[00:00:00] Speaker 03: First case for argument this morning is 23-1414, Google versus Echo Factor. [00:00:07] Speaker 03: Mr. Smith, whenever you're ready. [00:00:10] Speaker 01: Thank you, Judge Gross, Your Honors. [00:00:11] Speaker 01: May I please the court? [00:00:13] Speaker 01: Nancy Smith for the Ellent and Cross FLE Google. [00:00:16] Speaker 01: I'd like to address the issues with respect to dependent claim 20, claim 24, and if there's time, the cross appeal. [00:00:23] Speaker 01: With respect to dependent claim 20, it's dependent from independent claim 1, which requires a system for controlling an HVAC system. [00:00:34] Speaker 01: And one or more processors, and these one or more processors have to carry out specific functions that are not particularly relevant to this issue. [00:00:42] Speaker 01: Claim 1 also requires a memory. [00:00:46] Speaker 01: But there's no further constraint on that. [00:00:48] Speaker 01: The memory can be configured in any way. [00:00:50] Speaker 01: It has no particular function to carry out. [00:00:52] Speaker 01: It simply has to exist in the system. [00:00:54] Speaker 01: And you prevailed on claim one? [00:00:55] Speaker 01: Yes. [00:00:56] Speaker 01: The board found claim one unpatentable over the combination of the Vedekint and Ehlers prior references. [00:01:03] Speaker 01: But claim 20 was found patentable. [00:01:05] Speaker 01: So presumably the patentable content of claim 20 comes from the limitation of claim 20. [00:01:10] Speaker 01: And the limitation of Claim20, the thing that Claim20 adds, is that one of the one or more processors, which Claim20 calls the first processor, has to be located remotely from this memory that has to exist in the system and not be in direct electrical contact with it, with the practical effect being that Claim20 is reciting a computer operating on a network and cooperating with the system. [00:01:38] Speaker 01: The board primarily took issue with the presentation in the original IPR petition with respect to Claim 20. [00:01:47] Speaker 01: And that begins on Appendix Page 262. [00:01:49] Speaker 01: The IPR petition for Claim 1 had contended that the primary prior reference data can't has a computer or a processor called Processing Means 44. [00:02:01] Speaker 01: And with respect to Claim 20, the prior, sorry, the IPR petition [00:02:07] Speaker 01: pointed to a particular place in the principle prior reference Vedekint, namely column nine, lines 1438 on appendix page 457, where the Vedekint reference said the system can be divided into separate and distinct parts and specifically gave the example of the functional block 16 and the functional block 14 being in separate and distinct parts and being implemented in separate microprocessors. [00:02:38] Speaker 01: The petition referred to that discussion and said, once you have separate microprocessors, it's obvious [00:02:46] Speaker 03: as a matter of design choice or as a matter of... Is this the one... And there's so many different issues and arguments between these two cases. [00:02:52] Speaker 03: I'm very confused. [00:02:53] Speaker 03: Is this the one where the board said you didn't point out which of the processors was the one that should be... Yeah, that's absolutely correct. [00:03:01] Speaker 01: Just want to make sure I... That was the problem the board had with the mapping. [00:03:05] Speaker 03: And that is... They are correct, are they not, that you did not point out which of the processors would do [00:03:13] Speaker 01: That is correct in the sense that the petition did not say, the specific thing that we are identifying as the first processor is this. [00:03:21] Speaker 01: The petition took a more general approach, which was to say, if you have separate and distinct parts in the system that can be implemented in separate microprocessors, any one of these could be the processor that is remote from the memory. [00:03:34] Speaker 01: Because once you have two of them, [00:03:36] Speaker 01: And once we know it's obvious. [00:03:38] Speaker 03: And why isn't the board wrong under our deferential standard of review? [00:03:42] Speaker 03: Why is the board incorrect that it was necessary? [00:03:47] Speaker 03: If you say this was just a design choice, you have to give us more specificity about which processor it is and something about that processor, and you fail to do that. [00:03:58] Speaker 03: What's wrong with that? [00:04:01] Speaker 01: For two reasons. [00:04:02] Speaker 01: For two reasons, Your Honor. [00:04:04] Speaker 01: The board said they couldn't evaluate it because they didn't have enough information. [00:04:07] Speaker 01: But then they did evaluate the specific scenario that's put forward in the Vedekint reference, namely where the processing function 16 is implemented separately. [00:04:18] Speaker 01: And there the board actually just misapprehended what the Vedekint reference was saying about that. [00:04:24] Speaker 01: The board ruled out that specific scenario where effectively the processor 16 is [00:04:31] Speaker 01: the first processor of claim 20 by saying it would have with it the memory that the IPR petition identified as the memory for claim one. [00:04:40] Speaker 01: And so it wouldn't be removed from that memory. [00:04:43] Speaker 01: But the very section of- I mean, what's wrong with that? [00:04:46] Speaker 01: I mean, it's substantial evidence for you. [00:04:49] Speaker 01: Because the very section that Vedekint, where Vedekint puts forward this specific example, says that they are on separate microprocessors. [00:05:01] Speaker 01: That means that you have two systems. [00:05:04] Speaker 01: And so the memory from one is different from the memory from the other. [00:05:08] Speaker 01: And whichever one you pick there, as long as they're remote from one another, the processor in one is going to be remote from the memory in the other, and vice versa. [00:05:16] Speaker 01: And that's what the petition was contending. [00:05:19] Speaker 01: And we think that's fairly clear in the argumentation on Appendix Pages 260 of its sequitur. [00:05:24] Speaker 03: What did the patent owner make an argument with regard to the lack of specificity in terms of the process or identifying the processor? [00:05:30] Speaker 01: No. [00:05:32] Speaker 01: I don't think so. [00:05:32] Speaker 03: So you think, is this one of the cases where you're making an APA argument about how the board came up with this argument in the first instance in its decision? [00:05:41] Speaker 01: Yes. [00:05:42] Speaker 01: I believe so. [00:05:43] Speaker 01: Did they ask you about it? [00:05:46] Speaker 01: Did they ask you about it or argument? [00:05:49] Speaker 01: I don't think they asked about [00:05:52] Speaker 01: the APA argument specifically because it came up. [00:05:55] Speaker 01: No, not the APA argument. [00:05:56] Speaker 01: Did they ask you about how you were mapping all this stuff to claim 20? [00:06:02] Speaker 01: I don't recall that specifically, Judge. [00:06:04] Speaker 01: Yes. [00:06:07] Speaker 01: With respect to... If they did ask you, you don't have an APA argument, do you? [00:06:14] Speaker 01: It would depend on exactly what they asked and... Well, if you're on notice that they have a problem with the way you're mapping this, [00:06:22] Speaker 01: and you haven't described it explicitly enough to them and they ask you about it and you give an answer, then you've been given an opportunity, you know, notice an opportunity to respond. [00:06:34] Speaker 01: That's not an APA issue. [00:06:35] Speaker 01: I mean, you can't remember what happened or argument. [00:06:40] Speaker 01: I certainly didn't memorize this record. [00:06:42] Speaker 01: It's not my job. [00:06:43] Speaker 01: So if you can't tell me whether or not they did it, then I don't see how we could find an APA problem. [00:06:48] Speaker 01: But certainly one could find an abuse of discretion in the way the argument was presented in the petition answered by the board in the sense that they said they could not evaluate it, and then they in fact evaluated the argument that was being put forward as the most specific example in the Vedic text. [00:07:12] Speaker 01: With respect to claim 24, and claim 24 is [00:07:17] Speaker 01: the second independent claim, which recites a system for controlling an HVAC system at a user's building. [00:07:25] Speaker 01: And this is the particular issue where the board faulted the identification of the system. [00:07:34] Speaker 01: In other words, what are the boundaries of this? [00:07:36] Speaker 01: Did you ask for a claim construction of system? [00:07:39] Speaker 01: No. [00:07:40] Speaker 01: Well, so how do we know what's inside or outside the system? [00:07:45] Speaker 01: I think that's relatively difficult, Your Honor. [00:07:47] Speaker 01: I think that's because... Well, shouldn't you have asked for a claim construction if you thought it mattered to your argument? [00:07:53] Speaker 01: And I think it does here, right? [00:07:56] Speaker 01: It does. [00:07:57] Speaker 01: I think there are two issues. [00:07:59] Speaker 01: One is a procedural one and one is a substantive one. [00:08:02] Speaker 01: And I think the substantive issue is [00:08:06] Speaker 01: Let's say we identified a system in the prior art that excludes the second censors. [00:08:12] Speaker 01: And there's a question about that in the board's opinion, so not to gloss that over. [00:08:17] Speaker 01: But then, if we identified correctly a system in the prior art that includes all of the functional claim limitations of Claim 24, aside from the modificator, sorry, that is an anticipation ground. [00:08:32] Speaker 01: That includes all of the functional limitations of Claim 24. [00:08:37] Speaker 01: Why isn't that enough? [00:08:40] Speaker 01: In the sense that the word system, as you point out correctly, I think, doesn't give us a lot of guidance in and of itself. [00:08:47] Speaker 01: A system is simply a... I mean, isn't that your problem for not defining a system? [00:08:51] Speaker 01: I mean, we're talking about 24E, right? [00:08:55] Speaker 01: That the second sensor has to be located external to the system. [00:09:00] Speaker 01: How do you say it, Wedekind? [00:09:03] Speaker 01: Is there a sensor device external to the system? [00:09:07] Speaker 01: That would be the sensor device 36, which is external to the system that we identified under Claim 1 and refer back to in Claim 24. [00:09:15] Speaker 03: And that's the problem. [00:09:17] Speaker 03: You may have made it in Claim 1, but you didn't make it again with respect to Claim 24. [00:09:23] Speaker 03: And I think that's kind of right. [00:09:25] Speaker 03: I mean, you can show me where in your petition [00:09:30] Speaker 03: You made this argument on claim 24, but I'm not seeing it. [00:09:33] Speaker 01: So at the top of appendix, page 262 is where that argument happens. [00:09:37] Speaker 01: Sorry, 272. [00:09:38] Speaker 01: Right. [00:09:43] Speaker 03: And you're saying the whole system would be, is that what we described as 10, assembly 10? [00:09:51] Speaker 03: And you're saying this is something less than the whole system? [00:09:54] Speaker 03: Right. [00:09:55] Speaker 03: OK, but the confusing thing to me is you seem to say the reverse on 272. [00:10:01] Speaker 01: Right, and that's the [00:10:02] Speaker 01: The phrase, Vedekin's thermostat assembly 10, including processing means 44, is such a system, right? [00:10:08] Speaker 03: Well, yeah. [00:10:09] Speaker 03: And it says the, well, I'm reading in our external to Vedekin's thermostat assembly 10, describing 10 as the system. [00:10:18] Speaker 03: So it seems to me the board had a basis, not only for saying we're not going to incorporate necessarily everything you said in claim one into this, and two, you seem to be saying not that and even the opposite. [00:10:31] Speaker 01: Yeah. [00:10:32] Speaker 03: So where's the abuse of discretion? [00:10:34] Speaker 03: I don't know if it's abuse of discretion. [00:10:35] Speaker 03: It's the Chancellor Levin. [00:10:36] Speaker 03: I think it may be abuse of discretion. [00:10:37] Speaker 03: Where is it? [00:10:39] Speaker 01: The board perhaps could have said that, but that's not quite what they said. [00:10:44] Speaker 01: And it's also not complete to say Vatican's thermostat assembly 10, including processing means 44, is such a system because it's preceded by that clause as explained in element 1A. [00:10:56] Speaker 01: And the board did go back to claim one and look at the mapping under claim one. [00:11:00] Speaker 01: But they only got part of it. [00:11:03] Speaker 01: The mapping under claim one. [00:11:04] Speaker 03: Yeah, but we're not talking about claim one here. [00:11:07] Speaker 03: We're talking about claim 24. [00:11:09] Speaker 03: And maybe some would call it redundancy. [00:11:12] Speaker 03: And I know you have page limits and word limits in these cases. [00:11:15] Speaker 03: But you've got to make the case with respect to the claims. [00:11:19] Speaker 03: And you're not telling me you made it here, right, other than a cross-reference? [00:11:23] Speaker 03: Where is it on page 272? [00:11:25] Speaker 01: Yeah, it's not on page 272, Your Honor. [00:11:27] Speaker 01: It's in the cross-reference. [00:11:29] Speaker 03: And in page 22, do you agree with me that you're talking about assembly 10 as the system? [00:11:36] Speaker 03: And the whole basis for your argument here is claim 10 is not the system. [00:11:41] Speaker 01: Yes, something less than assembly 10 is the system. [00:11:44] Speaker 01: So what was it? [00:11:45] Speaker 02: What would we look to to reach that conclusion? [00:11:48] Speaker 01: The mapping under claim one, Your Honor, because of the initial clause as explained for claim element 1A. [00:11:56] Speaker 01: But there's different languages. [00:11:58] Speaker 01: In claim one, we're talking about a source external to the building, which 36 could be and still be part of the system, right? [00:12:09] Speaker 01: But for 24E, you need it to be external to the system. [00:12:14] Speaker 01: I thought that was the problem here. [00:12:16] Speaker 01: I mean, it makes no sense to me either. [00:12:18] Speaker 01: If their patent, what they patented as the second source, [00:12:23] Speaker 01: could include an external temperature sensor outside the building for both 1 and 24E. [00:12:31] Speaker 01: then they should rise and fall together. [00:12:33] Speaker 01: I assume they're going to tell me 2040 is something different than the external temperature sensor outside the building, in which case they have two different meanings, and you can't map it the same way to satisfy one. [00:12:45] Speaker 01: Is that the problem here? [00:12:46] Speaker 01: I mean, again, you could have asked the board for construction of what a system was and whether it included the external temperature sensor or not, because I can see it going both ways. [00:12:59] Speaker 01: If 24E means something other than just an external temperature sensor, then Wettekin doesn't show that, right? [00:13:10] Speaker 01: If 24E means something other than an external temperature sensor. [00:13:13] Speaker 01: 36 is outside air temperature. [00:13:15] Speaker 01: Correct. [00:13:17] Speaker 01: And you use that for external. [00:13:19] Speaker 01: Are you saying that that shows not just [00:13:21] Speaker 01: put a temperature sensor outside the building that sends information to the system, but some other kind of outside air temperatures. [00:13:27] Speaker 01: No, that's, that's what we say it is. [00:13:29] Speaker 01: It's just that when it's external. [00:13:31] Speaker 01: But I think they're going to say that that's not what 24E is. [00:13:35] Speaker 01: That's what 1E is. [00:13:37] Speaker 01: Cause it says it's external to the building. [00:13:40] Speaker 01: They're going to say 24E is something like, you know, satellite weather data through the internet or something. [00:13:47] Speaker 01: And Wettekin doesn't show that. [00:13:48] Speaker 01: And the claim language of 24E is external to the system. [00:13:53] Speaker 01: And if system is a group of components. [00:13:56] Speaker 01: So let me ask you this. [00:13:57] Speaker 01: Yes. [00:13:57] Speaker 01: Is 36 part of the system for 1, but not part of the system for 24? [00:14:02] Speaker 01: I don't think it's part of the system for either. [00:14:05] Speaker 01: And I think that's because the mapping for claim 24 depends on the mapping for claim 1. [00:14:09] Speaker 01: Even if the line drawn around all of this stuff for 10 includes 36. [00:14:17] Speaker 01: In which appendix page are you talking about? [00:14:19] Speaker 01: I don't know. [00:14:21] Speaker 01: It's the prior art diagram for Wettekind. [00:14:24] Speaker 01: I mean, you should know this. [00:14:25] Speaker 01: It's the main mapping that we've been talking about. [00:14:30] Speaker 01: If you look at appendix page 214, which is the mapping we refer back to on claim one, we actually draw a red dash box around a subgroup of components. [00:14:42] Speaker 01: Yeah, but why do you get to do that? [00:14:44] Speaker 01: If you didn't ask for a claim construction that this is the system, [00:14:47] Speaker 01: then the more logical reading is the system is 10, not your own created version. [00:14:52] Speaker 01: Because that is a system that fulfills the function of the claims. [00:14:56] Speaker 01: And I don't think there is one system to the exclusion of all others that could exist in the prior argument. [00:15:02] Speaker 01: Systems can have subsystems and supersystems. [00:15:06] Speaker 01: And I think, Judge Price, to get back to the earlier point, the board actually looked at claim one and the mapping under claim one on appendix page 214 [00:15:16] Speaker 01: And that mapping starts with a sentence, a thermostat assembly 10 includes a parameter estimation system 16, a predictor system 14, registers 45, and a programmable thermostat 12. [00:15:28] Speaker 01: But then it continues on to say these components, together with additional processing circuitry depicted in figure 5, et cetera, are a system for controlling the HVAC system. [00:15:40] Speaker 01: and then provides a diagram drawing a red dash box around those components. [00:15:44] Speaker 01: The board actually looked at that, but only talked about the first sentence, not the second sentence or the diagram, which is why we think that's an abuse of discretion. [00:15:53] Speaker 03: Well, also, as you point out, this is your argument. [00:15:56] Speaker 03: This is your petition, right? [00:15:57] Speaker 03: This is the claim on. [00:15:59] Speaker 03: This is not claim 24. [00:16:00] Speaker 03: You pointed me correctly. [00:16:02] Speaker 03: Initially, we were looking at the arguments you made with respect to claim 24. [00:16:05] Speaker 01: That's absolutely right. [00:16:06] Speaker 01: This is the reference back in Claim 24 to Claim 1 that occurs at the top of Appendix page 272. [00:16:14] Speaker 02: Because the statement in your petition with respect to Claim 24 is contradictory in the sense that it says, what it can thermostat assembly 10 is the system. [00:16:28] Speaker 02: Now, yes, you refer back to Claim 1. [00:16:35] Speaker 02: Nonetheless, that was the hook that the board grabbed to conclude, based on your own definition, that this system is not the narrower [00:16:48] Speaker 02: Items in the red block that you threw, but the entire system has drawn. [00:16:54] Speaker 01: And I think, Judge Lin, the board could have said, this reference back to claim one and the following language are a little bit inconsistent. [00:17:03] Speaker 01: And we're going to resolve that in your favor or against you as a matter of procedure. [00:17:07] Speaker 01: But they didn't say that. [00:17:09] Speaker 01: They actually went back and looked at claim one. [00:17:11] Speaker 01: and looked at it incorrectly. [00:17:12] Speaker 01: And that's why we think that's reversible. [00:17:13] Speaker 02: Yeah. [00:17:14] Speaker 02: I mean, I agree with you. [00:17:16] Speaker 02: They could have done that, and maybe they should have done that. [00:17:18] Speaker 02: But to pick up on Judge Yu's point, you didn't ask for a claim construction. [00:17:26] Speaker 02: You didn't ask for any definition of what a system is. [00:17:31] Speaker 02: So here we are, sort of in the ether, arguing about what is a system, and what's in and what's out of a system. [00:17:41] Speaker 02: You know, you bore the burden of trying to persuade, and you're left with this. [00:17:50] Speaker 02: I don't know that it's within our purview to overturn that. [00:17:56] Speaker 01: I understand, Judge Lynn. [00:17:56] Speaker 01: I would just say, as a default matter, the system is a very broad concept. [00:18:01] Speaker 01: And if you look at what it is in the 983 patent, it's all over the place. [00:18:05] Speaker 02: I would go further and say it's not only a very broad, it's a very nebulous concept. [00:18:10] Speaker 02: It can be anything. [00:18:13] Speaker 02: Two things. [00:18:14] Speaker 02: That's a system. [00:18:15] Speaker 03: And in a lot of these cases, it doesn't mean necessarily, because we have quite a few of these process cases, that if the board had gone the other way, we would have found abusive discretion in that regard either. [00:18:25] Speaker 03: It's just your standard of review is pretty tough. [00:18:28] Speaker 03: In any event, you're banned. [00:18:30] Speaker 03: Your time will restory. [00:18:31] Speaker 03: Thank you. [00:18:43] Speaker 00: Good morning. [00:18:44] Speaker 00: Good morning, and may it please the court. [00:18:46] Speaker 00: My name is James Pickens for EcoFactor, Cross Appellant, and Appellee. [00:18:52] Speaker 00: Your Honors, would you like to begin with where we just left off on Claim 24? [00:19:00] Speaker 00: Yes. [00:19:01] Speaker 00: Thank you. [00:19:02] Speaker 00: So, Your Honor, the petitions mapping for Claim 24 [00:19:08] Speaker 00: was perfectly clear and consistent. [00:19:11] Speaker 03: Well, do you disagree that the argument with respect to claim one, if that were included in the discussion and in the petition for claim 24, you would have had a problem? [00:19:22] Speaker 00: I disagree. [00:19:24] Speaker 00: So first, if I may, I wanted to just reference appendix 271 and 272, which is claim 24. [00:19:38] Speaker 00: We already looked at their mapping for claim 1A, where it was very clear that they said the thermostat assembly 10, including processing means 44, is such a system. [00:19:50] Speaker 00: But they were also even clearer in 24E. [00:19:54] Speaker 00: That's also on appendix 272. [00:19:57] Speaker 00: And what they said, it couldn't be clearer. [00:20:00] Speaker 00: They said, the second data is provided by outside 36 air temperature sensors [00:20:06] Speaker 00: which are a part of a second sensor device and are external to Wiedekin's thermostat assembly 10 parentheses, the system close parentheses. [00:20:18] Speaker 00: And so in claim 24, it was abundantly clear from both 24A and 24E that there was a direct mapping of the thermostat assembly 10 is the system. [00:20:32] Speaker 00: So the board had a very clear articulation of the mapping. [00:20:37] Speaker 00: They said thermostat assembly 10 is the system. [00:20:40] Speaker 00: And then they argued that the sensors were external to that. [00:20:44] Speaker 00: And they were incorrect. [00:20:45] Speaker 00: As you pointed out, Judge Hughes, the sensors are integrated in the thermostat assembly 10. [00:20:50] Speaker 00: They're not external to it. [00:20:52] Speaker 00: So I think that the board correctly [00:20:55] Speaker 00: relied on the mapping they presented for Claim 24, since that was the claim that the board was evaluating. [00:21:03] Speaker 01: I understand all that. [00:21:05] Speaker 01: Is there any place in your patent specification that describes what it means to be external to the system for 24E? [00:21:13] Speaker 01: Is it different than the 1E? [00:21:15] Speaker 00: Yes. [00:21:17] Speaker 00: The patent is clear. [00:21:19] Speaker 00: Where? [00:21:19] Speaker 00: I mean, the patent, the preferred and binding of the patent in column five. [00:21:24] Speaker 03: What's the appendix number? [00:21:27] Speaker 00: I apologize, Your Honor. [00:21:28] Speaker 00: I have to pull that up. [00:21:29] Speaker 00: 71. [00:21:32] Speaker 00: Thank you. [00:21:32] Speaker 00: So the patent is clear that the preferred environment, and really the focus of the invention, is using internet weather. [00:21:42] Speaker 00: That was a key. [00:21:44] Speaker 00: In column five, it says at line 15, the server logs outside temperature and humidity data for the geographic locations for the building. [00:21:57] Speaker 00: Such information is available from sources that publish detailed weather information [00:22:02] Speaker 00: based on geographic areas such as by zip code. [00:22:06] Speaker 00: And also in the patent at appendix 60, you can see the weather database in figure five. [00:22:16] Speaker 00: So the preferred embodiment is that you are obtaining this outside temperature information over the internet, external to the system itself, which is the control system. [00:22:30] Speaker 00: like the servers and the thermostat. [00:22:34] Speaker 03: We're not limited to the embodiment. [00:22:37] Speaker 00: Not at all. [00:22:38] Speaker 00: I just wanted to clarify that absolutely. [00:22:40] Speaker 00: Claim 24 does have a different scope than claim 1. [00:22:42] Speaker 00: That's why it uses different language. [00:22:45] Speaker 00: It doesn't just say external to the building. [00:22:47] Speaker 00: 24E says it has to be external to the system. [00:22:50] Speaker 00: And once the petition mapped the system very clearly to the thermostat assembly 10, the question for the board was very simple. [00:22:59] Speaker 00: is the outside sensor in Vedekind external to the thermostat assembly 10, and it's not. [00:23:07] Speaker 00: It's clearly integrated as part of that assembly. [00:23:10] Speaker 00: Now, I wanted to respond to your question, Judge Prost, which was, would we have a problem if the board had instead applied the mapping for claim one, which was, my friend argues, is different than their mapping for claim 24? [00:23:24] Speaker 00: I don't think we would have a problem, and that's because when you look at [00:23:28] Speaker 00: What they said for claim one, they said, this is on appendix 215. [00:23:36] Speaker 00: So first of all, for claim one B, they have the same mapping as they did for claim 24. [00:23:44] Speaker 00: It says, quote, thermostat assembly 10, parentheses, the system, close parentheses. [00:23:50] Speaker 00: That's for claim one B on appendix 215. [00:23:55] Speaker 00: So even for claim one, I think it's pretty clear that thermostat assembly 10 was their system. [00:24:01] Speaker 00: Now going back to 1A, the petition said these components are the system, and it was referring to the previous sentence where they identified thermostat assembly 10 as one of the components of the system. [00:24:16] Speaker 00: So I don't think the petition sufficiently articulated a theory [00:24:21] Speaker 00: that we should artificially define system looking at this prior art reference to be everything except for one component. [00:24:30] Speaker 00: And the board actually apprehended that. [00:24:32] Speaker 00: And they noted in their final written decision that because the petition was silent on this issue, they didn't ask for a claim construction. [00:24:42] Speaker 00: And they didn't address outside sensors in this claim one mapping at all. [00:24:47] Speaker 00: It was silent on the outside sensor. [00:24:49] Speaker 00: So the petition never actually asked the board to find that a Posita would understand a system to exclude outside sensors. [00:24:59] Speaker 00: That argument's not in the petition. [00:25:00] Speaker 03: OK, can I move you to the first issue we covered, which was the processor-located remote? [00:25:07] Speaker 03: No, it's my understanding that the board ultimately said there was not sufficient motivation shown by the petition because there are multiple processors and they had to pick one of them. [00:25:21] Speaker 03: My read of the record, which may have been incomplete, you didn't make that argument. [00:25:25] Speaker 03: That wasn't an argument you made in response to the petition, correct? [00:25:29] Speaker 00: No, we made that argument, Your Honor. [00:25:31] Speaker 00: In Appendix 3563, that's the patent owner response. [00:25:38] Speaker 00: At the top of page appendix 3563, we pointed out that petitioner's expert Mr. Shaw does not address the limitation of the, quote, first process. [00:25:55] Speaker 00: because he didn't and neither did the petition. [00:25:57] Speaker 00: They never actually mapped first processor to any of the specific processors in the reference. [00:26:05] Speaker 00: They just didn't pick one and we pointed that out in our patent owner response on appendix 3563 and the board agreed with us that that failure to map first processor [00:26:18] Speaker 00: is fatal effectively to the petition's theory, because they didn't give the board a theory of what the first processor was. [00:26:27] Speaker 00: Would that matter if any of the processors would work? [00:26:32] Speaker 00: It absolutely does, Your Honor, because the petition was very clear in laying out its theory that their theory is that the memory is the computer memory [00:26:46] Speaker 00: and the registers 45, which is a database memory. [00:26:52] Speaker 00: So then when they're talking about this claim 20 limitation, the problem is that each of the processors that they've discussed in the petition is [00:27:07] Speaker 00: electrically connected to and local to both of those memories, the computer memory and the register 45 database memory. [00:27:14] Speaker 00: And the reason that they're always local and connected is because the processors that they're pointing to to show the computer thermal modeling, that is what this patent is about, [00:27:25] Speaker 00: They need this memory. [00:27:27] Speaker 00: And the board had substantial evidence and cited, you know, it's undisputed that in the Wiedekind reference, the processors are physically coupled to and local to the memory. [00:27:38] Speaker 00: They need the memory to work. [00:27:41] Speaker 00: So in my friend's yellow brief at page 33, I think it's actually very clear that the parties agree that in the prior art reference itself in Wiedekind, each of the relevant processors is electrically connected to the memory [00:27:56] Speaker 00: They said in the yellow brief that we can shows that Now again, they didn't pick a first processor but for the time being I think that in there, you know I think that they're now using the parameter estimation assembly 16 as what they wish they had mapped to the first processor in the petition but the board looked at that and [00:28:21] Speaker 00: component and found that that component is always electrically connected to the memory that they mapped. [00:28:28] Speaker 03: Okay, but we're talking about the combination of Wiedekind and Ehlers. [00:28:31] Speaker 03: And on page, I'm just looking now where you talk about, because my understanding of the board is they were talking about the motivation. [00:28:39] Speaker 03: And you make the argument on 3565, I believe, that it would [00:28:46] Speaker 03: This is merely saying it would have been obvious to change Woodkin because Ehlers uses a different system. [00:28:52] Speaker 03: Merely because a different configuration in the first processor could have been used does not make it obvious to use. [00:28:58] Speaker 03: But isn't there an obvious argument that transcends that the board should have dealt with? [00:29:02] Speaker 03: I mean, you've got two pieces of prior art. [00:29:05] Speaker 03: Everything's included in both. [00:29:07] Speaker 03: And the question is the motivation. [00:29:09] Speaker 03: You didn't make any arguments that it would have been physically impossible to do it because of the technology. [00:29:16] Speaker 03: There's a cost-benefit argument that could be made, but not a teaching away. [00:29:22] Speaker 03: So why wasn't there sufficient motivation? [00:29:25] Speaker 00: So there were two theories presented. [00:29:27] Speaker 00: One was based on Wiedekin by itself. [00:29:30] Speaker 00: But I'm talking about the other one. [00:29:31] Speaker 00: And then this is the second. [00:29:32] Speaker 00: I'm talking about the second. [00:29:33] Speaker 03: And it went down because the board concluded there was no motivation to combine. [00:29:38] Speaker 00: Right. [00:29:39] Speaker 00: And what the board found was that because the petition had not mapped first processor to any particular processor, the board felt that the petition could not meet its burden to show that a Posita would be motivated to implement the first processor in this specific way that it's remote and not connected to the memory that it needs to do all of this thermodynamic modeling work that the patent's about. [00:30:05] Speaker 00: What the board said was, effectively, you didn't map first processor to any particular thing. [00:30:11] Speaker 00: So even if we combine Ehlers with Wiedekind, well, where's the first processor? [00:30:16] Speaker 00: You didn't map it. [00:30:17] Speaker 00: Are you saying it's... What part of Ehlers is, you know, doing the... Even if you combine with Ehlers, there was no theory articulated below that [00:30:29] Speaker 00: would have actually shown that it would have been motivated to take Wietekin, which is already functional and everything's local to the processors, and somehow modify it. [00:30:40] Speaker 00: What the petition needed to do was say, here's the first processor. [00:30:46] Speaker 00: We say it's assembly 16. [00:30:50] Speaker 00: Then they needed to say it would be obvious to move assembly 16 away from the memory. [00:30:57] Speaker 00: But they didn't make that argument. [00:30:58] Speaker 00: They didn't theorize that it would be obvious to take a specific processor and move it away from the memory. [00:31:03] Speaker 00: And if they had, then we would have been able to respond to that argument and make our position of why perhaps we would be saying, look, actually, Ellers teaches you that this wouldn't work, or Wiedekin teaches away, or what have you. [00:31:17] Speaker 00: But that argument wasn't in the petition. [00:31:19] Speaker 00: So we think the board was totally [00:31:22] Speaker 00: within its discretion to say that since the petition didn't map First Processor, there's no way to get all the way to a motivation to modify Wiedekind to be arranged the way of Claim 20. [00:31:35] Speaker 00: And it's undisputed that Wiedekind by itself is not arranged in the manner of Claim 20. [00:31:41] Speaker 00: And finally, your honor, on the Ehlers piece, even if you combine with Ehlers under the petitions theory, they never said you would replace all the things in Wiedekind that are meeting all the other claim elements. [00:31:54] Speaker 00: So they still need Wiedekind for their combination. [00:31:58] Speaker 00: So it doesn't really matter what Ehlers discloses. [00:32:03] Speaker 00: They have Wiedekind for claim one. [00:32:06] Speaker 00: They need Wiedekind to meet all these elements, do all these computations, [00:32:10] Speaker 00: And so that's why it wasn't sufficient to just say, well, there's another reference out there. [00:32:16] Speaker 00: The board said, look, you're stuck with Wiedekin. [00:32:18] Speaker 00: That's your theory. [00:32:18] Speaker 00: You have to tell us what part of Wiedekin would you move to be remote and not connected to the memory? [00:32:25] Speaker 00: And they didn't do that. [00:32:29] Speaker 00: Your Honors, may I turn to our appeal, which is on claim one? [00:32:34] Speaker 00: So this is the part where we're the cross of talent. [00:32:40] Speaker 00: Our argument is about the obviousness finding on claim one. [00:32:46] Speaker 00: The law says that if you're going to combine, here what the board did was they agreed that you would combine non-local weather information with Wiedekin's system. [00:32:59] Speaker 00: You would basically strip out all of Wiedekin's required local sensors, and you would replace those with internet data. [00:33:07] Speaker 00: The law requires that they show that this would be suitable for Wiedekin's system and that Wiedekin does not teach a way. [00:33:18] Speaker 00: That's what the law required them to do. [00:33:20] Speaker 00: But there is no substantial evidence below that this would have been a suitable modification to Wiedekin. [00:33:28] Speaker 00: And Wiedekin actually does teach a way. [00:33:31] Speaker 00: So we think that under both prongs of the test, there was no substantial evidence to support the board. [00:33:38] Speaker 03: There was no- I don't quite get to take your argument. [00:33:42] Speaker 03: I mean, I understood your argument to be that there was a teaching away in Wadakin. [00:33:46] Speaker 03: And I don't think there's a sufficient basis, candidly, for teaching away. [00:33:51] Speaker 03: You rely on the word required. [00:33:53] Speaker 03: That doesn't do it for me. [00:33:55] Speaker 03: It didn't do it for the board. [00:33:56] Speaker 03: And the board was relying on the fact that there would have been [00:34:01] Speaker 03: You know, Wiedekind was ready for improvement. [00:34:04] Speaker 03: And there would have been benefits. [00:34:06] Speaker 03: And even though they're not the best, the law, KSR, does not require that it be the best option. [00:34:11] Speaker 03: So I thought the board's analysis of the motivation read very much as the standard. [00:34:19] Speaker 03: And assuming we reject your teaching away argument, what's deficient under the substantial evidence review of what the board did? [00:34:27] Speaker 00: What's missing is evidence. [00:34:30] Speaker 00: that this modification would be suitable for Wiedekin's nonlinear efficiency model. [00:34:36] Speaker 00: There was no evidence below from an expert or from a person of skill in the art. [00:34:42] Speaker 03: What does it mean by suitable? [00:34:44] Speaker 03: Do you mean it's impossible to do? [00:34:46] Speaker 03: What is suitable? [00:34:48] Speaker 00: No, I mean that in this context, I mean that Wiedekin's nonlinear efficiency model would successfully [00:34:57] Speaker 00: would would still feel it's purpose accurately modeling the system we can explain it well we don't have to is the law required that it fulfilled the same purpose or it fulfilled any sign up it's not about that but i don't think it requires it fulfilled the largest requires that a person of ordinary stony are would look at we begin and conclude that this modification would [00:35:21] Speaker 00: be compatible with the nonlinear efficiency model. [00:35:24] Speaker 00: And that's what was missing. [00:35:25] Speaker 00: They're just losing. [00:35:26] Speaker 03: Well, I don't know what compatible is. [00:35:27] Speaker 03: I think our case law says if you can establish that it would be technically impossible to do this, that would be sufficient. [00:35:36] Speaker 03: But the words you're using, not suitable or even inefficient, maybe there would be drawbacks, but there will also be corresponding benefits. [00:35:46] Speaker 03: That to me is quintessential. [00:35:49] Speaker 03: Sorry. [00:35:49] Speaker 03: motivation to come up right so what tell me my mom the in this context [00:35:57] Speaker 00: Wiedekin's nonlinear efficiency model teaches that the outside temperature around your building is really hard to measure with just one source because there's a lot of shade and other things that make you, it says in the reference, you have to place all these sensors all around the building to get an accurate reading. [00:36:20] Speaker 00: And so with that context in mind, [00:36:24] Speaker 00: Now to say that you would actually use a non-local source that doesn't account for any of those impacts that Wiedekin says you have to account for to model this building. [00:36:36] Speaker 00: That is what was missing below, is evidence addressing that teaching of Wiedekin, that for my nonlinear efficiency model, I need to place multiple sensors around this building, they're required for this to work, to do what it's supposed to do, which is to model the building accurately. [00:36:55] Speaker 03: Okay, we have to end it there. [00:36:57] Speaker 00: Thank you. [00:36:57] Speaker 03: Will we continue to reserve your rebuttal of the other side response here across the field? [00:37:03] Speaker 03: Okay, Mr. Smith. [00:37:07] Speaker 01: Thank you, Your Honor. [00:37:08] Speaker 01: I just have a few quick points in the cross appeal and then one point on the claim 20 argument. [00:37:14] Speaker 01: OK, start with the claim 20 because that's the way my brain works. [00:37:18] Speaker 01: No problem, Your Honor. [00:37:19] Speaker 01: I think that the argument that Mr. Pickens just made regarding the functional element 16 requiring memory and therefore not being remote from that memory is difficult to reconcile with the statement in the prior reference [00:37:37] Speaker 01: that says that functional block 16 can be made a separate and distinct component and implemented on a separate microprocessor. [00:37:45] Speaker 01: Once you have that and once they're remote from each other, it's possible to make it remote from the memory. [00:37:53] Speaker 01: On the cross appeal, the statement from Mr. Pickens that there's no substantial evidence that this is a suitable modification for Vedekan's purpose [00:38:04] Speaker 01: I would just remind that this is a case where EcoFactor has not challenged the reasonable expectation of success. [00:38:12] Speaker 01: They have not challenged the assertion in the petition that this would have been a predictable modification, as the board found. [00:38:18] Speaker 01: They have not challenged that the implementation would have worked. [00:38:22] Speaker 01: So what they're actually talking about in terms of suitability is a little bit cryptic there. [00:38:28] Speaker 01: We also have evidence before the board from the Ehlers reference and from Mr. Shaw's testimony, which occurs on Appendix Stage 341, that network weather data was accurate. [00:38:39] Speaker 01: And Ehlers says it is of sufficient localization to be accurate for the purpose in Ehlers. [00:38:47] Speaker 01: And the last point I want to make about the cross appeal is the alleged teaching away [00:38:54] Speaker 01: EcoFactor is reading a lot into this statement at column 3, lines 62 to 67 of the Vedicant reference. [00:39:02] Speaker 01: That statement says multiple sensors are required. [00:39:06] Speaker 01: because there's some variation in temperature by location. [00:39:10] Speaker 01: What it notably does not say is something like, don't use a network source of temperature. [00:39:15] Speaker 01: And that would be pretty odd, too, because the Vatican patent was written and filed in 1991, I think, prior to the invention of the web, so you wouldn't expect that. [00:39:24] Speaker 01: But it's more, I think, logically read, if anything, as a teaching away from using a single sensor in Vatican, just saying you need multiple sensors there, not a teaching away from using [00:39:34] Speaker 01: network source of data, nor is there any statement in Vedekind that its model requires some sort of enhanced accuracy for the outside temperature, or that it wouldn't work with network temperature data. [00:39:48] Speaker 01: Vedekind is just silent on that. [00:39:50] Speaker 01: The evidence from the board came from references that were closer to the relevant time frame for determining obviousness, which is 2007, and that's the Ehlers reference which says [00:40:01] Speaker 01: Fairly directly that network temperature is available and of sufficient accuracy. [00:40:05] Speaker 01: Thank you. [00:40:10] Speaker 03: All right, we'll restore the two minutes of rebuttal if you need them. [00:40:14] Speaker 03: Thank you. [00:40:15] Speaker 00: So the issue is motivation. [00:40:22] Speaker 00: It is on our appeal. [00:40:26] Speaker 00: What we're saying is that [00:40:29] Speaker 00: You would not be motivated in possession of Wetaken with a reference that's teaching you that you really need to use multiple sensors placed right at the building to capture these local effects. [00:40:43] Speaker 00: You wouldn't be motivated, and it says those are required, you wouldn't be motivated to use a single source that's not even local. [00:40:51] Speaker 00: That's the argument. [00:40:53] Speaker 03: Okay. [00:40:53] Speaker 03: Thank you. [00:40:53] Speaker 03: We thank both sides, and the case is submitted.