[00:00:02] Speaker 00:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:07] Speaker 00:
God save the United States in this honorable court.

[00:00:12] Speaker 01:
The first case for argument this morning is 20-1330, Apple versus Universal Secure Registry.

[00:00:20] Speaker 00:
Ms.

[00:00:21] Speaker 01:
Ahmadi, whenever you're ready.

[00:00:23] Speaker 00:
Good morning, and may it please the court.

[00:00:25] Speaker 00:
My name is Brittany Ahmadi, and I represent Apple.

[00:00:28] Speaker 00:
I'll give you three minutes of time for the battle.

[00:00:31] Speaker 00:
This is a case where the two prior art references at issue disclose systems that are nearly identical, not just to the challenge 539 patent claims, but also to each other.

[00:00:42] Speaker 00:
All three disclose systems for facilitating secure transactions by withholding sensitive user information from the merchant and instead using a time-varying code in its place.

[00:00:54] Speaker 00:
The board's conclusion that the challenge claims are patentable was based on three errors.

[00:00:59] Speaker 00:
I'll start first with the withholding account identifying information from the provider limitation.

[00:01:05] Speaker 00:
The board's finding that the prior art failed to disclose this limitation was wrong for two reasons.

[00:01:11] Speaker 00:
First, the board erred in applying its own construction by interpreting the claims to require withholding all account identifying information.

[00:01:21] Speaker 00:
That interpretation is inconsistent with the specification, which makes clear that only some, not all, personal information is withheld from the provider.

[00:01:31] Speaker 00:
But, Council, is this positive difference between one result and the other?

[00:01:37] Speaker 00:
Yes, Your Honor.

[00:01:40] Speaker 00:
If our proposed construction or interpretation of the claims is correct, there's no dispute that both Reber and Franklin, the two prior references at issue,

[00:01:51] Speaker 00:
in this appeal disclose that limitation.

[00:01:53] Speaker 00:
Okay, proceed.

[00:01:57] Speaker 00:
And the proposed interpretation that Apple presented below before the board and presents on appeal is consistent with the specification which describes the invention as relating to a system that may be used to, quote, selectively provide personal financial or other information about a person to authorize users.

[00:02:20] Speaker 00:
In particular, the patent explains that the system will generally allow anyone to access basic personal information.

[00:02:27] Speaker 00:
In other words, some personal information is provided to the merchant in this system.

[00:02:32] Speaker 00:
The embodiments in the specification similarly describe withholding particular information, such as account numbers, credit card numbers, address or telephone numbers, based on the particular circumstances at issue.

[00:02:46] Speaker 00:
USR has not identified a single embodiment described in the 539 patent that describes withholding all personal information from the provider.

[00:02:55] Speaker 00:
The board's interpretation of the claims was also inconsistent with the claims, which merely require withholding account identifying information from the provider and providing that withheld account identifying information to a third party.

[00:03:12] Speaker 00:
Nothing in the claims requires withholding all account-identifying information from the provider.

[00:03:17] Speaker 00:
If that were the case, all account-identifying information would then have to also be provided to the third party, which is inconsistent with the teachings and the specification.

[00:03:27] Speaker 03:
Can I just ask you this question?

[00:03:29] Speaker 03:
This is just Toronto.

[00:03:31] Speaker 03:
Does the use of the definite article in front of the account information

[00:03:40] Speaker 03:
matter here, does that suggest that whatever in the assessing limitation constitutes account identifying information, all of that must be provided to a third party but not to the, let's just call it the merchant.

[00:04:09] Speaker 00:
That's correct, Your Honor.

[00:04:10] Speaker 00:
So the full limitation is information including account identifying information wherein the account identifying information is not provided to the provider and the account identifying information is provided to a third party.

[00:04:24] Speaker 00:
So the antecedent basis is account identifying information which is within the broader scope of information and it's that information that is both withheld

[00:04:34] Speaker 00:
from the merchant as well as provided to the third party.

[00:04:38] Speaker 00:
And I think it's important to read those limitations in conjunction with each other because it makes clear that whatever is being withheld must be provided to the third party.

[00:04:48] Speaker 00:
And that's also consistent with the teachings of the specification.

[00:04:51] Speaker 03:
So there's an example in the specification in which some of what qualifies as account identifying information, which is a quite capacious category,

[00:05:04] Speaker 03:
I think as you suggest, that doesn't meet the providing limitation.

[00:05:20] Speaker 03:
Even though it is account identifying information, it is provided to one but not provided to the other.

[00:05:30] Speaker 00:
That's correct, Your Honor.

[00:05:31] Speaker 00:
So the specification teaches, for example, withholding credit card information from the merchant and instead providing that information to a bank or some other third party.

[00:05:44] Speaker 00:
And similarly teaches withholding the address information from the merchant and instead providing that information to the delivery service.

[00:05:52] Speaker 00:
So it's reading those two limitations in connection with each other that whatever it is that you're withholding is what's being provided to the third party.

[00:06:03] Speaker 01:
Ms.

[00:06:04] Speaker 01:
Amati, this is Judge Prost.

[00:06:07] Speaker 01:
This is just kind of a housekeeping question before your time runs out.

[00:06:11] Speaker 01:
Are there other proceedings, including a 101 proceeding, that involves all of the claims in dispute in this case, also pending before our court?

[00:06:22] Speaker 00:
Yes, Your Honor.

[00:06:23] Speaker 00:
So, the 101 proceeding involves all claims of the 539 patent with Code 22 as the exemplary claim.

[00:06:31] Speaker 00:
And then separately, this proceeding only involves some of the claims, so claims 1 through 3, 16, 21 through 24, 37, and 38.

[00:06:42] Speaker 00:
There's also the separate visa IPR proceeding involving this patent, which will be argued next, which involves all of the claims in this proceeding and in addition claims 4, 9, 25, and 31.

[00:06:57] Speaker 01:
And so, and all of these claims are the subject of a 101 of current case pending before this court on 101 involving ineligibility under 101.

[00:07:07] Speaker 01:
Is that correct?

[00:07:08] Speaker 03:
That's correct.

[00:07:09] Speaker 03:
You're on.

[00:07:10] Speaker 03:
All right.

[00:07:10] Speaker 03:
Thank you.

[00:07:12] Speaker 03:
Just to complete the loop, if in that case, the district court case, if the district court's invalidation under 101 is upheld, would the result here be to...

[00:07:27] Speaker 03:
um, um, declare this proceeding moot and, um, remanded for dismissal as moot under months and where principles.

[00:07:40] Speaker 00:
I believe that that's correct.

[00:07:41] Speaker 00:
Your honor, if there's a final judgment in the district court action, holding all of the claims unpatentable, then this appeal would be moved.

[00:07:54] Speaker 00:
Um,

[00:07:55] Speaker 00:
Under the correct interpretation of the claims, there's no dispute that both Reber and Franklin teach withholding account identifying information.

[00:08:05] Speaker 00:
But even under the board's proposed interpretation, that limitation is taught by the prior art, including Franklin, which teaches that no account identifying information is provided to the merchant.

[00:08:18] Speaker 00:
And that was claimed even under the board's erroneous interpretation of the claim.

[00:08:25] Speaker 00:
If I could turn to the second limitation at issue, which is the third party limitation.

[00:08:30] Speaker 00:
This is the requirement that the withheld account identifying information be provided to a third party.

[00:08:38] Speaker 00:
The board committed three errors in assessing this limitation.

[00:08:41] Speaker 00:
First, the board erred by failing to consider Apple's arguments in reply.

[00:08:46] Speaker 00:
And as this court has explained in several cases, including Anacar Pharmaceuticals and Andrea Electronics,

[00:08:53] Speaker 00:
A petition may introduce additional evidentiary support after the petition's stage if the evidence is a legitimate reply to evidence introduced by the patent owner.

[00:09:03] Speaker 00:
Here, USR made arguments in its patent owner response based on the very passage that the board found had not been previously addressed, which Apple then directly responded to in its reply.

[00:09:14] Speaker 00:
Moreover, USR had an opportunity to address those arguments in its surreply, and the board's failure to consider Apple's reply was error.

[00:09:23] Speaker 03:
Mr. Mowdy, this is Judge Toronto.

[00:09:25] Speaker 03:
Can I ask, this is, I guess, sort of a procedural question that seems to come up rather a lot.

[00:09:33] Speaker 03:
The director's regulation, I think it's the regulation or maybe it's just the trial practice manual, talks about, you know, responding to, that reply can respond to the patent owner response.

[00:09:47] Speaker 03:
As I understand what the board has done,

[00:09:51] Speaker 03:
to my mind quite sensibly, is not quite to take those words literally because it would not be within the spirit of that to say that you make no case on a point in the petition.

[00:10:09] Speaker 03:
The patent owner responds and says you don't make a case in the petition and you couldn't have made a case

[00:10:18] Speaker 03:
And now suddenly the reply gets to make a brand new case.

[00:10:22] Speaker 03:
That would in some sense be responsive to the patent owner response, but that can't possibly be right and the board doesn't do it that way.

[00:10:31] Speaker 03:
So you can't, that is, fill a gap in the petition.

[00:10:40] Speaker 03:
All you can do is explain and defend why what you did say was sufficient.

[00:10:46] Speaker 03:
If that's right, and I think that's

[00:10:48] Speaker 03:
both the board's practice and what the board's practice has to be.

[00:10:54] Speaker 03:
What would that idea do to the issue in this case?

[00:11:01] Speaker 00:
Your Honor, I think in this case, there's no dispute that Apple raised the argument and raised the combination of the references.

[00:11:10] Speaker 00:
and explain that a skilled partisan would have combined those references.

[00:11:16] Speaker 00:
In response to USR's argument,

[00:11:19] Speaker 00:
which relied on a particular passage in the specification, Apple then explained why their reading of that passage was incorrect.

[00:11:26] Speaker 00:
So all of the evidence and arguments were already in the record as a result of Apple's petition, and Apple was merely responding to the arguments as USR raised them.

[00:11:38] Speaker 00:
So even under that reading that Your Honor articulated, what Apple did in its reply brief here was proper within the board.

[00:11:47] Speaker 00:
regulations and also within this court's case law.

[00:11:52] Speaker 00:
Thank you.

[00:11:55] Speaker 00:
And the second issue that the board failed to consider is that Apple's arguments on the third-party loans can rely on the combination of Reber and Franklin rather than Reber or Franklin alone.

[00:12:08] Speaker 00:
Reber teaches the directing of debiting and crediting of accounts, and Franklin just details how this is accomplished by sending the transaction information

[00:12:16] Speaker 00:
to the bank's processing center.

[00:12:18] Speaker 00:
The board offered no explanation for its conclusory rejection of Apple's argument that the combination of those two references taught third-party limitation, and that was error for case law in grid energy solutions.

[00:12:31] Speaker 00:
I see that I am into my rebuttal time, so I'll just briefly touch on the last

[00:12:38] Speaker 00:
limitation, which is the access restrictions limitation, and whether there was a requirement to perform that limitation at the secure registry rather than at the merchant's bank.

[00:12:49] Speaker 00:
Apple presented that argument in its petition, and the board was incorrect to disregard the argument in Apple's reply.

[00:12:56] Speaker 00:
Again, a skilled artisan, Apple explained, would have been motivated to move that step from the authenticating bank

[00:13:07] Speaker 00:
into the secure registry and that would have been a simple design choice.

[00:13:12] Speaker 00:
If there are no further questions, I'll save the remainder of my time for rebuttal.

[00:13:16] Speaker 01:
Thank you.

[00:13:17] Speaker 01:
Mr. Matthews.

[00:13:20] Speaker 02:
Good morning and may it please the court.

[00:13:23] Speaker 02:
The board's view is that the combination of Weaver and Franklin

[00:13:26] Speaker 02:
didn't even come close to disclosing the claimed invention.

[00:13:31] Speaker 02:
The board found three independent, what it called, dispositive reasons for upholding the validity of the 539 patent over the petition.

[00:13:39] Speaker 02:
And to win on appeal, Apple must essentially reverse all three of these grounds.

[00:13:44] Speaker 02:
I will say, with respect to the question that Judge Toronto raised, we would certainly agree that the interpretation of those guidelines at the Patent Office is exactly how, Your Honor,

[00:13:57] Speaker 02:
laid it out.

[00:13:58] Speaker 02:
It cannot be the case that when the petition is flawed and then the patent owner responds, the patent owner points out that flaw, that the petitioner will be allowed to then fill that gap by pointing to some other part of the prior disclosure or by introducing

[00:14:21] Speaker 02:
either through attorney argument or with their expert, a new motivation to either combine or to make the modification.

[00:14:30] Speaker 02:
So that, in fact, has happened in a number of cases here in this petition, because for each of the three independent dispositive reasons, this is a situation where the prior art doesn't disclose individually

[00:14:46] Speaker 02:
the limitations that are claimed.

[00:14:48] Speaker 02:
And so the combination of those two, the board found again and again, didn't create out of whole cloth or out of thin air a missing limitation.

[00:14:57] Speaker 02:
If we were to look at, for example, limitation 1D, which requires that the secure registry execute a restriction mechanism to determine whether compliance with access restrictions for the provider to secure data for the entity for completing the transaction

[00:15:15] Speaker 02:
based on at least the indication of the provider and the time-varying multi-character code was disclosed.

[00:15:23] Speaker 02:
The board didn't need to focus on everything that's in that limitation because what the board focused on was where any merchant validation was taking place.

[00:15:33] Speaker 02:
The petition acknowledged that Reber discloses no merchant restriction mechanism at all.

[00:15:40] Speaker 02:
And also that any merchant validation, that's why it's referred to in Franklin,

[00:15:44] Speaker 02:
takes place at the providers or the merchants acquiring bank and not at the secure registry.

[00:15:51] Speaker 02:
That's in the petition at appendix 2779 to 80 and then the decision at appendix 11 through 12.

[00:16:00] Speaker 02:
It's also important to remember what's not being challenged here.

[00:16:05] Speaker 02:
What the references do and do not explicitly disclose is not being challenged.

[00:16:09] Speaker 02:
The board

[00:16:10] Speaker 02:
was very clear on what they found in the art and what was not disclosed in the art.

[00:16:14] Speaker 02:
And Apple isn't finding, hasn't ruled or challenging that the board's interpretation of the references is incorrect.

[00:16:22] Speaker 02:
Nor can the board be challenged at this point about the constructions of third party or account identifying information.

[00:16:30] Speaker 02:
Apple proposed the definition for account identifying information and didn't challenge the construction for third party as well.

[00:16:38] Speaker 02:
With respect to limitation 1D, the board found that Franklin's known technique was validating at the acquiring bank, not the secure registry, and found that the petition provided no reason for a skilled artisan to move Franklin's merchant validation from the merchant bank to the secure registry.

[00:17:00] Speaker 02:
That's in appendix 13.

[00:17:01] Speaker 02:
No rationale or persuasive reason for doing so.

[00:17:04] Speaker 02:
And Apple pointed to generic reasons for using Franklin generally to prevent merchant fraud.

[00:17:10] Speaker 02:
And the board said those reasons do not further justify the modification.

[00:17:14] Speaker 02:
In fact, at appendix 14, the board said the petition identifies no prior art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry.

[00:17:25] Speaker 02:
In other words, you can't take two references, neither of which disclose a limitation and combine them to create out of thin air, the missing limitation.

[00:17:34] Speaker 03:
Well, the crucial part is the out of thin air.

[00:17:37] Speaker 03:
You could certainly add some additional reason, but your point is, and I think the board said, there wasn't such an additional explanation provided.

[00:17:48] Speaker 02:
That's correct.

[00:17:49] Speaker 02:
That's correct.

[00:17:49] Speaker 02:
I think that's, that's why the emphasis on that sentence at appendix 14 is the petition identifies no prior art disclosure.

[00:17:56] Speaker 02:
There's, there's no, there's no indication of any, but Reber doesn't even check merchants because Reber trust merchants across the board.

[00:18:03] Speaker 02:
That's why Reber send address and name information to the merchant because they want the merchant to, uh, to complete the transaction by delivering the item.

[00:18:12] Speaker 02:
So there's no merchant checking that's even suggested in Reber.

[00:18:17] Speaker 02:
And so all that was left was a petition statement that said, well, Franklin checks merchants.

[00:18:24] Speaker 02:
It has something that says it's called merchant validation.

[00:18:28] Speaker 02:
But specifically, as you look at the claim, there's no discussion in Franklin about checking a merchant to see if they have permission to access the secure data at the secure registry that's needed to complete the transaction.

[00:18:43] Speaker 02:
The merchant validation that's disclosed in Franklin is secure data agnostic.

[00:18:48] Speaker 02:
It doesn't matter what the actual transaction is.

[00:18:52] Speaker 02:
At least there's nothing disclosed.

[00:18:54] Speaker 02:
There's no prior disclosure, as the board said.

[00:18:57] Speaker 02:
And so the fact that there's no disclosure in Franklin and no disclosure in Weber and no suggestion or reason provided by Apple's expert as to why

[00:19:11] Speaker 02:
that motivation to modify would be introduced into the combination, that was sufficient basis for that independent ground.

[00:19:19] Speaker 02:
The same can be said with respect to the missing third party.

[00:19:23] Speaker 02:
The board applied the same reasoning in concluding that Reber and Franklin did not disclose a claim limitation of providing account identifying information to a third party to enable or deny the transaction.

[00:19:35] Speaker 02:
And going back to the question that I think Judge Toronto raised about the

[00:19:41] Speaker 02:
determinant V, it's exactly correct that an entity, a customer, has lots of personal information.

[00:19:50] Speaker 03:
Can you address the specific point that the specification of this patent is counter to your view of, to the consequences of your view about the account identifying information?

[00:20:07] Speaker 02:
Yes, I can address that quickly.

[00:20:10] Speaker 02:
No, we disagree with that.

[00:20:12] Speaker 02:
Certainly there are a number of embodiments disclosed in the 539 and with respect to allowing or disallowing or granting access to a requester to differing scopes of personal information.

[00:20:32] Speaker 02:
At appendix 47, for example,

[00:20:34] Speaker 02:
that's suggested at column 10, lines 18 through 27, where the person who's setting up their database, so the entity who's putting their secure data into the USR, into the secure registry, decides that, let's see if I can get what it says, for each type of data entered, the person is asked to specify the type of access restrictions

[00:21:03] Speaker 02:
and or whom should be allowed to access the advanced personal data.

[00:21:07] Speaker 02:
So the data and then further on down in column 10 starting around line 40 and onto column 11, there's a discussion about when requesters come into the USR and request access, there's a determination to see whether they have access rights to that data.

[00:21:28] Speaker 02:
Now, looking at the claim, claim one for example,

[00:21:32] Speaker 02:
As I said, it's certainly the case that an entity would have lots of types of personal information.

[00:21:39] Speaker 02:
But what's addressed in the claim is exactly what Your Honor had pointed out, which is it is the account identifying information that's necessary for the transaction and that is sent to the third party.

[00:21:54] Speaker 02:
That is the information that needs to be withheld from the provider.

[00:22:00] Speaker 02:
And in each case, in Weber,

[00:22:02] Speaker 02:
and in Franklin, there is information sent to, well, I'll back up there.

[00:22:09] Speaker 02:
Actually, neither reference has a third party, but there is information that's sent to what would be the authorizing party.

[00:22:18] Speaker 02:
And that information is also, a portion of that information is also shared with the bank.

[00:22:25] Speaker 02:
I'm sorry, with the merchant.

[00:22:30] Speaker 02:
And that's what takes us out of the claim.

[00:22:32] Speaker 02:
And as the board correctly noted, to read that provision, as Apple is suggesting, that it's okay to share some of the information that you give to the third party with the merchant, just not one piece of information, would trivialize the third party requirement and would also make the

[00:23:02] Speaker 02:
the limitation overall meaningless.

[00:23:06] Speaker 02:
But I do want to go back to the third party omission because that is the second independent ground that there is no third party shown when they combined Reaver and Franklin.

[00:23:20] Speaker 02:
Recall that the board found that the claims include four categories of parties.

[00:23:24] Speaker 02:
There is a secure registry.

[00:23:26] Speaker 02:
There are entities with secure data stored at that registry.

[00:23:29] Speaker 02:
There's a provider with whom an entity is trying to transact.

[00:23:32] Speaker 02:
And then there's a third party who receives account identifying information to enable or deny the transaction.

[00:23:37] Speaker 02:
And the board construed third party at appendix nine as a party that is not the secure registry, the entity, or the provider.

[00:23:45] Speaker 02:
And the board correctly determined that the third party must be distinct from the other parties in the claim, including the secure registry.

[00:23:52] Speaker 02:
And in concluding that no third party is in the prior arch, the board determined first that Reber does not expressly disclose any third party.

[00:24:02] Speaker 02:
And that while Apple asserted that Franklin discloses a third party, the board correctly determined that Franklin's entire backend system that's shown in Figure 7 as the Bank Computing Center 32 at Appendix 1513 is operated by a single entity that also operates what Apple was mapping to the secure registry.

[00:24:22] Speaker 02:
And the board said the third party must operate independently from the secure party in Figure 7.

[00:24:29] Speaker 02:
And what's shown there is all the processing system

[00:24:33] Speaker 02:
both the back end processing system and what would be mapped to the secure registry are all part of the bank computing center.

[00:24:40] Speaker 02:
And to read this claim otherwise, and that requirement for third party otherwise, both trivializes the third party claim requirement and the board found lacks sufficient support for configuring the system to use a third party as claimed.

[00:24:56] Speaker 03:
Mr. Matthews, this is Judge Toronto.

[00:24:57] Speaker 03:
Can I ask you the same question that

[00:25:00] Speaker 03:
I think the chief asked of the other side.

[00:25:04] Speaker 03:
On the assumption that the Delaware District Court's 101 invalidity ruling is affirmed, what's your view of the proper disposition of the present IPR matter?

[00:25:16] Speaker 02:
I would agree with the discussion earlier, which is if Judge Connolly's 101 decision is affirmed, then that would moot all of the IPR appeals.

[00:25:29] Speaker 03:
Including the conditional motion to amend, which was conditional on the board.

[00:25:36] Speaker 02:
So that's not present in these appeals, if you're referring to the one in 20-1223?

[00:25:43] Speaker 02:
Is that the one you're referring to?

[00:25:47] Speaker 03:
My understanding is that in the two appeals this morning, there were unruled on conditional motions to amend.

[00:25:55] Speaker 03:
But the motions say,

[00:25:58] Speaker 03:
we want you to rule on those if you, the board, invalidate the particular underlying claims, which would not be a trigger for, and the 101 invalidity ruling out of Delaware would not be a trigger for that.

[00:26:15] Speaker 03:
I just want to confirm that.

[00:26:16] Speaker 03:
I think that that sounds right to me.

[00:26:19] Speaker 02:
That sounds right to me, Your Honor, as well.

[00:26:23] Speaker 02:
You know, the trigger for that was for the Board to invalidate claims.

[00:26:27] Speaker 02:
I don't think there is a way to get back to the conditional motion through an affirmation of the 101 ruling.

[00:26:35] Speaker 02:
Okay, thanks.

[00:26:37] Speaker 02:
I do want... I'm sorry, was there a question?

[00:26:40] Speaker 02:
No, proceed.

[00:26:42] Speaker 02:
Okay, so there was a suggestion that perhaps

[00:26:50] Speaker 02:
in the briefing and also in the arguments to the board that, well, you know, it wouldn't have taken much to move the third party or to decide to add a third party to the combination, even if no third party is explicitly disclosed.

[00:27:04] Speaker 02:
Why wouldn't you just add a third party and have the transaction enablement be handled by the third party?

[00:27:12] Speaker 02:
And that argument was made to the board.

[00:27:15] Speaker 02:
And the board said, well, that's fine, except you didn't provide any reason.

[00:27:20] Speaker 02:
You didn't adequately show why a skilled artist would configure that system.

[00:27:24] Speaker 02:
And in doing so, decided to separate the user authentication and leave that at the secure registry from the transaction enablement and move that to this third party that you're creating.

[00:27:35] Speaker 02:
The board found that the petition asserts that a skilled artist would understand that Reaver's database

[00:27:40] Speaker 02:
could be controlled by a third party, but this possible configuration alone did not give them reason to look to, wouldn't give a skilled artist a reason to look to another reference.

[00:27:50] Speaker 02:
And the board agreed with USR that Apple's reasoning regarding why you might withhold, might decide to withhold all account identifying information from the provider, for example, to protect the user's account information from misappropriation, does not provide reasoning for submitting the transaction enablement to a third party.

[00:28:07] Speaker 02:
And lastly, I'd like to talk about

[00:28:11] Speaker 02:
the third ground, the third independent ground, which is that with respect to the claim limitation that the entity's account identifying information that's provided to the third party is withheld from the provider.

[00:28:21] Speaker 02:
I think we've discussed what we're talking about with respect to which third party information.

[00:28:31] Speaker 02:
And so with that, I would just conclude by saying that based on the three independent grounds, we would ask that the court affirm the lower

[00:28:40] Speaker 02:
decision, the low courts, I lowered Cardinal's decision.

[00:28:44] Speaker 02:
Thank you.

[00:28:45] Speaker 02:
Thank you, Mr. Matthews.

[00:28:46] Speaker 01:
Ms.

[00:28:47] Speaker 01:
Amande, you've got some time, a few minutes left on rebuttal, I believe.

[00:28:52] Speaker 00:
Yes.

[00:28:52] Speaker 00:
Thank you, your honor.

[00:28:53] Speaker 00:
I just will make three points briefly.

[00:28:56] Speaker 00:
First, with respect to the access restrictions, limitations and where that takes place.

[00:29:01] Speaker 00:
There was no, the board agreed that Franklin disclosed merchant validation

[00:29:07] Speaker 00:
The issue here was just where that merchant validation occurred and whether it occurred at the acquiring bank or at the secure registry.

[00:29:16] Speaker 00:
Apple explained in its petition that it would have been no more than a simple design choice to move the merchant validation step to the secure registry.

[00:29:26] Speaker 00:
We explained at Attendix 2773 that this combination would have had the predictable result of streamlining the authentication process.

[00:29:36] Speaker 00:
We then further expanded on that argument in the reply brief explaining that one reason for organizing the system in this way would be to increase efficiency by reducing the overall number of computations.

[00:29:49] Speaker 00:
The board failed to and refused to consider these arguments.

[00:29:52] Speaker 00:
And so it would be appropriate to remand to the board to consider a full consideration of the arguments that Apple raised.

[00:30:00] Speaker 00:
The second point is with respect to Judge Toronto's question about

[00:30:05] Speaker 00:
the specification, I believe Mr. Matthews pointed to column 10, lines 18 to 27, discussing the setting of who should be allowed access to particular information in the database.

[00:30:20] Speaker 00:
But that passage supports Apple's construction of or interpretation of the claim.

[00:30:25] Speaker 00:
Just below that passage, also in column 10, the specification makes clear that the database will generally allow anyone to access specific personal information

[00:30:35] Speaker 00:
without performing any authorization check.

[00:30:40] Speaker 00:
And that only when there's particular information that has been restricted is that information withheld.

[00:30:47] Speaker 00:
And the system goes on to describe the various embodiments that describe withholding some account identifying information based on the particular circumstances and providing that withheld information to the third party.

[00:31:00] Speaker 00:
And the third point I'll make is with respect to the...

[00:31:03] Speaker 00:
I see them at the end of the line.

[00:31:06] Speaker 01:
If you could make it very briefly, Ms.

[00:31:08] Speaker 01:
Samandi, go ahead.

[00:31:10] Speaker 00:
Thank you.

[00:31:10] Speaker 00:
Thank you, Judge Prost.

[00:31:11] Speaker 00:
The third point is that with respect to the third party limitation, I think the arguments that we heard from Mr. Matthews really highlight why the board committed an error here because it was the combination of Franklin and Reber and looking at Reber's system that disclosed a database for authentication purposes

[00:31:30] Speaker 00:
and that a skilled artisan would have looked at other sources such as Franklin for how to complete that transaction by sending the information to a third party bank for processing as taught in Franklin.

[00:31:43] Speaker 00:
And it's the combination of those two references, which the board failed to consider, that teach the third party limitation.

[00:31:50] Speaker 00:
Thank you, Your Honor.

[00:31:50] Speaker 01:
Thank you.

[00:31:51] Speaker 00:
Thank you.

[00:31:51] Speaker 00:
We thank both sides and the case is submitted.