[00:00:00] Speaker 02: Thank you. [00:00:03] Speaker 02: The case will be submitted. [00:00:08] Speaker 02: All right. [00:00:08] Speaker 02: The next case before the court, case number 151867, Motion Games versus Nintendo of America. [00:00:16] Speaker 02: This is an appeal from the Patent Trial and Appeal Board. [00:00:32] Speaker 01: Mr. Underhill? [00:00:34] Speaker 01: Yes, Your Honor. [00:00:35] Speaker 01: You want four minutes for rebuttal? [00:00:36] Speaker 01: Yes, Your Honor. [00:00:38] Speaker 01: OK. [00:00:45] Speaker 01: You may proceed. [00:00:55] Speaker 05: Thank you, Your Honor. [00:00:55] Speaker 05: May it please the Court, I represent the Appellant Motion Games. [00:01:01] Speaker 05: The PTAP incorrectly found that there was no prosecution history disclaimer regarding the claim limitation creating a database in the 607 patent. [00:01:12] Speaker 03: What is the scope of the disclaimer that you're arguing? [00:01:15] Speaker 03: Any correlated database. [00:01:17] Speaker 03: OK, so a database that stores the pattern of targets and nothing else, or a database that stores the pattern of targets and no information about the object? [00:01:30] Speaker 05: Our understanding would be the latter, Your Honor. [00:01:37] Speaker 05: Correlation requires that there be a matching up of the data with the real world features of the object. [00:01:56] Speaker 05: And so it is that matching [00:02:00] Speaker 05: which is correlation and which has been disclaimed in the file history. [00:02:10] Speaker 05: And by way of clarification, your honor, machine vision systems often include conspicuous targets, things like reflectors and LEDs, whose purpose is to improve the ability of the camera to obtain information about a physical object. [00:02:28] Speaker 05: Sometimes, [00:02:29] Speaker 05: the computer must match those detected targets with previously known features of the real world object. [00:02:38] Speaker 02: And that's correlation. [00:02:39] Speaker 02: We get the difference between correlation and uncorrelated. [00:02:43] Speaker 02: What could you possibly use an uncorrelated database for? [00:02:47] Speaker 05: Oh, you could use it for a lot of things. [00:02:48] Speaker 05: And so here would be a great example. [00:02:51] Speaker 05: You're in a manufacturing facility. [00:02:54] Speaker 05: You've got widgets rolling down the line. [00:02:57] Speaker 05: All you want to know. [00:02:59] Speaker 05: Is the widget on the line? [00:03:01] Speaker 05: Or do I have a gap? [00:03:02] Speaker 05: Did it fall off the line? [00:03:04] Speaker 05: So you look for a pattern of targets. [00:03:07] Speaker 05: Pattern, pattern, pattern. [00:03:09] Speaker 05: I don't know where it is on the widget. [00:03:11] Speaker 05: I don't care where it is on the widget. [00:03:13] Speaker 05: I'm just looking for a gap in the assembly line where I look for the pattern and it's not there. [00:03:18] Speaker 05: I don't need any correlation whatsoever. [00:03:20] Speaker 03: That example is in your specification, right? [00:03:24] Speaker 05: I don't think that there are examples in the specification. [00:03:28] Speaker 05: With respect to that, I was going to get to that, Your Honor. [00:03:31] Speaker 05: Yes, it's in Figure 5. [00:03:33] Speaker 05: In Figure 5, the specification describes a scenario where you're going to detect whether a sheet of metal has been folded. [00:03:46] Speaker 05: And the way you're going to do it [00:03:50] Speaker 05: is by comparing the pattern on the metal before and after it should have been folded. [00:03:57] Speaker 05: You're going to look to see whether that pattern changed. [00:04:03] Speaker 05: In column 10, it describes the scenario where the targets have been imprecisely applied, meaning I stick them on there. [00:04:16] Speaker 05: I don't know where on the object it is. [00:04:21] Speaker 05: As a result of their being imprecisely applied, I can't have any knowledge that correlates those targets with any real world information about the object. [00:04:38] Speaker 05: I just can't know it. [00:04:38] Speaker 05: They've been imprecisely applied. [00:04:41] Speaker 05: So that, Judge Stoll, is the example in the specification of the uncorrelated database. [00:04:47] Speaker 00: Let me just make sure I understand the time scope. [00:04:51] Speaker 00: claim is for sensing data, pattern data, and then putting that data into a database. [00:04:59] Speaker 00: And that database cannot include what you call correlated data. [00:05:07] Speaker 00: That's correct. [00:05:07] Speaker 00: It's sensing data, putting what you call uncorrelated data into the database. [00:05:13] Speaker 00: And at the same time, the claim cannot include correlated data. [00:05:19] Speaker 05: With one qualification, if I may, Your Honor. [00:05:21] Speaker 05: All the claims, the independent claims, so obviously the dependent claims, talk about creating a database. [00:05:30] Speaker 05: With respect to that database, the court is correct. [00:05:35] Speaker 05: That database has to be uncorrelated. [00:05:38] Speaker 05: Now, some of the dependent claims do go on to add other possibilities of correlated databases. [00:05:48] Speaker 00: Is that the predetermined database? [00:05:52] Speaker 05: I believe... Claim three? [00:05:53] Speaker 00: I beg your pardon? [00:05:54] Speaker 00: Claim three? [00:05:55] Speaker 05: Let me look, Your Honor. [00:05:57] Speaker 00: Further providing a predetermined database? [00:06:01] Speaker 05: In claim three, the predetermined database is the uncorrelated database, I believe, Your Honor. [00:06:07] Speaker 00: Okay. [00:06:08] Speaker 00: Just curious, why is it a patentable advance to have a database with just uncorrelated data [00:06:21] Speaker 00: And excluding correlated data? [00:06:23] Speaker 00: Because no one had ever thought of it before. [00:06:25] Speaker 05: It probably has... We're just talking about two categories of data. [00:06:30] Speaker 00: I mean, they're very similar to each other. [00:06:33] Speaker 00: They're talking about the same targets with respect to an object. [00:06:38] Speaker 00: One happens to be called uncorrelated. [00:06:40] Speaker 00: The other happens to be called correlated. [00:06:42] Speaker 00: You're dumping them into a database. [00:06:43] Speaker 00: You're saying, please don't put in the correlated data. [00:06:49] Speaker 00: Why am I supposed to be impressed with that? [00:06:51] Speaker 05: OK, well the reason it was extremely impressive is that the whole world was going in a different direction. [00:06:59] Speaker 05: Where the world was going was getting more and more and more data so that robots and computers could do ever more precise tasks. [00:07:12] Speaker 05: So that's what everybody thought. [00:07:13] Speaker 05: We need more data, more data, more data. [00:07:15] Speaker 00: I guess the concern I have is, you know, [00:07:17] Speaker 00: The use of all of this data, maybe there's something interesting going on there. [00:07:22] Speaker 00: But the character of the data being stored in a particular database, and it being stored in two different databases rather than the same database, it just doesn't strike me as particularly impressive. [00:07:37] Speaker 05: Well, the novelty, Your Honor, is that you can build a machine vision system that is based on uncorrelated data. [00:07:46] Speaker 05: no one ever realized or thought that you could do it before. [00:07:49] Speaker 00: And then if you have a claim to that, then OK, maybe that would be patentable. [00:07:54] Speaker 00: But creating a database and saying it only has one type of this kind of data, it doesn't have the other kind, and then all of a sudden telling all of us that that's a patentable advance, that it wouldn't have been obvious to one of skill and the art to have these two characters of data [00:08:14] Speaker 00: split into two databases rather than have them consolidated in a single database should be granted a patent. [00:08:24] Speaker 00: I understand that's not technically what this case is about. [00:08:27] Speaker 00: This case is about disclaimer. [00:08:29] Speaker 00: But I'm just trying to understand why a claim to a database claimed in such a way is interesting. [00:08:38] Speaker 05: It's interesting, Your Honor, because no one had ever thought of it before. [00:08:43] Speaker 05: No one had ever realized that there are, in fact, useful applications for an uncorrelated database. [00:08:53] Speaker 05: I think one of the prior questions was how could this be useful? [00:08:56] Speaker 00: Okay, so I guess in response to my question about why is a database like this non-obvious, it's because of how it would be used, not the actual substance of the database itself with that data in it. [00:09:13] Speaker 05: I think they go together, Your Honor. [00:09:15] Speaker 05: If there's no perceived need for a database like that, then no one is likely to think that I can create a database in this manner. [00:09:30] Speaker 05: And indeed, Your Honor, we would concede that there's probably a relatively smaller number of applications for which an uncorrelated database can be used [00:09:42] Speaker 05: But the we, which is the accused product here, is one of those applications. [00:09:48] Speaker 00: But you've got the correlated data in the second database called the predetermined database. [00:09:53] Speaker 00: No, no, no, Your Honor. [00:09:55] Speaker 00: That's claim three. [00:09:56] Speaker 05: The uncorrelated database does, let me be clear, stand for the object. [00:10:06] Speaker 05: So it's not we're throwing data in and we're forgetting about it. [00:10:12] Speaker 05: Part of the novelty of the claim is that the stored uncorrelated data is now the proxy for the object. [00:10:25] Speaker 05: Now, claim three is a dependent claim. [00:10:35] Speaker 05: So claim one does not have the [00:10:41] Speaker 05: predetermined database that the court is referring to. [00:10:43] Speaker 00: Yes, I know. [00:10:44] Speaker 05: OK, so then I'm missing the point, Your Honor, and I apologize. [00:10:47] Speaker 05: I'm sure you have an excellent one. [00:10:48] Speaker 00: I guess my only point is if you're telling me claim three has the correlated data and claim one has the uncorrelated data, and you're telling me that it would be non-obvious to have the correlated data in a different database than the uncorrelated data, I'm just wondering why. [00:11:07] Speaker 05: I don't think the novelty is having them in two different databases. [00:11:10] Speaker 05: The novelty is creating the, first of all, the novelty is the combination of all the elements, of course. [00:11:18] Speaker 05: But I think what no one else had ever realized and what I do not think exists in the prior art anyplace is the creation of a database with respect to uncorrelated data and using that data to actually stand for the object. [00:11:37] Speaker 02: almost the entire written description talks about correlated data. [00:11:42] Speaker 05: Yes, it does, Your Honor. [00:11:43] Speaker 02: And ultimately, the board said that it doesn't matter if you just try to disclaim correlated data, because if you did, there would be nothing left for your patent. [00:11:56] Speaker 02: In other words, the board found that there really wasn't a claim to the uncorrelated data. [00:12:02] Speaker 05: I certainly agree, Your Honor, with the first part of what the court said, which is I think the PTAB [00:12:08] Speaker 05: did say that the specification largely discusses correlated databases. [00:12:14] Speaker 05: And I will say I think that's where Dr. Pryor was going with the initial claims. [00:12:20] Speaker 05: In light of the rejection with respect to bails, he changed his claims and directed them at the uncorrelated database. [00:12:32] Speaker 05: He did it because he was required to do so. [00:12:34] Speaker 05: He could no longer pursue the correlated database. [00:12:38] Speaker 05: Now, the PTAB makes much of the fact that there are statements in the file history along the lines of this invention comprising, and then the language there is broad enough to uncover both correlated and uncorrelated. [00:13:01] Speaker 05: That's not the issue. [00:13:03] Speaker 05: I could have a file history where I say, [00:13:06] Speaker 05: I claim a car comprising a steering wheel and wheels, and if I have a statement later on that says I disclaim a car with four wheels, excuse me, it's disclaimed. [00:13:18] Speaker 05: There's no issue about it. [00:13:20] Speaker 05: And here we have, I think, the clearest disclaimer there could possibly be, which is the suggested database that the examiner proposes would be obvious from the Bales paper is one which merely correlates targets to the object. [00:13:35] Speaker 05: While in the present invention, there is no such correlation. [00:13:40] Speaker 05: Although it could be done for additional reasons, as noted in certain dependent claims. [00:13:45] Speaker 05: But this would be another different database. [00:13:50] Speaker 05: I do not understand, Your Honor, how that can be anything other than a clear and unequivocal surrender of subject matter. [00:13:58] Speaker 03: I want to go back for a minute. [00:13:59] Speaker 03: Sure. [00:14:00] Speaker 03: The scope of the disclaimer. [00:14:01] Speaker 03: Assuming I agree with you, the disclaimer, what is the scope of it? [00:14:04] Speaker 05: Sure. [00:14:05] Speaker 03: All right, so several times in this same part of the prosecution history that you're reading from right now, you say that the database and the pattern itself now stands for the object. [00:14:17] Speaker 03: You refer to a pattern database. [00:14:19] Speaker 03: You say things like the sense pattern then becomes a database for the object. [00:14:26] Speaker 03: So why is it that your claim, if you're disclaiming anything, your claim is saying, [00:14:32] Speaker 03: the database is the sensed pattern, or the sensed pattern is what's in the database and nothing else. [00:14:39] Speaker 05: Okay, the reason it can't possibly be nothing else is because the statement in the file history that we're pointing to. [00:14:47] Speaker 05: Now, Nintendo may point to all kinds of other file statements. [00:14:53] Speaker 05: We don't have to have a disclaimer in every single sentence. [00:14:59] Speaker 05: Maybe what the court just read is an additional [00:15:02] Speaker 05: disclaimer. [00:15:03] Speaker 03: But the sentence is... Are you saying I'm only allowed to look at the one sentence that you're pointing at? [00:15:11] Speaker 05: No, I think you should look at the entire file history. [00:15:14] Speaker 05: But I am saying, Your Honor, that on my example, I can say lots of times in the file history, my invention is a car comprising a steering wheel and wheels. [00:15:24] Speaker 05: I don't have to say every single time. [00:15:27] Speaker 05: And again, I disclaim the four-wheeled car. [00:15:30] Speaker 02: No, but I think the argument the board is making is that what you said is that my invention is the steering wheel and wheels, and now I just claim wheels. [00:15:38] Speaker 02: But if your invention comprises both, then you've disclaimed your invention. [00:15:44] Speaker 05: I'm sorry, Your Honor. [00:15:45] Speaker 05: Would you run it by me again? [00:15:47] Speaker 02: If your disclaimer was to the actual one of the limitations that you say you claimed and your comprising claim, then that doesn't give you the ability to disclaim some other thing. [00:15:58] Speaker 02: It means that you've disclaimed your actual invention. [00:16:00] Speaker 05: Okay, but I'm not disclaiming creating a database, which is what the claim language says. [00:16:05] Speaker 05: I'm disclaiming only the uncorrelated database. [00:16:10] Speaker 05: And your honor, I don't think there's any issue here that BRI changes the outcome of this case at all. [00:16:20] Speaker 05: In many ways, your honor, I think this case is like the man-machine interface technologies case that Judge O'Malley and Judge Stoll provided two weeks ago. [00:16:29] Speaker 05: which is where the court rejected a PTAP construction in that case, finding that the broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification. [00:16:43] Speaker 05: That was specification disclaimer. [00:16:45] Speaker 05: This is prosecution history disclaimer. [00:16:47] Speaker 05: But I think the result is the same. [00:16:49] Speaker 05: Thank you, Your Honor. [00:16:51] Speaker 02: I am out of time. [00:16:52] Speaker 02: We'll give you two minutes for rebuttal. [00:16:53] Speaker 05: Thank you, Your Honor. [00:17:07] Speaker 04: Your Honors, Motion Games is alleging here the claims at issue were subjected to a disclaimer due solely to prosecution arguments. [00:17:15] Speaker 04: The disclaimer purportedly limits the scope of those claims and saves them from obviousness over Hayes and Haas. [00:17:23] Speaker 04: And Motion Games is wrong for at least three reasons. [00:17:26] Speaker 04: First, Motion Games is asking this court to import into the independent claims through prosecution history disclaimer a negative limitation [00:17:37] Speaker 04: that effectively eliminates several of the dependent claims, specifically claims 12, 14, 20, and 23 as an example. [00:17:46] Speaker 04: And those dependent claims expressly require as part of the database the very subject matter that Motion Games is asserting was disclaimed, and Motion Games is wrong. [00:17:58] Speaker 02: I actually have a real problem with the notion that at the district court you specifically argued that the claim construction should exclude [00:18:07] Speaker 02: correlated databases. [00:18:11] Speaker 04: I'm sorry, Your Honor, in the district court? [00:18:12] Speaker 02: In the district court. [00:18:13] Speaker 04: Oh, you mean when we were doing the training? [00:18:16] Speaker 02: I mean, I don't understand how you... I mean, I see that you argue that those two positions are not inconsistent. [00:18:22] Speaker 01: Yes. [00:18:22] Speaker 02: But they seem about as inconsistent as they could be. [00:18:26] Speaker 02: Your Honor... In the district court, you said, and your proposal was such that there is no correlation of the targets to the object in construing, creating a database of an object. [00:18:37] Speaker 02: And that's exactly the position that Motion Games is taking here. [00:18:44] Speaker 04: But Your Honor, the attempted interpretation in the district court was not just the database. [00:18:51] Speaker 04: Excuse me. [00:18:52] Speaker 04: It was not just those words. [00:18:54] Speaker 04: We never argued disclaimer in the district court. [00:18:59] Speaker 04: We tried instead for a long construction of storing the physical arrangement or configuration in three [00:19:05] Speaker 04: dimensional space of two targets such that there is no correlation of the targets. [00:19:11] Speaker 04: You have to look at the totality of the term that we were proposing. [00:19:15] Speaker 04: You have to also look at the fact that that was rejected, that was not adopted by the court. [00:19:20] Speaker 02: Well, essentially the court said that you were both proposing the same thing and that he just thought that the plaintiff's position was a little more clear with respect to what that proposal was in terms of the words chosen. [00:19:34] Speaker 02: But they both recite an uncorrelated database. [00:19:38] Speaker 04: They both refer to correlation. [00:19:40] Speaker 04: But in a very different context, as part of a compromise construction. [00:19:44] Speaker 04: Remember, as Your Honor well knows, in the district court, when you're doing claims construction, there's a lot of give and take, back and forth. [00:19:53] Speaker 04: And that's what happened here with multiple terms. [00:19:56] Speaker 04: But the end result was that the court did not accept motion games referenced to the three dimensional space and dimension of correlation. [00:20:04] Speaker 04: And in fact, that was opposed by motion games as being improper. [00:20:10] Speaker 04: In fact, the district court went so far as to say that it wouldn't adopt correlation because that would require still further interpretation and claims construction later on. [00:20:21] Speaker 04: And I'm referring now to the record at AO 933 to 935, and then the court's ruling at A 2577 to 78. [00:20:30] Speaker 04: So I don't believe, Your Honor. [00:20:33] Speaker 04: that it is inconsistent, number one. [00:20:35] Speaker 02: Well, the trial court used the language without reference to our knowledge of the physical object itself. [00:20:39] Speaker 02: In other words, the court specifically concluded that we're talking about an uncorrelated. [00:20:47] Speaker 04: Well, Your Honor, I would submit those two terms are not the same. [00:20:50] Speaker 04: And this is one of the problems that we have here because motion games hasn't even been consistent as to what the disclaimer is that they're opting for. [00:20:58] Speaker 04: In the PTAB, what they said was, [00:21:01] Speaker 04: that the disclaimer was without knowledge of or reference to the object. [00:21:07] Speaker 04: That was what they addressed and only addressed in the PTAB. [00:21:10] Speaker 04: And that's what the PTAB addressed and rejected. [00:21:13] Speaker 04: When they got to the district, excuse me, to this court, they introduced the concept of correlated versus uncorrelated. [00:21:21] Speaker 04: If you look at their openings. [00:21:22] Speaker 04: How do those differ? [00:21:23] Speaker 03: Beg your pardon? [00:21:24] Speaker 03: How does that differ? [00:21:25] Speaker 03: I think they are different. [00:21:27] Speaker 03: The language that the PTAB refers to as being their claim construction is the one you say. [00:21:31] Speaker 03: How does that differ from being uncorrelated? [00:21:35] Speaker 04: I think without reference to or knowledge of is broader than correlated or uncorrelated. [00:21:40] Speaker 04: It just means you can't refer to any part of the object with respect to the database. [00:21:47] Speaker 03: What's your interpretation of uncorrelated? [00:21:49] Speaker 04: I will accept their definition of uncorrelated, but without knowledge and reference of, if you look at the dependent claim... What is the definition of uncorrelated? [00:21:58] Speaker 04: That means you don't relate the targets to the particular object. [00:22:03] Speaker 00: Okay, but in the May 2000 amendment, or the remarks, you know, the applicant motion games was to use the phrase, without reference to or knowledge of the physical object itself, [00:22:16] Speaker 00: And then the following paragraph was talking about how Bales doesn't teach that, and its invention isn't at all directed to any kind of correlated data. [00:22:29] Speaker 00: Its invention is really only directed to uncorrelated data. [00:22:33] Speaker 00: The correlated data would be in another comma different comma database. [00:22:37] Speaker 04: Your Honor, I would respectfully disagree with that. [00:22:40] Speaker 04: First of all, the reference in the prosecution history to the without knowledge to or reference of [00:22:47] Speaker 04: the object. [00:22:49] Speaker 04: That appears in a discussion of the use of the database once it is formed. [00:22:54] Speaker 04: Not talking about the database itself. [00:22:57] Speaker 04: In fact, if you look at the sentence immediately preceding that statement, you'll see that they define the database simply as the pattern. [00:23:05] Speaker 04: Nothing more, nothing less. [00:23:08] Speaker 04: When you get to the arguments they make about the correlation language, there I think you have to look at the totality of the [00:23:16] Speaker 04: amendment and what was happening. [00:23:19] Speaker 04: They had just gotten through amending the claims, both the independent and the dependent claims, to abandon the reference to location and to insert instead the reference to a pattern database of discrete targets. [00:23:35] Speaker 04: Now, Bales was the reference. [00:23:39] Speaker 02: This is what they said in May of 2009. [00:23:41] Speaker 02: In the amendment they said specifically the suggested database that the examiner proposes would be obvious from the Bales paper is one which merely correlates targets to the object while in the present invention there is no such correlation and then they go on rather it's the pattern itself which now stands for the object and which is used regardless of a correlation to the actual object. [00:24:01] Speaker 04: Exactly. [00:24:01] Speaker 02: Why isn't that a disclaimer? [00:24:03] Speaker 04: Because regardless says we don't care whether there is correlation or not and in the context of the argument [00:24:10] Speaker 04: It starts with regard to Bales, that the Bales paper does not disclose the use of discrete targets in a pattern as a database. [00:24:18] Speaker 03: What about the present invention? [00:24:20] Speaker 03: In the present invention, there is no such correlation, even if you're right about regardless. [00:24:25] Speaker 03: Isn't that clear? [00:24:26] Speaker 04: No, Your Honor. [00:24:26] Speaker 04: I don't believe it is in the context, certainly not in the context of the total prosecution, which is what you have to look at to see if there's a clear, unmistakable disavowal of claims. [00:24:36] Speaker 00: Right. [00:24:37] Speaker 00: We're zeroing in on this paragraph where it says, in the present invention, there is no such correlation, though it could be done for additional reasons, as noted in certain dependent claims. [00:24:48] Speaker 00: But this would be another, different, database. [00:24:52] Speaker 00: It seems to be pushing hard that correlated data [00:24:57] Speaker 00: is something that goes into a different database than the claimed database. [00:25:02] Speaker 04: What am I missing? [00:25:03] Speaker 04: You're missing, I think, the total context of the argument. [00:25:06] Speaker 04: And number one, it says such correlation. [00:25:08] Speaker 04: So what is such correlation? [00:25:10] Speaker 04: It doesn't say without any correlation. [00:25:12] Speaker 04: It says such correlation. [00:25:14] Speaker 04: What is that referring to? [00:25:15] Speaker 04: If you look at the argument that was being presented at the time, after saying that Bales, and I'm quoting, does not disclose the use of discrete targets as a pattern, [00:25:26] Speaker 04: as a database, they go on to explain what they think Bales shows. [00:25:32] Speaker 04: And whether it's right or wrong, that's what they argue and that's what we look at to determine whether or not there's a disclaimer. [00:25:38] Speaker 04: They went on and they explained that Bales describes spiral strips on a dome cylinder and spots on a line. [00:25:46] Speaker 04: Then they argued the detected portions of the spiral or spots are not then used as a database. [00:25:52] Speaker 04: So the argument over bales had nothing to do with correlation or non-correlation. [00:25:57] Speaker 04: The argument over bales was that it had no pattern in it. [00:26:01] Speaker 04: They didn't care whether it was correlated or not. [00:26:04] Speaker 04: They also said that the sensed locations that they were talking about in bales wasn't relevant anymore because they no longer had sensed locations as the description and definition [00:26:22] Speaker 04: of the pattern, excuse me, of the database. [00:26:24] Speaker 04: They had amended that all to be a pattern database. [00:26:29] Speaker 04: Then they go on and they talk about, well, what does the examiner think is the database made obvious? [00:26:36] Speaker 04: Obviously that's based upon the prior claims, the prior claims that talked about sense location. [00:26:43] Speaker 04: And they say that's not the database that's now being claimed. [00:26:46] Speaker 04: And of course it isn't because now they're claiming a pattern database of discrete targets. [00:26:51] Speaker 04: They then go on and they say that that suggested database by the examiner is one that merely correlates targets to the object. [00:27:01] Speaker 04: So it merely correlates. [00:27:02] Speaker 04: It doesn't show or teach a pattern of discrete targets, which is what the claims were amended to be. [00:27:11] Speaker 04: So that's the distinction an argument over bales. [00:27:14] Speaker 04: Then they say, which merely correlates, I covered that. [00:27:18] Speaker 04: While the present invention, there is no such correlation, not abandoning all correlation, but such correlation. [00:27:26] Speaker 04: And then they go on and they say, regardless of correlation, Bayles is deficient because it doesn't show a patterned database. [00:27:35] Speaker 04: That's the argument that they made. [00:27:37] Speaker 04: And you could not interpret this as a disclaimer because it would vitiate some of the dependent claims that are still in the case [00:27:47] Speaker 04: And these aren't in there by accident. [00:27:50] Speaker 04: These were in there by express amendment, the same amendment that included the pattern database. [00:27:56] Speaker 00: So are you saying that if the remarks here in this amendment were changed to say, our invention is only about uncorrelated data, it doesn't include any correlated data, that we would have to reject such a disclaimer because [00:28:16] Speaker 00: with what you see in the dependent claims going in a different direction? [00:28:19] Speaker 04: It would be inconsistent with the dependent claims and it would be at a minimum therefore ambiguous, uncertain, and therefore doesn't qualify as a... Even really, really, really unambiguous language and [00:28:34] Speaker 00: in the prosecution history by the applicant is something we cannot accept? [00:28:38] Speaker 04: To me, that's a hypothetical, with all due respect, because it's not that simple. [00:28:42] Speaker 04: Okay, we're doing a hypothetical. [00:28:44] Speaker 04: Hypothetically, if they absolutely said and they didn't have a dependent claim that was contrary to that. [00:28:49] Speaker 02: No, his question is, assuming there's a dependent claim. [00:28:52] Speaker 04: Yes. [00:28:52] Speaker 02: It's very clear, unambiguous language. [00:28:54] Speaker 02: Can that ever be a disclaimer if there's a dependent claim that would get disclaimed by that language? [00:29:00] Speaker 04: I don't know of any law on that, Your Honor. [00:29:01] Speaker 04: Logically, to me, if you've got a dependent claim, and let's look, if I may, is claim 20, dependent claim 20. [00:29:09] Speaker 04: It's at A0075. [00:29:12] Speaker 04: That is a claim that depends on claim one. [00:29:16] Speaker 04: They're talking about the database. [00:29:19] Speaker 04: They say that the [00:29:20] Speaker 04: Database further comprises determining an orientation of said object with respect to said sensed pattern of said first and second targets and further creating said database using the determined orientation. [00:29:34] Speaker 04: Now, we pointed this out in our opening brief. [00:29:38] Speaker 04: And in their answering or reply brief, Motion Games, this is at page 11 in a chart, Motion Games dismisses this. [00:29:45] Speaker 04: They admit that that is an orientation. [00:29:49] Speaker 04: Excuse me. [00:29:50] Speaker 04: correlation. [00:29:51] Speaker 04: They admit that that reference to orientation is a correlated database. [00:29:56] Speaker 03: So what it is, is they're saying by having orientation you necessarily would have to have correlation, right? [00:30:04] Speaker 03: Yes. [00:30:04] Speaker 03: And what is your understanding of correlation? [00:30:07] Speaker 04: That there is a relationship somehow of the targets to something about the object. [00:30:12] Speaker 03: Any relationship at all? [00:30:13] Speaker 03: Yes. [00:30:14] Speaker 04: Okay. [00:30:14] Speaker 04: Now, in its broadest sense, that's correct. [00:30:17] Speaker 04: But what Motion Games claimed in their reply brief, in that page 11 in the chart, was that claim 20, the dependent claim, was talking about a later and a different database, and not the database that is originally produced. [00:30:31] Speaker 04: And that's wrong, because if you look at that claim, the claim is talking about said database. [00:30:38] Speaker 04: And the only antecedent basis for said database is the database that is being created in the independent claim one, and is the database [00:30:47] Speaker 04: that we are talking about here and attempting to construe. [00:30:51] Speaker 04: So you've got a dependent claim, claim 20, which is inconsistent with any disclaimer. [00:30:58] Speaker 04: You've got one scrap of sentence out of an overall prosecution history about amendment, the definition of what the database is that is now being claimed. [00:31:11] Speaker 04: You've got one statement [00:31:13] Speaker 04: I would suggest that that's an ambiguous statement. [00:31:15] Speaker 04: It is not clear and it does not qualify as a disavowal, a clear disavowal of claim scope. [00:31:23] Speaker 04: In fact, during the course of the prosecution, the applicant, this is after the amendment, the applicant was asked in the preceding office action specifically, tell me, the examiner, what is the database and how is that database formed? [00:31:39] Speaker 04: How is it created? [00:31:43] Speaker 04: They had a golden opportunity at that point in time, if they had really a disclaimer in mind, to tell the examiner what the database was. [00:31:52] Speaker 04: It wasn't all databases that were patterns of discrete targets, according to their argument now. [00:31:59] Speaker 04: But they were something less. [00:32:00] Speaker 02: Do Hei and Haas have patterned databases? [00:32:04] Speaker 04: Hei and Haas have the same databases that are claimed in the patent. [00:32:10] Speaker 03: That's what the... Are they correlated or uncorrelated? [00:32:14] Speaker 04: Or are they both? [00:32:15] Speaker 04: Well, there's an interesting question. [00:32:17] Speaker 04: They are as uncorrelated as the description and the specification on which motion games relies for the concept of an uncorrelated database. [00:32:29] Speaker 04: That's column 10, lines 10 to 12. [00:32:33] Speaker 04: That's the only description in the context of, I believe it's figure five. [00:32:38] Speaker 04: All it says is that if you don't know what the exact pattern is, you take a picture of it. [00:32:44] Speaker 04: You monitor the pattern to see what it is. [00:32:48] Speaker 04: But it says absolutely nothing in that section of the specification that there can't be other things that are photographed at the same time that show the relationship of the targets to features of the product. [00:33:03] Speaker 04: And in fact, that is claim 12 and claim 14, the dependent claims, where they talk about [00:33:09] Speaker 04: Additionally, the database has knowledge of the surface. [00:33:16] Speaker 04: They teach uncorrelated data by the definition that is utilized by motion games, because if that scrap of disclosure in the specification... Okay, so they teach correlated data. [00:33:29] Speaker 04: What about uncorrelated data? [00:33:30] Speaker 04: Yes, that's what I'm saying. [00:33:31] Speaker 04: It's uncorrelated, as is the description on which motion games relies [00:33:37] Speaker 04: to support the concept of an uncorrelated database in their own patent specification. [00:33:42] Speaker 02: So you're saying there's something like semi-correlated? [00:33:45] Speaker 04: Your Honor, I'm happy. [00:33:47] Speaker 04: If they want to interpret their specification to say that all you do is take a picture of a pattern, and that's an uncorrelated database, that is done specifically by both Hayes and Haas. [00:34:02] Speaker 04: So that to the extent they're correct, [00:34:04] Speaker 04: that that disclosure in the specification is an uncorrelated database that is specifically taught in both Hay and Hobbes. [00:34:12] Speaker 04: And that scrap of disclosure in their specification says nothing about great importance, groundbreaking invention. [00:34:23] Speaker 00: I know you're over your time, but if we were to conclude there's a disclaimer, then there would still be an obviousness argument here in light of Hay and Hobbes? [00:34:32] Speaker 04: Oh, absolutely. [00:34:33] Speaker 04: And we argued, we argued before the PTAB that even if you were to accept the motion games interpretation, still the patent, the claims at issue are unpatentable because Ofhei and Haas disclose an uncorrelated database to the same extent that it's disclosed in the patent in suit. [00:34:55] Speaker 04: So the patent docs never had to reach that. [00:34:57] Speaker 00: Without any correlated data. [00:34:59] Speaker 04: without any correlated data. [00:35:01] Speaker 04: Yes, uncorrelated data. [00:35:02] Speaker 04: We made that specific argument before the PTAB. [00:35:05] Speaker 04: PTAB didn't have to reach that because it concluded there was no disclaimer. [00:35:09] Speaker 04: And we submit they did it properly. [00:35:11] Speaker 04: The PTAB looked at the specification, the claims. [00:35:14] Speaker 04: They looked at the arguments. [00:35:16] Speaker 04: And they concluded there was no evidence of clear, unmistakable disavowal of claim scope. [00:35:21] Speaker 04: And we believe they were entirely correct. [00:35:24] Speaker 03: Do you agree that in some circumstances, [00:35:27] Speaker 03: I'm not saying whether it applies here, but in some circumstances, there could be a prosecution history where someone has a prosecution history disclaimer that only relates to certain claims in the patent. [00:35:37] Speaker 04: Not if they're independent and dependent claims. [00:35:40] Speaker 04: I don't see how you could. [00:35:41] Speaker 04: But wait a minute. [00:35:43] Speaker 04: I'm sorry. [00:35:44] Speaker 04: I'm going backwards. [00:35:46] Speaker 04: You could have a prosecution disclaimer, I suppose, that would be applicable to only some claims. [00:35:53] Speaker 04: But in this situation, [00:35:55] Speaker 04: where your independent claims define the database as a pattern of discrete targets, and you're trying to interpret, construe that database, and you're trying to say it excludes certain something, you can't say that it's excluded if you've got a dependent claim, as you do here, which actually includes it. [00:36:16] Speaker 04: Because by definition, the dependent claim has to be narrower [00:36:21] Speaker 04: than the independent claim and has to include all of those limitations. [00:36:26] Speaker 04: So a dependent claim can't suddenly vitiate the breadth of an independent claim by removing a limitation. [00:36:34] Speaker 04: You can't do that. [00:36:36] Speaker 04: That's standard. [00:36:37] Speaker 04: Thank you. [00:36:37] Speaker 04: Thank you, Your Honor. [00:36:39] Speaker 02: Mr. Underhill will actually give you three minutes for rebuttal since we went over. [00:36:42] Speaker 05: Thank you so much, Your Honor. [00:36:50] Speaker 05: Nintendo argues that Motion Games, the applicant, got over the bail's rejection by amending the claims to change sense location to sense pattern. [00:37:04] Speaker 05: This is completely wrong. [00:37:06] Speaker 05: And I would refer the court to the appendix at page 480 to 81. [00:37:12] Speaker 05: This is the explanation by the applicant for the change. [00:37:19] Speaker 05: The change was in response to a 112 rejection, not the 103 rejection. [00:37:24] Speaker 05: The applicant makes it very clear. [00:37:26] Speaker 05: There had been a rejection for written description. [00:37:29] Speaker 05: So the applicant changed from sense pattern to sense locations. [00:37:34] Speaker 05: That's the reason for the change. [00:37:36] Speaker 05: Now, I do want to be clear. [00:37:39] Speaker 05: Sense pattern is not inherently correlated. [00:37:43] Speaker 05: So for example, if you have a pattern, let's say it's an equilateral triangle. [00:37:48] Speaker 05: and the widgets are coming down the assembly line. [00:37:51] Speaker 05: And maybe you're looking to see if the widget is there or not there, which was my example before. [00:37:57] Speaker 05: So you're looking for an equilateral triangle, and either it's there or it's not there, and you know the widget's there or it's not there. [00:38:03] Speaker 05: Or maybe the equilateral triangle is at the top of the widget, you know, three inches from the top. [00:38:10] Speaker 05: And maybe what you're looking for is whether or not the widget is standing upright or whether it's in a different orientation. [00:38:17] Speaker 05: So this idea of whether or not you're using a sense pattern determines correlation or uncorrelation is incorrect. [00:38:29] Speaker 05: It's the unambiguous, unequivocal statement in the file history that says, we do not have the correlated database like Bales. [00:38:41] Speaker 02: How do you deal with the dependent claims? [00:38:43] Speaker 05: I don't think the dependent claims are difficult, Your Honor. [00:38:46] Speaker 05: We have set forth in the reply brief and I think our explanations are completely correct that every example in the dependent claims is something that can happen down the line. [00:38:58] Speaker 05: We all know that correlation can happen down the line. [00:39:02] Speaker 05: That's in Figure 5. [00:39:03] Speaker 05: There's a lot going on in Figure 5, which is correlation. [00:39:06] Speaker 03: You say it's a separate database. [00:39:07] Speaker 03: I beg your pardon? [00:39:08] Speaker 03: You say it's a separate database that that information would be stored in. [00:39:12] Speaker 05: Or you could go back to the original database, and you could make changes to the original database. [00:39:18] Speaker 05: Maybe you use the original database to do something, and then later you change the original database. [00:39:25] Speaker 00: So then the scope of your negative limitation that you added in prosecution history is time sensitive? [00:39:31] Speaker 00: Like at one time, you can never have correlated data. [00:39:35] Speaker 00: But then sometime down the line, yeah, it's OK. [00:39:38] Speaker 00: We can have correlated data in our created database. [00:39:41] Speaker 00: Is that your argument? [00:39:42] Speaker 05: No, Your Honor. [00:39:43] Speaker 05: I do think that the disclaimer, and it's always been about correlation. [00:39:47] Speaker 05: There's never been any issue about what we were arguing was a disclaimer based on correlation. [00:39:51] Speaker 05: is with respect to the creation of the database. [00:39:53] Speaker 02: The dependent claims require correlation, correct? [00:39:57] Speaker 02: I'm sorry? [00:39:57] Speaker 02: The dependent claims call for correlation. [00:40:00] Speaker 05: Several of them do, Your Honor, which is exactly what the disclaimer says, is that there is correlated databases in some of the dependent claims. [00:40:06] Speaker 05: It's right there. [00:40:07] Speaker 05: In the created database, though. [00:40:09] Speaker 02: Yeah, you've got to encompass the created database in order to have a dependent claim, right? [00:40:14] Speaker 05: Yes, indeed. [00:40:15] Speaker 05: So there has to be one database which is uncorrelated. [00:40:17] Speaker 05: I completely agree. [00:40:19] Speaker 00: There has to be one. [00:40:19] Speaker 00: But the dependent claims talk about then adding further data into that database. [00:40:26] Speaker 00: And that further data is correlated data. [00:40:29] Speaker 00: That's the question that we have to you. [00:40:32] Speaker 05: I think it is referring to a different database. [00:40:36] Speaker 03: But it says said database. [00:40:38] Speaker 05: You're talking about claim 20, Your Honor? [00:40:43] Speaker 05: Different database. [00:40:44] Speaker 05: I would understand that, Your Honor, to mean a second database. [00:40:48] Speaker 03: No, it says said database, which refers back to the database in the first claim. [00:40:53] Speaker 05: Which is referring to the first database. [00:40:56] Speaker 05: You take a database and you create a second database is how I would read it. [00:41:00] Speaker 05: I will grant, Your Honor, I don't think Claim 20 is a model of clarity. [00:41:04] Speaker 05: What is a model of clarity is the disclaimer itself. [00:41:10] Speaker 05: I'd also like to point out, Your Honor, that repeatedly [00:41:12] Speaker 00: What if we find Claim 20 to be a model of clarity? [00:41:16] Speaker 00: I don't think you could. [00:41:18] Speaker 05: Let's say we do. [00:41:20] Speaker 05: Now what? [00:41:20] Speaker 05: Okay, I'll go with that hypothetical. [00:41:23] Speaker 05: I am aware of no law that says that the disclaimer does not apply because there's some dependent claim for which that does not work. [00:41:35] Speaker 05: We're talking about the public notice function here of the prosecution history. [00:41:39] Speaker 05: When you have a statement that says, my database is not the database of bails because it's not correlated, we have to respect that. [00:41:47] Speaker 00: The degree of your disclaimer in the May 2000 Amendment, it doesn't appear that it needed to go so far as to say, our database is for uncorrelated data, and we disclaim or correlated data. [00:42:08] Speaker 00: Because bails, the obvious variant of bails, was, according to the examiner, teaching the storage of correlated data. [00:42:19] Speaker 00: And so all you would need to overcome bails is to say, well, we teach uncorrelated data. [00:42:26] Speaker 00: So the fact that the prior art teaches correlated data is of no moment. [00:42:29] Speaker 00: We are patently distinguishable over that. [00:42:33] Speaker 00: There wouldn't be a need to overcome bails to additionally say, and not only [00:42:39] Speaker 00: is our claim directed towards uncorrelated data, but we absolutely cannot include any correlated data. [00:42:48] Speaker 00: And Your Honor, that is... You see my point? [00:42:50] Speaker 00: Yes, I do. [00:42:51] Speaker 00: It was elective disclaimer, to the extent it's a disclaimer. [00:42:55] Speaker 05: OK, but the court's case law says, in construing disclaimer, we can't look behind what the applicant needed to do. [00:43:05] Speaker 05: We would have chaos. [00:43:07] Speaker 05: if disclaimer only applied in circumstances where after the fact it was concluded by a tribunal, that that statement was necessary to get over the prior argument. [00:43:17] Speaker 02: What about the use of the word such correlation? [00:43:21] Speaker 02: In other words, your friend on the other side is arguing that actually what you just disclaimed was the precise correlation in bails, not all correlation. [00:43:31] Speaker 05: I think that's an unnatural reading of the language and it's also [00:43:35] Speaker 05: not what Nintendo understood in the District Court. [00:43:38] Speaker 05: Nintendo's own language in the District Court was such that there is no correlation of the targets to the object. [00:43:44] Speaker 05: That's how Nintendo understood that language. [00:43:47] Speaker 05: I would also point out, Your Honor, that in the... I think you're going to need to wrap up. [00:43:51] Speaker 02: We've gone way over. [00:43:51] Speaker 05: Thank you. [00:43:52] Speaker 05: In the PTAB, there are numerous statements which make it clear that we were, in fact, arguing to the PTAB that the disclaimer is no correlation. [00:44:02] Speaker 05: And I'm just going to give a couple sites. [00:44:04] Speaker 05: One is the appendix at 0890, one is the appendix at 2636, and one is the appendix at 2659. [00:44:14] Speaker 05: Thank you, Your Honor. [00:44:17] Speaker 02: The case will be submitted.