[00:00:00] Speaker 02:
Acceleration, they versus activision of wisdom.

[00:00:56] Speaker 04:
May it please the court.

[00:00:58] Speaker 04:
Good morning, Your Honors.

[00:01:00] Speaker 04:
This is a very limited appeal on an acceleration-based part.

[00:01:04] Speaker 04:
We're just appealing a few claim terms that the PTAB refused to construe.

[00:01:10] Speaker 04:
We believe that the failure to construe these claims is an error by the PTAB, and it's reviewed de novo, so Your Honors can correct that error without looking at any factual issues at all.

[00:01:22] Speaker 04:
The three terms, the first one we start off with is the term participant.

[00:01:26] Speaker 04:
which is a fairly generic term, but you have to understand and read that in light of the specification.

[00:01:34] Speaker 04:
The PTAB found in every one of the numerous IPRs filed against these three patents that these patents relate to, quote, broadcast technique, which a broadcast channel overlays a point-to-point communication network.

[00:01:51] Speaker 04:
Now, a participant has to participate in that broadcast channel.

[00:01:56] Speaker 04:
that overlays the underlying network.

[00:02:00] Speaker 04:
And that's what we proposed in our construction.

[00:02:04] Speaker 04:
Very simply, we proposed an application program, which is very broad.

[00:02:08] Speaker 04:
It can be a process, a computer, a thread, anything of that nature, that interacts with the broadcast channel that overlays an underlying network.

[00:02:18] Speaker 04:
That was the construction that was proposed.

[00:02:21] Speaker 04:
The petitioner in this case said an ordinary main did not give any proposal.

[00:02:26] Speaker 04:
And the PTAB just said a participant means a participant.

[00:02:32] Speaker 04:
The fact that they gave no definition at all is reversible error based on this court's precedent in Homeland Housewares, which is directed at the PTAB.

[00:02:42] Speaker 04:
They had to resolve disputes just like district courts did.

[00:02:45] Speaker 04:
So they didn't resolve the dispute.

[00:02:47] Speaker 04:
They didn't give us anything to go on to what a participant is.

[00:02:53] Speaker 04:
The broadest reasonable interpretation

[00:02:56] Speaker 04:
is not just the broadest reasonable interpretation in a vacuum.

[00:03:01] Speaker 04:
It is the broadest reasonable interpretation in light of the specification.

[00:03:04] Speaker 04:
That's the in-ray man-machine case.

[00:03:08] Speaker 04:
And I think this particular instance, because the participant is somewhat of a generic term, is very akin to the Microsoft case, which we cited in our brief.

[00:03:16] Speaker 04:
In that case, there were terms like send and receive that were used.

[00:03:24] Speaker 03:
The board gave participants planning an ordinary meeting.

[00:03:28] Speaker 03:
You seem to be arguing for a much more narrow construction than that.

[00:03:33] Speaker 03:
What's the basis for such a narrow construction?

[00:03:39] Speaker 04:
We don't think it's necessarily a narrow construction.

[00:03:42] Speaker 04:
We just think it's a construction read in light of the specification.

[00:03:44] Speaker 04:
If you read the specification, even what the board said, that the patents relate to this broadcast channel overlays an underlying network.

[00:03:53] Speaker 04:
If you read that and then understand what a participant in that process is, it has to be that.

[00:03:59] Speaker 04:
It can't be any type of participant whatsoever.

[00:04:02] Speaker 04:
And when the board gave its ordinary meaning, they just said participant means participant.

[00:04:06] Speaker 04:
That's not adequate to give us a direction as to what is a participant in this particular type of network.

[00:04:15] Speaker 01:
OK.

[00:04:15] Speaker 01:
Well, why don't you pick one of the patents, like say the 344 patent, and tell me, you say in light of respect, well,

[00:04:22] Speaker 01:
Where does the spec define participant as an application program that interacts with a logical broadcast channel which overlays an underlying network?

[00:04:33] Speaker 01:
That's an awful lot of structure that you're trying to suck into a claim.

[00:04:38] Speaker 01:
A logical broadcast channel which overlays an underlying network.

[00:04:42] Speaker 01:
So where in this specification, choose the 3-4-4.

[00:04:47] Speaker 01:
Do you want to choose a different one?

[00:04:48] Speaker 01:
That's fine.

[00:04:48] Speaker 01:
I'll move to a different one.

[00:04:49] Speaker 01:
But where in this specification

[00:04:52] Speaker 01:
Do you see participant defined that way?

[00:04:55] Speaker 04:
Your honor, there is no explicit construction of participant.

[00:04:59] Speaker 04:
There's nothing in any of these patents that says participant means X. It's just not there.

[00:05:05] Speaker 04:
In fact, if you read the patents, the word participant is used no more than a handful of times.

[00:05:10] Speaker 04:
So participant has to be read in light of the spec and even what the patent on was found, that this invention relates to this broadcast channel in an overlay network.

[00:05:20] Speaker 01:
But unfortunately, none of that language appears in, for example, claim one.

[00:05:26] Speaker 01:
Well, the broadcast, none of it, right?

[00:05:32] Speaker 01:
None of those structural limitations, which are absolutely described in the spec, are articulated, are they?

[00:05:41] Speaker 04:
Well, I think they are, if you look at the game environment.

[00:05:44] Speaker 04:
That'd be my next term.

[00:05:45] Speaker 04:
If you look at the very portion, the first part of the game environment term.

[00:05:49] Speaker 04:
But that's my next argument, actually.

[00:05:52] Speaker 04:
But I think participant in this instance, I think the PTAB has to give some construction.

[00:06:00] Speaker 04:
It just can't say participant means participant.

[00:06:02] Speaker 04:
And even if they give us a construction.

[00:06:04] Speaker 01:
Well, they say the plain and ordinary meaning.

[00:06:05] Speaker 01:
I mean, I don't think this is particularly complicated.

[00:06:08] Speaker 01:
You just admitted that the word participant barely appears anywhere in the patent.

[00:06:11] Speaker 01:
So it's just to be given its plain and ordinary meaning.

[00:06:16] Speaker 04:
And that's what we're working on.

[00:06:17] Speaker 01:
I mean, I think I know what a participant is.

[00:06:19] Speaker 01:
I mean, my kids play sports.

[00:06:20] Speaker 01:
I know when they're participating and when they're not.

[00:06:22] Speaker 01:
I mean, it's not that complicated.

[00:06:24] Speaker 04:
And that's actually a very good example, Your Honor.

[00:06:27] Speaker 04:
If a participant means a kid on a soccer team or a baseball team, is that what it means in this patent?

[00:06:33] Speaker 04:
Or should it mean something special for this patent as read in light by one skilled in the art?

[00:06:38] Speaker 04:
If you read it as one skilled in the art, a participant does have, it participates in this very specific network that's described throughout.

[00:06:45] Speaker 01:
But the very specific network isn't claimed.

[00:06:48] Speaker 01:
That's your problem.

[00:06:50] Speaker 04:
Well, we believe it is.

[00:06:51] Speaker 01:
Just claim a computer network.

[00:06:53] Speaker 01:
That's it.

[00:06:55] Speaker 04:
Well, let me just jump to the next term then that I want to talk about.

[00:06:59] Speaker 04:
And it really comes down to the terms game environment and information delivery systems.

[00:07:05] Speaker 04:
And these are two terms that also PTAB would not give construction to.

[00:07:10] Speaker 04:
They said the preamble would not give a patentable weight.

[00:07:15] Speaker 04:
That finding that it was part of the preamble, you just read the claim itself.

[00:07:19] Speaker 04:
The title of the patent is a distributed game environment.

[00:07:22] Speaker 04:
If you read the claim, as Judge Moore just talked about, it's a computer network for providing a game environment for a plurality of participants.

[00:07:31] Speaker 04:
Now, there's nothing about that sentence that would indicate that's a preamble to not give patentable weight.

[00:07:37] Speaker 01:
I agree.

[00:07:38] Speaker 01:
And whose fault is that?

[00:07:39] Speaker 01:
I mean, were you in the courtroom for the last argument?

[00:07:44] Speaker 01:
So who do you think I believe has the obligation to make clear the scope of their claims?

[00:07:48] Speaker 04:
The patentee.

[00:07:49] Speaker 01:
Right.

[00:07:51] Speaker 01:
So I have never seen, with one exception, another case which you cited to us that came before my time on the bench, but I've never seen a claim that doesn't say comprising.

[00:08:00] Speaker 01:
And some of the others do, claim 12 in this patent.

[00:08:03] Speaker 01:
How many claims have you seen that don't have a transition word comprising, consisting of, or consisting essentially of?

[00:08:10] Speaker 04:
It's almost never.

[00:08:11] Speaker 01:
Almost never.

[00:08:13] Speaker 01:
People around the court started saying, I'm crazy.

[00:08:16] Speaker 01:
I've read hundreds of thousands of claims at this point in my life.

[00:08:20] Speaker 01:
And this patent was acquired by Bowen.

[00:08:22] Speaker 01:
So this isn't some guy in his garage who drafted his own patent.

[00:08:27] Speaker 01:
This is a sophisticated company with a huge in-house legal department.

[00:08:31] Speaker 01:
And they've drafted a claim in a way which makes it intentionally confusing as to whether a certain portion of that claim is a part of the preamble or not.

[00:08:41] Speaker 01:
So who ought to I hold that against?

[00:08:43] Speaker 04:
Well, that's a loaded question.

[00:08:47] Speaker 01:
Yeah, sure.

[00:08:49] Speaker 01:
You can just move on.

[00:08:50] Speaker 04:
OK, I will.

[00:08:52] Speaker 01:
I'm letting you off that hook.

[00:08:53] Speaker 04:
I appreciate that.

[00:08:54] Speaker 01:
Swim, be free.

[00:08:56] Speaker 04:
Well, let me put it this way.

[00:08:58] Speaker 04:
It doesn't have the word comprising in it.

[00:08:59] Speaker 04:
And claim 13 does.

[00:09:01] Speaker 04:
So to me, it would indicate that the patentee, when they wanted to have a preamble and you have the transitional phase, they did so.

[00:09:08] Speaker 04:
They knew the difference.

[00:09:10] Speaker 04:
So the fact they didn't put it in there, it tells you they didn't have a preamble.

[00:09:13] Speaker 01:
The fact that two of the terms... Yeah, but they don't have a preamble.

[00:09:20] Speaker 01:
Chisholm on patents says a claim consists of a preamble, a transition, and a body, the body of which are the elements.

[00:09:27] Speaker 01:
Our case law says consistently and unequivocally that a preamble in general is not a limitation.

[00:09:33] Speaker 01:
And so now you have something that looks like a preamble to me, a computer network for providing a gaming environment.

[00:09:39] Speaker 01:
If the word comprising came next, we'd be clear it was a preamble, wouldn't we?

[00:09:44] Speaker 04:
Yes, I think that would be correct.

[00:09:46] Speaker 01:
But you left the word comprising out.

[00:09:48] Speaker 01:
I have every once in a while, I will say, when I said I've never seen a claim like this, once or twice I've seen the word including instead of the comprising.

[00:09:56] Speaker 01:
But, you know, most patent attorneys wouldn't do that.

[00:09:59] Speaker 01:
They don't want to infuse confusion into their claim intentionally.

[00:10:03] Speaker 04:
I agree.

[00:10:04] Speaker 04:
So I think what you look at here say, first of all, is it a preempt?

[00:10:07] Speaker 04:
We argue that because there's not a transitional phase, and you have two terms in that sentence.

[00:10:12] Speaker 01:
You're never going to win on that with me.

[00:10:13] Speaker 01:
You've already learned where I stand on who has the obligation of making the claim clear.

[00:10:18] Speaker 01:
So if you chose not to put the word comprising in, I'm going to construe the broadest possible preamble and give you none of those limitations at this point.

[00:10:25] Speaker 04:
But then I think you have to go back.

[00:10:27] Speaker 04:
There is a rich body of case law that says preambles can be limiting.

[00:10:30] Speaker 04:
And that happens quite frequently.

[00:10:32] Speaker 04:
in our case.

[00:10:33] Speaker 01:
It happens exceptionally.

[00:10:35] Speaker 01:
It does not happen quite frequently, but perhaps you can explain why it nonetheless ought to happen here.

[00:10:40] Speaker 04:
Well, because it does give life and structure to the claims.

[00:10:46] Speaker 01:
Here's your problem.

[00:10:47] Speaker 01:
So suppose that I was willing to say a game environment is in fact a limitation.

[00:10:51] Speaker 01:
Do you know what I would then conclude?

[00:10:53] Speaker 01:
I would then conclude that this computer network and all of the participants are limited

[00:10:58] Speaker 01:
to use in a gaming environment, i.e.

[00:11:02] Speaker 01:
gaming.

[00:11:03] Speaker 01:
But I wouldn't necessarily conclude that that requires a logical broadcast channel overlying an underlying network.

[00:11:11] Speaker 01:
That's particularized structure.

[00:11:14] Speaker 01:
Gaming environment just seems to me to be a limit as to how this can be used or in what environment it can be used.

[00:11:21] Speaker 01:
Even if it's a limitation, I just don't see how it gets you as far as you want it to go.

[00:11:26] Speaker 04:
Well, I think the way you look at it is 1Scale and R understands where the gaming environment, how that's done.

[00:11:33] Speaker 04:
If you look at the OSI model, it's done at the application layer, and that's where the overlay layer occurs.

[00:11:40] Speaker 04:
So I think if you read the term game environment into the specification of the patent, then you would get where we want to get to, which is the overlay network.

[00:11:53] Speaker 04:
I reserve the rest of my time for the cross-appeal and rebuttal.

[00:11:56] Speaker 00:
May it please the Court?

[00:12:12] Speaker 00:
Jim Davis here at Cross Appellants.

[00:12:14] Speaker 00:
I'll first address the issues that Pat Hunter has raised on their appeal and then I'll address the

[00:12:18] Speaker 00:
issues on cross-appeal, and if I may reserve any remaining time for rebuttal solely on the cross-appeal issues.

[00:12:25] Speaker 00:
Patent owner's story that they're telling here doesn't match up with the claims or the specifications of the hold patents.

[00:12:30] Speaker 00:
You heard him mention the OSI model, which they brief extensively.

[00:12:34] Speaker 00:
As the board pointed out correctly below, that concept isn't anywhere to be found in the hold patents.

[00:12:39] Speaker 00:
They're trying to have it both ways.

[00:12:41] Speaker 00:
They write their claims that do not require an application program, do not require an underlying network

[00:12:47] Speaker 00:
And then when they're faced with the prior art, they try to narrow those claims in again to try to read those limitations in.

[00:12:52] Speaker 00:
The public and the world has a right to know what the scope of the claims are, and the patent owner has no one to blame but themselves, or at least the person they have bought them from, for the way that they're written.

[00:13:05] Speaker 00:
The board properly rejected patent owners' attempts to read these two limitations into the claims through the constructions of participant, information delivery service, and game environments.

[00:13:14] Speaker 00:
In fact, the patent owner knew how to claim these limitations when they wanted to because they tried to add them in through their motions to amend here.

[00:13:22] Speaker 00:
There's no definitional language in the specification.

[00:13:24] Speaker 00:
There's no disclaimer.

[00:13:25] Speaker 00:
There's no description of the quote unquote invention.

[00:13:28] Speaker 00:
There's no consistent use of these claim terms in a manner that would require or allow any of these limitations to be read into the claims.

[00:13:37] Speaker 00:
The 634 patent even has a summary of the invention.

[00:13:40] Speaker 00:
Neither of these two concepts is mentioned in there.

[00:13:43] Speaker 00:
Instead, the board properly applied the plain and ordinary meaning of participant, a participant in this network, and also found that the terms information delivery service and game environment are not limiting.

[00:13:55] Speaker 00:
Now, on that point that was just brought up, there's two reasons why the board correctly found that those two terms are not limiting.

[00:14:03] Speaker 00:
First, that these are for use limitations.

[00:14:05] Speaker 00:
And just like the situation here, although it is odd, as Judge Moore pointed out, there was no transitional phrase in the Shriver case.

[00:14:13] Speaker 00:
And what the court looked at there was whether or not this for-use limitation was limiting in any manner.

[00:14:19] Speaker 00:
And it found it wasn't.

[00:14:20] Speaker 00:
The same logic applied here through what the board did.

[00:14:25] Speaker 00:
The other issue that came up earlier during patent owner's argument was whether or not these are parts of the preamble, information delivery service, the game environment.

[00:14:33] Speaker 00:
In their patent owner responses, in the proceedings below, both for the 966 patent as well as the 344 patent, patent owner admitted

[00:14:42] Speaker 00:
that these are part of the preambles at appendix 9093 for the 966 patent and 31661 for the 344 patent.

[00:14:53] Speaker 00:
The second basis that the board applied or used to determine that these two terms are not limiting here is that the claims are otherwise structurally complete.

[00:15:06] Speaker 00:
Therefore, the preambles, as patent owner has admitted these limitations are part of, are not limiting.

[00:15:15] Speaker 00:
Unless there's any further questions on those points, I can move on to the cross-appeal issues, Your Honor.

[00:15:22] Speaker 00:
So the three issues on cross-appeal were whether or not the LIN reference is prior art, the 634 patent claim 10, its indication limitation, and the new claims.

[00:15:32] Speaker 00:
And I'll step through those three issues in order.

[00:15:36] Speaker 00:
This is yet another example of the board setting too high a standard for public accessibility for the LIN reference.

[00:15:44] Speaker 00:
Just as this court found in Ray Hall, the petitioners here offered a declaration from, effectively, a librarian who was the systems administrator at the UCSD Computer Science Technical Reports Library.

[00:15:58] Speaker 00:
And he testified as to the library's general procedure.

[00:16:01] Speaker 02:
But there's no search word.

[00:16:03] Speaker 02:
You couldn't use a search word, right?

[00:16:05] Speaker 02:
To get access, you would have to either have the date, the year, or the author.

[00:16:10] Speaker 00:
I disagree that the search functionality was operating.

[00:16:18] Speaker 00:
The board erred in making that finding.

[00:16:22] Speaker 00:
Mr. Little, the systems administrator, testified that the search functionality was there in 1999.

[00:16:28] Speaker 00:
That's at appendix 703638, lines 7 to 10.

[00:16:33] Speaker 03:
And he also said that... Well, Mr. Little testified that

[00:16:38] Speaker 03:
that the website allowed searching by author, year, and that there was also an advanced search.

[00:16:44] Speaker 03:
But yet he had never used the advanced search.

[00:16:47] Speaker 03:
And there was evidence later on that the advanced search didn't work, wasn't operating during the time in question here.

[00:16:55] Speaker 03:
So Mr. Little actually didn't help.

[00:16:59] Speaker 03:
I mean, he said that searching was by author and year.

[00:17:03] Speaker 00:
Your Honor, I may respectfully disagree at appendix 7034, page 30, line 16 to 31, line 6.

[00:17:13] Speaker 00:
He said that he had used it before, and it was highly likely that it would have worked for the Lin reference, although he hadn't tested it for that one.

[00:17:20] Speaker 00:
The evidence that was put in on cross-examination of him merely said that the UCSD CSE server

[00:17:27] Speaker 00:
is unavailable at this time.

[00:17:28] Speaker 00:
That was in 2016, decades removed from the 1999 time frame.

[00:17:35] Speaker 00:
And what Mr. Little said, it's possible it's not working, present tense, not past tense.

[00:17:40] Speaker 03:
I thought he said he admitted he had never used the advanced search feature.

[00:17:45] Speaker 00:
I think that we can pull the particular portion of the appendix at 7034 on that

[00:17:56] Speaker 00:
on that point.

[00:17:57] Speaker 00:
I believe he said he had used it before.

[00:17:59] Speaker 00:
Not for the Lynn reference though.

[00:18:11] Speaker 01:
Well, even if Mr. Little testified that he hadn't used it as to the Lynn reference, wasn't there in this

[00:18:24] Speaker 01:
record evidence that it wasn't functional?

[00:18:30] Speaker 00:
Only as of 2016, Your Honor.

[00:18:34] Speaker 00:
And what might simplify this somewhat is this Court has never required for purposes of a library before having electronic search functionality.

[00:18:43] Speaker 00:
What this Court has looked to is what type of indexing was done.

[00:18:46] Speaker 00:
Here, Mr. Little testified that an index number was applied.

[00:18:50] Speaker 00:
He testified that the same types of documents were all grouped together, and those are the two indexing factors that this court looked to in Inray Hall.

[00:18:59] Speaker 00:
He also testified that because this is a computer science library, everything is then indexed by subject matter, because the library as a whole is one particular subject matter.

[00:19:10] Speaker 00:
And as this court pointed out,

[00:19:12] Speaker 00:
in Blue Calypso, indexing by subject offers a meaningful assurance that an ordinarily skilled artist exercising reasonable diligence will be able to locate a particular reference among many volumes stored in the library.

[00:19:24] Speaker 02:
And that's precisely... I still don't understand.

[00:19:27] Speaker 02:
If it's organized by subject matter, how does one search and come up with it?

[00:19:33] Speaker 00:
The same way one would go... I mean, while this is an online library, the same process that would apply in a brick and mortar library also applies online.

[00:19:41] Speaker 00:
As Dr. Karger, petitioner's expert, testified, a person of ordinary skill in the art would have been able to go through the titles and look at each one of them, see the win title, and know that it was immediately relevant and pertinent to this issue.

[00:19:54] Speaker 00:
It's the same way a person of ordinary skill in the art would have gone to a particular area of the library, say the computer science area.

[00:20:02] Speaker 00:
There might be hundreds of volumes there, which this court has repeatedly held as fine.

[00:20:06] Speaker 00:
and expect that they would then be able to go through and look through the different references to find whatever it is that they need to find.

[00:20:13] Speaker 00:
There's no requirement that there be a search functionality, even though there was here.

[00:20:18] Speaker 01:
I don't understand.

[00:20:20] Speaker 01:
In the board's opinion on page 17, the board says, at best, Dr. Karger's evidence suggests an artisan might have located Lynn by skimming through hundreds of titles in the same year with most containing unrelated subject matter.

[00:20:36] Speaker 00:
The only types of references that were there is the technical reports library for computer science.

[00:20:42] Speaker 00:
That's the only thing that they had.

[00:20:45] Speaker 01:
Wait, wait, wait.

[00:20:46] Speaker 01:
Let me get this straight.

[00:20:47] Speaker 01:
You think technical reports related to computer science is a sufficiently narrow field that this particular reference could be identified as being present and could have been located by a skilled artisan among the 700 and some odd references that were otherwise there and indexed by author name?

[00:21:07] Speaker 00:
As well as New Year, Your Honor.

[00:21:09] Speaker 00:
Yes, I do.

[00:21:10] Speaker 00:
Dr. Karger testified.

[00:21:12] Speaker 01:
It's a really big field.

[00:21:13] Speaker 01:
It's not a little field.

[00:21:15] Speaker 01:
Not even in this year was it a little field.

[00:21:18] Speaker 00:
I agree, Your Honor, but not all libraries.

[00:21:21] Speaker 00:
It's unreasonable to expect.

[00:21:22] Speaker 01:
It's kind of like saying we have a foreign language library.

[00:21:28] Speaker 01:
Every possible foreign language in existence is contained in that library, but we're sure you'll find the Spanish document somewhere.

[00:21:36] Speaker 00:
By way of analogy, Your Honor, Inray Hall dealt with the situation where the... I think it's a German thesis in a shoebox in the basement somewhere or something.

[00:21:48] Speaker 00:
Inray Cronin did deal with the shoebox in a basement.

[00:21:51] Speaker 00:
Inray Hall dealt with a special dissertation section of the library, which wasn't limited by subject matter at all.

[00:21:59] Speaker 00:
As long as it was indexed, it was found to be publicly accessible.

[00:22:03] Speaker 00:
Here, we're steps beyond what was required in Inray Hall, where you have it not only indexed by giving an individual number, by a particular paper type, but also by subject matter, author, and year.

[00:22:18] Speaker 00:
There's several additional factors, additional tools that would have been available to a person of ordinary skill in the art to locate the lame reference.

[00:22:29] Speaker 00:
Unless there's any further questions on that topic, I can turn to

[00:22:32] Speaker 00:
Another topic on cross-appeal claimed 10 of the 634 patent.

[00:22:37] Speaker 00:
The board committed two errors in finding that this limitation of indication was not met.

[00:22:43] Speaker 00:
First, the board erred in finding that Dr. Carter hadn't explained how a participant knows the identities of its neighbors.

[00:22:49] Speaker 00:
That finding is not supported by substantial evidence because Dr. Carter at paragraph 164 stated, and this is a quote, a participant must know the identities of its neighbors in order to send messages to them.

[00:23:01] Speaker 00:
The board compounded that error by then excluding Dr. Karger's rebuttal testimony on that very same point, particularly paragraphs 193 to 202 of his rebuttal declaration that were addressing this issue of whether or not an individual participant would know the identities of its neighbors.

[00:23:22] Speaker 00:
The board then further erred in finding that even such a showing wouldn't meet the claim limitations, requiring some

[00:23:30] Speaker 00:
higher level showing that it wasn't borne out by the board's construction, which was proper, merely requiring something that serves to indicate.

[00:23:37] Speaker 00:
The issue here between the parties is whether or not the Schubert references participants are aware of who their neighbors are.

[00:23:46] Speaker 00:
And what we're asking for is the board to vacate that determination, remand with instructions to consider all of Dr. Karger's testimony on this point.

[00:23:55] Speaker 01:
But you want the reply.

[00:23:56] Speaker 01:
Yes, Your Honor.

[00:23:59] Speaker 01:
Well, I have to review that under an abusive discretion standard.

[00:24:01] Speaker 01:
Why was it an abuse of discretion when Dr. Karger gave testimony in his reply that Showbridge renders obvious this limitation and they get the petition despite pointing to Showbridge as rendering obvious lots of limitations, never pointed to it rendering obvious this limitation.

[00:24:20] Speaker 01:
The board said you've given testimony in a reply by an expert that wasn't present

[00:24:26] Speaker 01:
in your petition and therefore I'm going to exclude it.

[00:24:29] Speaker 01:
How can I possibly conclude that that was an abuse of discretion?

[00:24:32] Speaker 00:
There were 15 paragraphs in total that the board was addressing.

[00:24:35] Speaker 00:
The last three did deal with obviousness and they only dealt with obviousness in response to patent owner's construction that was properly rejected by the board.

[00:24:44] Speaker 00:
Paragraphs 193 to 202, however, did not rely on obvious, didn't address obvious.

[00:24:50] Speaker 00:
They were directed directly towards this issue.

[00:24:52] Speaker 00:
So in the board's stated explanation for why,

[00:24:56] Speaker 00:
excluded it, as Your Honor pointed out, was that basis of obviousness, which was an inaccurate and incorrect characterization of what Dr. Carter's testimony was.

[00:25:06] Speaker 00:
And just on the last remaining issue on the new claims, Your Honor, the Board's finding of the priority does not disclose the limitation of participants can join and leave the network using the broadcast channel is not supported by substantial evidence.

[00:25:20] Speaker 00:
The Board looked to and analyzed the priority to see where a participant got information from,

[00:25:25] Speaker 00:
before joining the network, as opposed to looking to whether or not the broadcast channel was actually used to join a network.

[00:25:32] Speaker 00:
And for that reason, we do ask that you vacate and remand for the board to look to the actual claim language.

[00:25:38] Speaker 00:
If there aren't any further questions, I'll reserve any remaining time for all of your honors.

[00:25:42] Speaker 00:
Thank you.

[00:25:52] Speaker 04:
Very briefly, I believe your honors hit most of the points on the Linn reference.

[00:25:56] Speaker 04:
I'll just point out that the PTAB made an explicit finding of facts.

[00:26:00] Speaker 04:
Actually, it's 12 pages of facts they cited, and they applied all the current law that my friend over here talked about, the Henry Hall case and all the blue clips, all the case law it was controlling at that time.

[00:26:13] Speaker 04:
And they had to provide substantial evidence for their finding that LIM was not publicly available.

[00:26:17] Speaker 04:
They found that it was not disseminated to the public, like at a conference, like this court recently had some cases in the last couple of months,

[00:26:24] Speaker 04:
about how you should be very flexible about distributing papers to conferences, the GoPro case and the Jazz Farmer case.

[00:26:31] Speaker 04:
But they found that that was not distributed.

[00:26:32] Speaker 04:
It was just loaded onto the website and that the accessibility was based on the reasonable diligence to locate limb by the relevant public.

[00:26:43] Speaker 04:
And that was what they looked for at that point.

[00:26:46] Speaker 04:
There was no evidence.

[00:26:46] Speaker 04:
This was an issue of lack of evidence.

[00:26:49] Speaker 04:
As Judge Ranye pointed out, Mr. Little actually did more harm than good.

[00:26:54] Speaker 04:
he actually got on, when he was testifying in deposition, he admitted that he didn't know how the search functionality worked, didn't know if it did work, and when we pointed to the fact that it wasn't working today, he says, well, it's not working for Linux, apparently.

[00:27:09] Speaker 04:
So that is evidence that was never rebutted, and part of the key evidence that the PTAB relied upon.

[00:27:21] Speaker 04:
With respect to the 634 patent,

[00:27:24] Speaker 04:
I believe, Judge Moore, you got it right.

[00:27:26] Speaker 04:
They're looking at an abuse of discretion here, whether or not a reply declaration could come in.

[00:27:34] Speaker 01:
Do you have a right to file a reply declaration for the PTO?

[00:27:38] Speaker 01:
Is that a matter of right?

[00:27:39] Speaker 01:
Do you have to ask for special permission?

[00:27:41] Speaker 04:
No, you have a right, if you're the petitioner, and rules have just recently changed, now they're going to have the Patent Order, they're going to have a chance to file a surreply, I understand.

[00:27:50] Speaker 01:
But if you have a right to file a reply,

[00:27:53] Speaker 01:
And 12 paragraphs are legit.

[00:27:56] Speaker 01:
They don't go beyond the scope of your petition.

[00:27:58] Speaker 01:
And then three paragraphs go beyond the scope of the petition.

[00:28:02] Speaker 01:
Should the PTO be able to reject the reply in its entirety and refuse to consider any of the reply in light of the extra paragraphs?

[00:28:15] Speaker 04:
I think it's their discretion as to what they accept and what they don't accept on the reply.

[00:28:20] Speaker 04:
If, you know, just like district courts, if you put a reply in that's inappropriate, the court has discretion to either accept or not.

[00:28:28] Speaker 04:
They can look at the information that's in those reply and reject it because the bulk of the reply or the meat of it is going to be out of bounds.

[00:28:39] Speaker 04:
It wasn't raised in the opening petition.

[00:28:41] Speaker 04:
So I think it's their discretion.

[00:28:43] Speaker 04:
They can do so.

[00:28:44] Speaker 04:
But there is the evidence they cited to.

[00:28:48] Speaker 04:
does support their finding that Claims 10 and that the dependent claims are valid over the references.

[00:28:56] Speaker 04:
And with respect to the final argument that was up on the cross appeal regarding the newly added amended claims, most of the argument that they brought here is waived.

[00:29:05] Speaker 04:
I think the entirety of the argument has been waived.

[00:29:08] Speaker 04:
They argue that the board got the claim construction wrong, but they never proposed claim construction down below.

[00:29:16] Speaker 04:
And I think that's very telling.

[00:29:18] Speaker 04:
You criticize the construction that was given, but if you don't propose construction, it's waived that argument.

[00:29:25] Speaker 04:
They also added in on appeal additional grounds for the basis for remanding back that was not part of the original grounds.

[00:29:34] Speaker 04:
If you look at the original petition, they had Lynn by itself, direct play in view of Lynn, and Lynn in view of Gaudier.

[00:29:44] Speaker 04:
But on the appeal, they brought in Showbridge,

[00:29:46] Speaker 04:
and McCain, which is not part of the record below.

[00:29:50] Speaker 04:
So I'm out of time.

[00:29:51] Speaker 04:
So thank you, Your Honors.

[00:29:58] Speaker 00:
Thank you.

[00:29:58] Speaker 00:
Just a couple of quick points, Your Honors.

[00:30:00] Speaker 00:
On the issue of Lynn, I would also direct the court to InRea Lister, which also addressed this issue of coming up with hundreds or even thousands of irrelevant results, and that's still making a reference publicly accessible.

[00:30:12] Speaker 00:
I think that's pertinent to that same analysis.

[00:30:16] Speaker 00:
with respect to claim 10 of the 634 patent.

[00:30:20] Speaker 03:
In Lister, was the manuscript accessible by using or keying in key words?

[00:30:28] Speaker 03:
You're right.

[00:30:28] Speaker 03:
That's not the case here, right?

[00:30:32] Speaker 00:
Correct.

[00:30:32] Speaker 00:
I think the underlying... Lister doesn't apply here.

[00:30:35] Speaker 00:
I think the principle that flows throughout Lister, as well as Buclipso, is the idea that there can be an expectation that a person of ordinary skill in the art might have to look at hundreds of references or even thousands of references

[00:30:45] Speaker 00:
And that's OK.

[00:30:47] Speaker 00:
It's expected and acceptable.

[00:30:49] Speaker 00:
So that same principle applies here, just as if you were going through a brick and mortar library.

[00:30:55] Speaker 00:
There might be 100 or so books that you need to look through, but you'll find what you're going to get to.

[00:30:59] Speaker 00:
On the Claim 10-634 issue, the meat of the response, so to speak, were these 12 or so paragraphs that were directly directed at this issue, which I think

[00:31:14] Speaker 00:
board has an obligation to consider.

[00:31:16] Speaker 00:
And finally, with respect to the waiver argument on the substitute claims, this issue hadn't been raised before.

[00:31:23] Speaker 00:
So Patent Owner had never argued that the reason why the limitations were not met was because a server was being accessed.

[00:31:30] Speaker 00:
In addition, Patent Owner, again here, is improperly quoting the relied-upon grounds.

[00:31:37] Speaker 00:
The grounds that were relied upon did include Shrewbridge, as well as McCain and Gautier,

[00:31:42] Speaker 00:
That's, for example, in the 966 opposition to the motion to amend that appendix 9308.

[00:31:48] Speaker 00:
Patent owner is quoting from the other set of proceedings, the Linn proceedings.

[00:31:53] Speaker 00:
He's referencing the wrong part of the record.

[00:31:56] Speaker 02:
You're out of time.

[00:31:57] Speaker 02:
Thank both sides in the case is submitted.