[00:00:00] Speaker 03: This afternoon is 23-21-71 United Services Automobile Association versus BNC Bank. [00:00:09] Speaker 03: Ms. [00:00:09] Speaker 03: Glasser. [00:00:15] Speaker 00: Your Honor, may I have a moment to get my water? [00:00:17] Speaker 00: Sure. [00:00:18] Speaker 00: Thank you. [00:00:29] Speaker 00: Good afternoon, and may it please the court. [00:00:31] Speaker 00: There are several reversible errors discussed in the briefing, time permitting, and if your honors have questions, we'll discuss them all. [00:00:39] Speaker 00: But I'd like to focus first on the issues that relate to the element that requires duplicate detection, a specific type of error checking, and it requires it using the electronic image taken of the check. [00:00:54] Speaker 03: Now, the only... Do you agree that that claim limitation means just using it for one purpose, not using it for all purposes? [00:01:03] Speaker 00: It needs to use the image specifically for the duplicate detection, Your Honor. [00:01:07] Speaker 03: One aspect of duplicate detection, or the entirety of the duplicate detection. [00:01:11] Speaker 00: Well, duplicate detection, Your Honor, as described in the combination reference, was taking all of the information from the... Okay, but you're not really answering my question. [00:01:22] Speaker 03: This is an important claim construction which the parties sort of don't discuss. [00:01:28] Speaker 03: And what PNC says is you have this limitation satisfied because the check amount, for example, [00:01:37] Speaker 03: is determined from the electronic image. [00:01:41] Speaker 03: Are you saying that all information necessary for duplicate detection has to come from the electronic image, or is it sufficient that there is one aspect, one piece of information from the electronic thing that's used? [00:01:55] Speaker 00: I understand your question, Your Honor. [00:01:57] Speaker 00: So the theory presented by PNC was that you need to use either the signature from the image. [00:02:06] Speaker 03: Answer my question about the claim construction. [00:02:10] Speaker 00: It does not have to be that you're using every nook and cranny of the check image. [00:02:13] Speaker 03: One feature. [00:02:14] Speaker 00: One feature is enough. [00:02:16] Speaker 00: As long as you're using a feature of the check image itself, the actual image, Your Honor. [00:02:22] Speaker 00: And it needs to be within the check image itself. [00:02:25] Speaker 00: And so the theory that PNC presented, Your Honor, [00:02:28] Speaker 00: was that that could be the signature. [00:02:31] Speaker 03: There's a debate between the parties. [00:02:37] Speaker 00: There are only two things that are mentioned anywhere in the briefing before the board or this court and those are the signature and in the briefing before this court and the final written decision itself there is a reference to the micro line. [00:02:49] Speaker 00: And I think, Your Honor, this may end up being a distinction without a difference. [00:02:54] Speaker 00: I think it is important to be precise. [00:02:57] Speaker 00: But whether you're talking about the signature only, which I think was the only theory presented, or whether you're also talking about the micro. [00:03:03] Speaker 03: I don't understand that to be their theory. [00:03:05] Speaker 03: I mean, their theory is that there are numerous pieces of information here. [00:03:10] Speaker 03: Check amount is one, which is found both in Garcia and Sinfield. [00:03:16] Speaker 00: So, Your Honor, the check amount was not argued by PNC or the board to be used from the check image. [00:03:25] Speaker 03: Let's assume that we disagree with you and we say that they did argue check amount. [00:03:30] Speaker 03: Is that sufficient? [00:03:31] Speaker 00: I'll go to that in a moment, but I do think this is very— No, no, no. [00:03:34] Speaker 03: Answer my question. [00:03:35] Speaker 03: Is that sufficient? [00:03:36] Speaker 00: Would you be able to perform a duplicate detection using only the amount? [00:03:41] Speaker 00: I don't think so, Your Honor. [00:03:43] Speaker 03: If they, in fact, argue the check amount could be secured from the image, and that was a feature of duplicate detection, would that be sufficient to satisfy the claim limitation, to find that the prior art satisfied the claim limitation? [00:03:58] Speaker 00: I don't think you could perform a duplicate detection using just the inputted check amount, Your Honor. [00:04:05] Speaker 00: I don't think that would be possible. [00:04:06] Speaker 03: That was the purpose of my question about the climate structure. [00:04:09] Speaker 03: You agreed it doesn't have to be the entirety. [00:04:12] Speaker 03: It is one feature. [00:04:13] Speaker 03: The check amount is one feature for duplicate detection. [00:04:16] Speaker 03: And I'm saying, let's assume the check amount is in the prior art, in Garcia, let's say, and that they argued, which I know you dispute, the check amount was shown by Garcia that that's sufficient. [00:04:29] Speaker 03: What's wrong with that argument? [00:04:31] Speaker 00: So the Singfield reference that was being combined, and this is from the final written decision, uses all of the information on the check, the check number, the check amount, the routing and account number, and the signature. [00:04:44] Speaker 00: And so that's the teaching that PNC was suggesting to be incorporated into Garcia. [00:04:50] Speaker 03: So what if it taught all those things? [00:04:51] Speaker 03: You agree it only has to teach one of those things, right? [00:04:54] Speaker 00: No, Your Honor. [00:04:55] Speaker 00: PNC's theory was that you would take the duplicate detection. [00:04:58] Speaker 03: Forget about PNC's theory. [00:04:59] Speaker 03: You agree that if they used one feature, check amount, that would satisfy the claim limitation. [00:05:05] Speaker 00: I don't think so, Your Honor. [00:05:07] Speaker 00: And that certainly wasn't the theory presented by PNC or adopted by them. [00:05:10] Speaker 03: Forget about whether it was the theory. [00:05:11] Speaker 03: Is that sufficient? [00:05:13] Speaker 00: If I understand your question, Your Honor, I don't think so. [00:05:16] Speaker 03: Why? [00:05:19] Speaker 00: Well, first of all, the board specifically found that the one thing that is always input by the user is the check amount. [00:05:26] Speaker 00: This is from the final written decision at page 32, appendix 80. [00:05:31] Speaker 00: The board itself specifically found that this isn't just the preferred embodiment. [00:05:36] Speaker 00: This is the finding about what Garcia does. [00:05:39] Speaker 00: They capture a digital image. [00:05:40] Speaker 03: You're not answering my question. [00:05:42] Speaker 03: I'm sorry. [00:05:42] Speaker 03: My question is if the prior art disclosed, check them out. [00:05:46] Speaker 03: And check amount is one thing that's used for duplicate detection. [00:05:50] Speaker 03: Why isn't that sufficient finding that the prior art discloses this limitation? [00:05:55] Speaker 00: So if hypothetically there were a prior art reference that obtained the check amount from the check image itself and taught using that for duplicate detection, and there were a motivation to combine that and some reason to think it would work, I think in theory, Your Honor, that that could work. [00:06:10] Speaker 00: That's not the theory that we have here, of course. [00:06:14] Speaker 00: The question here was whether or not someone would have been motivated to take the teaching of Singfield, which uses a specialized check feeder and unique scanner, to take the teaching of Singfield that says, doing that, we can obtain all the information from the check. [00:06:33] Speaker 00: Again, check number, check amount, routing, signature. [00:06:36] Speaker 00: This is from Singfield itself in the final written decision. [00:06:39] Speaker 00: And could we then use that with a reasonable expectation of success [00:06:44] Speaker 00: when we're just snapping the photo from Garcia. [00:06:47] Speaker 00: Now, this is not a debate, Your Honors, about whether or not somebody could put forth some reasoning to support that. [00:06:55] Speaker 00: We don't think they could. [00:06:56] Speaker 00: But what we're focused on here today is that the board literally did not consider that issue. [00:07:05] Speaker 00: There was absolutely no evidence presented [00:07:09] Speaker 00: or discussed by the board or considered about whether the quality of the image taken from Garcia from the cell phone would have been perceived by a POSA to be of sufficient quality to be actually usable, not just for some sort of mobile deposit, but for actually performing this duplicate detection approach. [00:07:30] Speaker 00: This was obviously not the patent owner's burden. [00:07:34] Speaker 00: From our perspective, the inquiry should end here. [00:07:37] Speaker 00: But however, we do have a unique circumstance here where the patent owner itself actually put in, including in the patent owner response, detailed evidence about why APOSA would not expect that the quality of the image would be sufficient for duplicate detection, which is not just depositing a check somehow some way, it's actually checking to see [00:07:58] Speaker 00: if that exact check has been deposited before. [00:08:01] Speaker 00: You can't just look at the amount, for example. [00:08:03] Speaker 00: People all the time have multiple checks with the same amount. [00:08:07] Speaker 00: And the patent owner put in evidence, which was through our own expert, as well as PNC's district court expert, that said there's all kinds of issues with this. [00:08:16] Speaker 00: There's skew, and there's angle. [00:08:18] Speaker 00: And even being off by 2% to 3% is going to cause a problem. [00:08:23] Speaker 00: So you might have a case where the board looked at that or a PNC argued and said, well, that's OK. [00:08:28] Speaker 00: It still would have been worth it to make this. [00:08:32] Speaker 00: But that's not what happened. [00:08:33] Speaker 00: The board literally did not discuss any of this evidence at all. [00:08:37] Speaker 00: The word skew doesn't even appear in the board's decision. [00:08:41] Speaker 00: The board made absolutely no findings, simply ignored the question. [00:08:46] Speaker 00: And there was no evidence from PNC. [00:08:48] Speaker 00: And as I was preparing this, I was thinking people come before your honors all the time and say, there's no evidence, your honor. [00:08:54] Speaker 00: And how do you prove that? [00:08:55] Speaker 00: You're proving a negative, right? [00:08:57] Speaker 00: But here we actually have a pretty good hook to show you. [00:09:00] Speaker 00: This isn't just me saying this. [00:09:02] Speaker 00: PNC's expert actually testified. [00:09:04] Speaker 00: This is an appendix 5014. [00:09:07] Speaker 00: He was asked, well, what do you know about this type of image that's being taken? [00:09:11] Speaker 00: He didn't even remember what the difference was. [00:09:14] Speaker 00: He didn't remember what type of imaging was going on in Singfield, what type of imaging was going in Garcia, and he actually said, [00:09:21] Speaker 00: All he was relying on Sinkfield for was the general idea of duplicate detection. [00:09:27] Speaker 00: He didn't even go to the analysis of saying duplicate detection using the image and then take the final step of saying, OK, how are we going to deal with the fact that a posa would have perceived that when you're trying to do something really precise, like checking whether it's the exact same check that was deposited before, the posa expects that there's all kinds of issues with the skew and the angle. [00:09:50] Speaker 00: The board, again, literally, they didn't disagree with what I'm saying now. [00:09:54] Speaker 00: They just literally completely ignored it. [00:09:56] Speaker 00: And the only, in fact, elsewhere in the decision, the board actually acknowledged the fact, this is at appendix 102, they actually acknowledged the fact that an image obtained from a camera phone was materially different, that it was unpredictable, that existing algorithms were not able to reliably correct for it. [00:10:19] Speaker 00: They said that. [00:10:21] Speaker 00: And then they did nothing with it. [00:10:23] Speaker 00: The only findings they made is that you could look at Garcia and, according to the board, believe that a check deposit would work, and then that you could assume people would want to avoid duplicate checks. [00:10:35] Speaker 00: But that's not what the combination is. [00:10:37] Speaker 00: The claim element specifically requires that you would use the image that was taken, and you would use that image itself, at least in part, [00:10:47] Speaker 00: to perform a check to see if there was a duplicate deposit. [00:10:51] Speaker 00: The board didn't make that analysis. [00:10:52] Speaker 00: The board just didn't address that issue whatsoever. [00:10:56] Speaker 00: And then to make matters worse, the board then went ahead and excluded some of the other evidence from the patent owner relating to the fact that PNC's primary theory, which had to do with the signature algorithm, [00:11:11] Speaker 00: didn't work at all, that this had nothing to do with comparing signatures on a check. [00:11:16] Speaker 00: It was some algorithm to determine whether you had two images that were the same. [00:11:21] Speaker 00: They didn't address that evidence. [00:11:22] Speaker 00: They simply threw all of that evidence out. [00:11:25] Speaker 00: And they seemed to proceed on the notion that skew was not raised in the patent owner response. [00:11:31] Speaker 00: Your Honor, skew is raised explicitly in detail in the patent owner's response. [00:11:37] Speaker 00: And that was simply an extreme error on the part of the board. [00:11:41] Speaker 00: to just ignore that evidence, and then to also ignore its own factual determination that there were indeed significant issues with skew in the art, to do all of that, and then to proceed to not determine whether there was a reasonable expectation of success with respect to the actual combination that was at issue here, Your Honors. [00:12:04] Speaker 00: So unless Your Honors would like to address the burn combination as well, I would reserve the rest of my time for rebuttal. [00:12:11] Speaker 05: okay thank you thank you your honor may it please the court Fred Lanterre on behalf of PNC Bank your honor [00:12:35] Speaker 05: Briefly, I'd like to address the argument that Ms. [00:12:39] Speaker 05: Glasser was making on behalf of USAA, which has to do with the requirement in the claims that there be a duplicate detection that is performed. [00:12:49] Speaker 05: And as your honors know, the basis for the combination there was combining Garcia and Byrne with the Singfield reference. [00:13:01] Speaker 05: Ms. [00:13:01] Speaker 05: Glasser, I think, tried to persuade Your Honors that there was only one basis on which PNC argued that combination, and that there was only one basis on which the court, on which the board found that that limitation was disclosed. [00:13:20] Speaker 05: But in fact, there were three different bases on which the board relied to find that PNC had made its burden out. [00:13:30] Speaker 05: And I think, Your Honor Judge Dyke, I think you sort of alluded to this somewhat. [00:13:35] Speaker 05: But the first basis that the board relied on was that in the combination, Garcia's server was already extracting the information from the front of the check, which would include the micker line, which has the routing number, the account number, and the check number. [00:13:57] Speaker 05: on it, and it would feed that to Singfield's system. [00:14:02] Speaker 05: So all the Singfield reference would be doing is intaking that information and comparing it against the information it already had for deposited [00:14:12] Speaker 05: And we didn't hear any argument about that. [00:14:15] Speaker 05: That's at the appendix, pages 85 to 86. [00:14:19] Speaker 05: It was in our petition at appendix pages 266 to 269 as well as 277, and it's clearly supported by substantial evidence. [00:14:30] Speaker 05: A second basis on which the board found that this limitation was taught by the combination is at appendix pages 84 to 85, where it points to same field, this is appendix page 1101, at paragraphs 24 and 25. [00:14:50] Speaker 05: and says, we read Sinkfield. [00:14:53] Speaker 05: The most reasonable reading of Sinkfield is that Sinkfield itself is using the check information. [00:14:59] Speaker 05: And they provided that as an alternative reason for finding that it was taught. [00:15:05] Speaker 05: The third reason is the one that you heard about from USAA, which is that the board then went on to say, and even if it weren't true that Garcia were already getting the OCR information and could feed it to Sinfield system, and that Sinfield itself doesn't disclose using the check image in full, [00:15:26] Speaker 05: Well, at least Sinkfield is teaching that the signature is used for duplicate detection. [00:15:33] Speaker 05: That couldn't be obtained by OCR because you wouldn't want to actually reduce the signature down to just the words of the signature. [00:15:43] Speaker 05: And that's at appendix pages 83 to 84. [00:15:46] Speaker 05: That finding is also supported by substantial evidence, Your Honor, but I just think it's important to note that it's one of three alternative bases on which the board found that that limitation was taught. [00:16:01] Speaker 05: The entire argument that USA is making hinges on this idea that Garcia doesn't teach OCR of the information off the face of the check. [00:16:14] Speaker 05: I just want to point out that at appendix pages 99 and 100, the board explains why it, quote, the most reasonable read of Garcia is that it suggests optically extracting check information [00:16:29] Speaker 05: such as information from the Micker line, like the routing and account numbers using OCR. [00:16:35] Speaker 05: That's certainly supported by substantial evidence. [00:16:39] Speaker 05: And then the third point I wanted to make, Your Honors, is there was a suggestion that at appendix page 102, the board made some factual findings about [00:16:53] Speaker 05: about the usability of images captured by a mobile device. [00:17:02] Speaker 05: I don't see that on appendix page 102. [00:17:03] Speaker 05: What I see on appendix page 102 is a summary followed by a rejection of [00:17:09] Speaker 05: USAA's arguments. [00:17:11] Speaker 05: And in fact, in the final written decision, the board is very clear that the Garcia reference demonstrates that a check captured by a mobile device would be sufficient for OCR and deposit. [00:17:26] Speaker 05: So I think it runs actually directly against what USAA's argument is here. [00:17:32] Speaker 05: So unless your honors have additional questions on the substantial evidence supporting the board's findings of invalidity as to claims 1 and 8 through 20, I'd like to jump now right to PNC's cross appeal on claims 2 through 7, which the board determined not to cancel. [00:17:54] Speaker 05: And if your honors would turn to appendix page 151, you'll see what claim 2 is. [00:18:03] Speaker 05: And all that claim two adds to independent claim one is that the system perform error processing before the check is deposited. [00:18:14] Speaker 05: It doesn't say how. [00:18:15] Speaker 05: It doesn't say where. [00:18:17] Speaker 05: All it says is that you do it. [00:18:20] Speaker 05: And error processing is, for example, and this is undisputed, just looking to see whether somebody remembered to endorse the check or not. [00:18:30] Speaker 05: So the question here is whether, in a check deposit system in 2006, it would have been non-obvious to think, to look to see, for example, if there's an endorsement on the check before it's submitted for deposit. [00:18:46] Speaker 05: And I think there are four specific errors in the board's analysis when it comes to claim two that merit a reversal, or at least vacator and remand, [00:18:59] Speaker 05: as to that part of the board's decision. [00:19:02] Speaker 05: And the first is that the board had already found, in connection with claim one, that a person of skill in the art had reason to combine the Garcia reference and the Byrne reference. [00:19:16] Speaker 05: It already found, for many reasons, that that combination would have been made because Garcia disclosed that it used a computer application but didn't teach how the device got the computer application. [00:19:29] Speaker 05: And Byrne taught a downloadable thin client that had certain advantages and benefits that a person of skill in the art would have found motivated the combination. [00:19:41] Speaker 05: So we've already combined Byrne and Garcia. [00:19:44] Speaker 05: It's undisputed that at paragraph 175 of Byrne, this error processing is taught. [00:19:53] Speaker 05: So it's an error for the board to require an additional motivation to combine in that scenario. [00:20:00] Speaker 05: The board has already found for claim one that these references will be combined. [00:20:05] Speaker 05: Bernd already teaches. [00:20:06] Speaker 03: I'm not sure about that. [00:20:07] Speaker 03: What case says that? [00:20:10] Speaker 03: If you combine it for one purpose, do you necessarily combine it for another purpose? [00:20:15] Speaker 05: It's not for different purposes, Your Honor. [00:20:17] Speaker 05: I think that would be a different scenario. [00:20:19] Speaker 05: This isn't a different purpose. [00:20:20] Speaker 05: This is, Byrne discloses a downloadable thin client for check deposit, and the board has already determined that it would be obvious to incorporate Byrne into Garcia, and Byrne's check deposit [00:20:36] Speaker 05: software specifically. [00:20:38] Speaker 03: That check deposit software already has error processing. [00:20:55] Speaker 05: I think that that is the analysis the board applied, and I think that it's incorrect, Your Honor. [00:21:01] Speaker 05: I would point you, if you asked for a case, the General Electric versus Raytheon case from 2020. [00:21:10] Speaker 05: that we cite in our brief. [00:21:11] Speaker 05: There's a portion on the pages we cite, but we don't have this. [00:21:16] Speaker 01: The clock is running. [00:21:17] Speaker 01: So can I just move you forward? [00:21:18] Speaker 01: You said you had several arguments. [00:21:20] Speaker 01: I mean, the one I was a little confused by the briefing because so much of your briefing in this regard had to do with proving that the board misconstrued [00:21:28] Speaker 01: the shift thing. [00:21:29] Speaker 05: Yes, Your Honor. [00:21:30] Speaker 01: But let's take that off the table for a minute and just get to the heart of the case, which is was there a motivation and did you satisfy your burden to establish the motivation? [00:21:39] Speaker 01: Because at the end of the day, I think it was short, but what they said is you didn't put on enough evidence. [00:21:47] Speaker 01: You didn't satisfy your burden to show there would, so you have a response to that, I assume. [00:21:54] Speaker 01: Yes, Your Honor. [00:21:55] Speaker 01: So why don't you deal with that issue? [00:21:57] Speaker 05: I will, Your Honor. [00:21:57] Speaker 05: So I would say, first off, the point I just made, which I won't go into again, I think there doesn't need to be an additional motivation to combine when there's already been a showing there. [00:22:07] Speaker 05: That said, we did put forth additional evidence of a motivation to combine specific to claim to which, as Your Honor points out, the board [00:22:16] Speaker 05: rejected. [00:22:17] Speaker 05: And I think even if you were to accept the board's factual findings, there's still legal error in the board's findings as to claim two. [00:22:27] Speaker 05: Because what the board imposed on us was an obligation to show that having error processing occur at the user device, which is indisputably taught in Byrne, [00:22:44] Speaker 05: was more desirable than having it occur at the server. [00:22:49] Speaker 03: Well, they talked about the shift from the server. [00:22:52] Speaker 03: And there's no shift. [00:22:53] Speaker 03: Which is what was done in Garcia, right? [00:22:57] Speaker 05: So, not exactly, Your Honor. [00:22:59] Speaker 05: Garcia teaches that verification is performed at the server. [00:23:07] Speaker 05: Garcia does not talk about error processing specifically. [00:23:12] Speaker 05: The only reference that talks about error processing specifically is Burr. [00:23:15] Speaker 03: Well, the board said that Garcia showed error processing occurring on the bank server. [00:23:21] Speaker 03: And the board is saying, as I read the decision, that shifting that to the mobile phone was not shown to be sufficiently motivated. [00:23:34] Speaker 05: So I don't think the board found that there was error processing taught in Garcia at the server, Your Honor. [00:23:40] Speaker 05: What the board said was if anything, Garcia suggests doing the error processing at the server. [00:23:47] Speaker 05: Didn't find that it was taught. [00:23:50] Speaker 05: Bern does teach doing it. [00:23:51] Speaker 03: So what was your evidence? [00:23:52] Speaker 03: What was your evidence that it would be desirable to have on the mobile phone error processing? [00:23:58] Speaker 03: What was the testimony about that? [00:24:00] Speaker 05: Yes, Your Honor. [00:24:02] Speaker 05: In the petition supported by the expert testimony, [00:24:05] Speaker 05: We pointed out that in 2006, this system would have been run over a 2G or possibly a 3G network. [00:24:14] Speaker 05: So there would be a premium on not sending a large file, which a check image would be. [00:24:22] Speaker 05: across that network if it was going to be pointless because there was a simple mistake in it that could have been caught at the mobile device. [00:24:29] Speaker 03: So it's an advantage for doing it on the mobile phone instead of the server. [00:24:32] Speaker 03: That is correct, Your Honor. [00:24:33] Speaker 01: And the board said about that that, I'm not clear what the board said on the one hand. [00:24:39] Speaker 01: Because consuming excessive bandwidth or incurring excessive delay, sort of like everybody could say that about anything. [00:24:49] Speaker 05: And that's the mistake, I think, Your Honor, which is that, yes, it's universal motivation. [00:24:54] Speaker 05: And we don't deny that. [00:24:56] Speaker 05: We never said it was a specific motivation. [00:24:58] Speaker 05: But we're talking about a wireless system to deposit a check using the image. [00:25:04] Speaker 05: And it would motivate any person of skill in the art [00:25:07] Speaker 05: to think about what can I do to avoid sending images that I don't need to send. [00:25:12] Speaker 03: Did you do the error processing on the phone before sending the image? [00:25:15] Speaker 05: Exactly, Your Honor. [00:25:16] Speaker 05: That's exactly what the petition set forth. [00:25:18] Speaker 01: So what do you read? [00:25:19] Speaker 01: And I read the board is saying, we need something more. [00:25:23] Speaker 01: So what do you understand the more to be that the board required? [00:25:28] Speaker 01: An expert saying, do you think the board wasn't buying the fact that this would [00:25:34] Speaker 01: enhance the fix the delay stuff or that the board was just not buying that somebody some expert didn't confirm that. [00:25:42] Speaker 05: I think there are two things that the board was saying, both of which are wrong, Your Honor. [00:25:46] Speaker 05: I think in one paragraph, and I believe this is Appendix 108, it may be 109, but the board points to the testimony of our expert, Dr. Mowry, that there would have been tradeoffs in between doing it on the one place or the other, and says, well, he said there were tradeoffs. [00:26:03] Speaker 05: Clearly, the fact that there's tradeoffs is not a reason to find something not obvious. [00:26:06] Speaker 03: Where do they say this? [00:26:08] Speaker 05: I believe it's Appendix 109, Your Honor, but let me make sure I get you the right citation. [00:26:18] Speaker 05: It's the first full paragraph on Appendix 109, Your Honor. [00:26:23] Speaker 05: And then the second thing that... Where do they say this? [00:26:27] Speaker 05: They say, Dr. Mowry's trial testimony casts further doubt on petitioner's rationale for this claim. [00:26:32] Speaker 05: Dr. Mowry testifies that conserving bandwidth would potentially have been one of the goals of the ordinary artisan, depending on how precious the resources is. [00:26:41] Speaker 05: And then if you read down, they focus on his testimony, they quote it saying that there are trade-offs in between doing it on the server versus doing it on a mobile device. [00:26:51] Speaker 05: And your honors have many cases saying the fact that there are trade-offs doesn't mean that something's [00:26:56] Speaker 05: Not obvious. [00:26:57] Speaker 05: And then I think the second thing that the board was requiring of us that was erroneous, Judge Gross, is they seem to be saying we had to put in specific data about how much bandwidth would be saved. [00:27:11] Speaker 05: And they have that finding that, well, you put that in your requirements too late. [00:27:14] Speaker 05: Where do they say that? [00:27:16] Speaker 05: That would be, that's on appendix page 110. [00:27:24] Speaker 05: And it's at the tail end of the first paragraph, which carries over from appendix page 109. [00:27:32] Speaker 05: And they say, in its reply, petitioner cites testimony from Dr. Mowry, but it simply compares the size of a compressed image with the size of a large application. [00:27:41] Speaker 05: And this comes. [00:27:42] Speaker 05: too late, and they determined not to consider it. [00:27:45] Speaker 05: For obviousness, we don't have the burden of providing more than the motivation, which was clearly in the petition, which talked specifically about the 2G and 3G networks, and that there would have been a reason for a person of skill in the arts to do this in order not to transmit images that didn't have to be transmitted. [00:28:04] Speaker 01: Well, at the bottom of page 108, they say, for example, Dr. Mowry did not testify that an ordinary artisan would have expected Garcia's system to consume excessive bandwidth or incur excessive delay. [00:28:18] Speaker 01: So were they saying, [00:28:21] Speaker 01: it was something, but it needed to be excessive? [00:28:25] Speaker 05: There they seem to be saying that unless we showed that Garcia was more resource constrained than your average wireless network, then this universal motivation to avoid sending things across the network that you didn't need to was not persuasive. [00:28:42] Speaker 05: But that's exactly contrary to your case, to your honors decisional law, which says that a universal motivation [00:28:51] Speaker 05: is still a motivation. [00:28:52] Speaker 05: You don't discount something because we didn't show that it was especially problematic for this system as compared to other systems. [00:28:59] Speaker 03: Well, I guess unless there's a teaching away, right? [00:29:01] Speaker 05: Unless it's a teaching away. [00:29:02] Speaker 05: Exactly, Your Honor. [00:29:04] Speaker 05: And there's no teaching away finding in the board's analysis whatsoever. [00:29:09] Speaker 05: And I think, again, Your Honors, we have to remember what this limitation is. [00:29:13] Speaker 05: This is a limitation that says, before you deposit the check, take a look to see if somebody forgot to sign it or endorse it. [00:29:20] Speaker 05: This is not something that would be not obvious in the year 2006 in a check deposit system, and the board got the analysis wrong, and that part of the board's [00:29:31] Speaker 05: final written decision should be reversed. [00:29:33] Speaker 01: And the board dealt with it, they dealt with dependent claim two and then the others separately, but is there any distinction that you want to make between the analysis with regard to claim two and the other dependent claims? [00:29:49] Speaker 05: No, Your Honor, the board didn't make any distinction. [00:29:51] Speaker 05: It did have a section on dependent claims three through seven. [00:29:55] Speaker 05: It said, well, we've already ruled on [00:29:58] Speaker 05: on claim two, and so they didn't make separate findings there. [00:30:04] Speaker 05: Unless, I know I'm over time, Your Honor. [00:30:06] Speaker 05: I'm sorry, Judge Cunningham. [00:30:08] Speaker 04: Yes. [00:30:08] Speaker 04: So a couple of questions. [00:30:10] Speaker 04: First question is just following up on the point that you made towards the beginning of your argument about if you submit and show obligation of gun for essentially the independent claim, there didn't need to be an additional showing with respect to the dependent claim. [00:30:24] Speaker 04: At least that's the way I heard it. [00:30:26] Speaker 04: What is your case law support for that if that is what you intend to do first? [00:30:31] Speaker 05: Your Honor, General Electric versus Raytheon, 983 F3rd, 1334 at 1351 to 52. [00:30:39] Speaker 05: This is a case that we did cite in our briefing and those pages. [00:30:46] Speaker 05: We did not cite this particular language. [00:30:49] Speaker 05: But there it says that the board's decision misunderstands the requirement to show obviousness of the claim as a whole. [00:30:57] Speaker 05: I'll skip some of it. [00:30:59] Speaker 05: The law has always evaluated the motivation to combine elements based on the combination of prior references that together disclose all of the elements of the invention. [00:31:11] Speaker 05: And then the board goes on to say, because here the board was requiring a specific motivation for each limitation of the claim. [00:31:19] Speaker 05: It says, in contrast, the board's approach would require a motivation to combine each element of the claim, even those present together in a reference. [00:31:28] Speaker 05: This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to redo the work already done in the prior art reference. [00:31:40] Speaker 05: The claimed invention and an invention in the prior art must both be analyzed as a whole for the same reason. [00:31:46] Speaker 05: An invention is more than the sum of its individual elements. [00:31:49] Speaker 01: I'm sorry to Judge Cunningham. [00:31:50] Speaker 01: If I could just insert myself, because I'm really confused by what you're saying. [00:31:55] Speaker 01: Are you saying that as a matter of law, if the board finds a motivation for a combination with respect to the independent claims, it can't divert for that in any circumstances when analyzing the dependent claims? [00:32:09] Speaker 05: No, Your Honor. [00:32:10] Speaker 05: What I'm saying is that if the board has found on an independent claim a motivation to pull or to combine something from one reference with something from another reference. [00:32:23] Speaker 05: So here it would be the downloaded thin client in burn that the board found there was motivation to combine with Garcia's check deposit system. [00:32:34] Speaker 05: that if Bern's description of that downloaded thin client software already includes what the dependent claim requires, you don't start over from scratch and say, let's just look at what that dependent claim requires and see if there's a motivation to combine. [00:32:53] Speaker 05: That's all I'm saying, Your Honor. [00:32:55] Speaker 05: And certainly there could be cases where maybe there's a teaching away in the references or something else that would be different. [00:33:01] Speaker 05: But where it's just as straightforward, it already tells you it has this feature, and that you've already found that there's motivation to combine that feature with the other piece of prior art. [00:33:12] Speaker 03: I don't think that you have to do a separate analysis. [00:33:14] Speaker 03: That's the point. [00:33:15] Speaker 03: If it's a different feature in the dependent claim, then there hasn't been a finding that there's a motivation to include that feature in the combination. [00:33:25] Speaker 05: I think, Your Honor, that we may [00:33:28] Speaker 05: We need to be clear about what we mean by the feature. [00:33:30] Speaker 05: If you're referring to the feature being the requirement of the dependent claim, then technically that's correct. [00:33:37] Speaker 05: But if we're looking at it, I think the way the General Electric Court looked at it, which is no, the feature is the feature from the prior art, then I think that's not correct. [00:33:45] Speaker 01: Let me just be clear that in your petition, [00:33:47] Speaker 01: You made separate and distinct arguments with respect to the motivation to combine with respect to the feature of error correction and claim to. [00:33:56] Speaker 01: That's correct. [00:33:56] Speaker 01: You didn't rest on the fact that we don't have to do anything more than what we said with respect to the independent claim. [00:34:02] Speaker 05: That is correct, Your Honor. [00:34:05] Speaker 05: Okay. [00:34:05] Speaker 05: Sorry, Judge Penningham. [00:34:06] Speaker 05: I'm sorry, Judge Penningham. [00:34:07] Speaker 04: I didn't. [00:34:08] Speaker 04: I feel like my other question got raised between the collective of McHale's. [00:34:12] Speaker 04: Sorry. [00:34:13] Speaker 03: All right. [00:34:14] Speaker 03: We'll give you one minute on the cross of you. [00:34:17] Speaker 03: Thank you. [00:34:25] Speaker 00: Thank you, Your Honors. [00:34:26] Speaker 00: And obviously, happy to take any questions. [00:34:29] Speaker 00: Otherwise, I'll speak very briefly. [00:34:30] Speaker 00: As I think all of your honors flagged, the question is whether PMC met its burden to show that the motivation it put forth in the petition, which was a supposed desire to increase bandwidth, to conserve bandwidth, [00:34:47] Speaker 00: in the system was satisfied. [00:34:50] Speaker 00: The board here was well within its function. [00:34:54] Speaker 01: You're talking about the cross appeal now? [00:34:55] Speaker 00: Absolutely, Your Honor. [00:34:56] Speaker 01: I just want to be clear, because you have time on your main appeal. [00:35:00] Speaker 00: And they were well within their function to find that PNC had not met that burden. [00:35:06] Speaker 00: PNC's own expert ultimately conceded. [00:35:09] Speaker 00: He didn't know whether the network was bandwidth constrained at all. [00:35:13] Speaker 01: Was there any dispute among the experts or the advocates that it would be in certain circumstances there would be a delay involved that wouldn't exist if you found the error up front as opposed to later on downstream that that would be a delay factor? [00:35:31] Speaker 00: The delay goes in both directions. [00:35:33] Speaker 00: And so the testimony, including from PNC's own expert, is it wasn't clear whether any bank would even want to implement it this way, whether it would perceive that to be a benefit or not. [00:35:44] Speaker 00: Of course, you also are having situations either way where you're sending the documents to the bank, and this is simply putting more processing on the system at the outset. [00:35:54] Speaker 00: And so ultimately, PNC's own expert acknowledged [00:35:58] Speaker 00: He did not know whether there would be a motivation to actually do it the way they were describing, and he also acknowledged that there would be significant trade-offs, Your Honors. [00:36:07] Speaker 03: He said that he didn't see that there would be a motivation to do it. [00:36:11] Speaker 03: Where did he say that? [00:36:12] Speaker 00: Yeah, that's correct. [00:36:14] Speaker 00: His testimony was... I apologize, Your Honor, I lost my place in my notes. [00:36:31] Speaker 00: Yes, so this is actually in the final written decision itself, and they're citing the testimony at page 241 of his deposition. [00:36:39] Speaker 03: He disagreed... What page of the decision is this? [00:36:42] Speaker 03: 109, I think? [00:36:44] Speaker 00: Let's see, this is Appendix 109. [00:36:46] Speaker 03: Okay, and where is the quota missing? [00:36:51] Speaker 00: It says, this is actually the portion that opposing counsel was reading from and then skipped over this piece of it. [00:36:59] Speaker 00: He, that being Dr. Mowry, disagreed that in the Garcia system, the motivation would have been to shift it to the client side for verification. [00:37:08] Speaker 03: Well, that's not saying there was no motivation. [00:37:11] Speaker 00: We disagreed that that would be the motivation. [00:37:13] Speaker 00: Absolutely, Your Honor, because remember their whole theory was that you would start doing it on the mobile phone. [00:37:20] Speaker 01: But wasn't that with respect to conserving bandwidth, right? [00:37:23] Speaker 00: Yes. [00:37:24] Speaker 00: It's the same thing, Your Honor. [00:37:27] Speaker 00: That was their only motivation, was that you would be conserving bandwidth and therefore delay [00:37:33] Speaker 00: to the system. [00:37:36] Speaker 00: Exactly, Your Honor. [00:37:37] Speaker 00: So I think they were absolutely well within their function. [00:37:41] Speaker 00: And in fact, I think we'd probably be here arguing that there was no substantial evidence had they gone the other way, because there really wasn't once PNC's expert [00:37:50] Speaker 00: basically withdrew his motivation theory. [00:37:52] Speaker 01: Is that a question of law, a question of fact, though? [00:37:54] Speaker 01: I mean, don't we have cases, I'm asking, I really, this is a real question, I'm not, yeah, that trade-offs isn't enough? [00:38:01] Speaker 01: Yes, there are pluses and minuses to doing it one way and not the other, but that's not sufficient to establish that there wasn't a motivation. [00:38:09] Speaker 01: Don't our cases sort of speak to that? [00:38:11] Speaker 00: So sure, just the fact that there is some kind of trade off that alone wouldn't be enough. [00:38:16] Speaker 00: That's not what the board found here. [00:38:18] Speaker 00: However, the law, of course, is that you need to analyze the trade offs and you need to look at them. [00:38:23] Speaker 00: PNC bearing the burden on that issue didn't even look at any of those issues and ultimately conceded that there certainly were trade-offs. [00:38:31] Speaker 00: But the board didn't primarily rest upon the trade-offs issue. [00:38:34] Speaker 01: Okay, so even a concession of trade-offs doesn't resolve the issue. [00:38:37] Speaker 01: And if the board were simply to say no motivation because there were trade-offs, would that be sufficient as a matter of law? [00:38:44] Speaker 00: I mean, it would depend what the trade-offs were, right, Your Honor? [00:38:47] Speaker 01: But the board doesn't discuss what those trade-offs are. [00:38:49] Speaker 00: The board actually does go into a little bit, or at least our evidence was there was problems with battery. [00:38:54] Speaker 00: There was all kinds of things that were discussed by the expert, but you're correct, Your Honor. [00:38:57] Speaker 00: That isn't what the board said. [00:38:59] Speaker 00: The board actually said, [00:39:00] Speaker 00: that PNC ultimately didn't come forward with substantial evidence to support that this would have been a concern at all in Garcia, much less that it would have- What evidence do you think the board would have required, therefore? [00:39:13] Speaker 01: Everybody concedes there were trade-offs. [00:39:15] Speaker 01: So would the petition, was it requiring that the petitioner come in and say, well, there [00:39:22] Speaker 01: it's six against seven, or this is more important than this trade-off, or what? [00:39:28] Speaker 01: I mean, I honestly don't know the answer to that. [00:39:30] Speaker 00: I mean, if it came down to the trade-off issue, that's obviously a heavily fact-dependent issue where we would likely be deferring quite heavily to the board on their assessment of that issue. [00:39:40] Speaker 01: Of course, here, trade-offs... We don't know what their assessment was because they didn't tell us. [00:39:44] Speaker 00: Well, they did. [00:39:44] Speaker 00: They talked about the trade-offs, but I think their primary point was ultimately the PNC expert himself [00:39:51] Speaker 00: did not actually back up this theory, which was their only theory. [00:39:56] Speaker 03: But my understanding is that Dr. Mowry did testify that there would be advantages to doing the error checking on the phone as opposed to on the server, right? [00:40:06] Speaker 00: He did in his initial declaration, and then ultimately at his deposition, he testified. [00:40:11] Speaker 03: You're saying he took it back? [00:40:13] Speaker 00: He essentially did, Your Honor, in testifying. [00:40:15] Speaker 00: He didn't know. [00:40:16] Speaker 00: We're supposed to be starting with Garcia. [00:40:19] Speaker 00: When we were starting with Garcia, he said he actually didn't know whether bandwidth would even be a concern in view of Garcia. [00:40:26] Speaker 00: So I would say that to the extent that PNC had used his declaration to try to support that someone would have had a concern about bandwidth with Garcia, he did take it back. [00:40:43] Speaker 04: So this is... Can you give us the page size for that particular thing that you're seeing with taking back the definition page size for what you were just referring to in this slide? [00:40:52] Speaker 00: Yeah, so this is in the final written decision at appendix... Now let's go to the actual page. [00:40:58] Speaker 00: Okay. [00:41:03] Speaker 00: And this is actually, Your Honors may have seen there was an exchange of 28-J letters yesterday and the day before, and we actually cited to these parts of the testimony in that letter as well. [00:41:14] Speaker 01: Is that the Honeywell stuff? [00:41:16] Speaker 00: Yes, Your Honor, yes. [00:41:37] Speaker 00: So this is deposition page 76, which is appendix 5014. [00:41:43] Speaker 00: Actually, I apologize, Your Honor. [00:41:48] Speaker 00: That is not the right site. [00:42:10] Speaker 00: Oh, so this is, I'm sorry, one page earlier, 4999. [00:42:12] Speaker 00: 4999. [00:42:16] Speaker 00: The question was, was the Garcia process bandwidth intensive? [00:42:19] Speaker 03: And he says, well, I wouldn't necessarily... Wait, wait, wait, wait, wait. [00:42:23] Speaker 03: Okay. [00:42:23] Speaker 03: Where? [00:42:24] Speaker 00: What line? [00:42:26] Speaker 00: Line 16 is the answer. [00:42:27] Speaker 00: I wouldn't necessarily characterize it as bandwidth intensive. [00:42:31] Speaker 00: And the board actually goes and cites additional testimony as well, which we did... Well, that's not saying there's no advantage to it. [00:42:39] Speaker 00: We think it's not bandwidth intensive. [00:42:41] Speaker 03: Why is that taking back his testimony that there's a motivation here? [00:42:47] Speaker 00: Well, if you don't have a problem to begin with, the idea that was put forth in the petition. [00:42:52] Speaker 03: You can still do something because it's beneficial, even if it's not solving the problem. [00:42:57] Speaker 00: Sure. [00:42:58] Speaker 00: And then he does go on. [00:42:59] Speaker 00: The other equivocation that the board relied on as well is he then said, well, he didn't actually know. [00:43:05] Speaker 00: Maybe you'd prefer to do it on the server. [00:43:08] Speaker 02: Where does he say that? [00:43:09] Speaker 00: Let's see, so appendix 5164, and there's a couple other examples too. [00:43:31] Speaker 00: They're all throughout the deposition testimony here. [00:43:35] Speaker 00: He says at line 16, [00:43:38] Speaker 00: We discussed this earlier in the day. [00:43:40] Speaker 00: There are reasons why designers might want to work on the client. [00:43:45] Speaker 00: They might want to work on the server. [00:43:46] Speaker 00: Either option might make sense. [00:43:48] Speaker 00: And by the way, opposing counsel made a new argument earlier today that this error checking. [00:43:53] Speaker 02: Let's stick with this, all right? [00:43:55] Speaker 02: You can make that point. [00:43:56] Speaker 00: I promise I will bring it back to that. [00:43:58] Speaker 00: He suggested that this is all just about trying to figure out if someone forgot to sign the check. [00:44:04] Speaker 00: And why wouldn't you? [00:44:05] Speaker 03: No, no, no, no, no. [00:44:05] Speaker 03: Just stick with this, please. [00:44:07] Speaker 03: It's confusing. [00:44:08] Speaker 00: But Your Honors, I do want to point out, error check. [00:44:10] Speaker 03: Just stick with this. [00:44:13] Speaker 03: I'll give you time to make your point. [00:44:14] Speaker 03: But why is this taking back his testimony about the advantage? [00:44:22] Speaker 00: Well, this part, he's just equivocating. [00:44:24] Speaker 00: This is the portion that the board pointed to among several other places where he says. [00:44:29] Speaker 03: He says there are reasons you might do it one way and reasons you might do another. [00:44:32] Speaker 03: But there's still a motivation. [00:44:34] Speaker 03: There can still be a motivation to do it on the phone. [00:44:38] Speaker 00: Right, there could be in theory, but ultimately he didn't come forward with any reason to say that somebody would actually prefer that. [00:44:45] Speaker 03: And what I was about to get to- I thought he did testify to that. [00:44:48] Speaker 00: Your Honor, what I was about to get to is- Did he testify to that? [00:44:52] Speaker 00: He has very conclusory testimony, which is what the board cites and said was insufficient. [00:44:59] Speaker 00: So remember that this is a dependent claim. [00:45:02] Speaker 00: This is claim two through seven dependent and claim one. [00:45:07] Speaker 00: And PNC is making the suggestion, well, you could put the error checking wherever you want. [00:45:13] Speaker 00: Duplicate detection is a specific form of error checking called out in the patent. [00:45:19] Speaker 00: Remember, their entire theory for claim one depends on that error checking being done on the server. [00:45:29] Speaker 00: This idea, well, you could just do it wherever you want. [00:45:32] Speaker 00: That's not supported by their testimony. [00:45:34] Speaker 00: That wasn't found by the board correctly. [00:45:37] Speaker 00: And it's totally inconsistent with their theory with respect to the rest of the claim, which is that APOSA is going to be doing this on the server. [00:45:46] Speaker 00: That was their whole combination for claim one. [00:45:50] Speaker 00: So I do think that's important. [00:45:51] Speaker 03: OK. [00:45:52] Speaker 03: I think unless there are other questions. [00:45:55] Speaker 04: Which one do you have? [00:45:57] Speaker 04: I have one last question. [00:45:58] Speaker 04: If you have any response to a public council's argument where he explained that rather than just focusing on the one basis that I heard in your opening argument, there are actually three alternative bases. [00:46:11] Speaker 04: And so in theory, you would need to win on each of those in order for you to win on this particular issue. [00:46:18] Speaker 00: Yeah, one of them was the one that your honor has discussed with him in great detail, which is not in their brief and is just legally incorrect. [00:46:25] Speaker 00: But what he tried to break out as multiple different arguments about different pieces of the check that might be used, they all suffer exactly the same problem that I identified in my argument, which is they are all things that we put evidence in the patent owner's response would be not expected to succeed because of skew [00:46:48] Speaker 00: warp, and the other issues. [00:46:51] Speaker 00: And PNC, during the proceedings below, and consequently the board, just completely and totally ignored those problems. [00:46:59] Speaker 00: And the fact that the board did not even go to the question of how would the skew or the warp impact the motivation and the expectation of success for this alleged combination on claim one. [00:47:15] Speaker 00: That applies absolutely equally however anyone wants to look at what the PNC theory was, whether it was the signature or the micro or something else that they're presenting to your honors today. [00:47:28] Speaker 00: Whatever you want to characterize it as, you have this fundamental problem that the board simply entirely ignored the finding that you'd have skew, warp, and other significant issues [00:47:43] Speaker 00: and did not incorporate that at all into their analysis. [00:47:48] Speaker 03: Okay, I think we're out of time. [00:47:50] Speaker 03: Thank you. [00:47:51] Speaker 03: Mr. Lanier, you have a minute. [00:47:59] Speaker 05: Thank you, Your Honor. [00:47:59] Speaker 05: I just wanted to provide a few record sites here that may respond to some of the things that Ms. [00:48:05] Speaker 05: Glasser said. [00:48:07] Speaker 03: Did Dr. Mowry say there was a motivation to combine and did he take it back? [00:48:11] Speaker 05: He did say there was a motivation to combine. [00:48:14] Speaker 05: He said there were multiple motivations to combine. [00:48:15] Speaker 05: He did not ever take it back, Your Honor. [00:48:18] Speaker 05: And if it's helpful, the relevant portion of the petition on claim two can be found at appendix pages 281 to 285. [00:48:28] Speaker 05: And Your Honors can see what the motivations to combine were there. [00:48:34] Speaker 05: They're all supported by Dr. Mowry's testimony. [00:48:37] Speaker 05: His testimony is in the record. [00:48:41] Speaker 05: for example, at appendix pages 952 to 953 on this. [00:48:49] Speaker 05: And so I think those are relevant. [00:48:51] Speaker 05: It is not correct that Dr. Mowry stepped back from his opinions that he, I'm not sure what word was used. [00:49:00] Speaker 05: What he testified and what the board found is that there would be tradeoffs. [00:49:03] Speaker 05: And there would be reasons you might want to do it on the server. [00:49:06] Speaker 05: And there would also be reasons that he put forward in his declaration and that we put forward in our petition that you would want to do it on the device to avoid sending checks unnecessarily because you want to conserve bandwidth. [00:49:22] Speaker 05: The other thing I would point out, just to make sure that the record's clear, is a couple of times USA's counsel said that the bandwidth savings motivation was our only motivation to combine that was set forth in the petition. [00:49:35] Speaker 05: That's not accurate. [00:49:36] Speaker 05: And your honors will see that if you review page 72 of the red brief, for example. [00:49:43] Speaker 05: Happy to answer any questions about it. [00:49:45] Speaker 05: I know I only had a minute. [00:49:46] Speaker 03: And Judge Cunningham, do you have any other questions? [00:49:51] Speaker 05: Thank you very much. [00:49:53] Speaker 03: Thank you, Your Honors. [00:49:53] Speaker 03: Thank both counsel. [00:49:54] Speaker 03: The case is submitted.