[00:00:02] Speaker 03:
Okay.

[00:00:03] Speaker 03:
The first argued case this morning is number 19-12-12, Mira Advanced Technology against Microsoft Corporation.

[00:00:11] Speaker 03:
Mr. Wright.

[00:00:19] Speaker 02:
May it please the court.

[00:00:21] Speaker 02:
The board erred because it fundamentally misunderstood the claimed contact list to be nothing more than a simple data structure.

[00:00:30] Speaker 02:
And it misunderstood the improvement, the claimed improvement to that contact list as being nothing more than the simple addition of a memo field to that data structure.

[00:00:43] Speaker 02:
That misunderstanding undergirds the obviousness rationale in both Microsoft's petition and in the board's final written decision.

[00:00:54] Speaker 02:
If Mira's understanding of the term contact list is correct and the invention requires the integration of a dynamic memo field into a pre-existing user interface enabled contact list,

[00:01:11] Speaker 02:
then the correct remedy is a remand to the board so the board can reconsider its obviousness rationale under that correct understanding of the claim.

[00:01:23] Speaker 02:
The claims start by calling out a communication device having access to a claimed contact list.

[00:01:31] Speaker 02:
That's in the preamble in claim one.

[00:01:34] Speaker 02:
And the specification explains to a person of ordinary skill in the art

[00:01:40] Speaker 02:
person of ordinary skill in the art or how a person of ordinary skill in the art would have understood the claimed contact list.

[00:01:48] Speaker 02:
And in that regard, if we just turn to the top of column one, it states, the very first thing in the specification, it states that the contact list is a common feature, not a common database structure or a common list, but a common feature in modern communication devices.

[00:02:07] Speaker 02:
And then the background section proceeds to lay out common features that a person of ordinary skill in the art would have understood contact lists as of the date of the invention in 2008 as having happened.

[00:02:23] Speaker 02:
That includes the ability to enter and save information, to view information in the contact list, to speed dial using the contact list.

[00:02:32] Speaker 02:
And then if we turn to the summary of the invention,

[00:02:35] Speaker 02:
It talks about the, specifically about the memo functionality, and it says that a memo is displayed, and this is in column one at line 26, memo is displayed on a communication device when the corresponding contact list entry is activated, such as when the contact list entry is selected to initiate outgoing communication.

[00:03:01] Speaker 02:
That, in the summary of the invention, is a detail or a feature of the contact list that requires some sort of user interface functionality.

[00:03:14] Speaker 00:
It could be that there's no dispute here that somewhere in the patent we do have some sort of interface functionality and therefore an interface.

[00:03:38] Speaker 00:
that term language has or establishes some sort of functionality with the user interface.

[00:03:48] Speaker 02:
Right, so I think then if we turn to the claim itself, and in the claim preamble, it again says there's a communication device having access to a saved contact list, and then that contact list has contact list entries.

[00:04:08] Speaker 02:
And those contact list entries in the preamble are configured to retrieve.

[00:04:13] Speaker 02:
So the first contact list entry is configured to retrieve a stored phone number.

[00:04:18] Speaker 02:
The second field is configured to retrieve a stored name.

[00:04:23] Speaker 02:
And then the memo field, which is really the core limitation of the invention that's integrated into that contact list, is also configured to attach memo data.

[00:04:33] Speaker 02:
I think in the parlance of claims in the electrical arts when a field of like this of a contact list is configured to do something.

[00:04:46] Speaker 02:
Well, that I think normally implies that there's some sort of code associated with that field for instantiating that particular feature.

[00:04:57] Speaker 02:
And then further along in the claim, for example, when you get to activating the first contact list entry and then displaying the memo when that's activated, that again I think strongly suggests that there is some sort of code

[00:05:14] Speaker 02:
software that is associated with that contact list entry for instantiating these features.

[00:05:22] Speaker 02:
So it is the contact list itself that has this user interface functionality.

[00:05:31] Speaker 04:
To really repeat, I think, to Draena's question in a different way, it may well be that there is, in the normal use of this device, a communication that's done from a user to the contact list stored data

[00:05:54] Speaker 04:
But that doesn't necessarily mean that the contact list itself has that component as part of what we would refer to as the contact list, does it?

[00:06:07] Speaker 04:
That, it seems to me, is the central question.

[00:06:10] Speaker 04:
I'm really just repeating his question, but if you could focus on why it is that you have to have that component as part of the concept of what a contact list is.

[00:06:24] Speaker 04:
I think if we go back to the... You could have an address list.

[00:06:29] Speaker 04:
And you wouldn't think an address list necessarily comprises a way of adding data to an address list, would you?

[00:06:44] Speaker 02:
No, that's right.

[00:06:44] Speaker 04:
And I think this contact list goes... Then why is contact list different from an address list?

[00:06:49] Speaker 02:
Well, I think because when you go back to the patent specification and just start right at the background again, that a contact list is a common feature in most modern communication devices that enable something like speed dialing.

[00:07:04] Speaker 02:
That requires user interface functionality.

[00:07:08] Speaker 00:
Where's the evidence?

[00:07:10] Speaker 00:
Where can you point us in the record that that's the case here?

[00:07:15] Speaker 02:
Well, I think that's something that a person of ordinary skill in the art in 2008, when they're talking about a contact list on your mobile phone, would understand that you're not talking just about the underlying data structure.

[00:07:32] Speaker 00:
But where is it that a person with ordinary skill would look at in the pen and find that?

[00:07:38] Speaker 02:
Well, I think in the background, I think one place I haven't covered yet is, for example, in figure one, sorry, the description of figure one in column one at line 37, 38 says figure one shows the database structure.

[00:07:54] Speaker 02:
of a contact list of the present invention.

[00:07:57] Speaker 02:
So that's what figure one shows, and I think, again, this is a fundamental misunderstanding of the board, that shows the underlying database structure in a contact list, but that's not the contact list itself.

[00:08:12] Speaker 02:
The contact list is a common feature in most modern communication devices.

[00:08:18] Speaker 02:
It's not, and that feature I think a person of ordinary skill and the art would have understood in 2008 to be something more than just a simple list.

[00:08:27] Speaker 02:
It's beyond just a Rolodex.

[00:08:29] Speaker 02:
It has this user interface enabled functionality as part of the contact list itself.

[00:08:42] Speaker 02:
And I think that that misunderstanding, that fundamental misunderstanding undergirded both the petitions and the board's obviousness rationale.

[00:08:53] Speaker 02:
Because the board viewed the invention as nothing more than the simple addition of a data field.

[00:09:01] Speaker 02:
of a memo field to a contact list entry.

[00:09:06] Speaker 02:
And it repeatedly characterized the appendix 50 to 54, the invention as being nothing more than a data storage technique or a simple design choice between having two storages and having one storage.

[00:09:21] Speaker 02:
But it's more complicated than that.

[00:09:22] Speaker 02:
This invention fundamentally requires the integration of, it presumes the existence of a contact list, right?

[00:09:31] Speaker 02:
At the top of column two, for example, in the patent, it says right off the top, the contact list for communication device is provided and comprises multiple contact list entries.

[00:09:44] Speaker 02:
And then it goes on, you know, to describe the memo feature.

[00:09:49] Speaker 02:
So, I mean, that's the fundamental underlying misunderstanding of the board was that the contact list is nothing but a data structure.

[00:09:59] Speaker 04:
Did you want to address the alternative argument that even if you're right on the construction of contact list that the Sony prior reference has user interface to the contact list, it's just the only difference being that instead of one list there are two.

[00:10:20] Speaker 02:
Well, so there's no dispute, I think, that Sony requires some modification.

[00:10:27] Speaker 04:
Right.

[00:10:28] Speaker 04:
To go from two to one, I think, is the way the board characterized it.

[00:10:31] Speaker 02:
Right, to the contact list.

[00:10:33] Speaker 02:
But that modification and the rationale that sits underneath the motivation to make that modification is that the contact list is nothing but a simple data structure.

[00:10:47] Speaker 02:
If in fact the contact list is something that requires a pre-existing user interface enabled entity, well then the integration of the memo field into that entity, well the inventor had a very non-intuitive way of enabling this memo function.

[00:11:11] Speaker 04:
Um, Sony didn't do it that exactly was the non intuitive way because I, it looked to me like this very short specification just describes this as being a unitary, uh, operation.

[00:11:24] Speaker 04:
And I didn't see any clever and complex way that they're, they're integrated.

[00:11:30] Speaker 02:
Well, I think that's the, I think that's the, the.

[00:11:34] Speaker 02:
the main feature of the invention.

[00:11:37] Speaker 04:
Yes, but what is it?

[00:11:38] Speaker 04:
What exactly is this clever, what's the novelty other than simply to describe it as a single unit that performs both functions?

[00:11:50] Speaker 02:
Well, what that tight integration of the memo field into that contact list entry gives you is an inextricably linked memo field, whereas in

[00:12:07] Speaker 02:
the Sony reference and in Matsumoto and in Nielsen, each time the inventors tried to implement the memo functionality, they did it by putting the memo functionality into the separate storage.

[00:12:22] Speaker 02:
And when you put it into that separate storage, you have to have some sort of coupling for one thing, for when the contact list entry is accessed.

[00:12:33] Speaker 02:
And then that coupling has to be maintained.

[00:12:36] Speaker 02:
all the way through the life of the contact list.

[00:12:40] Speaker 02:
If you change a phone number or something like that, you have to maintain that coupling.

[00:12:44] Speaker 02:
And Sony doesn't maintain that coupling.

[00:12:47] Speaker 02:
And that was a non-intuitive way to do it.

[00:12:51] Speaker 02:
If it were so intuitive or so simple, I think Microsoft would have found a reference that showed that tight integration.

[00:13:02] Speaker 03:
Thank you.

[00:13:02] Speaker 03:
OK.

[00:13:03] Speaker 03:
Let's hear from the other side.

[00:13:04] Speaker 03:
You have rebuttal time.

[00:13:10] Speaker 01:
Thank you, Your Honor, and may it please the Court.

[00:13:13] Speaker 01:
Just going first to the last point being discussed with respect to what is the bang or what is the true innovation here in using a single integrated

[00:13:23] Speaker 01:
data structure.

[00:13:24] Speaker 01:
And there isn't one.

[00:13:26] Speaker 01:
And I think the patent itself bears this out.

[00:13:28] Speaker 01:
If we look at column two lines eight through 12, it describes how you can do it in an integrated fashion or you could also do it in a linked database fashion.

[00:13:38] Speaker 01:
So if this integrated nature of the database was really the crucial aspect of the invention,

[00:13:44] Speaker 01:
It would have been described in more than two lines, and it would have been distinguished from this other alternative, which the patent itself acknowledges as an alternative.

[00:13:54] Speaker 01:
So that is no real innovation.

[00:13:56] Speaker 01:
There's no whiz bang to having things integrated.

[00:14:00] Speaker 01:
I just, if there are no further questions at that point, I just want to make three points today.

[00:14:06] Speaker 01:
First of all, you know, the board got it right on contact list.

[00:14:09] Speaker 01:
I think the court understands there's, excuse me, the board got it right because

[00:14:15] Speaker 01:
A user interface is permitted in this claim, but it's not required by the claimed contact list.

[00:14:22] Speaker 01:
I think that's the real issue.

[00:14:23] Speaker 01:
The claims bear this out.

[00:14:24] Speaker 01:
The specification bears this out.

[00:14:26] Speaker 01:
There's no recitation of a user interface, much less a recitation of the user interface associated with this contact list.

[00:14:33] Speaker 01:
It's described as a saved contact list or a contact list stored in memory.

[00:14:40] Speaker 01:
this these claims are carried out by a communication device or by a processor.

[00:14:45] Speaker 01:
So there's nothing in the intrinsic evidence that says that the contact list itself has to have a user interface.

[00:14:51] Speaker 01:
We're not saying that there can't be some other application that accesses

[00:14:56] Speaker 01:
the information in the contact list and that a user could use to interface with the contact list.

[00:15:01] Speaker 01:
But those are other applications.

[00:15:03] Speaker 01:
And I think that's even borne out in figure four of the patent itself, which Mira has pointed to on numerous occasions.

[00:15:09] Speaker 01:
And they characterize that as Gmail and email application, right?

[00:15:13] Speaker 01:
And it's the application that provides the user interface.

[00:15:16] Speaker 01:
The contact list is information underlying

[00:15:20] Speaker 01:
that application.

[00:15:21] Speaker 01:
And similarly, another example is when I get a new phone, it says, can we import your contacts?

[00:15:28] Speaker 01:
That shows that the phone itself has applications and operating system that will use the underlying contact information.

[00:15:35] Speaker 01:
But it's importing just that information from elsewhere.

[00:15:37] Speaker 01:
Same thing with an application.

[00:15:39] Speaker 01:
If I get a new social media application, it says, may we access your contacts?

[00:15:43] Speaker 01:
And then I use the user interfaces provided by that application

[00:15:47] Speaker 01:
to maybe draft emails or send messages to people.

[00:15:50] Speaker 01:
But again, the contact list itself does not require a user interface.

[00:15:55] Speaker 01:
And it makes no sense for the contact list to have its own user interface because it's other things on the device that allow users to interface and use that contact information.

[00:16:04] Speaker 04:
I take it that you would make essentially the same argument with respect to the claim language that refers to the memo field as being configured to attach memo data inputted by the user.

[00:16:15] Speaker 01:
That's correct, Your Honor.

[00:16:16] Speaker 01:
That's all under the hood.

[00:16:17] Speaker 01:
I mean, and I think even opposing counsel characterized that as something that's done by a processor.

[00:16:22] Speaker 01:
Maybe there's some code that the processor uses.

[00:16:24] Speaker 04:
But it refers to the user as inputting.

[00:16:29] Speaker 04:
So at least in the brief, Mara points to that and says, aha, there's your user.

[00:16:35] Speaker 01:
Well, yeah, and we're not disputing that there's some kind of user in this claim, right?

[00:16:39] Speaker 01:
And we've shown, and the board found, for example, I think in Appendix 3940 and 42 to 43, it found how Matsumoto satisfies these other claim elements, right?

[00:16:52] Speaker 01:
This memo data inputted by a user and displayable to show the board found that Matsumoto showed that.

[00:16:59] Speaker 01:
And I think if we also look at what the board found with respect to Matsumoto, for example, Appendix 35, it describes how Matsumoto allows users to input information into the database.

[00:17:12] Speaker 01:
So there is a user here, but the presence of this user does not mandate the contact list have a user interface.

[00:17:21] Speaker 01:
That's all under the hood.

[00:17:24] Speaker 01:
and uh... and that kind of touches on the second point is is even assuming argue endo this um... new construction had been argued to the board and the board had somehow found some kind of user interface requirement that the outcome wouldn't have been different and and we know that because the board looked at Matsumoto and again this is an appendix thirty five for example and they described how Matsumoto

[00:17:51] Speaker 01:
the table of Matsumoto that it allows the user to input information regarding a phone call and notifies the user, right?

[00:17:58] Speaker 01:
So that's clearly the user interfacing with items that are stored in this contact list.

[00:18:03] Speaker 01:
And then later on in Appendix 35 in describing Matsumoto's data structure it said, this includes personal information of a party entered by the user, such as a party's name,

[00:18:16] Speaker 01:
telephone number, and email address.

[00:18:18] Speaker 01:
So that shows that the board understood Matsumoto as having capability or functionality by which a user could interface with this contact list.

[00:18:30] Speaker 01:
And because MIRA has not identified any way in which it's construction, we're not sure exactly what user interface means, but they've not identified any way it distinguishes the prior art.

[00:18:41] Speaker 01:
That's another ground for affirming the board's construction and its findings of unpatentability.

[00:18:47] Speaker 01:
And then third, I just wanted to address Sony real briefly.

[00:18:51] Speaker 01:
Substantial evidence supports the board's determination as to Sony, regardless of how contact list is construed.

[00:18:59] Speaker 01:
Mira admits that Sony has this user interface functionality.

[00:19:03] Speaker 01:
I've already touched on why, you know, moving from a two-data structure embodiment as disclosed in Sony's primary embodiment to a one-data structure embodiment as disclosed in Matsumoto or in other parts of Sony would have been, well, Poseida would have been motivated to do that and it would have faced no technical hurdles in doing that.

[00:19:23] Speaker 01:
It seems Mir's only argument on appeal is that somehow this user interface would have complicated that

[00:19:30] Speaker 01:
combination but there's nothing in the evidence, even if a user interface were required by the contact list, there's nothing in the evidence establishing that the

[00:19:40] Speaker 01:
underlying, modification of the underlying data structure would somehow be impacted by a user interface requirement.

[00:19:48] Speaker 01:
There's just no evidence there.

[00:19:50] Speaker 01:
And Mira does not address Mr. Rasavi's description or the patent's explanation that these are equivalents and a Poseida would have had no issue interchanging them, regardless of the interface requirement.

[00:20:03] Speaker 04:
You've made a motion under rules of Appellate Procedure 38 for sanctions in this case.

[00:20:10] Speaker 04:
What is it do you think that distinguishes this case dramatically from the great bulk of cases, and I think it's fair to call them a bulk now, coming from the PTO and IPR cases, in which by a substantial margin we affirm, often without opinion, how is this case different from many of those?

[00:20:39] Speaker 01:
Yes, and I'm aware of the many cases.

[00:20:41] Speaker 01:
I think here, just because you can appeal doesn't mean you should.

[00:20:46] Speaker 01:
I mean, we very carefully considered the sanction motion, did not bring it lightly.

[00:20:50] Speaker 01:
But here, this was a situation, there was just no non-frivolous argument for overturning the board's rejection of this 150-word claim construction that Mira proposed.

[00:21:03] Speaker 04:
I tend to find sometimes that the question of whether something

[00:21:07] Speaker 04:
is frivolous or not is much harder than the question of whether it's a prevailing winning argument.

[00:21:15] Speaker 04:
How am I to distinguish this case?

[00:21:18] Speaker 04:
What is it about this case that stands out from other cases in which we affirm perhaps pretty readily without discussion?

[00:21:31] Speaker 01:
I think what distinguishes this case is that there the

[00:21:36] Speaker 01:
The claim construction that was argued to the board was not grounded in any supporting evidence.

[00:21:43] Speaker 01:
Over 150 words, it forced the board to issue it.

[00:21:47] Speaker 01:
It was, I think, over 20 pages dealing with this claim construction.

[00:21:50] Speaker 01:
And there was no basis for that claim construction, for importing that 150 words into the context.

[00:21:57] Speaker 04:
It's a problem that was peculiar to the board, not to the appeal.

[00:22:01] Speaker 04:
The appeal has been brought by narrowing the claim construction considerably.

[00:22:05] Speaker 04:
So that isn't something that I would think is a fair basis for saying, well, the appeal is invalid.

[00:22:14] Speaker 01:
One, I think if they had stuck with that 150-word construction on appeal, it would have been equally frivolous.

[00:22:19] Speaker 01:
But I think by changing the scope of that claim construction on appeal, it deprived the board of the opportunity and wasted resources deprived the board of the opportunity to consider that construction.

[00:22:33] Speaker 01:
I think before the board,

[00:22:35] Speaker 01:
For example, at Appendix 30 and Appendix 40, the board was forced to consider these other aspects of that 150-word construction and Mira's primary arguments as to patentability related to this common and readily available nature of the claim constructions.

[00:22:50] Speaker 04:
Again, that seems to me to focus on a problem that was presented to the board, not a problem that's presented to us on appeal.

[00:23:02] Speaker 01:
where it becomes a problem on appeal is because even if Mira's new construction were right, it would not argue to the board and it would not change the outcome.

[00:23:12] Speaker 01:
I think that's okay.

[00:23:15] Speaker 01:
And if the report has no further questions, I will see the remainder of my time.

[00:23:19] Speaker 03:
Any more questions?

[00:23:22] Speaker 03:
Thank you.

[00:23:29] Speaker 03:
Mr. Wright.

[00:23:30] Speaker 02:
Please record, I just have four very quick points.

[00:23:33] Speaker 02:
First, innovation doesn't have to be something that's super complicated or super sophisticated.

[00:23:41] Speaker 02:
It just has to be something that's new.

[00:23:43] Speaker 02:
And Microsoft put forth no art that had this tightly integrated memo functionality into a contact list.

[00:23:54] Speaker 02:
Second, the fact that

[00:23:56] Speaker 02:
processor is in the claims is what is interfacing with the contact list.

[00:24:02] Speaker 02:
I don't think detracts from the fact that the contact list must have a user interface.

[00:24:07] Speaker 02:
The processor ultimately is always what is going to interface with the contact list.

[00:24:12] Speaker 02:
Third, I don't think we can say that the outcome would not have been different either under a different claim construction, or sorry, under the board's claim construction, or sorry, under MIRA's claim construction.

[00:24:28] Speaker 02:
Matsumoto's table 200 itself is a pure data structure and there is no user interface functionality attributed to Matsumoto's table 200.

[00:24:41] Speaker 02:
And with respect to Sony, again, in the Sony grounds, the central thesis underlying the board's motivation to modify Sony centers on its belief that the contact list is nothing more than a simple data structure.

[00:24:58] Speaker 02:
And finally, I think that with respect to Rule 38, it would be a substantial departure from this Court's Rule 38 jurisprudence.

[00:25:07] Speaker 02:
This was a and is a mine run appeal that centers on claim construction.

[00:25:15] Speaker 02:
And with respect to the claim construction issue, it crystallized around either the contact list requires a user interface or it doesn't require a user interface.

[00:25:26] Speaker 02:
That's the way the board presented it in its final written decision.

[00:25:30] Speaker 02:
And that is the particular issue that Miro raised on appeal.

[00:25:36] Speaker 04:
If you were to write an opinion that

[00:25:41] Speaker 04:
trying to distinguish between the what you call the mine run of appeals versus an appeal in which rule 38 was appropriate and you wanted to characterize the difference in succinct of way as you could, what would that sentence say?

[00:26:00] Speaker 02:
I think that the cases where rule 38 is appropriate have something beyond this case like

[00:26:11] Speaker 02:
misstating the record, or appealing an issue that has already been decided below, or some persistent course of misconduct, or something that is in almost every, I think every Rule 38 case that this court has decided, and there's been no allegation of anything here.

[00:26:34] Speaker 04:
Not simply substantive weakness of the appeal.

[00:26:36] Speaker 02:
No.

[00:26:36] Speaker 02:
That would be a substantial departure from, I think, the Sparks case.

[00:26:44] Speaker 03:
Any more questions for Mr. Wright?

[00:26:47] Speaker 03:
Thank you.

[00:26:48] Speaker 03:
Thank you both.

[00:26:48] Speaker 03:
The case is taken under submission.