[00:00:00] Speaker 01: The next case is number 221138, Netflix vs. Dynic LLC. [00:00:08] Speaker 03: Mr. Saunders, can you read it? [00:00:11] Speaker 03: Thank you. [00:00:11] Speaker 03: Good morning, Your Honor. [00:00:12] Speaker 03: May it please the Court. [00:00:14] Speaker 03: Like the challenge patent, the Kaku reference taught using the same index of the same well-known AVI file format to play videos and taught trick play functionality like fast forwarding and rewind. [00:00:28] Speaker 03: In addition, the 792 patent cites the kaka reference and admits that the AVI file format is prior art. [00:00:37] Speaker 03: So the board's decision that it's not going to consider the kaka reference because it's not analogous art is reversible error for at least three reasons. [00:00:47] Speaker 03: First, there's no per se rule [00:00:50] Speaker 03: that you have to expressly define the field of endeavor or the problem. [00:00:55] Speaker 03: Here, the petition presented the substance of that argument woven into the obviousness analysis, describing the structural and functional overlap, describing the admissions in the patent, and talking about skilled artisans. [00:01:09] Speaker 03: Second, the calculus reference isn't limited to digital cameras or the way that the board was thinking about it. [00:01:15] Speaker 03: The board didn't grapple with its statement [00:01:18] Speaker 03: that it's applicable to every electronic appliance to reproduce motion images. [00:01:23] Speaker 03: Conversely, the 792 patent could cover unsophisticated consumer devices. [00:01:29] Speaker 03: And then third, in the reasonable pertinence analysis, the board flipped this court's Donner case on its head to the point where, in defining the problem, its focus singularly on the point of novelty [00:01:44] Speaker 03: ends up excluding from the prior art things that are the most well-known precisely because they're well-known. [00:01:51] Speaker 00: I think maybe your biggest hurdle today is that the burden of proof lies with the petitioner, even though it's the patent owner that might have to raise it first. [00:02:03] Speaker 00: And looking at your papers, I understand your magic words argument. [00:02:08] Speaker 00: That doesn't have to be magic words. [00:02:11] Speaker 00: one of the concerns is, what do you think the field of endeavor is? [00:02:15] Speaker 00: Is it an AVI file format, or just a file format, or is it multimedia video files? [00:02:22] Speaker 00: What is it? [00:02:23] Speaker 00: And I understand magic words don't have to be here, but where do you think that is in the record in A64030405, or how do we deal with that burden of proof issue? [00:02:36] Speaker 03: Right. [00:02:37] Speaker 03: So we think that the [00:02:39] Speaker 03: The best definition of the field is video playback and file formats, which was the field we were using describing the skilled artisan in the petition. [00:02:49] Speaker 03: On that, the other size expert then came back, this is 4034 of the appendix, and says, that's too narrow that the field of the 792 patent is video encoding, transmission, and decoding. [00:03:05] Speaker 03: And so in the reply brief, it accepts that and says the 792 scope is the video coding transmission decoding. [00:03:12] Speaker 00: When you say, as you set forth in your petition, you mean in defining what a person's ordinary skill is? [00:03:18] Speaker 00: Right, yes. [00:03:19] Speaker 00: Just make sure I'm following. [00:03:20] Speaker 03: Yes, absolutely. [00:03:21] Speaker 03: Because what the petition isn't focused on is this is not a situation where we need to define [00:03:28] Speaker 03: outer boundaries of the field, just as you often see decisions that say, we don't need to resolve this dispute exactly over the definitions. [00:03:35] Speaker 01: But once you're called on it by the patent owner, then you do have an obligation to respond and articulate, at some level of sufficiency that the board can understand your position, what you think the field of endeavor is. [00:03:48] Speaker 01: Do you agree with that? [00:03:50] Speaker 03: Well, I think that's, I won't fight that because in our reply, we said, [00:03:57] Speaker 03: This is 6405 of the appendix. [00:03:59] Speaker 03: The 792 patent broadly defines its scope as including coding, transmission, and decoding of multimedia files. [00:04:08] Speaker 03: But the primary focus, I will admit, was not arguing about the periphery. [00:04:13] Speaker 03: We were arguing from the center, given the extreme amount of overlap. [00:04:18] Speaker 03: This isn't a situation. [00:04:19] Speaker 03: We're talking about a patent that is [00:04:21] Speaker 01: Finding your way... I don't think you even said what you just suggested you said, at least in the context of what is the field of endeavor for CACU. [00:04:31] Speaker 01: You didn't say anything other than ABI, did you? [00:04:35] Speaker 01: At page 6404 and 6403. [00:04:41] Speaker 03: So, at 6404... Am I at a mistake here? [00:04:48] Speaker 03: It's 6405. [00:04:51] Speaker 03: it's a here this only references field of endeavor in the second line from the top correct everything else on that page is not even about I think the best when you look at what's in the reply it's really because there's a lot of overlap between these two analyses it's everything together and and the problem I think I'm having the same problem [00:05:19] Speaker 01: You're pulling that line on 64 or 05 out of context because the priority pages that it's talking about are talking about Kaku teaching ABI file format, not the more broad definition of video playback or the like. [00:05:39] Speaker 01: So don't we have to then read that sentence in all of that instead of what you just said? [00:05:49] Speaker 01: It sounds to me like this was not very well presented. [00:05:53] Speaker 01: Kaku should be an Al-Azhar. [00:05:55] Speaker 01: The board just blew this. [00:05:56] Speaker 01: But we're on a substantial evidence standard here. [00:06:01] Speaker 01: And they made a fact finding that Kaku is not an Al-Azhar. [00:06:05] Speaker 01: And as best I can tell, your argument about what the field of endeavor was was instead of this KVI teaching. [00:06:12] Speaker 01: And they didn't like that. [00:06:13] Speaker 01: They're so, and I don't know. [00:06:16] Speaker 00: Do you think the party can raise two fields of the invention? [00:06:20] Speaker 03: I think that an invention can, but I think that the key thing on AVI is that we don't need to decide is this video playback file format, the outer boundaries here, because we had overlap. [00:06:36] Speaker 03: We don't need to decide does this include all file formats. [00:06:39] Speaker 01: We have overlap on the very format. [00:07:09] Speaker 00: as the 792 back. [00:07:11] Speaker 00: So you've got to look a little broader to figure out and not just look at the part that you're relying on to teach or the part that the claim recites as being the novel part of the claim, right? [00:07:22] Speaker 00: Or what distinguishes the claim from the prior. [00:07:25] Speaker 00: So say we don't agree with you on AVI, what else do you have? [00:07:32] Speaker 00: Well, to show that there's a few. [00:07:36] Speaker 03: Kaku says it's applicable not just to digital cameras, but to any consumer electronic device. [00:07:42] Speaker 03: We point out in the petition, 792 patent has the prosecution history where it talks about it's applicable to unspecified devices. [00:07:50] Speaker 01: I disagree with you on any of this. [00:07:52] Speaker 01: Where did you make the argument that the field of Endeavor is not just limited to AVI or not just limited to trip play, but it's the broader [00:08:02] Speaker 01: So we're not if the standard we think this would be incorrect legal standard to say that we have to say the field of endeavor [00:08:26] Speaker 00: argument on page A6405, which? [00:08:30] Speaker 03: Right. [00:08:30] Speaker 03: I don't think that for that statement, we ended up being told, no, we won't consider that because we think that's a reasonable pertinence argument. [00:08:40] Speaker 03: But no, we don't see that as a definition of problem. [00:08:43] Speaker 00: It says here the 792 patent broadly defines its scope as including encoding and decoding. [00:08:48] Speaker 00: KAKU teaches encoding and decoding of image data and EVI files. [00:08:53] Speaker 00: Right. [00:08:53] Speaker 00: Exactly. [00:08:54] Speaker 00: So even though the next sentence is saying, under Federal Circuit President Kaku is reasonably pertinent, it's your view that this goes not just to reasonably pertinent, but also to the field of indecency. [00:09:05] Speaker 03: Exactly. [00:09:05] Speaker 03: And then they wouldn't consider it for reasonably pertinent, because they said this isn't really debatable. [00:09:11] Speaker 00: Can I ask you something? [00:09:11] Speaker 00: Do I have to rule in your favor on that? [00:09:13] Speaker 00: I think I do. [00:09:14] Speaker 00: I think I have to say the board abused its discretion. [00:09:17] Speaker 00: You're interpreting your papers. [00:09:19] Speaker 03: No, I think that the primary way that this court has defined the field of endeavor is by looking to the structure and function. [00:09:27] Speaker 03: That's why we have hair brushes and toothbrushes in the same field in the Biggio case. [00:09:32] Speaker 03: In Minsky, we have the pumps for underwater and the other pumps. [00:09:38] Speaker 03: And so I think the point here is not [00:09:43] Speaker 03: What you have to find when we're saying the field of endeavor is X, it's that you can argue this from the center. [00:09:50] Speaker 03: You can present that substance. [00:09:51] Speaker 01: Can you answer Judge Stoll's question? [00:09:53] Speaker 01: Because I'm going to assume your answer was yes. [00:09:56] Speaker 01: Quick, let me make sure we're on the same page. [00:09:59] Speaker 01: The question is, when we look at what the board read into your papers, and whether they thought that sentence about tattoo only went to reasonable pertinence as opposed to field of endeavor, [00:10:10] Speaker 01: aren't we reviewing for abuse of discretion, just on how they read what your argument was? [00:10:16] Speaker 03: Yes, you would be. [00:10:16] Speaker 01: But how did they abuse their discretion? [00:10:18] Speaker 03: Well, they then parroted and said, well, that's not a definition of the problem. [00:10:22] Speaker 01: Well, then help me with this. [00:10:24] Speaker 01: That's 6641, when you have the oral argument, which I assume follows the briefing. [00:10:30] Speaker 01: Mr. Liang, is that your counsel? [00:10:33] Speaker 01: So Mr. Liang says at 6641, referring to the reply pages three and four, we, I'm saying the word we, we explain that the 792 pattern refers to AVI and CACU, teaches AVI, but this is about file formats and therefore CACU is in the same field of endeavor. [00:10:56] Speaker 01: How is the board supposed to read that? [00:10:58] Speaker 01: as anything other than the field of endeavor and ZVI? [00:11:02] Speaker 03: Well, no, but it's broadening. [00:11:03] Speaker 03: I mean, that's in kakashi-jiivai, but this is about file format. [00:11:06] Speaker 03: I mean, the broader field is those file formats. [00:11:11] Speaker 03: That's what the encoding and decoding is getting to. [00:11:13] Speaker 03: That's what the definition of the skilled art is in, in terms of video playback and file formats. [00:11:20] Speaker 01: So in the context of your reply and this answer, do you want us to find it's an abuse of discretion [00:11:26] Speaker 01: to understand your position below as being the field of endeavor is A-B-R. [00:11:32] Speaker 03: And to be clear, yes. [00:11:34] Speaker 03: And the way the board frames it, and as you see from what they're looking for in the oral hearing, is they need that statement, the field of endeavor is X. And we're saying that to require [00:11:50] Speaker 03: that statement, have a per se rule that you can't argue the substance here, you can't argue from the center, you can't argue the structure and function, but we're going to need that statement, it would be an incorrect legal rule in this context where we have such overlap, right, same index, same file for the same purpose, video playback, and the admission in the way it's treated, the bad is treated in the prosecution history and the admission that's there. [00:12:20] Speaker 03: I don't think it did we interpreted the board's decision to be limiting the field of endeavor to internet application [00:12:33] Speaker 00: plainly well that was his but but that's the I mean so appendix [00:12:52] Speaker 03: But also, Appendix 6060, our petition says, CACU teaches fast forward and rerun functionality is performed by high speed reproduction in the forward or reverse direction. [00:13:06] Speaker 03: From the petition, from the beginning, was saying CACU is also teaching trick play. [00:13:11] Speaker 03: So that wouldn't be a basis to distinguish it. [00:13:15] Speaker 00: But in your brief, you say that you think that the board defined the field of the invention [00:13:22] Speaker 00: Or at least the patent is directed to encoding, transmission, decoding of multimedia files, including those with multiple tracks and capable of being transmitted over the internet. [00:13:32] Speaker 00: Do you think that's the case? [00:13:33] Speaker 00: Or do you think it's that they said it relates to trick play? [00:13:36] Speaker 00: Or is it a little unclear in page 225? [00:13:39] Speaker 00: Because at first they said, your petition and your reply were deficient. [00:13:44] Speaker 00: And then they went ahead and addressed the issue anyway. [00:13:46] Speaker 00: And I'm having a little bit of a hard time understanding what they thought of the field. [00:13:50] Speaker 03: I share that. [00:13:51] Speaker 03: I think that would be good. [00:13:58] Speaker 03: The idea that the 792 is limited in some way, when there's no such limitation in the claims, when column five has a locally stored DVD embodiment, and when our camera allegedly itself is saying this applies to all of the consumer electronics. [00:14:22] Speaker 02: Good morning, Your Honor. [00:14:23] Speaker 02: Submit please to court. [00:14:24] Speaker 02: I feel that a lot of my work has been done, so I hope to be brief. [00:14:29] Speaker 00: I have a question for you. [00:14:30] Speaker 00: Yes. [00:14:30] Speaker 00: I really want to know what you think the board said was the field of the infection. [00:14:35] Speaker 00: Because it's either that they agreed with your expert and said that it's pick-play and multimedia files. [00:14:40] Speaker 00: I think that's what the board did. [00:14:42] Speaker 02: The closest statement that I have on this, I believe is in the appendix at 25 and says the 792's background of the invention makes clear that the patent relates to encoding, transmission, and decoding of multimedia fields, including those with multiple tracks and capable of being transmitted over the internet. [00:14:58] Speaker 02: So I think that's the closest statement from the board. [00:15:00] Speaker 00: But what about where they say above? [00:15:01] Speaker 00: They say Patent Owner relies on Dr. Bajaj's testimony on the field in the Endeavor and of CACO from the perspective of Person Ordinaries. [00:15:09] Speaker 00: Here on the Earth, we find Dr. Bajaj's testimony supported by the cited disclosures. [00:15:15] Speaker 00: So they agree with it, I guess. [00:15:17] Speaker 00: And then when you look at the paragraphs, they cite paragraphs 39 through 45 of Dr. Bajaj's expert report. [00:15:26] Speaker 00: And specifically, he says, [00:15:27] Speaker 00: The field of the endeavor is trick play in multimedia content. [00:15:32] Speaker 02: Yes, so I think there is some overlap between what Dr. Bajaj said and what the board said. [00:15:39] Speaker 02: I see the two as being quite close. [00:15:41] Speaker 02: Essentially, what I see the board saying is Dr. Bajaj has submitted testimony concerning the field of endeavor, looking at the traditional sources that this court has looked at to discern the field of endeavor, the background of the invention, the claims, the prosecution history, et cetera. [00:15:55] Speaker 02: And they set forth what his understanding was. [00:16:00] Speaker 02: then they say a slightly different version of it and so I agree that there's a little bit of perhaps I don't think it's [00:16:13] Speaker 02: limited to trick play, I think it is facilitating trick play functionality and multimedia content that is streamed or downloaded over the internet. [00:16:24] Speaker 02: That is the position we provide. [00:16:25] Speaker 00: So you don't agree with this broader statement here on page A25? [00:16:30] Speaker 00: No. [00:16:30] Speaker 00: It says that it's encoding, transmission, and decoding of multimedia files. [00:16:36] Speaker 02: Let me be clear. [00:16:38] Speaker 02: I'm not saying that the board's statement is incorrect I view it as being very close to what our experts offer and What the board said was a they looked at the background of the invention I believe [00:16:51] Speaker 02: And they gave a slightly different articulation of it. [00:16:56] Speaker 02: But it seems very similar to me. [00:16:58] Speaker 02: And then the board ultimately concluded, if you look at Keikyu, Keikyu is far afield of that, looking at the traditional sources. [00:17:06] Speaker 02: And therefore, you would need a very broad field of endeavor to encompass both. [00:17:09] Speaker 00: Can I walk through the 792 patent view a little bit and talk about the field of endeavor? [00:17:15] Speaker 00: Of course. [00:17:17] Speaker 00: OK. [00:17:18] Speaker 00: Where does it talk about, I see where it talks about multimedia files. [00:17:26] Speaker 00: In the abstract, in the background, in the summary of the invention. [00:17:31] Speaker 00: I don't see where it talks about trick play, the concept of trick play, until column 48. [00:17:37] Speaker 00: Am I missing something? [00:17:38] Speaker 02: So you are correct, but let me make a couple of observations on that. [00:17:44] Speaker 02: A number of cases from this court, including cases that they rely heavily upon, like Vigio and I think Dominsky might be the other one, there are different avenues to discern the field of endeavor that this court has relied upon. [00:17:57] Speaker 02: One is the field of the invention, the background of the invention, the structure and content of the claims. [00:18:02] Speaker 02: And so here, each of the claims has trick play functionality. [00:18:06] Speaker 02: Now, this is a continuation in part. [00:18:09] Speaker 02: And so what Dr. Bajaj did is he focused upon the additions to this patent, which do closely relate to trick play functionality. [00:18:19] Speaker 02: And the teachings that were added to this patent, those talk about the first and second index facilitating trick play functionality. [00:18:26] Speaker 00: Can you solve it says that when something's a continuation in part, we should really focus on [00:18:30] Speaker 00: the subject matter that was added to determine what the field of the invention is for purposes of analogous art? [00:18:37] Speaker 02: I'm not aware of any case from this court that addresses that specific question one way or the other. [00:18:41] Speaker 02: But I think it's reasonable in view of the case law that says you ought to look at the function structure of the claims, because in each of the claims here, they all require. [00:18:52] Speaker 00: And that's what is the asserted novel feature, right? [00:18:56] Speaker 00: That's what's the asserted novel feature? [00:18:58] Speaker 00: I don't think it's the... Well, how it's obtained, having this second index. [00:19:04] Speaker 02: Oh, okay, I'm sorry. [00:19:05] Speaker 02: I thought you meant in the context of the IPR. [00:19:07] Speaker 02: You're correct that in the context of prosecution, and I think it's at Appendix 2000 if my memory is correct, the examiner allowed this patent in substantial part because of the second index. [00:19:20] Speaker 00: I have a lot of questions for you about the patents. [00:19:22] Speaker 00: Do you mind if I jump into them? [00:19:23] Speaker 00: Sure. [00:19:24] Speaker 00: I was looking at, I was wondering, for example, [00:19:27] Speaker 00: In the abstract, it says, one embodiment of a multimedia file in accordance with the present invention includes a series of encoded video frames. [00:19:37] Speaker 00: The first index includes some stuff. [00:19:39] Speaker 00: It talks about, so basically, it's the last sentence of the abstract. [00:19:44] Speaker 00: I think it's describing a file structure. [00:19:47] Speaker 00: Is that right? [00:19:49] Speaker 00: It says that there is a first index, and there's video frames. [00:19:55] Speaker 02: I would agree that an index is a file structure. [00:19:59] Speaker 00: Yes? [00:19:59] Speaker 00: What about, let's say, let's try column 3, figure 2.0 description. [00:20:08] Speaker 00: It's column 3, line 25. [00:20:10] Speaker 00: It says figure 2 is the diagram of the structure of a multimedia file. [00:20:16] Speaker 02: I'm sorry. [00:20:17] Speaker 02: Could you say the line again, please? [00:20:17] Speaker 00: I'm sorry. [00:20:18] Speaker 00: It's column 3, line 25. [00:20:20] Speaker 00: I'm looking at the brief description of the drawings. [00:20:24] Speaker 00: Figure 2 is a multimedia file. [00:20:26] Speaker 00: Figure 2.0.1 is a structure of a multimedia file. [00:20:32] Speaker 02: If what you're asking... What I'm asking is, I see a lot of things. [00:20:37] Speaker 00: Look at the summary of the invention. [00:20:40] Speaker 00: One, lines 38 through 40. [00:20:42] Speaker 00: It's the very first statement of the Summary of Invention. [00:20:45] Speaker 00: And it says, embodiments of the present invention include multimedia files and systems for generating, distributing, and decoding multimedia files. [00:20:55] Speaker 00: Why isn't a multimedia file or multimedia distribution system, which is the title of the patent? [00:21:01] Speaker 00: Why isn't that the field of the endeavor? [00:21:03] Speaker 02: Well, I do think I agree with Judge Hughes that you have to look at this in the context of substantial evidence. [00:21:09] Speaker 02: I think it's also important to look at in the contents of the record below. [00:21:13] Speaker 00: But what are the sources of the substantial evidence that I'm to look at? [00:21:17] Speaker 00: Just say the patent itself. [00:21:22] Speaker 01: of the word define field of endeavor to determine whether its determination that Haku isn't in the same field of endeavor is supported by substantial other things, don't we? [00:21:34] Speaker 02: I respectfully disagree with that. [00:21:36] Speaker 02: I don't believe you do need to reach that question. [00:21:39] Speaker 01: Well, how do we know if it's right or not? [00:21:41] Speaker 01: We don't know what their definable is in the field of endeavor. [00:21:44] Speaker 01: Let's say that they actually had defined the field of endeavor as only related to [00:21:51] Speaker 01: It's certainly not one that we proffered it and I don't think it that alone would leap out from the disclosures [00:22:10] Speaker 01: obvious on its face why they're in the same field of endeavor. [00:22:14] Speaker 01: Well, I disagree with the board on this. [00:22:17] Speaker 01: Frankly, if I were in this case, you would lose. [00:22:19] Speaker 01: But the board said, well, this is a video camera, and this is on the internet, so they're not in the same field of endeavor. [00:22:28] Speaker 01: But now we know how the board is defining the field of endeavor. [00:22:36] Speaker 02: I believe the well just on that last I Don't believe that the board said it was limited. [00:22:43] Speaker 02: It says the board says includes when it talks about Including string if you look at the description I gave earlier, but if I may I if I didn't answer your question But your expert at page a 4040 said that [00:23:01] Speaker 00: Rather the field of endeavor of the 792 patent is facilitating trip-flight functionality and multimedia content that is streamed or downloaded over the internet. [00:23:11] Speaker 02: Yes, I agree with that. [00:23:13] Speaker 00: I agree with that. [00:23:13] Speaker 00: That's even narrower than saying that it's directed to trip-flight functionality. [00:23:21] Speaker 02: The other side, they didn't put forward a field of endeavor for either the 792 or Keiko. [00:23:26] Speaker 02: We submitted expert testing, looking at the traditional sources, the background of the invention, the claims. [00:23:31] Speaker 02: I can point you to his expert declaration, where he goes on to. [00:23:37] Speaker 00: Oh, no. [00:23:37] Speaker 00: Why don't you go with the things you said, with the traditional things that you rely on, which is the background of the invention and the summary of the invention, and things in the patent itself, instead of what the expert said. [00:23:50] Speaker 02: Well, he is speaking to those very same things, so I don't... Yeah, there's not any difference. [00:23:55] Speaker 02: Yes, so we talked about how each of the planes requires two indexes for enabling trick play functionality. [00:24:05] Speaker 02: And so it may side a bunch of cases. [00:24:09] Speaker 00: There's your divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin-divin- [00:24:35] Speaker 00: relied upon to determine the field of the invention. [00:24:38] Speaker 00: What's the scope of the coin? [00:24:40] Speaker 02: No, no, I understand, but I want to be clear that I believe one of the traditional sources is [00:24:46] Speaker 02: the claims. [00:24:48] Speaker 02: So the spoken content of the claimed inventions, that's what N. Rebischio says, that's what N. Rebischio says, that's what their case is saying. [00:24:56] Speaker 02: So I would not exclude that from the ambit of the traditional sources. [00:25:00] Speaker 00: I'm aware of that, so I don't want to waste your time. [00:25:03] Speaker 02: Of course. [00:25:04] Speaker 02: And so you'll see there's a lot of [00:25:06] Speaker 02: relationship between aspects of Dr. Bajaj's identification of the field with the background of the invention, which notes the present invention generally leads to encoding, transmission, and decoding of multimedia files that can include tracks and gives additional tracks. [00:25:22] Speaker 02: And that says the development of the internet [00:25:24] Speaker 02: has promoted the development of file formats for multimedia information to enable standardized generation, et cetera. [00:25:32] Speaker 02: So we're talking about multimedia files that have, in many instances, more than the traditional two tracks in the context of the development of the internet. [00:25:43] Speaker 02: If you look at the figures, for example, one and two, we're talking about network devices. [00:25:48] Speaker 02: And then Dr. Bajaj looked at the reason the patent was planted. [00:25:52] Speaker 02: He looked at the claims. [00:25:53] Speaker 02: which focused on the addition of the second index and what the patent explains is that the second index is beneficial because you can obtain it before you get to them. [00:26:04] Speaker 02: I believe for example 1626 to 29 I want to say. [00:26:07] Speaker 00: I mean where is that in the patent? [00:26:26] Speaker 01: I thought that column 16, lines 26 to 30 or so were also the reference to trick play. [00:26:34] Speaker 02: It is. [00:26:36] Speaker 02: Thank you. [00:26:38] Speaker 02: What I meant to say earlier was that I'm not suggesting that trick play is the main feature of the very outstanding patent. [00:26:43] Speaker 02: But yes, I certainly agree with your honor that that most definitely is about trick play. [00:26:47] Speaker 01: Is that the earliest reference that we read from the back in the patent? [00:26:50] Speaker 01: Is that the earliest reference to trick play in column 16? [00:26:54] Speaker 02: I believe it's the [00:26:55] Speaker 02: earliest reference we were lying upon. [00:26:58] Speaker 02: And I believe that it is the information that was added to this continuation from its parent. [00:27:03] Speaker 02: But as I only have two minutes, can I briefly speak to the burden? [00:27:06] Speaker 02: Because I don't think you need to get to any of this to answer your question, Judge Hughes. [00:27:10] Speaker 02: Because they have the burden of proof. [00:27:13] Speaker 02: I think your honors understand the record quite well. [00:27:17] Speaker 02: You have to find an abusive discretion on the file format issue, because the board expressly found a waiver [00:27:25] Speaker 02: I didn't even see an argument for my friend in there. [00:27:28] Speaker 00: Can I ask you something? [00:27:29] Speaker 00: Yes. [00:27:29] Speaker 00: I understand your point. [00:27:30] Speaker 00: But let's say, OK, so the board found that they didn't identify a field of endeavor. [00:27:36] Speaker 00: So then it accepts your statement of the field of endeavor. [00:27:39] Speaker 00: We're a little bit unclear on what that is and what they thought the field endeavor was. [00:27:44] Speaker 00: But they may continue to analyze it, right? [00:27:47] Speaker 00: So we have to review their analysis regardless of whether it [00:27:54] Speaker 00: they found that the petitioner hadn't identified a field of endeavor. [00:27:59] Speaker 00: There's still a field of endeavor. [00:28:01] Speaker 00: I mean, just because the petitioner doesn't identify one doesn't mean that that stops it. [00:28:06] Speaker 00: The pattern owner has identified one, and the analysis must then occur under the field of endeavor [00:28:12] Speaker 00: identified by the pattern owner. [00:28:14] Speaker 02: That's the part where I respectfully disagree, actually, because they have the burden of proof on this issue. [00:28:19] Speaker 02: They have to prove the scope and content of the prior art. [00:28:21] Speaker 00: But what if they just agree with you on what the field of endeavor is, but they disagree with you on the analysis? [00:28:29] Speaker 00: The conclusion based on that field of endeavor. [00:28:31] Speaker 02: Even then. [00:28:35] Speaker 02: I'm sorry if I'm repeating myself, but it seems that they have the burden of proof. [00:28:39] Speaker 02: They clearly didn't satisfy the burden of proof. [00:28:42] Speaker 02: The board found that. [00:28:44] Speaker 02: That is an independently sufficient basis to affirm. [00:28:47] Speaker 02: And if you read their papers, you'll never even see the mention of the word burden. [00:28:52] Speaker 02: Not once. [00:28:53] Speaker 02: And you never, you see them rely, you ask, or someone asks, [00:28:57] Speaker 02: What is the clearest statement of the field of note ever? [00:29:01] Speaker 02: And they went to the level of ordinary skill. [00:29:03] Speaker 02: The board said that they waved that argument. [00:29:07] Speaker 02: They have to demonstrate to your honors, which they did not argue in the papers. [00:29:10] Speaker 00: Let's assume momentarily that even though the petitioner has the burden of proof, the patent owner has to at least raise the issue and say, why do you think that it's not an alibis? [00:29:23] Speaker 00: And in this case here, the patent owner said, [00:29:26] Speaker 00: It's not analogous, because the field of endeavor is something. [00:29:29] Speaker 00: And that differs from CACUS, the world of endeavor. [00:29:32] Speaker 02: That is not how we presented the argument. [00:29:35] Speaker 02: The way we presented the argument is, because I know, because I wrote it, is if you read the third line of our brief, the POR below, petitioner fails to prove that CACUS and analogous are. [00:29:48] Speaker 02: We then have an entire section on how they failed to prove it. [00:29:51] Speaker 02: Then we say, if you need to look any further, [00:29:54] Speaker 02: That's how we presented it. [00:29:55] Speaker 00: And then the certify, Dan, we are going to tell you that. [00:29:57] Speaker 00: The petition they had to raise this issue. [00:29:59] Speaker 02: No, but even in our certify, we said, let's assume. [00:30:02] Speaker 02: I understand your view on that issue. [00:30:04] Speaker 00: I'm just trying to get a hypothetical. [00:30:05] Speaker 00: Can I give you a hypothetical? [00:30:07] Speaker 00: Of course. [00:30:07] Speaker 00: And I understand you might think the facts are different. [00:30:09] Speaker 00: It's fine. [00:30:09] Speaker 00: I just want to ask you a hypothetical. [00:30:12] Speaker 00: So let's say that the petitioner doesn't say anything in the petition about analogous art. [00:30:19] Speaker 00: The petitioner comes back, presents an argument, presents a field of endeavor. [00:30:23] Speaker 00: But the petitioner either doesn't respond or responds in a way where the board can't figure out what their alternative field of endeavor is. [00:30:33] Speaker 00: That doesn't mean the board doesn't analyze the issue, does it? [00:30:38] Speaker 00: Doesn't it mean that then they analyze the issue under the field of endeavor identified and not disputed by the petitioner, both the one identified by the patent owner but not disputed by the petitioner? [00:30:48] Speaker 02: I think that hypothetical is a little bit different from our situation. [00:30:54] Speaker 02: So I think what you're referring to is a situation where we offer a field and they don't dispute it, and therefore that is the field under which the analysis occurs. [00:31:04] Speaker 02: That might be a different situation, but I think in your hypothetical, the argument and thrust of our argument in our POR, in our surreply, and at trial, I know because I gave all of them, was they failed to prove their case. [00:31:17] Speaker 02: That was the [00:31:19] Speaker 00: My argument was that they failed to identify any field of endeavor for either the 792 or Keiko. [00:31:35] Speaker 02: They said something about AVI, but they never said AVI was the field of endeavor. [00:31:39] Speaker 02: They then tried to cannibalize other portions of their petition, which wasn't in their papers, and therefore they can't raise it under Dell versus Acceleron. [00:31:49] Speaker 02: And the board reasonably found that those arguments were forfeit. [00:31:52] Speaker 02: The board could have stopped its analysis. [00:31:55] Speaker 00: Do you think that the board found they forfeited their entire analogous art? [00:32:00] Speaker 00: No. [00:32:00] Speaker 02: No, no. [00:32:00] Speaker 00: That's not what I'm saying. [00:32:01] Speaker 00: OK, what part do you think the board found they forfeited? [00:32:03] Speaker 02: I believe they waved and expressly found a waiver and forfeiture of drafting the level of ordinary skill argument into the field of endeavor. [00:32:13] Speaker 02: And I don't know if I would formally call it. [00:32:16] Speaker 00: There's one other. [00:32:18] Speaker 00: Yeah. [00:32:20] Speaker 02: So I'm not sure if forfeiture is the right word. [00:32:24] Speaker 02: But the board found that the scope statement that we were talking about in my friend's argument, that that related to reasonable pertinence, not field of endeavor. [00:32:35] Speaker 02: And I heard my friend agree that the board's determination in that regard is decided for abuse of discretion. [00:32:42] Speaker 02: It's in a footnote. [00:32:43] Speaker 02: I can pull it. [00:32:44] Speaker 02: I think it's footnote eight. [00:32:45] Speaker 02: I might be a little bit off on that. [00:32:48] Speaker 02: Yeah, footnote eight. [00:32:50] Speaker 02: Footnote eight on appendix 23. [00:32:53] Speaker 01: Thank you. [00:32:54] Speaker 02: So I'm over my time. [00:32:55] Speaker 01: Yeah, you're well past your time. [00:32:56] Speaker 01: Thank you. [00:32:57] Speaker 01: Thank you, your honor. [00:33:02] Speaker 01: Mr. Saunders, since he went over, we'll give you four minutes for rebuttal if you need all of it. [00:33:09] Speaker 03: Thank you, your honor. [00:33:11] Speaker 03: I think to pick up with what Judge Stoll was asking about, the board's finding here with respect to the field of endeavor is saying having failed to identify the field of endeavor, petitioner cannot demonstrate this. [00:33:27] Speaker 03: It doesn't say you didn't put in the evidence. [00:33:29] Speaker 03: It doesn't say you're not telling us why you think Kaku overlaps in structure and function. [00:33:35] Speaker 03: It's saying we need to see that definition of the field of endeavor. [00:33:37] Speaker 03: And then when it turns past that sort of per se rule, what we talked about as the magic words test, I think the discussion here today has sort of deepened the mystery of where we are on what the board said. [00:33:50] Speaker 03: We heard that it's too narrow to say that it's trick play. [00:33:53] Speaker 01: So let me ask you. [00:33:54] Speaker 01: Is the gist of your argument basically that in your position, you identified CACU as relevant choir art because on its face, it also involves encoding and decoding [00:34:06] Speaker 01: media using these file formats, and particularly the file format and issue. [00:34:10] Speaker 01: And that is self-obvious that it's in the field of endeavor. [00:34:14] Speaker 01: They come back and say it's not. [00:34:16] Speaker 01: And instead of addressing your arguments about that, the board made a technical ruling because you didn't specifically define the field of endeavor. [00:34:27] Speaker 01: You lose, even though the merits arguments you're making show exactly why Capsule [00:34:33] Speaker 01: and the patent aren't in the same middle. [00:34:36] Speaker 03: Exactly. [00:34:36] Speaker 03: And the merits arguments align with the way this court has looked to that overlapping structure. [00:34:41] Speaker 03: But if you think back to the board, can you show me where they did that? [00:34:45] Speaker 03: In the board at appendix 20 through 21, [00:34:55] Speaker 03: is where the board sort of reaches the conclusion in that second full paragraph on 21, having failed to identify the field of endeavor of either the 792 Patent of Kaku because you cannot demonstrate that Kaku and the claimed invention are in the same field. [00:35:11] Speaker 01: And in doing that, they go through your reply, what your experts said, and what you've argued. [00:35:17] Speaker 03: But it's what they're looking for in that reply. [00:35:19] Speaker 03: What they're looking for that? [00:35:20] Speaker 01: Where else should they be looking? [00:35:22] Speaker 03: No, no. [00:35:22] Speaker 03: They are looking for us to say the field of endeavor is x. Well, parts of that say that. [00:35:30] Speaker 01: But here's the one thing that gives me a little bit of pause is, yes, if all they said is that you didn't actually specifically say field of endeavor equals x, I think the board would have a problem here. [00:35:43] Speaker 01: But kind of two-thirds of that page [00:35:47] Speaker 01: It says, you didn't meaningfully respond by identifying the field of endeavor. [00:35:52] Speaker 01: Again, I think that would be wrong. [00:35:53] Speaker 01: Or, and explaining why CAPU belonged to that field. [00:35:58] Speaker 01: I mean, don't you at least have to, when it's challenged, explain why it belonged to that field? [00:36:05] Speaker 03: But every field we're talking about, I mean, that explanation is in the petition. [00:36:12] Speaker 03: Are we talking about file form? [00:36:14] Speaker 03: In CACU, we're talking about using the same index of the same well-known file format to playback video. [00:36:20] Speaker 03: It's incredible overlap between the two of them, and they tried to limit it to camera embodiments. [00:36:26] Speaker 03: So what the reply was focused on was saying, listen, CACU's not limited to camera embodiments. [00:36:30] Speaker 03: Here's the teaching. [00:36:32] Speaker 03: The reply is pointing out that the 792 patent itself is admitting that [00:36:37] Speaker 03: that AVI is in the prior art, which is something that this court has considered in its prior cases. [00:36:47] Speaker 03: I'm not sure I know then or know now what their definition is. [00:37:02] Speaker 03: We, I don't think they, we don't see them as sort of having put forward that. [00:37:08] Speaker 01: What would be wrong with us saying that when you are calling on whether or not you identify now with this art in the same field of endeavor, maybe it's not magic words, but you have to at least be clear about what it is you're saying is the field of endeavor. [00:37:27] Speaker 01: Why are we [00:37:28] Speaker 01: So concerned about playing games with maybe it was clear enough or you go back to the petition What would be wrong with you having to just come clean and say here's the field endeavor? [00:37:39] Speaker 03: And it's the same for our priority because there are going to be many many cases where you won't need to define That outer boundary of the field in order to see the overpass [00:37:49] Speaker 03: And so the response here is focusing on the substantive overall. [00:37:56] Speaker 03: But why not just say that? [00:37:57] Speaker 03: Why didn't you have that? [00:37:58] Speaker 03: There's a lot of ground to cover in the reply. [00:38:00] Speaker 03: The reply cycles through this. [00:38:03] Speaker 03: It's something that is admitted prior art in terms of AVI. [00:38:06] Speaker 03: The focus of these claims, the point of novelty, is what was taught by the Zets reference. [00:38:10] Speaker 03: This is just the baseline, the admitted prior art. [00:38:14] Speaker 00: Mr. Saunders, do you think it's fair to say that the burden of proof, I mean, the burden of proof's on the petitioner to show analogous art. [00:38:20] Speaker 00: But maybe that burden and how difficult it is to overcome varies with how far a field the prior art is from the patent and suit. [00:38:27] Speaker 03: I think so. [00:38:28] Speaker 03: And I don't think that if you go back in the Biggio hairbrush toothbrush case, that the argument is focusing on the overlying structures and functions. [00:38:39] Speaker 03: They're arguing that from the center. [00:38:41] Speaker 03: It's very common. [00:38:42] Speaker 03: It's very common in the petitions not to talk about the definition of the field of art.