[00:00:00] Speaker 00:
The next case for argument is 22-1569, Plotmate versus Sony Interactive.

[00:00:09] Speaker 00:
Mr. Andre, whenever you're ready.

[00:00:11] Speaker 03:
Thank you, Your Honor.

[00:00:12] Speaker 03:
May it please the Court?

[00:00:15] Speaker 03:
There are three fundamental aspects of the inventions claimed in the 988 and 670 passes.

[00:00:21] Speaker 03:
The first is that the fault inspection program is distinct and different from the boot program.

[00:00:27] Speaker 03:
The second is the sequence of operations.

[00:00:30] Speaker 03:
The patent talks about how important it is to get the sequence done correctly.

[00:00:34] Speaker 03:
The blue program operates first.

[00:00:36] Speaker 03:
When it's done, the default inspection program operates to check out the faults.

[00:00:41] Speaker 03:
When it's completed, the game application can run.

[00:00:44] Speaker 03:
And third, the fault inspection program inspects both the hardware and the software.

[00:00:49] Speaker 03:
It's not just one or the other.

[00:00:50] Speaker 03:
It has to do both.

[00:00:51] Speaker 00:
Okay.

[00:00:51] Speaker 00:
So let me ask you about the first and second.

[00:00:54] Speaker 00:
Those are the two issues, right?

[00:00:55] Speaker 00:
Yeah.

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

[00:00:56] Speaker 00:
First issue, it seemed like everyone agreed that the fault inspection program and the clean boot program have to be separate in the prior article.

[00:01:06] Speaker 00:
That's my understanding.

[00:01:07] Speaker 00:
And that the board found that under that view, the piece of prior art whose name I can't pronounce, Sujiyama, disclosed a boot program separate from a fault inspection program, right?

[00:01:21] Speaker 03:
What the board found was, we argued that it was not separate.

[00:01:26] Speaker 03:
that the boot... Yes, but if they were separate.

[00:01:30] Speaker 00:
So I just want to establish first that we're dealing with a substantial evidence question of the board's whether or not the prior aren't.

[00:01:37] Speaker 03:
This is the claim interpretation of fault inspection program.

[00:01:41] Speaker 03:
It is something that the fact that the board said fault inspection program can have the same program like in the Sujiyama, the same program.

[00:01:51] Speaker 03:
They say it can be the boot program and the fault inspection program.

[00:01:57] Speaker 03:
And in a way, they say, we believe that Tsujiyama discloses both.

[00:02:04] Speaker 03:
But even if it doesn't, then the same program can satisfy both claim elements.

[00:02:14] Speaker 03:
So if the claimant interpretation, they expressly rejected the fault inspection program claim interpretation we provided, which was.

[00:02:21] Speaker 00:
But tell me.

[00:02:23] Speaker 00:
I guess it's page 71 and 72.

[00:02:25] Speaker 00:
Didn't they find that Sugiyama disclosed a boot program separate from a fault inspection program?

[00:02:33] Speaker 00:
And are you challenging that finding?

[00:02:35] Speaker 00:
And isn't that a question of substantial evidence?

[00:02:37] Speaker 03:
Well, what we're trying to establish first is wrong claim interpretation.

[00:02:43] Speaker 00:
Well, just answer my question first.

[00:02:45] Speaker 00:
Then you can put in your stuff.

[00:02:46] Speaker 00:
But am I wrong in how I'm construing what the board did here?

[00:02:51] Speaker 03:
Well, the board, as I just said, found that there is a, in the one section of Sujiyama that has the START program, that that is a boot program and a fault inspection program, two separate programs.

[00:03:07] Speaker 03:
But the data shows that it is a single program.

[00:03:09] Speaker 03:
They said it doesn't matter if it's a single program, because a single program can satisfy, under their claim interpretation of the fault inspection program, a single program can satisfy both the fault inspection program

[00:03:20] Speaker 03:
and the boot program.

[00:03:22] Speaker 03:
They're very clear on that.

[00:03:23] Speaker 03:
They rejected specifically that they have to be two separate programs.

[00:03:27] Speaker 00:
Well, why don't we look at what they said?

[00:03:31] Speaker 00:
Are we on 70, appendix 70, and emulate twice?

[00:03:39] Speaker 03:
70.

[00:03:42] Speaker 03:
72.

[00:03:44] Speaker 03:
70.20.

[00:03:45] Speaker 00:
OK.

[00:03:46] Speaker 03:
It says, the patent owner argument is predicated on our adoption of this claim construction with the term fault inspection program as other than a boot program, which we declined to adopt.

[00:03:57] Speaker 00:
OK.

[00:03:57] Speaker 00:
And then it says, petitioner argues SA2 and SA4 are collectively a fault inspection program, beginning with step two.

[00:04:07] Speaker 00:
And so they did find that the prior art separate had two different programs, right?

[00:04:11] Speaker 03:
No, it was a single program.

[00:04:13] Speaker 03:
The S program.

[00:04:14] Speaker 03:
There's several steps in the program because S1 down to S, whatever number it was, except S2 and S4.

[00:04:21] Speaker 03:
where they did the inspection.

[00:04:22] Speaker 00:
Well, don't they find on top of 72, indeed, petition to realize on steps one is teaching the claim boot program, step two and subsequent steps is separate from step one, and determine whether that abnormality has occurred.

[00:04:37] Speaker 00:
They are on a fault inspection program.

[00:04:39] Speaker 03:
Yeah, but it is predicated on the construction that a single program can be, have both elements, the boot program and the fault inspection program.

[00:04:48] Speaker 03:
If you predicate a single program on that and you do the separate steps, step one, S1, S2, and S4, even if that is a single program, a single program can satisfy the claim interpretation of the fault inspection program.

[00:05:05] Speaker 03:
So if you start off with the improper claim construction and say that even though they're separate, they were very, very clear

[00:05:13] Speaker 03:
that the PTAB said, even though we recognize there are two separate programs.

[00:05:20] Speaker 01:
So, Counselor, you would agree that the board found the different steps can meet the different functionalities of thought inspection program and boot program, right?

[00:05:30] Speaker 03:
That's what the board found.

[00:05:32] Speaker 03:
But it's a step of a single program.

[00:05:34] Speaker 03:
And so the basis, if you start with the improper claim construction of the fault inspection program.

[00:05:40] Speaker 00:
Well, let me state it a different way.

[00:05:41] Speaker 00:
Is your real complaint that separate steps, which appear in the prior art, cannot be separate programs?

[00:05:49] Speaker 00:
Is that what the fault line is?

[00:05:52] Speaker 03:
It is something that the separate steps are not separate programs, as defined in the prior art.

[00:05:56] Speaker 03:
But how the board interpreted

[00:05:58] Speaker 03:
on the fault inspection program as being something that could be, that in the boot program could be the same thing in the same program.

[00:06:05] Speaker 00:
Could be found within the same.

[00:06:08] Speaker 00:
So the dispute is whether or not separate steps can constitute separate programs.

[00:06:13] Speaker 03:
Yeah, I mean, I think that that's an issue that is not really, every program has multiple steps in it.

[00:06:21] Speaker 03:
I mean, there's not a single program that has a single step.

[00:06:24] Speaker 01:
So counsel, why does listing those sort of program functionalities separately mean they must be in different programs?

[00:06:32] Speaker 03:
Well, that goes back to the claim structure argument, your honor.

[00:06:35] Speaker 03:
If you have two separate terms in the claims, which is what they do, and there's a reason they have the two separate programs, so that they'll run in a sequential manner,

[00:06:48] Speaker 03:
And so the boot program has to be completed before you get into the fault inspection program.

[00:06:55] Speaker 03:
Here it is not.

[00:06:56] Speaker 03:
It's co-mingled into a single program.

[00:07:00] Speaker 03:
They call it the S1.

[00:07:02] Speaker 01:
You can run things sequentially even within the same program though.

[00:07:06] Speaker 01:
You don't have to have separate programs to have that sequential.

[00:07:09] Speaker 03:
It's possible.

[00:07:11] Speaker 03:
Right.

[00:07:11] Speaker 03:
Yeah.

[00:07:12] Speaker 03:
But the point is, if you're coming from a basis that a single program, like in Sujiyama, can satisfy both the fault inspection program and the boot program, two separate claim elements.

[00:07:28] Speaker 03:
That's what they did.

[00:07:29] Speaker 03:
They said there's just separate steps within the same program.

[00:07:31] Speaker 03:
You didn't carve out the two different programs as claimed there.

[00:07:35] Speaker 03:
Now, this was, as contrary to the law it started off with, this court has removed me in time, two separate, claim terms have two separate.

[00:07:44] Speaker 01:
The law that you're referring to, though, are those typically cases involving more so mechanical type inventions, where it'd be like physical components that would be distinct as opposed to a software-based invention?

[00:07:56] Speaker 03:
Yeah, I mean, the Beckham-Dixon case, I think, is more of a mechanically inclined.

[00:08:00] Speaker 03:
I think that's correct.

[00:08:01] Speaker 03:
And I think that is something that, you know, maybe it's more difficult to visualize something that is in ether as software.

[00:08:09] Speaker 03:
But still, programs are very distinct.

[00:08:11] Speaker 03:
They have a start and have a stop.

[00:08:13] Speaker 03:
And so the fact we have two separate programs, and this is much related to the authentication path, as we talked about earlier today, this is important for security.

[00:08:20] Speaker 03:
That's the whole idea of having these things done in sequential nature.

[00:08:23] Speaker 01:
do you have case law you can point me to that is more so focused on like a software based invention where there needs to be this distinction as opposed to the cases like you mentioned like Becton that would be more on the campus.

[00:08:34] Speaker 03:
Maybe the Comcast case.

[00:08:36] Speaker 03:
I think that would be more relevant to what we're talking about.

[00:08:41] Speaker 03:
It is.

[00:08:44] Speaker 03:
And also, this also goes back to the prosecution history.

[00:08:50] Speaker 03:
The prosecution history was very clear that we overcame prior art by saying they had to be two separate and distinct programs.

[00:08:59] Speaker 03:
because we said the prior art tried to commit them to a single program, and we said what we have here is something that is, the prior art was Bazzaria, and it's Appendix 1580 through 88, and during the prosecution history we made it very clear that

[00:09:17] Speaker 03:
It's not enough to have a single program that has multiple steps that does the same function.

[00:09:20] Speaker 03:
Here we have two separate, distinct programs.

[00:09:23] Speaker 03:
And it's important for the security reason to boot up the program A, then run the fault inspection before the game program begins.

[00:09:35] Speaker 03:
So the PTAP got there by giving also an improper claim instruction for the boot program.

[00:09:41] Speaker 03:
They gave a very, very broad boot program.

[00:09:44] Speaker 03:
They didn't give it the normal, ordinary meaning.

[00:09:47] Speaker 03:
They said it's just a small program in search of a big program.

[00:09:50] Speaker 03:
But the boot program, as we all know, is a program that starts up a computer.

[00:09:54] Speaker 03:
We all know what that is, boot up the computer.

[00:09:56] Speaker 03:
I mean, this is common parlance.

[00:09:58] Speaker 03:
We provide dictionary definitions as extrinsic evidence.

[00:10:01] Speaker 03:
Even the one Stoney cited talked about it had started the computer.

[00:10:04] Speaker 03:
In fact, they gave such a broad interpretation to the boot program.

[00:10:08] Speaker 03:
It shows that it kind of co-mingled the boot program with the fault inspection program.

[00:10:13] Speaker 03:
They gave it no real meaning.

[00:10:15] Speaker 03:
They say anything that starts, anything that begins is a boot program.

[00:10:19] Speaker 03:
That's not what a boot program is.

[00:10:20] Speaker 03:
It's not according to dictionary definitions, not according to one's skill in the art, and not according to the patent itself.

[00:10:25] Speaker 00:
Can I turn you before your time runs out?

[00:10:27] Speaker 00:
I know your second issue is the hardware software.

[00:10:30] Speaker 03:
Yeah, the hardware software is something once again we in order to overcome prior art.

[00:10:36] Speaker 03:
I believe this is the Yamaguchi reference, Yamamoto reference, I'm sorry.

[00:10:41] Speaker 03:
We also had to say that our fault inspection inspects both the hardware and the software.

[00:10:48] Speaker 00:
I'm a little confused by this issue, and I guess it's because of the two patents that are in play here, the 988 and 670.

[00:10:53] Speaker 00:
I mean, for the 988, I understand that the board concluded that Sue Giamma tomorrow each disclosed the fault inspection program that does both, right?

[00:11:08] Speaker 00:
They found both, yes.

[00:11:10] Speaker 00:
So even if we were to accept your construction,

[00:11:14] Speaker 00:
Why would the ultimate result from the 670 be any different?

[00:11:19] Speaker 03:
Well, the 670, the argument that had to be both hardware and software does not apply to the 670 because the claim language is different.

[00:11:29] Speaker 03:
It's not explicit in the claim language like it is in the parent application.

[00:11:34] Speaker 03:
So the only thing I would say about that is that when the board used the improper claim interpretation, it said it could be in the conjunctive, it could be or.

[00:11:43] Speaker 03:
not and Once again, they're using an improper claim interpretation of the fault inspection program.

[00:11:50] Speaker 00:
Yeah, but even if we were to construe the 670 that way, you've got the pieces of priority that the board has already concluded.

[00:11:56] Speaker 00:
Do both.

[00:11:57] Speaker 00:
So where does it get you?

[00:12:00] Speaker 03:
Do you understand my question?

[00:12:01] Speaker 03:
Yeah, I understand.

[00:12:03] Speaker 03:
And what let's say that is, is that when it comes to the board's finding at that point, they use a proper claim instruction.

[00:12:09] Speaker 03:
then I don't think they'd get to the ultimate conclusion.

[00:12:11] Speaker 03:
They found that the Tsujiyama reference talks all about hardware, hardware, hardware.

[00:12:17] Speaker 03:
They said, but that makes it passing reference.

[00:12:19] Speaker 00:
They also could do a program on the... So in order for you to prevail on this issue, we would have to look back at the findings of the 988 and conclude there was no substantial evidence to support the board's conclusion that they disclosed a program that they spoke.

[00:12:35] Speaker 03:
That's correct.

[00:12:40] Speaker 03:
Thank you.

[00:12:40] Speaker 03:
Thank you.

[00:12:43] Speaker 02:
May I please report?

[00:12:44] Speaker 02:
On the first issue, the board already agreed with the appellant here that the boot program and the fault inspection program should be treated as separate.

[00:12:53] Speaker 02:
In the final written decision of the 988- Yeah, I know.

[00:12:55] Speaker 00:
So the real issue is whether or not these pieces of prior art really separate them.

[00:13:00] Speaker 00:
And the board concluded they did, and they are doing what they do.

[00:13:04] Speaker 02:
Yes, I think that's right, Your Honor.

[00:13:05] Speaker 02:
So there is substantial evidence that supports that finding too.

[00:13:08] Speaker 02:
I'd alert the court to a couple of different portions of the record.

[00:13:11] Speaker 02:
First, Sugiyama itself, in Figure 5, illustrates these as separate blocks and a flow chart.

[00:13:19] Speaker 00:
So there are a lot of these.

[00:13:21] Speaker 00:
We had this discussion 10 minutes ago on the other case.

[00:13:24] Speaker 00:
Why isn't that, just to what we labeled this, why isn't that a claim construction question versus a substantial evidence question?

[00:13:32] Speaker 02:
You could treat it as a claim construction question, your honor.

[00:13:34] Speaker 00:
Was it presented to the board as a claim construction question?

[00:13:38] Speaker 02:
Yes, I think it was, your honor.

[00:13:40] Speaker 02:
But the board agreed with the appellant already.

[00:13:43] Speaker 02:
So yes, it was presented as a claim construction question below that the boot program and the fault inspection program need to be treated as separate.

[00:13:50] Speaker 02:
And the board expressly said in appendix 57 that they agree with the patent owner that these do indeed need to be treated as separate.

[00:13:57] Speaker 00:
they have to be separate, but then trying that plain construction to the prior art, the dispute arises as to whether this is separate.

[00:14:07] Speaker 02:
I think so, Your Honor.

[00:14:08] Speaker 02:
There's one other wrinkle here, Your Honor.

[00:14:09] Speaker 02:
On appeal, they've suggested that separate is not enough, and that instead you need to introduce this language that it's other than, something other than the boot program and the fault inspection program need to be something other than one another.

[00:14:21] Speaker 01:
Is it separate functionality or separate programs?

[00:14:24] Speaker 01:
I just want to make sure I'm tracking

[00:14:27] Speaker 02:
your argument sure so our argument is your honor that they are separate programs with separate functionality and that the prior art now what they do yes and the claim construction can be the boot program is a separate program than the fault inspection program and the board below found that Sugiyama teaches exactly that in fact there's one portion of Sugiyama

[00:14:48] Speaker 02:
that says expressly that programs other than the startup program described above, this is Appendix 1007, it's Sugiyama at paragraph 11, so the prior art reference itself treats these things as separate and refers to them as separate programs.

[00:15:05] Speaker 02:
There's also expert testimony on this.

[00:15:08] Speaker 02:
Dr. Wolf evaluated the Sugiyama teachings and the software discussed there and offered an opinion that these should, in fact, be treated as separate programs, the boot program and the fault inspection program as taught by Sugiyama.

[00:15:24] Speaker 02:
And the board relied on that evidence and concluded that they are separate programs in Sugiyama and so that Sugiyama teaches both a boot program and a fault inspection program as required by the claims.

[00:15:37] Speaker 00:
Can I briefly talk about these hardware software things?

[00:15:41] Speaker 02:
Of course, Your Honor.

[00:15:41] Speaker 02:
And I think you put your finger on the issue.

[00:15:43] Speaker 02:
There's two different patents in this appeal.

[00:15:46] Speaker 02:
The 670 patent, claim one, involves inspecting hardware.

[00:15:50] Speaker 02:
Claim four involves inspecting software.

[00:15:54] Speaker 02:
And then in the 988 patent, Your Honor, the fault inspection program as defined there involves inspecting both hardware and software.

[00:16:01] Speaker 02:
Now, there's a definitional statement in both of the patents as to what the fault inspection is.

[00:16:06] Speaker 02:
And then the claims go into further detail about what the fault inspection program does.

[00:16:10] Speaker 02:
And they're different.

[00:16:11] Speaker 02:
So in the 670 patent, one is directed to hardware.

[00:16:15] Speaker 02:
One is directed to software.

[00:16:17] Speaker 02:
And then in the 988 patent, it's recited in the claim expressly that the fault inspection program does inspect both hardware and software.

[00:16:24] Speaker 01:
And you're looking at the surrounding claim language to be able to know that.

[00:16:27] Speaker 02:
Exactly, Your Honor.

[00:16:28] Speaker 02:
That's exactly right.

[00:16:29] Speaker 02:
And so taking that 988 analysis, the board already found that the prior art teaches both inspection of hardware and software.

[00:16:39] Speaker 02:
There was expert testimony that supported those findings, and the board concluded in light of all the evidence, both as to the Sugiyama combination and also as to the separate independent moral combination, that each of these combinations taught inspecting both hardware and software.

[00:17:04] Speaker 02:
program, and the board correctly construed boot program.

[00:17:07] Speaker 02:
The board's construction was informed by a computer dictionary.

[00:17:11] Speaker 02:
The board also considered expert testimony about boot programs.

[00:17:16] Speaker 02:
And expert testimony below, both experts were in agreement that extended BIOS is not necessarily part of every computer.

[00:17:24] Speaker 02:
And so the competing constructions here, the board construed boot program to mean a small startup program that enables a computer to load larger programs.

[00:17:34] Speaker 02:
And the competing construction offered by Appellant is narrower.

[00:17:39] Speaker 02:
It says a boot program is, quote, a program that initialized various devices, including the extended BIOS and the operating system.

[00:17:49] Speaker 00:
OK, let me ask you just a threshold question.

[00:17:52] Speaker 00:
If we were to agree with you on the first two issues we discussed this morning, do we need to reach the proper construction of boot program?

[00:18:00] Speaker 00:
And is that separate and distinct from the discussion we have on issue one on boot program versus fault inspection?

[00:18:06] Speaker 02:
No, you would not need to reach this question, Your Honor.

[00:18:09] Speaker 02:
And the reason is Sugiyama already teaches.

[00:18:14] Speaker 02:
There's already an obviousness ground based on Sugiyama.

[00:18:17] Speaker 02:
And so this separate boot program definition issue only relates to the secondary ground based on prior art reference moro.

[00:18:24] Speaker 02:
So you would not need to reach this question if you agree with us on the first two points, Your Honor.

[00:18:32] Speaker 00:
Keep telling me I didn't interrupt you.

[00:18:34] Speaker 02:
Not at all.

[00:18:37] Speaker 02:
So the issue here, their construction is narrower than ours.

[00:18:40] Speaker 02:
Their construction requires initializing an extended BIOS and also initializing an operating system.

[00:18:46] Speaker 02:
One problem with that is that both experts agreed and their expert agreed in his deposition that not all computers have an extended BIOS.

[00:18:55] Speaker 02:
So there's nothing in the patents that say that these claims need to be limited to computers that have an extended bios.

[00:19:01] Speaker 02:
There's just one example, one embodiment, where the embodiment discusses using an extended bios.

[00:19:07] Speaker 02:
But there's nothing else in the patent that says it needs to be so limited.

[00:19:10] Speaker 02:
And that's what the board found.

[00:19:11] Speaker 02:
The board looked at all the evidence, looked at several dictionary definitions, noted that many of the dictionary definitions in the record did not require initializing

[00:19:20] Speaker 02:
even an operating system, and concluded that the correct construction was from a dictionary definition that explained the history of boot up and bootstrap.

[00:19:29] Speaker 02:
The notion is to bootstrap a computer by loading a small startup program that then allows the computer to load larger programs.

[00:19:38] Speaker 02:
And so based on that definition, the board evaluated the Morrow combination, and the board found that Morrow does teach a boot program based on this definition.

[00:19:52] Speaker 02:
a file allocation reader and that file allocation reader is initiated right when the computer first boots up and then that's used to start a verification process that takes place in Morrow.

[00:20:04] Speaker 02:
And the board found based on their definition which was rooted in a dictionary definition that Morrow does teach a boot program.

[00:20:11] Speaker 02:
Unless there are further questions I'll conclude.

[00:20:13] Speaker 00:
Thank you.

[00:20:13] Speaker 02:
Thank you.

[00:20:15] Speaker 03:
Just a couple issues premised on the incorrect claim construction, fault inspection program, and boot program.

[00:20:24] Speaker 03:
The board was very clear in its construction that it was able to give the instruction of fault inspection program, also including boot program.

[00:20:37] Speaker 03:
It's treated to separate albums.

[00:20:38] Speaker 03:
On page 10 of the appendix, it says, we see nothing in the record that precludes the fault inspection program from also being a boot program.

[00:20:45] Speaker 03:
So by its very nature, that's on the second line down.

[00:20:50] Speaker 03:
So under that premise, the board then went in and looked at Tsujiyama.

[00:20:55] Speaker 03:
Tsujiyama, on page 21 of the appendix, says that the petition argues that the steps S2 and S4 are collectively a fault inspection program.

[00:21:08] Speaker 03:
We are not persuaded, patent owner, that steps two and four are limited to being part of the startup program.

[00:21:14] Speaker 03:
And even if we were persuaded at that point, we disagree that the START program cannot include fault inspection independent of HED inspection program 2.

[00:21:22] Speaker 03:
That is, if you start at the wrong premise, the wrong claim construction, which the board did here by saying fault inspection protein can also include blueprint, maybe one program can include both of them, and then you apply that to the ART.

[00:21:38] Speaker 03:
You started the fundamental building blocks of improper claim construction, and then you read the art under that improper claim construction.

[00:21:47] Speaker 03:
So that would be our argument as to why this is a claim construction issue at first.

[00:21:52] Speaker 03:
If the claim construction is wrong, for fault inspection program and boot program, then the findings of fact that, based on the incorrect construction, had to be set aside.

[00:22:04] Speaker 00:
Thank you, John.

[00:22:06] Speaker 00:
Appreciate it.