[00:00:38] Speaker 04:
Her final case this morning is number fourteen-ish, fifteen-fifty-six, Salford Patent Licensing versus CBS Interactive.

[00:00:49] Speaker 02:
Thank you, Judge Dyke, and may it please the Court.

[00:00:51] Speaker 02:
The Board's conclusion that Smith renders obvious the information or message identifier element in the 241 patent should be reversed because when that term is given its correct construction, Smith does not disclose it.

[00:01:04] Speaker 02:
The basic distinction

[00:01:06] Speaker 02:
between Smith and the 241 patent is that Smith relies on pre-existing messaging systems, email, voicemail, fax, that involve user accounts.

[00:01:17] Speaker 02:
And with such systems, the notification that a user has a message waiting in her inbox does not need to specifically identify the message.

[00:01:26] Speaker 02:
Rather, the notification merely has to tell the user that a message is in her inbox and provide enough descriptive information

[00:01:33] Speaker 02:
that after the user has entered her password and logged in to her inbox, she can pick out that message.

[00:01:42] Speaker 02:
The 241 patent, by contrast, does not require any pre-existing messaging system.

[00:01:49] Speaker 02:
Rather, it allows a content provider to store information anywhere on a server, anywhere that's accessible to the network, and provides the user with an identifier that identifies the information specifically.

[00:02:03] Speaker 02:
And as the petitioners now concede in their brief on page 29, an information identifier must have sufficient data to identify a particular object.

[00:02:17] Speaker 02:
And the notifications in Smith do not have such identifiers.

[00:02:22] Speaker 02:
In fact... Didn't the board find the contrary?

[00:02:25] Speaker 02:
I don't think so, Your Honor.

[00:02:26] Speaker 02:
Because what the board found, and there's a combination...

[00:02:32] Speaker 02:
What the board found was that it was sufficient that after receiving an identification there was sufficient information in the notification that's disclosed in Smith that the user could then find the message in question.

[00:02:48] Speaker 02:
But what that ignores is that when you have a pre-existing messaging system, the

[00:02:56] Speaker 02:
there's already an understanding of where the inbox is based on the login information.

[00:03:02] Speaker 02:
So that information doesn't need to be included in the identifier.

[00:03:06] Speaker 02:
And indeed, in talking about the email example, a petitioner's expert said that he doubted that that would happen.

[00:03:14] Speaker 02:
He said you wouldn't want to include specific information about where a message is because it wouldn't be secure.

[00:03:23] Speaker 04:
the again the difference is no question that you could locate the message based on the information that was described for emails.

[00:03:32] Speaker 02:
That's true your honor but again that's not something that Smith invented or disclosed that was based on pre-existing system in which there were email systems that after all after providing the user with notifications that they had some emails

[00:03:50] Speaker 02:
allowed for interaction between the user that would allow the user to find a message among a limited universe within the inbox.

[00:03:59] Speaker 02:
So if you think about the difference, and I think there's a couple of illustrations in the specification in the 2401 patent that help to illustrate the difference.

[00:04:09] Speaker 02:
Let me start with an analogy and go to the two examples in the specification.

[00:04:13] Speaker 02:
The analogy that we used in our brief was talking about libraries.

[00:04:20] Speaker 02:
if you were a graduate student and had a shell.

[00:04:24] Speaker 02:
In that case, Your Honor, let me turn to the specification if the analogies aren't helpful.

[00:04:33] Speaker 02:
And let me go to two points about what the 241 specification talks about that Smith clearly would not allow.

[00:04:43] Speaker 02:
And the first is the specification in the 241 patent specifically talks about providing

[00:04:49] Speaker 02:
a notification to multiple users of the availability of a piece of information that is stored somewhere.

[00:04:59] Speaker 02:
So if you think about what a message ID does in that circumstance, I can send a notification to a hundred or a thousand or a million different people and say there's an article that's available on this particular location on a server and you can go get it because I'm telling you exactly where it is.

[00:05:18] Speaker 02:
I'm telling everyone.

[00:05:19] Speaker 02:
that receives the notification, where that is.

[00:05:23] Speaker 02:
You can't do that with Smith because Smith again relies on the pre-existing messaging systems that have inboxes.

[00:05:32] Speaker 02:
And so in order to provide that article to a million people, you would have to send the article to a million inboxes and that would then allow for the user to say, okay, message number three in my inbox is the article.

[00:05:48] Speaker 02:
But that would not

[00:05:49] Speaker 02:
that would not, the message ID in that circumstance would not allow you to provide multiple parties.

[00:05:56] Speaker 02:
There's another example in the specification which refers to forwarding a message.

[00:06:01] Speaker 02:
It's in column 10 of the 241 specification.

[00:06:05] Speaker 02:
And it talks about the fact that a user who wants to forward a message can tell the system either to send the message itself or

[00:06:18] Speaker 02:
to send the message ID.

[00:06:20] Speaker 02:
Now again, you can't do that with Smith because Smith is talking about, is simply telling a user that they have a message in their inbox and then relies on the fact that there are pre-existing systems with pre-existing protocols.

[00:06:38] Speaker 03:
Does Smith tell them they have different types of messages?

[00:06:42] Speaker 02:
It does, Your Honor.

[00:06:43] Speaker 03:
They're good.

[00:06:46] Speaker 03:
So the fact that then the user can select a particular message and then under Smith, they're given access to that message, then it's uploaded to the system where it's sent to them.

[00:07:03] Speaker 03:
Wouldn't that show a procedure that Smith has to have a code, has to have a way of further identifying the unique identifying address of that message?

[00:07:13] Speaker 03:
No, Your Honor.

[00:07:14] Speaker 03:
I think it does go absolutely right to the heart of the difference.

[00:07:21] Speaker 02:
And again, the examples I've given are...

[00:07:26] Speaker 02:
It took a while for the light bulb to go off for me.

[00:07:29] Speaker 02:
And because it had been emphasized for a long time that Smith relies on these underlying systems, the 241 clearly does not.

[00:07:40] Speaker 02:
And I kept trying to understand, make concrete for myself, what's the difference there?

[00:07:45] Speaker 02:
And again, for me the light bulb went off, and there's multiple examples in the specification, but the light bulb went off when I was thinking about the multiple recipients.

[00:07:54] Speaker 02:
And the difference is when you have a pre-existing system, a lot of the information about what the message is, where it is, is already something that the parties have by virtue of the fact that there's an existing account.

[00:08:08] Speaker 04:
If you look at what the specification... The interesting thing is with respect to Smith, that the message identifier is there.

[00:08:16] Speaker 04:
If it's an individual message, but if you're trying to

[00:08:21] Speaker 04:
to get a message to multiple people that that's not what Smith discloses.

[00:08:25] Speaker 02:
Is that what you're saying?

[00:08:26] Speaker 02:
That's not what I'm saying, Your Honor, so let me try to be clear.

[00:08:29] Speaker 02:
Part of what makes the record in this case a little bit... Take the individual message, okay?

[00:08:38] Speaker 04:
Why isn't it true that Smith must have some sort of code or something for you to be able to reach the message, find it in storage?

[00:08:49] Speaker 02:
Because what Smith

[00:08:51] Speaker 02:
does is it says Judge Dyke, message number three in your inbox is now available and it's from sender Q.

[00:09:03] Speaker 04:
Now, the fact is, that doesn't uniquely identify a message, because a lot of the information that tells you where does that... The information may not be there on the screen, and I assume in the patent it's not on the screen either, but there is a code that enables it to find the storage, right?

[00:09:22] Speaker 02:
No, Your Honor, and again, this is the key, is that because it relies on a pre-existing account,

[00:09:30] Speaker 02:
Pre-existing email account, when it talks about the fact, it talks about an area in storage that's dedicated to the user.

[00:09:37] Speaker 02:
You don't need to uniquely identify either the location or the message because once you log on through that interaction, you have told the system who you are and the system now knows where your area is.

[00:09:52] Speaker 02:
all right and you and so it can say number message number three and indeed that's what happens in the email.

[00:09:58] Speaker 03:
Is this really a discussion as to the address or identifying information of the user?

[00:10:04] Speaker 03:
It's not, we're talking about identifying information of the message.

[00:10:08] Speaker 03:
Exactly.

[00:10:09] Speaker 03:
And what does it matter whether you have a user account when you log in or not?

[00:10:14] Speaker 02:
Because if you look at the claim language your honor, what the claim language says in the

[00:10:21] Speaker 02:
241 patent is that there must be a message identifier or an information identifier that identifies the message.

[00:10:29] Speaker 02:
So there is some field that uniquely identifies a particular piece of information.

[00:10:36] Speaker 02:
And I think that with the concession and petitioner's brief on page 29 of their brief, we seem to agree on that.

[00:10:43] Speaker 02:
And the point is that if you already know if some of the information about

[00:10:49] Speaker 02:
where the message is and what it is comes from the login information.

[00:10:55] Speaker 02:
You don't include that information in the identifier and that's why there's a fundamental difference and indeed that's why Smith teaches away from what the 241 patent does because the 241 patent is saying I can send a unique identifier that can point to a piece of information anywhere on any storage system

[00:11:18] Speaker 02:
Smith cannot do that.

[00:11:20] Speaker 02:
And it doesn't suggest that you would want to do that.

[00:11:23] Speaker 02:
Because what Smith says is, we have perfectly good email, we have perfectly good voicemail, we have perfectly good fax.

[00:11:28] Speaker 04:
Is what you're saying that Smith supplies sufficient information to enable you to do that, but Smith doesn't in fact do that?

[00:11:36] Speaker 04:
Is that what you're doing?

[00:11:37] Speaker 04:
What I'm saying is that... Now, answer that question.

[00:11:41] Speaker 04:
The information that is supplied with respect to the email example in Smith, you agreed

[00:11:47] Speaker 04:
that information is sufficient to locate the item in storage, correct?

[00:11:54] Speaker 02:
It's difficult for me to give a yes or no answer to that question.

[00:11:57] Speaker 02:
Plainly after the notification is sent in Smith, the user and the device has sufficient information to retrieve the email, but it need not be sent in the notification.

[00:12:11] Speaker 02:
Recall that in the 241 patent, the selective call signal includes

[00:12:17] Speaker 02:
an information or message identifier that identifies the information or the message.

[00:12:23] Speaker 02:
And then there's dependent claims which make it even clearer when they talk about a code or a unique code or an address of information and storage.

[00:12:35] Speaker 02:
And so what it's saying is it's pinpointing a unique piece of information.

[00:12:40] Speaker 02:
And the contrast to Smith

[00:12:45] Speaker 02:
is that again, if you have your shelf at the library, I apologize for using the analogy again, but it helps me.

[00:12:53] Speaker 02:
If you have the shelf at the library, I can say this book is on your shelf and you can find it, but nobody else can unless they know where your shelf is.

[00:13:03] Speaker 04:
And they wouldn't.

[00:13:05] Speaker 04:
Okay, before we run out of time, I want to address the motion to amend issue.

[00:13:10] Speaker 04:
Certainly, Eric.

[00:13:12] Speaker 04:
And when you made the motion to amend, what did you argue, or did you argue, that these new limitations made the obviousness rejection go away?

[00:13:25] Speaker 02:
Right.

[00:13:26] Speaker 02:
Well, there are various limitations, but the key one that goes straight to this

[00:13:32] Speaker 04:
I'm not asking you what it was, I'm asking what you argued to the board when you made the amendment.

[00:13:38] Speaker 02:
We argued to the board that to the extent that there was a lack of clarity, and remember in the initiation order, the construction of the information or message identifier was much, much, much broader.

[00:13:51] Speaker 04:
What did you argue when you made the motion to amend it to overcome the obviousness rejection?

[00:13:56] Speaker 02:
That the new claim language

[00:13:59] Speaker 02:
made clear that the message identifier, information identifier, was the same as the message ID in Figure 11, which was a specific code that would identify the location of a piece of information on the server.

[00:14:19] Speaker 04:
Well, how did that change things?

[00:14:21] Speaker 04:
Because the board had already found that claims that required code were obvious.

[00:14:27] Speaker 04:
How did that change anything?

[00:14:28] Speaker 02:
The board hadn't found anything.

[00:14:30] Speaker 02:
The board had simply initiated the proceeding at that point.

[00:14:34] Speaker 04:
Later on, when it found that the claims that required code were obvious.

[00:14:38] Speaker 04:
So this didn't distinguish the amended claims from the original claims in that respect, did it?

[00:14:44] Speaker 02:
Well, Your Honor, the board never

[00:14:46] Speaker 04:
reached that issue because they found that the answer my question the answer the question he found that the claims that required a code were still obvious and you're telling me that the motion for leave to amend said uh... these uh... at limitation all the obvious problem because they require a cup my misunderstanding uh... and i'm not sure you are i do think uh... that

[00:15:12] Speaker 02:
to the extent that the board never reached this issue so that there wasn't an answer to your question in the record below.

[00:15:21] Speaker 02:
I do think that the dependent claims, the code, unique code, address of information claims are much more, the board's ruling with respect to those is much more clearly, well,

[00:15:39] Speaker 02:
it's especially clear that those are erroneous.

[00:15:42] Speaker 04:
Well, I understand that, but I'm asking a different question.

[00:15:45] Speaker 04:
I'm saying you assume that the board was correct with respect to the original claims.

[00:15:51] Speaker 04:
It doesn't seem to me that the argument that you made to the board about the proposed amendment added anything new, because it was just saying, ah, these are different because there's a code here.

[00:16:02] Speaker 02:
But, Your Honor, procedurally what happened is that

[00:16:05] Speaker 02:
What you're saying is it might be harmless error and what I would say in response is what the board should have done is permitted those amendments because we did show that they went to the grounds of unpatentability that was raised in the proceeding and then addressed those on the merits because there were additional limitations that were added with respect to sending an acknowledgement

[00:16:31] Speaker 02:
that were not addressed with regard to, in some of the claims, that were not addressed.

[00:16:38] Speaker 02:
So there were additional limitations that were added in some of the other claims.

[00:16:41] Speaker 02:
But not argued.

[00:16:43] Speaker 02:
No, they were argued, Your Honor.

[00:16:44] Speaker 02:
The point is that, again, and the Board just never dealt with any of that.

[00:16:49] Speaker 02:
The motion to amend in its entirety is in the appendix.

[00:16:54] Speaker 02:
I can find the site for Your Honor.

[00:16:57] Speaker 02:
But the point was is that each of the

[00:16:59] Speaker 02:
We did show how each of the proposed amendments reached a grounds of unpatentability that was asserted in the petition.

[00:17:15] Speaker 02:
So we did satisfy what was required under 42.121, the regulation that the PTO adopted.

[00:17:24] Speaker 03:
Before you sit down, and I realize you're well into your rebuttal time,

[00:17:29] Speaker 03:
Can you speak very briefly as to the denial of your request to supplement?

[00:17:34] Speaker 03:
And I'm really interested with respect to the facts.

[00:17:39] Speaker 02:
Certainly, Your Honor.

[00:17:40] Speaker 02:
So this was a document that had been provided in discovery.

[00:17:45] Speaker 02:
It was, just to back up a second, give context.

[00:17:51] Speaker 02:
The Smith reference had been asserted or considered by the Board in 12 prior

[00:17:58] Speaker 02:
examinations or reexamination proceedings that had always been found, including in a detailed proceeding involving these petitioners, to be distinguishable, not to disclose the limitation at issue here.

[00:18:17] Speaker 02:
What occurred was that this document was a fax

[00:18:20] Speaker 02:
uh... that included uh... fax came into your possession you take me to get it to the board well when it was discovered we tried to get it to the board within a week it had already been provided petitioners

[00:18:34] Speaker 02:
The only reason it was a week was that it took that time to get the hearing to ask for the motion to submit it.

[00:18:40] Speaker 03:
So you had it in your possession for a week and you handed it over to the board?

[00:18:46] Speaker 02:
We had it in our possession long before that.

[00:18:49] Speaker 02:
Yeah, we had it in our possession long before it.

[00:18:50] Speaker 02:
We did not locate it.

[00:18:52] Speaker 02:
before that.

[00:18:53] Speaker 02:
It had also been provided in discovery.

[00:18:55] Speaker 02:
Again, the documents from the inventor were fairly voluminous.

[00:18:58] Speaker 02:
They'd been provided.

[00:19:00] Speaker 02:
This had not been found before.

[00:19:02] Speaker 03:
So it wasn't a newly discovered document?

[00:19:04] Speaker 03:
It was something that was in this big volume of materials that had been collected for quite a while?

[00:19:09] Speaker 02:
Correct.

[00:19:10] Speaker 02:
The significance of it was newly appreciated, but it had been in possession.

[00:19:15] Speaker 03:
What would that be if it goes to the conception date?

[00:19:19] Speaker 02:
Again, because Smith had never been a problem before and so it was only after the proceeding was initiated with the finding that there was a reasonable probability that Smith would be found to render this limitation obvious that the document was, that we appreciated that.

[00:19:40] Speaker 02:
Again, that's not in the record because we weren't given the opportunity even to file a motion to submit the information.

[00:19:50] Speaker 04:
okay thank you.

[00:19:53] Speaker 04:
Mrs. Reister.

[00:20:02] Speaker 00:
Good morning.

[00:20:04] Speaker 00:
May it please the court.

[00:20:05] Speaker 00:
I'm going to address the substantive issues and Mr. Lamarco will be providing the primary remarks on the motion to amend and the excluded evidence but of course I'm happy to answer any questions that you may have on that.

[00:20:19] Speaker 00:
I wanted to start in talking about this issue that they've raised for the very first time in their reply brief about broadcasting to multiple users.

[00:20:31] Speaker 00:
This is an issue that was not raised in the opening, nor was it raised in the proceedings below.

[00:20:37] Speaker 00:
And what they allege is that the 241 system is different than Smith because it can broadcast messages to multiple devices.

[00:20:46] Speaker 00:
But there's nothing in the claim.

[00:20:48] Speaker 00:
that limits the 241 patent to this broadcast functionality.

[00:20:52] Speaker 00:
Claim 1 explicitly resides transmission to one or more devices.

[00:20:59] Speaker 00:
So prior art that teaches transmission to one device is sufficient to show the limitations of one or more devices.

[00:21:08] Speaker 00:
And not only that, HPL didn't invent broadcast messaging.

[00:21:12] Speaker 00:
There's prior art in the record already, the Alanara reference that clearly teaches broadcast messaging.

[00:21:19] Speaker 00:
But because they never raised this issue before the board, the board did not have any opportunity to make any findings about broadcasting.

[00:21:28] Speaker 00:
And with respect to storing messages in an inbox, and that's how we're distinguishing the Smith reference, because Smith stores in an inbox,

[00:21:40] Speaker 00:
I'd first like to say that there's absolutely nothing in the claims that excludes any particular type of storage or addresses at all in the claims where things are stored.

[00:21:51] Speaker 00:
And in fact, in the 241 patent, it explicitly discloses that the 241 patent stores things at user locations and has email inboxes, just like the situation in the Smith patent.

[00:22:07] Speaker 00:
The key point

[00:22:08] Speaker 00:
is that Smith operates the same way as the claims of the 241 patent.

[00:22:14] Speaker 00:
The notification enabled direct retrieval of a specific message.

[00:22:19] Speaker 00:
And Dr. Mitchell explained that person skilled in the art would recognize that Smith uses a unique identifier, like a code, to do that.

[00:22:30] Speaker 00:
And they've never rebutted Dr. Mitchell's testimony.

[00:22:33] Speaker 00:
What they rely on are these so-called interactions where you have to

[00:22:38] Speaker 00:
log in and send these interactions to find the particular message.

[00:22:45] Speaker 00:
Well, what they're referring to there is an email protocol that was in the record below called POP3.

[00:22:53] Speaker 00:
And that protocol was referred to as Exhibit 1025 below.

[00:22:58] Speaker 00:
And what they say is Dr. Mitchell, our expert, admitted all sorts of things about the POP3 protocol that you would have to log in and so forth.

[00:23:09] Speaker 00:
But any purported admission about POP3 or this Exhibit 1025 is completely irrelevant because HPL has no evidence that Smith incorporates this particular email protocol.

[00:23:23] Speaker 00:
Smith is very different from conventional email servers like POP3.

[00:23:28] Speaker 00:
And it's because Smith teaches retrieval of specific messages selected one by one in order to preserve memory space in the phone.

[00:23:38] Speaker 00:
And this is the precise problem that Helfrich claimed that it solved.

[00:23:46] Speaker 03:
Smith doesn't tell us exactly how a particular message is retrieved.

[00:23:56] Speaker 00:
Smith clearly discloses that it repeatedly teaches that the notifications enable direct retrieval of a specific message.

[00:24:05] Speaker 00:
And Dr. Mitchell testified that

[00:24:08] Speaker 00:
that a person of skill and the art reading that would recognize that in order to accomplish that functionality, it would use a unique identifier like a code.

[00:24:18] Speaker 04:
The idea is that it's inherently Smith's.

[00:24:21] Speaker 00:
Well, Dr. Mitchell testified basically two things.

[00:24:25] Speaker 04:
He testified that it was... No, but it's my statement correct and it's reliant on the fact that Smith inherently must do it.

[00:24:33] Speaker 00:
that once filled in the art would recognize that Smith was using a unique identifier like the code to be able to have universal retrieval of those selected messages.

[00:24:45] Speaker 04:
Smith is not retrieving based on the information and email message about who the user was and so on and so forth.

[00:24:53] Speaker 04:
It's using an undisclosed code for the retrieval, right?

[00:24:57] Speaker 00:
It's using a code, which could be a number or any type of thing to formulate that code.

[00:25:03] Speaker 00:
But the point is that there's something unique in the notification message that is enabling the Smith to identify where that message is and to retrieve it.

[00:25:21] Speaker 00:
So Mr. Panna raised another argument that

[00:25:27] Speaker 00:
that Dr. Mitchell had testified that with respect to sending codes sort of back and forth, he said that he doubt that that would happen in terms of sending a particular message ID.

[00:25:41] Speaker 00:
We just want to make a couple points about that.

[00:25:44] Speaker 00:
That the particular testimony that he's referring to is at A6944.

[00:25:50] Speaker 00:
And at A6944,

[00:25:53] Speaker 00:
Dr. Mitchell was not testifying about Smith.

[00:25:56] Speaker 00:
Dr. Mitchell was testifying again about this pop-free email protocol, not Smith, something else.

[00:26:04] Speaker 00:
And importantly, after Dr. Mitchell said, I doubt that would happen, he went on to testify that it's not usually done that way, but a configuration could be possible.

[00:26:17] Speaker 00:
And Dr. Mitchell also testified, again, that the way to make Smith work the way it does, one would naturally use a number or some type of a unique code.

[00:26:29] Speaker 00:
So we submit that the board's final written decision was correct, and it should be affirmed.

[00:26:38] Speaker 04:
OK.

[00:26:38] Speaker 04:
Thank you.

[00:26:52] Speaker 01:
may please the court uh... your honors uh... in i'm addressing uh... the aspect of the board's decision to denial of patent owners motion to amend and the denial to supplement authorization to seek a motion to supplement late information uh... i mean on the face of it the regulations are not entirely clear right that to succeed on a motion to amend you have to show

[00:27:17] Speaker 04:
You have to overcome the rejection that's otherwise been entered by the board, right?

[00:27:26] Speaker 01:
I guess what's happening here is it's a little bit different because there is no rejection, so to speak, the way there is.

[00:27:31] Speaker 04:
The motion's made in advance of the board decision.

[00:27:34] Speaker 04:
Right.

[00:27:35] Speaker 04:
So I guess what the board is saying that in addressing the motion to amend, that the motion to amend will only be granted if it solves the problem which the board ultimately finds with respect to the claims, right?

[00:27:50] Speaker 04:
Is that the way it works?

[00:27:51] Speaker 01:
Yeah, I think that's an accurate characterization.

[00:27:54] Speaker 01:
What we've got is

[00:27:56] Speaker 01:
a petition comes in, they bring forth grounds of unpatentability of particular claims, the board assesses that.

[00:28:02] Speaker 01:
If certain claims are deemed

[00:28:05] Speaker 01:
there's evidence showing unpatentability, and patent owner can come forth with a motion to amend and say, I want to substitute a claim, for example.

[00:28:11] Speaker 01:
And the motion to amend is addressed in the final court decision, is that right?

[00:28:15] Speaker 04:
That's correct, Your Honor.

[00:28:16] Speaker 04:
So at that time, they know what they've decided.

[00:28:19] Speaker 04:
Right.

[00:28:19] Speaker 04:
And they can assess whether the motion to amend solves the problem that they've found.

[00:28:24] Speaker 04:
Right.

[00:28:25] Speaker 01:
And I think it's more than just solving the problem that they've found, because what the board has said, and we've applied our rules that way,

[00:28:34] Speaker 01:
When you come forth with a new claim, a claim that was never in this patent before, the board is saying to the patent owner, you need to give us an assurance that what you've proposed in your motion to amend is a patentable claim over prior art that you're aware of.

[00:28:50] Speaker 01:
That's what basically what the board says.

[00:28:51] Speaker 04:
But the regulation doesn't say that all that clearly, right?

[00:28:54] Speaker 01:
Well, I think the way we see the regulations is there's actually two regulations.

[00:28:58] Speaker 01:
There's one regulation that talks about motions to amend and the mechanics of how you would submit that.

[00:29:03] Speaker 01:
And then there's another regulation about motions in general before the board and motions in general before the board specifically articulates that the burden is on the movement to prove or to meet the burden to prove that they're entitled to the relief that they request.

[00:29:17] Speaker 01:
And this is a motion just like any motion and the relief that the patent owner is seeking is amendment to their patent.

[00:29:25] Speaker 04:
All depends on what the substantive standard for amendment is.

[00:29:28] Speaker 04:
and that's what's missing in the regulations is the substantive standard of what you have to show to get the amendment.

[00:29:34] Speaker 01:
Well, I think the board's approach, the agency's approach to the regulations is, look, you're coming in and trying to amend your patent, and before we're going to let you change that patent with a new claim, you're going to have to give us upfront something to show the patent.

[00:29:49] Speaker 04:
Well, that would be a reasonable regulation.

[00:29:50] Speaker 04:
The problem is that it hasn't been promulgated.

[00:29:53] Speaker 04:
Is there any ongoing process to clarify the regulations?

[00:29:58] Speaker 01:
currently we we think the regulation does say that we think when you read forty two point two oh and you read forty two i believe it's one twenty one the two regulations the other they do we believe in the end now that the board has issued other decisions that explain what has to be in a motion to amend we think there is adequate notice not just in the rules the rule history answers there's nothing planned to clarify well currently i believe there was a public

[00:30:25] Speaker 01:
blog by the director of the PTO saying that in the event when we talk about motions to amend, that the PTO does consider what the public has to say.

[00:30:35] Speaker 01:
And in this instance, where we talk about burden on the patent owner to come forth and show patentability, over what?

[00:30:43] Speaker 01:
Over prior art in the record?

[00:30:44] Speaker 01:
Over prior art that you're aware of?

[00:30:46] Speaker 01:
That question, I believe the blog did say, the agency is hearing that and will consider that.

[00:30:52] Speaker 01:
Right.

[00:30:53] Speaker 01:
Yeah.

[00:30:53] Speaker 01:
I mean, right now there's no proposed rule.

[00:30:55] Speaker 01:
If that's what you're asking, is there a Federal Register notice for the proposed rule?

[00:30:58] Speaker 01:
Not at the moment.

[00:30:59] Speaker 01:
But the agency has expressed an intent to talk about that topic and take feedback from the public.

[00:31:07] Speaker 01:
And keep in mind, the rules are relatively new.

[00:31:11] Speaker 01:
And the rule process is an evolution where rules are made.

[00:31:15] Speaker 01:
We go through a rule process.

[00:31:17] Speaker 01:
We have a rule history.

[00:31:18] Speaker 01:
We do our best to explain the rules.

[00:31:19] Speaker 01:
We apply the rules.

[00:31:21] Speaker 01:
And then, yes, there are refinements that take place to those rules.

[00:31:24] Speaker 01:
And it is my understanding that refinements will take place, but we still believe in this instance, this motion to amend was deficient for a number of reasons.

[00:31:33] Speaker 01:
I think the board listed three different reasons why it was deficient.

[00:31:35] Speaker 01:
That's why I denied the motion.

[00:31:37] Speaker 04:
What about the question of our deference, which is not one that we've decided yet as to whether the board, as opposed to the director, has the ability to interpret the regulations and earn deference by doing so?

[00:31:51] Speaker 01:
all of our rules are promulgated by the director, all of them.

[00:31:54] Speaker 01:
These are board rules that promulgated by the director.

[00:31:58] Speaker 04:
Right.

[00:31:58] Speaker 04:
What case says that where one part of the agency promulgates the rules, that another part of the agency has the authority to interpret them?

[00:32:08] Speaker 01:
I believe we cited McDaniel in our case, and McDaniel was about a board rule

[00:32:13] Speaker 01:
And I believe the board applied that rule.

[00:32:15] Speaker 01:
And I believe in McDaniel, this court spoke about how an agency gets deference in interpreting its own rules.

[00:32:22] Speaker 01:
So I believe when the board applies a rule and interprets the rule, yes, indeed, that's viewed as the agency interprets the rule.

[00:32:29] Speaker 01:
So the board doesn't promulgate the rule.

[00:32:31] Speaker 01:
The director.

[00:32:31] Speaker 01:
Right.

[00:32:31] Speaker 01:
The director promulgates the rule.

[00:32:32] Speaker 01:
But the board acts on behalf of the agency when it applies the rules.

[00:32:36] Speaker 01:
I mean, that's what's happening.

[00:32:37] Speaker 01:
When you get that decision that you're reviewing right now, the board decision, that is the final decision of the agency.

[00:32:43] Speaker 01:
And that's what's being reviewed by this court.

[00:32:45] Speaker 01:
So I don't really see the difference.

[00:32:47] Speaker 01:
I mean, the fact is the board applied the rule and interpreted those rules on behalf of the agency when it applied them.

[00:32:53] Speaker 01:
And I think that's very similar to what happened in McDaniel, which I think we did cite in our brief.

[00:33:02] Speaker 01:
Yeah, page 20 of our brief, Your Honor, for the proposition.

[00:33:09] Speaker 01:
an agency's interpretation of its own regulations is normally entitled to considerable deference.

[00:33:14] Speaker 01:
That's the board's interpretation of the director's regulations?

[00:33:17] Speaker 01:
Right.

[00:33:18] Speaker 01:
Well, that's exactly what happened in McDaniel.

[00:33:19] Speaker 01:
There was a rule that the agency promulgated, just like this rule, and the board applied it and interpreted it.

[00:33:25] Speaker 01:
And then Ray McDaniel says the agency's entitled to deference, and it was the board that was doing it in that case.

[00:33:31] Speaker 01:
So that's exactly very similar to the question that you're asking.

[00:33:36] Speaker 01:
it we didn't we that's not the our supreme court case but the same principle at the federal servant level but anyhow we can yes the agency is kids always considering input for example i think one thing that the agency spoke about was the public was head was found problematic that it was a fifteen page limit for motions to amend and i believe the director announced that we we understand that were sensitive to the fact that fifteen page maybe too short of a lot of pages

[00:34:06] Speaker 01:
And I believe the director said, yeah, there's going to be a change in policy where they're going to give you 25 pages.

[00:34:11] Speaker 01:
And what will happen is the board, in its scheduling orders, will provide the 25 pages.

[00:34:16] Speaker 01:
Now up until this point, if someone wanted 25 pages, they could have always moved for leave to have 25 pages, just like you can ask this court for more words.

[00:34:27] Speaker 01:
yeah if our work if our if our word limits not enough we've come to the court and we ask for more words in the court court finds our request is justified the court permits us to have the more words similarly if a particular patent owner came forth with a motion to amend and they felt fifteen pages wasn't enough they can ask the board for more pages now the agency said we're gonna give you twenty five pages so that's an example where the policies and the procedures are evolving to accommodate

[00:34:53] Speaker 01:
you know, and work with the public to make sure the process works.

[00:34:57] Speaker 01:
But I still, you know, that doesn't mean we think that this motion to amend in any way was improperly decided.

[00:35:04] Speaker 01:
We think the Board properly decided this motion and denying it for the reasons expressed in our brief, Your Honor, as well as the Board decision.

[00:35:12] Speaker 01:
Okay.

[00:35:12] Speaker 01:
Was there, or are there any other questions, Your Honor?

[00:35:15] Speaker 04:
Thank you.

[00:35:20] Speaker 04:
Mr. Panner, you have two minutes.

[00:35:23] Speaker 02:
Thank you very much Judge Dyke.

[00:35:24] Speaker 02:
I think that actually your question to Ms.

[00:35:27] Speaker 02:
Reister went right to the heart of it.

[00:35:29] Speaker 02:
And you said, didn't the board find that there was inherent disclosure in Smith of this idea of a code or a unique identifier that allowed you to go to the information?

[00:35:41] Speaker 02:
And I think that the evidence shows

[00:35:49] Speaker 02:
is that it is not necessary to have that unique identifier, much less a unique code or an address of the information in storage, to permit the retrieval of a message after interaction between a user and the pre-existing messaging system.

[00:36:11] Speaker 02:
That is why the back and forth about the email system that was

[00:36:19] Speaker 02:
was understood at the time is so important.

[00:36:24] Speaker 02:
In talking about, for example, how voicemail is retrieved in the specification of Smith, what it says is when you press the button that says I want this voicemail, what all that's happening is that instead of your having to enter the touch tones to be able to get your voicemail, there's a system set up so that the phone will do it automatically.

[00:36:49] Speaker 02:
In other words, there's nothing new.

[00:36:51] Speaker 02:
There's no sort of special identifier sent.

[00:36:53] Speaker 02:
There's simply an interaction that's automated on the phone.

[00:36:57] Speaker 02:
And this was something that petitioners conceded an argument before the board.

[00:37:02] Speaker 02:
This is an overlay for existing messaging systems in which there's already methods for retrieving.

[00:37:09] Speaker 02:
And so there's nothing in Smith that discloses that.

[00:37:12] Speaker 02:
The email example is very important because if you read through the disclosure in Smith and you read the email example, it says,

[00:37:18] Speaker 02:
you know, you select the message and then you can retrieve it.

[00:37:21] Speaker 02:
And I think it's natural to say, well, then there must be some sort of a code that allows you to do that.

[00:37:29] Speaker 02:
And the reason why the testimony of Dr. Mitchell on CROSS and the POP3 disclosure is so important is because you don't

[00:37:38] Speaker 02:
need a unique code, and indeed you would not use a unique code to identify that email message.

[00:37:45] Speaker 03:
Instead, what you do is you have this pre-existing... There's a property account where you have a message that says, you have mail.

[00:37:55] Speaker 03:
You touch that and it takes you and downloads the list of mail that you have, all the email messages, and then you select the one that you want, and then that takes you to the precise

[00:38:08] Speaker 03:
email message and under Smith it's that latter part.

[00:38:14] Speaker 03:
It's going from the email message and then clicking on that and it takes you to the specific email message.

[00:38:23] Speaker 02:
I think that's right and there's two points about that which is why Smith doesn't render the 241 approach obvious.

[00:38:30] Speaker 02:
Remember 241 says that the selective call signal

[00:38:36] Speaker 02:
the initial page includes a message identifier.

[00:38:40] Speaker 02:
So it's in the notification.

[00:38:42] Speaker 02:
That's not the way it's done with the email example that you've talked about.

[00:38:47] Speaker 02:
Instead, you'd log in, then you get the list of messages, and you would correlate it and pick the one that you want.

[00:38:54] Speaker 02:
And if you read the Smith claim, what it says is you send a sender and a message type in the notification.

[00:39:02] Speaker 02:
That's what's included.

[00:39:05] Speaker 02:
Again, the key difference is that the 241 includes that, so I was saying there were two points.

[00:39:17] Speaker 02:
The first is that in 241 that unique identifier is included in the selective call signal that's sent out as the page.

[00:39:25] Speaker 02:
The second difference is that there's nothing unique about a number 34567.

[00:39:30] Speaker 02:
It's only unique because you've logged in.

[00:39:35] Speaker 02:
and said, I want to look at my inbox.

[00:39:38] Speaker 02:
I don't want to, I've now told you through information that's not sent in the notification, right?

[00:39:45] Speaker 02:
And that if it went to anybody else, they would look at that and it would say, message number seven from Panner.

[00:39:52] Speaker 03:
The fact that your list of messages pops up when you log in, that also implies that a message has been received by your computer that there's this new mail item.

[00:40:04] Speaker 02:
So what happens in Smith is that when there's email received, there's a separate SMS message that's sent out and it says there's an email.

[00:40:15] Speaker 02:
And what the claim is, is it would have disclosed the sender and the message type.

[00:40:18] Speaker 02:
So there's an email from Panner.

[00:40:22] Speaker 02:
And then there's nothing further that's claimed or disclosed about how, after you go to retrieve that email,

[00:40:33] Speaker 02:
email is picked up.

[00:40:35] Speaker 02:
But what became clear through the testimony is that there are perfectly good ways to do that that do not involve including any kind of a unique ID in that notification.

[00:40:48] Speaker 02:
And indeed that's why it was so significant.

[00:40:51] Speaker 03:
What's illustrated in the... Call that a code or a unique ID and Smith does require that additional step though, right?

[00:41:00] Speaker 02:
Smith requires a logging in.

[00:41:03] Speaker 04:
What you're saying is that you're arguing that Smith has a unique ID that's personal to the individual, but doesn't differentiate the message from, with respect to other people.

[00:41:18] Speaker 02:
Well, it wouldn't be a code or a unique code, and it certainly wouldn't be in an address of information in the system, right?

[00:41:24] Speaker 02:
In other words, what it would do is it would say, you have message number seven from Pam.

[00:41:30] Speaker 02:
And then, now, there could be lots of message number sevens from PANR.

[00:41:35] Speaker 02:
But once you log in, and so the notification doesn't identify a message uniquely at all, right?

[00:41:42] Speaker 02:
It provides data about a message, descriptive data.

[00:41:45] Speaker 02:
What allows you to find the message is the fact that you log on, you have a password, and now it knows, okay, we're talking about Joffrey's inbox.

[00:41:57] Speaker 04:
And so Joffrey has- It must be a unique identifier

[00:42:00] Speaker 04:
to find it within that inbox, right?

[00:42:03] Speaker 02:
No, Your Honor, because if you think about, again, there could be a hundred different people getting message number seven from Panner.

[00:42:12] Speaker 04:
The identity of the... I'm not here addressing what I said.

[00:42:14] Speaker 04:
What I'm saying is you say it sends you to your inbox, the individual's inbox, but with respect to that individual inbox, there must be a unique identifier.

[00:42:23] Speaker 02:
But the notification doesn't send you to your inbox.

[00:42:25] Speaker 02:
The only thing that sends you to your inbox is that you, after getting the notification,

[00:42:31] Speaker 02:
You have a password.

[00:42:33] Speaker 02:
You log on.

[00:42:34] Speaker 02:
Now it knows who you are.

[00:42:37] Speaker 02:
And so when it says, message number seven from Panner, it says, oh, OK, it's not just message number seven from Panner.

[00:42:43] Speaker 02:
It's message number seven from Panner in Joffrey's inbox.

[00:42:47] Speaker 02:
Now, there could be message number seven from Panner in Boswick's inbox or in Criven's inbox.

[00:42:55] Speaker 02:
And the fact is that if you forward,

[00:43:00] Speaker 02:
I see that I'm about to run out of time.

[00:43:03] Speaker 02:
You're about to run out of time.

[00:43:05] Speaker 02:
The point is that, and this is why these examples are so illustrative of the many people getting the message ID or forwarding the message ID.

[00:43:14] Speaker 02:
The message ID uniquely identifies a piece of information.

[00:43:18] Speaker 02:
Smith does not disclose that, does not require it, would not teach it, teaches away from it.

[00:43:24] Speaker 04:
Okay.

[00:43:24] Speaker 04:
Thank you, Mr. Smith.

[00:43:25] Speaker 04:
Thank you.

[00:43:26] Speaker 04:
Thank both counsels.

[00:43:27] Speaker 04:
And that concludes our session for today.

[00:43:39] Speaker ?:
You don't have to go to a court of adjournment.