[00:00:00] Speaker 04:
We have four cases for argument today.

[00:00:02] Speaker 04:
The first one is Go 1 versus Open Sesame, 24-1762.

[00:00:07] Speaker 04:
Mr. Mayor, I'll assume you're ready.

[00:00:12] Speaker 03:
May it please the court.

[00:00:13] Speaker 03:
Good morning.

[00:00:14] Speaker 03:
What the board did in this case was elevate a trivial sequencing detail into the linchpin of patentability.

[00:00:22] Speaker 03:
and only because the prior art did not spell it out explicitly.

[00:00:26] Speaker 03:
That's precisely the rigidity that KSR prohibits.

[00:00:30] Speaker 03:
The board assumed that everything was taught except providing the URL to the proxy before rather than after license verification.

[00:00:41] Speaker 01:
Why do you say assumed?

[00:00:44] Speaker 03:
Because the board made no findings on any other limitation but this one.

[00:00:48] Speaker 03:
And so that's the only limitation before this court.

[00:00:51] Speaker 03:
The only question is whether the only finding the board made is that it wouldn't have been obvious in combining Spurl and Madison to flip the order of when the redirector file or a proxy in that combination would have received a URL.

[00:01:08] Speaker 03:
Would it have gotten it before rather than after license verification?

[00:01:11] Speaker 01:
Wasn't it that the board felt that it had been proven that it would have closed in particular because of conclusory expert testimony?

[00:01:21] Speaker 01:
And I think if I remember correctly, the original petition doesn't even address this particular order issue.

[00:01:29] Speaker 03:
So the board did make an affirmative finding on the merits, you're correct, and did not find forfeiture, as you're mentioning the petition.

[00:01:38] Speaker 01:
I'm not suggesting forfeiture.

[00:01:39] Speaker 01:
I'm suggesting lack of evidence, lack of an explanation or lack of evidence.

[00:01:44] Speaker 03:
Sure.

[00:01:45] Speaker 03:
So the evidence came in at reply is all I meant to clarify, which is that our reply

[00:01:50] Speaker 03:
431 to 432, and our expert's testimony of 1492 paragraph 91.

[00:01:58] Speaker 03:
And he explained that it would have been inconsequential.

[00:02:02] Speaker 03:
There would have been no material difference.

[00:02:05] Speaker 03:
That isn't- What did he cite for the idea that there would be no material difference?

[00:02:10] Speaker 03:
He said that a skilled artisan would not have found it different, essentially saying that it's functionally the same.

[00:02:17] Speaker 03:
So he's giving his knowledge.

[00:02:20] Speaker 02:
That's just a conclusion.

[00:02:22] Speaker 02:
What technical explanation did he provide to support that conclusion?

[00:02:30] Speaker 03:
So I think there's two important points here.

[00:02:32] Speaker 03:
First of all, what he said was informed by the context of the rest of his testimony and all the limitations that the board did not address.

[00:02:39] Speaker 03:
And so I would point this court to

[00:02:42] Speaker 03:
our reply before the board at Appendix 424, where we cited his declaration.

[00:02:50] Speaker 03:
We cited Spurl.

[00:02:52] Speaker 03:
We cited Madison.

[00:02:53] Speaker 03:
And we cited other sources of evidence.

[00:02:55] Speaker 03:
And we said, license checks were commonly known in the art.

[00:02:59] Speaker 03:
And a posita would have known how to implement them without the need for extensive details or an identical disclosure.

[00:03:06] Speaker 03:
That is undisputed in this case.

[00:03:07] Speaker 03:
And in fact, the patent itself reflects that.

[00:03:10] Speaker 02:
But again, I don't need to interrupt you.

[00:03:13] Speaker 02:
That just sounds like a conclusion.

[00:03:16] Speaker 03:
So it is not a conclusion.

[00:03:18] Speaker 03:
He is affirmatively stating that it is inconsequential, and it is undisputed, and the patent reflects that license verification is known.

[00:03:28] Speaker 03:
That is more than a conclusion.

[00:03:29] Speaker 03:
That is stating that there is no functional difference.

[00:03:33] Speaker 02:
Certainly, everybody knows that getting verification before getting content

[00:03:43] Speaker 02:
different from getting verification after content.

[00:03:46] Speaker 02:
And there are lots of contexts in which that's important.

[00:03:49] Speaker 02:
But again, applying it to the facts of this case to find some motivation to alter some of the teachings of the reference to make this work in this combination requires a bit of explanation that I find missing and the board found missing.

[00:04:10] Speaker 03:
So I disagree, Your Honor.

[00:04:12] Speaker 03:
I think this is a question of the legal standard applied.

[00:04:17] Speaker 03:
And what I hear from Your Honor and what I heard in the board's decision was, yes, a demand for technical explanation.

[00:04:23] Speaker 03:
And this court's cases are clear.

[00:04:27] Speaker 03:
Intel VPAC says that modification just needs to be suitable.

[00:04:33] Speaker 03:
There doesn't need to be a categorical improvement over the prior art.

[00:04:37] Speaker 03:
I agree with you.

[00:04:38] Speaker 01:
What about the question of whether

[00:04:40] Speaker 01:
It's even an obvious design choice.

[00:04:44] Speaker 01:
I mean, that it is a design choice, or that there was no explanation or even support for why it was known to switch the order, why both orders would be possibilities.

[00:04:59] Speaker 01:
I mean, I realize it is rather simple technology, right?

[00:05:05] Speaker 01:
I mean, what we're talking about.

[00:05:06] Speaker 01:
But it's a lack of explanation that's the problem in finding

[00:05:10] Speaker 01:
an error by the board below when the limitation wasn't addressed is difficult.

[00:05:17] Speaker 01:
I mean, for example, in the blue brief at page 37, there are some excellent citations to things in the patent suit or in the record that would support the existence of this as a possibility, right?

[00:05:34] Speaker 01:
But this was not something that was provided to the board, or was it provided to the board, at the bottom of page 37 in your blue board.

[00:05:41] Speaker 03:
So what was provided to the board were the sorts of things I was referring to at appendix 424, which license verification is undisputedly well known.

[00:05:52] Speaker 03:
And so I think everyone was taken aback that the board decided on this ground.

[00:05:57] Speaker 03:
It assumed that the proxy was taught.

[00:05:59] Speaker 03:
It assumed that.

[00:06:00] Speaker 03:
providing a URL as taught.

[00:06:02] Speaker 03:
It assumed all these things and it only made its decision based on this sequencing detail, which is a trivial aspect of the claims.

[00:06:10] Speaker 03:
We know that because not only did our evidence... What about the answer to my question?

[00:06:15] Speaker 01:
Just to make sure I understand, what is the material at the bottom of page 37 in the blue brief cited to the board in the expert opinion or in your brief on this particular claim element?

[00:06:30] Speaker 03:
You're talking about the intrinsic evidence from the patent itself.

[00:06:33] Speaker 01:
Yeah.

[00:06:34] Speaker 01:
It says the board was, it says there's evidence showing that verifying first would have been an obvious design choice.

[00:06:41] Speaker 01:
It says C appendix 48, 123 to 27, C appendix 49, 3, 19, 21.

[00:06:46] Speaker 01:
It goes on and on.

[00:06:49] Speaker 01:
And I'm asking whether this material was provided to the board in this format

[00:06:55] Speaker 01:
at the time in your reply brief or in the expert's declaration?

[00:06:59] Speaker 01:
I think it's a yes or no question.

[00:07:00] Speaker 03:
Yeah, so the answer is no, not everything was provided.

[00:07:04] Speaker 03:
But there was certainly a lot provided.

[00:07:05] Speaker 03:
So again, I would urge this court to look at appendix 424 of our reply, where we explained and we cited our expert's reply declaration that license verification was well known.

[00:07:16] Speaker 03:
And we cited Spurl.

[00:07:18] Speaker 03:
We cited Madison.

[00:07:19] Speaker 03:
We cited portions of his expert report.

[00:07:21] Speaker 04:
I mean, I think your problem isn't that license verification is not well known.

[00:07:25] Speaker 04:
And not even that it wouldn't have been obvious to do these in either order.

[00:07:30] Speaker 04:
It's just a failure of proof that the board found.

[00:07:34] Speaker 04:
And you're here on a substantial evidence review.

[00:07:35] Speaker 04:
I know you want to make this a legal error.

[00:07:37] Speaker 04:
I don't see any legal error here.

[00:07:39] Speaker 04:
And I, as a fact finder, probably would agree with you.

[00:07:43] Speaker 04:
But the board didn't.

[00:07:45] Speaker 04:
And isn't there enough in the record to support the notion that there's

[00:07:49] Speaker 04:
that a skilled artisan wouldn't have had a motivation to combine these two, because you didn't explain more than just saying, having your expert, who is a skilled artisan, but gave the very conclusory testimony that basically, this is just a design choice.

[00:08:04] Speaker 04:
Anybody would understand it goes both ways.

[00:08:07] Speaker 04:
That could have been enough, maybe, because he is a skilled artisan, but the board found it insufficient.

[00:08:12] Speaker 03:
So I hear you, Your Honor.

[00:08:13] Speaker 03:
I understand the concerns.

[00:08:15] Speaker 03:
But we know from Intel v. Qualcomm and other cases from this court that the level of explanation that's required depends on the context.

[00:08:22] Speaker 03:
How simple and straightforward is this?

[00:08:24] Speaker 03:
We are talking about the sequencing of two steps.

[00:08:26] Speaker 03:
It is inherent in life determination.

[00:08:28] Speaker 04:
Yes, I understand.

[00:08:29] Speaker 04:
If it had gone the other way, and that's the evidence you had as substantial evidence, then I think you would win.

[00:08:35] Speaker 04:
But I think the problem is there's not such a lack of substantial evidence in your favor to find that no reasonable fact finder could agree with the board.

[00:08:45] Speaker 03:
I disagree, Your Honor.

[00:08:46] Speaker 03:
The other side has not disputed that it would be suitable and it would work.

[00:08:52] Speaker 03:
And that is the standard under the known technique rationale.

[00:08:57] Speaker 04:
Again, I understand.

[00:08:59] Speaker 04:
I am very sympathetic to your view of this case.

[00:09:02] Speaker 04:
What you're trying to do is abstract this choice outside of the specific prior art references here that you asked the board to combine and have specific evidence for why those references would do it this way, rather than just this general notion, it doesn't make any difference whether you do verification first or second.

[00:09:24] Speaker 04:
You're absolutely right.

[00:09:25] Speaker 04:
I think it makes very little difference.

[00:09:28] Speaker 04:
And I don't see any argument from them that it makes any difference.

[00:09:31] Speaker 04:
that in the abstract.

[00:09:33] Speaker 04:
I think it's just the problem the board found was there's no reason a skilled artist would combine these two specific references to do that.

[00:09:41] Speaker 04:
And absent some kind of overwhelming evidence based upon your expert's declaration in these two references, I have a hard time finding a lack of substantial evidence.

[00:09:54] Speaker 03:
I hear you, Your Honor.

[00:09:55] Speaker 03:
They had a chance for a surreply and a supplemental declaration.

[00:09:58] Speaker 03:
They did not rebut this.

[00:09:59] Speaker 03:
So there is no contrary evidence or argument from them.

[00:10:02] Speaker 03:
This court is found as a matter of law, cases like Tokai, cases like Perfect Web, cases like C.R.

[00:10:09] Speaker 03:
Bard.

[00:10:10] Speaker 03:
that flipping the order and these limitations, MoneyGram is another case we cited, can be trivial and can be as a matter of common sense.

[00:10:17] Speaker 03:
And there doesn't need to be this technical explanation.

[00:10:20] Speaker 03:
Again, the question is suitability.

[00:10:21] Speaker 03:
And I would urge your honors to just carefully look at what our experts said.

[00:10:25] Speaker 03:
It was thin, but it was something.

[00:10:28] Speaker 03:
It said that it would have not made a difference.

[00:10:31] Speaker 03:
It was inconsequential.

[00:10:32] Speaker 03:
And they produced no evidence or argument otherwise.

[00:10:35] Speaker 01:
And I agree with you.

[00:10:36] Speaker 01:
I was just going to ask you, like, what is the standard you think for reviewing the board's determination that the expert testimony was conclusory?

[00:10:45] Speaker 01:
Because that seems to me what the board held here.

[00:10:48] Speaker 01:
It was conclusory, which then would mean that you didn't establish enough of your burden to then have any sort of burden fall on the other side.

[00:10:59] Speaker 03:
I think regardless of whether you look at it as a de novo matter of legal error or a substantial evidence matter of whether they analyze the evidence correctly, they were incorrect, either standard of review.

[00:11:10] Speaker 03:
We have put forward suitability.

[00:11:12] Speaker 03:
That is all that is required.

[00:11:14] Speaker 03:
And they did not rebut it.

[00:11:15] Speaker 03:
I hear you that the prior art didn't explicitly teach it.

[00:11:18] Speaker 03:
But we're talking about obviousness, not anticipation.

[00:11:21] Speaker 03:
And we did enough.

[00:11:21] Speaker 03:
I see that I'm into my rebuttal time.

[00:11:24] Speaker 03:
And so I will reserve the rest.

[00:11:25] Speaker 03:
Thank you, Mr. Minnis.

[00:11:26] Speaker 03:
We'll save your rebuttals.

[00:11:36] Speaker 05:
May I please the court?

[00:11:40] Speaker 05:
There's no question that appellant here bears the burden of persuasion on invalidity.

[00:11:46] Speaker 05:
And that never shifts.

[00:11:48] Speaker 05:
During my colleague's presentation here, he talked about what

[00:11:51] Speaker 05:
we didn't do, and that sort of thing.

[00:11:53] Speaker 04:
Sure, I understand that.

[00:11:54] Speaker 04:
I mean, this does seem pretty obvious to me, too.

[00:11:58] Speaker 04:
I mean, the ordering of these two steps seems to make no difference.

[00:12:01] Speaker 04:
Everybody seems to understand that it makes no difference.

[00:12:04] Speaker 04:
The expert's testimony, though, as he says is thin, is from a skilled artisan who, based upon his knowledge, could testify to that.

[00:12:14] Speaker 04:
And that could be evidence.

[00:12:16] Speaker 04:
Why isn't the board's decision here lacking in substantial evidence?

[00:12:19] Speaker 05:
I think there's several reasons, Your Honor.

[00:12:21] Speaker 05:
First of all, if you look at the limitation at issue, it's not just the order of events.

[00:12:32] Speaker 05:
server that a licensing reporting server that verifies the status of the user license to a specific instance of content and upon verifying the license sends instructions to cause the licensing reporter server to provide to the proxy a location designated for accessing the content player.

[00:12:52] Speaker 05:
It's not just the order.

[00:12:54] Speaker 05:
And if you look at the prior art, first of all, neither of them come close to teaching that there even is a licensing importer server.

[00:13:03] Speaker 01:
That's not the basis upon which the board decided, right?

[00:13:07] Speaker 05:
What's that?

[00:13:07] Speaker 01:
The basis upon which the board decided was the order, right?

[00:13:12] Speaker 05:
The basis upon which court decided was that limitation was not satisfied, and they did not provide substantial evidence to support the finding of invalidity.

[00:13:22] Speaker 04:
Based upon the order.

[00:13:24] Speaker 05:
Based upon the order, right?

[00:13:27] Speaker 05:
Did I answer your question?

[00:13:28] Speaker 04:
Well, you're trying to run away from the central question, which is, is the ordering obvious or not?

[00:13:34] Speaker 04:
By saying, well, there's a lot more in here than ordering.

[00:13:36] Speaker 04:
But that's not what the board found.

[00:13:38] Speaker 04:
The board found it was based upon.

[00:13:40] Speaker 04:
They didn't show that it was done in this specific order.

[00:13:43] Speaker 05:
with respect to Sperl and Madison, which were the references that were cited.

[00:13:47] Speaker 05:
And Sperl has nothing to do with the order or anything.

[00:13:50] Speaker 04:
But there's no disagreement that all the elements are shown.

[00:13:54] Speaker 04:
This boils down to a simple, would you combine these two references to reach the patent claims?

[00:14:01] Speaker 04:
And all the underlying elements are there.

[00:14:03] Speaker 04:
The only thing the board found missing was that these references didn't teach the specific order.

[00:14:09] Speaker 04:
If the order is so obvious that it's just common sense, why isn't it true that the board's decision just violates a bunch of our case law and the Supreme Court case law on you can use ordinary creativity?

[00:14:24] Speaker 05:
Because the board correctly found that Pellant did not meet its burden.

[00:14:29] Speaker 05:
That's begging the question.

[00:14:32] Speaker 04:
The question is, if all that's at issue is the order of this,

[00:14:38] Speaker 04:
And it's simply a pure design choice.

[00:14:40] Speaker 04:
Everybody understands these things could be done in either way.

[00:14:43] Speaker 04:
It has no real patentable weight.

[00:14:47] Speaker 04:
All the skilled artisans at the time would have made no distinction in the order.

[00:14:52] Speaker 04:
And isn't his testimony, his expert's testimony of basically saying all that sufficient

[00:15:02] Speaker 04:
to make the combination, and the board's rejection of that doesn't rely on any evidence.

[00:15:09] Speaker 04:
Because they're doing it as a failure of proof.

[00:15:10] Speaker 04:
They're not doing it based upon affirmative evidence you've shown that a skilled artisan wouldn't have combined it.

[00:15:17] Speaker 05:
It's kind of the different sides of the same coin.

[00:15:21] Speaker 05:
They found that

[00:15:24] Speaker 04:
Appellant did not satisfy its burden providing substantial evidence to satisfy this claim leg so if we find they did satisfy their burden based upon this expert testimony And the fact that this is a very very simple design choice everybody knew it and that that's in the record so the board is wrong that they didn't satisfy their burden is there anything to support the board otherwise and

[00:15:47] Speaker 04:
If you look at the... Did you put in evidence from an expert saying nobody would have done the order in this way?

[00:15:55] Speaker 05:
We put in evidence at the appendix 384 to 389 describing Madison and describing the methodology they use, which have nothing to do with, that doesn't really read at all.

[00:16:06] Speaker 04:
It doesn't answer the question at all.

[00:16:08] Speaker 04:
Did you put in specific evidence that said no skilled artisan would have understood to do the licensing in this order, the license check and whatever, in this order?

[00:16:18] Speaker 05:
The specific licensing order, I don't think that was correct.

[00:16:24] Speaker 04:
The specific order that's at issue.

[00:16:25] Speaker 04:
I mean, we're talking about one thing.

[00:16:28] Speaker 04:
The board found a lack of proof to do.

[00:16:30] Speaker 04:
I can't remember what the specific order is, but you know what I'm talking about.

[00:16:35] Speaker 04:
The board found a lack of proof to do the order in the way your patent claims.

[00:16:39] Speaker 04:
Did you put in any evidence that a skilled artisan would never have understood to do it your way?

[00:16:48] Speaker 04:
And so that's why you can't combine those two references to do it your way, because they do it the other way.

[00:16:54] Speaker 05:
In appendix 384 to 389, we describe Madison and how that system does not work.

[00:17:00] Speaker 01:
We did not put in... In that 384 to 389, did you talk about how it wouldn't make sense to change Madison such that it would verify the validity of the license before giving a URL for the content?

[00:17:18] Speaker 05:
Yes, because the system in Madison.

[00:17:21] Speaker 01:
Where is that, specifically?

[00:17:23] Speaker 05:
Well, I think it's at 384 to 389.

[00:17:25] Speaker 01:
No, I want to know, on those pages, which sentences are you relying on?

[00:17:31] Speaker 01:
OK.

[00:18:18] Speaker 01:
I think it's 389.

[00:18:20] Speaker 02:
Yes.

[00:18:40] Speaker 05:
Yes, Your Honor.

[00:18:42] Speaker 05:
The discussion there talks about the

[00:18:48] Speaker 05:
process of Madison.

[00:18:50] Speaker 05:
There's no, which, again, out of our burden, they didn't really put anything in.

[00:18:57] Speaker 01:
I think you said this is before they filed the reply.

[00:19:00] Speaker 05:
Correct.

[00:19:00] Speaker 01:
Right?

[00:19:01] Speaker 01:
And you say that they essentially ignored the required claim language that relates to the order.

[00:19:06] Speaker 01:
And then in response, they put in a declaration from their expert, which the board then said was conclusory.

[00:19:13] Speaker 01:
Right?

[00:19:13] Speaker 00:
Right.

[00:19:13] Speaker 01:
Did you present any other evidence about how, I think what I understand the expert, the theory they're arguing is that chaos are obvious design choice.

[00:19:26] Speaker 01:
There's two options, and a person of ordinary skill in the art would have known to pick one of them, right?

[00:19:32] Speaker 01:
Could pick either one of them.

[00:19:33] Speaker 01:
Either one of them would be fine.

[00:19:34] Speaker 01:
That is what they're arguing.

[00:19:36] Speaker 05:
Right?

[00:19:36] Speaker 05:
Well, I think we take the position that they didn't prove their burden.

[00:19:41] Speaker 01:
But yes, that the... What exactly didn't they prove?

[00:19:44] Speaker 01:
That's what we're trying to figure out.

[00:19:45] Speaker 01:
What are you saying?

[00:19:47] Speaker 05:
They didn't provide to the board evidence of how Madison could be modified.

[00:19:52] Speaker 04:
No, so you're arguing the wrong standard now.

[00:19:54] Speaker 04:
We've said over and over again that you don't have to specifically show how something will work with the modification.

[00:20:02] Speaker 04:
All that's issue here is the order.

[00:20:05] Speaker 04:
And the order doesn't, I mean, he cited us a bunch of cases that just said, rejected exactly what you're trying to say.

[00:20:15] Speaker 04:
And so what we're looking at is, did they prove that the ordering choice, and there's two, right?

[00:20:22] Speaker 04:
You agree there's two, because there's only two steps, is an obvious design choice that anybody at a time would have made.

[00:20:29] Speaker 04:
Not that you would have modified this specific reference to do it in this specific way.

[00:20:35] Speaker 04:
When it's something like this, that's not what we require.

[00:20:39] Speaker 04:
That's not what KSR requires.

[00:20:41] Speaker 04:
when we're looking at this specific ordering choice.

[00:20:44] Speaker 04:
Because it doesn't make any difference to the references otherwise.

[00:20:50] Speaker 05:
I agree that there are cases that do say that.

[00:20:52] Speaker 05:
I think our position is that they needed to provide more than what they provided for us to respond to.

[00:20:59] Speaker 05:
And they failed to do that.

[00:21:00] Speaker 05:
The board found that they failed to do that.

[00:21:02] Speaker 04:
I mean, we've reversed the board for being overly technical.

[00:21:05] Speaker 04:
And in this analysis of obvious design choices multiple times, and this one seemed very close to that line, that they presented an obvious design choice that skilled artisans at the time would have known and would have known that it made no difference.

[00:21:20] Speaker 04:
And so that's why you could have combined these two references to come up with the patent invention.

[00:21:25] Speaker 04:
And they have testimony from their expert saying that.

[00:21:28] Speaker 04:
The board found it was conclusory

[00:21:30] Speaker 04:
But I don't know what more you need when it's such an obvious design choice and there's only two choices.

[00:21:36] Speaker 04:
Do it one way or do it the other way?

[00:21:38] Speaker 01:
So the expert report that the board was looking at is at page A, 1491 to 1492.

[00:21:47] Speaker 01:
And the question really is whether there is sufficient

[00:21:51] Speaker 01:
And he, like, was here able to say these things, assert these things, without evidence.

[00:21:56] Speaker 01:
And it's also written in a little bit weird way.

[00:21:58] Speaker 01:
Well, what does it mean when he says a procedure will not require Madison to specify proxy instructions that operate in an identical manner to claim element 1G to 1H in order to be motivated to combine the disclosures of Madison and Sperl with a reasonable expectation of success?

[00:22:15] Speaker 01:
It's a little confusing.

[00:22:16] Speaker 01:
What do you understand that to mean?

[00:22:20] Speaker 05:
I was having a hard time hearing you, Your Honor.

[00:22:23] Speaker 05:
Can you give me the page again?

[00:22:25] Speaker 01:
Maybe you want to look at page A1491.

[00:22:42] Speaker 01:
This is the evidence that is relied on to support that there's two design options here.

[00:22:51] Speaker 01:
And so about halfway through the paragraph after the words, I disagree, there's a sentence.

[00:22:58] Speaker 01:
And it starts, Zeta would not require Madison to specify proxy instructions.

[00:23:04] Speaker 01:
How do you understand that sentence?

[00:23:42] Speaker 01:
Okay, so I think the key question for me is whether the board erred in finding that the words of the expert on pages A 1491 and 92 are substantial evidence or not.

[00:23:59] Speaker 01:
That's at least part of what I'm looking at.

[00:24:01] Speaker 01:
Yes.

[00:24:01] Speaker 01:
I want to know what your thought is on that question and in doing so I was pointing you to a particular sentence

[00:24:08] Speaker 01:
But you can answer the question more generally if you want.

[00:24:10] Speaker 01:
Do you have a response to whether this language here, because there's a lot of it, is substantial evidence or not?

[00:24:18] Speaker 05:
Our position is that the appellant did not provide substantial evidence on this issue.

[00:24:24] Speaker 05:
And that if you read, and again, appellant started by saying.

[00:24:29] Speaker 00:
As specific as you can.

[00:24:31] Speaker 05:
Excuse me?

[00:24:32] Speaker 00:
Please be as specific as you can.

[00:24:34] Speaker 05:
OK.

[00:24:35] Speaker 05:
Well, again, as the board found, the appellant just relied on conclusory statements, which this court has found a number of times is not sufficient for a finding of invalidity.

[00:24:45] Speaker 04:
Why is what she just read to you conclusory?

[00:24:49] Speaker 04:
It's actually more specific about the specific references.

[00:24:52] Speaker 04:
It doesn't just state a legal conclusion that it would have been obvious to combine these two references.

[00:24:58] Speaker 04:
That's conclusory.

[00:25:00] Speaker 04:
Giving a specific factual opinion about the references, even if it's in one or two sentences, is evidence.

[00:25:09] Speaker 01:
It's not a legal conclusion.

[00:25:10] Speaker 01:
And the following sentence is probably more specific.

[00:25:13] Speaker 01:
I mean, one of the questions here is, can an expert, a person like Mr. Almoroff,

[00:25:18] Speaker 01:
say these things without any support?

[00:25:22] Speaker 01:
Is it enough based on his own knowledge, in other words?

[00:25:25] Speaker 01:
And one of the things he says is there is no practical difference between the request for streaming data content in combination with an authorization ticket that is provided back to the network for verification and requesting verification of the validity status of the license to the specific instance of content.

[00:25:44] Speaker 01:
In other words, you could flip it.

[00:25:45] Speaker 01:
There's no difference between the order here.

[00:25:48] Speaker 01:
That is the big key question that we are tasked to answer today.

[00:25:52] Speaker 05:
Yes, Your Honor, and I think the

[00:25:57] Speaker 05:
Answer is no, that is insufficient.

[00:26:01] Speaker 05:
There's no detail in explaining.

[00:26:03] Speaker 05:
And I understand that the court has cases which say you don't have to go through the prior art specifically.

[00:26:09] Speaker 05:
But this is such a broad-based conclusory statement that it falls well short of those cases and the facts in those cases.

[00:26:16] Speaker 05:
If you look at what Madison actually does.

[00:26:18] Speaker 04:
If it's so simple, why do you need detailed explanation if it's something so basic?

[00:26:26] Speaker 05:
Because it's not that basic, Your Honor, if you look into the context of the entire claim.

[00:26:31] Speaker 05:
And this specific reference itself.

[00:26:33] Speaker 04:
Entire context of claim.

[00:26:34] Speaker 04:
We're looking at the sole reason the board found it non-obvious was you taught a certain order.

[00:26:40] Speaker 04:
They didn't show that order.

[00:26:42] Speaker 04:
That is basic.

[00:26:44] Speaker 05:
Yes.

[00:26:45] Speaker 05:
The board found that Madison's parole, that the expert and appellant did not satisfy the burden to show how Madison's parole.

[00:26:54] Speaker 01:
And the reason why they found it

[00:26:55] Speaker 01:
is because the expert's testimony that we're going through right now is conclusory.

[00:27:02] Speaker 01:
And so I'm trying to figure out whether they're correct.

[00:27:06] Speaker 01:
So what if we don't think that the expert's testimony is conclusory?

[00:27:10] Speaker 01:
What if we look at this and we say, well, he says there's no practical difference between these?

[00:27:16] Speaker 05:
I think the board is the fact finder in this situation, whether there's substantial evidence or not.

[00:27:25] Speaker 05:
And I do think that even this language that Your Honor is citing falls well short of what's necessary to establish substantial evidence of invalidity.

[00:27:38] Speaker 05:
teachings of Madison, it doesn't even have a license reporting server.

[00:27:43] Speaker 05:
It has a playlist server, web server.

[00:27:46] Speaker 05:
Tickets are created.

[00:27:48] Speaker 05:
Redirector files are created.

[00:27:50] Speaker 05:
All of that, the expert would have needed to use to teach how that could satisfy the limitations.

[00:28:00] Speaker 01:
But that would be something for the board to decide on remand, right?

[00:28:04] Speaker 05:
Well, I don't think the board needs it.

[00:28:05] Speaker 05:
The board already decided it.

[00:28:06] Speaker 05:
It's an evidentiary level of the test here.

[00:28:08] Speaker 05:
They did not.

[00:28:09] Speaker 01:
This is my question.

[00:28:10] Speaker 01:
Do you think the board found that the other claim elements were satisfied?

[00:28:16] Speaker 05:
Oh, no.

[00:28:17] Speaker 05:
No chance.

[00:28:17] Speaker 05:
There's eight other claim elements that were identified.

[00:28:21] Speaker 05:
The board said, because we find element 1F to be lacking, appellant hasn't satisfied its burden.

[00:28:30] Speaker 04:
So if the board's wrong on this point, we can't just reverse.

[00:28:33] Speaker 04:
We have to send it back for them to look on these other claim elements.

[00:28:37] Speaker 05:
Absolutely.

[00:28:39] Speaker 04:
You're beyond your time.

[00:28:41] Speaker 04:
Appreciate it.

[00:28:42] Speaker 04:
Thank you.

[00:28:48] Speaker 04:
Mr. Minow, since he went over, I'm going to give you your whole five minutes back.

[00:28:52] Speaker 03:
Thank you, Judge Hughes.

[00:28:55] Speaker 03:
So they have conceded in their reply brief at 26 that the only limitation at issue is this 1f providing a location designator.

[00:29:04] Speaker 03:
I think I heard my friend just concede that at oral argument as well.

[00:29:07] Speaker 03:
Yes, we put in affirmative evidence on that point.

[00:29:10] Speaker 03:
Our expert testified that it would have been inconsequential and made no practical difference.

[00:29:15] Speaker 03:
As an expert, he is entitled to testify from his perspective as an ordinary artisan.

[00:29:21] Speaker 03:
And they had the opportunity.

[00:29:23] Speaker 03:
They had a surreply.

[00:29:24] Speaker 03:
They had a supplemental expert declaration.

[00:29:27] Speaker 03:
They could have said what a technical difficulty was, what something was unique about this.

[00:29:32] Speaker 03:
They said nothing.

[00:29:33] Speaker 03:
They just said, and I would point this court to their surreply at 507 and their expert declaration at

[00:29:42] Speaker 03:
2934 to 38.

[00:29:44] Speaker 03:
They just said it wasn't explicitly taught.

[00:29:47] Speaker 03:
It wasn't disclosed.

[00:29:47] Speaker 03:
They didn't come back with anything.

[00:29:50] Speaker 03:
So this is entirely on all fours with a case like Perfect Web, where we have to take the board's decision as we found it.

[00:29:57] Speaker 03:
They have assumed everything is taught.

[00:29:59] Speaker 03:
Now, I agree.

[00:30:00] Speaker 03:
There needs to be a vacater and remand for them to make affirmative findings on the other limitations.

[00:30:05] Speaker 03:
But that's the only thing I heard my friend argue about in terms of what wasn't obvious about this.

[00:30:12] Speaker 03:
In terms of the sequencing, there is no dispute that it would have worked.

[00:30:15] Speaker 03:
It would have been suitable under Intel VPAC.

[00:30:18] Speaker 03:
And we know that from common sense.

[00:30:21] Speaker 03:
Again, we're taking the board's analysis that everything's taught.

[00:30:23] Speaker 03:
Just think about going to a library.

[00:30:25] Speaker 03:
It doesn't make a difference whether a librarian pulls a book off the shelf before or after scanning your card.

[00:30:31] Speaker 03:
It still works either way.

[00:30:33] Speaker 04:
Best case, I mean, I feel like we've done

[00:30:36] Speaker 04:
we've reversed in very similar situations where the board has applied an overly mechanical, technical view of the prior art and required the petitioner to show more than what's a very simple design choice.

[00:30:49] Speaker 04:
What's your best case or two for that?

[00:30:52] Speaker 03:
So I think our best case is going to be, we cite in the litany of cases at 25 to 26.

[00:30:57] Speaker 03:
I think you can take your pick.

[00:30:59] Speaker 03:
Those are all predictable variation, two choice cases.

[00:31:02] Speaker 03:
So C.R.

[00:31:03] Speaker 03:
Bard's an example.

[00:31:05] Speaker 03:
But these are all matter of law reversals because the board is presented with a situation where there's just two choices.

[00:31:13] Speaker 03:
The patent did it one way.

[00:31:14] Speaker 03:
The prior did it another way.

[00:31:16] Speaker 03:
You can still use common sense, ordinary creativity to satisfy missing limitation in that context.

[00:31:23] Speaker 01:
Can I stop you for a minute on that?

[00:31:25] Speaker 01:
I don't know that I think it's okay for the board to use common sense, given we're in this APA context and they're really stuck in IPRs with what the parties have put in front of them.

[00:31:39] Speaker 01:
So what do you think is the best thing in Mr. Elmeroff's declaration to support what you're saying?

[00:31:48] Speaker 03:
So I think the best thing he says is he says a lot of things, I think.

[00:31:54] Speaker 03:
But at 1492, at the bottom of paragraph 91, he says that a posita would view them as insubstantially different, if indifferent at all.

[00:32:03] Speaker 03:
And before that, he talks about how the posita wouldn't require, this is the language I think you were referring to, Judge Stoll, earlier you were asking what it meant.

[00:32:14] Speaker 03:
They wouldn't require Madison to specify proxy instructions that operate in an identical matter to be motivated to combine to reach the purported invention.

[00:32:23] Speaker 03:
That's simply the bodily incorporation point.

[00:32:25] Speaker 03:
He's testifying from his stance as an expert

[00:32:29] Speaker 03:
OK, literal combinability is not the standard.

[00:32:32] Speaker 03:
The standard is just obviousness of combining the teachings.

[00:32:35] Speaker 03:
And a Fosita wouldn't have had any problem with that.

[00:32:38] Speaker 03:
It wouldn't have been different, is basically what he's saying there.

[00:32:40] Speaker 01:
I have one more question for you, which is, I understand your argument to be relying on not the typical Gram VD, or it would have been obvious when it was earlier, to modify this reference and do that reference.

[00:32:51] Speaker 01:
Instead, you're relying on this new, a little slightly different, KSR

[00:32:56] Speaker 01:
idea that when you have two equally viable choices, that can be enough.

[00:33:02] Speaker 01:
You don't have to necessarily show a separate motivation other than that there's two equally viable choices, right?

[00:33:07] Speaker 01:
Where do you think

[00:33:10] Speaker 01:
In your reply brief, that was made clear to the board that that was the theory under which you were operating.

[00:33:16] Speaker 03:
So I think what you're identifying as new is just a species of the argument of ordinary creativity, which we squarely put in front of the board at our reply for 31 to 32.

[00:33:27] Speaker 03:
We invoked KSR.

[00:33:28] Speaker 03:
We talked about ordinary creativity.

[00:33:31] Speaker 03:
Until we packed as clear that that line of cases is the known technique sort of rationale is a strand of that.

[00:33:36] Speaker 03:
That's precisely where we're at based on the expert testimony.

[00:33:39] Speaker 03:
He's saying it wouldn't be different.

[00:33:41] Speaker 03:
It would have been suitable as the upshot of that.

[00:33:43] Speaker 03:
That is the standard under IntelliBPAC.

[00:33:45] Speaker 03:
We've made an affirmative showing on that.

[00:33:49] Speaker 02:
I agree with you that a detailed technical explanation is not necessary.

[00:33:54] Speaker 02:
That's certainly established in several of our cases.

[00:33:59] Speaker 02:
But this is more complicated than, for example, the facts in Perfect Web.

[00:34:04] Speaker 02:
And the board here simply found that the declaration was not enough, that the technical explanation was insufficient to even meet the low standard.

[00:34:22] Speaker 02:
And our substantial evidence review is a difficult burden to overcome.

[00:34:30] Speaker 02:
Where does that leave us?

[00:34:32] Speaker 03:
So again, I would answer that I think the crux of this case is the board's analysis.

[00:34:39] Speaker 03:
The board accepted that everything else was taught.

[00:34:42] Speaker 03:
So I would push back that this is actually more complicated than Perfect Web.

[00:34:46] Speaker 03:
In Perfect Web, you had all the steps taught.

[00:34:48] Speaker 03:
And the question is whether repeating them would have been obvious.

[00:34:50] Speaker 03:
Here, the board has assumed everything is taught, including these two steps.

[00:34:55] Speaker 03:
It's just the sequencing flipping them is not.

[00:34:58] Speaker 02:
But flipping the sequence was, you know,

[00:35:02] Speaker 02:
was something the board felt took some effort and was not obvious or apparent from even the declaration, as opposed to perfect web where it was pretty much accepted.

[00:35:15] Speaker 02:
There was no other real choice but to repeat the steps that were already set forth, steps one, two, and three.

[00:35:23] Speaker 02:
So there's a difference.

[00:35:25] Speaker 02:
And like Judge Hughes, I've

[00:35:30] Speaker 02:
I appreciate your argument.

[00:35:31] Speaker 02:
And I think that if we were deciding this in the first instance, maybe we would come out the other way.

[00:35:38] Speaker 02:
But given the standard of review, it's difficult for us, is it not, to say that the board here just had no substantial evidence to support its conclusion?

[00:35:51] Speaker 03:
I don't think so.

[00:35:52] Speaker 03:
We've cited a litany of cases from 25 to 26 of our opening briefs, 30 to 33 of our opening briefs, where this court is reversed as a matter of law in analogous circumstances.

[00:36:02] Speaker 03:
So no, I disagree.

[00:36:04] Speaker 01:
Those cases involve expert testimony with no record sites or evidence other than the expert saying what his view is as a person of ordinary skill in the art.

[00:36:18] Speaker 03:
There are cases like Wires where it is just a matter of common sense.

[00:36:22] Speaker 03:
Perfect Web, similarly, it wasn't in the board, but it was just a matter of common sense.

[00:36:26] Speaker 03:
And the expert, that's what the expert testified to.

[00:36:28] Speaker 03:
So I do think there are cases reversing or making matter of law determinations, this court, on those facts.

[00:36:35] Speaker 03:
Yes.

[00:36:37] Speaker 03:
OK.

[00:36:38] Speaker 03:
We have your arguments.

[00:36:39] Speaker 03:
Case is submitted.