[00:00:00] Speaker 00:
The next case for argument is 24-1301 Park v. Docky Song.

[00:00:08] Speaker 00:
Mr. Samuels, we're ready whenever you are.

[00:00:16] Speaker 03:
Good morning, Your Honor.

[00:00:17] Speaker 03:
Good morning, please report.

[00:00:20] Speaker 03:
We're here today to address a couple of very simple issues.

[00:00:29] Speaker 03:
in that it engaged in an implicit claim construction of the term target network application level protocol.

[00:00:38] Speaker 03:
And that implicit claim construction was incorrect, which led to an incorrect determination of obviousness.

[00:00:46] Speaker 03:
Nature of the implicit claim construction is really highlighted in the board's discussion of how the Duncan reference applies to the claims.

[00:00:57] Speaker 00:
Well, as I understood your briefing, you say the problem with the claim construction is that the board said that the two protocols could be the same.

[00:01:08] Speaker 00:
Yes, Your Honor.

[00:01:09] Speaker 00:
Is that the issue we're talking about?

[00:01:10] Speaker 03:
Yes, Your Honor.

[00:01:11] Speaker 00:
I guess I'm not understanding the relevance, because I think what the board said was essentially, it doesn't matter.

[00:01:18] Speaker 00:
And OK, let's assume that the protocols are different.

[00:01:22] Speaker 00:
Duncan still teaches.

[00:01:24] Speaker 00:
They're different if the protocols are different.

[00:01:28] Speaker 00:
Well, Your Honor.

[00:01:28] Speaker 00:
What am I missing in this record here?

[00:01:30] Speaker 03:
Well, Your Honor, the board credited Dr. Falk's testimony to say that what happened to Duncan

[00:01:37] Speaker 03:
is that an HTT protocol going into the converter begets an HTTP protocol coming out of the converter with security comments appended.

[00:01:49] Speaker 03:
So the board, on the one hand, is saying that what happens in Duncan is that you have the same protocol coming out of the converter.

[00:01:58] Speaker 03:
And so if that's the case, then if the claim were to be construed as requiring a different protocol,

[00:02:08] Speaker 03:
that would not meet the claim limitation.

[00:02:10] Speaker 03:
The board also said, while they recognized Dr. Clark's statement of what Duncan teaches, they also said that Dr. Black opined that coming out of the converter, there was a protocol.

[00:02:31] Speaker 03:
And I want to get the language.

[00:02:37] Speaker 01:
Clark relied on converting HTTP to HTTPS as translating.

[00:02:42] Speaker 01:
Is that not true?

[00:02:43] Speaker 03:
So what happened with that, Your Honor, was during the prosecution of Dr. Clark's patent application, he had a demonstration from patent examiner.

[00:02:54] Speaker 03:
And as part of that demonstration, he showed a conversion from HTTP to HTTPS.

[00:03:00] Speaker 03:
But those are two different protocols.

[00:03:02] Speaker 03:
And Dr. Clark testified to that, and the board did not

[00:03:07] Speaker 03:
challenge that testimony.

[00:03:09] Speaker 03:
They accepted that representation.

[00:03:10] Speaker 03:
Those are two different protocols.

[00:03:11] Speaker 03:
They have two different protocol standards.

[00:03:13] Speaker 03:
They operate on different ports.

[00:03:15] Speaker 03:
So they're still distinct protocols.

[00:03:17] Speaker 03:
And as I understand, what Dr. Stein should be arguing is, well, Dr. Clark's demonstration sets the bar for how much difference there has to be between the protocols for Duncan-Tamita-Clomer notation.

[00:03:35] Speaker 03:
But again, HTTP to HTTPS is a conversion of one network application level protocol to a second network application level protocol.

[00:03:46] Speaker 03:
And the conversion that Duncan describes is a conversion at the network level, not at the application level.

[00:03:55] Speaker 03:
In fact, Dr. Black's declaration

[00:04:03] Speaker 03:
says, in his opinion, and this would be Appendix 885, paragraph 147, in his opinion, the data is sent out by a standard browser, 38, and a proxy browser, 45, to the server.

[00:04:22] Speaker 03:
The protocol converter 71 converts the data from an application protocol of the browser, HTTP,

[00:04:32] Speaker 03:
to a network protocol of Duncan's network.

[00:04:35] Speaker 03:
So that's at the network level.

[00:04:38] Speaker 03:
That's his description of what's going on at 71.

[00:04:42] Speaker 03:
His conclusion that the next sentence that follows says that, hence, Duncan teaches translating perceived data from a first network application level protocol to a target network application level protocol.

[00:04:57] Speaker 03:
What's missing

[00:04:58] Speaker 03:
is the explanation of how the network protocol of Duncan's network is operating at the functioning at the application level, which is what's required under the claim construction for network application level protocol.

[00:05:13] Speaker 03:
Dr. Bright doesn't explain that.

[00:05:16] Speaker 03:
So the precise language of Duncan says that it's a network protocol.

[00:05:25] Speaker 03:
That's why, Judge Crost, it's important to distinguish as to whether the claim requires a second distinct network application level protocol, or whether it could just be, as the board has said, a same yet modified protocol, or something different.

[00:05:42] Speaker 00:
Can you point us to what the board said in its opinion that you're disagreeing with then?

[00:05:47] Speaker 00:
Because they've got a pretty detailed analysis of all the arguments.

[00:05:53] Speaker 00:
They accepted Dr. Black's analysis.

[00:05:57] Speaker 03:
So yes, Your Honor.

[00:05:59] Speaker 03:
At Appendix 25, the board says because 25, we're on 25.

[00:06:17] Speaker 03:
Appendix 25.

[00:06:18] Speaker 03:
Where?

[00:06:19] Speaker 04:
And the paragraph, patent order, paragraph furthermore.

[00:06:23] Speaker 04:
Which paragraph?

[00:06:24] Speaker 03:
Patent order.

[00:06:26] Speaker 04:
Patent.

[00:06:26] Speaker 04:
What sentence?

[00:06:27] Speaker 03:
And we're going down to the 1, 2, 3, 4, 5, 6, 7.

[00:06:31] Speaker 03:
The seventh line, beginning with because.

[00:06:36] Speaker 03:
Right after the hit.

[00:06:36] Speaker 03:
It says, because the HTTP application protocol of the browser is uncontestably a network application level protocol,

[00:06:45] Speaker 03:
Duncan's modified yet same network protocol is in Pat Noonan's view also a network application level protocol.

[00:06:53] Speaker 03:
So they're saying it's the same protocol.

[00:06:56] Speaker 03:
And our argument is that the claim requires it to be different.

[00:07:00] Speaker 04:
I mean, it says Duncan's argument is.

[00:07:07] Speaker 03:
Duncan's modified yet.

[00:07:08] Speaker 04:
That's your argument in that opinion.

[00:07:13] Speaker 03:
I'm sorry.

[00:07:14] Speaker 04:
Are you pointing to the because sentence?

[00:07:16] Speaker 04:
Yes, I am.

[00:07:21] Speaker 03:
Right.

[00:07:22] Speaker 03:
And if we go to the last thing.

[00:07:24] Speaker 04:
Because it is a network protocol, Duncan's modified, i.e.

[00:07:29] Speaker 04:
its other one, is, in patent owner's view, also the same one.

[00:07:36] Speaker 04:
Correct.

[00:07:36] Speaker 04:
That's not the board agreeing with you.

[00:07:39] Speaker 03:
Well, they called it.

[00:07:44] Speaker 04:
And the board pointed out in Duncan himself, where Duncan at column nine line, whatever it is, four or five, says that the two can be fundamentally different.

[00:07:57] Speaker 03:
So the column that?

[00:08:00] Speaker 04:
Like fundamentally different, not the same.

[00:08:05] Speaker 04:
And that's a fact finding, I think, that the board relied on.

[00:08:09] Speaker 03:
The fundamentally different language from,

[00:08:15] Speaker 03:
Duncan, column eight, so appendix 118, bridging to 119, where Duncan states the server can access the data bank via specific transfer protocol.

[00:08:32] Speaker 03:
For accessing this data bank, the network protocol can differ.

[00:08:35] Speaker 03:
The network protocol can differ fundamentally from the network.

[00:08:38] Speaker 03:
It's talking about a network protocol.

[00:08:40] Speaker 03:
So the server is sending out the message over the network.

[00:08:44] Speaker 03:
So Duncan is clearly here talking about a network protocol, not a network application level protocol.

[00:08:49] Speaker 03:
Again, Duncan doesn't explain here that fundamentally different protocols operating at an application level.

[00:08:58] Speaker 03:
There are many, many network protocols.

[00:08:59] Speaker 03:
It could be IP, NetBooly, Appletop, all these different protocols.

[00:09:04] Speaker 04:
Certainly, the argument you're making now you made before the board.

[00:09:08] Speaker 04:
If you did, I'm surprised they didn't address it.

[00:09:11] Speaker 04:
They seem to have relied on this.

[00:09:13] Speaker 04:
provision in column 9 as adverse to your claim.

[00:09:20] Speaker 03:
They did rely on it, Your Honor.

[00:09:24] Speaker 03:
And what we're arguing, again, is that the protocol, they relied on that statement as applied to what Dr. Black said about

[00:09:43] Speaker 03:
the protocol that comes out of converter 71.

[00:09:48] Speaker 03:
And Dr. Black said, and what the patent says about that protocol, what Duncan says about that protocol.

[00:09:55] Speaker 03:
And again, that description does not explain how that protocol operates at the application level.

[00:10:04] Speaker 03:
So we're combined Dr. Clark's statement that it could be the same protocol and Dr. Black's statement

[00:10:13] Speaker 03:
that the protocol is converted according to the needs of the network to say that there could be a different network application level protocol.

[00:10:32] Speaker 03:
That doesn't follow.

[00:10:34] Speaker 01:
Counsel, you didn't propose a construction for the translating limitation, right?

[00:10:39] Speaker 03:
No, Your Honor.

[00:10:40] Speaker 01:
And the only disputed claim construction before the board was networked application level protocol?

[00:10:45] Speaker 03:
Yes, Your Honor.

[00:10:46] Speaker 01:
And you also agree that Ducking discloses all the limitations of the asserted claims except for the translation limitation?

[00:10:53] Speaker 03:
Your Honor, yes, to an extent.

[00:10:58] Speaker 03:
What we contend is that.

[00:11:01] Speaker 03:
The 1.6 limitation of the claim requires there to be a different and distinct network application level protocol.

[00:11:08] Speaker 03:
Whether that's through the target protocol, whether that's in the translation, you have to have a distinct network application level protocol.

[00:11:15] Speaker 03:
In fact.

[00:11:16] Speaker 01:
So with that construction,

[00:11:19] Speaker 01:
ever given below that that would be required?

[00:11:21] Speaker 01:
Or did you ever propose that that should be done?

[00:11:23] Speaker 03:
We didn't propose that construction, Your Honor.

[00:11:25] Speaker 03:
What we would say is that there are different words used for the respective network application over protocols first and targeted.

[00:11:33] Speaker 03:
And of course, there is sort of a rebuttable presumption that if you're using different words to talk about different items, it goes to different people.

[00:11:41] Speaker 04:
It can be just a tiny bit different.

[00:11:42] Speaker 04:
It doesn't have to be the way you say, significantly different.

[00:11:45] Speaker 03:
Pardon me, Your Honor?

[00:11:48] Speaker 04:
When you have different language, then the law says we expect this different structure, right?

[00:11:55] Speaker 04:
Yes, Your Honor.

[00:11:55] Speaker 04:
Well, you're making an argument here is that it doesn't have to be different.

[00:11:59] Speaker 04:
It has to be materially significantly vastly different, like the difference between HTTP and HTTPS.

[00:12:05] Speaker 04:
That's not enough.

[00:12:07] Speaker 04:
But that's not what the law requires.

[00:12:09] Speaker 04:
The law requires that there's be a tiny difference between the two.

[00:12:11] Speaker 04:
No, Your Honor.

[00:12:13] Speaker 03:
We're not arguing that the difference between HTTP and HTTPS isn't enough.

[00:12:18] Speaker 03:
Those are two different protocols.

[00:12:21] Speaker 03:
We're not arguing that.

[00:12:23] Speaker 04:
We would argue that.

[00:12:24] Speaker 04:
I think the point that we're talking about is that the main argument you're making here is not when the board is looking and saying, well, is the translating limitation met in Duncan?

[00:12:37] Speaker 04:
Not whether there are two different protocols.

[00:12:40] Speaker 04:
The question presented to the board was, does Duncan teach translating?

[00:12:45] Speaker 04:
And the board said, of course it does.

[00:12:47] Speaker 04:
And you don't make a very strong argument here that Duncan doesn't teach translating.

[00:12:51] Speaker 04:
You're saying, oh, no, no, over on a wholly different way of looking at the case, the two protocols have to be significantly different, even if they're translating.

[00:13:02] Speaker 03:
Well, because you can translate a protocol into network rather than you can translate it into network application level.

[00:13:06] Speaker 03:
So I think we have to look at the complete plain language, which says translating the first network application level protocol to a second network application level protocol.

[00:13:15] Speaker 01:
Where, if at all, in your briefing did you make

[00:13:17] Speaker 01:
The briefing to us, did you make this argument about a difference between the network protocol and the network application protocol that you're describing now?

[00:13:29] Speaker 03:
Just a moment, Your Honor.

[00:13:56] Speaker 03:
Your Honor, can I get those sacks and come back up on the bed?

[00:13:58] Speaker 00:
Oh, sure.

[00:13:59] Speaker 00:
You're on your final time, so why don't we hear from the other side?

[00:14:09] Speaker 02:
Thank you.

[00:14:09] Speaker 02:
Good morning, Your Honors.

[00:14:10] Speaker 02:
Michael Sachs, Stutter Fenwick and West, on behalf of DocuSign, may it please the Court.

[00:14:15] Speaker 02:
Substantial evidence supported the board's determination that the three challenge patents are invalid.

[00:14:22] Speaker 02:
As the board noted in its footnote four, that is true regardless

[00:14:28] Speaker 02:
of whether there is a claim construction issue or not concerning whether the target protocol can be the same or modified or different or second or separate or any of those words distinct from the first protocol, because the board relied on evidence that showed that even under the most restrictive construction of that claim limitation, that that

[00:14:56] Speaker 02:
requirement was satisfied in Duncan.

[00:15:00] Speaker 02:
The board discusses first the portion of Duncan that describes figure two of Duncan, which shows the basic network architecture.

[00:15:12] Speaker 02:
And it shows two different protocols, one for the network between the browser and the web server, one for the network that goes to what's called the backend, the database, basically a database server.

[00:15:26] Speaker 02:
which we would assert if that, if that's been argued and I don't think it has, if that's not a network application level protocol, well, you have to go to the database server which requires an application to do that.

[00:15:38] Speaker 02:
So that would be something that, that would be a network application level protocol in any event.

[00:15:45] Speaker 02:
The alleged modification that is relied upon by Dr. Clark is referenced, and they rely on one particular portion from column seven of the Duncan patent.

[00:16:00] Speaker 02:
And that portion is talking about using an access control unit, providing access controls.

[00:16:09] Speaker 02:
And it says that that is a security protocol.

[00:16:12] Speaker 02:
That's not the transfer protocol that we're talking about.

[00:16:15] Speaker 02:
It's embedded in a transfer protocol.

[00:16:18] Speaker 02:
But it is not the same thing.

[00:16:21] Speaker 02:
And if the Court looks at the descriptions of the detailed description of the invention and the detailed description of the figures of the patent, it's very clear

[00:16:34] Speaker 02:
that the insertion of the access control information on one end and then the use of the access control information on the other end are done by different components in the proxies at both ends of the systems.

[00:16:51] Speaker 02:
On one end there's an access control unit, there are privilege generators, there's a security control unit.

[00:16:59] Speaker 02:
Those are all separate from the protocol converters.

[00:17:02] Speaker 02:
And the description, which is in, I believe it's in column 10 of Duncan.

[00:17:09] Speaker 02:
Yeah, it actually starts in column 10 talking about the server side.

[00:17:15] Speaker 02:
And then it goes on to column 11 on the browser side.

[00:17:20] Speaker 02:
And it specifically talks about how the security control module or unit

[00:17:28] Speaker 02:
and the privilege generator and those put in the access control information, but that's not the protocol conversion.

[00:17:36] Speaker 02:
Then it says you go to the protocol converter and you convert to whatever protocol you need.

[00:17:42] Speaker 02:
There is not a lot of specificity in Duncan about what kind of protocols you need, because those were, as Dr. Black said in his declaration,

[00:17:51] Speaker 02:
Those were already well known in the art.

[00:17:54] Speaker 01:
There were various standards organizations that had RPCs.

[00:18:01] Speaker 01:
protocol and network application protocol.

[00:18:05] Speaker 01:
I feel like you may be addressing and passing it.

[00:18:07] Speaker 01:
Can you directly respond to that distinction?

[00:18:09] Speaker 02:
Yes, Your Honor.

[00:18:10] Speaker 02:
That was the only claim limitation that was actually asked to be construed by the board.

[00:18:17] Speaker 01:
Network application level protocol.

[00:18:19] Speaker 02:
Network application level protocol.

[00:18:21] Speaker 02:
And as I understand the argument today, I believe my friend on the other side is saying that Duncan discloses

[00:18:31] Speaker 02:
may be converting to a network protocol but not a network application level protocol.

[00:18:37] Speaker 02:
But there is evidence upon which the board relied in the portion that was discussed before that where Dr. Black says that the conversion that is done is to a network application level protocol.

[00:18:54] Speaker 02:
So it is still Bockeysine's contention that the claim construction argument was forfeited, that there is no implicit claim construction because the board said under whatever construction, Duncan discloses the claim convention.

[00:19:13] Speaker 04:
It's quite a hard argument.

[00:19:14] Speaker 04:
It's forfeited if the board in footnote four recognizes that the argument is there and says we don't need to deal with it.

[00:19:24] Speaker 02:
I'm looking more at what was said by Dr. Clark as an individual and by his counsel during the process where, you know, I asked him in his deposition, do you construe translation?

[00:19:37] Speaker 02:
And he said, no, we rely on plain meaning.

[00:19:40] Speaker 02:
And at a certain point, you know, you have to come out when you're asked and say, there is a construction.

[00:19:46] Speaker 02:
And I don't think they ever really did that.

[00:19:49] Speaker 02:
But anyway, that's DocuSign's position.

[00:19:52] Speaker 02:
We don't think it's material to the determination that substantial evidence supported the finding that the board made invalidating patents.

[00:20:02] Speaker 01:
And the only dispute, my understanding, in terms of what NUC and disclosures relates to the translating or translation limitations?

[00:20:10] Speaker 02:
It's 1.6.

[00:20:10] Speaker 02:
I think the board called it.

[00:20:12] Speaker 02:
It's the translation limitation from a first protocol to a second network.

[00:20:20] Speaker 02:
Not a second.

[00:20:21] Speaker 02:
A target.

[00:20:22] Speaker 02:
network application level protocol.

[00:20:25] Speaker 01:
You mean that the other side does agree that every other limitation is disclosed by Dr. Smith?

[00:20:30] Speaker 02:
There was no attempt to challenge any of those.

[00:20:32] Speaker 04:
There are both network application level protocols on each side.

[00:20:37] Speaker 04:
Correct.

[00:20:38] Speaker 04:
The first network application level protocol is the one that gets doctored up with the additional security stuff.

[00:20:46] Speaker 04:
Exactly.

[00:20:46] Speaker 04:
And then it gets translated, right?

[00:20:49] Speaker 04:
to the target, meaning another one that's the target.

[00:20:52] Speaker 04:
It's a target because that's where you're sending the beefed up security information.

[00:20:57] Speaker 02:
I was speaking from memory.

[00:20:59] Speaker 02:
I think it's the data that is doctored up.

[00:21:01] Speaker 02:
Yeah.

[00:21:02] Speaker 02:
And then the protocol in which the data is wrapped is.

[00:21:05] Speaker 04:
That's what I mean.

[00:21:06] Speaker 04:
The data is wrapped into the protocol.

[00:21:08] Speaker 02:
Right.

[00:21:09] Speaker 02:
Right, exactly.

[00:21:09] Speaker 02:
And it's actually a separate step.

[00:21:11] Speaker 02:
And that's how they got these patents.

[00:21:13] Speaker 02:
There were rejections of the parent application.

[00:21:16] Speaker 02:
And then they separated out.

[00:21:18] Speaker 02:
the step where the security enhancements are added from the protocol translation step.

[00:21:27] Speaker 02:
If the Court has no further questions, thank you.

[00:21:40] Speaker 03:
Okay, I'd like to first address Judge Cunningham's question.

[00:21:44] Speaker 03:
It would be pages 18 and 19 of the opening brief.

[00:21:47] Speaker 03:
And Section D, pages 9 and 10 of the reply brief where we discuss this issue of network application level protocol versus network protocol.

[00:22:02] Speaker 03:
And with respect to the discussion of

[00:22:15] Speaker 03:
What kind of protocol comes out of converter 71?

[00:22:18] Speaker 03:
Again, I would prefer to dunk in appendix 120 at column 11, where I guess lines 43 through 46, where the explanation of the converter is that the converter is arranged between the network 25 and the security control unit.

[00:22:42] Speaker 03:
browser functionality thereof converting the information according to the network protocol, according to the network protocol employed, and according to the firm of the presentation of the information employed in the browser.

[00:22:57] Speaker 03:
Again, while Dr. Clark certainly doesn't purport to have invented any new protocols, there still has to be a teaching to convert to the kind of protocol that's required for his system.

[00:23:10] Speaker 03:
And so

[00:23:13] Speaker 03:
Duncan simply doesn't – isn't concerned with the issue that Dr. Clark's concerned with, apparently.

[00:23:18] Speaker 03:
So they didn't specify what kind of protocol was being converted to here.

[00:23:24] Speaker 03:
But Dr. Clark did, and in fact, for Dr. Clark's invention to – to realize its benefits, the protocol needs to be – the target protocol needs to be a network application-level protocol so it can pass through the firewall.

[00:23:42] Speaker 03:
Does anyone have a question from the audience?

[00:23:44] Speaker ?:
Thank you.

[00:23:44] Speaker 00:
We thank both sides for cases submitted.

[00:23:47] Speaker 00:
Thank you.