used dynamic interaction between a remote server and a player in real time the president invention of the way to the need for that dynamic interaction by providing a unique control information now google's argument below in the petition was i that it would take a smile file and modify the same to implement the bench however it was a style bush that a smile could not implement pipelining of any form and google's own expert agreed moreover it was established that was dynamic technique would not use control information at all and was incompatible with a smile and this gets to the heart of the problem the board all to me sidestep these deficiencies are lying explicitly and repeatedly on the panties own disclosure as a solution for these problems this was done in lieu of modifying smile and in lieu of combining while and not constitutes legal error i'm just to be clear ok the board had the description in the phone or an assertion as to the st what they're saying is we're combining work we're not even combining anything having smile it out there on its own because it can't do everything that required of invention and then we're doing what's actually describing the specification now with respect to the combination of smile and law there was no argument below that smile it would be combined specifically the conventional pipelining law was conventional pipelining was this very thing that the patent said it was  it's this dynamic interaction and in that interaction there is no control information because the segments are created in real time and there are no alternatives for a given nd because if you're customizing your division of media you don't need to have an attorney or you're basically making a custom tailored item as opposed to what the invention is which is basically an off the rack solution saying do you want to small do you want to medium term a lot now what the board said sort of in one or two sentences in the in the ground that it created was that you would use this the pipelining and walk but if you're using that type of action is how you combine and if that version of pipelining in the prior art didn't use control information file and didn't use alternatives and used explicitly what the pattern was intending to overcome and google seems to have admitted as much in its in its harness on appeal concerning the difference the deficiencies that the board specifically in the red river thirty nine dollars said there is no need to demonstrate the obviousness of any such combination and also on the same page that there was no need therefore to show how qua specific approach for dividing media files into segments would be implemented smile basically both the word and google seem to be avoiding the fact that there is no articulation of how you combine was technique with smart and in fact what the world wants to do is just keep this all separate this can be seen correct in particular a media presentation could have been divided and it was a sequence of segments and then played back in sequence years in the sequence where there's no dispute that a smile file will tell you when and how to play something but it simply doesn't have a control information or suggests will provide the functionality for control information while the controls downloading or the timing of downloading relatives play so what's the board solution further during playback of one segment of the media presentation another segment could have been downloaded simultaneously using well known multithread software developers that discussion of multithread software development tools is the explanation for how to implement the invention of the specification that site in there both sites of the patent and the site of the declaration are sites to our own disclosure basically the ultimate say that the board relies on if you go there it cites back to our pap so the board repeatedly four times cites to our patent office and then five times cites to the ball to redecorate where the cited paragraph refers back to our specification so what the board seems to be saying is this we have smile but it can't do the invention and it doesn't have the functionality and we're not going to modify it so we'll just play faltered smile how are we going to get to a control information file the president mention would just do what's said in the specification problems from that what's described the specification as a way to implement mission b rely on our specification or all to inform the the prior art nd what's described with respect to those multithreading techniques are simply that the java language and sixty two when you say something is a well understood in the industry can't the word rely on something like that in your spec we have to understand what that's describing jaba says you can do months just because there is a computer language that says you can do two things at once does not suggest what the two things you're going to do at once are no that's not right what it says here is combining multiple sequences in well understood we are industry for example and then it goes into the java example so the preceeding sentence is obviously much broader nature than just the job and it hurt i'm sorry you suggesting that the sequence elements what things are being sequence job existed and can do sequences in a row we could do multiple things at the same time but just because a programming language exists that can do sequences in a row doesn't mean it's specifically teaches a control information  does the specific sequences and the specific things that we were saved with that we were slightly clinton bench and i don't want to make sure that's clear basically we need to provide a specification some indication of how this can be implemented has to be  and all this is explaining is that the job of mine which allows you to do different sequences you put things together a certain way but just because that the java language exists to do so does not suggest a cultural information that does the specific things specific time well it have to playing and that's what's recited and the rest of this and what you do is parser control information i'm sorry in the rest of this what in the other limitations thirty four and five correct a term in which of the multiple terms files to retrieve yes based on system strings retrieving that determined file of the multiple ones begin a media presentation and then going on with concurrent the nd to last on concurrent with media presidential which reading it next file but because you can retrieve multiple things at the same time doesn't mean the job it teaches were suggests that you are doing the specific retrieving of this media segment which is a division or alternative to something else and downloading relative to play it's just saying that the java language can be used to implement them but job itself doesn't describe all of these features job is just one programming language that can be used to program elements i'm not sure if i'm making myself clear if there's another question i regard but i want to make sure we were clear on that is what the board saying is your seems to be saying is that you have smile over here you're not going to modify smile and instead you're going to use java if that's the simultaneous download excuse me  a patent is not proved obvious merely by demonstrating that each element was independently known in the prior art what the board seems to be saying here is smile existed and had some of it and our patent discusses jaba and that could do other things and therefore since these two things exist in the prior art job existed and smile existed let's just call it close or not but what you actually have to get to is a reason to modify or combine to get to the claim control and make information and if smiles not being modified what your honor meant please the court i think i'd like to begin unless the board the court would like to direct me somewhere else by trying to clarify here just what the board found and this is a substantial evidence with you case of course and what more found was  where there would be a teaching of step six concurrent with the media presentation retrieving interest file that is the one and only step in this claim that the board found not to have been taught in smile the reference itself and therefore the two other teachers in the order the way it looked to other teachers in the art was a perfectly appropriate it found based on both the testimony of dr both women and the reference that there would have been a motivation the concept here is very motivation are you now attempting to tell the board's decision to make it really clear to telegraph is still question go off the rails and exercise its own discretion to come up combination that is one of the two that you argue for the protection well i would i would argue your honor that it is in fact the same arguments on the same evidence except it's not because you didn't you have to sion number one anticipation like a smile number two obvious so are you defending the idea that the board has discretion to institute an i p r on the ground of its own choosing i am defending the notion that it's a yes or no question are you arguing to me that the board has the discretion to institution i p r on the ground of its own choosing in this case on these facts yes but if your honor disagrees i'd like to address how one relates to the st ground it but ed even if your honor thinks that nd round isn't terminal whether i do i want to understand what you're arguing about it because i understood your brief to largely dodge it for i think the obvious reason that what we're saying you know it's never been clear to me exactly when the boy decides to intervene when it doesn't intervene but if this case stand should stand for the principle of the boy i think that it has discretion case for the simple reason that here the board found obviousness on the ground that i think everyone would agree it is an appropriate ground which is law to make which is smile in light of the general knowledge of the post the board at that proposition the board not only may but must consider references like that are not denominated as being part of the round but are cited in the petition are backed by evidence and argument in the petition and explain why a limitation of the case feels more like to me is to reference obviousness which i've made clear to you i think it appropriate because you now swear dishan but that's what i feel like it is and i feel like some how you're trying to avoid having to prove a motivation to  is a thing people generally still of the art know and so i feel like you're back dooring you're trying to get around having to prove a real obviousness case based on two references by saying we're really going to look to the one reference to fill in really the general knowledge of the skilled art and we're not really using i bet you are disagree with that characterization because i think i think what we're getting at here is that you don't need to just look at why you could look at any number of references the while i think i don't know that i haven't been an answer to why i didn't other than to say number one we think it's anticipated for the reasons we articulated we obviously did not prevail in that round but secondly because under the area was a case and under the rental case i don't think it matters the the question is did we prove in our petition that the person of ordinary skill in new york reading smile implementing a smile play or using the knowledge that the pros combination if you were trying to use the other i mean why articles about all this new stuff they've come up with that's exactly where reference to the other stuff is just in terms of what the background in fact they criticize the inadequacy of conventional thing you want to extract out of it and say would have been used in this case no your honor because that makes clear that if you do this to ferry service model that is what the bulk of wise about you can do fast forwarding you can do rewinding there's no requirement in the law that in order for a combination to be obvious it should be advantageous for all the reasons there is more probable our randi kaye that's it when you look to the general knowledge you can do so when you're just talking about an extension of what is claimed in a single reference obviousness but it should be much narrower when you're trying to fill in the missing limitation which is what you have here and so you're trying to fill in a missing limitation i find and not look at the seventeen other sentences with the supreme court's as a director i was not discussion likewise you want to look at already and it's limited to this or any actually very methodically goes through four separate things that you need to think about if you're going to go to the substantiated by prior art here which says this is part of the conventional knowledge there's no issue of of whether the prior art in fact teaches that the downloading in parallel with playback would have been know as it's part of the conventional many address that point on that point the the the fact that prior art may be undesirable for certain purposes taught in your reference is not a reason why it doesn't that that doesn't simply make it a which by the way one absolutely could do income in a smile player we just don't think you're obligated to do it in a small player then the point there is that the claims say nothing about the ability to fast forward or rely on which is the advantage that was more complicated technique provide not all the claims require is a player which the board found is top expressively and in smile that when it is playing one segment downloads the next segment pictures to quote from wa is to implement this conventional pipelining this simple step six and we concede that that step six is not taught expressly in smile but we think it's an statically but but you know optimally divide up the segments all that the claims require and therefore all that we need to establish was obvious is that person of when a smile player is playing it would have been obvious to download in the art would have been motivated to supply a missing feature and then explaining that there would have been a reasonable expectation of success in doing so there's a finding there to both of those findings are supported by substantial evidence and i w you the situation is nothing like randy where there was no such other reference and the question was lack of substantiation here that substantiated by quoting that's appropriate under randall and there ios and that you're on or like to touch on a few points i think the issue here is that google wants to have its cake and eat it too they want to rely on why but not have to explain how to combine law and the reason for that and a reason i think is important to realize is that it's not only an issue of whether or not we're talking about them the nd part of the conventional pipelining in why is that complicated formula my colleague try to distinguish the two and say all are not going to use the complicated formula but if you look in at the description of conventional pipelining is that complicated formula and it is this dynamic operation so is your view more that there was no motivation to combine the two described there was that dynamic interaction they are taking information on the fly for at the exact letters but they're taking information about the current download rate the current playback rate the reason they're doing that is it's a custom common earth custom communication between the server and a player where the two are talking back and forth and say what you playback rate what you're download rate and then dividing it segment thing on the fly based on that now that's conventional pipeline and that's what's described under the heading but the issue is this and this is why i think it's been avoided if you're going to use what is described in law as conventional pipeline and it is this custom communication and custom to say patient based on this why would you ever have a control there are no alternatives because you are creating custom segments you don't have to have an alternative if you're actually tailoring it to this specific exchange so the question becomes if someone's going to use what's in law why would they ever use in control information fall why would they ever use alternatives the ideas are incompatible and that's the problem and that's what's been avoided here the argument that was offered here today is that while there are other things out there that teach pipeline ok where are they on the record the only reference in the record with respect to what conventional pipelining use is that complicated operation and law and what the argument was below and in the appeal briefs here is that we're not going to use that we're going to use something else but if the only reference or conventional type line is the thing that they don't want to combine and admit in their briefing that they're not going to combine specifically stating there was no need that therefore to show how specific approach for dividing new files into segments would be implemented smart and we're basically saying we're not going to use the complicated definition of conventional pipelining waddling going to use something else but we're not going to provide any other reference on so it's basically trying to say we gave you a reference but we're not using it and we're not combine but we give you a reference so a randy says it's ok but if there isn't a way to combine there then they're simply a failure to provide a basis for obviousness and you can't do it and run around