[00:00:00] Speaker 00:
Our next case for argument is 22-1998, Vertec Vision versus Assembly Guidance.

[00:00:08] Speaker 00:
No, no, don't sit there.

[00:00:10] Speaker 00:
I was waiting for you.

[00:00:10] Speaker 03:
I apologize, Your Honor.

[00:00:13] Speaker 03:
Good morning.

[00:00:14] Speaker 03:
May it please the Court.

[00:00:16] Speaker 03:
The decision by the Patent Trial and Appeal Board finding certain claims unpatentable in grounds one and three can and should be reversed for at least three reasons.

[00:00:27] Speaker 03:
First,

[00:00:28] Speaker 03:
The board entered an outcome-oriented and improper claim construction for the term identifying a pattern, specifically the term pattern within it.

[00:00:38] Speaker 03:
Instead of applying the plain and ordinary meaning of that term as it said it was going to do, it instead injected into that term an assumption about how a pattern is identified.

[00:00:49] Speaker 03:
an assumption that was contrary to the only expert testimony on that issue, and that was not based on any of the intrinsic or extrinsic evidence that was that issue.

[00:01:01] Speaker 03:
Second.

[00:01:01] Speaker 03:
The board failed to recognize that the steps of identifying a pattern and scanning a target as directed by the identified pattern are separate and distinct steps, where first you have to identify a complete pattern, and then you have to scan the targets as directed by that pattern.

[00:01:22] Speaker 03:
The only findings that were made by the board were that a single target was scanned in any of the cited prior articles.

[00:01:31] Speaker 03:
Third, and finally, in underlying both of those initial two findings, the board here improperly shifted the burden with respect to persuasion when it comes to the issue of obviousness in this case.

[00:01:45] Speaker 03:
The board did so by making findings on behalf of the petitioner that the petitioner never asserted and placing itself in the position of an expert finding, making expert determinations with respect to the

[00:02:01] Speaker 03:
with respect to the prior art and the Klin construction that then became a core part of the board's decisions.

[00:02:09] Speaker 03:
Because those decisions shifted the burden of persuasion, the board's decisions were in error.

[00:02:16] Speaker 03:
Now, I'd like to focus first

[00:02:20] Speaker 01:
Can I ask you, on your second argument, just briefly, where did you make that identifying a step needs to be separate and distinct?

[00:02:28] Speaker 01:
Where did you make that argument both below?

[00:02:31] Speaker 03:
The arguments were made in the patent owner preliminary response and in the response to the institution.

[00:02:40] Speaker 01:
Would you actually have a citation?

[00:02:41] Speaker 03:
I don't, Your Honor.

[00:02:42] Speaker 03:
And not off the top of my head, but I can find that for you.

[00:02:45] Speaker 01:
In both the preliminary response and your brief?

[00:02:48] Speaker 01:
The patent brief?

[00:02:49] Speaker 03:
Yes.

[00:02:51] Speaker 03:
And those arguments were made, Your Honor, based off of the

[00:03:00] Speaker 03:
argument, the primary argument, that these references don't cite, identify a pattern.

[00:03:06] Speaker 03:
And the arguments that were made in the preliminary response and then in the response were both made based off of that argument that because there isn't a pattern identified, you then don't have any pattern to then be scanned based on the language of the claims.

[00:03:23] Speaker 00:
So let me turn back to the- Do you understand the board in this case to have relied on, and help me pronounce this name right, is it Dr. Mohazab?

[00:03:33] Speaker 03:
Mohazab, yes.

[00:03:34] Speaker 00:
Mohazab?

[00:03:34] Speaker 00:
Do you understand the board to have relied on his testimony in reaching the obviousness conclusions that it reached?

[00:03:42] Speaker 03:
They sort of

[00:03:44] Speaker 03:
They do and they don't.

[00:03:46] Speaker 03:
They identify the petitioner's position in its petition regarding the motivation to combine.

[00:03:56] Speaker 03:
The petition itself, and as you may have seen from the briefing below, Dr. Mahasab's original declaration here was attorney drafted, and he sort of reviewed it and signed off on it.

[00:04:08] Speaker 03:
So the petition mimics his declaration almost exactly.

[00:04:13] Speaker 00:
And in that petition cites his declaration.

[00:04:17] Speaker 03:
Absolutely.

[00:04:17] Speaker 00:
In those places as the evidentiary support for their arguments.

[00:04:22] Speaker 03:
Correct.

[00:04:22] Speaker 03:
Yes, your honor.

[00:04:25] Speaker 00:
So I guess how is it you started by saying that they do and they don't?

[00:04:30] Speaker 00:
Do you understand the board's decision to be predicated on accepting in part Mr. Moha's declaration

[00:04:39] Speaker 00:
as evidence that supported the conclusion they reached.

[00:04:42] Speaker 03:
His declaration, yes, Your Honor.

[00:04:44] Speaker 00:
And you moved to exclude that declaration below, right?

[00:04:49] Speaker 00:
Yes, Your Honor.

[00:04:51] Speaker 00:
And you challenged the reliability of it, and you brought that challenge here on appeal to us?

[00:04:59] Speaker 03:
Yes, Your Honor.

[00:05:00] Speaker 00:
Why don't you address that issue?

[00:05:01] Speaker 00:
Why is it that you think the board erred or, in this case, abused its discretion by entertaining Dr. Mohazab's declaration?

[00:05:13] Speaker 03:
Your Honor, they abuse their discretion here because Dr. Mohazab's declaration was really a ratification of the lawyer's articulation of their position.

[00:05:26] Speaker 03:
He testified in his deposition that he spent five total hours reviewing the document.

[00:05:32] Speaker 03:
Actually, I'm sorry, five total hours in preparation in total prior to his deposition.

[00:05:38] Speaker 03:
So that was five total hours to review all the prior art, review the file history, review a declaration that was, I believe.

[00:05:45] Speaker 02:
Does that include discussing that five hours?

[00:05:48] Speaker 02:
Does that include discussing with the attorney what the contents of the declaration would be?

[00:05:53] Speaker 02:
He testified that he did speak with the attorney I mean Look, I mean we know the attorneys help draft these these expert declarations and as long as they're based upon What the expert thinks and says?

[00:06:10] Speaker 02:
You know they're still allowed to help draft them and

[00:06:15] Speaker 02:
And I know you want to emphasize this number five, but five hours.

[00:06:19] Speaker 02:
But is that reviewing the declaration after the attorney drafted it, exclusive of how long he spent talking to the attorney?

[00:06:27] Speaker 03:
His testimony was that he had spent five total hours in total.

[00:06:31] Speaker 03:
So that was prepping for his deposition.

[00:06:34] Speaker 03:
That was reviewing all the documents and the file history.

[00:06:37] Speaker 02:
I thought he spent a lot more time prepping for his deposition.

[00:06:40] Speaker 02:
I thought it was five hours reviewing this declaration before signing it.

[00:06:45] Speaker 01:
and then he says nine hours to prep for the deposition, does he not?

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

[00:06:49] Speaker 03:
I apologize, Your Honor.

[00:06:50] Speaker 03:
Yes.

[00:06:51] Speaker 03:
I'm mixing those two.

[00:06:53] Speaker 02:
Well, I know you want to focus on this five hours.

[00:06:55] Speaker 02:
I want to know if that five hours was all that he spent on this declaration, or if he spent hours and hours sitting down with the attorney talking about this and going through things, and the attorney took notes and then

[00:07:09] Speaker 02:
wrote the declaration, and then he spent five hours reviewing it.

[00:07:13] Speaker 02:
Because those two things are different stories for me.

[00:07:16] Speaker 02:
And I don't know what the answer is, because it doesn't, to me, say in the record whether that five hours is inclusive or exclusive of prior discussions with the attorney.

[00:07:25] Speaker 03:
Do you know?

[00:07:26] Speaker 03:
I don't think the record reflects the specific division you're looking for, Your Honor.

[00:07:32] Speaker 00:
Well, but didn't you, in the deposition, ask him how much

[00:07:38] Speaker 00:
time he had spent on this matter, and he said five hours?

[00:07:43] Speaker 01:
Yes, that is what he said.

[00:07:44] Speaker 00:
So that five hours, I mean, that seems like it's got to be a total, right?

[00:07:51] Speaker 03:
I think it is, Your Honor.

[00:07:52] Speaker 03:
Yes, and that is accurate.

[00:07:54] Speaker 03:
I'm trying to address Judge Hughes's question, which is, of those five hours, was it four and a half discussing

[00:08:02] Speaker 03:
specifically his conclusions, or was it a half an hour of discussion and four and a half hours of reviewing the documents?

[00:08:13] Speaker 03:
The reality here is that you've seen the scope of the record here, and that's a pretty significant amount of paper.

[00:08:21] Speaker 01:
Let me push back a little bit on that.

[00:08:27] Speaker 01:
He's in industry, right?

[00:08:30] Speaker 01:
He's already familiar with this technology.

[00:08:33] Speaker 01:
The prior art was presented to him by the attorney.

[00:08:38] Speaker 01:
He didn't have to go out and find it.

[00:08:40] Speaker 01:
And as you noted, he admits that the attorney drafted the declaration.

[00:08:46] Speaker 01:
The board, which is the fact finder here, says five hours was not necessarily insufficient time for the review.

[00:08:53] Speaker 01:
How do we as an appellate court say that that's a clearly erroneous finding?

[00:08:58] Speaker 03:
I understand the challenge that you're talking about, Judge Stark.

[00:09:03] Speaker 03:
And I don't think the core issues in this appeal really turn on whether or not Dr. Mahasab's declaration comes in.

[00:09:14] Speaker 03:
Because if you look at the declaration, especially with the issues of motivation to combine,

[00:09:19] Speaker 03:
and addressing the substantive issues such as whether or not the proper construction of the word pattern or the term patterns apply.

[00:09:29] Speaker 00:
Just to be clear, you think if Dr. Mohassab doesn't come in, you win.

[00:09:35] Speaker 00:
But what you're arguing now is, but there are other ways we can win if you want to avoid that issue.

[00:09:39] Speaker 00:
Is that correct?

[00:09:40] Speaker 00:
Yes.

[00:09:40] Speaker 00:
OK, I just want to make sure you're not saying you don't think the issue of Dr. Mohassab's deposition is important or not.

[00:09:48] Speaker 00:
dispensing with the issue.

[00:09:50] Speaker 03:
Not at all, Your Honor.

[00:09:51] Speaker 03:
As a matter of fact, we think that the instruction from this court and the instructions in front of the Patent Tribunal Appeal Board emphasize the importance of having an independent expert that's going to be providing truly distinct and separate opinions that the board can then rely upon.

[00:10:08] Speaker 03:
And if we have a situation like this where at least all the facts don't add up in terms of an independent expert.

[00:10:13] Speaker 02:
I'm not sure what you mean when you say independent expert.

[00:10:16] Speaker 02:
Don't you just mean?

[00:10:18] Speaker 02:
that the party's expert is qualified.

[00:10:20] Speaker 02:
I mean, they're never going to be independent of the party.

[00:10:22] Speaker 02:
I mean, if it's independent, then PTAB would have to.

[00:10:25] Speaker 02:
I see you're into your rebuttal time.

[00:10:26] Speaker 02:
Can I just ask you this?

[00:10:28] Speaker 02:
Because it's in both of the obvious combinations on the motivation to combine the main ones that you're appealing.

[00:10:36] Speaker 02:
And let's just assume we disagree with you on all your other stuff, on the claim construction and whether these disclose and not.

[00:10:42] Speaker 02:
You know, the claim construction's OK, the prior art references disclose everything in your patent, and it comes down to motivation combined.

[00:10:51] Speaker 02:
And speaking of the Briggs and Bridges combination, on page 47 of the board's decision, they appear to find that even without the expert's testimony, that the prior art itself discloses a motivation to combine.

[00:11:09] Speaker 02:
Why isn't that sufficient whether or not we let

[00:11:12] Speaker 02:
the expert in.

[00:11:14] Speaker 03:
Well, let's assume I'm not sure that I agree with the decision from the board or the comment from the board on that page.

[00:11:23] Speaker 03:
But that would be a new motivation to combine that wasn't asserted by the petitioner.

[00:11:28] Speaker 03:
So there's a problem.

[00:11:29] Speaker 02:
OK, let's assume we disagree on that.

[00:11:31] Speaker 03:
OK.

[00:11:32] Speaker 03:
It is possible.

[00:11:33] Speaker 02:
There's substantial evidence for this conclusion that

[00:11:39] Speaker 02:
that because I think it's Briggs provides alternatives of angular and 3D, that that itself would lead to a motivation to combine Briggs and Bridges.

[00:11:51] Speaker 03:
I think the answer to your question is it

[00:11:53] Speaker 03:
assuming that it's okay for the board to raise new arguments and that they look at the references themselves, the motivation can come from the references themselves.

[00:12:01] Speaker 02:
Well, I'm not sure what the new argument here is.

[00:12:04] Speaker 02:
What was their view?

[00:12:05] Speaker 02:
What was the expert's view on why you combine these?

[00:12:08] Speaker 03:
The expert's view was just a pure

[00:12:10] Speaker 03:
knowledge of the existence of these two elements itself, and then a conclusory statement from their expert saying that it would be motivated to combine these two elements.

[00:12:21] Speaker 02:
That sounds an awful lot like what the board just said here.

[00:12:24] Speaker 02:
This is based on a reading of the patents rather than relying on the expert.

[00:12:28] Speaker 02:
It's pretty thin.

[00:12:30] Speaker 03:
I think it's a pretty thin theory in terms of motivation to combine.

[00:12:34] Speaker 03:
I don't think it meets with the KSR requirements of having.

[00:12:38] Speaker 02:
Well, that's what I'm asking.

[00:12:40] Speaker 02:
Why doesn't it meet with KSR?

[00:12:42] Speaker 02:
And why isn't it just because this does not seem particularly complicated?

[00:12:48] Speaker 02:
And as the board said, there is a limited number of possibilities.

[00:12:52] Speaker 02:
Why isn't it just common sense and common knowledge that you would try 3D rather than Angular?

[00:13:00] Speaker 03:
Well, I'm not sure it's true that it's a limited number of possibilities.

[00:13:03] Speaker 03:
I also think in this circumstance, combining... So just to be clear, I want to clarify that in KSR language.

[00:13:08] Speaker 00:
KSR requires that the reference make clear that there is a finite number of possibilities.

[00:13:14] Speaker 00:
And you're saying no references here make that clear, nor did the expert testify to that effect.

[00:13:19] Speaker 03:
That's correct, Your Honor.

[00:13:20] Speaker 00:
OK, keep going.

[00:13:22] Speaker 03:
I see I've got about a minute and a half left.

[00:13:25] Speaker 01:
One more.

[00:13:25] Speaker 01:
When you said earlier

[00:13:28] Speaker 01:
the board relied in part on Dr. Mo Hazab and partly didn't rely on him.

[00:13:33] Speaker 01:
Where does motivation to combine fall in light of what Judge Hughes read to you?

[00:13:37] Speaker 01:
Did the board rely on the expert for motivation to combine or not?

[00:13:41] Speaker 03:
It did in terms of his declaration.

[00:13:45] Speaker 03:
But what's important is that in the deposition, there was some additional testimony that was given that the board referenced and then discarded appropriately because it was provided in response to inappropriate questions.

[00:13:57] Speaker 01:
So you would have us read when the board says, we find the support provided in the petition to be sufficient, even absent additional support by petitioners declarant, that they're only excluding what the declarant said

[00:14:10] Speaker 01:
in the deposition.

[00:14:12] Speaker 01:
Yes, I believe so.

[00:14:12] Speaker 01:
But they are relying on what the experts said in the petition.

[00:14:16] Speaker 03:
For what it's worth, yes.

[00:14:17] Speaker 03:
Thank you.

[00:14:19] Speaker 03:
I'll reserve my remaining.

[00:14:21] Speaker 00:
We'll restore your rebuttal.

[00:14:22] Speaker 00:
Thank you, Your Honor.

[00:14:30] Speaker 00:
Mr. Helton, please proceed.

[00:14:32] Speaker 04:
May it please the Court, Your Honors.

[00:14:33] Speaker 04:
We agree with the board's finding regarding grounds one and three in the inter partes

[00:14:40] Speaker 02:
Review position we believe that the board properly construed the place jump right to that motivation to an issue that I was talking about I am a little confused about what the board was doing there because I mean ksr does allow a somewhat relaxed Look at obviousness, but it still has to show the references have to show not just how you would combine them But why you would combine them and where?

[00:15:07] Speaker 02:
in any of this record, is that why answered?

[00:15:12] Speaker 04:
The board found it in the art.

[00:15:14] Speaker 04:
The art is very close.

[00:15:16] Speaker 04:
And as was pointed out, the art had the bridge.

[00:15:19] Speaker 02:
Where?

[00:15:19] Speaker 02:
So point me to the art and show not how it can combine.

[00:15:23] Speaker 02:
Because that's clear.

[00:15:24] Speaker 02:
I mean, it's not hard to sub in the Angular for the 3D for the Angular.

[00:15:29] Speaker 02:
But do those statements in the patent that talk about those options explain why you would do it, rather than just provide them as options?

[00:15:40] Speaker 04:
Yes, it provides different levels of resolution.

[00:15:43] Speaker 00:
Why don't you take us to the reference and show us where it is?

[00:15:47] Speaker 04:
To the reference itself?

[00:15:48] Speaker 00:
Because I think that she's asking a very precise question.

[00:15:51] Speaker 04:
Sure, absolutely.

[00:15:51] Speaker 00:
Where in the art is this?

[00:15:53] Speaker 00:
So show us exactly where in the art this is.

[00:16:01] Speaker 02:
And if there's anything else in the record that shows the why, I'd be happy to hear it, but I don't think there is.

[00:16:06] Speaker 02:
This is what the board relied on.

[00:16:08] Speaker 02:
It relied on the statement.

[00:16:10] Speaker 02:
I'm looking at the rigs and bridges thing.

[00:16:12] Speaker 02:
I think it's stronger than the other one, which is, I think, not good for you.

[00:16:16] Speaker 02:
But if you have a why and the other combination, that's fine.

[00:16:22] Speaker 02:
I just, I don't see any discussion of why.

[00:16:28] Speaker 02:
I just see, well these are two options that were in the art, so it would be easy to swap one in for another.

[00:16:34] Speaker 02:
But I don't think that's good enough under KSR.

[00:16:49] Speaker 04:
Findings.

[00:16:52] Speaker 04:
The reference states that by using two cameras in this... What's the page number?

[00:16:56] Speaker 04:
Sorry.

[00:16:56] Speaker 04:
This is on the Joint Appendix 757.

[00:17:10] Speaker 04:
Which paragraph?

[00:17:11] Speaker 04:
49.

[00:17:12] Speaker 04:
Okay.

[00:17:16] Speaker 02:
Where in the paragraph?

[00:17:17] Speaker 04:
So reading each camera.

[00:17:18] Speaker 04:
So this first is talking about the

[00:17:22] Speaker 04:
De-single camera and says In this way the retroreflector images are readily distinguishable from the background photosensitive array This is in the center about the center of paragraph 49 But then it moves to by using two cameras by using two cameras a little farther down in this way

[00:17:48] Speaker 04:
The principle of triangulation can be used to find the three-dimensional coordinates of any SMR 48 within the field of view of the camera.

[00:17:55] Speaker 04:
In addition, the three-dimensional coordinates of the SMR can be monitored as the SMR 48 is moved from point to point.

[00:18:01] Speaker 04:
The use of two cameras for this purpose is described in another reference that's cited here.

[00:18:07] Speaker 04:
So the use of two cameras allows the moving, and it provides the more accurate information.

[00:18:14] Speaker 02:
OK, but this is my problem.

[00:18:16] Speaker 02:
This just says,

[00:18:18] Speaker 02:
What two cameras do, what you just added that the use of two cameras is more accurate, where does it say that?

[00:18:26] Speaker 04:
I don't see that language literally.

[00:18:28] Speaker 04:
I see it in the monitoring of the SMR being moved, because it allows that functionality.

[00:18:34] Speaker 02:
I think that's a problem for you.

[00:18:35] Speaker 02:
Because the why is this is more accurate.

[00:18:39] Speaker 02:
But I don't think more efficient, or it works better, or something like that.

[00:18:43] Speaker 02:
But I don't see that anywhere.

[00:18:44] Speaker 02:
And the board certainly didn't cite anything to say that.

[00:18:47] Speaker 04:
No, it did not, your honor.

[00:18:50] Speaker 04:
But I think those skilled in the art would know that.

[00:18:54] Speaker 02:
How are you to know this?

[00:18:55] Speaker 02:
This is the problem in these cases is, I don't even think your expert says that.

[00:19:00] Speaker 02:
Even if we were to let it in, which I think it's pretty suspect the way this report was generated.

[00:19:06] Speaker 02:
But even if we were to let it in, I don't think the expert says it would be more efficient, or it would work better, or this is why you would do it.

[00:19:14] Speaker 04:
Does he?

[00:19:14] Speaker 04:
There are the two alternatives provided in the reference.

[00:19:18] Speaker 02:
Again, this is the problem.

[00:19:19] Speaker 02:
And I don't mean to go over this again and again.

[00:19:22] Speaker 02:
But just saying there are two alternatives doesn't explain why you would go from one to the other or why you would combine the references in that way to do it.

[00:19:32] Speaker 02:
And you articulated a good reason, which is it's more accurate.

[00:19:36] Speaker 02:
And that's throughout the arguments and stuff.

[00:19:40] Speaker 02:
But there's nothing in any of this record that says it would be more accurate.

[00:19:44] Speaker 02:
That's why you would do it.

[00:19:45] Speaker 02:
Is there?

[00:19:46] Speaker 04:
I understand.

[00:19:47] Speaker 04:
The board found on substantial evidence that it was sufficient there.

[00:19:52] Speaker 04:
They didn't point to a particular statement in the reference.

[00:19:55] Speaker 02:
But they didn't even say that you would combine them because it would be more accurate, did they?

[00:19:59] Speaker 04:
No.

[00:19:59] Speaker 04:
They presented it as because there were

[00:20:01] Speaker 04:
two alternatives for achieving this.

[00:20:03] Speaker 04:
I know that opposing counsel said there are other ways, but there's nothing in the record about other ways.

[00:20:08] Speaker 04:
I mean, either you're going to find three-dimensional coordinates, or you're going to find angular directions.

[00:20:13] Speaker 04:
There's no other way in the record or any other way we've heard of that we can do that.

[00:20:20] Speaker 04:
So there really are those two alternatives.

[00:20:24] Speaker 02:
I don't think that helps you.

[00:20:26] Speaker 02:
All that does is tell me the why.

[00:20:27] Speaker 02:
It still doesn't tell me, or the how, it still doesn't tell me the why.

[00:20:33] Speaker 02:
But this is this is this I'm just want to make sure this is the best you've got for me.

[00:20:37] Speaker 02:
This is this is what the board relied on in breaks and you don't buy any references let's assume that we don't throw out your experts declaration is there anything in it that goes in more detail into the why the expert report talks about.

[00:20:54] Speaker 04:
these being known tools to use in the industry, and that there would have been knowledge, as Council for Paladins noted.

[00:21:01] Speaker 00:
But you have to agree, right, that just because a bunch of things are known in the industry, I mean, God, that would turn obviousness on its head.

[00:21:09] Speaker 00:
I mean, hindsight would run rampant if just the mere fact of things being known was sufficient to then piece them together without that why piece.

[00:21:18] Speaker 04:
Agreed, Your Honor.

[00:21:20] Speaker 00:
But I think you're right.

[00:21:21] Speaker 00:
I think that he did just say they're known.

[00:21:24] Speaker 00:
Is that fair?

[00:21:25] Speaker 00:
Is that a fair assessment?

[00:21:27] Speaker 04:
Yes.

[00:21:28] Speaker 04:
He said they were recognized.

[00:21:29] Speaker 04:
Yes.

[00:21:29] Speaker 04:
That is a fair assessment.

[00:21:32] Speaker 04:
But as KSR dictates, where there are a limited number of things that can be used that the court should look to, whether it would have been obvious to combine these things, where there are a limited number of options and ways you can do things.

[00:21:46] Speaker 00:
But wouldn't we have to hear if they

[00:21:48] Speaker 00:
Wouldn't we have to hear from your expert on that?

[00:21:52] Speaker 00:
At this point, there's a reference that discloses two things.

[00:21:58] Speaker 00:
That are different from each other and there's no doubt that there are differences in the way they operate and how they function I think you're probably right.

[00:22:06] Speaker 00:
I think probably the 3d would be more accurate I think there's a lot of reasons actually that we came up with with why we would do it But the problem is I don't see them in the petition I don't see them in the expert report and I don't see them articulated expressly in Briggs

[00:22:20] Speaker 04:
I agree your honor that I think what the board did is the board applied the obviousness standard and Found that to be the case I mean the obviousness standard requires as ksr dictates reference to even common sense to some extent of Identifying there are limited ways you can do something One is shown the reference shows that there are two that can be done again

[00:22:48] Speaker 02:
I said I wasn't going to repeat myself, but...

[00:22:52] Speaker 02:
But I'm going to.

[00:22:53] Speaker 02:
I guess I get to do that.

[00:22:54] Speaker 02:
The board didn't even say there are limited options here.

[00:22:58] Speaker 02:
And the patent discloses these options.

[00:23:02] Speaker 02:
And it would have been obvious to combine and go to the 3D, because it would have been more accurate.

[00:23:08] Speaker 02:
If the board would have said that, then at least we would have that statement.

[00:23:12] Speaker 02:
And then we'd be arguing about whether the references support that or not, whether the board was just making it up.

[00:23:19] Speaker 02:
But the board didn't even say that.

[00:23:21] Speaker 02:
I mean, I don't think they actually applied the right obviousness standard.

[00:23:26] Speaker 04:
Understand, we believe the board did provide sufficient evidence of this, and the board did support it, and that the substantial evidence of the record does support the obviousness finding.

[00:23:41] Speaker 01:
We represented at the hearing that our position did not actually rely on that that we we

[00:24:01] Speaker 01:
Our petition would... So now we have the board's analysis and while they don't seem to rely on the expert much, there's at least one place I think where they say we're persuaded by the expert and the other places maybe where they cite to the petition, which cites to the declaration.

[00:24:18] Speaker 01:
If we parse through that and we were to strike the expert, can we still find substantial evidence?

[00:24:26] Speaker 04:
I believe there is still substantial evidence to support the board's decision.

[00:24:31] Speaker 04:
in looking at the art and the arguments that were made.

[00:24:34] Speaker 04:
I don't think that the board relied on the expert in this sense.

[00:24:40] Speaker 04:
And we represented at the hearing that our position didn't necessarily rely on the expert.

[00:24:45] Speaker 00:
I have to be honest with you.

[00:24:46] Speaker 00:
I was very troubled by the expert testimony in this case.

[00:24:52] Speaker 00:
I mean, five hours, I don't really have any sense of what a hard and fast rule ought to be for the amount of time someone spends getting prepared.

[00:24:59] Speaker 00:
And had your expert said, oh, well, I didn't have to spend a lot of time reading the three or four prior art references in the patent, because I was already familiar with them.

[00:25:09] Speaker 00:
But it appears he didn't have much familiarity with patent law, for sure, or with these patents.

[00:25:15] Speaker 00:
based on his deposition and the idea that he spent a total of five hours coming to sign from start to finish involving research and review a document that you drafted that has 121 paragraphs and is 56 pages long.

[00:25:29] Speaker 00:
That is a deeply troubling thing to me as a starting point.

[00:25:34] Speaker 00:
However, if his deposition, he had really demonstrated a complete understanding of all of the issues that were present in his declaration, perhaps that could overcome the concern.

[00:25:47] Speaker 00:
17 separate times, your expert suggested that he didn't think references had to be combined.

[00:25:55] Speaker 00:
17.

[00:25:56] Speaker 00:
He doesn't seem to understand the difference between anticipation and obviousness.

[00:26:00] Speaker 00:
He doesn't seem, quite clearly, to even understand what his own declaration said.

[00:26:05] Speaker 00:
He sure doesn't understand the legal concepts.

[00:26:08] Speaker 00:
I don't know what to do with that.

[00:26:09] Speaker 00:
I'm a little horrified.

[00:26:11] Speaker 00:
I mean, I think, you know, I almost wanted to say, did you take him drinking before the deposition?

[00:26:16] Speaker 00:
You know, what happened?

[00:26:17] Speaker 00:
Because this is a colossal collapse.

[00:26:20] Speaker 00:
You couldn't have walked out of that deposition feeling like, nailed that one.

[00:26:23] Speaker 00:
You know, this was like, poof.

[00:26:24] Speaker 00:
This is the nuclear bomb just dropped on your case in terms of his credibility.

[00:26:31] Speaker 00:
And so I don't know what to do with that piece.

[00:26:34] Speaker 00:
It's really troubling.

[00:26:35] Speaker 00:
And I'll tell you, I looked, and there's not a lot of standards out there.

[00:26:38] Speaker 00:
We haven't said a lot on what makes an expert reliable or credible in a Dalbert sort of way when they should be excluded under circumstances like this.

[00:26:48] Speaker 00:
I'd like your input on that.

[00:26:50] Speaker 00:
This issue was raised and you barely addressed it in your reply brief.

[00:26:52] Speaker 00:
All you said in your reply brief is the board decided what it should decide and we should follow it.

[00:26:56] Speaker 00:
You said nothing specific.

[00:26:58] Speaker 04:
Well, the expert is an expert on the technology.

[00:27:02] Speaker 04:
This was the expert's first time being an expert having to do with anything with patent law.

[00:27:08] Speaker 04:
The issues in the case were obviousness.

[00:27:11] Speaker 04:
He was asked early in the deposition about anticipation.

[00:27:14] Speaker 00:
his defense, anticipation wasn't one of the issues that he was actually rendering opinion on, and yet...

[00:27:29] Speaker 00:
or does your declaration disclose all of the facts that were important to you in forming these opinions?

[00:27:35] Speaker 00:
He said, no.

[00:27:36] Speaker 00:
So if I were on the other side at that point, I'd probably want to explore what else he might be thinking that is not contained in his declaration two.

[00:27:44] Speaker 00:
So it feels kind of fair that they would ask other questions.

[00:27:48] Speaker 00:
But I don't think they started getting into anticipation with him until after he said,

[00:27:53] Speaker 00:
Oh, my opinion isn't that these things have to be combined.

[00:27:56] Speaker 00:
I don't think they have to be combined at all.

[00:27:58] Speaker 00:
And then suddenly, they started exploring anticipation, wondering, does he have an opinion on anticipation?

[00:28:04] Speaker 00:
I think in fairness, when I read the deposition, they didn't ask him about anticipation until after he asserted that he could point nowhere to anywhere he said there was a reason to combine these references, because he doesn't think they have to be combined.

[00:28:20] Speaker 04:
That is what he believes.

[00:28:21] Speaker 04:
I mean, as the board pointed out,

[00:28:24] Speaker 04:
the opinions he presented in his declaration are his.

[00:28:28] Speaker 04:
I mean, he was deposed for over a day, as you've read, and those opinions are his opinions, and he didn't sway from those.

[00:28:35] Speaker 04:
But his understanding of patent law might have been a little weak, admittedly.

[00:28:42] Speaker 00:
But he said it would be obvious to combine two things in his declaration, and then in his deposition, he said there's no need to combine them, and so no, I can't point to any reason why they'd be combined.

[00:28:51] Speaker 04:
Because the art is so close that it's

[00:28:53] Speaker 04:
He didn't say that part.

[00:28:54] Speaker 04:
He didn't say that part.

[00:28:55] Speaker 04:
That's right.

[00:28:57] Speaker 01:
Is there anything in the record about whether you all worked with a non-testifying expert before retaining Dr. Mo Hazab?

[00:29:05] Speaker 01:
And is there anything in the record about whether there's any language difficulty here for this expert?

[00:29:09] Speaker 04:
English is his second language.

[00:29:11] Speaker 01:
Is that in the record?

[00:29:12] Speaker 04:
Oh, no.

[00:29:14] Speaker 04:
It is.

[00:29:17] Speaker 04:
But there's nothing in the record about working with a non-testifying expert either.

[00:29:22] Speaker 00:
OK.

[00:29:23] Speaker 00:
Thank you counsel will restore two minutes of rebuttal time Thank you

[00:29:41] Speaker 03:
First, Judge Stark, I wanted to answer your question.

[00:29:45] Speaker 03:
You had asked about those citations.

[00:29:47] Speaker 03:
I'd point to the preliminary response by the patent owner at page 29, where we address the timing nature of that scanning step, and then the patent owner response pages 51 to 57.

[00:30:07] Speaker 03:
Other than that, unless the panel has any additional questions for me, I'll cede the rest of my time.

[00:30:13] Speaker 00:
Thank you, counsel.

[00:30:15] Speaker 00:
Thank you.

[00:30:15] Speaker 00:
Since the cross appeal was never addressed, I think that brings the argument to a conclusion.

[00:30:19] Speaker 00:
Thank both counsels.

[00:30:21] Speaker 00:
This case is taken under submission.