[00:00:14] Speaker 04: Please be seated. [00:00:20] Speaker 04: Good morning, and thank you for hosting our court today in your courtroom. [00:00:26] Speaker 04: We're excited to be here. [00:00:27] Speaker 04: Our first case for argument is 23-2008, In Re Soto. [00:00:34] Speaker 04: Mr. Meeker, please proceed. [00:00:52] Speaker 03: Good. [00:00:54] Speaker 03: Thank you, Your Honors. [00:00:54] Speaker 03: May it please the Court? [00:00:56] Speaker 03: The claims here require an upstream bandwidth allocation that is received by the Optical Land client in the downstream data and the client uses that upstream bandwidth allocation to communicate its data upstream. [00:01:11] Speaker 03: Now, the office used Yuki to incorporate that exact feature into the claims, the bandwidth allocation to incorporate it into husbands. [00:01:20] Speaker 01: But that makes- Do you agree that the only issue on appeal is whether a skilled artisan would have been motivated to combine husbands and Yuki? [00:01:27] Speaker 03: That's correct, yes. [00:01:28] Speaker 03: Yes. [00:01:30] Speaker 03: But incorporating Yuki into husbands would render husbands inoperable for its intended purpose, would require substantial reconstruction or redesign, [00:01:38] Speaker 03: or it would also change the principle of the operation. [00:01:41] Speaker 03: Now this case is governed by Gordon and Ratty, which I believe the office has not addressed. [00:01:47] Speaker 03: Here, Husbands has an open access network where terminals may initiate communications with other terminals without a central controller. [00:01:54] Speaker 04: The problem is, you just articulated a lot of evidence that the board could have used to go the other way in your favor. [00:02:01] Speaker 04: But on appeal, we have to review the board's decision for substantial evidence. [00:02:06] Speaker 04: So what we don't do is look at, oh, well, what's the other evidence that could have gone that other way? [00:02:10] Speaker 04: we look at was there evidence in this record that was sufficient for the board to reach the conclusion it chose to reach? [00:02:16] Speaker 04: And so what you have to do battle with is Yuki explains expressly the benefits of its protocol as compared to CSMA. [00:02:26] Speaker 04: And you have to find that the board also found that husbands discloses an optical LAN that uses CSMA. [00:02:35] Speaker 04: So you've got a reference that uses a protocol and you've got another reference that says ours is better than things that use that protocol use ours in those kinds of cases. [00:02:45] Speaker 04: I don't see, to be honest with you, why that isn't the end of your case. [00:02:49] Speaker 03: Because I believe it is either Gordon or Ratty that sets forth that a motivation to combine is inappropriate if it renders the combination or renders the prior art inoperable for its intended purpose. [00:03:04] Speaker 02: Why are you citing us a board case? [00:03:06] Speaker 02: Why aren't we talking about KSR? [00:03:09] Speaker 02: I mean this inoperability procedure [00:03:12] Speaker 02: I mean, there's a bit of it left, but not much after KSR. [00:03:15] Speaker 02: What we look to is whether a skilled artisan looking at the two references would be taught to do this combination. [00:03:22] Speaker 02: And the board made that finding. [00:03:23] Speaker 02: There's evidence in the record about that. [00:03:27] Speaker 02: Again, why isn't that substantial evidence? [00:03:29] Speaker 03: I believe here is because the board essentially ignored the arguments by claiming that the limitations were not in the claims and so the board didn't even consider it. [00:03:42] Speaker 03: The board didn't just disregarded it and I believe that the board is required to consider both evidence that is in favor of the combination and that may detract from the combination. [00:03:54] Speaker 04: What do you mean that they ignored it? [00:03:56] Speaker 04: Did they ignore it or [00:03:57] Speaker 04: Did they just not speak about it directly in their opinion? [00:04:01] Speaker 04: What is the precise thing? [00:04:03] Speaker 04: Because it would be a problem if the board didn't address one of your arguments. [00:04:07] Speaker 04: That would be a problem. [00:04:08] Speaker 04: That would be like an APA type problem. [00:04:09] Speaker 04: Not exactly the way you framed your appeal, but it would be a real problem. [00:04:14] Speaker 04: is it that you think the board didn't do that it should have done? [00:04:19] Speaker 03: So what I believe the board did was the board mentioned the arguments but then said that the arguments don't matter because they don't relate to claim limitations. [00:04:29] Speaker 01: Can you point us to a specific page where you're saying there's an error by the board in the board's decision? [00:05:10] Speaker 03: So, just for an example, on page 13, the board's decision, this is in Appendix 14, further on down in the bottom of the last full paragraph, this is where I'm saying that the alleged incompatibility with Yuki's access protocol and continuing on are not commensurate in scope with Claim 1. [00:05:34] Speaker 03: And for that reason, do not demonstrate error in the examiner's obviousness, rejection of claim one. [00:05:39] Speaker 04: And then it goes on to... Well, is this... Hold on. [00:05:42] Speaker 04: Is this because the claim one broadly recited a land, it didn't specifically recite [00:05:51] Speaker 04: CSMA, but CSMA is a type of land. [00:05:55] Speaker 04: Isn't that the board's logic here? [00:05:57] Speaker 04: So how is that a problem? [00:06:00] Speaker 03: So CSMA is not a type of land. [00:06:03] Speaker 03: It's a protocol of how to communicate on [00:06:06] Speaker 03: an optical network or a network. [00:06:10] Speaker 03: The problem here is the claim limitations involve bandwidth allocation and UPI was brought in for that bandwidth allocation, but by ignoring CSMA, [00:06:24] Speaker 03: And what that means in husbands, that is how husbands allocates its bandwidth. [00:06:30] Speaker 03: That's what's getting replaced by Yuki. [00:06:33] Speaker 03: In husbands, CSMA operates by clients initiate communications if they don't hear anybody talking. [00:06:42] Speaker 03: Then they start talking. [00:06:43] Speaker 03: That can result in conflicts, and there are ways to resolve a conflict. [00:06:48] Speaker 03: If you hear someone talking when you're talking, then you can stop talking. [00:06:51] Speaker 03: That's the CD portion of the CSMA CD. [00:06:55] Speaker 03: But that determines who gets to use the bandwidth. [00:06:59] Speaker 03: Essentially, any client can use the bandwidth. [00:07:03] Speaker 03: So it's those claim limitations about the bandwidth allocation and how it's done that are in the claims at issue. [00:07:10] Speaker 01: Do you agree that the claims do not include any requirements for a certain protocol? [00:07:16] Speaker 03: I believe that's correct, but it needs some form of bandwidth allocation. [00:07:22] Speaker 03: That is expressly in the claims. [00:07:25] Speaker 03: And so what was brought in from Yuki is its bandwidth allocation and what was replaced. [00:07:29] Speaker 03: And what would become inoperable is how husbands did its bandwidth allocation. [00:07:34] Speaker 04: I don't know what you mean by inoperable. [00:07:35] Speaker 04: I mean, are you kind of going back to that old-fashioned prosecutor, you can't plug this new thing into an old thing? [00:07:41] Speaker 04: I mean, a skilled artisan would know how to make [00:07:44] Speaker 04: revisions that are necessary to embrace a slightly different version of something. [00:07:51] Speaker 04: So what do you mean by inoperable? [00:07:53] Speaker 03: So that's correct. [00:07:55] Speaker 03: So this is not a case about bodily incorporation or physical incorporation. [00:08:00] Speaker 03: Yes, one skilled in the art could take husbands, make all the modifications, change the devices, put in a head end that had operability to become the master, as is described in Yuki, to allocate bandwidth to the clients. [00:08:14] Speaker 03: One skilled in the art could do that. [00:08:17] Speaker 03: But what we need to ask beyond that is, why would they do that? [00:08:22] Speaker 03: And it's not the inoperability of the physical components of the system in husbands. [00:08:27] Speaker 03: It's the conceptual, what can those clients do? [00:08:31] Speaker 03: They can, without any permission, without any central controller, they can initiate communications. [00:08:39] Speaker 03: They can no longer do that if you implement Yuki's system in husbands. [00:08:46] Speaker 03: That's what's eliminated. [00:08:51] Speaker 04: Well, I mean, that's hard because that's a fact question. [00:08:54] Speaker 04: And the board found Husband's discloses the CSMA protocol. [00:08:59] Speaker 04: Yuki discloses that its protocol is actually superior to CSMA and it lists specific benefits, increasing throughput, system capacity, reducing latency time, relaxed buffer memory requirements. [00:09:12] Speaker 04: And, you know, we're not [00:09:15] Speaker 04: technology experts here at the federal circuit, we have to give substantial evidence deference to the board when they make fact findings related to these things. [00:09:24] Speaker 04: So I'm struggling a little bit with how I go beyond what the board did in finding your favor on that point. [00:09:32] Speaker 03: So I think it relates to I think the Fritz case. [00:09:36] Speaker 03: That was where there was an issue of inoperability of an irrigation system. [00:09:42] Speaker 03: And the alleged combination would [00:09:44] Speaker 03: bring in art that would have the irrigation system used to retain soil. [00:09:49] Speaker 03: And so in that case you would get... What case is this? [00:09:52] Speaker 03: Inray Fritch. [00:09:54] Speaker 04: And is that one of our cases? [00:09:59] Speaker 03: I believe it is. [00:09:59] Speaker 03: Yes, it's a Court of Appeals for the Federal Circuit. [00:10:02] Speaker 04: That's us. [00:10:05] Speaker 03: place. [00:10:07] Speaker 03: But my point is, in that case, there was a reason to make that combination. [00:10:11] Speaker 03: You could retain the soil. [00:10:13] Speaker 03: That was what the prior art that was being defined was for. [00:10:17] Speaker 04: Well, but they say, the board said there's a reason here. [00:10:19] Speaker 04: It's throughput, system capacity, reduced latency time, relaxed buffer memory. [00:10:23] Speaker 04: Like the board said, there's reasons to do it here too. [00:10:25] Speaker 03: Correct, correct. [00:10:27] Speaker 03: But my point is, in that case, [00:10:29] Speaker 03: That, doing that, using it for the soil retention would then make the irrigation system inoperable for its intended purpose. [00:10:38] Speaker 03: It would clog up the irrigation system. [00:10:41] Speaker 03: And in that case, that rendering inoperable for its intended purpose made it not obvious. [00:10:47] Speaker 03: And that's the similar case we have here, taking it, even though there is a reason to make the combination, and we're not disputing that there are those benefits. [00:10:56] Speaker 03: There is a reason, but one skilled in the art looking at it. [00:10:59] Speaker 04: Unfortunately, I kind of am in the same camp as Judge Hughes because I just realized this Inray Fritch case that you said, because honestly, the doctrine that you're discussing sounds a little antiquated to me and maybe not completely in step with modern obviousness law, especially in the motivation to combine. [00:11:14] Speaker 04: It's from 1992. [00:11:15] Speaker 04: I mean, KSR is a Supreme Court case from 2007. [00:11:19] Speaker 04: I don't know how we go back to our law in 1992 when the Supreme Court came along in 2007. [00:11:25] Speaker 04: and said you need to take a broader look at how things can be combined. [00:11:30] Speaker 02: I mean, it sounds to me like you're saying there are certain parts of husbands that work in a certain way that couldn't work in that way if you use UKIP. [00:11:41] Speaker 02: Is that what you're saying? [00:11:43] Speaker 02: Yes, they would no longer be present. [00:11:45] Speaker 02: But that's not the test. [00:11:46] Speaker 02: The test under KSR is if a skilled artisan would look to these two references and be motivated to combine them to reach the claimed invention. [00:11:57] Speaker 02: Whether we're talking about certain elements of husbands that are not claimed by the patent [00:12:03] Speaker 02: were not relevant to the inquiry, KSR doesn't require that anymore. [00:12:07] Speaker 02: And the fact that there might be parts of husbands that would also have to be altered to reach the claimed invention doesn't foreclose a motivation to come on, does it, under KSR? [00:12:21] Speaker 03: I believe in that case, you need to look at the prior art as a whole. [00:12:26] Speaker 03: And it seems what you'd be doing in that case would be ignoring portions of it. [00:12:32] Speaker 03: And so you have one skilled in the art who is looking at both of these references. [00:12:37] Speaker 02: Well, it's not an anticipation case. [00:12:39] Speaker 02: That's what you do in obviousness. [00:12:41] Speaker 02: You look at two or more references or sometimes a single reference obviousness and determine that these references combined a skilled artisan would teach a skilled artisan how to get to the patented invention. [00:12:54] Speaker 02: And all the time there are parts of both of those references that are irrelevant to the inquiry because you're pulling, I mean, sometimes you're pulling an analogous art reference that isn't even in the same field like these two are. [00:13:06] Speaker 02: So clearly those, you know, you would be ignoring parts of them. [00:13:10] Speaker 02: You look to them for what they teach for the obviousness inquiry. [00:13:14] Speaker 03: But it's, I guess, maybe I misspoke. [00:13:17] Speaker 03: It's not just ignoring the portions, but it's ignoring that it would be completely removed. [00:13:23] Speaker 03: And if it is set in an express feature in a reference, that this is why we chose this. [00:13:29] Speaker 03: This is how it works. [00:13:30] Speaker 02: I don't think that's the right test. [00:13:31] Speaker 02: I think under KSR, the test you are now trying to articulate, if it ever existed, has long since been abolished. [00:13:40] Speaker 02: I think KSR just requires you to look at what the references teach and see if a skilled artisan would teach a skilled artisan the patented claims and that there was a motivation to combine them. [00:13:53] Speaker 02: If that's the test, then the board's decision is supported by substantial evidence, is it? [00:13:59] Speaker 02: I mean, I know you didn't cite KSR until nearly the last page of your blue brief, even though it is the prime Supreme Court case on obviousness that covers us now. [00:14:12] Speaker 03: Correct. [00:14:12] Speaker 03: But I believe you should be looking at the motivation, including what would not only support it, but detract from it. [00:14:22] Speaker 04: Okay, Mr. Meeker, let's let Mr. Foreman have some time and we'll give you rebuttal time. [00:14:27] Speaker 03: Thank you, Your Honor. [00:14:38] Speaker 00: May it please the court? [00:14:41] Speaker 00: I think I just direct the court to page 19 of our red brief, where we cite a number of recent post-KSR cases from this court addressing this exact argument about inoperability and rejecting that argument. [00:14:58] Speaker 00: And so I think it's a correct statement to say that post-KSR that the case, the Ratty case, which is [00:15:07] Speaker 00: an old CCPA case and others, that's not really the test anymore. [00:15:13] Speaker 00: I'd like to point to the, look to the claim language and show just kind of how basic this claim is, where it claims a land client with three hardware components, the optical interface [00:15:30] Speaker 00: the network interface and the control module. [00:15:33] Speaker 00: And that's, it's undisputed, that's all in husbands. [00:15:36] Speaker 04: And then there are... And it's all just applying to a land. [00:15:40] Speaker 04: It doesn't even articulate a particular protocol to use in the claim, does it? [00:15:43] Speaker 00: Correct. [00:15:43] Speaker 04: It just requires... So any protocol that can be used on a land? [00:15:47] Speaker 00: Correct. [00:15:47] Speaker 04: It just requires... And the Yuki protocol and the husband's protocol can be used on the land, correct? [00:15:51] Speaker 00: Yes. [00:15:52] Speaker 04: Okay. [00:15:52] Speaker 04: What else? [00:15:53] Speaker 00: I was just going to say that the bandwidth allocation requirements in claim one are undisputably disclosed in Yuki and Yuki is a point to multi-point [00:16:08] Speaker 00: system where you have upstream and downstream messages. [00:16:15] Speaker 00: And it tells you that this protocol is superior to prior collision detection protocols for a number of reasons. [00:16:23] Speaker 00: And so I think there's more than substantial evidence here to support the board's decision. [00:16:30] Speaker 00: I'm happy to answer any questions. [00:16:32] Speaker 04: Okay, thank you, Mr. Foreman. [00:16:33] Speaker 04: Mr. Meeker, you have some rebuttal time. [00:16:50] Speaker 03: I'd just like to make a couple of quick points. [00:16:53] Speaker 03: I don't believe that KSR overruled Gordon and Ratty in the reply brief on pages five to six and seven to nine. [00:17:00] Speaker 03: I believe site post KSR cases applying Gordon and Ratty. [00:17:06] Speaker 02: What about all the cases he just pointed us to where we specifically said that KSR got rid of this operability principle? [00:17:16] Speaker 03: So, several cases, I believe, that were cited, there was the ally directing case. [00:17:22] Speaker 03: In that case, there was an argument about, I think, inoperability, but on the facts, there was a way to incorporate this quick change function without impacting the operability. [00:17:35] Speaker 03: the Chevalier case. [00:17:37] Speaker 03: There, there was some similar argument, but that merely had recognized equivalence in the art. [00:17:43] Speaker 03: There wasn't a case of conoperability as well. [00:17:47] Speaker 03: Another case, the Elbers case. [00:17:50] Speaker 03: I think this is the one that's maybe cited in [00:17:54] Speaker 03: You know, some of the other cases as support. [00:17:57] Speaker 03: But there, it was just, there was testimony from an expert that it was just a simple case, that there were just simple adjustments that are needed, no inoperability. [00:18:05] Speaker 03: The Keller case that was cited, that one. [00:18:09] Speaker 02: I'm sorry. [00:18:10] Speaker 02: I thought on your opening, you said a skilled artisan could modify the primary reference with Yuki to make it work. [00:18:20] Speaker 02: It just said it would require leaving portions of the primary reference, I don't remember the name, unused or those would be inoperable. [00:18:29] Speaker 02: So it's not that it would, the two references combined couldn't operate to reach the claim dimensions. [00:18:36] Speaker 02: It's just what you're saying that it wouldn't [00:18:39] Speaker 02: enabled the invention claimed in the primary reference to operate. [00:18:43] Speaker 02: That is precisely what KSR overruled and what precisely we've said in multiple cases that you don't need to show. [00:18:54] Speaker 03: I don't believe that KSR overruled Gord Noratti, but in that particular case that you're describing with here, incorporating would make husbands inoperable for its intended purpose. [00:19:06] Speaker 03: Okay. [00:19:07] Speaker 04: Thank you, Mr. Meeker. [00:19:08] Speaker 04: Your time is up. [00:19:09] Speaker 04: We thank both counsel. [00:19:10] Speaker 04: This case is taken under submission.