[00:00:05] Speaker 04: Council? [00:00:07] Speaker 04: Since you've split your time, we're going to give you six with a red light so that you'll know. [00:00:16] Speaker 03: Hey, police the court. [00:00:18] Speaker 03: The board erred by failing to apply 37 CFR section 1.530 and section 255 of the Patent Act when it determined the priority date for the 494. [00:00:30] Speaker 02: Does this issue relate to the non-instituted claims? [00:00:34] Speaker 03: Yes, Your Honor. [00:00:36] Speaker 03: to the priority date. [00:00:37] Speaker 02: How do we have jurisdiction over the non-instituted claims? [00:00:41] Speaker 03: Your Honor, under Section 319, the court has jurisdiction to decide any issue that was decided adversely to Palo Alto Networks in the final written decision. [00:00:52] Speaker 02: With regard to the claims upon which things were instituted. [00:00:58] Speaker 03: The issue of the priority date. [00:01:00] Speaker 02: Let me ask you this, because I have more problems with this than that, and that is, [00:01:05] Speaker 02: Why didn't you bring this into our attention after SAS that there was a partial institution here? [00:01:13] Speaker 03: Your Honor, our understanding of Section 319 is that we are able to appeal from a final decision here. [00:01:19] Speaker 02: No, that doesn't answer my question. [00:01:21] Speaker 02: You know that after SAS, this court determined that partial institutions were no longer valid. [00:01:27] Speaker 02: And if the parties brought them to our attention, [00:01:30] Speaker 02: we would send it back to the board for a full decision on whether these claims should have been instituted. [00:01:36] Speaker 02: And you know that, not just theoretically, because you did this distinctly in another case recently, right? [00:01:44] Speaker 02: In fact, you provided supplemental briefing to us on that issue. [00:01:48] Speaker 02: Why didn't you do it here? [00:01:49] Speaker 02: We could have had these claims sent back to the board under SAS because a partial institution is no longer valid. [00:01:57] Speaker 03: Our understanding was that section 319 and the presumption of reviewability of a final rent decision gave the court jurisdiction. [00:02:06] Speaker 02: Have we ever done that with regard to a final decision not to institute? [00:02:12] Speaker 03: Not to my knowledge, your honor. [00:02:14] Speaker 02: However, the issue- When we do it, it's because there's a final decision to institute and there are collateral issues about institution that we've determined merge into the final decision. [00:02:28] Speaker 02: You don't have a final decision here on these claims. [00:02:30] Speaker 02: You have a final decision on other claims that mention this collateral issue. [00:02:35] Speaker 02: But this collateral issue never merged into a final decision on these uninstituted claims. [00:02:42] Speaker 02: Did it? [00:02:43] Speaker 03: The priority issue relates directly to the grounds one through four. [00:02:49] Speaker 03: So. [00:02:50] Speaker 02: Of claims that the board actually decided? [00:02:53] Speaker 02: No. [00:02:53] Speaker 02: That we're not instituted. [00:02:54] Speaker 05: That we're not instituted. [00:02:55] Speaker 05: That we're not instituted. [00:02:57] Speaker 02: We don't have jurisdiction over those claims. [00:02:59] Speaker 02: Some people may disagree. [00:03:01] Speaker 02: I don't see how we do. [00:03:02] Speaker 02: You could have saved yourself if you would have filed an SAS letter. [00:03:06] Speaker 02: But why shouldn't we find that wave now? [00:03:09] Speaker 02: I mean, this is months after SAS when you are not only on constructive notice of the decision by having it out there, but you have following that procedure in other cases. [00:03:21] Speaker 03: Your Honor, the briefing in the other case was at the request of the court. [00:03:27] Speaker 02: I don't understand why you didn't identify the fact that this had an SAS problem. [00:03:32] Speaker 03: Your Honor, perhaps it was a mistaken belief, but our belief and understanding was that the court would have jurisdiction to decide. [00:03:39] Speaker 03: Based on what? [00:03:40] Speaker 02: Can you cite me a single case where we reviewed non-institution? [00:03:48] Speaker 03: I cannot, Your Honor. [00:03:49] Speaker 03: But again, our understanding is that because the board reached the priority date issue in the final written decision. [00:03:56] Speaker 05: Is there any reason why the board even touched on that? [00:03:59] Speaker 05: I mean, I agree with you that the board addressed the priority issue. [00:04:04] Speaker 05: It seems to me entirely gratuitous and irrelevant to the issues that were before the board. [00:04:10] Speaker 03: Your Honor, there were several issues that were disputed at the stage of oral argument. [00:04:15] Speaker 03: The priority date of the markup reference was disputed and related to the priority date. [00:04:22] Speaker 03: Of course, I had re-raised the Tubal PCT issue, which goes to the non-stitute grounds. [00:04:27] Speaker 05: But Tubal was raised in the original petition, but the board didn't institute on that. [00:04:33] Speaker 03: Correct, Your Honor. [00:04:34] Speaker 03: So the issues that were live for the court were, one, I argued that the priority date determination was preliminary at the institution stage and should be revisited by the board. [00:04:44] Speaker 03: Two, the issue of the priority status of the Martin reference was disputed and related to the priority date of the patent. [00:04:55] Speaker 03: If the court concludes. [00:04:56] Speaker 02: So the board entertained arguments on claims that it didn't institute. [00:05:02] Speaker 02: Yes, Your Honor. [00:05:03] Speaker 02: But it still didn't institute, though. [00:05:06] Speaker 03: No, but the only issue as to the first ground that was not instituted. [00:05:10] Speaker 03: We don't have a final written decision whether these claims are valid or not. [00:05:15] Speaker 03: No, Your Honor, we do not. [00:05:16] Speaker 03: We have a final written decision on the priority date. [00:05:19] Speaker 02: And Your Honors, if that had been the only thing going on, none of these other cases where they'd actually been instituted were at issue. [00:05:29] Speaker 02: And so the board just looked at these specific claims, said your prior art reference is no good because of the priority date. [00:05:38] Speaker 02: We're not going to institute. [00:05:40] Speaker 02: Do you think that would have been reviewable? [00:05:43] Speaker 02: No, Your Honor, probably not. [00:05:45] Speaker 02: So the fact that they repeated that preliminary threshold decision in their final decision somehow makes it reviewable, even though it doesn't relate to any claims on which the IPRs were instituted? [00:06:05] Speaker 03: Well, Your Honor, the challenge for Palo Alto networks, of course, as you can understand, [00:06:11] Speaker 03: A final written decision has different effect from an issue preclusion standpoint, for example, from an estoppel standpoint than a preliminary decision whether to institute. [00:06:21] Speaker 03: So we're in a situation where perhaps because of the board's willingness to reach the issue, we have a final written decision that was decided adversely to pout out the networks on an issue that directly affects the validity of the claims. [00:06:37] Speaker 03: And perhaps the board erred by reaching that issue [00:06:40] Speaker 03: But we're still stuck with a final written decision on that issue. [00:06:44] Speaker 03: So if the court concludes that it doesn't have jurisdiction. [00:06:46] Speaker 02: But you would be stuck with that issue if it was done in a separate case where they didn't institute and you said that we have no review. [00:06:56] Speaker 02: You agree we'd have no jurisdiction review. [00:06:59] Speaker 02: It would be the same decision. [00:07:01] Speaker 02: The preclusive effect of a final written decision on an issue they didn't have to reach there versus in the threshold institution decision [00:07:10] Speaker 02: seems to me to make no difference. [00:07:13] Speaker 03: Well, Finjen has not disputed that it will argue that there's a preclusive effect to the board's findings in the final written decision. [00:07:21] Speaker 03: That plainly wouldn't be the case in a decision not to institute on those grounds. [00:07:26] Speaker 04: Keep in mind you're well into your co-counsel's time. [00:07:28] Speaker 03: OK. [00:07:29] Speaker 03: And so we've asked, in the alternative, if the court finds that it does not have jurisdiction in what appears to be a unique situation where the board has reached an issue and decided a final written decision, [00:07:40] Speaker 03: An issue such as this priority date issue would ask under bio-delivery sciences versus request of therapeutics, which is at 898 F3rd, 1205, that the court vacate the board's decision and remand under SAS. [00:07:56] Speaker 03: In the bio-delivery sciences case, the court found that there was no waiver for as to an issue that had not been raised, the SAS issue not having been raised before the board, or on appeal. [00:08:08] Speaker 03: And I would remind the court that in this case, our appeal briefing was completed and submitted before SAS was decided. [00:08:16] Speaker 03: Now, I take your point, Judge Hughes, that this is an issue that we were aware of. [00:08:21] Speaker 03: We may have had a mistaken understanding that we could appeal the final written decision, but would request that the court vacate and remand for the board to enter a final written decision on all proposed grounds under SAS. [00:08:37] Speaker 03: in full conformance with bio-delivery sciences. [00:08:41] Speaker 03: And this court has not, to my knowledge, found waiver on the SAS issue because it was a substantially significant change in the law. [00:08:48] Speaker 03: And here we have a fact that distinguishes our case even further. [00:08:52] Speaker 02: Of course, we haven't found waiver because people have either raised it in a timely fashion or haven't bothered to argue it at all. [00:09:00] Speaker 02: Here, it's some, I don't know, eight or nine months after the decision, you were expressly [00:09:06] Speaker 02: on notice of it, you submitted a supplemental brief on the exact same issue in another case, and you are now raising it for the first time at oral argument without even submitting any kind of supplemental brief or letter to us. [00:09:19] Speaker 02: And only, I suspect, at my notice of the issue. [00:09:23] Speaker 03: Your Honor, the difference is that there was no final written decision, as we have here, on an issue that the board reached that facially under 319 is appealable. [00:09:34] Speaker 03: or reserve our remaining time. [00:09:40] Speaker 04: Did you have split time? [00:09:43] Speaker 04: How is that going to work? [00:09:44] Speaker 04: I'm sorry. [00:09:45] Speaker 02: Wait, are you going to argue against him and then he's going to get up and somebody else is going to get to argue on the merits? [00:09:50] Speaker 00: He's a solicitor. [00:09:51] Speaker 00: I know who he is. [00:09:52] Speaker 00: So he's on the cross appeal for us. [00:09:54] Speaker 00: OK. [00:09:55] Speaker 00: I'm arguing the appeal from... I'm just confused because he's sitting over there. [00:10:01] Speaker 00: We're both confused by that. [00:10:03] Speaker 00: If you sit with me, it'd be kind of weird him being against me. [00:10:06] Speaker 00: So we did it that way. [00:10:08] Speaker 04: So what's the timing now then? [00:10:10] Speaker 00: I'm going to do 12 minutes here. [00:10:12] Speaker 00: I'm going to talk about Palo Alto Network's appeal on the claims that were confirmed valid and our cross-appeal, the ones that were in the final decision invalid. [00:10:22] Speaker 00: What was the six and six split? [00:10:25] Speaker 01: Wait, so he is on his side. [00:10:32] Speaker 02: On the merits. [00:10:36] Speaker 02: What are you going to address now? [00:10:38] Speaker 02: Are you going to address the merits of... They're the appellee on these claims. [00:10:44] Speaker 00: Okay. [00:10:46] Speaker 02: So you're going to argue on the merits why the board was wrong and then they're both going to get up and argue why the board was right. [00:10:54] Speaker 02: Of course, the solicitor's time's been eaten. [00:11:00] Speaker 02: Go ahead. [00:11:00] Speaker 02: May I please record? [00:11:03] Speaker 02: Before you get to the merits, do you have, I don't know if this issue even relates to your case or not. [00:11:08] Speaker 02: It's a little confusing because there's a bunch of parties and some of them went away. [00:11:11] Speaker 02: Does what I just discussed with your friend relate to your appeal? [00:11:17] Speaker 00: Not to our appeal, but it is our opposition. [00:11:20] Speaker 00: We agree with your honor that they waive [00:11:23] Speaker 00: their appeal under the four grounds that we're not getting. [00:11:29] Speaker 00: Yeah, exactly. [00:11:30] Speaker 02: I mean, if they had properly preserved an SAS issue, I think we, would you agree we would have been compelled to vacate and remand under the Supreme Court precedent? [00:11:42] Speaker 00: Yeah, as this court has interpreted SAS, I mean, when I first read SAS, it said if all claims are instituted, but now I know this court has said all claims and all grounds, [00:11:52] Speaker 00: So all grounds are not instituted. [00:11:54] Speaker 02: Although this is different claims, too. [00:11:56] Speaker 02: It's not just different grounds. [00:11:57] Speaker 00: I believe all the claims were instituted, in this case, on the swimmer reference, but not on all grounds. [00:12:02] Speaker 00: There are six grounds that Palo Alto Networks petitioned on. [00:12:05] Speaker 00: Two of them were instituted for or not of the claims, but the one with the priority issues, those are four grounds that they did not institute on. [00:12:14] Speaker 00: So under this course precedent, I think [00:12:17] Speaker 00: it would have been properly remanded back for the board to look at it. [00:12:21] Speaker 00: But as we mentioned in our brief, it's not right for an appeal because they didn't decide if I were in decision on those four grounds. [00:12:32] Speaker 00: Since SAS came out, I was here. [00:12:33] Speaker 00: We argued this in this very same courtroom with Finjen and Mr. Orion at Arman. [00:12:41] Speaker 00: In that case, we actually did remand [00:12:44] Speaker 00: the uninstituted claim. [00:12:45] Speaker 00: That's great. [00:12:46] Speaker 00: We had supplemental briefing. [00:12:47] Speaker 00: We argued in that case that we thought there was no harm, no foul, but it was remanded nonetheless. [00:12:54] Speaker 02: So what harm is there to hear? [00:12:56] Speaker 02: I mean, I think if you were making a positive case for waiver, you have a really, really good one. [00:13:01] Speaker 02: What real harm is there here to you if we do the same thing we did in the other case? [00:13:06] Speaker 00: Well, the harm is kind of the whole procedure of what happened in this case. [00:13:12] Speaker 00: The harm is that [00:13:14] Speaker 00: we have uh... the uh... how it works did not raise his own appeal armistice your honor that i don't know much but i know a barrel when i see my opposing counsel over it that's a good way of looking at it i mean uh... i'm sitting in the catbird seat i don't like that i don't want to give that seat up uh... that would be the harm your honor i don't need to hear any more on that if you want to move on to the mirror so let me talk a little bit about uh... [00:13:43] Speaker 00: what happened down below on the merits as to the claims that were found about the method claims. [00:13:49] Speaker 00: Every bit of evidence that was relied on by the board was put forward in a reply and rebuttal and oral argument. [00:13:58] Speaker 00: It was not put in a timely manner. [00:14:00] Speaker 00: And so we raised that. [00:14:02] Speaker 00: We moved to strike all that evidence. [00:14:05] Speaker 00: And you look at the solicitor's brief, he said, well, it's our fault. [00:14:11] Speaker 00: We should have [00:14:12] Speaker 00: tried harder to get rid of that evidence, and we did. [00:14:15] Speaker 00: The fact is, is that the evidence came in late, we moved to strike it, and the board rejected it. [00:14:27] Speaker 00: They basically are punishing Finjen in this case, not divining what they would rely on in late evidence, evidence that came in after the petition, evidence came in after our opposition. [00:14:39] Speaker 00: So it's something that [00:14:42] Speaker 00: If you took that evidence away, there's absolutely no grounds, no factual grounds to actually invalidate those claims. [00:14:51] Speaker 00: The principal argument aside from the timing issue and the fact that it's improper evidence was claim destruction. [00:15:02] Speaker 00: The term list of suspicious computer operations was construed in such a way that it reads out any type of meaning to what the word suspicious means. [00:15:13] Speaker 00: The board interpreted that means a list of all operations in the downloadable code which could ever be deemed potentially hostile. [00:15:23] Speaker 00: Now, what Finjen proposed was a list of computer operations deemed suspicious or potentially harmless. [00:15:29] Speaker 00: You had to determine that those operations might, they're suspicious. [00:15:34] Speaker 00: It's not that they could possibly be suspicious, that they had been deemed suspicious. [00:15:39] Speaker 05: What's the difference between suspicious and potentially harmful? [00:15:43] Speaker 00: None. [00:15:44] Speaker 00: We said in our reply brief, we agree that they're the same thing. [00:15:48] Speaker 00: But what the board did was a list of operations that could ever be deemed. [00:15:52] Speaker 00: In other words, it's kind of like the prior art swimmer looked at every single operation came in and wrote that to a log file. [00:16:03] Speaker 00: Every single operation. [00:16:04] Speaker 00: It didn't make a determination whether that was suspicious or not. [00:16:06] Speaker 00: It just wrote it to a log file. [00:16:09] Speaker 00: And then they said, well, [00:16:10] Speaker 00: There's going to be suspicious operations in that log file. [00:16:12] Speaker 00: So that list is included in the file itself. [00:16:15] Speaker 00: But it never made a determination. [00:16:17] Speaker 00: It never deemed it suspicious. [00:16:18] Speaker 00: It just wrote it in as a default. [00:16:20] Speaker 05: Well, but there was some indication by function as to whether there was some reason to be concerned about some of these things. [00:16:30] Speaker 00: Yeah. [00:16:30] Speaker 00: They looked at the DOS files and said there's a certain class of DOS files where this suspicious activity tends to reside. [00:16:37] Speaker 00: But a lot of those DOS files are not suspicious. [00:16:40] Speaker 00: I mean, they're in that class of DOS reads. [00:16:43] Speaker 00: And that came in rebuttal as well. [00:16:45] Speaker 00: It was in the original petition. [00:16:47] Speaker 00: That was late evidence as well. [00:16:49] Speaker 00: But the fact that they took a construction that was pretty straightforward and turned it on its head and based it upon a portion of the specification of a great-grandparent application of an embodiment where the actual language was the code scanner may [00:17:10] Speaker 00: generate the DSP data as a list of all operations that could be hostile. [00:17:16] Speaker 00: So they're saying that the majority of the DSP data, it wasn't defining what the suspicious computer operations were. [00:17:24] Speaker 05: But in any list of things considered suspicious, there will always be things that are not harmful. [00:17:34] Speaker 05: Because suspicious means that it might be. [00:17:39] Speaker 05: But then again, it might not be. [00:17:42] Speaker 05: So it's just, these are things that raise a red flag and maybe some of them are okay, some of them are not. [00:17:49] Speaker 05: I'm having trouble making the distinction that I think you're trying to argue. [00:17:55] Speaker 00: What we're trying to say is the way the claim was drafted, the patentee decided that the downloadable security profile data contains a list of suspicious computer operations. [00:18:08] Speaker 00: So a list of suspicious computer operations has to be something. [00:18:11] Speaker 00: The word suspicious or potentially hostile, as you said. [00:18:16] Speaker 05: Red flag. [00:18:17] Speaker 00: It's a red flag. [00:18:19] Speaker 05: Not necessarily a virus or malware or anything else. [00:18:23] Speaker 05: It's suspicious, yes. [00:18:25] Speaker 00: There has to be something that has to be deemed there. [00:18:30] Speaker 00: My favorite example, and we throw these out every now and then in district court when we talk about this issue, if you go to a football stadium, [00:18:38] Speaker 00: And you say, give me a list of all the red-headed women there. [00:18:41] Speaker 00: And they just give you a list of all the women. [00:18:43] Speaker 00: Well, you have a list of all the red-headed women as well. [00:18:46] Speaker 00: But you also have the blondes and brunettes and everything else. [00:18:48] Speaker 00: So that's what Schwimmer is doing here. [00:18:51] Speaker 00: It's giving a list of, it's just logging everything in this log file, regardless of what it is. [00:18:57] Speaker 00: It's based on the fact that it's a woman, or in this case, a certain DOS file. [00:19:01] Speaker 00: It doesn't try to do anything to deem it suspicious or not. [00:19:05] Speaker 00: So if you give it the proper construction, there's no way Schwimmer would come close. [00:19:14] Speaker 00: The same is true when the solicitor's brief said there's no distinction in that grandparent patent, 194 patent, between operations that have been deemed potentially hostile and those that could ever be deemed potentially hostile. [00:19:31] Speaker 00: And that's the crux of the argument right there. [00:19:34] Speaker 00: Those that have been deemed potentially hostile and those that could ever be deemed potentially hostile. [00:19:41] Speaker 00: That's the big distinction. [00:19:43] Speaker 00: According to the board, there's no distinction between those two. [00:19:46] Speaker 00: And that's where the claim construction issue falls apart. [00:19:53] Speaker 00: Now, with respect to the board's argument that even if you were to assume the construction that Finja proposed, [00:20:05] Speaker 00: swimmer would still find those method claims invalid. [00:20:12] Speaker 00: That is a reading of swimmer that just doesn't apply. [00:20:17] Speaker 00: Swimmer is very clear. [00:20:18] Speaker 00: It looks at every one of those DOS files, it writes it to a log file. [00:20:22] Speaker 00: It doesn't do anything to determine if it's suspicious, and it doesn't do anything to say that you would have a list of suspicious operations in this database. [00:20:34] Speaker 00: Let's hear it for the questions. [00:20:35] Speaker 00: I'll sit down and hold my wire. [00:20:39] Speaker 00: I'll let one of these folks talk, and I'll come back up. [00:20:42] Speaker 00: That's OK. [00:20:43] Speaker 00: Thank you. [00:20:52] Speaker 03: Your Honor, how much time do I have left? [00:20:54] Speaker 03: Is it six minutes? [00:20:58] Speaker 04: You essentially, he took nine. [00:20:59] Speaker 04: Nine and a half, as I recall. [00:21:01] Speaker ?: Three or so. [00:21:03] Speaker 04: There was supposed to be six overvitals. [00:21:10] Speaker 04: I would say give it four. [00:21:16] Speaker 03: Thank you, Your Honor. [00:21:16] Speaker 03: I'll take a few minutes and then yield to Mr. McBride. [00:21:20] Speaker 03: Mr. Andre identifies two issues that he claims are claim construction issues. [00:21:25] Speaker 03: But we would submit that beyond the fact that the board properly construed the claims in light of the specification, [00:21:31] Speaker 03: But this is really a substantial evidence question, and at best, harmless error. [00:21:36] Speaker 03: The board made alternative findings of fact on both of the issues regarding both of these claim construction limitations. [00:21:43] Speaker 03: And those fact findings provide a basis for the board's conclusion that these claims 1, 2, and 6 would be invalid, even under the constructions that Mr. Andre is espousing. [00:21:55] Speaker 03: At appendix 3569 to 3570, [00:21:59] Speaker 03: The board said first, with respect to a list of suspicious computer operations, that Swimmer discloses deriving security profile data, including a list of suspicious computer operations, even under patent owner's proposed construction. [00:22:13] Speaker 03: Then it went on to explain that because Swimmer teaches generation of audit records for the interrupt 21H DOS function, that Swimmer is deriving a list of suspicious computer operations [00:22:26] Speaker 03: based upon a particular type of operating system function. [00:22:30] Speaker 03: When you look into the specification the board found, and again, this is the priority specification for the 194 patent, you find that what the specification describes as a list of suspicious computer operations are specifically things like operating system functions. [00:22:46] Speaker 03: And Swimmer, as the board found at appendix 3569, only logs into the audit file particular types of [00:22:54] Speaker 03: operating system functions for the DOS operating system. [00:22:57] Speaker 03: So there's already substantial evidence supporting the board's alternative finding that under Finch's proposed construction, the claims 1, 2, and 6 are still invalid. [00:23:07] Speaker 03: Similarly. [00:23:07] Speaker 05: Tell me why you think claims 10, 11, and 15 should be treated the same as the method claims. [00:23:15] Speaker 03: Your Honor, this is a situation where there is an issue of claim construction here. [00:23:21] Speaker 03: Claim 10 is a system claim. [00:23:23] Speaker 03: We argued in our petition that claim 10 has the same scope as claim 1. [00:23:28] Speaker 03: There's two system limitations. [00:23:30] Speaker 05: Did you ask for a claim construction of scanner and database manager before the board? [00:23:41] Speaker 03: No, Your Honor, we did not. [00:23:42] Speaker 03: We argued in our petition that. [00:23:44] Speaker 05: So that issue is not before us. [00:23:47] Speaker 05: We're a court of review. [00:23:50] Speaker 03: Right. [00:23:50] Speaker 03: Neither party asked for an express construction on that. [00:23:53] Speaker 05: All right, so then again, tell me why claims 10, 11, and 15 should be treated the same as 1, 2, and 6 when 10, 11, and 15 recite structure that's not present in 1, 2, and 6. [00:24:10] Speaker 03: The argument made in the petition, Your Honor, was that claim 10 recites two system limitations. [00:24:15] Speaker 03: Those terms don't show up anywhere in the disclosures that provide support, and you have [00:24:21] Speaker 03: downloadable scanner for deriving DSP data. [00:24:24] Speaker 05: But that's a piece of structure, a scanner. [00:24:29] Speaker 03: And yes, that term is a structural term. [00:24:32] Speaker 05: And the board said that's missing in the swimmer reference. [00:24:39] Speaker 03: Our argument, Your Honor, was that anything that performs the claim method will suffice to satisfy that limitation. [00:24:47] Speaker 03: And I would like to yield some time to Mr. McBride. [00:24:57] Speaker 04: I'll do my best. [00:24:59] Speaker 01: I'll try and keep it short. [00:25:00] Speaker 01: Good afternoon, and may it please the court. [00:25:02] Speaker 01: There's just two issues I'd like to address. [00:25:04] Speaker 01: The first is Finjen's argument that petitioners relied on late presented evidence. [00:25:10] Speaker 01: I think it would be helpful just to lay out how the claim construction issue of this deeming limitation first came up. [00:25:17] Speaker 01: Petitioner filed their petition. [00:25:20] Speaker 02: I hate to take you away from your argument, particularly because I'm going to ask you a question that you didn't brief. [00:25:27] Speaker 02: And you're not on this appeal. [00:25:29] Speaker 02: But with regards to the appealability of the effective date issue, do you think the office has a position over on whether we could review that issue in a non-instituted claims, even though it mentioned it collaterally in a final decision regarding other claims? [00:25:54] Speaker 01: Unfortunately, I'm not prepared to give [00:25:56] Speaker 01: position on behalf of the agency for you today, so I apologize for that. [00:26:02] Speaker 01: I don't have any other questions. [00:26:04] Speaker 01: Would you like me to continue with 30 seconds left? [00:26:08] Speaker 04: No, your 30 seconds is over. [00:26:09] Speaker 01: Oh, I'm sorry. [00:26:11] Speaker 01: I'll give you another 30 seconds. [00:26:12] Speaker 01: 30 seconds, thank you. [00:26:13] Speaker 01: Their argument that the claims require this deeming limitation wasn't brought up to the board until after they instituted [00:26:20] Speaker 01: inter parte review was brought up in their patent owner response. [00:26:23] Speaker 01: So the first time that petitioners could respond to that argument was in their reply, and they did so with the expert declaration. [00:26:30] Speaker 01: So I think it was perfectly acceptable for that evidence to come in when a kid in Finch and had an opportunity to file a cert reply, request a cert reply, request for hearing, and further test that argument if they desire to. [00:26:43] Speaker 01: So unless there's further questions, I'll sit down. [00:26:45] Speaker 04: Thank you. [00:26:53] Speaker 00: And let me just address what the Solicitor's Office just talked about with the claim construction. [00:26:59] Speaker 00: As you know, when a petition is made against a patent owner, the petition is filed with the board, and there's an optional preliminary response by the patent owner. [00:27:10] Speaker 00: And the optional response is that. [00:27:12] Speaker 00: It's optional. [00:27:12] Speaker 00: It's not the time to agree to a hand. [00:27:14] Speaker 00: You can file it or not file it. [00:27:16] Speaker 00: We filed a preliminary response, and certain grounds were instituted on. [00:27:23] Speaker 00: At that point, after there's an institution, that's when the patent owner does give its claim construction. [00:27:30] Speaker 00: That's the time to do it. [00:27:31] Speaker 00: That's when rubber meets the road right there. [00:27:33] Speaker 00: That's the time. [00:27:35] Speaker 00: The fact that the board is now saying that was untimely. [00:27:39] Speaker 00: In fact, in the brief, the board called it late. [00:27:49] Speaker 00: It was late presentation of claim construction. [00:27:51] Speaker 00: I wrote that down. [00:27:52] Speaker 00: I thought that was a very unusual position for a disinterested decider to make. [00:28:00] Speaker 00: That's what the board's supposed to be. [00:28:02] Speaker 00: They're supposed to be disinterested. [00:28:03] Speaker 00: It's unusual that they're here in an advocacy position against Fingen, but that's... Well, they have a statutory right to intervene to defend the board's decision. [00:28:13] Speaker 02: I don't know how unusual that is. [00:28:15] Speaker 02: Congress gave them that right in the statute. [00:28:18] Speaker 00: Yeah. [00:28:19] Speaker 00: I appreciate it. [00:28:19] Speaker 00: I know this court's already decided that. [00:28:21] Speaker 02: There's a difference between the board and [00:28:23] Speaker 02: the Solicitor's Office. [00:28:25] Speaker 02: But agencies often have attorneys that defend an administrative body's decision. [00:28:31] Speaker 02: We review the Merit Systems Protection Board and their attorneys defend it. [00:28:35] Speaker 02: So to call it unusual, I think, is not to give a court to Congress's intent. [00:28:41] Speaker 00: I guess when I say it's unusual, it's unusual at the advocacy position that they're taking that this would be a late claim instruction when it is actually the exact time you're supposed to give a claim instruction. [00:28:51] Speaker 00: There's advocacy [00:28:53] Speaker 00: that they have a statutory right to defend what the Congress gave them. [00:29:00] Speaker 00: But they come in here and say that somehow Fingen failed to do a survey plot. [00:29:05] Speaker 00: That Fingen failed to move to... Do you really want to use your time on this? [00:29:09] Speaker 00: You're welcome. [00:29:10] Speaker 00: Okay, I'm sorry. [00:29:11] Speaker 00: I'm on soap blocks every now and then. [00:29:13] Speaker 00: I apologize. [00:29:14] Speaker 00: Tell us a little bit about claim 10, 11, 15. [00:29:16] Speaker 00: Okay, claim 10, 11. [00:29:18] Speaker 00: As your honor pointed out, it is to require structure. [00:29:21] Speaker 00: And that was an evidentiary issue. [00:29:24] Speaker 00: The Palo Alto Network's own expert said there's no structure that would equate to a downloadable scanner. [00:29:31] Speaker 02: But the board's reasoning on this seems pretty contradictory, doesn't it? [00:29:37] Speaker 02: I mean, it seems like the board says the emulator and swimmer acts as a scanner, but it doesn't necessarily disclose that it is a scanner. [00:29:48] Speaker 02: If it's acting as a scanner, I mean, isn't most software stuff written in terms of function? [00:29:54] Speaker 02: So if it's acting as a scanner, it is a scanner. [00:29:57] Speaker 00: Well, I think in this particular instance, what the board relied on was evidence that was presented. [00:30:03] Speaker 02: Well, I get you. [00:30:04] Speaker 02: If they would have just said there's nothing in Swimmer that looks like a scanner, you'd be much from our ground. [00:30:09] Speaker 02: But when they said the emulator functions as a scanner, but then goes on to say, but it doesn't disclose a scanner, [00:30:18] Speaker 02: That seems to be inconsistent reasoning. [00:30:21] Speaker 00: Well, in this particular instance, the petitioner has the burden of proof to provide it is a scanner. [00:30:27] Speaker 00: And their experts said it wasn't. [00:30:29] Speaker 00: So it is an evidentiary issue to start off with. [00:30:32] Speaker 00: Secondly, there's a conflation of where the board found logic on the method claims. [00:30:41] Speaker 00: They basically said that the writing to a log file both operated as the scanner [00:30:47] Speaker 00: the manager, the database manager, a single writing to a log file. [00:30:51] Speaker 00: They conflate two very distinct structural elements into a single act. [00:30:56] Speaker 00: So the structure provided in the system claims does take it outside of Schwimmer much further. [00:31:05] Speaker 00: The method claims themselves does as well if you give a proper claim construction and you look at Schwimmer for what it is. [00:31:12] Speaker 00: If there's no further questions, I know everyone ran through some time, so thank you much. [00:31:16] Speaker 00: I appreciate it. [00:31:17] Speaker 00: Okay, thank you.