[00:00:00] Speaker 00:
Next case for argument is 24-1492, CPC Patent Technologies versus ASAP Abloy.

[00:00:10] Speaker 00:
Mr. Coyle, please proceed.

[00:00:12] Speaker 01:
Thank you, Your Honors.

[00:00:13] Speaker 01:
Good morning.

[00:00:14] Speaker 01:
May it please the court.

[00:00:15] Speaker 01:
My name is Steve Coyle.

[00:00:16] Speaker 01:
I'm here on behalf of the Appellant CPC.

[00:00:19] Speaker 01:
This is obviously a case involving the exact same patent and, frankly, even the exact same claim limitation as the argument that preceded us.

[00:00:27] Speaker 01:
But this is a different case.

[00:00:29] Speaker 01:
We have a different petitioner.

[00:00:30] Speaker 01:
We have a different petition, different prior art, different arguments, different experts, different evidence.

[00:00:35] Speaker 00:
I appreciate that, but what if we were to hypothetically affirm

[00:00:40] Speaker 00:
The other case, how does that result impact your case?

[00:00:45] Speaker 01:
My understanding is that in the prior case, there are only four of the 20 039 patent claims at issue.

[00:00:52] Speaker 01:
So if you were to firm in that case, it would only invalidate four claims.

[00:00:55] Speaker 00:
So you have left for the purposes of this appeal one, two, 19, and 20?

[00:01:00] Speaker 00:
Or is that?

[00:01:01] Speaker 00:
Those would be the ones that issue.

[00:01:03] Speaker 01:
Those would be the ones that would have come out.

[00:01:05] Speaker 01:
I apologize.

[00:01:06] Speaker 01:
Those would be the ones that would be invalidated if you were to affirm.

[00:01:10] Speaker 01:
The remaining claims still need to be adjudicated.

[00:01:16] Speaker 01:
The specific issue in this case, Your Honor, I don't believe there's any dispute, is whether or not the particular prior art to zoo discloses the defining limitation.

[00:01:26] Speaker 01:
Importantly, the defining limitation in this case was construed by the board the same way that it was construed in the prior case, that the card information itself must be what establishes the memory address at which the fingerprint data will be stored.

[00:01:44] Speaker 03:
In the blue brief at 27, you claim that the board's, and I'm quoting you, finding this too, in fact, discloses

[00:01:54] Speaker 03:
how the card information and biometric signature also are stored in the database is contradicted by Appellee's expert so-called admission that Sue is silent on how a new user record is created during enrollment.

[00:02:11] Speaker 03:
It looks to me like you take that out of context.

[00:02:15] Speaker 03:
The full sentence in the record pertaining to the governing standard of the PASIDA is,

[00:02:23] Speaker 03:
Although Sue is silent on how a new user record is created, and then it says it would have been obvious for Zeta using simple known options for creating database records.

[00:02:40] Speaker 03:
Why not quote the full sentence?

[00:02:46] Speaker 01:
The admission is the first part of the sentence.

[00:02:50] Speaker 01:
the rest of his opinion in that portion.

[00:02:53] Speaker 01:
And I'm looking right now.

[00:02:54] Speaker 01:
This is from Appendix 1360.

[00:02:55] Speaker 01:
This is paragraph 33 of Mr. Lipov's second declaration.

[00:03:00] Speaker 01:
And the importance of that, Your Honor, is that essentially, and this is what we have argued, is that ZU does not disclose that it is the card information, or for purposes of ZU, that's the employee ID number, that itself

[00:03:15] Speaker 01:
establishes the memory location.

[00:03:17] Speaker 01:
And this portion that we quote is exactly because all Zeus says is that there.

[00:03:23] Speaker 03:
But the board finding refers to Zeus' disclosure of how information storage happens.

[00:03:30] Speaker 01:
Yes.

[00:03:31] Speaker 03:
But the so-called admission is how a new user record is created, right?

[00:03:38] Speaker 01:
The admission goes to how a new user, in other words, during enrollment,

[00:03:42] Speaker 01:
how the new user record with the stored fingerprint data is created.

[00:03:47] Speaker 01:
And what's important about Paragraph Thereof... Why are they inherently contradictory?

[00:03:52] Speaker 01:
It's establishing that even Mr. Lipoff acknowledges

[00:03:56] Speaker 01:
that Zoo itself is silent as to how this new user record is created.

[00:04:00] Speaker 01:
In other words, how the fingerprint data is stored.

[00:04:03] Speaker 01:
And then he must transition in his paragraph where you quoted, Your Honor.

[00:04:07] Speaker 01:
He transitions to what he calls simple known options.

[00:04:10] Speaker 01:
Because the information isn't in Zoo itself.

[00:04:13] Speaker 01:
So he has to go outside of Zoo to what he refers to as simple known options to find the defining limitation.

[00:04:21] Speaker 01:
And as we address in our brief, Your Honor, very importantly, and I

[00:04:26] Speaker 01:
you know, encourage scrutinization of paragraphs 33 and 34 of Mr. Libov's second declaration at appendix 1360 and 61.

[00:04:35] Speaker 01:
This is relied on by the board for the

[00:04:40] Speaker 01:
proposition that Mr. Lipoff does, in fact, explain that there are previous database structures that are, as he says, simple known options.

[00:04:50] Speaker 01:
But careful review of those two paragraphs of Mr. Lipoff's declarations, which are important to the board's decision, shows that they do not amount to substantial evidence.

[00:05:00] Speaker 01:
They are entirely conclusory.

[00:05:02] Speaker 00:
So if he had cited one article in the literature, would that have been sufficient?

[00:05:08] Speaker 01:
It's a hypothetical.

[00:05:09] Speaker 01:
It would depend what the article said.

[00:05:10] Speaker 01:
Maybe it would.

[00:05:12] Speaker 01:
Perhaps it would, but he cited zero.

[00:05:14] Speaker 01:
I mean, the point is he cited nothing.

[00:05:16] Speaker 01:
He was qualified as an expert in this area.

[00:05:20] Speaker 01:
He knows what a procedure is.

[00:05:22] Speaker 01:
We're not disputing whether he is a person of skill in the art.

[00:05:26] Speaker 01:
And again, my friend, the petitioner, has argued that we're overly rigid in our view of the evidence that would be substantial evidence from Mr. Lipoff, and he's entitled to rely on his education experience.

[00:05:38] Speaker 01:
I would simply say to that,

[00:05:39] Speaker 01:
He has to at least say what that education and experience is particular to the issues that he's opining about.

[00:05:46] Speaker 01:
Otherwise, we're just left with conclusions.

[00:05:48] Speaker 01:
Bare, naked, potentially hindsight-driven conclusions.

[00:05:52] Speaker 03:
Just out of idle curiosity, how did he qualify as an expert?

[00:05:57] Speaker 01:
He has... Well, the board qualified him.

[00:06:03] Speaker 01:
I didn't qualify him.

[00:06:05] Speaker 01:
Yeah, we did not challenge his level of expertise.

[00:06:10] Speaker 01:
But that is a different issue.

[00:06:12] Speaker 01:
Being an expert generally qualified to testify to the issues in this case, respectfully, I would submit, Your Honor, is not the same thing as actually providing substantial evidence to support what he vaguely refers to as simple known options.

[00:06:26] Speaker 01:
What was his record for qualification?

[00:06:29] Speaker 01:
Where is it?

[00:06:32] Speaker 03:
Is it in the record?

[00:06:34] Speaker 01:
I have to confess, I do not recall, but I assume that his CV is in the record somewhere.

[00:06:39] Speaker 01:
Perhaps not in the appendix record, but below.

[00:06:43] Speaker 01:
We did not challenge his qualifications generally as an expert.

[00:06:48] Speaker 04:
One question I have on this very point is that Mr. Lipoff here is, it seems to be going

[00:06:59] Speaker 04:
beyond Sue, the disclosure of Sue.

[00:07:03] Speaker 04:
And he's right here not saying that there's something necessarily inherent in Sue about how you would necessarily go about creating a new user record.

[00:07:16] Speaker 04:
He instead seems to be saying, OK, Sue has some missing content on that score.

[00:07:23] Speaker 04:
But guess what?

[00:07:23] Speaker 04:
It'd be obvious to try any one of the series of known solutions for that.

[00:07:31] Speaker 04:
And so that appears to be deviating from relying on SU as, in fact, teaching that point.

[00:07:39] Speaker 04:
And in a sense, for this limitation, they were relying on SU, but now it's really SU prime, some obvious modification of SU.

[00:07:52] Speaker 01:
Yes, sir.

[00:07:53] Speaker 01:
That's exactly right.

[00:07:54] Speaker 01:
And that's what we think happened ultimately throughout the board's decision is that the board acknowledges really that the disclosure ensue is simply of relationally associating the card information or the employee ID with fingerprint data.

[00:08:12] Speaker 01:
But it doesn't establish where.

[00:08:14] Speaker 01:
And so both the board and Mr. Lipov have to go outside of the zoo to these alleged simple non-options.

[00:08:21] Speaker 04:
What I'm trying to understand is, is this a new theory, or is this part of the unpatentability theory all along?

[00:08:31] Speaker 01:
Is it a new theory from the petitioner you're asking, Your Honor?

[00:08:34] Speaker 01:
Right.

[00:08:35] Speaker 01:
This is all part of what was in the record below.

[00:08:40] Speaker 01:
In other words, Mr. Lipov's second declaration was in the record below.

[00:08:47] Speaker 04:
I was wondering if this particular argument didn't surface until Mr. Lipov submitted his second declaration, which is obviously going to be pretty deep into the IPR.

[00:08:59] Speaker 01:
I'll defer to the petitioner to identify if they believe that that argument was made below where they believe that it was.

[00:09:07] Speaker 01:
The issue that I would point out about this, and I would say that this circumstance is very similar to this court's 2019 decision in the TQ Delta case, which is cited in our briefs.

[00:09:19] Speaker 01:
In that case, the court held that conclusory expert testimony does not rise to the level

[00:09:27] Speaker 01:
substantial evidence.

[00:09:29] Speaker 01:
And there, very similar to here, there the expert opined that it would have been obvious to combine two pieces of prior art using.

[00:09:38] Speaker 04:
I don't think we've really gotten to the point of the case yet, which is the fact that the board relied on this in association with language to essentially equate that through some inference and logic to match enough with the claim limitation.

[00:09:53] Speaker 04:
Can you just speak to that?

[00:09:54] Speaker 01:
Yes, your honor.

[00:09:55] Speaker 01:
Thank you.

[00:09:57] Speaker 01:
Yeah, I think a legal error that the court made, that the board made below, is that after it correctly defined the defining limitation to require that it must be the card information that establishes the memory address where fingerprint data would be stored, it essentially embarks on what we

[00:10:17] Speaker 01:
think is only characterized as hindsight reasoning, looking at zoo, and suddenly, essentially injects into the case this notion that simply relationally storing two things together satisfies the defining limitation.

[00:10:33] Speaker 01:
And that's an improper expansion

[00:10:37] Speaker 01:
of its claim construction.

[00:10:40] Speaker 04:
I mean, we heard in the prior panel that the theory must be that a user record gets created and then gets populated with the user account number first.

[00:10:54] Speaker 04:
And then the biometric data comes in second.

[00:10:58] Speaker 04:
And then, because the record's already been created, and with the account number, you know where to store the biometric data.

[00:11:10] Speaker 04:
To just sort of echo the theme of the prior field.

[00:11:13] Speaker 04:
Yeah, I think that's- And whether or not that theory is correct, is that the essence of the theory here?

[00:11:25] Speaker 01:
It's unclear to me from the board's decision, Your Honor, if it is literally saying that the simple relationship between each other qualifies as an establishment of a memory address, or if what the board is saying is by a transitive property, because we know where the employee ID information is going to be stored, we therefore know where

[00:11:49] Speaker 01:
the fingerprint data will be stored.

[00:11:51] Speaker 01:
If it's the first, that it's just the two things together satisfies the set or establish, that's an improper expansion of the original correct claim construction.

[00:12:02] Speaker 01:
And there is no intrinsic support for the notion that simply putting two things together in memory satisfies the defining orientation.

[00:12:10] Speaker 01:
And I would refer the court to just figure four, for example, of the 039 patent, which very clearly

[00:12:17] Speaker 01:
shows that the card data must establish a specific address in memory.

[00:12:23] Speaker 01:
If it's the latter scenario, in other words, if the board concluded that there is something about Zoo's employee ID that is itself tethered to a memory address,

[00:12:34] Speaker 01:
That finding is absolutely not supported by any substantial evidence.

[00:12:37] Speaker 01:
There is nothing in ZU.

[00:12:39] Speaker 01:
The main relevant paragraph of ZU is paragraph 26.

[00:12:43] Speaker 00:
So you're running out of time.

[00:12:44] Speaker 00:
Let me just ask you to assume hypothetically that we would agree with you that the board

[00:12:49] Speaker 00:
It's the claim construction.

[00:12:52] Speaker 00:
Where does that leave us on remand?

[00:12:54] Speaker 00:
Does it leave us to have them do over?

[00:12:57] Speaker 00:
We know there are other combinations there that haven't yet been adjudicated by the PTAB.

[00:13:01] Speaker 00:
So what does a remand look like to you if we accept your argument?

[00:13:07] Speaker 00:
with respect to defining.

[00:13:08] Speaker 01:
If it's a claim construction issue, it's a legal issue that the court is entitled to review and determine de novo.

[00:13:15] Speaker 01:
So we think that the evidence that's in the record clearly shows that ZU does not.

[00:13:20] Speaker 00:
Well, it's not really a claim construction issue.

[00:13:22] Speaker 00:
We agree with the claim construction.

[00:13:24] Speaker 00:
The question is how you apply the claim construction to ZU.

[00:13:27] Speaker 00:
So it's not really just de novo claim construction.

[00:13:30] Speaker 01:
Assuming that the board agrees that the court's original construction is the correct construction and that it improperly expanded it in its finding, I think that there's enough evidence in the record to look at and determine that, in fact, there is no such disclosure that Zoo establishes a specific memory address and you could reverse.

[00:13:49] Speaker 00:
On that issue?

[00:13:50] Speaker 00:
Yes, Your Honor.

[00:13:50] Speaker 00:
Then leaving, of course, the other combinations to me.

[00:13:53] Speaker 01:
Correct, Your Honor.

[00:13:54] Speaker 04:
So there's other pending proposed grounds of unpatentability that do not rely on the Sioux reference for teaching this limitation of the final, depending on the card information, the memory location.

[00:14:06] Speaker 00:
I honestly think they all rely on Sioux.

[00:14:07] Speaker 01:
I was just going to say my recollection, Your Honor, is that they all rely on Sioux.

[00:14:11] Speaker 00:
But other pieces of prior art and combinations.

[00:14:14] Speaker 00:
Correct, Your Honor.

[00:14:29] Speaker 02:
Morning.

[00:14:30] Speaker 02:
May it please the court, Lionel Avenue from Benign for Appellees.

[00:14:33] Speaker 02:
We believe that the issue here really boils down to the Sioux reference in combination with the expert testimony of Mr. Lipov.

[00:14:40] Speaker 04:
Can you just answer the housekeeping question of what if we were to conclude that there is no substantial evidence that Sioux teaches this one defining a memory location limitation?

[00:14:52] Speaker 04:
What would that mean for the other grounds of unpatentability that were in the petition but the board did not address?

[00:15:00] Speaker 04:
Would they all fall because each one of those proposed grounds necessarily relies on this particular reference and only this particular reference for meeting this particular limitation?

[00:15:11] Speaker 02:
They do, but if that were to occur, we believe that it should be remanded at least for the board to look at the combinations to see whether or not there is still a remaining issue on the defining step.

[00:15:23] Speaker 02:
Because two is the main reference, but there are combinations, and that would be to go at least back up to the board.

[00:15:29] Speaker 02:
OK.

[00:15:30] Speaker 02:
Thank you, Your Honor.

[00:15:32] Speaker 02:
So here I would submit, Your Honors, that we do have substantial evidence based upon the Sioux reference.

[00:15:37] Speaker 02:
And the reason is that the Sioux reference was relied upon by the board for two particular paragraphs, paragraph 20 and 26.

[00:15:46] Speaker 02:
Paragraph 20 of the Sioux reference defines a database 44 and explains that in that database there is a table where memory locations are defined based upon user information.

[00:15:59] Speaker 02:
And that is what the defining step that we're looking at is talking about.

[00:16:03] Speaker 02:
According to the claim itself, it is defining based upon a memory location.

[00:16:09] Speaker 02:
And we have Sue using a database table that's defining based upon a memory location in a table, and that's paragraph 20.

[00:16:17] Speaker 00:
Is this your argument in the brief, red 22, 23, you make an argument that the board didn't actually equate the terms associate with defined, stead, or established.

[00:16:31] Speaker 00:
You said that it instead held that the board held it was the effect of the association that disclosed limitation 1C.

[00:16:39] Speaker 00:
And do you really think that something having the effect of limitation 1C is enough to disclose it?

[00:16:48] Speaker 02:
Yes, Your Honor, because the claim construction was sets or determines where the fingerprint is stored.

[00:16:54] Speaker 02:
So that's the claim construction.

[00:16:56] Speaker 02:
It was proposed by CPC.

[00:16:58] Speaker 02:
It was agreed to by us.

[00:16:59] Speaker 02:
And the board adopted it.

[00:17:00] Speaker 02:
And there's no dispute on that claim construction.

[00:17:02] Speaker 02:
So the fact that the board looked at the words associated with ensue and said, well, we see that you have

[00:17:10] Speaker 02:
a user card that has user information and that goes to a database that is a table and you cannot put the fingerprint information into SUE

[00:17:21] Speaker 02:
unless you have the user information that tells you where in the database, where in the table in the database to put the fingerprint information.

[00:17:32] Speaker 02:
That is exactly what the patent is doing.

[00:17:34] Speaker 02:
The patent is basically, it's like a US Postal Service post office box where you have a lot of boxes

[00:17:41] Speaker 02:
and you have an identification number that's individualized to the owner of that box.

[00:17:46] Speaker 02:
Well, you know where to put your fingerprint inside of the box in Sue and in the patent because you have an identification code of the user.

[00:17:54] Speaker 04:
Just a concern I have still is that the fact that the Sue reference talks about these two pieces of data being stored in relation to each other or in association with each other

[00:18:11] Speaker 04:
doesn't quite tell me why it is necessarily so that the card data, the account number, is somehow

[00:18:21] Speaker 04:
channeling or guiding the system on where to store the fingerprint data.

[00:18:26] Speaker 04:
Just the fact, the end result is these two pieces of data get stored somehow in association with each other.

[00:18:32] Speaker 04:
But that outcome doesn't necessarily tell me how those two pieces of data got there in the first place.

[00:18:41] Speaker 04:
How did the fingerprint data wind up getting stored where it did get stored?

[00:18:46] Speaker 04:
And to what extent did the user account number

[00:18:49] Speaker 04:
channel the system to put the fingerprint data in that particular location.

[00:18:54] Speaker 04:
That's kind of the mystery that I'm trying to unwind.

[00:18:59] Speaker 04:
And I don't quite see how the phrase, one thing being stored in association with another thing, tells me the answer to that mystery.

[00:19:10] Speaker 02:
And Your Honor, I think the answer to your question is throughout the Sioux reference, if we look at paragraph 5 through 13,

[00:19:18] Speaker 02:
It is indicated that you cannot place the fingerprint information into the database until you have the preliminary identification information, which is clarified in paragraph 26.

[00:19:31] Speaker 02:
And I'm quoting from paragraph 26.

[00:19:32] Speaker 02:
It says, if the user does not have such a number, a user identification number, one is assigned to this.

[00:19:39] Speaker 04:
Where are you in column six?

[00:19:41] Speaker 02:
Column seven.

[00:19:42] Speaker 04:
Oh, column seven.

[00:19:43] Speaker 02:
Paragraph 26, column 7, starting at 8.

[00:19:50] Speaker 02:
Appendix 947.

[00:19:52] Speaker 02:
Starting at line 8 of column 7.

[00:20:01] Speaker 02:
And so if I read from there, quote, if the user does not have such a number, and that's referring to the user identification number, one is assigned at this stage,

[00:20:11] Speaker 02:
The account number is stored in the database 44 in association with the user's fingerprint image data.

[00:20:20] Speaker 02:
So here, it's clear that you cannot place the fingerprint information into Sue until you have the user identification number.

[00:20:29] Speaker 02:
This is required in the enrollment stage.

[00:20:31] Speaker 02:
In fact, at the top of paragraph 26, it states that during the enrollment procedure, it's required to have the user number that's at both

[00:20:40] Speaker 02:
Column 6, lines 51 through 55.

[00:20:44] Speaker 04:
Is it also required at the enrollment stage to have the fingerprint data?

[00:20:49] Speaker 02:
It's not required that you have the fingerprint data, only that you have the user information.

[00:20:53] Speaker 02:
Once you obtain the fingerprint data, then you know where to put the fingerprint data because you have the user information that is defined by paragraph 20, which states that the database is a table that associates each user number

[00:21:08] Speaker 02:
I'm reading from column four of appendix 945, starting at line 53.

[00:21:17] Speaker 02:
And it says, quote, the database is basically a table that associates each user number with a stored fingerprint image or with selected distinctive attributes or features of the user's fingerprint image, end quote.

[00:21:33] Speaker 02:
So again, Sue is making clear that unless you have that user identification that tracks to the database 44, you cannot put the fingerprint in.

[00:21:45] Speaker 02:
And that's why the board concluded.

[00:21:47] Speaker 04:
But it also seems like the enrollment procedure necessarily requires the fingerprint data as well before you can move forward.

[00:21:57] Speaker 04:
Line one of column seven the enrollment procedure requires that each user enroll by presenting a finger to the fingerprint sensor 16 well you in that way

[00:22:11] Speaker 04:
You need both pieces of data for the enrollment process, and then it then becomes very unclear why one piece of data is sort of like the master piece of data, and the other one follows along with whatever the master piece of data is doing.

[00:22:29] Speaker 02:
But as you described it, Judge Chen, that's exactly what we're looking at in the claim for the claim element of defining a location in memory to put the fingerprint data.

[00:22:39] Speaker 02:
And as you just described it now, that is exactly what Sue says.

[00:22:42] Speaker 02:
And that is exactly what the board found when they concluded that that element was satisfied.

[00:22:47] Speaker 02:
So I mean, you noted during my friend's argument, you said, well, are we talking about Sue or are we talking about Sue Prime?

[00:22:54] Speaker 02:
I mean, what we're talking about here is just Sue, not Sue Prime.

[00:22:57] Speaker 02:
What Mr. Lipoff was doing when he was explaining in his supplemental declaration about the ways that a database could be created, he was addressing questions or issues that have been raised by CPC.

[00:23:10] Speaker 03:
Why didn't you say it's silent, and it's how it is created?

[00:23:13] Speaker 03:
Why didn't he make your argument here?

[00:23:16] Speaker 03:
I'm sorry, Your Honor.

[00:23:17] Speaker 03:
Your expert says, although Sue is silent on how a new user record is created,

[00:23:22] Speaker 02:
But then he went on to explain that there were two different alternatives for creating those database records.

[00:23:28] Speaker 02:
But remember, we're not talking just about creating.

[00:23:31] Speaker 02:
We're talking about defining.

[00:23:32] Speaker 02:
So what had happened was in the original declaration, Mr. Lipov had explained how the Sioux reference saves

[00:23:41] Speaker 02:
using the user information, the fingerprint data, in the database.

[00:23:46] Speaker 02:
So that was the original declaration.

[00:23:47] Speaker 02:
Then there were issues, questions raised by CPC.

[00:23:50] Speaker 02:
And then in his supplemental declaration, one of the things they said is they said, well, we don't even know how these things are created.

[00:23:55] Speaker 02:
And he said, oh, well, one of ordinary school would know how to create these records.

[00:24:00] Speaker 02:
But that's not the issue.

[00:24:01] Speaker 02:
The issue is how you define where to place the information.

[00:24:04] Speaker 02:
So he was just explaining.

[00:24:06] Speaker 02:
And so the propped quotes that your honor noted

[00:24:09] Speaker 02:
which they did six times.

[00:24:10] Speaker 02:
I mean, the explanation for that by Mr. Lipov was further defined when he explained that there are two different alternatives.

[00:24:18] Speaker 03:
So in effect, you're saying that Lipov's testimony in the second declaration is irrelevant to Sue's coverage in any case.

[00:24:33] Speaker 02:
I wouldn't say it was irrelevant.

[00:24:34] Speaker 02:
It was explanatory of him addressing the issues that had been raised by the patent owner.

[00:24:39] Speaker 03:
That's what I'm saying.

[00:24:40] Speaker 03:
But what you're saying is that those issues raised by the patent owner weren't valid issues.

[00:24:45] Speaker 03:
They were not.

[00:24:45] Speaker 03:
That's correct.

[00:24:46] Speaker 03:
That's your argument.

[00:24:47] Speaker 04:
That is correct, Your Honor.

[00:24:48] Speaker 04:
The board somewhat relied on this passage in the second declaration by Mr. Lithop, right, and talked about the obvious solutions idea.

[00:24:57] Speaker 02:
And again, everywhere where you look, where the board was referring to those issues, they were addressing questions or issues that had been raised by the patent owner.

[00:25:07] Speaker 02:
So the primary finding by the board was, we find that there is a reference in sue that satisfies the defining limitation.

[00:25:16] Speaker 02:
That's what they found.

[00:25:17] Speaker 02:
And then when they went on to make all their explanatory comments, that's what you're seeing in the blue brief.

[00:25:23] Speaker 02:
So all of these arguments that my friend on the other side brought up, they're all arguments where the board had said something in response to what he had said or that the patent owner had said at the board.

[00:25:33] Speaker 02:
And that's why there's some dissimilarity between the primary argument, which is does Sue satisfy, and these side arguments that Your Honor should ask about.

[00:25:44] Speaker 04:
So then just one more time, how would you summarize the grounds for finding that Sue meets this limitation?

[00:25:52] Speaker 02:
In summary, Your Honor, the Sue, as the board found, describes both with respect to the defining limitation, where the fingerprint information is stored, and it's stored in a database 44, and that's paragraph 20 of Sue.

[00:26:09] Speaker 02:
Also, the board found how, and how

[00:26:12] Speaker 02:
the fingerprint information is stored is by using the user number, the user information that is obtained in Sue, which is tracked to a memory location, and then putting the fingerprint information there.

[00:26:26] Speaker 02:
That is how the board found both the where and the how the defining limitation was satisfied below, which we believe there's substantial evidence to support that.

[00:26:37] Speaker 02:
And in addition to the where and the how,

[00:26:39] Speaker 02:
The board also relied upon Mr. Liptoff, which gave further clarification of that.

[00:26:44] Speaker 02:
So all of that in combination, we believe, are all factual findings.

[00:26:49] Speaker 02:
And they're all considered under substantial evidence.

[00:26:51] Speaker 02:
And we believe that they do satisfy what a reasonable mind would accept as support for finding this limitation.

[00:26:58] Speaker 02:
Do you win without the expert?

[00:27:00] Speaker 02:
Oh, certainly.

[00:27:01] Speaker 02:
Yes, we do, Your Honor.

[00:27:02] Speaker 02:
Yes.

[00:27:04] Speaker 02:
I believe there's also one other issue that was raised during the questioning of my friend from the other side, and that was on the educational background of our expert.

[00:27:13] Speaker 02:
And just to put on the oral argument record, that's appendix 984 through 988.

[00:27:20] Speaker 02:
And in the reply brief, page 11, the other side says, quote, to the extent that he, talking about Mr. Lipov, may have been relying upon his own education or experience

[00:27:33] Speaker 02:
He offers no detail or even a summary of that education or experience," end quote.

[00:27:38] Speaker 02:
Well, in his declaration, his original declaration, which is at the appendix that I cited, he provides six pages of educational background and his historical knowledge and his background on the use of databases.

[00:27:51] Speaker 02:
And in fact, I was surprised to see this last night when I calculated it.

[00:27:55] Speaker 02:
He has 53 years of experience.

[00:27:58] Speaker 02:
So I think that our expert does qualify under the educational experience.

[00:28:02] Speaker 02:
With that, Your Honor, I think that I have covered all of the issues I wanted to cover.

[00:28:07] Speaker 02:
And unless you have any questions.

[00:28:09] Speaker 00:
Thank you.

[00:28:10] Speaker 02:
Thank you.

[00:28:23] Speaker 00:
We'll have two or three minutes for that.

[00:28:27] Speaker 01:
Good morning again, Your Honors.

[00:28:29] Speaker 01:
I'd like to just start with the discussion that was just had about ZOO and just make a couple of points.

[00:28:35] Speaker 01:
First, you heard the reference to paragraph 20 of ZOO.

[00:28:38] Speaker 01:
Paragraph 20 of ZOO is about verification.

[00:28:41] Speaker 01:
This is a process that takes place after enrollment.

[00:28:45] Speaker 01:
And certainly, by the time you're at the verification stage, there is some memory address correlation between the ID and the fingerprint data.

[00:28:56] Speaker 01:
But what's important, and I think you were alluding to this through your questions, Judge Chen, is that at the time of enrollment, as my friend just said, the only thing that ZOO requires is that there be both employee ID information and fingerprint data.

[00:29:12] Speaker 01:
You can't store them in association with each other if you don't have them both.

[00:29:17] Speaker 01:
But as your questions alluded, there is no disclosure in ZOO.

[00:29:22] Speaker 01:
that it is in fact the employee ID, i.e.

[00:29:26] Speaker 01:
the card information that itself establishes the specific memory address in Zoo's memory database where the user's fingerprint data will be stored.

[00:29:40] Speaker 04:
Is it possible that each set of data is somehow establishing where the other one gets stored and that they're being stored together?

[00:29:49] Speaker 04:
And so to store them in some

[00:29:53] Speaker 04:
together in a relational way, they're both sort of defining for each other the ultimate memory location?

[00:30:02] Speaker 01:
Of course, anything's possible, and there isn't enough information to necessarily know.

[00:30:07] Speaker 01:
I mean, the zoo only discloses so much, and it doesn't disclose that.

[00:30:10] Speaker 01:
It doesn't disclose how specifically the memory address for the fingerprint data is set or established.

[00:30:21] Speaker 01:
And that's the failure of Zoop.

[00:30:24] Speaker 01:
It just doesn't tell us that information.

[00:30:27] Speaker 01:
That's exactly what is disclosed and claimed in the 039 patent.

[00:30:32] Speaker 01:
If you look at figure four of the 039 patents, it couldn't be more graphically clear that the card information specifically establishes a particular address in the memory database.

[00:30:45] Speaker 01:
And that's necessary because I think in the prior case, there was a discussion about the fact that part of the point of the invention of the 039 patent is to be able to quickly go to just the one set of fingerprint data that you want to verify during a verification phase.

[00:31:01] Speaker 01:
I want to also come back to the point about Mr. Lipov's testimony and whether it was responding to something.

[00:31:15] Speaker 01:
I mean, that's how these proceedings go, right?

[00:31:18] Speaker 01:
You have opening arguments, responses.

[00:31:21] Speaker 01:
And I don't think there's any indication that something is less important or less material just because it shows up in a second declaration instead of a first declaration.

[00:31:31] Speaker 01:
What matters here, Your Honors, is that at appendix 3637, the board, in fact, relied on paragraphs 33 and 34 of Mr. Lipov's second declaration.

[00:31:42] Speaker 01:
They cited to it as support for its opinion here.

[00:31:45] Speaker 03:
And so if that testimony- But if that's responsive to your arguments, then it may not be core necessary to the decision.

[00:31:55] Speaker 03:
Isn't that correct?

[00:31:59] Speaker 01:
Again, I think the board did one of two things, and it's frankly a little confusing to me as to what it did.

[00:32:04] Speaker 01:
It either came to a conclusion that simply relationally associating the fingerprint and employee ID of Zoo satisfies the defining limitation.

[00:32:16] Speaker 01:
We've explained why we think that that is absolutely an incorrect conclusion.

[00:32:20] Speaker 01:
Or it found that there must be some

[00:32:24] Speaker 01:
information within the zoo employee ID number that therefore causes a tethering of the fingerprint to some memory address.

[00:32:33] Speaker 01:
But to get to that finding, Your Honor, they had to rely on Mr. Lipov's second declaration.

[00:32:40] Speaker 01:
So if that's the way they analyzed it, then it is core to their finding.

[00:32:44] Speaker 00:
Thank you.

[00:32:45] Speaker 00:
We thank both sides of the case.

[00:32:46] Speaker 01:
Thank you, Your Honor.