[00:00:00] Speaker 05: We have a busy morning. [00:00:03] Speaker 05: Before we get to our cases, we have some family matters to attend to, present family matters. [00:00:16] Speaker 05: I would like to make a motion. [00:00:18] Speaker 05: And after I make the motion, I will turn the proceedings over to Judge Chen, because otherwise I'm in a conflict situation. [00:00:29] Speaker 05: And Judge Chen will preside over the hopefully granting of the motion. [00:00:35] Speaker 05: I would like to move the admission of Grace St. [00:00:38] Speaker 05: Vincent, who is a member of the Bar and is in good standing with the highest courts of Delaware and Illinois. [00:00:46] Speaker 05: I have knowledge of her credentials and I'm satisfied that she possesses [00:00:51] Speaker 05: the necessary qualifications. [00:00:53] Speaker 05: Now, I know that because Grace has been my law clerk for almost two years. [00:00:57] Speaker 05: She's done very fine work. [00:01:01] Speaker 05: She's a good writer. [00:01:02] Speaker 05: She's a good digger. [00:01:05] Speaker 05: She is quite expert in a variety of technologies and has been a strong contributor to my chambers and to the court. [00:01:17] Speaker 05: Beyond that, she has spread her wings for the benefit of the court. [00:01:23] Speaker 05: When I look in her office, I see baseball bats and soft drinks. [00:01:29] Speaker 05: And she's sort of, I don't want to say managed, but influential in the court's softball team. [00:01:38] Speaker 05: I don't know whether it's a winning team. [00:01:43] Speaker 05: I do know that many years ago, a famous sports writer said, when the great official scorer in the sky gets to write against your name, it matters not whether you won or lost, but how you played the game. [00:02:01] Speaker 05: And I know with Grace's participation, our team played the game well. [00:02:07] Speaker 05: In addition, she's been active in the Giles Rich Inn of Court, and that's an important function benefiting the bar and the court. [00:02:18] Speaker 05: So with that lengthy motion, I will turn it over to Judge Ten for disposition of my motion. [00:02:29] Speaker 02: Thank you, Judge Laurie. [00:02:31] Speaker 02: I'll now confer with my fellow panel member, Judge Stoll. [00:02:36] Speaker 06: Okay. [00:02:40] Speaker 02: I'm happy to grant this motion with the unanimous panel. [00:02:45] Speaker 02: I also have gotten to know Miss St. [00:02:48] Speaker 02: Vincent and she's also been a very helpful contributor to my chambers and I know she'll be a very positive presence in our bar and we're lucky to have her at our bar. [00:02:59] Speaker 02: So the motion is granted. [00:03:03] Speaker 05: Grace, will you step up and take the oath from the deputy? [00:03:09] Speaker 04: Sir, in my hand, do you solemnly swear or affirm that you will appoint yourself as an attorney in charge of this court, uprightly and according to law, and that you will support the Constitution of the United States of America? [00:03:20] Speaker 04: Thank you. [00:03:20] Speaker 04: Welcome to the ball of the United States Court of Appeals. [00:03:25] Speaker 05: Congratulations, Grace. [00:03:27] Speaker 05: We now have another motion, and I will ask Judge Stoll to make that motion. [00:03:33] Speaker 03: I move the admission of Andrea Lynn Cheek, who is a member of the bar and is in good standing with the highest courts of Virginia and the District of Columbia. [00:03:46] Speaker 03: I have knowledge of her credentials and am satisfied that she possesses the necessary qualifications. [00:03:54] Speaker 03: I know this because Andrea has served as one of my first law clerks, and she has performed wonderfully in that role. [00:04:01] Speaker 03: She is hardworking. [00:04:03] Speaker 03: ethical, trustworthy, and well-spoken, and has demonstrated many talents ranging from performing excellent detailed legal research to spinning creative puns that helped our chambers win the coveted La Pasada Award. [00:04:22] Speaker 03: I know that you'll be an outstanding member of the bar. [00:04:26] Speaker 03: And with that, I turn it over to Judge Laurie. [00:04:29] Speaker 05: Judge Chen, I don't say we. [00:04:31] Speaker 02: I move the grant. [00:04:33] Speaker 05: The motion is granted. [00:04:34] Speaker 05: Please step up so that you can take the oath. [00:04:38] Speaker 04: Please raise your right hand. [00:04:39] Speaker 04: We solemnly swear and affirm that you will report yourself to the attorney and counsel of this court, uprightly, and uphold the law, and that you will support the Constitution of the United States of America. [00:04:50] Speaker 04: I welcome you to the process of the United States Court of Appeals. [00:04:54] Speaker 05: Congratulations and welcome to the box. [00:04:59] Speaker 05: Let us proceed with the fiscal work of the morning. [00:05:03] Speaker 05: We have seven cases that are going to be handled, as I think all of the participants are aware of. [00:05:14] Speaker 05: We'll have three cases argued separately, and then four cases consolidated. [00:05:26] Speaker 05: And we'll also have the PTO participating for five minutes as intervener. [00:05:35] Speaker 05: So the first case is BE Technology versus Google, 2015, 1827. [00:05:41] Speaker 05: Was it Freitas or Freitas? [00:05:48] Speaker 07: Thank you, Judge Lord. [00:05:49] Speaker 05: Is it Freitas or Freitas? [00:05:51] Speaker 05: Freitas, Your Honor. [00:05:51] Speaker 05: Freitas. [00:05:54] Speaker 07: May it please the court. [00:05:57] Speaker 07: The first issue that we'd like to raise addresses the basic error that the board made in construing the unique identifier limitation. [00:06:05] Speaker 07: Rather than look to and account for all of the relevant language in the claim, the board only looked at part of it. [00:06:13] Speaker 07: And in doing so, the board left out something important that changes the meaning. [00:06:21] Speaker 07: The board's construction of the unique identifier limitation requires only that [00:06:27] Speaker 07: This is on page A9 of the appendix, page 9 of the written decision, that the unique identifier identifies any information sent over the computer network. [00:06:39] Speaker 07: Well, the board's construction doesn't account for the actual claim language. [00:06:43] Speaker 07: It doesn't even say that the identifier must uniquely identify information. [00:06:50] Speaker 07: There are three requirements about the information that must be met. [00:06:56] Speaker 07: The unique identifier must uniquely identify information, and everyone agrees about that. [00:07:02] Speaker 07: At times, we were criticized as if we had said the identifier must identify the computer. [00:07:08] Speaker 07: That wasn't our point. [00:07:10] Speaker 07: It is information that is identified, but that information is information sent over said computer network, sent from the computer, and sent to said server. [00:07:27] Speaker 07: The part that the board left out is sent from the computer. [00:07:32] Speaker 07: The identifier must uniquely identify the information that is, among other things, sent from the computer. [00:07:39] Speaker 07: And the board didn't address that. [00:07:42] Speaker 07: As a matter of fact, on page 8 of the final written decision, the board said claim 11 further only requires that the unique identifier identifies information [00:07:55] Speaker 07: that is sent over the computer network. [00:07:58] Speaker 07: It left out the rest of it. [00:08:01] Speaker 07: Now what Google had done in its construction is Google had said... Can I ask you a question? [00:08:06] Speaker 03: Why does that have to be part of the claim construction when it's right in the claim itself? [00:08:11] Speaker 03: It says specifically, uniquely identifies information sent over said computer network from said computer or the computer. [00:08:18] Speaker 03: So why do you have to read that into the words unique [00:08:21] Speaker 03: Well, the information identifier. [00:08:24] Speaker 07: Excuse me, Your Honor. [00:08:25] Speaker 07: That's a step along the way toward addressing whether the Logan reference meets the limitation and thus anticipates. [00:08:34] Speaker 07: Whether that language is written into the construction or just considered without construction, the Logan account number doesn't meet the limitation because all it does [00:08:49] Speaker 07: is identify information about the user. [00:08:52] Speaker 07: It has no capability to identify the information sent from the computer. [00:08:57] Speaker 07: And we've explained in our brief why that's so. [00:09:00] Speaker 07: Multiple users with different account numbers can use the computer, and the Logan user can use different computers. [00:09:10] Speaker 07: So regardless of how it gets in there, Judge Stoll, the Logan account number doesn't meet the limitation. [00:09:19] Speaker 07: But the board focused only on the information and not on the requirement that it be sent from the computer. [00:09:29] Speaker 07: Now, the argument has been made that it wasn't necessary to do that or that it was wrong to do that. [00:09:37] Speaker 07: But we submit that the board did not take account of all of the language of the claim by leaving out the reference to the computer network. [00:09:49] Speaker 07: I'm sorry, the computer. [00:09:52] Speaker 07: Now, with respect to the Logan account number, it's clearly not a claim 11 unique identifier. [00:09:59] Speaker 07: All agree, and the disclosure of Logan is quite clear, that the Logan account number is a user identifier. [00:10:08] Speaker 07: And it has no reference to the particular computer being used by the user. [00:10:14] Speaker 03: And this, of course... But it is identifying information coming from the computer, right? [00:10:19] Speaker 07: It does not uniquely do so, Your Honor, but yes, it does. [00:10:23] Speaker 07: It does in the sense that the account number refers to a specific individual. [00:10:28] Speaker 07: And it does identify information as being about that user. [00:10:33] Speaker 07: But it doesn't tell you whether it comes from the computer. [00:10:37] Speaker 07: All you know is that it's information about a given user. [00:10:40] Speaker 03: What it has to do is identify information coming from a computer. [00:10:43] Speaker 03: It doesn't have to identify the computer, right? [00:10:45] Speaker 07: It does not have to identify the computer, but the requirement, Your Honor, [00:10:49] Speaker 07: is that the identifier of claim 11 uniquely identify information sent from the computer. [00:10:56] Speaker 07: If all we have is an identifier of a user, it isn't uniquely identifying what's sent from the computer. [00:11:04] Speaker 07: And Logan makes this clear with the possibility that two users with different account numbers could be using the same computer. [00:11:13] Speaker 07: Therefore, the account number of each doesn't uniquely [00:11:18] Speaker 07: identify what comes from the computer. [00:11:21] Speaker 07: And that's what the requirement is. [00:11:23] Speaker 02: Well, is that what the claim requires, or does it require some kind of association with the information as was recited in the claim, not necessarily some association that's unique to the computer from where the information's coming from? [00:11:41] Speaker 07: Well, there are both requirements, Your Honor, but with respect to this limitation about the unique identifier, [00:11:48] Speaker 07: The clause says wherein the unique identifier uniquely identifies information sent over the network from the computer to said server. [00:12:00] Speaker 07: So it is a part of what the claim requires, that there be a unique identification of what's sent from the computer. [00:12:07] Speaker 07: Now part of the discussion about this. [00:12:11] Speaker 02: So I guess you're saying if the claim didn't have that final clause from the computer to said server, [00:12:18] Speaker 02: then you wouldn't be able to make the argument you're making? [00:12:22] Speaker 02: That's true, Your Honor. [00:12:23] Speaker 02: If it just said, you know, identifier uniquely identifies information sent over said computer network, then you would be stuck and you wouldn't be able to make the argument that the unique identifier has to be associated in particular with some computer? [00:12:40] Speaker 07: We wouldn't be, Your Honor, because that is the connection. [00:12:44] Speaker 07: That is the language on which we rely, yes. [00:12:48] Speaker 07: the from the computer point. [00:12:50] Speaker 02: Right. [00:12:51] Speaker 02: I guess I'm trying to understand why that extra clause even makes a difference. [00:12:57] Speaker 02: When it just talks about information coming over a computer network, necessarily that's information that's coming from the client, the user, that's being transmitted to the server. [00:13:11] Speaker 07: Well, it isn't so clear, Your Honor. [00:13:14] Speaker 07: And this ties back to a couple of things. [00:13:17] Speaker 07: First of all, in column 17 in the 314 pattern, there is a disclosure of multiple ways that the ID might be provided. [00:13:27] Speaker 07: There are two examples that show the ID clearly being provided in a way that would identify information sent from the computer. [00:13:37] Speaker 07: The reference is first to providing the identifier to the specific item of software on the client computer [00:13:46] Speaker 07: And the second is providing a cookie, which also identifies the specific item of software. [00:13:55] Speaker 07: So the reason that that's important is that it takes us away from these user identifiers. [00:14:03] Speaker 07: As a matter of fact, in the Facebook case, there is a reference to the W3C proposal. [00:14:12] Speaker 07: And in the W3C proposal, there's a comparison [00:14:16] Speaker 07: of identifiers that are cookie-based and identifiers that are like the W3C proposal that identify the user. [00:14:25] Speaker 07: And W3C advocates that its way is better. [00:14:30] Speaker 07: But it clearly distinguishes between a cookie-based identifier, which ties the identifier to a particular machine. [00:14:40] Speaker 07: And that's what's mentioned in column 17 in the 314 pathway. [00:14:48] Speaker 07: So it's two ways to do something similar. [00:14:51] Speaker 07: On the one hand, you have a user identifier, like you do in the Logan reference. [00:14:57] Speaker 07: On the other, as in column 17 and as criticized in W3C. [00:15:03] Speaker 02: What about dependent claim 16? [00:15:07] Speaker 02: Doesn't that talk about basically user IDs? [00:15:10] Speaker 07: It does. [00:15:10] Speaker 07: It does, clearly, Your Honor. [00:15:12] Speaker 07: But what's mentioned in dependent claim 16 is not inconsistent at all with what we're saying. [00:15:18] Speaker 07: It could be the case that individual users also have user IDs. [00:15:23] Speaker 07: And as we pointed out in our brief, it's not the case that the claim 16 identifiers that are provided to the users, it's not the case that those are or must be the claim 11 unique identifier that identifies information. [00:15:41] Speaker 07: So yes, the claim is further limited. [00:15:43] Speaker 07: And it is indeed limited by reference to a user-specific identifier. [00:15:48] Speaker 02: What if hypothetically I view the usage of the term unique identifier in claim 16 to be identical to the usage of the term unique identifier in claim 11? [00:15:59] Speaker 02: Then you're in trouble. [00:16:03] Speaker 07: I don't think so, Your Honor. [00:16:04] Speaker 02: OK, well, let's hear about that. [00:16:05] Speaker 07: Let me give it a try. [00:16:10] Speaker 07: It could be the case, as we argued in our brief, [00:16:13] Speaker 07: that a single identifier could both meet claim 16 and meet claim 11 as we see it. [00:16:20] Speaker 07: The example that we gave had a string. [00:16:25] Speaker 07: We did it. [00:16:25] Speaker 07: We used different words in different briefs. [00:16:28] Speaker 07: 123 Maya, 123 Alice, 123 Philip. [00:16:32] Speaker 07: So in that case, that identifier, the full identifier, could uniquely identify an individual. [00:16:39] Speaker 07: At the same time, [00:16:41] Speaker 07: It could meet the limitation, as we see it, by uniquely identifying information sent from the computer by use of the 123. [00:16:50] Speaker 07: So 123 Alice and 123 Philip would meet both limitations. [00:16:55] Speaker 07: The 123 would refer to information sent from the computer, and then we would know it came from Alice or from Philip, and we'd meet the claim 16 requirement of a user-specific identifier. [00:17:09] Speaker 05: You're into your rebuttal time. [00:17:11] Speaker 05: You can either save it or continue. [00:17:13] Speaker 07: I would like to save the rest of my time, Your Honor. [00:17:16] Speaker 05: Thank you. [00:17:17] Speaker 05: We will do that. [00:17:18] Speaker 05: Mr. Pincus. [00:17:21] Speaker 00: Thank you, Your Honor, and may it please the Court. [00:17:23] Speaker 00: Let me pick up with this question about a unique identifier. [00:17:27] Speaker 00: And I think, with all deference to my colleague, [00:17:32] Speaker 00: I think the problem here is focusing on what the unique identifier has to uniquely identify. [00:17:38] Speaker 00: And looking at the language of claim 11, and this is on column 22, line 59 to 62, it says, said identifier uniquely identifies information [00:17:55] Speaker 00: sent over said computer network from the computer to said server. [00:17:59] Speaker 00: So I think what the identifier is identifying is the information. [00:18:04] Speaker 00: The rest of it is a description of how the information gets from one place to another. [00:18:09] Speaker 00: But I don't think that there's any basis for saying that identifier has to necessarily be tied to the computer in the language of the claim itself. [00:18:20] Speaker 00: And let me [00:18:24] Speaker 00: explain a couple of other reasons for that. [00:18:26] Speaker 00: Earlier in claim 11 on line 47 one of the steps is acquiring demographic information about the user. [00:18:39] Speaker 00: And then later in the claim on line 66 and 67 it talks about demographic information associated with said unique identifier. [00:18:48] Speaker 00: So it's clear from the claim [00:18:50] Speaker 00: that the identifier can be about a user, because we have demographic information about a user, and then the unique identifier associated with the demographic information, which necessarily has to be tied to a user. [00:19:03] Speaker 00: And then as Judge Chen mentioned, I think this is further confirmed by the language in Claim 16, which talks about [00:19:13] Speaker 00: the same term, unique identifier, and associating it with user. [00:19:18] Speaker 00: And I think it's important to step back and remember that what the claim constructs on the board have adopted doesn't say only that the identifier can only identify the user. [00:19:29] Speaker 00: It just says it can identify the user in addition to the computer. [00:19:33] Speaker 00: And it seems as if that language in claim 16 really confirms that point. [00:19:38] Speaker 00: And then turning to the specification language, my friend talked about the language in column 17. [00:19:44] Speaker 00: Column 17, as we discussed in our brief, is replete with the term user ID and assigning a unique ID to the user. [00:19:59] Speaker 00: For example, column 17, line 13, server assigns a unique ID to the user. [00:20:06] Speaker 00: And then later on, starting on line 29, lots of references to user ID. [00:20:13] Speaker 00: So my friend's construction of the claim would read out that embodiment that's in the specification. [00:20:22] Speaker 00: So for all of those reasons, we think there's a very, very, very strong [00:20:27] Speaker 00: evidence to support the board's determination that unique identifier can refer to either a computer or a user and so the Logan does anticipate that as my friend conceded because it has a user-based identifier. [00:20:45] Speaker 00: Let me talk about a second issue that was raised which is the question about where the unique identifier comes from. [00:20:53] Speaker 00: Another argument [00:20:55] Speaker 00: before the board and raised again in the briefs is that the identifier has to be provided by the server. [00:21:03] Speaker 00: The board rejected that construction and said any system, process, or entity providing a unique identifier to the computer is enough. [00:21:13] Speaker 00: Again, turning back to claim 11, it doesn't say anything about where the unique identifier comes from, it just says [00:21:21] Speaker 00: on line 59 providing a unique identifier to the computer. [00:21:29] Speaker 00: Further down in that claim, at the top of column 23, there is an identification transferring said content from said server to the computer, but that language saying where is the unique identifier coming from does not appear in the limitation that refers to the unique identifier. [00:21:53] Speaker 00: The principal reliance that in their briefs that the other side invoked was a specification that does talk about some language about receiving an assigned ID from the server, but that's an attempt to import [00:22:10] Speaker 00: a limitation from the specification into the claim that just doesn't appear there. [00:22:14] Speaker 03: Your point is that they know how to save from said server in the claim. [00:22:18] Speaker 00: Exactly, Your Honor. [00:22:19] Speaker 00: If they want to say where it comes from, they can say it. [00:22:21] Speaker 00: They said it just a few lines down in the very same claim. [00:22:24] Speaker 00: They didn't say anything about where the identifier comes from in the slightly higher up language that refers to the identifier's role. [00:22:38] Speaker 00: Let me briefly touch on the third argument that's advanced by the other side, which is the argument that Logan does not anticipate selecting advertising for transfer in accordance with demographic information. [00:22:58] Speaker 00: And here, the argument is Logan doesn't select advertising content based on demographic information, but pre-14 does, therefore [00:23:08] Speaker 00: No anticipation that that's just an erroneous view of Logan as the board explained in detail The targeted advertising discussion in the Logan Specification appears on page a 151 of the appendix starting in column 24, which is headed targeted advertising [00:23:31] Speaker 00: And it talks about two ways that the advertising is targeted. [00:23:35] Speaker 03: Do I understand correctly that what it is that it does is it selects and then it prioritizes? [00:23:41] Speaker 03: It selects and then it prioritizes. [00:23:43] Speaker 03: And maybe an argument that Logan only prioritizes and doesn't select. [00:23:50] Speaker 00: I think that is the argument on the other side, Your Honor, but I think it's a plain misreading of the sequence of the specification. [00:23:57] Speaker 00: The specification starts in the first lines in column 24. [00:24:02] Speaker 00: It talks about selection for insertion on line 14. [00:24:06] Speaker 00: And then it talks about the two factors that are used in selecting advertising. [00:24:11] Speaker 00: One is the interest match, which compares subject matter codes that are in the advertisement with subject matter codes associated with the user. [00:24:19] Speaker 00: And then turning to column 25 on the next page, line 4, it says, in addition to the interest match value determined above, weight may be given to the subscriber's personal characteristics. [00:24:34] Speaker 00: And then it talks about the demographic match process. [00:24:37] Speaker 00: So it clearly says in the selection process, two considerations, interest match and demographic match. [00:24:45] Speaker 00: And then on line 15, [00:24:47] Speaker 00: it turns from selection to prioritization and says all advertisements scheduled for a given subscriber may then be prioritized based on the calculations that have been calculated in the interest match and the demographic match. [00:25:01] Speaker 00: So it clearly sets up a selection based on two characteristics and then prioritization based on revisiting those values. [00:25:10] Speaker 00: And that's exactly what the board [00:25:12] Speaker 00: determined in its review of this language on page 820 of its decision. [00:25:20] Speaker 00: The last question is claim 15, which relates to cookies. [00:25:28] Speaker 00: And here we rely on both Robinson as well as Logan. [00:25:32] Speaker 00: The question here is obviousness and whether there was a motivation to increase security by adding a cookie-based security here. [00:25:41] Speaker 00: And the board found that there was, talked about an increase in security being an advantage of combining those and that Robinson expressly discloses the interest in as much security as possible and therefore provided a rational basis for combining the references. [00:26:02] Speaker 00: My friends in their reply brief raised a new argument that wasn't raised in their opening brief about encryption and the advantages of encryption vis-a-vis cookies. [00:26:12] Speaker 00: Again, not an argument discussed at all in their opening brief, the claim that because the 314 has encryption, there'd be no basis for adding cookies. [00:26:28] Speaker 00: But those two security measures, again, [00:26:31] Speaker 00: we have to reply now because it wasn't in their opening brief, are really directed at different things. [00:26:35] Speaker 00: Encryption is about security in the transmission of information. [00:26:38] Speaker 00: Cookies are a basis for not storing information centrally, but storing it in a dispersed manner on computers. [00:26:44] Speaker 00: So they actually address two different security issues. [00:26:49] Speaker 00: The last issue I'd raise is the motion to amend, obviously a very deferential standard in evaluating the board's decision. [00:27:01] Speaker 00: Written description support for the proposed amendment was a very long string site that had lots of different citations, including citations to four full pages of the application. [00:27:13] Speaker 00: And the board rejected it as insufficient. [00:27:14] Speaker 00: We think they were well within their authority to do that based on the absence of any real direction in terms of what was pointed to. [00:27:24] Speaker 00: And because there is nothing in what's cited there to provide the requisite [00:27:31] Speaker 00: written description. [00:27:32] Speaker 00: The amendment talks about selecting advertising for transfer, new language in accordance with real-time and other computer usage information and demographic information associated with said unique identifier. [00:27:46] Speaker 00: They point in their reply brief to a passage on page A 1617, but that describes selection based solely on real-time information. [00:27:55] Speaker 00: It doesn't explain at all how the three factors would be brought to bear in making the selection. [00:28:02] Speaker 00: unless the court has any further questions. [00:28:05] Speaker 02: Just going back to Logan's account number, I understood Mr. Frazier's argument to be based in part on that final clause and that [00:28:14] Speaker 02: particular unique identifier limitation about the unique identifier has to get sent from the computer to the server and Logan's account number doesn't do that. [00:28:29] Speaker 02: There's something about the phrase from the computer to the server that's important to appreciate the nature of what's going on with respect to understanding how the unique identifier is supposed to operate and what it represents. [00:28:45] Speaker 02: What do you have to say about that? [00:28:49] Speaker 00: I'm not sure what that argument means, I guess, for a couple of reasons. [00:28:53] Speaker 00: First of all, I think that clause is merely identifying the pathway of the information. [00:28:57] Speaker 00: It's not identifying something that the unique identifier itself has to be tied to. [00:29:02] Speaker 00: I think it's just saying, here's what the information we're talking about is the information that's being sent by the user has to come from the computer and up to the server, and that's what we want to be tied to this identifier. [00:29:15] Speaker 00: I don't think there's any basis there in saying that the identifier must be tied to the computer for the reasons I was discussing earlier. [00:29:25] Speaker 00: First of all, because a lot of the discussion of the identifier in that claim is tying into the user's demographic information, which seems to clearly require an identifier or at least allow room for an identifier that's tied to the user. [00:29:40] Speaker 00: Second of all, Claim 16's use of the exact same phrase [00:29:44] Speaker 00: to refer to a user as opposed to a computer and the language and the specification that talks about user ID. [00:29:53] Speaker 00: It's just difficult in light of all of that to say that that clause requires that the computer be identified. [00:30:00] Speaker 00: Then there's a separate argument that they advance which is well even if that's not true the identifier has to be provided by the server and that [00:30:12] Speaker 00: we submit has no basis in the claim language, because there's nothing in the claim that says anything about where the identifier comes from. [00:30:19] Speaker 00: And therefore, it leaves open, especially under the broadest reasonable interpretation standard, the interpretation that it's applied in other ways. [00:30:31] Speaker 05: Thank you, Mr. Finkus. [00:30:33] Speaker 05: Mr. Foreman has up to five minutes to respond for the Patent Office on the motion to amend. [00:30:44] Speaker 01: Thank you. [00:30:47] Speaker 01: I may please the court. [00:30:48] Speaker 01: When filing a motion to amend, the patent owner bears the burden of showing that it is entitled to its requested relief. [00:30:55] Speaker 01: Two of the requirements necessary for meeting that burden, the patent owner must offer claim construction for newly added claim terms. [00:31:02] Speaker 01: The patent owner must demonstrate written description support for the amended claims. [00:31:07] Speaker 05: BE does not challenge- Is claim construction necessary always? [00:31:11] Speaker 01: Well, claim construction informs the patentability analysis. [00:31:18] Speaker 01: So the patent owner bears the burden of showing the patentability of the amended claim terms. [00:31:24] Speaker 01: And part of that process is defining the scope of the claim terms so that the claims can be compared to the prior art. [00:31:34] Speaker 02: But wouldn't you agree that there are some instances where the claim terms are so plainly clear on their face that the [00:31:42] Speaker 02: you know, the stated requirement of doing a claim construction is sort of form over substance in instances like that. [00:31:50] Speaker 01: Sure, I agree that there could be circumstances where the claim language is clear enough on its face that no construction is really needed or construction may just confuse things. [00:32:03] Speaker 01: This is certainly not one of those situations where we're introducing language, claim language for the first time. [00:32:10] Speaker 02: What was it that was mysterious about this claim language? [00:32:15] Speaker 02: It seems to be just saying you're making these advertising selections, doing it in real time based on what the viewer, what the user happens to be looking at, what the viewer happens to be browsing through. [00:32:30] Speaker 02: That seems pretty straightforward, right? [00:32:33] Speaker 01: Well, if the claim language had just said selecting content in accordance with real-time information, maybe that would be a situation where the claim would be readily understandable. [00:32:45] Speaker 01: Still, I mean, the issue is, what's the scope of real time? [00:32:50] Speaker 01: How much time is real time? [00:32:52] Speaker 01: The problem here is that you're selecting advertising content in accordance with three things, real time, [00:33:00] Speaker 01: information, other computer usage information, and demographic information. [00:33:04] Speaker 01: So there's no discussion about how real-time information differs from those other types of information, how a selection is done when you have those three types of information, how things are prioritized, how a selection is made, ranking, those types of information. [00:33:26] Speaker 01: There needs to be some more explanation. [00:33:27] Speaker 05: How about written description? [00:33:30] Speaker 01: Written description. [00:33:32] Speaker 05: That would seem to be more important, wouldn't it? [00:33:34] Speaker 01: Yes. [00:33:35] Speaker 01: Here, the patent owner just provided the board with a number of page and line citations with no explanation of how those citations support the newly amended claim. [00:33:49] Speaker 02: The regulation doesn't require that kind of full explanation, does it? [00:33:56] Speaker 01: Well, the regulation just says that you have to demonstrate written description support. [00:34:00] Speaker 01: And that's not something new to an IPR proceeding and lots of other proceedings. [00:34:07] Speaker 01: But before the Patent Office and District Court, parties have to show written description support. [00:34:11] Speaker 01: And we don't believe that it's sufficient to just hand the board a number of page and line citations and basically tell the board to go figure out [00:34:20] Speaker 01: on its own. [00:34:22] Speaker 03: Would that be sufficient? [00:34:23] Speaker 03: It would never be sufficient in any circumstance or maybe more in circumstances where those citations are lengthy and maybe none of them alone provides the support. [00:34:35] Speaker 03: But could you imagine situations where maybe there's only just one or two sites provided and it's pretty darn clear that there's support? [00:34:41] Speaker 01: Yeah, I mean the case, the International Flavors case that BE relies on is one of the circumstances where [00:34:48] Speaker 01: The patent owner just provided some brief citations to a small number of paragraphs in the specification, and the board found that sufficient. [00:34:58] Speaker 01: So I've written descriptions, a very factual issue, and it's really going to depend on how complex the invention is. [00:35:08] Speaker 01: It's going to depend on how extensive the claim amendments are. [00:35:12] Speaker 05: I mean, there are certainly situations where you could add... Do the words real-time appear in the patent? [00:35:18] Speaker 01: They do appear in the specification. [00:35:19] Speaker 01: And now BE tries to point to passages in the specification in their brief to explain how this real-time information limitation is described in the specification. [00:35:35] Speaker 01: But they didn't do any of that. [00:35:36] Speaker 01: I mean, it's really too little too late. [00:35:37] Speaker 01: They didn't do any of that for the board. [00:35:39] Speaker 01: And the board was kind of at a loss because BE just almost like putting all these puzzle pieces on the table and not putting the puzzle together. [00:35:47] Speaker 01: If BE had provided that description to the board, maybe the board would have found that insufficient. [00:35:54] Speaker 03: Could they have, I don't recall whether they filed a petition for re-hearing here. [00:35:58] Speaker 03: Did they or could they have done so on this issue? [00:36:02] Speaker 01: I don't believe they filed a petition for re-hearing before the board. [00:36:06] Speaker 01: This is really, you know, this was a very plainly stated, clear requirement that they knew about beforehand. [00:36:14] Speaker 01: So, you know, [00:36:16] Speaker 01: They had their one shot. [00:36:18] Speaker 01: I don't think they met the requirement. [00:36:22] Speaker 01: I don't see why the board would have to reconsider that afterwards. [00:36:25] Speaker 05: Thank you, Mr. Foreman. [00:36:28] Speaker 05: Mr. Freitas has some rebuttal time. [00:36:32] Speaker 07: Thank you, Your Honor. [00:36:33] Speaker 05: Can you point out where the words real time appear in the specification? [00:36:52] Speaker 05: Since it's key to one of your issues, I would think it ought to be handed. [00:37:00] Speaker 07: It's in the abstract, Your Honor. [00:37:04] Speaker 07: It's on column three, line 30. [00:37:08] Speaker 07: As a matter of fact, there on column three, line 30, real time is used with specific reference to what the user's doing. [00:37:15] Speaker 07: There's a couple of other places where it appears. [00:37:18] Speaker 07: With respect to the point about the unique identifier, [00:37:21] Speaker 07: I have four things to say. [00:37:23] Speaker 07: First of all, we maintain that from the computer, those are words of limitation. [00:37:28] Speaker 07: They must be accounted for. [00:37:30] Speaker 07: Mr. Pink has said that they're simply a pathway identifier. [00:37:34] Speaker 03: I'm a little confused because the site you just gave says does not provide real time. [00:37:37] Speaker 07: That was a discussion of the Philip reference, Your Honor? [00:37:41] Speaker 07: So it said under fill up, all you do is you get previously loaded ads in the queue in the order they were put in the queue. [00:37:49] Speaker 07: So fill up does not provide real time. [00:37:51] Speaker 03: I understand. [00:37:52] Speaker 03: Where is it described that your invention actually provides real time? [00:37:58] Speaker 07: Column six, line three, with reference to the category identifiers. [00:38:06] Speaker 07: The category identifiers, for example, [00:38:08] Speaker 07: business, sports, gardening, whatever it might be. [00:38:12] Speaker 07: The categories then allow real-time targeting because when the users engage in a review of one of those kinds of things, by use of the category identifier, real-time is achieved. [00:38:28] Speaker 02: So what about the notion of using real-time and other computer usage information and demographic information all together [00:38:37] Speaker 02: and synthesize all that to then select and transmit an advertisement? [00:38:43] Speaker 07: The answer there, Your Honor, is that the claim language is broad. [00:38:46] Speaker 07: It doesn't claim any specific way of doing that, any formula of doing it. [00:38:50] Speaker 07: It simply says, in accordance with. [00:38:53] Speaker 07: So it's broad claim language, not requiring further limitation or further written description support. [00:38:58] Speaker 07: And each of those things is mentioned in the specification, much of it in original claim 11, which made reference to, of course, [00:39:07] Speaker 07: Demographic information and while targeting in original claim 11 isn't done with computer usage information It's clearly collected and associated So it's it's all it's all there and the claim language doesn't require The proposed claim language doesn't require any further refinement Judge stole there's a couple of other references in column 16 and [00:39:33] Speaker 07: There's a reference line 25, the reactive targeting provided by client software application 10 is handled in real time rather than it's simply building a library. [00:39:46] Speaker 07: And there's another reference lower in column 16. [00:39:52] Speaker 07: But we maintain that from the computer, those are words of limitation. [00:39:56] Speaker 07: And Mr. Pink has also said, [00:39:59] Speaker 07: that there are references to a user ID, that the ID can be associated with the user. [00:40:04] Speaker 07: We don't dispute that. [00:40:06] Speaker 07: But the claim language requires that it identify what's sent from the computer. [00:40:10] Speaker 07: On claim 16, Mr. Pink has said it's the same term. [00:40:15] Speaker 07: It's not. [00:40:16] Speaker 07: It does not say said unique identifier. [00:40:21] Speaker 07: It says providing a unique identifier to the users. [00:40:26] Speaker 07: It does not say [00:40:28] Speaker 07: said unique identifier. [00:40:30] Speaker 05: Counsel, my role here is to be a unique identifier when your time is up. [00:40:37] Speaker 05: And it is up, so we will take the case under advisement. [00:40:42] Speaker 07: Thank you, Your Honor.