google there's only one claim step alleged here to be missing from the prior art and that is the step of returning the keypad to the default state philips agree is that all of the other claims steps including the step with providing the keypad in the default state in the  replace the key that you initially pressed with the item you selected on the little menu that that pops up behind so th i not sure if that is you now say look at claim one which i quote i'm going to assume because i think that you just did not argue claim one in the petition to to the board so that all actually taught was the replacement of the selected backup key item onto the original key so the two reference does teach character substitution substitution within seconds to when a secondary character selected in the figure eight in body meant one of the character one of the keys undergoes character substitution the others do not and as we explained throughout the proceeding you know once that you haven't tapped patent at issue here are the claims and the testimony supports this teach theory my problem with that is that i don't think it is really reasonable to say that you made that point in your petition well the petition so t state or not doing so and if one under speed here that that the keep had contemplated by the one with three patent see is what he said returning to the default state are not doing so it at don't you mean that to disclose is staying with the substitution are not necessarily doing so that's right to trust them but the default is not expressly disclosed it's a cut as i understand even in the independent claims it's simply that this final limitation is peripheral and trivial to the claimed invention we also have here kind of almost a unique circumstance where we have we've got a patent which itself isn't particularly common and then we've got missions by the patent owner to the patent office during reissue acknowledging that the returning to the default state does not confer patentability on the claims it's not central to the claim so this is of course still is st of all acknowledge error in the original claims which contain the  and that's referring to the original claims that were submitted for reissue claims which philips itself admitted contained in error the error according to philips is that the claim claimed more than philips had the right to claim so what did phillips do and narrow that claim and it narrowed it by adding new limitations to automatically one those limitations are the pre determined time period limitations they have nothing to do with returning to the state so the board here made a legal error and it's and i character being the peripheral limitation is that that's where randy argument that's right so it's it's peripheral versus central there's some other words that are used in these cases but that's essentially the nub of it let me ask you this question before you get into that argument but  that we do not agree with your characterization of randy and the associated cases perfect web and here where and instead think that those cases were really saying you can't use this common sense to supply a limitation especially in cases in which there is said the limitation is central would you assuming we don't agree with with you on that and assuming therefore that we agree with the board's construction or randy do you think you still have a path to winning the case and if so what is it i do judge bryson and the answer is that there isn't simply a bare common sense here that w table being applied to this missing limitation there is in fact the underlying documentary evidence as well as underlying expert testimony which supports the application of common sense so this isn't a case that it was contemplated by some of these cases where you have common sense and nothing else now that perfect but case is actually that case where the court said this is such a simple limitation it's just returning to a prior step which was known in the prior are same same same here a step which returns to a prior step which was known in the  and because of the the manifest simplicity of the act of that limitation it's appropriate like a common sense with nothing more and what this court said in perfect lab is that expert testimony is not required in that instance but even if this court disagreed with that reading of submit to your honor that this is a case before you today is that exception if this is an unusual case where we've got a real issue patent and we've got admissions by the patent owner directly to the patent office bearing on the precise claim limitation at issue here ok now ordinary skill would understand that scott had to contemplated no character substitution at all and he was referring there to the claims of psychotic to the board never acknowledged the claims secada to certainly never found that that google had raised them belat but never even never even considered that aspect of the disclosure at all and there's testimony that was brought to the board's attention through i mean the independent plenty thenew claimed right ship that will push the board discussion at in the oral argument so they obviously were aware of it appendix three hundred and twelve all of which disclose entry of a secondary character but no subsequent substitution of the character and according to the expert testimony of record this these are disclosures that a person ordinary school would have understood to be term maybe it seems to me pretty plainly can have a couple of different meanings one of which can help you one of which perhaps doesn't is there any issue with translation here that is this the it kind of t is an english translation of of the japanese that's good as anybody raised any question about whether in japanese the term that got translated into into the english may be has them you know i good morning play please the court google as this court just set aside the board's proper finding of fact and in its place mandated acceptance of common sense this fails for two primary reasons st the board didn't consider the common efficient way to do things it would be obvious to do the exact opposite and base that nothing more on the on supported opinion testimony of dr crocker however the board found that the declaration testimony in this regard again quoting was not grounded in underlying even you know claim one of secada two when you press on the key and there's a little menu of ten alternatives that come up and you select one of them there are basically only two things that can happen when you're done with that the original item on the key returns to the key or the one you tapped goes on the key i mean i can imagine some alternatives where you were given an option which one do you want but it's a tiny number or in k s r terms a finite number an extremely finite number of pretty self evident options why is this why is that not the right basis for resolving this case well that came up during the oral hearing below as well specifically in the appendix of spring morning from standard physical keyboards into how are we going to fit all of this in these small mobile devices particularly mobile devices that had touch paths and that was difficult to do there are several things that have to be solved boxed in went to solve one problem on a standard keyboard you have to press two keys at once to get functions shifts and a lighter control in a platter and you can't do it on a touchpad box i'm done with that now each other sort of area jump or jumped into a different direction some solutions offered at that time and again this is in the infancy of these keyboards jumped into what were called predictive keyboards and that's discussed in the appendix at forty one column to these predictive keyboards when you touch the key it would change the entire keyboard based on what a gifted you might want to touch next there were also multitask keep awards where you can only fit a number of keys and there are multiple characters assigned to each kid so you would tap the number of them the way they are they're never going to change but for keys twenty two were these specialized characters the types of characters don't really appear on people or the types you would get from going into a menu using a mouse how are we going to get them those keys and what secada to set up  jumping from a manual keyboard mouse into that we need to find a efficient way to get these specialized characters and what they said is you're going to have to adapt the way the usual works so to say there's one way to do these things is simply not really understand what was going on at the well past all of the range of possible keyboards and choices and adaptive keyboards and predictive keep boards and double key selection mechanisms to what is art here's one way to get more options before the user have a number of keys in which by holding it a little bit longer you get some more options now at that point there are really only two things burden in these specialized keys that stated in the appendix a three way paragraph six the rape and what's a cut a specifically said to do for these types of special character keys it is quicker and more efficient actually said carried out more quickly to perform this adopt so what the board of knowledge is that the primary reference says do this and the board is basically saying if you're going to tell us to do the exact opposite of what the reference explicitly says to do you can't provide us wholly with unsupported opinion testimony you must provide but it seems to me that one of the distinctive things about the obvious in this to try way of establishing vs in this is that you don't really need a particularly good reason to try this tiny number of predictably successful things if it's a small enough number and it's perfectly clear what's going to happen with each of them it's not really an answer i think under you know serve an additional purpose somebody would try them and here it's beyond that well let me just stop on the other well st and foremost i do know that even dr cochrane google's expertise and knowledge in the even now have here's a technique for getting more choices holding the keys for slightly longer to give you other options at that point the range of possibilities shrinks to something extremely  have to think about what google argued for the basis for doing so the argument was that it would be obvious to do so because you'd want to go back to a standard familiar layout the problem with that was that these are not standard familiar keys it's the millimeter characters not something that appears on a keyboard there was no standard familiar layoff of these specialized tires because these were specialized characters and not the sound characters equivalent of letters for that they were teaching a very specialized thing that for these unusual characters how are you going to access any keyboard but they weren't thinking of what's the option given these you know click menus they were trying to figure out how to get a user selection and for instance like using a mouse and going to a menu to get an unusual case how to fit that into a keyboard and they were trying to figure out how's the most efficient way to do they did that by saying if you're going to use these if you're using a millimeter case it makes sense to adapt to the norm you're ok now what your are saying is well why would you do it the other way or you don't do it the other way simply because the theory giving given for doing the other way is that you want the familiar layout that google's burden is requires an underlying factual consideration if your theory is you would do it because you want to go back to the familiar layout you have to prove that there was a familiar layout to go back to and here there's simply an absence of that we're not talking about a quarter keyboard we're not talking about letters we're talking about keys for which there was no familiar label and absent if your reason for going back is that you need to prove that predicate and it was google's burden to prove that keyboard for however many months or years the user uses that keyboard except when you punch one of these keys and momentarily have as a different group of selections but the the familiarity factor is i understand the argument is that that's it that the the default keyboard and the keyboard including features that will return to the phone will be the same with respect to that it your honor that is something that week old rule of consistency but what the board found is that that was not what the goal really consistency found they consider the testimony from two experts and with respect to consistency this idea of consistency so you was consistent consistently so what was really at issue here is dr cockburn's testimony being unsubstantiated his statement concerning what was consistent was incorrect his understanding of the characters in secada two was incorrect even though they were some of them work were translated there in his understanding of what a standard keyboard looks like in japanese it was incorrect so was the lack of supporting evidence and his incorrect assumptions about what was needed consistency what was needed and as far as standard layouts and the board simply said if you're going to be providing it's only opinion testimony you have must have more than that so the consistency is not the keyboard layout but the operation and user experience in your brief i think it's fair to say in passing you make a suggestion that google has to the argument that it now makes about the distinction between claims one and four and six i'm not i'm with you do you press d that argument you don't use the term wave or i think you use the t lated are you making a waiver argument yes you are you are and their answer to that i guess is twofold one is that you raised the teaching the way argument in your patent on response also that you didn't make any objection to that evidence on the ground that it was belated before the board can you respond to those points with respect to what took place before the board that was not made as an objection because what we understood it is and what the board understood is that the actual argument being presented was an argument for modifying secada to wells but that the whole point and made i think at some length and the reply is of the petitioner and and default with respect about the argument that was made below and let me just find your  insubstantial change they were changing secada to and then they went on up in the appendix of ninety nine dollars to two dollars to explain why they were changed how to do what the board found below and the reason we never objected to it because both the board and philips did not think that they were changing secada two as to whether or not there it would be a change the board specifically stated in the appendix seventeen the parties agree that secada two does not meet this limitation and dispute whether the person ha secada to we didn't object to their raising claim one because we didn't think it was changing their underlying line premise that they're proposing a modification of secada two on appeal it seems to be that they're no longer proposing a modification which are close to let us there was a very specific argument here would you do something differently for keys twenty two dollars than what secada to explicitly tells you to do so their bases for changing that explicit teaching was like predictive entry multi tap i think your insight on that is correct your honor which is that philips is just turning back the clock too far i mean that those everyone agrees that predictive keyboards and multi type keyboards are things that existed in the prior art but they're not things that were ever contemplated by the person or skill in reviewing the secada to reference those or other technologies that are further afield from what's actually disclosed in the reference base and to cut it to itself the only testimony in this case is that the person would have had two options returning to the default keypad or not saying with respect to their reference to the myriad ways of dr coburn's testimony he was talking about the variety of design choices one had in the prior art for keyboards  he wasn't talking specifically about the options available to the person ordinary skill based upon the secada to disclosure second of all just price and your point with respect to k s r it's right that that the obvious to try discussion in k s are really doesn't contemplate kind of a concrete reason if it's enough if there's a limited number of choices and they're available to the person of ordinary skill here of course it's undisputed however that there was a reason for the person  ordinary skill to either substring the character or not and that reason is that as philips on expert acknowledged and this is on appendix page three to eighty four characters are used with different frequencies quote depending on the context  and fifteen acknowledges that the declare and declare is from both parties acknowledge but how often particular characters would be used was context dependent varying based on the user in the situation in other words sometimes it's more efficient substitute the character sometimes it's more efficient to return to the default states although k s r doesn't require necessarily a firm reason if there's a finite number of id identified predictable solutions we have that reason here and in the record what was that citation  that was some people would prefer one some people would prefer the other right so there was philips expert dr porter on three thousand two hundred and eighty four the appendix said that the characters used with different preconceived quote depend on it depends on the context and then philips in its own brief acknowledged in describing the case history here on page fifteen that to clarence from both parties acknowledge that it's not like it's the way that i might understand that is you know a chemist might prefer to milligram than a millimeter and in that particular context it wouldn't make sense to substitute the millimeter character with the milligram character for it in that and that for that purpose i see i'm going over my time you don't need twenty more