[00:00:00] Speaker 04:
How do I say your name?

[00:00:03] Speaker 04:
Good morning.

[00:00:06] Speaker 02:
Sasha Mayergoys on behalf of Qualcomm.

[00:00:09] Speaker 02:
Mr. Mayergoys, please proceed.

[00:00:11] Speaker 02:
May it please the Court, failing to apply to lessons from this Court's decision in DSS, the Board committed the same errors here that led to a reversal in DSS.

[00:00:22] Speaker 02:
As in DSS, the board improperly relied on ordinary creativity as a wholesale substitute for reasonable analysis and evidence-based fact-binding.

[00:00:33] Speaker 02:
As in DSS, which also involved base station and mobile device technologies, the board's basis for determining obviousness centers on one paragraph.

[00:00:44] Speaker 02:
That paragraph includes a few sentences identifying various legal principles, followed by a summation sentence that states, thus, a person of ordinary creativity would have made any necessary modifications.

[00:00:58] Speaker 02:
That sweeping generalization cannot be sufficient.

[00:01:02] Speaker 02:
Entirely absent from the board's decision are any findings about what those modifications would be.

[00:01:08] Speaker 02:
how skilled artisans would make any of these unidentified modifications, or whether there would be any reasonable expectation of success in making these unidentified modifications.

[00:01:20] Speaker 04:
So are you talking about the power amplifier?

[00:01:22] Speaker 04:
What are you talking about?

[00:01:24] Speaker 04:
What modifications are you precisely referring to?

[00:01:27] Speaker 02:
Well, that's the issue, Your Honor.

[00:01:28] Speaker 02:
In page 50,

[00:01:31] Speaker 02:
of the final written decision, the board says make any necessary modifications.

[00:01:37] Speaker 02:
It never explains what those modifications are, how they would work, or how they would be implemented.

[00:01:42] Speaker 04:
I guess I'm not understanding.

[00:01:45] Speaker 04:
Obviousness, are you challenging right now motivation to combine?

[00:01:49] Speaker 04:
Are you challenging whether underlying elements have been established to be present?

[00:01:53] Speaker 04:
What is the basis or nature of your precise argument?

[00:01:56] Speaker 02:
two bases.

[00:01:57] Speaker 02:
First, there's a failure to explain and there's no evidence to support a reason to modify a mobile device with base station technology.

[00:02:06] Speaker 02:
Even if there were a reason to do so, the board failed to explain what that modification would be.

[00:02:14] Speaker 04:
The problem is that the power out reference expressly says the power amplifier

[00:02:21] Speaker 04:
can be used for either, right?

[00:02:24] Speaker 04:
It can be used either in a base station or in a cell phone.

[00:02:28] Speaker 04:
Now, granted, a power amplifier for a base station is not going to fit in a handheld device.

[00:02:32] Speaker 04:
No question, right?

[00:02:32] Speaker 04:
You don't even need to be particularly technical to understand that.

[00:02:35] Speaker 04:
But nonetheless, the reference says it could, which would suggest that an ordinarily skilled artist would know how to do that.

[00:02:44] Speaker 04:
So what is the problem?

[00:02:46] Speaker 02:
Well, Your Honor, the power amplifier is just one limitation in the claims.

[00:02:52] Speaker 02:
There's other limitations in the claims that both Intel and the board relied on which did not involve the power amplifier.

[00:02:58] Speaker 02:
For example, figures three and four contain various circuitry and configurations to control the power amplifier.

[00:03:05] Speaker 02:
That is what Intel relied on.

[00:03:07] Speaker 02:
It did not rely

[00:03:08] Speaker 02:
on figure two to control the power amplifier.

[00:03:10] Speaker 04:
But the problem is the board never found that figures three and four were limited to base stations.

[00:03:16] Speaker 02:
Right, the board actually assumed that they were base stations.

[00:03:19] Speaker 04:
They didn't find they were limited to.

[00:03:21] Speaker 04:
So what you disclose is cell phones and base stations, and the board didn't find that figures three and four were limited to base stations, which means

[00:03:30] Speaker 04:
theoretically what's disclosed in figures three and four would equally apply to cell phones.

[00:03:36] Speaker 02:
But there's no finding on that by the board.

[00:03:37] Speaker 02:
The board didn't find.

[00:03:39] Speaker 02:
If that was the board's reasoning and basis, it should have found.

[00:03:43] Speaker 04:
But they expressly found that it says we are not finding figures three and four limited debate stations.

[00:03:49] Speaker 02:
Correct.

[00:03:51] Speaker 02:
But there's still no evidence that anything in figure three or four would apply to a mobile device.

[00:03:57] Speaker 02:
can't avoid making a finding by assuming something is not limited to a base station.

[00:04:03] Speaker 02:
There still had to be some analysis and reasoning why figure 3 and 4 would apply and would work in a mobile device, and that's entirely absent from the record or the board's findings.

[00:04:15] Speaker 02:
In fact, the only evidence here is one-sided, and it comes from Dr. Williams, who explained why figures 3 and 4 are base stations, not mobile devices.

[00:04:25] Speaker 02:
As Your Honor noted,

[00:04:26] Speaker 02:
there's a difference in size, there's a difference in frequency spacing, and there's also power constraint differences.

[00:04:34] Speaker 02:
And that's paragraphs 64 to 68 of Dr. Williams.

[00:04:38] Speaker 04:
And so it's your problem that the board, I agree with Dr. Williams' testimony, and it's quite strong.

[00:04:43] Speaker 04:
And if the board had adopted it, I probably would have affirmed without any difficulty.

[00:04:47] Speaker 04:
Is your problem that they didn't adequately explain why they were rejecting Williams' testimony?

[00:04:53] Speaker 02:
Certainly, that is part of the problem, and that is subsumed by the fact that the board didn't provide any explanation.

[00:05:00] Speaker 02:
The board simply said any necessary modifications.

[00:05:03] Speaker 02:
There was no evidence to support that.

[00:05:05] Speaker 04:
They definitely didn't engage with what Dr. Williams said.

[00:05:10] Speaker 04:
I mean, they're not necessarily required to.

[00:05:12] Speaker 04:
Their opinion is sort of complete on its own.

[00:05:15] Speaker 04:
They don't have to address each piece of evidence.

[00:05:18] Speaker 02:
They do not.

[00:05:18] Speaker 02:
But the board is still obligated to provide evidence-based fact findings and reasonings for its determination.

[00:05:26] Speaker 02:
That is wholly absent here.

[00:05:28] Speaker 02:
An assumption is not a fact finding, certainly when there's no evidence cited to support that assumption or the inverse of that assumption.

[00:05:36] Speaker 02:
And as this court importantly made clear in DSS,

[00:05:40] Speaker 02:
Similarities in transmission hardware are not enough to fill evidentiary gaps when there's no evidence, when there's no reasons to support that, when there's no reasoned analysis.

[00:05:52] Speaker 02:
Here, there is no reasoned analysis, but there are evidentiary gaps.

[00:05:57] Speaker 02:
This court's president makes clear that an expert who would provide a conclusory statement such as make any necessary modifications, that would be too conclusory and undeveloped to support finding.

[00:06:11] Speaker 02:
So too, when the board relies on such a sweeping generalization, that does not fulfill its obligation of providing fact findings and evidence and explanation to support an obviousness determination.

[00:06:26] Speaker 02:
And as I mentioned earlier, there's also no evidence to support the board's conclusion that skilled artisans would have modified a mobile device technology or face station technology.

[00:06:37] Speaker 02:
Again, Intel did not offer any evidence or expert testimony on this.

[00:06:41] Speaker 02:
The most that Intel offered was a footnote in its petition, footnote four, I'm sorry, footnote six, where it said it would have been obvious to Posita to take advantage of you's invention in a mobile device.

[00:06:56] Speaker 02:
Intel's expert did no more than that.

[00:06:58] Speaker 02:
He repeated that same footnote verbatim.

[00:07:01] Speaker 02:
There's simply no evidence as a matter of law to support a finding or reasoned explanation why skilled artisans would have modified a mobile device with space station technology, especially when there's no dispute that figure two is a mobile device.

[00:07:17] Speaker 02:
There should have been some reasoning and explanation why a skilled artisan would have taken

[00:07:22] Speaker 02:
technology from figures three and four and applied it to figure two.

[00:07:26] Speaker 04:
Why does there have to be a reason given when the reference itself expressly says the power amp can be utilized in both?

[00:07:32] Speaker 04:
If the reference tells you, see this is with all due respect one of the easier obviousness cases because this isn't even multiple references.

[00:07:38] Speaker 04:
This is like combining figure two with figure three and four of the same reference.

[00:07:43] Speaker 04:
That's pretty straightforward, and this reference expressly says the power amp of the mobile base station could also be used for a mobile phone.

[00:07:52] Speaker 04:
Why do you need a why do it when the reference expressly suggests it can be done?

[00:07:56] Speaker 02:
Because the word of why comes in as, Intel does in the board in the first final word decision doesn't just rely on the power amplifier, hard stock.

[00:08:05] Speaker 02:
It relies on other circuitry in figures three and four that are not in figure two.

[00:08:10] Speaker 02:
And there has to be a reason why someone would take the circuitry in figures three and four and apply it to figure two.

[00:08:17] Speaker 02:
The power amplifier is controlled by different configurations in different embodiments.

[00:08:22] Speaker 02:
For instance, the first limitation in claim one recites a power tracker and then a single power signal based on the I and Q components.

[00:08:32] Speaker 02:
Intel only relied on figures three and four to meet that limitation.

[00:08:37] Speaker 02:
Intel never relied on figure two.

[00:08:38] Speaker 00:
We're talking about obviousness here, right?

[00:08:41] Speaker 00:
Yeah.

[00:08:41] Speaker 00:
Not anticipation.

[00:08:44] Speaker 00:
Correct.

[00:08:45] Speaker 00:
The person of ordinary skill is very relevant here.

[00:08:50] Speaker 02:
It is, but even so, that there has to be some reasoned explanation why a person of ordinary skill in the art would then take the control circuitry, such as Components 104 and 105.

[00:09:02] Speaker 02:
We're not picking the board's opinion.

[00:09:05] Speaker 02:
I don't think so, Your Honor.

[00:09:06] Speaker 02:
What we're demanding from the board is some reasoned analysis and fact findings for why

[00:09:13] Speaker 02:
any modifications would be made and what those modifications are.

[00:09:17] Speaker 01:
All we have from the board is any skilled artisan... If the board had expressly said that figures three and four of you extend to mobile devices, you would concede that's the end of this?

[00:09:31] Speaker 01:
There's substantial evidence?

[00:09:33] Speaker 01:
There would still, I'm sorry, if figures

[00:09:36] Speaker 01:
if he was three and four.

[00:09:38] Speaker 01:
You complained, if I understood it correctly, that the board simply made an assumption that three and four are not limited to base stations.

[00:09:46] Speaker 01:
So I'm asking if they had gone the half sentence further that you seem to think they needed to do and said, not only are they not limited, they do extend to mobile devices.

[00:09:55] Speaker 01:
Is that the end of the appeal?

[00:09:57] Speaker 02:
No, Your Honor, because what would be required is some explanation and evidence as to why

[00:10:03] Speaker 02:
figures three and four would be mobile devices.

[00:10:06] Speaker 02:
On the record, Dr. Williams is the only expert who addressed that issue and explained for numerous reasons why figures three and four would not be mobile devices.

[00:10:31] Speaker 04:
Please proceed.

[00:10:31] Speaker 03:
May it please the court, Qualcomm's appeal presents a straightforward substantial evidence question and on the one finding on which they have appealed, the board found that quote, it would have been obvious to a person of ordinary skill in the art.

[00:10:44] Speaker 03:
to take advantage of Yu's invention in a mobile device.

[00:10:48] Speaker 03:
Yu's invention, period.

[00:10:50] Speaker 03:
Not figure four, not figure three.

[00:10:52] Speaker 03:
Yu's invention, the power amplifier.

[00:10:54] Speaker 03:
And the board made that finding because of two express disclosures in Yu, either one of which provides substantial evidence for it.

[00:11:01] Speaker 03:
First, as the court has recognized in questioning Yu says specifically in paragraph 34, that its power amplifier, quote, may e.g.

[00:11:11] Speaker 03:
be employed in wireless communication systems such as base stations of cellular communication networks or wireless transceivers of mobile device, of mobile terminals and the like.

[00:11:21] Speaker 03:
That's an express disclosure to do exactly what the board said it would be obvious to do, to use the power amplifier view

[00:11:29] Speaker 03:
in a mobile device, and it's more than sufficient to provide substantial evidence that a person of ordinary skill would have had a reason to use the power amplifier in a mobile device.

[00:11:41] Speaker 03:
You told them to do it.

[00:11:42] Speaker 03:
And the second express disclosure is figure two of you, which the board found on which Qualcomm expressly admitted, quote, discloses a mobile terminal

[00:11:50] Speaker 03:
appropriate system for controlling supply voltage and power amplifier.

[00:11:55] Speaker 03:
So Yu says you can use our power amplifier, which power amplifier is disclosed in figure 1, figure 2, figure 3, figure 4.

[00:12:03] Speaker 03:
You can use that in a mobile device.

[00:12:04] Speaker 03:
And figure 2 provides an example that everybody agrees.

[00:12:07] Speaker 03:
is indeed a mobile device.

[00:12:09] Speaker 03:
Now we, of course, disputed in front of the board and continue to contend that figures three and four are also agnostic and could be used in a mobile device.

[00:12:17] Speaker 03:
The board did not make a finding one way or the other because it didn't need to because it concluded on an obviousness combination that it was a straightforward combination to make where you had expressly said to make it.

[00:12:29] Speaker 03:
None of Qualcomm's arguments to the contrary undermine this.

[00:12:33] Speaker 03:
They rely on DSS, and DSS does indeed say that it is inappropriate to supply a missing limitation using ordinary creativity, but what the board did was not supply any missing limitation.

[00:12:47] Speaker 03:
There was no missing limitation that the board supplied.

[00:12:51] Speaker 03:
What Qualcomm actually says is telling, if you look at their yellow brief at page 21,

[00:12:57] Speaker 03:
They say, quote, the missing limitation is whether it would have been obvious to modify you to achieve.

[00:13:05] Speaker 03:
a plurality of carrier-aggregated transmit signals that requires increasing the bandwidth for a user.

[00:13:10] Speaker 03:
That's not a limitation.

[00:13:12] Speaker 03:
That's whether it would be obvious to modify.

[00:13:13] Speaker 03:
Nothing in DSS and nothing in this court's precedent says... What about Dr. Williams?

[00:13:18] Speaker 03:
Dr. Williams does indeed provide evidence in which he argues that there would be reasons not to make that modification.

[00:13:28] Speaker 04:
Isn't he an expert?

[00:13:29] Speaker 03:
I went through and explained in detail at least three reasons why and where did the board address those?

[00:13:45] Speaker 03:
The board, number one, acknowledged that Dr. Williams had offered an opinion, and it addressed the merits of Dr. Williams' analysis in its discussions specifically of frequency spacing.

[00:13:57] Speaker 04:
What page?

[00:13:58] Speaker 04:
Tell me what page of the JA would be best.

[00:13:59] Speaker 03:
It is not citing Dr. Williams here, just to be 100% clear.

[00:14:03] Speaker 03:
What it was doing was citing the arguments that Qualcomm made

[00:14:07] Speaker 03:
based on Dr. Williams.

[00:14:10] Speaker 03:
It is on Appendix Page 50, citing patent odor's response at pages 23 to 24.

[00:14:16] Speaker 03:
And in that Appendix Page 50, it addresses the frequency spacing argument.

[00:14:22] Speaker 03:
And what it says is that on the merits,

[00:14:25] Speaker 03:
that frequency spacings, that U says that you can use different frequency spacings.

[00:14:30] Speaker 03:
It cites appendix page 2475, which is U paragraph 72.

[00:14:35] Speaker 03:
U paragraph 72 says, quote, the application of the inventive principle advantageously enables... Are you talking about JA50?

[00:14:45] Speaker 04:
I'm just trying to find where you're reading from.

[00:14:47] Speaker 03:
Yes, Joan, I believe so.

[00:14:49] Speaker 03:
Joint appendix page 50.

[00:14:50] Speaker 03:
Let me make sure I've got the right site.

[00:14:53] Speaker 03:
It is...

[00:14:55] Speaker 03:
Yeah, so it's page 50.

[00:14:57] Speaker 03:
The last paragraph at appendix, page 50, they say, we note Patenumer's contention that the base station implementations are not appropriate for use in mobile terminals.

[00:15:08] Speaker 03:
And that's Patenumer's response, page 23, and they cite page 23 to 24 of that response.

[00:15:14] Speaker 03:
That's the part of their brief

[00:15:16] Speaker 03:
in front of the board where they address and make Dr. Williams' argument.

[00:15:21] Speaker 03:
They make the same argument that Dr. Williams makes, and the board addresses it by saying, we're not dealing with bodily incorporation here.

[00:15:29] Speaker 03:
The test is whether the combined teachings would be sufficient.

[00:15:33] Speaker 03:
And that's supported by the fact that when you're dealing with the concepts, not bodily incorporation, we have patent owner's own admission that, quote, figure two of you discloses a mobile terminal appropriate system.

[00:15:49] Speaker 03:
And then they go on.

[00:15:50] Speaker 03:
They go on to then further say that to address the downlink carrier aggregation

[00:15:54] Speaker 03:
point that Dr. Williams made.

[00:15:57] Speaker 03:
They do that on page 51.

[00:15:58] Speaker 03:
So I agree that the board did not cite Dr. Williams when addressing Qualcomm's arguments based on Dr. Williams' analysis, but there's no question that the board acknowledged that Dr. Williams had provided an expert opinion, and there's no question that the board addressed the merits of that opinion in the substance of its argument.

[00:16:19] Speaker 01:
You skipped over that at the bottom of page 50, the sentence that a person with a skill net would have made any necessary modifications without telling us what those modifications are.

[00:16:31] Speaker 01:
How can we review such a conclusory statement as to what a person with a skill net would do?

[00:16:37] Speaker 03:
I think you're correct, Your Honor, that that sentence doesn't say specifically what the modifications would have been.

[00:16:44] Speaker 03:
The reason this case is unique in that regard, why that is not an issue in this case where it could theoretically be in others, is that we're not dealing with combining two separate references, and we're not dealing with a circumstance in which there was not an express statement describing the motivation to combine.

[00:16:59] Speaker 03:
You, paragraph 34, specifically says you can use this invention

[00:17:04] Speaker 03:
in mobile terminals.

[00:17:06] Speaker 03:
So there's an express statement in the prior art reference itself saying that one should do this.

[00:17:15] Speaker 03:
Then there's a disclosure, figure two of you, that shows one example showing that at least the patent owner knew that it was possible to use this power amplifier in mobile devices.

[00:17:25] Speaker 03:
And the combination of those things here, all in a single reference, there's nothing else for the board to find.

[00:17:31] Speaker 03:
There's no specific additional finding that the board would need to make where the reference itself describes the reason for combination.

[00:17:37] Speaker 03:
In fact, I would submit, Your Honor, that even under the old TSM test, this would have been sufficient.

[00:17:41] Speaker 03:
It's an express teaching in the reference itself to do the thing that the board found that it was obvious.

[00:17:48] Speaker 03:
That's why that sentence that the board stated that a person of ordinary skill would have made any necessary modifications is just fine in this context.

[00:17:58] Speaker 03:
We would submit that substantial evidence is the easiest way to resolve this appeal.

[00:18:02] Speaker 03:
We do have a conditional cross-appeal, or technically speaking an additional separate appeal based on the Chen reference, and there the issue is one of claim construction and whether the broadest reasonable interpretation standard was correctly applied.

[00:18:20] Speaker 03:
The fundamental issue on both

[00:18:22] Speaker 03:
the claim construction alternative basis for the appeal and the issue in the conditional cross-appeal is whether broadest reasonable interpretation of plurality of carrier aggregated transmit signals should or should not include the additional requirement of increasing the bandwidth for a user.

[00:18:40] Speaker 03:
We respectfully submit that the board got it right the first time when they said that the broadest reasonable interpretation did not require that, that it was reasonable to construe it without that additional

[00:18:50] Speaker 03:
limitation.

[00:18:51] Speaker 03:
We think fundamentally where the board went astray was the board saw in the prosecution history, correctly, that the patent owner had amended the claim and had amended the claim by changing different to carrier aggregated, and it felt that it needed to give some meaning to carrier aggregated in the phrase carrier aggregated transmit signals.

[00:19:12] Speaker 03:
We don't disagree that that's correct.

[00:19:14] Speaker 03:
The board should be giving some meaning to carrier

[00:19:16] Speaker 03:
aggregated.

[00:19:17] Speaker 03:
Respectually the board aired by not looking to the specifications description of what carrier aggregated meant.

[00:19:24] Speaker 03:
Qualcomm itself had explained what carrier aggregated meant and where it had given that explanation it would have been appropriate to adopt that explanation not to adopt a different and narrower construction and especially under the broadest reasonable interpretation standard.

[00:19:41] Speaker 03:
Unless the court has further questions I'm happy to reserve the remainder of my time.

[00:19:44] Speaker 04:
Thank you.

[00:19:50] Speaker 02:
Just a few quick points, Your Honors.

[00:19:52] Speaker 02:
First, to the extent Intel or the board is relying on Figure 2, that is procedurally improper and substantively deficient.

[00:20:00] Speaker 02:
Intel never relied on Figure 2 in its petition.

[00:20:03] Speaker 02:
Its expert never cited Figure 2.

[00:20:05] Speaker 02:
It relied on Figures 3 and 4.

[00:20:08] Speaker 02:
As this court explains in Magnum Oils, the board cannot raise, address, and decide an invalidity theory that a petitioner does not raise and provide evidence for.

[00:20:19] Speaker 04:
Second, on DSS... Didn't Intel rely on Paragraph 34?

[00:20:23] Speaker 02:
It did, Your Honor, on Paragraph 34.

[00:20:25] Speaker 04:
Paragraph 34 says that power amp and the word ball has antecedent bases and the antecedent bases is Figures 2 to 4, and it says so it's crossword.

[00:20:31] Speaker 02:
So two points on that, Your Honor.

[00:20:34] Speaker 02:
Intel's only evidence on Paragraph 34 was a footnote in its petition and a footnote in its expert declaration.

[00:20:43] Speaker 02:
In any event, even if the power amplifier is the same in figures two, three, and four, that still does not provide any reasoning or motivation to take the control circuitry in figures three and four and apply it to figure two.

[00:20:59] Speaker 02:
It is the control circuitry in figures three and four, in particular components 104 and 106, that Intel and the board rely on for various limitations in the claims.

[00:21:11] Speaker 02:
On DSS,

[00:21:13] Speaker 02:
The key in DSS is not that it was missing a limitation.

[00:21:17] Speaker 02:
It's not that the limitation was missing.

[00:21:19] Speaker 02:
What was decisive in DSS is that reasoning and fact-finding were missing.

[00:21:25] Speaker 02:
And again, I think DSS is instructive here because that case makes clear that even if there's a similarity in transmission hardware, that does not fill evidentiary gaps without reasoned analysis.

[00:21:37] Speaker 02:
There's no reasoned analysis here.

[00:21:38] Speaker 02:
The board did not provide any, and Intel cannot point to any.

[00:21:42] Speaker 02:
Unless there are any questions, I will give it back to Court of Stein.

[00:21:46] Speaker 04:
Okay, and since you didn't address the cross appeal, you have another battle.

[00:21:49] Speaker 04:
Thank both parties.

[00:21:50] Speaker 04:
This case is taken under submission.