[00:00:01] Speaker 03:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:05] Speaker 03:
God save the United States and this honorable court.

[00:00:11] Speaker 02:
Good morning, everyone.

[00:00:12] Speaker 02:
The first argued case this morning is number 192246 and 2N Solutions LLC against Amazon.com.

[00:00:22] Speaker 02:
Mr. Henshky, please proceed.

[00:00:25] Speaker 00:
Good morning, may it please the court, I'm Mark Henschke on behalf of the patent owner in Appellant M2M Solutions.

[00:00:32] Speaker 00:
Prior to Amazon completely reversing its claim construction position at the oral hearing below, everyone agreed about the nature of the claimed embodiment that M2M's patents are directed to.

[00:00:44] Speaker 00:
We have a server that is autonomously managing consumer device assets over wireless networks by making beneficial modifications to those assets

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The server accomplishes and effectuates its managing by choosing the particular wireless management instructions to send that will cause these desired asset modifications to occur.

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Here in the claimed embodiment, the server initially receives consumer usage information from a device asset, which informs the server about the manner in which the consumer has preferred to use the asset.

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And then based on what it learns from processing the received consumer usage information,

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the server is able to autonomously make decisions about what helpful modifications it can make to the asset and what particular management instructions would be needed to effectuate those particular modifications.

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So this type of embodiment is expressly captured in the management instructions claim elements that are at issue here on appeal.

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For example, in the 358 patent,

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the claim elements explicitly require that the server's managing needs to be based upon the results of its processing of the received consumer usage information.

[00:01:57] Speaker 00:
In other words, the server's managing needs to be substantively predicated on the outcome of its processing of the...

[00:02:04] Speaker 04:
This is Judge Stoll.

[00:02:06] Speaker 04:
I'm just looking at that very claim language you're referring to and I'm wondering how you deal with the following language which you didn't mention which says it's managing by sending communications.

[00:02:20] Speaker 04:
So how do you respond to that where it's not saying, it seems that the managing is by sending based on the results of the consumer usage information.

[00:02:33] Speaker 00:
Well, the managing is occurring by virtue of the management instructions.

[00:02:39] Speaker 00:
Obviously, they need to be sent in a transmission to the device asset, but the key to accomplishing the managing is not merely the sending of the transmission, but rather the server's choice of what management instructions to include within that transmission.

[00:02:57] Speaker 04:
Let me ask you a different question.

[00:03:00] Speaker 04:
I can see your position with the 359 patent claims.

[00:03:04] Speaker 04:
There, the plain language of the claims seem to support your position more.

[00:03:09] Speaker 04:
It says, management instructions that cause the stored data content files of one or more assets to be automatically modified based upon the results of having processed at least some of the received consumer usage information.

[00:03:23] Speaker 04:
That plain language is

[00:03:27] Speaker 04:
in my view, consistent with your claim construction.

[00:03:31] Speaker 04:
One concern I have, I don't see that same kind of claim language in the other patents.

[00:03:36] Speaker 04:
That's one concern.

[00:03:38] Speaker 04:
And the other concern I have is, let's say I agree with you for the 359 patent, how am I supposed to treat your contention that all the claims have the same meaning?

[00:03:49] Speaker 04:
Is that a waiver on your part?

[00:03:52] Speaker 00:
The idea that all the same claim elements have the same scope and meaning was a position that Amazon set forth in the petition and which we largely agree with.

[00:04:03] Speaker 00:
Certainly, you pointed to the 359 patent where the language is the most expressive all, but it's equally true that in the 358 patent, if the managing itself has to be substantively predicated on the processing,

[00:04:17] Speaker 00:
There's no way that that could occur unless the management instructions, which are the sole way through which the managing is effectuated, also would need to be based upon the processing.

[00:04:29] Speaker 04:
Okay, I understand your position, but let's just say hypothetically that I think you've got a stronger position for the 359 patent, and I don't agree with you on the 358.

[00:04:41] Speaker 04:
What do I do with your agreement

[00:04:47] Speaker 04:
and suggestion that all the claims have the same meaning.

[00:04:50] Speaker 04:
Is that a waiver?

[00:04:53] Speaker 00:
Well, I don't believe it is, Your Honor.

[00:04:54] Speaker 00:
I mean, that was the position taken in the petition by Amazon.

[00:04:59] Speaker 00:
We haven't disagreed with that.

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But if the court feels that the individual patents have a different scope and wants to treat them differently, then obviously the court has the prerogative and indeed the duty to do that.

[00:05:11] Speaker 00:
So no, I don't see any sort of waiver of any point there.

[00:05:16] Speaker 01:
This is Judge Lynn.

[00:05:20] Speaker 01:
You're saying you don't see any waiver, but you just said a minute ago that this was Amazon's position and you agree with it.

[00:05:28] Speaker 00:
I agree with the idea that the claim elements in all three of these patents should be read together and should be informative of each other.

[00:05:38] Speaker 00:
And if you're trying to figure out what the 358 patent means, the language in the 359 is helpful and instructive and vice versa.

[00:05:46] Speaker 00:
And finally, you know, we haven't talked about the 07 patent, but there, again, it uses communicate language, yes, but the question is what is it that needs to be communicated?

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And what needs to be communicated is the particular management instructions themselves.

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It's the choice of what management instructions to communicate that needs to be based on the processing.

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It's not merely the sending of a transmission,

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that could contain management instructions completely unrelated to the processing and that would result in modifications to the asset that were completely unrelated to the processing.

[00:06:26] Speaker 00:
That's the way... Yes.

[00:06:27] Speaker 04:
This is Judge Stoll again.

[00:06:29] Speaker 04:
I see your statement about the claims having the same meaning on page 8 of your blue brief.

[00:06:38] Speaker 04:
And it says, M2M agrees with Amazon's further argument that, notwithstanding some minor inconsequential variations in the phrasing, the management instructions claim elements across all three challenge patents recite effectively identical subject matter and therefore should likewise be accorded the same plain scope as one another.

[00:06:57] Speaker 04:
Is that what I am to understand to be your position?

[00:06:59] Speaker 04:
I mean, it's right in your brief.

[00:07:01] Speaker 04:
That's what I understand to be that language I'm looking at to see whether you've waived an argument that these claims have different meanings.

[00:07:12] Speaker 00:
We have taken the position that all three claim elements and all three patents have the same scope and should be interpreted the same way.

[00:07:20] Speaker 00:
If the court disagrees with that, you're welcome to pick and choose which patents survive and which don't.

[00:07:27] Speaker 00:
But clearly, we believe that all of them should survive and all of them should survive by being read together and on the same basis.

[00:07:36] Speaker 00:
Now, in contrast to the management instructions needing to be based upon the results of the processing of the consumer usage information,

[00:07:46] Speaker 00:
The board's erroneous construction is that the management instructions claim elements, it's merely the server's determination to send a transmission that would need to be based on the processing of consumer usage information.

[00:08:00] Speaker 00:
So the board is reading the claims management instructions themselves as being, can be completely unrelated in any respect to the server's processing of consumer usage information.

[00:08:11] Speaker 00:
and thus that the modifications they would cause to the assets can be completely unrelated to the server's processing.

[00:08:17] Speaker 00:
And that's exactly how the board read the claims on Clova.

[00:08:21] Speaker 00:
Now Amazon's trying to say that this erroneous construction is an obligatory plain language reading of the claim language, despite the fact that Amazon itself has construed the claims as requiring the exact opposite at all previous times and agreed with our construction.

[00:08:38] Speaker 00:
Nowhere

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Do the claims state in plain language or otherwise that the server's determination merely to send a transmission is what is based on its processing of consumer usage information?

[00:08:49] Speaker 00:
Rather, the claims explicitly state that the server's managing is what needs to be so based.

[00:08:55] Speaker 00:
Now, it's true that the server manages by way of management instructions that are transmitted, but the key to accomplishing the recited type of managing is not merely the server's determination to send a transmission,

[00:09:07] Speaker 00:
but rather its decision about what particular management instructions would need to be included within the transmission so as to bring about the desired asset modifications.

[00:09:17] Speaker 00:
What Amazon now admits is that the board's erroneous construction equates to a trigger interpretation of the claim language.

[00:09:25] Speaker 00:
In other words, the board's construction allows that so long as the server's managing is merely causally triggered by its processing of consumer usage information, that's good enough and there's no need for the nature or content of the managing to be related in any way to the processing.

[00:09:42] Speaker 00:
But quite to the contrary, what the claim language and the plain language says is that the server's managing must be substantively predicated on the outcome of the processing.

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it must be quote, based upon the results of the processing.

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So in short, the board has badly misread these claim elements as merely requiring that the server's managing occur as a result of having performed processing, when in fact they quite differently require that the server's managing be based upon the results of the recited processing.

[00:10:16] Speaker 04:
Mr. Henke, this is Judge Stoll.

[00:10:20] Speaker 04:
I want to ask you a question about your alleged APA undue process violation.

[00:10:27] Speaker 04:
You cite three cases, primarily, I think, Dell, Newvasive, and Americam.

[00:10:36] Speaker 04:
But in none of these cases did the board provide an opportunity for additional briefing.

[00:10:42] Speaker 04:
Indeed, in each case, this court remanded to the board to give the parties an opportunity to respond.

[00:10:49] Speaker 04:
So here, before you get to us, you've already had an opportunity to have briefing on this claim construction issue and present your position to the board.

[00:10:58] Speaker 04:
So why, what is your claim for relief now that you've already received the relief that would be available to you under Dell, Newvasive, and Americam?

[00:11:10] Speaker 00:
Well, I'm going to argue later and rebuttal that the correct remedy here is reversal for other reasons, but with respect to remand on the APA, look, the board, the fact that the APA violations were committed is clear from the briefing.

[00:11:24] Speaker 00:
The question comes down to, did the board somehow remedy it so that we don't deserve another chance?

[00:11:30] Speaker 00:
We would say that the board does not remedy its own APA violations unless the board were to at least return the victimized party

[00:11:37] Speaker 00:
back to the same position it would have been in prior to the APA violations having occurred so that no prejudice ends up resulting.

[00:11:45] Speaker 04:
Would that mean that the board would have had to rule in your favor?

[00:11:49] Speaker 00:
That would mean that the board would have had to allow argument where the burden of proof was properly placed.

[00:11:58] Speaker 00:
that it would have had to allow sufficient amount of argument, that it would have had to allow argument to be supported by expert testimony, which it expressly forbid.

[00:12:09] Speaker 00:
The board did not return the parties to where they were.

[00:12:12] Speaker 00:
It shifted the burden of proof to the patent owner to have to disprove the board's erroneous construction, and it only allowed a seven-page brief forbidding expert testimony to be submitted in support of the positions.

[00:12:25] Speaker 00:
So clearly, the board didn't do anywhere near enough to correct and return the parties back to where they would have been.

[00:12:35] Speaker 00:
And with that, I'll reserve for rebuttal where I'd like to address the remedy of reversal.

[00:12:41] Speaker 02:
OK.

[00:12:43] Speaker 02:
Is the panel, as far as the argument in chief is concerned, is there anything else that you want to raise at this stage with Ms.

[00:12:50] Speaker 02:
Zansky?

[00:12:52] Speaker 01:
No.

[00:12:53] Speaker 01:
Thank you.

[00:12:54] Speaker 02:
OK.

[00:12:54] Speaker 02:
All right, so then let's hear from the other side for amazon.com, Ms.

[00:12:59] Speaker 02:
McCullough.

[00:13:02] Speaker 03:
Thank you, Your Honor.

[00:13:03] Speaker 03:
Good morning, and may it please the court.

[00:13:05] Speaker 03:
I'd like to start with counsel's arguments on the merits of the board's claim construction.

[00:13:10] Speaker 03:
As I believe Judge Stoll noted, both the plain language of the 007 and the 358 patent is straightforward, and it indicates that the server's communication of management instructions, or in the case of the 358 patent,

[00:13:24] Speaker 03:
the servers managing by sending communications, continuing management instructions, be based on the results of having processed some of this received consumer usage information.

[00:13:34] Speaker 03:
We also understand the 359 claim language to be consistent with this interpretation.

[00:13:39] Speaker 03:
As the court noted, M2M has conceded that all three sets of claims have a similar claim scope.

[00:13:46] Speaker 03:
In the 359

[00:13:47] Speaker 03:
The claims recite that the transmitters are configured to send communications containing management instructions based on the results of processing some of this consumer usage information.

[00:13:57] Speaker 03:
So we do think that that's a consistent plain language interpretation with the other two patents.

[00:14:01] Speaker 03:
To the extent there is ambiguity though, we know that we looked at the specification as the board did here.

[00:14:07] Speaker 03:
And the specification, as the board noted, identifies a number of examples, two that the board discussed in detail,

[00:14:14] Speaker 03:
where the specification describes management instructions that are sent based on processing consumer usage information, but whose content is not described as being based on the received consumer usage information.

[00:14:27] Speaker 03:
The board discussed the security example in column four of the patents, where the server, in response to simply receiving a phone message, sends communications sufficient to disable device functionality or lock doors.

[00:14:40] Speaker 03:
This embodiment does not... Ms.

[00:14:42] Speaker 04:
McCullough, this is Judge Stoll.

[00:14:45] Speaker 04:
You kind of cropped the claim language when you went through the claim language and that bothers me.

[00:14:52] Speaker 04:
It says the claim actually says containing management instructions and you said management instructions, you said sending management instructions based

[00:15:06] Speaker 04:
on upon the results, but it actually says management instructions that cause the stored data content files of one or more assets to be automatically modified based upon the results.

[00:15:20] Speaker 04:
It doesn't say the communications are based upon the results.

[00:15:23] Speaker 04:
It says the management instructions that cause the stored data content files of one or more assets to be automatically modified based upon the results.

[00:15:32] Speaker 04:
How can you say that based upon the results doesn't modify the management instructions?

[00:15:38] Speaker 03:
Yes, Your Honor.

[00:15:39] Speaker 03:
That's because the interim clause that I did omit for brevity, I suppose more than anything else,

[00:15:46] Speaker 03:
qualifies management instructions, and that's in all of the different claims.

[00:15:49] Speaker 03:
Management instructions is already defined to have a characteristic in each of these claims.

[00:15:54] Speaker 04:
Why can't management instructions have two characteristics?

[00:15:57] Speaker 04:
I mean, that's normal English usage of language.

[00:16:00] Speaker 04:
Things can have more than one characteristic based on, you know, how close they are.

[00:16:05] Speaker 04:
This based upon language is closer to the management instructions than it is to any other term, unlike the other claims.

[00:16:14] Speaker 03:
We do concede that, as the word found, there is more ambiguity, arguable ambiguity, in the 359 patent.

[00:16:20] Speaker 03:
This is not there in the 358 and the 007 patents.

[00:16:23] Speaker 03:
And as you noted, M2M has conceded that these three sets of claims have similar scope.

[00:16:28] Speaker 03:
But to the extent there is ambiguity, we look to the specifications.

[00:16:32] Speaker 03:
And there we see that there are not examples that M2M has been able to cite where the management instructions are generated or the determination to include management instructions in this transmission is made based on the received consumer usage information.

[00:16:49] Speaker 03:
The single portion of the detailed description that M2M cites, this pull down menu embodiment, it doesn't describe management instructions explicitly at all.

[00:16:57] Speaker 03:
M2M admitted this to the board at appendix 2970 and 71.

[00:17:01] Speaker 04:
Does it describe the communications at all?

[00:17:06] Speaker 03:
It does not, Your Honor.

[00:17:07] Speaker 04:
Yeah.

[00:17:07] Speaker 03:
M2M makes inferences that may or may not be true, and there's no record support for those inferences, but the specification does not describe them.

[00:17:17] Speaker 03:
What the specification does describe, as the board noted, are a number of examples where the management instructions are sent, are triggered.

[00:17:24] Speaker 03:
We do use that shorthand.

[00:17:26] Speaker 03:
based on the processing of this consumer usage information.

[00:17:30] Speaker 03:
We have that security embodiment.

[00:17:31] Speaker 03:
We also have the video recorder embodiment in column 22 of the specification.

[00:17:35] Speaker 03:
And here, again, the server is described as receiving a simple message.

[00:17:41] Speaker 03:
That's a quote from the spec from a consumer device.

[00:17:45] Speaker 03:
And upon receiving that simple message, the server creates a complex data message that causes a video recorder to record a specific program.

[00:17:55] Speaker 03:
There's no description in the specification of how the server generates that complex data message.

[00:18:00] Speaker 03:
And there's no description of that complex data message, including content or including instructions that are specifically selected based on the received simple message, which could be a ping or a yes.

[00:18:12] Speaker 02:
Was there an issue when you said I was thinking about that?

[00:18:16] Speaker 02:
in terms of the description and the specification.

[00:18:19] Speaker 02:
But that wasn't an issue, was it, before the board, in terms of, say, enablement or description?

[00:18:27] Speaker 02:
Is that accurate?

[00:18:31] Speaker 03:
The issue of enablement was not an issue that the board considered, Your Honor.

[00:18:35] Speaker 03:
But the issue here that the board was considering was, what does the specification describe as being management instructions?

[00:18:42] Speaker 02:
OK.

[00:18:43] Speaker 03:
And it did look at a number of examples of management instructions in this video recorder and security embodiments, which, by the way, were identified in the petition at appendix 372 as examples of management instructions.

[00:18:56] Speaker 03:
These are two examples where the server sends communications containing management instructions based on receiving consumer usage information and processing that consumer usage information, but where the management instructions are not described as being substantively based on that received consumer usage information.

[00:19:12] Speaker 03:
And again, M2M has not been able to point to anything in the specification to the contrary.

[00:19:16] Speaker 03:
This is Judge Lynn.

[00:19:22] Speaker 01:
If the act of communicating is based on the results of received consumer usage information, on what are the management instructions based?

[00:19:35] Speaker 03:
The claims do not specify what the management instructions must be based on.

[00:19:39] Speaker 03:
They specify what the management instructions do.

[00:19:42] Speaker 03:
They specify that the management instructions cause the stored data content files of assets to be automatically modified.

[00:19:48] Speaker 03:
Amazon actually proposed a construction below that defined management instructions as being commands for a device to perform particular actions.

[00:19:57] Speaker 03:
M2M argued that no construction was necessary for the term management instructions.

[00:20:02] Speaker 01:
But it seems to me it wouldn't make any sense to have a system where

[00:20:10] Speaker 01:
You know, there are certain things going on and the act of communicating is triggered to receiving certain information.

[00:20:17] Speaker 01:
And yet the management instructions are unrelated to that.

[00:20:22] Speaker 01:
It's like there are two separate things going on at the same time and they're not connected with one another.

[00:20:29] Speaker 01:
What am I missing?

[00:20:32] Speaker 03:
I would say two things, Your Honor.

[00:20:33] Speaker 03:
First, the specification provides examples of exactly this.

[00:20:37] Speaker 03:
I think the security example is a good one.

[00:20:38] Speaker 03:
The only thing that the server is described as receiving is a phone message.

[00:20:44] Speaker 03:
There is no description of what that phone message must contain.

[00:20:46] Speaker 03:
It seems most likely that it is simply an alert, that the server is configured to interpret a received phone message as being an alert.

[00:20:56] Speaker 03:
And in response to that, the server is previously configured to lock down all doors in an area or to disable the functionality of devices in an area.

[00:21:04] Speaker 03:
There are implementations where this makes sense.

[00:21:06] Speaker 03:
But more fundamentally, Your Honor, the claims simply do not restrict the management instructions or the sending of management instructions in this way.

[00:21:15] Speaker 03:
There is no recitation in the claims on how these management instructions are generated or on the required content of the management instructions.

[00:21:25] Speaker 03:
What is recited is that these management instructions must cause stored data content files of these device assets to be automatically modified.

[00:21:33] Speaker 03:
Now, in many cases,

[00:21:34] Speaker 03:
Your Honor's hypothetical would make sense.

[00:21:37] Speaker 04:
Ms.

[00:21:37] Speaker 04:
McCullough, there's that phrase following it, though, that says based upon the results, right?

[00:21:45] Speaker 03:
I was reading from the 007... What if... Oh, okay.

[00:21:48] Speaker 04:
Oh, right.

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

[00:21:50] Speaker 04:
I'm with you then.

[00:21:51] Speaker 04:
Sorry.

[00:21:52] Speaker 04:
My apologies, Your Honor.

[00:21:54] Speaker 03:
But there are certainly examples in which that implementation would make sense, but the claims do not require it, Your Honor.

[00:22:01] Speaker 03:
And the specification provides alternate examples.

[00:22:04] Speaker 04:
But the 359 claim, that one's different, right?

[00:22:07] Speaker 03:
The 359 claim, yes, Your Honor.

[00:22:10] Speaker 03:
It goes on to recite based upon automatically modified, based upon the results of having processed at least some of the received consumer usage information.

[00:22:18] Speaker 03:
Again, we believe, and the board noted, that conflicting interpretations of that language make sense.

[00:22:23] Speaker 03:
But again, when you look to the- I understand.

[00:22:25] Speaker 04:
Now, say I disagree with you on that.

[00:22:28] Speaker 04:
Say I disagree with you.

[00:22:29] Speaker 04:
What is the result?

[00:22:31] Speaker 04:
And what other arguments do you have?

[00:22:34] Speaker 04:
I've already mentioned waiver.

[00:22:36] Speaker 04:
But do you also have another argument based on substantial evidence?

[00:22:41] Speaker 03:
Well, in terms of the construction being correct, we do believe that M2M has waived the argument that the 207 and 358 claims that do have the clear plain language are different in scope.

[00:22:53] Speaker 03:
And so the 359 under M2M's concession would need to be construed appropriately with his other two claims.

[00:22:59] Speaker 03:
If your honor determines that the claim construction is incorrect, we have argued that as the board noted, substantial evidence still supports a finding of obviousness based on Clovis disclosure, even on that alternative claim construction.

[00:23:16] Speaker 03:
I thought I heard a drop.

[00:23:19] Speaker 03:
On that alternative argument, Your Honor, M2M argues that the construction should have been that these communicate terms are interpreted as the server's determination to include the claim to management instructions within the transmission as what needs to be based on the results of processing some consumer usage information.

[00:23:38] Speaker 03:
And the board found that CLOBA still discloses limitation even under M2M's construction based on that one up and one down transmission that CLOBA discloses.

[00:23:47] Speaker 03:
ACLOVA teaches that the content of this one-down transmission, which includes what M2M concedes our management instructions, these delta instructions, that that content is selected based on all of the received content in the one-up transmission, and that includes what M2M concedes our consumer usage information.

[00:24:05] Speaker 03:
Now, the board rejected M2M's argument, and M2M does not appeal this finding, that the delta instructions are not created or transmitted as part of a separate process from the rest of the synchronization information.

[00:24:17] Speaker 03:
It is all one synchronization process.

[00:24:19] Speaker 03:
It's all one transmission sent down from the server to the device.

[00:24:25] Speaker 03:
And that transmission is compiled and sent based on processing everything that's received from the device in that one-up transmission.

[00:24:33] Speaker 03:
And so the board's finding that even under M2M's claim construction, the CLOBA prior art reference disclosed this limitation that is supported by substantial evidence.

[00:24:43] Speaker 03:
And we do maintain that's an alternative basis for affirmance in this case, Your Honor.

[00:24:52] Speaker 03:
I'd like to briefly address, if there are not additional questions on claim construction or the alternative affirmance ground, M2M's arguments on an APA violation.

[00:25:03] Speaker 03:
Thank you, Your Honor.

[00:25:07] Speaker 03:
The APA requires an opportunity to be heard, a notice regarding an issue.

[00:25:12] Speaker 03:
Here the APA issue to be decided is whether M2M received this opportunity to be heard on the contested claim construction issue.

[00:25:19] Speaker 03:
And M2M did.

[00:25:22] Speaker 03:
The board found that M2M had noticed, based on Amazon's treatment of the communicate terms in the petition, and at the very least, this issue was front and center during oral argument, where both M2M and Amazon were questioned by the board regarding this claim construction issue.

[00:25:38] Speaker 03:
M2M then argued its view of the claim construction landscape in the request for a re-hearing, which the board considered, and M2M then received the opportunity to submit a brief specifically focused on this claim construction issue.

[00:25:51] Speaker 03:
only two arguments really as to why this was not a sufficient process under the APA.

[00:25:56] Speaker 03:
First, M2M argues that the board improperly shifted the burden of proof.

[00:26:01] Speaker 03:
That was incorrect.

[00:26:02] Speaker 03:
The board said that the burden of modifying the final written decision was on the challenger of that decision, M2M, and that's expressly stated by 37 CFR 4271.

[00:26:13] Speaker 03:
For claim construction, the board did a full de novo analysis where it started with the plain language of the claims,

[00:26:20] Speaker 03:
It then considered the specification, and then it considered M2M's extrinsic evidence.

[00:26:25] Speaker 03:
So the board performed a full and fair claim construction analysis that did not shift the burden of proof to M2M.

[00:26:31] Speaker 03:
It simply noted that the burden of modifying the final written decision was on the challenger of that decision.

[00:26:37] Speaker 03:
Now, M2M argues also that expert testimony or additional pages would have been required to fulfill the APA obligations, but M2M never asked

[00:26:48] Speaker 03:
for expert testimony and it never asked for more pages.

[00:26:51] Speaker 03:
And M2M here in its briefing at page 47 of the opening brief admits that here the intrinsic record fully governs the proper construction of a term.

[00:27:02] Speaker 03:
There was no technological language in the claim terms being construed that the board would have required expert testimony on.

[00:27:10] Speaker 03:
And again, when M2M did not seek expert testimony or additional pages, it cannot be heard to now argue that the lack of this

[00:27:18] Speaker 03:
was de facto a violation of the APA.

[00:27:25] Speaker 03:
If the board has no further questions on the APA violation, we would simply ask that the board's obviousness determination be affirmed.

[00:27:33] Speaker 02:
Okay, thank you.

[00:27:34] Speaker 02:
Anything else for Mr. McCullough?

[00:27:37] Speaker 02:
No, thank you.

[00:27:38] Speaker 02:
Okay, thank you.

[00:27:39] Speaker 02:
In that case, we'll hear rebuttal from Mr. Hedschke.

[00:27:42] Speaker 00:
Thank you.

[00:27:43] Speaker 00:
In terms of the APA violations, the board itself under its own reasoning concluded that the 359 patent in particular supports multiple conflicting ordinary meanings.

[00:27:55] Speaker 00:
And then despite concluding that, never allowed M2M to use any supporting expert testimony.

[00:28:01] Speaker 00:
That is not remedying the APA violation.

[00:28:04] Speaker 00:
That's not putting the parties back into a fair position.

[00:28:08] Speaker 00:
I'm very surprised that Amazon would

[00:28:12] Speaker 00:
draw attention to the only two specification passages that the board relied upon in support of its claim construction.

[00:28:20] Speaker 00:
M2M addresses these at blue brief 60 to 61 and gray brief 24 to 25.

[00:28:27] Speaker 00:
Neither of the two specifications that the board relied on even relate to consumer usage information at all.

[00:28:35] Speaker 00:
They're not even relevant embodiments to the court's construction.

[00:28:38] Speaker 00:
And secondly,

[00:28:39] Speaker 00:
it's clear there that the management instructions would need to be based on the information that the server had received.

[00:28:46] Speaker 00:
You have a security alarm and someone's asking the server to shut down particular doors and devices within the building and the server sends a management instruction to shut down those particular doors.

[00:28:58] Speaker 00:
It wouldn't have known to do that unless it had based the instruction on the information it received.

[00:29:03] Speaker 00:
And with a VCR machine, someone's requesting the server to record a particular television program

[00:29:09] Speaker 00:
and the server sends an instruction telling the VCR to record a particular program.

[00:29:16] Speaker 00:
It wouldn't have known what program to tell the VCR to record unless it had based that instruction on the information it had received.

[00:29:24] Speaker 00:
With respect to, I think this is a very important point, I think the proper remedy here is outright reversal and that's because the board

[00:29:33] Speaker 00:
went on and made an alternative obviousness finding under M2M's correct claim construction, by the way, the same construction that Amazon advocated at all times in all places prior to the oral hearing.

[00:29:46] Speaker 00:
And if we look at the appendix at page 88 to 89, we see the board's alternative obviousness finding under M2M's correct construction.

[00:29:57] Speaker 00:
The board very clearly said here what needs to be proved

[00:30:00] Speaker 00:
is that the delta instructions in Clova that the server is deciding to send those and include those particular instructions in the transmission based on its processing of Amazon's examples of consumer usage information, the figure 12 and figure 17 consumer usage information.

[00:30:19] Speaker 00:
That's what needs to be proven.

[00:30:21] Speaker 00:
But at Appendix 89, you'll see that the only two specification passages cited in support of that proposition, 8, 7 to 19, and 21 through 21, are completely irrelevant and unrelated to proving that proposition.

[00:30:38] Speaker 00:
That's the only evidence the board cited in support of that conclusion.

[00:30:42] Speaker 00:
Not only is it not substantial evidence, it's not any evidence at all.

[00:30:48] Speaker 00:
And therefore, the board made a conclusion under the correct claim construction, which is unsupported by substantial evidence.

[00:30:56] Speaker 00:
That requires outright reversal, not remand as this court might do under an APA violation situation.

[00:31:05] Speaker 02:
Okay.

[00:31:05] Speaker 02:
Thank you.

[00:31:06] Speaker 02:
Does the panel have any more questions for Mr. Henshki?

[00:31:10] Speaker 01:
No, thank you.

[00:31:12] Speaker 02:
Okay.

[00:31:13] Speaker 02:
Thank you.

[00:31:13] Speaker 02:
Thank you, Mr. Counsel.

[00:31:15] Speaker 02:
The case is taken under submission.