[00:00:00] Speaker 08:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:04] Speaker 08:
God save the United States and its honorable court.

[00:00:08] Speaker 07:
Thank you.

[00:00:08] Speaker 07:
And let me call the case.

[00:00:10] Speaker 07:
It's number, the first arguing case this morning is number 20, 2207, custom play LLC against amazon.com incorporated.

[00:00:21] Speaker 07:
All right.

[00:00:22] Speaker 07:
Mr. Kerry, please proceed.

[00:00:24] Speaker 03:
Thank you very much, Your Honor, and good morning to you and to the court and may it please the court.

[00:00:29] Speaker 03:
I'm John Kerry, and I represent the Appellant Custom Play LLC, which is a Florida-based technology company that has developed software programs and other applications designed to allow viewers of videos to customize their video watching experience and interact in real time with the video as they view it.

[00:00:54] Speaker 03:
Custom Play has a variety of different applications that do these things, and it has obtained a number of patents for its technology, including the patent that is at issue in this case.

[00:01:07] Speaker 06:
Council, you raised some constitutional issues in your brief.

[00:01:13] Speaker 06:
Are you still going to argue those this morning?

[00:01:16] Speaker 03:
Some of them, Your Honor, yes, we are maintaining.

[00:01:20] Speaker 03:
One of them we indicated in a prior filing that we were not maintaining, but there are others that are still at issue and are part of the appeal.

[00:01:30] Speaker 06:
Okay.

[00:01:32] Speaker 06:
Just to be sure for the record, which is the argument you're no longer pursuing?

[00:01:36] Speaker 03:
After the Supreme Court issued its Arthrex decision last year,

[00:01:45] Speaker 03:
in response to an order from the court to advise how the parties in the case thought Arthrex impacted this appeal, we indicated, we made a filing and indicated that in view of the Supreme Court's Arthrex decision, we were withdrawing our Appointments Clause challenge that we had presented.

[00:02:03] Speaker 07:
Okay.

[00:02:03] Speaker 07:
Let's start with a constitutional issue so that, because we realize this issue is common to the three cases being argued, that we'll adjust the timing so that we don't run out of time on the merits.

[00:02:16] Speaker 03:
Okay, Your Honor.

[00:02:17] Speaker 03:
That sounds great.

[00:02:20] Speaker 05:
The constitutional issues that... Aren't the constitutional issues that you're raising now foreclosed by our decisions in ethics and mobility work?

[00:02:32] Speaker 05:
Is the panel bound by those?

[00:02:36] Speaker 03:
We're asking the panel to reconsider those decisions.

[00:02:38] Speaker 03:
Those authorities do Google the other way.

[00:02:45] Speaker 03:
From the position that we're advancing, we're asking.

[00:02:47] Speaker 06:
What do you mean by reconsider?

[00:02:49] Speaker 06:
Are you shaking that we will ignore those decisions?

[00:02:53] Speaker 03:
Yes, we're contending that the constitutional

[00:02:57] Speaker 03:
Law issues that were decided in those decisions were were incorrectly decided and we're asking this.

[00:03:05] Speaker 03:
Panel to revisit those in one of the reasons that we're asking the court to revisit those is there have been.

[00:03:13] Speaker 06:
at least with respect to Ethicon, there was an intervening Supreme Court decision in the SAS case, which... I think we can consider your arguments if you're seeking to differentiate those cases from yours or trying to distinguish them.

[00:03:32] Speaker 01:
But we can't overrule this court's precedent.

[00:03:39] Speaker 03:
Well, your honor, you're you're you can consider the precedent in light of in light of the Supreme Court's guidance in essays, which post dated ethic on and which was not in the argument that we're making about essays was not considered as far as we can tell in the mobility works matter.

[00:03:55] Speaker 03:
You know, in essays, the Supreme Court,

[00:03:59] Speaker 03:
interpreted the same statute here, the America Invents Act, and forcefully concluded that the actual text of the statute is controls and must be followed as written.

[00:04:16] Speaker 03:
And so in that case, as I'm sure the court's aware, where the statute used the phrase, you know, any claim challenged

[00:04:23] Speaker 03:
Supreme Court concluded that any claim challenge meant any claim challenged and not, as the agency had been interpreting it, you know, at least one claim challenged.

[00:04:32] Speaker 05:
And here... What does that have to do?

[00:04:36] Speaker 05:
This relates to the issue resolved by Ethicon, right?

[00:04:39] Speaker 05:
And you're saying how Ethicon is no longer a good law after SAS.

[00:04:46] Speaker 05:
Why is that?

[00:04:48] Speaker 03:
Well, as I'm attempting to explain, Your Honor, SAS made clear that the statute is supposed to be, that the clear terms of the statute are supposed to be given fully in effect and are not to be interpreted in any other way.

[00:05:05] Speaker 03:
And the statute says that the director is the only, the director must be the person to decide whether an IPR is instituted.

[00:05:16] Speaker 03:
And the statute sets up a very specific scheme for director institution and then review and final decision by the board.

[00:05:24] Speaker 03:
And the agency has conflated those roles improperly in violation of the text of the statute, as well as impending in the constitutional rights.

[00:05:35] Speaker 05:
So there's two problems to the... Well, what does SAS have to do with the constitutional issue?

[00:05:41] Speaker 03:
SAS has to do with the statutory interpretation issue, Your Honor.

[00:05:44] Speaker 03:
But not the constitutional issue.

[00:05:46] Speaker 03:
not directly the constitutional issue, right?

[00:05:48] Speaker 05:
Okay.

[00:05:48] Speaker 05:
So, Ethicon is binding on us as to the constitutional issue.

[00:05:54] Speaker 03:
Well, Ethicon, I don't... Ethicon dealt with the prejudgment bias issue, and it did not... I don't recall that it dealt with the financial incentive issue that we're raising.

[00:06:08] Speaker 05:
That issue... That's mobility.

[00:06:10] Speaker 05:
That was... I think what we're trying to understand is,

[00:06:15] Speaker 05:
What arguments do you have that aren't foreclosed by epicon and mobility work?

[00:06:21] Speaker 05:
So far, I'm only hearing that the so-called statutory issue in with respect to the same panel doing institution and the merits, the statutory issue has been changed by SAS.

[00:06:39] Speaker 05:
I don't hear

[00:06:40] Speaker 05:
that the constitutional rulings of Ethicon and mobility works are affected by anything of the authority, correct?

[00:06:50] Speaker 03:
Not intervening authority, but we have we have different arguments regarding those that were not presented in Ethicon.

[00:06:57] Speaker 03:
And we think the court should allow us to make to present our argument on that.

[00:07:02] Speaker 03:
And if it should find our arguments persuasive, then it could reach a different resolution.

[00:07:07] Speaker 03:
For example, if I may,

[00:07:08] Speaker 03:
One of the rationales articulated in Ethicon for the conclusion that there was no due process violation with respect to a prejudgment bias from having the board decide institution and also the merits of the final written decision.

[00:07:25] Speaker 03:
There was an analogy that Your Honor made in authoring Ethicon to preliminary injunctions in district court.

[00:07:32] Speaker 03:
And that was one of the reasons that the court

[00:07:37] Speaker 03:
you know, didn't really give, didn't find that the prejudgment bias issue presented a constitutional problem.

[00:07:44] Speaker 03:
But, you know, we look at that, we have some additional argument on that particular comparison.

[00:07:54] Speaker 03:
You know, an IPR is very different than a district court infringement suit.

[00:07:59] Speaker 03:
A judge decides a preliminary injunction, but usually a jury decides the trial.

[00:08:04] Speaker 03:
And so that analogy really doesn't hold water.

[00:08:08] Speaker 03:
Where here the board decides, the same board consisting of the exact same board members decides the institution and the final written decision.

[00:08:15] Speaker 03:
So the prejudgment bias problem is much more acute here than it is in the district court setting.

[00:08:22] Speaker 03:
And so that analogy to the district court setting that was part of the reasons that this argument was rejected in Ethicon

[00:08:29] Speaker 03:
ought to be reconsidered, that analogy.

[00:08:32] Speaker 03:
And another big difference between, another reason that analogy doesn't work is the nature of the two proceedings are so vastly different.

[00:08:41] Speaker 03:
I mean, when a, in an IPDAR, for example.

[00:08:43] Speaker 06:
You seem to be arguing that Ethicon is bad law.

[00:08:47] Speaker 06:
Is that correct?

[00:08:51] Speaker 03:
The argument that I'm making right now, I think it was wrongly decided, yes, I'm making arguments that weren't even made in Ethicon.

[00:08:59] Speaker 03:
And so this court is free to look at precedents in the new light based upon new arguments.

[00:09:07] Speaker 03:
Otherwise, you know, we would never have, the law would never develop.

[00:09:11] Speaker 03:
And so there's nothing wrong with that.

[00:09:14] Speaker 05:
The analogy that, again, I want to make this point about- You're just arguing the analogy that was used in Ethicon isn't an apt analogy.

[00:09:24] Speaker 05:
It doesn't seem to me to be a new argument.

[00:09:29] Speaker 03:
Well, I mean, that analogy was one of the main reasons that the pre-judgment bias issue was not found in Ethicon to present a constitutional infirmity.

[00:09:38] Speaker 03:
And if the analogy is in-app, then I think that Ethicon's reasoning should be reconsidered.

[00:09:53] Speaker 06:
How do you distinguish your case, this case, from Ethicon?

[00:09:58] Speaker 06:
You know, we're going to follow this court's precedent.

[00:10:02] Speaker 06:
And this panel cannot overrule prior precedent.

[00:10:06] Speaker 06:
So, it would be well to hear the argument from you as to why the Ethicon case does not apply.

[00:10:12] Speaker 06:
What's different about your situation than from Ethicon?

[00:10:17] Speaker 03:
Right.

[00:10:18] Speaker 03:
And, Your Honor, I was trying to make this point about this district court analogy that was

[00:10:23] Speaker 03:
relied upon an epicon for its holding on constitutional.

[00:10:27] Speaker 06:
So that argument was already heard in epicon.

[00:10:29] Speaker 06:
You're repeating an argument that was made in epicon.

[00:10:32] Speaker 03:
But I have a twist on that argument, a new way to look at that argument.

[00:10:37] Speaker 03:
And I don't believe that my point was considered in that case.

[00:10:43] Speaker 03:
And so I made one point about the decision makers

[00:10:48] Speaker 03:
being very different.

[00:10:49] Speaker 03:
In a preliminary in court, you've got a judge who decides a preliminary injunction, but normally a jury that decides the trial.

[00:10:56] Speaker 03:
And so you have different decision makers, unlike here in the IPRs.

[00:10:59] Speaker 05:
The other... Juries don't decide injunction cases.

[00:11:05] Speaker 03:
They decide the facts that... They decide the facts in injunction cases.

[00:11:09] Speaker 05:
No, they do not.

[00:11:11] Speaker 05:
The court decides the facts in injunction cases.

[00:11:15] Speaker 03:
The court...

[00:11:17] Speaker 03:
The court can present the issues of fact and then, of course, fashion injunctive relief as he or she deems appropriate, correct?

[00:11:25] Speaker 03:
That's true.

[00:11:27] Speaker 07:
Well, that's all right to move on.

[00:11:30] Speaker 07:
I think as counsel knows and to remind my colleagues, I descended in Ethicon.

[00:11:37] Speaker 07:
It seems clear to me that the issues need a fresh look.

[00:11:44] Speaker 07:
whether it can be corrected by a panel or by this court in bank or by an act of Congress.

[00:11:52] Speaker 07:
And I must say, I had pretty much come to conclude that this is going to require a legislative adjustment or at least perhaps a fresh look by a new director.

[00:12:05] Speaker 07:
But to me, these are very important live issues.

[00:12:12] Speaker 07:
But at the same time, counsel, as far as this panel is concerned, of course it is true we are bound by our precedent unless we find a way of bringing that precedent before the full court for review, which is a project.

[00:12:31] Speaker 07:
And so, let's move on to the merits to the substance of our arguments.

[00:12:38] Speaker 07:
And I know that this is the issue on which the office requested to intervene.

[00:12:43] Speaker 07:
But at the same time, let's set the intervener's response into where it is on the agenda.

[00:12:51] Speaker 07:
And let's then start afresh with the merits of this appeal.

[00:13:00] Speaker 03:
In this first case, this case involves the 346 patent.

[00:13:06] Speaker 03:
And as far as the grounds of unpatentability were just obviousness grounds.

[00:13:19] Speaker 03:
It's important to keep in mind that there was no anticipation found in this matter.

[00:13:26] Speaker 03:
or in the other matters, by the way.

[00:13:28] Speaker 03:
But the rejections that the board issued are premised on one of two pieces of art in this 346 patent IPR.

[00:13:43] Speaker 03:
And we're on appeal.

[00:13:45] Speaker 03:
We contested many of these things in the IPR itself.

[00:13:50] Speaker 03:
But due to space considerations, et cetera,

[00:13:54] Speaker 03:
narrowed the issues that we presented on the appeal to a couple of limitations that we contend were not disclosed in the prior art references that the board relied on.

[00:14:07] Speaker 03:
And of course, if for obviousness purposes, the references have to disclose each element, each limitation of the claimed invention in order for there to be a prima facie case of obviousness.

[00:14:22] Speaker 03:
And

[00:14:24] Speaker 03:
for this case.

[00:14:26] Speaker 06:
Are you arguing that a single reference misdisposes all the limitations in order to find obviousness?

[00:14:35] Speaker 03:
No, Your Honor, that's not what I meant.

[00:14:37] Speaker 03:
That would be anticipation.

[00:14:40] Speaker 03:
What I'm saying is that the combination of references for obviousness, the combination of references have to include all the limitations.

[00:14:51] Speaker 05:
Well, you've got a problem here.

[00:14:52] Speaker 05:
As I understand it, you're really only addressing claim 13 here in this first IPR.

[00:14:58] Speaker 05:
Is that correct?

[00:15:00] Speaker 03:
13 and 20, Your Honor.

[00:15:04] Speaker 01:
So, you've got multiple rejections here that you have to overcome, right?

[00:15:14] Speaker 03:
Well, really, we have two rejections that we have to overcome.

[00:15:18] Speaker 03:
because the decisions on claims 13 and 20 rely on Thomas for one of the limitations and Clark.

[00:15:33] Speaker 03:
So if we are right that neither Thomas nor Clark disclose these limitations,

[00:15:40] Speaker 03:
then the prior art that the board relied on did not show all the limitations in the claim.

[00:15:46] Speaker 03:
And so its decision should be reversed.

[00:15:50] Speaker 05:
And so the first- I thought only ground four relied on Clark.

[00:15:56] Speaker 03:
That's right.

[00:15:58] Speaker 03:
Only ground four relied on Clark.

[00:16:00] Speaker 03:
The other grounds all relied on Thomas for the limitation concerning the continuously identifying a location in the video.

[00:16:08] Speaker 03:
So that limitation was, the board relied on Clark, I'm sorry, not Clark, the board relied on Thomas for that limitation in all the other grounds except for the Clark ground.

[00:16:25] Speaker 05:
I thought in ground two they relied on Mackinac.

[00:16:32] Speaker 01:
Not for the continuously identified,

[00:16:40] Speaker 03:
For the identifying the current location in the video, they relied on Thomas and McIntyre.

[00:16:47] Speaker 03:
They did not rely on McIntyre for the related limitation of continuously identifying the name of a performer associated with the location.

[00:16:56] Speaker 03:
That was just Thomas.

[00:17:02] Speaker 06:
Doesn't Thomas describe system to synchronous system and asynchronous metadata, and that the asynchronous metadata system discloses the limitation that you're talking about, continuously identifying the location?

[00:17:19] Speaker 03:
So, Your Honor, Thomas discloses a synchronous metadata system where all the data is coded upfront about where the performers are

[00:17:31] Speaker 03:
where they appear in the movie.

[00:17:34] Speaker 03:
And in that, that metadata file is sent with the video itself.

[00:17:43] Speaker 03:
And so, because it's a synchronous, what synchronous means there is that the data has already been synchronized.

[00:17:52] Speaker 03:
In other words, where the actor appears in the movie,

[00:17:56] Speaker 03:
is already specified in the synchronous metadata, and it's already been synchronized to every location in the movie where the actor appears.

[00:18:05] Speaker 03:
So because Thomas supplies this synchronized metadata file where all of these locations in the video have already been predetermined of where the actor appears, it's a different architecture, if you will, than the 346 patented system.

[00:18:25] Speaker 03:
which doesn't do it that way.

[00:18:27] Speaker 03:
It does it a different way.

[00:18:29] Speaker 03:
Both patents have a common goal of figuring out who's that person I just saw in the movie.

[00:18:37] Speaker 03:
They both seek to do that, but they do it in very different ways.

[00:18:43] Speaker 03:
And that's fine.

[00:18:44] Speaker 03:
You can patent different ways of doing the same thing.

[00:18:46] Speaker 03:
That happens all the time, right?

[00:18:48] Speaker 03:
So the architecture of the 346 patent is a real-time video system.

[00:18:53] Speaker 03:
And the 346 patent requires a continuous monitoring of the video as it's being played to the viewer and identifying as it's being played the location in the video and whether a performer appears in the video at that location.

[00:19:10] Speaker 03:
The Thomas system doesn't need to do that and therefore does not do that because it has all of the data encoded up front in the synchronous metadata file.

[00:19:22] Speaker 03:
It doesn't perform these steps of continuously identifying the location in the video or continuously identifying the performer that's associated with the identified location.

[00:19:34] Speaker 03:
It's just a conceptually different way of going about it.

[00:19:37] Speaker 03:
And that was the board's mistake in not recognizing that distinction.

[00:19:52] Speaker 03:
That's the principle issue there, Your Honor.

[00:19:59] Speaker 03:
And we had, you know, our expert made this point.

[00:20:05] Speaker 03:
There was no specific rebuttal to this point.

[00:20:07] Speaker 03:
The board appears to have just not, appears to have ignored this argument and did not refute it.

[00:20:19] Speaker 03:
The issue of the combination

[00:20:21] Speaker 03:
of Thomas and McIntyre.

[00:20:23] Speaker 06:
Again, the board made a finding, I think one of the central findings that it made in ONCE.

[00:20:33] Speaker 06:
It said that in asynchronous system, the metadata is sent separately from the video and is linked to the relevant location.

[00:20:43] Speaker 06:
It seems to me that that disclosed the limitation that you're talking about.

[00:20:47] Speaker 06:
Was the board wrong in that finding?

[00:20:50] Speaker 03:
I'm sorry, Your Honor, what was the question?

[00:20:52] Speaker 06:
Was the board wrong in that finding?

[00:20:57] Speaker 03:
Are you referring to a finding relating to the Thomas reference?

[00:21:01] Speaker 06:
Yes.

[00:21:03] Speaker 03:
Yes, so Thomas did not disclose an asynchronous system.

[00:21:06] Speaker 03:
It was, it disclosed the synchronous metadata file.

[00:21:11] Speaker 05:
But they found that that satisfies the time limitation.

[00:21:18] Speaker 03:
They found that, yes, but what we're saying is a synchronous system has no need to continuously identify a location because all the data is already synchronized.

[00:21:29] Speaker 03:
And therefore, you don't need to monitor where you are as you play the video.

[00:21:33] Speaker 03:
Data is already pre-synchronized.

[00:21:34] Speaker 03:
And therefore, it doesn't perform the step of continuously identifying during the playing of the video where you are in the video and identifying a performer that matches that location.

[00:21:45] Speaker 03:
That whole process in Thomas is done

[00:21:48] Speaker 03:
beforehand, before the video is ever played, before the user plays the video back, and the video has an accompanying metadata file which identifies where the performers are located in the video.

[00:22:04] Speaker 03:
It's not done in real time during the playing of the video, is the point.

[00:22:10] Speaker 03:
And that's the distinction.

[00:22:11] Speaker 03:
The information is available in real time while you're playing the video, right?

[00:22:17] Speaker 03:
Well, the system accesses the information, but the kind limitation is for identifying a location in a video, and the related limitation is continuously identifying a location in the video and continuously identifying a performer associated with that location.

[00:22:39] Speaker 03:
The continuous identification process is not performed using a synchronized

[00:22:47] Speaker 03:
metadata file because the identification process is already run.

[00:22:53] Speaker 03:
It's already existing in the data.

[00:22:56] Speaker 05:
Thomas performs that function, right?

[00:22:59] Speaker 03:
No, Your Honor, respectfully, it does not.

[00:23:01] Speaker 03:
Thomas doesn't perform the function because it already has in the synchronized data file.

[00:23:08] Speaker 03:
It's already matched up everywhere.

[00:23:12] Speaker 03:
the performers appear in the video, and it doesn't identify the video, the location in the video as the video is playing, to then try to identify where the performer appears, and then tell the viewer, you know, give them the name.

[00:23:27] Speaker 06:
Does Thomas disclose asynchronous data?

[00:23:31] Speaker 03:
It only discloses the synchronous metadata.

[00:23:36] Speaker 06:
And the board found that it also discloses the use of asynchronous data, right?

[00:23:41] Speaker 06:
That's what the board found.

[00:23:42] Speaker 03:
And there's no support in Thomas for that.

[00:23:46] Speaker 03:
There's only the synchronous metadata file.

[00:23:54] Speaker 01:
So it's a substantial evidence question.

[00:23:58] Speaker 01:
It is, Your Honor.

[00:24:00] Speaker 01:
But, you know, the evidence is lacking here.

[00:24:09] Speaker 07:
Okay.

[00:24:10] Speaker 07:
If there are no more questions at the moment, let's hear from the other side, and we'll save the full rebuttal time.

[00:24:15] Speaker 04:
Thank you.

[00:24:18] Speaker 07:
Okay.

[00:24:18] Speaker 07:
Thank you.

[00:24:18] Speaker 07:
Mr. Heidman.

[00:24:20] Speaker 04:
Thank you, Your Honor.

[00:24:21] Speaker 04:
May it please the Court.

[00:24:23] Speaker 04:
I'd like to start with the constitutional issue.

[00:24:25] Speaker 04:
I think the panel has it correct.

[00:24:28] Speaker 04:
The arguments here are foreclosed by this Court's prior decision in Ethicon and Mobility Works

[00:24:36] Speaker 04:
And this panel is bound to follow those precedents.

[00:24:39] Speaker 04:
It sounds like Customs Plays Council is simply re-arguing the merits of those cases and apparently disagrees with one of the analogies used in Ethicon.

[00:24:49] Speaker 04:
But there's nothing new that has happened since those decisions.

[00:24:53] Speaker 04:
certainly haven't been overruled by any intervening Supreme Court decision.

[00:24:57] Speaker 04:
And so Amazon would submit that this panel should follow those decisions and reject custom play, statutory and due process violation arguments.

[00:25:10] Speaker 04:
Turning to the merits of, unless Your Honors would like to hear from the government on the constitutional issues, I can proceed straight to the merits.

[00:25:19] Speaker 07:
We'll hear from the government after we finish the merits.

[00:25:22] Speaker 04:
Okay, thank you, Your Honor.

[00:25:27] Speaker 04:
I want to correct one statement that Custom Place Council made, and that is that the Board did not rely on McIntyre in Ground 2 for its disclosure of continuously identifying a current location in a video.

[00:25:42] Speaker 04:
In the final written decision on page 32, that's in the appendix of page 32, the Board clearly finds that

[00:25:52] Speaker 04:
McIntyre discloses or renders this limitation obvious, even without Thomas.

[00:25:58] Speaker 06:
The board stated... Thomas made that same disclosure?

[00:26:02] Speaker 04:
Thomas also discloses that limitation, but for ground two, the board relied on McIntyre's disclosure and found that a skilled artisan would have found it obvious to identify a current location continuously based on McIntyre's teachings.

[00:26:17] Speaker 04:
And so when counsel

[00:26:18] Speaker 04:
For Custom Play argues that they only found that limitation disclosed in Clark and Thomas.

[00:26:24] Speaker 04:
That's incorrect.

[00:26:25] Speaker 04:
In Ground 2, the Board clearly relied on McIntyre's disclosure of that limitation, and that finding was supported by substantial evidence.

[00:26:40] Speaker 04:
With respect to Thomas, the Board found that Thomas identifies the current location in NVIDEO, and that's in the appendix at 9 to 10.

[00:26:48] Speaker 04:
And that finding is supported by substantial evidence, including numerous citations to different portions and disclosures in Thomas and to Amazon's expert testimony.

[00:27:00] Speaker 04:
And custom play never addresses the evidence that the board actually relied on.

[00:27:04] Speaker 04:
Instead, they're advancing an argument that Thomas is limited to synchronous metadata when it's clearly not.

[00:27:11] Speaker 04:
They rely on a single paragraph in Thomas, paragraph 44, and argue that Thomas only discloses the use of synchronous metadata.

[00:27:19] Speaker 04:
The board correctly rejected that argument in the appendix at pages 10 to 11.

[00:27:24] Speaker 04:
And as the board noted, even the paragraph that Custom Play relies on, that is paragraph 44, states that the use of synchronous metadata is only an example.

[00:27:34] Speaker 04:
The board then went on and referred to paragraph 123 of Thomas.

[00:27:39] Speaker 04:
Paragraph 123 of Thomas discloses an alternate approach.

[00:27:44] Speaker 04:
And so paragraph 122 of Thomas discloses a synchronous metadata approach.

[00:27:49] Speaker 04:
Paragraph 123 of Thomas discloses an alternate approach that does not use synchronous metadata and instead teaches that the content is sent separately from or prior to the media or the video that it's going to be used with.

[00:28:07] Speaker 04:
That paragraph of Thomas is describing figure 22 of Thomas, which is in the appendix at page 1209.

[00:28:14] Speaker 04:
And figure 22 of Thomas clearly discloses

[00:28:18] Speaker 04:
synchronous metadata on the one hand if the metadata is sent with a video, and then a different approach where that metadata can be sent prior to and separately from the video using any number of other approaches.

[00:28:33] Speaker 04:
In rejecting Customs's argument that Thomas is limited to synchronous metadata, the board cited Amazon's expert and found his testimony credible and persuasive.

[00:28:44] Speaker 04:
And essentially what custom is doing is ignoring all of the rest of Thomas and claiming that paragraph 44 shows that it only discloses synchronous metadata when that paragraph does not even support that proposition.

[00:28:58] Speaker 04:
And so custom play is here arguing that the board's decision lacks substantial evidence when it doesn't even address

[00:29:05] Speaker 04:
The evidence that the board relied on there are many other disclosures in Thomas besides paragraph 44, and those disclosures clearly show the use of non synchronous or asynchronous metadata.

[00:29:35] Speaker 04:
Just going back to McIntyre for a second on the merits of it, McIntyre disclosed identifying the current location in the video using what they call the segment identifier.

[00:29:46] Speaker 04:
And again, the board reached that conclusion in the appendix in 32 that McIntyre discloses that limitation.

[00:29:53] Speaker 04:
In doing so, the board cited both McIntyre's disclosure and Custom Play's own expert.

[00:29:59] Speaker 04:
And that's in the appendix at page 26.

[00:30:01] Speaker 04:
And again, Custom Play never addresses that evidence

[00:30:05] Speaker 04:
and never address the fact that McIntyre clearly discloses identifying the location using a segment identifier, and that segment identifier can be, for example, a frame number.

[00:30:16] Speaker 04:
So unless the panel has specific questions about McIntyre or Thomas, I will cede the rest of my time to the court or to the government.

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

[00:30:27] Speaker 00:
Any more questions for counsel?

[00:30:32] Speaker 07:
Okay.

[00:30:32] Speaker 07:
Thank you.

[00:30:33] Speaker 07:
All right.

[00:30:34] Speaker 07:
It's time for the intervener to have the last word on this side.

[00:30:39] Speaker 07:
Anything that you wish to ask from the viewpoint of the office.

[00:30:44] Speaker 08:
Thank you, Your Honor.

[00:30:45] Speaker 08:
May it please the court, Mackay Neumeister, for the government.

[00:30:48] Speaker 08:
All the issues in this appeal on which the government intervened have either been withdrawn or resolved by squarely on-point circuit precedent.

[00:30:55] Speaker 08:
Custom Play's statutory challenge to the delegation of institution decisions to the board was resolved in Ethicon.

[00:31:02] Speaker 08:
Its due process challenge to the same panel handling both institution and the merits phase was also resolved in Ethicon as confirmed recently in mobility work.

[00:31:11] Speaker 08:
And the other due process challenge to the funding and compensation structure of the board was also resolved in mobility work.

[00:31:18] Speaker 08:
Finally, Custom Play withdrew its appointments clause challenge in the wake of the Supreme Court's decision in our threat.

[00:31:23] Speaker 08:
Accordingly, binding precedent controls all the live issues that the government addresses in this case, but I'm happy to answer any questions the court may have.

[00:31:32] Speaker 07:
Any questions for counsel?

[00:31:35] Speaker 07:
Okay, thank you.

[00:31:37] Speaker 07:
We understand the issues.

[00:31:38] Speaker 07:
Let's turn to rebuttal.

[00:31:42] Speaker 07:
In that case, Mr. Carey, you have your rebuttal time.

[00:31:45] Speaker 03:
Thank you, Your Honor.

[00:31:46] Speaker 03:
So briefly, regarding

[00:31:51] Speaker 03:
Thomas and McIntyre on the issue of the continuous identification issue.

[00:31:57] Speaker 05:
The argument... But the opposing counsel is correct that there's an independent ground resting on McIntyre, which doesn't rest on Thomas, right?

[00:32:06] Speaker 03:
McIntyre was relied on for the continuously identifying the location issue.

[00:32:12] Speaker 03:
That is an alternative ground for that limitation, but not for the continuous identification of the performer name.

[00:32:19] Speaker 03:
associated with the location.

[00:32:20] Speaker 03:
That was just Thomas.

[00:32:22] Speaker 03:
That's what I believe I said in my opening remarks.

[00:32:27] Speaker 03:
Counsel said that I wasn't right about that, but there's a distinction between how McIntyre and Thomas were used.

[00:32:34] Speaker 03:
Thomas and McIntyre were used for the continuous identification of the location.

[00:32:40] Speaker 03:
Thomas alone was used for the continuous identification of the performer associated with the location.

[00:32:46] Speaker 03:
So, let me get to the substance of... I thought Ground 2 didn't rely on Tom.

[00:32:51] Speaker 05:
Am I mistaken?

[00:32:52] Speaker 05:
Could you show me where it does rely on Tom?

[00:33:04] Speaker 01:
So, Your Honor, if you look at... Let's see here.

[00:33:18] Speaker 03:
For claims 13 and 20, well, if you look at the holding page of the final written decision, which is Appendix 57.

[00:33:29] Speaker 01:
Okay.

[00:33:40] Speaker 03:
So for claims 13 and 20, and again, on appeal, we limited the appeal to claims 13 and 20, right?

[00:33:48] Speaker 03:
So claims 13 and 20 rely on both McIntyre and Thomas.

[00:33:56] Speaker 03:
And the other grounds that addressed claims 13 and 20 relied on Thomas or McIntyre.

[00:34:08] Speaker 01:
So there was no ground for the finding as to claims 13 and 20 based solely on McIntyre.

[00:34:25] Speaker 06:
But the finding of a combination of Thomas and McIntyre, that's an alternative finding as to the accountability of claims 13 and 20, right?

[00:34:36] Speaker 03:
It's alternative, Your Honor, with respect to the limitation of the continuous identification of the location of the video.

[00:34:43] Speaker 06:
Right.

[00:34:44] Speaker 06:
That's your argument.

[00:34:45] Speaker 06:
That's the limitation you're arguing for 13 and 20.

[00:34:48] Speaker 03:
And that's one of the limitations we're arguing.

[00:34:50] Speaker 03:
We also argue the limitation, and this is, I can give you the page in our brief, Your Honor, but we also argue the limitation, continuously identifying the name of a performer associated with the identified location.

[00:35:06] Speaker 06:
If you'd like that, I can... No, that's okay.

[00:35:09] Speaker 06:
Okay.

[00:35:10] Speaker 03:
So getting to the substance of the synchronous metadata issue, you know, Council for Amazon says,

[00:35:16] Speaker 03:
Well, the board also found that Thomas has asynchronous data and not is not just synchronous data.

[00:35:23] Speaker 03:
By the way, there's a concession there that we're right about the synchronous metadata, not satisfying the claim language.

[00:35:30] Speaker 03:
Okay.

[00:35:32] Speaker 03:
It's only because they're saying that Thomas has this other disclosure.

[00:35:38] Speaker 03:
about asynchronous metadata that allows Thomas to be used here for either one of these limitations.

[00:35:45] Speaker 05:
And the problem is- What's wrong with the board's finding that Thomas discloses the use of asynchronous data?

[00:35:52] Speaker 03:
Right.

[00:35:53] Speaker 03:
And we address that, Your Honor.

[00:35:57] Speaker 03:
We addressed that in our brief and our reply brief.

[00:35:59] Speaker 03:
The quotation that they're pointing to there is a statement in Thomas where the metadata

[00:36:08] Speaker 03:
It says it could be sent.

[00:36:10] Speaker 05:
What page of the appendix are you talking about?

[00:36:27] Speaker 01:
I'm sorry, Your Honor.

[00:36:28] Speaker 01:
I'm going to have to find that.

[00:36:38] Speaker 01:
Okay, that's Appendix 1212.

[00:36:50] Speaker 01:
Okay.

[00:36:52] Speaker 03:
So what's being argued here is that there's a passage in Thomas where the metadata can be sent prior to or separate from the video itself.

[00:37:04] Speaker 03:
And they're concluding that that

[00:37:08] Speaker 03:
that changes Thomas from being, the data from being synchronous and makes it asynchronous, okay?

[00:37:19] Speaker 03:
But that's just, that's a wrong conclusion because the issue isn't when the data is sent, okay?

[00:37:28] Speaker 03:
It doesn't matter that it was sent prior to or separate from sending with the video.

[00:37:33] Speaker 03:
The point is that the data has been synchronized, the actor locations

[00:37:38] Speaker 03:
have been synchronized in the data to locations in the video.

[00:37:43] Speaker 03:
So whether or not the metadata is sent before the video was sent with the video or separate from the video doesn't make it asynchronous.

[00:37:55] Speaker 03:
It's still synchronous data because the data is already synchronized, that the actor data is synchronized to the location data.

[00:38:03] Speaker 03:
And the argument that Thomas has this alternative asynchronous disclosure

[00:38:08] Speaker 03:
is based upon this reference to, well, the data sent prior to or separate from, therefore it's asynchronous.

[00:38:13] Speaker 03:
That's factually wrong because it's not when the metadata is sent that makes it synchronous or asynchronous.

[00:38:22] Speaker 03:
The fact that it's synchronized, the data is synchronized with the movie you're watching, that's what makes it synchronous.

[00:38:30] Speaker 03:
And so that argument is not supported by evidence because

[00:38:36] Speaker 03:
It simply mischaracterizes what synchronized data is.

[00:38:42] Speaker 01:
All right.

[00:38:47] Speaker 03:
The other argument was about McIntyre being an alternative ground here.

[00:38:52] Speaker 03:
And again, if I wasn't clear in my opening comments, I'll try to clarify it now.

[00:38:59] Speaker 03:
So there's two limitations here.

[00:39:02] Speaker 03:
There's continuously identifying the location.

[00:39:05] Speaker 03:
and there's continuously identifying the name of a performer associated with the location.

[00:39:11] Speaker 03:
Thomas was used for both by the board.

[00:39:16] Speaker 03:
McIntyre was used for the first one, but not the second one.

[00:39:19] Speaker 03:
And by the way, the reason the board got it wrong about McIntyre, McIntyre, the reference there to McIntyre, you heard the discussion of the segment identifiers.

[00:39:30] Speaker 03:
So the finding that McIntyre

[00:39:34] Speaker 03:
disclosed continuously identifying a location in the video was based upon this segment identifier discussion of McIntyre.

[00:39:43] Speaker 03:
And as we argue in our briefs, that's also an asynchronous method of identifying the location.

[00:39:52] Speaker 03:
I'm sorry, a synchronous method of identifying the location, not an asynchronous method of identifying the location.

[00:39:57] Speaker 03:
That's also a synchronous method.

[00:39:59] Speaker 03:
And therefore, McIntyre is no good as an alternative reference.

[00:40:03] Speaker 03:
because it suffers from the same problem that Thomas does, i.e., it's a synchronous system, and it doesn't need to and does not perform the continuous identification step.

[00:40:15] Speaker 03:
But MacIntyre was not used for that second limitation.

[00:40:21] Speaker 03:
It was just used for that first limitation.

[00:40:24] Speaker 03:
On the second limitation of identifying the performer, that's just Thomas.

[00:40:31] Speaker 00:
Okay.

[00:40:31] Speaker 00:
Any more questions for Mr. Carey at this point?

[00:40:38] Speaker 00:
Okay.

[00:40:39] Speaker 00:
I think that we have the issues on this case.

[00:40:41] Speaker 02:
Thank you, Your Honor.

[00:40:43] Speaker 00:
Okay.

[00:40:43] Speaker 00:
So this case is taken under submission.