[00:00:00] Speaker 00:
Okay, good morning.

[00:00:01] Speaker 00:
We're going to hear argument in the second case today.

[00:00:04] Speaker 00:
Appeal 20-1977, Fidelity Information Services versus Groove Digital.

[00:00:13] Speaker 00:
We'll first hear argument from Appellant Fidelity.

[00:00:17] Speaker 00:
Mr. Jakes, whenever you're ready.

[00:00:20] Speaker 03:
Good morning and may it please the court.

[00:00:23] Speaker 03:
The issue in our appeal

[00:00:26] Speaker 03:
is whether it would have been obvious to store a second set of information in a second database for comparison.

[00:00:32] Speaker 03:
The board here found that all the other claim limitations, that's in claims 1 through 13 and 36, all the limitations were taught or suggested in the prior art, including the second information.

[00:00:45] Speaker 03:
Now, this second information is described in the patent as segmentation specifics that identify the advertiser's target audience.

[00:00:54] Speaker 03:
This same information is disclosed in Wilson, which is the primary reference, as a criteria statement.

[00:01:01] Speaker 03:
So the only thing the board found missing was storing the second information in a second database.

[00:01:08] Speaker 03:
Now, Wilson, the primary reference, it discloses multiple databases.

[00:01:13] Speaker 03:
There's no dispute that databases and their advantages were well known.

[00:01:18] Speaker 03:
And there were specific reasons here a person skilled in the art would want to store this information in a database.

[00:01:25] Speaker 03:
For example, if you want to recall the information later to update the campaign data in Wilson, the criteria statements, they would have to be stored somewhere.

[00:01:33] Speaker 03:
That's basically what our experts said.

[00:01:36] Speaker 00:
Yeah.

[00:01:36] Speaker 00:
Can we focus on what your specific theory of obviousness was for storing these criteria statements?

[00:01:44] Speaker 00:
Sure.

[00:01:44] Speaker 00:
I understand Dr. Rosenberg's theory was all about updating the campaign database, CR module 40, right?

[00:01:54] Speaker 00:
Exactly right.

[00:01:55] Speaker 00:
And that was the example that if you wanted to update the campaign database, you'd have... Was there a different theory other than the theory that it would be useful to have this criteria statement data on hand to update the campaign database?

[00:02:19] Speaker 00:
Or was this the theory?

[00:02:20] Speaker 00:
Because as I look at the declaration, it seems like this is...

[00:02:24] Speaker 00:
what Dr. Rosenberg's theme was.

[00:02:27] Speaker 03:
I would agree with you, Your Honor.

[00:02:29] Speaker 03:
That was his reason.

[00:02:31] Speaker 03:
And it's expressed in his declaration.

[00:02:33] Speaker 03:
And it's a good enough reason.

[00:02:36] Speaker 03:
We don't have to have multiple reasons.

[00:02:39] Speaker 03:
Storing information in a database, it's so common and routine.

[00:02:44] Speaker 03:
The 762 specification, it really doesn't describe any advantages to storing this information in a second database.

[00:02:53] Speaker 03:
our expert did come up with a reason why someone would do that.

[00:02:57] Speaker 03:
Now, admittedly, Wilson is silent on whether this, the criteria statements are also stored, but that's where Dr. Rosenberg explained why someone would have found it obvious to store these statements in one of the multiple databases.

[00:03:12] Speaker 00:
I guess what I'm trying to understand is if Dr. Rosenberg had a theory for why you would want to have these criteria statements stored on hand,

[00:03:23] Speaker 00:
And the board responded that that theory seems to be problematic because all of the data that is needed to update the campaign database doesn't use those criteria statements.

[00:03:44] Speaker 00:
Then what's wrong with the board's analysis there where your expert pitched a theory

[00:03:52] Speaker 00:
The theory was rejected.

[00:03:53] Speaker 00:
I guess the question is, if the board was right in its analysis of Dr. Rosenberg's theory, then isn't that the end of the matter?

[00:04:08] Speaker 03:
I don't think so, Your Honor, because there could be other reasons.

[00:04:12] Speaker 03:
Dr. Rosenberg gave one.

[00:04:17] Speaker 03:
And the board's rejection of that theory, they rejected it on other grounds.

[00:04:23] Speaker 03:
They said it was conclusory, and I don't think that was a fair criticism.

[00:04:28] Speaker 03:
It's maybe only four pages and seven paragraphs, but he does explain why someone would find it obvious.

[00:04:35] Speaker 03:
And to update that campaign database, it is a logical explanation that you would need the criteria that were used to generate it.

[00:04:47] Speaker 03:
to do that.

[00:04:49] Speaker 03:
There are some things that, I mean, that's how it's generated.

[00:04:51] Speaker 03:
It's generated from those criteria statements, comparing it to the user input to generate that campaign database.

[00:05:00] Speaker 03:
And if you want to update it, you would need the inputs.

[00:05:04] Speaker 03:
And one of those inputs is the criteria statements.

[00:05:08] Speaker 03:
So I think the board was unfair in its criticism of that theory and was really looking for

[00:05:15] Speaker 03:
what seemed to be an express disclosure of storing the second information in a database.

[00:05:21] Speaker 03:
Databases were well known.

[00:05:24] Speaker 03:
There's no discussion in the patent about it.

[00:05:27] Speaker 03:
And even the specification here is silent on the significance of storing it in the database.

[00:05:33] Speaker 03:
That suggests a person skilled in the art was more than capable of choosing between these known methods of storing information.

[00:05:43] Speaker 03:
The obviousness analysis here, it doesn't require adding structure.

[00:05:48] Speaker 03:
That seems to be Groove's main argument.

[00:05:51] Speaker 03:
Wilson already discloses the second database, which is the campaign database.

[00:05:57] Speaker 03:
That's different than the audience demographics database.

[00:06:01] Speaker 03:
And he explained the logical place to store these query statements, which are the target criteria statements, would be with the results.

[00:06:08] Speaker 03:
And either way, there are multiple databases in Wilson

[00:06:12] Speaker 03:
So there's no missing structure.

[00:06:16] Speaker 03:
We would ask the court to reverse the board's decision here that claims 1 through 13 and 36 are not unpatentable.

[00:06:23] Speaker 03:
The legal question of obviousness is one this court can decide.

[00:06:27] Speaker 03:
And the board here, we think, made a legal error in requiring two highest standards to prove obviousness.

[00:06:40] Speaker 03:
I'll save the rest of my time to respond to Groves' cross appeal with the court's permission.

[00:06:48] Speaker 00:
Okay.

[00:06:48] Speaker 00:
Thank you, Mr. Jakes.

[00:06:50] Speaker 00:
I'm out of here from the other side.

[00:06:53] Speaker 00:
Is it Mr. Bach?

[00:06:56] Speaker 01:
Hoag, Your Honor.

[00:06:57] Speaker 00:
Mr. Hoag, I'm sorry.

[00:06:59] Speaker 00:
Okay.

[00:06:59] Speaker 01:
That's fine.

[00:07:01] Speaker 01:
Good morning.

[00:07:03] Speaker 01:
The limitation is not just a database, it says a second database coupled to the microprocessor and including a second set of information for comparison to the first set of information.

[00:07:14] Speaker 01:
It's all that.

[00:07:16] Speaker 01:
The appellant admits that Wilson does not show where the criteria statements are stored.

[00:07:24] Speaker 01:
Wilson is the only reference cited against this limitation.

[00:07:28] Speaker 01:
Wilson makes no mention of storing the criteria statement that are compared to the audience demographics, let alone storing that information in a database.

[00:07:39] Speaker 01:
And moreover, arguments from people that say that the missing element is obvious without a showing of the element in the prior art is impermissible hindsight reconstruction.

[00:07:51] Speaker 01:
The appellant is using the claims as their roadmap, and that's clear.

[00:07:57] Speaker 01:
Otherwise, show us where it is in the reference.

[00:08:02] Speaker 00:
I would like to... Could you help me understand the Wilson reference?

[00:08:06] Speaker 00:
We're all looking at this one particular figure of Wilson, and it talks about the target audience criteria statements being fed into the campaign selection module.

[00:08:21] Speaker 00:
I guess my question is why wouldn't you have that information stored locally?

[00:08:31] Speaker 00:
When you receive that information, why wouldn't it be stored somewhere?

[00:08:38] Speaker 01:
Well, we just have no suggestion in Wilson whether or not it is stored anywhere or it's just real time received streaming or whatever.

[00:08:48] Speaker 01:
That information just isn't there.

[00:08:52] Speaker 01:
There is a mention in Wilson, and the board mentioned it, of updating the campaign database based on reports of new demographics information, but that involves the campaign report module which has no ability to receive the target audience criteria statements.

[00:09:10] Speaker 01:
So we're just left adrift and the only way you're going to find that we're going to start storing that in a second database, that's in the claim.

[00:09:22] Speaker 01:
That's not in Wilson.

[00:09:25] Speaker 01:
Wilson is admitted to be silent on this subject.

[00:09:29] Speaker 00:
Right.

[00:09:29] Speaker 00:
So if it's not storing the data locally,

[00:09:37] Speaker 00:
If it's not catching the data and storing it somewhere, what do you think is going on in Wilson?

[00:09:43] Speaker 00:
It's just being streamed, real-time streamed straight into the selection module?

[00:09:51] Speaker 01:
You know, that's what it looks like to me from Figure 2A.

[00:09:56] Speaker 01:
That's how I would interpret it.

[00:09:58] Speaker 01:
It's not stored at all.

[00:10:03] Speaker 02:
Judge Cleverger, how can it be updated if it was stored someplace?

[00:10:09] Speaker 01:
Well, how can the criteria statements be updated?

[00:10:17] Speaker 01:
Is that the question, Your Honor?

[00:10:19] Speaker 02:
Isn't that what you said?

[00:10:20] Speaker 02:
There's a mention of updating the database?

[00:10:26] Speaker 01:
Well, what is it?

[00:10:30] Speaker 01:
The campaign database is updated on reports of new demographics information, and that's what Wilson says.

[00:10:38] Speaker 01:
But that involves the campaign report module, which is below the campaign database, or the campaign selection module.

[00:10:48] Speaker 02:
Right.

[00:10:49] Speaker 02:
Does updating the campaign database implicate the audience statements, audience criteria statements?

[00:10:56] Speaker 01:
well there's just no uh... evidence that that occurs your honor i mean i think we're doing some inventing here while we're looking at this uh... purpose of the campaign of the croatians criteria statements yes what what do they have to do with the campaign

[00:11:17] Speaker 01:
Well, they have, you know, to create the target message, they're used in that way.

[00:11:26] Speaker 01:
It's just not coming from a database.

[00:11:34] Speaker 00:
Do you think there'd be something illogical about having a second database in this figure that would store the received target audience criteria statement?

[00:11:48] Speaker 01:
I do think it would be illogical because that's not what Wilson says.

[00:11:53] Speaker 00:
Wilson is getting back.

[00:11:55] Speaker 00:
That doesn't quite tell me why it would be illogical, just because it's not there.

[00:12:01] Speaker 00:
I'm proposing a modification to the Wilson Figure 2A.

[00:12:06] Speaker 00:
Is there something that would be illogical about modifying Figure 2A to have a database that stores the received target audience

[00:12:17] Speaker 01:
Yes, that would be illogical because there's no basis in the prior art for that modification, Your Honor.

[00:12:25] Speaker 01:
It's just an opinion at this point.

[00:12:30] Speaker 01:
Wilson is the only reference cited for this limitation.

[00:12:34] Speaker 01:
The other prior art can't help you with that.

[00:12:38] Speaker 00:
Mr. Hogue, are you going to talk about your cross-appeal?

[00:12:41] Speaker 01:
I would like to do that, yes.

[00:12:43] Speaker 01:
It's fairly simple.

[00:12:45] Speaker 01:
The cross-appeal is on the conception documents that antedate to Detnick and Bacchus.

[00:12:53] Speaker 01:
We have the documents themselves are located in the appendix 4269 to 4280 in Volume 2.

[00:13:04] Speaker 01:
uh... and uh... the the the limitation is actually a part of a limitation that is that really had issues here at which is independent or in conjunction with and internet browser window and uh... and the board uh... looked at the local post document uh... which is forty two sixty nine to forty two seventy two

[00:13:28] Speaker 01:
And they admitted that it showed the independent of the internet browser, but not the in conjunction with.

[00:13:38] Speaker 01:
And they're saying that there's just no web browser in that document.

[00:13:44] Speaker 01:
And we beg to differ, because the document itself shows

[00:13:51] Speaker 01:
that the host of the micro browser has HTML hyperlinks in it, and that's at the bottom of page 4269.

[00:14:02] Speaker 01:
It discusses hyperlinks in the middle of the page of the next page, 4270.

[00:14:09] Speaker 01:
And the toast is shown on 4271 as doing things like online dating and auctions.

[00:14:16] Speaker 01:
And that is a web browser, your honor.

[00:14:19] Speaker 01:
So we think that is clear error and that they weren't looking at the documents from the point of view of one of ordinary skill in the art.

[00:14:25] Speaker 00:
I understand that HTML refers to the notion of a web browser.

[00:14:33] Speaker 00:
I guess the question is why does that reference to HTML

[00:14:38] Speaker 00:
necessarily mean that there was a conception of deploying an applet in conjunction with an internet browser window?

[00:14:48] Speaker 01:
Well, if you look at that document, HTML, and then you look at the next page, what is in the content of this thing is that it includes things like online dating and auctions, and that is

[00:15:06] Speaker 01:
uh... activity that happens online and that's seemingly one of ordinary skill in the art would understand that is a web browser and i did want to say something about the diligence uh... issue uh... there was a production schedule

[00:15:34] Speaker 01:
that was sworn to, and it sent appendix 4324.

[00:15:38] Speaker 01:
And that shows milestones in the production of the software that was an issue.

[00:15:53] Speaker 01:
It was sworn to, these dates were met, and they were paid for.

[00:16:00] Speaker 01:
And in our gray brief on page 17, we've annotated this rather gappy timeline shown by the appellant with the production schedule and all the relevant dates.

[00:16:18] Speaker 01:
And so there was reasonable diligence until through at least the filing of the provisional application on March 18th.

[00:16:27] Speaker 00:
What about the idle limitation, the applet becoming idle?

[00:16:33] Speaker 00:
There was a finding that there wasn't any evidence that during the course of the Up Now project that there's any suggestion that the idle limitation was part of that work.

[00:16:55] Speaker 01:
i believe the i don't i don't think that that's really contested uh... your honor uh... i think uh... that was uh... shown in the conception documents uh... well i think my time is up uh... okay uh... will will figure uh... rebuttal time thank you your honor

[00:17:25] Speaker 03:
Thank you, Your Honor.

[00:17:27] Speaker 03:
Let me address Groove's cross appeal first.

[00:17:30] Speaker 03:
The issue there, the only issue is whether substantial evidence supports the board's findings that Groove didn't prove prior invention before the two references.

[00:17:41] Speaker 03:
Groove failed in multiple ways here, from conception to diligence to reduction to practice.

[00:17:48] Speaker 03:
Any of those findings is fatal to Groove's appeal.

[00:17:51] Speaker 03:
And I believe that the substantial evidence standard should dictate the outcome here, because the board didn't make any illegal errors, didn't apply the wrong standard, and Groove is really just re-arguing the evidence that they presented to the board.

[00:18:06] Speaker 03:
I think the place to start and the easiest is corroboration of the conception.

[00:18:13] Speaker 03:
There wasn't corroboration.

[00:18:15] Speaker 03:
And the rule of reason which the board applied, it doesn't excuse the corroboration requirement.

[00:18:21] Speaker 03:
the evidence of corroboration.

[00:18:24] Speaker 03:
It can't depend solely on the inventor.

[00:18:27] Speaker 03:
The board found here that Mr. Son's testimony, it wasn't enough to corroborate the conception.

[00:18:33] Speaker 03:
And here we're talking about the dates, not the contents of the documents.

[00:18:37] Speaker 03:
But his recollection 15 years after the fact, it's vague on specifics.

[00:18:42] Speaker 03:
He doesn't say when or who received the document.

[00:18:44] Speaker 00:
Mr. Jakes, what do you think about metadata?

[00:18:47] Speaker 00:
When is metadata enough to be

[00:18:52] Speaker 00:
I mean, I understand that maybe you think there's some defects here with the metadata about references to last modified and a particular date.

[00:19:03] Speaker 00:
But if this isn't good enough, then what needed there to be for the metadata to be deemed reliable?

[00:19:14] Speaker 03:
Well, there wasn't enough here and then that's what the board found.

[00:19:18] Speaker 03:
There are circumstances where metadata has been relied on.

[00:19:22] Speaker 03:
Here all we have really is the inventor's testimony supporting that.

[00:19:28] Speaker 03:
Metadata can be changed, you know, it's not in viable.

[00:19:32] Speaker 03:
And without something to corroborate the metadata, it's evidence that could be considered under the rule of reason, but it's not independent corroboration.

[00:19:44] Speaker 03:
And that's really the problem here is everything comes from the inventor.

[00:19:48] Speaker 03:
The law is pretty clear that that can't be enough.

[00:19:52] Speaker 03:
And the metadata on its own is not sufficient corroboration.

[00:19:58] Speaker 03:
Could be evidence in other circumstances.

[00:20:00] Speaker 03:
The board found here that those dates in the metadata and the dates that were added by the inventor were not good enough.

[00:20:10] Speaker 03:
And as I said, Groove failed.

[00:20:12] Speaker 03:
throughout in proving its prior invention, it didn't rely on an actual reduction of practice as a problem with the constructive reduction to practice and the diligence as well.

[00:20:27] Speaker 03:
And throughout, there was a failure of proof at every stage because the group didn't show that all claim elements were there for each of conception, diligence, and reduction to practice.

[00:20:40] Speaker 03:
So for conception, second database, independent of or in conjunction with were not there.

[00:20:47] Speaker 03:
Diligence, it was a second database or configured to become idle, the idle limitation.

[00:20:53] Speaker 03:
You can try to look at the HTML reference and read something into that, but the board didn't buy it.

[00:21:00] Speaker 03:
And this is a substantial evidence question.

[00:21:02] Speaker 00:
Mr. Jake, what's your understanding of the in conjunction of limitation?

[00:21:07] Speaker 00:
the applet in conjunction with the web browser?

[00:21:10] Speaker 00:
What does that mean?

[00:21:12] Speaker 03:
Well, I know that it's not what's shown, which is you have to click on it.

[00:21:19] Speaker 03:
OK, let's keep moving on.

[00:21:22] Speaker 03:
What is shown and what was disclosed is you have to clicking on the applet.

[00:21:28] Speaker 03:
So the applet was not deploying in conjunction with the web browser.

[00:21:32] Speaker 03:
It was required two steps.

[00:21:35] Speaker 03:
So that's not in conjunction with it.

[00:21:40] Speaker 03:
That's really what the question is here.

[00:21:43] Speaker 03:
And any of these can defeat the group's claim for prior invention.

[00:21:48] Speaker 03:
There is also failure on the substance on diligence.

[00:21:52] Speaker 03:
The SON declaration, it's just general statements that the work was conducted from October to January.

[00:22:00] Speaker 03:
There has to be more under the law.

[00:22:02] Speaker 03:
There has to be at least some specific date

[00:22:06] Speaker 03:
So just returning briefly to our opening appeal, Groove's argument seems to still come down to that Wilson makes no mention of storing information in the second database.

[00:22:18] Speaker 03:
We acknowledge that.

[00:22:20] Speaker 03:
The question that I think Judge Chen, Your Honor, asked is, why wouldn't you store that information locally?

[00:22:27] Speaker 03:
That's really our position.

[00:22:28] Speaker 03:
It wouldn't be illogical to do so.

[00:22:30] Speaker 03:
It's really a matter of choice.

[00:22:32] Speaker 03:
The patent puts no significance on it.

[00:22:35] Speaker 03:
There are reasons to store the information locally, and a database is the most logical place to do it.

[00:22:43] Speaker 03:
If there are no further questions, I'll end there.

[00:22:49] Speaker 00:
OK.

[00:22:49] Speaker 00:
Thank you.

[00:22:50] Speaker 00:
And I believe, Mr. Hogue, you have some rebuttal time devoted to your cross appeal.

[00:22:56] Speaker 00:
So go ahead.

[00:22:58] Speaker 01:
Right.

[00:22:59] Speaker 01:
Thank you, Your Honor.

[00:23:00] Speaker 01:
In terms of the date of conception,

[00:23:04] Speaker 01:
We do have that the board recognized that it's argument or it's not really caring for the August 13 date was weak on page 26.

[00:23:18] Speaker 01:
They continue on assuming that, you know, this is the metadata, blah, blah, blah.

[00:23:22] Speaker 01:
It's under the totality of circumstances.

[00:23:25] Speaker 01:
They go on to their problems with conception.

[00:23:30] Speaker 01:
And I did want to say that we're talking about these claims that do not have the database limitation in them, and so there's no need to show the databases in the prior art.

[00:23:43] Speaker 01:
And so we did come down to being in conjunction with

[00:23:50] Speaker 01:
And the appellant admits this limitation is obvious.

[00:23:54] Speaker 01:
We're antedating references, rule 131, that the Patent Office comes into effect.

[00:24:00] Speaker 01:
And they did that in Appendix page 3198, paragraph 149.

[00:24:08] Speaker 01:
And so that doesn't really need to be there.

[00:24:11] Speaker 01:
In any event, I would conclude with that.

[00:24:14] Speaker 01:
If there is any more questions, I'm happy to answer them.

[00:24:18] Speaker 01:
Thank you, Your Honor.

[00:24:20] Speaker 00:
Okay, hearing no questions from the panel, the case is submitted.

[00:24:25] Speaker 00:
Thank you.