[00:00:01] Speaker 01: Next case for argument is 17-1250, Open TV versus Mattel. [00:00:54] Speaker 01: I'm going to be ready. [00:00:56] Speaker 03: I reserved three minutes for my rebuttal, please. [00:01:10] Speaker 03: Good morning, and may it please the court. [00:01:13] Speaker 03: This appeal is an example of the worst case scenario for a patent owner in an IPR. [00:01:19] Speaker 03: Not only have the claims been canceled as being anticipated, [00:01:23] Speaker 03: by a reference that lacks the fundamental teaching of the claims, but at every stage of the IPR, the patent owner was not afforded the protections of the IPR statute and of the APA. [00:01:36] Speaker 03: The most egregious example of those violations is the violation of Section 312 of the AIA, which requires the petition to set forth the grounds with particularity so that the patent owner knows [00:01:52] Speaker 03: what the grounds for unpatentability are proposed in the petition. [00:01:55] Speaker 02: We can't review that particular issue, correct? [00:01:57] Speaker 03: You cannot review the institution decision. [00:02:00] Speaker 03: But the failure of the mapping in the petition violated 312 and also the APA. [00:02:08] Speaker 03: The fact that the petition was such a mess here that the patent owner never understood the mappings of the [00:02:16] Speaker 03: reference to the claim elements and if I could turn you to the petition I'd just like to explain because this petition is really extraordinarily difficult and unintelligible. [00:02:27] Speaker 03: I'd like to turn you if I may to the blue brief pages 29 to 33. [00:02:32] Speaker 03: It was difficult for us to explain given the complexity of the petition and the massive amounts of citations with little to no explanation. [00:02:44] Speaker 03: It was difficult to explain [00:02:46] Speaker 03: how that failed 312. [00:02:48] Speaker 03: And this is our attempt to do so. [00:02:50] Speaker 03: And I just want to make sure that you understand what we're showing here. [00:02:54] Speaker 03: The claims include a system configuration that has multiple elements. [00:02:58] Speaker 02: We cannot review 312 issues. [00:03:01] Speaker 03: That's right. [00:03:01] Speaker 03: But this is an APA issue as well. [00:03:03] Speaker 03: And there were also 316 issues. [00:03:05] Speaker 03: And I can talk about that, where the board came in. [00:03:08] Speaker 03: I guess the reason I'm focusing so much on the petition is not so much that I'm asking you to uninstitute the case or review the board's institution decision. [00:03:15] Speaker 03: What I want to make sure you guys understand is that the petition was such a mess, they threw everything at the wall to see what would stick, but it gave rise to these other errors. [00:03:25] Speaker 01: But we've got less than 15 minutes here, so it would be helpful rather than we've seen your brief, we've tried to understand you having a brief. [00:03:34] Speaker 01: Could you just talk to us in English? [00:03:36] Speaker 01: Oh, sure. [00:03:37] Speaker 01: And tell us... [00:03:38] Speaker 01: You've got several arguments here on APA violations. [00:03:42] Speaker 01: What can you just either take one of them or all of them, but tell us what limitation you say is problematic or not met and how the board did the wrong thing by saying it was met. [00:03:53] Speaker 03: Okay. [00:03:53] Speaker 03: Yes. [00:03:53] Speaker 03: So I'll focus you, the primary challenge that I think I'd like to focus you on is the violation of the APA section 316, which is the problem where the board adopts a position, a theory, [00:04:06] Speaker 03: in the final written decision that was based on new, it's the Inherency Theory, yes. [00:04:11] Speaker 03: So that's paragraph 72 of the Expert Declaration. [00:04:15] Speaker 03: At the final written decision, it's in 17. [00:04:19] Speaker 03: So I'll take you to Appendix 17. [00:04:28] Speaker 03: And in the middle of that page, there is the sentence that begins with thus. [00:04:34] Speaker 03: So, we're discussing the access element, which is part of the claim configuration, and the access element is found to be present in Tomioka, and the board introduces that sentence, thus, a person of ordinary skill would understand that listening, viewing, and browsing preferences disclose activities on different devices [00:04:55] Speaker 03: and consequently accessing those preferences on different devices. [00:04:58] Speaker 01: And the new paragraph... The only argument with regard to what you call this new argument about inherency involves paragraph 72 on the C site, right? [00:05:11] Speaker 01: That's right. [00:05:13] Speaker 01: Paragraph 72. [00:05:15] Speaker 01: The other documents cited, the four pages from the petitioner's brief [00:05:20] Speaker 01: and the other exhibits and the other paragraphs, 70 and 71, those don't encompass the inherency. [00:05:29] Speaker 03: Well, 72 is where the inherency argument comes from. [00:05:32] Speaker 03: I will note, though, that 70 and 71 were newly cited for this claim element here. [00:05:36] Speaker 03: They were not in the petitioner's original mapping. [00:05:38] Speaker 03: But let's focus on paragraph 72, yes. [00:05:41] Speaker 01: OK, so I guess I'm having to just, if we're reading everything the board said, we're talking about the access element, right? [00:05:48] Speaker 01: So they've got several couple pages on the access element, numerous citations to the exhibits, and the petitioners brief. [00:05:57] Speaker 01: They never even mention the argument, the words, inherently. [00:06:02] Speaker 01: They're talking about this claim limitation and citing to evidence that was presented that this claim limitation actually existed in Tomica. [00:06:12] Speaker 01: I say Tomioka. [00:06:13] Speaker 01: Tomioka. [00:06:14] Speaker 01: So I think, why am I not correct that it's kind of a stretch to rely not on any words the board even used, but on one paragraph out of numerous citations, which arguably refer to inherency, and to then say, whoops, we've got an APA violation because the board relied on inherency, and that wasn't otherwise presented. [00:06:36] Speaker 03: So the reason that we call out 72 as an example, I guess I can talk about paragraph 72 itself, [00:06:42] Speaker 03: But also, it is one of many examples, which is why I started with the petition, because the petition was such a mess that there ended up being multiple. [00:06:50] Speaker 03: And you've seen in our brief, there are multiple different new citations and mappings throughout the proceeding. [00:06:57] Speaker 01: Yeah, but we're talking about the board's opinion. [00:07:00] Speaker 01: So let's look at, and we're talking about the issue of whether or not they appropriately concluded that the access element was present in the prior art. [00:07:10] Speaker 01: So what is it about the board's discussion of that, which consists of three paragraphs, that your argument here is they relied on a new argument, which was something to do with inherency? [00:07:22] Speaker 01: Yes. [00:07:22] Speaker 01: Where do we find that reliance other than paragraph 72? [00:07:25] Speaker 03: So if you look at what paragraph 72 actually says, so 72 was not advanced by the petitioner, not in the petition and not in the report. [00:07:33] Speaker 04: I think you're misunderstanding the point. [00:07:35] Speaker 04: So even if I were to agree with you that paragraph 72 speaks of inherency, even if I were to completely agree with you on that, the board has articulated in three paragraphs its reasoning and the requirements of the access element. [00:07:51] Speaker 04: It has cited multiple other references to support its conclusion that Tomioka discloses this access element. [00:08:00] Speaker 04: It doesn't say the word inherently anywhere in it. [00:08:02] Speaker 04: It doesn't even use the words necessitate or anything. [00:08:05] Speaker 04: So even if paragraph 72 does, it's a C site. [00:08:09] Speaker 04: There's other stuff cited. [00:08:10] Speaker 04: I'm looking at all the other stuff cited, and all that other stuff cited says it's expressly in Tomioka. [00:08:16] Speaker 04: None of it can even arguably be alleged to be arguing inherently. [00:08:21] Speaker 04: The petition doesn't argue inherently. [00:08:23] Speaker 04: You win on that point. [00:08:24] Speaker 04: It doesn't. [00:08:26] Speaker 04: That's what the board cited. [00:08:28] Speaker 04: The petition does say Tomioka expressly discloses this. [00:08:31] Speaker 04: The board cites it and then says, for the reasons explained by the petitioner, we agree. [00:08:35] Speaker 04: It does disclose it. [00:08:36] Speaker 04: So who gives a rat's patootie about paragraph 72 when the board articulated 15 other reasons why this element was satisfied? [00:08:44] Speaker 03: Well, I think the patent owner gives a rat's patootie. [00:08:47] Speaker 03: And the reason is because this is simply one example. [00:08:52] Speaker 03: At the bottom of it, on the substantive issue, Tomioka doesn't have the key claim element of which access is a part. [00:08:59] Speaker 03: The key claim element, and we have that color-coded claim in our brief to show you that the key in these claims is that an activity on a first device affects content sent to a user during an activity on a second different device. [00:09:14] Speaker 03: That's what's missing. [00:09:15] Speaker 03: And it is most clear in the transmit element, but it appears here in the access element, [00:09:21] Speaker 03: the relationship between those two devices and the activities on different devices. [00:09:25] Speaker 04: This is a merits argument, and if you want to go there and abandon this APA argument, which is not a merits argument, the APA argument is a procedural argument about not having fair due process. [00:09:36] Speaker 04: And you've answered my due process question with turning to the merits, which is fine if you want to turn to the merits and give up on the process argument, but that's what your answer has done. [00:09:45] Speaker 04: It's given up on the process argument because [00:09:47] Speaker 04: My statement to you had nothing to do with the merits. [00:09:50] Speaker 04: It had to do with the Patent Office has done its job. [00:09:54] Speaker 04: It articulated all the reasons why Tomioka, now you may be telling me those reasons aren't correct, but that's a merits argument. [00:10:00] Speaker 04: It has nothing to do with your APA. [00:10:01] Speaker 04: But it articulated reasons, none of which are inherency, none of which use the magic words of inherency. [00:10:06] Speaker 04: And it has lots of sites. [00:10:07] Speaker 04: And when you look at all the pages at sites, none of them use inherency. [00:10:11] Speaker 04: They all say it's expressly present. [00:10:13] Speaker 04: So I'm focusing not on the merits. [00:10:14] Speaker 04: If you want to go there, we can. [00:10:15] Speaker 04: I'm focusing on the APA issue. [00:10:17] Speaker 04: You said this is the single clearest example, and I don't see anything. [00:10:21] Speaker 03: Well, that's my problem. [00:10:22] Speaker 03: And I am not walking away from the procedural issue. [00:10:26] Speaker 03: And I would say that it's more than an APA issue. [00:10:28] Speaker 03: This new theory, and I believe you understand that the inherency argument is coming from the expert who said something was necessarily present, which is an inherency argument, which was not made. [00:10:41] Speaker 03: And they're doing it, combined that with, they're doing it based on a paragraph that was never cited by. [00:10:46] Speaker 03: That paragraph says something different than all the other paragraphs. [00:10:49] Speaker 03: And it was never cited by the petitioner in the petition or the reply. [00:10:53] Speaker 03: And so it's the coupling of those two things that makes that what we hope is a clear example of a problem under 316, like Magnum Oil, where the board is not requiring the petitioner to make its full case, but it's relying on its own theory and its own evidence. [00:11:09] Speaker 03: But in addition to that 316 problem, I do believe that it is an APA problem, similar to SAS or AmeriCAM, where the board introduces a new theory at the final written decision. [00:11:20] Speaker 03: But even on top of those, we do have a violation of 312. [00:11:24] Speaker 03: And I don't believe you're not allowed to review at all whether the board enforced 312. [00:11:29] Speaker 03: That's part of the statute. [00:11:31] Speaker 03: And the requirement for the petition to be particular under 312 [00:11:35] Speaker 03: is talked about in the Illumina case as being particularly important because if the patent owner cannot tell from the petition what the grounds are, then, and here, there was a huge amount of things that were, and the theories were shifted by both the board and the petitioner throughout the trial. [00:11:53] Speaker 03: And the problem is that these are expedited proceedings. [00:11:56] Speaker 03: As soon as a petition is served on you, the patent owner has to make a number of decisions, whether or not to try to amend their claims, [00:12:04] Speaker 03: what evidence to put in, that has to be done in the beginning. [00:12:07] Speaker 03: And that's why it's important that the board enforce 312 beyond the decision to institute. [00:12:13] Speaker 03: But there are other APA violations as well, which are spelled out in our brief. [00:12:17] Speaker 03: And so I don't by any means mean to walk away from those issues, because this case is an egregious example of not just one, but multiple problems that all stemmed from a petition that had literally thousands of different possible mappings through the configuration [00:12:33] Speaker 03: in these claims, which runs throughout the elements of the claims. [00:12:38] Speaker 03: And we've given you an example in our brief of how little there was in the petition, which spawned all of these other problems. [00:12:44] Speaker 03: But I would say that both 312 and 316 are violated here, in addition to the API. [00:12:49] Speaker 04: With all due respect, you probably do as many, if not more, of these IPRs than I seem to do these days. [00:12:54] Speaker 04: But this is a one-reference IPR, and I counted those pages [00:12:59] Speaker 04: with less than 80 pages that reference, most of which looks to be code that isn't actually cited. [00:13:04] Speaker 04: The cited pages seem to be narrowly limited to the first 120 paragraphs of that reference, which is really about 22 pages. [00:13:13] Speaker 04: How convoluted can a petition really be when it's based on anticipation of one reference and cites only 22 pages of that reference? [00:13:23] Speaker 04: Really? [00:13:23] Speaker 04: I mean, you think that makes life so unfair for the patent owner that it has to combat [00:13:28] Speaker 04: the citation of multiple paragraphs in one effectively 22-page document? [00:13:33] Speaker 04: I don't understand. [00:13:34] Speaker 04: I was surprised by that as well. [00:13:36] Speaker 04: That's the due process violation? [00:13:37] Speaker 04: That's what you think we should tell the Supreme Court? [00:13:40] Speaker 04: It is a due process violation when multiple particular paragraphs of a 22-page document are cited, and we have to respond to them. [00:13:48] Speaker 03: But the standard is not whether there is a lot of evidence of certain elements. [00:13:54] Speaker 03: elements are shown in the arrangement and the claims. [00:13:57] Speaker 03: And here, where we have claims that have a link that carries throughout all of the claims, what was missing in that petition. [00:14:04] Speaker 03: I'm not concerned about the size of the reference. [00:14:06] Speaker 03: We've had a whole book cited against us. [00:14:07] Speaker 03: Although I will tell you, I have handled a lot of these IPRs, and this is the worst petition I have ever seen. [00:14:13] Speaker 03: And I say that with my experience and my having sat down. [00:14:16] Speaker 03: And others on our team will tell you, when you sit down and actually, without the benefit of the hindsight of where they went later, [00:14:23] Speaker 03: Go back to that petition and try to understand what they were mapping to the first activity and the first device that then later has to be the second activity and the second device and how they have to be related. [00:14:34] Speaker 03: And most importantly, the final element, the final connection, which is activity on a second device affecting content, not just that there are two devices, not just that there can be content from the web or content from TV, but that there actually has to be an express recitation [00:14:50] Speaker 03: of activity on the first device affecting the content that is sent. [00:14:54] Speaker 03: The example in the spec is something you do on your phone causes an ad to show up on your TV later. [00:14:59] Speaker 03: That is not what Tomioka is about. [00:15:03] Speaker 01: I'm into my rebuttal time. [00:15:04] Speaker 01: I'm into my rebuttal, so I don't hear from the government. [00:15:06] Speaker 01: We'll restart in two minutes. [00:15:07] Speaker 01: Thank you. [00:15:17] Speaker 00: May it please the court, Your Honor. [00:15:19] Speaker 00: I guess our main response is number one. [00:15:23] Speaker 04: Just out of curiosity, you see a lot of these IPRs. [00:15:25] Speaker 04: Is this the worst petition you've ever seen too? [00:15:27] Speaker 00: No, Your Honor, it's not. [00:15:28] Speaker 00: I don't think it's that bad. [00:15:31] Speaker 00: In fact, I think it's quite clear if you turn to pages A20, A2023, [00:15:37] Speaker 00: to Appendix 2033. [00:15:38] Speaker 00: That's a 10-page range. [00:15:40] Speaker 00: When you say not that bad. [00:15:43] Speaker 00: Yeah. [00:15:43] Speaker 00: Let's just look at the appendix that was provided, the claim chart that was provided with the petition. [00:15:48] Speaker 00: I'm sorry. [00:15:48] Speaker 00: What are the sites? [00:15:49] Speaker 00: It starts at Appendix 2023. [00:15:50] Speaker 00: That's the very first page of the claim chart. [00:15:55] Speaker 00: What the petitioner did, which is quite common for a lot of these petitions, they come in with some prose, explanation of where the elements are in a particular prior reference, and then they provide a claim chart summarizing the [00:16:07] Speaker 00: If you see starting on page appendix 2023, going up to pages 2033, that is a range of 10 pages. [00:16:15] Speaker 00: But that is a claim chart that lays out each element of claim 14 and where those elements are found in the reference. [00:16:23] Speaker 00: And in the chart, you'll see the element on the left, and you'll see the citation to the references, the paragraphs in the reference on the right. [00:16:30] Speaker 00: And if you go through all those citations, what you'll find is if you go back to the board decision, [00:16:36] Speaker 00: The board decision sites come from this claim chart. [00:16:40] Speaker 00: This is where they come from. [00:16:41] Speaker 00: So we don't think it's that confusing or that difficult to understand. [00:16:45] Speaker 00: In fact, we think it provided a pretty clear roadmap of where the prior art provided the features in the claim. [00:16:52] Speaker 00: Now, just to talk about the prior art just in simple English, let's not get too bogged down in terminology, but essentially what the claim requires is that [00:17:04] Speaker 00: a user profile be developed by your usage of a device. [00:17:08] Speaker 00: Let's say, for example, a TV or radio. [00:17:11] Speaker 00: You use the TV, you watch certain programs. [00:17:13] Speaker 00: The programs that you watch, data is collected and it determines that you like a particular type of program. [00:17:19] Speaker 00: For example, I might like to watch football. [00:17:22] Speaker 00: And it develops a profile for me that I'm a football watcher. [00:17:25] Speaker 00: So it knows now, this data says, Bill likes football, he likes to see that. [00:17:30] Speaker 00: The profile is developed, [00:17:31] Speaker 00: In the claim, they call that a user profile. [00:17:33] Speaker 00: In the prior art, they call that a user description scheme. [00:17:36] Speaker 00: They're effectively the same thing. [00:17:37] Speaker 00: They use different words to describe the same type of feature. [00:17:40] Speaker 00: I now take my profile. [00:17:41] Speaker 00: The prior art says that the profile is mobile or portable. [00:17:45] Speaker 00: I can take that profile to another device. [00:17:47] Speaker 00: I can plug it into another device physically, or I can transmit it to the other device electronically. [00:17:52] Speaker 00: Either way, the prior art says can be done. [00:17:54] Speaker 00: Now that new device has been personalized for my use. [00:17:58] Speaker 00: So now I can turn on a radio in my car, I can turn on a TV in a hotel room, I can listen, I can go browse the internet, whatever it is, the new device that I've uploaded my profile to will now provide me with customized programming. [00:18:11] Speaker 00: That's effectively what the claimed invention is, and that's exactly what the prior art talks about. [00:18:16] Speaker 00: Now, it's true, just like [00:18:18] Speaker 00: You know, open TV space. [00:18:20] Speaker 04: I have four kids. [00:18:21] Speaker 04: So does that mean when I go places, the crap that's going to pop up is all the stuff my kids watch all the time? [00:18:27] Speaker 00: Well, open TV provides the option for you to control the user profile. [00:18:32] Speaker 00: You could turn it off if you choose to. [00:18:34] Speaker 00: That's what's in the disclosure of the prior device. [00:18:36] Speaker 00: But the point we're trying to make is the claim chart's pretty clear. [00:18:42] Speaker 00: It's true. [00:18:43] Speaker 00: that within the prior reference, there are many, many paragraphs that cite these features. [00:18:46] Speaker 04: But it's interesting because the board's decision, though, doesn't cite these pages of the claim chart relating to access, which appear on, I think, JA2031 with the access limitation. [00:18:58] Speaker 04: Instead, what the board cites for the petition is pages 15 to 17. [00:19:04] Speaker 04: The board doesn't cite the claim chart and draw me to that. [00:19:07] Speaker 04: I agree. [00:19:08] Speaker 04: It's in the petition. [00:19:10] Speaker 00: Just keep in mind, Your Honor, pages 15 to 17 [00:19:13] Speaker 00: are the paragraph pros where they describe the reference. [00:19:17] Speaker 00: And then the claim chart is a summary of what they have in that pros. [00:19:20] Speaker 00: So what's on 15 to 17 also appears in parallel on the claim chart. [00:19:25] Speaker 00: Now the claim chart indeed has probably extra sites beyond what's in the pros in pages 15 to 17. [00:19:32] Speaker 04: And just to be clear, it looks like the claim chart has only the citations to the reference itself. [00:19:40] Speaker 04: And none of the citations, for example, to the expert report, which are contained in the prose. [00:19:44] Speaker 00: Is that right? [00:19:45] Speaker 00: It's true. [00:19:46] Speaker 00: The expert report would be cited up front in the prose where it exists. [00:19:51] Speaker 00: And it also shows up in their reply as well when they respond to arguments made by Open TV. [00:19:58] Speaker 04: The reply goes to her. [00:20:00] Speaker 04: Her strongest argument that she made certainly is what she led with. [00:20:05] Speaker 04: And she believes it's her strongest argument. [00:20:08] Speaker 04: is the paragraph 72 reference in the board's opinion. [00:20:11] Speaker 04: Now forget about whether or not paragraph 72 actually triggers the expert analyzing this under an inherency standard. [00:20:19] Speaker 04: Don't try to argue that. [00:20:20] Speaker 04: I don't want to have that argument. [00:20:22] Speaker 04: Let's assume it does. [00:20:24] Speaker 04: You and I. We're just assuming for purposes of these questions that in paragraph 72 the expert said it's inherently present. [00:20:31] Speaker 04: Give them that for now. [00:20:34] Speaker 04: The petition never cites paragraph 72. [00:20:38] Speaker 00: That's true. [00:20:39] Speaker 00: The petition, however, had attached to it the expert declaration when it came in. [00:20:43] Speaker 00: So the expert declaration was provided along with the petition. [00:20:46] Speaker 04: That would make my head explode if petitions can attach a lot of stuff to them sometimes. [00:20:52] Speaker 04: This one, it's just one reference and one expert declaration. [00:20:57] Speaker 04: I didn't actually think this petition was particularly onerous, because it's only one document. [00:21:03] Speaker 04: This isn't even an obviousness case. [00:21:05] Speaker 04: This is just anticipation. [00:21:07] Speaker 04: But in general, you can't suggest to me that a patentee ought to anticipate for each separate element in the claim, everything attached to that petition, even not triggered to that claim or that element, is fair game. [00:21:23] Speaker 00: And we don't disagree with you, Your Honor. [00:21:25] Speaker 00: And I'm agreeing with you. [00:21:26] Speaker 00: Paragraph 72 from the expert declaration was not cited in the petition. [00:21:30] Speaker 00: All I'm pointing out is the declaration didn't just come out from nowhere. [00:21:34] Speaker 00: It was attached with the petition. [00:21:36] Speaker 00: And by the way, [00:21:37] Speaker 00: the petition actually did cite a lot of the surrounding paragraphs. [00:21:41] Speaker 00: I think pages 70 of paragraph 74 to 76 were also cited. [00:21:46] Speaker 00: So numerous paragraphs from the expert declaration were cited, but you're correct, and Open TV is correct, that paragraph 72 was not cited. [00:21:53] Speaker 00: But as you pointed out earlier, I think when you were questioning Opening TV's counsel, when you read the board decision, the board does cite to many other citations in the private reference, which are cited in the petition. [00:22:06] Speaker 00: which are in the claim chart, and their analysis really is based on a lot of those citations. [00:22:12] Speaker 04: Let me suppose that 72 were the only citation. [00:22:15] Speaker 04: Suppose that the only thing, these are hypotheticals, I know it's not this case, but suppose that the only thing the board cited was paragraph 72. [00:22:24] Speaker 04: Would we have a problem here? [00:22:25] Speaker 00: I think it would be closer to being more of a problem, because if that's all the board relied on, if they relied on brand new citation that was never mentioned before, [00:22:34] Speaker 00: never addressed before, and all of a sudden that became the essential element of their ground of unpatentability, then I think you're correct that the case law of this court has said that that probably is a problem. [00:22:45] Speaker 01: However, the narrative had discussed the inherency in connection with the piece of prior art, right? [00:22:52] Speaker 04: If the board opinion had said it was relying on inherency, the narrative and the board opinion, if it wasn't just this random paragraph and a C-site, along with a bunch of other... I don't even know if that would get them there because their argument is it's a brand new theory. [00:23:04] Speaker 00: that the PTO board has shifted midstream in the middle of this thing. [00:23:08] Speaker 00: The bottom line is what's the issue in this case? [00:23:10] Speaker 00: Anticipation. [00:23:12] Speaker 00: What's the issue from the very beginning? [00:23:13] Speaker 00: Whether or not Tomioka anticipates claim 14. [00:23:17] Speaker 00: That has always been the issue from the very beginning and the disputed elements haven't really changed either because from the very beginning what OpenTV has argued is your elements that you've cited and that you've shown in that reference don't show [00:23:29] Speaker 00: TV and non-TV appliances, or TV and non-TV devices. [00:23:33] Speaker 02: And the board... Why then the reliance on the Knudsen Declaration? [00:23:39] Speaker 02: Yeah, I think the... I don't know why the board put that in there, but if you go look at... And that declaration is headed anticipation and obviousness, if I recall correctly. [00:23:48] Speaker 02: Right, because early on, early on... How does the board distinguish? [00:23:51] Speaker 02: Well, what they're talking about here is, is obviousness. [00:23:55] Speaker 00: Well, all the board is talking about with paragraph 72, if we go to that paragraph, Your Honor. [00:23:59] Speaker 00: I can take you to it at page appendix 2876. [00:24:04] Speaker 00: All they're talking about there is that, of course, the board is responding to an argument by OpenTV. [00:24:10] Speaker 00: What was the argument that OpenTV made? [00:24:12] Speaker 00: You haven't shown us TV and non-TV devices. [00:24:15] Speaker 01: You said 2076. [00:24:17] Speaker 01: There is no TV. [00:24:18] Speaker 00: 2876. [00:24:19] Speaker 00: I'm sorry. [00:24:21] Speaker 00: I apologize if I was going too quickly. [00:24:24] Speaker 00: Let me get you to that page first and look at paragraph 72. [00:24:28] Speaker 00: Let's see what the expert says there. [00:24:30] Speaker 00: The Tomioka system, therefore, presents the user with current content based on the user's history and preferences when a user engages in a new activity on a different device. [00:24:41] Speaker 00: Based on these disclosures, it is necessarily the case that the Tomioka system is configured to, quote, detect a second user activity performed using a second device and then access the user profile in response to that activity. [00:24:56] Speaker 00: as in claim 14. [00:24:58] Speaker 00: So now, what's the board talking about in the board decision where they cite that? [00:25:03] Speaker 00: If you go back to page appendix 17 of the board decision, they're saying why they believe Tomioka has the detect element, right? [00:25:11] Speaker 00: And they're talking about the access and the detect element here. [00:25:15] Speaker 00: Access element on page 16, they go to page 17 and they keep talking about that element. [00:25:21] Speaker 00: And what they say at the very end, a person of ordinary skill would understand that listening, viewing, [00:25:26] Speaker 00: and browsing disclose activities on different devices. [00:25:30] Speaker 00: Remember what they're responding to. [00:25:32] Speaker 00: The allegation by OpenTV, the argument all along was, you haven't shown us different devices. [00:25:38] Speaker 00: You've only shown us that the prior art shows it on a singular device, like just on a TV to a TV. [00:25:43] Speaker 02: That seems to me to be pretty hypothetical almost, that argument. [00:25:48] Speaker 02: For anticipation, you have to show that you have [00:25:51] Speaker 02: we have identified an actual limitation that reads on the patent limitation at issue. [00:25:57] Speaker 02: And I, when I look at this and I see what the board said with the result to Nutsen, it relies on Nutsen to seal the deal. [00:26:05] Speaker 02: Yeah, there's a lot of scattershot things out there, but it relies on the expert declaration to say, when you look at all this, there's only one thing you can get out of it because it's necessarily the case. [00:26:17] Speaker 02: And then it goes on and makes the anticipation a finding. [00:26:21] Speaker 00: I guess the way I would characterize that, Your Honor, is a little differently. [00:26:24] Speaker 00: I'd say rather than using it to seal the deal, they're simply pointing to another piece of evidence confirming what they've already determined. [00:26:30] Speaker 02: Well, if that's true, then shouldn't the other side have an opportunity to address that new piece of evidence that you're talking about? [00:26:36] Speaker 00: And they had an opportunity, Your Honor. [00:26:38] Speaker 00: They had an opportunity. [00:26:39] Speaker 00: I mean, they talked about this at the oral hearing. [00:26:44] Speaker 00: And if they had an opportunity, they could have made a motion to A, submit a sur-reply, which they didn't do. [00:26:51] Speaker 00: They could have made a motion to exclude the evidence, which they didn't do. [00:26:55] Speaker 00: This court has already acknowledged that those are opportunities to respond if you know about and have knowledge of the evidence. [00:27:00] Speaker 00: Furthermore, let's get beyond that. [00:27:03] Speaker 00: This was not an essential basis for the board's finding. [00:27:06] Speaker 00: The board made its finding based on the disclosure of Tomioka. [00:27:09] Speaker 00: Tomioka talks about using, in particular, on page 17, they talk about paragraph 58 from Tomioka. [00:27:16] Speaker 00: Paragraph 58 is the centerpiece of this analysis by the board. [00:27:21] Speaker 00: where they talk about having a central user profile or a centralized user description scheme where all of your information is in one place and where you can plug that information into multiple other devices. [00:27:33] Speaker 00: Listening devices, viewing devices, and browsing devices. [00:27:36] Speaker 00: All the board is saying is if it's a listening device or a viewing device or a browsing device, those are different than just TVs. [00:27:44] Speaker 00: Those are like computers that you browse on. [00:27:47] Speaker 00: Those are like audio systems in your car that you listen to. [00:27:49] Speaker 00: Those are like [00:27:50] Speaker 00: TVs that you watch. [00:27:52] Speaker 00: So that's all the board is saying, and they've further confirmed it by something that the experts said. [00:27:57] Speaker 00: And remember, the board's writing this decision in response to the arguments that have been advocated by Open TV throughout the proceeding. [00:28:04] Speaker 00: This is effectively a response to their argument. [00:28:06] Speaker 00: It's not a new issue. [00:28:08] Speaker 00: It's not a new theory. [00:28:09] Speaker 00: It's a response to their argument. [00:28:10] Speaker 00: And I think that's our main answer to the APA question, Your Honor. [00:28:15] Speaker 02: What's your position? [00:28:16] Speaker 02: When we read it's necessarily the case, [00:28:19] Speaker 02: Is this an inherency finding that the board made here? [00:28:26] Speaker 00: Well, I don't believe it is, Your Honor. [00:28:28] Speaker 00: I think Judge Moore asked me earlier for purposes of the hypothetical question to assume that the declaration was making an inherency statement. [00:28:36] Speaker 00: First of all, the declaration doesn't use the word inherency. [00:28:39] Speaker 02: How did you take the declaration? [00:28:41] Speaker 00: Well, I don't think it says inherency in that paragraph. [00:28:43] Speaker 00: It just says listening, viewing, browsing, [00:28:47] Speaker 00: They say those are necessarily things that are different than just TV watching. [00:28:50] Speaker 00: That's what they're saying. [00:28:51] Speaker 00: And an ordinary person would understand that. [00:28:53] Speaker 00: Nowhere does the declaration say that that's a basis for an inherency rejection. [00:28:57] Speaker 00: So I don't think the word inherency does not appear in the declaration. [00:29:01] Speaker 01: Yeah, but that's not necessary. [00:29:04] Speaker 00: It's not. [00:29:06] Speaker 00: It's not. [00:29:07] Speaker 00: But it doesn't appear in the board decision either. [00:29:09] Speaker 00: The findings of the board do not rely on an inherency theory. [00:29:12] Speaker 00: They rely on anticipation from the disclosure of the device [00:29:16] Speaker 00: It's a direct anticipation. [00:29:18] Speaker 02: The board doesn't rely on it, but it appears that it relies on an expert declaration that does. [00:29:24] Speaker 00: Not as its essential basis for its unpatentability. [00:29:28] Speaker 00: It's an extra piece of information that the board said, see Exhibit 1016. [00:29:32] Speaker 02: But for the citation to the expert declaration, would we be here? [00:29:36] Speaker 02: I mean, is there enough disclosure in Tomioka? [00:29:43] Speaker 00: In my view, if that wasn't there, the only difference would be [00:29:46] Speaker 02: we still have this board decision we still have an unpatriotic i understand your argument in your view but i'm looking at what the what the board did here and it seems to me that board said we've got all these different pieces out here and when you look at it it's necessarily the case flight closing that the deal as i said it's necessary the case that this access from uh... disclosure is is is is is is disclosing tomyoka [00:30:14] Speaker 00: But I don't think the board is saying that that's based on inherency at all. [00:30:19] Speaker 00: I mean, I can't find the word inherency in the board decision. [00:30:21] Speaker 02: Okay, assuming it's not inherency, is it a new theory? [00:30:24] Speaker 00: No. [00:30:25] Speaker 02: A new theory of anticipation? [00:30:27] Speaker 00: No, the theory has all along from the very beginning, from the very petition, beginning petition is the elements of the claim are disclosed in the prior art. [00:30:35] Speaker 00: The board looked at that evidence, the board considered it, and they said, we're persuaded. [00:30:40] Speaker 00: We think a proponents of the evidence is the standard that's necessary. [00:30:44] Speaker 00: satisfies anticipation. [00:30:45] Speaker 00: It's not based on inherency. [00:30:47] Speaker 00: It's not a new theory. [00:30:48] Speaker 00: It's not a shift. [00:30:49] Speaker 00: It's the theory that's always been there all along. [00:30:52] Speaker 00: If anything that's in here that might be different than what was in the original petition, it's simply as a basis to respond to it. [00:31:01] Speaker 02: Does it or does it not make that disclosure? [00:31:04] Speaker 02: And we're talking about anticipation. [00:31:06] Speaker 02: This is an obviousness issue we're looking at. [00:31:09] Speaker 02: I feel a lot different. [00:31:10] Speaker 02: But talking about anticipation, I kind of want to see something more than just unnecessarily some sort of logically or depending on how you wake up in the morning, this is a situation today. [00:31:25] Speaker 02: You know, I want to see something that expresses that limitation. [00:31:29] Speaker 00: And I think if you read the Tomioka reference closely, like the board did, and like the petition summarizes, you'll see that it is expressly disclosed. [00:31:38] Speaker 00: What Tomioka expressly discloses is use of multiple devices, not just TVs, TVs, audio equipment, VCRs, computer browsing equipment, to develop a profile. [00:31:50] Speaker 00: Once you develop the profile from the use of all those different devices, it shows my preferences, [00:31:55] Speaker 00: I can then take that profile and I can plug it into multiple different devices, including TVs, VCRs, audio equipment, sound recording, and sound devices in my car. [00:32:06] Speaker 00: And that profile will work on any of those devices. [00:32:09] Speaker 00: That's what Tomioko teaches. [00:32:11] Speaker 00: Now, open TV is argued [00:32:13] Speaker 00: You can't show me the exact words in one sentence where it says that. [00:32:16] Speaker 00: Well, when you read this reference and you read this... Well, yes. [00:32:19] Speaker 02: I mean, this is anticipation we're talking about. [00:32:21] Speaker 02: That's right. [00:32:21] Speaker 02: Show me the exact words. [00:32:23] Speaker 02: Show me the exact limitation, not guesswork. [00:32:26] Speaker 00: Well, I think that's what the Board decision does, Your Honor. [00:32:28] Speaker 00: I think the Board decision does show you those limitations. [00:32:30] Speaker 00: It shows you each limitation of the claim. [00:32:32] Speaker 00: And I can give you examples. [00:32:34] Speaker 00: For example, in paragraph 58, in Tomioko's disclosure, which the Board cites to, it tells you right in that paragraph, [00:32:44] Speaker 00: In this manner, the user, I'm going to take you to page A2487. [00:32:47] Speaker 00: Okay, Your Honor? [00:32:50] Speaker 00: And I'm going to go right to paragraph 58, which is the top of that page, of 2487. [00:32:54] Speaker 00: This is just an example to help ease your concern, Your Honor. [00:33:00] Speaker 00: Now, are you on page 2487? [00:33:01] Speaker 00: Yep. [00:33:02] Speaker 00: Which line? [00:33:03] Speaker 00: I'm going down one, two, three, four, five lines down, and the beginning of the sentence in the middle says, in this manner. [00:33:10] Speaker 00: Do you see that? [00:33:11] Speaker 02: In this manner... I'm looking at something different. [00:33:13] Speaker 02: I'm looking at 2487. [00:33:14] Speaker 02: Correct. [00:33:14] Speaker 04: There are line numbers and paragraph numbers. [00:33:18] Speaker 00: Yes, it's line number, it's line number 5, paragraph 58 on page appendix 2487. [00:33:24] Speaker 00: In this manner. [00:33:25] Speaker 00: Okay. [00:33:26] Speaker 00: You see that? [00:33:26] Speaker 00: In this manner, the user only has to specify his preference at most once on a single device and subsequently the descriptors are automatically uploaded into devices by the removable storage device. [00:33:40] Speaker 00: What they're saying is [00:33:41] Speaker 00: And then further reading, keep reading down, the system can store the user history and can create entries into programs that viewing information to obtain desired information. [00:33:51] Speaker 00: The user descriptor scheme enables modeling the user by providing a central storage for the user's listening, viewing, browsing preferences. [00:34:01] Speaker 00: Now you've got this centralized stored profile. [00:34:06] Speaker 00: You can then use it on any of these other devices for either listening, [00:34:10] Speaker 00: or browsing on a computer or viewing on a TV. [00:34:13] Speaker 04: And in fact, to help you clear, the first site the board has when it holds that it's present is to the petition page 15 to 17. [00:34:23] Speaker 04: And the petition page 15 to 17 cites paragraph 58 in the very sentence you just read out loud and says, this shows different devices. [00:34:30] Speaker 00: Exactly. [00:34:30] Speaker 04: Correct? [00:34:31] Speaker 04: Exactly, Your Honor. [00:34:31] Speaker 04: And that's what the board cites first. [00:34:32] Speaker 04: And then it has a C site to the Nutsen Declaration. [00:34:36] Speaker 00: Exactly, Your Honor. [00:34:37] Speaker 00: And thank you for that. [00:34:38] Speaker 00: And the whole point of me going to paragraph 58 was just to give you comfort that this isn't some new theory. [00:34:44] Speaker 00: This is the theory that's been there all along from the very beginning and from the petition. [00:34:48] Speaker 00: So I think all the features are disclosed, Your Honor. [00:34:52] Speaker 00: Thank you. [00:34:52] Speaker 00: Thank you, Your Honors. [00:35:06] Speaker 03: So we don't dispute that the reference says different devices. [00:35:09] Speaker 03: It says that over and over again. [00:35:11] Speaker 03: But what it's talking about is user preferences and behavior affecting content the user gets on, or not even content, affecting how other devices work. [00:35:21] Speaker 03: So in that same paragraph gives you the example of setting radio stations for a car stereo and a home stereo. [00:35:28] Speaker 03: And so what Tomioka is talking about when it talks about the user profile, it talks about on the same device [00:35:36] Speaker 03: And actually, Tomioka, if I can point you to paragraph 93, which is on appendix 2514, what OpenTV has been arguing all along is that, not disputing that there are different devices, but at line, let's see, around line 35, when we're talking about the different types of user descriptions, so I'm on appendix 2514, [00:36:03] Speaker 03: which is in Tomioka paragraph 93 about line 35. [00:36:09] Speaker 03: The reference explains what happens if you use different types of devices, a radio and a TV, which is required in the claims. [00:36:17] Speaker 03: The reference says here and in other places that the use of multiple user identification descriptions for the same user is useful when the user uses, I think that's multiple, different types of devices such as [00:36:31] Speaker 03: a television, home stereo, et cetera, and maintains multiple different sets of preference descriptions. [00:36:38] Speaker 03: That is what the reference says about a relationship, an embodiment where there's a connection between two different types of devices. [00:36:45] Speaker 03: There are multiple user profiles. [00:36:48] Speaker 03: And so that is not a teaching as required under 102 of the activity on one type of device affecting the content sent on another type of device, which is what the claims require. [00:37:01] Speaker 03: And the fact that it's anticipation is one of the things that made this the hardest petition I've ever seen, because it's not just anticipation where you need the high bar of particularity, but it's also a detailed claim with a configuration and connections between the elements that appears in almost every element in the claim, and a petition with huge amounts of citations, but lacking that roadmap. [00:37:24] Speaker 03: It developed over time, and that's improper under the IPR statute and the APA. [00:37:29] Speaker 03: It's a failure of notice there, too. [00:37:33] Speaker 01: I think I'm over my time.