[00:00:00] Speaker 00:
Our first case is Valve Corporation v. Ionberg invention, 2023-1725.

[00:00:05] Speaker 00:
Mr. Legion?

[00:00:07] Speaker 00:
Is it Legion?

[00:00:10] Speaker 00:
Yes.

[00:00:12] Speaker 04:
Thank you.

[00:00:13] Speaker 04:
May it please the court?

[00:00:15] Speaker 04:
My client, Valve, appeals from the board's remand decision, concluding that Valve did not prove dependent claims 18, 19, 21, 26, and 29 of the 688 patent unpatentable.

[00:00:27] Speaker 04:
Right.

[00:00:27] Speaker 01:
So why is the board focusing on claim one?

[00:00:30] Speaker 01:
What's going on?

[00:00:32] Speaker 04:
It's been held unpatent.

[00:00:35] Speaker 04:
I agree, Your Honor.

[00:00:37] Speaker 04:
The board based its decision completely on its view of Valve showing related to claim one.

[00:00:42] Speaker 04:
and did not even discuss the limitations of the five dependent claims at issue.

[00:00:48] Speaker 04:
So I'd like to start with Valve's answers to the Court's questions in the November 26th order.

[00:00:56] Speaker 04:
For the first question about collateral estoppel with respect to claim one, Valve agrees that that should apply.

[00:01:01] Speaker 04:
We've reviewed a number of the Court's

[00:01:06] Speaker 04:
collateral estoppel opinions, Max Linnear and Ohio Willow would and others, and it seems to us like a pretty clear situation where collateral estoppel would apply with respect to claim one.

[00:01:17] Speaker 03:
And what does that mean?

[00:01:19] Speaker 03:
On the ground as a practical level, then what do we do with this case?

[00:01:24] Speaker 04:
Well, I think one of the things that

[00:01:26] Speaker 04:
that we would urge you to do with this case is to remand for the board to reconsider its obvious analysis by accepting the fact that claim one is unpatentable and it is part of the prior art and view the dependent claims in question and evaluate them whether they are obvious variants of claim one or the prior art.

[00:01:51] Speaker 03:
And did the petition include, because it's hard when this case is morphed for someone to contemplate initially how it's going to go down, did the petition include separate arguments just on the dependent claims and the obviousness of the dependent claims or all the arguments in the petition very much tied to claim one, the independent claim?

[00:02:14] Speaker 04:
There are separate arguments for dependent claims.

[00:02:18] Speaker 03:
And would that implicate, I mean, the board here

[00:02:22] Speaker 03:
its analysis rested heavily on the absence of motivation to combine the two references.

[00:02:28] Speaker 03:
Would that still hold on analysis of just solely the dependent claims?

[00:02:36] Speaker 03:
Is that going to be the live issue if you go back on just the dependent claims?

[00:02:41] Speaker 04:
We hope that won't continue to be an issue.

[00:02:43] Speaker 04:
We think that that issue is decided incorrectly by the board with respect to claim one this time around as well.

[00:02:51] Speaker 04:
But no, we think that the analysis should be, based on the cases that I mentioned, the analysis should be simply one of three analysis, KSR analysis of... Okay, let me just ask quickly.

[00:03:05] Speaker 03:
I don't want to take up too much time, but just as a practical matter.

[00:03:10] Speaker 03:
Do we have to, or would it be helpful or prerogative or important for us to review what the board did with respect to obviousness in this case?

[00:03:22] Speaker 03:
Would that be relevant, controlling or whatever, or what might happen if it's just the dependent claims going back?

[00:03:29] Speaker 04:
Right, yes.

[00:03:30] Speaker 04:
We believe it would be very helpful because we're concerned that if it's a

[00:03:34] Speaker 04:
a pure remand on collateral estoppel.

[00:03:37] Speaker 04:
We might be back again talking about motivation to combine and expert testimony and how much is needed and that sort of thing for this.

[00:03:43] Speaker 03:
The same reference as Byrnes and LaSalle essentially?

[00:03:45] Speaker 04:
Right.

[00:03:45] Speaker 04:
Byrnes is the reference we rely on for all five dependent claims.

[00:03:52] Speaker 04:
So yes, we would urge the court to reverse as to those findings regarding motivation to combine and the need for

[00:04:02] Speaker 04:
you know, additional expert testimony in this technology area.

[00:04:07] Speaker 03:
Okay, one more quick question.

[00:04:08] Speaker 03:
Assuming we were to affirm on what the board did here, or we would agree with that, would that essentially dispose of the further remand proceeding we're talking about having if we conclude there was a stop-all here?

[00:04:26] Speaker 03:
Or are there more arguments and more issues?

[00:04:30] Speaker 04:
I want to make sure I understand your question.

[00:04:31] Speaker 03:
You're saying if you... If we agree that it was not obvious, there was no motivation to combine those two references.

[00:04:40] Speaker 03:
I see.

[00:04:40] Speaker 03:
Even though that analysis was done with respect to Claim 1, are there different arguments or a different analysis that would iner to a discussion of the dependent claims?

[00:04:50] Speaker 04:
Yes, Your Honor.

[00:04:51] Speaker 04:
Thank you for clarifying.

[00:04:54] Speaker 04:
Under the framework of Max Linear, Ohio Willow Wood, and those types of cases, my understanding, even if you agree with the board on motivation to combine, the board would now have to look at each of the individual limitations of the dependent claims to see if they are separately patentable, patentably distinct from claim one based on all the prior art and based on the knowledge that claim one is prior art.

[00:05:23] Speaker 04:
So moving on to the second question about the mandate, Valve agrees that the board did not follow the letter in the spirit of the mandate.

[00:05:34] Speaker 04:
The board addressed patentability of claim one, which was beyond the scope of the mandate, and the board failed to address Valve's argument specific to the five dependent claims at issue.

[00:05:44] Speaker 04:
You know, there's cases on point, and 35 USC section 144 seems to be on point as well.

[00:05:53] Speaker 04:
And there were multiple places in Valve's appellate brief where we mentioned that claim one was unpatentable, had been found unpatentable by this court, and that the dependent claim limitations were not being addressed.

[00:06:08] Speaker 04:
Also, when this case was first remanded to the board several years ago, within that proceeding,

[00:06:18] Speaker 04:
response in its opening brief called out these issues as well.

[00:06:22] Speaker 04:
So this has been percolating for a while.

[00:06:26] Speaker 04:
And unless you have any other follow-up questions about questions one and two, I'll move on to some fairly quick points about the merits of the board's decision in this case.

[00:06:40] Speaker 04:
So as mentioned briefly before, we would ask this court to reverse the findings

[00:06:46] Speaker 04:
Only as to the limitations of claim one, the motivation to combine and the expert issues.

[00:06:56] Speaker 04:
Kind of in a nutshell, the Ironberg has already agreed that this is simple and straightforward technology.

[00:07:03] Speaker 04:
That's an appendix 453.

[00:07:05] Speaker 04:
We don't think the board gave the proper weight to the simplicity of the technology or the teachings of the prior art, including what's fairly suggested by the LaSalle design patent.

[00:07:15] Speaker 04:
we don't think Bowd actually even needed any expert testimony based on cases like Ball-Erasol and Beldon v. Burke.

[00:07:25] Speaker 03:
But it had to do something.

[00:07:26] Speaker 03:
So what do you think it had to do and why was the board wrong by asking for too much, even aside whether we have experts saying it or we have attorney argument?

[00:07:35] Speaker 04:
Right.

[00:07:36] Speaker 04:
Well, I mean, we do have some expert testimony in, but we question whether we even need that, because you have the two references, and it's very simple technology.

[00:07:46] Speaker 04:
It's basically changing on something that you're going to put your finger on, a game controller on the back of a game controller.

[00:07:54] Speaker 04:
Back controls have been known for a very long time.

[00:07:56] Speaker 04:
The prior art was flat.

[00:07:58] Speaker 04:
LaSalle had a curved surface.

[00:08:01] Speaker 04:
Anyone can look down at their finger and see that your finger's curved and not flat.

[00:08:05] Speaker 04:
And so it's pretty intuitive that you could use a curved surface instead of a flat surface on the back.

[00:08:11] Speaker 03:
But you didn't say that in your petition, did you?

[00:08:14] Speaker 04:
Not in those exact same words, no.

[00:08:16] Speaker 04:
But we pointed out the simplicity of the technology.

[00:08:18] Speaker 04:
And we have an expert who's a highly qualified

[00:08:25] Speaker 04:
also describing what it was that one skilled in the art would see?

[00:08:29] Speaker 04:
This relates particularly to Clune 29, right?

[00:08:38] Speaker 04:
Well, all five of the claims.

[00:08:40] Speaker 04:
Clune 29 is the inherently resilient and flexible limitation, I believe.

[00:08:47] Speaker 01:
That was the only one where it seemed to me that there was a conflict in the expert testimony of the dependent client.

[00:08:56] Speaker 04:
I'm not sure what conflict you're referring to, Your Honor.

[00:08:58] Speaker 04:
I do know that that particular claim limitation does appear in the prior art as well.

[00:09:08] Speaker 03:
There are two ways for you to get to where you want to go here.

[00:09:13] Speaker 03:
One is the petition was sufficient in and of itself.

[00:09:16] Speaker 03:
And the other was that even if it weren't, based on the arguments that were raised by the patent owner, your reply should have been considered.

[00:09:25] Speaker 03:
And your reply, in combination with the petition, would have been sufficient.

[00:09:29] Speaker 03:
So you want to talk about the circumstances in which you're able to rely on stuff in the reply, even if it weren't in the petition.

[00:09:37] Speaker 04:
Right, we've raised that in the alternative.

[00:09:40] Speaker 04:
And it's because some, you know, Ball-Erasol, for example, said that the motivation combined was self-evident in that case.

[00:09:46] Speaker 04:
And we think it's self-evident in this case as well.

[00:09:48] Speaker 04:
And coincidentally, the board made the same mistake here that the district court made in Ball-Erasol by taking the language from KSR that says that the analysis shall be explicit from the motivation combined.

[00:10:01] Speaker 04:
And Paul Oversall explained how that was taken the wrong way.

[00:10:05] Speaker 04:
It's referring to the court's analysis, not to the motivation to combine.

[00:10:08] Speaker 04:
So we think there were some mistakes interpreting KSR in the court's decision as well.

[00:10:14] Speaker 04:
And then my final point would be that the Intel vPAC and Intel vQualcomm cases talk about very similar situation, use of known technique to improve one device,

[00:10:29] Speaker 04:
A person who already is still in the art would recognize that it would also improve another device, and also that it may not be a better solution.

[00:10:37] Speaker 04:
It just needs to be a suitable option, and that's what we think we have here.

[00:10:43] Speaker 04:
So, unless there are further questions, I reserve my time for rebuttal.

[00:10:46] Speaker 00:
We will serve your time, Mr. Tabkin.

[00:11:02] Speaker 02:
Good morning, Your Honors.

[00:11:03] Speaker 02:
May it please the Court, Greg Tampkin, on behalf of Ionberg Inventions.

[00:11:08] Speaker 02:
I'm just going to start right with where

[00:11:10] Speaker 02:
the court started with Mr. Lujan, which is this collateral estoppel issue and the practical implications of collateral estoppel.

[00:11:20] Speaker 02:
Certainly, the board recognized claim one was invalid, but collateral estoppel doesn't mean that the board... But it talked about claim one being at issue on the remand.

[00:11:32] Speaker 01:
That's not correct, right?

[00:11:33] Speaker 02:
Claim one was at issue only in terms of the elements of claim one

[00:11:38] Speaker 02:
make up part of the elements of claim 18, 19, 21, et cetera.

[00:11:42] Speaker 02:
And so when you're looking at the claim in general, you have to make sure, based on the argument that the petitioner set forth, that all of the elements are met.

[00:11:55] Speaker 02:
And in this case... Wait a moment.

[00:11:57] Speaker 01:
I don't understand what you're saying.

[00:11:58] Speaker 01:
Do you agree that the inability of claim one under cases like Max Linear is binding on the board?

[00:12:06] Speaker 01:
We told them it was invalid and to proceed on that basis, right?

[00:12:10] Speaker 01:
Yes, that is correct.

[00:12:11] Speaker 01:
And they didn't do that, right?

[00:12:12] Speaker 02:
I disagree.

[00:12:14] Speaker 02:
I think they did acknowledge that claim one was invalid, then they looked at separately claim 18, claim 19, claim 21.

[00:12:23] Speaker 02:
All of those claims depend from claim one.

[00:12:27] Speaker 02:
And as a result, there has to be a motivation to combine those references

[00:12:32] Speaker 01:
Do you not re-litigate the validity of claim one in connection with the dependent claims?

[00:12:38] Speaker 02:
It's not re-litigating the validity of claim one at all.

[00:12:42] Speaker 02:
It's re-litigating the validity of claim 18, 19, et cetera.

[00:12:46] Speaker 02:
And so the question is, in light of those elements, are those elements shown?

[00:12:54] Speaker 02:
Because this isn't a situation where we can look at the record as a whole and make various determinations.

[00:13:01] Speaker 02:
What were the arguments that were sent back on remand?

[00:13:06] Speaker 02:
And the arguments that the court was to consider was the Burns and LaSalle combination.

[00:13:11] Speaker 01:
Actually, only the new

[00:13:13] Speaker 01:
limitations of the dependent claims are at issue here, right?

[00:13:18] Speaker 02:
Certainly only the new limitations of the dependent claims are at issue.

[00:13:22] Speaker 02:
But there still needs to be the overall existence of the elements and the motivation to combine the references to create the claims.

[00:13:32] Speaker 02:
And so you have to look at the underlying claim one

[00:13:38] Speaker 02:
to understand the motivation to combine.

[00:13:41] Speaker 02:
As Joe Prost asked, what's the practical implication of this?

[00:13:46] Speaker 02:
If it goes back down and you say that claim one is invalid and you should not consider claim one, you still have to look at motivation to combine.

[00:13:55] Speaker 02:
The claim one was invalidated based on an anticipatory reference, the U reference or UE reference.

[00:14:03] Speaker 02:
Now, and there was no argument.

[00:14:05] Speaker 01:
The only prior art relevant to the dependent claims is Burns, right?

[00:14:13] Speaker 01:
No, it's Burns and LaSalle.

[00:14:15] Speaker 01:
Wow, I don't, in what respect is LaSalle relevant to the, it's an alternative

[00:14:21] Speaker 01:
ground for one of the dependent claims, but you could decide the case basically on Burns suggesting that dependent claim limitation is correct?

[00:14:37] Speaker 02:
I don't think so.

[00:14:39] Speaker 02:
Not at least on one of them that is correct, but you have to look at the motivation to combine and what the argument is, especially on the claim 29, the inherently resilient

[00:14:52] Speaker 02:
and flexible problem.

[00:14:54] Speaker 02:
But the question then becomes, has there been a showing in order to bring in LaSalle and Burns?

[00:14:59] Speaker 01:
Well, first of all, if they're not relying, as you agree, for at least four of the claims, if they're not relying on LaSalle, why is there a motivation to combine?

[00:15:08] Speaker 02:
Because they are relying on LaSalle.

[00:15:11] Speaker 02:
That is what the petitioner said.

[00:15:13] Speaker 02:
The petitioner makes its argument, and we have to... Only with respect to the limitations of claim one.

[00:15:20] Speaker 02:
But you have to look at the overall issue with respect to motivation to combine.

[00:15:25] Speaker 02:
Why are we putting these together?

[00:15:29] Speaker 02:
We have to take the petitioner at what the petitioner said.

[00:15:32] Speaker 02:
And that's important.

[00:15:33] Speaker 02:
That's what the Supreme Court said in the SAS case.

[00:15:37] Speaker 02:
The court said the director is not at liberty to come up with its own rationale.

[00:15:44] Speaker 02:
You have to use the arguments that were made below.

[00:15:47] Speaker 02:
The arguments that were made below is not you and LaSalle or you and Burns.

[00:15:54] Speaker 02:
The arguments below and the arguments the petitioner made were Burns and LaSalle.

[00:15:59] Speaker 02:
So the question is, is there a motivation to combine?

[00:16:02] Speaker 01:
Not with respect to the dependent, at least for the dependent claims.

[00:16:07] Speaker 01:
There's only an argument about burns.

[00:16:10] Speaker 02:
But you don't get to the dependent claims without a motivation to combine in the first place.

[00:16:15] Speaker 02:
I think you have to always answer the motivation to combine question.

[00:16:20] Speaker 03:
But the motivation to combine question, the one we're talking about here is only with respect to claim one.

[00:16:27] Speaker 03:
That was the board's analysis, the motivation to combine only with respect to claim one.

[00:16:32] Speaker 03:
I'm really asking if I'm right or wrong, because that's the way I understood it.

[00:16:37] Speaker 02:
I think the board looked at the motivation to combine

[00:16:41] Speaker 02:
in the context of claim one because you need all of the elements.

[00:16:45] Speaker 02:
The court did not say, I only want a motivation to combine on this one element.

[00:16:51] Speaker 00:
The court looked at- You're saying that every limitation of claim one is also a limitation of the dependent claims.

[00:16:58] Speaker 02:
That is what I'm saying.

[00:17:00] Speaker 02:
And so therefore, you need to look at the motivation to combine

[00:17:04] Speaker 02:
the two references to form, to make all of the elements.

[00:17:09] Speaker 02:
You look at all of the elements, Claim 18, for example, and Claim 18 does require that these, that you have a reference, the two references show and meet all of those limitations, and so you have to.

[00:17:27] Speaker 01:
Let's ignore and flat all this stuff.

[00:17:29] Speaker 01:
Let's ignore the fact that the independent claim part

[00:17:33] Speaker 01:
of the dependent claims has been held unpatentable.

[00:17:37] Speaker 01:
And the board has to start from that premise in analyzing the dependent claims.

[00:17:43] Speaker 01:
And it didn't do that.

[00:17:45] Speaker 01:
It sought to basically ignore our decision and say that we're going to relitigate the question of the independent claim one.

[00:17:57] Speaker 02:
I think what the board did is it litigated the question of motivation to combine the two references.

[00:18:03] Speaker 02:
That is a necessary element based on KSR, based on all this course process, is there has to be the motivation to combine, and you have to look at all the limitations.

[00:18:14] Speaker 02:
You can't just choose one limitation as a motivation to combine these.

[00:18:18] Speaker 02:
Two, you have to make sure that all of these references together contain all of the elements.

[00:18:25] Speaker 02:
And that's what the court did.

[00:18:27] Speaker 02:
Here there was no motivation to combine.

[00:18:29] Speaker 02:
Well, here there was no showing of a motivation to combine, and that was the problem.

[00:18:34] Speaker 02:
I agree, Your Honor, that the issue that was easy to address is there's no motivation to combine because there's no showing as to

[00:18:45] Speaker 02:
an element or two elements of claim one.

[00:18:49] Speaker 02:
The two elements of claim one are really a depressible control on the back and that that depressible elongate control on the back is non-parallel to effectively the back.

[00:19:05] Speaker 03:
Well, having recognized that this is pretty person skilled, the skill here is quite low relative to other cases we have, what kind of showing was required?

[00:19:16] Speaker 02:
some showing, that's the point.

[00:19:18] Speaker 03:
Can you be more specific?

[00:19:21] Speaker 02:
Yes.

[00:19:21] Speaker 02:
A showing as to why one would combine these two.

[00:19:27] Speaker 02:
An actual statement as to, for example, in this case the expert said what the advantage would be.

[00:19:35] Speaker 02:
Why there is an advantage.

[00:19:36] Speaker 02:
In fact, the expert, in this case Dr. Rumpel, I believe, indicated that the combination of these two, or excuse me, Lacelle... Could result in an advantage.

[00:19:45] Speaker 02:
Why was that deficient?

[00:19:47] Speaker 02:
because he doesn't tell us what the advantage is.

[00:19:50] Speaker 03:
Just saying it's an advantage is effectively... You can use more fingers and it's more nimble than using these other fingers.

[00:19:58] Speaker 03:
We have a number of cases that suggest that in simple technology, we don't even need experts here.

[00:20:07] Speaker 03:
So you needed an expert to say what?

[00:20:11] Speaker 02:
You needed an expert to say what the problem was that was being addressed.

[00:20:17] Speaker 02:
What known technology exists in the art that is being addressed by LaSalle that you would combine them.

[00:20:24] Speaker 02:
The question is why would you combine these two?

[00:20:27] Speaker 02:
Why would you combine whatever is shown in this ornamental design

[00:20:34] Speaker 02:
Why would you combine that with the flat paddles that are shown in the Burns reference?

[00:20:46] Speaker 02:
What is the issue?

[00:20:47] Speaker 02:
How would it work?

[00:20:49] Speaker 02:
What is LaSalle actually teaching?

[00:20:51] Speaker 02:
And that's real important here, because LaSalle was a design patent.

[00:20:55] Speaker 02:
Not saying that design patents can't suggest functional features.

[00:20:59] Speaker 02:
They can.

[00:21:00] Speaker 02:
But in this case, there's testimony as to what those functional features seem to be.

[00:21:07] Speaker 02:
For example, they could be a rubber grip.

[00:21:10] Speaker 02:
They could be a battery control.

[00:21:12] Speaker 02:
And there was actual testimony on that.

[00:21:14] Speaker 02:
And the board weighed that and looked and said,

[00:21:16] Speaker 02:
What testimony do we have?

[00:21:18] Speaker 02:
What actual rationale do we have for combining these?

[00:21:22] Speaker 03:
And as your view, I think as I understood the board, even with the second declaration that came in and we respond to the patent, that was also insufficient because it didn't have enough facts

[00:21:37] Speaker 02:
and now I guess there was no it didn't have any analysis I think that second petition that second declaration is fairly telling right on the one hand the original declaration says there's an advantage well then recognizing that whatever the advantage wasn't described

[00:21:55] Speaker 02:
There's a description that the advantage is better coupling.

[00:21:59] Speaker 02:
There's no argument in the petition about better coupling.

[00:22:02] Speaker 02:
That better coupling is something that is brand new.

[00:22:05] Speaker 01:
Why aren't you allowed to elaborate the point that you made before?

[00:22:09] Speaker 01:
I thought our case has said you could do that.

[00:22:12] Speaker 02:
The cases do say that if you're responding to an argument or you are providing an addition, a new algorithm that was already, when you're discussing an algorithm, absolutely you can add.

[00:22:25] Speaker 02:
Why isn't this within the scope of those cases?

[00:22:28] Speaker 02:
This is not in the scope of those other cases because in this particular case, there was nothing that was being elaborated on.

[00:22:37] Speaker 02:
There's a whole in the original.

[00:22:39] Speaker 02:
The whole, unlike when you're adding an algorithm or you're describing a new algorithm or another version of the algorithm, here there's a whole.

[00:22:47] Speaker 02:
advantage.

[00:22:49] Speaker 02:
There's an advantageous new job.

[00:22:52] Speaker 01:
So he said it was advantageous in connection with the petition and then in the reply he explained what the advantage was.

[00:22:59] Speaker 02:
Because the whole purpose of the petition and requiring the arguments to be in the petition is to put the parties on notice and to require that all the evidence be there.

[00:23:11] Speaker 02:
Here, this is an admission that the evidence wasn't

[00:23:14] Speaker 02:
there, Your Honor.

[00:23:16] Speaker 02:
Whatever that advantage was, was entirely left out, and so there's a statement with no reasoning, no rationale, no backup, that it provides better coupling.

[00:23:30] Speaker 02:
Now, on the one hand, you could envision a situation where providing more information, or that more information, if it was an original petition,

[00:23:40] Speaker 02:
may be enough.

[00:23:41] Speaker 02:
In this case, it wasn't.

[00:23:43] Speaker 02:
The reason it wasn't was because, again, there's no discussion of what problem is being solved, what known issue in the art is being solved with this better coupling rationale.

[00:23:56] Speaker 02:
Again, Judge Pross asked, what would need to have been said?

[00:24:01] Speaker 02:
And what need to have been said is an explanation of what

[00:24:06] Speaker 02:
why you would be looking to combine them, what the problem really is, and that's what the case is.

[00:24:13] Speaker 02:
Well, that's explained in the reply, right?

[00:24:15] Speaker 01:
It's not.

[00:24:16] Speaker 01:
He says your fingers fit better into things that are counter to the fingers.

[00:24:21] Speaker 02:
It doesn't say that.

[00:24:22] Speaker 02:
It says it would provide, it could provide better coupling.

[00:24:26] Speaker 02:
Theoretically.

[00:24:27] Speaker 02:
He says you would combine it because it could provide better coupling.

[00:24:31] Speaker 02:
You would combine because it possibly would provide better coupling.

[00:24:36] Speaker 02:
He didn't say could.

[00:24:37] Speaker 02:
He said could.

[00:24:38] Speaker 02:
Absolutely, he said could.

[00:24:40] Speaker 02:
But could is not a, going back to the original questions where I should go, which is

[00:24:47] Speaker 02:
Is that a rationale?

[00:24:48] Speaker 02:
Is that an explanation?

[00:24:50] Speaker 02:
It's not an explanation if you don't say why you are doing this.

[00:24:54] Speaker 02:
What is the problem?

[00:24:55] Speaker 02:
The problem is the pattern.

[00:24:56] Speaker 01:
He says that because the fingers would fit better and the things would occur.

[00:25:01] Speaker 02:
That is his statement of what it would do, but the pattern is related to providing a

[00:25:11] Speaker 02:
a means so one would understand, because on the back of a control, that the fingers know where the second paddle would be.

[00:25:18] Speaker 01:
What does that have to do with it?

[00:25:19] Speaker 01:
We've said repeatedly that you're going to have a motivation that's not the same as the inventor's motivation.

[00:25:25] Speaker 02:
Then what was the motivation?

[00:25:27] Speaker 02:
That's what he doesn't say.

[00:25:28] Speaker 02:
He doesn't solve, answer the question.

[00:25:30] Speaker 02:
I keep telling you what it is and you keep ignoring it.

[00:25:35] Speaker 03:
I'm sorry, the time is almost running out, so I'll just say, they'll ever solve.

[00:25:40] Speaker 03:
I recall there the petitioner said it would have been self-evident or it was self-evident.

[00:25:47] Speaker 03:
If they had said that here, would that have been sufficient?

[00:25:51] Speaker 02:
I don't think so because I don't think it was self-evident in light of the testimony.

[00:25:57] Speaker 02:
Here, the question is substantial.

[00:25:58] Speaker 03:
Well, who gets to decide whether it was or wasn't self-evident?

[00:26:02] Speaker 02:
I think the board gets to decide.

[00:26:05] Speaker 02:
And the board, in this case, had testimony that the LaSalle reference wasn't showing any buttons, any depressible controls at all.

[00:26:15] Speaker 02:
And so in light of that, you need actual testimony as to how this would be combined.

[00:26:21] Speaker 02:
So just saying it's self-evident or saying that there is an advantage

[00:26:28] Speaker 02:
is simply not enough to satisfy the burden unless this court is going to reweigh the evidence.

[00:26:34] Speaker 02:
And it's improper for this court to reweigh the evidence on something like a motivation to combine, which is a factual question.

[00:26:40] Speaker 00:
Thank you, counsel.

[00:26:42] Speaker 00:
Before Mr. Lujan speaks, would the person standing in the back of the courtroom please take a seat?

[00:26:51] Speaker 00:
Mr. Lujan.

[00:26:56] Speaker 04:
One of the points I'd like to make is the discussion about could in the context of it in the full sentence.

[00:27:02] Speaker 04:
That was also something that the board did was say that Valve's expert kept saying things could be done, it was feasible, but I think that was also taken out of context a little bit.

[00:27:14] Speaker 04:
The better coupling advantage that was in the

[00:27:17] Speaker 04:
The reply declaration, in my mind, that's the same thing as the shape of the finger.

[00:27:21] Speaker 04:
It's the same argument Ironberg made during prosecution.

[00:27:25] Speaker 04:
I mean, they know what the motivation is.

[00:27:28] Speaker 04:
One pretty important point, I think, is the discussion a minute ago about whether there's a need to continue to combine Burns and LaSalle.

[00:27:39] Speaker 04:
And the difference is very small between Burns and claim one in the first place.

[00:27:45] Speaker 04:
But at this point, with collateral estoppel, the board can't hang its head on the difference between burns and claim one, because claim one is unpatentable.

[00:27:56] Speaker 04:
And we know that that difference was in the prior art anyway, because the UE reference anticipated it.

[00:28:01] Speaker 03:
So we're talking about a known feature that one element... Dependent claims also encompass the independent claims, right?

[00:28:11] Speaker 03:
It's the independent claims plus something else.

[00:28:13] Speaker 03:
So you've got to analyze claim one if you're going to analyze the independent claims, right?

[00:28:19] Speaker 04:
Well, I think in general you do.

[00:28:20] Speaker 04:
But I believe it's a different framework when collateral estoppel has been applied and is remanded to the board.

[00:28:28] Speaker 04:
From my understanding of Max Linear and Ohio Willowwood, that changes the analysis.

[00:28:33] Speaker 04:
And you don't go back to square one.

[00:28:35] Speaker 04:
You look at the difference between the dependent claim

[00:28:40] Speaker 04:
in question and the prior art and determine whether that's an obvious variant or not.

[00:28:47] Speaker 01:
But to the extent that the same limitations appear in the dependent claims, the result has to be the same as a matter of collateral estoppel.

[00:28:54] Speaker 04:
Right.

[00:28:55] Speaker 04:
Because collateral estoppel, the claims don't have to be identical.

[00:28:58] Speaker 04:
If there's minor wording differences or immaterial differences in scope, then those would also be collateral estoppel.

[00:29:06] Speaker 03:
I guess you raise kind of three legal issues with respect to obviousness in KSR.

[00:29:12] Speaker 03:
You say the problem is they kind of mistreated this as a design patent and didn't include functionality.

[00:29:18] Speaker 03:
You say they said code wasn't enough, you needed to say would.

[00:29:23] Speaker 03:
And there's a third one which I can't think of now.

[00:29:28] Speaker 03:
The board didn't rest on the design patent.

[00:29:30] Speaker 03:
They were willing to consider the design patent for its teaching right.

[00:29:33] Speaker 03:
You're not claiming there was legal error in what the board did here, or are you?

[00:29:39] Speaker 04:
Well, we think the error was whether it could be combined or not, whether there was motivation to combine.

[00:29:47] Speaker 04:
But I believe you're correct that the board agreed with us that the design patent could suggest the feature.

[00:29:53] Speaker 04:
But Ironberg was arguing that the design patent didn't disclose the feature.

[00:29:58] Speaker 03:
And even though you said, I thought of a third one, which is under KSI, it doesn't have to be better, it just has to be suitable.

[00:30:05] Speaker 03:
Right.

[00:30:05] Speaker 03:
But you were the ones that introduced the advantage language.

[00:30:09] Speaker 03:
That wasn't the board making it up.

[00:30:12] Speaker 03:
That was you saying, this is

[00:30:15] Speaker 03:
This is what we're proving here.

[00:30:17] Speaker 03:
So why isn't the board allowed to use the advantage, since you're the one that's claiming the advantage?

[00:30:25] Speaker 04:
Well, I think it's similar to the advantage is similar to the word improvement in KSR.

[00:30:31] Speaker 04:
And as you mentioned, that's been construed to mean just a suitable option.

[00:30:36] Speaker 04:
It doesn't have to be a better option.

[00:30:37] Speaker 04:
It's probably a little subjective, all those different terms.

[00:30:42] Speaker 04:
But here, this is, you know, non-parallel is such a broad limitation.

[00:30:50] Speaker 04:
It's, you know, to be parallel is very specific.

[00:30:52] Speaker 04:
And so this is like any other configuration of the back paddle is covered by the claim.

[00:30:57] Speaker 04:
So it's, it wouldn't be that hard from our standpoint to use routine skill to bridge the distance between claim one and each of the dependent claims.

[00:31:08] Speaker 04:
or between Burns and LaSalle.

[00:31:10] Speaker 04:
But again, that's a moot point now that claim one is completely unpatentable.

[00:31:15] Speaker 04:
It's been affirmed.

[00:31:21] Speaker 00:
Anything further, counsel?

[00:31:23] Speaker 04:
No.

[00:31:24] Speaker 00:
Thank you, Your Honor.

[00:31:25] Speaker 00:
Thank you very much.

[00:31:25] Speaker 00:
The case is submitted.