacharjee said that Kerry falls short of solving the problematic situation of overlapping VLAN IDs when the same output port must be used.

[00:16:22] Speaker 00:
And he further cited Hawthorne for identifying that problem and for providing the solution.

[00:16:29] Speaker 00:
Now, Huawei has maintained that its experts, Dr. Davis's testimony, was unrebutted by Dr. Bhattacharjee.

[00:16:39] Speaker 00:
But I think there's a difference between declining to provide a rebuttal report versus just not rebutting testimony.

[00:16:52] Speaker 00:
Dr. Bhattacharjee did submit an initial opening expert report and declaration.

[00:16:57] Speaker 00:
He was deposed.

[00:16:59] Speaker 00:
by Huawei's counsel.

[00:17:01] Speaker 00:
He provided testimony that countered what Huawei's experts said.

[00:17:08] Speaker 00:
And so there is rebuttal testimony in the record.

[00:17:12] Speaker 00:
A witness doesn't bear a burden to offer additional reports to the board if it's not necessary.

[00:17:23] Speaker 00:
Finally,

[00:17:25] Speaker 00:
We know that these, and as Judge Bryson has pointed out this morning, Cary and Hawthorne come from very, very similar fields.

[00:17:34] Speaker 00:
This is layer two network switching.

[00:17:36] Speaker 00:
They both practice the 802.1 standard.

[00:17:42] Speaker 00:
This is about as close as anyone could get.

[00:17:45] Speaker 00:
And so KSR says that when the problem is known and when the solution is known, that that is a

[00:17:54] Speaker 00:
a basis for finding obviousness, and that's exactly what we have here.

[00:18:02] Speaker 04:
So with that, if the Court has any... Could you talk about the, loosely framed, I guess, the plane construction issue that Mr. Courtney referred to?

[00:18:13] Speaker 00:
Yes, and I agree with Judge Bryce in what he said.

[00:18:18] Speaker 00:
You pointed out the IPR petition did cite Kerry for both teaching steps 1.3 and 1.4.

[00:18:27] Speaker 00:
And I would point the court to appendix pages 151 to 152, which is the IPR petition.

[00:18:43] Speaker 00:
And on page 151, this is the first half of the page, is the end of the discussion that maps carry on to step 1.3, and then continues on to 1.4.

[00:18:57] Speaker 00:
And in the top paragraph, we can see that Cary is being mapped onto step 1.3, and specifically to output side issues when the petition argues that Cary also describes that the output of forwarding database 910 may be an output port.

[00:19:16] Speaker 00:
Accordingly, the virtual switch identifier identifies a virtual switching instance as claimed.

[00:19:22] Speaker 00:
Then going down the page to the discussion of step 1.4, the petition further argues that first, Cary teaches that after a virtual switch identifier has been determined for a received frame, an output port is determined based on the virtual switch ID in combination with the MAC destination address.

[00:19:42] Speaker 00:
And then it goes on to quote a passage of Cary itself.

[00:19:46] Speaker 00:
You know there's no question that in this petition the carry is being relied on for teachings for both one steps 1.3 and 1.4 These are these are two two steps in this claim that are highly interrelated they're bridging the output side to the input side of a switch to the to the output side and

[00:20:11] Speaker 00:
This is what was argued even before the district court ruled on clean construction and added this additional bridging or binding language.

[00:20:23] Speaker 00:
So I think even putting aside that the court hadn't even ruled on that at this time, this petition still

[00:20:34] Speaker 00:
gives a full discussion of Kerry in the context that Huawei is saying should have been done.

[00:20:42] Speaker 00:
And the parties had an opportunity and did, in fact, litigate it before the board.

[00:20:52] Speaker 03:
Anything further, counsel?

[00:20:53] Speaker 00:
I have nothing further unless the court does.

[00:20:56] Speaker 03:
Thank you very much.

[00:20:58] Speaker 03:
Mr. Courtney has a minute and a half for rebuttal.

[00:21:05] Speaker 01:
I'd like to begin where my counterpart from the director's office just left off.

[00:21:10] Speaker 01:
And respectfully, I think that analysis is inverted.

[00:21:14] Speaker 01:
The pages that my counterpart directed the court to, the paragraph on paragraph 151, immediately above the bolded text, unambiguously says that the prior art, as taught by Kerry, discloses limitation 1.3.

[00:21:29] Speaker 01:
And Huawei's proposed construction of 1.3, a construction that the petitioner here knew about because it was the petitioner's own construction from district court, that's at appendix 3413, would have required that a VSI comprise input port, input VLAN, output port, output VLAN.

[00:21:49] Speaker 01:
Those four elements.

[00:21:51] Speaker 01:
Cary does not have those four elements.

[00:21:53] Speaker 01:
It simply doesn't.

[00:21:53] Speaker 01:
And I actually didn't hear my counterpart from the director's office say differently.

[00:21:57] Speaker 01:
This absolutely would have been a dispositive claim construction issue.

[00:22:01] Speaker 01:
The board should have construed the claim.

[00:22:02] Speaker 01:
It should not have attempted to duck this issue in the way it did and reversals the correct remedy.

[00:22:07] Speaker 01:
Also, the concept was ventured that Dr. Badrachaya maybe somehow pre-rebutted the opinions that were given by Dr. Davis to the board, either in his deposition testimony or in his opening declaration.

[00:22:23] Speaker 01:
We describe in our briefs, and I would challenge the court to find it, there is no such discussion of these issues in any of those submissions from Dr. Bhattacharya.

[00:22:31] Speaker 01:
He does not discuss why his view of combining Kerry and Hawthorne doesn't undermine Kerry's core principle of operation.

[00:22:41] Speaker 01:
And he doesn't discuss why a petitioner's proposal to combine in this way doesn't undermine Kerry's invocation against flooding packets across multiple networks.

[00:22:50] Speaker 01:
Again, these are things he might have addressed in a rebuttal declaration, but the election was made for him not to present that.

[00:22:57] Speaker 01:
I apologize for going into my red time.

[00:22:59] Speaker 03:
If there's no further questions.