[00:00:00] Speaker 05:
All right.

[00:00:00] Speaker 05:
Our first case this morning is number 241623, Apple Inc.

[00:00:04] Speaker 05:
versus Smartphone Technologies.

[00:00:07] Speaker 05:
Ms.

[00:00:08] Speaker 05:
McComas.

[00:00:09] Speaker 02:
Good morning.

[00:00:10] Speaker 02:
May it please the court?

[00:00:11] Speaker 02:
Debbie McComas on behalf of Apple.

[00:00:13] Speaker 02:
This appeal relates to the dependent claims 2 through 4 and 15 through 20 of the 943 patent.

[00:00:21] Speaker 02:
There are two different combinations at issue here.

[00:00:23] Speaker 02:
The first is Byrne and the W0748, which relates to claims three and four.

[00:00:28] Speaker 02:
And then the second is the Raleigh-Byrne combination, which addresses the rest of the dependent claims.

[00:00:34] Speaker 02:
I'm going to start with the Byrne W0748 combination, unless the court prefers that I take a different order.

[00:00:42] Speaker 02:
Now, with respect to this combination, it's helpful to put it in perspective that the challenged independent claims had already been found obvious by Byrne alone.

[00:00:51] Speaker 02:
So what claims three and four add to this is that the wireless device, which we've already established as CERN, must be in further communication with a network switch box that is in turn configured to join a virtual

[00:01:07] Speaker 02:
network.

[00:01:08] Speaker 02:
That's all we're talking about here is what we're talking about is joining a network switch box to be configured to join a virtual network.

[00:01:19] Speaker 00:
Does it need to be configured so that the actual device joins the virtual network?

[00:01:27] Speaker 00:
And here I'm just going to call that the telephone because I think that that's reasonably clear.

[00:01:32] Speaker 00:
No, and that's the problem here, right?

[00:01:34] Speaker 00:
So this is, I guess, what I've been focusing on and want some help with.

[00:01:40] Speaker 00:
It does seem to me that the preferred reading of the claim language itself is this broader one.

[00:01:50] Speaker 00:
Only the switch box needs to join the virtual network.

[00:01:53] Speaker 00:
The telephone does not.

[00:01:55] Speaker 00:
But it seems to me that's not self-evidently clear and that one might read it

[00:02:04] Speaker 00:
to require the telephone to join the virtual network.

[00:02:10] Speaker 00:
And there are aspects of your petition, the relevant paragraph, I think it's 120, of your expert, of the patent that kind of suggests

[00:02:23] Speaker 00:
that the telephone actually needs to be joining the virtual network.

[00:02:30] Speaker 00:
You didn't ask for a claim construction saying that that's not so, at which point I guess my question is, why was it unreasonable for the board to read your argument to be that the telephone has to join the virtual network, at which point

[00:02:52] Speaker 00:
There's a problem of motivation and reasonable expectation of success that might not, in fact, be there if only the box needs to join the network.

[00:03:03] Speaker 00:
Do you understand my line of thinking?

[00:03:05] Speaker 02:
I do, Your Honor, and I appreciate the clarification of understanding where you're coming from.

[00:03:10] Speaker 02:
There's a lot to unpack there, so I'll work backwards with it.

[00:03:14] Speaker 02:
I think, first of all, I think Apple was very clear, if it wasn't clear in the petition, it's very clear by the reply that what we're talking about here is adding a VPN to the network switch box, not to burn.

[00:03:32] Speaker 02:
that it wouldn't matter what their resources.

[00:03:36] Speaker 00:
Well, I'm not quite sure that's quite the, that that way of putting it gets at the point.

[00:03:41] Speaker 00:
Of course, you're not adding a VPN to the particular device.

[00:03:46] Speaker 00:
The question is whether the device has to be working on that VPN.

[00:03:56] Speaker 00:
And the board's reasoning, I think, at its core.

[00:03:59] Speaker 00:
I'm going to put aside the reasonable expectation of success, which I think the board was weaker on.

[00:04:05] Speaker 00:
But on the motivation, I think the board's core reasoning was you just haven't explained why anybody would be motivated to have the device work on the virtual network, because it's all about security.

[00:04:20] Speaker 00:
And this device, the particular device, has all the security you could possibly want.

[00:04:25] Speaker 02:
I understand that's the board's decision.

[00:04:28] Speaker 02:
I don't think it was ever Apple's position that you had to teach burn connecting to

[00:04:37] Speaker 02:
the VPN or that there had to be a reason for Vern to be connected to a network switch box that was connected to the VPN.

[00:04:46] Speaker 02:
What was shown here, and it's helpful to kind of step back.

[00:04:49] Speaker 02:
If you look at what Smart Mobile's argument was in the patent owner response, it was really this micro cell argument related to whether or not there was

[00:05:00] Speaker 02:
it made sense to combine the WO-748 network switch box with BURN.

[00:05:06] Speaker 02:
That's really what the briefing went to, for the most part.

[00:05:10] Speaker 01:
But when we get to- Do you at least agree that BURN already implemented sufficient data encryption?

[00:05:15] Speaker 01:
Do you agree with that?

[00:05:17] Speaker 02:
Bern had some sort of encryption, but I think the evidence here that the board disregarded completely was that it wouldn't matter if there was already encryption on Bern's cell phone.

[00:05:30] Speaker 02:
What we're talking about is encryption and the benefits of adding the VPN to the network as a whole.

[00:05:35] Speaker 05:
It's not duplicative, in other words.

[00:05:38] Speaker 02:
I'm sorry, can you say that again?

[00:05:39] Speaker 05:
It's not duplicative.

[00:05:42] Speaker 05:
The security provided by a VPN is not duplicative of the security provided by burn.

[00:05:47] Speaker 05:
As I understand it, the burn encryption is between the base station and the telephones, and that the VPN provides protection between the base station and the internet.

[00:06:05] Speaker 02:
That's entirely correct.

[00:06:06] Speaker 02:
The fact that one of your devices that's joining the network has its own security

[00:06:11] Speaker 02:
doesn't take away from the need to have security for the network as a whole.

[00:06:16] Speaker 02:
I do want to add one more piece to that that I think maybe helps, Your Honor, with respect to our claims instruction as to what's being claimed here.

[00:06:25] Speaker 02:
Here, if you look at the 943 patent, there's no description of the 943 patent as to what

[00:06:31] Speaker 02:
a VPN is or how you apply it.

[00:06:34] Speaker 02:
And we know from the case law that you presume that one skilled in the art would know how to do that under those circumstances.

[00:06:40] Speaker 00:
I averted to the possibility or to the idea that I think the board was weaker on the reasonable expectation of success precisely for that reason.

[00:06:49] Speaker 00:
So it's really the motivation piece of the burn WO 748 that I'm focusing on.

[00:06:57] Speaker 02:
I don't think you can look at those mutually exclusive from each other in this case.

[00:07:01] Speaker 02:
They are intertwined.

[00:07:03] Speaker 02:
That VPN was known.

[00:07:04] Speaker 02:
All the evidence is this is how it was always done.

[00:07:07] Speaker 02:
Of course you would add it.

[00:07:09] Speaker 02:
And the board, because it was so focused on the teaching and burn, it really didn't address that evidence.

[00:07:17] Speaker 02:
So even if you, looking at it today, believe there was maybe some justification, which I'm not conceding,

[00:07:23] Speaker 02:
for the board to go to look at what Burns' teaching was, it couldn't do that exclusive of the overwhelming evidence of what a VPN taught and how common it was and how easy it was to imply.

[00:07:35] Speaker 02:
It was done.

[00:07:37] Speaker 02:
We're talking about a network here.

[00:07:39] Speaker 02:
What got added in three and four is a network and a network that is called out to be tied to a VPN.

[00:07:47] Speaker 01:
What is your best support in signing to the record before us here for the proposition that you argued to the PTAB that there were benefits to overall network security in modifying W0748?

[00:08:00] Speaker 02:
And you're saying overall security meaning for the entire combination as opposed to adding it to.

[00:08:06] Speaker 02:
I think you can see from the reply, it's Appendix 462 to 464 in the Jensen Declaration that complements that at Appendix 2268 through 2269.

[00:08:20] Speaker 02:
And that's walking through the application of Paulson and how it would have taught and how it would have been necessary.

[00:08:26] Speaker 00:
What was the Jensen reply declaration?

[00:08:29] Speaker 02:
2268 through 2269 And then added to that the questions came up during the oral hearing as well.

[00:08:39] Speaker 02:
I don't want to get ahead of you if you're pulling it up.

[00:08:44] Speaker 02:
Then when we get to the hearing at appendix 569, there's further discussion here where there's further explanation.

[00:08:55] Speaker 02:
VPNs were well known and conveniently implemented.

[00:08:59] Speaker 02:
And then that discussion further refers to the exhibits 1072 and 1073, which are the supporting patents that have already talked about how VPNs were commonly implemented.

[00:09:14] Speaker 02:
and were necessary.

[00:09:19] Speaker 00:
And then- So I think this is a question you were asked before, but in any event, you said, this picks up a little bit on Judge Dyke's question about where in Jensen or in either of your two filings with the board, the petition or the reply, do you say,

[00:09:38] Speaker 00:
there is a benefit to the VPN security between the base station and the internet that is over and above the benefit of encryption between the handset and the base station.

[00:09:58] Speaker 00:
And that would supply a motivation to get to claim three.

[00:10:08] Speaker 02:
I don't think it's phrased as perfectly as you're phrasing it, because I don't think we agreed that we had to show a motivation over and above what Byrne taught.

[00:10:18] Speaker 02:
And as I stand here today, I still think PACT would say you don't have to show that.

[00:10:22] Speaker 02:
But I do think there is general evidence consistently saying this is how it was done

[00:10:29] Speaker 02:
And what we're looking at, we do have evidence referenced in those citations that I just gave you, particularly 2268 through 69 at paragraph 28.

[00:10:38] Speaker 02:
I believe it's a holdover paragraph.

[00:10:44] Speaker 02:
that says, look, this is just one node that we're adding to our network.

[00:10:51] Speaker 02:
That you wouldn't take into account or you wouldn't be concerned about Burn already having certain security in it because what we're putting the VPN to is a broader network.

[00:11:03] Speaker 02:
And the phone, Burn, is only going to be one node of that network.

[00:11:08] Speaker 02:
So you see that 2268 through 69 at paragraph 28.

[00:11:14] Speaker 02:
And that cites to Paulson.

[00:11:15] Speaker 02:
And then Paulson in turn refers to VPN networks connecting users to each other.

[00:11:21] Speaker 02:
Am I going too fast?

[00:11:24] Speaker 01:
You're not going too fast.

[00:11:25] Speaker 01:
I'm not sure I'm agreeing with what you're saying this year.

[00:11:27] Speaker 01:
But you're not going too fast.

[00:11:29] Speaker 02:
And then even back at paragraph 120, where we started, that the reference and the description of the application of VPN is a variety of network devices.

[00:11:41] Speaker 01:
You indicated it wasn't stated as cleanly

[00:11:44] Speaker 01:
as Judge Taranto stated, right?

[00:11:46] Speaker 01:
So you basically agree that you don't ever come out and say it in the fashion that Judge Taranto indicated, correct?

[00:11:54] Speaker 02:
You don't come out and say, I want to be careful because I believe our evidence was strong enough, but we do not say the perfect language that the board came out with in the final written decision, which is you don't have to

[00:12:08] Speaker 02:
just look at firm because here are the teachings.

[00:12:11] Speaker 02:
What we said was here are the teachings, the teachings apply to a network and here are the benefits to the network as a whole that's more than just firm.

[00:12:22] Speaker 02:
So what I cited to you would cover that.

[00:12:26] Speaker 05:
Well, you do explain that VPN provides security, right?

[00:12:31] Speaker 02:
Correct.

[00:12:32] Speaker 02:
Correct, as one of many motivations that you would apply.

[00:12:35] Speaker 02:
So even if Your Honors are struggling with the teaching of Byrne in the implication of the broader teachings, I think it would have been wrong to not consider this additional evidence in the teaching of, regardless of what Byrne is teaching me, and to be clear, Byrne just has its own encryption.

[00:12:56] Speaker 02:
That's not the same as encrypting and creating security for your network.

[00:13:01] Speaker 02:
And if my claim is telling me, add a VPN, and the prior art tells me that once filled in the art, we'll always add a VPN for one reason of security, then that should be enough.

[00:13:16] Speaker 02:
But it at least should have been enough for the board to take that into consideration, and the board didn't.

[00:13:22] Speaker 02:
I don't want to waste all my time.

[00:13:24] Speaker 04:
I think we should spend some time on the Burn-Rolley combination.

[00:13:29] Speaker 04:
Thank you, Your Honor.

[00:13:32] Speaker 02:
And with respect to the Raleigh-Burn combination, here the board denied solely because it found zero evidence of reasonable expectation of success.

[00:13:42] Speaker 02:
This is wrong because Apple's reasonable expectation of success wasn't limited to a phone, and that's where the board

[00:13:49] Speaker 02:
went to and stayed.

[00:13:51] Speaker 05:
Could we assume, just hypothetically for the moment, that we reject that argument?

[00:13:56] Speaker 05:
We think that the argument in evidence was limited to a phone.

[00:14:00] Speaker 05:
But you argue alternatively in the blue brief that even if that's the case, that there's still reasonable expectation of success for the combination, correct?

[00:14:14] Speaker 02:
Yes, sir.

[00:14:15] Speaker 02:
That's correct.

[00:14:16] Speaker 02:
So we argued even up.

[00:14:18] Speaker 05:
I find the board's decision in this respect to be somewhat confusing, because they say that Raleigh and Byrne

[00:14:31] Speaker 05:
don't themselves provide the reasonable expectation of success.

[00:14:35] Speaker 05:
And then they say, you didn't address why other evidence that told you to be a reasonable expectation of success, yet I think you did provide such evidence.

[00:14:47] Speaker 05:
The question is, it seems to me whether the evidence was adequate.

[00:14:51] Speaker 05:
But the board's discussion of the adequacy of that evidence is sort of confusing and not very precise.

[00:15:02] Speaker 02:
Yeah, we agree with that, Your Honor, that even if we are limited to the teaching of Raleigh and Byrne in a phone, that there was evidence as to why there would be a reasonable expectation of success.

[00:15:16] Speaker 02:
And the board certainly didn't consider it adequately.

[00:15:19] Speaker 02:
The board doesn't even really explain, other than this size issue with respect to phone, we don't have an explanation as to why this evidence.

[00:15:27] Speaker 05:
But the size issue is a problem, isn't it?

[00:15:29] Speaker 05:
because Raleigh is pretty complicated, and the idea of including that stuck in the phone could be difficult.

[00:15:39] Speaker 02:
Well, our evidence said otherwise.

[00:15:43] Speaker 05:
The evidence explains that... Where did your evidence address the size question?

[00:15:48] Speaker 02:
Well, at 474 through 476, in the reply, part of the discussion is why...

[00:15:57] Speaker 05:
Yes, sir.

[00:16:07] Speaker 02:
And then the Jensen declaration that corresponds to some of the citations I'm giving you, we've already summarized that in the blue brief at 62 to 63 and the gray brief at 30 through 31.

[00:16:18] Speaker 02:
If that's easier, I'm happy to take you there.

[00:16:22] Speaker 02:
So let me take you just for example.

[00:16:28] Speaker 02:
At appendix 475, portable mobile devices were not new and not so challenging to implement as to deter one skilled in the art from considering implementation of Raleigh's techniques in a handheld device as an obvious solution.

[00:16:42] Speaker 02:
And then the citation there is back to exhibit 1048, which is part of the Jensen's second declaration.

[00:16:52] Speaker 00:
That does not focus on reasonable expectation of success.

[00:16:57] Speaker 00:
That's a very high level statement about obviousness without breaking it down into, for our purposes, the two key pieces.

[00:17:07] Speaker 02:
I do think you have to go to what's being cited in the further explanation with the expert there to get the full import of the discussion.

[00:17:16] Speaker 02:
So I can take you, for example, to 2287 through 2297.

[00:17:37] Speaker 02:
One would have been prompted to modify Wally's remote unit.

[00:17:40] Speaker 02:
I'm sorry.

[00:17:41] Speaker 02:
Parabat 57 is where I started for the apparent benefits.

[00:17:46] Speaker 02:
So that's the motivation, right?

[00:17:48] Speaker 02:
Indeed, Wally's remote unit is exemplified as a vehicle unit, which is considered as a portable mobile device.

[00:17:54] Speaker 02:
So it starts by saying Wally already has a portable mobile device.

[00:18:00] Speaker 01:
Where is the reasonable expectation of success discussion?

[00:18:02] Speaker 01:
Because I do see you taking us to the motivation combined.

[00:18:05] Speaker 01:
But can you take us to the reasonable?

[00:18:07] Speaker 01:
Yes, yes, yes.

[00:18:11] Speaker 02:
And it is intertwined in the discussion.

[00:18:15] Speaker 02:
But if you start at appendix 473 through 476, and I'll highlight just a few of those for you because I know at this point I'm kind of reading to you.

[00:18:35] Speaker 01:
So still going back to your motivation to combine section, is that where you want us to go for this reasonable expectation of success portion?

[00:18:43] Speaker 02:
Yes.

[00:18:44] Speaker 02:
They are discussed together.

[00:18:45] Speaker 02:
And let me walk you there quickly, because I know I'm really burning my tongue at this point.

[00:18:50] Speaker 02:
If you look at, there is a discussion at the end of the reasonable expectation of success

[00:18:56] Speaker 02:
section.

[00:18:57] Speaker 02:
And it says, as explained above, referring back, it was referring back then to the entire discussion, radiation combined, reasonable expectation of success, and in the petition, one skilled in the art would have recognized and found it obvious to implement the teachings of Raleigh and Byrne in a handheld device or other wireless communication devices.

[00:19:17] Speaker 01:
Do you know that this is page 477, correct?

[00:19:19] Speaker 02:
Yes, ma'am.

[00:19:23] Speaker 02:
So if you look at the, it talks about, and you have to look at all of it together, I concede that, but they are referring back and says, as explained, a procedure would have recognized and found it obvious to implement the teachings of Raleigh and Byrne in a handheld device or other wireless communication device for numerous known benefits.

[00:19:44] Speaker 02:
So then you go back and it's referring

[00:19:47] Speaker 02:
This is under the reasonable expectation of success.

[00:19:50] Speaker 02:
And if you go back, it's referring to the analysis and the motivation to combine.

[00:19:55] Speaker 00:
Right.

[00:19:57] Speaker 00:
The citation that follows this is to Jensen's, let's call it his, Reply Declaration at page 2296, paragraph 71.

[00:20:13] Speaker 00:
that gets you there.

[00:20:16] Speaker 02:
Well, that's fair, because the reason why these are combined the way they are in the discussion and the reply is because they are responding to what that heading that's specific to reasonable expectation of success, I believe, is trying to respond specifically to the only argument patented or made.

[00:20:36] Speaker 02:
which was different than what the board found and what we're addressing here.

[00:20:40] Speaker 02:
So, but if you look at the, unfortunately, other than reading the whole thing to you, all I can say is it's in these two sections.

[00:20:48] Speaker 02:
And I'm clearly out of time.

[00:20:50] Speaker 05:
So is it particularly the paragraph on 477, beginning of patent number addresses, petitioner's reasonable expectation of success analysis by referring to technical challenges?

[00:21:01] Speaker 02:
Yes, sir.

[00:21:01] Speaker 02:
And it talks about Dr. Kuklev, which was a smart mobile expert, admitting that there would have been ways to do it.

[00:21:10] Speaker 02:
Abundant advantages and motivations existed, which Dr. Kuklev did in dispute for one skilled in the art to implement the Raleigh-Burn combination.

[00:21:21] Speaker 02:
In the time I have, I commend you to the briefing, which tries to summarize this evidence.

[00:21:26] Speaker 04:
I hope you actually don't have any time.

[00:21:29] Speaker 04:
But we'll give you two minutes for a bottle.

[00:21:30] Speaker 04:
Thank you, Your Honor.

[00:21:31] Speaker 04:
Mr. Gray.

[00:21:38] Speaker 03:
Thank you, and may it please the Court, Philip Grays for Smart Mobile Technologies.

[00:21:42] Speaker 03:
So I'd like to start with the Raleigh-Burn grounds, if the Court would find that acceptable.

[00:21:50] Speaker 03:
Judge Toronto, you.

[00:21:51] Speaker 03:
Repeatedly, I think the entire panel repeatedly asked my colleague for citations to evidence supporting the finding of a reasonable expectation of success.

[00:22:05] Speaker 03:
And what you received were citations to statements in their expert's declaration concerning motivation to combine.

[00:22:14] Speaker 05:
uh... and that's all we have here uh... what happens when you know it's not quite true because that paragraph was just looking at four seventy seven says patten owner addresses the petition as reasonable expectation of success analysis by referring to technical challenges and then suggest that those could be over cut i mean it does seem to be addressing reasonable expectation of success right?

[00:22:36] Speaker 03:
well with the the language that my colleague pointed you to actually addresses

[00:22:42] Speaker 03:
motivation to combine.

[00:22:43] Speaker 03:
Now it's important to understand that in the briefing below, and in particular in the reply brief, and the expert's second declaration, what you see is that the argument is clearly broken out into two sections.

[00:22:58] Speaker 03:
There is a section on motivation to combine, and there is a section on reasonable expectation of success.

[00:23:04] Speaker 03:
The same is true for their expert's declaration.

[00:23:07] Speaker 03:
And in the briefing, you know, they pointed the board

[00:23:11] Speaker 03:
to the paragraphs of the expert's declaration concerning motivation to combine.

[00:23:18] Speaker 03:
And for reasonable expectation of success, they didn't point to those paragraphs of the declaration.

[00:23:24] Speaker 03:
They pointed to the paragraphs of their expert's declaration concerning reasonable expectation of success.

[00:23:29] Speaker 03:
And those paragraphs are 68 through 71.

[00:23:36] Speaker 03:
So all of the citations in Apple's briefing

[00:23:38] Speaker 03:
to the statements in their expert's declaration at paragraphs 56, 57, 60.

[00:23:44] Speaker 03:
None of that was cited to the board for reasonable expectations.

[00:23:47] Speaker 05:
Is that the problem that it wasn't cited, or the problem is that it doesn't address reasonable expectations?

[00:23:53] Speaker 03:
It's twofold, Your Honor.

[00:23:55] Speaker 03:
It's both.

[00:23:56] Speaker 03:
Number one, it wasn't cited.

[00:23:57] Speaker 03:
And the board has regulations requiring parties to explain the significance of the evidence that they cite to the issues.

[00:24:07] Speaker 03:
In fact, there are two separate sections in the CFR concerning that, and there's a section in the rules of practice for the board.

[00:24:18] Speaker 03:
And these are not just empty formalities.

[00:24:20] Speaker 03:
The board is flooded with petitions, IPR petitions, and, you know,

[00:24:30] Speaker 03:
the board needs the parties to be clear in their arguments in order to perform its tasks efficiently, right?

[00:24:37] Speaker 03:
So here, Apple told the board where to look.

[00:24:39] Speaker 00:
Right.

[00:24:40] Speaker 00:
So I'm just a little bit confused about this.

[00:24:44] Speaker 00:
The section of the reply, of Apple's reply, so the lawyer's document, it cites to, and I'm looking here at 477 and 478.

[00:24:55] Speaker 00:
This is under the heading, reasonable expectation of success.

[00:24:59] Speaker 00:
So they're addressing that.

[00:25:00] Speaker 00:
And it cites to, at the end, this is right smack in the middle of,

[00:25:07] Speaker 00:
I guess 477, it cites to the paragraphs of the Jensen reply that themselves are under the heading reasonable expectation, 68 through 71.

[00:25:22] Speaker 00:
Right, 477, line 4, 68, 69, line 10, I'm making that up, paragraph 70, and then 478, line 1, paragraph 71.

[00:25:36] Speaker 00:
So it did cite to those paragraphs.

[00:25:39] Speaker 00:
One can argue about whether those paragraphs are sufficient to support reasonable expectation.

[00:25:47] Speaker 00:
But I guess I heard you saying that in the board,

[00:25:51] Speaker 00:
Apple didn't cite to the reasonable expectation of success paragraphs.

[00:25:57] Speaker 03:
No, that's not what I said.

[00:25:58] Speaker 03:
What I said was that the paragraph to which Apple is pointing now on appeal, paragraphs 56 through 67, right, that subset of the paragraphs to which Apple is pointing and which my colleagues repeatedly cited to you as support for reasonable expectation of success,

[00:26:21] Speaker 03:
Apple didn't cite to any of those paragraphs for reasonable expectation of success for the board.

[00:26:27] Speaker 03:
They cited to them for motivation to combine.

[00:26:29] Speaker 01:
Can you address, though, whether or not paragraph 68 through, I believe it was 70 that you were just discussing with Judge Toronto, whether or not they actually do go to reasonable expectation of success?

[00:26:41] Speaker 01:
Like, let's address that.

[00:26:43] Speaker 03:
So for the most part, they don't.

[00:26:46] Speaker 03:
Those paragraphs, well, first of all, 68 and 69,

[00:26:50] Speaker 03:
Are really attorney argument concerning where do we find these?

[00:26:56] Speaker 03:
so paragraphs 2295 Thank you, so paragraphs 68 and 69 of their expert second declaration constitute attorney argument concerning the import if any of the level of detail contained in the 943 specification now we address this in

[00:27:18] Speaker 03:
in the briefing.

[00:27:20] Speaker 03:
We've pointed out that the cases that they cite are not applicable here.

[00:27:26] Speaker 03:
You know, number one, simply because they're procedurally distinguishable from our situation here for a variety of reasons addressed in the briefing.

[00:27:38] Speaker 03:
And also, I think, more importantly, because here, factually, there's a significant difference

[00:27:45] Speaker 03:
from the cases that were cited in the briefing concerning the board trying to read in some sort of implied representation

[00:27:53] Speaker 03:
from the level of detail in the specification, which is that the claims here do not require the inclusion of Raleigh's, you know, very complex space-time coding system and algorithm into the claimed invention.

[00:28:12] Speaker 05:
Okay, but that's the problem that you pointed to a reasonable expectation of success or lack of reasonable expectation of success, but I'm just not

[00:28:23] Speaker 05:
quite understanding how it is that they fail to come to grips with the technical challenges, because they are referring to that both in the expert declaration and in the reply, that you argue technical challenges and you're mistaken.

[00:28:43] Speaker 05:
What's the matter with that?

[00:28:44] Speaker 03:
Well, because they don't grapple with it, right?

[00:28:47] Speaker 03:
They say in a conclusory fashion,

[00:28:50] Speaker 03:
that a posita would have been able to handle the technical, deal with the technical challenges, right?

[00:28:57] Speaker 03:
And they say that primarily in the section.

[00:28:59] Speaker 05:
But that's the problem of whether the substance of what they said is adequate, not a question of whether they adequately cite it to the thing.

[00:29:08] Speaker 05:
I just don't understand why it is that they didn't make, how you can say that they didn't make the argument.

[00:29:15] Speaker 05:
They may be, the argument may be unconvincing.

[00:29:18] Speaker 05:
But I think they made the argument that you argue there's no reasonable expectation of success because of technical difficulties, and that's not correct.

[00:29:26] Speaker 03:
Well, so I don't believe we say they didn't make the argument.

[00:29:29] Speaker 03:
What we say is that they failed to adequately support it.

[00:29:32] Speaker 03:
And that's what the board found as well, and that finding is reviewed for

[00:29:36] Speaker 03:
substantial evidence, and they're not actually making a substantial evidence attack on the board's conclusions here.

[00:29:43] Speaker 03:
But what we say is that if you look at the four paragraphs that they actually cited, the first two, 68 and 69, only proffer essentially attorney argument that is not applicable here, and the remaining two paragraphs

[00:30:00] Speaker 03:
look to and, you know, make the argument that, in effect, there's no motivation to combine because they point to, you know, the purported benefits of combining Rowling and Byrne.

[00:30:15] Speaker 03:
There's one sliver in those four paragraphs which is an attempt to address motivation to combine.

[00:30:22] Speaker 03:
And here they don't actually prop for evidence of, I'm sorry, an attempt to address reasonable expectation of success.

[00:30:29] Speaker 03:
they don't actually proffer evidence supporting a finding of reasonable expectation of success.

[00:30:34] Speaker 03:
All they do is they take a shot at Dr. Kuklev's, that's Smart Mobile's experts, one portion of his testimony as to why there was no reasonable expectation of success, and that is dealing with the number of processors that are required by the Raleigh reference.

[00:30:54] Speaker 03:
Dr. Kuklev submitted, you know, several paragraphs of testimony in his declaration as to why the challenges, the technical challenges of implementing the Raleigh-Burn combination would have been beyond the skill of a PASIDA as defined by the parties

[00:31:15] Speaker 03:
in this proceeding.

[00:31:17] Speaker 03:
In response, one of those pointed to all of the components that would have to be implemented from WALL-E in the telephone.

[00:31:27] Speaker 05:
And the one- The board is saying that the technical difficulties meant that there was no reasonable expectation of success.

[00:31:36] Speaker 03:
I read the board as saying that Apple failed to proffer sufficient evidence to make its case on reasonable expectation of success.

[00:31:46] Speaker 03:
That's what the board did.

[00:31:48] Speaker 03:
The board actually looked at the evidence that Apple proffered, including some of the evidence on motivation to combine.

[00:31:55] Speaker 03:
in Dr. Jensen's original declaration.

[00:31:59] Speaker 03:
The board looked at all of it and cited to all of it and arrived at the conclusion that Apple had failed to make its case.

[00:32:11] Speaker 03:
That's reviewed for substantial evidence.

[00:32:13] Speaker 03:
Apple isn't making a substantial evidence attack here.

[00:32:17] Speaker 03:
So that conclusion in the record stands.

[00:32:21] Speaker 03:
Apple's attack here is an APA attack.

[00:32:24] Speaker 03:
arguing that the board failed to adequately review its evidence.

[00:32:28] Speaker 03:
But the board clearly did.

[00:32:30] Speaker 03:
The board discussed all of this evidence in the FWD, and the board cited to all of it.

[00:32:38] Speaker 00:
Can we turn to the other combination?

[00:32:42] Speaker 03:
Certainly, Your Honor.

[00:32:49] Speaker 03:
Oh, I'm sorry.

[00:32:51] Speaker 03:
Just one more point on the Raleigh-Burn.

[00:32:55] Speaker 03:
So my colleagues referred to the purportedly intertwined nature of the motivation to combine and reasonable expectation of success issues here.

[00:33:05] Speaker 03:
They're not intertwined.

[00:33:06] Speaker 03:
They were addressed separately by both parties in separate sections of briefing and separate sections of the expert declaration.

[00:33:13] Speaker 03:
Their citation to the elected case, which was made in their reply brief here, and of course,

[00:33:18] Speaker 03:
to which we haven't had an opportunity to respond.

[00:33:21] Speaker 03:
So I just want to take a minute quickly to point out that the Electa case is procedurally completely inapposite from the situation we have here.

[00:33:28] Speaker 03:
In Electa, the board found in favor of the petitioner and found the claims, the challenge claims, to be unpatentable.

[00:33:40] Speaker 03:
And the board made a specific finding on Motivation to Combine, made no finding at all in the FWD

[00:33:48] Speaker 03:
unreasonable expectation of success.

[00:33:50] Speaker 03:
And on appeal, this court merely looked at that.

[00:33:53] Speaker 01:
So given the amount of time you have left, can you turn to the other combination?

[00:33:57] Speaker 03:
Certainly.

[00:33:59] Speaker 03:
So I think with respect to the issue on motivation to combine, Byrne with the 748 reference, Judge Toronto, you were asking, well, is there anything in the record

[00:34:17] Speaker 03:
supporting the conclusion there was motivation to, in effect, add a VPN to a combination that already included Bern's phone with encryption.

[00:34:29] Speaker 03:
And there were several citations that were provided.

[00:34:33] Speaker 03:
If the panel looks at those citations, what you will find is that there is absolutely no testimony and no evidence supporting the conclusion that there was a motivation to combine

[00:34:48] Speaker 03:
a VPN for the security benefits, reported security benefits, or for any other reason, with a combination that included Byrne's phone with its already existing encryption functionality.

[00:35:02] Speaker 03:
And there's an important facet of that here, which is that they specifically relied on Byrne's encryption functionality before the board.

[00:35:12] Speaker 03:
And the board actually, for the purpose of claim one, which the board found unpatentable,

[00:35:17] Speaker 03:
The board pointed to the encryption functionality that Apple had relied on as part of the support for its conclusion that claim one was unpatentable, right?

[00:35:27] Speaker 03:
So they specifically relied on Byrne's encryption.

[00:35:30] Speaker 03:
But then with respect to claim three, what they're saying is, well, let's just take Byrne completely out of the picture.

[00:35:35] Speaker 03:
And let's just look at the network switch box.

[00:35:38] Speaker 05:
I don't think they're saying that.

[00:35:39] Speaker 05:
I think they're saying that you could have both the burn encryption and the security provided by VPN and that the board under the Intel case was mistaken in not saying that it was a motivation to have both of those.

[00:35:58] Speaker 03:
But that would be legal error, because as this court has repeatedly instructed in evaluating obviousness, one must look to the claim as a whole.

[00:36:09] Speaker 03:
And here, the claim as a whole includes not just a network switch box, but also a wireless device that is in communication with the network switch box.

[00:36:20] Speaker 03:
So you can't just look at whether there are benefits for other unclaimed devices to add in.

[00:36:26] Speaker 05:
But the benefits are not duplicative.

[00:36:28] Speaker 05:
VPN and the burn encryption, right?

[00:36:31] Speaker 03:
I mean they're addressing somewhat different things I disagree your honor for the purpose of claim three it is duplicative It is absolutely to live duplicative because claim three again requires That the wireless device be in communication with right It's not just a system that has a device and and a network switch box communication with what?

[00:36:55] Speaker 03:
in communication with the network switch box.

[00:36:58] Speaker 00:
Okay, that's clear.

[00:36:59] Speaker 00:
Does it have to be in communication with the virtual network?

[00:37:04] Speaker 03:
As a practical matter, yes, because it has to be in communication with the network switch box, which is configured to join the VPN, right?

[00:37:13] Speaker 03:
So as a practical matter, the answer is yes.

[00:37:16] Speaker 03:
It does have to be in communication with the VPN.

[00:37:22] Speaker 03:
So it was incumbent upon Apple to proffer evidence of a benefit to a combination that included Burns Encryption, a device with Burns Encryption, as well as the network switch box, the remote units here of the 748 reference.

[00:37:42] Speaker 03:
And they failed to do so.

[00:37:43] Speaker 03:
There's nothing in the record supporting a motivation to combine, to in effect layer

[00:37:50] Speaker 03:
this additional security layer on top of a combination that already provides security.

[00:37:58] Speaker 05:
Did your expert address the question of whether the VPN and the burn encryption were duplicative?

[00:38:05] Speaker 03:
No.

[00:38:06] Speaker 03:
No, our expert did not specifically address that issue.

[00:38:10] Speaker 03:
But the board's conclusion to that effect is clearly supported by the record.

[00:38:22] Speaker 03:
So with respect to the PACT case, Your Honor, so the PACT case requires that in addition to being a known technique to address

[00:38:38] Speaker 03:
a problem, right, that there has to actually be a proven problem that is addressed by the known technique.

[00:38:46] Speaker 03:
And here, again, there's no evidence in the record, there's no testimony, that there was a known problem of security or privacy with respect to a combination that already includes an encryption functionality.

[00:39:03] Speaker 03:
such as the one of Burns Fung.

[00:39:05] Speaker 03:
So for that reason, the PACT case is simply not applicable here.

[00:39:12] Speaker 03:
And the board didn't run afoul of the PACT case when it found that Apple had failed to make a showing of motivation to combine because it had failed to address the issue of whether there was a motivation to

[00:39:28] Speaker 03:
layer another security functionality on top of Bern's already existing encryption.

[00:39:35] Speaker 05:
Okay, unless there are further questions, I think we're out of time.

[00:39:37] Speaker 05:
Thank you.

[00:39:38] Speaker 05:
Thank you, Your Honor.

[00:39:45] Speaker 05:
Mr. Thomas, you have two minutes.

[00:39:47] Speaker 02:
Just very briefly, rebuttal is certainly helpful for you to hone the record and make sure you're citing the court to the right provisions.

[00:39:54] Speaker 02:
With respect to the Raleigh Burn and the reasonable expectation of success, I would

[00:40:02] Speaker 02:
submit to the court Appendix 2296.

[00:40:05] Speaker 02:
And at this point, I'm focused in on Paragraph 70.

[00:40:09] Speaker 02:
And Paragraph 70 says, in the patent owner response, patent owner further attacks the petition's reasonable expectation of success analysis by once again referring to alleged technical challenges in the Raleigh-Burn combination.

[00:40:23] Speaker 02:
and then it cites the portions that are discussing about the size.

[00:40:27] Speaker 02:
And it goes on to say, as noted in the petition in my original declaration, however, there were abundant advantages, motivations for one skilled in the art to combine the teachings of Raleigh and Byrne.

[00:40:38] Speaker 02:
Dr. Kucliffe didn't dispute this.

[00:40:41] Speaker 02:
So then that cites, this is in the section on reasonable expectation of success, and it refers back to the broader discussion of combination of Raleigh and Byrne at appendix 1170 to 1171.

[00:40:58] Speaker 02:
And I would also point the court to the next paragraph, paragraph 71, which is an express attack on Smart Mobile's arguments regarding the processors in Raleigh and whether or not that would work.

[00:41:11] Speaker 02:
The board did not address those questions.

[00:41:13] Speaker 02:
Instead, it found there was zero evidence challenging reasonable expectation of success.

[00:41:19] Speaker 02:
That was error.

[00:41:20] Speaker 02:
That requires vacatur and remand with respect to the Raleigh-Burn combination.

[00:41:25] Speaker 02:
I just want to make one quick comment with respect to the W0748 and with respect to the question of whether or not there was a teaching of security.

[00:41:36] Speaker 02:
Why the combination that includes burn would still need security?

[00:41:40] Speaker 02:
I would send the court back to Appendix 2268 at paragraph 28, which says that a VPN builds a secure tunnel to connect multiple devices as nodes over the public network, like the internet.

[00:41:54] Speaker 02:
That's the overarching network-wide security benefit.

[00:41:58] Speaker 02:
What was the citation?

[00:41:59] Speaker 02:
Yes, sir.

[00:42:00] Speaker 02:
It was at 2268 paragraph 28.

[00:42:06] Speaker 02:
And to be clear, with respect to the W0748 and the first round in our appeal brief, we're only seeking vacatur and remand, of course, with respect to claims three and four.

[00:42:17] Speaker 02:
OK.

[00:42:18] Speaker 05:
Thank you.

[00:42:18] Speaker 05:
Thank both counsels.

[00:42:19] Speaker 05:
The case is submitted.