[00:00:00] Speaker 05:
Is it Yanay?

[00:00:01] Speaker 05:
Am I saying your name right?

[00:00:02] Speaker 02:
Yanay.

[00:00:03] Speaker 05:
Yanay.

[00:00:03] Speaker 05:
Mr. Yanay, please proceed.

[00:00:06] Speaker 02:
Thank you.

[00:00:07] Speaker 02:
May it please the court, Guy Yanay from Procon, for the appellants.

[00:00:11] Speaker 02:
This appeal presents two independent issues.

[00:00:14] Speaker 02:
The first is the board's conflicting interpretations of an additional transport block size for purposes of prior art versus written description.

[00:00:25] Speaker 02:
It's either two or it's one.

[00:00:27] Speaker 02:
It can't be both.

[00:00:28] Speaker 02:
And if two transport block sizes are required to be transmitted in the first message, there is no written description for that in the specification.

[00:00:38] Speaker 02:
On the other hand, if only one is required as disclosed in the specification, if at all, the claims are obvious.

[00:00:46] Speaker 02:
If the first is the case, they like grid description support, then a reversal is required.

[00:00:52] Speaker 02:
And if the board applied an incorrect interpretation for the obvious analysis, a remand is required.

[00:00:59] Speaker 02:
And the second independent issue, which has nothing to do with the transport block size issue, is the dependent claims 69 and 77 with the another message and the message preceding the another message.

[00:01:12] Speaker 02:
that I'd like to get to, which also lack written description.

[00:01:15] Speaker 02:
And that requires a reversal.

[00:01:18] Speaker 02:
So I'd like to start with the issue of the independent claims.

[00:01:22] Speaker 02:
And by the way, these were amended claims.

[00:01:24] Speaker 02:
And so it was Sisvel's burden to demonstrate that they satisfy the requirements of the- Who was Sisvel?

[00:01:32] Speaker 02:
I'm sorry.

[00:01:33] Speaker 02:
3G.

[00:01:34] Speaker 00:
I say 3G.

[00:01:37] Speaker 00:
And who was Sisvel?

[00:01:41] Speaker 02:
I believe it's just a trade name for 3G.

[00:01:44] Speaker 02:
It's one in the same, I believe.

[00:01:47] Speaker 02:
This is a network of patents that are being asserted by a single entity called CISVEL, and this is, I think 3G is just a corporate name of theirs.

[00:01:56] Speaker 02:
We've taken to calling them CISVEL, and I hope nobody's offended by that.

[00:02:04] Speaker 02:
So it was the patent owner's burden to show that the claims are supported based on 37 CFR 42121, et cetera.

[00:02:16] Speaker 02:
They have claimed that the claims require a first message to simultaneously include two transport block sizes, even though the claims don't say that.

[00:02:26] Speaker 02:
The only transport block size mentioned in the claims is this one additional transport block size.

[00:02:31] Speaker 02:
But the board adopted Space Bell's interpretation and faulted the prior art for not disclosing a transport block size

[00:02:40] Speaker 02:
to which the additional block size was additional.

[00:02:44] Speaker 05:
So are you focused on claims 66 and 74 now?

[00:02:47] Speaker 05:
Please help me ground your argument, because we've got different claims.

[00:02:50] Speaker 02:
Yes, you are.

[00:02:51] Speaker 02:
I'm referring to the independent claims and the revised motion to amend claims 66 and 74.

[00:02:56] Speaker 05:
OK, so you're not talking about 69 and 77 now.

[00:02:59] Speaker 05:
You're talking about 66 and 74.

[00:03:01] Speaker 02:
Yes, I would like to get those dependent claims later.

[00:03:04] Speaker 02:
I've gone back to talking about the independent claims.

[00:03:06] Speaker 05:
I want to make sure.

[00:03:07] Speaker 02:
So the specification, including the portions of the specification that the board cited for support, does not talk about transmitting to transport block sizes.

[00:03:23] Speaker 02:
In column 10, in column 8, it talks about an increased message block size or a larger block size, but nowhere does it talk about transmitting to transport block sizes.

[00:03:33] Speaker 01:
When you point out that the burden was on here the movement, CIS bill, on the amended claims, does that mean that the board is limited to looking at the portions of the written description that the movement expressly called out, or is the board free to look at the entire written description?

[00:03:54] Speaker 01:
and search for whether, as a factual matter, there's adequate written support.

[00:04:00] Speaker 02:
I would say it is their burden in the motion to have the CFR here.

[00:04:07] Speaker 02:
And I believe the motion must cite to the portions of the specification.

[00:04:12] Speaker 01:
So in your view, is the board to ignore what it sees in the written description if it's not specifically called out in the motion?

[00:04:22] Speaker 02:
I don't believe that was the case here that the board referred to portions of the specification that Siswell did not cite.

[00:04:28] Speaker 02:
So the board didn't go beyond what was cited by... I thought you would argue that they did, that that's monistic.

[00:04:38] Speaker 02:
No, the column 8 and column 10 that I refer to now are cited in Sisvel's briefing, and those do not support two transport block sizes.

[00:04:57] Speaker 02:
When it came to the prior art,

[00:05:00] Speaker 02:
analysis.

[00:05:02] Speaker 02:
The board, though, despite the fact that the specification did not disclose these two transport block sizes in a single first message, the board adopted a very narrow interpretation of the additional transport block size and required the prior art to show transmitting two transport block sizes in a single first message.

[00:05:25] Speaker 02:
And that is in

[00:05:29] Speaker 02:
in contrast to how it handled the original claims.

[00:05:32] Speaker 02:
The original claims, which have been invalidated, refer to an additional transport format information.

[00:05:39] Speaker 02:
And for those claims, the board looked at the prior art that set one RLC size in the technical specification and said, that suffices for the additional transport format information.

[00:05:51] Speaker 02:
And yet, when we get to these amended claims, suddenly, additional means

[00:05:55] Speaker 02:
two of these.

[00:05:56] Speaker 02:
So that's just in terms of how it handled the word differently, although in a slightly different phrase.

[00:06:05] Speaker 02:
And by the way, those original claims are not on appeal.

[00:06:10] Speaker 02:
The invalidation of those claims has not been challenged.

[00:06:13] Speaker 02:
And the board's finding that it would have been obvious to increase the message size, that's in Appendix 5051, has also not been challenged.

[00:06:21] Speaker 01:
The way I read the board's rejection of your written description argument was that you narrowly argued, essentially, that the written description support

[00:06:31] Speaker 01:
for the new claims had to be in hoc verba, had to be essentially verbatim what the claims recite.

[00:06:38] Speaker 01:
And the board, I think, correctly rejected that argument.

[00:06:42] Speaker 01:
And they didn't really see anything else to your argument.

[00:06:45] Speaker 01:
What is wrong with that reading of what the board said?

[00:06:49] Speaker 02:
Well, firstly, again, this was Sitchfield's burden.

[00:06:52] Speaker 02:
So by saying they haven't carried their burden,

[00:06:54] Speaker 02:
It wasn't it wasn't the petitioners burden to show there was no support We said they had not made us made out a case for support.

[00:07:03] Speaker 02:
And so they felt to carry the burden and I think the I Mean that's that was the problem here.

[00:07:13] Speaker 02:
We said they haven't made a case for support And so that they felt to carry the burden.

[00:07:18] Speaker 02:
It wasn't our burden to prove.

[00:07:20] Speaker 02:
There was no written written description support

[00:07:29] Speaker 02:
The other error in the board's prior art analysis was that the board strictly required the transport block size to be actually transmitted.

[00:07:41] Speaker 02:
And that's something that's really surprising because the board agreed, even SISVEL agreed, that the prior art disclosed transmitting an RLC size

[00:07:53] Speaker 02:
in this first message.

[00:07:54] Speaker 02:
And that's very, very closely related to the block size.

[00:07:58] Speaker 02:
Sometimes you add a header to that packet, sometimes you don't.

[00:08:00] Speaker 02:
But in many instances, the transport block size is identical to the RLC size.

[00:08:07] Speaker 02:
And so we have the prior art that says that the base station sends the RLC size to the mobile.

[00:08:14] Speaker 02:
And the mobile sets the transport block size equal to the RLC size.

[00:08:18] Speaker 02:
And yet the board said, no, no, no, a calculation

[00:08:22] Speaker 02:
is insufficient.

[00:08:23] Speaker 02:
So first of all, setting one thing equal to another is not a calculation.

[00:08:27] Speaker 02:
That's not an arithmetic being calculated.

[00:08:31] Speaker 02:
If I'm driving on the highway, and I see a sign that says speed limit 60 miles an hour, and I set my cruise control to 60 miles an hour, I haven't done any arithmetic.

[00:08:40] Speaker 02:
That's not a mathematical calculation.

[00:08:42] Speaker 02:
And that's exactly what's going on here.

[00:08:43] Speaker 02:
That is not calculating the same numbers being transmitted.

[00:08:47] Speaker 02:
So for one thing, that's anticipated, but because the same number is actually set.

[00:08:53] Speaker 02:
But secondly, the board also ignored evidence that it would have been obvious to do that.

[00:08:59] Speaker 02:
We had our expert, Dr. Olivier, testify that sending the transport block size in lieu of the RLC size would have been trivially obvious.

[00:09:09] Speaker 02:
That's in Appendix 3140, and the board did not consider that evidence.

[00:09:14] Speaker 02:
And in fact, the embodiments in this specification, almost all,

[00:09:20] Speaker 02:
I would say all, because those are the ones that I could figure out, but I don't want to be too categorical about it.

[00:09:24] Speaker 02:
But they refer to indicating to the mobile that it is permitted to use a larger transport block size.

[00:09:33] Speaker 02:
For example, the third embodiment, the first embodiment, for example, column 13, lines 10 to 17, other places.

[00:09:44] Speaker 02:
Specification itself does not make this distinction that the board found critical.

[00:09:49] Speaker 02:
So the disclosure of the prior art is commensurate to the scope of the claims here.

[00:10:04] Speaker 02:
I want to touch upon the

[00:10:08] Speaker 05:
Are you going to talk about the dependent claim?

[00:10:10] Speaker 02:
Yes, I would like to move to that.

[00:10:11] Speaker 02:
Yes.

[00:10:12] Speaker 02:
Thank you, Your Honor.

[00:10:13] Speaker 02:
I would like to turn to those.

[00:10:15] Speaker 02:
These claims 69 and 77 introduce two additional messages, the another message and the message preceding the another message.

[00:10:25] Speaker 02:
And the another message omits start values because those were transmitted in the preceding message.

[00:10:33] Speaker 02:
The only disclosure, there's no dispute that the only disclosure for that another message that omits these values is the RRC connection request, which is the first

[00:10:46] Speaker 02:
transmission in figure 15.

[00:10:49] Speaker 02:
The second transmission in figure 15 is the connection setup.

[00:10:54] Speaker 02:
That's the first message.

[00:10:55] Speaker 02:
And then the last of the transmissions in figure 15 is the connection setup complete.

[00:11:00] Speaker 02:
That's the second message.

[00:11:03] Speaker 02:
And so the only disclosure for this another message is

[00:11:07] Speaker 02:
one that precedes the first message.

[00:11:09] Speaker 02:
And yet the claims, when you trace through the dependencies, require that the base station tell the mobile, you can use this new format.

[00:11:19] Speaker 02:
And the new format is omitting this information.

[00:11:22] Speaker 02:
So the claims require that just another message must come after the first message, because that's the message that tells the mobile that it can use this new format.

[00:11:33] Speaker 02:
So there's this irreconcilable paradox between the disclosure of the specification that requires another message to precede the first message and the claims that require this another message to come after the first message.

[00:11:55] Speaker 02:
as I said, requires a reversal because again, the amended claims were not supported by the specification.

[00:12:05] Speaker 02:
Are there questions as I reach the end of my time?

[00:12:08] Speaker 05:
Okay, we'll save the remainder of your time for rebuttal.

[00:12:10] Speaker 05:
Thank you, Mr. Wright.

[00:12:20] Speaker 04:
Thank you, Your Honor.

[00:12:22] Speaker 04:
Alan Wright, Devin Law Firm for the Appellee 3G.

[00:12:26] Speaker 04:
May it please the court.

[00:12:28] Speaker 04:
We agree that there are two basic arguments here, although there are a lot of sub-arguments under each one with regard to the 112 first paragraph support for the various claims, both the independent claims as well as the dependent claims.

[00:12:43] Speaker 04:
And then there is the issue regarding whether or not the board erred.

[00:12:48] Speaker 04:
regarding the prior art in applying the claim instruction.

[00:12:52] Speaker 05:
Thank you for that summary.

[00:12:54] Speaker 05:
If you don't mind, I'd like to ask you to start with whether there was written description support for the dependent claims, claims 69 and 77, I believe.

[00:13:04] Speaker 03:
Certainly.

[00:13:05] Speaker 05:
And in particular, the board's conclusion regarding whether the steps in those claims needed to be performed in the order in which they were articulated,

[00:13:16] Speaker 05:
Or could they be taken out of order?

[00:13:18] Speaker 05:
Would you mind starting with that argument?

[00:13:20] Speaker 04:
Not at all, Your Honor.

[00:13:21] Speaker 04:
So the basis for the dependent claims is in what has been referred to as the fourth embodiment and also figure 15, which supports the fourth embodiment.

[00:13:36] Speaker 04:
And what you will see in figure 15 is essentially there are

[00:13:44] Speaker 04:
a number of transmissions that go back and forth between the UTRAN, which is the network and the UE, which is the user device.

[00:13:52] Speaker 04:
And you will see on there that there are three transmissions.

[00:13:57] Speaker 04:
The first is the RRC connection request that goes from the UE to the UTRAN.

[00:14:01] Speaker 04:
You will see there's an RRC connection setup transmission from the UTRAN back to the UE, and there's an RRC connection setup complete transmission back to the UTRAN again.

[00:14:12] Speaker 04:
There is also a initial direct transfer message that is sent from the UTRAN to the UE that is not part of figure 15, but it is disclosed in the patent specification.

[00:14:27] Speaker 04:
Specifically, I can tell you where that is.

[00:14:30] Speaker 04:
It's column 13.

[00:14:36] Speaker 04:
Column 13, and if you look specifically at the fourth embodiment, it says,

[00:14:42] Speaker 04:
It talks about start values are also transmitted in the initial direct transfer message.

[00:14:47] Speaker 04:
So there is an initial direct transfer message, I don't believe that that's.

[00:14:50] Speaker 05:
OK, let me, you're maybe a little too in the weeds for me.

[00:14:53] Speaker 05:
Am I right in concluding that the board found that these steps did not have to occur in order?

[00:15:01] Speaker 05:
And in particular, the first message from independent claim 66 didn't necessarily have to be first in time.

[00:15:07] Speaker 03:
Is that a correct assessment?

[00:15:08] Speaker 03:
Yes, that is correct.

[00:15:09] Speaker 05:
OK.

[00:15:10] Speaker 05:
So the board found they don't have to occur in

[00:15:14] Speaker 05:
order, right?

[00:15:16] Speaker 04:
First and second were delineators that separated the two messages.

[00:15:20] Speaker 04:
There was a first message.

[00:15:21] Speaker 04:
There was a second message.

[00:15:23] Speaker 04:
There was then the additional language about another message.

[00:15:27] Speaker 05:
So the board found these steps don't have to occur in order.

[00:15:29] Speaker 05:
Correct.

[00:15:30] Speaker 05:
And just to be clear, I mean, I realize these are nested defendant claims.

[00:15:34] Speaker 05:
But I started from a position that neither of you argued, which is we have case law that says in a method claim,

[00:15:39] Speaker 05:
the steps don't have to be performed in order, as a presumption, in fact, that they don't have to be performed in order.

[00:15:44] Speaker 05:
So you all didn't start with that in your briefing, but that's where I started when I looked at this issue.

[00:15:48] Speaker 05:
OK, so then if the steps don't have to be performed in order as the starting point, we, though, have case law that says, unless there are indicators within the claims themselves that suggest they do have to be performed in order, like, for example, the word first or second, we actually have cases that you all didn't cite them to us.

[00:16:07] Speaker 05:
But we have cases that talk about how those kinds of words actually have to be given meaning in determining sequencing and order.

[00:16:15] Speaker 05:
So why is the board correct that despite terms like first and second, we can take those things out of order?

[00:16:23] Speaker 05:
Certainly, Your Honor, and I believe the case law that discusses... And I would have loved it if you all had actually written in your briefs what I just did, and neither of you did.

[00:16:30] Speaker 04:
Certainly, Your Honor, understood.

[00:16:31] Speaker 04:
I correct that there are method claims and they don't necessarily have to be in a certain order unless there is information in the claim or something in the specification that says that they do have to be in an order.

[00:16:42] Speaker 04:
The first and second, there's nothing in the claims directly that says the first and second have to be in a specific order.

[00:16:50] Speaker 04:
They were simply delineated as such.

[00:16:52] Speaker 05:
Well, except the words first and second, right?

[00:16:54] Speaker 04:
But in that particular case, those first and second messages

[00:16:58] Speaker 04:
In a certain order there was a first and a second there But as far as the another message in the preceding another message There was nothing that they didn't say third.

[00:17:07] Speaker 04:
They didn't say fourth They didn't they didn't claim those messages as having a specific number So our position is and the board found what I can see basis is their antecedent basis

[00:17:21] Speaker 05:
in those limitations referring back to the things that already occurred.

[00:17:26] Speaker 05:
Because antecedent basis is one of the many things that we've said overcomes the presumption in method claims.

[00:17:33] Speaker 05:
I'm a little worried, because I think there is antecedent basis here.

[00:17:35] Speaker 05:
And that's causing me pause about the board's decision that you could take these things out of order.

[00:17:42] Speaker 04:
Certainly, Your Honor.

[00:17:43] Speaker 04:
So looking at Claim 69, for example, it says, where in the new message format adapts a message format by emitting data, wherein another message is transmitting using the adapted message format.

[00:17:56] Speaker 04:
That certainly indicates that there is some relationship between the new message format and the another message format using the adapted message format.

[00:18:08] Speaker 04:
As far as the first and second message, I don't believe that there is

[00:18:12] Speaker 04:
There is an antecedent there as far as there's first and second, but I believe that's only to delineate between the two messages.

[00:18:20] Speaker 04:
In fact, they do follow based on figure 15.

[00:18:24] Speaker 04:
But the another message and the preceding message do not necessarily have any antecedent relationship with the first and second message.

[00:18:33] Speaker 01:
Are you saying there is some restriction on the order of these four messages

[00:18:40] Speaker 01:
That is, the first has to come before the second, but the first and second together can come after the other two messages?

[00:18:48] Speaker 04:
Is that your position?

[00:18:49] Speaker 04:
That's correct, Your Honor.

[00:18:50] Speaker 04:
I think that's a fair summary.

[00:18:52] Speaker 01:
Are you arguing that the, quote, second message can come before the first message?

[00:18:56] Speaker 04:
I don't believe so, Your Honor.

[00:18:57] Speaker 04:
The second message would come after the first message.

[00:18:59] Speaker 01:
It's just where those two end up relative to the other two messages.

[00:19:02] Speaker 01:
That's correct, Your Honor.

[00:19:03] Speaker 01:
OK.

[00:19:04] Speaker ?:
Thank you.

[00:19:07] Speaker 04:
So I think I addressed Your Honor's question.

[00:19:11] Speaker 05:
Well, not really, because I'm looking at the claims.

[00:19:13] Speaker 05:
And 66 says, in it, at least one available configuration.

[00:19:17] Speaker 05:
Then 68 says, wherein the at least one available configuration pre-defines configuration mode.

[00:19:25] Speaker 05:
Don't you agree that claim 68 depends on 66?

[00:19:28] Speaker 05:
And the the at least one available configuration has to refer back to claim 66 for antecedent basis?

[00:19:36] Speaker 03:
Yes, Your Honor, that's correct.

[00:19:38] Speaker 05:
Okay, so we have order there, right?

[00:19:41] Speaker 03:
Yes, Your Honor.

[00:19:41] Speaker 05:
And then we have claim 68, which also says a predefined configuration mode.

[00:19:46] Speaker 05:
Then you have claim 69, which depends on 68, and says the predefined configuration mode.

[00:19:52] Speaker 05:
So again, isn't that antecedent basis referring back?

[00:19:56] Speaker 04:
Yes, Your Honor, and I think... So why don't they have to be performed in order?

[00:20:02] Speaker 04:
The first, if I understand your question correctly, the first and second messages do have to be performed in that order.

[00:20:11] Speaker 04:
And excuse me, I'm trying to get to figure 15.

[00:20:23] Speaker 04:
So if you're looking at figure 15, you're going to receive information in the RRC connection setup indicating the available PRACH configuration.

[00:20:34] Speaker 04:
So you are receiving information at that point from the UTRAN at the UE saying that there are certain configurations that you can use.

[00:20:42] Speaker 04:
You can use the legacy configuration or you can use this new configuration which includes the larger block size.

[00:20:51] Speaker 04:
The ROC connection setup complete message, which is the second message, returning back to the UTRAN, will use that specific information regarding the configuration setup.

[00:21:04] Speaker 04:
So in that regard, those two are in an order because you have to, in order for the UV to send the connection setup complete message back to the UTran, it must have decided and selected which of the available pratch configurations it's going to use.

[00:21:22] Speaker 04:
The connection setup and the initial transfer.

[00:21:28] Speaker 05:
Okay, let me just try and see if I can explain precisely what my problem is.

[00:21:32] Speaker 05:
The board found RRC connect request is quote another message end of quote, right?

[00:21:38] Speaker 05:
That's correct.

[00:21:40] Speaker 05:
But the claims require the quote another message be transmitted using the adapted message format.

[00:21:47] Speaker 05:
Is that fair?

[00:21:48] Speaker 05:
Do you agree with that?

[00:21:58] Speaker 05:
I mean, I think that's what the claims expressly say, so I'm not sure how you can not agree with that.

[00:22:02] Speaker 03:
Yes, that's correct.

[00:22:03] Speaker 05:
OK.

[00:22:04] Speaker 05:
So then once you agree with that, the problem is the adaptive message format.

[00:22:09] Speaker 05:
This is not sent to the UE until the RRC connection set up, i.e.

[00:22:15] Speaker 05:
the first message.

[00:22:16] Speaker 05:
So I think that we have some inherent ordering in the language of the claims

[00:22:21] Speaker 05:
based on the another message which has to be transmitted using a particular format and that has to occur after like I don't see how that could occur before even though it doesn't say third right it doesn't say third message when it says another message because of the format it uses I think inherent in the architecture it has to come after and that's what's concerning me and that's what I think the board

[00:22:46] Speaker 05:
Didn't properly address.

[00:22:48] Speaker 05:
That's the that's the problem.

[00:22:49] Speaker 05:
I'm having I understand your I'll be honest with you It's the only problem having with the case so if we spend all our time on it You're gonna be just fine with me right you know so not to worry about all the other stuff But I am having a problem with this part sure I understand your honor.

[00:23:01] Speaker 04:
I my understanding is that the the the

[00:23:04] Speaker 04:
The messages one and two require a certain order.

[00:23:08] Speaker 04:
The another message and the preceding message, my understanding is that did not require the specific order that it could be the different order.

[00:23:15] Speaker 04:
But I do understand your position regarding that another message is transmitted using the adapted message format, which does.

[00:23:23] Speaker 05:
It's not my position.

[00:23:24] Speaker 05:
That's what the claim says.

[00:23:24] Speaker 04:
That's what the claim says.

[00:23:26] Speaker 05:
It's not position.

[00:23:27] Speaker 05:
It's claim language.

[00:23:28] Speaker 05:
And that, to me, suggests an ordering that is required

[00:23:33] Speaker 05:
that wasn't addressed by the board.

[00:23:35] Speaker 05:
Now, if that's what's troubling me, tell me what the result is.

[00:23:38] Speaker 05:
Do I vacate and remand for the board to reconsider in light of that, or do I reverse outright?

[00:23:43] Speaker 05:
Because I'm not sure that the reference... I think it might answer the written description question.

[00:23:54] Speaker 04:
I think the written description shows that there are several messages that go on there.

[00:23:59] Speaker 04:
I certainly understand your concern regarding that.

[00:24:01] Speaker 04:
And I would think that that is something that would require a remand to the board if there was a problem with that particular.

[00:24:08] Speaker 05:
Why would it be a remand and not a reversal?

[00:24:09] Speaker 05:
Because we all agree that the specification discloses messages.

[00:24:15] Speaker 05:
It seemed to me the board's finding was it didn't require the ordering.

[00:24:19] Speaker 05:
And so if the messages are there,

[00:24:23] Speaker 05:
and they're allowed to be taken out of order.

[00:24:25] Speaker 05:
Why isn't this a reverse on this written description issue?

[00:24:29] Speaker 04:
I think that the issue is that they added another message in the preceding message.

[00:24:35] Speaker 04:
I think the board focused on the earlier RRC connection request in the initial transfer message, which is not shown in Figure 15.

[00:24:46] Speaker 04:
But I believe that the support is there for the

[00:24:50] Speaker 04:
the four different messages, message one, message two, three, and four.

[00:24:55] Speaker 04:
I see your concern regarding the ordering of them and the claim language.

[00:25:00] Speaker 04:
But I believe that if you had the RRC connection request, if you had another message later, you could still have another message that is using this adapted message format.

[00:25:11] Speaker 04:
I don't know that it's necessary.

[00:25:13] Speaker 04:
I don't know if perhaps the board just misspoke when it was talking about that particular message as being the other message.

[00:25:19] Speaker 04:
or if there is enough support here for another message even after this that would use the corrective form.

[00:25:25] Speaker 05:
So just to be clear, so you're arguing, you see my concern about the antecedent basis and how the messages are generated, and you see how that causes me some concern with the board's conclusion

[00:25:36] Speaker 05:
about the ordering of the steps.

[00:25:38] Speaker 05:
But what you're saying is there may still be a basis for the board to come out the same way.

[00:25:42] Speaker 05:
So even if I have that problem, the right solution is for me to remand, for the board to take a fresh look, and not for me to reverse outright on written descriptions.

[00:25:49] Speaker 04:
Is that fair?

[00:25:50] Speaker 04:
I think that's correct, Your Honor.

[00:25:51] Speaker 04:
My understanding is that the way that the messages were set up, and this is regarding the various start values that are involved in the exchange of these messages,

[00:26:03] Speaker 04:
And so I think what the board was recognizing is that the specification of the patent says that you can have, you can omit certain start values if they're unnecessary.

[00:26:15] Speaker 04:
And I think the board understood that that could go

[00:26:18] Speaker 04:
either way there's a recognition that old start values and new start values.

[00:26:21] Speaker 05:
I hear what you're saying and you might be right but the board didn't make those fact findings and so and that is a finding of fact and I can't do that in the first instance right so I the best case scenario is for me to remand and let them make that.

[00:26:31] Speaker 04:
I think that's right.

[00:26:32] Speaker 04:
My understanding of it is that that the

[00:26:36] Speaker 04:
The another message in the preceding message, preceding the another message, could be before.

[00:26:41] Speaker 04:
And the board may have stated that.

[00:26:42] Speaker 04:
But it could also be afterwards.

[00:26:44] Speaker 05:
But let me ask you something.

[00:26:46] Speaker 05:
Because he's going to say this when he gets up, and I don't want you to have a chance not to address it.

[00:26:50] Speaker 05:
It's your burden.

[00:26:51] Speaker 05:
This was your burden.

[00:26:52] Speaker 05:
You amended these claims.

[00:26:53] Speaker 05:
It was your burden to show this to the board.

[00:26:56] Speaker 05:
The argument you're making now about how the board might have been able to find written description support

[00:27:03] Speaker 05:
I don't think it's tethered to the argument you made to them when you amended your claims.

[00:27:08] Speaker 05:
So is it still a reverse or a remand when you had the burden and when you, the argument you're making right now may or may not be correct, but it wasn't the argument you made to the board and you had the burden.

[00:27:20] Speaker 05:
What do I do with the burden piece?

[00:27:22] Speaker 04:
Understood I think I think that we did make the argument to the board that the emissions could be the missions weren't set in time if there was an understanding that values were going to be either a prior message or a later message they don't have to be placed in the in the messages immediate but I see what you're saying as far as

[00:27:44] Speaker 04:
I think we did make that argument.

[00:27:46] Speaker 04:
I think the board was looking at the earlier.

[00:27:48] Speaker 04:
It was looking at figure 15 and perhaps looking at these.

[00:27:50] Speaker 05:
So tell me, as best as you can recollect, where do you think you made that argument?

[00:27:55] Speaker 05:
Because if you made even a sniff of that argument, I'll give you a remand on this rather than a reversal.

[00:27:59] Speaker 05:
I'm only speaking for me.

[00:28:00] Speaker 05:
I don't speak for the panel.

[00:28:02] Speaker 05:
Because if you even made a whiff of an argument,

[00:28:05] Speaker 05:
You know, I'm willing to say send it back and let the board, because sometimes the board can say, look, here we think there's written description support.

[00:28:11] Speaker 05:
But if it turns out that they're wrong, maybe they just didn't address the other places that you argued.

[00:28:15] Speaker 05:
You know what I'm saying?

[00:28:16] Speaker 05:
If they found it one place, they might not have addressed it others.

[00:28:19] Speaker 04:
For example, I would point you to pages 43 and 44 of the registry where there were discussions regarding

[00:28:28] Speaker 04:
these various messages and where they were found, the sequence of them.

[00:28:36] Speaker 04:
And I would point out that there is also a statement where we have, this is pages 40 and 41 of the red brief, where essentially

[00:28:47] Speaker 04:
There's a discussion here, and I realize this is dealing with the standards themselves, but it's talking about the fact that the disclosure supports not only that the most necessary data may be contained in a message preceding a message from which it's omitted, but also the most necessary data may be contained in a message following a message from which it's omitted.

[00:29:06] Speaker 04:
I believe that argument that we show in the appendix 4384, which is where we cite it to this particular portion of the standard.

[00:29:15] Speaker 04:
And I believe appendix 1077 is where we explain that same point.

[00:29:21] Speaker 05:
OK.

[00:29:22] Speaker 05:
Anything further?

[00:29:22] Speaker 01:
Just one real question.

[00:29:24] Speaker 01:
At 42 of your brief, you say certain arguments were forfeited related to claims 69 and 77.

[00:29:30] Speaker 01:
Just help me understand what you think was forfeited in connection with these two.

[00:29:36] Speaker 04:
So again, I point to a couple of things here regarding, essentially, petitioner had agreed with our position regarding the various messages.

[00:29:48] Speaker 04:
And you can see that in pages 43 through 44, where we've set up petitioner's position on that.

[00:29:55] Speaker 04:
But also, I think that there's new argument here regarding

[00:30:11] Speaker 04:
It involved Dr. Olivia, I believe that's how he pronounces his name, and there were arguments there.

[00:30:17] Speaker 05:
Just let me ask you this.

[00:30:18] Speaker 05:
Did your forfeiting argument go to this ordering of the steps question that I have?

[00:30:24] Speaker 04:
I don't believe so.

[00:30:25] Speaker 03:
Okay.

[00:30:28] Speaker 05:
Thank you.

[00:30:28] Speaker 05:
Thank you for your argument.

[00:30:30] Speaker 05:
You have some rebuttal time.

[00:30:34] Speaker 05:
Yanai?

[00:30:35] Speaker 05:
Did I say it right?

[00:30:36] Speaker 02:
Yanai.

[00:30:36] Speaker 05:
I got it wrong both times.

[00:30:38] Speaker 05:
Yanai.

[00:30:38] Speaker 05:
Mr. Yanai, you have three minutes left.

[00:30:41] Speaker 05:
He went over, which means you have more than that.

[00:30:43] Speaker 05:
But I do want you to know your rebuttal has to be limited to what he addressed, which was written description on the dependent claims.

[00:30:49] Speaker 05:
By virtue of our oral argument rules, you can't go beyond that one issue.

[00:30:53] Speaker 05:
You can't talk about obviousness because he didn't talk about obviousness.

[00:30:56] Speaker 05:
So go ahead.

[00:30:59] Speaker 02:
Limiting my comments to

[00:31:03] Speaker 02:
the depending claims then.

[00:31:13] Speaker 02:
We tried to point out in the briefs exactly this sort of causal connection created by the antecedent basis for the new configuration that's indicated in the first message that requires the another message to come afterward.

[00:31:29] Speaker 02:
I won't

[00:31:31] Speaker 02:
kick that horse, I think it's quite dead.

[00:31:34] Speaker 02:
But we certainly agree there's an irreconcilable conflict between the specification, the order required by the specification, and the order mandated in the claims.

[00:31:45] Speaker 05:
Anything further then?

[00:31:48] Speaker 02:
No.

[00:31:49] Speaker 02:
If you have questions, I think arguments on that are pretty clear.

[00:31:53] Speaker 02:
And I think the court has understood them.

[00:31:56] Speaker 05:
OK.

[00:31:56] Speaker 05:
Thank both counsels for their argument.

[00:31:57] Speaker 05:
This case is taken under submission.

[00:31:59] Speaker 02:
Thank you.