[00:00:07] Speaker 04:
Our next case for today is 2019-1129, Robey Guides versus Comcast Cable.

[00:00:50] Speaker 03:
Your honors, may it please the court, Christina Kediano Kelly on behalf of Appellant Roevey Guides.

[00:00:57] Speaker 03:
The board final written decisions in the 866 and 867 IPRs on appeal today were based on an erroneous claim construction of the term directing an output.

[00:01:11] Speaker 03:
Roevey argued to the board as the board expressly stated in its decisions that the plain meaning of the term directing an output

[00:01:20] Speaker 03:
requires selection between two or more possible output paths.

[00:01:25] Speaker 03:
That was how the board articulated the claim construction dispute and the proposed construction before.

[00:01:29] Speaker 04:
I direct my children to all kinds of things.

[00:01:31] Speaker 04:
It doesn't mean they have choices.

[00:01:34] Speaker 03:
No, but you have the choice.

[00:01:35] Speaker 03:
You are making the choice.

[00:01:36] Speaker 03:
That is why you are the director.

[00:01:38] Speaker 04:
Yes, but why does there have to be two different choices simply when you direct someone to something?

[00:01:45] Speaker 04:
Sometimes there's no choice at all.

[00:01:47] Speaker 04:
I'm just giving you a direction to do it.

[00:01:50] Speaker 03:
Well, I think in order for the act of directing to mean something, then there needs to at least be two possible different things you might have directed.

[00:02:01] Speaker 03:
Otherwise, you may be making a statement, but if there was no other choice than to use your child analogy, if the child is going to do what the child is going to do regardless of what you say, you're not really directing.

[00:02:15] Speaker 03:
You're just

[00:02:16] Speaker 03:
making a statement and then whatever was going to happen is going to happen.

[00:02:20] Speaker 04:
That didn't work.

[00:02:21] Speaker 04:
So directing, I don't understand why directing an output of said tuner, I don't understand why that necessitates two or more choices.

[00:02:32] Speaker 04:
I just don't get it.

[00:02:35] Speaker 04:
Well, so I think the plan doesn't say choose.

[00:02:38] Speaker 03:
No it doesn't.

[00:02:39] Speaker 03:
Or something like that.

[00:02:40] Speaker 03:
It's just directing.

[00:02:42] Speaker 03:
So I think

[00:02:45] Speaker 03:
So the word directing itself, having the root word coming from direction, in order to direct something, and in order for that to be a step that takes place at a certain time in response to a certain event, there needs to be an act, a force exerted or a decision made.

[00:03:04] Speaker 03:
And in order for that decision to have meaning, you have to be selecting between two other

[00:03:09] Speaker 03:
to potential different outcomes.

[00:03:11] Speaker 04:
But I'm not sure why that is when this is a claim that articulates all of the things that are supposed to occur in a method and really what is the device that's going to be performing those actions, right?

[00:03:23] Speaker 04:
So it's an interactive television programming guide said method comprising and then it says receiving, storing, causing, receiving, receiving, directing.

[00:03:35] Speaker 04:
I mean, I don't see how when you're just saying, when you're articulating who has to happen and the order in which it has to occur, I'm not sure I understand why the word necessarily requires two or more options.

[00:03:50] Speaker 03:
So even if this court doesn't think that the selection of two or more possible output paths is the proper claim construction,

[00:04:00] Speaker 03:
giving this term any meaning at all, just giving it the meaning that it is an action step, an action that is performed at a certain time by a certain component, is still giving it more meaning than the board gave it.

[00:04:14] Speaker 03:
Because the board essentially said this term has no meaning at all.

[00:04:18] Speaker 03:
in saying that it does not exclude embodiments that have dedicated output paths.

[00:04:24] Speaker 04:
If you have a dedicated output path... Well, a dedicated output path is still directing something, right?

[00:04:29] Speaker 04:
I mean, it's like when you put... I'll try another example, because we didn't do so great with my first one.

[00:04:34] Speaker 04:
But like when you're bowling, I've got a little kid.

[00:04:36] Speaker 04:
You put the bumpers up on the thing.

[00:04:37] Speaker 04:
She can't now... When those bumpers are up, she can't... What's it called when the ball goes into the little side thing?

[00:04:43] Speaker 04:
The gutter?

[00:04:43] Speaker 04:
Yeah.

[00:04:44] Speaker 04:
Yeah, she can't throw a gutter ball.

[00:04:45] Speaker 04:
Right.

[00:04:45] Speaker 04:
Sure.

[00:04:48] Speaker 04:
Her ball is still being directed down the path.

[00:04:52] Speaker 04:
There's no other place for it to go, but it's still being directed.

[00:04:56] Speaker 04:
So why isn't that consistent with what the board held here?

[00:05:00] Speaker 03:
Well, so I think that example shows that the bumpers that go in the gutters, the bumpers are directing the ball towards the pins by removing.

[00:05:12] Speaker 03:
No, actually, it's her throw.

[00:05:13] Speaker 03:
Yes, but in any event.

[00:05:16] Speaker 03:
So I think in that analogy though, I would say the thing that is doing the directing is the bumpers.

[00:05:22] Speaker 03:
The bumpers direct the ball towards the pins by removing the output path of the gutter.

[00:05:28] Speaker 03:
So before there were two options, or actually three because there's two gutters, but you could go in the gutter or you could hit the pins.

[00:05:35] Speaker 03:
The bumpers direct the output of the ball by directing it to the pins instead of allowing it to go in the gutter.

[00:05:41] Speaker 04:
That's what directing an output means.

[00:05:56] Speaker 03:
For the step of directing an output to have any meaning whatsoever, it cannot read on something that has a dedicated output path.

[00:06:04] Speaker 03:
Because where you have a dedicated output path, the fate of the input to the output is hardwired into the system.

[00:06:12] Speaker 03:
It exists at all times.

[00:06:14] Speaker 03:
It is not in response to any particular event.

[00:06:16] Speaker 03:
So if you look at, for instance, the dependent claims, which add.

[00:06:21] Speaker 04:
But that's the thing.

[00:06:21] Speaker 04:
When something is hardwired,

[00:06:23] Speaker 04:
you know, just pushing it down that hardwired path is directing it even though there's no place else it could go.

[00:06:29] Speaker 04:
It's still being directed from maybe one device to another or from one place to another.

[00:06:34] Speaker 04:
The signal's being directed even though there's nowhere else the signal could go.

[00:06:37] Speaker 04:
It's still propagating down the path.

[00:06:39] Speaker 03:
But in that case, it's not being directed by an interactive program guide, which the claim requires.

[00:06:45] Speaker 03:
In that case, it's being directed simply by virtue of the existence of the hardware.

[00:06:50] Speaker 02:
And it's not being.

[00:06:51] Speaker 02:
Hang on just a second.

[00:06:52] Speaker 02:
You've got a claim.

[00:06:53] Speaker 02:
Maybe I'm looking at the wrong claim, but this is a method claim, right?

[00:06:56] Speaker 03:
Yes.

[00:06:57] Speaker 02:
OK.

[00:06:58] Speaker 02:
The only thing you've got here, you don't say what it's doing in the directing, because it's a method claim.

[00:07:03] Speaker 02:
And the limitation is directing an output, and then it has more language, and it says to said video recorder, and then it also says to be viewed by said display device.

[00:07:15] Speaker 02:
So there's different things being sent to different places.

[00:07:18] Speaker 02:
And it doesn't say what's doing it, and all it says is directing it, which to me says no more than sending it.

[00:07:25] Speaker 03:
So you're correct.

[00:07:27] Speaker 03:
I misspoke when I said by.

[00:07:28] Speaker 03:
I should have said with.

[00:07:30] Speaker 03:
If you look, for example, on page 27 of our opening brief, we reproduce the directing and output step from claim one.

[00:07:37] Speaker 03:
And we have there in red the language with said interactive television program guide.

[00:07:43] Speaker 03:
That was what I was intending to refer to.

[00:07:45] Speaker 03:
So I should have said, you are not directing dedicated output pads with hardware.

[00:07:50] Speaker 02:
So you're directing an output to be viewed to said display device with said interactive television program guide.

[00:07:57] Speaker 02:
How does the addition of the with said interactive television program guide mean that directing an output means there has to be a single dedicated line or not a dedicated line?

[00:08:12] Speaker 03:
So if there is just a single dedicated line, then the interactive program guide isn't what you are using to direct the output from the tuner to wherever the destination is.

[00:08:30] Speaker 03:
It's just the wire that connects the components is what causes the output to go from the tuner.

[00:08:35] Speaker 02:
So you're reading the language

[00:08:37] Speaker 02:
with said interactive television program guide as requiring that the interactive television program guide perform the directing?

[00:08:47] Speaker 03:
Yes.

[00:08:47] Speaker 02:
How can that be?

[00:08:48] Speaker 02:
I think what it's saying is it's going to be viewed on the display device along with an interactive television program guide, which is an image.

[00:08:55] Speaker 02:
It's a picture.

[00:09:00] Speaker 03:
So I think it's clearer if you look at the claim as a whole, because interactive television program guide is also referenced if you look in, for example, the preamble or if you look in claims nine and claims 17.

[00:09:16] Speaker 03:
They're talking about how you have this overall system.

[00:09:20] Speaker 03:
And the interactive television program guide is what is navigating this entire system.

[00:09:26] Speaker 03:
And so you receive the selection by interacting with the interactive television program guide.

[00:09:33] Speaker 03:
You direct the output through interaction with the interactive television program guide.

[00:09:38] Speaker 02:
Do you agree, though, that the interactive television program guide is something that, according to the specification,

[00:09:43] Speaker 02:
It's not only something you can interact with, but it's also something that's displayed on the television.

[00:09:49] Speaker 03:
So the interactive television guide has a user interface, and the user interface is displayed on the television.

[00:09:57] Speaker 03:
But the interactive program guide itself is the process.

[00:10:02] Speaker 03:
It's the computer process that's handling all of these procedures.

[00:10:05] Speaker 03:
And its user interface is sort of a grid that you scroll, and you have a remote control, and you can see what happens.

[00:10:13] Speaker 03:
So the user interface is part of the interactive television program guide.

[00:10:17] Speaker 03:
And part of what the interactive television program guide involves is also it is configured into the set-top box.

[00:10:27] Speaker 03:
It is configured with machine program logic, as claim 17 tells us, for making decisions like how do I accommodate particular user requests.

[00:10:39] Speaker 03:
And so if a user requests to view,

[00:10:42] Speaker 03:
particular program at a particular time, the interactive program guide will then send a command that directs a tuner to give an output to, for instance, a display at that particular time.

[00:10:55] Speaker 03:
And if the user instead

[00:10:57] Speaker 03:
selects to record a program at a particular time, the interactive television program guide, but by interfacing with it, then the control circuitry as part of that will issue a command to direct the output of one of the tuners to the recording device instead of to the display.

[00:11:15] Speaker 03:
And the fact that it has those options of going to either the display or the recording device is how you get the functionality that you can record one program while simultaneously watching another.

[00:11:28] Speaker 03:
Or you could record two programs at once, or you could have picture-in-picture display and watch two programs at once.

[00:11:35] Speaker 03:
Either way, you need to have a tuner that can be directed to accommodate

[00:11:40] Speaker 03:
the user selection.

[00:11:42] Speaker 03:
And that user selection is a previous limitation of the claims.

[00:11:46] Speaker 03:
And then directing an output happens in response to the user selection in order to accommodate that selection.

[00:11:54] Speaker 03:
I see that I'm into my rebuttal time.

[00:11:56] Speaker 03:
So if there are no further questions, I will wait.

[00:11:59] Speaker 03:
That's great.

[00:12:00] Speaker 04:
Mr. Liston, please proceed.

[00:12:08] Speaker 00:
David Listen on behalf of Comcast and may it please the court.

[00:12:13] Speaker 00:
Roevey's appeal is entirely based on the wrong interpretation of directing and output.

[00:12:19] Speaker 00:
But even if Roevey were right, the appeal still fails because two of the four grounds

[00:12:24] Speaker 00:
Disclose the switching the Roby says is required I'll start on on the directing and output because that's where the court seemed focused and I think the court put its finger on it Directing an output just means sending it or causing it to move along its path I'm not going to belabor that point with more analogies but if there were any dispute about what it means in the abstract the claims in the specification of the patent make it clear

[00:12:52] Speaker 00:
The claims recite a set-top box with two tuners, one each for the display and the video recorder.

[00:13:02] Speaker 00:
One each suggests exactly what it says.

[00:13:03] Speaker 00:
There's one tuner for the video recorder and one tuner for the display.

[00:13:08] Speaker 00:
There's no recitation of switching or selecting between different paths.

[00:13:15] Speaker 00:
Now, Roevey makes the argument that allowing for dedicated output paths makes directing an output superfluous.

[00:13:22] Speaker 00:
That's simply not true.

[00:13:24] Speaker 00:
It remains its own step.

[00:13:26] Speaker 04:
The previous step... When you say it remains its own step, does the user, for example, have to hit enter in the interactive television program guide to cause it to be directed?

[00:13:36] Speaker 04:
Is there some action that has to be taken with regard to the guide?

[00:13:40] Speaker 04:
It's not just directing, it's directing it with the guide, so that implies some action.

[00:13:45] Speaker 00:
Right.

[00:13:45] Speaker 00:
So the previous two steps are receiving the user selections of the two programs.

[00:13:51] Speaker 00:
So you have receiving the user selection of the program to record and to display.

[00:13:55] Speaker 00:
Then you have a separate step of directing the output.

[00:13:59] Speaker 00:
In that instance, the guide or the program logic, depending on the claim,

[00:14:03] Speaker 00:
is sending the output on its way.

[00:14:06] Speaker 00:
And then the next step is displaying one of the programs and recording the other at the same time.

[00:14:12] Speaker 00:
So directing an output maintains its independent meaning.

[00:14:14] Speaker 00:
It's its independent step.

[00:14:16] Speaker 00:
It's the sending of the output to the display device and the recorder.

[00:14:20] Speaker 00:
But the next step talks about actually recording and displaying at the same time.

[00:14:24] Speaker 04:
So you're saying it's still the interactive television program guide that's doing the sending.

[00:14:28] Speaker 04:
It's just there isn't a user selection option at that stage in the claim.

[00:14:33] Speaker 00:
The user selection has already occurred in the claim.

[00:14:35] Speaker 04:
Right, as I said at that stage.

[00:14:36] Speaker 04:
There's not another push button thing that has to happen for this to occur.

[00:14:41] Speaker 00:
That's right.

[00:14:42] Speaker 00:
The software receives the selection and sends it on its way.

[00:14:45] Speaker 04:
I'm just kind of baffled.

[00:14:46] Speaker 04:
How are we here on a VCR patent?

[00:14:49] Speaker 04:
I kind of feel like that may not be state-of-the-art technology.

[00:14:52] Speaker 00:
Well, and worse than that, Your Honor, the disclosure of this two-tuner embodiment is limited to one sentence in the specification.

[00:14:59] Speaker 00:
that reads a set-top box not shown may include two tuners, one each for the display and the recorder.

[00:15:09] Speaker 00:
And so, again, that suggests dedicated output.

[00:15:13] Speaker 00:
That's the extent of a two-tuner set-top box in the entire specification.

[00:15:18] Speaker 00:
And it's preceded by two other embodiments that have directed outputs.

[00:15:24] Speaker 00:
The specification says that you can connect the VCR to the television, kind of daisy chain at one after the other.

[00:15:31] Speaker 00:
It also says that for watch and record, you can connect the television directly to the antenna.

[00:15:39] Speaker 00:
Again, a dedicated output path.

[00:15:42] Speaker 00:
So there's no disclosure of switching or any requirement in the specification.

[00:15:47] Speaker 00:
there's a a related case in the district court noted in the briefs what is just out of curiosity the accused product it's essentially watching the court cable system that's the accused product uh... and

[00:16:03] Speaker 00:
And that case has stayed, but it really is.

[00:16:07] Speaker 00:
They're attempting to claim and cover all watch and record functionality based on one sentence and a specification that was not only thin, but late.

[00:16:18] Speaker 00:
That's why there are four separate grounds of obviousness that the board found, two of which actually had the switching that Roe v. Nassau required.

[00:16:26] Speaker 00:
I can touch on those briefly.

[00:16:28] Speaker 00:
I don't think there's any dispute.

[00:16:29] Speaker 04:
If you touch on anything she didn't cover, she then gets to address it in her rebuttal time.

[00:16:32] Speaker 04:
So I leave that up to you.

[00:16:33] Speaker 00:
OK.

[00:16:36] Speaker 00:
With that in mind, unless the court has any other questions, I'll cede my time.

[00:16:43] Speaker 04:
OK.

[00:16:43] Speaker 04:
Miss Kelly.

[00:16:50] Speaker 03:
Yes, so just to pick up on a few things that were said, I want to make sure that it is clear.

[00:16:58] Speaker 03:
Everybody agrees, it seems, that directing an output does have to be a separate step.

[00:17:03] Speaker 03:
I mean, I just heard opposing counsel say that it is a separate step.

[00:17:07] Speaker 03:
But if you have hardwired dedicated output pads, then directing an output is never a step that happens at a certain time in response to a certain event.

[00:17:17] Speaker 03:
There is no time before the directing an output, starting from the existence of the set-top box.

[00:17:23] Speaker 04:
Well, I understand.

[00:17:24] Speaker 04:
So you receive user selections to record, receive user selections to view.

[00:17:28] Speaker 04:
Yes.

[00:17:29] Speaker 04:
When you receive those selections, receiving isn't initiating, it isn't directing.

[00:17:35] Speaker 04:
Correct.

[00:17:35] Speaker 03:
So wouldn't there then be software that would be necessary to then direct that would be present in... According to the claims, yes, but not according to the prior art cited that has dedicated output paths.

[00:17:50] Speaker 03:
There is no event of directing the output.

[00:17:54] Speaker 02:
You're saying there's no logic at all.

[00:17:56] Speaker 03:
Correct.

[00:17:57] Speaker 03:
If the tuner outputs to a given destination and there is no machine program logic or anything involved in that, the selection... But why doesn't the wire do the directing if it's hardwired?

[00:18:10] Speaker 03:
If you want to construe the word directing very broadly and say that the wire is doing the directing, then

[00:18:17] Speaker 03:
I don't necessarily disagree with that being the outcome of a broad construction, but you're certainly not directing an output with an interactive program guide in response to a user selection, because that output is always directed, because that wire is always there.

[00:18:33] Speaker 04:
Wait, wait, wait.

[00:18:33] Speaker 04:
You just added in response to a user selection.

[00:18:35] Speaker 04:
Where is that in the claim?

[00:18:37] Speaker 03:
The dependent claims talk about directing.

[00:18:39] Speaker 04:
Yeah, but that's not claim one.

[00:18:39] Speaker 04:
And you guys told us to focus on claim one, right?

[00:18:42] Speaker 03:
Well, yes, but I think that when the dependent claims add more information to what is being directed, it also tells you what directing an output has to mean.

[00:18:54] Speaker 04:
No, it tells you that claim one has to be broader than that, which means claim one can occur in any way, whether you were selected or not.

[00:19:02] Speaker 03:
That's correct.

[00:19:03] Speaker 03:
But if your construction of directing an output in claim one is so broad,

[00:19:09] Speaker 03:
that it reads on dedicated output paths, and the dependent claims are meaningless, they're impossible, if you have dedicated output paths, then that is an indication that chances are your claim construction is too broad for claim one.

[00:19:22] Speaker 04:
No, an independent claim means precisely that things that aren't necessarily covered by the dependent claim are covered by the independent claim.

[00:19:31] Speaker 04:
But yes, I understand.

[00:19:32] Speaker 03:
I'm not disputing that.

[00:19:33] Speaker 03:
What I'm saying is,

[00:19:35] Speaker 03:
is if you have an embodiment that has a dedicated output path then a dependent claim that says directing an output at a certain time doesn't make sense anymore.

[00:19:48] Speaker 03:
Directing an output in response to something.

[00:19:51] Speaker 02:
I have a separate question, which is what about the tuners?

[00:19:55] Speaker 02:
I mean, so I don't think that this is happening automatically.

[00:20:00] Speaker 02:
According to your specification, upon receiving the viewer's channel selection, the control unit 74 causes the tuning circuitry 72 to tune to the selected channel.

[00:20:11] Speaker 02:
Why isn't that directing?

[00:20:12] Speaker 02:
Because there is no separate step between, in your claim, it says receiving a user selection

[00:20:19] Speaker 02:
And then it says directing an output.

[00:20:22] Speaker 03:
Right.

[00:20:22] Speaker 03:
Well, because directing a tuner to tune to a specific channel is a different direction than directing an output.

[00:20:29] Speaker 01:
If there's a dedicated line, it might meet the claim language.

[00:20:33] Speaker 01:
Right?

[00:20:34] Speaker 03:
Well, because I don't think so, because directing an output of the tuner to a particular destination is its own choice, regardless of what channel that tuner is tuned to.

[00:20:45] Speaker 03:
In order to direct the output of the tuner to a particular destination, you need to have at least more than one destination.

[00:20:52] Speaker 02:
But part of directing the output of the first tuner of the first television program selected to be recorded to said video recorder is the full limitation, and it could include the tuning step.

[00:21:03] Speaker 02:
That could be part of the directing, because it's a broad clause.

[00:21:06] Speaker 02:
It doesn't say just directing an output of the first tuner.

[00:21:09] Speaker 02:
It says directing output of said first tuner of said first television program selected to be recorded.

[00:21:14] Speaker 02:
I mean, there's a lot there.

[00:21:16] Speaker 03:
But I think those words add more limitations.

[00:21:21] Speaker 03:
They don't erase the limitations that were already recited, that directing an output has to be done with the interactive television program guide, that it's a separate step from receiving the user selection.

[00:21:34] Speaker 03:
And so the fact that it then goes on to talk about what is being directed and how that relates to the user selection doesn't mean that directing an output isn't its own step.

[00:21:48] Speaker 04:
Okay.

[00:21:48] Speaker 04:
Thank you, Ms.

[00:21:49] Speaker 04:
Kelly.

[00:21:49] Speaker 04:
We've exceeded our time for the day for this case.

[00:21:51] Speaker 04:
I thank both counsel.

[00:21:53] Speaker 04:
The case is taken under submission.