[00:00:05] Speaker 01: Thank you, Judge Prost. [00:00:12] Speaker 01: Samitha, could you please stand? [00:00:15] Speaker 01: Colleagues, I move for the admission of Samitha Meditya. [00:00:21] Speaker 01: She's a member of the Bar. [00:00:22] Speaker 01: It's good standing with the highest courts of Virginia and the District of Columbia. [00:00:26] Speaker 01: I have knowledge of her credentials and I'm satisfied that she possesses the necessary qualifications. [00:00:33] Speaker 01: Before we move forward, I'd like to just make a few comments. [00:00:39] Speaker 01: We've all heard the saying that time flies. [00:00:41] Speaker 01: And it flies as you get older. [00:00:44] Speaker 01: It flies faster as you get older. [00:00:48] Speaker 01: It also goes by very quickly when you're having fun. [00:00:53] Speaker 01: But it goes by even more quickly when you're working hard. [00:00:57] Speaker 01: That said, I think that this past year has flown by very quickly for you. [00:01:02] Speaker 01: in the time that you served as my law clerk. [00:01:05] Speaker 01: It certainly has flown by quickly for me. [00:01:08] Speaker 01: I know that before us stands a woman who will be an excellent practitioner and will bring honor and dignity to the court and to the legal profession. [00:01:22] Speaker 05: Well, I'm delighted on behalf of myself and Judge Hughes to grant the motion. [00:01:28] Speaker 05: Welcome to the bar. [00:01:31] Speaker 05: Please take the oath. [00:01:32] Speaker 04: Please raise your right hand. [00:01:35] Speaker 04: Do you solemnly swear or affirm that you will comport yourself as an attorney and counsel of this court, outright and according to law, and that you will support the Constitution of the United States of America. [00:01:53] Speaker ?: Welcome to the Court of the United States Court of Appeals of the Federal Circuit. [00:01:55] Speaker 05: Congratulations. [00:01:55] Speaker 05: Our first case this morning is 16-2-0-0-0, Unilock v. Sega of America. [00:02:02] Speaker 05: Mr. Geiser, ready? [00:02:04] Speaker 00: Thank you, your honor, and may it please the court. [00:02:07] Speaker 00: The court committed three independent errors below, and if the court agrees with us on any one of those points, reversal is warranted. [00:02:14] Speaker 00: The board, you mean, not the court? [00:02:15] Speaker 00: The board. [00:02:16] Speaker 00: If the court agrees with us. [00:02:17] Speaker 00: The board committed errors. [00:02:18] Speaker 00: I'm sure the court will get it right. [00:02:20] Speaker 00: The first mistake that the board made is it applied the wrong legal standard. [00:02:24] Speaker 00: It was looking for structure, which is a requirement under Section 112, paragraph 6. [00:02:29] Speaker 00: not whether the disclosure reasonably conveyed to a skilled artisan that the inventor actually possessed the invention at the time of the prior application. [00:02:38] Speaker 00: But the invention includes the structure. [00:02:40] Speaker 00: You agree? [00:02:41] Speaker 00: Oh, absolutely, Your Honor. [00:02:42] Speaker 00: And so the point is not that that structure, though, has to be present in order for the written description requirement to be satisfied. [00:02:49] Speaker 00: The question is whether the disclosure that existed in the provisionals encompassed the subsequent invention, including that disclosure. [00:02:57] Speaker 00: I'm sorry, including that structure. [00:02:59] Speaker 00: So the key is, as long as the Australian provisionals would capture the encompassing... Let's say that the Australian provisionals disclose the structure. [00:03:08] Speaker 01: Don't forget about the written description. [00:03:10] Speaker 01: But let's say that you're correct and the board conducted a... used the wrong legal inquiry here. [00:03:19] Speaker 01: If the board finds that there was sufficient structure in the Australian provisionals, doesn't that necessarily mean [00:03:29] Speaker 01: that the written description disclosed the claim terms? [00:03:34] Speaker 00: Well, I think so, Your Honor. [00:03:36] Speaker 00: As long as there is structure in the provisional, then... So there's no mistake here, then? [00:03:41] Speaker 00: Well, no, no, no, Your Honor. [00:03:43] Speaker 00: Maybe I didn't understand the question, and if so, I'm sorry. [00:03:45] Speaker 01: The key is if the board... Maybe they used the wrong test, but they got the result right. [00:03:51] Speaker 01: Or maybe if you do use a 1206 inquiry when you're making a priority examination, [00:03:58] Speaker 01: That it really doesn't matter. [00:04:00] Speaker 01: I mean, obviously you've got to use a 112A question. [00:04:06] Speaker 01: But if you use a 112-6 and you find structure in the provisional, doesn't that necessarily mean that the written description, that 112A is satisfied? [00:04:19] Speaker 00: Well, Your Honor, let me try it this way just to make sure I'm understanding the question correctly. [00:04:23] Speaker 00: If the disclosure in the Australian Provisional covers the structure that was eventually claimed in the patent, then of course there's written description for it. [00:04:30] Speaker 00: If the board applied the right test and said, I'm looking to see if a skilled artisan would see that this disclosure reasonably conveyed the ultimately claimed structure, and it said, I don't think that the disclosure covers that structure, then we submit that the board has lacked substantial evidence for that finding. [00:04:48] Speaker 00: That's a second mistake that the board would have made. [00:04:50] Speaker 00: But the more fundamental problem here is that the board really was asking does this express structure explicitly appear in the Australian provisional, which again is the standard under paragraph six. [00:05:01] Speaker 00: Now if they actually applied the right test and they concluded that the disclosure in the Australian provisional doesn't reach the T-16 patents ultimate claim, again we submit there's simply no substantial evidence, the Australian provisional asked about combining information [00:05:16] Speaker 00: by taking data inputs, adding them together, and getting a registration number. [00:05:21] Speaker 00: The most natural way to understand that disclosure is a summation algorithm. [00:05:26] Speaker 00: It's saying, add those terms together. [00:05:28] Speaker 00: I don't see how anyone could suggest that a skilled artisan at the time, someone who has a degree in computer science or has practiced in the industry for a few years, would see that disclosure and not immediately think [00:05:41] Speaker 00: Summation is one way to combine information. [00:05:44] Speaker 03: Here's my problem with that. [00:05:45] Speaker 03: I was afraid that's where you were going to go because I do see some merit to the notion that you can't require the explicit structure from the patent because it's a 112A inquiry. [00:05:57] Speaker 03: What do you do when your claims actually are confined to that explicit structure which you've agreed to? [00:06:03] Speaker 03: It can't be anything else. [00:06:05] Speaker 03: It can't be any other kind of algorithm that a reasonable artist may have [00:06:10] Speaker 03: come up to do the same thing, but then the language you're pointing to in the priority document doesn't confine it to that specific structure, but does it in a number of ways that may encompass, but doesn't definitely include that structure? [00:06:25] Speaker 03: How do we know that that's true? [00:06:27] Speaker 00: Well, I think I just want to quibble with the premise of what your honor has asked. [00:06:33] Speaker 00: I think it was undisputed below that it does encompass it. [00:06:36] Speaker 00: The only question is, does it exclude other means? [00:06:39] Speaker 00: of carrying out the algorithm. [00:06:41] Speaker 00: Does it exclude concatenation, for example? [00:06:43] Speaker 00: And we submit that is not the right test under this court's traditional bedrock written description analysis. [00:06:49] Speaker 00: I think it would be pretty extraordinary to say that for purposes of paragraph one, you need to have the express disclosure of every ultimate claim in a patent. [00:06:58] Speaker 00: We know that's not the rule. [00:06:59] Speaker 00: You don't even need to disclose embodiments to capture an adequate written description. [00:07:05] Speaker 03: And I think an easy and helpful way to look at it is take paragraph six and assume that instead of doing means plus function claiming, they actually... Let me try a hypothetical because I get what you're saying, but I'm still a little fuzzy because I don't know where all this comes in with an obvious analysis and all these other things and how it will work out. [00:07:26] Speaker 03: I know this is a provisional and it's not an actual patent that's being examined, but suppose you're provisional had [00:07:34] Speaker 03: a set that included one, two, three ways of doing things. [00:07:38] Speaker 03: And your means plus function is only the third way of doing things. [00:07:42] Speaker 03: Your view is that that's enough to get priority to that provisional. [00:07:46] Speaker 03: Oh, absolutely, your honor. [00:07:47] Speaker 03: Because think of it this way. [00:07:49] Speaker 03: How do we know that that third way of doing things is what you've invented, or it's something that might have been in the prior art that you hadn't invented? [00:07:59] Speaker 03: Or how do we know that [00:08:03] Speaker 03: because you haven't set out one, two, three ways of doing things. [00:08:06] Speaker 03: You're just saying a skilled artisan would have known these are three ways of doing it. [00:08:11] Speaker 00: We still don't know which one you invented. [00:08:14] Speaker 00: Sure, Your Honor, but again, I think the question is, and there could be facts, and I think Lucent is a great example of this, where maybe the technology is complicated or unpredictable, and it's not really clear if the inventor knew the third way, even if most people would have known the first or the second. [00:08:29] Speaker 00: Those aren't the facts here. [00:08:30] Speaker 00: Here everyone agrees that when they saw the disclosure to combine numbers by adding data inputs, that at least included summation, everyone knew it did. [00:08:39] Speaker 00: The question is, did it exclude other means? [00:08:42] Speaker 00: Now, obviousness is a different point. [00:08:44] Speaker 00: I know my friend has suggested that we're conflating the written description requirement with an obviousness challenge, but we're not. [00:08:50] Speaker 00: The point of saying you can't simply rely on the knowledge in the field [00:08:55] Speaker 00: to supply an adequate written description says that if the disclosure doesn't encompass what you've claimed, if you haven't used generalized terms that clearly to every skilled artisan jumps off the page, they know it's included based on the actual disclosure that you've made, then you can't rely on obviousness to supplement the disclosure. [00:09:13] Speaker 00: That's not what we've done here. [00:09:14] Speaker 00: We've used a term that unambiguously includes at least summation [00:09:19] Speaker 00: And I don't think anyone would plausibly suggest otherwise, because again, you're talking to skilled artisans. [00:09:23] Speaker 00: Is there a finding from the board on that fact? [00:09:26] Speaker 00: What the board said, and they said this repeatedly at different points, is it's an implicit finding, I believe. [00:09:31] Speaker 00: They said that there are multiple ways to do this. [00:09:34] Speaker 00: They said summation isn't the only way. [00:09:35] Speaker 00: It says it doesn't necessarily mean only summation. [00:09:39] Speaker 00: That the board was looking for that express disclosure [00:09:42] Speaker 00: to be absolutely clear that the structure is found in the embodiment so that you're not doing purely functional planning. [00:09:49] Speaker 03: I think you're getting me back to the same problem I'm having. [00:09:52] Speaker 03: If it's an implicit finding and all you're pointing to is people would have known this could have been included, how do we know that it was included in the provisional? [00:10:02] Speaker 00: Well, again, Your Honor, our expert below said that this is clearly one of the options. [00:10:07] Speaker 00: Dr. Matt Acetti, which is my friend's expert below, said this would have been included. [00:10:12] Speaker 00: They just said there are other means of carrying out the pros that's disclosed in the Australian provisionals. [00:10:18] Speaker 00: And again, I think looking at the traditional factors that the court considers in deciding if written description is adequate, you ask things like, what's the existing technology in the field? [00:10:28] Speaker 00: Is this a complicated or complex or unpredictable technology? [00:10:32] Speaker 00: All those factors point in our favor here. [00:10:34] Speaker 00: This is an elementary rudimentary concept. [00:10:37] Speaker 00: You're taking two data inputs. [00:10:40] Speaker 00: and you're combining them to a single registration number, and you're saying you're adding them together. [00:10:45] Speaker 00: I think it's very hard to read that other than to mean what it most naturally says, which is it uses addition. [00:10:51] Speaker 01: I think it would be pretty striking if my friends... You can add two numbers together. [00:10:54] Speaker 01: I can add two and four together and arrive at 24, right? [00:11:01] Speaker 01: It's different from adding them together, two plus four is six. [00:11:06] Speaker 00: Sure, Your Honor, and that would be concatenation. [00:11:08] Speaker 00: Now I think it's interesting, the board below said that concatenation necessarily uses summation. [00:11:13] Speaker 00: So even if you take the board's own theory, the asserting provisional, if it's concatenating necessarily uses summation. [00:11:20] Speaker 00: Now we think the board was wrong about that, by the way, because we think that the Shull disclosure, and maybe I should switch to this just to make sure I get it in, that the Shull disclosure talks only about concatenation and that the expert below for the petitioners was absolutely clear that there are two separate ways to concatenate numbers. [00:11:38] Speaker 00: One involves summation and the other does not. [00:11:40] Speaker 00: Now, the court's precedent is unambiguous that to anticipate a disclosure has to expressly include each element or it has to inherently include it so that there's no alternative means to carry out the prior art or the purported prior art without carrying and meeting each element. [00:11:59] Speaker 01: And look... Counsel, what's your support for your argument that the board conducted a Section 126 analysis [00:12:07] Speaker 01: when looking at the Australian provisionals? [00:12:10] Speaker 00: We think it's just clear from the entire length of the discussion, Your Honor. [00:12:14] Speaker 01: Do they say that? [00:12:16] Speaker 01: That we're looking at a 112? [00:12:19] Speaker 01: Or is it because they use the word structure? [00:12:21] Speaker 00: It uses the word structure repeatedly. [00:12:23] Speaker 00: It starts off by saying in the court's Microsoft decision, there was an expressed disclosure of a summation algorithm. [00:12:28] Speaker 00: And it said that that embodiment in the ultimate patent wasn't found in the provisionals. [00:12:33] Speaker 00: So therefore, necessarily, that structure wasn't present. [00:12:36] Speaker 00: It concludes by saying it doesn't specify the specific algorithm disclosed in the sex embodiment. [00:12:42] Speaker 05: Why don't cases like Atmel and Lockwood support the legal basis upon which the board did its analysis? [00:12:49] Speaker 00: I don't think they do, Your Honor. [00:12:51] Speaker 00: What those cases hold is that you have to, again, just reasonably convey to a skilled artisan that you had possession of the limitation claimed. [00:12:59] Speaker 00: And under the courts written description analysis, you don't need to articulate every single specific embodiment in the claim. [00:13:04] Speaker 00: Suppose this wasn't means plus function claim. [00:13:06] Speaker 00: Suppose that at the end of the first claim, they said that this is a means for generating a unique ID, which means a summation algorithm. [00:13:15] Speaker 00: I think it would be fairly striking that if looking at the Australian provisionals, the court would conclude that that lacked adequate written description to convey to a skilled artisan at the time that the inventor had actually conceived of a summation algorithm when he talked about combining information by adding data inputs together. [00:13:33] Speaker 00: I think under traditional written description analysis, that holds. [00:13:37] Speaker 00: There's nothing at all about the priority context that changes this court's reasonable description requirement. [00:13:42] Speaker 00: In fact, sections 119 and 120, which by the way the board did not cite, directs the inquiry to section 112 paragraph 1. [00:13:51] Speaker 00: It's the same exact analysis. [00:13:52] Speaker 00: The only difference is you don't need to include best mode. [00:13:55] Speaker 00: This is nothing at all about paragraph 6. [00:13:58] Speaker 00: And the only reason you need to expressly disclose a structure is to check purely functional [00:14:03] Speaker 00: It's so that people who are out in the public and making sure they're not practicing the invention, they're aware of what the patent circumscribes. [00:14:10] Speaker 00: That is not the test for written description. [00:14:12] Speaker 00: That is not the test for deciding if the public can look at the patent and conclude, this inventor, in fact, had this. [00:14:19] Speaker 00: And remember, summation, whether it's a summation. [00:14:21] Speaker 01: If you find sufficient structure in Australian provisional, doesn't that necessarily mean that there's sufficient written disclosure in description? [00:14:32] Speaker 00: Well, again, if they find the sufficient structure of a summation algorithm, then yes, then there is a written description for a summation algorithm. [00:14:39] Speaker 00: And we submit again that this actually discloses a summation algorithm. [00:14:42] Speaker 00: At a minimum, it discloses a generalized term in the board's words that includes summation. [00:14:48] Speaker 00: I see I'm eating into my time. [00:14:49] Speaker 05: So I went here from the other side. [00:14:52] Speaker 00: Thank you very much. [00:15:01] Speaker 02: Your Honors, Eric Burrush on behalf of Appellee's. [00:15:04] Speaker 02: May it please the Court? [00:15:07] Speaker 02: I think it's essential to just start out with the proper legal standard and it coincides with the analysis provided by the Board. [00:15:14] Speaker 02: It is undisputed by both parties here that a priority analysis must be conducted against and in light of the actual claim limitations. [00:15:23] Speaker 02: Lockwood says [00:15:24] Speaker 02: the claimed invention with all its claimed limitations. [00:15:29] Speaker 02: So we're starting from the starting point of the claim limitations that are found in the 216 patent. [00:15:33] Speaker 02: Now the analysis that the board provided, which is the analysis that I advocated and is actually the analysis that has been approved by the Federal Circuit in Lucent Technologies, is a two-step process as it is with every claim. [00:15:46] Speaker 02: First is claim construction and then you apply your priority analysis to the construed claims. [00:15:52] Speaker 02: The only thing that the board did with respect to 112.6 was to construe the claims. [00:15:56] Speaker 02: So as everyone below in the other unilock proceedings... Did the board do that or did the district court... The district court did that. [00:16:02] Speaker 01: The board really never conducted a... And in fact, it wasn't disputed. [00:16:06] Speaker 02: So the claim construction for the means for generating was a summation algorithm or equivalent. [00:16:12] Speaker 01: So now you have an understanding of the claim terms. [00:16:15] Speaker 01: Correct. [00:16:16] Speaker 01: Okay. [00:16:16] Speaker 01: Why then would the board go and look for structure in the Australian provisionals? [00:16:23] Speaker 02: Because the claims that were challenged, there were other claims where priority was not challenged in the 216 patent, but for those means plus function claims where priority was challenged, the board had a claim limitation that required a summation algorithm. [00:16:37] Speaker 02: That was the claim limitation, okay? [00:16:39] Speaker 02: So now we take that claim limitation and we go do a 112.1 [00:16:43] Speaker 02: or now 112A analysis under the written description requirements where you ask the question, would the Australian provisional documents clearly disclose or would one of skill in the art immediately discern the claim limitation? [00:17:01] Speaker 01: Is that what the board asked or did the board ask whether there's a similar equivalent structure in the Australian provisional? [00:17:10] Speaker 02: The board asked whether, looking at Lockwood, would one ordinary skill in New York clearly conclude or immediately discern the claim limitation? [00:17:17] Speaker 01: So I know what Lockwood does. [00:17:18] Speaker 01: What did the board do? [00:17:19] Speaker 02: That's exactly what the board did. [00:17:21] Speaker 02: The board asked for Unilock to point to disclosure in the Australian Provisional of a summation algorithm or an equivalent. [00:17:29] Speaker 03: Wait, that's a little different than what you were just saying though, isn't it? [00:17:33] Speaker 03: I thought you were just saying the board's job, once it's construed the claims, is to look at the provisional and determine whether somebody of ordinary skill would understand that the provisional disclosed the summation algorithm. [00:17:47] Speaker 02: And if I said something the second time around, other than that, that's not what I intended. [00:17:53] Speaker 03: Well, I think the difference here is, and it's a slippery one, I find this issue a little difficult, but does the summation algorithm itself have to be in the provisional? [00:18:03] Speaker 03: or can a reasonable skilled artisan looking at the provisional discern that it encompasses a summation algorithm? [00:18:12] Speaker 03: Is it the first or is it the second? [00:18:14] Speaker 03: It's the first. [00:18:15] Speaker 02: Why? [00:18:16] Speaker 02: Under the case law, and this comes to the heart of Unilock's argument, that essentially it's an umbrella approach, that if we have a specific claim limitation [00:18:25] Speaker 02: and it is encompassed or falls under an umbrella of a general disclosure, that that provides priority support, or 112 written description support. [00:18:34] Speaker 02: And that is inconsistent with the case law. [00:18:36] Speaker 03: If we look at, I'm going to give you a couple of specific sites that address this, but I'll start with Lockwood since they were... I don't, okay, you can, we've read the citations in your group, but let me get, can I just, let's take this outside of a means plus function. [00:18:51] Speaker 03: because this, I think, complicates it a little bit. [00:18:53] Speaker 03: Suppose the claim didn't have means plus function, but just said it has a summation algorithm. [00:18:59] Speaker 03: In looking back, and the provisional doesn't say summation algorithm, but you have all this expert testimony that's undisputed. [00:19:08] Speaker 03: I know this isn't your case, in your view, that says a person reading the provisional would understand it to have disclosed a summation algorithm. [00:19:17] Speaker 03: Why isn't that enough to get priority? [00:19:19] Speaker 02: Well, that is not the record evidence. [00:19:21] Speaker 05: Is that enough to get priority then? [00:19:24] Speaker 02: If one of ordinary skill in the art looked at the disclosure of the Australian provisionals and said, I understand that to be teaching a summation algorithm, I agree with you that that would be enough. [00:19:36] Speaker 03: So it doesn't have to have the specific summation algorithm in it. [00:19:39] Speaker 03: It just has to be something that a skilled artisan could look at the provisional and discern that it includes a summation algorithm. [00:19:46] Speaker 03: Not includes. [00:19:46] Speaker 03: Well, you've answered my question two separate ways. [00:19:50] Speaker 03: Does it have to actually be in the provisional, or can a skilled artisan look at it and say, this invents a summation algorithm? [00:20:01] Speaker 02: One of the skills in the art must be able to look at the Australian provisionals and understand that it actually or inherently discloses a summation algorithm, specifically. [00:20:12] Speaker 02: It is not enough that one can look at the Australian provisionals and see that among a myriad of options, summation might be one of them. [00:20:20] Speaker 02: Because that does not show possession of the summation algorithm. [00:20:23] Speaker 02: It shows possession of a broad concept. [00:20:27] Speaker 02: And that is the distinction. [00:20:29] Speaker 02: And I'm being very consistent in approaching that distinction. [00:20:33] Speaker 02: An umbrella disclosure of a broad construct does not show possession of the specific disclosure of a summation algorithm. [00:20:40] Speaker 02: To satisfy written description requirement for a narrow claim limitation that includes explicitly a summation algorithm, one of skill in the art [00:20:49] Speaker 02: that one of skill in the art must be able to immediately discern that specific disclosure, not an umbrella. [00:20:59] Speaker 05: I'm not sure where we're drawing the distinction here. [00:21:01] Speaker 05: That specific disclosure and others, perhaps, or only that specific disclosure? [00:21:08] Speaker 05: Because an umbrella can be construed different ways. [00:21:10] Speaker 05: An umbrella can say, this umbrella includes three things. [00:21:13] Speaker 05: Well, if summation is one of those three things, then that, in your view, would be a sufficient disclosure, right? [00:21:18] Speaker 02: If it specifically disclosed a summation algorithm, that would be sufficient. [00:21:22] Speaker 02: But what would the testimony... No, no, no. [00:21:24] Speaker 05: What if it includes an umbrella, and everyone skilled in the art would construe an umbrella is including three things, including summation. [00:21:32] Speaker 05: Is that sufficient? [00:21:38] Speaker 02: If we have an umbrella that says, functionally, I'm going to combine or add information, and there is countless things that could fall under that, that is not sufficient. [00:21:48] Speaker 02: If the hypothetical you're describing is I have an umbrella disclosure and it can only include one, two, and three, and it necessarily includes three, which in your example was the hypothetical, then I believe that would be enough. [00:22:04] Speaker 02: But that is not the evidence in this case. [00:22:06] Speaker 02: We do not have one, two, and three. [00:22:08] Speaker 02: We have a broad disclosure that says anything that adds or combines would satisfy the Australian provisionals. [00:22:14] Speaker 02: Anything. [00:22:14] Speaker 02: Is summation one of those? [00:22:17] Speaker 02: Perhaps. [00:22:18] Speaker 03: But I'm really concerned that the board didn't do the right analysis. [00:22:21] Speaker 03: If you agree that that's the right analysis, it seems to me that what the board did was require that an actual summation algorithm be disclosed, not just that a skilled artisan could discern it from the provisional. [00:22:36] Speaker 03: There are two different things, whether it's in the specific text or whether a skilled artist can read that text and understand that it's disclosed. [00:22:44] Speaker 03: I think the [00:22:45] Speaker 03: the latter may be the right rule. [00:22:47] Speaker 03: I think the board did the former role. [00:22:49] Speaker 02: No, the board asked the question, is there evidence in the record that supports the conclusion that one of ordinary skill in the art would review, and it's figure 2B out of the Australian provisionals, user details added to registration number, et cetera. [00:23:02] Speaker 02: That was the disclosure. [00:23:04] Speaker 02: And the board specifically asked the question, did one of ordinary skill in the art say that interpreting that disclosure [00:23:10] Speaker 02: I understand there to be a disclosure of specifically summation. [00:23:14] Speaker 02: Now, did the board require it to specifically be summation? [00:23:16] Speaker 02: Yes, but that's the appropriate standard. [00:23:19] Speaker 02: If we look at Lockwood, again, umbrella disclosures are not enough. [00:23:22] Speaker 02: It has to be actual or inherent disclosure of the claim structure. [00:23:27] Speaker 02: That is the proper legal test, actual or inherent disclosure of the specific claim limitation. [00:23:35] Speaker 02: That's under Lockwood. [00:23:36] Speaker 02: Under Power Oasis, again, [00:23:39] Speaker 02: its actual or inherent disclosure in the priority document. [00:23:43] Speaker 03: Can you show me where you think the board did that? [00:23:45] Speaker 02: Sure. [00:24:22] Speaker 02: Your Honor, in the final written description at page 15, and that's at appendix 15. [00:24:37] Speaker 02: The board here is talking about Patent Owner's Declaration from Dr. DeIulius, which was their evidence of this proposition that the Australian provisionals convey to a person of ordinary skill in the art, a summation algorithm. [00:24:50] Speaker 02: And the board walks through Dr. DeIulius' analysis, and at the bottom of page 15 specifically states, we are not persuaded by patent owner's evidence that the Australian provisional applications conveyed to a person of ordinary skill in the art a summation algorithm or a summer and equivalence thereof. [00:25:08] Speaker 02: And the analysis goes on to further explain why. [00:25:13] Speaker 02: But the board asked and answered specifically the right question. [00:25:20] Speaker 01: Then Council will look at page 16 and 17 at the bottom where it's discussing the additional disclosures from the specification. [00:25:29] Speaker 01: It says, therefore, these additional disclosures from the specification are insufficient for one skilled in the art to immediately discern the limitation at issue, namely a summation algorithm. [00:25:41] Speaker 01: So it looks like it was looking specifically for a summation algorithm. [00:25:46] Speaker 02: That's absolutely correct. [00:25:48] Speaker 02: And again, in Lockwood, Your Honor, [00:25:50] Speaker 02: It has to be actual or inherent disclosure of the claim limitation. [00:25:53] Speaker 02: The claim limitation in this case, and set aside 112.6. [00:25:56] Speaker 02: I believe Judge Hughes's example is appropriate. [00:25:59] Speaker 02: If we set aside 112.6, but we assume a claim that on its face states requires a summation algorithm, then it's wholly appropriate for the board to ask the question of whether that claim limitation is disclosed in the Australian provisionals. [00:26:15] Speaker 02: Because again, you have to start with the claim limitation. [00:26:20] Speaker 02: That is specifically the right question. [00:26:22] Speaker 02: Would one of ordinary skill in the art immediately discern, that's straight out of Lockwood, the claim limitation? [00:26:36] Speaker 02: There is no question that that is the right standard under the law. [00:26:50] Speaker 02: And it goes on in this analysis because Dr. Dioulias was absolutely confused about what the Australian provisional actually disclosed in Figure 2B. [00:27:00] Speaker 02: The board noted that. [00:27:01] Speaker 02: The board found his testimony not credible because he did not understand the technical disclosure. [00:27:06] Speaker 02: Are we talking about the sixth embodiment they talk about later on? [00:27:10] Speaker 02: We're talking here on page 17 where the board found Dr. Dioulias' testimony regarding Figure 2B not credible. [00:27:22] Speaker 01: Right. [00:27:28] Speaker 02: So I hope I've answered all your questions on the legal standard. [00:27:31] Speaker 02: If I haven't, and again, I understand that this can be, the interface with 112-6, I just want to reemphasize, is really only applicable to defining the claim limitation. [00:27:42] Speaker 02: From there, you have to ask, is that claim limitation actually or inherently disclosed, which is precisely what the board did in this case. [00:27:56] Speaker 02: When you get by the priority questions and find that Shoal is prior art, the remainder of the analysis becomes one of a question of substantial evidence. [00:28:09] Speaker 02: And the board certainly had substantial evidence to support his findings as to Shoal. [00:28:14] Speaker 02: Dr. Mattesetti testified both in his deposition and in his declarations that Shoal disclosed to one of ordinary skill in the art a summation algorithm. [00:28:24] Speaker 02: There were multiple citations in support of that concept. [00:28:27] Speaker 02: There was also multiple citations in support of the fact that Shull disclosed a checksum, and that the checksum was itself a summation algorithm that was used to generate the passwordable ID in Shull. [00:28:38] Speaker 02: So the substantial evidence is clear as to the application of Shull to the summation algorithm required by the 216 patent. [00:28:49] Speaker 02: And I believe the remaining issue, Your Honors, was a constitutional issue, which I'm happy [00:28:53] Speaker 02: answer any questions on if you have questions. [00:28:57] Speaker 01: What's the difference between a checksum and a summation algorithm? [00:29:02] Speaker 02: So the passwordable ID that was disclosed in Shoal was generated using not what my colleague referred to as just a general concatenation. [00:29:11] Speaker 01: Are they two different functions? [00:29:14] Speaker 02: There is concatenation that is a first step in generating the passwordable ID. [00:29:18] Speaker 02: And there is a checksum that is a second step in generating the passwordable ID. [00:29:22] Speaker 02: So they work together in Shoal to create the final passwordable ID. [00:29:29] Speaker 01: Would you say that's a summation algorithm? [00:29:32] Speaker 02: Both of them are independently summation algorithms that are used to generate the passwordable ID in Shoal. [00:29:38] Speaker 02: So it's two separate summation algorithms, both used in the process of generating a single ID. [00:29:48] Speaker 01: If the Australian provisions had used the word concatenation, then would your argument, would that affect your argument? [00:29:56] Speaker 01: It would not. [00:29:58] Speaker 01: How about checksum? [00:29:59] Speaker 01: Or both of them in combination? [00:30:02] Speaker 02: The record evidence is that all forms of checksums are a summation algorithm. [00:30:07] Speaker 02: That using a checksum necessarily involves summation. [00:30:10] Speaker 02: So if the Australian provisionals had used checksum as part of their disclosure, [00:30:15] Speaker 02: That would change my analysis. [00:30:17] Speaker 02: The use of the word concatenation would not, because there are many forms of concatenation that do not include summation. [00:30:25] Speaker 02: The point is that the specific form of concatenation that was described in Scholl from the perspective of one skilled in the art is summation. [00:30:33] Speaker 02: But just using the word concatenation in general, no, that would not change the analysis. [00:30:38] Speaker 02: It would be the same type of umbrella approach that you see from the word combine that was provided in the [00:30:44] Speaker 02: in the Australian provisionals. [00:30:47] Speaker 02: And combine, just to reiterate, doesn't get you to summation. [00:30:51] Speaker 02: It gets you to the idea of combining data. [00:30:55] Speaker 02: That fundamentally is the problem with the priority analysis. [00:31:02] Speaker 02: Thank you, Your Honors. [00:31:07] Speaker 00: Thank you, Your Honors. [00:31:08] Speaker 00: I think that [00:31:10] Speaker 00: There are a couple of quick points, just to not show a lot of the way very quickly. [00:31:13] Speaker 03: Actually, could you just look at the board's decision on the legal issue, because I mean, I get your argument, but I'm not sure that the board necessarily did what you say it did. [00:31:27] Speaker 00: I think it did, Your Honor, and I think this is how we know that. [00:31:30] Speaker 00: It starts off by asking, did the specific sixth embodiment appear expressly? [00:31:36] Speaker 00: in the Australian provisional. [00:31:37] Speaker 00: It wasn't asking, is the substance disclosed? [00:31:39] Speaker 00: It was saying, are those words there? [00:31:41] Speaker 00: Is that embodiment present? [00:31:42] Speaker 00: Because it was looking for structure. [00:31:44] Speaker 00: It continues and it goes on. [00:31:45] Speaker 00: And on page 19 of the appendix, also the board's decision, it says that Dr. Mattasetti testified the word add does not necessarily mean some, because it can also describe adding redundancy or adding a header. [00:31:57] Speaker 00: We've already explained why those two options don't make any sense in the context of this particular disclosure. [00:32:02] Speaker 03: Sure, but you go back to pages 15 and 16 that your friend just pointed to me, and they say different things. [00:32:08] Speaker 00: Well, they do, Your Honor, but that's the raw conclusion. [00:32:11] Speaker 00: The board's summary. [00:32:12] Speaker 03: It's not just a raw conclusion, though. [00:32:14] Speaker 03: It goes through the evidence of the expert and explains why it doesn't teach summation. [00:32:20] Speaker 00: Well, I respectfully disagree, Your Honor. [00:32:23] Speaker 00: What it said is that it doesn't necessarily teach summation. [00:32:27] Speaker 00: And we know this because Dr. Mattisetti himself testified that it does teach summation. [00:32:31] Speaker 00: If you look to page 3420 of the appendix, he admitted in the deposition that summation is possible. [00:32:37] Speaker 00: But he said that it's not disclosed because there are other ways to do it, because he's proceeding on the assumption that it has to be expressed. [00:32:44] Speaker 00: Yeah, but you're arguing substantial evidence now. [00:32:46] Speaker 00: I mean, I... Sure. [00:32:48] Speaker 00: Well, I'd rather argue the legal standard for obvious reasons. [00:32:51] Speaker 00: And I do think, though, he just marched through the board's analysis. [00:32:54] Speaker 00: Let's take it to the conclusion. [00:32:55] Speaker 00: As it keeps going, it's asking for an express explicit disclosure. [00:32:59] Speaker 00: And it keeps asking, is the structure there? [00:33:02] Speaker 00: Where does it say it needs an express explicit disclosure? [00:33:05] Speaker 00: Well, I think this is the... I mean, there are a lot of different places we point them out in our briefs, as you realize, because my time is running slow, or about to run out. [00:33:13] Speaker 00: On page 19 and 20, it says in the context of the patent, the disclosures that appear in the provisional do not convey the specific algorithm disclosed in the sixth embodiment. [00:33:22] Speaker 03: It talks about earlier on the H9... It doesn't use... I don't think you just said the word express or explicit. [00:33:27] Speaker 03: You said convey. [00:33:28] Speaker 00: Oh, but it says earlier, though, the ad does not necessarily mean some. [00:33:33] Speaker 00: It says that they're... It's true. [00:33:35] Speaker 00: They don't... They speak that there's more than one way to combine information. [00:33:38] Speaker 00: And again, we think it's simply implausible to read a disclosure talking about combining data inputs by adding them, producing a registration number. [00:33:48] Speaker 00: and that a skilled artisan wouldn't see that and know it captures the concept of a summation algorithm. [00:33:52] Speaker 01: What about the language on page 13 at the middle of that paragraph? [00:33:56] Speaker 01: It says, therefore, we turn to the patent owners, showing whether the provisional, certain provision necessary to disclose or reasonably convey the structure for a summation or algorithm or the equivalence thereof. [00:34:09] Speaker 01: Well, that looks, seems, one can say that they're searching for a specific structure. [00:34:16] Speaker 01: as opposed to whether written description discloses a certain term. [00:34:23] Speaker 01: The fact that the board walks through these arguments, and there's evidence that supports the board, substantial evidence, what does that do to the legal argument? [00:34:35] Speaker 01: I mean, this is my first question to you. [00:34:37] Speaker 01: We're looking at a harmless air type situation here. [00:34:40] Speaker 00: May I answer the question, Mr. Your Honor? [00:34:43] Speaker 00: I don't think it's harmless at all. [00:34:45] Speaker 00: I think that you are right, Judge Raina, that this shows additional support for the concept that the board was looking for expressed structure rather than the paragraph one requirement of a reasonable description does this reasonably convey. [00:34:57] Speaker 00: I think that it's anything but harmless. [00:35:00] Speaker 00: Again, you have evidence below that everyone agrees that this generalized description, as the board calls it, captures summation. [00:35:07] Speaker 00: And any skilled artist would know that this feature that's not even material to the patent, as this court made clear in Microsoft, [00:35:12] Speaker 00: all you really need is an algorithm. [00:35:15] Speaker 00: It just happens to be they chose summation, that combining numbers by adding them together is summation to, at least summation is an option to a skilled artisan. [00:35:26] Speaker 05: Thank you. [00:35:27] Speaker 05: Thank you, Your Honor.