[00:00:00] Speaker 03:
in Rochester Technology Partners 2025-1075.

[00:00:10] Speaker 03:
We're ready when you are, Council.

[00:00:30] Speaker 04:
May it please the court, John Witten-Zellner, on behalf of Gesture Technology Partners.

[00:00:35] Speaker 04:
I think the panel's question earlier about whether there are any more GTP proceedings lingering is very pertinent to this appeal.

[00:00:46] Speaker 04:
This is actually the third appeal.

[00:00:48] Speaker 04:
pertaining to the 431 patent.

[00:00:50] Speaker 02:
But aside from this, are there yet more gesture patents being reviewed at the PTO?

[00:00:57] Speaker 04:
I believe my counterpart was correct.

[00:01:00] Speaker 04:
If the panel agrees with us on this appeal, this one may go back, or determination on me is stopped later.

[00:01:07] Speaker 00:
But that's it?

[00:01:08] Speaker 00:
That's the end of the line after these two cases?

[00:01:11] Speaker 04:
None that I'm aware of.

[00:01:14] Speaker 04:
So this is actually the third appeal up.

[00:01:18] Speaker 04:
The 431 patent has survived two IPRs that were affirmed by this court.

[00:01:24] Speaker 04:
And the two issues to be decided today are, the first one is, frankly, whether this appeal should be here, because the Patent Office did not properly evaluate the estoppel provision of 35 U.S.C.

[00:01:35] Speaker 04:
315E1.

[00:01:38] Speaker 04:
And second, whether the Lieberman reference anticipates claims in 11.

[00:01:42] Speaker 04:
And this is different from the previous proceeding that was argued, because there is only an anticipation ground, no single reference obviousness ground.

[00:01:52] Speaker 03:
Well, the estoppel provision 317E1 relates to a petitioner, not the office.

[00:02:01] Speaker 04:
It does, but it's.

[00:02:02] Speaker 03:
Estoppel runs against the petitioner.

[00:02:05] Speaker 04:
Correct, Your Honor.

[00:02:06] Speaker 04:
The petitioner here is Samsung, and Samsung filed the ex parte re-exam and is a real party in interest or privy to unified patents, which filed one of the earlier IPRs.

[00:02:20] Speaker 04:
And this isn't just speculation.

[00:02:21] Speaker 04:
Under this court's rulings in RPX Corporation versus Applications and Internet Time,

[00:02:31] Speaker 04:
as well as the Patent Office itself actually previously finding that Unified Patents is a real party in interest with its members, such as Samsung.

[00:02:40] Speaker 00:
OK.

[00:02:41] Speaker 00:
But that issue of whether Unified Patents really has to be treated as a privy doesn't directly affect the argument you're making now, as I understand it, which is the principal argument.

[00:02:51] Speaker 00:
And that is that the Patent Office may not continue the reexamination

[00:02:59] Speaker 00:
under the circumstances in which a petitioner would not be permitted to institute or to request a re-examination.

[00:03:08] Speaker 00:
That's 100% correct, Your Honor.

[00:03:09] Speaker 00:
Why is that true in light of, as Judge Lurie points out, the language of the statute is petitioner.

[00:03:18] Speaker 00:
It may not be brought or maintained.

[00:03:21] Speaker 04:
I raise those issues only or raise those facts only because they were not addressed by the Patent Office at all because of that interpretation.

[00:03:28] Speaker 00:
We don't get to that if we find out.

[00:03:30] Speaker 00:
Correct.

[00:03:30] Speaker 00:
The Patent Office can maintain it willy-nilly regardless of whether the petitioner is barred once it's been instituted.

[00:03:38] Speaker 04:
So correct.

[00:03:39] Speaker 04:
The director did not have to address those facts because of the Patent Office's interpretation of maintaining.

[00:03:44] Speaker 00:
And why isn't their interpretation

[00:03:47] Speaker 00:
reasonable in light of the language of the statute?

[00:03:50] Speaker 04:
There's several reasons, Your Honor.

[00:03:51] Speaker 04:
I think first we start with the language of the statute itself.

[00:03:56] Speaker 04:
The statute was written, the parties agree that the term proceeding as used in the statute refers to both inter partes review and ex parte review.

[00:04:09] Speaker 04:
Within the statute itself starts with the petitioner in an inter partes review.

[00:04:16] Speaker 04:
and then later talks about which uses the term proceedings to refer to what will be stopped.

[00:04:24] Speaker 04:
The statute could have been drafted to have this carve out the patent office seeks, but it was not drafted that way.

[00:04:31] Speaker 04:
And that's consistent with the congressional record.

[00:04:36] Speaker 04:
My counterparts point to the congressional record in several instances, but again, there is no discussion

[00:04:42] Speaker 04:
of a carve out for ex parte re-examination.

[00:04:45] Speaker 02:
To the contrary, the author's... The statute doesn't say the agency may not maintain a proceeding before the office, right?

[00:04:55] Speaker 02:
It does not.

[00:04:56] Speaker 02:
So because this is an ex parte re-examination, I mean, just by definition, that means this is

[00:05:06] Speaker 02:
The petitioner, the re-exam requester, doesn't have any role during the course of the proceeding.

[00:05:14] Speaker 00:
After the reply.

[00:05:16] Speaker 02:
Once the reply, he's done.

[00:05:18] Speaker 02:
Was there a patent owner's statement filed by you in this case?

[00:05:23] Speaker 02:
Okay, so there wasn't a reply to the patent owner's statement.

[00:05:27] Speaker 02:
So after the re-exam request was filed, this requester did not have any role or participation in this proceeding.

[00:05:36] Speaker 04:
The requester did not, but that's not to say that under the Patent Office's rules, requesters still can be submit statements.

[00:05:44] Speaker 04:
They just may not be considered.

[00:05:45] Speaker 04:
I think we covered some of the NPE.

[00:05:47] Speaker 02:
Right.

[00:05:47] Speaker 02:
That's the regulation.

[00:05:50] Speaker 02:
They could try to submit something for the agency's consideration, but the regulation makes it very clear it will be ignored.

[00:05:57] Speaker 04:
Your Honor, one of our other bases here is the court's own decision in Uniloc versus Facebook and where the court interpreted the word maintains in the statute to apply to not only the initial filing or proceeding, but all stages of the proceeding.

[00:06:15] Speaker 02:
I think that's important here again where... That Uniloc case, that's an IPR, right?

[00:06:20] Speaker 02:
It is.

[00:06:21] Speaker 02:
Okay.

[00:06:22] Speaker 04:
But again, whether we're looking at the statute itself or

[00:06:27] Speaker 04:
this Court's opinions, I think there's a careful choice of language where it was written towards proceedings rather than being limited to inter partes review or carving out ex parte re-examination as the Patent Office seeks to do.

[00:06:41] Speaker 00:
Well, but if we're looking closely at language, it seems to me that it's pretty clear if you read E1, it starts out the petitioner and then

[00:06:55] Speaker 00:
It defines the nature of the petitioner and so forth.

[00:07:00] Speaker 00:
And then you pick up with may not request or maintain.

[00:07:06] Speaker 00:
So I don't know how you get from that language to saying that the board, not the board, the PTO may not maintain.

[00:07:16] Speaker 00:
I mean, as I understand the process, anyone can come in and ask for an ex parte re-examination.

[00:07:25] Speaker 00:
Once they've made the request with a reply, they drop out.

[00:07:30] Speaker 00:
The rest of it is carried by the PTO.

[00:07:33] Speaker 00:
And if that's true, I don't know why the petitioner may not request or maintain a proceeding, tells the office what it may or may not do.

[00:07:42] Speaker 00:
That's my biggest problem with your argument.

[00:07:44] Speaker 04:
Your Honor, that actually keys into one of the points that I wanted to raise with the congressional record.

[00:07:50] Speaker 04:
is that when the AI was being considered, the authors of the minority report, and we raised this in our briefing, say, quote, we also called for limiting use of ex parte re-examination to patent owners, noting that allowing three different avenues for administrative attack on patents invites serial challenges.

[00:08:11] Speaker 04:
And then subsequently, the discussion of,

[00:08:16] Speaker 04:
315E and corresponding 325E for post-grant review states that those concerns were essentially taken care of by this stop-up provision as drafted.

[00:08:30] Speaker 04:
So the party that uses inter partes or post-grant review is a stopped from raising in a subsequent PTO proceeding any issue that he raised or reasonably could have raised in the post-grant or inter partes review.

[00:08:45] Speaker 04:
Reading this in the context of, I think, the language in the statute, as well as the concerns addressed in the Minority Report, there's nothing in the language about, one, carving out ex parte re-exam, two, nothing about- One can question the importance of legislative history in general.

[00:09:07] Speaker 03:
Is that a Minority Report?

[00:09:10] Speaker 04:
Well, so this, the Minority Report led to,

[00:09:16] Speaker 04:
the estoppel provision in the AIA.

[00:09:19] Speaker 04:
And what's important to note is that they are not discussing any carve out.

[00:09:23] Speaker 04:
And they are not also setting any boundary on the estoppel coming into effect with a final written decision.

[00:09:32] Speaker 04:
It's just simply someone that uses inter partes or post grant review is stopped from raising it in a subsequent proceeding.

[00:09:40] Speaker 04:
There's no limitation on whether or not a final written decision has been issued to cut that off.

[00:09:46] Speaker 00:
I assume that if a fourth party were to come in and ask for re-examination, that you would argue that the board could not do a new re-examination, right?

[00:10:00] Speaker 04:
Depends on the relationship to the previous, if they were a- I assume they're not.

[00:10:05] Speaker 00:
I say fourth party, entirely unrelated to any of the parties that have been involved in the proceedings before.

[00:10:14] Speaker 04:
That's correct, Your Honor.

[00:10:16] Speaker 04:
If they have no relation, then they are neither the petitioner itself or a privy or real party interest.

[00:10:25] Speaker 04:
Also with my remand, unless there are any further questions from the panel, I'd like to address the prior art and the anticipation ground in view of Lieberman.

[00:10:34] Speaker 04:
Really two limitations, limitations C and D, which are both means plus function limitations that relate to what

[00:10:43] Speaker 04:
processing has to occur in the device.

[00:10:47] Speaker 04:
And these are in claim one, or I'm sorry, claim seven.

[00:10:52] Speaker 04:
Claim seven.

[00:10:53] Speaker 04:
Claim seven.

[00:10:55] Speaker 04:
I apologize for misspeaking.

[00:10:57] Speaker 04:
And I stress the word anticipates because the board's findings read more akin to obviousness.

[00:11:04] Speaker 04:
The board's findings hinge on these so-called identifiers.

[00:11:08] Speaker 00:
Before you get there, just a real quick question.

[00:11:13] Speaker 00:
Board majority and dissent characterize the structure in a certain way, and it's consistent between the two of them.

[00:11:21] Speaker 00:
Where in the patent specification is that structure described?

[00:11:26] Speaker 00:
Because I saw their characterizations, but I couldn't find anything in the patent that correlates, if I may use that word, directly to the characterization.

[00:11:38] Speaker 00:
And if you don't have it in front of you, you can get it for rebuttal.

[00:11:41] Speaker 00:
This is just for my help me with this issue.

[00:11:45] Speaker 00:
But go ahead.

[00:11:45] Speaker 04:
Right.

[00:11:46] Speaker 04:
Right.

[00:11:46] Speaker 04:
So I think the big issue is the so-called identifiers.

[00:11:50] Speaker 04:
In the briefing, my counterparts skipped the plural on identifiers and just call it an identifier or a unique identifier.

[00:11:59] Speaker 04:
And that's not the case.

[00:12:00] Speaker 04:
When we actually look at what Lieberman discloses, and this is column four, line 64 through 66,

[00:12:08] Speaker 04:
column six, lines 49 through 51.

[00:12:11] Speaker 04:
It simply describes the identifiers as being formed of a process.

[00:12:32] Speaker 04:
Really all it says is the image captured by the camera is transformed into manageable identifiers.

[00:12:38] Speaker 04:
And then column four.

[00:12:40] Speaker 00:
What was that first reference, I'm sorry?

[00:12:42] Speaker 04:
Certainly, Your Honor.

[00:12:43] Speaker 04:
It's column four, starting at line 64.

[00:12:46] Speaker 04:
OK.

[00:12:48] Speaker 04:
So the images are captured by the camera.

[00:12:51] Speaker 04:
They're processed to form these identifiers.

[00:12:54] Speaker 04:
Lieberman doesn't really tell us what these identifiers are.

[00:12:57] Speaker 04:
Continuing at the bottom of column four, it says, the identifiers are in the form of tables of numbers.

[00:13:07] Speaker 04:
the scope of computing that really tells us nothing.

[00:13:10] Speaker 04:
Everything inside of a computer are numbers.

[00:13:13] Speaker 04:
All the data is numbers.

[00:13:14] Speaker 04:
Binary numbers, images are arrays of numbers, even text are numerical codes, ASCII codes.

[00:13:21] Speaker 04:
So it's really telling us nothing about what they actually are.

[00:13:28] Speaker 02:
Do you disagree that the identifiers are basically shorthand representations

[00:13:36] Speaker 02:
that's been captured?

[00:13:38] Speaker 02:
The spec does talk about how an image, a captured image, is collapsed into these identifiers.

[00:13:46] Speaker 04:
They are certainly generated based on the image.

[00:13:50] Speaker 02:
With this limited disclosure, the closest concept I... But the whole point is you send these identifiers over to a center, and then the center is going to do a translation of the identifiers into words.

[00:14:05] Speaker 04:
It's signing gestures.

[00:14:07] Speaker 04:
But when you read what's being sent over and why this is done, it's because at the time, there was limited bandwidth.

[00:14:12] Speaker 04:
They couldn't just send full video as we would do today or have the capability to do today.

[00:14:18] Speaker 04:
I read it as akin to compression because they didn't have the capability to send full video over telephone.

[00:14:24] Speaker 02:
But the patent says it's not compression, right?

[00:14:27] Speaker 02:
It's this other thing called RDS, reduced data set.

[00:14:31] Speaker 02:
That's column 12.

[00:14:34] Speaker 04:
I think it still expressed compression.

[00:14:38] Speaker 02:
It says in the present invention, the preferred approach is to avoid the conventional approach of trying to force some compression scheme on the data.

[00:14:45] Speaker 02:
Instead, bring the data down from the frame level to a reduced data set, RDS.

[00:14:51] Speaker 02:
So it's taking the finger spelling captured by the camera and then undergoing an RDS process, which I assume could only be referencing collapsing the image down to the identifiers.

[00:15:06] Speaker 04:
Potentially.

[00:15:07] Speaker 04:
I think there, again, you're using reduced data set, which just means you're losing some form of information.

[00:15:12] Speaker 04:
It doesn't really tell you what the output is or how it's calculated.

[00:15:16] Speaker 00:
And then the issue is... But the output is intended.

[00:15:19] Speaker 00:
I take it.

[00:15:21] Speaker 00:
You may disagree, but I see whether you do.

[00:15:25] Speaker 00:
It is intended to capture a single gesture, and that is what an identifier, as I understood the concept, was intended to embrace, and that identifiers would be sent gesture by gesture.

[00:15:42] Speaker 04:
I don't believe that's the case, Your Honor.

[00:15:44] Speaker 04:
I think that's what my counterparts argued in the brief.

[00:15:46] Speaker 04:
But when you actually look at first the reference and then even the board's decision itself, what would be a gesture or signing gesture is actually sign multiple identifiers.

[00:15:58] Speaker 04:
So there's no unique identifier where the phone sees a gesture and then says, well, this is gesture seven, Simon gesture seven.

[00:16:06] Speaker 04:
It's generating multiple identifiers.

[00:16:09] Speaker 00:
But is it not the case that the identifiers, the limitation on whether it's a single or multiple identifiers is established in the handheld device according to the beginning and end of a particular gesture?

[00:16:26] Speaker 04:
I believe there are multiple identifiers per gesture.

[00:16:29] Speaker 00:
Right.

[00:16:30] Speaker 00:
But once you get to the end of a sequence of identifiers, which is defined by the end of a gesture, then you've got a block of identifiers.

[00:16:40] Speaker 00:
So the identifiers are picking up on the beginning and the end of a gesture.

[00:16:46] Speaker 00:
And if the gesture is complex, there may be more identifiers.

[00:16:50] Speaker 00:
If it's simple, fewer.

[00:16:51] Speaker 00:
Correct?

[00:16:52] Speaker 04:
I read it more as not necessarily the end of a gesture, but the end of motion.

[00:16:56] Speaker 04:
And so the device is not sending, which is different, because if it's the end of motion, you could actually have multiple gestures in this block of identifiers.

[00:17:05] Speaker 00:
OK, but in any event, however it chops up the data, the gestures or the motions are intended to be and are determined to be

[00:17:21] Speaker 00:
There is a determination of when something begins and when it ends and by that determination a block of information is then identified which is sent downstream.

[00:17:33] Speaker 00:
Is that a fair characterization?

[00:17:35] Speaker 04:
I do not know that I would characterize it as the block of data being established and then shipped off as one.

[00:17:43] Speaker 04:
I think it's more of a continuous process.

[00:17:44] Speaker 00:
Maybe they get sent to set off as things develop.

[00:17:47] Speaker 00:
But nonetheless, the whole idea that I understood behind the patent is that these identifiers would either singly or in multiple form identify a particular segment of action.

[00:18:03] Speaker 00:
And if the segment of action was short, maybe only a couple of identifiers, or maybe only one if it was longer, more.

[00:18:10] Speaker 00:
Is that fair?

[00:18:12] Speaker 04:
I believe so.

[00:18:13] Speaker 04:
It's shorthanding the motion that the camera's captured.

[00:18:16] Speaker 04:
But I think we need to be critical that the device itself is not actually doing any analysis or correlation of what those gestures actually correspond to.

[00:18:26] Speaker 04:
And they are identified.

[00:18:27] Speaker 00:
But the machine is determining when there's a beginning and when there's an end.

[00:18:31] Speaker 00:
Of motion.

[00:18:32] Speaker 00:
of the motion or the gesture or whatever.

[00:18:34] Speaker 00:
Right.

[00:18:36] Speaker 03:
Okay.

[00:18:36] Speaker 03:
Counsel, it may be an unwelcome gesture, but I have to tell you, your time has expired.

[00:18:42] Speaker 03:
We'll give you two minutes for a bottle.

[00:18:44] Speaker 03:
Let's hear from the Patent Office.

[00:18:46] Speaker 03:
Thank you, Your Honor.

[00:18:55] Speaker 01:
Good morning, Your Honors.

[00:18:56] Speaker 01:
May it please the Court.

[00:18:58] Speaker 01:
There are only two issues this Court needs to address to resolve this case.

[00:19:02] Speaker 01:
The first is whether the USPTO's interpretation of Section 315E1 is reasonable.

[00:19:09] Speaker 01:
The second is whether Lieberman discloses the means for controlling a function.

[00:19:16] Speaker 00:
Can you help me with respect to my question that I put to your opposing counsel?

[00:19:23] Speaker 00:
Where in the patent itself is the structure that corresponds to the means to the function?

[00:19:32] Speaker 00:
Where is that found in the specification?

[00:19:36] Speaker 01:
There is no dispute.

[00:19:39] Speaker 00:
The problem I had is that both the majority and the dissent before the board characterized the structure in a fairly detailed way.

[00:19:50] Speaker 00:
And I went looking for that language in the opinion.

[00:19:53] Speaker 00:
I'm sorry, in the patent.

[00:19:55] Speaker 00:
And I didn't find it.

[00:19:56] Speaker 00:
So I'm wondering where they got that.

[00:19:59] Speaker 00:
Where is it in the patent, either in Hygverba or in substance?

[00:20:05] Speaker 01:
The patent does not expressly disclose a computer means.

[00:20:12] Speaker 01:
But gesture has never disputed that the transmitter-receiver aid includes a computer means.

[00:20:18] Speaker 01:
That is not in dispute.

[00:20:20] Speaker 01:
There's never been dispute that some sort of computer processing takes place in transmitter-receiver

[00:20:28] Speaker 01:
in Lieberman's transmitter receiver.

[00:20:30] Speaker 01:
So that has never been a dispute.

[00:20:33] Speaker 01:
And the board found that it necessarily is there, because this process that you see outlined in Figure 1, all of that processing takes place.

[00:20:43] Speaker 01:
And that requires a computer maintenance.

[00:20:45] Speaker 00:
OK.

[00:20:45] Speaker 00:
But I have a much more mundane issue that I'm trying to extract here from counsel.

[00:20:51] Speaker 00:
For example, in Judge Dugald's opinion, he says,

[00:20:57] Speaker 00:
The corresponding structure is a handheld computer apparatus programmed with an algorithm to cause the handheld computer to receive position information, correlate the position information, and cause the handheld apparatus to perform the function.

[00:21:13] Speaker 00:
And my question is, that's fine if that's the structure, but where is it in the patent?

[00:21:22] Speaker 01:
Your Honor, the Board didn't make

[00:21:26] Speaker 00:
Did they make it up?

[00:21:28] Speaker 01:
They made a finding that it necessarily is there, because you would need a computer to do all the things shown in that first column of figure one.

[00:21:39] Speaker 00:
You understand what my concern is really basically very simple.

[00:21:43] Speaker 00:
It's just I don't see this language or its equivalent anywhere in the patent, but maybe I missed it.

[00:21:49] Speaker 00:
Did I miss it?

[00:21:50] Speaker 01:
You are correct.

[00:21:51] Speaker 01:
The patent doesn't say, oh, we have a computer or software in the transmitter receiver that does this.

[00:21:57] Speaker 01:
To my knowledge, Lieberman doesn't state that.

[00:22:00] Speaker 01:
However, the board found and the examiner found that it's necessarily there, that computer beings must be there to convert these images to identifiers.

[00:22:11] Speaker 00:
This is not Lieberman.

[00:22:12] Speaker 00:
This is in the patent.

[00:22:14] Speaker 02:
We're trying to figure out the corresponding structure for the means for controlling limitation.

[00:22:20] Speaker 02:
And obviously, it's the patent specification of the 431 that has to disclose the corresponding structure.

[00:22:27] Speaker 02:
And then the question is, where, if anywhere, is the specification?

[00:22:33] Speaker 00:
The claim is invalid.

[00:22:34] Speaker 02:
Yeah.

[00:22:34] Speaker 02:
And then where is there a passage in the specification that says, here is the interesting algorithm.

[00:22:42] Speaker 02:
You receive position information.

[00:22:44] Speaker 02:
Then you correlate that position information with a function.

[00:22:47] Speaker 02:
And then you cause the apparatus to perform the function.

[00:22:50] Speaker 01:
Thank you.

[00:22:51] Speaker 02:
There's probably nothing in the spec that says it like that, right?

[00:22:58] Speaker 01:
To my knowledge, I don't.

[00:23:00] Speaker 01:
recall the specification ever saying, oh, here's the software, here's the computer means that does that.

[00:23:07] Speaker 01:
My apologies to both your honors, and thank you for the clarification.

[00:23:10] Speaker 00:
No, I think Judge Chen put the question much better than I did, so.

[00:23:14] Speaker 01:
No, no, I thought, and in fairness to my friend across the aisle, I think my friend thought we were talking about Lieberman.

[00:23:21] Speaker 01:
The specification provides no more information about how

[00:23:26] Speaker 01:
the processing takes place than Lieberman provides.

[00:23:31] Speaker 02:
The way I read the board opinion here is the origins of this claim construction for the corresponding structure really comes from a different proceeding, from a prior IVR of this patent.

[00:23:45] Speaker 02:
where the petitioner in that IPR proposed this construction for, I guess, a very similar limitation means for controlling.

[00:23:54] Speaker 02:
And there was no resistance from the patent owner in that proceeding.

[00:23:58] Speaker 02:
And so then the board just proceeded to adopt that proposed construction.

[00:24:03] Speaker 02:
And then here in this re-exam, everybody just moved forward on the premise of, well, that construction must be fine.

[00:24:12] Speaker 02:
Certainly the patent owner doesn't

[00:24:14] Speaker 02:
resist it or didn't resist it before so we'll just assume that this is the construction and based on that construction that's undisputed here's why this Lieberman teaches all this.

[00:24:28] Speaker 01:
Yes your honor I think that's a fair characterization this issue had and this particular wording had already

[00:24:35] Speaker 01:
The means for controlling the function had already been, and computer means had already both been, those terms had both been construed in prior proceedings.

[00:24:46] Speaker 01:
And Gesture appeared to, from those proceedings, agree with those constructions.

[00:24:53] Speaker 01:
And so the board took the path of least resistance and agreed to adopt Gesture's constructions of those terms.

[00:25:05] Speaker 01:
Lieberman, we're going on the goose gander principle, Lieberman discloses as much about how those processes take place as the specification.

[00:25:14] Speaker 01:
And so I think I've answered those questions.

[00:25:20] Speaker 01:
I would like to respond to what account my friend appears to be doing

[00:25:26] Speaker 01:
which is re-raising this issue about whether the identifiers are information concerning positions or movements or gestures.

[00:25:34] Speaker 01:
They've already lost on this point.

[00:25:37] Speaker 01:
This court has already determined, and we cite the case at page 47 of our red brief,

[00:25:47] Speaker 01:
This court has already determined that the identifiers or an identifier or set of identifiers are information corresponding to a gesture, the position, the movement.

[00:25:59] Speaker 01:
And that I think your honors fully understand the board's position that unlike gesture's argument that, and what the dissent believes, every image is not converted into

[00:26:17] Speaker 01:
There's a steady stream of images coming in from the camera that are being converted to identifiers and continually sent to the central processor in Lieberman.

[00:26:30] Speaker 01:
Whatever computer means and whatever software is on board Lieberman's transmitter-receiver, it is saying here's the beginning and end of a gesture.

[00:26:42] Speaker 01:
We'll convert that to an identifier set of identifiers and then we'll transmit that.

[00:26:47] Speaker 01:
And that, in the majority's view and in the examiner's view, is a function.

[00:26:53] Speaker 01:
And it controls indirectly that function of transmitting, which is when the function, such as your greed, is encompassed by claim seven and inherently claim 13, the claim on appeal.

[00:27:10] Speaker 00:
So to translate this into lay language, you would say then, I think I understand what you're saying.

[00:27:17] Speaker 00:
It was my understanding of how this works.

[00:27:20] Speaker 00:
But correct me if I'm wrong.

[00:27:23] Speaker 00:
This is not simply a case of the handheld simply passing along a whole series of bits without discrimination, just

[00:27:33] Speaker 00:
all the way down to the main processor, but rather that the handheld is making essentially determinations as to when something is beginning and something is ending, whether we call it a gesture or a motion or a signal.

[00:27:50] Speaker 00:
It's making that determination and sending those packages, that package or those packages,

[00:27:56] Speaker 00:
downstream accordingly.

[00:27:57] Speaker 00:
And that's where you get the correlation, I take it.

[00:28:00] Speaker 00:
Is that accurate?

[00:28:02] Speaker 01:
Yes.

[00:28:02] Speaker 01:
And the board, if you look at the board's decision at A24,

[00:28:15] Speaker 01:
The board discusses how that controls the function.

[00:28:19] Speaker 01:
So if I take this image and I convert it to this identifier, set of identifiers that are unique to that, whatever those gestures were, then the device says, OK, we're going to send this set of unique identifiers.

[00:28:34] Speaker 01:
And then another gesture comes in that's converted to another unique set of identifiers, and OK, we're going to transmit that.

[00:28:44] Speaker 00:
So the handheld has to know or discern when a gesture or motion has started and when it stopped.

[00:28:53] Speaker 00:
It makes that determination without assistance from the central process.

[00:28:57] Speaker 00:
Right.

[00:28:57] Speaker 01:
And if you look at Figure 1, and we reproduce this in our brief, if you look at Figure 1 of Lieberman, you can very clearly see the things that are in the column that the transmitter-receiver does, and that determining computer

[00:29:13] Speaker 01:
sorry, gesture start and end is very clearly in that column.

[00:29:18] Speaker 01:
And it's only once the identifiers are generated and then those move over to the next column where we have the functions of the central processor in Lieberman.

[00:29:30] Speaker 02:
The specification in Lieberman also talks about how there are images captured at 20 to 30 frames per second and then

[00:29:43] Speaker 02:
it goes on to say that each frame is perhaps translated into an identifier.

[00:29:51] Speaker 02:
Is that correct?

[00:29:53] Speaker 02:
I think- How would you best describe what's going on there and how it then reconciles with what you and Judge Bryson were just talking about?

[00:30:04] Speaker 01:
I believe that Lieberman, and this is the way the board interpreted Lieberman, Lieberman's teachings,

[00:30:12] Speaker 01:
That may have been an overly broad statement by Lieberman.

[00:30:18] Speaker 01:
The camera may be capturing that many images per second, but some software in the transmitter receiver decides which images are not going anywhere.

[00:30:28] Speaker 01:
For example, I don't think there's any dispute, or there shouldn't be any dispute, that if the user is just standing there not moving, that all those images are not converted to

[00:30:42] Speaker 01:
identifiers and then transmitted over to the central processor.

[00:30:47] Speaker 01:
And I think figure one makes that very clear.

[00:30:52] Speaker 02:
Did the board, I didn't see the board ever try to explain what the word correlate means, as that term is used in the claim construction for means for controlling.

[00:31:06] Speaker 02:
Extruding the claim construction.

[00:31:08] Speaker 02:
Exactly.

[00:31:08] Speaker 02:
But correlating the position information with a function.

[00:31:12] Speaker 01:
i think that actually uh... what what's your conception of what is needed when it comes to correlating the information with a function well the board uh... found that correlate if you look at the appendix that uh... page ten uh... the board found that correlate means to bring into mutual reciprocal relation and so uh... the board uh... established

[00:31:43] Speaker 02:
or in orderly connection.

[00:31:45] Speaker 01:
Right.

[00:31:46] Speaker 02:
OK.

[00:31:48] Speaker 01:
A reciprocal relation.

[00:31:49] Speaker 02:
So correlate is the... Could it mean nothing more than associating position information with a function?

[00:32:01] Speaker 02:
Oh, I have an identifier that needs to be transmitted.

[00:32:04] Speaker 02:
I'm going to now pause the transmission.

[00:32:08] Speaker 01:
Well, the correlation takes place at two different points, and I think that's how the board really saw that happen.

[00:32:18] Speaker 01:
This gesture correlates to this identifier, and then we're going to send that identifier that correlates to the image to then the central processor.

[00:32:34] Speaker 01:
whether you're looking at one of those steps or the other, the correlation limitation is met.

[00:32:45] Speaker 02:
What do you think it means for a party, perhaps a re-exam requester, an IPR petitioner, to maintain a proceeding?

[00:32:52] Speaker 02:
In other words, in a single sentence, how would you define maintain a proceeding?

[00:32:59] Speaker 02:
How does a party maintain a proceeding?

[00:33:01] Speaker 01:
A party maintains a proceeding by not filing a petition to terminate.

[00:33:11] Speaker 02:
OK.

[00:33:13] Speaker 02:
But is the re-exam requester then maintaining a proceeding by not filing a petition to terminate?

[00:33:22] Speaker 01:
Well, if we're talking about a petitioner, I'm sorry, Your Honor.

[00:33:28] Speaker 01:
Petitioner is what is the party in

[00:33:31] Speaker 01:
an IPR.

[00:33:34] Speaker 01:
I perhaps was being a little too pedantic.

[00:33:36] Speaker 01:
The requester in a re-exam, the requester in a re-exam plays no role in re-exams.

[00:33:44] Speaker 01:
So they're never maintaining, they're never maintaining anything in an ex parte re-exam before the USPTO.

[00:33:52] Speaker 01:
If you look at the statute, 35 USC section 305,

[00:33:58] Speaker 01:
The language there is very clear that the re-exam actually begins.

[00:34:05] Speaker 01:
I mean, you have an order.

[00:34:07] Speaker 01:
The patent owner may file an opposition.

[00:34:11] Speaker 01:
And the order issues, once the examiner finds that there's a substantial new question of patentability raised by the request, then the patent owner has an opportunity to

[00:34:25] Speaker 01:
Um, oppose that to file a response, uh, to the exam.

[00:34:29] Speaker 02:
I guess what I'm wondering is in some ways.

[00:34:32] Speaker 02:
the agency is maintaining a proceeding, whether that proceeding is a ex parte re-examination or an inter-parties review before the board.

[00:34:42] Speaker 02:
It's the agency that's maintaining the proceeding.

[00:34:45] Speaker 02:
Even an IPR petitioner is not necessarily maintaining an IPR proceeding because the IPR petitioner doesn't have any right to just terminate the proceeding.

[00:34:59] Speaker 02:
perhaps like a plaintiff in a district court proceeding by dismissing the case.

[00:35:05] Speaker 02:
It's ultimately up to the agency to decide whether to maintain a proceeding even in the face of a motion to terminate by an IPR petitioner.

[00:35:14] Speaker 02:
So in that way, a petitioner is not maintaining a proceeding.

[00:35:21] Speaker 02:
So I'm just trying to understand what are the qualities that make it so that we could

[00:35:28] Speaker 02:
determine whether a party is actually maintaining a proceeding?

[00:35:35] Speaker 01:
If I understand your honor correctly, you're referring to the tension between what we're saying here with respect to party re-exams and saying the board's ability, the office's ability to maintain an IPR or PGR under 315D or 325D.

[00:35:55] Speaker 01:
And what we're saying here is that in ex parte re-examination, we are the party maintaining as well, and that there's a little bit of a tension there.

[00:36:09] Speaker 01:
And we agree that there is a tension there, but importantly... What's the tension?

[00:36:17] Speaker 01:
The tension, as you said, is that even really in

[00:36:25] Speaker 01:
an IPR or a PGR, if the patent owner or the petitioner filed a petition to terminate, the PTL may continue, the agency may continue to maintain the IPR, the PGR after that.

[00:36:48] Speaker 01:
And I would say before that point,

[00:36:51] Speaker 01:
the petitioner and the patent owner were maintaining and then it moved forward to the director's option.

[00:36:58] Speaker 01:
In an ex parte re-exam, the PTO was always maintaining.

[00:37:04] Speaker 01:
And the statute makes clear that the Section 305, that re-exam begins after

[00:37:13] Speaker 01:
the petitioner, sorry, the requester no longer has a role, no longer has the opportunity to be heard at all.

[00:37:21] Speaker 01:
And importantly, the ex parte re-examination statute existed for several decades before any of these AIA proceedings came on board.

[00:37:32] Speaker 01:
And the

[00:37:35] Speaker 01:
director by statute has the authority to institute an ex parte region on its own initiative.

[00:37:44] Speaker 01:
And that is something not available with IPR or PGR.

[00:37:50] Speaker 01:
So there are meaningful differences between those sorts of statutes.

[00:37:55] Speaker 01:
But we don't even have to get into all this stuff about

[00:37:59] Speaker 01:
maintaining necessarily because 315 applies to petitioners, parties in privity, and real parties in interest.

[00:38:09] Speaker 01:
It doesn't say the office may not maintain.

[00:38:12] Speaker 01:
Whereas if you look at the statute 315D and 325D,

[00:38:18] Speaker 01:
What those say is when the office is done in the IPR or PGR, I'm sorry, when the petitioner is done in the IPR or PGR, the director still has the authority to go ahead and keep it going to maintain.

[00:38:35] Speaker 03:
Thank you, counsel.

[00:38:37] Speaker 03:
Thank you very much, Ms.

[00:38:40] Speaker 03:
Kelly.

[00:38:42] Speaker 03:
Mr. Wittenzelner has a couple of minutes for a vote.

[00:38:53] Speaker 04:
Thank you, Your Honor.

[00:38:54] Speaker 04:
I appreciate the additional time.

[00:38:56] Speaker 04:
I wanted to start by answering Judge Bryson's question.

[00:38:58] Speaker 04:
There's an identification by the board of the corresponding structure for that means plus function limitation in Appendix 731.

[00:39:07] Speaker 04:
There's a list of several portions within the specification, but just for quick discussion, there's one example is column 12, lines 46 through 52.

[00:39:21] Speaker 04:
and it's talking about computer 830, and it's discussing part of the algorithm being that it is subtracting successive images from each other.

[00:39:31] Speaker 04:
This image subtraction is a way of detecting motion in video.

[00:39:34] Speaker 04:
Take one frame, subtract it from the other, and the difference tells you what motion occurred.

[00:39:41] Speaker 04:
On to the second point is with regard to whether the identifiers are actually correlated to any function.

[00:39:50] Speaker 04:
Judge Dougal, the PTAB is correct, that there is no correlation, regardless of the motion.

[00:39:58] Speaker 04:
Any identifier or identifiers generated by the handheld device will cause the same function to operate.

[00:40:05] Speaker 04:
There is no correlation between those identifiers and the transmission function.

[00:40:11] Speaker 04:
It's simply whether or not there is motion, any motion.

[00:40:14] Speaker 04:
And it could actually be motion that is not a gesture.

[00:40:17] Speaker 04:
For example, if the user sways or there's a change in the background, that will also generate an identifier.

[00:40:24] Speaker 02:
How do we know that?

[00:40:26] Speaker 04:
because it's just talking about motion.

[00:40:28] Speaker 04:
And so that's sent off.

[00:40:31] Speaker 04:
And even within the context of gestures, if the identifiers are only happening through the generation of identifiers, again, there's no correlation.

[00:40:40] Speaker 04:
Literally any gesture will cause the same transmission function to be performed.

[00:40:46] Speaker 04:
And then the third point,

[00:40:48] Speaker 04:
is that, I believe my counterpart brought it up, but I just wanted to confirm, the Patent Office does, in fact, in some instances, maintain IPRs itself, even when the petitioner chooses to withdraw based on the timing of the proceeding.

[00:41:01] Speaker 04:
There are instances of that as well.

[00:41:03] Speaker 04:
Unless the panel has any further questions, then nothing.

[00:41:07] Speaker 03:
Thank you, counsel.

[00:41:07] Speaker 03:
The case is submitted.

[00:41:09] Speaker 03:
And that concludes today's arguments.