[00:00:00] Speaker 04:
In a moment, we'll move to the next case.

[00:00:45] Speaker 04:
Next case is also Capco versus McAfee, 2017, 1989, 1991, and 92.

[00:00:53] Speaker 04:
Mr. Wetter.

[00:01:01] Speaker 04:
You're taking eight minutes this time and then yielding two to Mr. Iorio.

[00:01:15] Speaker 05:
With respect to this patent, there are two issues that are presented.

[00:01:23] Speaker 05:
The first issue is whether the preamble was limiting.

[00:01:31] Speaker 05:
The board ruled that it was non-limiting, raising despite the patent owner's argument that changes were made to the preamble

[00:01:45] Speaker 05:
that were intended to describe the invention.

[00:01:51] Speaker 04:
Well, the preamble doesn't have anything in it.

[00:01:53] Speaker 04:
That's the body the claim doesn't have.

[00:01:56] Speaker 04:
Isn't that right?

[00:01:58] Speaker 03:
What the preamble has that the body doesn't is... They both talk about blocking in real time harmful information, right?

[00:02:06] Speaker 03:
I guess to follow up on Judge Lurie's question, step C talks about

[00:02:13] Speaker 03:
to block in real-time harmful information.

[00:02:17] Speaker 05:
Right.

[00:02:18] Speaker 05:
So the distinction between what the preamble adds is the fact that the method, the real-time blocking method, consists of all three steps, A, B, and C, which are the connection request, the download, and then the blocking.

[00:02:41] Speaker 05:
When you have a process like this where the end result is the last step is the result that you want to get.

[00:02:51] Speaker 04:
What if the claim read a method comprising the steps of A, B, and C?

[00:02:57] Speaker 04:
Isn't that the same?

[00:02:58] Speaker 04:
So what came before is only a duplication of what is in the subsequent steps.

[00:03:07] Speaker 05:
If the

[00:03:09] Speaker 05:
If that's all the preamble said, then presumably it doesn't matter whether you read it as limiting or non-limiting.

[00:03:17] Speaker 05:
Well, let's get to the other issue.

[00:03:18] Speaker 05:
Here, the importance of whether you read it as limiting or non-limiting is whether the real-time constraint applies to steps A and B, which are the connection request and the harmful information code.

[00:03:32] Speaker 04:
Well, if I look at this classification, I see real-time applying to blocking.

[00:03:40] Speaker 04:
Blocking all over, blocks in real time, blocks in real time, not to the other steps, not to connecting and transmitting.

[00:03:58] Speaker 05:
So the specification is clear that what's addressed here is an online system for blocking harmful information.

[00:04:11] Speaker 05:
that is occurring in the course of surfing the web, essentially, engaging in online activities.

[00:04:17] Speaker 02:
But is there anything in the specification?

[00:04:19] Speaker 02:
I mean, you always just generally say, read the whole specification.

[00:04:22] Speaker 02:
Point to us where in the specification there is a reference to real time in connection with anything other than blocking.

[00:04:31] Speaker 05:
So as an example, and I

[00:04:41] Speaker 05:
concede that the word real-time is not used directly in connection with those other steps.

[00:04:47] Speaker 05:
Well, that's your whole point, though.

[00:04:49] Speaker 05:
I think what you understand from reading this is that the entire invention is a real-time process invention.

[00:04:58] Speaker 05:
So for example, on column 9, line 20 to 26, according to the present invention, the harmful information blocking code module

[00:05:10] Speaker 05:
is automatically provided to and installed in the client system by only online connecting to the harmful information management server so that harmful information detected on the client system can be actively blocked in real time without requiring a manual installation process.

[00:05:32] Speaker 05:
So it's referring to the entire process as happening in real time

[00:05:39] Speaker 05:
so that you can block that harmful information.

[00:05:45] Speaker 03:
Isn't there disclosure in the specification about how the user somehow manually reaches out to contact the server, the web page?

[00:05:59] Speaker 05:
In the first embodiment, they're describing a system in which you're

[00:06:07] Speaker 05:
initiating service in which you're getting the client connected with the management server.

[00:06:14] Speaker 05:
And in that case, you need to direct the system where the server is.

[00:06:22] Speaker 05:
Other embodiments don't require that.

[00:06:26] Speaker 05:
Other embodiments make it clear that you contact a server that has potentially harmful information.

[00:06:36] Speaker 05:
And that the whole process is automated after that.

[00:06:40] Speaker 05:
The whole point of having this connection request and automatic download, one pass back and forth is for the speed of it.

[00:06:53] Speaker 05:
Because you cannot wait while the user is surfing the web.

[00:07:00] Speaker 05:
They need instantaneous responses in order to not disrupt that.

[00:07:05] Speaker 05:
real-time process of surfing the web.

[00:07:09] Speaker 05:
The Korean file history is clear that it's directed, the invention as a whole is directed at these online threats that hacking, where you have hacking and the evil person is basically in the process of taking your personal information.

[00:07:30] Speaker 05:
You need to block that.

[00:07:31] Speaker 05:
Do you know of any Federal Circuit opinion

[00:07:34] Speaker 03:
in which this court has relied on the prosecution history of a related foreign patent to understand the claim terms of a U.S.

[00:07:43] Speaker 03:
patent?

[00:07:44] Speaker 05:
I haven't looked at that issue particularly.

[00:07:49] Speaker 05:
It was never debated before the board.

[00:07:53] Speaker 05:
In fact, McAfee's counsel first offered a Korean file.

[00:07:59] Speaker 04:
You run down your time and you

[00:08:02] Speaker 04:
We want Mr. Iorio to get a couple of minutes.

[00:08:05] Speaker 04:
Sure.

[00:08:06] Speaker 04:
Thank you.

[00:08:16] Speaker 01:
Good morning, Your Honor.

[00:08:17] Speaker 01:
Please record Robert Iorio for the appellant.

[00:08:20] Speaker 01:
My remarks are addressing the motion to amend, which the board denied.

[00:08:26] Speaker 01:
During the board's final decision and the aqua products decision was not

[00:08:32] Speaker 01:
to issue the en banc.

[00:08:33] Speaker 04:
This isn't an acqua case.

[00:08:35] Speaker 04:
This is a non-aqueous case.

[00:08:38] Speaker 04:
It's not an acqua case.

[00:08:40] Speaker 04:
Acqua concerns patentability.

[00:08:42] Speaker 04:
This is a new matter.

[00:08:44] Speaker 04:
Well, I... Description.

[00:08:46] Speaker 01:
I think that it does apply because the burden of persuasion was incorrectly assigned to the patent owner and not to petitioner.

[00:08:59] Speaker 02:
But didn't, even in acqua, didn't

[00:09:02] Speaker 02:
we actually distinguish the patentability issues from the threshold question of whether or not the claim adds new matter and is actually narrower than the original claim.

[00:09:16] Speaker 02:
In other words, written description is, expressly said, is encompassed within this threshold inquiry.

[00:09:25] Speaker 01:
And once the burden of production is satisfied as we believe it was in the patent owner,

[00:09:32] Speaker 01:
then the ultimate issue of patentability burden shifts to the petitioner.

[00:09:36] Speaker 01:
That's aqua products.

[00:09:37] Speaker 01:
And that's what was not done in this case.

[00:09:40] Speaker 02:
So what was the initial showing that you believe the patent owner made with respect to written description?

[00:09:47] Speaker 01:
Well, for example, with respect to, let me give a couple of substitute claims as examples.

[00:09:55] Speaker 01:
So claim 40 and 42, substitute claims 40 and 42.

[00:10:00] Speaker 01:
addressed, I'm just going to read a little part of them, the client system connecting to the first web server over the computer network according to information provided about the file to be executed from the web, second web server to the client system.

[00:10:17] Speaker 01:
The new language is about the file to be executed and we don't believe that that is new matter.

[00:10:22] Speaker 01:
That's a clarification that

[00:10:26] Speaker 01:
The connection is about the file to be executed by the user at the time that they are on the web.

[00:10:35] Speaker 01:
That's not new matter.

[00:10:37] Speaker 01:
It's clearly supported by the specification.

[00:10:39] Speaker 01:
I have a number of references.

[00:10:41] Speaker 04:
But connecting and transmitting in real time is new matter.

[00:10:45] Speaker 01:
Well, that goes to claims 44.

[00:10:47] Speaker 01:
So 40 and 42 are about the file to be executed.

[00:10:55] Speaker 01:
And we don't think that's new matter at all.

[00:10:57] Speaker 01:
The burden is on the petitioner and the board case needs to be remanded.

[00:11:02] Speaker 01:
44 includes the real time for connecting and transmitting steps.

[00:11:07] Speaker 01:
So as Judge Ten mentioned, this is step A and B and it added real time for connecting and transmitting steps.

[00:11:16] Speaker 02:
So the court specifically found that because under its construction of the

[00:11:22] Speaker 02:
original claims and of the specification as a whole, that there was nothing in the spec to support the notion of blocking at any other step.

[00:11:31] Speaker 02:
So why isn't that enough?

[00:11:33] Speaker 02:
I mean, that doesn't have anything to do with the burden being put on anybody.

[00:11:37] Speaker 01:
Well, there's a disagreement with the finding of the board on that point.

[00:11:41] Speaker 01:
They overlooked key parts of the specification.

[00:11:45] Speaker 01:
They failed to consider an important aspect in the prosecution history.

[00:11:52] Speaker 01:
And when you look at the proposed amended claims, which make clear that connecting and transmitting will be in real time, there's ample support in the specification.

[00:12:03] Speaker 01:
I'll give a couple of examples.

[00:12:04] Speaker 02:
Yeah, but didn't you concede, though, before the board that the board's claim construction would doom your proposed amendments if the board's claim construction and reading of the specification were correct?

[00:12:19] Speaker 01:
I did note that in the record, your honor.

[00:12:22] Speaker 01:
I think that that's not the correct takeaway.

[00:12:25] Speaker 01:
I'm aware of the back and forth at the hearing.

[00:12:32] Speaker 01:
I think that issue is, if you look at the preamble and conclude, as the board did, that it is not limiting.

[00:12:45] Speaker 01:
You don't look at the proposed amended claims, which clarify these points that I've just mentioned.

[00:12:52] Speaker 01:
The board found that there was not adequate support.

[00:12:56] Speaker 01:
And the question was, is there adequate support?

[00:12:58] Speaker 01:
But you have to look at, you can answer the question of whether the construction about limiting or non-limiting, you could answer that adversely to the patent owner, but you still should grant the motion to amend because the

[00:13:14] Speaker 01:
Proposed claim amendments make clear that these steps, the steps connecting and transmitting, have to occur in real time.

[00:13:22] Speaker 02:
Right, but if the board already found the specification wouldn't support that, then how can that claim not be adding new matter or be narrower than the original claim?

[00:13:37] Speaker 01:
We respectfully disagree with that finding.

[00:13:39] Speaker 01:
And I've mentioned, they overlooked parts of the specification

[00:13:44] Speaker 01:
They did not read the claims and the abstract and take those into account when they were looking at support in the specification.

[00:13:54] Speaker 01:
Just a couple of points about what's in the specification.

[00:13:58] Speaker 04:
Well, just one more point.

[00:13:59] Speaker 04:
You only asked for two minutes from your co-counsel.

[00:14:02] Speaker 04:
You're almost six now.

[00:14:05] Speaker 04:
One quick point.

[00:14:07] Speaker 01:
The specification, here are the references that support real time in a file to be executed.

[00:14:14] Speaker 01:
Mr. Wecker mentioned one at nine, twenty to twenty-six.

[00:14:19] Speaker 01:
Support in two, twenty-eight, thirty-seven.

[00:14:23] Speaker 01:
Column five, forty to fifty-two, and sixty-two to sixty-five.

[00:14:28] Speaker 01:
Column six, six to nine.

[00:14:31] Speaker 01:
Column seven, thirty-two to thirty-eight.

[00:14:35] Speaker 04:
Column eight, thirty-eight to forty-two.

[00:14:45] Speaker 00:
May it please the court, Jim Valentine from Perkins Cooey on behalf of McAfee.

[00:14:49] Speaker 00:
With me today are my colleagues Nancy Chang and Dan Begatel.

[00:14:53] Speaker 00:
I guess I'll begin with Mr. Yorio's topic, because some of the evidence there will overlap with the topic Mr. Bucker addressed.

[00:15:03] Speaker 00:
We respectfully submit that there's no local products issue here, because the board never reached the issue of whether the prior art invalidated the proposed substitute claims.

[00:15:11] Speaker 00:
Instead, the board denied the motion to amend

[00:15:14] Speaker 00:
and found that CAP failed the threshold requirement of showing written description support for the proposed amendments.

[00:15:20] Speaker 00:
That's by statute and also 37 CFR 42.121b requires, in order for an amendment to be considered, that they make a threshold showing of support.

[00:15:32] Speaker 00:
And they failed to do that.

[00:15:33] Speaker 00:
And that finding by the board is supported by substantial evidence.

[00:15:37] Speaker 00:
I'll go to the First Amendment, which is in proposed substitute claims 36 and 34.

[00:15:43] Speaker 00:
And this is the amendment to say that the connecting must be done in real time for the file to be executed.

[00:15:48] Speaker 00:
And this does dovetail with Mr. Wecker's issue as to whether the preamble is limiting.

[00:15:52] Speaker 00:
We say it is not.

[00:15:53] Speaker 00:
And in that analysis, the board goes through great lengths to show all the points in the specification where there is, in fact, no support for the connecting to be triggered by the imminent execution of a file.

[00:16:04] Speaker 00:
In particular, the language of the claims itself, both the body and the preamble, the real time limitation only applies in the blocking step.

[00:16:13] Speaker 00:
Figures 2A and 2B describe both embodiments.

[00:16:16] Speaker 00:
Figure 2A is the single-server embodiment.

[00:16:18] Speaker 00:
Figure 2B is the two-server embodiment in both of those.

[00:16:22] Speaker 00:
Only the blocking step is performed in real time.

[00:16:25] Speaker 00:
As Judge Chen mentioned, at column five, they explain the only explanation of how the connecting step is accomplished is it is triggered by a user either typing in the URL for the harmful information server or clicking on a link to that

[00:16:40] Speaker 00:
Typing and clicking are manual acts.

[00:16:42] Speaker 00:
They are not real-time acts.

[00:16:44] Speaker 02:
But do you agree that not all the claim amendments are the same?

[00:16:50] Speaker 02:
I mean, they made the argument that, yes, some of the claim amendments would put in blocking for other of the steps, but that at least, as I understood, your friend on the other side, to say that 40 and 42 were different.

[00:17:05] Speaker 02:
Do you agree with that?

[00:17:06] Speaker 00:
I would agree that 40 and 42 are different.

[00:17:08] Speaker 00:
My remarks up to this point relate only to substitute claims 36 and 44, which try to add the in real time as a file is executed limitation to the connection steps.

[00:17:19] Speaker 00:
36 and 34 add that the... All right, so then tell me about 40 and 42.

[00:17:30] Speaker 00:
So they would require the client to connect to the first web server according to information from the second web server

[00:17:35] Speaker 00:
about the file to be executed.

[00:17:38] Speaker 00:
And this is also not supported in the specification.

[00:17:42] Speaker 00:
The patent teaches for the two-server embodiment that the second web server provides hyperlink information for use in accessing the harmful information management server, as well as information relating to online services to the client.

[00:17:55] Speaker 00:
And that is at appendix 64, which is the 196 patent, at column 6, line 6 to 15.

[00:18:05] Speaker 00:
What that says, it's either hyperlink information, which has nothing to do with, it's not information about the file to be executed, or information about services relating to online services to the client.

[00:18:15] Speaker 00:
Again, the plain language of that reference to the specification says nothing about information about the file to be executed.

[00:18:22] Speaker 00:
And the entire structure of the claims in the invention undercuts the capsule argument completely, because the only thing that gleans any information about the file to be executed is the blocking module.

[00:18:34] Speaker 00:
And that is not even operative in either the method or system claims at this point in the claims.

[00:18:39] Speaker 00:
That does not come into play until after the connecting step and the transmission step.

[00:18:43] Speaker 00:
It occurs.

[00:18:43] Speaker 00:
Then it is actually automatically executed on the client.

[00:18:46] Speaker 00:
And then it only begins to inspect files, either through inspecting file input output or network packet I.O.

[00:18:52] Speaker 00:
But there is no information known about the file to be executed at the time of the connection step in either the single server or dual server embodiment.

[00:19:03] Speaker 00:
So and with respect to that, that limitation, the court goes through and here's, the board sort of incorporates a previous analysis and its opinion for that issue.

[00:19:16] Speaker 00:
So the board addressed, it was in the context of claim construction, and the board explained why the specification did not support construing according to information provided from a second web server as being

[00:19:28] Speaker 00:
information from a second web server about the file to be executed.

[00:19:31] Speaker 00:
And that discussion is at the board's appendix 21 through 22.

[00:19:34] Speaker 00:
So the discussion there, and it is based on substantial evidence with sites to the words of the patent and the declaration of Dr. Prakash.

[00:19:42] Speaker 00:
So it is grounded in substantial evidence.

[00:19:45] Speaker 00:
But it is in the context of claim construction.

[00:19:47] Speaker 00:
But it's the same exact language that's in the proposed claim amendment.

[00:19:51] Speaker 00:
So the board did not repeat its earlier analysis in the opinion.

[00:19:55] Speaker 00:
It just incorporated it.

[00:20:01] Speaker 00:
So and as far as the references that CAP, I don't know that I've got a complete description, but there is a lot of reliance on this term that it's an online service to the client.

[00:20:13] Speaker 00:
The patent makes clear that the online service is the provision of the blocking module over a network, which is online.

[00:20:23] Speaker 00:
And the quote for that would be the 196 patent, appendix 63, at 449, lines 49 to 51.

[00:20:31] Speaker 00:
So it says, the Harmful Information Management Server provides an online service for providing a harmful information blocking code module, which is capable of blocking in real time harmful information.

[00:20:40] Speaker 00:
So the online service is simply the provision of the blocking module over the network.

[00:20:45] Speaker 00:
There is also blocking of online threats, and that comes into play with respect to claim four and the claims devoted to inspecting network packet IO, blocking access to harmful and lascivious websites, and so forth.

[00:21:00] Speaker 00:
Unless the board has questions.

[00:21:03] Speaker 04:
Thank you.

[00:21:03] Speaker 04:
Mr. Valentine, Mr. Weffer has five minutes of rebuttal.

[00:21:20] Speaker 05:
Five minutes.

[00:21:21] Speaker 05:
So I'd like to address the issue of why the claim amendments were made.

[00:21:30] Speaker 05:
that affected the preamble.

[00:21:35] Speaker 05:
The concept that steps A and B would be modified by the words real time, that's exactly what the patent owner, the applicant was trying to do when they amended the preamble.

[00:21:56] Speaker 02:
You were trying to overcome specific prior art, right?

[00:21:59] Speaker 05:
Chen was a system that was online in the sense that Mr. Valentine just suggested, which was you can have a server and a client interacting to help virus detection and treatment.

[00:22:20] Speaker 05:
And that was what Chen was.

[00:22:22] Speaker 05:
But what Chen did was it had this server that would interactively communicate with the client

[00:22:29] Speaker 05:
over a lengthy period of time to identify.

[00:22:33] Speaker 02:
So blocking in real time would overcome that prior art without having to have the real time apply to the other aspects.

[00:22:43] Speaker 05:
Understand that the claim as it was written at the time of this rejection for Chen already had subpart C that talked about real time blocking of harmful information.

[00:23:00] Speaker 05:
Examiner maybe didn't realize that Chen didn't have any blocking involved necessarily.

[00:23:07] Speaker 05:
It was talking about treating viruses that were already in the client computer, but it absolutely had no sense of preventing a defense against online threats.

[00:23:23] Speaker 05:
In Chen, it was a

[00:23:27] Speaker 05:
non-real-time system.

[00:23:29] Speaker 05:
You had this interaction that essentially you can watch your computer do a virus scan, particularly at the time of these inventions, that would take hours and hours to go through all the files on your hard drive.

[00:23:44] Speaker 05:
Well, Chen was a process in which you'd offload a bunch of that effort to a server, and it would interactively help the client.

[00:23:56] Speaker 05:
So the applicant here was plainly distinguishing Chen on the basis that it wasn't a real-time system and that it didn't focus on files to be executed.

[00:24:13] Speaker 05:
The focus on a file to be executed is also understand a temporal component.

[00:24:20] Speaker 05:
This preamble has two temporal components to it.

[00:24:23] Speaker 05:
It's about a real-time method

[00:24:25] Speaker 05:
and blocking a file to be executed, which the parties have agreed means a file about to be executed.

[00:24:32] Speaker 05:
So the file to be executed language fully incorporates the fact that this is a real time blocking of files on the client computer.

[00:24:45] Speaker 05:
The real time method part of the preamble is focused on the fact that the other two elements have to also occur in real time.

[00:24:54] Speaker 05:
That's what it means when it's a real-time method comprising these three steps, is that you call it eventually a blocking of the file, because that's the end result.

[00:25:05] Speaker 05:
But in this patent, it has three steps that lead to that end result.

[00:25:14] Speaker 05:
So one place in the specification

[00:25:19] Speaker 05:
that it's absolutely clear that this was the problem they were addressing, not Chen and viruses already in computers.

[00:25:27] Speaker 05:
It says the present invention can prevent user computers operating in an open network environment from damage caused by harmful information.

[00:25:37] Speaker 05:
This is the hacking prevention point I was making before.

[00:25:40] Speaker 05:
And so again, then looking right at the file history where they're distinguishing Chen, the applicant said,

[00:25:48] Speaker 05:
In contrast to Chen, the presently claimed invention blocks harmful information in a file to be executed in real time on a computer network.

[00:25:59] Speaker 05:
This last phrase of in real time on a computer network would not be necessary

[00:26:05] Speaker 05:
Because the phrase blocks harmful information in a file to be executed.

[00:26:10] Speaker 02:
It already says that.

[00:26:11] Speaker 02:
But isn't the file to be executed language what the point of the amendment was in the prosecution history?

[00:26:18] Speaker 02:
In other words, the whole point was that Chen scanned all files, and that the president and vengeance scanned a particular file to be executed.

[00:26:29] Speaker 05:
Right.

[00:26:29] Speaker 05:
And the reason that they focused on that file to be executed is to scan all files.

[00:26:35] Speaker 05:
took too long.

[00:26:37] Speaker 05:
That didn't serve the purpose of this invention, which was to protect in an open network.

[00:26:43] Speaker 05:
You needed to focus on the particular threat.

[00:26:47] Speaker 05:
That was the file to be executed.

[00:26:49] Speaker 05:
And you needed to be fast in focusing on it.

[00:26:51] Speaker 05:
So you have this connection request, a response, and then it's decided whether that file is hot.

[00:26:59] Speaker 04:
Thank you, counsel.

[00:27:00] Speaker 04:
Your time has expired.

[00:27:02] Speaker 04:
We will take the case under advisement.

[00:27:04] Speaker 05:
Thank you.