[00:00:00] Speaker 02:
Our next case is Samsung and Apple versus Neonode.

[00:00:07] Speaker 02:
2023, 1464, Ms.

[00:00:15] Speaker 02:
Degna.

[00:00:17] Speaker 00:
May I please the court?

[00:00:18] Speaker 00:
Lauren Degna for Appellant, Apple and Samsung.

[00:00:21] Speaker 02:
So you're dealing with limitation 1D.

[00:00:24] Speaker 00:
Yes, Your Honor.

[00:00:25] Speaker 02:
Same patent.

[00:00:26] Speaker 00:
So under the board's own findings, Hiriyama

[00:00:30] Speaker 00:
307 renders limitation 1D obvious, and this court should reverse the board's contrary decision.

[00:00:38] Speaker 00:
Specifically, the board found that Hiriyama was ambiguous as to whether the icon is relocated or duplicated during the gesture, the moving of the pen.

[00:00:50] Speaker 00:
Due to that ambiguity, there is a gap, a silence, so to speak, in the reference itself.

[00:00:57] Speaker 00:
Because there are only a finite number

[00:01:00] Speaker 00:
of identified predictable solutions or design choices, we have shown that limitation 1D would have been obvious under KSR and in cases in this court like Uber.

[00:01:13] Speaker 03:
Can you point us to the record where you made the argument, this two option argument to the board?

[00:01:19] Speaker 00:
Yes, Your Honor.

[00:01:20] Speaker 00:
So appendix 543 is the reply.

[00:01:30] Speaker 00:
543, Your Honor.

[00:01:32] Speaker 00:
And so in the reply at the glass full paragraph before the subheading D, we argue that it would have been at least obvious to Opposa to implement Kiriyama 307 user interface in both, one, a way that does not drag ICON 41, and two, a way in which ICON 41 is dragged during

[00:01:59] Speaker 00:
the gliding of the pen.

[00:02:00] Speaker 00:
So those are the two options.

[00:02:02] Speaker 02:
And we go on to say that Posa... They're talking about a person of ordinary skill in the art.

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

[00:02:08] Speaker 02:
You don't have a word count problem here.

[00:02:11] Speaker 02:
So you can speak English.

[00:02:13] Speaker 00:
Fair enough, Your Honor.

[00:02:14] Speaker 00:
So the person of ordinary skill in the art would have recognized that those implementations would have had benefits and drawbacks, making both implementation reasonable choices.

[00:02:25] Speaker 00:
Now I acknowledge

[00:02:26] Speaker 00:
that the buzzwords, KSR, Uber, finite number of limited predictable choices, is not there.

[00:02:34] Speaker 00:
But in substance, we believe that this is fundamentally the same argument we're making on appeal.

[00:02:41] Speaker 00:
Certainly, we are expanding and clarifying that argument, given the board's findings.

[00:02:48] Speaker 00:
But we would say that this is not a completely new concept in the record on appeal.

[00:02:53] Speaker 04:
But is that the full extent of your articulation of it to the board, this one paragraph in your reply?

[00:03:00] Speaker 00:
This is the best place where we made it.

[00:03:01] Speaker 04:
I recognize the best.

[00:03:03] Speaker 04:
Is it the only?

[00:03:05] Speaker 00:
I would say essentially, yes, Your Honor.

[00:03:08] Speaker 00:
And certainly in the petition, we rely on the same reference, the same portion of the reference for single reference obviousness.

[00:03:15] Speaker 00:
But the petition doesn't have this sort of language.

[00:03:18] Speaker 00:
And this is the language that we added to respond to the argument that Hiriyama

[00:03:23] Speaker 00:
Rather than disclosing the absence, not reproducing the icon, disclose the opposite.

[00:03:28] Speaker 00:
This is it, Your Honor.

[00:03:29] Speaker 04:
Why should we not say that in context, this one paragraph kind of hidden at the middle of your reply is just not enough to have fairly presented the issue and to have given the board and the patentee a chance to deal with it before we get it?

[00:03:48] Speaker 00:
So if you think that this is not enough, we would say that as forfeiture is a discretionary doctrine, you should decline to find forfeiture here because the argument, sort of the fully flushed out argument under KSR and Uber, arises due to the board's own findings that the reference is ambiguous.

[00:04:10] Speaker 00:
And in cases like Yeeta that we cited in our brief, when the board makes findings,

[00:04:16] Speaker 00:
that suggests a certain outcome under this court's precedent, this court should step in and make sure.

[00:04:22] Speaker 03:
Yeah, but that doesn't really quite correspond to the analysis of the board as I read it.

[00:04:27] Speaker 03:
at page 30, which I think is kind of important.

[00:04:30] Speaker 03:
I mean, that's where they say it could be at least as likely.

[00:04:35] Speaker 03:
I see this case as a battle of the experts.

[00:04:39] Speaker 03:
So you can tell me why I'm wrong.

[00:04:42] Speaker 03:
And I think the board in various respects credited Dr. Rosenberg.

[00:04:49] Speaker 03:
in favor of rather than Dr. Benderson.

[00:04:55] Speaker 03:
Why isn't that sufficient, given our standard of review, to decide this case?

[00:05:00] Speaker 03:
I mean, even if we all conclude, yes, it's ambiguous, yes, maybe it's a close call, the board did what it should do in these circumstances, which is consult the extrinsic evidence, listen to the experts.

[00:05:11] Speaker 03:
It certainly went through an analysis of the experts.

[00:05:15] Speaker 03:
And I picked one.

[00:05:17] Speaker 00:
So my response to that, it may be a multi-part way.

[00:05:20] Speaker 00:
First, I would say the board did not find that Hirayama, I didn't accept Dr. Rosenberg's analysis, didn't find that Hirayama actually does disclose reproducing the icon.

[00:05:34] Speaker 00:
It doesn't make a call one way or the other.

[00:05:36] Speaker 00:
It says we had not met our burden to prove it doesn't just move the icon.

[00:05:41] Speaker 00:
It treated it almost as an anticipation or inherent anticipation as opposed to

[00:05:47] Speaker 03:
Well, it is your burden, right?

[00:05:48] Speaker 00:
It is our burden to prove obviousness.

[00:05:50] Speaker 00:
But I think when you read the crediting of their expert versus our expert was really focused on is it clear which way this reference is going.

[00:06:05] Speaker 00:
And what we see in the findings, even on Appendix 52, it says the evidence is mixed.

[00:06:10] Speaker 00:
that there's evidence to show it teaches not to support an expert.

[00:06:14] Speaker 03:
So the board had a bundle of ambiguous evidence and experts.

[00:06:18] Speaker 03:
It accredited one expert and got to a result.

[00:06:22] Speaker 03:
Given that the burden is yours, what's improper about what the board did, unless you can establish that some of the underpinnings of Dr. Robertson's analysis or whatever were just really wrong and not wrong in this record.

[00:06:38] Speaker 00:
Because it was not enough for the board simply to indicate that the reference doesn't explicitly disclose not reproducing the icon.

[00:06:48] Speaker 02:
But the board also found industry praise and your client took a license.

[00:06:56] Speaker 00:
So on the industry praise aspect of it, as you know, our second issue is relating to the errors the board made with respect to Nexus.

[00:07:05] Speaker 00:
That industry praise was tied to a swiping gesture, a swipe-based user interface.

[00:07:13] Speaker 02:
Wasn't it covered by the claims?

[00:07:16] Speaker 00:
Certainly we did not appeal, we did not challenge the finding that the particular device was covered by the claim, but that's not the end of the inquiry in a nexus analysis.

[00:07:26] Speaker 00:
This is not a presumption of nexus analysis, and ultimately the board had to, when it was looking for nexus... In other words, you're saying industry praise must relate to a particular claim limitation?

[00:07:37] Speaker 00:
We're not saying a particular claim limitation, Your Honor.

[00:07:40] Speaker 00:
What we're saying under this court's law is that it has to cover

[00:07:45] Speaker 00:
It can't be to non-claimed features, and it can't be to claims features that are in the prior art.

[00:07:51] Speaker 00:
Here, Neonose has posited that the claim as a whole is what is

[00:07:59] Speaker 00:
not in the prior art.

[00:08:00] Speaker 00:
But the praise is exclusively tied towards swiping gestures.

[00:08:04] Speaker 00:
And there's two important things to remember.

[00:08:06] Speaker 00:
There are lots of swiping gestures in that product.

[00:08:10] Speaker 00:
And the claim, limitation 1C, talks about a gesture or movement that activates a function.

[00:08:16] Speaker 00:
In that product, there's swipes that do not activate a function.

[00:08:20] Speaker 02:
I hypothesize a chemical compound, which has a nucleus and a lot of substituents.

[00:08:25] Speaker 02:
And it's a commercial success.

[00:08:27] Speaker 02:
Industry praised everyone

[00:08:29] Speaker 02:
praises it.

[00:08:31] Speaker 02:
And the nexus has to be to a particular substituent, like a methyl group or a phenyl group.

[00:08:37] Speaker 02:
It's the whole compound, isn't it?

[00:08:39] Speaker 02:
The whole compound that's claimed.

[00:08:42] Speaker 00:
I think in the compound, if the whole compound is claimed is what is getting the praise, I think your hypothetical would be fine, because you're looking at what is different from the prior art, and it's said to be the entire compound, and the entire compound is being praised.

[00:08:55] Speaker 02:
Well, certainly the methyl group is in the prior art, and the phenyl group is in the prior art.

[00:08:58] Speaker 00:
What we're saying here, Your Honor, is that the praise is exclusively directed to a swiping gesture, not the claim as a whole.

[00:09:08] Speaker 00:
Because the claim as a whole includes element 1D, which is the reaction that happens.

[00:09:14] Speaker 00:
And there was some discussion of the prosecution history.

[00:09:17] Speaker 00:
It's abundantly clear that element 1C is completely different than element 1D.

[00:09:22] Speaker 02:
How about the license?

[00:09:24] Speaker 00:
The license, again, the evidence that was pointed to by the board in Appendix 51, the board finds that the license, Simpson's interest in taking a license, related to the intuitive swipe-based gestures.

[00:09:38] Speaker 00:
Again, the board focused exclusively on swipe-based gestures.

[00:09:42] Speaker 02:
In other words, we're taking a license not because we might be infringing the whole claim, but because we'd like one limitation rather than another.

[00:09:53] Speaker 00:
I think we have to look at the findings by the board.

[00:09:56] Speaker 00:
And they were based on the swipe-based gesture and the fact that Samsung, at that time, when the claims had not issued, had not been done, the application.

[00:10:06] Speaker 00:
And importantly, the application doesn't include any discussion that corresponds to limitation 1D about not reproducing the icon.

[00:10:14] Speaker 04:
Didn't the board make a finding, though, that 1D, that negative limitation, is part of the swiping

[00:10:22] Speaker 04:
that then it found as part of the swiping, which it then found was the source or there was a nexus to that and the industry praise and the license.

[00:10:34] Speaker 00:
So we would disagree, Your Honor, that it was a finding because it's really clean interpretation.

[00:10:38] Speaker 00:
So whether imitation 1D is part of the swiping

[00:10:42] Speaker 00:
really turns entirely on the language of the claim.

[00:10:45] Speaker 00:
So I don't think it's a finding.

[00:10:47] Speaker 04:
It was a conclusion.

[00:10:49] Speaker 04:
Let's go to page 50.

[00:10:50] Speaker 04:
I'm sure you're familiar with

[00:10:53] Speaker 04:
the sentence, the board says that the gestures do not relocate or duplicate representation of the function during the swiping operation as per limitation 1D is part of what distinguishes the swiping gestures as a whole from drag and drop gestures in the prior art.

[00:11:10] Speaker 04:
That's not a finding?

[00:11:12] Speaker 00:
Well, I would say it's a conclusion and it should not be treated as a finding for purposes of appeal.

[00:11:17] Speaker 00:
because it's based on looking at the claim language and determining that what's called out in limitation 1D is actually part of the swiping gesture, which is plainly recited exclusively in limitation 1C.

[00:11:31] Speaker 04:
So are you saying our review of that sentence should be de novo?

[00:11:34] Speaker 04:
I am.

[00:11:35] Speaker 04:
But for you to win, I still need to say this is wrong.

[00:11:38] Speaker 00:
It is.

[00:11:39] Speaker 00:
Yes.

[00:11:40] Speaker 00:
You have to agree with me that it is wrong.

[00:11:41] Speaker 00:
And if I could elaborate, we believe it is wrong because the element 1C talks about the gesture.

[00:11:49] Speaker 00:
We look at the prosecution history.

[00:11:50] Speaker 00:
More than a year and a half later, element 1D is added by amendment.

[00:11:55] Speaker 00:
The examiner does not consider element 1C discussing the gesture to include this aspect.

[00:12:00] Speaker 00:
And if you think about it technically,

[00:12:02] Speaker 00:
The gesture, if you want to put it in a better word, happens sort of what's happening to the screen or above the screen.

[00:12:08] Speaker 00:
The reaction is sort of what the screen is doing to you, maybe below the screen.

[00:12:13] Speaker 00:
And so I think both logically, claim language, and factually, the gesture, the movement, is utterly different from the reaction to that movement, whether or not that icon is duplicated during the gesture.

[00:12:26] Speaker 02:
Nelson, you're about to enter your rebuttal time.

[00:12:29] Speaker 02:
Do you want to continue or save it?

[00:12:30] Speaker 00:
I will save it.

[00:12:44] Speaker 02:
Mr. Graves.

[00:12:45] Speaker 01:
Thank you, Your Honor.

[00:12:48] Speaker 01:
So responding to this issue concerning Nexus first, I would say that this is not a claim construction issue.

[00:12:59] Speaker 01:
And we can clearly see, at appendix 50, the board is making a finding.

[00:13:07] Speaker 01:
And this is an issue of fact, not an issue of claim construction.

[00:13:11] Speaker 01:
And what the board is saying here is that,

[00:13:14] Speaker 01:
is that limitation 1D is part of or an element of the swiping gestures that were so highly praised in the art.

[00:13:27] Speaker 01:
It submitted copious evidence of industry praise for the NeoNode N1 and N2 phones and that praise was focused on the ability of the user to interact with the device using a simple swiping gesture.

[00:13:41] Speaker 01:
Limitation 1D, reciting that

[00:13:44] Speaker 01:
The relocation is not duplicated or relocated during the gliding is a part of what instantiates the swiping gestures that were so highly praised.

[00:13:58] Speaker 01:
So there is more than sufficient support.

[00:14:02] Speaker 01:
in the record for the board's finding.

[00:14:05] Speaker 04:
Given that it's added, as you heard from your friend, a year later and there's no reference to 1C, why shouldn't we view that at least as a claim construction question of law that we reviewed de novo?

[00:14:18] Speaker 01:
Well, because it's, again, it's really not a claim construction issue.

[00:14:22] Speaker 01:
The court is looking to the connection between limitation 1D, you know, standing on its own,

[00:14:32] Speaker 01:
and the swiping gestures that were so highly praised.

[00:14:37] Speaker 01:
And is saying that the fact that the gestures not relocate or duplicate during the swiping operation is part of what distinguishes the swiping gestures as a whole from drag and drop gestures in the prior art.

[00:14:51] Speaker 01:
And then provides a reason because with a swiping gesture that includes limitation 1D, the user can control the device

[00:14:59] Speaker 01:
without the complexity of dragging an item or dropping it to a particular location.

[00:15:04] Speaker 01:
Again, that's a factual issue.

[00:15:06] Speaker 01:
So I would submit that it is reviewed under a substantial evidence standard of review, and it's supported by substantial evidence.

[00:15:14] Speaker 01:
But Your Honor, even if the court were to determine that its review on this issue is de novo, again, the board got it right.

[00:15:23] Speaker 01:
And appellant has provided no well-founded reason

[00:15:28] Speaker 01:
for this court to make a conclusion that's contrary to the conclusion arrived at by the board.

[00:15:39] Speaker 01:
With respect to the design choice issue, appellants say that the board committed an error of law, but really what it looks like to me is that appellant is complaining about the board's findings of fact.

[00:15:56] Speaker 01:
Critically, Appellant does not contest the majority of the findings of fact underlying the board's conclusion here.

[00:16:11] Speaker 01:
Instead, what they do is they're raising this new design choice argument.

[00:16:16] Speaker 01:
And as we point out in our briefs, that's not an argument that was raised below.

[00:16:21] Speaker 01:
And the single paragraph

[00:16:23] Speaker 01:
in their experts' declarations submitted with their reply brief doesn't suffice to raise the issue.

[00:16:30] Speaker 03:
Well, let's assume for the sake of argument that we would consider the argument.

[00:16:35] Speaker 03:
So what's your substantive response to the argument?

[00:16:38] Speaker 01:
I'll get to that in a moment.

[00:16:39] Speaker 01:
First, there are none of the typical or standard rationales for the court to exercise its discretion to consider an argument that's been forfeited.

[00:16:52] Speaker 01:
apply here as we point out in our brief.

[00:16:55] Speaker 01:
So the court should not exercise its discretion here.

[00:16:59] Speaker 01:
This does not fit within any of the standard exceptions to the general rule of forfeiture.

[00:17:06] Speaker 01:
And appellants have made the argument that, well, somehow that the board found that Hiriyama was ambiguous and that somehow that justifies

[00:17:16] Speaker 01:
exercising the court's discretion to avoid forfeiture.

[00:17:23] Speaker 01:
First of all, the board did not find that Hiriyama was ambiguous.

[00:17:29] Speaker 01:
What the board found was the petitioner had failed to make its case of a motivation to modify Hiriyama, to make its draggable icons non-draggable.

[00:17:43] Speaker 01:
All right, that's what the board found.

[00:17:45] Speaker 01:
There was no finding here of ambiguity.

[00:17:47] Speaker 01:
You will search the FWD in vain for finding by the board that Hiriyama was ambiguous.

[00:17:54] Speaker 04:
Don't they say that both interpretations of Hiriyama are equally plausible at a certain point?

[00:17:59] Speaker 04:
At least as likely.

[00:18:00] Speaker 04:
At least as likely?

[00:18:01] Speaker 04:
At age 30.

[00:18:02] Speaker 01:
I think there may be, there were a number of factual issues that the board looked at.

[00:18:10] Speaker 01:
And on some of them, the board did find that the petitioner had failed to make its case because petitioner's view of the evidence was no more likely than Adam's.

[00:18:27] Speaker 03:
They're checking with the experts, the two experts, which is the result here.

[00:18:33] Speaker 03:
And they say that Rosenberg's interpretation

[00:18:39] Speaker 03:
to be at least as likely as that proposed by Dr. Menderson.

[00:18:45] Speaker 01:
OK.

[00:18:46] Speaker 01:
Yes, Your Honor, with respect to this particular issue, dealing with the argument concerning the presence of ICON 41 at the original location in figures 3A and 3B.

[00:18:57] Speaker 01:
But overall, on Appendix 33, the board stated

[00:19:02] Speaker 01:
We regard Hiriyama 307's reference to a vacant icon position as mild evidence.

[00:19:07] Speaker 03:
Hold on.

[00:19:07] Speaker 03:
Where are you?

[00:19:08] Speaker 03:
On 33?

[00:19:09] Speaker 01:
Appendix 33, yes.

[00:19:10] Speaker 03:
And where are you reading from?

[00:19:16] Speaker 01:
The second paragraph.

[00:19:19] Speaker 01:
So this is another one of the specific factual issues.

[00:19:23] Speaker 01:
As at least mild evidence that Hiriyama 307's icon activation process involves relocating or duplicating icon

[00:19:31] Speaker 01:
41, the disclosure of Hiriyama 878 further supports this interpretation.

[00:19:36] Speaker 01:
So overall, what the board found was with respect to these five or six different factual issues, on some of them there was ambiguity in Hiriyama, but on I believe at least two of them, the board found that the evidence weighed in favor of patent owner's position.

[00:19:54] Speaker 01:
So I would submit, again, the board made no finding that Hiriyama was ambiguous.

[00:19:59] Speaker 01:
What the board did is it examined

[00:20:01] Speaker 01:
The factual arguments, a number of different factual arguments that were made by Petitioner and responded to by Neonode.

[00:20:08] Speaker 01:
With respect to some of them, the board did find some ambiguity or lack of clarity and found that because of that, Petitioner had failed to prove its case with respect to others.

[00:20:20] Speaker 01:
The board found that the evidence favored Neonode.

[00:20:22] Speaker 01:
So overall, I would say that does not suffice to show a finding of ambiguity second, even if the board had made a finding.

[00:20:31] Speaker 01:
that Hirayam is ambiguous.

[00:20:34] Speaker 01:
That alone would not support the proposition that the board should here exercise its discretion to avoid forfeiture because that's completely irrelevant to the issue of whether appellant's new design choice argument is supported by the evidence that was in the record before the PTAB.

[00:20:57] Speaker 01:
So moving on, I know, Your Honor, you asked us for a substantive position with respect to the design choice argument.

[00:21:05] Speaker 01:
So what is the evidence that was submitted below?

[00:21:08] Speaker 01:
Well, really, they didn't submit or Appellants didn't submit any evidence below to support their design choice argument, as one would expect, since they didn't actually make the argument.

[00:21:22] Speaker 01:
What they submitted was primarily evidence from their expert

[00:21:26] Speaker 01:
Using a cursor to establish the position of a pen on a display was well known and a Posito would have considered that to be sufficient to provide information about the location of the pen.

[00:21:41] Speaker 01:
There were a couple of other

[00:21:45] Speaker 01:
Items of testimony from their experts submitted with their reply brief as well.

[00:21:50] Speaker 01:
None of them that the board found credible.

[00:21:53] Speaker 01:
And with respect to those additional items of testimony, again, none of them were directed to facts that would support their design choice arguments.

[00:22:05] Speaker 01:
So there's simply no evidence in the record to support that.

[00:22:13] Speaker 03:
Well, the design choice argument, as I understand it, is there were only a couple different ways to do things.

[00:22:20] Speaker 03:
And it makes sense for anybody to have picked any one of those.

[00:22:27] Speaker 01:
Yes, so that would be one iteration of the design choice argument.

[00:22:33] Speaker 01:
But Your Honor, they didn't submit any evidence to support the proposition A.

[00:22:40] Speaker 01:
In order for there to be a design choice argument, you do need to show that there are only a couple of ways to do something, but you also need to show, as per KSR, a market pressure or a design need to change a particular reference that's being pointed to.

[00:23:01] Speaker 01:
You need both of those things.

[00:23:03] Speaker 01:
And they didn't submit any evidence on either one of those factual predicates for their design choice argument.

[00:23:08] Speaker 04:
Well, I thought it's at least undisputed on the first factual predicate with respect to limitation 1D.

[00:23:16] Speaker 04:
Either you can design it to see the icon or representation move as you're dragging it, or you design it not to see it move as you're dragging it.

[00:23:26] Speaker 04:
Isn't that undisputed?

[00:23:28] Speaker 01:
No, it's not, your honor.

[00:23:30] Speaker 01:
So the reason we dispute that is that by putting the focus on limitation 1D, you're actually not performing the analysis that's required by the Graham v. John Deere case and KSR, which focuses on the differences between the prior art and the claimant issue.

[00:23:54] Speaker 01:
So if you

[00:23:55] Speaker 01:
Look at 1D, which is a negative limitation, and say, well, because this is a negative limitation, there are always just two ways to do this.

[00:24:03] Speaker 01:
Either you do it or you don't.

[00:24:06] Speaker 01:
You're abstracting from the prior art that the court is supposed to be applying or looking at in juxtaposition with the claim.

[00:24:15] Speaker 01:
And you're just focusing on the claim limitation itself.

[00:24:19] Speaker 01:
And that sort of focus is inconsistent

[00:24:23] Speaker 01:
with the Graham case and KSR and would render nearly every negative limitation useless as a means of avoiding prior art, because it would render every negative claim limitation subject to this design choice argument.

[00:24:42] Speaker 01:
We would submit that is not the correct analysis.

[00:24:45] Speaker 01:
Under KSR, what the court needs to do, if it were to entertain this design choice argument,

[00:24:53] Speaker 01:
is to look at Hiriyama.

[00:24:55] Speaker 01:
Hiriyama is the reference they started with.

[00:24:57] Speaker 01:
You look at Hiriyama, just as the Supreme Court looked at the Asano reference, and ask, starting with Hiriyama, is there evidence in the record of a design need or market pressure to make a change to Hiriyama that would be addressed?

[00:25:16] Speaker 03:
But the board said,

[00:25:17] Speaker 03:
each of it, when they looked at the reference, this is kind of an odd case.

[00:25:21] Speaker 03:
They're looking at the reference, which doesn't say anything.

[00:25:24] Speaker 03:
And they're saying it's at least as likely that it says A or B. Right?

[00:25:32] Speaker 01:
I disagree, Your Honor.

[00:25:34] Speaker 01:
The board ultimately rejected petitioner's argument that Hirayama teaches a non-draggable icon 41.

[00:25:46] Speaker 01:
The board said, you have not proven that.

[00:25:49] Speaker 01:
So the board did not find it.

[00:25:51] Speaker 01:
It's equally likely.

[00:25:53] Speaker 01:
Again, there were, I believe, two factual.

[00:25:57] Speaker 03:
Well, let me ask you hypothetically.

[00:25:58] Speaker 03:
If I read them as saying they're equally likely, do you still win simply because the burden is on them and not on you?

[00:26:06] Speaker 01:
Absolutely, Your Honor, yes.

[00:26:10] Speaker 01:
So returning to the design choice, since that's the argument they're making on appeal,

[00:26:16] Speaker 01:
returning to the design choice argument, they have to lay the factual predicate.

[00:26:22] Speaker 01:
And they can't just point to limitation 1D, say it's a negative limitation, you do or you don't, so there are only two ways to do it.

[00:26:28] Speaker 01:
They have to identify a design need, market pressure, or a problem with Hiriyama that would be addressed by changing Hiriyama to make ICON 41 non-dragable

[00:26:43] Speaker 01:
And they simply provided no evidence to support any of those factual predicates.

[00:26:50] Speaker 01:
So it really, ultimately doesn't matter whether there are only two ways of addressing a potential problem here or 20.

[00:27:01] Speaker 01:
They haven't laid the factual predicate that would bring into play a design choice type of argument.

[00:27:09] Speaker 01:
In addition, defining the problem

[00:27:13] Speaker 01:
In any design choice type argument, defining the problem is important.

[00:27:19] Speaker 01:
And with respect to KSR, the problems were defined in a way that was very tightly focused on the references at issue.

[00:27:29] Speaker 01:
The Asano reference, for instance.

[00:27:33] Speaker 01:
Here below, they defined no problem that would be addressed

[00:27:41] Speaker 01:
by their proposed modification to Hiriyama.

[00:27:52] Speaker 02:
And in fact... Council, do you have a concluding statement?

[00:27:57] Speaker 02:
Your time has expired.

[00:27:59] Speaker 01:
So the board's determination is supported by substantial evidence.

[00:28:05] Speaker 01:
There are really only issues of fact in play.

[00:28:08] Speaker 01:
So we would submit that this court should affirm the board.

[00:28:11] Speaker 01:
Thank you very much.

[00:28:12] Speaker 02:
Thank you.

[00:28:15] Speaker 02:
Ms.

[00:28:15] Speaker 02:
Degman has about three minutes.

[00:28:23] Speaker 00:
Thank you, Your Honor.

[00:28:26] Speaker 00:
And the design need, I want to just be very clear because I think, perhaps for ships passing in the night on this, the design need here is

[00:28:36] Speaker 00:
arises from the fact that in Hiriyama, whether or not to reproduce the selected icon during movement is a design parameter.

[00:28:47] Speaker 00:
You must make a choice in a graphical user interface whether or not to visually reproduce the icon.

[00:28:55] Speaker 00:
That is the design need.

[00:28:56] Speaker 00:
It is made extremely stark because the board did not, as counsel would have you believe, find that Hiriyama

[00:29:06] Speaker 00:
discloses reproducing the icon.

[00:29:09] Speaker 00:
Because of the ambiguity finding, it is at most silent.

[00:29:13] Speaker 00:
It's unclear.

[00:29:15] Speaker 00:
And so we're not in a scenario where we're modifying Kiriyama's disclosing of reproducing the icon and replacing with something else.

[00:29:24] Speaker 00:
There's a gap.

[00:29:25] Speaker 00:
And the design need is filling that gap.

[00:29:30] Speaker 00:
And so we think that was fairly suggested in our reply.

[00:29:33] Speaker 00:
It's certainly the design need we're identifying now.

[00:29:36] Speaker 00:
And it arises because of the board's findings.

[00:29:39] Speaker 00:
So that's the design need.

[00:29:40] Speaker 04:
Do we have any cases applying KSR's design need scenario in that type of way?

[00:29:47] Speaker 00:
When there's a gap that needs to be filled.

[00:29:49] Speaker 04:
Where you say it means you don't have to show a problem or market pressure or a reason someone would do this modification.

[00:29:59] Speaker 04:
That's what you're saying, because you acknowledge I think you don't have evidence of those things.

[00:30:04] Speaker 04:
So do we have any cases that would allow us to interpret the design need analysis the way you're doing it?

[00:30:11] Speaker 00:
OK.

[00:30:12] Speaker 00:
So I'm going to quibble just for a second with your suggestion that having to make a choice about how you would implement

[00:30:18] Speaker 00:
this user interface is not a design need, but if you want to construe design need as requiring a specific problem separate from the need to actually fill the gap.

[00:30:30] Speaker 00:
Offhand, I will tell you, Judge Stuck, I don't have a case, but I don't interpret KSR saying that design need is only a problem completely separate.

[00:30:42] Speaker 00:
Now, console wants us to look at the reference, and the reference, this is something you have to do, a choice you have to make if you're going to implement the graphical user interface.

[00:30:51] Speaker 00:
In terms of the notion of this is a binary choice, not all negative limitations are going to have this sort of binary choice.

[00:31:03] Speaker 00:
We're not advancing that position.

[00:31:04] Speaker 00:
Rather, certain fact patterns naturally lend themselves to a binary choice.

[00:31:10] Speaker 00:
In Uber, it was server-side plotting versus terminal-side plotting.

[00:31:14] Speaker 00:
In echo, it was the thermal sensor above or below.

[00:31:18] Speaker 00:
And here, when you have this particular kind of limitation that excludes, prevents the option of showing the icon or not, this sort of factual pattern gives rise to the finite number, a binary choice of options.

[00:31:36] Speaker 00:
And so with that, we'd ask your honors to reverse the board on both issues.

[00:31:40] Speaker 00:
Thank you.

[00:31:41] Speaker 02:
Thank you, counsel.

[00:31:42] Speaker 02:
And this case is submitted.