[00:00:00] Speaker 04:
No.

[00:00:00] Speaker 04:
211001, Apple Inc.

[00:00:03] Speaker 04:
with its first face, Company Limited, and this time Mr. Alward Dreemeyer.

[00:00:32] Speaker 01:
May it please the court.

[00:00:34] Speaker 01:
Unlike the 557 appeal, the 373-419 appeal concerns an issue of claim construction, which this court reviews de novo.

[00:00:46] Speaker 01:
The central question is whether the without additional user input language of claims 10 and 11 modifies only the phrase performing a function read in isolation or the full proceeding phrase

[00:01:01] Speaker 01:
in response to the one-time pressing performing a function, read in light of the full plain language.

[00:01:08] Speaker 01:
The board construed the fuller phrase in the context of other limitations, which also appear in claims one as well as 10 and 11, to mean a single press of the activation button initiates the function.

[00:01:24] Speaker 01:
The added language without additional user input modifies the full phrase and requires that the button press directly initiate performance.

[00:01:35] Speaker 01:
That means that the single press of the activation button initiates the function without additional user input.

[00:01:42] Speaker 02:
That is what this specification... Mr. Holbrook, can you help me understand?

[00:01:45] Speaker 02:
Your premise of your argument is that

[00:01:50] Speaker 02:
The claims should somehow be understood as talking about initiating a function rather than performing a function.

[00:01:58] Speaker 02:
And I see those two things as different from each other, but where are you drawing from the claim language the idea that in response to a one-time pressing, the claim is simply calling for initiating the performance of a function without additional user input?

[00:02:21] Speaker 01:
First, I would note, Your Honor, that this specification never uses the word initiates.

[00:02:26] Speaker 01:
It uses the word performs, consistent with the notion of initiates many, many times in this specification.

[00:02:32] Speaker 01:
But your question is about the claim.

[00:02:34] Speaker 02:
Can we, before you go further, can we agree that as a baseline matter, initiate and performs are two different things?

[00:02:42] Speaker 01:
Well, they can mean different things, but they don't necessarily mean different things.

[00:02:48] Speaker 02:
Like initiating a process and performing a process.

[00:02:51] Speaker 02:
To me, performance would suggest the completion of that process, the fulfillment of the operation of that process, whereas initiating a process really only means triggering the commencement of an operation that will ultimately lead to the fulfillment of a process.

[00:03:12] Speaker 01:
Well, we know that the specification uses perform to mean, in some instances, initiate.

[00:03:17] Speaker 01:
And I'll use as an example column eight, lines three through five, where describing the iris recognition function

[00:03:25] Speaker 01:
and later the password matching function disclosure is that these can be performed by pressing the activation button.

[00:03:35] Speaker 01:
Of course, they're not completely performed by pressing the activation button.

[00:03:39] Speaker 01:
The activation button initiates it.

[00:03:41] Speaker 01:
In fact, the full disclosure of the iris scanning

[00:03:44] Speaker 01:
a function on column seven to eight discloses that pushing the home button would initiate a scanning function of the camera.

[00:03:54] Speaker 01:
The iris has to then be presented, the iris has to be scanned, and then it has to be compared.

[00:03:59] Speaker 01:
So it only means initiating the iris function.

[00:04:03] Speaker 01:
In fact, it's interesting that the construction that the board adopted in first base argues for would preclude the iris scanning function, the face scanning function, the password entry function, and the hands-free function.

[00:04:17] Speaker 01:
And this is where I want to get to why their construction is inconsistent with the claim language, which was your question.

[00:04:23] Speaker 01:
The claim in 373, claim 11, specifically claims an embodiment of hands-free function.

[00:04:32] Speaker 01:
The hands-free function can only function with the input of a voice.

[00:04:38] Speaker 04:
The voice input must necessarily come after.

[00:04:46] Speaker 01:
Well, Your Honor, I agree with First Face when it said below that simply entering a state in which the device would be able to receive further user input is no function at all.

[00:05:02] Speaker 01:
That's the board at 823.

[00:05:06] Speaker 04:
I understood you to be making an alternative argument that if turning on the microphone is the performance of the hands-free function,

[00:05:15] Speaker 04:
that we find that in the prior art in the iOS.

[00:05:19] Speaker 01:
Yes.

[00:05:19] Speaker 01:
Yes, Your Honor.

[00:05:20] Speaker 01:
Absolutely.

[00:05:21] Speaker 04:
And it is... But, okay, where did you make that argument?

[00:05:26] Speaker 04:
I see a claim chart attached to the petition, which sort of alludes to it, but I don't see any other place in your reply, for example, where that argument is articulated.

[00:05:42] Speaker 04:
Well, Your Honor... How is it that that argument is preserved?

[00:05:46] Speaker 01:
Well, Your Honor, we cite to iOS and the voice control function, but we also refer back to claim one, claim chart 1G, and 1G reproduces the iOS disclosure about the hands-free function in its entirety.

[00:06:03] Speaker 01:
The Board, in construing that disclosure, which was recited and contained within the claim,

[00:06:11] Speaker 01:
chart, it's cross-referenced in 11E, as disclosing that iOS, upon a long pressing of the button, you hear a beep, and then you can provide the voice.

[00:06:23] Speaker 01:
So the microphone has been activated in iOS as it's disclosed.

[00:06:28] Speaker 01:
The board understood that fully well from the disclosure file.

[00:06:32] Speaker 04:
But I'm not sure we're on the same page, because I understand your first argument is that in order to perform

[00:06:40] Speaker 04:
the voice function that you have to actually have voice commands executing something and that therefore the point of language must be talking about initiating.

[00:06:54] Speaker 04:
And then as I understand you have a backup argument that even if that's not the case that there is actual performance of the voice command function because the iOS instruction shows that the

[00:07:09] Speaker 04:
microphone is turned on, right?

[00:07:12] Speaker 01:
That's right.

[00:07:13] Speaker 04:
And so I'm just not seeing that you really articulated that second argument.

[00:07:21] Speaker 04:
I guess your theory is that somehow you were blindsided when the

[00:07:26] Speaker 04:
the board decided on this claim construction about the transmission function?

[00:07:35] Speaker 01:
We were focused on arguing that hands-free function should be construed the same way that fingerprint authentication is and that they shouldn't be able to cherry-pick and say that some of the functions merely require activation and others require full performance.

[00:07:49] Speaker 01:
But the disclosures with respect to iOS

[00:07:53] Speaker 01:
clearly do disclose activating the microphone.

[00:07:57] Speaker 01:
If the board was going to adopt that view, iOS is fully disclosed and it's in the claim chart that's cross-referenced in 11E.

[00:08:06] Speaker 04:
Well, don't you have to argue it as sort of a backup argument rather than merely a perfunctory reference?

[00:08:12] Speaker 01:
Your Honor, we do say in claim chart 11E that the function is performed without additional user input, citing the voice control of iOS.

[00:08:24] Speaker 01:
So that is stated there very explicitly.

[00:08:28] Speaker 01:
And then we cite back in terms of what iOS discloses to the earlier claim chart.

[00:08:34] Speaker 01:
We also cite

[00:08:36] Speaker 01:
to the description of the embodiment in Figure 4 as described in Columns 7 through 8.

[00:08:46] Speaker 02:
Your reliance on iOS and the claim chart, it was for the second function, not the first function, right?

[00:08:54] Speaker 02:
The second function, which was more about the long pressing of the button.

[00:08:58] Speaker 01:
That's right, Your Honor.

[00:08:59] Speaker 02:
And so what I'm trying to understand is to what extent were you

[00:09:03] Speaker 02:
really trying to match up iOS with the claim phrase, performing a function without additional user input, whereas it seemed more like Griffin and Davis were what you were relying on for performing the first function.

[00:09:21] Speaker 01:
Well, Your Honor, the claim language is clear that it can be either the first or second function that is performed without additional user input.

[00:09:28] Speaker 01:
And that's why claim chart 11E includes reference to both Griffin Davis and to iOS.

[00:09:37] Speaker 01:
So it is specifically referenced there.

[00:09:40] Speaker 01:
It says in the claim chart that these are disclosed without additional user input.

[00:09:46] Speaker 01:
It cites to the disclosures in iOS that are reproduced in respect to claim one.

[00:09:51] Speaker 01:
And although the board says that this was unduly conclusory, it recognized when it was construing the same disclosures with respect to claim one that the hands-free function in iOS, with a long time pressing, hear the beep,

[00:10:05] Speaker 01:
It's awaiting the voice command.

[00:10:08] Speaker 01:
It is available to give the voice command.

[00:10:10] Speaker 01:
So the microphone, necessarily, must be activated.

[00:10:15] Speaker 01:
But Your Honor, I think I want to get back to our claim construction argument, which is our primary argument, because we think that it reads out the hands-free embodiment, which we don't think a function can function if it's not doing anything.

[00:10:29] Speaker 02:
We agree with the first... At column nine of the patent,

[00:10:33] Speaker 02:
of the 373 patent, when it describes the hands-free function, it's talking about how when you press the button, it will convert and switch the mode of the terminal to a hands-free function mode.

[00:10:52] Speaker 02:
And so I guess what I'm wondering in reading the specification that in the context of this claim, when the claim 11 talks about a hands-free function,

[00:11:02] Speaker 02:
Maybe all that it's really contemplating in light of the specification is the switching of the terminal to a hands-free mode.

[00:11:11] Speaker 02:
And that's what the claim means when it's talking about hands-free mode.

[00:11:14] Speaker 01:
Your Honor, it says on claim on column nine, voice communication function, SMS function, or internet function.

[00:11:21] Speaker 01:
None of those functions can be performed without the voice input.

[00:11:26] Speaker 01:
That's our point.

[00:11:27] Speaker 01:
And if the inconsistency is that the board adopted, allowed First Face to adopt such a narrow construction with respect to hands-free function, but not apply the same thing to the fingerprint authentication, you could have the same thing.

[00:11:42] Speaker 01:
The fingerprint authentication would be activated

[00:11:44] Speaker 01:
waiting for the fingerprint just as the hands-free function is activated waiting for the voice command.

[00:11:50] Speaker 01:
But the other way in which the board's construction is inconsistent with the claim language is the last limitation in the 373 where it specifically says

[00:12:03] Speaker 01:
that the wherein the touchscreen display displays the lock screen, I'm sorry, the second to last, wherein at least of the first and second functions is initiated subsequent to changing to the active state and displaying the lock screen.

[00:12:23] Speaker 01:
So if the fingerprint

[00:12:25] Speaker 01:
scanning has to be part of the fingerprint authentication function, which is how they avoid our argument.

[00:12:31] Speaker 01:
They distinguish between hands-free and fingerprint for the earlier one.

[00:12:35] Speaker 01:
If that is part of the function, and the fingerprint authentication function does not initiate until after the screen has switched to the active state, then it must necessarily come after the pressing of the activation button.

[00:12:50] Speaker 01:
This underscores the point that we made with respect to inconsistency.

[00:12:55] Speaker 01:
The board recognized that the numerous references to initiate in the claims

[00:13:00] Speaker 01:
In the 419, it's Claim 10, uses the phrase, initiates, describing the relationship between the one-time pressing and fingerprint authentication.

[00:13:11] Speaker 01:
One-time pressing initiates the fingerprint authentication.

[00:13:15] Speaker 01:
That's at lines 42 to 43.

[00:13:16] Speaker 01:
The fingerprint authentication function initiated by one-time pressing.

[00:13:22] Speaker 01:
That's at lines 45 to 46.

[00:13:24] Speaker 01:
And later, that in response to one-time pressing for a long time,

[00:13:28] Speaker 01:
is associated with initiating hands-free operation of the terminal.

[00:13:32] Speaker 02:
So as I understand it, you're asking us to think of the claim word initiate and the claim word perform as interchangeable, even though they are different words, commonly with different meanings.

[00:13:46] Speaker 01:
In this context, especially where the specification never uses the word

[00:13:50] Speaker 01:
word perform.

[00:13:51] Speaker 02:
So every instance... So it does use perform.

[00:13:53] Speaker 01:
I mean, it never uses the word initiate.

[00:13:55] Speaker 01:
So every time that initiate appears here and is looking for written description, it has to come from a description about performs.

[00:14:02] Speaker 01:
And as I've said, there are numerous instances where the specification uses the word performs and performing upon or by pushing the activation button to mean only initiates because of course an iris scan

[00:14:15] Speaker 01:
cannot happen without a further input after the pressing.

[00:14:19] Speaker 01:
So I do want to specify that we have one other alternative argument before I sit down and that is Griffin.

[00:14:25] Speaker 01:
The board acknowledged with respect to Griffin in claims one and describing it that it was a single action, a single action with two inputs.

[00:14:33] Speaker 01:
they in their description of applying a Griffin to the to the priority all they talked about was the fact that Griffin had two inputs two inputs we know that that's required first base acknowledges it but it was a single action a single action with two inputs that's what Griffin discloses the board never

[00:14:52] Speaker 01:
I discussed that just as with respect to iOS.

[00:14:56] Speaker 01:
It never discussed.

[00:14:57] Speaker 02:
But my understanding of Griffin's two inputs is that you wouldn't do the two inputs with a single press of a button.

[00:15:05] Speaker 02:
There has to be some kind of gesture so that you can actually make contact with two separate inputs that are located in two different places.

[00:15:15] Speaker 01:
Well, Griffin describes it as a single action, single continuous action,

[00:15:20] Speaker 01:
And just as you would have to have two inputs by pressing the button, it has to both press the button and then have a scan.

[00:15:28] Speaker 01:
So there are two actions.

[00:15:29] Speaker 01:
They may be separated by very little time.

[00:15:31] Speaker 01:
That's what Griffin is describing.

[00:15:33] Speaker 01:
A single action with two inputs.

[00:15:36] Speaker 01:
But we're not relying exclusively on Griffin.

[00:15:38] Speaker 01:
We're relying on Griffin with Davis, Your Honor.

[00:15:41] Speaker 01:
So the points I wanted to emphasize is that the board understood that the word initiates, as used repeatedly throughout the claims, not the specification because it never does appear there, means that performs in the clause we're construing must mean initiates.

[00:15:58] Speaker 01:
That's in claim one.

[00:15:59] Speaker 01:
First base did not appeal that.

[00:16:00] Speaker 01:
If you apply the same construction to claims 10 and 11, Apple would prevail.

[00:16:06] Speaker 01:
Thank you very much.

[00:16:07] Speaker 04:
Thank you.

[00:16:08] Speaker 04:
We'll give you two minutes for a bottle.

[00:16:09] Speaker 04:
Mr. Granahan?

[00:16:37] Speaker 00:
Thank you, Your Honors.

[00:16:38] Speaker 00:
May it please the court.

[00:16:40] Speaker 00:
The court should affirm the board's final written decision finding that the challenged method claims of the 373 and 419 patents are patentable.

[00:16:49] Speaker 00:
Almost Apple's entire argument in this case is premised on ignoring claim language.

[00:16:54] Speaker 00:
And that claim language is without additional user input, which appears.

[00:16:57] Speaker 02:
What is the meaning of the second to last limitation in claim 11 of 373 when it talks about initiating

[00:17:07] Speaker 02:
Where it says the first and second, at least one of the first and second functions is initiated subsequent to changing the active state and displaying the lock screen in response to the one-time pressing.

[00:17:24] Speaker 00:
The second to last of the claim 11 of 373 patent, Your Honor?

[00:17:29] Speaker 02:
Right.

[00:17:29] Speaker 02:
I just read it out loud.

[00:17:33] Speaker 02:
I'm trying to understand what is the point of that limitation.

[00:17:37] Speaker 02:
If we were to agree with you that above in claim 11, the reference to in response to the one-time pressing, in addition to changing to the active state, there is the performing of at least one of the first and second functions without additional user input.

[00:17:57] Speaker 02:
Other than the, you know, one-time pressing.

[00:18:01] Speaker 02:
So what is this other limitation down here?

[00:18:03] Speaker 02:
What work is it really doing, that second to last limitation?

[00:18:08] Speaker 00:
Sure, Your Honor.

[00:18:09] Speaker 00:
So the first limitation requires that at least one of the first and second functions be performed without additional user input.

[00:18:16] Speaker 00:
Right, no.

[00:18:16] Speaker 02:
I'm talking about the second to last.

[00:18:18] Speaker 02:
Can we just talk about that?

[00:18:20] Speaker 02:
What is that trying to communicate to us?

[00:18:23] Speaker 00:
And so the

[00:18:25] Speaker 00:
Second to last limitation requires at least one of the first and second functions is initiated subsequent to changing to the active state and so for example You know let's say the first function is performed without additional user input What about the second function the second function could be covered by this this second limitation and the second function can be the one that is Initiated subsequent to changing to the active state and displaying the lock screen in response to the one-time pressing

[00:18:50] Speaker 02:
So you're talking about, for this second to last limitation, it is necessarily talking about the other function than the function that is being performed in the earlier limitation in the claim?

[00:19:07] Speaker 00:
I don't think it would have to be different, Your Honor.

[00:19:11] Speaker 00:
I think as the... It would have to be a different function, wouldn't it?

[00:19:16] Speaker 00:
I don't think it would.

[00:19:17] Speaker 00:
The first function

[00:19:19] Speaker 00:
upon a one-time pressing the display could turn on and then the first function can be performed without additional user input.

[00:19:27] Speaker 00:
I think that would satisfy both claim limitations even though the display turns on first and then... I don't understand that.

[00:19:35] Speaker 00:
Well, the without additional user input limitation I don't think says anything about the timing of

[00:19:45] Speaker 04:
It seems to suggest that some functions have to be performed without additional user input and some have to be performed later with user input, right?

[00:19:58] Speaker 04:
I don't know what the significance of that is for your claim construction.

[00:20:03] Speaker 00:
I don't think another would have to be performed with additional user input.

[00:20:06] Speaker 02:
I don't think that would be... We're trying to read these two limitations and we're trying to draw a straight line through your claim.

[00:20:14] Speaker 02:
Or is there some kind of internal inconsistency in your claim?

[00:20:18] Speaker 02:
If we were to agree with you on the key limitation here of performing without additional user input and trying to make sense of this other limitation towards the bottom of the claim.

[00:20:31] Speaker 02:
All it says is one of the two functions has to be initiated subsequent to changing to the active state.

[00:20:41] Speaker 04:
So if it was initiated later, it would have to be performed later, right?

[00:20:49] Speaker 00:
All the without additional user input language requires that it be performed without additional user input.

[00:20:55] Speaker 00:
I don't think it precludes first turning on the display.

[00:20:58] Speaker 00:
As long as the display is turned on and the function is performed without additional user input.

[00:21:04] Speaker 02:
What about the initiate versus perform?

[00:21:07] Speaker 02:
Why is this claim talking about merely initiating one of the two functions down here and towards the end of the claim?

[00:21:17] Speaker 00:
Why is it talking about initiating it?

[00:21:19] Speaker 02:
Yeah, what is going on?

[00:21:20] Speaker 02:
Can you walk me through the logic of what this

[00:21:24] Speaker 02:
particular limitation is calling for.

[00:21:27] Speaker 02:
That's why I was asking if this is talking about the other function.

[00:21:35] Speaker 02:
If the earlier function is the first function, for example, that is being performed without additional user input, then for this claim to be internally logical, wouldn't it necessarily be the second function?

[00:21:51] Speaker 02:
i.e.

[00:21:51] Speaker 02:
not the first function that is simply being initiated.

[00:21:56] Speaker 00:
I don't think so, Your Honor.

[00:21:57] Speaker 00:
I don't think there's any inconsistency.

[00:21:59] Speaker 00:
I think that the display could be changed to the active state and display a lock screen in response to the one-time pressing of the activation button and the function performed without additional user input.

[00:22:13] Speaker 00:
I don't see any inconsistency between those.

[00:22:20] Speaker 02:
I won't belabor the point.

[00:22:23] Speaker 00:
I think this is also not an argument that I think appellees are making in this case.

[00:22:31] Speaker 02:
Well, we're confused because

[00:22:33] Speaker 02:
We don't understand why the claim is talking about initiating anything if the key limitation of performing a function without additional user input, in your view, requires the total performance and completion of that function.

[00:22:50] Speaker 02:
So why is there yet a separate limitation in both claim 11 of the 373 and claim 10 of the 419

[00:22:59] Speaker 02:
Also talking in terms of merely initiating a function or a fingerprint authentication step.

[00:23:05] Speaker 00:
I just think there are two different requirements, Your Honor.

[00:23:08] Speaker 00:
One relates to when the display turns on.

[00:23:10] Speaker 00:
And if one of the functions is performed after the display is turned on, then that would meet this limitation.

[00:23:18] Speaker 00:
But that doesn't say anything about whether it would meet the without additional user input limitation.

[00:23:22] Speaker 00:
I don't believe there's any inconsistency between the two.

[00:23:25] Speaker 00:
Two different functions.

[00:23:27] Speaker 03:
Mr. Granahan, perhaps it would be helpful if you could give us an example of some functions.

[00:23:36] Speaker 03:
Instead of just first function, second function, give us some examples of some actual functions and walk us through what this claim covers.

[00:23:47] Speaker 00:
Well, so the claim 11 of the 373 patent says what functions are covered.

[00:23:52] Speaker 00:
One is, for example, a hands-free function.

[00:23:54] Speaker 00:
Another is a fingerprint authentication function.

[00:23:57] Speaker 00:
So for example, let's take a hands-free function as the first function.

[00:24:03] Speaker 00:
The user could press the button, the display could turn on first, and then the hands-free function could be performed.

[00:24:10] Speaker 00:
I think that would meet all the claims.

[00:24:13] Speaker 02:
What do you mean by hands-free function can be performed?

[00:24:16] Speaker 00:
The specification describes the hands-free function as really entering into another mode, a hands-free mode.

[00:24:22] Speaker 02:
Right.

[00:24:23] Speaker 02:
So just activating the mic, microphone, is all, in your view, is required for performing a hands-free function.

[00:24:33] Speaker 00:
Is that right?

[00:24:34] Speaker 00:
In that case, that's correct.

[00:24:36] Speaker 02:
Okay.

[00:24:38] Speaker 02:
Okay.

[00:24:39] Speaker 02:
I'm sorry.

[00:24:39] Speaker 02:
Keep going with your example.

[00:24:41] Speaker 00:
Well, that was really the end of my example.

[00:24:45] Speaker 00:
In that case, the function would be initiated subsequent to changing to the active state.

[00:24:50] Speaker 00:
And it would have been performed without additional user input.

[00:24:55] Speaker 00:
And I think it's important to note here, we've been talking about these two different limitations, one of which uses performs and one of which uses initiates.

[00:25:02] Speaker 00:
The claims themselves use the term perform and initiate.

[00:25:06] Speaker 00:
So there must be a difference between perform and initiate.

[00:25:08] Speaker 02:
Can we move before you run out of time to what I see as Apple's backup argument as to claim 11 or alternative argument about how the iOS reference still meets claim 11's performance of a function without additional user input because

[00:25:32] Speaker 02:
The iOS reference talks about activating a mic based on pressing a button.

[00:25:40] Speaker 02:
And you agree that that would satisfy performance of a function without additional user input.

[00:25:52] Speaker 02:
So why isn't that limitation in claim 11 met by iOS?

[00:26:01] Speaker 00:
A couple of points, Your Honor.

[00:26:03] Speaker 00:
One, all they said in their papers below was a citation or a statement that the hands-free function is performed without additional user input, followed by some citations.

[00:26:15] Speaker 00:
They did not explain how this hands-free function is performed without additional user action.

[00:26:21] Speaker 02:
Let's put that to the side because we can discuss that after you answer my question.

[00:26:27] Speaker 02:
What's the real answer to the question of

[00:26:31] Speaker 02:
iOS discloses by the pressing of a button the activation of a microphone.

[00:26:39] Speaker 02:
You agree that performance of hands-free function without additional user input requires nothing more than pressing of the button to switch a terminal to hands-free mode.

[00:26:55] Speaker 02:
So why doesn't the iOS therefore teach this limitation

[00:26:59] Speaker 02:
of performing a function without additional user input.

[00:27:05] Speaker 00:
Well, so the portions that Apple cited to for iOS, it actually never says anything about a microphone.

[00:27:11] Speaker 00:
Without the factual development, we don't know.

[00:27:13] Speaker 02:
It talks about voice activation.

[00:27:14] Speaker 00:
It does, Your Honor, but we don't know exactly what's involved within the device or something with activating the hands-free function.

[00:27:23] Speaker 02:
Of course... It didn't rely on that portion of iOS for rejecting claim one.

[00:27:29] Speaker 00:
No, it did, your honor.

[00:27:31] Speaker 00:
My point is that iOS doesn't say anything about activating a microphone in this case.

[00:27:37] Speaker 00:
And so we don't know exactly when the microphone is activated.

[00:27:42] Speaker 00:
And the problem, the real problem is because this was only presented in a few lines in a claim chart, there was no factual development on this issue.

[00:27:50] Speaker 00:
I mean, and let's just say it does disclose activating a microphone.

[00:27:53] Speaker 00:
There was no

[00:27:55] Speaker 00:
factual development on the motivation to combine related to claim 11 as opposed to claim 1.

[00:28:01] Speaker 00:
This is a backup argument that was not made to the board.

[00:28:06] Speaker 02:
Didn't the board find that there was motivation to combine Griffin Davis and iOS as to claim 1?

[00:28:13] Speaker 00:
It did, Your Honor.

[00:28:14] Speaker 02:
And there's no appeal on that question, right?

[00:28:18] Speaker 00:
That's correct, Your Honor.

[00:28:19] Speaker 02:
So there is a fact finding that

[00:28:21] Speaker 02:
Yes, there's a motivation to combine all these references, including iOS.

[00:28:26] Speaker 00:
That's correct, Your Honor.

[00:28:26] Speaker 00:
There is with respect to Claim 1, but as the Board found, Claim 11 requires something different.

[00:28:32] Speaker 02:
And the Board did not find that there was... What is it that's different about Claim 11 if the underlying fact-finding is iOS teaches the performance of a hands-free function by

[00:28:48] Speaker 02:
by triggering this voice activation?

[00:28:53] Speaker 00:
Well, the timing requirements of, I'm sorry, not the timing requirements, the requirements of claim 11 are different in that they require performance without additional user input.

[00:29:02] Speaker 00:
There was no explication of, putting aside claim 1, why a person with a learning skill in the art would have, for example, been motivated to combine iOS with Griffin and Davis.

[00:29:11] Speaker 02:
But is there any additional user input required by iOS other than the pressing of the button?

[00:29:18] Speaker 02:
to convert the phone to a voice activation mode.

[00:29:24] Speaker 02:
I think the answer is no.

[00:29:26] Speaker 00:
I don't think there is based on the face of the reference, Your Honor.

[00:29:30] Speaker 00:
But again, this was only presented in a couple of lines.

[00:29:33] Speaker 00:
So there was simply no factual development on that point.

[00:29:36] Speaker 00:
And I do want to stress, Your Honor, that this argument only affects the 373 patent.

[00:29:40] Speaker 00:
And we're here on the 373 and 419.

[00:29:42] Speaker 00:
I understand that.

[00:29:43] Speaker 00:
So this would not result in it.

[00:29:45] Speaker 02:
I'm just wondering out loud why wouldn't we remand the question on whether

[00:29:51] Speaker 02:
the board needs to address whether the iOS reference meets this limitation of performing a hands-free function without additional user input, given that it didn't actually say anything about that in the decision.

[00:30:07] Speaker 02:
It talked about why Griffin doesn't meet that limitation.

[00:30:10] Speaker 02:
It talked about why Davis didn't meet that limitation, but it didn't say anything about why iOS didn't meet that limitation.

[00:30:17] Speaker 02:
And all three references are cited in the claim chart

[00:30:21] Speaker 02:
as to claim 11, and then claim 11 additionally cross-references to claim 1 in the claim chart.

[00:30:28] Speaker 02:
And there, there's a fuller explication about why iOS's voice activation mode meets the performance of a hands-free function.

[00:30:39] Speaker 00:
But the analysis for claim 1, Your Honor, does not say anything about whether it meets this without additional user input limitation.

[00:30:46] Speaker 00:
Had Apple said more, then maybe a remand would be warranted.

[00:30:49] Speaker 00:
But at this point, their analysis that they presented to the board was entirely conclusory.

[00:30:54] Speaker 00:
And Apple cannot meet its burden based only on a conclusory argument.

[00:30:58] Speaker 02:
I understand you're saying it's conclusory, but we don't have anything from the board saying that, as to the iOS reference, Apple's argument was too skeletal and too conclusory.

[00:31:12] Speaker 02:
The board's opinion.

[00:31:13] Speaker 02:
I think as you would acknowledge, is entirely silent as the iOS manual, leaving me to wonder if the board just overlooked it, never addressed it, and so we don't have any way of being able to tell what the board thought.

[00:31:27] Speaker 02:
Perhaps the board didn't think anything because it missed it.

[00:31:31] Speaker 00:
The board may not have mentioned iOS specifically there, but it did quote Apple's argument from the claim chart, which mentioned iOS.

[00:31:38] Speaker 00:
And then the board followed it up by saying that this argument is too cursory to meet its burden.

[00:31:43] Speaker 00:
So I think whether it discussed iOS further, it did consider the argument and found it to be too cursory.

[00:31:49] Speaker 04:
Where did it say that?

[00:31:51] Speaker 00:
It said that on A45.

[00:31:59] Speaker 00:
What page was that again, Your Honor?

[00:32:01] Speaker 02:
A45, the final paragraph.

[00:32:07] Speaker 02:
With the middle paragraph, it identifies the petitioner's arguments, citing to Griffin, then Davis, and then voice control iOS.

[00:32:19] Speaker 02:
And then it miscited paragraph 28 of iOS when it was paragraph 38, and then 48 and 77.

[00:32:27] Speaker 02:
And then the next paragraph, it says, we find these cursory statements by petitioner are insufficient, and then it

[00:32:33] Speaker 02:
further goes on and talks about Griffin and Davis carrying over to A46, but it never says anything about iOS.

[00:32:43] Speaker 02:
And just based on a plain reading of iOS, it does look like that the mere pressing of a button meets your conception of what a hands-free function is, which is nothing more than converting something over to voice activation.

[00:33:02] Speaker 00:
So your honor, I was referring to page 111 of the appendix.

[00:33:06] Speaker 00:
This is an example.

[00:33:08] Speaker 00:
This is from the 373 final written decision in which the board sets out Apple's entire argument on this point, starting in the middle paragraph it quotes.

[00:33:19] Speaker 02:
I'm sorry, what page?

[00:33:22] Speaker 00:
Page 111 of the appendix.

[00:33:26] Speaker 04:
That's not part of the decision.

[00:33:29] Speaker 00:
Yes, this is part of the board's decision on the 373 patent.

[00:33:33] Speaker 01:
What is this?

[00:33:43] Speaker 02:
Okay.

[00:33:44] Speaker 02:
I can't tell.

[00:33:45] Speaker 02:
That might be identical to A45, but... Yeah, it seems to be.

[00:33:55] Speaker 02:
All right.

[00:33:56] Speaker 02:
Well, on A111, what do you want to point us to?

[00:34:00] Speaker 02:
Pardon your honor.

[00:34:01] Speaker 02:
What do you want to point this to a page a 111?

[00:34:04] Speaker 00:
I was just pointing to where the board sets out Apple's entire argument on this point for the without additional user action on the 373 patent it quotes it starting in no additional user input in the middle paragraph there and then the very next paragraph it starts with we find that these

[00:34:23] Speaker 00:
cursory statements by petition are insufficient to show that the proposed combination teaches the without additional user input limitation of claim 11.

[00:34:30] Speaker 00:
So I think this shows that the board did consider the argument and rejected it as too cursory.

[00:34:35] Speaker 02:
Interestingly, the board here at A111, it doesn't recognize that a portion of Apple's arguments as to this limitation claim 11 was

[00:34:48] Speaker 02:
cross-referencing claim sections of claim one of its claim chart where there's a Fuller explanation of its theory on iOS and again the same problem arises that a 111 a 112 like a 45 46 the board is only talking about Griffin and Davis it doesn't say one thing about iOS and

[00:35:15] Speaker 00:
And I understand that, Your Honor.

[00:35:17] Speaker 00:
I just mean in the middle paragraph, it does mention IOS.

[00:35:20] Speaker 00:
I think the cross-reference doesn't help it because the analysis for claim one does not analyze this without additional user input limitation.

[00:35:32] Speaker 00:
And I see I'm well over my time.

[00:35:34] Speaker 00:
So unless there are further questions.

[00:35:37] Speaker 04:
Okay.

[00:35:37] Speaker 04:
Thank you, Mr. Varnahan.

[00:35:53] Speaker 01:
Thank you, Your Honor.

[00:35:55] Speaker 01:
Just to start quickly with the alternative argument, as Your Honor suspected, the argument with respect to the hands-free only requiring activation of the microphone did not arise until the sir reply.

[00:36:09] Speaker 01:
So in the patented response in 373, there was no attempt to distinguish between claims 1 and 11, and so our reply did not address that argument because it wasn't raised until the sir reply.

[00:36:21] Speaker 04:
But I do want to... If you thought there was an alternative argument here, you could have made it, or you could have asked for an opportunity to make a further submission, but you didn't, and all we've got is this claim chart, right?

[00:36:41] Speaker 01:
Well, what we have is the fact that there is a specific

[00:36:46] Speaker 01:
claim or assertion that iOS discloses without additional user input, referring back to the disclosures in iOS that are contained in full in claim one part of the claim chart that the board recognized disclosed application.

[00:37:01] Speaker 04:
Where is the discussion of this in the claim chart on claim one?

[00:37:06] Speaker 01:
On claim one, it's in claim chart 1G, I believe.

[00:37:12] Speaker 04:
1G?

[00:37:12] Speaker 01:
I don't have the claim chart with me, but that's what I have in my notes, Your Honor.

[00:37:17] Speaker 01:
where we reproduce in full IOS's.

[00:37:20] Speaker 02:
A350.

[00:37:27] Speaker 01:
And you're right.

[00:37:32] Speaker 01:
So in order, I do want to say that at the very least, I think that this calls into question that there's ambiguity.

[00:37:41] Speaker 01:
board itself can screen the word performs to mean initiates with respect to claims one.

[00:37:45] Speaker 01:
We should look to the specification.

[00:37:47] Speaker 01:
There is no disclosure of this in the specification.

[00:37:50] Speaker 01:
The specification, as I said before, uses performs to mean initiates many instances.

[00:37:55] Speaker 01:
And in claim 419, right after the without additional user input language, it says that the terminal operates such that

[00:38:05] Speaker 01:
and then describes in fuller detail how the terminal operates, and each instance it describes the relationship between the one-time pressing and the function as initiating the function.

[00:38:16] Speaker 01:
The board acknowledged that that meant that the word perform should be construed as initiating within the context of claim one, which has all the same language except for this one.

[00:38:28] Speaker 02:
board as to claim one, just simply saw claim one as open to the possibility of additional inputs being made in order to actually perform to completion the recited functions.

[00:38:44] Speaker 02:
Not that the board was reading the word perform in claim one as to be merely nothing more than initiate.

[00:38:53] Speaker 01:
Well, it construed the full phrase as requiring a relationship only between the one-time pressing and initiating the function.

[00:39:00] Speaker 01:
And if without additional user input modifies that whole phrase, then it means that that has to happen.

[00:39:07] Speaker 01:
The one-time pressing has to initiate the function without any additional user input.

[00:39:12] Speaker 01:
That has to be direct.

[00:39:13] Speaker 01:
In the language of column four, it has to be immediately operating.

[00:39:17] Speaker 01:
But it doesn't require, as your honor said, that it operate to completion, that there can be no additional user input during the performance.

[00:39:27] Speaker 01:
That's adding words to the language that doesn't appear there.

[00:39:31] Speaker 01:
And again, at the very least, this is ambiguous, and so you should look to the specification.

[00:39:35] Speaker 01:
Look to how the word performs is used in the specification.

[00:39:38] Speaker 01:
repeatedly used in a way that is consistent with initiates, as describing, for example, the disclosed embodiments, the one that is disclosed and discussed in detail, which is the iris recognition function, in which it is explicit that the function is called up by the one-time pressing.

[00:39:58] Speaker 01:
but then requires that the camera that's activated by it be presented with an iris that is scanned and then compared.

[00:40:05] Speaker 04:
So the user input has to... I think we're about out of time.

[00:40:08] Speaker 04:
There are most of the further questions, right?

[00:40:10] Speaker 01:
Thank you, Ryan.

[00:40:10] Speaker 04:
Okay.

[00:40:10] Speaker 04:
Thank both counsel, basis and me.

[00:40:13] Speaker 04:
Now, for the next case, we... one counsel is going to appear.

[00:40:19] Speaker 04:
by video so I think we'll take a brief recess here while department deputy sets up the video and Judge Lynn if you can just stay on the line we'll be back.

[00:40:32] Speaker 03:
Yes I'll stand by.

[00:40:35] Speaker 04:
Okay so we'll take a brief recess.

[00:43:52] Speaker 02:
Yes, I can hear you hear me.

[00:43:56] Speaker 02:
Yes.

[00:43:58] Speaker 00:
Thank you.