[00:00:00] Speaker 03:
Our final case this morning is number 22, 2044, Nicaragua, Texas, LLC versus Bumble Creek.

[00:00:08] Speaker 03:
Thank you, Mr. Callum.

[00:00:11] Speaker 01:
Thank you, Your Honor.

[00:00:12] Speaker 01:
May it please the Court.

[00:00:13] Speaker 01:
If this Court applies the same original patent analysis that it has for decades, the same original patent analysis that the U.S.

[00:00:20] Speaker 01:
Supreme Court applied in industrial chemical, the same analysis that this Court applied just a few months ago in En-Rey Floating Grill,

[00:00:28] Speaker 01:
Then under that analysis, appellant should win.

[00:00:31] Speaker 01:
We clearly and unequivocally disclosed in our original patent an invention that tracks and shares visited geographic location data, separate and apart from any other data, and does so using satellite-based technologies.

[00:00:47] Speaker 03:
OK, so what does the word visit mean in the reissue claims?

[00:00:53] Speaker 03:
You're arguing, as I understand it,

[00:00:56] Speaker 03:
on the infringement issue that it includes identifying somebody's place of residence, right?

[00:01:02] Speaker 01:
I don't think that that's necessarily the argument that we're making.

[00:01:05] Speaker 01:
I think the argument that we're making is that the visit is where a person has been with a location wear device.

[00:01:10] Speaker 03:
I think what bumbles... That would include somebody's residence, right?

[00:01:13] Speaker 03:
Sorry, Your Honor.

[00:01:14] Speaker 03:
That would include the place where somebody resides, right?

[00:01:17] Speaker 01:
If they had been at that place with a location wear device, yes, it would include that.

[00:01:21] Speaker 03:
Okay, but that seems to me to be something that's not remotely

[00:01:25] Speaker 03:
disclosed in the original patent specification, because it's talking about sharing experiences, visits, in other words, a temporary visit to a restaurant or some other place as being new experience.

[00:01:41] Speaker 03:
It's not talking about identifying the location of a cell phone at somebody's residence.

[00:01:48] Speaker 01:
I completely disagree, Your Honor.

[00:01:49] Speaker 01:
I think that it is very much about identifying where the user has been

[00:01:54] Speaker 01:
with that location-aware device, which might be the person's place of residence, maybe their home, and maybe that city.

[00:02:00] Speaker 01:
Because the residence is an experience that they're transmitting to their buddies?

[00:02:04] Speaker 01:
The visit, the where I have been with the location-aware device, is the experience.

[00:02:10] Speaker 01:
That's what our patent says.

[00:02:11] Speaker 01:
If you look at columns four through five, the visit to the location is the experience.

[00:02:15] Speaker 01:
Even though that's not a new experience?

[00:02:18] Speaker 01:
Exactly.

[00:02:18] Speaker 01:
It's not a qualitative analysis.

[00:02:21] Speaker 01:
It doesn't have to be an exciting experience.

[00:02:23] Speaker 01:
Right?

[00:02:24] Speaker 01:
Being on the highway with a location-aware device is an experience.

[00:02:27] Speaker 01:
Living somewhere is an experience.

[00:02:29] Speaker 01:
Exactly.

[00:02:30] Speaker 01:
Being somewhere, and in this case it's being somewhere with a location-aware.

[00:02:33] Speaker 01:
What is the original specification saying that living somewhere is an experience?

[00:02:37] Speaker 01:
The original specification says that visiting a location, being at a location with a location-aware device is the sort of experience activity that we're tracking.

[00:02:47] Speaker 00:
How do we know that the use of the word visit in that context is talking about

[00:02:54] Speaker 00:
visiting a place with a geographic location or geo location, if you would say, compared to like saying someone's at target.

[00:03:03] Speaker 00:
It could be any target in, you know, anywhere in the country, as opposed to this person's in the target at Arlington.

[00:03:12] Speaker 01:
So I think there's a couple of responses to that.

[00:03:14] Speaker 01:
The first, I'd just like to point the court

[00:03:16] Speaker 01:
specifically to some places in the specification where it specifically talks about using geographic locations.

[00:03:23] Speaker 01:
So the first place would be if you look at column three, lines eight, excuse me, nine through 38.

[00:03:29] Speaker 00:
Which pattern are you looking at?

[00:03:32] Speaker 00:
Oh, the original one.

[00:03:33] Speaker 00:
The 139 pattern.

[00:03:34] Speaker 00:
That's right, Your Honor, which is where... Do I remember correctly that the specifications between these different, between the reissue and the patent

[00:03:43] Speaker 00:
are largely unchanged?

[00:03:45] Speaker 01:
That's correct.

[00:03:46] Speaker 01:
The specification remains unchanged.

[00:03:47] Speaker 01:
The claims are different.

[00:03:49] Speaker 01:
The specification here specifically talks about... Tell us what column you're on again.

[00:03:53] Speaker 01:
Column three.

[00:03:54] Speaker 01:
This is at JA264.

[00:04:01] Speaker 01:
So this column in particular, it's distinguishing the visited location database.

[00:04:05] Speaker 00:
What lines are you looking at?

[00:04:07] Speaker 01:
I'm going to focus right now on starting at line 26 where it says the VLD could also store geographic information regarding the location, such as geocoded data.

[00:04:18] Speaker 01:
And before that, what it's talking about is storing geographic information via where a Bluetooth signal has been received, the Bluetooth hotspot that it interacts with, which is, again, a precise location, not just any target in the United States, but it would be this target

[00:04:35] Speaker 01:
with this Bluetooth access point.

[00:04:38] Speaker 01:
And then it also specifically goes further, and it talks about the other methods of tracking location data.

[00:04:44] Speaker 01:
It talks about GPS.

[00:04:45] Speaker 01:
It talks about DGPS, both of which are satellite-based technologies.

[00:04:49] Speaker 00:
That's tracking as opposed to sharing.

[00:04:51] Speaker 01:
That's right.

[00:04:51] Speaker 01:
That's going to be the second part of my answer.

[00:04:53] Speaker 01:
I'm glad that you brought me there.

[00:04:54] Speaker 01:
And that all goes to the choice that either the creator has or the user has, depending on what embodiment the creator is practicing, about how to share

[00:05:03] Speaker 01:
that information.

[00:05:04] Speaker 01:
I think some of the best places to look at that would be if you look at Figure 9.

[00:05:07] Speaker 00:
I recommend looking at the reissue for Figure 9, right?

[00:05:12] Speaker 00:
Isn't that a much better view?

[00:05:14] Speaker 01:
Yes, I was about to say that.

[00:05:15] Speaker 01:
The figures are the same.

[00:05:16] Speaker 01:
The reissue, the photo of Figure 9 on JA-284 is probably the better photo for that.

[00:05:24] Speaker 01:
But also the description of Figure 9 I think is important.

[00:05:28] Speaker 01:
The description of Figure 9 discusses

[00:05:33] Speaker 01:
Specifically, make sure I'm at the right column here, this would be column 9, JA267.

[00:05:42] Speaker 01:
For instance, the name of a restaurant may be used instead of its Bluetooth access point.

[00:05:47] Speaker 01:
So again, we're talking about alternatives here.

[00:05:50] Speaker 00:
What lines are you looking at?

[00:05:52] Speaker 01:
This would be line 41 through 43 of column 9 in the 139 patent, Your Honor.

[00:05:59] Speaker 01:
Again, this is the description.

[00:06:01] Speaker 03:
Where does this talk about being concerned about cell phone location as opposed to places visited by the owner of the cell phone who is acquiring new experiences by visiting?

[00:06:15] Speaker 03:
And visiting is defined in the dictionary as a temporary relocation or going to a place temporarily.

[00:06:23] Speaker 01:
I'm glad you asked that.

[00:06:24] Speaker 01:
And the answer is everywhere in the patent.

[00:06:26] Speaker 01:
Let's start at the... Everywhere in the path?

[00:06:29] Speaker 01:
That's right.

[00:06:29] Speaker 01:
Let's start with... Let's just try one place.

[00:06:33] Speaker 03:
Where does it talk about tracking residents?

[00:06:37] Speaker 01:
Where does it talk about tracking residents?

[00:06:40] Speaker 01:
Well, it specifically talks about if your residence is where you've been with a location-aware device, that would be tracked.

[00:06:47] Speaker 01:
The location-aware device, again, where I was going to point to, let's start with the title.

[00:06:50] Speaker 01:
It's a method and apparatus.

[00:06:52] Speaker 01:
for selectively sharing and passively tracking communication device experiences.

[00:06:57] Speaker 01:
And I think maybe the best place to answer your question, Your Honor, let's look at figure 23.

[00:07:04] Speaker 01:
Again, this is in the original patent and the discussion of figure 23, which occurs at column 16, lines 49 through column 17, line 26.

[00:07:18] Speaker 01:
And what it's specifically talking about there

[00:07:20] Speaker 01:
And just to put the finest point I think I possibly can on it, if you look at line 53 of column 16, it describes, and this is important.

[00:07:35] Speaker 01:
It's important because this is the sort of disclosure that this court has been looking for in cases like Amos, in cases like Emory Floating Grill, and in cases like Emory Peters.

[00:07:45] Speaker 01:
It says that what is necessary is for the user to have a wireless device

[00:07:49] Speaker 01:
which supports a location detection service.

[00:07:53] Speaker 03:
It then says that the method of the location tracking... But where does it say that the purpose of the invention is to track the location of the device as opposed to share experiences with buddies?

[00:08:09] Speaker 01:
I think both, Your Honor.

[00:08:11] Speaker 01:
The tracking of the visited locations with a location-aware device

[00:08:16] Speaker 01:
That is what the invention does.

[00:08:18] Speaker 01:
Those visits to places in the physical world, those are experiences based on any definition of the word.

[00:08:25] Speaker 01:
And the invention is both the tracking of that visit with the location where device and selectively sharing information about that experience with one's buddies.

[00:08:38] Speaker 01:
And that, again, that concept, what I just walked through,

[00:08:41] Speaker 01:
is mirrored in section after section after section.

[00:08:44] Speaker 00:
And I know where it says it is necessary for the user to have a wireless device, 2354.

[00:08:50] Speaker 00:
Are you reading that sentence as meaning for the entire invention and all of the patent?

[00:08:55] Speaker 01:
I think, no, I'm reading that as that is the preferred embodiment or that is the embodiment that's being discussed here and demonstrated in Figure 23.

[00:09:02] Speaker 00:
Right, because Figure 23 says this extends the prevention to cellular telephones.

[00:09:08] Speaker 00:
Precisely.

[00:09:08] Speaker 01:
But that is exactly what the reissue claims here are about.

[00:09:11] Speaker 01:
I just read you a passage from the specification that directly talks about, discloses, the very sorts of things, the very sorts of elements.

[00:09:22] Speaker 03:
But that discloses that that's a necessary part of the invention.

[00:09:26] Speaker 03:
It doesn't disclose that that's what the invention is about.

[00:09:29] Speaker 03:
And what the specification describes is that the invention is about sharing experiences.

[00:09:35] Speaker 03:
I have difficulty understanding how that reaches a situation in which

[00:09:41] Speaker 03:
it tracks a cell phone at somebody's residence.

[00:09:46] Speaker 01:
If you go to column five of the original specification, because I think what your honor is asking for is show me that visiting a place with a location aware device is an experience.

[00:09:58] Speaker 03:
But I'm telling you, visiting in the dictionary sense, and why I'm putting it in ordinary meaning, is a temporary relocation to a particular place.

[00:10:09] Speaker 03:
You don't visit your

[00:10:11] Speaker 03:
permanent residence.

[00:10:13] Speaker 01:
I think I would beg to differ with that, Your Honor.

[00:10:16] Speaker 01:
I think that visit as defined would be going to any place.

[00:10:20] Speaker 01:
That's how we define it in our path.

[00:10:22] Speaker 00:
How I read the district court's opinion was to say that what is not in the original specification is the emphasis on using this invention solely for the purpose of tracking somebody's location.

[00:10:40] Speaker 00:
And that instead, there are many different things that are described as being valuable to share with your buddies, including what websites you went to, what you liked, what you didn't like.

[00:10:53] Speaker 00:
Did you rate something?

[00:10:53] Speaker 00:
Did you comment on something?

[00:10:55] Speaker 00:
Did you give something in emoticon?

[00:10:57] Speaker 00:
Did you visit somewhere?

[00:10:58] Speaker 00:
Did you download something?

[00:10:59] Speaker 00:
Did you watch something?

[00:11:01] Speaker 00:
And that visit is just one of many different things that are contemplated.

[00:11:05] Speaker 00:
Why is it now that you should have claims that are just focused on

[00:11:09] Speaker 00:
visiting or location and specifically even geographic location which seems to be a subset of location.

[00:11:16] Speaker 01:
I think the answer is because we disclosed that that was an embodiment of our original invention.

[00:11:21] Speaker 00:
Where do you disclose that tracking location alone and sharing location alone is an embodiment of your invention?

[00:11:29] Speaker 01:
I'm glad you asked that.

[00:11:30] Speaker 01:
So let's turn again to column three of the original patent.

[00:11:33] Speaker 01:
This is at JA264.

[00:11:37] Speaker 01:
starting at the end of line 23.

[00:11:41] Speaker 01:
It says the user of the Bluetooth device could have the same options for providing additional information regarding the location as for URLs.

[00:11:53] Speaker 01:
If you go back to column two, it tells you what that additional information is.

[00:11:57] Speaker 01:
It's the comments, it's the ratings, it's the emoticons, it's those things.

[00:12:01] Speaker 01:
But what that sentence right there tells you

[00:12:04] Speaker 01:
is, and Judge Soule, I'm glad you asked me this question because I remember you saying something similar to this in one of the previous arguments today.

[00:12:11] Speaker 01:
The insertion of the word could there teaches that not just the user could have those options, it's that the creator, the person practicing aspects of this invention could provide, could choose to provide those options to the user, meaning that must also teach that this device

[00:12:33] Speaker 01:
could be practiced without those options.

[00:12:35] Speaker 01:
You do not have to provide that optionality to the user to provide that additional information about the experience.

[00:12:42] Speaker 01:
It could exist solely.

[00:12:44] Speaker 00:
What you're saying is the disclosure of saying the user, and I think this was in your brief, because the user could just visit places and never review, comment, or do the other things regarding that location, that information would still be tracked.

[00:13:03] Speaker 01:
That's exactly right.

[00:13:04] Speaker 00:
But that doesn't quite answer my question.

[00:13:07] Speaker 00:
Because my question was, where is it disclosed that in addition to tracking URLs and reviews and comments on URLs and emoticons and watching of movies and reading of books and all these different things that a person could do, that you are just going to settle that aside.

[00:13:27] Speaker 00:
And all you're going to do is

[00:13:30] Speaker 00:
provide shared locations?

[00:13:33] Speaker 01:
Two places.

[00:13:34] Speaker 00:
Again, knowing that this is, boy, it's got to be a clear and convincing disclosure for this requirement, right?

[00:13:40] Speaker 00:
It's different than written description.

[00:13:42] Speaker 01:
I'm glad you said that because now there's three things I really want to focus on.

[00:13:45] Speaker 01:
I know I'm running out of time, so I'm going to try to do them quickly.

[00:13:47] Speaker 01:
First, I'm going to point your honors to a place in the specification.

[00:13:50] Speaker 01:
This is, again, this is column two, starting at line 45, the data compiled section.

[00:13:57] Speaker 01:
specifically says that aspects of the present invention include building and making accessible various databases and combinations of databases, indicating that the VUD and the VLD can be practiced both independently and separately.

[00:14:11] Speaker 01:
The other way that we know that is if I can turn your attention to the originally issued claims, which we think it was legal error for the district court here not to consider.

[00:14:19] Speaker 01:
But if this court looks at the original claims, if you look at claim one, independent claim one, claim one is about

[00:14:26] Speaker 01:
practicing this invention with the combination of the VUD and the VLD.

[00:14:29] Speaker 01:
So Judge Stoll, to your question, it's specifically about the combination of tracking the URLs and the visits and the emoticons and all of those things.

[00:14:38] Speaker 01:
Claim 32, however, is just about visited location data.

[00:14:43] Speaker 01:
It is, and just back to your original question, how do I know that experiences equals visiting a location?

[00:14:49] Speaker 01:
Claim 32 tells you that too.

[00:14:51] Speaker 01:
It is a method for sharing computer user experiences including

[00:14:55] Speaker 01:
The only data that's tracked here is collecting and sharing visited location data using a client-side application while visiting a location with a location-aware device that records the visited location.

[00:15:09] Speaker 01:
And then the last phrase of that claim is posting at least a portion of the user's what visited location data for buddies to access according to their defined rights.

[00:15:19] Speaker 03:
So if somebody sold a device

[00:15:23] Speaker 03:
that helped you track a lost cell phone by the location of a lost cell phone.

[00:15:29] Speaker 03:
These reissue claims would cover that?

[00:15:33] Speaker 01:
That's a good question.

[00:15:34] Speaker 01:
It would certainly cover what I'm going through in my mind.

[00:15:40] Speaker 01:
What is required in our patent, the way that I read it, is that the user be at the place with the computer-aware device.

[00:15:49] Speaker 01:
If the user was at the location where the device was found, then yes, I think it would cover that.

[00:15:54] Speaker 03:
Okay.

[00:15:58] Speaker 03:
If there are further questions, I think we're out of time.

[00:16:00] Speaker 03:
We'll give you a minute for rebuttal.

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

[00:16:02] Speaker 03:
I appreciate that.

[00:16:07] Speaker 03:
Mr. Graubart.

[00:16:14] Speaker 02:
Good morning, Your Honors.

[00:16:15] Speaker 02:
Noah Graubart on behalf of AppLE.

[00:16:18] Speaker 02:
May it please the court.

[00:16:19] Speaker 02:
This court's case law compels affirming the district court's summary judgment of invalidity under section 251's original patent.

[00:16:26] Speaker 00:
Can I ask you specifically to get right into this?

[00:16:28] Speaker 00:
Please.

[00:16:28] Speaker 00:
What is your response on the reliance on claim 32 of the original patent is issued?

[00:16:33] Speaker 00:
Why couldn't that be something that they could rely on?

[00:16:37] Speaker 02:
There's, I think, several answers to that, Judge Stoll.

[00:16:40] Speaker 02:
So first of all, I think it's a misnomer to call that the original claims.

[00:16:44] Speaker 00:
I understand.

[00:16:46] Speaker 00:
it's not an original claim that would provide written descriptions.

[00:16:49] Speaker 00:
That's right.

[00:16:50] Speaker 02:
And for the same reason, because it was only added many years after the original patent application was filed, there's nothing original about it.

[00:16:58] Speaker 02:
It doesn't tell us what the original invention was as described in the specification.

[00:17:03] Speaker 00:
Policy-wise, though.

[00:17:05] Speaker 00:
Policy-wise.

[00:17:06] Speaker 00:
Policy-wise.

[00:17:07] Speaker 00:
Because the whole purpose, I think, of the original patent, original invention requirement, or the policy behind it is that you don't want somebody to get a reissue like

[00:17:16] Speaker 00:
a decade later, right?

[00:17:19] Speaker 00:
And be able to say, well, there's this new great technology and I have this kind of, you know, I can pluck out of my specification, put things together to try to cover this new technology.

[00:17:29] Speaker 00:
But here you've got this claim 32 that was in the original patent.

[00:17:35] Speaker 00:
I mean, I'm not saying it discloses it, but why shouldn't you be able to go back and look at the claims for in the original patent before anyone even seeks a reissue?

[00:17:44] Speaker 00:
to see what was encompassed by the inventor.

[00:17:47] Speaker 02:
I think the long and short of it is, Your Honor, that the public is entitled to rely on the patentee's statement in its reissue application that those claims, including claim 32, were erroneous.

[00:17:58] Speaker 02:
There was something wrong, something defective, and they still rendered them.

[00:18:01] Speaker 02:
So just as much as the public is entitled to rely on the original matter that's in the specification as filed, they're equally entitled to rely on the patentee's affirmative characterization of that as, that's not my invention.

[00:18:13] Speaker 02:
And that's why in Antares, the court said, by definition, what's in the originally issued claims cannot provide a clear and unequivocal disclosure of the exact embodiment claimed on reissue.

[00:18:26] Speaker 02:
Because if it was, you wouldn't need to have sought reissue.

[00:18:30] Speaker 02:
It would already be there.

[00:18:31] Speaker 02:
And here's where, in fact, I think the rubber meets the road on that point in this case.

[00:18:36] Speaker 02:
And this goes to some of the questions that Your Honor and as well as Judge Dyke asked to my friend Mr. Hall.

[00:18:43] Speaker 02:
Claim 32 of the originally issued patent doesn't include the word geographic.

[00:18:48] Speaker 02:
And it's a very important distinction, I think, here, that permeates throughout all of the arguments.

[00:18:52] Speaker 02:
And that's because none of the issued claims, and certainly none of the original claims, use the word geographic.

[00:19:00] Speaker 02:
They may use the word location or location data.

[00:19:03] Speaker 02:
But the specification distinguishes between those two.

[00:19:08] Speaker 02:
At column three, lines

[00:19:11] Speaker 00:
25 to 20 make sure I understand what you're saying what you're saying is that When they're to see visiting location data here in the context of this patent specification that means something more general like my target example Precisely that's exactly how I read it your honor that a location can be going to target it can be an example I thought of involving

[00:19:32] Speaker 02:
this court would be 717 Madison Place, the address of this building.

[00:19:37] Speaker 02:
That might be considered geographic data, but the Court of Appeals for the Federal Circuit would be the location.

[00:19:43] Speaker 02:
I can have an experience if I come here and argue at this court, but the geographic coordinates alone, the address, the latitude, longitude, that's not an experience.

[00:19:53] Speaker 02:
That's a geographic location.

[00:19:55] Speaker 02:
It's also not

[00:19:56] Speaker 02:
as your honor said, just visiting a location.

[00:19:59] Speaker 02:
It's something more specific.

[00:20:00] Speaker 02:
And what at column three of the original patent, lines 25 to 27 it says, is that the VLD, the Visited Location Database, also could store geographic information regarding the location.

[00:20:13] Speaker 02:
And that's after having described

[00:20:15] Speaker 02:
using or collecting location information.

[00:20:18] Speaker 00:
This is your argument that those words mean something?

[00:20:20] Speaker 02:
They must mean something.

[00:20:21] Speaker 02:
Otherwise, the patentee would not have called claim 32 erroneous, canceled it, and added that word geographic.

[00:20:28] Speaker 02:
And so that's, I think, the other reason that claim 32 just simply doesn't get the patentee there.

[00:20:34] Speaker 02:
There's one more reason, I believe, that claim 32 doesn't carry the day.

[00:20:38] Speaker 02:
and that's because, as this court said in CFI and in Taurus, the original patent needs to provide the exact embodiment, a clear and unequivocal disclosure.

[00:20:50] Speaker 02:
Most of the elements claimed on reissue, in addition to the word geographic, which is, I think, a different concept,

[00:20:56] Speaker 02:
are not in claim 32.

[00:20:59] Speaker 02:
There's nothing about quantifying relative influence.

[00:21:02] Speaker 02:
There's nothing about using satellite-based methods of collecting geographic data.

[00:21:08] Speaker 02:
So even if we just say, fine, we'll look at claim 32, which I think is wrong for several reasons, including that it would require overruling in Taurus, it simply doesn't satisfy the standard that is set.

[00:21:21] Speaker 02:
And the Supreme Court clarified in industrial chemicals that

[00:21:26] Speaker 02:
When it said it's not enough that the original patent could suggest or suggest the claims claimed unreissued, it needs to have this clear non-equivalent disclosure.

[00:21:41] Speaker 02:
And what that means is this is not the same thing as the 112 analysis.

[00:21:44] Speaker 02:
We need to have the exact embodiment.

[00:21:46] Speaker 02:
We know it's a higher standard.

[00:21:47] Speaker 02:
This is 112 plus, if you will.

[00:21:54] Speaker 02:
kind of coming full circle to the point about geographic location being different from location, I think that feeds into what I think is the crux of Icarongo's appeal is the argument that this is geographic, excuse me, visited geographic location data is somehow a form of experience.

[00:22:11] Speaker 02:
And I don't think, putting aside even the fact that there's a difference between location and geographic location as used in this patent, I don't think that that's correct

[00:22:23] Speaker 02:
either under the ordinary meaning of these words as used in ordinary language, in everyday language, or as used in this patent.

[00:22:31] Speaker 02:
And that's because the... First of all, as I said, one can have an experience at a location, but the geographic location itself is not the experience.

[00:22:43] Speaker 00:
Using the... Do you have certain language in the patent you're relying on for that proposition?

[00:22:48] Speaker 02:
I think the most telling disclosure on that point is at column 18.

[00:22:54] Speaker 02:
And there, the patent makes a distinction.

[00:22:58] Speaker 02:
It juxtaposes experience data and location data.

[00:23:02] Speaker 02:
So first, at the paragraph beginning at line 38, it says, a portion of the user's computer usage experiences are tracked and reported.

[00:23:15] Speaker 02:
Then it goes on later in the paragraph and gives examples of that computer usage experiences like

[00:23:22] Speaker 02:
viewing URLs, downloading files, et cetera.

[00:23:24] Speaker 02:
And then in the very next sentence, at the beginning of the next paragraph, it says, in addition to computer usage experiences, mobile communication device locations can be tracked.

[00:23:35] Speaker 02:
So even if for some reason, under the ordinary meaning in everyday language, a location itself, as Judge Sykes said, my residence, could be considered an experience, that's not the way the patentee used the terms in this patent.

[00:23:48] Speaker 02:
And so, and I think that as we said in our brief, I believe this is a new claim construction argument that's waived, but even putting that aside on the merits, I think it's compelling that both in the everyday usage of the term as well as using the patent, a visited geographic location, let alone a location is not an experience.

[00:24:13] Speaker 02:
And as a result, I think this case lines up very nicely with

[00:24:18] Speaker 02:
a line of cases, starting with industrial chemicals, going on to Antares and Forum US, and then most recently in the Plotin Grill case.

[00:24:26] Speaker 02:
And this is a concept we identified in our brief, but I think was crystallized much better in this court's recent opinion in Plotin Grill.

[00:24:33] Speaker 02:
And that's that when there's an element of the original invention, as described in the original specification, that I believe the words the court used in Plotin Grill are

[00:24:43] Speaker 02:
necessary essential or critical and and and and the patent does not include elements in the reissue claims than those claims are invalid under section two fifty one in in industrial chemical it was the introduction of water as a catalyst that wasn't in the reissue claims the supreme court held them invalid in intars it was the notion of a jet injector which was in all the uh... embodiments in the specification and was not claimed unreasonably

[00:25:14] Speaker 03:
I'm not entirely clear what your position is.

[00:25:16] Speaker 03:
Let's assume that the reissue claim said a method for tracking restaurant visits.

[00:25:23] Speaker 03:
And what it disclosed was recording restaurant visits by individuals and sharing that information with buddies.

[00:25:36] Speaker 03:
Would that be beyond the scope of the original invention or not?

[00:25:40] Speaker 02:
I believe that would be beyond the scope.

[00:25:42] Speaker 03:
Why?

[00:25:43] Speaker 02:
Because the original invention, as described in every embodiment, requires more than the fact that you visited a restaurant.

[00:25:52] Speaker 02:
It requires the ability to collect and share data about that experience, whether it's comments, ratings, thumbs up, thumbs down, emoticons, or the other example the patent gives, and simply saying, I've been to the

[00:26:07] Speaker 02:
whatever the name of, let's say, the old Abbott Grill down the street, that would not satisfy, that would not be the experience data that's required in the original invention.

[00:26:16] Speaker 02:
But I think even further, that hypothetical is a little different than the claims here because of the distinction between visits, location data, excuse me, and visited geographic location data, which is an entirely different concept even more.

[00:26:38] Speaker 02:
Returning to Antares, as I said, that had the jet injector that was not in the reissue claims.

[00:26:44] Speaker 02:
Forum US, similarly, there was consistently throughout the specification, the invention required these arbors to hold work pieces.

[00:26:53] Speaker 02:
And when the reissue claims did not include arbors, this court found that they were invalid.

[00:26:58] Speaker 02:
And floating reel is just the latest example of this same concept, which is where the

[00:27:03] Speaker 02:
original invention required magnets to hold the grill to a flotation device, and the claims did not require those magnets, and this court said that it was invalid.

[00:27:15] Speaker 02:
And it went out of the way just to explain that it does not require, the original patent requirement does not require that the specification have some affirmative language defining a particular element as critical or essential or necessary.

[00:27:31] Speaker 02:
This is not like

[00:27:32] Speaker 02:
the for example the disclaimer context and claim construction where the burden would be on us to identify that from state

[00:27:38] Speaker 02:
Instead, I think in keeping with the fact that the Supreme Court and this court has held that Section 251 is a higher burden, it's a higher standard, the court said we can infer that from the context, from the fact that it is in every embodiment.

[00:27:52] Speaker 02:
And here the thing that's in every embodiment is something more than what's in your hypothetical, Judge Dyke.

[00:27:57] Speaker 02:
It is the collection and sharing of information about that experience at the restaurant, the comments, the emoticons,

[00:28:05] Speaker 02:
thumbs up, thumbs down.

[00:28:06] Speaker 02:
It's always doing more than just that.

[00:28:10] Speaker 02:
I think unless the court has any further questions, I'll cede my time.

[00:28:21] Speaker 03:
Thank you very much.

[00:28:34] Speaker 01:
Thank you, your honor.

[00:28:35] Speaker 01:
I'm going to try to be brief and I'm going to throw some record citations at you in rapid fire.

[00:28:39] Speaker 01:
I hope that's okay.

[00:28:40] Speaker 01:
So there's a couple of things that I really want to point out.

[00:28:43] Speaker 01:
I think the first of which is this concept that location is not the same as geographic location.

[00:28:49] Speaker 01:
If you read the text of the 139 patent, it is very clear that when we're talking about a location, we are talking about a place in the physical world, i.e.

[00:28:58] Speaker 01:
geographic location.

[00:28:59] Speaker 01:
In fact, we use the word location 133 times in the specification, or excuse me, in the original patent, and all but one of those.

[00:29:08] Speaker 01:
is in reference to the kinds of locations tracked by the VLD, which are the locations in the physical domain, where in the real world on a globe, a person visits using a location aware device.

[00:29:21] Speaker 01:
So when we say location in this patent, we do mean geographic location.

[00:29:25] Speaker 01:
Second, I think that the crux of my friend's argument is this concept that the synchonon of our invention is all of the comments, the ratings,

[00:29:37] Speaker 01:
talking about the experience that I had in a place.

[00:29:40] Speaker 01:
That is not true.

[00:29:42] Speaker 01:
That is just the opposite of, in fact, what our patent teaches is the crux of our invention.

[00:29:48] Speaker 01:
What is critical here, and this is all over the place, from where I started from column three, lines 23 through 26, when I said that those options of adding the additional information could be added, start there.

[00:30:00] Speaker 01:
And then we go to figure 23, where it specifically talks about in the description of it on columns 16 through 17.

[00:30:07] Speaker 01:
What it says is necessary is a person possessing the location-aware device, tracking the location where they've been.

[00:30:15] Speaker 01:
An embodiment of the invention can continue to monitor for things like comments and ratings, but those things aren't necessary.

[00:30:21] Speaker 01:
And indeed, at the end of that discussion, it says fewer or more fields related to those activities can be added.

[00:30:29] Speaker 01:
Those are all things on top of the visit to the physical place in the world.

[00:30:34] Speaker 01:
And then if we look specifically at column five, lines five through 15, when it's talking about the activities that are tracked, it says, a user visits a location or other location, excuse me, a user visits a restaurant or other location.

[00:30:50] Speaker 01:
A user who visits may, not does, not must, may respond to their experience

[00:30:58] Speaker 01:
A user's response may be to rate, comment, assign an emoticon, send information to a buddy, download data, or bookmark an item.

[00:31:05] Speaker 01:
What is very clear from our patent is that we've disclosed that these other things, those are the options.

[00:31:10] Speaker 01:
And if you juxtapose that with this court's decision in in-rate AMOS, in-rate AMOS survives with one sentence.

[00:31:16] Speaker 03:
I think we're out of time.

[00:31:18] Speaker 03:
Thank you.

[00:31:18] Speaker 03:
Thank both counsel.

[00:31:19] Speaker 03:
The case is submitted.