[00:00:36] Speaker 00:
Next case is also personalized media versus Amazon, 2017-14-41, and Mr. Schreiner is doing double duty.

[00:00:50] Speaker 02:
I plead the court.

[00:00:51] Speaker 02:
I'm Steve Schreiner.

[00:00:52] Speaker 02:
I'm from Goodwin Proctor on behalf of the patent owner of personalized media communications.

[00:00:58] Speaker 02:
This case involved, this appeal involves the board's refusal to enter

[00:01:03] Speaker 02:
substitute claims and a motion to amend on the basis that the substitute claims were allegedly enlarging.

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The entire issue turns on a question of claim construction that was determined with regard to the original claims and that carried over to the substitute claims.

[00:01:21] Speaker 02:
And this erroneous claim construction.

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So in order to when you have to establish that the original claims were hardware directed rather than directed to the operating system.

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We have to establish that the original construction at least encompasses a hardware version comparison to reprogram.

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So the board ultimately found that the comparison that's called for in the claim is a comparison of software versions.

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Now, I'd like to walk the court

[00:01:58] Speaker 02:
through the sequence of events, because I think that it helps set the stage.

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In the board's institution decision, the board stated that the claim language is broad enough to encompass reprogramming by comparing operating system versions.

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But the board also allowed for reprogramming based on hardware versions.

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So taking that construction.

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Ultimately, they relied on the wear-in clause, right?

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The wherein clause and also a little bit of a thought experiment the board engaged in to explain how a software version could indicate or specify a hardware version.

[00:02:43] Speaker 02:
I'm happy to address that if Your Honor wants me to address that.

[00:02:46] Speaker 04:
So the wherein clause was added during the prosecution, right?

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That's correct.

[00:02:51] Speaker 02:
The wherein clause was added just prior to allowance.

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PMC, it simply states that the specific version of programmable device, in other words, the hardware version, indicates a version of an operating system.

[00:03:11] Speaker 02:
And PMC saw that it clarified the claim a little bit, but it didn't change the fundamental feature of the claim or the fundamental operation of the claim, which is that a comparison of hardware versions is what triggers the reprogramming.

[00:03:25] Speaker 02:
You'll observe that the examiner did not require similar amendments to the other steps in the claim, such as the receiving step that talks about this reprogramming signal that comes down.

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So in the ID, the board left it open that the original claim could cover either reprogramming by comparing software versions or hardware versions.

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Taking that claim construction, PMC prepared substitute claims

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that were narrowing.

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PMC focused just on the one option allowed, one of the two options allowed by the board's initial construction.

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So PMC wrote claims that called out explicitly and made it indisputable that those substitute claims cover reprogramming based on a comparison of hardware versions.

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That is undisputed.

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The board doesn't dispute it.

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Amazon doesn't dispute it.

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Don't you lose either way if

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If we found that the claims are not broadening, aren't they invalid as res judicata?

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Based on the findings as to the original claim?

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Right.

[00:04:37] Speaker 02:
No.

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They're not broadening.

[00:04:38] Speaker 02:
No, because the board's finding as to the original claim was premised on an incorrect claim construction.

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So there's no res judicata effect.

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Once the claim construction is corrected,

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then that revised claim construction would require a different analysis of the original claim.

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Now, PMC didn't appeal the original claim here because there was a decision from this Court, a Section 101 decision, that made that pointless.

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But we are appealing the refusal to enter the substitute claims, and there are factual and claim construction predicates to that.

[00:05:20] Speaker 02:
If I could just touch on the forged construction and how it flies in the face of the intrinsic evidence.

[00:05:29] Speaker 02:
First, let's talk about the specification.

[00:05:31] Speaker 02:
The specification refers to, excuse me, the preamble.

[00:05:34] Speaker 02:
The preamble to claim one refers to a version of a programmable device that includes a signal detector, a memory, and a receiver.

[00:05:44] Speaker 02:
There's no reference to software or an operating system there.

[00:05:47] Speaker 02:
So version of programmable devices defined in the preamble as hardware.

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And then in the body of the claim, in the first limitation, which refers back to said specific version of programmable device, that's an antecedent reference to the preamble.

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So we know in that first limitation that the version of a programmable device is a hardware version.

[00:06:09] Speaker 02:
That's the claim language itself.

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Now if we look at the specification, nowhere does the specification

[00:06:17] Speaker 02:
disclose reprogramming devices based on the comparison of operating system versions.

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It is absolutely not in there, nowhere.

[00:06:26] Speaker 02:
The specification is replete with examples of reprogramming devices based on the comparison of apparatus versions, which is the specifications term for hardware versions.

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The board's construction is not only contradicted by the specification, but it

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commits the cardinal sin of reading out every limit, every embodiment in the specification corresponding to the claim.

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So the specification doesn't, does not support the board's construction.

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And indeed, the board's construction, when the board looked at the specification, the board used this language repeatedly.

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The specification does not preclude.

[00:07:05] Speaker 02:
The, the, this passage does not preclude.

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We know that that is an incorrect

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and that analysis from a legal standpoint in claim construction.

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It is not what the specification does not preclude or prohibit.

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The broadest reasonable construction inquiry is focused on what the specification affirmatively teaches.

[00:07:28] Speaker 02:
And we know that from the Inray Smith International case.

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And there are several other cases that have made that point very clearly.

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But isn't it a little different where the limitation you're talking about was added during the prosecution?

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It might be that the limitation that was added doesn't find any support in the specification, but it seems to me a little different than the situation where the original claim

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is to be construed in the light of the specification.

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It's more likely that the original claim would find support in the specification than an amended claim would find support, right?

[00:08:10] Speaker 02:
First, there is no dispute between the parties that that full limitation, it refers to a version of programmable device wherein it indicates an operating system.

[00:08:20] Speaker 02:
There's no dispute that it finds support in the specification.

[00:08:22] Speaker 02:
So that's not in dispute.

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The board's analysis was focused on what the specification does not preclude.

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And that is an improper framework.

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If it finds support in the specification, then why is the claim construction wrong?

[00:08:39] Speaker 02:
The claim construction is wrong because all of the embodiments in the specification

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each and every one, disclose reprogramming by comparing hardware versions.

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There's not a single example of this, of comparing operating system versions to reprogram.

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And let me make a last point.

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The board's analysis is really focused on a little bit of a thought experiment.

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The board says, because there's no support for its construction and specification, the preamble contradicts it, the board says,

[00:09:17] Speaker 02:
Well, you know, there may be occasions where knowing an operating system version might indicate the hardware version.

[00:09:24] Speaker 02:
That's the board's premise.

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But we know that's not the case, that that factual predicate is incorrect.

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So let's think about 1987.

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If I had a machine running MS-DOS 3.0, and so I know the operating system version, right?

[00:09:43] Speaker 02:
That doesn't tell me the hardware version.

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I don't know whether the hardware is a PC, a PC Junior, a Commodore 64, et cetera.

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So the board's premise, which essentially was the foundation for its construction, is demonstrably false.

[00:10:05] Speaker 02:
If the court has no further questions, or I'm happy to entertain further questions, otherwise I'll reserve any time for rebuttal.

[00:10:13] Speaker 00:
We will save it for you.

[00:10:16] Speaker 00:
Thank you.

[00:10:18] Speaker 00:
Mr. Ray, fresh off the bench.

[00:10:24] Speaker 01:
May it please the Court.

[00:10:28] Speaker 01:
This is a very, very limited appeal raising the Residucada problems.

[00:10:32] Speaker 01:
They have two major problems before we even get to the claim construction.

[00:10:36] Speaker 01:
Number one, we do have the 101 final judgment.

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And their argument on claim construction is an attempt to make the claims

[00:10:44] Speaker 01:
the same as the claim that was invalidated under 101.

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That's their goal.

[00:10:50] Speaker 00:
You mean so as not to enlarge it?

[00:10:52] Speaker 01:
As to not to enlarge it, exactly.

[00:10:54] Speaker 01:
They want it to be the same.

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They say it's just like original claim one under their claim construction.

[00:11:01] Speaker 01:
But 101 is final and done as a threshold issue, which coincidentally in Comiskey, which raised an earlier argument, that was a great case showing that 101 can be dealt with even when it wasn't the basis of the board's opinion.

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That was an ex-party case, but the same rule applies here.

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In addition, they can't, as you just heard, and did not appeal the 103 invalidity.

[00:11:25] Speaker 01:
So we know the original claims are invalid under 103.

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So you would think someone who's arguing for a new claim construction would at least address in their opening brief how that claim construction would in any way

[00:11:39] Speaker 01:
lead to any possible difference in outcome under 101 or 103.

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Particularly here, when the board made findings under 103, that the prior art shows either hardware or software.

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And they did not challenge that finding at all.

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So there's really no place for them to go other than to raise what they think is an error by the board on claim construction.

[00:12:04] Speaker 01:
And Judge Dyke are absolutely right.

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In this case, they agreed to a 25-word amendment offered by the examiner.

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And that amendment is on Appendix 1851.

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And that was years and years after the specification was written.

[00:12:20] Speaker 01:
So it seems their argument is that the amendment they agreed to isn't really consistent with a lot of the spec.

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That might be true.

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Much of the spec

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isn't really fully consistent with that amendment.

[00:12:37] Speaker 01:
But the board found enough in the specification and enough said by PMC to show that this wherein clause should be given primacy in the claim construction.

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And that's because when you file a motion to amend, you are required to show where the amended claim is supported by the spec.

[00:13:00] Speaker 01:
And in this case,

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they had to say that the specification did, in fact, support the entirety of the amended claim, Claim 53.

[00:13:10] Speaker 01:
And the board used that against them to say, look, you pointed to what you thought in the spec supported using the operating system comparison.

[00:13:21] Speaker 01:
Now, I want to show also, to just simplify this as easily as possible,

[00:13:27] Speaker 01:
On page 34 of the red brief, we color-coded the amended claim.

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And regardless of how the claim construction goes, what the board recognized, and which is undeniably true, and to which they have no response, is that the amendment in red interrupted the antecedent basis from the yellow.

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The yellow used to rely upon the green, which is the wearing clause.

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But now that they inserted language to interrupt the antecedent basis as shown on claim 34, the determining comparison step no longer includes the version referred to in the green.

[00:14:12] Speaker 01:
So this is a good example where adding words to a claim can in fact broaden it when you add a brand new component that interrupts the antecedent basis of a later wearing clause.

[00:14:24] Speaker 01:
That is shown pictorially on page 34.

[00:14:27] Speaker 01:
So regardless of claim construction, there's still no answer from PMC how this amendment in red did not, in fact, broaden the claim, severely change it.

[00:14:39] Speaker 01:
And they bear the burden of proof on that legal question, if there can be a burden of proof, on showing the appropriateness of the amendment.

[00:14:48] Speaker 01:
They bear that burden to show that the claim is supported, and that the claim did not add new matter, and that the claim was not broader.

[00:14:56] Speaker 01:
And Aqua Products explains that those are threshold issues before you even get to patentability.

[00:15:02] Speaker 01:
And they couldn't get out of the box because they had no explanation for why this claim was not broader, even regardless of claim construction.

[00:15:12] Speaker 01:
And the board recognized in their opinion on A74 that the amendment interrupted the antecedent basis.

[00:15:19] Speaker 01:
So the board recognized the problem this caused in separating

[00:15:24] Speaker 01:
What they agree are two different things, specific version and specific apparatus version.

[00:15:31] Speaker 01:
So they lose 101.

[00:15:33] Speaker 01:
They have 103.

[00:15:33] Speaker 01:
They never showed how these amendments affect 101.

[00:15:36] Speaker 01:
They don't show how these amendments affect 103.

[00:15:39] Speaker 01:
They don't show how they didn't broaden, regardless of claim construction.

[00:15:42] Speaker 01:
And they really have no answer to your question, Judge Dyke.

[00:15:45] Speaker 01:
Why did they agree then to the 25-word examiner amendment, which made it explicit that the

[00:15:53] Speaker 01:
storing information step required storing information about the operating system version.

[00:15:59] Speaker 01:
And if there are no questions, I think I've said my piece.

[00:16:04] Speaker 00:
Thank you, Mr. Ray.

[00:16:04] Speaker 01:
Thank you.

[00:16:05] Speaker 00:
Mr. Schreiner has some time left.

[00:16:16] Speaker 02:
You'll note that my friend Mr. Ray really

[00:16:19] Speaker 02:
runs away from the claim construction issue that the board established that is at the core of its decision not to enter the substitute claims.

[00:16:30] Speaker 02:
He didn't point out anywhere in the specification where it described reprogramming a device by comparing operating system versions.

[00:16:41] Speaker 02:
He didn't dispute that the specification discloses reprogramming by comparing hardware versions.

[00:16:52] Speaker 02:
As to the Section 101 issue, the claims are different.

[00:17:00] Speaker 02:
Substitute claim 53 adds significant language to it that is narrowing vis-a-vis the original claim 1, whether that claim is construed according to the board's erroneous construction or pursuant to the construction the PMC advocates.

[00:17:18] Speaker 02:
For example,

[00:17:20] Speaker 02:
The claim refers in the second step, there's language adding that the signal that causes this reprogramming is received from a transmission station or transmitter station.

[00:17:34] Speaker 02:
That is clearly narrowing.

[00:17:38] Speaker 02:
There's other language, you know, ansets and a specific apparatus version, and then going down to the comparison step, comparing the apparatus version to the

[00:17:49] Speaker 02:
apparatus version sentent control signal.

[00:17:54] Speaker 02:
So the claims are narrowing.

[00:17:57] Speaker 02:
And when my friend Mr. Ray tries to argue that the claims are really not narrowing, that they're broadening, they're only broadening if you apply the board's original claim construction.

[00:18:13] Speaker 02:
The board's claim construction is that these claims require

[00:18:18] Speaker 02:
a comparison of software versions.

[00:18:20] Speaker 02:
That's what the board says.

[00:18:23] Speaker 02:
Then if you look at the substitute claims, which indisputably require a comparison of hardware versions to reprogram, then the only way the substitute claims are broadening is because they don't recite comparing operating system versions pursuant to the board's erroneous claim construction.

[00:18:45] Speaker 02:
The argument made that the substitute claims are really broadening is simply a reference to the claim construction problem that underlies this whole exercise.

[00:18:59] Speaker 02:
As to Section 103 being an alternative basis, there's additional language in Claim 53.

[00:19:05] Speaker 02:
The board didn't address Section 103 with regard to the substitute claim.

[00:19:12] Speaker 02:
The board made its decision solely

[00:19:15] Speaker 02:
on the threshold showing that the patent owner must show the claims are not broadening.

[00:19:22] Speaker 02:
The board didn't get to Section 103.

[00:19:25] Speaker 02:
So with the additional language, such as receiving from a transmitter station, that's a factual determination.

[00:19:31] Speaker 02:
The board didn't address it.

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And with all due respect, this Court shouldn't substitute a factual finding that the board never made.

[00:19:47] Speaker 02:
As to the, I'd like to add one more point to the section 101 decision.

[00:19:55] Speaker 02:
There is a reference to res judicata, and I believe that's a reference to the 101 decision that was affirmed by this court.

[00:20:05] Speaker 02:
If you look at the reasoning of Judge Andrews in that case, he referred to the original claim

[00:20:17] Speaker 02:
one, checking to see if a new version of operating systems is required, and if so, then updating the operating system.

[00:20:28] Speaker 02:
So his framework, for 101 purposes, was based on a comparison of operating system versions.

[00:20:37] Speaker 02:
That is a different issue than presented here.

[00:20:40] Speaker 02:
If this court assigns a proper claim construction,

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to the term.

[00:20:46] Speaker 03:
How does comparing hardware systems make it any more eligible?

[00:20:51] Speaker 03:
It's still just a comparison and then updating it.

[00:20:55] Speaker 02:
Because it was not conventional routine or well understood at the time, not remotely.

[00:21:02] Speaker 02:
Remember, the best prior art.

[00:21:05] Speaker 03:
I don't think you're reading our recent case law right.

[00:21:10] Speaker 03:
Just because an abstract idea is not conventional or routine is not necessarily enough to make it patent eligible.

[00:21:16] Speaker 03:
It seems to me that what Alice in those cases say is once you identify the abstract idea, you're declaimed at enough more that's not conventional routine.

[00:21:26] Speaker 03:
But you can't just say the comparison step, which is an abstract idea,

[00:21:31] Speaker 03:
is not routine or conventional.

[00:21:32] Speaker 03:
And so what in addition to comparing the hardware is not routine.

[00:21:37] Speaker 03:
All the equipment here is routine and conventional, isn't it?

[00:21:41] Speaker 02:
I believe under the case law, the inquiry under step two is whether the operations called for by the claim are conventional or routine.

[00:21:52] Speaker 02:
The operations that are called for by the substitute claim do provide for comparing

[00:21:59] Speaker 02:
hardware versions.

[00:22:00] Speaker 03:
So you think if it's an abstract idea, you think that if it's a non-routine or conventional abstract idea, then that's patent-eligible.

[00:22:14] Speaker 03:
Isn't that inconsistent with Ariosa and a bunch of other cases from this court and the Supreme Court, where we recognize that the specific method

[00:22:24] Speaker 03:
is new, and Ariosa, I think it's a revolutionary method, but it's nonetheless abstract and nothing apart from that abstract idea was routine and conventional.

[00:22:36] Speaker 02:
Even under the, disregarding the recent cases, we know from Alice that the inquiry under step two is to look at the limitations individually and as an ordered combination to determine whether they add something more

[00:22:54] Speaker 02:
in order to transform the claim into a patent-eligible application.

[00:23:00] Speaker 02:
And the inquiry that's usually taken is whether those operations are routine and conventional.

[00:23:07] Speaker 02:
The question can't be whether the abstract idea itself is routine and conventional.

[00:23:11] Speaker 02:
Oh, no, no.

[00:23:12] Speaker 02:
I'm talking about, OK, let's, for the sake of this discussion, let's assume that the claim is directed to an abstract idea, substitute claim 53.

[00:23:24] Speaker 02:
we still have to go to step two and evaluate whether something more has been added to claim 53, added on top of the abstract idea so that it takes it into the realm of a patentable application of an abstract idea.

[00:23:41] Speaker 02:
Remember, the board never made any findings on section 101.

[00:23:45] Speaker 02:
It made no conclusions of law.

[00:23:47] Speaker 02:
It made no underlying factual findings.

[00:23:51] Speaker 03:
But I thought you said the something more was now comparing hardware systems versus just operating systems.

[00:24:00] Speaker 03:
But that's the case.

[00:24:01] Speaker 03:
That's still an abstract idea.

[00:24:03] Speaker 03:
That can't be the something more.

[00:24:08] Speaker 02:
Certainly, if you sweep all of the claim language into the abstract idea, then what's left in step two, there's nothing left in step two to evaluate.

[00:24:17] Speaker 03:
Well, often that's the case.

[00:24:19] Speaker 03:
If all the claim is is an abstract idea and do it on computer equipment, then that's exactly what it is.

[00:24:27] Speaker 03:
There isn't much left for step two to do because computer equipment is routine and conventional.

[00:24:33] Speaker 02:
Nobody at the board has made a fine.

[00:24:38] Speaker 02:
The board has not made a finding on what abstract idea lurks under this claim.

[00:24:45] Speaker 02:
Amazon has argued that the abstract idea... But that's a legal question.

[00:24:49] Speaker 02:
I totally agree, is updating operating instructions.

[00:24:52] Speaker 00:
Thank you, counsel.

[00:24:53] Speaker 00:
I think we have the case taken under the guise.