[00:00:00] Speaker 04:
The next case for argument is 16200 for Samsung Electronics versus Straight Half.

[00:00:46] Speaker 02:
Sharif Jacob of Kekker and Van Nesma Peters on behalf of the appellates.

[00:00:51] Speaker 02:
The patent trial on the appeal board adopted a construction that even Straight Path does not defend to this court.

[00:00:58] Speaker 00:
In the proceedings below, Straight Path invited error by arguing that the claims require a- You only referenced substantial evidence twice in the blue break and those are very general references.

[00:01:10] Speaker 00:
Do you contend that any of the PTAS factual findings are not supported by substantial evidence?

[00:01:16] Speaker 02:
Your Honor, we dispute the PTAB's finding that the is connected to the network limitation was satisfied.

[00:01:23] Speaker 02:
But we believe that in reaching that finding, the board made an error of law.

[00:01:28] Speaker 02:
Because Straight Path Below invited and asked the board to apply construction that required 100% accuracy, the board engaged in the obviousness analysis backwards.

[00:01:39] Speaker 04:
The problem it seems to me that you have, so I'd like you to respond, is our case, our opinion, and SIPNAP.

[00:01:46] Speaker 04:
And indeed, when I read your brief and you say repeatedly the error is requiring 100% accuracy, that sounded familiar.

[00:01:55] Speaker 04:
And the reason it sounds familiar is that the dissent in SIPNET suggested that that exactly was what the majority was requiring.

[00:02:04] Speaker 04:
If the dissent was correct in its articulation of what the majority said, then what does that do to your argument?

[00:02:12] Speaker 02:
Your Honor, it is correct that the dissent

[00:02:14] Speaker 02:
said that.

[00:02:15] Speaker 02:
However, that appears nowhere in the majority of opinion.

[00:02:18] Speaker 03:
But the majority didn't dispute it.

[00:02:20] Speaker 02:
Well, Your Honor, I respectfully disagree.

[00:02:22] Speaker 02:
There are a number of points where the majority specifically talks about the technology in the patent, the preferred embodiment of the claim limitation at issue, and it does not say that it is perfectly accurate.

[00:02:34] Speaker 02:
For example, in SICNA, at page 1362, the majority says

[00:02:44] Speaker 02:
The specification immediately continues with a description of how a connection server might work, so as to shrink, if not completely eliminate any gap between reported status and true status.

[00:02:58] Speaker 02:
In other words, the preferred embodiment of the claim does not record online status with perfect accuracy.

[00:03:06] Speaker 02:
Indeed, in the preferred embodiment itself, there is a gap.

[00:03:09] Speaker 02:
Our point is that the prior art

[00:03:12] Speaker 02:
is just as accurate as the preferred embodiment of claim one.

[00:03:16] Speaker 02:
What SIFNET found, the Federal Circuit previously found, and indeed what Straight Path admitted in its papers below, is that an embodiment of prior art or any technology embodies claim one if it does two things.

[00:03:30] Speaker 02:
This particular limitation is connected to the network.

[00:03:34] Speaker 02:
If it tracks when a server goes online, and if it tracks when a server goes offline,

[00:03:41] Speaker 02:
In light of that, I'd like to read what the board's findings actually were.

[00:03:45] Speaker 03:
But wait, the opinion actually does talk about relative currency, but then it says that instead of saying that it supports a different view of its construction, it says that the specification thus distinguishes rather than equates being online and being or having been registered.

[00:04:04] Speaker 02:
And we don't dispute that at all, Your Honor.

[00:04:07] Speaker 02:
That's a very important point, and I just want to draw it out here.

[00:04:09] Speaker 02:
What was at issue in CYPNET was a matter of timing.

[00:04:13] Speaker 02:
The prior proposed construction was that if a process registers, it is online forever, regardless of whether it later goes offline.

[00:04:24] Speaker 02:
We do not here contend that that is appropriate.

[00:04:26] Speaker 04:
No, I don't.

[00:04:27] Speaker 04:
Well, I must respectfully disagree.

[00:04:30] Speaker 04:
I don't read the majority opinion as saying that.

[00:04:32] Speaker 04:
It seems to me

[00:04:33] Speaker 04:
like we're talking past each other, which is what the briefs in this case do.

[00:04:37] Speaker 04:
You are continuing to press what it seems to me the argument was in SIPNET, whether what is done at the time of the query.

[00:04:46] Speaker 04:
And what they said, I mean, they talked about registration, even if you check registration in some periodic fashion after the initial registration, that's not the same thing as making that query at the time when the computer is connected at that moment.

[00:05:03] Speaker 04:
And that seems to me what CIPNET was construing.

[00:05:05] Speaker 04:
We may, at the end of the day, agree or disagree with that.

[00:05:08] Speaker 04:
That's the precedent that binds us.

[00:05:11] Speaker 04:
So, I mean, registration is something different.

[00:05:14] Speaker 04:
Even if registration is checked, even if you can deregister at a different time, it seems to me the majority in CIPNET said that loud and clear.

[00:05:23] Speaker 02:
So, Your Honor, there are parts where we agree and there are parts where we disagree.

[00:05:28] Speaker 02:
And I think that the nuance here is extremely important.

[00:05:31] Speaker 02:
I agree with the court and I agree with CIPNET's prior decision that registration alone is not sufficient to determine online status.

[00:05:40] Speaker 02:
And what CIPNET, the prior majority opinion was concerned about, was an issue of timing.

[00:05:46] Speaker 02:
Does the technology continue to track online status after registration?

[00:05:53] Speaker 02:
And here, the board found that is exactly what it does.

[00:05:57] Speaker 02:
And I'd just like to read the board's findings into the record because they're very important here.

[00:06:01] Speaker 02:
And they can't, and they're not disputed.

[00:06:04] Speaker 02:
Indeed, Straight Path argues that the board's findings are supported by substantial evidence.

[00:06:08] Speaker 02:
I'm now quoting from Appendix 101.

[00:06:12] Speaker 02:
The server, this is the private server.

[00:06:16] Speaker 02:
The server keeps the mapping of names to IP addresses relatively current by tracking which users are still connected to the network.

[00:06:25] Speaker 02:
But the board didn't stop there.

[00:06:26] Speaker 02:
It didn't just find the conclusion that the PriorArt server is tracking online status.

[00:06:31] Speaker 02:
It actually found how it does so.

[00:06:34] Speaker 02:
And it found that it did so using two mechanisms.

[00:06:36] Speaker 03:
Wait, wait, wait.

[00:06:37] Speaker 03:
You skipped the part that says petitioner contends.

[00:06:40] Speaker 02:
Your Honor, that's because the board... You acted like that was a finding.

[00:06:43] Speaker 02:
It was a finding, Your Honor.

[00:06:45] Speaker 02:
At Appendix 98 and at the bottom of Appendix 101, the board explicitly states that it is adopting petitioner's contentions

[00:06:52] Speaker 00:
Well, let me ask you this, then, since we're into that area.

[00:06:57] Speaker 00:
Page three of the Blueberry, you say, PTAB expressly found that the wins and net bios priority keeps the mapping of names to IP addresses relatively current by tracking which users are still connected to the network.

[00:07:13] Speaker 00:
And you cite me to 94 and 96 in the appendix.

[00:07:18] Speaker 00:
I couldn't find that at all on 94.

[00:07:20] Speaker 00:
I appreciate for that miscite, Your Honor.

[00:07:22] Speaker 00:
I did find it on 96.

[00:07:24] Speaker 00:
Yes.

[00:07:24] Speaker 00:
In 96, it begins, petitioner further argues.

[00:07:28] Speaker 00:
Are you telling me that, first tell me why you omitted those words, petitioner further argues, and are you contending that the PTAB adopted that argument on its own?

[00:07:37] Speaker 02:
Your Honor, we are not trying to mislead the Court.

[00:07:40] Speaker 02:
I just want to be absolutely clear.

[00:07:41] Speaker 02:
If you turn to page 98 of the appendix,

[00:07:51] Speaker 00:
You didn't cite me to 98.

[00:07:54] Speaker 02:
I'll say this.

[00:07:55] Speaker 02:
I apologize for any citation error you'll have.

[00:07:58] Speaker 02:
If you look at the million paragraph there, the second sentence from the end, we determine that the record supports petitioner's contentions and adopt petitioner's contentions discussed below as our own.

[00:08:17] Speaker 02:
Now, the contention that we cite

[00:08:22] Speaker 02:
is on page 101.

[00:08:27] Speaker 02:
And I'd like to point you to the bottom of 102.

[00:08:30] Speaker 02:
So I just want to make sure the record is absolutely clear.

[00:08:33] Speaker 03:
But in 98, the court is referring to claim three.

[00:08:37] Speaker 03:
And on 101, the court is talking about claims one, two, and five.

[00:08:42] Speaker 02:
The court at this point is talking about claims one, two, and five of the 469 patent.

[00:08:47] Speaker 02:
But obviously, the prior art doesn't operate differently, depending on what claim is at issue.

[00:08:52] Speaker 02:
And I just want to point the court to Appendix 101.

[00:08:55] Speaker 02:
That's where the petitioner's contention is laid out.

[00:08:58] Speaker 02:
Petitioner contends that.

[00:09:00] Speaker 02:
And at the bottom of Appendix 101, it says, we are persuaded by petitioner's contention with respect to Claim 1, and we adopt them as our own.

[00:09:11] Speaker 02:
In other words, the board adopted petitioner's view of the prior arc.

[00:09:17] Speaker 02:
I'd also like to point you to Appendix 95.

[00:09:26] Speaker 02:
These are independent findings of the board.

[00:09:29] Speaker 02:
These were not initially phrased as petitioner's contentions.

[00:09:34] Speaker 02:
In this section, the board specifically describes how the prior art tracks online status after the time of registration, not by relying on registration alone, but by technologies that continue to track online status after registration.

[00:09:50] Speaker 02:
It says, WINS discloses that once a computer is registered with the WINS server,

[00:09:56] Speaker 02:
which is a NetBIOS name server, as active and online.

[00:09:59] Speaker 02:
That's registration runners right there.

[00:10:02] Speaker 02:
The WIN server maintains a database of names and addresses as active and online by one, releasing the names once a computer is shut down properly, and two, requiring a renewal time period.

[00:10:16] Speaker 03:
Right, but no one disagrees with that.

[00:10:18] Speaker 03:
In fact, as you failed to mention, this says, in this place, it says in view of our construction of this claim limitation, we agree with the patent owner.

[00:10:27] Speaker 03:
as to what's going on.

[00:10:28] Speaker 03:
So in other words, what they're saying here is that, yes, it could be right at some points in time that it's online, but this registration system, as the prior majority said in our prior opinion, is not enough because the only thing that's claimed is determining whether they're active and online at that moment.

[00:10:52] Speaker 02:
It's our position, Your Honor.

[00:10:53] Speaker 02:
that the prior majority opinion did not require 100% perfect accuracy.

[00:10:58] Speaker 02:
We do not believe that that was a part of the claim construction.

[00:11:01] Speaker 02:
And indeed, Straight Path didn't even defend that position in its opposing brief.

[00:11:06] Speaker 04:
Can I just ask you before your time runs out, this is as an aside.

[00:11:09] Speaker 04:
The one shout out you did get in SIPNEP from the majority was the suggestion that we're not saying anything with regard to written description or enablement.

[00:11:18] Speaker 04:
Right?

[00:11:19] Speaker 04:
Yes, ma'am.

[00:11:19] Speaker 04:
Has that ever been at issue?

[00:11:21] Speaker 04:
I mean, there's so many IPRs going on, and obviously the IPRs aren't covering that.

[00:11:26] Speaker 04:
Is there litigation pending in the district court?

[00:11:29] Speaker 04:
Has anyone ever raised or adjudicated the question of enablement and description under this claim construction?

[00:11:36] Speaker 02:
There is litigation pending in the district court, and that issue has not yet been adjudicated, Your Honor.

[00:11:40] Speaker 02:
I'll observe the rest of my time.

[00:11:41] Speaker 02:
Thank you.

[00:11:53] Speaker 01:
And may it please the Court.

[00:11:56] Speaker 01:
To echo what was said in the first argument today, here we are again.

[00:11:59] Speaker 01:
Chief Judge, you actually put it exactly right.

[00:12:01] Speaker 01:
CYBNET does speak loudly and clearly.

[00:12:04] Speaker 03:
Can we start with where your friend on the other side left off, and that is with the district court litigation.

[00:12:09] Speaker 03:
Is it correct that it says in footnote three of the blue brief, or one of the blue briefs, that in fact, in district court, you took a different position with respect to claim construction?

[00:12:22] Speaker 01:
No, Your Honor, our position has always been consistently that is connected means is connected at the time the query is transmitted.

[00:12:28] Speaker 03:
And that there is no infringement if it's not accurate all the time?

[00:12:37] Speaker 01:
Well, we have said consistently, including in all these proceedings, and in the SIPNOT appeal and all the proceedings that led to that appeal.

[00:12:43] Speaker 01:
is that the system must be designed to be accurate and reliable.

[00:12:47] Speaker 01:
Yes, so I think the difference here is that only appellant's counsel in the artful advocacy has turned that into this notion of perfection.

[00:12:53] Speaker 01:
That doesn't appear anywhere in any of the proceedings below.

[00:12:56] Speaker 01:
I think it should be somewhat commonsensical that when you design a system to make a determination, like Pam said, it has to be accurate and reliable.

[00:13:05] Speaker 01:
That's the whole purpose for the system.

[00:13:06] Speaker 01:
So it's designed to shrink or eliminate that gap between actual and recorded

[00:13:11] Speaker 03:
So you think that Judge Dyke was wrong in his dissent when he said that the majority opinion required absolute accuracy?

[00:13:18] Speaker 01:
I think this is what I think of Judge Dyke.

[00:13:20] Speaker 01:
My answer to that is that Judge Dyke didn't get it right for this reason.

[00:13:25] Speaker 01:
I think we and the SIPNET panel got it right that the system has to be designed to always return an accurate and reliable answer to the query.

[00:13:34] Speaker 01:
The determination has to be reliable or else why design the system?

[00:13:38] Speaker 01:
What Judge Dyke's

[00:13:42] Speaker 01:
The scent positive was, well, if it requires this 100%, it doesn't require this 100%.

[00:13:48] Speaker 01:
Actually, it's enough that I say, I spoke to John five minutes ago, so he must be at home.

[00:13:53] Speaker 01:
In other words, does an inference alone satisfy the reliability of the system?

[00:13:56] Speaker 01:
No, it doesn't.

[00:13:57] Speaker 01:
If you had added to his hypothetical what the patent actually calls for, and the claim requires that, hey, I just spoke to John five minutes ago, and I told him, if for any reason he's going to go offline or turn his phone off, just let me know.

[00:14:09] Speaker 03:
That would be different.

[00:14:12] Speaker 03:
That analogy aside then, and so how does it determine if someone is online if it's not by checking registrations?

[00:14:26] Speaker 03:
I mean you can see that all of the embodiments refer to checking registration databases.

[00:14:32] Speaker 01:
Well, no, your honor.

[00:14:33] Speaker 01:
I mean, that's why I think actually because there was that discord between Judge Dyke and the other judges on the CIPNAP panel, the majority of the opinion actually discusses the specification to show and demonstrate that it's not in any way in discord with the opinion.

[00:14:49] Speaker 01:
I mean, if they refer you to column six and say, listen, what's happening is we have to know the computer has come online is now an active party ready for communication.

[00:14:57] Speaker 01:
It's column five.

[00:14:58] Speaker 01:
That's registration.

[00:14:59] Speaker 01:
But then in column six it goes on to, but our system also has to track whether you are continuing to stay online.

[00:15:04] Speaker 01:
There has to be some mechanism in the system to flag you as offline.

[00:15:08] Speaker 03:
What is the mechanism?

[00:15:10] Speaker 03:
Excuse me?

[00:15:10] Speaker 03:
What's the mechanism?

[00:15:12] Speaker 01:
There's many mechanisms, Your Honor.

[00:15:13] Speaker 01:
One of ordinary skill in the art, as we said to the panel below and mentioned in the proceedings in SIPNET, there are many ways that you could accomplish that pervasive connection, constant hanging.

[00:15:23] Speaker 01:
One of Skill in the Arc would know that.

[00:15:25] Speaker 01:
The issue in SIPnet and the issue that controls here is that the claim plainly requires that it track that online status so that it can make the determination at the time that the query is transmitted to the server.

[00:15:39] Speaker 00:
Sir, is running the same thing as being online?

[00:15:43] Speaker 01:
Currently running would be the same as being online status, being online.

[00:15:46] Speaker 01:
Yes, sir.

[00:15:49] Speaker 01:
So three things caught my eye, Your Honor, that I just now think

[00:15:52] Speaker 01:
The colloquy between you and opposing counsel did a very good job on these things, but three things quickly.

[00:15:58] Speaker 01:
The appellants now say that they agree that registration alone is enough.

[00:16:03] Speaker 01:
That's clearly not true.

[00:16:05] Speaker 01:
That has never been their position.

[00:16:06] Speaker 01:
The simple reality is they must continue to argue that registration alone is enough, because without it, they lose.

[00:16:11] Speaker 01:
There's no better example of that than page 21 of their reply brief at footnote three, where they raise what they believe is the proper hypothetical to understand why the prior art invalidates the claims.

[00:16:21] Speaker 01:
They say that there's a person that moves to a city, John, the city registry.

[00:16:26] Speaker 01:
He goes and registers his name and the address at which he lives, and that enters into the city's database.

[00:16:33] Speaker 01:
It's odd enough that they choose as a hypothetical a registry, but they then say that if someone comes in and asks, is John living in the city?

[00:16:41] Speaker 01:
They will go to the database of their records and provide the information from the database.

[00:16:45] Speaker 01:
What they don't tell you is that will just provide you the last known address of John.

[00:16:49] Speaker 01:
That is not the query that these claims require.

[00:16:52] Speaker 03:
Let me ask you, and I'm going to use some of your prior statements against you here in this question, so you can tell me why I shouldn't or why it's wrong.

[00:17:03] Speaker 03:
So the board said that WINS and net bios don't disclose the is connected to.

[00:17:09] Speaker 03:
But they never actually addressed whether or not what WINS and net bios do disclose might otherwise lead a

[00:17:18] Speaker 03:
person of ordinary skill in the art to the point of understanding how to do the pinging or all those things that you said were commonly known in the art and that you didn't have that a person of skill in the art would understand.

[00:17:30] Speaker 03:
So why isn't that a relevant question?

[00:17:35] Speaker 01:
Because as this court in SIPNET said, the written description enabled issue was not part of the inter-party's review.

[00:17:43] Speaker 01:
process, it was not part of the procedures.

[00:17:45] Speaker 03:
I'm not talking about written description or enablement.

[00:17:47] Speaker 03:
I'm saying you said that there really wouldn't have been, there wouldn't be a problem on written description or enablement because one of an ordinary skill in the art would understand exactly how to do it.

[00:17:58] Speaker 03:
So I'm saying on a pure obviousness analysis, if one of ordinary skill in the art would understand exactly how to get from tracking whether they've registered and are online in the first instance and continually pinging to make sure they're still online,

[00:18:13] Speaker 03:
If that's the case, why wouldn't that be obvious?

[00:18:16] Speaker 01:
Well, I don't think that's obvious, Your Honor.

[00:18:20] Speaker 01:
I think the thing that's actually before us, though, is whether or not this system, the board in considering the prior systems, whether or not they actually attempt to make the determination required by the claims.

[00:18:30] Speaker 01:
And they don't.

[00:18:31] Speaker 01:
It's not a question that they attempt it.

[00:18:33] Speaker 01:
They just don't do it with a level of accuracy of some kind, whether they only do it generally or some of the times.

[00:18:38] Speaker 01:
They don't do it at all.

[00:18:39] Speaker 01:
You don't ever get to the notion of accuracy.

[00:18:42] Speaker 01:
The prior systems are name servers, Your Honor, as they clearly explain.

[00:18:46] Speaker 01:
It's literally that nodes in that system are identified by IP addresses, but people would rather have the ease of referring to them as a name.

[00:18:54] Speaker 01:
So the name server simply registers a name you want for that node and maps its IP address and registration to it.

[00:19:02] Speaker 01:
If you query that name server and say, what is the IP address with that name?

[00:19:09] Speaker 01:
If it has it in the database, it'll provide it to you.

[00:19:11] Speaker 01:
It never cares or makes any determination of whether that other node is online.

[00:19:16] Speaker 01:
It doesn't care.

[00:19:17] Speaker 04:
Can I, can I just interrupt you just to follow up on Judge O'Malley, let's assume hypothetically that there were 15 pieces of prior art out there that did, it met this limitation.

[00:19:28] Speaker 04:
Now we can understand since the other side was pressing and the board agreed with them, a claim construction that didn't require that, they wouldn't have introduced it.

[00:19:37] Speaker 04:
Now I understand the way things worked is after SIPNET came out,

[00:19:40] Speaker 04:
The board allowed additional briefing.

[00:19:42] Speaker 04:
But at that time, your friend would have been precluded from adding any additional art as petitioner, bringing that into the dispute, to show that what Judge O'Malley is hypothetically arguing, that if you took the pieces of prior art that were before the board and you just added something else that was also in the prior art, you'd have the whole invention.

[00:20:04] Speaker 04:
You understand what I'm saying?

[00:20:06] Speaker 04:
If that's the hypothetical, why isn't there a problem with how this case went down?

[00:20:11] Speaker 01:
As I understood your question, Your Honor, I've never seen that art.

[00:20:14] Speaker 01:
I've never seen anything.

[00:20:15] Speaker 01:
The SIPNEP decision came down.

[00:20:16] Speaker 01:
These IPR proceedings presented the exact same art in the exact same way.

[00:20:20] Speaker 01:
I've never seen that other piece of the puzzle that's positive by the question.

[00:20:24] Speaker 04:
Well, if one skilled in the art would have known how to do it, then that's something that would have been included in an obviousness analysis, would it not?

[00:20:33] Speaker 01:
Well, Your Honor, it would have to be a piece of prior art that would have been able to establish that the two things taken in combination with the proper motivation

[00:20:40] Speaker 01:
My answer to the question this morning was merely to say that with respect to what's taught in the specification relative to what's required in the claim, it notes that time stamping in column five, which was what Judge Dyke was referring to, shows that the party is active and online.

[00:20:59] Speaker 01:
But it's not meant to show the other necessary element, which is we track online status with this claim.

[00:21:05] Speaker 01:
And you're required to show that you're able to determine the online status at the time of the query.

[00:21:11] Speaker 01:
The only thing we've ever said other than that is that it's irrelevant to that analysis what exactly one of Skill in the Art would do to actually design it.

[00:21:22] Speaker 01:
Column 6, as the SIPnet panel acknowledged, says that the specification teaches things like offline messaging, flagging, and things like that.

[00:21:33] Speaker 01:
But that was something that was left for one ordinary Skill in the Art to design.

[00:21:38] Speaker 01:
The issue is that the claim plainly on its face is connected.

[00:21:41] Speaker 01:
It requires the system to determine the online status of the process at the time that query is sent to the server.

[00:21:49] Speaker 00:
Let me take you back to the question I asked you about currently running and being online.

[00:21:55] Speaker 00:
The reason I asked that was because of page 13 of your red brief, you have a citation to 2336 in the appendix, which deals with mapping and distinguishes

[00:22:07] Speaker 00:
But it doesn't give me that definition that you gave me.

[00:22:12] Speaker 00:
You just said they're the same thing.

[00:22:13] Speaker 00:
Where is a definition that tells me currently running and being online are not the same thing?

[00:22:22] Speaker 01:
Your Honor, I don't know if I have a site that tells you that.

[00:22:25] Speaker 01:
I think that's just it's never been disputed by the parties.

[00:22:28] Speaker 01:
The reference at 2336, not only that we cite it, that's the express acknowledgment

[00:22:34] Speaker 01:
the prior references that the board relied upon properly.

[00:22:37] Speaker 01:
But it completes something that's not quoted there.

[00:22:39] Speaker 01:
It says only that it computes.

[00:22:41] Speaker 01:
They expressly acknowledge that.

[00:22:43] Speaker 00:
Mapping the database does not ensure that the related device is currently running, only that it's there.

[00:22:50] Speaker 01:
That's right.

[00:22:51] Speaker 01:
And so it's not just the board quoted that it doesn't insure part.

[00:22:55] Speaker 01:
But what wasn't quoted by the board is equally as important right below that.

[00:22:58] Speaker 01:
The system is only that a computer

[00:23:01] Speaker 01:
claims a particular IP address.

[00:23:03] Speaker 01:
And that's currently valid IP mapping.

[00:23:06] Speaker 01:
In other words, I've registered a name.

[00:23:08] Speaker 01:
I've registered an IP address.

[00:23:09] Speaker 01:
They're mapped together.

[00:23:11] Speaker 01:
But I think, Your Honor, I don't have something at the rate that says currently running is synonymous with online status for this purpose.

[00:23:19] Speaker 01:
But no one has ever disputed that.

[00:23:21] Speaker 01:
I don't think you really could.

[00:23:23] Speaker 01:
So if I could just return briefly just to the three points I want to make sure are clear.

[00:23:29] Speaker 01:
Opposing counsel said that the board got it wrong because they said it's some notion of a question of timing.

[00:23:34] Speaker 01:
I just want to be clear, as I just run through with you, it was a question of the system not doing it at all.

[00:23:40] Speaker 01:
And so it was very clear that in this example, the board clearly and unambiguously followed the construction and the guidance provided by the SIPNET core.

[00:23:51] Speaker 01:
And three things are disposable why we know that.

[00:23:55] Speaker 01:
One, the SIPNET opinion gives us

[00:23:58] Speaker 01:
the construction, an explanation of what the query must do to accomplish something under that construction.

[00:24:04] Speaker 01:
It must make the determination of online status at the time of the query.

[00:24:07] Speaker 01:
And then it goes on to say, and this is very important, it goes on to say, it would not be a reasonable construction to find that the limitation is satisfied by something that only asks for registration information, regardless of its accuracy.

[00:24:19] Speaker 01:
You have to understand the context of that.

[00:24:21] Speaker 01:
When they had the SIPNET appeal, when this court had the SIPNET appeal,

[00:24:27] Speaker 01:
it knew the exact same pieces of art were before the board below, presented in the exact same way.

[00:24:33] Speaker 04:
And so those two things- Wasn't their analysis there an anticipation analysis and not an obviousness analysis?

[00:24:40] Speaker 04:
Am I wrong about that?

[00:24:42] Speaker 04:
Your Honor, as I recall, it was both.

[00:24:45] Speaker 04:
Both were in the case, but I think the claims we're talking about were anticipation.

[00:24:51] Speaker 04:
I may be wrong.

[00:24:51] Speaker 01:
You don't care.

[00:24:53] Speaker 01:
The takeaway point is literally this simple.

[00:24:55] Speaker 01:
What they said is the proper construction of the claim is this, is connected, means it's connected at the time of the query.

[00:25:02] Speaker 01:
And for whatever might satisfy that going forward, it cannot be the only thing that these prior systems do.

[00:25:09] Speaker 01:
In other words, the systems acknowledge them expressly that all they do is map an IP address to a name, and that's the only information they'll provide.

[00:25:18] Speaker 01:
And the SIPNIT decision says,

[00:25:21] Speaker 01:
under our construction for whatever might in the future meet or not meet that limitation, this type of thing cannot do that.

[00:25:27] Speaker 01:
And that, Your Honor, I believe is dispositive of the issue you have here before you.

[00:25:32] Speaker 01:
And that's why I think knowing that they've tried to construct this argument that somehow the Board engrafted a limitation at our invitation, it's simply wrong, Your Honor.

[00:25:41] Speaker 01:
As a matter of fact, if you look at it, the Board was literally just applying

[00:25:46] Speaker 01:
the SIPNEP because it had to.

[00:25:48] Speaker 01:
As to these references, it not only provided the proper construction, but it essentially gave guidance that must be followed and controls the outcome.

[00:25:55] Speaker 03:
You boxed yourself into a pretty narrow infringement argument, though, haven't you, with this claim construction?

[00:26:04] Speaker 03:
In other words, a system that only does what net bios or WINS did wouldn't infringe, right?

[00:26:13] Speaker 01:
A system that does what net files and wins do does not meet the limitation of is connected, Your Honor.

[00:26:17] Speaker 01:
That's correct.

[00:26:20] Speaker 01:
In other words, I know that that's not what satisfies the claim.

[00:26:24] Speaker 01:
I don't think it speaks to whatever might satisfy the claim.

[00:26:27] Speaker 01:
But Your Honor, I just want to be clear with this issue of the board.

[00:26:31] Speaker 01:
I think you fairly appreciate this already, but to this notion that the board somehow adopted their conclusions or contentions about how it operates.

[00:26:41] Speaker 01:
It's apparent from the record, that's with respect to 469 claim one is connected.

[00:26:47] Speaker 01:
A limitation isn't even present in that claim.

[00:26:49] Speaker 01:
Those were claims where the discussion was about other grounds, and those claims were canceled.

[00:26:54] Speaker 01:
And so I think that's a good point.

[00:26:59] Speaker 01:
Thank you.

[00:26:59] Speaker 01:
Thank you.

[00:27:10] Speaker 02:
Thank you, Ron.

[00:27:11] Speaker 02:
I want to focus on two questions that were raised to Straight Path.

[00:27:16] Speaker 02:
The first question was, Straight Path was asked straight out is 100% perfect accuracy required.

[00:27:22] Speaker 02:
And today, Straight Path tried to argue, oh, this isn't about accuracy.

[00:27:26] Speaker 02:
That's not the limitation that is at issue.

[00:27:29] Speaker 02:
But what I'd like to do is read what Straight Path actually pulled board and what Straight Path previously pulled the Federal Circuit.

[00:27:37] Speaker 02:
An oral argument in the Sitnet Appeal.

[00:27:39] Speaker 02:
The court specifically asked whether Straight Path's view, and I'm quoting, view is that the database must always be accurate.

[00:27:47] Speaker 02:
And that's the difference between the patented invention and the prior art correct.

[00:27:53] Speaker 02:
And Straight Path responded, that's correct, Your Honor.

[00:27:56] Speaker 02:
That's at 806 F.3D.

[00:27:58] Speaker 03:
But in our prior opinion, we expressly stated that a query that asks only for registration information

[00:28:07] Speaker 03:
does not satisfy the limitations of the claim.

[00:28:10] Speaker 03:
And do you dispute that Biosyn wins only asks for registration information?

[00:28:17] Speaker 02:
We absolutely do.

[00:28:18] Speaker 02:
And I just want to make this perfectly clear, Your Honor.

[00:28:22] Speaker 02:
When Straight Path was asked, this was Straight Path's position.

[00:28:28] Speaker 02:
about what the embodiment is of the limitation that we're discussing.

[00:28:33] Speaker 02:
It is connected to the network limitation.

[00:28:36] Speaker 02:
And I'm quoting now.

[00:28:37] Speaker 02:
This is Appendix 1398.

[00:28:38] Speaker 02:
To determine whether a process is currently connected to the computer network at the time of the query, the specification describes that the connection server performs at least a two-step protocol.

[00:28:52] Speaker 02:
To one, track when the process connected to the network, and two, track when the process

[00:28:58] Speaker 02:
disconnects from the computer network.

[00:29:00] Speaker 02:
That is exactly, exactly what the board found that the Prior Art does in this case.

[00:29:06] Speaker 02:
The court asked Straight Path, what are the embodiments?

[00:29:11] Speaker 02:
What are the embodiments?

[00:29:12] Speaker 02:
And Straight Path said, well, we don't have to answer that question.

[00:29:15] Speaker 02:
Straight Path has already answered it below.

[00:29:17] Speaker 02:
They have answered what specific technology is required to meet this limitation.

[00:29:22] Speaker 02:
And the board found that the Prior Art actually performs those limitations exactly as described by Straight Path.

[00:29:28] Speaker 02:
That's the important point here.

[00:29:30] Speaker 02:
Today, Straight Path tried to argue for the first time in these proceedings, well, perfect accuracy might not be required.

[00:29:38] Speaker 02:
Maybe the patent could make some errors.

[00:29:40] Speaker 02:
It only has to be designed to be accurate.

[00:29:42] Speaker 02:
This shifting accuracy standard is absolutely crucial, Your Honor.

[00:29:47] Speaker 02:
Straight Path is not permitted to avoid the prior art by arguing for perfect accuracy before the board,

[00:29:54] Speaker 02:
and then in later proceedings attempt to decide.

[00:29:56] Speaker 03:
But that's not an issue here.

[00:29:59] Speaker 03:
That may be an issue in your later proceedings.

[00:30:01] Speaker 03:
That may be that you will conclude, as I asked, that they've locked themselves into a very narrow infringement analysis.

[00:30:08] Speaker 03:
But that doesn't change the question of what our prior claim construction was.

[00:30:14] Speaker 02:
That's absolutely correct, Your Honor.

[00:30:15] Speaker 02:
And I just want to answer a question that you asked of straight passage.

[00:30:19] Speaker 00:
Well, if it's absolutely correct, then why did you make the argument?

[00:30:23] Speaker 02:
Well, Your Honor, I just want to point out that the position has changed on appeal now.

[00:30:27] Speaker 02:
The position has changed.

[00:30:28] Speaker 00:
I'll tell you, Counsel, I have real problems accepting your arguments because of what I consider misleading briefing in your blow brain.

[00:30:37] Speaker 02:
We certainly didn't intend to mislead you.

[00:30:38] Speaker 02:
And I believe you're referring to the adoption of petitioner's contention, Your Honor.

[00:30:42] Speaker 00:
Several times.

[00:30:43] Speaker 02:
We do believe it was adopted by the board.

[00:30:45] Speaker 02:
I do want to address one question that Judge O'Malley asked.

[00:30:48] Speaker 02:
Judge O'Malley asked, what are the embodiments?

[00:30:51] Speaker 02:
Don't the embodiments require

[00:30:53] Speaker 02:
checking the registration database.

[00:30:56] Speaker 02:
And I'd like to point you to this.

[00:30:58] Speaker 02:
This is appendix 557.

[00:31:00] Speaker 02:
This is the 704 patent, column 5.

[00:31:05] Speaker 02:
At line 55, that's where the embodiment is disclosed.

[00:31:09] Speaker 02:
And it says what happens when a query is sent.

[00:31:12] Speaker 02:
At that point, the connection server, this is line 57, searches the database to determine

[00:31:19] Speaker 02:
whether the colleague is logged in by finding any stored information corresponding to the colleague's email address.

[00:31:26] Speaker 02:
So in other words, even the preferred embodiment of the patent itself checks the registration database.

[00:31:30] Speaker 03:
Well, I mean, our prior opinion recognized that fact, but said that that doesn't override what the plain language of the claims says.

[00:31:39] Speaker 02:
That's correct, Your Honor.

[00:31:40] Speaker 02:
What I'm pointing out is that the prior art is an embodiment of the claims.

[00:31:44] Speaker 02:
I see that my time has expired.

[00:31:45] Speaker 03:
Thank you.

[00:31:46] Speaker 04:
Thank you, Your Honor.