[00:00:00] Speaker 00:
Our next case is 3D surfaces, LLC versus Intel Corporation, 24-1909.

[00:00:05] Speaker 00:
Councilor Belloli?

[00:00:13] Speaker 02:
May I please the court?

[00:00:14] Speaker 02:
Mark Belloli for 3D surfaces, which is owned by the sole inventor in this case, Dr. Adrian Safardi.

[00:00:19] Speaker 02:
Your honor, this is a rare case where the board rendered a claim construction

[00:00:25] Speaker 02:
of the key term at issue, but then did not apply it in rendering its decision that the patents at issue were invalid.

[00:00:33] Speaker 02:
If the board had actually applied its claim construction, it would have been compelled to come to the conclusion that both references are missing the key limitation and both references actually teach the exact opposite of what the board's construction was.

[00:00:52] Speaker 02:
So the board's construction was a very specific means plus function construction.

[00:00:57] Speaker 02:
But the tessellation unit or the tessellate unit had the corresponding structure of a GPU.

[00:01:04] Speaker 02:
So you have to have a GPU with a computer graphics.

[00:01:07] Speaker 01:
In the board's final written decision for the 299 patent, the board states, quote, patent owner particularly asserts here that Foley's disclosure concerning tessellation

[00:01:20] Speaker 01:
is limited to pre-teslating primitive shapes, such as triangles offline.

[00:01:25] Speaker 01:
Why is it limited that way?

[00:01:28] Speaker 02:
Nothing in Foley.

[00:01:29] Speaker 02:
There is no disclosure in Foley of doing tessellation within a graphics pipeline hardware of a GPU.

[00:01:38] Speaker 02:
There's no appellee's experts didn't point to any, weren't even asked to find one.

[00:01:44] Speaker 02:
And the board doesn't point to anywhere in Foley

[00:01:47] Speaker 02:
that has a computer, a GPU graphics pipeline hardware with a tessellation unit in it.

[00:01:55] Speaker 02:
It has the opposite.

[00:01:56] Speaker 02:
Tessellation is always done, again, offline, which is the prior art as disclosed in the patent.

[00:02:01] Speaker 02:
And so the exact, fully is just like the prior art.

[00:02:04] Speaker 02:
Do tessellation somewhere other than the graphics pipeline hardware.

[00:02:11] Speaker 01:
Before the board in your sir reply, you argued

[00:02:15] Speaker 01:
that petitioner's citations to Foley include portions of two separate chapters separated by nearly 150 pages.

[00:02:22] Speaker 01:
That's chapters 16 and 18.

[00:02:26] Speaker 01:
Why does that matter?

[00:02:28] Speaker 02:
I don't think that specifically matters, your honor.

[00:02:31] Speaker 02:
I think the key point is, again, there is nothing in Foley, which is a disclosed reference, that teaches what is required by the board's construction that it did not apply, which is you have a structure that's a GPU, has a computer graphics pipeline hardware, and within that, I think your honor has, no, okay.

[00:02:55] Speaker 02:
has this graphics pipeline hardware and inside that graphics pipeline hardware needs to be a processor that does tessellation, that is programmed to execute the tessellating step of the microcode disclosed in the specification.

[00:03:08] Speaker 02:
That is not taught by either reference.

[00:03:11] Speaker 02:
Both references, again, teach exactly the opposite.

[00:03:14] Speaker 02:
Do tessellation somewhere other than the GPU and somewhere other than the graphics pipeline hardware.

[00:03:22] Speaker 01:
In your opening brief, you state that

[00:03:25] Speaker 01:
I'm quoting, to make the inventive leaf as Dr. Sfardi did, the prior art would need to be modified in the manner that Dr. Sfardi set forth in the specification of the 534 and 299 patents.

[00:03:41] Speaker 01:
But Intel and Dell did not advance a modification theory, as they readily admitted.

[00:03:49] Speaker 01:
If we find that Dell and Intel did, in fact, present a modification argument to the board

[00:03:56] Speaker 01:
Would you agree that the board's decision is supported by substantial evidence?

[00:04:00] Speaker 02:
No, because there's no evidence of motivation to modify.

[00:04:06] Speaker 02:
Both experts, well, one, if anything, there's evidence of no motivation to modify.

[00:04:11] Speaker 02:
3D surfaces expert says you wouldn't modify.

[00:04:14] Speaker 01:
Well, I'm asking you whether they advanced that theory.

[00:04:18] Speaker 02:
Oh, sorry, Your Honor.

[00:04:19] Speaker 02:
I thought you said if we find that theory.

[00:04:21] Speaker 02:
I understand your.

[00:04:22] Speaker 02:
No, that theory was not advanced.

[00:04:26] Speaker 02:
In the petition, let me just find the appendix site for your honor.

[00:04:29] Speaker 02:
The record is clear on this point.

[00:04:35] Speaker 02:
It's appendix 237, which is the petition, and it states there that a PASIDA would have a reasonable expectation of success because implementations, algorithms for both surface types would be nearby combined alongside

[00:04:52] Speaker 02:
one another in the same system and for use for their intended purpose without modification, emphasis on without modification.

[00:04:58] Speaker 02:
So there's no, there was no theory of modification, which puts this right in the purview of the Oren Technologies versus ProPran Express case, which is a 2021 Federal Circuit case, case number 1778, July of 2021.

[00:05:20] Speaker 01:
Rather than drilling further in, I'm going to let your opposing counsel deal with that question of whether they proposed it.

[00:05:29] Speaker 04:
I'm a little confused, because it seems to me that the board found that the 501s party showed the entire process.

[00:05:39] Speaker 04:
And that all that's missing is that the tessellation part of that process in the patent, it's in its own GPU.

[00:05:48] Speaker 04:
Is that the problem?

[00:05:50] Speaker 04:
And that's your argument that there's nothing that shows the tessellation part in its own GPU?

[00:05:57] Speaker 04:
It doesn't fully explain that all the different parts of the process can be done on separate GPUs?

[00:06:07] Speaker 02:
In separate processors, not necessarily separate GPUs.

[00:06:10] Speaker 04:
Isn't that enough?

[00:06:12] Speaker 04:
It doesn't have to specify

[00:06:15] Speaker 04:
Tessellation, if it teaches all the different parts of the process, can be done on separate GPUs.

[00:06:21] Speaker 04:
I don't know that this difference that you're trying to tell me between processor and GPU, I don't understand or appreciate it if you want to try to explain, but I don't think that's the point.

[00:06:30] Speaker 04:
I thought fully, your beef with fully is it doesn't specifically say you can do tessellation on a separate GPU.

[00:06:38] Speaker 04:
But why does that matter if it teaches more broadly that you can do all parts of the process on separate GPUs?

[00:06:45] Speaker 02:
So Your Honor, what the invention is that is describing the specification.

[00:06:50] Speaker 02:
So Your Honor is correct that the process steps are disclosed by Sephardi.

[00:06:55] Speaker 02:
So we're in agreement there.

[00:06:56] Speaker 02:
And Sephardi also has this concept of control points, the prior Sephardi.

[00:07:04] Speaker 02:
And so you have the steps there, but what the next patent, these two patents, the 534 and 299, advocate for as the inventive step is, in the prior art, you have your graphics pipeline hardware, and some of those steps in the process are done in this pipeline within the GPU, okay?

[00:07:26] Speaker 02:
But tessellation is always done outside and offline.

[00:07:29] Speaker 02:
And what Dr. Safardi said,

[00:07:31] Speaker 02:
this is a hardware implementation, building upon his prior invention, he says, we're going to take where Tessellation's done outside of this graphics pipeline hardware, and we're going to move it, and we're going to put it in, in the relevant order, in the relevant step, inside the GPU as part of that graphics pipeline hardware.

[00:07:54] Speaker 04:
And both... Sure, I think that's what I said, generally, and Foley teaches

[00:08:01] Speaker 04:
using GPUs for all parts of the rendering process I Did that I believe I disagree or I do disagree with you, okay?

[00:08:10] Speaker 04:
But let's just assume it does even if it doesn't mention tessellation if we conclude that Foley teaches putting all parts of the rendering process in a GPU then doesn't matter if it specifically mentions tessellation or not and

[00:08:27] Speaker 04:
That's, I mean... To disclosure, not motivation to come on.

[00:08:32] Speaker 04:
I get it.

[00:08:32] Speaker 04:
Those are some arguments.

[00:08:34] Speaker 04:
But I think your main argument is there's no disclosure at all, and I just don't see that.

[00:08:39] Speaker 02:
Okay, that is the main argument.

[00:08:40] Speaker 02:
There is no disclosure in either reference of tessellation within hardware.

[00:08:46] Speaker 04:
And that's my question.

[00:08:47] Speaker 04:
Why does it matter?

[00:08:48] Speaker 04:
If there was a disclosure of all the steps in tessellation in one reference, we'd be in anticipation world.

[00:08:56] Speaker 04:
If Foley teaches a broader principle, it doesn't have to specifically teach tessellation, does it?

[00:09:04] Speaker 02:
Yes.

[00:09:04] Speaker 02:
Well, there needs to be, well, one, there either needs to be a teaching of this limitation, this tessellation unit under the board's construction, or a modification.

[00:09:12] Speaker 04:
Or teaching that a skilled artisan would understand Foley to be teaching that tessellation could be done on a GPU by saying all parts of the process can be done on a GPU.

[00:09:23] Speaker 02:
but not within the graphics pipeline hardware, which is a specific part of the board's construction that the board repeatedly ignores in its analysis.

[00:09:34] Speaker 02:
So with respect to Foley, given the emphasis on it here, so nowhere does Dell or Intel show that Foley teaches a tessellation unit inside a graphics pipeline hardware of a GPU.

[00:09:54] Speaker 02:
Foley actually, again, teaches the opposite.

[00:09:56] Speaker 02:
Tessellation is external to the GPU.

[00:09:58] Speaker 02:
There is no teaching or suggestion of tessellation within the GPU in Foley, which is the point of novelty of the asserted patents.

[00:10:09] Speaker 02:
Dell's experts and Intel's experts could not identify Foley teaching a tessellation unit under the board's construction.

[00:10:15] Speaker 02:
In fact, they said they were not asked, or he was not asked to do that.

[00:10:21] Speaker 02:
And the board says the evidence does not support patent owners' position that Foley is limited to tessellation outside the GPU.

[00:10:29] Speaker 02:
But that's like saying any textbook's not limited to what's in the text.

[00:10:34] Speaker 02:
Texts are limited to what's in the text.

[00:10:35] Speaker 02:
And there is no teaching of anything in Foley of taking tessellation

[00:10:42] Speaker 02:
in hardware and putting in that graphics pipeline hardware of a GPU in the correct space because it has to be coupled under the board's construction between the transform and lighting units.

[00:10:55] Speaker 02:
Again, Foley teaches the opposite.

[00:10:57] Speaker 02:
An analogy here would be if I gave your honor's directions that said take a left, and then take another left, you wouldn't think I taught or suggested taking any rights.

[00:11:06] Speaker 02:
The same thing is here, where you have two references that teach exactly the opposite of the invention is disclosed in the specification, exactly the opposite of the two

[00:11:20] Speaker 02:
prior art references at issue.

[00:11:21] Speaker 02:
So when you combine them, when you combine things that are exactly the opposite twice, you don't arrive at the invention absent modification.

[00:11:31] Speaker 02:
And again, there was no modification

[00:11:35] Speaker 02:
theory.

[00:11:36] Speaker 02:
And modification and combination are two different theories.

[00:11:40] Speaker 02:
And they needed to be stated separately or advanced separately.

[00:11:44] Speaker 02:
And there is a line of cases within this court that when a theory of motivation to modify is not asserted, it is waived.

[00:11:55] Speaker 02:
The board can't make a finding of obviousness on a theory of motivation to modify prior art that was not in the petition.

[00:12:02] Speaker 02:
And that was not in the petition.

[00:12:04] Speaker 02:
here.

[00:12:05] Speaker 01:
Those are, again, an Orrin case and the Yida case.

[00:12:17] Speaker 02:
Yeah, why don't you take two?

[00:12:19] Speaker 02:
Two left.

[00:12:23] Speaker 02:
So you'd be going exactly the opposite direction, which is exactly my point.

[00:12:29] Speaker 02:
We're talking about references that teach exactly the opposite of the invention, as described in the specification, as discussed in the file history, because

[00:12:40] Speaker 02:
There was a double patenting obviousness rejection initially over the Safari reference, the Safari 501 reference.

[00:12:50] Speaker 02:
And the exact argument of what was not in Safari is what is also not in Foley, which is, again, that tessellation unit in the graphics pipeline hardware of the GPU.

[00:13:02] Speaker 02:
And that was the invention as disclosed in specification over the prior Safari.

[00:13:06] Speaker 02:
Unless there's questions, I'll reserve.

[00:13:09] Speaker 00:
Okay.

[00:13:10] Speaker 00:
Thank you.

[00:13:14] Speaker 00:
Let's hear from Councillor Tompros.

[00:13:17] Speaker 03:
Thank you, Your Honor.

[00:13:18] Speaker 03:
May it please the court, Louis Tompros on behalf of Appellee's Intel and Dell.

[00:13:22] Speaker 03:
This is a straightforward, substantial evidence appeal.

[00:13:24] Speaker 03:
Let me start with Judge Wallach's question about motivation to modify.

[00:13:29] Speaker 03:
The question was, did we advance the motivation to modify or not?

[00:13:32] Speaker 03:
The answer is yes, we did.

[00:13:33] Speaker 03:
And the board found we did.

[00:13:34] Speaker 03:
The board found we did specifically in Appendix page 52.

[00:13:38] Speaker 03:
The board says, such arguments directed to the obviousness inquiry help articulate petitioners' motivation to modify Sephardi

[00:13:46] Speaker 03:
to implement each stage of Sephardi's rendering process using Foley's individual processors in a graphics hardware pipeline.

[00:13:54] Speaker 03:
You can find that motivation to modify in our petition.

[00:13:58] Speaker 03:
Appendix page 209 is the place that I think it is the most clearly shown.

[00:14:02] Speaker 03:
That is the place where we have a picture where we take the pipeline.

[00:14:06] Speaker 03:
The picture has the caption, exemplary combination

[00:14:09] Speaker 03:
A 501 pub, that's Sephardi.

[00:14:12] Speaker 03:
And Foley, we take the Foley's teaching of graphics pipeline and have a box that modifies Sephardi by putting that box directly in it.

[00:14:21] Speaker 03:
Here is where I think the confusion lies, Your Honor, on the motivation to modify issue.

[00:14:25] Speaker 03:
What we articulated in our petition and what the board found was that you could modify Sephardi by combining it with Foley.

[00:14:34] Speaker 03:
A combination of the two resulted in obviating the supposedly unique aspects of the invention.

[00:14:43] Speaker 03:
So if you're talking about, did we articulate

[00:14:46] Speaker 03:
Modifying Sephardi, we did by combining it with Foley.

[00:14:49] Speaker 03:
Did we articulate modifying Foley?

[00:14:51] Speaker 03:
We did by combining it with Sephardi.

[00:14:53] Speaker 03:
We did not say that you needed to further modify that combination because the combination itself discloses precisely what is claimed.

[00:15:03] Speaker 03:
The pipelining is all there in Foley.

[00:15:05] Speaker 03:
including individual processors within a GPU, and the specific articulation of the steps is articulated in Safari.

[00:15:13] Speaker 03:
So there was a motivation to modify by combining the two.

[00:15:17] Speaker 03:
As to where Judge Hughes's questions were on the question of substantial, I think that the question is whether there is actually a disclosure in Foley of the tessellation unit.

[00:15:32] Speaker 03:
What Foley specifically says, so Foley is a general purpose textbook, it was called like the Bible of graphics.

[00:15:39] Speaker 03:
graphics Bible something like that it does indeed disclose pipelining it discloses pipelining using individual units and it does disclose specifically the idea of tessellation after

[00:15:52] Speaker 03:
after transformation.

[00:15:54] Speaker 03:
So an appendix page 2055 fully says, quote, each stage of the pipeline can be implemented in several ways as an individual general purpose processor, as a custom hardware unit, or as a pipeline or parallel processor itself.

[00:16:10] Speaker 03:
So it does disclose each of the processes can be placed into an individual unit, including in a pipeline, including in a general purpose processor.

[00:16:19] Speaker 03:
And Foley itself then goes on to say, in the context of, quote, curved surfaces, which is what we're talking about with the patent here, we're talking about video game graphics curved surfaces, quote, tessellation should occur after transformation.

[00:16:35] Speaker 03:
That's appendix page 1970.

[00:16:37] Speaker 03:
So it has a box that shows the transformation box as one of the boxes in the graphics pipeline.

[00:16:43] Speaker 03:
It then says tessellation should occur after.

[00:16:45] Speaker 03:
So Foley, we think, does indeed disclose that.

[00:16:50] Speaker 03:
And it certainly is not limited to tessellation outside of the pipeline, as 3D Surfaces has argued.

[00:16:59] Speaker 03:
And the board specifically made that finding.

[00:17:01] Speaker 03:
The board found at appendix page 48

[00:17:04] Speaker 03:
The evidence does not support patent owner's petition that Foley is limited to a computer graphics process using pretestilation or tessellation outside of the GPU.

[00:17:15] Speaker 03:
To reject that finding,

[00:17:17] Speaker 03:
This court would have to find that there was no substantial evidence for that.

[00:17:20] Speaker 03:
Foley provides ample substantial evidence, the combination of each of the pieces of the pipeline coupled with the description of tessellation occurring after transformation.

[00:17:31] Speaker 03:
And I think the only argument that I think I've ever heard made about Foley

[00:17:35] Speaker 03:
In response to that is this concept that those are in two separate chapters of Foley, which we agree they are in two separate chapters.

[00:17:42] Speaker 03:
I think Council for 3D Services just today correctly acknowledged it doesn't matter.

[00:17:46] Speaker 03:
Foley is talking about these general purpose graphics principles.

[00:17:51] Speaker 03:
That does make this ultimately boil down to a straightforward substantial evidence appeal.

[00:17:56] Speaker 03:
Just so the court is clear, we do think this court has previously rejected and should continue to reject the notion that because reference A doesn't explicitly disclose something and reference B doesn't explicitly disclose it, that the combination cannot, as this court has repeatedly said, that misunderstands the law of obviousness.

[00:18:14] Speaker 03:
It is perfectly possible for A plus B

[00:18:18] Speaker 03:
to render obvious something that is not disclosed in either A or B. That's fundamentally the point of KSR and obviousness law in general.

[00:18:28] Speaker 03:
Unless the court has further questions, I don't have anything else.

[00:18:30] Speaker 00:
Thank you, Your Honor.

[00:18:36] Speaker 00:
You have two minutes, Rebuttal.

[00:18:38] Speaker 02:
Thank you, Your Honor.

[00:18:39] Speaker 02:
The issue in the petition is

[00:18:44] Speaker 02:
motivation to modify there, it's not.

[00:18:48] Speaker 02:
When the board references a modification theory at appendix 52, it doesn't say where in the petition that is.

[00:18:57] Speaker 02:
And at appendix 209, which counsel referenced, it's talking about motivation to combine the references.

[00:19:03] Speaker 02:
It's not saying to modify them.

[00:19:05] Speaker 02:
which is consistent with what their experts said and consistent with what was argued all down below.

[00:19:09] Speaker 02:
There simply is no motivation to modify theory or evidence to support that theory.

[00:19:15] Speaker 04:
We're talking about modification.

[00:19:17] Speaker 04:
Because there was no such theory.

[00:19:22] Speaker 04:
the process and then tessellation on a GPU and Savardi whatever shows the whole process and Foley teaches using GPUs to do all parts of the process.

[00:19:34] Speaker 04:
Combining them, you get the patent invention.

[00:19:37] Speaker 04:
I mean, Mr. Tompros just stated the correct view of the law, which is

[00:19:44] Speaker 04:
The references don't have to specifically disclose things separately.

[00:19:48] Speaker 04:
They can be combined to disclose the invention.

[00:19:52] Speaker 04:
And if they are, which the board found here, then we're looking at substantial evidence.

[00:19:56] Speaker 02:
I agree with that recitation of the Law, Your Honor, completely.

[00:19:59] Speaker 02:
But it's not every circumstance where A and B both don't teach it, and then somehow they can be combined to get there without modification.

[00:20:08] Speaker 04:
If you find that Foley discloses using GPUs for all the different parts of this process, and the process is described in SAFARTI, then it shows using a GPU for all different parts of the process.

[00:20:24] Speaker 02:
The rub there, your honor, is that Foley does not teach tessellation in the graphics pipeline hardware of a GPU under the construction.

[00:20:33] Speaker 04:
That's a substantial evidence question, right?

[00:20:38] Speaker 02:
Not when their expert didn't point to it, and we don't think there's anything in the text that's pointed to that has it either.

[00:20:45] Speaker 00:
Okay.

[00:20:47] Speaker 00:
Okay, thank you.

[00:20:48] Speaker 01:
I appreciate you using the rub.

[00:20:51] Speaker 01:
The rub, okay.

[00:20:53] Speaker 00:
Party for their arguments.

[00:20:56] Speaker 00:
The case will be taken under submission.