[00:00:36] Speaker 04:
Our next case for today is 2018-1065, IBM v. Yanko.

[00:00:45] Speaker 04:
Mr. Is it Oseyev?

[00:00:47] Speaker 01:
Oseyev, Your Honor.

[00:00:49] Speaker 04:
Mr. Oseyev, please proceed.

[00:01:09] Speaker 01:
May it please the court, Karima Usaya for IBM.

[00:01:12] Speaker 01:
Your honor, I'd like to focus on two reasons for reversal here today.

[00:01:17] Speaker 01:
First, with respect to the Sonata decision, the board misconstrued the term federated computing environment, and that warrants reversal.

[00:01:26] Speaker 01:
And second, with respect to Melmer, the board relied on a lack of evidence, rather than substantial evidence, in that too warrants reversal.

[00:01:35] Speaker 01:
With respect to Sonata,

[00:01:36] Speaker 01:
This presents a somewhat unique situation in which the petitioner below Priceline, IBM, and both experts all agreed on a definition of federated computing environment.

[00:01:49] Speaker 01:
All of them agreed that it must require two enterprises, citing a specific passage from the specification.

[00:01:56] Speaker 01:
Yet despite that evidence where everyone agreed, the board in its final written decision construed federated computing environment to be much more broad

[00:02:05] Speaker 01:
to encompass any two computers, even if they're within the same enterprise.

[00:02:10] Speaker 02:
You're not suggesting that the board is bound on the legal question of claim construction to the positions being argued by the parties, are you?

[00:02:21] Speaker 02:
We certainly aren't.

[00:02:23] Speaker 01:
That's correct.

[00:02:24] Speaker 01:
The board is not bound by what the parties proposed.

[00:02:28] Speaker 01:
However, our argument is, first of all, the construction's wrong.

[00:02:32] Speaker 01:
And second of all, it's a violation of IBM's due process rights to not even have noticed beforehand that claim construction could possibly be at issue.

[00:02:41] Speaker 02:
I'm not sure what is that, what the relevance of your process argument is.

[00:02:51] Speaker 02:
We have a claim construction dispute that we can perfectly well decide.

[00:02:57] Speaker 02:
We decide you're right, the board is right.

[00:03:00] Speaker 02:
I don't understand what additional role the procedural issue plays.

[00:03:03] Speaker 02:
It's certainly not that you didn't get a chance to put on evidence of what Sonata shows under your claim construction.

[00:03:12] Speaker 02:
You did.

[00:03:13] Speaker 02:
You assumed your claim construction.

[00:03:15] Speaker 02:
So what is the relevance of that?

[00:03:20] Speaker 01:
Your Honor, the relevance is if IBM could not have predicted that the construction would be significantly broader.

[00:03:27] Speaker 01:
It's similar to the case of SAS.

[00:03:29] Speaker 01:
where because the argument was not an issue, IBM did not think about what types of arguments would have to be made in the alternative where a construction could not have been expected.

[00:03:42] Speaker 01:
So IBM put a lot of arguments in the basket of under this construction that everyone agrees on, there's no anticipation.

[00:03:50] Speaker 01:
But now that the construction was changed at the last minute without warning, then those arguments no longer have

[00:03:57] Speaker 01:
have merit if the board is correct, which we would disagree with.

[00:04:01] Speaker 03:
If the board is correct, what possible arguments would you have that Sonata doesn't anticipate?

[00:04:06] Speaker 01:
If the board is correct, then we would say that the case should be remanded so that IBM could have an opportunity to address the case.

[00:04:14] Speaker 03:
I know that's your position.

[00:04:15] Speaker 03:
I'm asking what possible argument could you make if entities is the correct construction and that a federated system can include

[00:04:25] Speaker 03:
you know, multiple computers inside a single enterprise.

[00:04:30] Speaker 03:
I'm just asking you right now, why doesn't Sonata have that?

[00:04:33] Speaker 01:
Your Honor, one of the arguments we could make concerns conception and reduction to practice.

[00:04:38] Speaker 01:
And in fact, below, under the construction where something is, where a federated computing environment is broader, it would be easier to show conception and reduction to practice.

[00:04:51] Speaker 01:
In fact, Priceline below argued that

[00:04:54] Speaker 01:
the conception was not actually a true conception of reduction of practice because the term federated computing environment must require more than one enterprise.

[00:05:04] Speaker 01:
So because of that argument, the case could have turned out differently.

[00:05:09] Speaker 01:
And furthermore, I would argue that

[00:05:13] Speaker 01:
That is precisely the problem is that IBM would have to develop those arguments and come up with a different position.

[00:05:21] Speaker 01:
We could have allocated briefing differently if we had expected a different definition of federated computing environment.

[00:05:27] Speaker 03:
And just looking at this patent specification, it's a little messy.

[00:05:34] Speaker 03:
It's a little hard to read because it uses terms like enterprises, organizations, institutions,

[00:05:43] Speaker 03:
entities, providers, parties, and domains.

[00:05:51] Speaker 03:
The author of this patent seems to swim back and forth between a lot of terms that are rather abstract.

[00:05:59] Speaker 03:
And so therefore, it's hard to tell what's the right way to think of the claim construction here.

[00:06:09] Speaker 01:
Your Honor, there are some passages which are crystal clear, though.

[00:06:12] Speaker 01:
And I would direct your honor to appendix 1119 at 27 to 8, which says that federated trust domains are those that cross enterprise boundaries.

[00:06:25] Speaker 01:
So that's clear distinguishing the particular type of federated environment as opposed to a normal environment.

[00:06:32] Speaker 03:
Yes, then there's the other passage, right, that the board latched onto at column 10, which talks about

[00:06:41] Speaker 03:
Federation is a set of distinct entities, such as enterprises, organizations, institutions, et cetera.

[00:06:48] Speaker 03:
And so then it makes you wonder, OK, is the term entities, which apparently encompasses a variety of things like enterprises, organizations, and institutions, is necessarily a broader term than enterprises?

[00:07:04] Speaker 03:
And then the next question is, assuming it is, how far does that go?

[00:07:10] Speaker 03:
And could it be so broad that in fact encompasses subsystems within a single organization or unit or enterprise?

[00:07:21] Speaker 01:
Your Honor, there's a couple of responses to that passage.

[00:07:24] Speaker 01:
The first is when it says such as enterprises, organizations, and institutions, it's telling you the type of entities that qualify in a federated computing environment.

[00:07:35] Speaker 01:
It's not saying that all entities necessarily qualify.

[00:07:38] Speaker 01:
The second is that

[00:07:40] Speaker 01:
In that same sentence, the part that the board does not cite, it says that a federated computing environment differs from a typical single sign-on environment in that the two enterprises need not have a direct pre-established relationship.

[00:07:54] Speaker 01:
So it's telling you in the rest of that sentence that it's talking about interactions between enterprises.

[00:07:59] Speaker 01:
Those are all examples of synonyms of enterprises, organizations, institutions, et cetera.

[00:08:04] Speaker 01:
They're not two computers within the same

[00:08:07] Speaker 01:
organization within the same enterprise, that would be much too broad.

[00:08:13] Speaker 03:
Just maybe on a network level, computer science level, is there any meaningful distinction between engineering this sign-on process between two computers that happen to be in a single enterprise versus two computers that are part of two separate enterprises?

[00:08:37] Speaker 01:
Yes, your honor.

[00:08:37] Speaker 01:
Those are discussed in column one of the patent, which talks about how within an enterprise, it's easy to do single sign-on, because everything works on the same network, and it's all organized by the same people.

[00:08:50] Speaker 01:
However, when you go beyond a single enterprise, users still expect an easy single sign-on process, but it's much more difficult because you reach problems of compatibility and of trust.

[00:09:01] Speaker 01:
And that's what the patent's about.

[00:09:03] Speaker 03:
We're running out of time.

[00:09:04] Speaker 03:
Could you get to Milmer?

[00:09:06] Speaker 01:
Yes, your honor.

[00:09:06] Speaker 01:
Specifically, with respect to Milmer, the problem is that the board relied on a lack of evidence rather than substantial evidence.

[00:09:14] Speaker 03:
The board found that even though everyone agrees that the user must participate in the process of... Are you saying that the only way that the reference could meet the limitation is if the Milmer reference said, we have an access card here, and by the way, this access card does not have credential information contained in it?

[00:09:36] Speaker 01:
No, Your Honor.

[00:09:36] Speaker 03:
That's the only way it's going to open?

[00:09:38] Speaker 01:
No, Your Honor.

[00:09:38] Speaker 01:
That is not our position.

[00:09:40] Speaker 01:
Our position, however, is when IBM comes up with affirmative evidence and says, here's evidence that access cards actually do have credentials, incites passages from Melmer telling us that it does.

[00:09:51] Speaker 03:
And the other scenarios you're talking about, not the no account with the partner site scenario.

[00:09:56] Speaker 01:
Correct, Your Honor.

[00:09:58] Speaker 01:
However, it's all part of the same flow, which no one disputes.

[00:10:01] Speaker 01:
It's on page 16 of our brief.

[00:10:04] Speaker 01:
It's all part of the same flow.

[00:10:07] Speaker 01:
So what that means is in order to believe the other side, you'd have to imagine that access cards are suddenly something completely different halfway through the flow of what is going on.

[00:10:18] Speaker 01:
And furthermore, what Priceline says is not that they don't have credentials in that flow, but rather Melmer is silent as to what information is included in the access card or what.

[00:10:33] Speaker 01:
If any authentication process is performed, that's at appendix 5436.

[00:10:38] Speaker 01:
That is a stunning admission.

[00:10:41] Speaker 01:
It is saying we don't know what, if any, authentication is performed.

[00:10:46] Speaker 01:
So I'm not here to say that no one would have to say the access card here has no credentials explicitly.

[00:10:53] Speaker 01:
But what I am here to say is that if IBM comes forward with expert testimony with the evidence that access cards have credentials elsewhere in the flow,

[00:11:01] Speaker 01:
with the fact that they're called access cards, and figure 34 shows an actual sign-on box that we need something other than a response from Priceline that simply says, it is silent about this, we don't know what authentications are happening, the burden should be on IBM.

[00:11:20] Speaker 01:
That is incorrect under in-ray magnum oil tools.

[00:11:25] Speaker 02:
Do I understand correctly that at least on occasion, and at least in recent years, the board has been pressing a view that for negative limitations, silence is enough?

[00:11:40] Speaker 01:
I'm not sure how I would characterize the typical climate here.

[00:11:49] Speaker 01:
But I think that one way to view it is that to compare in Ray Cray, which the director cites, and in Ray Magnum oil tools, which we cite, and look at the two situations.

[00:12:01] Speaker 01:
And in Ray Cray, there was affirmative evidence of a motivation to combine, and the patentee was not able to rebut that evidence.

[00:12:10] Speaker 01:
And that was not shifting of the burden.

[00:12:12] Speaker 01:
here like in Ray Magnum oil tools and indeed the types of quotes we see are just like the types of quotes cited in in Ray Magnum oil tools.

[00:12:21] Speaker 02:
There's a situation where we came forward with affirmative evidence and the only can I ask you do you think that in an IPR context the fairly well established proposition most recently relied on

[00:12:34] Speaker 02:
by this court in Southwire and then in Ray Best that for an inherency inquiry where experiment is necessary to figure out whether some piece of prior art has some now claimed property and where it's old law that says if there's a sufficient prima facie case that it looks like it might have that property, then the actual burden shifts

[00:13:03] Speaker 02:
to the other side to sit, to show that it doesn't because the PTO can't do experiments and the party can.

[00:13:11] Speaker 01:
Your honor, I do not believe this is a situation which we need to look to experiments.

[00:13:16] Speaker 01:
I think this is more analogous to dynamic drinkware where it talks about if we come forward with the burden of production saying here's a reason why access cards have credentials.

[00:13:28] Speaker 01:
Here's expert testimony.

[00:13:30] Speaker 01:
Here's analysis.

[00:13:31] Speaker 01:
The response, the burden always remains with the petition.

[00:13:38] Speaker 02:
And the board did not really address that evidence that ultimately relied on the silence idea in this case?

[00:13:47] Speaker 01:
In this case, the board ultimately relied on the silence idea.

[00:13:51] Speaker 01:
Specifically, the conclusion of the board's analysis was, quote, the absence of sufficient evidence showing the provision or validation of a set of credentials

[00:14:00] Speaker 01:
at the partner site.

[00:14:01] Speaker 01:
And that's Appendix 67.

[00:14:02] Speaker 02:
But is that a finding about your evidence?

[00:14:08] Speaker 01:
No, Your Honor.

[00:14:09] Speaker 01:
I think that's a finding that there's no evidence at all.

[00:14:12] Speaker 01:
And if Melmer doesn't teach us whether there's a second authentication, it can't anticipate.

[00:14:17] Speaker 01:
That is clear under cases like Wasica Financial.

[00:14:20] Speaker 03:
So let me see if I can understand something.

[00:14:23] Speaker 03:
Are you saying that if

[00:14:27] Speaker 03:
Let's say all those other scenarios aren't in the reference, and we just have this no account with the partner site scenario.

[00:14:35] Speaker 03:
And then the passage goes on and talks about having an access card and associating the access card with the Digital Me card, but doesn't say anything more about the content of the access card.

[00:14:48] Speaker 03:
And would it be enough for the board and the petitioner to say, there's nothing in here,

[00:14:57] Speaker 03:
about the access card containing this authentication information.

[00:15:01] Speaker 03:
And so therefore, that should be enough to establish the meeting of this negative limitation.

[00:15:10] Speaker 01:
Yes, Your Honor.

[00:15:10] Speaker 01:
I think it might be a different situation if it was simply silence and that's it.

[00:15:15] Speaker 01:
But if there was affirmative evidence, like in the other scenarios, like the expert testimony,

[00:15:20] Speaker 01:
Indeed, the fact it's called an access card and used to log into the system, i.e.

[00:15:25] Speaker 01:
another sign in, not single sign in, I think that's where you have issues.

[00:15:30] Speaker 01:
So if the reference is completely silent, I'm not here to say that the reference has to say, affirmatively, we do not meet this limitation, we do not do an authentication.

[00:15:40] Speaker 01:
But if there's evidence on the record that says,

[00:15:43] Speaker 01:
Yes, there is another authentication for multiple reasons.

[00:15:46] Speaker 04:
Okay, Mr. Uste, if you've used all your time and almost all your rebuttal time, would you like to save any time for rebuttal?

[00:15:51] Speaker 01:
Yes, Your Honor, I'll save the remainder of my time.

[00:15:52] Speaker 01:
Okay, Ms.

[00:15:53] Speaker 04:
Lateef, we'll hear from you now.

[00:16:01] Speaker 00:
Good afternoon, Your Honors.

[00:16:02] Speaker 00:
May it please the Court?

[00:16:03] Speaker 00:
The Board here properly found that Melmer and Sonata anticipate IBM's claimed invention.

[00:16:09] Speaker 00:
With respect to the federated computing environment and the construction of that term, the specification is extremely broad.

[00:16:17] Speaker 00:
And the board pointed to numerous places within the specification where the term entity was defined as a listing of things, like institutions, as Judge Chen pointed out, systems, organizations.

[00:16:30] Speaker 00:
There are also places in the specification where they talk about numerous places in the specification

[00:16:38] Speaker 00:
where the specification talks about entities being domains and systems.

[00:16:45] Speaker 00:
And so for the board.

[00:16:46] Speaker 03:
I guess my trouble is I couldn't find anything in the specification that led me to think that the inventors here were thinking about entities as individual subsystems within some larger organization, enterprise, institution.

[00:17:06] Speaker 03:
as opposed to thinking of entities as being an organization, institution, enterprise that is communicating with a separate organization, institution, enterprise.

[00:17:21] Speaker 03:
So that's the concern I have right now with the board's construction of federated computing environment.

[00:17:28] Speaker 00:
And I understand that, Your Honor.

[00:17:29] Speaker 00:
It's tough because, as I stated, this specification is so broad.

[00:17:33] Speaker 00:
But there is, on page APPX 1113, column 8, lines 35 through 36, they talk about the terms entity or party generally refers to an organization, an individual or a system that operates on behalf of an organization, an individual or another system.

[00:17:52] Speaker 00:
This notion that it has to specifically lay out that it can be two systems within one enterprise

[00:18:01] Speaker 00:
doesn't match up with what the specification says.

[00:18:03] Speaker 02:
Is there something beside that sentence which I must say I find not clarifying?

[00:18:10] Speaker 02:
Because it doesn't say an entity is any system in the sense of a physical thing.

[00:18:15] Speaker 02:
It seems to start with the controlling unit and then says, well, we include the systems of that unit.

[00:18:25] Speaker 00:
Right.

[00:18:26] Speaker 00:
And Your Honor, again, I think that's because of the way the specification is written.

[00:18:29] Speaker 00:
But there are other places that the board

[00:18:30] Speaker 00:
pointed to, in addition to that, which was also APPX 1114, column 10, line 62 to 64, where it talks about a federation being a set of distinct entities, and then it does this, et cetera.

[00:18:45] Speaker 02:
But that's the such-as point, which seems to be pointing

[00:18:51] Speaker 02:
not to the physical things, but rather to the units, if one can call them that, that are running or operating or controlling or owning the individual physical machines.

[00:19:13] Speaker 00:
I think that that might be a fair reading, but you also, the key to this invention, right, is that you have these two

[00:19:19] Speaker 00:
items, let's just say for lack of a better word right now, that have a trusted relationship among each other, right?

[00:19:25] Speaker 02:
That the requirement is that even if you look at this- Isn't the key to this that we just don't have a problem to solve when there's a single controller, I don't mean a physical controller, I mean a human or artificial legal entity controller that can make everything work together.

[00:19:44] Speaker 02:
This patent is entirely about the situation where you don't have that.

[00:19:48] Speaker 00:
That's not necessarily true that you don't have something to solve because you have a single controller.

[00:19:54] Speaker 00:
If you can think about a company that has multiple products that you still need to have sign-on access to.

[00:20:01] Speaker 00:
If you had Google and you might have to sign into Gmail, but they also have something like Pinterest and you might have to sign into that.

[00:20:11] Speaker 00:
They have ways they can create, even within themselves,

[00:20:16] Speaker 00:
They can either do it separately or they can create a way that you can sign into one through the other.

[00:20:21] Speaker 00:
For example, Facebook owns Instagram.

[00:20:25] Speaker 02:
So there may be gray area cases where, let's call them subsidiaries, might or might not be different enterprises.

[00:20:36] Speaker 02:
But two machines completely in the control of a single corporate entity?

[00:20:42] Speaker 02:
Really?

[00:20:43] Speaker 02:
Is that what this pattern is about?

[00:20:46] Speaker 00:
Based on the construction of the board, it is about, that the board found, it is two systems, again, because if you look at the claim language, the claim language is very broad.

[00:20:54] Speaker 00:
It says a federated computing environment is comprised of a first system and a second system with one or more, at least one or more systems having a processor.

[00:21:03] Speaker 00:
That is what makes up the federated computing environment.

[00:21:06] Speaker 00:
And you can have a situation like that, like in Sonata, where you have an SSO server one, and you have web applications, two or three, that are working together, as this board found,

[00:21:16] Speaker 00:
create a trusted relationship such that someone can sign into those web applications and still, and not have to use their credentials if they have access to SSO server one.

[00:21:28] Speaker 00:
That is, arguably, because SNADA doesn't say that it's within, explicitly state that it is two enterprises, that is a situation where those web applications in that SSO server one wouldn't necessarily have a trusted relationship, but for the fact that

[00:21:44] Speaker 00:
there's this creation of this federated computing environment.

[00:21:47] Speaker 00:
I think that looking at the specification, that's a fair way to read it because it's all over the place.

[00:21:53] Speaker 00:
There's times when at one minute they're using entities, times when they're using enterprises, and all the board said is you're not limited to enterprises.

[00:22:01] Speaker 00:
Enterprises is a type of entity.

[00:22:03] Speaker 00:
It's a broader way of looking at it, and that can encompass multiple

[00:22:08] Speaker 00:
readings of federated computing environment.

[00:22:11] Speaker 02:
Is there a dispute about the premise that both parties agreed that multiple enterprises were required?

[00:22:21] Speaker 00:
There's a dispute in the sense that both parties agreed that multiple enterprises are required.

[00:22:27] Speaker 00:
However, I would take issue with characterizing it as saying they had the same construction because petitioner argued whether or not the preamble limited

[00:22:35] Speaker 00:
The term to or the claim to federated computing there's no dispute about that now And the board said treated it as limiting the board treated as limiting but not to enterprises to entities So I take a little bit of issue with this notion that they had the exact same Construction, I will admit that they both said it's limited to enterprises but what you have a situation here where you have the patent owner and

[00:22:59] Speaker 00:
saying, okay, this is enterprises, and you have the petitioner saying, but it's not limiting, and the board kind of comes in the middle and says, well, it's limiting, but it's not limited to enterprises, it's limited to entities.

[00:23:10] Speaker 00:
So it's not exactly identical constructions.

[00:23:13] Speaker 03:
I guess it was identical to the extent that both parties agreed that if the preamble was limiting, then they both had the same conception of what federated computing environment meant.

[00:23:23] Speaker 03:
Does that be fair to say?

[00:23:25] Speaker 00:
That would be fair to say, however, if you look at what the petitioner did in their petition,

[00:23:28] Speaker 00:
They say if the preamble is limiting, we still believe that Sonata teaches that SSO server one is the first system and web applications two or three are the second system.

[00:23:39] Speaker 00:
So it's fair to say if it's limiting, we come to this construction, but they then also, the board supported their description of how Sonata anticipated IBM's claims.

[00:23:56] Speaker 00:
there was no dispute about it.

[00:23:58] Speaker 03:
Well, what if we were to reverse the construction here?

[00:24:02] Speaker 03:
We would have to go back, right?

[00:24:04] Speaker 03:
You're not suggesting that the board said enough that even under the narrower conception of the claim, we should go ahead and still affirm it.

[00:24:12] Speaker 00:
Absolutely.

[00:24:12] Speaker 00:
We hope that you affirm the board.

[00:24:14] Speaker 00:
But if for some reason you believe that the construction is wrong, then we would ask that it be remanded back to the board to make a finding under the construction.

[00:24:20] Speaker 03:
The petitioners are gone now, right?

[00:24:23] Speaker 00:
They are.

[00:24:23] Speaker 03:
So how would that work at the board if there's

[00:24:27] Speaker 03:
no opposing party.

[00:24:29] Speaker 00:
So there was an argument that the petitioner made with respect to Sonata being able to anticipate because it had this inherent internet.

[00:24:38] Speaker 00:
They had an inherently argument that was not decided on here by the board.

[00:24:42] Speaker 00:
We could look at the papers.

[00:24:43] Speaker 00:
There wouldn't need to necessarily be additional briefing.

[00:24:45] Speaker 00:
That's up to the board to decide how this is carried out.

[00:24:47] Speaker 00:
I'm not suggesting that I could tell the board how to do this.

[00:24:52] Speaker 03:
Isn't it typical that when parties settle and it's

[00:24:55] Speaker 03:
case an IPR is pending in front of the board, the board will terminate the IPR?

[00:25:03] Speaker 00:
The board has the option to do what they choose to do.

[00:25:08] Speaker 00:
I'm not saying they wouldn't do that as well, but they could if they wanted to go back to the way and look at the papers as they've been briefed and make a decision on whether or not the construction that has been proposed by this court

[00:25:21] Speaker 00:
would fit based on that petition.

[00:25:23] Speaker 02:
And if that occurred, there would be no estoppel effect, is that right?

[00:25:26] Speaker 02:
Because there would no longer be a final written decision?

[00:25:28] Speaker 00:
That's my understanding, Your Honor.

[00:25:31] Speaker 03:
What about Melmer?

[00:25:32] Speaker 03:
Okay, so with respect to Melmer, again, the board here was correct in finding that... Did the board cut off its analysis a little by just concluding that, well, the access card in this particular scenario doesn't say what it contains,

[00:25:50] Speaker 03:
And so I'm not going to consider the fact that the access card and other scenarios disclosed in Milmer do in fact expressly talk about having credential information contained in the access cards.

[00:26:02] Speaker 00:
I don't think it cut off its analysis, Your Honor.

[00:26:04] Speaker 03:
Well, the board didn't say anything about why this access card in this scenario should be considered unique from the other access cards in the other scenarios and somehow

[00:26:18] Speaker 03:
in the operation of logging on to the partner site in the context of this scenario, there would be no need to have the credential information in this access card as the MoMA reference talks about using and having credential information in the access cards for the other scenarios.

[00:26:37] Speaker 03:
And the board never did a compare and contrast and explained why

[00:26:43] Speaker 03:
this particular access card would be so unique to the other access cards.

[00:26:46] Speaker 00:
So I think because it's a little bit of a mistake to conflate the different scenarios as one.

[00:26:52] Speaker 00:
I know that's what IBM is asking, but Melmar is very explicit on describing different ways in which it works depending on whether or not there's a DigitalMe aware connection with the partner site or not.

[00:27:05] Speaker 00:
In this no account on the site scenario,

[00:27:11] Speaker 00:
which is the one that's the focus of the anticipation rejection, is that there, there's silence as to the access card.

[00:27:20] Speaker 00:
To go and look at another scenario and say, well, but over here, it says XYZ, doesn't really make a whole lot of sense, because Milmer could have put that in that particular scenario if that's what it wanted.

[00:27:33] Speaker 00:
And in fact, it isn't as if the board ignored IBM's experts.

[00:27:38] Speaker 00:
It looked at that evidence.

[00:27:40] Speaker 00:
heard IBM out, which is partially why they're complaining that we shifted the burden.

[00:27:44] Speaker 00:
But all it was doing is saying, look, petition approved by a preponderance of the evidence that Melmer is silent as to this issue.

[00:27:50] Speaker 00:
And nothing your experts didn't convince us otherwise.

[00:27:54] Speaker 00:
And you pointing to other scenarios within Melmer didn't convince us otherwise.

[00:27:58] Speaker 00:
And therefore, we make a finding that there is anticipation here.

[00:28:02] Speaker 00:
There wasn't burden shifting.

[00:28:03] Speaker 00:
There wasn't ignoring.

[00:28:04] Speaker 00:
There wasn't cutting off, as you suggest.

[00:28:08] Speaker 00:
They just weren't

[00:28:09] Speaker 00:
The petitioner proved its burden and the board was satisfied with that because they too didn't see anything with this access card.

[00:28:19] Speaker 03:
Do you think silence alone is enough in a reference to meet a negative limitation?

[00:28:28] Speaker 00:
Well, I don't know that the limitation is negative.

[00:28:31] Speaker 03:
In fact, the limitation is, well... It says only one authentication.

[00:28:37] Speaker 03:
Right.

[00:28:38] Speaker 03:
Which means there's not two in the sign-on process.

[00:28:43] Speaker 00:
I think silence should be enough because to have anticipation you have to prove that all the elements are present.

[00:28:49] Speaker 00:
And we've shown we have one sign-on and here we have no evidence of another sign-on.

[00:28:57] Speaker 00:
There's no reason to suggest that

[00:29:03] Speaker 00:
Melmar being silent as to that second authorization should mean something else that we should infer that oh Well, maybe there is because it doesn't say silence should be enough to answer that question for purposes of this case Do you agree that if the access card in the?

[00:29:19] Speaker 03:
No account on partner site scenario If that access card does contain Credential information then that would be sufficient to be a second

[00:29:31] Speaker 03:
authentication and therefore then defeat disclosing that particular limitation, negative limitation.

[00:29:39] Speaker 00:
I just want to read the claim for one second just to answer you because I want to make sure that I'm... It felt like the debate boiled down to whether or not the access card has confidential information.

[00:29:55] Speaker 00:
I just want to make sure there wasn't something particular to this claim that might... But I think the answer would be if

[00:30:01] Speaker 00:
If it was shown that the access card had credentials and that the second system was relying on those credentials to allow a user access, then that would be a second authorization.

[00:30:16] Speaker 00:
And if there are no further questions, I respectfully ask this court affirm the board's decision.

[00:30:22] Speaker 00:
And if you do disagree with the claim construction, I respectfully ask that you remand the case back to the board.

[00:30:28] Speaker 04:
Thank you.

[00:30:29] Speaker 04:
We'll restore and we'll give you two minutes, please, for rebuttal time.

[00:30:39] Speaker 01:
I'd like to first address the question that you asked Judge Toronto about whether the burden shifting makes sense here.

[00:30:47] Speaker 01:
We're in a situation where the PTO is faced with an experiment or a negative limitation there.

[00:30:54] Speaker 01:
There's burden shifting.

[00:30:55] Speaker 01:
And I just wanted to provide you a more clear answer that

[00:30:58] Speaker 01:
The reason why that doesn't make sense here in the IPR context is we're in an adversarial situation in which Priceline can come forward with affirmative evidence, expert testimony about experiments, et cetera.

[00:31:09] Speaker 01:
So that's the reason why that doesn't apply here.

[00:31:13] Speaker 04:
What is your view of what happens if we do remain in this case, given that you've settled out with Priceline?

[00:31:18] Speaker 01:
Well, I believe it's up to the board to decide whether it has an interest in pursuing the case in light of public interest in that sort of thing, Your Honor.

[00:31:28] Speaker 01:
Also, the other thing that I'd like to bring up is that, you know, there was some discussion about the specification of

[00:31:38] Speaker 01:
of the patent and whether it requires, you know, what the definition of federated computing environment is.

[00:31:43] Speaker 02:
Before you leave Melmer, I'm sorry.

[00:31:47] Speaker 02:
Do you have some view that if you look at the relevant flowchart with multiple scenarios in it in Melmer, that there's something that you can say there must be authentication information in the access card on that particular scenario or it wouldn't work, whatever it is.

[00:32:07] Speaker 01:
Yes, Your Honor, and specifically what it is is the fact that there's undisputed testimony that the user must set up an access card by associating their me card.

[00:32:18] Speaker 01:
And that is a but for condition for the next step in the flow chart.

[00:32:22] Speaker 03:
I thought it was the servlet that constructs the access card.

[00:32:26] Speaker 03:
But it's the user that associates that servlet constructed access card with the user's me card.

[00:32:32] Speaker 01:
correct your honor.

[00:32:33] Speaker 01:
So the servlet creates the access card, and then the user sets it up by associating with a me card.

[00:32:39] Speaker 01:
And that is a but for a condition to be logged into the system.

[00:32:43] Speaker 03:
If you think about... But that says nothing about what the access card contains.

[00:32:47] Speaker 01:
Yes, yes, your honor, that's, that's, that particular passage doesn't have anything about what the access card contains.

[00:32:56] Speaker 01:
However, because of the other information about the other flows, that tells us what the access card contains.

[00:33:01] Speaker 01:
And in fact,

[00:33:02] Speaker 01:
Priceline's only response is that Melmore doesn't tell us one way or another whether access cards contain credentials, but because if you think about it, you end up being logged into the system, and it's called an access card, and we have expert testimony saying that's the only way someone of skill in the art would interpret the reference, and the fact that the reference should be interpreted in light of what someone of skill in the art would interpret it as, and there's no response from

[00:33:31] Speaker 01:
price line on the other side all of that tells us for sure that access cards have credentials and the response is literally just silence and that's not enough.