[00:00:00] Speaker 01:
We have four RU cases this morning.

[00:00:02] Speaker 01:
The first is the number 2411P, SNAP, Inc.

[00:00:06] Speaker 01:
versus UMAP, Inc., Mr. Speed.

[00:00:10] Speaker 00:
May it please the court, Nathan Speed on behalf of the appellate SNAP.

[00:00:13] Speaker 00:
The board correctly found that UMAP's originally issued claims were unpatentable as obvious in light of the prior art, including the Feldman reference.

[00:00:20] Speaker 00:
Where the board erred was in granting UMAP's motion to amend its claims.

[00:00:24] Speaker 00:
There are two errors with the board's decision.

[00:00:26] Speaker 00:
First, the amended claims improperly introduced a new subject matter that UMAP's original disclosure did not support.

[00:00:32] Speaker 00:
And second, even if supported, the amended claims would have been obvious overfillment and or the additional prior that we cited during the earlier proceeding.

[00:00:40] Speaker 00:
Given how the briefing has unfolded, I'd like to start with the new matter issue because I think it might be simpler and straightforward.

[00:00:47] Speaker 00:
On that issue, the limitation

[00:00:50] Speaker 00:
that we're dealing with is the combined ranking limitation.

[00:00:52] Speaker 00:
In a sense, what we have here is you have a system that's looking for a social media post to provide a user.

[00:00:58] Speaker 00:
And so the combined ranking limitation requires that you have this initial set of posts, you apply a first customized score against it to get a first ranking, and then you take that same set of posts and you apply a second customized score against it to get a second ranking, and you take those two rankings and you get a combined ranking.

[00:01:14] Speaker 00:
The problem is

[00:01:15] Speaker 00:
UMAP's original disclosure doesn't provide any support for the notion of a combined ranking whatsoever.

[00:01:21] Speaker 00:
As an initial matter, the board erred by even considering the substance of UMAP's motion because it was procedurally flawed.

[00:01:28] Speaker 00:
Under the board's rules, UMAP had a burden to demonstrate in a motion where there was original support for its claims.

[00:01:38] Speaker 00:
burden persuasion of preponderance of the evidence.

[00:01:41] Speaker 00:
And as in filing a motion, they took on the affirmative obligation to comply with the board's rules, which included providing a detailed explanation of any evidence that they cited.

[00:01:50] Speaker 00:
For the combined ranking limitation, all they did was provide a string site of evidence to the board with no explanation.

[00:01:56] Speaker 00:
It's over 30 paragraphs of just

[00:01:58] Speaker 00:
citations to the original.

[00:01:59] Speaker 02:
But the board looked at that.

[00:02:01] Speaker 02:
They're the keeper of their rules, and they found that there was adequate support here.

[00:02:06] Speaker 02:
We review that for abuse of discretion, right?

[00:02:08] Speaker 00:
Correct.

[00:02:09] Speaker 00:
And the board has discretion.

[00:02:11] Speaker 00:
But on this, the rule is, it's a mandatory rule.

[00:02:14] Speaker 00:
A party moving must provide a detailed explanation of the evidence supporting their motion.

[00:02:21] Speaker 00:
This is the only case that we know of, and we've said this in the opening brief and we've had no response from UMAP.

[00:02:25] Speaker 00:
The only case we know of where the board has permitted a party to use string citations to show original support, they have routinely denied motions on that basis.

[00:02:34] Speaker 00:
But fundamentally, we don't need to win on the procedure because I think the substance is strong for us as well.

[00:02:39] Speaker 00:
On the substance,

[00:02:41] Speaker 00:
the board, because they were given no explanation by UMAP, had to go through all that evidence and try to come up with a theory of their own as to how there was support for this combined ranking limitation.

[00:02:52] Speaker 00:
And what the board did is they found certain disclosures related to this mapping functionality in the patent.

[00:02:58] Speaker 00:
And what the mapping functionality does is allows the user to specify that they want to rank posts that relate to a certain topic.

[00:03:06] Speaker 00:
So bars is one of the examples.

[00:03:07] Speaker 00:
So if I want to look at all the bars

[00:03:09] Speaker 00:
within 10 miles of the Federal Circuit's courthouse, the system would limit the initial set of posts to ones related to bars.

[00:03:16] Speaker 00:
And then a customized score would be applied against it, such as my interest or what have you.

[00:03:21] Speaker 00:
And I get a ranking of all the bars in the area.

[00:03:23] Speaker 00:
The board pointed to that.

[00:03:25] Speaker 00:
And it said at page 50, and this is the critical finding that the board reached, it said that

[00:03:29] Speaker 00:
the system creates more than one customized score when the posts are ranked for different maps.

[00:03:33] Speaker 00:
So it's saying, in effect, the user could say, I want to rank posts related to bars, and then I want to relate posts related to, I think, Japanese culture is the other example that specification provides.

[00:03:45] Speaker 00:
All that's doing is having one set

[00:03:47] Speaker 00:
of customized scores and ranking provided to one set of posts, and then another customized score and set of rankings provided to a second set of posts, there is no disclosure of taking one set of posts, such as the bars, ranking it once, ranking it twice, and then coming up with a combined ranking that decides what you're going to show to me.

[00:04:08] Speaker 00:
They don't even use the word combine in their decision.

[00:04:10] Speaker 00:
There's nothing in the original disclosure that supports this idea that there's some combined ranking limitation.

[00:04:16] Speaker 00:
UMAP's opposition brief, where you would expect that they would tell us how, because given this is a substantial evidence question, you would think that they would be able to come in and say how there's a reasonable interpretation of what the board cited that would support this combined limitation.

[00:04:33] Speaker 00:
They only use the word combined once in their brief, and it's when they're quoting paragraph 137 of the provisional application.

[00:04:39] Speaker 00:
And that provisional application at that paragraph

[00:04:41] Speaker 00:
It's just saying that you can take various user preferences, such as my age, who are my friends, things like that, combine those preferences to get a single customized score.

[00:04:52] Speaker 00:
And you don't have to take my word for it.

[00:04:53] Speaker 00:
That's what the board said at page 50 when it cited to paragraph 137.

[00:04:57] Speaker 01:
That was their interpretation.

[00:04:58] Speaker 01:
You really are asking us to re-determine the facts, which is a hard sell.

[00:05:02] Speaker 01:
I mean, you do have one argument I'd like you to address, which does seem to present a legal question.

[00:05:09] Speaker 01:
And that is the board's ruling on the obviousness over Fellock, whether it would have been obvious to have a request

[00:05:20] Speaker 01:
to the server to provide a zoom setting and the board rejected that at A57 and in rejecting that they seem to say well you wouldn't substitute the zoom function for the radius function because they do the same thing which

[00:05:48] Speaker 01:
perhaps on the face of it is not consistent with KSR.

[00:05:53] Speaker 00:
I would agree with your honor, and I'll shift to that issue.

[00:05:56] Speaker 00:
The board essentially put us into a catch-22.

[00:06:00] Speaker 00:
Our primary argument below was that Feldman's radius is a current zoom level.

[00:06:06] Speaker 00:
And just briefly on what Feldman described.

[00:06:08] Speaker 01:
But that's again a fact question.

[00:06:09] Speaker 01:
There's an interpretation of Feldman.

[00:06:12] Speaker 01:
They say Feldman doesn't show a zoom level request.

[00:06:17] Speaker 01:
And that's an interpretation of Feldman.

[00:06:22] Speaker 01:
It's hard to overcome the board's fact finding in that respect.

[00:06:27] Speaker 01:
I'm more interested in the question of whether it's obvious over Feldman since the prior art show requests for Zoom functions.

[00:06:40] Speaker 00:
OK, turning to that specific issue then.

[00:06:42] Speaker 00:
We introduced below overwhelming evidence that it would have been a routine design choice for a person of skill in the art to just use the zoom level either as an augmentation to the radius that was already in Feldman's request or to simply substitute it.

[00:06:56] Speaker 00:
There's the Badger reference that we introduced.

[00:06:58] Speaker 00:
That's a reference.

[00:06:59] Speaker 01:
I don't think the board has really disagreed with you about that, right?

[00:07:03] Speaker 00:
Right.

[00:07:04] Speaker 00:
But so what they did was on the interpretation of Feldman, they said that Feldman's radius, which we had argued was a current zoom level, but they said that that radius isn't a current zoom level, but it accounts for the zoom level.

[00:07:18] Speaker 00:
So we would have thought that that meant that the radius is a zoom level, provides the same information to the system, which is the scale of the map, which is why we argue that the radius was a zoom level.

[00:07:28] Speaker 00:
But if you accept that it wasn't, then what we did is we demonstrated to the board that it was routine in this art to use what is explicitly called a Zoom level in a request to provide benefits to the system, which is what area of the map is the user looking at, and how much detail do you want to provide the user.

[00:07:46] Speaker 00:
We identified that in our opposition to the motion to amend, and we buttressed it with expert testimony.

[00:07:53] Speaker 02:
Can you show me where you clearly argued that it would be a simple substitution

[00:07:58] Speaker 02:
That is, if we accept the board's finding that zoom level is not the same thing as radius, that would be a simple substitution to replace Feldman's radius with the zoom level of the plan.

[00:08:11] Speaker 00:
So I, 20, appendix 2054.

[00:08:13] Speaker 00:
2054.

[00:08:13] Speaker 00:
Yeah, 2054.

[00:08:16] Speaker 00:
We don't use the word substitution, your honor.

[00:08:20] Speaker 00:
I'll let you know that right off the bat.

[00:08:22] Speaker 00:
But what we do talk about is it's a predictable design choice.

[00:08:26] Speaker 00:
In my mind, a substitution versus a design choice, it's two sides of the same coin.

[00:08:31] Speaker 02:
Well, it seems like the board wasn't sure if you were making a simple substitution argument.

[00:08:38] Speaker 02:
Isn't that correct that they were unclear on whether that's what you were arguing?

[00:08:41] Speaker 00:
They expressed confusion, and I think that that was based on this catch-22.

[00:08:47] Speaker 00:
So at the time we were making our argument on obvious in light of the prior art, we said, this argument is an alternative argument, and it's only relevant if you assume that the radius is not a zoom level.

[00:08:57] Speaker 00:
Because we still today believe that, in Feldman at least, the radius is the zoom level.

[00:09:03] Speaker 00:
And so in that alternative world where there is a delta between the radius and the zoom level, then there's two reasons you would have done it.

[00:09:10] Speaker 00:
You would have included it because of the zoom level, that is.

[00:09:13] Speaker 00:
You would include it because it provides the benefits that the prior art describes to it, which is it identifies the area and the detail.

[00:09:19] Speaker 00:
That's a motivation to include it in addition to the radius.

[00:09:23] Speaker 00:
And then in this world that the board

[00:09:25] Speaker 00:
Adopted its final decision where the board effectively said the radius is the zoom level but it's not a zoom level in the terms of the claim and therefore it's Redundant to include zoom to include zoom level if you already have a radius That's what it's a design choice to just use that instead of using the you cite ksr to the board in your opposition Yeah, yet at 2054 where we cited to to to ksr Exactly.

[00:09:51] Speaker 00:
So I'm already at the pages.

[00:09:51] Speaker 00:
That's we've cited to ksr

[00:09:53] Speaker 00:
And that was supporting the initial argument that the prior art provided benefits and identified benefits that would have motivated using the Zoom level, which is identifying where on the map you should go and how much detail to provide.

[00:10:09] Speaker 02:
What is our standard of review for the board's determination that they were confused about whether you were making a simple substitution argument and they thought some of what you were arguing was conclusory?

[00:10:21] Speaker 02:
How do we review that?

[00:10:22] Speaker 00:
Um, I would, whether or not our expert testimony was conclusory, I think that would be a substantial evidence question because it's facts.

[00:10:31] Speaker 00:
And I would not, I don't, I don't jerk away from that, that standard because this is not conclusory expert testimony.

[00:10:36] Speaker 00:
Our expert at 2367 to 2373 walked through

[00:10:40] Speaker 00:
Several prior art references that all established what's conventional in this art, which is that you use zoom information as part of a request for map-based information.

[00:10:52] Speaker 00:
I'm confused, wait a minute.

[00:10:55] Speaker 01:
On 57, A57,

[00:10:57] Speaker 01:
The board recognized that conditioner asserts that including the zoom level would have been a predictable design choice, et cetera, et cetera.

[00:11:05] Speaker 01:
Quoting that.

[00:11:06] Speaker 01:
And then the answer to that is, but Feldman already achieves this by sending the perimeter 303 in the request.

[00:11:13] Speaker 01:
But that seems to say that it's not a predictable design choice because it achieves the same result.

[00:11:21] Speaker 00:
And I would argue that under case art, that's the reason to predictable design tricks, because it does the same thing.

[00:11:29] Speaker 00:
And it was, Feldman's system is somewhat unique because it uses the radius both to change the search area and the zoom.

[00:11:37] Speaker 00:
But what was conventional at that time, and would have been obvious to a person still in the art looking at Feldman,

[00:11:42] Speaker 00:
is to use the more conventional way, which is just to use the zoom level, whatever that is, itself.

[00:11:48] Speaker 00:
We identified six different references that said that.

[00:11:51] Speaker 00:
Our expert walked through in detail on that.

[00:11:53] Speaker 00:
I don't know how that could be conclusory, even under substantial evidence.

[00:11:56] Speaker 02:
I guess I'm confused, too.

[00:11:57] Speaker 02:
On 58, the board says, in sum, petitioner has not provided a sufficient articulated reasoning, supported by rational underpinnings,

[00:12:06] Speaker 02:
why one of ordinary skill in the art would have modified Feldman with any of the cited references citing KSR.

[00:12:14] Speaker 02:
What do I do with that and don't I have a pretty deferential standard of review of that conclusion?

[00:12:20] Speaker 00:
It is deferential, but it's not a rubber stamp.

[00:12:23] Speaker 00:
I still would submit that you need to look at the evidence we cited.

[00:12:27] Speaker 00:
We identified prior references.

[00:12:29] Speaker 00:
This isn't a case of missing limitation where you have an expert saying it would be obvious to add a limitation.

[00:12:33] Speaker 00:
The limitation is known.

[00:12:34] Speaker 00:
There's no dispute that it was known to use a Zoom level in a request for information, and there's never been a dispute that a person still in the act could do that.

[00:12:41] Speaker 00:
And so it was a simple design choice to, rather than use the radius, to use the zoom because, as our expert explained, the prior art references demonstrate that it allows for a user to conveniently identify this area on the map that's being searched and the level of detail.

[00:12:58] Speaker 00:
Even under a substantial evidence review, that should be enough to, under KSR's flexible approach to obviousness, to reverse the voice determination.

[00:13:08] Speaker 00:
With that, I'd like to reserve my remaining time, if possible.

[00:13:11] Speaker ?:
OK.

[00:13:17] Speaker 01:
Mr. Catalina.

[00:13:28] Speaker 04:
Good morning.

[00:13:29] Speaker 04:
May it please the court, Richard Catalina on behalf of Appellee UMAP Inc.

[00:13:34] Speaker 01:
So you've heard our discussion about this question of obviousness over Feldman and whether the board's reasoning is consistent with KSR.

[00:13:47] Speaker 01:
So it seems to be a problem here because they say it's not a simple design choice because the two things, that is radius and

[00:14:01] Speaker 01:
and Zoom achieve the same result.

[00:14:05] Speaker 01:
But that's not consistent with KSR, is it?

[00:14:11] Speaker 04:
It is consistent with KSR, but there is a fundamental difference between the radius and the zoom perspective view of Feldman.

[00:14:19] Speaker 04:
The radius defines this.

[00:14:21] Speaker 01:
Well, if they're the same thing, it's a simple substitution.

[00:14:25] Speaker 01:
They may not have used the words, but they talk about design choice and they cite KSR.

[00:14:30] Speaker 01:
If it's the same thing, then KSR says that's obvious, right?

[00:14:37] Speaker 01:
It's a simple design choice.

[00:14:39] Speaker 04:
Correct, Your Honor.

[00:14:40] Speaker 04:
It is, maybe I misspoke.

[00:14:43] Speaker 04:
It is not, in this case, the radius and the zoom perspective view are not the same thing.

[00:14:49] Speaker 04:
They are two different features of Feldman.

[00:14:53] Speaker 01:
Well, they're different features, but they achieve the same result, right?

[00:14:57] Speaker 01:
They do not.

[00:14:58] Speaker 01:
In what way don't they achieve the same result?

[00:15:00] Speaker 04:
The search, the search, the radius defines the search area.

[00:15:05] Speaker 04:
If a user of Feldman sets a radius, let's say a one mile,

[00:15:10] Speaker 04:
And it shows up on the map of Feldman.

[00:15:13] Speaker 04:
It's a radius of one mile.

[00:15:15] Speaker 04:
And then the perimeter about that radius that extends from the center point, the geolocation, that perimeter defines a search area, which Feldman demonstrates in its figures as a circle.

[00:15:27] Speaker 04:
Zoom, on the other hand, is something totally different.

[00:15:30] Speaker 04:
The zoom, by using the zoom function, a user is able to show what is displayed on the map.

[00:15:39] Speaker 04:
So a user can set, can use the zoom function initially to set a radius.

[00:15:47] Speaker 04:
And it may use other means to set a radius.

[00:15:51] Speaker 04:
Zoom function sets a radius.

[00:15:53] Speaker 04:
It may set the radius, but it's not the same as the radius, because once the radius is set, excuse me.

[00:16:01] Speaker 01:
But it achieves the same result, right?

[00:16:03] Speaker 01:
I mean, I didn't think there was much dispute about that.

[00:16:07] Speaker 04:
It does not achieve the same result, because the search area is defined by the radius.

[00:16:14] Speaker 04:
The zoom can always be adjusted, and the radius and the search area remains the same.

[00:16:20] Speaker 04:
Let me, if I may, Judge Seidler.

[00:16:23] Speaker 01:
The problem is with what the board says on A57.

[00:16:27] Speaker 01:
They recognize this is a design choice argument.

[00:16:31] Speaker 01:
And they say, but Feldman already achieves this by sending the perimeter in the request, which is basically saying it achieves the same result.

[00:16:40] Speaker 01:
Therefore, it's not a simple design choice, which seems, on the face of it, to be directly inconsistent with KSR.

[00:16:53] Speaker 04:
But the board says that, but in... Well, that's wrong, right?

[00:16:58] Speaker 01:
Well, that is wrong because the zoom perspective view, as defined by... The theory that it's not a design choice because it achieves the same result is wrong under KSR, right?

[00:17:10] Speaker 01:
Correct.

[00:17:11] Speaker 01:
Yeah, okay.

[00:17:12] Speaker 01:
So that's the problem we've got.

[00:17:15] Speaker 04:
But still, the...

[00:17:17] Speaker 04:
zoom perspective view is different than the radius, which defines the search area.

[00:17:22] Speaker 04:
The fact that the zoom perspective view may be used in some instances to initially indicate a radius and thereafter the zoom may be modified or the radius modified by using other means doesn't mean that the zoom perspective view, however that is encompassed in whatever data, is sent in the request.

[00:17:44] Speaker 04:
They're different elements performing different functions.

[00:17:50] Speaker 04:
And if I may, Judge, to help maybe explain this and put this in a different perspective, the 727 patent, UMAPS patent, the reason why a current zoom level is submitted with the request is because the current zoom level defines the search area.

[00:18:11] Speaker 04:
Feldman, on the other hand,

[00:18:13] Speaker 04:
the search area is defined by the radius that defines the perimeter.

[00:18:19] Speaker 04:
So if there are two completely different things, and I'd point to the 727 patents in figures three, and the board understood that, that the search area in the 727 patent is based on screen attribute information of which a perspective or a zoom level is an element.

[00:18:41] Speaker 02:
Now, can we come back to KSR because I'm definitely confused now.

[00:18:47] Speaker 02:
The board found that the zoom level and the radius are different things.

[00:18:51] Speaker 02:
Correct.

[00:18:52] Speaker 02:
I think it may even have been conceded possibly by snap below that they are different things.

[00:18:58] Speaker 02:
But it sounds like you just conceded that the board made a finding or conclusion of law that's inconsistent with KSR.

[00:19:06] Speaker 02:
So if that's the case, why don't you have a problem here?

[00:19:11] Speaker 04:
What the board held is that there is a relation between the zoom perspective view and the radius.

[00:19:22] Speaker 04:
The board never says that they're the same thing or that one may be replaced in lieu of the other.

[00:19:29] Speaker 04:
In fact, the board says that the

[00:19:32] Speaker 04:
the zoom perspective view does not achieve, would not achieve what the radius does, because it is something different.

[00:19:40] Speaker 04:
It's just a feature or function that may be used initially to establish what that radius may be for the search area.

[00:19:47] Speaker 02:
Does SNAP adequately argue that in the alternative, this is a KSR case where it's a simple design choice, a simple substitution, essentially, if you don't buy that Feldman's

[00:20:02] Speaker 02:
radius is the zoom level of your patent then it would be a simple design choice simple substitution did they argue that and if so what did the board say about it well they still to answer your question um judge start

[00:20:17] Speaker 04:
That would have to show that there is a motivation.

[00:20:20] Speaker 04:
Did they argue it?

[00:20:21] Speaker 02:
No.

[00:20:22] Speaker 02:
They did not argue design choice under KSO.

[00:20:26] Speaker 04:
They made an argument that it would have been conventional on the appeal.

[00:20:31] Speaker 04:
That was never argued before the board below.

[00:20:33] Speaker 04:
They argued that it would be obvious to modify Feldman to include.

[00:20:40] Speaker 01:
Oh, wait.

[00:20:41] Speaker 01:
The board itself says, petitioner asserts that including the Zoom level would have been a predictable design choice.

[00:20:48] Speaker 01:
The board says they argued it.

[00:20:51] Speaker 04:
OK, good.

[00:20:54] Speaker 04:
They did make that argument, but what they did not show was the motivation to combine the other references to modify Feldman, Your Honor.

[00:21:04] Speaker 02:
But did the board have any reason for why they failed to show motivation other than saying the radiance of Feldman already does it?

[00:21:15] Speaker 02:
Can you repeat the question, Judge?

[00:21:16] Speaker 02:
Sure.

[00:21:19] Speaker 02:
One reading of the board seems to be that the only failing they found in SNAP's effort to show motivation to combine

[00:21:28] Speaker 02:
is that the board found that Feldman's radius already does the zoom level.

[00:21:34] Speaker 02:
So no one would be motivated to replace Feldman's radius with a zoom level because it's already accomplished.

[00:21:43] Speaker 02:
Is that what the board said?

[00:21:46] Speaker 02:
And isn't that error if they did?

[00:21:49] Speaker 04:
I don't read that in the board's decision, Your Honor.

[00:21:52] Speaker 04:
I don't read that the board said that the radius

[00:21:56] Speaker 04:
accomplishes the same thing as a Zoom level.

[00:22:02] Speaker 02:
Would that be an error if that was their reasoning?

[00:22:08] Speaker 04:
I don't see it as being an error, Your Honor.

[00:22:11] Speaker 01:
Why isn't that an error on the KSR?

[00:22:15] Speaker 03:
If the factual finding that supports the board's decision that there's a lack of motivation to combine is a legally impermissible factual finding under KSR, then there's both an error of law and there's a lack of substantial evidence.

[00:22:33] Speaker 03:
Because that factual finding is null and void if it's not a legally permissible one under KSR.

[00:22:39] Speaker 03:
And you're left with nothing else on lack of motivation to combine.

[00:22:45] Speaker 03:
Why isn't that the correct way to look at this, assuming that that's what's happened?

[00:22:51] Speaker 04:
Again, I go back to your honor that what SNAP failed to do was to provide the motivation.

[00:23:00] Speaker 03:
Other than the convenience.

[00:23:02] Speaker 03:
But that's not, you're trying to go back and not really answer the hypothetical.

[00:23:06] Speaker 03:
Let's assume they did make a motivation to the mind argument that rested on the notion that this was a conventional choice, that these two things were interchangeable.

[00:23:18] Speaker 03:
And the board rejecting that said that actually you would never do that because it does the same thing.

[00:23:28] Speaker 03:
And that factual determination is not one that KSR allows anymore.

[00:23:33] Speaker 03:
So the board has not made any relevant legal finding that's supported by law on motivation to come on.

[00:23:41] Speaker 03:
Doesn't that at least mean the case needs to be vacated and remanded?

[00:23:49] Speaker 04:
I would say no, Your Honor.

[00:23:50] Speaker 04:
I would say that there was substantial evidence to support the board's findings.

[00:23:55] Speaker 04:
What is that substantial evidence?

[00:23:58] Speaker 04:
The substantial evidence was that, again, I keep, and I apologize that maybe I'm not answering your question directly, but I still go back to the motivational aspect, where SNAP's expert says that it was just merely convenient, would have been convenient to combine.

[00:24:15] Speaker 04:
As to the conventional.

[00:24:16] Speaker 04:
That can be a motivation to combine, right?

[00:24:20] Speaker 03:
That it's convenient to combine.

[00:24:22] Speaker 03:
Isn't that often?

[00:24:23] Speaker 03:
It's design choice.

[00:24:25] Speaker 03:
Design choice is often a motivation to combine.

[00:24:28] Speaker 04:
But following that, though, other than to say it's a conclusory statement that it's convenient, what are the factual underpinnings?

[00:24:36] Speaker 03:
That's their job to opine on why you would do it.

[00:24:41] Speaker 03:
I don't think it's conclusory when you look at this and say they do the same thing.

[00:24:44] Speaker 03:
It would be merely a design choice.

[00:24:46] Speaker 03:
Conclusory is just there would be a motivation to combine without an explanation.

[00:24:53] Speaker 04:
Well, the board in this case was seeking more

[00:24:57] Speaker 04:
to explain exactly why it would be convenient, other than to just say it would be convenient.

[00:25:05] Speaker 04:
The other problem with Feldman, Your Honor, is that SNAP argues that Feldman itself provides the motivation to either replace or modify itself with other references.

[00:25:25] Speaker 04:
The problem with that

[00:25:26] Speaker 04:
is that Feldman's radius defines the search area.

[00:25:33] Speaker 04:
And Feldman also discusses or discloses a Zoom perspective view.

[00:25:40] Speaker 04:
If Feldman provides the motivation, as argued by Snap, and Feldman also discloses a Zoom perspective view, then why would not have Feldman included?

[00:25:55] Speaker 04:
a zoom perspective view in the request.

[00:25:57] Speaker 03:
I know these are amended claims, but were the original claims being asserted in litigation anywhere?

[00:26:03] Speaker 04:
Yes.

[00:26:04] Speaker 03:
What's the stage of that?

[00:26:06] Speaker 04:
The litigation has been stayed in light of the IPR that was filed.

[00:26:13] Speaker 03:
Were there any motions yet?

[00:26:14] Speaker 04:
There were initial motions on the pleadings.

[00:26:17] Speaker 04:
Has anybody challenged them as ineligible?

[00:26:21] Speaker 04:
No.

[00:26:22] Speaker 04:
No.

[00:26:30] Speaker 04:
Are there any additional questions on this point, Your Honor?

[00:26:34] Speaker 01:
Hearing none, thank you.

[00:26:36] Speaker 04:
Okay.

[00:26:36] Speaker 04:
At this point, I will rest on the balance of our brief that's been filed.

[00:26:41] Speaker 04:
Okay.

[00:26:42] Speaker 04:
Thank you.

[00:26:43] Speaker 01:
Mr. Speed, you have a couple minutes.

[00:26:54] Speaker 00:
Thank you, Your Honor.

[00:26:55] Speaker 03:
Just briefly, just... Why didn't you challenge these embedded clients as ineligible?

[00:27:01] Speaker 00:
The amended claims have not yet issued.

[00:27:04] Speaker 03:
No, but in the IPR, I mean, that's a basis for arguing that the amendment shouldn't be granted because they're ineligible.

[00:27:10] Speaker 03:
We've affirmed that several times.

[00:27:12] Speaker 03:
Why didn't you make that challenge?

[00:27:14] Speaker 03:
These seem like typical GUI claims that we've found ineligible over and over again.

[00:27:19] Speaker 00:
I agree with everything you just said.

[00:27:21] Speaker 00:
I don't know why we did not challenge them below.

[00:27:24] Speaker 00:
But we did challenge them, as obvious, given the prior art that we had.

[00:27:27] Speaker 00:
And on the question of did we raise the design choice, I just wanted to highlight a few additional parts of the appendix just to make sure we're on the same page.

[00:27:35] Speaker 00:
Appendix 2373, that's paragraph 88 of our expert.

[00:27:39] Speaker 00:
He explicitly, having gone through all the references that he had there, said essentially,

[00:27:43] Speaker 00:
As I've discussed above, it was conventional or routine to do this, and therefore it would have been a predictable design choice to do so.

[00:27:51] Speaker 00:
In our reply in opposing the motion to amend, we explained in detail at appendix 2630 to 2631 that, given all the prior art that was in the record, it would be, quote, a known predictable technique and common design choice that was used in prior art systems.

[00:28:10] Speaker 00:
We then cited to our opposition, put in a paragraph, parenthetical that said, citing KSR.

[00:28:14] Speaker 00:
So we certainly put it on the table that if the board was right that the Zoom, the radius of the Zoom level are essentially the same, then just switching one or the other would have been obvious to a person who's still in the yard at this time.

[00:28:26] Speaker 00:
Unless there's any questions, I yield the remainder by 30 seconds.

[00:28:30] Speaker 01:
Okay.

[00:28:30] Speaker 01:
Thank you.

[00:28:30] Speaker 01:
Thank you.