[00:00:19] Speaker 06:
The last case is a consolidation of four cases, and we'll hear 20 minutes from each side.

[00:00:28] Speaker 06:
VE Technology versus Sony, Google, Microsoft, and Samsung, probably et al.

[00:00:35] Speaker 06:
2015, 82, 83, 87, and 88.

[00:00:38] Speaker 06:
Mr. Weinberg.

[00:00:43] Speaker 00:
Thank you, Your Honors.

[00:00:45] Speaker 00:
May it please the Court.

[00:00:47] Speaker 00:
We're done with advertising, so we're moving on to a different system.

[00:00:52] Speaker 00:
This system involves storage of files for users on a server.

[00:00:59] Speaker 00:
And this case, as it's consolidated with four cases, presents the Kikinis reference, which is raised in each of the cases, and the Foley reference, which is only raised in one.

[00:01:11] Speaker 00:
But I'm going to start with Foley, because I think we can dispatch with it quickly.

[00:01:16] Speaker 00:
The board did not apply its own construction of the user library element in the Foley decision.

[00:01:24] Speaker 00:
The board construed user library as a collection of an individual's stored files.

[00:01:33] Speaker 00:
That's not challenged.

[00:01:35] Speaker 00:
We did not dispute that construction.

[00:01:37] Speaker 00:
That is the construction of user library.

[00:01:40] Speaker 00:
And the board applied a different construction when it looked at,

[00:01:46] Speaker 00:
the project files disclosed as being remotely stored in the Foley system.

[00:01:52] Speaker 00:
And what the board said is it focused on the fact that those project files are quote unquote individual stored files, not an individual's stored files.

[00:02:05] Speaker 00:
And while there aren't a lot of different letters there to make up the difference between individual stored files and an individual stored files, they mean very different things.

[00:02:16] Speaker 00:
With respect to the Foley decision, which is in the Google case, at A26, the board said in figure five of Foley, the portfolio file is a file that provides references or links to individual project files.

[00:02:34] Speaker 00:
And then it followed up by saying the collection of project files, on the other hand, is the plurality of individual project files

[00:02:44] Speaker 00:
that can be linked from the portfolio file.

[00:02:47] Speaker 00:
So it's clear that the board is not applying the construction that it adopted when it's examining the Foley reference.

[00:02:54] Speaker 00:
It's merely focusing on the plurality of individual project files.

[00:03:00] Speaker 00:
And we think, simply, that this case must be remanded to the board for consideration of the proper construction.

[00:03:07] Speaker 00:
This is not a case where we're disputing the construction.

[00:03:09] Speaker 00:
And if this panel agrees with us,

[00:03:11] Speaker 00:
then it has to go back for application of the proper construction to the prior art.

[00:03:16] Speaker 00:
Simply, the board did not apply its own construction.

[00:03:19] Speaker 00:
And though it doesn't involve a great deal of different letters and numbers, I guess there are no numbers, but different letters and punctuation, individual stored files and individuals stored files are different things.

[00:03:32] Speaker 04:
You gave a site earlier to page 826.

[00:03:35] Speaker 04:
In which appeal was that?

[00:03:36] Speaker 00:
This is the Google appeal.

[00:03:38] Speaker 00:
This is the decision in the Google appeal.

[00:03:40] Speaker 00:
And that is the only appeal that presents the Foley prior art reference.

[00:03:44] Speaker 00:
And the parties have disputed in the briefs what it means and whether Foley discloses an individual's stored files.

[00:03:53] Speaker 00:
That I submit is briefing for another day because we don't have the rationale of the board for its conclusion that those project files are an individual's stored files.

[00:04:06] Speaker 00:
We don't think they will be.

[00:04:08] Speaker 00:
Google submits that they are.

[00:04:10] Speaker 00:
But until the board actually applies that claim construction to the prior art, we don't know why the board decided as it does.

[00:04:19] Speaker 00:
Turning to Kikinis, there are two primary arguments that we raise with respect to the Kikinis reference.

[00:04:26] Speaker 00:
The first relates to a claim construction in claim two of the 290 patent that focuses on the language to access the file associated with the selected user link from the user library.

[00:04:40] Speaker 00:
And the 290 in claim 2 describes a system where a user is provided with a user profile that is stored on a server and a user library that is also stored on the server.

[00:04:53] Speaker 00:
And that this program of claim 2 is operable to receive the profile from the server, display user links, and allow the user to access files stored in the user library from those user links.

[00:05:07] Speaker 00:
We've argued

[00:05:08] Speaker 00:
that that claim requires a one-to-one correlation between the user link and the user's file.

[00:05:17] Speaker 00:
And we focus on the language of the claim itself, and we think there's a plain meaning to that language, which is to access the file associated with the selected user link from the user library.

[00:05:29] Speaker 00:
Now, the appellees, the petitioners below, and the board disagreed with BE.

[00:05:35] Speaker 00:
They said, it's not that narrow.

[00:05:37] Speaker 00:
It's broader.

[00:05:39] Speaker 00:
and they focused on language and the specification that describes what we submit is merely the organization of the user profile, but doesn't address whether the link and the file have this one-to-one relationship.

[00:05:53] Speaker 00:
But we think that there's plenty of evidence in the claim itself to support our narrower reading, starting with the preamble.

[00:06:01] Speaker 00:
The preamble states

[00:06:03] Speaker 00:
that the user profile contains at least one user link that provides a link to one of the files.

[00:06:10] Speaker 00:
And we think that's consistent with the limitation further down in claim two, which is to access the file associated with the selected user link from the user library.

[00:06:22] Speaker 00:
Now, what's odd about this is the board said it's broader than that, B.E., you're wrong.

[00:06:26] Speaker 00:
But then the board applied our narrower construction to the Cacanis reference.

[00:06:31] Speaker 00:
And it found that the reference

[00:06:33] Speaker 00:
anticipates the 290, but the evidence on which it relies is hardly sufficient to support that conclusion.

[00:06:41] Speaker 00:
What the board relied on was a single statement in Kikinis that suggests the relationship that we advocate is required by Claim 2.

[00:06:55] Speaker 00:
The board cited column 7, line 34 through column 8,

[00:06:59] Speaker 00:
line one of Kikinis.

[00:07:01] Speaker 00:
And it says there, home page 73, however, is different than conventional homepages as described above with reference to figure two, having onscreen links to electronic documents reserved for the home page owner, such as email and faxes.

[00:07:17] Speaker 00:
And what the board concluded was that one line from Kikinis disclosed that relationship between links and files that we said was mandatory in the construction of claim two.

[00:07:29] Speaker 00:
But that one line is inconsistent with literally every other disclosure of the system of Kikinis.

[00:07:35] Speaker 00:
In fact, the very next sentence in column 8, line 2 through 4, says, as an example, home page 73 in figure 3 has a button 117 labeled V-mail for voicemail.

[00:07:49] Speaker 00:
By selecting button 117, a user is linked to database 93, figure 2.

[00:07:56] Speaker 00:
through CGI 80 and voicemail program 87.

[00:08:00] Speaker 00:
And there are other references.

[00:08:02] Speaker 00:
Column 6, line 35 through column 7, line 1, a single database of set 71 includes a home page 73 individualized to a specific client that provides software links to various lower order databases maintained by electronic document server 69.

[00:08:21] Speaker 00:
Kikinis discloses a system that presents a home page to a user

[00:08:26] Speaker 00:
that contains links to databases from which the user may then access different electronic documents.

[00:08:33] Speaker 00:
And it describes a voicemail database, email database, and other electronic document database.

[00:08:41] Speaker 00:
And by clicking the links on the home page, the user gets merely the database.

[00:08:46] Speaker 00:
It does not get a given file within the database.

[00:08:51] Speaker 00:
And we said,

[00:08:52] Speaker 00:
That's not good enough.

[00:08:53] Speaker 00:
That's not what the 290 is because the 290 has in the profile a link to a specific file in the user library.

[00:09:03] Speaker 00:
Indeed, claim one of Kikina states an on-screen active selection area for access to an electronic document database containing electronic documents addressed specifically to the home page owner.

[00:09:18] Speaker 00:
So we submit

[00:09:19] Speaker 00:
that though the board said our construction was wrong, and it applied our construction, and it said it was anticipated by this one line that's inconsistent with the entire reference, we submit that's not substantial evidence.

[00:09:32] Speaker 05:
I guess in kinness, is it your understanding that ultimately there's a link to any given file?

[00:09:39] Speaker 05:
It's just that you have to go perhaps through a chain of links to get to that link?

[00:09:43] Speaker 00:
You do.

[00:09:43] Speaker 00:
That's correct.

[00:09:44] Speaker 05:
And we think... And then I guess what my next question would then be,

[00:09:49] Speaker 05:
Well, is the user profile in Kikinis just that front page?

[00:09:55] Speaker 05:
Or is it really an amalgamation of everything that's contained inside that user profile, which would include, ultimately, some window that would have the final link to the said file?

[00:10:10] Speaker 00:
So that's a great question.

[00:10:12] Speaker 00:
And I'd like to answer it by focusing on what the institution decision said, because that ultimately set up what our target was.

[00:10:19] Speaker 00:
And the institution decision said the home page of Kikinis was the user profile.

[00:10:25] Speaker 00:
The on-screen active selection area of the home page was the user link.

[00:10:30] Speaker 00:
The database was the user library, and that the electronic documents within the database were the files.

[00:10:39] Speaker 00:
And of course, our contention is there must be a link to one file from the user profile.

[00:10:47] Speaker 05:
from the home page of the user?

[00:10:48] Speaker 00:
The home page of Keekinnis, correct.

[00:10:51] Speaker 00:
And along the way, when we made this argument, the board came back in the final decision and shifted gears on us.

[00:11:00] Speaker 00:
It said, OK, not only are you anticipated because of that one liner, but file is broadly defined in the 290 patent.

[00:11:10] Speaker 00:
And the databases, which we've identified as the user library,

[00:11:15] Speaker 00:
Those can also be the files.

[00:11:18] Speaker 00:
And using its definition of user library, which I mentioned earlier with respect to Foley, a collection of an individual stored files, the board held, well, you've got multiple databases because there's a voicemail database and an email database and another electronic documents database.

[00:11:36] Speaker 00:
That collection is the user library.

[00:11:39] Speaker 00:
That's an argument that wasn't presented in the petition.

[00:11:43] Speaker 00:
It wasn't presented in the institution decision.

[00:11:46] Speaker 00:
It is not something that we aimed at when we filed our patent on a response.

[00:11:50] Speaker 00:
There was no testimony related to that.

[00:11:53] Speaker 00:
That was a new finding.

[00:11:54] Speaker 00:
I believe it was presented in reply and the board adopted it.

[00:11:57] Speaker 00:
Did you seek recurring on that issue?

[00:11:59] Speaker 00:
We did not.

[00:12:00] Speaker 00:
We looked at it as a

[00:12:03] Speaker 00:
as a new argument that shouldn't have been part of the process.

[00:12:07] Speaker 00:
It was, as this court has held, raised in reply.

[00:12:11] Speaker 00:
It was addressed in the final decision, not the institution decision.

[00:12:17] Speaker 00:
We think it was, in part, an admission that that one liner that the board cited as evidence of anticipation was insufficient since the board decided to change its analysis and the claim mapping so that there would be

[00:12:33] Speaker 00:
a file with respect to the databases as opposed to the documents in the database.

[00:12:40] Speaker 00:
We think this overhauling of the mapping of the claim elements to Kikinis reflects that there was a valid argument that we presented in the patent owner response that as to this limitation, Kikinis doesn't satisfy it.

[00:12:55] Speaker 04:
Well, if you thought that you weren't on notice and that the ward had a new ground, why did you not seek a hearing?

[00:13:04] Speaker 00:
Well, we didn't understand our obligation to seek rehearing, and we had a right to appeal.

[00:13:09] Speaker 00:
And in light of some of the statistics that are out there with respect to the success rates on rehearing, we took our chance at coming to this court instead.

[00:13:21] Speaker 00:
We don't understand the decision not to seek rehearing as somehow waiving any of our rights with respect to a new argument presented in a reply or a

[00:13:35] Speaker 05:
an outcome in the final decision that was not present in the institution decision.

[00:13:49] Speaker 05:
what you considered to be a new finding to be also incorrect to the institution finding.

[00:13:55] Speaker 05:
But I didn't read your appeal as including a separate procedural argument to vacate the board's decision based on some impermissible new finding that you didn't have an opportunity to respond to.

[00:14:11] Speaker 00:
Well, we've been accused of waiving this argument with respect to the files not being an individual stored file.

[00:14:19] Speaker 00:
And the fact of the matter is that was not something that we had an opportunity to respond to.

[00:14:24] Speaker 00:
So we do have a procedural objection.

[00:14:26] Speaker 00:
It's couched in terms of the appellee's procedural objection.

[00:14:30] Speaker 00:
I believe it's Microsoft that makes that procedural objection stating that we've waived.

[00:14:34] Speaker 00:
But we have we have an issue with the board adopting a new claim mapping in the final decision That wasn't part of the trial that wasn't in the institution as I understand the content of your appeal It's based on a merits based challenge to that new finding.

[00:14:51] Speaker 05:
It's not based on some procedural challenge that the board finding must be vacated solely because it was brand new and

[00:14:59] Speaker 00:
No, we did not make a procedural challenge in that regard.

[00:15:02] Speaker 04:
And the board maintained its prior view as well.

[00:15:05] Speaker 04:
It just had this alternative argument in addition to the prior position.

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

[00:15:10] Speaker 00:
I see I'm into my rebuttal time, so I will sit down.

[00:15:15] Speaker 06:
We will save it for you.

[00:15:16] Speaker 00:
Thank you.

[00:15:18] Speaker 06:
Mr. Cushing, you are taking 10 minutes.

[00:15:24] Speaker 03:
May it please the court, I'm Jeff Kushner representing Microsoft in this appeal.

[00:15:29] Speaker 03:
I'm going to be offering remarks on the Kikinis grounds that are spread across several of the appeals.

[00:15:34] Speaker 03:
And Mr. Rosenthal will be addressing the issue relating to Foley, which is raised in the Google IPR appeal.

[00:15:43] Speaker 03:
First thing I'd like to do is make sure that we do see exactly what the board had in front of it.

[00:15:48] Speaker 03:
And there was substantial evidence to support its finding.

[00:15:50] Speaker 03:
in two different ways that Kikinis was anticipated, that Kikinis anticipates the claims.

[00:15:56] Speaker 03:
First thing that, and it's already been cited, so I'll just refer to that.

[00:16:01] Speaker 03:
The Kikinis reference describes a system which presents an interface, a graphical user interface, which has links.

[00:16:08] Speaker 03:
And when the user clicks on those links, they get access to the files that are stored on a server.

[00:16:13] Speaker 03:
And Kikinis is very explicit in saying what happens.

[00:16:18] Speaker 03:
This is at 8, 425, 426, column 7, lines 34 to column 8, line 1.

[00:16:25] Speaker 03:
Home page 73 having screen links to electronic documents reserved for the home page owner, such as email and faxes.

[00:16:32] Speaker 03:
And this was the first round the board found satisfied the requirements of the claim.

[00:16:37] Speaker 03:
That's pointing, that's a technique shown in Cooke-Hinnis where the links take you directly to the user's files.

[00:16:43] Speaker 03:
The next thing that the board did was look to the record of evidence and

[00:16:48] Speaker 03:
I would like to raise a couple of the issues that were presented by the petitioner below that go to this question of whether there's a requirement for one click or some kind of special way of connecting to the files.

[00:17:01] Speaker 03:
That is refuted by the evidence in their own patent.

[00:17:04] Speaker 03:
There are examples in their patent, and I'll direct you to figures 5B and 5C, which are found at

[00:17:18] Speaker 03:
And what that is illustrating what the board addressed in their written decision was a technique where a first window is provided that a user has to click on that first window to get another list of links and that eventually gets them to the link to the file.

[00:17:34] Speaker 03:
It's important to recognize that the board considered this question of whether there was a requirement for one-to-one access or one-click access or direct access and they found based on their own patent that wasn't a supportable restricted meaning of the claims.

[00:17:47] Speaker 03:
I'd also like to flag a couple things in the definitions of their patent.

[00:17:51] Speaker 03:
And this is, again, something the board relied on.

[00:17:54] Speaker 03:
If you go to A9, you see of the record, this is the board identifying a number of terms that were construed or defined explicitly in the patent, one of which is link.

[00:18:05] Speaker 03:
And a link is a data item that identifies a location or address of a program or information resource.

[00:18:11] Speaker 03:
File is similarly described and defined in very broad terms.

[00:18:15] Speaker 03:
And all of that led the board to conclude that it was not appropriate to read into this link requirement some special kind of way of connecting to the files.

[00:18:24] Speaker 03:
But ultimately, the first ground that the board found was based on this explicit indication in Kikinis that links are provided to individual documents.

[00:18:33] Speaker 03:
Now, the next issue that the board found satisfied Kikinis or satisfied the claims from Kikinis was something which developed through the evidence in the proceeding.

[00:18:43] Speaker 03:
And what was shown through that evidence was that in the Kikina system, there's a collection of individual databases maintained on the server.

[00:18:52] Speaker 03:
The links that are on that web page that is the user interface take you to those individual files.

[00:18:57] Speaker 03:
And what was before the report was evidence from the testimony of their own witness saying those database files that are collections of documents satisfied the definition of file in their own patent.

[00:19:10] Speaker 03:
And that evidence wasn't disputed.

[00:19:12] Speaker 03:
There was enough presented to the board for them to find an independent ground for demonstrating the anticipation by mechanics.

[00:19:19] Speaker 05:
Correct.

[00:19:19] Speaker 05:
That wasn't part of the institution decision, right?

[00:19:21] Speaker 03:
That was not in our petition.

[00:19:22] Speaker 03:
It was not addressed in the institution decision.

[00:19:24] Speaker 03:
But during the course of development and the proceeding, it was addressed.

[00:19:27] Speaker 03:
And I would like to flag, particularly, that this was an issue that was raised and addressed in our reply, and also addressed and argued by them at the oral hearing.

[00:19:36] Speaker 03:
And in your recent decision in Genzyme, this is the Genzyme case from June 14th of this year, you addressed this question of whether it's appropriate for the board to kind of consider something which isn't articulated in the institutional decision.

[00:19:50] Speaker 03:
And you found that it was appropriate, because this is obviously a proceeding they conduct.

[00:19:54] Speaker 03:
Additional evidence comes into play.

[00:19:56] Speaker 03:
And that's something which focuses on whether they had an opportunity during the proceeding to address the new issues that are reduced through that proceeding.

[00:20:03] Speaker 03:
And they did.

[00:20:03] Speaker 03:
They addressed it.

[00:20:04] Speaker 03:
And I'll give you the site.

[00:20:06] Speaker 03:
the oral hearing transcript, as you can see at A3399-3402, you see this being addressed by them at the oral hearing.

[00:20:14] Speaker 03:
Now, I think it's fairly clear when you take either of these two mappings that were presented and found by the board to demonstrate anticipation, you could affirm on either of those grounds.

[00:20:26] Speaker 03:
If you didn't address the second ground, you could still affirm on the first one.

[00:20:30] Speaker 03:
And I think here it's important to appreciate what that evidence was in front of the board.

[00:20:36] Speaker 05:
I'm sorry, the oral hearing transcript is not in the joint appendix, is that right?

[00:20:40] Speaker 03:
There are excerpts, I believe, from the... I think we had cited 83399.

[00:20:44] Speaker 03:
Oh.

[00:20:45] Speaker 03:
Okay.

[00:20:53] Speaker 05:
I see it.

[00:20:53] Speaker 05:
Okay.

[00:20:54] Speaker 03:
Thanks.

[00:20:58] Speaker 03:
This one passage in Kikinis that describes

[00:21:00] Speaker 03:
The first example of anticipation was the subject of the deposition of their witness.

[00:21:05] Speaker 03:
And I'd like you to direct your attention to A, 1276, as 66, 6 to 20.

[00:21:11] Speaker 03:
Now, counsel for the appellant has portrayed this as kind of a throwaway statement in Kikinis.

[00:21:17] Speaker 03:
And I don't believe that's accurate.

[00:21:19] Speaker 03:
What Kikinis is describing is literally the same kind of technique shown and claimed in their patent.

[00:21:24] Speaker 03:
When we took that up with their witness, he agreed not only that's literally what it says, but as he said,

[00:21:30] Speaker 03:
That's what is being disclosed by the reference.

[00:21:33] Speaker 03:
And we believe, again, this is a proceeding where the evidence was presented to the board.

[00:21:38] Speaker 03:
The board found substantial evidence to confirm that that reading met the requirements of the claim.

[00:21:47] Speaker 03:
I think there were some other questions that were presented, and I'd just like to flag the question of the mappings that were raised.

[00:21:55] Speaker 03:
The first mapping did in fact use

[00:21:58] Speaker 03:
database as a source of the access to the files.

[00:22:02] Speaker 03:
The second mapping spoke to the collection of individual databases to satisfy the user library.

[00:22:08] Speaker 03:
I think that's also supported by the substantial evidence that was in front of the board.

[00:22:13] Speaker 03:
And again, it's very important to appreciate that there's very little that was actually ultimately in dispute between the parties based on the testimony of their witness in deposition and in front of the board.

[00:22:25] Speaker 03:
I believe with that,

[00:22:28] Speaker 03:
I think I will rest.

[00:22:29] Speaker 03:
And if you have any other questions about the record, I'm happy to dive into it.

[00:22:34] Speaker 06:
Thank you.

[00:22:35] Speaker 06:
Mr. Kushner, Mr. Rosenthaler.

[00:22:46] Speaker 02:
Good morning.

[00:22:47] Speaker 02:
May it please the court, I represent Google with respect to the Foley reference and the Cacanis reference as well.

[00:22:53] Speaker 02:
But I'm going to focus my comments on the Foley reference.

[00:22:56] Speaker 02:
I want to address right off the bat this notion that the board did not apply its own construction.

[00:23:04] Speaker 02:
First of all, there was no dispute below that Foley had a user library.

[00:23:10] Speaker 02:
When you look at the board's construction and the board's discussion on page 825, the board set forth what the disputes were.

[00:23:23] Speaker 02:
The disputes below were whether or not there was a user profile and whether that user profile was separate from the user library.

[00:23:32] Speaker 02:
If we look, for instance, on A26, which is the board's decision, the board says patent owner contends that Foley does not teach a user profile separate from a user library.

[00:23:46] Speaker 02:
We disagree.

[00:23:47] Speaker 02:
In its mapping between the disclosure of Foley and the limitations of claim two, petitioner asserts that Foley's portfolio file corresponds to the claimed user profile, and the collection of a user's project files in Foley corresponds to the library.

[00:24:05] Speaker 02:
Patent owner does not dispute this mapping, but instead argues that Foley's portfolio file and collection of project files describe the same thing.

[00:24:14] Speaker 02:
That was the argument below.

[00:24:16] Speaker 02:
Appellant says, well, I don't see anywhere in the analysis where they specifically said that the project files are a collection of the user's stored files.

[00:24:26] Speaker 02:
That's because that wasn't in dispute.

[00:24:28] Speaker 02:
However, they're wrong in any event because on the previous page on A25, this is the board speaking, as petitioner asserts, a portfolio file in Foley contains references or links to a user's project files which are created

[00:24:46] Speaker 02:
and named by a user and cites the specification of the Foley patent and cites expert testimony that we provided in support of that notion.

[00:24:55] Speaker 02:
This idea that the board did not decide that the collection of files are the user's files was not made below, and it is not true.

[00:25:04] Speaker 02:
The board actually did decide that issue.

[00:25:07] Speaker 02:
Now, with respect to the issues that were in the briefs on points, there are only two alleged distinctions

[00:25:15] Speaker 02:
that appellant makes over the Foley reference.

[00:25:18] Speaker 02:
None of them were discussed today, but I want to address both of them to make sure that we address the points that were raised in the reply brief.

[00:25:26] Speaker 02:
First, there's this argument that there's no program in the Foley reference because there's described a JWS program.

[00:25:35] Speaker 02:
It's called a Java Workshop Program and a Java Browser.

[00:25:40] Speaker 02:
They say those are separate programs.

[00:25:42] Speaker 02:
They're not the same program.

[00:25:45] Speaker 02:
the board found as a matter of fact that Foley does describe a single program.

[00:25:51] Speaker 02:
That factual finding is entitled to deference.

[00:25:54] Speaker 02:
There's substantial evidence to support it.

[00:25:56] Speaker 02:
What is that substantial evidence?

[00:25:58] Speaker 02:
The board relied on a handful of references within Foley that says the JWS program incorporates the JWS browser.

[00:26:08] Speaker 02:
It integrates the JWS browser.

[00:26:10] Speaker 02:
It utilizes the JWS browser.

[00:26:13] Speaker 02:
It uses the JWS browser.

[00:26:15] Speaker 02:
And the JWS browser is under control of the JWS program.

[00:26:20] Speaker 02:
It couldn't be more clear that these two things are related.

[00:26:24] Speaker 02:
The board found two alternative grounds to find this limitation met.

[00:26:28] Speaker 02:
First, it found that in fact, the JWS browser is part of the JWS program.

[00:26:36] Speaker 02:
And therefore, it's a single program.

[00:26:41] Speaker 02:
In doing so, the board found that the JWS browser is a module that is contained within the program.

[00:26:46] Speaker 02:
The definition of program is very broad in the 290 patent.

[00:26:50] Speaker 02:
It is just a collection or one or more related program modules.

[00:26:57] Speaker 02:
The board also found as an alternative ground that even if you consider the JWS program and the JWS browser to be related, or sorry, to be separate program modules, that they are related.

[00:27:08] Speaker 02:
And again, the board relied on the references that I just referred to, all of that explicit language from the Foley reference, in addition to testimony.

[00:27:19] Speaker 02:
And there's testimony from our expert that in reading some of those passages, what that means is that the JWS browser is contained within the JWS program.

[00:27:30] Speaker 02:
So we don't think that there is any ambiguity about the specification of the Foley patent.

[00:27:37] Speaker 02:
But to the extent there isn't any ambiguity and you could read it two different ways, the board read it this way.

[00:27:43] Speaker 02:
And there is substantial evidence to support the board's reading.

[00:27:46] Speaker 02:
That closes that issue of program.

[00:27:49] Speaker 02:
The second and last distinction that the appellant raised with respect to Foley was this notion that there's no user library.

[00:27:58] Speaker 02:
And the argument after saying the board didn't actually say what it said, the argument is,

[00:28:05] Speaker 02:
that the collection of project files in Foley is not the user's files.

[00:28:12] Speaker 02:
Why?

[00:28:12] Speaker 02:
Because it can be published to be accessible by anyone.

[00:28:18] Speaker 02:
Now, there's absolutely nothing in the claim construction of user library that requires that the files of the user be kept private.

[00:28:25] Speaker 02:
It doesn't say a collection of the user's stored files that cannot be accessed by anyone else.

[00:28:32] Speaker 02:
And in fact, that claim construction was never objected to.

[00:28:35] Speaker 02:
a collection of the user's stored files, nor is it objected to or argued that it's wrong here in this court.

[00:28:41] Speaker 02:
We are stuck with, and they are stuck with, a collection of the user's stored files, or however that was phrased.

[00:28:49] Speaker 02:
There's nothing that requires it to be private.

[00:28:52] Speaker 02:
In any event, even if there were somehow a requirement that the user's files have to be kept private, there's an explicit disclosure in the Foley reference

[00:29:04] Speaker 02:
that says that the creator of the portfolio has the option.

[00:29:09] Speaker 02:
This is on A1580 at the top of column 8, line 12 of the Foley reference.

[00:29:16] Speaker 02:
Once the new portfolio has been created, its creator can keep it private or can publish it on the internet to be accessed by others.

[00:29:25] Speaker 02:
So there's an explicit disclosure within Foley that it can be private, even if that were somehow a requirement of the claim.

[00:29:34] Speaker 02:
The appellant has argued, well, if the portfolio files and the project files are on a remote computer, that means that they are published and that they're not private.

[00:29:48] Speaker 02:
That's not supported at all by the specification of Foley.

[00:29:52] Speaker 02:
The best figure, and I think this figure really resolves every question with respect to Foley, is if you look at Figure 6 of Foley, which is on A1576.

[00:30:03] Speaker 02:
This figure tells you everything you need to know about Foley.

[00:30:07] Speaker 02:
In this figure, what you see is in machine C, which is a remote machine, there's a box and it says remotely stored portfolio and projects.

[00:30:19] Speaker 02:
So that's a user profile, that's the portfolio file.

[00:30:23] Speaker 02:
And a user library, that's the projects.

[00:30:26] Speaker 02:
Both stored on a remote computer, which means the definition of server, machine C.

[00:30:32] Speaker 02:
In that figure alone, you can see exactly what's claimed in claim two, and that's exactly what the board found.

[00:30:37] Speaker 02:
The board relied on this figure and on figure five and actually excerpted them in the opinion.

[00:30:43] Speaker 02:
The notion that when these files are stored remotely, they are necessarily published and no longer private is nowhere supported in the specification.

[00:30:52] Speaker 02:
In fact, the specification of the Foley patent and the abstract in particular,

[00:30:59] Speaker 02:
demonstrates that the notion of where the portfolio is stored and whether it's published are two completely different concepts.

[00:31:08] Speaker 02:
When we look at the abstract of Foley, which is A1570, there are two notions that are described.

[00:31:15] Speaker 02:
First, about a third of the way down the abstract, it says the software portfolio and or their constituent projects can be stored on the system hosting the portfolio management system or on any remote system.

[00:31:28] Speaker 02:
So that's the disclosure that it can be local or remote.

[00:31:32] Speaker 02:
At the end of the abstract, it then says the PMS also allows users to publish portfolios and projects on the internet to be used by others within certain limits set by the publisher.

[00:31:44] Speaker 02:
So there's two independent concepts.

[00:31:46] Speaker 02:
The first concept is where are the files stored?

[00:31:49] Speaker 02:
They can be local or remote.

[00:31:51] Speaker 02:
As we saw in figure six, they can all be remote.

[00:31:54] Speaker 02:
There's a separate independent concept, which is whether you publish it or keep it private.

[00:31:59] Speaker 02:
The claims don't require that you keep these private.

[00:32:01] Speaker 02:
Even if they did, Foley explicitly discloses that you can keep it private, regardless of where it's stored.

[00:32:09] Speaker 02:
If the panel has any questions, I'm happy to answer them.

[00:32:11] Speaker 02:
Otherwise, that's all I have.

[00:32:13] Speaker 06:
Thank you, Mr. Rosenthal.

[00:32:14] Speaker 06:
Mr. Weinberg has a little bit of other time, five minutes.

[00:32:21] Speaker 01:
Thank you, Your Honors.

[00:32:25] Speaker 01:
So I'd like to start with

[00:32:27] Speaker 00:
where Mr. Rosenthal left off.

[00:32:31] Speaker 00:
A couple of points that he was making that require clarification.

[00:32:34] Speaker 00:
The first, with respect to what the board decided and how it did or did not apply the construction.

[00:32:41] Speaker 00:
What Mr. Rosenthal cited on page A25 of the Google decision was nothing more than the board's recitation of the petitioner's contention.

[00:32:53] Speaker 00:
The quote is, as petitioner asserts, a portfolio file in Foley contains references or links to a user's project files which are created and named by the users.

[00:33:07] Speaker 00:
The arguments on A26 where the board applies the construction or does not, that does not make reference to an individual stored files.

[00:33:21] Speaker 00:
I'd also like to turn to

[00:33:24] Speaker 00:
The idea that the portfolio file and the project files are somehow private when they are remotely stored.

[00:33:35] Speaker 00:
What Foley teaches on columns 7, line 65, through column 8, lines 13, is the process by which portfolio files and the projects are created.

[00:33:52] Speaker 00:
It says a user of the JWS 150A can create a new portfolio by selecting the portfolio manager's quote unquote create option and then entering the name of the portfolio to be created.

[00:34:07] Speaker 00:
In response, the JWS 150A calls the portfolio dash create method 146A1A, which creates the corresponding portfolio file on the local system.

[00:34:22] Speaker 00:
displays its name in the toolbar 160A and adds the portfolio's name to the choose and remove submenus 147A1C, 147A1D.

[00:34:35] Speaker 00:
Then, in the very next paragraph, it says, once the new portfolio has been created, i.e., created on the local system, its creator can keep it private or can publish it on the internet to be accessed by others.

[00:34:51] Speaker 00:
And while Figure 6 shows Machine C as storing a remote portfolio and remote project files, remember, in order to satisfy the limitations of the user profile and user library, both the portfolio file and the project files must be remotely stored.

[00:35:10] Speaker 00:
So everything that deals with the portfolio file and project files on the local system, they're out.

[00:35:15] Speaker 00:
They don't matter for consideration of obviousness with respect to the 290.

[00:35:21] Speaker 00:
But when you look at the process by which portfolios are created, they are created on the local system or they are imported from remote servers.

[00:35:33] Speaker 00:
And that remote server merely takes somebody else's projects and brings it into the project that's being created on the user system, the local file.

[00:35:44] Speaker 00:
And it's important to compare and contrast what the 290 claims and what Foley claims.

[00:35:50] Speaker 00:
The 290 claims a system for storing an individual's stored files.

[00:35:56] Speaker 00:
That's the user library.

[00:35:58] Speaker 00:
What's described in the 290 patent are emails and business presentations and other personal or private documents.

[00:36:07] Speaker 00:
What Foley is, is a tool to import and store and share computer programs that are created by developers.

[00:36:20] Speaker 00:
that enable others to build more quickly their own projects.

[00:36:24] Speaker 00:
These are object code and source code files that are stored on distant nodes.

[00:36:29] Speaker 00:
Indeed, Patton describes on column two beginning at line 29, there is a need for an internet enabled programming environment that allows a user to assemble programs from components that are distributed on diverse internet nodes

[00:36:50] Speaker 00:
or to download entire program folders from another internet node.

[00:36:54] Speaker 00:
These are two very different systems.

[00:36:56] Speaker 00:
And while the mappings that is attempted suggest that there may be a user profile and a user library in certain forms here, the reality is the Foley system is a publishing tool to allow a developer to share his or her projects.

[00:37:14] Speaker 00:
Whereas the 290 claims a library

[00:37:18] Speaker 00:
that is being stored with an individual's stored files as the board construed the user library.

[00:37:28] Speaker 00:
I see my time is nearly up.

[00:37:31] Speaker 00:
One more note.

[00:37:37] Speaker 00:
Mr. Kushan mentioned that Dr. Plot, who is BE's expert, acknowledged at his deposition that that one liner from Kikinis

[00:37:47] Speaker 00:
discloses the association of a specific file with a specific link, I would merely point out the question he was asking, it's in our brief, is are those words there in Kikinis?

[00:37:59] Speaker 00:
And he agreed with that.

[00:38:01] Speaker 00:
But his declaration and his testimony is not that that means there's a one-to-one link between the link on the user profile and the file

[00:38:12] Speaker 00:
in the user library.

[00:38:14] Speaker 00:
Thank you very much.

[00:38:15] Speaker 06:
Thank you, Mr. Weinberg.

[00:38:16] Speaker 06:
We appreciate all the excellent arguments in all of these cases.

[00:38:20] Speaker 06:
They will be taken under submission.