[00:00:00] Speaker 01:
But our first case this morning is number 231357, Google LLC versus Somos Inc.

[00:00:08] Speaker 01:
Ms.

[00:00:08] Speaker 01:
Arner.

[00:00:10] Speaker 02:
Good morning, and may it please the court.

[00:00:12] Speaker 02:
Google is asking this court to reverse three errors by the board.

[00:00:17] Speaker 02:
First, a faulty claim construction that ignored the order of steps imposed by the claim language.

[00:00:24] Speaker 02:
Second, it's erroneous conclusion that petitioners' evidence and mappings to Mendez would render the claims obvious even under the proper construction.

[00:00:33] Speaker 02:
And third, the sua sponte finding by the board, the fact finding and its unsupported obviousness conclusion made in its final written decision at footnote 11.

[00:00:43] Speaker 02:
I'll start with claim construction.

[00:00:44] Speaker 01:
Footnote 11 is an alternative ground that the board gave.

[00:00:48] Speaker 02:
That's correct, but it still cannot save the board's conclusion.

[00:00:52] Speaker 02:
It was an error in and of itself.

[00:00:54] Speaker 01:
I could start with that.

[00:00:56] Speaker 01:
Even if we rule against you on the first two points?

[00:01:01] Speaker 01:
No, we need to win claim construction.

[00:01:03] Speaker 02:
That's right, yes.

[00:01:04] Speaker 02:
But all three of those, Google should prevail because of what's in the record and the mistakes made by the board.

[00:01:10] Speaker 03:
Just to clarify, if we were to adopt the board's construction, then we would affirm, is that right?

[00:01:17] Speaker 03:
That's correct.

[00:01:20] Speaker 02:
The board's claim construction, however, should not be affirmed because it

[00:01:24] Speaker 02:
ignores the order that is imposed by the language and logic of the claims themselves.

[00:01:30] Speaker 02:
It is not just antecedent basis that the claims talk about a user and then refer back to the user, but also the logic in the claims, which is that a user should be identified before favorites for the user.

[00:01:44] Speaker 02:
That phrase favorites for the user implies that we know who the user is first.

[00:01:49] Speaker 02:
the only record evidence supports that in the Matasetti declaration that favorites are those of the user and so you would need to know who the user is before identifying or before modifying their favorites.

[00:02:02] Speaker 02:
The order is not only required by the claim language but also confirmed by the specification.

[00:02:08] Speaker 02:
Not required but confirmed by the specification.

[00:02:11] Speaker 03:
Counsel, do you know of any case law where

[00:02:15] Speaker 03:
antecedent basis has been used to compel a particular ordering of the claims.

[00:02:25] Speaker 03:
I understand your argument that the user, like in step 1-2, is going to be the user who is identified in step 1-1, but it doesn't mean necessarily that

[00:02:40] Speaker 03:
To me, it doesn't necessarily mean that the order of those steps is required.

[00:02:44] Speaker 03:
That is, the identifying user has to come before step one two, because you could have a person who identifies their favorites, and then they're identified.

[00:02:56] Speaker 03:
And so it definitely has to be the same person, but I haven't heard time understanding why it also means that it has to be a particular order.

[00:03:05] Speaker 02:
Thank you.

[00:03:05] Speaker 02:
And it's because it doesn't just refer, it's not just the antecedent basis of a user and the user.

[00:03:11] Speaker 02:
It's that the favorites are for the user, that we are modifying favorites for the user.

[00:03:16] Speaker 02:
And as Mr. Mattisetti explained in his declaration, that means the favorites are of that user.

[00:03:21] Speaker 02:
And so in order in step one two to modify those favorites, they need to be associated with that user at that point.

[00:03:29] Speaker 02:
That's the only record evidence that it is not just antecedent bases, which has been found, as the board correctly said, not enough in some cases.

[00:03:37] Speaker 02:
I would point you to the Hyterra versus Motorola case from this court.

[00:03:41] Speaker 02:
It's non-precedential, but I think it fits very well here in that there was antecedent bases there, A, and then the court found that to be compelling order, especially where, like here, there was a figure that aligned with that order.

[00:03:55] Speaker 01:
But there's no reason and logic that you couldn't

[00:03:59] Speaker 01:
identify the user after modification takes place and before synchronization, right?

[00:04:06] Speaker 02:
To modify the favorites for the user, you need to know that they are for the user.

[00:04:11] Speaker 02:
Do you need to know the user's name?

[00:04:12] Speaker 02:
No, not necessarily, but you know they are the user.

[00:04:15] Speaker 02:
You've identified them in some way, and the patent explains that can be done in several ways, but it is required that in order for them to modify the favorites, that they need to have been identified

[00:04:26] Speaker 02:
The patent explains that that is for security purposes or for privacy purposes.

[00:04:31] Speaker 02:
That if you're not identified, you can't even view the bookmarks, the favorites.

[00:04:35] Speaker 01:
But wouldn't the same thing be true in lenders?

[00:04:38] Speaker 02:
Because in Mendes, the focus is completely on synchronization, which happens later.

[00:04:43] Speaker 02:
And Mendes does not talk about what happens with modification.

[00:04:47] Speaker 02:
And the reason, it's not just different words.

[00:04:49] Speaker 02:
In the claims, there are different devices as well.

[00:04:53] Speaker 01:
And the modification of the user... I'm not understanding why it's necessary to identify the user before modification

[00:05:01] Speaker 01:
in the patent, but not in Mendes.

[00:05:05] Speaker 02:
Yes.

[00:05:06] Speaker 02:
So it's necessary in the patent because that's what the claim language says and the specification.

[00:05:12] Speaker 02:
Of course, claim construction is a different law than obviousness.

[00:05:15] Speaker 01:
But not as a matter of logic or operability, right?

[00:05:19] Speaker 01:
Well, in order to modify it.

[00:05:20] Speaker 01:
You could modify and then identify.

[00:05:23] Speaker 02:
but they would not be the favorites for the user unless you knew who the user was in some way.

[00:05:28] Speaker 02:
And that's what the specification says.

[00:05:29] Speaker 02:
They must be identified to some extent before their favorites can be modified because they are favorites of the user.

[00:05:36] Speaker 03:
What about the fact that step 1.3 is the modifying step?

[00:05:40] Speaker 02:
Well, step 1.2 is the receiving input at the client device to modify them on the client side.

[00:05:45] Speaker 03:
And so that focus… Why does the receiving have to occur before identifying?

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What is the logical reason for that?

[00:05:53] Speaker 02:
If you're not understanding the question, let me grab the claim language.

[00:06:08] Speaker 02:
Your question is in response to the receiving the user input.

[00:06:13] Speaker 02:
Well, I heard you say that

[00:06:16] Speaker 03:
It logically, you should have to identify a user before you modify the favorite items for the user.

[00:06:23] Speaker 03:
But that's not until step one dash three.

[00:06:25] Speaker 03:
So I was trying to figure out, because I understand your argument to be that you need to have identifying the user to be the first step.

[00:06:32] Speaker 03:
It can't be the second step.

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It has to be the first.

[00:06:35] Speaker 03:
And so I was just trying to understand why it would have to occur before receiving.

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the user input when the actual modification doesn't happen until the third step.

[00:06:47] Speaker 02:
And I think that goes back to the fact that the input is to modify favorites for the user.

[00:06:52] Speaker 02:
And so because the whole purpose of the patent is to provide personalized search for that user, personalized ads for that user, they wouldn't want anyone providing input to change their favorites and thus later change the personalization without first being identified.

[00:07:08] Speaker 02:
That in order for them to provide input in that step one, two,

[00:07:11] Speaker 02:
that indicates a modification to the user's favorites.

[00:07:15] Speaker 02:
They need to be sure that the user is identified first.

[00:07:18] Speaker 02:
And that's what's described in the patent in column seven.

[00:07:21] Speaker 02:
That's what's shown in the patent in figure two.

[00:07:26] Speaker 02:
The other important distinction is that the modification is happening on the client.

[00:07:33] Speaker 02:
Client side storage of the client device.

[00:07:35] Speaker 02:
That input is talking about modifying the favorites on the client side.

[00:07:40] Speaker 02:
The reason it doesn't apply to Mendes, to go back to your question Judge Dyke, is because Mendes is all about synchronizing the client's home computer or user computer to a remote computer.

[00:07:51] Speaker 02:
And so everything they've cited in Mendes is about identifying, arguably, the user in order to synchronize between client and server.

[00:07:59] Speaker 02:
But what they don't have, and that's what they mapped in the petition.

[00:08:04] Speaker 03:
Yes?

[00:08:04] Speaker 03:
Do you have a question?

[00:08:05] Speaker 03:
And here, synchronization is step 1-4?

[00:08:07] Speaker 03:
Yes.

[00:08:07] Speaker 03:
And that's the claimed invention.

[00:08:09] Speaker 02:
Yes, that's right.

[00:08:10] Speaker 02:
And so that happens in addition to the earlier parts of the claim, which is identifying the user before you receive input to modify the user's favorites

[00:08:20] Speaker 02:
on their client device.

[00:08:22] Speaker 02:
Mendez doesn't talk about that.

[00:08:24] Speaker 03:
You're saying that that user has to be identified by their own device in order to modify the favorites on their device?

[00:08:31] Speaker 02:
That's right, because otherwise they couldn't accomplish the purpose of the overall patent, which is to provide personalized experience for that user.

[00:08:40] Speaker 02:
And that's based in part on their favorites.

[00:08:41] Speaker 02:
And so the user is very interested in making sure that their favorites on their client device are personalized for them.

[00:08:48] Speaker 02:
And that's what the first part of the claim talks about and that's what Matt has said he explained in his the only expert testimony on the order was that you would want to identify before receiving input to modify the favorites.

[00:09:00] Speaker 01:
Somebody other than the user might be using the user's device to modify the favorites?

[00:09:06] Speaker 02:
They want to avoid that happening because

[00:09:09] Speaker 02:
Although Sonos tries to argue that the first thing you would have done is log on to a computer, this was a long time ago.

[00:09:16] Speaker 02:
And at the time of Mendes, computers didn't require that.

[00:09:20] Speaker 02:
You could turn on a computer at home.

[00:09:22] Speaker 02:
I did.

[00:09:22] Speaker 02:
I remember working at home on a computer.

[00:09:25] Speaker 02:
You just turned it on and worked.

[00:09:27] Speaker 02:
And then when you wanted to synchronize, to send your document up to your network, then you would log on

[00:09:34] Speaker 02:
using a software like PC Anywhere.

[00:09:36] Speaker 01:
Where does the specification talk about there being a concern that somebody might modify the user's favorites without authorization?

[00:09:44] Speaker 02:
So I would point you to, I believe it's column 11 in the patent that talks about privacy, protecting the user's privacy by disabling view bookmarks.

[00:09:56] Speaker 02:
So in appendix 72, column 11, I would say line 36 to 40.

[00:10:03] Speaker 02:
Because of privacy concerns, Bookmark Manager may disallow access to viewing bookmarks to not logged in users.

[00:10:13] Speaker 02:
That's protecting the user and making sure that the bookmarks are for that user and not for anyone else.

[00:10:19] Speaker 02:
And if it was your home computer, which was common at the time, you and your spouse and your kids might all share one computer, and all of your bookmarks, to the extent you had them, would have been stored in a single folder, not for individual users.

[00:10:32] Speaker 02:
And that's what the 375 patent added, was that you could have bookmarks that are just for the user.

[00:10:39] Speaker 03:
One concern that I might have is that that's a good point you've made about the specification.

[00:10:47] Speaker 03:
But it does say that's one embodiment.

[00:10:50] Speaker 03:
And in this case, when you look at the claims,

[00:10:53] Speaker 03:
You don't see linking language between the steps.

[00:10:56] Speaker 03:
You don't see, for example, it's saying, identifying user.

[00:11:01] Speaker 03:
After the user is identified, modifying the bookmarks or accepting the user's input to modify the bookmarks.

[00:11:08] Speaker 03:
Those are often the kind of words that we see in claims to indicate a particular order.

[00:11:14] Speaker 03:
So what's your response to that?

[00:11:17] Speaker 02:
That's correct, but it's not always as simple as

[00:11:19] Speaker 02:
the identified user.

[00:11:21] Speaker 02:
So I would point you there to the information versus research emotion case that was about sending messages from a Blackberry device to a server.

[00:11:29] Speaker 02:
And the language in the claim there was establishing a connection and transmitting.

[00:11:34] Speaker 02:
And the court found that it was appropriate to impose logic

[00:11:38] Speaker 02:
that the connection must be fully established before the transmission can be sent.

[00:11:42] Speaker 02:
So that was not exactly the kind of language you're talking about, Judge Stoll, where it's an identified user.

[00:11:47] Speaker 02:
It was establishing a connection and transmitting.

[00:11:50] Speaker 02:
But the court found that that kind of language logically made sense, that you would need to establish the connection before the transmission.

[00:11:56] Speaker 03:
I've been looking at our case laws.

[00:11:58] Speaker 03:
Either the plain claim language requires a particular order.

[00:12:01] Speaker 03:
or logic, that is how the invention works requires a particular order, or the specification has some sort of disclaimer or something that makes it so it would have to be the claim to be a particular order.

[00:12:13] Speaker 03:
So are you, sounds like you're merging logic with plain language.

[00:12:17] Speaker 02:
I'm saying we have both here.

[00:12:19] Speaker 02:
I would say we have the antecedent bases, we do, but they are favorites for the user after you identify a user, but I recognize that you have cases that say a user

[00:12:28] Speaker 02:
the user is not enough.

[00:12:30] Speaker 02:
And here we're also saying that in addition to that link, there's also the logical link of being able to receive inputs and modify favorites for the user.

[00:12:39] Speaker 02:
requires identifying who the user is in the first place.

[00:12:42] Speaker 01:
So in column 11, when they talk about logging in, they're talking about logging into the device?

[00:12:48] Speaker 02:
To the bookmark manager, which could be through a plug-in.

[00:12:51] Speaker 02:
Logging into the browser, you mean?

[00:12:52] Speaker 02:
Logging in on their computer, that's right.

[00:12:55] Speaker 02:
Into their browser where their bookmarks are stored.

[00:12:58] Speaker 01:
I'm sorry, I didn't understand.

[00:13:00] Speaker 01:
If the user logs in,

[00:13:04] Speaker 01:
if the device requires a login, then the user is identifying himself or herself by doing that, right?

[00:13:14] Speaker 02:
Yes.

[00:13:15] Speaker 01:
So why doesn't that happen with Mendez?

[00:13:19] Speaker 02:
Because Mendez was about, when Mendez talks about log on or operating when a user's not there, they are talking about as a trigger for the synchronization process, as a part of the process of synchronizing what's on the client computer to the server.

[00:13:35] Speaker 01:
But in Mendez, in situations where the computer device requires a login, then they are required, then the user would be required to identify.

[00:13:45] Speaker 02:
That could be, but there's no evidence to that.

[00:13:47] Speaker 02:
And that was not the argument that the petitioner ever made.

[00:13:51] Speaker 02:
That's where the board's erroneous footnote came in.

[00:13:54] Speaker 02:
They made an unsupported fact-finding that it would have been obvious, or first, that it would have been conventional for users to log in as a first step.

[00:14:02] Speaker 02:
And that violates, at least in research, which says that the board cannot create evidence.

[00:14:07] Speaker 02:
It doesn't have to have an expert to interpret evidence or art references, but it cannot create evidence out of whole cloth.

[00:14:14] Speaker 02:
And that is what happened here, because I think they recognized at the final written decision that that argument hadn't been made.

[00:14:21] Speaker 02:
And that evidence that you're suggesting might exist, that at the time of Mendez or at the time of the 375 patent, you had to log in, that has not always been the case.

[00:14:31] Speaker 02:
And there isn't any evidence about that.

[00:14:34] Speaker 01:
It doesn't always have to be the case.

[00:14:36] Speaker 01:
has to be the case sometimes.

[00:14:38] Speaker 02:
And we don't have any evidence to support the fact that that had to be first.

[00:14:43] Speaker 02:
And in Mendes, when they talk about logging on, they're talking about triggering the synchronization process.

[00:14:48] Speaker 02:
And that's exactly what I remember doing.

[00:14:50] Speaker 01:
So the board can take notice that for many devices, the user has to log in before using it.

[00:14:57] Speaker 01:
That would support the notion that Mendes disclosed log in first, if you accept that.

[00:15:04] Speaker 02:
I think that's what the board was trying to do in its footnote, was to come up with that fact-finding on its own, but that's not permitted.

[00:15:10] Speaker 02:
They have to have some evidence in the record so that Google can have a chance to put in evidence to respond, and this court is reviewing a supported fact-finding, not a fact-finding for the first time.

[00:15:23] Speaker 01:
Okay, unless there are other questions, we'll give you two minutes for rebuttal.

[00:15:27] Speaker 01:
Thank you.

[00:15:38] Speaker 00:
Elizabeth Moulton for Sonos.

[00:15:42] Speaker 00:
I'll just start with the claim construction argument.

[00:15:44] Speaker 00:
The general rule is that method claims are not construed to require a particular order of steps unless the language of the claims compels an order as a matter of logic or grammar, or the specification directly or implicitly requires a particular order.

[00:15:58] Speaker 00:
I think Google agrees that the specification does not require an order, so they're relying on logic or grammar.

[00:16:04] Speaker 00:
And their primary argument is this for the user point.

[00:16:08] Speaker 00:
In our red brief at 28, we gave the example of a user shopping on Amazon, adding items to their cart, which are stored for that user even before they've signed into Amazon to check out and synchronize to the Amazon server.

[00:16:22] Speaker 00:
And that example of modification before identification is totally consistent with the specification of the- Can I ask you your example that you gave?

[00:16:32] Speaker 03:
What is the timeline of that?

[00:16:36] Speaker 03:
I'm just curious.

[00:16:36] Speaker 03:
I mean, it's something to think about.

[00:16:39] Speaker 03:
What is the date of the invention here?

[00:16:42] Speaker 03:
Is that at the time of the invention?

[00:16:44] Speaker 03:
Is this example that you gave in an expert opinion or anything that's talking about the time of the invention?

[00:16:51] Speaker 00:
Yeah, it was given to the board at the final hearing, and the board elicited, I think, from Google's counsel that Amazon and that checking out on Amazon existed at the time of the invention.

[00:17:03] Speaker 03:
Thank you.

[00:17:03] Speaker 00:
And that is consistent with the specification and the claim language.

[00:17:08] Speaker 00:
The first time the claims used for the user, as Judge Stoll pointed out, is in the second step, receiving user input from the user and then the user input indicating a modification to the set of favorite items for the user.

[00:17:20] Speaker 00:
So what that's telling us is that the user inputting the modification is the same user the favorites are for.

[00:17:28] Speaker 00:
So this for the user phrase is just another flavor of Google's antecedent basis argument.

[00:17:33] Speaker 00:
And again, all that tells us is that it's one user throughout the claims, not that identification has to happen before modification.

[00:17:44] Speaker 00:
When the claims do use language requiring an order, they use very specific causal language, like in response to or that the modification initiates the synchronization process.

[00:17:56] Speaker 00:
Besides that causation language that we have, we also know this because the claims don't refer to the identified user, meaning that there's nothing logically or grammatically requiring identification before modification.

[00:18:11] Speaker 00:
Google's specification says almost the same thing.

[00:18:15] Speaker 00:
At appendix 70 in column 7,

[00:18:17] Speaker 00:
It talks about users who desire synchronization across... Hang on for a second.

[00:18:22] Speaker 03:
I want to catch up with you.

[00:18:23] Speaker 00:
What line are you referring to?

[00:18:26] Speaker 00:
Line 37 to 41.

[00:18:26] Speaker 00:
Okay.

[00:18:27] Speaker 00:
Thank you.

[00:18:29] Speaker 00:
So it says users who desire synchronization across different browsers or flash computers or other types of personalization need to identify themselves to the bookmark manager to some extent so the bookmark manager

[00:18:42] Speaker 00:
has a primary key with which to store the user's bookmarks.

[00:18:46] Speaker 00:
So there it's linking identification to synchronization, just like the claim language does, which is why you don't need to identify before you modify the bookmarks.

[00:18:58] Speaker 01:
But what about the privacy arguments?

[00:19:00] Speaker 00:
So the privacy argument, the very end of that sentence talks about how you can still have personalized searching for not logged in users if you use a cookie method.

[00:19:10] Speaker 03:
So there's nothing... So there's nothing about cookie method identifying the user.

[00:19:14] Speaker 03:
I mean, in fact, in column seven it says there's many different ways someone could be identified by using cookies, right?

[00:19:22] Speaker 03:
I think it's line 47 of column seven.

[00:19:26] Speaker 03:
So that's identifying, right?

[00:19:29] Speaker 00:
Yeah, the 375 specification uses cookies to identify, and then it also uses cookies, if you've got a column 11, line 40.

[00:19:41] Speaker 00:
So this is the end of the sentence that Google's counsel read.

[00:19:46] Speaker 00:
It says, nevertheless, search results may be appropriately personalized based on just the cookie of not logging users.

[00:19:52] Speaker 03:
What I'm saying is I don't understand your argument.

[00:19:55] Speaker 03:
And the reason why is because

[00:19:58] Speaker 03:
reliance on this sentence about using cookies in column 11, line 30, and saying that's not identifying the user, when this falls to me, because column 7 says that you can identify a user using cookies.

[00:20:16] Speaker 03:
So I think these are, I think even the stuff in column 11 is identifying the user.

[00:20:20] Speaker 03:
It's just using what the patent refers to as, I think you can, to some extent, identify the user.

[00:20:29] Speaker 00:
Right?

[00:20:29] Speaker 00:
Sure.

[00:20:30] Speaker 00:
So I guess what this pattern is explaining that if you read the cookies as a way to identify a user, then you don't even need to log in to identify a user.

[00:20:41] Speaker 00:
So that sort of supports that Mendes renders the claims obvious because whether

[00:20:47] Speaker 00:
the board's fact findings about logging in or just identifying a user locally on the device before you synchronize in Mendez, if there's lots of different ways to log in, there's no reason you have to log in or identify a user as a very... Does Mendez say that it identifies a user using any technique as a first step?

[00:21:06] Speaker 03:
I don't think it did.

[00:21:08] Speaker 03:
I mean, it's, you know, I think you've got better arguments.

[00:21:11] Speaker 03:
I'm not...

[00:21:12] Speaker 03:
You know, but I think this one, I'm just, I'm pushing back on you because it doesn't seem technically accurate.

[00:21:18] Speaker 03:
I don't see where Mendez says that it first identifies the user using cookies or anything else.

[00:21:25] Speaker 00:
Right, so Mendez at column two talks about how you can log in to a computer and use that as a way to identify a user.

[00:21:33] Speaker 00:
I agree with your honor that there's not an explicit, you know, I can't quote Mendez to say as a first step you log in.

[00:21:40] Speaker 00:
But the board's fact finding that Mendez would render that obvious is supported by substantial evidence, and that's an independent basis to affirm besides the claim construction argument.

[00:21:51] Speaker 00:
But the security argument that Google's making for the 375 patent, that only applies if you're trying to synchronize across multiple computers or you're trying to sync up

[00:22:03] Speaker 00:
to really Google search engine server, but the 375 patent itself says you can have the bookmarks stored locally, which is, you can have the bookmarks, you don't have to sync up to the global server just to provide personalized search results, or just to provide the search results in step five of the claim at all.

[00:22:31] Speaker 01:
What do you make on 1528, column 8 of Mendez, line 57, where it says, accordingly, bookmark in the global format includes a user identification?

[00:22:48] Speaker 01:
What are we supposed to understand from that?

[00:22:51] Speaker 00:
So the board found figure 6 of Mendez shows that you identify the user locally.

[00:22:58] Speaker 00:
And then when you upload or store the bookmark format in the global bookmark manager, that that would include a user ID.

[00:23:06] Speaker 00:
And the board's findings on that are in Appendix 22.

[00:23:09] Speaker 01:
So that tells you that... Does this column suggest that modifications or bookmark identification in Mendez includes the identification of a user?

[00:23:21] Speaker 00:
Yes.

[00:23:22] Speaker 00:
And that's what the board found at Appendix 22.

[00:23:25] Speaker 00:
They used the login teaching at Column 2 of Mendes combined with this appending the user ID to the created bookmarks to find that it makes obvious identifying a user prior to creation of a bookmark.

[00:23:39] Speaker 00:
And that's the board's sentence at Appendix 22 to 23.

[00:23:44] Speaker 00:
So that's an independent basis to affirm besides the claim construction language.

[00:23:50] Speaker 00:
If there are no further questions,

[00:23:53] Speaker 01:
Okay, thank you.

[00:23:58] Speaker 01:
Thank you.

[00:23:58] Speaker 01:
So now we've got two minutes.

[00:24:21] Speaker 01:
So what about column 8 of Mendez in line 57?

[00:24:26] Speaker 01:
Bookmark in the global format includes the user identification.

[00:24:31] Speaker 02:
As a perfect example of the board's problem here is that that has to do with bookmark creation on the server.

[00:24:39] Speaker 02:
Figure 6 is about what's stored on the server, the remote server, not what is happening on the client device where the modification input is received after the user is identified.

[00:24:51] Speaker 02:
The problem the board has is that it relied on the argument by the petitioner that if it is somewhere on the server, as it shows in Figure 6 and Column 8, it must have been sent by the client.

[00:25:03] Speaker 02:
Therefore, it must have been on the client at some point.

[00:25:07] Speaker 02:
The board bought that argument, which was made in the reply, and then based its decision on it.

[00:25:12] Speaker 02:
However, that does not get to Element 1-1 and 1-2, 1-2 in particular.

[00:25:18] Speaker 02:
where you're receiving input on the client device to modify favorites stored on the client device.

[00:25:24] Speaker 01:
So the problem is they disagreed with you in the reading of Mendez and Figure 6 in this language.

[00:25:33] Speaker 02:
The only expert testimony on the order of the claims is from Google.

[00:25:37] Speaker 02:
There was no testimony in the reply to support that argument by the attorneys that it must have been done on the client because it eventually got to the server.

[00:25:45] Speaker 02:
But that does not get to the language of claim

[00:25:48] Speaker 02:
element one two, which requires input to modify favorites on the client device.

[00:25:54] Speaker 02:
And that's because Mendez wasn't concerned with how they're modified.

[00:25:58] Speaker 02:
Mendez only cared that the copies were the same across the user devices.

[00:26:03] Speaker 02:
That's really where Mendez kicks in.

[00:26:05] Speaker 02:
That's where Mendez cares about a login or a user preference being stored.

[00:26:10] Speaker 02:
It's when the synchronization across devices happens.

[00:26:13] Speaker 02:
It is not about the client device modifying the favorites for the user on the client device.

[00:26:21] Speaker 02:
To your point about claim construction, if I may, just in the last minute, I think that Ford and Sonos rely on cases for that claim order that are easily distinguishable because they had things like an interactive gift, the order would have excluded the preferred embodiment.

[00:26:36] Speaker 02:
Or in Respironics cited by the board, the claim language, the specific term argued to import

[00:26:44] Speaker 02:
order had been amended during prosecution and therefore the order had been disclaimed during prosecution.

[00:26:49] Speaker 02:
Those are very different situations to what we have here, which is more similar to the Mformation case and the Heterra case, where it's not just the antecedent basis, A, the, it is the modifying favorites for the user, plus the specification and the expert testimony.

[00:27:06] Speaker 01:
Okay.

[00:27:07] Speaker 02:
Thank you.

[00:27:08] Speaker 01:
I think we're out of time.

[00:27:09] Speaker 01:
Thank you very much.