[00:00:00] Speaker 01:
All right, the next argued case is number 2208, custom play LLC against amazon.com incorporated.

[00:00:10] Speaker 01:
Mr. Carey, proceed when you're ready.

[00:00:14] Speaker 07:
Thank you, Your Honor, and may it please the court.

[00:00:17] Speaker 07:
We've raised the same constitutional and statutory

[00:00:23] Speaker 01:
arguments in this case as we... Yes, and let's skip the constitutional aspect because it is the same.

[00:00:29] Speaker 01:
And let's go directly to the merits and help us to point out the differences among these cases as you proceed.

[00:00:39] Speaker 07:
Yes, Your Honor.

[00:00:40] Speaker 07:
So I'm going to take... I'm sorry, Your Honor.

[00:00:47] Speaker 07:
I want to focus on what I think is the easiest issue in this appeal.

[00:00:55] Speaker 07:
It's the error that the board made with respect to claim four.

[00:00:58] Speaker 07:
We want a dependent claim.

[00:01:04] Speaker 07:
We're challenging the board's findings on other claims as well.

[00:01:07] Speaker 07:
But I want to start with this one and spend the beginning of my argument on this one because I think this is very easy to grasp and very, very, very clear.

[00:01:18] Speaker 05:
As to ground three, I didn't understand that you challenged claim

[00:01:25] Speaker 03:
Claim four was not found to be unpatentable on that ground.

[00:01:42] Speaker 03:
I thought it was.

[00:01:44] Speaker 03:
It was challenged, but if you look at Appendix 74,

[00:01:53] Speaker 03:
which is the board's sort of summary of the decision chart, which shows its rulings.

[00:02:12] Speaker 07:
So claim four was found unpatentable based upon Reagan, Raquib, and Abacases.

[00:02:22] Speaker 07:
and also Claim Four was found unpatentable on the grounds of Armstrong, Livesey, and Abacases.

[00:02:29] Speaker 07:
But on the last ground, which did not involve Abacases, Claim Four was found by the board to not be unpatentable.

[00:02:39] Speaker 07:
So they didn't win on Claim Four on that last ground.

[00:02:45] Speaker 07:
In other words, Your Honor, the only way, the ruling on Claim Four, and this is the big point,

[00:02:51] Speaker 07:
is entirely predicated on the board's reading of abacuses.

[00:02:56] Speaker 07:
Okay.

[00:02:57] Speaker 07:
And what I'd like to demonstrate to you is why the board's reading of abacuses was very clearly wrong and not an unsupportable by that reference.

[00:03:12] Speaker 07:
So if I may, the board relied upon abacuses

[00:03:17] Speaker 07:
in both of the combinations involving abacuses.

[00:03:20] Speaker 07:
And so all the decisions finding claim four unpatentable rely on abacuses for the disclosure of the limitation, resuming the playing of a beginning of a video clip that is responsive to the request for additional information.

[00:03:42] Speaker 05:
And the board found that segment and video clip weren't materially different terms, right?

[00:03:49] Speaker 07:
That's the error, exactly, Your Honor.

[00:03:51] Speaker 07:
That's why I would like to focus my argument on.

[00:03:54] Speaker 07:
Let me finish reading, though, the claim language, because it's one of the main points of the argument.

[00:04:01] Speaker 07:
So if you look at the claim language before, the claim recited is, quote, resuming the claim at the beginning of a video clip,

[00:04:09] Speaker 07:
that is responsive to the request for additional information.

[00:04:13] Speaker 07:
The video clip comprises a plurality of continuous shots."

[00:04:18] Speaker 07:
End quote.

[00:04:19] Speaker 07:
So, hearing claim four, we have the introduction of a claim term.

[00:04:27] Speaker 07:
For all the claims that issue in the appeal, this is the only place where the video clip term is present.

[00:04:33] Speaker 07:
And it's very specifically defined

[00:04:36] Speaker 07:
not only in the specification of the 950 patent, but it's also, there's a specific limitation added in the claim language itself.

[00:04:46] Speaker 07:
The video clip comprises a plurality of contiguous shots.

[00:04:50] Speaker 07:
Now, obviously every limitation in the claim is deemed to be material, and the prior art, if it's going to be, if it's going to read on, if it's going to disclose a limitation, it's got to disclose all aspects of the limitation.

[00:05:04] Speaker 07:
So what happened here was, and before I move on to abacuses, so here we have in the claim a definition of video clip, right?

[00:05:14] Speaker 07:
A video clip comprises a plurality of contiguous shots.

[00:05:18] Speaker 07:
That's explicit claim language in the claim.

[00:05:21] Speaker 07:
And then in the specification, this inventor defines his terms.

[00:05:27] Speaker 07:
He defines a bunch of terms that are used in this patent, including the video clip term.

[00:05:33] Speaker 07:
Column 3, line 59 of the 950 patent, the following definition for clip is given, if I may read it.

[00:05:44] Speaker 07:
The term clip refers to a segment that is smaller than a chapter and usually smaller than a scene.

[00:05:51] Speaker 07:
A clip includes one or more contiguous shots and usually depicts the same primary characters within a location.

[00:06:00] Speaker 07:
Eclipse definition is responsive to a material change in the participation of the principal characters, a material change in location, and or a distinct change in thematic content or topic of conversation.

[00:06:14] Speaker 07:
So, end quote, that's the definition in the specification where the inventor was his own lexicographer and defined this term.

[00:06:24] Speaker 07:
Under this court's well-established precedent, this definition

[00:06:28] Speaker 07:
must be followed unless it's argued that somehow it was disclaimed during prosecution.

[00:06:34] Speaker 07:
And there's no kind of argument like that here whatsoever.

[00:06:37] Speaker 07:
So this definition of video clip sets forth the limitations that the board was obligated to find in abacuses.

[00:06:50] Speaker 07:
And let me make a comment about this long definition of clip that I just read.

[00:06:58] Speaker 07:
Some aspects of this definition are mandatory.

[00:07:05] Speaker 07:
Some are not mandatory.

[00:07:06] Speaker 07:
Some aspects of CLIP, CLIP is defined in some ways as being usually something, but in other ways CLIP is defined in a mandatory way.

[00:07:16] Speaker 07:
For example.

[00:07:17] Speaker 05:
Okay, but your problem is there was testimony on this.

[00:07:21] Speaker 05:
The board believes the petitioner's testimony and your

[00:07:26] Speaker 05:
trying to say that there's not substantial evidence to support the cessation.

[00:07:32] Speaker 05:
That's a tough one.

[00:07:35] Speaker 07:
Well, Your Honor, the testimony, the compensated expert testimony ignored the explicit definitions of claim language, not only in this patent, but in the reference patent, which I'll get to in a second.

[00:07:50] Speaker 07:
The reference patent, the abacus patent,

[00:07:53] Speaker 07:
defines segment.

[00:07:54] Speaker 07:
So what the Board did here is they said that the video clip in Claim 4 of the 950 patent is satisfied by Abacassus' teaching of a segment in the Abacassus patent.

[00:08:10] Speaker 05:
Now, in the Abacassus... And there was expert testimony to support that, right?

[00:08:16] Speaker 07:
There was expert testimony about it.

[00:08:17] Speaker 07:
It does not support that.

[00:08:19] Speaker 07:
I mean, if the patent says black and the expert says white, the expert's testimony doesn't support that.

[00:08:29] Speaker 07:
In abacuses, the definition given of segment is explicitly given, segment is defined explicitly in the specification of abacuses, the reference patent, as being quote unquote a part of a video.

[00:08:46] Speaker 07:
That's it, a part of a video.

[00:08:47] Speaker 07:
It can be any part of a video.

[00:08:48] Speaker 07:
a part of a video.

[00:08:50] Speaker 07:
Compare that to the very narrow and specific definition of clip, which I just read.

[00:08:57] Speaker 07:
But for example, the claim language says that the video clip has to comprise a plurality of contiguous shots.

[00:09:04] Speaker 07:
That's right there in claim four, expressly.

[00:09:08] Speaker 07:
Now, does abacus' segment, which is defined to mean a part of the video, is it limited to a segment that has a plurality of contiguous shots?

[00:09:18] Speaker 07:
Absolutely not.

[00:09:19] Speaker 07:
It says just a part of the video.

[00:09:22] Speaker 07:
It could be one contiguous shot.

[00:09:27] Speaker 05:
But your reading of abacus is just contrary to the expert's reading, right?

[00:09:33] Speaker 07:
I'm suggesting that the expert's reading of abacus is not supported by the reference, correct?

[00:09:40] Speaker 07:
I mean, this court, you know, is...

[00:09:45] Speaker 07:
Substantial evidence standard is a standard, and the standard has to be met.

[00:09:53] Speaker 07:
Evidence has to be substantial.

[00:09:55] Speaker 07:
Here, to disregard the explicit definition of segment given in abacuses and treat it as if it included all of these specific limitations that were given for video clip, there's no substantial evidence for that.

[00:10:11] Speaker 07:
In fact, it's just a conclusory statement by the expert.

[00:10:14] Speaker 07:
There's no actual support for it.

[00:10:16] Speaker 07:
He just says the abacus segment is a clip.

[00:10:21] Speaker 07:
There's no underpinnings to that.

[00:10:25] Speaker 07:
It's a conclusory statement that is entitled to no weight.

[00:10:28] Speaker 06:
Are you arguing that there was evidence, but it just wasn't substantial, that the weight of that evidence wasn't enough?

[00:10:37] Speaker 07:
I'm saying that the only evidence was a conclusory statement from Amazon's paid expert.

[00:10:43] Speaker 07:
That's the sum total of the evidence, if you will.

[00:10:47] Speaker 07:
And that evidence was insubstantial.

[00:10:49] Speaker 07:
Conclusory statements like that are routinely given, no way.

[00:10:54] Speaker 07:
And here, you know, the court should look at the actual references.

[00:10:59] Speaker 07:
One reference defines the term segment.

[00:11:02] Speaker 07:
That definition, claim terms have to be, the claim terms they used in the specification are supposed to be followed.

[00:11:10] Speaker 07:
Here we've got an explicit definition in advocacy subsegment.

[00:11:14] Speaker 07:
And that definition does not constitute anywhere close to the narrow definition of video clip used in the issued patent.

[00:11:23] Speaker 05:
And therefore, didn't the board find that there was more in abacuses than that one statement that you're relying on?

[00:11:38] Speaker 03:
I'm not sure what you're referring to exactly, Your Honor.

[00:11:41] Speaker 07:
They talked about, I mean, abacuses does use the term segment quite a bit.

[00:11:45] Speaker 07:
I mean, I think I think it's used a lot, but it's a very it's a it's a it's a term that

[00:11:53] Speaker 07:
A segment used in abacus is any part of it, literally as defined, any part of the video.

[00:12:01] Speaker 07:
It could be a big part of the video.

[00:12:02] Speaker 07:
It could be a very small part of the video.

[00:12:04] Speaker 07:
Anything less than the whole video could be a segment in abacus.

[00:12:09] Speaker 07:
Now, what is the clip by contrast?

[00:12:11] Speaker 07:
A clip has got a lot of different qualifications to it under the issued patent here.

[00:12:17] Speaker 07:
The 950 says in the claim language that it's got to be

[00:12:21] Speaker 07:
It's got to have a plurality of contiguous shots.

[00:12:24] Speaker 07:
Abacuses doesn't say that.

[00:12:25] Speaker 07:
And by the way, nothing the board said about abacuses refers to a segment having to have a plurality of contiguous shots.

[00:12:33] Speaker 07:
So whatever it did say about abacuses, it didn't say that.

[00:12:36] Speaker 07:
And that's required by the claim language.

[00:12:39] Speaker 07:
OK, it's right in the claim language.

[00:12:41] Speaker 07:
And then we get to the spec definition of clip.

[00:12:43] Speaker 07:
And there's there's other qualifications beyond just the plurality of contiguous shots.

[00:12:49] Speaker 07:
And none of those are set forth in abacuses as being requirements of a segment.

[00:12:55] Speaker 07:
And so here it's, I really submit that this is an easy one.

[00:13:00] Speaker 07:
I mean, you've got claim four, which the rejection of which rests entirely on the board's equation of the abacuses segment being the issue patent video clip.

[00:13:14] Speaker 07:
And in both situations, the terms are expressly defined

[00:13:18] Speaker 07:
by the inventors, and those definitions are very different.

[00:13:23] Speaker 07:
Therefore, segment is not a video clip, and it was clearly wrong for the board to equate the two as being the same thing.

[00:13:35] Speaker 07:
We do have some other arguments about the 950 case, but I wanted to make sure that we, because I think this is

[00:13:47] Speaker 07:
I think this is a very easy to follow argument.

[00:13:52] Speaker 07:
You know, you've got expressed definitions of claim terms being used in the reference patent and being used in the issued patent.

[00:13:59] Speaker 07:
Those definitions are very different.

[00:14:01] Speaker 07:
The issued patent's definition is very narrow, has a lot of qualifications that are not present in the reference patent's definition of the other term.

[00:14:09] Speaker 07:
And the board simply saying that one is the exact same thing as the other is unsupportable.

[00:14:14] Speaker 07:
And for that reason,

[00:14:15] Speaker 07:
since abacuses and this the way it was this abacuses reading was the the only thing that the board used to reach claim four the decision on claim four should be reversed okay thank you we'll save your rebuttal john let's hear from the other side good morning thank you

[00:14:46] Speaker 02:
Good morning, Your Honors, and may it please the court.

[00:14:49] Speaker 02:
I want to address Mr. Carey's statements with respect to Claim 4.

[00:14:56] Speaker 02:
The biggest issue is that it's not how abacus defines a segment.

[00:15:01] Speaker 02:
It's what abacus discloses.

[00:15:03] Speaker 02:
And what abacus discloses is a segment that is both smaller than a chapter and defined by the content therein, for example, the primary characters.

[00:15:14] Speaker 02:
That's exactly what the board relied on when it found that Abacassus disclosed a clip as that term is used in the 950 patents.

[00:15:23] Speaker 02:
In fact, the 950 patents definition that Mr. Kerry referred to having two mandatory components are those two things.

[00:15:32] Speaker 02:
The two mandatory components of the definition of a clip within the 950 patent are that it needs to be smaller than a chapter,

[00:15:41] Speaker 02:
and responsive to a material change in principal characters, a material change in location, and or a distinct change in thematic content or topic of conversation.

[00:15:53] Speaker 02:
As the board found, that's exactly what abacus discloses in its segments, smaller than a chapter and defined by content.

[00:16:04] Speaker 02:
I also want to address Mr. Kerry's statements with respect to Amazon's experts.

[00:16:08] Speaker 02:
He indicated that Amazon's expert provided nothing more than a conclusory statement.

[00:16:13] Speaker 02:
That is plainly incorrect.

[00:16:15] Speaker 02:
At appendix page 1117 through 1121, Bovic offered extensive testimony on this limitation.

[00:16:24] Speaker 02:
He disclosed Hammond, a reference referred to as Hammond, and what that meant for people known or what that meant to people skilled in the arts.

[00:16:34] Speaker 02:
And and how this limitation would have been known to person skill in the art.

[00:16:39] Speaker 02:
He also discussed Abacassus and how a clip was satisfied by Abacassus, but Bovic offered additional testimony at appendix pages 2252 as well as 2253.

[00:16:53] Speaker 02:
And there he went into the exact analysis that the board relied on that Abacassus discloses a segment that is both smaller than a chapter.

[00:17:03] Speaker 02:
and defined by contents, for example, primary characters.

[00:17:10] Speaker 02:
The board noted in its opinion that Custom Clay provided nothing more than attorney argument for this claim.

[00:17:17] Speaker 02:
It offered no expert evidence with respect to this claim.

[00:17:21] Speaker 02:
Accordingly, all of the evidence in the record supports the board's finding that Abacus discloses a segment as that term is used in the 950 patent.

[00:17:33] Speaker 03:
excuse me, a clip, because that term is used in the 950 patent.

[00:17:43] Speaker 02:
The one other thing I wanted to mention is that Mr. Kerry made references to two other things that I just wanted to make sure to clear up.

[00:17:51] Speaker 02:
He made reference to contiguous shots.

[00:17:55] Speaker 02:
And while, yes, that is a part of the claim limitation, Custom Play did not make any arguments

[00:18:01] Speaker 02:
in front of the board with respect to contiguous shots and that aspect of the claim limitation not being met.

[00:18:06] Speaker 02:
And they didn't make any arguments in their briefing for this court about contiguous shots and whether or not that was met.

[00:18:13] Speaker 02:
Any arguments now would certainly be waived.

[00:18:17] Speaker 02:
I also wanted to flag for this court that Amazon offered several alternative grounds for this.

[00:18:25] Speaker 02:
And while the board found that this claim was satisfied by abacuses

[00:18:30] Speaker 02:
and therefore didn't need to address those alternative grounds.

[00:18:34] Speaker 02:
There are in fact alternative grounds for affirmance based on the language of the claim that requires resuming the claim at the beginning of a clip that is responsive to the request for additional information as opposed to responsive for the location of the request for additional information.

[00:18:52] Speaker 06:
Chancellor, so am I correct that Amazon

[00:18:57] Speaker 06:
The Amazon expert testified as to the abacus' definition of segment and found that it's similar to the way the 950 patent defines CLIP.

[00:19:09] Speaker 06:
Is that correct?

[00:19:10] Speaker 02:
It's correct that Dr. Bovic testified as to the way that abacus' segment related to the 950 patent's definition of CLIP.

[00:19:21] Speaker 06:
Okay.

[00:19:22] Speaker 06:
Was there any opposing expert evidence to that testimony?

[00:19:27] Speaker 02:
There was absolutely none.

[00:19:31] Speaker 06:
Was there any other evidence outside of expert evidence that was presented to rebut the expert?

[00:19:39] Speaker 02:
No.

[00:19:39] Speaker 02:
The board noted that Custom Play offered nothing except for attorney argument with respect to this claim.

[00:19:48] Speaker ?:
Next.

[00:19:52] Speaker 03:
If there are no further questions, I cede my time to the court.

[00:19:56] Speaker 01:
All right.

[00:19:57] Speaker 01:
Thank you.

[00:19:59] Speaker 01:
Now, before we proceed with rebuttal, let me just make sure, because we've been listening to the intervener, it's correct, is it not, that other than the constitutional aspect, there's no role for the intervener in this response?

[00:20:18] Speaker 00:
That's correct, Your Honor.

[00:20:19] Speaker 00:
The issues that we appeared on in this case are identical to the ones from the previous case, and I have nothing further to add.

[00:20:24] Speaker 01:
Okay.

[00:20:25] Speaker 01:
Thank you for standing by.

[00:20:27] Speaker 01:
Thank you.

[00:20:28] Speaker 01:
All right, Mr. Carey, you have rebuttal time.

[00:20:31] Speaker 07:
Thank you very much, Your Honor.

[00:20:32] Speaker 07:
So Amazon argues in opposition to my comments that Abacassus' segment is smaller than a chapter and therefore counts as a video clip.

[00:20:49] Speaker 07:
Abacassus does not say that.

[00:20:52] Speaker 07:
Abacassus defines segment as a part of a video.

[00:20:56] Speaker 05:
You can... The trouble is you're ignoring the rest of that.

[00:21:00] Speaker 07:
Well, I'm not, Your Honor.

[00:21:02] Speaker 07:
I think it's my adversary that's ignoring the definition of segment.

[00:21:07] Speaker 05:
And here's... I mean, a segment... The abacus discloses more about segments than just that one definition, right?

[00:21:17] Speaker 07:
The segment that's used in abacuses is a part of a video.

[00:21:21] Speaker 07:
That part of the video can be defined

[00:21:24] Speaker 07:
in an application as a small part, could be less than a chapter, could be five chapters.

[00:21:30] Speaker 07:
As long as it's less than the whole video, it could be smaller than one chapter or multiple chapters.

[00:21:35] Speaker 05:
But the point is that Abacus discloses segments which have characteristics which are the same as clips.

[00:21:44] Speaker 07:
No, not all of them.

[00:21:46] Speaker 07:
First of all, the segment in Abacus is much broader than, clip is a narrow term, that's the point.

[00:21:54] Speaker 07:
And this patent involves a narrow claim limitation, which is not satisfied by the broader use of the term in the reference.

[00:22:03] Speaker 07:
A segment in abacusis is not limited to a segment that's smaller than a chapter.

[00:22:10] Speaker 07:
That's not the definition of a segment.

[00:22:12] Speaker 05:
That may be what you say is the definition, but the fact is it discloses segments which qualify as clips, right?

[00:22:21] Speaker 07:
It does not, because there's no discussion in abacusis

[00:22:24] Speaker 07:
of the qualification that's set forth in the claim language, whereby the clip has to comprise a plurality of contiguous shots.

[00:22:32] Speaker 07:
That language is nowhere found in abacuses.

[00:22:35] Speaker 07:
The concept of that was that, by the way, the inventor is the same.

[00:22:40] Speaker 07:
The inventor of the 950 patent is abacuses.

[00:22:45] Speaker 07:
The prior work, which was the abacuses reference patent, he wasn't conceptually thinking in terms of doing things to clips.

[00:22:53] Speaker 07:
There's no discussion whatsoever in the ABACASA's reference patent of CLPS.

[00:22:59] Speaker 07:
Doing things on CLPS was the subject of his later work, which is this 950 patent.

[00:23:06] Speaker 07:
And so the concept of CLPS enters into the new patent, the 950 patent, and a very specific narrow definition of it is given.

[00:23:17] Speaker 07:
And the prior definition of segment used in the older patent

[00:23:22] Speaker 07:
simply is not limited in the way that clip was limited in the new patent.

[00:23:28] Speaker 07:
So to say that, so council said that a segment in abacusis is smaller than a chapter, that's not a requirement of abacusis segment.

[00:23:43] Speaker 07:
It's just gotta be a part of a video.

[00:23:46] Speaker 07:
Whereas a clip must be smaller than a chapter, it must have the plurality of shots,

[00:23:52] Speaker 07:
And it must be responsive to the material change in one of the defined characteristics.

[00:23:58] Speaker 07:
A segment is not limited in any of those ways.

[00:24:01] Speaker 07:
A segment can be anything that is less than the whole video.

[00:24:05] Speaker 07:
It could be one frame.

[00:24:07] Speaker 07:
It could be 10,000 frames, assuming the video is 11,000 frames.

[00:24:13] Speaker 07:
So segment simply does not disclose these narrow characteristics that Videoclip does.

[00:24:19] Speaker 03:
And it was error for the board to equate the two.

[00:24:26] Speaker 01:
Any more questions at the moment for Mr. Carey?

[00:24:30] Speaker 01:
We have one more case where we can fill any gaps.

[00:24:37] Speaker 01:
Okay, with thanks to council, this case is taken under submission.