[00:00:01] Speaker 02: Good morning. [00:00:07] Speaker 02: We have five cases on the calendar this morning. [00:00:13] Speaker 02: Four patent cases and a government employee case. [00:00:15] Speaker 02: The latter has been submitted on the briefs and will not be argued. [00:00:21] Speaker 02: First case, first two cases. [00:00:25] Speaker 02: which have been combined, and each side has 20 minutes. [00:00:30] Speaker 02: The Eidos Communications versus Skype, 2014, 1658, and 1660. [00:00:37] Speaker 02: Mr. Nissen, good morning. [00:00:44] Speaker 02: Good morning. [00:00:49] Speaker 04: May it please the court. [00:00:51] Speaker 04: The two main issues in these two appeals [00:00:54] Speaker 04: is the meaning of the word initial in the 744 patent and origination address in the 779 patent. [00:01:01] Speaker 04: Turning to the 744 patent first, the ordinary meaning of initial is happening or being at the very beginning, first. [00:01:10] Speaker 04: Thus, items below argued that controlling initial transmission means controlling the first transmission from the sender's origination address. [00:01:19] Speaker 04: It does not include [00:01:20] Speaker 04: exercising control or a subsequent retransmission of that message at some other point in the system. [00:01:27] Speaker 04: The board, however, ignored the plain meaning of initial. [00:01:30] Speaker 04: Instead, the board construed controlling initial transmission to be, quote, includes controlling the transmission of a voice message from a voice message system 10 or substantially similar voice message system 50 to recipient system, the voice message system 10, or substantially similar voice message system 50, [00:01:49] Speaker 04: being a component that stores message data and instructions and is located remote from the center's system. [00:01:55] Speaker 04: There are several problems with that definition. [00:01:58] Speaker 04: First, you note that they repeatedly refer to the fact that voice messages... You don't dispute the use of the broadest reasonable interpretation, I believe. [00:02:07] Speaker 04: That is correct, Your Honor. [00:02:08] Speaker 04: There's one slight wrinkle in this case. [00:02:11] Speaker 04: The two patents both have patent term extension and the 779 actually expires on July 3rd. [00:02:18] Speaker 04: based on the unpublished Facebook opinion from last September were a decision that could come out after that point with an expired patent according to Facebook, you should use the Phillips standard. [00:02:28] Speaker 04: Now, we're not sure there's any particular difference between those two in terms of this case, and it's also somewhat weird in the posture of this case, but that's what it is. [00:02:37] Speaker 04: You raise it just to entertain us. [00:02:40] Speaker 04: I want to be accurate because technically after July 3rd for the one patent. [00:02:45] Speaker 01: But the answer to my question is no, you don't dispute the broadest reasonable interpretation. [00:02:49] Speaker 04: That is correct. [00:02:50] Speaker 00: And the 744 is not the one expiring? [00:02:53] Speaker 04: It expires April of next year. [00:02:54] Speaker 04: It's patent term extension was longer. [00:02:59] Speaker 04: You'll notice that the board several times stated that VMS, Voicemess system 10 is substantially similar to Voicemess system 50. [00:03:08] Speaker 04: That was a mistake that they made in their order below. [00:03:11] Speaker 00: In their order below... Can I ask you one question about the specification? [00:03:14] Speaker 00: I'm sorry for not knowing the answer to this. [00:03:17] Speaker 00: Does the specification talk about systems, including prior art systems, that would try to reach the recipient more than once? [00:03:37] Speaker 04: I'm sorry, Your Honor, I don't believe so. [00:03:40] Speaker 00: So the idea that, here's what I'm thinking, if there would be systems that would try once, fail, try again, then it suddenly becomes somewhat more sensible to think about the initial transmission as being [00:04:00] Speaker 00: the first effort to reach the recipient as opposed to the second effort to reach the recipient as opposed to legs on or hops on a trip from origin to recipient where the initial is picking out the earlier legs rather than the later legs. [00:04:20] Speaker 04: Well, I respond in a couple of ways to that, Your Honor. [00:04:25] Speaker 04: First off, [00:04:28] Speaker 04: When you talk about subsequent transmissions in the prior art, you actually had to get a dedicated voice circuit to go off hook, to reach Peppy or what have you. [00:04:38] Speaker 04: And those are limited resources. [00:04:40] Speaker 04: And if the phone is busy, you've tied up a limited resource for no reason. [00:04:44] Speaker 04: But secondly, if you look at figure three, I'm going to talk about it later, but I'll jump to it. [00:04:49] Speaker 00: Is what you just described, in fact, an example of what at least I was trying to describe, namely, a system in which [00:04:57] Speaker 00: to try to get to the recipient, it's busy, you have to try again. [00:05:00] Speaker 04: Yes, but I will say, I will admit that even with PEPI, or let me step back from PEPI, yes, keep in mind this is a voicemail message system in general. [00:05:16] Speaker 04: Now, certainly the user can program that I don't want to receive voice messages. [00:05:20] Speaker 00: Or it can be full, the box can be, the voicemail box can be full and maybe it gets emptied out. [00:05:27] Speaker 04: It would certainly be the case that once you have a circuit, if you keep sending it, you're just tying up that circuit longer. [00:05:44] Speaker 04: But the point of this invention is not to have a circuit in the first place, not to be sending a message on that's going to be blocked. [00:05:51] Speaker 04: That if the phone is busy, you don't send a message anywhere. [00:05:55] Speaker 04: And that's the whole point of the convention. [00:05:57] Speaker 04: Or if the end user doesn't want to receive a message from me, for example, instead of sending it all the way to the end, tying up system resources, this system, by controlling the initial transmission, stops that from happening. [00:06:09] Speaker 04: So I think what you're saying is, yes, if you tried five times, that would be more inefficient still. [00:06:20] Speaker 04: But the point of this system is you wouldn't try five times. [00:06:23] Speaker 04: You wouldn't even try once. [00:06:25] Speaker 04: because the VMS on the sender side knows what the user wants, what the recipient wants, and so he doesn't tie up those resources. [00:06:40] Speaker 04: The board's construction, like I said, said the VMS 10 and 50 are substantially similar. [00:06:47] Speaker 04: They are not. [00:06:47] Speaker 04: They are very separate and different inventions. [00:06:50] Speaker 04: What was substantially similar was the handsets used to access, and in both cases the parties agree it's just a dumb handset, ETMF, like phones have been for 50 years. [00:07:01] Speaker 04: In fact, in the response group here, the board is backed off from that. [00:07:05] Speaker 04: In their definition, they lift out anything about substantially similar, and they even admit that figure one and figure three [00:07:13] Speaker 04: are not substantially similar because the 744 pattern describes the process specific to it. [00:07:18] Speaker 04: The whole basis was we want to take the centralized system of Figure 1, and which we can see is anticipated by Pepe, and say, well, since Figure 3 is the same as Figure 1, we're done. [00:07:33] Speaker 04: And that's why they say that the, in their definition, that the voice message system is located remote from the center system. [00:07:41] Speaker 04: It's not in Figure 3. [00:07:43] Speaker 04: During prosecution, we added the phrase initial. [00:07:48] Speaker 04: The word initial. [00:07:49] Speaker 04: The board, however, says we added initial transmission. [00:07:53] Speaker 04: That's just incorrect. [00:07:54] Speaker 04: If we added initial transition, then it would have said controlling a nothing. [00:07:58] Speaker 04: That wasn't what it said. [00:07:59] Speaker 04: It said controlling a transmission. [00:08:01] Speaker 04: During prosecution, we had art raised against us, in particular, our bill. [00:08:07] Speaker 04: It's in the appendix A7378. [00:08:10] Speaker 04: Arbel Figure 1 looks a lot like Pepe Figure 1. [00:08:13] Speaker 04: You have a phone over here going to the public switch network into the Arbel Invention. [00:08:18] Speaker 04: The Arbel Invention does stuff to the call based on what the recipient wants done. [00:08:23] Speaker 04: To get over that, we added the word initial. [00:08:28] Speaker 04: Now, one of the interesting things about the board's construction... What did you add it to? [00:08:33] Speaker 04: Transmission. [00:08:34] Speaker 04: Controlling a transmission to controlling an initial transmission. [00:08:37] Speaker 04: So transmission is already there. [00:08:39] Speaker 04: Transmission is already there. [00:08:43] Speaker 04: Once again, their definition doesn't change whether initials are there or not, taking out the stuff about system 50, taking out an initial. [00:08:51] Speaker 04: Controlling transmission, quote, includes controlling the transmission of a voice message from a voice message system [00:08:59] Speaker 04: The voice message system being a component that stores message data and instruction and is located remote from the center system. [00:09:10] Speaker 04: Nothing in the definition changes. [00:09:12] Speaker 04: But it's not proper to treat words and acclaim as superfluous, especially when that word in particular was used to overcome the prior art. [00:09:21] Speaker 04: On page 48 of either of our briefs, it has figure 1 and figure 3 from the pack. [00:09:28] Speaker 04: Now if you look at Figure 3, it says in the specification at Column 7, Line 25, User X speaks into a telephone, 56, to create or originate for User Y a voice message from which Voice Message System 50 generates and stores voice message data. [00:09:51] Speaker 04: What this says is User X goes off book and then says, [00:09:58] Speaker 04: Honey, I'm coming home late. [00:09:59] Speaker 04: Maybe I have a three-minute message, three-second message, whatever it is. [00:10:03] Speaker 04: And that raw message gets sent to voice message system 50, which according to specifications, generates and stores the voice message data, which includes both the body of the message, where it's going to, and then one of the questions is, how is it routed? [00:10:18] Speaker 04: At that point, if it has the instructions from the recipient, it can use those to decide how to route it, or the specification shows all through Figure 9 that it can send a message to Voice Message System 52 and get what that person wants. [00:10:34] Speaker 04: And 58 may not want calls from me. [00:10:38] Speaker 04: Might say block the call. [00:10:40] Speaker 04: If so, that message that again was just generated and stored in 50 gets blocked. [00:10:46] Speaker 04: That is controlling the initial transmission of that message. [00:10:49] Speaker 04: It might be sent on to 58 if 58 wants it and that's fine. [00:10:54] Speaker 04: Coming out of 50 is still controlling the initial transmission. [00:10:57] Speaker 04: Another place it could go is 50 to 58, excuse me, the phone could have forwarded his phone to somewhere else, even off their network. [00:11:05] Speaker 04: In that case, it would go to the voice message system, up to the network interface device, and then into the public switch network, including, it could go, the same figure one from Peppy, it could go into the PCI of Peppy. [00:11:18] Speaker 04: Exactly nothing stopping. [00:11:19] Speaker 04: But Peppy's not controlling the initial transmission. [00:11:22] Speaker 04: It's gotten the initial transmission. [00:11:23] Speaker 04: Now, subsequent retransmissions, it will [00:11:26] Speaker 04: It can do whatever it wants, but it cannot control the initial transmission. [00:11:30] Speaker 04: And nothing in Peppy can control the initial transmission. [00:11:35] Speaker 04: That is why adding initial dot over R, excuse me? [00:11:38] Speaker 01: Your view of the initial transmission, then, is the transmission from user X to 50 voice message system. [00:11:46] Speaker 04: I know, Your Honor. [00:11:47] Speaker 04: It's from 50, in the case of this, to 60. [00:11:50] Speaker 04: Because the specification, again, says that user X creates a voice message [00:11:56] Speaker 04: But then, which is the raw data of the voice, but then again, column seven, voice message system 50 generates and stores the voice message data, what the patent refers to as the electron. [00:12:12] Speaker 03: Okay. [00:12:14] Speaker 04: Excuse me. [00:12:22] Speaker 04: The patent refers to that as the initial transmission of the electronic message data. [00:12:27] Speaker 04: And that is created by 50. [00:12:29] Speaker 04: And 50 is what has control of that. [00:12:31] Speaker 04: And in the PEPI system, it does not. [00:12:33] Speaker 04: Because the PTO, the board, read the initial out of the claim, its construction is incorrect. [00:12:40] Speaker 04: And we would ask for this claim to be remanded. [00:12:43] Speaker 01: They didn't read it out of the claim. [00:12:44] Speaker 01: They just read it differently than you do. [00:12:46] Speaker 04: Well, Your Honor, I would argue they read initial transmission and transmission to be the same. [00:12:50] Speaker 04: And if initial transmission and transmission are the same, and we added initial, I would argue they read it out. [00:12:55] Speaker 04: Perhaps I'm wrong, but that's my belief. [00:12:58] Speaker 04: Regarding the 7-7-9 pattern, many of the arguments are the same, and I'm not going to waste the Court's time by repeating them. [00:13:04] Speaker 04: But there are a couple points I want to make about the 7-7-9 pattern. [00:13:08] Speaker 00: Can I just ask on that? [00:13:10] Speaker 00: Is it right that there are two independent grounds on the 7-7-9? [00:13:17] Speaker 00: One is the data origination clause and the other is the processing clause. [00:13:23] Speaker 04: Where the prior two goes into the process. [00:13:24] Speaker 00: Exactly. [00:13:26] Speaker 00: And each one would independently support the board, even if the other one were wrong, right? [00:13:34] Speaker 03: Yes, it does. [00:13:38] Speaker 04: On the seventh of a nine, referring to the first issue you just raised, one, the board gave no construction of these claims below at all. [00:13:45] Speaker 04: The first time they actually construed these claim terms is in the response brief. [00:13:48] Speaker 04: In the response brief, they say, quote, prior to transmitting the digitized voice data from an origination address of the sender to the recipient is satisfied so long as the data has not reached the recipient. [00:14:01] Speaker 04: This argument is wrong for two reasons. [00:14:03] Speaker 04: First, prior to transmission does not mean prior to reception. [00:14:08] Speaker 04: If I told my wife, I'll take the garbage out before I mail this letter to my mother. [00:14:15] Speaker 04: Three hours later, I'm watching television and she says, what about the garbage? [00:14:19] Speaker 04: Oh, my mother hasn't received the letter yet, so I haven't mailed it yet. [00:14:23] Speaker 04: That's not how you read prior to transmission versus prior to reception. [00:14:26] Speaker 04: They're very different things. [00:14:28] Speaker 04: prior to transmission means when it's set, before it's transmitted, not before it's received. [00:14:32] Speaker 04: That's the first error. [00:14:35] Speaker 04: The second is that this reads out of the... Excuse me. [00:14:44] Speaker 04: The second error is the construction for origination address of the sender. [00:14:49] Speaker 04: It was above, but as it was true for initial, we added this overcome prior art, and you can read their construction and take that [00:14:57] Speaker 04: turn them out and nothing changes. [00:14:59] Speaker 04: I'll read it. [00:14:59] Speaker 04: The claims temporal limitation prior to transmitting the digitized voice data is satisfied so long as the data has not reached the recipient. [00:15:07] Speaker 04: Nothing changed. [00:15:08] Speaker 04: So from the original address of the recipient is a nullity. [00:15:12] Speaker 04: That cannot be correct. [00:15:15] Speaker 00: But it's also true that the prosecution history is essential, forget about essentially, is actually devoid of explanation of what work that amendment was supposed to be doing. [00:15:29] Speaker 04: I would prefer a more robust prosecution history, yes, Your Honor, but I will say the prosecution history specifically says our bail in combination with another reference makes this obvious, which we added initial, we added [00:15:43] Speaker 04: uh... origination address and it was no longer obvious. [00:15:46] Speaker 04: If you look at figure one of Arbel, that's what it is. [00:15:50] Speaker 04: But it is true. [00:15:51] Speaker 04: It's not a robust prosecution history. [00:15:54] Speaker 02: Mr. Nissen, you wanted to save a good bit of time for a bottle. [00:15:57] Speaker 02: You may continue or sell it as you choose. [00:16:01] Speaker 04: I appreciate that. [00:16:04] Speaker 04: The board says that origination address refers to the telephone which call origination. [00:16:08] Speaker 04: That this is not the same as the separate sender's network subsystem [00:16:12] Speaker 04: which is downstream of the sender's telethon. [00:16:16] Speaker 04: Again, that is wrong. [00:16:17] Speaker 04: It wouldn't cover land, which is a perverted embodiment. [00:16:20] Speaker 04: It's also wrong because, as I said previously, it says that user x speaks in telephone 56 to create or originate for user y a voice message from which voice message system 50 generates and stores voice message data. [00:16:34] Speaker 04: If it's downstream, you have to be routed there. [00:16:36] Speaker 04: So that has to be incorrect. [00:16:37] Speaker 04: Just real briefly, on the second argument, they say that prior to doesn't go. [00:16:42] Speaker 04: to both limitations, it only goes to the limitation prior to transmitting the digitized voice data. [00:16:51] Speaker 04: The problem with that is you have to read those in context, read them together. [00:16:56] Speaker 04: Prior to transmitting, I'll make it short, prior to transmitting the digitized voice data, obtaining a recipient transmission instruction over the computer network, processing the digitized voice data in accordance with the recipient transmission instruction. [00:17:09] Speaker 04: The first limitation I read refers to prior to transmitting the digitized voice data. [00:17:13] Speaker 04: The second, processing the digitized voice data. [00:17:16] Speaker 04: There's no fair reading that that's not the same digitized voice data. [00:17:19] Speaker 04: It talks about attaining recipient transmission instruction in the first one. [00:17:23] Speaker 04: The second one, recipient transmission instruction. [00:17:26] Speaker 04: Those are the same things. [00:17:27] Speaker 04: They have to happen at the same time. [00:17:29] Speaker 04: I'll retain them and remain in my copyright book. [00:17:32] Speaker 02: We will hold it for you, Mr. Matal, for the PTO. [00:17:42] Speaker 05: Your Honor, may it please the court? [00:17:45] Speaker 05: The patents in this case claim very similar inventions directed to controlling the transmission of a voice message between a sender and a recipient. [00:17:53] Speaker 05: The prior art, however, the Pepe reference, already discloses controlling a voice message at an intermediate location in between the sender and the recipient. [00:18:01] Speaker 01: Speak up, please. [00:18:03] Speaker 05: I'm sorry. [00:18:04] Speaker 05: In order to overcome the prior art, IDOS attempts to reinterpret its claims to require [00:18:10] Speaker 05: controlling the voice message at an earlier location at either a sender's voice message subsystem in the 7-7-9 patent or at the telephone itself in the 7-4-4 patent. [00:18:21] Speaker 05: The difficulty with this position though is that the claims simply do not state those terms. [00:18:26] Speaker 00: What in your view does the word initial mean and relatedly why, what is the minimum content of that word that made the addition of that word by amendment [00:18:40] Speaker 00: significant enough to change a rejection into an allowance? [00:18:45] Speaker 05: It's an excellent question, Your Honor, and I'm afraid I don't have an answer. [00:18:49] Speaker 05: The board, the examiner, never looked into that particular issue. [00:18:53] Speaker 05: I can speculate. [00:18:55] Speaker 05: Maybe it could be construed to regulate repeated calls to the same person. [00:18:59] Speaker 05: In some of the systems also, a smaller message is made, for example, to the processing system before the bulk of the voice message data is sent. [00:19:10] Speaker 05: in order to avoid sending the bulk of that data if it's going to be blocked. [00:19:16] Speaker 00: Were those, were the bases of the pre-amendment rejections, did those bases have, that is the prior art bases, did they discuss the kinds of things that you just mentioned which might then be distinguished by the addition of the word initial in one case, the addition of the [00:19:38] Speaker 00: the whatever the phrase is from the origination address or something in the other case. [00:19:43] Speaker 00: I mean, I certainly found no written explanation. [00:19:48] Speaker 00: Um, but then there's something, there's some gap between finding a written explanation and saying this was completely insignificant. [00:19:57] Speaker 00: We know it was not completely insignificant because a rejection was changed to an allowance. [00:20:02] Speaker 00: So the question is, what can one infer from the prior art basis of the rejection? [00:20:07] Speaker 00: suddenly changed into an allowance, and if maybe one can infer something, maybe one can't. [00:20:11] Speaker 00: But on the other hand, giving this term zero content is a little troubling. [00:20:19] Speaker 05: Your Honor, I'd be much happier if I could come to this court offering some explanation of what the examiner and the applicant understood when those terms were added. [00:20:27] Speaker 05: But unfortunately, the prosecution is simply devoid of explanation. [00:20:31] Speaker 05: This is a case where [00:20:32] Speaker 05: applicants often use the strategy of saying as little as possible during prosecution in order to avoid being subject to any estoppel. [00:20:40] Speaker 00: To get back to my question, which I then stepped on by elaborating, does the prior art that was the basis for the rejection in either case talk about any basis or show any basis, admittedly not discussed, [00:21:01] Speaker 00: Either of the two additions would, in fact, overcome. [00:21:07] Speaker 05: I don't know, Your Honor. [00:21:08] Speaker 05: The prior art simply wasn't analyzed either before the board in this case or even in the briefing in this court. [00:21:15] Speaker 05: All we have is a prosecution record that, again, the office would analogize this case to this court's decision in the 3M properties case from 2013. [00:21:27] Speaker 05: where the court recognized, yes, you know, claim terms were added in order to overcome prior art. [00:21:32] Speaker 05: However, because nothing was said to elucidate how the examiner or the applicant understood those claim terms, it simply doesn't amount to the kind of clear disavowal that would allow reading in a limitation. [00:21:44] Speaker 00: Right, but it seems to me we have a kind of a double problem here. [00:21:49] Speaker 00: It's one thing to say we can actually give [00:21:53] Speaker 00: we can understand some content of the term from the claim itself, and we don't find anything in the prosecution history that changes that. [00:22:03] Speaker 00: It seems to me we have, as I say, a double problem. [00:22:06] Speaker 00: It's not clear what this term initial means at all. [00:22:11] Speaker 00: Let's focus actually on that term, the initial one, the 744. [00:22:17] Speaker 00: more challenging, I think. [00:22:18] Speaker 05: Yes, Your Honor. [00:22:19] Speaker 05: In all of the embodiments of the invention, the messages travel in segments. [00:22:23] Speaker 05: They never go straight from the sender to the recipient. [00:22:26] Speaker 05: In some embodiments, there's one intermediate location that divides the path into two segments. [00:22:32] Speaker 05: In the other embodiment, figure three, there's actually two intermediate locations where some processing occurs. [00:22:37] Speaker 05: So the term initial, when you say, and the claim only refers to initial in terms of where the segment ultimately ends with the recipient of the call. [00:22:46] Speaker 05: But the claim never never states where that where that segment begins. [00:22:53] Speaker 05: The only thing we have before us in the claim is. [00:22:57] Speaker 05: you know, processing and receiving instructions for controlling the initial transmission to the recipient. [00:23:02] Speaker 01: The problem that Judge Toronto has just pointed to is not an unfamiliar one that we have and perhaps the solicitor's office would be interested in. [00:23:14] Speaker 01: We often see cases where there's been an amendment in the record which overcame some prior art with no explanation. [00:23:25] Speaker 01: as to why and how that particular amendment worked. [00:23:29] Speaker 01: And we are then called upon to figure out what that amendment is really all about. [00:23:34] Speaker 01: I don't know whether that record process can be improved on, but perhaps a solicitor's office would want to think about that. [00:23:45] Speaker 05: I understand, Your Honor. [00:23:46] Speaker 05: You know, this would be a very simple case if during either the application or the prosecution, right now we have before us the argument that [00:23:54] Speaker 05: The 7-7-9 claim requires processing at the sender's network subsystem and that the 7-4-4 representative claim requires processing at the telephone. [00:24:04] Speaker 05: This would be a very simple case if the claims had simply been amended at some point to state processing at the sender's network subsystem or at the telephone. [00:24:12] Speaker 05: The sender's network subsystem, for example, is clearly identified in the specification. [00:24:17] Speaker 05: In figure three it's even given an item number, item 61. [00:24:21] Speaker 05: uh... the the fact that uh... this uh... very obvious way of identifying where the processing was claimed to occur wasn't used is uh... to some extent the dog that didn't bark the fact that it's not stated when it's clearly identified there's an obvious way to do it would tend to lead the public away from assuming that it was claimed and in any event creates the very type of ambiguity that the uh... I take it you didn't view this as an indefinite misproblem [00:24:51] Speaker 05: No, that's not how the examiner on the board analyzed it, so I'm not prepared to. [00:25:00] Speaker 02: I assume the MPEP states that the examiner may indicate why an amendment overcame the rejection, but that that's permissive. [00:25:16] Speaker 02: What percent of the cases would you estimate that where an amendment overcomes rejection, there is such an explanation? [00:25:26] Speaker 05: I'm afraid I don't have a basis on which to even speculate about the numbers there, Your Honor. [00:25:32] Speaker 05: That's a good question. [00:25:35] Speaker 05: And to reiterate our grounds for why we believe the board's construction is reasonable, the construction being urged here not only avoids using very obvious ways that processing at these locations could have been claimed, the constructions also exclude preferred embodiments. [00:25:53] Speaker 00: In the case of the... Can I just add on the... [00:25:56] Speaker 00: Does the point you just made about processing, does that apply? [00:26:01] Speaker 00: We have three claim construction issues, two in the 779 and one in the 744. [00:26:05] Speaker 00: Does that point apply just to the processing point in the 779? [00:26:11] Speaker 05: Well, if yes, in the sense that if I just wants to claim processing at the senders network subsystem in seven seven nine, there's no reason why it couldn't have simply stated that. [00:26:24] Speaker 00: Right. [00:26:25] Speaker 00: So in seven seven nine, there's a quite obvious linguistic alternative for the processing term. [00:26:33] Speaker 00: You have a counterpart point for the other two claim construction issues, one in the 779, one in the 744, the origination address. [00:26:45] Speaker 05: In the 779, if just one of the steps had been amended to state processing at the sender's network subsystem, that would have dealt with both of the issues in the 779. [00:26:55] Speaker 05: In the 744, again, the sender's telephone is clearly identified. [00:27:00] Speaker 05: If Eidos sought to claim [00:27:02] Speaker 05: processing these voice messages at the location of the sender's telephone, there's no apparent reason why it couldn't have simply claimed that. [00:27:09] Speaker 05: And the contrary interpretation being urged, again, would exclude preferred embodiments for no apparent reason. [00:27:18] Speaker 05: This isn't a case where, for example, the claims use some terminology that's unique to one of the embodiments that would lead the public to understand only that embodiment was being claimed. [00:27:29] Speaker 05: So this is a case that [00:27:31] Speaker 05: invokes the general rule that a claim construction that excludes a preferred embodiment is rarely, if ever, correct and would require a highly persuasive evidentiary support. [00:27:39] Speaker 05: That support is simply lacking here. [00:27:41] Speaker 05: In the case of the 779, for example, if the claim is construed this way, because the terms from an originated iteration address to the sender are used in all of the independent claims, you're effectively excluding one of only two preferred embodiments from all 75 claims of the patent. [00:27:57] Speaker 05: When you consider how these claims would be understood by the public, picking up and reading these claims in view of the specification, the fact that, again, processing at the sender's network subsystem is never claimed. [00:28:10] Speaker 05: In fact, there's no temporal limitation ever claimed with respect to processing. [00:28:15] Speaker 00: What about the 744? [00:28:17] Speaker 00: Is there a similar wholesale exclusion of a major written description embodiment? [00:28:24] Speaker 05: uh... yes your honor uh... in the seven four four i don't think you did uh... figure figure one of the first of the two environments is excluded and uh... as a practical matter figure three is also excluded i don't contend that figure three included by their interpretation yes uh... i don't contend that figure three is not excluded because the telephone is co-located with the voice message uh... system uh... the uh... the specification simply doesn't support this interpretation [00:28:53] Speaker 05: To address this point, it's best to look at the actual drawings. [00:28:56] Speaker 05: These are at page 23 of the director's brief or at pages A24 and A34 of the record. [00:29:03] Speaker 00: So in both... Are we looking at figures one and three? [00:29:07] Speaker 05: Is that what we're looking at? [00:29:09] Speaker 05: One and three, yes. [00:29:11] Speaker 05: In both of these figures, you see a telephone that's a distinct item connected to a voice message system. [00:29:17] Speaker 05: They're both portrayed as separate items. [00:29:19] Speaker 05: In the case of figure one, [00:29:21] Speaker 05: or for both, frankly, IDOS conceives that the processing actually occurs at the voice message system. [00:29:28] Speaker 05: Also, the processing of the voice message instructions occurs at the voice message system, not at the telephone. [00:29:36] Speaker 05: IDOS also conceives that it's excluding figure one in its interpretation of the 744, that in that system, the telephone is not the same thing as the voice message system. [00:29:46] Speaker 05: But it contends that it's only claiming figure three, and that in figure three, [00:29:50] Speaker 05: The telephone 56 and the voice message system 50 or subsystem 61 are co-located with the telephone. [00:29:57] Speaker 05: And there are multiple reasons why. [00:30:00] Speaker 05: As an initial matter, even if this were portrayed in these drawings, even if you did have this co-location, Ides's argument simply amounts to an effect to read limitations from the embodiments into the claims, which is itself improper. [00:30:13] Speaker 05: But in this case, the limitation being urged doesn't even exist in the figures. [00:30:19] Speaker 05: just a cursory review of figures one and three reveals a very similar relationship between the phone and the voice message system that they're separate items and not co-located to a degree that they assume a common identity. [00:30:31] Speaker 05: Ida's argument essentially amounts to, yeah, when we refer to the voice message system, because the telephone's in the same place, people would know what we mean from the telephone. [00:30:39] Speaker 01: I take it our job is to determine whether the PTAB's construction [00:30:49] Speaker 01: under its broadest reasonable interpretation policy is reasonable. [00:30:56] Speaker 01: Is that your understanding? [00:30:57] Speaker 01: That seems to be theirs as well. [00:30:58] Speaker 05: Yes, Your Honor. [00:31:00] Speaker 05: Yes. [00:31:01] Speaker 01: And how do you suppose we would go about doing that? [00:31:06] Speaker 05: You know, beginning with the claims in view of the specification, and again, what you're being urged by ITAS to adopt is limitations that aren't stated in the claims that exclude preferred embodiments. [00:31:17] Speaker 05: And in the case of the 744 patent, [00:31:19] Speaker 05: that attempt to draw a distinction between figures one and three and the relationship between the phone and the voice message system that simply isn't present. [00:31:27] Speaker 01: I'd also know that... That might make their interpretation unreasonable, but why is yours reasonable? [00:31:34] Speaker 05: Well, ours is reasonable because it rejects a limitation that isn't clearly stated that's at best ambiguous. [00:31:44] Speaker 05: We contend that it's even more than just ambiguous as to whether these limitations are present. [00:31:50] Speaker 05: the correct interpretation. [00:31:51] Speaker 05: The only reasonable interpretation is that these limitations aren't present. [00:31:55] Speaker 05: Again, because embodiments are excluded, because distinctions are drawn between these figures one and three. [00:32:01] Speaker 05: With the 744 pattern, for example, IDES's entire argument turns on this notion of colocation. [00:32:07] Speaker 05: But the specification itself notes that the telephone and the voice message system can be located at quite a distance from another, even across international boundaries. [00:32:17] Speaker 05: That point is made only with respect to Figure 1, but elsewhere the specification notes that the telephone in Figures 1 and 3 provides substantially the same access to the voice message system as it does in Figure 1, that the relationship between the phone and the voice message system is the same in both of these. [00:32:34] Speaker 05: So again, a competitor or the public viewing this patent would reasonably understand that the telephone and the voice message system aren't co-located in either of these, [00:32:46] Speaker 05: There certainly isn't the type of pervasive collocation that would lead one to conclude that there's an identity between the phone and the voice message system, such that when you refer to the voice message system, you effectively mean the phone as well. [00:33:02] Speaker 05: That's essentially the gist of Ides's argument, and again, [00:33:05] Speaker 05: just clearly contrary to these drawings, clearly contrary to the description of these systems being at quite a distance from one another. [00:33:12] Speaker 05: And again, there's simply no support for this in the claims. [00:33:17] Speaker 05: There's simply no ambiguous term that's being construed to require that even if you did have this pervasive understanding or depiction in the embodiments, [00:33:31] Speaker 05: There's no vessel into which that could be read to nothing that's being interpreted as a definition or anything like that. [00:33:44] Speaker 02: There's nothing further. [00:33:45] Speaker 02: Thank you, Mr. Mattel. [00:33:46] Speaker 02: You're welcome. [00:33:48] Speaker 02: Mr. Nissen has some rebuttal time. [00:33:52] Speaker 02: Yes, Your Honor. [00:33:52] Speaker 02: Three minutes and 20 seconds. [00:33:57] Speaker 04: Well, we certainly agree with the board on one thing. [00:34:00] Speaker 04: They've read initial all the claims. [00:34:02] Speaker 04: They just said it. [00:34:02] Speaker 04: And you ask them specifically, what's the difference between initial transmission and transmission? [00:34:06] Speaker 04: Answer is, I can't answer that. [00:34:08] Speaker 04: We, as initial, get over art. [00:34:11] Speaker 04: They have ignored it. [00:34:13] Speaker 00: I said, I wish the record... Can I ask a... This is not going to be a very well-formed question, but it's sort of a version, I guess, of what Judge Plager was pointing out. [00:34:26] Speaker 00: Suppose one has a case in which the examiner rejects [00:34:31] Speaker 00: and you go to the board and say, the ground that we stand on is the following construction. [00:34:41] Speaker 00: And the board says, that can't be right. [00:34:46] Speaker 00: Should that not be enough to support a rejection because you haven't provided [00:34:53] Speaker 00: a well-supported, publicly understandable claim construction, so that either there's a broader one, under which you lose, or presumably you would have argued it, or it's indefinite. [00:35:09] Speaker 00: In either event, this patent should not survive. [00:35:12] Speaker 04: Your Honor, first off, I disagree with this case, but I understand you're asking hypothetical. [00:35:17] Speaker 04: My answer is, it's their job to provide the broadest reasonable interpretation. [00:35:20] Speaker 04: If they can't do it, they might say the patent's indefinite. [00:35:24] Speaker 04: We tried to find an interpretation, and it's indefinite. [00:35:27] Speaker 04: But they didn't do that here. [00:35:28] Speaker 04: If neither party can come up with an interpretation, then the claim might be indefinite, and we would have argued different things for indefiniteness. [00:35:35] Speaker 04: But that's what they had to do. [00:35:37] Speaker 04: They can't just throw out a term. [00:35:39] Speaker 01: Well, there was a time when we had a rule that said if anybody could figure out what these claims mean, then the claims are okay. [00:35:47] Speaker 01: And we, of course, were anybody. [00:35:49] Speaker 01: But that was a different problem. [00:35:55] Speaker 01: The problem here is they're looking at this and they're saying, well, you know, we have to apply the broadest reasonable interpretation. [00:36:04] Speaker 01: It looks like it could be indefinite, but on the other hand, maybe it's possible with the broadest reasonable interpretation [00:36:14] Speaker 01: to make some sense out of what these claims are about. [00:36:19] Speaker 01: What's wrong with their effort to do that? [00:36:20] Speaker 04: Well, I think what's wrong with that is that we never got an opportunity to argue why it wasn't indefinite, because nobody's ever raised that. [00:36:27] Speaker 01: We don't have to raise it. [00:36:28] Speaker 01: Do we have to read it? [00:36:31] Speaker 04: I would disagree, Your Honor. [00:36:32] Speaker 04: But we, as initial, Arbol is very similar. [00:36:37] Speaker 04: Arbol figure one, which is in the record, is very similar to Pepe figure one. [00:36:43] Speaker 04: You know, one thing they say is that there's nothing that would show that it's co-located. [00:36:48] Speaker 04: Figure one says you have to call from other countries, absolutely. [00:36:52] Speaker 04: Figure three, the patent says, is local systems land and land. [00:36:56] Speaker 04: Lands are groups of local systems. [00:36:58] Speaker 04: A land, to repeat the definition, a system that links together electronic office equipment such as computers and forms a network within an office or a building. [00:37:07] Speaker 04: We don't think there's any question that in figure three it's co-located [00:37:11] Speaker 04: Also, in describing figure 3, the user creates a voice message from which voice message system 50 generates and stores the voice message data. [00:37:24] Speaker 04: The voice message data is what is processed [00:37:27] Speaker 04: If you read column nine, you'll see how it decides before it ever is moved on to the network interface device whether to block it, whether to allow it, whether to reroute it. [00:37:37] Speaker 04: That is controlling the initial transmission that has a plain or new ring of initials and we'd ask to see reverse. [00:37:44] Speaker 02: Thank you, Mr. Nissen. [00:37:45] Speaker 02: We'll take the case on revisions.