[00:00:00] Speaker 01:
Our next case for argument is 22-1613, LBTIP versus Apple.

[00:00:08] Speaker 01:
Mr. Seale, please proceed.

[00:00:10] Speaker 02:
Morning honors may please the court I'm gonna be presenting the argument with regard to the one one three two five six and six one eight patents all of which involved the Sakamoto reference my colleague mr. Gregory here is going to present the argument with regard to the Seven seven four and six one nine patents we appreciate your accommodation and letting mr. Gregory present some argument today

[00:00:32] Speaker 02:
The board's conclusion with regard to the 113256 and 618 patents was erroneous because there is no evidence to support the conclusion that the Sackamota reference discloses a transition from a stop position mode to normal sensitivity position mode in response to a signal level.

[00:00:52] Speaker 02:
Now the board relied on three evidentiary underpinnings to make that determination.

[00:00:56] Speaker 02:
The first is paragraph 27 of Sakamoto, which discloses a transition, but Mr. Andrews, an expert for PRAPL, acknowledged that paragraph 27 of Sakamoto does not disclose a transition from stop position mode into another mode.

[00:01:12] Speaker 02:
So that takes care of paragraph 27.

[00:01:14] Speaker 02:
The other part of Sakamoto in which the board relied is the timed cycle disclosed in paragraphs 37 and 38 of Sakamoto.

[00:01:22] Speaker 02:
You can look at paragraph 37 and 38 of Sacramento for yourself and see that it does not disclose a transition out of stop position mode into normal sensitivity position mode as the board determined.

[00:01:32] Speaker 02:
What it does instead is it discloses a transition between normal sensitivity position mode

[00:01:37] Speaker 02:
in high sensitivity position mode, or if the signal is too weak to be useful, it goes into stop position mode, at which point the power to the GPS receiver is cut off completely.

[00:01:47] Speaker 02:
So, there's nothing in paragraph 37 or 38 to support the board's decision, either.

[00:01:53] Speaker 01:
The remaining piece of- Well, you said there's nothing in those paragraphs to support the decision.

[00:01:56] Speaker 01:
I mean, look, I'm not a skilled artisan.

[00:01:59] Speaker 01:
while maybe I look at that and I say, oh my gosh, it doesn't say stop position in there.

[00:02:04] Speaker 01:
Those words don't appear.

[00:02:06] Speaker 01:
But Mr. Andrews was an expert, and he offered testimony that a skilled artisan would understand those paragraphs as disclosing exactly that.

[00:02:16] Speaker 01:
That's what the board relied on.

[00:02:18] Speaker 01:
I think I have to give that substantial evidence deference, don't I?

[00:02:22] Speaker 02:
You do, Your Honor, but you have to look at the basis for Mr. Andrew's opinion.

[00:02:26] Speaker 02:
He acknowledged that paragraphs 37 and 38 did not expressly disclose the transition, but his reasoning for the disclosure was that one of ordinary skill in the art would understand the transition would necessarily have to be present

[00:02:38] Speaker 02:
Otherwise, the Sakamoto device would enter into stop position mode and never come out rendering it useless.

[00:02:44] Speaker 02:
And that's incorrect.

[00:02:45] Speaker 02:
Sakamoto discloses a manual reactivation of the GPS receiver.

[00:02:49] Speaker 01:
Well, when you say it's incorrect, counsel, that's not actually helpful because, again, I'm not a skilled artisan, and I have to give substantial evidence deference.

[00:02:57] Speaker 01:
And with all due respect, I have no idea whether you're a skilled artisan, but you're certainly not qualified as one in this case.

[00:03:03] Speaker 01:
So you telling me that his view of what this discloses

[00:03:07] Speaker 01:
incorrect is not going to be persuasive.

[00:03:11] Speaker 01:
Point me to the evidence that shows why Mr. Andrew's view is not supported by substantial law.

[00:03:17] Speaker 01:
It's not just incorrect, because I don't view this de novo, right?

[00:03:20] Speaker 01:
So your opinion doesn't matter, and it doesn't matter that it's air quotes incorrect, because I don't view it de novo.

[00:03:27] Speaker 01:
So you have to show me where there is really conclusive evidence that demonstrates that it's wrong.

[00:03:33] Speaker 02:
Understood, Your Honor.

[00:03:33] Speaker 02:
And by incorrect, what I mean is you can look at the Sakamoto reference and see that it provides a manual reactivation of the GPS receiver.

[00:03:40] Speaker 00:
Counsel, so you said necessarily have to be present.

[00:03:44] Speaker 00:
So you're talking about inherency, right?

[00:03:48] Speaker 02:
I don't think Mr. Andrews made the inherency argument.

[00:03:50] Speaker 02:
It was his impression that one of ordinary skill in the art would read it that way.

[00:03:55] Speaker 02:
And I think it is a sort of quasi-inherency argument.

[00:03:58] Speaker 00:
What else can you rely on to show that a reference teaches something?

[00:04:02] Speaker 00:
that it doesn't express or disclose other than inherently.

[00:04:06] Speaker 00:
And inherently is necessarily have to be present.

[00:04:09] Speaker 00:
Those were the words that you just used.

[00:04:12] Speaker 00:
So what's the evidence for why it necessarily doesn't have to be present?

[00:04:17] Speaker 00:
And can you point to the appendix and call in the line numbers to show us that?

[00:04:22] Speaker 02:
Yes, Your Honor.

[00:04:27] Speaker 02:
So first, Sakamoto discloses two different methods of coming out of stop position mode.

[00:04:34] Speaker 02:
One of which is the time cycle, which is expressly disclosed in paragraphs 37 and 38 of Sakamoto.

[00:04:42] Speaker 02:
And the other is manual reactivation.

[00:04:44] Speaker 02:
And I believe that's in paragraph 28 of Sakamoto, but I won't confirm that for you.

[00:04:49] Speaker 02:
So the point that Mr. Andrews is making is that

[00:04:53] Speaker 00:
If you're able to look at Sakamoto and point us to exactly where you're relying on, that would be very helpful.

[00:05:01] Speaker 01:
Give us the JA number.

[00:05:03] Speaker 01:
It's 1324, the small appendix.

[00:05:06] Speaker 01:
The smaller one.

[00:05:08] Speaker 02:
You don't want the big one.

[00:05:11] Speaker 02:
I should have this.

[00:05:12] Speaker 02:
It's in the briefs.

[00:05:13] Speaker 02:
The Sakamoto discloses manual activation in response to a user's input.

[00:05:29] Speaker 02:
Sure.

[00:05:31] Speaker 02:
I've used more of my time there.

[00:05:32] Speaker 02:
I'd like to reserve Mr. Gregory.

[00:05:33] Speaker 02:
So if I can answer this question in the rebuttal period, would that be OK?

[00:05:35] Speaker 02:
I can look it up then and get to you.

[00:05:38] Speaker 03:
Sure.

[00:05:48] Speaker 03:
May it please the court, Sean Gregory.

[00:05:51] Speaker 03:
I want to discuss first the 714 patent.

[00:05:56] Speaker 03:
The board clearly aired

[00:05:58] Speaker 03:
in construing multitude to include two or to be the same as two or more.

[00:06:04] Speaker 03:
If we look at the board's analysis, they first identified figure four as a non-limiting embodiment of the invention.

[00:06:19] Speaker 03:
And then, as it relates to intrinsic evidence, simply said they did not agree that thresholds plural means threshold plural.

[00:06:30] Speaker 01:
And that is about- Let's start.

[00:06:31] Speaker 01:
Figure four is five to seven, right?

[00:06:33] Speaker 03:
Figure four has five to seven ticks on it, yes.

[00:06:37] Speaker 01:
Okay, so figure four is five to seven.

[00:06:39] Speaker 01:
you use the word multitude.

[00:06:41] Speaker 01:
So we know that multitude has at least a floor at five to seven.

[00:06:45] Speaker 01:
Whether it goes down to two is something we have to figure out, but we know it has to include at least five because figure four itself includes five to seven, right?

[00:06:55] Speaker 01:
So multitude, we know whatever multitude means, and Lord knows I've spent a lot of time thinking about this in the last couple days, we know it at least goes as few as five.

[00:07:05] Speaker 01:
So that's what the patent supports.

[00:07:08] Speaker 01:
Then the question is, does multitude go as low as two?

[00:07:15] Speaker 01:
One of the things that disappointed me tremendously is the board relied on dictionary definitions in this case expressly.

[00:07:23] Speaker 01:
And I have to give substantial evidence definite to that.

[00:07:26] Speaker 01:
Do you know that you all didn't discuss them or include them in the appendix at all?

[00:07:30] Speaker 01:
Did you know you didn't give us any of those dictionary definitions?

[00:07:33] Speaker 03:
No, Your Honor.

[00:07:34] Speaker 03:
I didn't realize that.

[00:07:35] Speaker 01:
Wouldn't that be helpful if the board is saying that two definitions, i.e.

[00:07:39] Speaker 01:
multitude and plurality, are almost identical in my cousin Vinnie's sort of way?

[00:07:45] Speaker 01:
If the board is reaching that conclusion, wouldn't it be useful for you to show me those two definitions and show to me how they're not, in fact, identical?

[00:07:54] Speaker 03:
Yes, Your Honor.

[00:07:55] Speaker 01:
Yeah, but you didn't.

[00:07:56] Speaker 01:
Lucky for you, I did that anyway.

[00:07:58] Speaker 01:
I got the definitions.

[00:07:59] Speaker 01:
They look nothing alike.

[00:08:01] Speaker 01:
So I'm not sure how plurality and multitude, how I could ever sustain a fact finding that these definitions, the actual ones presented to the board, showed that plurality and multitude were the same.

[00:08:14] Speaker 01:
So, so far, despite me giving you a hard time about not including the definitions, these are friendly questions.

[00:08:18] Speaker 01:
You get that, right?

[00:08:19] Speaker 01:
Yes, Your Honor.

[00:08:19] Speaker 01:
Thank you.

[00:08:20] Speaker 01:
Okay.

[00:08:20] Speaker 01:
So, but here's my problem.

[00:08:21] Speaker 01:
My problem is, I don't see how multitude is three.

[00:08:24] Speaker 01:
So while I agree with you that your patent disposes a multitude which has to go as low as potentially five probably doesn't include two.

[00:08:32] Speaker 01:
But why in the world do you say it includes three.

[00:08:35] Speaker 03:
Your Honor Patent Owner's position is not that multitude necessarily includes three.

[00:08:40] Speaker 03:
Instead, it is that multitude excludes two.

[00:08:44] Speaker 03:
It is not the same as plurality.

[00:08:46] Speaker 03:
It is not the same as two or more.

[00:08:48] Speaker 03:
But it is some number larger than two.

[00:08:52] Speaker 01:
Yes?

[00:08:53] Speaker 01:
And it includes five to seven, because that's what the patent discloses as its main embodiment in figure four.

[00:08:59] Speaker 01:
Yes, Your Honor.

[00:09:01] Speaker 01:
But I'm trying to wrap my brain about the idea of claim instruction.

[00:09:05] Speaker 01:
And it's a question of law.

[00:09:06] Speaker 01:
And it's my job to say what the claims mean.

[00:09:08] Speaker 01:
And all these definitions talk about multitude meaning many.

[00:09:11] Speaker 01:
It's an ambiguous term, except that your patent has actually given an example of what a multitude is, which is at least five.

[00:09:17] Speaker 03:
Yes, Your Honor.

[00:09:18] Speaker 01:
So I guess would you be happy if I said a multitude wasn't two?

[00:09:25] Speaker 01:
it's got to have at least five but what if I just left the question open of whether it's three or four because I don't know whether it's three or four.

[00:09:33] Speaker 03:
Absolutely your honor that is exactly what we're asking for.

[00:09:37] Speaker 03:
We're comfortable with that.

[00:09:39] Speaker 03:
The point is that multitude necessarily does not include two.

[00:09:44] Speaker 03:
It is some number larger than that.

[00:09:47] Speaker 00:
Do we have to understand the word multitude in the context of this?

[00:09:51] Speaker 00:
I agree.

[00:09:52] Speaker 00:
I don't find the dictionary definitions all that helpful because it just says a large number.

[00:09:55] Speaker 00:
But I think you always got to consider the context.

[00:09:58] Speaker 00:
For example, if I had eight piercings in my ear and had eight earrings, someone could say I have a multitude of piercings, right?

[00:10:06] Speaker 00:
Yes, Your Honor.

[00:10:07] Speaker 00:
Clearly.

[00:10:07] Speaker 00:
But in the context of this, don't we have to look at multitude in that context?

[00:10:12] Speaker 03:
Absolutely.

[00:10:13] Speaker 03:
And what's significant, Your Honor, in that context, what this invention is directed to

[00:10:18] Speaker 03:
is being able to, on a sliding scale, alter the amount of battery level versus the frequency of updates over time.

[00:10:28] Speaker 03:
I understand that.

[00:10:29] Speaker 00:
Do you agree that the figure four has five to seven values shown, as the board found?

[00:10:35] Speaker 00:
At least, yes, Your Honor.

[00:10:39] Speaker 03:
So what's significant is the prior art only discloses two thresholds.

[00:10:47] Speaker 03:
And the reason multitude and the construction of multitude is significant is if it includes two, the prior art reads on it.

[00:10:56] Speaker 01:
Here's one problem I have, though.

[00:10:58] Speaker 01:
One problem I have is if I remember right, and you guys didn't brief this, Apple argued below in their reply that Sakamoto may be read as disclosing as many as four.

[00:11:12] Speaker 01:
And the war didn't address that.

[00:11:14] Speaker 01:
So you and I just talked about me saying multitude doesn't include two.

[00:11:19] Speaker 01:
But I told you, I don't know what to do with three or four.

[00:11:22] Speaker 01:
They argued Sakamoto discloses four.

[00:11:25] Speaker 01:
So then is the answer here, I vacate in Remia for the board to consider that argument that Apple made?

[00:11:32] Speaker 03:
Your Honor, Apple's argument was not that it included four.

[00:11:35] Speaker 03:
It was that it included two of one type and two of another type, which adds up to four.

[00:11:41] Speaker 03:
There are two thresholds of one type.

[00:11:44] Speaker 03:
two thresholds of another time.

[00:11:46] Speaker 01:
See what you're saying now was not argued or briefed to us and I'm very tentative about wanting to me to try to figure out what their argument below was.

[00:11:58] Speaker 01:
So is your argument though that if I say multitude isn't two, I vacate a remand to the board, is there still something left to be decided

[00:12:07] Speaker 03:
based on something the board maybe didn't decide or do you think it's no your honor because the board explicitly identified the two thresholds as being the the indication in the prior art that met the limitation so in the in their decision they rested their

[00:12:27] Speaker 00:
obviousness conclusion but did they even address the alternative argument made by Apple that there was four thresholds disclosed in Sakamoto.

[00:12:35] Speaker 00:
It doesn't look like they did but if you think they did please tell us where that was addressed.

[00:12:39] Speaker 03:
Your honor I don't know right now I'd have to use rebuttal time to look at that.

[00:12:44] Speaker 01:
Okay well you're out of all your time so sit down.

[00:12:50] Speaker 01:
I will give you some rebuttal time but let's hear from opposing counsel.

[00:13:10] Speaker 01:
Mr. Sykes, do you mind starting with the multitude since that's where we left off?

[00:13:13] Speaker 04:
Of course, Your Honor.

[00:13:15] Speaker 04:
And may it please the Court.

[00:13:16] Speaker 04:
I am Adam Sykes on behalf of the Appley Apple.

[00:13:19] Speaker 04:
So let's start with multitude.

[00:13:21] Speaker 04:
I heard some questions about the disclosure in the intrinsic record for where it goes from from Figure 4.

[00:13:26] Speaker 04:
We have Figure 4 that tells us that there's five to seven.

[00:13:30] Speaker 04:
The board and the parties Apple included focused on Column 11.

[00:13:36] Speaker 04:
Column 11 was the focus of a significant amount of discussion between the parties, the focus of our briefing here.

[00:13:42] Speaker 04:
And that's where I want to take you.

[00:13:43] Speaker 04:
So column 11, that's an appendix 368 of the 774 patent.

[00:13:48] Speaker 04:
And I'm specifically referring to approximately line 62.

[00:13:53] Speaker 01:
So the problem I have with the argument you're about to make, and I'm just going to fast forward you, because I know what the argument is.

[00:14:00] Speaker 01:
I've read the brief.

[00:14:01] Speaker 01:
The argument you're about to make is it gives two alternatives that you would exercise as a trade-off between them, right?

[00:14:09] Speaker 04:
Correct.

[00:14:10] Speaker 01:
And so that's why you want it to be two.

[00:14:12] Speaker 01:
The problem I have is that while it does discuss those two alternatives there, all of column 11 is a discussion of figure four.

[00:14:21] Speaker 01:
It specifically is pointing you to numbers that are numbers in figure four.

[00:14:27] Speaker 01:
The top of column 11 especially does

[00:14:29] Speaker 01:
referring to figure four and figure four shows five to seven.

[00:14:33] Speaker 01:
So while that one sentence, perhaps ambiguous, maybe if figure four itself didn't show five to seven tick marks, maybe that one sentence in isolation or if it wasn't attached to figure four could have articulated two thresholds.

[00:14:48] Speaker 01:
But my problem is that sentence is part of the discussion of figure four and figure four clearly and undeniably

[00:14:56] Speaker 01:
shows five to seven thresholds, I don't see how that ambiguous sentence could possibly be read to support the idea that multitude needs to.

[00:15:05] Speaker 04:
So in response to that, there's two points here.

[00:15:07] Speaker 04:
First, yes, it is discussing figure four, which has five to seven.

[00:15:10] Speaker 04:
But it is, I don't believe it's vague.

[00:15:12] Speaker 04:
I believe it's describing that there's optimal battery life, one end of the threshold, or optimal update rate, which is the other end of the threshold.

[00:15:19] Speaker 04:
It specifically refers to trade-offs between them in line 63, which is the board found are the trade-offs between those two points.

[00:15:27] Speaker 01:
And it also talks in the same thing about the slider.

[00:15:31] Speaker 01:
And the slider

[00:15:32] Speaker 01:
could move along that figure four hash mark, and there are seven different little hashes or five different little hashes.

[00:15:39] Speaker 01:
So I don't see how that could possibly be construed as limiting the claims suddenly to two thresholds.

[00:15:46] Speaker 04:
I'm not suggesting that the claim should be limited to two.

[00:15:49] Speaker 04:
We're saying that it is two or more, because I would agree with you, Your Honor, that there are a number of hash marks depicted in figure four.

[00:15:55] Speaker 01:
Well, the problem you have is the word multitude doesn't include two in its plain and ordinary meaning.

[00:16:00] Speaker 01:
And so you have to get past that to show that the patent somehow gave an embodiment or an example or something that changed the claim to an ordinary meaning of the word multitude.

[00:16:14] Speaker 04:
Yes.

[00:16:14] Speaker 04:
And I think in that regard, you can look at the combination of column 13 and also claim 12.

[00:16:23] Speaker 04:
Claim 12 reads,

[00:16:25] Speaker 04:
It's relating to a timing schedule, the setup of a timing schedule, and it reads that you have a local apparatus to set up a timing schedule from a multitude of wireless communication networks.

[00:16:36] Speaker 04:
The discussion for that claim, the support for that claim comes out of column 13 in line 35 to 40.

[00:16:46] Speaker 04:
And there, in discussing the setting up of the timing schedule, it reads between one or more than one wireless communication network.

[00:16:54] Speaker 04:
So here we have an instance of the claim itself, claim 12, not a challenge claim here, but claim 12 using the phrase multitude of wireless communication networks.

[00:17:04] Speaker 04:
The support that we have in the specification for that tells us that it's going to be one or more than one.

[00:17:09] Speaker 04:
We know multitude can't be one, but what this tells us is that the drafter here was intending for multitude to be more than one, which takes us back to the board's construction, two or more.

[00:17:20] Speaker 04:
So I believe when you look at column 13 in connection with the trade-offs between at least... Where in your brief did you mention claim 12 in this argument?

[00:17:28] Speaker 01:
Because I just texted my clerk and said, God, I don't remember this argument.

[00:17:31] Speaker 04:
That was not addressed in the briefing, Your Honor.

[00:17:33] Speaker 01:
So you're making an entirely new argument now at the podium.

[00:17:36] Speaker 04:
I'm raising that in response to the reply brief which discussed claims 2 and 16 as additional support for multitude.

[00:17:46] Speaker 04:
Where patent owner discussed claims 2 and claim 16 as providing additional support relating to why multitude should be some number of 3 or more.

[00:17:59] Speaker 01:
The board made what appears to be a fact finding that the dictionary definitions of multitude and plurality were identical.

[00:18:08] Speaker 01:
I don't see that.

[00:18:09] Speaker 01:
I've got those dictionary definitions in front of me.

[00:18:12] Speaker 01:
Plural is the state of being plural.

[00:18:18] Speaker 01:
I guess if I think in terms of a Venn diagram, plural could be two or more.

[00:18:24] Speaker 01:
But when I look at, and so therefore plural could include a multitude, right?

[00:18:30] Speaker 01:
Because say a multitude is five to seven.

[00:18:33] Speaker 01:
Plural, five to seven is plural.

[00:18:36] Speaker 01:
But I'm not sure two is a multitude.

[00:18:39] Speaker 01:
Do you understand where I'm going with this?

[00:18:40] Speaker 01:
They are not completely concentric circles that overlap.

[00:18:44] Speaker 01:
They each have their own definition.

[00:18:46] Speaker 01:
Plurality could include a multitude, but I don't see how a multitude necessarily can be as few as two.

[00:18:55] Speaker 01:
all of the definitions that were given says a very great number.

[00:19:00] Speaker 01:
As much as I love my husband, the two of us are not a very great number.

[00:19:06] Speaker 04:
So in response to that, Your Honor, I did not spend... I can respond to that.

[00:19:12] Speaker 01:
Avoiding the question.

[00:19:13] Speaker 01:
Tell me how great my husband and I are.

[00:19:14] Speaker 01:
I mean, there you go.

[00:19:16] Speaker 04:
I did not rely on the dictionary briefings in our arguments.

[00:19:21] Speaker 04:
I don't view them as providing much guidance for us.

[00:19:24] Speaker 01:
It's probably really smart for you not to rely on them, because they're not very helpful.

[00:19:28] Speaker 04:
When I look at column 11, I see at least those two endpoints.

[00:19:32] Speaker 04:
I see more than two endpoints.

[00:19:34] Speaker 04:
When I look at column 13, I see more than one.

[00:19:37] Speaker 01:
I understand what you see, but let's say that ultimately I'm not going to agree with you on multitude, because if you haven't figured it out, that's where I am.

[00:19:43] Speaker 01:
So now just tell me, though, what happens?

[00:19:46] Speaker 01:
Do I vacate and remand?

[00:19:47] Speaker 01:
Because I did notice that Apple made an argument that Sakamoto?

[00:19:53] Speaker 04:
Correct, Sakamoto.

[00:19:54] Speaker 01:
Sakamoto discloses four thresholds.

[00:19:57] Speaker 01:
I don't feel like I'm equipped to try to figure that out in the first instance here on appeal.

[00:20:02] Speaker 01:
It doesn't seem flushed out in the briefing.

[00:20:04] Speaker 01:
Is there still an open question if the

[00:20:08] Speaker 01:
depending on how I define multitude, even if I construe it in a way you don't love.

[00:20:13] Speaker 01:
Is there still an open question?

[00:20:15] Speaker 04:
I believe there is.

[00:20:16] Speaker 04:
I believe there's a question.

[00:20:17] Speaker 04:
Our experts, I don't have the citation off the top of my head, because it wasn't briefed here.

[00:20:21] Speaker 04:
You're right.

[00:20:21] Speaker 04:
The board did not address it in their underlying written decision.

[00:20:25] Speaker 04:
But there is a question.

[00:20:26] Speaker 04:
We provided testimony, argument, and the expert discussed how you have these thresholds that vary between normal, high sensitivity, stop mode, the two and the two that council was discussing up here.

[00:20:36] Speaker 04:
So I do believe it would be appropriate to

[00:20:38] Speaker 01:
Remand for further fact-finding by the board and analysis by the board

[00:20:53] Speaker 04:
Yes, let me turn to the batch of three patents one one three six one eight and two five six which relate to again Sakamoto and Here we have the question of specifically the question the only question that has been addressed by the board is what happens or that has been addressed by council is what happens with Sakamoto when it's what the parties have referred to as the stop position and

[00:21:17] Speaker 00:
Can I ask you, just before you get into it, are you relying on, or was your expert relying on, inherency?

[00:21:24] Speaker 00:
I mean, I'm wondering how you fill the gap in for what a prior reference teaches.

[00:21:29] Speaker 00:
And we've got cases that say you can't rely on common sense to fill in a gap.

[00:21:34] Speaker 00:
And so I'm thinking you must be relying on inherency.

[00:21:38] Speaker 00:
So two answers to that.

[00:21:40] Speaker 04:
He looks at paragraph 27.

[00:21:44] Speaker 04:
27 tells us there's an automatic moving between high sensitivity mode and normal sensitivity that based on your signal levels the system of Sakamoto is going to automatically jump between those two it 27 admittedly does not discuss the stop position

[00:21:59] Speaker 04:
37 does and 37 describes Explicitly that you will have a a cycle set in advance a timing cycle and each time that cycle comes around You are going to then go and get your signal level from your satellites 38 tells us then based on what you've what you've obtained the readings from the satellites I will then choose or Sakamoto will then choose a mode to go into and

[00:22:24] Speaker 00:
In other words, it'll resense the signal and then make a determination based on that.

[00:22:29] Speaker 04:
That's right.

[00:22:30] Speaker 04:
And so our expert then took those disclosures from Sakamoto 27, 37, and 38 and said, as I read these, this tells me that you would not simply just stay in stop mode, that it would be rendered essentially useless as a device if I stayed in stop mode and never came back out of it.

[00:22:51] Speaker 04:
that the disclosure of 37 tells us that there is a cycle that's set in advance.

[00:22:55] Speaker 04:
That cycle is a timing cycle.

[00:22:57] Speaker 00:
So in other words, that reliance on common sense that it can't just stay deactivated isn't necessarily standing on its own to fill in the argument.

[00:23:05] Speaker 00:
But instead, it's supporting the reading of the reference.

[00:23:08] Speaker 04:
That's right.

[00:23:09] Speaker 04:
And the board analyzed those very same paragraphs.

[00:23:12] Speaker 04:
The board came to that conclusion.

[00:23:14] Speaker 04:
The board then also credited our expert's testimony on that.

[00:23:18] Speaker 04:
He is the only expert that provided any testimony in this case, the only expert that was even part of this proceeding.

[00:23:25] Speaker 04:
And the board actually, if we look at the appendix of 239, the board noted that it accorded significant weight

[00:23:33] Speaker 04:
to Mr. Andrews understanding of Sakamoto's teachings.

[00:23:37] Speaker 04:
The board went on at the appendix of 239 and 242 to say that it credited his rationale because they found it consistent with their reading of Sakamoto's disclosure as well.

[00:23:48] Speaker 04:
And so what we're left with is the board looked at the explicit disclosures of Sakamoto, described them in the manner that I've described here.

[00:23:56] Speaker 04:
They compared that to the descriptions of Sakamoto as understood by one of ordinary skill in the art.

[00:24:01] Speaker 04:
They credited that testimony.

[00:24:02] Speaker 04:
And then they looked at the record and found the arguments proffered by LBT were nothing but attorney argument, properly weighed and rejected those in comparison to the testimony that was in the record.

[00:24:14] Speaker 01:
And that's how they arrived at that scene.

[00:24:16] Speaker 01:
I know.

[00:24:17] Speaker 01:
I find this to be a hard issue.

[00:24:18] Speaker 01:
So because neither paragraph 37 nor 38 clearly disclose what you need them to disclose, so you need the expert testimony.

[00:24:28] Speaker 01:
But like Judge Stoll, I've been struggling with, is it that they inherently disclose it?

[00:24:35] Speaker 01:
That a skilled artisan would know it has to do this based on what is, in fact, disclosed about what happens?

[00:24:43] Speaker 01:
I'm trying to understand the legal rationale, because as Judge Stoll said when she started her questioning, it can't just be that common sense would tell you that this would happen, because that's not enough.

[00:24:55] Speaker 01:
So is it inherently disclosed?

[00:24:57] Speaker 01:
Because what sentence here in either paragraph 37 or 38 is Mr. Avery saying, see, that sentence, that sentence teaches this.

[00:25:06] Speaker 01:
See, he doesn't do that.

[00:25:08] Speaker 01:
He's more a matter of saying, well, to have an operable invention, one would know it must do this.

[00:25:13] Speaker 01:
And that feels like inherency to me.

[00:25:15] Speaker 01:
But you're shying away from the word.

[00:25:18] Speaker 01:
And so I'm trying to figure out why.

[00:25:20] Speaker 01:
How do I understand this?

[00:25:23] Speaker 04:
No specific reason.

[00:25:23] Speaker 04:
The board did not make a specific finding saying it was or was not inherent.

[00:25:27] Speaker 00:
It's not inherency because in his deposition testimony, your expert said could be, could be, could be several times.

[00:25:34] Speaker 00:
So that makes inherency kind of hard for you.

[00:25:37] Speaker 00:
But again, where is this sentence?

[00:25:39] Speaker 00:
I think that Chief Judge Moore's question is a good one.

[00:25:42] Speaker 00:
Paragraphs 37 and 38, where do you have us look to know exactly how it supports what your experts said this reference teaches?

[00:25:52] Speaker 04:
The focus by the board and by our expert rested on the first sentence in paragraph 37, at the cycle set in advance.

[00:26:01] Speaker 04:
That is the linchpin.

[00:26:02] Speaker 01:
And it's not supposed to tell me it's in the stop position?

[00:26:04] Speaker 01:
Or what is that at the cycle set in advance?

[00:26:08] Speaker 04:
So 37, the cycle set in advance, tells us that Sakamoto's system is going to go and obtain the signal strength from the satellites in a repeated manner, a cycle set in advance.

[00:26:19] Speaker 04:
So in the Sakamoto system, you will set a time period, whatever that time period may be, to cycle, have your system cycle through and obtain the signal strength of the satellites.

[00:26:31] Speaker 04:
And so the system then will turn on at that set time, for lack of better phraseology, to take a reading from the satellites to determine what their strength is.

[00:26:42] Speaker 04:
So when we ask, where is the phraseology, it is the cycle set in advance that tells the board from the express disclosure of Sakamoto and then tells our expert that a cycle means it's going to repeat.

[00:26:56] Speaker 04:
38 tells us that based on the readings you get from 37 you are going to jump in or out of various modes.

[00:27:06] Speaker 04:
If there's no more questions there, I would like to briefly address the 619.

[00:27:10] Speaker 01:
What's the 619?

[00:27:12] Speaker 04:
The 619 relates to Miranda Knappen.

[00:27:15] Speaker 01:
Is this the motivation to combine things?

[00:27:17] Speaker 04:
Yes.

[00:27:17] Speaker 01:
See, why would you do that?

[00:27:19] Speaker 01:
Why would you address that?

[00:27:21] Speaker 01:
They didn't address it.

[00:27:22] Speaker 01:
And so if they didn't address it and you address it, you open the door on rebuttal for them to address it.

[00:27:26] Speaker 01:
If they didn't address it and you don't address it, they stand up for rebuttal and I don't let them touch it because it wouldn't be fair to you.

[00:27:31] Speaker 01:
So what, if you really, you must think your motivation to go buy a case is weak.

[00:27:34] Speaker 01:
That's why you want to raise it, so go ahead, raise it.

[00:27:38] Speaker 04:
I have nothing further to say.

[00:27:39] Speaker 01:
All right.

[00:27:44] Speaker 01:
I'll restore each of your respective rebuttal times so you each get your two minutes of rebuttal.

[00:27:52] Speaker 02:
Thank you, Your Honor.

[00:27:53] Speaker 02:
Judge Searle, with regard to your question about the expressed disclosure in second mode of manual reactivation, I'll point you to Appendix Page 1321, paragraph 20.

[00:28:02] Speaker 01:
That was really quick.

[00:28:04] Speaker 01:
I know you only have two minutes, but what did you just say?

[00:28:06] Speaker 02:
Appendix Page 1321, at paragraph 20, discloses manual reactivation of the GPS receiver by pressing a button.

[00:28:16] Speaker 00:
Do you agree with the characterization of paragraph 37 as teaching that periodically there's this timing, there's a cycle set in advance that causes this repeated detection of the signal level?

[00:28:35] Speaker 02:
It's describing the normal sensitivity positioning mode, Your Honor.

[00:28:37] Speaker 02:
Yes, we agree that there is a cycle that, in normal positioning, the GPS receiver, according to Sakamoto, turns off and on, checks the signal, the signal's strong, it turns back off because it's not needed.

[00:28:48] Speaker 02:
So yes, the issue we have with that disclosure is that

[00:28:53] Speaker 02:
that's not transitioning out of stop position mode because you can't get the signal without the GPS receiver first turning on.

[00:29:00] Speaker 02:
And once the GPS receiver is on, according to how the petition describes stop position mode, you're no longer in stop position mode.

[00:29:06] Speaker 02:
It is a different embodiment, but if you look at paragraph 30 which is on page 1323 it states that the positioning system of embodiment 2 which refers to as the present embodiment in that paragraph

[00:29:30] Speaker 02:
They're the same as those in figures one and two as described in embodiment one.

[00:29:34] Speaker 02:
So the positioning system, although they're different embodiments, operates in the same way.

[00:29:41] Speaker 02:
And finally, with regard to the point about inherency versus common sense, really what Mr. Andrews has done is a common sense approach.

[00:29:47] Speaker 02:
If you look at his deposition testimony, if you look at what he's put in his report, it's that one of ordinary skill in the art would expect there to be an activation out of stop position mode, because otherwise, it'd be useless.

[00:30:00] Speaker 02:
And as referenced in second mode of paragraph 20, that's not true, because there's another way to get out of stop position mode.

[00:30:06] Speaker 01:
Thank you, Your Honor.

[00:30:07] Speaker 01:
Thank you, Counsel.

[00:30:09] Speaker 01:
Mr. Secretary.

[00:30:15] Speaker 03:
Your honor, just really quick, Judge Stoll, the board did not address the two and two, the alternative scenario.

[00:30:25] Speaker 03:
So they only addressed the two threshold situation.

[00:30:29] Speaker 03:
And they determined, though, because if multitude has two, that's why Sakamoto would teach it.

[00:30:36] Speaker 00:
So we would, as a result, if we agree

[00:30:40] Speaker 00:
that the claim construction was incorrect, holding that multitude is two, then we have to remand for the board to consider that issue.

[00:30:49] Speaker 03:
Yes, Your Honor.

[00:30:52] Speaker 03:
And that's all I have.

[00:30:54] Speaker 01:
I thank all councillors.

[00:30:55] Speaker 01:
The case is taken under submission.