[00:00:00] Speaker 03:
All right, final case for argument is 23-1494.

[00:00:04] Speaker 03:
Apple, not final, but final of these three.

[00:00:08] Speaker 03:
Apple versus gesture.

[00:00:09] Speaker 03:
Is it Kolela?

[00:00:11] Speaker 02:
Kolela.

[00:00:12] Speaker 03:
Kolela, please proceed.

[00:00:14] Speaker 02:
Your Honor, may I please the court?

[00:00:15] Speaker 02:
Abby Kolela for Appellant Apple.

[00:00:18] Speaker 02:
This is a straightforward obviousness case that was thrown off course when the board found that the man reference is not analogous art and cannot even be considered in Apple's obviousness combination.

[00:00:28] Speaker 02:
The board reached its conclusion by erroneously limiting the patent field of endeavor to devices that already employ camera-based sensing of human input.

[00:00:37] Speaker 02:
But that's the patent's point of novelty over prior art, and that's an impermissibly narrow field of endeavor under this court's case law.

[00:00:45] Speaker 02:
Procedurally, the board violated the APA by relying on argument about which Apple had no notice and no opportunity to respond.

[00:00:52] Speaker 02:
No party had ever disputed Apple's position that the patent encompassed all camera systems controlled by human gesture.

[00:00:58] Speaker 02:
Nobody had suggested that the patent was only within this narrow field limited to camera-based sensing of human input.

[00:01:05] Speaker 02:
So Apple had no occasion to explain below why that narrow field of endeavor adopted by the board cannot be correct.

[00:01:13] Speaker 02:
This made clear that a patent's field of endeavor should be broadly defined.

[00:01:19] Speaker 02:
It should encompass the patent's full disclosure.

[00:01:21] Speaker 02:
And that makes sense given the purpose of analogousness, which is just to assess whether a reference is so remote from the invention.

[00:01:30] Speaker 01:
Can I just make sure I understand your argument, just the scope of it?

[00:01:33] Speaker 01:
So you're definitely, you cannot rely on the second part of the analogous art test.

[00:01:39] Speaker 01:
That is that the patent and the claim is directed to the same problem as the claims, right?

[00:01:46] Speaker 02:
Yes, Your Honor.

[00:01:46] Speaker 02:
We don't think that that's a really good fit for the duration.

[00:01:49] Speaker 01:
So you did not argue that?

[00:01:50] Speaker 01:
We did not argue that.

[00:01:51] Speaker 01:
And then on claim one, for example, which I might do as being quite broad, you have an interpretation that the wearing clause requires optical detection of gestures, right?

[00:02:02] Speaker 02:
We definitely believe that the claims here do require optical detection of gestures.

[00:02:09] Speaker 02:
That said, the field of endeavor isn't limited to exactly what is claimed.

[00:02:15] Speaker 01:
So what are the different things that the case law says you're supposed to look at?

[00:02:19] Speaker 01:
You're supposed to look at things like the abstract, what the patent might say is the field of the endeavor, the claims.

[00:02:26] Speaker 02:
And in those cases here, we're talking about encompassing the full disclosure.

[00:02:30] Speaker 02:
And definitely, this court has emphasized that it's a flexible test meant to get at what kind of things the inventor of this patent might.

[00:02:38] Speaker 01:
I agree with you on that.

[00:02:39] Speaker 01:
My concern is that, as argued below, there was an inflexible approach and not a lot said by the petitioner in this case.

[00:02:53] Speaker 01:
about in the response brief, for example, maybe didn't have to say much in the petition, but once it was raised as an issue, then not much was said.

[00:03:02] Speaker 02:
I point to the way in which GestureTech raised this as an issue, because when the preliminary response in the institution decision, nobody raised it at all.

[00:03:13] Speaker 02:
Everybody implicitly accepted that this is all prior art.

[00:03:17] Speaker 02:
Then when they raised it in the patent owner response, what they basically said is that it was improper to not identify a field of endeavors.

[00:03:26] Speaker 02:
kind of a procedural argument saying, you know, you've got to use... What did you say in response?

[00:03:31] Speaker 01:
I mean, that's really what we have to focus on at this point on appeal, right?

[00:03:35] Speaker 01:
Sure.

[00:03:36] Speaker 02:
In response, we identified a field of endeavor for the patent, which is what Gesture Tech had falsed at us for not doing.

[00:03:45] Speaker 01:
It's true that... Isn't it that the board didn't agree?

[00:03:48] Speaker 01:
It's a fact question, right?

[00:03:49] Speaker 01:
The board didn't agree with your field of endeavor, your proposed field of endeavor, right?

[00:03:53] Speaker 02:
It's true that it's a bad question and that the board didn't agree, but I think the reason why the board didn't agree is because it kind of misunderstood the nature of what a field of endeavor has to be.

[00:04:03] Speaker 02:
I think the board's conclusion is based on the assumption that a field of endeavor has to be only one thing for every patent that's, you know, one set.

[00:04:12] Speaker 01:
But what did you say it should be?

[00:04:14] Speaker 01:
You had only one thing as well, and it was a pretty narrow thing.

[00:04:18] Speaker 02:
So we said that the field of endeavor is a camera system controlled by human gesture input.

[00:04:23] Speaker 01:
That's pretty narrow.

[00:04:25] Speaker 01:
I mean, it could have been the field of endeavor is a portable device that has two cameras.

[00:04:33] Speaker 02:
So I mean, I think that that also... I don't know that I think that would be the field of endeavor for this patent, but you're right.

[00:04:40] Speaker 03:
There are lots of different ways that... See, one of the problems, and I unfortunately see this a lot, is

[00:04:50] Speaker 03:
On appeal, you're making what sound like good arguments, but they weren't made before the board.

[00:04:59] Speaker 03:
I understand you want the counsel before the board.

[00:05:01] Speaker 03:
I get that.

[00:05:03] Speaker 03:
But before the board, you didn't flush any of this out.

[00:05:07] Speaker 03:
You treated it in a super superficial way, even though the patent owner did challenge the question of the field of endeavor.

[00:05:13] Speaker 03:
And you didn't flush anything out.

[00:05:15] Speaker 03:
And the board is then looking at it and saying, well, this makes no sense.

[00:05:19] Speaker 03:
You said the field of endeavor is one thing with regard to the Aviv Pyrot reference, and a totally different thing with regard to the man Pyrot reference.

[00:05:28] Speaker 03:
And if it's what you say it is with regard to Aviv, it doesn't include man.

[00:05:33] Speaker 03:
If it's what it is you say with regard to man, it doesn't include Aviv.

[00:05:36] Speaker 03:
You have the burden of proof on this issue.

[00:05:39] Speaker 03:
You proposed to the board two different fields of endeavor.

[00:05:44] Speaker 03:
And if they adopt this one, this pile art's excluded.

[00:05:48] Speaker 03:
If they adopt the other one you proposed, this pile art's excluded.

[00:05:52] Speaker 03:
How do you fault the board?

[00:05:55] Speaker 03:
In that scenario, I understand you weren't the attorney before the board.

[00:05:59] Speaker 03:
So trust me, I get that.

[00:06:01] Speaker 03:
You're stuck defending it.

[00:06:03] Speaker 03:
But your client made the choice to make that argument.

[00:06:07] Speaker 03:
And the board threw its hands up in the air and says, when you offer this on the burden of proof, I'm sorry, but you failed to meet your burden of proof under these circumstances.

[00:06:20] Speaker 03:
It's really hard for me to smack the board.

[00:06:23] Speaker 03:
Under those circumstances, he says, aha, board, you're the one that got it wrong.

[00:06:29] Speaker 02:
So why don't we give a shot at the end of that?

[00:06:31] Speaker 02:
Well, then I'd point to a few things.

[00:06:34] Speaker 02:
First of all, the point that the board is making there, these two things are contradictory.

[00:06:39] Speaker 02:
First of all, it wasn't raised by, that is not an argument that GestureTech made.

[00:06:44] Speaker 03:
Stop it.

[00:06:44] Speaker 03:
Stop it, the board has to decide this and you have the burden of proof.

[00:06:49] Speaker 03:
And they said you didn't identify a field of endeavor that put the board into this situation where they've gotta figure out what the field of endeavor is.

[00:06:57] Speaker 03:
And that's when they realize you've offered two conflicting fields of endeavor that are Venn diagrams with zero overlap between them.

[00:07:05] Speaker 03:
So the prior art references can't, the two different prior art references, you say in the same petition,

[00:07:11] Speaker 03:
Don't both fall into either field of endeavor.

[00:07:14] Speaker 03:
And that's your burden.

[00:07:16] Speaker 03:
You know what?

[00:07:17] Speaker 03:
They cannot raise it at all.

[00:07:19] Speaker 03:
And the board can still conclude, you failed to meet your burden on something.

[00:07:23] Speaker 02:
Well, you know, why don't I try to convince you that these, the fire weapons do fall into the field of endeavor.

[00:07:28] Speaker 03:
The board finds it a factual matter.

[00:07:30] Speaker 03:
They didn't.

[00:07:30] Speaker 03:
So you can't just try and convince me.

[00:07:32] Speaker 03:
You've got to believe that they made a mistake by substantial evidence.

[00:07:35] Speaker 03:
And no substantial evidence for that conclusion.

[00:07:38] Speaker 03:
So here's what I'd say.

[00:07:40] Speaker 02:
They're saying that the field of endeavor for the patent, the thing that we cited, is not within the field of camera systems controlled by gesture input.

[00:07:52] Speaker 02:
But the entire patent, from the beginning to end, is describing the use of cameras to capture human gestures.

[00:07:58] Speaker 03:
I mean, it's describing the use of cameras solely to capture movement.

[00:08:08] Speaker 03:
Not all human gestures, not touching, not stylus, not that form of gesture.

[00:08:14] Speaker 03:
From start to finish, the word optical appears like 16 times, every claim is limited to it, it's in the title, it's in the abstract, it's everything.

[00:08:23] Speaker 03:
They're claiming a camera's capturing of optical movement and that optical movement then actuating some processing step.

[00:08:33] Speaker 02:
Yes, the way that they're claiming that is by using that to replace other forms of gesture input.

[00:08:40] Speaker 02:
They're saying in the... You know what that goes to?

[00:08:43] Speaker 03:
The part you waved.

[00:08:47] Speaker 03:
What did they say about the other forms?

[00:08:49] Speaker 03:
Little kids' fingers, they can't hold a stylus.

[00:08:51] Speaker 03:
Fingers are too fat to effectuate the poplar touch screen.

[00:08:54] Speaker 03:
They have a whole section.

[00:08:55] Speaker 03:
The only section you pointed to, which you didn't point to before the board, but you did point to us, the column, whatever, 57, it's all about why it would be beneficial to use optical gesturing as opposed to physical gesturing.

[00:09:10] Speaker 03:
Sounds an awful lot like the problem that one was trying to solve.

[00:09:16] Speaker 03:
that you didn't argue and you're waived.

[00:09:18] Speaker 03:
I'm frustrated because you know what?

[00:09:20] Speaker 03:
I'm seeing IPR after IPR on appeal, this is an example of which, where you did a bad job at the petition before the board.

[00:09:29] Speaker 03:
A bad job.

[00:09:31] Speaker 03:
And then you come up to us, faulting the board for your bad job.

[00:09:36] Speaker 03:
Again, I know it wasn't you.

[00:09:39] Speaker 02:
I think that with analogous art, though, you're in a specific situation where there's no affirmative obligation to make a showing on this.

[00:09:48] Speaker 02:
I mean, that operable... Well, see, you have to build and prove.

[00:09:51] Speaker 02:
Sure, but... And where in that concept do you think you don't have an affirmative showing?

[00:09:57] Speaker 02:
This court said in the Sanofi case that a petitioner has no...

[00:10:05] Speaker 02:
a petition is not required

[00:10:23] Speaker 01:
then you have it a burden to respond.

[00:10:26] Speaker 02:
And I guess the point I'm making here is that we did respond to the argument they made.

[00:10:32] Speaker 02:
They didn't argue that this is not an appropriate field of endeavor for the 924 patent.

[00:10:37] Speaker 02:
They never said the 924 patent is not directed to camera systems controlled by gesture.

[00:10:44] Speaker 02:
What they said is that it was improper not to identify a field of endeavor.

[00:10:49] Speaker 02:
Even when you get to the sole reply, what they actually say with respect to man is that petitioner's reliance on a single generic statement to identify man's field of endeavor is improper.

[00:11:03] Speaker 02:
Petitioner has not established that man's proper field of endeavor, and thus has not established that man is now desired.

[00:11:08] Speaker 02:
They're implicitly accepting our field of endeavor with respect to the patent.

[00:11:12] Speaker 02:
And the argument is to give an opinion.

[00:11:14] Speaker 03:
Well, I'm just going to say this for your client's benefit, not yours, and all client's benefits.

[00:11:19] Speaker 03:
I understand why you're here arguing this on appeal.

[00:11:23] Speaker 03:
I understand that there are estoppel consequences to failed IPR attempts in district court litigation.

[00:11:31] Speaker 03:
Do a better job in your petitions.

[00:11:37] Speaker 03:
Well, I'll probably end up on some blog somewhere.

[00:11:42] Speaker 03:
Not really.

[00:11:44] Speaker 02:
Um, I guess that...

[00:11:47] Speaker 02:
I take your point that this definitely was not developed below as personally as it has been on appeal.

[00:11:54] Speaker 02:
But that doesn't change the fact that the field of endeavor that the board identified just can't be correct here.

[00:12:01] Speaker 02:
And for that, I just point you to the prosecution history.

[00:12:04] Speaker 02:
I mean, this is a case where the claim that became claim one here originally just claimed the camera hardware, just the two camera situation.

[00:12:14] Speaker 02:
no discussion of this camera control functionality.

[00:12:18] Speaker 02:
That was rejected based on the Silverbrook reference, which, again, was just hardware, no camera-based control.

[00:12:24] Speaker 02:
And then the inventor amended the claim to add the camera-based control.

[00:12:30] Speaker 01:
One thing I was thinking when I was looking at this is I looked at claim one, and it looked fairly broad to me.

[00:12:35] Speaker 01:
And I thought it was very odd that the board's field of endeavor might be broader than the claim.

[00:12:40] Speaker 01:
But then I saw your claim construction.

[00:12:42] Speaker 01:
And your claim construction is very narrow.

[00:12:45] Speaker 01:
And your claim construction is that it requires optical sensing of gestures.

[00:12:52] Speaker 02:
Well, Your Honor, this court has been pretty clear that the field of endeavor can be and should be broader than the claim.

[00:13:00] Speaker 02:
I guess I'd point you to in Ray Metkey, where the claim is required providing access to the internet, specifically.

[00:13:09] Speaker 02:
But the court affirmed that the field of endeavor has to encompass all sorts of communications media.

[00:13:14] Speaker 01:
Do you want to hear a word of her with you?

[00:13:15] Speaker 01:
Isn't that, at most, a vacate remand?

[00:13:18] Speaker 02:
I definitely would not object to having the board consider that.

[00:13:23] Speaker 03:
At this point, you would jump at anything.

[00:13:25] Speaker 03:
Let me just say one other thing.

[00:13:27] Speaker 03:
Your argument about the list of primer art references was waived.

[00:13:32] Speaker 03:
You didn't make it before the board.

[00:13:36] Speaker 03:
So respond.

[00:13:37] Speaker 03:
Why was it not waived?

[00:13:39] Speaker 02:
It wasn't moved because that's responsive to the field of endeavor that the board identified, which gesture tech had never raised.

[00:13:47] Speaker 02:
So it's responsive to an argument that we had no notice of and no opportunity to respond to.

[00:13:51] Speaker 03:
But wouldn't that then be an APA argument?

[00:13:53] Speaker 03:
Because you can't possibly expect me to make a fact-finding argument.

[00:13:56] Speaker 02:
Yes, and we made an APA argument then.

[00:13:58] Speaker 03:
You can't possibly expect me to make a fact-finding on appeal about the disclosure of the firearm.

[00:14:03] Speaker 02:
Yeah, absolutely.

[00:14:04] Speaker 03:
corrects for three and for the board to to get out there and opportunity to respond to those points and for them to understand that the argument that you need is dramatically overly broad and legally inaccurate let me explain that to you and you can respond to it i'm not saying prior references cannot be considered although i don't think we have a piece of uh... precedent that has ever said they should be in assessing the relevant field of endart but who who creates how does the list end up on the front of a patent all of the list of

[00:14:32] Speaker 03:
items on the front of a patent, how does it end up there?

[00:14:37] Speaker 03:
Through the examination of the patent.

[00:14:39] Speaker 01:
What does that mean?

[00:14:41] Speaker 03:
Through the examination of the patent.

[00:14:43] Speaker 03:
How do they end up?

[00:14:44] Speaker 03:
The list of prior art references on the front of a patent, how did they get there?

[00:14:49] Speaker 02:
The examiner is doing a search for prior art.

[00:14:55] Speaker 03:
No, everything you included in IDS and everything the examiner searched for gets on there.

[00:15:00] Speaker 03:
So sometimes what happens is patent owners will dump hundreds of references on examiners.

[00:15:05] Speaker 03:
How long do you think examiners have to review every single piece of prior art?

[00:15:09] Speaker 03:
How long do you think you have to prosecute an application?

[00:15:13] Speaker 03:
I don't know the details of the time.

[00:15:16] Speaker 03:
It's only a few hours, and it doesn't matter how long the application is.

[00:15:20] Speaker 03:
And the plan I'm trying to make is what gets put on the front page of the patent is everything that was in the IDS and everything the examiner's own search found.

[00:15:28] Speaker 03:
So the notion that all of those documents constitute or form or automatically need to be encapsulated by a concept of the field of endeavor

[00:15:39] Speaker 03:
would be really problematic because that list can get propagated in a number of ways and can include wildly disparate references.

[00:15:49] Speaker 03:
But sometimes they can go to problems you never was trying to solve, but not necessarily the field of endeavor.

[00:15:55] Speaker 03:
So the problem is the notion that everything listed on the front face of the patent that was prior art that was potentially air quotes considered by the examiner has to be within the field of endeavor is definitely a legally flawed argument.

[00:16:06] Speaker 03:
But anyway, we'll end on that.

[00:16:09] Speaker 03:
So here I am.

[00:16:25] Speaker 04:
May it please the Court, Fred Williams for the Appellee Gesture Technology Partners.

[00:16:30] Speaker 04:
Your Honors, I don't have a lot to add.

[00:16:33] Speaker 04:
I'd be happy to answer any questions the Court has for us.

[00:16:36] Speaker 03:
Why isn't this in the field of Endeavor?

[00:16:38] Speaker 03:
Sorry.

[00:16:39] Speaker 03:
I'll let you jump in.

[00:16:40] Speaker 03:
I'm close to my question.

[00:16:42] Speaker 04:
You're asking why my man is not in the field of endeavor.

[00:16:44] Speaker 04:
I believe that the correct field of endeavor for the 924 patent, which the word fell on substantial evidence, should include optical-based sensing.

[00:16:57] Speaker 01:
Why?

[00:16:58] Speaker 04:
Well, it's explicit throughout the patent itself and the title of the patent and the abstract throughout the specification.

[00:17:06] Speaker 04:
What about the plane?

[00:17:08] Speaker 04:
And in the claim, optical-based sensing.

[00:17:11] Speaker 04:
It's everywhere.

[00:17:13] Speaker 04:
And in fact, Apple, in its opening brief, three times, concedes that optical-based sensing is the consistent focus of the patent.

[00:17:22] Speaker 01:
But what about our case law?

[00:17:24] Speaker 01:
For example, Big Ego.

[00:17:26] Speaker 01:
that says that you're not supposed to take the point of novelty and make that the field of the invention.

[00:17:32] Speaker 01:
I mean, if you look at the NPEP or different things about what the field of invention is and what analogous art is, you're not supposed to look at what is this invention that was developed and limit the field of the invention to that.

[00:17:49] Speaker 04:
I believe our position is fully consistent with Big E or your honor.

[00:17:55] Speaker 04:
The correct look at the field of endeavor should include the claims.

[00:18:00] Speaker 04:
I agree that the field of endeavor should not be as narrow as the point of novelty.

[00:18:03] Speaker 04:
I don't agree with Apple that the point of novelty of this patent, the 1904 patent, is the camera-based sensing.

[00:18:11] Speaker 01:
The point of novelty is what?

[00:18:15] Speaker 01:
Point one.

[00:18:16] Speaker 01:
What is the point of novelty?

[00:18:17] Speaker 04:
Well, I think the point of novelty is

[00:18:20] Speaker 04:
a portable or handheld device with a specific arrangement of cameras with non-overlapping views.

[00:18:33] Speaker 03:
Okay, so just to be clear, and I mean, if that's the point of novelty, that can't be the field of endeavor, right?

[00:18:39] Speaker 03:
Because, obviously, that would be field of one.

[00:18:42] Speaker 03:
So there would be no firearm.

[00:18:44] Speaker 03:
But the board held computer devices that optically sense, right?

[00:18:48] Speaker 03:
Mm-hmm, yes.

[00:18:48] Speaker 03:
So that doesn't, it's not limited to handheld?

[00:18:51] Speaker 03:
That's right.

[00:18:52] Speaker 03:
It could be any kind of computer invention that does optical sensing.

[00:18:55] Speaker 03:
That is what the board found.

[00:18:57] Speaker 03:
All it has to do is use a camera, a computer that uses a camera to sense something.

[00:19:02] Speaker 04:
It's for this patent.

[00:19:05] Speaker 04:
It's a specific arrangement of multiple cameras with non-overlapping.

[00:19:09] Speaker 03:
No, that's not.

[00:19:09] Speaker 03:
I'm asking you what the board found the field.

[00:19:11] Speaker 03:
I'm trying.

[00:19:11] Speaker 03:
These are softballs.

[00:19:13] Speaker 03:
Please don't misunderstand.

[00:19:14] Speaker 03:
I misunderstood.

[00:19:17] Speaker 03:
What precisely did the board find was the field of endeavor?

[00:19:19] Speaker 03:
What I'm trying to help you do is to demonstrate how broad it is and how it's not limited to just your invention.

[00:19:27] Speaker 03:
Excuse me one moment.

[00:19:32] Speaker 04:
This is appendix 15.

[00:19:36] Speaker 04:
We agree with the parties that the 924 pattern is directed to computer devices that optically sense human input using one or more cameras.

[00:19:44] Speaker 03:
Right, so not limited to two camera devices, not limited to one camera devices, not even limited to anything handheld.

[00:19:50] Speaker 03:
And I imagine you will tell me there's a ton of prior art preceding this patent because this patent did not invent computer devices that do optical sensing, that there was a lot of optical sensing.

[00:20:01] Speaker 03:
That field of endeavor doesn't even require, unless I'm mistaken, actuation of processors in response to the sensing, right?

[00:20:09] Speaker 04:
I believe that's correct.

[00:20:10] Speaker 03:
So your argument to me is your argument to me that this field of endeavor is not limited to the point of novelty and is in fact much broader?

[00:20:18] Speaker 03:
Absolutely, yes.

[00:20:21] Speaker 00:
Just to clarify the record, just on more of the APA point, what exactly

[00:20:29] Speaker 00:
that you just said, well, they haven't identified a field of endeavor.

[00:20:33] Speaker 00:
Did you make any of the, you didn't come up with the field that the board ultimately came up with, right?

[00:20:39] Speaker 00:
Did you come up with an alternative field of endeavor?

[00:20:42] Speaker 04:
We did not suggest an alternative field of endeavor.

[00:20:45] Speaker 00:
Did you express any reason to criticize or the other side, the field of endeavor that the other side presented?

[00:20:53] Speaker 04:
What we specifically did, Your Honor, at appendix 283 and 284

[00:20:58] Speaker 04:
We stated that the petitioner had failed to establish that man is analogous art, and thus man cannot be used in an obviousness objection.

[00:21:05] Speaker 04:
And then at page 284, we contended that the petitioner had not identified a field of endeavor for either the 924 patent or for man.

[00:21:15] Speaker 04:
Instead, they found teachings in the two documents that allegedly overlap, and then deemed the two documents as belonging to the same field of endeavor because of the alleged overlap.

[00:21:25] Speaker 03:
petitioners not met this burden and this petitioner has not established that man passes the first test for analogous heart so you didn't even because you didn't understand them to address reasonably pertinent to the problem the inventor was trying to solve and the board ultimately concluded they waived any arguments with regard to that you addressed only the first test which is development field of endeavor in your response because that's what you understood them to argue the petition that's correct your honor

[00:22:02] Speaker 04:
Thank you.

[00:22:04] Speaker 03:
Thank you.

[00:22:13] Speaker 02:
No, just quickly in response to that, I think my friend on the other side here is acknowledging that they didn't offer any alternative here.

[00:22:22] Speaker 02:
In this reply, in their patented response, they didn't say, you know, man is not analogous art.

[00:22:30] Speaker 02:
They're really just saying it was improper to identify overlap.

[00:22:35] Speaker 03:
No, they say it doesn't fall within the first step test for analogous arts.

[00:22:40] Speaker 03:
They expressly say that.

[00:22:44] Speaker 03:
Patent only response at page 284.

[00:22:47] Speaker 03:
Petitioner has not met its burden.

[00:22:48] Speaker 03:
Petitioner has not established that man passes the first test for analogous arts.

[00:22:53] Speaker 03:
That is, petitioner hasn't established it's not in the field of endeavor.

[00:22:58] Speaker 02:
The reason they're saying that we haven't established that man passes the first test is because we have not identified a field of endeavor, which it's not because they're saying man is something else or because the field of endeavor is not broad enough to encompass camera systems controlled by gesture input.

[00:23:19] Speaker 01:
My view, I guess, is that you had no idea in this circumstance

[00:23:25] Speaker 01:
that they would disagree with whatever field of endeavor was then later identified?

[00:23:29] Speaker 02:
Yes, Your Honor.

[00:23:30] Speaker 02:
And we certainly understood them to be making a fundamental procedural argument about we didn't kind of use the magic words.

[00:23:40] Speaker 02:
And that's also the way it was discussed in the hearing.

[00:23:45] Speaker 02:
I think if you go to our

[00:23:48] Speaker 02:
Appendix 446 to 447.

[00:23:50] Speaker 02:
We're saying the patent owner hasn't said, here's one true accurate field of endeavor, here's why the petitioner is wrong.

[00:24:00] Speaker 01:
They're pointing out inconsistencies.

[00:24:02] Speaker 01:
From where I'm sitting, for what it's worth, this issue is coming up a lot from IPRs.

[00:24:09] Speaker 01:
And parties should probably be aware of that and make sure that voting the time that they need to in their briefing before the board

[00:24:17] Speaker 01:
to make sure they're covering every possible argument for analogous art.

[00:24:22] Speaker 01:
Step one, step two, providing different possible alternative arguments on the field of endeavor.

[00:24:28] Speaker 01:
And none of that was done here.

[00:24:31] Speaker 01:
And that's problematic, because it's hard to say that the board made a factual error when arguments weren't made, right?

[00:24:40] Speaker 02:
I do understand what you're saying, but I think in this case, the fact that the patent is consistently talking about replacing things with this camera-based sensing is a good indication that it shouldn't be limited to the camera-based sensing.

[00:24:53] Speaker 02:
And I think the prosecution history further buttresses that conclusion.

[00:25:00] Speaker 02:
But if this court has no further questions.

[00:25:04] Speaker 03:
I thank the counsel for their argument, and I

[00:25:08] Speaker 03:
Again, appreciate that to the extent that I criticized what happened before the IPR, you were not the attorney who I was criticizing.

[00:25:17] Speaker 03:
So I just want to put that on the record for your benefit.

[00:25:20] Speaker 03:
Thank both counsels for the argument, and this case is taken under submission.