[00:00:00] Speaker 02:
Our second case this morning is number 231354, Honeywell International Inc.

[00:00:06] Speaker 02:
versus 3G licensing.

[00:00:08] Speaker 02:
Mr. Halverson.

[00:00:12] Speaker 04:
Good morning, Your Honors.

[00:00:13] Speaker 04:
Eric Halverson from KNO Gates on behalf of Appellants.

[00:00:16] Speaker 04:
This case is the Matrix Map case.

[00:00:19] Speaker 04:
The 718 pattern represents almost the smallest possible increment above petitioner's primary reference, Phillips 46.

[00:00:28] Speaker 04:
which can be found at appendix 1423.

[00:00:29] Speaker 04:
Now, not all increments or differences, however, are patentable differences, as we know from grand rejoinder.

[00:00:38] Speaker 04:
Now, there can be no denying that the 718 patent admits that the mathematical algorithm it claims and the challenge claims is a known algorithm, appendix 56.

[00:00:47] Speaker 04:
There can be no denying that of the 100 entries in the basis sequence, the matrix that they'd issued, 98 of those entries are identical between the claimed matrix

[00:00:58] Speaker 04:
in the prior art matrix, with the last two digits simply being switched, the one and the zero exchanging places.

[00:01:05] Speaker 04:
Now, Phillips 46, petitioner's primary reference, expressly tells a person of ordinary skill in the art to protect the most significant bit of the CQI data.

[00:01:16] Speaker 04:
This person of ordinary skill in the art understood that the placement of a one in the last digit of that matrix provides more representation

[00:01:27] Speaker 04:
to that most significant bit.

[00:01:29] Speaker 04:
Conversely, a placement of the one in the second to last entry of that matrix provides more representation or protection to the next most significant bit.

[00:01:38] Speaker 04:
And it is from this baseline of Phillips that we analyze the prior art.

[00:01:43] Speaker 04:
Now, what lens do we look at the prior art through?

[00:01:46] Speaker 05:
I'm just curious, before you go further, is there any dispute between the parties that when you add the

[00:01:55] Speaker 05:
four rows to the bottom to extend out the 16-5 matrix code to a 25 matrix.

[00:02:03] Speaker 05:
When you zero out the entire row except for adding a 1 associated with the final m, pi, 4,

[00:02:14] Speaker 05:
What you're doing there is you're protecting the most significant bit, and likewise when you have the one associated with MI3 and zero out, all the others in the sequence of that row, what you are doing is providing protection and redundancy for the second most significant bit.

[00:02:33] Speaker 05:
Is that disputed between parties?

[00:02:35] Speaker 03:
I don't believe that's disputed here.

[00:02:38] Speaker 03:
I won't speak for it.

[00:02:39] Speaker 02:
The problem here seems to be that there are two possible motivations in switching the positions.

[00:02:49] Speaker 02:
One is to improve the throughput and the other one is to improve the protection to the most significant bit.

[00:02:56] Speaker 02:
And the commission or the board said that it wasn't known

[00:03:03] Speaker 02:
whether the switching of these positions would have an improved throughput or not.

[00:03:09] Speaker 02:
And I guess it seems to me that you're not really disputing that in terms of the motivation that there were questions about whether that would have a beneficial effect on throughput.

[00:03:23] Speaker 02:
But your argument seems to be that it was known that it would have a beneficial effect on protecting the most significant bit.

[00:03:31] Speaker 02:
Is that a fair statement of what's going on here?

[00:03:33] Speaker 04:
Almost, Your Honor.

[00:03:34] Speaker 04:
So the 718 patent in the background describes how those of skill in the art at the time were interested in maximizing throughput.

[00:03:42] Speaker 04:
So I don't know that I would agree with the statement that throughput is a unknown or throughput was not part of what was driving decisions at the time.

[00:03:51] Speaker 04:
But the petition focused solely on protection of the most significant bit, as it's described in the Philip reference.

[00:03:57] Speaker 02:
Yeah, and under KSR, the motivation that's offered for the combination doesn't have to be the same one that motivated the inventors.

[00:04:08] Speaker 02:
Exactly right.

[00:04:09] Speaker 02:
And what does the record show here about whether switching these positions would improve protection for the most significant bit?

[00:04:21] Speaker 04:
There's no dispute in the record, your honor, that switching the positions would indeed provide more protection for the most significant bit.

[00:04:29] Speaker 04:
So petitioners expert Dr. Clark went through and did all of the math for the different matrices that were at issue and showed how exactly it is that the most significant bit appears in that resulting 20-bit code word.

[00:04:44] Speaker 04:
and how that would be different if instead you used simply the Phillips proposal.

[00:04:49] Speaker 04:
So he explained how the Phillips text suggests to a person with an ordinary skill what change to make to that matrix.

[00:04:58] Speaker 04:
And then he showed what that change would actually do to that resulting code word.

[00:05:03] Speaker 02:
The board seems to be saying that's not enough.

[00:05:07] Speaker 02:
You'd have to show that it would have an overall benefit on throughput.

[00:05:11] Speaker 02:
Am I misreading what the board said?

[00:05:13] Speaker 04:
That's our understanding of what the board said and we believe that's an incorrect application of KSRE.

[00:05:18] Speaker 05:
Before you get into that, can you just define for me what is throughput?

[00:05:22] Speaker 05:
Do you mean like data rate?

[00:05:24] Speaker 05:
Like the most maximum data rate you can get under certain circumstances?

[00:05:28] Speaker 03:
Is that throughput?

[00:05:29] Speaker 03:
That's correct.

[00:05:30] Speaker 03:
It's the amount of information you can push through per unit time.

[00:05:33] Speaker 00:
Can I ask you a quick housekeeping question?

[00:05:36] Speaker 00:
There are a number of additional claims that don't seem to be addressed in your briefing separately from other claims.

[00:05:44] Speaker 00:
And those are claims six and defending claims seven and nine through 13, where I believe there was a different grounds that was being relied on.

[00:05:53] Speaker 00:
Are you abandoning those claims?

[00:05:55] Speaker 00:
You don't seem to be making arguments with respect to those claims.

[00:05:59] Speaker 04:
So we're not abandoning them, Your Honor, but the focus of the appeal is on the analysis of the Phillips reference that the board incorrectly did.

[00:06:07] Speaker 04:
And so based on how the final written decision treated the second round, remand to address how the interplay between that Nokia reference and the Phillips reference should have been analyzed would be proper, Your Honor.

[00:06:22] Speaker 05:
So you're seeking a reversal on some claims and a bake-in remand on other claims?

[00:06:29] Speaker 03:
that would be an acceptable outcome.

[00:06:32] Speaker 00:
Were there different reasons for motivation to combine and that other alternative you know for claims six for example was a different reason to make the modification?

[00:06:44] Speaker 04:
There were other reasons put forth

[00:06:46] Speaker 04:
in that second round that's not part of the briefing or the issue here today.

[00:06:51] Speaker 00:
Okay, so it's your position that if we look at the claims six and seven and nine through 13, we're going to see that they would rise and fall also with the other claims that issued today.

[00:07:05] Speaker 04:
Based on the way that the final written decision treated those claims?

[00:07:07] Speaker 04:
Yes, sir.

[00:07:08] Speaker 00:
Okay.

[00:07:12] Speaker 04:
And so this KSR lens that we're supposed to use, that the board is supposed to use to analyze the prior art and figure out whether or not the 718 claims are obvious, is a lens of common sense, which KSR references 10 times in its decision.

[00:07:27] Speaker 04:
Predictability, which KSR references three times in its decision.

[00:07:31] Speaker 04:
Market forces making decisions or driving decisions, which KSR references five times in its decision.

[00:07:38] Speaker 04:
And so if the express teachings of Phillips through the proper KSR lens

[00:07:42] Speaker 04:
are not sufficient to have a single reference obviousness combination render obvious those claims with 98% identicality between the matrices, then what is sufficient for a single reference obviousness grand?

[00:07:57] Speaker 00:
Now, also, can I ask you a specific question?

[00:07:59] Speaker 00:
I'm looking at the rationale of the board of pages A, 26 to 27.

[00:08:04] Speaker 00:
And there, the board says that they're not convinced that a person born in Marist County would have been motivated to swap the two digits in order to protect the most significant bit.

[00:08:16] Speaker 00:
And they say the reason why is they credit the expert testimony of Dr. Smith

[00:08:22] Speaker 00:
as testifying that adding protection to just the most significant bit would then remove protection from the other bits.

[00:08:28] Speaker 00:
So my question is, why isn't that a factual finding that we would have to review for substantial evidence?

[00:08:50] Speaker 03:
That, Your Honor, would be a factual finding, yes.

[00:08:53] Speaker 02:
Thank you.

[00:08:54] Speaker 02:
That comment is directed to the notion of taking Phillips

[00:09:00] Speaker 02:
And they seem to be disregarding the effect of Phillips itself in suggesting that by changing those last four positions to just with the modification to just to check the most significant bit isn't necessarily going to have an overall desirable outcome.

[00:09:20] Speaker 02:
Seems to be what they're saying, right?

[00:09:22] Speaker 04:
That's correct, Your Honor, and that's exactly why that factual finding should be overturned, even under the heightened substantial evidence burden.

[00:09:29] Speaker 05:
Well, just getting into the nature of the fact finding.

[00:09:32] Speaker 05:
The fact finding is, if you use one of your four additional rows to the matrix to focus on protecting one particular bit over another bit through a modification of what Thrill's 46 has, then you necessarily are kind of

[00:09:54] Speaker 05:
robbing from Paul to get to Peter, so to speak.

[00:09:57] Speaker 05:
You're helping out one bit by making the switch at a cost, at a trade-off, to another bit.

[00:10:04] Speaker 05:
Is that fair to say?

[00:10:05] Speaker 05:
It is.

[00:10:06] Speaker 05:
But that doesn't end the story, because then the question is, maybe there's still a motivation to do that.

[00:10:12] Speaker 05:
And then the question is, why would that motivation exist?

[00:10:16] Speaker 05:
And I think the point is, is that because there's one bit of all that doesn't quite rule them all, but is the most significant bit, is the main event of all the bits.

[00:10:28] Speaker 05:
And so maybe, just maybe it would be obvious to use all of your extended rows to help and protect that bit, because that's the bit that's going to cause potentially the largest error in the channel quality values.

[00:10:42] Speaker 04:
And that's exactly right.

[00:10:44] Speaker 04:
The difference between 10,000 and 9,000 is quite significant.

[00:10:48] Speaker 04:
The difference between 9,999 and 9,998 is quite insignificant.

[00:10:54] Speaker 05:
So here, the board said, well, they don't think there's a skilled arts degree motivated to modify Phillips 46 in this matter.

[00:11:03] Speaker 05:
Because at the time, among all these members of this standard setting group,

[00:11:09] Speaker 05:
There was just a ball of confusion going on.

[00:11:12] Speaker 05:
There was a lot of unrest and melodrama over which proposal was going to be adopted and incorporated into the standard for transmitting channel quality on an uplink transmission.

[00:11:25] Speaker 05:
And so they're trying to figure out which of the proposals is the best proposal, is the most optimal proposal in order to select.

[00:11:36] Speaker 05:
And I'd just like to hear your comment on whether that's the right way or the wrong way to think about Section 103 obviousness.

[00:11:45] Speaker 04:
Not in the slightest, Your Honor.

[00:11:46] Speaker 04:
The test is not what is the best.

[00:11:49] Speaker 04:
The test is what would have been obvious.

[00:11:51] Speaker 04:
And that was the holding in this court's par pharmaceuticals

[00:11:54] Speaker 04:
versus TWI Pharmaceuticals, 773 F3rd, 1186, where it said, our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.

[00:12:08] Speaker 05:
Are you aware of any case from our court or another court that has considered the 103 inquiry through the lens and in the context of what skill the pharmacists were actually doing at the time of the invention and looking at

[00:12:24] Speaker 05:
a situation like this where there's members of a standard-setting body that are trying to select a standard and that they'll all follow and adopt, and so will the rest of the industry.

[00:12:38] Speaker 05:
And so it's appropriate in that particular kind of context to think about one of the three through the eyes of those skilled artisans who are in real time trying to make these difficult choices.

[00:12:50] Speaker 04:
Respectfully, your honor, I'm not at this moment.

[00:12:53] Speaker 04:
I can see what I can find in the correspondence.

[00:12:56] Speaker 04:
Maybe the other side will find something.

[00:12:59] Speaker 03:
With that, I'll reserve the rest of my time.

[00:13:01] Speaker 02:
Okay, thank you, Mr. Hours.

[00:13:26] Speaker 01:
Good morning, your honors, and may it please the court.

[00:13:33] Speaker 02:
All of the issues in this appeal are easily- I'm a little concerned in reading the record here that it appears to me that you may have misled the commission into the error that's argued to have taken place here.

[00:13:47] Speaker 02:
And if you look at page 535 of the appendix, we have that in front of you.

[00:13:53] Speaker 02:
there's a statement at the top of the page, which I think is not accurate, and I'd like you to comment on that.

[00:14:02] Speaker 01:
So your honor is pointing me to page 535.

[00:14:04] Speaker 02:
And it says, put another way, Posita at the time of the invention would not have known whether switching two digits in the basis sequence tables would have a beneficial effect on an MSB.

[00:14:19] Speaker 02:
And I think that's not correct.

[00:14:20] Speaker 02:
I look at your expert supplemental declaration, which is not actually in the appendix, and I don't see him saying that.

[00:14:27] Speaker 02:
It seems to me that it is undisputed, really, that switching the digits would have an effect, a positive effect on the protection of the most significant bit, which is a different question whether it would have an overall positive effect on the throughput.

[00:14:44] Speaker 02:
But am I not correct that that statement is not supported by your expert's testimony?

[00:14:52] Speaker 01:
That is not correct, Your Honor.

[00:14:54] Speaker 02:
And so the board found, based upon... Well, this is a little difficult, because you don't perhaps have in front of you the expert declaration.

[00:15:02] Speaker 02:
But I don't see that in the expert declaration, support for that statement.

[00:15:06] Speaker 02:
I see support for the idea that it was unknown whether it would have an overall positive effect on the proofhood.

[00:15:13] Speaker 02:
But I don't see your expert saying for one moment that it wouldn't have a beneficial effect on the protection of the most significant bid.

[00:15:20] Speaker 01:
So the board found, relying expressly on Dr. Smith's testimony, that a person of ordinary skill at the time... No, but I don't think you're answering my question.

[00:15:28] Speaker 02:
I'm trying.

[00:15:29] Speaker 02:
I don't see, in Dr. Smith's testimony, support for that statement that you made to the commission.

[00:15:35] Speaker 01:
The statement for that in Dr. Smith's declaration is his testimony that a person of ordinary skill would not have viewed those bids as results of effective variables.

[00:15:44] Speaker 00:
Are you looking at a particular page in the appendix?

[00:15:47] Speaker 00:
And if so, what is the page?

[00:15:49] Speaker 01:
Yes.

[00:15:55] Speaker 02:
I don't think that aspect of his testimony is in the appendix.

[00:16:03] Speaker 01:
So Dr. Smith testifies explicitly in his code, and I'm going to find the citation, that these, that a person of ordinary skill would not have used these as a result.

[00:16:11] Speaker 02:
Wait, wait.

[00:16:12] Speaker 02:
Paragraph 16 of the, of his supplemental declaration.

[00:16:17] Speaker 01:
I'm sorry, you're asking, you're looking at paragraph 16, Your Honor?

[00:16:20] Speaker 01:
Mm-hmm.

[00:16:21] Speaker ?:
Okay.

[00:16:25] Speaker 01:
And so he said in the paragraph that you're looking at, he's saying that the person of ordinary skill would not know that just flipping the bit would provide more protection to the most significant bit and more significant.

[00:16:37] Speaker 02:
He doesn't say that.

[00:16:38] Speaker 02:
You just said something that I don't see in his testimony.

[00:16:42] Speaker 02:
He did not, I think, say that switching would not provide more protection for the most significant bit.

[00:16:48] Speaker 02:
He says switching would not affect, have a, it was not known to have a beneficial effect on the throughput, on the overall outcome, but I do not see him as saying that switching the positions would not provide more protection to the most significant bit, which seems obvious on its face that it would.

[00:17:07] Speaker 01:
Well, so what it does is, at most, the board makes all the findings say even if.

[00:17:13] Speaker 01:
The person of skill would have understood that, would not have done it in practice, would not have viewed it as a good thing to do.

[00:17:19] Speaker 01:
Because if you look at the Phillips 46 reference closely, every time it talks about the most significant bit, it talks about it in plural, protecting the most significant bits.

[00:17:28] Speaker 01:
And if you reduce the protection to only one bit, even if it's the most significant in terms of value, you've now reduced it to a binary number.

[00:17:35] Speaker 01:
It's either going to be 16 or zero every time.

[00:17:37] Speaker 01:
So now the quality of your channel coding information is less robust.

[00:17:42] Speaker 02:
I don't understand what you're saying.

[00:17:43] Speaker 02:
Do you deny that switching the positions would provide more protection to the most significant bit?

[00:17:50] Speaker 01:
I deny that there's evidence in the record to support that a person of skill would have understood that at the time, and the board made an express finding... The testimony of their witness said it explicitly.

[00:17:58] Speaker 02:
The testimony of your witness doesn't refute that.

[00:18:01] Speaker 01:
And so the testimony of their witness was rejected by the board in totality.

[00:18:05] Speaker 01:
The board's decision rests 100% on its rejection of Dr. Clark's testimony.

[00:18:12] Speaker 01:
And that is the basis for the court finding that the petitioner did not meet its burden of proof in the IPR proceeding below.

[00:18:17] Speaker 05:
It's almost obvious on its face that when you zero out all the other bits in the row and put a 1 associated with the most significant bit,

[00:18:28] Speaker 05:
then what you're doing is protecting the most significant bit.

[00:18:33] Speaker 05:
We're trying to convert a 5-bit input sequence into a 20-bit output sequence, and now we're adding 4 bits at the end of what was previously a 16-bit.

[00:18:43] Speaker 05:
sequence and when you go 00001 for the final four rows every single time what those final bits in the 20-bit sequence are going to be associated with is the most significant bit each time which is the one that's in the sequence.

[00:18:59] Speaker 05:
So it is trying to protect through redundancy the most significant bit over and over again.

[00:19:05] Speaker 05:
I don't understand why there's a concern or alleged confusion about that.

[00:19:11] Speaker 01:
So the question is framed with

[00:19:13] Speaker 01:
with the S frame is dripping with hindsight bias.

[00:19:17] Speaker 05:
You're saying that obviously... No, there's a summation formula in Phillips 46, which is also reciting the claims.

[00:19:23] Speaker 05:
It's the exact same summation.

[00:19:25] Speaker 05:
It's just algebra.

[00:19:26] Speaker 05:
When you carry out the formula and you plug in these rows of zeros and ones, what you end up with when you do a row with 0, 0, 0, 0, 1 is that bit

[00:19:40] Speaker 05:
at 16, 17, 18, they're all going to be the most significant bid.

[00:19:47] Speaker 05:
You're going to get that value.

[00:19:48] Speaker 01:
So there's two points.

[00:19:50] Speaker 01:
One is that I disagree.

[00:19:51] Speaker 01:
The board's factual finding is that a person of ordinary skill would not have understood that.

[00:19:55] Speaker 05:
I would love to see where they said they did not know that when you add that kind of a row in Phillips 46 of 00001 to those extra rows to create

[00:20:08] Speaker 05:
So we wrote matrix.

[00:20:10] Speaker 05:
They have no idea what you're protecting when you're adding a map.

[00:20:14] Speaker 01:
So it's on page 3.

[00:20:15] Speaker 05:
Of course you're adding a map.

[00:20:16] Speaker 05:
You're protecting most of the new things.

[00:20:17] Speaker 01:
It's on page 33 of the final written decision.

[00:20:21] Speaker 01:
The board starts at the bottom of 32 and then going all the way through 33.

[00:20:24] Speaker 01:
The board goes one by one and rejects every bit of substantive testimony from Dr. Clark on these issues, every bit.

[00:20:30] Speaker 01:
And it's important to emphasize.

[00:20:32] Speaker 00:
Which sentence are you relying on in particular about the most significant?

[00:20:36] Speaker 01:
In particular, the board finds that at the middle of the page where it says that we also find insufficient evidence that one of ordinary skill would have understood at the relevant time

[00:20:47] Speaker 01:
that the bits of the table will result effective variables that can be modified with readily predictable results on overall system performance.

[00:20:54] Speaker 05:
I'm sorry, are you on A32 or A33?

[00:20:58] Speaker 01:
I'm on A33, right in the middle of the page.

[00:21:00] Speaker 00:
That sentence doesn't, it's not talking about the trade-off of protecting the most significant bit and recognizing that it's the most significant bit that, you know, Philip says that you want to protect the most significant bit.

[00:21:16] Speaker 00:
I'm having a hard time understanding how this sentence that you've identified

[00:21:20] Speaker 00:
addresses that as opposed to addressing the overall results.

[00:21:26] Speaker 00:
Sure.

[00:21:26] Speaker 02:
It's explicit.

[00:21:27] Speaker 02:
It says would decrease the aggregate magnitude of transmission errors.

[00:21:31] Speaker 02:
It is not focusing on adding protection for the most significant bit.

[00:21:35] Speaker 02:
In other words, they've ignored the motivation that the petitioner is arguing provides for doing the switch.

[00:21:44] Speaker 01:
So at the very bottom of 32 and going to the top of 33, the board expressly finds as a funny effect that even if one were to start with the Phillips proposal, there's insufficient evidence that one of ordinary skill in the art at the time would have been motivated to modify or to swap the last two bits of the last row.

[00:22:00] Speaker 01:
And going beyond that is where the board then finds that the person of ordinary skill was at such a low level of the understanding of overall system mathematics at this point.

[00:22:10] Speaker 02:
The problem is this.

[00:22:12] Speaker 02:
I do not read the board as focusing or addressing the motivation that the petitioner is offering.

[00:22:17] Speaker 02:
That is, that by switching the bids, you provide more protection to the most significant bid.

[00:22:22] Speaker 02:
Their whole discussion appears to focus on the overall throughput benefits and saying that the overall throughput benefits from switching have not been established.

[00:22:32] Speaker 02:
We can accept that, but there's an alternative motivation here that is simple and it says that the switching would provide protection, more protection for the most significant bit.

[00:22:43] Speaker 02:
And I don't see that there's anything in the record that supports the notion that that was difficult to understand.

[00:22:50] Speaker 02:
And as Judge Chen has pointed out, it seems to be sort of obvious on his face that it would provide more protection for the most significant bit.

[00:22:58] Speaker 01:
So I keep hearing that it's obvious on its face or that it would have been common sense, but this is all in hindsight.

[00:23:03] Speaker 01:
On pages 27 and 28, the board expressly finds that the person of ordinary skill, that they would not have understood the mathematics behind either the channel coding for the- Yes, yes, but that's devoted to the overall question of the throughput.

[00:23:16] Speaker 02:
effect on the throughput, not on the simple question of whether it would have provided more protection for the most significant bid.

[00:23:23] Speaker 01:
But even with respect to that motivation, the board is making express findings here that a person of skill would not have been motivated.

[00:23:29] Speaker 01:
So at the bottom of 32, going to 33, the board says,

[00:23:33] Speaker 01:
that even starting with Phillips, the person with ordinary skill would not have been motivated to swap the last two bits.

[00:23:39] Speaker 01:
And it notes there that Phillips itself did not prefer to do so.

[00:23:42] Speaker 02:
It's referring to the lack of evidence to support the notion that it would have an overall effect on the throughput.

[00:23:48] Speaker 05:
There's another sentence at the top of 833 that troubles me, when it says, quote, despite Phillips's recognition that it is beneficial to, quote, give significant extra protection to the MSD, most significant bid, end quote, Phillips did not propose doing so by swapping the last few bits of the last row.

[00:24:07] Speaker 05:
And there's no evidence that any of the other three GPD members did so before LGE's proposal.

[00:24:12] Speaker 05:
In other words, the board seems to be hunting for a anticipatory reference,

[00:24:16] Speaker 05:
and saying, oh, nobody's ever done this before.

[00:24:20] Speaker 05:
And so therefore, because it's novel, it's likewise not obvious.

[00:24:24] Speaker 05:
That seems to be the reasoning that the board is offering right here.

[00:24:28] Speaker 01:
If I may respond.

[00:24:28] Speaker 01:
So the board is not requiring a teaching suggestion or motivation or an anticipatory reference that's expressed in the writing.

[00:24:34] Speaker 01:
What the board is doing is holding the petitioners to their burden of proof.

[00:24:39] Speaker 01:
And the board has rejected Dr. Clark's testimony on all of the points that the court is raising now.

[00:24:44] Speaker 05:
identify what Phillips 46S, which is the bit on the end of the row, is the most significant bit and that large errors can occur with the most significant bit is wrong and so we're going to try to provide lots of robust protection and then a little bit of protection for the second most important bit.

[00:25:05] Speaker 01:
And the technical testimony doesn't explain why Phillips itself did not arrive at

[00:25:09] Speaker 01:
a solution that would have more significantly protected the most significant... And it doesn't need to for purposes of 103.

[00:25:15] Speaker 05:
That would be a 102, right?

[00:25:17] Speaker 01:
For 103, it is their burden to show that a person of skill would have been motivated to alter the reference to actually make the invention.

[00:25:24] Speaker 01:
And that is what they have felt approved with evidence.

[00:25:26] Speaker 01:
They want to fall back on, well, it's common sense.

[00:25:28] Speaker 01:
It would have been obvious in hindsight.

[00:25:29] Speaker 02:
No, no, no, no, no.

[00:25:30] Speaker 02:
They have testimony.

[00:25:32] Speaker 02:
that that would be the effect, that it would provide more protection for the most significant bit, and I do not see your witness as refuting that.

[00:25:41] Speaker 01:
The board rejected the credibility of Dr. Clark's testimony.

[00:25:45] Speaker 02:
Where did they reject?

[00:25:47] Speaker 02:
This particular testimony is not being credible.

[00:25:50] Speaker 01:
On pages 32 to 33, where they say that the person of ordinary skill would not have been motivated to make the modification, and the person of ordinary skill would not have understood these to be results-effective variables, and would not have understood that making this modification would have resulted in effects of system throughput.

[00:26:09] Speaker 01:
There's no evidence in this record regarding the state of the art

[00:26:13] Speaker 01:
regarding system level simulations.

[00:26:15] Speaker 02:
They weren't available to the person of ordinary skill in 2002.

[00:26:22] Speaker 02:
I don't see the blanket rejection of Dr. Clark's testimony as simply saying that he's not credible.

[00:26:28] Speaker 01:
So this is what is important for the court to realize, is that on a point to appendix 367 to 368, this is where the board in its institution decision expressly relies on paragraphs 98 through 99 and 107 through 115 of Dr. Clark's testimony.

[00:26:43] Speaker 01:
And then when you go to pages 32 through 33 of its final written decision, the board point by point by point says there's no evidence for each of those things that Dr. Clark previously said.

[00:26:53] Speaker 01:
It is a total rejection.

[00:26:55] Speaker 01:
of the credibility of their expert witness.

[00:26:57] Speaker 01:
And without that evidence, they cannot meet their burden of proof.

[00:27:00] Speaker 01:
That's all the book comes here.

[00:27:01] Speaker 00:
Can I ask you two questions, first of all?

[00:27:05] Speaker 00:
Do you think that the board's credibility findings regarding witnesses are what we would call virtually unreviewable per Supreme Court case law?

[00:27:14] Speaker 00:
And the reason I think you should think about that

[00:27:16] Speaker 00:
is because the Supreme Court has said that those types of credibility, witness credibility determinations by a lower court are virtually unreviewable because the court can see the demeanor of the witness, see if they're sweating, see how they're squirming, see those physical characteristics that help them make that determination.

[00:27:38] Speaker 00:
In a proceeding like this, there is no, it's all cold paper record.

[00:27:44] Speaker 00:
And the Supreme Court has said the appellate court

[00:27:46] Speaker 00:
cannot second guess a lower court's credibility determination because it can only look at a cold paper record.

[00:27:54] Speaker 00:
But here, both tribunals, both us and the PTAB, are looking at a cold paper record.

[00:28:00] Speaker 00:
So what do you think we review credibility determinations for?

[00:28:04] Speaker 00:
I think it might be substantial evidence.

[00:28:06] Speaker 00:
What's your view?

[00:28:07] Speaker 01:
So I don't disagree that when the board is going to reject the credibility of an expert, it must provide a final written decision that meets administrative standards.

[00:28:13] Speaker 01:
But here the board provides 10 pages of reasons that it rejects Dr. Clark's testimony.

[00:28:19] Speaker 02:
Where does it reject Dr. Clark's testimony on this particular point?

[00:28:23] Speaker 02:
That is, that switching the bits would provide more protection for the most significant bit.

[00:28:27] Speaker 02:
Where do they reject that testimony?

[00:28:29] Speaker 01:
On pages 33.

[00:28:31] Speaker 01:
Where?

[00:28:32] Speaker 01:
They expressly say that the person of ordinary skill would not have understood these to be results effective variables.

[00:28:37] Speaker 01:
That means that the board is making a factual finding that it's not within the knowledge of the person of ordinary skill that flipping the bits is going to cause that result.

[00:28:45] Speaker 01:
The only factual finding that needs to be sustained here is the board's rejection of Dr. Clark's testimony.

[00:28:50] Speaker 02:
If we read that as referring to the overall result, that is the throughput result, then there's no finding about the effect upon the protection of the most significant bit, right?

[00:29:00] Speaker 01:
I disagree with that.

[00:29:01] Speaker 02:
The board has found... I know you, but if we read the board as directing itself to the inventor's motivation, that is the protection of the overall throughput.

[00:29:12] Speaker 02:
as opposed to the protection for the most significant bit, then your conclusion about what follows from the board's decision doesn't follow.

[00:29:24] Speaker 01:
I disagree because the only evidence of the record of that comes from Dr. Clark and the board rejected his testimony if found him not credible.

[00:29:29] Speaker 01:
If that is affirmed, then the board's decision must be affirmed.

[00:29:32] Speaker 00:
Council, I want to ask you a couple more questions about Phillips.

[00:29:35] Speaker 00:
So Phillips

[00:29:37] Speaker 00:
does say that it's good to protect the most significant bit.

[00:29:41] Speaker 00:
What does it say about the second most significant bit, if anything?

[00:29:44] Speaker 01:
So every time that Philips uses that phrase, it uses it in the plural.

[00:29:48] Speaker 01:
It says it's important to protect the most significant bits, which is why it's important that the board found that Philips didn't actually make the modification to arrive at the invention.

[00:29:56] Speaker 01:
And so a person that is motivated to protect the most significant bits, plural, which is what Phillips says over and over and over again, would do what Phillips did.

[00:30:03] Speaker 01:
But there is no proof in the record that a person of ordinary skill would have modified Phillips to arrive at the invention.

[00:30:09] Speaker 01:
That's where they fail to meet their proven approval.

[00:30:11] Speaker 00:
So I'm thinking about this testimony that's referenced by the ward on page A27, where they reference Dr. Smith's testimony that adding protection to just the most significant thing today.

[00:30:23] Speaker 00:
removes protection for the second most significant bit, consistent with Phillips's desire to protect the most significant bits.

[00:30:31] Speaker 00:
Correct.

[00:30:32] Speaker 00:
Is that a fact finding that's reviewed for substantial evidence?

[00:30:36] Speaker 01:
Absolutely.

[00:30:36] Speaker 01:
It's clear from the patent itself, it's clear from the evidence, and it's clear from the board's findings that there was a trade-off understood at the time between protecting the most significant bit versus looking at the overall bit error rate.

[00:30:47] Speaker 01:
and that LG comes in to break the tie, if you will, from a standpoint of system performance using system-level simulators that other people didn't have at the time.

[00:30:55] Speaker 01:
And that's how LG was able to arrive at the patented solution.

[00:31:00] Speaker 05:
It sort of sounds to me like you think Philips 46 somehow teaches away from

[00:31:07] Speaker 05:
maximizing protection for the most significant bit.

[00:31:11] Speaker 01:
I think that's a fair reading of it because it's saying even if you're interested in unequal air protection.

[00:31:14] Speaker 05:
Well, I know that's your position, but what I'm trying to ask myself is who said that?

[00:31:22] Speaker 05:
I mean, Phillips doesn't, on its face, say that.

[00:31:25] Speaker 05:
It talks about the importance of trying to avoid large errors and the channel quality value.

[00:31:30] Speaker 05:
And we all know that the most significant bit is the most damaging in terms of

[00:31:35] Speaker 05:
creating error in that value.

[00:31:39] Speaker 05:
But I don't see anything that says, but this is not a 102 case.

[00:31:43] Speaker 05:
We're trying to figure out, all right, a skilled artisan at the relevant time period, they had Phillips 46 in front of them.

[00:31:51] Speaker 05:
What if any obvious variant of Phillips 46 would there be?

[00:31:55] Speaker 05:
We know that there's this principle of protecting the most significant bit.

[00:32:00] Speaker 05:
Why wouldn't they go ahead and just maximize it and do the trade-off?

[00:32:05] Speaker 05:
Because the error for the most significant bit is so much more damaging than any other bit, including the second most important bit.

[00:32:12] Speaker 01:
So the first thing the board says on that is that the person of skill would not have had a single reference, the Phillips reference, but instead would have had five proposals that were coming in from five different groups of the three GPPs.

[00:32:21] Speaker 01:
So the person of ordinary skill would not have started only with the Phillips reference, and Dr. Clark

[00:32:26] Speaker 05:
uh... fail to include those other references in the record

[00:32:41] Speaker 05:
What would be the best thing to do among all these competing proposals?

[00:32:46] Speaker 05:
That would be what is obvious.

[00:32:48] Speaker 05:
And everything else that's a competing proposal, it wouldn't be obvious to select those or try to do obvious variants of those.

[00:32:57] Speaker 05:
And I just don't know of any case that's ever looked at 103 in that way.

[00:33:02] Speaker 05:
Instead, what we do is look at the prior art and try to imagine

[00:33:08] Speaker 05:
You know, in view of the references, what would be, as a technical matter, an obvious thing to do that wouldn't merit patent protection?

[00:33:19] Speaker 05:
So, do you know the case?

[00:33:22] Speaker 05:
where it's no longer just the abstract technical inquiry, but instead it's, oh, this is a standard-setting organization, so we've got to try to figure out what is the optimal, the best, the most preferred of the approaches, and that's the only thing that can be considered an obvious thing to do.

[00:33:37] Speaker 01:
Sure, so on pages 28 through 30, I believe it is, of the red brief, particularly in the long footnote two that spans those pages, we collect the cases,

[00:33:46] Speaker 01:
well in which the federal circuit has held over and over again that that there must be evidence there always must be evidence in support of this motivation to combine and so you can't just look at this like that's a simple basic thing and that's why the boards know we're listening to what my question was which was premised on whether

[00:34:05] Speaker 05:
there is a case out there that in the context of a 103 inquiry, we have said there are going to be circumstances where you look at what the actual skilled artists were doing at the time of the invention and you confine the 103 inquiry to what those players were doing at the time and what they actually were focused on in terms of selecting what is the best thing to do as opposed to merely

[00:34:32] Speaker 05:
selecting or identifying what would be obvious choices to do.

[00:34:37] Speaker 01:
Sure, so the grain factors obviously compel consideration of the objective evidence.

[00:34:42] Speaker 05:
There isn't a case that is written that looks at the 103 through that particular lens.

[00:34:49] Speaker 05:
I'm not aware of one.

[00:34:50] Speaker 05:
I didn't see you cite one.

[00:34:51] Speaker 05:
I just want to confirm.

[00:34:52] Speaker 01:
If you're looking for something specifically with a standard setting context, I cannot cite it off my head here.

[00:34:56] Speaker 01:
Yeah.

[00:34:57] Speaker 05:
Right.

[00:34:57] Speaker 05:
But the other problem with the board's decision I had was the fact that it seemed to be focused on trying to figure out what is the most optimal vessel.

[00:35:06] Speaker 05:
proposal to go and then dismissing everything else.

[00:35:11] Speaker 05:
And the concern for me is that's not the obvious in court.

[00:35:15] Speaker 05:
It's not about trying to figure out what's the best thing.

[00:35:17] Speaker 05:
It's just trying to figure out what are obvious variants to do that would be suitable.

[00:35:23] Speaker 05:
And unless, and if I'm wrong about that, please let me know.

[00:35:27] Speaker 01:
So I'm way over time if I may have about 30 seconds to summarize.

[00:35:30] Speaker 01:
So the board's decision here was a decision to do nothing.

[00:35:34] Speaker 01:
They did not cancel the patent because they found that the petitioners below had not met their burden of proof.

[00:35:39] Speaker 01:
And that is because they rejected the credibility wholesale of Dr. Clark's testimony.

[00:35:43] Speaker 01:
Their complaints about the board applying KSR improperly is simply a complaint that they are being held to their evidentiary burden of proof.

[00:35:52] Speaker 01:
So the only finding that needs to be affirmed here is the board's rejection of Dr. Clark's testimony on pages 32 and 33, which supports the board's findings.

[00:36:00] Speaker 00:
I have questions for you, so please don't sit down.

[00:36:03] Speaker 00:
So my question for you is, did you note anything in the record

[00:36:07] Speaker 00:
that shows that if one were to modify, or with Philip's desire to protect the most significant bits, plural, how do we know that swapping just the 0 and 1 in that last line of the table, that there wouldn't be a desire to make other changes in other parts of the table to make protection of the second most significant bit more robust?

[00:36:34] Speaker 01:
So that's the kind of evidence that a petitioner should put into an IPR in order to demonstrate with evidence that a person of skill would have a motivation.

[00:36:42] Speaker 00:
That would have been evidence to support your position, right?

[00:36:45] Speaker 00:
Because it would show that you wouldn't just make the change they're suggesting.

[00:36:49] Speaker 00:
You'd have to think about whether other additional changes would be made as a result of that.

[00:36:53] Speaker 00:
I'm asking you if there's any evidence to that effect in the record.

[00:36:56] Speaker 01:
So yes.

[00:36:57] Speaker 01:
And so the board looks at sort of the entirety of the three GPP papers, particularly regarding the papers from Samsung and Erickson and others that are engineering in favor of most, I'm sorry, in favor of bit error protection.

[00:37:10] Speaker 01:
And importantly, the court looks at the 2016 paper.

[00:37:13] Speaker 01:
regarding the mathematics, the overall system level mathematics, that shows that this protection of CQI information is just a very small thing in an overall system scheme.

[00:37:23] Speaker 01:
And from a system architecture level, the idea that you're going to put all these system resources into protecting the CQI information might be a little bit ridiculous because that's all overhead.

[00:37:32] Speaker 01:
And so what you're looking for here is the appropriate system balance, which involves a multitude of engineering factors.

[00:37:37] Speaker 01:
that are much different at the system level than they are just checking the air quality on particular bits of information.

[00:37:43] Speaker 02:
But that's saying that the motivation is to perform improvement of the overall system level.

[00:37:50] Speaker 02:
Let's assume for a moment that the record establishes that Phillips said that improving the protection to the most significant bit is desirable.

[00:38:01] Speaker 02:
And let's assume that the record establishes that switching the two positions would improve the protection for the most significant bid.

[00:38:08] Speaker 02:
I know you disagree with that, but let's assume that the record establishes that.

[00:38:12] Speaker 02:
Do you lose under those circumstances?

[00:38:14] Speaker 01:
No, because the board's factual finding was that even starting with the Phillips proposal,

[00:38:19] Speaker 01:
of ordinary skill of art, there's no evidence that would have been motivated to make that modification.

[00:38:25] Speaker 02:
No, no, you're not accepting my hypothetical.

[00:38:27] Speaker 02:
My hypothetical is we're rejecting that position.

[00:38:31] Speaker 02:
We find that there is undisputed evidence in the record.

[00:38:35] Speaker 02:
that switching the two positions would improve protection for the most significant bit.

[00:38:42] Speaker 02:
If we conclude that, do you lose?

[00:38:45] Speaker 01:
No, the board found that even if you find that, the person of skill would not have been motivated to do so, even with the knowledge that's expressed on the effect.

[00:38:55] Speaker 05:
Your expert said, and the board bought off on this, that the math was mysterious in terms of what the impacts would be, and it wasn't discovered until many years after the fact.

[00:39:07] Speaker 05:
What math are we talking about?

[00:39:09] Speaker 05:
Are we talking about system throughput math, or are we talking about some other kind of math?

[00:39:14] Speaker 01:
The mathematics that would enable system throughput modeling, yes.

[00:39:18] Speaker 01:
And the 2016 paper shows that there are deep similarities between what's being used on the Fourier correction just for the CQI information,

[00:39:24] Speaker 01:
versus things that are being done at much deeper system level.

[00:39:28] Speaker 01:
And that paper just sort of emphasizes to the board the complexity of system-level modeling.

[00:39:33] Speaker 01:
And that just was not available in 2002.

[00:39:35] Speaker 00:
Council, are you relying on the statement in the Phillips proposal itself that says that the arrangement it proposes gives significant extra prediction to the most significant bit and a little more robustness to the next most significant bit?

[00:39:50] Speaker 00:
How does that weigh into your

[00:39:53] Speaker 00:
argument that there is no motivation to modify Phillips to make the second most significant bet less protected.

[00:39:59] Speaker 01:
So that's the first point the board makes on page 33.

[00:40:01] Speaker 01:
It says that Phillips did not itself make this modification.

[00:40:05] Speaker 01:
And so if you assume Phillips' motivations, as stated in the technical paper, they didn't go down that path.

[00:40:10] Speaker 01:
And so that's the first point that the board makes.

[00:40:13] Speaker 02:
Okay.

[00:40:14] Speaker 02:
I think Mr. Puckett, we're out of time.

[00:40:16] Speaker 02:
Thank you.

[00:40:16] Speaker 02:
Thank you.

[00:40:16] Speaker 02:
Mr. Halverson, you've got a little over two minutes here.

[00:40:28] Speaker 04:
Very briefly on rebuttal, Your Honors, I have, I believe, four things.

[00:40:35] Speaker 04:
Judge Dyke, as you rightly noted, the board's final written decision effectively ignores the petition's motivation to combine, which is not about throughput.

[00:40:43] Speaker 04:
It focuses solely on the protection of the most significant bit.

[00:40:46] Speaker 04:
And the reason why, as Judge Chen noted, the claim is just algebra.

[00:40:51] Speaker 04:
This is basic math that's taught in

[00:40:54] Speaker 04:
Freshman level college courses, certain high school courses, the relationship between these numbers, what goes in, how would the numbers are manipulated.

[00:41:02] Speaker 05:
It's in Phillips 46 itself.

[00:41:04] Speaker 04:
Exactly right.

[00:41:05] Speaker 04:
There is nothing that is unpredictable, and it is the hallmark of KSR obviousness, and it is not the analysis that the board did in this case.

[00:41:13] Speaker 04:
And for that, we respectfully submit that the case should be reversed where we made it.

[00:41:18] Speaker 02:
OK.

[00:41:18] Speaker 02:
Thank you.

[00:41:19] Speaker 02:
Thank you, counsel.

[00:41:20] Speaker 02:
The case is submitted.