[00:00:01] Speaker 01:
Good morning.

[00:00:02] Speaker 01:
We're going to start today with a motion for admission to the bar.

[00:00:07] Speaker 01:
And for this, I yield to my colleague, Judge Plager, as I'm going to be the one making the motion.

[00:00:14] Speaker 03:
Thank you.

[00:00:15] Speaker 03:
Good morning, everyone.

[00:00:16] Speaker 03:
You are about to have a pleasure.

[00:00:21] Speaker 03:
Judge, do you have a motion to make?

[00:00:23] Speaker 01:
I do.

[00:00:23] Speaker 01:
I move for the admission of Emily H. Chen, who is a member of the bar and is in good standing

[00:00:30] Speaker 01:
with the highest courts in California.

[00:00:32] Speaker 01:
I have knowledge of her credentials and am satisfied that she possesses the necessary qualifications.

[00:00:39] Speaker 01:
I'm particularly pleased to make this motion today because Emily has served as my law clerk for over the past year.

[00:00:46] Speaker 01:
She has been an excellent law clerk.

[00:00:49] Speaker 01:
She has been consistently dedicated, diligent, thoughtful, driven, and determined.

[00:00:55] Speaker 01:
She has been tremendously helpful in all aspects

[00:00:59] Speaker 01:
of our chambers and court operation.

[00:01:02] Speaker 01:
And I'm very happy to have had her in chambers.

[00:01:06] Speaker 01:
I am confident that based on her experience with me, she will serve admirably as a member of the bar.

[00:01:12] Speaker 03:
Well, with all that, sounds like admission to the bar is not enough.

[00:01:18] Speaker 03:
Judge Clevenger, how do you feel about this motion?

[00:01:26] Speaker 02:
I feel very well about the motion.

[00:01:28] Speaker 02:
I'm delighted to join and vote in favor of the motion.

[00:01:34] Speaker 03:
All right.

[00:01:34] Speaker 03:
We have a motion before us.

[00:01:36] Speaker 03:
It's been moved and seconded.

[00:01:39] Speaker 03:
I assume you'll recuse from voting, so it'll be up to Judge Clevenger and myself.

[00:01:44] Speaker 03:
Judge Clevenger, how do you vote on the motion?

[00:01:46] Speaker 03:
Yay.

[00:01:47] Speaker 03:
Judge Plager votes yay.

[00:01:49] Speaker 03:
I think we have a majority.

[00:01:50] Speaker 01:
Excellent.

[00:01:52] Speaker 01:
Emily, please raise your right hand.

[00:02:00] Speaker 00:
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?

[00:02:10] Speaker 00:
I do.

[00:02:11] Speaker 00:
Welcome to the bar of the United States Court of Shields.

[00:02:26] Speaker 03:
I use the floor.

[00:02:27] Speaker 01:
Thank you.

[00:02:29] Speaker 01:
We have three cases on the calendar this morning, one patent case on appeal from the United States Patent to Drain Mark Office, one patent case from District Court, and a veterans case from the US Court of Veterans Appeals.

[00:02:42] Speaker 01:
The first case is advanced marketing.

[00:02:45] Speaker 01:
And Mr. Moleters, whenever you're ready.

[00:02:49] Speaker 04:
Thank you, Your Honor.

[00:02:56] Speaker 04:
May it please the court.

[00:02:57] Speaker 04:
I am Robert Molitor, representing Appellant Advanced Marketing Systems, and with my colleague, Kurt Rommel, assisting me at counsel's table.

[00:03:05] Speaker 04:
The principal issue in this appeal is one of claim construction, which is reviewed de novo.

[00:03:10] Speaker 04:
Mr. Molitor, speak up just a little bit.

[00:03:13] Speaker 04:
Thank you, sir, Your Honor.

[00:03:15] Speaker 04:
As I say, the principal issue in this appeal is one of claim construction, which is reviewed de novo and pertains to what is a select code.

[00:03:25] Speaker 04:
as recited in claims 9 of the 445 patent and claim 15 of the 199 patent.

[00:03:32] Speaker 04:
What I'd like to explain is that the single select code must accomplish four functions.

[00:03:38] Speaker 04:
Four functions are permits tracking of the discounted vehicle or coupon, permits tracking of the individual purchaser's purchase products and the prices, and it uniquely identifies all the discounts of the discounted vehicle, and fourth, uniquely identifies the vehicle.

[00:03:54] Speaker 04:
Again, vehicle meaning the means as in a coupon.

[00:04:00] Speaker 04:
There can be many codes, but at heart here is that there must be a single select code.

[00:04:07] Speaker 01:
So you agree there could be other kinds of codes?

[00:04:09] Speaker 04:
Sure.

[00:04:10] Speaker 04:
Sure.

[00:04:10] Speaker 04:
There can be all sorts of other ones.

[00:04:12] Speaker 04:
You know, customer ID, a date, an expiration, or whatever.

[00:04:16] Speaker 04:
It makes no difference.

[00:04:18] Speaker 04:
But there must be a single select code that does those four functions.

[00:04:23] Speaker 01:
I can see your argument.

[00:04:24] Speaker 01:
more so with the claims that have the language exactly one select code.

[00:04:30] Speaker 01:
But what about the other claims?

[00:04:32] Speaker 04:
Okay, yes, Claim 9, Your Honor, as you say, says exactly one.

[00:04:35] Speaker 04:
Claim 15 says a select code, which, given the prosecution history, and especially as Claim 9 ended up, that during prosecution to get over the Art Dixon was amended from A to a

[00:04:54] Speaker 04:
exactly one code, but our contention is that claim 15 as well refers to a select code as supported by the spec and as it's used.

[00:05:09] Speaker 04:
And in addition, if we look at the two references that the board has relied on, the Nick Berger and Ovadia, that both of those references... AA ordinarily permits more than one.

[00:05:23] Speaker 04:
Correct.

[00:05:24] Speaker 04:
You are correct, Your Honor.

[00:05:27] Speaker 02:
However, if we look at... And the claim nine language is sort of awkward in the light of the fact that it follows a comprising, it's a comprising claim, right?

[00:05:35] Speaker 04:
That is correct.

[00:05:36] Speaker 04:
And the board relied on Georgia Pacific to distinguish between comprising and consisting.

[00:05:43] Speaker 04:
Comprising being open-ended, consisting not.

[00:05:46] Speaker 04:
However, later court cases as in Baldwin-Graphic, and especially Harari versus Lee,

[00:05:53] Speaker 04:
kept on going and looked at the law and said, when the claim and the specifications include specific discussion of that one can mean exactly one or just a single one, that even in the context of an open-ended comprising claim, it refers to one.

[00:06:14] Speaker 02:
What the board did... You could have said exactly one and only one and never more than one.

[00:06:19] Speaker 02:
I mean, it's just odd because the claim was originally drafted as a comprising claim, and then when you amended it during prosecution, you stuck with a problem.

[00:06:31] Speaker 04:
You're right.

[00:06:32] Speaker 04:
I mean, comprising is in the claim.

[00:06:35] Speaker 04:
However, by putting in exactly one and referring to only one throughout all of the prosecution history,

[00:06:44] Speaker 04:
it was meant to be a single one.

[00:06:49] Speaker 04:
And as I say, in Harare, when we talk about the history and the claims overriding the comprising claim, or the open-endedness of comprising, you cannot read, or what the board has done is read out a specific limitation.

[00:07:12] Speaker 04:
we need the single code or, again, as I say, to distinguish over here.

[00:07:17] Speaker 02:
Your argument is that neither Nixterberger and you view neither Nixterberger nor Ovadia providing only one select code, right?

[00:07:25] Speaker 04:
Correct.

[00:07:25] Speaker 04:
And in fact, the board found as fact in the final written decisions that both Nixterberger and Ovadia required and relied on multiple codes to teach the four distinct functions of our single select code.

[00:07:43] Speaker 04:
Where the board erred is, I believe, in the comprising argument that was brought up.

[00:07:50] Speaker 04:
Sue Esponte had never been brought up during any of the other actions of the board.

[00:07:57] Speaker 02:
Well, assume you're right that the language requires only one select code, at least in claim nine, because of the language there.

[00:08:12] Speaker 02:
Why isn't it so that either Nickteberger or Ovadia taught a single select code?

[00:08:21] Speaker 04:
Nickteberger and Ovadia, Nickteberger requires UPC code to identify the customer.

[00:08:28] Speaker 02:
The question would be, is there a code in Nickteberger or Ovadia that provides, satisfies the floor function?

[00:08:33] Speaker 04:
No.

[00:08:34] Speaker 02:
Well, that's what you say.

[00:08:36] Speaker 02:
Isn't that where the rubber just hit the road?

[00:08:40] Speaker 04:
That's where the rubber hits the road, but the board also agreed that Nick Berger and Ovadia required multiple codes, at least two, to do those four distinct functions.

[00:08:51] Speaker 04:
And that was, again, in the final written decisions, that they said that the claim does not preclude the presence of other codes, such as Nick Berger's magnetic strip of the code on a customer's special card,

[00:09:07] Speaker 04:
And Ovadia requires the presence of other codes, such as the Indisha 41.

[00:09:12] Speaker 02:
It can require the presence of other codes.

[00:09:14] Speaker 02:
The question is, does it have a code that satisfies the four functions?

[00:09:19] Speaker 04:
No, it does not.

[00:09:23] Speaker 02:
I didn't hear you saying that.

[00:09:26] Speaker 02:
The fact that each of them have additional code doesn't mean that they can't have one that satisfies the four functions.

[00:09:34] Speaker 04:
It doesn't preclude that, but Nick Berger and Ovadia

[00:09:37] Speaker 04:
use the multiple codes to do those four functions.

[00:09:43] Speaker 04:
So they don't have a single code on any of the instruments that conveys all four.

[00:09:49] Speaker 04:
And as I say, I think the board recognized that fact, but sort of went astray and used the comprising argument against Susponte to say that it is okay to have multiple codes and read out the specific

[00:10:05] Speaker 04:
limitations that we require one code to do the four functions.

[00:10:13] Speaker 04:
The other issue I'd like to discuss is also the phrase during the checkout process, which is in the preamble of both claim nine and claim nine.

[00:10:21] Speaker 03:
I'm going to ask about that.

[00:10:23] Speaker 03:
Would you talk to that, please?

[00:10:24] Speaker 04:
I would be glad to.

[00:10:27] Speaker 04:
If you look at the preambles of both of those claims, they're exactly the same.

[00:10:31] Speaker 04:
And the preambles talk about a processing system for tracking and processing the plurality of discounts during the checkout process.

[00:10:41] Speaker 04:
And that's not a field of use argument.

[00:10:44] Speaker 04:
And I guess to put this in context, back in the late 90s and the early 2000s, fraud was a problem with couponing in the sense of I take my electronic coupon.

[00:10:56] Speaker 04:
I come up to the checkout register.

[00:10:58] Speaker 04:
I use my coupon.

[00:11:00] Speaker 04:
I get my discount.

[00:11:01] Speaker 04:
I can walk out the door and I can turn around and come right back in and use it again.

[00:11:06] Speaker 04:
And that was referred to as reusing a coupon.

[00:11:12] Speaker 04:
And so what is meant in the preamble is that all of these four functions must occur during that tracking and processing of the coupons during the checkout process.

[00:11:25] Speaker 04:
In fact, in the specification, and let me read you a short quote,

[00:11:30] Speaker 04:
It is yet another object of the present invention to provide an integrated promotion system that avoids retailer in-store post-redemption processing of coupons, which says, I can't wait till later to process it, because in that example, a person could use a coupon, come back in, and use it again, and fraudulently get an extra discount.

[00:11:57] Speaker 04:
And so, during the checkout process, in the preamble of both claims says, all of these four functions must occur during that checkout process.

[00:12:07] Speaker 03:
The board, if I understand it correctly, said that's not limiting, isn't that right?

[00:12:11] Speaker 04:
They did.

[00:12:12] Speaker 04:
They did.

[00:12:12] Speaker 03:
A preamble is ordinarily found to be limiting?

[00:12:16] Speaker 04:
Absolutely.

[00:12:17] Speaker 04:
In Summit 6, generally, a preamble is not limiting.

[00:12:20] Speaker 04:
But in that case, they also cited to Catalina Marketing that says, if it recites essential structure or steps,

[00:12:27] Speaker 04:
or if it is necessary to give life, meaning, and vitality to the claim, then it is limiting.

[00:12:34] Speaker 04:
And we contend.

[00:12:36] Speaker 04:
Does preamble do any of that?

[00:12:38] Speaker 04:
Absolutely.

[00:12:39] Speaker 04:
It gives the meaning and the vitality.

[00:12:42] Speaker 04:
Because the whole problem is that this process must occur during checkout.

[00:12:47] Speaker 04:
Or again, it doesn't make any sense.

[00:12:50] Speaker 01:
I understand you're relying primarily on the specification for that argument.

[00:12:55] Speaker 01:
saying that the specification is talking about how important it is that it be during the tick-out process.

[00:12:59] Speaker 01:
But lots of times when you look at this question of whether something breathes life and breath into the body of a claim, it's kind of one of anteceding phases.

[00:13:07] Speaker 01:
What do you have for anteceding phases with respect to this?

[00:13:12] Speaker 04:
Your Honor, you're absolutely correct.

[00:13:17] Speaker 04:
We're not relying on the antecedent basis as much as describing during the checkout process for the tracking and processing.

[00:13:26] Speaker 04:
But I agree.

[00:13:29] Speaker 04:
I mean, if the board would allow actual amendments of claims, I would fix that.

[00:13:38] Speaker 04:
But the reality is it does not.

[00:13:44] Speaker 04:
This is true.

[00:13:46] Speaker 04:
Okay, but that's why again I say during since the preambles talk about tracking and processing during the checkout process That again the the whole concept would fall apart if all of that does not occur during checkout Mr.. Knowledgers your your interior rebuttal time would you like to say preserve?

[00:14:05] Speaker 04:
I would like to save my time.

[00:14:07] Speaker 04:
Thank you very much Thank you

[00:14:20] Speaker 05:
May it please the court, Stephen Kinnaird for the Appellees.

[00:14:24] Speaker 05:
I too will begin with the exactly one select code, a select code requirement.

[00:14:30] Speaker 05:
And I would point out first that this is a new argument raised in their reply brief.

[00:14:36] Speaker 05:
They now concede in their reply brief that the claim permits multiple codes as long as there's one select code.

[00:14:45] Speaker 05:
But it's the presence of multiple codes, not multiple select codes, to which the board's comprising holding was directed.

[00:14:53] Speaker 05:
And by the way, that was not a new ground of rejection.

[00:14:55] Speaker 05:
We made the argument that the claim permits multiple codes and the board just identified a textual basis in the claim for that.

[00:15:03] Speaker 05:
They're now trying to switch horses in the reply brief and say that the board failed to make the findings.

[00:15:13] Speaker 05:
that the putative select code in Nick Berger and Ovadia performs all the functions of the code.

[00:15:20] Speaker 05:
And that is just simply not true, Your Honor.

[00:15:23] Speaker 05:
The board, in great detail, and this is at appendix 20 to 22, 27 to 30, 91 to 96, and 102 to 104, stepped through detailed claim charts for a single select code and showed

[00:15:41] Speaker 05:
that it had all the enumerated capabilities and they said uh... petitioners stated that petitioners have stated this claim chart lying on their expert testimony and we agree with it so it was precisely what claim nine would you agree that claim nine requires a single select it says exactly one select and there is some of the comprising language doesn't mean you can have more than one select

[00:16:06] Speaker 02:
And the board never found that.

[00:16:08] Speaker 02:
So you heard me asking Mr. Molotov.

[00:16:11] Speaker 02:
As I said, I was under the impression that there was an argument that Ovadia, at least, did contain a code that was capable of performing all the functions of a select code.

[00:16:24] Speaker 05:
Yes.

[00:16:24] Speaker 05:
Both Nick Berger and Ovadia, the board found, based on substantial evidence, had a single code that performed all those capabilities.

[00:16:32] Speaker 05:
And Nick Berger, it is the customer account number

[00:16:36] Speaker 05:
on the printed coupon selection list.

[00:16:40] Speaker 05:
In Ovadia, it is barcode Indisha 42, and this is important, in the embodiment where it contains user information, which Nick Berger teaches is one embodiment of bar Indisha 42.

[00:16:55] Speaker 05:
And so that one performs all four of those functions.

[00:17:00] Speaker 02:
Where in the board's opinion do they discuss OVIDIA satisfying all four

[00:17:05] Speaker 02:
requirements of a select code?

[00:17:07] Speaker 05:
That would be for the 445 patent would be at 27 to 30.

[00:17:13] Speaker 05:
You'll see the claim.

[00:17:16] Speaker 05:
They have a claim chart.

[00:17:17] Speaker 05:
They say petition relies upon Dr. Lewis's testimony.

[00:17:21] Speaker 05:
And they have the claim language.

[00:17:23] Speaker 05:
And then they show that Ovadia has teachings corresponding to all the claim language.

[00:17:29] Speaker 05:
And that goes all the way through to 30 where it says 42.

[00:17:34] Speaker 05:
I'm sorry?

[00:17:35] Speaker 02:
Yeah, it's Avaria 42.

[00:17:37] Speaker 05:
Right.

[00:17:38] Speaker 05:
And so Avaria 42 has, when it has user information incorporated into the code, it also provides indicia for the discounts and allows the tracking and reading, uniquely identifies the vehicle, and it uniquely identifies either the individual discounts or the common discounts.

[00:18:00] Speaker 05:
It has all the claims.

[00:18:02] Speaker 05:
And the key is,

[00:18:02] Speaker 05:
nowhere in their briefs certainly not in their opening brief do they ever address these findings do they ever show they're not supported by substantial evidence they make arguments uh... well maybe i'm wrong in my hearing is totally failing but i've heard Mr. Volter make the argument that the board made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made board absolutely made no such finding that you say the board made

[00:18:32] Speaker 05:
I'm showing you exactly in the opinion they made those findings.

[00:18:36] Speaker 05:
And so the reply brief makes arguments about the magnetic stripes, coupon index numbers, customer cards, but those are all off the mark.

[00:18:48] Speaker 05:
They don't address the specific embodiments in both Nick Berger and Ovadia that the board mapped to the claim limitations in painstaking detail.

[00:19:00] Speaker 05:
So they're just off the mark.

[00:19:02] Speaker 05:
address more of the argument they've now abandoned that you can have more than one code.

[00:19:06] Speaker 01:
I'd like to ask you a question.

[00:19:08] Speaker 01:
On page JA29 in the claim chart, it talks about the select code uniquely identifying the vehicle such that the select code can be selectively deactivated.

[00:19:18] Speaker 01:
Where is it taught that that is referring to the barcode 42?

[00:19:23] Speaker 05:
Yeah, the barcode 42 is, well, he's talked about

[00:19:31] Speaker 05:
earlier in 28, that brochure 30 describes the select code as this barcode indicia, which identifies in machine readable code the brochure title which is readable by the system.

[00:19:45] Speaker 05:
And it goes on to say that in one embodiment, it may also identify the user information, name and address of the person and household.

[00:19:55] Speaker 05:
So 42 is specific to the brochure.

[00:19:58] Speaker 05:
So it's unique to that brochure.

[00:20:01] Speaker 05:
and when it's combined with the user.

[00:20:04] Speaker 05:
So it can have a standardized vehicle.

[00:20:09] Speaker 05:
And so this is just the brochure title.

[00:20:11] Speaker 05:
But in the embodiment, when 42 also contains the user information, simply scanning that one select code gives you the information that allows all the unique tracking of the claim.

[00:20:25] Speaker 05:
And so I think that's very clear.

[00:20:27] Speaker 05:
And again, I think certainly substantial evidence

[00:20:31] Speaker 05:
that would address that.

[00:20:32] Speaker 03:
If I understood it correctly, the board was of the view that both Nick Berger and Ovadia anticipated.

[00:20:41] Speaker 03:
That's right, both of them.

[00:20:43] Speaker 03:
So if either one of them does... That's correct, that's correct.

[00:20:48] Speaker 03:
You still win.

[00:20:49] Speaker 05:
Yeah, yes we do.

[00:20:51] Speaker 05:
And there's no dispute, for example, Ovadia may have a postal code, number 44, a different code, but that's not a select

[00:20:58] Speaker 05:
If only they've identified a single select code in Obadia and in Nickberger that performs all the enumerated capabilities.

[00:21:05] Speaker 05:
I'd also like now to address the selective deactivation point.

[00:21:11] Speaker 05:
And again, all of these claims only affect claims 9 and 15.

[00:21:16] Speaker 05:
They have not appealed the board's rulings that the other claims lack written description support.

[00:21:22] Speaker 05:
And the board properly found

[00:21:28] Speaker 05:
that the claim preamble is not limiting and also, alternatively, that it is irrelevant to anticipation.

[00:21:36] Speaker 05:
And the preamble merely states an intended use for the claim discount vehicle.

[00:21:41] Speaker 05:
And you can see that the language in which they rely, which is, quote, tracking and processing, unquote, discounts, quote, during the checkout process, unquote, actually modifies the unclaimed data processing system, not the discount vehicle.

[00:21:57] Speaker 05:
So it can't state more than an intended use.

[00:22:01] Speaker 05:
Moreover, the preamble does not recite any essential structure or capabilities of the code that are not in the body.

[00:22:09] Speaker 05:
The body states a complete invention, and it does not refer back to any antecedent matter in the preamble to define or limit the claims.

[00:22:19] Speaker 05:
I would also point out that the board properly construed the phrase

[00:22:26] Speaker 05:
tracking and processing discounts during the checkout process to apply, to refer to applying the discounts during checkout, not to selective deactivation.

[00:22:38] Speaker 05:
And there's specification support for that as well.

[00:22:42] Speaker 05:
I would also add that the claim language forbids AMS's interpretation.

[00:22:47] Speaker 05:
The claim uses the parallel phrase during checkout to modify, when talking in relation

[00:22:56] Speaker 05:
to reading and tracking the vehicle and the purchases, because there it serves a clear purpose, because the code has to supply the information so that the discounts can be applied during checkout.

[00:23:09] Speaker 05:
And it must be in a format readable by the checkout scanner.

[00:23:14] Speaker 05:
But it omits that during checkout language from the selective deactivation clause, because it would make no sense there.

[00:23:23] Speaker 05:
That clause is just

[00:23:26] Speaker 05:
stating a capability of an ordinary barcode and what can be just a paper vehicle.

[00:23:31] Speaker 05:
And all that capability is uniquely identifying the vehicle, quote, so that said select code can be selectively deactivated.

[00:23:42] Speaker 05:
It doesn't say anything about deactivated during checkout.

[00:23:45] Speaker 05:
And it would make no sense because the deactivation of the discount for future transactions has nothing to do with the present checkout

[00:23:54] Speaker 05:
process that they say this has to occur.

[00:23:56] Speaker 02:
It could occur during checkout, right?

[00:24:00] Speaker 02:
Theoretically, yes.

[00:24:01] Speaker 02:
You could have one stop shopping there, haven't you?

[00:24:05] Speaker 05:
Well, you could, but the claim doesn't require it to be within checkout.

[00:24:10] Speaker 05:
I'm just saying it wouldn't make any sense, because also a capability of identifying the vehicle

[00:24:18] Speaker 05:
doesn't really have any effect or bearing on the timing when the unclaimed computer deactivates the promotion.

[00:24:27] Speaker 05:
The specification also makes this very clear.

[00:24:29] Speaker 05:
Appendix 621.7, column 7, 18 to 21, says the checkout is completed by providing the customer the discounts found on the vehicle and storing the data collected during the scanning operation.

[00:24:45] Speaker 05:
Nothing about selective.

[00:24:46] Speaker 05:
uh... deactivation it goes on at column ten twenty to twenty four to say once the vehicle is scanned discounts applied the computer may thereafter uh... deactivate the pro the promotion uh... so that means that uh... after check out and that's what the board found and even if there were ambiguity we submit there is none uh... the requirement that the claim as a whole have the broadest reasonable interpretation

[00:25:14] Speaker 05:
means that the board properly rejected AMS's interpretation of the preamble as limiting.

[00:25:21] Speaker 05:
My colleague did not address the CBM eligibility.

[00:25:26] Speaker 05:
I think that's quite clear.

[00:25:29] Speaker 05:
They didn't contest the board's application of the financial product or service requirement.

[00:25:35] Speaker 05:
They didn't raise unwired planet.

[00:25:38] Speaker 05:
After it was decided, unwired planet is irrelevant because it invalidated

[00:25:43] Speaker 05:
two prongs of the board's former test, but did not invalidate the prong that the board relied on.

[00:25:51] Speaker 05:
Here, the financial in nature prong, and these are quintessential CBN patents.

[00:25:56] Speaker 05:
They deal and claim activities relating to the promotion of and price discounting of sales of retail products, which are financial transactions, and they don't recite as the board finds any technological development.

[00:26:11] Speaker 05:
It's all conventional

[00:26:12] Speaker 05:
barcodes, scanners, a generic computer, existing software.

[00:26:17] Speaker 05:
It's not a technical solution to a technical problem.

[00:26:21] Speaker 05:
And simply facilitating a business solution of overcoming the problems with individual coupons and the physical handling of them by using a general computer does not suffice.

[00:26:35] Speaker 05:
So unless the court has any more questions on jurisdiction, I'll rest on that.

[00:26:40] Speaker 05:
Thank you.

[00:26:42] Speaker 01:
Thank you, Your Honor.

[00:26:48] Speaker 03:
Mr. Molliger, let's pick up that last discussion.

[00:26:54] Speaker 03:
You didn't raise the CBM issue in your opening statement.

[00:26:59] Speaker 03:
Can we assume you're no longer pursuing that issue?

[00:27:03] Speaker 04:
Your Honor, no.

[00:27:05] Speaker 04:
We still believe that this is not a CBM-eligible set of patents.

[00:27:12] Speaker 04:
because of Unwired Planet and Secure Access, which were decided after all of our briefs had been submitted.

[00:27:20] Speaker 03:
And back in that kind of time frame, the board was... Well, in light of those two cases, do you still think you want to make your argument?

[00:27:29] Speaker 04:
My argument is that the petitioner never made the proper arguments and relied on the board's broad interpretation of what is CBM eligible.

[00:27:42] Speaker 02:
And the question is not whether the petitioner raised the argument.

[00:27:45] Speaker 02:
The question is whether or not the board bought it.

[00:27:47] Speaker 02:
We're reviewing the final decision of the board, not the petition.

[00:27:53] Speaker 02:
Your Honor.

[00:27:53] Speaker 02:
So you look in the board's decision, they cite secure access, right, which isn't around anymore.

[00:27:59] Speaker 02:
But it did the same office on our planet as to the no-no words.

[00:28:07] Speaker 02:
And the no-no words don't appear anywhere in the decision.

[00:28:11] Speaker 03:
And we review only the final written decision, right?

[00:28:15] Speaker 03:
Correct.

[00:28:16] Speaker 03:
So where does that leave you, sir?

[00:28:20] Speaker 04:
That leaves us just, again, as I say, I just was bringing up the point that we believe the petitioner didn't fulfill their obligation in the original petition.

[00:28:30] Speaker 04:
The board took a much broader- You do understand we are not reviewing the petition?

[00:28:37] Speaker 03:
I understand, Your Honor.

[00:28:39] Speaker 04:
I understand.

[00:28:41] Speaker 04:
However, also would like to make a comment on the thereafter word that Council just brought up is that therefore means after checkout and in our briefs and so forth, thereafter just means I cannot do a selective deactivation until after the discount has been applied.

[00:29:04] Speaker 01:
Are you referring to language in the specification?

[00:29:06] Speaker 04:
Correct, correct, correct.

[00:29:08] Speaker 04:
And that's all it is.

[00:29:09] Speaker 04:
It just thereafter doesn't mean

[00:29:11] Speaker 04:
You know, down the road in a week or a day or whatever, it just means I have to apply the discount first and then the selective deactivation is after that.

[00:29:21] Speaker 03:
Again, just for the record, one of the issues you identify in your statement of issues is whether the AIA proceedings are unconstitutional.

[00:29:32] Speaker 03:
You're no longer pursuing that.

[00:29:34] Speaker 04:
We're no longer.

[00:29:36] Speaker 04:
In our last brief, we... Okay.

[00:29:40] Speaker 03:
I just want to know what we need to deal with.

[00:29:42] Speaker 03:
Don't worry about that one.

[00:29:44] Speaker 03:
Okay.

[00:29:44] Speaker 03:
Thank you.

[00:29:46] Speaker 04:
However, what I'd also like to bring out is neither Nick Berger or Avadia do the selective deactivation.

[00:29:55] Speaker 04:
During the checkout and again that goes back to the preamble of all of the four steps as outlined in the claims must happen during checkout So to review the select code And again, I guess back to what it is in a select code We talked about the four distinct functions I go back to the board and in its final written decisions that again it

[00:30:22] Speaker 04:
decided and found his fact that both Nick Berger and Ovadia required more than one code.

[00:30:29] Speaker 04:
That was their conclusion.

[00:30:31] Speaker 02:
And that... It may have required more than one code, but was there a code that performed all four functions?

[00:30:39] Speaker 02:
That's the question.

[00:30:40] Speaker 04:
That is the question.

[00:30:41] Speaker 02:
And your adversary pointed to parts of the board decision where grounds was there to say yes, at least with regard to

[00:30:51] Speaker 02:
Avadia, it's got, in that discussion, that number 42 satisfies all 404 functions.

[00:30:58] Speaker 04:
I disagree, as the board came down to the conclusion that it requires the Avadias in addition to 41, so that it required both.

[00:31:10] Speaker 04:
And as I say, in addition, the selective deactivation doesn't occur.

[00:31:15] Speaker 02:
Where does it expressly say it requires 41?

[00:31:19] Speaker 02:
Satisfy the four functions?

[00:31:22] Speaker 04:
In what page?

[00:31:24] Speaker 04:
Appendix 25 and Appendix 107.

[00:31:29] Speaker 01:
Where exactly on page 25?

[00:31:32] Speaker 02:
And we're talking about Alvada here?

[00:31:34] Speaker 04:
25 is Nick Berger.

[00:31:37] Speaker 02:
Well, I'm talking Alvada.

[00:31:39] Speaker 02:
Let's talk about Alvada.

[00:31:40] Speaker 04:
Is Appendix 107.

[00:31:41] Speaker 02:
107.

[00:31:50] Speaker 04:
Quote the the transition Transitional term comprising renders the claim open and it's such that the claim does not preclude the presence of other codes such as Obadi is in dish of 41 That doesn't deal with a question of whether or not 42 meets the four limitations And we maintain that it does not I know you maintain it but the Adversaries pointed a claim church of one not that show it does so

[00:32:26] Speaker 04:
OK, on appendix 107 on the bottom of the page under select code.

[00:32:31] Speaker 02:
That's the same point, which is to say, yeah, I mean, you can have other codes.

[00:32:37] Speaker 02:
And Ovadia indicia 41 is not a select code, right?

[00:32:42] Speaker 04:
Correct.

[00:32:43] Speaker 02:
So who cares if Ovadia has got a bunch of codes that are not select codes?

[00:32:47] Speaker 02:
The question is, does it have one select code that does all four?

[00:32:51] Speaker 04:
All four functions.

[00:32:53] Speaker 02:
And it sure looked to me like, showing us on page 28, bar code 42 does the trick.

[00:33:08] Speaker 02:
It meets the four limitations.

[00:33:12] Speaker 02:
So we really don't care how many additional codes that perform less than all four functions.

[00:33:19] Speaker 04:
Correct.

[00:33:20] Speaker 02:
Correct.

[00:33:21] Speaker 02:
That's just not worth talking about.

[00:33:22] Speaker 04:
Correct.

[00:33:23] Speaker 04:
We need one code that does all of the four functions.

[00:33:27] Speaker 02:
And in order for the board to get where it got, it has to have disagreed with you because it's not going to have anticipation based on Avadia unless there is one code in Avadia that meets all four of the select code parameters.

[00:33:43] Speaker 04:
Correct.

[00:33:44] Speaker 02:
But in the final written... That is a matter for us to decide whether substantial evidence supports what the board said Avadia teaches, right?

[00:33:52] Speaker 04:
Agreed.

[00:33:52] Speaker 04:
But in the final written decisions, the board, I believe, changed its arguments and said, Nick Berger and Avadia use the multiple codes in the way that it anticipates is back to the comprising argument that says it's the open-ended.

[00:34:11] Speaker 02:
I hear what you're saying.

[00:34:12] Speaker 04:
Yeah.

[00:34:14] Speaker 01:
I think we have your argument, unless you have a wrap-up sentence that you want to provide.

[00:34:24] Speaker 04:
As I mentioned, the four distinct functions of the under proper claim construction comprise and does not negate the claims.

[00:34:37] Speaker 04:
Also, we talked about the preamble is limiting, because I truly believe it gives meaning to the claims that it finds what must occur during checkout process.

[00:34:47] Speaker 04:
I thank the court for your input.

[00:34:49] Speaker 01:
We thank counsel, and the case is submitted.