[00:00:00] Speaker 03:
Next case for argument is 23-1757, Google again versus Echo Factor again.

[00:00:07] Speaker 03:
Good morning, please proceed.

[00:00:12] Speaker 02:
Good morning, Your Honors.

[00:00:13] Speaker 02:
May it please the Court, my name is Elizabeth Lawton of the law firm of Smith Ballooch representing Appellant Google.

[00:00:20] Speaker 02:
And as Your Honor Judge Prove said in the prior case, there are a lot of issues between the two cases.

[00:00:26] Speaker 02:
So I'd like to take a moment here just to sort of orient the court as to the next issue that I'd like to discuss.

[00:00:32] Speaker 03:
We're dealing with Hildebrand and not Wetterking.

[00:00:33] Speaker 02:
Yes, we are now talking about Hildebrand.

[00:00:35] Speaker 02:
So we have a very different reference here.

[00:00:38] Speaker 02:
And the issue that I'd like to discuss first forms a part of the People's Appeal.

[00:00:42] Speaker 02:
And this issue concerns the boundary around or the scope of the claimed HVAC system.

[00:00:50] Speaker 02:
And this is in claim one.

[00:00:53] Speaker 02:
And while claim one was found unpatentable, the reason that this matters is that it was found unpatentable underground two, but not on ground one.

[00:01:04] Speaker 02:
And so because it wasn't found unpatentable underground one, the board did not reach dependent claims four through six.

[00:01:11] Speaker 02:
So the reason that we're talking about claim one here, and in particular claim element one C, is because the issue is ultimately

[00:01:19] Speaker 02:
getting to claims four through six.

[00:01:23] Speaker 02:
And so again, to orient ourselves, earlier we were sort of talking about the boundaries of the system as a whole.

[00:01:32] Speaker 02:
And I believe, as you said, Your Honor Judge Lynn, system can be sort of any two things, right?

[00:01:36] Speaker 02:
That's a nebulous term.

[00:01:38] Speaker 02:
And so here in the claim, we have sort of a general system.

[00:01:41] Speaker 02:
And then within that, we have what is an HVAC system.

[00:01:44] Speaker 02:
And that is specifically identifying the claims.

[00:01:46] Speaker 02:
So it's one of the components of the overall system.

[00:01:49] Speaker 02:
And the board here aired in concluding that Hildebrand does not teach claim element one C underground one.

[00:01:57] Speaker 02:
And this claim element C recites one or more processors that receive measurements of outside temperatures from at least one source other than said HVAC system.

[00:02:07] Speaker 02:
So now what we care about is that the source is separate from the HVAC system.

[00:02:14] Speaker 02:
And the petition here

[00:02:16] Speaker 02:
indisputably, mapped the claim HVAC system to the HVAC system as explicitly defined by Hildebrand.

[00:02:25] Speaker 02:
Hildebrand says HVAC system 12, which includes just the heating and the cooling equipment and the fan, is an HVAC system.

[00:02:33] Speaker 02:
And then the petition argued that Hildebrand's outside temperature sensor was external to that HVAC system, exactly what Hildebrand said it was, and that therefore this claim element was met.

[00:02:45] Speaker 02:
Now the board rejected this mapping.

[00:02:49] Speaker 02:
Instead it concluded, and here I'm quoting from the board's decision at Appendix 19,

[00:02:54] Speaker 02:
that the HVAC system claimed in the 567 patents, so there it's talking about what the scope of HVAC system as used in the 567 patents had to include more than just the heating and cooling equipment, and that it had to include any outside temperature sensor.

[00:03:12] Speaker 02:
Essentially what the board said here was that Google was prohibited for some reason from drawing the mapping the way that it did in the petition, and again that mapping exactly tracked Hildebrandt.

[00:03:24] Speaker 02:
And our position is that there's no basis for the board's decision really any way one looks at it.

[00:03:30] Speaker 02:
We think that the board's decision is best understood as implicitly construing the claimed HVAC system to determine what it must include because it's saying, look, you can't define it this way.

[00:03:41] Speaker 02:
It has to be something else.

[00:03:43] Speaker 03:
So the dispute comes down an entire way to this figure one in Hildebrandt, right?

[00:03:48] Speaker 03:
And you mapped this 22 as being outside, and the board mapped it as inside, and they rely on expert testimony by echo factor.

[00:03:57] Speaker 03:
So whether you're, I mean, given our standard of review, why is there a basis for dislodging the board's conclusion about whether skilled artisan review sensor 22

[00:04:11] Speaker 03:
as a different source in Hildebrand?

[00:04:14] Speaker 02:
Sure.

[00:04:14] Speaker 02:
So we submit that if you look at every single one of the pieces of evidence that it purported to rely on, none of them provide any substantial evidence.

[00:04:24] Speaker 02:
So first let's start with Hildebrand itself, right?

[00:04:28] Speaker 02:
Because EcoFactor identifies Hildebrand as supporting the position.

[00:04:31] Speaker 02:
Hildebrand says that its HVAC system is HVAC system 12.

[00:04:35] Speaker 02:
That's what it says.

[00:04:37] Speaker 02:
How can Hildebrand support a position that the HVAC system is something else?

[00:04:43] Speaker 02:
I believe Equifacture at one point says in its brief that Hildebrand refers to figure one somehow as the HVAC system.

[00:04:51] Speaker 02:
That's incorrect.

[00:04:52] Speaker 02:
It never ever says that.

[00:04:54] Speaker 02:
It says that figure one is the system.

[00:04:56] Speaker 02:
Well, of course, figure one is the system.

[00:04:57] Speaker 02:
It's the over-broad overall system, just like similar to the claim.

[00:05:01] Speaker 02:
You have an overall system with other subsystems within it.

[00:05:05] Speaker 02:
Hildebrand itself, the prior art itself, cannot provide substantial evidence support.

[00:05:12] Speaker 02:
So the next thing is Google's expert Mr. Shaw's opinion.

[00:05:20] Speaker 02:
And so the board said, well, we're rejecting this because it's uncorroborated and unsupported.

[00:05:27] Speaker 02:
That can't be right, because his opinion is exactly corroborated by Hildebrand.

[00:05:32] Speaker 02:
He's relying on citing to Hildebrand, and Hildebrand is saying, this is an HVAC system.

[00:05:36] Speaker 02:
And he's saying, that's what a posita would understand an HVAC system to be.

[00:05:40] Speaker 02:
That's the corroboration.

[00:05:41] Speaker 02:
It's not clear what else he was supposed to do there.

[00:05:44] Speaker 02:
He's pointing to the prior art's own identification of an HVAC system as representing how a posita would understand what an HVAC system would be.

[00:05:53] Speaker 02:
So then let's look at Mr. Shaw's general background testimony, right?

[00:05:58] Speaker 02:
And this is the testimony that the board relied on, where the board suggested perhaps that he was saying that an HVAC system had to include more elements.

[00:06:07] Speaker 02:
So first of all, that testimony was not specific to the 567 patent or Hildebrand, and it never said that an HVAC system must include any of those other elements.

[00:06:22] Speaker 02:
It may, for example, include some of those elements, but it never said that it had to.

[00:06:26] Speaker 02:
And it also is completely silent as to whether or not an outside temperature sensor would be considered to be part of an HVAC system.

[00:06:35] Speaker 02:
So that testimony just cannot provide substantial evidence to support the board's decision.

[00:06:40] Speaker 04:
The board concluded, the bottom of appendix 19, that because the outside zone temperature sensor is part of the HVAC system, petitioner has not sufficiently shown that Hildebrand teaches limitation 1C.

[00:06:57] Speaker 04:
That's correct.

[00:06:58] Speaker 04:
And they reached that conclusion by referencing Hildebrand's text from 561 to 611.

[00:07:09] Speaker 02:
Yes, Your Honor.

[00:07:10] Speaker 04:
Basically making the argument that, well, you need that outside temperature sensor to work.

[00:07:15] Speaker 02:
Right.

[00:07:16] Speaker 04:
Does it matter that whether the system has to work or not?

[00:07:21] Speaker 02:
Well, I think your honor is exactly hitting on a very important point here is that the board sort of attempted to reason by pointing to Hildebrand and saying that, well, the HVAC system, this is, again, contrary to Hildebrand's own description of what it says its HVAC system is.

[00:07:38] Speaker 02:
It says that, well, it uses outside temperature measurements from an outside temperature sensor.

[00:07:43] Speaker 02:
What that description there is is basically talking about the fact that it uses it in its calculations.

[00:07:49] Speaker 04:
And it needs that data in order to provide the efficiency calculation that it desires.

[00:07:57] Speaker 02:
It does need outside temperature data, and that's where it gets it from.

[00:08:01] Speaker 02:
But I think that their attempt at reasoning that because it gets this data from an outside temperature sensor,

[00:08:09] Speaker 02:
that this outside temperature sensor must be a part of the HVAC system, this is circular.

[00:08:16] Speaker 02:
It doesn't actually stand up to scrutiny.

[00:08:19] Speaker 04:
Well, but without that outside temperature data, there would be no way to gauge the efficiency of the system, and that's what older brand is all about.

[00:08:31] Speaker 02:
Well, if I may, Your Honor, if I could direct you to claim one.

[00:08:36] Speaker 02:
and to claim element 1C.

[00:08:41] Speaker 02:
So here, in the 5, 6, 7 patent, we already have an instance where EcoFactor, in its patent, is using outside temperature data.

[00:08:52] Speaker 02:
It's getting it.

[00:08:53] Speaker 02:
It needs it in its calculations.

[00:08:55] Speaker 02:
It's there in the claim.

[00:08:57] Speaker 02:
But it's saying that it's getting it from a source other than the HVAC system.

[00:09:03] Speaker 02:
If the mere fact that somebody needs outside temperature measurements means that that source of the measurements has to be within the system, then this claim language is actually impossible to satisfy.

[00:09:19] Speaker 02:
It can't mean that.

[00:09:21] Speaker 02:
There has to be some way to get outside temperature measurements that you need in your calculations, but have it be not part of the HVAC system.

[00:09:31] Speaker 02:
for this claim language to have any meaning.

[00:09:34] Speaker 03:
So... Okay, so I mean, that's just going into another... I mean, we did no claim construction here, whatever.

[00:09:40] Speaker 03:
But according to Epofactor's expert, and I think this aligns with Judge Lynn's concerns, it's that you look at Hildebrand, you look at the figure, and the temperature measurement is clearly, with all the arrows and stuff, it's part of the cooling and the heating system in the HVAC system.

[00:10:00] Speaker 03:
I would disagree with that.

[00:10:02] Speaker 03:
How do you reach the conclusion it's outside?

[00:10:06] Speaker 03:
Because that's what you say.

[00:10:08] Speaker 03:
I mean, is there anything in Hildebrand that says this is outside?

[00:10:13] Speaker 02:
Well, Hildebrand says that its HVAC system is the heating and cooling equipment.

[00:10:21] Speaker 02:
it doesn't say, it identifies the outside temperature sensor separately.

[00:10:26] Speaker 04:
The problem is that if you look at the claim, we've got three different systems.

[00:10:35] Speaker 04:
A system, then a HVAC control system, and then a HVAC system.

[00:10:42] Speaker 04:
And it's hard to discern

[00:10:45] Speaker 04:
what we're talking about and that leaves us in this quandary that left the board in the same quandary about, you know, where do you draw the line?

[00:10:54] Speaker 04:
Where are the boundaries to this system and what's in and what's out?

[00:10:59] Speaker 04:
And the problem for you is that the standard of review is a high burden and, you know, it's hard for me to say that the board didn't have at least some substantial evidence to hang its hat on.

[00:11:16] Speaker 02:
Well, Your Honor, I would respectfully submit that if really what we're talking about here is where do you draw the boundaries around this system and what's in and what's out, then we're in a question of claim construction here.

[00:11:27] Speaker 02:
Did you ask for claim construction?

[00:11:29] Speaker 02:
We did not ask for claim construction.

[00:11:31] Speaker 02:
We pointed out in our reply

[00:11:34] Speaker 02:
that ecofactor seemed to be making narrowing arguments, saying that, oh, no, it had to include these other things.

[00:11:41] Speaker 02:
And we said in our reply, they've asked for no narrowing construction.

[00:11:46] Speaker 02:
We're just submitting that it take its plain, ordinary meaning here, which would be consistent with Hildebrand.

[00:11:51] Speaker 02:
That's the HVAC system.

[00:11:53] Speaker 02:
That's what Hildebrand says.

[00:11:54] Speaker 03:
We've got other issues that I assume you want to get to.

[00:11:56] Speaker 03:
So why don't we move on?

[00:11:57] Speaker 02:
Of course.

[00:11:58] Speaker 02:
Absolutely.

[00:12:01] Speaker 02:
If I may, though, just very quick, just on that last issue, I just want to note we do describe this in the briefing that the 567 patent repeatedly describes the HVAC system as being separate from the thermostat.

[00:12:15] Speaker 02:
And so if we really do have a boundary issue here, then this is a claim construction issue that this court can address de novo.

[00:12:23] Speaker 02:
And that if one looks at that evidence, the petition's mapping is, in fact, consistent with the manner in which the 567 patent treats this issue.

[00:12:30] Speaker 02:
And so unless there are any further questions on that, I will take Judge Pro's suggestion and move on to the next issue.

[00:12:35] Speaker 04:
I know you're into your rebuttal, but could you at least briefly mention the 8F issue?

[00:12:41] Speaker 02:
Yes, yes, Your Honor, the 8F issue, of course.

[00:12:45] Speaker 02:
And so this, and for the panel, this issue relates to the board's finding that the SpayLink reference does not teach claim element 8F, and this is underground 4.

[00:12:55] Speaker 02:
So now we're talking about a different reference.

[00:12:56] Speaker 02:
We're talking about the SpayLink reference here.

[00:12:59] Speaker 02:
And so claim element 8F is the only claim element that Ecofactor disputed before the board.

[00:13:06] Speaker 02:
And the board's finding regarding unpatentability of no unpatentability was just only in view of claim element 8F.

[00:13:15] Speaker 02:
And so there we have an issue where there has to be the comparison

[00:13:18] Speaker 02:
of the relative efficiency.

[00:13:19] Speaker 03:
Okay, and the problem here is, if I've got the right piece of this puzzle, this is the one where the board said you made, they rejected the comparison between a computer model, and then, and let's assume we agree with that, and therefore we're left with whether you preserved and developed the alternative argument that deals with two paragraphs 44 and 56.

[00:13:45] Speaker 03:
Right, right, right.

[00:13:47] Speaker 03:
44 and 58.

[00:13:49] Speaker 03:
And I don't see.

[00:13:50] Speaker 03:
I mean, you lead with one sentence on that, and everything else has to do with the computer modeling.

[00:13:55] Speaker 03:
So I'm not seeing where the board fairly abused its discretion in saying that that argument wasn't adequately developed and preserved.

[00:14:06] Speaker 02:
Sure, Your Honor.

[00:14:07] Speaker 02:
So I guess I know that I would say that it's an alternative argument.

[00:14:11] Speaker 02:
I think that our point is that it all forms a part of the same argument.

[00:14:15] Speaker 03:
OK, whether it's the same or whatever, the portion about computer models, take that off the table and assume the board, and we're not satisfied that you can use computer models.

[00:14:24] Speaker 03:
So then we're left with what's left.

[00:14:26] Speaker 03:
Sure.

[00:14:28] Speaker 02:
So there was the reference to paragraph 44, which does discuss actually explicitly that

[00:14:40] Speaker 02:
The more buildings from which data is collected, the more accurate the model and comparisons may be.

[00:14:46] Speaker 02:
So that's linking it directly to the use of the model.

[00:14:50] Speaker 02:
And we're talking about the fact that there is a comparison going on there.

[00:14:55] Speaker 02:
And then also, as we explained in our briefing, that's not the only place that paragraph 44 was discussed.

[00:15:04] Speaker 02:
In fact, the petition says, as discussed above, where's the petition?

[00:15:07] Speaker 02:
So in particular, I'm discussing Appendix 165.

[00:15:30] Speaker 02:
And here it says, as discussed above, Spalink first teaches that the performance metrics of climate control systems... I'm sorry, I'm not finding you.

[00:15:39] Speaker 03:
I'm on 165.

[00:15:40] Speaker 02:
165.

[00:15:40] Speaker 02:
And this is right at the bottom of the page under claim element 8F.

[00:15:43] Speaker 03:
Okay.

[00:15:44] Speaker 02:
And so that's where we begin the discussion of this particular claim element and then talking about the model.

[00:15:50] Speaker 02:
But as discussed above, the board, I mean, this court has made very clear, I think, in its precedent, that the board has to evaluate the petition as a whole here.

[00:15:57] Speaker 02:
And in fact, as discussed above, and in particular with respect to claim element 8D, which was actually undisputed.

[00:16:06] Speaker 02:
EcoFactor never disputed that claim element 8D was met.

[00:16:10] Speaker 02:
There is an entire discussion there in particular referencing

[00:16:13] Speaker 02:
Paragraph 44 and also the portions of Spay Link regarding the model explaining how those disclosures relate and how this comparison is done of performance metrics.

[00:16:26] Speaker 02:
And also, and particularly your honor, that is discussed at appendix page 160 to 163.

[00:16:38] Speaker 02:
And then also additionally, there's also discussion.

[00:16:41] Speaker 03:
And this is the overview under the heading of what?

[00:16:44] Speaker 03:
The gram factors?

[00:16:46] Speaker 02:
No, this is actually the discussion for 8D in particular, claim element 8D, appendix 160 to 163.

[00:16:56] Speaker 02:
And then there's also additional discussion in the overview section.

[00:17:00] Speaker 02:
So before we actually get to the claim mapping, there's an overview of the references.

[00:17:04] Speaker 02:
There's also discussion at appendix 152 and 153.

[00:17:08] Speaker 02:
So I think that might be what your honor's referring to this section right before we get into the grand factors.

[00:17:12] Speaker 02:
There's also a discussion there that's specifically calling out 44 and talking about the nature of this comparison.

[00:17:19] Speaker 02:
And so I think that the petition as a whole makes clear that these arguments are linked together, that this paragraph 44 relates to the discussion of the use of the model.

[00:17:33] Speaker 02:
that and that in fact it provides evidentiary support for the fact that the model can enable these types of comparisons.

[00:17:41] Speaker 02:
And to be clear, the board said that the computer model is not a second HVAC system.

[00:17:48] Speaker 02:
Well, we never argued that.

[00:17:49] Speaker 02:
We never said the model itself is a second HVAC system.

[00:17:53] Speaker 02:
We said that using a computer model, one can make a comparison as Spalings specifically teaches that it can be done.

[00:18:02] Speaker 02:
between a first HVAC system, here to one that's in the building at issue, and then a second HVAC system, which is from any one of the other buildings, right, from which Spalink is collecting data.

[00:18:14] Speaker 02:
And so I would submit that those portions of the petition make this clear.

[00:18:18] Speaker 02:
And then also with the reply, I think we also made this clear, too, that 44 generally supports the overall general argument.

[00:18:27] Speaker 02:
And so we think that

[00:18:28] Speaker 02:
The board's failure to consider those portions of Spalink really infected its analysis with respect to the model.

[00:18:34] Speaker 02:
I think as a whole, Spalink's teachings make very clear that these types of comparisons are being performed between the first HVAC system and then another HVAC system.

[00:18:44] Speaker 02:
For example, using the model.

[00:18:49] Speaker 03:
Using the model?

[00:18:50] Speaker 02:
Yes.

[00:18:51] Speaker 02:
That's one of the ways in which it can be done.

[00:18:53] Speaker 03:
Okay, but the issue is if we're not doing the computer, you're talking about the computer model.

[00:19:02] Speaker 02:
So the discussion with the claim element 8F, I think, focuses on the fact that the model is one of the ways in which this could be done.

[00:19:09] Speaker 02:
Right.

[00:19:09] Speaker 03:
So assume that's not sufficient.

[00:19:11] Speaker 03:
Because assume that we agree with the board that you can't.

[00:19:14] Speaker 03:
A computer model is not sufficient.

[00:19:16] Speaker 03:
I have the one sentence on 165 that refers to performance metrics can be compared between buildings.

[00:19:25] Speaker ?:
Right.

[00:19:26] Speaker 02:
And then I think I would again refer your honor to the portions that we just discussed the discussion with respect to claim element 80 that's talking about The comparison determined the relative efficiency of a first HVAC system and the second HVAC system that which again Ecofactor did not dispute below as to claim element 80 And then also the overview discussion that's failing that we just discussed

[00:20:03] Speaker 00:
Good morning, Your Honors.

[00:20:05] Speaker 00:
James Pickens again for EcoFactor.

[00:20:09] Speaker 00:
As you noted, this one is really full of issues.

[00:20:13] Speaker 00:
And I'm happy to start wherever you'd like.

[00:20:19] Speaker 00:
We could start where we left off with Claim 8.

[00:20:21] Speaker 03:
Well, why don't we start where we left off, where I pointed to one portion of the petition and your friend pointed to other portions, which I think sheets.

[00:20:30] Speaker 03:
She was representing support the fact that leaving aside the computer model, there was a sufficient argument made and the board didn't acknowledge that.

[00:20:39] Speaker 03:
So what's your response?

[00:20:40] Speaker 00:
So my response is twofold.

[00:20:43] Speaker 00:
First, this came up at the hearing below.

[00:20:47] Speaker 00:
The board asked my friend,

[00:20:52] Speaker 00:
Please help us with this.

[00:20:55] Speaker 00:
We're looking at your petition.

[00:20:56] Speaker 00:
We only see one theory, which is the computer model theory.

[00:21:00] Speaker 00:
We don't see the second theory.

[00:21:02] Speaker 00:
And they had a dialogue, and the board got them to agree, effectively through their questioning, that aside from this single sentence at the bottom of Appendix 165, then they go on for pages and pages and pages,

[00:21:20] Speaker 00:
And it's just the reference model theory.

[00:21:24] Speaker 00:
That's really the theory for ADAC.

[00:21:26] Speaker 00:
And the board cited that in its final written decision, that colloquy that it had during the oral argument with my friend, because the board wanted to make clear that it did try and look to see, at oral argument, explored this issue with them about, you know, you're saying you have this second theory about performance metrics,

[00:21:46] Speaker 00:
We don't see that in your petition.

[00:21:49] Speaker 00:
And the board rightly perceived that in the actual analysis that the petition presents, when they actually do the mapping for 8F, that shows up on Appendix 167.

[00:22:02] Speaker 00:
And on Appendix 167, they're saying that it's the reference model.

[00:22:07] Speaker 00:
That's their theory.

[00:22:08] Speaker 00:
So I think that the board did two things right.

[00:22:14] Speaker 00:
One, it actually explored, during oral argument, whether or not the petition had successfully preserved two theories.

[00:22:23] Speaker 00:
And the board, in its discussion with counsel, counsel agreed that it really didn't, because it just

[00:22:32] Speaker 00:
It was sort of this like prefatory sentence leading up to the actual mapping and the analysis on Appendix 166 and 167, and in that actual mapping and analysis, it was very consistent and clear that they were mapping the model and only the building model.

[00:22:48] Speaker 00:
And I think that the board was correct to say that what they're saying is the way in which these performance metrics are, the only way in which performance metrics are compared is through the model.

[00:23:02] Speaker 00:
That was the board's understanding of the petition, and that's actually what the petition's alleged.

[00:23:08] Speaker 00:
It's not really articulating on Appendix 165, 166, and 167 that there are two separate

[00:23:15] Speaker 00:
comparisons going on.

[00:23:17] Speaker 00:
That's really not in there.

[00:23:19] Speaker 00:
I think what they're saying is the way in which this limitation is satisfied.

[00:23:23] Speaker 03:
But if you agree that this last sentence on 165 does include the spandex discussion of an actual building in paragraph 44 or whatever, they start with the rest of the stuff on the computer model, which is being rejected, as one way of performing it, suggesting that there are other ways of performing it, which are included in the first sentence.

[00:23:45] Speaker 03:
I guess, problem line is, if the board had decided to take this as an alternative argument and relied on that, would you be here saying that was an abuse of discretion?

[00:23:58] Speaker 01:
Well, I think, honestly, probably, because I honestly think- I made this wrong question.

[00:24:05] Speaker 03:
Do you think you would prevail if you were making an argument?

[00:24:10] Speaker 00:
I respectfully submit that we would, because it's so conclusory.

[00:24:17] Speaker 00:
It's a single sentence.

[00:24:19] Speaker 00:
It doesn't go into any specifics, and it doesn't actually say that

[00:24:26] Speaker 00:
There are multiple ways you can do it.

[00:24:28] Speaker 00:
And one of them is with the building model way.

[00:24:31] Speaker 00:
But there are other ways, too.

[00:24:32] Speaker 00:
And it would be obvious to do these.

[00:24:34] Speaker 00:
They could have said all that, and they didn't.

[00:24:37] Speaker 03:
Why don't you turn to the plane mapping question in 1C?

[00:24:41] Speaker 00:
Absolutely.

[00:24:42] Speaker 00:
So 1C, I submit that the issue was really

[00:24:54] Speaker 00:
that the petition presenting and mapping, and they argued that the claim language HVAC system would map to HVAC 12 in Figure 1.

[00:25:09] Speaker 00:
So the board then

[00:25:12] Speaker 00:
made its own assessment of whether that's how a person of ordinary skill in the art would map HVAC system in Figure 1.

[00:25:21] Speaker 00:
And the board had substantial evidence supporting its decision that that's not how a person of skill would do the mapping.

[00:25:27] Speaker 03:
Is that your expert?

[00:25:29] Speaker 00:
Both experts.

[00:25:30] Speaker 00:
So the board actually cited both experts in its decision.

[00:25:38] Speaker 00:
So on Appendix 19,

[00:25:40] Speaker 00:
The board relied on and credited EcoFactor's expert testimony, which was Dr. Palmer, and they cited his testimony.

[00:25:49] Speaker 00:
You can see his testimony at Appendix 1304.

[00:25:53] Speaker 00:
That's what corresponds to the citation that the board made to Exhibit 2002 on Appendix 19.

[00:26:01] Speaker 00:
So the board credited our expert's opinion.

[00:26:05] Speaker 00:
Our expert's opinion was that looking at figure one, a person of skill in the art would see that the outside sensor in this figure, in this reference, is part of the HVAC system.

[00:26:16] Speaker 00:
Because in this system, it's a direct input, it's local, and it's directly influencing when it turns on and off.

[00:26:27] Speaker 00:
The board also noted that, as our expert noted in his declaration, Google's expert agreed with him.

[00:26:36] Speaker 00:
Mr. Shaw, who was Google's expert, also opined in his declaration below that a person of skill in the art understands an HVAC system includes more than just the cooling and the heating unit and the fan.

[00:26:51] Speaker 00:
Their expert said it also includes numerous other components, including the thermostat.

[00:26:57] Speaker 00:
which the board said, well, if your expert says it includes the thermostat, which has sensors in it.

[00:27:04] Speaker 00:
And EcoFactor's expert, Dr. Palmer, also says that a posito would understand the HVAC system includes the thermostat and the sensors that energize the cooling.

[00:27:16] Speaker 00:
Both experts agree that this is how you would read figure one.

[00:27:21] Speaker 00:
You would read figure one that the HVAC system includes the sensor.

[00:27:25] Speaker 00:
And so since both experts agreed and the board considered the expert testimony on both sides,

[00:27:32] Speaker 00:
and credited our expert's opinion over theirs, and in fact kind of found that both experts were on the same page, I think the board had substantial evidence for its determination that the petitions had failed to prove that that mapping is how a person of scale would.

[00:27:50] Speaker 00:
actually interpret the reference.

[00:27:52] Speaker 00:
So there's just, there's two experts, the board credited ours, the board found that their expert was really agreeing with our expert, and the board also analyzed figure one, and it saw a lot of the same things that your honors noted in the discussion with my friend, that when you really look at figure one, the outside sensors are

[00:28:15] Speaker 00:
They are directly coupled to and part of what the person would think is the HVAC system in this reference.

[00:28:25] Speaker 04:
Because system is not defined, even though persons of skill in the art might consider the HVAC system to include

[00:28:37] Speaker 04:
the outside zone temperature sensor.

[00:28:39] Speaker 04:
What's to prevent Google from reading the claim on the device and concluding that the way they read it, the system is something different?

[00:28:55] Speaker 04:
Because it's undefined.

[00:28:57] Speaker 04:
So they're saying, OK, I can read the claim on this part of the reference, which is in and of itself enough

[00:29:07] Speaker 00:
to be assisted.

[00:29:09] Speaker 00:
So I think that the problem is that only attorney argument supports that sort of artificial mapping.

[00:29:16] Speaker 00:
The experts who both provided their opinions below, they didn't see it that way.

[00:29:22] Speaker 00:
And we have to apply the lens of the ordinary artisan.

[00:29:26] Speaker 00:
And from their point of view, that mapping that you just described isn't how they see it.

[00:29:34] Speaker 00:
It's just neither one would say under oath that

[00:29:39] Speaker 00:
The HVAC system in Hildebrand would be understood as limited to the cooling unit and the heating unit.

[00:29:46] Speaker 00:
Both of them, instead, they agree that in this art, when we see HVAC system in this claim or in this reference, it does refer to more than just the cooling unit.

[00:29:59] Speaker 00:
It includes the thermostat.

[00:30:00] Speaker 00:
It includes the sensors that energize the system to turn.

[00:30:08] Speaker 00:
If it's permissible, Your Honors, I'd like to turn to, you know, if you have any other questions.

[00:30:20] Speaker 00:
But I think that the board was right on both the issues we've discussed so far.

[00:30:29] Speaker 00:
You know, it had substantial evidence to credit our expert's opinion.

[00:30:34] Speaker 00:
It also found their expert was consistent with ours.

[00:30:37] Speaker 00:
And so I think under the standard of review here, the right thing to do is to affirm the board's finding.

[00:30:43] Speaker 00:
It didn't come up, by the way, but the other thing that my friend is appealing on these claims.

[00:30:50] Speaker 03:
Well, they didn't address you going to do five and six?

[00:30:53] Speaker 03:
Yeah, I was going to.

[00:30:54] Speaker 03:
They didn't raise it, I don't know why.

[00:30:56] Speaker 00:
But if you don't, I'm happy to move on.

[00:30:58] Speaker 00:
I just think... Can I go to the cross appeal?

[00:31:01] Speaker 00:
Sure.

[00:31:03] Speaker 00:
So, in the cross appeal, we're basically arguing that

[00:31:11] Speaker 00:
When you're going to do a motivation to combine analysis, you have to do the full analysis.

[00:31:19] Speaker 00:
If your theory is that an ordinary person of skill sitting in a room would pull three different systems and they would be motivated to put all three together, then you have to explain why.

[00:31:33] Speaker 00:
And it's not sufficient to say that sort of

[00:31:38] Speaker 00:
using our claim that the patent as a roadmap, it's not sufficient to just say, well, this piece, it would be obvious to combine one reference with that one, and this piece, it would be obvious to combine this reference with something else.

[00:31:53] Speaker 00:
But then the theory below was that a person would combine all three.

[00:32:00] Speaker 00:
But there was no argument why.

[00:32:02] Speaker 04:
And I think that's just... But aren't they saying it would have been obvious to combine A and B, and in addition, it would be obvious to add C to that combination?

[00:32:14] Speaker 00:
That's where I disagree.

[00:32:15] Speaker 00:
I think what they said was just that it would be obvious to add, to combine A and B, and it would be obvious to combine A and C.

[00:32:25] Speaker 00:
What's missing is an argument that once you've combined A and B, which they have to do for their theory, that you would then combine C with A and B. So your articulation, Judge Lin, I think that was what was missing from below.

[00:32:40] Speaker 00:
If there was an argument below that having combined A with B, you would also need C, I wouldn't be making this argument.

[00:32:50] Speaker 00:
I wouldn't be able to.

[00:32:51] Speaker 00:
That's my argument, is that if you're going to do A, B, and C,

[00:32:55] Speaker 00:
Once you've combined A and B, now you have to support that a combination of A and B plus C would be motivated.

[00:33:05] Speaker 00:
And otherwise, what we end up with is a situation where, for all we know, there could be many number of reasons why A and C might be compatible, but A, B, and C are not.

[00:33:20] Speaker 00:
And so that's really the argument we're making.

[00:33:25] Speaker 00:
big ask for the petition to, if you need three references, go ahead and explain why all three are compatible.

[00:33:34] Speaker 00:
And don't sort of just gloss over it as happened here.

[00:33:38] Speaker 00:
And I would say it's just an omission.

[00:33:40] Speaker 00:
And given that it's not there, there was no theory for the board to evaluate, which

[00:33:46] Speaker 00:
You know, the ground that they raised in the petition was A, B, and C, but they never said it would be obvious to take A and B together and add C. And so that's our basis for the cross appeal.

[00:34:01] Speaker 00:
And if there's nothing further, Your Honors, thank you very much.

[00:34:04] Speaker 00:
Thank you.

[00:34:08] Speaker 03:
We'll restore two minutes.

[00:34:14] Speaker 02:
Thank you very much, Your Honor.

[00:34:16] Speaker 02:
I like to address the cross appeal.

[00:34:20] Speaker 02:
So again, the only issue that's been raised is the issue of motivation to combine.

[00:34:26] Speaker 02:
They did not raise reasonable expectation of success.

[00:34:31] Speaker 02:
and so these arguments about whether or not these things could have been combined or there's something about some kind of incompatibility that has not been raised and in fact the board's findings were based off of undisputed testimony below about the combinability.

[00:34:45] Speaker 03:
What say you to the argument he made with regard to combining the three references, the two versus the three and then one?

[00:34:53] Speaker 02:
Well, I would say that I don't think he's identified any precedent from this court that supports this position.

[00:35:00] Speaker 02:
The Inland Magnum Tools case is not on point.

[00:35:03] Speaker 02:
In fact, they admit that it's not on point kind of in their briefing because there was an attempt, essentially, to borrow rationales from other references.

[00:35:14] Speaker 02:
And the court said that that was impermissible, whereas here,

[00:35:17] Speaker 02:
No, it's just citing back to the rationale that was provided in the prior ground and saying that that applies.

[00:35:24] Speaker 02:
There's no impermissible borrowing there.

[00:35:27] Speaker 02:
So I think they themselves state in their briefing that that is a distinction.

[00:35:31] Speaker 02:
So I don't think that case is on point.

[00:35:33] Speaker 02:
Instead, I would direct this court to the court's opinion in the intellectual ventures to case that was cited in Google's briefing.

[00:35:42] Speaker 02:
I think it's directly on point here.

[00:35:44] Speaker 02:
And I think it confirms the propriety of the board's approach.

[00:35:47] Speaker 02:
Intellectual Ventures, who was the patentee, raised a number of arguments that were sort of virtually identical to what Ecofactor is saying here.

[00:35:56] Speaker 02:
And the court rejected all of them.

[00:35:58] Speaker 02:
I think it goes from about pages 7 to 13 or so of that case.

[00:36:04] Speaker 02:
essentially saying that, look, this is the flexible analysis under KSR, and if you have explained the motivation, and you've explained how these things relate, then that is sufficient.

[00:36:18] Speaker 02:
And we submit that it's certainly sufficient here for those reasons, and also, again, because we explicitly incorporated the prior analysis in the petition.

[00:36:37] Speaker 00:
Very briefly, Your Honors, we submit that the applicable test is from, for example, it's in Belden, Inc.

[00:36:45] Speaker 00:
versus Birktek, 805, F3, 1064, 1073, Federal Circuit 2015.

[00:36:52] Speaker 00:
It's cited in our reply brief that the motivation of combined inquiry asks whether a person of ordinary skill in the art would have been motivated to make the combinations of prior art.

[00:37:06] Speaker 00:
to arrive at the claimed invention.

[00:37:08] Speaker 00:
So here the combination that they want is three references.

[00:37:15] Speaker 00:
That's the combination.

[00:37:16] Speaker 00:
And so the board actually agreed and noted on Appendix 38 that there

[00:37:24] Speaker 00:
theory does not mention one of them, an Austrian.

[00:37:28] Speaker 00:
And so they just didn't address the threshold test, which is that you would be motivated to make this combination of A, B, and C.