`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SECURUS TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`____________
`
`Case PGR2016-00044
`Patent 9,225,838 B2
`____________
`
`
`
`Record of Oral Hearing
`Held: November 2, 2017
`____________
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`
`
`Before MICHAEL W. KIM, THOMAS L. GIANNETTI, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
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`NICHOLAS KLIEWER, ESQ.
`JEFFREY R. BRAGALONE, ESQ.
`DANIEL OLEJKO, ESQ.
`Bragalone Conroy, P.C.
`2200 Ross Avenue, Suite 4500 W
`Dallas, TX 75201
`214.785.6671
`jbragalone@bcpc-law.com
`
`Case PGR2016-00044
`Patent 9,225,838 B2
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`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF THE PATENT OWNER:
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`MICHAEL D. SPECHT, ESQ.
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`RICHARD BEMBEN, ESQ.
`
`Sterne Kessler Goldstein Fox
`
`1100 New York Avenue, NW
`
`Washington, D.C. 20005
`
`202.371.2600
`
`mspecht@skgf.com
`
`
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`The above-entitled matter came on for hearing Tuesday, November
`2, 2017, commencing at 10:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`P R O C E E D I N G S
`JUDGE KIM: This is the final hearing for PGR2016-00044. My
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`name is Michael Kim. To my right I have Judge Tom Giannetti, and on
`the screen we have Judge Matthew Meyers. So, can I please start with
`the appearances, starting with Petitioner, please?
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`MR. KLIEWER: Good morning, Your Honor. Nick Kliewer for
`Securus. Arguing our case is Jeff Bragalone and Daniel Olejko.
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`JUDGE KIM: Welcome. Patent Owner.
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`MR. SPECHT: Good morning, Your Honor. Mike Specht for
`Patent Owner. Lead counsel with me is Richard Bemben, one of the
`backup counsels.
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`JUDGE KIM: So for a few housekeeping things, I believe there's
`45 minutes for each side, is that correct, or was it --
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`MR. BRAGALONE: I believe the order said an hour.
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`JUDGE KIM: My apologies. And I don't think there's any
`previous motions, so the Petitioner will go first, and you can reserve time
`for rebuttal. The Patent Owner will then go next. And Petitioner will
`have the last responses; is that correct?
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`MR. BRAGALONE: Yes.
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`JUDGE KIM: Then it shouldn't be a problem today, but as far as
`in and out goes, if we could just reserve that for times between speakers,
`to minimize confusion.
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`So with that, I think we can begin.
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`MR. BRAGALONE: Your Honor, on behalf of Petitioner, we'd
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`like to reserve some of our time for rebuttal.
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`JUDGE KIM: Sure. How much?
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`MR. BRAGALONE: Out of the hour, we'd like to reserve 25
`minutes.
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`JUDGE KIM: Okay. You may approach and begin.
`
`MR. BRAGALONE: Good morning. May it please the Board, the
`claims of the '838 Patent cover systems that, following detection of a
`hook-flash signal on a telephone line, they detect call progress tones that
`meet certain requirements. Patent Owner's expert, Dr. Forys, admits as
`much. The petition demonstrates that at the time of the alleged invention,
`nearly four years ago, in August of 2013, there were many known
`techniques for detecting an attempt to make a three-way call, including
`via detection of hook flash events followed by call progress tones. GTL
`disregards the fact that seven years before the date of the invention --
`(Interruption in the proceedings.)
`
`The petition demonstrates at the time of the invention, just four
`years ago, there were many known techniques for detecting an attempted
`three-way call, including via use of call progress tones. GTL disregards
`the fact that seven years before the date that a GTL employee claimed to
`have invented the claims of the '838 Patent, that McNitt, a reference,
`specifically encouraged persons of skill in the art to combine Kitchin
`with other tone based three-way call detectors. Taking that very
`combination suggested by McNitt, and drafting it into patent claims
`seven years later, cannot and does not create a valid invention.
`
`Turning to slide two, the Board correctly instituted this PGR based
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`on finding of a reasonable likelihood that all claims of the '838 Patent,
`obvious over the prior art references of Kitchin, and the institution
`decision was limited to Kitchin in view of Li and Gupta.
`
`Now, a brief overview of the '838 Patent. It claims the application
`of well-known techniques for detecting hook-flash signals and call
`progress tones. And the intended purpose is to detect possible three-way
`calls during a telephone call.
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`Slide six, I've highlighted the determining step and the calculating
`and elapsed time step because those are the ones on which there is
`actually a dispute among the parties as to whether the art discloses those.
`I'm going to focus my argument today on those.
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`Slide seven summarizes our understanding of some of the Patent
`Owner's arguments that I would characterize as interpretations of the
`claim. While they do not present these explicitly as claim construction
`arguments, they call for a narrower interpretation of the claim in several
`respects. First of all, they claim that the determining step must occur in
`response to confirmation of the detection of a hook-flash signal. On the
`determining step, as well, they say that it must determine that an attempt
`to make a three-way call has occurred based on a detected call progress
`tone.
`I also am going to discuss three of the calculating steps, but let me
`
`turn, first of all, to the determining step because the Board asked for
`supplemental briefing on the possible claim construction of this
`determining step. And the step is determining in response to detecting
`the hook-flash signal whether a call progress tone is present in the audio
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`stream that is indicative of the attempted three-way call. So I want to be
`clear. The petitioner has asserted and continues to assert that this does
`not require a special construction and that it should be construed, given
`its plain and ordinary meaning. But in response to the request of the
`Board, we attempted to set out what our understanding was of that plain
`and ordinary meaning. In fairness, I think we did that and we indicated
`that it's in response to detecting a hook-flash signal in the audio stream,
`determining whether the audio stream includes a call progress tone of the
`type that is indicative of an attempted three-way call. Patent Owner, I
`believe, did not actually meet fairly the request of the Board because they
`just simply regurgitated the claim here with a few changes in wording.
`
`But turning to slide nine, it's important that Patent Owner actually
`does include some interpretations in both Dr. Forys' declaration and in
`their Patent Owner response that indicated that they believed that there
`are other restrictions to the determining step. First of all, they assert that
`it performs a determination and response to confirming the detection of a
`hook-flash signal. Dr. Forys says that has to happen first before you
`proceed to the determining step. And, second, it determines that an
`attempt to make a three-way call has occurred based on detected call
`progress tones. We don't believe that either of those is appropriate.
`
`Turning to slide 10, so the claims actually set up a system for
`detecting that there is a hook-flash signal. In particular, it notes, at
`column 12, lines 19 through 25 -- I'm at the end of slide 10 here -- that a
`preferred embodiment institutes the determining step if the audio exceeds
`a predetermined threshold, which may or may not occur due to a hook-
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`flash signal. So it, in fact, once it determines that there's an energy pulse
`that exceeds that predetermined level -- and the example in the patent is
`given in decibels -- then it determines that that's a hook-flash signal.
`
`JUDGE KIM: Counsel, I understand what you're saying, to an
`extent, but the claim does say hook-flash signal. It doesn't say, for
`example, power or energy exceeding a certain threshold.
`
`MR. BRAGALONE: Absolutely. And what it also doesn't say is
`confirming that a hook-flash signal has actually occurred. Instead, what
`the patent discloses, which is exactly what Kitchin discloses, is that we
`identify certain criteria. And once we find that those criteria are met by a
`pulse in the energy stream, then we designate that as a hook-flash signal.
`So we're not disputing that it detects a hook-flash signal. What we are
`saying is merely that there's no confirmation requirement. There's no
`requirement of any type of confirmation that there's actually been a
`hook-flash signal in the claims.
`
`JUDGE KIM: I guess one interpretation I have of the argument is
`that -- and maybe it's more relevant to the call progress tone -- that any
`disclosure in Kitchin of detecting a call progress tone or an energy level
`spike -- I know inherently is not the right word -- but inherently meets
`those claim limitations, even though it's not -- for example, even if -- let's
`say Kitchin discloses an energy signal above a certain threshold, but
`there's nothing in Kitchin that expressly ties it to a hook-flash signal, is
`the claim limitation then met?
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`MR. BRAGALONE: We believe so, yes, because it's disclosed
`detecting a hook-flash signal. What it terms is a hook-flash signal. And
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`recognize that both of these systems are detecting signals based upon
`monitoring a call from a remote party. So no one's actually there at the
`remote party to see whether the user is actually depressing the hook flash,
`to add a third party call. Rather, they're analyzing the audio stream to
`determine if the tones indicate that a hook flash has occurred.
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`And I agree with Your Honor, Judge Kim, that I think that's most
`important when you look to the step of determining whether the call
`progress tones are indicative of an attempted three-way call. There
`you're not confirming that there's actually been a three-way call; rather,
`you're determining that the audio stream has call progress tones that meet
`the two sub criteria that are outlined in the claims.
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`JUDGE KIM: Doesn't that make the attempted three-way call
`superfluous in the claim?
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`MR. BRAGALONE: No, certainly not. The claim references the
`fact that it's designed to detect not only whether there's an attempted
`three-way call but also whether there's masking that's going on, which
`could also be a loud noise over a duration of the period of time. And, so,
`it does not make the detection of -- it's not merely the detection of any
`random noise. It's the detection of certain signals or sounds, energy
`pulses that meet the sub requirements of a predetermined level for an
`extended period of time. And, then, if it meets those sub requirements,
`then we say that's indicative of an attempted three-way call.
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`JUDGE KIM: So just to be clear from your position, you're saying
`that if the prior art meets whatever threshold is in the patent specification,
`even though the prior reference doesn't say, for example, call progress
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`tone equals attempted three-way call attempt, you're saying that the prior
`art still meets it in that situation?
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`MR. BRAGALONE: So I would disagree with that only slightly.
`And I would say our argument is that Kitchin discloses a framework.
`Kitchin discloses that we're going to identify a hook-flash signal, then in
`response to identifying a hook-flash signal, we're going to listen to the
`call, to the audio stream. And it discloses that it's not just listening for
`silence; it's listening for DTMF tones, it's listening for call progress
`tones. So Kitchin's actually discloses progress tones. And it discloses
`specific progress tones as a separate category of progress tones.
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`JUDGE KIM: Does it actually tie it in Kitchin? Does it actually
`tie it to attempted three-way call? Is there a disclosure that says equals in
`there?
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`MR. BRAGALONE: That's where we tie it to Li and Gupta. And
`we say that the system of Li and Gupta uses those detected call progress
`tones as an indication of an attempted three-way call. Kitchin has the
`framework for detecting that there are these call progress tones. Li and
`Gupta identify those call progress tones within the criteria, the subpart
`limited criteria. And the combination of those, which is actually foretold
`by McNitt, actually meets all the elements of the claims.
`
`JUDGE KIM: I'm glad you got to that because I think this was a
`subject of what I believe Patent Owner was objecting to in their reply,
`was that -- so, what exactly are you relying on Li and Gupta for? Are
`you relying on just, like, literally the words call progress tone, and none
`of the rest of the terming limitation or relying on it for the entire phrase,
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`call progress tone indicative of attempted three-way call attempt?
`Because I think that's two different things.
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`MR. BRAGALONE: So I think the petition is clear that the
`combination -- initially it was the combination that was presented of
`Kitchin with either Gainsboro, Hodge, Li and/or Gupta. And, so, Kitchin
`discloses the framework, as I've said. Kitchin discloses the detection of
`the hook-flash signal. Kitchin also discloses monitoring the call in the
`audio stream.
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`Then we rely on Li and Gupta for meeting the sub elements that
`are the -- while there is a counter in Kitchin, which allows that to be
`easily combined with Li and Gupta, we are saying that Li and Gupta,
`their call progress detection system can substitute, for example, the
`element 450 of the three-way call detection system in Kitchin.
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`JUDGE KIM: Well, I --
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`MR. BRAGALONE: I'm sorry. I meant 650.
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`JUDGE KIM: We're getting ahead.
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`You've labeled them 1D, 1E, 1F, Claim one?
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`MR. BRAGALONE: Yes.
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`JUDGE KIM: I believe their position is -- okay, 1E and 1F, pretty
`clearly, I don't think there's a dispute that Li or Gupta is applied there. I
`guess the argument is, there's controversy as to 1D because 1D, in the
`petition, all it lists is Kitchin, and then the question then becomes -- I
`know you disagree with that, but then that's what I'm trying to get at is,
`are we relying on Kitchin for Li and Gupta for just the words call
`progress tone and not indicative of three-way call, or both?
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`MR. BRAGALONE: If I can turn to slide 40 in my presentation?
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`We argue that Kitchin teaches the determining limitation of claims
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`one, eight and 15. Kitchin discloses a window analyzation means to
`monitor the audio stream following the detection of a hook-flash signal.
`So Kitchin does monitor the audio stream. Kitchin disclosures that the
`detection of the hook-flash signal triggers the algorithm of Fig. 7 through
`7A. Kitchin discloses that 7 through 7A trigger that algorithm of Figs. 2
`through 2A. Now, Patent Owner's expert Forys admits that a hook-flash
`signal will trigger Kitchin's energy detector that starts the process.
`
`Kitchin further discloses that the algorithm of Figs. 2 through 2A
`utilizes blocks 650 to determine whether the audio signal includes a tone.
`So Kitchin, itself, without reference to Gupta or Li, contains the
`disclosure that you have an algorithm that monitors the audio stream and
`detects the call progress tone. Now, this doesn't have to be claimed in
`Kitchin. I want to be clear about that because I think that's where a
`Patent Owner errors, because they're relying on only what's claimed in
`Kitchin as opposed to what's disclosed. And for the obviousness
`analysis, we're entitled to rely on what's disclosed in Kitchin.
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`So what's disclosed here is that Block 650 includes a call progress
`tone detector -- and this is in Kitchin -- which provides indicators of ring
`back and other call progress tones. So Block 650 is representative of the
`frequency selected receiver detectors. Such detectors include DTMF,
`dual tone multi-frequency, progress tone, and as I mentioned before,
`special progress tone. So within Kitchin, itself, you have a disclosure
`that includes detectors that will detect call progress tones.
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`JUDGE KIM: So now it seems what you're saying is you're
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`relying on Kitchin alone for step 1D?
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`MR. BRAGALONE: So I think what we are saying, that Kitchin,
`in view of the disclosure of McNitt, which ties the idea that you can have
`a call progress detector that includes both detection of silence as well as
`detection of tones, and that that can be indicative of a third party call
`attempt. So McNitt discloses that you can combine Kitchin with a tone
`detector. An example in McNitt was Gainsboro. But Gainsboro also
`includes a reference to Gupta, for example. But it says any tone detector
`--
`In fact, if I could go to slide 48? So this is a disclosure directly
`
`from McNitt. And the Board, in its institution decision, followed our line
`of reasoning that we can rely on McNitt to show what a person of
`ordinary skill in the art would have understood prior to the time of the
`invention of the patent. And while persons of ordinary skill in the art
`may differ in how they view Kitchin, McNitt certainly discloses the
`combination of the hook flash detection regimen of Kitchin with --
`and I'll page down -- the third highlighted section on slide 48. For
`example, embodiments of the present invention may implement hook
`flash detection, such as shown and described in Patent '702 issued to
`Kitchin. The disclosure of which is incorporated herein by reference.
`Additionally, or alternatively, embodiments of the present invention may
`implement tone detection, such as shown and described in this instance in
`Gainsboro. So tone detection is shown and described in Gupta and Li.
`So we are relying on the fact that Gupta and Li also have tone detection.
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`This not only supports the combination because the motivation to
`combine, this is a clear statement in the prior art that Kitchin, which is
`not limited to just a detector of silence. The actual claims used silence as
`indicative of a three-way call, but it does more than that. Clearly it can
`and does detect call progress tones. But you combine that with a tone
`detector -- with tone detection, such as Gupta and Li, and it meets all the
`elements of the claim.
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`JUDGE KIM: So -- forgive me -- all I'm really trying to do is just
`-- I'm trying to understand Kitchin's position on just step 1D, the one
`you're relying on. And I guess this is sort of the problem that Patent
`Owner identified, was that exactly what are you relying on. So, is it --
`now it seems like it's just Kitchin and McNitt that's being relied on. And
`here's the thing. The problem is, if your position is that it's a combination
`of all four in some form, that's a problem. So that's why I want to nail it
`down, so that everyone can be on the same page about what's going on.
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`MR. BRAGALONE: Understood. Absolutely, Your Honor. So
`we are not relying on McNitt except for the motivation to combine.
`We're not relying on disclosures in McNitt to supply an element of the
`claim. So I want to be clear that this review was not instituted based
`upon McNitt, nor are we relying on McNitt for that purpose. Instead,
`we're relying on it for the same purpose that the Board acknowledged and
`adopted in its institution decision, where McNitt contains the clear
`disclosure of the motivation to combine Kitchin with a tone detector.
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`So I would say the difficulty here is that if you're going to parse
`out element 1D and separate it from the sub elements, which are
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`designated separately, those sub elements are, in fact, what tells the
`system that it's a call progress tone that's indicative of an attempted three-
`way call.
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`JUDGE KIM: That's really all I want to do, is call progress tone
`indicative of three-way calling?
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`MR. BRAGALONE: Right.
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`JUDGE KIM: Are you relying on Li or Gupta or are you relying
`on Kitchin? Again, if we say a little bit of both, that's a problem.
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`MR. BRAGALONE: I understand.
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`We are relying -- for 1D, by itself, we are relying on Kitchin, as I
`disclosed in the slides that I just went through.
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`For the subparts, those subparts are supplied by Gupta and Li, as
`we set forth in the petition.
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`JUDGE KIM: So, that's still a little confusing because call
`progress tone is in both.
`MR. BRAGALONE: So, for example, the element of calculating -
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`-
`JUDGE KIM: I understand that.
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`MR. BRAGALONE: Calculating lets us determine that it's
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`indicative -- a call progress tone that's detected is, in fact, indicative of a
`three-way call.
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`JUDGE KIM: That's the thing. I guess my confusion is, why not
`just say we're relying on Li or Gupta for call progress tone indicative of a
`three-way call? Like what's the harm in that?
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`MR. BRAGALONE: All I would say is Kitchin is a system that
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`discloses fully detection of call progress tones.
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`JUDGE KIM: But then you don't need Li or Gupta. That's what
`I'm saying, is that it's a circle.
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`MR. BRAGALONE: Except that Li and Gupta provide the more
`refined parameters of the subparts. So the subparts require that a call
`progress tone be of a certain kind that meets those sub parameters. And
`maybe I can more easily -- if we can go to slide 24?
`
`So slide 24 is simply the claim itself. So we have the determining
`step, and then after the first determining step we have the colon, which is
`including colon. So for the portion after the colon, that's where we're
`introducing and relying upon Gupta and Li. And I think that is clear in
`our petition, that we are relying on those for that. While Kitchin also has
`a timer and a counter, and it's why Kitchin can be combined with Gupta
`and Li, one of the many reasons.
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`The actual calculation of an elapsed time during which a power
`level of the audio stream exceeds a predetermined threshold during a
`time period following detection of the hook-flash signal and determining
`whether said lapsed time exceeds the maximum allowable period of time,
`we're relying on Gupta and Li for those elements. I hope that --
`
`JUDGE KIM: Not really. Sorry.
`
`JUDGE GIANNETTI: Counsel, just going back to this motivation
`issue that you're making. Do you really think that McNitt is encouraging
`the combination or are they just setting forth alternatives?
`
`MR. BRAGALONE: I believe -- well, I would say that if we go
`back to the slide 48 here in McNitt, they're saying the embodiments of
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`the present invention implement a plurality of different techniques for
`detecting attempted three-way call attempts. And they are saying that
`there's a multitude of techniques. One thing to be important here, Judge
`Giannetti, is that McNitt is saying we don't want to be of one type of
`detector; we want to be a detector where someone who's trying to game
`the system or trick the system has to -- doesn't know what type of
`detection is actually being employed. So in order to have a randomization
`of that and in order to prevent parties from learning, as it says in the third
`sentence here, that in order to prevent parties from learning the
`techniques used for such determinations, that they want to use a variety
`of determinations. So they disclosed this as another possible way to
`detect a three-way call, that is, to combine Kitchin with Gainsboro.
`
`So I think, yes, it is an alternative, but it's also encouraging that
`combination because it says we can use that combination, and it makes
`our patent better, because our patent is less discoverable. You cannot
`discover the techniques that are being used if there's some randomization
`and we're using a difference of techniques. But, very clearly, they're
`saying that you can get to the same place by using a combination of
`Kitchin with a tone detector, in this case such as Gainsboro.
`
`JUDGE GIANNETTI: So would you say that McNitt encourages
`the use of multiple combinations?
`
`MR. BRAGALONE: It does encourage that, yes.
`
`JUDGE GIANNETTI: Why, specifically, would you select a
`Gainsboro alternative that's set forth here? Is there anything in this
`paragraph that suggests that that would be a better alternative or more
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`efficient alternative, or a least costly alternative? Is there anything in
`here that suggests why you would select that particular one?
`
`MR. BRAGALONE: So I would say that the argument provided
`in McNitt is that it's doing something equivalent but it's a difficult way of
`doing it, so it's harder to detect how it's doing it. So if you were trying to
`trick the system, you would have to know how the system is operating.
`So, for one thing, it makes the system less vulnerable to circumvention.
`So that's one benefit that you get.
`
`JUDGE GIANNETTI: Well, the randomization makes it more
`secure, right?
`
`MR. BRAGALONE: Well, adding -- yes, adding the combination
`of Kitchin with a tone detector provides another means that makes a third
`party call detection system more difficult to circumvent.
`
`JUDGE GIANNETTI: What it's saying, my reading of this, is that
`it's saying, well, randomization is good because you can do it this way or
`that way, and, therefore, someone trying to trick the system wouldn't
`know which one you're using.
`
`MR. BRAGALONE: And that's certainly a benefit, yes.
`
`JUDGE GIANNETTI: I don't see any specific advantage to using
`the Gainsboro over any of the others, other than it's an alternative, and it's
`this randomization that they're really emphasizing here, not a particular
`embodiment.
`
`MR. BRAGALONE: I guess I would say that, in addition to the
`randomization, Dr. Williams identified several other reasons why a
`person of ordinary skill in the art would look to Gainsboro as appropriate
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`to modify the third party call detection system of Kitchin. And in that
`case, he gave several alternatives or reasons why there would be a
`motivation to combine.
`
`In particular, he said that, first of all, it reduces events of
`false/positives. So you have a more reliable system when you're adding
`tone detection and, therefore, you reduce the number of false/positives.
`
`Another benefit that he identifies is you introduce uncertainty with
`how the system operates, which is similar to what's disclosed there. Call
`progress tone detectors with additional conditions, upon the detection of
`a call progress tone, permit more accurate detection of the call progress
`tones. So you increase the accuracy of the system. And by doing that,
`you lead to more predictable results and you avoid false/positives or
`false/negatives. And that's from the petition at 77 and Williams
`declaration at paragraph 314.
`
`JUDGE GIANNETTI: Just so I understand where you are, it's not
`just McNitt, it's McNitt plus your expert testimony; is that right?
`
`MR. BRAGALONE: Yes, our expert definitely provides
`additional reasons for the motivation to combine. I didn't mean to
`suggest that we were relying solely on McNitt. What I did say is that
`we're relying on McNitt for only the motivation to combine aspect. We
`are not relying on McNitt, in contrast, as supplying an element.
`
`JUDGE GIANNETTI: All right. Not just McNitt alone, right?
`
`MR. BRAGALONE: No. That's right, our motivation to combine
`is broader than just McNitt, absolutely. It's set forth in Dr. Williams
`declaration and in the petition at 77.
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`JUDGE GIANNETTI: All right.
`
`MR. BRAGALONE: Thank you for allowing me to clarify that.
`
`JUDGE KIM: Counsel, so I think Patent Owner's argued that the
`
`petition and Dr. William's declaration on that regard and the initial
`declaration, anyway, is conclusory that there was no evidentiary basis
`provided, for example, false/positives. I think we have the preventing
`parties from learning techniques from McNitt and certain other ones.
`
`What's your response to that?
`
`MR. BRAGALONE: Certainly. So they make several arguments
`regarding the motivation to combine, one of which is that it's conclusory.
`But one of the things they say is McNitt fails to support an obviousness
`allegation because it does not mention or side to Li or Gupta. But we
`know from KSR, that's not the standard.
`
`They also argue that the references are different because they are
`from different patents -- this is a quote -- from different patents, from
`different inventors, at different companies that issued at different times
`over about a seven-year period. That's from their response at 30.
`
`But, again, none of those differences are dispositive on the
`question of combinations. We don't throw out combinations because
`they're from different inventors. We don't throw out combinations,
`especially when they're disclosed in the art of record, just because they're
`from different times.
`
`So we actually don't merely limit our statements to what a person
`of ordinary skill in the art could have done. We actually go into detail, as
`Dr. Williams does, and says that the motivations are not mere hindsight.
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`To the contrary, we have several disclosures of what a person of ordinary
`skill in the art, as Dr. Williams alleges, would have done. And the
`motivations appear in numerous contemporary references, including
`McNitt, as well as the parent of the '838 Patent, which is the '726 Patent.
`And that's from the reply declaration at paragraph 44 and 94.
`
`JUDGE KIM: So why is it proper to put that in the reply
`declaration and not in the petition declaration?
`
`MR. BRAGALONE: Well, we set forth the motivations in the
`petition; for example, paragraph 314 of Dr. Williams's declaration does
`detail motivations to combine. It's in the petition as 77, as well.
`
`JUDGE KIM: Isn't the argument that it's one paragraph that
`parrots the petition and it doesn't provide any explanation?
`
`MR. BRAGALONE: Well, we respond to that and we say, no,
`that's not the case.
`
`JUDGE KIM: That's what I'm asking you, why is that? Could it
`be argued you're sandbagging that you put forth a very cursory argument
`in the petition, Patent Owner didn't know what to shoot at, and then the
`rely, you expanded it out to these eight paragraphs? And I'm not saying
`that's right or wrong. I'm just asking you, what's your resp
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