KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC — Oral Argument

1:06 Appellant Attorney (Justin J. Oliver) Good morning. It may please the court. The claimed invention provided a new manner of emulating

1:12 streaming, which improved over the prior art version of pipelining. Specifically, the prior

1:17 art or conventional option for pipelining, as described in the PAW reference, used dynamic

1:22 interaction between a remote server and a player in real time. The present invention avoided the

1:28 need for that dynamic interaction by providing a unique control information file. Now, Google's

1:34 arguments below in the petition was that it would take a SMILE file and modify the same to

1:39 implement the invention. However, it was established that a SMILE file could not implement pipelining

1:44 of any form, and Google's own expert agreed. Moreover, it was established that PAW's dynamic

1:50 technique would not use control information files at all and was incompatible with SMILE.

1:56 And this gets to the heart of the problem. The board ultimately sidestepped these deficiencies

2:01 by relying explicitly and repletely

2:04 on the fact that they were not compatible with SMILE.

2:04 On the patentee's own disclosure as a solution for these problems. This was done in lieu of

2:10 modifying SMILE and in lieu of combining PAW, and that constitutes a legal error.

2:16 Judge Prost And just to be clear, okay, the board had two alternative holdings, one in which it relied

2:24 on what it said, which was a combination of SMILE and PAW, and the second was more or less what the

2:32 petitioner was saying, was SMILE and general knowledge as indicated in PAW, right?

2:39 Correct, Your Honor.

2:40 So the arguments you've made go more to the first or the second?

2:47 Appellant Attorney (Justin J. Oliver) They go to both, Your Honor. If you read the description in the final written decision as to

2:52 the first, what they're saying is we're combining, we're not even combining anything. We're having

2:57 SMILE sit out there on its own because it can't do everything that's required of the invention.

3:01 And then we're doing what's actually described in the specification. Now, with respect to the

3:06 combination of SMILE and PAW, there was no argument below that SMILE and PAW would be

3:12 combined, specifically the conventional pipelining and PAW. PAW's conventional pipelining was this

3:17 very thing that the patent said it was overcoming. It's this dynamic interaction. And in that

3:23 interaction, there is no control information file because the segments are created in real time.

3:29 And there are no alternatives.

3:31 For a given segment. Because if you're customizing your division of media, you don't need to have an

3:37 alternative. You're basically making a custom tailored item. As opposed to what the invention

3:42 is, which is basically an off-the-rack solution saying, do you want a small, do you want a medium,

3:46 do you want a large? Now, what the board said, sort of in one or two sentences in the ground

3:53 that it created, was that you would use the pipelining and PAW. But if you're using that

3:58 pipeline, the question is, how are you combining it?

4:01 That version of pipelining in the prior art didn't use control information files and didn't use

4:05 alternatives and used explicitly what the patent was intending to overcome. And Google seems to

4:10 admit as much in its arguments on appeal concerning the deficiencies that the board,

4:18 specifically in the red brief at 39, said there's no need to demonstrate the obviousness of any such

4:24 combination. And also on the same page, that there was no need, therefore, to show how PAW's specific

4:29 approach for dividing media files was.

4:33 In fact, what the board wants to do is just keep this all separate. This can be seen specifically

4:50 in the language the board uses. And I'm looking at the appendix at 23. In particular, a media

4:57 presentation could have been divided into a sequence of segments and then...

5:01 Judge Prost Sorry, where were you reading on 23?

5:03 On the second, first full paragraph, second sentence?

5:06 Appellant Attorney (Justin J. Oliver) Correct. In particular, a media presentation could have been divided into a sequence of segments

5:12 and then played back in sequence using the seek element smile. There's no dispute that a smile file

5:18 will tell you when and how to play something, but it simply doesn't have a control information file

5:23 or suggest or provide the functionality for control information file that controls downloading or the

5:29 timing of downloading relative to play. So what's the board's solution?

5:34 Further, during playback of one segment of the media presentation, another segment could have been

5:38 downloaded simultaneously using well-known multi-thread software development tools.

5:44 That discussion of multi-thread software development tools is the explanation for how to implement

5:49 the invention and the specification. That site in there, both the site to the patent and the site to

5:56 the declaration, are sites to our own disclosure. Basically, the Bulterman site that...

6:03 that the board relies on, if you go there, it cites back to our patent. So the board repeatedly,

6:10 four times, cites to our patent for this. And then five times, cites to the Bulterman declaration,

6:15 where the cited paragraph refers back to our specification. So what the board seems to be

6:20 saying is this. We have smile, but it can't do the invention and it doesn't have the functionality

6:25 and we're not going to modify it. So we'll just play files using smile. How are we going to get

6:30 to a control information file with the present invention?

6:33 We'll just do what's said in the specification. But there's two problems for that. What's described

6:37 in the specification is a way to implement. They shouldn't be relying on our specification at all

6:41 to inform the prior art. Second, what's described with respect to those multi-threading techniques

6:48 are simply that the Java language exists or the Microsoft SDK language exists, and then those

6:55 things can do two functions at once. They can multi-thread. They can do one thing and in parallel

7:00 do something else. The patent doesn't...

7:02 Judge Moore But you're suggesting...

7:03 I'm suggesting the board can't rely on your spec. But what about when you say things like

7:09 at column three, line 62 of the spec, combining multiple sequenced inputs is well understood

7:16 in the industry?

7:17 Appellant Attorney (Justin J. Oliver) I'm sorry, what specific line? Column three?

7:21 Judge Moore Line 62. When you say something is well understood in the industry, can't the board rely on something

7:29 like that in your spec?

7:32 Appellant Attorney (Justin J. Oliver) We have to understand what that's describing.

7:34 Java says you can do multiple sequences at once. Just because there is a computer language

7:40 that says you can do two things at once does not suggest what the two things you're going

7:45 to do at once are.

7:46 Judge Moore No, that's not right. What it says here is combining multiple sequence inputs is well

7:51 understood in the industry. For example, and then it goes into the Java example. So the

7:57 preceding sentence is obviously much broader in nature than just the Java example.

8:03 Appellant Attorney (Justin J. Oliver) I'm sorry, you're suggesting that...

8:04 That the sequenced elements are pipelining?

8:09 Judge Moore I mean, couldn't the board have, I mean, I...

8:13 Judge Prost Well, I think the response was to your suggestion that the board couldn't cite anything in the

8:18 spec and use it. And I think this is an example of something that was fair game for the board

8:25 to use when you're discussing what exists in the art.

8:28 Appellant Attorney (Justin J. Oliver) And what we're, what the specification I'm, I believe saying, and even with requests to

8:33 sequenced elements, it's not saying...

8:35 What things are being sequenced. Java existed and can do sequences in a row. It could do

8:40 multiple things at the same time. But just because a programming language exists that

8:45 can do sequences in a row doesn't mean it specifically teaches a control information

8:49 file that does the specific sequences and the specific things that we recite, that we

8:54 recite in the claimant invention. And I want to make sure that's clear. Basically, we need

9:00 to provide in our specification some indication of how this can be implemented. There has

9:04 to be enablement.

9:05 And all this is explained.

9:06 So what we're planning is that the Java language allows you to do different sequences. It allows

9:10 you to put things together in a certain way. But just because the Java language exists

9:14 to do so does not suggest a control information file that does the specific things recited

9:20 concerning segments, concerning alternatives, and concerning the relative timing of...

9:25 Judge Moore Let's look at claim one. And why don't you tell me what the specific sequencing things

9:29 are that you're referring to that wouldn't be captured by your general statement that

9:34 combining multiple sequencing inputs as well as...

9:36 Appellant Attorney (Justin J. Oliver) Well, what it says there is that there is a control information file.

9:40 Judge Moore Claim one. Tell me what you want me to look at in claim one.

9:44 Appellant Attorney (Justin J. Oliver) Sure. The third element, the client device parsing the control information file and based

9:51 on parsing the control information...

9:52 Judge Moore How is it the third element? Isn't that the second element?

9:54 Appellant Attorney (Justin J. Oliver) I wasn't counting the preamble. I'm sorry.

9:56 Judge Moore You weren't counting what?

9:57 Appellant Attorney (Justin J. Oliver) The preamble. So downloading and then after that...

10:00 Judge Moore You weren't counting the preamble?

10:01 Appellant Attorney (Justin J. Oliver) Ah. So it's a preamble and then two elements.

10:04 So there's a third element.

10:06 Judge Moore There's a second element, not the third.

10:08 The client device parsing.

10:10 Appellant Attorney (Justin J. Oliver) The client device parsing the control information file and based on the parsing the control

10:14 information file doing a number of things.

10:18 Identifying multiple alternative files.

10:21 There's nothing with respect to our discussion in Java of identifying multiple alternative

10:26 files or saying that Java teaches to download one at a specific time relative to downloading

10:32 another and to play one at a specific time.

10:38 That's what's recited in the rest of this and what you do is parse the control information...

10:42 Judge Prost I'm sorry. In the rest of this what? In the other limitations, three, four, and five?

10:46 Appellant Attorney (Justin J. Oliver) Correct. Determining which of the multiple alternatives files to retrieve.

10:49 Yes.

10:50 Based on system restraints, retrieving the determined file of the multiple ones, begin

10:55 a media presentation, and then going on with concurrent, the second to the last element,

11:00 concurrent with the media presentation, retrieving a next file.

11:03 Judge Prost Yeah, that...

11:04 Appellant Attorney (Justin J. Oliver) But just because you can retrieve multiple things at the same time doesn't mean that

11:10 Java teaches or suggests that you are doing the specific retrieving of this media segment,

11:16 which is a division or alternative of something else, and downloading relative to play.

11:21 It's just saying that the Java language can be used to implement that.

11:26 But Java itself doesn't describe all of these features.

11:30 Java is just one programming language that can be used to program these elements.

11:35 I'm not sure if I'm making myself clear, if there's another question in that regard,

11:39 but I want to make sure we're clear on that.

11:42 Because what the board's saying is, or seems to be saying, is that you have Smile over here

11:46 and you're not going to modify Smile, and instead you're going to use Java.

11:50 If that's the case, where does the control information file exist?

11:53 Is it in the Smile language? Is it in Java?

11:57 What the claim requires is the specific use of a control information file.

12:01 And the board's not modifying Smile.

12:04 And it's using...

12:05 This is a discussion of Java for our specification.

12:07 Where do we actually get the claimed control information file?

12:13 As stated in KSR, the simultaneous download...

12:23 Excuse me.

12:27 A patent is not proved obvious merely by demonstrating that each element was independently known in the prior art.

12:33 What the board seems to be saying here is Smile existed and had some of it,

12:38 and our patent discusses Java, and that could do other things.

12:42 And therefore, since these two things...

12:44 Exist in the prior art, Java existed and Smile existed, let's just call it close enough.

12:49 But what you actually have to get to is a reason to modify or combine to get to the claimed control information file.

12:55 And if Smile's not being modified, what is?

12:59 Where does that control information file exist?

13:02 It's not clear either from the petition or from the board's final written decision where that exists.

13:09 And absent a showing on that, and absent some reasoning in that regard,

13:14 there simply isn't...

13:15 There isn't a proper basis for obviousness.

13:18 Judge Prost You're into your rebuttal.

13:19 Appellant Attorney (Justin J. Oliver) I'll say the rebuttal.

13:20 Thank you.

13:21 Thank you.

13:30 Appellee Attorney (David M. Krinsky) Your Honor, may it please the court.

13:32 I think I'd like to begin, unless the court would like to direct me somewhere else,

13:36 by trying to clarify here just what the board found,

13:39 and this is a substantial evidence review case, of course,

13:43 and what the board found was taught in the Smile reference itself versus what needed to be supplied.

13:49 This whole discussion of controlled information files,

13:53 the board found expressly to have been taught in the Smile reference.

13:57 That's at Appendix 15 and 16.

14:00 You know, we ticked through how the board had made findings on steps one through five,

14:07 method steps one through five, in the Smile reference itself in our red brief.

14:11 I had understood the dispute here to be about where there would be a teaching of step six,

14:19 concurrent with the media presentation retrieving a next file.

14:22 Right.

14:23 Right.

14:23 There was one and only step in this claim that the board found not to have been taught in Smile,

14:28 the reference itself, and therefore look to other teachings in the art.

14:32 The way it looked to other teachings in the art wasn't perfectly appropriate.

14:35 It found, based on both the testimony of Dr. Baltherman and the Hwa reference,

14:41 that there would have been a motivation.

14:43 The concept here is very simple.

14:45 It's simply while you're starting to play one portion of a media presentation,

14:50 downloading the next present section.

14:53 That, concurrent with the media presentation retrieving the next file,

14:56 Hwa taught was conventional, and Hwa taught a motivation.

15:00 Judge Moore Are you now attempting to defend the board's decision to,

15:06 and I'll make it really clear to Telegraph, this is a hostile question,

15:10 go off the rails and exercise its own discretion to come up with a combination that's not in the petition?

15:17 Is that what you're defending now?

15:18 Appellee Attorney (David M. Krinsky) I would say that that was perfectly.

15:23 Appropriate to do, but that is not the thrust of my question.

15:25 Judge Moore Let me just be clear.

15:26 So on page 485, which is the institution decision,

15:30 when the board says we exercise our discretion and institute an IPR on an additional ground,

15:36 that would be the combination of Smile and Hwa, correct?

15:39 Appellee Attorney (David M. Krinsky) That is the combination of Smile and Hwa.

15:41 Judge Moore So that is not a combination that is one of the two that you argued for in the petition?

15:47 Appellee Attorney (David M. Krinsky) Well, I would argue, Your Honor, that it is in fact the same arguments and the same evidence.

15:51 Judge Moore Except it's not.

15:52 Because you didn't.

15:53 You have petition number one, anticipation in light of Smile.

15:56 Number two, obvious in light of Smile.

15:59 And the board itself actually found this was an additional ground, didn't it?

16:03 Appellee Attorney (David M. Krinsky) The board was clarifying what it understood the petition to have argued.

16:07 Judge Moore Because I see here, nonetheless, for clarity, we exercise our discretion and institute an IPR on the additional ground.

16:17 You don't think that I should interpret that as the board deciding it was going to add its own ground,

16:23 to the petition?

16:24 Appellee Attorney (David M. Krinsky) If Your Honor does.

16:26 Judge Moore And I do.

16:27 Appellee Attorney (David M. Krinsky) Okay.

16:27 Judge Moore And I think it's really unreasonable for you to argue otherwise.

16:31 Appellee Attorney (David M. Krinsky) Okay.

16:31 And I'm not arguing that that is not denominated as a separate ground.

16:35 The decision of the board on the first ground, though, was based on the same arguments and evidence,

16:40 and it's supported by substantial evidence.

16:41 Judge Moore So are you defending the idea that the board has the discretion to institute an IPR on a ground of its own choosing?

16:52 Appellee Attorney (David M. Krinsky) I don't think so.

16:53 I am defending the notion that...

16:55 Judge Moore It's a yes or no question.

16:56 Are you arguing to me that the board has the discretion to institute an IPR on the ground of its own choosing?

17:06 Appellee Attorney (David M. Krinsky) In this case, on these facts, yes.

17:08 But if Your Honor disagrees, I'd like to address how HWAA relates to the first ground.

17:11 Judge Moore Okay.

17:12 But you think yes.

17:13 So you think SAS doesn't prevent you, doesn't prevent the director from exercising his discretion to come up with his own ground,

17:23 and the institution's decision?

17:24 Appellee Attorney (David M. Krinsky) I do think SAS goes to a different question, which is partial institutions.

17:28 Judge Moore But I'm not asking you whether SAS goes to a different question.

17:32 I'm asking you whether SAS prevents it.

17:35 Do you think the 17, and yes, there are 17, because I counted them, statements in SAS,

17:40 which indicate that the director does not have exactly this sort of discretion,

17:44 you think I should construe all of those as dicta,

17:46 and that we, the Federal Circuit, are so well positioned vis-a-vis the Supreme Court that I should disregard all of them?

17:53 Appellee Attorney (David M. Krinsky) I'm not asking you to disregard anything in SAS, Your Honor.

17:55 And if I may, let me explain why the decision below should be affirmed,

17:59 even if Your Honor thinks that second ground is entirely ultra-verse.

18:01 Judge Moore Well, it's not whether I do.

18:02 I want to understand what you're arguing about it,

18:05 because I understood your brief to largely dodge it for, I think, the obvious reason

18:11 that it was a pretty messed up thing for the director to do after SAS.

18:18 But I do have a sense that your brief attempted to nonetheless defend it.

18:23 Appellee Attorney (David M. Krinsky) Our brief did defend it, because here, what the board was doing was simply clarifying for Philip's own benefit

18:28 that it wanted to hear about why.

18:29 But let me address the first ground, because I do think that the facts here...

18:36 Judge Prost Just so I'll be clear, when you say first ground, there were two alternatives.

18:39 Sorry, the first obviousness ground.

18:40 The one that you put forward, which was obviousness, single prior art,

18:46 but in light of general knowledge, which included in your reference to why.

18:51 Appellee Attorney (David M. Krinsky) Correct. That's the ground to which I'm referring.

18:53 Okay.

18:54 And this...

18:55 Judge Prost By the way, just to follow up on what Judge Moore was saying,

18:58 you know, it's never been clear to me exactly when the board decides to intervene

19:02 and when it doesn't intervene.

19:04 But if this case should stand for the principle that the board thinks that it has discretion

19:12 to add a new ground in the petition, did the board ever think about, you know?

19:17 Appellee Attorney (David M. Krinsky) I don't know. I'm aware of no effort by the board to intervene or to defend that.

19:22 But I would submit here...

19:23 I would submit here that it doesn't affect this court's disposition of the case

19:27 for the simple reason that here the board found obviousness on the ground

19:33 that I think everyone would agree is an appropriate ground, which is qua...

19:37 Excuse me, which is smile in light of the general knowledge of the posa.

19:41 The board at that very same passage that Judge Moore pointed to at Appendix 485

19:46 cited two cases for the proposition that it is perfectly appropriate

19:50 to consider the general knowledge as reflected in other...

19:53 in other teachings of the art, the Randall case and the Ariosa case.

19:56 And they both stand for the proposition that the board not only may but must

19:59 consider references like qua that are not denominated as being part of a ground

20:03 but are cited in the petition, are backed by evidence and argument in the petition

20:08 and explain why a limitation of the claim, here the concurrent downloading

20:14 and playback limitation, would have been met in the art.

20:17 That finding on that ground that is not the ground that is...

20:23 subject to Judge Moore's question is a finding that's supported by substantial evidence

20:27 and demonstrates the obviousness of this claim.

20:29 Judge Moore Well, so I guess my concern is I agree that there has to exist

20:35 the ability to have single reference obviousness.

20:38 Of course there has to exist it.

20:40 So single reference obviousness necessarily means something is missing from the claim.

20:45 Yeah.

20:45 And that you have to look somewhere else to get it.

20:47 So of course the place you should look is general knowledge.

20:51 Would everyone know?

20:52 This is just...

20:53 This is just an extension of what we've already been doing.

20:56 But what this case feels more like to me is to reference obviousness,

21:00 which I've made clear to you I think inappropriate because you didn't ask for it in the petition.

21:04 But that's what I feel like it is.

21:06 And I feel like somehow you're trying to avoid having to prove, A,

21:10 motivation to combine qua and smile.

21:13 Because what you're doing is you're looking to qua for the missing element.

21:17 But you're saying, but we're not really looking to qua for the missing element.

21:21 We're just saying qua is an example.

21:23 Of the fact that that missing element is a thing people generally skilled in the art would know about.

21:30 And so I feel like you're backdooring.

21:32 You're trying to get around having to prove a real obviousness case based on two references

21:38 by saying we're really going to look to the one reference to fill in really the general knowledge of a skilled artist.

21:44 And we're not really using that reference.

21:47 Appellee Attorney (David M. Krinsky) Your Honor, I would disagree with the characterization because I think what we're getting at here is that you don't...

21:53 You don't need to just look at qua.

21:54 You could look to any number of references.

21:56 The notion of downloading the next segment of a file while you're playing with a file...

22:00 Judge Moore But the PTO didn't say that, did it?

22:02 The PTO hold that any number of references disclose this, and that's why it's part of the general knowledge.

22:08 Appellee Attorney (David M. Krinsky) It found that this was part of the general knowledge, and qua itself stated that it was part of the general knowledge.

22:13 This wasn't a new invention of qua.

22:14 Judge Moore Actually, qua didn't say general knowledge.

22:16 Don't mistake things.

22:17 Be precise.

22:18 Qua said conventional.

22:20 But don't mistake things.

22:21 Know your references.

22:23 Appellee Attorney (David M. Krinsky) A point.

22:23 Apologies, Your Honor.

22:24 It stated that it was part of...

22:26 It was certainly characterized as a conventional technique in qua.

22:29 And qua said qua provided a motivation, which we cited and the board cited.

22:34 Judge Moore Why didn't you...

22:35 You were counsel below.

22:36 Why didn't you, in your petition, argue smile and qua?

22:41 Appellee Attorney (David M. Krinsky) I think...

22:43 I don't know that I have an answer to why I didn't other than to say, number one, we think it's anticipated for the reasons we articulated.

22:50 We obviously did not prevail on that ground.

22:53 But secondly, because under the Ariosa case and under the Randall case, I don't think it matters.

22:59 The question is, did we prove in our petition that the person of ordinary skill in the art reading smile, implementing a smile player using the knowledge that the prosa would bring to bear, would that prosa be motivated to...

23:14 Judge Prost Well, you weren't trying to combine anything that the invention or whatever, I mean, was, is this article.

23:20 But you weren't trying to use the...

23:23 You were trying to use the other stuff in qua.

23:24 Correct, Your Honor.

23:25 So that would have been more of a combination if you were trying to use the other...

23:30 I mean, qua articles about all this new stuff they've come up with.

23:33 That's exactly right.

23:34 And their reference to the other stuff is just in terms of what the background.

23:38 In fact, they criticize the inadequacy of conventional pipelining, which was kind of one of their points, right?

23:44 Appellee Attorney (David M. Krinsky) Well, the qua develops this...

23:48 Judge Moore Couldn't that possibly have been exactly the reason you didn't want to make the two-reference obviousness?

23:52 Yes.

23:52 Because if you do, you've got a proven motivation to combine, and a qua actually criticizes the very thing you want to extract out of it and say would have been used in this case.

24:02 Appellee Attorney (David M. Krinsky) No, Your Honor, because qua makes clear that if you do this two-phase service model, that is what the bulk of qua is about, you can do fast-forwarding, you can do rewinding.

24:13 There's no requirement in the law that in order for a combination to be obvious, it should be advantageous for all the reasons every reference develops.

24:20 Judge Moore In our Arendi case...

24:22 It says that 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 a missing limitation, which is what we have here.

24:39 And so when you're trying to fill in a missing limitation, I find it troubling that you would look to a reference which, in fact, discourages pipelining to say they would use pipelining.

24:51 Appellee Attorney (David M. Krinsky) If I may, Your Honor, let me address...

24:53 Let me address the Arendi point and then the discouragement point.

24:54 On the Arendi point, Arendi is about the situation where an expert's say-so is unsubstantiated.

25:01 That's what Arendi discusses.

25:02 Here it is substantiated.

25:04 It's substantiated by qua.

25:05 Judge Moore No, but again, this is one of these things.

25:06 You want to limit SAS to only a single sentence related to its express holding and not look at the 17 other sentences where the Supreme Court says the director has no discretion.

25:16 Likewise, you want to look at Arendi and say it's limited to this.

25:19 Arendi actually very methodically goes through.

25:23 Four separate things that you need to think about if you're going to go to the common knowledge, one of which is how significant the limitation is, all these different things.

25:33 Appellee Attorney (David M. Krinsky) I would differentiate, Your Honor, between common sense, as in Arendi, and the general knowledge that the posa would have that is substantiated by prior art here, qua, which says this is part of the conventional knowledge.

25:46 There's no issue of whether the prior art, in fact, teaches that downloading in parallel with playback.

25:53 Judge Moore It says it's part of the conventional art, but it also says, but you shouldn't use it, and it goes through reasons to discourage my work.

26:00 Appellee Attorney (David M. Krinsky) Let me address that point.

26:02 On that point, the fact that prior art may be undesirable for certain purposes taught in your reference is not a reason why it doesn't, that doesn't simply make it a teach-away when those other reasons are found nowhere in the claim and have nothing to do with the claim.

26:19 That's the Scorsese-Demizu case, 870, 5th, 3rd.

26:23 1376, the qua reference provides advantages of using two-phase service, the two-phase service model, which, by the way, one absolutely could do in a smile player.

26:34 We just don't think you're obligated to do it in a smile player.

26:36 And the point there is that the claims say nothing about the ability to fast-forward or rewind, which is the advantage that qua's more complicated technique provides.

26:47 All the claims require is a player, which the board found is taught expressly.

26:52 And in smile, that when it is playing one segment, downloads the next segment concurrently.

27:00 It's a very simple concept that Dr. Bolterman testified, and qua states were within the conventional knowledge of someone of the art.

27:07 The question is how you implement a smile player.

27:09 The obvious way to implement a smile player to avoid long wait time or highly jittering pictures, to quote from qua, is to implement this conventional pipelining, this simple step six.

27:22 And, you know, we concede that that step six is not taught expressly in smile, but we think it's an appropriate single-reference obviousness case because the obvious way to implement a smile player by a person of ordinary skill in the art informed by the general knowledge that this is just the way things are typically done and an advantageous way to do it would be to use that.

27:43 But the person of ordinary skill in the art doesn't need to go the next step, to Judge Prost's point, and use the two-phase service model.

27:51 Nor does the person of ordinary skill in the art.

27:52 The person of ordinary skill in the art need to use qua's particular equations for optimizing how you divide up and perhaps dynamically, perhaps statically, but, you know, optimally divide up the segments.

28:03 All that the claims require, and therefore all that we need to establish was obvious, is that the person of, when a smile player is playing, it would have been obvious to download the next segment while you're playing the first.

28:15 And that not only was part of the general knowledge, it's something that our expert Dr. Bolterman testified was something that was in fact out there in existing.

28:22 And that not only was part of the general knowledge, it's something that our expert Dr. Bolterman testified was something that was in fact out there in existing.

28:24 And that's an appendix 1418 and an appendix 1317 to 1318.

28:28 So the board's finding that the person of ordinary skill in the art would have been motivated to do that sort of playback concurrently with retrieving a file.

28:39 The finding of motivation.

28:41 Judge Moore What is the basis?

28:42 Why would you be motivated to make that change?

28:45 Appellee Attorney (David M. Krinsky) You'd be motivated to make that change to, and I resist the notion that it's a change.

28:50 One would be motivated to do that in a smile player.

28:52 So that to minimize wait times for the exact reasons that while taught conventionally, pipelining was used to, to, to avoid having, making users tolerate either a long wait time or highly jittering pictures.

29:03 That's at, at appendix 315 and Dr. Bolterman talked about it in appendix 199.

29:08 So we have here an expert witness pointing to a concrete prior art reference, explaining why the person of ordinary skill in the art would have been motivated to supply a missing feature.

29:18 And then explaining that there would have been.

29:22 A reasonable expectation of success in doing so there's a finding there too.

29:26 Both of those findings are supported by substantial evidence.

29:28 And I would submit to you that the situation is nothing like a Rendy where there was no such other reference.

29:33 And the question was lack of substantiation here that's substantiated by Juan.

29:39 That's appropriate under Randall and Ariosa.

29:41 Judge Prost Thank you.

29:50 Appellant Attorney (Justin J. Oliver) Thank you, your honor.

29:51 I'd like to touch on a few points.

29:53 I think the issue here is that Google wants to have its cake and eat it too.

29:58 They want to rely on.

29:59 But not have to explain how to combine.

30:02 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.

30:10 We're talking about the second part of law.

30:13 The conventional pipelining in law is that complicated formula.

30:17 My colleague tried to distinguish the two and say oh you're not going to use the complicated formula but if you look in law at the description of conventional pipe pipelining.

30:26 It is that complicated formula.

30:29 And it.

30:29 Is this dynamic operation.

30:31 Judge Prost So is your view more that there was no motivation to combine the two or that the implementation was difficult if not possible because that's what I heard you saying last time you were here.

30:42 Appellant Attorney (Justin J. Oliver) My position or our position is this.

30:44 There is no explanation of how those two would be combined and they're incompatible for certain ways.

30:49 First thing with the idea why describes let's talk about pipelining you keep talking about sure what the takeaway from law in terms of general knowledge.

30:59 Was simply what people call conventional pipeline the conventional pipelining is described there was that dynamic interaction they are taking information on the fly for 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 or custom communication between a server and a player where the two are talking back and forth and say what's your playback rate what's your download rate and then dividing and segmenting on the fly based on that.

31:29 Now that's conventional pipeline and that's what's described under the heading conventional pipeline 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 segmentation based on this.

31:48 Why would you ever have a control information file a control information file tells you in advance what your segments are and what your alternatives are as was testified by Dr.

31:57 Porter in in laws conventional pipeline.

31:59 There are no control information files because you don't know in advance what those segments are going to be and 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 a control information file 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.

32:29 Well.

32:29 Well there are other things out there that teach pipeline okay where are they in the record the only reference in the record with respect to what conventional pipelining is is that complicated operation and what 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 for conventional pipelining is the thing that they don't want to combine and admit in their briefing that they're not going to combine specifically stating.

33:03 There was no need that therefore to show how was specific approach for dividing media files into segments would be implemented smart we're basically saying we're not going to use the complicated definition of conventional pipelining and while we're going to use something else but we're not going to provide any other reference on.

33:18 So it's basically trying to say we gave you a reference but we're not using it and we're not combining but we gave you a reference so a Randy says it's okay but if there isn't a way to combine there then there's simply a failure to provide a basis for obvious.

33:33 And you can't do it and run around thank you thank.