[00:00:00] Speaker 03:
that leads to our final case which is twenty twenty two sixty two cup computing A.S.

[00:00:05] Speaker 03:
versus Clinton Micro Inc.

[00:00:07] Speaker 03:
Mr. Andre.

[00:00:16] Speaker 01:
May it please the court.

[00:00:19] Speaker 01:
I'm going to focus my argument on the claim construction issue that was front center in the briefing and that in which the PTAB has taken an interest in as well.

[00:00:29] Speaker 01:
PTAB construed a mobile security system that could be a part of the remote device, a mobile device.

[00:00:37] Speaker 01:
It says it can be one and the same, mobile device, mobile security system.

[00:00:42] Speaker 01:
A plain reading of the claims dictate otherwise, not only to one's skill in the art, but also to just the common use of the English language.

[00:00:52] Speaker 01:
Now, direct your attention to claim 10 of the 488 patent.

[00:00:57] Speaker 01:
This is the representative claim that all the parties used in this briefing.

[00:01:01] Speaker 01:
What's claimed is a mobile security system, A, has its own processor, B, has a connection mechanism for connecting to a data port of a mobile device.

[00:01:15] Speaker 01:
Now, that's connecting to a mobile device.

[00:01:16] Speaker 01:
That right there tells you it's not one and the same.

[00:01:20] Speaker 01:
a mobile security system is not part of the mobile device, so why would it have a data port to connect to it?

[00:01:27] Speaker 01:
And then for communicating with the mobile device, once again, not as a connecting to mobile device, but communicating with it.

[00:01:33] Speaker 01:
The board said the mobile security system

[00:01:38] Speaker 01:
can be part of the mobile device.

[00:01:40] Speaker 01:
That makes no sense, no common sense, and a complete misreading of the English language.

[00:01:44] Speaker 05:
So then why does the specification also say, an embodiment of the present invention involves a mobile security system that may be incorporated within the mobile device?

[00:01:55] Speaker 01:
Yeah, in the specification, I direct Your Honor's attention to the sentence just before that.

[00:01:59] Speaker 01:
This is at column eight.

[00:02:02] Speaker 01:
It says the mobile security system 3, 4, or 5 may be in a pocket size, handheld size, or key size housing, or possibly smaller.

[00:02:10] Speaker 01:
Further, the mobile security system may be incorporated within the mobile device.

[00:02:14] Speaker 01:
What I read that is they're talking about thumb drive, a key chain, something you put into it, and it can be incorporated within.

[00:02:20] Speaker 01:
Factually, that's how I would read that sentence.

[00:02:22] Speaker 01:
But nonetheless, under this case, the court's precedent of Rolls-Royce, Noah Nordi, Johnson & Johnson, you can't

[00:02:30] Speaker 01:
discount the language of the actual claims to bring in a preferred embodiment if claims just don't support it.

[00:02:36] Speaker 05:
Right, but if your argument is no reasonable person, no person of skill in the art, no one who understands English would ever think that these things were not separate.

[00:02:48] Speaker 05:
Your own patentee

[00:02:50] Speaker 05:
tells us right there in the portion I read you, they could be separate.

[00:02:53] Speaker 01:
Well, when it says it could be incorporated within the mobile device, that to me, I said, it's an alternative reading, the way I read it was because right before they talk about thumb drives, taking a drive, a mobile security system and plugging it into a laptop, which is not uncommon, would be incorporating within

[00:03:12] Speaker 01:
the mobile device, it's just an alternative reading.

[00:03:15] Speaker 01:
So even if the board would read the specification in that light, if the claims just don't support that preferred embodiment, this court has said multiple times, you don't get the preferred embodiment.

[00:03:28] Speaker 01:
I mean, it's uncommon for people to ask for broad specifications, broad disclosures.

[00:03:32] Speaker 01:
When they write the claims, they write much more narrowly.

[00:03:35] Speaker 01:
And in this particular instance, it goes on in the claim when it talks about the security engine, the security engine which is part of the mobile security system.

[00:03:43] Speaker 01:
It says detects using a mobile security system a process awake event.

[00:03:46] Speaker 01:
So the system has to detect a wake event.

[00:03:49] Speaker 01:
If the system is asleep on power saving mode, it couldn't detect it.

[00:03:54] Speaker 01:
It's not possible.

[00:03:55] Speaker 01:
Once again, use of the English language.

[00:03:58] Speaker 01:
And this is having a mobile device processor different than the mobile security system processor.

[00:04:07] Speaker 01:
Now, we're very explicit here.

[00:04:09] Speaker 01:
The mobile device processor is different than the mobile security system processor.

[00:04:13] Speaker 01:
They're different processors.

[00:04:16] Speaker 01:
And then it's adapted to weight at least a portion of the mobile device.

[00:04:21] Speaker 01:
Once again, if it's part of the mobile device, how is it going to weight the mobile device?

[00:04:27] Speaker 01:
It makes no sense whatsoever.

[00:04:30] Speaker 01:
Throughout the entire specification, with the exception your honor pointed out, every drawing, every figure, every description,

[00:04:38] Speaker 01:
of the entire specification describes as two separate components, two separate devices.

[00:04:45] Speaker 01:
They're not one in the same.

[00:04:46] Speaker 01:
The one section in the specification that does give that ambiguous language, I think it's ambiguous because I read differently than the board read it, would be a broader disclosure but not necessarily in line with the claims.

[00:05:03] Speaker 01:
The claims themselves then talk about how the mobile security system is going to manage the security services configured to protect the mobile device.

[00:05:12] Speaker 01:
Once again, if they're one and the same, this doesn't make sense.

[00:05:17] Speaker 01:
The intrinsic record here is replete with this very construction that we would propose that the board reject.

[00:05:25] Speaker 01:
And this is a controlling construction.

[00:05:27] Speaker 01:
Now, the specification and the claims give us a good reading, but now this is the prosecution history furthers that.

[00:05:37] Speaker 01:
During original prosecution, the PTO found the claims obvious over two pieces of prior, Grant and Priestley.

[00:05:46] Speaker 01:
The examiner found Grant did not teach mobile security system processors different from mobile device processors, but Priestley filled that hole.

[00:05:54] Speaker 01:
The patentee overcame that reference

[00:05:58] Speaker 01:
by arguing that the alleged mobile security system in pre-seed is part of the mobile device.

[00:06:05] Speaker 01:
It's actually, it is part of the mobile device.

[00:06:07] Speaker 01:
Then the processor would not be different than the mobile device processor.

[00:06:11] Speaker 01:
That's how the claim was allowed.

[00:06:13] Speaker 01:
That's about as an express disclaimer as you can get.

[00:06:17] Speaker 01:
That's a disavowal of claim scope where you'd have

[00:06:21] Speaker 01:
the two processors, mobile security system and a mobile device processor on the same unit.

[00:06:26] Speaker 01:
They're different.

[00:06:27] Speaker 01:
They're in different places.

[00:06:29] Speaker 01:
Now, this court has determined that during these IPR processes, this is in the ALIS case, during the IPR process, you can also have prosecution history disclaimer.

[00:06:42] Speaker 01:
So during the IPR process, we want to make it very clear.

[00:06:47] Speaker 01:
We said we think it's very clear in the original prosecution there is a disclaimer.

[00:06:51] Speaker 01:
But let's just make it explicit as can be.

[00:06:54] Speaker 01:
So we explicitly disavow the claim scope that the PTAB was going to give us.

[00:07:02] Speaker 01:
We'll narrow the claims to a term that they say is different than the mobile processor.

[00:07:09] Speaker 01:
We're going to disavow that they all reside in the same place.

[00:07:16] Speaker 01:
Now, at that point, this should be done.

[00:07:18] Speaker 01:
The claim instruction should be done.

[00:07:21] Speaker 01:
But the PTAB said, no, we're not going to accept your disavow.

[00:07:27] Speaker 03:
So if someone in a district court infringement case makes a disavow, is that binding on the district court?

[00:07:35] Speaker 01:
If they do a disavow, I don't know if they can change the claim strip at district court because you're interpreting under Phillips.

[00:07:39] Speaker 01:
But because the prosecution is done at that point.

[00:07:43] Speaker 01:
And the answer is no.

[00:07:46] Speaker 01:
I don't know the answer to that.

[00:07:48] Speaker 01:
I've never seen a case where you can change the claim scope in district court.

[00:07:52] Speaker 01:
I have seen a case now where you can change the claim scope in IPR.

[00:07:56] Speaker 03:
Not for purposes of the IPR itself.

[00:07:59] Speaker 01:
What's that?

[00:07:59] Speaker 03:
Not for purposes of the IPR itself.

[00:08:03] Speaker 01:
Well, I think the ALIS case does indicate that you could change it for that.

[00:08:08] Speaker 01:
That is a project.

[00:08:09] Speaker 03:
That indicates you could change it for the IPR proceeding itself?

[00:08:13] Speaker 01:
So if there's a disavow in the IPR process, it's binding in later district court.

[00:08:19] Speaker 01:
Right.

[00:08:19] Speaker 03:
But it doesn't say it's binding in the IPR.

[00:08:22] Speaker 01:
Well, it's silent to that.

[00:08:23] Speaker 01:
But it makes sense.

[00:08:25] Speaker 01:
If it's binding on the patentee in district court, why would it not be binding at the IPR process as well?

[00:08:33] Speaker 03:
On the board.

[00:08:34] Speaker 01:
Yeah.

[00:08:35] Speaker 01:
If it's a term that is ambiguous,

[00:08:38] Speaker 01:
by the board's definition.

[00:08:40] Speaker 01:
And you say, to resolve this ambiguity, this claim, I don't think, is ambiguous, red, and white, an entire claim.

[00:08:47] Speaker 01:
If it was ambiguous, the one specific term would make a difference.

[00:08:49] Speaker 04:
I'm just pointing out that there's a difference between binding on the one who's doing this claiming and binding on somebody else, like the adjudicator or the other side.

[00:09:01] Speaker 01:
I don't think it's binding on the board.

[00:09:02] Speaker 01:
But what is the board's interest in

[00:09:07] Speaker 01:
not accepting that disclaimer.

[00:09:10] Speaker 04:
Just as this Court found in... Forcing you into the amendment process as the solution for a recognized problem with the originally issued plans.

[00:09:20] Speaker 04:
Well, it is... Doesn't the Board say that?

[00:09:23] Speaker 01:
Well, that's what the Board says in its briefing, that we should go into an amendment process as opposed to an argument process.

[00:09:29] Speaker 01:
This Court found in Standard Oil that you could either do a prosecution disclaimer through an amendment or

[00:09:34] Speaker 01:
argument.

[00:09:35] Speaker 01:
So I don't think that's binding.

[00:09:37] Speaker 01:
The only case that the board cites is the Tempo lighting case.

[00:09:43] Speaker 01:
And that case was in original prosecution.

[00:09:46] Speaker 01:
And during the original prosecution, the broadest reasonable interpretation applied.

[00:09:49] Speaker 01:
Phillips was not applied on that interpretation.

[00:09:52] Speaker 01:
So that's explicit in the Tempo case.

[00:09:55] Speaker 01:
So I think at this point, when you go into a proceeding like an IPR, and if you read the claims

[00:10:02] Speaker 01:
In its totality, it's clear on the plain reading of the claims that these are meant to be on two separate components, remote and separate from each other, these two processors.

[00:10:13] Speaker 01:
And then the board is saying that the original disavow and the original prosecution was not as clear as it should be.

[00:10:23] Speaker 01:
That's what the board said.

[00:10:24] Speaker 01:
So we made it very clear.

[00:10:26] Speaker 01:
I think that is serving the purpose of the whole disavowed body of case law.

[00:10:31] Speaker 01:
where it is to give the public notice.

[00:10:33] Speaker 01:
So in this particular instance, by adding into the claim language themselves, a very explicit language, it says that the mobile device having a mobile device processor different than the mobile security system processor.

[00:10:47] Speaker 01:
I don't know how much more explicit that could be in the claim language.

[00:10:50] Speaker 01:
The mobile device having a mobile device processor different than a mobile security system processor.

[00:10:56] Speaker 01:
Two different processors.

[00:10:57] Speaker 01:
not on the same device.

[00:10:59] Speaker 01:
If it was one processor on the device, they'd both be called the mobile device processor.

[00:11:03] Speaker 01:
But just the language before that, where it says communicating the data port to communicate with the mobile device, it's not a subsystem communicating with the mobile device processor, it's communicating with the mobile device.

[00:11:17] Speaker 01:
Sending communications to the mobile device

[00:11:20] Speaker 01:
Not the mobile device processor, the mobile device.

[00:11:23] Speaker 01:
You're sending it to that.

[00:11:24] Speaker 01:
It has to be outside the mobile device to send it to the communication to the mobile device.

[00:11:27] Speaker 01:
You wouldn't send it to yourself.

[00:11:29] Speaker 01:
That makes no sense at all.

[00:11:31] Speaker 01:
Once again, common sense in plain language.

[00:11:34] Speaker 01:
So going back to the prosecution history disclaimer, I think in this particular instance, there was a prosecution history disclaimer in original prosecution.

[00:11:42] Speaker 01:
And at the IPR process, to make it even more explicit, because that was an issue, I think that just reinforces

[00:11:49] Speaker 01:
what this claim is about, and also allows for the public notice provision that this is meant to solve.

[00:11:59] Speaker 01:
I'll reserve the rest of my three minutes.

[00:12:00] Speaker 03:
Do you agree there's nothing left here?

[00:12:02] Speaker 01:
We'll submit on papers, Arthur, Schooner.

[00:12:07] Speaker 01:
No, I don't think there's nothing left.

[00:12:11] Speaker 03:
No, I don't think so.

[00:12:28] Speaker 00:
Thank you, Your Honors.

[00:12:30] Speaker 00:
As an initial matter, CUP counsel started his argument by saying that the board found that the security system can be one and the same as the mobile device.

[00:12:41] Speaker 00:
That's not correct, and Trend Micro doesn't set forth that argument.

[00:12:45] Speaker 00:
Instead, what the board found was that the security system can be part of the mobile device, a subsystem in the mobile device or a subpart of the mobile device.

[00:12:53] Speaker 00:
And that conclusion is correct.

[00:12:55] Speaker 00:
It's supported by the claims and specification.

[00:12:59] Speaker 00:
as your honors noted, the specification.

[00:13:02] Speaker 04:
Don't start with the specification.

[00:13:03] Speaker 04:
He knows that that's a problem.

[00:13:05] Speaker 04:
The question he says, your friend on the other side says, notwithstanding the specification, you can't possibly do this under the claim language, address the claim language.

[00:13:15] Speaker 00:
The claim language is entirely consistent with the specification, and the claim language never says or even implies that the security system and mobile device have to be separate and remote, which is CUP's proposed construction.

[00:13:30] Speaker 00:
All the claim language says is that the two things have two different processors.

[00:13:34] Speaker 04:
They can have it.

[00:13:37] Speaker 04:
Maybe I've misremembered what was said.

[00:13:41] Speaker 04:
I thought that the argument was how do you square this notion that you and the board are relying on with the idea that one thing is connected

[00:13:57] Speaker 04:
One thing is detecting sleep or wakefulness.

[00:14:02] Speaker 04:
On the other, account for those pieces of the claim.

[00:14:07] Speaker 00:
All of those things make sense in the case where the security system is part of the mobile device.

[00:14:12] Speaker 00:
I'll walk through them one at a time if we start with the word connecting.

[00:14:17] Speaker 00:
If you imagine a security system that's within a mobile device, and again, each has its own processor, the security system subsystem can and must connect to the mobile device.

[00:14:29] Speaker 00:
They would connect via an internal mechanism.

[00:14:32] Speaker 00:
Some bus or communication path between the two processors would be the simplest example of that.

[00:14:37] Speaker 04:
I understand how it could connect with another component of the device.

[00:14:41] Speaker 04:
How exactly does it connect with the device of which it is a part?

[00:14:48] Speaker 00:
exactly how your honor said, which is connecting to a component of that device, most naturally the processor of the mobile device.

[00:14:56] Speaker 00:
If the two processors are connected, then the security subsystem is connected to the larger surrounding mobile device.

[00:15:07] Speaker 04:
You don't think there's something odd about the language and the same point would be about this communication that is a component of a device communicates with the device of which it is a component?

[00:15:23] Speaker 00:
I don't.

[00:15:24] Speaker 00:
I agree with the board that that language is

[00:15:27] Speaker 00:
makes sense in the case where the security system is a sub-part of the mobile device.

[00:15:33] Speaker 00:
If we assume that there's the connection, then the communication over that connection makes sense.

[00:15:37] Speaker 00:
The two processors would communicate with each other.

[00:15:41] Speaker 00:
And cut council also pointed to the data port part of claim 10.

[00:15:48] Speaker 00:
There are plenty of reasons why the data port makes sense if the security system is a sub-part of the mobile device.

[00:15:56] Speaker 04:
I see, so the connection language is not actually connecting to the device.

[00:16:00] Speaker 04:
It's connecting to a data port of the device.

[00:16:03] Speaker 00:
Correct.

[00:16:04] Speaker 04:
There's nothing problematic about that, of having one component connect to another, namely the data port, right?

[00:16:11] Speaker 04:
Correct.

[00:16:11] Speaker 04:
What about the communicating?

[00:16:13] Speaker 04:
But the communicating is with the device itself.

[00:16:19] Speaker 00:
The communicating is with the device and

[00:16:22] Speaker 00:
when the security system is part of the mobile device processor.

[00:16:27] Speaker 03:
It means the mobile device processor.

[00:16:29] Speaker 00:
It means the mobile device processor, yes, or some other part of the mobile device.

[00:16:33] Speaker 00:
The most natural case is the mobile device processor or communicating with

[00:16:40] Speaker 00:
the data port of the mobile device, which could be internal.

[00:16:43] Speaker 00:
We know for many reasons that the data port can be internal.

[00:16:48] Speaker 00:
Figure 5 of the patent describes ports 505 and says they can exist within the mobile security system.

[00:16:55] Speaker 00:
It uses that word, within.

[00:16:56] Speaker 00:
That's cited in our briefs, and that's at appendix 365.

[00:16:59] Speaker 00:
So the specification says the ports can be within the mobile device, meaning it can be internal.

[00:17:04] Speaker 00:
There also is extrinsic evidence cited in our briefs

[00:17:08] Speaker 00:
describing the data ports can be internal in a variety of different ways.

[00:17:13] Speaker 00:
The specification also refers to external device ports in various places, suggesting that the phrase device port by itself is not necessarily external.

[00:17:23] Speaker 00:
And CUPZONE expert Dr. Medvedevich testified what a data port means in deposition and in his definition

[00:17:33] Speaker 00:
He didn't say it has to be external at all.

[00:17:35] Speaker 00:
And his definition is cited in our brief.

[00:17:37] Speaker 00:
So we know the data port can be internal.

[00:17:40] Speaker 00:
And if we assume that the data port is internal, which it can be, then the connection to the data port can be internal too.

[00:17:47] Speaker 00:
And the communication over that connection can be internal as well.

[00:17:52] Speaker 00:
So all of those things make sense under Trend Micro's interpretation of this limitation and the board's interpretation of the limitation.

[00:18:01] Speaker 00:
At a minimum, none of those things rise to the level of highly persuasive evidence, which is what's required to exclude the embodiment in the specification.

[00:18:10] Speaker 00:
And cup counsel, I think, said that there was just one embodiment in the specification.

[00:18:17] Speaker 00:
That's not right.

[00:18:17] Speaker 00:
There are two embodiments in the specification that say,

[00:18:21] Speaker 00:
The security system can be a sub-part of the mobile device.

[00:18:24] Speaker 00:
One, Your Honors read into the record.

[00:18:27] Speaker 00:
The other is cited in our briefs, which also is at Appendix 371, and it explains that the security system may reside in a digital device.

[00:18:39] Speaker 00:
And on the same page, the specification says that the... What column and line number?

[00:18:46] Speaker 00:
in two separate excerpts, so starting at column 19, line 64.

[00:18:56] Speaker 00:
We're looking at Appendix 371, which is the 488 patent.

[00:19:03] Speaker 00:
This also is cited in our brief.

[00:19:08] Speaker 00:
And at that line, it says, mobile security system

[00:19:13] Speaker 00:
1702 may reside in a digital device.

[00:19:17] Speaker 00:
And then if we keep that passage in mind and jump over to column 20, line 49, it says that the mobile device is an example of a digital device.

[00:19:30] Speaker 00:
So if we put those two things together, the specification is saying in the second place that the security system may reside in a mobile device.

[00:19:42] Speaker 00:
And that's not surprising, because the specification said it, again, in the earlier place that your honors read.

[00:19:48] Speaker 04:
And that earlier place is the sentence, I might remember it, that says, further the mobile security system may be incorporated within the mobile device.

[00:19:57] Speaker 00:
Exactly, which is at appendix 365 at column 8, line 13.

[00:20:04] Speaker 04:
Can you address the prosecution history, not what was said in the IPR, but in the original prosecution history, which the board said, here are a few sentences by which the applicant distinguished priestly.

[00:20:28] Speaker 04:
Uncertain what her sentence is saying.

[00:20:32] Speaker 04:
Can you explain what the uncertainty there is?

[00:20:36] Speaker 00:
The uncertainty arises from a few things.

[00:20:41] Speaker 00:
One is that in distinguishing Priestley, the applicant, Cup, never used the word separate and never used the word remote.

[00:20:50] Speaker 00:
And Cup's proposed construction here of this limitation is that the security system has to be, quote, separate and remote, end quote,

[00:20:58] Speaker 00:
from the mobile device, but it never used those words in distinguishing priestly.

[00:21:02] Speaker 00:
And setting aside the specific words, CUP never expressly said that the two things, the security system and the mobile device, have to be separate and remote.

[00:21:13] Speaker 00:
It didn't say that using other words.

[00:21:15] Speaker 00:
It just didn't say that.

[00:21:17] Speaker 00:
It was distinguishing priestly based on the lack of two different processors.

[00:21:23] Speaker 00:
And we know that perhaps most clearly by looking at the last sentence of the excerpt in the party's briefs,

[00:21:29] Speaker 00:
where CUP summarizes its arguments and it says effectively, therefore, Priestley doesn't disclose two separate processors.

[00:21:37] Speaker 00:
CUP doesn't say, therefore, Priestley doesn't disclose two devices that are separate and remote from each other.

[00:21:46] Speaker 00:
In addition, the logic underlying CUP statements about Priestley can be interpreted in multiple ways.

[00:21:57] Speaker 00:
CUP seems to be

[00:21:59] Speaker 00:
inferring that there was some assumption underlying those statements.

[00:22:04] Speaker 00:
But there are other logic and other interpretations that could have served the basis of Cupp's statements.

[00:22:11] Speaker 00:
In other words, those statements are open to multiple interpretations.

[00:22:15] Speaker 00:
They are ambiguous.

[00:22:16] Speaker 00:
And as a matter of law, because they're ambiguous, they're not a clear and unequivocal statement needed for prosecution disclaimer.

[00:22:23] Speaker 00:
We set forth some of those interpretations in our brief.

[00:22:28] Speaker 00:
So to summarize, there just isn't a clear and unmistakable disavowal in the statements about Priestley.

[00:22:34] Speaker 00:
At a minimum, they're open to multiple interpretations.

[00:22:39] Speaker 05:
On the issue of whether there could be a disclaimer during IPR that is binding during the IPR, do you argue against it on the grounds that you don't have adequate notice or that the public notice function

[00:22:55] Speaker 05:
of claim scope is somehow undermined that, you know, practice were to be permitted?

[00:23:03] Speaker 05:
Because as the patentee points out, they could go through the amendment process.

[00:23:08] Speaker 05:
And so is there a materially different amount of public notice to the amendment process than what they're trying to do here?

[00:23:17] Speaker 00:
If we're talking about the public as the public excluding

[00:23:25] Speaker 00:
the party involved in the IPR itself, the other public, if you will.

[00:23:30] Speaker 00:
And we're talking about the public just viewing the IPR.

[00:23:33] Speaker 00:
No, because the public will see what happened after the IPR is done either way.

[00:23:40] Speaker 00:
Our objection to the notion that CUP statements in the IPR can be binding on the PTO is that

[00:23:50] Speaker 00:
First, it's not based in the law.

[00:23:52] Speaker 00:
Second, it would cause chaos by allowing any patent owner to apply any narrowing construction to any claim term just by invoking some magic words.

[00:24:03] Speaker 00:
And third, it would completely obviate the amendment process, which, as Your Honor has pointed out, is the proper solution to the problem of patentees wanting to narrow their claims in IPR.

[00:24:16] Speaker 04:
What's the difference in consequence between

[00:24:20] Speaker 04:
what they think should be done based on their disclaimer theory and what you agree could be done through the amendment process.

[00:24:30] Speaker 00:
One practical consequence is the board can reject their request for amendment for various reasons if it's not supported in the specification or for other procedural reasons.

[00:24:44] Speaker 00:
What CUP proposes is that it has some type of superpower where the board

[00:24:49] Speaker 00:
cannot reject its de facto amendment if you will because cup proposes that all it has to do is invoke some words and that narrowing construction is automatically binding on the board and the board cannot reject that narrow construction.

[00:25:08] Speaker 05:
I think council today at least said it's not binding on the board.

[00:25:13] Speaker 05:
That may be a new position, but any comment on that?

[00:25:18] Speaker 00:
I think that is a new position.

[00:25:19] Speaker 00:
I don't understand what the effect of the statements in the IPR are.

[00:25:22] Speaker 00:
I think in the brief anyway, their position is our statements are binding on the board.

[00:25:28] Speaker 00:
That was the entire reason it was making those statements to try to say this is what this claim means.

[00:25:35] Speaker 00:
We just claim anything else.

[00:25:37] Speaker 00:
Therefore, the prior art can't.

[00:25:39] Speaker 03:
What it would mean is any time

[00:25:40] Speaker 03:
There's a challenge in IPR of a patent.

[00:25:43] Speaker 03:
What I need to do is to disclaim something which is found in the prior art and consider it the patent.

[00:25:52] Speaker 00:
Exactly right.

[00:25:52] Speaker 00:
It would almost eliminate any value of the entire IPR process, because all a savvy patent owner would have to do is say, I disclaim the very narrow disclosure of the prior art to nothing else.

[00:26:07] Speaker 00:
Therefore, that prior art doesn't disclose the claim.

[00:26:10] Speaker 00:
And the IPR is done after one sentence.

[00:26:12] Speaker 00:
You're absolutely right, Your Honor.

[00:26:15] Speaker 03:
OK.

[00:26:15] Speaker 03:
Thank you, Mr. Virgil.

[00:26:16] Speaker 03:
Mr. Foreman?

[00:26:27] Speaker 02:
Thank you.

[00:26:28] Speaker 02:
May I please the court?

[00:26:30] Speaker 02:
If a patent owner seeks to narrow a claim scope during an IPR, it may file a motion to amend.

[00:26:35] Speaker 02:
Otherwise, it may offer a proposed claim construction and identify any evidence that supports that.

[00:26:42] Speaker 02:
Or it may choose both options by offering a proposed claim construction and filing a contingent motion to amend.

[00:26:50] Speaker 02:
But what a patent owner can't do.

[00:26:52] Speaker 04:
Why?

[00:26:54] Speaker 04:
You're just summarizing your position.

[00:26:56] Speaker 04:
Yeah.

[00:26:56] Speaker 04:
Can you give a reason why the disclaimer shouldn't serve as an alternative way to do an amendment?

[00:27:05] Speaker 02:
Yes.

[00:27:06] Speaker 02:
There are a couple of reasons.

[00:27:08] Speaker 02:
First and foremost, we want claims to be as clear as possible.

[00:27:14] Speaker 03:
In his perspective, right?

[00:27:19] Speaker 02:
Correct.

[00:27:20] Speaker 03:
That's a huge difference.

[00:27:22] Speaker 02:
Correct.

[00:27:22] Speaker 02:
And it goes into issues on intervening rights and circumventing the motion to amend process.

[00:27:32] Speaker 02:
Because there are other things besides just proposing an amendment, there are other requirements

[00:27:38] Speaker 02:
both in the regulations and in the statute for a motion to amend to be granted.

[00:27:44] Speaker 02:
So if you can just walk in to an IPR and say, I disclaim this coverage, then you don't have to file a motion to amend.

[00:27:55] Speaker 02:
You don't have to go through the process of meeting those requirements.

[00:28:00] Speaker 02:
And that takes away, in other words, some discussion of public notice, and while statements

[00:28:06] Speaker 02:
I'm during an IPR become public they're not as public and clearly recognizable as the claim language itself so if someone from the public wants to understand the scope of our prosecution history disclaimers buried in incomprehensible exchanges between the examiner that's correct

[00:28:27] Speaker 02:
Really?

[00:28:28] Speaker 02:
Well, that's correct, because that prosecution disclaimer is always a situation where you're holding a patentee to a statement they made before the office in a later proceeding.

[00:28:41] Speaker 02:
So you don't want to, I mean, in that case, while, yes, the disclaimer may be hidden in thousands of pages of prosecution history, you don't want to allow

[00:28:53] Speaker 02:
the patent owner to say one thing to the office and then say something different to a district court down the road.

[00:28:59] Speaker 02:
But if we have the choice here, where a patent owner is trying to take advantage of the process to narrow their claims, we'd rather have it done in the claim language itself rather than in a statement made to the board in briefing.

[00:29:14] Speaker 02:
I think that's the difference here.

[00:29:19] Speaker 02:
So if there are no further questions,

[00:29:23] Speaker 03:
We thank all counsel.

[00:29:24] Speaker 03:
The case is submitted.

[00:29:25] Speaker 03:
Oh, I'm sorry.

[00:29:28] Speaker 01:
Mr. Andre.

[00:29:31] Speaker 01:
Thank you, Your Honor.

[00:29:33] Speaker 01:
Like my last three minutes.

[00:29:35] Speaker 01:
So just going back to what Your Honor asked earlier, you said a patent owner could just disclaim the prior willy-nilly.

[00:29:43] Speaker 01:
That's not the case here.

[00:29:44] Speaker 01:
We had a prosecution issue disclaimer in the original prosecution.

[00:29:49] Speaker 01:
We clarified it.

[00:29:50] Speaker 01:
So there is a unique circumstance here.

[00:29:52] Speaker 01:
Second, I don't think a proper prosecution issue disclaimer allows a broad changing of claims, but it actually narrows it to some degree.

[00:30:01] Speaker 01:
But it's not actually having to rewrite the claim.

[00:30:04] Speaker 01:
So it's usually done with ambiguous terms, and you argue over it.

[00:30:07] Speaker 01:
So it's not taking something out of left field.

[00:30:09] Speaker 01:
As Janer said, there's no rational reason why the PTAB has an interest in finding patents invalid, just because there's a prosecutionary disclaimer as opposed to an amendment.

[00:30:21] Speaker 01:
It has the exact same effect.

[00:30:23] Speaker 03:
Why wouldn't it just eliminate the IPR process every time someone could come in and say, well,

[00:30:28] Speaker 03:
That thing that's in the prior art, we disclaim that.

[00:30:31] Speaker 03:
So you can't rely on that as prior art anymore to invalidate the patent.

[00:30:35] Speaker 01:
Well, I think you can't take it outside of the scope of the actual claim language.

[00:30:39] Speaker 01:
You can't go in and say, black now means white, blue now means red.

[00:30:44] Speaker 01:
But in this particular instance, there was a very specific discussion here, as I see you read the actual claim language.

[00:30:50] Speaker 03:
I mean, I thought disclaimers could be a claim language.

[00:30:54] Speaker 01:
But you can't when you're writing the patent.

[00:30:56] Speaker 01:
But during prosecution, it's just not done in that manner.

[00:31:01] Speaker 01:
So what I'm saying is that I don't think it has quite the far-reaching effects that the patent office says it would have, or Your Honor had articulated.

[00:31:09] Speaker 01:
I also want to address very quickly this idea of a subsystem.

[00:31:13] Speaker 01:
Once again, the idea of a subsystem is nowhere mentioned in the patent itself.

[00:31:18] Speaker 01:
The term doesn't apply.

[00:31:19] Speaker 01:
And it still doesn't jive with the fact that you're providing a wake signal to the mobile device.

[00:31:26] Speaker 01:
And it doesn't say mobile device processor.

[00:31:28] Speaker 01:
It doesn't say that.

[00:31:30] Speaker 01:
It says to the mobile device.

[00:31:32] Speaker 01:
When it says communication with the mobile device, it doesn't say mobile device processor.

[00:31:36] Speaker 01:
It's the mobile device.

[00:31:38] Speaker 01:
And the words do mean something.

[00:31:40] Speaker 01:
And so the entire claim read in its entirety in context.

[00:31:45] Speaker 01:
It actually provides a very clear delineation as to what was meant.

[00:31:50] Speaker 01:
It says the mobile device having a mobile device processor different than a mobile security system processor.

[00:31:56] Speaker 01:
makes it very clear.

[00:31:57] Speaker 01:
So you read the language in context, and there's no way you can read that language and get the board's construction.

[00:32:03] Speaker 01:
And the last thing, just very quickly on data ports, every data port disclosed in the prosecution history is an external data port.

[00:32:12] Speaker 01:
There's no internal data ports disclosed anywhere in the specification.

[00:32:16] Speaker 01:
That's all I have for your questions.

[00:32:18] Speaker 01:
I'll sacrifice the last 20 seconds.

[00:32:21] Speaker 03:
OK, thank you.

[00:32:21] Speaker 01:
Thank you.