[00:00:00] Speaker 01:
Our first case for argument is 20-2206, Roewe Guides versus Hershel.

[00:00:06] Speaker 01:
Please proceed.

[00:00:08] Speaker 02:
Good morning, Your Honors.

[00:00:24] Speaker 02:
May it please the Court.

[00:00:26] Speaker 02:
The patent here allows viewers to pause media on one device and then select on a second device one of two displayed options to resume the media from either the pause point or an earlier point.

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And then some of the dependent claims require a third option that allows viewers to resume from a later point.

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So for example, if I'm watching live TV, I could pause it and then I could use the third option to skip ahead to the real time position.

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And I'd like to start today with the board's analysis of this third option.

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As you can see if you look at appendix 90 the board relied entirely on annotations of Wang's figures one and three that were created by Comcast's expert and the expert essentially said Here are three bookmarks in Wang I'm going to label the middle one the pause point and then the one before is going to be the second option and the one after is going to be the third option and then

[00:01:25] Speaker 02:
The problem is that if you look at Wang, this doesn't make sense.

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Because first, in Wang, it's not possible to use a selectable option to move forward in time.

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Because in Wang, you can't create a bookmark until you actually are viewing the video and you get to the point that you want to bookmark.

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And so this annotation is facially nonsensical.

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The second problem is that the PTO agrees with us that this third option can be used to resume live video from the real-time position.

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But you can't do that in Wang either, because Wang is not talking about live video at all.

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Wang is exclusively about pre-reported videos.

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And in fact, Wang doesn't even talk about pausing, and its bookmarks are not pause points, which Comcast expressly acknowledged below.

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Comcast disavowed reliance on Wang for anything other than the very general concept of displaying multiple... But I thought the board relied on Lee for the pause points.

[00:02:27] Speaker 02:
The board did rely on Lee for the concept of creating a pause point.

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That's correct, Your Honor.

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But what Lee doesn't have is the display of a selectable option to start from either the pause point or a point before or after the pause point.

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And so the board equated Wang's bookmarks to the pause point and then the point before and after the pause point.

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But again, that was an argument that Comcast never made.

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And with respect to the third option, I think it's important to note that the Comcast expressly admitted below, and this is an appendix 234, quote, Lee does not disclose an option for a point after the pause point.

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Lee also doesn't talk about live TV.

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So there is simply no disclosure of the claim third option in the prior art.

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And there's certainly no disclosure of an option that allows a user to resume live TV from the real time point.

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And we'd submit that there's therefore no substantial evidence in the record for the board's finding that the claim third option is obvious.

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Now I'll talk in a little more detail about the two options that are required by all the claims.

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The board's analysis here doesn't fare any better.

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Now, Chief Judge Moore, as you stated earlier, Lee does talk about pausing and resuming video.

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That's true.

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But it doesn't say how the video is resumed, and it doesn't disclose multiple options for resuming paused content from the pause point or a point before the pause point.

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And the Comcast expert admitted this repeatedly below.

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The board essentially relied on three lines of reasoning to find this limitation obvious.

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The first is Lee's Digest, the second is Wang's Bookmarks, and then the third is sort of what the board viewed as common knowledge in the art.

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And so I'll take those in order.

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First, with regard to the digest, Lee's digest is not a second option.

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The digest is a feature that is found in some embodiments of Lee that plays a summary of the previous content before the video actually starts from the pause point.

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And the PTO, I don't think disputes our reading of Lee's digest.

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They don't disagree that Lee does not provide two options, one to start at the beginning and view the digest or a different one to skip the digest entirely and just start off from the pause point.

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Now it is true, and the board pointed out, that Lee discloses that if you're looking at the digest, you can select multiple levels of detail.

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So you can have a more comprehensive digest or a less comprehensive digest, and you can select that using a user interface.

[00:05:24] Speaker 00:
I'm sorry, what do you mean by more detail?

[00:05:29] Speaker 00:
More seconds of video to see?

[00:05:32] Speaker 02:
Essentially, yes, your honor.

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So you might see 10 seconds out of the previous 10 minutes, or you might see 60 seconds out of the previous 10 minutes.

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But those options are not options for resuming pause content from the pause point or a different point.

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They are simply options for deciding how detailed you want the digest to be.

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Turning now to Wang's bookmarks, again, I want to emphasize that Comcast relied on Wang only for this general concept of displaying multiple selectable options to a user.

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And then Comcast sort of reasoned from that general concept that, oh, it would have been obvious to display these specific types of selectable options that are disclosed in the patent.

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But I'd submit that that's precisely the type of reasoning that this court rejected in Arendy.

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In Arendi, the patent claimed using information from a first computer program to perform a specific type of search in a second computer program.

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And the board relied on a reference that displayed picking out information from a first computer program and then reasoned, well, it was known to search data in a database.

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That was an obvious concept.

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So it would have been obvious to perform the specific type of search that's claimed in the patent.

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And this court rejected that line of reasoning.

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It said it was not permissible to reason from this high level disclosure of searching for data in a database to

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find obvious the specific type of search that was claimed in the patent in a RENDI, and I submit that that's exactly the situation we have here.

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It is certainly true that the general concept of displaying multiple selectable options to a user was known in the prior art, but it doesn't follow from that that it was obvious to display the specific types of selectable options that are claimed in the 799 patent.

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And then finally and briefly, the board relied at Appendix 61 on its view that, quote, a user interface providing multiple options at one time was commonly known and practiced in the art to allow for a better user experience.

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And again, this is the type of sort of common sense hindsight reasoning that this court has rejected in Arendy and DSS versus Apple and in TQ Delta.

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And so we'd submit that that does not provide substantial evidence for the board's finding on the two options.

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If there are no more questions on that, I'll turn to the

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the limitation that requires pausing a video on one piece of user equipment and then resuming it on a second piece of user equipment.

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The board relied principally on the fact that Lee talks about a plurality of user terminals.

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And Lee does talk about that.

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But when Lee says there are a plurality of user terminals in the system, it's talking about an entire cable system that has a server, and then there are multiple households connected to the server.

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So I might have my user terminal that's connected to the server in my house.

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My co-counsel might have the user terminal connected to the server that's in his house.

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So that general concept of a plurality of user terminals doesn't get the board to the conclusion that it would have been obvious to stop on one and then start on another.

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And in fact, when Lee discusses the pausing and resuming functionality,

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It's always contemplating starting on the same user terminal where it was paused.

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And let me give you three examples.

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The first is at appendix 951, column three, lines 21 through 25.

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Lee states that after playback is requested, the video server quote, retransmits to the user terminal the video program that corresponds to the user profile information.

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So that's saying it's retransmitting to the same user terminal on which the program was paused.

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The second example is that Lee states at column four, lines 59 through 63, that

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user profile information, instead of being stored in a profile card, could also be stored in the user terminal itself.

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And of course, if it's stored in the user terminal itself, you're not going to be able to relocate.

[00:10:11] Speaker 01:
If we're just talking about one terminal, why would there be a portable storage medium?

[00:10:17] Speaker 02:
Your Honor, because the point of Lee having a portable storage medium is that you can insert and remove the card so multiple people can have their own user profile on their own user profile card.

[00:10:28] Speaker 01:
That's your impression, but this is a substantial evidence question.

[00:10:32] Speaker 01:
What's wrong with the board's conclusion that the plurality of terminals combined with the portable storage medium discloses starting on one device and resuming on another?

[00:10:47] Speaker 01:
I mean, I understand your point.

[00:10:49] Speaker 01:
And the board could have construed Lee the way you're proposing, for sure.

[00:10:53] Speaker 01:
But they construed it this other way.

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And I'm struggling to see how I conclude that's not supported by substantial evidence.

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So I think, Your Honor, that the two points I made earlier about Lee, every time Lee talks about this playback functionality, is contemplating the use of only one user terminal.

[00:11:14] Speaker 02:
It doesn't talk about the playback functionality in the context of plurality of user terminals.

[00:11:20] Speaker 02:
We also presented unrebutted expert testimony that a portable profile card just means the profile card can be inserted and removed.

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And we also presented unrebutted testimony that many user terminals at the time were locked to a particular profile card.

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And I think what's telling here is that if you

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If you look at the four corners of the Lee specification, there's really nothing else other than this sort of passing reference to a plurality of user terminals, which is why when Comcast's expert was arguing that this limitation was obvious in light of Lee, he essentially had to make up a figure.

[00:12:02] Speaker 02:
He reproduced Lee's user terminal two

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And then he drew connections between the two user terminals.

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And he labeled one of them pause user terminal and one of them playback user terminal.

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Terms that he admitted were found nowhere in Lee.

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And I think that that is telling evidence that in Lee itself, there actually is no disclosure of this concept of pausing on one user terminal and resuming on a second.

[00:12:33] Speaker 02:
I see I'm into my rebuttal time.

[00:12:35] Speaker 02:
If the court has any further questions, I'm happy to answer them.

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Otherwise, I'll reserve my time.

[00:12:40] Speaker 01:
OK.

[00:12:40] Speaker 01:
Thank you, Mr. Milliken.

[00:12:42] Speaker 01:
Mr. Heckman, please proceed.

[00:13:02] Speaker 00:
Good morning, Your Honors.

[00:13:03] Speaker 00:
May it please the court?

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To demonstrate that the board erred, Roe v. must show that there is an absence of substantial evidence.

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The record, however, shows that Roe v.'

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's broad functional claims collide with the prior art of record in this case.

[00:13:20] Speaker 00:
This morning.

[00:13:21] Speaker 00:
I will respond to the three arguments that the Appellants Council offered first the argument about the three options Second there's an argument about the multiple options limitation and finally An argument about the limitation about pausing on one device and resuming on another first with respect to the two three options and

[00:13:45] Speaker 00:
In the blue brief, the argument about three options was very cursory at page 46 of the blue brief.

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It was essentially an a fortieri argument that if the prior did not teach two options, that they couldn't have taught three.

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There is the same evidence.

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lines of reasoning that the board relied on for two options would apply just as well to three.

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We're dealing with art that is all in the same field.

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We're dealing with media delivery and distribution systems with storage of data and

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As the court noted, Lee has a disclosure discussing the presence of multiple user terminals, which claim five of Lee actually recites or actually is supported by.

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And so for those reasons, we believe that three options stand or fall with the question of two options.

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The second issue, the limitation of having multiple options, as we argued in the green brief, we think this comes down to a question of whether to view the prior references, whether they should be viewed in isolation or collectively for what their collective teachings are.

[00:15:18] Speaker 00:
And of course, Ray Keller tells us that we need to view them collectively.

[00:15:24] Speaker 00:
The Wong is a system for delivering media and for viewing media and it's illustrated in the patent.

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It provides a visual display to the user with multiple options with the bookmarks.

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As Comcast experts said, a person of ordinary skill in the art.

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would readily understand that those multiple options could be used to display pause points.

[00:16:03] Speaker 00:
Finally, with respect to the limitation of pausing on one device and resuming on another, Claim 5 recites the removal of a user profile card from one device and inserting it into a second device.

[00:16:24] Speaker 00:
that the presence of multiple

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terminals in Lee's disclosure supported the claim five.

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And in the briefing, we also talked about a prior re-examination where the examiner also relied on the very same disclosure in Lee's specification.

[00:16:44] Speaker 01:
Am I right in understanding that we don't have to get to this claim five issue and whether it has priority to the filing date in Lee because the PTO made an alternative holding about Vanzini?

[00:16:56] Speaker 00:
Vanzini also supports this as well.

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And Vanzini essentially says that a smart card with a user profile can be removed from one device and transported to another.

[00:17:08] Speaker 00:
So Vanzini also reinforces the same concept.

[00:17:13] Speaker 00:
So unless the court has any further questions, I will yield the rest of my time back.

[00:17:20] Speaker 01:
Thank you, Mr. Heckman.

[00:17:21] Speaker 01:
Mr. Milliken, you have some about all time.

[00:17:38] Speaker 02:
Thank you, Your Honors.

[00:17:39] Speaker 02:
I'd like to make four brief points in rebuttal, one practical, two factual, and one legal.

[00:17:45] Speaker 02:
The practical one is that I think it's important to remember that we are talking about a patent that the priority date is 2001.

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The DVR technology in 2001 was extremely primitive, and so while I fully acknowledge that standing here in 2022, this concept of resuming video on a second terminal from a point before or after the pause point seems obvious, it doesn't follow that it was obvious in 2001.

[00:18:12] Speaker 02:
The two factual points are that first, my opponent still has not come forward with any disclosure of using a third option to resume live TV from the real time point of the video.

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So that is a disclosure that I think is undisputedly not present in the prior art.

[00:18:33] Speaker 02:
The second factual point is that with regard to Vanzini, Vanzini is talking about a profile card that has operating characteristics of a computer, like for example the My Documents folder and the look and feel of a desktop computer.

[00:18:49] Speaker 02:
Vanzini is not talking about pausing and resuming video, and so I would submit that it doesn't

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get the board to a finding that it would have been obvious to use a portable profile card to stop video on one terminal and resume on a second.

[00:19:04] Speaker 02:
And then finally the legal point is that claim five of Lee is

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I think there can be no dispute.

[00:19:11] Speaker 02:
It is not independently prior art.

[00:19:14] Speaker 02:
Claim five was added by an amendment in 2006.

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And so if claim five is not supported by the lease specification, and we submit for all the reasons we've explained in our brief that it is not, then claim five does not help the board.

[00:19:31] Speaker 02:
And so the government's assertion in its brief that the date when claim five was added is irrelevant is simply wrong.

[00:19:37] Speaker 02:
It is highly relevant.

[00:19:39] Speaker 02:
And the fact that Lee thought to add a claim that recited moving a profile card from one terminal to another in 2006 tells us nothing about whether that functionality would have been obvious in 2000.

[00:19:53] Speaker 02:
If the court has any further questions, I'm happy to answer them.

[00:19:56] Speaker 02:
Otherwise, I'll cede the balance of my time.

[00:20:00] Speaker 01:
OK.

[00:20:00] Speaker 01:
I thank both counsel.

[00:20:01] Speaker 01:
This case is taken under submission.

[00:20:03] Speaker 02:
Thank you, Your Honor.