[00:00:00] Speaker 01:
The next case is Paris Holding versus Google.

[00:00:03] Speaker 01:
Number 23-2296.

[00:00:08] Speaker 01:
Mr. Campbell, when you're ready.

[00:00:11] Speaker 00:
May I please court?

[00:00:12] Speaker 00:
John Campbell on behalf of Petitioner of Paris Holdings.

[00:00:16] Speaker 00:
This court should reverse the patent trial appeal board for three reasons.

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First, the 941 patent claims require multiple websites with the same information, which is not disclosed by the wise reference.

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Second,

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The 402 and 941 claims require a user sequentially accessing the plurality of websites, as taught by the Schaeffer reference.

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And third, the 402 claims require a content descriptor that is not disclosed by WISE's HTML tags.

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Turning to the first issue.

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The 941 patent claims require multiple websites with the same information, which is not disclosed by the WISE reference.

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is the 941 patent claims require a plurality of pre-selected website addresses, each said website address identifying a website containing said information to be retrieved.

[00:01:13] Speaker 00:
This is not disclosed by the WISE reference.

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The WISE reference teaches an interface system for presenting one or more computer documents in an audio format, including a browser connected to the call manager,

[00:01:27] Speaker 00:
for retrieving a document that is related to a subject word or phrase.

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The subject word or phrase is passed to the call manager 210.

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As Wyse says, at this point, the user may invoke a search, that's mode two, which the P tab did not rely on.

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Otherwise, in mode one, a predetermined audio compatible address is selected by the system.

[00:01:51] Speaker 00:
Again, Wyse goes on in the spec and is very clear

[00:01:54] Speaker 00:
that the parser may either match a predetermined address stored in memory to the subject word or phrase, that's mode one, or the subject word or phrase is sent to a searcher.

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WISE is very clear that in mode one, which the Patent Trial and Appeal Board rely upon, there is simply one predetermined address corresponding to the subject word or phrase.

[00:02:17] Speaker 00:
There is not a plurality of pre-selected website addresses as required by the claim.

[00:02:24] Speaker 00:
Because the spec clearly does not teach having multiple website addresses, the board and Google relied on Wise's Claim 8 to try to allege that it was taught by Wise.

[00:02:36] Speaker 00:
And Wise's Claim 8 says, a computer memory connected to the parser for storing predetermined file addresses.

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And while this is plural, it doesn't indicate in any way

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that there are multiple website addresses for pre-selected multiple website addresses for the said information.

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Rather, the clear implication here is that you will have an address for each subject word or phrase, and therefore there will be multiple addresses, one per, not multiple websites for a subject word or phrase.

[00:03:13] Speaker 02:
Is there expert testimony, I think, if I remember correctly, from Mr. Lipoff that

[00:03:19] Speaker 02:
reads the Y's reference and the language that you just talked about differently than the way you have today?

[00:03:25] Speaker 00:
Yes, there is expert testimony from Mr. Lipoff.

[00:03:28] Speaker 00:
I think if you look at it, even Mr. Lipoff simply says there's multiple addresses.

[00:03:35] Speaker 00:
That is not controversial.

[00:03:38] Speaker 00:
Of course, the Y system would be fairly worthless if it only worked for one word, one word, one website address.

[00:03:47] Speaker 00:
That's not what is at issue.

[00:03:49] Speaker 00:
Clearly, there's multiple website addresses, one for each word.

[00:03:53] Speaker 00:
But there's no support for the idea that claim A is teaching that you would have multiple website addresses related to a subject word or claim.

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And that's what's required by the 941 patent, is you have a plurality of website addresses for the subject word or phrase.

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And then what the 941 patent teaches is you're going to rank those and you're going to go through those one at a time.

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The computer is going to go through those one at a time to determine which one has the information.

[00:04:21] Speaker 00:
There's no teaching of that in WISE because all WISE is doing is giving a, there's a predetermined address and it's going to read that website to you.

[00:04:30] Speaker 02:
What about where he says I can point to pre-selected websites in the memory of the person without a need to invoke going to a searcher?

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and that would return websites.

[00:04:41] Speaker 02:
I mean, it sounds to me like he is understanding and reading wise to teach what you're saying wise doesn't teach.

[00:04:53] Speaker 02:
Maybe you're saying his testimony is conclusory or something, but I do think that he's taking the position that the reference teaches the claim element.

[00:05:02] Speaker 00:
If he is, and I don't think it's clear, and I think it's intentionally that way, but if he is, there's no support for that.

[00:05:08] Speaker 00:
You're taking claim eight, a dependent claim, and stretching it to cover what in the specification clearly is not taught.

[00:05:15] Speaker 00:
And so to read it in that way, there's no substantial evidence to support those words that there are multiple website addresses when naturally there would be, right?

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One for each word or phrase.

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To take that and extend that to, well, it means that you could have multiple website addresses for a word

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There's no support for that.

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And in fact, the spec wouldn't teach you, wouldn't tell you what to do with that from Wwise, because the spec is very clear.

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If you have mode two and you do a search, the user then selects a website address to put into memory.

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One.

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That's all the spec teaches.

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So to misinterpret claim eight in that way is not justified.

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There's no support to take claim eight and insert the words

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that you would have multiple website addresses for each, for one subject word or phrase, which is required by the 941 patent.

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Turning to the second argument, the 402 and the 941 patent claims require a computer sequentially accessing, not users sequentially accessing as taught by Schaeffer reference.

[00:06:32] Speaker 00:
The claims require said computer sequentially accessing the said plurality of websites that we just discussed until said information to be retrieved.

[00:06:41] Speaker 02:
So do I understand your position correctly to be that the computer doesn't meet this claim limitation in the prior reference?

[00:06:49] Speaker 02:
Because in the prior reference, a user is working with the computer to have the computer perform the claim element of sequentially accessing?

[00:06:58] Speaker 00:
Yes, because the user is the one doing the sequentially accessing, not the computer.

[00:07:03] Speaker 00:
Well, the computer is.

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Maybe with some input from the user.

[00:07:06] Speaker 02:
Are you saying a user is literally sequentially accessing a memory?

[00:07:11] Speaker 02:
No, Your Honor.

[00:07:12] Speaker 00:
The computer is obviously accessing, right?

[00:07:15] Speaker 00:
But is the computer sequentially accessing?

[00:07:17] Speaker 00:
No, the user is the one, say, the process is in Schaeffer that the computer says, do you want the next one?

[00:07:26] Speaker 00:
Yes or no?

[00:07:27] Speaker 00:
The computer has

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ask the user what to do next.

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So the user is deciding whether it should be sequentially accessed.

[00:07:36] Speaker 02:
Your view is that we should read sequentially to mean automatically sequentially accessing without any input from the user, right?

[00:07:44] Speaker 00:
I don't think the word automatic or without any input from the user is necessary there.

[00:07:48] Speaker 00:
I think the plain language says the computer does the sequential accessing.

[00:07:52] Speaker 02:
Well, what if it does it sequentially but with some extra steps in there for a comprising plan?

[00:07:58] Speaker 00:
It's still, if the computer is doing it, maybe that's fine, but here the computer's not sequentially accessing.

[00:08:06] Speaker 00:
In fact, the computer, if the user says no after the first one, the computer's done.

[00:08:12] Speaker 00:
It doesn't go on.

[00:08:14] Speaker 01:
In the 941- And if the user says yes, it sequentially accesses the next site.

[00:08:19] Speaker 00:
at the user's instruction, yes.

[00:08:22] Speaker 00:
But the computer didn't decide I'm going to sequentially access it.

[00:08:25] Speaker 01:
But that's not what the claim says.

[00:08:27] Speaker 01:
It says sequentially accesses.

[00:08:29] Speaker 01:
And the computer is doing all the accessing, right?

[00:08:32] Speaker 01:
I mean, obviously, we haven't reached the stage where the

[00:08:37] Speaker 01:
human brain can directly access the internet.

[00:08:40] Speaker 01:
So the computer is acting at the instruction of the user, but it's still going step one or then going to the next address, the next one, the next one.

[00:08:50] Speaker 01:
Why isn't that sequentially accessing?

[00:08:53] Speaker 00:
Because it's not the accessing, Your Honor.

[00:08:56] Speaker 00:
It's the sequentially accessing.

[00:08:58] Speaker 01:
But that's sequential.

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One, two, three, four.

[00:09:00] Speaker 00:
But the computer is not sequentially accessing.

[00:09:03] Speaker 01:
The computer's doing all the accessing.

[00:09:05] Speaker 01:
It's sequential.

[00:09:06] Speaker 01:
The only way your argument makes sense is if you add in the words automatically or without human input, which you're not going to get because it's not in the claim.

[00:09:17] Speaker 00:
Your honor, that is not in the claim.

[00:09:19] Speaker 00:
I think when you read the plain language of the claims, computer-sequentially accessing, you look at the spec, and the entire purpose here is to provide the information to the user, from the user asking one time for this information, and then going through a list of websites that are ranked to determine which website has this information to give it back to the user.

[00:09:44] Speaker 00:
So the whole claim, the whole specification, everything is structured in a way that the user says this command and the computer sequentially accesses these ranked websites to then read that, that the user could decide, yes, give me the first website.

[00:10:04] Speaker 00:
No, that's not good enough.

[00:10:06] Speaker 00:
Give me the next website.

[00:10:08] Speaker 00:
That didn't do it.

[00:10:08] Speaker 00:
Give me the next website.

[00:10:10] Speaker 00:
That's just contrary to the entire invention here and to the entire structure of the claim.

[00:10:15] Speaker 02:
How do you distinguish this scenario from CollegeNet v. Apply Yourself?

[00:10:20] Speaker 00:
So in CollegeNet v. Apply Yourself, again, those were cases that related to if automatically is in there.

[00:10:35] Speaker 00:
As the court said there, a machine still performs the claim functions without manual operation, even though a human may initiate or interrupt the process.

[00:10:44] Speaker 00:
Here, we're not talking about initiating or interrupting the process.

[00:10:47] Speaker 00:
We're talking about a process that, by the claim language, by the specification, says the computer sequentially accesses.

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Nobody's saying the human can't kick off the computer sequentially accessing by issuing a command.

[00:10:59] Speaker 00:
In fact, the claims require that.

[00:11:01] Speaker 00:
But the computer still must do the sequentially accessing.

[00:11:04] Speaker 02:
Well, CollegeNet actually says it's OK to have human interactions to interrupt functions, not just initially starting it.

[00:11:13] Speaker 00:
And I think if we had a comprising claim that we were going limitation by limitation, if there was a... You do have a comprising claim, right?

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

[00:11:21] Speaker 00:
I'm sorry.

[00:11:23] Speaker 00:
With a surprising claim, comprising claim.

[00:11:25] Speaker 00:
If the user is interrupting in between one of those steps, that's one thing, right?

[00:11:30] Speaker 00:
But what we have here is a limitation.

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The limitation requires the computer sequentially access.

[00:11:36] Speaker 02:
So your view is that the computer doesn't sequentially access when the user is involved in the sequential access.

[00:11:43] Speaker 00:
When the user is deciding whether to do the next access, the next access, the next access.

[00:11:50] Speaker 01:
You're into your rebuttal, do you want to save it?

[00:11:53] Speaker 00:
Oh, Your Honor, then I will save the rest of my time for rebuttal then.

[00:11:59] Speaker 00:
Yes, thank you.

[00:12:01] Speaker 01:
Mr. Haver.

[00:12:19] Speaker 03:
Good morning, Your Honors.

[00:12:20] Speaker 03:
May I please the court?

[00:12:21] Speaker 03:
Benjamin Hager for Apple Week, Google.

[00:12:24] Speaker 03:
So Appellant's arguments here attempt to raise their complaints to legal disputes because they have no meaningful response to the substantial evidence on which the board's decision is based.

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Patent owner tries to reframe its claim construction argument.

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The board correctly understood it and rejected it below.

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on the substantial evidence points.

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The board's decision is plainly based on substantial evidence.

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Do you want to identify the specific substantial evidence on the issue that your adversary started with?

[00:12:55] Speaker 03:
Sure.

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I believe they started with the predetermined websites portion.

[00:13:00] Speaker 02:
That's right.

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And so there's

[00:13:04] Speaker 02:
substantial evidence in the record and why's itself, why's claimate, obviously refers to... What about the argument about claimate just meaning that there's additional things, there's a lot of things stored in the memorandum, but that doesn't mean that for each

[00:13:22] Speaker 02:
word, there's multiple websites.

[00:13:26] Speaker 03:
Right.

[00:13:27] Speaker 03:
So first, I don't think that is consistent with what Wise ClaimMate actually says.

[00:13:32] Speaker 03:
Wise ClaimMate depends from claim one.

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Claim one has a user command and a subject word or phrase.

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ClaimMate depends from claim one.

[00:13:39] Speaker 03:
And it specifically has a number of addresses that are associated with the predetermined word or phrase that's recited in Claim 1.

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So I think just the structure of the claims makes clear that the addresses correspond to a single word or phrase that's being asked.

[00:13:54] Speaker 03:
We also have substantial evidence in the record from Mr. Lipoff.

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Mr. Lipoff provided deposition testimony on this point.

[00:14:02] Speaker 03:
I can direct your honorees to Appendix 5012.

[00:14:07] Speaker 03:
where Mr. Lipov is talking about the operation of Ys and how it works.

[00:14:12] Speaker 03:
And what he says, this is around line 9, he says, if the subject word

[00:14:17] Speaker 03:
were to match one of the sites in the parser.

[00:14:20] Speaker 03:
And again, he's referring to the fact there are a number of websites in the parser that could potentially match to the websites.

[00:14:26] Speaker 03:
And in fact, one of them does.

[00:14:28] Speaker 03:
This is him describing this one-to-many connection that they say doesn't exist.

[00:14:33] Speaker 03:
And this is what the board relied on in reaching its decision.

[00:14:36] Speaker 03:
I relied on one, WISE itself, and two.

[00:14:39] Speaker 02:
Five, one, zero, two.

[00:14:40] Speaker 03:
Five, zero, one, two.

[00:14:42] Speaker 03:
Thank you.

[00:14:43] Speaker 03:
And we also have, additionally to the deposition testimony, there is

[00:14:52] Speaker 03:
There is a reply declaration as well, where Mr. Repoff made this point, and that is at Appendix 2304, where Mr. Repoff, again, makes the exact same point.

[00:15:05] Speaker 03:
It matters the substantial evidence on which the board's decision rests.

[00:15:12] Speaker 03:
On the sequentially accessing term, I think Your Honors have it exactly right.

[00:15:18] Speaker 03:
If you look at Schaeffer,

[00:15:20] Speaker 03:
Schaeffer figure 7 describes the computer implemented process that is at work, and in Schaeffer figure 7, the computer is essentially doing all of the steps

[00:15:34] Speaker 03:
except at one point there is a voice response unit, which is a computer program that asks the user a question, the user responds, and it is a voice response unit that interprets the user's request and then sequentially accesses the next site.

[00:15:52] Speaker 03:
And you can see that in Figure 7,

[00:15:55] Speaker 03:
There is a site visit, there is a request, there is a next site visit if the user is not satisfied with the request, and the entire process of figure seven is computer implemented.

[00:16:10] Speaker 03:
And so there really is no meaningful dispute about how Schaeffer operates, and that is what the board found.

[00:16:18] Speaker 03:
The board found that this computer implemented the invention of Schaeffer, meets the plain language of the claims.

[00:16:22] Speaker 03:
The board also correctly rejected the position that patent owner is advancing here, that user intervention somehow takes the process outside the scope of the claims when in fact it is the computer that is doing all of this accessing.

[00:16:37] Speaker 03:
And you can see that

[00:16:39] Speaker 03:
makes a lot of sense when you actually look at the claim language.

[00:16:42] Speaker 03:
Patent owner places great weight on the fact that both a user and a computer are recited in the claims, and that is certainly true.

[00:16:50] Speaker 03:
But what is claimed here is a computer implemented invention that is driven by a user.

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There is a user using the computer to satisfy all of the claim requirements.

[00:17:03] Speaker 03:
And when you actually get to this claim element, it's written very, I think, clearly.

[00:17:09] Speaker 03:
What the computer has to do is access it.

[00:17:12] Speaker 03:
This particular claim requirement, a claim element, at appendix 95, recite the computer accessing three times.

[00:17:19] Speaker 03:
The computer accessing from the plurality of the list, the computer accessing the first website, and then the computer sequentially accessing.

[00:17:27] Speaker 03:
And the computer does all of those things.

[00:17:29] Speaker 03:
And what it's looking for is information.

[00:17:32] Speaker 03:
And if that information is not found at a website, then the computer accesses the next website.

[00:17:38] Speaker 03:
What this claim doesn't say is that the computer is what has to determine if the information is found.

[00:17:45] Speaker 03:
It just says whether or not the information is found.

[00:17:47] Speaker 03:
And so they could have written a different claim where there's a determination made by the computer, the computer determining whether the information is found.

[00:17:56] Speaker 03:
That isn't the claim that they wrote and this is a broad open-ended comprising claim and there's simply no basis to exclude a user using a computer from the scope of these claims.

[00:18:10] Speaker 03:
Now, I wanted to just touch on the

[00:18:20] Speaker 03:
Content Descriptor, CLIMEL, which Council didn't mention.

[00:18:25] Speaker 03:
The Content Descriptor is a very straightforward claim term.

[00:18:28] Speaker 03:
It is something that describes content.

[00:18:32] Speaker 03:
And again, there's no substantial dispute about how WISE operates.

[00:18:36] Speaker 03:
WISE uses something called tags that specifically identify particular portions of content in a website to direct the system to

[00:18:48] Speaker 03:
various parts of the website.

[00:18:49] Speaker 03:
So if a user wants stock information, there's a tag that identifies, let's say the second half of the website has the particular stock you want, and then the tag is used to go directly to that website.

[00:19:01] Speaker 03:
And so the teachings of WISE very plainly satisfy this claim term.

[00:19:06] Speaker 03:
We also have an argument that patent owner's position as to the 4-2 patent is barred by collateral estoppel.

[00:19:15] Speaker 03:
Respectfully, Your Honors don't need to reach that.

[00:19:17] Speaker 03:
If Your Honors just affirm the board's factual findings as to why, then there is no need to address the collateral estoppel issue.

[00:19:54] Speaker 03:
I think with that, unless you have questions, I will thank you.

[00:19:59] Speaker 03:
Thank you.

[00:20:14] Speaker 00:
Thank you, may it please the Court.

[00:20:15] Speaker 00:
Just following up on what Council addressed, if we look at WISE Claim 1 and look for

[00:20:23] Speaker 00:
multiple websites for a command.

[00:20:27] Speaker 00:
What claim one talks about is a browser connected to the call manager for retrieving a document identified by a link from a computer network related to the subject word or phrase.

[00:20:37] Speaker 00:
There's nothing in claim one that would suggest we'll end up with multiple websites for a particular subject.

[00:20:44] Speaker 02:
Can I ask you something?

[00:20:45] Speaker 02:
Do you agree that in claim language the word a means one or more and you know to a

[00:20:51] Speaker 02:
That is something that's been established, right?

[00:20:55] Speaker 02:
Yes.

[00:20:55] Speaker 02:
But your view is that it should be read more narrowly in this circumstance because it's being used for disclosure.

[00:21:02] Speaker 00:
I think it should be read more narrowly in this circumstance because the claim and then basic interpretation of the claim go to the spec.

[00:21:10] Speaker 00:
There's no disclosure of why we would have a plurality of websites.

[00:21:13] Speaker 00:
In fact, WISE is very- I would think that A in that claim would be one or more under our case law.

[00:21:21] Speaker 00:
I think if we argued that for claim construction, we looked at the spec where it says the user selects one.

[00:21:29] Speaker 00:
The spec says the user is going to select one predetermined website and put that into memory.

[00:21:34] Speaker 00:
The spec is very clear that there's one address in memory.

[00:21:40] Speaker 00:
It's very difficult to understand the spec in any other way.

[00:21:42] Speaker 00:
So when we try to stretch the claim language to cover more, I think it falls apart.

[00:21:51] Speaker 00:
I think if you go to the spec, it's very clear as to what WISE is teaching, and it's not teaching multiple websites.

[00:21:58] Speaker 00:
And I don't think, you know, if we look at the appendix at 5012 that counsel pointed to with Mr. Lipoff, he says if the subject or to phrase matches

[00:22:11] Speaker 00:
One of those websites that's in the parser, you don't need to go anywhere else.

[00:22:15] Speaker 00:
It's deposition testimony.

[00:22:17] Speaker 00:
It's a little bit difficult to parse.

[00:22:18] Speaker 00:
But there's no indication in there that there's going to be multiple websites for a particular subject order phrase.

[00:22:28] Speaker 00:
Council also referenced the claim language of the 402941 pattern as to the sequentially accessing.

[00:22:36] Speaker 00:
I think what the claim actually says is contrary to what Council indicated.

[00:22:41] Speaker 00:
It says said computer sequentially accessing said plurality of websites until said information to be retrieved is found or until said plurality of websites has been accessed.

[00:22:52] Speaker 00:
Again, the computer has to sequentially access them until the website information is found.

[00:22:58] Speaker 00:
Finally, on the content descriptor, clearly WISE doesn't teach the content descriptor in the HTML tags.

[00:23:05] Speaker 00:
WISE's system is a two-step process if you're going to navigate a document.

[00:23:10] Speaker 00:
WISE is teaching an issue of command, a search command, come up with one website address, read that website.

[00:23:19] Speaker 00:
If you want to navigate within that, you issue another command to try to navigate with that.

[00:23:24] Speaker 00:
So clearly there's not a predefined portion of the website.

[00:23:27] Speaker 00:
related to the initial search committee.

[00:23:30] Speaker 00:
Mr. Coyne has any other questions.

[00:23:32] Speaker 01:
Thank you.

[00:23:33] Speaker 01:
The case is submitted.