[00:00:00] Speaker 04: Though I am presiding today, I need to turn the gavel over to Judge Lynn to start this session. [00:00:09] Speaker 00: I understand that you have a motion that you'd like to make, and we'll now entertain Judge O'Malley's motion. [00:00:17] Speaker 04: Thank you, Judge Lynn. [00:00:18] Speaker 04: I do. [00:00:18] Speaker 04: I move the admission of Dorothy Dew, who's a member of the bar and is in good standing with the highest court of New York. [00:00:25] Speaker 04: I have knowledge of her credentials, and I'm satisfied that she possesses the necessary qualifications. [00:00:31] Speaker 04: In fact, I have intimate knowledge of her credentials because I've had the privilege of having her clerk for me for the last year. [00:00:37] Speaker 04: And she has been a fabulous addition to our chambers in every way. [00:00:43] Speaker 04: She is a graduate of the Harvard Law School. [00:00:46] Speaker 04: and an undergraduate with an undergraduate from Cornell University in biology and society. [00:00:52] Speaker 04: She has a whole host of honors on her resume. [00:00:58] Speaker 04: And now she's going to have the honor of joining us as a member of this bar. [00:01:03] Speaker 04: I am going to miss her very much. [00:01:04] Speaker 04: I'm happy that her fiance, Dave Ray, is here too. [00:01:09] Speaker 04: And even happier that very soon, not only will I be able to preside over this motion practice with respect to Dorothy, but I'll be able to preside over the wedding of David and Dorothy. [00:01:21] Speaker 04: So it's an all-around great clerkship. [00:01:24] Speaker 04: So I move that admission. [00:01:26] Speaker 04: Judge Lin, Judge Stoll. [00:01:29] Speaker 00: Your motion is granted. [00:01:30] Speaker 00: We are pleased to welcome you to the court. [00:01:33] Speaker 00: And if you will stand. [00:01:37] Speaker 00: Raise your right hand. [00:01:43] Speaker 01: Do you solemnly swear or affirm that you will comport yourself as an attorney and counselor of this court, uprightly and according to law, and that you will support the Constitution of the United States of America? [00:01:56] Speaker 01: I do. [00:01:57] Speaker 01: Congratulations. [00:01:58] Speaker 01: Welcome to the bar of the U.S. [00:02:01] Speaker 01: Court of Appeals for the Federal Circuit. [00:02:05] Speaker 04: Thank you. [00:02:07] Speaker 04: OK, now it's time to begin. [00:02:09] Speaker 04: The first two cases, I understand, counsel, you have been told that we think we can combine these cases. [00:02:15] Speaker 04: So you'll have 20 minutes aside. [00:02:17] Speaker 04: Certainly, if we think that there are issues that we need to pursue more, we can continue. [00:02:22] Speaker 04: But we'll just combine them rather than jump back and forth. [00:02:26] Speaker 04: And I understand that that means that you want to preserve five minutes for rebuttal. [00:02:31] Speaker 04: Is that right? [00:02:32] Speaker ?: OK. [00:02:33] Speaker 04: Mr. Holloway, would you like to begin? [00:02:44] Speaker 05: May it please the court? [00:02:45] Speaker 05: We now are looking at two appeals dealing with a related to patents, the 707 patent and the 437 patent. [00:02:54] Speaker 05: Both of these appeals come from interparties re-exams and both concern errors that were committed by the examiner and the PTAB in finding anticipation of certain claims in both of these patents. [00:03:07] Speaker 05: I'm going to begin with the 437 patent. [00:03:10] Speaker 05: The error committed by the examiner and the PTAB below is one of the claim construction concerning the term calculating directly. [00:03:19] Speaker 05: And what's most important about the error in the broadest reasonable interpretation as found in this case is that it's 180 degrees from the interpretation of the term given in the organic prosecution. [00:03:33] Speaker 05: And I'll begin by laying out the fundamental terms of this claim and identifying where that turnaround occurred. [00:03:40] Speaker 04: So it's your contention, as I understand it, that it's not really a question of that there's any intermediate step as it relates to a changing of the raw data. [00:03:53] Speaker 04: It's that you're doing this. [00:03:54] Speaker 04: you're determining whether it's a resting or an active algorithm first. [00:03:58] Speaker 04: And that's what makes it indirect? [00:04:00] Speaker 05: So as it turns to the Amano reference, you're not performing a calculation step with the two values of the claimed, expressly claimed parameters. [00:04:12] Speaker 05: So in essence, what's claimed by the calculating directly term [00:04:17] Speaker 05: And what was described in the original prosecution and the way it was applied by the examiner, you have two values. [00:04:24] Speaker 05: A first physiological parameter that's generated in claim 32. [00:04:29] Speaker 05: a second physiological parameter that's generated in claim 32, and then a calculation step that involves those two values. [00:04:36] Speaker 05: And that's where the distinction occurs, because in a mono, there is no second value that's used in the calculation step. [00:04:43] Speaker 05: It's a condition that's put on the system to decide whether and when to perform a given equation with one data value. [00:04:52] Speaker 03: So it's your position, just to make sure I think I understand exactly what you're saying. [00:04:56] Speaker 03: But you're saying that because the claim says directly from said first and second parameters, that should be read as meaning that it means something like using the first and second parameters as variables. [00:05:09] Speaker 05: Yes, I mean, that's exactly right. [00:05:11] Speaker 05: I mean, calculating directly from the two parameters is you're performing a mathematical step. [00:05:16] Speaker 05: There's no dispute about mathematics. [00:05:17] Speaker 05: The calculation term isn't the issue, right? [00:05:19] Speaker 05: Calculation, both sides seem to agree, is a mathematical process. [00:05:23] Speaker 05: What directly means, as it modifies calculating, is the how. [00:05:28] Speaker 05: So there's been a lot of talk in the appeal briefs here and below that there's no algorithm set forth in claim 32, and there's no specific formula given in the specification. [00:05:37] Speaker 05: And that's true, which makes claim 32 broad. [00:05:41] Speaker 05: But it's not overly broad because it is limited. [00:05:44] Speaker 05: It directly modifies calculating as to how. [00:05:47] Speaker 05: How do you calculate from the two claimed parameters of first and second parameters? [00:05:52] Speaker 03: But why isn't it directed to use one of them to pick an algorithm and the other one is in the algorithm? [00:05:58] Speaker 05: So that gets back to what happened in the organic prosecution, right? [00:06:02] Speaker 05: So in the organic prosecution, that's exactly the same piece of prior art construct that was put before the examiner. [00:06:08] Speaker 05: You had a variable that let you know whether or not you were in motion. [00:06:12] Speaker 05: And then the second one actually was performed, the regression calculation, in the original file history. [00:06:19] Speaker 05: And the examiner correctly concluded that's not directly, that's not a value. [00:06:23] Speaker 05: That use of that second parameter decides when to do the calculation and how to do the calculation. [00:06:28] Speaker 05: But it's not part of the calculation step. [00:06:31] Speaker 05: And previously, as part of the organic prosecution, that's exactly what the applicant said about the term, about the calculating from statement, about the limitation to the claim. [00:06:44] Speaker 00: But isn't it true that there [00:06:49] Speaker 00: The calculation is the result of two factors, that there's the selection of the algorithm and then the actual calculation done by the algorithm. [00:07:02] Speaker 00: So both parameters have an effect on the ultimate value, correct? [00:07:11] Speaker 05: I would agree that it has an effect on the ultimate value, but that's not a direct calculation. [00:07:15] Speaker 05: I mean, at what point in time does that any stop? [00:07:20] Speaker 00: alters that calculation, or interferes with that calculation, or adjusts that calculation. [00:07:25] Speaker 00: There's no intermediate input. [00:07:29] Speaker 00: In other words, the calculation is what the calculation is from those two parameters invariably. [00:07:36] Speaker 05: So ultimately, that's probably correct. [00:07:38] Speaker 05: Your first step is you choose which formula to use. [00:07:41] Speaker 05: The second is you input the actual physiological parameter that was obtained into the calculation that was selected, and then math is done. [00:07:49] Speaker 00: So that whatever those two parameters are will result in a single calculated result. [00:08:01] Speaker 05: Yes and no. [00:08:02] Speaker 05: I mean, so it does depend. [00:08:04] Speaker 05: So the first one's not really a value, right? [00:08:06] Speaker 05: It's whether there's motion or not. [00:08:08] Speaker 05: That doesn't go into the calculation step. [00:08:09] Speaker 05: That then picks which equation we use. [00:08:12] Speaker 00: But it is a parameter, isn't it? [00:08:13] Speaker 00: I mean, we're talking now broadest reasonable interpretation. [00:08:17] Speaker 05: I understand, but it's not a value. [00:08:20] Speaker 05: And so it is a parameter. [00:08:21] Speaker 05: But when you look at the construct of the claims, it's not obtaining that the motion sensor isn't, for example, the motion sensor isn't just saying yes or no to motion. [00:08:31] Speaker 05: It's saying things like how fast is your heart beating or what your body temperature is. [00:08:35] Speaker 05: Then there's a value obtained from that. [00:08:37] Speaker 05: That's what's described in the specification. [00:08:39] Speaker 05: And then there's math done to that. [00:08:41] Speaker 05: And those two values are what gets put into the equation that gets performed. [00:08:45] Speaker 05: That's why the claim says calculating directly from the first and second parameter. [00:08:50] Speaker 05: It's not just you obtain a piece of data, you obtain another piece of data, we'll do some stuff to the data, and then ultimately we'll do a calculation. [00:08:57] Speaker 05: It's very specific. [00:08:58] Speaker 05: It lays out you generate a first physiological parameter, you generate a second physiological parameter, and then you do math to them. [00:09:04] Speaker 04: But there's nothing in the specification itself of the 437 that actually sets out any mathematical formula that shows what you characterize as a direct calculation. [00:09:16] Speaker 05: There is no formula that is correct. [00:09:17] Speaker 05: But the 437 patent does lay out that you can perform these quantitative status information calculations using a variety of pieces of information. [00:09:26] Speaker 05: So for example, at column 14, it lists off that you can use [00:09:34] Speaker 05: Should I get the right path? [00:09:36] Speaker 05: OK, so 437, column 14. [00:09:38] Speaker 05: If you go down to lines 45 through 53, it describes the various types of information that can be used in a qualitative status information calculation. [00:09:51] Speaker 05: That includes the data indicative of various physiological parameters generated by the user device. [00:10:00] Speaker 05: That's exactly the first and second parameter that are described in claim 32. [00:10:04] Speaker 05: Then you have the data derived from the data indicative of various physiological parameters. [00:10:10] Speaker 05: That's actually more relevant to the other patent, but it's still an example of not just the generated data, but something we've done to the data. [00:10:17] Speaker 05: So back to Judge Lin's question. [00:10:19] Speaker 05: So let's say I do have a sensor in a mono that lets me know if I'm moving or not. [00:10:24] Speaker 05: It then says, OK, you're moving or not. [00:10:26] Speaker 05: That's actually more of a derived physiological parameter. [00:10:29] Speaker 05: It's made a decision about motion and then selected an equation. [00:10:33] Speaker 05: Then it sticks in. [00:10:34] Speaker 05: a derived, or I'm sorry, a generated physiological parameter that are the first and second parameters of the claim. [00:10:42] Speaker 05: It goes on to list a couple others that are more relevant to the 707 than the 437 patent. [00:10:47] Speaker 05: So back to your question, Judge Amali. [00:10:49] Speaker 05: No, there's no specific formula given in the 437. [00:10:52] Speaker 05: But the specification describes a host of inputs that could go into a qualitative status information calculation. [00:11:00] Speaker 05: The claim is then more specific. [00:11:02] Speaker 05: The claim then gets to the how. [00:11:04] Speaker 05: Calculate directly from the two parameters that are expressed in the claim. [00:11:08] Speaker 04: But what the board said is directly from means that there's no actual change to the physiological data. [00:11:15] Speaker 05: Well, there's no point to point. [00:11:18] Speaker 05: The definition that they've used is that point to point without deviation. [00:11:21] Speaker 05: And they've kind of changed that. [00:11:23] Speaker 05: The way they've kind of interpreted that definition is to say you're not really manipulating the data any further. [00:11:30] Speaker 05: And respectfully, I don't think that really matters. [00:11:33] Speaker 05: At this point, we've left calculating directly. [00:11:36] Speaker 05: And we're trying to figure out how much wiggle room we can give to what happens to two pieces of data to then fit it back into calculating directly. [00:11:45] Speaker 03: Calculating is a pretty broad word. [00:11:48] Speaker 03: Calculating doesn't mean there's one formula. [00:11:50] Speaker 05: No, it's a mathematical process. [00:11:52] Speaker 05: I agree with that. [00:11:52] Speaker 05: That's why there's no real dispute on the calculation term. [00:11:55] Speaker 05: I mean, we all kind of agree that's just the math process. [00:11:57] Speaker 05: But the how, which is directly, is a limiting term. [00:12:01] Speaker 05: I mean, so when you go back to even before the term directly was added to the claim, if you look at how the applicants in the original prosecution described it, [00:12:09] Speaker 05: They were talking about this step and said that the essence of the above limitation, that's the calculating quantitative status information step, is a calculating step wherein the inputs to the calculation are the first and second parameter. [00:12:23] Speaker 05: And that's an A1765. [00:12:24] Speaker 05: And that was persuasive to the original examiner. [00:12:30] Speaker 05: The examiner looked at the original Amano reference, which I will agree is not the same, but I would put forward that the nuances between [00:12:37] Speaker 05: what we've called a mono one and a mono two have no import here it's really [00:12:41] Speaker 05: both of them get down to the same thing. [00:12:44] Speaker 05: Two pieces of data, one that's used to pick an equation, and the other that's actually used in the math. [00:12:49] Speaker 05: So in that instance, they're talking about the same thing. [00:12:51] Speaker 05: And the examiner's logic in the organic prosecution was that's not calculating directly. [00:12:57] Speaker 03: But that's not binding, right? [00:12:58] Speaker 03: I mean, I understand your argument. [00:13:00] Speaker 03: Your argument is that there was some good logic in the original prosecution, and it should apply continuing. [00:13:05] Speaker 03: But it's certainly not binding on a later re-exam. [00:13:08] Speaker 05: I would agree that it's not binding on a later re-exam. [00:13:10] Speaker 05: But I do think we're having kind of an interesting thing created now with inter partes re-exams, inter partes review, and even ex parte re-exam. [00:13:18] Speaker 05: When we're talking about this broadest reasonable interpretation construction, and we've got a construction that went through in the original prosecution, I can understand in a later re-exam we come back and we say, OK, you didn't get it exactly right. [00:13:30] Speaker 05: Here's this other piece of prior art that's even closer than we had before. [00:13:34] Speaker 05: And so there might be some tweaks necessary to the original interpretation to make sure that the office got it right. [00:13:40] Speaker 05: But to me, this is a 180-degree shift. [00:13:42] Speaker 05: The exact logic on the exact claim term has been decided was completely wrong. [00:13:48] Speaker 05: And the office below, neither the examiner nor the PTAB and the requester, no one explained why the original application wasn't the broadest reasonable interpretation. [00:13:58] Speaker 05: They keep saying it's not the broadest. [00:14:00] Speaker 05: But no one's explaining why that was an unreasonable interpretation. [00:14:06] Speaker 05: Instead, we've come forward and said the current application is broader. [00:14:10] Speaker 05: I'll give you that. [00:14:11] Speaker 05: But it's not reasonable in light of what's described in the claim specifically and how it should be applied based on what was done in the original prosecution. [00:14:21] Speaker 05: The other thing I would like to point out is that claim differentiation was raised by the requester. [00:14:27] Speaker 03: Can I ask you just one more question? [00:14:29] Speaker 03: This is on the reference you have on A 1765. [00:14:32] Speaker 03: That's the page that you just cited to us for the original prosecution. [00:14:37] Speaker 03: I mean, it says the essence of the limitation is a calculating step where the inputs to the calculation are the first parameter and the second parameter. [00:14:45] Speaker 03: That's what you're relying on? [00:14:46] Speaker 03: Is it that language that you're relying on for your claim construction? [00:14:50] Speaker 05: A 1765, yes ma'am, the essence of the above limitation is a calculating step wherein the inputs of the calculation are the first parameter and the second parameter. [00:14:58] Speaker 05: And then if you look at what the examiner, the actual words the examiner used when describing why it overcame the Amano 1 reference, talks about how, sorry let me just find that real quick, the original examiner used the term [00:15:18] Speaker 05: This is at A2481 of the record. [00:15:21] Speaker 05: The examiner says, Amano teaches that the second parameter motion is only used to determine whether and when the calculation is performed. [00:15:30] Speaker 05: Therefore, the second parameter motion does not render a value that is used in the calculation. [00:15:35] Speaker 05: And I think when you read A2481, [00:15:39] Speaker 05: and A1765 together, the language there is very similar. [00:15:44] Speaker 05: And then the examiner said value. [00:15:46] Speaker 05: And I think that's where the distinction occurs between the way body media is reading the patent, the patent owner is reading it, and the requester and the current stance of the office, is that you have a calculating step where the inputs are the two values that are expressly claimed in the claim, the first and second physiological parameter. [00:16:05] Speaker 05: I think the claim differentiation point that Requester made actually goes the other way than Requester thinks it should. [00:16:13] Speaker 05: Claim 51 adds another step to the calculation, adds another variable to the calculation. [00:16:21] Speaker 05: It says, take the original calculation that's being done using the first and second parameter. [00:16:26] Speaker 05: And then you add in where the list of input values include, I'm sorry, claim 51 then further limits it and includes a calculation to add a derived data input. [00:16:38] Speaker 05: So back to that list that we talked about in column 14, there are now three input variables required in claim 51. [00:16:45] Speaker 05: The two physiological parameters and a derived physiological parameter. [00:16:51] Speaker 05: So I think that goes even further to suggest that any kind of derivation step [00:16:57] Speaker 05: that would happen before the calculation that occurs in claim 32 is different. [00:17:03] Speaker 05: That's what happens later in claim 51. [00:17:06] Speaker 04: Well, in fact, that's what the board said, did it not? [00:17:08] Speaker 04: That there really is no derivation that's occurring. [00:17:12] Speaker 04: I mean, the choosing of the algorithm is not the same as a derivation of the raw physiological data. [00:17:19] Speaker 05: The board goes on to say that what they mean by point to point without deviation is that there's no significant inference being done, and that's at page A7 of the record in the PTABS decision. [00:17:35] Speaker 05: The selection of a condition precedent on an equation is kind of the quintessential inference. [00:17:41] Speaker 05: I've made a decision that the person's in motion or not. [00:17:43] Speaker 05: That's an inference. [00:17:44] Speaker 05: That's a derived data parameter. [00:17:46] Speaker 05: I then go on and perform a calculation using that equation on a piece of data that I generated somewhere else. [00:17:52] Speaker 05: I mean, just using the PTAB's own explanations for why directly can include some level of indirect kind of emphasizes the point that [00:18:02] Speaker 05: All of the things that are being done in OMANO preceding the actual caloric expenditure calculation are inference steps that are being performed. [00:18:09] Speaker 04: OK, we're moving into your rebuttal time. [00:18:11] Speaker 04: I'll restore some of it, but I want to hear what you have to say about the 707. [00:18:15] Speaker 05: OK, on the 707, the issue here is not a claim construction issue, unlike the 437. [00:18:21] Speaker 05: This is a fundamental failure of evidence in the record that the output indicators that are shown to the user [00:18:31] Speaker 05: include the same data that are in the derived physiological parameter, as well as the underlying generated physiological parameter that went into that calculation. [00:18:43] Speaker 05: So in an effort to be quick, a mono is applied below. [00:18:48] Speaker 05: Pulse rate is the first physiological parameter. [00:18:50] Speaker 05: Body temperature is the second physiological parameter. [00:18:53] Speaker 05: And caloric expenditure is the derived physiological parameter. [00:18:56] Speaker 05: There is no evidence that the output in the record, there is no evidence that the output in a mono of caloric expenditure is based on the data that was generated for body temperature or heart rate. [00:19:09] Speaker 05: Just looking at figures 19 and 37 shows this. [00:19:12] Speaker 05: They have different numbers of data points. [00:19:15] Speaker 05: The scale for caloric expenditures is kilocalories per day. [00:19:19] Speaker 05: The scale for body temperature is just over time. [00:19:23] Speaker 05: Nowhere in the Amano reference does it say the same body temperature that generated this caloric expenditure data is shown to the user. [00:19:32] Speaker 04: In fact... But you're saying that they have to be shown to the user at the same time or on the same screen. [00:19:37] Speaker 05: No ma'am, that was argued below. [00:19:39] Speaker 05: And I would agree that the simultaneous versus non-simultaneous aspect was an element of claim construction that we put forward below. [00:19:45] Speaker 05: Even assuming non-simultaneous use. [00:19:49] Speaker 05: There is nothing that says the data in 37 of body temperature is the body temperature data that generated the caloric expenditure in figure 19. [00:19:58] Speaker 05: And that's the problem. [00:19:59] Speaker 05: You have to be able to link the data between the two outputs, whether they're shown at the same time or not. [00:20:06] Speaker 05: And in fact, Amano teaches you it's probably not the same data. [00:20:10] Speaker 05: And I emphasize probably because nowhere below did anyone say this was inherent. [00:20:15] Speaker 05: No one said below that there was some level of inherency that, yes, automatically the body data shown in 37 must be 19. [00:20:22] Speaker 05: Because that would require you to show that it was necessarily the case. [00:20:26] Speaker 05: And no one did that. [00:20:27] Speaker 05: Instead, if you look at how the kilocalor, I'm sorry, if you look at how body temperature is done in the Amano reference in relation to what gets generated in figure 37, [00:20:40] Speaker 05: I would point the court to A197, which is the Amano reference, at 24, column 24, lines 4 through 19. [00:20:48] Speaker 05: It actually talks about switching out of modes in order to collect and display the body temperature data. [00:20:56] Speaker 05: There is no suggestion there that the body temperature data that's being collected in real time, it even talks about when you get into the body temperature mode, it goes from current time forward. [00:21:07] Speaker 05: And then when you're done, you depress switch two and you switch out of body temperature mode and the circuits are released. [00:21:13] Speaker 05: So if you're releasing the circuits, you're not storing the body temperature data, and there's no express reference in a mono that the body temperature data or the pulse rate that are described in a different column that could be displayed to the user, without some statement that that same data, underlying physiological parameter data, is used in the derivation calculation that's ultimately shown in the caloric expenditure data, you can't have anticipation. [00:21:38] Speaker 05: There's just nothing there to support that. [00:21:41] Speaker 04: OK, you better save a little bit of time. [00:21:42] Speaker 05: Yes ma'am. [00:21:53] Speaker 06: May I please record Dave Haddon for basis? [00:21:55] Speaker 06: Let me start with the 437 patent and the calculating directly from it. [00:22:02] Speaker 04: Can I ask, on that, what did the board mean by point to point with no, nothing intervening or no unnecessary step? [00:22:11] Speaker 04: What would be an intervening step? [00:22:13] Speaker 04: Give me an example. [00:22:14] Speaker 06: So I think, and this goes somewhat to the original prosecution. [00:22:19] Speaker 06: So the claim before was amended. [00:22:22] Speaker 06: say calculating whatever it is, dot, dot, dot, from data indicative of a first and second parameter. [00:22:32] Speaker 06: So the idea before the amendment was that the inputs to the calculation did not have to be the measured parameters, but could be some data indicative of them. [00:22:41] Speaker 06: So you can think about something that could be a proxy for your pulse or your body temperature, but is not. [00:22:48] Speaker 06: It's something else that is measured. [00:22:50] Speaker 06: My best understanding what the board said was that that would be you're inferring a parameter like pulse or body temperature from something else that you're actually using in the calculation. [00:23:02] Speaker 06: And that would not be direct. [00:23:05] Speaker 06: That is, I believe, what the board was trying to say when they're talking about a significant inference. [00:23:10] Speaker 06: So you are inferring these parameters rather than using them directly in the calculation. [00:23:17] Speaker 06: But I think none of that matters in a sense, because a mono, as Judge Lind noted, actually clearly uses two measured values in its calculation. [00:23:32] Speaker 06: So figure 17 is a flow chart that shows the calculation of caloric expenditure that is performed every minute in a mono. [00:23:41] Speaker 06: And the inputs to that calculation are the measured body temperature, [00:23:46] Speaker 06: the measured pulse, and the motion sense from the motion sensor. [00:23:51] Speaker 06: And those are actual values. [00:23:53] Speaker 06: They are compared against thresholds to select the regression formula. [00:23:59] Speaker 06: So there is a value for body temperature. [00:24:01] Speaker 06: It's part of a mathematical calculation. [00:24:04] Speaker 06: It's compared against a stored threshold value. [00:24:07] Speaker 04: Aren't you ultimately inferring or deriving an inference from your conclusion as to whether you're at a moving or a resting state? [00:24:15] Speaker 06: Part of the calculation is trying to figure out where you are on this curve in a mono that plots calories versus pulse rate. [00:24:25] Speaker 06: And the slope of that curve varies based on whether you're active or not. [00:24:30] Speaker 06: So in a sense, a mono is inferring or using some information, the measured information, to figure out whether you're moving or not. [00:24:39] Speaker 06: But the calculation doesn't infer anything. [00:24:41] Speaker 06: The calculation takes the measured pulse [00:24:44] Speaker 06: the measured body temperature and the measured motion feeds it into an algorithm and outputs a caloric value that depends on each of those parameters at each minute. [00:24:55] Speaker 06: And then those values are stored and summed and provided to the user. [00:25:00] Speaker 06: So there's no dispute. [00:25:04] Speaker 03: algorithm that is used in a mono uses both the first and second parameters? [00:25:09] Speaker 06: Yes. [00:25:10] Speaker 06: So the algorithm is figure 17, which... The whole thing. [00:25:15] Speaker 03: Yeah, the whole thing. [00:25:16] Speaker 06: Because every minute you're running that algorithm. [00:25:19] Speaker 06: So every minute you're taking a measured body temperature. [00:25:22] Speaker 03: I understand it. [00:25:23] Speaker 06: I thought you were saying that... No, once you get a regression formula, the regression formula... I thought you were saying the regression formula used all of the... No, the regression formula in a mono uses pulse. [00:25:34] Speaker 06: But you're picking a different regression formula every minute based on the other values. [00:25:40] Speaker 06: And as we explained in our briefing, you can rewrite that algorithm as a single formula with three variables. [00:25:48] Speaker 06: It's just a different representation of the same calculation. [00:25:52] Speaker 06: But it will always depend on the values of these measured parameters. [00:25:56] Speaker 04: Now, you would concede that there is no actual teaching [00:26:03] Speaker 04: from either of the references that a GSR sensor would be used to calculate calories. [00:26:10] Speaker 06: I agree, and there's no actual teaching in the teller patents, the quality media patents, in using GSR sensors to calculate calories. [00:26:20] Speaker 06: The only use of GSR in the patents themselves, so there's a list, table two, that shows sort of calculated parameters and the relevant sensors that you could use. [00:26:31] Speaker 06: And GSR is not listed among the sensors that you would use to calculate calories. [00:26:36] Speaker 06: And there's no description of using GSR in these patents to calculate calories. [00:26:42] Speaker 06: The only description for calculating calories in the patents is [00:26:46] Speaker 06: says you can use heat flux times time times some factor, or you could use motion times time times some factor. [00:26:54] Speaker 06: So there's no description of using GSR at all to calculate calories. [00:26:58] Speaker 06: But in Amano and Milimaki, what the board relied on was not using GSR alone to calculate calories. [00:27:08] Speaker 06: All the board said was, look, Amano has this [00:27:12] Speaker 06: algorithm where it selects a regression formula based on whether the user is active or at rest. [00:27:19] Speaker 06: Milimaki has all the same sensors as Amano, plus GSR. [00:27:24] Speaker 06: Milimaki says, look at lots of different sensors to get a better, more accurate determination of the user's condition. [00:27:32] Speaker 06: The board says, sure. [00:27:33] Speaker 06: GSR measures sweat. [00:27:35] Speaker 06: Sweat is an indication of physical activity. [00:27:38] Speaker 06: it would be useful to have that additional indication of physical activity along with body temperature and pulse in a mono to more accurately pick the right regression formula. [00:27:49] Speaker 06: That's all the board's logic was, and it makes perfect sense. [00:27:52] Speaker 06: I mean, it's common sense that sweat is an indication of exercise. [00:27:56] Speaker 06: That's how it would be used in a mono combination. [00:28:01] Speaker 06: Let me just address one other thing on the calculating directly from. [00:28:06] Speaker 06: There's a lot of statements about somehow what the PTAB did was inconsistent with the original prosecution. [00:28:15] Speaker 06: And that's just not true. [00:28:16] Speaker 06: There's actually nothing in the original prosecution that addresses this calculated directly language. [00:28:24] Speaker 06: So there are parallel claims. [00:28:26] Speaker 06: Claim one says calculated from without the directly. [00:28:30] Speaker 06: And so in the appeal that went up to the PTAB in the original calculation, the board actually relied on claim one. [00:28:39] Speaker 06: They did not have the directly language as the exemplary claim. [00:28:43] Speaker 06: So there was never any discussion of this directly word that was added to one claim and not the other. [00:28:50] Speaker 06: And so the distinction of amano two, they call it, which is a completely different patent than this amano, the amano we are focusing on, [00:28:59] Speaker 06: was not before the examiner and the original prosecution. [00:29:06] Speaker 06: It was actually dumped in an IDS after the notice of allowance. [00:29:10] Speaker 06: So it was never considered. [00:29:12] Speaker 06: But the Amano II patent did not calculate calories from multiple measure parameters. [00:29:19] Speaker 03: So you're saying that the page Mr. Holloway was citing earlier was not the same plan language? [00:29:24] Speaker 06: No, it was not. [00:29:25] Speaker 06: And just to be clear, that amount of reference, the different one, what it did was it would use the accelerometer to know that you're moving too much so we can't accurately measure your pulse wave. [00:29:38] Speaker 06: So it would disable that measurement. [00:29:42] Speaker 06: The other thing it would do is it would say, OK, you're moving a lot. [00:29:46] Speaker 06: You're now in an exercise period. [00:29:48] Speaker 06: We can start trying to calculate your calories. [00:29:51] Speaker 06: But it didn't use body temperature, and it didn't use [00:29:55] Speaker 06: motion as part of the calculation. [00:29:58] Speaker 06: It would just say turn on, turn off based on motion. [00:30:01] Speaker 06: So it was a completely different reference and algorithm than is used in the Amano reference at issue here, which does use the actual measured value in the calculation. [00:30:12] Speaker 06: And that's the big advantage, and Amano talks about it, that it is more accurate than prior methods that used only pulse. [00:30:22] Speaker 06: Because you may have a high pulse due to stress or other factors, [00:30:25] Speaker 06: And it was useful to look at other measured parameters to determine what the cause of the pulse was, to know where on that curve to map you to calculate calories. [00:30:40] Speaker 06: So that is the main issue on 2707. [00:30:46] Speaker 06: A mono 17 is a mathematical calculation. [00:30:49] Speaker 06: It uses the two parameters. [00:30:52] Speaker 06: Body media can't now come in and say that that calculation is somehow not good enough or not direct enough when their own patent doesn't have any calculation at all. [00:31:03] Speaker 06: There is no formula or calculation of calories using multiple parameters that is described in the body media patent at all. [00:31:13] Speaker 06: So you can't come in and say your calculation is not direct enough somehow and this claim requires a specific [00:31:20] Speaker 06: two variable formula or something when there's no such formula in their own patent. [00:31:28] Speaker 06: On the second issue on the 437 patent, there's kind of two points to this. [00:31:37] Speaker 06: The first is their claim construction argument is that the data that has to be presented in relation to the calculated data [00:31:48] Speaker 06: must be the exact set of data points of the measured parameter that we used in the calculation. [00:31:56] Speaker 06: And that's just not what the claim says. [00:31:58] Speaker 06: So if you look at the claim, which is on A4 in the P tab. [00:32:06] Speaker 04: But wouldn't that logically flow from the use of the word directly from said first and second parameters? [00:32:12] Speaker 06: I'm sorry. [00:32:12] Speaker 06: I was moving to the other pattern. [00:32:14] Speaker 06: Oh, the 707. [00:32:15] Speaker 06: Yeah, the 707. [00:32:16] Speaker 06: If you have more questions on the fourth [00:32:18] Speaker 06: Okay, okay. [00:32:20] Speaker 02: So this is in relation to? [00:32:23] Speaker 06: Yeah, this is the in relation to part. [00:32:25] Speaker 06: And so in A4 of the joint appendix on the 707, there's the claim, and the claim [00:32:37] Speaker 06: So it requires this presenting said data indicative of said first physiological parameter of the individual. [00:32:48] Speaker 06: And there's no dispute that the antecedent basis for said data indicative of said first physiological parameter is the clause up at the beginning of the claim that says a first sensor adapted to generate data indicative of a first physiological parameter. [00:33:06] Speaker 06: So all that refers to is data that comes from the first sensor. [00:33:13] Speaker 06: Now, the claim also requires using that data or data from that sensor to derive another parameter. [00:33:23] Speaker 06: But there's nothing in the claim that requires that the exact data points that are displayed are the data points used to derive the derived parameter. [00:33:33] Speaker 06: That's just not what the claim says. [00:33:35] Speaker 06: And there's no support for such a limitation in the 707 patent itself. [00:33:41] Speaker 06: Because again, the 707 patent doesn't have any calculation of a derived parameter from anything, much less two parameters. [00:33:51] Speaker 06: Now what they point to in their briefing is figure nine. [00:34:00] Speaker 06: Let me see if I can find it. [00:34:06] Speaker 06: which is on page, it's 829. [00:34:14] Speaker 06: So what they point to for this display in relation to Figure 9, and Figure 9 shows this bar graph, 315, which the patent explains is a measured heat flux. [00:34:27] Speaker 06: And then there is this squiggly line motion, and the patent explains that that is some detected motion from a motion sensor. [00:34:37] Speaker 06: But what they point to as the derived parameter is this little squiggly line 210 with the 4 next to it. [00:34:44] Speaker 06: But what the patent actually says is that is a sleep, sort of a qualitative indicator that is provided by the user. [00:34:52] Speaker 06: So there's nothing shown here that is calculated from either the heat flux or the motion, and nothing in particular that is calculated from those in combination, as this claim would require. [00:35:05] Speaker 04: And there's certainly nothing that says... [00:35:11] Speaker 04: point that your friend on the other side is making is that, you know, we're trying to show you how your heat data on your skin or whatever it is will then give us information about your caloric expenditure or about your sleep patterns or whatever. [00:35:30] Speaker 04: I mean, isn't that the point that there's some effort to show the user the relationship between the two? [00:35:38] Speaker 06: That's what the claim says. [00:35:40] Speaker 06: All I'm saying is that there's nothing in their patent that would support the notion that to give that relationship you would have to use exactly the same data points, right? [00:35:50] Speaker 06: So think about a system where it samples your body temperature every second and maybe uses the odd samples to calculate your calories and the even samples it displays to you as an indication of your body temperature. [00:36:03] Speaker 06: They would say that is excluded from this claim under their construction. [00:36:07] Speaker 06: There's just no basis for that, right? [00:36:09] Speaker 06: There's nothing in their claim or in their patent that describes that sort of narrow requirement. [00:36:15] Speaker 06: But let me go to Amano, because I think, in a sense, none of this matters. [00:36:19] Speaker 06: Because Amano, again, describes exactly what they're saying is required. [00:36:24] Speaker 06: Amano stores your body temperature, your pulse rate, your motion, and your calculated calories as a time series [00:36:35] Speaker 06: and stores it in RAM and then reads it out and plots it as a graph shown on figure 19 as a function of time. [00:36:45] Speaker 06: Now they make hay by saying that figure 19 shows a day and figure 37 shows an hour. [00:36:53] Speaker 06: But Amano explicitly says that the user can set that interval to be an hour in figure 19. [00:36:59] Speaker 06: So the user can set the device to show [00:37:03] Speaker 06: what their calories burned were for the last hour while they were exercising. [00:37:07] Speaker 06: They hit another button and it toggles and it displays the body temperature measurements for that same last hour. [00:37:14] Speaker 06: That's what Amano describes. [00:37:15] Speaker 06: And Amano describes that it does this in part to show the user or the coach exactly that underlying data so that they can see the relationship. [00:37:26] Speaker 06: And it says also that, in fact, [00:37:29] Speaker 04: and this is later in Column 28, Amano describes that it can actually store and does store the measured body temperature and the measured motion and the measured pulse as a function of... But it's one thing to store them and it's one thing to even calculate from them, but isn't the point of this patent that you not only calculate from them, but you then display it to the user so the user can understand and appreciate the relationship between the two? [00:37:59] Speaker 06: Yes, Your Honor. [00:38:01] Speaker 04: And how does that happen in Omano? [00:38:03] Speaker 06: So Omano describes, let me find the right spot, but Omano describes first that the body temperature data that is used in the calculation of calories is the same body temperature data that is displayed to the user. [00:38:19] Speaker 06: So if we look at the... [00:38:55] Speaker 06: So Mano describes, and I'll find this for you. [00:39:11] Speaker 06: So column 23, Your Honor, this is A197. [00:39:15] Speaker 06: Mono says that under the heading deep body temperature and process result thereof. [00:39:22] Speaker 06: It says in addition to being employed in the calculation of caloric expenditure. [00:39:28] Speaker 00: What line are you on? [00:39:29] Speaker 00: I'm sorry. [00:39:29] Speaker 00: Which one? [00:39:29] Speaker 00: I'm sorry. [00:39:30] Speaker 06: This is con 23 line around 13. [00:39:34] Speaker 06: In addition to being employed in the calculation of caloric expenditure, the body temperature, which is sufficiently close to the subject's deep body temperature, is measured in this embodiment. [00:39:43] Speaker 06: So it's saying that the body temperature that is used in the calculation is the same one that they're describing here in the body temperature measurement section. [00:39:52] Speaker 06: And then if you go up to column 24, line 4, it says when the subject wants to know the change in body temperature over time, you may depress the switch SW2 to select that function. [00:40:05] Speaker 06: As a result, the CPU reads out from RAM 203 the measured body temperature values in the time of measurement. [00:40:12] Speaker 06: Now, if we go back to the section of Amano that is talking about calorie calculation, it says, and this is in column 22, line 13, it says, in this case, it is also acceptable to provide a design in which the body motion detected by the body motion detector 101 means body temperature detected by body temperature detector 101. [00:40:38] Speaker 06: And the pulse rate detected in pulse rate calculator 114 [00:40:42] Speaker 06: or stored in RAM 203 in a time series. [00:40:46] Speaker 06: So this is the same RAM in the same time series where these values that are measured that are used in the calorie calculation are stored. [00:40:55] Speaker 06: And then when the user wants to display them as part of the body temperature, they go and switch this switch SW2, which will display them as the function of time. [00:41:06] Speaker 06: And to be clear, right? [00:41:18] Speaker 06: In the calorie calculation, which is the figure 19, and this is a column 19, line 31, it notes that the specific time interval in the example is day. [00:41:35] Speaker 06: But above that, at line 23, column 19, this is at A195, it says the CPU carries out control so that a two-dimensional display [00:41:48] Speaker 06: by sequentially plotting the readout, some values in the y-axis, and the time interval in the x-axis. [00:41:56] Speaker 06: And it says that the user can select the interval. [00:42:00] Speaker 06: And selecting the interval, I'm sorry, is higher up in column 19 at line 10. [00:42:04] Speaker 06: If hours selected the specific time interval, then the calorie expenditure in one hour is calculated. [00:42:11] Speaker 06: So that's the same one hour period that's shown for body temperature in column 37. [00:42:18] Speaker 06: So Amano explicitly describes that the same measurements that are stored in RAM that are used to calculate calories can also be output as a time series and displayed during that same hour interval period. [00:42:34] Speaker 04: What's your response to the argument that this whole notion that it is a question of they can be in relation to each other over time is a new ground of rejection? [00:42:47] Speaker 06: It isn't a new ground, Your Honor. [00:42:51] Speaker 06: The PTAB actually quoted from and adopted the examiner's rationale as part of their order. [00:42:59] Speaker 06: And in addition, and I can find this site, body media responded to this argument at oral argument and acknowledged that it was an argument made by the examiner. [00:43:18] Speaker 06: This is at A886, and this is from the transcript of the hearing before the PTAB. [00:43:26] Speaker 06: And it actually begins on A85, where Judge Jeffrey is asking body media's counsel about this point. [00:43:34] Speaker 06: And it says, beginning at the bottom of A85, the values are plotted with respect to time. [00:43:41] Speaker 06: And that way they're plotted indicates that it's a time-based indication, and so the presentation [00:43:47] Speaker 06: of that indication with respect to time in relation to other presentations with respect to the time element. [00:43:53] Speaker 06: So he's explaining this point that because they're both shown with respect to time, aren't they being related? [00:43:59] Speaker 06: And Mr. Preventa by the media's counsel goes on and says, that argument has been made by the respondent and by the examiner. [00:44:08] Speaker 06: And then he goes on and tries to address that argument by saying that time is not a physiological parameter. [00:44:14] Speaker 06: So this is not a new argument. [00:44:17] Speaker 06: The examiner raised it. [00:44:19] Speaker 06: Body media's counsel responded to it and acknowledged that the examiner had raised it at the overarching. [00:44:33] Speaker 04: OK. [00:44:33] Speaker 04: I think your time is up. [00:44:34] Speaker 04: We'll give you four minutes for a rebuttal. [00:44:44] Speaker 04: Can you answer that last point first? [00:44:45] Speaker 05: Yes, ma'am. [00:44:46] Speaker 05: What counsel is pointing to in the oral argument is evidence that somehow we were acknowledging that this over time linkage, where if you simply say caloric expenditure over time and body temperature over time, the denominator is both times, so therefore the claimantation is met. [00:45:09] Speaker 05: I mean, the way I read this is Mr. Prevento was loose with the language in terms of responding. [00:45:14] Speaker 05: Counsel can't point to an actual rejection [00:45:17] Speaker 05: or PTAB argument in a brief in which they're actually laying out this overtime. [00:45:22] Speaker 05: The first time you see that argument presented by the board is at A6 in the decision. [00:45:28] Speaker 05: So I can't explain Mr. Profento's words, but when you read this context, he says this wasn't an issue in the re-exam, the question of whether this overtime thing wasn't an issue with the re-exam. [00:45:39] Speaker 05: He says that at [00:45:44] Speaker 05: I believe it's at A87 or A88. [00:45:49] Speaker 02: He specifically says that this is an issue that was raised, right? [00:45:54] Speaker 05: Again, I can't speak to Mr. Prevento's language, but I don't see anything in the office actions or the briefing below to indicate this was actually laid out by the office or the examiner. [00:46:05] Speaker 03: You agree, though, that at a minimum, you just said that it was raised for the first time in the final decision, but it was at least raised, you agree, I think, during the argument. [00:46:14] Speaker 05: Oh, yes, to be fair, Judge Stoll, Judge Jeffrey's question beginning on page 885 is the first time in which the logic of [00:46:23] Speaker 05: caloric expenditure over time, body temperature over time, they're linked by time. [00:46:27] Speaker 05: I would agree that's the first time we heard that. [00:46:30] Speaker 05: And under the new rejection case law, the question is whether the thrust of that was ever made known to us during actual examination. [00:46:36] Speaker 05: And we have before in our briefing, it wasn't. [00:46:39] Speaker 05: I want to address on the 707 patent, counsel's walking through of all these citations to the Amano reference. [00:46:48] Speaker 05: That's not anticipation. [00:46:49] Speaker 05: Anticipation requires that you show all of the claim elements, not only in a single reference, but in the manner assembled. [00:46:56] Speaker 05: So that's the net money in case 545 F3rd and 1369. [00:47:01] Speaker 05: This trying to cobble together a statement that this could be the same data as it is over here is not anticipation. [00:47:08] Speaker 05: You would have to show that the body temperature data that you're showing in figure 37 and the caloric expenditure that you're showing in 19 are the same data. [00:47:18] Speaker 05: And I specifically want to point out that it's not. [00:47:21] Speaker 05: Council indicated to you that column 23 and 24 indicated that they're talking about the same data. [00:47:27] Speaker 05: But he stopped reading in column 24, where it then switches and lets you know that it's not the same data. [00:47:33] Speaker 05: So let's go back to A197, column 24. [00:47:36] Speaker 05: And I won't read all of it. [00:47:38] Speaker 05: It begins when the subject wants to know the change in body temperature, he just presses switch 2. [00:47:42] Speaker 05: And then Council read down to about line number [00:47:48] Speaker 05: 9, okay? [00:47:50] Speaker 05: But if you go back, I'm sorry, about line number 7, but if you keep reading, as a result, this is at line 6, as a result, CPU reads out from RAM the measured temperature values and the time of measurement for a specific portion of time from the current time. [00:48:06] Speaker 05: So, I hit the switch, it starts. [00:48:08] Speaker 05: So that's now. [00:48:09] Speaker 05: So this is what I'm looking at and being collected in this column is temperature data starting now. [00:48:15] Speaker 05: The data that is then converted to a display and sent to the display, that's at lines 10 and 11. [00:48:20] Speaker 05: The next paragraph at 15, when it is no longer necessary to measure body temperature, the subject again presses switch S1 and CPU 201 concludes the processing to measure body temperature and releasing the settings in the watch circuit. [00:48:35] Speaker 05: So when you're done with body temperature, you hit the button and you leave body temperature. [00:48:39] Speaker 05: So Amano has nothing in there that expressly links the body temperature data that's being disclosed in figure 37 and the caloric expenditure data that's being shown in figure 19. [00:48:51] Speaker 05: The claim, as Judge O'Malley pointed out, requires that. [00:48:54] Speaker 05: The display in the claim, the output to the user are indicative of the data of the derived physiological parameter and at least one of the physiological parameters that went into the derivation. [00:49:09] Speaker 05: My time is up. [00:49:10] Speaker 05: Thank you, Your Honors. [00:49:13] Speaker 05: Thank you.