destroy their thank you your honor good morning and may place the court my name is don ware and i'm appearing on behalf of in touch technology this appeal concerns to patents that africa trolling access to to telepresence robots by multiple users and one patent and valving controlling the operations of of the robot in real time in the limited time that i have today i'd like to focus on the obviousness issue in all motion with respect to obviousness and that says to two of the three patents there was no invalidity asserted as to the third patent the issues on appeal implicate two legal requirements for an obvious miss finding that this court has recognized provide critical protections against hindsight bias in the findings in a finding of obviousness first is the requirement in k s r and many decisions of this court that to base obvious combination of prior art references there must be an articulated reason why a person of ordinary skill the art at the relevant time would have combined them the second legal requirement is that where yes it sure looks like all of these components  seems to be all there in the same field that correct i don't think it is correct but let me say something about the state of the art to put this in context the state of the art at the time is actually pretty well represented by one of the references that is before the court which is the jus p reference and the jus p reference refers to the paradigm at that time which is around two thousand in a telepresence robot and what i mean by telepresence is where the user at a computer is able to project themselves to project their image for example through video to that remote location through the the robot in the robot has cameras well and communicates back and the paradigm at that time was one computer one computer controller and one robot and the inventors in this case the wang inventors had the idea that there were circumstances in which it would be valuable to allow multiple users to have access to that same one robot and this came up particularly the health care field because you could have a couple of specialists of specialists in new york a specialist in washington could then diagnose and treat disease so this was a new use a new idea to have multiple users who had access to you then had to have a way of controlling that access you can't be projecting multiple users to the robot and so this was a new idea and so the jubilee reference if we take the three fifty seven patent which has both the arbitrator limitation and also the call i didn't give anyone any reason to go beyond and look for beyond that reference and look for an arbitrator or a callback mechanism because there was only one user and in fact just as an aside say that in the briefing from the go there is the suggestion somehow that in that patent that that there are actually two computers or two controllers or two control stations what's your strongest objective indicator of non obviousness i would say commercial success trader you tied that trouble with commercial successes it's almost impossible to tie commercial success to a narrow improvement in a patented field well in this case it marketing there's a hundred there are things th as i said before this invention before this invention the paradigm of the remote robot of the robot telepresence robot was one robot and one user so what this invention is really about is multiple users using that same robot and that is what is embodied in the product that in touch put on the market and it was agreed that that product embodied the claims of these patents it was something new it was agreed i think it's important to keep in mind there was no novelty defense no anticipation defense so this was something that was brand new to put out on the market  telepresence robot that could have multiple people use it there were no sales of such a robot no sales before this was put on the market and now or once was put on the market there have been six hundred of these placed at that's over one hundred thousand dollars a unit so it's an expensive product of the way i would have used industry praise of labor standing down there yeah those are the people who know the arts and they're the ones who use the art and for them to praise your feature nexus is very easy yes this record in this case right in the feet and the feature was again finding a way a means an effective means an efficient means for multiple users to use the same rabat so we did have industry price and we did have licensing and licensing was from i robot which is the industry leader they took a license and so i think all of those are important and i think here that's a problem if i just  objective evidence for a moment is that the expert not only did she not give any testimony about the objective expert that is a defense expert she never heard of it she didn't know that was part of her job even to do that of it something that the jury could have taken into consideration right that is your argument because that's the only thing that they can point to in the record that is there is no evidence there was no rebuttal evidence as to any of these objective factors so what there is is that instruction but for a job for a jury to apply that instruction they have to have some evidence and the evidence that they need to have when they're when they're asked to balance this for gra factor against the teachings of the prior art is they need to have some evidence as of two thousand and one as to how would a person of ordinary skill in the art do that balancing they didn't have any learn from prior art because they knew that the ultimate opinion factor in certain important and i don't think it has to be disregarded i think an expert can come in you could have an expert come in and only talk about the teachings of the prior art and i've done cases where let's say commercial success is the objective criterion we've had an economist come in and talk about that but i think that the ultimate determination of obviousness has to reflect some balancing of the objective criteria against the teachings of the tree of the prior art and we didn't have that here so what we would have if we say if this court affirms the only thing you have to do in a case to sustain finding a jury verdict of obviousness is to be able to point to the instruction having been given and that's all and that instruction honestly is given in every case i mean it's part of the standard instruction hunt these that and i invest there are valid but no i think on infringement and i think the reason is that we focus on our business i think infringements very well dealt with in briefs i think the issues are presented i don't think there are any factual issues so we're on appeal court wants to decide you know focus on issues of law on one patent the issues on the three fifty seven patent the issues are erroneous claim construction the facts are not disputed it's not disputed that on our claim construction we win as the arbitrator that's the arbitrator and the callback mechanism even if the claim construction is overly broad doesn't the record support the jury finding oh not at all because the i mean even the judge said judge anderson said when he denied fees under to the defendant under two hundred five at the end of the case he said look my claim construction didn't mean that this claim doesn't cover first come first serve him is is controlling access on a basis of priority the dog all know or you know let me i'm sorry to interrupt use devices doing it in a queue without a priority analysis will that is true there's not a priority analysis but the priority that claim in the patent that requires the priority limitations claim eighty this is claim seventy nine it does not require any priority analysis and after the judge addressed that in his claim construction he correctly ruled he correctly rejected vagos argument that and that claim that interpretation we say has to be wrong this is the whole contemplation of this is an invention is that there are multiple users they log on to the system there's a buddy list of authorized people can log on they log on and they was very it was somewhat unclear because an arbitrator right the judge that we were fine with his rejection of the priority limitation which we go asked for he referred to a determination making a determination and  on it's like you're saying well no it's claim construction his claim construction referred to the system making a determination in order to arbitrate or in order to control access you were ok and we thought we could live with that because it wasn't until the trial where the vigo counsel started arguing in closing that that meant that you had to have some active decision making you had to have priorities and all of that and then when i think that you're still intitled at the end of the day to measure the whether there's substantial evidence to support the claim as construed and and we certainly are entitled anyway in this court to appeal the claim construction because it seems that what the judge did was after he had the jury's verdict is then he said well the jury could have found that arbitrator requires active decision making and i don't think the jury gets to decide the meaning of the claim to begin with and certainly not after the fact in this court has held that in earlier cases so it appeared that he changed the claim construction during the jame all phase in order to support the jury's finding and yet he preclude first come first serve as a rule that the system the computer could apply to allocate who has access at any given time i'm in my rebuttal time now i may have the time where why don't we save the rest thank you will actually restore your rebuttal time if you give misplace your an extra two minutes that'll keep time the thank you please the court learn fletcher with my colleagues or frazier on behalf of the go in touch as arguments assume that there wasn't a jury trial here but there was and after a five day jury trial the jury returned a verdict in favor  hugo on every single issue in touch appeals every aspect of the jury's verdict but it points to no legal error and substantial evidence supports each portion of the verdict the judgment should therefore be affirmed i can address the trial court allowed the issue of obviousness to go to the jury and the jury is presumed to have made all of the factual findings that go to the obviousness narrow court obligation is still then to independently assess whether based on the underlying finding that the jury's obviousness conclusion was supported by the evidence and identifying no legal error the jury was properly instructed that it was required the legal standard that was required to apply to determine obviousness and in the evidence that it was required to consider including the objective considerations but do you concede that your expert did you consider objective considerations that you put on no other evidence relates that the go did not present evidence of objective considerations but in touch did and that evidence was for the jury and the court in determining obviousness it was in touch is burden to prove that there was a nexus between the objective considerations and the claimed inventions  i've read your expert opinion expert testimony multiple times and i can't find a single place where the expert ever explained what the motivation would have been in art one skilled in  art to combine these references to god said repeatedly somebody could do it even for that one point well you would do it but she doesn't ever there's no explanation as to why or how or i mean these are very disparate pieces of art and i don't see a motivation to combine testimony but first of all dr jacob did provide explanation of why and how a person born your skill the art would combine these references and it's also contained in the references themselves and the way that she explained the references as a district court found the technology here was not particularly complex the claims require a mobile robot with a camera and a monitor and to control stations the only other elements w arbitrator in the callback mechanism which were also individually well known elements of the art and so the combination of these three elements did not require a complex problem using the model catching read through the experts testimony dr yankel i i'd give him a deme ainus in my class for using hindsight know most every single sentence to to assemble the prior art to he uses the invention to assemble it uses the invention to explain it isn't there are significant problems with the way both the expert dealt with  and then the district judge in the chain mall takes almost the same mistakes doesn't it well i think that dr yang who actually started with the prior art references themselves not with the claim and not hindsight so what she did was she started with the g o p reference which disclose telepresence robot and two different remote stations you say that but i've read that reference and i don't see it talking about two different remote stations i am not at the same time it talks about you could have the wrong robot here reference was that it discloses to remote stations the user room the user station and the immersion room now in touch doesn't agree with that this is a question of fact in this was her interpretation her factual torpor taishan of the reference a column seventeen of jupiter on page a one seven one five four it refers to a connect to user station procedure that establishes the communication connection via the wireless transmitter receiver to the user station or immersion room and that's what dr yankel relied on when she said that it can be talks about talks about one option or the other not both at the same time well no and that's the point is that there is one robot that can be connected to from either station from either the user station or the immersion room and her testimony was that an arbitrator would be useful here to determine who has control of the single robot is it the user station or the immersion room and so that's the the explanation she gave and the portion of g p that she pointed to she then combined that with a but if you go back and you look at column sixteen at the bottom of concept sixteen at about line sixty t explains that that that either or reference there is talking about two different embodiments i don't think it is talking about two different body medicine that most doctors echoes interpretation of this reference either because when she looked at column seventeen she says that the connection can occur it can connect to either the user station or the emergency room and so that's the the discrepancy that we have is are there too remote stations which one is going to connect a robot and sense totally out of context of the rest of the pack which describes three different embodiments not not two things happening at the same time well i think the on column fifteen and sixteen it describes the user station and it separately describes the immersion room but then it puts them together in c seventeen and saying that the robot can connect either either or and that's was dr yonkers interpretation of this reference which was presented to the jury she then looked at the student offer reference which teaches there is no dispute it teaches the individual element of arbitration you know but that's the micro swarms somehow you've got to get in the student hall for the the  priority control and then you've also got to find a way to get the callback mechanism in there too is there any point at which they said this could have been done by a person of skill in the ar before the time of invention yes and dr yankel explain that all the doctor yankel is always going to say it could be done looking for i think she after the time of invention never does she go back to before she did testify that she was talking about the point in time of two thousand and one of when the claims inventions were made and at page a's one zero nine four zero is where she provides some motivation for this arbitration system being used in the context of jupiter which teaches the to promote stations that wasn't particularly complex but it didn't need to be because all of these individual elements were clearly disclosed and well known in the art and her explanation was fairly simple but it was that if you have the telepresence robot and you be that as she interpreted it has the two remote stations using a single robot then didn't offer explain exactly why you would want to use the arbitrator there disclosure and her testimony that that she is going back in time to the relevant point in time and that someone with the with skill in the art at that point in time would have been motivated to put these things together i read her to say they're fine looking at it today i can take a and i can take b and i can take  can put them together i don't know that she put it all together as articulately as you just did but she did put each of those components there and we can find the reference she did say that she was doing this or that obvious should need some kind of mechanism to to deal with little being messages that are sent to the same robot it didn't say that you need to decide who gets to access the robot it said if if a robot receives you know turn right and turn left then there needs to be some kind of way to deal with that actually didn't offer disclosed both and looking at page eight one seven one seven one seven nine in the paragraph five discussing arbitration the second set and there says arbitration mediation is also needed in the case of shared control when multiple operators may control different functions within the same task force that's teaching the exact concept arbitrating between different users who are sharing control robot and that's what dr yang testified her explanation was that a person of ordinary skill in the art would think well what if i did what do i do if somebody can't get access to the robot  brings in the callback mechanism and she's found in roach and she's you know it's a pretty simple motivation but that's all that's needed it's i have to let them know that the robots become available and then using roche together i believe would be obvious to a person ordinary skill in the robotics so again these are very complex ideas but they are all disclosed in the separate references and dr yank oh it's plain how they would be combined together and where the motivation came from was fairly simple but it was in the references themselves as she explained them and this really just amounts to the combination of familiar elements according to known methods to yield predictable results there were no modifications of the individual elements you made this really just  combination and that should be enough to prove obviousness under k s r if i can address the objective considerations point here the jury was properly instructed that it must consider the objective considerations and it was presented with evidence of objective considerations from in touch it was perfectly within the jury's province to reject those objective considerations because as a district court found they were we and of little relevance and on these points in touch as expert dr tablet did address the objective considerations and it was all very generic testimony for example she relied on in touch of sales of hundreds of robots nothing relating specifically or showing any sort of nexus to the claimed invention was the word talked about most of them of the invention there was one license that was relied on and that was a license with i robot but that wasn't just a bare license to suit that was a a business deal between two companies who were business partners i robot has actually invested and helped develop the in touch robot and it was a cross license of multiple patents so that also doesn't show the required nexus that the license was specifically for the claimed inventions because it was part of a much broader business dr hathout also relied on tremendous industry paid praise for the in touch system but nothing against pacifically that goes to the claimed features of the patents so we would submit that the objective considerations were properly considered by the jury don't affect and don't save  if i can turn briefly to the non infringement arguments that were raised specifically having to do with the arbitrator isn't one of the things i found most interesting and from both sides is that that you all have a little bit of difficulty because your arbitrator definition runs up against your validity argument in other words the way you want to define arbitrator which is to require all this detailed analysis that doesn't show up anywhere in the prior art and yet the way they want to define arbitrator which is to be very broad and for a century just pick between users without any real analysis seems to come closer to your partner so that the question is do you vigo advocated at the markham stage was narrower that proposed construction would have required the specific priority mechanism that's not the what the district court applied the district courts requirement for arbitrator was that the device or the system has to determine which user has exclusive control of the robot and that is taught in the prior art but you did argue to the jury this specific priority was required and that that that's what you told the jury that that determining meant no no i don't believe we did what we said was that the the system has to determine who has control and to go doesn't do that because it merely allows access to the robot it's up to the users to decide who gets to use it not the system itself and that was consistent with in touch as expert testimony as well  what what we said was priority was one example of a way that a system could arbitrate we gave multiple examples of that and they're all disclosed in the patent it could use a q it could use priority we said those are examples of ways that  arbitrator can determine troll but the key point is that the arbitrator the system itself has to make the determination in pico doesn't do that and there's no evidence that the code does that all that's the instruction that went to the jury the jury was instructed that arbitrator means a device that determines which user station has exclusive control under that definition or under any of these definitions figo system doesn't include an arbitrator because it doesn't have the intelligence built into the system to make any sort of determination among which users will have control of the device your honor vito's experts expert was entitled to her opinion but she is not entitled to her own facts and she based the obviousness opinion as to the three fifty seven on a combination of three references shuki didn't suffer and roche there is no question that the jew p reference deals with one computer it simply describes that in another embodiment you can have a very very elegant immersion room that has beautiful video capabilities so that you can better receive the feedback from the remote robot that c seventeen makes it absolutely clear it's one or the other but it's not both and that's a huge difference because this is what was new here was the idea of having multiple users who could access this one robot and so with jupiter when we're thinking about recent to combine there is no reason to combine jupiter with a callback mechanism because there's nobody to call back there's only one user and i think it's it's it's interesting that's a callback  to they say callback is in the prior art was certainly not in the robotics prior art they had to go all the way to a telephone system to find this callback and the reason it's not in the robotic prior art is because none of these references deal with the situation of multiple users who are going to be given exclusive access for a period of time which actually that they you know they can determine this is what the health care professionals are doing that didn't hoffer reference there's also no reason to combine it with offer references very clear it's about is teaching about human interactions with a swarm of a thousand or more robots and yes it makes reference to arbitration but that reference to arbitration talk about multiple multiple let's say field multiple soldiers having access to this swarm who might be sending it who have shared access to it none of them has exclusive access to an individual robot they're sharing access to a whole group of them and the idea is you have to figure out some way where if one of them is in charge of positioning the robots but somebody else is in charge of deciding like which sensors are we going to use are we going to turn on the video cameras it's going to be audio are they going to evaluate toxic fumes because the example given in doing hoffer was a hazardous waste site undoubtedly selected because it has the word arbitration in it and roche was selected because it has the word callback in it those are the only three references there are certain against the three thirty seven patent and in the end the judge looked at this his jame all decision is two paragraphs absolutely cursory all he did for the so called reason to combine was cite dr yang close testimony where they would ask a question like would have percent of our narry skill in the art find it obvious to combine this reference with this reference and she say yes that was it so he just cited that his his discussion of the objective evidence mounted to his saying that the evidence of commercial success or maybe said the evidence of objective evidence was yes there's just one other point i want to make which was that the comment was made on nexus about nexus on objective evidence and the comment was made that it was our burden to prove the nexus i think this court's decision has made clear it's always the defendant's burden to prove the contrary the objective evidence in any case they didn't contest that at the trial this is for appellate purposes only thank you very much