[00:00:12] Speaker 03:
Thank you, Your Honor.

[00:00:14] Speaker 03:
Please support.

[00:00:15] Speaker 03:
So the key fact-set issue in this case has to do with whether there is a proper motivation to combine the Salisbury and the Cullison references.

[00:00:25] Speaker 03:
And key to that decision were the board's conclusions that in 2002, at the time of the invention, boot programs were on the order of hundreds of kilobytes

[00:00:36] Speaker 03:
and that at the same time instruction cache memory was on the order of a few kilobytes.

[00:00:40] Speaker 03:
And so there was the mismatch.

[00:00:42] Speaker 03:
The entire boot program couldn't fit into what was then a typical size instruction cache.

[00:00:47] Speaker 03:
And that was the motivation for making the combination of reference.

[00:00:51] Speaker 03:
The problem is there's no evidence supporting either of those two subsidiary facts in the record.

[00:00:58] Speaker 03:
The documents that the board and the director have pointed to in briefing here relate to the size of memory that could be used to store a program.

[00:01:07] Speaker 03:
But it doesn't go to the size of the program itself.

[00:01:10] Speaker 03:
And that's the key.

[00:01:11] Speaker 02:
Does the size of the memory suggest the size of the program?

[00:01:14] Speaker 03:
Well, that is another inference that the board drew.

[00:01:17] Speaker 03:
But that's not necessarily true.

[00:01:19] Speaker 03:
You can have a very small program in a large memory.

[00:01:21] Speaker 03:
There's no reason for that.

[00:01:23] Speaker 03:
In fact, the whole purpose of these multipurpose... Why would you have a huge memory for a small program?

[00:01:28] Speaker 03:
Because you may be reusing that memory for other purposes, other than the boot program.

[00:01:33] Speaker 03:
So you may be using it as cache for a much larger program.

[00:01:37] Speaker 03:
In fact, that's what the 807 patent talks about, is that you have for

[00:01:44] Speaker 03:
complex programs, you can use the multipurpose memory as a local cache for the processor.

[00:01:53] Speaker 03:
But in the case of a boot program, which is typically much smaller, you can load the entire program into that same multipurpose memory and not have to use that as a cache.

[00:02:03] Speaker 03:
So there's two different purposes.

[00:02:04] Speaker 03:
So when you want to use the

[00:02:07] Speaker 03:
You're not booting very often.

[00:02:09] Speaker 03:
I mean, I think that's general knowledge.

[00:02:12] Speaker 03:
You are more typically using your computer in an operational state.

[00:02:16] Speaker 03:
And so in that state, the memory is going to be used to serve as a cache for the processor.

[00:02:23] Speaker 03:
And in that instance, you're going to want as much memory as you can afford.

[00:02:27] Speaker 03:
In 2002, it may have been, whatever, 500 kilobytes of memory.

[00:02:33] Speaker 03:
These days, of course, it's much larger.

[00:02:36] Speaker 03:
That would be a reason why you would want a larger cache, not for the purpose of storing the boot program, but for the purpose of serving as a cache to the processor for the more complex programs.

[00:02:49] Speaker 03:
So these references, and I have them listed here, but they're also articulated in our briefing, all relate to the size of the memory, not the size of the boot program that might be stored in that memory.

[00:03:02] Speaker 03:
So there's no basis to draw that inference that

[00:03:05] Speaker 03:
somehow the size of the memory indicates something about the size of the program.

[00:03:13] Speaker 03:
In fact, none of the references talk about that.

[00:03:15] Speaker 03:
One of the references that the director pointed to relates to this gigabyte motherboard.

[00:03:21] Speaker 02:
So none of these references is saying that the memory is specific to the program?

[00:03:27] Speaker 03:
There are, in the references, yes, there are some of these that are giving you the, you're right, they give you the specification for the BIOS memory.

[00:03:37] Speaker 03:
But again, you have to allow, well, you allow for updates and that was... Is that the 0.45 megabyte BIOS file?

[00:03:44] Speaker 03:
That was the issue I was going to point out is that in the case of this gigabyte motherboard in 2021, which is the date that's printed on that exhibit,

[00:03:54] Speaker 03:
It talks about a 0.45 megabyte BIOS update file.

[00:03:58] Speaker 03:
According to the briefing, I didn't independently research this myself.

[00:04:02] Speaker 03:
That would be improper.

[00:04:03] Speaker 03:
But according to that, that's the same gigabyte motherboard that's referred to in the APPX 1512, where it talks about having a two meg bit flash ROM under the BIOS heading.

[00:04:16] Speaker 03:
So that over-engineering, if you will, that BIOS memory

[00:04:22] Speaker 01:
earlier in the motherboard's life allows for later downloading of updates to the bios that may involve... To what degree are we dealing with a forfeiture problem here in that a lot of these arguments were not presented in your briefing below the board and therefore are untimely raised?

[00:04:45] Speaker 03:
Your Honor, I don't think that these issues were untimely raised.

[00:04:48] Speaker 03:
This was the key argument at the

[00:04:52] Speaker 03:
Below about whether you could combine these references was whether there was there was this motivation I thought your your gray brief didn't acknowledge that there's some issues here that You know, you're asking basically for forgiveness on forfeiture Yeah, there was I think that I think for a call the language that was used it was

[00:05:12] Speaker 03:
recasting the argument in a slightly different way and arguing that justice in this case really should allow us to make the argument, even if the court were to determine that there had been a forfeiture, because this was addressed at the least at the oral argument at the board.

[00:05:33] Speaker 03:
And both parties addressed it, and the board considered it and still made its findings that there was a proper motivation to combine.

[00:05:43] Speaker 03:
Also, as to the issue about the size of the professor, Dr. Albanese, who supported the petitioner, he opined about the size of boot programs and that they were larger than the typical instruction cache.

[00:06:02] Speaker 03:
But the exhibit that Dr. Albanese relied on, again,

[00:06:07] Speaker 03:
only shows instruction caches as being 16 kilobytes or 8 kilobytes, but it doesn't talk about the size of the boot program that would be used in that reference.

[00:06:16] Speaker 03:
There would be one in real life, but it doesn't talk about the size of that boot program in that reference.

[00:06:23] Speaker 02:
So you're saying that the reference to BIOS isn't a reference to a boot program?

[00:06:32] Speaker 03:
That's part of the issue, Your Honor.

[00:06:34] Speaker 03:
It depends on the references that you're looking at.

[00:06:36] Speaker 03:
Because if you search the internet for a definition of BIOS, it gives you a boot program.

[00:06:42] Speaker 03:
And there was one reference that was relied upon in the briefing and at the board where it seemed to use BIOS as being distinct from the boot program.

[00:06:51] Speaker 03:
I think I have that here in my notes somewhere.

[00:06:53] Speaker 03:
So I think, again, it goes to what a person who's still in the art would have understood.

[00:06:57] Speaker 03:
And there simply wasn't any evidence really provided on that issue.

[00:07:03] Speaker 03:
If I can find that reference, I'll point it out, Your Honor.

[00:07:14] Speaker 03:
I don't see that here in my notes, Your Honor.

[00:07:16] Speaker 03:
I'm sorry.

[00:07:18] Speaker 03:
I think it may have been the Master Boot Record MBR and why it is necessary article that begins at APPX 2464.

[00:07:29] Speaker 03:
In that article, it talks about how

[00:07:32] Speaker 03:
the BIOS execute a master boot record which transfers control to the boot program.

[00:07:39] Speaker 03:
That article suggests that there's a separate boot program, at least in the context of that particular article, and it's just Mitz describing, that's separate from the BIOS.

[00:07:51] Speaker 03:
I think there are other references that say that the

[00:07:54] Speaker 03:
boot aspect of the program is resident in the bios.

[00:07:58] Speaker 03:
So I think there's both, and I think that's part of the issue here.

[00:08:01] Speaker 03:
There wasn't a distilling of the analysis to somehow distinguish this one reference from other references that may be of record.

[00:08:14] Speaker 03:
But even in the case where you're talking about the bios, including the boot aspect,

[00:08:19] Speaker 03:
there are other references where it shows how booting is really only one component of what that particular BIOS did.

[00:08:27] Speaker 03:
There were four or five other numbered functions and so if you're talking about the boot program itself and the size of that, you need to be able to parse that out and analyze it and determine

[00:08:41] Speaker 03:
how much of that overall bios is the boot program that needs to be stored in the case of the memory, so that you get the entire boot program into that memory.

[00:08:53] Speaker 03:
And there was not concrete evidence on that.

[00:09:03] Speaker 03:
We make the argument about exhibits 10.14, 10.15, 10.16, and 10.17, which

[00:09:09] Speaker 03:
the petitioner put in in their reply brief at the board, there was no analysis of those documents by their expert either in his declaration or trial.

[00:09:20] Speaker 03:
And the board relied on those, in part, to come to the conclusion that there was a reason to combine.

[00:09:29] Speaker 03:
But you needed to have some sort of expert analysis or at least expert testimony on those to link the teachings of those exhibits

[00:09:38] Speaker 03:
to the motivation of the line, and that just didn't happen.

[00:09:41] Speaker 03:
It's not in the record anywhere.

[00:09:44] Speaker 03:
And finally, the board acknowledged that the cullison and the combination of cullison and Salisbury would have negatives, some costs associated with it, some potential latency that wouldn't be present if you just relied on the system of Salisbury.

[00:10:03] Speaker 03:
But it relied on the benefits that the petitioner pointed out to that combination.

[00:10:10] Speaker 03:
And instead of doing this weighting analysis that's required in Medican versus Rolavo that we cite in our brief, the board simply said,

[00:10:21] Speaker 03:
their costs and benefits of the one reference or cost and benefits of the combination, we're going with the combination.

[00:10:28] Speaker 03:
And we think that's improper.

[00:10:29] Speaker 03:
The board needed to articulate and analyze it as best it could based on the contents of the references.

[00:10:37] Speaker 03:
how those costs and benefits stacked up.

[00:10:39] Speaker 03:
Did one clearly outweigh the other?

[00:10:42] Speaker 03:
Did it outweigh the other at all?

[00:10:44] Speaker 03:
And we submit that that analysis was necessary and is missing from the record.

[00:10:49] Speaker 03:
And I'm out of time, Your Honor.

[00:10:51] Speaker 02:
OK.

[00:10:52] Speaker 03:
Thank you.

[00:10:52] Speaker 03:
Thank you, Mr. Stower.

[00:11:02] Speaker 00:
Thank you.

[00:11:03] Speaker 00:
You may please the court.

[00:11:04] Speaker 00:
There's once again only a single issue before the court here, and that is the board's finding as to the motivation to combine Salisbury and Cullison references.

[00:11:14] Speaker 00:
Once again, the board's opinion is supported by substantial evidence.

[00:11:20] Speaker 00:
board relied on both expert testimony and corroborating documentary exhibits to support its findings on the motivation to combine.

[00:11:30] Speaker 00:
Conducted an extensive analysis that spans 24 pages of the board's opinion on just the issue of motivation to combine, addressing each and every one of the arguments raised by Monterey.

[00:11:47] Speaker 00:
The expert testimony supports that there would have been motivation for one of ordinary skill in the art to combine Salisbury and Cullison because of the relatively small size of instruction caches at the time and particularly as specified in Salisbury.

[00:12:04] Speaker 00:
One of ordinary skill in the art would see the advantages from Cullison of loading an entire boot program that is larger than that very small

[00:12:16] Speaker 00:
instruction cache to the multipurpose memory and then running it from there to prevent any problems with feeding the full boot program to the instruction cache for execution.

[00:12:31] Speaker 00:
And then the expert specifically referred to patent to support his testimony on the size of the instruction cash.

[00:12:42] Speaker 00:
The expert only testified generally that one of ordinary skill in the art would desire

[00:12:48] Speaker 00:
to make this change in order to have the option to make larger boot programs available to be loaded fully into the multipurpose memory.

[00:12:59] Speaker 00:
But then the board also found corroboration for that part of the testimony in the separate documentary exhibits documenting the relative sizes of boot memories at the time.

[00:13:12] Speaker 02:
Well, I think the memories we're talking about, are they exclusive to boot programs?

[00:13:17] Speaker 02:
as Mr. Jackson suggested, general and generic memories that could accommodate key programs and other things also.

[00:13:26] Speaker 00:
So certainly, the first dot exhibit that said APPX1274 is specifically described as a boot prom that is 512 kilobytes.

[00:13:37] Speaker 00:
So there's no suggestion that it's performing other functions.

[00:13:41] Speaker 00:
And that's specifically what it's limited to.

[00:13:45] Speaker 00:
And because this argument wasn't raised in the briefing, even though these documents were submitted by Qualcomm to support Motivation to Combine, and they weren't addressed in the CER reply, there isn't a developed argument on this issue as to why the bias should be parsed up.

[00:14:08] Speaker 00:
opposing council has just suggested.

[00:14:10] Speaker 00:
But even allowing for some of that, I think the key point here is that the board, and this goes to the issue of the boot program size versus the memory size, as well as whether BIOS can have additional functions.

[00:14:27] Speaker 00:
The board was only looking at this for some indication of the relative size of these programs compared to the instruction cache.

[00:14:34] Speaker 00:
So the instruction cache, there's no dispute, was only 8 or 16 kilobytes in all of these documents.

[00:14:41] Speaker 00:
But these boot prompts are 512 kilobytes.

[00:14:45] Speaker 00:
So even if you're making only using a pretty small part of that, you're still something many times larger than the 8 or 16 kilobytes that's available in the instruction cache alone.

[00:14:57] Speaker 00:
And so that supports the motivation, even if we don't need 100% certainty about the numbers, because we're looking at what is their relative size.

[00:15:07] Speaker 00:
And all the evidence shows that it was common for boot programs to be much larger than the size of the very small instruction cache.

[00:15:21] Speaker 00:
If there are no further questions.

[00:15:23] Speaker 02:
No, thank you.

[00:15:24] Speaker 02:
Thank you.

[00:15:26] Speaker 02:
Mr. Jackson, two minutes.

[00:15:36] Speaker 03:
Thank you, Your Honor.

[00:15:37] Speaker 03:
And just to clarify, I did mean to correct myself when I answered your question earlier, Judge Stike.

[00:15:43] Speaker 03:
There are certain references that do give a memory size that is specific to the bios.

[00:15:48] Speaker 03:
And in my mind, I was thinking more about the 807 patent and the way it worked.

[00:15:52] Speaker 03:
And I apologize for that.

[00:15:55] Speaker 03:
I really don't have much else to say.

[00:15:57] Speaker 03:
We've addressed the issue of the forfeiture in the briefs, specifically in the reply brief, as Judge Chen pointed out.

[00:16:07] Speaker 03:
I do think that in this case, there is certainly, there is, the board is drawing a conclusion from the evidence

[00:16:16] Speaker 03:
that for which there isn't direct evidence on.

[00:16:19] Speaker 03:
Yes, there are documents showing the size of memories and even the size of memories for blue programs or for bios.

[00:16:29] Speaker 03:
But that is, there is a leap from that to saying that the programs, that somehow relates to the program size other than

[00:16:38] Speaker 03:
the program would have to be smaller than the size of the BIOS memory that's articulated in some of these references.

[00:16:46] Speaker 03:
That's the only conclusion you can draw.

[00:16:47] Speaker 03:
You can't draw the conclusion, as the board did, that it's necessarily larger than instruction caches, for which, again, there's very little evidence.

[00:16:56] Speaker 03:
I think there was one exhibit that was referred to as showing the size of an instruction cache that the petitioner's expert relied upon.

[00:17:08] Speaker 03:
the patent number 6304965.

[00:17:12] Speaker 03:
But those caches were not specific caches.

[00:17:15] Speaker 03:
Those were just instruction caches generally used in that system.

[00:17:19] Speaker 03:
So that provides some information, but it's not direct to the size of whether that would be larger or smaller than boot programs.

[00:17:29] Speaker 03:
Your Honor, unless you have other questions, that's really all I have.

[00:17:32] Speaker 03:
OK, thank you.