[00:00:03] Speaker 01:
Thank you.

[00:00:38] Speaker 02:
The next argued case is number 162198, Inray CFRD Research Incorporated, against in this case, defended by the director.

[00:00:50] Speaker 02:
We appreciate the next three cases are related.

[00:00:53] Speaker 02:
So let's take whatever time we need to present the situation here.

[00:00:58] Speaker 02:
So please proceed, Mr. Fahmy.

[00:01:00] Speaker 00:
Thank you, Your Honor.

[00:01:02] Speaker 00:
I may please the court.

[00:01:04] Speaker 00:
Your Honor, as Judge Newman just mentioned, this is the first of three cases involving the same patent that you're going to hear.

[00:01:11] Speaker 00:
And the issue in this particular appeal was the question of anticipation by the fan San Jose reference.

[00:01:20] Speaker 00:
And in this opinion, the board concluded that fan San Jose teaches the specifying step of claim one.

[00:01:29] Speaker 00:
And they reasoned that the specifying step

[00:01:32] Speaker 00:
need not take place before the discontinuing step, and then surmise that in Fan San Jose, the second device would be specified when the user takes some action on the second device to resume a session.

[00:01:49] Speaker 00:
This is at page 15 of the board's opinion.

[00:01:52] Speaker 03:
Do you agree that the analysis of the pull mode as opposed to the push mode needs to be different?

[00:01:59] Speaker 00:
Yes, it does, Your Honor.

[00:02:01] Speaker 00:
because Fan San Jose distinguishes between those two modes and there's no dispute that the push mode of Fan San Jose does not anticipate the claim because it doesn't provide the correct sequence of the step.

[00:02:16] Speaker 00:
The only question that remained both at the board and before this court was the pull mode and whether the pull mode would anticipate the claim.

[00:02:28] Speaker 03:
So, I mean, the real

[00:02:31] Speaker 03:
I mean, I think the starting point and where your arguments seem to fall down is what the board found was necessary in the claims.

[00:02:44] Speaker 03:
That in other words, they said there's nothing in the language of the claim expressly requiring us specifying a second device to take place before discontinuing said session on said first device.

[00:02:54] Speaker 03:
So in other words, they did find that certain things as a matter of logic had to occur

[00:03:02] Speaker 03:
before other items, but they specifically found that as to that point, there is no description in the claims that requires a specified order.

[00:03:15] Speaker 00:
You're right, Your Honor.

[00:03:16] Speaker 00:
That's what the board found.

[00:03:17] Speaker 00:
And yes, it would have been easier for our position had the board found that the sequence was as laid out in the claim.

[00:03:26] Speaker 00:
But I don't think the inquiry ends there, as your question suggested.

[00:03:31] Speaker 03:
So you're not going to argue to me that you think that the sequence is different from what the board described?

[00:03:37] Speaker 00:
No, I'm not here to tell you that.

[00:03:40] Speaker 00:
What I am here to try to convince you of is that there's nothing in Fan San Jose that supports the board's inference that there's any specifying as required in the claim that takes place.

[00:03:59] Speaker 00:
What the board

[00:04:01] Speaker 00:
articulated, and this is page 17 of their decision, is that the middleware server in Fan San Jose must somehow receive enough information from the second device in order to be able to distinguish that device from other potential devices.

[00:04:21] Speaker 00:
This is how they got to the conclusion that there was a specifying taking place.

[00:04:27] Speaker 00:
In fact, there's nothing in the fan San Jose reference that would lead to that conclusion.

[00:04:33] Speaker 00:
And really, the board missed the point by going in that direction.

[00:04:39] Speaker 00:
The CFRD position was never that, well, the server doesn't know where to send the information.

[00:04:47] Speaker 00:
The CFRD position was that really specifying in the 233 patent is akin to designation.

[00:04:57] Speaker 00:
identification in a clear and distinct fashion, and that that's what was missing.

[00:05:03] Speaker 00:
If you look at the specification throughout the specification of the patent, the specifying step is equated with the notion of selection from a list.

[00:05:19] Speaker 03:
This occurs in... You need to show me where, because the board

[00:05:27] Speaker 03:
found that there was nothing that was so limiting.

[00:05:31] Speaker 00:
So the board actually highlighted at least one portion of the specification.

[00:05:37] Speaker 00:
And this is at page 10 of their decision in the first full paragraph.

[00:05:45] Speaker 00:
And they say that the specification discloses that the client software may be configured to provide a selection of devices

[00:05:55] Speaker 00:
that the transferring session may be redirected.

[00:05:58] Speaker 03:
Right, but they said that that's not the only mechanism.

[00:06:01] Speaker 00:
Well, they're mistaken on that point, Your Honor.

[00:06:04] Speaker 00:
In fact, that is the only embodiment that is described in the specification.

[00:06:10] Speaker 03:
But they describe them as exemplary embodiments.

[00:06:13] Speaker 00:
Yes, the patent uses the term exemplary, yes.

[00:06:18] Speaker 00:
But it doesn't describe anything else that might be an example.

[00:06:22] Speaker 00:
repeatedly refers back to this idea of selection.

[00:06:25] Speaker 03:
It does so at the beginning of column two, lines five through six when it first... Okay, what about... I mean, I know sometimes these are boilerplate words, but you end up getting stuck with them.

[00:06:39] Speaker 03:
I mean, it says that although the method of the present invention has been described by examples, the steps of the method may be performed in a different order than illustrated or simultaneously.

[00:06:49] Speaker 03:
How do you get around that?

[00:06:50] Speaker 00:
We're not trying to get around it, Your Honor.

[00:06:52] Speaker 00:
The board reached the same conclusion, and as I mentioned a few moments ago, I'm not here to tell you that somehow we're arguing the sequence of events.

[00:07:02] Speaker 00:
We're not.

[00:07:03] Speaker 00:
We're arguing that the specification step is missing in Fan San Jose.

[00:07:11] Speaker 00:
And this was actually consistent with the expert testimony that was provided in the case.

[00:07:19] Speaker 00:
This is a page 400 of the appendix, indicated that in fan San Jose's pull mode, there's no need for specifying, because what's happening in that particular instance is the user is suspending the session.

[00:07:36] Speaker 00:
The user's done.

[00:07:37] Speaker 00:
So there's no need to identify, to select from a list, as happens in the pull mode, this second device.

[00:07:48] Speaker 02:
So when you have a broadening statement in the specification, or at least a statement that looks as if it's intended not to be limiting, whether it's broadening or not, at this stage, wasn't there at least an opportunity to restrict explicitly the scope of the claim?

[00:08:10] Speaker 02:
Or here we have the fuzziness.

[00:08:14] Speaker 02:
At least, actually, it's quite explicit that there's no intention, it seems to me, to limit the order.

[00:08:23] Speaker 02:
If that turns out to be dispositive in terms of anticipation is concerned, in theory, is there an opportunity to eliminate that possibility from any claim construction?

[00:08:41] Speaker 00:
I would have to agree, Your Honor, that the best time to eliminate any issues is during the prosecution.

[00:08:48] Speaker 02:
Otherwise, with the broadest reasonable interpretation and an explicit statement in the specification that we're not limited to any order, nevertheless, you're requiring us to construe it otherwise.

[00:09:03] Speaker 00:
I'm not, Your Honor.

[00:09:04] Speaker 00:
Again, I'm not arguing order of steps.

[00:09:07] Speaker 00:
The Board was quite clear that

[00:09:10] Speaker 00:
order of steps, at least when it comes to specifying the second device and then starting the session again on the second device, that that order is not implicated by the claim.

[00:09:23] Speaker 00:
I'm not suggesting that we're arguing the sequence of events.

[00:09:29] Speaker 00:
What I'm saying is that in Fan San Jose, the single reference that was used for anticipation

[00:09:38] Speaker 00:
There is no specifying step, as recited in this claim.

[00:09:43] Speaker 03:
There is no specifying step because why?

[00:09:46] Speaker 03:
Because of not because of the order, right?

[00:09:49] Speaker 03:
So you're saying not because of the order, but because of who or what is doing the specifying?

[00:09:54] Speaker 00:
Correct.

[00:09:57] Speaker 03:
Again, so all you have is two exemplary embodiments, but nothing in the claim that says it must be done by a particular

[00:10:08] Speaker 03:
thing of a particular user, right?

[00:10:11] Speaker 00:
Right.

[00:10:11] Speaker 00:
We're sort of, I think in your question, Judge Romali, you just sort of mixed the minutes between the prior reference and the patent.

[00:10:21] Speaker 00:
So to be clear, in the patent, the claim doesn't specify who does the specifying.

[00:10:29] Speaker 00:
And I've just mentioned now several times, sequence is not the issue.

[00:10:37] Speaker 00:
But in Fan San Jose, we'll go back to originally what we were saying, there are two embodiments.

[00:10:44] Speaker 00:
In the push embodiment, which the board agrees does not anticipate and there's no intimation by the director that the push embodiment anticipates, in the push embodiment there is a selection of the target device.

[00:11:01] Speaker 00:
This is clearly shown in Fan San Jose in Figure 5.

[00:11:06] Speaker 00:
But in the pull embodiment, the one that is at issue before the court now, there is no such selection.

[00:11:16] Speaker 00:
All that happens is the user suspends their session.

[00:11:22] Speaker 00:
And at some later time, the second device comes along and asks the server.

[00:11:27] Speaker 03:
What doesn't just come along?

[00:11:28] Speaker 03:
I mean, basically the PTO said this argument suspends credulity, right?

[00:11:32] Speaker 03:
Because somebody has to log in.

[00:11:35] Speaker 03:
to get the second device to pull it up.

[00:11:37] Speaker 00:
That was our whole point, Your Honor.

[00:11:39] Speaker 00:
Somebody logs in and identifies the user.

[00:11:44] Speaker 00:
They don't identify the device.

[00:11:47] Speaker 00:
It's the user to whom the new session is corrected.

[00:11:52] Speaker 00:
The user could be at any device.

[00:11:55] Speaker 00:
It doesn't have to be a specimen.

[00:11:57] Speaker 03:
It is sending it to that advice.

[00:11:59] Speaker 03:
It's pulling it to that device.

[00:12:02] Speaker 00:
Yes.

[00:12:04] Speaker 00:
The board went through the same discussion.

[00:12:07] Speaker 00:
Our point was never that the server doesn't know where to send the information.

[00:12:12] Speaker 00:
At some point in time, it has to know where the information is going.

[00:12:17] Speaker 00:
The point was that there is no particular identification, no designation of what that device is.

[00:12:29] Speaker 00:
All that is identified is the user through

[00:12:34] Speaker 00:
The board surmised that there was some kind of login process that would be needed.

[00:12:42] Speaker 00:
And if you look at Fanhill-Sinkey, Fanhill-Sinkey is not really before the court in this case, but we're going to talk about it this morning, and it's the same author, and it's the same system.

[00:12:52] Speaker 00:
And Fanhill-Sinkey makes clear that, yeah, it's a logon process that is taking place in the pull mode.

[00:13:00] Speaker 00:
And what happens is the user provides a user ID

[00:13:04] Speaker 00:
and is then allowed to download the session.

[00:13:07] Speaker 00:
So it's the user that is, if you like, specified, not the device, in the pull mode.

[00:13:16] Speaker 00:
And that is the mode that really this court is confronted with.

[00:13:21] Speaker 00:
I see I'm well into my rebuttal time, Your Honor.

[00:13:26] Speaker 02:
So let me just conclude by saying that... Tell us what you need to tell us, because at least if it's reasonably

[00:13:34] Speaker 02:
correct that the issues are similar in the next appeal?

[00:13:38] Speaker 00:
Thank you, Ron.

[00:13:39] Speaker 00:
I appreciate that.

[00:13:43] Speaker 00:
There is mention in the board's decision about an example that is provided in San Jose, and that is the example of a physician that is beginning some interaction with medical records on his or her PDA

[00:14:04] Speaker 00:
and then wants to review those same records on the desktop.

[00:14:09] Speaker 00:
And so we're told that the physician stops the session on the PDA and then resumes the session on the desktop.

[00:14:21] Speaker 00:
And this whole iMASH system that is discussed in the fan references was instantiated for this type of medical records review.

[00:14:32] Speaker 00:
It was done at UCLA.

[00:14:34] Speaker 00:
So the example that's provided is not surprising because that's the target audience they had in mind.

[00:14:42] Speaker 00:
But with that example, Your Honors, there's no discussion of how the physician actually resumes the session.

[00:14:51] Speaker 00:
And in fact, the hallmarks, very little is said actually about how this is done, really it was the figures

[00:15:00] Speaker 00:
that the board was referring to.

[00:15:02] Speaker 00:
This is on page 344 of the appendix, and you recall it was the sort of succession of these three figures at the top of the page.

[00:15:14] Speaker 00:
The text that goes along with that in the right-hand column, if anything, has hallmarks of a push session, because we're told that the session history is automatically sent to

[00:15:30] Speaker 00:
the second device.

[00:15:32] Speaker 00:
And that is a hallmark of what happens in the push case, not the pull case.

[00:15:40] Speaker 00:
So with that, Your Honor, unless you have questions, I'll reserve any remaining time for rebuttal.

[00:15:47] Speaker 02:
Okay.

[00:15:47] Speaker 02:
Thank you.

[00:15:48] Speaker 02:
We'll save you a little rebuttal time.

[00:15:50] Speaker 01:
Ms.

[00:15:50] Speaker 01:
Keller.

[00:15:54] Speaker 01:
Good morning, Your Honors.

[00:15:55] Speaker 01:
May it please the Court

[00:15:58] Speaker 03:
Kelly, before we get started, I know that you're only here for the first case, but since we have you, I need to ask a question that's a big picture question.

[00:16:08] Speaker 03:
Okay, hopefully I can answer it.

[00:16:09] Speaker 03:
I mean, assuming we agree with you on the first two cases, so if a patent claims invalid, it's invalid as to the world, right?

[00:16:17] Speaker 03:
Right.

[00:16:18] Speaker 03:
So with respect to the third case, claims

[00:16:25] Speaker 03:
1, 4 through 6, 8 through 11, 23 through 25 are all invalid as to Hulu, Netflix, and Spotify in the third case if they are invalid in connection with the first two case for different reasons.

[00:16:43] Speaker 01:
I would assume so.

[00:16:44] Speaker 01:
I haven't actually, to be candid, I haven't compared what claims are at issue in this appeal versus those next two appeals.

[00:16:51] Speaker 03:
So my numbers, I think my numbers are right, but even if my numbers are wrong,

[00:16:55] Speaker 03:
that that's what logically flows, correct?

[00:16:59] Speaker 01:
Logically, every claim that is found invalid in this case is invalid for the other two.

[00:17:05] Speaker 01:
Right.

[00:17:06] Speaker 01:
As long as they're the same.

[00:17:07] Speaker 01:
But again, I haven't done that comparison.

[00:17:11] Speaker 01:
I'm sure that these Epolees have done that comparison.

[00:17:17] Speaker 03:
And I will ask them what's left and what the distinctions are.

[00:17:21] Speaker 02:
In the third case, where all of the claims were

[00:17:25] Speaker 02:
upheld.

[00:17:26] Speaker 02:
How does the office justify?

[00:17:31] Speaker 02:
Here we have issues with questions of fact.

[00:17:34] Speaker 02:
There was anticipation so that we look for substantial evidence and so on.

[00:17:40] Speaker 02:
So here is the idea that substantial evidence supports the finding of invalidity and then in another case substantial evidence supports a finding that they're not invalid.

[00:17:55] Speaker 01:
I would assume that it's different prior art that's an issue in those cases.

[00:17:58] Speaker 02:
And therefore, here we have the public now.

[00:18:01] Speaker 02:
We have an estoppel flowing from each of these decisions so that the issue can't be challenged.

[00:18:09] Speaker 02:
How is the public supposed to cope with this conflict, which they are barred from challenging in the district court?

[00:18:22] Speaker 02:
Can it be that this is what

[00:18:25] Speaker 02:
the legislature's had in mind in the American Vents Act that the same panel of the PTAB can reach a conflicting, a different decision on a question of fact and have it sustained and subject to estoppel in an infringement suit is, I would say that that's an impossible concept.

[00:18:54] Speaker 02:
So is there no obligation, no mechanism whereby the office, when it receives challenges against the same patent, let's say different petitioners, can somehow consolidate the issues and reach a unified judgment?

[00:19:14] Speaker 02:
Or is that left entirely for us, the only announced review in court?

[00:19:23] Speaker 02:
which nonetheless is supposed to give deference to findings of fact.

[00:19:27] Speaker 02:
These are close questions.

[00:19:29] Speaker 02:
So what's the answer to that?

[00:19:33] Speaker 02:
Legislative change or what?

[00:19:37] Speaker 01:
I don't know that there's necessarily a problem here and I believe that Congress probably considers... There's a problem in this case?

[00:19:44] Speaker 02:
Well, everybody needs to be affirmed.

[00:19:46] Speaker 02:
These are questions of fact.

[00:19:48] Speaker 02:
So we have invalidity is affirmed, invalidity is affirmed.

[00:19:52] Speaker 01:
Validity and invalidity as to specific prior art and specific prior art rejections.

[00:19:59] Speaker 02:
But the estoppel applies to the issue.

[00:20:02] Speaker 02:
You can't go back in the district court and say, I've got another reference.

[00:20:06] Speaker 01:
As to that particular petitioner, that particular petitioner would be stopped from raising an invalidity issue.

[00:20:19] Speaker 01:
Yes, that is true.

[00:20:23] Speaker 01:
And I don't think that's problematic because we have petitioner two or three or four here who can bring other prior art.

[00:20:34] Speaker 01:
That's the same with a re-examination.

[00:20:36] Speaker 03:
Can I help you out maybe?

[00:20:38] Speaker 03:
Is it that in each case, you're just deciding whether that particular petitioner satisfied its burden of proof on that particular prior art?

[00:20:48] Speaker 01:
Yes.

[00:20:48] Speaker 03:
And if you say that it's invalid as to this prior art,

[00:20:52] Speaker 03:
and you say it's not invalid as to this prior art, ultimately that'll be up to the district court to do what I was starting to do when you first stood up, which is to say certain of these claims don't matter because there's already an invalidity finding from the board.

[00:21:06] Speaker 01:
Right.

[00:21:06] Speaker 01:
If you agree with the board that in this case these claims are invalid, all of this other litigation goes away at district court.

[00:21:17] Speaker 01:
The other PTAB decisions just become moot.

[00:21:20] Speaker 03:
It all becomes moot if this... Yeah, for sure as to those claims identified and we'll see what they say as to the other.

[00:21:26] Speaker 03:
Yes.

[00:21:27] Speaker 02:
That certainly seems extraordinary that the same three judges on the same panel of the PTAB look at the same claims and say these claims are anticipated in one case and not anticipated

[00:21:45] Speaker 02:
in the other case and have that judgment affirmed.

[00:21:49] Speaker 02:
And you're saying that this therefore that the patent nonetheless survives for another reference in another case.

[00:22:02] Speaker 02:
Again, this seems to be so contrary to the purpose of the American Vents Act to have the experts decide the technological questions as to

[00:22:14] Speaker 02:
the technology.

[00:22:16] Speaker 01:
Your honor, in the inter-parties cases, the experts are deciding, as you term the PTAB, they're deciding on the issues of validity raised by the petitioner as to that particular IPR.

[00:22:35] Speaker 02:
Even they know the claim is invalid in the case that they're going to take up the next day.

[00:22:42] Speaker 01:
Well, that is the point of the American Invenst Act.

[00:22:47] Speaker 01:
Congress wanted these proceedings to go very quickly.

[00:22:53] Speaker 01:
But they said every issue raised or that could have been raised.

[00:22:57] Speaker 02:
As to that one particular petitioner.

[00:22:59] Speaker 02:
And therefore there's a finality, but you're saying there's no finality as to the next guy.

[00:23:04] Speaker 02:
So how is the public to also to know that they can't rely on anything that comes out of the PTAB?

[00:23:11] Speaker 01:
I would say it's no different than ex parte re-examination.

[00:23:14] Speaker 01:
In ex parte re-examination... It's intended to be quite different.

[00:23:18] Speaker 02:
There's no estoppel in the district court, for instance.

[00:23:22] Speaker 02:
Well, isn't that the whole idea?

[00:23:26] Speaker 02:
We've always had ex parte re-examination.

[00:23:28] Speaker 02:
Here we've got a whole bunch of new inter-parties contests and opportunities, removal of the issue from trial.

[00:23:38] Speaker 02:
Permanent estoppel can't be raised if, and we're obliged to defer, nonetheless.

[00:23:45] Speaker 02:
So there's nothing in the question of fact.

[00:23:48] Speaker 02:
There's no real fresh look.

[00:23:51] Speaker 02:
So you get the conflicting judgments that we have here.

[00:23:54] Speaker 01:
Even in the pre-AIA interparties re-examination where there was an estoppel effect, even if we look back to that

[00:24:06] Speaker 01:
older statute, the pre-AIA IPR.

[00:24:10] Speaker 01:
Even if we looked to that, in that situation where there wasn't a stopple, just like in ex parte re-examination, you could have a patent that had been examined or re-examined multiple times.

[00:24:28] Speaker 01:
And in one, maybe in the first re-examination upheld as valid over certain prior

[00:24:33] Speaker 01:
and then re-examined later and found invalid over other prior art.

[00:24:39] Speaker 03:
And we have said in the context of a self-contained IPR that the PTO is not allowed to create or consider arguments not raised by the petitioner.

[00:24:49] Speaker 01:
Right.

[00:24:49] Speaker 01:
And in that way it's vastly different than ex parte re-examination.

[00:24:55] Speaker 01:
Because the director doesn't have the discretion to institute its own inter-parties re-examination,

[00:25:02] Speaker 01:
Whereas in ex parte re-examination, the director has its own discretion.

[00:25:07] Speaker 03:
And it's an adversary proceeding where it's what the petitioner raises.

[00:25:13] Speaker 01:
Right.

[00:25:13] Speaker 01:
Because there's not a true examination going on there.

[00:25:19] Speaker 01:
The inter-parties re-examination, the patent doesn't go to the central re-exam unit.

[00:25:26] Speaker 01:
It's not being examined by examiners to see whether

[00:25:31] Speaker 01:
the patent might be invalid under other non-cited prior art, as would be the case in a straight up ex parte re-examination.

[00:25:46] Speaker 01:
Well, I'll stop right there.

[00:25:50] Speaker 01:
But I just wanted to circle back for a moment to the issue that is before this court in this particular.

[00:26:00] Speaker 01:
case.

[00:26:01] Speaker 01:
In this particular case, neither the claims nor the specification of CRFD's patent define how the second device is to be specified.

[00:26:16] Speaker 01:
And I just wanted to address two points raised by my friend across the aisle here.

[00:26:20] Speaker 01:
One is the passage that

[00:26:28] Speaker 01:
My friend cites from the specification, the passage cited by the board for saying, oh, the user must identify a particular device for his assertion that that is the case.

[00:26:42] Speaker 01:
If you continue reading that full passage that the board cites from line, we're at column four, appendix 33, column four, lines 58 through 61,

[00:26:58] Speaker 01:
The specification also teaches that the selection of the redirected device may also be forwarded from the user of a wired list or wired client device and to the session server.

[00:27:11] Speaker 01:
In other words, this specification, and again, the same sort of teaching is provided at column 8 from lines 30 through 36.

[00:27:20] Speaker 01:
The specification expressly teaches that the user logging on to the second device

[00:27:26] Speaker 01:
is capable of identifying or specifying what the second device is without anything more.

[00:27:34] Speaker 01:
And so I get the feeling that your honors have already a clear idea of where they're going on specifying the second device.

[00:27:45] Speaker 03:
I guess the piece that they're probably pushing the hardest, or at least one of the ones that they're pushing the hardest, is that in anticipation you've got to have

[00:27:54] Speaker 03:
all of the limitations, and they've got to be in the same order as in the claims.

[00:27:58] Speaker 03:
And they're saying that you basically, I'm not sure it's inherently, but you're saying it's logical that in fact somebody's logging on to pull to the other device.

[00:28:11] Speaker 03:
And they're saying that there's nothing that is explicit that says that.

[00:28:16] Speaker 03:
And that all they're doing is logging on and identifying the user, not identifying the device.

[00:28:22] Speaker 01:
Again, though, there's nothing in the specification that says you have to do it that way, that you have to provide a URL address for the device.

[00:28:31] Speaker 01:
And in any event, we know that in fact, somehow that second device is specified because that information from the first session that's sitting there on the middleware server isn't transferred to all of the devices in the hospital.

[00:28:49] Speaker 01:
It's only transferred

[00:28:51] Speaker 01:
to the second device that the user logs on to.

[00:28:54] Speaker 03:
But is it defining what it's transferring itself to by reference to the user or by reference to the device?

[00:29:03] Speaker 01:
The claims, we don't know for sure.

[00:29:06] Speaker 01:
It could be either.

[00:29:07] Speaker 01:
The board found that it could be either.

[00:29:09] Speaker 01:
We do know that it does occur.

[00:29:11] Speaker 01:
Their claims certainly don't require it.

[00:29:14] Speaker 01:
And there are specifications, certainly, if you look at the passages that I pointed your

[00:29:20] Speaker 01:
don't require that.

[00:29:21] Speaker 01:
In fact, they seem to suggest that you could do it exactly the way FAN does it.

[00:29:29] Speaker 01:
So we're left with this case where CRFD just wants to say, here's what specifying isn't.

[00:29:39] Speaker 01:
They're not willing to say what specifying is or must be.

[00:29:42] Speaker 01:
And when the board pressed them on this at oral argument, they said, oh, you need to provide a URL address.

[00:29:48] Speaker 01:
for the second device, there's nothing.

[00:29:52] Speaker 01:
There's nothing like that in their specification.

[00:29:55] Speaker 01:
And there's certainly nothing like that in their claims.

[00:29:58] Speaker 01:
If they wanted that to be the case, if they wanted their claims to be construed that way, they could have and should have amended their claims to recite specifying a second device by providing or so on.

[00:30:13] Speaker 02:
Well, but I'm not so sure unless the statistics have changed.

[00:30:17] Speaker 02:
My understanding is that requests to amend are almost invariably denied.

[00:30:23] Speaker 02:
I believe that that is changing, Your Honor.

[00:30:27] Speaker 02:
A little bit.

[00:30:28] Speaker 02:
So instead of 95% being denied, only 80% are being denied.

[00:30:34] Speaker 01:
There's still no attempt here by the CRFD to make even an attempt, I guess, to do that.

[00:30:45] Speaker 01:
I would suspect that they would lack written support for amending their claims that way, given that their specification requires nothing like that.

[00:30:55] Speaker 01:
It doesn't even discuss a situation where you identify the second device by providing a computer address.

[00:31:09] Speaker 01:
And to the extent that a CRFD may be arguing that the user

[00:31:15] Speaker 01:
has to knowingly or intentionally identify the second device.

[00:31:22] Speaker 01:
That sort of argument was recently rejected by another panel of this court, admittedly, in a non-precedential decision in BE Technologies versus Google.

[00:31:37] Speaker 01:
That was appeal number 2015-1827.

[00:31:39] Speaker 01:
In that case, the court was looking at the board's

[00:31:45] Speaker 01:
construction of a limitation for transferring a copy of said software to the computer in response to a download request by the user.

[00:31:53] Speaker 01:
And the board found it to mean sending a request for downloading data from the user's computer to the server.

[00:31:59] Speaker 01:
And the board specifically rejected the proposition that the user had to knowingly, I'm sorry, a panel of this court decided that

[00:32:11] Speaker 01:
there was no requirement in the claims that the user knowingly download the software or do anything other than log on, enter their username, and then have a transfer of software occur.

[00:32:25] Speaker 01:
That's really what's happening here.

[00:32:26] Speaker 01:
Instead of downloading software, we're just downloading the session history from the first device.

[00:32:33] Speaker 01:
I see that I'm out of time.

[00:32:37] Speaker 02:
Well, then tell us what you need to tell us, because at least my sense is that

[00:32:42] Speaker 02:
There's a certain overlap at least with the next appeal and we extended the argument for the petitioner.

[00:32:50] Speaker 01:
Well, thank you.

[00:32:51] Speaker 01:
I really just wanted to wrap up and conclude the claims here very clearly.

[00:32:55] Speaker 01:
And an opposing counsel has admitted they don't say how, who, or when that's specifying the second device needs to take, you know, how, who, or when that specifying is to be done.

[00:33:10] Speaker 01:
And the specification doesn't do it either.

[00:33:12] Speaker 01:
And in that situation, we have fan.

[00:33:16] Speaker 01:
We very clearly know that when that user logs onto a second device or a third device, that information is downloaded from the middleware server to the second device.

[00:33:31] Speaker 01:
It happens.

[00:33:31] Speaker 01:
It occurs.

[00:33:32] Speaker 01:
I really don't think it's an heresy.

[00:33:35] Speaker 01:
I think we know it happens.

[00:33:36] Speaker 01:
We just don't know the details of how it happens.

[00:33:39] Speaker 01:
Um, to the extent that that's not persuasive, that inherently we know what happened.

[00:33:45] Speaker 01:
And that's what's in all fours of the claim here.

[00:33:50] Speaker 01:
And for that reason, I think this court should affirm the board's decision.

[00:33:54] Speaker 01:
If there are no further questions, I'll sit down.

[00:33:58] Speaker 02:
Okay.

[00:33:58] Speaker 02:
Thank you, Ms.

[00:33:59] Speaker 02:
Kelly.

[00:34:01] Speaker 02:
Mr. Finley, let's have some rebuttal in this case and then we'll turn to the next one.

[00:34:07] Speaker 00:
Thank you, your honor.

[00:34:08] Speaker 03:
We won't eat up all your rebuttal, but do you agree that if we affirm in the first case that, at least as to the second case, the second appeal is effectively moot?

[00:34:21] Speaker 00:
No, Your Honor.

[00:34:22] Speaker 00:
There are different claims at issue.

[00:34:24] Speaker 03:
I thought there was a direct overlap in those claims.

[00:34:27] Speaker 00:
No, there isn't.

[00:34:29] Speaker 02:
In this appeal, it's... So let's rebut on this one and then we'll discuss mootness of the next one.

[00:34:38] Speaker 00:
I wanted to address a couple of items that my learned colleague has just said.

[00:34:48] Speaker 00:
As she was wrapping up, she indicated that with respect to Fan San Jose, we don't know the details of how this happens.

[00:34:58] Speaker 00:
Well, that's our point.

[00:35:01] Speaker 00:
Fan San Jose, when it comes to the poll mode, doesn't specify the details.

[00:35:08] Speaker 00:
And there's nothing in Fan San Jose that suggests there is a specifying of the second device that's going on.

[00:35:19] Speaker 00:
Judge O'Malley correctly noted that anticipation is a very technical issue and requires that it's a single reference that describes each and every limitation.

[00:35:30] Speaker 00:
set forth in the claim, in the order that they're set forth in the claim.

[00:35:34] Speaker 00:
And I would just remind you that even claims that were directed to a color photocopier have been found not to have been anticipated by prior references that teach color printers.

[00:35:49] Speaker 00:
That's the Trintec decision, 259, Fed 3rd, 1292.

[00:35:54] Speaker 00:
Your Honor, in this case, there is no

[00:35:59] Speaker 00:
identity that would be required for anticipation.

[00:36:06] Speaker 00:
FAN San Jose's pull mode does not teach the specifying step and instead it allows any second device on which a session is reserved to retrieve the session state from the middleware server.

[00:36:21] Speaker 00:
This is spelled out in the reference pages of the appendix 393 and 394.

[00:36:29] Speaker 00:
where it's indicated that unlike the push mode, in the pull mode, no specifying of the target device is taught.

[00:36:39] Speaker 00:
And if the user wants to resume the session, an unspecified device can pull the session state.

[00:36:46] Speaker 00:
This was the expert testimony in the case.

[00:36:49] Speaker 00:
Neither the board nor the director has pointed to any text in Fan San Jose that would suggest the opposite.

[00:36:58] Speaker 00:
And instead, they've merely speculated about how a second device might retrieve a session state.

[00:37:07] Speaker 00:
With respect to the portions of the specification that my colleague pointed out, if anything, I think this makes our point.

[00:37:15] Speaker 00:
The passage in column four that was referenced required the user to designate the device on which the session was going to be resumed.

[00:37:27] Speaker 00:
That teaches the specification.

[00:37:30] Speaker 00:
Again, this does not happen in the fan San Jose poll mode.

[00:37:36] Speaker 00:
Unless there are questions, we'll commit the matter to your sound judgment.

[00:37:41] Speaker 02:
Okay, so in this case, taken under submission, you may stay at the podium or return.