  United States Court of Appeals
      for the Federal Circuit
                ______________________

 INTOUCH TECHNOLOGIES, INC., doing business
            as InTouch Health,
             Plaintiff-Appellant,

                           v.

          VGO COMMUNICATIONS, INC.,
                Defendant-Appellee.
              ______________________

                      2013-1201
                ______________________

   Appeal from the United States District Court for the
Central District of California in No. 11-CV-9185, Judge
Percy Anderson.
                 ______________________

                 Decided: May 9, 2014
                ______________________

    DONALD R. WARE, Foley Hoag LLP, of Boston, Massa-
chusetts, argued for plaintiff-appellant. With him on the
brief were SARAH COOLEYBECK and BRIAN C. CARROLL. Of
counsel was JOSEPH S. CIANFRANI, Knobbe, Martens,
Olson & Bear, LLP, of Irvine, California.

    LAUREN B. FLETCHER, Wilmer Cutler Pickering Hale
and Dorr LLP, of Boston, Massachusetts, argued for
defendant-appellee. With her on the brief were WILLIAM
F. LEE and SARAH R. FRAZIER. Of counsel on the brief
2   INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.



were MARC E. HANKIN and KEVIN SCHRAVEN, Hankin
Patent Law, APC, of Los Angeles, California.
               ______________________

    Before RADER, Chief Judge, LOURIE, and O’MALLEY,
                     Circuit Judges.
O’MALLEY, Circuit Judge.
     The world has come a long way; this is a patent case
about robots. InTouch Technologies, Inc. d/b/a InTouch
Health (“InTouch”) and VGo Communications, Inc.
(“VGo”) both manufacture remote telepresence robot
systems. In 2012, InTouch filed a First Amended Com-
plaint in the Central District of California alleging that
VGo’s remote telepresence robot system infringed several
of its patents, including U.S. Patent Nos. 6,346,962 (“the
’962 patent”), 6,925,357 (“the ’357 patent”), and 7,593,030
(“the ’030 patent”) (collectively, “the asserted patents”).
The asserted patents generally relate to remote
telepresence technology regarding camera movement,
arbitrating control of a robot, and a call back mechanism
to notify a previously denied user that the robot is now
available. VGo counterclaimed for declaratory judgment
of non-infringement and invalidity.
    After a jury trial, the jury returned a verdict of non-
infringement of all three asserted patents. It also found
claim 79 of the ’357 patent and claim 1 of the ’030 patent
invalid based on obviousness. The district court subse-
quently denied motions for judgment as a matter of law
(“JMOL”) and a new trial regarding non-infringement,
invalidity, and numerous evidentiary rulings.
    InTouch appeals from the district court’s final judg-
ment of non-infringement and invalidity, and denial of the
post-trial motions for JMOL on those questions. InTouch
also appeals from its motion for a new trial based on two
allegedly erroneous evidentiary rulings, one which
InTouch says tainted the infringement verdict and anoth-
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.   3



er which InTouch says calls into question the integrity of
the invalidity judgments. For the reasons explained
below, we affirm the judgment of non-infringement of the
asserted patents and the denial of the motion for a new
trial on infringement, reverse the findings of invalidity
regarding the ’357 and ’030 patents, and remand to vacate
the district court’s invalidity judgments.
                     I. BACKGROUND
                 A. Factual Background
                   1. Asserted Patents
     InTouch is the owner of the asserted patents. In
2001, InTouch developed a remote telepresence robot
system for the health care industry that allows physicians
and family members to visit a patient through a remote
terminal without travelling to the physical location of the
patient. This system permits a user to operate a robot
from a remote terminal, e.g., computer or tablet. The
InTouch robot contains several features, including a video
display, two-way audio, and a camera. Based on the
user’s instructions, the robot travels throughout a hospi-
tal, and a user appears through live video on the video
display as a remote presence. For example, a doctor can
conduct “in-person” patient consultations from his office
in another location through a computer.
    On July 25, 2002, InTouch filed a patent application
directed to a “Medical Tele-Robotic System.” ’357 Patent,
at [54], [75] (filed July 25, 2002). This application issued
as the ’357 patent on August 2, 2005. The technology
relates to controlling access to a shared remote
telepresence robot among multiple users. On September
30, 2008, the U.S. Patent and Trademark Office (“PTO”)
received an ex parte reexamination request for the ’357
patent. After this reexamination, the PTO issued a
reexamination certificate cancelling several original
claims, allowing certain other claims upon amendment,
4   INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.



and allowing new claims 79–94.        Asserted independent
claim 79 of the ’357 patent states:
    A robot system, comprising:
        a mobile robot that has a camera and a
        monitor;
        a first remote station that can access said
        mobile robot;
        a second remote station that can access
        said mobile robot; and,
        an arbitrator that can control access to
        said mobile robot by said first and second
        remote stations, said arbitrator includes a
        call back mechanism that informs a user
        that was denied access to said mobile robot
        that said mobile robot can be accessed.
’357 Patent col. 2 ll. 50–59 (ex parte reexamination certif-
icate) (emphasis added). The ’357 patent explains that
the robot “may be controlled by a number of different
users. To accommodate for this the robot may have an
arbitration system.” Id. col. 5 ll. 55–57. The specification
then describes separating users into classes and providing
override input commands. Id. col. 5 ll. 61–65. It provides
that “[t]he arbitration scheme may have one of four
mechanisms; notification, timeouts, queue and call back.”
Id. col. 6 ll. 43–44. “The notification mechanism may
inform either a present user or a requesting user that
another user has, or wants, access to the robot.” Id. col. 6
ll. 44–47. “The call back mechanism informs a user that
the robot can be accessed. By way of example, a family
user may receive an e-mail message that the robot is free
for usage.” Id. col. 6 ll. 50–54.
    The ’030 patent is a continuation-in-part of the ’357
patent, and shares a common specification. It is titled
“Tele-Robotic Videoconferencing in a Corporate Environ-
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.   5



ment.” ’030 Patent, at [54] (filed Oct. 14, 2004). This
patent issued on September 22, 2009. Asserted independ-
ent claim 1 of the ’030 patent states:
   A method for conducting          a   business   tele-
   conference, comprising:
       moving a robot that has a screen, a cam-
       era, a speaker and a microphone, across a
       surface of a business facility with at least
       one signal from a first remote station that
       has a screen, a camera, a speaker and a
       microphone;
       transmitting images and sound between
       the first robot and the first remote station
       and displaying the image captured by the
       remote station camera on the robot screen;
       moving the robot across the surface of the
       business facility with at least one signal
       from a second remote station that has a
       screen, a camera, a speaker and a micro-
       phone;
       transmitting images and sound between
       the robot and the second remote station;
       and,
       arbitrating to control access to the robot by
       either the first remote station or the second
       remote station.
’030 Patent col. 6 ll. 18–33 (emphasis added).
    InTouch acquired the ’962 patent in November 2009
from IBM. The ’962 patent is titled “Control of Video
Conferencing System with Pointing Device.” ’962 Patent,
at [54] (filed Feb. 27, 1998). The technology relates to
controlling the movement of a remote video camera in real
time directly responsive to movement of a remote mouse
pointer.    The patent issued on February 12, 2002.
6   INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.



InTouch asserted claims 1 and 8 of the ’962 patent
against VGo. Claim 1 of the ’962 patent states:
    A method of controlling operations of a video con-
    ferencing system, the method comprising the
    steps of:
        controlling in real time the operation of a
        camera which provides video to be dis-
        played through input to a pointing device
        so as to provide direct control of the mo-
        tion of the camera through movement of
        the pointing device, wherein said step of
        controlling comprises the steps of:
            receiving input from the pointing
            device corresponding to movement
            of the pointing device to provide
            movement data;
            actuating the camera associated
            with the video conferencing system
            in a direction indicated by the
            movement data;
            initiating a timer upon receipt of
            the movement data; and
            stopping motion of the camera if
            the timer expires without receiv-
            ing subsequent movement data.
’962 Patent col. 9 ll. 21–39 (emphases added).
    Claim 8 of the ’962 patent states:
    A system for controlling operations of a video con-
    ferencing systems comprising:
        a camera capable of remote control opera-
        tion; and
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.   7



        means for controlling in real time the op-
        eration of the camera which provides video
        to be displayed through input to a pointing
        device so as to provide direct control of the
        motion of the camera through movement
        of the pointing device, wherein said means
        for controlling comprise:
        means for receiving input from the point-
        ing device corresponding to movement of
        the pointing device to provide movement
        data;
        means for actuating the camera associated
        with the video conferencing system in a di-
        rection indicated by the movement data;
        means for initiating a timer upon receipt
        of the movement data; and
        means for stopping motion of the camera if
        the timer expires without receiving subse-
        quent movement data.
Id. col. 10 ll. 9–39 (emphases added).
                2. VGo’s Accused Product
    VGo, founded in 2007, produces low-cost remote
telepresence robot systems that allow a user at one loca-
tion to control remotely a robot to interact with others at
a second location. The VGo system includes three main
components: the VGo App, the VGoNet, and the VGo
robot. A user runs the VGo App program from a computer
or tablet to connect to a VGo robot through the VGoNet, a
network service in the cloud that connects authorized VGo
users with VGo robots. Similarly, the VGo robot contains
several features, including a video display, two-way audio,
and a camera.
    The parties generally agree on how the VGo system
operates. See Joint Appendix (“J.A.”) 15000–72, 10750–
8   INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC.



59, 10880–93. The VGo system allows up to twenty pre-
authorized users to gain control of a robot. When a user
launches the VGo App, he sees a window containing a
“buddy list” of VGo robots with color-coded status indica-
tor buttons to the left of each robot name. The color of the
status indicator button specifies each robot’s availability,
including green for “Ready,” red for “Busy,” and grey for
“Offline.” The green “Ready” button indicates that the
robot is available. If the robot is available, the “buddy
list” also displays a green “call button” with a video cam-
era icon to the right of the robot’s name. By clicking the
green “call button” of an available robot, the VGo system
provides the first requesting user exclusive control of that
robot, and the status indicator changes from green for
“Ready” to red for “Busy.” The green “call button” to the
right of the robot’s name also disappears. When a user
surrenders control of a VGo robot, the robot sends a
message to the VGo system, which changes the VGo
robot’s status indicator from red for “Busy” to green for
“Ready.” The green “call button” to the right of that
robot’s name then reappears.
    Once connected, a user can drive the robot around and
communicate with others at the robot’s location. The VGo
system includes “real-time” control of the VGo robot’s
camera through a computer mouse in “look mode.” J.A.
10886–89. In this mode, the camera can tilt to look up or
down. To look right or left, the entire robot rotates right
or left, respectively. The direction the VGo robot turns is
based on the location of the pointer in the VGo App inter-
face screen. The interface screen includes a centerline,
and if the pointer is to the right of the centerline, the
robot rotates right, and vice versa. Even if the pointer is
not moving, but is located to the right of the centerline,
the robot will continue to rotate right. And, even if the
pointer is moving left, as long as it is located to the right
of the centerline, the robot will continue to rotate right.
INTOUCH TECHNOLOGIES, INC.    v. VGO COMMUNICATIONS, INC.     9



                         3. Prior Art
     At the district court, VGo pointed to numerous prior
art references in support of its assertion that the claims of
the ’357 patent and the ’030 patent are invalid as obvious.
VGo argued that claim 79 of the ’357 patent was obvious
based on a combination of three references: (1) U.S.
Patent No. 6,292,713 (“Jouppi”), (2) Dudenhoeffer et al.,
Command And Control Architectures for Autonomous
Micro-Robotic Forces FY-2000 Project Report, Idaho
National Eng’g and Enviro. Lab. (April 2001) (“Duden-
hoeffer”), and (3) Adam Roach, Automatic Call Back
Service in SIP (Ericsson Inc., Internet Draft 2000)
(“Roach”). VGo argued that claim 1 of the ’030 patent was
obvious based on a combination of the Jouppi patent with
either (1) the Dudenhoeffer reference, (2) Ken Goldberg et
al., Desktop Teleoperation via the World Wide Web, IEEE
Int’l Conference on Robotics and Automation (1995)
(“Goldberg”), or (3) Dirk Schulz et al., Web Interfaces for
Mobile Robots in Public Places, Robotics & Automation
Magazine, Mar. 2000 (“Schulz”). We discuss these refer-
ences briefly below.
                    a. The Jouppi Patent
     The Jouppi patent issued on September 18, 2001.
U.S. Patent No. 6,292,713, at [45] (filed May 20, 1999). It
discloses a robotic telepresence system that has a user
station at a first geographic location and a robot at a
second geographic location. Id. at [57]. The patent de-
scribes a robot with cameras and two-way audio-video
technology controlled by a remote user. See id. col. 3
ll. 25–32. The robot responds to commands from a remote
terminal. See id. col. 3 ll. 43–47. Two different types of
remote terminals are discussed: a user station and an
immersion room. The user station can be permanent
(e.g., desktop) or mobile (e.g., laptop). See id. col. 12 l. 64–
col. 13 l. 67. The immersion room is similar to a movie
theater conference room, which “functions as a user
10 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



station and provides the user with a sense of being in the
remote geographic location.” See id. col. 13 ll. 55–58. The
written description also states that the robotic
telepresence       procedures      include:      “A     con-
nect_to_user_station procedure 722 that establishes the
communication connection via the wireless transmit-
ter/receiver 76 to the user station or immersion room.” Id.
col. 17 ll. 35–38.
              b. The Dudenhoeffer Reference
     The Dudenhoeffer reference is titled “Command and
Control Architectures for Autonomous Micro-Robotic
Forces.” Dudenhoeffer, at i–ii. It is an April 2001 publi-
cation from the Human Systems Engineering and Scienc-
es Department of the Idaho National Engineering and
Environmental Laboratory. Id. According to the ab-
stract, this reference “addresses the issues and develop-
ment of command and control for large-scale numbers of
autonomous robots deployed as a collective force.” Id. at
iii. The abstract explains that “[t]ele-operation should not
be the goal, but rather a level of adjustable autonomy and
high-level control. If a herd of sheep is comparable to the
collective of robots, then the human element is compara-
ble to the shepherd pulling in strays and guiding the herd
in the direction of greener pastures.” Id.
      The program’s purposes are to enable “[a] large collec-
tion of micro-robots that can move, communicate, and
work collectively to achieve a collective goal,” and to
“permit the human to interact with the robots as a group
. . . rather than requiring the human operator to interact
with each and every individual robot.” Id. at 1–2. The
project “includes the development and evaluation of
various command and control architectures for use by
humans in the deployment of large-scale micro-robotic
forces. Specific areas to be examined include shared
control by multiple users, arbitration of control between
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 11



users, and collaboration and cooperation between auton-
omous units.” Id. at 4 (emphasis added).
                 c. The Roach Reference
    The Roach reference is a March 2000 publication from
the Internet Engineering Task Force of Ericsson Inc.
Roach, at 1. The reference is titled “Automatic Call Back
Service in SIP.” Id. This reference “describes a proposed
implementation of an Automatic Call Back (ACB) Service
using SIP.” Id. The process includes a caller making a
voice call, and, if he receives a busy signal, choosing to
activate the ACB service. See id. at 1–2. Once the callee’s
device becomes available, the ACB service is triggered
and the service alerts the caller through a call back from
the service notifying the caller that the callee’s device is
now available. See id.
                d. The Goldberg Reference
    The Goldberg reference is a 1995 publication titled
“Desktop Teleoperation via the World Wide Web.” Gold-
berg, at 654. It describes a system that permits world
wide web users to remotely control a robot arm moving in
a sandpit. In the system design and user interface sec-
tion, Goldberg states that “[a]ny number of ‘observers’ can
simultaneously view the status image, but only the cur-
rent ‘operator’ can send commands by clicking on the
image. To limit access to one operator at a time, we
implemented password authentication and a queue that
gives each operator 5 minutes at the helm.” Id. at 655.
                 e. The Schulz Reference
    The Schulz reference is titled “Web interfaces for Mo-
bile Robots in Public Places.” Schulz, at 1. Schulz “de-
scribes a series of Web interfaces, designed to remotely
operate mobile robots in public places.” Id. One of the
web interfaces “enables visitors to send a robot to a user-
specified target location anywhere in the museum [to
perform the function of a robotic tour-guide], assuming
12 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



that the target location is in fact reachable. Control
brokering is achieved through a first-come-first-serve
basis, using a limited-size queue to schedule requests.”
Id. at 2. Another interface “uses a voting scheme to
arbitrate control among Web users. Here visitors can vote
for a specific tour. At pre-scheduled points in time, the
robot performs the function selected by the largest num-
ber of Web users.” Id.
                  B. Procedural History
    On November 4, 2011, InTouch filed a complaint al-
leging VGo’s remote telepresence robot system infringed
the ’962 and ’357 patents. Compl., InTouch Techs., Inc. v.
VGo Commc’ns, Inc., No. 11-cv-9185 (C.D. Cal. Nov. 4,
2011), ECF No. 1. On April 27, 2012, InTouch filed a first
amended complaint adding a claim alleging infringement
of the ’030 patent. 1 First Am. Compl., InTouch Techs.,
No. 11-cv-9185 (C.D. Cal. Apr. 27, 2012), ECF No. 39. In
response, VGo counterclaimed for declaratory judgment of
non-infringement and invalidity of the asserted patents.
Answer, Affirmative Defenses, & Countercls., InTouch
Techs., No. 11-cv-9185 (C.D. Cal. May 21, 2012), ECF No.
44.
               1. Claim Construction Order
    On November 16, 2012, the district court issued its
Claim Construction Order. Claim Construction Order,
InTouch Techs., No. 11-cv-9185 (C.D. Cal. Nov. 16, 2012),
ECF No. 199. The parties disputed the construction of
numerous claim terms. The court construed the following
terms relevant to this appeal: (1) the ’357 patent claim


   1    The first amended complaint also alleged in-
fringement of U.S. Patent Nos. 7,289,883 and 7,310,570.
In July 2012, the district court granted the parties’ stipu-
lation to dismiss InTouch’s infringement claims for these
two patents.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 13



term “arbitrator” as “a device that determines which user
or station has exclusive control, or which user’s com-
mands the robot should follow”; (2) the ’030 patent claim
term “arbitrating to control access to the robot by either
the first remote station or the second remote station” as
“determining which remote station has exclusive control
of the robot”; (3) the ’357 patent claim term “call back
mechanism” as “a device that sends a message to a specif-
ic user who previously was denied access to a particular
mobile robot that the same mobile robot can now be
accessed”; (4) the ’962 patent claim term “controlling in
real-time operation of the camera which provides video to
be displayed through input to a pointing device so as to
provide direct control of the motion of the camera through
movement of the pointing device” as “controlling the
motion of the camera based on translational (e.g. side-to-
side, forward, back) movement of the pointing device, as
distinguished from control in which a user moves the
pointing device to a particular location on the screen and
clicks a button to reorient the camera”; and (5) the ’962
patent claim term “means for actuating the camera asso-
ciated with the video conferencing system in a direction
indicated by the movement data” as a means plus func-
tion term whose corresponding structure was “computer
software or a special purpose hardware-based computer
system that moves the camera, as shown in Figures 4 and
5 and as described in Column 8:5-35.” See id. at 5–6, 9–
11, 14–16.
                      2. Jury Trial
    The district judge presided over a five-day jury trial.
On November 29, 2012, the jury returned a verdict in
favor of VGo, finding non-infringement of the ’357, ’030,
and ’962 patents. It also found claim 79 of the ’357 patent
14 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



and claim 1 of the ’030 patent invalid for obviousness. 2
The district court entered judgment in favor of VGo
consistent with the jury’s findings.
                  3. Post-Trial Motions
    InTouch then moved for JMOL or a new trial on both
infringement and invalidity. On January 28, 2013, the
trial court denied InTouch’s post-trial motions. Minute
Order, InTouch Techs., No. 11-cv-9185 (C.D. Cal. Jan. 28,
2013), ECF No. 262.
    The court first addressed the non-infringement ver-
dict and InTouch’s argument that no reasonable jury
could have found that VGo’s product lacks an arbitrator
which “determines” whether the user or remote station
has exclusive control of the robot. The trial court disa-
greed with InTouch. The court found substantial evi-
dence, based on testimony presented from both parties
and a comparison of the parties’ products, to support the
jury’s finding that “‘arbitrating’ involves active decision-
making on the part of the arbitrator,” and that active
decision-making does not occur in the VGo products. Id.
at 4. Addressing the “call back mechanism” limitation,
the court found that there is substantial evidence in the
record to support the jury’s finding of non-infringement
based on the testimony of VGo’s Chief Operating Officer
and co-founder, Mr. Ryden, and his demonstration of the
VGo products, including testimony that the VGo system
does not send messages to a specific user who tried to
connect and was denied access and evidence that the VGo
robot has no way of knowing who tried to connect and was
denied access.
    The court also found that the jury’s verdict that the
robot does not infringe the asserted claims of the ’962


    2   VGo did not challenge the validity of the ’962 pa-
tent.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 15



patent was supported by substantial evidence. Again,
relying on Mr. Ryden’s testimony, the district court con-
cluded that a jury could reasonably have found that the
movement in VGo’s products was not controlled by trans-
lational movement, and, thus, did not infringe the assert-
ed claims.
    Turning to the invalidity findings, as discussed in
more detail below, the court stated that “the Court is
satisfied that the jury’s verdict of obviousness is well-
supported by substantial evidence in the record.” Id. at 7.
     The district court last addressed certain evidentiary
rulings InTouch claimed warranted a new trial. Relevant
to this appeal, the court first addressed the fact that the
court had permitted VGo’s principal to discuss legal
opinions regarding infringement he allegedly received
from outside counsel, despite VGo’s prior refusal to waive
the attorney-client privilege with respect to those com-
munications. The trial court concluded that InTouch had
failed to establish sufficient prejudice from this eviden-
tiary ruling, even if it was error, to justify a new trial.
Addressing InTouch’s claim that the trial court erred
when it allowed VGo’s co-founder, Mr. More, to discuss
previously undisclosed prior art robots, the court again
concluded that InTouch had failed to explain how Mr.
More’s testimony affected its substantial rights.
    InTouch appeals the final judgment of the district
court and the denial of its post-trial motions. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
                     II. DISCUSSION
                 A. Standard of Review
    This Court reviews decisions on motions for JMOL,
motions for a new trial, and evidentiary rulings under the
law of the regional circuit. Verizon Servs. Corp. v. Cox
Fibernet Va., Inc., 602 F.3d 1325, 1331 (Fed. Cir. 2010);
Research Corp. Techs. v. Microsoft Corp., 536 F.3d 1247,
16 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



1255 (Fed. Cir. 2008). Here, the applicable regional
circuit is the Ninth Circuit. Under Ninth Circuit law,
when reviewing the denial of a renewed motion for JMOL,
“[t]he test is whether the evidence, construed in the light
most favorable to the nonmoving party, permits only one
reasonable conclusion, and that conclusion is contrary to
that of the jury.” White v. Ford Motor Co., 312 F.3d 998,
1010 (9th Cir. 2002) (internal quotation marks omitted).
     Claim construction is a question of law reviewed de
novo. Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., 744 F.3d 1272, 1276–77 (Fed. Cir. 2014) (en
banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1456 (Fed. Cir. 1998) (en banc). Infringement is a ques-
tion of fact reviewed for substantial evidence. 01 Com-
munique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1296
(Fed. Cir. 2012). The patentee bears the burden of proof
for infringement. See Medtronic, Inc. v. Mirowski Family
Ventures, LLC, — U.S. —, 134 S.Ct. 843, 849 (2014).
“Because obviousness is a mixed question of law and fact,
‘[w]e first presume that the jury resolved the underlying
factual disputes in favor of the verdict [ ] and leave those
presumed findings undisturbed if they are supported by
substantial evidence. Then we examine the [ultimate]
legal conclusion [of obviousness] de novo to see whether it
is correct in light of the presumed jury fact findings.’”
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1356–57 (Fed. Cir. 2012) (quoting Jurgens v.
McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991)).
     The Ninth Circuit reviews the denial of a new trial
motion for abuse of discretion. Molski v. M.J. Cable, Inc.,
481 F.3d 724, 728 (9th Cir. 2007). A new trial is required
if the court made incorrect and prejudicial admissibility
rulings, or the verdict is contrary to the great weight of
the evidence. Chiron Corp. v. Genentech, Inc., 363 F.3d
1247, 1258 (Fed. Cir. 2004) (citing Murphy v. City of Long
Beach, 914 F.2d 183, 186 (9th Cir. 1990); Chalmers v. City
of Los Angeles, 762 F.2d 753, 761 (9th Cir. 1985)).
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 17



   The Ninth Circuit reviews evidentiary rulings for an
abuse of discretion. United States v. Wiggan, 700 F.3d
1204, 1210 (9th Cir. 2012) (citations omitted); Boyd v. San
Francisco, 576 F.3d 938, 943 (9th Cir. 2009).
                  B. Claim Construction
    To determine the scope and meaning of a claim, we
examine the claim language, written description, prosecu-
tion history, and any relevant extrinsic evidence. Phillips
v. AWH Corp., 415 F.3d 1303, 1315–19 (Fed. Cir. 2005)
(en banc). Generally, a claim term is given the ordinary
and customary meaning as understood by a person of
ordinary skill in the art at the time of invention. Id. at
1312–13. We must read claims in view of the specifica-
tion, which “is the single best guide to the meaning of a
disputed term.” Id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
    The parties only dispute the construction of three
claim terms. InTouch challenges the district court’s
construction of the ’030 patent claim term “arbitrating to
control” and the ’357 patent claim terms “arbitrator” and
“call back mechanism.” 3 We address the terms “arbitrat-
ing to control” and the “arbitrator” together.
                1. Arbitrator/Arbitrating
     InTouch challenges the district court’s construction of
the ’030 patent term “arbitrating to control” as “determin-
ing which remote station has exclusive control of the
robot,” and the ’357 patent claim term “arbitrator” as “a
device that determines which user or station has exclu-
sive control, or which user’s commands the robot should
follow.” InTouch argues that the district court should
have adopted its proposed construction for arbitrator as “a



   3    InTouch does not challenge the construction of the
’962 patent claim terms. See Appellant Br. 14.
18 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



device that allows exclusive control of the mobile robot by
one of the remote stations.” Appellant Br. 42–43 (empha-
sis omitted). According to InTouch, an “arbitrator” re-
quires only that it control access among multiple remote
users. InTouch points to the written description, which it
says discloses a queue-based arbitration system which
simply allows access based on the timing of access re-
quests, requiring no “decision” or “determination.” VGo
asserts that the district court correctly construed claim 79
because the claim itself recites that an arbitrator can
control access to the robot. We agree with VGo.
     Like the district court, we find InTouch’s proposed
construction “inaccurate and too narrow.” The term
“‘[a]llows’ does not properly describe the role of the arbi-
trator and the arbitration system in resolving the control
of the robot.” Claim Construction Order at 6, ECF No.
199. Claim 79 of the ’357 patent states “an arbitrator that
can control access to said mobile robot by said first and
second remote stations,” and claim 1 of the ’030 patent
states “arbitrating to control access to the robot by either
the first remote station or the second remote station.”
’357 Patent col. 2 ll. 55–56 (ex parte reexamination certif-
icate); ’030 Patent col. 6 ll. 33–34. The claim language
itself requires that the arbitrator control access to the
robot by remote terminals. The written description
explains that the arbitrator needs to “resolve access
requests from the various users,” not simply allow access.
’357 Patent col. 6 ll. 54–55. It also provides that Tables 1
and 2 “show how the mechanisms resolve access requests
from the various users.” Id. Table 2 shows a grid disclos-
ing how requests are “resolved” based on competing
requests between a current user and a requesting user.
Id. Table 2. Based on this context, it is clear that, for the
arbitrator to control access, it needs the capability to
consider and resolve access requests from and among
multiple users. Consequently, we find that the district
court     properly     construed    the   terms     “arbitra-
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 19



tor/arbitrating” to require a determination of which user
has the right to exclusive control or which user’s com-
mand to follow. Indeed, the written description confirms
that this “determination” requires the consideration of
competing requests between multiple users.
    InTouch’s reference to a queue-based system does not
alter our view. Even under a queue-based system, an
arbitrator still “determines” which user has exclusive
control between two competing requests. The described
queue-based system does not simply allow access to the
robot; nor does it simply deny access to a competing
request. It considers a request from at least a second
user, and places that user into a queue.
    For these reasons, we conclude that the district court
did not err in construing the terms “arbitrator” and “arbi-
trating” to require a determination of which user among
multiple users has exclusive control of the robot. 4
                 2. Call Back Mechanism
    InTouch asserts that the district court also incorrectly
construed the term “call back mechanism,” as used in the
’357 patent, to be “a device that sends a message to a
specific user who previously was denied access to a par-
ticular mobile robot that the same mobile robot can now
be accessed.” Claim Construction Order at 10, ECF No.
199 (emphasis added). In support, the district court
pointed to the plain language of the claim, the written
description, and the prosecution history. We agree that


   4     We are not persuaded by InTouch’s claim that the
district court issued three conflicting constructions of the
term “arbitrator/arbitrating.” The district court simply
used additional language in its post trial orders to explain
its conclusion that the VGo system lacked the arbitrator
limitation as defined. We find nothing improper in that
conclusion.
20 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



the district court properly construed the term “call back
mechanism” in light of the intrinsic evidence as a whole.
     InTouch says the key issue is “whether the term re-
quires a message directed to one-and-only-one user who
was denied access, or whether such message may addi-
tionally be received by other authorized users.” Appellant
Br. 44; Appellant Reply Br. 13. It argues that the plain
language of the claim does not foreclose other users from
receiving a call back message and that the insertion of the
word “specific” into the construction improperly reads into
the claim a requirement that the mechanism must send a
message to one-and-only-one user. VGo responds that
“the word ‘specific’ simply makes explicit what is already
implicit in the claim language.” Appellee Br. 40. While
we agree with InTouch that the call back mechanism can
send a message to more than one user, we agree with the
district court that the term requires a device that sends
an availability message to a user who previously was
denied access to that particular robot. The call back
mechanism could send this message to every specific user
who was previously denied access, but the individuals
receiving the message must have previously tried and
failed to gain access.
     The plain language of the claim supports the district
court’s construction. See Phillips, 415 F.3d at 1312
(“[T]he words of a claim ‘are generally given their ordi-
nary and customary meaning.’” (citations omitted)).
Claim 79 of the ’357 patent recites “a call back mechanism
that informs a user that was denied access to said mobile
robot that said mobile robot can be accessed.” ’357 Patent
col. 2 ll. 57–59 (ex parte reexamination certificate). The
phrase, “call back mechanism,” on its face connotes an
intention to call back a user that was previously denied
access. To call back a user, the call back mechanism
requires knowledge of who the user is, and whether that
user requested and was denied access, i.e., knowledge of
which specific user or users fall into that category.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 21



    The written description reinforces the notion that the
call back mechanism must message a specific user by
distinguishing the call back mechanism from a notifica-
tion mechanism. The written description describes a
single example of the call back mechanism, where “a
family user may receive an e-mail message that the robot
is free for usage.” ’357 Patent col. 6 ll. 51–53. It also
explains that the notification mechanism “may inform
either a present user or a requesting user that another
user has, or wants, access to the robot.” Id. col. 6 ll. 44–
47. As such, the notification mechanism also sends a
message, but performs this step in a different manner.
     The prosecution history of the ’357 patent removes
any remaining doubt that the call back mechanism re-
quires a message to a specific user that requested and
was denied access. “[A] court ‘should also consider the
patent’s prosecution history, if it is in evidence.’” Phillips,
415 F.3d at 1317 (quoting Markman v. Westview Instru-
ments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)). The prose-
cution history “consists of the complete record of the
proceedings before the PTO.” Id. During reexamination,
the applicants described the call back mechanism repeat-
edly, explaining that it contemplates a request from a
user, that user being denied access, and that specific user
receiving a call back message when the robot becomes
available. For example, in a December 24, 2009 Office
Action Response, the applicants remarked that the call
back mechanism “describ[es] a situation where a request-
ing user is denied access and informed of this fact, but
then receives a callback five minutes later.” J.A. 16722–
23. And, yet again, applicants stated that “[the prior art
reference] does not disclose the claimed situation where a
station requests access, access is denied, and then a
callback [message is sent].” J.A. 106723 (emphasis add-
ed).   This prosecution history makes clear that the call
back mechanism sends a message to call back only those
22 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



specific users that previously requested access and were
denied that access.
    For these reasons, we conclude that the proper con-
struction of the term “call back mechanism” requires “a
device that sends a message to a specific user or users
who previously were denied access to a particular mobile
robot that the same mobile robot can now be accessed.”
While this differs slightly from the trial court’s construc-
tion, it does not do so in a way that materially impacts the
infringement verdicts.
                     C. Infringement
    The jury returned a verdict in favor of VGo finding
non-infringement with respect to all three asserted pa-
tents: the ’357 patent, the ’030 patent, and the ’962 pa-
tent. Subsequently, as noted, the district court found all
three verdicts of non-infringement supported by substan-
tial evidence. On appeal, the objection to the infringe-
ment      verdict    focuses    on    four    limitations:
arbitrator/arbitrating, call back mechanism, camera
movement, and initiating the timer. 5 For the reasons
below, we affirm the judgment of non-infringement for all
the asserted patents.
                    1. The ’357 Patent
    Claim 79 of the ’357 patent requires a robot system,
including “an arbitrator that can control access to said
mobile robot by said first and second remote stations, said
arbitrator includes a call back mechanism that informs a
user that was denied access to said mobile robot that said



   5    Because we find substantial evidence exists to
support the conclusion that the VGo system lacks the
“actuating the camera” and “actuating means” limita-
tions, we do not reach InTouch’s arguments relating to
the “initiating the timer” limitation.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 23



mobile robot can be accessed.” ’357 Patent col. 2 ll. 55–59
(ex parte reexamination certificate).
                      a. Arbitrator
    The district court found that substantial evidence
supports the jury’s verdict of non-infringement because a
“reasonable jury could have found that [VGo’s] product
lacks an arbitrator that ‘determines’ which user or remote
station has exclusive control of the mobile robot” as it
“merely passively allows only the first user to exclusively
control the robot.” Minute Order at 4, ECF No. 262. As
noted above, we find that the district court properly
construed the term “arbitrator” as “a device that deter-
mines which user or station has exclusive control, or
which user’s commands the robot should follow.” And, we
find that the term “determines,” in this context, requires
the ability to consider and resolve competing requests.
     InTouch argues that the VGo robot “determines”
which pre-authorized user has exclusive control based on
“first-come/first-served” rules and thereby precludes
others from gaining access. InTouch further alleges that
the term “determines” means “regulates” without any
active decision making, and that the VGo system “auto-
matically determines which user controls the robot.”
Appellant Reply Br. 11, 14. We disagree with InTouch
that the VGo system “determines” which pre-authorized
user has exclusive control.
    By asking that we define “determines” as it proposes,
InTouch seeks to back into a construction of the claim
limitation “arbitrator” which we have already rejected.
While addressing the construction of the term “arbitra-
tor,” we concluded that the specification requires the
arbitrator to possess the ability to consider and resolve
competing requests. See supra section II.B.1. As such,
the VGo system lacks an arbitrator because the VGo
system cannot consider and resolve competing requests
for a single robot, i.e. it makes no determination about
24 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



competing user requests. Indeed, InTouch concedes that
“[t]he VGo system grants the first requesting user control
of that robot to the exclusion of others on the list” and
“the VGo system prevents other users from accessing the
‘Busy’ robot until the user releases control.” Appellant Br.
22 (citations omitted). Because others cannot access the
robot until the user releases control, the VGo system
never considers and resolves competing requests for that
robot, and thus, does not “determine” which user has
exclusive control of the robot. Consequently, the VGo
system lacks an “arbitrator.”
    We agree with the district court that substantial evi-
dence supports this conclusion. VGo submitted the testi-
mony of Mr. Ryden. Mr. Ryden demonstrated the VGo
system for the jury. During the demonstration, he
showed that the VGo system makes no “decision” as to
which user can connect and control the VGo robot because
the system simply provides exclusive control to the first
requesting user. J.A. 10758–59. He confirmed that there
is no way that a user can connect to a robot after another
user has already connected to that robot, and that the
VGo system does not even know that somebody else wants
to connect to that robot. J.A. 10758–59. Mr. Ryden
explained that, once a user connects to a robot, the green
“call button” disappears. J.A. 10758. Another user does
not even have the option of trying to connect to an una-
vailable VGo robot, so no competing requests for access
can exist. J.A. 10757–58.
    The jury had the right to rely upon Mr. Ryden’s testi-
mony and to reject any testimony proffered by InTouch to
the contrary. We do not decide what evidence seems more
persuasive. Our only role is to determine whether there
was substantial evidence upon which the jury could
predicate its non-infringement judgment. See i4i Ltd.
P’ship v. Microsoft Corp., 598 F.3d 831, 849 (Fed. Cir.
2010) (“Because infringement was tried to a jury, we
review the verdict only for substantial evidence.” (citing
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 25



ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307,
1311 (Fed. Cir. 2007))). We find that there was.
     InTouch’s objections to the jury’s non-infringement
finding under the Doctrine of Equivalents (“DOE”) fare no
better. InTouch points to Dr. Hackwood’s expert testimo-
ny that the differences in the claimed “arbitrator” and
VGo’s arbitration system were insubstantial. Specifically,
Dr. Hackwood testified that the VGo system has the
function of controlling access to the VGo robot between
first and second remote stations through the VGo App
software that allows only one user to connect to the robot.
See J.A. 10667–69, 17430. According to Dr. Hackwood,
only one remote station has control of the robot at any one
time because the green “call button” disappears and the
status indicator turns from green to red. See J.A. 10667–
69, 17430. While this testimony was proffered, the jury
was free to reject it. As VGo points out, the jury was free
to believe that the VGo system does not resolve competing
requests for control of the robot based on the substantial
evidence of that fact submitted by VGo as outlined above.
Since it does not do so, the jury could reasonably conclude
that the VGo system does not perform substantially the
same function, and does not do so in substantially the
same way, Dr. Hackwood’s testimony notwithstanding.
See Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 1009,
1015–16 (Fed. Cir. 1998) (“Under the function-way-result
test, one considers whether the element of the accused
device at issue performs substantially the same function,
in substantially the same way, to achieve substantially
the same result, as the limitation at issue in the claim.”
(citing Hilton Davis Chem. Co. v. Warner-Jenkinson Co.,
62 F.3d 1512, 1518 (Fed. Cir. 1995) (en banc), rev’d on
other grounds, 520 U.S. 17 (1997))).
    Based on the evidence submitted, we conclude that
the jury reasonably could have found that the VGo system
does not infringe the claimed “arbitrator” limitation of
claim 79, either literally or under the DOE.
26 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



                 b. Call Back Mechanism
     The district court also found that the record contains
substantial evidence to support the jury’s verdict of non-
infringement because the VGo system does not employ
the “call back mechanism” of the ’357 patent. InTouch
argues that the VGo system includes a “call back mecha-
nism” because the VGo robot sends an availability mes-
sage to all authorized users, including any previously
denied access, informing them the robot can be accessed
when a user surrenders control of a robot by changing the
status indicator button from red to green. InTouch claims
that “[i]t is legally irrelevant that the message is received
by multiple users, rather than one-and-only-one ‘specific’
user.” Id. VGo responds that the “call back mechanism”
is “intended to call back users who were previously denied
access,” which its indicator lights do not do. As VGo
notes, the green status indicator is always displayed after
a user surrenders control, even if no one has previously
tried to access the robot. J.A. 10612–13. Further, VGo
contends that “the VGo system is not even capable of
sending a ‘call back’ message to users.” Appellee Br. 43.
We do not agree with InTouch.
    As discussed above, we confirmed the district court’s
construction of the term “call back mechanism” as “a
device that sends a message to a specific user or users
who previously were denied access to a particular mobile
robot that the same mobile robot can now be accessed.”
See supra section II.B.2. As we clarified, we do not find
that the “call back mechanism” requires that a message
be sent to one-and-only-one specific user. Instead, the
system can send a message to every specific user that
requested access and was denied, but the users must be
targeted based on their prior efforts to access the robot.
    The jury had substantial evidence upon which it could
conclude that the VGo system lacks a “call back mecha-
nism.” Dr. Hackwood testified that the status indicator
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 27



meets this limitation by sending a message to all users
when a robot previously unavailable becomes available by
turning from red to green. J.A. 10456–59. Mr. Ryden,
however, testified that the VGo system does not have the
ability to recognize whether any user has been denied
access. See J.A. 10882. In support, he explained that the
green “call button” disappears when a user is connected to
a robot, thereby prohibiting another user from even
requesting access to the same VGo robot. See J.A. 10758.
Without this green “call button,” the VGo system cannot
even identify any user that wants access, and it certainly
does not know who may have previously sought access,
but was denied. See J.A. 10882.
    Nor do we agree with InTouch that the jury’s only
reasonable choice was to conclude that the VGo system
works in substantially the same way to perform the same
function. Again, while Dr. Hackwood testified that the
VGo system performs substantially the same function
because “[i]t sends a message to a specific user who previ-
ously has been denied access to that particular [VGo]
robot that the same VGo robot can now be accessed,” J.A.
10670, the jury was free to reject that contention. Be-
cause the VGo system does not “call back” a user that was
previously denied access, it simply does not perform the
same function in the same way as the claimed invention.
    Based on these conclusions, we find that substantial
evidence supports the jury’s finding of non-infringement
of claim 79 of the ’357 patent. Consequently, we affirm
the denial of InTouch’s motion for JMOL of infringement
of the ’357 patent.
                   2. The ’030 Patent
     Claim 1 of the ’030 patent discloses a method for con-
ducting a business teleconference that includes the step of
“arbitrating to control access to the robot by either the
first remote station or the second remote station.” While
the ’030 patent uses the term “arbitrating,” the same logic
28 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



and reasoning we employed in analyzing the “arbitrator”
limitation in the ’357 patent applies here. See supra
section II.C.1.a. For similar reasons, we find that the
jury’s verdict is supported by substantial evidence, and
thus, we affirm the district court’s denial of InTouch’s
motion for JMOL of infringement of the ’030 patent.
                    3. The ’962 Patent
    Claim 1 of the ’962 patent discloses a method of con-
trolling operations of a video conferencing system that
includes the step of “actuating the camera associated with
the video conferencing system in a direction indicated by
the movement data.” ’962 Patent col. 9 ll. 32–34. Claim 8
of the ’962 patent requires a system for controlling opera-
tions of a video conferencing system, including “means for
actuating the camera associated with the video conferenc-
ing system in a direction indicated by the movement
data.” Id. col. 10 ll. 22–23. For the reasons below, we find
that the VGo system lacks the limitation of “actuating the
camera.” Consequently, we conclude that substantial
evidence supports the jury’s verdict of non-infringement of
the ’962 patent, and, thus, affirm the district court’s
denial of InTouch’s motion for JMOL of infringement.
    The district court found that that the jury’s verdict of
non-infringement is supported by substantial evidence
based on the testimony and demonstration at trial.
InTouch argues that the “actuating the camera” claim
limitation is satisfied because, when the pointer moves to
the right of the center of the screen, the robot, inherently
with the camera, moves right. Appellant Br. 34. It claims
it does not matter that, when the pointer moves left, but
stays to the right of the center of the screen, the ro-
bot/camera continues to move right, but more slowly. It
alleges that the claim does not require “same” direction
movement of the camera and pointer. Id. at 35. InTouch
also contends that VGo stipulated that its robot “includes
means for providing direct control of the motion for a
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 29



camera,” thus, meeting this claim limitation. Appellant
Br. 36. VGo responds that it did not stipulate that the
VGo system provides direct control of the camera through
movement data. And, that substantial evidence supports
the jury’s findings that it does not infringe the ’962 patent
because the evidence established that VGo uses position
data, rather than movement data, to control the robot’s
camera. See Appellee Br. 22.
    The district court’s construction of the “actuating the
camera” limitation resolves this dispute. InTouch does
not challenge the district court’s construction of the claim
terms in the ’962 patent. The district court construed the
“means for actuating the camera associated with the video
conferencing system in a direction indicated by the
movement data” to have a function of “actuating the
camera associated with the video conferencing system in a
direction indicated by the movement data” and the struc-
ture as “computer software or a special purpose hard-
ware-based computer system that moves the camera, as
shown in Figures 4 and 5 and as described in Column 8:5-
35.” Claim Construction Order at 19, ECF No. 199.
Those portions of the written description define the opera-
tion of the video conferencing system. Notably, they
explain that “the video conferencing system determines
the direction of motion of the pointing device (block 94).
The camera is then actuated to move in the direction
indicated by the pointing device movement (block 96).”
’962 Patent col. 8 ll. 26–28 (emphasis added). 6 Thus, the
step of “actuating the camera associated with the video
conferencing system in a direction indicated by the
movement data” requires a direct response by the camera
in the direction indicated by the movement of the pointing



    6   Corresponding Figure 5 provides a flowchart with
identical steps as those described in column 8 lines 26 to
28 of the specification.
30 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



device. Indeed, InTouch concedes that “the patent is
directed to systems that control camera movement con-
tinually, in real time, responsive to the movements of a
user’s mouse.” Appellant Reply Br. 5 (emphasis added).
     The VGo system does not, in real-time, “determine the
direction of motion of the pointing device” and “move the
camera in the direction indicated by the pointing device
movement.” Mr. Ryden testified that the VGo system
does not send “movement data,” but, instead, relies on
“position data.” J.A. 10888; see also J.A. 6933. Mr. Ryden
explained that movement in the VGo system “depends on
the position of the cursor” in relation to the centerline of
the image. J.A. 10887–89. For example, he explained
that “[e]ven if I move the cursor to the left, if I’m on the
right-hand side of the image it’s going to move right; so
it’s all about the position where the cursor is on the
screen.” J.A. 10887–88. As VGo’s system moves the
camera based on data corresponding to the pointer’s
position vis-à-vis the centerline, not the directional
movement of the pointer, we find substantial evidence
exists to support the conclusion that the VGo system lacks
the “actuating the camera” limitation.
    In the alternative, InTouch asserts that VGo infringes
the ’962 patent under the DOE. InTouch alleges that
VGo’s actuating of the camera by moving the robot body
rather than the camera itself was an insubstantial differ-
ence. VGo does not appear to dispute that this method of
camera actuation is an insubstantial difference. InTouch
does not assert, however, that the VGo system’s camera
movement based on position data rather than movement
data is an insubstantial difference. And, InTouch’s own
expert conceded that “actuating” would only occur in the
same way as described in the ’962 patent if VGo’s camera
panned in the same direction the pointer moved based on
direct translational input. J.A. 10675–76. As such, we
find that the jury had substantial evidence from which it
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 31



could conclude that InTouch failed to prove infringement,
either directly or under DOE.
                       D. Invalidity
     InTouch also challenges the jury verdicts to the extent
the jury found claim 79 of the ’357 patent and claim 1 of
the ’030 patent invalid. “A general jury verdict of invalid-
ity should be upheld if there was sufficient evidence to
support any of the alternative theories of invalidity.” See
Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1339
(Fed. Cir. 2011). “Because obviousness is a mixed ques-
tion of law and fact, ‘[w]e first presume that the jury
resolved the underlying factual disputes in favor of the
verdict [ ] and leave those presumed findings undisturbed
if they are supported by substantial evidence. Then we
examine the [ultimate] legal conclusion [of obviousness]
de novo to see whether it is correct in light of the pre-
sumed jury fact findings.’” Kinetic Concepts, Inc., 688 F.3d
at 1356–57 (quoting Jurgens, 927 F.2d at 1557).
     A patent is invalid for obviousness “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103. Obvious-
ness is a question of law based on underlying factual
findings: (1) the scope and content of the prior art; (2) the
differences between the claims and the prior art; (3) the
level of ordinary skill in the art; and (4) objective indicia
of nonobviousness. Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966). Courts must consider all
four Graham factors prior to reaching a conclusion re-
garding obviousness. In re Cyclobenzaprine Hydrochlo-
ride Extended-Release Capsule Patent Litig., 676 F.3d
1063, 1076–77 (Fed. Cir. 2012); see Kinetic Concepts, Inc.,
688 F.3d at 1360 (“the obviousness inquiry requires
examination of all four Graham factors”).
32 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



    A party seeking to invalidate a patent on obviousness
grounds must “demonstrate ‘by clear and convincing
evidence that a skilled artisan would have been motivated
to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled arti-
san would have had a reasonable expectation of success in
doing so.’” Procter & Gamble Co. v. Teva Pharm. USA,
Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
While an analysis of any teaching, suggestion, or motiva-
tion to combine elements from different prior art refer-
ences is useful in an obviousness analysis, the overall
inquiry must be expansive and flexible. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 419 (2007). “Often, it will
be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the
design community or present in the marketplace; and the
background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit.”
Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obvious-
ness.”)).
     The district court must consider evidence showing ob-
jective indicia of nonobviousness, which constitute “inde-
pendent evidence of nonobviousness.” Mintz v. Dietz &
Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (quot-
ing Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd.,
599 F.3d 1308, 1319 (Fed. Cir. 2010)). Objective indicia
“may often be the most probative and cogent evidence of
nonobviousness in the record.” Ortho–McNeil Pharm. v.
Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008).
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 33



“These objective criteria help inoculate the obviousness
analysis against hindsight.” Mintz, 679 F.3d at 1378.
And, “[t]his built-in protection can help to place a scien-
tific advance in the proper temporal and technical per-
spective when tested years later for obviousness against
charges of making only a minor incremental improve-
ment.” Id. We must also keep in mind “[t]hat which may
be made clear and thus ‘obvious’ to a court, with the
invention fully diagrammed and aided, . . . may have been
a breakthrough of substantial dimension when first
unveiled.” Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1138 (Fed. Cir. 1985).
    Following the jury verdict of invalidity, the district
court entered judgment finding claim 79 of the ’357 patent
and claim 1 of the ’030 patent invalid for obviousness.
Judgment at 1–2, InTouch Techs., No. 11-cv-9185 (C.D.
Cal. Jan. 5, 2013), ECF No. 252. In response to subse-
quent motions for JMOL and a new trial, the district
court found that the record supports the jury’s verdict of
invalidity for the ’357 and ’030 patents. Minute Order at
6, ECF No. 262. Specifically, the district court explained
that Dr. Yanco “provided several detailed explanations
and reasons as to why a person of ordinary skill in the art
might be motivated to combine references regarding
remotely controlled robots, telepresence robots, and
teleconferencing protocols.” Id. at 7 (citing J.A. 10941–42,
10953, 10955–56, 10960). The district court also found
that “the File History of the ’357 Patent and the prior art
references themselves, to which the jury had full access,
include additional reasons and motivations to combine the
prior art, all of which, taken together, provide substantial
evidentiary support for the jury’s finding that the ’357
and ’030 Patents are invalid.” Id.
    Turning to the InTouch’s evidence, the district court
found that the InTouch “offered expert testimony that its
patents were not obvious, and attempted to bolster this
testimony with objective indicia of nonobviousness. That
34 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



evidence (in addition to being weak and of little rele-
vance), however, was contradicted by [VGo’s] clear expert
testimony, as well as the lay testimony of Mr. Ryden and
Mr. More, who explained the origins, development and
commercial success of their own products, to particularly
strong effect.” Id. The court then stated that, “[p]erhaps
most importantly, Mr. Ryden demonstrated the allegedly-
infringing ‘arbitration’ system of [VGo’s] robot, which
differs substantially and fundamentally from that claimed
in [InTouch’s] patents and used in [InTouch’s] robots.” Id.
It concluded by saying that “the jury could have applied
its common sense to the evidence to come to its conclusion
. . . that the ’357 Patent and ’030 Patent are invalid for
obviousness.” Id. (citation omitted).
    VGo insists that these conclusions are correct and
support its request that we affirm the obviousness find-
ings. InTouch argues that VGo’s expert testimony was
replete with errors because Dr. Yanco applied an incorrect
legal standard, and failed to consider objective evidence of
nonobviousness. In particular, InTouch asserts that
VGo’s expert, Dr. Yanco, failed to identify any reason why
one of ordinary skill in the art at the time of the invention
would have sought to combine or modify the references.
Appellant Br. 51. InTouch also submits that Dr. Yanco
did not consider the objective indicia of nonobviousness,
nor even know of the concept. Id.
    While our standard of review regarding the jury’s im-
plied factual findings is a stringent one, we agree with
InTouch that the evidence on which VGo relies is not
substantial enough to support an obviousness finding.
Indeed, it did not even come close. Dr. Yanco’s testimony
was plagued with numerous problems, including her
failure to: (1) identify sufficient reasons or motivations to
combine the asserted prior references; (2) focus on the
relevant time frame of 2001; or (3) consider any objective
evidence of nonobviousness. Dr. Yanco’s testimony was
nothing more than impermissible hindsight; she opined
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 35



that all of the elements of the claims disparately existed
in the prior art, but failed to provide the glue to combine
these references. While she opined that the references
were like separate pieces of a simple jigsaw puzzle, she
did not explain what reason or motivation one of ordinary
skill in the art at the time of the invention would have
had to place these pieces together. And, she did not even
factor the objective evidence of nonobviousness into her
obviousness analysis. For the reasons below, we reverse
the district court’s judgment invalidating claim 79 of the
’357 patent and claim 1 of the ’030 patent, and remand
with directions to vacate those judgments.
                   1. The ’357 Patent
    VGo argued that claim 79 of the ’357 patent was obvi-
ous based on a combination of three references: (1) the
Jouppi patent, (2) the Dudenhoeffer reference, and (3) the
Roach reference. In support, VGo solely relied on the
testimony of Dr. Yanco. Dr. Yanco testified that she
understood obviousness to mean that a person of ordinary
skill in the art of robotics could look at two references,
and think they could combine the two references. J.A.
10920. In her opinion, one of ordinary skill in the art is
someone with an undergraduate degree in computer
science, mechanical engineering, or electrical engineering,
but found that more likely a combination of all three
would be the norm. 7 J.A. 10920–21. She narrowed what
she claimed were the best references in support of her
invalidity opinion regarding the ’357 patent to the combi-
nation of Jouppi, Dudenhoeffer, and Roach. See J.A.
10922–23. She stated that “putting these three [refer-
ences] together you actually get [claim 79].” J.A. 10923.




   7   InTouch agrees that the level of skill in the art is
beyond that of an ordinary person. See Appellant Br. 38.
36 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



    InTouch first disagrees with VGo’s characterization of
the scope and content of the Jouppi and Dudenhoeffer
references. InTouch argues that Jouppi fails to disclose a
robot system with multiple remote terminals, as it only
describes a single robot controlled by a single control
station. It alleges that Jouppi discloses an “either/or”
option of a user station or immersion room. During trial,
Dr. Yanco testified that Jouppi does disclose a second
remote terminal. In support, she pointed to the “con-
nect_to_user_station procedure (722).” J.A. 10929–30.
While Dr. Yanco’s reading of Jouppi is certainly debata-
ble, it is plausible. Because we must infer that the jury
resolved the underlying factual disputes in favor of VGo
and we find at least some evidence on the record from
which it could find that Jouppi discloses the possibility of
using two remote terminals, we proceed on the assump-
tion that it does. See White, 312 F.3d at 1010.
    Turning to Dudenhoeffer, InTouch argues that it
“does not disclose allocating exclusive control of a single
telepresence robot between multiple control stations.”
Appellant Br. 53. It alleges that Dudenhoeffer only
discloses joint control of a micro-robotic swarm as a
collective, rather than control of each and every individual
robot. VGo responds that Dudenhoeffer “unquestionably
discloses ‘arbitration of control between users,’” including
the control of individual robots. Appellee Br. 51–52
(quoting Dudenhoeffer, at 4).        In support, VGo again
relies on Dr. Yanco’s testimony, where she opined that
section 4.2.2 of Dudenhoeffer lists three levels of control,
with the first level of control consisting of an interface
with the individual robots. J.A. 10935; see also Duden-
hoeffer, at 8 (describing a “mechanism . . . to arbitrate
between competing priorities of the command and control
system and the behavioral characteristics of the robot”
(emphasis added)).
   While Dr. Yanco alleges that these sections disclose
an arbitrator mechanism like the one in the claimed
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 37



invention, the Dudenhoeffer reference itself paints a
different picture. Dudenhoeffer states that:
   The objective of the project is to identify, develop,
   and evaluate various command and control archi-
   tectures that permit continuous, real-time human
   user interaction with large-scale micro-robotic
   forces as a collective entity (including the capacity
   to task and query), rather than requiring the hu-
   man operator to interact with each and every indi-
   vidual robot. These control architectures must
   address situations in which the number of auton-
   omous units makes the individual control of units
   by a single point neither feasible nor desirable.
Dudenhoeffer, at 1 (emphasis added).
    While Dudenhoeffer includes the term “arbitration,”
this alone is insufficient to permit the conclusion that it
refers to the same type of arbitration at issue in the ’357
and ’030 patents. See id. at 4 (“INEEL-specific tasking
includes the development and evaluation of various
command and control architectures for use by humans in
the deployment of large-scale micro-robotic forces. Specif-
ic areas to be examined include shared control by multiple
users, arbitration of control between users, and collabora-
tion and cooperation between autonomous units.” (em-
phasis added)). As found above, the claimed invention
includes an arbitrator that determines which user or
remote station has exclusive control of the mobile robot.
     Contrary to Dr. Yanco’s assertions, Dudenhoeffer
simply does not describe an arbitrator that determines
which user or remote station has exclusive control of an
individual robot. While the arbitrator in Dudenhoeffer
does resolve conflicts, it does not determine which users
may exclusively control an individual robot. In describing
“Necessary Command and Control Elements” for a large
number of autonomous robots, Dudenhoeffer provided a
list of prerequisite elements for such a command and
38 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



control system. Id. at 7–9. This list included “Arbitra-
tion,” which is described as:
    Arbitration – A mechanism must be available to
    arbitrate between competing priorities of the
    command and control system and the behavioral
    characteristics of the robot. Arbitration mediation
    is also needed in the case of shared control where
    multiple operators may control different functions
    within the same task force. An example is the
    case where a forward-deployed Army Ranger is
    tasked with ensuring that the robots are in posi-
    tion to analyze an area for the possible presence of
    weapons of mass destruction. Another operator at
    a command center may be in charge of sensor op-
    eration and the geometric configuration of the
    task force. It is conceivable that competing orders
    may be issued to the robots. Some mechanism
    must exist to resolve such conflicts.
Id. at 8. This section notes, moreover, that “the command
and control system must direct thousands of independent
robots where individual robot control is beyond the capa-
bilities of a single operator.” Id. at 9 (emphasis added).
    In a section relating to Hierarchical Structure Design
Implementation, Dudenhoeffer states that “[t]he hierar-
chical command and control structure provides command-
ers a means to communicate, task, and restructure
resources without interaction at an individual robot level.”
Id. at 13 (emphasis added). This system provides a “first
level of control [that] consists of an interface with individ-
ual robots . . . to permit the operator to control or evaluate
the state of individual robots.” Id. Specifically, this
individual control level “consist[s] of commands to the
robot for behavior modification,” which include changing
the robot’s group or leadership designation, and allowing
the operator to suspend or activate a robot. See id. at 16.
This first level of control does not involve controlling a
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 39



single specific robot exclusive to others. We find that
there is no evidence, much less substantial evidence, from
which the jury could conclude that Dudenhoeffer discloses
the type of arbitrator claimed in the ’357 patent, notwith-
standing Dr. Yanco’s conclusory opinion to the contrary.
    Even assuming Dudenhoeffer disclosed the type of
“arbitrator” claimed in the patent before us, there is
insufficient evidence on this record of a reason or motiva-
tion for one of ordinary skill in the art at the time of the
invention to combine Dudenhoeffer with Jouppi and
Roach. A reason for combining disparate prior art refer-
ences is a critical component of an obviousness analysis;
“this analysis should be made explicit.” KSR, 550 U.S. at
418 (arguments need to provide an “articulated reasoning
with some rational underpinning” to make the asserted
combinations) (quoting In re Kahn, 441 F.3d at 988.). “[I]t
can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new inven-
tion does . . . because inventions in most, if not all, in-
stances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be combi-
nations of what, in some sense, is already known.” See
KSR, 550 U.S. at 418–19. VGo once more relies solely on
the testimony of Dr. Yanco for this showing. We find her
testimony insufficient, however.
    Dr. Yanco first testified about combining the Jouppi
and Dudenhoeffer references to add the arbitrator ele-
ment. She testified that she can combine Jouppi with
Dudenhoeffer because Dudenhoeffer “is talking about
what happens when you have multiple robots and you
want to control them from different stations.” J.A. 10940.
Elaborating further, Dr. Yanco explained that one of
ordinary skill would combine Jouppi with Dudenhoeffer
as “something that that person of ordinary skill in the
state of art of the robotics will do,” because Dudenhoeffer
40 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



“is providing a remote telepresence for that soldier.” J.A.
10941–42.
    Dr. Yanco then relied on the Roach reference for the
call back mechanism. She testified that Roach discloses
“doing things over the Internet,” and that since “robots
are going over the Internet too; so that applies to them as
well.” J.A. 10940–41. She then stated that she would
combine Roach with the other references to let someone
who cannot get access to a robot know that it became
available. J.A. 10942. Dr. Yanco then testified that “[s]o
when we take these three things and we look at them
together, it covers Claim 79 of Patent ’357.” J.A. 10941.
    We find that Dr. Yanco failed to provide the necessary
“articulated reasoning with some rational underpinning”
to support a conclusion of invalidity based on these com-
binations. See KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d at 988). Dr. Yanco’s testimony was vague and
did not articulate reasons why a person of ordinary skill
in the art at the time of the invention would combine
these references. See Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363, 1373–74 (Fed. Cir. 2008) (“Such vague
testimony would not have been helpful to a lay jury in
avoiding the pitfalls of hindsight that belie a determina-
tion of obviousness.”). It appears that Dr. Yanco relied on
the ’357 patent itself as her roadmap for putting what she
referred to as pieces of a “jigsaw puzzle” together.
    VGo’s expert also succumbed to hindsight bias in her
obviousness analysis. Dr. Yanco’s testimony primarily
consisted of conclusory references to her belief that one of
ordinary skill in the art could combine these references,
not that they would have been motivated to do so. See
ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694
F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s testimo-
ny on obviousness was essentially a conclusory statement
that a person of ordinary skill in the art would have
known, based on the ‘modular’ nature of the claimed
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 41



components, how to combine any of a number of refer-
ences to achieve the claimed inventions. This is not
sufficient and is fraught with hindsight bias.”). Dr. Yanco
also failed to address why one of ordinary skill in the art
at the time of the invention, which was 2001, would be
motivated to combine these three references. See In re
Cyclobenzaprine, 676 F.3d at 1073 (“This hindsight analy-
sis is inappropriate because obviousness must be assessed
at the time the invention was made.”). Not once during
Dr. Yanco’s direct examination regarding the ’357 patent
did she analyze what one of skill in the art would have
understood as of 2001. Dr. Yanco simply opined what a
skilled artisan could accomplish in 2011; that is not the
relevant inquiry.
     There was, moreover, no effort by Dr. Yanco to guard
against this hindsight bias by appropriately considering
all objective evidence of nonobviousness. See In re Cyclo-
benzaprine, 676 F.3d at 1079 (“The objective considera-
tions, when considered with the balance of the
obviousness evidence in the record, guard as a check
against hindsight bias.”). VGo does not dispute that Dr.
Yanco ignored the objective evidence of nonobviousness.
Indeed, Dr. Yanco testified that she did not realize she
needed to consider this factor as part of her obviousness
analysis. Dr. Yanco testified that she had not even heard
of the concept of objective evidence of nonobviousness.
J.A. 10978–79 (“Q. Now have you heard of something
called objective evidence of non-obviousness? A. Sorry.
I’m not a lawyer. Q. You’ve never heard of that phrase at
all? A. Sorry. No.”). Yet, she concluded that the asserted
claims of the ’357 and ’030 patents were obvious. By
failing to account for objective evidence of nonobvious-
ness, Dr. Yanco’s analysis was incomplete, and ultimately
42 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



insufficient to establish obviousness by clear and convinc-
ing evidence. 8
     InTouch submitted evidence regarding the substantial
commercial success of its product, widespread industry
praise, and licenses. InTouch also provided expert testi-
mony through Dr. Hackwood that there was a nexus
between these objective indicia and the asserted claims.
See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311–12 (Fed. Cir. 2006) (“Evidence of commercial suc-
cess, or other secondary considerations, is only significant
if there is a nexus between the claimed invention and the
commercial success.”). Given the many weaknesses in Dr.
Yanco’s testimony, and VGo’s failure to persuasively rebut
InTouch’s evidence of nonobviousness, either through Dr.
Yanco, or otherwise, we find insufficient evidence to
support the conclusion that VGo bore its burden of prov-
ing clearly and convincingly that claim 79 of the ’357
patent was obvious.
    While, in denying JMOL, the trial court relied on the
success of VGo’s competing robot and the jury’s right to
use its common sense, on this record we find neither of
those factors sufficient to support a judgment of obvious-
ness. Indeed, the second factor is not even relevant to the


    8    We do not imply that a defendant must proffer an
expert on objective indicia of nonobviousness before the
trier of fact may reject such evidence. Indeed, technical
experts may testify to matters like the level of skill in the
art at the time of the invention and what a skilled artisan
might find obvious in light of the prior art without ad-
dressing objective indicia of non-obviousness. But, where,
as here, an expert purports to testify, not just to certain
factual components underlying the obviousness inquiry,
but to the ultimate question of obviousness, the expert
must consider all factors relevant to that ultimate ques-
tion.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 43



obviousness inquiry. A court may only rely upon the
common sense of one of ordinary skill in the art, not that
of the jury in assessing a claim of obviousness. See Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) (obviousness inquiry may include “com-
mon sense available to the person of ordinary skill in the
art that do not necessarily require explication in any
reference or expert opinion”); Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(“Indeed, the common sense of those skilled in the art
demonstrates why some combinations would have been
obvious where others would not.”). VGo’s expert testified
that the level of ordinary skill in the art of robotics is high
and specialized—clearly at a level above that of a lay
person. And, Dr. Yanco never referred to the common
sense of one of ordinary skill in the art, providing nothing
from which the jury or the trial court could draw on this
point.
    For these reasons, we conclude that VGo failed to
meet its burden of proving invalidity of the ’357 patent by
clear and convincing evidence, and that the district erred
in denying JMOL as to the validity of the ’357 patent.
Therefore, we reverse the district court’s judgment of
invalidity regarding claim 79 of the ’357 patent.
                     2. The ’030 Patent
    VGo argued that claim 1 of the ’030 patent was obvi-
ous in light of a combination of the Jouppi patent with
either: (1) the Dudenhoeffer reference, (2) the Goldberg
reference, or (3) the Schulz reference. We find that Dr.
Yanco’s analysis of the validity of this claim was flawed
for many of the same reasons we found her analysis of
claim 79 of the ’357 patent inadequate.
    Specifically in reference to the ’030 patent, Dr. Yanco
testified that she would find the combination of Jouppi
with Dudenhoeffer obvious to one of ordinary skill in the
art because “I do believe that somebody could look at a
44 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



telepresence robot and combine that with what we’re
really looking at is military telepresence. If you put those
two things together, a person of ordinary skill can do
that.” J.A. 10953 (emphases added).
    We have already addressed Dr. Yanco’s misinterpre-
tation of Dudenhoeffer; those findings control here as
well, making it an inadequate reference upon which to
predicate an obviousness finding to the ’030 patent. So
we turn to the Goldberg and Schulz references. For the
“arbitrator” mechanism, Dr. Yanco relied on Goldberg’s
statement that “[t]o limit access to one operator at a time,
we implemented password authentication and a queue
that gives each operator 5 minutes at the helm.” Gold-
berg, at 655. Dr. Yanco stated that it would be obvious to
someone of ordinary skill in the art of robotics to combine
Jouppi with Goldberg because “Goldberg is basically a
telepresence robot system.” J.A. 10955–56. While Dr.
Yanco did not provide any explicit reasoning for combin-
ing the Schulz reference with Jouppi, VGo relies on Dr.
Yanco’s general statement that any of these three refer-
ences could be combined with Jouppi as they all “de-
scribe[ ] multiple-control stations as well and how to
choose between what users are trying to do from those.”
J.A. 10961.
    Again, we conclude that VGo failed to meet its burden
of proving obviousness by clear and convincing evidence.
Dr. Yanco failed to provide any meaningful explanation
for why one of ordinary skill in the art would be motivated
to combine these references at the time of this invention.
At best, she opined that one in the field of robotics could
combine these references in 2011, though even that is a
generous reading of her testimony. And, again, Dr. Yanco
did not consider the impact of the objective evidence of
nonobviousness in this inquiry. Therefore, we reverse the
district court’s judgment of invalidity regarding claim 1 of
the ’030 patent as well.
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 45



                 E. Evidentiary Rulings
    InTouch argues that the district court materially
prejudiced InTouch by improperly admitting testimony
regarding legal opinions from VGo’s outside counsel and
testimony from Mr. More as to previously undisclosed
prior art. InTouch requests a new trial based on these
evidentiary errors. “A party seeking reversal for eviden-
tiary error must show that the error was prejudicial, and
that the verdict was ‘more probably than not’ affected as a
result.” Boyd, 576 F.3d at 943 (quoting McEuin v. Crown
Equip. Corp., 328 F.3d 1028, 1032 (9th Cir. 2003)).
    We first address Mr. Ryden’s testimony regarding the
opinions of VGo’s outside counsel. InTouch argues that
the district court improperly allowed Mr. Ryden to testify
that outside counsel did not believe VGo’s products in-
fringed the patents in suit. InTouch argues that this
testimony should have been excluded because VGo ex-
pressly refused to waive attorney-client privilege regard-
ing those opinions during discovery. InTouch alleges that,
without discovery, it was deprived of the ability to chal-
lenge this testimony.
    During cross-examination at trial, InTouch ques-
tioned Mr. Ryden about the bases for his own conclusion
that VGo’s robots were non-infringing. He was asked
whether he: (1) was a patent attorney, (2) had formal
legal training, (3) knew the process for determining
infringement, (4) performed a claim construction analysis,
(5) reviewed file histories, and (6) analyzed multiple
aspects of direct and indirect infringement. See J.A.
10910–13. On re-direct, VGo’s counsel asked Mr. Ryden:
“when you looked at the patents in 2010 what did you
do?” J.A. 10913. Mr. Ryden responded that he reviewed
the patents and discussed them with InTouch’s Chief
Technology Officer, and that, together, they discussed
these patents with their outside counsel. See J.A. 10913.
InTouch objected to the reference to outside counsel. The
46 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



district judge overruled the objection stating that InTouch
“opened the door on that one.” J.A. 10913. Subsequently,
Mr. Ryden testified that, based on these reviews and
discussions, “we felt that the technology that we were
using was not infringing on the patent, and we did not
need a license.” J.A. 10913. InTouch did not object to this
response or seek to strike it. See J.A. 10913.
    In response to the InTouch’s motion for a new trial,
the district court found that InTouch failed to explain how
the jury and the trial were “irreparably prejudiced” by Mr.
Ryden’s testimony. The district court pointed out that the
jury was instructed that Mr. Ryden’s testimony on the
advice of outside counsel was relevant only to the issue of
willfulness, which the jury did not reach. Minute Order
at 8, ECF No. 262.
     InTouch argues that this testimony was highly preju-
dicial because “evidence of an independent non-
infringement opinion was ‘directly probative of the central
issues in dispute,’ i.e., VGo’s direct and indirect infringe-
ment, the ultimate issue the jury was asked to decide.”
Appellant Br. 67 (quoting Obrey v. Johnson, 400 F.3d 691,
701–02 (9th Cir. 2005)). While we agree with InTouch
that the testimony was improper, we find that InTouch
failed to establish that the verdict was more probably
than not affected by this error.
    The district court charged the jury that someone “may
directly infringe a patent even though they believe in good
faith that what they are doing is not an infringement of
any patent.” Jury Instructions at 20, InTouch Techs., No.
11-cv-9185 (C.D. Cal. Nov. 29, 2012), ECF No. 228. It
then stated that “[a] patent claim is literally infringed
only if [VGo’s] product or method includes each and every
element or method step in that patent claim.” Id. at 21.
Subsequently, the district court told the jury that, if it
finds infringement, only then must it determine if the
infringement was willful. See id. at 41. To determine
INTOUCH TECHNOLOGIES, INC.   v. VGO COMMUNICATIONS, INC. 47



willfulness, the jury was told it may consider “whether
[VGo] relied on competent legal advice.” Id. Based on
these jury instructions, we agree with the district court
that it is unlikely that Mr. Ryden’s testimony on outside
counsel’s opinion factored into the jury’s infringement
verdict. See Minute Order at 8, ECF No. 262. We agree,
moreover, that “a jury is presumed to follow the instruc-
tions they are given.” Id. (citing Weeks v. Angelone, 528
U.S. 225, 234 (2000)). 9 We, thus, decline to order a new
infringement trial on this ground.
     InTouch next argues that the district court improper-
ly admitted the testimony of VGo’s co-founder, Mr. More.
Over InTouch’s objections, Mr. More was permitted to
testify about prior art robots that VGo did not identify in
its invalidity contentions. On the basis of this evidentiary
ruling, InTouch seeks a new trial on the validity of the
’357 and ’030 patents. Given our earlier conclusions
ordering vacatur of the invalidity judgments, this issue is
moot.
                       CONCLUSION
   For the reasons stated above, we affirm the judgment
of non-infringement for all three asserted patents as
supported by substantial evidence, reverse the findings of



   9    InTouch also alleges that VGo’s counsel made im-
proper statements in its closing argument. InTouch,
however, failed to raise any objections at that time.
Therefore, we consider these arguments waived. We note,
moreover, that the jury instructions clearly stated that
“[a]rguments and statements by lawyers are not evidence
. . . What they have said in their opening statements,
closing arguments, and at other times is intended to help
you interpret the evidence, but is not evidence.” Jury
Instructions at 4, ECF No. 228. Consequently, we decline
to disturb the infringement verdict on these grounds.
48 INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC.



invalidity regarding the ’357 and ’030 patents, and re-
mand to vacate those invalidity judgments.
 AFFIRMED-IN-PART, REVERSED-IN-PART, AND
               REMANDED
