[00:00:04] Speaker 04:
Oh, you're fine.

[00:00:39] Speaker 04:
Next case is Chestnut Hill Sound, Incorporated versus Apple, 2017, 1808.

[00:00:45] Speaker 04:
Ms.

[00:00:46] Speaker 04:
Mosser, good morning.

[00:01:10] Speaker 01:
Good morning.

[00:01:10] Speaker 01:
May it please the court, I'm Alexis Mosser.

[00:01:12] Speaker 01:
I'm here on behalf of the appellant, Chestnut Hill Sound Incorporated.

[00:01:16] Speaker 00:
Ms.

[00:01:16] Speaker 00:
Mosser, if we disagree with your three claim limitations that you dispute on appeal, do you agree we don't have to address your conditional invalidity arguments?

[00:01:27] Speaker 01:
If you disagree with my claim construction arguments, all three of them, then it's just positive, Your Honor, and there's nothing left to decide.

[00:01:35] Speaker 01:
But I am here about three claim construction issues, and I think that the board below

[00:01:39] Speaker 01:
did us a disservice by evaluating these claim construction issues, not in the totality of the multimode media device that we disclosed, but rather in a very piecemeal fashion.

[00:01:48] Speaker 01:
And they also did so backwards.

[00:01:50] Speaker 01:
They started with one of the last limitations in the second mode as the very first thing that they reviewed.

[00:01:55] Speaker 01:
And by doing so, it tainted the entire review by the board.

[00:02:00] Speaker 01:
A more appropriate place to start, and where I'd like to start with you today, is with the first limitation, which is the configuring selectively limitation.

[00:02:07] Speaker 01:
I think this limitation frames how the device works in a two-mode fashion.

[00:02:11] Speaker 01:
And if we step through some of the prosecution history, it allows the court to see that in light of the prosecution history and the specification, we're not asking you to read a limitation into this claim.

[00:02:20] Speaker 01:
We're simply asking you to read

[00:02:22] Speaker 01:
the claim in light of the specification.

[00:02:23] Speaker 03:
Let me ask you a few questions, because there's a few gaps here in terms of your discussion.

[00:02:28] Speaker 03:
And maybe you all understand these things and agreed on them.

[00:02:31] Speaker 03:
But what do you define the media device to be in the context of this claim?

[00:02:41] Speaker 01:
The media device is, of course, claimed and claimed 22, Your Honor.

[00:02:43] Speaker 01:
But there is a preferred embodiment disclosed, but there are several ways in which this can... So is the media device just the base unit, or is the media device the base unit plus the... In the preferred embodiment, the media device would be the totality of the base unit with the detachable remote, and something can be plugged into the ASM, such as an iPod, which we disclosed, which would also be considered part of the base unit.

[00:03:07] Speaker 01:
And that's a very important question.

[00:03:09] Speaker 01:
There are other alternative embodiments, for instance,

[00:03:11] Speaker 01:
with the way that iPods and phones have remote wireless networking capabilities today, you could simply use an iPhone or an iPod with an app, and that could be your base unit.

[00:03:21] Speaker 01:
As long as it engages in all of the operations that are in claim one, and its structure is the same way as claim 22, it doesn't have to be the preferred embodiment that at the time was what we considered a revolutionary product for George.

[00:03:34] Speaker 03:
So when we look at this.

[00:03:36] Speaker 03:
What else is missing here is the question of there was no discussion of what configuring means in this context.

[00:03:42] Speaker 03:
What do you think configuring means?

[00:03:45] Speaker 01:
Configuring was not raised as an explicit term to be construed.

[00:03:48] Speaker 01:
And so I think that the record is not quite as clear as it could be.

[00:03:52] Speaker 00:
Do you have any evidence showing that a person of ordinary skill in the art would understand that configuring is to operate in a first and second mode selectively requires both modes to be made available for selection by an actor?

[00:04:06] Speaker 01:
Yes, Your Honor.

[00:04:07] Speaker 01:
I can point you first to the specification itself.

[00:04:11] Speaker 01:
which talks about the ways in which the processor is configured to execute these operations and how the device can be programmed.

[00:04:18] Speaker 01:
And then for the actual act of configuring selectively in the method claim, I can point you to... Will it be column 18?

[00:04:29] Speaker 01:
In the patent, Your Honor?

[00:04:36] Speaker 01:
The user can select one of the inputs.

[00:04:38] Speaker 01:
That's one of the ways that can be actively selected, which is what I believe initiates the configuring.

[00:04:43] Speaker 01:
That's column 16, lines 48 through 50.

[00:04:52] Speaker 01:
The description of the processor is a more generic claim of a processor, but it has to be programmed, as it says in claim 22, or configured to choose between the first mode and the second mode selectively.

[00:05:08] Speaker 01:
The software executing on a processor, this talks about the operations that might be performed in column seven at the top of the column when the processor is getting input from a source such as a remote source.

[00:05:23] Speaker 01:
It talks about the network adapter, which would help it operate in the second mode.

[00:05:28] Speaker 00:
Where in the record before the PTAB did Chestnut Hills seek the construction for replacement of sequential operations?

[00:05:38] Speaker 00:
or requirement of sequential operation that it's seeking now?

[00:05:43] Speaker 01:
I think that's inherent in how we discuss the configuring selectively limitation.

[00:05:47] Speaker 01:
We say in the transcript that the configuring selectively has to occur as a predicate to any of the operations that happen in the subsequent modes.

[00:05:55] Speaker 01:
You can't get into the first mode or the second mode unless you've selected a source.

[00:05:59] Speaker 01:
And if you look at appendix 820, the office action reply, this is discussed explicitly.

[00:06:06] Speaker 01:
After an interview with the examiner,

[00:06:08] Speaker 01:
The applicant was, it was a suggestion from the examiner that the applicant amend the claims to say that there is a command selectively sent in the second mode to a selected source.

[00:06:19] Speaker 01:
But the applicant pushed back and said, it's not that it's sending it to a selected source, it's that the source was previously selected.

[00:06:26] Speaker 01:
So there's this language on the next page which says, the device commands a specific selected media content source to deliver requested content in response to user input of the media device.

[00:06:36] Speaker 01:
So unless you've made that decision already, unless you've selected a source above, you can't even be operating in the second mode.

[00:06:43] Speaker 01:
Unless you've selected the local source of the media device itself, you can't be operating in the first mode.

[00:06:48] Speaker 01:
And these claims are all sort of interrelated when you look at them, and that's why this piecemeal evaluation is not helpful.

[00:06:54] Speaker 01:
Because if you look at the list limitation, which is the second argument, in the first mode, that's an exclusive limitation.

[00:07:00] Speaker 01:
You're only displaying content which is stored locally on the media device.

[00:07:04] Speaker 01:
And if you expand that limitation and you try and encompass any content that can be stored anywhere, you're essentially eviscerating what it means to be a multi-mode media device.

[00:07:14] Speaker 01:
The board suggested a construction of mode, which is a descriptor that identifies different behaviors with the behavior of each mode specified by other claim language.

[00:07:22] Speaker 01:
And we didn't appeal that construction because that construction isn't inherently wrong as long as the operations of a given mode

[00:07:30] Speaker 01:
are exclusive to how you access the content.

[00:07:33] Speaker 01:
So you're saying the list only relates to the first mode?

[00:07:37] Speaker 01:
Yes, Your Honor.

[00:07:37] Speaker 01:
The list has to be exclusive to the first mode.

[00:07:40] Speaker 01:
And there's support for this in the record itself.

[00:07:42] Speaker 01:
In the prosecution history at 875 to 876, they discussed the prior art reference Walsh.

[00:07:48] Speaker 01:
Walsh was an older version of a cell phone that couldn't store content on the device.

[00:07:54] Speaker 01:
So it couldn't display a list.

[00:07:56] Speaker 01:
Apple has argued, well, it didn't even meet the limitation, as you stated.

[00:08:00] Speaker 01:
And of course, that's true.

[00:08:02] Speaker 01:
However, when we were describing why it didn't meet that limitation, we went on to say that, Examiner, although you've said a database on a server could be part of the list that's displayed, the server is not even, in fact, part of the media device, and is thus relative only to the second mode of operation.

[00:08:21] Speaker 01:
So when we're describing our own claims and how they should be interpreted,

[00:08:24] Speaker 01:
we have a very bifurcated understanding of how these modes operate.

[00:08:28] Speaker 01:
And I think this is very similar to DiAgostino.

[00:08:30] Speaker 01:
In that case, there was a single merchant limitation.

[00:08:33] Speaker 01:
And the court found that the single merchant was not a function of identity, as the board said.

[00:08:39] Speaker 01:
But instead, it was a function of numerosity, as DiAgostino had said in his arguments before the board.

[00:08:45] Speaker 00:
Claim six reads in part, quote, in the second mode

[00:08:50] Speaker 00:
The selected media source downloads or streams the selected media content to the device.

[00:08:56] Speaker 00:
And the device sends media content to an output unit that is separate from, i.e.

[00:09:02] Speaker 00:
not from, the device for it outputting.

[00:09:07] Speaker 00:
Isn't that the exact indirect type download that you argue on appeal is excluded from the purported invention?

[00:09:14] Speaker 01:
It is exactly that type, Your Honor, yes.

[00:09:16] Speaker 01:
And I would say that there are 22 claims that were added that this footnote about claim differentiation applied to.

[00:09:22] Speaker 01:
There are 10 claims that we aren't discussing here today that this differentiation statement in the prosecution history could apply to.

[00:09:30] Speaker 01:
The 12 that we are discussing that this differentiation doesn't apply to are the ones that did impermissibly broaden the scope of claim one.

[00:09:40] Speaker 01:
And I would point you to the record where we have some discussion of

[00:09:44] Speaker 01:
how the system works with the examiner at 820.

[00:09:48] Speaker 01:
There the examiner pushes back on this idea of requesting that content be transmitted and instead we amend to say commands to the selected remote media source are issued by the media device.

[00:09:59] Speaker 01:
So it's not a request or a push system from the server back down to the media device, it's what's called a pull or on-demand system as it's described in the specification at 322 through 25.

[00:10:11] Speaker 01:
So the intent is the content can be managed locally

[00:10:14] Speaker 01:
but you send it to various places around your house.

[00:10:17] Speaker 01:
And the problem with inferring that you can do it in the way in Claim 6 or having it go back through the media device is it completely eviscerates what the point of this invention is.

[00:10:27] Speaker 01:
This invention is designed to improve the access and ease of use for managing a large media library.

[00:10:34] Speaker 01:
If you are, as we suggest, able to put content in five different rooms of your house, but you're running it all through your iPod, you're not getting reduced latency.

[00:10:43] Speaker 01:
You're not getting a better user experience.

[00:10:45] Speaker 01:
Instead, you want something where the server pushes it out to five different locations, or 10, or however many you want.

[00:10:52] Speaker 01:
And this makes this accessible because, as in the title says, we use the metadata.

[00:10:56] Speaker 01:
And the metadata comes back and forth between the media device and the server, but no content.

[00:11:02] Speaker 01:
And I'd like to point you briefly, since we're having this discussion, to the reference CO, which we discussed.

[00:11:08] Speaker 01:
CO was cited in our prosecution history

[00:11:10] Speaker 01:
as an anticipatory reference.

[00:11:13] Speaker 01:
The examiner thought we were doing exactly what Coe was.

[00:11:16] Speaker 01:
Coe is a patent filed by Apple.

[00:11:19] Speaker 01:
And in their patent, if you look at their claims, which are on page 27 of my briefing, and the figure which is on page 29, this is exactly what happens in claim one.

[00:11:28] Speaker 01:
Nothing comes back to, in Coe, the portable media multimedia player, and nothing comes back to our media device.

[00:11:34] Speaker 01:
It's streamed from the media server to the media unit.

[00:11:38] Speaker 01:
If the examiner thought that this was an anticipatory reference and we discussed it as being so, this is clearly from our specification how we think our invention works.

[00:11:47] Speaker 01:
Apple is seeking to apply to our invention patent tenants and claim construction tenants, which we only use in the absence of record evidence.

[00:11:57] Speaker 01:
But there's ample record evidence, and I believe that they should have to account for why our claims should not be read in this light versus in the hindsight bias manner that VDM

[00:12:08] Speaker 01:
I'd like them to.

[00:12:10] Speaker 01:
If there are no more questions, I'd like to reserve and remainder my time for rebuttal.

[00:12:13] Speaker 04:
We will do that, Ms.

[00:12:14] Speaker 04:
Mossman.

[00:12:15] Speaker 04:
Thank you, Your Honor.

[00:12:25] Speaker 04:
Ms.

[00:12:25] Speaker 04:
Brooks, good morning.

[00:12:26] Speaker 02:
Thank you.

[00:12:26] Speaker 02:
Good morning.

[00:12:27] Speaker 02:
May it please the court?

[00:12:28] Speaker 02:
May I proceed?

[00:12:29] Speaker 02:
Yes.

[00:12:29] Speaker 02:
Thank you.

[00:12:30] Speaker 02:
I'd like to start where counsel left off, which is

[00:12:35] Speaker 02:
in their reference to a co and the argument about co.

[00:12:39] Speaker 02:
As we point out at page 41 of the red brief, this is a new argument that has been made on appeal and was not made before the board, and therefore is waived.

[00:12:48] Speaker 02:
But even if the court wishes to consider it, all that reference speaks to is that the claims cover sending the information directly to a speaker.

[00:12:58] Speaker 02:
But again, that doesn't mean it excludes any indirect transmission.

[00:13:03] Speaker 02:
And in fact, if you look at BDM and the evidence that we presented to the board, in BDM, there is both direct and indirect transmission.

[00:13:15] Speaker 02:
So even if the court were to accept appellants' new construction made for the first time on appeal, BDM still would anticipate and therefore render the claims obvious.

[00:13:27] Speaker 03:
And what is your response to the question of how the term media device is understood in the patent?

[00:13:36] Speaker 02:
Your honor, my response is that your honor's question was excellent.

[00:13:41] Speaker 02:
There was somewhat of an answer from Chestnut Hill.

[00:13:44] Speaker 02:
That same question was posed to Chestnut Hill below.

[00:13:46] Speaker 02:
And the answers keep changing.

[00:13:49] Speaker 02:
Can the media device be just a single device that somehow has the ability to both access

[00:13:55] Speaker 02:
local content and remote content?

[00:13:58] Speaker 02:
I guess the answer is yes.

[00:13:59] Speaker 02:
According to Chestnut Hill, does it become the media device when there is a control that is then docked, and does that then become one?

[00:14:09] Speaker 02:
Chestnut Hill says yes.

[00:14:11] Speaker 02:
Sometimes, other times they've said no.

[00:14:13] Speaker 02:
That in fact, it's upon docking, you now have the ability to play in a first mode, and upon undocking, you now have only the ability to play in a second mode.

[00:14:23] Speaker 02:
I can't affirmatively answer your question as to what Chestnut Hill defines as the media device because it keeps changing.

[00:14:30] Speaker 03:
Let me follow up on something you just said.

[00:14:34] Speaker 03:
One of the things that you argued was that when the other device, the iPod or whatever it is, the things that my kids used to load up with music for me because I didn't know how to do it, but when that's removed,

[00:14:52] Speaker 03:
then it will automatically choose the second mode.

[00:14:59] Speaker 03:
But I don't understand how removing that isn't the same as a user selection.

[00:15:04] Speaker 03:
In other words, the user removes it and then therefore understands that there's only one mode of operation.

[00:15:10] Speaker 02:
And that was a DDoR argument below.

[00:15:12] Speaker 02:
Exactly that.

[00:15:12] Speaker 02:
That when the user removed it, you had a user, I wouldn't say consciously selecting,

[00:15:19] Speaker 02:
But the user was implicitly changing it then from a first mode to a second mode, but not consciously.

[00:15:25] Speaker 02:
And that's the second problem we have here, which is that Chestnut Hill's proposed constructions have been a constantly moving target.

[00:15:33] Speaker 02:
Below, it was argued that the user must be presented with two modes and must knowingly select that mode, one of two.

[00:15:45] Speaker 02:
And then the device is configured.

[00:15:49] Speaker 02:
to operate in a first mode or a second mode.

[00:15:52] Speaker 02:
That argument was rejected by the board.

[00:15:55] Speaker 02:
The argument that's now being made in the appeal, especially in the reply brief, is it's irrelevant who or what, this is on page three of the gray brief, who or what makes the selection.

[00:16:05] Speaker 02:
The only issue now is that a selection is made.

[00:16:09] Speaker 02:
And I think the reason we've gotten into this confusion is because Chestnut Hill has essentially, especially on appeal, changed the limitation that the court is being asked to look at.

[00:16:19] Speaker 02:
Chestnut Hill characterizes the limitation as configuring ellipses selectively, and that somehow the board, and this appears no less than 17 times in the reply brief alone, that is their characterization of the limitation.

[00:16:34] Speaker 02:
The limitation, however, is not that.

[00:16:36] Speaker 02:
What's in the ellipses is the following language, configuring the media device to operate in a first mode and a second mode selectively.

[00:16:46] Speaker 02:
That

[00:16:47] Speaker 03:
But your reading would take the word selectively pretty much out of it.

[00:16:52] Speaker 02:
I would respectfully disagree, Your Honor.

[00:16:54] Speaker 02:
In that, without the word selectively, then what we have is a device that's configured to operate in a first mode and a second mode, possibly simultaneously.

[00:17:04] Speaker 02:
And so selectively modifies to operate.

[00:17:08] Speaker 02:
It doesn't modify configuring.

[00:17:10] Speaker 02:
And that's why by Chestnut Hill taking all that language out, it sounds like selectively turns into selecting.

[00:17:17] Speaker 02:
which then, in turn, selects the configuration.

[00:17:20] Speaker 02:
And that's not what the limitation is.

[00:17:22] Speaker 02:
So what we really have here is a media device, according to the claim, that is configured to operate in a first mode and a second mode.

[00:17:31] Speaker 02:
Now, that's contrasted with Walsh that appellant talked about.

[00:17:36] Speaker 02:
Walsh could only do remote.

[00:17:38] Speaker 02:
And so it only had one mode.

[00:17:40] Speaker 02:
It didn't have that first mode of playing local content.

[00:17:43] Speaker 02:
So that's where Walsh gets distinguished.

[00:17:45] Speaker 02:
So what we have to have here in order to meet the limitation and what VDM has is, is it a device, a media device?

[00:17:53] Speaker 02:
Has it been configured to operate in a first mode and do all the three things that's required by the claim in the first mode and to operate in a second mode and do all the three things that are required in the second mode?

[00:18:05] Speaker 03:
Who is exactly practicing this method?

[00:18:09] Speaker 02:
The device or the user?

[00:18:11] Speaker 02:
Well, it's a method for configuring a device.

[00:18:15] Speaker 02:
So I assume it then would be the device.

[00:18:16] Speaker 02:
That's how it's written.

[00:18:18] Speaker 02:
It is, I can't necessarily justify poor claim drafting, but it is drafted as a method for configuring a media device to be able to operate in these two modes selectively, meaning one mode or the other mode.

[00:18:35] Speaker 02:
Is there a separate apparatus patent for this device?

[00:18:39] Speaker 02:
I don't know that, Your Honor.

[00:18:40] Speaker 02:
I don't know the answer to that.

[00:18:42] Speaker 02:
I just know what we were dealing with here is this method for configuring a media device.

[00:18:47] Speaker 02:
It's pretty silent as to when that configuration takes place.

[00:18:51] Speaker 02:
Logic would tell us, and we're talking about broadest reasonable interpretation, so reasonable logic would tell us that as long as the device is configured at some point at manufacture, at the time it is programmed, at the time that an action occurs that

[00:19:07] Speaker 02:
For example, VDM, what happens is the device is configured such that if you select a song that's stored locally, that song's going to play.

[00:19:15] Speaker 02:
If you select a song, unbeknownst to you, you don't care where it's stored.

[00:19:18] Speaker 03:
If you select a song... Well, maybe you do care where it's stored.

[00:19:20] Speaker 03:
That's one of my problems is maybe you do care where it's stored because maybe you're not one of those people that has Spotify or anything else so that if you're pulling

[00:19:30] Speaker 03:
music from the internet, you're paying for it, as opposed to something you've already gotten and it's already been downloaded.

[00:19:38] Speaker 03:
And so why wouldn't you care?

[00:19:41] Speaker 03:
Unless you're 25.

[00:19:42] Speaker 02:
And you've got your mother's credit card, which is my situation.

[00:19:46] Speaker 02:
If you ask my children if they care, they'll tell you no.

[00:19:48] Speaker 02:
But let's say you do, for monetary reasons, care.

[00:19:52] Speaker 02:
There's nothing in the patent that discusses that.

[00:19:56] Speaker 02:
There is nothing in the patent that requires that.

[00:19:58] Speaker 03:
I mean, isn't that the whole point of the patent?

[00:20:00] Speaker 02:
No, I would disagree, Your Honor.

[00:20:02] Speaker 02:
I think the whole point of the patent is to give a user a device that is configured to allow the user to either access local content or access remote content and then have it streamed.

[00:20:16] Speaker 02:
Not a device that would allow you to do just one or the other, but in fact both, selectively.

[00:20:23] Speaker 03:
And also provide... Quite selectively, so that you choose the one you want to do, so that somebody like me who wants to listen to a preset list

[00:20:31] Speaker 03:
listens to that on their whatever device you have docked and somebody like our kids who wants to go out and pull all kinds of things that we wouldn't even know exist by way of music from the internet and pay for it can do that.

[00:20:45] Speaker 03:
So you've got one device that covers the whole family.

[00:20:47] Speaker 03:
But wouldn't it be important if you're the user to know to be able to decide which one you want to do?

[00:20:56] Speaker 02:
I don't believe so, Your Honor, at least as far as this claim is concerned.

[00:21:00] Speaker 02:
They certainly could have read that and limited the claim to a user knowingly.

[00:21:04] Speaker 02:
And that was originally what they argued, that a user knowingly had to do that.

[00:21:09] Speaker 02:
They're no longer arguing that.

[00:21:10] Speaker 02:
In fact, at page 3, they say it doesn't matter.

[00:21:13] Speaker 02:
It doesn't matter who or what does the selecting.

[00:21:16] Speaker 02:
So it doesn't even have to be a user anymore.

[00:21:18] Speaker 02:
It could happen automatically.

[00:21:20] Speaker 02:
And all we're doing is asking

[00:21:22] Speaker 02:
Was the board reasonable when the board, under the broadest reasonable interpretation, interpreted the claim not to require that it be a conscious choice by a user to select a mode?

[00:21:35] Speaker 02:
And the answer is yes, based on how the claim was written.

[00:21:39] Speaker 02:
And the way it was written is a configuring claim.

[00:21:42] Speaker 02:
And I know this came up in the last argument.

[00:21:44] Speaker 02:
Does configuring then open the door to everything and anything?

[00:21:47] Speaker 02:
And the answer is no, it doesn't.

[00:21:49] Speaker 02:
But what Chestnut Hill specifically said

[00:21:51] Speaker 02:
it using the term configuring is that by using that term, and I want to get their language specific, by using the term configuring, you then are not limiting it to just what is in that particular term, but also anything, any additions to that term.

[00:22:15] Speaker 02:
Here we go.

[00:22:16] Speaker 02:
It's at column 6, lines 27 through 30.

[00:22:20] Speaker 02:
It says the use of including or comprising, I'm sorry, comprising, having, containing, involving, and variations thereof is meant to encompass the items listed as well as additional items.

[00:22:34] Speaker 02:
And so what Chestnut Hill was very careful to do is say, our claims are very broad.

[00:22:40] Speaker 02:
And this is what happens when you're walking that fine line between wanting to cover your competitors' products.

[00:22:46] Speaker 02:
If you do that and you get too broad, which is what they did here, you're going to end up covering the prior art.

[00:22:52] Speaker 02:
And they didn't want to be limited to give Apple an opportunity to say, wait a minute, we don't infringe because the claim implicitly requires the user to knowingly select the mode and thereby configure that mode.

[00:23:10] Speaker 02:
Their answer would be, no, it doesn't.

[00:23:11] Speaker 02:
You don't read that anywhere in here.

[00:23:13] Speaker 02:
And it's a comprising plan.

[00:23:14] Speaker 03:
But the prior art doesn't even have the burst mode, does it?

[00:23:18] Speaker 02:
VDM most definitely does, Your Honor.

[00:23:20] Speaker 02:
It has the ability, depending on which song the user chooses, to either access it locally, if it's stored locally, or to access it remotely.

[00:23:30] Speaker 02:
If it's not stored locally, it's stored remotely.

[00:23:32] Speaker 02:
So yes, VDM most definitely has both modes.

[00:23:34] Speaker 02:
And that's the critical nature of it.

[00:23:36] Speaker 03:
You have a footnote that you drop and say that if we disagree with any one of these, because you have to win on all three, but if we disagree with any one of these, that we should remand because there are other arguments for why it would be obvious in any event.

[00:23:50] Speaker 03:
You want to expand on that?

[00:23:51] Speaker 03:
Yes, Your Honor, I do.

[00:23:52] Speaker 02:
For example, let's talk about LIST.

[00:23:56] Speaker 02:
The board found quite clearly that LIST had to contain local content.

[00:24:02] Speaker 02:
No doubt about that.

[00:24:03] Speaker 02:
You read the limitation.

[00:24:04] Speaker 02:
It says a list of local content.

[00:24:07] Speaker 02:
But it did not exclude containing other, for example, remotely stored content.

[00:24:13] Speaker 02:
And so if, in fact, and that was the argument that was very clearly made before the Court, is this an exclusive claim or is this an exclusive claim?

[00:24:24] Speaker 02:
If we look at column 4, lines 30 through 35, appellant talked about

[00:24:30] Speaker 02:
having only a single frequency selection knob.

[00:24:34] Speaker 02:
Column 10, lines 26 through 29, having only stations broadcasting on AM.

[00:24:44] Speaker 02:
Column 11.

[00:24:48] Speaker 03:
There's a lot of language that surrounds this limitation.

[00:24:52] Speaker 03:
When in the first mode, the device displays a list of digital media content stored on said media device to the user,

[00:25:01] Speaker 03:
Now, in this case, the media device is what?

[00:25:08] Speaker 02:
I would submit one would have to ask Chestnut-Hildat because they've given different answers.

[00:25:13] Speaker 02:
They've said the media device could be just the iPod alone.

[00:25:16] Speaker 02:
The media device could be the iPod when attached to the base unit.

[00:25:22] Speaker 03:
But I mean, doesn't that surrounding language

[00:25:26] Speaker 03:
indicate that the media device is playing only on-device music when in that mode, and the list is only the on-device list?

[00:25:37] Speaker 02:
No, I would beg to differ, Your Honor, and here's why.

[00:25:40] Speaker 02:
It talks about displaying on a display of the media device a list of digital media content stored on said media device.

[00:25:48] Speaker 02:
It doesn't say only content stored on said media device.

[00:25:52] Speaker 02:
It could, in fact, be content that is also stored remotely.

[00:25:58] Speaker 02:
So a list is not, and there's no language used that says it is exclusive.

[00:26:04] Speaker 02:
And in fact, the language that I read here.

[00:26:06] Speaker 03:
So you're saying that you get this list and you've got a list, what, of there and everything else that's possibly on the internet?

[00:26:14] Speaker 02:
It would be a list, for example, that VDM has.

[00:26:16] Speaker 02:
VDM has a list of both locally stored and remotely stored content.

[00:26:21] Speaker 02:
And if we look at the limitation, when you say remotely stored, what are you talking about?

[00:26:25] Speaker 02:
Stored where?

[00:26:26] Speaker 02:
Stored, for example, that you would access via the internet.

[00:26:29] Speaker 02:
That's one example.

[00:26:30] Speaker 02:
So like every piece of music in the internet?

[00:26:35] Speaker 02:
I don't know how broad we would get, Your Honor, but VDM certainly has both.

[00:26:38] Speaker 02:
So somebody looks at their list, and the list is uncontained.

[00:26:46] Speaker 02:
Is that what you're saying?

[00:26:47] Speaker 02:
No, that is not what we're saying.

[00:26:48] Speaker 02:
We're saying the question before the board was, when this language is used, this limitation, talking about a list of digital media conduct stored on said device, if there's anything else added to that list, then that limitation is no longer met.

[00:27:05] Speaker 02:
That's what the argument was made below.

[00:27:07] Speaker 02:
But under your theory, though, it would have to be everything in the world is added to that list.

[00:27:12] Speaker 02:
No, I don't agree.

[00:27:13] Speaker 02:
Let me give an example.

[00:27:14] Speaker 02:
If your honors asked me to give you a list of judges sitting on this court, and I gave you a list, an ordered list, and it listed all the judges that are presently sitting on this court, and I added to that list judges who are set to sit by designation next month from the district court, who are set to sit by designation, or I added to that list

[00:27:39] Speaker 02:
Judges whose nominations are presently pending still.

[00:27:42] Speaker 02:
Right, but you're not talking about adding 10 things.

[00:27:45] Speaker 03:
You're talking about adding an undefined expansive universe of things.

[00:27:52] Speaker 03:
No, we're not.

[00:27:52] Speaker 03:
If you added to that list every person that exists in the world, then it would be hard to figure out where the judges fell in that list, right?

[00:28:00] Speaker 02:
Agreed, Your Honor.

[00:28:01] Speaker 02:
We're not talking about adding anything infinitely, because we're really talking about this then in the context of EDM.

[00:28:06] Speaker 02:
And what does VDM have?

[00:28:08] Speaker 02:
Does VDM cover this claim or not?

[00:28:10] Speaker 02:
And the answer is it does, because it has a list of locally stored content, and within that are also songs that are remotely stored.

[00:28:17] Speaker 02:
Not all the songs in the world, but certainly songs that are not just locally stored.

[00:28:22] Speaker 02:
And the argument made by the appellant is, therefore, VDM doesn't cover this limitation.

[00:28:27] Speaker 02:
And we're saying it does.

[00:28:29] Speaker 02:
And I apologize, because I digressed from your honor's original question, which is we said

[00:28:33] Speaker 02:
the appropriate remedy would be to remand, not to reverse.

[00:28:37] Speaker 02:
The reason being that issue was never put before the board, which is if the court should find that the appropriate construction is that it has to be an exclusive list of only media stored locally, then the board would be posed with the question, would it have been obvious to make

[00:28:59] Speaker 02:
taking the prior art and make an alteration to include remotely stored.

[00:29:04] Speaker 02:
The board never reached that.

[00:29:05] Speaker 02:
That's why, and I apologize that I digress from your honest original question, but that's our answer.

[00:29:10] Speaker 02:
That's one example.

[00:29:12] Speaker 02:
Here's another example.

[00:29:13] Speaker 02:
Let's go to the next limitation, the direct versus indirect.

[00:29:16] Speaker 02:
And so the board found that again, it wasn't exclusive.

[00:29:20] Speaker 02:
It wasn't limited to only direct transmission.

[00:29:23] Speaker 02:
It could also be indirect.

[00:29:25] Speaker 02:
If this court should find

[00:29:27] Speaker 02:
that no, the board was wrong, it should only be direct, then it should be remanded, because VDM, and we presented this to the board, VDM actually shows direct transmission also.

[00:29:41] Speaker 02:
Was that discussed by the board?

[00:29:43] Speaker 02:
No, because again, they found it could be both direct and indirect.

[00:29:47] Speaker 04:
But should Your Honors find direct?

[00:29:48] Speaker 04:
Thank you, Counsel, as you can see.

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

[00:29:52] Speaker 04:
Let's hear from Ms.

[00:29:54] Speaker 04:
Moser.

[00:29:56] Speaker 02:
Thank you, Your Honor.

[00:30:06] Speaker 00:
Chesnut Hill argues that the PTAB error in failing to explicitly construe the causing the down-motor screen limitation.

[00:30:16] Speaker 00:
Where does it offer a claim construction for that?

[00:30:23] Speaker 01:
I don't know that we argue a specific claim construction.

[00:30:25] Speaker 01:
I'm sorry I don't have a site available.

[00:30:27] Speaker 01:
I think that we didn't argue many claim constructions but rather we are objecting to if you're going to construe these claims we think no claim construction is necessary.

[00:30:35] Speaker 01:
then the way that you have done so is erroneous.

[00:30:38] Speaker 01:
And that's why we've outlined on appeal why specifically these claim constructions are erroneous.

[00:30:44] Speaker 01:
And I'd like to talk about a few things that came up in the... A few things I'd like to clear up.

[00:30:49] Speaker 01:
First of all, this docking issue, this issue of docking is completely a red herring.

[00:30:54] Speaker 01:
If you look at the specification, there's a statement that says, when regards to the detachability of, for instance, the front-facing piece of this,

[00:31:02] Speaker 01:
that you can detach it and there can be a link between the remote control and the larger base, and otherwise the system's functions the same as in the undocked arrangement.

[00:31:11] Speaker 01:
We are not seeking to have a wishy-washy statement on what a media device is.

[00:31:16] Speaker 01:
Apple is seeking to require us to choose the preferred embodiment claimed in the specification as the only embodiment.

[00:31:22] Speaker 01:
And that's simply not how patent law works.

[00:31:25] Speaker 01:
There are several embodiments.

[00:31:26] Speaker 01:
You can use your iPod with an app, and as long as the app is performing these operations, it's practicing

[00:31:31] Speaker 01:
this method.

[00:31:33] Speaker 01:
As to the fact of whether there's a media device claimed, claims 22 and 51 include a media device and a media player.

[00:31:39] Speaker 01:
So those claims themselves do not require a base unit, they don't require detachable remote, they require a processor that's able to do these configuration selectively limitations.

[00:31:48] Speaker 01:
We should also like to discuss that configuring selectively limitation.

[00:31:52] Speaker 01:
The ellipses are there not because we don't want to talk about what's in the middle, but because saying configuring a media device to operate in a first mode and in a second mode selectively is quite a mouthful.

[00:32:00] Speaker 01:
The selectively comes after the comma at the end of that phrase.

[00:32:04] Speaker 01:
If, as Apple suggests, it's supposed to modify the operation of the device, it should come after to operate, configuring the media device to operate selectively in a first mode or a second mode.

[00:32:15] Speaker 01:
But it doesn't.

[00:32:16] Speaker 01:
And in Apple's briefing, they have this line about, well, you're really configuring it to be able to select something.

[00:32:22] Speaker 01:
But that's not what the prosecution history reflects.

[00:32:24] Speaker 01:
And Apple doesn't have a really great response for this, because the prosecution history is really clear.

[00:32:29] Speaker 01:
In that page 820, when it talks about Walsh, they say to the examiner, listen, your commands selectively to the second mode sources is great, except for the fact that that's not what we're talking about.

[00:32:42] Speaker 01:
It selectively happens up here, because you have to have picked a source.

[00:32:46] Speaker 01:
And you can see that in the claim language of claim one, because in those operations in

[00:32:52] Speaker 01:
The mode two operations, that last part, it says to a selected, sorry, I'm gonna read it to you explicitly.

[00:32:59] Speaker 01:
What do you mean selectively happens up here?

[00:33:01] Speaker 01:
What does that mean?

[00:33:02] Speaker 01:
In the configuring selectively limitation step, that's where that happens.

[00:33:06] Speaker 01:
And you can see this in the second mode where it says a separate selected first media source or a separate selected second media source in the second mode.

[00:33:17] Speaker 01:
And the reason they had to put that distinction in there was because these selected sources

[00:33:22] Speaker 01:
was one over a local area network or one over a network, just like you said, Your Honor, the kids downloading everything from iTunes.

[00:33:28] Speaker 01:
And so you had to have selected which of those sources you wanted to access content through.

[00:33:34] Speaker 01:
That inherent selection, the inherent selection is clear in the record and the specification and the prosecution history.

[00:33:43] Speaker 01:
And this part that they point you to, it's footnote three they're hanging this argument on about this selectively assertion that they're making.

[00:33:51] Speaker 01:
But if you look at pages 820 and 821 of the specification, footnote three is dropped from this larger sentence that says, nonetheless, to advance prosecution, all the independent claims are amended herein to make it clear that the device commands a specific selected media content source to deliver requested content in response to user input at the media device.

[00:34:13] Speaker 01:
And this question also of, gosh, we can't figure out what's doing the operations, is also a red herring.

[00:34:18] Speaker 01:
Because if you look at the language in claim one,

[00:34:21] Speaker 01:
It's very clear, and I'll get to the user issue if you'll, I'm very sorry, give me a little extra time, but it's very clear in the language of claim one, it's not a method of configuring the media device.

[00:34:32] Speaker 01:
It's a method of using the media device.

[00:34:34] Speaker 01:
The configuring selectively happens as a predicate operation after which the subsequent operations happen.

[00:34:40] Speaker 01:
And the logic and structure of this, that's Mantech and Interactive Gift provides me with that, has these segregated, you look at the claims, there's a big A and a big B.

[00:34:49] Speaker 01:
The operations of A are the first mode, the operations of B are the second mode.

[00:34:53] Speaker 01:
So whether you don't want to access remote content because your kids spend too much money, or you don't want to access remote content because maybe you're in a place with no wifi and you can't reach it, selecting the mode, or selecting the source by this prox, excuse me, selecting a source acting as a proxy for this mode selection is critical.

[00:35:10] Speaker 01:
And then this last issue about how we didn't raise this argument is also a red herring.

[00:35:15] Speaker 01:
If you look at the transcript,

[00:35:18] Speaker 01:
from the oral argument, it's this conversation that they selectively quoted to you.

[00:35:23] Speaker 01:
And the remainder of that selectively quotation, which I'll define the reference to, is that, yes, we raise the issue of this selection, this configuring selectively has to happen, but that configuring selectively, whether it's done by the user or it's done by some other thing, is ancillary to the larger argument.

[00:35:42] Speaker 00:
Where are you in the appendix?

[00:35:44] Speaker 01:
That is appendix 3824 at 5411 to 20, sorry.

[00:35:48] Speaker 01:
I had to find the reference, Your Honor.

[00:35:50] Speaker 04:
Thank you, Counsel.

[00:35:52] Speaker 04:
As you can see, your time will be up.

[00:35:54] Speaker 04:
We will take the case under review.

[00:35:55] Speaker 01:
Thank you.

[00:35:56] Speaker 01:
It's been a pleasure.

[00:35:58] Speaker 00:
I want you to know if I was a faculty at trial level, I would have been making a continuing record of your hand gestures.

[00:36:04] Speaker 01:
I'll work on that for next time.

[00:36:06] Speaker 01:
I appreciate the critique.