[00:00:01] Speaker 01:
The first case for argument this morning is 17-2218 Vivint versus Alarm.com.

[00:00:07] Speaker 01:
Mr. Stern.

[00:00:25] Speaker 04:
Good morning, Your Honors, and may it please the Court.

[00:00:28] Speaker 04:
The Board committed legal error

[00:00:30] Speaker 04:
in its over-broad, broadest reasonable interpretation by reading out three critical claimed features.

[00:00:37] Speaker 04:
These features are remotely accessing the computer server, remotely configuring the user-defined message profile, and user-defined message profile having outgoing message routing instructions in the plural.

[00:00:54] Speaker 04:
So let me take each of these readout claimed features in turn.

[00:00:58] Speaker 04:
Remotely accessing the computer server.

[00:01:02] Speaker 04:
The board's final written decision found that accessing the computer server is synonymous or co-extensive with remotely configuring the user-defined message profile.

[00:01:13] Speaker 04:
Now this has three legal errors.

[00:01:15] Speaker 04:
First, it equates accessing with configuring.

[00:01:20] Speaker 04:
Second, it conflates computer server with user-defined message profile.

[00:01:25] Speaker 04:
And third, it construes remotely

[00:01:28] Speaker 04:
as merely separate, not indirect or remote.

[00:01:32] Speaker 04:
Each mistake is reversible error.

[00:01:35] Speaker 04:
The board's final written decision made a fourth mistake by reading out the plurality of routes recited in the user-defined message profile having message routing instructions.

[00:01:46] Speaker 01:
Can I ask you, just going back to, I don't know which number on your list this was, this is on configuring

[00:01:54] Speaker 01:
your view is that it's two steps?

[00:01:57] Speaker 04:
It has to be, Your Honor.

[00:01:58] Speaker 04:
The way the claim is written, the way the invention is described in the specification, it has to be two steps.

[00:02:04] Speaker 01:
Okay, well, the first argument, I think, and there's so many issues in this case.

[00:02:09] Speaker 01:
Correct me if I'm confusing this with another one, but I think that there's an initial argument about whether you waive that.

[00:02:15] Speaker 01:
We did not waive that, Your Honor.

[00:02:17] Speaker 04:
We did not waive that issue.

[00:02:19] Speaker 01:
Well, did you raise the construction?

[00:02:21] Speaker 01:
I mean, now you're asking for a plain construction, right?

[00:02:24] Speaker 01:
Was that claim construction issue brought to the board?

[00:02:27] Speaker 04:
Yes, we did, Your Honor.

[00:02:28] Speaker 04:
We argued that the access and the configuration were different.

[00:02:34] Speaker 04:
And by definition, I'm just reading the claims in their literal language.

[00:02:40] Speaker 01:
OK.

[00:02:41] Speaker 01:
I think the other side, or maybe the board, what they say is the arguments you made that you point to here as being the non-waved arguments were in connection with discussing, was it Shetty?

[00:02:54] Speaker 01:
piece of prior art, and it wasn't made as a real claim construction argument.

[00:02:59] Speaker 04:
Well, Your Honor, the point is that the board in analyzing the claims and construing the claims looked at it through the lens of Shetty and made specific findings that these two terms are coextensive.

[00:03:14] Speaker 04:
And we have argued throughout these proceedings that they're not.

[00:03:17] Speaker 04:
And it makes no logical sense that they be coextensive.

[00:03:22] Speaker 00:
This is important, because as I read it, the board did not make a claim construction analysis of access.

[00:03:29] Speaker 00:
It simply said, does Shetty disclose that?

[00:03:32] Speaker 00:
Right?

[00:03:33] Speaker 04:
The board?

[00:03:34] Speaker 00:
So our review is for substantial evidence.

[00:03:37] Speaker 04:
Yeah.

[00:03:38] Speaker 04:
Well, no.

[00:03:38] Speaker 04:
But the point is that they essentially, by conflating these two terms, is meaning the same thing.

[00:03:45] Speaker 04:
And by the way, you have to read the access in light of the whole claim, and access

[00:03:51] Speaker 04:
is to the computer server and configuration goes to the user-defined message profile.

[00:03:56] Speaker 01:
Well, wait, wait, wait.

[00:03:57] Speaker 01:
The claims recite accessing to remotely configure, right?

[00:04:04] Speaker 04:
No, the actual claim language, Your Honor, is if we look at claim 22, it says, let me find that for us.

[00:04:26] Speaker 04:
If we look at Claim 22, it says that the... Are we at the 601?

[00:04:38] Speaker 04:
Yeah, I'm looking at the 601, Pat, Your Honor.

[00:04:42] Speaker 04:
Sorry about this.

[00:04:43] Speaker 04:
Okay.

[00:04:44] Speaker 04:
So if we look at Claim 22, it says a computer server in remote, let's see, the language

[00:05:11] Speaker 01:
Right?

[00:05:12] Speaker 01:
I mean, it says a user being capable of remotely accessing said computer server via said user intersave to remotely configure.

[00:05:20] Speaker 01:
That's the language I was referring to.

[00:05:23] Speaker 04:
Well, the language, the language.

[00:05:25] Speaker 01:
It's talking about accessing in order to remotely configure.

[00:05:29] Speaker 01:
Right?

[00:05:29] Speaker 04:
Well, Your Honor, if we would look at claim one, it says enabling a user to remotely configure or modify a user-defined message profile

[00:05:40] Speaker 04:
containing outgoing message routing instructions.

[00:05:44] Speaker 01:
Yeah, I know.

[00:05:44] Speaker 01:
But we're talking about the two words, the two terms, accessing and configuring.

[00:05:49] Speaker 01:
And we're trying to figure out whether there's a two-step or a one-step.

[00:05:53] Speaker 01:
So the claim that you first looked to and I've been looking to is claim 22, which uses those terms, both of those terms.

[00:06:05] Speaker 04:
Says, a user being capable of remotely accessing said computer server

[00:06:11] Speaker 04:
this is claim 22, via said user interface to remotely configure a user-defined message profile.

[00:06:22] Speaker 01:
So the... The point being, just so you can respond to my thing, is I think what the board concluded was the only reason a user accesses a database is to configure the data in that.

[00:06:34] Speaker 04:
Yeah, I agree.

[00:06:34] Speaker 04:
That's what the board said, but it's wrong.

[00:06:37] Speaker 04:
It's wrong in the way that the specification

[00:06:40] Speaker 04:
shows the invention.

[00:06:42] Speaker 04:
And it's wrong from a general proposition of how computer systems work.

[00:06:48] Speaker 04:
The invention, as described, says that the, and this was in the prosecution history, that you have to have a, you know, a PIT in order to access the computer system.

[00:07:00] Speaker 04:
And then in order to remotely configure the user-defined message profile, which is contained in this larger computer system,

[00:07:09] Speaker 04:
then you can do this remotely.

[00:07:12] Speaker 04:
But in order to qualify and to authenticate the user, you have to be able to have an access step that's separate and distinct from what you want to remotely configure.

[00:07:24] Speaker 04:
Think about this theoretically.

[00:07:25] Speaker 04:
This system was a major breakthrough, Your Honors, in 1999 when this case was filed because it allowed a user of a security system anywhere in the world to receive notifications

[00:07:39] Speaker 04:
to specify who would get notifications based on what events that would occur, and also to be able to remotely configure or reconfigure or modify these user profiles.

[00:07:52] Speaker 04:
And the important point here is that they didn't have to go to a central system like the one that's described in Shetty, where you have predefined user profile and a predefined event profile.

[00:08:06] Speaker 04:
And so accessing could, just to give you an example, accessing could be you get into the system and you look at the data and say, I just got a notification, this particular air conditioning unit is not working.

[00:08:18] Speaker 04:
But that doesn't mean you're remotely configuring anything.

[00:08:21] Speaker 00:
The board relies on extrinsic evidence to conclude that access encompasses reading and writing.

[00:08:29] Speaker 00:
the ability to both have to read and to write.

[00:08:33] Speaker 00:
And so why wouldn't that mean that once you access, you then can configure?

[00:08:39] Speaker 04:
Well, I mean, well, first of all, we dispute the reading of Shetty as to the accessing of the three databases.

[00:08:52] Speaker 04:
The language that you find in Shetty that is in dispute, the two back-to-back sentences,

[00:08:59] Speaker 04:
talk about accessing the user profile and the event profile.

[00:09:06] Speaker 04:
But then it goes on and says that you can input data to the machine database.

[00:09:12] Speaker 04:
Now the point here is that you have predefined user profile and event profiles in Shetty.

[00:09:19] Speaker 04:
There's no question about that.

[00:09:20] Speaker 04:
It's used, predefined is throughout Shetty.

[00:09:25] Speaker 04:
And therefore that entails that you can read what data is in those two databases, but it doesn't mean you can write anything into those databases.

[00:09:35] Speaker 04:
And it makes no logical sense in Shetty that you'd be able to write data in there because the whole point of the Shetty system is to monitor what's going on with the equipment at that construction site.

[00:09:45] Speaker 00:
So this isn't, though, a claim construction dispute.

[00:09:49] Speaker 00:
This really turns on how one reads Shetty, whether or not you view Shetty as providing access plus modification, right?

[00:09:59] Speaker 04:
No, I beg to differ, Your Honor.

[00:10:00] Speaker 04:
This is all about claim construction.

[00:10:03] Speaker 04:
This is a situation where the board improperly read Shetty onto these claims.

[00:10:08] Speaker 04:
And in the process, impermissibly as a matter of law, removed claim terms, critical claim terms,

[00:10:15] Speaker 04:
that were the whole basis of why these claims were allowed over the prior art.

[00:10:21] Speaker 04:
If you look at the prosecution history of this case, you see that these limitations that I'm talking about were added to get over the prior art.

[00:10:29] Speaker 04:
Shetty's the old stuff that's discussed in prosecution.

[00:10:33] Speaker 01:
OK, so just before your time runs out, let me turn to, I think this was on your list, which is the

[00:10:41] Speaker 01:
instruction versus devices, the multiple instructions issue?

[00:10:45] Speaker 04:
Yes, Your Honor.

[00:10:45] Speaker 01:
And that's another, I mean, what seems to permeate some of the arguments here is that there's an initial confusion as to what was really posited by the parties or whether it was claim construction.

[00:10:57] Speaker 01:
So here the confusion I have through the briefing is whether or not your argument is for multiple constructions or for multiple devices.

[00:11:05] Speaker 01:
And it seems to me that you are arguing for multiple devices.

[00:11:09] Speaker 01:
The reality is that that's the position you want, right?

[00:11:13] Speaker 01:
Do you understand my question?

[00:11:14] Speaker 04:
Yes, I do, Your Honor.

[00:11:15] Speaker 04:
I think, again, what these claims require and demand is that you have the capability of having two or more routing instructions from a user-defined message profile.

[00:11:31] Speaker 04:
That's what's in the claims.

[00:11:32] Speaker 04:
that you have the capability to allow you to specify which user or users get which notification messages on which of their devices.

[00:11:43] Speaker 04:
Two or more devices or two or more users or two or more routing routes.

[00:11:51] Speaker 04:
It's this robust configuration that you have in this claimed invention.

[00:11:57] Speaker 01:
Can I ask you, maybe I'm wrong, sorry, but you said twice, two or more.

[00:12:02] Speaker 01:
Isn't the claim language at least one or no?

[00:12:07] Speaker 04:
No, but what we're talking about is we're talking about message routing instructions.

[00:12:12] Speaker 04:
And so the message routing instructions in the user defined message profile is a capability requirement.

[00:12:21] Speaker 04:
It's a capability requirement.

[00:12:23] Speaker 04:
And that's why it says at least one device.

[00:12:25] Speaker 04:
But you have to be capable.

[00:12:28] Speaker 04:
of specifying at least two routing instructions.

[00:12:31] Speaker 00:
So where in your patent owner response did you make that argument?

[00:12:36] Speaker 04:
I believe, Your Honor, we made it throughout in terms of the instructions being plural.

[00:12:45] Speaker 01:
Again, you have to, you know, my point is going back to... But do you appreciate that, at least to my understanding, there's confusion at least, if not... What you're talking about is multiple devices, not instruction versus instruction, right?

[00:13:00] Speaker 01:
Is that not what you're getting at?

[00:13:02] Speaker 01:
It's not whether there's one... whether instructions are plural or singular.

[00:13:06] Speaker 01:
So that's my... I have the same concern that Judge O'Malley has with respect to why you preserve that.

[00:13:11] Speaker 04:
Well, Your Honor, the claims are in plural.

[00:13:14] Speaker 04:
The instructions in the claims are plural, so they have to be plural.

[00:13:18] Speaker 04:
We're held to that.

[00:13:19] Speaker 04:
And it's that capability that I've been arguing about the instructions and that they can send it.

[00:13:24] Speaker 01:
But isn't there a difference between whether instructions are singular and plural, which I understand was the claim construction before the board, and whether you're positioned now that instructions have to be to multiple devices?

[00:13:38] Speaker 04:
To me, those are two separate things, right?

[00:13:40] Speaker 04:
I think we're confusing the fact that when you're talking about an instruction, a single instruction, you can be sending it to one or more devices.

[00:13:49] Speaker 04:
But the point of the claim is that you have to have the capability of multiple routing instructions, plural, so that depending on what each one of those instructions can do,

[00:14:01] Speaker 04:
that you have to have that capability in order to have the robustness.

[00:14:04] Speaker 01:
So why, if you have capability for instructions, does that necessarily mean that we're talking about, you have to have the capability for multiple devices?

[00:14:13] Speaker 01:
Isn't that, aren't there two different things?

[00:14:15] Speaker 04:
No, because we say that the instructions route information to who you want to route it to, for what event, and to which device.

[00:14:25] Speaker 04:
And these routing instructions define this, they are remotely defined by the user,

[00:14:30] Speaker 04:
so that the user can configure this system so that the designated devices get the designated notifications for the designated events.

[00:14:41] Speaker 04:
And this is what makes this invention so important is because from anywhere in the world you can reconfigure or configure your system so that you can change things without having to go to a central site like you have in Shetty.

[00:14:56] Speaker 04:
I realize my time is up.

[00:14:58] Speaker 04:
is over, but have I answered the question?

[00:15:31] Speaker 03:
Morning, Your Honors, and may it please the Court.

[00:15:33] Speaker 03:
With respect to configuration, Your Honors, there was no debate below that configuration refers to writing data into the database, into the message profile.

[00:15:47] Speaker 03:
There was no claim construction issue on that.

[00:15:50] Speaker 03:
It was, as Your Honors noted, an issue of applying Shetty.

[00:15:54] Speaker 03:
And indeed, the Board

[00:15:58] Speaker 03:
relied on four dictionaries to determine that the word access means read and write.

[00:16:05] Speaker 03:
That's the natural meaning of accessing a database.

[00:16:08] Speaker 03:
It would be a strange computer system indeed to be one that allows no writing of data, only reading of data.

[00:16:15] Speaker 00:
Is there anything other in Shetty other than use of the word access to which the board then turns to dictionary definitions that you think point to

[00:16:26] Speaker 00:
users being able to modify the information in the user profile?

[00:16:31] Speaker 03:
Well, yes, Your Honor.

[00:16:32] Speaker 03:
As the board noted, the system was configurable in Shetty.

[00:16:37] Speaker 03:
It was customizable.

[00:16:39] Speaker 03:
It noted in Shetty that the system had to be adaptable to the needs of different users.

[00:16:44] Speaker 03:
And it does refer to writing machine information about the mobile machines, which was, as the board noted, was not limited

[00:16:55] Speaker 03:
to writing that data into the machine database, which generally could be written into the system.

[00:17:03] Speaker 03:
And as the board noted, information about the machines would be necessary to associate machines with user profiles.

[00:17:10] Speaker 00:
Is there a difference between event data, which is expressing mentions in Shetty and user profile database data?

[00:17:19] Speaker 03:
Yes, there is, Your Honor.

[00:17:19] Speaker 03:
And figure one shows there are two

[00:17:22] Speaker 03:
separate databases, one for, there's a user profile database and there's an event database, and figure one shows a user interface with lines connected to both those databases.

[00:17:33] Speaker 03:
And I think the board noted that information could be accessed reading, read and write in the event database, and figure one would illustrate that the same kind of access was provided, same illustrations provided.

[00:17:44] Speaker 01:
And before the board, your friend was relying on figure four, not figure one, right?

[00:17:49] Speaker 03:
I think figure one and figure four as well, Your Honor.

[00:17:53] Speaker 03:
And figure four relates more to the remote access part.

[00:17:59] Speaker 03:
And figure four clearly shows that there's a database workstation 406 and a so-called third workstation, 410.

[00:18:11] Speaker 03:
And both of those, as described in Shetty, particularly at column four, lines 11 to 14, both of those would have the data manager 100 on them.

[00:18:22] Speaker 03:
And figure four and the description that goes along with it shows remote workstations 420 and 422 having remote access to the third workstation 410.

[00:18:35] Speaker 03:
So they would have access, meaning read-write capability, to the data manager, which includes the user profile database, which as Shetty describes is stored on that third workstation 410.

[00:18:47] Speaker 03:
So that, Your Honor, we submit fully discloses

[00:18:51] Speaker 03:
read-write access, namely configuration, for the user profiles.

[00:18:56] Speaker 00:
What's your response to the argument on the other side that what the board really did, even if it didn't report to do claim construction, is to collapse the terms access and configure into one?

[00:19:10] Speaker 03:
Well, as noted, Your Honors, the claim language, chicken and claim 22, for example, refers to access to the computer system to configure.

[00:19:19] Speaker 03:
Access, again, meaning read-write just per ordinary usage.

[00:19:23] Speaker 03:
And configure would be, as I read these claims, essentially a subset of access.

[00:19:30] Speaker 03:
You have to read and write in order to configure, access the database with read and write access, to read and write into the message profile to configure.

[00:19:38] Speaker 03:
So it's essentially coextensive, or as the board found, or configure is a particular application of accessing the database.

[00:19:49] Speaker 03:
So there's really not any light space between access and configure the way these claims use those terms.

[00:19:57] Speaker 03:
If I may, Your Honors, move to the other construction issue raised by Vivint having to do with instructions, plural.

[00:20:11] Speaker 03:
There, Your Honors,

[00:20:14] Speaker 03:
No doubt Vivint asked for a construction in that case and asked for that the construction include the word instructions plural.

[00:20:24] Speaker 03:
And indeed the PTAB gave that construction.

[00:20:29] Speaker 03:
The PTAB's construction includes the words data record including instructions.

[00:20:34] Speaker 03:
So there's no claim construction dispute left.

[00:20:38] Speaker 03:
And Vivint disclaimed in their reply brief

[00:20:43] Speaker 03:
on this appeal that they were arguing for multiple devices.

[00:20:46] Speaker 03:
They said, no, no, no.

[00:20:47] Speaker 03:
We're not arguing multiple devices.

[00:20:49] Speaker 03:
We're arguing multiple instructions.

[00:20:52] Speaker 03:
And coming to what really is the rub on the instructions argument, Vivint made no argument in the inter partes proceeding to the effect that Shetty did not disclose instructions.

[00:21:11] Speaker 03:
The only argument they made about Shetty and instructions was in their preliminary response, which per the standard scheduling order issued by the PTAB, and this is at appendix page 499, arguments not made in the patent owner's actual response, their response on the merits, are waived.

[00:21:33] Speaker 03:
They only made this argument about instructions and Shetty

[00:21:37] Speaker 03:
in their preliminary response.

[00:21:39] Speaker 00:
Did the PTAF find the issue was waived, or did it address it?

[00:21:43] Speaker 03:
It didn't address it, because it wasn't raised in the merits phase of the PTAF proceeding.

[00:21:49] Speaker 03:
Vivint argues vociferously in their reply, no, no, no, we didn't waive it.

[00:21:55] Speaker 03:
They cite a number of pages of their papers.

[00:21:57] Speaker 03:
All of those citations are to their preliminary response.

[00:22:00] Speaker 03:
And as this court held in new evasive, something raised in the preliminary response

[00:22:04] Speaker 03:
but not raised, and the merits response is waived.

[00:22:08] Speaker 03:
So the Shetty issue with regard to instructions is simply waived.

[00:22:12] Speaker 03:
Even if it were not waived, Your Honors, as we argued below, Shetty's user profile database undoubtedly discloses multiple user profiles and multiple instructions.

[00:22:26] Speaker 03:
But the board didn't even go to the user profile database.

[00:22:30] Speaker 03:
They focused on a single user profile and found that disclosed instructions

[00:22:35] Speaker 03:
And even if Vivint's arguing there have to be multiple devices to be multiple instructions, as the board noted, Shetty said a single user profile can direct messages by a mode or modes of communication.

[00:22:50] Speaker 03:
So there can be multiple devices that receive messages under Shetty.

[00:22:53] Speaker 03:
And indeed, claim 13 of Shetty says send messages to at least two of different communication devices.

[00:23:05] Speaker 03:
such as fax and pager and so forth.

[00:23:07] Speaker 03:
So, Shetty actually expressly exposes sending messages to at least two devices from one single user profile.

[00:23:15] Speaker 00:
So the... Is it possible that access could mean one thing under Shetty and a different thing under the patent and therefore there's the question of whether or not by interpreting Shetty without reference to the language of the patents that the board went astray?

[00:23:33] Speaker 03:
I don't think so, Your Honor, respectfully, in that the Board didn't actually just construe Shetty divorced from the disclosure of the patent.

[00:23:42] Speaker 03:
The Board went through the 601 patent and other patents at issue carefully and pointed out that patent uses the term access and configure.

[00:23:52] Speaker 03:
Access and configure uses them together.

[00:23:55] Speaker 03:
Access to configure

[00:23:56] Speaker 03:
It uses access with configure almost every time.

[00:23:59] Speaker 03:
It refers to one or the other in the specification of the 6.01 patent.

[00:24:03] Speaker 03:
And in context, it's clearly saying, as the board noted, you have to get access to the database to read and write data and in order to configure it.

[00:24:13] Speaker 03:
And it's really co-extensive as used in the patents in suit.

[00:24:17] Speaker 01:
Do you want to move to the cross appeal before we run out of time?

[00:24:20] Speaker 03:
Yes, Your Honor, thank you very much.

[00:24:23] Speaker 03:
Yes, turning to the cross appeal, Your Honor,

[00:24:25] Speaker 03:
I wanted to refer principally, if I may, to the communication device identification code issue there and refer to the 123 pattern, if I can find that in one of my papers.

[00:24:51] Speaker 03:
Your Honor, the fundamental issue on

[00:24:56] Speaker 03:
the communication device identification code is one of claim construction and how the board construed that term.

[00:25:03] Speaker 03:
The ordinary meaning of communication device identification code we would submit and expert testimony was in accord with this is simply an identifier

[00:25:13] Speaker 03:
for a communication device.

[00:25:15] Speaker 01:
So the board said it consists of two codes, right?

[00:25:18] Speaker 01:
And you identified those two codes, and you're saying that was too narrow, and it should have also included emails and telephone numbers and so forth?

[00:25:25] Speaker 03:
Yes, precisely.

[00:25:26] Speaker 03:
Well, the board, to be a little bit more precise, the board gave two examples of ID codes.

[00:25:31] Speaker 03:
What the board essentially said is it has to be the CDIC, or communication device identification code, has to be some sort of unique identifier.

[00:25:39] Speaker 01:
Well, it has to be the hardware itself.

[00:25:43] Speaker 03:
maybe perhaps a hardware identifier or serial number, those were examples that the board gave of what kind, and they really were adopting Vivint's argument on this, where Vivint argued that the communication device identification code, by plain meaning, by ordinary meaning, by its very nature, has to be something unique in all the world, something that would uniquely identify, like a serial number does, any device from every other device in the world.

[00:26:08] Speaker 03:
That is not what the claim says.

[00:26:10] Speaker 03:
The word unique doesn't appear in the claim.

[00:26:13] Speaker 03:
And in fact, all that appears in the claim is identification code of a communication device, something that identifies.

[00:26:20] Speaker 03:
We submitted below, and I would submit here, a telephone number, for example, identifies a phone device.

[00:26:29] Speaker 03:
My cell phone number identifies my cell phone.

[00:26:32] Speaker 03:
That's clearly what it does.

[00:26:34] Speaker 00:
I don't think there's... Don't the patents explicitly refer to cell phones having serial numbers?

[00:26:41] Speaker 03:
It refers to these MSNs and MINs as serial number type identifiers used in cellular communication.

[00:26:53] Speaker 03:
But this was another place where the board went astray, Your Honor.

[00:26:57] Speaker 03:
So they, the board, let me back up for a moment.

[00:27:02] Speaker 03:
The specification of these patents talks about ESN and MIN.

[00:27:06] Speaker 03:
only in connection with a very specific type of communication.

[00:27:11] Speaker 03:
They give the branded examples of some ARIS system and a cellimetry system, which are two systems described in other patents, prior art patents, which are referenced in columns five and nine in this 123 patent, for example.

[00:27:32] Speaker 03:
And those are used to communicate from

[00:27:34] Speaker 03:
The remote monitored equipment that each piece of remote monitored equipment has an interface unit on it, which has to communicate to the computer server.

[00:27:44] Speaker 01:
So what can you tell us is in the specification that helps your argument?

[00:27:49] Speaker 03:
Well, it's a specification that helps our argument in your argument as to following.

[00:27:53] Speaker 03:
First of all, in the claim language, it says you need an identifier for a communication device.

[00:27:58] Speaker 03:
And it provides a little more context than that.

[00:28:01] Speaker 03:
It also says that user profiles are configured

[00:28:05] Speaker 03:
message profiles are configured by the user and communication device identifier codes are also configured in the message profile by the user.

[00:28:15] Speaker 03:
In the specification at columns three and four and then in more detail at column 11, lines 48 to 60, it talks about configuration of the message profile and says the contractor configures the message profile by specifying who gets what messages and by

[00:28:34] Speaker 03:
what means specifically by putting in phone numbers to identify phones or pagers or text messages and putting in what they call internet addresses, which means email addresses, to identify email.

[00:28:45] Speaker 03:
That's what gets configured.

[00:28:46] Speaker 00:
But doesn't the identification code have to be something that could describe both an interface unit and a communication device?

[00:28:53] Speaker 00:
I'm not sure how a telephone number can do that.

[00:28:57] Speaker 03:
Well, there's nothing at all in the claims, Your Honor, that says the communication device ID code identifies an interface unit.

[00:29:02] Speaker 03:
Quite the contrary.

[00:29:03] Speaker 03:
It's associated with a user-defined communication device.

[00:29:06] Speaker 03:
It's not connected to interface units at all in the claims or in specification.

[00:29:13] Speaker 03:
And one other thing I would mention, Your Honors, as to the board's interpretation, they relied very heavily on figures 12 and 13

[00:29:26] Speaker 03:
in the 1, 2, 3 patent.

[00:29:28] Speaker 03:
And 12 and 13 are described in columns 13 and 14 in the specification.

[00:29:36] Speaker 03:
And the board mistakenly thought that table 721, shown in figure 12, somehow related to a communication device ID code.

[00:29:47] Speaker 03:
And that really is just completely wrong.

[00:29:49] Speaker 03:
It's a bit laborious to do so.

[00:29:51] Speaker 03:
But if one reads from the bottom of column 13,

[00:29:54] Speaker 03:
through the bottom of column 14, what it describes is table 720 at the top of figure 12 is a database table that lists all possible outgoing messages.

[00:30:06] Speaker 03:
And the system will go through this table when it has to send outgoing messages and identify the method of communication.

[00:30:13] Speaker 03:
And the way it does that is by identifying the message delivery ID, which is the first entry in table 720, that keys to

[00:30:23] Speaker 03:
the tables listed in Figure 13, which are tables about communication devices, user-defined communication devices like fax delivery or pager delivery or phone delivery.

[00:30:33] Speaker 03:
That's how the communication method is accomplished is through Figure 13 and the phone numbers and so forth identify the communication devices there.

[00:30:43] Speaker 03:
At the bottom of Figure 14

[00:30:45] Speaker 03:
is the one and only reference to Table 721, which is the key table for the board.

[00:30:51] Speaker 03:
Only one reference in the entire patent to Table 721.

[00:30:55] Speaker 03:
And what it says there is when the system is putting together an outgoing message, it gets information, for instance, from the fax delivery table to send a message to a fax communication device.

[00:31:11] Speaker 03:
And then it gets also, it says along with

[00:31:14] Speaker 03:
the equipment location, make, model, and serial number found in device location table 721.

[00:31:19] Speaker 03:
So what it's getting is the equipment.

[00:31:22] Speaker 03:
What this patent uses the word equipment to refer to always is the remote monitored equipment.

[00:31:29] Speaker 01:
Can I interrupt you because your time is running out and I just have a quick question before you conclude.

[00:31:34] Speaker 01:
And that's with regard to your motivation to combine theory and to leave that because it was a little disturbing to me because as I understand, so you can tell me why I'm wrong,

[00:31:43] Speaker 01:
This argument deals entirely with claim 19.

[00:31:46] Speaker 01:
And everything that I could discern that you pointed to in terms of what you had done on the record with regard to a motivation to combine had to do with entirely different claims, talking about different claim limitations.

[00:31:58] Speaker 01:
So am I right or wrong about that?

[00:32:02] Speaker 01:
It seems like the arguments that you're pointing to in terms of motivation go to claims 7 and 28, those limitations that are different than claim 19.

[00:32:12] Speaker 01:
So that's what I read, I understood your brief, as pointing to for the motivation that you disputed the board with.

[00:32:19] Speaker 01:
Board file, no motivation to combine.

[00:32:21] Speaker 01:
And you're saying, no, we made these arguments.

[00:32:23] Speaker 01:
And I couldn't find that the arguments that you made for these two claims applied to claim 19 or that you made them in connection with claim 19.

[00:32:33] Speaker 03:
Your monitor may check the papers and come back on my rebel time to respond to that.

[00:32:37] Speaker 03:
I'm afraid I don't have that at the tip of my tongue.

[00:32:39] Speaker 02:
Can I then move you to your other class appeal area, whether Britain discloses the normal status message?

[00:32:46] Speaker 02:
It seems to me, or at least this is the way I view it, that Britain just discloses that the link between the system and the home computer, whatever you want to call it, is working.

[00:32:57] Speaker 02:
Not that the

[00:32:58] Speaker 02:
the, you know, let's just say AC unit that is actually working.

[00:33:04] Speaker 02:
And Shetty only sends error messages when there's error messages.

[00:33:08] Speaker 02:
So how do the two of them disclose an actual periodic status okay message?

[00:33:15] Speaker 03:
So Your Honor, the two of them, we argued that the two of them combined would operate as follows.

[00:33:22] Speaker 03:
Britain discloses periodic messages that are heartbeat messages, just like what's described in the 601 and so forth patents.

[00:33:29] Speaker 02:
Well, it does, but it doesn't describe... Isn't the key difference is Britain is whether the telephone link is working, not whether the underlying system is working, and that seems to me to be key here.

[00:33:44] Speaker 03:
Well, it is to a degree.

[00:33:45] Speaker 03:
In the 601 patent, for instance,

[00:33:50] Speaker 03:
The normal status message is simply a message that comes through periodically.

[00:33:55] Speaker 03:
And it's interpreted on the server side as if it's received, everything must be okay.

[00:34:04] Speaker 03:
Lack of receipt of that message would indicate an exception condition.

[00:34:08] Speaker 03:
And the same thing would happen in Britain.

[00:34:09] Speaker 03:
Lack of receipt of a heartbeat message indicates there's some problem.

[00:34:12] Speaker 03:
And the combination of Shetty in Britain, we argued, would operate in that same one.

[00:34:17] Speaker 02:
But isn't the problem that you could get that message in Britain

[00:34:20] Speaker 02:
saying the telephone connection is OK, but still have an underlying problem with the system.

[00:34:27] Speaker 03:
That certainly is the issue that the board identified, Your Honor.

[00:34:30] Speaker 03:
There are several nuances here.

[00:34:32] Speaker 03:
One is that there are eight claims for which, and we mentioned them in our briefing, for which that's not an issue at all.

[00:34:41] Speaker 03:
There is no reference to equipment in these eight claims, and the board held those not unpatentable also.

[00:34:48] Speaker 03:
Also for a number of the claims the interface unit is part of the equipment that's monitored and the interface unit is the same thing as the communicator in Britain and the communicator by being able to send a message is Indicating that it's functioning properly if it weren't functioning properly wouldn't be able to send the message I see my time is almost up Thank you

[00:35:29] Speaker 04:
Your honors, in terms of waiver, I direct your attention to our Patenona response at... Which waiver?

[00:35:39] Speaker 01:
Which term are we talking about?

[00:35:40] Speaker 04:
We're talking about the waiver of the message profile issues.

[00:35:45] Speaker 04:
And if you look at our Patenona response at page 34, or actually 32 through 34, which is an appendix 0556 through 0558, clearly we did not waiver

[00:35:59] Speaker 04:
We did not commit waiver, nor did we, and we also, and we agree with counsel that we raised this issue in the POPR at appendix 398 through 400.

[00:36:11] Speaker 04:
But I have very limited time, and I wanted to try to explain again why the board, what the board has done here is completely impermissible as a matter of law.

[00:36:23] Speaker 04:
They have, in effect, used Shetty,

[00:36:26] Speaker 04:
to construe the claims and do their claim construction.

[00:36:30] Speaker 04:
And by that, they can hide now behind substantial evidence.

[00:36:33] Speaker 04:
Now, what is wrong with this is claim construction is a legal issue.

[00:36:37] Speaker 04:
And by taking... Except when it relies on extrinsic evidence.

[00:36:41] Speaker 02:
I'm not sure why I see this matters at all, whether this is claim construction or looking at study, because they went to a dictionary definition of access.

[00:36:50] Speaker 02:
And if they had done that in the context of the claim construction, that would have been

[00:36:54] Speaker 02:
extrinsic evidence that we would have still applied a substantial review standard to, wouldn't it?

[00:36:59] Speaker 04:
Okay, your honor, for purposes of analysis, let's just say that let's look at this word access versus configure.

[00:37:07] Speaker 04:
Whether it's substantial evidence or de novo review, they're not the same terms.

[00:37:13] Speaker 04:
They're used separately in the claims.

[00:37:16] Speaker 04:
They're used separately in the spec.

[00:37:19] Speaker 04:
Shetty clearly states over and over again,

[00:37:22] Speaker 04:
that the user database 106 and the event database 108 in Shetty are predefined.

[00:37:32] Speaker 04:
Your honors, I direct your attention, if we could, to the Shetty, to the Shetty patent.

[00:37:42] Speaker 04:
And if we look at column one, line 60.

[00:37:45] Speaker 02:
So it's essentially what you're saying is,

[00:37:47] Speaker 02:
even though the board found common dictionary definitions of access that includes configure, which would normally be substantial evidence, your patent has come up with a new way to describe access and configure, and that you've somehow coined those terms in ways that are different from these dictionary definitions.

[00:38:08] Speaker 04:
No, I'm not saying that, Your Honor.

[00:38:10] Speaker 04:
The dictionary definitions go to access, not configure.

[00:38:14] Speaker 02:
Well, the dictionary definitions, I think, go to the notion that

[00:38:17] Speaker 02:
access includes configure.

[00:38:20] Speaker 04:
Right, well that's, but that's, but you have to read our access and configure in light of our specification under the BRI, otherwise it's too, it's unreasonable.

[00:38:31] Speaker 04:
And what I'm saying is, if you look at Shetty, it says that these two databases, 106 and 108 are predefined, pre-configured.

[00:38:40] Speaker 04:
If you look at column one, line 63 and 65, and also column two, lines 58 and 59,

[00:38:47] Speaker 04:
It says that databases 106 and 108 are pre-configured.

[00:38:52] Speaker 04:
So therefore, access, as used in Shetty, means read only.

[00:38:57] Speaker 04:
They're pre-configured.

[00:38:58] Speaker 04:
You're reading the data.

[00:39:00] Speaker 04:
And in our claims, when you configure, you change the profile, the message user profile.

[00:39:07] Speaker 04:
When you access the computer system, you access it so that you can see what's going on in the computer system.

[00:39:14] Speaker 04:
It doesn't mean that you are

[00:39:17] Speaker 04:
accessing it to reconfigure the system.

[00:39:20] Speaker 04:
You are accessing it to see the operation of what's going on in the system.

[00:39:25] Speaker 04:
Moreover, the board conveniently reads out the limitation of remote from the claims.

[00:39:31] Speaker 04:
By going to figure one, it points to the dotted line box around the event manager 100 and says that because the... You don't have very much time left.

[00:39:42] Speaker 02:
I know you want to get through this, but I think I'd like to hear

[00:39:45] Speaker 02:
about the communications ID code issue.

[00:39:49] Speaker 02:
OK, sure.

[00:39:50] Speaker 02:
Because it doesn't seem to me like there's very much in the specifications to support the board's definition.

[00:39:58] Speaker 04:
Well, Your Honor, I think we need to look at the exact language of the claim.

[00:40:03] Speaker 04:
And the identification code means that you have to uniquely identify the device that you're sending the message to as the way the claim is written.

[00:40:15] Speaker 04:
And therefore, if you just send it to a cell phone number or to a fax number or to an email number, then you don't know who's going to get the message and which device is going to receive the message.

[00:40:25] Speaker 04:
You could send an email to your email address and it could come out on five or six different devices.

[00:40:31] Speaker 04:
The purpose of this claim is to identify which device or devices are going to receive the message.

[00:40:39] Speaker 02:
Where in the specification does it explain any of that?

[00:40:42] Speaker 02:
Because this seems to me to be kind of contrary to the whole point of this is,

[00:40:45] Speaker 02:
which is you can have this system flexible and notify people in a bunch of different locations and that they can input this data themselves.

[00:40:53] Speaker 02:
I mean, the likelihood of somebody digging in to figure out what the specific identification number for their cell phone or the identification number for their computer as opposed to a number or an email address seems very unlikely.

[00:41:10] Speaker 02:
Well, Your Honor, I believe that... I mean, if I want to configure the system to give me error messages

[00:41:15] Speaker 02:
on my home phone, my work phone, my email address, and stuff like that.

[00:41:20] Speaker 02:
I don't want to have to go in and dig out the ID numbers associated with the machine.

[00:41:26] Speaker 02:
I want to put in the cell phone number and the email address.

[00:41:30] Speaker 04:
Yeah, and that would not be an infringement of the code.

[00:41:36] Speaker 04:
I mean, the point is, the advance here is that you designate the particular communication device you're sending it to.

[00:41:43] Speaker 04:
That's the point.

[00:41:43] Speaker 02:
But there's nothing in the specifications to describe, in particular, what a communications ID code is.

[00:42:01] Speaker 04:
Well, the board interpreted the term.

[00:42:04] Speaker 04:
It looked at Vivint's de Clarence, Mr. Denning's testimony on the issue, which is found at exhibit

[00:42:12] Speaker 04:
210 in paragraphs 128 and 132 that they cite to for this finding.

[00:42:21] Speaker 00:
But doesn't the specification itself refer to telephone numbers as examples of unique delivery addresses?

[00:42:27] Speaker 04:
Well, it indicates that you can deliver the messages to those using those mechanisms.

[00:42:34] Speaker 04:
But this claim is more specific, more confined than that.

[00:42:41] Speaker 02:
So a system, so I mean, does any commercial embodiment actually ask for specific ID numbers associated with the phone rather than more general phone numbers or email numbers?

[00:42:57] Speaker 02:
Yes.

[00:42:57] Speaker 02:
I mean, what you're saying is that if all the system does is ask for emails or phone numbers or the like, that this can't entrench.

[00:43:05] Speaker 04:
Well, that's the way the claim is written, yes, because you have to have

[00:43:09] Speaker 04:
the ability to uniquely identify where you're sending the message to.

[00:43:14] Speaker 02:
And a phone number or an email or something like that doesn't uniquely identify under your interpretation.

[00:43:20] Speaker 02:
So you can't assert this against a system that just uses phone numbers or email addresses or something like that.

[00:43:28] Speaker 04:
Well, that's the... I mean, the claim requires a... Is that a yes or no?

[00:43:31] Speaker 04:
I mean, I... Yes.

[00:43:35] Speaker 04:
Okay.

[00:43:36] Speaker 01:
So I... One final point, because we didn't see it at our time.

[00:43:39] Speaker 04:
One final point is, Your Honor, on the issue, the requirement of remote, which goes to the central heart of this invention.

[00:43:47] Speaker 04:
The board cobbles together this argument that because figure one shows the user interface 110 outside this dotted box, it's separate.

[00:43:57] Speaker 04:
And therefore, because it's separate, it's, it's, it's remote.

[00:44:02] Speaker 04:
And there's nothing to support that conclusion.

[00:44:05] Speaker 04:
The whole Shetty document points to a centralized system, and it's pre-configured, and therefore this remote configuration and remote access cannot be achieved.

[00:44:19] Speaker 04:
Thank you, Your Honors.

[00:44:35] Speaker 01:
Well, the rebuttal is obviously limited to whatever your friend said about your cross-appeal.

[00:44:40] Speaker 01:
So that was very confined.

[00:44:43] Speaker 01:
So if you have a comment on that, go ahead.

[00:44:45] Speaker 01:
If not, we'll close it out.

[00:44:49] Speaker 03:
I was going to provide a response to the question your Honor had provided.

[00:44:52] Speaker 03:
And that had to do with motivation to combine Shetty and Lavac.

[00:45:00] Speaker 03:
would refer your honor to appendix page 305 where we discussed that actual page 304 and 305 where we talked about in the petition about motivation to combine.

[00:45:13] Speaker 03:
And that's claim 19.

[00:45:15] Speaker 03:
As to claim 19, and also I guess over to page 310 in the appendix where we specifically charted claim 19 and that's all connected to the motivation to combine on 304 and 305.

[00:45:30] Speaker 03:
With respect to the Council's arguments just now, I think the one thing I would note is there's absolutely nothing in Shetty that says that it's pre-configured and frozen for all time.

[00:45:44] Speaker 03:
It simply doesn't say that.

[00:45:47] Speaker 01:
Thank you.

[00:45:47] Speaker 03:
Thank you, Your Honor.

[00:45:48] Speaker 01:
We thank both sides and the cases submitted.