[00:00:36] Speaker 03:
This case is about the state-of-the-art of, I could call it, distributed computing architecture in the mid-1990s.

[00:00:51] Speaker 03:
It's quite a while ago.

[00:00:52] Speaker 03:
It's an old patent.

[00:00:53] Speaker 03:
In fact, it just occurred to me that the patent expired during the pendency of this appeal.

[00:00:58] Speaker 03:
So nothing has to be looked at in the context of where things stood in the mid-1990s.

[00:01:03] Speaker 03:
I can remember being in

[00:01:06] Speaker 03:
law firm with the uh... where the librarian told me that uh... and everyone advised everyone the search engine to use for this new thing called the internet was altavista because it had the most stuff on it had cataloged the most pages this is quite a while ago in other words before google uh... before altavista bit the dust so we understand the passage of time so thank you for the compliment I'm older than I look then but uh... anyway uh... the

[00:01:36] Speaker 03:
State of the art at that time, according to the primary reference being asserted against the patent here, included this Meiji's reference.

[00:01:47] Speaker 03:
Meiji's taught a way of restricting access to local data by, in other words, a local computer processor had access to local data only if a remote server sent a key

[00:02:07] Speaker 03:
or call it trigger data, I'm gonna call it a key, because it's simpler, and then once the local had the key, it could get data.

[00:02:18] Speaker 03:
It would be held temporarily if it were, there was a software routine that would run, it was called key catcher, and if it, if it, one embodiment that could hold the key only

[00:02:36] Speaker 03:
temporary memory called RAM.

[00:02:38] Speaker 03:
In another embodiment, it could store the key permanently, hard drive, non-volatile media, whatever you want to call it.

[00:02:48] Speaker 03:
The 534 patent at issue here came along and said, well, here's something different.

[00:02:56] Speaker 03:
We're going to structure the addresses

[00:03:02] Speaker 03:
and data on auxiliary, the thing attached to the local, so that it's encoded so it can be accessed only by the remote computer, only by the remote server, not by the local, until and unless the remote directs that it be accessed during the course of an online connected session.

[00:03:29] Speaker 03:
That's not the same as a key.

[00:03:31] Speaker 01:
Okay, I appreciate where you're going with this, but I think in the interest of time, can you just focus here?

[00:03:37] Speaker 01:
I mean, you're here challenging the board's decision, so can we focus on where the error was and what the board concluded?

[00:03:42] Speaker 03:
Right.

[00:03:42] Speaker 03:
So what the board has done is to say, I'm just setting that up, what the board has done is to say that you can replace that key of MAGES with this command and address information that comes from the bachelor reference.

[00:04:00] Speaker 03:
and that command and address information can simply provide the direct access by the remote to the local auxiliary data without having to stop and be stored as a key in a software routine that's running.

[00:04:23] Speaker 03:
Now the problem with that, with that combination, is that the

[00:04:30] Speaker 03:
You can't have it both ways.

[00:04:32] Speaker 03:
You cannot have the encoding of the local auxiliary data that's taught in the 534 if you're going to replace the whole key and software, catcher software of mages with the simple address information of a bachelor.

[00:04:54] Speaker 03:
Bachelor teaches going and getting

[00:04:59] Speaker 03:
elephant entry off a CD version of the Compton's Encyclopedia, for example, is the example that's given in The Bachelor.

[00:05:07] Speaker 03:
There's no talk of encoding the local data in Bachelor.

[00:05:11] Speaker 03:
It's not even a computer system.

[00:05:13] Speaker 03:
It's a broadcast transmission.

[00:05:16] Speaker 03:
The elephant entry comes up alongside the program about elephants that the TV program, broadcast TV program, is presenting.

[00:05:26] Speaker 01:
OK, is this the argument?

[00:05:28] Speaker 01:
We've got page 19 of the board's opinion.

[00:05:30] Speaker 01:
Is this where you made this argument to the board, right?

[00:05:33] Speaker 01:
And their answer to you was you're basing this all on a false premise.

[00:05:39] Speaker 01:
What they say is the combination does not replace the entire system of MAGI.

[00:05:43] Speaker 01:
The proposed combination is simple.

[00:05:46] Speaker 01:
It would have been obvious to a person skilled in the art to use the command and address information from Batchelor as the trigger data already included in MAGI.

[00:05:54] Speaker 01:
So that was the board's response to the argument you're making to us today, right?

[00:05:59] Speaker 01:
Or am I?

[00:06:00] Speaker 01:
OK.

[00:06:00] Speaker 03:
No, you're pointing to a relevant portion of the decision.

[00:06:04] Speaker 03:
And the problem with that is that it completely destroys mages.

[00:06:07] Speaker 03:
Mages is a system that leaves mages nothing but a local computer and a remote computer.

[00:06:17] Speaker 03:
That's not a patent.

[00:06:18] Speaker 03:
That's not patentable.

[00:06:23] Speaker 03:
but there's nothing left of mages at that point, and we cited the Trivascular case and the Fasciati case.

[00:06:28] Speaker 03:
You're not supposed to completely eviscerate the primary reference with the secondary reference.

[00:06:32] Speaker 01:
Well, you could take portions of various references to combine them.

[00:06:37] Speaker 01:
If you just take one portion, you don't call it eviscerating the reference, because you're only using one portion of it, right?

[00:06:46] Speaker 03:
But how can you have anything left of mages if you no longer have

[00:06:52] Speaker 03:
encoding and restricted access.

[00:06:54] Speaker 02:
Why do you care what's left of Mates if you're simply looking at Mates for what it teaches and you're plucking a piece out of what it teaches?

[00:07:02] Speaker 03:
Because the 534... Because the 534 does maintain the encoding and the restricted access.

[00:07:15] Speaker 03:
That's what made it an invention in the mid-1990s that was

[00:07:20] Speaker 03:
patentable over and above mages.

[00:07:23] Speaker 03:
And when you replace the key and catcher software of mages with the simple go get command from Batchelor, you no longer have encoding.

[00:07:36] Speaker 03:
You can't have it both ways.

[00:07:39] Speaker 03:
You can't say that the key and catcher software are still there, giving you the encoding and the restricted access.

[00:07:47] Speaker 03:
And say, oh, well, now you're using

[00:07:50] Speaker 03:
just simple address information of mages.

[00:07:53] Speaker 03:
It's a chimera.

[00:07:54] Speaker 03:
It's a fantastical combination.

[00:07:58] Speaker 03:
534 is what gave you that in the mid-1990s.

[00:08:03] Speaker 03:
The fantastical combination?

[00:08:06] Speaker 03:
Those two features, not the fantastical combination.

[00:08:09] Speaker 03:
The fantastical combination would be the bachelor-specific command address information taught in bachelor combined somehow with the

[00:08:17] Speaker 03:
key and software, the restricted access that was provided by the key and software that are no longer there once you replace it with the address of Bachelor.

[00:08:26] Speaker 03:
It was the 534 that gave you a way for the idea and claims it quite specifically that the local data are encoded to restrict access except by the local processor.

[00:08:43] Speaker 03:
So you've got a

[00:08:46] Speaker 03:
a situation where you can have this, as is taught, I'm not saying it's claimed, but you have this continuously updating interactive 3D virtual environment, and as you move through it, the primary site data from the remote are being combined with the auxiliary data at the local.

[00:09:13] Speaker 00:
And this argument goes to which of the claims?

[00:09:16] Speaker 00:
To all of them?

[00:09:17] Speaker 00:
And I'm sorry, I should- And does that exclude 23 and 24?

[00:09:20] Speaker 03:
This is specifically 23 and 24.

[00:09:22] Speaker 03:
It's most clearly expressed in 23 and 24.

[00:09:25] Speaker 03:
I understand that there was argument in the re-examination, and before the board this time, about whether those features were

[00:09:38] Speaker 03:
it implicitly expressed in claim one, particularly in view of whatever arguments were made by the patent owner in the reexamination.

[00:09:47] Speaker 03:
But I would prefer to, you know, you can read them clearly in 23 and 24.

[00:09:51] Speaker 03:
It recites that it works only while online, that the data are encoded to restrict access, only while online connected, and only when directed by the remote server.

[00:10:06] Speaker 03:
And just to close up the point I was making, the specification of the 534, column 14, lines 33 to 40, points out that the advantage here is it ensures that the auxiliary data are usable only in conjunction with the primary or remote site data.

[00:10:30] Speaker 03:
So that's the invention.

[00:10:33] Speaker 03:
And you can't have it by combining mages and bachelor in the way that the board has done here.

[00:10:45] Speaker 03:
Just to focus on the couple of limitations I just mentioned, the board effectively reads out the unless directed by the remote limitation from claim 24 by stating that the claim 24 merely encompasses pages 24 to 25 of the written decision

[00:11:03] Speaker 03:
It says Claim 24 merely encompasses but does not require access to the auxiliary to be directed by the remote.

[00:11:11] Speaker 03:
I'm sorry, Claim 24 is distinct in that it recites that the access that the data encoded to restrict access unless directed by the remote.

[00:11:27] Speaker 03:
That's the thing that sets Claim 24 apart from all the others.

[00:11:31] Speaker 03:
And it's something that was added during re-examination to make express what had been hashed out during the re-examination when discussing claim one.

[00:11:45] Speaker 01:
When does this patent expire?

[00:11:47] Speaker 03:
As I mentioned, it, I believe, expired during the pendency of the appeal.

[00:11:50] Speaker 03:
It was filed in 1997, I think, therefore, whether you look at it.

[00:11:57] Speaker 03:
And it issued in 2000.

[00:12:02] Speaker 03:
rule applies, I forget the cutoff date for the new rule.

[00:12:04] Speaker 01:
Well, you're into your rebuttals, so why don't you go from the other side.

[00:12:08] Speaker 00:
Thank you.

[00:12:20] Speaker 05:
Good morning, and may it please the Court.

[00:12:22] Speaker 05:
Substantial evidence supports the Board's findings, and the Board's conclusion should be affirmed.

[00:12:28] Speaker 05:
There's three topics I hope to touch on in my time today.

[00:12:30] Speaker 05:
One is claim construction.

[00:12:32] Speaker 05:
Second is the teachings of the prior art, mages, and bachelor.

[00:12:36] Speaker 05:
And the third is the concept of analogous art and why the bachelor references analogous art.

[00:12:41] Speaker 01:
Did they challenge claim construction here?

[00:12:43] Speaker 05:
Well, that last discussion about claim 24 does kind of go to the notion of claim construction, but no, Your Honor.

[00:12:49] Speaker 01:
There's no challenge on claim construction.

[00:12:50] Speaker 05:
That's exactly right, Your Honor.

[00:12:53] Speaker 05:
Both parties agreed with the board's claim construction below.

[00:12:56] Speaker 05:
And so there's some confusion on claim 24.

[00:12:58] Speaker 05:
My friend just now said the claim 24 that the board found

[00:13:02] Speaker 05:
that it just encompasses and does not require this notion of direct access.

[00:13:07] Speaker 05:
And that's not true.

[00:13:08] Speaker 05:
What the board was saying, there's a couple of different concepts in Claim 24.

[00:13:12] Speaker 05:
There's remote access limitations.

[00:13:15] Speaker 05:
The remote access limitations are also in Claim 1 and Claim 23 and Claim 24.

[00:13:20] Speaker 05:
Claim 24 has an additional limitation, the directed by limitation.

[00:13:25] Speaker 05:
And what the board was saying, the board construed the remote access limitations that are in all three of those claims

[00:13:32] Speaker 05:
to include a situation where a remote server directs access by the local computer.

[00:13:37] Speaker 05:
So what the board did, the board did not define the outer boundary of that claim scope.

[00:13:41] Speaker 05:
The board was saying that that claim scope can be met by a circumstance where a remote server is directing access.

[00:13:49] Speaker 05:
Now the directed by limitation in claim 24 is narrower.

[00:13:53] Speaker 05:
The board agreed with the appellant.

[00:13:55] Speaker 05:
The board pointed out that the patent owner below

[00:13:58] Speaker 05:
implies that the directed by limitation requires something beyond the remote access limitations.

[00:14:05] Speaker 05:
And this is appendix 24 in the final written decision.

[00:14:08] Speaker 05:
The board said it likely does.

[00:14:11] Speaker 05:
So the directed by limitation is in fact narrower than the remote access limitations.

[00:14:16] Speaker 05:
That's precisely what the board found.

[00:14:18] Speaker 05:
And the board found that the evidence on the record demonstrated that both of those limitations were met.

[00:14:24] Speaker 05:
So the broader

[00:14:25] Speaker 05:
remote access limitations were satisfied because the combination of Madges and Batchelor has the remote server directing access by the local computer.

[00:14:34] Speaker 05:
And then turning to claim 24, the narrower directed by limitation was also met by that evidence, because again, circumstances there have the remote server directing access by the local computer.

[00:14:49] Speaker 05:
There is no claim construction error, and so the rest of this appeal is reviewing the record for substantial evidence.

[00:14:55] Speaker 05:
Turning to Madges and Bachelor, Madges is a hybrid online remote system.

[00:15:02] Speaker 05:
So some of the information is stored on a local CD so that it doesn't need to be sent across the network.

[00:15:08] Speaker 05:
Bachelor, what it adds, is it specifically teaches command and address information.

[00:15:13] Speaker 05:
So the remote data source is specifically commanding the local computer to go access information.

[00:15:20] Speaker 04:
If I understood what your positive counsel was saying, he was saying that Madges has

[00:15:25] Speaker 04:
an encryption requirement as part of the disclosure, and that once you take this trigger from, what is it, Batchelder, and put it into MAGIES, it's totally inconsistent with the encryption requirement.

[00:15:45] Speaker 04:
That's what I understood him to say.

[00:15:46] Speaker 04:
Could you help me understand that?

[00:15:49] Speaker 04:
I thought the primary reference here was Batchelder.

[00:15:53] Speaker 04:
and that they were taking a feature from Magis and putting it in the Batch Helper rather than the other way around?

[00:15:59] Speaker 05:
No, it's the other way around, Your Honor.

[00:16:00] Speaker 05:
The primary reference is Magis.

[00:16:02] Speaker 04:
OK.

[00:16:02] Speaker 05:
And so we're using all of Magis.

[00:16:04] Speaker 05:
The only thing that we're doing.

[00:16:05] Speaker 04:
OK, right.

[00:16:06] Speaker 04:
So then he's saying that taking this feature from Batch Helper is inconsistent with the encryption aspect of Magis, as I understand it in a sense, right?

[00:16:16] Speaker 05:
I think that's what he's saying.

[00:16:18] Speaker 05:
And that's not accurate, Your Honor.

[00:16:19] Speaker 05:
So what the combination is, is it's modifying Magis

[00:16:23] Speaker 05:
Magist sends from the remote server, it sends a triggering key to the local computer.

[00:16:28] Speaker 05:
The combination adds to that by taking the specific command and address information.

[00:16:33] Speaker 05:
So in addition to the trigger, it's saying, local computer, you need to access this information on the local media, on the CD-ROM.

[00:16:41] Speaker 05:
And it's also telling the local computer, here's the address where you need to access it at.

[00:16:47] Speaker 05:
Bachelor had some specificity that just wasn't in the teachings of Magist, but there's

[00:16:52] Speaker 05:
nothing else has changed in Magist.

[00:16:54] Speaker 05:
The architecture of the local computer, the client-server relationship, everything else stays the same.

[00:17:01] Speaker 04:
It's just something... Has this issue raised before about this inconsistency based on encryption?

[00:17:06] Speaker 05:
That sounded new to me on this appeal, Your Honor.

[00:17:09] Speaker 04:
I didn't remember seeing it in the board's decision of the briefs, but maybe I'm mistaken.

[00:17:13] Speaker 05:
Yeah, so the board pointed out, you know, on page 19 that all we're doing with this combination

[00:17:21] Speaker 05:
is adding this command and address information.

[00:17:24] Speaker 05:
And that's the extent of my recollection of how it came up below, Your Honor.

[00:17:30] Speaker 05:
And so taking the teachings of Madges and Batchelor, taking a step back and looking at Claim 24 as an example.

[00:17:39] Speaker 05:
Claim 24 is a useful claim to look at because it has the three limitations that have been at issue on this appeal.

[00:17:46] Speaker 05:
It has a remote access limitations.

[00:17:48] Speaker 05:
And so what those

[00:17:50] Speaker 05:
involved is it's saying the remote server can access auxiliary site data CD information on the local computer.

[00:17:58] Speaker 05:
Now that leaves open the possibility that the local computer can act on its own and could access the information on the CD without an instruction.

[00:18:06] Speaker 05:
And that's where the directed by limitation comes into play.

[00:18:09] Speaker 05:
So the directed by limitation cuts that off and says the remote server must direct access.

[00:18:16] Speaker 05:
Now that leaves open an additional possibility.

[00:18:18] Speaker 05:
It leaves open the possibility that the local computer could receive that direction and then take no action for a while and wait until some time later and then use the command.

[00:18:32] Speaker 05:
And that's where the only while limitation comes into play in Claim 24.

[00:18:35] Speaker 05:
And that limitation's also in Claim 23.

[00:18:37] Speaker 05:
But that cuts off that possibility.

[00:18:39] Speaker 05:
It's saying you can't receive the key and hang onto it and use it some time later.

[00:18:44] Speaker 05:
The combination of

[00:18:46] Speaker 05:
Madges and Batchelor teaches precisely this.

[00:18:49] Speaker 05:
So Madges teaches explicitly that the only way to access the data is a socket-to-socket connection between the personal computer and the remote server.

[00:19:00] Speaker 05:
Madges also teaches that once that key comes in, it uses the key immediately.

[00:19:05] Speaker 05:
It uses the key immediately to access the information that's stored on the local disk.

[00:19:10] Speaker 05:
So that's the combination of Madges and Batchelor, that's the teachings, and it reads on

[00:19:15] Speaker 05:
all three of those limitations, remote access, directed by, and the only while limitation.

[00:19:24] Speaker 05:
Finally, I'll just touch briefly on analogous art, and I'll just point out that the board found below that Bachelor, the Bachelor reference, was both within the field of endeavor and also reasonably pertinent to the teachings of the 534 patent.

[00:19:40] Speaker 05:
The appellant has taken a hyper-narrow view of the field of endeavor

[00:19:44] Speaker 05:
and of the problem that was identified in the 534 patent, those same arguments were considered by the board below and were rejected.

[00:19:54] Speaker 05:
Substantial evidence supports the board's finding as to each of those.

[00:19:57] Speaker 05:
On the field of endeavor, substantial evidence supports the board because Batchelor is not limited to just broadcast television.

[00:20:04] Speaker 05:
Batchelor, if you look at the title, the written description, the claims, Batchelor involves a personal computer receiving information from a remote data source.

[00:20:13] Speaker 05:
And in Batchelor, that remote data source is also a computer.

[00:20:17] Speaker 05:
So Batchelor's within the field of endeavors.

[00:20:19] Speaker 05:
Substantial evidence on the record supports the board's finding there.

[00:20:23] Speaker 05:
On the reasonably pertinent question, substantial evidence also supports that.

[00:20:28] Speaker 05:
So the appellant has taken a very narrow view and say that the problem that was addressed by the 534 patent involves this continually updating, seamlessly navigable environment

[00:20:40] Speaker 05:
But if you look at what the 534 patent said about the problem that it was addressing, specifically at the 534 patent at column three, lines 20 through 23, and that's appendix 345, the 534 patent says, a significant problem associated with the use of such online technology, however, involves a substantial amount of time required to download various images and information.

[00:21:07] Speaker 05:
Now, the board found that the bachelor reference was

[00:21:09] Speaker 05:
reasonably pertinent to that problem because Bachelor teaches storing some information locally and then a remote data source sending a command and address information to that local computer to access that information and pull it up on the screen.

[00:21:24] Speaker 05:
So in conclusion, Your Honor, the board's findings are supported by substantial evidence and its conclusions should be affirmed.

[00:21:32] Speaker 05:
Thank you very much.

[00:21:51] Speaker 03:
So a couple of points.

[00:21:54] Speaker 03:
On the substantial evidence standard, the board, this court does not hesitate to overturn decisions, finding combinations obvious when your independent evaluation of the prior art asserted leads you to a different conclusion.

[00:22:14] Speaker 03:
I could cite dozens of cases on this, synopsis 685,

[00:22:19] Speaker 03:
Federal Appendix 951, Rudolph Technologies.

[00:22:22] Speaker 03:
These are all just in the past year.

[00:22:23] Speaker 03:
666, Federal Appendix 925.

[00:22:26] Speaker 03:
There are tons of them.

[00:22:30] Speaker 03:
So the question is, what does the art show?

[00:22:32] Speaker 03:
And when you combine it, do you get the invention?

[00:22:36] Speaker 03:
And I haven't heard anything to undermine what I said a few minutes ago.

[00:22:44] Speaker 03:
And by the way, what I said a few minutes ago is in our brief before the board, I think it was

[00:22:49] Speaker 03:
suggested maybe the argument was making was somehow new.

[00:22:55] Speaker 03:
No, it's not.

[00:22:56] Speaker 03:
You can look, for example, at patent owner's response at pages 33 to 38, among other spots on 34 and other areas in the patent owner's response.

[00:23:07] Speaker 03:
But page 34, there's no disclosure in Batchelor that the entries

[00:23:11] Speaker 03:
were especially encoded or structured to be accessed by the broadcast transmitter and badge.

[00:23:18] Speaker 03:
So we made the argument.

[00:23:26] Speaker 04:
The point about... Can you make that argument in your opening brief here?

[00:23:29] Speaker 04:
I apologize?

[00:23:30] Speaker 03:
If you make that argument in your opening brief here.

[00:23:35] Speaker 03:
I believe so.

[00:23:36] Speaker 03:
Our opening brief is quite similar to our brief before the board, in fact.

[00:23:39] Speaker 03:
And so I would say yes.

[00:23:40] Speaker 03:
I can't give you the page number, but if you look at our discussion with Bachelor, I'm confident that it expresses the point about the fact that the Bachelor type of information is not encoded.

[00:23:58] Speaker 03:
It's absolutely one of the primary distinctions we've been drawing all along here.

[00:24:04] Speaker 03:
It's one of the reasons we cited the trivascular and the Faschetti cases, because our argument was that it destroys mages, basically.

[00:24:11] Speaker 03:
There's nothing left of mages, because it's all about restricting access and security and so forth.

[00:24:18] Speaker 03:
So let's see, what else?

[00:24:20] Speaker 03:
I heard that the mages supposedly satisfied the directed by the remote limitation and the only while online limitation, because

[00:24:33] Speaker 03:
you have to establish a socket to socket connection in mages.

[00:24:38] Speaker 03:
Okay, you have to establish a socket to socket connection to obtain the key initially, but you're still obtaining a key that's different than the online connection and the features of that online connection as taught and claimed in the 534.

[00:24:54] Speaker 03:
Similarly, using the key immediately is a possibility in mages.

[00:24:58] Speaker 03:
It's also possible that you store the key.

[00:24:59] Speaker 03:
It's also possible that you store the key temporarily.

[00:25:02] Speaker 03:
All those things are possible,

[00:25:03] Speaker 03:
That's not what the 534 teaches in claims, though.

[00:25:08] Speaker 03:
That the board found that claim 24 teaches the, or rather that MAGES teaches the directed by limitation of claim 24 for the same reason that it teaches the remote access limitations of claim 24 is kind of striking because

[00:25:32] Speaker 03:
It states that one page after it says that the patent owner implies that the directed by limitation requires something beyond the remote access limitation.

[00:25:45] Speaker 03:
And then the board says it likely does, as my adversary stated.

[00:25:51] Speaker 03:
OK, well, if it does, then how can the same reason that it satisfies limitation A, the remote access limitation, also satisfy

[00:26:04] Speaker 03:
Limitation B, the directed by limitation.

[00:26:08] Speaker 03:
There's an explicit claim limitation here that is simply not accounted for in the board's decision, and they read it out of the claim.

[00:26:19] Speaker 03:
On the issue of non-analogous art, I think the arguments are clear in our brief.

[00:26:27] Speaker 03:
But if I could maybe jump to claim 22 for a second.

[00:26:32] Speaker 01:
Well, we're out of time.

[00:26:33] Speaker 00:
or see that your time you're a minimum it's going on it's not going down i apologize it's going up not going down so we'll rest on our briefs thank you thank you very much

[00:27:03] Speaker 02:
The Honorable Corbett's adjournment for morning attendance.