[00:00:00] Speaker 02:
The third case this morning is number 23-21-03, N. Ray, Dodo, Keisha, IP.

[00:00:07] Speaker 01:
Mr. Kiblalli?

[00:00:10] Speaker 01:
Good morning, Your Honors.

[00:00:11] Speaker 01:
May it please the Court.

[00:00:12] Speaker 01:
My name is Fadi Kiblalli.

[00:00:14] Speaker 01:
I'm appearing on behalf of the appellant, IP Bridge, in this appeal.

[00:00:18] Speaker 01:
So the issue on this appeal is whether claim one of the 635 patent can be satisfied by the prior art simply having only a per-plural block basis selection and signaling of reference pictures, or whether it must also otherwise have a per-block basis selection and signaling of reference pictures,

[00:00:38] Speaker 01:
It is the appellant's position that the claim requires both by virtue of the preamble's recitation of selecting reference pictures on a block basis as well as the claim body's recitation of this requisite context in the instead of limitations of the describing step B of claim one.

[00:00:55] Speaker 01:
Now the Boards and Verity ruling relies on constructions that give no limiting effect to both the preamble and the related instead of body limitations.

[00:01:04] Speaker 01:
These constructions are legally erroneous for the many reasons set forth in the briefing.

[00:01:09] Speaker 01:
First, start with the prosecution history.

[00:01:12] Speaker 00:
The board's construction- Isn't the preamble here really just a preview of the steps recited in the body of the claim?

[00:01:17] Speaker 01:
Thank you for that question, Your Honor.

[00:01:19] Speaker 01:
That is in fact not the case because the preamble is describing a selection of a reference picture on a block basis, whereas continuing to the body of the claim, the selecting of the reference pictures in step A is for a plurality of blocks.

[00:01:34] Speaker 01:
It's on the plural block basis.

[00:01:36] Speaker 01:
And then if you look at step B, the two different features

[00:01:42] Speaker 01:
Plural block versus per block or block basis versus plural block basis are directly contrasted.

[00:01:48] Speaker 01:
You do one, quote unquote, instead of the other.

[00:01:51] Speaker 01:
So the preamble, in fact, is not superfluous or expressing an intended result of the steps of the body.

[00:01:58] Speaker 01:
But these are entirely different steps.

[00:02:01] Speaker 01:
It's a different process being done here, different steps being done here, namely,

[00:02:06] Speaker 01:
Per-block reference picture features versus the plural reference picture features in the body of the time.

[00:02:14] Speaker 02:
Even if you viewed the preamble as being relevant, I don't see that the preamble necessarily says this is being done on a per-block basis.

[00:02:27] Speaker 02:
On a block basis, it's just as well referred to a plurality of blocks as individual blocks.

[00:02:33] Speaker 01:
Well, a couple of points there.

[00:02:35] Speaker 01:
To begin with, the record shows that one of Ordinary is going to go, oh, the patentee themselves, the applicant themselves were describing a block basis, again, in contrast to a plural block basis or a picture basis.

[00:02:49] Speaker 01:
A number of reasons for this.

[00:02:50] Speaker 01:
Number one, in the preamble itself, if you continue reading it, you'll also see that it also recites performing predictive coding on the block.

[00:03:00] Speaker 01:
a rough block.

[00:03:01] Speaker 01:
The only previous reference of block is a block basis.

[00:03:05] Speaker 01:
So what we see from the preamble is that the same basis in which the reference pictures are being selected is the basis in which the coding, the predictive coding, is being done.

[00:03:16] Speaker 01:
And that is on a block basis.

[00:03:18] Speaker 01:
In the prior art and in this patent itself and in the art, predictive coding is done on blocks, not on plural blocks.

[00:03:26] Speaker 01:
The actual predictive coding is done on blocks, but the selection of reference pictures for which to do it can either be done in this patent on a per-block basis, on the block basis, or on the plural block basis.

[00:03:37] Speaker 01:
And this is clarified as well in the record of the patent.

[00:03:41] Speaker 00:
does any part in your view of the body of the claim rely on the preamble for antecedent basis?

[00:03:48] Speaker 01:
So, you know, for a very strict definition of antecedent basis in A, the, that's not no.

[00:03:54] Speaker 01:
However, there is a recitation, the instead of recitation to one of ordinary skill in the art,

[00:03:59] Speaker 01:
and this has been briefed as well, and set forth in the expert declaration, as well as reflected in the prosecution history record, is that one, the step B of the body of the claim, recites describing A instead of B, describing the plural block reference picture information, or the common reference picture information, instead of... Okay, we're talking about step B in the body of the claim.

[00:04:24] Speaker 03:
That's right.

[00:04:25] Speaker 03:
And step B in the body of the claim

[00:04:29] Speaker 03:
It's only contemplating and discussing common reference picture information.

[00:04:36] Speaker 03:
Is that right?

[00:04:37] Speaker 03:
This is where I disagree with the... My understanding of this claim limitation is it's saying you can describe common reference picture information in some area called the common information area.

[00:04:52] Speaker 03:
so that you're not describing that same common reference information, reference picture information on a block by block basis.

[00:05:06] Speaker 03:
Isn't that the correct understanding of step B?

[00:05:09] Speaker 01:
I disagree.

[00:05:10] Speaker 01:
I think step B is actually literally stating that you're describing the common reference picture, the plural block reference picture features, instead of

[00:05:21] Speaker 01:
describing the per block reference picture information.

[00:05:24] Speaker 03:
The problem with that is that instead of languages, instead of describing per block reference picture identification information, which identifies the selected common reference picture,

[00:05:36] Speaker 03:
So that instead of clause is all about the common reference picture information.

[00:05:42] Speaker 03:
And this is saying, hey, you don't have to go through the trouble of describing that common reference picture information per block for inside of each block.

[00:05:52] Speaker 03:
You just do it in this common reference picture area where you can just describe it once.

[00:06:00] Speaker 03:
That's my understanding of this limitation.

[00:06:03] Speaker 03:
What's wrong with that understanding of that limitation when I'm just following the actual words of the limitation?

[00:06:11] Speaker 01:
Okay, so a couple of things.

[00:06:12] Speaker 01:
One, the panel's position is that the plan in ordinary meaning of instead of isn't simply not.

[00:06:18] Speaker 01:
Instead of instead conveys under its plan in ordinary meaning,

[00:06:22] Speaker 01:
that the instead of the alternate is an option.

[00:06:28] Speaker 01:
It is otherwise available.

[00:06:29] Speaker 01:
Instead of means that a choice necessarily indicates a choice.

[00:06:35] Speaker 01:
My understanding of the limitation fits that quite comfortably.

[00:06:38] Speaker 03:
that instead of describing as a short one picture information, instead of describing it per block, you only have to describe it once for plural blocks.

[00:06:48] Speaker 01:
So that interpretation is the board's interpretation, which is simply that you do A, not B.

[00:06:54] Speaker 01:
A being the common reference, B being the per block reference?

[00:06:59] Speaker 03:
No, but the per block is for the common reference picture information itself.

[00:07:04] Speaker 03:
The common reference picture information, you describe it just once.

[00:07:08] Speaker 03:
You don't have to describe that common reference picture information each time per block.

[00:07:14] Speaker 03:
That's what that limitation is saying.

[00:07:16] Speaker 03:
So what's wrong with that understanding?

[00:07:18] Speaker 01:
Okay, it's contrary to the prosecution history and how this language is specifically and explicitly described and defined in the prosecution history, Appendix 1161.

[00:07:29] Speaker 01:
There, it was very clearly stated unequivocally that in the present invention, in contradistinction

[00:07:37] Speaker 01:
with the Fukuhara reference that was applied in the office action.

[00:07:41] Speaker 01:
What's required is that first that in the context is that reference picture information is described per block, whether it's common or not.

[00:07:51] Speaker 01:
That's the issue.

[00:07:53] Speaker 01:
that if you had the same reference picture information for eight blocks in a row, then you have, in that scenario, in that limited scenario, you will have a decrease in coding efficiency, because you would be redundantly describing that common, that same reference picture per block.

[00:08:08] Speaker 01:
And that was described in,

[00:08:11] Speaker 01:
More possibility to increase coding efficiency is describing reference pictures per block, the reason being that allows you to select reference pictures per block and thereby find the most optimum reference picture.

[00:08:24] Speaker 01:
But in certain scenarios, when you have the same reference picture for a number of blocks in a row, a plural block image unit for example, then it would be redundant to do what is otherwise done.

[00:08:35] Speaker 01:
which is what you can selectively do, which is describe and signal that information per rock.

[00:08:41] Speaker 01:
So instead of doing that, you would instead describe it in just a common information area.

[00:08:50] Speaker 00:
Did the panty reference the preamble in relation to Fukuhara?

[00:08:54] Speaker 01:
Not explicitly, the patentee described the present invention in contradistinction to the prior art and quoted the instead of limitation.

[00:09:03] Speaker 01:
However, the patentee described the invention to include selecting reference pictures on a per-block basis, which is what is recited in the preamble, and then stated in addition to that, and that results in an increase in compression efficiency.

[00:09:16] Speaker 02:
What page are we looking at for the prosecution history?

[00:09:20] Speaker 01:
1161 through 1163 of the appendix.

[00:09:28] Speaker 01:
And starting at the third line, in contradistinction with Fukuhara et al., in the present invention, dot, dot, dot, identifies for each block one or more reference pictures included in the reference picture list.

[00:09:44] Speaker 01:
That's what Pellant contends needs to be given limiting effect by virtue of the instead of language.

[00:09:50] Speaker 02:
So why didn't you amend the claim to be clear that that's what you're talking about?

[00:09:54] Speaker 02:
During the re-exam?

[00:09:56] Speaker 02:
Well, this is the initial.

[00:09:58] Speaker 02:
examination, right?

[00:10:01] Speaker 01:
There was no dispute in the initial examination.

[00:10:03] Speaker 01:
This is from the re-examination.

[00:10:04] Speaker 01:
No, this is the initial examination.

[00:10:06] Speaker 02:
Yeah.

[00:10:06] Speaker 02:
So why in the initial examination didn't you amend the claim to make clear what it covered?

[00:10:13] Speaker 01:
I'm not sure.

[00:10:13] Speaker 01:
I can't speak for the counsel there, but looking at the record, it seems clear that the appellant... The examiner responded to this by issuing a final rejection, right?

[00:10:22] Speaker 01:
The examiner withdrew this reference and issued a final rejection with a different reference?

[00:10:25] Speaker 03:
Yes.

[00:10:26] Speaker 03:
Right.

[00:10:27] Speaker 03:
And then you had to further amend the claim.

[00:10:30] Speaker 03:
It was further amended to add the such that can be omitted.

[00:10:34] Speaker 03:
So I guess my point is that the prosecution is just further and further clarifying what's going on with the common reference picture information inside of step B of describing.

[00:10:50] Speaker 03:
And it doesn't have anything to do with pulling in some separate

[00:10:56] Speaker 03:
notion that is recited in the preamble about selecting a reference picture on a block basis?

[00:11:04] Speaker 01:
Well, if it's the Patent Office's position, if it's the Your Honor's position, that the instead of language does not convey what's described right here as selecting a reference picture on a block basis in the prosecution history, then certainly that means the preamble is where that language

[00:11:19] Speaker 01:
necessarily is, but the preamble specifically states selecting reference pictures on a block basis.

[00:11:25] Speaker 03:
So if it's the court's position that that is not captured in the instead of language, and it's at least captured in the preamble, and it's also appellate position... If the preamble were to give the given patentable weight, then to me, what the method would call for is selecting a reference picture on a block basis

[00:11:44] Speaker 03:
And in addition to that, selecting a common reference picture, which would be described just once in a common information area.

[00:11:56] Speaker 03:
That's right.

[00:11:56] Speaker 03:
And I think you want both of those steps to be taken every single time.

[00:12:01] Speaker 03:
But the claim as written wouldn't call for a choice between one, it would call for both.

[00:12:11] Speaker 01:
Well, in one way, MAD rating is fine as well.

[00:12:14] Speaker 01:
It can call for both, but they can call for both for different blocks sequentially.

[00:12:17] Speaker 01:
And in fact, they can call for the same.

[00:12:18] Speaker 03:
Well, I don't think it calls for it for different blocks sequentially.

[00:12:22] Speaker 03:
I don't see it saying that.

[00:12:23] Speaker 03:
I would see it saying that you've got to do both every time.

[00:12:29] Speaker 01:
well, even if that was the case, you have an example in the specification, the embodiment of Figure 7 that's cited by all parties, where you do have both done for that particular current block that's being encoded.

[00:12:39] Speaker 01:
I don't see that in Figure 7.

[00:12:41] Speaker 01:
Sure, I can show you.

[00:12:43] Speaker 01:
So Figure 7, if you go to the Appendix, Figure 7 of the patent, Appendix 18, and this is also described in the opening brief.

[00:12:56] Speaker 01:
But you'll see that

[00:12:58] Speaker 01:
The default ref number, that's in the picture header.

[00:13:02] Speaker 01:
That's the common information area.

[00:13:04] Speaker 03:
This is a different embodiment, though, when you have ref number two and then compared to having a ref number one and ref number two and figure three.

[00:13:14] Speaker 03:
And now you're pulling out the ref number one from figure three and replacing it with the default reference number in figure seven.

[00:13:24] Speaker 03:
I mean, what you're claiming has nothing to do with reference number two.

[00:13:29] Speaker 01:
No, that's the point of disagreement.

[00:13:31] Speaker 01:
Reference number two is the per block reference.

[00:13:34] Speaker 01:
That is the block, the reference picture that is selected on a block basis.

[00:13:38] Speaker 01:
That's ref number two.

[00:13:39] Speaker 01:
And then default ref number is step B block, the common picture that is selected on a plural block basis.

[00:13:47] Speaker 01:
And again, this support for this interpretation is described both in 1161.

[00:13:52] Speaker 01:
1161 describes that exactly.

[00:13:56] Speaker 01:
figure 7 is the support for this interpretation, and this embodiment that's being claimed is one example of the support.

[00:14:04] Speaker 01:
That's at 1161, and it's also briefed in the opening brief and throughout describing the invention.

[00:14:10] Speaker 01:
So in figure 7, we do have both happening.

[00:14:14] Speaker 01:
So even if you interpret this as requiring both to happen on the same block, that's what's shown in figure 7.

[00:14:20] Speaker 00:
Can you just clearly tell me what's your best argument for why you believe the preamble should be limiting in this case?

[00:14:28] Speaker 01:
Sure, succinctly.

[00:14:30] Speaker 01:
Because the preamble at the least describes the requisite context in which the invention is performed.

[00:14:35] Speaker 01:
Giving the preamble rate is the only construction that stays true to the entire record, particularly the prosecution history, which unequivocally states

[00:14:46] Speaker 01:
Basically appellant's construction and it's irreconcilable with the boats construction giving no way it's completely irreconcilable all this reasonable interpretation here, right?

[00:14:55] Speaker 01:
Yes, that's right, okay?

[00:14:59] Speaker 01:
So okay, I can be done with your questions.

[00:15:01] Speaker 01:
I can We're gonna be two minutes for a bottle.

[00:15:04] Speaker 01:
Yeah, I've reserved the two minutes for a bottle.

[00:15:06] Speaker 01:
That's okay.

[00:15:07] Speaker 02:
Okay, mr. Tyler

[00:15:18] Speaker ?:
Okay.

[00:15:27] Speaker 04:
Good morning, and may it please the Court.

[00:15:30] Speaker 04:
This appeal presents two straightforward claim construction issues for this panel to decide.

[00:15:36] Speaker 04:
The Board, faithfully applying this Court's claim construction precedents, determined that the preamble of Claim 1 is not a limitation, as well as interpreted Step B of the claim, to not require the language that comes out after the instead of clause in that claim.

[00:15:56] Speaker 04:
Because the board faithfully applied the precedence, we asked that this court affirm on both grounds.

[00:16:01] Speaker 04:
Starting first with the preamble, the board started with the general proposition that a claims preamble is not limiting.

[00:16:09] Speaker 04:
And then it went through the five exceptions that this court has articulated and found that none of them rose to the level of making this particular preamble limiting.

[00:16:20] Speaker 04:
And I think to Judge Kenningham's question in my

[00:16:25] Speaker 04:
colleagues' time, it really is a preview.

[00:16:28] Speaker 04:
It's like that thumbnail of what is to come, and the claim even starts with a method for

[00:16:35] Speaker 04:
goes on to kind of give you a highlight of what it's going to do, and then it has the magic comprising language.

[00:16:41] Speaker 04:
Each of the three steps that are described in the preamble are then fully described later in the claim.

[00:16:48] Speaker 04:
And that's the view that the board took of the claim, is that the preamble was not adding limitations.

[00:16:54] Speaker 04:
It wasn't necessary to understand the structure of the claim.

[00:16:58] Speaker 04:
And the four steps that are recited in the claim provide a complete and full invention.

[00:17:04] Speaker 04:
And so they determined that the preamble was not limiting.

[00:17:10] Speaker 04:
And if there are no further questions on the preamble, I'll move on to the instead of language.

[00:17:15] Speaker 04:
And here again, I think although it may be a bit high level, I think the board's analogy on house painting really kind of hits home here.

[00:17:24] Speaker 03:
And that is... Can you go back to the preamble for a second?

[00:17:28] Speaker 03:
It's your understanding that when the preamble refers to selecting a reference picture from among reference pictures on a block basis, that reference to a reference picture is the same thing as the later recited common reference picture in the body?

[00:17:48] Speaker 03:
That was my understanding, Your Honor.

[00:17:52] Speaker 03:
I mean, the common reference picture

[00:17:57] Speaker 03:
I mean, it says a common reference picture in the body.

[00:18:01] Speaker 03:
It doesn't say said common reference picture or said reference picture.

[00:18:06] Speaker 03:
Or the reference picture.

[00:18:07] Speaker 03:
So why would we assume that when it talks in the body about a common reference picture, chosen from among plural reference pictures, that that's the same reference picture as the one referred to in the preamble?

[00:18:31] Speaker 04:
I think part of the problem, Your Honor, is that would presuppose that the preamble is limiting and is referring to the same thing.

[00:18:37] Speaker 04:
I think the issue comes in that the preamble in describing the reference picture is talking about the selection of one, and then the claim limitation that we're discussing about the common reference picture is in the describing step.

[00:18:52] Speaker 03:
No, I'm looking at the selecting step, selecting using a selection unit.

[00:19:01] Speaker 03:
a common reference picture to be commonly referred to.

[00:19:03] Speaker 04:
I apologize, Your Honor.

[00:19:11] Speaker 04:
I don't have a very solid answer to your question on that.

[00:19:16] Speaker 04:
I think when we look at what the patent is teaching, one thing that my colleague didn't point you to at any point was anywhere in the specification.

[00:19:24] Speaker 04:
And when we're talking about what the invention is directed to, it's about making a coding more efficient.

[00:19:30] Speaker 04:
And in the patent it actually describes

[00:19:34] Speaker 04:
looking at step B to describing whether we do it on a plural block basis or a block by block basis, it talks about that the efficiency is gained by not doing what is after the instead of language in step B.

[00:19:49] Speaker 04:
And that can be, oh, yeah.

[00:19:51] Speaker 04:
They cite to figure seven.

[00:19:53] Speaker 04:
Yes, your honor.

[00:19:54] Speaker 04:
And if you look at page three of our web brief, I think it's a good place to kind of look side by side at what the prior art is doing and what the figure seven is doing.

[00:20:05] Speaker 04:
And it would be our contention that the step B could be reread as saying,

[00:20:10] Speaker 04:
do our invention instead of doing the priority.

[00:20:14] Speaker 04:
So do A instead of B, where B is what is described in figure three here labeled priority.

[00:20:22] Speaker 04:
And that same idea and sort of thrust of the invention can be found in column 11, lines 8 through 15, as well as column 23, lines 48 through column 24, line 2, where they talk about the advantage to be gained in the invention is not having to describe or provide any information on a block-by-block basis.

[00:21:03] Speaker 04:
I'll just touch on real quickly the prosecution history timeline because I think we started on it.

[00:21:10] Speaker 04:
But as Judge Chen pointed out, the discussion about Fukuhara and the instead of language was prior to the final rejection, which then it was clear when the claim was allowed.

[00:21:26] Speaker 04:
It was the inclusion after that rejection

[00:21:29] Speaker 04:
of this language in step B that calls for the omission of some of the data.

[00:21:35] Speaker 04:
And I think it's really important to keep in mind that the patentee could have drafted a method claim where you do identify for each block a reference image.

[00:21:48] Speaker 04:
And then the next step, you do something to omit some of those.

[00:21:52] Speaker 04:
Or you could have written a step that says, do it and then ignore it.

[00:21:57] Speaker 04:
But what we have here is really, and I understand that this court does not like making claim language superfluous, but in the case I actually cite the inconsolidated cases, that language was found superfluous because it was redundant for what was already said in the claim.

[00:22:15] Speaker 04:
And here I think the fairest read of this claim is to read it as, do A, not B.

[00:22:21] Speaker 04:
And in the method step, as soon as I practice A, and if I haven't done B, I probably have forgotten.

[00:22:27] Speaker 04:
In this case, they are, they could be viewed as mutually exclusive.

[00:22:30] Speaker 04:
But once you do A, you have forgotten doing B. But if there are no further questions.

[00:22:42] Speaker 04:
In some ways, I feel like any step in a method claim has a silent instead of.

[00:22:48] Speaker 04:
It's the opportunity cost of doing it the way that you're describing in the method.

[00:22:53] Speaker 04:
So another analogy would be a method of traveling from D.C.

[00:22:58] Speaker 04:
to New York by train instead of plane.

[00:23:03] Speaker 04:
At what point do I, if I get from here to New York by train, I would argue under, and I think it is the correct instruction, that you would have satisfied that limitation.

[00:23:15] Speaker 04:
Regardless of if there's even a plane flight scheduled, regardless of if you bought a ticket or if you even looked for a ticket, if you took a train from D.C.

[00:23:24] Speaker 04:
to New York, you have done so instead of flying.

[00:23:33] Speaker 02:
Okay, all right, thank you.

[00:23:34] Speaker 02:
Thank you.

[00:23:45] Speaker 01:
Thank you, Your Honors, Your Counsel.

[00:23:48] Speaker 01:
So a couple of points.

[00:23:49] Speaker 01:
First, with respect to the case law that my opposing counsel referred to in suggesting that the preamble is superfluous with the body, I think that we've addressed this point.

[00:24:02] Speaker 01:
I want to reiterate it.

[00:24:03] Speaker 01:
Again, it's not superfluous.

[00:24:05] Speaker 01:
That's one distinguishing fact from that case law.

[00:24:08] Speaker 01:
It's not superfluous.

[00:24:09] Speaker 01:
In that case law, the preamble recited a method for treating cancer, I believe it was, and the body recited the dosages.

[00:24:17] Speaker 01:
In that case,

[00:24:18] Speaker 01:
the preamble recited an intended purpose, and it was superfluous with the actual dosages amounts that are used to achieve that purpose.

[00:24:28] Speaker 01:
That's distinguishable from this case.

[00:24:29] Speaker 01:
The preamble here is not superfluous with the body because selecting reference pictures on a block basis is very different from selecting reference pictures for a plurality of blocks, which is what's in the body.

[00:24:41] Speaker 01:
Second, instead of, Judge Cunningham, your last question, what is the meaning of instead of?

[00:24:46] Speaker 01:
Is it different than not?

[00:24:47] Speaker 01:
Well, the record shows

[00:24:48] Speaker 01:
the Pelly's own reply brief that instead of necessary, a response brief, instead of necessarily, necessarily conveys a choice, a choice between A and B. And the board's analogy, paint the house red instead of blue, blue has to still exist in the world, just like the plane has to still exist in the world.

[00:25:08] Speaker 01:
But in the world of the prior art references, H.263 plus references used in Valerity Grounds, there is no, there's not even contemplate

[00:25:18] Speaker 01:
The B does not even contemplate the blue paint or the plane.

[00:25:21] Speaker 01:
It does not exist in that world.

[00:25:23] Speaker 01:
So while the claim recites doing A instead of B, the prior art discloses doing A instead of doing nothing, such that nothing can be omitted.

[00:25:33] Speaker 03:
Does your client have any claims that write out this A or B notion more clearly in the claim?

[00:25:42] Speaker 03:
Like, for example, if the same

[00:25:47] Speaker 03:
pictures being used or relied on for multiple blocks, then have a common reference picture described in a common information area.

[00:25:59] Speaker 03:
And then when different reference pictures are being used for different blocks,

[00:26:06] Speaker 03:
then describe the different reference pictures on a block basis.

[00:26:11] Speaker 03:
Do you have any claims that actually spell it out like that?

[00:26:15] Speaker 01:
So during the re-exam, seven dependent claims were added.

[00:26:18] Speaker 01:
And some of them do spell out in detail.

[00:26:20] Speaker 01:
But just so there's no confusion, there's no issue of claim differentiation here because they're more narrow.

[00:26:26] Speaker 01:
So this is the independent claim more generic.

[00:26:28] Speaker 03:
I guess what I'm trying to understand and figure out is it feels to me that

[00:26:33] Speaker 03:
For what you want, this feels like an incompletely drafted claim.

[00:26:40] Speaker 03:
It doesn't actually recite the kinds of additional thoughts that you want us to read into this claim.

[00:26:50] Speaker 03:
It sounds like the dependent claims that you've drafted actually finally get there and explain all of this context that you want about how

[00:27:01] Speaker 03:
there can be a method that does X sometimes and other times it does Y. So the dependent claims that were added confirmed patentable during the re-exam.

[00:27:12] Speaker 01:
Again, they're more narrow, but they do avoid this issue altogether by clearly spelling out.

[00:27:18] Speaker 01:
And that's why this was resolved in the opponent's favor.

[00:27:22] Speaker 01:
The invalidity ruling should also be reversed.

[00:27:25] Speaker 02:
I'm baffled as to why that wasn't done in the first place.

[00:27:29] Speaker 02:
During the original prosecution?

[00:27:31] Speaker 02:
Yeah.

[00:27:32] Speaker 02:
I mean, you wanted the claims to be broader.

[00:27:35] Speaker 02:
Why did you leave it so that at best it's unclear?

[00:27:42] Speaker 01:
So I can't speak for the prior counsel or what the applicant was thinking at the time.

[00:27:47] Speaker 01:
But, again, looking at the record, Appendix 1161, it seems clear that at least the applicant believed that the language in the claim as it is now conveyed that.

[00:27:57] Speaker 01:
And that's specifically and explicitly what they argued, which is our appellant's construction.

[00:28:02] Speaker 01:
So at least it seems from the record that they had a belief that it was sufficiently there.

[00:28:06] Speaker 01:
Now, of course, hindsight being 20-20, go back.

[00:28:12] Speaker 01:
it's intended to define their invention in the record through the prosecution.

[00:28:22] Speaker 01:
Thank you, Your Honor.

[00:28:23] Speaker 02:
Do I have any other questions?