[00:00:00] Speaker 03:
Our second case this morning is number 23-21-77, Epic Games Inc.

[00:00:07] Speaker 03:
versus IngenioShare LLC.

[00:00:11] Speaker 03:
Okay, Ms.

[00:00:11] Speaker 03:
Chang.

[00:00:13] Speaker 00:
Good morning, Your Honors, May it peace the court.

[00:00:16] Speaker 00:
In construing network-based portal to be limited to the server side of the network, the board made two legal errors.

[00:00:24] Speaker 00:
The first being that it imposed a burden of proof and claim construction

[00:00:29] Speaker 00:
on Epic Games.

[00:00:31] Speaker 00:
It began, and we can see this from the final written decision at appendix 15 through 16, in the section discussing claim construction and the construction of network-based portal.

[00:00:41] Speaker 00:
The board said, our evaluation remains cognizant that Epic Games bears the burden of proof, and that this burden of proof never shifts

[00:00:54] Speaker 00:
to the patent owner.

[00:00:56] Speaker 00:
Now, admittedly, what they were discussing was the burden of proof with respect to proving unpatentability, which is true.

[00:01:02] Speaker 05:
So what's wrong with that?

[00:01:03] Speaker 00:
There's nothing wrong with that except for they took that burden of proof and imbued the entire claim construction analysis with that.

[00:01:10] Speaker 00:
And we can see that in the discussion of claim construction.

[00:01:15] Speaker 03:
OK, let's pass over that and get to the merits of the claim construction.

[00:01:19] Speaker 03:
I'm going to use a phrase.

[00:01:23] Speaker 03:
of claim functionality here to refer to the processing of the communications, which is the heart of the claims here.

[00:01:33] Speaker 03:
So why isn't it the case that under the Patentees Construction Network Portal, which is something that gives you access to the internet, that the claims encompass both a situation in which the portal performs the claim functionality

[00:01:53] Speaker 03:
and situations in which it doesn't, so that it doesn't really make any difference whether the phone is part of the portal, that the claims cover an embodiment, as you argue, in which the portal performs the functionality, and it also includes a situation in which the portal does not perform the functionality, but the functionality is performed by a phone.

[00:02:20] Speaker 03:
Why isn't that the way to look at this?

[00:02:23] Speaker 00:
Well, the way to look at it... No, no, no, no.

[00:02:26] Speaker 03:
Answer my question.

[00:02:28] Speaker 00:
If I understand your question correctly, are you assuming there is two different embodiments?

[00:02:34] Speaker 03:
There are two different embodiments.

[00:02:35] Speaker 03:
One in which the functionality is performed by the portal and one in which it's not and it's performed by the phone.

[00:02:43] Speaker 03:
And the patentee and the board said that the phone is not part of the portal.

[00:02:50] Speaker 03:
I'm saying accept that as being correct.

[00:02:53] Speaker 03:
Why is it not the case that the claims nonetheless cover both of those embodiments?

[00:03:01] Speaker 00:
There are claims, I think, the challenge claims and all the claims I think of the challenge patents have a network-based portal limitation.

[00:03:12] Speaker 03:
Okay, but you always need a network-based portal to get access to the internet.

[00:03:16] Speaker 03:
The question is whether that portal

[00:03:18] Speaker 03:
also includes additional functionality, the claim functionality, if I'm referring to it.

[00:03:23] Speaker 03:
So why is it not the case that a claim which, that these claims include both embodiments, but under a different view of the claim construction than you've presented?

[00:03:37] Speaker 00:
I think because there are two reasons.

[00:03:39] Speaker 00:
First, we have a situation where... You're arguing that it doesn't include both?

[00:03:45] Speaker 00:
I'm arguing that the claims require a network-based portal and that there's functionality performed via this network-based portal that can be performed by phone, not necessarily always.

[00:04:00] Speaker 03:
OK, but what I'm saying, why does your argument depend on whether the phone is part of the portal?

[00:04:09] Speaker 03:
It seems to me that the argument is the claim uses the term portal

[00:04:15] Speaker 03:
which could mean either of two things with respect to the embodiments.

[00:04:19] Speaker 03:
It could include a portal that performs the functionality, and it could include a portal that simply connects with the internet and doesn't perform the functionality.

[00:04:29] Speaker 00:
Our construction, the Epic Games is advancing.

[00:04:32] Speaker 00:
No, answer my question.

[00:04:33] Speaker 03:
Why don't the claims encompass that construction?

[00:04:40] Speaker 00:
I think it can, absolutely, yes.

[00:04:44] Speaker 00:
I think there are embodiments in which you can have a portal that is implemented as an engineer says, strictly on a server.

[00:04:56] Speaker 00:
I think there are also embodiments where there are a network-based portal that would encompass functionality both on a server and on a phone.

[00:05:05] Speaker 05:
You keep saying it would encompass functionality.

[00:05:07] Speaker 05:
I mean, the claims repeatedly say via a network-based portal or enabling via a network-based portal.

[00:05:14] Speaker 05:
Doesn't that suggest the client device is just requesting information from the portal, but it doesn't necessarily mean to me at least that the portal is on the client device?

[00:05:25] Speaker 00:
I don't think all claims, I think the claims at issue are broad enough that they don't have to be on the client device.

[00:05:31] Speaker 00:
I think we're proposing a construction in which it could be.

[00:05:35] Speaker 00:
that the specification and the intrinsic record describe the functionality of the portal.

[00:05:41] Speaker 00:
It doesn't exclude?

[00:05:43] Speaker 00:
Correct.

[00:05:44] Speaker 00:
It would not exclude embodiments in which a portal is implemented.

[00:05:49] Speaker 05:
But if the claim only talks about it being on the network portal, the portal being on the server, why

[00:06:00] Speaker 05:
it doesn't explicitly exclude that.

[00:06:02] Speaker 05:
So are you saying is this an inherency argument?

[00:06:05] Speaker 00:
So I don't believe that the claims do recite that the network-based portal is on the server.

[00:06:11] Speaker 00:
There are a set of claims that were not challenged in this IPR petitions that will then have a further limitation that the network-based portal that's being claimed and the claimed functionality has to be performed at a server.

[00:06:31] Speaker 00:
But the challenge claims at issues which also recite a network-based

[00:06:36] Speaker 00:
base portal does not have limitations of requiring a server.

[00:06:41] Speaker 05:
Because it doesn't have a negative one?

[00:06:43] Speaker 00:
It doesn't include an additional language.

[00:06:45] Speaker 05:
We've got to do the best we can reading the spec and reading the claims.

[00:06:48] Speaker 05:
Absolutely.

[00:06:50] Speaker 05:
The patent distinguishes, seems to me, to distinguish a network-based portal from a client device as being two different things.

[00:06:57] Speaker 05:
And doesn't that suggest

[00:06:59] Speaker 05:
that the portal can't be on the client device?

[00:07:01] Speaker 00:
I think the specification, if taken as a whole, when it discusses, it discusses a complete... Let's maybe just start with one point.

[00:07:12] Speaker 05:
Do the patents distinguish between a network-based portal and a client device as being two different things?

[00:07:19] Speaker 00:
I do not believe so.

[00:07:20] Speaker 00:
I think when you read the specification and look at the claims,

[00:07:23] Speaker 00:
and look at the figures and the intrinsic record as a whole.

[00:07:27] Speaker 00:
They talk about a client device as something that works within the system, but can also access it.

[00:07:34] Speaker 02:
You're disagreeing with the board decision.

[00:07:36] Speaker 00:
I am disagreeing with the board decision.

[00:07:38] Speaker 02:
I'm a little confused.

[00:07:39] Speaker 02:
I thought the argument below was whether the portal was on the server side or on the phone, one or the other.

[00:07:47] Speaker 02:
Judge Dyke is raising the question whether it can be on both.

[00:07:50] Speaker 02:
You resisted that for a while, and then you said, OK, fine.

[00:07:54] Speaker 02:
Now, I'm confused about what we're reviewing.

[00:07:58] Speaker 02:
That's my mistake.

[00:07:59] Speaker 02:
I didn't see your argument in your brief here that it could be both.

[00:08:05] Speaker 00:
Doctor, I apologize.

[00:08:07] Speaker 02:
Well, you don't need to apologize.

[00:08:09] Speaker 02:
But as you heard from the previous argument, you were here.

[00:08:14] Speaker 02:
We're trying to review what's presented to us.

[00:08:16] Speaker 02:
Absolutely.

[00:08:17] Speaker 02:
And this is very complicated stuff, right?

[00:08:20] Speaker 00:
To be clear, in our briefing, what we say is that the network-based portal construction is broad enough to encompass operations on a client device.

[00:08:33] Speaker 03:
Not that the client device is connecting to the internet.

[00:08:36] Speaker 03:
but that the portal can include the client device.

[00:08:40] Speaker 00:
Correct.

[00:08:41] Speaker 00:
Correct, Your Honor.

[00:08:42] Speaker 00:
So if we take a step back, what's being described in the specification and the teachings in the specification is a system in which you will have multiple client devices and multiple ways of

[00:08:55] Speaker 00:
receiving and communications either email or phone calls and so forth.

[00:09:01] Speaker 00:
And you're going to have something that overlays on top of that this communication management system in which now I can be the intermediary

[00:09:09] Speaker 00:
to decide how to distribute certain messages.

[00:09:14] Speaker 00:
And you can imagine the way you have to do that is you have to have some connection to the internet in which there would be some sort of independent system that would be able to manage.

[00:09:26] Speaker 03:
A portal has to connect to the internet.

[00:09:29] Speaker 03:
But you're not saying that a phone performs that aspect of a portal.

[00:09:36] Speaker 03:
You're simply saying that a portal

[00:09:38] Speaker 03:
includes a phone which performs the function.

[00:09:40] Speaker 00:
It can include, yes.

[00:09:41] Speaker 00:
So if we take for example a web server

[00:09:45] Speaker 00:
example of this communication management system.

[00:09:49] Speaker 00:
You can have functionality of the portal operating on the server, but there will also be user interfaces to the web system that is resident on the phone, which is a user's portal into the communication system.

[00:10:06] Speaker 05:
You can say it's a user's portal, but the

[00:10:09] Speaker 05:
the claim term we're talking about is a network-based portal, as described repeatedly in the specification and in the claims.

[00:10:19] Speaker 05:
The phone is accessing the portal, but the server is on the portal, right?

[00:10:27] Speaker 00:
But there can be operations and implementations running on the phone that the phone accesses to.

[00:10:34] Speaker 05:
Did you have an expert witness that described that?

[00:10:37] Speaker 00:
There was no expert testimony at the board.

[00:10:41] Speaker 05:
So no one explained to the board that that's possible even though it's not called out?

[00:10:46] Speaker 00:
Yes, except for I think we can look at the specification as a whole.

[00:10:51] Speaker 00:
which tells us things like the portal provides a number of intelligent communication modes as shown in Figure 1.

[00:10:58] Speaker 00:
And then it teaches us that the intelligent communication modes shown in Figure 1 can be on the phone.

[00:11:04] Speaker 03:
Your argument is that in the specification, it shows two embodiments, one in which the functionality is in the portal that connects to the internet.

[00:11:14] Speaker 03:
And the other one in which the claim functionality is in a phone, which you say can also be part of the portal.

[00:11:20] Speaker 03:
Fair?

[00:11:21] Speaker 05:
Fair.

[00:11:22] Speaker 05:
You want to show us your best site and the specification for that?

[00:11:26] Speaker 00:
Absolutely.

[00:11:26] Speaker 00:
So at appendix 270, this is the 810 patent, at column 560 through 61.

[00:11:37] Speaker 00:
is the disclosure says, a portal provides a number of intelligent communication modes for the users to select, as shown in Figure 1.

[00:11:46] Speaker 00:
And then it goes on at Column 7, 41 to 43.

[00:11:49] Speaker 00:
That's Appendix 271.

[00:11:51] Speaker 03:
It's really Column 6, isn't it, at Line 38.

[00:11:55] Speaker 03:
In establishing contact, the portal can't access the database.

[00:12:02] Speaker 03:
And it says in another embodiment, the database is on a file.

[00:12:05] Speaker 00:
Yes, but it also says at column seven.

[00:12:09] Speaker 05:
Can I ask you just about that?

[00:12:11] Speaker 05:
That just is talking about the access to it.

[00:12:14] Speaker 05:
It doesn't go to where it is.

[00:12:16] Speaker 00:
Right, so if we look at... Is that correct?

[00:12:19] Speaker 05:
So that doesn't give you what you need?

[00:12:21] Speaker 00:
Yeah, so that was the one at column six is the description of a database.

[00:12:27] Speaker 00:
But I'm talking about more broadly when it describes at column five, line 60 to 61, and column seven, line 41 to 43, it actually talks about the portal can be used to control the selection and setting of different intelligent communication modes.

[00:12:47] Speaker 00:
And then it says at column seven, lines 14 through 15, that the intelligent communication modes for the users to let are on the phone.

[00:13:03] Speaker 00:
And it says the communication mode changes can be performed at an electronic device.

[00:13:08] Speaker 00:
So what it tells you, the portal allows you to control and make those selections.

[00:13:11] Speaker 00:
tells you the phone can be that portal.

[00:13:14] Speaker 03:
But we didn't really dispute that.

[00:13:15] Speaker 03:
They recognized, did they not, that there was a second embodiment in which the functionality is performed on the phone.

[00:13:23] Speaker 03:
But they say that's irrelevant because that's downstream from the portal.

[00:13:30] Speaker 00:
Well, they don't accept that the second embodiment where methods are performed on the phone is a network-based portal.

[00:13:41] Speaker 00:
So they accept that they're different embodiments.

[00:13:44] Speaker 00:
But one, they say, is not a network-based portal.

[00:13:46] Speaker 00:
And one is the network-based portal.

[00:13:50] Speaker 00:
Our position is they are different.

[00:13:52] Speaker 03:
What they're saying is that one of those embodiments is not in the claim.

[00:13:55] Speaker 00:
It is not claimed, yes.

[00:13:57] Speaker 00:
And our position is it is claimed.

[00:13:59] Speaker 00:
It is an implementation of a network-based portal where you can have functionality performed on the client side as well as on the server side.

[00:14:11] Speaker 05:
You didn't have, I mean typically in these cases one would bring in an expert because all of this stuff is quite technical and there are competing and confusing sections of the specification.

[00:14:21] Speaker 05:
But you didn't give the board any of that.

[00:14:23] Speaker 00:
Well, I don't think there was any misunderstanding at the point when they were discussing as to what was the functionality of the network-based portal.

[00:14:37] Speaker 00:
I think the one area that there was some dispute is the embodiments in Figures 7 through 11 as to whether I think the only thing they had was their experts saying that stuff is about what's

[00:14:51] Speaker 00:
happens downstream.

[00:14:52] Speaker 00:
But there was no further elucidation by their expert either, which that would- But that was unrebutted.

[00:14:58] Speaker 00:
Well, it was conclusory, Your Honor.

[00:15:00] Speaker 05:
It was a statement without- It may be conclusory, but was it unrebutted or was it not?

[00:15:06] Speaker 00:
It was rebutted in the sense that in the reply brief at the petition,

[00:15:13] Speaker 00:
The reply to the patent owner's response, we did respond to that by describing and discussing the intrinsic evidence.

[00:15:23] Speaker 00:
And so there was evidence rebutting that with respect to the intrinsic record.

[00:15:28] Speaker 00:
And that's what we've discussed also in our briefing.

[00:15:32] Speaker 00:
with respect to the embodiments in 7-Eleven, where their expert claimed that this was downstream and not what was claimed in the claims.

[00:15:44] Speaker 00:
But there are limitations about enabling the receipt of messages with respect to Figure 7 that is being performed on the phone.

[00:15:54] Speaker 00:
And there is limitations with respect to converting

[00:15:59] Speaker 00:
the messages to a text message into voice that is also performed by a phone that is claimed by the network-based portal in the claimed limitations.

[00:16:10] Speaker 00:
So in that regard, taken in combination with the fact that there is no figures in the patent at all regarding server-side, showing a server-side of the thing, if we're talking about a network-based portal, that's not depicted anywhere.

[00:16:26] Speaker 00:
It's very hard to limit that limit.

[00:16:28] Speaker 00:
an aspect of the invention to a server side when it's not depicted at all in any of the patent figures.

[00:16:35] Speaker 03:
Okay, I think we're out of time.

[00:16:36] Speaker 03:
Thank you, Mr. Risley.

[00:16:44] Speaker 04:
May I please record Steve Risley for the FLE GeoShare?

[00:16:49] Speaker 03:
So you agree that the specification shows two embodiments, one in which the claim functionality

[00:16:59] Speaker 03:
is performed on the server side portal and one in which it's not, right?

[00:17:05] Speaker 04:
I don't think I do, Your Honor, to the extent I understand your question.

[00:17:08] Speaker 04:
The network-based portal, if you're referring to that as an embodiment, then everything has to go through the portal, which is on the server side.

[00:17:16] Speaker 03:
No, no, no.

[00:17:16] Speaker 03:
Everything has to go through the portal.

[00:17:18] Speaker 03:
I mean, that's how you connect to the internet.

[00:17:19] Speaker 03:
I understand that.

[00:17:21] Speaker 03:
But the claim functionality is something different from that.

[00:17:25] Speaker 03:
And it's the processing of the communication.

[00:17:28] Speaker 03:
But my question is, I thought it was common ground that there are two embodiments in the specification, one in which that functionality is performed by what you characterize as the portal, and one in which the portal may connect to the internet, but it doesn't perform that functionality.

[00:17:48] Speaker 03:
The functionality is performed on the phone.

[00:17:50] Speaker 03:
Is that a correct statement?

[00:17:52] Speaker 04:
I don't think so, Your Honor, and I don't think that there's any evidence in the record that supports that, I think.

[00:17:58] Speaker 03:
Well, it's the specification.

[00:18:00] Speaker 04:
I understand that, Your Honor, but as you mentioned, it's technical.

[00:18:03] Speaker 03:
So what about the figures?

[00:18:05] Speaker 03:
Figures 7 to 11.

[00:18:06] Speaker 03:
Don't they show that that functionality is being performed on the phone?

[00:18:10] Speaker 04:
Post-managing and controlling the communication, yes, Your Honor.

[00:18:14] Speaker 04:
So maybe I misunderstood your question.

[00:18:17] Speaker 03:
The claims here describe a certain functionality which I call the claim functionality.

[00:18:24] Speaker 03:
My question is there are some embodiments in which that claim functionality is performed by the portal and some in which it is not performed by the portal but is instead performed by a phone, right?

[00:18:36] Speaker 04:
I think all the claims that were at issue in front of the board, Your Honor, involve the network portal.

[00:18:42] Speaker 03:
No, I understand.

[00:18:43] Speaker 03:
That's not my question.

[00:18:44] Speaker 03:
I asked about the specification describing two embodiments.

[00:18:49] Speaker 03:
Is that not correct?

[00:18:50] Speaker 04:
There are embodiments in the specification that talk about what could happen to a communication once it's actually received at a client device.

[00:18:59] Speaker 03:
OK.

[00:19:00] Speaker 03:
So in your theory, which was adopted by the board,

[00:19:04] Speaker 03:
is that that one embodiment is not covered by these claims, right?

[00:19:09] Speaker 04:
Yes, Your Honor.

[00:19:09] Speaker 04:
To the extent, if you're referring to Figures 7 through 11, it's our position and the board's position that Figures 7 through 11 are not covered per se by the network-based portal.

[00:19:21] Speaker 03:
So that seems to me, first of all, questionable that the claims don't cover one of the preferred embodiments.

[00:19:30] Speaker 03:
But why isn't it the case that portal can mean

[00:19:34] Speaker 03:
something that does no more than connect to the Internet, but it also can include a situation in which the portal performs the claim functionality, right?

[00:19:46] Speaker 04:
When you say claim functionality, Your Honor, that's why I'm having a hard time answering your question.

[00:19:51] Speaker 03:
It's the functionality shown by figures 7 to 11.

[00:19:56] Speaker 04:
Because it's downstream, I believe was the word that was used.

[00:19:58] Speaker 04:
It's after the communications.

[00:19:59] Speaker 03:
In one embodiment, it's downstream, but in another embodiment, it's on the portal itself, right?

[00:20:04] Speaker 03:
According to you.

[00:20:07] Speaker 03:
If I may, I know we... Wait, wait.

[00:20:11] Speaker 03:
Answer my question.

[00:20:13] Speaker 04:
The portal is managing the communications on the server side of the network.

[00:20:17] Speaker 03:
Sometimes it's performing the functionality that's shown in 7-11, and sometimes it's not, right?

[00:20:26] Speaker 04:
The portal is not performing any of the functionality that's shown in Figures 7-11, Your Honor.

[00:20:32] Speaker 02:
Ever?

[00:20:33] Speaker 04:
It's after the communication has taken place.

[00:20:36] Speaker 04:
After it's already gone through the portal, if you will, across the internet to a client device.

[00:20:41] Speaker 04:
That's what Figures 7 through 11 are talking about.

[00:20:44] Speaker 01:
But I don't understand.

[00:20:45] Speaker 02:
Doesn't that come down to the question of whether or not Figures 7 through 11 is or is not a claimed audience?

[00:20:55] Speaker 02:
Yes, Your Honor, and the claims are issued.

[00:20:57] Speaker 02:
I understand that discussions going on between you and the presiding judge is that question.

[00:21:01] Speaker 02:
That's the question.

[00:21:02] Speaker 02:
Because if it's a claimed embodiment, then the notion, if the claim supports the embodiment, your argument is that 7 to 11 is an unclaimed embodiment.

[00:21:15] Speaker 04:
For the claims that are at issue, yes, Your Honor, that's correct.

[00:21:17] Speaker 04:
And that's the only evidence of record.

[00:21:18] Speaker 02:
That was a finding by the board, I believe.

[00:21:21] Speaker 02:
Yes, Your Honor, based on expert testimony.

[00:21:23] Speaker 02:
The board heard the argument, if I'm not mistaken.

[00:21:26] Speaker 02:
The board entertained the argument that the question about whether 7 to 11 shows an embodiment were the functionalities performed on the phone.

[00:21:36] Speaker 04:
Exactly.

[00:21:36] Speaker 02:
Without regard to the portal.

[00:21:39] Speaker 04:
Correct.

[00:21:39] Speaker 04:
The board's sua sponte in its decision raised that issue.

[00:21:43] Speaker 02:
Excuse me?

[00:21:44] Speaker 04:
The board, on its own, Epic didn't raise that argument about figure 7 through 11.

[00:21:48] Speaker 02:
They didn't say they were raising a sua sponte.

[00:21:51] Speaker 02:
But it was there, and it was adjudicated.

[00:21:53] Speaker 04:
Correct.

[00:21:54] Speaker 04:
And it's based on substantial evidence, as Judge Proves.

[00:21:57] Speaker 02:
Well, just to make the argument a little crisper for me, for somebody who may not understand as much of this stuff as the rest of you, but if the residing judge is correct that 7 to 11 is a claimed embodiment showing that all the functionality is performed on the phone without regard to the server, without regard to the editor, if you will, then you would agree that the claim covers both, right?

[00:22:24] Speaker 04:
No, you're not.

[00:22:26] Speaker 04:
You have to have the network-based portal.

[00:22:28] Speaker 04:
You have to have the communication going through the portal, which is on the server side of the network.

[00:22:34] Speaker 04:
And figures 7 through 11 are all talking about after that communication has gone through the portal to a device.

[00:22:39] Speaker 03:
OK, but you always need some portal that connects to the internet.

[00:22:44] Speaker 03:
Every device that's going to connect to the internet has to have a connection to the internet, right?

[00:22:51] Speaker 04:
I suppose so, yes, your honor.

[00:22:53] Speaker 02:
Why do you need a connection to the internet to make a telephone call?

[00:22:57] Speaker 04:
That's the duty of the invention, your honor.

[00:22:58] Speaker 02:
One key aspect that is... Well, that's what I wanted to ask is just for purposes of educating us, how does the thing work?

[00:23:06] Speaker 02:
I mean, somebody calls their doctor on the telephone, and the call goes to the portal, according to the client, correct?

[00:23:15] Speaker 02:
It says, goes to the portal.

[00:23:17] Speaker 04:
Correct, but it's a way to manage communication.

[00:23:19] Speaker 02:
So the call doesn't go to the telephone?

[00:23:22] Speaker 04:
Correct.

[00:23:23] Speaker 04:
It goes through the portal.

[00:23:24] Speaker 02:
And what is it?

[00:23:25] Speaker 04:
I'm sorry, I don't want to interrupt.

[00:23:26] Speaker 02:
The portal's on the internet?

[00:23:29] Speaker 04:
Yes, sir.

[00:23:30] Speaker 02:
When I dial the telephone number of my doctor, expecting the doctor to pick up, when the doctor finally picks up and tells me a bunch of information that's been baked in, and those are the functionalities, right?

[00:23:43] Speaker 02:
Where does all that happen?

[00:23:45] Speaker 04:
So in the example of what I understand, if I wanted to call a doctor, the communication goes through the portal, from the phone to the portal.

[00:23:55] Speaker 02:
Where is the portal?

[00:23:56] Speaker 04:
The portal is a web server.

[00:24:00] Speaker 04:
On a server side, like a web server or something like that.

[00:24:04] Speaker 02:
Who owns that?

[00:24:06] Speaker 04:
In the case of this court or the Patent Office or the doctor, theoretically that website would be owned by the company whose website it is.

[00:24:15] Speaker 04:
Right?

[00:24:17] Speaker 04:
But after that call goes through there, part of the- It could be the doctor's website.

[00:24:21] Speaker 04:
I believe so.

[00:24:22] Speaker 04:
In this example, yes, Your Honor.

[00:24:25] Speaker 04:
But the doctor might be in surgery or something, right?

[00:24:27] Speaker 04:
And so that's where the invention kicks in on the intelligent communication mode.

[00:24:31] Speaker 02:
How does the telephone company know to direct a call to the website instead of directing it simply like if it was a hardwired call right directly to the doctor's office?

[00:24:39] Speaker 04:
That's in the software.

[00:24:41] Speaker 04:
And part of the issue with the tension I'm having with the doctor example

[00:24:46] Speaker 04:
A key aspect of the invention is to remain anonymous.

[00:24:49] Speaker 04:
And I'm not sure that with a doctor and a patient, you want to be anonymous.

[00:24:52] Speaker 02:
Well, it covers both.

[00:24:55] Speaker 02:
The doctor's analysis is easy for me to understand what it is, because it says, for example, the doctor, because he sees your telephone number or my telephone number, he knows it's clever.

[00:25:04] Speaker 02:
So maybe the doctor already knows a lot about what the quick call may be about.

[00:25:09] Speaker 02:
And if you want to renew your prescription, the doctor knows exactly what it is without asking.

[00:25:13] Speaker 02:
That's all can be baked in, correct?

[00:25:15] Speaker 04:
I think that's part of the access priority and the mode of communication that might... The functionality.

[00:25:21] Speaker 04:
Right.

[00:25:22] Speaker 04:
If you're trying to go by email, it might just block an email.

[00:25:24] Speaker 04:
If you're trying to go by phone, it might go straight to voicemail, something like that.

[00:25:29] Speaker 04:
But we think, Your Honor, that this case is about substantial evidence and waiver.

[00:25:34] Speaker 04:
None of these arguments were presented below.

[00:25:36] Speaker 05:
They never presented... The problem for you there is substantial evidence based on the intrinsic record, I think, is what you need.

[00:25:45] Speaker 05:
And the board, one, had some language that was at least arguably confusing about whose burden it was or how heavy a burden they were placing.

[00:25:55] Speaker 05:
I mean, the language your friend cited was under the heading claim construction.

[00:25:59] Speaker 05:
Why are we talking about the patent owner having no burden, the petitioner having the only burden when it comes to claim construction?

[00:26:06] Speaker 05:
And then they relied extensively on, they start with dictionary definitions, right?

[00:26:11] Speaker 05:
And our case law doesn't really embrace a lot of that as being the first.

[00:26:19] Speaker 05:
And so you've got a lot of people, if you say, I agree with the board, they finally get to the substantial evidence to support their conclusions based on the specification and the intrinsic evidence, right?

[00:26:33] Speaker 05:
You think that's enough to stand, or we have to remand it to the board and say, look, you looked at all this other stuff

[00:26:41] Speaker 05:
that we don't see intelligently informs the decision.

[00:26:46] Speaker 05:
But just stick to that, or are we free to affirm just on that basis?

[00:26:50] Speaker 04:
Your Honor, I think you can affirm based on the substantial evidence and respectfully

[00:26:55] Speaker 03:
Substantial evidence?

[00:26:57] Speaker 03:
That doesn't come into play on the claim construction.

[00:27:00] Speaker 03:
Look, the dictionary definitions you offered with respect to portal seem to me to be correct in the sense that a portal, among other things, connects to the internet.

[00:27:13] Speaker 03:
But that doesn't tell us whether a portal can have other functions, too, such as including the phone and the functionality that comes from the phone in Figures 7 to 11.

[00:27:26] Speaker 03:
There's a claim construction issue here.

[00:27:29] Speaker 03:
It's clear, I think, from what you've said today and from what the board said, that there are two embodiments in the specification, and that your whole argument involves excluding one of the two preferred embodiments.

[00:27:42] Speaker 03:
That's shown in Figures 7 to 11.

[00:27:44] Speaker 03:
And I don't think the fact that the portal connects to the internet means that it can't do other things as well.

[00:27:52] Speaker 04:
That's right, Your Honor.

[00:27:54] Speaker 04:
The portal is honest.

[00:27:55] Speaker 04:
The issue that was argued below, and I think that was in brief, is can it be on the server side or the client side, or I guess both.

[00:28:04] Speaker 04:
And we believe the board and IngenioShare and the specification and intrinsic record shows that it is on the server side only.

[00:28:13] Speaker 03:
The specification doesn't show it on the server side only.

[00:28:17] Speaker 03:
It shows it on the 7 to 11 on the phone.

[00:28:22] Speaker 04:
I don't think that's what the evidence shows, Your Honor.

[00:28:24] Speaker 04:
It's a portal.

[00:28:25] Speaker 03:
I thought you just admitted it earlier that there were two embodiments.

[00:28:29] Speaker 03:
And one is 7 to 11 is shown as being on the phone.

[00:28:33] Speaker 04:
7 through 11, Your Honor, is after the interaction.

[00:28:39] Speaker 03:
It's still on the phone, right?

[00:28:41] Speaker 04:
The portal is not.

[00:28:42] Speaker 03:
7 to 11 is the claimed functionality.

[00:28:46] Speaker 03:
Your Honor, the portal is not.

[00:28:48] Speaker 03:
Is 7 to 11 the claimed functionality?

[00:28:50] Speaker 04:
No.

[00:28:51] Speaker 03:
No?

[00:28:52] Speaker 04:
No.

[00:28:54] Speaker 04:
What is it?

[00:28:55] Speaker 04:
The claim functionality is a communication going through a network-based... 7-11 is not claimed?

[00:29:05] Speaker 04:
And the claims that were at issue and that were brief and that we submitted evidence, which they submitted no evidence on, that's talking about... You don't need evidence if it's intrinsic.

[00:29:18] Speaker 04:
Your Honor, I think you do.

[00:29:20] Speaker 04:
It's not what you and I frankly think it means.

[00:29:23] Speaker 04:
It's what a person of ordinary skill in the art thinks it means.

[00:29:26] Speaker 05:
So did you have an expert going through 7-11 and saying why that is not included?

[00:29:31] Speaker 04:
Yes, of course, Your Honor.

[00:29:32] Speaker 04:
That's all on the record.

[00:29:33] Speaker 05:
Your friend says that was conclusory.

[00:29:36] Speaker 04:
It's not conclusory.

[00:29:37] Speaker 04:
They deposed our expert for two plus days with five people at the deposition.

[00:29:41] Speaker 03:
Where's your best quote from your expert about 7-11 not being included at the point?

[00:29:49] Speaker 04:
He defined on appendix page 7195 in paragraph 64 of his declaration

[00:30:20] Speaker 04:
Yes, and if I may, I don't know that from our perspective, he didn't start with dictionary definitions.

[00:30:32] Speaker 04:
This is his testimony based on the specification and we don't think the board started with that either.

[00:30:36] Speaker 04:
The board started with the institution decision in which we filed a preliminary response.

[00:30:43] Speaker 03:
Where does he say that the functionality shown in 7-11 is not

[00:30:50] Speaker 04:
This is the part that says that figures 7 through 11, Your Honor, specifically to your question, would be 7,200.

[00:31:08] Speaker 04:
Sorry for that.

[00:31:10] Speaker 04:
I went to the wrong.

[00:31:11] Speaker 04:
This is the heading number 7.

[00:31:13] Speaker 04:
7,200?

[00:31:14] Speaker 04:
Yes, sir.

[00:31:15] Speaker 05:
We don't have 7,200.

[00:31:17] Speaker 05:
I don't have it.

[00:31:17] Speaker 04:
No, we don't have that.

[00:31:22] Speaker 05:
My appendix goes from 7,196 to 7,239.

[00:31:25] Speaker 05:
I'm happy to hand this to you.

[00:31:29] Speaker 04:
What is it?

[00:31:30] Speaker 04:
This is Dr. Ruthless's declaration, who's a distinguished professor at North Carolina State University.

[00:31:37] Speaker 03:
Why didn't you include it in the appendix?

[00:31:39] Speaker 04:
It's in the appendix of my copy, Your Honors.

[00:31:42] Speaker 03:
Not in ours.

[00:31:45] Speaker 04:
This this actually is the heading on this is exactly what you've been asking about that known as construction does not number at the bottom I'm sorry sir joint appendix number at the bottom eight appendix 70 zero seven two zero zero We have the first we have page 26 and 27 of his thing and then that's all we have Yeah, I see the amount of time, but I'm happy to

[00:32:12] Speaker 04:
This goes through in detail, three or four pages.

[00:32:15] Speaker 04:
Why?

[00:32:17] Speaker 03:
What's your best quote?

[00:32:20] Speaker 04:
From Dr. Rouskis?

[00:32:21] Speaker 03:
Yes.

[00:32:25] Speaker 04:
Essentially what I've been saying, that he refers to the fact.

[00:32:28] Speaker 04:
Give me the quote.

[00:32:33] Speaker 04:
Well.

[00:32:41] Speaker 04:
The best quote I'd say, Your Honor, would be in paragraph 77 of his declaration, which starts on Appendix 7201 and continues to the next page and says, Claim seven concerns, managing the figure seven as well, communications with plurality of users using at least a network-based portal,

[00:33:03] Speaker 04:
and enabling the network-based portal to be received by the second user.

[00:33:08] Speaker 03:
It doesn't say that 711 is not included in the claims.

[00:33:13] Speaker 04:
Whereas the embodiments of Figures 7 through 11 are methods performed by the second user's device and then italicized upon receiving a message.

[00:33:23] Speaker 04:
And these citations then are to Figures 7 through 11.

[00:33:28] Speaker 04:
That's the only evidence of record in terms of what?

[00:33:31] Speaker 03:
I don't see that he says that 7-11 is not included in the clinics.

[00:33:36] Speaker 03:
And it's not.

[00:33:37] Speaker 03:
It's a question of intrinsic evidence anyway.

[00:33:41] Speaker 04:
Your Honor, even if they're included in the claims, it has to have a network-based portal and a communication going through that first.

[00:33:48] Speaker 04:
Even if there are dependent claims that talk about what happens once the message is received on a user's device, that's what this is talking about.

[00:33:55] Speaker 03:
I think you're right that a portal has to connect to the Internet, but it can have other functionality in addition, and that's the issue we're concerned about.

[00:34:04] Speaker 03:
The fact that you use a portal to connect to the Internet doesn't exclude

[00:34:08] Speaker 03:
the idea that under this specification, it includes other things.

[00:34:14] Speaker 02:
Does the phone connect to the internet upon receiving the message?

[00:34:22] Speaker 04:
I would say that the other way, Your Honor.

[00:34:24] Speaker 02:
I'm just asking.

[00:34:25] Speaker 02:
I'm trying to understand this electronically.

[00:34:27] Speaker 02:
The phone receives a message.

[00:34:30] Speaker 04:
The message would go through the internet, through the network-based portal, and then come back around to the device, such as the phone.

[00:34:41] Speaker 02:
So the phone is connected to the internet.

[00:34:46] Speaker 04:
Yes, in this example, yes.

[00:34:50] Speaker 04:
But it's downstream of managing the communication, which is what the patents are talking about.

[00:34:54] Speaker 04:
There are dependent claims on what the phone can do with the message after it's been received.

[00:35:00] Speaker 04:
That's the whole point.

[00:35:01] Speaker 03:
It's after the message... Your basic problem...

[00:35:04] Speaker 03:
is that the functionality shown in 7 to 11 is an embodiment that normally we would construe the claims to include.

[00:35:13] Speaker 03:
And you're construing the claims to exclude it.

[00:35:16] Speaker 03:
And so is the board.

[00:35:20] Speaker 04:
I don't think it is construing it necessarily to exclude it.

[00:35:24] Speaker 04:
It's conceivable that, as I just mentioned, after the communication of the message goes through the network-based portal... Well, if it includes it, if the claims include it, then why isn't the petitioner correct?

[00:35:38] Speaker 04:
Because we're talking about the definition of network-based portal.

[00:35:41] Speaker 04:
Whether it's covered or not, I don't know is the issue.

[00:35:44] Speaker 02:
You're saying that this is not a claimant embodiment because this is a functionality that's being performed after receiving the message.

[00:35:52] Speaker 04:
Yes, Your Honor.

[00:35:52] Speaker 02:
Why does that matter?

[00:35:54] Speaker 02:
What does it mean to say after receiving the message?

[00:35:57] Speaker 02:
What was the message?

[00:35:59] Speaker 04:
The message could have been an email.

[00:36:01] Speaker 04:
It could have been a text.

[00:36:02] Speaker 02:
It could have been a phone call.

[00:36:04] Speaker 02:
The message is the call or just a phone call?

[00:36:06] Speaker 04:
Yes, Your Honor.

[00:36:07] Speaker 04:
It could be a call.

[00:36:11] Speaker 02:
And so after receiving the message, the phone does all the functionality.

[00:36:18] Speaker 04:
The phone would act like a normal phone, right?

[00:36:20] Speaker 04:
You could say, oh, it's... No, no, no.

[00:36:22] Speaker 02:
But the phone doesn't connect to the internet.

[00:36:27] Speaker 04:
The phone is going to be connected to the internet in some form.

[00:36:30] Speaker 03:
Because the portal's going to call the phone.

[00:36:32] Speaker 03:
Through the portal, right?

[00:36:35] Speaker 04:
The portal will call the phone, yes, Your Honor.

[00:36:39] Speaker 04:
But I feel like we're mixing... So is the portal in the phone?

[00:36:42] Speaker 02:
How does it electronically work?

[00:36:45] Speaker 04:
The portal is not in the phone, and I think that's a key part of what we... How do we know that?

[00:36:49] Speaker 04:
Because the specification makes it very clear.

[00:36:51] Speaker 04:
That comes back to the definition of portal.

[00:36:53] Speaker 04:
A portal is, by definition, server-side.

[00:36:57] Speaker 04:
And by definition, a client device is client-side.

[00:37:00] Speaker 03:
No, I think what the definition says that a portal is what connects to the Internet.

[00:37:04] Speaker 03:
And I think you're probably right about that.

[00:37:07] Speaker 03:
But that doesn't mean that the portal can include other functionality.

[00:37:11] Speaker 03:
In fact, you argue that it does.

[00:37:13] Speaker 03:
And it can include other functionality, which is performed not by the portal, but by the phone.

[00:37:21] Speaker 03:
Because there are two embodiments in here.

[00:37:22] Speaker 04:
Your Honor, I don't believe that it covers the definition of a network-based portal does not include functionality of the phone.

[00:37:32] Speaker 04:
And the patent clearly talks about it.

[00:37:34] Speaker 03:
But your whole argument is that the portal is performing the functionality that's claimed.

[00:37:43] Speaker 04:
Yes, it claimed one.

[00:37:47] Speaker 03:
All right.

[00:37:47] Speaker 03:
I think we're out of time.

[00:37:51] Speaker 03:
Ms.

[00:37:51] Speaker 03:
Tang?

[00:37:57] Speaker 00:
Just briefly, I wanted to provide the court with some

[00:38:00] Speaker 00:
teachings from the specification about the functionality of the portal that goes beyond just being a server and connecting to the internet.

[00:38:10] Speaker 00:
At Appendix 269, that's the 810 PatNet column 4, 25 through 27.

[00:38:17] Speaker 00:
It says based on the portal, the user can securely determine who can reach them.

[00:38:24] Speaker 00:
This can be done as a status indicator.

[00:38:26] Speaker 00:
And at column 4, line 63 through 64, it says the portal can also dynamically change the access priorities of a caller.

[00:38:36] Speaker 00:
And then at column 7, 16 through 22, it says these portal functionalities can be performed by phone.

[00:38:45] Speaker 00:
Explicitly, it says a user can define the statuses, set up access priority database, such as the one shown in figure 5,

[00:38:54] Speaker 00:
and categorize the number of the user's contacts and corresponding contact classes all in the phone.

[00:39:00] Speaker 00:
So the things that they describe as the portal doing, they also describe, the specification also describes as being able to be performed on the phone.

[00:39:10] Speaker 00:
With respect to the claimed embodiment, for example, in figure seven and the argument that that is not the claimed embodiment of the network portal, claim one of the 810 patent talks about enabling receipts of communications through a network-based portal.

[00:39:35] Speaker 00:
Then dependent claim 8 of the 810 says, where in the enabling via a network-based portal depends on time.

[00:39:44] Speaker 00:
And that is exactly what is being shown in figure 7.

[00:39:48] Speaker 00:
If you look at appendix 269, column 10.9 through 19, it describes an automated decision process to decide whether to answer a call

[00:39:59] Speaker 00:
And that process can be based on time.

[00:40:02] Speaker 00:
So we are showing exactly in the embodiments in figure 7 through 11, using a phone, doing what the claims talk about a network-based portal doing.

[00:40:15] Speaker 00:
So these are claimed embodiments, and network-based portals should be construed broad enough to encompass performance of this functionality on a phone.

[00:40:25] Speaker 02:
So am I correct in understanding that the way the case was presented below was whether or not the portal was on the server side or on the phone, one or the other, not both?

[00:40:37] Speaker 02:
No.

[00:40:37] Speaker 02:
I think the way it came up in the proceedings below.

[00:40:40] Speaker 02:
Well, I'm looking at the briefs here.

[00:40:42] Speaker 00:
OK, here, yes.

[00:40:43] Speaker 02:
Your brief.

[00:40:44] Speaker 02:
I understood this to be binary.

[00:40:46] Speaker 02:
That's the way I understood the argument.

[00:40:47] Speaker 00:
I'm sorry.

[00:40:48] Speaker 00:
The language in our briefing is to say that the construction of networks

[00:40:53] Speaker 00:
base portal encompasses a server-side, I mean, client-side interface.

[00:41:00] Speaker 00:
And it was not to suggest that it is what it did.

[00:41:02] Speaker 03:
You agree that the portal has to connect to the internet.

[00:41:05] Speaker 03:
What you're saying is that it can include the functionality of the phone.

[00:41:09] Speaker 03:
Correct.

[00:41:10] Speaker 00:
The system requires some internet access for you to be able to control communications from many different devices, yes.

[00:41:19] Speaker 02:
OK, go ahead.

[00:41:21] Speaker 02:
We haven't given any credit at all to the difference between a gateway portal and all that definitional stuff that happened at the front of the opinion, right?

[00:41:29] Speaker 00:
Yeah, so the definition- Because the phone doesn't perform a gateway function, right?

[00:41:34] Speaker 02:
No, no, it doesn't.

[00:41:35] Speaker 02:
So if the board was right in saying that the portal is a gateway, right, then you wouldn't have an argument.

[00:41:42] Speaker 00:
I think the problem with the board's definition of a portal as a gateway was

[00:41:48] Speaker 00:
based off of extrinsic dictionary definitions that were updated.

[00:41:52] Speaker 02:
I'm just saying, for somebody who's trying to read the board decision and understand how they got where they got, they thought it was important to decide what a portal was, and they equated portal with a gateway.

[00:42:02] Speaker 02:
And a phone can't be a gateway.

[00:42:04] Speaker 00:
It is not in this situation.

[00:42:07] Speaker 02:
I'm just trying to piece together the decision that got made by the board.

[00:42:11] Speaker 05:
Can I ask a process question in that regard?

[00:42:13] Speaker 05:
My recollection is, after institution, the board asked about the definitions, if there were any definitions, and the other side provided those definitions, and EPIC did not provide any.

[00:42:24] Speaker 00:
I believe the way the institution decision happened was that it found that the construction of network-based portal that was being advocated by patent owner would exclude embodiments and then said if the parties want to argue more about claim construction in the proceedings, they can.

[00:42:45] Speaker 05:
Did they ask for definitions?

[00:42:47] Speaker 00:
They did not ask for definitions.