[00:00:00] Speaker 01:
Our first case for argument is 22-2041, Abago Technologies versus Netflix.

[00:00:06] Speaker 01:
Mr. Young, please proceed.

[00:00:14] Speaker 03:
Good morning, Your Honors.

[00:00:15] Speaker 03:
May it please the Court?

[00:00:16] Speaker 03:
I'm Dan Young with Corals and Brady, representing Abago Technologies.

[00:00:20] Speaker 03:
This case involves the Board's finding that the prosecution history of the 976 patent, the Betz patent,

[00:00:28] Speaker 03:
and related evidence to that prosecution history.

[00:00:31] Speaker 03:
Is it relevant to its decision that the second limitation of claim one was disclosed by the Nowher Hayes reference?

[00:00:38] Speaker 04:
Is this a claim construction issue?

[00:00:40] Speaker 03:
Your Honor, it is the application of the plain and ordinary meaning of a term in light of the intrinsic evidence, including the prosecution history.

[00:00:48] Speaker 03:
So yes.

[00:00:50] Speaker 03:
Yes?

[00:00:52] Speaker 03:
I mean, it's the application of the plain and ordinary meaning of the term.

[00:00:55] Speaker 03:
The board did not expressly construe

[00:00:58] Speaker 03:
nor did the parties ask the board to construe the second limitation of claim one of the patent.

[00:01:04] Speaker 03:
And the board applied the plain and ordinary meaning.

[00:01:07] Speaker 03:
And as the case law of this court says, that the plain and ordinary meaning is informed by the intrinsic evidence of the patent, including the specification and the prosecution history.

[00:01:15] Speaker 03:
What's your claim construct?

[00:01:18] Speaker 03:
The claim construction is that the term means exactly what it says, and the board applied that construction in the prosecution history to distinguish a reference called Pruitt.

[00:01:29] Speaker 04:
I would have thought you would say that there was some claim construction based on what happened with Pruitt in the prosecution history, but you're saying you're not offering a claim construction.

[00:01:42] Speaker 03:
Well, the claim, Your Honor, the one at issue is that the

[00:01:47] Speaker 03:
What was added during prosecution was during the selection process, the selected server being selected independent of input from a requesting application subsequent to selection of the web service.

[00:02:03] Speaker 03:
And so that means exactly what it says.

[00:02:05] Speaker 03:
There is no client input.

[00:02:08] Speaker 03:
during the selection process.

[00:02:09] Speaker 03:
And so a person of ordinary skill reading the prosecution history, reading the patent, would understand that.

[00:02:15] Speaker 03:
And the patent discloses two different types of systems.

[00:02:18] Speaker 03:
And if you look at the patent, figure one and figure two describes that difference.

[00:02:23] Speaker 03:
And so the way the claim was originally written, claimed figures one and figure two would be encompassed by that selection process.

[00:02:31] Speaker 03:
And when you look at figure two of the

[00:02:37] Speaker 03:
Figure two of the 976 patent, you'll see that the requesting application is butting up right against the web services.

[00:02:45] Speaker 03:
In that situation, the client with the requesting application would be making the selection and would have input, whereas in figure one, there is a proxy server.

[00:02:57] Speaker 04:
That's not the way we do client construction.

[00:03:00] Speaker 04:
We don't compare a piece of prior art that was considered in prosecution with another piece of prior art.

[00:03:08] Speaker 04:
You look at the language, you look at the specification, you look at the prosecution history.

[00:03:13] Speaker 04:
People offer competing claim constructions, and based on the process and what's available, we come up with a claim construction, but you're not asking for that.

[00:03:24] Speaker 04:
You're asking us to shortcut the whole thing by comparing one piece of prior art to another.

[00:03:30] Speaker 03:
Oh, no, no, Your Honor.

[00:03:31] Speaker 03:
We're not asking for anything different or unique in this case.

[00:03:34] Speaker 03:
We're not applying the prosecution history in a disclaimer or waiver context.

[00:03:41] Speaker 03:
It's simply that oftentimes in construction, you'll want to say that the term actually means this.

[00:03:47] Speaker 03:
In this case, the term means exactly what it says, and the client

[00:03:51] Speaker 03:
the requesting application does not have input in the selection process.

[00:03:56] Speaker 03:
And when the examiner looked at Pruitt, the examiner applied it exactly the same way, exactly what the plan order meeting is.

[00:04:03] Speaker 03:
The plan order meeting does not just mean the terms in a vacuum.

[00:04:07] Speaker 03:
The plan order meeting has to mean something.

[00:04:09] Speaker 03:
It means a person of ordinary skill in the art, whether he or she is looking at the intrinsic evidence, would understand this is how I'm going to apply this term.

[00:04:17] Speaker 03:
It means what it says.

[00:04:18] Speaker 00:
What about figure three?

[00:04:20] Speaker 00:
You've got a service, consumer requesting service, and then a registry determining service.

[00:04:36] Speaker 00:
Figure three of, I guess we pronounce it, Nahar Hayes.

[00:04:41] Speaker 03:
Well, figure three of Nahar Hayes, yes, your honor.

[00:04:49] Speaker 03:
Right, so the figure, and this is exactly what we were saying in our briefing.

[00:04:55] Speaker 03:
When you look at figure three of now or haze, there's a request.

[00:05:00] Speaker 03:
Then there's certain policies that are applied.

[00:05:02] Speaker 03:
So the requesting application of the client will make a request for a web service.

[00:05:06] Speaker 03:
And there's a bunch of policies that are applied.

[00:05:09] Speaker 03:
And then at the, in block 306, it says apply, and then you return a provider or providers

[00:05:19] Speaker 03:
best able to perform the service, and then in block 308, it says, identify provider best able to perform the service.

[00:05:27] Speaker 03:
And then it stops.

[00:05:28] Speaker 03:
It doesn't say what happens after that, after that identification of the best available server.

[00:05:33] Speaker 03:
And whereas in Pruitt, it has exactly the same process.

[00:05:37] Speaker 01:
But at the end... I guess, like Judge Steck, what I'm struggling with is your framing of the issue.

[00:05:44] Speaker 01:
If the board articulated the exactly correct claim construction, and this is not, in fact, a question of law claim construction appeal, then really your appeal is focused on the application of that claim construction to the prior art, and that falls into the substantial evidence territory.

[00:06:01] Speaker 01:
Is that accurate?

[00:06:03] Speaker 03:
Well, Your Honor, as we said, what the board found in this primary purpose of appeal, and this is on Appendix 36, what the board said was,

[00:06:13] Speaker 03:
We do not agree that Pruitt's disclosure and the board's appeal decision, that's the appeal decision in the file history, regarding Pruitt are relevant to the determination of whether the claim subject matter would have been obvious over Now or Haze and why.

[00:06:26] Speaker 03:
And then they also said what's also irrelevant is that Now or Haze provides the same, substantially same disclosure as Pruitt and what's also, also the board found was irrelevant was the Netflix's expert, his acknowledgement that the process in Pruitt and the process in Now or Haze

[00:06:41] Speaker 03:
are the same.

[00:06:41] Speaker 03:
And the board, so it's a question of relevancy.

[00:06:44] Speaker 01:
I'm sorry, counsel.

[00:06:44] Speaker 01:
Counsel.

[00:06:44] Speaker 01:
Yes, Your Honor.

[00:06:45] Speaker 01:
You didn't answer my question at all.

[00:06:47] Speaker 01:
Where my trouble is, is I think the same trouble Judge Steick articulated right out of the gate, which is trying to understand what your appeal really is.

[00:06:56] Speaker 01:
Is it an appeal of claim construction, which is a question of law, or is it an appeal of the application of that claim construction to a particular reference, which is a question of fact that we review for substantial evidence?

[00:07:07] Speaker 01:
Just tell me which of those two buckets your appeal falls in to start.

[00:07:10] Speaker 03:
the application of the claim construction.

[00:07:12] Speaker 03:
And this is a question of relevancy.

[00:07:14] Speaker 03:
The board found that this evidence is irrelevant.

[00:07:17] Speaker 03:
Relevancy is a question of law.

[00:07:18] Speaker 04:
It's not relevant if it's not a question of claim construction.

[00:07:22] Speaker 04:
If it's a question of the application of the plain, ordinary meaning of the claim and the facts of this case, as Chief Judge Moore said, it's a question of substantial evidence.

[00:07:32] Speaker 04:
And correspondingly, in the jury trial context, we've held that there's no claim construction.

[00:07:39] Speaker 04:
You just ask whether the reasonable meaning of the claim language is properly applied to the reference in question.

[00:07:49] Speaker 04:
And it's not, you know, it's not de novo review.

[00:07:53] Speaker 04:
It's substantial evidence.

[00:07:55] Speaker 04:
And so don't you have a problem with that?

[00:08:01] Speaker 03:
No, Your Honor.

[00:08:02] Speaker 03:
The first step, obviously, in every invalidity analysis is scope of the claims.

[00:08:08] Speaker 03:
Plain and ordinary meaning.

[00:08:08] Speaker 03:
And the plain and ordinary meaning is informed by all the intrinsic evidence.

[00:08:11] Speaker 03:
So what we're saying is the court didn't apply the plain and ordinary meaning of the term correctly in view of

[00:08:19] Speaker 03:
the prosecution history, and the other intrinsic evidence in this case.

[00:08:23] Speaker 03:
And by doing so, because at the end of the day, after the board's decision, it's not possible to understand how Pruitt, which was distinguished in the file history through the claim amendment, how that falls outside of the scope of the claims, but yet now Rahe's disclosure, which is identical for all practical purposes for this appeal, would fall inside the claim and therefore invalidate.

[00:08:50] Speaker 03:
So it's the scope of the claims that is at issue.

[00:08:54] Speaker 03:
So that is a claim construction issue.

[00:08:57] Speaker 03:
We're not saying that the board applied the incorrect words to the claim.

[00:09:02] Speaker 03:
We're saying that they applied the claim construction incorrectly in view of the intrinsic evidence.

[00:09:08] Speaker 03:
So we're not saying that the board.

[00:09:11] Speaker 04:
That's exactly what Hewlett-Packard says you can't do in the district court context.

[00:09:15] Speaker 04:
I don't see why this is any different.

[00:09:20] Speaker 03:
The issue is that a person of ordinary skill is going to have to have reviewed all of the intrinsic evidence.

[00:09:35] Speaker 04:
You do not sort of have an alternative claim construction approach when there's been no claim construction.

[00:09:44] Speaker 04:
If there's no claim construction, you just look at the words.

[00:09:47] Speaker 04:
You don't look at the prosecution history.

[00:09:48] Speaker 04:
That's what Hewlett-Packard says.

[00:09:50] Speaker 04:
And you haven't explained to me why it's any different when the board is doing this than when the district court is doing this.

[00:09:59] Speaker 03:
Because when the board applied the term, which is the term at issue,

[00:10:04] Speaker 03:
And Nowher Hayes discloses, and as we mentioned in the briefing, maybe this is the best way to explain it then.

[00:10:11] Speaker 03:
In the Nowher Hayes briefing, after you get to block 308, it doesn't say what happens.

[00:10:16] Speaker 03:
But then with the exact same phraseology, identifying best available in figure five, the reference says exactly that, that the client can decide whether to use that one identified server.

[00:10:33] Speaker 03:
as you look at the file history, if that happens, that is client input.

[00:10:38] Speaker 03:
And so the Nauerhays reference doesn't invalidate, doesn't disclose limitation two for exactly the same reason that Pruitt was distinguished.

[00:10:49] Speaker 03:
So it is, the board misapplied the term at issue, limitation two, when it looked at the

[00:11:01] Speaker 03:
Nahar Hayes' reference, because Nahar Hayes' reference discloses client input.

[00:11:05] Speaker 03:
And the board disregarded that evidence.

[00:11:11] Speaker 03:
And the analysis the board applies, looking at Nahar Hayes' reference, is informed by, among other things, the intrinsic evidence, including the prosecution history, where the board in the appeal decision looked at the reference and did exactly the same thing and said, this client input

[00:11:30] Speaker 03:
is impermissible.

[00:11:31] Speaker 03:
This makes it fall outside the scope of the claim.

[00:11:35] Speaker 03:
So even if regardless of the claim construction issue the board misapplied the term to the evidence because the evidence discloses client input the same way that Pruitt discloses client input and therefore both of those references should fall outside the scope of the claims.

[00:11:55] Speaker 03:
And when you look at the totality of the

[00:11:58] Speaker 03:
Nowher Hayes reference, everything speaks to the fact that the client is making the decision.

[00:12:04] Speaker 03:
Because remember, the claim that issue is a method for connecting to a web service.

[00:12:10] Speaker 03:
So you have to request the service, you have to identify or select the server, then you look up the address, then you make the connection.

[00:12:20] Speaker 03:
That selection in Nowher Hayes is made by the client.

[00:12:24] Speaker 03:
exactly the same way that that selection is made by the client in Pruitt.

[00:12:30] Speaker 03:
So the board looked at these references, found that the client made the decision, but then found that all this evidence related to Pruitt, which informs how that term should be applied, is irrelevant.

[00:12:44] Speaker 03:
So Your Honor, if you don't have any other questions, I will say the rest of my time for report.

[00:12:47] Speaker 01:
Very good.

[00:12:48] Speaker 01:
Mr. Ponder?

[00:13:00] Speaker 02:
Good morning, and may it please the court, Chris Ponder for Appellee Netflix.

[00:13:04] Speaker 02:
I'd like to start with the substantial evidence that supports the board's finding that Norhouse's Figure 3 satisfies Limitation 1B.

[00:13:12] Speaker 01:
Well, I'd rather you start with the question that we were struggling with, which is, is this appeal related to claim construction or related to the application of claim construction to a piece of prior art?

[00:13:25] Speaker 02:
Netflix believes the issue here is substantial evidence.

[00:13:31] Speaker 01:
That's not what I asked.

[00:13:32] Speaker 01:
I didn't ask what you thought the standard review was.

[00:13:34] Speaker 01:
I asked you whether you thought this appeal was an appeal of claim construction or whether you think this appeal is an appeal of the application of claim construction to a particular prior art reference.

[00:13:44] Speaker 02:
I believe it's the application of the claim language to the prior art reference.

[00:13:51] Speaker 01:
Would you, the one thing that jumped out at me that caused me pause when I read the board's opinion is that sort of statement that seems strange to me that the prosecution history is irrelevant.

[00:14:03] Speaker 01:
Irrelevant.

[00:14:04] Speaker 01:
That's a big word.

[00:14:06] Speaker 01:
If this were claim construction, if I understood this to be a question of claim construction, would you agree the prosecution history is always relevant to a claim construction analysis?

[00:14:16] Speaker 02:
Yes.

[00:14:16] Speaker 02:
I believe the prosecution history is always relevant in a claim construction analysis, Your Honor.

[00:14:21] Speaker 01:
I think so, too.

[00:14:23] Speaker 01:
And so that's why I was trying to tease out in this argument whether or not this was a claim construction appeal, because then that statement by the board would really bother me.

[00:14:32] Speaker 01:
Or is it the application of a determined claim construction, which is not an appeal to a particular prior art reference, in which case that statement I don't think bothers me as much?

[00:14:42] Speaker 02:
Yes, Your Honor.

[00:14:43] Speaker 02:
And I believe if you're referring to the statement on page 36 of the final decision.

[00:14:48] Speaker 02:
And if I may, I'd like to explain how that statement in the context of what the board was addressing there was actually the issue Judge Dyke raised about whether it's proper to compare prior art to prior art.

[00:15:00] Speaker 02:
I believe that is exactly what the board was saying.

[00:15:03] Speaker 02:
And if we can turn to 36.

[00:15:04] Speaker 01:
Can I just ask, why would it be irrelevant to compare prior art to prior art theoretically?

[00:15:10] Speaker 01:
I'm not talking about this case, but in general, suppose that you had a continuation application, right?

[00:15:16] Speaker 01:
So these two pieces of prior art have identical specs.

[00:15:19] Speaker 01:
Wouldn't there be a problem with the board saying that the identical language verbatim, the entire spec is identical, the claims were allowed over it because that doesn't meet the limitation?

[00:15:30] Speaker 01:
But then in an IPR, the exact same spec comes back and the board says these claims are invalid in light of it.

[00:15:38] Speaker 01:
That feels wrong to me.

[00:15:40] Speaker 01:
I'm not really sure how to work through it in my head.

[00:15:42] Speaker 02:
Well, I think if we had those facts here, but we do not have those facts, this is not an issue where you can take Pruitt and compare it directly to Norhouse and say, oh, it's the exact same language.

[00:15:52] Speaker 02:
The difference between Norhouse and Pruitt is Norhouse has

[00:15:56] Speaker 02:
the teaching that the server makes the selection, and that's made clear in paragraph 28 and in comparison.

[00:16:03] Speaker 01:
Let me tell you, I agree with you.

[00:16:04] Speaker 01:
I agree with everything you're saying.

[00:16:05] Speaker 01:
You've got a friendly judge here, all right?

[00:16:07] Speaker 01:
But the one thing that troubles me is that goes to the merits of why it's okay for the board to reject the comparison, but it doesn't go to that relevance question, because what you just sort of conceded

[00:16:21] Speaker 01:
is, well, maybe there are circumstances where it is, in fact, relevant.

[00:16:25] Speaker 01:
And that makes me uncomfortable.

[00:16:28] Speaker 01:
I agree with you.

[00:16:28] Speaker 01:
And I think the board gave us enough analysis that I can probably decide the case exactly the way you articulated it.

[00:16:34] Speaker 01:
But do you see my concern?

[00:16:35] Speaker 01:
I can imagine hypothetical scenarios where it would surely be relevant.

[00:16:41] Speaker 01:
It's not completely irrelevant.

[00:16:43] Speaker 01:
But I don't know.

[00:16:44] Speaker 01:
What are your thoughts on that?

[00:16:45] Speaker 02:
I think the problem here is that we don't really have a dispute over what the claim language says or what the claim language means.

[00:16:52] Speaker 02:
That has to be determination by the client.

[00:16:54] Speaker 04:
Well, there'd have to be such a comparison if this were a claim construction exercise, right?

[00:16:59] Speaker 04:
That's exactly what you would do in claim construction, looking at the prosecution history to see what the prior art was and how it was overcome.

[00:17:08] Speaker 04:
That would be highly relevant in claim construction.

[00:17:11] Speaker 04:
But if it's not claim construction, it would seem not to be relevant.

[00:17:16] Speaker 02:
I believe that's correct, Judge Dyke, that in claim construction, trying to find out the meaning of the claims, you would look at the prior art reference that was distinguished or discussed in the prior art history, as opposed to the prior art reference that you're adjudicating the invalidity over.

[00:17:33] Speaker 01:
OK, but now we're going to go back, because I feel like, quite frankly, you said yes to both of us.

[00:17:37] Speaker 01:
And I think that's not probably possible.

[00:17:40] Speaker 01:
But what I'm trying to figure out here is, is it irrelevant?

[00:17:44] Speaker 01:
My example.

[00:17:45] Speaker 01:
It's not claim construction.

[00:17:47] Speaker 01:
The board issues a claim construction.

[00:17:48] Speaker 01:
Everybody's OK with the claim construction.

[00:17:51] Speaker 01:
And then the piece of prior art is identical because it's a continuation application.

[00:17:55] Speaker 01:
So the spec's identical.

[00:17:57] Speaker 01:
And once the claim is allowed and the next time it's rejected or registered invalid, it seems like it would be relevant, the degree of identicality between the reference over which the claim was allowed and the reference

[00:18:14] Speaker 01:
that the claim is now denied on, even in the application process.

[00:18:17] Speaker 01:
That's where I'm struggling.

[00:18:18] Speaker 01:
I'm struggling just the concept of relevance.

[00:18:20] Speaker 01:
I'm not actually struggling with your case.

[00:18:22] Speaker 01:
At least from my perspective, you're going to win.

[00:18:25] Speaker 01:
And I can only speak for myself.

[00:18:26] Speaker 01:
But what I'm struggling with is just the giant concept that it's never relevant.

[00:18:34] Speaker 01:
And I think you nailed it for me, which is that's not the way they were saying relevance.

[00:18:37] Speaker 01:
They were saying it's not relevant to have to compare these two prior art references, maybe.

[00:18:42] Speaker 01:
I'm just wondering how broad or how narrow that relevant finding was by the board.

[00:18:48] Speaker 02:
Well, I would say it seems in your hypothetical, we're talking about the continuation application, so presumably there's some difference in the language, and then you're having the same prior reference asserted against the different applications.

[00:19:01] Speaker 02:
The earlier application was successful, then you have this later continuation.

[00:19:05] Speaker 02:
In the continuation application example I think you gave,

[00:19:09] Speaker 02:
You're looking at the prior art reference, again, to figure out, well, what is the difference in the claim scope between the parent application and the continuation?

[00:19:18] Speaker 02:
So that's more in the claim construction context as opposed to applying the claim language.

[00:19:24] Speaker 01:
No, you wouldn't be looking at the claim scope.

[00:19:26] Speaker 01:
The claim scope is irrelevant.

[00:19:27] Speaker 01:
It's all about the disclosure.

[00:19:28] Speaker 01:
Who cares what the prior art claims?

[00:19:30] Speaker 01:
It's about what the spec discloses.

[00:19:32] Speaker 01:
That's what's going to be used as the prior art.

[00:19:36] Speaker 01:
I don't think that's the right answer.

[00:19:37] Speaker 01:
But I don't know what the right answer is.

[00:19:38] Speaker 01:
I don't think that's it.

[00:19:39] Speaker 01:
Or maybe I didn't understand it.

[00:19:40] Speaker 01:
If you want to try again, go for it.

[00:19:42] Speaker 02:
OK.

[00:19:42] Speaker 02:
Well, I think the other difference is that you're having a reference that's been squarely addressed in two different proceedings.

[00:19:48] Speaker 02:
And you're looking for consistency in the analysis of the disclosure in one particular prior reference.

[00:19:54] Speaker 01:
So maybe it's like an arbitrary and capriciousness argument, almost.

[00:19:58] Speaker 01:
I'm just trying to figure out what to do, in my mind, with hypotheticals I can come up with, where I think it might be relevant.

[00:20:06] Speaker 01:
Yes.

[00:20:06] Speaker 01:
Yeah, I don't know.

[00:20:07] Speaker 00:
Isn't it your point that the board didn't make a broad generalization?

[00:20:13] Speaker 00:
It simply said, we don't agree that Pratt's disclosure, Pruitt's disclosure, and the board's decision regarding Pruitt are relevant to the determination of whether the claim subject matter would have been all obvious over now or haze and lie under 103.

[00:20:31] Speaker 00:
That's a very specific statement regarding these claims and these references.

[00:20:36] Speaker 02:
I believe that's correct, Judge Lori.

[00:20:38] Speaker 02:
And just to go back to page 36.

[00:20:39] Speaker 01:
It's a narrow thing.

[00:20:41] Speaker 01:
The board didn't say it's never relevant to consider a piece of prior art and how likely it is, the other piece of prior art, even in the application stage.

[00:20:49] Speaker 01:
They did not conclude, just to be clear, that that is always irrelevant or should be treated as irrelevant.

[00:20:55] Speaker 02:
I believe that's correct.

[00:20:56] Speaker 02:
I think when you look at the paragraph immediately preceding the sentence that we're concerned about, we see that what is the patent owner asserting in the argument that they're looking at

[00:21:06] Speaker 02:
is this argument that one, they say, one, petitioner has established no material difference between their respective disclosures of Pruitt and Norhouse, basically.

[00:21:14] Speaker 02:
Compare Pruitt and Norhouse, there's no difference.

[00:21:16] Speaker 02:
Two, Avigo says the board's decision on appeal was correct.

[00:21:20] Speaker 02:
And three, based on those two factors, you should find that the claim has overcome.

[00:21:26] Speaker 02:
So that was the argument they were saying.

[00:21:29] Speaker 02:
And they were saying, that's not relevant to what we're supposed to do here under 103.

[00:21:34] Speaker 02:
And it's clear when you look at the second sentence after they said that, they say, as correctly pointed out, petitioner, what is relevant to the obvious in this inquiry is the scope and content of these certifier art in Norhouse.

[00:21:45] Speaker 01:
Thank you.

[00:21:45] Speaker 01:
That clarified quite a bit for me.

[00:21:47] Speaker 01:
Do you have anything further that you'd like to add?

[00:21:52] Speaker 02:
Unless there are any other questions, we're fine.

[00:21:55] Speaker 01:
Very good.

[00:21:56] Speaker 01:
Mr. Young, you have some rebuttal time.

[00:22:07] Speaker 03:
Thank you, Your Honor.

[00:22:09] Speaker 03:
Taking a step back, in my mind, the big picture is the scope and the scope of the second element of claim one and its application.

[00:22:19] Speaker 03:
So the first thing you do is you define the scope.

[00:22:22] Speaker 03:
The scope is plain and ordinary meaning as informed by the intrinsic evidence, including the prosecution history.

[00:22:28] Speaker 01:
Well, that's claim construction.

[00:22:30] Speaker 01:
Right.

[00:22:30] Speaker 01:
You said this is not a claim construction appeal.

[00:22:32] Speaker 01:
You said this is the application stage.

[00:22:35] Speaker 01:
That's where we started.

[00:22:36] Speaker 01:
That's where just the question started, where my question started.

[00:22:39] Speaker 01:
And I thought that you put to rest which side of the line this appeal is on.

[00:22:44] Speaker 03:
Yes, Your Honor.

[00:22:45] Speaker 03:
It is the application of the claim construction, which the first thing is to figure out the scope.

[00:22:50] Speaker 03:
And when the board was applying the claim construction under the plan to enter into the meeting as informed by the intrinsic evidence in that application, the board found that this evidence involving Pruitt

[00:23:03] Speaker 03:
their expert's acknowledgement that Pruitt and Nowherhays operate the same.

[00:23:08] Speaker 03:
The board said that is irrelevant.

[00:23:11] Speaker 03:
And the point is, when you look at the Nowherhays reference with respect to its application or its comparison to claim two, the same things that are going on in Pruitt are the same things that are going on in Nowherhays.

[00:23:26] Speaker 03:
And there was no findings that, nowadays, that selection process was materially different as it relates to the claims.

[00:23:35] Speaker 03:
Yes, it does identify the best available server, but then the reference says that the client still has to make that decision.

[00:23:45] Speaker 03:
If the client makes the decision, then it doesn't fall within the scope

[00:23:49] Speaker 03:
of limitation two, which was added during prosecution to get around the exact same type of system and distinguish it.

[00:23:57] Speaker 03:
And again, take the scope of the claim and narrow it from a claim scope that could cover both figures one and two of the patent down to a smaller scope, which would exclude the situation where the client is the one making the final selection to use the

[00:24:13] Speaker 03:
server to receive the web service.

[00:24:17] Speaker 03:
So it is the application of the claim construction applied to Nowherhays, but that application is still informed by the intrinsic evidence.

[00:24:29] Speaker 03:
And the reason that the limitation, the second part of limitation two is added is to get around the exact type of system that that prove it discloses.

[00:24:41] Speaker 03:
So I know that I'm out of time, but if you have any other questions,

[00:24:43] Speaker 01:
We thank both counsel for the argument.

[00:24:45] Speaker 01:
This case is taken under submission.