[00:00:04] Speaker 02:
We have two oral arguments this morning.

[00:00:07] Speaker 02:
The first one is combined.

[00:00:09] Speaker 02:
Mr. Chu, how long do you want for your argument?

[00:00:13] Speaker 04:
Ten minutes.

[00:00:14] Speaker 02:
Okay, so it's ten and ten.

[00:00:16] Speaker 04:
Correct, thank you.

[00:00:17] Speaker 02:
Okay.

[00:00:18] Speaker 02:
Go ahead, you can proceed.

[00:00:22] Speaker 04:
Good morning.

[00:00:24] Speaker 04:
Morgan Chu on behalf of the Appellant Soft View.

[00:00:28] Speaker 04:
May it please the Court, the Board,

[00:00:32] Speaker 04:
in construing a particular claim phrase was an error on a key claim limitation.

[00:00:44] Speaker 04:
And if you'll bear with me for a few minutes, I think I'll be able to show that first.

[00:00:50] Speaker 05:
I need to interrupt you before I start bearing with you.

[00:00:52] Speaker 05:
I'm sorry about that.

[00:00:54] Speaker 05:
Is it your position that the preserving limitation has the same meaning across all the claims at issue and in particular across the two patents?

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

[00:01:03] Speaker 05:
OK.

[00:01:05] Speaker 05:
I think I noticed, and tell me if I'm wrong, that there is a sentence in the abstract of the 353, a sentence in the written description of the 353, which your briefs rely pretty heavily on, neither of which, about look and feel and desktop computer, neither of which appears in the 926.

[00:01:26] Speaker 05:
Is that right?

[00:01:28] Speaker 04:
I believe that is correct.

[00:01:29] Speaker 05:
So I guess I'm puzzled about

[00:01:32] Speaker 05:
How that came to be, and in particular, how is it that both parties said nothing to us to explain a potentially important disparity between the patents?

[00:01:44] Speaker 04:
Well, first of all, I think both parties agree that whatever the meaning is of the claim phrase, it is the same for all claims for both patents.

[00:01:57] Speaker 05:
How did these passages come to appear in one but not the other?

[00:02:01] Speaker 04:
So there was a parent application.

[00:02:04] Speaker 04:
I think it was the 099.

[00:02:08] Speaker 04:
And one of them was a divisional from that.

[00:02:12] Speaker 04:
I think that was 353.

[00:02:13] Speaker 04:
And the other was a continuation.

[00:02:17] Speaker 04:
During the prosecution of 353 at one point, the applicant asked permission to add some language.

[00:02:27] Speaker 04:
And that language was added to 353.

[00:02:29] Speaker 04:
It was not added to 926.

[00:02:31] Speaker 04:
So the court's very observant on that difference, but I think both sides agree that it doesn't make any difference in terms of the fact that whatever the construction is, it ought to be the same for both patents.

[00:02:48] Speaker 02:
OK, thank you.

[00:02:49] Speaker 02:
Now, I'd like to- In the blue brief at 79 and 80, you argued there was a long felt need for the invention, and you cite data from a 2007 study.

[00:03:01] Speaker 02:
regarding consumer demand.

[00:03:03] Speaker 02:
Kyocera has asserted the effective filing date of the 353 is June 12, 2000.

[00:03:11] Speaker 02:
So how does long felt need in 2007 satisfied by an invention with an effective filing date in 2000?

[00:03:22] Speaker 04:
I think that a survey after the invention date that shows there's still a long felt need

[00:03:30] Speaker 04:
would be consistent with there being a long felt need at an earlier date.

[00:03:35] Speaker 04:
The invention had not been widely disseminated.

[00:03:39] Speaker 04:
Could I ask permission from the court to have distributed a few pages from the joint appendix and the intrinsic evidence that I would like to address?

[00:03:50] Speaker 04:
It's been distributed to opposing counsel.

[00:03:54] Speaker 02:
Would you speak?

[00:03:56] Speaker 02:
No objection, go ahead.

[00:04:00] Speaker 05:
These are already in the joint appendix?

[00:04:02] Speaker 04:
Yes.

[00:04:03] Speaker 04:
It's plain length.

[00:04:05] Speaker 04:
Instead of flipping through multiple lines, I thought it would be easier to have the particular pages.

[00:04:11] Speaker 04:
So if I can jump to what the problem is.

[00:04:16] Speaker 04:
These are highlighted just to make it clear.

[00:04:18] Speaker 04:
Yes, they are.

[00:04:20] Speaker 00:
Did they see the highlighted copies?

[00:04:23] Speaker 04:
Yes.

[00:04:23] Speaker 04:
They have identical copies.

[00:04:25] Speaker 04:
So 15 years ago in the year 2000,

[00:04:29] Speaker 04:
Here's what the problem was.

[00:04:31] Speaker 04:
Someone would have a desktop computer, and they would access the web page, and there would be a certain look and feel, including the layout.

[00:04:39] Speaker 04:
It might be, let's say it's the Washington Post, and let's suppose the layout was four or five columns, three images on it.

[00:04:46] Speaker 04:
The functionality, functionality is very important.

[00:04:49] Speaker 04:
When you go to Google,

[00:04:51] Speaker 04:
There's a search box.

[00:04:52] Speaker 04:
You type something in.

[00:04:54] Speaker 04:
You go to amazon.com.

[00:04:55] Speaker 04:
You want to buy something.

[00:04:57] Speaker 04:
You have to type in your credit card.

[00:04:58] Speaker 04:
That's part of functionality and design.

[00:05:03] Speaker 04:
And the problem was the user of a handheld device, such as Palm Pilot, which was very popular at the time, could not access the internet and get a web page and interact with it with the same look and feel, including

[00:05:19] Speaker 04:
the same layout, functionality, and design.

[00:05:23] Speaker 04:
That's the problem that was solved.

[00:05:25] Speaker 04:
What's the fight about on the preserving the original page limitation?

[00:05:30] Speaker 04:
We say that it is preserving the original page to preserve that look and feel that one would get from the conventional desktop browser.

[00:05:44] Speaker 04:
The other side and the board says, in essence,

[00:05:48] Speaker 05:
Well, what about a web page that has never been displayed on a desktop?

[00:05:55] Speaker 05:
So somebody created the web page on their iPad, or maybe even on their Android device, and it's sitting in a server somewhere.

[00:06:08] Speaker 05:
At that point, the reference to a conventional desktop seems extraneous.

[00:06:17] Speaker 05:
That is, it seems like what's to be preserved is whatever the HTML code sitting in the server instructs about display and capabilities.

[00:06:31] Speaker 05:
And as long as those instructions are followed, that's as much as the claims call for preserving.

[00:06:41] Speaker 04:
In the real world, that webpage that's never been browsed is true.

[00:06:47] Speaker 04:
was designed by a web page designer.

[00:06:49] Speaker 04:
Well, first of all, in the real world, I think the web page designer would say, before I release this, I'm going to use Internet Explorer and Mosaic and several others to see what it actually looks like.

[00:07:00] Speaker 04:
But let's suppose we've got a lunatic web page designer and never does.

[00:07:04] Speaker 05:
I mean, plausibly, I assume it's somebody sitting in a cafe with their iPad and making up web pages.

[00:07:10] Speaker 05:
OK.

[00:07:11] Speaker 05:
That's not a desktop.

[00:07:12] Speaker 04:
OK.

[00:07:13] Speaker 04:
But that designer has in mind

[00:07:17] Speaker 04:
the way it's going to look, and in particular, what the layout will be, the functionality, as well as the design.

[00:07:27] Speaker 05:
But that's not tied to a desktop view.

[00:07:32] Speaker 04:
The web page designer in the year 2000, since people viewed the web pages from their desktop, would have in mind the way it would be viewed in a desktop browser.

[00:07:48] Speaker 04:
If I can describe what I think the board's interpretation is, they're saying it has to maintain whatever is translated on the handheld device the first time it's rendered on the handheld device.

[00:08:03] Speaker 04:
And literally what the board's definition means of this preserving limitation is that, for example, if you have that four-column newspaper page, three photographs, and the like,

[00:08:17] Speaker 04:
Suppose columns are stripped out, centering is stripped out, bold titles are stripped out, the photographs are stripped out, some simple crazy fonts used, and it's all across.

[00:08:30] Speaker 05:
So that I understand this.

[00:08:34] Speaker 05:
It seems to me there are two possible non-desktop things that can be preserved.

[00:08:40] Speaker 05:
One is what I think you just said, which is the way the thing looks at

[00:08:46] Speaker 05:
the completion of the mobile devices step one.

[00:08:52] Speaker 05:
Pre-rendering, I don't know if that's the correct term.

[00:08:57] Speaker 05:
The other is what I was referring to before.

[00:09:00] Speaker 05:
Whatever instructions are in the web server's file about display.

[00:09:10] Speaker 05:
What is it about the board opinion that tells us that, as I think you suggested, it was that former thing, namely what has to be preserved upon fiddling with scale magnification is not simply the instructions in the server, but the look, the representation after step one pre-magnification on the mobile device.

[00:09:39] Speaker 04:
So what the board's definition is, and I'm going to just excerpt some of the language, is to maintain whatever is translated.

[00:09:49] Speaker 04:
And the only way to read that is it's to mean whatever is rendered first on the screen is maintained.

[00:09:58] Speaker 04:
And if one looks at the claim language in the first page of this material has an exemplary 353 claim one.

[00:10:07] Speaker 04:
And if you look at the first block that's highlighted in yellow, it refers to rendering a browser interface via which a user is enabled to request access to an original web page.

[00:10:22] Speaker 04:
And in that block of plain language, original is used four times.

[00:10:28] Speaker 04:
So it's clear that that's the original web page that's created by the web page designer.

[00:10:33] Speaker 04:
What else could it be?

[00:10:35] Speaker 04:
It hasn't been rendered.

[00:10:36] Speaker 04:
on the handheld device yet.

[00:10:38] Speaker 04:
Indeed, at about line 33, it then says retrieving the web page.

[00:10:45] Speaker 04:
So it's retrieving that original web page.

[00:10:48] Speaker 04:
And what is it retrieving?

[00:10:49] Speaker 04:
We see in the material above an original page layout functionality and design.

[00:10:55] Speaker 04:
And after retrieving the web page, we see in this new block at about line 38, quote, preserves the original page layout functionality and design.

[00:11:06] Speaker 04:
of the content defined by its original format.

[00:11:10] Speaker 04:
The board's construction completely erases the word original, even though it appears seven times in the claim language that I've referred to.

[00:11:20] Speaker 04:
An original in the claim language must refer to what the web page designer designed.

[00:11:28] Speaker 04:
So let's go now to the written description, which is on the second page under the title

[00:11:35] Speaker 04:
brief summary of the invention.

[00:11:39] Speaker 04:
And we see there starting at about line 49 of column 2.

[00:11:44] Speaker 05:
And this is again the 353, but what you're about to rely on would not in fact appear in the 926.

[00:11:50] Speaker 04:
Correct.

[00:11:53] Speaker 04:
The methods and software enable users of various devices from handheld devices with small screens to view and interact with web pages in a manner independent of the screen resolution

[00:12:05] Speaker 04:
of such devices built in or associated display while maintaining the look and feel of browsing such pages with a conventional desktop browser.

[00:12:18] Speaker 04:
That's a fairly clear statement about what the invention is.

[00:12:22] Speaker 04:
It's not maintaining whatever comes up, no matter how curious or distant it is from the original web page as viewed on a conventional desktop browser.

[00:12:35] Speaker 04:
Now, if we go to the third and fourth pages of the materials, this is from the prosecution history.

[00:12:42] Speaker 04:
And on page A, 1119, I've highlighted in rose color, I think, what is cited by the petitioners and was cited by the board.

[00:12:54] Speaker 04:
And the petitioners in page 28, I believe, of their brief say, this defines the claim language, that rose highlighted language

[00:13:04] Speaker 04:
is hardly a definition.

[00:13:07] Speaker 05:
Can I come back and try to ask in a better way the question that I think it was my second to last question.

[00:13:15] Speaker 05:
Tell me why I would be wrong based on the board's opinion in saying it actually did adopt the claim construction that said what needs to be preserved

[00:13:31] Speaker 05:
is the set of display and capability instructions in the original web page, or rather, in that portion of it which is translated, not in the post-translation version of it.

[00:13:49] Speaker 05:
That's how I read page, I guess, 13 of the board decision.

[00:13:55] Speaker 05:
Numbers are all over the place.

[00:13:56] Speaker 05:
The original page 13.

[00:14:00] Speaker 05:
Tell me why that's wrong.

[00:14:02] Speaker 04:
One would read the board's discussion and its claim construction.

[00:14:09] Speaker 04:
To me, only a small portion might be translated.

[00:14:14] Speaker 04:
And one might not preserve.

[00:14:17] Speaker 05:
Some of the claims do say that.

[00:14:19] Speaker 05:
That only a small portion are translated.

[00:14:22] Speaker 04:
Let me come to that issue in a moment.

[00:14:25] Speaker 04:
But the heart of this claim and the claims in general talk about preserving

[00:14:32] Speaker 04:
the layout functionality and design.

[00:14:36] Speaker 04:
They don't talk about preserving, with one exception, just part of the layout functionality and design.

[00:14:45] Speaker 04:
And here's what the board did to import that to all of the claims.

[00:14:52] Speaker 04:
They went to one claim, claim 30 in the 926 patent.

[00:14:59] Speaker 04:
And that claim says, in essence,

[00:15:02] Speaker 04:
preserving at least a portion of the layout functionality and design.

[00:15:07] Speaker 04:
So that's very clear that you could just preserve 20% of layout functionality and design.

[00:15:14] Speaker 05:
I guess I'm failing to understand how if you've only translated 20%, you could possibly be preserving because you haven't even done anything to the other 80%.

[00:15:28] Speaker 05:
OK, I have to back up.

[00:15:30] Speaker 05:
Why is this just not essentially a tautology?

[00:15:32] Speaker 05:
Whatever you've taken, you've got to preserve the features of that piece.

[00:15:40] Speaker 04:
I should have backed up just a little bit.

[00:15:45] Speaker 04:
What is the HTML code?

[00:15:48] Speaker 04:
In addition to layout functionality and design, which is what the user sees, there's stuff the user doesn't see that's part of the HTML code.

[00:15:58] Speaker 04:
What's the stuff that the user doesn't see and interact with?

[00:16:02] Speaker 04:
It's meta tags, as an example.

[00:16:04] Speaker 04:
The meta tag might be the title of the document, or it might say it's a newspaper, the name of the author, things that bots might pick up in searching, things that are buried in the code.

[00:16:16] Speaker 04:
And they may be very important for other reasons, but not important for the look and feel.

[00:16:22] Speaker 04:
There are also comments.

[00:16:24] Speaker 04:
They are put there by the HTML programmers.

[00:16:28] Speaker 04:
That has nothing, neither the comments nor the meta tags have anything to do

[00:16:32] Speaker 04:
It is true that those things are not being translated or may not be translated.

[00:16:41] Speaker 04:
And it's very clear in parsing through the claim language that the claim drafters didn't want a situation where someone said, I'm just not going to translate the comments.

[00:16:53] Speaker 04:
And therefore, I won't infringe this claim.

[00:16:57] Speaker 04:
But what needs to be preserved from the original pay

[00:17:02] Speaker 04:
is the layout functionality and design.

[00:17:07] Speaker 04:
And indeed, claim 30 of 926 patent even makes it clearer because that's the one claim, the one independent claim that says you only have to preserve a portion of layout functionality and design.

[00:17:21] Speaker 04:
So the board's error was to take that claim, claim 30 of 926,

[00:17:30] Speaker 04:
and stand claim differentiation on its head.

[00:17:34] Speaker 04:
It took that limitation and imported it to all the other claims where that concept of preserving only part of layout functionality and design doesn't appear.

[00:17:46] Speaker 05:
Now, I do want to... Can you give me an example in the portion of the board's decision having adopted its claim construction and then

[00:17:56] Speaker 05:
goes through the prior art and says, we find this, we find that, we find this other thing, where the difference between your view of what the correct claim construction is and what you say the board did makes a difference in how the board treated a piece of prior art.

[00:18:21] Speaker 04:
Oh, at a very high level.

[00:18:26] Speaker 04:
No piece of prior art has preserving as properly construed.

[00:18:34] Speaker 04:
And may I reserve time?

[00:18:36] Speaker 04:
Thank you.

[00:18:52] Speaker 03:
Good morning, Your Honor.

[00:18:53] Speaker 03:
Eric Cohen, representing QSARA.

[00:18:56] Speaker 03:
I'm splitting the argument with Mr. Alemany representing Motorola.

[00:19:00] Speaker 03:
I'm going to argue the claim construction preserves limitation and the obviousness of the preserves limitation.

[00:19:05] Speaker 03:
I'll answer any questions you may have about due process, but we're really leaving that to the patent office solicitor.

[00:19:13] Speaker 03:
Mr. Alemany is going to argue the so-called smart zooming and the secondary considerations.

[00:19:21] Speaker 03:
If I may begin

[00:19:24] Speaker 03:
I think where Judge Toronto left off, we think it really doesn't matter whether you affirm the board's construction, which we think should.

[00:19:37] Speaker 05:
What is the board's construction?

[00:19:40] Speaker 05:
The board's construction is... Let me just state how I understand the issue in my mind.

[00:19:50] Speaker 05:
One is whether the

[00:19:53] Speaker 05:
version that is adopted by the mobile device once it's translated into the scalable vector representation, which allows magnification without changing things.

[00:20:07] Speaker 05:
What is preserved is the difference between something that pre-existed the arrival of the thing on the mobile device, namely the display features provided for in the instructions in the

[00:20:23] Speaker 05:
page sitting in the server, or whether it's preserving some version after the first step in the mobile device, whatever that's called.

[00:20:35] Speaker 03:
So let me give you a fairly detailed answer to that.

[00:20:40] Speaker 03:
So the patent shows, and it's on one of the pages in the patent, gives an example of HTML code.

[00:20:46] Speaker 03:
That's what's sitting on the server.

[00:20:47] Speaker 03:
It's HTML code.

[00:20:49] Speaker 03:
If you browse and go to any web page, there's a way you can see what the actual code is, even today.

[00:20:56] Speaker 03:
You've got HTML code on the web page.

[00:20:58] Speaker 03:
And actually, what comes up on your screen is probably from more than one place, more than one server.

[00:21:05] Speaker 03:
That code, even in the prior art, had to get processed by a browser before there was a layout.

[00:21:13] Speaker 03:
So the patent describes, and this is in the prior art,

[00:21:17] Speaker 03:
The browser looks for objects, defines each object by putting a bounding box around it.

[00:21:22] Speaker 03:
So if there's some text, it'll put a bounding box around it.

[00:21:26] Speaker 03:
And the code prescribes like a general layout, but it doesn't prescribe exactly.

[00:21:32] Speaker 03:
It just gives relationships.

[00:21:34] Speaker 03:
That has to be processed by the browser's rendering engine.

[00:21:39] Speaker 03:
So as they explain so eloquently in the prosecution history, there really isn't a layout in design until after it's been processed by the rendering engine.

[00:21:47] Speaker 03:
and each browser does it somewhat differently.

[00:21:53] Speaker 05:
So, the board constructs, and now the other thing, the claims says... So, I think I'm hearing you say that what has to be preserved is the post rendering set of display features.

[00:22:08] Speaker 03:
That's exactly what they said.

[00:22:10] Speaker 03:
Those features, but those features that come from whatever code has been processed or

[00:22:17] Speaker 03:
translated, and at least half the claims say translating at least a portion of the HTML-based content from its original format.

[00:22:29] Speaker 03:
So that means, so that clearly says we're not translating, we're not necessarily translating all HTML.

[00:22:38] Speaker 03:
And from that the board concluded that it can't be as viewed on a conventional desktop browser because

[00:22:46] Speaker 03:
How do we know what's been translated?

[00:22:48] Speaker 03:
And that comes from the translating part of the claim.

[00:22:53] Speaker 03:
So to answer one other question, Judge Sharana, you asked, how did the difference in abstracts and summaries of the invention come to be?

[00:23:04] Speaker 03:
Well, after this patent application was filed in the year 2000, after the inventor and his patent attorney learned about the iPhone about six months afterwards in June of 2007,

[00:23:17] Speaker 03:
They amended the abstract and they amended the specification to put in the language that councils were relying on to support their claim construction.

[00:23:28] Speaker 03:
It was a clear attempt, after the fact attempt, to cover the iPhone.

[00:23:31] Speaker 03:
This is a submarine patent.

[00:23:33] Speaker 03:
There's no question about it.

[00:23:35] Speaker 05:
How does that bear on the obvious in this question?

[00:23:37] Speaker 03:
This is an answer to your question, Your Honor.

[00:23:40] Speaker 05:
But it actually doesn't have any bearing on the obvious.

[00:23:43] Speaker 05:
And it conceivably would have a bearing if there were a written description issue.

[00:23:48] Speaker 03:
We cannot raise that in this particular proceeding, Your Honor.

[00:23:53] Speaker 03:
But going to the issue about does it matter, really.

[00:23:58] Speaker 05:
And you agree that these passages in the 353 abstract and the 353 written description that don't appear in the 926 are nevertheless

[00:24:11] Speaker 05:
properly considered in interpreting the 926?

[00:24:14] Speaker 03:
I would agree that, since we all agree you can consider that these claim terms should be considered the same for all the patents, I would agree that they could be considered.

[00:24:28] Speaker 03:
We think they don't matter.

[00:24:30] Speaker 03:
We think they don't matter because of the explanation that the inventors gave in the prosecution history.

[00:24:37] Speaker 03:
And why is that important?

[00:24:39] Speaker 03:
And why is that a definition?

[00:24:42] Speaker 03:
The part that he highlighted in rows is that we're looking at the rose-colored glasses.

[00:24:47] Speaker 03:
Well, if you read the entire remarks section, they use that same introductory language on page A1104.

[00:24:58] Speaker 03:
But before then, on pages 1094 and 1095, the issue was they had tried to claim this limitation using the word substantial.

[00:25:10] Speaker 03:
And the examiner kept rejecting it.

[00:25:12] Speaker 03:
The examiner said, it's indefinite.

[00:25:14] Speaker 03:
I'm not going to give you any claim with the word substantially in it.

[00:25:17] Speaker 03:
So they amended the claim, this particular limitation, and a whole bunch of other ones.

[00:25:22] Speaker 03:
They yanked out the word substantially and put in other things.

[00:25:26] Speaker 03:
On pages 1094 and 1095, they said, as far as we're concerned, the claims have the same scope, even though we amended them.

[00:25:37] Speaker 03:
So there's no festo stop.

[00:25:40] Speaker 03:
And they went on to say, we're going to explain this so that one skill in the art knows what the scope is.

[00:25:46] Speaker 03:
And then on pages 1099, 1100, 1102, and then on 1119, they used the same language, the scope of, to introduce their definition of each and every term from which they removed the word substantially to avoid an estoppel from their amendment.

[00:26:10] Speaker 03:
And so the scope of, they use that language, the scope of, to describe the definition on page 1119.

[00:26:19] Speaker 03:
They follow it on 1120 to say, this preserves limitation as in a bunch of other claims.

[00:26:27] Speaker 03:
And they all have the same meaning as the meaning we gave in the preceding page.

[00:26:33] Speaker 03:
And then they use the same language in the prosecution history of the 926 patent.

[00:26:41] Speaker 03:
And this is on page A8167 and 68.

[00:26:46] Speaker 03:
The exact same explanation.

[00:26:51] Speaker 03:
In ipsis verbus.

[00:26:53] Speaker 03:
So the language, the words, the scope of, that's definitional.

[00:27:00] Speaker 03:
And they're basically saying, you've got to, this, what we mean, and so let's look at the claim language itself.

[00:27:06] Speaker 03:
The claim language says,

[00:27:09] Speaker 03:
So the context of preserving is preserving dot, dot, dot when scaled and rendered.

[00:27:23] Speaker 03:
That's in the translating claims.

[00:27:25] Speaker 03:
So you're preserving when you're scaling and rendering, when you're zooming in and zooming out of Preserves.

[00:27:31] Speaker 03:
The processing claims, one version preserving as interpreted by a rendering engine.

[00:27:37] Speaker 03:
the other processing claim, preserving at each zoom level in pan view.

[00:27:42] Speaker 03:
The claim language itself supports the board's construction.

[00:27:46] Speaker 03:
The prosecution history supports the board's construction.

[00:27:50] Speaker 03:
But does it matter?

[00:27:51] Speaker 03:
If you look at, I think it's in our brief on page 39, we reproduced page A2767 and

[00:28:06] Speaker 03:
A2769, Ben Biedersen's home page.

[00:28:11] Speaker 03:
Ben Biedersen is the author of the Pat++ articles.

[00:28:15] Speaker 03:
Ben Biedersen did a browser and he showed you could zoom in and out in his home page and it would preserve the original page layout functionality and design.

[00:28:25] Speaker 03:
Their argument is, well, how do we know that Biedersen's browser didn't process all the HTML code?

[00:28:37] Speaker 03:
Well, the heading is centered.

[00:28:39] Speaker 03:
There's nothing that's apparently missing from that page.

[00:28:44] Speaker 03:
They haven't offered any evidence that anything is missing from that page.

[00:28:48] Speaker 03:
Pad++ was a desktop browser.

[00:28:52] Speaker 03:
Was it conventional?

[00:28:53] Speaker 03:
What's conventional?

[00:28:54] Speaker 03:
That's what he said in his report.

[00:28:58] Speaker 03:
Thank you, Your Honor.

[00:28:59] Speaker 03:
But to finish here, there's no evidence, even under their construction.

[00:29:07] Speaker 03:
Let me put it positively, even under their construction, Pad++ preserves Ben Spearson's home page when it's zoomed in and zoomed out.

[00:29:16] Speaker 03:
There's no evidence that anything wasn't processed.

[00:29:27] Speaker 01:
Good morning.

[00:29:29] Speaker 01:
May it please the court?

[00:29:31] Speaker 01:
The board analyzed the patents on the one hand, Pad++ on the other hand.

[00:29:36] Speaker 01:
In relation to smart zooming, they found that they both lay out the page using the conventional process, that is by using bounding boxes.

[00:29:43] Speaker 01:
They both zoom based on bounding boxes.

[00:29:45] Speaker 01:
So in relation to the smart zooming, they do precisely the same thing.

[00:29:48] Speaker 01:
These findings are based on substantial evidence, and the board's finding that these claims are invalid is obvious, should be affirmed.

[00:29:55] Speaker 01:
I'll first walk through the process that the board took to analyze the patents.

[00:30:00] Speaker 01:
They looked at the disclosure at A870, which is in column 20, and they found a short description

[00:30:05] Speaker 01:
of the way in which the patent describes tapping to zoom, the smart zooming claims, as the appellant calls them.

[00:30:11] Speaker 01:
And they determined that there was very little description there.

[00:30:13] Speaker 01:
So they went back to the patent.

[00:30:15] Speaker 01:
They looked at the only embodiment in the patent that describes laying out a page and zooming in and out on the page.

[00:30:21] Speaker 01:
And that's all done in relation to Figure 5, which is A853.

[00:30:24] Speaker 01:
Again, it's a conventional process.

[00:30:26] Speaker 01:
The browser goes through, parses the page, determines what objects are on the page, including graphic images, columns, text, et cetera.

[00:30:34] Speaker 01:
puts those into bounding boxes and sets up the layout of the page.

[00:30:38] Speaker 01:
Then there's a later description of the patent, around column 19 and 20, where it describes how zooming occurs.

[00:30:43] Speaker 01:
And as the board found based on that evidence, it uses a bounding box to zoom.

[00:30:49] Speaker 01:
The board then turns its attention to PAD++, which describes exactly the same process.

[00:30:55] Speaker 01:
They relied specifically on a section at A2504, which is the center command.

[00:30:59] Speaker 01:
Center command specifically says that it operates on a bounding box to center that content that's contained within the bounding box so that it fills the screen.

[00:31:07] Speaker 01:
Appellant argues that, well, you know, in spite of all this disclosure in PAD++, all the references, there's a programmer's reference guide, there's sample applications, in spite of all of this, because the software that their expert downloaded that was a proof of concept that the board found of that software, because it doesn't support each and every tag that was existent at the time it was created, that somehow that doesn't show that

[00:31:29] Speaker 01:
Fab++ would preserve.

[00:31:33] Speaker 01:
The board found, however, that based on substantial evidence that it would have been well within one of Skill in the Arc to extend the browser.

[00:31:39] Speaker 01:
If they're building a browser, they wouldn't build a third browser, rather they would extend it to include all HTML tags.

[00:31:45] Speaker 01:
And the findings at 826, and the boards are lying on all the record.

[00:31:50] Speaker 01:
HTML was well known, browsers were well known, so there's nothing in the record that suggests that wouldn't be within the Skill of the Arc.

[00:31:56] Speaker 01:
The board went on to find that it would have been obvious to combine Zorris and PAD++.

[00:32:01] Speaker 01:
They relied specifically on two sections of the PAD++ references, a 2635 and 2821.

[00:32:07] Speaker 01:
Both those sections explicitly say, you can take these teachings, you can take this programmer's reference, you can take all the things I've described and apply them to a PDA.

[00:32:16] Speaker 01:
Also, like the patent, he says you can apply them to other things.

[00:32:18] Speaker 01:
For example, a desktop is in the proof of counts that he built, but you can apply them to a PDA and he explicitly says that.

[00:32:25] Speaker 01:
In the board's institution decision, they relied on additional evidence, and that evidence included the first declaration of Jack Grimes at A199 for the first institution decision, A618 for the second institution.

[00:32:37] Speaker 01:
They explicitly refer to Dr. Grimes' declaration at paragraphs 103 and 109 concerning the fact that you could combine these references together because they were all related.

[00:32:47] Speaker 01:
They were all in the same field in the field of zooming generally.

[00:32:52] Speaker 01:
And that makes sense in the context of the patent because the patent itself says,

[00:32:55] Speaker 01:
that the teachings could be applied to a desktop.

[00:32:57] Speaker 01:
They could be applied to billboards.

[00:32:59] Speaker 01:
They could be applied to small screen devices.

[00:33:06] Speaker 01:
There is an argument that appellant makes that there is a claim construction, a requirement to construe the claims that are related to smart zooming.

[00:33:14] Speaker 01:
This is a page 27 of the reply.

[00:33:17] Speaker 01:
That argument's waived.

[00:33:19] Speaker 01:
It was never raised below or in the opening briefs.

[00:33:21] Speaker 01:
But in spite of that,

[00:33:23] Speaker 01:
Those claims should be construed at least broadly enough to encompass the embodiment that's described in the patent, which is the embodiment I described, taking the page, laying it out based on bounding boxes, and then performing zooming based on those bounding boxes.

[00:33:35] Speaker 01:
So we don't believe it needs to be construed.

[00:33:38] Speaker 01:
No one raised that issue before the reply brief on page 27.

[00:33:42] Speaker 01:
The board was able to analyze the claims and the prior art in light of the Planned Ordinary Meeting.

[00:33:48] Speaker 01:
There's a heavy presumption that the Planned Ordinary Meeting should apply, so we believe that that was proper.

[00:33:56] Speaker 01:
There is a statement in the opening brief and the reply brief, pages 69 and 30, that refers specifically to A8801, paragraph 75 of Dr. Ryman's declaration.

[00:34:09] Speaker 01:
And in that section that he quotes, that the briefs rely on, he takes a statement out of PAD++, and in the statement he omits the beginning, he omits the middle, and he omits the end.

[00:34:20] Speaker 01:
And he picked two segments out of that long statement to say that PAD++ was only concerned

[00:34:26] Speaker 01:
zooming in and out on an object as a whole, zooming in and out on an HTML page as a whole.

[00:34:31] Speaker 01:
We believe if you look at that entire quote, it actually supports our position.

[00:34:34] Speaker 01:
It talks about the fact that a compound object, such as HTML, can be composed of many simple objects, such as characters, line segments, and images.

[00:34:44] Speaker 01:
So images, one of the exact things we're talking about in the claims is being able to zoom in and out of.

[00:34:49] Speaker 01:
Pad++ specifically discloses that.

[00:34:52] Speaker 01:
And at A2653, Payette++ explains that things like the compound document, like an HTML document, are actually stored in the hierarchy.

[00:35:00] Speaker 01:
So.

[00:35:01] Speaker 01:
Yes.

[00:35:03] Speaker 02:
You both did the red brief together.

[00:35:05] Speaker 02:
So there's a discussion, an argument in there that there's waiver.

[00:35:11] Speaker 02:
And the reply to it was just summaries, three lines or something.

[00:35:19] Speaker 02:
Would you discuss that a little bit?

[00:35:21] Speaker 01:
The waiver on which issue, Your Honor?

[00:35:25] Speaker 02:
Hang on.

[00:35:27] Speaker 02:
I'm sorry.

[00:35:28] Speaker 02:
Only claim 30 of the 926 patent recites preserves at least a portion of the HTML content.

[00:35:36] Speaker 02:
But this argument was waived because it was not presented to the board.

[00:35:41] Speaker 02:
That's 22 and 23 in your right brief.

[00:35:43] Speaker ?:
OK.

[00:35:53] Speaker 01:
Yeah.

[00:35:54] Speaker 01:
I think our point there in relation to these claims is that we treated the claims all as being the same.

[00:36:00] Speaker 01:
We treated the preserving limitations being the same.

[00:36:02] Speaker 01:
So there was no argument in the proceedings below that any of the claims should be treated differently, that the scope of the claim should vary.

[00:36:08] Speaker 01:
Some of the claims talk about translating a portion.

[00:36:11] Speaker 01:
Some of the claims talk about translating a view.

[00:36:14] Speaker 01:
In other words, a small, again, it's another way of saying a small portion of the screen.

[00:36:18] Speaker 01:
Based on the board's finding that one skill in the arc could extend, something like pad plus plus would understand all the HTML, I think implicit in that is the fact that one wouldn't create an absurd browser.

[00:36:29] Speaker 01:
So the record below is that we simply treated the claims all as the same and that that language was all the same.

[00:36:36] Speaker 01:
So the attempt in the opening brief to try to slice and dice the claims based on various limitations we hold is

[00:36:46] Speaker 01:
We held was waived, but we still discuss those limitations.

[00:36:51] Speaker 01:
We discussed them today.

[00:36:52] Speaker 01:
We discussed them in our brief.

[00:36:53] Speaker 01:
So I still believe the appropriate construction treat the preserve limitation the same throughout the claims.

[00:37:01] Speaker 01:
I want to make mention the board considered all the secondary considerations.

[00:37:07] Speaker 01:
They did so explicitly.

[00:37:09] Speaker 01:
At pages 831 and 867, they set up the entire portion of SOPHIE's secondary considerations so that they considered each of them.

[00:37:17] Speaker 01:
They relied on substantial evidence and finding that those secondary considerations had no nexus to the claimed invention.

[00:37:23] Speaker 01:
We believe those findings are proper and they're supported by substantial evidence.

[00:37:30] Speaker 01:
If there are any further questions, I'll sit down.

[00:37:35] Speaker 01:
Go ahead.

[00:37:35] Speaker 01:
Great.

[00:37:36] Speaker 01:
Thank you.

[00:37:51] Speaker 00:
Your Honor, may it please the Court, because SOFU has not re-alleged its various procedural challenges to the Board's management of this proceeding, I should be able to keep this argument short.

[00:38:01] Speaker 00:
The principal challenge brought by SOFU to the Board's decisions regarding this proceeding concerns the reply that Keohsara filed during the course of this inter-parties review.

[00:38:13] Speaker 00:
The relevant standard for the propriety of that reply is that provided by Section 42.23 of the Patent Regulations

[00:38:20] Speaker 00:
which limits that petitioner's reply to responding to arguments raised in the proceeding pattern in a response.

[00:38:26] Speaker 05:
Can I ask this?

[00:38:27] Speaker 05:
I took it that Softview's argument here about the procedure is only a constitutional argument, is not an argument about whether the regulations or statute for that matter were complied with, in which case the standard is not the regulation, but simply whether due process was violated

[00:38:49] Speaker 05:
by not giving them the last word on evidence.

[00:38:53] Speaker 00:
In its opening brief, SOFU also argued that the new grounds rule or its equivalent should apply in these proceedings.

[00:39:00] Speaker 05:
How part of their statement of the issue or in their heading, which is pure due process?

[00:39:08] Speaker 00:
The issue was alleged in their brief.

[00:39:10] Speaker 00:
The office responded to it.

[00:39:12] Speaker 00:
With regard to the new grounds issue, whether that rule applies in this case, I'd note that at page 33, note 5,

[00:39:19] Speaker 00:
of the reply brief, SOFU concedes that the new grounds rule does not apply in these proceedings.

[00:39:24] Speaker 00:
It's a creature of part 41 of the patent regulations, which only governs examination and reexamination proceedings, and that rule serves needs that are unique to an examinational type proceeding.

[00:39:36] Speaker 00:
Again, the relevant rule here, there's no new grounds rule in part 42, which governs these proceedings.

[00:39:41] Speaker 00:
The relevant rule is 42.23.

[00:39:43] Speaker 00:
And in its reply brief, SOFU did not respond

[00:39:47] Speaker 00:
to the office's argument that the preceding patent owner response did raise the arguments about the motivation to combine the Czarus and Hara references.

[00:39:55] Speaker 00:
So we take that as effectively conceded.

[00:39:58] Speaker 00:
I'd note that in his reply brief, soft view, this is at about pages 35, 36, did allege two additional arguments that were supposedly new and that petitioners reply these concern the Czarus and Pad++ references and the Opera browser references

[00:40:15] Speaker 00:
The arguments concerning these references, though, were never raised in SOFU's opening briefs and haven't been raised in this oral argument.

[00:40:22] Speaker 00:
And so I won't address them here.

[00:40:23] Speaker 00:
The argument is certainly waived.

[00:40:25] Speaker 00:
And then with regard to the point concerning due process, in its reply brief, SOFU refines its argument by citing two decisions from the 10th Circuit, the Dobley and Beard cases.

[00:40:37] Speaker 00:
This is about page 3940 of its brief.

[00:40:39] Speaker 00:
Now, the director cited cases such as Tanberg v. Schultes from the 10th Circuit.

[00:40:44] Speaker 00:
and other circuits that hold that whether evidence may be introduced in rebuttal in a trial is a matter within the discretion of the trial judge.

[00:40:53] Speaker 00:
The Dobley and Beard cases cited by Saucy in its reply state that in summary judgment proceedings, the summary judgment movement actually cannot introduce rebuttal evidence.

[00:41:04] Speaker 00:
I'd note, though, that both of these cases are from the Tenth Circuit, the same circuit that the Patent Office cites.

[00:41:10] Speaker 00:
The distinction between these cases is the rule that Dobley and Beard

[00:41:14] Speaker 00:
imposes unique to summary judgment proceedings, which have special rules that limit the movement's rights because it's recognized that it's an abbreviation of the normal right to present evidence.

[00:41:24] Speaker 00:
And in particular, Rule 56 includes Rule 56C, which imposes a 10-day limit on when a hearing can be held after there's a motion for summary judgment.

[00:41:33] Speaker 00:
Some courts of appeals have interpreted that 10-day limit as also barring the introduction of rebuttal evidence in these proceedings.

[00:41:41] Speaker 00:
This rule isn't even universal among circuits, but it is clear from a close reading of these cases that the rule is unique to summary judgment, and in particular to Rule 56C and its 10-day limit.

[00:41:52] Speaker 00:
It's not a general due process limit.

[00:41:54] Speaker 00:
The general due process limit is that articulated by the same circuit, the 10th circuit, in cases such as Tanberg and by other circuits that, again, is within the discretion of the trial judge, whether to allow evidence to be introduced on rebuttal.

[00:42:07] Speaker 05:
What, though, are the due process constraints on the discretion?

[00:42:11] Speaker 00:
you know, basic fairness and is there some kind of unfair surprise?

[00:42:17] Speaker 00:
And we believe that's preserved by the regulation governing here 42.23, which limits the petitioner to responding only to those arguments raised in the preceding patent owner response.

[00:42:28] Speaker 05:
So in your view, the due process argument is answered by the finding of the board that

[00:42:40] Speaker 05:
there wasn't anything substantially new in the brief.

[00:42:43] Speaker 00:
Yes, Your Honor.

[00:42:45] Speaker 00:
Our position is that a petitioner's reply that complies with 42.23 would also satisfy the demands of due process in these proceedings.

[00:42:54] Speaker 00:
And as a final argument, I'd urge this Court to simply consider the practical considerations of the approach to these replies and whether they're admissible, that soft view urges in its initial brief.

[00:43:05] Speaker 00:
Soft view urges this petition that

[00:43:07] Speaker 00:
any argument or evidence introduced in a reply is improper.

[00:43:10] Speaker 00:
If the petitioner could have anticipated, could have expected that the patent owner would make that argument in reply, and if it was possible to anticipate that that argument would be made by the patent owner, the petitioner has to respond to it in its initial petition and can't save that reply for what the statute designates as the reply.

[00:43:29] Speaker 00:
As a practical matter, this kind of inquiry

[00:43:32] Speaker 00:
would effectively expand the record in these proceedings for one thing to include the thousands of pages of the record in the usually co-pending district court litigation.

[00:43:39] Speaker 00:
This court would then be required to review all of that record to determine whether the interactions between the patent owner and the petitioner in any way apprised the petitioner of any argument that the patent owner might make.

[00:43:52] Speaker 00:
The director would submit that this kind of through the looking glass inquiry into what could the petitioner have known and when could he have known it,

[00:43:59] Speaker 00:
would be unmanageable on this Court's appellate review and is utterly divorced from the clear congressional purpose behind these proceedings to create a fast, efficient, and fair mechanism for adjudicating the validity of issued patents.

[00:44:11] Speaker 00:
The alternative approach that urged by Section 42.23 simply requires, when assessing the propriety of that petitioner's reply, this Court to consider, did it respond to arguments in the preceding Patent on a Response, this simple and compact inquiry

[00:44:27] Speaker 00:
would then allow this court to focus its main energy in appellate review of these proceedings on the principal question.

[00:44:33] Speaker 00:
Does the evidence of record support the board's finding with regard to the patentability or unpatentability of the claims?

[00:44:40] Speaker 00:
If this court has no further questions, I yield the floor.

[00:44:48] Speaker 04:
Go ahead.

[00:44:48] Speaker 04:
In my two minutes, I want to address the smart-tuning claims, and then I want to return to some of the questions we were discussing earlier.

[00:44:56] Speaker 04:
So first, what is a smart zooming claim?

[00:44:58] Speaker 04:
An example is three photographs, four columns.

[00:45:01] Speaker 04:
The user of the handheld device wants to see one photo, small display, taps on it, zoom to that exact photo, and it's fit across the display, just from the tap.

[00:45:13] Speaker 04:
That's claim 40 of 926.

[00:45:14] Speaker 04:
Claim 41, same thing with the column.

[00:45:17] Speaker 04:
Tap on the column, column four.

[00:45:20] Speaker 04:
Now the user sees column four, top of the column, and can scroll down.

[00:45:24] Speaker 04:
not a single piece of prior art had smart zooming before this invention.

[00:45:31] Speaker 04:
Now let me return to what is in part a theoretical but a very real discussion that we had a little bit earlier.

[00:45:38] Speaker 04:
One can theoretically think of the HTML code as just code sitting out there and not having an original web page layout functionality and design.

[00:45:49] Speaker 04:
But someone can also say, no, it really does have

[00:45:53] Speaker 05:
layout functionality and design and the claim is written that the web page writer is this wrong that the web page writer is among other things trying to write into what he leaves when he's done instructions about what this thing is supposed to look like within some range yes so how could that code not have

[00:46:19] Speaker 05:
some layout information in it.

[00:46:21] Speaker 04:
Not only layout information, it has layout functionality and design information.

[00:46:27] Speaker 04:
And my point here is using claim one of 353 as an example, that first block of highlighted text shows that the claim drafter had in mind before there is requested access to that web page on the internet, an original web page.

[00:46:45] Speaker 04:
That's what that block of text is.

[00:46:47] Speaker 04:
Later in the claim, the second highlighted law then goes on to say, translate that portion of the HTML code that will preserve the original page layout functionality and design.

[00:47:06] Speaker 04:
State it slightly differently.

[00:47:08] Speaker 04:
You've got to translate at least the HTML code that will preserve and render on a display because this is after the word rendering.

[00:47:18] Speaker 04:
render on a display the original page's layout, functionality, and design.

[00:47:26] Speaker 04:
Your Honor asked a question earlier about how this applies to prior art.

[00:47:32] Speaker 04:
So let me give you just one example.

[00:47:34] Speaker 04:
And the one example is Pat++.

[00:47:38] Speaker 04:
And if one looks at page 54 of her opening brief, there is, from the actual prosecution history, the dumbed-down Yahoo page.

[00:47:47] Speaker 04:
This is the page that would actually be rendered by pad++.

[00:47:52] Speaker 04:
And the board believes that this page, which doesn't have the layout, doesn't have the functionality, no search box, and doesn't have the design, it has none of the three elements, that this renders somehow obvious a claim that requires preserving the original layout, functionality, and design.

[00:48:14] Speaker 04:
I believe in short,

[00:48:15] Speaker 04:
that the natural reading of the claim language, as well as aligning the written description, is consistent with, and I believe is, the claim construction that SOFU put forward as consistent with the claim language, the prosecution history, as well as the written description.

[00:48:38] Speaker 04:
Thank you.