[00:00:00] Speaker 02:
Our next case is number 232124, United Services Automobile Association versus PNC Bank.

[00:00:18] Speaker 02:
Okay, Mr. J.

[00:00:19] Speaker 01:
Good afternoon, Your Honors.

[00:00:20] Speaker 01:
William J. for USAA.

[00:00:22] Speaker 01:
This is the 571 and 779 auto capture patents appeal.

[00:00:26] Speaker 01:
And in this case, the motivation to combine finding is not supported by substantial evidence.

[00:00:31] Speaker 01:
But before the court even gets to that, our primary submission is that it should reverse based on the patent inconsistency with the board's prior decision in Wells Fargo, which reached the opposite conclusion on materially indistinguishable facts.

[00:00:47] Speaker 04:
Well, you say they're materially indistinguishable.

[00:00:49] Speaker 04:
I can't say that I've gone through the whole record in Wells Fargo, but it was based on different prior art, correct?

[00:00:56] Speaker 01:
Only partially, because this is a combination in both cases.

[00:01:00] Speaker 04:
Well, only partially, but at least it was based on a different record.

[00:01:05] Speaker 04:
It wasn't an identical record, identical pieces of prior art.

[00:01:09] Speaker 01:
The only prior art difference is

[00:01:12] Speaker 01:
Yoon, in the prior case, and Luo, in this case, were the two business card recognition references.

[00:01:24] Speaker 01:
And Nepomniachi, which was the check scanning reference in the prior case, is in this case as well.

[00:01:33] Speaker 02:
Yeah, but I mean, what case says that we're supposed to go through the process of analyzing

[00:01:41] Speaker 02:
case with different prior art and different findings to see if it's comparable.

[00:01:50] Speaker 02:
None of the cases that you cite involves that kind of situation.

[00:01:54] Speaker 02:
It involves situations of specific findings about specific prior art.

[00:02:00] Speaker 02:
that seem to be inconsistent, often in cases involving the same parties.

[00:02:05] Speaker 01:
Well, let me give you a three-part answer, the first part keying off the last thing that Your Honor said about specific references.

[00:02:12] Speaker 01:
Remember that the teachings of Nepomniachi, that was in the prior case, it's in this case, the board acknowledges that the

[00:02:20] Speaker 01:
The prior panel had made findings about the teachings of Nepomniachi, and it just discounted them based on the notion that that wasn't part of PNC's obviousness combination here.

[00:02:29] Speaker 01:
The second thing I'd like to say is...

[00:02:33] Speaker 01:
The, the obviousness is assessed as of the state of the prior art on the priority date, not just the references that the other that the challenger amasses in its IPR petition, we put in both UN and Nipomniachi in this case, even

[00:02:54] Speaker 01:
We would have put it in, even if Nepomniachi weren't part of the other side's petition anyway.

[00:02:59] Speaker 01:
So the obviousness decision has to be made based on the state of the art, all of the art on the priority date and to say, well, that's not part of the, that's not one of the references selected by the challenger.

[00:03:11] Speaker 01:
I'm sorry, Judge Kennehan.

[00:03:15] Speaker 03:
It feels like it's an awfully slippery slope for you to contend that there needs to be these comparisons to other that isn't pro se before the board in this matter.

[00:03:26] Speaker 03:
I'm trying to figure out how you're subjected

[00:03:29] Speaker 03:
rule is even operable in your life.

[00:03:32] Speaker 01:
So I appreciate the question.

[00:03:34] Speaker 01:
And this gets back to the second and third of the points that I wanted to make to Judge Dyke's question.

[00:03:38] Speaker 01:
Because to be clear, we are not urging, as I think Judge Dyke's question asked, that this court has to, in every case, go back and compare the record.

[00:03:46] Speaker 01:
Because in this case, number one, you have the overlapping findings that are inconsistent about the same reference.

[00:03:53] Speaker 02:
Number two, you have the board's- What are the findings that are inconsistent about the same reference?

[00:03:57] Speaker 01:
So I'll be glad to get into that, and then I'll happily come back to finish my answer to Judge Cunningham's question.

[00:04:06] Speaker 02:
We're going to go ahead and finish, and then you can come back to my question.

[00:04:10] Speaker 01:
Okay, but the point that I'm trying to make is that the other side has admitted that there's no substantive difference between the two business card references and they were asked could they identify anything that is in Luo that is not in Yun or anything that is in Yun and is not in Luo and they couldn't.

[00:04:29] Speaker 01:
So I think that combining that with the general principle that all of the

[00:04:35] Speaker 01:
obviousness determination needs to be made based on all of the teachings of the prior art on the priority date, not, as in this case, allowing the challenger to back up a year or more, choose an earlier reference, and say, well, the teachings of Nepomniachi are not in Acharya.

[00:04:52] Speaker 01:
So to your question, Judge Dyke, about what the inconsistent findings are.

[00:04:57] Speaker 01:
So there really are four.

[00:05:00] Speaker 01:
The Wells Fargo panel held that motivation to use an alignment guide is not the same thing.

[00:05:07] Speaker 02:
You were going to tell me, you said there were inconsistent findings about a specific, the same specific piece of prior art.

[00:05:16] Speaker 02:
Which piece of prior art and where did they say that?

[00:05:18] Speaker 01:
It's Nepomniachi, which was the primary reference in the obviousness combination the first time around in Wells Fargo, and is in the record in this case.

[00:05:32] Speaker 01:
And then the findings are about, the findings about Nepomniachi specifically, and there are others that I'd like to talk about as well, are about the fact that Nepomniachi taught solutions to the projective distortion problem.

[00:05:47] Speaker 01:
So the Wells Fargo panel.

[00:05:50] Speaker 02:
So just show me, where in the panel decision here, in the board decision here, do they make an inconsistent finding about that specific reference?

[00:06:01] Speaker 01:
So I'm going to give you a two-part answer.

[00:06:04] Speaker 01:
One is to say that, for the most part, they dismissed Napomniachi by saying that it wasn't part of the obviousness combination here.

[00:06:13] Speaker 01:
That's not my question.

[00:06:14] Speaker 01:
I understand that.

[00:06:15] Speaker 01:
But that's why I'm going to give you

[00:06:17] Speaker 01:
a single citation.

[00:06:20] Speaker 01:
This is in the passage from 41 to 42.

[00:06:28] Speaker 01:
And it's mentioned in the rehearing decision as well.

[00:06:33] Speaker 01:
Nipomniachi might teach techniques to correct for projective distortion at a server that receives an image of a check.

[00:06:38] Speaker 01:
But patent owner points to no persuasive evidence that Acharya includes that disclosure.

[00:06:42] Speaker 01:
So in other words, the prior panel, the Wells Fargo panel, has made a finding that the prior art teaches techniques to correct for projective distortion.

[00:06:52] Speaker 01:
This panel says it's not going to make such a finding because even though Napomniachi is in the record here, the relevant teachings don't come from Acharya, which is one of the references.

[00:07:04] Speaker 02:
I'm totally confused.

[00:07:05] Speaker 02:
I'm looking for specific findings about a piece of prior art that are in conflict.

[00:07:11] Speaker 02:
What are the two that are in conflict?

[00:07:16] Speaker 02:
The finding that the about the finding about the she might teach tech needs to correct that's inconsistent with well for Wells Fargo.

[00:07:24] Speaker 01:
So the finding that I'm trying to point you to in this paragraph, Judge Dyke, is that the board declines to find that the prior art teaches what Nepomniachi teaches and what the Wells Fargo panel had previously held that Nepomniachi teaches.

[00:07:43] Speaker 02:
Where do they say that Nepomniachi doesn't teach something?

[00:07:47] Speaker 01:
That's not what they're saying.

[00:07:49] Speaker 01:
They're saying that the prior art doesn't teach something because it's not in Acharya.

[00:07:53] Speaker 01:
In other words, they are refusing to apply the finding about Nepomniachi.

[00:07:59] Speaker 04:
I think your question is- Well, they say because petitioner did not rely on ever ground.

[00:08:04] Speaker 04:
So if petitioner has other grounds and they can establish that those other grounds make the claims obvious, why are they precluded to do that?

[00:08:14] Speaker 04:
Just because on other grounds, another board

[00:08:17] Speaker 04:
found that it did not establish that it was unpatentable.

[00:08:20] Speaker 01:
I'm not understanding that.

[00:08:22] Speaker 01:
So they are absolutely free to make different arguments based on different combinations.

[00:08:26] Speaker 01:
What they're not free to do is to argue, and what the board is not free to do without an explanation, is to say that the teachings of the prior art, collectively, on the priority date, are different than those... So it's a finding about something that the prior art does collectively, not this specific piece of prior art?

[00:08:46] Speaker 02:
I'm sorry, I'm not following this.

[00:08:48] Speaker 02:
I mean the cases do suggest that there might be a problem if they made in one case a particular finding about a piece of prior art and then found the opposite in another case.

[00:08:58] Speaker 02:
But I'm just not seeing that that's happened here.

[00:09:02] Speaker 01:
So I think that the board is

[00:09:08] Speaker 01:
The question is not just about the teachings of a particular piece of prior art.

[00:09:13] Speaker 02:
So we don't have a conflict in the teachings about a particular piece of prior art.

[00:09:17] Speaker 01:
No, I think you do, Your Honor.

[00:09:18] Speaker 01:
But what I'm trying to say is that the board found, sorry, the Wells Fargo panel found that after the references in this case, Napomniachi came along and taught this server-side technology that can correct for projective distortion.

[00:09:35] Speaker 01:
And this panel said that it wasn't going to treat that teaching as being in the prior art, because it's in napomniachi and not in acharya.

[00:09:48] Speaker 01:
But the question in an obviousness case, one of the key findings is, what is the scope and content of the prior art?

[00:09:55] Speaker 01:
Napomniachi is part of the prior art.

[00:09:57] Speaker 04:
So the board is compelled to consider pieces of prior art, the combination of pieces of prior art, that were not contained in the petition and not argued by PNC if some other board in another case with different arguments being made.

[00:10:16] Speaker 04:
had some suggestion about a piece of a pirate rock that's not in this case.

[00:10:21] Speaker 04:
I really want to understand how far you're saying this sweep is of what boards have to do.

[00:10:28] Speaker 01:
I think, as you put it in your question, Judge, that's a lot looser than the argument that we're making.

[00:10:34] Speaker 01:
This is the same pattern.

[00:10:36] Speaker 01:
It is the same.

[00:10:37] Speaker 04:
Different pieces of prior art.

[00:10:39] Speaker 01:
No.

[00:10:40] Speaker 04:
Let me finish my question, then you can say why I'm wrong.

[00:10:42] Speaker 04:
Different pieces of prior art, different parties, different arguments made by the parties, an entirely different petition that relies on different pieces of prior art.

[00:10:51] Speaker 01:
So let me take that in pieces.

[00:10:53] Speaker 01:
Not different arguments made by the parties.

[00:10:55] Speaker 01:
They're making the same arguments.

[00:10:57] Speaker 01:
They are different.

[00:10:57] Speaker 04:
Well, on different pieces of prior art.

[00:10:59] Speaker 01:
No, pomniachi is the same piece of prior art.

[00:11:01] Speaker 02:
They aren't the same arguments.

[00:11:02] Speaker 02:
They were computational burdens.

[00:11:08] Speaker 02:
see that the same argument is being made here.

[00:11:12] Speaker 01:
Respectfully, Your Honor, there were three arguments being made in the Wells Fargo petition.

[00:11:17] Speaker 01:
The first is about computational burden.

[00:11:19] Speaker 01:
The second is about whether it's desirable to achieve better alignment.

[00:11:22] Speaker 01:
And the third is about whether it was desirable to reduce the number of unnecessary images.

[00:11:28] Speaker 01:
And the second and third are in substance exactly what Wells Fargo is arguing here.

[00:11:33] Speaker 01:
And the point about computational burden

[00:11:35] Speaker 01:
is a reason why the and this is what I've been trying to get to on the to follow up on your earlier question about the inconsistent findings.

[00:11:44] Speaker 01:
I'm sorry, Judge Cunningham.

[00:11:46] Speaker 03:
Part of your argument seems to heavily rely on there being some equivalence between

[00:11:56] Speaker 03:
So you can point the fortune to see this alleged equivalence that you're approaching.

[00:12:02] Speaker 01:
So the combination in Wells Fargo was Napomniachi with Yun.

[00:12:06] Speaker 01:
Napomniachi is in this case, it's even in the petition.

[00:12:10] Speaker 01:
So we don't have to rely on equivalence for that.

[00:12:13] Speaker 01:
So for Yun to Luo, the two business card references, at page 5329 to 5330, the other side's expert was asked if he could identify anything that was in Luo that is not in Yun or vice versa.

[00:12:26] Speaker 01:
and couldn't answer that question.

[00:12:28] Speaker 01:
So the teachings are basically the same, taking an image of a business card using an alignment guide.

[00:12:37] Speaker 01:
And the legal question before the court is the same.

[00:12:41] Speaker 01:
Is there a motivation to combine the check scanning reference with not just the alignment guide piece of the other reference, whether it's Yun or Luo, but the auto capture functionality of the other reference?

[00:12:54] Speaker 01:
Like that's exactly what the board in Wells Fargo concluded.

[00:12:58] Speaker 01:
There was not a motivation to do, and it is what the board in this case concluded there is a motivation to do.

[00:13:06] Speaker 01:
I say that into my rebuttal time unless the court has.

[00:13:08] Speaker 02:
OK, we'll give you two minutes.

[00:13:11] Speaker 01:
OK, thank you, Your Honor.

[00:13:14] Speaker 02:
Mr. Lantier?

[00:13:21] Speaker 00:
Thank you, Your Honor, and may it please the court, Greg Lantier, on behalf of PMC.

[00:13:27] Speaker 00:
Your Honors, there was really no discussion at all, and this is consistent with USA's briefs, as to the substantial evidence supporting the Board's finding of obviousness here.

[00:13:38] Speaker 00:
The Board correctly found in Appendix 31 that this was a particularly strong and straightforward case.

[00:13:46] Speaker 00:
Obviousness found in Appendix 33 was a textbook case of obviousness, and there's really no challenge to that.

[00:13:53] Speaker 00:
I'll jump right to the issue of whether there's any inconsistency between the Wells Fargo IPRs and the board's decisions in these IPRs, and there is no inconsistency.

[00:14:06] Speaker 02:
Is it the case that there's no overlap in the prior art between the prior art considered in Wells Fargo and the prior art combination here that was found to result in obviousness?

[00:14:19] Speaker 00:
There is no overlap in the prior art for the independent claims.

[00:14:23] Speaker 00:
For a couple of dependent claims, we relied on Nepomniachi for a dependent claim.

[00:14:32] Speaker 00:
We relied on Yoon for another dependent claim.

[00:14:35] Speaker 00:
For the independent claim, that's exactly right.

[00:14:37] Speaker 00:
your honor.

[00:14:38] Speaker 00:
And contrary to what Mr. Jay said, there's certainly no testimony in the record.

[00:14:46] Speaker 00:
I think he said that we made an admission that there's no difference between Luo and Yun.

[00:14:51] Speaker 00:
That's not accurate.

[00:14:53] Speaker 00:
You can look at the testimony, which I think he referred you to at appendix pages 5328 and 5330.

[00:14:59] Speaker 00:
You're not going to see it there.

[00:15:01] Speaker 00:
And in fact, the board found that the disclosure of Luo that's not present in Yun

[00:15:07] Speaker 00:
that using the Luo technique would yield accurate images of documents suitable for OCR was one of the keys to the board's findings of obviousness here.

[00:15:21] Speaker 00:
Because the combination that PNC presented in these IPRs, which was different from what Wells Fargo argued, was that Acharya discloses a check deposit system

[00:15:34] Speaker 00:
It doesn't say how the image is going to be captured.

[00:15:38] Speaker 00:
That's unlike the Nipah Mishish reference, which did say manual capture.

[00:15:44] Speaker 00:
Acharya just doesn't say it.

[00:15:46] Speaker 00:
And it doesn't have any provision for any way to improve the OCR ability or the readability of the document, which is also unlike the Wells Fargo primary reference.

[00:15:57] Speaker 00:
And the board found that it would have been obvious, given the disclosures in Luo, to use Luo's

[00:16:05] Speaker 00:
automatic capture with an alignment guide in order to improve the OCR ability of the document.

[00:16:10] Speaker 00:
And that was the entirety, really, of the obviousness combination.

[00:16:14] Speaker 00:
It was just a different argument than was made by Wells Fargo.

[00:16:19] Speaker 00:
And I think it's very important to remember that there's no overlap between the expert testimony in the Wells Fargo IPRs and the expert testimony in these IPRs.

[00:16:33] Speaker 00:
USA didn't use the same expert and did not offer the same testimony here.

[00:16:37] Speaker 04:
I'm not sure what that means.

[00:16:39] Speaker 04:
I mean, I'm at a disadvantage, I guess, because I don't know the record in Wells Fargo as well as I know in this case.

[00:16:45] Speaker 04:
But the fact that they're different experts doesn't matter.

[00:16:48] Speaker 04:
Wasn't the be all and end all of what the experts were conveying the same in both cases?

[00:16:53] Speaker 00:
No, not at all, Your Honor.

[00:16:54] Speaker 00:
In fact, whereas the board found USA's expert credible in the Wells Fargo case and Wells Fargo's expert not credible expressly.

[00:17:05] Speaker 00:
It expressly found PNC's expert credible here and USA's expert not credible in these IPRs.

[00:17:13] Speaker 00:
And in particular,

[00:17:14] Speaker 00:
And the board points this out, I think, Your Honors, a very good synopsis of why every one of USA's arguments here fails can be found in the board's decision denying rehearing of the final written decisions here, where they go through every one of USA's arguments and explain why USA is wrong about what the final written decisions say.

[00:17:35] Speaker 00:
To give an example to your honor, one of the things that Wells Fargo's expert testified, and this was an admission that the Wells Fargo panel found to be important, was that if you were to substitute, if you were to use the UNE technique with Nepomniachish, you would remove user judgment.

[00:18:01] Speaker 00:
And there would be no criteria used before the check image was snapped, other than alignment with the alignment guide.

[00:18:10] Speaker 00:
And the panel in Wells Fargo found that very significant.

[00:18:13] Speaker 00:
Here, the testimony was the opposite.

[00:18:16] Speaker 00:
Here, the testimony, and the board credited this, was that by the year 2009, the cameras on mobile phones had features like autofocus and exposure controls.

[00:18:31] Speaker 00:
And those things would be used in conjunction to help make sure the image capture was suitable.

[00:18:37] Speaker 00:
And in addition, that the user would exercise his or her judgment in hovering the device over the document to snap the photograph.

[00:18:45] Speaker 00:
So I do think, Your Honor, respectfully that the difference in the expert testimony as between the two proceedings is meaningful and substantive.

[00:18:54] Speaker 02:
What is the standard that we should use to determine whether there's a problematic inconsistency between the two cases?

[00:19:05] Speaker 00:
Well, the interesting thing, Your Honor, is that the main case that USA points to is the Vicor case.

[00:19:11] Speaker 00:
And what Vicor says is that the board... I'm asking you what the right standard is.

[00:19:17] Speaker 00:
Well, I think, Your Honor, that the standard is that the board has to provide some explanation for why it's reaching different outcomes in a case where it's actually the same evidence.

[00:19:29] Speaker 00:
Here it's not the same evidence at all.

[00:19:31] Speaker 00:
It's very different.

[00:19:32] Speaker 00:
In the Vicor case, it was exactly the same record, exactly the same parties.

[00:19:37] Speaker 00:
And the board reached diametrically opposed decisions on objective indicia of non-obviousness and how they would factor in.

[00:19:45] Speaker 00:
Here, we don't have the same prior art.

[00:19:48] Speaker 00:
We don't have the same parties.

[00:19:50] Speaker 00:
We don't have the same expert testimony.

[00:19:52] Speaker 00:
And importantly, we don't have the same obviousness theory being put forth.

[00:19:56] Speaker 00:
So there's simply no inconsistency.

[00:19:58] Speaker 00:
And I don't think anything that the court needs

[00:20:00] Speaker 00:
investigate there.

[00:20:02] Speaker 00:
But if you did find that it was the same, you'd look for some explanation from the board.

[00:20:07] Speaker 00:
And here, there's copious explanations throughout the board's final written decision, as well as its decisions denying rehearing of the final written decision, explaining exactly why it reached the outcome that it did here, notwithstanding

[00:20:23] Speaker 00:
what it found in Wells Fargo.

[00:20:25] Speaker 00:
And I'd like to bring your honors back to where Mr. Jay did, and that's at appendix page 41.

[00:20:32] Speaker 00:
This is where he took you when you asked him to point you to something that showed that there was an inconsistent finding about a piece of prior art as between two proceedings.

[00:20:44] Speaker 00:
And he pointed you to this last paragraph at appendix page 41.

[00:20:50] Speaker 00:
What he pointed you to there is the statement that the Napamayashi reference might teach techniques to correct for projective distortion of the server.

[00:21:02] Speaker 00:
But what the board goes on to say is, essentially, we're not going to find that that was the preferred approach.

[00:21:09] Speaker 00:
There's not evidence to show that that was the preferred approach, such that we need to assume it would have been incorporated into the Acharya reference that PNC is relying on here.

[00:21:23] Speaker 00:
They say those are just two different techniques, and we don't find that there's a preference for one over the other, nor that they would be mutually exclusive.

[00:21:32] Speaker 00:
And then again, turning to page 43 of the appendix, almost the very next page, it determines that all that prior art that the Wells Fargo panel considered, that it disclosed alternative approaches.

[00:21:50] Speaker 00:
But those alternative approaches didn't teach away from the solution that was set forth in the PNC IPR petitions.

[00:21:59] Speaker 00:
And so there's simply no conflict.

[00:22:03] Speaker 00:
There's really not even any tension between the Wells Fargo findings and the PMC and the findings here, because the board thoroughly went through its reasons for reaching the different outcomes.

[00:22:17] Speaker 00:
Unless your honors have questions, I will cede the remainder of my time.

[00:22:20] Speaker 02:
Dr. Cunningham?

[00:22:22] Speaker 03:
We have no questions.

[00:22:24] Speaker 00:
OK.

[00:22:24] Speaker 00:
Thank you very much.

[00:22:25] Speaker 02:
Thank you.

[00:22:26] Speaker 02:
Mr. Jay, you have two minutes.

[00:22:33] Speaker 01:
Thank you, Your Honor.

[00:22:34] Speaker 01:
A few key points about the similarity between the Wells Fargo art and the art in this case.

[00:22:41] Speaker 01:
My friend relied on the notion that autofocus is the difference.

[00:22:45] Speaker 01:
Autofocus is in Yoon just like in Luo, and you will find that both in the Wells Fargo panel decision at 4519 and in paragraph 29 of Yoon, page 4319 of the appendix.

[00:22:57] Speaker 01:
So that is just not a difference.

[00:22:59] Speaker 01:
What my friend is defending is the idea that

[00:23:02] Speaker 01:
It is somehow a different set of prior art when you swap out one reference involving business cards for another.

[00:23:12] Speaker 02:
But the teachings of the prior art on the- For the independent claims, it's different and it's entirely different prior art, right?

[00:23:19] Speaker 01:
In the sense that the references they put in their petition are a different combination.

[00:23:25] Speaker 01:
The prior art is not different, Your Honor, in the sense that you have to look at the prior art in its entirety.

[00:23:30] Speaker 02:
Yeah, but that's the problem.

[00:23:33] Speaker 02:
to go into deeply into the record in another case to find that the prior art is the same and then saying well you treated prior art which is the same differently I mean that really puts quite a burden on the board and quite a burden on us and I'm not aware of any case that deals with arbitrary inconsistency that requires that kind of analysis.

[00:23:58] Speaker 01:
Well, but in this case, of course, we've put the we've put the relevant art in the in the record.

[00:24:03] Speaker 01:
So in other words, we're not asking the court to go and search through the art cited in Wells Fargo.

[00:24:09] Speaker 01:
And what we what we are asking you to look at is the findings in Wells Fargo about the very same subjects such as is better does better aligned.

[00:24:18] Speaker 01:
I'm sorry.

[00:24:18] Speaker 01:
Just kidding.

[00:24:19] Speaker 03:
But what is your legal support that does hit this type of burden on either the board or on our court?

[00:24:27] Speaker 01:
So the obligation of an agency is to render consistent decisions, or if it's changing its mind, to render an explanation that allows, as this court has said, allows the reviewing court to decide that the board has done its job.

[00:24:43] Speaker 01:
And in this case, its explanations were only

[00:24:47] Speaker 01:
that these aren't the references that Wells Fargo, I'm sorry, that PNC put in its obviousness combination.

[00:24:54] Speaker 01:
It did not make a finding that the references are or are not substantively the same.

[00:25:00] Speaker 01:
And the only thing you were offered by my friend was the notion about autofocus, which is incorrect, as I think I've shown.

[00:25:06] Speaker 02:
The board didn't find that the references in the two proceedings were the same.

[00:25:11] Speaker 02:
You just said that, right?

[00:25:12] Speaker 01:
It didn't find that they were the same.

[00:25:14] Speaker 02:
It dismissed all of the... You're asking us to say that they're the same and therefore the board was inconsistent.

[00:25:20] Speaker 01:
We're asking you to find that the board's reasoning for dismissing the Wells Fargo conclusion was either legally erroneous because it did not address the prior art as a whole, only the obvious, only the references that the petitioner amassed,

[00:25:35] Speaker 01:
or that it doesn't have enough explanation of why the references aren't the same, given the argument that we put in supported by evidence.

[00:25:43] Speaker 01:
Under the APA, for its decision not to be arbitrary and capricious, it at least has to give a reasoned response to the arguments that we've made.

[00:25:52] Speaker 01:
And I think we've shown that all they've done is swap out one business card reference for the other, and there is no substantive difference between them.

[00:25:59] Speaker 01:
The board did not make a finding that what I've just said is wrong.

[00:26:02] Speaker 01:
It just didn't confront it.

[00:26:04] Speaker 03:
But your only support for there being no substantive difference is that expert testimony that you pointed me to and answered one of my favorite questions.

[00:26:12] Speaker 03:
Is that right, or is there something else?

[00:26:13] Speaker 01:
Well, and the references themselves, Your Honor.

[00:26:16] Speaker 01:
The two petitions in Weher and in Wells Fargo, what does it draw from these references?

[00:26:25] Speaker 01:
That an alignment guide used to capture business cards and one implementation of it is auto capture rather than manual capture.

[00:26:34] Speaker 01:
they're in substance exactly the same.

[00:26:37] Speaker 01:
And that comes right off the face of the references.

[00:26:40] Speaker 01:
And there's really nothing in the record to contradict what I've said.

[00:26:43] Speaker 01:
What my friend tried to go to was this point in the Luo reference about that it teaches that its references would be perfect.

[00:26:51] Speaker 01:
Sorry, that its images would be perfect.

[00:26:53] Speaker 01:
But that's not correct.

[00:26:54] Speaker 03:
It feels like you're asking this for some sort of background, though.

[00:26:58] Speaker 03:
At least that's my current feeling in listening to what you were actually saying.

[00:27:02] Speaker 01:
All we're asking you to decide, and we specifically have not asked you to resolve this question, all we've asked you to decide is that the board, which relied too heavily on the notion that the combinations are different without looking at whether there was any substantive difference, the board did not give an explanation of what it did that passes either the legal definition of obviousness or the standards for arbitrary and capricious review.

[00:27:27] Speaker 02:
The problem is that you haven't given us any case from our court or from any other court, and there are a lot of administrative agencies, there's a lot of administrative law finding that an agency was arbitrary and capricious in circumstances like this, where you're saying that it's inconsistent because we should find, or the board should find,

[00:27:52] Speaker 02:
an inconsistency that they didn't themselves articulate on the face of the decision.

[00:27:58] Speaker 01:
So Judge Zeck, you've asked me several times about whether the finding is inconsistent about the same reference.

[00:28:06] Speaker 01:
And I think that if you look at this court's decisions that we've cited, not just VICOR, but also at

[00:28:14] Speaker 01:
but also BASF and Emerson Electric, that not everything lines up perfectly.

[00:28:20] Speaker 01:
Sometimes it's a different patent with slightly different wording, but the same reference.

[00:28:24] Speaker 01:
Here it's the same patent, but references that are substantively no different.

[00:28:28] Speaker 01:
The obligation of an agency to render consistent decisions, that's bedrock APA principle.

[00:28:34] Speaker 01:
And when it's put at issue, so in other words, we're not asking anyone to go search for new art that's not of record.

[00:28:42] Speaker 01:
When all the art is in the record and when the findings that the Wells Fargo panel made are so diametrically opposed to what PNC is arguing, it's incumbent on the agency to explain either, this is like FCC versus Fox, the Supreme Court's admonition that when an agency changes its mind, it has to recognize that it's doing so and say so.

[00:29:01] Speaker 01:
That either the agency has to say that, which it didn't do here,

[00:29:04] Speaker 01:
or has to give some other explanation for why it's doing.

[00:29:07] Speaker 01:
And all you got here was that, well, Napomniachi was in the combination there.

[00:29:11] Speaker 01:
Here it's of record, but it's not in the combination.

[00:29:13] Speaker 01:
That's not a legally relevant distinction.

[00:29:15] Speaker 02:
I think we're out of time.

[00:29:15] Speaker 01:
Thank you, Your Honor.

[00:29:17] Speaker 02:
I think both counsel cases submitted