[00:00:00] Speaker 02:
Our first case is Roku versus Universal Electronics et al.

[00:00:08] Speaker 02:
2024-1188 and 1241.

[00:00:12] Speaker 02:
Mr. Baker.

[00:00:14] Speaker 03:
Good morning, Your Honor.

[00:00:15] Speaker 03:
Is it me?

[00:00:16] Speaker 03:
Please, the court.

[00:00:17] Speaker 03:
The remote central website that allegedly made the RadioShack reference publicly accessible contained an unknown multitude of documents in addition to user manuals, including product reviews, forum postings, and numerous other types of documents and files about remote controls.

[00:00:35] Speaker 03:
In fact, the user manual section was just one small part of this enormous website.

[00:00:41] Speaker 03:
To find the RadioShack reference, a user first had to navigate three levels deep into the website by first selecting files, and then miscellaneous, and then manuals.

[00:00:52] Speaker 03:
And then even after getting to the manuals sub-sub-area of the website, the user was faced with 28 brands of remote controls and 329 remote control manuals within those brands.

[00:01:05] Speaker 02:
But examiners have found it, haven't they?

[00:01:08] Speaker 02:
And patents have cited it?

[00:01:10] Speaker 03:
Well, yes.

[00:01:11] Speaker 03:
We're not disputing that the website was known.

[00:01:14] Speaker 03:
But the question is whether a person of still in the art exercising reasonable diligence could have found this particular manual out of all of the documents and all of the manuals that were on their website.

[00:01:27] Speaker 03:
And the reason why it was not able to be found with reasonable diligence was because the only type of searching that was allowed was by brand and title.

[00:01:39] Speaker 04:
Do you believe that indexing is not required for a reference to be publicly accessible?

[00:01:45] Speaker 03:
That's true.

[00:01:45] Speaker 03:
The court has held that it's not required.

[00:01:47] Speaker 03:
It's certainly a highly relevant factor, but it's not required.

[00:01:51] Speaker 03:
And so each case is evaluated under the specific facts of what was involved, what searching was possible, how many references were there, how was it organized.

[00:02:02] Speaker 03:
And in this case, what the evidence shows is that the RadioShack Phone Up for Manual

[00:02:09] Speaker 03:
could not be found out of all the other documents and files unless the user already knew what he was looking for.

[00:02:18] Speaker 04:
What standard of review do we apply to this question of public accessibility?

[00:02:22] Speaker 03:
I believe the proper standard of review is de novo.

[00:02:26] Speaker 03:
It's a question of law, in our view.

[00:02:28] Speaker 03:
The facts are not really disputed about the operation of the website.

[00:02:33] Speaker 03:
And so, in our view, it is a question of law that should be decided de novo by this court.

[00:02:40] Speaker 01:
What would someone skilled in the art have been looking for?

[00:02:43] Speaker 01:
The Radio Shack manual?

[00:02:48] Speaker 01:
What would the person have been looking for?

[00:02:50] Speaker 03:
Well, I think that's an excellent question.

[00:02:52] Speaker 03:
Other cases have looked to terms that were used in a patent to describe the invention.

[00:02:58] Speaker 03:
So for example, in the Lister case, the court said that where the title held words like golf and handicap, and those were terms that the inventor had used, that because you could search using those terms and find the reference, it was publicly accessible.

[00:03:14] Speaker 03:
But here, if the person spilling the art was- You have to be guided to the specific

[00:03:20] Speaker 01:
references that correspond to the patent, as opposed to being able to look at universal remote controls?

[00:03:30] Speaker 03:
Well, there has to be a reasonable way to find this particular manual, or reason that it could be found.

[00:03:38] Speaker 01:
Well, there's no question that you could find pretty easily the RadioShack manual, right?

[00:03:44] Speaker 01:
There were various publications telling you to go to this particular website, and the website was indexed in a way that you could find the RadioShack manual, right?

[00:03:53] Speaker 03:
Well, we're not disputing if you knew you were looking for the RadioShack phone up for manual.

[00:04:01] Speaker 03:
We're not disputing that you wouldn't be able to find that.

[00:04:04] Speaker 03:
The question is, if you did not have a priori knowledge of the reference, would a person of skill in the art have been able to find it?

[00:04:12] Speaker 03:
And what this court has said in cases like Henry Cronin, where there were 450 references on index cards with titles, that did not make those references publicly accessible.

[00:04:28] Speaker 01:
And same thing in Acceleration Bay, where the court said- If someone's killed in the art here, looking at this problem would be interested in remote manuals generally, right?

[00:04:40] Speaker 01:
Why does the person have to be interested in a specific term, in a specific manual?

[00:04:46] Speaker 01:
I don't think our cases have required that.

[00:04:49] Speaker 03:
Well, I think the same thing applied in Samsung, the Samsung versus Infobridge case, Your Honor, where there was a website that was all about video coding.

[00:04:59] Speaker 03:
It was operated by a video coding standards body.

[00:05:03] Speaker 03:
And what this court found there was that in order to find the reference, unless you knew what you're already looking for, you first had to navigate to all files.

[00:05:12] Speaker 03:
You had to navigate to the city of Torino.

[00:05:14] Speaker 03:
And then you were faced with hundreds of references that you'd have to go through.

[00:05:18] Speaker 03:
And the court said that was not enough to make it publicly accessible.

[00:05:22] Speaker 03:
And that's very similar to the facts here, where you have a huge website.

[00:05:25] Speaker 04:
Did you say anything before the PTAB in terms of what a person of ordinary skill in the art would have been looking for?

[00:05:34] Speaker 04:
So my understanding is there is some testimony that I believe is unrebutted that this would have been found.

[00:05:42] Speaker 04:
and could be found as of the appropriate time period.

[00:05:45] Speaker 04:
Did you put any kind of counter testimony in?

[00:05:48] Speaker 03:
Well, I think what the testimony that's in the record is that someone could find this reference by navigating in the way we've described, by navigating to Radio Shack,

[00:05:58] Speaker 03:
and then navigating to this particular title.

[00:06:02] Speaker 03:
Or someone could search for Radio Shack photo for manual.

[00:06:05] Speaker 03:
That's what the testimony showed.

[00:06:07] Speaker 03:
And in our view, that that's not sufficient to make this publicly accessible.

[00:06:11] Speaker 03:
So we didn't dispute.

[00:06:12] Speaker 04:
You haven't answered my question, though, about whether or not you pit in any contrary testimony.

[00:06:15] Speaker 03:
No, no.

[00:06:16] Speaker 03:
We accept that as true.

[00:06:17] Speaker 03:
We're not disputing that.

[00:06:18] Speaker 03:
The point of the question is whether that is enough.

[00:06:21] Speaker 03:
to make it publicly accessible.

[00:06:23] Speaker 03:
And our point is that, well, sure, if you already know that you're looking for the Radio Shack Phono4 Manual, you can find it.

[00:06:29] Speaker 03:
I mean, we're not disputing that.

[00:06:31] Speaker 03:
But the question is, if you don't already have a priori knowledge of that, would the website make it reasonably accessible or not?

[00:06:42] Speaker 03:
And in addition to the Samson case, it's also like Acceleration Bay, where this court

[00:06:48] Speaker 03:
had said that if you had to skim through hundreds of references, that was not enough to make them publicly accessible.

[00:06:56] Speaker 04:
So if a person of ordinary skill in the art knows they're looking for universal remote control manuals, are you contending that the person of ordinary skill in the art would not look at the Radio Shack manuals?

[00:07:10] Speaker 03:
What I'm saying is that when there's such a large number of manuals that are not organized by feature in any way or functionality, that that is not sufficient to make them publicly accessible.

[00:07:25] Speaker 03:
Especially when it's on a huge website like this that has all sorts of other types of documents about remote controls, about the user interfaces and communications technology.

[00:07:35] Speaker 03:
all other aspects.

[00:07:36] Speaker 04:
How do we know what would be considered a large number of manuals, right?

[00:07:40] Speaker 04:
My understanding is on the order of hundreds.

[00:07:42] Speaker 04:
We're not talking thousands, we're not talking millions, right?

[00:07:45] Speaker 03:
Well, first of all, we don't know how many files were on the entire website because UEI, Universal Electronics, did not put any evidence in about the total number of documents on the website.

[00:07:55] Speaker 03:
But you're right.

[00:07:56] Speaker 03:
Apparently, within the sub-sub area that dealt just with remote control manuals, there were 329 manuals on that part of the site.

[00:08:07] Speaker 04:
And what this court has said- And that part of the site is just focused on manuals of this nature, right?

[00:08:13] Speaker 03:
That's my understanding, yes.

[00:08:15] Speaker 03:
But what this court has said in other cases, including Acceleration Bay,

[00:08:21] Speaker 03:
And Cronin is having to search through hundreds of titles is too many to make it publicly accessible.

[00:08:29] Speaker 01:
But for what?

[00:08:30] Speaker 01:
I mean, what terms would you have to be searching for here?

[00:08:34] Speaker 01:
I don't recall that your briefs identify the specific terms that someone skilled in the art would have been searching for and the inability to find those.

[00:08:45] Speaker 01:
It's all kind of vague.

[00:08:47] Speaker 03:
Well, I don't think we had the obligation.

[00:08:50] Speaker 03:
I think it's UEI had the burden as the party arguing for invalidity and arguing that this reference was public accessible to show how a person's delivered.

[00:09:02] Speaker 01:
You never said what terminology had to be indexed so you could find it.

[00:09:08] Speaker 03:
Right?

[00:09:10] Speaker 03:
I think that's right.

[00:09:11] Speaker 03:
I think UEI was the one that had the burden to show how you could find it.

[00:09:15] Speaker 03:
What terms?

[00:09:16] Speaker 01:
What's the get is the problem?

[00:09:18] Speaker 03:
Well, to find this reference.

[00:09:19] Speaker 03:
To find the reference.

[00:09:20] Speaker 03:
Without already knowing that you're looking for this particular Radio Shack 404 manual, it was their burden to show how you could search for it.

[00:09:28] Speaker 03:
And in fact, maybe part of the reason we did not provide any search terms or propose search terms

[00:09:34] Speaker 03:
was because it was admitted that the website could only be searched by the model and the brand.

[00:09:44] Speaker 03:
You could not search using other terms about remote control.

[00:09:47] Speaker 03:
That functionality was not available on the website, Your Honor.

[00:09:51] Speaker 04:
But what if it were, instead of a website, it's a library?

[00:09:54] Speaker 04:
And there's a section in the library that has these universal remote control manuals.

[00:09:59] Speaker 04:
Are you contending that that would not be publicly accessible

[00:10:04] Speaker 04:
to get at those manuals in the library?

[00:10:06] Speaker 03:
Well, what I'm saying is I think it would depend on how the call numbers are assigned, how many manuals there are within each call number, whether there's any kind of subject matter indexing.

[00:10:18] Speaker 03:
Because there's lots of different functionality in these remote controls.

[00:10:22] Speaker 03:
And some libraries have subject matter indexes.

[00:10:25] Speaker 03:
where you could find a reference.

[00:10:27] Speaker 03:
You could find one particular or a smaller number of manuals within a large group based on the subject matter, the particular functionality offered by those manuals.

[00:10:38] Speaker 03:
So as the case law says, it's a case-by-case, fact-intensive inquiry.

[00:10:43] Speaker 03:
So I could see in some cases where that would be true, in some cases where it might not be true.

[00:10:48] Speaker 01:
What case says you have to be able to search for a particular terminology?

[00:10:54] Speaker 03:
I'm not saying that you have to be able to search for a particular terminology, Your Honor.

[00:10:59] Speaker 03:
The question is whether you could find the reference without knowing about it in advance.

[00:11:06] Speaker 03:
And the cases say that when there's hundreds of references, that does not make them publicly accessible.

[00:11:12] Speaker 01:
I'm just not understanding the argument.

[00:11:15] Speaker 01:
Someone in this field looking at this problem would look for manuals on universal remotes.

[00:11:21] Speaker 01:
They're guided to that.

[00:11:22] Speaker 01:
That's what the website is about.

[00:11:24] Speaker 01:
They can search it by brand and model number.

[00:11:27] Speaker 01:
I'm not understanding what search terms you think needed to be searchable to satisfy public assessment.

[00:11:38] Speaker 03:
Well, I'm not saying it's required.

[00:11:40] Speaker 03:
But if it did provide either full-text searching of the manuals or provided subject matter indexing or searching of the manuals,

[00:11:53] Speaker 03:
and you could search on terms that are relevant to the technology of this invention, I think that would make a huge difference in terms of making it publicly accessible.

[00:12:03] Speaker 03:
But here there was no ability to do any kind of searching.

[00:12:07] Speaker 04:
And it sounds like your rule though requires some type of

[00:12:11] Speaker 04:
searching aid for there to be public accessibility.

[00:12:14] Speaker 04:
Is that what you're contending?

[00:12:16] Speaker 03:
Not necessarily.

[00:12:17] Speaker 03:
I mean, if there's a very small number of documents, then I don't think there would need to be some search aid.

[00:12:26] Speaker 03:
But I think, consistent with the Federal Circuit's cases, when you have a large number.

[00:12:31] Speaker 04:
And you contend as a small number.

[00:12:33] Speaker 04:
I feel like the other part of the difficulty with your rules is unclear what you mean by small versus large numbers.

[00:12:39] Speaker 03:
Yeah, well, I mean, the Federal Circuit hasn't articulated a bright line cutoff.

[00:12:44] Speaker 03:
What we have are cases to look at where there were hundreds of documents to look through.

[00:12:48] Speaker 03:
And similarly here, again, we don't think it's appropriate just to focus solely on the user manual section, because there was an untold number of other documents on the website.

[00:13:01] Speaker 03:
But even if you did look at that area, there were hundreds of documents, just like there were hundreds of documents in Henry Cronin

[00:13:08] Speaker 03:
and in Acceleration Bay and in Samson.

[00:13:13] Speaker 04:
Is the only dispute on ground one whether or not the radio shaft reference was publicly accessible?

[00:13:19] Speaker 03:
Well, I think it might be ground two, Your Honor.

[00:13:23] Speaker 03:
OK.

[00:13:24] Speaker 04:
Is the dispute on this applicable ground, whether or not the RadioShack reference was publicly valid?

[00:13:28] Speaker 03:
That's one of the main issues.

[00:13:30] Speaker 03:
There are also other arguments with respect to particular dependent claims, including like dependent claim number two, where the issue is whether the iteration has to continue until one of the two conditions is met.

[00:13:45] Speaker 03:
And for the reasons in our brief, we don't think that.

[00:13:47] Speaker 02:
Your rebuttal time is half gone.

[00:13:50] Speaker 02:
OK.

[00:13:50] Speaker 03:
Let me conclude there then, Your Honor, and save the rest of my rebuttal time.

[00:13:54] Speaker 02:
We'll give you three minutes for rebuttal.

[00:13:57] Speaker 02:
OK.

[00:13:57] Speaker 03:
Thank you very much, Your Honor.

[00:13:58] Speaker 03:
I appreciate that.

[00:13:59] Speaker 02:
Mr. Davison.

[00:14:12] Speaker 00:
It pleased the court.

[00:14:14] Speaker 00:
I'd like to begin with this question of public accessibility we've been going over.

[00:14:19] Speaker 00:
First, there are four factual findings that the PTAB made that we should be reviewing for substantial evidence.

[00:14:27] Speaker 00:
Once we look at those four factual findings, the ultimate conclusion is the RadioShack Remote Control Manual was publicly accessible on RemoteCentral.com.

[00:14:37] Speaker 00:
Now, we touched on some of these earlier with the questioning of Roku's attorney.

[00:14:43] Speaker 00:
But number one, the PTAP found, and they wrote in the final written decision, we note that no cross-examination testimony of Mr. Tonks was entered into the record.

[00:14:54] Speaker 00:
and that Mr. Tonks' testimony otherwise stands unrebutted.

[00:14:59] Speaker 00:
Mr. Tonks is the man who personally went to the Radio Shack website, downloaded this prior art that we're talking about, and uploaded it to his website, remotecentral.com.

[00:15:11] Speaker 00:
Unrebutted.

[00:15:12] Speaker 00:
Roku did not take his deposition.

[00:15:13] Speaker 00:
So everything that he said, true.

[00:15:18] Speaker 00:
Next.

[00:15:19] Speaker 04:
Do you contend that he represents a person of ordinary skill in the art?

[00:15:23] Speaker 00:
I think he would.

[00:15:24] Speaker 00:
So the PTAB would determine the person of ordinary skill, and the art would be, in this case, was a bachelor's degree in electrical engineering, computer science, or something equivalent, two years of experience in communications or consumer electronics devices.

[00:15:40] Speaker 00:
I think that's important.

[00:15:42] Speaker 00:
Our posita here knows about consumer electronics.

[00:15:46] Speaker 00:
Second, factual finding that PTEP made, that we're reviewing for substantial evidence.

[00:15:52] Speaker 00:
They concluded that Pesido's could find RemoteCentral.com.

[00:15:56] Speaker 02:
By Pesido, I think you're talking about a person of ordinary skill in the art.

[00:16:00] Speaker 00:
Yes, Your Honor.

[00:16:02] Speaker 02:
That's just speaking English in a court.

[00:16:05] Speaker 00:
Absolutely, Your Honor.

[00:16:05] Speaker 00:
I will endeavor to do so.

[00:16:07] Speaker 00:
So the board determined that person of ordinary skill in the art could have found remotecentral.com.

[00:16:13] Speaker 00:
That is no longer disputed.

[00:16:14] Speaker 00:
Roku abandoned that argument at the oral argument in the PTAS.

[00:16:18] Speaker 01:
There's no question that you could find universal remote control manuals.

[00:16:25] Speaker 01:
And if you could search this website by

[00:16:27] Speaker 01:
brand and model number, the question is, is that enough?

[00:16:32] Speaker 01:
Do you have to be able to do a more granular search than that?

[00:16:36] Speaker 00:
And I think the answer is no, you don't have to be able to do more than that.

[00:16:40] Speaker 00:
Where this all kind of boils down to is people could find their way to the universal remote sub-page.

[00:16:46] Speaker 00:
That was the argument we kind of heard from Roku's attorney.

[00:16:49] Speaker 00:
You couldn't find your way there.

[00:16:50] Speaker 00:
There's evidence in the record that a patent examiner did exactly that.

[00:16:54] Speaker 01:
I don't think they're disputing that you could find the website or that you could search the website by model number and brand.

[00:17:03] Speaker 01:
There's no question about that.

[00:17:05] Speaker 01:
What they're saying, that's not enough.

[00:17:08] Speaker 01:
But it's not clear what else they want.

[00:17:10] Speaker 00:
I agree, it is not clear what else they want.

[00:17:13] Speaker 00:
When we look at the overall test, though, for public accessibility, it's whether our person of skill in the art who's interested in the subject matter could have reasonably located the reference.

[00:17:22] Speaker 00:
The subject matter here is universal remote controls.

[00:17:26] Speaker 00:
I do think that the universal remotes page on remotecentral.com is equivalent to an aisle in a library filled with manuals all about universal remote controls.

[00:17:37] Speaker 00:
Every single one of them is relevant prior to the 875 patent.

[00:17:42] Speaker 00:
The title of the patent is a method of setting up a universal remote control.

[00:17:47] Speaker 00:
Those universal remote controls have keyboards, they have processors, they have memory, codes.

[00:17:52] Speaker 00:
Those are all things that are relevant to someone who is trying to evaluate whether or not the 875 patent is valid.

[00:18:02] Speaker 00:
Going back though, there's still more factual findings that the board found that compelled the conclusion on public accessibility.

[00:18:10] Speaker 00:
The board tells us Petitioner, UEI here, presents specific uncontroverted evidence that a person of skill in the art could have easily navigated to the index for the Universal Remote Controls manuals on RemoteCentral.com and that the number of manuals on the site at the relevant time was relatively modest.

[00:18:28] Speaker 00:
We're talking about 300 manuals here.

[00:18:30] Speaker 00:
That's not a large number, particularly when every single one of them is relevant prior art.

[00:18:36] Speaker 00:
And I think that's the important distinction from all the cases we heard from Roku's attorney.

[00:18:41] Speaker 00:
The cases that have found that something is not publicly accessible is when you have to look through hundreds of references that are irrelevant.

[00:18:49] Speaker 00:
All of the manuals on this page are relevant prior art.

[00:18:52] Speaker 00:
That's the critical distinction on how we can distinguish all of those other cases.

[00:18:56] Speaker 04:
The faculty council also said though you wouldn't just look at the portion on the page related to the manuals.

[00:19:02] Speaker 04:
What is your response to whether or not you'd look beyond that portion related to the manuals?

[00:19:07] Speaker 00:
So the response to that is, number one, a US patent examiner, and we cited it to it in our briefs, found that page, the universal remote page on RemoteCentral.com.

[00:19:18] Speaker 00:
They found their way there, cited it as prior.

[00:19:21] Speaker 00:
That's number one.

[00:19:22] Speaker 00:
Number two, Mr. Tonks tells us in his declaration that companies would use his page to look at the manuals of their competitors.

[00:19:30] Speaker 00:
In paragraph nine of his supplemental declaration, he tells us,

[00:19:37] Speaker 04:
What page are you looking at in the appendix?

[00:19:40] Speaker 00:
In the appendix, it's 2656, if you're interested.

[00:19:43] Speaker 00:
That would be volume 1, APPX 2656.

[00:19:48] Speaker 04:
People keep going.

[00:19:54] Speaker 00:
OK.

[00:19:54] Speaker 00:
He mentions that companies such as Philips, Sony, Logitech, goes on, and many others.

[00:20:02] Speaker 00:
These companies were interested not only in understanding how customers viewed their remote controls,

[00:20:07] Speaker 00:
but also using my website to view the features and information about their competitors' remote controls.

[00:20:13] Speaker 00:
People liked RemoteCentral.com because they could go there and look at their competitors.

[00:20:17] Speaker 00:
So a company like Sony could say, what is RadioShack doing?

[00:20:22] Speaker 00:
Again, not disputed.

[00:20:28] Speaker 00:
Last but not least, the fourth, I think, factual finding that we're looking at for substantial evidence.

[00:20:33] Speaker 00:
The board told us that having found RemoteCentral.com,

[00:20:37] Speaker 00:
A skilled artisan could have used the site's search capabilities to locate specific prior art.

[00:20:41] Speaker 00:
Those four things are all supported by substantial evidence.

[00:20:45] Speaker 00:
They compel the conclusion that RadioShack was publicly accessible.

[00:20:49] Speaker 00:
And that dispute resolves the entirety of claims 1, 3, 5, 9, and 14.

[00:20:56] Speaker 00:
So if you agree with the board that RadioShack is publicly accessible, those claims are invalid.

[00:21:04] Speaker 04:
Do we have to agree the searching capabilities remotecentral.com were sufficient to affirm?

[00:21:12] Speaker 00:
No, I don't think you have to get all the way to that conclusion.

[00:21:15] Speaker 00:
I think that you can affirm based primarily on the fact that the universal remotes page on the subject matter, it is completely related to the subject matter.

[00:21:24] Speaker 00:
And that the person of skill in the art who is interested in universal remotes would go there.

[00:21:30] Speaker 00:
And this is the best location on the internet for subject matter for the 875 patent.

[00:21:35] Speaker 04:
And you did tell me that you believe, is it Mr. Tonks?

[00:21:39] Speaker 00:
Mr. Tonks, yes.

[00:21:40] Speaker 04:
Mr. Tonks would be a person of ordinary skill in the art.

[00:21:43] Speaker 04:
My follow-up question is, is there a dispute that he would be a person of ordinary skill in the art?

[00:21:48] Speaker 00:
I don't believe there is, but I will let Mr. Baker speak to that.

[00:21:55] Speaker 00:
Moving along, Mr. Baker touched on the issue of claim construction for claim twos.

[00:22:00] Speaker 00:
I would just briefly like to hit that.

[00:22:04] Speaker 00:
Overall, one of the issues we're going to try to resolve probably in this appeal and maybe in the next one is, what does it mean to iterate?

[00:22:11] Speaker 00:
That seems to be the dispute between the parties.

[00:22:14] Speaker 00:
And fundamentally, the dispute boils down to this.

[00:22:17] Speaker 00:
The parties agree that the claims of the 875 patent encompass, if you were pressing and holding a button on the remote control to do a brand search.

[00:22:29] Speaker 00:
Parties agree if you press a button and then you let it go for a bit and press it again, that's within the scope of the claims.

[00:22:36] Speaker 00:
What Roku's arguing is that what is not within the scope of the claims is if you push a button multiple times.

[00:22:42] Speaker 00:
And I would submit to this court that there's nothing in the claim language that would support that distinction.

[00:22:47] Speaker 00:
And that's the conclusion that the board ultimately reached.

[00:22:50] Speaker 02:
Do you want to address the cross appeal and tell us why the issue isn't waived?

[00:22:56] Speaker 00:
Sure.

[00:22:57] Speaker 00:
I can start with why the issue isn't waived.

[00:22:59] Speaker 00:
What we pointed to in our petition for limitation 11E was we pointed to the fixer.

[00:23:09] Speaker 00:
This other reference called Wooters, it's got this thing called a fixer, and we said the fixer is what does limitation 11E.

[00:23:17] Speaker 00:
Dr. Ho pointed to that same thing in response to our petition.

[00:23:21] Speaker 00:
In the patent owner response, they raised an argument.

[00:23:24] Speaker 00:
They said the fixer doesn't do it because in the fixer, you're installing code sets one at a time.

[00:23:32] Speaker 00:
And after you've combined them, you don't then install them.

[00:23:36] Speaker 00:
In response to that, the board said the record would benefit from further development.

[00:23:40] Speaker 00:
And that's what we did.

[00:23:42] Speaker 00:
In our reply brief, we pointed to the same embodiment

[00:23:45] Speaker 00:
of the same prior art reference, and we explain why that same embodiment meets what they allege the claims encompass.

[00:23:56] Speaker 00:
And that's allowed.

[00:23:57] Speaker 00:
I think the Wildcat licensing case that we pointed to in our briefs explains exactly that.

[00:24:02] Speaker 04:
Does appendix page 556 show exactly how you raised it in your reply brief?

[00:24:10] Speaker 00:
Yes, I believe so.

[00:24:11] Speaker 00:
That's what I have in my notes.

[00:24:13] Speaker 04:
And that's the only page, right?

[00:24:17] Speaker 00:
I have it as 554 to 556.

[00:24:24] Speaker 00:
But that is where we raised it.

[00:24:26] Speaker 01:
So we have a situation where there's this reinstallation argument, if we can call it that.

[00:24:33] Speaker 01:
And the board, as I read the board decision, didn't address that at all.

[00:24:37] Speaker 01:
It didn't find forfeiture.

[00:24:39] Speaker 01:
It didn't address it on the merits.

[00:24:40] Speaker 01:
It's just silent as to it, right?

[00:24:42] Speaker 00:
Correct.

[00:24:43] Speaker 00:
And I think I would take it one step further, where it seems to me the board missed the reinstallation argument.

[00:24:49] Speaker 00:
And that's because what the board writes in the final written decision is Wooters does two things.

[00:24:53] Speaker 00:
It says those two things would be superfluous.

[00:24:56] Speaker 00:
You wouldn't reinstall the code set.

[00:24:58] Speaker 00:
But Wooters tells you exactly why you would.

[00:25:01] Speaker 00:
In the invention of Wooters, after you create your new code set and fix it,

[00:25:06] Speaker 00:
The why is if your batteries fail or your remote malfunctions, I'm going to reinstall it.

[00:25:11] Speaker 00:
It uses the words reinstall.

[00:25:13] Speaker 00:
The board is silent on that.

[00:25:14] Speaker 00:
So to me it just seems that the board missed it.

[00:25:17] Speaker 00:
And that's why we would ask that you would remand on that one single point.

[00:25:22] Speaker 01:
And would the remand include the question of whether the issue was waived by waiting until the reply to raise it?

[00:25:31] Speaker 00:
My position would be no, because I don't believe Roku raised that argument in the lower.

[00:25:37] Speaker 00:
They didn't raise the forfeiture?

[00:25:38] Speaker 00:
They did not raise the forfeiture argument.

[00:25:40] Speaker 00:
That's what we explain in our briefs.

[00:25:44] Speaker 00:
Unless there's further questions for me, I would.

[00:25:48] Speaker 04:
I have one follow-up question for you.

[00:25:49] Speaker 04:
Absolutely.

[00:25:50] Speaker 04:
So just following up on where you're saying this was raised, if you have access to the appendix, I just want to make sure I have all of the lines and pages on that.

[00:26:02] Speaker 04:
Do you have access to it?

[00:26:03] Speaker 00:
I do.

[00:26:04] Speaker 00:
I've got the relevant excerpt.

[00:26:06] Speaker 04:
OK, yes.

[00:26:07] Speaker 04:
Why don't you?

[00:26:07] Speaker 00:
And I'll point you right to what I think is the best support I have.

[00:26:11] Speaker 00:
It is on page 556.

[00:26:13] Speaker 00:
We write, moreover, Wooters clearly discloses that the chosen code set is the activated code set.

[00:26:20] Speaker 00:
And if the remote control ever malfunctions, the code set can be installed again.

[00:26:28] Speaker 04:
You didn't raise this comparable argument in the petition, right?

[00:26:32] Speaker 00:
In the petition, we weren't pointing to that second set of sentences in Wooters.

[00:26:36] Speaker 00:
I would agree with that.

[00:26:38] Speaker 00:
What we were pointing to is the fixer as a whole.

[00:26:41] Speaker 00:
What we did not point to is in Wooters, there is a sentence that starts, when the remote control malfunctions, for instance, when the batteries have been exhausted, that was not an issue in the petition.

[00:26:54] Speaker 00:
But it's the same embodiment of the same reference.

[00:26:57] Speaker 00:
And under the Wildcat licensing case, we are allowed to point to the same embodiment of the same reference to explain why that still invalidates in response to Roku's arguments.

[00:27:09] Speaker 00:
That's why I think it was properly raised.

[00:27:13] Speaker 02:
You wanted to save two minutes for a response on your cross appeal.

[00:27:19] Speaker 02:
And you'll get the benefit of that only if it's addressed by appellant.

[00:27:23] Speaker 00:
Thank you so much.

[00:27:25] Speaker 02:
Mr. Baker.

[00:27:38] Speaker 03:
Thank you, Your Honors.

[00:27:39] Speaker 03:
I'd like to discuss further Claim 2.

[00:27:43] Speaker 01:
Before you get into that, since we're on the topic of Claim 11, this reinstallation argument was discussed at the oral argument before the board, including pages that aren't included in the appendix.

[00:27:56] Speaker 01:
And as I read the oral argument, you addressed the reinstallation argument on the merits.

[00:28:02] Speaker 01:
You never argued that there was forfeiture.

[00:28:04] Speaker 01:
Am I correct about that?

[00:28:06] Speaker 01:
No, no.

[00:28:06] Speaker 03:
My understanding is that what we addressed was their fixer argument related to storing the combined-code set.

[00:28:14] Speaker 03:
I don't believe we addressed

[00:28:16] Speaker 01:
If you look at 59 and 60 of the oral argument transcript, you specifically addressed it.

[00:28:24] Speaker 01:
But is it correct that you never argued that it was forfeiture?

[00:28:29] Speaker 03:
I don't recall that we specifically said forfeiture.

[00:28:34] Speaker 03:
I think the question is whether UEI's met the burden to show this issue was adequately raised.

[00:28:40] Speaker 01:
But you can wave a forfeiture argument, right, by not raising it.

[00:28:44] Speaker 03:
I believe that's possible, but in this case where no one recognized they were even making this argument, in our view, there was no forfeiture.

[00:28:53] Speaker 03:
It's their burden to show that this issue was properly raised before the board.

[00:29:00] Speaker 03:
But I would like to have just a few minutes on Claim 2 if that's okay.

[00:29:05] Speaker 03:
Because the important thing about Claim 2 is that even if the term iterating and the phrase containing iterating in Claim 1 is broad enough to cover a user repeatedly pressing a button to advance through the code sets, Claim 2 is narrower than that.

[00:29:19] Speaker 03:
Claim 2 adds further restrictions on how the iteration will operate and requires the iteration to continue

[00:29:27] Speaker 03:
until one of two conditions occurs.

[00:29:29] Speaker 03:
And that's not what happens in the RadioShack reference.

[00:29:32] Speaker 03:
When the user pushes a button, the remote sends a single test code and then stops.

[00:29:39] Speaker 03:
And it waits.

[00:29:40] Speaker 03:
And it waits.

[00:29:41] Speaker 03:
And the iteration does not continue until user approval for all code sets have been tested.

[00:29:47] Speaker 03:
And the reason why we know that the iterations are not continuing while the remote is waiting for user input is because the specification of the patent tells us that.

[00:29:59] Speaker 03:
It tells us that.

[00:30:00] Speaker 03:
In connection with step eight of figure five, when the remote is waiting for user input, the patent says that, quote, the iteration stops.

[00:30:12] Speaker 03:
And it considers the iterations to be stopped while it's waiting for user input, even though, depending on what the user does next, the iteration might potentially resume.

[00:30:30] Speaker 04:
and the re-installation argument, or do you think these arguments are two sides of the same coin?

[00:30:35] Speaker 03:
No, no.

[00:30:35] Speaker 03:
I think it's completely two different arguments.

[00:30:38] Speaker 03:
There are two different parts of a paragraph in the reference.

[00:30:42] Speaker 03:
They focused and highlighted and bolded in their briefing the first part, which relates to what the fixer does, which is storing the combined code set into the database.

[00:30:52] Speaker 03:
That's the fixer argument.

[00:30:54] Speaker 03:
The reinstallation argument is that later, if there's a malfunction, that store codes that can be reloaded.

[00:31:01] Speaker 03:
But that's not done by the fixer.

[00:31:03] Speaker 03:
The patent never describes that as being done by the fixer.

[00:31:06] Speaker 03:
So in our view, the fixer argument has to do with storing the codes into the database.

[00:31:12] Speaker 03:
And the reinstallation is pulling them back out of the database.

[00:31:16] Speaker 03:
And that's what UAI never argued until a half sentence of their reply brief.

[00:31:21] Speaker 03:
And that was the first time that argument appeared.

[00:31:24] Speaker 02:
Thank you, Mr. Baker.

[00:31:25] Speaker 02:
Thank you.

[00:31:27] Speaker 02:
Mr. Davison has a couple of minutes on the cross-appeal.

[00:31:38] Speaker 00:
May it please the court, and I'll be brief.

[00:31:41] Speaker 00:
Sticking again with the cross-appeal only and focusing on the fixer, one thing I just want to make sure that is clear for the record

[00:31:49] Speaker 00:
The entire paragraph that we're disputing and talking about was squarely listed in our expert, Dr. Henry Ho's, opening declaration.

[00:31:58] Speaker 00:
So while the petition focused on the top part of the paragraph, from the very beginning, we were also pointing to the second part of the paragraph.

[00:32:08] Speaker 00:
That's in Appendix Volume 1, 1023, paragraph 167.

[00:32:14] Speaker 00:
You'll see in the opening petition our experts quoting the whole thing.

[00:32:18] Speaker 04:
But the expert declaration alone cannot preserve the issue in that case.

[00:32:23] Speaker 00:
I agree with that.

[00:32:25] Speaker 00:
But again, under the Wildcat licensing cases and the other ones we've cited in our brief, in response to Roku's arguments, we are allowed to explain why the same embodiment, the same paragraph, albeit a couple sentences below, still meets the limitations of the claim.

[00:32:43] Speaker 00:
And that's what we did.

[00:32:45] Speaker 00:
Combine that with the fact that Roku forfeited this waiver argument by not raising it at the oral argument or at any point until we got here.

[00:32:54] Speaker 00:
I think it's appropriate to take a look at the section and see if you agree with us.

[00:32:59] Speaker 00:
Did the board miss it when they wrote that it would be superfluous to do the reinstallation?

[00:33:05] Speaker 00:
I think the only answer is yes.

[00:33:06] Speaker 00:
The fixer tells you why you do it.

[00:33:09] Speaker 00:
It's because when the remote malfunctions, the batteries run out, you reinstall the code set.

[00:33:16] Speaker 00:
Once you've done that, you've met limitation 11E, which requires combining and then installing.

[00:33:23] Speaker 00:
With that, I have nothing else unless there's another question I can answer.

[00:33:27] Speaker 02:
Thank you, counsel.

[00:33:28] Speaker 02:
The case is submitted.