[00:00:00] Speaker 00:
Our first case for argument today is 18-2431, Unilock versus Cisco.

[00:00:08] Speaker 00:
And it's also case 19-1064.

[00:00:10] Speaker 00:
They were consolidated for oral argument.

[00:00:14] Speaker 00:
Mr. Jackson, please proceed.

[00:00:17] Speaker 04:
May it please the court.

[00:00:19] Speaker 04:
Thank you, Your Honor.

[00:00:21] Speaker 04:
So, pardon me.

[00:00:23] Speaker 04:
The board's decision below, erred by deviating from this court's

[00:00:29] Speaker 04:
decision in the Alma-Prosel patent litigation decision.

[00:00:35] Speaker 04:
In this case, as I'm sure the court is aware, the prior combination is a combination of Hamburg and Lamb.

[00:00:45] Speaker 04:
But that combination was then modified to come up with the generating a conference call request limitation.

[00:00:52] Speaker 04:
And that has to do with the call alias message that is supposed to be automatically generated when a button is pushed on the combined hamburger limb system.

[00:01:04] Speaker 04:
So that particular message is not found in either of the two references.

[00:01:09] Speaker 04:
That was something that was modified to come up with that limitation.

[00:01:14] Speaker 04:
And so in the race condition is the motivation to make that change.

[00:01:22] Speaker 01:
Isn't this something that a person with an ordinary skill in the heart would have done?

[00:01:27] Speaker 04:
Well, the board's decision was required to investigate that and provide evidentiary basis for why that would be the case.

[00:01:35] Speaker 04:
Your case law certainly says that can be shown.

[00:01:38] Speaker 04:
But in the Omaprazl litigation case, this court said APA text was required to show by clearing convincing evidence that a person of skill in the heart would have appreciated the need to include a subcoding in example 12 of the 49

[00:01:52] Speaker 04:
by European application.

[00:01:53] Speaker 04:
So I know the clear and convincing evidence standard doesn't apply here, but there was still a requirement that there be a showing of the motivation to make that change that was known in the art.

[00:02:04] Speaker 04:
And here, that isn't shown.

[00:02:06] Speaker 01:
Putting aside the threshold of that showing, in KSR, we find that the person with ordinary skill can exercise practical experience, practical knowledge,

[00:02:19] Speaker 01:
in arriving at its observations.

[00:02:23] Speaker 01:
Isn't that what happened here?

[00:02:25] Speaker 04:
In this case, Your Honor, it isn't.

[00:02:29] Speaker 04:
It isn't the case here.

[00:02:31] Speaker 04:
I agree, KSR does say that you can use that kind of knowledge in the art, knowledge of a person's skill in the art.

[00:02:38] Speaker 04:
But here, there wasn't a basis to say that this race condition, which is the thing that provided the motivation to make the change,

[00:02:47] Speaker 04:
was known anywhere in the art, and that's what your amaprazole decision requires.

[00:02:52] Speaker 04:
So in addition, a Unilox expert identified basically a mirror image race condition that would occur if you were to follow that logic, showing that the combination as modified

[00:03:09] Speaker 04:
doesn't solve the corollary problem in the ARC.

[00:03:12] Speaker 04:
And that corollary problem, it was explained by Dr. Ulis, and he says that the opposite race condition is where if a chat group member changes their status to an active status, so let's say they were inactive prior, and they change it to an active status at about the same time that the call requester sends the message in.

[00:03:34] Speaker 04:
So the call requester thinks that user is not going to be on the call.

[00:03:39] Speaker 04:
But when that message gets to the server, this is according to the logic laid out by Cisco's expert.

[00:03:45] Speaker 04:
That person would then be not included, rather, in the conference call, even though the stated intent of the combination, the premise of making the combination and the modification, is that all active users would be included in the conference call request message.

[00:04:02] Speaker 04:
What we're talking about, max here?

[00:04:05] Speaker 04:
No, not Max.

[00:04:10] Speaker 04:
This is like the opposite of Max.

[00:04:11] Speaker 04:
So Max was inactive.

[00:04:13] Speaker 04:
Yes, you're right.

[00:04:14] Speaker 04:
Max was inactive and then he becomes active at about the same time that the request comes into the server.

[00:04:20] Speaker 04:
So the user, according to the combination as modified, the user who sent the request, that request would not include Max in the call alias message because he had

[00:04:34] Speaker 04:
in the local device was listed as inactive.

[00:04:38] Speaker 04:
But at the time the request and the conference call is set up, he's now active.

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And according to the stated reason for making the combination, he should have been included in the conference call request.

[00:04:51] Speaker 04:
But he wouldn't be, because the user's data is older than the server data.

[00:04:56] Speaker 04:
That's the theory behind the race condition.

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And so Dr. Ulis explained why

[00:05:03] Speaker 04:
That's a problem that would arise from the combination that isn't explained by Cisco's expert and the board didn't address it either.

[00:05:12] Speaker 04:
And just for the record, that problem is described at exhibit 2001 at paragraph 133.

[00:05:20] Speaker 04:
So that's Dr. Ulysses.

[00:05:21] Speaker 03:
Did the board say that Max wasn't a potential participant?

[00:05:27] Speaker 04:
He was not.

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And that's true at the time that the user

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sends the message to create the call request because that person is using, in this corollary race condition problem, that user is using slightly outdated data, data that doesn't reflect the fact that Max has now become active.

[00:05:44] Speaker 03:
So when the message gets sent... So your argument is that the board made a combination using the server status, which one they should have used

[00:05:56] Speaker 03:
status or whatever it is and therefore didn't achieve the invention because they wouldn't include max.

[00:06:07] Speaker 04:
Really what I'm saying your honor is that Dr. Ulis explained why, let me back up, the premise from Cisco is that the race condition would provide a motivation for implementing the Hamburg LAM system such that the user sends

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the message using data available on the user's phone, which may be slightly outdated.

[00:06:29] Speaker 04:
That's the premise.

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And what Dr. Euless said is that that may solve one situation, but it creates a problem in a different situation.

[00:06:39] Speaker 04:
And so those offsetting problems would net out as not being a motivation.

[00:06:44] Speaker 03:
Did the board know why on this race situation it's a motivation?

[00:06:49] Speaker 03:
Yes.

[00:06:49] Speaker 03:
Yes, sure.

[00:06:50] Speaker 03:
Where did it do that?

[00:06:54] Speaker 03:
Which case are we looking at here?

[00:06:56] Speaker 04:
Yeah, by the way, just for the record, I am looking at the 18-2431 case.

[00:07:03] Speaker 04:
So the arguments are the same in the two cases, and the evidence is... What's the case number here?

[00:07:10] Speaker 04:
18-2431.

[00:07:11] Speaker 04:
This is the appeal.

[00:07:15] Speaker 03:
Oh, 18-2431.

[00:07:17] Speaker 03:
Okay, so where is the board signage?

[00:07:19] Speaker 04:
Your Honor, I don't have that page handy right now.

[00:07:22] Speaker 04:
If I could get that to you while the other side is presenting, I'll be happy to say that.

[00:07:27] Speaker 03:
It was hard to discuss this without knowing exactly what the board said.

[00:07:31] Speaker 03:
Go ahead.

[00:07:32] Speaker 03:
I'm sorry.

[00:07:32] Speaker 00:
One of the questions I have for you, though, is Cisco's expert on page 772 of the appendix

[00:07:41] Speaker 00:
explained the reason a placida would use call alias message as opposed to a call message is to avoid race conditions between different statuses, information available on the mobile station, the quick message, for example.

[00:07:53] Speaker 00:
And he goes through and explains, why isn't that substantial evidence to support the board's finding about motivation?

[00:07:59] Speaker 00:
You've got an expert testifying exactly on the point, explaining the reason.

[00:08:05] Speaker 00:
Why isn't that sufficient?

[00:08:07] Speaker 04:
So, Your Honor, in the Amaprazl decision,

[00:08:10] Speaker 04:
They had an expert that backed up their reading of the references, but this court found that that was inadequate.

[00:08:17] Speaker 04:
You had to find that motivation in the references themselves that were used.

[00:08:21] Speaker 00:
So, I mean, here in... That's not the correct statement of our current law.

[00:08:28] Speaker 00:
I mean, the expert can clearly provide the motivation from the skilled artisan based on the references.

[00:08:35] Speaker 00:
It doesn't have to be expressly disclosed in any of the references.

[00:08:40] Speaker 04:
Well, this is from 2008, Your Honor.

[00:08:42] Speaker 04:
I'm just reading the case law as we cited there in our brief.

[00:08:45] Speaker 04:
And down below the quote I gave you a moment ago, it says that to overcome the shortcomings of the prior reference, Apotex relies on testimony from Dr. Brock that a person of skill and error would understand the problem.

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But ultimately, this court found that that was inadequate.

[00:09:03] Speaker 04:
So I mean, I'm just relying on this decision.

[00:09:06] Speaker 04:
This decision has not been influenced.

[00:09:09] Speaker 00:
If I conclude that our law does not require that the reason be expressed in the references, but rather a skilled artisan can provide the reason, does that sort of end your case?

[00:09:21] Speaker 04:
That would deal with this argument.

[00:09:24] Speaker 04:
That's certainly true.

[00:09:29] Speaker 04:
So to your honor's question, Judge Stike, the issue that Dr. Eulis was dealing with was pointing out a hole basically in the theory for making the combination and the modification.

[00:09:41] Speaker 04:
I don't understand.

[00:09:43] Speaker 03:
The combination is with lamb and call alias, and the race condition has to do somehow

[00:09:53] Speaker 03:
with using call alias instead of call?

[00:09:56] Speaker 03:
It has to do with the combination of call alias and land.

[00:10:03] Speaker 04:
I'm into my rebuttal time.

[00:10:07] Speaker 04:
Sorry, Your Honor, but it's a combination of Hamburg's call alias message and a modification of that call alias message that's being relied upon

[00:10:21] Speaker 04:
that's relying on the race condition to make that modification in Cisco's theory of the invalidity combination, Your Honor.

[00:10:29] Speaker 00:
I would like to... We will save the rest of your time for rebuttal, Mr. Jackson.

[00:10:33] Speaker 02:
Thank you, Your Honor.

[00:10:34] Speaker 00:
Mr. Foster, please proceed.

[00:10:37] Speaker 02:
Thank you, Your Honor.

[00:10:38] Speaker 02:
Theodore Foster for Appellee Cisco Systems.

[00:10:41] Speaker 02:
I'd just like to clarify that the race condition concept was not

[00:10:45] Speaker 02:
providing the motivation to combine.

[00:10:46] Speaker 02:
The motivation to combine is discussed by the board, the appendix page 23, I believe.

[00:10:52] Speaker 00:
Well, they don't specifically, it's 23 and 24, they don't specifically mention the race condition, right?

[00:10:58] Speaker 02:
That's correct.

[00:10:58] Speaker 02:
The board does not use the phrase race condition in its decision anywhere.

[00:11:02] Speaker 00:
But isn't the expert testimony I read, doesn't that provide a motivation?

[00:11:07] Speaker 02:
It provides motivation to combine the references in a particular way.

[00:11:11] Speaker 02:
The high-level motivation to combine is to improve the user interface, to let the user know that conference calling is available, and to make that more accessible.

[00:11:19] Speaker 02:
That's the general motivation to combine.

[00:11:22] Speaker 02:
The motivation to use the call alias message is to avoid the appearance of malfunctioning in the system.

[00:11:30] Speaker 02:
Instead of the call message?

[00:11:32] Speaker 02:
Instead of the call message.

[00:11:33] Speaker 02:
That's correct, Judge Dyke.

[00:11:35] Speaker 02:
And the board discusses that at appendix page 28.

[00:11:40] Speaker 02:
And I believe that may be where Mr. Jackson points the court when he comes back to discuss the race condition again.

[00:11:48] Speaker 02:
If there are no other questions about motivation to combine a race condition, I'll speak my time.

[00:11:53] Speaker 00:
Well, I mean, the rest of the motivation is just in the expert report on 770, 771.

[00:11:57] Speaker 00:
I mean, I recognize your point that there's motivation to combine call alias and LAM, and then the rest, right?

[00:12:06] Speaker 00:
Isn't it just the expert testimony on 771?

[00:12:09] Speaker 02:
Yes, Your Honor.

[00:12:11] Speaker 02:
Dr. Ho discussed that, pages 771, and then continue on to 772, other examples on 773.

[00:12:18] Speaker 02:
Yes.

[00:12:19] Speaker 02:
Okay.

[00:12:22] Speaker 02:
And regarding the idea of leaving the process as a manual process.

[00:12:30] Speaker 00:
Okay.

[00:12:30] Speaker 00:
Well, I mean, I think

[00:12:33] Speaker 00:
Probably we don't have to go into a lot of detail on that.

[00:12:35] Speaker 00:
Council suggested that if we understand our precedent as permitting an expert to provide the motivation, and it's not required to be expressed in the references, and he sort of admitted that this argument goes away, do you have anything you'd like to say about that legal point?

[00:12:51] Speaker 00:
I mean, do you believe that our precedent requires that motivation be articulated expressly in references?

[00:12:57] Speaker 02:
It is my understanding that it is not required.

[00:13:00] Speaker 02:
I believe this court reiterated that, for example, in the time since the briefing in the Intel versus PACT case, which came down last year, which reiterated that motivation to combine consistent with KSR can come from the posita or the ordinary skill understanding.

[00:13:19] Speaker 00:
I mean, it may have been the case

[00:13:21] Speaker 00:
pre-KSR that we had required motivation to be expressly articulated in one of the references.

[00:13:27] Speaker 00:
But post-KSR, I don't know how we could maintain that rule of law.

[00:13:31] Speaker 00:
Do you agree with that?

[00:13:33] Speaker 02:
I agree that this court would not be able to make such a finding or a holding.

[00:13:40] Speaker 00:
It would be inconsistent with KSR?

[00:13:41] Speaker 02:
It would be inconsistent with KSR.

[00:13:43] Speaker 02:
Are there no other questions?

[00:13:46] Speaker 02:
I'll save my time.

[00:13:46] Speaker 02:
Thank you.

[00:13:47] Speaker 00:
Thank you, Mr. Foster.

[00:13:48] Speaker 04:
So, Your Honor, I also wanted to touch on the software programming issue that the Board had to come up with the generating a conference call request limitation, and this is where I started in the wrong place earlier, but I wanted to come back to this.

[00:14:05] Speaker 04:
To come up with that limitation, they relied on sort of common knowledge, if you will, in the art.

[00:14:11] Speaker 04:
And this has to do with the software programming.

[00:14:13] Speaker 04:
In particular, this discussion appears in the final written decision at APPX 26.

[00:14:20] Speaker 04:
But under this court's decision in DSS technology, which we cited in the brief, relying on that kind of common knowledge is limited to very, very

[00:14:34] Speaker 04:
a very small set of cases.

[00:14:35] Speaker 04:
In particular, this court said, we have invoked common sense to fill in a missing limitation only when the limitation in question was unusually simple and the technology particularly straightforward.

[00:14:47] Speaker 04:
And third, our cases repeatedly warned that references to common sense, whether to supply motivation to combine or missing limitation, cannot be used

[00:14:56] Speaker 04:
as a wholesale substitute for reasoned analysis and evidentiary support when dealing with the missing limitation from the prior art.

[00:15:03] Speaker 04:
And Your Honor, we just submit that the board's decision didn't adequately, first of all, didn't establish that the technology was, quote, unusually simple or particularly straightforward.

[00:15:15] Speaker 04:
It didn't consider those two issues at all, which are the threshold issues for relying on knowledge and the art to fill in a missing limitation.

[00:15:23] Speaker 04:
So we think the board erred with respect to that point.

[00:15:28] Speaker 04:
And the board also didn't explain how the combination of Lamb and Hamburg would work, given the complete teachings of Hamburg in particular.

[00:15:40] Speaker 04:
Hamburg discloses the two groups and that a user, particularly a user, can be in both groups simultaneously.

[00:15:45] Speaker 04:
So if that user wants to implement or request a conference call, the board didn't explain how that combined system would know

[00:15:53] Speaker 04:
which group to create the conference call for.

[00:15:56] Speaker 04:
So it's just not addressed.

[00:15:59] Speaker 04:
In addition, we've explained to think in detail in the briefing about how the combination of Hamburg and LAM eliminate or change fundamental principles of operation of Hamburg in particular.

[00:16:14] Speaker 04:
So in Hamburg, there are two basic messages, as your honors are aware.

[00:16:19] Speaker 04:
There's a call message, which automatically creates a conference call.

[00:16:23] Speaker 04:
at the server.

[00:16:24] Speaker 04:
The call message is sent.

[00:16:25] Speaker 04:
The server looks to see who's in the group and creates a conference call.

[00:16:31] Speaker 04:
In the call alias message, the user specifies who to include in that conference call request, and then that's sent to the server, which subsequently creates the conference call.

[00:16:41] Speaker 04:
So there's the automatic call message.

[00:16:43] Speaker 04:
There's the manual call alias message.

[00:16:46] Speaker 04:
And so the manual feature was an important part of the Hamburg Reference.

[00:16:50] Speaker 04:
In fact, I think the call alias message is discussed at least as much as the call message, if not more.

[00:16:56] Speaker 04:
So that manual ability is an important feature.

[00:17:01] Speaker 01:
Why does that make a difference?

[00:17:02] Speaker 01:
It seems to me that in either case, it's the user that's defining who the conference call participants are.

[00:17:09] Speaker 04:
Not quite exactly, Your Honor.

[00:17:11] Speaker 04:
So in the Hamburg Reference itself,

[00:17:14] Speaker 04:
the user manually selects from a list of participants of the group.

[00:17:18] Speaker 04:
It doesn't have to be an active person, and you don't have to include all the active participants in the group.

[00:17:23] Speaker 04:
You can leave someone out.

[00:17:25] Speaker 04:
In fact, I think in Hamburg, that situation is actually described.

[00:17:36] Speaker 04:
This is on page four of Hamburg at roughly lines 27 to 32.

[00:17:40] Speaker 04:
In the group,

[00:17:44] Speaker 04:
G2 is John, and in this call alias message that's sent, John is not included.

[00:17:50] Speaker 04:
So the user has that ability to, John is logged in, he's active.

[00:17:54] Speaker 04:
The user has the ability to say, well, I don't need John for this conference call, so I'm going to leave them out.

[00:17:59] Speaker 04:
In the modified combination, that ability isn't there.

[00:18:03] Speaker 04:
If the person is active, John in this case, he would be included in the conference call request.

[00:18:09] Speaker 04:
So those two combinations don't work.

[00:18:14] Speaker 04:
don't serve the purpose of the original Hamburg reference.

[00:18:18] Speaker 00:
And I see my time has expired, Your Honor.