[00:00:00] Speaker 03: We appreciate the cooperation of the parties and as you know we've consolidated case 15-893 and 16-1093 in Ray Hedloy. [00:00:13] Speaker 03: Mr. Sunstein, whenever you're ready. [00:00:21] Speaker 04: Honorable judges, good morning. [00:00:26] Speaker 04: I would like first to address [00:00:30] Speaker 04: 151893, since it's the older of the two. [00:00:36] Speaker 04: The fundamental incongruity, the clash in this case is, on the one hand, the claim requires identifying first contact information without user designation of a specific part of the electronically displayed textual information to be subject to the analyzing. [00:01:00] Speaker 04: And on the other hand, Spencer, the relied upon reference, requires the user to select the contact information before Spencer parses it into separate fields and saves it as a contact. [00:01:16] Speaker 02: So on the one hand, therefore... When you say Spencer requires the selection of the contact information, just using the diagram that we've all [00:01:28] Speaker 02: seen and is used from Spencer, Figure 4, I guess it is. [00:01:32] Speaker 02: Is that the diagram that you regard as being essentially incorporating the heart of what Spencer is? [00:01:41] Speaker 02: You seem resistant to that proposition. [00:01:44] Speaker 04: Your Honor, I'm not so sure that that's really what Spencer is about. [00:01:48] Speaker 02: All I want to lead you off onto a side view. [00:01:52] Speaker 02: That's all right. [00:01:53] Speaker 04: Because it's worth talking about this. [00:01:55] Speaker 04: We spent some time briefing [00:01:58] Speaker 04: The point first raised by the examiner in his answer to the PTAB below. [00:02:06] Speaker 04: And the examiner says, what I'm thinking about, for the first time he says, I'm thinking about the inner box. [00:02:12] Speaker 04: And there's a picture. [00:02:13] Speaker 04: The small box. [00:02:14] Speaker 04: The small box, yeah, the box within. [00:02:17] Speaker 04: And that little box within isn't something that the program started with. [00:02:24] Speaker 04: So the way Spencer works is, I have [00:02:29] Speaker 04: an email say and somebody sends me their updated contact information what I do with Spencer is I might use my mouse Spencer calls it selecting I select that information and then I push a graphical button and it'll save it that's what it's really all about and Spencer tells what's going on there and figure four is part of the processes that go on if you look in figure four it says [00:02:54] Speaker 04: array of field values. [00:02:56] Speaker 02: So the smaller box, I take it, in the Spencer process has been highlighted. [00:03:02] Speaker 02: That's essentially what the reason is that we have this box. [00:03:05] Speaker 04: It's worse than that. [00:03:07] Speaker 04: I began with an email coming in, and Spencer has a little program working on it. [00:03:11] Speaker 04: And I say, OK, I want to invoke this little baby to save my contact information. [00:03:16] Speaker 04: So I select it with my mouse. [00:03:18] Speaker 04: I click it. [00:03:19] Speaker 04: And then the screen starts changing. [00:03:21] Speaker 04: And it adds that little box. [00:03:23] Speaker 04: How do I know this? [00:03:25] Speaker 04: It's laid out in our briefs, and it takes a while to figure out. [00:03:28] Speaker 04: But that little box is where Spencer's showing the intermediate progress, where it's going through figuring out what that contact information is, what the fields are in it. [00:03:38] Speaker 02: But not everything in the smaller box is contact information. [00:03:42] Speaker 04: Yeah, for example, array of field values, which is a label. [00:03:46] Speaker 02: Office hours. [00:03:47] Speaker 02: Office hours is not contact information. [00:03:50] Speaker 02: Right. [00:03:51] Speaker 02: You said initially, well, you select in Spencer, you select the contact information. [00:03:57] Speaker 02: That's correct. [00:03:57] Speaker 02: But you're selecting something that's not exclusively contact information, if I understand it. [00:04:03] Speaker 04: It pretty much, well, the rule of Spencer is, and this is really... Is it all contact information? [00:04:09] Speaker 04: It's all stuff that will be saved as a contact. [00:04:11] Speaker 04: And when you read the fine print in Spencer, everything you select will get processed into the contact. [00:04:18] Speaker 04: There's no exception. [00:04:19] Speaker 04: Spencer thinks and depends on the user to tell it what the contact information is. [00:04:27] Speaker 04: Actually, this is the key. [00:04:28] Speaker 04: This is the real key to Spencer. [00:04:31] Speaker 04: The user has to tell Spencer what the contact information is. [00:04:36] Speaker 04: And on page 18 of the solicitor's brief, the solicitor admits that the user designates the specific part of the text to be analyzed. [00:04:46] Speaker 02: Well, to be analyzed. [00:04:47] Speaker 02: But that doesn't necessarily mean [00:04:49] Speaker 02: that that gets converted into saved contact information unless there's something else that indicates it. [00:04:57] Speaker 02: Careful reading of Spencer. [00:04:58] Speaker 02: What is it about Spencer that tells us that? [00:05:01] Speaker 04: If you read through the reference in detail, and I wish I had more time, but the detail of Spencer says that which has been selected gets parsed, and that which gets parsed gets saved. [00:05:15] Speaker 04: Now, it's true that some things won't get saved. [00:05:18] Speaker 04: For example, [00:05:19] Speaker 04: if it says telephone number. [00:05:22] Speaker 04: That's not going to get saved because it's an indicator that the telephone number goes in a field for telephone numbers. [00:05:27] Speaker 04: Well, what's going to happen to office hours, for example? [00:05:31] Speaker 04: Office hours in the smaller box. [00:05:33] Speaker 04: There's a provision in Spencer that says anything it can't put into one of the identifiable fields gets saved in an additional field of effectively miscellaneous stuff. [00:05:44] Speaker 04: It all gets saved as part of the contact. [00:05:46] Speaker 04: That's how Spencer works. [00:05:47] Speaker 04: And how do you know the miscellaneous stuff is contact information? [00:05:53] Speaker 04: You know it because Spencer tells you that whatever you select is contact information. [00:05:58] Speaker 04: In other words, there's less than meets the eye here. [00:06:01] Speaker 04: Spencer isn't that smart. [00:06:03] Speaker 04: It depends on the user to select the contact information. [00:06:07] Speaker 04: That information is parsed and then saved as contact. [00:06:10] Speaker 02: But Spencer, if I understand it, is identifying phone numbers, it's identifying fax numbers, it's identifying [00:06:16] Speaker 02: addresses and putting those in the appropriate places. [00:06:20] Speaker 02: And then you say, it also identifies other things that are not in one of the email, fax, phone, et cetera, address, and puts that under miscellaneous information. [00:06:31] Speaker 02: That sounds like to me, to my ear, that it is identifying contact information and identifying another category, which is not strictly contact information, regardless of what it calls it. [00:06:43] Speaker 04: But how did Spencer start? [00:06:45] Speaker 04: It began by selection by the user. [00:06:48] Speaker 04: That's the key thing. [00:06:49] Speaker 02: Well, right. [00:06:49] Speaker 02: But the user could select a large lump of text that includes a few items of what we would conventionally call contract information. [00:06:58] Speaker 02: But then Spencer presumably would not select the, hi, George, how are you doing, as contact information. [00:07:10] Speaker 02: In that case, there is no disclosure whatsoever. [00:07:14] Speaker 04: There's no disclosure in Spencer how more than one contact would get separated from another. [00:07:22] Speaker 04: None. [00:07:22] Speaker 04: Zero. [00:07:23] Speaker 04: So if I select the entire document, it's all one contact as far as Spencer's concerned. [00:07:29] Speaker 04: It will all get saved. [00:07:31] Speaker 02: Does it all get saved in the same format? [00:07:36] Speaker 04: As a single contact. [00:07:39] Speaker 04: And it will do its best to disaggregate the fields. [00:07:42] Speaker 04: But that's the contradiction. [00:07:45] Speaker 04: Our claim says that the system does the analyzing to identify contact information. [00:07:50] Speaker 04: Spencer says the user identifies the contact information. [00:07:54] Speaker 04: Contradiction number one. [00:07:56] Speaker 04: In our claim, the system does the analyzing. [00:08:01] Speaker 04: In Spencer, the user and the purpose of the analyzing is to identify contact information. [00:08:07] Speaker 04: In Spencer, [00:08:09] Speaker 04: The user must show the Spencer system what the contact information is. [00:08:15] Speaker 04: And only after that does Spencer parse it. [00:08:18] Speaker 04: That's the real big point. [00:08:20] Speaker 04: And when you get into that situation, remember, it's what is selected that is parsed by Spencer. [00:08:30] Speaker 04: And the claim has one of the requirements that's really, really important. [00:08:35] Speaker 04: And that is that when the information has been [00:08:39] Speaker 04: that the analyzing to identify contact information must occur without user designation of the part that's going to be analyzed. [00:08:50] Speaker 04: So the last six words of the claim are without user designation of a specific part of the electronically displayed textual information to be subject to the analyzing. [00:09:04] Speaker 04: And the board pays no attention to what's required there. [00:09:09] Speaker 04: The claim forbids the user to select that which is analyzed and Spencer violates that. [00:09:15] Speaker 01: Do you think that applies even if the user selects the entire document? [00:09:19] Speaker 01: Absolutely. [00:09:22] Speaker 04: That's right, because Spencer is parsing whatever the user has selected in that case, as well as in any other situation. [00:09:29] Speaker 01: But in that case, the user is not identifying the contact information [00:09:35] Speaker 01: but would be identifying a big block of text, much like if you were to analyze the entire document. [00:09:41] Speaker 04: But as far as Spencer is concerned, the user has identified contact information. [00:09:46] Speaker 04: And as I say, the solicitor admits it on page 18. [00:09:50] Speaker 04: And you can read Spencer. [00:09:52] Speaker 04: Even every claim requires the user to select the contact information, every independent claim. [00:09:57] Speaker 04: The summary points out the user selects the contact information. [00:10:01] Speaker 04: So the Spencer system is just the opposite. [00:10:05] Speaker 04: of what the claim requires, and somehow taking this situation, which is the opposite. [00:10:10] Speaker 04: One of the cool things about the headloy technology is you push this graphical button. [00:10:16] Speaker 04: And when that graphical button is pushed, the system of headloy identifies name, address, it identifies contact information in there. [00:10:26] Speaker 04: And it uses that identified contact information still just from having pushed that graphical button to run a search. [00:10:34] Speaker 04: Very clever stuff. [00:10:35] Speaker 04: Spencer does none of that. [00:10:37] Speaker 04: Of course, it doesn't do a search. [00:10:39] Speaker 04: But in addition, you have to select the stuff. [00:10:41] Speaker 04: And it's only the selected stuff that is parsed by Spencer. [00:10:45] Speaker 04: So we have two violations. [00:10:47] Speaker 04: First, the violation that the analyzing has to be done by the system, whereas Spencer is depending on the user to select whatever is selected. [00:10:58] Speaker 04: Secondly, what's regarded as contact information and parsed is that which is selected [00:11:05] Speaker 04: And that's a violation of this thing that you cannot point this stuff out to the system. [00:11:11] Speaker 04: So two violations there. [00:11:12] Speaker 04: That's the nub of it. [00:11:14] Speaker 04: And this inner box stuff is interesting, and it's well brief. [00:11:18] Speaker 04: But the big picture is simply the user points out the contact information in Spencer, and the claim says that can't be done. [00:11:27] Speaker 02: And let me just make sure I understand your answer to my earlier question about [00:11:32] Speaker 02: what constitutes contact information with an eye towards Spencer. [00:11:38] Speaker 02: Are you saying that everything, the user makes a selection of a box of a portion of the email, which may include addresses, but may include other things as well in Spencer. [00:11:50] Speaker 02: And are you saying that Spencer treats all that as contact information? [00:11:55] Speaker 02: It's all shaped as part of that contact, yes. [00:11:57] Speaker 02: And therefore, you might have an address which [00:12:01] Speaker 02: attached to the address is, hi Bob, how's the wife? [00:12:05] Speaker 02: If you selected it, yep, that goes right in there. [00:12:07] Speaker 02: It goes into the contact information file? [00:12:10] Speaker 04: Yes. [00:12:10] Speaker 02: Along with the address? [00:12:11] Speaker 01: Yes. [00:12:12] Speaker 01: Where in the reference do you rely on for that? [00:12:14] Speaker 01: Is there like one specific place you've got to read the reference to? [00:12:19] Speaker 04: We've cited this in our reply brief, I believe. [00:12:21] Speaker 04: I'm not going to take the time to find the exact site, but we do say that there is a miscellaneous field in [00:12:30] Speaker 04: in Spencer that is used for stuff that isn't otherwise parsed. [00:12:34] Speaker 02: But Spencer segregates that stuff from the contact information such as addresses, I take it. [00:12:41] Speaker 02: When you say there's a miscellaneous field, then you're suggesting that it's treated differently. [00:12:46] Speaker 04: Well, regardless of what it calls it, it's still saved as part of the contact. [00:12:49] Speaker 02: But that may just be a matter of nomenclature. [00:12:52] Speaker 02: If it is segregating what we've been conventionally calling contact information from other, the high bob, if high bob gets put in a different file. [00:13:01] Speaker 04: No, it's not in a different file, it's part of the same record. [00:13:05] Speaker 02: But it's segregated, you said. [00:13:07] Speaker 04: They're in a separate field of the record, just as telephone numbers a separate field and so forth. [00:13:14] Speaker 04: With the court's permission, I'll move on to another interesting case, which is the appeal 161093. [00:13:22] Speaker 04: And in 1093, there are three limitations that I think were completely mishandled by the PTAB. [00:13:34] Speaker 04: Let's start with the search limitation. [00:13:37] Speaker 04: On page two of the final office action, this is the appendix, page 265. [00:13:42] Speaker 04: The examiner makes an obviousness rejection based on the combination of Miller with a dressmate and Weinreich. [00:13:50] Speaker 04: And we know this because the examiner explicitly says so on this page, listing each of these three references at the beginning of the rejection. [00:13:58] Speaker 04: It's exactly there, appendix 265. [00:14:02] Speaker 04: So he identifies three references. [00:14:05] Speaker 04: And then thereafter, on the appendix on page 272, the examiner says, [00:14:10] Speaker 04: Miller fails to explicitly disclose electronically searching in an information source for the first contact information previously identified by analyze. [00:14:20] Speaker 04: He says that. [00:14:22] Speaker 04: Now, the examiner then cites address mate for the search limitation. [00:14:27] Speaker 04: That's also on page 272 of the appendix. [00:14:31] Speaker 04: But the board says, and this is to me absolutely remarkable, the board says the examiner relied on Miller, not address mate, for the above disputed limitations. [00:14:40] Speaker 04: That's the original decision, appendix page 12. [00:14:44] Speaker 04: So we have the examiner saying, I'm using three references. [00:14:48] Speaker 04: We have the board said, oh, no. [00:14:51] Speaker 04: The examiner used Miller for everything. [00:14:54] Speaker 04: Fairness requires candor. [00:14:56] Speaker 04: Candor is lacking here, and an applicant is entitled to rely on what the examiner says in a rejection. [00:15:03] Speaker 04: The examiner says he did not rely on Miller for the searching limitation. [00:15:07] Speaker 04: If the board or the solicitor, for that matter, wants to disagree with the examiner, the board and the solicitor are free to do so. [00:15:14] Speaker 04: But the board and the solicitor are not entitled to come up with a new theory of rejection while attributing it to the examiner. [00:15:22] Speaker 04: Says the board, the examiner relied on Miller, not a dressmate for the above disputed limitations. [00:15:29] Speaker 04: So the board's new theory of rejection argues that Miller discloses the searching limitation. [00:15:33] Speaker 04: The board says Miller teaches all of the disputed limitations as explained supra. [00:15:38] Speaker 04: That's the appendix, page 13. [00:15:41] Speaker 04: But the examiner said otherwise. [00:15:45] Speaker 04: Will the real rejection please stand up? [00:15:48] Speaker 04: I think we're entitled to rely on what the examiner said. [00:15:52] Speaker 04: This new theory of rejection is not only improper, it's also incorrect. [00:15:57] Speaker 04: Miller fails to teach, here's the limitation actually in the claim, in an information source [00:16:03] Speaker 04: For the first contact information previously identified by analyzing in order to find second contact information, they're associated with the first contact information. [00:16:16] Speaker 04: The board chooses to ignore that the search must be for the first contact information found in the analyzing step. [00:16:23] Speaker 04: Then the board chooses to ignore that the search must be in an information source. [00:16:30] Speaker 04: That second contact information must be associated with the first contact information and an information source. [00:16:35] Speaker 04: One of the things that Hedloy did is he said, I'm working in Microsoft Word, for example. [00:16:41] Speaker 04: I'm writing a letter. [00:16:43] Speaker 04: And I type the beginning of the inside address, Bruce Sunstein. [00:16:49] Speaker 04: Ah, what's his address? [00:16:51] Speaker 04: I have to look it up. [00:16:52] Speaker 04: I have to go to Outlook. [00:16:53] Speaker 04: But instead, he figures out a shortcut. [00:16:56] Speaker 04: You push the graphical button. [00:16:58] Speaker 04: It identifies that I typed some contact information, a name. [00:17:02] Speaker 04: It will use that name to do a lookup in the Outlook database. [00:17:06] Speaker 04: It does the lookup. [00:17:07] Speaker 04: And if there's nothing else there but that name and it corresponds, it will immediately stick it in right afterwards. [00:17:13] Speaker 04: That's really smart stuff, all done as part of the technology that Hedloy figured out. [00:17:19] Speaker 04: And so this idea of a search. [00:17:21] Speaker 04: It's conducting a search in a database, for example, for the information found by the analyzing. [00:17:27] Speaker 04: It's real analyzing. [00:17:28] Speaker 04: It doesn't require a user selection. [00:17:30] Speaker 04: And none of that's in Miller because Miller is incapable of doing a search for contact information. [00:17:38] Speaker 04: And they have some very far-fetched theories why Miller's search counts. [00:17:43] Speaker 04: But those searches don't match the claim limitation. [00:17:48] Speaker 04: The solicitor, in fact, goes a step further with a remarkable new position [00:17:52] Speaker 04: nowhere previously in the record that contact information means type of contact information. [00:17:58] Speaker 04: And Hedlway really carefully distinguished between type of contact information. [00:18:03] Speaker 04: You can look at the claim structure and see there's a beautiful set of distinctions. [00:18:08] Speaker 04: That's in the Solicitor's Reef, page 47. [00:18:10] Speaker 04: The Solicitor attributes this to the board. [00:18:15] Speaker 04: But the cited passage of the board doesn't make that statement. [00:18:19] Speaker 04: And the Solicitor's attempt [00:18:20] Speaker 04: To make this kind of distinction, it makes hash of the claims. [00:18:23] Speaker 04: It makes hash of the specification, where the two concepts are always carefully differentiated. [00:18:29] Speaker 04: I'm running out of time, but the bottom line is that Miller doesn't stand for that search limitation. [00:18:36] Speaker 04: Miller certainly doesn't need the type variation limitation in Otley's system. [00:18:42] Speaker 04: If you first start with a name and you do a search, it'll pop up an address. [00:18:49] Speaker 04: If you start with a name and address, it will do a search for the name and use the address also, see if they match. [00:18:56] Speaker 04: So the type that you start with can affect the type that you end up with. [00:19:01] Speaker 04: Miller doesn't have that because Miller doesn't even do a search in a database. [00:19:07] Speaker 04: The last limitation on initiating electronic communication is a sort of- What about address made on that score? [00:19:14] Speaker 04: Just very briefly on address made. [00:19:16] Speaker 04: Well, AddressMate will do a search for an address. [00:19:19] Speaker 04: But of course, that's all it does. [00:19:22] Speaker 04: It searches for an address. [00:19:23] Speaker 04: And yeah, you can try to combine them. [00:19:24] Speaker 04: And we thought that was a silly idea, but we're not arguing that on the appeal. [00:19:28] Speaker 04: Yeah, AddressMate does it. [00:19:29] Speaker 04: But the board has said, as part of this new rejection, that Miller teaches it. [00:19:35] Speaker 04: And that's absolutely extraordinary. [00:19:38] Speaker 04: And the point is, the board's attempted a rejection based that way. [00:19:42] Speaker 04: It shouldn't be allowed. [00:19:44] Speaker 04: I'm going to reserve my 30 seconds. [00:19:47] Speaker 04: Thank you so much. [00:19:47] Speaker 04: We'll restart a couple minutes. [00:19:53] Speaker 00: May it please the court? [00:19:55] Speaker 00: I'd like to start with responding to Appeals 2015-1893, the question that you had, Judge Bryson, about how Spencer is working in terms of this [00:20:08] Speaker 00: analyzing textual contact information without user designation of a specific part. [00:20:13] Speaker 00: And I think figure four is actually an important figure to look at. [00:20:17] Speaker 00: And what the examiner and the board found is that in using Spencer, you are selecting text. [00:20:26] Speaker 00: You're doing a designation, but you're not designating a specific part of the text to be analyzed. [00:20:32] Speaker 00: What you're doing, they said that interpreting the claim [00:20:36] Speaker 00: who can construe it such that you are selecting the entirety of the text to be analyzed. [00:20:42] Speaker 00: And if you look at what's listed in that smaller box, there are things like facts and the word phone. [00:20:48] Speaker 00: And if you turn to Figure 7 on page A2119, that ends up being the contact verification field. [00:20:57] Speaker 00: And you'll notice words like facts and phone are not saved. [00:21:01] Speaker 00: Everything in there is not necessarily contact information. [00:21:04] Speaker 02: Well, Mr. Sunstein says that Spencer saves everything in the small box, or in the portion that is designated, even high Bob house the wife. [00:21:17] Speaker 02: He says that gets saved as contact information. [00:21:20] Speaker 02: Now, can you explain to us whether that's not true and what Spencer actually does with the high Bob statement? [00:21:27] Speaker 00: So the way Spencer works, [00:21:31] Speaker 00: In this disclosure, they don't really talk about if you were to take that high bob. [00:21:35] Speaker 02: Well, we have it in Figure 4, because you've got office hours, which I take it is not, in a technical sense, contact information. [00:21:43] Speaker 00: Yes. [00:21:43] Speaker 02: What does Spencer do with that? [00:21:45] Speaker 02: With the office hours or with the high bobs? [00:21:48] Speaker 02: Office hours. [00:21:48] Speaker 02: High bob is outside of the small box, I think, in this particular example, but it doesn't need to be. [00:21:54] Speaker 00: It doesn't need to be. [00:21:55] Speaker 02: Someone could select it. [00:21:56] Speaker 00: So what happens to the office hours? [00:21:59] Speaker 00: Sure. [00:22:00] Speaker 00: in the office hours is it does get saved in the miscellaneous section. [00:22:04] Speaker 00: So if you look at Figure 7, you might even see it there. [00:22:07] Speaker 00: What page are the appendixes in? [00:22:09] Speaker 00: I'm sorry, A219. [00:22:11] Speaker 00: So that office hours is in there. [00:22:13] Speaker 00: But what I was trying to explain in the beginning was the word phone and the word fax would not get saved in there in that Figure 7 that we're looking at. [00:22:22] Speaker 00: That is not contact information. [00:22:25] Speaker 00: That is an identifier of the contact [00:22:27] Speaker 02: Would you regard office hours as contact information? [00:22:31] Speaker 00: I wouldn't, and I don't necessarily... Does Spencer? [00:22:34] Speaker 00: Well, Spencer... Spencer saves it, but does it save it as... Spencer saves it, but I don't think that Spencer considers it to be contact information. [00:22:42] Speaker 00: It puts it in a miscellaneous area. [00:22:46] Speaker 02: Would High Bob also go into that miscellaneous area, if that were within the small book? [00:22:52] Speaker 00: That's my understanding of Spencer. [00:22:54] Speaker 00: I don't have something that I can point to because it's not necessarily disclosed here, but I would think they would treat it the same way they treat office hours or a word. [00:23:05] Speaker 00: In this instance, they have a word like phone and fax that kind of just drops away. [00:23:09] Speaker 00: So it's not really clear to me what they would do, what Spencer would do with that, but it's not necessarily contact information. [00:23:19] Speaker 00: to sort of respond to whether or not Spencer is the same way, by Spencer saying that it's selecting all of the textual information, that is not choosing a specific part to be analyzed. [00:23:30] Speaker 00: The examiner construed that particular limitation to mean that it does not preclude instances where you select all of the textual contact information. [00:23:38] Speaker 00: And the claims aren't read as narrowly as head lawyer would like them to be, and nor is there anything in the specification to suggest that they should be. [00:23:47] Speaker 00: So if there's no questions on that point, I'd like to move on to the second appeal, where that's 2016-1093, and address the comments that Hitler's counsel made about Miller. [00:24:01] Speaker 00: So I think it's important to step back and figure out what it is the examiner found when it looked at Miller. [00:24:06] Speaker 00: So what's being construed here [00:24:08] Speaker 00: is a very large limitation. [00:24:10] Speaker 00: It's that claim one limitation B, the causing an electronic search limitation. [00:24:14] Speaker 00: And it's very long. [00:24:15] Speaker 00: And what the examiner said was that Miller discloses the majority of that limitation. [00:24:20] Speaker 00: But there are two portions of that limitation that Miller does not disclose. [00:24:26] Speaker 00: The first part is the one dealing with searching in an information source for second contact information. [00:24:33] Speaker 00: Because what Miller does is it will search for second information. [00:24:37] Speaker 00: which is what they consider those grammars that cause the actions in Miller. [00:24:43] Speaker 00: But Miller doesn't teach searching for second contact information, so the examiner relied on address me for that particular part of that limitation. [00:24:53] Speaker 00: The other part of the limitation that the examiner said was not taught in Miller was the part dealing with [00:25:00] Speaker 00: that the second contact information will vary depending upon the type of first contact information that is searched. [00:25:06] Speaker 00: And the examiner relied on Rheinreich for that part of the limitation. [00:25:10] Speaker 00: So when Head Lawyers Council was talking about Miller doesn't do the searching for second contact information, the examiner never said that it did. [00:25:17] Speaker 00: What the examiner is saying is that we have a really large limitation. [00:25:21] Speaker 00: Miller teaches the majority of it, but we need to rely on other references to fulfill this entire limitation. [00:25:29] Speaker 00: What Miller is doing is searching and getting second information, and AddressMate comes in to do the second contact. [00:25:37] Speaker 02: What is it exactly that AddressMate does? [00:25:40] Speaker 02: Mr. Senstein said it does very little indeed. [00:25:44] Speaker 02: What is it your understanding of what AddressMate contributes to the combination here? [00:25:50] Speaker 00: So AddressMate, what it's doing is it's using a name to find [00:25:54] Speaker 00: another, like an address. [00:25:56] Speaker 00: So if I put in Monica Latif, or if someone puts in Monica Latif and they're trying to figure out where I am, it's pulling- From a database. [00:26:04] Speaker 00: From a database. [00:26:04] Speaker 02: Maybe even the internet. [00:26:06] Speaker 00: Right. [00:26:06] Speaker 00: And so that part about the limitations, searching in an information source for second contact information- Second contact information. [00:26:14] Speaker 02: First contact information would be Monica Latif. [00:26:16] Speaker 02: The second contact information would be Office of the Solicitor. [00:26:19] Speaker 02: Correct, Your Honor. [00:26:20] Speaker 00: So that's the need for address made. [00:26:24] Speaker 02: And with respect to the question of whether, I mean, you've covered this a bit, but I want to go back and make sure I understand it. [00:26:32] Speaker 02: The argument that Mr. Sunstein is making about the misuse or the broader use by the board of Miller than was done by the examiner. [00:26:45] Speaker 02: You're saying that there wasn't really an inconsistency between the way the examiner and the way the board treated Miller because of the [00:26:53] Speaker 02: limited nature of the distinction between searching for information and second contact information. [00:27:01] Speaker 02: Yes, Your Honor. [00:27:02] Speaker 00: That's our argument. [00:27:04] Speaker 02: So you say that the board's treatment was entirely consistent with the examiner's treatment in that regard. [00:27:09] Speaker 02: Yes. [00:27:11] Speaker 02: Yes, Your Honor. [00:27:14] Speaker 02: I'm sorry, were you done with that point? [00:27:16] Speaker 02: I was. [00:27:17] Speaker 02: Let me ask you about a point which I think [00:27:19] Speaker 02: I suspect Mr. Sunstein was going to get to when I interrupted him at the end of his argument. [00:27:24] Speaker 02: But I want to ask you about it. [00:27:26] Speaker 02: It's a first contact information limitation in the second case. [00:27:33] Speaker 02: Your position and the position of the board is that that includes, wait a minute, not the first contact information. [00:27:43] Speaker 02: I'm sorry. [00:27:46] Speaker 02: I was on the wrong page. [00:27:46] Speaker 02: The initiating electronic communication. [00:27:49] Speaker 02: Initiating electronic communication. [00:27:51] Speaker 02: The other one's in the first one. [00:27:53] Speaker 02: Sorry. [00:27:55] Speaker 02: That limitation, you say, includes internal signals within the system. [00:28:06] Speaker 02: Doesn't necessarily have to be an external communication, such as an email or a phone call. [00:28:14] Speaker 02: Based on the way the claims are written, yes. [00:28:17] Speaker 02: Certainly, there aren't any examples in the specification of internal signals, as I understand it, as falling within that category. [00:28:26] Speaker 02: The specification seems to contemplate some kind of external communication. [00:28:32] Speaker 02: What is it you think is the basis for saying that that phrase includes any electrical signal from one part of the program to another, from one part of the device to another? [00:28:45] Speaker 00: So what the examiner and the board found was that the claims, the way they're written, are very broad. [00:28:51] Speaker 00: And there is nothing in HeadLoy's specification that defines initiating electronic communication. [00:28:57] Speaker 00: In fact, the only time that the phrase is even used is in the claims themselves. [00:29:01] Speaker 00: And one of the things the claim requires is that this is done with the use of one button, the fact that you can analyze and initiate electronic communication. [00:29:15] Speaker 00: Headloy's invention, you press the one button, and it will, according to Headloy, be able to analyze and initiate electronic communication. [00:29:25] Speaker 00: So figure out that it's contact information and make the call. [00:29:30] Speaker 00: It wasn't clear to the examiner and the board that that's something that can be done in one button. [00:29:35] Speaker 00: And there is internal things going on there when that button is pressed in terms of what's being [00:29:44] Speaker 00: trying to think of a word other than analyze, but what's being assessed and processed within the program? [00:29:50] Speaker 00: I mean, there has to be something going on to let the computer program know that this is contact information and something needs to be done with it. [00:30:00] Speaker 00: There's internal communications going on just off of pressing the one button in HeadLoy's invention itself. [00:30:06] Speaker 00: And so when the examiner and the board looked at this particular limitation and didn't see anything defining it and didn't see [00:30:14] Speaker 00: anything, the claims to be more narrow. [00:30:17] Speaker 00: They said, well, that using the broadest range of interpretation could mean using a signal to send or retrieve associated data and actions associated with the first contact information. [00:30:31] Speaker 00: It doesn't have to be something external. [00:30:34] Speaker 00: It can be an internal thing. [00:30:35] Speaker 00: I mean, this is a computer program. [00:30:36] Speaker 00: There's a lot of things happening behind the scenes. [00:30:40] Speaker 02: Had you been the examiner and had [00:30:44] Speaker 02: this issue come up, and would it have been enough to clarify the scope of the claims that Hedlow is now asserting is the, in fact, the proper construction of the claims if they'd added the word external after initiating, between initiating and electronic communication? [00:31:06] Speaker 02: So if they had said... Initiating external electronic communications or some... I mean, I'm just [00:31:12] Speaker 02: flying by the seat of my pants, but I suppose it's something like that. [00:31:15] Speaker 00: I think that would be more helpful. [00:31:16] Speaker 00: I mean, as I stand here, I'd like to think about it a little bit, but I think that would get them closer to where they want to be, absolutely. [00:31:24] Speaker 00: I mean, there's nothing in the claim language as it's written right now to make it that limiting to be in external communication. [00:31:34] Speaker 00: So if there's no further questions, I yield my time. [00:31:45] Speaker 04: We'll restore three minutes. [00:31:47] Speaker 04: Thank you. [00:31:49] Speaker 04: I just wanted to note in response to the question of Judge Bryson that in our reply brief on page 14, we do address- In which case? [00:31:57] Speaker 04: I'm sorry. [00:31:58] Speaker 02: In the second case. [00:31:59] Speaker 04: Sorry. [00:32:00] Speaker 04: Actually, the first- The first case, okay. [00:32:03] Speaker 04: In the first case, 1893, on page 14 of our reply brief, we do talk about how anything that doesn't fit elsewhere [00:32:11] Speaker 04: gets saved as part of that contact, and we cite into Spencer column five, lines 28 to 33. [00:32:17] Speaker 04: And finally, I would note in the other case, the Weinreich reference, as we mentioned in the brief, always retrieves the same type of information, namely the full record. [00:32:28] Speaker 04: And what it displays depends on whether there's one record or two records, more than one record, and then it displays a partial stuff. [00:32:37] Speaker 04: that type variation limitation in that second case isn't satisfied by Weinreich. [00:32:44] Speaker 04: And we spent a little more time on that on the brief. [00:32:47] Speaker 04: So I think the Court's questions are spot on. [00:32:50] Speaker 04: And we think, ultimately, that these particular cases raise question about fairness and candor in the proceedings. [00:33:01] Speaker 04: And we deeply appreciate the Court's consideration. [00:33:03] Speaker 02: What do you say about the solicitor's argument [00:33:07] Speaker 02: The board, in fact, did appreciate the scope of the examiner's handling of Miller and that they parsed the search limitation in a way that was consistent with the examiner's treatment. [00:33:24] Speaker 02: You disagree, I know, but flesh it out for me a little. [00:33:26] Speaker 04: Yes. [00:33:28] Speaker 04: The language, I think we should be entitled to say, if the examiner cites three references, [00:33:35] Speaker 04: And then goes in to show how, in his view, Weinreich covers the type variation and Addressmate covers the search limitation. [00:33:47] Speaker 04: We're entitled to rely on that. [00:33:49] Speaker 04: And strikingly, the board said, as kind of a new ground of rejection, I think the board was uneasy with that ground of rejection because they said particularly that Miller [00:34:04] Speaker 04: satisfies the search limitation, and it satisfies the type variation limitation. [00:34:11] Speaker 04: And they had to come up with a really strange interpretation of this, because what Miller does, and it does well. [00:34:18] Speaker 04: It's an interesting technology that was developed by Apple that was used for a while, Apple data detectors, that identifies contact information in a document. [00:34:28] Speaker 04: And when it does identify that contact information, it allows the user to take actions. [00:34:34] Speaker 04: So if it identifies a phone number, one of the actions that you can take is dial telephone number. [00:34:42] Speaker 04: If it identifies a name, one of the actions is save an address book. [00:34:47] Speaker 04: But Miller doesn't do searching. [00:34:49] Speaker 04: And of course, that's the heart of the searching limitation is to do searching. [00:34:57] Speaker 04: And Miller does the search. [00:34:59] Speaker 02: Exactly. [00:35:00] Speaker 04: So that makes sense for why a dressmate does. [00:35:02] Speaker 04: But why does the board say... You're saying contact information, right? [00:35:05] Speaker 04: Thank you. [00:35:06] Speaker 04: Yes. [00:35:07] Speaker 04: I love it. [00:35:08] Speaker 04: You probably have it. [00:35:12] Speaker 04: But Miller doesn't do that. [00:35:13] Speaker 04: And the board says that Miller does do it. [00:35:16] Speaker 04: I mean, it's extraordinary. [00:35:18] Speaker 04: And then they say the examiner said that Miller does do that. [00:35:21] Speaker 04: I mean, one of the complexities here is the examiner did say a lot of stuff. [00:35:26] Speaker 04: And he kind of wandered around, but examiners are allowed to wander around if they want. [00:35:31] Speaker 04: But after he says all this stuff about Miller, he says, but Miller fails to teach the searching limitation. [00:35:40] Speaker 04: And then he goes on and says a dressmate does. [00:35:43] Speaker 04: I think we're entitled to rely on that. [00:35:45] Speaker 04: And we shouldn't be allowed to have the board coming up with a new theory in disguise because it's not fair. [00:35:54] Speaker 02: Now, one final. [00:35:57] Speaker 02: question. [00:35:58] Speaker 02: The initiating electronic communication limitation, presumably you could have resolved this problem simply by explaining maybe with one word of external or some equivalent. [00:36:12] Speaker 02: But you didn't. [00:36:14] Speaker 02: Why not? [00:36:15] Speaker 04: It took a while to figure out what this examiner was doing, frankly. [00:36:18] Speaker 02: It's pretty clear, I think, with respect to this limitation that he was saying that this is not at least [00:36:26] Speaker 02: could have been clearer as to what you meant, if that's what you meant. [00:36:29] Speaker 04: Well, one thing that happens if you read the disclosure and compare it with the claims, in figure one of the application, there's a flow diagram that shows all the processes that are going on. [00:36:42] Speaker 04: And if you take a look at the way the claim is mapped, you can see the claim mapping to these different events. [00:36:50] Speaker 04: And there is a situation where you get to around, I believe it's box 10, [00:36:56] Speaker 04: where if you find something that's not a name or address, but something else, it then talks about other appropriate action. [00:37:03] Speaker 04: And the application goes through a really nice description that says in those situations where it finds an email address or a telephone number, it can initiate sending an email or sending a fax. [00:37:16] Speaker 04: It talks about that very explicitly. [00:37:19] Speaker 04: And when we wrote this claim, [00:37:21] Speaker 04: That's what we thought we were talking about. [00:37:23] Speaker 02: Yeah, but the examiner didn't, and you could have fixed it. [00:37:25] Speaker 02: I mean, you thought you were talking about that. [00:37:27] Speaker 02: Why not say so in the claim? [00:37:28] Speaker 02: But it's just amend the claim. [00:37:30] Speaker 04: Easiest thing in the world. [00:37:31] Speaker 04: It's not so easy once. [00:37:33] Speaker 04: Why? [00:37:34] Speaker 04: Because as prosecution goes on, and these are cases that have been asserted against a lot of entities, and the claims have been published, amending gets to be an issue. [00:37:44] Speaker 04: The client has settled with Microsoft, which copied the stuff first. [00:37:48] Speaker 04: He had a booth at Comdex. [00:37:49] Speaker 04: It was great stuff, and Microsoft loved it. [00:37:52] Speaker 04: Um, so, uh, we're reluctant to amend too quickly when the prosecution is very, very late. [00:37:59] Speaker 04: And on this situation, we believe the context is really good. [00:38:04] Speaker 04: And as I mentioned, we have the type variation limitation that was also not met because Weinreich keeps recalling the same stuff. [00:38:10] Speaker 04: It's like Monty Python and he says, and now for something completely different. [00:38:14] Speaker 04: And it's the same thing over again. [00:38:16] Speaker 04: That's what Weinreich does because whenever you, it does a search. [00:38:21] Speaker 04: it retrieves the full record. [00:38:24] Speaker 04: And it displays a partial record with lots of results if there's more than one. [00:38:29] Speaker 04: Otherwise, it displays the full record. [00:38:31] Speaker 04: But in each case, it's the same thing. [00:38:34] Speaker 04: So we had several grounds that we thought we were quite solid on. [00:38:38] Speaker 04: And for that reason, we felt we could get fixed up in front of the board. [00:38:44] Speaker 04: And we didn't. [00:38:47] Speaker 03: Thank you. [00:38:47] Speaker 03: Thank you so much. [00:38:48] Speaker 03: Thank both parties. [00:38:49] Speaker 03: And the cases are submitted.