[00:00:00] Speaker 01:
The next case is Clantech et al.

[00:00:03] Speaker 01:
versus Costa Realty et al.

[00:00:06] Speaker 01:
2024, 1360, and 1361.

[00:00:12] Speaker 01:
Mr. Oliver.

[00:00:13] Speaker 00:
May it please the court.

[00:00:15] Speaker 00:
I ask to reserve five minutes for rebuttal.

[00:00:20] Speaker 00:
I'd like to address, subject to the court's questions, two distinct primary arguments to reverse the PTAB in this case.

[00:00:28] Speaker 00:
One argument relates to a single patent, the 421 patent.

[00:00:33] Speaker 00:
And it asks for this court to make a de novo review of an unstated claim construction that was applied by the PTAB.

[00:00:41] Speaker 00:
The second argument applies to both patents.

[00:00:43] Speaker 00:
And it involves a series of compounded errors by the PTAB.

[00:00:50] Speaker 00:
The first argument is that the prior art does not disclose or suggest the claimed font package

[00:00:58] Speaker 00:
the font file, and the formatting information that's used by the operating system as they are claimed in the 421 patent claims.

[00:01:07] Speaker 01:
You say prior art.

[00:01:09] Speaker 01:
You're talking about Collins and Goatier?

[00:01:11] Speaker 00:
The Collins reference specifically, Your Honor.

[00:01:16] Speaker 00:
The 421 patent claims require use of the same font file, formatting information,

[00:01:23] Speaker 00:
and font package throughout the claims.

[00:01:26] Speaker 00:
They do this by antecedent basis, referring back to the file or the formatting information.

[00:01:33] Speaker 00:
The Collins Prior Art specifically avoids this.

[00:01:37] Speaker 00:
Collins does this by converting information.

[00:01:40] Speaker 00:
Collins says you cannot send an original font file and use it.

[00:01:45] Speaker 00:
We have to convert it into our proprietary format, send it to the computer.

[00:01:50] Speaker 00:
At the point it's at the computer,

[00:01:53] Speaker 00:
Collins either converts it back using his own proprietary software or requires installation of his own proprietary software.

[00:02:02] Speaker 02:
Under Collins, wasn't that conversion pretty superficial?

[00:02:06] Speaker 00:
It's not, your honor.

[00:02:08] Speaker 00:
It involves rewriting the definitions of the font files.

[00:02:15] Speaker 00:
It turns them around so the curves are reversed.

[00:02:17] Speaker 00:
It uses a different type of curve that loses clarity.

[00:02:22] Speaker 00:
And it also converts it in a way that the operating system cannot recognize it.

[00:02:29] Speaker 00:
And in the 421 patent, the claims specifically talk about a module of the operating system doing the rendering, and that the font file includes the formatting information necessary for that to happen.

[00:02:48] Speaker 03:
on factual grounds here focus on obviousness combinations, right?

[00:02:55] Speaker 00:
Yes, yes.

[00:02:56] Speaker 00:
The PTAB instituted based on a combination of three prior items in the final decision that says either this two-art combination or the three-art combination render the claims obvious.

[00:03:13] Speaker 00:
This argument about Collins relates to every

[00:03:17] Speaker 00:
combination that the PTAP considered.

[00:03:22] Speaker 00:
The court's case law, including the cases we cited, Baldwin, Intamin, Infernal, Creative, those all confirm that a claim and a term must have the same meaning throughout the claim.

[00:03:36] Speaker 00:
And some of those cases specifically relate to files being the same throughout the claim when the claim uses antecedent basis to refer back to files.

[00:03:46] Speaker 00:
What the PTAP did here is it erred by giving the claim term different meanings at different points in the claim.

[00:03:54] Speaker 03:
Can you point us to the specific JA pages where you're saying the PTAP erred in the decision?

[00:04:00] Speaker 00:
I'm not sure whether I can point to the specific pages, but they did not specifically

[00:04:14] Speaker 00:
Construe the claim they did not say we're we're construing it in a certain way but what they did was they Said in the first appearance of the file or the formatting information The unconverted information is there It's you know it meets this in later instances the converted information is the same file and

[00:04:40] Speaker 00:
But it's not the same file in those later instances.

[00:04:45] Speaker 00:
It has been converted.

[00:04:46] Speaker 00:
I'm looking for, Your Honor, the appendix pages.

[00:05:01] Speaker 00:
I'm referring to pages 79 and 80 of the brief.

[00:05:07] Speaker 00:
The board confirmed that the formatting information must be converted before the operating system can use it.

[00:05:16] Speaker 00:
And that cites appendix page 42.

[00:05:20] Speaker 00:
The board then quoted COSTARS expert who confirmed that the function converts the data into a form which the operating system can use.

[00:05:36] Speaker 00:
That's appendix page 43.

[00:05:39] Speaker 00:
So those, Your Honor, are the appendix pages that we're referring to where the board says converted information will meet the limitation.

[00:05:52] Speaker 00:
Again, the PTAP did not specifically say it was construing the claim, but it had to have implicitly construed the claim.

[00:06:01] Speaker 00:
so that the files and the formatting information had different meanings throughout the claim, if it's allowing unconverted information and converted information to meet the same limitation.

[00:06:13] Speaker 02:
Could you address your APA claim?

[00:06:16] Speaker 00:
Yes, Your Honor.

[00:06:17] Speaker 00:
Thank you.

[00:06:19] Speaker 00:
And I'm glad that we had a case on notice.

[00:06:23] Speaker 00:
We're already primed for the notice requirement here.

[00:06:29] Speaker 00:
The PTAB instituted on a combination of three references.

[00:06:34] Speaker 00:
And it said Collins, Gaudier, and Schaeffer are all required as part of this combination.

[00:06:43] Speaker 00:
We're instituting on these grounds that all have at least those three references.

[00:06:49] Speaker 00:
When we got to the final written decision, the judgment, the PTAB said it can either be a two

[00:06:57] Speaker 00:
two reference combination or a three reference combination.

[00:07:01] Speaker 00:
Why is that significant?

[00:07:02] Speaker 00:
Well, the patent owner spent most of its briefing and argument on showing that the invention, the conception, and the diligence and the reduction of practice predated the Schaeffer reference.

[00:07:20] Speaker 00:
By knocking out the Schaeffer reference, the patent owner said, you know,

[00:07:27] Speaker 00:
The combination is no longer valid because you're missing at least this claim element, the system font table.

[00:07:33] Speaker 03:
Do you agree that the board also found the claims obvious based on Collins and Gattier with Schaeffer?

[00:07:39] Speaker 00:
They did, Your Honor.

[00:07:41] Speaker 00:
So the APA says you must timely inform somebody of the grounds.

[00:07:48] Speaker 00:
And the patent statute requires a specific identification of the grounds with particularity.

[00:07:56] Speaker 00:
in both the petition and the institution decision.

[00:07:59] Speaker 03:
And do you agree that the petition had both the combination of Collins and Gattier, that two-reference combination, and then also a three-reference combination of Collins, Gattier, and Schaeffer?

[00:08:14] Speaker 00:
It did not.

[00:08:15] Speaker 00:
The petition specifically raised only grounds that included Schaeffer.

[00:08:21] Speaker 00:
It said, these are the grounds.

[00:08:22] Speaker 00:
Schaeffer must be included.

[00:08:26] Speaker 03:
Can you take me to some JA pages on that?

[00:08:58] Speaker 00:
OK.

[00:09:03] Speaker 00:
So looking at first on the institution decision, appendix page 356 is a table listing the grounds, appendix page 375.

[00:09:27] Speaker 00:
Also lists the combined references.

[00:09:31] Speaker 03:
I asked you also about the petition itself and what it said in terms of the combinations.

[00:09:42] Speaker 00:
Yes, I know we cited those.

[00:09:44] Speaker 00:
I'm going to apologize.

[00:09:47] Speaker 00:
I'm searching for that, Your Honor.

[00:09:51] Speaker 00:
Appendix page 178.

[00:09:54] Speaker 01:
The petition specifically listed a table of grounds it listed Schaeffer and all of the grounds Where the council if you insist you only had notice of a rejection based on three references You didn't overcome

[00:10:12] Speaker 01:
because you didn't really connect all the dots.

[00:10:16] Speaker 01:
You just provided a whole lot of documentation without pinpointing how it relates to overcoming Schaeffer.

[00:10:27] Speaker 00:
I'm glad that you raised that.

[00:10:29] Speaker 00:
That's where I was going next.

[00:10:31] Speaker 01:
Well, you're into your rebuttal, Tom, but you're entitled to use it.

[00:10:35] Speaker 01:
OK.

[00:10:35] Speaker 01:
Effectively.

[00:10:36] Speaker 00:
I want to answer your question, Your Honor, so I'll use part of my rebuttal time for that.

[00:10:43] Speaker 00:
The patent owner's response included a 30 page claim chart.

[00:10:51] Speaker 00:
It lined up the elements next to each element of the claim.

[00:10:55] Speaker 00:
It said, this element is included and shown here.

[00:10:59] Speaker 00:
There were hundreds of citations to specific pages of the exhibits and the evidence, including quotations of specific sentences in the evidence that were included in that chart.

[00:11:15] Speaker 00:
The patent office relied, the PTAB relied upon the Paris case and said, this is like Paris where the evidence wasn't properly cited.

[00:11:26] Speaker 00:
In Paris, Paris had six citations to evidence in the brief.

[00:11:31] Speaker 00:
Paris violated a rule against incorporation by reference.

[00:11:34] Speaker 00:
They tried to incorporate 100 pages of claim charts by reference and 1,300 pages of exhibits by reference.

[00:11:42] Speaker 00:
The patent owner here specifically avoided that by providing hundreds of citations to evidence, a claim chart lining up every element, and directing the PTAB not just to exhibits, but to specific pages and often to specific sentences within those pages.

[00:12:02] Speaker 00:
That's where it differs, Your Honor.

[00:12:04] Speaker 00:
I'll reserve the remainder of my time for rebuttal.

[00:12:06] Speaker 01:
We'll send it for you, Ms.

[00:12:08] Speaker 01:
Ostman.

[00:12:18] Speaker 04:
May it please the court.

[00:12:20] Speaker 04:
Inji Alsthman on behalf of Appley's CoStar and Duolingo.

[00:12:24] Speaker 04:
This appeal is about straightforward petitions, fair process, and substantial evidence for view.

[00:12:29] Speaker 04:
I'd like to start where my friend on the other side started and talk about their argument with regard to the font package.

[00:12:34] Speaker 01:
Could you speak up a little more, please?

[00:12:35] Speaker 04:
Apologies.

[00:12:36] Speaker 04:
So I was saying, I would like to start where my friend on the other side just started with regard to the font package and formatting information discussion.

[00:12:44] Speaker 04:
So Clantech in its brief spends little time on this argument.

[00:12:48] Speaker 04:
But the argument is really that Clantech and Collins, excuse me, Collins doesn't teach the font package and formatting information because the font package is converted into a language that the operating system can understand when it's installed in the operating system in Collins.

[00:13:04] Speaker 04:
The problem is that argument doesn't require that the font package is the same.

[00:13:09] Speaker 04:
The board properly found that the PFR file, which is the font package in Collins,

[00:13:14] Speaker 04:
doesn't change when it is sent by the server, when it is loaded into the temporary fonts directory.

[00:13:21] Speaker 04:
and then when it's installed in the operating system.

[00:13:24] Speaker 04:
It's the same file.

[00:13:25] Speaker 04:
What Clantec's argument relies on is an assertion that the file, that you have to have bit-for-bit identity, that nothing in the file can change.

[00:13:34] Speaker 04:
And whether you call that a claim construction argument or not, Clantec has sort of changed its mind on that, but regardless of whether it's a claim construction argument, there is just nothing in the claims and nothing in the specification that requires that kind of bit-for-bit identity.

[00:13:49] Speaker 04:
To the contrary, the specification explains that sometimes when you go get the font package from the server, it might be compressed, in which case you have to decompress the font package, which changes the bits in the file.

[00:14:02] Speaker 04:
That doesn't mean it's a new file, it's still the same file.

[00:14:05] Speaker 04:
Likewise, when you get the font package from the server, it may be encrypted, in which case you have to decipher it.

[00:14:12] Speaker 04:
The bits are different,

[00:14:13] Speaker 04:
But the thought package is the same.

[00:14:16] Speaker 03:
Can you give us your JA support for some of the various statements you've just been making in terms of responding to that argument?

[00:14:21] Speaker 04:
Of course, Your Honor.

[00:14:22] Speaker 04:
So at appendix 136, this is at column 13, lines 28 through 30.

[00:14:30] Speaker 04:
This is the 421 patent.

[00:14:32] Speaker 04:
But the 421 and the 093 patent share the same specification.

[00:14:36] Speaker 04:
So the same language is there.

[00:14:39] Speaker 04:
So the assertion that if you change a single bit in the file, it becomes a new file is just not supported by the record.

[00:14:47] Speaker 04:
Instead, this is like if you put a pie in the oven.

[00:14:50] Speaker 04:
When you take it out of the oven, the molecules have changed, but it's still the same pie.

[00:14:54] Speaker 04:
Likewise, when you install the font package into the operating system, you've converted it into a language that the operating system can understand, but it's still the same file.

[00:15:05] Speaker 04:
Now, the only evidence before the board on this issue

[00:15:09] Speaker 04:
was from Dr. Zadok, co-star and Duolingo's expert, who explained exactly what happened.

[00:15:15] Speaker 04:
He explained in his declaration that the font package is converted, but the formatting information is not different, that it's the same file.

[00:15:24] Speaker 04:
And the board cited to Dr. Zadok's testimony and credited his testimony, which also relied on the disclosure in Collins that says that when you make this conversion, the fonts have the exact same shape

[00:15:37] Speaker 04:
relative size, and spacing on virtually any computer, meaning the formatting information is the same.

[00:15:45] Speaker 04:
Now, in its briefing a few minutes ago, Clantex Council stood up and said, well, the conversion is not superficial.

[00:15:54] Speaker 04:
That's a new argument that wasn't presented before the board, and it's frankly not supported by the record.

[00:15:59] Speaker 04:
The record shows, and the expert opined, that it is the same formatting information, and the conversion is just so the operating system can understand the file.

[00:16:09] Speaker 04:
With that, I'll turn to the APA argument, unless there are questions.

[00:16:14] Speaker 04:
So very briefly, Appendix Central narrative here is that the board impermissibly relied on a new Collins and Gautier ground that admitted Schaeffer.

[00:16:23] Speaker 02:
Did the board make an alternative finding?

[00:16:24] Speaker 02:
Is that what happened here?

[00:16:26] Speaker 04:
Yes, Your Honor.

[00:16:27] Speaker 04:
That's exactly what happened.

[00:16:28] Speaker 04:
So this petition argued in the alternative based on Schaeffer.

[00:16:32] Speaker 04:
So the grounds were Collins and Gautier with Schaeffer in the alternative.

[00:16:36] Speaker 04:
And if we look at the petition, we can see that that's apparent.

[00:16:39] Speaker 04:
So if you'll turn to Appendix 212 through 213,

[00:16:53] Speaker 04:
These pages are specifically in the 421 patent petition, but the 093 patent petition includes almost identical language.

[00:17:01] Speaker 04:
But here, this is with regard to the system font table limitation, which is the only one that I understand is disputed on appeal.

[00:17:08] Speaker 04:
So here, the petition explains that Collins installs the fonts into the operating system's font manager, 658A.

[00:17:17] Speaker 04:
In other words, the font manager is updated to reflect an availability of the external font file, as claimed.

[00:17:24] Speaker 04:
And then the petition goes on to say, well Collins does not explicitly mention a system font table.

[00:17:30] Speaker 04:
However, figure 22, which is shown on appendix 213, illustrates new entries, 656A, that are listed as, excuse me, install PFR font one,

[00:17:43] Speaker 04:
through installed PFR font N and labeled 656.

[00:17:48] Speaker 04:
And you see on appendix 213, there is a red, it may not be red in your version, but there's a rectangular box surrounding that installed PFR font one through N. So that is the system font table clearly identified in the petition.

[00:18:05] Speaker 04:
After arguing and explaining why Collins and Gaultier, together, disclose or render obvious this limitation, then the petition moves on to discuss why, in the alternative, Schaeffer also discloses this limitation.

[00:18:20] Speaker 04:
This petition was clearly argued in the alternative.

[00:18:23] Speaker 04:
And what's interesting here is that in this... You said in the alternative.

[00:18:27] Speaker 04:
I don't know that I see those words per se in the alternative.

[00:18:30] Speaker 04:
That's correct, Your Honor.

[00:18:31] Speaker 04:
In this particular section, we didn't say in the alternative.

[00:18:35] Speaker 04:
But we did have four paragraphs explaining why Collins and Gauthier disclosed this limitation, render it obvious.

[00:18:42] Speaker 04:
And then following that section, there begins a new paragraph explaining why Schaeffer also discloses that limitation.

[00:18:49] Speaker 04:
But you're right.

[00:18:49] Speaker 04:
The word alternative is not there here.

[00:18:52] Speaker 03:
Is this the clearest example or the best example of it being a two reference combination versus it being possibly a three reference combination?

[00:19:03] Speaker 04:
No, Your Honor.

[00:19:03] Speaker 04:
There are additional examples in the petition.

[00:19:05] Speaker 04:
So if you turn to page... Please give me your best one.

[00:19:08] Speaker 04:
Of course.

[00:19:08] Speaker 04:
So if you look at page appendix 208,

[00:19:14] Speaker 04:
This is the way the petition was drafted.

[00:19:16] Speaker 04:
And this additional site shows that this is the pattern of how the petition was drafted.

[00:19:21] Speaker 04:
And it was drafted in this way, of course, because of the tight word limits and there's a limited amount of space.

[00:19:26] Speaker 04:
But at appendix 208, this is one of the prior limitations, where the limitation at issue is installation of the fonts into a temporary font directory.

[00:19:35] Speaker 04:
And so the prior paragraphs, and I won't labor the point and walk you through all of them, but I think it's the

[00:19:42] Speaker 04:
Second full paragraph on that page says, the Collins and Gotay combination therefore discloses functions in Collins' extended browser, listing some of the functions, that install, and then in italics, the relevant limitation.

[00:19:57] Speaker 04:
And then following that discussion, it says Schaeffer also discloses this limitation.

[00:20:02] Speaker 04:
This is a pattern of how the petition was drafted.

[00:20:05] Speaker 04:
Here's how Collins and Coday disclosed this limitation.

[00:20:08] Speaker 04:
Schaeffer also discloses it.

[00:20:11] Speaker 04:
And then what's particularly interesting here is, with regard to the system font limitation, Clantech argues, well, that's a new argument.

[00:20:18] Speaker 04:
We didn't have notice and opportunity to respond, which is what we're talking about with an APA violation.

[00:20:23] Speaker 04:
But they responded to the argument for the first time on appeal in their opening brief at page 36.

[00:20:30] Speaker 04:
That is far too late for a response to an argument that was in the petition.

[00:20:34] Speaker 04:
But it impliedly concedes our point.

[00:20:37] Speaker 04:
This argument was in the petition.

[00:20:39] Speaker 04:
They had notice, and they had an opportunity to respond.

[00:20:43] Speaker 02:
Why doesn't the board just simply say that they're making an alternative argument or an alternative filing?

[00:20:51] Speaker 02:
Just leave it there.

[00:20:52] Speaker 02:
I mean, that does raise a certain amount of lack of clarity, it seems to me.

[00:20:59] Speaker 04:
Your Honor, just to make sure I understand your question.

[00:21:01] Speaker 04:
You're asking why the board didn't say that it was in the alternative?

[00:21:04] Speaker 02:
Yes.

[00:21:05] Speaker 04:
Your Honor, that's correct.

[00:21:06] Speaker 04:
The board didn't.

[00:21:07] Speaker 04:
Well, I think that the board actually did.

[00:21:09] Speaker 02:
Your institution decision has to be written and with peculiarity, right?

[00:21:16] Speaker 02:
That's the statute.

[00:21:17] Speaker 04:
The petition has to be drafted with particularity under the Patent Act.

[00:21:22] Speaker 02:
And it's under the- That's to give notice.

[00:21:25] Speaker 04:
To give notice, correct.

[00:21:25] Speaker 04:
So it's the petition.

[00:21:26] Speaker 02:
Why doesn't the final written decision be required to be equally clear?

[00:21:33] Speaker 04:
So Your Honor, the rule, as the Supreme Court held in SAS v. Iancu, it's the petition that sets the contours of the proceeding.

[00:21:43] Speaker 04:
Not the board, not the director, not the institution decision.

[00:21:47] Speaker 04:
But even if we were to look at the institution decisions and see how did the board treat this issue, if you look at Appendix 372, you see there, at Appendix 372, the board expressly recognized that the petition relied on Collins and Gautier with Schaeffer in the alternative.

[00:22:07] Speaker 04:
So the board says, moreover, even assuming without deciding,

[00:22:12] Speaker 04:
that Collins does not describe updating a system font table as patent owner contends, petitioner also relies on Schaeffer's description.

[00:22:22] Speaker 04:
The board was crystal clear.

[00:22:25] Speaker 04:
The petition relies on Collins and Gautier and Schaeffer and the alternative.

[00:22:29] Speaker 04:
And what's interesting about this particular line is this is in response to an argument that Client Tech made in its patent owner preliminary response, where they argued that Collins doesn't disclose this limitation.

[00:22:42] Speaker 04:
The board said, even if you're right about that, the petition also relies on Schaeffer, not just on Collins.

[00:22:48] Speaker 04:
This is the 4-2-1 institution decision.

[00:22:52] Speaker 04:
The 0-9-3 institution decision actually only relies on Collins.

[00:22:56] Speaker 04:
The Collins and Gautier ground, to find this limitation would have been obvious.

[00:23:00] Speaker 04:
It doesn't touch the Schaeffer ground.

[00:23:02] Speaker 04:
It felt that it didn't need to go that far.

[00:23:04] Speaker 04:
And this is in volume three of the appendix, but it's at appendix 10-8-6-3.

[00:23:12] Speaker 04:
And what's notable is that it's not just that these arguments were made clear in the institution decision.

[00:23:18] Speaker 04:
They were also, Calentech also suggested in its patented response that it too recognized that these petitions were written in the alternative.

[00:23:26] Speaker 04:
It said, finally, both the petition and the board rely on Schaeffer's disclosure if Collins fails.

[00:23:34] Speaker 04:
If Collins fails.

[00:23:35] Speaker 04:
As in, we understand if Collins doesn't work, then Schaeffer's relied on in the alternative.

[00:23:41] Speaker 04:
Now, in their briefing, PlanTech argues that that was only in response to one particular limitation, the temporary fonts directory, and not also with regard to the system font directory.

[00:23:51] Speaker 04:
What's the JPEG that supports what you just described in the alternative?

[00:23:56] Speaker 04:
In the patent and response?

[00:23:57] Speaker 04:
Yeah.

[00:23:58] Speaker 04:
That is at appendix 473.

[00:24:03] Speaker 04:
But this language,

[00:24:04] Speaker 04:
referred specifically back to the board's discussion of the petition's use of this system font table limitation in the alternative.

[00:24:12] Speaker 04:
So Your Honors, we believe it's clear that the petition made the grounds clear, and then they were made clear in the institution decision.

[00:24:20] Speaker 04:
And there's even an indication that Clantech itself recognized that this is how the petition was written.

[00:24:26] Speaker 04:
But that being said, I want to make another claim, which is that the APA violation argument and the anti-dating argument are two discrete arguments, and they're two independent paths for affirmance.

[00:24:38] Speaker 04:
This court can affirm either by finding there was no APA violation and Collins and Gauthier alone render obvious the claims, which the board found, or alternatively, that Collins, Gauthier, and Schaeffer render the claims obvious because Clantech failed to anti-date Schaeffer.

[00:24:55] Speaker 03:
There were quite a few arguments raised in the appellant's brief.

[00:24:58] Speaker 03:
Which arguments do you believe we need to reach in order to resolve the case if we agree with you on the point you just raised?

[00:25:07] Speaker 04:
Yes, Your Honor.

[00:25:07] Speaker 04:
So you either need to reach either the APA violation argument or their effort to ante date, and then also their argument on the font package and formatting information.

[00:25:18] Speaker 04:
So it's exactly where I started.

[00:25:21] Speaker 04:
There are, at the very end of the appellants brief, there were four arguments that were raised very briefly.

[00:25:26] Speaker 04:
You may need to reach some of those arguments as well, but they're not addressed in detail in the briefing.

[00:25:34] Speaker 03:
I'm sorry.

[00:25:34] Speaker 03:
Somebody coughed and I didn't hear what you said.

[00:25:35] Speaker 03:
No problem.

[00:25:36] Speaker 04:
I was just saying they're not addressed in detail in appellants briefing.

[00:25:40] Speaker 04:
On the answer dating argument very briefly, I see that I'm running out of time.

[00:25:44] Speaker 04:
But the board properly considered the evidence that Clantech raised and found that there was just simply no specific that Clantech failed to specifically identify and explain the how and why of prior conception, specifically in a handheld device.

[00:26:00] Speaker 04:
Every single claim recites in a handheld device.

[00:26:04] Speaker 04:
And there was just simply no evidence of prior conception or reduction of practice in a handheld device.

[00:26:09] Speaker 04:
And in its briefing, the board went through all of the evidence that Clantech actually cited.

[00:26:16] Speaker 04:
It looked at the invention disclosure document that Clantech relies on and said, that's not enough.

[00:26:20] Speaker 04:
That doesn't show conception in a handheld device, because it talked about only about any and all computers, which is not a handheld device.

[00:26:29] Speaker 04:
Then it looked at an initial document that discussed a Palm Pilot as a technology development priority.

[00:26:35] Speaker 04:
and correctly found that at most that showed a plan for future development, not actual conception.

[00:26:42] Speaker 04:
And then I just, one final point, Clantek tries to minimize the importance of this handheld device limitation to get around the lack of evidence for conception or reduction of practice in a handheld device.

[00:26:55] Speaker 04:
But this limitation was part of the reason why

[00:26:58] Speaker 04:
These claims were deemed patentable by the examiner.

[00:27:01] Speaker 04:
They were in a 421 patent.

[00:27:03] Speaker 04:
They were added in an examiner amendment in a notice of allowance.

[00:27:07] Speaker 04:
And likewise, in the 093 patent, they were added because of the examiner's insistence in an interview.

[00:27:14] Speaker 04:
So unless this court has any other questions.

[00:27:18] Speaker 01:
Thank you, counsel.

[00:27:19] Speaker 01:
Thank you, your honor.

[00:27:20] Speaker 01:
Mr. Oliver has some rebuttal time.

[00:27:28] Speaker 00:
Thank you.

[00:27:30] Speaker 00:
I will attempt to address the arguments in the order that Opposition Council made them.

[00:27:34] Speaker 03:
Well, first, maybe also Housekeeping Matter.

[00:27:38] Speaker 03:
I want to know which issues we actually need to decide.

[00:27:40] Speaker 03:
Do you agree with her recitation of issues we would need to reach if we were to affirm in this case?

[00:27:48] Speaker 00:
With respect to the 421 patent, you would need to reach the issue about the font file, the formatting information, and the font package being the same throughout the claims.

[00:27:59] Speaker 00:
With respect to both patents, was there an APA violation?

[00:28:05] Speaker 00:
If so, did the patent owner present sufficient evidence of prior conception?

[00:28:18] Speaker 00:
Opposing counsel stated that PAN owner mischaracterized the PFR files, the conversion of formatting information, and stated that the only evidence on the record is from the costars expert.

[00:28:38] Speaker 00:
In the brief, we addressed that.

[00:28:40] Speaker 00:
That was reply evidence that was submitted.

[00:28:42] Speaker 00:
That was against the PTAB procedures.

[00:28:45] Speaker 00:
We moved for permission to supplement based on new evidence on reply, and that was denied.

[00:28:53] Speaker 00:
So it's not that there wasn't an attempt to put in evidence.

[00:28:57] Speaker 00:
It's that we weren't permitted to address new evidence that came in on reply.

[00:29:05] Speaker 00:
With respect to the handheld device argument that we heard,

[00:29:09] Speaker 00:
The evidence of record all shows that Mr. Adamson conceived the handheld device.

[00:29:14] Speaker 00:
He said, this is an invention for any client computer on the internet.

[00:29:21] Speaker 00:
At the same time, he had a business plan saying, we are developing this for Palm Pilot, which was a handheld device, showing that he conceived, not that he had reduced it to practice, but that he conceived that it was for use for the Palm Pilot.

[00:29:36] Speaker 00:
And both experts pointed out that

[00:29:39] Speaker 00:
there were handheld devices at the time that browsed the web that were included in client computers.

[00:29:45] Speaker 00:
Neither expert disagreed.

[00:29:46] Speaker 00:
The only thing that the PTAB went on to say that there was no disclosure of handheld device was attorney argument by opposing counsel.

[00:29:56] Speaker 00:
Turning to this issue about whether there were alternative findings and whether the board considered Collins and Gaudier alone and then in the alternative Schaeffer,

[00:30:09] Speaker 00:
I'd like to point the court to the institution decision, Appendix 373.

[00:30:16] Speaker 00:
The board says, petitioner relies on Collins as teaching or suggesting most of the independent, most of the limitations of independent claims one and six, but relies on Godier as disclosing one thing and Schaeffer with respect to font manager behavior such as the use of the system font table.

[00:30:39] Speaker 00:
The board instituted on the three-part combination and specifically said it's not considering it in the alternative.

[00:30:48] Speaker 00:
On appendix page 214, the petition also says, based on Schaeffer, we have the font table.

[00:30:58] Speaker 00:
I see I've exceeded my time.

[00:31:01] Speaker 01:
You can finish your sentence.

[00:31:02] Speaker 00:
OK.

[00:31:04] Speaker 00:
And on page 213, they say,

[00:31:07] Speaker 00:
Schaeffer discloses the front table.

[00:31:09] Speaker 00:
It was not an alternative argument.

[00:31:13] Speaker 00:
I appreciate the time of the court.

[00:31:15] Speaker 00:
Thank you very much.

[00:31:16] Speaker 01:
Thank you to both counsels and cases submitted.