[00:00:00] Speaker 03:
We will hear argument next in case number 241315, Memory Web against Samsung Electronics.

[00:00:10] Speaker 03:
Let's see.

[00:00:23] Speaker 00:
Good morning, Your Honors.

[00:00:24] Speaker 00:
May it please the Court, Jennifer Hayes for Appellant Memory Web.

[00:00:29] Speaker 00:
I plan to focus on three issues that demonstrate errors committed by the board in the 228 and 658 IPRs, unless Your Honors would like to direct me to another issue.

[00:00:43] Speaker 03:
But can I just ask, I don't, so if in the case we just heard, we affirm with respect to all the cross-appeal, then there's nothing left to decide in this matter, is that right?

[00:00:56] Speaker 00:
I would agree with that.

[00:00:57] Speaker 00:
If you affirm the 228 and 658 Apple decisions, then these appeals would become moot.

[00:01:06] Speaker 00:
And we would request that the Federal Circuit remand the decisions back to the board to dismiss them so that there is no collateral estoppel effect from any of the findings that the board made in those decisions.

[00:01:24] Speaker ?:
OK.

[00:01:27] Speaker 03:
Would that actually be necessary?

[00:01:30] Speaker 03:
You can't give collateral or stop all effect to a decision that can't be appealed, including for mootness.

[00:01:41] Speaker 00:
I would agree with that.

[00:01:42] Speaker 00:
Right, that's that per share principle.

[00:01:45] Speaker 00:
In several of the cases that we cited in our briefs, the US versus Munningswear case, I believe.

[00:01:52] Speaker 03:
Munningswear.

[00:01:52] Speaker 00:
Pronounced.

[00:01:54] Speaker 00:
In that case, they explain that principle, but they also explain that the underlying decision can be remanded back to

[00:02:04] Speaker 00:
the lower court so that there's no collateral estoppel effect of the decision.

[00:02:10] Speaker 00:
And here, with respect to the memory web patents, as you are aware, there are multiple other patents.

[00:02:17] Speaker 00:
And so what we do not want to happen is for any of the factual findings in the Samsung appeals to impact any of the related

[00:02:29] Speaker 00:
memory web patents.

[00:02:30] Speaker 00:
There are patents that the board has not analyzed in any of the proceedings.

[00:02:34] Speaker 00:
They have issued from the Patent Office.

[00:02:36] Speaker 00:
They have not been asserted against any third parties.

[00:02:40] Speaker 00:
And so we wouldn't want the board's findings on the disclosures of Okamura or whether Okamura, in view of beliefs, renders certain claim limitations obvious.

[00:02:53] Speaker 00:
And it's obvious to have

[00:02:56] Speaker 00:
an impact on pending claims that the board hasn't analyzed as a result of collateral estoppel.

[00:03:03] Speaker 00:
And so for those reasons, we submit that the appropriate action is to remand back to the board to dismiss the IPRs.

[00:03:14] Speaker 03:
And at least because there's different prior art here than there was in the Apple case, there are different findings in the two proceedings.

[00:03:25] Speaker 03:
Correct.

[00:03:25] Speaker 03:
Thank you.

[00:03:27] Speaker 00:
With respect to the proceedings in the Samsung appeals, the board's decisions are inconsistent.

[00:03:36] Speaker 00:
In the 228 IPR, they found that certain claims were invalid, that Samsung did not meet its burden to show that Okumura, in view of leads, invalidates the claims.

[00:03:50] Speaker 00:
But then, in the C-28 decision,

[00:03:52] Speaker 00:
they reach the opposite conclusion.

[00:03:55] Speaker 00:
And the board doesn't explain the rationale for their inconsistency.

[00:04:00] Speaker 00:
And for that reason, at a minimum, the court may remand that decision back to the board to explain the inconsistency.

[00:04:11] Speaker 00:
But we respectfully submit that you don't even need to do that, that you can reverse the board's decision, because the 228

[00:04:18] Speaker 00:
Decision is final.

[00:04:20] Speaker 00:
SAMHSA didn't appeal the decision with respect to claims 18 through 19.

[00:04:25] Speaker 00:
And so the board's factual findings are final.

[00:04:28] Speaker 00:
Collateral estoppel applies to those findings for claims 18 through 19.

[00:04:34] Speaker 00:
Claim seven includes similar limitations to those claims.

[00:04:39] Speaker 03:
Can I double check something?

[00:04:40] Speaker 03:
So if SAMHSA had in the 228,

[00:04:48] Speaker 03:
appealed the adverse ruling on claims 18 and 19.

[00:04:52] Speaker 03:
And then pretty soon thereafter, it became clear that that dispute in that appeal, the 228 appeal, would be moot because of the other proceeding.

[00:05:06] Speaker 03:
At that point, you would not have a collateral estoppel argument, right?

[00:05:10] Speaker 03:
That would be, I'm just going to call it the Kerscher principles that we were just talking about, because it would have been no appealability because of bootness.

[00:05:22] Speaker 03:
Do I understand that right?

[00:05:23] Speaker 00:
I think that it's correct.

[00:05:24] Speaker 00:
If Samson had appealed the 228 decision, we would be in a different situation.

[00:05:32] Speaker 00:
I believe you would be correct about the application of the law, but that's not what Samsung did.

[00:05:37] Speaker 00:
And they are bound by their decision of not appealing.

[00:05:41] Speaker 00:
They waived their appeal rights for those claims.

[00:05:47] Speaker 02:
Sorry.

[00:05:47] Speaker 02:
With respect to, I think it's the 228, doesn't the board say the petition is deficient as opposed to make a factual finding about what Okamura and Belitz disclose?

[00:06:02] Speaker 00:
That's correct.

[00:06:03] Speaker 02:
So how could that lead to an estoppel determination?

[00:06:08] Speaker 02:
Isn't it really more akin to a pleading defect as opposed to finding a fact?

[00:06:12] Speaker 00:
It's a pleading defect, but the petition is the same in the 658 and the 228 with respect to the evidence that they submit.

[00:06:29] Speaker 02:
I can see, and I think you do also make this argument, but tell me if I'm wrong.

[00:06:33] Speaker 02:
I can see how that might mean you have an arbitrary capricious situation if the board looked at the very same thing and comes to completely different conclusions.

[00:06:43] Speaker 02:
I can sort of see that argument, but is that really also an estoppel problem or is it not?

[00:06:53] Speaker 00:
understand the point that you're making.

[00:06:56] Speaker 00:
I think though that you have to look at it in the context of what the board does in their review.

[00:07:03] Speaker 00:
They're provided a petition that sets forth all of the evidence and the facts, and it's the petition itself that sets the boundaries of the IPR, so to speak.

[00:07:16] Speaker 00:
And if the petition is deficient,

[00:07:19] Speaker 00:
In one instance, it is in effect a factual finding that

[00:07:26] Speaker 00:
They didn't meet their burden.

[00:07:27] Speaker 02:
Let me just make sure I'm at the right page.

[00:07:29] Speaker 02:
So it's Appendix 94, where the board says, the petition does not adequately explain how the combined teachings of the two references render Claim 18 obvious.

[00:07:42] Speaker 02:
You understood that was the claim and the discussion I was referring to?

[00:07:46] Speaker 01:
Yes.

[00:07:47] Speaker 02:
So just for the sake of argument, if there were no 658 and a contrary view,

[00:07:55] Speaker 02:
Could we say that there's some sort of factual finding that would give rise to a stopple just based on a failure to adequately explain?

[00:08:07] Speaker 02:
That seems akin to not saying what Okumura and Belitz actually disclose, but just saying, hey, Samsung, you failed to tell us in a way we can understand what those two references disclose.

[00:08:22] Speaker 00:
I think at a minimum the

[00:08:26] Speaker 00:
board's fact finding where they agreed that figure 24 is displayed in response to a mouse hover over figure 23 and not figure 21 is a finding to which collateral estoppel would apply.

[00:08:43] Speaker 03:
Can I just ask this?

[00:08:46] Speaker 03:
I have no idea what the answer to this is.

[00:08:48] Speaker 03:
Can collateral estoppel or issue preclusion apply to the issue of whether a pleading is sufficient?

[00:08:57] Speaker 03:
And if, yeah.

[00:09:01] Speaker 00:
Can you go around that?

[00:09:02] Speaker 00:
Why not?

[00:09:03] Speaker 00:
I will concede that I have not researched the law, the entire universe of that.

[00:09:09] Speaker 00:
I read the cases that relate to when collateral estoppel applies.

[00:09:14] Speaker 00:
in relation to PTAB proceedings and that are cited in our briefs, so I can't speak to the broad general proposition.

[00:09:24] Speaker 00:
But I submit that the cases that we do cite support that, at a minimum, that the board's finding in relation to how Okumura works is issue-proclusive and is determinative of the correct outcome of the 658

[00:09:42] Speaker 00:
decision with respect to claims 7 through 12.

[00:09:46] Speaker 00:
And with respect to claims 7 through 12, Samsung made the same argument that you go from figure 21 straight to figure 24 and didn't actually address figure 23 or the mouse hover in the petition.

[00:10:04] Speaker 00:
And the board said that was deficient.

[00:10:06] Speaker 00:
That same fact finding is relevant to whether

[00:10:11] Speaker 00:
the display of the person view is responsive to the input in the people view that gets you to the person view, which relates directly to the responsive to claim construction, which was the next issue.

[00:10:25] Speaker 03:
So I actually want to bring you back to Munsingware for a minute.

[00:10:31] Speaker 03:
So if we were to Munsingware, the two final written decisions

[00:10:42] Speaker 03:
Would we do so even for the portions of the ruling that were not appealed?

[00:10:52] Speaker 03:
I'm not aware of.

[00:10:53] Speaker 03:
I mean, that sounds like half a monsignor.

[00:10:58] Speaker 00:
I don't think monsignor directly addressed that issue.

[00:11:03] Speaker 00:
There was another case that we cited in our briefs

[00:11:53] Speaker 00:
I think the cases that most closely align with the facts in this case are the Ohio Willow Woods case, which found that collateral estoppel applies when the substantive issues are the same.

[00:12:10] Speaker 03:
I'm sorry.

[00:12:11] Speaker 03:
I'm actually just...

[00:12:14] Speaker 03:
Thinking about it a different point.

[00:12:17] Speaker 03:
So we began the discussion this morning with you about Take as an assumption that we would Affirm with respect to the cross-appeal in the apple cases that we just heard And you agreed there's nothing more to decide here and you said but please vacate the board's decisions at the time of that exchange

[00:12:43] Speaker 03:
I was thinking this is a binary thing.

[00:12:45] Speaker 03:
You either vacate the decision or you don't vacate the decision.

[00:12:50] Speaker 03:
And now I'm focusing on the possibility, which I've never thought of before, of vacating the decision with respect to those rulings that were live on appeal as opposed to those rulings that were final because they haven't been appealed like

[00:13:12] Speaker 03:
228, 15.

[00:13:15] Speaker 03:
Is that?

[00:13:15] Speaker 03:
No, 228, 18, 19.

[00:13:17] Speaker 03:
Sorry.

[00:13:18] Speaker 00:
I think that would be a correct application of the law on that issue.

[00:13:24] Speaker 00:
OK.

[00:13:24] Speaker 00:
OK.

[00:13:24] Speaker 00:
OK.

[00:13:24] Speaker 02:
Can I just ask you, the simultaneity issue that goes to the construction of people view, is that right?

[00:13:32] Speaker 02:
That's correct.

[00:13:33] Speaker 02:
The red brief at 23 has this example of an embodiment in which the names are displayed by fading in one at a time.

[00:13:41] Speaker 02:
and they say there's nothing in the record to indicate that that would not be within the scope of a properly construed sense of this term.

[00:13:50] Speaker 02:
What's your response to that?

[00:13:52] Speaker 00:
We disagree.

[00:13:53] Speaker 00:
So our view is that the claim set forth a particular navigation or flow through different views, and the claim set forth all of the contents that need to be within those views.

[00:14:07] Speaker 00:
The claims also recite that

[00:14:10] Speaker 00:
the view needs to be displayed responsive to a particular input.

[00:14:15] Speaker 00:
And when you look at the claims and the context of the description, which explains that the purpose of the invention is to help users navigate through all of their photos in an efficient manner and get all of the information that they want to get out of them, that it requires that all of the

[00:14:36] Speaker 00:
the features of the claims be viewable to the user in response to that particular input.

[00:14:42] Speaker 00:
So it's a combination of the claims themselves, setting out all of the components, the intrinsic record, which explains what the purpose of the invention is,

[00:14:57] Speaker 00:
all of the examples of how the people view works in the invention.

[00:15:02] Speaker 00:
And this is something that the board found goes straight.

[00:15:06] Speaker 02:
Do you also need us, because you said responsive to a couple of times in your answer, do you need us to also agree with you on the proper construction of responsive to, or is that a fully independent issue than the people view construction?

[00:15:21] Speaker 00:
We don't think it's necessary to decide responsive to to reach the correct result of

[00:15:26] Speaker 00:
simultaneity with respect to the people view, but we do think it aids in understanding the full scope of the claims, that when you look at all of the words and context and give all of them meaning, that it requires the result of simultaneity in the display of each of the components in the people view.

[00:15:49] Speaker 03:
You have run out of time.

[00:15:52] Speaker 03:
I will restore your rebuttal time and let's hear from the other side.

[00:15:58] Speaker 00:
Thank you.

[00:16:26] Speaker 01:
Please.

[00:16:27] Speaker 01:
May it please the court.

[00:16:28] Speaker 01:
Christopher Dreier on behalf of Samsung Electronics.

[00:16:31] Speaker 01:
I'm going to start with the issue of the relationship to the 228 decision on claims 18 and 19.

[00:16:37] Speaker 01:
That's sort of the focus of my colleague's argument.

[00:16:39] Speaker 01:
And then I'll turn to the two interrelated claim construction issues.

[00:16:44] Speaker 01:
First of all, the answer to your question, Judge Feranto, is can there be preclusion where the board itself distinguished, I think, between

[00:16:57] Speaker 01:
what Judge Start kind of characters as a pleading defect and an ultimate determination on the merits is no.

[00:17:02] Speaker 01:
And I think the Jones case is really on point here, where it says that when a tribunal itself says it's not deciding an issue, that issue can't give rise to preclusion.

[00:17:17] Speaker 01:
And I think that's a bright line rule.

[00:17:20] Speaker 01:
Memory Web hasn't cited anything that creates an exception to it.

[00:17:26] Speaker 01:
And I think it has to be a bright line rule, because the whole purpose of these preclusion doctrines is to establish certainty and finality, which would be disturbed if everything that a tribunal says about what it decided and didn't decide has to be second guessed in a later proceeding.

[00:17:44] Speaker 01:
With respect to the question of whether there really is a distinction between deciding this fleeting defect and deciding the merits of patentability, I think there absolutely is a distinction.

[00:17:57] Speaker 01:
And I don't think.

[00:17:59] Speaker 03:
I guess what at least I was musing about

[00:18:05] Speaker 03:
was something that starts with the premise that there is such a distinction.

[00:18:10] Speaker 03:
But then the next question is, why shouldn't issue preclusion be applicable to a determination that there is a pleading defect?

[00:18:20] Speaker 03:
And if there's absolutely no material difference between the pleading in case one and the pleading in case two, then there's got to be the same pleading defect in case two.

[00:18:32] Speaker 03:
That's what at least I was focusing on.

[00:18:33] Speaker 01:
I think on a record where that issue was squarely presented, that might be correct.

[00:18:41] Speaker 01:
A pleading defect in a prior decision would be determinative of an identical pleading in a later or simultaneous decision.

[00:18:49] Speaker 01:
That's not really what we have here, because the reason I think that the board ultimately reached these allegedly inconsistent results is because Memory Web itself framed its arguments differently.

[00:19:03] Speaker 01:
So the board was responding to a different record

[00:19:07] Speaker 01:
in making its determination on claims 18 and 19 than it was when it was making its determination on claims 72.

[00:19:15] Speaker 03:
So I guess I'm a little confused about why you're focusing.

[00:19:21] Speaker 03:
on what memory web did.

[00:19:24] Speaker 03:
So I took it that the board said in the 228 proceeding with respect to 18 and 19, your petition was defective, to use that term insufficient.

[00:19:39] Speaker 03:
Well, your petition on the 658 on

[00:19:44] Speaker 03:
these other claims, 8 through 12, I guess, is not materially different.

[00:19:53] Speaker 03:
QED, that must be deficient to, yes, that must be deficient to, without even looking at it again.

[00:20:03] Speaker 01:
So I think the reason is that the whole issue of there being a defect in the petition,

[00:20:09] Speaker 01:
was raised by Memory Web in the 228 patent proceeding, but was not raised by Memory Web in the 658 patent proceeding.

[00:20:19] Speaker 01:
In the 658 patent proceeding, at appendix 416 to 422, where they're addressing this limitation, it's all claim construction.

[00:20:31] Speaker 01:
There's no allegation of a pleading de facto or deficiency in the petition.

[00:20:36] Speaker 01:
Every argument they make is contingent

[00:20:39] Speaker 01:
on the board accepting their construction of responsive two.

[00:20:42] Speaker 01:
In contrast, in the 228 patent case, Memory Web specifically claimed there was a deficiency in the petition at appendix 9732.

[00:20:55] Speaker 01:
And so the board was presented with a new argument that it wasn't presented with in the 658 patent case.

[00:21:03] Speaker 01:
And it adopted that new argument.

[00:21:04] Speaker 01:
And I think the board can't really be faulted

[00:21:08] Speaker 01:
for not having in the earlier decision, remember the 658 patent decision was issued actually months before the 228 patent decision.

[00:21:18] Speaker 01:
So the board can't be faulted in the earlier decision having not foreseen this alleged pleading defect argument.

[00:21:26] Speaker 03:
We're talking here about issue preclusion.

[00:21:28] Speaker 03:
Glad all is helpful.

[00:21:30] Speaker 03:
Same thing, right?

[00:21:31] Speaker 03:
Why does it matter?

[00:21:32] Speaker 03:
Why are we talking about what the board can be faulted for having done?

[00:21:36] Speaker 03:
We're talking about whether we, as a court, are required to give issue preclusive effective to a final judgment under

[00:21:47] Speaker 03:
in the Supreme Court, B&B hardware, treating it more or less just as if it were a case number one court decision.

[00:21:59] Speaker 03:
We're the ones who would be giving issue preclusive effect, not the board.

[00:22:03] Speaker 01:
I think that's right, Your Honor.

[00:22:04] Speaker 01:
And really, the timing goes more to their alternative argument that the board needed to provide some more explanation.

[00:22:13] Speaker 01:
With respect to preclusion specifically, I think really

[00:22:16] Speaker 01:
The two principles that establish why preclusion is inapplicable here is that the board itself said it wasn't deciding patentability.

[00:22:25] Speaker 01:
That's the Jones case.

[00:22:27] Speaker 01:
And that even if somehow you could revisit that and question it and say that the pleading issue kind of bleeds over, the well-established doctrine that preclusion doesn't attach where it already has little incentive

[00:22:42] Speaker 01:
to appeal the earlier decision is really squarely on point here.

[00:22:47] Speaker 01:
And we cited the power integrations case.

[00:22:49] Speaker 01:
There, they've been found not to infringe.

[00:22:51] Speaker 03:
But you didn't lack for incentive until 18 and 19 were definitively dead because of memory web's decision not to appeal.

[00:23:03] Speaker 01:
Well, the doctrine is not limited to a situation where literally there is no risk left.

[00:23:09] Speaker 01:
It's a situation where there is

[00:23:12] Speaker 01:
diminished, substantially diminished risk.

[00:23:16] Speaker 01:
And certainly at the time that we would have been bringing a hypothetical cross appeal, we had the Apple decision in hand.

[00:23:23] Speaker 01:
We knew that the board had found those claims unpalatable.

[00:23:27] Speaker 01:
We could read the decision and see that it was unlikely to be appealed and unlikely to be reversed on appeal, even if it had been.

[00:23:34] Speaker 01:
And that is really closely analogous

[00:23:38] Speaker 01:
I think, to the power inaugurations case, where the party had been found not to infringe.

[00:23:43] Speaker 01:
The difference is, here, the claims had independently been found unpatible.

[00:23:48] Speaker 01:
So I think those two doctrines really provide the clearest reason why collateral support can't attach here.

[00:23:57] Speaker 02:
In response to Judge Toronto's questions, you went to differences in memory web's responses to your two petitions.

[00:24:04] Speaker 02:
Should I understand you do not dispute that the two petitions were substantively, materially, in all respects, identical?

[00:24:14] Speaker 01:
I think with respect to what the petition said about why these particular limitations were satisfied, I would have to concede that.

[00:24:24] Speaker 03:
Would you like to, or can you please talk about the simultaneity issue?

[00:24:31] Speaker 01:
Yes, I would love to turn to that.

[00:24:34] Speaker 01:
I think where I'd like to start with the simultaneity issue is to really frame how narrow the dispute here is.

[00:24:44] Speaker 01:
And the best place to do that is at appendix 69, 48, and 49.

[00:24:51] Speaker 01:
which is from the oral hearing.

[00:24:53] Speaker 01:
This is Memory Web's counsel's explanation of what its claims do cover.

[00:25:04] Speaker 01:
Memory Web says that what is contemplated by the claims includes a situation where not all of the elements of a view.

[00:25:15] Speaker 03:
I'm sorry.

[00:25:17] Speaker 03:
Where exactly?

[00:25:19] Speaker 01:
Am I so if we're on 69 48 yes line line Really three to fourteen okay, thank you and what memory webs council said is What was contemplated by the claims is the view if you first what is delivered by the application the user interface device and

[00:25:46] Speaker 01:
So there will possibly be situations where there are more photos that can be played on the actual screen.

[00:25:52] Speaker 01:
So scrolling down, that's permitted under their reading of the claims.

[00:26:00] Speaker 01:
That's exactly the same as the prior art, where all that is alleged, even by memory web, to be needed is scrolling over the thumbnail, and then the name is displayed.

[00:26:17] Speaker 03:
I think I understood how important this focus is on scrolling, which can mean maybe a couple of different things, I'm not sure.

[00:26:28] Speaker 03:
And I kept wanting to hear more about the innards, the mechanics of sending something to the screen,

[00:26:41] Speaker 03:
scrolling as though you've got some giant photo in front of you, but of course your field of vision is this, so you have to look around.

[00:26:50] Speaker 03:
Is that different from an action that sends this and another action that sends this other piece?

[00:27:01] Speaker 03:
didn't see what I was looking for to get a explanation of how what intuitively as a regular computer user seem like different things.

[00:27:16] Speaker 03:
So can you help me out there?

[00:27:19] Speaker 03:
Well, I think the board's position, did the board say kind of a sequence of separate clicks for item number one and item number two and item number three and item number four?

[00:27:33] Speaker 03:
They're really two pairs, isn't it, right?

[00:27:36] Speaker 03:
And they can be nowhere in the user's computer

[00:27:42] Speaker 03:
I'm all at the same time in whatever part of like the cash for the screen.

[00:27:51] Speaker 03:
Help me out.

[00:27:51] Speaker 01:
I don't think the board reached that level of granularity.

[00:27:54] Speaker 01:
And I think what's, and I don't honestly, I don't think that was really briefed or argued by the parties are developed, which is probably why you were looking forward and not finding it.

[00:28:06] Speaker 01:
And I think there's very good reason.

[00:28:07] Speaker 01:
why that's nowhere in the record, because it's also nowhere in the memory web patterns.

[00:28:12] Speaker 03:
What happens, technically, if you know, when the mouse scrolls over a particular spot on the screen in the accused software?

[00:28:26] Speaker 01:
So in the prior art, the example is the mouse scrolls over the thumbnail.

[00:28:33] Speaker 01:
And then that causes the associated information, which can be a name, to be displayed.

[00:28:39] Speaker 01:
And what's technically happening under the hood, I think probably could be implemented in a variety of different ways.

[00:28:45] Speaker 01:
But one straightforward implementation would be that all the information is sent to the device, and the device contains software instructions which tell you which pieces of the information are being displayed when.

[00:29:01] Speaker 01:
And so when you scroll over the face, it shows the name that is associated with the face.

[00:29:09] Speaker 01:
And then when you scroll over to another face, that name disappears and a different name appears.

[00:29:14] Speaker 01:
Could it be implemented a different way under the hood?

[00:29:16] Speaker 01:
I think it probably could be.

[00:29:18] Speaker 01:
Neither the patents nor the prior art get into those implementation details, which I think really goes to the fact that those implementation details can't be what the claims turn on.

[00:29:30] Speaker 03:
And this is really a claim construction point, is that right?

[00:29:34] Speaker 01:
I think it is a claim construction point.

[00:29:35] Speaker 03:
And was there testimony from, or I don't mean live witnesses, but testimony either written or oral by

[00:29:47] Speaker 03:
people talking about what a skilled artist would understand about being on the screen and how scrolling down to the bottom, up and down is a quite different thing from rolling the mouse over a spot.

[00:30:03] Speaker 01:
I don't think there is testimony distinguishing those two things.

[00:30:06] Speaker 01:
I think there was certainly expert testimony on both sides agreeing that the scrolling down would be covered.

[00:30:16] Speaker 01:
But there is no expert testimony really explaining how scrolling over a thumbnail somehow is.

[00:30:22] Speaker 01:
is different in a way that matters to the claim language.

[00:30:25] Speaker 02:
But there is intrinsic evidence on this claim construction dispute, and it seems to cut against you.

[00:30:30] Speaker 02:
The claim uses and as a connection between the four items.

[00:30:37] Speaker 02:
I think all the disclosed embodiments in the patents that are being challenged show all four things at the same time.

[00:30:47] Speaker 02:
Isn't that pretty powerful intrinsic evidence against you?

[00:30:50] Speaker 01:
I don't think so.

[00:30:51] Speaker 01:
And first of all, of course, you're on a note that we don't limit patents to the disclosed volumes.

[00:30:55] Speaker 01:
We apply that plainly.

[00:30:56] Speaker 01:
We don't ignore it either.

[00:30:57] Speaker 01:
But I think the more important thing is that the patent also says that all of the photos are part of the view.

[00:31:04] Speaker 01:
But it also teaches that you might have to select between 20 or 50 or 100 of them to be displayed at once.

[00:31:13] Speaker 01:
So all of them are part of the view, just like those four things.

[00:31:17] Speaker 01:
And yet the patent explicitly contemplates that you might have to click through multiple pages to see all of them.

[00:31:23] Speaker 01:
So that's really a powerful piece of intrinsic evidence, we think, that shows why additional user interaction can't be precluded, because you'd be weeding out all of the embodiments where you have more photos than are being showed per page.

[00:31:40] Speaker 03:
Can I just ask you, what's your take on, I hope you understand this shorthand, partial Munsonware?

[00:31:47] Speaker 01:
I think partial monsoon wear in theory is permissible.

[00:31:51] Speaker 01:
I don't think it's really appropriate in this case where the request was made for the first time an oral argument.

[00:31:59] Speaker 01:
And I think it implicates some really complicated issues about what effect that would have on

[00:32:06] Speaker 01:
Hatton Office regulations about adverse judgment and sort of distinct from normal collateral estoppel effects, I think if the court was going to decide that issue, it should do it in a case where it was really brief from the outset and not raised for the first time argument.

[00:32:22] Speaker 02:
Does that answer go to everything about what the proper disposition would be here in a world with, by assumption, if we did in the first case, affirm on the cross appeal?

[00:32:34] Speaker 02:
That is, do you oppose a vacate and remand with directions to dismiss?

[00:32:41] Speaker 01:
I think we do oppose it on the ground of forfeiture.

[00:32:45] Speaker 01:
That said, of course the court has discretion to excuse it and to nevertheless entertain the request.

[00:32:51] Speaker 01:
I do think as to the claims that were not even appealed in the Apple IPR, I don't think it would be appropriate there because, of course, Munsonware is only available in happenstance situations.

[00:33:04] Speaker 01:
And as to those other claims, it was really Memory Web's conscious choice not to appeal them, which resulted in the mootness.

[00:33:11] Speaker 01:
And I think that puts it more in the US Bancorp

[00:33:14] Speaker 01:
case than in the Monsignor situation.

[00:33:54] Speaker 00:
There are two key issues that I'd like to respond to in relation to counsel's arguments.

[00:34:02] Speaker 00:
They directed you to the appendix 416 through 417 to argue that memory web's arguments with respect to claims 7 through 12 were different in the 658 IPR than the 228 IPR.

[00:34:19] Speaker 00:
APPX 416 through 417 is the board's rehearing decision, and it addressed a very limited issue that was raised in our rehearing briefs.

[00:34:29] Speaker 00:
Those are not part of the record, but it's clear if you read the rehearing decision that the only issue we raised in the rehearing briefs was that the board's decision was incorrect because it overlooked the responsive to issue.

[00:34:49] Speaker 00:
The patent owner responses were very similar for claims 7 through 12 in the 658 and the claims 18 through 19 for the 228.

[00:35:03] Speaker 00:
The patent owner response that addressed claims 7 through 12 in the 658 proceeding are not part of the record, but I can represent to you that

[00:35:13] Speaker 00:
The arguments were the same.

[00:35:14] Speaker 00:
Relying on the rehearing decision at 416-3417 doesn't accurately characterize the arguments that we made below.

[00:35:24] Speaker 00:
The other issue I wanted to address was your question about whether any expert testimony is in the record relating to the difference between a scroll and a mouse hover.

[00:35:35] Speaker 00:
And I respectfully submit that there was.

[00:35:38] Speaker 00:
MemoryWeb's expert, Dr. Reidman.

[00:35:41] Speaker 03:
Are you about to point us to a JA page or just in the record but not in the JA?

[00:35:46] Speaker 00:
It is in the record 5980 through 5981.

[00:36:00] Speaker 00:
I'm sorry, I gave you the wrong pages, but it's not too far from that.

[00:36:21] Speaker 00:
It is $59.93 through $59.94.

[00:36:28] Speaker 03:
OK, and what do you want to tell us about that?

[00:36:32] Speaker 00:
So here, Dr. Reidman distinguished between a hover action.

[00:36:36] Speaker 00:
He explains that with the hover action, and this is in particular on 5994, page 90, starting at line one.

[00:36:47] Speaker 00:
The hover action would be where it's bringing additional material that was not intended to be displayed.

[00:36:53] Speaker 00:
That user action is bringing in additional material.

[00:36:56] Speaker 00:
And he distinguishes that from a scroll.

[00:37:01] Speaker 00:
He does that also on 5994.

[00:37:06] Speaker 00:
page 90, starting at line 10, where he says, but something like a scroll, I believe, would be different, and that the application view has all of the content displayed.

[00:37:17] Speaker 00:
And he explains that that's different than a hover or click where the user is actually requesting additional information to be loaded.

[00:37:26] Speaker 00:
He expands on that at page 90, lines five through nine, at 8PPX 5994.

[00:37:37] Speaker 00:
And so I think Your Honor is getting to the precise issue, which is, what is the difference between a view and a screen, and are they the same?

[00:37:49] Speaker 00:
And our view is that they're different, that a view is not necessarily a screen.

[00:37:53] Speaker 00:
In some cases, it will be.

[00:37:55] Speaker 00:
But in other cases, it will be different.

[00:37:57] Speaker 00:
If you're looking at photos on a smartphone display, it's much smaller.

[00:38:02] Speaker 00:
And so you can't see all of the information without performing some user interaction.

[00:38:07] Speaker 00:
The information is already there.

[00:38:09] Speaker 00:
The user is just scrolling to see the information that is already in the viewer.

[00:38:14] Speaker 03:
I guess in the way I'm thinking about it, a lot is built into the meaning of the word there.

[00:38:24] Speaker 00:
That's kind of what I want to know.

[00:38:26] Speaker 03:
I mean, not necessarily here, but in a cache that's just, you know, moving things around or outside the cache and has to be loaded into the cache from some other place or I'm not sure what the there is.

[00:38:41] Speaker 00:
I agree with you that the experts didn't go into that level of detail about the difference between a scroll and a hover.

[00:38:51] Speaker 00:
I would respectfully submit that it's at least implied in Dr. Reinman's testimony where he is distinguishing between a hover and a hover.

[00:39:02] Speaker 00:
and the scroll, and that at least what's implied, in my view, is that a hover, and even counsel conceded it, that there are at least some examples where a hover requires pulling information that is not there from an external source in order for it to be actually viewed in the view.

[00:39:24] Speaker 00:
Whereas with scrolling, it would already be there.

[00:39:28] Speaker 03:
OK, I think we're all done.

[00:39:31] Speaker 03:
Thank you to all counsel.

[00:39:32] Speaker 03:
The case is submitted.