[00:00:00] Speaker 06:
Good morning.

[00:00:00] Speaker 06:
Our first case for argument today is 23-2236, Aegis Software v. Stewart.

[00:00:10] Speaker 06:
Counsel, how do I say your name?

[00:00:12] Speaker 02:
Enrique Iteraldi.

[00:00:13] Speaker 02:
Say it again.

[00:00:14] Speaker 02:
Enrique Iteraldi.

[00:00:15] Speaker 02:
Iteraldi?

[00:00:16] Speaker 02:
Yes.

[00:00:17] Speaker 06:
OK, Mr. Iteraldi, please proceed.

[00:00:20] Speaker 03:
Your Honor, may it please the court?

[00:00:27] Speaker 03:
Aegis has submitted a number of arguments regarding a lack of substantial evidence in this appeal.

[00:00:37] Speaker 03:
First, I will take up arguments regarding determining coordinate limitations.

[00:00:43] Speaker 03:
The board's decision refers to the determined coordinates limitations as limitations 1j and 1l.

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Petitioner and the board relied on Makoto alone for these limitations.

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The board's analysis for 1J is at appendix 31 through 32, and for 1L at appendix 33 through 34.

[00:01:06] Speaker 01:
Well, counsel, Makoto discloses the mobile device that meets all the limitations of the claim, except it doesn't recite a vehicle.

[00:01:18] Speaker 01:
And Kenishi recites a vehicle with a similar kind of device.

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So why isn't it very simple to combine the two with an expectation of success?

[00:01:32] Speaker 03:
Your Honor, thank you.

[00:01:35] Speaker 03:
First, respectfully, we would disagree that Makoto discloses all limitations for claim number one

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Let's take first the 838 patent.

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In fact, with respect to the 838 patent, the determining coordinates limitation is not expressly disclosed in Makoto.

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petitioner and the board attempt to find that limitation through inerrancy, through arguing that it's necessarily included.

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And there's no recitation at all within the Makoto reference of determining any coordinates whatsoever.

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And so that's

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the first argument that I'm going to take up, I believe your honor is going to.

[00:02:35] Speaker 06:
Well, counsel, I'm not sure.

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I mean, the board didn't mention it was doing it through inherency.

[00:02:39] Speaker 06:
And at A26, citing Makoto at paragraph two, the board suggests that Ms.

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Makoto does disclose the coordinate limitations because a skilled artisan would have recognized the features from the Makoto disclosure.

[00:02:53] Speaker 06:
So that's not inherency so much as what a prior art reference discloses, which is a question of fact.

[00:03:00] Speaker 03:
Yes, Your Honor.

[00:03:01] Speaker 03:
Thank you.

[00:03:02] Speaker 03:
With respect to obviousness versus inherency here, there really is no dispute that the terms determining coordinates are not expressly disclosed in the Makoto reference.

[00:03:21] Speaker 06:
Well, do you think the words have to appear for something to be disclosed in a reference?

[00:03:25] Speaker 03:
I think that the

[00:03:29] Speaker 03:
If coordinate is a specific term, and determining a location based on coordinates is actually the gist of this invention here.

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And so in order to find, let's put it this way, Makoto discloses a location.

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Location does not actually

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mean coordinates.

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It's not, and Coda doesn't say anything about coordinates at all.

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And so in order to get there, there has to be a necessarily present type of analysis here.

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There has to be an inherency.

[00:04:14] Speaker 04:
But there's evidence here that the GPS system operates by sending information that can be converted into coordinates, right?

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and that the receiver, in this case, sends on data which is used ultimately to determine location, which data originated with the GPS.

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Isn't it a reasonable conclusion that, as a matter of fact, the data that's coming from the GPS is processed to produce coordinate information?

[00:04:50] Speaker 03:
Respectfully, Your Honor, the

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Makoto Reference discloses sending signals from a GPS satellite to a mobile device or information.

[00:05:07] Speaker 04:
To the receiver of the device.

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Right.

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And there is a receiver in that device.

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Right.

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Now there are different types of receivers.

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And the record also includes different types of receivers.

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Dr. Turveen talks about different types of receivers.

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He acknowledges that it's very common for those receivers to convert that data into coordinate information, right?

[00:05:32] Speaker 03:
Dr. Turveen doesn't acknowledge that that's a common occurrence.

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And in fact, we're looking at devices that existed around.

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Dr. Chatterjee says as much, right?

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And I think Dr. Tavine says there can be such receivers that process GPS information and produce coordinate information.

[00:05:58] Speaker 03:
Your honor, that's the point here, is that it can exist, but it's not actually recited.

[00:06:07] Speaker 06:
Counsel, what the board said, following up on Judge Bryson's point, is Dr. Chatterjee testifies that a person of ordinary skill in the art would have understood so.

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Because this patent publication discloses a GPS receiver that constantly monitors and goes on to explain so they I don't know.

[00:06:23] Speaker 06:
I read the board's opinion as crediting Dr. Chatterjee Who said that a person of skill in the art would have understood this GPS signal to disclose coordinates So what do we do with that?

[00:06:37] Speaker 03:
So just to clarify, Your Honor, that finding by the board was with respect to limitation 1G, which is indicate coordinates.

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And under that analysis, the board was not actually looking for a GPS information that contained coordinates or included coordinates.

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the board was looking for what?

[00:07:08] Speaker 06:
An indication.

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An indication of coordinates.

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Later on.

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What is the other limitation then?

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Because you said you were starting with 1G and?

[00:07:18] Speaker 03:
I said I was starting with 1J and 1L.

[00:07:19] Speaker 06:
1J and 1L.

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I'm sorry.

[00:07:21] Speaker 06:
Go ahead.

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And so with 1J and 1L, the board refers back to the analysis for 1G.

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But the board fails to provide any explanation

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regarding the leap from indicating coordinates to determining coordinates.

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And so when the board is taking a look at and reviewing the record for indicating coordinates, it's got a whole different sort of frame of reference.

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It's looking for an indication, like you said, Your Honor.

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But 1J and 1L actually positively recite

[00:08:05] Speaker 03:
determining coordinates and then using those coordinates to place symbols that correspond to devices that are moving about in accurate geographic locations.

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And so that's sort of the difference there.

[00:08:29] Speaker 03:
Going back to your question, Judge Bryson,

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Makoto discloses signals that are sent from a GPS satellite to a device.

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Makoto has a device that has a receiver.

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There are multiple different types of receivers out there.

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Makoto doesn't explain anything about what type of receiver it has.

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This is a 2002 reference from a Japanese translation of a reference.

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And the receivers in mobile phones

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I don't even know if they existed at the time.

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This just says that it has a GPS receiver, and it says nothing else about it.

[00:09:10] Speaker 03:
What it does say something, it does get into, and the board doesn't really address this, paragraphs 49 through 51, it says that the GPS receiver receives location information and sends it to the processor

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as it is.

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And so that tells us that the location information that is received in that GPS signal, which it's undisputed that the GPS signal itself does not contain coordinates.

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Those need to be determined by something.

[00:09:51] Speaker 04:
When you say contain coordinates, presumably the data coming from the GPS is in binary code.

[00:09:59] Speaker 04:
It's not going to say Washington DC is at 77 West and 39 North, right?

[00:10:05] Speaker 04:
It's going to say something in a code, which then needs processing.

[00:10:10] Speaker 04:
The processing then produces, presumably, the coordinates.

[00:10:13] Speaker 04:
At least, that's what Makoto is saying.

[00:10:15] Speaker 03:
Today, that's what happens.

[00:10:16] Speaker 04:
And let's say in sort of- But why isn't that entirely consistent with what Makoto is saying?

[00:10:22] Speaker 04:
That's what I'm having problem with.

[00:10:24] Speaker 03:
Yeah, so Makoto does not-

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explain other than forwarding the raw GPS signal, the raw location information that it receives from the GPS signal, all it does is forward that information to a processor.

[00:10:45] Speaker 03:
It doesn't determine any coordinates.

[00:10:48] Speaker 03:
It doesn't say that it performs those actions.

[00:10:52] Speaker 04:
The very paragraph that you're referring to, though, paragraph 49, starts by explaining

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that the processing unit of the receiver of the device, in the processing unit, the location information that comes in, the location information for the phone is generated using GPS signals, and that is

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before we get to the point at which there is a conveyance as it is.

[00:11:25] Speaker 04:
So the information is processed according to this paragraph, as I understand it, in the receiver of the receiver unit of the mobile phone.

[00:11:39] Speaker 04:
Isn't that what it says?

[00:11:40] Speaker 03:
Paragraph 49.

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Paragraph 49, your honor, says that the processing unit 14 does that, does something with it.

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We don't know what it does.

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Makota doesn't explain exactly what the process is.

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But that's in the mobile phone device.

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That it generates location information.

[00:11:55] Speaker 04:
Right.

[00:11:55] Speaker 04:
It's in the mobile phone device that the processing occurs.

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And that is before it's sent on.

[00:12:04] Speaker 03:
In the mobile processing device, correct your honor, the location information is received to the

[00:12:16] Speaker 04:
Well, something is received from the GPS in some form.

[00:12:19] Speaker 03:
From the GPS satellite, correct.

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And that is processed to produce location information.

[00:12:24] Speaker 03:
But that's not coordinates, Your Honor.

[00:12:25] Speaker 03:
There's no, there's, right.

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And so later on, if we look at, and just, this will show you.

[00:12:31] Speaker 04:
How do you know that's not coordinates?

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What is it, the fact that they don't use the word coordinate, what other kind of location information could it possibly be?

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I mean, it wouldn't be,

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this thing is located two blocks south of the butcher shop, right?

[00:12:47] Speaker 03:
It could be directional.

[00:12:48] Speaker 03:
And actually, Your Honor, paragraphs 50 and 51 talk about this positional relationship between devices, which is not coordinates.

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Positional relationship means direction.

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It means left or right.

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Location information.

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And so it doesn't refer to

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relationships, it's this location where I am.

[00:13:13] Speaker 04:
It seems to me that one way or another that's got to be in coordinate form.

[00:13:21] Speaker 03:
That's an argument of inherency, Your Honor, and that's what the board relies on.

[00:13:26] Speaker 03:
It's that coordinates are necessarily present in location information.

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And paragraphs 50 and 51 discuss how the location information is actually what's received from the GPS satellite and then forwarded over to the processing unit.

[00:13:49] Speaker 06:
Council, you're using most of your rebuttal time.

[00:13:51] Speaker 06:
Would you like to save some?

[00:13:57] Speaker 03:
Yes, Your Honor.

[00:13:58] Speaker 03:
Thank you.

[00:13:58] Speaker 03:
Very good.

[00:14:02] Speaker 05:
Council, how do I say your name?

[00:14:04] Speaker 00:
Ms.

[00:14:04] Speaker 00:
Caprahan.

[00:14:05] Speaker 05:
Ms.

[00:14:05] Speaker 05:
Caprahan, please proceed.

[00:14:15] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:14:17] Speaker 00:
Substantial evidence supports the Board's determination that Makoto does teach the term coordinates.

[00:14:24] Speaker 06:
Do you think that the Board found it disclosed?

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What do you think about inherency, obviousness?

[00:14:28] Speaker 06:
What do you think the Board found?

[00:14:30] Speaker 00:
So the Board found that although Makoto does not expressly recite the term coordinates, based on the teachings in Makoto, and that's

[00:14:38] Speaker 00:
at paragraph two of Makoto, which is at 463, as well as the paragraphs we're just discussing right now, based on these paragraphs, as well as Dr. Chatterjee's testimony, that one of skill in the art would have understood that Makoto does teach indicating and determining coordinates, which is all that the claim requires.

[00:14:58] Speaker 06:
The claim does not require- Do you agree that indicating and determining are two different things, that something could indicate coordinates without necessarily determining them?

[00:15:09] Speaker 00:
There may be processing steps that first determine what the GPS signal indicates in terms of positional relationship, and then outputting that data into a map, say, like it does in Lakota in figure five.

[00:15:25] Speaker 00:
That may be part of the steps that's determining the positional data.

[00:15:29] Speaker 00:
That discrepancy wasn't discussed in particular detail, but what the board found is that given these teaching, given the fact that

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this is the way GPS receivers work.

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And given that Dr. Turveen relied on GPS standards that also confirmed that this is how GPS receivers work, that given all of those teachings and given that testimony, the board found that the Makoto reference does both indicate coordinates as well as determine coordinates based on these teachings.

[00:16:04] Speaker 00:
And my friend

[00:16:06] Speaker 00:
or sorry, appellant keeps discussing the fact that other types of receivers could have been used, or there's some other positional data.

[00:16:15] Speaker 00:
But Aegis never presented any record evidence to support that testimony from Dr. Turveen.

[00:16:22] Speaker 00:
And because Aegis's counsel has solely relied on this coordinates limitation in its opening argument, if the panel has no further questions, I will deal with the rest of my time and ask that the court affirm decision flow.

[00:16:36] Speaker 06:
OK, thank you.

[00:16:39] Speaker 06:
So in two minutes we're about off.

[00:16:49] Speaker 03:
So Your Honor, this case is very similar to the LBT versus Apple case that's recited in the reply brief.

[00:16:59] Speaker 03:
And Your Honor may be familiar with that case.

[00:17:05] Speaker 03:
In that case, the board conducted an obviousness analysis, but essentially what Your Honor and Judge Prost served.

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grilled the other attorneys on was the fact that this was really, at its essence, an inherited argument.

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Because the sort of technical features that were required of the GPS receiver were not actually disclosed in the reference about the GPS receiver.

[00:17:47] Speaker 03:
Your Honor, I ask that you consider that.

[00:17:50] Speaker 03:
And I believe the appropriate course of action here would be to vacate and remand for an inherency analysis and also a full analysis that doesn't rely on indicating coordinates as opposed to the determining limitations that are actually at issue here.

[00:18:17] Speaker 03:
That's okay.

[00:18:18] Speaker 06:
I think both counsel this case has taken a good dimension.