[00:00:06] Speaker 03:
Our next case is Wireless Inc.

[00:00:08] Speaker 03:
Corporation versus Facebook Inc.

[00:00:45] Speaker 03:
Mr. Ryan, we have you down for five minutes for your remittal.

[00:00:49] Speaker 03:
Is that correct?

[00:00:50] Speaker 03:
Yes, Your Honor.

[00:00:51] Speaker 03:
OK.

[00:00:51] Speaker 03:
You may proceed, please.

[00:00:54] Speaker 00:
Mr. Ryan, just a housekeeping question.

[00:00:56] Speaker 00:
I do remember another wireless ink versus Facebook case from a year, year and a half ago.

[00:01:02] Speaker 00:
Yes, Your Honor.

[00:01:04] Speaker 00:
Is that completely over with?

[00:01:06] Speaker 01:
Yes.

[00:01:07] Speaker 01:
I was here on summary judgment of non-impringement, and decisions below were affirmed.

[00:01:13] Speaker 01:
OK.

[00:01:13] Speaker 01:
Those cases are closed.

[00:01:15] Speaker 02:
OK.

[00:01:15] Speaker 01:
This patent, the 801 patent, is the subject of litigation in the Southern District of New York, but it is stayed pending the outcome of this re-examination.

[00:01:28] Speaker 01:
Good morning, Your Honors.

[00:01:28] Speaker 01:
May I please the Court?

[00:01:29] Speaker 01:
Joseph Ryan for Appellant Wireless Inc.

[00:01:32] Speaker 01:
Corporation.

[00:01:34] Speaker 01:
The PTAB has construed each of the independent claims of 801 patents in a manner that is inconsistent with the BRI of that claim.

[00:01:43] Speaker 01:
More particularly, the PTAB interprets each independent claim in a manner that is inconsistent with the plain meaning of the words of the claim, and in a manner that is not supported by the specification.

[00:01:55] Speaker 01:
It appears that the PTAB does not identify any particular support in the specification for its claim construction.

[00:02:02] Speaker 01:
Contrary to clear mandate, cases like in Rayquaza, more recent cases like Microsoft, E-ProxyCon,

[00:02:11] Speaker 01:
These cases emphasize, like Judge Chen emphasized in an earlier case, that you can't construe the claims in a vacuum.

[00:02:21] Speaker 01:
You have to look through the specification.

[00:02:25] Speaker 01:
The erroneous claim construction has infected each of the 102 and 103 rejections involving knee balance.

[00:02:33] Speaker 01:
These rejections should therefore be reversed and the case remanded to the PTAT.

[00:02:40] Speaker 00:
I know you're setting up your appeal right now as a claim construction case, but if we were to conclude that Niebauer or there's substantial evidence to support the finding that Niebauer discloses that it's only the founder when it comes to an unlisted club that can invite members and that members of the unlisted club don't have the ability to invite

[00:03:09] Speaker 00:
new people to become members of the unlisted club, then doesn't that resolve the question and we don't even have to get to the claim construction issue?

[00:03:18] Speaker 00:
No.

[00:03:19] Speaker 00:
No, Your Honor.

[00:03:20] Speaker 01:
What happened here is that there's a dispute between the parties about how an unlisted Yahoo Club works.

[00:03:29] Speaker 01:
We say it works one way.

[00:03:31] Speaker 01:
They say it doesn't work that way.

[00:03:33] Speaker 01:
The board, the PTAB, instead of

[00:03:36] Speaker 01:
resolving that factual determination, saying, yeah, you're right, or the other side's right, they punted.

[00:03:42] Speaker 01:
And they basically turned it into a claim construction issue.

[00:03:46] Speaker 01:
And that's evident from their decision at A9, where they're interpreting claim 14, for example.

[00:03:58] Speaker 01:
So the PTAS says this with regard to claim 14.

[00:04:02] Speaker 01:
We note that claim 14, for example, does not require

[00:04:05] Speaker 01:
that the plurality of other users are not permitted to invite numerous additional members.

[00:04:12] Speaker 01:
So the PTAB, in effect, construes claim 14 using a double negative, as in the claim does not require that the plurality of other users can't do x. This means that x is the way that we interpret the unlisted Yahoo Club.

[00:04:30] Speaker 01:
And we believe our interpretation is entirely correct on the references, if you look at them closely.

[00:04:36] Speaker 01:
So this means that the PTAB believes that claim 14 encompasses an arrangement in which the plurality of other users can invite numerous additional members, and that those additional members obtain access to the content without mutual consent with the first user.

[00:04:57] Speaker 01:
And such an interpretation is inconsistent with the plain meaning of the claim language, and more importantly, it's also inconsistent with the specification.

[00:05:08] Speaker 01:
For example, that interpretation seems to read terms like mutually consent, exclusive access, accessibility out of Claim 14.

[00:05:22] Speaker 01:
Moreover, there's no embodiment disclosed in our specification that operates in the manner alleged by the PTEN.

[00:05:30] Speaker 01:
They didn't even look at the spec.

[00:05:31] Speaker 01:
They said, effectively, we see there's a dispute between the parties about this factual issue.

[00:05:38] Speaker 01:
We say, unless the Yahoo Club works this way, they say it doesn't.

[00:05:43] Speaker 01:
Instead of resolving that, making factual findings about that, they turned it into a claim construction issue.

[00:05:50] Speaker 01:
And in doing so, they made an error, because they didn't look at the spec.

[00:05:54] Speaker 01:
And they didn't determine if the spec, our spec, supported that interpretation.

[00:06:01] Speaker 03:
So where is your clear language that requires control by the first user alone?

[00:06:06] Speaker 03:
In the claim, Your Honor?

[00:06:07] Speaker 03:
In the claim or in the spec?

[00:06:10] Speaker 01:
In the spec, if you look at, for example, figure 14.

[00:06:17] Speaker 01:
Do you have a record site on that?

[00:06:24] Speaker 01:
It's A43.

[00:06:34] Speaker 01:
Now, this is a page associated with

[00:06:38] Speaker 01:
what we call a content management website.

[00:06:41] Speaker 01:
It's an example of what is referred to in the claim as a first web-based interface.

[00:06:48] Speaker 01:
Mobile websites, which are examples of what are referred to in the claim as second web-based interfaces, are generated from this content management site.

[00:07:01] Speaker 01:
The content management site is built on a user account basis.

[00:07:05] Speaker 01:
It's locked down per user.

[00:07:07] Speaker 01:
In other words, password protected.

[00:07:09] Speaker 01:
No other user in our arrangement can change the settings of accessibility to a mobile website.

[00:07:21] Speaker 01:
It's entirely up to the first user.

[00:07:23] Speaker 01:
It's their mobile website.

[00:07:26] Speaker 03:
At the end of the day, we're talking about access, though, right?

[00:07:29] Speaker 03:
Controls to access.

[00:07:31] Speaker 03:
Right, right.

[00:07:32] Speaker 03:
So this figure 14 relates to the first user setting the controls.

[00:07:37] Speaker 03:
Right, so if later on an uninvited or somebody other than the first user can issue an invitation and provide access, then isn't that the case that access isn't limited to just the first user?

[00:07:56] Speaker 01:
Well, the answer to that, Your Honor, is that the first user ultimately decides

[00:08:02] Speaker 01:
all access issues with regard to his or her mobile website.

[00:08:05] Speaker 03:
It could be.

[00:08:06] Speaker 03:
But then later on, it's like somebody decides the rules to the house.

[00:08:11] Speaker 03:
And later on, other people, other invitees can invite whoever they want to into the house.

[00:08:19] Speaker 01:
Right.

[00:08:20] Speaker 01:
Yeah.

[00:08:20] Speaker 01:
But that's up to the... That's the interesting thing, Your Honor.

[00:08:24] Speaker 01:
You raise a good point.

[00:08:25] Speaker 01:
That is how an unlisted Yahoo club works.

[00:08:32] Speaker 01:
It's unlisted.

[00:08:33] Speaker 01:
That means that people have to be invited to join.

[00:08:36] Speaker 01:
But you have to look also at how the people get into the club after they're invited.

[00:08:41] Speaker 01:
There's no mechanism in the unlisted Yahoo club that allows the founder to pass on these folks yes or no before they get in.

[00:08:49] Speaker 01:
The way it works is they get in automatically.

[00:08:54] Speaker 01:
As long as you have the invitation in your hand, you get in.

[00:08:57] Speaker 01:
And without the knowledge of the founder, without the

[00:09:02] Speaker 01:
the consent of the founder, you just get in.

[00:09:05] Speaker 01:
And what happens there is the content that you think is private on that unlisted Yahoo club page is really not.

[00:09:14] Speaker 01:
Because any of the other members that you invited.

[00:09:16] Speaker 00:
Well, that's the concern I have, is that if, in fact, the unlisted clubs and Yahoo clubs and New Bar works the way you say it does, it completely destroys the whole purpose of an unlisted club, which where a founder

[00:09:31] Speaker 00:
You know, Yahoo, the Neibauer reference describes it as a private club to share private information with your friends and family.

[00:09:40] Speaker 00:
And so the fact, if under your reading, where any member of this private club can go out and bring other new members in, it, I mean, that makes it sound more like a listed club than an unlisted club.

[00:09:55] Speaker 01:
Yeah, it's interesting.

[00:09:56] Speaker 01:
And this is what the dispute is all about.

[00:09:59] Speaker 01:
If you read the reference in detail, and I point you specifically to the bottom of A160, it shows there, it's talking about an unlisted club, a personal club page.

[00:10:11] Speaker 01:
It says, the page contains all the elements found on other club pages.

[00:10:16] Speaker 01:
Click the invite option in the member tools section to ask other persons to join your club.

[00:10:21] Speaker 01:
The member tools are available to all members.

[00:10:24] Speaker 01:
That's why they're called member tools.

[00:10:26] Speaker 01:
Every member can invite.

[00:10:27] Speaker 01:
As the founder of the club,

[00:10:29] Speaker 01:
you'll also see these options in the admin tools.

[00:10:32] Speaker 01:
The founder has additional tools that the other members don't have.

[00:10:36] Speaker 01:
These are called admin tools.

[00:10:38] Speaker 01:
But the invite option is a member tool available to everybody.

[00:10:41] Speaker 00:
At the same time, the reference doesn't say when it comes to an unlisted club, members can likewise go into member tools and invite any new people into the founder's unlisted club.

[00:10:53] Speaker 00:
If you look at 8154, there's a big illustration

[00:10:59] Speaker 00:
using club member options.

[00:11:02] Speaker 00:
And it provides there how each member can do a whole host of things with member options, like edit your clubs, edit your public profile.

[00:11:12] Speaker 00:
And so what I'm wondering here is whether member options, it isn't necessarily something that's related to a particular club where you are a member of that club, but member options is really

[00:11:26] Speaker 00:
related to each individual person that might actually be members of a whole series of different clubs.

[00:11:32] Speaker 00:
And so now through your member options tool, you can edit all kinds of things about yourself in relation to all these different Yahoo clubs that you're a member of.

[00:11:45] Speaker 01:
You can, but the important thing is that you can invite other members.

[00:11:49] Speaker 01:
The reference is clear that the invite option

[00:11:54] Speaker 01:
is part of the member tools.

[00:11:56] Speaker 01:
They call it member tools because they're available to all members.

[00:11:59] Speaker 01:
Tools available only to the founder are called admin tools.

[00:12:04] Speaker 01:
And we don't have to rely just on my interpretation of Niebauer because we've got another reference in the record.

[00:12:10] Speaker 01:
It's called Hill.

[00:12:12] Speaker 03:
You're into your rebuttal time.

[00:12:14] Speaker 03:
You can preserve it or continue on.

[00:12:16] Speaker 01:
I'll continue on just for a minute to finish my point about Hill.

[00:12:20] Speaker 01:
Hill also describes the same thing.

[00:12:23] Speaker 01:
And it's in the record.

[00:12:25] Speaker 01:
I point you to A975 at the top of the page, where it describes, after you start a club, the club is in the Yahoo Club's directory at this point, unless you choose to make it private in step five above.

[00:12:47] Speaker 01:
That's a parenthetical.

[00:12:48] Speaker 01:
And then after that, and you can start inviting friends to join it using the invite friends link

[00:12:54] Speaker 01:
another parenthetical, you may access the same invitation page at any time using the link under member tools as described previously in this chapter.

[00:13:03] Speaker 01:
That's specifically saying that both a listed and unlisted club have the same member tools for invite.

[00:13:12] Speaker 01:
I'll stop there.

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

[00:13:19] Speaker 03:
Yes, Keith.

[00:13:22] Speaker 04:
May it please the court.

[00:13:23] Speaker 04:
Good morning, Your Honors.

[00:13:24] Speaker 04:
Heidi Keefe for Facebook.

[00:13:26] Speaker 04:
Judge Chen raises a very, very interesting question and a very important one.

[00:13:32] Speaker 04:
Not only are unlisted clubs special in the sense that they're a place where people can privately share information and by invitation only.

[00:13:42] Speaker 04:
Very critical and important distinction.

[00:13:45] Speaker 04:
If you look to the record at page A153, you note that

[00:13:50] Speaker 04:
Chapter 21 points out very specifically the difference between an unlisted club and a listed club is that you must be invited to join an unlisted club and distinguishes it in that way from the normal process of joining a club.

[00:14:05] Speaker 00:
Yet at the same time, the real question is by whom?

[00:14:10] Speaker 00:
You must be invited to join an unlisted club by whom?

[00:14:14] Speaker 00:
That's correct.

[00:14:15] Speaker 00:
By the founder or by anybody that's an insider into that unlisted club?

[00:14:20] Speaker 04:
I think that the most logical interpretation of the reference is that it is by the founder of the club.

[00:14:25] Speaker 04:
Because again, the point is to share with private family, to have a private place where people can share information.

[00:14:31] Speaker 04:
However, even if the court were to find that in fact there was a disclosure that person B, so A invites B and then B invites C, that doesn't change how the claim is actually read or what the claim actually means.

[00:14:47] Speaker 04:
There are accessibility rules.

[00:14:49] Speaker 04:
that are separate from the designation of users who can become a member of the club.

[00:14:55] Speaker 04:
Patent owner would have you conflate the two and say that the accessibility rules are the designation and therefore it can only be the people who are invited by the user who creates the club in the first instance.

[00:15:07] Speaker 04:
It's actually not what the claim calls for.

[00:15:09] Speaker 04:
The claim calls, claim 14 for example, that we've all been using as exemplary at A88,

[00:15:19] Speaker 04:
specifically calls for providing the first web-based interface accessible to a first user, A, who wants to create a club in Yahoo.

[00:15:28] Speaker 04:
The first web-based interface of Yahoo being configured to permit the first user to designate a plurality of other users.

[00:15:37] Speaker 04:
I'm going to invite B and C to join the club that I'm going to create.

[00:15:43] Speaker 04:
B and C will then share access to content with the first user

[00:15:48] Speaker 04:
in accordance with accessibility rules established by the first user.

[00:15:52] Speaker 04:
Accessibility rules are, did I make my club listed or unlisted?

[00:16:00] Speaker 04:
If it is a listed club, the accessibility rules are that anyone can join so long as they are a registered Yahoo member and affirmatively join the club.

[00:16:13] Speaker 04:
Accessibility rules for unlisted clubs are,

[00:16:17] Speaker 04:
if you are to believe patent owner's version of the interpretation of Yahoo, that the accessibility rules are you must be invited to join the club, whether by the first user or by a previously invited user.

[00:16:34] Speaker 04:
That means the accessibility rule itself provides the ability for other users to come in.

[00:16:40] Speaker 04:
To your example of a house, the rule is I get to decide who comes into the house

[00:16:46] Speaker 04:
But then once those people are in the house, I give them permission to invite other people to the party as well.

[00:16:51] Speaker 00:
How does that satisfy the mutually consent language in the claim?

[00:16:54] Speaker 00:
The first user mutually consents with each and all other users.

[00:16:59] Speaker 04:
Yes, Your Honor.

[00:16:59] Speaker 04:
So the first is easy.

[00:17:02] Speaker 04:
A invites B. B agrees to join.

[00:17:04] Speaker 04:
There's absolutely no question that there's mutual consent there.

[00:17:07] Speaker 00:
I know that.

[00:17:08] Speaker 04:
When B moves on to invite C, C comes in.

[00:17:12] Speaker 04:
A always has the option to

[00:17:15] Speaker 04:
turn C away, to say, C, I didn't want you here.

[00:17:19] Speaker 04:
It was always my decision to not have you be a part of this house.

[00:17:24] Speaker 04:
I know you just walked in, but I want you out.

[00:17:26] Speaker 04:
And that is specifically pointed out within the record at, for example, but not limited to, A158, which says that the user can always control who is in the club, and more importantly, A160,

[00:17:45] Speaker 04:
that indicates that the creator, A, always be allowed to delete members.

[00:17:50] Speaker 04:
And so C says, I would like to be in this house.

[00:17:54] Speaker 04:
I'd like to come in.

[00:17:55] Speaker 04:
And A says, no, I am leaving you out.

[00:17:59] Speaker 04:
You are not allowed to be in.

[00:18:00] Speaker 00:
The claim does not get into the house though.

[00:18:03] Speaker 00:
The claim does not require A has to, I don't know, eject them.

[00:18:07] Speaker 00:
That is a possibility.

[00:18:08] Speaker 00:
Yes, I'm not sure how that's mutually consenting to something where A

[00:18:13] Speaker 00:
before anyone gets in the house, gets to assent to it?

[00:18:18] Speaker 04:
There's no temporality required in the claim itself.

[00:18:21] Speaker 04:
It doesn't require that mutual consent happen before access.

[00:18:25] Speaker 04:
It just says that by the time everything is finished, there is a group of people who can access the information and a group of people who cannot.

[00:18:33] Speaker 04:
And so A and C have decided, C wants to look at it, A says, no, you can't look at it, and evicts them.

[00:18:41] Speaker 04:
That means that you have now established a group which can look at the information and a group which cannot look at the information.

[00:18:47] Speaker 04:
And so even under the strained analysis put forward by patent owner, the claim still reads directly on the Niebauer reference.

[00:18:57] Speaker 04:
And Niebauer provides a content management website that allows you to create a club whereby the club can be limited to invitation only

[00:19:08] Speaker 04:
And there is consent of all people, even if a secondary invitation is made.

[00:19:13] Speaker 04:
That though does also not change the fact, and I'd like to point out very specifically, of HP versus MUSTAC, which specifically says that if there are embodiments of a method that take care of or anticipate the claim, it doesn't matter that there may be some other times where the claim is not met.

[00:19:32] Speaker 04:
And so there's always the reasonable chance that A, invites B and C,

[00:19:37] Speaker 04:
And that's it.

[00:19:38] Speaker 04:
BNC accepts, there's mutual consent, and a group is formed that has exclusive access to that content.

[00:19:46] Speaker 04:
The MUSTEC would say that that premise alone provides anticipation.

[00:19:51] Speaker 04:
I'm just saying that it goes even beyond that because A, always has the ability to control who maintains themselves in the house.

[00:20:02] Speaker 00:
Housing Council, site A975.

[00:20:03] Speaker 00:
What do you have to say about that text on hell?

[00:20:07] Speaker 04:
So on A975, I think the thing that's most important about that is that A975 is talking about what the creator of the club can do, not what other members of the club can do.

[00:20:20] Speaker 04:
So A975 specifically is talking about what the founder can do when he is customizing his club.

[00:20:29] Speaker 04:
And so this is founder abilities, not other user abilities.

[00:20:32] Speaker 04:
He's trying to conflate the two together.

[00:20:34] Speaker 04:
So A975 doesn't support his proposition.

[00:20:40] Speaker 04:
Your Honor, I just have no further questions.

[00:20:42] Speaker 03:
Thank you very much.

[00:20:43] Speaker 04:
Thank you very much.

[00:20:51] Speaker 03:
Mr. Grant, I'll restore you back to four minutes of time.

[00:20:54] Speaker 03:
Oh, thank you very much, Your Honor.

[00:20:59] Speaker 01:
While we're looking at A975, Facebook is just wrong about that.

[00:21:05] Speaker 01:
This is describing

[00:21:09] Speaker 01:
the startup of a club, that's the invite friends link that it refers to.

[00:21:13] Speaker 01:
But it also says you may access the same invitation page at any time using the link under member tools, as described previously.

[00:21:20] Speaker 01:
So this passage here is specifically referring to both private, private unlisted and listed clubs, and it's saying that they both have member tools that allow people to invite.

[00:21:33] Speaker 01:
Going to Judge Chen's analogy,

[00:21:37] Speaker 01:
The situation, the problem here, Facebook points out that yes, the admin can remove members after the fact, but what is the founder supposed to do?

[00:21:48] Speaker 01:
The founder's supposed to spend all their time monitoring who's coming in and who's not.

[00:21:53] Speaker 01:
When you get an invitation to an unlisted club, not from the founder, but from one of the other members, all you have to do is respond to that invitation and accept, and you're in the club.

[00:22:04] Speaker 01:
You're in.

[00:22:06] Speaker 01:
There's nothing else to be done.

[00:22:07] Speaker 01:
The founder's got to say he starts a club with five people and he thinks he's having a private conversation and there's text there.

[00:22:17] Speaker 01:
They're going back and forth on the club page with messages.

[00:22:20] Speaker 01:
All of a sudden some other message pops in.

[00:22:22] Speaker 01:
It's a guy that just came in because someone else invited him and he accepted.

[00:22:30] Speaker 01:
Those folks get in and the important thing is they get access to the content without

[00:22:36] Speaker 01:
the approval or consent of the founder.

[00:22:39] Speaker 01:
These references are very clear.

[00:22:42] Speaker 01:
The founder gets admin tools.

[00:22:45] Speaker 01:
All member get member tools.

[00:22:47] Speaker 01:
All members can invite.

[00:22:48] Speaker 01:
Those invitees come in automatically, simply by accepting.

[00:22:54] Speaker 01:
That's covered in Niebauer in figure 21.9 at, let's see,

[00:23:07] Speaker 01:
at A154.

[00:23:10] Speaker 01:
You get this when you get your invitation.

[00:23:13] Speaker 01:
This is the link.

[00:23:14] Speaker 01:
It brings you to, yes, I accept.

[00:23:15] Speaker 01:
And you can even insert a message.

[00:23:18] Speaker 01:
So I'm in my allegedly private club with my five people that I personally invited.

[00:23:24] Speaker 01:
And all of a sudden a message pops up from some other guy I don't even know.

[00:23:27] Speaker 01:
How did this guy get in here?

[00:23:30] Speaker 01:
Well, I invited him last week.

[00:23:33] Speaker 01:
Now he knows everything we've been talking about.

[00:23:35] Speaker 01:
I didn't want that.

[00:23:38] Speaker 01:
The bottom line, Your Honors, is that for whatever reason, Yahoo designed their Yahoo clubs to encourage widespread membership by keeping this, having this invite function available to every member and not controlled by the founder.

[00:23:55] Speaker 01:
It's that simple.

[00:23:57] Speaker 01:
The board, you can see there's a dispute between us.

[00:24:00] Speaker 01:
The board didn't resolve that dispute by making a factual determination.

[00:24:04] Speaker 01:
Instead, the board turned it on its head and turned it into a claim construction.

[00:24:08] Speaker 02:
Let me ask you a question before you sit down.

[00:24:11] Speaker 02:
Let's assume this case is affirmed here.

[00:24:14] Speaker 02:
Then you go back to the Southern District.

[00:24:16] Speaker 02:
What's the next step?

[00:24:18] Speaker 01:
No, well, if it's affirmed here, we'd have to put this firm on appeal.

[00:24:21] Speaker 01:
Is that what's going on down there, right?

[00:24:24] Speaker 01:
Yes, Your Honor.

[00:24:26] Speaker 03:
It's a re-exam in context.

[00:24:28] Speaker 03:
OK.

[00:24:29] Speaker 03:
We thank you very much for the argument.

[00:24:30] Speaker 03:
We thank all litigants for the arguments today.

[00:24:34] Speaker 03:
That's all for the arguments.

[00:24:35] Speaker 03:
This court stands to answer.

[00:24:42] Speaker 00:
The honorable court is adjourned until tomorrow morning at 10 o'clock.