[00:00:07] Speaker 00: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:12] Speaker 00: God save the United States and this honorable court. [00:00:17] Speaker 04: We will hear argument first in 19-1828 in Ray Google Technology Holdings. [00:00:27] Speaker 04: Ms. [00:00:27] Speaker 04: Cagli. [00:00:30] Speaker 02: Good morning, Your Honors, and may it please the court. [00:00:33] Speaker 02: My name is Catherine Cagli. [00:00:34] Speaker 02: I'm here on behalf of Google Technology Holding. [00:00:37] Speaker 02: What is a quintessential claim construction dispute? [00:00:42] Speaker 02: Google defined a claim term in its specification. [00:00:45] Speaker 02: Ms. [00:00:47] Speaker 04: Kelly, this is just Toronto. [00:00:48] Speaker 04: Can I ask a preliminary question? [00:00:50] Speaker 04: Assume, just for purposes of this question, that we were to affirm here. [00:00:56] Speaker 04: Would Google be able to file a new claim or claims [00:01:03] Speaker 04: containing the language you argue for as a matter of claim construction here, either in this application or a continuation application? [00:01:15] Speaker 02: Your Honor, no current continuations are pending in this chain. [00:01:18] Speaker 02: This is the last application in this chain. [00:01:20] Speaker 02: Whether or not we could file a continuation upon affirmance and remand, that's something I would have to defer to prosecution counsel for, but I believe it's possible that a continuation could be filed after the fact. [00:01:31] Speaker 04: This application remains pending, is that right? [00:01:35] Speaker 02: This application, again, I would defer to prosecution counsel, but this application is pending. [00:01:40] Speaker 02: It's the last application in the chain. [00:01:42] Speaker 02: If this court were to affirm and remand, my understanding is that a continuation could be filed before the mandate. [00:01:49] Speaker 04: Okay, let me ask you then, turning to the merits, although not quite the merits of the claim construction itself. [00:01:57] Speaker 04: Is your understanding that the [00:02:00] Speaker 04: let's call it the passed upon principle of LeBron and Williams says only that the court may decide an issue that was passed upon even if not quite argued. [00:02:18] Speaker 04: It doesn't say that we are obliged to. [00:02:20] Speaker 04: And if that's your understanding, why is this a case in which we should? [00:02:27] Speaker 02: Your Honor, I would respectfully push back against that understanding, I think, that while Williams is phrased in the permissive sense in the Supreme Court certiorari, so pieces like this court's incognito make clear that when the decision below rests on a legal principle, when a legal issue is passed upon informs the foundation of the lower tribunal's decision, that decision must be reviewed on appeal because it's the foundation of the opinion and a pure legal issue. [00:02:56] Speaker 02: So I think the context, even though Williams phrases it in the permissive, this court has applied it and many circuit courts have applied it to require passing on legal issues that form the basis of the opinion below. [00:03:15] Speaker 02: So turning then to the merits of the claim construction argument, if I could, I think it's clear from Google specification of paragraph 67 [00:03:24] Speaker 02: that Google has clearly defined the term cost to refer to a bottleneck link. [00:03:30] Speaker 02: Ms. [00:03:30] Speaker 03: Kaili, this is Judge Chen. [00:03:35] Speaker 03: The term in the claim is content source cost. [00:03:39] Speaker 03: And I was wondering, is that term, that phrase used anywhere in the specification in the written description other than in the claims, content source cost? [00:03:52] Speaker 02: No, Your Honor. [00:03:53] Speaker 02: I don't believe it is. [00:03:54] Speaker 02: But I think it's unambiguous in the context of the claim that that content source cost refers to the cost, again, as the claim language continues, of retrieving the content from a second content source or a third content source. [00:04:06] Speaker 02: That problem is unambiguously addressed in the specification under the pure choice rubric of how to determine from where to source content. [00:04:15] Speaker 03: Are you talking about the bottleneck link discussion? [00:04:20] Speaker 03: Yes, Your Honor. [00:04:21] Speaker 03: Just curious, I believe you have some patents that have issued already off of this written description. [00:04:28] Speaker 03: Is that right? [00:04:29] Speaker 02: That's right, yes. [00:04:30] Speaker 03: Do you have any claims in those patents that use the term bottleneck link? [00:04:36] Speaker 02: We do not, Your Honor. [00:04:37] Speaker 02: No use of the term bottleneck in the claims. [00:04:41] Speaker 02: There are claims that refer to links, excuse me, cost based on traffic which is predicted to occur over a most utilized link. [00:04:50] Speaker 02: but I would suggest that most utilized is not synonymous with bottlenecks. [00:04:54] Speaker 03: And just curious, while we're at this housekeeping point, are there any claims that use the term fetch cost? [00:05:03] Speaker 02: Your Honor, that's an answer I don't know off the top of my head. [00:05:05] Speaker 02: My recollection is that they do not. [00:05:08] Speaker 02: But I would need to confirm that. [00:05:09] Speaker 03: And finally, I'm sorry, just out of curiosity, why is this case captioned in Ray Google instead of in Ray name of inventors? [00:05:19] Speaker 02: Sure, that's a new feature of the AIA that allows corporations actually to be patent applicants. [00:05:25] Speaker 02: And so in this instance, the applicant is Google Technology Holding. [00:05:29] Speaker 03: Ah, thank you. [00:05:30] Speaker 03: OK, please continue. [00:05:33] Speaker 02: Sure, Your Honor. [00:05:34] Speaker 02: So I'm turning again to paragraph 67, which refers to the definition of cost as that term is used in the claims here. [00:05:43] Speaker 02: Paragraph 67 explains that [00:05:47] Speaker 02: The cost of the path is defined by the bottleneck link in that path, which is the link that takes the longest to transfer item I. The bottleneck link in the path obviously refers to the path connecting the source of the content to the user. [00:06:02] Speaker 02: So it's unambiguous in paragraph 67, which is addressed under the heading of pure choice, that when choosing among different sources, you identify the source with what the specification calls in paragraph 68 [00:06:15] Speaker 02: the largest bottleneck link, I would suggest that what that's intended to mean is the least problematic bottleneck link. [00:06:23] Speaker 02: So the way that the specification directs one to choose how to source content is by identifying the source with the path to the user that has the least problematic bottleneck. [00:06:36] Speaker 02: Respectfully, Your Honor, that is in direct conflict with the construction that the Board offered under the guise of broadest reasonable interpretation. [00:06:44] Speaker 02: The board offered a construction that in Eshin said, cost encompasses everything taught by the prior art. [00:06:51] Speaker 02: Cost encompasses everything taught by costa, which was one reference assertive. [00:06:55] Speaker 02: Cost encompasses everything taught by shoal, the second reference that the examiner relied upon. [00:06:59] Speaker 02: And that means that cost includes everything up to and including monetary value, a concept completely divorced from the manner in which the term cost is used here. [00:07:09] Speaker 02: I think it's clear that when applying the definition of cost as used [00:07:13] Speaker 02: in paragraph 67, the board has not identified, and neither has the examiner, any reference that discloses that cost. [00:07:22] Speaker 02: Because the lexicographical definition of the term has to control, the board's construction is not only impermissible, but results in a legally erroneous obviousness conclusion. [00:07:33] Speaker 04: Can I just add to that, Ms. [00:07:36] Speaker 04: Scali? [00:07:38] Speaker 04: You used the phrase [00:07:42] Speaker 04: most problematic or least problematic, is that the same as that takes the longest to transfer? [00:07:52] Speaker 02: Yes, Your Honor. [00:07:53] Speaker 02: I think in the concept of the specification, for instance in paragraph 68 that describes the largest bottleneck length, I think largest is what is intended there is takes the least time is the largest bottleneck length. [00:08:07] Speaker 02: The smallest bottleneck length is the one that takes the longest to transfer the item. [00:08:11] Speaker 02: Hopefully that distinction makes sense. [00:08:13] Speaker 02: I refer to least problematic so as just to not create any ambiguity between whether a bottleneck that's low is large or small. [00:08:20] Speaker 04: Okay, but you weren't trying to embed some notions of, I don't know, unreliability because of channel noise in that. [00:08:31] Speaker 02: I was not, no, Your Honor. [00:08:33] Speaker 02: Okay. [00:08:33] Speaker 02: I'm referring simply to a determination of which link is the bottleneck and therefore which link takes the longest to transfer the item. [00:08:43] Speaker 03: Ms. [00:08:43] Speaker 03: Cagli, this is Judge Chen again. [00:08:45] Speaker 03: I noticed that in the claim, when it refers to content source cost, it also says based on network impact, quote unquote. [00:08:54] Speaker 03: And I was trying to think about what does that mean in relation to your preferred definition. [00:09:01] Speaker 03: Your preferred definition seems to be thinking about cost in the perspective of speed of delivery of the content. [00:09:10] Speaker 03: And based on network impact could be understood as, well, looking from the perspective of the network itself, not the speed of the delivery of the content, but the harm or burden on the network. [00:09:26] Speaker 03: And so I was wondering how does this term based on network impact help your cause in forcing us to think about content source cost is really from the perspective of [00:09:41] Speaker 03: the speed of the delivery of the content to the customer? [00:09:46] Speaker 02: Yes, sure. [00:09:47] Speaker 02: So I would suggest especially that Google's definition is not one that's limited to the speed of the transfer of the content because it may be that the fastest path is not the one with the smallest or the least problematic bottleneck link. [00:09:59] Speaker 02: For instance, it might make sense to travel a longer distance and longer in time as well distance if you avoid hitting a bottleneck [00:10:07] Speaker 02: that not only could delay your transfer, but might impede the transfer of other content as well. [00:10:13] Speaker 02: The same idea that if you pile more cars onto 66, not only are you slowing down your commute, but you're slowing down everyone else's. [00:10:19] Speaker 04: And of course, the network. [00:10:21] Speaker 04: I'm sorry, but how do you get that out of the middle sentence of paragraph 67, which seems to focus just on what's longest to transfer a particular item? [00:10:33] Speaker 03: Or a particular link. [00:10:37] Speaker 02: Oh, Your Honor, I see I'm in my rebuttal time. [00:10:39] Speaker 02: I'm happy to answer your question with the panel's permission. [00:10:41] Speaker 02: Yes, please. [00:10:43] Speaker 02: So the difference here is that there may be multiple links in a path. [00:10:47] Speaker 02: So while an individual link might be slowest in a path, it might be faster than the slowest link in a different path. [00:10:56] Speaker 02: And so you choose the path that has the least slow, slowest link, the fastest, slowest link. [00:11:04] Speaker 02: And by doing so, you're [00:11:05] Speaker 02: That's the direction to choose the one that has the largest bottleneck link. [00:11:11] Speaker 02: And by doing so that you're avoiding complicating, or you're avoiding exacerbating, excuse me, existing bottlenecks in the system that might already be congested with link traffic. [00:11:25] Speaker 04: Do you want to say a word about network penalty? [00:11:28] Speaker 04: And then we'll keep your rebuttal time. [00:11:32] Speaker 02: Thank you, Your Honor. [00:11:33] Speaker 02: Yes, if we turn to network penalty, I think the definition and the specification is crystal clear that it begins, definition, colon, network penalty. [00:11:42] Speaker 02: And it provides a formula that's based on much of Google's ability to compute... Ms. [00:11:48] Speaker 03: Kyle, I'm sorry. [00:11:50] Speaker 03: This is Judge Shan again. [00:11:51] Speaker 03: I know you're running out of time here. [00:11:54] Speaker 03: Could you just point me to a sentence in your board brief that gives me a clue and a signal [00:12:01] Speaker 03: that the board should have recognized it was looking at a preferred construction of the term network penalty as advanced by Google. [00:12:12] Speaker 03: What sentence would that be in your board brief? [00:12:16] Speaker 02: Your Honor, I can't point you to where we disclosed this construction. [00:12:18] Speaker 02: I can see that. [00:12:20] Speaker 02: But I think that this construction is certainly consistent with the manner in which we interpreted the claim below, which is to say that simply understanding [00:12:30] Speaker 02: cost and, sorry, simply understanding that the size of content matters, that the distance content needs to travel matters is not sufficient to reach the formula that's disclosed in paragraph 80. [00:12:42] Speaker 04: And this is Judge Tranter. [00:12:43] Speaker 04: Let me just ask you one question on the merits of this construction. [00:12:48] Speaker 04: If you're a, if we're doing a BRI interpretation, the question perhaps is, would a relevant skilled artisan [00:12:58] Speaker 04: understand that the language of the claim, which refers only to two of the three factors in the specification formula, is not actually being redefined by that specification formula. [00:13:18] Speaker 04: Because the choice is, do I read that formula as essentially an embodiment formula? [00:13:24] Speaker 04: or as a redefinition and because there's a disparity between the claim language, quite noticeable disparity of leaving out the fetch cost, one reasonable reading by a relevant skilled artisan would be to view the formula as not a redefinition but rather as describing an embodiment. [00:13:51] Speaker 02: Your Honor, I understand the claim language you're pointing to, and we would submit that this definition is clear on its face that it's not limited to a single embodiment. [00:14:00] Speaker 02: And that, in fact, while the claim language is entirely consistent with paragraph 80, although it does not mention the fetch cost, the definition of network penalty imports the use of fetch cost into the claim by virtue of the defined claim term. [00:14:17] Speaker 04: Okay, I think we should hear from the other side, and you'll have your full five minutes for rebuttal. [00:14:24] Speaker 04: Thank you. [00:14:25] Speaker 01: Thank you, Your Honor. [00:14:28] Speaker 05: Mr. Kasdan. [00:14:30] Speaker 05: May it please the Court? [00:14:32] Speaker 05: I want to pick up where Your Honor just left off in the call with my friend. [00:14:38] Speaker 05: And the question about network impact, I want to point out that it's not just [00:14:44] Speaker 05: Judge Chen asked about whether any of the claims mentioned fetch costs. [00:14:50] Speaker 05: And Claim 10, I think, is actually very illustrative here if you look on Appendix 18. [00:14:55] Speaker 05: And so, or over onto 19. [00:14:58] Speaker 05: And it says, the network penalty is based on size, number of requests, and fetch costs. [00:15:04] Speaker 05: So some of the claims actually expressly talk about network penalty in the context of fetch costs. [00:15:12] Speaker 05: Claim one does not. [00:15:13] Speaker 05: It only mentions two out of the three to judge Toronto's point. [00:15:17] Speaker 05: So I think that this sort of gets at the point, which is that the claims seem to be redefining it and different claims are using the term differently, which the contrast between the language of claim 10 and claim one, and there are other claims that also expressly talk about net worth penalty in terms of best trust, like claim 18. [00:15:36] Speaker 05: So I think that [00:15:37] Speaker 05: It does, there's at least a question about what this means. [00:15:40] Speaker 05: And so under BRI, I think the board rightly was, if the board had been asked to pursue it, it would have been right to say that there's a potential redefinition. [00:15:52] Speaker 05: But I think this whole case, and just sort of now back to the beginning, is this is a case where Google is arguing for lexicography. [00:15:59] Speaker 05: And this court has repeatedly talked about the fact that lexicography is an exception. [00:16:04] Speaker 05: So if you want [00:16:05] Speaker 05: to tell the board that if you think a word has a special meaning, that you've given it a meaning different than its normal meaning, you should have to tell the board that. [00:16:14] Speaker 05: That's what you're arguing. [00:16:15] Speaker 05: And if you don't, then you tacitly agree. [00:16:18] Speaker 05: And I think that, you know, the notion of the tacit agreement, I think that was actually something that Google said in describing NUVO, but I think that's an accurate description of where the court should be going for addressing issues that weren't raised by the parties but are decided by the lower tribunal and where it shouldn't. [00:16:35] Speaker 05: You know, in Clariot, the Sixth Circuit case, the court says that, you know, it's unfair. [00:16:41] Speaker 05: If you didn't even know something would be an issue, and then the district court or trial court decided against you, it's unfair if you don't get a chance to rebut that. [00:16:49] Speaker 05: So for example, if the fact has been reversed, if the board for the first time had said, we're going to apply lexicography, where nobody mentioned lexicography before, it'd be fair for the appellant to say, look, we didn't know that anybody thought that this term has a special meaning. [00:17:05] Speaker 05: But that's the opposite of our fact. [00:17:06] Speaker 05: Here, the board just did what the default rule is, and Google wants the exception. [00:17:12] Speaker 05: If it wants an exception, it has to say it. [00:17:14] Speaker 05: And if it doesn't, it's possibly accepting that the word will have the normal means. [00:17:23] Speaker 04: Mr. Kastin, this is Judge Toronto. [00:17:25] Speaker 04: Do you have an answer to the first question I asked Ms. [00:17:28] Speaker 04: Cagliari about weather? [00:17:30] Speaker 04: Yes. [00:17:31] Speaker 04: new claims containing expressed language with the now urged construction could still be filed? [00:17:40] Speaker 05: So I think they would run, so this is, the MPEP notes, and it's not, that there's conflicting case law a little bit on the scope of res judicata from one prosecution to another. [00:17:53] Speaker 05: I think the better read is that if they have the same claim, there would be res judicata, although I think there is a Judge Rich opinion where he says, [00:18:01] Speaker 05: If you change the record, you can have the same claims and have new arguments. [00:18:05] Speaker 05: But I think more we can do. [00:18:06] Speaker 04: No, no, no. [00:18:07] Speaker 04: I'm sorry. [00:18:07] Speaker 04: I don't think I've asked my question. [00:18:09] Speaker 04: Let's take the proposed claim construction, the bottleneck link construction. [00:18:17] Speaker 04: Let's imagine a claim with those words in it. [00:18:21] Speaker 04: And similarly for network penalty, words that copy the relevant paragraph with the formula. [00:18:29] Speaker 04: So now we have new claims. [00:18:31] Speaker 04: new language in claims, could Google file such claims either in this application or in a continuation? [00:18:39] Speaker 05: I apologize, Your Honor. [00:18:40] Speaker 05: You're right. [00:18:41] Speaker 05: I did misunderstand the question. [00:18:42] Speaker 05: Yes. [00:18:43] Speaker 05: Until the mandate issues, Google can file a continuation of this application and say, we're going to amend the claims and we're going to just put exactly the words. [00:18:52] Speaker 05: So a lot, as you know from the briefs, one of the questions is whether content source costs mean cost of the path, let's say. [00:18:58] Speaker 05: We disagree about that. [00:19:00] Speaker 05: If they put in cost of the past, they've got to pass that issue, right? [00:19:03] Speaker 05: And they can still file a continuation. [00:19:06] Speaker 05: Now, if they don't have a lot of continuation, and my friend said that they don't, then once the mandate issues, the MPP says that we cannot, the USPTO can no longer continue prosecution, but until then, they can file a continuation. [00:19:20] Speaker 05: So they could do that today, file the continuation, preserve the issue, and then file the claims [00:19:25] Speaker 05: where there's no claim construction issue because the claims expressly what they mean. [00:19:30] Speaker 04: I guess one reason I've asked the question is that the passed upon rule is a rule of quite general potential of a scope not particularly tied to this context, patent application context. [00:19:50] Speaker 04: And I wonder if whether it should be applied [00:19:54] Speaker 04: is might be affected by the availability of a curative option on the part of the litigant, one that also happens to serve the important patent policy of having content as much as possible on the face of the claims. [00:20:15] Speaker 05: Yeah, I think that that makes sense to me. [00:20:19] Speaker 05: And this is sort of why BRI exists, the policy of this court, as long as best, which [00:20:24] Speaker 05: Just make it clearer, everybody will know, and that will be easier for everyone involved. [00:20:29] Speaker 05: And I think that that's a good reason to say that this isn't an estoppel that's going to borrow you from doing anything that you want the way it would in a district court where you have to pay money damages. [00:20:38] Speaker 05: Just draft claims that don't have this issue, and then we can move on. [00:20:42] Speaker 05: And the whole claim construction issue can go away, and we can talk about the matter. [00:20:46] Speaker 05: I think that's right, Your Honor. [00:20:48] Speaker 03: Mr. Cosden, just to be clear, I thought I had [00:20:51] Speaker 03: heard you earlier say that if the facts were in reverse, then you would think it would be appropriate for us to consider the claim construction issue here. [00:21:01] Speaker 03: That is to say, if the board surprised everybody by engaging in some kind of lexicography analysis that had been unexpected, then therefore the appellant in that instance would say, no, I want the broadest reasonable interpretation and you're now [00:21:21] Speaker 03: surprising all of us by incorporating the specification into the claim? [00:21:28] Speaker 05: Yes. [00:21:29] Speaker 05: So, two points. [00:21:30] Speaker 05: One, I hadn't thought about Judge Toronto's point at the time. [00:21:33] Speaker 05: But the other one is that sometimes if you want the plain language of the claim, it may be hard to write your claims in the way, like the words you may want to use based on your specification may be the words you've chosen. [00:21:48] Speaker 05: And if there's no lexicography, then it seems unfair that you can [00:21:52] Speaker 05: you never have a chance to say there is no electrocardiogram. [00:21:57] Speaker 05: So in that sense, I think if the facts were reversed, I'd have more sympathy for an appellant to say that I've been surprised and I don't feel like I should have to use some clunky term, which then might run into written description problems because people will say, well, that's not in the spec or something. [00:22:15] Speaker 05: So they've chosen the best terms. [00:22:19] Speaker 01: Hi, this is Judge Stoll. [00:22:20] Speaker 01: I just had one quick question on your answer there, which is simply that do you think that in this hypothetical that you posed where the board has a new claim construction that it never announced before, would that be something that would require reopening prosecution? [00:22:36] Speaker 01: Would that then become kind of a new ground at that point that was provided by the board for the first time? [00:22:44] Speaker 05: Well, so this court has some case law. [00:22:45] Speaker 05: I mean, it's very hard to tell. [00:22:47] Speaker 05: It depends a little bit on how surprising it is. [00:22:49] Speaker 05: So this court has said sometimes there could be a due process problem, although this court has said that the ability to petition for a rehearing might be enough to get past that. [00:23:00] Speaker 05: But it will depend, I think, on how different the construction the board does is from the construction that you have. [00:23:05] Speaker 05: And so it may be fact specific about whether the new construction requires reopening. [00:23:11] Speaker 05: And then under Channery, I think this court also [00:23:14] Speaker 05: can say, look, clearly this construction is right or isn't right, and clearly there's no substantial evidence could only support one conclusion. [00:23:22] Speaker 05: So then, you know, I feel like it will depend on the specifics of the facts, and so maybe I opened up more of a can of worms than I intended to with the hypothetical, but I think it would depend on the specific case on how far, how surprising is the board's decision, how far afield is this. [00:23:40] Speaker 01: On the waiver issue, do you see any difference here given that this was an ex-party case and the examiner had presented a prima facie case of unpatentability? [00:23:55] Speaker 01: Do you think that it makes a difference in an ex-party case that somehow there'd be some incentive for a party to provide its claim construction positions in distinguishing the prior art as soon as possible, either before the examiner or the board? [00:24:10] Speaker 05: Yes, I think even in an inter-party partner, this is true, but it's really unfair to the examiner to suddenly, I mean, it's really unfair to the whole USPTO, right? [00:24:20] Speaker 05: The board also didn't have any briefing on this issue for Google to come in and say, this whole case should turn on a claim construction that nobody mentioned. [00:24:30] Speaker 05: And, you know, in this court, it said in ex parte cases, for example, secondary considerations, the burden of [00:24:37] Speaker 05: production, I think, has shifted to the party. [00:24:40] Speaker 05: So, like, we do account for the fact that the examiners have limited time, and we sort of expect the applicants to bring forth their arguments more clearly than in inter-party cases. [00:24:51] Speaker 05: I think that's correct. [00:24:55] Speaker 05: So, I'm happy to answer other questions. [00:24:59] Speaker 05: I do feel like this case really should be decided on waiver. [00:25:02] Speaker 05: I think that the multi-step [00:25:06] Speaker 05: The argument of content source cost equals cost of the path equals bottleneck link is difficult. [00:25:14] Speaker 05: Both steps are difficult because, as we point out in our brief, the end of the specification suggests that even cost of the path may have multiple definitions. [00:25:26] Speaker 05: And then the same thing goes for the network penalty, where you have a sort of [00:25:31] Speaker 05: We have a waved argument, and there are solid claims instruction questions about what you do about balancing the language of the claims, but claim two, which doesn't mention fetch costs, and 10 does, versus the definition that seems to. [00:25:47] Speaker 05: And so given that, this court really, Google needed to present that in the first instance to the board. [00:25:53] Speaker 05: I'm happy to answer any other questions, but if not, I will cede back my time. [00:25:58] Speaker 04: Hearing no other questions, thank you. [00:26:02] Speaker 04: And Ms. [00:26:02] Speaker 04: Kayoli, you have five minutes for your rebuttal. [00:26:07] Speaker 02: Thank you, Your Honor. [00:26:08] Speaker 02: I'd like to return to the waiver issue briefly to say that this court in Conoco explicitly held that where a district court had concluded a term that neither party had sought construction up below, this court [00:26:21] Speaker 02: must review that construction in Genova. [00:26:23] Speaker 02: I agree that that's different language than the set of the Spouse and Williams, but this language of Conoco is not permissive. [00:26:29] Speaker 02: Secondly, I don't think there's any support for my friend on the other side's suggestion that if this situation were reversed, if the board had come up with a lexicographical definition in the first instance, that the situation should turn out differently. [00:26:43] Speaker 02: Candidly, Google was surprised by this construction. [00:26:46] Speaker 03: There's no basis for that. [00:26:47] Speaker 03: Ms. [00:26:47] Speaker 03: Kiley, could you explain how [00:26:50] Speaker 03: Google could have been surprised by this conception of content source costs articulated by the board. [00:26:57] Speaker 03: I mean, I don't see anything here that suggests that what the board said was a harsh departure from what could have been or necessarily was understood by the examiner and Google's counsel during the prosecution. [00:27:16] Speaker 02: Yes, Your Honor. [00:27:17] Speaker 02: We have explicitly defined the claim term in the specification. [00:27:20] Speaker 02: And when the examiner rejected our claims on basis of prior art, for example, the Shoal reference, which relates to proximity-based determination, we repeatedly said, no, Shoal is proximity. [00:27:32] Speaker 02: Shoal is proximity. [00:27:33] Speaker 02: This is not content source cost. [00:27:35] Speaker 02: And I think in that back and forth with the examiner, our understanding was that we were applying the definition of content source cost that we had espoused in the specification. [00:27:43] Speaker 02: So to see a different definition of content source cost, one that's untethered from the language of the specification, that's untethered from the context of the claim that goes so far as to include monetary value, was a surprise because that no one in the conversations with the examiner or the discussion of the prior art had understood the scope of that term to be so broad. [00:28:02] Speaker 02: And I think it was telling that in the board's decision, not only did it offer construction of cost, but what it said right before it offered that explicit construction was, [00:28:10] Speaker 02: We construe cost to mean everything that Costa discloses and Shoal discloses. [00:28:17] Speaker 02: So it was a claim construction effort that really was intended to wipe away all of the discussion of the prior art and fold that into a decision that the term cost was broad enough to include whatever it was that Costa and Shoal disclosed. [00:28:31] Speaker 02: So that was a surprise to Google. [00:28:34] Speaker 02: I don't think there's any Federal Circuit precedent for the idea that if the situation were reversed, [00:28:40] Speaker 02: that the situation should turn out differently. [00:28:44] Speaker 02: Moreover, while we, respectfully, while we may be able to file a claim before the mandate issues, we are here on the fact that they're presented and we believe that the terms as we have used them in our claims currently sufficiently import the definitions from the specification. [00:29:02] Speaker 02: It's quite clear in context what cost is being discussed in the claims and that cost has a clear definition in the claim terms. [00:29:10] Speaker 02: I don't think there's any distinction between this case and the Conoco case, and I would respectfully urge the court to consider its claim construction, sorry, to review the lower tribunal's claim construction under the Conoco rule. [00:29:27] Speaker 02: With that, I would say only that Google respectfully requests vacator of the board's affirmance of the examiner's final rejection, which would send the, [00:29:39] Speaker 02: Sorry, send the application back for further prosecution. [00:29:44] Speaker 03: This is Judge Chen. [00:29:44] Speaker 03: I just have a quick observation. [00:29:47] Speaker 03: Ms. [00:29:47] Speaker 03: Kaili, I thought your briefs were expertly done here. [00:29:50] Speaker 03: And I only wish your client had given your prosecution counsel as much time to write the board briefs as you clearly put into these nicely done briefs. [00:30:04] Speaker 02: Thanks. [00:30:05] Speaker 02: Well, Judge Chen, I thank you. [00:30:07] Speaker 02: I appreciate the compliment. [00:30:12] Speaker 04: Thank you to both counsel and the case is submitted.