[00:00:00] Speaker 02:
OK, our first argued case this morning is number 22, 2290, Cisco Systems, Inc.

[00:00:06] Speaker 02:
versus Kay Misra.

[00:00:08] Speaker 02:
Ms.

[00:00:09] Speaker 02:
Oliver.

[00:00:11] Speaker 04:
Good morning, and may it please the court.

[00:00:13] Speaker 04:
Angela Oliver, representing Cisco Systems and arguing on behalf of the appellants.

[00:00:18] Speaker 04:
The board committed a fundamental legal error in this case.

[00:00:22] Speaker 04:
When analyzing the motivation to combine, the board required Cisco to establish a benefit that would be brought about by the combination.

[00:00:29] Speaker 04:
even though this combination is a simple substitution combining one known technique instead of another.

[00:00:36] Speaker 04:
This court reversed another board panel in Intel versus PACT for making that same mistake.

[00:00:42] Speaker 04:
And following Intel, this court should reverse the board's motivation determination here and vacate and remand.

[00:00:48] Speaker 04:
But even if Cisco was required to establish a benefit to the combination, Cisco did.

[00:00:53] Speaker 04:
The board's decision otherwise was based on the faulty assumption

[00:00:57] Speaker 04:
that Glycoff's reference to XML somehow translates to displaying a quarantine notification on a web page.

[00:01:05] Speaker 04:
But that is not supported in the record.

[00:01:06] Speaker 04:
And in fact, Kim Miser did not even argue that.

[00:01:09] Speaker 04:
So for this additional reason, we would ask this court to make it.

[00:01:11] Speaker 01:
Does it make practical sense to combine two references and each reference simply essentially mirrors the other in terms of function and claims?

[00:01:22] Speaker 04:
I think it does.

[00:01:23] Speaker 04:
In fact, I think that's what KSR contemplates.

[00:01:25] Speaker 04:
And that might be one of the most straightforward cases of obviousness.

[00:01:29] Speaker 04:
Because if you're just swapping out two known techniques that accomplish the same thing, it makes sense that that would come to an artisan's mind and would be obvious to one of skill in the art.

[00:01:38] Speaker 04:
And that's what I think we have in the Intel versus PAC decision.

[00:01:41] Speaker 04:
The facts in that case are very similar.

[00:01:44] Speaker 04:
There, the two references were presented in a very similar context.

[00:01:48] Speaker 04:
And they both addressed the same problem of cache coherency.

[00:01:52] Speaker 04:
One addressed it using one known technique, and the second reference addressed that problem using a different known technique.

[00:01:59] Speaker 04:
And the combination simply swapped out those two known techniques.

[00:02:03] Speaker 04:
And in that case, the board had used similar reasoning as to what the board did here.

[00:02:07] Speaker 04:
The board had said, well, if the primary reference already addresses the problem using one technique,

[00:02:12] Speaker 04:
there would be no reason to change it because there wouldn't be an improvement.

[00:02:15] Speaker 04:
But the court squarely rejected that analysis and said the fact that both references do address the same problem using different techniques

[00:02:24] Speaker 04:
is precisely why there is a motivation to combine under KSR and under this court's precedence.

[00:02:29] Speaker 04:
And the court expressly rejected the idea that you would need to show a benefit from making that sort of swap between those two known techniques.

[00:02:37] Speaker 03:
Could you be specific as to what exactly is being swapped out?

[00:02:41] Speaker 03:
Because I think what the claim requires is that a quarantine notification web page be provided.

[00:02:48] Speaker 03:
And I think the reference, what does the reference teach?

[00:02:51] Speaker 04:
The primary reference, Glycoff, teaches notification messages.

[00:02:55] Speaker 04:
And it just doesn't say it's a web page, right?

[00:02:58] Speaker 03:
That's correct.

[00:02:59] Speaker 03:
It does not.

[00:02:59] Speaker 03:
So your simple substitution is taking a notification message and saying instead it would have been obvious to use a notification web page as taught by a secondary prior reference, right?

[00:03:13] Speaker 03:
Yes, a web page served from a quarantine server.

[00:03:16] Speaker 03:
As I understand it, the board said that because the primary of Gleykhoff, because Gleykhoff already teaches in their view a web page, it wouldn't have been obvious to modify it to send a web page.

[00:03:31] Speaker 03:
Is that it?

[00:03:32] Speaker 03:
I mean, in other words, because it anticipates, you can't find that it's obvious?

[00:03:36] Speaker 04:
That's effectively what the board says here.

[00:03:39] Speaker 04:
They say, well, they find that Glykoff already discloses this web page, which, again, we believe is not supported.

[00:03:46] Speaker 04:
But they also cite the argument from K. Miser's counsel below suggesting that, well, this could have been done by an artisan.

[00:03:52] Speaker 04:
So that would be sort of an obviousness type analysis.

[00:03:55] Speaker 04:
And that's the ultimate irony here, is that our obviousness rationale was rejected

[00:04:00] Speaker 04:
by saying that it essentially would have been obvious to add this feature.

[00:04:04] Speaker 04:
And it puts us in a bit of a catch-22 in trying to establish obviousness, because you can't rely on the Glikoff reference alone to show a quarantine notification on a web page, because it's not expressly there.

[00:04:16] Speaker 04:
It's certainly not inherently there.

[00:04:17] Speaker 04:
And so we did, you know, we dotted our I's and crossed our T's and showed another reference that does, presented in the exact same context of this type of system, that does this notification message through a quarantine server serving a web page.

[00:04:31] Speaker 04:
And so, respectfully, that is just swapping known techniques.

[00:04:34] Speaker 03:
And the board to say in its determination that Gleikhoff does disclose a web page, they were just relying on the existence of XML language.

[00:04:46] Speaker 03:
Is that right?

[00:04:47] Speaker 04:
That's correct.

[00:04:47] Speaker 04:
They only cited one piece of evidence from Gleikhoff.

[00:04:50] Speaker 04:
That's column 20, those five lines in column 20 about XML.

[00:04:54] Speaker 04:
And there is nothing tying that disclosure to disclosing these notices on a web page.

[00:04:59] Speaker 04:
So that's our second point here, is that that finding is simply not supported in the record.

[00:05:05] Speaker 04:
And it's something that had Cisco been aware that the board was considering this evidence, we could have addressed it and explained to the board why this does not disclose that.

[00:05:13] Speaker 04:
But this was something that the board raised for the first time in the final written decision.

[00:05:18] Speaker 02:
Does Glycoff disclose having a pop-up message?

[00:05:24] Speaker 04:
It doesn't say pop-up verbatim, but that essentially has these plug-ins that receive the notification message

[00:05:30] Speaker 04:
And so it tells us that the messages are displayed in a text message, which I think could be something like a pop-up on your computer.

[00:05:36] Speaker 01:
And it displays that on the same device, right?

[00:05:40] Speaker 04:
I think that's a fair reading of Gleikhoff, yes.

[00:05:43] Speaker 04:
But what it does not disclose is a web page that has the quarantine notification.

[00:05:48] Speaker 04:
And so that was our obviousness combination.

[00:05:51] Speaker 01:
Does a web page function in Lois Provider Security?

[00:05:57] Speaker 04:
I'm not sure the web page itself.

[00:05:59] Speaker 04:
I don't think that's something the parties addressed.

[00:06:01] Speaker 04:
But I don't think that's something that goes to the idea of whether a benefit is required.

[00:06:06] Speaker 04:
And again, stepping back, I think this goes back to the Intel versus PACT decision.

[00:06:10] Speaker 04:
There's no need for us to establish a benefit for this particular combination.

[00:06:14] Speaker 01:
It just seemed to me that Lewis also comes with its own server, right?

[00:06:18] Speaker 04:
Yes.

[00:06:18] Speaker 04:
It serves the page from appointing.

[00:06:20] Speaker 01:
So when the user is redirected to quarantine,

[00:06:25] Speaker 01:
It's actually on the server off the system, off the primary system that's being used.

[00:06:32] Speaker 04:
It would redirect to a quarantine.

[00:06:34] Speaker 01:
Isn't that an added security benefit, a real tangible benefit?

[00:06:40] Speaker 04:
We did present evidence in our petition that that would have been an added security benefit to use a different server.

[00:06:45] Speaker 04:
That was not something the board addressed, but that was in our petition.

[00:06:50] Speaker 04:
And I believe that's paragraph 137 of Dr. Reddy's declaration.

[00:06:54] Speaker 04:
But again, the ultimate analysis here is that under Intel versus PACT, we have very similar facts.

[00:07:00] Speaker 04:
This was using one known technique instead of another.

[00:07:04] Speaker 04:
And that would have been sufficient under KSR and in Intel versus PACT to demonstrate obviousness without even needing to get into whether a benefit existed from this combination.

[00:07:17] Speaker 04:
And again, I'll just clarify that Cisco's rationales here were based on the same known technique rationale that was considered in Intel versus PACT.

[00:07:26] Speaker 04:
And that was something that the board did not address and analyze in its final written decision.

[00:07:31] Speaker 04:
But we think the evidence and the rationale here is sufficient for the board to reverse the board's motivation determination.

[00:07:40] Speaker 04:
Now, I do want to address the board's brief statement that this would have brought about changes to the architecture of the Glycoff system.

[00:07:50] Speaker 04:
As Your Honor noted, there may have been benefits that were associated with that change.

[00:07:54] Speaker 04:
But at most, the board's statement here does not cite any evidence to suggest that this would have been a significant change in the view of an artisan,

[00:08:03] Speaker 04:
or complicated or difficult.

[00:08:05] Speaker 04:
We presented evidence that this was certainly within the skill of an artisan to make this simple swap, this simple substitution, and there is no evidence that the board cites or that KMIS represents in its red brief that would suggest this would have been difficult or complicated or viewed as some sort of significant change to the reference.

[00:08:24] Speaker 04:
But even if, even aside from that statement, that still does not undermine the known technique rationale addressed in KSR and Intel, which says it is enough to show obviousness so long as the combination is not beyond the skill of an ordinary artisan.

[00:08:46] Speaker 04:
So unless there are questions, I will save the rest of my time for rebuttal.

[00:08:50] Speaker 04:
But essentially, under KSR and Intel versus PACT, we believe this is simply a substitution of one known technique for another.

[00:08:58] Speaker 02:
Thank you, Ms.

[00:08:58] Speaker 02:
Hall.

[00:08:59] Speaker 02:
Mr. Warren?

[00:09:09] Speaker 00:
Please, the court.

[00:09:11] Speaker 00:
Good morning, Your Honors.

[00:09:12] Speaker 00:
Cliff Nguyen for the Pelley K. Misra LLC.

[00:09:17] Speaker 00:
First off, I'd like to start off by sort of setting the table by highlighting the fact that the challenge claim of the 705 patent is a complex and novel claim with 10 individual claim elements, and the petitioner at a minimum proposed a combination of three references with certain combinations targeting certain elements

[00:09:35] Speaker 00:
and other combinations targeting other elements.

[00:09:38] Speaker 00:
And so- Oh, wait.

[00:09:39] Speaker 02:
I mean, the board's decision here rests on a single notion that the Glycof is missing this web page notification aspect of it.

[00:09:55] Speaker 02:
And so the question is whether it's obvious to combine Lewis, which does have that feature with Glycof, right?

[00:10:05] Speaker 00:
That is a dispute, Your Honor.

[00:10:09] Speaker 02:
That's a dispute?

[00:10:11] Speaker 00:
It's undisputed that Gleitkauf already provides some sort of notification message.

[00:10:18] Speaker 00:
It doesn't provide it by a quarantine server, a separate quarantine server.

[00:10:22] Speaker 00:
It doesn't do any sort of redirection.

[00:10:25] Speaker 03:
Can I ask you, because I'm confused.

[00:10:26] Speaker 03:
You agree that the board found that Gleitkopf discloses every element in the claim except for the notification page step, right?

[00:10:38] Speaker 00:
I don't agree with that, Your Honor.

[00:10:39] Speaker 00:
There are other elements within the claim that Gleitkopf by itself does not disclose.

[00:10:45] Speaker 00:
And for that reason... What are those?

[00:10:48] Speaker 00:
I'm sorry?

[00:10:48] Speaker 02:
What are they?

[00:10:49] Speaker 00:
What are the other elements?

[00:10:51] Speaker 00:
For example, there's the element that directed towards a trusted platform module.

[00:10:56] Speaker 00:
And for that element, petitioner proposes a combination between glycalfe and another reference, ovadia, which is not efficient.

[00:11:04] Speaker 02:
So what did the board say about that?

[00:11:06] Speaker 00:
The board didn't say anything.

[00:11:08] Speaker 00:
The board was silent on some of the other claim elements, did not address those claim elements, did not address those other combinations.

[00:11:15] Speaker 00:
And so I was merely setting the table to highlight that even if the board finds for reversal on this specific issue as to this specific combination, the rest of the case should be remanded back to the PTAB so that it can resolve the other combinations and other claim elements.

[00:11:33] Speaker 02:
OK.

[00:11:34] Speaker 02:
Fair enough.

[00:11:34] Speaker 02:
With respect to this claim element, I mean, you do seem to be arguing that it's not obvious because it's anticipated, right?

[00:11:43] Speaker 00:
That is not what I'm assert.

[00:11:46] Speaker 00:
What is the argument?

[00:11:49] Speaker 00:
What I'm arguing here is that Gleitkopf by itself does not disclose the limitation for a quarantine notification page

[00:11:57] Speaker 00:
served by a separate quarantine server.

[00:12:01] Speaker 00:
And what Glycalf discloses is a redirection to a remediation server.

[00:12:07] Speaker 00:
And that's why petitioners need to bring Lewis into the mix in order because Lewis does teach a quarantine notification page that is served by a separate quarantine server.

[00:12:17] Speaker 02:
And the only purpose of the quarantine server is for the notification, right?

[00:12:23] Speaker 00:
In the context of the claims yesterday, I would say that.

[00:12:27] Speaker 03:
So you're emphasizing the part of the system that's sending the notification?

[00:12:36] Speaker 00:
The part of the system that's sending a notification

[00:12:39] Speaker 00:
redirection to a separate server to provide that quarantine notification page.

[00:12:45] Speaker 00:
And that is what Gleitkopf is missing.

[00:12:48] Speaker 00:
It's not just a quarantine notification page.

[00:12:51] Speaker 00:
It's not just a quarantine web page.

[00:12:53] Speaker 00:
But it has to be served by a separate server.

[00:12:56] Speaker 00:
And so this goes to the point.

[00:12:58] Speaker 03:
The quarantine server.

[00:13:00] Speaker 00:
Yes, the quarantine server, Your Honor.

[00:13:02] Speaker 03:
And so this goes to the point of where- Does the secondary reference teach

[00:13:07] Speaker 03:
a quarantine server that sends a quarantine notification page?

[00:13:11] Speaker 00:
Yes, Your Honor, it does.

[00:13:13] Speaker 00:
And because it does, in order to make this combination, you would have to now modify Klykauf, which categorically redirects traffic to a remediation server.

[00:13:28] Speaker 00:
So instead, the modification that this would entail would be to say, no, don't do what you normally do.

[00:13:35] Speaker 00:
Don't redirect to a remediation server.

[00:13:37] Speaker 00:
instead redirect to this separate quarantine server that's taught in Lewis in order to get your quarantine page served.

[00:13:45] Speaker 02:
So how do you distinguish Intel?

[00:13:47] Speaker 02:
I'm sorry?

[00:13:47] Speaker 02:
How do you distinguish Intel?

[00:13:49] Speaker 00:
How we distinguish it from Intel, there's a number of reasons why this is different than Intel.

[00:13:56] Speaker 00:
The Intel board, if you read the record evidence and the board's decision,

[00:14:02] Speaker 00:
The legal error that I believe the Intel board committed was that they categorically required there to be an improvement upon the base reference in order for there to be a motivation to combine with the secondary reference.

[00:14:16] Speaker 02:
That is not what they did here.

[00:14:18] Speaker 02:
They say it's not an improvement because it already teaches notification.

[00:14:22] Speaker 00:
We think that that was one of many factors, counterbalancing factors, that the board considered in weighing the scales to determine whether there was a motivation to combine.

[00:14:35] Speaker 00:
The board considered other factors.

[00:14:39] Speaker 00:
The point is, this board did not categorically require there to be an improvement in order for there to be a motivation.

[00:14:46] Speaker 00:
This board did not categorically require that

[00:14:52] Speaker 00:
that the

[00:14:53] Speaker 00:
Because of the fact that the base reference already provides some sort of benefit, that there would be no motivation to then do the simple substitution.

[00:15:01] Speaker 00:
That is not what this board categorically required.

[00:15:04] Speaker 00:
The board certainly considered each of those factors in the balancing of scales.

[00:15:08] Speaker 00:
But ultimately, what the board found why there was sort of a motivation not to combine, or why Opposito would be dissuaded from doing this combination, is the extensive modifications that were required

[00:15:22] Speaker 00:
to accommodate the modification.

[00:15:25] Speaker 00:
And at APPX 35 of the board's decision, the board kind of walks through and provides a detailed analysis of the steps that would be required

[00:15:40] Speaker 00:
to make this combination.

[00:15:42] Speaker 00:
And it sort of lists a number of steps.

[00:15:45] Speaker 00:
Number one, as I said before, it would require Gleithaus Network, which didn't have a separate quarantine server, to now add one.

[00:15:54] Speaker 00:
It would also then require Gleithaus Policy Server to not redirect traffic as it normally would to a remediation server, and instead redirect it to this quarantine server that's introduced by Lewis.

[00:16:08] Speaker 00:
And most critically, it would need to be modified to provide the notification messages to the user to avoid having both the policy server that Glycof already has.

[00:16:21] Speaker 02:
OK, but the combination of Lewis and Glycof does that, right?

[00:16:26] Speaker 00:
The combination of Lewis and Gleithoff does that.

[00:16:28] Speaker 00:
And what the board was trying to explain was that these steps would be required to accommodate the combination.

[00:16:36] Speaker 02:
You mean it's not a simple substitution?

[00:16:37] Speaker 00:
It's not a simple substitution.

[00:16:40] Speaker 00:
This is simply not a simple substitution case.

[00:16:43] Speaker 00:
The court in the PACT versus Intel case had held that the proposed combination needed to be a suitable alternative.

[00:16:50] Speaker 00:
And if it was a suitable alternative,

[00:16:53] Speaker 00:
And if it was a simple substitution, and if there were a finite number of possible ways to do it, then, of course, why wouldn't the Posita simply go ahead and... Did you have expert testimony that it would be difficult to combine Ulysses Dikos?

[00:17:09] Speaker 00:
We don't have any expert testimony touching specifically on the difficulty of the modifications, but we do have expert testimony

[00:17:18] Speaker 00:
highlighting the fact that these modifications would be necessary.

[00:17:22] Speaker 00:
And then the board had mentioned that the petitioner had failed to adequately explain why a posita would have been motivated to look to Lewis to introduce such significant changes to the architectural design.

[00:17:38] Speaker 01:
When the board said that, it's only referring to the benefits part of the equation here, right?

[00:17:44] Speaker 01:
It's not referring to the difficulty

[00:17:47] Speaker 01:
underline the mechanics or the functions of combining.

[00:17:52] Speaker 01:
It's just that there's no benefit, no reason, no benefit to combine.

[00:18:00] Speaker 00:
Your Honor, we don't believe that the board solely hinged their decision as to whether there was a motivation on whether there was already a benefit in the base reference or not.

[00:18:13] Speaker 00:
That was simply one factor in a number of factors to balance the scales.

[00:18:18] Speaker 00:
On the other side of the scale, there was the significant architectural changes.

[00:18:23] Speaker 01:
Would you say that's a primary factor?

[00:18:27] Speaker 00:
I wouldn't say it was a primary factor.

[00:18:29] Speaker 00:
They were all factors that were taken into consideration.

[00:18:32] Speaker 01:
Is this the primary factor?

[00:18:34] Speaker 00:
I would say that it was a primary factor.

[00:18:37] Speaker 00:
It was.

[00:18:39] Speaker ?:
Yes.

[00:18:39] Speaker 03:
What about the board's opinion that Glycof already taught sending a web page because of its reference to XML?

[00:18:48] Speaker 03:
I mean, how is that supportable by substantial evidence?

[00:18:56] Speaker 00:
I'll answer your question, Your Honor.

[00:18:57] Speaker 00:
But first, I do want to say that I don't want to get bogged down into whether Glycof

[00:19:03] Speaker 00:
disclosed an XML page or whether it disclosed a web page.

[00:19:07] Speaker 00:
The point is that the board was considered with why Opposito would do so given all these factors and on this XML point and whether there was... The board did make that fact-finding, right?

[00:19:18] Speaker 00:
The board did make the fact-finding.

[00:19:19] Speaker 03:
So it made the fact-finding and it said it used that fact-finding as a reason to disregard

[00:19:27] Speaker 03:
expert testimony on why the combination would have been made, why there was a motivation specifically that you would not have to have additional software display messages, right?

[00:19:40] Speaker 03:
I just want to understand.

[00:19:43] Speaker 03:
Could you answer my question?

[00:19:45] Speaker 00:
Absolutely.

[00:19:46] Speaker 00:
I'll answer your specific question as to the XML fact finding.

[00:19:53] Speaker 00:
We believe that it was based on substantial evidence.

[00:19:56] Speaker 00:
There was substantial evidence that Gleitkopf provided notification messages, maybe via a message.

[00:20:04] Speaker 03:
Specifically, I understand that.

[00:20:06] Speaker 03:
But what evidence is there that it provided a web page?

[00:20:10] Speaker 03:
or that somehow by reference to XML, that means that it provided a web page notification.

[00:20:17] Speaker 00:
Let me try to answer that more clearly.

[00:20:19] Speaker 00:
So there's two pieces to that.

[00:20:21] Speaker 00:
On one hand, Gleitkopf sort of generally describes web pages and redirection and display of web pages.

[00:20:29] Speaker 00:
Then on the XML front, Glycof did disclose that the specific quarantine notification page can be served up to the user via the XML format.

[00:20:40] Speaker 00:
It also says that XML format is sort of one example of application independent

[00:20:45] Speaker 00:
formats, such as XML.

[00:20:48] Speaker 00:
And XML stands for Extensible Markup Language, which is sort of like HTML, its cousin, which is Hypertext Markup Language.

[00:20:56] Speaker 00:
So it's talking about web pages in maybe a slightly different context.

[00:21:00] Speaker 00:
And then here on the notification side, it is talking about a markup language like XML, and it's also talking about application-independent

[00:21:08] Speaker 00:
Formats and so the board I think was well within its well within reason to sort of make the inference that you know a posita probably could have Taken that XML notification message and it would have been opened up in a browser and it could have been displayed Is it your view then that that prior reference to just a?

[00:21:29] Speaker 03:
Setting a web page notification albeit maybe from a different server Yes.

[00:21:36] Speaker 00:
Yes, your honor

[00:21:37] Speaker 00:
albeit from a different server.

[00:21:41] Speaker 01:
What would happen if we were to vacate and remand?

[00:21:44] Speaker 01:
On what point would that be?

[00:21:48] Speaker 00:
If we were to vacate and remand, well, first, the board would have to also address some of the

[00:21:59] Speaker 00:
Other?

[00:21:59] Speaker 00:
There's two outstanding issues, right?

[00:22:02] Speaker 00:
There's two outstanding.

[00:22:03] Speaker 00:
Yeah, there's another Ovadia reference that is not at dispute in this appeal.

[00:22:07] Speaker 00:
Like I said, there's 10 individual claim elements.

[00:22:09] Speaker 00:
This accounts for two of them.

[00:22:11] Speaker 00:
There's eight more elements, another reference that we're not even talking about here.

[00:22:15] Speaker 00:
The court would have to sort all those things out, because the court did not address those in this decision.

[00:22:20] Speaker 01:
Why is that?

[00:22:21] Speaker 01:
Because they found this issue to be dispositive, and they didn't have to address the other issues?

[00:22:25] Speaker 00:
Right, the board found that these limitations failed to be disclosed by the combination via the lack of a motivation to combine.

[00:22:33] Speaker 00:
And therefore, the board found for the patent owner.

[00:22:46] Speaker 00:
Judge Beck, I just kind of want to go back to the simple substitution.

[00:22:49] Speaker 00:
This is not a case of simple substitution.

[00:22:52] Speaker 02:
But I don't find that the board

[00:22:54] Speaker 02:
found that it wasn't a simple substitution.

[00:22:56] Speaker 02:
They seemed to say you wouldn't have made the combination because Glycof already provides for notification.

[00:23:04] Speaker 00:
And that's where I think there's a disagreement.

[00:23:06] Speaker 00:
I think the board certainly acknowledged and

[00:23:09] Speaker 00:
took that into consideration about the benefits and whether there was an improvement or not.

[00:23:14] Speaker 00:
But I don't think that's dispositive.

[00:23:16] Speaker 00:
I don't think that was the categorical rule.

[00:23:19] Speaker 00:
The board did not require that to be the only thing.

[00:23:22] Speaker 00:
And that brings us to the other side of the coin, which is the significant.

[00:23:28] Speaker 01:
But as you have said, this is the dispositive issue we're discussing right now.

[00:23:33] Speaker 01:
And let me put on my KSR hat, the practical one.

[00:23:36] Speaker 01:
Yes.

[00:23:37] Speaker 01:
OK?

[00:23:38] Speaker 01:
It just seems to me that the claim that we're talking about here has a limitation or a de-mediation that's noticed to the user through a web page.

[00:23:56] Speaker 01:
Gloucester discloses everything.

[00:23:59] Speaker 01:
in the asserted claim mixture for the web page.

[00:24:02] Speaker 01:
Lewis discloses the web page.

[00:24:05] Speaker 01:
I mean, I don't understand why this is difficult.

[00:24:08] Speaker 01:
Why would a person not combine that and say, if I combine Lewis with Glauchester, then I have met all the limitations in the asserted claim?

[00:24:19] Speaker 00:
The reason why is because it's not a simple substitution.

[00:24:22] Speaker 00:
It requires at least four additional steps to modify the reference.

[00:24:27] Speaker 01:
But the board didn't do that.

[00:24:29] Speaker 01:
The board simply found that there's no motivation to combine, because there's no reason to.

[00:24:33] Speaker 01:
There's no benefit.

[00:24:35] Speaker 01:
Because this web page that we're talking about, it's already provided in the Gloucester reference.

[00:24:46] Speaker 00:
Right, Your Honor, but the board did explain at APPX 35 the extent of the significant architectural design changes and sort of said, and especially because Kleigh-Kauf already discloses these benefits, if you sort of take those two factors together, that's why there's no motivation to combine.

[00:25:04] Speaker 02:
Well, except that you admit there's no expert testimony that it wouldn't be difficult.

[00:25:10] Speaker 00:
There's no expert testimony that it would be difficult, but the board did recognize these changes.

[00:25:15] Speaker 00:
And these were all based on substantial evidence.

[00:25:17] Speaker 00:
These steps that would be required to make this change are based on substantial evidence.

[00:25:22] Speaker 00:
There's pin sites to the references and also to petitioners' explanation of those references.

[00:25:27] Speaker 00:
And it was based on that that the board concluded these significant changes that would be required to accommodate

[00:25:34] Speaker 00:
the combination.

[00:25:36] Speaker 00:
And so therefore, it's different than the Intel case in that it's not a simple substitution.

[00:25:40] Speaker 00:
In the Intel case, there were a finite number of possibilities.

[00:25:43] Speaker 00:
Here, there's no record evidence of whether there are finite possibilities.

[00:25:47] Speaker 00:
And that's why the board found that there was no motivation to combine.

[00:25:52] Speaker 00:
But the board took the KSR's flexible and expansive approach.

[00:25:56] Speaker 00:
and took all these, I wouldn't say that the board sort of hung its hat on just the benefits alone.

[00:26:01] Speaker 00:
It does mention it, it acknowledges it, but it also counterbalances it with the changes that it would be required.

[00:26:07] Speaker 03:
It considers both, right?

[00:26:09] Speaker 03:
I mean, they say a person wouldn't have been motivated to look to Lewis to introduce such significant changes.

[00:26:15] Speaker 03:
when Gleikhoff alone already provides all the alleged benefits, right?

[00:26:20] Speaker 00:
That is correct, Judge.

[00:26:21] Speaker 03:
So it's not just the changes, the significant changes, but also they are assuming that Gleikhoff provides the benefits.

[00:26:29] Speaker 00:
Yes, Your Honor.

[00:26:30] Speaker 03:
So if that's incorrect and Gleikhoff doesn't provide the benefits, doesn't their analysis fall apart?

[00:26:39] Speaker 00:
Well, that's not incorrect.

[00:26:42] Speaker 00:
It would be legally incorrect, Your Honor.

[00:26:45] Speaker 00:
I'm out of time, but I'll answer your question.

[00:26:47] Speaker 00:
Your Honor, it would be legally incorrect if the board or any board were to categorically require there to be a benefit.

[00:26:55] Speaker 00:
That's simply one in a number of factors to consider.

[00:26:59] Speaker 02:
But I think what Judge Stuller is telling you is the board relied significantly, if not exclusively,

[00:27:07] Speaker 02:
on the lack of benefit from the combination.

[00:27:10] Speaker 02:
You admit that's wrong.

[00:27:12] Speaker 02:
You felt wrong to suggest that's wrong.

[00:27:14] Speaker 02:
So you've got to send it back, right?

[00:27:18] Speaker 00:
Sure.

[00:27:19] Speaker 00:
We could send it back, and the board can sort of, but again, it's not that they exclusively or, well, we don't know about significantly, but they did not exclusively.

[00:27:27] Speaker 00:
As Judge Stoll acknowledged, they sort of looked at both factors.

[00:27:32] Speaker 02:
OK.

[00:27:32] Speaker 02:
Thank you.

[00:27:33] Speaker 02:
Thank you, Your Honor.

[00:27:44] Speaker 01:
Do you agree we should send this back?

[00:27:47] Speaker 04:
Yes.

[00:27:48] Speaker 04:
And to be clear, I think there is sufficient evidence and legal reasoning for the court to reverse with respect specifically to the motivation finding.

[00:27:56] Speaker 04:
I think Intel versus PAC don't.

[00:27:58] Speaker 01:
But we can reverse.

[00:27:59] Speaker 01:
We'd have to vacate, right?

[00:28:00] Speaker 01:
Because there's some outstanding issues.

[00:28:02] Speaker 01:
The overall disposition.

[00:28:03] Speaker 01:
If it goes back, the board would have to address those other issues as well.

[00:28:06] Speaker 04:
Yes.

[00:28:06] Speaker 04:
There are other issues to address.

[00:28:08] Speaker 04:
So the ultimate disposition.

[00:28:09] Speaker 04:
We don't reverse findings.

[00:28:10] Speaker 03:
I mean, it has to be a whole legal issue.

[00:28:13] Speaker 03:
Does that make sense?

[00:28:15] Speaker 03:
Just like we wouldn't affirm a claim destruction.

[00:28:18] Speaker 04:
Of course.

[00:28:18] Speaker 04:
And I'm just referring, and perhaps if I'm misspeaking here, but in Intel versus PACT, the court held that a motivation had been established when it addressed the board's decision.

[00:28:28] Speaker 04:
And it did, of course, vacate and remand after that.

[00:28:31] Speaker 04:
And we think that following that posture would be appropriate here for this court to hold that in light of the evidence and arguments presented,

[00:28:39] Speaker 04:
that a motivation has been established, but then, yes, vacate and remand because there are other issues that the court did not address.

[00:28:47] Speaker 02:
What about the simple substitution argument that Mr. Winn is making?

[00:28:53] Speaker 02:
He's saying it's not a simple substitution.

[00:28:56] Speaker 02:
though he didn't have any evidence that it was difficult, what's the state of the record about that?

[00:29:02] Speaker 04:
Sure.

[00:29:03] Speaker 04:
So we presented evidence that this is just substituting one known technique for another, similar to what was done in Intel versus PACT.

[00:29:11] Speaker 04:
So we explained that these two references are presented in the exact same context.

[00:29:15] Speaker 04:
These are both systems that are quarantining computers that are trying to connect to a protected network in case they may be infected.

[00:29:21] Speaker 04:
So similar context.

[00:29:23] Speaker 04:
Both techniques accomplish the same purpose of notifying the user that their computer has been quarantined.

[00:29:30] Speaker 04:
And all of this is discussed not only at appendix page 159, where the motivation is first set forth, but then also further explained in the petitions analysis at limitation 1.8, where we go into more details about specifically what Glykoff has and what Lewis has.

[00:29:45] Speaker 04:
So that's at appendix 179 through 181.

[00:29:47] Speaker 04:
And there's expert testimony supporting all of this.

[00:29:51] Speaker 04:
And then, of course, we also have expert testimony showing this is within the skill of an ordinary artisan.

[00:29:57] Speaker 04:
So that does establish the basic requirements to show that these are two known techniques that one of skill in the art would have simply swapped out following the reasoning, for example, in KSR under the known technique rationale and then applied most recently in Intel versus PACT.

[00:30:14] Speaker 04:
And I'll emphasize on the point of this court should hold that the motivation has been established.

[00:30:20] Speaker 04:
There is no evidence, as came as are agreed today, there is no expert testimony suggesting that this combination would have been difficult or significant change or anything like that.

[00:30:29] Speaker 04:
The evidence is one sided on that issue.

[00:30:32] Speaker 04:
And so that is not a separate basis for weighing the evidence in that regard.

[00:30:38] Speaker 04:
I'll simply conclude by saying that under KSR and Intel versus PACT,

[00:30:43] Speaker 04:
The facts are very similar, and the known technique rationale should have been enough to establish a motivation here.

[00:30:49] Speaker 04:
And we believe that's sufficient for the court to vacate and remand while also holding that a motivation has been established.

[00:30:58] Speaker 04:
But at the very least, this court should vacate and remand for a proper analysis of the motivation.

[00:31:04] Speaker 04:
And then, of course, vacate and remand to address the other issues that have not been addressed by the court.

[00:31:11] Speaker 04:
Unless there are any further questions.

[00:31:14] Speaker 02:
Okay.

[00:31:14] Speaker 02:
Thank you, Ms.

[00:31:15] Speaker 02:
Oliver.

[00:31:15] Speaker 02:
Thank you, Mr. Wynn.