[00:00:00] Speaker 00: Our next case for argument is 22-1160, Idea Hub versus Unified Patents. [00:00:06] Speaker 00: Mr. Norris, please proceed. [00:00:08] Speaker 01: Thank you, Your Honor. [00:00:13] Speaker 01: The board's decision below suffers from error in three respects. [00:00:21] Speaker 01: Firstly, the board's decision as to the original claims and its finding of unpackability relies on a new so-called third theory as to limitation 1.10 that was never presented in the petition. [00:00:35] Speaker 01: In addition, the evidence that the board relied on with respect to that third theory does not actually demonstrate the limitation that requires using mathematical expressions. [00:00:47] Speaker 01: And furthermore, the board's finding that the proposed amended claims suffer from a lack of written description as to the requirement that was already set forth in the original claims and limitation 1.1 [00:01:01] Speaker 01: is inconsistent with both the intrinsic evidence and the board's own basis for finding the claims unpatentable. [00:01:09] Speaker 01: So I'd like to address each of those in turn, unless the court would like me to take a different order. [00:01:16] Speaker 00: And I'd like you to start with written descriptions, since we expressly asked you all to focus on that. [00:01:21] Speaker 01: Yes, Your Honor. [00:01:23] Speaker 01: So as to the written description issue, the board's order pointed out that the disputed claim limitation 1.1, which requires determining and intermode for a neighboring block of a current block, was already recited in the original application as part of the original claims. [00:01:42] Speaker 01: And it was part of the preliminary amendment, which necessarily puts it as part of the- The board didn't rely on that, though, right? [00:01:51] Speaker 04: Just to be clear, did the board know that? [00:01:56] Speaker 01: Did the board know that? [00:01:58] Speaker 01: Well, it's part of the prosecution- Where did the board rely on it? [00:02:01] Speaker 00: You started by saying the board. [00:02:03] Speaker 00: So where did they do that? [00:02:04] Speaker 00: Show me in there for me. [00:02:05] Speaker 01: I'm sorry, Your Honor. [00:02:06] Speaker 01: I don't think I said that the board relied on the fact that that limitation was part of the original application, to be clear. [00:02:15] Speaker 01: I'm pointing out that this court's order. [00:02:17] Speaker 04: We are, oh, yeah. [00:02:19] Speaker 04: We're aware of our order. [00:02:20] Speaker 04: So yeah, you did say board. [00:02:22] Speaker 04: So I thought you were saying the board relied on that and nonetheless found there wasn't any description support. [00:02:28] Speaker 01: I'm sorry. [00:02:29] Speaker 04: But they weren't aware of it, correct? [00:02:32] Speaker 01: They did not expressly discuss it in the decision. [00:02:34] Speaker 02: Did you argue that to them? [00:02:35] Speaker 02: Or to us. [00:02:36] Speaker 01: Or to us. [00:02:41] Speaker 01: We did not argue it in our briefing. [00:02:44] Speaker 01: To the board or to us, right? [00:02:46] Speaker 01: I don't believe it was argued below on that issue. [00:02:49] Speaker 02: Wouldn't we normally find stuff like that forfeited? [00:02:55] Speaker 01: I think that's at the court's discretion, certainly. [00:02:58] Speaker 01: In this instance, it's part of the intrinsic evidence. [00:03:01] Speaker 01: It's part of the prosecution history. [00:03:03] Speaker 01: But I will say that. [00:03:04] Speaker 01: I don't think our argument, I think that's certainly a very strong reason why the written description support is there. [00:03:10] Speaker 01: And there's plenty of case law from this court that says so. [00:03:12] Speaker 01: But I don't think that that's the only basis by which that finding can be reached by this court. [00:03:20] Speaker 01: The written description abundantly describes that determining an interim mode for a neighboring block of a current block can be done by way of determining the directionality [00:03:34] Speaker 01: And in fact, I think what really stands out from the board's decision below is that the board found that determining the directionality of a neighboring block requires determining the intramode of a neighboring block. [00:03:49] Speaker 01: And that's at appendix 41 to 42. [00:03:52] Speaker 01: And so it's necessarily the case that since the written description teaches determining the directionality of a neighboring block, it also must teach [00:04:03] Speaker 01: that the inventors had possession of the concept of determining an intramode of a neighboring block, which is a step that comes before determining directionality. [00:04:13] Speaker 04: What is your best part of this 849 patent that you rely on for the teaching of determining the directionality of a neighboring block or determining an intramode of a neighboring block? [00:04:29] Speaker 04: What part do you think best supports your position? [00:04:32] Speaker 01: Yes, Your Honor. [00:04:33] Speaker 01: So I have specific sites for you. [00:04:36] Speaker 01: But I will say at the outset that it is undisputed, and it's found by the board itself, that the patent does teach determining the directionality of the neighboring block. [00:04:44] Speaker 01: And so for instance, some passages of the patent that teach that, column 6, lines 19 to 23, that's at appendix 69. [00:04:53] Speaker 01: At appendix 70 column 8 lines 36 to 39. [00:04:57] Speaker 00: This is all directionality, correct? [00:04:59] Speaker 00: You're just pointing us to directionality, correct? [00:05:02] Speaker 00: And you're saying then if the patent discloses directionality inherently a skilled artisan would know it also discloses intramode. [00:05:09] Speaker 01: That's right Your Honor. [00:05:11] Speaker 04: Is directionality a characteristic of intramode? [00:05:15] Speaker 04: of the different, there's eight or nine intramodes in the specification. [00:05:19] Speaker 04: Is directionality a characteristic of that, of the one through nine intramodes? [00:05:25] Speaker 01: So it's a little bit of a complicated answer. [00:05:30] Speaker 01: There are eight directional intramodes, and there's one DC. [00:05:35] Speaker 04: And no directionality. [00:05:36] Speaker 01: Correct. [00:05:37] Speaker 01: And then the intramodes, [00:05:42] Speaker 01: or the interim mode is used further on in the process to determine the directionality. [00:05:49] Speaker 01: And that is, you can look at the board's decision at appendix 41 to 42, where the board itself recognizes that. [00:05:57] Speaker 01: That's a part of the well-known process, for example, in H.264 of determining the directionality of a neighboring block, of a current block. [00:06:07] Speaker 01: you first determine the intramode. [00:06:09] Speaker 01: And one of the ways in which you get the intramode is based on the directional characteristic or the directional mode of that block. [00:06:19] Speaker 00: But where did the board make this finding that in order to determine directionality, you have to first determine intramode? [00:06:27] Speaker 01: So Your Honor, we discussed this in our blue brief [00:06:31] Speaker 01: Page 44, and again, we cite to appendix 41 to 42 in the board's decision. [00:06:37] Speaker 03: Board's decision, 41 to 42. [00:06:38] Speaker 03: OK. [00:06:38] Speaker 03: What exact language are you reading on that? [00:06:42] Speaker 01: Yes, Ron. [00:06:43] Speaker 01: It says, it's a long quote that the board has from Dr. Friedman's testimony. [00:06:53] Speaker 04: And he says, directionality is a concept that is- Just to make sure where we're at, are you on appendix 41? [00:07:01] Speaker 01: Yes, Your Honor. [00:07:02] Speaker 01: OK. [00:07:02] Speaker 04: We're in that block quote down at the bottom. [00:07:04] Speaker 01: Yes, Your Honor. [00:07:05] Speaker 04: OK. [00:07:06] Speaker 04: And this is where they just credited. [00:07:08] Speaker 04: They said it's particularly well-reasoned and persuasive. [00:07:11] Speaker 04: So which part of this block quote? [00:07:13] Speaker 04: About what line are you looking at? [00:07:15] Speaker 01: So for example, and it literally starts with the phrase, for example, it's about the fourth line of the block quote. [00:07:24] Speaker 01: The 240 application describes [00:07:27] Speaker 01: that directionality of neighboring blocks is estimated from the neighboring blocks that have already been reconstructed, while the intramode is selected for the current block for purposes of reconstructing that block. [00:07:39] Speaker 04: But that sentence you just said doesn't say that you determine the directionality based on the intramode. [00:07:46] Speaker 02: I mean, this expert opinion you're citing is from the other side, isn't it, explaining why intramode and directionality aren't the same thing? [00:07:55] Speaker 02: And the board credited that. [00:07:57] Speaker 02: Why isn't that substantial evidence that they're not the same thing? [00:08:01] Speaker 02: Therefore, maybe directionality is disclosed, but the full intramode is not, which is what the board's found. [00:08:08] Speaker 02: I'm just curious why you're citing the expert for your other side when he's saying they're not the same thing. [00:08:14] Speaker 01: Yes, Your Honor. [00:08:15] Speaker 01: And the reason I'm doing that is because the way that the expert for the other side makes that point is actually by saying, and to Judge Stoll's point, I'd like to continue to show further where it all comes together. [00:08:26] Speaker 01: But the expert for the other side is actually saying you perform directionality after you've gone to intramodal. [00:08:34] Speaker 01: And therefore, according to his testimony, you need to have gone to intramode to then get to the directionality. [00:08:41] Speaker 01: And for instance, he goes on to say at the bottom of appendix 41, phrased differently in the 240 application, directionality. [00:08:50] Speaker 01: is a concept that is evaluated after performance of intra-prediction, i.e., after reconstruction, whereas the intra-mode is a concept used during performance of intra-prediction. [00:09:01] Speaker 02: Why does that suggest that this patent has written description for intra-mode, or just acknowledges that a skilled artisan would know that intra-mode is in the prior art, but all this patent is disclosing is directionality? [00:09:15] Speaker 01: So written description, Your Honor, goes to the question of possession. [00:09:19] Speaker 01: of the concept at the time of the invention. [00:09:22] Speaker 01: And the claim, well, we have the evidence of the original claim, which the court itself has brought up. [00:09:30] Speaker 01: But aside from that, we know that the claim recites intermode as issued. [00:09:35] Speaker 01: And we know that the specification discusses all these teachings about determining directionality. [00:09:41] Speaker 01: And we know that the patent further teaches the well-known techniques of H.264, which, according to the testimony of a unified zone expert, required determining intramode before getting the directionality. [00:09:54] Speaker 01: And so all that is evidence that the inventors were in possession of the idea of determining the intramode. [00:10:02] Speaker 00: And I think but doesn't the experts say that the intramode number of the neighboring blocks is no longer pertinent after it's reconstructed in the same paragraph, which I think is at 4208 of the appendix paragraph 68. [00:10:14] Speaker 00: It's the same paragraph the quotes taken from 4208 of the appendix. [00:10:19] Speaker 00: Doesn't the expert just think about what I'm saying. [00:10:21] Speaker 00: Doesn't the unified expert also say that the number of [00:10:25] Speaker 00: that the intra mode of the number of neighboring blocks is no longer pertinent after it's reconstructed? [00:10:32] Speaker 01: Well, taking your guidance and just accepting for the moment on assumption that that's what the expert says, I don't think that would affect our argument or the issue, Your Honor, because the question is whether there's evidence to support [00:10:48] Speaker 01: the written description, the fact that the inventors were in possession of the idea of determining the intramode of the current block. [00:10:55] Speaker 01: And the evidence shows that that intramode is [00:11:01] Speaker 02: Determine before you get the direction out So let me just be clear because I it feels like you're arguing something different now than you argued to the board and the board-based its decision You're just arguing that because you know Intra mode was well known in the art and that you would have to do that before you get to Directionality that that the patent had a written description for that but if you read on a paragraph 42 [00:11:26] Speaker 02: the board's addressing, and this stuff is very difficult for me, but the board is discussing specifically where you pointed out intermode is disclosed, and it's talking about variable i, and they're saying that doesn't disclose intermode. [00:11:44] Speaker 02: And so that's a different argument that variable i discloses intermode than what you seem to suggest that [00:11:51] Speaker 02: somebody would have to know an intramotor to just talk about directionality. [00:11:55] Speaker 02: Is there substantial evidence for whether I disclose as intramotor or not, or just directionality? [00:12:01] Speaker 01: Well, yes, Your Honor. [00:12:02] Speaker 01: I think it's what we point out in our briefing is that the board necessarily found [00:12:10] Speaker 01: that determining the directionality does satisfy determining an intramode because that's the basis for its decision that limitation 1.1 is unpatentable in view of Culeva. [00:12:19] Speaker 01: That's the entire argument that Unified's petition relied on to invalidate that aspect of the original point. [00:12:26] Speaker 02: prior art reference where maybe intro mode and directionality were expressed in different ways. [00:12:31] Speaker 01: But that was not the argument that Unified presented. [00:12:34] Speaker 01: Unified said that they are the same. [00:12:36] Speaker 01: And so as to the issue of whether we brought up this argument about well-known in the art and intro mode proceeds directionality, we didn't really have an opportunity to do that because the board said in its preliminary guidance that it was satisfied as to written description. [00:12:51] Speaker 01: And so we didn't know that there's a further issue that we need to go beyond [00:12:55] Speaker 01: the arguments that we had already presented to further explain why it would be erroneous for the board to turn around and contradict its prior finding and its preliminary guidance on the written description. [00:13:05] Speaker 02: You didn't get any further reply? [00:13:07] Speaker 02: When they moved to say there's no written description, you didn't get a reply? [00:13:10] Speaker 02: They had? [00:13:10] Speaker 01: We did, Your Honor. [00:13:12] Speaker 01: But we were able to present an argument [00:13:15] Speaker 01: and we did present argument, and we presented evidence consistent with what we had said before. [00:13:20] Speaker 01: We did not know that the board had a doubt on this issue. [00:13:24] Speaker 01: In fact, they had told us otherwise in their preliminary guidance. [00:13:27] Speaker 01: So I think if we had known, in fact, we could have also amended the claim again [00:13:32] Speaker 01: to just simply recite it. [00:13:33] Speaker 00: So here's the problem. [00:13:34] Speaker 00: The problem is this inherency argument you're making is a fact question. [00:13:38] Speaker 00: Inherency is a question of fact. [00:13:39] Speaker 00: The board did not rule on it. [00:13:40] Speaker 00: But it seems like you're making now, though you didn't make it clearly in your brief, sort of an APA explanation for why you couldn't make it to the board. [00:13:49] Speaker 00: And that's relevant to forfeiture. [00:13:50] Speaker 00: We determine whether or not arguments are forfeited in part based on the equities involved. [00:13:56] Speaker 00: So it seems to me that the answer would be, [00:14:00] Speaker 00: If your argument has some potential merit, the answer would be we vacate and remain for the board to ascertain whether or not this inherits the argument is a valid one or not. [00:14:11] Speaker 00: But it's awkward. [00:14:13] Speaker 00: It feels awkward for me. [00:14:14] Speaker 00: I'm with Judge Hughes. [00:14:16] Speaker 00: Even though this is kind of in my background a little bit, I found this very hard to figure out on the technology. [00:14:24] Speaker 00: And so I'm not super comfortable [00:14:28] Speaker 00: trying to resolve this inherency question in the first instance that you're raising. [00:14:32] Speaker 00: So under those circumstances, would you be advocating for us to vacate and remand under those circumstances for the board to consider that argument? [00:14:40] Speaker 01: I think, Your Honor, at a minimum, we would ask for remand under those circumstances. [00:14:46] Speaker 01: But I would also point, again, to our primary argument, which is that the board's finding of lack of written description cannot be reconciled with its finding of unpatentability as to the same limitation. [00:14:57] Speaker 01: They rest on diametrically opposite positions. [00:15:00] Speaker 01: In the instance of unpatentability, the position is that directionality is the same as intermode. [00:15:07] Speaker 01: In the instance of written description, it's that they're not. [00:15:10] Speaker 00: I have one more question for you. [00:15:12] Speaker 00: I'm just trying to work this written description idea through in my head. [00:15:17] Speaker 00: And in particular, what effect, if any, the fact that this limitation was present in the originally, well, not the originally filed claims, but the preliminary amendment filed the same day. [00:15:28] Speaker 00: And the reason what I'm trying to think about is this is a continuation, not a CIP. [00:15:32] Speaker 00: So you're claiming priority to everything that was in the originally filed application that you're claiming priority for. [00:15:39] Speaker 00: And this language, which was added by preliminary amendment, was not present there. [00:15:43] Speaker 00: But these are these amended claims that you're substituting. [00:15:47] Speaker 00: I just don't know, am I supposed to be focused on what was part of the original filed application here? [00:15:56] Speaker 00: or what was part of the originally filed application that you claim priority to as a continuation? [00:16:02] Speaker 00: So this is going precisely to the argument we asked you to come to court to discuss, because it's a different argument than what's in your briefs. [00:16:10] Speaker 00: And it is, does that preliminary amendment obviate your need to establish anything for written description because it was there on the day of this application? [00:16:21] Speaker 00: Or in the context of these proceedings, [00:16:23] Speaker 00: do I consider the fact that you're not claiming priority to that date, but an earlier application through a continuation and not a CIP? [00:16:32] Speaker 00: And do you therefore have to be able to prove that you had written description support in that earlier application? [00:16:38] Speaker 00: I don't know the answer. [00:16:39] Speaker 00: I'm just genuinely asking you. [00:16:41] Speaker 01: Yes, Your Honor. [00:16:42] Speaker 01: I think the answer is that at a minimum, at least as of the priority date of the original application, [00:16:50] Speaker 01: There is written description support. [00:16:52] Speaker 04: Let me ask you something. [00:16:54] Speaker 04: What did the board find when it found there wasn't written description support? [00:16:58] Speaker 04: It found there wasn't written description support in the 849 patent, right? [00:17:02] Speaker 01: Correct. [00:17:03] Speaker 04: OK, so isn't that what we should be looking at, which is the continuation? [00:17:07] Speaker 04: Right? [00:17:07] Speaker 01: Yes, Your Honor. [00:17:09] Speaker 04: OK. [00:17:09] Speaker 04: I just wanted to make sure, because I thought you just answered the question that was asked to you, going back even further to the original pet. [00:17:15] Speaker 01: No, Your Honor. [00:17:16] Speaker 01: I'm speaking to the fact that 37 CFR 1.115A1, which the court cited, [00:17:23] Speaker 01: says that the preliminary amendment is part of the underlying original application and in this instance then that would give it's just to the 849 patent it doesn't go back to anything earlier than the 849 the application I think it's 240 if I remember the number correctly is the application that issued is the 849 patent right this particular item of evidence would support written description as of the date of the 849 patent [00:17:52] Speaker 01: That's right. [00:17:52] Speaker 01: We have other arguments and evidence that we believe demonstrate written description support as of the earliest priority. [00:18:02] Speaker 04: And the board didn't consider that? [00:18:04] Speaker 04: I don't think. [00:18:04] Speaker 04: Didn't the board in the board's finding that there was no written description just rested on the 849 patent, right? [00:18:12] Speaker 04: I believe that's- So there's no written description support in the 849 patent? [00:18:15] Speaker 01: I believe as I understand the board's decision, yes. [00:18:18] Speaker 00: get me ask a follow-up question when you introduce a substitute claim who has the burden on that. [00:18:24] Speaker 01: Yes your honor so it is the patent owners burden to demonstrate that there is written description support it is the petitioners. [00:18:32] Speaker 00: And I don't understand is it your burden to show there's written description support for your priority date or for the date that you file this application I don't I don't know and I'm just trying to figure this out I truly don't know the answer. [00:18:43] Speaker 01: And I don't think that that is necessarily entirely clear in the board's procedures but I think at a minimum [00:18:48] Speaker 01: The PAN owner should have to demonstrate written description for the priority date they are seeking. [00:18:55] Speaker 01: So if they say, I want priority, let's say, back to the original provisional, then they need to demonstrate written description for that. [00:19:02] Speaker 01: If they say they want a later priority date, then they can demonstrate written prescription. [00:19:06] Speaker 00: Well, and you say that in the patent, right? [00:19:08] Speaker 00: I mean, this is a continuation of an application that resulted in a patent. [00:19:15] Speaker 01: this if I write the seven oh five yes your honor so so if that's the case do you have to prove written description support back to that date I believe in in every instance the pan owner has a choice of when they want to claim the priority date to [00:19:36] Speaker 00: face of the patent I don't understand how quick are you saying that during these proceedings you could come in and sort of disavow that this is in a continuation or you could say some of my claims get priority and some don't that's called a CIP to me I don't know what [00:19:50] Speaker 00: A continuation means you say everything is entitled to the priority date of the earlier one, right? [00:19:55] Speaker 01: That's right, Your Honor, but the situation I'm pointing to is, for example, patents claim priority to a provisional. [00:20:01] Speaker 01: There's often a dispute as to whether the provisional provides that support. [00:20:04] Speaker 01: The patent owner could say, well, at least I get priority as of the date of the [00:20:08] Speaker 01: non-provisional application. [00:20:11] Speaker 04: Does the answer to this question come from section 316, 35 USC 316, which says an amendment under this subsection may not enlarge the scope of claims of the patent or introduce new matter? [00:20:22] Speaker 04: I mean, doesn't that have some meaning? [00:20:24] Speaker 04: You have to look at the patent and see whether there is written description support in the patent. [00:20:31] Speaker 01: Absolutely, you have to do that. [00:20:33] Speaker 01: And that is our burden to show. [00:20:34] Speaker 01: But the enlarge the scope, for example, refers to the situation where you remove an existing limitation in the original claim. [00:20:42] Speaker 04: It says, or introduce new matter. [00:20:44] Speaker 04: Or introduce new matter. [00:20:45] Speaker 04: And then in here, just to be clear as to what you asked for in your motion to amend, I read it at page A1458 as saying that you're relying on both the 240 application and the 928 application for written description support. [00:20:58] Speaker 01: And the reason is because we have to show priority all along the chain if we want to go. [00:21:02] Speaker 01: I'm sorry. [00:21:02] Speaker 01: If you want to go back. [00:21:03] Speaker 04: I get it. [00:21:04] Speaker 04: I get it. [00:21:05] Speaker 04: I mean, we're talking about here is whether you need to show written descriptions of going back to the parent patent or just to the patented issue in this IPR, right? [00:21:15] Speaker 04: Isn't that what we're looking at? [00:21:16] Speaker 01: Well, we think we think that [00:21:18] Speaker 01: The written description is there regardless based on the arguments we presented in our briefing. [00:21:23] Speaker 01: I understand that. [00:21:24] Speaker 02: Let's just assume we disagree with all of your arguments and we're only talking about this new basis for written description. [00:21:33] Speaker 02: This is why I'm struggling with this argument altogether because you didn't raise it to the board. [00:21:42] Speaker 02: You didn't even argue to us. [00:21:43] Speaker 02: So we have no idea what priority date you're seeking for it, what it applies to. [00:21:49] Speaker 02: Where these amendments go back to I mean, what's the answer to that? [00:21:52] Speaker 02: Because I know you want to you keep blood blurring the line and saying there's written description support nonetheless Just as soon for answering the rest of that question We disagree with you and if the boards the arguments you presented to the board are the only ones you have you lose Where do we go from there based upon this these? [00:22:11] Speaker 02: amended claims [00:22:13] Speaker 01: Well, as to the issue of what priority would that original claim language provide, it would go to the 849 patent date. [00:22:21] Speaker 01: If it was not there in the earlier application, then the written description would be established as of the date of the 849 patent. [00:22:32] Speaker 02: asked for that or tell the board that that's all you were trying to get an amended claim for? [00:22:38] Speaker 01: No, Your Honor, because we believed and the board found in its preliminary guidance that there was written description support. [00:22:43] Speaker 02: No, but again, you're going back to stuff I told you to disregard. [00:22:46] Speaker 02: We're only talking about this new stuff. [00:22:48] Speaker 02: So this argument that we're talking about now not only was forfeited by you clearly, [00:22:55] Speaker 02: I disagree. [00:22:57] Speaker 02: It was forfeited. [00:22:57] Speaker 02: You agreed. [00:22:58] Speaker 02: You did not raise this argument about these amendments to the board or to us in your blue brief. [00:23:04] Speaker 02: You have other arguments for written description. [00:23:06] Speaker 01: You didn't raise these. [00:23:09] Speaker 01: Your Honor, respectfully, I don't believe it's a forfeiture, because we presented in our briefing to this court the point that the board, in its preliminary guidance, said that there was written description support, so we didn't have an opportunity or reason to go to this issue. [00:23:24] Speaker 01: I think that's why it's missing from the record below, Your Honor. [00:23:27] Speaker 00: OK, so when you just, I'm at 37 CFR 42.121B, which is a motion to amend claims must include, and it says the support, and you have to set forth [00:23:43] Speaker 00: The support in an earlier filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. [00:23:52] Speaker 00: I'm not a prosecution person, so I don't know what this really looks like in practice, how it plays out. [00:23:57] Speaker 00: So what does that mean? [00:23:58] Speaker 00: How do you satisfy that? [00:24:01] Speaker 01: Yes, Your Honor. [00:24:01] Speaker 01: So I think the key language there is for which is sought along those lines, that when you seek a particular priority date, then you need to show all the necessary predicates for it. [00:24:13] Speaker 00: How do we know what priority date you're seeking in this case with regard to these amended claims? [00:24:17] Speaker 00: Did you explain it somewhere? [00:24:21] Speaker 01: I think that's a fair question, because normally in the IPR proceeding, when the petitioner brings the challenge, [00:24:30] Speaker 01: They state what priority date they're operating based on. [00:24:33] Speaker 01: And then if there's a dispute as to that, the panel contradicts that showing if there's no contradiction, then everyone operates based on the priority date that was assumed. [00:24:41] Speaker 01: When it comes to the amended claims, there's no particular requirement [00:24:46] Speaker 01: that's been set forth of specifying which priority date is being sought. [00:24:52] Speaker 01: I believe, though, that our goal was to establish priority going back to the earliest priority date that is claimed on the face of the paddle. [00:25:02] Speaker 00: If you're asserting that you're seeking the earliest date on the patent, then your preliminary amendment wouldn't get you there. [00:25:09] Speaker 00: Maybe your other arguments get you there, but your preliminary amendment does not. [00:25:13] Speaker 00: Do you agree with that? [00:25:13] Speaker 01: Our preliminary amendment, yes. [00:25:16] Speaker 01: To the extent that that claim language that is shown in the preliminary amendment is not shown earlier in the file history, then that claim language would only get priority as of the date of the application in which it appeared. [00:25:31] Speaker ?: OK. [00:25:31] Speaker 00: All right. [00:25:33] Speaker 00: Don't worry, we're going to restore your rebuttal. [00:25:35] Speaker 00: Miss Oliver, please proceed. [00:25:38] Speaker 00: Obviously, I hope that you're going to focus on just this written description issue. [00:25:42] Speaker 00: Yes. [00:25:45] Speaker 05: Good morning, and may it please the court. [00:25:46] Speaker 05: Angela Oliver on behalf of Unified Patents. [00:25:49] Speaker 05: I'll focus on the written description issue only, and I'll just briefly address some of the points raised at the outset of my friend's argument, and then address the court's order of Friday, February 3rd. [00:26:01] Speaker 05: So first, the argument that this was a well-known concept in the prior art and that is enough to satisfy written description. [00:26:08] Speaker 05: That is a completely new argument on appeal that the board did not consider. [00:26:12] Speaker 05: So this court should not consider it either. [00:26:15] Speaker 05: Additionally, the evidence that my opposing counsel. [00:26:18] Speaker 02: What about the alleged inconsistency between the August determination using these concepts and the amendment and the written description determination? [00:26:29] Speaker 05: Sure. [00:26:29] Speaker 05: So there is no inconsistency here in the board's analysis or in the positions that Unified argued before the board. [00:26:35] Speaker 05: So Unified did not argue that the prior art is the same as the specifications embodiment in the 240 application of the 849 patent. [00:26:45] Speaker 05: What Unified argued was that the prior art renders the claims obvious. [00:26:49] Speaker 05: So that was the comparison. [00:26:50] Speaker 05: That's how we were talking about directionality versus intramodes. [00:26:53] Speaker 05: That was prior art to the claims. [00:26:55] Speaker 05: What's described in the specification is something different. [00:26:59] Speaker 05: It never determines the directionality of a neighboring block. [00:27:03] Speaker 04: What you're saying, just to make sure I understand, and I think what you're saying is that in the preferred embodiment section of the patent, when it describes the preferred embodiment, it actually relies on the [00:27:14] Speaker 04: current blocks intermode to determine the intermode, or something like this, that is not looking at a neighboring block in the preferred environment, right? [00:27:23] Speaker 04: Yes, very close. [00:27:23] Speaker 04: But you do agree that there are some statements in that specification, for example, in column five and column six and column seven, before you get to the preferred environment specifics of the i equals par, that says that you're going to look at the directionality of a neighboring block [00:27:40] Speaker 04: in order to determine the intramode of the current block, right? [00:27:46] Speaker 04: It says that. [00:27:47] Speaker 05: So those statements, I think, are not part of the process that's claimed in the claims that we have here. [00:27:54] Speaker 05: So those are talking about an earlier part of the general process. [00:27:58] Speaker 05: And first of all, to be clear, that there is no evidence that addresses this because this was not expressed. [00:28:05] Speaker 04: You're saying that these were not the parts I'm talking about, columns 5, 6, 7, were not actually cited to the board for written description support. [00:28:14] Speaker 05: That's correct. [00:28:15] Speaker 05: And that's why there's no expert testimony explaining this. [00:28:17] Speaker 05: But I will say at appendix 4208, which is the paragraph that we were discussing just a moment ago, that does say, as Chief Judge Moore pointed out, that the interim mode of the neighboring block is no longer pertinent in that context. [00:28:28] Speaker 05: So the evidence that my cousin counsel is relying on from that paragraph is not helpful, because our expert explained that that piece is no longer pertinent. [00:28:38] Speaker 05: And so that's the most evidence we have on this, again, because it wasn't raised. [00:28:41] Speaker 05: Can you explain to me? [00:28:43] Speaker 04: Technically, why that's not relevant? [00:28:46] Speaker 04: Is it because it's not part of the encoding? [00:28:49] Speaker 04: It's not part of the decoding? [00:28:51] Speaker 04: What exactly is your reasoning for why? [00:28:53] Speaker 04: I mean, the claims directive did the decoding part. [00:28:56] Speaker 05: Sure. [00:28:56] Speaker 05: So I think, again, if we had more evidence, I could help the court further. [00:29:01] Speaker 05: But I think what I can say is when a first- You can't explain why it is that the expert said it's not relevant? [00:29:07] Speaker 05: Oh, I can explain that. [00:29:08] Speaker 05: I'm sorry. [00:29:09] Speaker 05: Let me pull up appendix 4208. [00:29:13] Speaker 05: Okay, so in this paragraph, this is paragraph 68 of Dr. Friedman's declaration. [00:29:19] Speaker 05: I'm sorry, 4208. [00:29:25] Speaker 05: Okay, so what he's explaining here is in the context of the 240 application of the 849 patent. [00:29:31] Speaker 05: The process that is used does not determine the directionality of a neighboring block because [00:29:39] Speaker 05: It's relying on pixel pairs of the neighboring blocks instead of the entire block. [00:29:45] Speaker 05: And so specifically, when he gets to this point and he says, this is the second sentence of paragraph 68, the 2-4 application describes directionality as estimated from the neighboring blocks that have already been reconstructed while the intramode is selected for the current block. [00:30:00] Speaker 05: Then after that, he says, this is likely because the neighboring blocks have already been reconstructed and thus the inner mode that was used. [00:30:06] Speaker 05: This is the preferred embodiment right here. [00:30:08] Speaker 05: Yes. [00:30:09] Speaker 05: OK. [00:30:09] Speaker 05: Yes. [00:30:09] Speaker 05: So he's explaining this. [00:30:10] Speaker 05: And I think it's helpful if the court just quickly glance at figure seven of the patent. [00:30:16] Speaker 04: But this doesn't necessarily explain why the statements and paragraphs in columns five and six are irrelevant to the preferred embodiment. [00:30:29] Speaker 04: No, he wasn't addressing those statements in this paragraph. [00:30:33] Speaker 04: That's what I thought you were going to talk about. [00:30:35] Speaker 04: I think I understand this, and I understand figure 7a as well. [00:30:38] Speaker 05: The overall point is there's no inconsistency, because what the patent is describing in the embodiment is not determining the directionality of an entire neighboring block. [00:30:47] Speaker 05: It's using different pixel pairs of multiple blocks next to it. [00:30:50] Speaker 05: You can see that in figure 7 of the patent. [00:30:52] Speaker 05: And that's not what the prior art does. [00:30:54] Speaker 05: The prior art actually does teach [00:30:56] Speaker 05: determining the directionality of the entire block. [00:30:59] Speaker 05: So there are different concepts. [00:31:00] Speaker 05: It's not a directly opposite position. [00:31:02] Speaker 05: So that's why there's no inconsistency. [00:31:05] Speaker 05: OK. [00:31:05] Speaker 04: Again, though, the reason even that you said there's no inconsistency, even though there are other parts of the patent specification and expresses that you're going to look at the directionality of a neighboring block in order to determine the intermode of the current block. [00:31:23] Speaker 04: So we should just ignore those statements and focus instead just on the preferred embodiment? [00:31:30] Speaker 05: I think the claims are directed to the preferred embodiment. [00:31:33] Speaker 05: And I mean, I'm happy to look at the specific columns that were cited by my opposing counsel today. [00:31:39] Speaker 05: But again, this is a new argument on appeal, so I can't offer the court more evidence to interpret these. [00:31:45] Speaker 05: But I can suggest that. [00:31:47] Speaker 00: When you say it's a new argument on appeal, it's just the intrinsic record. [00:31:50] Speaker 00: It's not even that long of a patent. [00:31:54] Speaker 00: The question is, is there written description support for claims? [00:31:58] Speaker 00: Yes, he had an obligation to point the board to things. [00:32:02] Speaker 00: But this whole patent, including all 16 claims, is only 14 columns. [00:32:07] Speaker 00: Preferred embodiment is not far away from these other statements that Judge Stoll is referring to. [00:32:15] Speaker 00: I don't know. [00:32:15] Speaker 00: It's hard for me to imagine that when it comes to written description support in a scenario like this, we can't look at the other statements in the patent, especially when you have such a short, small patent. [00:32:26] Speaker 04: I could identify one of them for you. [00:32:27] Speaker 04: Like, for example, column five, lines 48 through 50 says, the present invention selects a mode suitable for the current block from among a variety of intro modes using the directionality of neighboring blocks of the current block. [00:32:43] Speaker 05: And respectfully, that does not describe determining the intramode of a neighboring block. [00:32:50] Speaker 05: That simply says from among a plurality of intramodes using directionality of neighboring blocks. [00:32:57] Speaker 04: I know, but the primer teaches looking at the directionality of a neighboring block, and the argument [00:33:03] Speaker 04: from your adversaries that therefore there's an inconsistency between the prior art validity determination and the written description determination. [00:33:12] Speaker 04: So how do you respond to that? [00:33:13] Speaker 05: I think if we could look briefly at Figure 7 of the patent, I think this explains clearly that the prior art and the patent are doing two very different things every time the patent refers to this directionality of the neighboring block. [00:33:25] Speaker 05: So Figure 7, this is Appendix Page 61. [00:33:28] Speaker 05: There's a variety of Figure 7 for the different types of directionalities that are considered. [00:33:34] Speaker 05: So in figure 7a, for example, in appendix 61, you can see the current block, the 16 blank squares. [00:33:41] Speaker 05: There are four neighboring blocks next to this. [00:33:44] Speaker 05: And there are multiple pairs of pixels that are identified with these little diamond shapes that indicate a direction. [00:33:51] Speaker 05: And those are the pixel pairs that are being used to analyze directionality. [00:33:55] Speaker 00: OK, I have a really dumb question. [00:33:56] Speaker 00: In 7a, which ones are the neighboring blocks? [00:33:58] Speaker 05: Tell me some numbers. [00:34:00] Speaker 05: You said 4, but I see a lot, so I must not be getting this. [00:34:02] Speaker 05: I'm sorry. [00:34:03] Speaker 05: Each block is a 4 by 4 square. [00:34:05] Speaker 00: Right. [00:34:06] Speaker 05: So starting at the top left, I would say 0, 0 over 2, 0, 3 would be the first 4. [00:34:13] Speaker 00: But those aren't a neighboring block to the current block. [00:34:15] Speaker 00: I'm sorry. [00:34:16] Speaker 00: I'm just trying to think. [00:34:18] Speaker 00: I was misunderstanding you. [00:34:19] Speaker 00: OK. [00:34:19] Speaker 00: So what are the neighboring blocks? [00:34:21] Speaker 00: You said there are four neighboring blocks. [00:34:23] Speaker 00: What does that mean? [00:34:24] Speaker 00: Yes. [00:34:24] Speaker 00: So each block to the current block? [00:34:26] Speaker 00: I thought you meant neighboring to the current block. [00:34:28] Speaker 00: Yes, and they are. [00:34:29] Speaker 00: So 0, 0, 0, 0 is not a neighboring block to the current block, right? [00:34:33] Speaker 05: So 0, 0, 0, 0 all the way down to 0, 3, 0, 3. [00:34:38] Speaker 05: If you take that diagonal and look at those 16 squares right there, that's one block. [00:34:44] Speaker 02: So the little squares aren't blocks. [00:34:47] Speaker 02: Got it. [00:34:47] Speaker 02: Correct. [00:34:48] Speaker 02: The whole big thing is a block? [00:34:49] Speaker 02: The four by four. [00:34:50] Speaker 02: Is it the block? [00:34:52] Speaker 02: Yes. [00:34:52] Speaker 02: So zero zero in your view is neighboring to the thing that says current block, because it's part of the four by four. [00:34:59] Speaker 02: Correct. [00:34:59] Speaker 04: But your view, as I understand it, is that because the preferred embodiment is showing figure A, actually if it's looking at each of those portions of neighboring blocks that have little like diamonds in them, [00:35:15] Speaker 04: that that shows that it's not actually looking at any neighboring block to determine the directionality or mode of the current block. [00:35:23] Speaker 04: Correct. [00:35:23] Speaker 04: And so therefore, when I look at the language in column five, when it says neighboring block, I'm supposed to think that it means something else or that it doesn't actually teach what it reportedly says on its face because the preferred environment shows something slightly different. [00:35:36] Speaker 05: Well, I think in the context of the patent, this is the only thing that's described. [00:35:39] Speaker 04: I understand it's the only preferred embodiment. [00:35:42] Speaker 04: You know of many cases where we say, there's no written description support, because while you have more broadly described your invention in other parts of the patent, because your preferred embodiment is only directed to looking at not just the neighboring block, but four neighboring blocks, therefore you don't have written description support. [00:36:03] Speaker 05: I think there are various claim construction cases that do follow that line of reasoning when a party argues that something that's far beyond what's described in the specification should be included in the scope of the claims. [00:36:12] Speaker 05: And I don't have a case at hand. [00:36:14] Speaker 00: When you say far beyond, what do you mean, far beyond? [00:36:17] Speaker 00: Like, this intermode directionality are completely intertwined. [00:36:20] Speaker 00: I mean, this feels a little bit like a gotcha to me in terms of the written description argument. [00:36:24] Speaker 00: So I'm kind of not getting your far beyond comment. [00:36:27] Speaker 00: How is this so far beyond anything disclosed in this case? [00:36:30] Speaker 05: Sure, and I'm sorry. [00:36:31] Speaker 05: I meant far beyond in the context of other claim construction cases. [00:36:34] Speaker 05: But here, again, directionality and intramode are certainly intertwined concepts. [00:36:39] Speaker 05: But once a neighboring block has been decoded, there is no intramode for it anymore. [00:36:45] Speaker 05: It only has directionality. [00:36:46] Speaker 05: And what this patent describes as what it's doing is not looking at even the directionality of the entire block. [00:36:52] Speaker 05: So let me compare it just for a moment to the prior art. [00:36:55] Speaker 05: So what the Caleo reference does [00:36:57] Speaker 05: is it takes the entire block, the 16 reference, and it conducts the various gradient measurements to analyze what the directionality of the entire block would be. [00:37:07] Speaker 05: It's an actual determination. [00:37:09] Speaker 05: Here what we have in this patent [00:37:11] Speaker 05: It's just an estimation of what each of the various neighboring blocks would be based on certain pixel pairs. [00:37:17] Speaker 05: Pixel pairs from multiple neighboring blocks. [00:37:20] Speaker 05: And then based on that estimation, it calculates a cost of what it will anticipate to use the different intramodes for the current block. [00:37:28] Speaker 05: And then it cycles through those, every intramode possible, picks the lowest one. [00:37:32] Speaker 00: You are so deep in the weeds. [00:37:33] Speaker 00: It may be that my other two colleagues are just so much more smart and densely educated on this than I am, but I don't have a gosh darn clue what you're talking about. [00:37:43] Speaker 02: Here's what I hear you saying. [00:37:46] Speaker 02: No, no, but I don't understand it. [00:37:49] Speaker 02: So let me see if this is close to what you're saying. [00:37:52] Speaker 02: But this is my, I mean, at least you have an engineering degree. [00:37:56] Speaker 02: I'm an English major. [00:37:57] Speaker 02: Are you saying that the prior art and this other stuff, it actually uses some kind of comparison between the current, the block as a whole, the four or five, [00:38:11] Speaker 02: for a block as a whole and a neighboring block as a whole. [00:38:15] Speaker 02: But what this patent is doing is not doing that at all. [00:38:18] Speaker 02: It's looking at the current block and only comparing it to select pairs in the neighboring block. [00:38:24] Speaker 02: So that's not interdirectionality, because that requires the whole block versus the whole block. [00:38:31] Speaker 02: That's correct. [00:38:34] Speaker 02: OK. [00:38:35] Speaker 02: I have a feeling your colleague or your friend on the other side is going to say something different. [00:38:40] Speaker 02: That's what I understand you saying. [00:38:41] Speaker 02: And so is that the distinction between this pattern is not teaching what the prior art does, and the prior art does show this block by block comparison? [00:38:59] Speaker 05: Yes. [00:39:00] Speaker 02: Even though this pattern can be read as understanding that block by block comparison in the prior art. [00:39:06] Speaker 02: And that's why there's no written description support? [00:39:09] Speaker 00: I'm not ready to concede that second point that you could read this patent otherwise, but yes, you're so the problem is I mean you said yes to just you and You know while I'm super excited because I actually understood a little bit of the tech when he articulated it He was talking about what the patent teaches [00:39:26] Speaker 00: If the prior art is replete with this block-to-block comparison, then couldn't one assume this inventor possessed that block-to-block comparison in light of the broader statements? [00:39:38] Speaker 00: Because this is possession. [00:39:39] Speaker 00: This isn't teaching. [00:39:39] Speaker 00: This is not enablement. [00:39:41] Speaker 00: This is just possession. [00:39:42] Speaker 00: And if the prior art, as you can see, had the block-to-block throughout it, and here it's [00:39:49] Speaker 00: two things to the block, not block to block, but then there are these broader statements at other places which imply block to block. [00:39:56] Speaker 00: I mean, I don't know. [00:39:57] Speaker 00: This is possession, not enablement. [00:39:59] Speaker 00: So isn't this kind of good enough? [00:40:02] Speaker 05: No, respectfully, that's not good enough. [00:40:03] Speaker 05: One, that, again, is a new argument on appeal that they've raised. [00:40:07] Speaker 05: But also, the case we cited Rivera versus ITC in our briefing addresses that. [00:40:12] Speaker 05: It says that even when concepts are well known in the art, you can use those only to explain something that's in the specification. [00:40:18] Speaker 05: You can't use them to fill gaps in the specification. [00:40:20] Speaker 04: But this is arguably in the specification. [00:40:22] Speaker 04: I understand what you're saying about the preferred embodiment. [00:40:26] Speaker 04: The preferred embodiment is described with this i, and as shown in 3 or 7a, it's not comparing using a whole block to determine the directionality and intermode of the current block. [00:40:39] Speaker 04: But there's language repeated multiple times in column 5, 6, and 7 [00:40:45] Speaker 04: that talks about looking at a neighboring block to determine the directionality of a neighboring block to determine the current block. [00:40:53] Speaker 04: And you're saying that we should ignore that for reasons. [00:40:56] Speaker 04: I guess you've got two reasons. [00:40:57] Speaker 04: One is you think it's forfeited. [00:40:59] Speaker 04: And the second one is that you think you've told me it's irrelevant, but I really still don't understand why it's not relevant. [00:41:06] Speaker 04: And I would add to what Judge Morris said is that this is also not anticipation. [00:41:10] Speaker 04: Possession is not the same thing as anticipation. [00:41:13] Speaker 04: It's whether a person who are new to going [00:41:15] Speaker 04: reading the specification, but understanding in order to possess this invention as claimed. [00:41:21] Speaker 05: And I think respectfully, given that there is no embodiments or no other explanation of what they meant by these isolated statements in columns 5, 6, and 7, then a person would not understand that they possessed this separate idea of determining [00:41:34] Speaker 05: the interim mode of neighboring blocks. [00:41:36] Speaker 02: Let me ask you that slightly different way. [00:41:38] Speaker 02: Let's assume these statements are more explicit and let's assume that they actually properly raise this argument to the board and rely on these other passages. [00:41:49] Speaker 02: What if those passages [00:41:50] Speaker 02: said everybody would know how to do this block to block comparison. [00:41:54] Speaker 02: And then when they describe what we've invented and said, but we've invented this something else, but everybody knows from the prior art that you can also do this other thing. [00:42:05] Speaker 02: Doesn't that show written description support for the fact that they have possession of this concept? [00:42:11] Speaker 05: I think not necessarily. [00:42:12] Speaker 05: It would be a closer case, to be sure. [00:42:14] Speaker 05: But in the Rivera case, for example, that we cited, it was understood and there was evidence in the record that it was well known in the yard that these K cups that were at issue in that case had integrated filters. [00:42:24] Speaker 05: But the patent issue did not describe those. [00:42:27] Speaker 05: And so when the patent tried to claim. [00:42:28] Speaker 02: But let's just assume that there were general statements about integrated filters in the prior art in that case. [00:42:37] Speaker 02: I mean, I assume what the problem there was, was there was no discussion whatsoever about what was in the prior art. [00:42:43] Speaker 02: But let's assume in that case, or like in this case, let's assume these statements suggest that this is in the prior art, and we know about this in the prior art. [00:42:53] Speaker 02: even if it's not, as you say, the preferred embodiment. [00:42:56] Speaker 02: Isn't that enough for written description? [00:42:57] Speaker 02: I understand this would have been a whole lot clearer if they would have argued this all to the board, and if they also would have argued the amendment issue to the board, to the board could have addressed it. [00:43:07] Speaker 02: But let's just assume the general statements that we have here were raised, and they do show that this inventor understood this concept. [00:43:14] Speaker 02: Why isn't that enough? [00:43:16] Speaker 05: I think, depending on how it's written, that may be enough in certain contexts. [00:43:20] Speaker 05: This had said something much closer to that, where there was a discussion of it being known in the art, and then an express statement that this could be done differently. [00:43:28] Speaker 05: That would also potentially suggest a different embodiment being present in the specification. [00:43:32] Speaker 05: So I think it'd be a closer case, and it may be sufficient in some circumstances. [00:43:36] Speaker 05: I think overall, at the end of the day, this is still a substantial evidence question. [00:43:40] Speaker 05: And the difficulties, and this is difficult technology, and the board considered the evidence it had before it, these passages were not raised. [00:43:46] Speaker 05: This was not an argument that was well. [00:43:48] Speaker 00: Let's go to that forfeiture question. [00:43:50] Speaker 00: So in this case, nobody ever, I mean, this claim limitation was part of pretty much every claim. [00:43:58] Speaker 00: And it was raised as early as the preliminary amendment. [00:44:02] Speaker 00: And nothing throughout the original prosecution raised a written descriptions concern with regard to this particular language. [00:44:08] Speaker 00: And nothing in this IPR. [00:44:11] Speaker 00: And well, you can't in IPR. [00:44:12] Speaker 00: But there's been no written description challenge of that language until we get to the substitute claim, right? [00:44:20] Speaker 00: So at that point in time, what were the opportunities they had to make this argument where they didn't make it that you think we ought to conclude forfeiture? [00:44:29] Speaker 00: Because didn't the board give the impression that they didn't have a problem with this earlier and in the process? [00:44:36] Speaker 05: That was only in preliminary guidance, which the board repeatedly says is only preliminary and is not binding. [00:44:42] Speaker 00: Yeah, but that preliminary guidance puts people on notice about what the board has concerns with. [00:44:46] Speaker 00: And given the limited page numbers you all have in these kinds of proceedings, it makes sense for the parties to focus their efforts on not the things the board said aren't relevant to it, but to focus on the things the board says are at issue. [00:45:00] Speaker 00: So what was their opportunity? [00:45:02] Speaker 00: Because if you want, forfeiture is an equitable concept. [00:45:05] Speaker 00: And we can apply it or not apply it. [00:45:07] Speaker 00: So why do you think we should apply it here? [00:45:09] Speaker 00: Where did they have lots of chances or clear notice and didn't do it? [00:45:14] Speaker 05: Sure. [00:45:14] Speaker 05: Well, they had at least two opportunities. [00:45:16] Speaker 05: They first could have raised it in their original motion to amend. [00:45:19] Speaker 05: And it was not raised fair. [00:45:21] Speaker 05: And that was prior to. [00:45:23] Speaker 05: Why would they have raised it in their original motion to amend? [00:45:26] Speaker 05: because they're providing written description support for the claims they're posing. [00:45:32] Speaker 05: That's part of their burden, right? [00:45:33] Speaker 04: Correct. [00:45:33] Speaker 04: And they did mention written description support in the motion to amend. [00:45:37] Speaker 04: Yes. [00:45:37] Speaker 04: You're just saying they cited the preferred part of it. [00:45:40] Speaker 02: Yes. [00:45:41] Speaker 02: And they didn't cite these passages that we're talking about. [00:45:43] Speaker 05: Correct. [00:45:44] Speaker 05: Correct. [00:45:44] Speaker 05: And they could have also raised it again in the revised motion to amend in direct response to Unified's 112 arguments. [00:45:50] Speaker 02: And I think the case of the- And they could have at least raised it in their briefs to us. [00:45:54] Speaker 02: that as well. [00:45:55] Speaker 05: Yes, thank you. [00:45:57] Speaker 00: I'm sorry, did they not raise the column five stuff at all that raised us? [00:46:02] Speaker 05: In here, yes. [00:46:03] Speaker 05: But as we suggested, that's the first time on appeal. [00:46:06] Speaker 05: Yeah, OK. [00:46:07] Speaker 05: Just want to make sure. [00:46:08] Speaker 05: OK. [00:46:09] Speaker 05: And to be clear, the cases that they cite about the board changing positions are not dispositive here. [00:46:15] Speaker 05: In that case, in the institution, for example, in SAS Institute, [00:46:18] Speaker 05: The institution decision issued a claim construction order, and then the parties never disputed it again. [00:46:24] Speaker 05: OK, we're good. [00:46:25] Speaker 05: Thanks. [00:46:25] Speaker 05: Does the court want to address the 115 issue? [00:46:29] Speaker 05: What, huh? [00:46:29] Speaker 05: Rule 115. [00:46:30] Speaker 05: I don't know what she's talking about. [00:46:32] Speaker 05: Regarding the preliminary amendments. [00:46:33] Speaker 05: Oh, OK. [00:46:35] Speaker ?: Do you want her to, you don't need her to address that? [00:46:40] Speaker ?: OK. [00:46:40] Speaker ?: Thank you. [00:46:41] Speaker 01: Your Honors, I'll be very brief and specific. [00:46:44] Speaker 01: If I could direct you to Appendix 100, [00:46:47] Speaker 01: I'd like to address this issue of the conflict in the board's decision, because my colleague on the other side tried to articulate a path by which there's a difference between the petition's theory of unpatentability and what's disclosed in the 849 patent. [00:47:08] Speaker 01: And in fact, the petition [00:47:10] Speaker 01: itself says exactly otherwise. [00:47:13] Speaker 01: The petition says, likewise, the 849 patent describes that the intra-prediction, according to an example embodiment of the present invention, selects the intramode of the current block on the basis of the directionality of the neighboring blocks. [00:47:25] Speaker 01: That's their building that have already been reconstructed. [00:47:28] Speaker 01: And they cite to Column 6, 19 to 23. [00:47:31] Speaker 01: Thus, in the context of the 849 patent, [00:47:34] Speaker 01: opposite of would have understood that determining an intramode for a neighboring block is satisfied by determining the directionality of the neighboring block. [00:47:42] Speaker 01: And they cite to their own expert. [00:47:43] Speaker 01: Then they say, Calevo describes the same, not different, the same determination of the directionality, i.e. [00:47:52] Speaker 01: meaning the same as intramode of neighboring blocks. [00:47:56] Speaker 01: So there is no daylight between these two. [00:47:58] Speaker 01: The board's decision on this issue is inconsistent. [00:48:02] Speaker 01: And if we take a look at column 6 of the patent, in addition to the passage in column 5 that Judge Stoll cited, it says in detail, column 6, excuse me, at line 11, for instance, [00:48:17] Speaker 01: In detail, an example embodiment of the present invention employs a method of selecting the intramode of the current block on the basis of the directionality of at least one of the neighboring blocks that have already been reconstructed. [00:48:29] Speaker 01: And in column two, and elsewhere in the pattern repeatedly, for example, at line [00:48:36] Speaker 01: It refers to the methods of H.264, which was a very well-known video encoding technique. [00:48:44] Speaker 01: It's the standard, essentially, for HD video, H.264. [00:48:48] Speaker 01: And the consequence of the board's finding of lack of written description support is that this embodiment of the patent, which is in the very title of the patent, gets excluded from the scope of claim one. [00:49:02] Speaker 01: The claim one apparently doesn't cover [00:49:06] Speaker 01: the embodiment of the title of the patent, the embodiment that's all throughout the patent, and the embodiment that's- Did you cite the title to the board? [00:49:14] Speaker 04: I mean, I'm just wondering. [00:49:16] Speaker 04: When I looked at your papers, I just see you relying on the book burning body. [00:49:22] Speaker 04: I think you're making these arguments about the title in column five, six, and seven for the first time on appeal. [00:49:29] Speaker 04: Am I right? [00:49:30] Speaker 01: your honor, I was not counsel below. [00:49:34] Speaker 01: But I think that the issue was that, as I read the record, that there was so much clarity from the board in that preliminary guidance that the written description was there, that there wasn't a feeling of a need to go further to point to every possible place where it could additionally be found. [00:49:51] Speaker 00: Thank you, your honor. [00:49:52] Speaker 00: OK. [00:49:52] Speaker 00: Thank both counsel. [00:49:53] Speaker 00: The case is taken under submission.