[00:00:00] Speaker 03:
The next case is Rain Computing versus Samsung Electronics, 2020, 1646.

[00:00:08] Speaker 03:
Mr. Chow.

[00:00:12] Speaker 04:
Good morning, Your Honors.

[00:00:13] Speaker 04:
My name is Stephen Chow, Counsel for Rain Computing.

[00:00:17] Speaker 04:
I, unfortunately, have to make a remark for my client to note that the noticed prior counsel

[00:00:30] Speaker 04:
Mr. Alex Prichette was apparently is a clerk to one of the judges.

[00:00:37] Speaker 04:
We note this and understand that the judges have seen this and will proceed with their due diligence on this.

[00:00:50] Speaker 04:
We respectfully would like to talk about one of the judges on this panel.

[00:00:59] Speaker 04:
Yes.

[00:01:02] Speaker 03:
Are you making a motion for recusal?

[00:01:05] Speaker 04:
No, we're not.

[00:01:06] Speaker 04:
We're just noting that that is the case, and we trust the judges to fully appreciate that fact.

[00:01:17] Speaker 02:
So this is someone who worked on the case when it was in the district court?

[00:01:24] Speaker 04:
Yes, that's correct.

[00:01:28] Speaker 04:
Again, I don't want to make an issue with it, just to note, not for my clients.

[00:01:34] Speaker 03:
Well, what you were saying is you were not making a motion, so there is nothing before the court or any judge sitting on this panel.

[00:01:46] Speaker 03:
So if that's correct, please proceed.

[00:01:49] Speaker 03:
And Ms.

[00:01:50] Speaker 03:
Saunders, please stop the clock again.

[00:01:57] Speaker 04:
OK.

[00:01:58] Speaker 04:
The reversal that we seek is based upon the failure of the district court to actually address each of the points that its own case recited at Appendix 17, the Edwards case, as well as the lack of clear, unmistakable, and unambiguous disavowal of the claim scope.

[00:02:25] Speaker 04:
in adding a negative limitation to the scope of the, to the claim.

[00:02:33] Speaker 04:
A review of the specification shows how the dichotomy accepted by this district court between unlimited and on-demand licensing is false and led to its erroneous construction.

[00:02:47] Speaker 04:
The background of the 349 patent reviews several types of application delivery software.

[00:02:53] Speaker 04:
where often some application software is pre-installed on the computing device.

[00:03:00] Speaker 04:
It states that there are many license types other than the unlimited time licenses, only one of which was the on-demand license, which is mostly applicable to web applications.

[00:03:12] Speaker 04:
This relies on strict dichotomy between unlimited versus on-demand licenses.

[00:03:19] Speaker 04:
The web-based approach to on-demand licensing was how Samsung characterized

[00:03:23] Speaker 04:
or on-demand licensing.

[00:03:26] Speaker 04:
Quote, when we're done, turn the machine off and the application is gone.

[00:03:32] Speaker 04:
Close quote.

[00:03:32] Speaker 04:
That's Appendix 1753.

[00:03:35] Speaker 03:
Council, this is a stipulated judgment for non-infringement, correct?

[00:03:42] Speaker 03:
That's correct, based upon the... And it's based upon the instruction that you're objecting to, and that involves the executing step, right?

[00:03:53] Speaker 03:
That's correct.

[00:03:54] Speaker 03:
And whether it's executed only on the client terminal device, right?

[00:04:02] Speaker 04:
That's right.

[00:04:03] Speaker 04:
But the judge added what Samsung wanted, which was to say that at the same time that it's executed on the client device on the operating system rather than on a over web-based system.

[00:04:20] Speaker 04:
that this also requires that the downloaded application was not stored in some way in the client device.

[00:04:36] Speaker 03:
Well, that's what the claim says, which requires executing by a processor using resources of an operating system resident in the memory of the client terminal device.

[00:04:51] Speaker 04:
Right, but that says nothing about whether the downloaded application is also in the downloaded device.

[00:05:02] Speaker 04:
That's the additional limitation is negative limitation that is actually not the case even in these web-based browsers.

[00:05:14] Speaker 04:
And certainly, the distinction of how this

[00:05:21] Speaker 04:
claim actually works as it gets away from the web-based approach, which is to turn off, if you take the connection off in the web, the application is gone.

[00:05:37] Speaker 04:
I think that's the biggest limitation that was added by the district court at Samsung's behest.

[00:05:47] Speaker 02:
What about the distinction of Kirkland

[00:05:49] Speaker 02:
This is Judge Dyke.

[00:05:50] Speaker 02:
What about the distinction of Kirkland during the prosecution, which seems to say that Kirkland's distinguishable because the application is stored on the client device?

[00:06:02] Speaker 04:
Well, that's not actually what that argument was said at Appendix 213 to 217.

[00:06:13] Speaker 04:
It simply said Kirkland should not be combined with cover.

[00:06:17] Speaker 04:
because that would require modification of Kirkland, one, rendering it unsatisfactory for its intended purpose, and two, change its principle of operation.

[00:06:27] Speaker 04:
So the supposed disclaiming language only addressed those arguments.

[00:06:32] Speaker 04:
And if you look at a quote at Appendix 215, it talks about the proposed modification would render Kirkland's system unsatisfactory for its intended purpose, at least because Kirkland's software

[00:06:46] Speaker 04:
applications, e.g.

[00:06:49] Speaker 04:
web browsers 460 and media player 470 are all resident on a client device.

[00:06:54] Speaker 04:
And second, such modification would change Kirkland's principle of operation, at least because no software application is stored in Kirkland's media server device.

[00:07:05] Speaker 04:
And there's no reason to control access of Kirkland's software applications residents.

[00:07:10] Speaker 04:
So these arguments were about modification of Kirkland

[00:07:14] Speaker 04:
to fit into cover.

[00:07:18] Speaker 04:
It did not compare any of the 349 inventions, much less clearly on the biggest or unmistakably disclaim any aspect of the 349 Planescope.

[00:07:30] Speaker 04:
Now, I understand that this report drew from that, that this was how Dr. Chang distinguished Kirkland on the basis of software applications, but this language

[00:07:43] Speaker 04:
were selectively quoted and did not say anything about the 349 intervention, much less disclaim anything about it.

[00:07:49] Speaker 04:
It was simply that Kirkland could not be modified the way that the examiners suggested.

[00:08:05] Speaker 03:
Do you want to proceed, or do you want to talk about the cross appeal?

[00:08:11] Speaker 04:
Well, I reserved that time to listen to the cross appeal first.

[00:08:23] Speaker 04:
But in any case, thank you.

[00:08:27] Speaker 04:
We'll save that for rebuttal.

[00:08:31] Speaker 03:
All right.

[00:08:33] Speaker 03:
We will save the remaining time.

[00:08:34] Speaker 03:
Thank you, John.

[00:08:35] Speaker 03:
Mr. McEwen.

[00:08:36] Speaker 01:
Yes, good morning.

[00:08:38] Speaker 01:
Mike McKeon for Samsung.

[00:08:39] Speaker 01:
May it please the court?

[00:08:41] Speaker 01:
The district court correctly held that in light of what the court itself characterized as a compelling weight of the intrinsic evidence, the executing step of the claims must be done with local processing and operating system resources, but without installing the software application packages on the client device.

[00:08:59] Speaker 01:
And we indeed agree that it is compelling.

[00:09:02] Speaker 01:
And if you look at the specification, it's consistent.

[00:09:06] Speaker 01:
in its characterization of where the software application packages are installed.

[00:09:11] Speaker 01:
The abstract twice indicates that the software applications are installed at the server.

[00:09:16] Speaker 01:
The two embodiments in the summary of the invention clearly describe that the software application packages are installed at the server.

[00:09:24] Speaker 01:
And every instance in the detailed description where it deals with this subject of where the applications are installed, it's specific that's installed at the server.

[00:09:34] Speaker 01:
And of course, in the figures,

[00:09:36] Speaker 01:
The only place that you see that where it's installed is this AP server, which is at the service provider side of the system.

[00:09:44] Speaker 01:
It's very consistent.

[00:09:45] Speaker 01:
And of course, the fact that it's installed at the server and not the client is consistent with the objectives that are described in the patent.

[00:09:54] Speaker 01:
The first, of course, is the undemand versus the unlimited license.

[00:09:59] Speaker 01:
And if we start at column one, line 36, we have a description saying,

[00:10:04] Speaker 01:
A single machine with an unlimited use is very costly.

[00:10:09] Speaker 01:
And then at the end of the specification, at column 6, line 45, it repeats this saying, hey, this invention, there's no need to pay a large fee, quote unquote.

[00:10:20] Speaker 01:
And the only way that's described in this patent from preventing a user from using software for an unlimited time, the only way it's described is having the software installed remotely on a server

[00:10:33] Speaker 01:
Verifying the user's subscription each time the user's device is powered on and allowing the user to receive and run the software only after the description is verified and then releasing the software.

[00:10:45] Speaker 01:
And in Figure 3 of the patent, it ends this whole process with terminating the application package.

[00:10:53] Speaker 01:
It's very consistent.

[00:10:55] Speaker 01:
And the other objective that's cited and referenced in the specification is the storage space saving.

[00:11:03] Speaker 01:
And column 5, line 44, for example, talks about having freeing up storage at the client device because we are storing these software applications at the server side of the system.

[00:11:20] Speaker 01:
And if that wasn't clear enough, the prosecution history we submit ends the matter.

[00:11:26] Speaker 01:
Judge Dyke referenced the Kirkland rejection, which this is what the examiner, or strike that, this is what the district court relied on at Penance A-21.

[00:11:38] Speaker 01:
And what happened here was a rejection was lodged by the examiner over a combination, one reference called cover over Kirkland.

[00:11:47] Speaker 01:
And the examiner cited what was described in Kirkland as an authentication device and equated that with the user identification module.

[00:11:57] Speaker 01:
And the inventor here said that's no good.

[00:12:00] Speaker 01:
The inventor agreed that Kirkland disclosed software packages.

[00:12:06] Speaker 01:
One of the examples of that was streaming media player.

[00:12:09] Speaker 01:
But then in the proposition specifically, the inventor argued that these software packages were included on the client, not the server.

[00:12:21] Speaker 01:
Therefore, they can't

[00:12:23] Speaker 01:
possibly satisfy the requirement that we have a device configured to control access to software application packages, because they're already stored at the client side.

[00:12:36] Speaker 01:
And, of course, that's the distinction that the district court correctly relied on, and that, under this court's precedent, is a disavowal, a clear disavowal.

[00:12:45] Speaker 00:
Where in the JA is that disavowal?

[00:12:48] Speaker 00:
Where can I find it?

[00:12:49] Speaker 01:
That's at A731, Your Honor.

[00:12:53] Speaker 01:
specific rejection.

[00:12:55] Speaker 01:
And the cases we cite for the fact that the examiner may have not specifically relied on that is the Fenner case we cite and the Cordish case we cite in our brief.

[00:13:08] Speaker 00:
But I will say that this... Where is the sentence that you think is the strongest on 731?

[00:13:14] Speaker 01:
731, Your Honor, if you go down to the paragraph that begins,

[00:13:21] Speaker 01:
Kirkland does not disclose that the authentication device, this is the second paragraph, complete paragraph.

[00:13:32] Speaker 01:
It says, Kirkland does not underline, disclose that the authentication device could be configured to control access of one or more software application packages that are highlighted.

[00:13:44] Speaker 01:
And again, citing the streaming media player 470.

[00:13:50] Speaker 01:
the sentence that the district corporal lied on.

[00:13:54] Speaker 01:
Moreover, Kirkland clearly disclosed that the web browser 460, streaming media player 470, and other software application packages are included in the client device, not, again, underline not, in the streaming server.

[00:14:11] Speaker 01:
And then it goes on to say therefore Kirkland doesn't suggest the combination.

[00:14:16] Speaker 01:
So that is compelling disavowal.

[00:14:20] Speaker 01:
It's right to the heart of the debate that we're having here.

[00:14:23] Speaker 01:
And of course, it's consistent with every single discussion of where the software applications are stored in the specification.

[00:14:35] Speaker 01:
There's also other sources of prosecution history.

[00:14:38] Speaker 01:
There was a, at A289, an interview summary that the inventor had with the examiner.

[00:14:45] Speaker 01:
And Dr. Chang in the interview specifically stated that the use of server-based applications while accessing and utilizing the permanent storage unit of the server, stressing that this is server-based system and the applications are stored at the server.

[00:15:04] Speaker 01:
So we submit that that process and history combined with the intrinsic record in the specification compels the conclusion.

[00:15:14] Speaker 01:
And the claim itself, to be sure, it doesn't say you're not installing on the client device.

[00:15:22] Speaker 01:
But the claim itself is set up very consistent with the specification where you have a system based on user demands.

[00:15:31] Speaker 01:
And whenever a user wants to execute a software application package, they must authenticate a subscription and then and only then

[00:15:40] Speaker 01:
will the software application package be transmitted to the client for local execution?

[00:15:45] Speaker 01:
The transmission is happening from the server to the client, and that needs to happen every time you want to have an execution.

[00:15:52] Speaker 00:
So it's very difficult.

[00:15:54] Speaker 00:
Is it your view that the plain language of the term server-side storage, or is it your view that there was a disavowal that otherwise alters what would normally be the plain language?

[00:16:08] Speaker 00:
Usually disavowed cases like this are to overcome the plain language, but I'm understanding your argument right now to be that the plain language isn't even what I think it is, which is a client terminal device.

[00:16:27] Speaker 01:
No, I think it is the client terminal device, just for the reasons I've stated.

[00:16:32] Speaker 01:
Look at the entire structure of the claim.

[00:16:34] Speaker 01:
When you get to the executing step, you necessarily have downloaded, you know, that was transmitted from the server.

[00:16:41] Speaker 01:
So it's very consistent with the intrinsic record.

[00:16:44] Speaker 01:
So that's the point I'm making, Your Honor.

[00:16:47] Speaker 01:
So I don't think this is something that's not addressed in the claim.

[00:16:50] Speaker 01:
I think the context of the claim supports the district court's conclusion that we're not talking about executing applications that are installed at the client side.

[00:17:03] Speaker 01:
If we don't agree with you, you've got a cross appeal.

[00:17:06] Speaker 01:
Yes, Your Honor, and thank you for mentioning that.

[00:17:08] Speaker 01:
Let me shift to that, if I may.

[00:17:12] Speaker 01:
Well, the district court started off on this issue on the right track, we believe.

[00:17:17] Speaker 01:
The user identification module was identified as a 112-6, and the court correctly identified the corresponding function, which was to control access to one or more software application packages.

[00:17:30] Speaker 01:
But when the court went to the job of looking to the specification to find the corresponding structure that's clearly linked, this is where we think the errors occurred.

[00:17:44] Speaker 01:
What the court did here, the corresponding structure that the court was looking for was the storing of subscription information.

[00:17:54] Speaker 01:
And what we know from the court's own holding is that the

[00:17:58] Speaker 01:
The structure that you need to find is to control access.

[00:18:02] Speaker 01:
And the court went on to say that any hardware capable of storing information would do.

[00:18:08] Speaker 01:
But storing is not what the claim requires.

[00:18:11] Speaker 01:
The claim is specific here.

[00:18:13] Speaker 01:
It's to control access.

[00:18:15] Speaker 01:
That's the function.

[00:18:17] Speaker 01:
If it was a claim for storing, then we wouldn't be here on this point.

[00:18:22] Speaker 01:
But the claim is clear here.

[00:18:23] Speaker 01:
In fact, it was amended to say capable of.

[00:18:26] Speaker 01:
And it has to control access.

[00:18:29] Speaker 01:
And this is where we think the court was set astray.

[00:18:33] Speaker 01:
Only by reading out the control access function and replacing it with a storing information, storing prescription information, could the court find corresponding structure.

[00:18:45] Speaker 01:
And it's not surprising the court couldn't find in the certification any kind of function to control access, any kind of structure to do that.

[00:18:54] Speaker 01:
Because control access is not even described in the certification.

[00:18:57] Speaker 01:
It's nowhere.

[00:18:59] Speaker 01:
So there's no disclosure, there's no structure in the certification that's identified to control access.

[00:19:05] Speaker 01:
And certainly not the user identification device that the district court pointed to.

[00:19:12] Speaker 01:
But beyond that.

[00:19:13] Speaker 02:
If I understand correctly, they're arguing that the control

[00:19:23] Speaker 02:
access feature is somehow described in the claims themselves.

[00:19:29] Speaker 02:
What do you understand their contention to be about where the algorithm is?

[00:19:34] Speaker 01:
Well, I'm not clear, to be honest with you, Your Honor.

[00:19:38] Speaker 01:
I think they point to the general steps, and based on the general steps of the claim and the general steps

[00:19:49] Speaker 01:
described in the certification that holistically, this is controlling access.

[00:19:57] Speaker 01:
And they point to figure three, for example, that goes through those steps.

[00:20:02] Speaker 01:
But this court case law is very clear, and we cite the Augme case in our brief, that you can't go to general steps.

[00:20:10] Speaker 01:
You've got to go to the specific part that deals with the function that you're debating.

[00:20:16] Speaker 01:
And then take that and go look for the correspondence.

[00:20:19] Speaker 03:
The district court said, counsel, what the district court said, because the sole access control mechanism is the request and retrieval of the user's subscription information, the court agrees with Samsung.

[00:20:35] Speaker 03:
What do we do with that?

[00:20:39] Speaker 01:
Well, I think what happened there, the court conflated different steps that was going on there.

[00:20:45] Speaker 01:
in the claim is descending to the user, a user identification module.

[00:20:51] Speaker 01:
And that's of course the step we're debating here.

[00:20:54] Speaker 01:
Then the separate step is the server device authenticating the user by requesting subscription information.

[00:21:01] Speaker 01:
That's the step that deals with authentication.

[00:21:04] Speaker 01:
And that's separate, wholly separate from the step that deals with the user identification module.

[00:21:10] Speaker 02:
I think what you're saying, this is Judge Dyke, is that

[00:21:14] Speaker 02:
The server device that is described as doing the authentication is something different in the claim than the user identification module.

[00:21:25] Speaker 01:
That's exactly right, Your Honor.

[00:21:27] Speaker 01:
You said it much better than I did.

[00:21:28] Speaker 01:
But that's exactly the point, something that sets a separate step in the claim.

[00:21:33] Speaker 00:
Judge Lurie, with your permission, I'd like to ask a slightly different question.

[00:21:37] Speaker 00:
I know his time's expired, so I don't want him to lose all his rebuttal time.

[00:21:40] Speaker 00:
Is that OK?

[00:21:41] Speaker 03:
That is fine.

[00:21:42] Speaker 00:
Okay, so one of the questions I have for you, Mr. McKeon, is Dr. Chang's brief suggests, and I think it's fair to say, that multiple examiners during prosecution refuse to look at this element as a 112-6 element.

[00:22:00] Speaker 00:
Your argument on appeal fails, does it not, if this is not a 112-6 element?

[00:22:05] Speaker 00:
Because if it's not a 112-6 element, we don't need an algorithm in the spec, is that correct?

[00:22:11] Speaker 01:
Well, I would, let me just, first point before I directly answer, the district court said any hardware would do.

[00:22:20] Speaker 01:
And instead of really pointing to the specific hardware, that's at column four of the patent.

[00:22:27] Speaker 01:
And then there was no identification about controlling access.

[00:22:31] Speaker 00:
So we think the outline question on- Yeah, but Council, that seems to be you arguing that a non-means plus function term nonetheless needs to identify hardware in the spec.

[00:22:41] Speaker 00:
And I just, with all due respect, I think that's probably not a good use of your time, because that's not right, you know, so.

[00:22:48] Speaker 01:
Yeah, no, if it's not means of function, Your Honor, obviously, then it's a different analysis.

[00:22:53] Speaker 01:
But the patent office, if you look at the patent office and the record on it, the examiner was under the, we think, incorrect conclusion that if it's a method claim, then means of function doesn't apply unless you use the step of

[00:23:09] Speaker 01:
language.

[00:23:10] Speaker 01:
And this course precedent we've had in the media rights case, for example, makes clear that that's not true.

[00:23:17] Speaker 00:
I have to say this sort of baffled me because it's just an argument I've never seen before, but yet there it is sort of materializing itself in the MPEP.

[00:23:26] Speaker 00:
This means four versus step four in a method versus a structure claim.

[00:23:31] Speaker 00:
And I know you pointed to a couple of cases

[00:23:35] Speaker 00:
where it appears to be similarly situated, but I look in those cases and this particular argument wasn't raised about it's not a means plus functional language because it would have to say step four, not means four.

[00:23:47] Speaker 00:
It wouldn't be structural.

[00:23:49] Speaker 00:
It would be a processing or a step.

[00:23:52] Speaker 00:
So what do we do with that?

[00:23:54] Speaker 00:
I just never heard this step four versus means four argument made before, and it sort of caught me off guard.

[00:23:59] Speaker 00:
And I think your characterization, by the way, of why the examiner said it's not 112.6 is right.

[00:24:04] Speaker 00:
And so if we move beyond the step four versus means four distinction, I think they lose.

[00:24:11] Speaker 00:
But what is there to that distinction?

[00:24:13] Speaker 00:
Because it's just not an argument I've ever seen before.

[00:24:15] Speaker 01:
Well, I mean, the MPP, of course, governs what they do in the patent office.

[00:24:21] Speaker 01:
But I would say that this course precedent

[00:24:23] Speaker 00:
uh... you know the right that important issue of law for the court in terms of our president can override it if the issue wasn't raised right i mean the fact that we held in a case where no one raised to the argument uh... you know that that with the means-plus-function language when no one raised this argument doesn't sort of bind us today except a new and different argument that just wasn't considered by that prior panel so it can't bind us so i guess i want to go to the heart of the argument is there anything to

[00:24:51] Speaker 00:
this step four versus means four distinction that the Patent Office has codified in its NPEP?

[00:24:59] Speaker 01:
I would say no, Your Honor, and the reason for that, of course, is that if you're invoking the benefit of the statute, even if it's a method claim and you don't use the step four language, but if you're otherwise invoking the benefit of the statute

[00:25:15] Speaker 01:
to rely on the structural part of that, then it applies.

[00:25:20] Speaker 01:
And that's really the issue here.

[00:25:22] Speaker 01:
As you know, the history behind the statute was a trade-off, a benefit of going to the specification and relying on the disclosure instead of having to claim these specific structures.

[00:25:33] Speaker 01:
And they did that here.

[00:25:35] Speaker 01:
I mean, if you agree that it's a 112.6 in terms of the lack of structure

[00:25:42] Speaker 01:
in the claim itself, it's all functional, then if you agree with that, then they've invoked it.

[00:25:46] Speaker 01:
And you don't need to get to this question of step four versus means four.

[00:25:51] Speaker 02:
Is that argument made before the district court about the necessity for step four language?

[00:25:59] Speaker 01:
I don't recall that, Your Honor, coming up.

[00:26:02] Speaker 01:
I'm sure my able opposing counsel will discuss that.

[00:26:07] Speaker 01:
But I don't recall that ever coming up as a specific argument raised by

[00:26:11] Speaker 01:
by anybody.

[00:26:12] Speaker 03:
Well, a step relates to part of a method, whereas means relates to part of a structure.

[00:26:21] Speaker 03:
That's pretty clear.

[00:26:22] Speaker 03:
And I believe we've written it.

[00:26:24] Speaker 03:
Aside from the fact that that's what the statute said, I think we tracked that in at least one opinion years ago.

[00:26:34] Speaker 01:
I certainly agree with that.

[00:26:37] Speaker 01:
That's the distinction in the case law as well.

[00:26:41] Speaker 03:
All right, we'll save your three minutes for a bottle.

[00:26:44] Speaker 03:
Thank you, Your Honor.

[00:26:46] Speaker 03:
If there's something to respond to.

[00:26:49] Speaker 03:
Let's go back to Mr. Chau, who has at least seven minutes further.

[00:26:59] Speaker 04:
Thank you, Your Honor.

[00:27:01] Speaker 04:
I'd first like to get back to the original view that there's a major distinction between the economy that is

[00:27:11] Speaker 04:
advanced by Samsung of unlimited license versus on-demand license.

[00:27:20] Speaker 00:
Council, this is Judge Moore.

[00:27:21] Speaker 00:
You have limited time, and I understand your arguments on your appeal, but I really want you to address Samsung's cross-appeal on indefinite.

[00:27:29] Speaker 00:
Yes.

[00:27:29] Speaker 00:
Can you please start there?

[00:27:30] Speaker 04:
Okay.

[00:27:32] Speaker 04:
I'd like to get back on... There is a difference, and we have briefed it, but there are

[00:27:40] Speaker 04:
each of the examples.

[00:27:43] Speaker 02:
If this is a meat plus function claim, where is the algorithm?

[00:27:54] Speaker 04:
Well, if I may, the algorithm is given within what the judge looked at in terms of the ability to

[00:28:08] Speaker 04:
to record the information and retrieve the information.

[00:28:13] Speaker 02:
And that's essentially the... Are you saying that the algorithm is in the claim itself?

[00:28:23] Speaker 04:
Yes, it is.

[00:28:24] Speaker 04:
If I may, I would say that when this language was added originally, that it was not directed to doing what

[00:28:38] Speaker 04:
what is anticipated in 112 paragraph 6, and that the words here, configured to control access of, were provided not to avail of a shortcut, but were made in the sense of adapted to or designed for a specified role.

[00:28:58] Speaker 00:
Council, Council, Council, I need you to stay focused on Judge Dyke's question, though.

[00:29:03] Speaker 00:
You didn't answer it, you sort of answered it, but didn't say where and how.

[00:29:07] Speaker 00:
I understand your argument is that you don't think this should fall under 112-6, and therefore you don't need to disclose an algorithm.

[00:29:15] Speaker 00:
But Judge Dyke's question, I think, is important.

[00:29:18] Speaker 00:
If we don't agree with you on that, and if this is a term that invokes 112-6, precisely where is the algorithm that would be necessary?

[00:29:28] Speaker 00:
And his question is, is your argument that that algorithm is contained within the claim language itself?

[00:29:34] Speaker 00:
And if your argument is, I think yes is how you answered him,

[00:29:37] Speaker 00:
then tell me where, tell me where precisely in the claim language I am to find the algorithm that explains to you how to control access.

[00:29:49] Speaker 04:
I think the judge pointed correctly to the fact that applying 112 paragraph 6 to find a structure and the judge did find that the structure was disclosed

[00:30:04] Speaker 04:
in the hardware applications that were in the specification.

[00:30:10] Speaker 04:
But in terms of what the component, which of course is part of this idea of a nested component, nested 112 paragraph 6, which appeared in a number of the cases, we distinguished in those cases

[00:30:31] Speaker 04:
as cases where basically the component didn't have any kind of structure other than in the specification, or maybe not even in specification.

[00:30:46] Speaker 04:
But the point is that the judge did find that 112 paragraph 6 in terms of structure was shown in the hardware structure.

[00:30:56] Speaker 02:
I'm really not understanding what you're saying.

[00:31:03] Speaker 02:
Here in claim one, it talks about the user identification module doing certain things.

[00:31:09] Speaker 02:
But when it comes to the authentication function, it doesn't describe that as being done by the user identification module, but rather by the server device, right?

[00:31:21] Speaker 04:
It has a role.

[00:31:23] Speaker 04:
The identification device has a role in that.

[00:31:26] Speaker 04:
I guess, that authentication.

[00:31:31] Speaker 04:
If we look at the specification, there's nothing special that says that use identification device itself does the authentication.

[00:31:39] Speaker 04:
It has a role in it.

[00:31:41] Speaker 04:
And that gets, if you look at the, there's nothing that says that in addition to the claim steps,

[00:31:52] Speaker 04:
which are more than just a statement of function.

[00:31:55] Speaker 04:
So what does a step of authenticating assess very specific things with respect to the US Identification Device?

[00:32:04] Speaker 00:
Again, counsel, this is Judge Moore.

[00:32:07] Speaker 00:
Like Judge Dyke, I'm having trouble understanding the answer to your question.

[00:32:10] Speaker 00:
You seem to keep wanting to go back to, and I promise we will give you time to tell us why you don't think this is a 112.6 claim term.

[00:32:18] Speaker 00:
But if it is a 112.6 claim term,

[00:32:21] Speaker 00:
Where is the particular structure, where is the algorithm, which will control the access?

[00:32:28] Speaker 00:
That's what I want to know, not storage access.

[00:32:31] Speaker 00:
Where is the control access algorithm?

[00:32:35] Speaker 04:
It is part of the control access.

[00:32:38] Speaker 04:
As I was saying, the language, I would say, is not 112.

[00:32:48] Speaker 00:
it's not solely one twelve-paragraph six is partly one twelve-paragraph six okay count i guess i'm going to tell you right now that i am going to accept for my purposes that you can't point to any structure and that if we do conclude this is in fact one twelve six language then you lose and your claim is indefinite because i think you know uh... i i couldn't find anything uh... in your brief

[00:33:13] Speaker 00:
And I believe Judge Deik and I have now asked you this four separate times, and you keep wanting to retreat to this just isn't 112-6, and that's fine.

[00:33:19] Speaker 00:
And if you're right on that, you don't have to worry about it.

[00:33:21] Speaker 00:
But I want you to know that you haven't answered our question at all.

[00:33:26] Speaker 04:
Your Honor, it's 112 paragraph 6.

[00:33:29] Speaker 04:
The structure is the hardware device that is capable of storing the subscription information.

[00:33:39] Speaker 04:
The judge correctly noted that

[00:33:41] Speaker 04:
The algorithm for doing that is not required to be specified specifically because it's not a general purpose computer as such.

[00:33:49] Speaker 04:
And it's known how that component operates.

[00:33:57] Speaker 00:
OK, so that's OK.

[00:33:58] Speaker 00:
Now I finally understand your response.

[00:33:59] Speaker 00:
Your response is there is no algorithm because you don't think one was necessary.

[00:34:06] Speaker 04:
Your Honor.

[00:34:08] Speaker 04:
The judge was saying, and we agree, that the algorithm doesn't necessarily have to be disclosed.

[00:34:16] Speaker 04:
The structure is disclosed.

[00:34:17] Speaker 04:
The algorithm are known ways of various storage devices for recording and for retrieving.

[00:34:28] Speaker 04:
And that's what the judge noted.

[00:34:30] Speaker 04:
And that the ultimate issue was looking at none of us.

[00:34:38] Speaker 00:
Can you tell us why you think that this, why the examiner was correct, why we should adopt the rationale in the MPEP that only a claim that implicates a step four, since this is a method claim, could implicate 112.6 and that therefore this isn't even something that falls in 112.6?

[00:34:58] Speaker 00:
I promised you, you get a chance to address that, so I want you to go ahead and do that now.

[00:35:06] Speaker 04:
Again, we looked at what was intended in 112 paragraph 6, which was if someone used this as a shortcut for not disclosing the steps or not disclosing the structure, that 112 paragraph 6 referred to what's actually in the specification plus equivalence.

[00:35:32] Speaker 04:
We believe that 112 paragraph 6 intent is actually addressed by this.

[00:35:39] Speaker 04:
So normally one looks at in a method claim one looks at the steps because that's what the statute actually says.

[00:35:48] Speaker 04:
That's the, you look at it as a shortcut for a combination of steps or a combination of components.

[00:35:58] Speaker 04:
And the idea of this nested,

[00:36:02] Speaker 04:
application nested 112 paragraph 6, which really was in only two cases here.

[00:36:09] Speaker 04:
And the two cases actually did not disclose how the step was done or this particular structure.

[00:36:19] Speaker 04:
Here, we do have a structure.

[00:36:21] Speaker 04:
And the judge pointed at that structure.

[00:36:25] Speaker 04:
And the judge addressed the issue of whether that particular component

[00:36:30] Speaker 04:
needed to do anything more than to do identification by itself.

[00:36:36] Speaker 04:
Because identification is done by certain features of the component that's decided in the claim.

[00:36:48] Speaker 04:
And I think that that's what we're addressing.

[00:36:51] Speaker 04:
And it's not simply that this component does everything.

[00:36:56] Speaker 04:
Specification doesn't say that the component does everything.

[00:37:00] Speaker 04:
The specification says that it's part of certain steps.

[00:37:07] Speaker 04:
So again, yes.

[00:37:11] Speaker 03:
Thank you, Mr. Child.

[00:37:12] Speaker 03:
Mr. McKeon has three minutes for rebuttal on the cross appeal.

[00:37:17] Speaker 01:
Thank you, Your Honor.

[00:37:17] Speaker 01:
Just a couple of points I have to make.

[00:37:21] Speaker 01:
On the question of what structure we need to identify, of course, it's limited to

[00:37:27] Speaker 01:
the step at issue here, which is sending to the user a user identification module configured to control access.

[00:37:34] Speaker 01:
So therefore, the algorithm, if in fact the court agrees with the district court that it's 112.6, the algorithm we need to find is for that particular step.

[00:37:44] Speaker 01:
And the idea that we're going to go look for the rest of the claim or go look for the general overview of steps, we just think that's improper.

[00:37:51] Speaker 01:
You've got to locate an algorithm for that particular claimed element.

[00:37:57] Speaker 01:
And it's got to be an algorithm, of course, that controls access.

[00:38:00] Speaker 00:
Well, counsel, counsel, counsel, we could definitely look in the rest of the claim.

[00:38:03] Speaker 00:
The claim is part of the spec.

[00:38:04] Speaker 00:
And the statute says you look to the spec.

[00:38:06] Speaker 00:
And the claim is part of the spec.

[00:38:08] Speaker 00:
So if the structure were contained within the claim, that would satisfy it.

[00:38:11] Speaker 00:
Will you please instead talk about the step four versus means four argument?

[00:38:16] Speaker 00:
I just had never seen this before.

[00:38:18] Speaker 00:
I see it now in the MPEB quite clearly and perhaps it's wrong.

[00:38:22] Speaker 00:
Perhaps there can be a means four element within a method claim and that's what you're arguing here because you're not saying this is a step four, right?

[00:38:33] Speaker 01:
That's correct.

[00:38:35] Speaker 00:
But this is within a method claim nonetheless.

[00:38:37] Speaker 00:
So you're arguing there can be a means for implication within a method claim, correct?

[00:38:44] Speaker 01:
That's correct, Your Honor.

[00:38:45] Speaker 01:
And again, the case law is clear on that.

[00:38:48] Speaker 01:
I mean, we cited the media rights case, which actually used the means for language explicitly.

[00:38:54] Speaker 01:
And so, yes.

[00:38:55] Speaker 00:
But what about the MPEP?

[00:38:57] Speaker 00:
Is the MPEP just wrong?

[00:38:58] Speaker 00:
Do we need to make it clear that that's wrong?

[00:39:01] Speaker 00:
Or can it be reconciled with your argument?

[00:39:04] Speaker 01:
Well,

[00:39:05] Speaker 01:
You know, I don't know that the court needs to go that far in the sense that the step four language is, you know, it's not used here in this instance.

[00:39:13] Speaker 01:
And, um, so I don't think the court needs to go that far.

[00:39:17] Speaker 00:
This examiner said that this claim term doesn't in 126, because it doesn't fall within the step four rubric.

[00:39:28] Speaker 00:
This examiner said, citing the MPEP that that was

[00:39:33] Speaker 00:
why this is not a one twelve six terms so what you know something has to be corrected right for you to prevail i have to tell the p t l or at least tell this examiner that he's either he's interpretation of the m p p is wrong or what what what how do we address the examiner's conclusion in this case because it wasn't just one examiner right this went up the chain to a primary and everybody else and they all sort of signed off on this concept so what do i do with that if if you're right that

[00:40:03] Speaker 00:
You're wrong, correct?

[00:40:05] Speaker 01:
Well, Your Honor, I mean, at bottom, I think you're right.

[00:40:07] Speaker 01:
There's clearly a conflict between what it says there in the MPEP and this court's precedent.

[00:40:14] Speaker 00:
Has our court ever addressed that MPEP section or this argument, this argument which distinguishes between step four and means four in the method claim context?

[00:40:23] Speaker 01:
I'm not aware, Your Honor, certainly none of the cases we dealt with in this appeal is not addressed that specifically.

[00:40:29] Speaker 01:
You know, the court has, like as you said before, we don't know that, I don't know if it's ever been argued specifically before the court, or at least it hasn't been addressed in your decisions that we're aware of.

[00:40:41] Speaker 03:
But your point, counsel, Judge Laurie speaking, your point is that even though this is a method claim, the key part of it is modules, which is means.

[00:40:52] Speaker 03:
And therefore, it makes it means plus function requiring corresponding structure and algorithm.

[00:41:00] Speaker 01:
That's exactly right, Your Honor.

[00:41:02] Speaker 01:
They've invoked the benefit of the statute.

[00:41:04] Speaker 01:
Therefore, the statute applies.

[00:41:07] Speaker 03:
And if the MPEP is wrong, saying there can't be a means plus function, a means portion in a method claim, that's just plain wrong.

[00:41:21] Speaker 01:
Well, it would be, of course, this court decisions override that.

[00:41:25] Speaker 01:
So, obviously, it would be incorrect and inconsistent.

[00:41:29] Speaker 01:
That's correct.

[00:41:32] Speaker 01:
Okay.

[00:41:32] Speaker 01:
My time's up.

[00:41:33] Speaker 01:
Unless there's any other questions, I will submit the case.

[00:41:37] Speaker 03:
Thank you, Mr. McKeon and Mr. Chao.

[00:41:39] Speaker 03:
The case is submitted.

[00:41:41] Speaker 01:
Thank you.

[00:41:42] Speaker 01:
Thank you.

[00:41:43] Speaker 01:
Thank you.

[00:41:46] Speaker 00:
The honorable court is adjourned until tomorrow morning at 10 a.m.