[00:00:01] Speaker 03: Okay. [00:00:01] Speaker 03: Good morning, everyone. [00:00:03] Speaker 03: The first argued case this morning is number 15, 1973, in Ray LeMay, Mr. Davies. [00:00:14] Speaker 01: Good morning, Your Honor. [00:00:15] Speaker 01: May it please the court. [00:00:18] Speaker 01: The PTAP's written decision in this case falls short, permissible federal agency decision-making. [00:00:27] Speaker 01: The public and this court depend on a process [00:00:31] Speaker 01: that adequately explains when a patent will issue and when it will not issue. [00:00:37] Speaker 01: Or as this court put it, there is a need for specificity. [00:00:41] Speaker 01: Here, the result of an eight-year agency process is a single sentence, a rejection of Apple's patent application. [00:00:50] Speaker 01: And that sentence teaches the public nothing and renders review by this court unnecessarily difficult. [00:00:57] Speaker 01: And the predictable results of such a process is a mistake. [00:01:01] Speaker 01: Back in 2007, the LeMay application taught a graphical user interface for mobile browsing of online videos. [00:01:11] Speaker 01: The PTO now agrees there is no interface like that in the prior art. [00:01:15] Speaker 01: The decision below does not even mention the principal figure now relied on by the PTO. [00:01:21] Speaker 03: On this record, the only possible outcome is a... But you still have the problem of the breadth of the claims. [00:01:28] Speaker 03: Do you not even agree that [00:01:31] Speaker 03: At their core, there is patentable substance. [00:01:37] Speaker 01: So thank you, Your Honor. [00:01:38] Speaker 01: I'm happy to talk about the claims. [00:01:40] Speaker 01: The claims are actually not broad. [00:01:42] Speaker 01: There were six quite specific elements. [00:01:45] Speaker 01: And so no, there's no problem. [00:01:50] Speaker 01: But they certainly haven't pointed to why. [00:01:52] Speaker 01: There's no commentary by the PTAP about the breadth of the claims, for example. [00:01:56] Speaker 01: They pointed to a couple of figures. [00:01:58] Speaker 01: But Your Honor, if you'd like to turn to the claims, [00:02:02] Speaker 01: Element 6, for example, you have to hit the icon and then you get a list. [00:02:11] Speaker 01: There's elements about scrolling. [00:02:12] Speaker 01: There are elements about having multiple lists. [00:02:16] Speaker 01: It's not broad claims. [00:02:18] Speaker 01: There's nothing like these claims in Cook, for example. [00:02:22] Speaker 01: Nothing like these claims in any of the prior art. [00:02:26] Speaker 01: And if you look at what the P tab said here, and it's an Appendix 7, and it's really a remarkable sentence, [00:02:31] Speaker 01: What they say is, essentially, there's a touch screen technology out there, fine, combined with Cook's icons and plurality of lists of information. [00:02:40] Speaker 01: That's the whole rationale for why they say the disputed claim limitations are invalid. [00:02:46] Speaker 01: And when you look at it, actually, element 6, which I was just talking about, is not even referred to by the PTAB. [00:02:54] Speaker 01: So to the extent of the problem, Your Honor, it's certainly not been articulated. [00:02:58] Speaker 01: And I think when you look at the record here, [00:03:02] Speaker 01: The PTAB relies heavily on figure 3B. [00:03:08] Speaker 01: And all figure 3B shows is the results of an internet search. [00:03:13] Speaker 01: You can't push an icon on 3B itself. [00:03:17] Speaker 01: And so that doesn't match this element that we were talking about, element 6. [00:03:21] Speaker 01: And the whole purpose of what we were trying to do, Your Honor, to go back to the claims, you obviously don't just read the claims. [00:03:27] Speaker 01: You have to look in light of the specification. [00:03:29] Speaker 01: And what we were trying to do when the iPhone came out was to let people easily browse online videos. [00:03:36] Speaker 01: We explained that with all the menu hierarchies, it was difficult to do that on a phone. [00:03:41] Speaker 01: And so we thought really hard about the user interface that would let users quickly find what they wanted. [00:03:47] Speaker 01: And so the purpose is very specific, and the claims read in light of that purpose cannot possibly be thought of as broad. [00:03:59] Speaker 01: I'm happy to continue. [00:04:03] Speaker 01: I'm here for you. [00:04:05] Speaker 01: And when you come back to the PTAB's decision, that one sentence, that cannot possibly be adequate. [00:04:12] Speaker 01: Again, all they say is Cook's icons and pluralities, a list of information, see Cook Figure 3B. [00:04:19] Speaker 01: There's no effort to match the elements of our patent to figure 3B. [00:04:22] Speaker 04: Well, but if I interpreted the board's decision as adopting the examiner's findings, it does seem to me that the examiner went through element by element and mapped each of. [00:04:34] Speaker 04: I mean, you're absolutely right. [00:04:36] Speaker 04: I would rather see that in the board's decision with greater precision and detail. [00:04:43] Speaker 04: But if I read their decision, which I think it's fair to do, [00:04:46] Speaker 04: as having adopted the examiner's position on all of this, I think you'd be better served with moving on at this point. [00:04:55] Speaker 04: And I understand your argument on your criticism of the inadequacy of the explanation in the board's opinion, but I think you'd be better served moving on to the merits at this point of whether the record, including what the examiner said, supports [00:05:09] Speaker 04: the board's decision or not. [00:05:10] Speaker 01: Thank you, Your Honor. [00:05:11] Speaker 01: If I could just fight one of your assumptions here, which if this particular PTAB opinion, when you look at it, does not adopt the examiner's decision, what that sentence does is give a rationale. [00:05:25] Speaker 01: It does not adopt the decision below. [00:05:27] Speaker 01: So in terms of agency process, understanding what the agency did, they could have said we formally adopt. [00:05:33] Speaker 01: They could have even said we adopt. [00:05:34] Speaker 01: All they said is did not err. [00:05:36] Speaker 01: And the one sentence. [00:05:37] Speaker 04: Well, then they also say, we find that the evidence of record supports the examiner's finding, the soreness, touch, screen, and finger gestures. [00:05:46] Speaker 04: See, for example, Sarenin, paragraph 37 and 43, combined with Cook's icons and plurality of lists. [00:05:53] Speaker 04: See, Cook, figure 3B, render the obvious. [00:05:55] Speaker 04: Yes. [00:05:56] Speaker 04: So I think it's not unreasonable to interpret the opinion as adopting the examiner's findings. [00:06:03] Speaker 04: But I do understand your point. [00:06:05] Speaker 04: So why don't you tell us what is missing from Cook and Saraman? [00:06:10] Speaker 01: I'm happy to go to the merits. [00:06:11] Speaker 01: One more point I have on the examiner. [00:06:13] Speaker 01: The examiner actually doesn't cite to Figure 5 either. [00:06:16] Speaker 01: And that may not leap out of the papers. [00:06:19] Speaker 01: What they cite to is a particular feature of Figure 5. [00:06:24] Speaker 01: So even if we rely just on the examiner opinion itself, it's just a particular portion of Figure 5. [00:06:31] Speaker 01: The examiner before the PTAB in the briefing there does not rely on figure five. [00:06:36] Speaker 01: But now to talk about figure five. [00:06:39] Speaker 01: It's the same problem of element six. [00:06:44] Speaker 01: If you just look at figure five, there is no icon that responds to detecting a finger contact by throwing up another list at the same time. [00:06:59] Speaker 01: So again, so figure five, which is the media player, does not meet element six, the sixth element of LeMay, because there is no icon on there that responds to the finger by putting a list up at the same time. [00:07:17] Speaker 04: Well, if you tap on, say, most viewed, doesn't that throw a list up? [00:07:24] Speaker 01: Most viewed is out of figure 5A. [00:07:27] Speaker 01: I think you need to click figure. [00:07:30] Speaker 04: I'm sorry, I can't, am I not supposed to look at Figure 5A? [00:07:34] Speaker 01: No, no, you're welcome to, but that's in our patent. [00:07:36] Speaker 04: Oh, I see. [00:07:37] Speaker 04: This is, okay, this is from your patent. [00:07:40] Speaker 04: This is LeMay's Figure 5A. [00:07:41] Speaker 01: Yes, sorry, sorry. [00:07:42] Speaker 04: No, that's my fault. [00:07:43] Speaker 01: Okay, so if you look at, I'm happy for you to look at Figure 5A, but I think you're... No, that doesn't help. [00:07:49] Speaker 01: It helps us. [00:07:49] Speaker 01: But if you look at Figure 5, Your Honor, there was no icon to push here that's going to give you a list at the same time. [00:07:56] Speaker 01: It's actually helpful to look at 5A and understand how our [00:07:59] Speaker 01: technology works. [00:08:02] Speaker 01: But we have icons. [00:08:03] Speaker 01: We have lists. [00:08:04] Speaker 01: And when you push an icon, you get a different list. [00:08:07] Speaker 01: There isn't anything like that going on in Figure 5. [00:08:12] Speaker 01: And since we're talking about Figure 5, another one that's quite easy to access, Your Honor, is what we've been calling the dual function element. [00:08:21] Speaker 04: What are you understanding Element 6 as requiring? [00:08:26] Speaker 04: It says, in response to a detect [00:08:28] Speaker 04: to detecting a finger gesture on a respective icon in a plurality of icons, displaying on a touch screen display of the portable device a corresponding list of information about online video items. [00:08:41] Speaker 02: So what... And you have to do it orally, no finger gestures. [00:08:48] Speaker 01: At the key, the key, AKUano is at the same time on element six, [00:08:53] Speaker 01: which is not in the claim language, but it's a natural reading of the way that prior elements are laid out, and it's certainly in the specification. [00:09:03] Speaker 01: I don't have to rely on element six. [00:09:10] Speaker 01: Dual function says, when I get a row, you can either press play or get additional information from that row. [00:09:16] Speaker 01: There's certainly nothing like that in figure five either. [00:09:25] Speaker 02: I sat here in both these briefs. [00:09:27] Speaker 01: Pardon? [00:09:28] Speaker 02: I sat here in both these briefs and I won't try to put a finger gesture in the record, but spreading my fingers and moving. [00:09:34] Speaker 01: Yeah, yeah. [00:09:35] Speaker 01: No, I think it's important technology now and one of the challenges I think Apple has in this case, Your Honor, is to get everybody back in the pre-iPhone mindset. [00:09:43] Speaker 01: Remember, this was 2007. [00:09:44] Speaker 01: This application was filed [00:09:45] Speaker 01: 2008, with respect, I don't think you knew those gestures, and I certainly didn't back then. [00:09:50] Speaker 01: And so that's what we did. [00:09:53] Speaker 01: We took this, everybody knows now the success, but this is a particular interface to solve this particular problem. [00:10:01] Speaker 01: Another really accessible one, Your Honor, is claim nine, dependent claim nine. [00:10:07] Speaker 04: Before you move on, I'm looking at what the examiner said about element 6. [00:10:12] Speaker 04: And the examiner didn't cite figure 5 for the disclosure of element 6. [00:10:16] Speaker 04: He cited column 8, line 37 to 49 of Cooke. [00:10:21] Speaker 04: So whether figure 5 has it or not, it seems to me isn't what the PTO found. [00:10:26] Speaker 04: They found that it was Cooke that disclosed element 6 of your claim. [00:10:32] Speaker 04: Cooke at that column 8, line 37 to 49. [00:10:36] Speaker 01: Yes, and you can hear the PTO's view is that that references Figure 5. [00:10:43] Speaker 01: But as I started out discussing on, if you go to the lines you just cited, it's all that's talking about is a particular feature of the player. [00:10:54] Speaker 01: That when you press play, three songs are ready to go. [00:10:59] Speaker 01: It's not talking about Figure 5. [00:11:01] Speaker 01: So I was actually [00:11:02] Speaker 01: I was responding to Your Honor's concern about getting to the merits. [00:11:05] Speaker 01: I mean, the merits here, as the PTO has teed it up now, is figure five. [00:11:10] Speaker 01: But you're right, Your Honor, that the examiner below does not invoke figure five, just the particular lines that you mentioned. [00:11:16] Speaker 03: But the examiner thought that it would have been obvious to make that combination. [00:11:21] Speaker 03: And I didn't see the direct refutation of the issue that you're now facing in combination with Cook. [00:11:31] Speaker 01: Yes, so Your Honor, it's not, we have not framed it, and I don't think the Pan Office has framed it, as a combination case. [00:11:41] Speaker 01: The argument, everybody agrees what the prior art is here, and we've now focused on Figure 5, and the question is whether the elements, the claims that you looked at, Your Honor, match up, teach Figure 5. [00:11:52] Speaker 01: It's not really a combination question. [00:11:55] Speaker 01: It's a question of is there a responding to an icon teaching here? [00:11:59] Speaker 01: Is there [00:12:00] Speaker 01: the single list within the multiple lists here, is there a configuration icon? [00:12:05] Speaker 01: So defendant claim nine says, we're going to give the user a configuration icon so they can pick which icons start on the screen. [00:12:12] Speaker 01: There's nothing like that in Cook on figure five. [00:12:15] Speaker 01: There's no configuration icon at all. [00:12:18] Speaker 01: So no matter how specific you want to get, Your Honor, with these claims, they do not match up to figure five. [00:12:23] Speaker 01: And there isn't a question of combining or not. [00:12:27] Speaker 01: It's just not here. [00:12:32] Speaker 04: Well, you tried to separately appeal a number of dependent claims in your brief. [00:12:38] Speaker 04: I'm not including four and nine in that list. [00:12:42] Speaker 04: Do you now agree that you've waived the right to separately argue these claims? [00:12:46] Speaker 04: Because in your brief to the board, you explicitly said that they are not separate from claim one. [00:12:53] Speaker 01: Yeah, we're not fighting that. [00:12:56] Speaker 04: So you're just sticking with four and nine. [00:12:57] Speaker 04: Why don't you jump to claim nine? [00:12:59] Speaker 01: Okay, so claim nine, your honor, is the configuration icon claim that we were just discussing. [00:13:04] Speaker 01: But if we come back to the actual text of claim nine, we can just start with the first three words of the second element, a configuration icon. [00:13:18] Speaker 01: And just to walk you through that, your honor, a configuration icon, if you go to figure, figure F, five F, your honor, figure five F, [00:13:30] Speaker 01: has an edit icon. [00:13:31] Speaker 01: And so when the user presses that edit icon, they can now configure the icons below. [00:13:37] Speaker 01: So that's what we're claiming in Figure 9. [00:13:41] Speaker 01: And the question is whether there's anything remotely like that in Cook. [00:13:44] Speaker 01: What allows the user to move the icons on that first page to prioritize to their own preferences? [00:13:52] Speaker 01: And there just isn't anything like that in Cook. [00:13:55] Speaker 01: What the p-tab points to [00:13:58] Speaker 01: is that the retailer that is in charge of this interface has some ability to change the ordering of the playlist. [00:14:09] Speaker 01: That bears no resemblance to the edit icon that we were talking about. [00:14:12] Speaker 01: So in our claim, Your Honor, we have configure icon. [00:14:15] Speaker 01: Configure icon, we have a picture of the configure icon. [00:14:18] Speaker 01: And the best they can do is talk about ordering of a playlist on Figure 5. [00:14:24] Speaker 01: It's not close. [00:14:27] Speaker 01: We can talk about the merits all day. [00:14:30] Speaker 01: There's no reason to do anything but reverse this case. [00:14:36] Speaker 01: There's no dispute about what the prior art means. [00:14:38] Speaker 01: There's no dispute about the scope of the prior art. [00:14:40] Speaker 01: It's just a question of whether it teaches it. [00:14:43] Speaker 01: And the configure icon could not be clearer. [00:14:48] Speaker 03: Let's hear from the office. [00:14:50] Speaker 03: Thank you, Your Honor. [00:14:58] Speaker 03: Mr. Warren. [00:14:59] Speaker 00: Good morning, Your Honors. [00:15:01] Speaker 00: May I please the court? [00:15:02] Speaker 00: I'd like to start off by pointing out that this case, contrary to Apple's arguments, is not about the iPhone video app. [00:15:10] Speaker 00: And we've had a lot of references to the look and feel of the iPhone, of specific apps. [00:15:16] Speaker 00: But what we're looking at here are three specific claim elements in claim one. [00:15:21] Speaker 00: These are worded in very generic language with very nonspecific terms. [00:15:26] Speaker 00: and each of them is found in the Cook reference. [00:15:30] Speaker 02: What plurality of icons is displayed at the same time as the display represented by Figure 5? [00:15:37] Speaker 00: So the plurality of icons in Element 2 are shown in Figure 3B of the Cook reference. [00:15:45] Speaker 00: And what 3B references are search results, and in that case the search for Mandy Moore, the recording artist, and what we have are three results, and on the left [00:15:54] Speaker 00: We have pictures of the album covers as well as a listen button, and there's other information displayed as well. [00:16:02] Speaker 02: So what you're telling me is it's not in Figure 5? [00:16:05] Speaker 00: It's not in Figure 5, and we haven't argued that it is, and the examiner did not rely on Figure 5. [00:16:10] Speaker 00: The examiner relied on Figure 3B and accompanying text in the specification. [00:16:16] Speaker 00: So specifically for Element 1, the list of information is displayed in those search results, for example, [00:16:23] Speaker 00: the recording artist, the name of the album, the release date, the price, as well as the album cover and the listen icon. [00:16:32] Speaker 00: That portion on the left of the search results in Figure 3B, that has been mapped as the icon. [00:16:38] Speaker 00: You have a plurality of them, in that case three for the three search results, and each corresponds to a list of information about those specific albums. [00:16:48] Speaker 02: It's a static list though, isn't it? [00:16:51] Speaker 00: It's a list that's generated in real time in response to an internet search. [00:16:58] Speaker 00: So in this case, someone entered Mandy Moore. [00:17:00] Speaker 00: There's another example of searching for the Beatles, which gives a different result in figure two of Cook with one result. [00:17:07] Speaker 00: And notably, some of those results in Cook can include video as well as audio. [00:17:12] Speaker 00: There's been some debate about whether Cook discloses video. [00:17:15] Speaker 00: Cook's broadly directed to media. [00:17:17] Speaker 00: It even specifically mentions video in column six. [00:17:21] Speaker 00: But in any event, figure three B clearly discloses elements one and element two. [00:17:27] Speaker 03: I'd like to turn though, if I can, to figure two element six because that's been identified by council as- Well, and when you discuss the elements, tell us where you find the motivation in the art to select the particular elements that you're selecting and directing our attention to and combine them into [00:17:47] Speaker 03: the rest of the combination? [00:17:50] Speaker 00: Well, Your Honor, in this case, respectfully, the dispute is about whether these elements are disclosed in Cook. [00:17:58] Speaker 00: In the reply brief, Apple has even said Cook is the only relevant reference for purpose of this appeal. [00:18:04] Speaker 00: Saarinen was also added, it was part of the combination, to add the touchscreen aspect and specifically using your finger as an input on a touchscreen for the interface. [00:18:15] Speaker 00: But that combination was not [00:18:17] Speaker 00: argued by Apple to the board. [00:18:20] Speaker 03: It was not argued to the examiner, and it's also- Well, it's argued before us until they got the decision of the board. [00:18:28] Speaker 03: How were they to know where the emphasis was? [00:18:32] Speaker 03: So let's not say that their best arguments were not argued. [00:18:38] Speaker 00: Well, Your Honor, perhaps I misspoke. [00:18:41] Speaker 00: The most important thing about the combination of Cook and Sarnet is that it's not being argued [00:18:47] Speaker 00: to this court either. [00:18:48] Speaker 00: There's no argument in Apple's briefs that it was improper to combine those two references. [00:18:55] Speaker 03: Is that what the office is relying on, the failure of argument, in which case perhaps it should go back for re-argument? [00:19:04] Speaker 00: Your Honor, counsel I'm sure will correct me if I'm wrong. [00:19:07] Speaker 00: I don't believe that the combination of the two is disputed. [00:19:11] Speaker 00: But in any event, the examiner did articulate a motivation to combine. [00:19:15] Speaker 00: It's in the record. [00:19:16] Speaker 00: A676, and he said that someone would be motivated to take the touchscreen features that were taught in Saarinen and use them to enhance the lists and icons and media streaming that were disclosed in the Cook reference. [00:19:31] Speaker 00: And that was not disputed to the board. [00:19:33] Speaker 00: And that's really not, as I understand, what's being disputed by LeMay's attorneys here to this court on appeal. [00:19:39] Speaker 00: The dispute now is whether Cook teaches specific limitations. [00:19:45] Speaker 00: And in terms of claim one, which is representative, we're looking at limitations one, two, and six. [00:19:52] Speaker 00: Now one and two relate to displaying list of information and corresponding icons, which are in figure three B. Figure six, I'm sorry, element six, relates to gesturing on one of those icons and then displaying a corresponding list of information. [00:20:11] Speaker 00: And what the examiner relied upon [00:20:14] Speaker 00: element 6 was the fact that you could click on one of those listen icons in figure 3B. [00:20:20] Speaker 00: It's on the left under the album covers. [00:20:22] Speaker 00: If you click on one of those, it will launch the media player that's depicted in figure 5. [00:20:28] Speaker 00: Now, I'll agree that the examiner did not specifically say, look at figure 5. [00:20:33] Speaker 00: What the examiner did was cite portions of the specification that are referencing the media player that's described in figure 5. [00:20:42] Speaker 00: And when we look at those disclosures, it's clear that that's what happens. [00:20:46] Speaker 00: You click on the Listen icon, the media player comes up, and if you look at Figure 5, there's just a vast collection of information that's displayed. [00:20:57] Speaker 00: Further information from that, shown in Figure 3B. [00:21:01] Speaker 00: Just for example, you also have the label for the album, you have the copyright date, you have reviews, a track listing, recommendations. [00:21:10] Speaker 00: Those are all shown in Figure 5. [00:21:13] Speaker 00: Now, there has been some dispute by Apple about what a corresponding list of information needs to be. [00:21:20] Speaker 00: Apple, again, going back to the iPhone video app, says that when you click on one of the icons, what should be displayed is the same list of information that's referenced in Elements 1 and 2, the list that corresponds to the icon. [00:21:37] Speaker 03: Well, I hear you arguing, Cook. [00:21:39] Speaker 03: The board, in its opinion, identified five [00:21:43] Speaker 03: issues, all of which were a combination of Cook and Saarinen. [00:21:48] Speaker 03: Are you now saying that there's another ground of rejection, of anticipation that you're raising before us? [00:21:55] Speaker 00: No, Your Honor. [00:21:57] Speaker 00: What I'm saying, I try to be clear about this, is simply that the combination aspect of Saarinen with Cook is not something that's disputed by the parties. [00:22:08] Speaker 00: And again, I'm certain [00:22:10] Speaker 00: I'll be correct if I'm wrong about that. [00:22:11] Speaker 03: What's disputed is that the combination in their claims is obvious in view of these references. [00:22:19] Speaker 03: They don't dispute that these references exist. [00:22:22] Speaker 03: They don't dispute the content of the references. [00:22:26] Speaker 00: And respectfully, they also do not dispute the combination of the references. [00:22:30] Speaker 03: But they were combined. [00:22:32] Speaker 03: But we're looking now for the motivation, the suggestion, the reason why the combination would have been [00:22:40] Speaker 03: Obvious. [00:22:41] Speaker 03: Is that not the issue on appeal? [00:22:43] Speaker 00: Obviousness is the issue on appeal. [00:22:46] Speaker 00: And certainly we're looking to whether all of the limitations are there. [00:22:51] Speaker 00: And the broader question is, yes, whether they are taught and would be obvious in light of all of the references. [00:22:57] Speaker 00: The arguments that have been posed by the appellant here have to do with whether specific elements are disclosed. [00:23:05] Speaker 02: Let me go back to what you were [00:23:08] Speaker 02: talking about before combination, that is, that Cooke teaches clicking on the price link results in transmitting information about the name of the album to the internet retailer. [00:23:21] Speaker 02: That's at page 40 of your red break. [00:23:24] Speaker 02: How does that meet the claim limitation that the second tap gesture results in displaying additional information, quote, on the touch screen display at the portable electronic device? [00:23:38] Speaker 00: Certainly. [00:23:38] Speaker 00: So that relates to element five of claim one. [00:23:43] Speaker 00: And I'd like to just note that that, we argue, has been waived because it was not argued to the board. [00:23:48] Speaker 00: But to answer your question, the best disclosure in Cook, if you look at the very bottom of column eight and the top of column nine, additional product information can be provided in the reviews 503 tab. [00:24:03] Speaker 00: This is customizable to integrate what the customers establish e-commerce offering. [00:24:08] Speaker 00: So specifically that's talking about when you go to purchase an album, which can be done in different ways in Cook, but one of them is by clicking on the price and the search results. [00:24:20] Speaker 00: And this specific quote I just gave you from columns eight and nine was cited by the examiner with reference to claim 23, which is further related to this additional information that you can receive by clicking on the price information. [00:24:36] Speaker 00: And specifically claim 23 [00:24:38] Speaker 00: says that the additional information can be about related albums. [00:24:50] Speaker 00: Related albums is a separate site, but the reviews are additional information. [00:24:57] Speaker 00: The review of the album is additional information that was not already displayed, and that disclosure clearly says that when you click on an album to purchase it, [00:25:06] Speaker 00: That's part of the information that will be transmitted to the user. [00:25:09] Speaker 04: Can you turn for me to figure 5A of LeMay, not figure 5 of the prior art? [00:25:17] Speaker 00: Yes. [00:25:18] Speaker 04: So if I'm looking, this is a picture of pretty much an iPhone screen. [00:25:24] Speaker 04: The claims talk about icons. [00:25:27] Speaker 04: Icons are the little buttons across the bottom that you would click and they would take you to something else, correct? [00:25:34] Speaker 04: That's what icons are. [00:25:35] Speaker 04: have some version of a smartphone. [00:25:37] Speaker 04: So I think most people have a sense of what an icon is, right? [00:25:40] Speaker 04: Yes, Your Honor. [00:25:41] Speaker 04: OK. [00:25:42] Speaker 04: But then these claims talk about pluralities of lists and lists and lists. [00:25:46] Speaker 04: And they don't say playlists, but lists of information which are also discussed as playlists. [00:25:51] Speaker 04: Like a list of information on this figure 5A would be Pokemon theme music, S Saturday, I assume that's Saturday Night Live, digital short. [00:26:01] Speaker 04: Maybe I'd like to see that one. [00:26:03] Speaker 04: Guitar. [00:26:04] Speaker 04: shoes, quick change artists, that would be a list. [00:26:09] Speaker 04: Not a plurality of list, but that would be a list, right? [00:26:12] Speaker 00: I think as Apple reads Figure 5A, this entire selection, 2330-1 in Figure 5A, they say that's the list. [00:26:22] Speaker 04: Okay, but that's the list of information. [00:26:26] Speaker 04: The icons are not lists of information. [00:26:29] Speaker 04: Not the way this patent defines them. [00:26:31] Speaker 04: The patent clearly talks about icons throughout, and the icons are the buttons you click on to get lists of information. [00:26:37] Speaker 00: Certainly around figure 5A, the icons are distinct from the list in that figure, yes. [00:26:42] Speaker 04: OK. [00:26:43] Speaker 04: So now let's turn to claim nine. [00:26:47] Speaker 04: Because one place where I am struggling a little bit with the board's, and in fact, the examiner's decision, is the idea that the configuration icon limitation [00:27:00] Speaker 04: has been met by what is referred to by the examiner in Cook and Saarinen. [00:27:07] Speaker 04: I'm not sure if I'm saying that right. [00:27:10] Speaker 04: So what this says is you have to have a user interface for configuring icons. [00:27:17] Speaker 04: Now we all know what this means. [00:27:19] Speaker 04: This means moving icons around on your screen. [00:27:23] Speaker 04: Like any time I want to, like my kids, I have this stupid link [00:27:27] Speaker 04: with their phone, and they download Clash of Clans or some dumb game, and it appears on my phone. [00:27:32] Speaker 04: And so I want to get rid of it or move it, so I don't want it on my start screen, that kind of thing. [00:27:36] Speaker 04: Moving icons around, that's what this is talking about. [00:27:39] Speaker 04: An interface for configuring which icons correspond to at least some of the plurality of lists. [00:27:46] Speaker 04: Am I right? [00:27:47] Speaker 04: I mean, do I have the right sense of what this is about? [00:27:48] Speaker 04: It talks about configuring icons, and it distinguishes the icons right in the limitation from lists. [00:27:55] Speaker 00: What am I missing? [00:27:58] Speaker 04: You know where this is going. [00:27:59] Speaker 00: Certainly that's part of configuration. [00:28:01] Speaker 00: And I agree that in the terms of the LeMay application, it uses the example of the video app where the icons and the lists are distinct items. [00:28:11] Speaker 04: The claim, in fact, has the most distinct items, not just in the specification. [00:28:16] Speaker 04: Well, I guess the claim is part of the spec. [00:28:18] Speaker 04: But the claim says, configuring icons which correspond to at least some of the plurality of lists. [00:28:22] Speaker 04: So the claim itself sets out lists on the one hand, [00:28:25] Speaker 04: and icons on the other. [00:28:27] Speaker 00: Yes, Your Honor. [00:28:28] Speaker 00: And I believe where Your Honor is going is we have an argument that for elements four and five, that a portion of the row of the list... I don't know what elements four and five are, and I don't even want to talk about them. [00:28:39] Speaker 04: I'm talking about claim nine. [00:28:41] Speaker 00: Okay, claim nine. [00:28:42] Speaker 04: Claim nine, which requires an interface for configuring icons. [00:28:46] Speaker 04: That allows you to move icons around. [00:28:49] Speaker 04: And that claim, claim nine, actually distinguishes icons from lists in that exact element, not even in a different element. [00:28:55] Speaker 04: But all I can tell that the board and the examiner cited was a reference in Cook, which allows you to edit a playlist, not move icons around, but edit a playlist. [00:29:09] Speaker 04: So I'm not saying from editing a playlist it wouldn't be obvious to maybe be able to configure icons, but that's not what the board found. [00:29:17] Speaker 04: And I can't make that finding for the first time on appeal. [00:29:20] Speaker 04: So what do I do? [00:29:20] Speaker 04: Tell me how Cook discloses editing icons. [00:29:25] Speaker 00: Well, so first of all, there's the broad teaching of Cooke that you have the ability to configure what's shown on the user interface. [00:29:32] Speaker 04: That's not what the board or the examiner pointed to. [00:29:35] Speaker 04: They pointed to Cooke column 8, line 40 to 50. [00:29:38] Speaker 04: So show me where Cooke column 8, line 40 to 50 discloses this element, because that's the only thing the examiner pointed to, and they also pointed to serin in one particular paragraph, but that's just about touch streams. [00:29:48] Speaker 04: So tell me what in Cooke [00:29:51] Speaker 04: Column 8, line 50 to 60, which is where both the board and the examiner said this element is affirmatively disclosed. [00:29:57] Speaker 04: Now, it would be obvious in light of what's disclosed, but it's actually disclosed there. [00:30:02] Speaker 04: Show me where that discloses it. [00:30:05] Speaker 04: It's a long question. [00:30:06] Speaker 04: You can answer. [00:30:07] Speaker 04: I don't think anybody's going to cut you off. [00:30:08] Speaker 00: Thank you, Your Honor. [00:30:10] Speaker 00: So in terms of what is literally disclosed in that portion of Column 8, decided by the examiner, we would agree that there's not a specific recitation [00:30:19] Speaker 00: of moving icons. [00:30:22] Speaker 00: What there is, is a disclosure of actions the user may take that will change the appearance of the user interface that's being displayed on the screen. [00:30:31] Speaker 00: The examiner referenced that portion of the spec, and I think it's a fair reading of that to say that this discloses a general edit or configuration ability. [00:30:40] Speaker 00: And when the examiner discussed element, I'm sorry, claim nine, he pointed out that in the LeMay specification, [00:30:49] Speaker 00: That is only tied to a general edit icon. [00:30:52] Speaker 00: And so we would submit that that is sufficient teaching. [00:30:55] Speaker 00: There are also other portions of Cook that could satisfy that limitation that were not specifically cited by the examiner. [00:31:03] Speaker 00: Thank you. [00:31:05] Speaker 04: Any more questions? [00:31:06] Speaker 04: No, but thank you. [00:31:06] Speaker 04: That was a very good and honest answer to my question. [00:31:09] Speaker 04: I appreciate it. [00:31:10] Speaker 03: Thank you, Mr. Warrick. [00:31:12] Speaker 03: Mr. Davies. [00:31:18] Speaker 01: Just a few points, Your Honors. [00:31:20] Speaker 01: Judge Moore, if we want to rely on the examiner's opinion in this case, I urge everyone to look at Appendix 671, where this examiner says, and this is a quote, citations are exemplary. [00:31:33] Speaker 01: Anyone skilled in the art ought to be able to understand a cited reference in its entirety. [00:31:39] Speaker 01: And that was the tenor of this examiner's attitude, was go read the prior art. [00:31:43] Speaker 01: That's enough. [00:31:43] Speaker 01: And that is not enough. [00:31:45] Speaker 01: This court has been clear that [00:31:48] Speaker 01: What matters in the obviousness context in particular is an explanation. [00:31:53] Speaker 01: KSR is all about unpacking the reasons for why you determined something to be obvious. [00:31:58] Speaker 01: We submitted a 28-J letter recently, no response from the BTO about mere conclusory statements are not enough. [00:32:05] Speaker 01: I mean, this quote is correct. [00:32:06] Speaker 04: But this examiner didn't make mere conclusory statements. [00:32:09] Speaker 04: He went element by element and pointed to precise locations and two different references where each element was present. [00:32:16] Speaker 04: I don't know that it's a fair characterization. [00:32:18] Speaker 04: You're on firmer ground when you say the board sort of flossed over things. [00:32:22] Speaker 04: But I don't feel like your criticism of this particular examiner is warranted. [00:32:28] Speaker 01: We can agree. [00:32:29] Speaker 01: We can leave that as you want, Your Honor. [00:32:32] Speaker 01: I mean, the court needs to give guidance to the pan office generally, then, about what the PTAB's role in this process is. [00:32:39] Speaker 01: We did not mention figure five in our opening brief. [00:32:42] Speaker 04: We also never mentioned motivation to combine. [00:32:44] Speaker 01: No, we're not challenging motivation to combine. [00:32:47] Speaker 01: But figure five is not in our opening brief because it's not in the PTAB's decision and it's not in the examiner's brief to the PTAB. [00:32:55] Speaker 01: We can't have a process where the arguments get fleshed out so late in the day. [00:32:59] Speaker 01: That is not the process that this court wants. [00:33:02] Speaker 01: And with credit to the briefing by the PTO, we pointed out that there's a lot of shifting around of elements mapped onto different figures because it doesn't really hold up. [00:33:12] Speaker 01: And that's what happens when you have a process that doesn't explain itself, as Your Honor has been consistently insisting the Patent Office do. [00:33:21] Speaker 01: So on this record, eight years in, we had a two-year delay from briefing to argument. [00:33:28] Speaker 01: There is nothing else anybody could say about this prior that has not been said. [00:33:34] Speaker 01: And we believe that the appropriate outcome here, particularly in light of recent court decisions from this court, is reversal. [00:33:43] Speaker 01: If there are no further questions. [00:33:45] Speaker 03: Any more questions? [00:33:48] Speaker 03: Any more questions? [00:33:48] Speaker 03: Thank you, Mr. Davis and Mr. Warren. [00:33:51] Speaker 03: The case is taken under submission.