[00:00:37] Speaker 00:
The next argued case this morning, December 14, 1775, in Ray Anderville Licensing, LLC, Mr. Davis.

[00:00:44] Speaker 00:
Thank you, Your Honor.

[00:00:47] Speaker 03:
Good morning.

[00:00:53] Speaker 03:
May I please the court?

[00:00:54] Speaker 03:
I'll start with the Joaquin rejection, because it was the primary reference that was relied upon the board, and also the reference that covers the most of the claims, including what the original claim was, the dependent claims.

[00:01:06] Speaker 02:
I just want to say that all of this technology is very cool.

[00:01:11] Speaker 02:
I want some of this at home.

[00:01:13] Speaker 03:
Thank you.

[00:01:14] Speaker 03:
Additionally, with respect to Joaquin's, if the court agrees that there's an error in the claim construction, it will necessarily require a remand because the only other ground adopted based on Sine and Fender did not cover all of the claims that were rejected.

[00:01:29] Speaker 03:
So with respect to Joaquin,

[00:01:32] Speaker 03:
Every claim requires that the display of abortion or representation of a second segment is generated in response to the display of a related first segment.

[00:01:43] Speaker 03:
In the American Calcar case, this court addressed the term in response to, which is critical here.

[00:01:48] Speaker 03:
And it recognized that it has a plain and ordinary meaning.

[00:01:51] Speaker 03:
And that plain and ordinary meaning requires a cause and effect relationship or reaction.

[00:01:57] Speaker 02:
Isn't it true that every time we come through a claim term, other than perhaps

[00:02:02] Speaker 02:
you know, the ones that fall within a certain category of defined terms.

[00:02:09] Speaker 02:
But if we're interpreting a phrase in a particular patent, it's in the context of that particular written description.

[00:02:16] Speaker 03:
Of course, Your Honor.

[00:02:17] Speaker 03:
And in the American CALCARB case, the starting point for the analysis was plain and ordinary meaning, which required the reaction, the responsive

[00:02:25] Speaker 03:
display.

[00:02:27] Speaker 03:
In that case, it went on to note that the specification didn't disclose any embodiments that would be excluded by that interpretation of in response to, and the same is the case here.

[00:02:38] Speaker 03:
Now, American Cal Fire, of course, did also address the prosecution history, but that was only in the context of evaluating a prosecution history estoppel argument under the doctrine of equivalence.

[00:02:49] Speaker 03:
So the

[00:02:51] Speaker 03:
beginning of the American Calcar analysis with the plain and ordinary meaning, which is what we're asking for to be applied in the present case to the use of the same terms.

[00:03:01] Speaker 03:
And in fact, the issue and the dispute is very similar between here and American Calcar.

[00:03:07] Speaker 03:
In both cases, the question is whether

[00:03:09] Speaker 03:
a display that is only generated if the user has to interact with the menu and select a button is nevertheless occurring in response to a prior event that is not the user selection of the button.

[00:03:22] Speaker 02:
But American CalCard did then go in and examine the specification of the written description to determine

[00:03:28] Speaker 02:
whether the plain and ordinary meaning is consistent with that.

[00:03:32] Speaker 02:
So what in the specification do you believe requires this automatic response?

[00:03:38] Speaker 03:
So we've identified a number of citations in our brief, in our opening brief, starting at page 25.

[00:03:50] Speaker 03:
This specification talks about the automatic display.

[00:03:54] Speaker 03:
It also talks about the display of the portion of representation of the second segment changing when the display of the first segment changes.

[00:04:04] Speaker 03:
So both of those, the concept of an automatic display and a responsive changing as the display of the first segment changes, both suggest that the ordinary meaning is how the term is being used.

[00:04:14] Speaker 03:
It's referring to

[00:04:15] Speaker 03:
an automatic responsive display rather than something that is only triggered by an intervening user action.

[00:04:26] Speaker 02:
What do you make of claim 21 though?

[00:04:30] Speaker 02:
Because claim 21 says it's got to occur substantially co-extensive in time, are you saying that automatic could take 45 minutes?

[00:04:43] Speaker 03:
Substantially co-extensive in time, I think, is that could be referring to one of two things.

[00:04:52] Speaker 03:
It could be referring to the fact that the two are displayed overlapping, so at the same time as time progresses.

[00:04:59] Speaker 03:
So for example, if the first segment is being displayed for five minutes, for four minutes and 59 seconds of that, it's also being displayed on the second

[00:05:08] Speaker 03:
the proportional representation of the second segment is also being displayed.

[00:05:13] Speaker 02:
What in the specification indicates that?

[00:05:17] Speaker 03:
I don't know that that particular concept is spelled out in the specification.

[00:05:25] Speaker 03:
I suppose figures 1 and 2A and 2B which are showing a graphic user interface on a separate device while a first device is showing the display of the

[00:05:38] Speaker 03:
primary segment, which shows you have two separate displays while you're watching the first screen.

[00:05:44] Speaker 03:
The second screen automatically responds with a substantially co-extensive and timed display of proportion representation.

[00:05:51] Speaker 03:
The second segment on the second display device.

[00:06:00] Speaker 02:
And so does the patent office... But it seemed like you were just speculating about what that might mean.

[00:06:05] Speaker 02:
I guess I'm trying to understand.

[00:06:06] Speaker 02:
I mean, if you don't have

[00:06:08] Speaker 02:
claim differentiation problems here.

[00:06:26] Speaker 03:
I don't see a claim differentiation issue because you could have a possibility where the portion of representation of the second segment

[00:06:36] Speaker 03:
would display for longer than the display of the first segment.

[00:06:40] Speaker 03:
And so you could have an opportunity where the first segment changes and the portion of representation of the second segment would not necessarily change with it in that instance or for a portion of the graphic user interface.

[00:06:55] Speaker 03:
One of the regions, because as we explained in our brief,

[00:06:58] Speaker 03:
What's shown in Figure 2A and 2B is a collection of portions or representations of second segment.

[00:07:05] Speaker 03:
And the claim recites one operates in a specific way.

[00:07:10] Speaker 03:
So you could have a case where not every single one of the portions or representations is changing automatically in response to the display of the first segment.

[00:07:25] Speaker 03:
And that's also

[00:07:27] Speaker 03:
falls in with the patent officer's argument about the possibility that certain portions or representations might be triggered by the toggling of a menu button to a portion of Colport's scene about that issue.

[00:07:42] Speaker 03:
And the fact that the patent describes different ways of doing it doesn't change the ordinary meaning of in response to, which is consistent with how the term is used throughout the remainder of the patent.

[00:07:57] Speaker 03:
It's not the case that every possible implementation must be covered by every independent claim.

[00:08:04] Speaker 02:
If we conclude that in response to could be satisfied where some user intervention is allowed, then that answers the question with respect to the board's determination as to what team, right?

[00:08:22] Speaker 02:
that is correct you have to prevail on this claim construction argument right?

[00:08:29] Speaker 00:
well there are two dependent claims that were not covered by a Joaquin based projection right i understand but as a Joaquin you would have to prevail on claim construction that's correct your honor would you comment on the treatment by the office of claims that you had not placed at issue

[00:08:50] Speaker 03:
the claim that we had not placed that issue.

[00:08:53] Speaker 00:
You said that Patton Office focused on claim 174 and its argument for instance, which was not an issue.

[00:09:01] Speaker 03:
Yes, so I can explain what happened with the dependent claims that are being relied upon for claim differentiation.

[00:09:06] Speaker 03:
Those claims were added in the very early stages of the re-examination.

[00:09:11] Speaker 03:
I think it was in the first office action.

[00:09:12] Speaker 00:
Oh, okay.

[00:09:13] Speaker 00:
So they were not original claims.

[00:09:15] Speaker 03:
They were not original claims.

[00:09:16] Speaker 03:
They're claims that were added

[00:09:19] Speaker 03:
to respond to the patent offices, I'm sorry, the examiners, brought us reasonable interpretations in response to.

[00:09:27] Speaker 03:
And so when the examiner said it doesn't need to be automatically in response to their intervening user actions, Intervolt proposed these dependent claims

[00:09:37] Speaker 03:
that incorporated what Intervolt believed was the correct construction.

[00:09:41] Speaker 00:
So what's the status of those claims now?

[00:09:44] Speaker 03:
Those claims were also all rejected by the examiner based on the Joaquin reference.

[00:09:50] Speaker 02:
Did you make any independent argument as it relates to those claims?

[00:09:54] Speaker 03:
So how those claims were handled, Your Honor, is because they contained expressly the construction that Intervolt believed was already present in all of the independent claims,

[00:10:07] Speaker 03:
They were effectively covered by the exact same arguments that were presented with respect to claim 20.

[00:10:13] Speaker 03:
So in its briefing, when Interval addressed the later claims, it referred back to his claim 20 arguments because they were exactly the same.

[00:10:21] Speaker 03:
And under Interval's understanding and interpretation of claims,

[00:10:25] Speaker 03:
particularly for claim 157, which is where the automatically in response to language was added and that was the only additional limitation.

[00:10:33] Speaker 03:
There was really nothing else to say.

[00:10:34] Speaker 03:
The argument was fully articulated with respect to independent claim 20.

[00:10:39] Speaker 03:
An interval has always made it

[00:10:40] Speaker 03:
completely clear that its interpretation and application of independent claim 20 and its view of the broadest reasonable construction of claim 20 requires automatic generation.

[00:10:51] Speaker 03:
So there's no ambiguity or confusion in the reexamination history about why those claims were added and that interval believes that they were in the case of 157 and I think there's a counterpart to claim 63.

[00:11:06] Speaker 03:
that it was Interval's view and position that they had the same scope as claim 20.

[00:11:13] Speaker 02:
Why not make 157 independent claims?

[00:11:21] Speaker 03:
I'm not sure as a practical matter that would have solved how the Patent Office is approaching the claim differentiation argument because they still would have differed only by

[00:11:33] Speaker 03:
one limitation and I can explain it as a matter of it really goes back to intervening rights and the fact that this is a patent that was involved in litigation and so because of intervening rights there is an incentive not to amend your claims if possible but the broadest reasonable construction rule creates the situation where you might be disputing a construction

[00:11:55] Speaker 03:
The patentee might want to explore patentability of a claim that incorporates what it believes is the correct construction.

[00:12:01] Speaker 03:
So adding a dependent claim that only adds that limitation is a straightforward and practical way to obtain the examiner's views about patentability under what the examiner believes is the correct construction.

[00:12:14] Speaker 03:
And then with understanding of how the examiner will treat that claim, can make a decision as to whether or not to amend to bring that limitation to the original independent claim.

[00:12:28] Speaker 03:
So unless your owners have any further questions on Joaquin, I'll move briefly to Chennai.

[00:12:36] Speaker 03:
The Chennai rejection was based on an assumption about how the reference worked that's not substantiated by the reference itself.

[00:12:44] Speaker 03:
The articulated motivation to combine is that it would be obvious to take the Chennai reference and use the Bender segment-to-segment comparison technique in order to identify matching photos and sound recordings.

[00:12:56] Speaker 03:
The reference does not show in Chennai that photos and sound recordings have signatures or that they are the subject of any segment to segment comparisons.

[00:13:08] Speaker 03:
Our best understanding of the reference is that it simply says that when articles come in, they may include photos and sound recordings with them.

[00:13:15] Speaker 03:
When the article is displayed, any

[00:13:21] Speaker 03:
photos or sound recordings that were part of the package when it came in will be pulled up and displayed as well.

[00:13:26] Speaker 03:
So once one sets aside the unsupported

[00:13:31] Speaker 03:
assumption that Shanae is doing photo and audio comparisons to articles on a segment-to-segment basis, there remains no motivation or no reason to adopt the vendor comparison technique.

[00:13:43] Speaker 03:
There's no use for it.

[00:13:45] Speaker 03:
Shanae operates on a categorization level where everything is found through navigation of the categories.

[00:13:54] Speaker 03:
So with that, I'll reserve the remainder of my time for rebuttal unless Your Honor has any further questions.

[00:14:10] Speaker 01:
Going back to Joaquin, I wanted to start by talking about the embodiments in the specification that are clearly not automatic, where the second display is displayed in response to the first display, but requiring the click of a button by the user.

[00:14:33] Speaker 01:
So a couple of examples in the specification.

[00:14:36] Speaker 01:
One is

[00:14:40] Speaker 01:
that at column 3, lines 26 to 30 or so, it says that it can be immediately identified and either displayed or identified as pertinent to the subject matter category and available for display.

[00:15:00] Speaker 01:
And then at column 10, it talks about how the second, sorry, line 56

[00:15:09] Speaker 01:
to 61.

[00:15:11] Speaker 01:
It says the secondary information can be displayed, e.g.

[00:15:15] Speaker 01:
by the control device 101 or by the primary display device 102 in addition to the primary information or not, i.e.

[00:15:25] Speaker 01:
the secondary information may be used only for categorizing and or manipulation of the primary information.

[00:15:30] Speaker 01:
This shows also that the interval tries to distinguish between the

[00:15:37] Speaker 01:
the graphical user interface device and the display device, but this quote actually shows that the display device can also be turned on or off and can be turned on through user interactions.

[00:15:51] Speaker 02:
What's your response to Interpol's arguments that even in those non-automatic portions that there is a

[00:16:04] Speaker 02:
a response to an automatic response element to them.

[00:16:08] Speaker 01:
I think that's not true.

[00:16:10] Speaker 01:
So the part I just read shows that both devices, both the graphical user interface and the display device can be turned on or off.

[00:16:21] Speaker 01:
And then one more quote shows, so at column 14, lines 49 through 51, it says,

[00:16:34] Speaker 01:
For example, a GUI of GUI according to the invention could function adequately without a related primary information region.

[00:16:42] Speaker 01:
And then further down, it talks about how at line 60, it says, for example, a GUI according to the invention could be implemented such that a display of the related secondary information region 204 is produced only upon appropriate interaction with one or more menus and or dialogue boxes.

[00:17:02] Speaker 01:
So it's covering

[00:17:03] Speaker 01:
all of the different types of information, the primary information, the secondary information, the information on the GUI, the information on the display device, all of those, it says, could be implemented in a way that you can turn them on or off.

[00:17:17] Speaker 01:
Or you can use, user interaction can turn them on.

[00:17:23] Speaker 01:
So it's simply just not true that the specification

[00:17:28] Speaker 01:
envision that it'll always automatically have some portion shown after, have a second portion shown after a first portion is shown.

[00:17:38] Speaker 02:
Well, I mean, I think their argument is if it's operable, then it's automatic.

[00:17:43] Speaker 02:
I mean, it's one thing to say you can turn it on or off, but they're saying that when the primary information source is on and the secondary information source is on, then there'll be an automatic response.

[00:17:56] Speaker 01:
Well, that's sort of assuming that's inclusion.

[00:17:59] Speaker 01:
If the primary information source is on, the claim encompasses showing two stories.

[00:18:05] Speaker 01:
And the first one is on, and is on because maybe the user chose it, for example.

[00:18:13] Speaker 01:
And then whether or not the second one is on, the second one is shown in response to the first one.

[00:18:20] Speaker 01:
And it's up to the user to choose whether the second one is on or not.

[00:18:25] Speaker 01:
That's what these different parts of the specification are showing.

[00:18:30] Speaker 01:
For example, the last one that I just read shows that it could be implemented such that user interaction is required to show the second story.

[00:18:48] Speaker 01:
As you pointed out, Judge O'Malley,

[00:18:54] Speaker 01:
they could have claimed something different.

[00:18:56] Speaker 01:
They could have used words other than in response to if they wanted to claim that they were shown at the same time.

[00:19:04] Speaker 01:
They could have used, well, they could have used automatically in response to, or they could have used coextensive in time or simultaneously with, or any word that implies that they are automatically shown together in response implies that the

[00:19:20] Speaker 01:
The content of one is in response to the content of another.

[00:19:25] Speaker 01:
So if I could use an example, if you send me a letter and the mailman delivers it and I send a letter in response, the mailman was required there as an intervening step for me to respond to the letter, but no one would say that I am sending my letter in response to the mailman's delivery of a letter.

[00:19:46] Speaker 01:
I am sending a letter in response to your sending me a letter.

[00:19:51] Speaker 02:
What do we make of column 3, lines 44 to 45, a portion or representation of the related information can be displayed in response to EG simultaneous width?

[00:20:04] Speaker 01:
That is certainly one example.

[00:20:06] Speaker 01:
And EG means for example.

[00:20:10] Speaker 01:
So for example, it could be simultaneous.

[00:20:14] Speaker 01:
But the rest of the specification and the claims make clear that it doesn't have to be simultaneous.

[00:20:20] Speaker 01:
And so, for example, the fortunate column 14, where it talks about how the second information could be shown only upon appropriate interactions, shows that it doesn't have to be shown simultaneously.

[00:20:41] Speaker 01:
Well, they are shown simultaneously at the end.

[00:20:43] Speaker 01:
You'll never see the second story without also seeing the first story.

[00:20:49] Speaker 01:
It's just that you may see the first story without also seeing the second story, if that makes sense.

[00:20:58] Speaker 02:
And then... Can I ask before you get too far down the road and I lose you on time, can we just dispense with any consideration of footnote three?

[00:21:11] Speaker 01:
Your Honor, it's not footnote three itself.

[00:21:14] Speaker 01:
It is that the board

[00:21:20] Speaker 01:
primarily through operation of its rules, is considered to have affirmed the examiner's reasoning.

[00:21:28] Speaker 01:
An interval has raised the issue of Bender on its own, and the PTO's consideration of Bender is

[00:21:45] Speaker 01:
is within the context of the examiner's reasoning about vendors.

[00:21:49] Speaker 00:
Well, then why put it in a footnote?

[00:21:51] Speaker 00:
We have all these cases that say this court does not consider footnotes.

[00:21:56] Speaker 00:
Was it in order to avoid elaboration and just kind of touch on it in case someone was curious?

[00:22:03] Speaker 01:
I think it was essentially avoiding elaboration because it had dispensed with all of the claims through the prior rejections.

[00:22:12] Speaker 01:
Well, then they should ignore it, right?

[00:22:15] Speaker 01:
I wouldn't say you can ignore it because Interval has raised it.

[00:22:20] Speaker 00:
Well, they had no choice but to cope with what they got from the board.

[00:22:24] Speaker 00:
But as far as the board and the office is concerned, it's certainly a curious way of handling a substantive issue.

[00:22:33] Speaker 01:
Well, I wouldn't call it the board's handling of the substantive issue.

[00:22:38] Speaker 01:
The board simply mentioned it in a footnote and was not intending to

[00:22:44] Speaker 01:
analyze the rejections based on vendor.

[00:22:50] Speaker 01:
But because Interval has raised it and wants this court to determine the construction of the term portion or representation, the only import of that could be that if this court affirms the construction of portion or representation, the vendor rejections would be affirmed.

[00:23:12] Speaker 01:
And if I could turn to Shanae for a few minutes.

[00:23:16] Speaker 01:
The interval concedes that Shanae combined with Bender shows all of the limitations of claim 20 and argues only that they couldn't be combined, particularly because

[00:23:37] Speaker 01:
The part of Sinead that's being relied on is about combining an article with a photograph.

[00:23:45] Speaker 01:
An interval says that the photographs don't have signatures, but Sinead itself, page A, 130, it says that the supplier adds a signature to each item.

[00:24:04] Speaker 01:
And we can tell that Sinead is viewing

[00:24:07] Speaker 01:
the photos and the audio as different items from the articles themselves, because in the second column on page A-130, in the first full paragraph, it says, fishwrap also checks its photo and audio databases to see if there are photos and sound recordings that match the story.

[00:24:28] Speaker 01:
So what Shanae is doing is it's storing in its database its

[00:24:33] Speaker 01:
photos and its audio and its stories separately, and it has to check its database in order to figure out whether the matching story and matching audio are there, and if they are, it'll show them to you.

[00:24:46] Speaker 01:
So much like the claimed invention in Interval's patent, it's finding whether these two things are related, whether the story and the photos are related,

[00:25:02] Speaker 01:
and if so, showing them to you at the same time.

[00:25:09] Speaker 01:
If the court has no other questions, I'll field the remainder.

[00:25:12] Speaker 00:
Thank you, Ms.

[00:25:13] Speaker 00:
Sophie.

[00:25:18] Speaker 00:
Mr. Davis.

[00:25:19] Speaker 03:
Thank you, Your Honor.

[00:25:20] Speaker 03:
Just a few brief comments.

[00:25:24] Speaker 03:
The reason that Interval didn't write automatically in response to any claims is because it shouldn't have needed to.

[00:25:30] Speaker 03:
Both the American Calcar case and the Fujitsu case both used the word automatically when explaining what in response to mean.

[00:25:39] Speaker 03:
So Interval's position is that it should have been unnecessary to expressly spell out automatically in the independent claims because it's already in there by virtue of the use of the term in response to.

[00:25:52] Speaker 03:
Another key point that is alluded to throughout the briefs is that the question of what the display must occur in response to.

[00:26:05] Speaker 03:
So my friend, when she was up here, she referred to the identification or the selection of the first segment and the identification of the selection of the second segment.

[00:26:15] Speaker 03:
What the claim says though is it's specific.

[00:26:19] Speaker 03:
It says that the generation of the display has to occur in response to the display of the first segment.

[00:26:24] Speaker 03:
So not in response to the selection of the display of the content of the first segment, nor does the portion of representation of the second segment simply have its content identified.

[00:26:39] Speaker 03:
in response to the identification or the display of the first segment.

[00:26:43] Speaker 03:
It has to be the generation of a display of the portion of representation of the second segment in response to the display of the first segment.

[00:26:52] Speaker 03:
Just a quick note on Bender in the footnote three, we found ourselves in a difficult position where the board has alluded to potentially a new grounds of rejection, but it didn't adopt it.

[00:27:06] Speaker 03:
The court of course is not obligated to reach that issue.

[00:27:09] Speaker 03:
The reason we asked is because we expect that if there's a remand, it will be front and center.

[00:27:16] Speaker 03:
And we'd rather not go back down to come directly back up for the reason cited in footnote three of the board's opinion.

[00:27:23] Speaker 03:
And another issue on that front is it is not the case that the only issue with respect to Bender is whether a portion of representation can in fact be the entire

[00:27:36] Speaker 03:
There are also dependent claims that are directed to navigation techniques selecting the portion of representation of the second segment and generating the full display of the second segment the vendor doesn't disclose because it's a television annotation system that doesn't provide a way for the user to input any selection.

[00:27:55] Speaker 03:
So the only issue with respect to vendor, it's not the case that it's only about portion representation.

[00:28:01] Speaker 03:
There are also dependent claims

[00:28:02] Speaker 03:
that would need to be addressed specifically before any vendor rejections could be affirmed across the board.

[00:28:10] Speaker 02:
Did you specifically address those issues to the board as it relates to the independent, as it relates to the dependent claim?

[00:28:18] Speaker 03:
Yes, Your Honor.

[00:28:18] Speaker 03:
The dependent claims directed to navigation with respect to vendor were specifically argued.

[00:28:25] Speaker 00:
So I see that my time is up unless Your Honor has further questions.