[00:00:00] Speaker 03:
22-1164 Maloof v. Microsoft Coalition.

[00:00:06] Speaker 03:
Take a breath.

[00:00:07] Speaker 03:
Take your time.

[00:00:07] Speaker 03:
Thank you, Your Honor.

[00:00:08] Speaker 03:
Good morning, Mr. Mayor.

[00:00:11] Speaker 01:
Good morning, Your Honors.

[00:00:12] Speaker 01:
May it please the Court?

[00:00:14] Speaker 01:
In the record, at Appendix 416, Mr. Maloof, as a pro se litigant, cited to the Board the Supreme Court's Carnegie Steel decision.

[00:00:22] Speaker 01:
The Board ignored that citation.

[00:00:25] Speaker 01:
But there, the Board warns how simple inventions deserve patents, too.

[00:00:29] Speaker 01:
especially when present experience makes it seem strange that experts in the field approach so near the consummation of their desires but fail to take the final step to make the claim combination.

[00:00:42] Speaker 01:
The Supreme Court calls this, quote, the common history of important inventions, end quote, their simplicity that precedes their popularity.

[00:00:52] Speaker 01:
Mr. Maloof's inventions are patentable because they are simple in these ways.

[00:00:56] Speaker 01:
And the board erred to find otherwise.

[00:00:58] Speaker 01:
The board's errors are twofold.

[00:01:00] Speaker 00:
So wouldn't you agree that the less technology involved in the case or the device and the less complexity, then the easier it is to find a motivation to combine?

[00:01:15] Speaker 01:
Yes, your honor.

[00:01:15] Speaker 01:
But just because an engine is simple does not make it obvious.

[00:01:19] Speaker 01:
For instance, if you take Edison's light bulb, you add a carbonized thread, two electrodes, and a

[00:01:28] Speaker 01:
a light bulb in a vacuum, and you have a light bulb.

[00:01:31] Speaker 01:
Today, we would call that simple.

[00:01:33] Speaker 01:
But back then, you have to look at the perceptions of the art at the time of the invention.

[00:01:38] Speaker 01:
If that answers your question, I would like to return.

[00:01:42] Speaker 01:
The board errors are twofold.

[00:01:44] Speaker 01:
First, drawn conclusions without substantial evidence.

[00:01:47] Speaker 01:
Second, stating conclusions without explanation.

[00:01:50] Speaker 01:
First, Microsoft admits at page 56 of their response brief

[00:01:54] Speaker 01:
that the board's reason to combine rationale was that ground two and three combinations would expand the commercial application of the prior art handles.

[00:02:03] Speaker 01:
Remember, claim 37 involves the sliding adjustability of the holder, expand the commercial application.

[00:02:11] Speaker 01:
But this rationale turns invention completely on its head.

[00:02:17] Speaker 01:
The inventor's beneficial result.

[00:02:19] Speaker 00:
Why would that not be sufficient motivation to combine?

[00:02:23] Speaker 00:
where just purely by making the changes that don't seem very complex, required here in order to combine, you're able to use the device with a whole host of other cameras, different sizes and shapes.

[00:02:40] Speaker 00:
And consequently, you have greater commercialization.

[00:02:45] Speaker 00:
Why isn't commercialization itself sufficient basis for motivation to combine?

[00:02:51] Speaker 01:
It could be.

[00:02:52] Speaker 01:
based on the arguments presented, but here Microsoft's expert did not provide the information that we would need to support that.

[00:02:59] Speaker 01:
Microsoft provides perception in the art that actually shows that the marketplace was complacent.

[00:03:04] Speaker 01:
The expert at their

[00:03:06] Speaker 01:
The expert shows at paragraph 121, appendix 849 and 850, that the marketplace was completely complacent.

[00:03:16] Speaker 01:
The forces were not working towards creating this adjustable holder because it would not be profitable.

[00:03:22] Speaker 01:
Why would an accessory builder or creator in this field want to defeat their own business plan?

[00:03:29] Speaker 01:
It was marketplace complacency, not marketplace.

[00:03:31] Speaker 01:
To make more money.

[00:03:33] Speaker 01:
How so, your honor?

[00:03:34] Speaker 01:
Because in that scenario, you would only be selling one adjustable holder forever.

[00:03:39] Speaker 01:
It would defeat the purpose of every time a new iPhone comes out, selling a new holder, selling a new adjustment.

[00:03:44] Speaker 00:
Why would that be a bad thing?

[00:03:46] Speaker 00:
You're selling an iPhone that captures the sizes of all cameras that are in the market.

[00:03:52] Speaker 01:
And that's exactly what Mr. Maloof created.

[00:03:55] Speaker 01:
He discovered how wonderful of a solution that was, created it much probably to the chagrin of accessory builders.

[00:04:01] Speaker 01:
These skilled artisans would not want that because it would destroy their own profitability.

[00:04:06] Speaker 01:
Every time, and even Mr. Welch, Mr. Microsoft's expert, stated specifically that consumers expected to buy a new holder each time they bought a new iPhone.

[00:04:18] Speaker 05:
The board found Mr. Welch to be persuasive.

[00:04:22] Speaker 05:
Didn't it?

[00:04:23] Speaker 01:
Not in those words, Your Honor.

[00:04:25] Speaker 01:
The board admittedly lacked a lot of explanation.

[00:04:28] Speaker 01:
If you look through the actual final written decision, you see that they jumped to a lot of conclusions without a lot of the actual buildup.

[00:04:38] Speaker 05:
But they had Mr. Welch's fairly detailed, I think, declaration in front of them.

[00:04:44] Speaker 05:
And they went through all the arguments on both sides and said, we agree with Microsoft, supported by Mr. Welch.

[00:04:53] Speaker 05:
Isn't that enough for our purposes?

[00:04:56] Speaker 01:
Admittedly, Your Honor, I don't think they did that.

[00:04:59] Speaker 01:
They went through, they said, this is Microsoft's argument.

[00:05:03] Speaker 01:
This is why Mr. Malouf's arguments may be unavailing without explanation.

[00:05:07] Speaker 01:
And then they simply stated,

[00:05:10] Speaker 01:
Microsoft met its preponderance of the burden.

[00:05:12] Speaker 01:
That's all they do.

[00:05:14] Speaker 05:
Hadn't they already rejected some of Mr. Maloof's arguments at the institution stage?

[00:05:19] Speaker 01:
Yes, your honor, but that was an earlier stage, and the arguments were still reserved.

[00:05:24] Speaker 01:
He made them again, and they didn't provide much explanation then either.

[00:05:30] Speaker 01:
So we're still in the dark as to why the board decided the way the board decided.

[00:05:35] Speaker 03:
Can we assume that it agreed with Mr. Welton and it agreed with Microsoft's argument?

[00:05:40] Speaker 01:
That's not how the law works.

[00:05:43] Speaker 01:
If you look at, for instance, cut forths where the board is explicitly told to articulate their rationale and tell us why they did so, you'll see that in there they didn't provide affirmative responses.

[00:05:54] Speaker 01:
Here is the same scenario.

[00:05:55] Speaker 01:
They didn't tell us, we agree with Microsoft.

[00:05:57] Speaker 01:
They didn't say, we find Microsoft persuading.

[00:06:00] Speaker 01:
They didn't say, Mr. Welch's X argument doesn't lead to X. They simply said, we don't agree with you.

[00:06:06] Speaker 01:
and they met their burden.

[00:06:08] Speaker 01:
That's it.

[00:06:09] Speaker 03:
So if they had one extra sentence that said, we agree with Microsoft, and therefore it's met its burden, that would take away your argument?

[00:06:18] Speaker 01:
No, Your Honor.

[00:06:18] Speaker 01:
Because if you look at, for instance, cases such as what Microsoft stated, OutDrive, where the board is providing this very detailed, they work through each element.

[00:06:29] Speaker 01:
They say, we believe that this leads to that, and that's why it's obvious.

[00:06:34] Speaker 01:
We don't have that here.

[00:06:35] Speaker 03:
Well, they may do different things in different cases, because they did something in one case, and they didn't do quite as much in another case, is in and of itself evidence or isn't dispositive of the sufficiency of what the board did here.

[00:06:50] Speaker 03:
So if the board says, if a patent owner lists two pages of what the patent owner argues, and then lists two pages of what the petitioner argues, and say, we agree with the petitioner, the petitioner has borne its burden.

[00:07:04] Speaker 03:
That's sufficient, right?

[00:07:04] Speaker 03:
They don't have to restate it or remake it up or saying it its own.

[00:07:08] Speaker 03:
They can just agree or embrace one side versus the other side's arguments, right?

[00:07:13] Speaker 01:
That may be sufficient depending on the scenario, but here they didn't even do that.

[00:07:17] Speaker 01:
They simply listed in summary some of Microsoft's arguments and then said, Mr. Maloof,

[00:07:23] Speaker 01:
are unavailing, and then they didn't even say the word agree.

[00:07:26] Speaker 01:
They simply said, met their prerogatives.

[00:07:28] Speaker 03:
Well, that's what the ultimate conclusion needs to be as to whether or not it's not the ultimate conclusion is that we agree with them and we don't disagree with them.

[00:07:37] Speaker 03:
The ultimate conclusion is the petition of one's burden here.

[00:07:41] Speaker 01:
But we don't understand why.

[00:07:43] Speaker 01:
If you look at the final written decision, we do not understand how they jump to that conclusion because they simply summarize and then jump.

[00:07:51] Speaker 01:
There's no in-between.

[00:07:52] Speaker 01:
There's no

[00:07:53] Speaker 01:
B between A and C. The inventor's beneficial result should never be used as a reason to combine without contemporaneous perception evidence.

[00:08:04] Speaker 01:
If this rationale works, every important invention would be obvious because every valid patent claim has a beneficial result.

[00:08:12] Speaker 01:
But this proves inventiveness, not obviousness.

[00:08:15] Speaker 01:
Experts in their field approaching so near the consummation but not reaching it, as the Supreme Court once said,

[00:08:21] Speaker 01:
The problem with the board's approach was to excuse Microsoft's lack of perception evidence.

[00:08:28] Speaker 01:
Mr. Welch's declaration said that was what was wonderful about Mr. Maloof's claim 37, and from that concluded that it was obvious.

[00:08:35] Speaker 01:
But he never said people in the art were perceiving that a modification or combination would expand commercial applications.

[00:08:41] Speaker 01:
Just the opposite.

[00:08:42] Speaker 01:
His testimony shows industry complacency with consumers just buying a new holder every time their phone size changed.

[00:08:50] Speaker 05:
Council, there were multiple grounds on which the board found the two claims, there's only two claims at issue, found them invalid as obvious.

[00:09:01] Speaker 05:
If we agreed with the board as to one of those grounds, but not the other, would we still have to affirm?

[00:09:08] Speaker 01:
No, Your Honor.

[00:09:10] Speaker 01:
If you were to agree with their construction on Claim 29, which is the only issue of appeal for Claim 29, that would only defeat Claim 29.

[00:09:21] Speaker 01:
But if you look at their construction there, you'll see that essentially they're rendering an entire clause within our patent meaningless.

[00:09:30] Speaker 01:
They're rendering it superfluous.

[00:09:32] Speaker 05:
This is the remote control term?

[00:09:34] Speaker 05:
Yes, Your Honor.

[00:09:37] Speaker 05:
Didn't the board go on to say that even if they adopted your construction, they still would have found that at least claim 29 was invalid?

[00:09:47] Speaker 01:
They did, Your Honor, but not in such specificity.

[00:09:51] Speaker 01:
We would argue that they didn't understand the argument.

[00:09:54] Speaker 01:
We were arguing that there is two separate capabilities within this claim, and remote control inherently must mean something different than wireless interface modules.

[00:10:05] Speaker 01:
there's two terms, they must be different things.

[00:10:08] Speaker 01:
And so the fact that there's two capabilities, and they can be used at separate times, but are mentioned in the same claim, does not defeat the meaning of the term remote control.

[00:10:21] Speaker 01:
The second error was an APA error described in this course, nuvasive and cuts forth decision.

[00:10:26] Speaker 01:
Microsoft's briefing never points to any statements.

[00:10:29] Speaker 01:
I notice now that I'm infringing upon my rebuttal time, so I would like to reserve.

[00:10:35] Speaker 04:
I think I was on that panel, but that was a non-presidential opinion, was it not?

[00:10:39] Speaker 01:
Yes, it was.

[00:10:40] Speaker 01:
But there are other ones.

[00:10:41] Speaker 01:
Dubasive, obviously, is presidential.

[00:10:44] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:10:50] Speaker 02:
I'd like to address two points.

[00:10:52] Speaker 02:
First, substantial evidence supports the board's finding that Rosenhan, cited in ground one, teaches remote control.

[00:11:00] Speaker 02:
Second, substantial evidence supports the board's express finding

[00:11:03] Speaker 02:
that petitioner demonstrated a motion to combine the references, both in ground two, where Rosenhan was combined with Kim, and in ground three, where Fromm, Fenton, and Bolton.

[00:11:14] Speaker 03:
Just because time is limited, can you get to your friend's argument about the motivation to combine reasoning with being absent, or at least insufficient?

[00:11:23] Speaker 02:
Yes, Your Honor.

[00:11:24] Speaker 02:
I would cite there to, first of all, take those separately.

[00:11:29] Speaker 02:
For ground two, where Rosenhan was combined with Kim,

[00:11:32] Speaker 02:
The only element that Kim adds to Rosenhan is directed to claim 37.

[00:11:39] Speaker 02:
And claim 37 recites that wherein the holder during use and using the sliding member adjust to hold mobile phones of various sizes.

[00:11:50] Speaker 02:
There, the board found that there was a sufficient motivation to combine Rosenhan and Kim for two reasons.

[00:12:00] Speaker 02:
First, Rosenhan itself.

[00:12:02] Speaker 02:
So I would direct you to the board's discussion at appendix 19 to 20 for the ultimate conclusion and then initially appendix 18 to 19 where the board set forth, rooted in the evidence, the motivation to combine.

[00:12:25] Speaker 02:
Rooted in the evidence is important.

[00:12:27] Speaker 02:
This is unlike the cases where a motivation to combine was established in some conclusory way by a board

[00:12:32] Speaker 02:
opinion.

[00:12:33] Speaker 02:
Here the board specifically cited passages from Rosenhan, paragraphs 24 and 25 at appendix 899, 48 and 49 at appendix 901 that really speak to the motivation here.

[00:12:48] Speaker 02:
First, Rosenhan provided a specific motivation for using other mount structures, stated that other mount structures could be used.

[00:12:55] Speaker 02:
Second, Rosenhan teaches in paragraphs 48 and 49 that it might be preferable to have a case compatible with different smartphone shapes and sizes.

[00:13:05] Speaker 02:
That's that motivation that I believe Judge Raina was discussing, the commercial application.

[00:13:12] Speaker 02:
As well as a specific statement that consumers may not want to have to replace the entire handle and mount every time they purchase a new phone.

[00:13:21] Speaker 02:
That's the motivation here that's set forth in the reference itself and was explained by unrebutted testimony from Microsoft's expert.

[00:13:34] Speaker 02:
The board cited to that evidence, the board cited to Microsoft's expert's testimony on that, paragraph 107, appendix 842, and paragraphs 114 and 115, appendix 846.

[00:13:50] Speaker 02:
And that provides the substantial evidence that the board relied on in finding that there was a motivation to combine those two references.

[00:13:58] Speaker 05:
Does the board ever deal with the so-called market complacency argument, which would seem to counter that motivation to combine?

[00:14:06] Speaker 02:
It is opposition that that argument simply was not raised.

[00:14:11] Speaker 02:
It's an adversarial proceeding.

[00:14:13] Speaker 02:
The board can only deal with what those parties in front of it raise.

[00:14:20] Speaker 02:
was very solicitous of the arguments made by a pro se litigant, actually reached back in the case of Rosen, Ahon, and Kim, looked back to the Patanona preliminary response, where the litigant actually was represented by counsel, and re-raised on Patanona's behalf those same arguments and addressed them, and said that they were directed to features other than those that are cited in the combination of Rosen, Ahon, and Kim.

[00:14:46] Speaker 02:
As far as the market complacency, that simply was not an argument that was raised and so it wasn't an argument that the board could have addressed in its decision and didn't.

[00:14:57] Speaker 02:
There were some arguments that were raised by patent owner related to so-called secondary considerations such as long felt need, et cetera.

[00:15:05] Speaker 02:
Those were raised and those were addressed by the board and are not at issue here on this appeal.

[00:15:12] Speaker 02:
But the board

[00:15:13] Speaker 02:
to the extent that arguments were raised by patent owners specifically address those in every case.

[00:15:18] Speaker 02:
And decisions have held in this court that, for example, I would direct you to pace the case cited in our red brief at 47, that it's inappropriate to find fault in the board's limited treatment of arguments where the board's treatment was at least commensurate with the patent owner's presentation of those arguments.

[00:15:44] Speaker 02:
Here, the board did everything that it could to address the arguments that were actually raised by patent owner and can't be faulted for not addressing arguments that are being raised here for the first time on appeal.

[00:15:56] Speaker 02:
Your Honor, as to substantial evidence, I wanted to retrace.

[00:15:59] Speaker 02:
So it is Microsoft's position that substantial evidence supports the motivation to combine for Rosenhan and Kim and also supports the motivation to combine set forth for Fromm, Fenton, and Bolton.

[00:16:10] Speaker 02:
And I'm happy to separately answer any questions you might have on that.

[00:16:13] Speaker 05:
Do we have to reach from Fenton and Bolton if we agree with you on Rosenhan and Kim?

[00:16:20] Speaker 02:
No.

[00:16:20] Speaker 02:
If grounds one and grounds two are affirmed, there is no reason to reach from Fenton and Bolton, although we do believe substantial evidence would support that as well.

[00:16:30] Speaker 02:
The other issue was touched on briefly, claim construction.

[00:16:33] Speaker 02:
And I think Your Honor raised the point, didn't the board find that under either construction, remote control is taught by Rosenhan?

[00:16:43] Speaker 02:
It is our position that that is exactly what the board found and that substantial evidence supports that decision so that claim construction is also not an issue that needs to be raised here.

[00:16:53] Speaker 02:
Substantial evidence supports the finding that Rosenhan itself teaches not only wireless connection, which is one claim element, but remote control using that wireless connection, which is a separate claim element.

[00:17:07] Speaker 02:
And I would cite there to the appendix 14 where the board said, quote,

[00:17:12] Speaker 02:
irrespective of whether the smartphone is connected to the handle or not.

[00:17:17] Speaker 02:
As long as the smartphone is in range of the wireless signal, Rosenhorn provides remote control of the camera features over the wireless connection."

[00:17:26] Speaker 02:
So that's a clear statement.

[00:17:28] Speaker 05:
If we did, nonetheless, reach the claim construction issue, how do you distinguish wireless connection and remote control?

[00:17:35] Speaker 02:
So anyone who's of a certain age remembers that there were remote controls that were wired, wired remote controls.

[00:17:42] Speaker 02:
They don't have to be wireless.

[00:17:43] Speaker 02:
Remote controls don't have to be wireless.

[00:17:46] Speaker 02:
In fact, the patent itself describes both connection through a USB connection and a wireless connection.

[00:17:54] Speaker 02:
And then the patent goes on to claim here, we're talking about a wireless connection that must be provided

[00:18:02] Speaker 02:
and then a wherein clause that says wherein remote control of the camera feature of the mobile device is provided over the wireless connection.

[00:18:11] Speaker 02:
Remote control of the camera feature just

[00:18:14] Speaker 02:
is understood in the way that one would normally understand remote control.

[00:18:19] Speaker 02:
It's not being provided on the device itself.

[00:18:22] Speaker 02:
There's a difference between changing the channels on your TV and changing the channels using a remote.

[00:18:27] Speaker 02:
It does not rise to the level of a definition of remote control and being somehow unfixed from the phone that is being controlled by the handle.

[00:18:42] Speaker 02:
There's simply just no support for

[00:18:44] Speaker 02:
the assertion by patent owner below, as the board found, that a non-fixed mode is what remote control means to a skilled artisan.

[00:18:53] Speaker 02:
So it is our contention that even were you to undertake de novo review of that plane construction, that the board was correct in finding that remote control is not limited in the way that a patent owner argued it was.

[00:19:06] Speaker 02:
In fact, there are claims that were ultimately canceled from the patent that

[00:19:12] Speaker 02:
dependent claims depending from an independent claim that recited remote control that specifically required that there be a remote control irrespective of whether the phone is fixed or unfixed.

[00:19:28] Speaker 02:
That shows that remote control itself does not carry that water with it.

[00:19:33] Speaker 02:
Those further dependent claims under the doctrine of claim differentiation show when Patent Owner wanted to claim a non-fixed mode, Patent Owner knew how to do it.

[00:19:43] Speaker 02:
And it didn't do so simply by reciting remote control.

[00:19:47] Speaker 02:
Also, the body of the claim makes clear that this is a holder for a phone and that during use, a number of things happen.

[00:19:56] Speaker 02:
One of the things that happen is that the phone is held.

[00:20:00] Speaker 02:
Another of the things that happens is that wireless control is provided.

[00:20:04] Speaker 02:
Rosenhan does both of those things.

[00:20:06] Speaker 02:
So there's simply no support in the record or in the references or in the patent itself for narrowing the meaning of remote control in the way suggested by patent owner.

[00:20:19] Speaker 02:
Unless there's other questions, I yield back the rest of my time.

[00:20:23] Speaker 01:
Thank you.

[00:20:23] Speaker 01:
Thank you, Your Honors.

[00:20:24] Speaker 01:
My friend hit on a few points that we have a disagreement on.

[00:20:28] Speaker 01:
It's an admission by Mr. Welch that complacency expectations of consumers.

[00:20:33] Speaker 01:
Mr. Welch provided that.

[00:20:35] Speaker 01:
Plus, the patentee argued against hindsight and the patentee argued against preponderance.

[00:20:42] Speaker 01:
All of these are in the record.

[00:20:43] Speaker 01:
That he was a pro se litigant that did his best but didn't hit all the magic words should not defeat his patents.

[00:20:51] Speaker 01:
Highlet as well as other

[00:20:53] Speaker 01:
case sites would provide this discretion to be less stringent.

[00:20:58] Speaker 01:
And we don't even think it needs to reach there.

[00:20:59] Speaker 01:
If you look at our reply brief from page 21 to page 27, there are numerous examples of where Mr. Maloof reserved these arguments and preserved them for appeal.

[00:21:14] Speaker 01:
The combination that is presented by Mr. Welch of Rosenham and Kim directly frustrates the purpose of Rosenham.

[00:21:24] Speaker 01:
Rosenham was designed to be ergonomic, but Mr. Welch provided this elongated, very large and cumbersome, almost like the prototype of the Hubbard telescope that is heavy and hard to use.

[00:21:40] Speaker 01:
That's not what my client designed.

[00:21:42] Speaker 01:
That's not what my client created.

[00:21:43] Speaker 01:
In order to do that, he removed all these additional elements from Kim.

[00:21:48] Speaker 01:
He attached Kim, which was designed specifically for long-distance self-photography, to a holder that was specifically designed to be easy to hold.

[00:22:00] Speaker 01:
and secure, ergonomic versus long-distance.

[00:22:03] Speaker 01:
They just don't mesh.

[00:22:04] Speaker 01:
And those mental obstacles, a posita would not overcome those that easily, especially given the marketplace complacency.

[00:22:14] Speaker 01:
On top of that, if you look at ground three, a similar scenario happened for Fenton.

[00:22:19] Speaker 01:
Fenton was designed specifically for hands-free viewing of content, but Mr. Welch presented it for

[00:22:27] Speaker 01:
you know, using your hands in order to take a photo.

[00:22:31] Speaker 01:
There's nothing hands-free about a handle.

[00:22:34] Speaker 01:
It just doesn't work that way, and both of these grounds defeat the purposes of the arts within them.

[00:22:40] Speaker 05:
Can you give me the page site for where Mr. Welch admitted the market complacency point?

[00:22:46] Speaker 01:
Yes, Your Honor.

[00:22:48] Speaker 01:
It is on appendix 849 and 850, paragraphs 121 and 122.

[00:22:57] Speaker 01:
And that's just one example of where he went into it.

[00:23:01] Speaker 01:
On top of that, he used statistics from 2015 for an argument based on an invention that was created in 2012.

[00:23:08] Speaker 01:
It's just nothing is matching up to what the board concluded.

[00:23:12] Speaker 01:
And with that, we would ask that you reverse, but at minimum remand, because we believe a competent board would not be able to find substantial evidence in this record.

[00:23:22] Speaker 03:
Thank you, Your Honor.

[00:23:25] Speaker 03:
Thank you.