[00:00:09] Speaker 01:
Good morning. May it please the Court. Laura Vu on behalf of Equal View.

[00:00:13] Speaker 01:
This appeal relates to errors in the Board's secondary considerations analysis regarding the presumption of nexus and nexus in fact. For both, the board failed to consider the claimed invention as a whole and erroneously focused on only the printed matter limitation.

[00:00:33] Speaker 04:
Well, you may say that, but when you say the board failed to consider as a whole, where does printed matter fit into that consideration as a whole?

[00:00:42] Speaker 01:
So under Praxair, printed matter doesn't have weight in the – obviousness considerations and should be excluded from the obviousness analysis. And so when secondary considerations, evidence related to printed matter is excluded, that should mean excluding printed matter for all aspects of secondary considerations, right? So that means presumption of nexus is and co-extensiveness.

[00:01:13] Speaker 04:
Okay, so there's no dispute about that. I mean, I think that your friend would agree with you on the other side, that printed matter cannot be considered for any of the analysis here.

[00:01:23] Speaker 01:
I don't think that's quite right, because they're saying... I thought that's what you were saying, so please... Let me see if I understand the distinction here.

[00:01:31] Speaker 05:
You're saying... Once it's printed matter, it goes poof, it goes away. You pretend that the patent doesn't even have a printed matter limitation in it. You don't look at the presumption or nexus in fact with respect to having anything to do with printed matter. But it seems to me that the problem with that is that whether you call it the printed matter or just taking the patent as a whole, the success...

[00:01:56] Speaker 05:
of the invention and the praise of the invention may all be directed to the printed matter, in which case you get no presumption and you get no nexus. That seems to me the flaw in the way you're characterizing the role that printed matter ought to play.

[00:02:14] Speaker 01:
So the difference between the scenario that you're presenting and this case here is that the secondary considerations evidence, the commercial success, and the praise is not just directed to the printed matter.

[00:02:25] Speaker 05:
That may well be true, but what I'm...

[00:02:28] Speaker 05:
trying to get at, is there's this nice characterization that you start off the brief with, and you repeat it a couple of times, that once you've taken printed matter out of the picture, you can't look at it with respect to the question of nexus. And it seems to me that's demonstrably wrong. If, in fact, the nexus depends on the question of whether the printed matter or any other feature is really the source of the success and other secondary consideration benefits.

[00:03:06] Speaker 01:
So if the secondary... You understand the problem I have with your presentation. Yes, and I agree that if the praise and the commercial success was exclusively tied to the printed matter, then under Praxair, that evidence should not be considered.

[00:03:25] Speaker 04:
Where do you get exclusively? I mean, if it counts for half of the commercial success or for three-quarters, if it's not, or 99%? What does it specifically mean?

[00:03:36] Speaker 01:
Sure. So I think looking at the evidence would be really helpful here. So if we turn to Appendix 1564.

[00:03:44] Speaker 01:
That is one of the exhibits of commercial success. And this exhibit attributes the commercial success to Eagle View's software.

[00:03:56] Speaker 01:
So the software is the product that implements the entire claimed invention, all the steps of the claimed invention.

[00:04:03] Speaker 04:
Is software claimed?

[00:04:05] Speaker 01:
So the claims are directed to a method and, like, non-transmitter.

[00:04:10] Speaker 04:
But if the software is what accounted for the commercial success, doesn't it have to be part of the claim?

[00:04:17] Speaker 01:
Well, it is because the claim – is directed to, like, non-transitory medium that implements this process, and so that would encompass the software. And the claims also are directed to the methods, and so the software performs the method, which is why it also – I don't read the claims as a claim over the software.

[00:04:42] Speaker 01:
So – Claim one says a computer-implemented method of a roof estimate report.

[00:04:49] Speaker 02:
Yeah, I don't dispute that software is used or involved, but I don't know that any particular software is claimed.

[00:04:58] Speaker 01:
Well, I mean, that software is typically claimed through the steps that the software performs. And so in this case, the steps of the method and the non-transitory computer-readable medium is directed to – performing the steps of displaying aerial images of a roof and displaying and manipulating line drawings and generating a roof report.

[00:05:22] Speaker 02:
Let's go back to the question that we were dealing with.

[00:05:27] Speaker 02:
If the printed matter goes poof and it's gone, and the inventiveness and the innovation...

[00:05:35] Speaker 02:
that drove commercial success was based on that printed matter, you no longer have an argument that the claims are co-extensive here, do you?

[00:05:47] Speaker 01:
Yes, that's right.

[00:05:49] Speaker 02:
That's right, you don't have an argument? Are you just saying that they're just not co-extensive?

[00:05:57] Speaker 01:
I'm saying that legally, if the...

[00:06:03] Speaker 01:
evidence was exclusively directed to printed matter and you don't consider the printed matter, then there would not be co-extensiveness legally. But in this case, one, that is not the case because the secondary considerations evidence is not exclusively related to the printed matter. It's related to the software that implements all the claimed steps.

[00:06:31] Speaker 05:
But you raised the term exclusively again. And it seems to me that the law, as I read it, is sort of the flip side of that. It says that in order to be entitled to the presumption, at least speaking only to the presumption, the value of the patent vis-a-vis the success and praise has to be virtually exclusively from the subject matter that's in dispute, as opposed to the opposite.

[00:07:08] Speaker 05:
Did you follow? That was a rather poorly put question.

[00:07:12] Speaker 01:
I think I follow, but our point is that the claim includes all the steps of display.

[00:07:21] Speaker 01:
The printed matter is a small portion of the claim, and so when the claim is directed to this entire multi-step process involved in generating the reports and the the secondary considerations evidence is related to the software product that implements all those steps, it would be error to reduce the presumption of nexus inquiry to only the printed matter limitation. That's not the evidence that we relied on.

[00:07:51] Speaker 05:
But didn't the board say pretty much the opposite with respect to the importance of the printed matter? I mean, they say...

[00:08:00] Speaker 05:
The evidence indicates that the report's content is important to the success of the products at issue and that patent owner base as much of its asserted commercial success and industry praise on it.

[00:08:15] Speaker 01:
So that is what the board said.

[00:08:16] Speaker 05:
That seems to be a problem for you unless you challenge that finding squarely.

[00:08:23] Speaker 01:
We did challenge that finding. We argued that...

[00:08:26] Speaker 01:
Substantial evidence doesn't support that finding.

[00:08:29] Speaker 05:
And so your case comes down to a substantial evidence case with respect to that finding?

[00:08:36] Speaker 01:
If you disagree legally and believe that Fox Factory applies and that you shouldn't consider printed matter, then yes, the presumption of nexus argument would come down to a substantial evidence argument. But in this case, the Board's findings are unsupported by substantial evidence because the Board found that the patented invention would only be a component without the printed matter. And again, the patented invention is this multi-step process of displaying aerial images and drawing... Did the printed matter exist in the prior art?

[00:09:16] Speaker 01:
The printed matter, I think the board found...

[00:09:22] Speaker 01:
NIRMAP did show prior art that addresses the printed matter limitation, and we did not dispute that on appeal.

[00:09:31] Speaker 04:
And, I mean, the board relied on two things, improved accuracy and saving time and money and reducing inventory risk.

[00:09:42] Speaker 01:
So that relates to the nexus inquiry, which is a separate issue. So...

[00:09:49] Speaker 01:
for consideration of the secondary considerations evidence under Fox Factory, you can either have a presumption of nexus or you can establish nexus in fact, which is a different inquiry that involves determining whether the secondary considerations evidence, the commercial success, the praise, is a direct result of the unique characteristics of the claimed invention.

[00:10:11] Speaker 04:
And that can't include printed matter?

[00:10:14] Speaker 01:
It cannot include printed matter, but...

[00:10:18] Speaker 01:
The accuracy here is a result of the claimed process of displaying aerial images and displaying and manipulating the line drawings and generating the roof estimate report.

[00:10:31] Speaker 04:
But you agree with Judge Bryson that that's substantial evidence?

[00:10:35] Speaker 01:
No, no. For the nexus argument, there are separate legal errors in the nexus argument.

[00:10:43] Speaker 01:
That does not come down to substantial evidence.

[00:10:46] Speaker 05:
Well, on the nexus argument, though, the board found that the patent owner's asserted advantages are tied to surveying a roof using photographs instead of manual measuring on site. That feature was clearly disclosed in the prior art. So that seems to me to be a problem for your nexus argument.

[00:11:07] Speaker 01:
So that's another legal error.

[00:11:10] Speaker 05:
But that's a finding.

[00:11:11] Speaker 01:
It is a finding.

[00:11:12] Speaker 05:
And so that's a legal error.

[00:11:16] Speaker 05:
with respect to that finding only if there's no substantial evidence supporting it, right?

[00:11:20] Speaker 01:
No, no, no. That's not the case. Under the court's case law, even when there are prior art limitations in isolation, you can still consider nexus as it relates to the claimed invention as a whole. And so if the commercial success or the praise is directed to performing all the steps that are in the claims, you can still consider that benefit, that praise.

[00:11:48] Speaker 01:
Here it would be the praise related to reduced time and cost that is related to the claimed invention.

[00:11:59] Speaker 01:
Again, I think it would be helpful to look at the evidence to have a concrete example. At Appendix 1594...

[00:12:22] Speaker 01:
So at Appendix 1594, this is praise regarding Eagle View's software program. If we start at 1594, there's the third paragraph that says, starting with Carlson's brother-in-law. And it continues on to say that Pershing set out to build a software program.

[00:12:44] Speaker 04:
Which paragraph?

[00:12:45] Speaker 01:
It's the third paragraph.

[00:12:48] Speaker 01:
Towards the end of the first sentence, it says Pershing set out to build a software program that would change the roofing industry. In the next sentence, it says that that company uses aerial photography and 3D modeling to produce on-demand reports for accurate measurements. And so this praise of accurate measurements, and then it continues on to say that it improves on, you know, there's no perilous time-consuming estimates.

[00:13:18] Speaker 01:
That's a separate benefit of reduced cost and injury risk. Those benefits flow from the software performing the aerial photography and 3-D modeling and generating the reports.

[00:13:29] Speaker 05:
But how do you think that this – I don't know how to characterize it. It's a three-page, looks like an industry publication of some sort. How does that overcome the board's finding that the prior art references, which were, I don't remember the names, the three prior art references ending with Heaton, show the exact same thing?

[00:14:04] Speaker 01:
So here I'm looking at Appendix 33, the last paragraph, in the board's analysis where they are addressing the benefits of the reduced time and cost and saying that those advantages are already in the prior art. The board is exclusively talking about surveying a roof using photographs. So that's only one aspect of the claimed invention.

[00:14:27] Speaker 05:
Right, but that's one of the aspects that this little – Festschrift, really, says it was brand new.

[00:14:37] Speaker 05:
I would think that we would take the board's word for it ahead of this piece of evidence.

[00:14:44] Speaker 01:
Here the board was improperly looking at a prior art feature being disclosed in a reference in isolation. For Nexus, the board still needed to consider the claimed invention as a whole and look at how the commercial success and praise is directed to all the claimed steps.

[00:15:07] Speaker 01:
The court's WVIP case squarely addresses that issue. It says that even when you have an isolated feature that's present in the prior art, that doesn't make the secondary considerations evidence related to that feature irrelevant when you're looking at the claimed combination.

[00:15:43] Speaker 00:
Good morning, Your Honors, and may it please the Court, Jennifer Wu for NIRMAP. Your Honors correctly pointed out that one of the issues in this case is whether The Board's decision was supported by substantial evidence. And the only challenge here is on the nexus finding. The Board correctly found that all of the elements in the claim were in the prior art. Your Honor mentioned it would be Heller, Quam, and Deaton.

[00:16:08] Speaker 05:
Those are the two that I could not remember.

[00:16:10] Speaker 00:
And that is not being challenged here. The question presented by our friends on the other side is whether secondary considerations and specifically the presumption that can save this claim from obviousness, even though the only evidence submitted by appellants relates to the report's contents, the measurements.

[00:16:31] Speaker 04:
Even in the evidence... Did you understand that the other side had agreed that printed matter could not be considered?

[00:16:39] Speaker 00:
It's my understanding. What I just heard right now is that printed matter cannot be considered in the discussion of presumption of nexus, as well as nexus in fact.

[00:16:48] Speaker 04:
But it's not a caveat. But your friend also used the word exclusively at least three times.

[00:16:55] Speaker 00:
Which is a new argument that I think I didn't appreciate until I was sitting here. But I think what our friends are trying to say is that the evidence could be reweighed to be directed to other elements of the claim beyond the printed matter. But what the board found was that the evidence of secondary considerations all related to the roof report content, that is the measurements.

[00:17:20] Speaker 04:
But is exclusively the correct test?

[00:17:25] Speaker 04:
No. I mean, printed matter can't be used.

[00:17:29] Speaker 00:
It goes poof. Right, it doesn't come back in some sort of... Right, and I think one of the things that is the problem with their argument is that I think appellants don't you know, don't acknowledge that it's their burden to prove nexus. And so they need to come forth with evidence that shows the presumption of nexus. When the printed matter goes poof, it can't come back and then prove the existence of nexus.

[00:17:58] Speaker 05:
When you say it goes poof, it doesn't go poof for purposes of deciding whether the invention is really entitled, whether it's coterminous in effect with the product in question, right? Because it may be that the attractiveness, the success, the praise, is all attributed to the prayer matter. And if that's true, there's no poof. It's there for purposes of deciding whether there's a... a presumption or even factual nexus, right?

[00:18:30] Speaker 00:
Right. And when we say proof, I mean it's not patent-eligible subject matter.

[00:18:33] Speaker 05:
But the argument that your friend was making is that it goes proof for both purposes. Therefore, if you can't consider it for patentability, you also can't consider it for nexus. And that seemed to me to be wrong.

[00:18:45] Speaker 00:
I think that's wrong. And if you look at Praxair, I think what the court said there was that what goes proof is it has no patentable weight. I think the sentence is no patentable weight means no patentable weight.

[00:18:56] Speaker 02:
If there's no patentable weight, then you can't show coextensiveness, right?

[00:19:01] Speaker 00:
Correct. And I think there's a distinction between it's erased entirely from the analysis and that it's not given patentable weight. I think no patentable weight means that the printed matter can't provide the hook to rescue the claim from obviousness if the evidence of secondary considerations is all tied together. that printed matter. And just to understand how we kind of got to this convoluted spot of why are we arguing about the scope of the printed matter and whether the evidence is tied there, is before the board, NIRMAP actually argued that the accuracy and quality were unclaimed and not part of printed matter.

[00:19:36] Speaker 00:
It was actually Eagle View on the other side who argued that accuracy and quality are part of the printed matter limitation and because they wanted, I think they saw some benefit in that from the obviousness analysis. Having made that argument that the printed matter limitation encompasses accuracy and quality, and having only submitted evidence relating really to accuracy and quality, I don't think they can kind of back out of that position. That's how we ended up here.

[00:20:04] Speaker 04:
It's all about software, right?

[00:20:06] Speaker 00:
I think we disagree that the claim is all about software. If you look at... Or the praise is... The praise is very clear. It's very... If you look at, for example, APPX 1561, which is Eagleview's own case study. This is Exhibit 1020 before the board, but 1561 is the appendix number here. There's a discussion here that the product that Eagleview is selling has cost efficiency. And the Eagle View cites to this repeatedly.

[00:20:37] Speaker 00:
But if you look on page 1561 in the third paragraph on the left side, there's a sentence that says, accuracy is a critical factor in the cost equation. So the benefits that they're citing that they say are not accuracy and quality, if you read the actual evidence, the board correctly and properly weighed this evidence and determined that the evidence all relates to accuracy and quality.

[00:21:01] Speaker 05:
Go ahead about 1561.

[00:21:04] Speaker 00:
Yeah. So 1564, the bit that I think that was cited in their brief is the fact that Eagle Views, you know, had revenue growth, had commercial success.

[00:21:15] Speaker 00:
And if you look at on the right side of the page 1565, there's a discussion of, well, you know, kind of on the 1564, it's a discussion that they made a lot of money. But it doesn't tie it to a specific product per se. Okay. And on the right side, what it says is that Eagle View's patented technology and methods provide detailed, accurate measurements. Detailed, accurate measurements, that's the roof report content. That's the printed matter.

[00:21:42] Speaker 05:
This is the material from their blog?

[00:21:44] Speaker 00:
This is from their blog, and importantly, it's from 2012. It's actually before this patent ever issued.

[00:21:52] Speaker 00:
If you look at their other evidence, for example, I think the one – there's a couple more of them where they mention patents, even from their own blogs. But they have relied on the same secondary considerations for all of their patents, the first one issued in 2011 onward. And that gets at the Fox factory point that this court made, is you can't have a generalized comparison of the product and the patent to create co-expensiveness. What – what –

[00:22:21] Speaker 05:
If we were to conclude that the report either was not printed matter or was functionally related to the rest of the patent and therefore didn't get disqualified because of the printed matter annotation, what would your view of this case be with respect to what's left of what the board's analysis was?

[00:22:49] Speaker 00:
Correct. So if the printed matter were not printed matter and we were to consider it, I think what we would look at then is whether or not there's actually a connection between that printed matter and the evidence and whether or not it's in the prior art. I think the rebuttable presumption might apply, and then you look at the evidence as to whether or not what's driving the success is actually what was not known in the prior art. In order to prove a nexus, you can't rely on something that was known, it has to be novel and claimed.

[00:23:19] Speaker 05:
So if the three prior references that are relied on by the board were sufficient to undermine the argument that success and praise were directed to whatever is novel, let's say the report, then there would be no presumption, or at least there would be no finding of nexus.

[00:23:39] Speaker 00:
There would be no finding of nexus, but I think it's important that when, so in this case there was a director review One of the questions that the director asked was to address whether this limitation was printed matter. And Eagle View conceded that point by not arguing that it wasn't. So I appreciate the hypothetical here. I think there's no dispute that that limitation is printed matter. I think that because of that, but even if it were not printed matter, there would be no nexus because that element is known in the prior art.

[00:24:14] Speaker 00:
Unless Your Honor has further questions, we respectfully request that the Court affirm the Board's decision. Thank you.

[00:24:32] Speaker 01:
Judge Bryson, I just wanted to clarify something about Appendix 1564.

[00:24:38] Speaker 01:
I know it's a posting on Eagle View's blog, but it's actually Inc. Magazine ranked Eagle View as number 13 in the software category. And so this blog is just... Could you speak up just a little bit? Yeah, sorry, Judge Rena. It's Inc. Magazine that ranked Eagle View software as number 13 in the software category. So it was external praise. It wasn't just... Eagleview self-touting its software.

[00:25:08] Speaker 01:
I see.

[00:25:13] Speaker 01:
So the court's case law does permit consideration of benefits that flow from the remaining elements of the claimed invention. Rambis is directly on point to this case. In Rambis, the board had found that there was no nexus because the praise was related to high-speed data transfer, which was not recited in the claims. And the court said... that the board's nexus analysis was wrong because even though the high-speed data transfer wasn't explicitly claimed, it flowed from a claimed feature.

[00:25:53] Speaker 01:
And so there was a nexus. And so as it applies to this case, the benefits of accuracy and reduced time and cost, the evidence shows that it flowed from the claimed steps of, displaying aerial images and displaying and manipulating line drawings and generating a roof estimate report, and the board did not consider how the claimed combination enables the benefits in considering nexus.

[00:26:28] Speaker 05:
What is your answer to the argument or the point made by the board that the three prior references in dispute really do encompass all of those features.

[00:26:43] Speaker 01:
So the response is WBIP and Chemours, which says that even though prior art elements may be found in isolation in the prior art, if the inventive combination is what is novel... and there is praise and commercial success related to the inventive combination, you can still consider that as part of the nexus inquiry.

[00:27:05] Speaker 05:
Well, that might be so in general, but here the board specifically found, as I read it at Appendix 29, that the combination of those prior art references would have been obvious.

[00:27:18] Speaker 01:
Sorry, Appendix 29?

[00:27:19] UNKNOWN:
29.

[00:27:19] Speaker 01:
At the end of the first full paragraph.

[00:27:21] Speaker 05:
Um...

[00:27:27] Speaker 05:
At least, that seems to be what they're saying.

[00:27:34] Speaker 01:
The end of the first full paragraph?

[00:27:36] Speaker 05:
Appendix 29.

[00:27:37] Speaker 01:
Does that say, in light of the petitioner's increased utility rationale? Right. So, do you need that to be part of the board's analysis of the prior art?

[00:27:53] Speaker 05:
Right, but it's pretty important, is it not, that after analyzing the prior art, they came to the conclusion that the combination would have rendered the invention obvious.

[00:28:07] Speaker 05:
And that there would have been a motivation to combine.

[00:28:12] Speaker 01:
So when considering obviousness, you weigh the evidence of obviousness against the evidence of non-obviousness. And so this analysis relates to the evidence of non-obviousness And it does not address the errors in the board's obvious, sorry, this relates to the board's obviousness determination, but does not address the errors in the board's non-obviousness analysis related to this combination of features, which appears at Appendix 33.

[00:28:43] Speaker 01:
Okay.

[00:28:43] Speaker 05:
Thank you.

[00:28:47] Speaker 01:
No, we respectfully ask the court to vacate and remanifort. Thank you.