[00:00:00] Speaker 03:
1794 in Remy.

[00:00:02] Speaker 01:
I might have just two minutes your honor.

[00:00:08] Speaker 01:
Sure.

[00:01:25] Speaker 01:
The main claims being appealed from here are 13 and 23.

[00:01:30] Speaker 01:
And I want to talk about three or four different things in this appeal, which I think are the most critical points.

[00:01:35] Speaker 01:
Number one is the issue of analogous art.

[00:01:38] Speaker 01:
Number two is if the court finds that either the Elston reference or the Batt reference are not analogous art, then a lot of the claims we're going to talk about fall away there.

[00:01:50] Speaker 01:
If the court believes that Elston and Batt are analogous art, we have to go to the next phase, which is to look at

[00:01:55] Speaker 01:
whether in combination they meet the claim language and things like whether the declaration was properly considered and that kind of thing.

[00:02:03] Speaker 01:
The written description I will leave for the end.

[00:02:08] Speaker 01:
The main problem we have with this appeal, Your Honor, is again this issue of a moving target.

[00:02:14] Speaker 01:
In the original

[00:02:15] Speaker 01:
underlying examination.

[00:02:16] Speaker 01:
We had statements from the examiner about what he was considering to be an elegant start.

[00:02:21] Speaker 03:
Can you clarify something?

[00:02:23] Speaker 03:
Netflix was part of this originally.

[00:02:26] Speaker 01:
Netflix was the party that brought... Yes, your honor.

[00:02:28] Speaker 03:
Do you think that you can tell us about that?

[00:02:31] Speaker 01:
I will give you the best I can.

[00:02:33] Speaker 01:
I was not involved in any of the litigation per se, but Netflix is the entity which brought the original underlying inter-parties.

[00:02:41] Speaker 01:
re-examination process.

[00:02:44] Speaker 03:
That wasn't the mystery.

[00:02:48] Speaker 03:
Why are they not here?

[00:02:50] Speaker 01:
That is not something I can find about Iran.

[00:02:53] Speaker 01:
I'm not sure why it was that they just decided to bow, but they stopped participating very early in the process.

[00:03:00] Speaker 01:
I can't speak to that, unfortunately.

[00:03:03] Speaker 01:
The main issue we have here with this examination, again, is this constant moving target.

[00:03:08] Speaker 01:
In the original underlying examination,

[00:03:11] Speaker 01:
And I apologize, on page 17 of the brief as submitted, there was a typo.

[00:03:18] Speaker 01:
One, two, three.

[00:03:19] Speaker 01:
The fourth line from the bottom was a citation to A5610.

[00:03:24] Speaker 01:
That should actually be 1769.

[00:03:25] Speaker 01:
And that's an error in my part, which I apologize.

[00:03:30] Speaker 01:
In that part of the discussion, the examiner said, I'm including all these references as being analogous prior because they are user notification and inventory management.

[00:03:40] Speaker 01:
They fall within the scope of the invention.

[00:03:43] Speaker 01:
We pointed out to the examiner that whether or not a reference fell within the scope of the claim was not the appropriate test, and therefore we needed to come up with a better explanation.

[00:03:53] Speaker 01:
So sometime thereafter, the examiner changed the test to say, well, in the right of appeal notice he says, what I'm really talking about is that it is now user notification and replenishment.

[00:04:07] Speaker 01:
That appears in the examiner answer.

[00:04:09] Speaker 01:
So now what we have is we've been arguing this case for several years, trying to figure out what's analogous art, and now the examiner changes the definition.

[00:04:16] Speaker 01:
He says, no, it's really this field.

[00:04:19] Speaker 01:
That's what we, again, argued on appeal.

[00:04:22] Speaker 01:
That's what was briefed.

[00:04:24] Speaker 01:
The board again, in the decision, changes the definition of analogous art.

[00:04:29] Speaker 01:
And you can find this on pages A9 and A10 of the appendix, in which they say,

[00:04:35] Speaker 01:
Well, the real prior art is something which determines if the subscriber's inventory is empty.

[00:04:43] Speaker 01:
Within that same document, on appendix page 22, they change it yet again.

[00:04:48] Speaker 01:
They say, no, it's actually maintaining a customer account.

[00:04:53] Speaker 01:
Your Honor, I just feel that this has really handicapped us significantly because throughout this verification, we haven't been able to have a single target to focus on an attack.

[00:05:01] Speaker 01:
I think that that has really deprived us of due process.

[00:05:04] Speaker 01:
But the key point is the board here completely ignored the examiner's test.

[00:05:09] Speaker 01:
And they did for one simple reason.

[00:05:12] Speaker 01:
The examiner knew that the moment he started casting a blanket of what's analogous art, to try to cover these references, it wasn't going to work.

[00:05:21] Speaker 01:
If you try to make a cover of one reference, it was not going to cover something else and vice versa.

[00:05:25] Speaker 01:
If you pulled them one direction, suddenly this reference would become prior.

[00:05:29] Speaker 01:
And your honor, I just think that's a form of gamesmanship which should not be allowed.

[00:05:32] Speaker 02:
Are you still arguing claims 39 and 40?

[00:05:38] Speaker 01:
Yes, Your Honor.

[00:05:39] Speaker 01:
I believe those deal with the written description requirements.

[00:05:47] Speaker 01:
And those are, I can talk about the now if you like, Your Honor, but those deal mostly about secondary issues.

[00:05:53] Speaker 01:
But the main point there is that for claim 39, the figures show

[00:05:59] Speaker 01:
that a lot of the logic and structures can exist either in the cloud, on a server someplace else, or can be put into a device in the home.

[00:06:06] Speaker 01:
And what we said was, well, if these structures live in the home,

[00:06:09] Speaker 01:
And the thing which is supposed to be looking at the monitoring was also going to be there as well.

[00:06:13] Speaker 01:
That was for Claim 39 anyway.

[00:06:15] Speaker 02:
I know that figures are part of the specification, but you keep talking about figures and not what's written in the specification.

[00:06:23] Speaker 02:
Is there support for what Claims 39 and 40 recite?

[00:06:27] Speaker 01:
Yes, Your Honor, and I believe we pointed out in the main brief, which I will look through here.

[00:06:38] Speaker 01:
On page 67 of the brief, we pulled out figure seven, as well as the accompanying text that went with that figure, and said, disclosure tells you that this thing, which is called a subscriber delivery queue, and I pointed it there with a circle in the middle, can exist as well on this receiver S5.

[00:06:59] Speaker 01:
And therefore, all the attendant logic, which is looking at, is supposed to be monitoring this thing,

[00:07:05] Speaker 01:
be understood by person, skill, and the art to also be living at home, if you will, pardon the pun, on that receiver.

[00:07:11] Speaker 01:
And therefore, we felt that it was fairly clear that those things would travel with it.

[00:07:16] Speaker 01:
That was the main support for that claim, Your Honor.

[00:07:19] Speaker 01:
For claim 40.

[00:07:20] Speaker 02:
Maybe the problem you're having with the Petman Office is you don't answer the question, because I asked you where in the specification is the support for claims 39 and 40.

[00:07:29] Speaker 01:
OK, Your Honor, I'm sorry.

[00:07:31] Speaker 01:
Figure 7 is in the specification.

[00:07:33] Speaker 01:
In the appeal brief, I believe, we pointed out to the column 17, 1-2 in the specification, and column 25, 35-52 was the text that we were borrowing from the disclosure.

[00:07:47] Speaker 01:
I can get the appendix if you want, Your Honor.

[00:07:52] Speaker 01:
In any event, I just want to talk about the pivotal issues for us, really, this issue of analogous art.

[00:07:59] Speaker 01:
The board didn't even really try to go through the exercise of trying to figure out what was analogous art.

[00:08:04] Speaker 01:
They just simply, again, just said, here's what it is.

[00:08:07] Speaker 01:
We pointed out that they were disconnecting it completely from the specification.

[00:08:10] Speaker 01:
They were making it up.

[00:08:12] Speaker 01:
They didn't look at the specification.

[00:08:13] Speaker 01:
What the specification said was the purpose of the invention.

[00:08:18] Speaker 01:
In terms of the rejections themselves, for Claim 13, the main rejection was based upon Hastings plus this reference called BOT.

[00:08:30] Speaker 01:
I believe Your Honor looks at the original rejections as formulated by the original examiner.

[00:08:36] Speaker 01:
They appear in the appendix of A-729.

[00:08:38] Speaker 01:
I'm not going to go through them in detail, but I'll simply say it consists of a lot of this kind of discussion.

[00:08:46] Speaker 01:
It consists of comments like, Hastings is missing X, but Vaat teaches Y. A person's skill in the art could have put them together.

[00:08:55] Speaker 01:
That result would have been predictable.

[00:08:59] Speaker 01:
Oh, and the motivation to combine them would be that once you've combined them, you've got both things.

[00:09:05] Speaker 01:
Your honor, I just feel that that's just circular logic.

[00:09:07] Speaker 01:
That is a formulation this court has consistently rejected to simply say that because you have two things and could put them together and can manufacture an excuse to put them together, that somehow that's obvious to combine.

[00:09:21] Speaker 01:
Throughout this rejection, which appears in the appendix seven through nine and onwards, it's the same kind of formula.

[00:09:28] Speaker 01:
Hastings is missing all these elements.

[00:09:30] Speaker 01:
Every single instance, something is barred from someplace else to try to fill in the gaps.

[00:09:35] Speaker 01:
And every single comment is exactly the same formula.

[00:09:40] Speaker 01:
Because of this comment that somehow a person looking at these things could have picked out these two things, put them together, and it would have been predictable, that was the reason why we submitted the declaration.

[00:09:52] Speaker 01:
The declaration basically said, well, it may seem at first glance

[00:09:56] Speaker 01:
it would be obvious to pick these two things.

[00:09:58] Speaker 01:
There's reasons why it's not, and here's the reasons why.

[00:10:02] Speaker 01:
Now that declaration was not considered for reasons which we explained in the brief.

[00:10:06] Speaker 01:
We believe that that in itself also is a significant legal error.

[00:10:11] Speaker 01:
The examiner basically said, because you didn't prove the defendant in this case infringes these claims, you can't prove Nexus under any theory whatsoever.

[00:10:22] Speaker 01:
We pointed out to the board that

[00:10:24] Speaker 01:
That is not appropriate test.

[00:10:27] Speaker 01:
The board has to have a consistent test for interpreting the claims.

[00:10:30] Speaker 01:
If you're going to interpret the claims broadly for purposes of analyzing the prior art, you should have given us the same benefit when you looked at my nexus and my declaration about whether or not the infringing equipment fell in the scope of the claims.

[00:10:43] Speaker 01:
Instead, they very clearly said, no, we're looking at the district court opinion, which said there's no infringement, therefore it can't be the nexus.

[00:10:50] Speaker 01:
End of story.

[00:10:53] Speaker 01:
That was the main point raised by the Declaration of Honor.

[00:10:55] Speaker 01:
I think it's a new point which I've not seen before in any of your jurisprudence, at least in my experience.

[00:11:04] Speaker 01:
So for the prior references, we pointed out why in most instances the combinations simply were being combined based upon this arbitrary formulaic logic without any kind of thought process.

[00:11:19] Speaker 01:
We also pointed out that the references themselves, again, were very tangential.

[00:11:25] Speaker 01:
This reference cited against Claim 13, for example, had to do with people who were subscribing to a publishing system.

[00:11:34] Speaker 01:
So if you wanted to find out information about what's going on in sports or whatever, you could subscribe to this system and give you sports information.

[00:11:42] Speaker 01:
There was one tiny mention of, well,

[00:11:46] Speaker 01:
Maybe stores could publish inventory information there somewhere, and you could find out if a store had inventory or not.

[00:11:53] Speaker 01:
What we pointed out was, Your Honor, was that, okay, fine, even accepting for what that is, that's saying nothing whatsoever about keeping track of individual people's accounts.

[00:12:02] Speaker 01:
You're giving them specific information about their account.

[00:12:05] Speaker 01:
That's like saying, I'm a customer of Macy's, does Macy's have this particular address or not?

[00:12:10] Speaker 01:
That's fine, that's one thing.

[00:12:12] Speaker 01:
It's not telling me whether my account at Macy's is overdue,

[00:12:15] Speaker 01:
or I've got a new dress to go pick up at Macy's because it's good for me.

[00:12:19] Speaker 01:
We simply pointed out that even when you added the pieces together, you weren't getting the results that was attended to the claim.

[00:12:26] Speaker 01:
The same thing happened with claim 43 in that, again, within the appendix, you will see kind of a moving target again.

[00:12:36] Speaker 01:
The original rejection was based upon one grounds.

[00:12:39] Speaker 01:
It changed.

[00:12:40] Speaker 01:
But again, fundamentally, the main reference that was cited

[00:12:43] Speaker 01:
was this Elston reference.

[00:12:45] Speaker 01:
And if your honors look at the Elston reference for what it is, again, has nothing really to do with this field of art.

[00:12:53] Speaker 01:
And we submitted that a person looking to improve an online rental subscription queue system would have almost no interest in a reference like this whatsoever.

[00:13:05] Speaker 01:
And that when you add it together again, you have the same problem.

[00:13:08] Speaker 01:
And what it's really telling is that the examiner

[00:13:12] Speaker 01:
When he cited Elston originally, he said, well, this is a system which is, and I'll quote again, this system deals with inventory management.

[00:13:22] Speaker 01:
And we said, well, where's the inventory management going on in this reference?

[00:13:26] Speaker 01:
How can you cite this reference?

[00:13:28] Speaker 01:
That's why magically in the appeal brief, and I'm seeing my rebuttal time, sorry, he said, no, it's really replenishment.

[00:13:35] Speaker 01:
We attack that.

[00:13:35] Speaker 01:
That is why the board changed the test and completely diluted it.

[00:13:41] Speaker 01:
and transformed Elston into a reference when it wasn't before.

[00:13:46] Speaker 01:
Or is it my time?

[00:13:48] Speaker 00:
Your Honor, may it please the Court?

[00:14:02] Speaker 00:
This inter-parties re-examination, the appeal involves nine different prior references, but not all of those references are created equally.

[00:14:11] Speaker 00:
From the beginning of this re-examination, one reference, Hastings, has been used principally to disclose 99% of the disputed limitations.

[00:14:20] Speaker 00:
Hastings describes an internet-based movie rental system.

[00:14:24] Speaker 00:
Hastings expressly discloses having the customer provide selection criteria and then having the internet-based movie provider automatically satisfy those criteria.

[00:14:35] Speaker 00:
For example, Hastings describes selecting movies based on the director or actors, et cetera.

[00:14:41] Speaker 00:
Hastings also expressly discloses, allowing the customer to set priorities.

[00:14:45] Speaker 00:
So for example, if the customer wants a new movie when it comes out, when that movie does come out, it jumps ahead in the queue.

[00:14:53] Speaker 00:
And finally, the Hastings reference expressly discloses a max-out feature that controls the action of the movie rental system based on a certain quantity of movies being reached, a certain quantity of movies held by the customer.

[00:15:10] Speaker 00:
From the beginning of this examination, the examiner relied principally and heavily on Hastings.

[00:15:17] Speaker 00:
He found, for example, and I'll quote, that when interpreted broadly, Hastings could read on the cure replenishment control rules, as recited in Claims 1 and 13.

[00:15:28] Speaker 00:
Throughout this re-examination and this appeal, appellant has never challenged either the examiner or the board's findings regarding the scope and content of Hastings.

[00:15:37] Speaker 00:
The board went on to repeat the examiner's findings.

[00:15:41] Speaker 00:
and also find that Hastings alone is sufficient to satisfy at least the disputed limitations of claims 113, 23, 99, and 103.

[00:15:51] Speaker 00:
The board and the examiner did rely on an additional reference, Steele, to disclose the limitations of claims 110 and 111.

[00:15:59] Speaker 02:
Mr. Mattel, is it correct that claims 39 and 40 were not projected as obvious?

[00:16:08] Speaker 00:
They were not, for lack of written description.

[00:16:11] Speaker 02:
I'm wondering why that is a proper rejection.

[00:16:25] Speaker 02:
Activity being performed in the home seems to be supported.

[00:16:31] Speaker 02:
Tell me if it's not.

[00:16:33] Speaker 02:
Column 25, lines 36 to 40, and claim 40 relating to a third party, a third party location.

[00:16:47] Speaker 02:
The site is in depth disclosed on Column 24, lines 44 at second.

[00:16:55] Speaker 00:
uh... addressing those two uh... in order of the uh... so the uh... with with regard to whether there's written support for uh... conducting the queue monitoring from the home uh... the passage you cited your honor from column twenty five relates to figure seven which is at page uh... eight two two nine one of the record the court prefers to refer to that page and the cited passage at page twenty five uh...

[00:17:24] Speaker 00:
does refer to certain functions in the words of the specification may be located physically on a home receiver player owned by the subscriber.

[00:17:33] Speaker 00:
But the things that are described as being on that home receiver are the subscriber selection queue and the titles out queue.

[00:17:40] Speaker 00:
And those relate to renting, but they're not the function of monitoring and executing the selections.

[00:17:46] Speaker 00:
That passage does also state that several other hardware and software modules of Figure 7 may be located

[00:17:53] Speaker 00:
on the home receiver, but it never specifies which of those are.

[00:17:57] Speaker 00:
And again, all of this relates to figure seven.

[00:17:59] Speaker 00:
The function that is disputed as to whether it's described as being executed on the home monitor is the Q control monitor, which is in the center of the bottom, item 726 in figure seven.

[00:18:14] Speaker 00:
Figure seven clearly distinguishes between client devices at the top and service provided by the server at the bottom.

[00:18:22] Speaker 00:
That Q control monitor is among the items that are described as service provided by the server, not on the home system.

[00:18:29] Speaker 00:
And again, there is this ambiguous passage in page on column 25 that says some of these functions could be on the home system, but there's no express indication or implicit indication that this monitoring function is one of those functions that could be executed on the home server.

[00:18:46] Speaker 02:
What about claim 40?

[00:18:48] Speaker 00:
Claim 40.

[00:18:50] Speaker 00:
Column 24.

[00:18:52] Speaker 00:
I'll concede, Your Honor, that that passage does appear to provide support for third-party monitoring.

[00:19:00] Speaker 00:
The difficulty with appellants reliant on that passage is the first brief that ever cited that passage and brought it to this Court's attention was the Solicitor's Brief in this case.

[00:19:08] Speaker 00:
It is there, Your Honor.

[00:19:10] Speaker 00:
It was never pointed out to the Examiner or the Board.

[00:19:18] Speaker 00:
in the solicitor's view of this case, our office came across this passage and felt it deserved to be brought to the court's attention.

[00:19:26] Speaker 00:
However, for purposes of this appeal, appellant has waived any argument with regard to that passage.

[00:19:31] Speaker 00:
It's never been examined, and it's frankly unclear whether that passage would necessarily meet all of the limitations of Claim 40.

[00:19:39] Speaker 02:
So a claim is invalidated because of poor advocacy?

[00:19:45] Speaker 00:
Yes, Your Honor, this court and the board have clear rules on waiver.

[00:19:49] Speaker 00:
If an applicant believes that a particular passage provides written description support, it's his obligation to point it out.

[00:19:57] Speaker 00:
And when it's not pointed out, it can't be raised for the first time in a reply brief.

[00:20:05] Speaker 00:
With regard to the other objections, I'd be pleased to answer any questions the court has about the Juan, Elston Bott, Chufri, Shalow, Scherr, or Steele references.

[00:20:14] Speaker 00:
But unless any questions are offered, I'm prepared to yield my time.

[00:20:19] Speaker 00:
Thank you.

[00:20:40] Speaker 01:
Your Honor, I just have one or two basic points to make.

[00:20:46] Speaker 01:
The first one is that I appreciate the positional solicitor's office.

[00:20:49] Speaker 01:
They come into this very late in the game.

[00:20:51] Speaker 01:
They did not participate in the process before, and therefore I understand why some of the comments are a little bit tangential.

[00:20:57] Speaker 01:
For example, this question about tastings disclosing all the limitation of the claim.

[00:21:02] Speaker 01:
That is just completely wrong.

[00:21:04] Speaker 03:
I don't think he said that.

[00:21:05] Speaker 03:
I think he said predominantly.

[00:21:06] Speaker 01:
Well, I think the words he said were 99%.

[00:21:09] Speaker 01:
99%.

[00:21:09] Speaker 01:
That's a pretty big number, Your Honor.

[00:21:11] Speaker 01:
I'm sorry.

[00:21:12] Speaker 01:
But I think if Your Honor will look at me with me at the appendix at page A-79, this is the original rejection by the examiner.

[00:21:21] Speaker 01:
And if you follow along in those pages, you will see limitation by limitation.

[00:21:26] Speaker 01:
He starts off with Hastings on A-79.

[00:21:30] Speaker 01:
The moment he gets to the very next limitation, defining a set of notification rules by the subscriber, he says, as disclosed by Bob, he's not relying on Hastings anymore.

[00:21:41] Speaker 01:
We go over the next page, page 731, which talks about monitoring with a bunch of replenishment rules.

[00:21:48] Speaker 01:
The very first words out of his mouth are, page 731, Bob thus discloses, and so on and so on.

[00:21:56] Speaker 01:
And as I said, Your Honor, the logic throughout the entire discussion

[00:22:00] Speaker 01:
is always the same.

[00:22:01] Speaker 01:
It's always, well, a person looking at your references could have picked that piece, and he could have picked that piece, and he could have put them together, and so on.

[00:22:10] Speaker 01:
And Your Honor, I just want to feel that it's an acceptable test that you folks have adopted or embraced before.

[00:22:17] Speaker 01:
I would say that the issue with these cases, the examination cases, is that unfortunately over time, things do get muddled and blended.

[00:22:25] Speaker 01:
And that's why as time goes on, the points tend to get focused and therefore

[00:22:29] Speaker 01:
We don't tend to drag along with us every single point again.

[00:22:33] Speaker 01:
So again, I understand why this solicitor's office may have believed that there was so much in Hastings because this discussion doesn't get pulled along all the way along to the appeal brief.

[00:22:43] Speaker 01:
But fundamentally, there were big issues with Hastings and that's why the reference is recited by the requester.

[00:22:48] Speaker 01:
And I might add the requester had a very significant opportunity, incentive obviously to find the best references in this case.

[00:22:55] Speaker 03:
And with that, I'm done.

[00:22:57] Speaker 03:
Thank you.

[00:22:59] Speaker 03:
Thank all council.