[00:00:00] Speaker 00:
Our first case is Siafi versus Google, 18-1049.

[00:00:08] Speaker 00:
Mr. Counselor DeFranci, you've reserved four minutes of time for rebuttal.

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

[00:00:15] Speaker 00:
That's correct.

[00:00:16] Speaker 00:
Okay, sir, you may begin.

[00:00:17] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:20] Speaker 01:
The reissue claims that are asserted here fail the original patent requirement under Section 251.

[00:00:25] Speaker 01:
Each one requires using two web browser processes.

[00:00:30] Speaker 01:
But that was described nowhere in the original 247 patent.

[00:00:33] Speaker 01:
Now, this is not a Section 112 issue where courts can and do rely on expert testimony to determine whether a person of ordinary skill in the art reading a patent specification would infer or understand that the applicant possessed the later claimed subject matter at the time of filing.

[00:00:52] Speaker 01:
Here, Section 251 requires more than that.

[00:00:55] Speaker 00:
Doesn't the original pen disclose two logical processes?

[00:01:00] Speaker 00:
It does disclose two logical processes.

[00:01:02] Speaker 00:
And is it undisputed that a logical process encompasses the internet browser?

[00:01:09] Speaker 01:
Yeah, the evidence was that a logical process can be just about anything that a computer does.

[00:01:15] Speaker 01:
It's literally any process.

[00:01:17] Speaker 01:
And in this case, disclosing two logical processes, which could be anything, is not enough to provide the clear and explicit and unequivocal disclosure of two web browser processes, which is required in this case when it's a reissue patent under Section 251.

[00:01:32] Speaker 00:
Does it have to be that clear in its face, or cannot a person of ordinary skill in the art use logic to deduce that both of the logical processes encompass a web browser?

[00:01:48] Speaker 01:
So I think under section 251, under the original patent requirement, the Supreme Court has said that that's not enough.

[00:01:55] Speaker 01:
The Supreme Court said it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.

[00:02:05] Speaker 01:
And the court talked about how expert testimony cannot be used to inform what the document means.

[00:02:13] Speaker 01:
It may be used if there's something like a dispute over or a question about what a technical term

[00:02:18] Speaker 01:
actually means what the document actually says.

[00:02:20] Speaker 01:
But as far as what is disclosed in the specification, this court in Antares said that it has to be clear and unequivocal and explicit as a separate invention.

[00:02:31] Speaker 01:
So I read that case as saying it actually has to be called out specifically in the specification to satisfy the original pattern.

[00:02:37] Speaker 04:
But not necessarily in particular words.

[00:02:43] Speaker 04:
That is, if it were clear and unequivocal,

[00:02:47] Speaker 04:
from the spec as a whole that descriptions of first logical process having direct or, through the second logical process, indirect access to the web, that would be enough, even though it didn't use the term web browser, although it uses the term browser and web and names a couple of web browsers repeatedly.

[00:03:16] Speaker 01:
I think if that specific configuration was clearly and unequivocally and explicitly called out, that would be enough.

[00:03:24] Speaker 01:
Here, what the district court did and what planets have relied on is a series of inferences saying, you know, that it says a logical process that could be a web browser process.

[00:03:35] Speaker 01:
So if you pull that in here and it also says a process, well, that could be a process.

[00:03:40] Speaker 01:
If we pull all these things together, you know, could be, might be, should be, a person of ordinary skill and art might think that.

[00:03:45] Speaker 01:
That's not enough.

[00:03:46] Speaker 04:
I guess it seems to me that this sort of the pulling together notion we often see in the context of reading a piece of prior art that has different things in different places and some works needed to be done to put the things together.

[00:04:03] Speaker 04:
But I guess my reading of the 247 was that there's a

[00:04:09] Speaker 04:
pretty clear description of a logical process with indirect access to a network and repeated descriptions of the variety of networks that that can be, the gaming, the web,

[00:04:28] Speaker 04:
and that there's not really any work to be done to put those things together.

[00:04:33] Speaker 04:
Tell me what's wrong with that view.

[00:04:35] Speaker 01:
Well, so if you look at the original patent specification, where it talks about, I think what you're referring to is in column six?

[00:04:44] Speaker 04:
Well, I'm actually referring to the entirety of the thing, starting from the description of here's the general problem, and millions of people are now getting

[00:04:55] Speaker 04:
going over networks, that's basically the web, that's where the millions of people are, not on other networks and downloading stuff, so that we're talking about the normal mass use of processors connected to, and processes running on processors, connected to the web with all of its dangers.

[00:05:21] Speaker 04:
And I think that's kind of set up at the beginning

[00:05:25] Speaker 04:
And then there are a variety of specific embodiments, the number six, and then whatever the modification is in number nine with different columns.

[00:05:34] Speaker 04:
That's sort of the picture I come away with.

[00:05:38] Speaker 01:
So I think it's important to understand, first of all, that there is a discussion of networks generally in the specification.

[00:05:45] Speaker 01:
That is what is generally discussed when they're talking about this invention.

[00:05:48] Speaker 01:
It's networks.

[00:05:50] Speaker 01:
And at appendix 4858,

[00:05:53] Speaker 01:
There was testimony, and I think this was undisputed, that a network is not just the web.

[00:05:58] Speaker 01:
That's one type of network, but there are lots of other kinds of applications that might use a network.

[00:06:04] Speaker 01:
File sharing, email, texting, basically any of the dozens and dozens of apps on my phone that are not a web browser are all using networks.

[00:06:13] Speaker 01:
Web browsing with website information is one slice of a network.

[00:06:22] Speaker 01:
to the extent that we're relying on generic discussions of network.

[00:06:25] Speaker 04:
Is there any evidence in the case about apps and the timing of this?

[00:06:32] Speaker 04:
This dates to what, 2004?

[00:06:33] Speaker 04:
2004, I believe, yeah.

[00:06:37] Speaker 04:
How common were apps at the time?

[00:06:41] Speaker 01:
I believe smartphones were around by then.

[00:06:43] Speaker 04:
Barely?

[00:06:44] Speaker 01:
Maybe barely.

[00:06:45] Speaker 01:
But certainly email was around.

[00:06:46] Speaker 04:
So in 2004, if I read something that says,

[00:06:50] Speaker 04:
There are millions and millions of people out there on networks doing all kinds of things.

[00:06:55] Speaker 04:
How could that not be a reference to web browsers?

[00:06:59] Speaker 04:
But unlike maybe today, where apps have for many, many uses substantially displaced, at least in numbers, in amounts of time, web browsers.

[00:07:11] Speaker 01:
Well, again, I mean, still even then, a network was just a connection of two or more computers together.

[00:07:17] Speaker 01:
So file sharing was certainly around.

[00:07:20] Speaker 03:
Well, gaming would be the basic form of network interaction.

[00:07:26] Speaker 01:
And in the specific part of the specification column 14, which is what the plaintiffs rely on primarily to try and show sufficient disclosure here, what's discussed there is interactive network processes.

[00:07:40] Speaker 01:
And gaming is the only example provided there.

[00:07:42] Speaker 01:
Everything is referred to in the lens of gaming.

[00:07:45] Speaker 01:
And that is a context where

[00:07:48] Speaker 01:
Again, talking about interactive network process data.

[00:07:53] Speaker 01:
It's talking about a game where computers are either connected to other peers or to a host, and there is rapidly changing information that's going back and forth.

[00:08:02] Speaker 01:
Where is Mario now in the game?

[00:08:05] Speaker 01:
And that makes sense that there would be this kind of constant sharing that's talked about in figure six and in column 14.

[00:08:14] Speaker 01:
That doesn't make as much sense in the context of a web browser where the web page is

[00:08:18] Speaker 01:
basically static, especially in 2004.

[00:08:20] Speaker 01:
So the fact that this particular embodiment that is actually explicitly and unequivocally described talking about gaming does not include web browsing is important.

[00:08:33] Speaker 01:
And furthermore, this very thing came up during prosecution of the reissue patents.

[00:08:39] Speaker 01:
And the applicants specifically distinguished

[00:08:42] Speaker 01:
web browser processes.

[00:08:43] Speaker 01:
They amended to put in web browser processes to distinguish gaming, which was in the prior art that was at issue at that time.

[00:08:49] Speaker 01:
So again, here, relying on this particular specification, the only thing that's clear and unequivocal and explicit here in column 14 is gaming.

[00:09:00] Speaker 01:
And that was called out as being very different during prosecution.

[00:09:04] Speaker 01:
And it makes sense that it's a different thing in the context of what they're talking about here.

[00:09:08] Speaker 04:
Can I ask you a question?

[00:09:13] Speaker 04:
The red brief says that its expert, I think at page 4425, its damages expert, said same damages regardless of how many of, I think he said three patents.

[00:09:29] Speaker 04:
Let's just translate that for a moment into each of the four claims.

[00:09:33] Speaker 04:
Do you dispute that?

[00:09:35] Speaker 04:
If we were to find one patent survived your several arguments, would we have to reach, or one claim did, would we have to reach the others?

[00:09:47] Speaker 01:
No.

[00:09:48] Speaker 01:
We're not disputing that particular point at this point.

[00:09:52] Speaker 01:
So all of the claims are taken as supporting the judgment.

[00:09:58] Speaker 03:
So claim five of the 528, for example, would be enough to support the judgment?

[00:10:05] Speaker 01:
Yes, that's not disputed anymore at this point for purposes of the damages judgment, that's right.

[00:10:11] Speaker 01:
Since you're on a brought up expert testimony, I wanted to touch on that briefly as well.

[00:10:16] Speaker 01:
The plaintiff's case here and the district court's reasoning all depends very heavily on testimony from the plaintiff's expert.

[00:10:23] Speaker 03:
This is Dr. Densmore?

[00:10:24] Speaker 01:
Dr. Densmore, exactly.

[00:10:25] Speaker 01:
All right.

[00:10:27] Speaker 01:
About what a person of ordinary skill in the art would have understood.

[00:10:30] Speaker 01:
or inferred from the specification, not about what is explicitly there.

[00:10:34] Speaker 01:
And that's consistent throughout the red brief.

[00:10:38] Speaker 01:
It's consistent throughout the district court's opinion.

[00:10:41] Speaker 01:
If you look at appendix 51 to 54, that's the focus of all the conclusions that the district court makes.

[00:10:47] Speaker 01:
And I would submit to you that that's improper under the Supreme Court's decision in industrial chemicals and under this court's decision in forum.

[00:10:53] Speaker 01:
It's using that testimony in exactly the way the Supreme Court has said that courts are not supposed to, which is determining what was suggested or indicated, what the document means rather than just resolving a question about a technical term.

[00:11:10] Speaker 03:
Well, let me ask you about Dr. Dinsmore's testimony.

[00:11:16] Speaker 03:
Judge Gielstrap relies on Dr. Dinsmore's testimony in part.

[00:11:20] Speaker 03:
And he says at 50-44, the bottom of 50-44, that do you agree with Dr. Kogan that the specification does not disclose the use of two web browser processes?

[00:11:35] Speaker 03:
He says no.

[00:11:37] Speaker 03:
And then he goes on to say that accessing website data, this is in response to a question.

[00:11:44] Speaker 03:
The question is,

[00:11:45] Speaker 03:
does P2 and P1 accessing website data meet the definition, the court's definition of what a web browser is?

[00:11:55] Speaker 03:
And he says, yes, it does, and then concludes that there's an adequate disclosure for purposes of the original patent requirement.

[00:12:05] Speaker 03:
Is it your view that there's a

[00:12:09] Speaker 03:
He's simply A, wrong, or B, that this testimony does not go far enough to actually satisfy the clear and unequivocal requirement.

[00:12:21] Speaker 01:
So I would say both, Your Honor.

[00:12:23] Speaker 01:
So I would urge that this testimony is improper in the context of Section 251 to pull out what, again, what one of ordinary skill in the art like Dr. Dunsmore would infer or understand from the

[00:12:38] Speaker 01:
from the specification.

[00:12:39] Speaker 01:
Again, this is not the case where the analysis is taking an expert's eyes and squinting at the page to read between the lines.

[00:12:47] Speaker 01:
It should be looking at what is actually written on the lines on the page.

[00:12:51] Speaker 01:
But even if you were to think this is a proper thing to consider, I don't think that this particular testimony, and this is something that's relied on heavily in the Red Brief, I don't think this gets there.

[00:13:00] Speaker 01:
Because if you look at what he says, he says, I disagree because of the things that are highlighted here.

[00:13:06] Speaker 01:
He says, here we have two processes.

[00:13:08] Speaker 01:
P1 and P2, and both of them are retrieving data from the network.

[00:13:12] Speaker 01:
And as we discussed earlier, the network is not a website.

[00:13:15] Speaker 01:
That is a generic term that could be any number of things, including website data, but lots of other things too.

[00:13:23] Speaker 01:
And from that, he concludes, and that's exactly what needs to be done by the process of a web browser.

[00:13:28] Speaker 03:
And the next question, maybe this is a case of the lawyer jumping over that

[00:13:38] Speaker 03:
distinction, but the lawyer then moves to and does accessing website data meet the definition, the court's definition.

[00:13:45] Speaker 03:
And he says yes.

[00:13:46] Speaker 03:
And I take it your argument is that he hasn't made the connection between network and website.

[00:13:53] Speaker 03:
The lawyer has in his question, but the expert has not, isn't it?

[00:13:57] Speaker 01:
That's exactly right, yes.

[00:13:59] Speaker 01:
It is true that accessing website data meets the definition, but that does not.

[00:14:03] Speaker 01:
He hasn't said that accessing website data is what's going on here.

[00:14:06] Speaker 01:
Exactly.

[00:14:06] Speaker 01:
Yes, it doesn't follow, but that, you know, this conclusion in the prior sentence doesn't follow from what he said.

[00:14:10] Speaker 00:
Okay.

[00:14:13] Speaker 00:
Counsel, you're into your rebuttal time, and we've used up most of your time, but I'll restore you back to your original time.

[00:14:21] Speaker 02:
Thank you, Your Honor.

[00:14:22] Speaker 02:
Good morning, Your Honors.

[00:14:23] Speaker 02:
May it please the Court.

[00:14:25] Speaker 02:
My name is Christian Hurt, and with William Davis, Eric Benesik, and Rich Vasquez, I'm here today on behalf of Mr. Choffee and the Rosman family.

[00:14:32] Speaker 02:
We also have one of our clients in the gallery today, Morgan Rosman.

[00:14:37] Speaker 02:
Since the discussion was about the original patent issue, I'd like to focus on that issue.

[00:14:43] Speaker 02:
And I think Your Honor's questions about logical process really gets to the heart of this issue and the disclosure in the patent.

[00:14:51] Speaker 02:
So the patent undisputably discloses two logical processes that can access a network, as Judge Toronto was mentioning.

[00:14:59] Speaker 02:
And a web browser process is not some undisclosed species of that or something that we're having to make up.

[00:15:06] Speaker 02:
It's actually expressly in the patent in a number of places as a web browser program.

[00:15:12] Speaker 02:
And specifically as part of the second logical process, and that's in column 16 of the patent.

[00:15:18] Speaker 02:
And indeed, in the first appeal of this case on the claim construction issue, in describing figure one of the patent, the court called the logical process as their web browser processes.

[00:15:30] Speaker 02:
And the reason is in part for what Judge Carano mentioned is in 2004, when you're interacting with a network, web browsing is the way that you do it.

[00:15:40] Speaker 02:
And in fact, in part of the patent in column six, it mentions three flavors of interactive applications.

[00:15:47] Speaker 02:
And one of them's browsing.

[00:15:49] Speaker 02:
The other one's gaming, and the other one's instant messaging.

[00:15:52] Speaker 02:
And so I understand Google's argument in part to be, well, when you get to column 14, we should have just copied that exact disclosure three times when we talk about

[00:16:02] Speaker 02:
interactive network processes because the one example in the lead-in is gaming.

[00:16:06] Speaker 02:
But no one would read the specification that way.

[00:16:08] Speaker 02:
There was the evidence the district court relied on is that particular embodiment covers those interactive network processes.

[00:16:16] Speaker 02:
And I believe it's undisputed that one of them is web browsing.

[00:16:18] Speaker 03:
But I take it that if all, set aside the references to web browsers for a moment, and if all that was present in the 247 patent

[00:16:32] Speaker 03:
was a reference to logical processes, that that wouldn't be enough, simply because web browsing is encompassed within the scope of logical processing.

[00:16:43] Speaker 03:
I do agree with that.

[00:16:45] Speaker 03:
I take it.

[00:16:45] Speaker 02:
Well, I think in a normal case, perhaps, it's not this case for two reasons.

[00:16:50] Speaker 02:
First is web browsing is expressly disclosed in the patent.

[00:16:54] Speaker 02:
But more importantly, even if that weren't true, Google below, their invalidity expert, equated

[00:17:00] Speaker 02:
a logical process to a web browsing process.

[00:17:03] Speaker 02:
And the district court made that finding in its order, and that I don't believe is challenged on appeal.

[00:17:08] Speaker 02:
So your honor's hypothetical.

[00:17:10] Speaker 02:
I'm sorry.

[00:17:11] Speaker 04:
If I remember right, correct me if I'm wrong.

[00:17:14] Speaker 04:
Ray brief, Google's brief said, I think in a footnote, equated is not what was, in fact said, all he said is it's within it and that is the species is within the class.

[00:17:32] Speaker 04:
in the genus, and therefore, that's all you need if you're doing prior art analysis.

[00:17:37] Speaker 04:
I didn't go back and look at the specifics.

[00:17:40] Speaker 02:
Sure, Your Honor.

[00:17:41] Speaker 02:
That is the argument in the grade brief.

[00:17:42] Speaker 02:
This is at appendix 47 to 80 to 81 is that actual testimony.

[00:17:48] Speaker 02:
And Google is correct that it's in the context of prior art.

[00:17:52] Speaker 02:
And what their expert could have said is what Your Honor mentioned.

[00:17:54] Speaker 02:
Well, a web browser process is a species of a logical process.

[00:17:59] Speaker 02:
And for prior art, I just have to find the species.

[00:18:02] Speaker 02:
But instead what I believe is what Dr. Kogan testified to was not that.

[00:18:08] Speaker 02:
He said, it's the same.

[00:18:10] Speaker 02:
So the question was, what about the first logical process that is required here in the claim?

[00:18:16] Speaker 02:
It's the same as the first web browser process.

[00:18:18] Speaker 03:
Now, what Judge Fieldstrap said, and this is, I think, at Act 53 and conclusion of Law 27.

[00:18:26] Speaker 03:
It says, if a person of ordinary skill were recognized that the 247 patent specifications disclosure of a first logical process encompasses a web browser process, then narrowing the disclosed logical process to directly claim a known subspecies is clearly and unequivocally within the scope of the original invention.

[00:18:49] Speaker 03:
Now, it seems to me that that is, on its face, looks like a newly broad characterization of what's required for the original patent requirement, that it isn't enough to say that something that encompasses a subset therefore clearly and unequivocally describes the subset.

[00:19:10] Speaker 03:
Would you agree with that as a general matter?

[00:19:13] Speaker 02:
I would think that would be right in the context of when all the other cases arise and when you're doing a broadening reissue, right?

[00:19:19] Speaker 02:
So in Tara's, the Supreme Court's case in U.S.

[00:19:23] Speaker 02:
Industrial and Forum,

[00:19:25] Speaker 02:
The aspect where the question was, where is the clear and unequivocal disclosure, was with something that had been broadened.

[00:19:32] Speaker 02:
And here, we're talking about something that's been narrowed.

[00:19:35] Speaker 04:
Really, there are no cases that go from genus to species and say, as in prior art law is common, the fact that a genus was disclosed in the prior art

[00:19:50] Speaker 04:
doesn't immediately teach all the species.

[00:19:55] Speaker 02:
The three cases, there is not a federal circuit case on that point that I'm aware of.

[00:19:59] Speaker 02:
The two that are cited are in Taurus and Forum.

[00:20:04] Speaker 04:
But the kind of obviousness law or even anticipation laws that I was just referring to would suggest that it's not always clear and unequivocal

[00:20:19] Speaker 04:
as to a species that is not otherwise called out that fits into a genus.

[00:20:24] Speaker 02:
That's right.

[00:20:25] Speaker 02:
And that's true in the written description context, right?

[00:20:27] Speaker 02:
So if there's a disclosure of a broad genus, there can be times in a 112 area where trying to claim a species later on doesn't have written description support.

[00:20:39] Speaker 02:
And I think that would equally apply in the original patent doctrine.

[00:20:42] Speaker 03:
Or even Afoshure, since presumably clear and

[00:20:45] Speaker 03:
biblical disclosure is narrower than the kind of disclosure required for written discussion.

[00:20:50] Speaker 02:
I believe that's right.

[00:20:51] Speaker 02:
But the difference in this case to Judge Rice and your honest question is, I mean, we're not here, the term the court used in encompassing, I mean, we're not talking about a chemical case where there's a million potential species that fall with under a genus.

[00:21:10] Speaker 02:
The most Google can point- Aren't you-

[00:21:14] Speaker 00:
Aren't you ascribing to a posa certain predictive talents that's not generally available to a posita, especially in view of our case law?

[00:21:38] Speaker 00:
For example, it must appear from the face of the instrument that what is covered by the reissue was intended to have been covered.

[00:21:46] Speaker 00:
Here, it seems to me that perhaps you're saying that a posa through logic for the research can arrive at a determination.

[00:21:56] Speaker 00:
But I'm not too sure that that's the case with the original

[00:22:03] Speaker 00:
patent requirement.

[00:22:05] Speaker 00:
It seems to me, when we say it's clear and unequivocal, that you have to be able to see it on the face and not further divine the claims.

[00:22:18] Speaker 02:
I agree with that, Your Honor.

[00:22:19] Speaker 02:
I think in here you do see it on the face.

[00:22:22] Speaker 02:
in three different ways.

[00:22:25] Speaker 02:
I mean, the most specific, which the district court relied on, was in column 14 in connection with figure six.

[00:22:32] Speaker 04:
Even though web browsing isn't called out in column 14, no specific is called out in figure six.

[00:22:42] Speaker 04:
Correct.

[00:22:43] Speaker 04:
It's perfectly general.

[00:22:44] Speaker 04:
And the one more or less concrete example discussed in column 14 is gaming, right?

[00:22:52] Speaker 02:
That's correct, and two responses to that.

[00:22:54] Speaker 02:
The first is, in column 14, the term is interactive network process.

[00:23:00] Speaker 02:
The patent tells you, and I don't think this is disputed, there's only three of those, instant messaging, gaming, and web browsing.

[00:23:07] Speaker 02:
I believe counsel conceded there's no word-for-word requirement.

[00:23:12] Speaker 02:
And a person of skill in there would read that section in column 14 and know that it's applying to those three very small species

[00:23:21] Speaker 02:
And then the second point on gaming is there's no, the district court, and you can see it in the column, it's not limited to gaming.

[00:23:37] Speaker 02:
But even if it were, both Google's own documents and Mr. Chaffee's testimony say that there isn't this artificial distinction where web browsing and gaming can't be the same thing.

[00:23:49] Speaker 02:
And the distinction, because most games are, at that time especially, played through web browsers, and the issue is the same issue, and that part of the prosecution history that council relies on doesn't make the distinction on gaming, it's about access to the internet.

[00:24:05] Speaker 04:
But ultimately what Google's position... That's the prosecution history on one or more of the reissues.

[00:24:10] Speaker 02:
Correct.

[00:24:11] Speaker 04:
You can eliminate gaming without conceding that gaming and web browsing are non-overlapping categories.

[00:24:21] Speaker 02:
Right.

[00:24:21] Speaker 02:
So in the prosecution history, the distinction was that in Naran, the process couldn't access the network.

[00:24:28] Speaker 02:
And the patentees made that clear by putting in web browsing process.

[00:24:33] Speaker 02:
But the fundamental point in Google's argument is that the word web browser is not in column 14.

[00:24:39] Speaker 02:
A lot of them require that.

[00:24:41] Speaker 02:
And what is there is interactive network process.

[00:24:46] Speaker 02:
And the three flavors of that, we're not talking about a million compounds, the three flavors of that

[00:24:52] Speaker 02:
are messaging, gaming, and web browsing.

[00:24:56] Speaker 04:
This discussion of the very small number of these things is putting into my mind the Kenna Metal case in anticipation law, where I think we have said that sometimes you can have a category that is so small and clear that it actually does, for anticipation purposes, teach

[00:25:22] Speaker 04:
to any reader, the relevant reader, every one of the items that is under that small category.

[00:25:32] Speaker 04:
Is something like that a proper way to think of this?

[00:25:37] Speaker 02:
I do think that's certainly one way to think about it.

[00:25:39] Speaker 02:
I mean, the term web browser process

[00:25:42] Speaker 02:
was construed as a process that can access data on websites.

[00:25:47] Speaker 02:
One way, the most narrow way to look at it is in column 14 where that's disclosed.

[00:25:52] Speaker 02:
The web as a network is disclosed in column 10.

[00:25:56] Speaker 02:
That's certainly one way to look at it, especially under the lens of when we're looking for disclosure and we're going from a broader claim of logical process to a narrower claim of web browser process to see what is actually disclosed in the patent and there's

[00:26:12] Speaker 02:
there's only three members of that interactive network processing class.

[00:26:16] Speaker 02:
And from a practical, yes, Ronald.

[00:26:18] Speaker 03:
I'm sorry, go ahead and put what you thought.

[00:26:20] Speaker 03:
I have a question.

[00:26:21] Speaker 03:
Sure.

[00:26:22] Speaker 02:
From a practical perspective, it really doesn't make any sense for why Mr. Choffee would have to literally cut and paste that paragraph three times, once for gaming, once for web browsing, and once for instant messaging.

[00:26:32] Speaker 02:
Because those of skill would read that and know the point of this patent is predominantly focused on browsing the web and that a web browser is

[00:26:42] Speaker 02:
one of a small set of species in column 14.

[00:26:44] Speaker 03:
Well, to the extent that what you're arguing is that at the time there were very few species of logical processes of the sort that this patent is addressed to that didn't involve web browsing.

[00:27:00] Speaker 03:
Is there any evidence to that effect?

[00:27:03] Speaker 03:
I mean, this is an argument, at least it's

[00:27:07] Speaker 03:
A variant, I suppose, of an argument that is made in the brief, but it's a new variant as far as I can tell.

[00:27:13] Speaker 03:
And I was not aware of anything either in the patent itself or elsewhere in the evidence that suggested that there's a very small set of species under the logical processes category.

[00:27:27] Speaker 02:
Sure, Your Honor.

[00:27:27] Speaker 02:
I mean, if I go back to first principles, this is an affirmative defense that Google's got to raise.

[00:27:33] Speaker 02:
So it would be on them to show that.

[00:27:36] Speaker 02:
All that Google was able to point to was there's dependent claims in the original patent that I think limit a logical process to maybe six or seven things.

[00:27:47] Speaker 02:
Like a word processor, Adobe Acrobat, gaming, messaging, browsing, there's a few like that.

[00:27:54] Speaker 02:
And that's for logical process.

[00:27:56] Speaker 02:
So that's the universe.

[00:27:57] Speaker 02:
And the most anyone identifies, I think it's seven or eight, it's in one of the dependent claims.

[00:28:03] Speaker 02:
But then when we get to column 14,

[00:28:06] Speaker 02:
we're going even narrower to interactive network process.

[00:28:09] Speaker 02:
And for those, I believe it's undisputed, there's only three.

[00:28:14] Speaker 02:
And it's messaging, gaming, and web browsing.

[00:28:16] Speaker 02:
And that column six tells you that in the patent.

[00:28:20] Speaker 02:
And more specifically, the patent tells you in column 16, it specifically identifies a web browser as a logical process.

[00:28:28] Speaker 02:
So we're not in terms of, we're not relying on the fact that this is a small genus

[00:28:35] Speaker 02:
with a small number of species, and the one word triad that's being claimed in this narrow sense isn't disclosed.

[00:28:41] Speaker 02:
I mean, it's expressly disclosed multiple places in the patent.

[00:28:45] Speaker 02:
The issue that Google has with Column 14 is the exact words a web browser processor not listed

[00:28:53] Speaker 02:
as part of an interactive network process, but the patent already tells you in column six that that's one of the three flavors.

[00:29:00] Speaker 02:
Can I switch topics?

[00:29:03] Speaker 04:
I know we have not talked about recapture.

[00:29:05] Speaker 04:
I found it a little hard to understand what your theory of why there's no recapture from going from the original 609 application covering

[00:29:24] Speaker 04:
one processor to the 247 claims covering two, and then back in the two product claims that are at issue here, going back to one.

[00:29:37] Speaker 02:
Yes, Your Honor.

[00:29:37] Speaker 02:
I can address that issue.

[00:29:39] Speaker 02:
And I can see where the confusion may arise.

[00:29:43] Speaker 02:
But it comes down to what the district court found was an uncontested fact.

[00:29:52] Speaker 02:
that the original claims required isolation of the first processor.

[00:29:57] Speaker 04:
And when you say original claims, you mean the 609 applications claims?

[00:30:01] Speaker 02:
Correct.

[00:30:02] Speaker 02:
Both.

[00:30:04] Speaker 02:
Correct.

[00:30:04] Speaker 02:
So the original application claims, as well as the actual claims that issued in the 247 patent, both the district court concluded, and I believe part of it was based on Google's expert testimony and the court's review of the patent

[00:30:22] Speaker 02:
that those claims require that the first processor was isolated from the network.

[00:30:27] Speaker 02:
I don't believe Google challenges that finding on appeal, but once you have that finding, it has two major consequences.

[00:30:36] Speaker 02:
The first is the overlooked aspects issue, because the ultimate claims in the reissue are, so once you realize that the claim was limited to isolation, all the narrowing that happens

[00:30:51] Speaker 02:
with regard to Corthell and going from one processor to two processors, it happens in that universe.

[00:30:57] Speaker 02:
But in the reissue claim, it's over here in a different area where the first process has to be able to access the network.

[00:31:06] Speaker 02:
And so the consequence of that is for overlooked aspects, it's a separate embodiment that's not initially covered by the patent.

[00:31:15] Speaker 02:
Google's argument is, well, you covered logical processes in the first claims, which is true.

[00:31:21] Speaker 02:
But the requirement of isolation means those logical processes of the first processor couldn't be a web browser process, because the web browser has to be able to access the network directly or indirectly.

[00:31:33] Speaker 02:
And so we're in a different embodiment.

[00:31:36] Speaker 02:
And that's part of the district court's overlooked aspects argument or hold-in.

[00:31:42] Speaker 02:
And then the consequence of that same finding on the scope of the claims in the original patent also applies to material narrowing.

[00:31:51] Speaker 02:
because, and the judge did this, I think, sort of as belts and suspenders and said, well, let me take Google at their argument that the plaintiff went from one processor, which is broader to two.

[00:32:03] Speaker 02:
And I'll take that as a narrowing amendment and that it surrendered that.

[00:32:09] Speaker 02:
Well, if you look in the context of the arguments that were made as part of the amendment,

[00:32:15] Speaker 02:
The reason from going from one processor to two to get around Quartel was to add that additional physical isolation.

[00:32:24] Speaker 02:
So it's tied to the first processor is isolated and that the amendments in the reissue, I'm sorry, the reissue claims are a material narrowing related to that because now instead of having a processor that is isolated or a process that is isolated

[00:32:43] Speaker 02:
both processes have to be able to access the internet.

[00:32:47] Speaker 02:
And that's the time.

[00:32:48] Speaker 02:
It's an unusual situation, but it all goes back to what the district court held was the scope of the original claims.

[00:33:03] Speaker 00:
Thank you.

[00:33:03] Speaker 00:
Thank you, Your Honor.

[00:33:05] Speaker 00:
Counselor, we're going to restore you back to your four minutes of rebuttal time.

[00:33:08] Speaker 01:
Thank you.

[00:33:09] Speaker 01:
So I had a few things I wanted to touch on, but I'm, of course, happy to answer any questions, too.

[00:33:14] Speaker 01:
First of all, counsel talked a lot about logical processes and pointed to column 16 where the patent specification discusses logical processes.

[00:33:24] Speaker 01:
It's important to remember that these claims we're talking about require two web browser processes.

[00:33:30] Speaker 01:
Where web browser process is described or talked about in the specification, every single time it's just one.

[00:33:35] Speaker 01:
Column 16, that's the case.

[00:33:37] Speaker 01:
And I believe in column 10, that's the case as well.

[00:33:39] Speaker 01:
It's just one web browser process.

[00:33:40] Speaker 01:
There's never any discussion or description of two web browser processes, which is what is recited in these claims.

[00:33:51] Speaker 01:
Council also talked about there only being three flavors of interactive network processes.

[00:33:57] Speaker 01:
I believe Council referred to column six when discussing that particular point.

[00:34:03] Speaker 01:
And if your honors look there,

[00:34:05] Speaker 01:
This is at lines 15 to 20.

[00:34:09] Speaker 01:
What it says is the interactive nature of many applications, such as gaming, messaging, and browsing.

[00:34:15] Speaker 01:
So it's not like this is just a limited, just these three kind of a disclosure.

[00:34:19] Speaker 01:
It talks about many, many different things.

[00:34:22] Speaker 01:
Here are three examples.

[00:34:24] Speaker 01:
And the browsing example is not discussed later on in column 14, where the plaintiffs are really trying to find disclosure for these claims.

[00:34:32] Speaker 04:
So I take it your position is that the clear and unequivocal standard, which is a gloss on the Supreme Court's language actually heightens it.

[00:34:45] Speaker 04:
But I don't take it that that standard is in dispute.

[00:34:50] Speaker 04:
We've relied on it a couple of times now.

[00:34:52] Speaker 04:
That that is not met.

[00:34:54] Speaker 04:
even in a situation where some genus type language would be recognized immediately as occupied, I don't know, 97% of its territory by three things and some of which are referenced throughout as kind of indistinguishable one from the other.

[00:35:13] Speaker 04:
even if that genus is not limited strictly to three, that's just not enough that the big and obvious, or one of two big and obvious, or one of three two big and obvious examples is just not enough for each of those examples to be clear and unequivocal.

[00:35:35] Speaker 01:
I think that's right.

[00:35:36] Speaker 01:
It's not enough for it to be obvious.

[00:35:38] Speaker 01:
This is not written description under 112.

[00:35:41] Speaker 01:
Under section 251, this is a different standard and a much higher bar.

[00:35:45] Speaker 01:
And I would direct the court to Antares.

[00:35:48] Speaker 01:
At the end of that opinion, I believe on page 1363, there's some discussion in that case about the safety features that were, that the patentee was attempting to claim on reissue.

[00:35:58] Speaker 01:
And the court says, you know, there is some reference to these in the specification, but that was not enough because nowhere in an explicit and unequivocal manner

[00:36:07] Speaker 01:
were the particular combinations of safety features claimed on reissue described separate from the invention that was in the original patent.

[00:36:16] Speaker 01:
I think that decides this case.

[00:36:18] Speaker 01:
It's the same thing here.

[00:36:19] Speaker 01:
There's no separate, explicit, clear, unequivocal description.

[00:36:23] Speaker 01:
Everything that the district court relied on and that plaintiffs point to is, if this, then it could be that, and stacking those kind of inferences together, that is by definition, equivocal.

[00:36:33] Speaker 01:
It could be this, it could be that.

[00:36:35] Speaker 01:
That's not good enough under section 251.

[00:36:38] Speaker 00:
For purposes of 251, can we assume that a Posita understands all of the subspecies that would fit under a particular genus?

[00:36:50] Speaker 01:
Again, I'm not sure that the Posita's view is the correct viewpoint here.

[00:36:54] Speaker 01:
This is supposed to be for the court reading what's actually clearly unequivocally described on the page.

[00:37:01] Speaker 01:
So I think it's...

[00:37:04] Speaker 01:
This is not the situation where the proper analysis is to go in and think about what a posita would glean from what is there on the page.

[00:37:11] Speaker 01:
I think it has to be there directly on the page.

[00:37:13] Speaker 00:
What about just pure logic?

[00:37:15] Speaker 00:
Can a posita say, we have this here, and this equals this, and therefore I have that?

[00:37:21] Speaker 00:
Not the same thing.

[00:37:23] Speaker 00:
If a posita engages in logic similar to what we've heard some of these arguments, is that clear and unequivocal?

[00:37:32] Speaker 01:
Well, again, the Supreme Court in Industrial Chemicals said it's for the court to do that itself, for the court to decide for itself whether it's there under Section 251 to satisfy the original patent requirement.

[00:37:42] Speaker 01:
So I think it's sort of beside the point what a posita would see or think.

[00:37:47] Speaker 03:
Could I ask just one question?

[00:37:49] Speaker 03:
Sure.

[00:37:49] Speaker 03:
Go ahead.

[00:37:50] Speaker 03:
Could you comment on Mr. Hertz' discussion of the second issue, the surrender of the patent?

[00:38:01] Speaker 01:
The recapture, Your Honor?

[00:38:02] Speaker 01:
Recapture, right.

[00:38:03] Speaker 01:
Yes.

[00:38:05] Speaker 01:
So, counsel talked about how there was a link, and I think this is what the district court thought too, in the district court's opinion as I read it, that there was a relationship or a link between the narrowing to two processors or more during prosecution and then

[00:38:27] Speaker 01:
the requirement for web browser processes during reissue.

[00:38:33] Speaker 01:
And I think if you look at the claims in the original application, and in the 247 patent, and even in the reissue patents, the kind of isolation that Council is talking about is not really what's claimed.

[00:38:44] Speaker 01:
It's not about isolating a processor at any stage along the way.

[00:38:47] Speaker 01:
It was about isolating a memory.

[00:38:49] Speaker 01:
Protecting this first memory that has the system files, that's the gist of the invention, is having this protected memory that's isolated.

[00:38:57] Speaker 01:
It's not about the processors being isolated.

[00:38:59] Speaker 01:
The original application claims achieved that memory isolation with one or two processors.

[00:39:05] Speaker 01:
The applicants went to two processors during the original prosecution to get around prior art that had one.

[00:39:11] Speaker 01:
And then on reissue, the claims now again cover one or two, while still achieving this isolation that is the gist of the invention.

[00:39:19] Speaker 03:
That was just physical separation of the processors.

[00:39:25] Speaker 03:
Right.

[00:39:25] Speaker 03:
OK.

[00:39:25] Speaker 03:
Thanks.

[00:39:26] Speaker ?:
We have a question.

[00:39:27] Speaker 00:
Thank you councillor.

[00:39:28] Speaker 00:
Thank you.