[00:00:00] Speaker 01:
Our next case is number 22, 2118, Sony Interactive Entertainment LLC versus Intellectual Pixels Limited.

[00:00:08] Speaker 03:
Mr. Dowd.

[00:00:09] Speaker 03:
Thank you, Your Honor.

[00:00:11] Speaker 03:
So this appeal centers on just one limitation that's recited in all of the challenge claims of the 109 patent, which is the step of, quote, generating at least one updated image.

[00:00:22] Speaker 03:
Sony's prior reference here is called Wilshire, and it expressly disclosed a client-server gaming system where an updated, quote, image is generated, close quote, when the state of a game program running on Wilshire's server is updated.

[00:00:39] Speaker 03:
Patent owner's preliminary response admitted that Wilshire disclosed a server generating updated images.

[00:00:47] Speaker 03:
The board's institution decision acknowledged that Wilshire disclosed generating updated images and that IPL had not disputed that limitation.

[00:00:55] Speaker 03:
The patent owner's response admitted that Wilshire disclosed, again, I'm quoting, and this is from A4261.

[00:01:05] Speaker 03:
Wilshire disclosed that an image generated by a gaming program... Can I just interrupt so you won't run out of time again?

[00:01:14] Speaker 00:
You've got an APA argument here and you've got a substantive argument.

[00:01:18] Speaker 00:
I just want to see where you're taking us.

[00:01:21] Speaker 00:
The APA argument would be, you were caught by surprise.

[00:01:25] Speaker 00:
You didn't ever know they were going to construe it.

[00:01:27] Speaker 00:
So does that entail then a remand to the board so that you will have the opportunity to make arguments on claim construction?

[00:01:34] Speaker 00:
And how does that juxtapose with your substantive argument?

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What are you seeking as relief in the substantive argument?

[00:01:41] Speaker 00:
A reversal of the way the board construed the claim?

[00:01:45] Speaker 00:
A reversal of the obviousness determination?

[00:01:48] Speaker 03:
I think your honor has it.

[00:01:50] Speaker 03:
And the way I would describe it is there is a substantive claim construction error, which is reviewed de novo.

[00:01:57] Speaker 03:
The term generating was misconstrued as precluding generating by use of preexisting images.

[00:02:05] Speaker 03:
Okay.

[00:02:06] Speaker 00:
So even if we were hypothetically to agree with you on the claim construction point, what's the farthest one could go in terms of a remand?

[00:02:15] Speaker 00:
It would be

[00:02:16] Speaker 00:
There are still other issues for the board to consider, even if we reject the board's theory on generating, right?

[00:02:22] Speaker 00:
There's compressing their other limitations.

[00:02:24] Speaker 00:
So this case wouldn't be over.

[00:02:26] Speaker 00:
It would just be go back to the board to deal with the other limitations.

[00:02:31] Speaker 03:
I think that's correct, Your Honor.

[00:02:32] Speaker 00:
It would result in... And there are issues related to compressing and stuff in this case.

[00:02:36] Speaker 03:
There are unresolved issues, and Your Honor's correct.

[00:02:38] Speaker 03:
It would result in a remand with direction under the correct claim construction.

[00:02:42] Speaker 01:
I think that's... Well, I thought you were making two arguments.

[00:02:44] Speaker 01:
I thought, one, you were making a claim construction argument, but I thought you were also arguing that even under the board's claim construction, that

[00:02:54] Speaker 01:
Wilshire still discloses generating because of the doom reference and figure two, I think it is.

[00:03:03] Speaker 03:
That is true, Your Honor.

[00:03:04] Speaker 03:
So if you were to find that the claim construction was wrong, you could still find that this generating limitation was disclosed.

[00:03:11] Speaker 04:
But if we found the claim construction was right, if we found the claim construction is correct, you still are seeking to have the case vacated and remanded, right?

[00:03:20] Speaker 03:
Based on the disclosures within Wilshire itself, yes, Your Honor.

[00:03:24] Speaker 03:
Okay.

[00:03:24] Speaker 04:
And the fact that it expressly refers to generating, I guess.

[00:03:27] Speaker 03:
It does.

[00:03:28] Speaker 03:
And so what happened here is you have a limitation generating, you have a prior reference that expressly discloses generating, and the board engaged in a claim construction for the first time in its final written decision that was different than what it said in its ID.

[00:03:46] Speaker 03:
Its ID said that the disclosure of generating in Wilshire was enough for the limitation.

[00:03:51] Speaker 03:
It then changed its construction to say the disclosure of generating in Wilshire is different.

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Generating means something different in Wilshire than it does in the 109 patent.

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And that is both a claim construction issue and a warning.

[00:04:05] Speaker 04:
What did they say generating means in the 109 patent?

[00:04:08] Speaker 03:
So they said for the 109 patent, they say generating requires

[00:04:21] Speaker 03:
Generating requires creation of a new image in response to updating the state of the interactive software application.

[00:04:34] Speaker 03:
That's A20.

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And at A22, they follow up by stating selecting a pre-existing image does not meet the generating limitation.

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So they create this mutually exclusive definition, where on the one hand, they say the 109 patent does not cover

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If you're selecting images and compiling them to create a new composite.

[00:04:54] Speaker 03:
On the other hand, they say Wilshire doesn't disclose generating, but as Judge Dyke, you were correct.

[00:05:01] Speaker 03:
It absolutely discloses generating.

[00:05:02] Speaker 03:
It discloses it expressly.

[00:05:04] Speaker 01:
We don't care about the claim construction if we.

[00:05:07] Speaker 01:
conclude that the board is wrong and that Wilshire does disclose generating a new image, right?

[00:05:13] Speaker 03:
I think that's true, but to Judge Prost's point, I think there's still a compressing issue, and so that would still result in a remail.

[00:05:22] Speaker 04:
Would you say what we need to look at is whether there's substantial evidence to support the board's finding that Wilshire doesn't teach generating?

[00:05:34] Speaker 04:
Do you think there's anything in the expert report, I guess, intellectual pixel experts report, that talks about wheelchair not teaching generating alone?

[00:05:47] Speaker 03:
I think Dr. Hart, who is the expert for IPL, actually conceded that generating is disclosed in wheelchair.

[00:05:59] Speaker 03:
He did so pretty expressly.

[00:06:01] Speaker 03:
His point.

[00:06:02] Speaker 03:
Let me get there.

[00:06:10] Speaker 03:
So it starts at A3117 and carries over to A3118.

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And here, just to set the stage, Dr. Hart is addressing the compressing limitation

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And your honors will appreciate that this is a method where you generate an image, and then the next step after the image has been generated is to compress.

[00:06:37] Speaker 04:
And then to transmit, right?

[00:06:39] Speaker 03:
And then finally you transmit.

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And so starting in paragraph 61, Dr. Hart is addressing the sequence, but he's addressing the compressing limitation.

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And he is accepting that the image generated by the game program running on the server host computer

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of Wilshire has already happened.

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So he's accepting in paragraph 61, and this is 3118, the image generated by the game programmer running on the server host computer of Wilshire.

[00:07:11] Speaker 01:
In 62, he repeats the... I don't think your characterization of his testimony is correct.

[00:07:16] Speaker 01:
I think he's saying that Wilshire discloses generating if by that you mean

[00:07:23] Speaker 01:
the contents of a pre-existing compressed image file, which is in paragraph 62.

[00:07:28] Speaker 01:
I don't think he can see that if a new image is required, that Wilshire discloses that.

[00:07:36] Speaker 01:
If I'm wrong, show me where he says that.

[00:07:38] Speaker 03:
Well, in paragraph 62, and I'll also take you under to paragraph 63, but in paragraph 62, he's addressing MPEG compression and whether it discloses MPEG compression

[00:07:51] Speaker 03:
of the image that has already been generated.

[00:07:54] Speaker 01:
Where does he say that Wilshire discloses the generating of a new image?

[00:08:00] Speaker 01:
I don't see that he says that.

[00:08:02] Speaker 03:
But what he's saying is that Wilshire, he's objecting to whether there's compression of the image generated by the game program running

[00:08:12] Speaker 03:
on the server host computer of Wilshire.

[00:08:15] Speaker 04:
Is it more fair to say that he never challenges whether Wilshire teaches generating an image?

[00:08:22] Speaker 03:
He certainly doesn't do that.

[00:08:23] Speaker 03:
And we can see in the patent owner response.

[00:08:27] Speaker 04:
I mean, he never expressly says, Wilshire generates an image, right, period, full stop.

[00:08:33] Speaker 04:
But he certainly doesn't ever say that Wilshire doesn't generate an image either.

[00:08:37] Speaker 03:
I would agree he does not challenge that Wilshire

[00:08:41] Speaker 03:
Discloses generating and if we go to the patent owner response, but it doesn't address the question of whether Wilshire discloses generating a new image Well, what he does say is he he does say and this was why I was going to paragraph 63 answer my question He doesn't say that he says image elements generated by the game program referring to Wilshire but that's in the context of

[00:09:08] Speaker 01:
You know, you need to come here and answer the questions if something isn't there to admit that it's not there.

[00:09:18] Speaker 01:
It's not there.

[00:09:19] Speaker 01:
It doesn't say that Wilshire discloses generating a new image.

[00:09:24] Speaker 01:
You may still win, but not because their expert admitted you were right.

[00:09:32] Speaker 03:
Fair enough, your honor.

[00:09:33] Speaker 03:
I just need to say, if we go to the patent owner's response,

[00:09:38] Speaker 03:
It does say, and I'm just quoting from A4261, Wilshire disclosed that an image generated by a gaming program located on the server was transmitted to the client over a network.

[00:09:51] Speaker 03:
To me, that's a pretty direct statement.

[00:09:54] Speaker 03:
It doesn't tell us what they mean by generating, whether they mean a pre-existing image or a new image.

[00:10:00] Speaker 03:
But it's the same term, Your Honor.

[00:10:03] Speaker 03:
And so Wilshire is evidence of what a person of ordinary skill in the art would understand generating to mean.

[00:10:10] Speaker 03:
And if generating

[00:10:12] Speaker 03:
whatever it means, especially when you consider it, this is part of the, the, uh, issue under the APA.

[00:10:19] Speaker 03:
There wasn't actually, this was not a term proposed for construction.

[00:10:22] Speaker 03:
And if you go through and you look at what, uh, the 109 patent discloses, it actually discloses that the way in which an image is generated is by, um, selecting from among preexisting image.

[00:10:40] Speaker 03:
It says,

[00:10:42] Speaker 03:
The visual server receives the image modifying data from the client, where the image modifying data corresponds to an image in a graphics API recognizable to the visual server.

[00:11:00] Speaker 03:
Well, if the command corresponds to an image that's already in the server, that's a preexisting image.

[00:11:09] Speaker 03:
And so the 109 patent discloses exactly the same thing as Wilshire.

[00:11:14] Speaker 03:
Conversely, and this is, I think, a key point, Wilshire discloses Doom as an embodiment of the game program running on Figure 3's system.

[00:11:28] Speaker 03:
And it does so through lexicography.

[00:11:31] Speaker 03:
It says expressly the terms game and gaming as used herein include Doom.

[00:11:37] Speaker 03:
There was no dispute that doom meets the generating limitation.

[00:11:41] Speaker 03:
Doom creates new images on the fly.

[00:11:44] Speaker 00:
Yeah, but the board discounted doom just because it was listed in the background section.

[00:11:49] Speaker 00:
It was listed just one of any number of things.

[00:11:52] Speaker 00:
So there was no specific calling out of doom for that purpose, right?

[00:11:57] Speaker 03:
But there is a calling out.

[00:11:58] Speaker 03:
There is, and that's the error.

[00:12:00] Speaker 03:
It defines the terms game and gaming through lexicography in quotes, as used herein, meaning used through this patent, to include doom, and then it

[00:12:10] Speaker 03:
invokes those terms when describing figure two.

[00:12:14] Speaker 03:
It says in figure two, game program 112, game using the definition that includes doom.

[00:12:21] Speaker 04:
Where's your definition at?

[00:12:23] Speaker 04:
You're looking at what, column two?

[00:12:25] Speaker 03:
The definition is column one, which is A1340, starting at line 26.

[00:12:32] Speaker 03:
The terms game and gaming, as used here in include, and then down at line about 38,

[00:12:39] Speaker 03:
video-based games such as Doom.

[00:12:43] Speaker 00:
I think you two have a question mark under display update image.

[00:12:48] Speaker 03:
That is a decision box.

[00:12:50] Speaker 03:
It's deciding, based on the command that's been received, the game decides, do I need to change something on the display?

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Do I need to update the display?

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And if the answer is yes, that's explained on A1343, column 7.

[00:13:05] Speaker 03:
It says, initially,

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And I'm reading now from line about eight.

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Game program 112 is executed on the server host computer.

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So we've seen that that game can be Doom.

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It's defined to include Doom.

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And then at line about 18, the image is generated by game computer program 112 and is passed on.

[00:13:30] Speaker 03:
So game computer program is defined to include Doom, because that's the definition of game.

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And that

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That error is fatal to the analysis of the board.

[00:13:42] Speaker 01:
What did your expert say about the Doom references and the specifications?

[00:13:47] Speaker 03:
He went through and explained how it generates in real time.

[00:13:51] Speaker 03:
And he even, I think, reproduced images from Doom.

[00:13:57] Speaker 01:
Show me where he discusses this.

[00:14:01] Speaker 01:
In my recollections, he said Doom requires a new image, right?

[00:14:06] Speaker 03:
It requires generating images in response to inputs.

[00:14:10] Speaker 03:
And I'm looking at A2.

[00:14:13] Speaker 01:
The question is, does it require a new image if we accept the board's claim construction?

[00:14:19] Speaker 03:
Oh, I think I have, Your Honor.

[00:14:21] Speaker 03:
Yes, he does.

[00:14:23] Speaker 03:
And I think he describes that at A2316 to 317.

[00:14:26] Speaker 03:
2316.

[00:14:38] Speaker 03:
In there, he's saying, using preloaded images or preexisting images would not make sense for interactive games like Doom, which generate updated images in response to user inputs in real time.

[00:14:52] Speaker 03:
And that was what the board said would meet its definition of generating.

[00:14:58] Speaker 04:
Can I ask you about problem seven quickly?

[00:15:01] Speaker 04:
Absolutely, your honor.

[00:15:04] Speaker 04:
One of the things that I was thinking is part of the problem in understanding this reference may be that it talks about sending the image and says that it could be all these different kinds of things, including files.

[00:15:19] Speaker 04:
But then it goes back in time and talks about generating the image, right?

[00:15:24] Speaker 04:
You know, it's a little out of order in that it talks about first you determine, is an image required?

[00:15:30] Speaker 04:
Then you determine the image may be sent.

[00:15:33] Speaker 04:
And then it says, the image is generated.

[00:15:36] Speaker 04:
Typically, wouldn't sending the image occur after the image is generated?

[00:15:41] Speaker 03:
It would, Your Honor.

[00:15:43] Speaker 03:
And I think I'm in the same portion of column seven.

[00:15:47] Speaker 03:
What it's describing are simply types of different file types that could be used for transmission.

[00:15:53] Speaker 04:
And so that step that's referring to the file is referring to something that occurs, that's made after the image is generated.

[00:16:04] Speaker 03:
So the sequence, as I understand it, is the image is generated.

[00:16:07] Speaker 03:
It is then transmitted.

[00:16:09] Speaker 04:
Right.

[00:16:10] Speaker 04:
And just to add a little bit more, I'm referring to flow chart.

[00:16:12] Speaker 04:
Is an image required?

[00:16:14] Speaker 03:
Right.

[00:16:15] Speaker 04:
Then the image is generated.

[00:16:16] Speaker 04:
Then it's sent, and it might be sent as, for example, an MPEG file.

[00:16:22] Speaker 03:
Right.

[00:16:22] Speaker 03:
And you can see that in the, we're right now in between steps 220 and 230 in figure two, where you're deciding, do I need to update?

[00:16:31] Speaker 03:
And then if I do, then I'm sending the video.

[00:16:33] Speaker 03:
This discussion in column seven kind of fills in that what happens in between those two steps.

[00:16:38] Speaker 03:
And it says that the game program running on the server generates the image to be transmitted.

[00:16:44] Speaker 03:
And that, we would submit, is a disclosure of this limitation from the 109 patent.

[00:16:52] Speaker 01:
OK.

[00:16:52] Speaker 01:
Thank you, Mr. Downey.

[00:16:53] Speaker 01:
Thank you, Your Honor.

[00:17:01] Speaker 02:
Mr. Wilson.

[00:17:01] Speaker 02:
Thank you, Your Honors.

[00:17:06] Speaker 02:
This appeal should be affirmed for one simple reason.

[00:17:10] Speaker 02:
That is, the board's finding that Wiltshire does not disclose generating an updated image in response to updating the state of the interactive software application is supported by substantial evidence.

[00:17:23] Speaker 02:
I'm having some difficulty with that.

[00:17:25] Speaker 01:
Your expert didn't say that about Wiltshire.

[00:17:31] Speaker 01:
Their expert said that Wilshire Disorder is generating a new image.

[00:17:38] Speaker 01:
The specification, figure two, complying with the definition of gain to include doom, seems to recognize that a new image is generated, at least for some gains, including doom.

[00:17:55] Speaker 01:
How can the board reach the conclusion that it did?

[00:17:59] Speaker 01:
What's the support for?

[00:18:01] Speaker 02:
So, Your Honor, there are multiple things.

[00:18:03] Speaker 02:
Let's start with the basic embodiments that are actually described in the specification, and we'll push aside Doom for a moment.

[00:18:13] Speaker 02:
The embodiments that are described are casino games, and the board found... If you don't understand how you can put aside Doom, that's the problem.

[00:18:23] Speaker 02:
So, let me jump to that, Your Honor.

[00:18:25] Speaker 02:
First, the wheelchair never describes

[00:18:29] Speaker 02:
doom in conjunction with figure two.

[00:18:33] Speaker 04:
Can I interrupt you for a minute?

[00:18:35] Speaker 04:
We're sure, in its preferred embodiment, does specifically say an image is generated by game computer program 112.

[00:18:44] Speaker 04:
And I don't see anything in your expert submission saying anything about how that sentence means other than that it

[00:18:56] Speaker 04:
generates an image in the same way that the patent suit does.

[00:19:01] Speaker 04:
Because he does have arguments that there's no generation followed by compression followed by transmission.

[00:19:06] Speaker 04:
But there is no argument that it doesn't generate an image when it says, specifically expressly, that it generates an image.

[00:19:13] Speaker 02:
So first, Your Honor, I think he does say that because he says the image can just be a pre-existing image.

[00:19:19] Speaker 02:
And if it's a pre-existing image, it's not being generated.

[00:19:22] Speaker 04:
Can be.

[00:19:23] Speaker 02:
It can be, yes.

[00:19:24] Speaker 04:
In some environments, it can be.

[00:19:26] Speaker 04:
It can be.

[00:19:27] Speaker 04:
That means nothing.

[00:19:28] Speaker 04:
The question is whether in some environments it's generated, right?

[00:19:33] Speaker 04:
Because we're looking for what the reference teaches.

[00:19:35] Speaker 04:
And even if sometimes images come from a pre-existing file, that doesn't mean that the reference doesn't sometimes generate an image.

[00:19:43] Speaker 02:
That's correct, Your Honor.

[00:19:45] Speaker 02:
On the second point, my second point in relation to that is,

[00:19:49] Speaker 02:
Whether our expert says anything at all or not does not determine whether Sony has met its burden of showing that the reference affirmatively discloses this limitation.

[00:19:59] Speaker 02:
And there is no disclosure in this reference.

[00:20:01] Speaker 02:
And Sony cites to none that these images are generated in response to updating the state of the interactive software application.

[00:20:10] Speaker 02:
The passage in column seven says nothing about when these images are generated.

[00:20:14] Speaker 02:
And if we turn over to Colman.

[00:20:16] Speaker 00:
And your argument on the in-response portion of the limitation, does the board cite that at all, those words, in response to?

[00:20:25] Speaker 02:
Absolutely, Your Honor.

[00:20:27] Speaker 02:
Let's take a look at appendix page 20 from the board's file written.

[00:20:40] Speaker 02:
The ultimate dispute here before the parties and what leads Sony to assert falsely that there's been a claim construction is whether pre-existing images can satisfy the limitation.

[00:20:50] Speaker 01:
That was the dispute.

[00:20:51] Speaker 01:
That's a different question.

[00:20:54] Speaker 01:
I thought you were arguing that there was something in the board's decision about not satisfying the response to.

[00:21:01] Speaker 01:
In other words, maybe generating includes old images and new images, but it doesn't somehow satisfy the in-response.

[00:21:10] Speaker 01:
That's correct, Your Honor.

[00:21:11] Speaker 02:
If we look at Appendix 20.

[00:21:13] Speaker 02:
But 20 is the claim construction.

[00:21:16] Speaker 02:
I disagree, Your Honor.

[00:21:17] Speaker 02:
I don't think it's a claim construction.

[00:21:18] Speaker 02:
I think it's a finding of fact.

[00:21:20] Speaker 02:
The Court says we agree with Patent Owner that generating an updated image, as claimed, requires creation of a new image in response to updating the state of the interactive software application.

[00:21:32] Speaker 04:
Well, that last part, in response to updating the state of the interactive software application, is simply repeating the plain claim language.

[00:21:41] Speaker 04:
So where is it that they say, so where is it that the board says wheelchair doesn't teach the part about in response to updating the state of the interactive software application?

[00:21:52] Speaker 02:
Over at appendix 26, your honor, the second sentence from the top of the page.

[00:22:00] Speaker 02:
Petitioner does not argue these preloaded images are generated in response to updating the state of the interactive software application as required by the claims.

[00:22:09] Speaker 02:
Sony didn't even challenge this before the board.

[00:22:12] Speaker 02:
And now they're coming and saying, no, no, no, that satisfies the claim.

[00:22:15] Speaker 02:
There was a claim construction that excluded this.

[00:22:18] Speaker 04:
Hang on.

[00:22:18] Speaker 04:
We're assuming, of course, that we agree that the only images created by Wheelchair are preloaded.

[00:22:30] Speaker 04:
Of course, it all goes together.

[00:22:32] Speaker 04:
Preloaded images are not going to be in response to updating the state of the interactive software application.

[00:22:38] Speaker 04:
Because they're preloaded.

[00:22:40] Speaker 04:
So they kind of go together hand-in-hand, generating and whether the generating is in response to updating the interactive software application.

[00:22:51] Speaker 02:
Right?

[00:22:52] Speaker 02:
That's correct, Your Honor.

[00:22:53] Speaker 02:
If we look at, it's throughout their analysis, but we can turn back one page to page 25.

[00:22:59] Speaker 04:
But where is your support for the idea?

[00:23:02] Speaker 04:
You said that there's independent support apart from your expert

[00:23:08] Speaker 04:
for showing why Wiltshire doesn't generate images, I guess we'll say, on the fly or in response to the updating of the software.

[00:23:18] Speaker 02:
Your Honor, the board is addressing it right there on page 25.

[00:23:20] Speaker 04:
No, I'm asking you, where's the evidence to support the board's opinion?

[00:23:24] Speaker 04:
That's a different question.

[00:23:25] Speaker 02:
The text of Wiltshire.

[00:23:27] Speaker 04:
The text of Wiltshire.

[00:23:29] Speaker 04:
So you're relying on the fact that Wiltshire says sometimes, like I think it's in column 8, sometimes images are

[00:23:38] Speaker 04:
existing.

[00:23:40] Speaker 02:
What I'm relying on your honor is the full disclosure of Wiltshire.

[00:23:43] Speaker 02:
Starting in column seven where it says the image is generated by game computer program 112.

[00:23:47] Speaker 02:
It does not say when.

[00:23:49] Speaker 02:
It does not say in response to user update.

[00:23:52] Speaker 02:
It just says the image is generated.

[00:23:54] Speaker 02:
There's no sequence of events there and this is what we are... That seems to be an argument that the board didn't address.

[00:24:03] Speaker 01:
I think we're asking where did the board

[00:24:06] Speaker 01:
rely on that argument.

[00:24:08] Speaker 01:
I don't see that.

[00:24:09] Speaker 01:
I see them as saying there's no generating in Wilshire because it requires a new image, and Wilshire doesn't disclose generating a new image.

[00:24:18] Speaker 01:
I don't see them relying on the in response to argument that they're making.

[00:24:23] Speaker 01:
So take a look at appendix page 24.

[00:24:28] Speaker 02:
They quote Dr. Foote's testimony.

[00:24:35] Speaker 02:
middle of the page, and then right after it.

[00:24:38] Speaker 02:
They say, we do not find Dr. Fook's testimony persuasive because Wiltshire's disclosure does not support that updating or modifying the image displayed on the client necessarily requires generating an updated image in response to the updated game state instead of simply selecting a pre-existing image to display as argued by Pat Noor.

[00:24:58] Speaker 02:
Again, that is the limitation they're relying on over and over again.

[00:25:02] Speaker 04:
Why do you think the board used the language necessarily required?

[00:25:06] Speaker 02:
because they have to show that Wiltshire's silence on this point necessarily results in disclosure because it's not explicit.

[00:25:17] Speaker 02:
There's nowhere that Wiltshire says this explicitly.

[00:25:19] Speaker 02:
So they're even addressing the implicit disclosure and saying it would necessarily have to be the case because Wiltshire is silent on this point and it's not.

[00:25:30] Speaker 04:
So when the board sees the word generating here in Wiltshire, they're not giving it the same meaning

[00:25:36] Speaker 04:
as what they read from the patent and suit.

[00:25:39] Speaker 02:
That's correct, Your Honor.

[00:25:40] Speaker 02:
This is not a case about the meaning of the word generating.

[00:25:44] Speaker 04:
No, I'm saying, I think it is.

[00:25:46] Speaker 04:
I think you just said the opposite.

[00:25:48] Speaker 02:
OK, I'm sorry.

[00:25:48] Speaker 04:
I misunderstood.

[00:25:49] Speaker 04:
I'm saying that the board saw the word generating in Wiltshire.

[00:25:54] Speaker 04:
And because Wiltshire didn't say, by generating, we mean creating a new image, the board said, that's not good enough.

[00:26:03] Speaker 04:
And we're going to give the word generating as used in the 602 Wiltshire patent a different meaning than our understanding of generating as used in the patent and suit.

[00:26:11] Speaker 02:
I don't think that's what they did at all.

[00:26:13] Speaker 04:
Is there a common meaning?

[00:26:14] Speaker 04:
Is there any evidence on what generating means in the field of creating images?

[00:26:22] Speaker 02:
There's none in this record because it was undisputed before the board.

[00:26:26] Speaker 04:
What does it mean, undisputedly?

[00:26:30] Speaker 02:
Creating a new image.

[00:26:32] Speaker 00:
Can I ask you about, on page 25, on the board's decision, Appendix 25, it says, we'll share silence on how images displayed at the client are updated or modified, renders, petitioners, contentions deficient.

[00:26:48] Speaker 00:
What do we make of how?

[00:26:51] Speaker 00:
Was the board imposing a kind of requirement that they not only have to disclose it, but they have to kind of enable it?

[00:26:59] Speaker 00:
That said, what do you read into that sentence?

[00:27:02] Speaker 00:
What was the board requiring?

[00:27:03] Speaker 02:
I think what the board was requiring, what the board was stating, is that Wiltshire discloses that an image is generated.

[00:27:11] Speaker 02:
We can all see that in column seven.

[00:27:13] Speaker 02:
It doesn't say when, and it doesn't say that it's in response to updating the state of the interactive software application, which is what the claim requires.

[00:27:21] Speaker 02:
That's what it was saying.

[00:27:22] Speaker 02:
It doesn't say how these images or when they're generated.

[00:27:26] Speaker 02:
Because it doesn't.

[00:27:27] Speaker 02:
And Wiltshire's silence means that Sony cannot... Well, it doesn't say when.

[00:27:32] Speaker 00:
The sentence I read says there's silence on how images displayed are updated or modified.

[00:27:40] Speaker 00:
That feels like a kind of enablement inquiry, not an obviousness inquiry.

[00:27:46] Speaker 02:
I don't think so, Your Honor.

[00:27:47] Speaker 02:
And understand the argument here was Wiltshire discloses this.

[00:27:51] Speaker 02:
Not that Wiltshire renders it obvious, this particular limitation.

[00:27:55] Speaker 02:
Their only argument was Wiltshire discloses this.

[00:27:58] Speaker 02:
And the board found they did not.

[00:28:00] Speaker 04:
Can I ask you a question?

[00:28:01] Speaker 04:
Where in your papers did you argue that Wiltshire doesn't disclose generating an image where generating means creating a new image?

[00:28:11] Speaker 04:
I just don't see it in your papers.

[00:28:14] Speaker 04:
I read your papers as arguing that Wiltshire doesn't teach a series of things, including compression.

[00:28:23] Speaker 02:
So if you take a look at appendix 4281.

[00:28:25] Speaker 04:
Is it paragraph 11?

[00:28:37] Speaker 02:
Paragraph 11.

[00:28:38] Speaker 04:
Oh, it's not paragraph 11, sorry.

[00:28:39] Speaker 02:
Yeah, sorry.

[00:28:40] Speaker 02:
That's just a continuation of the site.

[00:28:41] Speaker 02:
But the sentence right after that.

[00:28:43] Speaker 02:
It says, images preloaded onto the client are not being generated in response to updating the state of the interactive software application as required by claims one and eight.

[00:28:52] Speaker 02:
Rather, the images are pre-existing and cannot meet the requirements of claims one and eight, even if they are compressed.

[00:28:59] Speaker 02:
That's a very clear argument.

[00:29:01] Speaker 02:
We made this argument over and over again throughout this section, but there's a very clear statement of it.

[00:29:08] Speaker 02:
And I'll point, Your Honors, to

[00:29:10] Speaker 04:
But where do you see Wiltshire doesn't teach?

[00:29:12] Speaker 04:
I mean, I understand this sentence is true, of course, images preloaded on no client aren't generated.

[00:29:19] Speaker 04:
But where do you say Wiltshire only teaches images preloaded on a client or Wiltshire doesn't teach generating an image?

[00:29:27] Speaker 04:
Because it's undoubted.

[00:29:29] Speaker 04:
There is a part of Wiltshire after disclosure of this main embodiment where Wiltshire says, oh, the images could be preloaded.

[00:29:38] Speaker 04:
And they say could be.

[00:29:40] Speaker 04:
They don't say they are, they say could be.

[00:29:42] Speaker 02:
That's correct, Your Honor, and the board addressed that.

[00:29:44] Speaker 02:
And the board said, yeah, whether they're preloaded or not doesn't matter because the implication is that they pre-exist.

[00:29:51] Speaker 04:
OK, but what I'm asking you is a different question.

[00:29:54] Speaker 04:
I asked you kind of two questions, so I understand.

[00:29:57] Speaker 04:
Where do you say specifically that Wheelchair only teaches preloaded images?

[00:30:04] Speaker 04:
and wheelchair doesn't teach generating an image full stop.

[00:30:08] Speaker 04:
Because what you've referred me to just says that images preloaded on a client are not generated.

[00:30:15] Speaker 02:
So if you take a look at page 4280, the beginning of the middle paragraph

[00:30:28] Speaker 02:
So we walk through the three steps there.

[00:30:30] Speaker 02:
And we say, in particular, Wilshire did not disclose compressing an updated image generated in response to user input as required by the claims.

[00:30:39] Speaker 04:
Your bold is on compressing an updated image.

[00:30:42] Speaker 02:
That's correct, Your Honor.

[00:30:43] Speaker 02:
But that's because.

[00:30:44] Speaker 04:
And the sentence prior to that says, Wilshire doesn't describe three claim limitations in a row, generating, compressing, and transmitting.

[00:30:54] Speaker 04:
Where do you talk about generating alone?

[00:30:56] Speaker 04:
I'm just not seeing it.

[00:31:00] Speaker 02:
So 4282, the bottom of the top paragraph.

[00:31:07] Speaker 02:
We say, even if not preloaded onto the client, simply selecting a pre-existing image to display does not involve generating at least one updated image.

[00:31:15] Speaker 04:
Compressing the at least one updated image and transmitting.

[00:31:17] Speaker 04:
Okay.

[00:31:25] Speaker 02:
And your honors, if I can do one final thing, I want to point out something here.

[00:31:31] Speaker 02:
They make this argument that Wiltshire discloses the use of doom with figure two.

[00:31:39] Speaker 02:
The board rejected that, which is a finding of fact that is supported by substantial evidence.

[00:31:44] Speaker 02:
But if we look over here at column 12, they describe other games that can be used.

[00:31:50] Speaker 02:
And in particular, they say games, and I'm looking at column 12,

[00:31:54] Speaker 02:
This is appendix 1345.

[00:31:55] Speaker 02:
Games such as chess, backgammon, hearts, or poker can be used in place of the games described herein.

[00:32:01] Speaker 02:
Those games are described in column one.

[00:32:04] Speaker 02:
Why is Wiltshire mentioning them again if it meant to disclose all of these games in column one for use with figure two?

[00:32:11] Speaker 04:
Generally, when we have a prior reference we're looking at and it teaches alternative teachings, you can either do A or you can either do B, we're supposed to read that reference for all it teaches, right?

[00:32:23] Speaker 04:
A and B?

[00:32:24] Speaker 02:
That's correct, Your Honor.

[00:32:26] Speaker 04:
I mean, why doesn't that apply here?

[00:32:28] Speaker 04:
That some games wouldn't require generating on the fly as opposed to pre-made images.

[00:32:36] Speaker 04:
I mean, the fact that one of the games that's described as being used undoubtedly requires generating new frames in the way that you interpret the term.

[00:32:48] Speaker 04:
Why can't we read the reference for all that it teaches?

[00:32:51] Speaker 02:
Because, Your Honor, the reference doesn't specifically disclose the use of doom in conjunction with Figure 2.

[00:32:58] Speaker 01:
Why does it need to?

[00:32:59] Speaker 01:
It defines game, and game is used in Figure 2, and it defines game to include doom.

[00:33:06] Speaker 02:
Because Dr. Fuchs opines on all this detail about doom, none of that is in Wiltshire.

[00:33:13] Speaker 02:
It's unclear how this figure two system would be implemented with DOOM, and Wiltshire doesn't tell us that.

[00:33:21] Speaker 01:
But there was no dispute that DOOM requires the generating of new images, right?

[00:33:26] Speaker 01:
That's correct.

[00:33:28] Speaker 01:
Yes.

[00:33:30] Speaker 01:
OK.

[00:33:31] Speaker 01:
I think we're out of time.

[00:33:32] Speaker 01:
Thank you, Mr. Wilson.

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

[00:33:33] Speaker 01:
Are there any questions for Mr. Down?

[00:33:36] Speaker 01:
OK.

[00:33:36] Speaker 01:
Thank you both, counsel.

[00:33:37] Speaker 01:
We're pleased to submit it.