[00:00:00] Speaker 01:
The first argued case this morning is number 16, 1249, Arenda SARL against Google, Incorporated.

[00:00:09] Speaker 01:
Mr. Sunstein.

[00:00:14] Speaker 04:
Proceed.

[00:00:14] Speaker 04:
Honorable judges, good morning.

[00:00:18] Speaker 04:
The court should reverse the board's decision in validating the claims because the board adopted a claim construction contrary

[00:00:27] Speaker 04:
to a clear prosecution history disclaimer.

[00:00:31] Speaker 04:
To distinguish the prior art, the applicant amended the claims to add an analyzing step that occurs automatically upon a single entry of the execute command.

[00:00:44] Speaker 04:
The amendment and accompanying remarks expressly disclaimed user assistance, such as by selection of the first information or the text to be analyzed

[00:00:56] Speaker 04:
as a condition for the analyzing.

[00:01:01] Speaker 04:
The board's disregard of this disclaimer in its claim construction was error under proxy con and omega engineering.

[00:01:10] Speaker 04:
Under the proper construction, the claims are valid.

[00:01:13] Speaker 04:
The court should reverse.

[00:01:15] Speaker 04:
So the prosecution history contains a clear and unmistakable disclaimer that was required to obtain allowance over the so prior art.

[00:01:24] Speaker 04:
The amendment

[00:01:25] Speaker 04:
added the requirement of a computer process for, this is a quote, analyzing the document to determine if the first information is contained therein.

[00:01:37] Speaker 04:
Because the claim covers a computerized method, the amendment means that the determination, if the information is contained therein, is a step carried out by a computer, not by a human.

[00:01:52] Speaker 04:
So the analyzing happens by the computer.

[00:01:55] Speaker 04:
in contrast to the manual text selection by a user that is required by the so prior art.

[00:02:03] Speaker 04:
In making the amendment, the applicant made this very point and further emphasized that the computerized method executes this step automatically based on a single click of the input device.

[00:02:15] Speaker 01:
I quote.

[00:02:16] Speaker 01:
Mr. Sensen, a question that arose as I looked at this, if this were just an ordinary routine

[00:02:23] Speaker 01:
prosecution before the patent had issued and this issue had arisen, then saying that you can read the claim so broadly and so on, the whole broadest reasonable interpretation, the applicant has an opportunity to narrow the claim to respond to that objection.

[00:02:43] Speaker 01:
Now as I saw in the record, and perhaps it was too vague to be clear, in this case the board authorized

[00:02:54] Speaker 01:
amendment to that might have responded, might or might not, but that might have responded to this objection and the applicant did not make such an amendment, is that correct?

[00:03:07] Speaker 04:
I believe it is not correct, Your Honor.

[00:03:10] Speaker 04:
In fact, the additional claim limitation, the analyzing limitation was added in the prosecution following an interview with the examiner and the examiner invited just this amendment

[00:03:24] Speaker 04:
which the applicant made, and we have a computerized process.

[00:03:30] Speaker 04:
We know it's computerized because the preamble says that it's a computer method.

[00:03:35] Speaker 04:
So the process that was added is analyzing the document to determine if the first information is contained therein.

[00:03:43] Speaker 04:
So the applicant added that.

[00:03:45] Speaker 04:
The applicant added that after the examiner using BRI.

[00:03:50] Speaker 04:
said, applicant, we invite you to add this limitation.

[00:03:55] Speaker 04:
The applicant adds that limitation, explains why it's added, and the examiner.

[00:04:02] Speaker 04:
So that amendment was made on December 18, 2000.

[00:04:07] Speaker 04:
In January 2001, the examiner notes that the applicant did just what the examiner requested and says that distinguishes overt so in the reasons for allowability.

[00:04:18] Speaker 04:
So in fact,

[00:04:20] Speaker 04:
The amendment follows an invitation by the examiner, and the examiner, using BRI, determined that that limitation distinguishes over the so prior art.

[00:04:30] Speaker 04:
And the reason is the analyzing happens automatically.

[00:04:34] Speaker 04:
You have to understand that one of the things that's clever about this technology is that it mediates between two application programs.

[00:04:43] Speaker 04:
There's the application program in the preamble in which the document is open.

[00:04:49] Speaker 04:
And there's text in that document.

[00:04:52] Speaker 04:
And there's another thing called a record retrieval program, which could be, for example, Outlook, where information is stored in records and information can be retrieved from it, contact information.

[00:05:04] Speaker 04:
So within the application program that is open, one can access information that's in the Outlook program

[00:05:16] Speaker 04:
and view it and insert it and do things like that that are reflected in the claim.

[00:05:21] Speaker 04:
So the interaction is very clever.

[00:05:24] Speaker 04:
So the functionality that actually was developed by my client was to be able within an application program such as Word to access address information and other kinds of information that pertain to, for example, a name you might have typed into the document.

[00:05:43] Speaker 04:
So you can insert the address.

[00:05:46] Speaker 04:
into the Word document without having to flip into a new application.

[00:05:50] Speaker 04:
That was the invention.

[00:05:52] Speaker 04:
And so the invention discloses analyzing the text.

[00:05:57] Speaker 04:
This is in the description in the patent, analyzing the text in the document to figure out what's contact information.

[00:06:04] Speaker 04:
And what do you have to do?

[00:06:05] Speaker 04:
You simply push the one click button that was developed by my client, and then the analyzing occurs.

[00:06:13] Speaker 04:
it's automatic and this claim limitation to distinguish over in so there's some analyzing going on but first you had to select that which is going to be the subject of the analyzing unlike so all you do is push this little button and it happens so the limitation was added at the invitation of the examiner and the examiner says now that you've added this you've distinguished overt so and the reason you have distinguished over so

[00:06:41] Speaker 04:
you've added this limitation that allows the analyzing to occur automatically.

[00:06:47] Speaker 04:
In fact, in January 2nd, the examiner says, this is a quote from the examiner's reasons for allowance.

[00:06:54] Speaker 04:
However, and so, the texturing to be processed is determined by the current cursor position as specified by the user, and then there's a citation into so.

[00:07:04] Speaker 04:
Whereas the present invention, and this is a quote, an inside quote,

[00:07:09] Speaker 04:
does not require the user to select the text string to be processed since it functions automatically upon a single click of an input device.

[00:07:18] Speaker 01:
But this board was of a different view.

[00:07:20] Speaker 01:
And the whole structure of the America Invents Act is that three heads may be better than one.

[00:07:26] Speaker 01:
And so now we have what looked to me, and this is the clarification I was looking for, like an invitation and opportunity to amend.

[00:07:36] Speaker 01:
We know that there's a certain controversy about

[00:07:38] Speaker 01:
how many requests for amendments are granted and aren't, but that this was a situation in which it looks from the record as if the opportunity to amend was offered, but was not accepted.

[00:07:54] Speaker 01:
And my question is, do I read that record correctly?

[00:07:58] Speaker 04:
I see that the board had done so.

[00:08:03] Speaker 04:
I think the board certainly said that the disclaimer was not evident to the board.

[00:08:10] Speaker 04:
that the board failed to see that.

[00:08:12] Speaker 04:
And they certainly said that in their opinion that the applicant has an opportunity to amend.

[00:08:20] Speaker 04:
Certainly Google said that.

[00:08:21] Speaker 04:
On the other hand, we think the disclaimer record is really clear because the examiner was quoting from the applicant.

[00:08:30] Speaker 00:
But even if you're correct in your disclaimer argument, on pages 38 and 39 of the board decision,

[00:08:38] Speaker 00:
I understand it analyzing the references in their disclosures, which is a fact question, and concluding, nonetheless, what's disclosed doesn't constitute selection, even under your construction.

[00:08:51] Speaker 00:
So that's it.

[00:08:51] Speaker 00:
Am I missing something?

[00:08:52] Speaker 00:
I mean, I understand.

[00:08:54] Speaker 00:
Tell me why we should not only change the claim construction, which I think you've already done with your disclaimer argument,

[00:09:01] Speaker 00:
But in addition to overcoming that hurdle, you also need to overcome the hurdle that the board seems to have made an alternative fact finding about the disclosure of the references.

[00:09:09] Speaker 04:
The board did make that alternative fact finding.

[00:09:11] Speaker 00:
I believe... They did or did not?

[00:09:14] Speaker 00:
I understand you.

[00:09:15] Speaker 00:
They did.

[00:09:16] Speaker 04:
But I believe that finding is not supported by the evidence.

[00:09:20] Speaker 04:
The reason is the effect of the disclaimer was to require that the analyzing occurs automatically.

[00:09:27] Speaker 04:
If the

[00:09:29] Speaker 04:
Analyzing occurs automatically.

[00:09:32] Speaker 04:
What is ruled out is not simply selection, but any form of assistance by the user once there's been an execute command entered.

[00:09:42] Speaker 04:
If there's no assistance by the user, then clearly having to put the information in the selection box of good hand is a kind of assistance, dramatic assistance, that is not present in

[00:09:57] Speaker 04:
in the Rendy solution and the claims rule it out because it says it must happen automatically upon entry of the single click.

[00:10:06] Speaker 04:
So the board got to that position by ignoring the full impact of the disclaimer.

[00:10:13] Speaker 04:
So the disclaimer was achieved.

[00:10:14] Speaker 04:
Yes, it rules out selection, but it also rules out any assistance beyond entry of that single execute command.

[00:10:23] Speaker 04:
That's what really got ruled out.

[00:10:26] Speaker 04:
And in that sense,

[00:10:27] Speaker 04:
Once you look at the full power of the disclaimer and the examiner embraced it, the examiner adopted it.

[00:10:35] Speaker 04:
The board, by the way, says it does not need to pay attention to the examiner because it's just what the examiner said.

[00:10:41] Speaker 04:
But they failed to pay attention to the fact that the examiner was quoting from the applicant.

[00:10:46] Speaker 04:
The examiner on January 2001 was quoting from exactly what the applicant put in the remarks in December 2000.

[00:10:57] Speaker 04:
The record was selectively regarded by the, may I have the water please?

[00:11:04] Speaker 04:
It was viewed in a very selective way by the board.

[00:11:08] Speaker 04:
And that's not proper.

[00:11:10] Speaker 04:
It has to look at the whole record.

[00:11:11] Speaker 04:
It can't pick the parts that it likes.

[00:11:14] Speaker 04:
In our opening brief, we pointed out in a passage what was said by the applicant and what was quoted by the board.

[00:11:23] Speaker 04:
And they missed all the stuff that was most germane.

[00:11:26] Speaker 04:
And similarly, they missed that the examiner had quoted from the applicant.

[00:11:31] Speaker 04:
So the record, when it's viewed in its entirety, it's very clear about the scope of this disclaimer.

[00:11:37] Speaker 04:
And the effect of that disclaimer is to rule out assistance beyond entry of that click.

[00:11:45] Speaker 04:
And I think when one really focuses on this ruling out of assistance, then the record is, OK, the board was selected.

[00:11:54] Speaker 04:
in its consideration of the record.

[00:11:55] Speaker 04:
It didn't look at the whole record.

[00:11:57] Speaker 04:
I don't think there's any evidence to support the board's conclusion on the basis of the record taken in full.

[00:12:05] Speaker 01:
Okay.

[00:12:06] Speaker 01:
Thank you.

[00:12:07] Speaker 01:
Let's hear from the other side and we'll save you rebuttal time.

[00:12:10] Speaker 04:
Thank you so much.

[00:12:16] Speaker 01:
Mr. Smith.

[00:12:18] Speaker 03:
Thank you, Judge Newman.

[00:12:19] Speaker 03:
Matthew Smith for the Appellee School and Motorola Mobility

[00:12:23] Speaker 03:
Let me address your question, Judge Newman, then the alternative holding and then get into the disclaimer argument.

[00:12:29] Speaker 03:
I think there was some confusion about that question.

[00:12:31] Speaker 03:
The board did invite the appellant here, the patent owner, to file a motion to amend that's in the appendix at pages 1322 to 1323.

[00:12:42] Speaker 03:
Gave them, in fact, a special dispensation with the page limits to file amendments to all 79 claims.

[00:12:49] Speaker 03:
And they just didn't take advantage of that.

[00:12:51] Speaker 03:
So there was the opportunity to amend this case, and the patent owners didn't do that.

[00:12:55] Speaker 03:
Regarding the alternative holding, which Judge Moore referred to, all of Orendi's claim construction arguments culminate in a proposed construction, which is found in Orendi's opening brief toward the end of the claim construction section at the bottom of page 50.

[00:13:13] Speaker 03:
And that proposed construction says, in relevant part, I'm paraphrasing it,

[00:13:17] Speaker 03:
that the single entry and analyzing limitations of the claims must carry out an examining of the document that is inconsistent with user selection of the text.

[00:13:28] Speaker 03:
Now, to be sure, the board rejected that as a matter of law, and I'll talk about that in a couple of minutes.

[00:13:33] Speaker 03:
But the board did not stop there.

[00:13:35] Speaker 03:
The board has an alternative holding, which was referred to in the colloquy with Mr. Sunstein, that occurs on pages 36 to 40 of the board's opinion.

[00:13:45] Speaker 03:
where the board takes Arendt's claim construction, assumes that that's the proper construction, and applies it to the prior art of record, Goodhand.

[00:13:53] Speaker 03:
And in so doing, the board made two, I think, key fact findings that are supported by substantial evidence and that aren't disputed on a substantial evidence basis by Arendt.

[00:14:03] Speaker 03:
The first being that the Goodhand prior art performs analysis that is essentially the same as the 853 patent.

[00:14:10] Speaker 03:
The board uses that language four times in its opinion.

[00:14:13] Speaker 03:
And that's the analysis of identifying display names that will later be searched, distinguishing those display names from other material in the address field of the email document, including semicolons and spaces, and also properly formatted email addresses.

[00:14:30] Speaker 03:
That finding by the board, that set of findings by the board, was supported by the testimony of Mr. Allison, Google's expert, was supported by the deposition admissions of Dr. Levy, and supported by

[00:14:41] Speaker 03:
the specification of the Goodhand prior art itself.

[00:14:44] Speaker 03:
Rendy doesn't attack that by saying the evidence wasn't substantial or that no reasonable fact finder could have relied on it.

[00:14:51] Speaker 03:
Rendy spends most of its arguments simply re-arguing the claim construction.

[00:14:55] Speaker 03:
The second important finding by the board in that alternative holding was that Goodhand does not perform user selection of text.

[00:15:03] Speaker 03:
And that finding was supported by substantial evidence in the form of Goodhand's disclosure itself and Mr. Allison's testimony about how Goodhand operated.

[00:15:10] Speaker 03:
as well as the examples of selection that are found in the 853 patent at column 10, lines 5 to 10, and in the SO patent at column 4, lines 31 to 43, which describe selection in the way that users of graphical user interface systems are familiar with, highlighting, clicking on, selecting, italicizing, things like that.

[00:15:31] Speaker 03:
Goodhand doesn't do those things.

[00:15:33] Speaker 03:
And the board, I think, properly found that selection was not going on in Goodhand.

[00:15:37] Speaker 03:
And on the basis of that alternative holding, I think you can affirm the board's decision without even reaching all of the claim destruction arguments.

[00:15:47] Speaker 02:
triggering mechanism for the analysis that occurs?

[00:15:51] Speaker 02:
Do you initially trigger something with good hand and then enter the material in the address file?

[00:16:03] Speaker 02:
Or do you first enter the material in the address field and then

[00:16:12] Speaker 02:
move the cursor, do whatever you do, and that triggers it.

[00:16:15] Speaker 03:
Thank you, Judge Bryson.

[00:16:16] Speaker 03:
That goes directly to Mr. Sonnenstein's point that the analysis follows directly after the single entry of the execute command.

[00:16:23] Speaker 03:
In good hand, the analysis is triggered by clicking on the send button, or clicking on the check names button, or in the alternative, moving the cursor from one field to another.

[00:16:33] Speaker 03:
And this is disclosed in the good hand patent at column 20, lines 18 to 21, I believe.

[00:16:38] Speaker 03:
And it's what the board found, too, based on that.

[00:16:40] Speaker 02:
So that does not occur.

[00:16:41] Speaker 02:
Nothing occurs in good hand before the user types in whatever the user types in to the address field.

[00:16:49] Speaker 02:
Is that correct?

[00:16:51] Speaker 02:
When I say nothing occurs, nothing that is a triggering event for the operation of the good hand mechanism.

[00:16:57] Speaker 02:
Yes, that's correct.

[00:16:59] Speaker 03:
That's correct.

[00:17:02] Speaker 03:
The board, of course,

[00:17:04] Speaker 03:
and we would submit was also correct in its analysis of the claim construction, however.

[00:17:11] Speaker 03:
And let me focus on the prosecution history disclaimer argument, because that's the argument that Arendt makes most vehemently.

[00:17:19] Speaker 03:
There are three principal problems with that prosecution history disclaimer argument.

[00:17:24] Speaker 03:
And the first is that Arendt characterizes the prosecution history as sort of an agreement between the examiner and the applicant at that time.

[00:17:34] Speaker 03:
If that was an agreement between the applicant and the examiner, Arendi broke it because they didn't do what the examiner was asking them to do.

[00:17:42] Speaker 03:
In the October 17, 2000 interview summary, the examiner says, we discussed the prior art with the applicant's representative.

[00:17:50] Speaker 03:
The applicant's representative suggests that so prior art requires selection.

[00:17:55] Speaker 03:
The present invention does not require selection.

[00:17:57] Speaker 03:
The applicant can submit an after-final amendment

[00:18:01] Speaker 03:
to raise this distinction, Mrs. Appendix, page 342.

[00:18:04] Speaker 03:
In response to that, I think a reasonable examiner would expect an amendment that negatively excludes user selection of text.

[00:18:15] Speaker 01:
But we have the experience, as Mr. Sunstein keeps stressing, of what a reasonable examiner did in 2001.

[00:18:22] Speaker 01:
And I've been just wondering, now that the board, now that there are three, three heads are better than one,

[00:18:30] Speaker 01:
But nonetheless, they are bound by their broadest reasonable construction.

[00:18:35] Speaker 01:
We accept that.

[00:18:36] Speaker 01:
Is it reasonable to adopt a position that was overcome, countered, and resolved 15 years ago?

[00:18:46] Speaker 03:
Your Honor, I think it is reasonable for the board to do what it did, because the file history is not clear why the examiner did what she did.

[00:18:56] Speaker 03:
And it's not clear for two reasons.

[00:18:58] Speaker 03:
It's not clear first because when Arendy entered its amendment, it did not enter an amendment that was relevant to selection.

[00:19:05] Speaker 03:
Facially, just based on the language of the amendment, it positively recited analyzing the claims.

[00:19:10] Speaker 01:
But it satisfied the examiner.

[00:19:13] Speaker 01:
We can say it's not clear, but it apparently was sufficiently clear at that time.

[00:19:18] Speaker 03:
That's correct, Your Honor.

[00:19:19] Speaker 03:
But the existence of the disclaimer and the scope of the disclaimer has to be decided under the clear and unambiguous standard.

[00:19:26] Speaker 03:
And of course, this court is deciding that de novo, but applying the same standard that the board would have applied, which is the clear and unambiguous standard.

[00:19:33] Speaker 03:
I think it is not clear, as you say, because the examiner's actions could be interpreted as accepting the amendment that Arendi gave them facially, positively reciting, analyzing, and then going back to the prior art and checking whether the prior art teaches analyzing, not checking whether the positive teaching of selection

[00:19:53] Speaker 03:
causes the prior art to be excluded.

[00:19:55] Speaker 00:
That's not right because the examiner said, and I'll read you the quote from his reasons for allowance, the present invention does not require the user to select the text string to be processed since it functions automatically upon a single click.

[00:20:09] Speaker 00:
So the examiner in his reasons for allowance clearly and unambiguously stated his belief that this is what the claims require, and he put that expressly in his reasons for allowance.

[00:20:22] Speaker 00:
So I don't

[00:20:23] Speaker 00:
I don't understand your statement about how there isn't clear and unmistakable evidence in this record about the disclaimer.

[00:20:29] Speaker 00:
The examiner seems to have acknowledged the disclaimer expressly and his reasons for allowance, said the claims are being allowed for that reason.

[00:20:36] Speaker 03:
And the statement that it's not clear and ambiguous, in fact, results in part from exactly that notice of allowance.

[00:20:44] Speaker 03:
Because what the examiner did not say there is the present invention excludes selection.

[00:20:49] Speaker 03:
What the examiner actually said

[00:20:50] Speaker 03:
was the present invention does not require selection.

[00:20:53] Speaker 03:
And those are two very different things.

[00:20:55] Speaker 03:
And in fact, if you go back up in that paragraph, this appendix page 349, just above there, the examiner describes the invention as requiring a single click, which triggers analyzing.

[00:21:06] Speaker 03:
So it seems to me that the examiner is characterizing the invention as positively reciting analyzing, but not requiring selection.

[00:21:15] Speaker 03:
And that happens to also be consistent with the literal language of the claims, which does not require or does not say anything about selection at all.

[00:21:23] Speaker 03:
And the specification itself, as the board expressly found on pages six and seven, that seems to at least imply that selection can be a part of the invention or cannot be a part of the invention at column 10, lines five to 10.

[00:21:40] Speaker 03:
The third problem, I think, that this prosecution history argument has

[00:21:45] Speaker 03:
is the problem of scope.

[00:21:49] Speaker 03:
And that was raised, I think, by Mr. Sunnestein in his opening argument.

[00:21:55] Speaker 03:
What Mr. Sunnestein said was the prosecution history disclaimer disclaims all user actions that might be of assistance.

[00:22:02] Speaker 03:
And that is expressly not what the prosecution history says.

[00:22:06] Speaker 03:
In the parts that Mr. Sunnestein is quoting and Arendi is quoting in its briefing about the prosecution history,

[00:22:12] Speaker 03:
The prosecution history is only talking about selection.

[00:22:16] Speaker 03:
Once we try to get outside of that concept of selection and move to something else that's more broad, all user selection of text that could assist the analysis process, I would argue that even if there is a tenable disclaimer argument about the word selection, there is not a tenable disclaimer argument where the prosecution history doesn't contain any language.

[00:22:40] Speaker 03:
For example, all user actions that might somehow assist the analyzing.

[00:22:45] Speaker 03:
And there are a couple of reasons for that.

[00:22:47] Speaker 03:
First is we're operating under the clear and unambiguous standard, and as Judge Newman said, under the broadest reasonable interpretation of the claims.

[00:22:54] Speaker 03:
Both of those, I think, would counsel toward narrowing the scope of the disclaimer as much as possible and keeping the scope of the claims as reasonably broad as possible.

[00:23:04] Speaker 03:
The second problem with that argument is

[00:23:09] Speaker 03:
in the 853 patent itself.

[00:23:12] Speaker 03:
We know very little about the analysis that's actually happening.

[00:23:15] Speaker 03:
It's broadly claimed in the claims.

[00:23:17] Speaker 03:
In the specification, it is described only in this section in column four, principally at lines 29 to 37.

[00:23:25] Speaker 03:
And in that portion of the specification, the specification simply points out several features in the document that the analysis could take advantage of.

[00:23:36] Speaker 03:
So for example, paragraph and line formatting,

[00:23:39] Speaker 03:
portions in the text that say Mr. or Mrs. or provide a zip code from which the analysis could find a foothold and then infer that there is some information that it would want to use later in the process.

[00:23:54] Speaker 03:
But all of those things are things that the user types into the document.

[00:23:59] Speaker 03:
In other words, all of these features that the analysis can take advantage of are things that the user gives to the analysis system.

[00:24:06] Speaker 03:
So the user is, even in the 853 patent,

[00:24:09] Speaker 03:
in the only description of the analysis there, providing assistance to the analyzing step of the claims.

[00:24:16] Speaker 03:
And so if one tries to go beyond the selection idea in the scope of the disclaimer and broaden that out to all user actions, as Mr. Sundstein was suggesting, you eventually capture the essence of the analysis in the 853 patent.

[00:24:33] Speaker 03:
And that's what I think the board was driving at.

[00:24:35] Speaker 03:
What Goodhand does in terms of textual analysis

[00:24:38] Speaker 03:
is very difficult conceptually to separate from what the core analysis description is in the 853 patent.

[00:24:45] Speaker 03:
And if that disclaimer becomes too broad, if it goes beyond the idea of selection, you eventually capture that core of the 853 patent, and you shouldn't do that.

[00:24:56] Speaker 03:
Now, as Judge Newman raised, the patent owner here did have the opportunity to file an amendment, a motion to amend, and there is some

[00:25:07] Speaker 03:
discussion about how plausible amendments are in Interparties Review.

[00:25:12] Speaker 03:
The Patent Office actually did a study on this in April.

[00:25:14] Speaker 03:
It's not a record, but you can certainly look it up.

[00:25:17] Speaker 03:
But the fact of the matter is that if Orendi's disclaimer is allowed to stand in this case, then the scope of the claims will not match the scope of the patent monopoly.

[00:25:32] Speaker 03:
I don't know why R&D did not submit its amendment, but there are a couple of plausible reasons why patent owners might not want to do that.

[00:25:39] Speaker 03:
One is to avoid the effect of 35 USC 252, the effect on past damages, potential intervening rights.

[00:25:45] Speaker 03:
And the other, which I think is pertinent here, is to potentially do an end run around the scrutiny under the written description section of 35 USC 112, which might occur any time one submits an amendment.

[00:25:57] Speaker 03:
And I think it's not at all clear here that a negative limitation, excluding selection, would find written description support in a specification that expressly says selection can be part of the invention.

[00:26:09] Speaker 03:
Maybe it's questionable.

[00:26:10] Speaker 03:
Maybe it's not.

[00:26:11] Speaker 03:
But the issue didn't come up because of the disclaimer argument, whereas it would have come up if Arendy had filed a motion to amend.

[00:26:18] Speaker 02:
You're talking when you refer to the express reference in the specification to the paragraph on column 10?

[00:26:25] Speaker 03:
That's exactly right.

[00:26:26] Speaker 03:
Mine's 5 to 10.

[00:26:28] Speaker 03:
And we would submit that that is not a course of action that this court should encourage.

[00:26:34] Speaker 03:
Under the broadest reasonable interpretation of the claims, where the patent owner has the opportunity to amend the claims, the patent owner should be cleaning up this mismatch between the literal scope of the claims and the scope of the patent monopoly.

[00:26:48] Speaker 03:
And for that reason, we would suggest that under the broadest reasonable scope of the claims, a patent owner simply should not be allowed to assert even prior disclaimers if they have the opportunity to amend

[00:26:59] Speaker 03:
But all of this argument is probably not even necessary, given the board's alternative holding, given the board's fact findings on how close the analysis in Goodhand is to the 853 patent, given the board's expressed fact finding based on substantial evidence that the Goodhand patent does not do user selection.

[00:27:16] Speaker 03:
I think you can affirm on that basis alone and should.

[00:27:18] Speaker 03:
Thank you very much.

[00:27:20] Speaker 01:
Thank you, Mr. Smith.

[00:27:22] Speaker 01:
Mr. Sunstein?

[00:27:25] Speaker 04:
Thank you, Your Honor.

[00:27:31] Speaker 04:
I want to first talk about the kind of analyzing that's said to go on in Goodhand, because assuming the board agrees with our views on disclaimer, we believe that given a proper claim construction, including the disclaimer, there's no evidence of analyzing without user selection in Goodhand.

[00:27:53] Speaker 04:
Goodhand necessarily requires the user to identify first information to the system.

[00:27:59] Speaker 04:
by putting it in Goodhand's selection box.

[00:28:02] Speaker 04:
By identifying where the first information to be searched is, the selection box of Goodhand serves the same purpose in terms of the patent claim as is the selection of text in SO.

[00:28:14] Speaker 04:
The execute command asserted by Google is the cursors leaving the selection box or clicking on an enter command when the cursor is in the selection box.

[00:28:25] Speaker 04:
The execute command in the Goodhand system cannot trigger

[00:28:29] Speaker 04:
analyzing the document for contact information.

[00:28:32] Speaker 04:
The document is not analyzed to determine if there is any such first information.

[00:28:37] Speaker 02:
When you say it's not analyzing the document, it's analyzing everything that's within the address field, right?

[00:28:44] Speaker 02:
Right.

[00:28:44] Speaker 02:
But the good hand system knows.

[00:28:47] Speaker 02:
It's not analyzing the text of an email, for example.

[00:28:51] Speaker 04:
Right.

[00:28:51] Speaker 04:
I can put whatever I want, including a recipe for a great breakfast, in the body of the email.

[00:28:58] Speaker 04:
in that template, and Goodhand sees nothing of that.

[00:29:02] Speaker 04:
It requires the user to put address information in that selection box.

[00:29:07] Speaker 04:
Without that, it analyzes nothing.

[00:29:09] Speaker 04:
And of course, it is assumed what the user puts in there includes first information.

[00:29:14] Speaker 04:
So the execute command in Goodhand can't trigger analyzing the document for contact information.

[00:29:20] Speaker 04:
The document is not analyzed to determine if there is any such first information, since that's what the user put into the selection box.

[00:29:28] Speaker 04:
And then the claim, there's a searching requirement in the claim as well.

[00:29:33] Speaker 04:
And that claim searching for first information takes place in good hand only with respect to information entered by the user into the selection box.

[00:29:43] Speaker 04:
Now, the board referred to other kinds of analyzing.

[00:29:47] Speaker 04:
One of them was, and it was cited by the petitioner, checking to see if there is text in the selection box.

[00:29:54] Speaker 04:
That's one of the theories for analyzing.

[00:29:58] Speaker 04:
just whether there's something put there.

[00:30:01] Speaker 04:
But that really, if you think about it, it means checking to determine if the user has placed text into the selection box.

[00:30:08] Speaker 04:
And that checking is not the same as the claim limitation of analyzing the document to turn if the first information is contained therein.

[00:30:16] Speaker 04:
If the user has typed nothing in the selection box, then there's nothing to analyze.

[00:30:22] Speaker 04:
It is the user who determines if first information is present by putting it into the selection box.

[00:30:27] Speaker 04:
And in fact, there's no evidence even.

[00:30:30] Speaker 04:
It's just a conjecture on the part of their expert that that's something that Goodhand does.

[00:30:36] Speaker 04:
And then if you look at figure one of our patent, the 853 patent, this limitation corresponds to the step in box four of figure one.

[00:30:45] Speaker 04:
Analyze what the user has typed in the document.

[00:30:49] Speaker 04:
And per column four lines 22 to 27, the user has already typed text into the document.

[00:30:57] Speaker 04:
possibly including first information such as an address.

[00:31:01] Speaker 04:
As a result, analyzing the document to determine if first information is contained therein, as required by the claim, the Urendi system is analyzing what the user has typed, meaning that there must be text in order for the text to be subject to analyzing.

[00:31:18] Speaker 04:
And then in box six afterwards, which occurs in the logical flow after box four,

[00:31:24] Speaker 04:
Therefore, after the user has typed something into the document in referring to finding nothing, that doesn't mean that the document contains no text, but rather that the analyzing did not find any first information in the document.

[00:31:38] Speaker 04:
So the presence of text to analyze is a precondition for the claim limitation of analyzing the document to determine if the first information is contained therein.

[00:31:47] Speaker 04:
And so that doesn't constitute the analyzing that's required

[00:31:52] Speaker 04:
by the claim, just looking to see if text is there.

[00:31:55] Speaker 04:
And there are other kinds of analyzing that go on, parsing to find out what's an email address, what's a name, and what email addresses correspond to the name.

[00:32:06] Speaker 04:
But that's all after the user has said this is first information by sticking it in the selection box.

[00:32:14] Speaker 04:
So there's no analyzing in the record that supports the board's determination.

[00:32:20] Speaker 04:
We think if you properly construe the claim, then taking into account the surrender, and then looking at the claim limitation of analyzing which is required to occur automatically because it's part of this computer process, that means if it's automatic, you can't cheat by, okay, I'll stick it here.

[00:32:41] Speaker 04:
I'll put it in this selection box.

[00:32:42] Speaker 04:
It means that the analyzing has to occur automatically.

[00:32:46] Speaker 04:
When you click on the one button in the Rendy technology,

[00:32:50] Speaker 04:
It figures out where the contact information is.

[00:32:53] Speaker 04:
It finds the first information, automatically does the searching.

[00:32:57] Speaker 04:
And the comment by my brother that the user is assisting because of the techniques used by the Rendy system to find stuff.

[00:33:08] Speaker 04:
Those are techniques used by the Rendy system to find it.

[00:33:10] Speaker 04:
They're built into the software.

[00:33:12] Speaker 04:
What the user has done before that first information has been found is simply enter text, just as in box four.

[00:33:20] Speaker 04:
of the figure.

[00:33:22] Speaker 04:
So we think there's a clear prosecution history disclaimer, and that there is no evidentiary support for the board's conclusion that the good hand system meets the claim limitation.

[00:33:38] Speaker 01:
Thank you, Mr. Senator.

[00:33:39] Speaker 01:
Thank you so much.

[00:33:40] Speaker 01:
The case is taken under submission.