the court i'm alexis mosser from caldwell catherine curry i'm very proud to be here on behalf of chestnut hill found this morning i have several topics i'd like to cover with the court they can loosely be grouped into tew categories the  category relates to the problems that we've related to the court regarding the board's final written cision this written decision wholesale adopts apples analysis which in turn realized wholesale and dr mercer's testimony essentially three paragraph testimony are supposed to pull together the entire analysis paragraph twenty five dollars through twenty seven dollars but those paragraphs are conclusory was scant citations to the record and should not be relied upon nd i'd like to spend just a few moments talking about the unconstitutionality of the application of the ai a statute to create ai patents but worms unable to consider this issue as it was outside the scope of their statutory grant that's we raise it for the st time before this court the court has told the board a number of times it's not enough to simply say here are the elements of a prior art and therefore we conclude your patent is obvious there must be a reasoned analysis to get us from the elements to the conclusion  is primarily disposed to discussing you now so it's based on the standard of known methods leading to purchase health results and this is because that's exactly how apple and the court and dr mercer evaluated these facts  with regard to motivation you agree with that i would agree that while it may not be explicit it cannot be simply a desire to make a better product which is all that we have here and without some some motivation even an implicit motivation there's normally what would have been necessary here or sufficient here to establish a motivation i think establishing a motivation should have been some discovery in the prior art that there was a desire to create this by modal invention to manage the content in a way that easily and seamlessly transition between the st mode and the nd mode providing access and one user interface to both local and remote storage and i don't think that the record before us shows that they found a motivation to combine the references in this way whether implicit or explicit but what does what it what kind of implicit give me an example hypothetically of the kind of evidence would have to exist in the prior art to sufficient to establish this implicit motivation somebody saying something somebody i'm just trying to you know i haven't considered what would have established an implicit motivation and that's likely because obviously apple had the burden to bring an implicit motivation or an  not sure that i'm prepared to answer that question today but i'm happy to show you why i don't think that clements and barton which are the references i believe that they rely upon don't provide an implicit motive if they do there's other i don't know where this is exactly in the briefing but they provide argue the different motivations to combine the record right well i agree that in one paragraph they recite several things that they allege are motivations to combine however these alleged motivations to combine almost exactly the motivations to combine into court evaluated an active active video case and if we get a look at the court's analysis in that case we find those motivations and  not stansell enough to reach the result that that apple is proposing here so example the expert testimony on obviousness was conclusive because he didn't provide factual basis for his assertion he didn't explain how specific references could be combined which combinations elements and specific references revealed a predictable result or how any specific combination what operate or read on this the the assertive claims and obviously that doesn't directly answer your question but the direct answer your question is his answer is a motivation to combine would be because you wanted to build something better you wanted to system that was more efficient cheaper or you wanted a system that had more features makes it more attractive to your customers because by combining these two specificity that does constitute particularly coming from the mouth of an expert a real explanation of the factual basis for the motivation he says that and i'm reading from paragraph twenty six of those of the declaration reducing the amount of a quip not a user needs to configure and maintain that it seems like a reasonable fact based  reference to why you would want to combine two things together ditto reducing the space the equipment consumes and enabling one set of connections to the television that all seems to me not just conclusory but to be based on factual considerations that bear busy on whether this is something that somebody would want to do well i think that it is something everybody wants to do i mean with the development of the micro processor clearly everything is trending towards smaller more efficient faster and i think that's why the act of your court said these elements are generic and bear no relation to any specific combination of prior are elements and it fails to explain why a person reduced amount of equipment that needs to be configured to maintain that i'm not sure how you get more granular than that your honor nothing with what you're looking for that wasn't there i guess i would put it that way i think the is is probably irrelevant to the fact that it's simply a statement that you'd like it to be smaller so it's somewhere statement that would have no import to why this is a motivation to combine would be i'd like to put the components closer together it's the same thing i'd like them to be cheaper because i put them closer together and i don't think that that is the kind of specificity about why you would combine these references in that way that the court is typically looking for in its jurisprudence and i think more importantly is the nd part of the statement explains fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does and that's sort of the delta between where the prior art was and where our invention was and how you cross that bridge so we do have these motivations in some form or fashion if i accept the court's interpretation but those motivations don't necessarily lead us to the combination that's identified three or nine pounds in the order in the declaration and apple all rely the reference is a clements and martin are only discussed in passing there's one fight taishan to them in the entirety of the expert reports in the expert doesn't say how these references help us understand the mapping of these claimed limitations from  and this is the thrust of what's missing from this analysis without some sort of help getting from point a to point b we can't have a determination of obviousness and what i would argue to the board is that in this case it's even i would say fairly egregious because attempts to develop the record below on exactly this matter doesn't help notes that she said in his declaration known methods and they asked the deposition could you please identify the known method that you are saying will get you from point a to so obvious to combine these references why isn't there some sort of suggestion in the prior art that we're looking at however technology advances the problems should be solved are somewhat different and as things were the bird know it was really just show the contract that a person of ordinary skill would not routinely have made this combination and the and your honor i agree with your analysis completely of course however i think that in order to reach the point where we as the patentee have to show that it wouldn't have been obvious as an affirmative burden apple and the board have to show given short shrift by both apple and the board so st i feel like we discussed a little bit this idea that the differences between the claim subject matter and art and that's that delta that i keep talking about for them to be able to force us to provide affirmative evidence why this isn't obvious they have to show that that delta is easily crossable and this is what i was getting at with the idea that dr mercer as a technical expert should have some indication for chestnut hill and for the board why they would have been predictable results and of course this is the case our standard not the grand factors standard but that's alumina aiding for our discussion of how you cross this delta between the claim subject matter and art and when we discussed this with dr mercer and said well what known method are you referring to in the st sentence of paragraph twenty six he says so what's really being said there as i think about it is you have two sets of ideas those exist in the mind a single person probably or a team but those are minds it's a mind or mind of ordinary skill in the art and then the point here is there's a process of synthesis with respect to any kind of creation and one common way that synthesis occurs is to take ideas and put those ideas together or parts of these ideas to accomplish something that's different than either one of these ideas by themselves so this is what dr her sir and after all the more rely on in order to say that they can reach the nd factor of grand she to show the differences between the claim subject matter and the art are not so substantive as to shift the burden to us to write affirmative evidence that the patent isn't obvious and you're on are you judging when you did say that this could be a very small tilt and i don't consider it close obviously because this is my client but if we do consider it close if we do say it's a small leak how do you make the leap how do you get from point a to point b and don't we as chestnut hill have a due process right to understand how you're getting from point a to b so that we can provide testimony or evidence to say you didn't make it from point a to b and that's what's completely lacking here the board's analysis is expansive on the prior art elements expansive but what both they and the declaration are relying on is barton clements to pull it all together and there are no citations within barton clements to help there's no greater nexus than saying it was anticipated the case that apple sites to say that it shouldn't be stopped for arguing that is stopped from applying this is going to stop a case so it doesn't tell us anything about content and remote content appellate mention something about the ability to transfer scene with lee between the st mode in the nd mode there is nothing in the claims about that this is simply a device with the st mode that is local content and an explanation of that and a nd mode so it was undisputed that every element of the claim could be found in these two prior art references and it was undisputed that the two prior art references were in the exact field they both played recorded digital content on television so then the next question would be well where's the motivation to combine those two references which is much of what your honour's were discussing and the expert in this case  if it's so clear how come none of these references in remotely suggest it there is no as your honor pointed out in your previous question underpass are you don't have to find the market pressures there are design pressures to create a single device and that's what essentially dr mercer was talking about is that the market gave the motivation to take a device where everybody would like to be able to access both their remote content and their local without having to have two controllers will not only have your view that just the same thing over and over again the reduction in the amount of equipment the increase in the efficiency the reduction and the saw ease or that that in and of itself would provide is the motivation that we can just assume with respect to every obviousness case no your honor because we had more here i mean we have that which are very practical motivations and also that would then enable you to have one remote control or one plug those are all very positive motivations to reduce the device from two into one but on top of that what dr mercer pointed out in paragraph twenty seven of his  declaration is that it actually had been done before in other type of media devices and that's where the citation to martin clements made he could have just stopped and said and it's been known to combine them in this fashion in the your for why the board's opinion is not supported by substantial evidence is that he failed the stake how you would combine those two references now that argument st came up in appellants reply brief so we haven't had an opportunity really respond to it azure cannot be incorporated into ambrosio are basically irrelevant the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole and so this is how argument that just came up has already been addressed and rejected in the past well that that the pattern is i think the claim has any specific reference to any particular way of combining the two and they busy could be related to gether they could be nailed busy together they could mean they would still they would all be within the scope absolutely silent as to how you you can go from one mode to another or whether you even have to have one mode playing in the other what mode not you could be in playing both at the same time it's a very very fraught claim and while  cite one portion of dr mercer's testimony on this how issue i would submit and inside another at appendix the lead the ninety four dollars dr mercer was asked the specific question can you identify any known methods the mill years to a skilled artist and in the st sentence a paragraph twenty six if your declaration and he said short i mean probably the simplest one is you take two separate things and if they're compatible you plug them together and if they're not compatible you form some sort of interface and plug them together so he actually didn't explain even the physical how of combining baumgardner and b s he even though he wasn't required to and if we look again at paragraph twenty six of his declaration it doesn't just lay out the motivation as to why he actually even gets more specific as to the how and these two references in particular he include the p b r functionality of on gardner so he's actually teaching how to physically do this combination and then he goes on and says and here we have the why in the how almost kind of merging together that you would then read yes the amount of equipment that a user would need to configure and maintain you would reduce the space the equipment consumes in the user's television cabinet you would facilitate using the devices with a common remote control so he's teaching after you put them together have one remote control and you would then enable one set of connections to the television so he's really kind of teaching a physical how even though again he's not required to but what's even more telling is that on twenty of appellants blue brief they concede and i want to get the language exact there are countless features a posy to could put in a set top box video conferencing d v r music jukebox photo editing tools home movie storage and cetera while a two seater might have the technical ability to combine those features in one box that does not mean any possible combination of those features is obvious and we agree and we're not talking about would have been obvious to combine in one box photo editing tools with home movie storage were somebody talking about would it have been obvious to combine in one box the ability to access your local content and your remote content and the answer is yes and appellant has conceded that peach twenty one in their blue grief did because that was what helen person to do now they argue this evidence is not rightly any of these it is essentially sworn testimony from apple's engineers regarding the state of the art so this is a new argument for why you should  so in other words this it directly addresses their new use of co now on page seventeen of the reply brief appellate reverts back to arguing to co exist secondary consideration and once again that was rejected by the board thank you thank you very much are mentioned there are a lot of these cases currently permit pending before this court and at least one of those cases the issue was preserved before the board in this case of course just that the call for something or other i guess i would like to ask one question which is whether the department of justice has settled on a position with respect to the question of whether the board has the authority to decide the constitutionality of the procedure well as we mentioned but there is at least and for me some lack of precision and clarity in as to the department's position is how far can the board go by way of doing constitutional analysis in a challenge that directed to its own procedures your punches raipur imprecision i think it does depend on what you mean by addressing the constitutional question of course we don't think the board could shrink down an act of congress  but the board say that you don't think they could strike down an act of congress no your honor but the board could of course well they perhaps perhaps it wouldn't have the effect of invalidating the act of congress but my question is can the board say you know what we have looked at this we've analyzed the all the constitutional arguments we believe they are correct and therefore we hold that we don't have the power to conduct this proceeding i think so your honor and as we've mentioned in these other cases the board of course declined to institute proceedings but that it was a serious comment you know i'm actually that i've heard you make that argument there the department make that argument before but i haven't heard whether they could actually say ok here's without saying we're we're not going to proceed in this case because we're nervous about the constitutional issues can they implement can they take a case and then decide the constitutional question stretch protection board or the board i hesitate i guess to go too far outside of what we've we've said in our own hopes that we think of course that the board can address these issues but if you've said in the brief that they can do so by saying we're not institute i think that you haven't gone any farther than that and i'm wondering whether your position is they could institute in that case and then decide no we can't the statute is unconstitutional we cannot this this decline to institute i'm not satisfied that that actually grapples with the question of whether the agency has this authority or not the supreme court in elgin stated at the board or an agency could of course reach threshold issues of the board thought that there was a seri constitutional problem because of course address and sent out to be used on the issue as opposed to whether i again we don't think that it could hold as a provision of congress unconstitutional because as we said the remedy would be either to decline to institute  struggling to answer this question because it just hasn't happened yet when you and the top off case the board has all the constitutional issue in a couple of paragraphs by citing to this court's opinion and patrick's this is there a difference between the actual constitutional question that arises because there is and we've got our i can't think of the name now but we've got our press and i mean in some observant particularly due process issues the board has the would have be ability arguably to provide relief in certain circumstance whereas if it were dealing with the taking issue not so much right so is that a factor that we might differentiate another with the type of claim that's being made in terms of what the authority of is of the agency and i think the t claim by claim is is a helpful way of approaching this but here of course we think that it could have been raised in the st instance and bork have addressed several threshold issues even if it didn't reach the ultimate constitutional question but of course if the board were to reach the question like if we the effective date the i a e a so there retroactivity challenge can be rejected on that basis alone thank you very much you've got something vital time will restore two minutes your honour's apple has characterized our briefing as only belatedly addressing how these references might be combined how is especially the known methods come a combination which we are certain not addressed here recordings it's if you look at the figures it doesn't appear on its face to relate and there's no mapping to how it might relate the only citation in the record is that one line in paragraph twenty six dollars likewise climate is even worse it's a client side caching  i centrally i like to think of this mapping that we are looking for or the how or the known methods it's kind of like a reverse enablement did the expert in this case enable the prior art references to achieve the three or nine and he did not and apple accuses us one in twelve show how he would have plugged them in plug being the wrong word here it requires so much more wires processors requires a discussion of mechanical electrical eventually why fi access in order to meet the limitations of three on nine that analysis is not done simply by citing few comments and barton and saying well something that we say is similar might be out there they didn't show how it's similar as to the takings it's futile to uncommon for the government to assign and i feel remember a figure indulgence here but it's not uncommon for the government to view a patent on sort of differently in terms of the issue date than the general public would and i would point you ch