[00:00:09] Speaker 00: Thank you, Your Honors, and may it please the court once again. [00:00:13] Speaker 00: The patent in this case, the 772 patent, another thin case patent, this covers another specific aspect of the media ecosystem invented by Russell White in the year 2000. [00:00:25] Speaker 00: And here, the core of this patent is the dual download functionality. [00:00:31] Speaker 00: And this is the ability for a wireless device to request media content and then to have that content delivered [00:00:40] Speaker 00: to both a wireless device and a personal computer in response to that one single request. [00:00:46] Speaker 00: And this is the core issue here, and the core error here is a claim construction issue ultimately we submit, and it's the PTO's failure to adequately appreciate what this dual download functionality entails. [00:01:01] Speaker 00: Now, for the panel's reference, the claim is at appendix five. [00:01:06] Speaker 00: It's set forth in the board's decision. [00:01:07] Speaker 00: You'll see there that [00:01:09] Speaker 01: both the board and as you'll see in the party's briefing, everybody refers to these last three limitations as... I'm having a hard time seeing how the language, your argument is that the language, as I understand it, is that the language in response to the request in the third limitation from the end of the claim, that phrase, that should be read as applying to all three of the last limitations of the claim, that it qualifies them. [00:01:37] Speaker 01: and that everything that occurs after in response to receiving their press must occur after that, and there can't be any more intervening steps. [00:01:44] Speaker 01: Is that how I should understand your argument? [00:01:47] Speaker 00: Yeah, that is our argument. [00:01:48] Speaker 01: How can you argue that when it's a comprising claim? [00:01:51] Speaker 00: Well, I would argue that I think the key, one, the claim should be read sequentially, and I'll point to a couple things. [00:01:57] Speaker 01: I agree it should be read, it could be read, well, I don't know if it should be read sequentially, but it doesn't mean there can't be intervening steps. [00:02:03] Speaker 01: Regardless of whether it's read sequentially or not, [00:02:06] Speaker 01: Why couldn't there be intervening steps? [00:02:08] Speaker 00: I would argue that there are no intervening steps set forth in the claim. [00:02:12] Speaker 01: That's right, but it's a comprising claim. [00:02:15] Speaker 01: And so that means that something that has intervening steps could either infringe the claim or invalidate the claim if it's prior. [00:02:26] Speaker 00: I would agree that we're interpreting more narrow than just [00:02:32] Speaker 00: I understand the comprising language. [00:02:33] Speaker 00: I think we're interpreting it more narrowly, consistent. [00:02:35] Speaker 00: I'll point you to a couple of things in the specification that talk about how the core functionality is this ability to receive a request and then send the content to two different devices. [00:02:46] Speaker 00: Without any additional requests? [00:02:49] Speaker 00: Without any additional requests. [00:02:50] Speaker 00: And I think part of that is innate in the making available element itself. [00:02:56] Speaker 00: in that what you have in the making available element is the content doesn't just pre-exist and then it's just sent at some indeterminate amount of time. [00:03:04] Speaker 00: It's made available. [00:03:06] Speaker 00: And I think that that's one of the arguments that the PTO and the petitioner, I'm sorry, and the intervener here have suggested is that the content can just exist and then be sent in response to a request and multiple requests. [00:03:21] Speaker 00: It doesn't read the limitations together as we submit they should be. [00:03:26] Speaker 04: So what, what, what, what, what in the, I don't know, in the specifications description of what was invented here, distinguishes these two readings. [00:03:38] Speaker 04: One says you get a request and then you set it up and put the stuff on the shelf. [00:03:44] Speaker 04: And then you later, obviously, after they're on the shelf, the two things you send them to each thing. [00:03:52] Speaker 04: But in their version, the board's version. [00:03:55] Speaker 04: Putting it on the shelf is what has to be done in response to the request. [00:04:01] Speaker 04: But maybe additional requests are needed for each of the items from the shelf. [00:04:07] Speaker 04: Your version is no more requests. [00:04:12] Speaker 04: How do we figure out why you're right that no more requests for what you have made available? [00:04:19] Speaker 04: Because made available sounds like maybe it's send it if asked. [00:04:24] Speaker 00: I think the first part of the answer to that question is to look at the last two limitations in the sending steps and how those are written. [00:04:31] Speaker 00: Those refer back to the third limitation. [00:04:34] Speaker 00: So what I believe you've just described, Your Honor, is just the general concept of making something available and then sending it. [00:04:42] Speaker 00: And here, the last two elements, I think, are more specific than that. [00:04:46] Speaker 00: They're sending content that is made available in the third limitation. [00:04:50] Speaker 00: So the last two limitations, you're sending [00:04:53] Speaker 00: a first version of selectable content to a specific device, and then in the last limitation, you're sending a second version of selectable content to a second device. [00:05:04] Speaker 00: And they're specific devices. [00:05:06] Speaker 00: So I don't know if that answers your question, Your Honor, but I think that's the distinguishing characteristic over just the general putting something on a shelf and then sending it at a later time. [00:05:18] Speaker 00: And I think... Just looking at the claim, I mean, looking at your [00:05:23] Speaker 03: third limitation in response to receiving a request. [00:05:27] Speaker 03: There's making a first version available, making a second version available, semicolon. [00:05:32] Speaker 03: Then there's the fourth limitation, sending the first version, semicolon. [00:05:36] Speaker 03: Then there's the fifth limitation, sending the second version, period. [00:05:43] Speaker 03: I would agree with you if you didn't have the semicolons and all these different actions were clustered together [00:05:51] Speaker 03: in a single paragraph limitation, then you're probably on to something that in response to receiving the request, all of these various actions are happening in response to that request. [00:06:03] Speaker 03: But when it's divided out like this through semicolons, it does start to make it look like, or at least it's not unreasonable to look at the claim and see the fourth and fifth limitations as being separate actions. [00:06:20] Speaker 03: we're supposed to be using the broadest reasonable interpretation. [00:06:24] Speaker 03: So I guess that's what I'm struggling with. [00:06:27] Speaker 00: Yeah. [00:06:27] Speaker 00: And I think even under a broadest reasonable interpretation, and I'd point the court to the proxicon case here, the construction still has to reasonably reflect not only the plain language of the claim, but also the specification, which I'd like to point. [00:06:43] Speaker 01: I was going to say, is there a specific part of the specification? [00:06:47] Speaker 00: The appendix site is 2885 and it's column 16 of the patent. [00:06:54] Speaker 00: And there's a couple of paragraphs and I'll just point to some kind of key language. [00:06:57] Speaker 00: In respect to the making available piece, the patent talks about how the format of the download may match or conform to selected destination devices. [00:07:11] Speaker 00: And then it goes on to talk about how a user may select a plurality of devices as destination devices for receiving... What specifically are you reading from? [00:07:22] Speaker 04: What column, what line? [00:07:24] Speaker 00: I should be at column 16, lines four. [00:07:28] Speaker 04: Four, okay. [00:07:29] Speaker 00: Yep. [00:07:30] Speaker 00: Three and four. [00:07:32] Speaker 00: And I think what's also quite important in this case is with respect to the specification language, and I don't mean to make the [00:07:41] Speaker 00: panel jump around, but in the right of appeal notice, the examiner looked at these elements, looked at this aspect of the specification and said that they appear to support the claim dimension and more specifically, the dual download concept as we've argued it. [00:07:59] Speaker 00: And that's at 1670 of the appendix. [00:08:01] Speaker 00: So it's not just our reading of the claims, it's not just how we view the specification, it's also the examiner in this instance. [00:08:11] Speaker 00: So ultimately, I think the construction and whether the panel accepts that or not is the key dispositive issue. [00:08:19] Speaker 00: And under our construction, there shouldn't be any dispute that the references here don't disclose dual download functionality. [00:08:27] Speaker 00: And again, I think this isn't the examiner's answer. [00:08:31] Speaker 00: This is pretty clearly set forward that the only three references here are Rolf [00:08:38] Speaker 00: I'm sorry, Brooks, Rolfe, and Van Zost, and none of those references disclose the dual download functionality, and I'll just put down a couple sites here. [00:08:47] Speaker 00: At 2213 of the examiner's answer, there's a direct quote that neither Brooks nor Rolfe appear to enable the sending of content to two different devices on a singular request, so they don't disclose the dual download functionality. [00:09:03] Speaker 00: And then later on in the examiner's answer, at 2216, the examiner [00:09:09] Speaker 00: concludes the same with respect to Van Zost, that it does not appear to teach the additional step of actually downloading two different versions of content in two different devices. [00:09:19] Speaker 00: So I don't think there shouldn't be any dispute here that the references themselves don't teach this. [00:09:24] Speaker 00: Now both the board and the intervener here have suggested that somehow, despite the fact that none of these references teach this functionality, that their combination would somehow render it obvious. [00:09:36] Speaker 00: And I would submit that when the references don't explicitly or expressly teach it, I don't know how there'd be anything else in the record evidence in this case that would teach or suggest to one skill in the art the functionality. [00:09:48] Speaker 03: Well, just so I can unpack this, let's assume for the moment that the board's claim construction is right on your dual download feature, that it doesn't require what you're arguing. [00:10:06] Speaker 03: Then what would your argument be about the obviousness combination of either the Brooks-Rolf combination or the Rolf-Vanzost combination? [00:10:18] Speaker 00: Well, Your Honor, if the panel were inclined to accept the board's construction, I would have to concede that the breadth that the board has construed the claim would be met by the combinations in this case. [00:10:32] Speaker 03: So your argument about the combinations [00:10:35] Speaker 03: are really predicated on us adopting your proposed construction of the claim. [00:10:41] Speaker 00: That's correct, Your Honor. [00:10:42] Speaker 00: OK. [00:10:44] Speaker 00: And if there are no questions at this time, I'll yield the balance. [00:10:47] Speaker 00: Thank you. [00:10:47] Speaker 04: Thank you. [00:10:54] Speaker 02: Morning. [00:10:54] Speaker 02: May it please the court? [00:10:56] Speaker 02: Just following up on the claim construction issue, I think Appellant pointed to A2885, column 16. [00:11:06] Speaker 02: lines three through five for support and inspect for their narrow construction. [00:11:11] Speaker 02: I just wanted to point out, this actually talks about just one embodiment. [00:11:16] Speaker 02: It says a user may select a plurality of devices as destination devices for receiving downloads. [00:11:23] Speaker 02: It doesn't actually talk about sending the selected file to those devices. [00:11:28] Speaker 02: It just talks about selecting the devices. [00:11:31] Speaker 02: And if you look [00:11:33] Speaker 02: back at 2882. [00:11:35] Speaker 04: Would your argument actually be any different if it said for sending, I mean all that language would assume then to say you select the prices for sending and [00:11:47] Speaker 04: But you may have to hit two buttons and say send to this and send to the other one. [00:11:51] Speaker 04: It doesn't... Right. [00:11:53] Speaker 02: The point is it's not actually sending the files in response to one request. [00:11:58] Speaker 02: It's just selecting the devices you want to send it to. [00:12:00] Speaker 02: And just bear with me. [00:12:02] Speaker 02: If you look at column 10 at 2082, lines 49 to 51, it actually gives another example of sending it to more than one device. [00:12:13] Speaker 02: It says you can send it to your own device. [00:12:15] Speaker 02: And then it says, starting at line 49, [00:12:17] Speaker 02: you can send a friend link may also be provided allowing a user to send selective audio information to a friend's electronic device. [00:12:26] Speaker 02: But that's sending a link, so presumably the friend would have to then click on the link, which would be another request to actually send the file. [00:12:34] Speaker 01: I think Judge Toronto's point was that even if it did say that you could do the dual download function, how do you read that into the claim? [00:12:44] Speaker 01: How does that change anything, even if the specification said you may do it this way? [00:12:49] Speaker 01: How would we read that into the claim? [00:12:51] Speaker 02: Yeah, that's a good point, because you're right. [00:12:53] Speaker 02: That's just one embodiment, and it would actually be improper to read the claims focused on just one very narrow embodiment, especially under the VRI standard. [00:13:02] Speaker 02: And when you look at the rest of the specification, it talks about downloading content to just one selected device. [00:13:10] Speaker 02: It's not focused on this dual download limitation. [00:13:14] Speaker 02: As Judge Cheng correctly pointed out, the dual download limitation is three separate limitations, and since it has that comprising language, it certainly encompasses allowing a second request, for example. [00:13:33] Speaker 02: So unless there's further questions. [00:13:35] Speaker 04: Can I ask you a question about the 317? [00:13:37] Speaker 04: A question I realize we may have exhausted that issue, but there's the same [00:13:44] Speaker 04: threshold argument you make in this case, as you did in the earlier one, about they basically haven't exhausted that. [00:13:56] Speaker 04: To what review forum would an exhausted claim of that sort go? [00:14:05] Speaker 04: To here or to the Eastern District of Virginia or where? [00:14:07] Speaker 02: No, it would go to the agency. [00:14:09] Speaker 04: I think in this... After the agency is done, so the agency says, yeah, we really meant it, then what? [00:14:15] Speaker 04: Where is that judicially reviewable? [00:14:18] Speaker 02: It's not considered by the board, because the board doesn't consider a petition for denial of a petition to terminate. [00:14:24] Speaker 02: It would come up to the Federal Circuit, or I guess if they filed a 145 action, it could go to district court. [00:14:29] Speaker 03: Okay, but it wouldn't be a civil action in [00:14:36] Speaker 03: Eastern District of Virginia under the APA. [00:14:40] Speaker 03: It would get packed together with the final decision by the board. [00:14:45] Speaker 02: I believe that's correct. [00:14:46] Speaker 03: And then it would be part of an appeal here. [00:14:48] Speaker 02: I believe so, yes. [00:14:50] Speaker 02: And in this case, Apple settled. [00:14:54] Speaker 02: And so the case was dismissed without prejudice because Apple had settled out. [00:15:00] Speaker 02: There was no final decision with respect to Apple that they had failed to meet their burden of proving the invalidity of any claim in this case. [00:15:06] Speaker 02: That's why the petition to terminate was denied. [00:15:12] Speaker 02: Unless there's any further questions, we'll sit down. [00:15:15] Speaker 02: Thank you, Mr. McBride. [00:15:21] Speaker 00: Thank you, Your Honor. [00:15:24] Speaker 00: I just want to clear up two things real quick. [00:15:26] Speaker 00: Again, this is on the training instruction issue. [00:15:28] Speaker 00: The first is counsel's reference to column 10 of the patent. [00:15:34] Speaker 00: That's talking about sending a link [00:15:36] Speaker 00: That's not the dual download functionality. [00:15:38] Speaker 00: So I would refer the panel back to column 16, which is the one embodiment that does discuss this. [00:15:44] Speaker 00: And I think as a last point, it's important to note that this was decided in the re-examination. [00:15:53] Speaker 00: And again, this is at 1670. [00:15:56] Speaker 00: And I'll just read from what the examiner said here. [00:16:02] Speaker 00: And this is the examiner quoting [00:16:05] Speaker 00: examining the passages that I've just cited to you in column 16. [00:16:10] Speaker 01: Are you suggesting that the examiner's decision or what the claims mean takes precedence over what the PTAB says the claims mean? [00:16:19] Speaker 00: I think it's certainly relevant and suggests that the PTAB's decision should not stand. [00:16:26] Speaker 00: I mean, I don't know that it takes precedent, but I think that the fact that the issue was [00:16:33] Speaker 00: looked at by the examiner who looked at the whole record and had the most time with the patent and with the issues in this re-examination, looked at it, decided that the claim should be read to have dual download functionality. [00:16:46] Speaker 00: I think that that's relevant. [00:16:48] Speaker 01: But the PTAB would review that de novo and what standard of review do we apply to the PTAB's claim construction? [00:16:55] Speaker 00: I think it's de novo under ProxyCon, especially here where you have, I think that [00:17:00] Speaker 00: primarily the issue is the intrinsic evidence and what the patent says. [00:17:07] Speaker 00: Thank you Your Honor. [00:17:07] Speaker 00: Thank you. [00:17:08] Speaker 00: The case is submitted.