[00:00:00] Speaker 00:
that the term is introduced for the first time in the art in this patent.

[00:00:05] Speaker 00:
And both the intrinsic and the extrinsic records support that.

[00:00:08] Speaker 00:
It's unequivocal.

[00:00:09] Speaker 00:
So under the court's rules of claim construction, I'm particularly talking about Redetto and Bell Atlantic, the court must look to the specification for a definition of the term.

[00:00:21] Speaker 00:
And the definition can be implied.

[00:00:24] Speaker 00:
Here, the patentee uses the claim term in the entire patent specification

[00:00:30] Speaker 00:
consistent with a particular meaning.

[00:00:33] Speaker 00:
And that meaning is our proposed construction.

[00:00:35] Speaker 00:
And now there are six statements, clear, unequivocal, some repeated more than once, that establish our definition.

[00:00:45] Speaker 00:
First, the tiles, quote, replace the functionality of a user's desktop and offer similar and additional features.

[00:00:53] Speaker 00:
That's at column 10.

[00:00:54] Speaker 00:
Second, the specification repeatedly states, unequivocally,

[00:01:00] Speaker 00:
that tiles perform the bookmark function.

[00:01:03] Speaker 00:
That's at column 4, column 11, and column 8.

[00:01:07] Speaker 00:
Anyone of skill in the art, and indeed in the patent specification it's described, knows that a bookmark is persistent and that it is assigned to the information source of which the bookmark pertains.

[00:01:20] Speaker 03:
You have, as I correct me if I'm wrong, three particular components of the claim construction that you are proposing.

[00:01:30] Speaker 03:
something about assigned information, second is persistence, and the third is immediate access.

[00:01:37] Speaker 00:
Access upon selection, yes.

[00:01:39] Speaker 03:
But immediate access upon selection.

[00:01:41] Speaker 03:
But I want to start with assigned and associated, and I will confess I'm having a very hard time understanding what the distinction is.

[00:01:49] Speaker 03:
I kept reading the sentences, particularly I guess in your reply brief in which you tried to explain it, and it could just be me, but I still don't get it.

[00:01:57] Speaker 00:
Right.

[00:01:58] Speaker 00:
It's actually very simple, and we did make it more complicated than it was.

[00:02:04] Speaker 00:
So essentially, and this gets to the next specification reference I was going to get to, the patent says when a tile is selected, the tile instantly provides the user with access to the underlying information.

[00:02:18] Speaker 00:
And the associated with quote from the claims in the spec more refers to

[00:02:27] Speaker 00:
the tile being associated with an information source when it's not being selected.

[00:02:34] Speaker 00:
And so that when the selection process occurs, you then go to the information source that it's associated with.

[00:02:44] Speaker 00:
And the reason that's important is one of the pieces of prior art doesn't do that.

[00:02:49] Speaker 00:
One of the pieces of prior art, if you select the tile or the item

[00:02:57] Speaker 00:
it will go to a link or a hotspot that is within the tile that isn't necessarily or even often is the information source that's the subject of the tile.

[00:03:08] Speaker 00:
So the way I think about it, the selection upon access and the assigned kind of go hand in hand, because the notion is that you select the tile and then, boom, you go to that which is assigned.

[00:03:23] Speaker 00:
And that's also the bookmark.

[00:03:26] Speaker 00:
references that I cited a moment ago.

[00:03:29] Speaker 03:
So just try one more time.

[00:03:31] Speaker 03:
Suppose that your assigned and immediate access view were correct, then what work would be doing in the claim by the other language about associated?

[00:03:46] Speaker 00:
So that if the tile were not being selected, it would be associated with the information source.

[00:03:51] Speaker 00:
So in other words, if the tile was just

[00:03:54] Speaker 00:
on the desktop, and you weren't accessing it, it would be associated with an information source, and according to the patent, you would have a view into the application or the information source at that point.

[00:04:09] Speaker 00:
But then the assign function takes into account when you actually select the tile, you go to the information source that's viewed in the tile.

[00:04:19] Speaker 00:
And under one of the pieces of prior art, you don't.

[00:04:23] Speaker 00:
And the patent's very clear.

[00:04:24] Speaker 00:
that the references I've already gone through, and I'm going to go through two more now.

[00:04:30] Speaker 00:
The patent's very clear that the whole purpose of the thing is you view the information source, select it, and then you go to that information source that you're viewing, not somewhere else.

[00:04:41] Speaker 00:
And you don't need a link or a hotspot or something else that you add to the tile in order to access the information source.

[00:04:48] Speaker 00:
And the next two quotes and the last two quotes that I have on this actually talk about that.

[00:04:54] Speaker 00:
So fifth, the tile and grid structure, quote, overlays the user's desktop and resides over existing applications without replacing any of them and enables the applications to be called from the grid.

[00:05:11] Speaker 00:
That's the assigned access.

[00:05:13] Speaker 00:
Where is this, Mr. O'Hara?

[00:05:16] Speaker 00:
This is the column 11 roundabout line 15.

[00:05:20] Speaker 00:
And then,

[00:05:24] Speaker 00:
dropping down to the bottom of that same section around column 30, it makes clear that in doing the grid assign function, the calling of the grid that I just talked about, it, quote, replaces the user's desktop with a dynamic menuing system.

[00:05:43] Speaker 00:
And then the last quote I'll offer is the patent clearly says the present invention comprises a grid of tiles that reside on the computer's desktop.

[00:05:53] Speaker 00:
So those quotes are not descriptions that were preferred and bonded.

[00:05:59] Speaker 00:
They are descriptions of characteristics that the tiles have to have, or else the statements wouldn't be true.

[00:06:06] Speaker 00:
So if a tile isn't persistent, it can't be a bookmark.

[00:06:10] Speaker 00:
It can't replace the desktop that we all use.

[00:06:13] Speaker 00:
It can't be a menu item on the desktop if it's not persistent.

[00:06:18] Speaker 03:
If a tile... I'm sorry, persistent in your view means what?

[00:06:22] Speaker 00:
Preserved from session to session.

[00:06:25] Speaker 00:
Preserved from session to session.

[00:06:27] Speaker 03:
And automatically appearing on the screen or preserved in, you know, on the hard drive?

[00:06:33] Speaker 00:
No, no, preserved on the screen.

[00:06:35] Speaker 00:
So that when you boot up the screen, you have, it replaces the existing desktop.

[00:06:41] Speaker 00:
You have the icons that you had before, they're preserved from session to session.

[00:06:46] Speaker 00:
So then you don't have to

[00:06:47] Speaker 00:
set up your desktop anew each time.

[00:06:50] Speaker 03:
So you said that these are more than embodiment descriptions.

[00:06:58] Speaker 03:
Correct.

[00:06:59] Speaker 03:
How do we know that?

[00:07:01] Speaker 03:
Almost all the language, not quite all that you quoted, but almost all of it comes in the detailed descriptions of the preferred embodiment.

[00:07:08] Speaker 00:
Right.

[00:07:08] Speaker 00:
But if you look at the nature of what is being described, it's not being described as a preferred embodiment.

[00:07:15] Speaker 00:
For example,

[00:07:16] Speaker 00:
that replace the user desktop.

[00:07:18] Speaker 00:
It's not that the invention replaces the user desktop in a preferred embodiment.

[00:07:24] Speaker 00:
That's what the invention does.

[00:07:25] Speaker 00:
That's the core of it.

[00:07:27] Speaker 03:
The present invention... Just to take that one alone, and I don't have this as a concept as opposed to a specific thing in the spec, but you could have a single session replacement of the user desktop.

[00:07:40] Speaker 03:
That doesn't require persistence.

[00:07:44] Speaker 03:
I could say today I want, I don't know, the Windows 8 desktop.

[00:07:51] Speaker 03:
But tomorrow I want Windows 3.1, some of us.

[00:07:56] Speaker 00:
Well, Your Honor, I don't think that's consistent with the way the specification describes it.

[00:08:02] Speaker 00:
I mean, the way the specification is describing it is it can go on top of the existing desktop situation.

[00:08:12] Speaker 00:
It's a grid structure.

[00:08:13] Speaker 00:
It resides on it.

[00:08:16] Speaker 00:
It's a memory system.

[00:08:17] Speaker 03:
Well, the first use of resides, I think, is in the summary of the invention, but that says the grid, not necessarily a particular tile.

[00:08:25] Speaker 00:
It says a grid of tiles.

[00:08:26] Speaker 03:
Right, but it doesn't say that each tile within it has to be the same from session to session, even assuming resides means persistence across sessions.

[00:08:38] Speaker 00:
Oh, I think that's what it means.

[00:08:42] Speaker 00:
And I think if you read the patent in its entirety, the context of it is you've got a grid that has a bunch of tiles on it that serve as a replacement for the icons, that are menus, that serve as menus, so that you can click on a tile and go to that, and it's assigned immediately.

[00:09:01] Speaker 03:
Well, I was going to ask you about what resides means.

[00:09:04] Speaker 03:
And now I don't have the citation anymore, but your first quotation from the spec five minutes ago about resides was from somewhere else in the spec.

[00:09:15] Speaker 00:
There's three place.

[00:09:16] Speaker 00:
Well, there's two places.

[00:09:17] Speaker 03:
You said the resides and overlays or something.

[00:09:20] Speaker 03:
Where, where was that?

[00:09:21] Speaker 00:
That is at column 11, around about line 15.

[00:09:26] Speaker 03:
Right.

[00:09:26] Speaker 03:
So that, that usage seems to be talking using resides.

[00:09:31] Speaker 03:
to mean not something like my residence for tax purposes or something.

[00:09:37] Speaker 03:
It means this is where you're going to find it.

[00:09:42] Speaker 03:
Find it permanently.

[00:09:43] Speaker 03:
Well, I'm not sure it does.

[00:09:45] Speaker 03:
This seems to be using the term resides over existing applications without carrying a notion of session to session non-transit.

[00:09:55] Speaker 00:
Well, I would not agree with that, Your Honor.

[00:09:58] Speaker 00:
Because if you go down to the bottom of that same paragraph, it says,

[00:10:01] Speaker 00:
It replaces the user's desktop with a dynamic menuing system.

[00:10:06] Speaker 00:
So I've used laptops and regular devices.

[00:10:14] Speaker 00:
The icons come back.

[00:10:16] Speaker 00:
I mean, you don't want to reconfigure your desktop every time you start it.

[00:10:21] Speaker 00:
And that's what that's referring to.

[00:10:23] Speaker 00:
And then the other quote that the court referred to is at column four, lines 37 to 8.

[00:10:29] Speaker 00:
And that's where it says the present invention comprises a grid of tiles that reside on the user's desktop.

[00:10:36] Speaker 00:
And the patent really uses the term grid and tiles interchangeably.

[00:10:41] Speaker 00:
The grid is the structure on which the tiles sit or reside, and it covers the desktop.

[00:10:49] Speaker 03:
Just tell me what's wrong with, and you clearly do think there's something wrong with saying, when it says the grid resides,

[00:10:58] Speaker 03:
So you can have, say, a six-tile grid, and that comes up next time you boot up the computer or whatever it is.

[00:11:09] Speaker 03:
But numbers two and four may be in the same space, but it's no longer the CNN, it's now the National Weather Service or something.

[00:11:22] Speaker 00:
No place in the patent describes that.

[00:11:24] Speaker 00:
No place.

[00:11:25] Speaker 00:
Every single

[00:11:26] Speaker 00:
place in the patent, including those that I just described, describe it as it is a permanent fixture unless you change it.

[00:11:37] Speaker 03:
And not just the six tile structure, but actually the content of each tile.

[00:11:42] Speaker 00:
Yes.

[00:11:42] Speaker 00:
I think all of those references, if you read the patent in its entirety, I think all of the references, when it talks about a grid, it talks about tiles that are placed in the grid.

[00:11:54] Speaker 00:
Your Honor, I'm into my rebuttal time if you... Why don't you preserve it?

[00:12:01] Speaker 03:
Okay, I like it.

[00:12:07] Speaker 02:
May it please the court.

[00:12:08] Speaker 02:
Good morning, my name is Joe McAuliffe.

[00:12:10] Speaker 02:
I represent the Apple eMicrosoft.

[00:12:13] Speaker 02:
The board found each of the four primary prior art references disclosed tiles that, when selected, provided access to an information source.

[00:12:21] Speaker 02:
Those findings were based not only on the disclosures of the references, but the testimony of Dr. Karger, an expert in the field, and various other pieces of evidence we put into record.

[00:12:31] Speaker 02:
Those are factual findings supported by substantial evidence, and they're entitled to deference in this court.

[00:12:37] Speaker 02:
Now, the surfcasts.

[00:12:38] Speaker 03:
But whether they're legally material depends on claim construction, which has only a component being factual.

[00:12:45] Speaker 03:
So why don't we talk about the three claim construction issues?

[00:12:48] Speaker 02:
OK.

[00:12:49] Speaker 02:
The first one is there.

[00:12:51] Speaker 02:
is not a claim construction issue.

[00:12:53] Speaker 02:
I would argue their argument about the meaning of the word access.

[00:12:57] Speaker 02:
What they're really doing is arguing or disagreeing with how the board applied that part of the claim interpretation to the prior art.

[00:13:04] Speaker 02:
And that's a fact question, which is, again, entitled to deference.

[00:13:08] Speaker 03:
But even if you... And that's because they did not make essentially a claim construction argument to the board that the access term really should mean immediate access or one-click access or without further steps access.

[00:13:24] Speaker 02:
That and the fact that the actual phraseology of the interpretation when select provides access was from their proposed interpretation.

[00:13:32] Speaker 02:
They can't appeal that.

[00:13:34] Speaker 02:
They proposed that language and yes they never said

[00:13:37] Speaker 02:
that it's a special kind of access.

[00:13:39] Speaker 03:
Am I right in thinking that you need to be right about more than that issue in order to prevail?

[00:13:47] Speaker 03:
Suppose you were wrong about persistence and wrong about assignment, but right about you don't need immediate access.

[00:13:55] Speaker 02:
I think if I'm right about that on the access issue, I think you need to affirm, because as we put in our brief,

[00:14:06] Speaker 02:
All these prior art references show assignment and association, even if you could find a difference between the two.

[00:14:11] Speaker 03:
But I don't think, again, correct me if I'm wrong, that the board made findings as to those proposed elements of the proper claim construction, applying them to the prior art.

[00:14:29] Speaker 02:
That's true, because they rejected them as a claim construction.

[00:14:33] Speaker 02:
But for example, they're not even arguing

[00:14:35] Speaker 02:
that MSIE kit and Chen are not persistent.

[00:14:41] Speaker 02:
And I think the board may have actually made some comments about that.

[00:14:44] Speaker 02:
But as we put in our brief, all those things show persistence and assignment.

[00:14:49] Speaker 02:
And I think it's plain on the face of them.

[00:14:52] Speaker 02:
So I think that you can affirm even if you disagree with us on those things.

[00:14:58] Speaker 02:
I would like to say one other thing about access.

[00:15:01] Speaker 02:
Now, we've pointed out there are examples

[00:15:05] Speaker 02:
of tiles that have not, you click on it and you're given the ability to manipulate things like the mail tile, just like some of the references in the past.

[00:15:15] Speaker 02:
We also pointed out that Mr. Santoro said in a deposition that access could be just viewing it.

[00:15:21] Speaker 02:
And there's a very important point I want to make about that.

[00:15:24] Speaker 02:
That deposition testimony was given to me a few days before CerfCast filed its preliminary response in the IPR, six months before it filed its formal response.

[00:15:34] Speaker 02:
So that definition of access was on the table, and they knew it.

[00:15:39] Speaker 02:
And they never said a word about it.

[00:15:41] Speaker 02:
They never went to the board and said, no, no, no, it's got to be immediate access.

[00:15:46] Speaker 02:
It's only here for the first time.

[00:15:49] Speaker 02:
I don't think the court should hear that argument in the first instance.

[00:15:52] Speaker 02:
They had an obligation to say that this is certain.

[00:15:56] Speaker 03:
Can you talk about the other two claim construction issues?

[00:16:00] Speaker 02:
So as far as persistence.

[00:16:03] Speaker 02:
The patent never says tiles are persistent.

[00:16:06] Speaker 02:
It says items in the meta-base are persistent.

[00:16:09] Speaker 03:
Well, it says the grid of tiles resides.

[00:16:13] Speaker 03:
So what does that mean?

[00:16:14] Speaker 03:
And that's not even it.

[00:16:15] Speaker 03:
That's in the summary of the invention.

[00:16:16] Speaker 02:
And as we pointed out below, that could be just for one session.

[00:16:21] Speaker 02:
In fact, one of the prior art references we relied on in response to the motion to amend had icons that resided solely for a session.

[00:16:30] Speaker 02:
They went away when your session was done.

[00:16:32] Speaker 02:
So resides could be for a session, could be for session to session.

[00:16:37] Speaker 02:
Dr. Carter testified, and we cited this in our reply brief, that in the prior ARD there were windows that were persistent, but there were also windows that were not persistent.

[00:16:47] Speaker 02:
So graphical user interface elements in the prior ARD could be persistent, could not be persistent.

[00:16:54] Speaker 02:
It was just a feature, one facet that one could program into the system.

[00:17:00] Speaker 02:
So resides must be interpreted

[00:17:03] Speaker 02:
with that background in mind could be for one session or another.

[00:17:06] Speaker 03:
What in the specification gives us an indication that in this context, when it says a grid of tiles that resides on the computer's desktop, doesn't mean what SurfCast says it means.

[00:17:23] Speaker 03:
It allows the possibility that it would be

[00:17:28] Speaker 03:
like an Airbnb residence just for a day or two.

[00:17:31] Speaker 02:
A number of things.

[00:17:32] Speaker 02:
First of all, it never says tiles are persistent from session to session, like I said.

[00:17:35] Speaker 03:
But does it ever separate?

[00:17:37] Speaker 03:
Does it ever contemplate the possibility that the grid abides, but the tiles don't?

[00:17:44] Speaker 02:
Yes, because it also says that the tiles can be obtained from a remote server.

[00:17:48] Speaker 02:
And the more fulsome description of that embodiment in column 22 specifically says that when you change things in that embodiment,

[00:17:56] Speaker 02:
things can be saved from session to session, not are, can be, optional.

[00:18:02] Speaker 02:
And of course, the only use of that word, persistent, is in that one passage in column 15, which is expressly described as a preferred embodiment.

[00:18:12] Speaker 02:
So there is nothing in the discussion.

[00:18:15] Speaker 03:
So address the, I don't know, more gestalt argument that Mr. Malkov makes, that you read this as a whole, and what this is about,

[00:18:26] Speaker 03:
is about replacing the desktop that you were given with another one, and that's what's going to now come up, because it better suits your taste.

[00:18:37] Speaker 02:
It's not, because those statements are isolated statements in a detailed description.

[00:18:42] Speaker 02:
If you read this from start to finish, you'll see what they're talking about is an application program, not a new operating system.

[00:18:50] Speaker 02:
It's something that you can launch like a word processor or a browser or an email program

[00:18:55] Speaker 02:
You can launch it today, maybe tomorrow you won't, and will it cover your entire screen just like Microsoft Word might cover your entire screen?

[00:19:03] Speaker 02:
Maybe.

[00:19:04] Speaker 02:
Maybe not.

[00:19:05] Speaker 02:
But it's just an application program.

[00:19:08] Speaker 02:
It's not intended to get rid of the operating system.

[00:19:12] Speaker 02:
Can it be used without using the underlying operating system or at least the

[00:19:17] Speaker 02:
graphical user interface.

[00:19:18] Speaker 03:
Right, but the fact that it's an application program certainly doesn't exclude the possibility that this is a particular kind of application that's supposed to give you a new user interface permanently.

[00:19:30] Speaker 02:
That's right.

[00:19:30] Speaker 03:
Until you willfully change it or something.

[00:19:32] Speaker 02:
I think that's right.

[00:19:33] Speaker 02:
And perhaps if they went to the patent office and wrote a claim that said desktop replacement, then they might be able to get a claim that would do that.

[00:19:41] Speaker 02:
But they don't have a claim in this patent that says anything about that.

[00:19:45] Speaker 02:
And in fact,

[00:19:46] Speaker 02:
They never asked the board to interpret the claims to require that functionality.

[00:19:51] Speaker 02:
Never.

[00:19:52] Speaker 02:
So I don't think desktop replacement is even an issue in this appeal.

[00:19:56] Speaker 02:
It couldn't be.

[00:19:57] Speaker 02:
It was never decided below, never argued below.

[00:20:00] Speaker 02:
What was argued was, when selected, it provides access to an information source.

[00:20:05] Speaker 03:
Wait, persistence was argued, because the board has tested it.

[00:20:08] Speaker 03:
Persistence is from session to session.

[00:20:10] Speaker 03:
The next time I turn the computer on,

[00:20:12] Speaker 03:
It's going to have, you know, the look of, is that, is it Windows 8 that has the grid structure now?

[00:20:18] Speaker 02:
Yeah, Windows 8 did.

[00:20:21] Speaker 02:
But the patent never says that.

[00:20:23] Speaker 02:
It never says that the tiles are persistent on the screen.

[00:20:26] Speaker 02:
It says items in the database are persistent.

[00:20:29] Speaker 02:
That's different.

[00:20:30] Speaker 02:
Just because there's some, even information about tiles in a database doesn't mean that they pop up every time you turn on your screen.

[00:20:37] Speaker 02:
It never says tiles are persistent on the screen.

[00:20:41] Speaker 02:
anywhere.

[00:20:42] Speaker 02:
And Mr. Alcock can come up here, he can't give you a site that it does.

[00:20:45] Speaker 02:
Because we all know the one place the word is used is column 15.

[00:20:50] Speaker 02:
And what it says is, and I know it by heart, items in the Metabase are persistent.

[00:20:55] Speaker 02:
And that's all it says.

[00:20:56] Speaker 03:
And so can you make an attempt to explain what you understand the differences between this assigned to a source and as a claim construction of

[00:21:09] Speaker 03:
the term tile and the other claim language associated with the source.

[00:21:14] Speaker 02:
I have no idea.

[00:21:15] Speaker 02:
I mean, they've never articulated any distinction whatsoever.

[00:21:18] Speaker 02:
The board said, if it's the same thing as superfluous, if it means something different, it's inconsistent with the claims and the specification.

[00:21:24] Speaker 02:
They have never, and I didn't understand what Mr. Alcock said.

[00:21:28] Speaker 02:
He seems to be, and I will say this about that, they have continually refused to treat our primary case.

[00:21:34] Speaker 02:
And he did that with that example, where there is some functionality

[00:21:38] Speaker 02:
in one reference or two where you click on the tile, prior tile, and a different window opens up.

[00:21:45] Speaker 02:
That was not our primary case, and they have never treated our primary case.

[00:21:50] Speaker 02:
Our primary case was you have a tile, prior tile, like an active desktop item.

[00:21:55] Speaker 02:
If you select it by mouse click or keyboard manipulation, the user is permitted to move around in that tile, not another window, in that tile.

[00:22:06] Speaker 02:
is permitted to manipulate things in that tile, such as activate a hyperlink.

[00:22:11] Speaker 02:
That has always been our primary case.

[00:22:14] Speaker 02:
In fact, to disagree with us, I respectfully submit that the board would have to rule that a user who has been given the ability to see a web page and activate links on it has not been provided access to that web page.

[00:22:28] Speaker 02:
That's absurd.

[00:22:29] Speaker 03:
And that's because that's what active desktop did.

[00:22:33] Speaker 02:
Active desktop items permitted you to click on them,

[00:22:36] Speaker 02:
click on a link in the web page, move around in the web page, highlighting different links, activating different links.

[00:22:45] Speaker 02:
And that was our primary case.

[00:22:46] Speaker 02:
And their briefs just go to the utmost, to avoid treating that at all.

[00:22:51] Speaker 02:
They point to webpages without hotspots and links.

[00:22:55] Speaker 02:
We never relied on any of that.

[00:22:57] Speaker 02:
They point to this other functionality, which is disclosed in the MSIE kit, that you can configure it so another

[00:23:05] Speaker 02:
web browser window will open, they simply ignore the main case we put it forward.

[00:23:18] Speaker 02:
If I may, Your Honor.

[00:23:20] Speaker 02:
The last point I'd like to make, Your Honor, is the board did not abuse its discretion by denying the motion to amend or by denying the request to put the claims in an appendix

[00:23:34] Speaker 02:
Page limits, of course, and limits on briefing are parts of every legal tribunal.

[00:23:40] Speaker 03:
Right, and sometimes they can be unfair.

[00:23:44] Speaker 02:
Sometimes they can be potentially unfair.

[00:23:46] Speaker 03:
They had, what, 52 claims.

[00:23:48] Speaker 03:
And the statute contemplates, doesn't entitle, but it contemplates one substitute claim for each claim.

[00:23:58] Speaker 03:
If they had put 52 claims in 15 pages and then tried to make an argument about

[00:24:04] Speaker 03:
the meaning of the terms that they were introducing, the written description support, how each one of them, claim by claim, is both supported in the spec and overcomes prior art.

[00:24:15] Speaker 03:
How could they possibly have done that in 15 pages?

[00:24:19] Speaker 02:
Well, they couldn't with 52 pages.

[00:24:22] Speaker 02:
But it's a reasonable number of pages.

[00:24:26] Speaker 02:
And they had the ability to convince the board to do something different.

[00:24:29] Speaker 02:
They didn't actually ask for anything more

[00:24:31] Speaker 03:
No, and I understand the waiver argument, but the sufficiency argument to actually make the arguments, even if they put the claims in the appendix, to make all of the arguments for 52 claims is not entirely clear to me, although I will also say they haven't specified what they would have said, specified here what they would have said.

[00:24:54] Speaker 02:
Well, more importantly, Your Honor, they haven't specified what they did say.

[00:24:58] Speaker 02:
It was their burden.

[00:24:59] Speaker 02:
They were the movement.

[00:25:00] Speaker 02:
It was their burden.

[00:25:02] Speaker 02:
They didn't have the call transcribed, and they've made no attempt to show this court what was actually said on that call.

[00:25:09] Speaker 02:
So I was on that call.

[00:25:11] Speaker 02:
I can't tell you today I remember exactly what was said.

[00:25:14] Speaker 02:
I'm fairly certain the words due process were not mentioned.

[00:25:18] Speaker 02:
But it was their burden to do that, and their burden to show you that they gave the board sufficient reason to waive the limit or change the rules.

[00:25:27] Speaker 02:
They haven't done that.

[00:25:32] Speaker 02:
It's all I have, Your Honor.

[00:25:33] Speaker 02:
I'm willing to, unless the Court has other questions for me, I'll see you at the time.

[00:25:37] Speaker 02:
No, thank you.

[00:25:38] Speaker 02:
Thank you.

[00:25:48] Speaker 03:
Is it Shawn Feltz?

[00:25:50] Speaker 01:
Yes, Shawn Feltz, yes.

[00:25:51] Speaker 03:
Thank you.

[00:25:52] Speaker 01:
May it please the court.

[00:25:53] Speaker 01:
The PTO is intervening only for the motion to amend issue, which is the very narrow issue of whether or not when the board followed its own rules it abused its discretion by requiring SERF caps to include a claim listing in its motions to amend.

[00:26:08] Speaker 03:
As you just heard, the... Could you assume with me, just, that your rules allowed this and that the real question is, is there something wrong, say, APA wrong?

[00:26:21] Speaker 03:
Forget even the due process clause, just APA wrong.

[00:26:26] Speaker 03:
Notice and a sufficient opportunity to actually address things.

[00:26:31] Speaker 03:
How is the opportunity that they had here sufficient to meet that APA requirement?

[00:26:39] Speaker 03:
And maybe you're going to say they didn't ask, end of story.

[00:26:43] Speaker 03:
But that's what I'm interested in, not in whether they violated

[00:26:47] Speaker 03:
whether the board violated the regulations or even violated due process, but the more robust statutory opportunity argument.

[00:26:57] Speaker 01:
Right.

[00:26:57] Speaker 01:
So as you mentioned, I mean, the regulation and the synopsis case, it was found that the board had the authority to require the claims listings in the 15 pages.

[00:27:07] Speaker 01:
And as you mentioned as well, the argument that they did not properly ask and they didn't show an abusive discretion is also a valid argument.

[00:27:17] Speaker 01:
You know, 15 pages is, I mean, there's nothing that says that 15 pages is not a sufficient amount of pages to amend their claims and describe the patentability of their claims.

[00:27:39] Speaker 01:
The statute, like you said, it contemplates that you can provide

[00:27:44] Speaker 01:
a substitute claim for each claim, but doesn't entitle you to.

[00:27:48] Speaker 01:
I mean, as with any page limit, you have to choose what you want to do.

[00:27:52] Speaker 01:
I mean, when you're briefing to this court, you have to choose what arguments that you make.

[00:27:56] Speaker 03:
And if they wanted to show, say, to us how they were prejudiced, what do you think that they would have to show?

[00:28:09] Speaker 03:
Assume with me again, I want to focus on prejudice, just assume contrary to your position that it was well understood by all the participants in the conference call in which the board panel said you have to put them in the claims also meant

[00:28:29] Speaker 03:
we're not going to give you more space.

[00:28:31] Speaker 03:
I realize you contest that assumption.

[00:28:33] Speaker 03:
But assume that then it seems to me the argument here comes down to they just haven't shown in a case-specific way that they were prejudiced by this.

[00:28:45] Speaker 03:
What do you think that they would have to show to try to make such a case?

[00:28:49] Speaker 01:
Well, I think they would have to show that they had specifically asked, that they had said that they wanted to amend this many claims.

[00:28:54] Speaker 01:
They wanted to come forth with these amendments

[00:28:57] Speaker 01:
and make certain arguments, and that they would not be able to fit those arguments in the pages.

[00:29:01] Speaker 01:
But I do think in this case, when we're looking at deference to the board's decision and abusive discretion for the board following its own rules, it would be very difficult for them to show that the board abused its discretion.

[00:29:13] Speaker 01:
Maybe if their claim was 20 pages, so there was no possible way that each claim, I mean that they could fit any claim, that they could amend any claim into their amendment, that would be an abusive discretion.

[00:29:25] Speaker 01:
They are facing a tough challenge here.

[00:29:27] Speaker 01:
Are there any further questions?

[00:29:33] Speaker 01:
Nope, I think.

[00:29:33] Speaker 01:
Thank you.

[00:29:33] Speaker 03:
Thank you.

[00:29:38] Speaker 00:
So I've got three minutes.

[00:29:40] Speaker 00:
I want to address three topics.

[00:29:42] Speaker 00:
One, Erdetto.

[00:29:44] Speaker 00:
This is a case that is just like Erdetto.

[00:29:48] Speaker 00:
The term is not explicitly defined, but Erdetto is all about when the term

[00:29:54] Speaker 00:
has no meaning of skill in the art, you have to look at the spec and draw the characteristics of it.

[00:30:00] Speaker 00:
Second, persistence.

[00:30:03] Speaker 00:
It's impossible to be a bookmark without being persistent.

[00:30:07] Speaker 00:
It can't be done.

[00:30:09] Speaker 00:
And the patent in three places says the tiles are bookmarks.

[00:30:16] Speaker 00:
For your reference, Your Honor, it's column four lines, one through five, 11, 50 to 52.

[00:30:22] Speaker 03:
I'm sorry, which columns?

[00:30:24] Speaker 00:
4, 1 through 5, 11, 50 to 52, and 8, 31 to 32.

[00:30:30] Speaker 00:
That, in addition to all the other things that I talked about with persistence, means that there's no way that the patentee couldn't have persistence as an essential characteristic of a tile.

[00:30:48] Speaker 00:
Third, and my last point, I'll give one more try at the assigned thing.

[00:30:53] Speaker 00:
because I'm making it way more complicated than this.

[00:30:57] Speaker 00:
The board below did not apply this claim construction to any of the prior art.

[00:31:05] Speaker 00:
Each of the pieces of prior art miss one or two elements of this claim construction, either persistence and assigned, assigned and immediate access, whatever.

[00:31:17] Speaker 00:
Our construction was

[00:31:19] Speaker 00:
It did.

[00:31:20] Speaker 03:
I'm sorry to interrupt, but if I were to think that you are not entitled for waiver or other reasons to the immediate access construction, but possibly entitled to the other two, what's the disposition?

[00:31:42] Speaker 00:
I think it would need to be reversed and remanded.

[00:31:45] Speaker 03:
Because there is some prior art that might

[00:31:49] Speaker 03:
fall out even under the two-thirds construction.

[00:31:54] Speaker 00:
And Your Honor, the instant access point is we're not saying instant in terms of time.

[00:32:02] Speaker 00:
What we're saying, the construction we proposed, is when selected, it provides access.

[00:32:08] Speaker 00:
And selected means however you select the tile.

[00:32:12] Speaker 00:
You can double-click it.

[00:32:13] Speaker 00:
You can pass the mouse over it.

[00:32:16] Speaker 00:
Whatever mode of selection,

[00:32:18] Speaker 00:
That provides access.

[00:32:20] Speaker 00:
And then I'll get to the assign point, because it's the same quote.

[00:32:25] Speaker 00:
The tile instantly provides the user with access to the underlying information when selected, when selected.

[00:32:32] Speaker 00:
And so what that means, and then on column, that's column 9, line 25, if you look at column 8 at the top, it says how it's different from an icon.

[00:32:45] Speaker 03:
I'm sorry, I'm confused about this.

[00:32:47] Speaker 03:
The board's construction is a graphical user interface element whose content may be refreshed and that, when selected, provides access to an information source.

[00:33:00] Speaker 03:
Right.

[00:33:00] Speaker 03:
So what is it you're saying?

[00:33:03] Speaker 03:
That they didn't include with respect to this immediate access point?

[00:33:08] Speaker 00:
Well, the way they're interpreting that is just like an icon.

[00:33:13] Speaker 00:
And column 8 at the top,

[00:33:16] Speaker 00:
says that with an icon, it doesn't provide access when you select it.

[00:33:21] Speaker 00:
It provides the ability to get access when you select it.

[00:33:24] Speaker 00:
So you click on an icon, and then you click again, and you get to the program.

[00:33:30] Speaker 00:
Whereas the patent describes only the selection process provides access.

[00:33:36] Speaker 00:
Or when selected, you have access to the information source.

[00:33:40] Speaker 00:
It's not a two-step process.

[00:33:42] Speaker 00:
And they are not

[00:33:44] Speaker 00:
applying the construction.

[00:33:46] Speaker 00:
I mean, the words there say provide access, but I mean, I have a laptop in the back.

[00:33:51] Speaker 00:
I have access to my information.

[00:33:53] Speaker 00:
I have to go back there, open it, turn it on, click it, get in, and I have access to the information.

[00:33:59] Speaker 00:
That's not the access that they're talking about here.

[00:34:02] Speaker 00:
The access that the patent talks about is when selected, you have access to the information.

[00:34:09] Speaker 00:
Not doing five different steps like the prior art icons, and that's

[00:34:14] Speaker 00:
That's the distinction.

[00:34:17] Speaker 03:
Can you wrap up?

[00:34:18] Speaker 00:
Yes.

[00:34:19] Speaker 00:
And then the last point, I'll try again on this assigned thing.

[00:34:23] Speaker 00:
So the patent says the tile instantly provides the user with access to the underlying information.

[00:34:32] Speaker 00:
That's the underlying information that is the tile.

[00:34:36] Speaker 00:
And so it is also the information that is associated with the tile.

[00:34:42] Speaker 00:
But when you select,

[00:34:44] Speaker 00:
you go to that which it's assigned to.

[00:34:47] Speaker 00:
The associated language refers to merely in a static operation, when you're looking at the screen and you see the tile, and it is associated with an information source.

[00:35:00] Speaker 00:
But this part of the definition requires that, OK, then when you select it, you go to the information source, not somewhere else.

[00:35:09] Speaker 00:
OK.

[00:35:09] Speaker 00:
Thank you, Mr. Alcock.

[00:35:10] Speaker 00:
Thank you.

[00:35:10] Speaker 00:
Case is submitted.

[00:35:13] Speaker 04:
All right.