[00:00:00] Speaker 01: All right, let's move to our first case. [00:00:04] Speaker 01: Inray Universal Electronics, Inc. [00:00:07] Speaker 01: and Mr. Guilford. [00:00:09] Speaker 01: You have reserved three minutes in the time for rebuttal, is that correct? [00:00:14] Speaker 01: Yes. [00:00:15] Speaker 01: Okay, you may begin. [00:00:17] Speaker 03: May it please the court. [00:00:19] Speaker 03: My name is Ben Guilford and I represent Appellant Universal Electronics, Inc. [00:00:23] Speaker 03: This is a consolidated appeal involving two related patent applications. [00:00:27] Speaker 03: The 037 application and the 095 application. [00:00:31] Speaker 03: The 037 and 095 applications are directed to a remote control with an input device that combines button clicking functionality with touchpad functionality. [00:00:42] Speaker 03: The remote includes internal logic that distinguishes a click input from a touch input and selects an appropriate command code for a memory depending on the type of input that is detected. [00:00:53] Speaker 03: The remote's internal logic can also select an appropriate command for memory depending on the location of the user's touch. [00:00:59] Speaker 03: Conventional remote controls, like those found in the Dresde and Meyer references that issue in this appeal, were comprised of a bunch of command buttons on the face of the remote. [00:01:11] Speaker 03: The inventions of the 037 and 095 applications advantageously allow most of these command buttons to be replaced with the claimed input device. [00:01:20] Speaker 03: Inventions of the 037 and 095 applications also deliver a degree of accuracy and customizability that conventional remote controls could not provide. [00:01:31] Speaker 03: So I'd like to begin now with the board's decision in the 037 application. [00:01:36] Speaker 03: I want to begin in appendix page 4, and shown on appendix page 4 is claim 1 of the 037 application. [00:01:45] Speaker 03: So as shown here, [00:01:47] Speaker 03: First claim of the 037 application is directed to a controlling device with an input device comprised of a movable touch sensitive surface positioned above a plurality of switches. [00:01:58] Speaker 00: Mr. Guilford? [00:02:00] Speaker 00: I have a question for you. [00:02:01] Speaker 00: I understand the combination that we're looking at is I think Fisher and you've addressed it, right? [00:02:06] Speaker 00: Yes. [00:02:06] Speaker 00: So one of the things that you assert in your brief is that Fisher already discloses controlling different devices. [00:02:17] Speaker 00: And so therefore, it wouldn't have been obvious to modify Fisher in view of Dresde to be able to control, to [00:02:25] Speaker 00: have a universal remote that can control different devices. [00:02:30] Speaker 00: Now the board didn't agree with you on that. [00:02:32] Speaker 00: The board at JA16 specifically says that they don't think that Fisher was originally directed to controlling more than one device at a time. [00:02:47] Speaker 00: or that it didn't have the universal, you know, having the knowledge of different protocols in order to be able to control different devices. [00:02:55] Speaker 00: So do you think that's wrong? [00:02:57] Speaker 00: Are you challenging that fact finding? [00:03:00] Speaker 00: Because to me, [00:03:01] Speaker 00: The rationale, the motivation to combine seems to be you modify Fisher in view of Dresde for the same reason that Dresde teaches the teachings that it has in that paragraph 34 of Dresde, I think. [00:03:12] Speaker 00: It's talking about the ability to have a universal remote. [00:03:16] Speaker 00: So I'm just curious, one of the big differences, you seem to assume that Fisher already has that capability, and I don't see it in Fisher, nor do I see with the board holding your favor on that. [00:03:28] Speaker 03: I understand your point, Your Honor. [00:03:30] Speaker 03: I think it's more of an issue of why do you need to make Fisher into a universal remote? [00:03:36] Speaker 03: I mean, Dresty and Meyer are both universal remotes. [00:03:39] Speaker 03: That's what they do. [00:03:40] Speaker 03: They command multiple appliances. [00:03:43] Speaker 03: Fisher is a very different device. [00:03:45] Speaker 03: I mean, Fisher is a device kind of like, you know, those old iPods where you have, like, the circular touch wheel and you can play music. [00:03:55] Speaker 03: And, you know, according to Fisher, you can [00:03:58] Speaker 03: you know, apply that into different things. [00:03:59] Speaker 03: It could be kind of like a wireless mouse that has kind of touch capabilities as well as clicking, and Fisher's device works perfectly good for those purposes. [00:04:10] Speaker 03: And the question I think that we're raising is why do you need to take Fisher's device and all of a sudden make it into a universal remote? [00:04:17] Speaker 03: There's no explanation of why that would need to be done. [00:04:21] Speaker 03: So I think that's our position, at least for the moment. [00:04:25] Speaker 00: rationale given the substantial evidence standard. [00:04:29] Speaker 00: Why isn't the rationale, the reason why you do that is so you can control different devices that accept different protocols. [00:04:37] Speaker 00: The very reason one would have a universal remote. [00:04:40] Speaker 00: Why isn't that enough of a motivation to combine given this substantial evidence standard? [00:04:45] Speaker 03: I think our position is that there needs to be more explanation. [00:04:49] Speaker 03: Essentially, the rationale here is, in essence, tied in with the combination. [00:04:58] Speaker 03: You're saying you would make Fisher a universal remote because you would want to make it a universal remote. [00:05:06] Speaker 00: No, because the trustee teaches we have a universal remote. [00:05:09] Speaker 00: These are the advantages of a universal remote. [00:05:12] Speaker 00: You need to have this code set in order to be able to have a universal remote. [00:05:18] Speaker 00: Why isn't that enough? [00:05:20] Speaker 03: I think because the innate [00:05:22] Speaker 03: Innately, what a universal remote does is command a bunch of different appliances. [00:05:28] Speaker 03: And there needs to be an explanation of why you would want to make Fisher's device into a universal remote that commands. [00:05:35] Speaker 00: So you'd have to say something like, no reasonable fact finder could find that that's the substantial equipment standard. [00:05:42] Speaker 00: No reasonable fact finder could find that that motivation was sufficient. [00:05:48] Speaker 03: I think the answer to that question is that the decision and the examiner's rejection are lacking in an explanation of why it would make sense to make Fisher into a universal remote. [00:06:00] Speaker 03: That's our position. [00:06:02] Speaker 00: But do you agree that Fisher doesn't have universal remote capability? [00:06:08] Speaker 00: You agree with that, right? [00:06:09] Speaker 03: Yes. [00:06:12] Speaker 03: So kind of getting back to the board's decision and what the claims require. [00:06:18] Speaker 03: So again, looking at appendix page four, the main part of the claim here is parsed into four different limitations. [00:06:28] Speaker 03: Kind of running through these four limitations as the board parsed them. [00:06:32] Speaker 03: First, you have a controlling device that must be adapted to respond to an activation of one of the plurality switches by. [00:06:38] Speaker 03: Second, determining a touch location [00:06:41] Speaker 03: of a touch on the touch-sensitive surface. [00:06:44] Speaker 03: Third, the controlling device must use the determined touch location to retrieve a command data from a library of command data stored in memory. [00:06:53] Speaker 03: And fourth, the controlling device must use the retrieved command data from memory to transmit a command signal to an appliance. [00:07:00] Speaker 03: Now in appendix page four, the board found that the examiner's primary reference, Fisher, teaches limitations one and two. [00:07:08] Speaker 03: But there is no dispute that Fisher fails to teach or suggest limitations three and four. [00:07:14] Speaker 03: If we turn now to appendix page five, the board states that the examiner finds that Dresde's use of a command code library to control the operation of home appliances teaches or suggests recitations three and four. [00:07:28] Speaker 03: Now, the board's wrong right off the bat here. [00:07:32] Speaker 03: If we turn to appendix page 534, [00:07:37] Speaker 03: which is the page of the examiner's final office actions that the board cites to, the examiner says that Dresti teaches using the determined key activation to retrieve from a library of command data stored in a memory of the controlling device the command data for use in controlling a functional operation of an appliance. [00:07:57] Speaker 03: As the examiner concedes, Dresti teaches a conventional remote control with a plurality of command keys. [00:08:03] Speaker 03: When one of the keys is pressed, Dressy retrieves a corresponding command code for memory. [00:08:08] Speaker 03: So for example, if you press the volume up button, you get the volume up code for memory. [00:08:16] Speaker 03: Now as I mentioned earlier, limitations three and four of the 037 application expressly require using a determined touch location to retrieve command data from memory. [00:08:27] Speaker 03: However, Dressy indisputably does not have means for determining a touch location and does not use a determined touch location. [00:08:37] Speaker 00: And the combination is to take Fisher's switches, if you will, and touch control, and use it with the code set taught by Dresde. [00:08:47] Speaker 00: So don't you have to look at the two of them combined to see whether, first of all, there has to be a motivation to combine them. [00:08:54] Speaker 00: And second of all, once they're combined, then you look at whether combined is proposed by the patent examiner and affirmed by the board, whether that would satisfy the limitations of the claims. [00:09:04] Speaker 00: So shouldn't you be talking about the combination? [00:09:07] Speaker 03: You're absolutely right, Your Honor. [00:09:08] Speaker 03: So I think we need to take a step back to just clarify what Fisher does not have, and then we can look at the combination to see if that combination gets us to where we need to be. [00:09:19] Speaker 03: So if we look at appendix page 533, and this is the examiner speaking here. [00:09:26] Speaker 03: and I'm looking at the bottom of 533, it says, Fisher does not explicitly teach that B, using the determined touch location to retrieve a library of command data stored in a memory of the controlling device, the command data for use in controlling a functional operation of an appliance, and C, using the retrieved command data to transmit a command signal to the appliance via use of a transmission protocol recognizable by the appliance. [00:09:51] Speaker 03: So those two limitations are what the board labels as limitations three and four. [00:09:56] Speaker 03: So as we see here, no dispute, Fisher doesn't teach or suggest three and four. [00:10:01] Speaker 03: And as I said a few seconds ago, there's also no dispute that Dresde fails to teach limitations three and four because there's nothing in Dresde about using a determined touch location to retrieve stuff from. [00:10:14] Speaker 00: What does Dresde use to retrieve stuff from the keyboard? [00:10:18] Speaker 03: Just a key button press. [00:10:20] Speaker 00: So you're saying that [00:10:21] Speaker 00: a person of ordinary skill in the art wouldn't understand from the combination proposed by Dick Sandler that instead of having a key button, as in trustee, there would be a touch switch, a sensitive touch switch as taught by Fisher. [00:10:42] Speaker 00: I think that's the proposed combination. [00:10:45] Speaker 03: I think it would be helpful to look at exactly what the examiner proposed as the proposed combination and then we can kind of, you know, I can kind of go and answer your question from there. [00:10:55] Speaker 00: So do you think what I've described is incorrect? [00:11:00] Speaker 03: I think I want to get the language the examiner used correct. [00:11:04] Speaker 03: If we read on 534, [00:11:07] Speaker 03: It's kind of in the middle of the page. [00:11:08] Speaker 03: The examiner says, it would have been obvious to one of ordinary skill in the art to modify the input device of Fisher to include the method of dressy of providing a memory including a command code library and generating a command code associated with a command key. [00:11:23] Speaker 00: Where are you? [00:11:25] Speaker 00: Do you see 534? [00:11:26] Speaker 03: Oh, I see where it says regarding claim five paragraph right before there So the time the invention was made it would have been obvious, okay So that that sense is that chunk of the sentence generating a command code associated with a command key that that is the key right there because What the combination is not saying is that you're taking? [00:11:46] Speaker 03: some sort of logic where you're using a touch location and putting that logic into Fisher. [00:11:54] Speaker 03: It's saying you're using logic that's totally based off of a command key selection and putting it into Fisher. [00:12:00] Speaker 03: And the key of the claim language is that there's internal logic in the remote that uses [00:12:09] Speaker 03: a touch location on the keypad, and that's what you're using to get from memory the correct command code. [00:12:17] Speaker 03: And if you don't have that logic in Fisher, which we know it doesn't because the examiner said so, if it doesn't have it in Fisher, you're not adding it to Fisher from Dresde, then you just can't have the claims. [00:12:30] Speaker 03: So that's our position. [00:12:33] Speaker 03: And obviously if the proposed combination doesn't result in the claims, [00:12:38] Speaker 00: So you're saying because the examiner said Fisher doesn't use the determined touch location to retrieve from a command library, but Fisher does use the determined touch location to do something, right? [00:12:56] Speaker 03: Yes, that is accurate. [00:12:57] Speaker 03: It sends the touch location to a processor and the processor uses that to send an instruction to a [00:13:04] Speaker 00: video drivers and and and so the difference then in the secondary reference teachers the second part which is retrieving in response to something which is really a signal coming from touch button like on my keyboard here my computer it said something is determined it retrieves from the library of command data stored in the memory of the controlling device a command data for use in controlling the functional operation of the points apart [00:13:32] Speaker 00: that Dresty provides. [00:13:34] Speaker 00: So Fisher provides the touch screen, which I also have here on my computer. [00:13:39] Speaker 00: And then let's see, Dresty provides what the microprocessor does when it receives that information, that input, if you will. [00:13:47] Speaker 00: It's two different kinds of input in these different devices, right? [00:13:50] Speaker 00: So you're saying that combination doesn't, those two references together don't teach that limitation? [00:13:55] Speaker 00: correct your honor and I'm just tell me understand what is it that's missing from the proposed combination again it is taking fishers use of touch screen sensitivity buttons and address these use of you know what you're going to do with that input that you receive from the user and how you're going to control the you know the memory with the controlling device command data for controlling the functional operation of the appliance [00:14:25] Speaker 03: Your honor, respectfully, the key to this limitation three, as the board called it, is the using the determined touch location to retrieve from a library of command data. [00:14:37] Speaker 03: specific command data so it's that using the touch location to retrieve from memory that is that is the key to the claim language that's the internal logic of the remote that I've been referring to that's missing from the combination does the primary reference that is Fisher use the determined touch location to do something [00:15:01] Speaker 03: Again, it uses the touch location in the sense that it takes a location and sends it to a processor. [00:15:11] Speaker 03: But the key there is there's nothing being used in Fisher to select something from memory, specifically even a command data. [00:15:24] Speaker 03: And again, looking at Dresde, the thing that's missing is using the determined touch location to retrieve something from memory, because again, Dresde is just one of those conventional remotes. [00:15:36] Speaker 03: It only has buttons. [00:15:37] Speaker 03: You press a button. [00:15:38] Speaker 00: So you press the button, and that's what causes... Right, but you're not using that touch location. [00:15:41] Speaker 00: But you are, yeah, it's not a touch screen button. [00:15:44] Speaker 00: It's a different kind of button, like on the keyboard, that you touch, and then that retrieves the command code from memory. [00:15:52] Speaker 03: Yes, that sounds correct. [00:15:54] Speaker 03: But again, not using a determined touch location to retrieve her memory. [00:15:59] Speaker 03: There's none of this important logic in Dresde that uses specifically a determined touch location to retrieve the memory. [00:16:08] Speaker 03: Same thing in Fisher. [00:16:09] Speaker 03: And the way the examiner's proposed combining the two, still missing. [00:16:13] Speaker 01: OK, you're out of your time. [00:16:16] Speaker 01: We'll wish for you three minutes. [00:16:19] Speaker 03: Thank you, Your Honor. [00:16:21] Speaker 02: May it please the court? [00:16:23] Speaker 02: I see this as a relatively straightforward, obviousness case, similar to how Judge Stoll was explaining it. [00:16:32] Speaker 02: Fisher discloses an input device that accepts both touch input and button presses, and Fisher says that [00:16:41] Speaker 02: This input device can be used in any sort of consumer electronic device, so it names remote controls, music players, personal and digital assistants, phones, et cetera. [00:16:54] Speaker 02: The only thing it's missing is it doesn't say it can be used in a universal remote control. [00:16:59] Speaker 02: But the secondary references in each of these cases clearly disclose a universal remote control, including the [00:17:10] Speaker 02: command code library. [00:17:12] Speaker 02: And as both the examiner and the board agreed, a skilled artisan would combine the two to take advantage of the benefit of Fisher's input device with the benefit of our universal remote control to be able to control multiple devices of different makes and models. [00:17:33] Speaker 02: You know, the arguments that [00:17:36] Speaker 02: Appellant is attempting to make, but the limitation seems to focus very much on the references by themselves. [00:17:45] Speaker 02: It's not looking at what the references combined teach. [00:17:48] Speaker 02: And the board said that, for example, on Appendix Page 6, [00:17:54] Speaker 02: you know, the board made clear that the examiner relies on the combination of Fisher and Gresti, not Fisher alone, to teach or suggest the recitations of limitation three and four in claim one of the 037 application. [00:18:08] Speaker 02: So I think if you look at the two, you're just taking Fisher says, you can use this great input device in all these different type of products. [00:18:18] Speaker 02: And one other product is the universal remote control, which is disclosed in the secondary references and [00:18:25] Speaker 02: I don't think it's so complicated to say that a skilled artisan would have combined the two. [00:18:29] Speaker 01: What's your response to the argument from your colleague on the other side that the board erred in that it failed to articulate a rational reason to combine this and this? [00:18:43] Speaker 02: I don't think that's the case. [00:18:47] Speaker 02: I mean if you look on appendix page 7 where the board discusses this and the board concludes that that one of skill would have been motivated to combine the references to to use the command code library of dress t for commanding the operation of home appliances of different makes models and types and it seems like [00:19:10] Speaker 02: You know, you're taking the benefit of Fisher's input device with the benefit of Dresde's universal remote capabilities and combining them. [00:19:21] Speaker 02: And I don't know what more needs to be shown for a motivation and combines. [00:19:26] Speaker 02: This is, again, I think a straightforward issue. [00:19:31] Speaker 02: And I think the board's finding is supported by substantial evidence. [00:19:41] Speaker 02: Nothing for me. [00:19:43] Speaker 01: Okay. [00:19:43] Speaker 02: Thank you. [00:19:47] Speaker 01: Thank you. [00:19:48] Speaker 03: Thank you Thank you your honor I'll be brief here just want to address two things my colleague said First my colleague said that the only thing Fischer's missing is that it doesn't say can be used the fissures input device Doesn't say can be used in a universal remote [00:20:08] Speaker 03: As we saw in the examiner's final office action, that's not necessarily true. [00:20:14] Speaker 03: There's two major, major limitations of the claim that are indisputably missing from Fisher. [00:20:22] Speaker 03: And also, this whole idea of a universal remote being missing, that's not a claimed feature as well. [00:20:29] Speaker 03: The other thing I want to focus on is that my colleagues said that we're we're not focusing on how the two references are being combined Well as your honors know we looked at exactly how the examiner proposed combining the two references and as I explained the the combination of the two still doesn't get you to what the claims require so I think we've [00:20:51] Speaker 03: shown that it's the combination of the two references that doesn't meet the claim limitation. [00:20:57] Speaker 03: We are not improperly focusing on the two references individually. [00:21:00] Speaker 01: We're looking for a robust explanation as to why the combination would have been made. [00:21:06] Speaker 01: Is that right? [00:21:09] Speaker 03: I think there needs, there is something lacking from the examiners and the [00:21:16] Speaker 03: boards description of why you would make Fisher into universal remote, but [00:21:24] Speaker 03: Even putting aside the motivation to combine issue, we think this lack of a teaching and suggesting of the internal logic that's claimed from the combination, that is a unique separate issue that is potentially more important than the motivation to combine issue, which you don't even get to if the proposed combination is lacking something from the claims. [00:21:50] Speaker 03: I have nothing further, Your Honors. [00:21:52] Speaker 03: All right. [00:21:52] Speaker 03: Thank you. [00:21:53] Speaker 03: Thank you.