[00:00:00] Speaker 00:
Next case for argument is 23-1198, Universal Electronics versus Roku.

[00:00:07] Speaker 00:
Good morning.

[00:00:08] Speaker 00:
Please proceed.

[00:00:09] Speaker 02:
Good morning, Your Honors.

[00:00:10] Speaker 02:
May it please the Court.

[00:00:12] Speaker 02:
The board's own findings on two key limitations of the challenge claims in the 785 patent demonstrate that the final written decision of unpatentability was not supported by substantial evidence and should be reversed.

[00:00:24] Speaker 02:
These two limitations are the message having data,

[00:00:28] Speaker 02:
and unresponsive message limitations.

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The only reference the board relied on in finding that these limitations were disclosed in the prior art was the Chardon reference.

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But if we look at the plain language of the challenge claims and the portions of Chardon that the board relied on, neither limitation is disclosed, and the claims are not obvious over the prior art.

[00:00:50] Speaker 02:
I'd like to start with the unresponsive message limitation.

[00:00:54] Speaker 02:
There's a lot of words in there, and I'll just read it.

[00:00:59] Speaker 02:
issuing a communication directly to the MediaSync device via a third communications link between the controlling device and the MediaSync device to control the functional operation of the MediaSync device when the data in the message indicates that the MediaSync device is unresponsive to the command communication.

[00:01:18] Speaker 02:
Now there's three important parts of this limitation that implicate the board's analysis.

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First,

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The message recited in this limitation has to be the same message recited in the previous limitation, the message having data limitation.

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Second, as in the message having data limitation, the message must be transmitted from the media source device to the controlling device.

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And third, it is, quote, the data in the message that indicates that the MediaSync device is unresponsive to the command communication.

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So before the board, Roku identified

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what they call two scenarios in the Chardon reference that disclose the unresponsive message limitation.

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They were the only two scenarios that were considered by the board in its decision.

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And I cite your honors to appendix pages 43, 44 of the board's decision.

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But in both these scenarios, the alleged message is the absence of a response from the media sync device.

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It's not data in a message that indicates non-responsiveness.

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They were the only two scenarios that were argued by Roku to the board, and they were the only two that the board relied upon.

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And in its decision, if you look at those same appendix pages, 43, 44, the board repeats those two scenarios and then concludes that the limitation was met without any further analysis or explanation.

[00:02:49] Speaker 02:
Now, it's important, Your Honors,

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UEI had an expert in this case, Dr. Turnbull, and he testified extensively in his declaration that these two scenarios cannot satisfy the unresponsive message limitation because they do not involve either a message having data, a message having data transmitted from the media source device to the controlling device, or data in the message that indicates the media sync device is unresponsive to the command communication.

[00:03:19] Speaker 02:
Silence is not a message.

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Silence is not data in a message that indicates non-responsiveness.

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And Roku also had an expert, Dr. Russ.

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But he could only point to the absence of a response in these two chart and scenarios relied on by Roku and the board.

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And that would be appendix pages 477 to 479.

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That's Dr. Russ's declaration.

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But in absence of a response doesn't meet the limitations.

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Now on appeal, it appears to me anyway that Roku abandoned these two absence of a response charting scenarios and came up with two new arguments that the board didn't consider.

[00:04:02] Speaker 02:
On pages 47 and 51 of their response brief, Roku makes two new arguments that weren't raised to the board, and they were not mentioned in Dr. Russ's declaration.

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The board's whole analysis of this claim limitation

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is literally two pages of its over 50 page decision.

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And these two arguments are certainly not in there.

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They weren't presented to the board, and they weren't considered by the board.

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So as a result, these arguments should be deemed waived and rejected as unsupported attorney argument.

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Now, if we turn to the other limitation, the message having data limitation, there's

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one important requirement in there that Chardon doesn't satisfy.

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The message having data limitation requires that the claim message having data must be transmitted from the media source device to the controlling device.

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And Roku and its expert argued to the board that three scenarios disclosed in Chardon read on this limitation.

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Those scenarios are collecting EDID, collecting the CEC vendor ID, and the handshake operation.

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And these three scenarios, and that's what the board called them, are set out at pages 36 to 37 of the appendix.

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And the board relied on these three scenarios in finding that charting disclosed the message having data limitation.

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However, and this is what's key here, the board did not find that the alleged messages having data

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in these three scenarios are transmitted from Chardon's media source device to Chardon's controlling device, but that's what the claims require.

[00:05:48] Speaker 02:
Instead, the board acknowledged that Roku and his expert characterized these three scenarios as, and I'm quoting from appendix page 37, as examples where Chardon's media source device performs command communication with Chardon's media sync device.

[00:06:06] Speaker 02:
But that's not what the claims require.

[00:06:09] Speaker 01:
So you're saying, counselor, that the board failed to make a finding that it had to make with respect to transmissions from the media source device to the controlling device?

[00:06:21] Speaker 01:
Absolutely.

[00:06:22] Speaker 01:
They didn't make that finding.

[00:06:23] Speaker 01:
Assumed for the moment that that finding had been made, OK, I realize you say it wasn't found, it wasn't made, but assumed for the moment that finding had been made, would there be substantial evidence supporting it?

[00:06:36] Speaker 02:
No.

[00:06:37] Speaker 02:
No, because there's nothing in Chardon that discloses it.

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And if there was, the board would have cited it and Roku would have cited it.

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And the board would not have said the three scenarios Roku identified are examples where Chardon's media source device performs command communication with Chardon's media sync device.

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Now, if we look at the board's decision where they describe Chardon,

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And that would be appendix page, I believe it's 28.

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So if you look at page 28, appendix page 28, which is the same as page 28 of the board's decision, the last paragraph at the end, beginning with the words, remote control engine 105.

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So it says, remote control engine 105 of multimedia gateway 110 or remote control device 115 may query HDMI display 105A, such as by two-way IR or RF communication, and collect EDID, which may be then linked to HDMI display 105A with the locally stored set of command codes.

[00:07:54] Speaker 02:
Now, if you look at how Roku broke down Chardon,

[00:08:00] Speaker 02:
in trying to match them on the claim elements, Roku asserts that Chardon's controlling device 115 is the claim controlling device, that Chardon's HDMI sources 105B are the claim media source device, and Chardon's HDMI display 105A is the claim media sync device.

[00:08:22] Speaker 02:
Now, what I just read to you shows that the, quote, message-having data

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And Chardon doesn't come from the media source device to the controlling device.

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It comes from the media sync device to the controlling device.

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And that's just not what the claims require.

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It's a structural patent.

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So UEI presented evidence in the form of testimony from Dr. Turnbull, their expert, demonstrating that Chardon's HDMI sources 105B never transmit.

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any of Charlie's alleged messages having data, the EDID, the CEC vendor ID, or the handshake to Charlie's controlling device, as the claims require.

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And that would be appendix cites 2768 to 2772, which are paragraphs 122 to 128 of Dr. Turnbull's declaration.

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Now, the board did not address this evidence and UEI's arguments in their decision, but focused

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on an unrelated claim construction issue instead, and that would be page, appendix page 39.

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But the claim construction issue that the board focused on concerned what the message-having data should contain, not where the message is sent.

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Now Roku concedes in its appeal brief that Chardon does not disclose

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messages having data being transmitted from the media source device to the control device.

[00:10:01] Speaker 02:
If you look at Roku's brief at page 28, and I'm quoting, the only issue then is whether it would have been obvious that Chardon's source also sent such a data to the remote control device.

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If there was a disclosure of that claim known in Chardon, they wouldn't be arguing obviousness.

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And the board never explained why it would have been obvious to conclude

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that Chardon's media source device sends messages having data to the controlling device.

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Now, Roku relied on other prior art to make this obvious in this argument, including the Mishra, if I'm pronouncing it correctly, the Mishra reference.

[00:10:42] Speaker 02:
But listen to what Roku concedes in its brief to this court.

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Roku said, the board was not relying on Mishra to modify anything in Chardon's system, page 27.

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Page 60, Roku never relied on Rishu to change anything about Chardon's system.

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And page 62, the board relied on Chardon for its disclosure or suggestion of each claim limitation.

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So in the end, what we have here, Your Honors, is the board's decision with regard to the message having data limitation was based solely on the Chardon reference.

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And none of the references cited by Roku and the board

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for this limitation demonstrates that Chardon discloses or suggests a system where the message-having data is transmitted from the media source device to the controlling device as required by the claims.

[00:11:34] Speaker 02:
And importantly, the Board never explained why it would have been obvious in light of Nisher to conclude that Chardon's media source device sends the claim messages having data to the controlling device.

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And as Roku concedes, the Board wasn't relying

[00:11:50] Speaker 02:
on Mishra to change anything in Chardon.

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And Roku said they're not relying on Mishra to change anything in Chardon.

[00:11:57] Speaker 02:
So Your Honor, as a summary, we respectfully submit that the Board's unpatentability decision should be reversed because it was not supported by substantial evidence regarding both the unresponsive message limitation and the message having data limitations of the challenge claims.

[00:12:14] Speaker 00:
Thank you.

[00:12:14] Speaker 00:
Thank you, Your Honor.

[00:12:29] Speaker 03:
Good morning, and may it please the court.

[00:12:33] Speaker 03:
To be clear, Sheridan discloses nearly every aspect of the 785 patent claims, including the claim to message having data limitation itself.

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The only aspect that Chardon doesn't expressly disclose is one device, the source, sending that message to another device, the remote control.

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And so the issue before this court is whether substantial evidence supports the board's findings, that that feature, which is nowhere described in the 785 patent, would have been obvious in light of what Chardon does disclose.

[00:13:05] Speaker 01:
But it is true that the board did not make a finding as to the transmission

[00:13:10] Speaker 01:
from the media source device to the controlling device, correct?

[00:13:15] Speaker 03:
I would disagree with that, Your Honor.

[00:13:17] Speaker 03:
At appendix 36, the second full paragraph beginning with first petitioner observes, the board cites our petition and expert testimony and observes that the HDMI source

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queries the sync to collect the EDID.

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And then immediately below that, the board notes that the remote control device learns of the EDID.

[00:13:44] Speaker 01:
I think the clear implication is that... I understand there's an implication here, but there's no finding by the board stating that the transmission comes from the media source to the controlling device.

[00:13:58] Speaker 01:
That's correct, isn't it?

[00:13:59] Speaker 03:
Well, I don't think so, Your Honor.

[00:14:00] Speaker 03:
I think appendix 36

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I think a fair reading of that paragraph is indeed that the board made such a finding, given that that was our argument to the board.

[00:14:11] Speaker 01:
By implication.

[00:14:12] Speaker 00:
By implication, but it appendix 47.

[00:14:15] Speaker 00:
Are you just saying because everything they listed, the petitioner said, they necessarily adopted because the petitioner won?

[00:14:23] Speaker 03:
Well, no, Your Honor.

[00:14:24] Speaker 03:
The board here on Appendix 36 is citing our petition and our expert's declaration, including paragraph 202, where our expert does indeed say that it would have been obvious

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that Chardon's source would send the data to the remote control device.

[00:14:41] Speaker 03:
And it isn't just Appendix 36.

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At Appendix 37, the board says that the Misha reference, which we also relied on, confirms that the messages including responsiveness data may be sent from Chardon's media device

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e.g.

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a media source device to its remote control device.

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So that's another place, Your Honor, where the Board is quoting our petition and expert testimony to make that finding.

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And if that were not enough, Your Honor, at the bottom of Appendix 40, the Board once again cites to our petition to conclude that the remote control device received the EDID

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from other remote control engines running on other HDMI appliances.

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And it is undisputed that the source is one appliance that does indeed contain a remote control engine.

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And I think it's important to remember here that UEI doesn't dispute that Sheridan's EDID is an example of the claimed message.

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UEI also doesn't dispute that the source retrieves the EDID.

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And then UEI doesn't dispute that the EDID is ultimately stored in the remote control.

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So we know that it was retrieved by the source, and we know that it is stored in the remote control device.

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It had to have gotten there somehow, and there are only a limited number of ways it could have gotten there, from the source or from the sink.

[00:16:07] Speaker 03:
And once again, the question is whether substantial evidence supports the board's finding that it would have been obvious for the source to send it.

[00:16:14] Speaker 03:
There is substantial evidence in the record, Your Honor, as our expert testified at length on this issue.

[00:16:20] Speaker 03:
including at Appendix 446 in Paragraph 174, he notes that Chardon's source communicates with a remote control device via a bidirectional communication link, and at Paragraph 210,

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He states the charting's remote control device receives communication from the source via that link.

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And then finally, at paragraph 214, he notes that in order to configure the remote control device to operate the SYNC directly, the source shares the response information to the SYNC.

[00:16:53] Speaker 03:
And again, these are the very paragraphs that the board relied on in its decision in the cited passages.

[00:17:02] Speaker 03:
So at the end of the day, there is substantial evidence supporting the board's decision, and the board's path en route to its legal conclusion is reasonably discernible, which is all we have to show, Your Honors.

[00:17:19] Speaker 03:
Real quickly turning to the unresponsive message limitation.

[00:17:22] Speaker 03:
The two limitations recite the very same message.

[00:17:26] Speaker 03:
So if this court agrees that the EDID data is that it would have been obvious or rather that substantial evidence would support the board's finding that that data is sent from source to remote control.

[00:17:38] Speaker 00:
On this element, I have got to say it doesn't look like your petition in discussing this particular element relied only on

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an embodiment where the message was the absence of a response.

[00:17:52] Speaker 00:
And that's Appendix 197.

[00:17:56] Speaker 00:
Am I missing something?

[00:17:57] Speaker 03:
Well, yes, Your Honor.

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As an initial matter, they are the same.

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The two limitations recite the very same message.

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So all of the argument and evidence that applies to the first limitation also applies to the second.

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But more expressly, in our petition at Appendix 183 and 184, we do say

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that the EDID

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informs whether the receiving SYNC device will be responsive or unresponsive to received commands.

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And UEI knew that that was our argument, Your Honor, because they responded to it in their patent owner response at appendix 2689.

[00:18:35] Speaker 03:
UEI disagreed with that assertion and said that Chardon's EDID does not indicate whether the SYNC will be unresponsive

[00:18:46] Speaker 03:
to the command to communication.

[00:18:48] Speaker 03:
And we are just the board deal with that.

[00:18:57] Speaker 03:
Your Honor, at the bottom of Appendix 37, the Board does quote our expert testimony once again and says that the EDID inform allows the source to determine if shard and sink will or will not be responsive to command controls.

[00:19:17] Speaker 03:
And the board made a similar finding on Appendix 38, footnote 6.

[00:19:22] Speaker 03:
It says that the device vendor ID, which is also an example of the claim to message having data, allows the system to ascertain whether the same device is responsive or is unresponsive.

[00:19:34] Speaker 00:
Can I ask you, you keep on talking about these findings they made.

[00:19:38] Speaker 00:
We read a lot of PTAC decisions, and they set forth, this is what the petitioner says on this, this is what the patent owner says.

[00:19:45] Speaker 00:
And you're pointing to paragraphs

[00:19:47] Speaker 00:
in the opinion where they are simply citing what the petitioner argued and what the patent owner argued.

[00:19:56] Speaker 00:
And so what gets us to the board embracing the petitioner's view as being the result?

[00:20:03] Speaker 00:
I think maybe your answer is on page 48, because that's all I could find, where the board says, petitioner, for the reasons explained above, petitioner sufficiently shows that each limitation is met.

[00:20:16] Speaker 00:
And where do you get these avoid findings?

[00:20:21] Speaker 00:
Yes, Your Honor.

[00:20:21] Speaker 00:
Not your client's view of the prior article.

[00:20:25] Speaker 03:
Understood.

[00:20:25] Speaker 03:
Yes.

[00:20:26] Speaker 03:
Page 48 is one place, Your Honor, with regard to the message having data limitation.

[00:20:32] Speaker 03:
After quoting our argument on Appendix 36, the board ended Appendix 37

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The board then goes on to reject UNI's argument that's at the top of appendix page 38.

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And then ultimately the board agrees with us at appendix 39 that we made a sufficient showing with respect to providing a message having data limitation.

[00:20:59] Speaker 03:
The point being that on route to that conclusion, the board cited our argument and evidence at every turn, and therefore the board's route or path to that conclusion is reasonably discernible, which is what we have to show.

[00:21:13] Speaker 03:
This board has embraced similar analysis and reasoning in the Intel case, cited in our briefing, as well as in the Novartis case, Your Honor, and we would submit that that is sufficient to affirm.

[00:21:27] Speaker 03:
If there are no further questions, I will see the remainder of my time.

[00:21:31] Speaker 03:
Thank you.

[00:21:32] Speaker 03:
Thank you.

[00:21:39] Speaker 02:
Thank you, Your Honors.

[00:21:40] Speaker 02:
In determining whether there's substantial evidence, you have to look at the decision.

[00:21:45] Speaker 02:
You have to look at what was presented to the board and what they relied on.

[00:21:51] Speaker 02:
And the board never made any finding, explicit or implicit,

[00:21:57] Speaker 02:
that in any of the scenarios of Chardon, the message having data is sent from the media source device to the controlling device.

[00:22:05] Speaker 02:
And my colleague cited pages 36 to 38 of the board's decision, and it doesn't say it in there.

[00:22:14] Speaker 02:
Wouldn't it have been the easiest thing in the world for the board to say, there is no express disclosure in Chardon of this claim limitation.

[00:22:27] Speaker 02:
We find it obvious that Chardon at least suggests that for the following reasons.

[00:22:33] Speaker 02:
That's an analysis.

[00:22:34] Speaker 02:
And they didn't do that.

[00:22:36] Speaker 02:
What they did was, on page 37, say both Petitioner and Dr. Russ characterized these three scenarios as examples where Chardon's media source device performs command communication with Chardon's media sync device.

[00:22:49] Speaker 02:
The device that matters is the media source device sending

[00:22:57] Speaker 02:
message, having data to the controlling device.

[00:23:00] Speaker 02:
And that is never mentioned.

[00:23:03] Speaker 02:
That is never mentioned at all.

[00:23:05] Speaker 02:
And let's look at the other claim limitations, the unresponsive message limitation pages 43 and 44 of the appendix and the bird's decision.

[00:23:18] Speaker 02:
That's it.

[00:23:19] Speaker 02:
That's all.

[00:23:21] Speaker 02:
And they cite two things.

[00:23:24] Speaker 02:
One scenario was argued by Roku in the petition.

[00:23:27] Speaker 02:
That's scenario one beginning at the bottom of page 43.

[00:23:30] Speaker 02:
And the second scenario was argued by Roku in its reply in the patent office.

[00:23:34] Speaker 02:
That's scenario two.

[00:23:36] Speaker 02:
That's at the bottom of page 44.

[00:23:38] Speaker 02:
They both rely on the absence of a response.

[00:23:43] Speaker 02:
And if you look at the words of the claim, which the board quotes at the top of page 43,

[00:23:51] Speaker 02:
It says when the data in the message indicates that the media sync device is unresponsive to the command communication.

[00:24:00] Speaker 02:
That plain language doesn't say when there's silence.

[00:24:06] Speaker 02:
It says the data in the message has to give the indication.

[00:24:10] Speaker 02:
And neither of these two scenarios demonstrates that in Chardon.

[00:24:14] Speaker 02:
And there's nothing in Nishra that doesn't because even Roku concedes that

[00:24:20] Speaker 02:
The board and Roku are not relying on Nishra to change anything about chart.

[00:24:26] Speaker 02:
And if there were no further questions, thank you, Your Honor.

[00:24:29] Speaker 00:
We thank both sides and the cases submitted.