[00:01:16] Speaker 00:
The primary issue in this appeal is claim construction.

[00:01:23] Speaker 00:
It's construction of the claim term PDA, which stands for personal data system.

[00:01:28] Speaker 00:
The board over broadly construed the term PDA so broad that it doesn't even require personal data, which is the P and the D in PDA.

[00:01:39] Speaker 00:
The personal data such as calendar appointments,

[00:01:42] Speaker 00:
and contact list addresses and phone numbers that are used for PDA performing its primary defining function as an electronic day planner and address book.

[00:01:54] Speaker 00:
The board's overbroad construction disregards the P and the D and the term PDA to leave out the most basic defining features of a PDA, which is its handling of personal data.

[00:02:04] Speaker 00:
But most important to this appeal is the overbroad construction also leaves out the other most basic defining feature,

[00:02:11] Speaker 00:
which is how the device handles the personal data with synchronization between the device and the host computer.

[00:02:19] Speaker 03:
At the time of filing of this patent, I guess that was in 1998, did you supply any kind of dictionary definition or technical definition that demonstrates that the understanding to what order and skill they are back in the 1997-1998 time frame understood the

[00:02:42] Speaker 03:
acronym PDA to necessarily mean some kind of handheld device with data synchronization or necessarily did these kind of date planning type entries?

[00:02:55] Speaker 03:
No.

[00:02:55] Speaker 03:
You have to look through the extrinsic evidence to see that.

[00:02:59] Speaker 03:
Right.

[00:02:59] Speaker 03:
But this would be an example of extrinsic evidence, these types of technical definitions that I'm talking about.

[00:03:07] Speaker 03:
Yes.

[00:03:07] Speaker 03:
Because they're obviously not inside the patent.

[00:03:11] Speaker 00:
There are references to some features of a PDA.

[00:03:15] Speaker 00:
Most important, there's a reference to the primary example of a PDA, which is the POM pilot, which was the de facto standard for the PDA at the time of the filing of the application.

[00:03:25] Speaker 00:
Were there other PDAs out on the market at that time?

[00:03:27] Speaker 00:
Yes.

[00:03:28] Speaker 00:
The extrinsic evidence that we put into the case identified a collection of over 40.

[00:03:35] Speaker 00:
So why do we say that the POM pilot was the model?

[00:03:39] Speaker 00:
It had become the de facto standard from looking back to the first device, the Apple Newton, where the phrase was coined by the Apple CEO, John Scully, leading up to the time of the filing of the application.

[00:03:55] Speaker 00:
And the Palm Pilot, I believe it was the Palm Pilot 3 at that point, was the best-selling product.

[00:04:01] Speaker 03:
Right.

[00:04:01] Speaker 03:
But I mean, I guess what you're asking us to do is understand the term PDA and take

[00:04:09] Speaker 03:
features from the Palm Pilot and infuse that into the meaning of the word PDA, right?

[00:04:18] Speaker 03:
It's most important feature.

[00:04:20] Speaker 03:
Right, but I guess the concern is that therefore then, you know, why wouldn't under that logic we'd have to stick in the microcontroller from the Palm Pilot and the exact type of memory that was used in the Palm Pilot

[00:04:37] Speaker 03:
so on and so forth, the kind of display it had.

[00:04:40] Speaker 03:
Did it have backlighting?

[00:04:41] Speaker 03:
It goes on and on and on.

[00:04:43] Speaker 03:
There's a concern there.

[00:04:44] Speaker 00:
Yes, and I see that concern, but that concern is resolved by looking at the context of this invention.

[00:04:50] Speaker 00:
So it's not only looking at the history of the phrase PDA and how it was coined and what the purpose of a PDA was to replace an electronic day planner.

[00:05:00] Speaker 00:
And the reason why this two-way synchronization function

[00:05:05] Speaker 00:
is the most basic defining feature.

[00:05:07] Speaker 00:
So that's the history of the PDA.

[00:05:10] Speaker 00:
And how it came about, PDA was to replace electronic day planners and had to have this central most basic defining function of synchronization to accomplish its purpose and goal.

[00:05:21] Speaker 00:
Then you look not only from the history of the term PDA to the context of the invention.

[00:05:27] Speaker 00:
In this invention, the whole purpose of it was to allow for wireless thinking.

[00:05:32] Speaker 00:
If you look at... It doesn't say that in the patent, though.

[00:05:35] Speaker 00:
It doesn't say the word sinking anywhere.

[00:05:38] Speaker 00:
I see it, and the way I see it is you look at what is the purpose of the invention.

[00:05:43] Speaker 00:
If you look in the description in the background, you see the shortcomings of the PDAs.

[00:05:49] Speaker 00:
And one of the primary shortcomings that's listed in what shows the purpose of the invention is that at the time of the filing of the application, the PalmPilot and all the other PDAs required

[00:06:02] Speaker 00:
physical connection between the PDA and the computer to accomplish this most basic purpose of the device.

[00:06:09] Speaker 03:
Right.

[00:06:09] Speaker 03:
And then the insight, the innovation here, the leap forward was let's stick a laser on the PDA so now it can communicate to the host.

[00:06:18] Speaker 03:
Exactly.

[00:06:18] Speaker 03:
So a laser beam instead of, you know, some kind of physical electrical connection to the host.

[00:06:25] Speaker 00:
Absolutely.

[00:06:25] Speaker 00:
And that was, it's a wonderful invention at the time.

[00:06:29] Speaker 00:
We all take it for granted now with our smartphones, with our wireless syncing.

[00:06:33] Speaker 00:
But at that time, the device, you had to physically connect it to your host computer or have a cradle on your desk.

[00:06:41] Speaker 00:
In the case of the Palm Pilot, it was called the Hot Sync Cradle.

[00:06:45] Speaker 00:
Not just any cradle, a Hot Sync Cradle.

[00:06:48] Speaker 00:
If you traveled with your PDA, you had to lug that thing around or at least remember to bring your cable.

[00:06:53] Speaker 00:
And then amazing innovation that this provided was the wireless syncing.

[00:06:57] Speaker 00:
Now we have

[00:06:59] Speaker 00:
a different kind of wireless now that we all take for granted.

[00:07:02] Speaker 00:
But at that time, it was a wonderful invention to free yourself, free the Palm Pilot from the hot sink cradle.

[00:07:08] Speaker 00:
And that device, you could use this wireless communication, LED or infrared laser.

[00:07:17] Speaker 00:
And what you ended up with was wireless sinking.

[00:07:24] Speaker 00:
That's what you got.

[00:07:25] Speaker 00:
That's what the purpose of it.

[00:07:27] Speaker 00:
So it makes absolutely no sense

[00:07:29] Speaker 00:
to have a definition for PDA that doesn't even include synchronization, the most basic defining feature of a PDA and its definition, and then the most basic purpose of the invention.

[00:07:42] Speaker 03:
But doesn't the spec lead us to a definition of PDA as this particular inventor understood and wanted us to understand the term PDA?

[00:07:53] Speaker 03:
PDAs are small, substantially hand-sized computers

[00:07:57] Speaker 03:
that are used for storing, manipulating, and retrieving the defined amount of data.

[00:08:02] Speaker 03:
I mean, that's a very basic definition, but it also indicates to the reader that this inventor wanted to go broad.

[00:08:11] Speaker 03:
Like any handheld computer that you can stick a laser on so it can communicate with a host computer or be used as a barcode reader or be used as a remote control.

[00:08:25] Speaker 03:
That seemed to be the

[00:08:27] Speaker 03:
the genius of this invention, and it didn't say anything about data thinking.

[00:08:33] Speaker 03:
That's my problem.

[00:08:34] Speaker 00:
Well, there's a couple of reasons why you know that's not an all-encompassing defining invention.

[00:08:39] Speaker 00:
It's not the situation where you would say this inventor is acting as a lexicographer and trying to define the claim term as something different from what the ordinary meaning is in the art.

[00:08:51] Speaker 00:
You have the beginning of a definition, you have a few features,

[00:08:56] Speaker 00:
And you know it's not an all-inclusive definition, because it doesn't even include personal data.

[00:09:00] Speaker 00:
So to say that when there's some features listed for PDA, and then to say, well, the inventor wanted to go broad there, so we're not even going to include the P and the D in the PDA, that doesn't make any sense.

[00:09:15] Speaker 00:
And then the board confirmed that itself.

[00:09:17] Speaker 00:
Because when the board, even though the petitioner was trying to point to this as a lexicographer situation, the board rejected that.

[00:09:26] Speaker 00:
The board took that language in the spec, added to it, took away from it to come up with their definition.

[00:09:33] Speaker 00:
So even the board recognized that this was not a lexicographer situation where you had an all-encompassing, defining definition in the spec.

[00:09:42] Speaker 03:
Right, it was willing to understand that after reading the remainder of the spec, there was also this notion of exchanging data with a host computer.

[00:09:51] Speaker 00:
Yes.

[00:09:52] Speaker 03:
So that was the extra add-on to

[00:09:55] Speaker 03:
the very broad statement of what a PDA is at the very beginning of the spec.

[00:10:00] Speaker 00:
Yes.

[00:10:00] Speaker 00:
And they came close.

[00:10:01] Speaker 00:
They almost got there.

[00:10:02] Speaker 00:
But what they didn't specifically define, or at least later they characterized this exchanging as, when I first saw that claim construction, I thought, great, we got it.

[00:10:11] Speaker 00:
That's exchanging the information is the synchronization that belongs there.

[00:10:15] Speaker 00:
Later the board clarified, or maybe that's what it meant from the beginning, that this exchanging of information was just basic uploading and downloading.

[00:10:24] Speaker 00:
not the two-way synchronization that allows a PDA to form its most basic function of replacing the old pen and paper day planners.

[00:10:36] Speaker 00:
So the board got close, but they didn't get all the way there.

[00:10:41] Speaker 00:
And if you look at some of the things the board did, which misled them into coming up with this overbought construction, one of the things is they looked at a reference in the spec

[00:10:53] Speaker 00:
to the PDA, the barcode scanning feature of the PDA, providing substantially increased function to the PDA.

[00:11:02] Speaker 00:
That's column two, line 17 to 21.

[00:11:05] Speaker 00:
So a reasonable way, the only way that you can look at that language in the spec is to say this invention, this wireless syncing invention that used a laser then allows additional functions of barcode scanning.

[00:11:20] Speaker 00:
So you have a PDA with all of its defining features,

[00:11:23] Speaker 00:
And then you substantially increase its functionality by adding barcode scanning.

[00:11:28] Speaker 00:
That's what the spec says.

[00:11:29] Speaker 00:
The board flipped that around and said, oh, well, that means a PDA can have not even require personal data or functioning as electronic day planner.

[00:11:41] Speaker 00:
It would only be a barcode scanner.

[00:11:43] Speaker 00:
And that's just a complete misreading of that language of the spec.

[00:11:47] Speaker 01:
End your rebuttal time, but don't you want to touch on BRI?

[00:11:52] Speaker 00:
Actually, I don't.

[00:11:53] Speaker 00:
I do want to say one thing.

[00:11:55] Speaker 00:
And that is, I understand from reading the COSO opinion that we have a binding precedent from another panel.

[00:12:05] Speaker 00:
I did not come here to argue the issue, understanding that we have binding precedent.

[00:12:11] Speaker 00:
But we're not waiving those arguments to the extent there's been an in-bank request to file a petition.

[00:12:20] Speaker 00:
And so I think those issues are still in play.

[00:12:22] Speaker 00:
but I certainly didn't plan on being on the tip of the spear of that argument today.

[00:12:27] Speaker 00:
Thank you.

[00:12:28] Speaker 00:
Appreciate your time today.

[00:12:50] Speaker 01:
Take your time on that.

[00:12:52] Speaker 02:
Thank you.

[00:12:52] Speaker 02:
My goal is just not to drop anything.

[00:12:57] Speaker 01:
I always admire counsel when they put a glass of water up there.

[00:13:01] Speaker 02:
May it please the court?

[00:13:08] Speaker 02:
The Post and Council is correct that there really is only one issue before the court, and that has to do with the construction of PDA.

[00:13:16] Speaker 02:
And in effect, what we've heard is all sorts of different ways to improperly

[00:13:21] Speaker 02:
limit the express definition of a PDA that's set forth in the patent to read in definitions and limitations that are not mentioned in the patent, particularly with respect to synchronization, and that are at best merely a term for personal data application that would encompass software that would be representative of one of many possible embodiments in the patent.

[00:13:48] Speaker 02:
And I'd just like to respond to a couple of the points that were made.

[00:13:53] Speaker 02:
And that has to do with the acronym PDA, personal data assistant.

[00:13:59] Speaker 02:
There's been a lot of argument about the fact that the acronym, you can read it to say personal data.

[00:14:04] Speaker 02:
And therefore, you have to define the term personal data.

[00:14:07] Speaker 02:
But that's a misapplication of what the word data is intended to modify.

[00:14:12] Speaker 02:
When you look at the definition of personal data assistant that the inventor decided to set forth,

[00:14:18] Speaker 02:
you have a personal device, a small handheld device that you can carry around.

[00:14:23] Speaker 02:
And it is a data assistant.

[00:14:25] Speaker 02:
It's a processing device that can store and manipulate a defined amount of data.

[00:14:31] Speaker 02:
And this is also consistent with the way that PDA was defined and considered in all the other prior art, where they looked at it not as a personal data assistant, but as a personal digital assistant.

[00:14:42] Speaker 02:
And in the brief,

[00:14:46] Speaker 02:
patent owner's opening brief, I think around page 23, they treat personal digital assistant and personal data assistant as synonymous.

[00:14:54] Speaker 02:
And you can never parse personal digital in that way.

[00:14:59] Speaker 02:
Because it makes no sense.

[00:15:00] Speaker 02:
It's a personal device that's a digital assistant.

[00:15:02] Speaker 02:
Here we have a personal device that's a data assistant.

[00:15:05] Speaker 02:
And it's further evidenced that the word personal is not referring to the type of data.

[00:15:10] Speaker 02:
We look at the patent and it reuses that term in one other place where it's talking about the host computer.

[00:15:15] Speaker 02:
And it says our host computer can be a personal computer or it can be a network device.

[00:15:20] Speaker 02:
And again, this is not talking about the type of data that you have.

[00:15:23] Speaker 02:
Data is data.

[00:15:24] Speaker 02:
It shouldn't matter whether the data is my birthday or the date for the next Super Bowl.

[00:15:30] Speaker 02:
It shouldn't matter whether I'm using the device to inventory the books in my house or inventory the books in the library.

[00:15:37] Speaker 02:
We're not talking about the specifics.

[00:15:38] Speaker 02:
And if you get into the weeds about what a personal

[00:15:41] Speaker 02:
data is and what a personal application is, you have all sorts of indefiniteness type issues because then it gets into the intent of the user and the intent of how it's being marketed.

[00:15:52] Speaker 02:
And I'll specifically note that there were references, for example, to shopping but also inventory takers.

[00:15:59] Speaker 02:
Yes, sir.

[00:15:59] Speaker 02:
And I'd also like to specifically note that in the decision instituting the IPR, and this is at

[00:16:07] Speaker 02:
A196, the board actually recognized that what constitutes personal information is undefined.

[00:16:13] Speaker 02:
We have no idea about what that could possibly be.

[00:16:17] Speaker 02:
Under Phillips, which would be the lowest and most narrow construction that would apply if the CUSA speed decision gets reversed en banc, this board and the patent should be construed in accordance with the express definition of PDA that's set forth in the patent.

[00:16:35] Speaker 02:
The patentee was being their own lexicographer,

[00:16:38] Speaker 02:
They have a definition of clear, unmistakable, and equivocal, and that issue came up in one of the earlier discussions today.

[00:16:45] Speaker 02:
The patentee said, very broadly, I want, in the context of my patent, a PDA to be a small handheld device for storing, manipulating, and retrieving a defined amount of data.

[00:16:56] Speaker 02:
And the reason that the patentee went broad is clear, because the invention has nothing whatsoever to do with the functionality internal to the device.

[00:17:05] Speaker 02:
You could run software for inventory.

[00:17:08] Speaker 02:
You could scan barcodes and store them.

[00:17:10] Speaker 02:
You can use it for a calendar or a date book, although you can certainly run calendar or date book applications without synchronizing.

[00:17:17] Speaker 02:
It might not be the best thing to do, but there's no reason why you need that.

[00:17:21] Speaker 02:
But what the patent says at the top of column three is that the microprocessor interacts with an operating system that runs selective software depending on the intended use of the PDA.

[00:17:31] Speaker 02:
And there's nothing in the patent that limits

[00:17:34] Speaker 02:
what the device does with the data that it sends and receives.

[00:17:38] Speaker 02:
The entire purpose is to just make it easier, give you an alternative way to send the data, give you an alternative way to read the data.

[00:17:48] Speaker 02:
As far as synchronization being a necessary and defining feature, the only evidence that we have of that is the definition that Pat Noonan's expert constructed by looking at a variety of devices that he claimed were PDA.

[00:18:03] Speaker 02:
And as your honors noted, there are a whole host of other features that could be incorporated into it, and they just cherry picked one.

[00:18:10] Speaker 02:
That might be important in the market, but it's not a necessary and defining feature of PDA because we see in the definitions that are of record from Mike Magazine, from Microsoft, the Q Dictionary of Computing, various patents that we cited, that they all define PDA in the same time period as not, in ways that do not require synchronization.

[00:18:32] Speaker 02:
Once you can transfer data back and forth, which presumably encompasses synchronization and encompasses data backups, emails, faxes, any way and any use of that would be encompassed by the inventor's broad definition as slightly amplified by the board when viewing it in the broadest reasonable interpretation standard, recognizing that the device sends and receives data

[00:19:06] Speaker 02:
One of the other issues that the patentee argued about was that the definition is over-inclusive.

[00:19:14] Speaker 02:
There are two points.

[00:19:15] Speaker 02:
The first, the examples that they gave about it being over-inclusive is by pointing to a series of programmable Texas Instruments calculators.

[00:19:26] Speaker 02:
And their position is that one of skill in the art would understand that these are not PDAs.

[00:19:30] Speaker 02:
Well, first, there's no evidence in the record that their expert ever opined on whether or not these devices were PDAs.

[00:19:37] Speaker 02:
They certainly could fall within the inventor's broad scope.

[00:19:40] Speaker 02:
And there's no reason why the inventor's idea of using a laser scanner to send and receive data wouldn't work equally well on those devices.

[00:19:49] Speaker 02:
So that doesn't resolve their question.

[00:19:53] Speaker 02:
The other issue is that while they're arguing it's over-inclusive, they're also essentially poo-pooing the fact that their own definition is over-inclusive.

[00:20:02] Speaker 02:
Because their expert considered approximately 40 devices

[00:20:06] Speaker 02:
that he said were all PDAs and they have synchronization.

[00:20:09] Speaker 02:
And yet when you look in detail, you see that several of those devices, the Windows CE devices in particular, self-identified at that time by saying that we use Windows CE, we are not PDAs, we are in fact handheld computers.

[00:20:26] Speaker 02:
So you have a definition that's being proposed that will encompass

[00:20:30] Speaker 02:
devices that are not PDA and there's no reason to read limitations into the claims that don't help somebody determine whether or not their device might fall within the scope of the claims.

[00:20:41] Speaker 02:
And in fact, their own expert when asked whether a device that he thought wasn't a PDA would become one if you loaded personal software onto it and you gave it the ability to synchronize, couldn't answer the question.

[00:20:53] Speaker 02:
He said it has to do with whether or not the device

[00:20:57] Speaker 02:
implemented those things very well, and it had to do with the intent.

[00:21:01] Speaker 02:
And that all goes back to the fact that the term PDA at this time and until now is a marketing term at its base.

[00:21:08] Speaker 02:
It's not a well-defined term, and one of the articles that we cited actually says, and by 1997, and I'm referring article at A2057, is that the right one?

[00:21:22] Speaker 02:
Oh, I'm sorry, A2065,

[00:21:24] Speaker 02:
From 1997, a consensus on a specific product definition has not been reached.

[00:21:29] Speaker 02:
But what we see is that none of those definitions use the word synchronize in the written record of the time.

[00:21:37] Speaker 02:
And while synchronization might be a relevant feature, it's not a defining feature.

[00:21:42] Speaker 02:
And in fact, the board itself, in the context of the proposed amendment, made the determination that

[00:21:52] Speaker 02:
The idea of synchronization is not necessarily inherent in a PDA.

[00:21:56] Speaker 02:
And that, arguably, if we had no definition in the patent, and you were just left with the naked term PDA and had to figure out what it meant, it might be worth having this entire debate about what it is and what it isn't.

[00:22:08] Speaker 02:
But the patent owner gave us his own definition under Phillips, which would apply if the cruise of speed is reversed.

[00:22:17] Speaker 02:
Phillips specifically says, and I'll quote to make sure I get the language right,

[00:22:22] Speaker 02:
When the inventor acts as their own lexicographer, in such cases the inventor's lexicography governs.

[00:22:29] Speaker 02:
So that's going to provide our floor.

[00:22:31] Speaker 02:
There's no reason to narrow it to include a variety of limitations that are not disclosed and not required in any way by the patent and have no bearing whatsoever on any of the elements that are recited in the claims, which are very generic hardware elements that don't recite anything about

[00:22:49] Speaker 02:
actually sending and receiving data and don't recite anything about what software is being loaded on the device.

[00:22:59] Speaker 02:
If this court upholds the board's construction, then the claims are invalid.

[00:23:05] Speaker 02:
There's no argument on the record that under the board's construction the prior act does not clearly disclose all the limitations in the claims.

[00:23:13] Speaker 02:
If Kuzo Speed comes in and reverses and the board now applies a

[00:23:20] Speaker 02:
Phillips standard of construction.

[00:23:22] Speaker 02:
The claims are still invalid, because the only difference between the construction under Phillips and under a broadest reasonable interpretation standard is the slight broadening that was paneled in to recognize that you can send and receive data.

[00:23:34] Speaker 02:
The other differences in the definition between the patent board's definition and the inventor's express definition are essentially non-substantive wordsmiths.

[00:23:46] Speaker 02:
It's still a handheld device.

[00:23:48] Speaker 02:
It might be a little smaller.

[00:23:49] Speaker 02:
It can send and receive and process a defined amount of data.

[00:23:59] Speaker 02:
The board also found that the proposed amendment was improper for two reasons.

[00:24:04] Speaker 02:
The first was that the proposed amendment, which added the limitation configured to exchange and synchronize data with the host computer, was not supported.

[00:24:14] Speaker 02:
And that definition, excuse me, that finding is supported by substantial evidence because

[00:24:19] Speaker 02:
In effect, there's no evidence whatsoever in the record.

[00:24:23] Speaker 02:
Nothing in the interest of the evidence that mentions an annual synchronization.

[00:24:27] Speaker 02:
Unless you take the position that merely exchanging data between two devices is synchronization, at which point it's clear that the devices on the record, the PPT-4100, the Rupert patent, both disclose exchanging data back and forth.

[00:24:42] Speaker 03:
The Palm Pilot had data synchronization back then.

[00:24:45] Speaker 02:
Exactly.

[00:24:45] Speaker 02:
And in fact, that raises a much broader

[00:24:49] Speaker 02:
situation and that this is the, in some ways this is an absurd situation since the features that the inventor, excuse me, that the patent owner is trying to read into the claims, synchronization, personal data applications, synchronizing of personal data, the idea that they're trying to use is that this was so pervasive in the prior arc, this was all over the place, all of these devices had it, therefore you must define a PDA as including these limitations.

[00:25:20] Speaker 02:
The patent itself says that a PDA is conventional.

[00:25:22] Speaker 02:
And so to read into limitations, read into the claims, limitations that are being justified by the fact that they are in effect inherent in the prior art.

[00:25:35] Speaker 03:
What if this was a patent that was directed to a car?

[00:25:39] Speaker 03:
And maybe the car had, the invention was some extra add-on feature to the car.

[00:25:45] Speaker 03:
And then the spec said,

[00:25:48] Speaker 03:
A car is a vehicle with four tires and a steering wheel.

[00:25:56] Speaker 03:
One example of a car is a Toyota Prius.

[00:26:02] Speaker 03:
Then ten years later they want to amend their claims where the claim is for a car with a hybrid engine.

[00:26:12] Speaker 03:
Would you say that there's written description support for that later amendment?

[00:26:17] Speaker 02:
No, Your Honor, because the written description is to show what the inventor considered as their invention.

[00:26:23] Speaker 02:
The fact that they refer to a prior art device, in this patent that Palm Pilots, in your example, Toyota Prius, doesn't mean that the inventor had possession of all of the details.

[00:26:33] Speaker 03:
I mean, you'd agree that the calling card of a Toyota Prius is the hybrid engine.

[00:26:38] Speaker 03:
That's the very, very, very first thing you'd think of.

[00:26:43] Speaker 02:
But that's not a defining characteristic of a car.

[00:26:46] Speaker 02:
And it doesn't show that in the context of the patent, the distinction that the inventor had any appreciation of the distinction between the different types of engines.

[00:26:59] Speaker 02:
I mean, here, it's highly unlikely that the inventor wasn't intimately familiar with the fact that the palm pilot synchronized.

[00:27:05] Speaker 02:
If he had thought it was in any way important to the invention, if he had thought that anything beyond the mere ability to send and receive data in an improved manner was important,

[00:27:15] Speaker 02:
He could absolutely have put that into the claims.

[00:27:18] Speaker 02:
He could have put it in the specification, and he didn't.

[00:27:22] Speaker 02:
In your car example, it would be more equivalent to saying, here's a car.

[00:27:28] Speaker 02:
I want to amend the claims to recite a catalytic converter, because every car has one.

[00:27:33] Speaker 02:
It's irrelevant to the claims.

[00:27:34] Speaker 02:
You could have a device that has all sorts of software, and the patent says that it does whatever the software does, and it's for its intended use.

[00:27:44] Speaker 02:
The patent itself.

[00:27:46] Speaker 02:
doesn't care whether you synchronize.

[00:27:48] Speaker 02:
The adapter, which is the only thing the patent focused on, has no knowledge or care in any way of what software is being run under the hood and of what the data transmission is being used for in any circumstances, as long as you can do it.

[00:28:04] Speaker 02:
Thank you, Sir Alex.

[00:28:06] Speaker 01:
Thank you.

[00:28:12] Speaker 01:
Sir Rogers?

[00:28:13] Speaker 00:
You've got some time left.

[00:28:23] Speaker 00:
Just a couple of points.

[00:28:26] Speaker 00:
This distinction between personal data assistant versus personal digital assistant, the title of this patent is Laser Enhanced Personal Data Assistant.

[00:28:35] Speaker 00:
And the patent opens up with references to the device functioning as an electronic day planner.

[00:28:42] Speaker 00:
So we're talking about personal data.

[00:28:45] Speaker 00:
And if you look at the definitions in these magazine articles that are presented

[00:28:53] Speaker 00:
I think it's ironic that the petitioner is bringing forth this extrinsic evidence with magazine articles defining with definitions for PDAs.

[00:29:04] Speaker 00:
And if you look at them, what they all talk about, each one of them references personal data.

[00:29:10] Speaker 00:
They reference the calendar features, electronic day planner features.

[00:29:15] Speaker 00:
And at the same time, the petitioner is bringing forth this extrinsic evidence

[00:29:20] Speaker 00:
they're supporting and asking you to affirm a definition from the board that reads out these most basic defining features.

[00:29:29] Speaker 00:
And if you looked in at the criticism of the expert report, we have over 40 devices and each one of them has this defining feature, this synchronization.

[00:29:41] Speaker 00:
If there's criticisms of the list and references to whether or not it may include something handheld devices, some other term that could be used

[00:29:50] Speaker 00:
But if synchronization was not a defining feature of a PDA, the criticism of the list is the petitioners would bring forth a device that was known at the time to be a PDA that did not have synchronization.

[00:30:08] Speaker 00:
And they haven't done that.

[00:30:09] Speaker 00:
They haven't done it because they can't do it.

[00:30:11] Speaker 00:
Because every PDA at the time of the invention had synchronization.

[00:30:16] Speaker 00:
And the extrinsic evidence confirms then

[00:30:18] Speaker 00:
that the synchronization should be a part of the definition of the PDA and the board didn't do that and therefore their claim construction is overly broad.

[00:30:27] Speaker 01:
I appreciate your time today.