[00:00:01] Speaker 03:
Our next case is, I don't know whether it's ATOS or ATOS versus All State Insurance, 2023-16-19 and 16-20.

[00:00:33] Speaker 03:
Mr. Unikowsky.

[00:00:39] Speaker 01:
Thank you, Your Honours.

[00:00:40] Speaker 01:
May I proceed?

[00:00:42] Speaker 01:
Yes, please.

[00:00:42] Speaker 01:
May it please the Court.

[00:00:44] Speaker 01:
We respectfully disagree with the Board's decision for three reasons.

[00:00:49] Speaker 01:
First, the Board erred in its construction of the claim limitation operation indicator.

[00:00:56] Speaker 01:
The board adopted all states construction, a sensor measurement determined from signals from the environment.

[00:01:03] Speaker 01:
That construction conflicts with the plain text of the claim construed in light of the specification.

[00:01:10] Speaker 01:
So to begin with the claim language.

[00:01:12] Speaker 01:
There's two indications in the language of the claim that the board's construction is too broad.

[00:01:18] Speaker 01:
First, the claim drafter used the term operation indicator.

[00:01:23] Speaker 01:
However, under all states' construction, any measurement at all, any sensor determination would be considered an operation indicator.

[00:01:31] Speaker 01:
So if you had a thermometer that measured the temperature, that would be an operation indicator.

[00:01:36] Speaker 01:
Or if you had an accelerometer, measure acceleration, that would be as well.

[00:01:40] Speaker 01:
And I think that if that was the intent of the claim drafter, the claim drafter would have used a more straightforward term like measurement or signal or something like that.

[00:01:49] Speaker 01:
And the fact that the claim drafter used the very specific term operation indicator indicates that the claim drafter and its intent is something narrower.

[00:01:57] Speaker 01:
And I think that analysis is bolstered by the use of the word created.

[00:02:01] Speaker 01:
It says that the operation indicator is created by the onboard component.

[00:02:07] Speaker 01:
And I don't think an ordinary English speaker would usually say something like the thermometer creates the temperature.

[00:02:12] Speaker 01:
I think it'd say something like it detects the temperature.

[00:02:15] Speaker 04:
Does your construction and operation indicator require a conversion step?

[00:02:19] Speaker 01:
Yes, Your Honor.

[00:02:20] Speaker 01:
So I don't think it requires an additional step.

[00:02:23] Speaker 01:
It's the operation indicator is the product of the conversion.

[00:02:25] Speaker 01:
So we're not saying that it's a method step.

[00:02:27] Speaker 01:
It's just that claim term, operation indicator, is what you get after the conversion occurs.

[00:02:33] Speaker 04:
And I think that... What's your best intrinsic support for that?

[00:02:37] Speaker 01:
So I think it's the specification that refers to a conversion pretty much every time it talks about or virtually every time it talks about an operation indicator.

[00:02:45] Speaker 01:
So if I can offer the court an example, it says in column three, a vibration sensor may measure forces over time, i.e.

[00:02:55] Speaker 01:
the signals, and converts them into number of vibrations measured per second operation indicators.

[00:03:02] Speaker 04:
What line number are you reading from?

[00:03:05] Speaker 01:
So it depends on which patent.

[00:03:07] Speaker 01:
I'm at appendix 258.

[00:03:09] Speaker 01:
That's the 609.

[00:03:12] Speaker 01:
The line numbers are a little bit slightly different in the two patents.

[00:03:16] Speaker 01:
Sure.

[00:03:16] Speaker 01:
But appendix 258, you can see at column 3 starting at line 56 or 57,

[00:03:27] Speaker 01:
says, a vibration sensor may measure forces over time, i.e.

[00:03:32] Speaker 01:
the signals, and convert them into number of vibrations measured per second, or operation indicators.

[00:03:38] Speaker 01:
So I think in that discussion, the forces over time is, in Newton's, it's something that will be measured.

[00:03:44] Speaker 01:
It's a sensing device output.

[00:03:47] Speaker 01:
It's just a measurement.

[00:03:48] Speaker 01:
And then it says it'll be converted into this different information, number of vibrations measured per second.

[00:03:54] Speaker 01:
And there's some expert testimony that interprets the specification and explains that an ordinary accelerometer can't produce vibrations measured per second.

[00:04:04] Speaker 01:
Instead, a significant amount of processing would have to occur.

[00:04:08] Speaker 01:
And so I think that's consistent with the claim construction that we've proposed.

[00:04:13] Speaker 01:
You can see a little bit further down, now at appendix 258, column three, line 65, it says, sorry, line 63, it says, an onboard sensor receives signals from the environment, converts them into operation indicators.

[00:04:31] Speaker 01:
Examples of signals from the environment include vibrations, acceleration, change in forces, noise.

[00:04:38] Speaker 01:
So again, I think that's a signal, so to speak, that the acceleration is the signal that's detected.

[00:04:45] Speaker 01:
So that's in, say, meters per second squared.

[00:04:47] Speaker 01:
And then that's converted into the operation indicators.

[00:04:51] Speaker 01:
So for that reason, we respectfully request the board's decision be vacated.

[00:04:55] Speaker 01:
The board's finding of anticipation

[00:04:57] Speaker 01:
was expressly predicated on the board's claim construction, which we believe was too broad.

[00:05:05] Speaker 01:
Unless the panel has further questions, I'm happy to turn to the next portion.

[00:05:08] Speaker 02:
What's the current status of, there's a district court case that's been staying, right?

[00:05:13] Speaker 01:
That's correct.

[00:05:15] Speaker 01:
We've requested a very long time ago, like a year and a half ago, for a Rule 54B partial judgment to appeal the dismissal of the claims on 101 grounds.

[00:05:23] Speaker 01:
The district court has not yet ruled on that motion, so there's the separate order holding that there's a 101

[00:05:29] Speaker 01:
issue, dismissing the claims because they're ineligible under 101.

[00:05:33] Speaker 01:
We do intend to appeal that immediately once we get the chance to do that.

[00:05:37] Speaker 02:
That hasn't been appealed?

[00:05:38] Speaker 02:
No, so we asked the district... All the claims have been found ineligible?

[00:05:42] Speaker 01:
Yes, so we couldn't appeal that right away because there's a trade secrets claim that's still going in the district court, so there's no final judgment.

[00:05:47] Speaker 01:
We asked the district court for a partial final judgment, because honestly, we want to appeal that at the same time as this.

[00:05:53] Speaker 01:
So it could all be before the court together.

[00:05:55] Speaker 01:
The district judge has not ruled on that motion.

[00:05:57] Speaker 04:
Do we know what the holdup is on the 54B judgment rule?

[00:06:01] Speaker 01:
We do not know, Your Honor.

[00:06:02] Speaker 04:
Did opposing counsel oppose the entry in the 54B judgment?

[00:06:06] Speaker 01:
I believe it was opposed.

[00:06:08] Speaker 01:
To my knowledge, we just don't know what the holdup is.

[00:06:10] Speaker 01:
But opposing counsel may correct me on that.

[00:06:14] Speaker 01:
But you know.

[00:06:15] Speaker 04:
Following up on Judge Raina's question, my understanding is the dismissal on 101 grounds covers all the claims that are currently on appeal before us and more?

[00:06:26] Speaker 01:
I believe so.

[00:06:27] Speaker 01:
I object to make certain, but I believe that's the case, yes, Your Honor.

[00:06:30] Speaker 01:
But we, of course, will exercise a right to appeal that judgment at the earliest available opportunity.

[00:06:36] Speaker 02:
Can you address

[00:06:39] Speaker 02:
on the 1621 appeal, the construction, the issue dealing with construction of vehicle in independent states.

[00:06:48] Speaker 00:
That's the next argument, Your Honor.

[00:06:49] Speaker 00:
I'm happy to address it now, but that's actually the next argument.

[00:06:51] Speaker 00:
Do you want to mix up the places?

[00:06:54] Speaker 00:
Yeah, I don't want to mix anybody up.

[00:06:56] Speaker 00:
OK, I'm happy to answer the court's questions, obviously, about either.

[00:06:59] Speaker 00:
Just don't forget it.

[00:07:00] Speaker 00:
I won't forget it.

[00:07:01] Speaker 04:
Are you in the next appeal?

[00:07:03] Speaker 01:
Yes, I am.

[00:07:03] Speaker 01:
So I promise I will get there, Your Honor.

[00:07:06] Speaker 04:
Before we move on to, I sound like you want to move on to the change limitations, but I wanted to ask you a little bit more on this conversion point.

[00:07:14] Speaker 04:
I'm trying to get an understanding of where you're drawing the line in terms of what's needed with respect to conversion.

[00:07:20] Speaker 04:
So that's what's going to be leading to some of the questions I may pose.

[00:07:24] Speaker 04:
But if you were to plot immediately an output measurement over time, would that be something that you consider to be an operation indicator?

[00:07:34] Speaker 01:
I don't think so.

[00:07:35] Speaker 01:
It's a term of degree, so I don't think that the line between merely plotting and actually converting and deriving new information, it's not a very, very clear, solid line.

[00:07:46] Speaker 01:
That's a question of applying the converting term to the prior art.

[00:07:50] Speaker 01:
In this case, we believe that if our construction is adopted, we would prevail because the prior art doesn't disclose anything like conversion.

[00:08:00] Speaker 01:
It refers to an acceleration sensor for instantaneous detection of the motion state of an object by detecting dynamic forces.

[00:08:07] Speaker 01:
So we knew that as a pure detection, no conversion, but exactly where detection, like how much processing of the information

[00:08:14] Speaker 01:
to turn something into a conversion, I guess I'd just say that's a term of degree.

[00:08:17] Speaker 01:
That's for the finder of fact, depending on what the prior art discloses.

[00:08:24] Speaker 01:
So in a particular case, the prior might disclose a very small change to the information.

[00:08:29] Speaker 01:
And I think that the fact finder would have to apply the claim interpretation conversion to the prior art and decide whether that rises to the level of a conversion.

[00:08:40] Speaker 01:
I'll turn to the next argument that we raised.

[00:08:44] Speaker 01:
The next argument we raised concerns the scope of the claim limitation based on a change.

[00:08:50] Speaker 01:
And there's two relevant claim limitations that are relevant here.

[00:08:56] Speaker 01:
So the action performed by the device has to be both based on the state and based on the change in state.

[00:09:04] Speaker 01:
And our basic position here is that those two requirements should be given independent meaning.

[00:09:09] Speaker 01:
Now, there's some dispute between the parties over whether this is really

[00:09:12] Speaker 01:
more of a claim scope question or more of a substantial evidence question.

[00:09:16] Speaker 01:
So we think we went either way, but we do think it is a claim scope question because our arguments are without reference to the prior art.

[00:09:23] Speaker 01:
They're really just looking at the claim itself.

[00:09:26] Speaker 01:
And I think that's a sign that it's more of a claim scope question.

[00:09:29] Speaker 01:
The question is whether the requirement that something be based on a change requires an awareness that a change has occurred, which requires an awareness that the past is different from the present.

[00:09:41] Speaker 04:
With respect to the change limitations, did you contend that the patents rise and fall together?

[00:09:47] Speaker 04:
In other words, if we find against you,

[00:09:49] Speaker 04:
For the 140 pattern, do we have to sign against you for the 609 pattern?

[00:09:53] Speaker 01:
So we've made the same arguments with respect to both.

[00:09:56] Speaker 01:
The 609 does refer to a previous change, whereas the 140 refers to a change.

[00:10:01] Speaker 01:
We view that as a clarifying change rather than a substantive change on what it means.

[00:10:07] Speaker 01:
Obviously, if the court concludes that those are meaningfully different and construes previous change or believe previous change favors us, we would certainly take that.

[00:10:14] Speaker 04:
So it sounds like you argued them to essentially rise and fall together.

[00:10:17] Speaker 01:
Yeah, that's how we've argued the case.

[00:10:19] Speaker 01:
We haven't argued that previous change means like the change before.

[00:10:21] Speaker 01:
I will agree that in the 6-9, the language is slightly stronger in our favor.

[00:10:27] Speaker 01:
So if the court concludes that the scope of that claim favors us and reaches a contrary conclusion on the other patent, then obviously we would accept that outcome.

[00:10:36] Speaker 04:
Could you speak up?

[00:10:36] Speaker 04:
I think some of the people in the courtroom are having trouble hearing.

[00:10:39] Speaker 01:
I'm sorry.

[00:10:39] Speaker 01:
I will speak up.

[00:10:40] Speaker 01:
I apologize, Your Honor.

[00:10:41] Speaker 01:
So the fundamental distinction between the parties, I think, is whether an action can be based on a change if there's no awareness of a change.

[00:10:53] Speaker 01:
So the example we've given in the brief, which also appears in the specification, is suppose you have a device that has volume six when the car is off and then goes up to volume seven when the car is on.

[00:11:08] Speaker 01:
So that's unquestionably an action that's based on the current state.

[00:11:12] Speaker 01:
We don't do that as based on a change in state.

[00:11:14] Speaker 01:
It does coincide with the change.

[00:11:16] Speaker 01:
In other words, you turn the car on and then your phone does something different.

[00:11:20] Speaker 01:
But the phone is always just checking the current state and acting based on that.

[00:11:26] Speaker 01:
It doesn't know that a change has occurred, and so that is not enough to satisfy both limitations simultaneously.

[00:11:33] Speaker 01:
To get to the based on the change limitation, the device has to know that a change has occurred and use the fact of the change as the basis for the action.

[00:11:42] Speaker 01:
So the specification gives what I think is a good example of that.

[00:11:46] Speaker 01:
If you turn your car off, then it'll record the location of the car, but it won't keep doing that while the car is off.

[00:11:53] Speaker 01:
It's the fact of the change that causes the location to be recorded once.

[00:11:58] Speaker 04:
And your viewpoint is a previous state always a previous change.

[00:12:02] Speaker 01:
A previous state, always a previous change?

[00:12:05] Speaker 01:
Yes.

[00:12:05] Speaker 01:
Yes, I think a previous change we just think requires a distinction between a prior state and the current state.

[00:12:11] Speaker 01:
That's what we think is enough to satisfy a previous change.

[00:12:15] Speaker 01:
So my time is expiring, so I'll just say one word on the third issue that we've raised to the court today that has to do with the claim limitation directing, or more broadly, directing the individual upon his request using the portable device to the at least one geographic position.

[00:12:33] Speaker 01:
So the board expressly said that it viewed this as a question of what directing means.

[00:12:39] Speaker 01:
It framed it as a claim construction issue.

[00:12:41] Speaker 01:
And the question was whether directing means giving directions.

[00:12:45] Speaker 01:
The board concluded that directing was broader than giving directions, and we think that's an incorrect claim construction.

[00:12:51] Speaker 01:
I think in ordinary English, directing means giving directions.

[00:12:55] Speaker 01:
Directing and directions are cognates of each other, so I think that we're really applying the plain language of the claim here.

[00:13:03] Speaker 01:
And I think the specification also boosters that interpretation.

[00:13:07] Speaker 01:
Whenever it uses the word direct in some larger word, it always says directions.

[00:13:13] Speaker 01:
It actually contrasts the giving of directions to the recording of the location.

[00:13:18] Speaker 01:
There's this language at one point.

[00:13:21] Speaker 03:
Council, I want to give directions that you're well into.

[00:13:23] Speaker 03:
We're about out of time.

[00:13:25] Speaker 03:
You can continue or save it.

[00:13:27] Speaker 01:
I appreciate the course direction, and I'll save the rest of my time unless there are further questions from you.

[00:13:43] Speaker 05:
May it please the court, Nathaniel Love for Allstate.

[00:13:47] Speaker 05:
I'll start, as counsel did, with Operation Indicator.

[00:13:52] Speaker 05:
First, this additional step that ATOS is proposing is information derived by converting sensing device output.

[00:14:01] Speaker 05:
And the real question is converting what?

[00:14:04] Speaker 05:
What the patent talks about when the patent uses the word convert is converting the signals from the environment into an operation indicator.

[00:14:12] Speaker 05:
And that concept of taking the signals and producing an output is captured by the board's construction, a sensor measurement determined from signals from the environment.

[00:14:21] Speaker 05:
So in the construction the board adopted, which is correct and should be affirmed, determined is a verb that is serving the same function as that kind of converting.

[00:14:29] Speaker 05:
But converting another post-construction is converting something different.

[00:14:33] Speaker 05:
It is converting what they refer to as sensing device output.

[00:14:38] Speaker 05:
And if you read their papers, this entire argument hinges on the idea that a sensing device is some sort of internal component of a sensor.

[00:14:47] Speaker 05:
And what's going on inside a sensor is there's a sensing device, and then there's additional processing that does more of an operation on the sensing device to produce what is ultimately the output of the sensor.

[00:15:00] Speaker 05:
So none of what I just said is described in the patent, and their construction relies entirely on that unspoken idea of what the internal components of a sensor are.

[00:15:09] Speaker 05:
But what we do know from the patent is that that's wrong because the patent equates sensing device and sensor.

[00:15:17] Speaker 05:
Council read to you from the bottom of column three of the patent an example of a vibrational sensing device as an accelerometer.

[00:15:26] Speaker 05:
That passage falls just after the sense that Council read about a vibration sensor measuring forces over time

[00:15:33] Speaker 05:
and converting them into vibrations measured per second, operation indicators.

[00:15:37] Speaker 05:
And right after that, the patent says, an example of a vibrational sensing device is an accelerometer.

[00:15:43] Speaker 05:
So an accelerometer is a sensing device.

[00:15:45] Speaker 05:
So then the question is, is an accelerometer a sensor?

[00:15:48] Speaker 05:
And the answer is yes.

[00:15:49] Speaker 05:
And we know that because the patent tells us that.

[00:15:53] Speaker 05:
On the previous page, column two, it's appendix 237, I believe that's the 140 patent, two lines, in lines 34 to 38,

[00:16:02] Speaker 05:
In a discussion of how accelerometers would be used to determine operational state in this patent, there's the clause, sensors like accelerometer.

[00:16:12] Speaker 05:
So an accelerometer is a sensor, an accelerometer is a sensing device.

[00:16:15] Speaker 05:
Sensor and sensing device mean the same thing in the patent.

[00:16:19] Speaker 05:
And so this distinction that they're trying to create where there's further conversion of sensing device output internal to a sensor

[00:16:27] Speaker 05:
That is just completely inconsistent with what the patent says.

[00:16:30] Speaker 05:
If you read the entirety of the patent and you look at the repeated references to what sensor is doing the work to determine the operational state of the vehicle, it's the accelerometer.

[00:16:40] Speaker 05:
And it says that again and again throughout the patent.

[00:16:42] Speaker 05:
The accelerometer is what's doing the work.

[00:16:44] Speaker 05:
The accelerometer is the sensor.

[00:16:46] Speaker 05:
So their construction hinges on this idea that sensing device and sensor are different, and the patent tells us they're the same thing.

[00:16:54] Speaker 05:
But even leaving that aside, suppose we embraced and considered this two-step notion that a sensor is an internal sensing device plus the additional processing.

[00:17:05] Speaker 05:
The board's construction doesn't exclude a sensor that works like this.

[00:17:09] Speaker 05:
That sensor would still measure signals from the environment and produce an output, so we wouldn't have any problem that that concept is somehow outside of the board's construction.

[00:17:19] Speaker 05:
What ATOS needs is an additional requirement that only sensors that work in that way are within the scope of this claim.

[00:17:28] Speaker 05:
So that can't stand because, first of all, there's no support for it in the patent.

[00:17:33] Speaker 05:
The way they get this idea of a sensing device and then additional processing comes entirely from their expert testimony, which contradicts what the patent actually discloses, which is when the patent says sensing device, that's an accelerometer.

[00:17:46] Speaker 05:
It says a sensor is an accelerometer.

[00:17:48] Speaker 05:
They're the same thing.

[00:17:49] Speaker 04:
In your view, do sensors always do the conversion you described?

[00:17:55] Speaker 05:
So if you read the patent and how the patent describes sensors and it describes them broadly, they measure signals from the environment and they produce something.

[00:18:02] Speaker 05:
They don't simply pass through the signals from the environment, you know, untouched.

[00:18:07] Speaker 05:
They act upon them and produce an output.

[00:18:10] Speaker 05:
And the patent describes those outputs as operation indicators.

[00:18:13] Speaker 05:
You know, Figure 1, for example, when you have an arrow coming in, the signals from the environment into the box that's the sensor, and what's output is operation indicators.

[00:18:20] Speaker 04:
So maybe you're anticipating my next question.

[00:18:22] Speaker 04:
What's your best intrinsic support?

[00:18:24] Speaker 04:
for what we were just discussing.

[00:18:26] Speaker 04:
Is it figure one or other places you want to point me to?

[00:18:29] Speaker 05:
Certainly.

[00:18:30] Speaker 05:
So all of the claim language says that an operation indicator is created by an onboard component.

[00:18:36] Speaker 05:
All the claims say that, except for claim 18 of the 140 pattern, which is not challenged,

[00:18:41] Speaker 05:
And all the claims of the 609, except for claim 25 of the 609, which says at least one sensor generating at least one operation indicator.

[00:18:49] Speaker 05:
And then you go to the figures.

[00:18:50] Speaker 05:
The figure shows the sensor doing it.

[00:18:52] Speaker 05:
Figures 2 through 4, it's a vibration sensor producing vibrations per second as the operation indicator.

[00:19:00] Speaker 05:
And the same passage that counsel read in column three of the patent toward the bottom describes sensors receiving the signals and converting them to operation indicators.

[00:19:10] Speaker 05:
The vibration sensor outputs the vibrations measured per second.

[00:19:16] Speaker 05:
So just consistently over time, it is the sensor collects information from the environment and it produces an output, which is an operation indicator.

[00:19:27] Speaker 05:
The last point I wanted to make on this, or maybe to two points.

[00:19:30] Speaker 05:
Council was discussing at the beginning a thermometer, the idea of just a mere measurement.

[00:19:35] Speaker 05:
How can a mere measurement be an operation indicator?

[00:19:37] Speaker 05:
Again, this passage we keep reading, it says on column three, number of vibrations measured per second is the operation indicator.

[00:19:45] Speaker 05:
So we're using the vibration sensor to make a measurement, and the patent tells us that measurement is an operation indicator.

[00:19:51] Speaker 05:
So a mere measurement can be an operation indicator.

[00:19:54] Speaker 05:
And the last point on this is that there really is no meaningful distinction between the patent and the prior art on this point.

[00:20:01] Speaker 05:
The prior art, Kim, discloses using the same sensors

[00:20:05] Speaker 05:
accelerometers in the same mobile devices, smartphones, in the same way.

[00:20:10] Speaker 05:
A person carries them in a car and that sensor in that smartphone can detect acceleration which you can then use to determine the state of the vehicle, what the individual is doing in the vehicle.

[00:20:22] Speaker 05:
So Kim and the 140 and 609 patents are just entirely aligned on how they describe using these sensors to determine operations.

[00:20:35] Speaker 04:
and the 54B judgment motion still pending and what the objection was.

[00:20:40] Speaker 04:
Yes.

[00:20:41] Speaker 05:
So I think one clarification is that that case has not been stayed.

[00:20:45] Speaker 05:
The district court has that motion under advisement.

[00:20:48] Speaker 05:
It was opposed.

[00:20:49] Speaker 05:
Our position was basically the requirements of 54B, no just reason for delay and so on, were not satisfied in that reason.

[00:20:56] Speaker 05:
There were overlapping factual issues with the trade sever claim and so on.

[00:21:00] Speaker 05:
So it was an opposed motion and it does remain pending.

[00:21:02] Speaker 05:
The court's 101 decision did find all claims of these patents and also the patent in the next appeal.

[00:21:10] Speaker 05:
All of them were found to be ineligible under 101.

[00:21:12] Speaker 05:
So it covers all the claims that are at issue here.

[00:21:14] Speaker 04:
Do we have any sense on when the pending motion on the 54B judgment will be ruled on?

[00:21:22] Speaker 04:
We don't have an indication of that.

[00:21:24] Speaker 05:
We don't have that.

[00:21:24] Speaker 05:
We do not.

[00:21:27] Speaker 05:
So moving to change and previous change,

[00:21:30] Speaker 05:
I actually want to start on that distinction between change and previous change because some of the questions went to that.

[00:21:36] Speaker 05:
So we understood, both below and in the briefing, that APIS's position was, regardless of whether the word previous appears, the same reasoning applies.

[00:21:47] Speaker 05:
And that's actually a quote from their brief.

[00:21:49] Speaker 05:
Then I heard counsel just now make a suggestion, well, maybe if you think it's a little stronger for us than one of them, you could rule for us and move it like that.

[00:21:56] Speaker 05:
That has been forfeited.

[00:21:58] Speaker 05:
We have never had an opportunity to respond to whatever that argument might be.

[00:22:01] Speaker 05:
And certainly our position would be that's not an avenue that's available.

[00:22:04] Speaker 05:
They have given that up.

[00:22:05] Speaker 05:
These claims rise and fall together.

[00:22:08] Speaker 05:
This is a substantial evidence question.

[00:22:11] Speaker 05:
The board made factual findings that Kim discloses taking an action based in part on a previous change in operational state.

[00:22:19] Speaker 05:
That's what the claim requires.

[00:22:21] Speaker 05:
And the board's findings are dependent on 156 to 159.

[00:22:24] Speaker 05:
That's for the 609 patent.

[00:22:27] Speaker 05:
The corresponding pages in the 140 final decision are the same and cite the same evidence.

[00:22:32] Speaker 05:
That is supported by substantial evidence from Kim.

[00:22:34] Speaker 05:
and by expert testimony.

[00:22:36] Speaker 05:
Kim discloses, and this is a quote, automatically provides a corresponding service according to changes in the service environment.

[00:22:44] Speaker 05:
That's at appendix 1148.

[00:22:45] Speaker 05:
That's claim 13 of Kim.

[00:22:48] Speaker 05:
Kim discusses that at paragraph 26 of its specification.

[00:22:51] Speaker 05:
That's at appendix 1150.

[00:22:53] Speaker 05:
So Kim is discussing detecting changes in the service environment.

[00:22:58] Speaker 05:
Appendix 1151, paragraph 43 of Kim, talks about continuously detecting changes in the user's context.

[00:23:06] Speaker 05:
Kim is all about detecting changes.

[00:23:08] Speaker 05:
If you read the entirety of the patent, Kim is describing sequences of states.

[00:23:12] Speaker 05:
The person gets into a car, they drive, they get out of the car, they walk, they enter a building.

[00:23:17] Speaker 05:
At each of these changes in state,

[00:23:19] Speaker 05:
Kim may or may not make a corresponding change in services, depending on what preferences and so on the individual has set.

[00:23:27] Speaker 05:
In addition to that, there's a specific example in Kim that matches exactly one of the changes that is in that large disjunctive clause in claim one of each patent.

[00:23:38] Speaker 05:
That's at 1154 in the appendix, at paragraph 78 of Kim.

[00:23:43] Speaker 05:
when the vehicle reaches the destination and it is detected that the engine is turned off and the noise has disappeared.

[00:23:51] Speaker 05:
Those are words of a transition that is describing a change, and that is specifically one of the changes, a condition from the engine being on to the engine being off that is listed in the claim as one of the type of changes that you could detect in order to satisfy this claim.

[00:24:05] Speaker 05:
That's explicitly disclosed in Kim, along with taking an action in response to it.

[00:24:10] Speaker 05:
In addition to that substantial evidence support, the board found All-States Expert and particularly credited All-States Expert's testimony as more credible because it tracked these claim requirements.

[00:24:21] Speaker 05:
That's at Appendix 159, and it's citing to Appendix 2124 through 31.

[00:24:27] Speaker 05:
There's a long sequence of paragraphs from All-States Expert Dr. Michaelson that the board credited as credible.

[00:24:34] Speaker 05:
So the claim construction issue that they're attempting to raise now is this idea that this claim should be understood to require something more about an awareness of the past.

[00:24:45] Speaker 05:
So first of all, what they present in their brief.

[00:24:49] Speaker 05:
If you look at the blue brief, how this issue is presented, it is on page one.

[00:24:55] Speaker 05:
This is issue two.

[00:24:58] Speaker 05:
Whether the PTAB error in finding the prior reference disclosed the step of a device making a termination based on change, and the last clause here, when the device in the prior reference was never aware that a change had occurred.

[00:25:10] Speaker 05:
That's their challenge here, is whether there was substantial evidence for the idea that the device in the prior reference, Kim, was never aware that a change had occurred.

[00:25:19] Speaker 05:
And clearly, from all the passages we just read, Kim is absolutely aware of changes occurring.

[00:25:24] Speaker 05:
That's what Kim is all about.

[00:25:26] Speaker 05:
So the issue they presented is a substantial evidence question, and it fails because Kim explicitly discloses and is aware that a change has occurred.

[00:25:35] Speaker 05:
The additional requirement they're suggesting now

[00:25:38] Speaker 05:
of an awareness of the past, all the claim requires is sufficient awareness of the past to recognize that something has changed.

[00:25:46] Speaker 05:
You don't need to remember some sequence of states indefinitely into the past.

[00:25:51] Speaker 05:
You just need to know what the current state or the previous state was to recognize that a state has changed.

[00:25:56] Speaker 05:
And that's reflected in what Kim says in that specific example.

[00:25:59] Speaker 05:
The engine was on, but it has now been turned off.

[00:26:02] Speaker 05:
A noise that was present has now disappeared.

[00:26:06] Speaker 05:
So for those reasons, the board's findings are supported by substantial evidence on change and previous change and should be affirmed.

[00:26:17] Speaker 05:
I'll touch on directing the individual.

[00:26:20] Speaker 05:
So the specification does not describe giving directions in any way that distinguishes them from a disclosure like Baker.

[00:26:28] Speaker 05:
Baker was the patent application that was combined with Kim for the two claims that have this directing the individual limitation.

[00:26:37] Speaker 05:
Baker is a location system for locating a parked vehicle.

[00:26:41] Speaker 05:
It starts at appendix 1163.

[00:26:43] Speaker 05:
It has a personal wireless device that incorporates this method.

[00:26:47] Speaker 05:
The entire purpose of Baker,

[00:26:50] Speaker 05:
It's to get the individual back to their car.

[00:26:52] Speaker 05:
That's what Baker is for.

[00:26:53] Speaker 05:
That's the problem that Baker is solving.

[00:26:56] Speaker 05:
And so it's not merely identifying a location or something like that.

[00:27:00] Speaker 05:
Baker gives you a map.

[00:27:02] Speaker 05:
It shows you where you are.

[00:27:04] Speaker 05:
And it shows you where the car is.

[00:27:06] Speaker 05:
It's like you stop at a gas station.

[00:27:07] Speaker 05:
You say, I'm lost.

[00:27:08] Speaker 05:
Where am I?

[00:27:09] Speaker 05:
How do I get to the city?

[00:27:11] Speaker 05:
The guy pulls out a map.

[00:27:12] Speaker 05:
He says, we're here.

[00:27:13] Speaker 05:
We're trying to get there.

[00:27:14] Speaker 05:
That's a way of directing the individual.

[00:27:17] Speaker 05:
What Baker discloses is sufficient.

[00:27:20] Speaker 05:
There was no explanation in the brief or from counsel as to what is different about the idea of giving directions, what additional requirement that imposes such that Baker's disclosure would be insufficient.

[00:27:32] Speaker 05:
In fact, what they wrote in the brief, in their reply brief on page 17, was they have never contended that directing requires providing or giving directions in any specific way.

[00:27:42] Speaker 05:
So it's unclear what this claim construction giving directions would add to directing the individual.

[00:27:49] Speaker 05:
They haven't identified any support in the specification for that, and they haven't explained how that's absent from what Baker's disclosure was.

[00:27:59] Speaker 04:
Am I directing someone within the meaning of the claims if I give them a globe with DC and Chicago highlighted?

[00:28:06] Speaker 04:
Would that be within the meaning of the claims in terms of directing?

[00:28:10] Speaker 05:
So I think it's not clear whether the individual's in DC at that point.

[00:28:15] Speaker 05:
It's not clear whether the map, the globe has roads on it and things like that.

[00:28:19] Speaker 05:
I think that's maybe not sufficient.

[00:28:23] Speaker 05:
What Baker shows you on the screen of your device is a map showing your current location and the location of the parked car.

[00:28:30] Speaker 05:
I suppose it is possible that in the grand scheme of things, those distances could be very far apart.

[00:28:36] Speaker 05:
But what's shown to you on the screen is a map.

[00:28:39] Speaker 05:
assuming you're able to traverse between those distances, you'd be able to find your car.

[00:28:44] Speaker 02:
But it doesn't show how to get to, let's say, your car.

[00:28:49] Speaker 02:
You have a map that shows where you're at and where your car is at, and that's it.

[00:28:54] Speaker 02:
That's true.

[00:28:55] Speaker 02:
That's Baker.

[00:28:56] Speaker 02:
That is what Baker shows.

[00:28:58] Speaker 02:
That's not showing you how to get to your car.

[00:29:03] Speaker 05:
There may be more than one way of getting to the car.

[00:29:07] Speaker 05:
There are examples in the specification of ways you might suggest the location to the person that include GPS, or a screen, or voice prompts.

[00:29:17] Speaker 05:
One thing the specification does propose, and this is Appendix 239, Column 6.

[00:29:22] Speaker 02:
Is directing the individual directing a verb?

[00:29:27] Speaker 02:
I believe so, yes.

[00:29:31] Speaker 02:
So wouldn't that mean that it's a verb?

[00:29:35] Speaker 02:
It's requiring an individual to do something.

[00:29:39] Speaker 02:
I mean, here's the directions.

[00:29:41] Speaker 02:
I'm directing you to your car.

[00:29:44] Speaker 02:
Isn't that more than just simply say it's go that way, or it's so?

[00:29:50] Speaker 05:
Well, it's more than go that way, right?

[00:29:51] Speaker 05:
It shows your current location, and it shows where the car is.

[00:29:54] Speaker 05:
So one way you could give someone directions, say we're here, and where you're trying to get to is there.

[00:29:59] Speaker 05:
And what you're pointing to there is a map.

[00:30:01] Speaker 05:
And that is a way of giving directions.

[00:30:03] Speaker 05:
Obviously, you could give someone more detailed directions, give them step-by-step, turn-by-turn directions.

[00:30:10] Speaker 05:
Give them voice prompts.

[00:30:12] Speaker 02:
But even if it just says your car is in the parking lot, is that directing the individual?

[00:30:21] Speaker 02:
So Baker Sturtley does more than that.

[00:30:23] Speaker 05:
That direction may be sufficient, depending on the circumstances.

[00:30:27] Speaker 05:
That's too broad.

[00:30:30] Speaker 05:
Telling someone your car is in the parking lot may be enough based on... But that could be directing the individual, right?

[00:30:36] Speaker 05:
It could be, yes.

[00:30:37] Speaker 05:
Depending on the circumstances, it could be.

[00:30:39] Speaker 05:
The point I was just trying to make is at column 6, lines 31 to 32, the patent actually says perhaps present the individual with a map and let the user determine the point to return to.

[00:30:50] Speaker 05:
So this idea is totally consistent with the patent.

[00:30:52] Speaker 03:
Council, I'm afraid I have to direct you to your seat.

[00:30:55] Speaker 05:
Thank you.

[00:30:58] Speaker 03:
Mr. Unikowski has some rebuttal time.

[00:31:04] Speaker 01:
Thank you, Your Honors.

[00:31:04] Speaker 01:
Just a couple of points.

[00:31:07] Speaker 01:
First of all, my colleague from Allstate framed the operation indicator claim construction dispute as a question of whether an accelerometer is a type of sensor or sensing device.

[00:31:17] Speaker 01:
Just to remind the court that accelerometer, sensor, sensing device, these are not the claim limitations that we're asking the court to interpret.

[00:31:24] Speaker 01:
The question in this case is, what does it mean to create an operation indicator

[00:31:27] Speaker 01:
I don't think an ordinary speaker of English would say that an operation indicator refers to any measurement in the entire world.

[00:31:33] Speaker 01:
That's the starting premise that I think the court should adopt before going into the specification and trying to seek some guidance as to how we should construe operation indicator in a manner that conforms to the text.

[00:31:44] Speaker 01:
And then I think when you see in the specification, there's a description of the measurement of forces and then the conversion into vibrations measured per second.

[00:31:52] Speaker 01:
That gives some guidance on why operation indicator is narrower than measurement.

[00:31:57] Speaker 01:
I'd like to say one word about the previous change versus change issue.

[00:32:02] Speaker 01:
So we certainly weren't proposing a change from the, so to speak, from the position in our brief.

[00:32:07] Speaker 01:
We think the two issues rise and fall together.

[00:32:09] Speaker 01:
I mean, we made separate arguments on both.

[00:32:10] Speaker 01:
We have an argument in our brief about the world's previous change.

[00:32:13] Speaker 01:
And then you say that the same arguments should apply to change.

[00:32:16] Speaker 01:
Of course, if the court concludes that our first argument is more persuasive than the second argument, it's within the court's discretion to rule with us on one and against us on the other.

[00:32:23] Speaker 01:
That's all I was saying.

[00:32:24] Speaker 01:
I wasn't trying to alter our argument in any way from what's in our brief.

[00:32:29] Speaker 01:
I also respectfully disagree with the interpretation of Kim that was offered by all states counsel.

[00:32:35] Speaker 01:
All it says is you turn off the call, it does one thing.

[00:32:37] Speaker 01:
And you turn on the car, it does something else.

[00:32:40] Speaker 01:
And so when you change the car from off to on, what the device does changes.

[00:32:44] Speaker 01:
That's just an action based on the current state.

[00:32:47] Speaker 01:
And when the state happens to change, the action changes as well.

[00:32:51] Speaker 01:
But I don't think the court needs to reach the interpretation of the Kim reference.

[00:32:54] Speaker 01:
I think the court should vacate on claim scope and allow the board to address that on remand.

[00:33:01] Speaker 01:
And I'm happy to rest on our brief and our argument on directions, unless there are further questions from the court.

[00:33:05] Speaker 03:
Thank you.

[00:33:06] Speaker 03:
Both counsel cases submitted.