[00:00:00] Speaker 04:
Unfortunately, now we have to get to work.

[00:00:03] Speaker 04:
First case this morning is 23-2418, RF Cyber v. Stewart.

[00:00:11] Speaker 04:
Mr. Kawa?

[00:00:13] Speaker 04:
Kawa.

[00:00:18] Speaker ?:
Kawa.

[00:00:21] Speaker ?:
Thank you.

[00:00:25] Speaker 03:
May it please the court.

[00:00:27] Speaker 03:
This case turns on whether the limitation prepared data necessary for the application to function as designed on the mobile device requires the server that prepares that data to actually take active steps to do so instead of simply forwarding it to another device.

[00:00:44] Speaker 03:
It does require that.

[00:00:45] Speaker 03:
The cook prepares the meal and the waiter delivers it.

[00:00:48] Speaker 03:
Those are two separate entities.

[00:00:51] Speaker 03:
If the board below

[00:00:53] Speaker 03:
allowed, excuse me, interpreted this term as allowing simple passive forwarding by DOA's WCM to meet this limitation.

[00:01:04] Speaker 03:
As the board said, we find it sufficient that the WCM receives the file and forwards it to the user device.

[00:01:11] Speaker 03:
That's simply not the plain meaning of the word prepare, which requires something to happen.

[00:01:17] Speaker 03:
The data is unprepared and then after the

[00:01:21] Speaker 03:
Server performs its action.

[00:01:22] Speaker 02:
You have two embodiments in your specification, right?

[00:01:26] Speaker 02:
Yes, and would it be fair to say that those embodiments are non-limiting it would okay, so We can't restrict the claim term to just those two environments and one of the two embodiments is generating the keys Okay, but then another Embodiment is the server

[00:01:50] Speaker 02:
merely requesting the keys.

[00:01:54] Speaker 02:
Whatever the default understanding of preparing means, requesting and then receiving the keys doesn't really sound like the server itself is doing any active work in creating the keys.

[00:02:13] Speaker 03:
In that embodiment, the server, those keys do not exist until the server actually requests them.

[00:02:19] Speaker 03:
It causes them to be calculated on a different server, and then they are provided to the server of the 0.9 pattern.

[00:02:27] Speaker 02:
Okay, but the server is not actually doing any work to create the keys itself, right?

[00:02:37] Speaker 03:
And the server is actively requesting that those keys be calculated.

[00:02:41] Speaker 03:
It's not the same computer doing the calculation.

[00:02:44] Speaker 03:
But I believe that is an active step the server is taking.

[00:02:46] Speaker 02:
So what if we conclude that the patent doesn't limit

[00:02:53] Speaker 02:
and confined and defined the term preparing data.

[00:02:56] Speaker 02:
And so now we're just left with some basic default understanding of the term.

[00:03:02] Speaker 02:
And then it becomes just a substantial evidence question of whether the DOA reference, its server, in fact, teaches this limitation.

[00:03:13] Speaker 02:
So why was it unreasonable for the board to reach that finding when DOA itself talks about

[00:03:23] Speaker 02:
creating payloads that the WCM server is going to transmit to the mobile device.

[00:03:30] Speaker 02:
And the content of that payload is going to include the keys.

[00:03:36] Speaker 02:
And it's also going to include authentication data, among other kinds of data, and putting them all into a payload for transmission.

[00:03:47] Speaker 02:
That sounds like it tracks your understanding of the bearing data, doesn't it?

[00:03:53] Speaker 03:
I don't think it does.

[00:03:54] Speaker 03:
The data is prepared by the issuer cardholder server.

[00:03:58] Speaker 03:
And it's the data that's necessary for the application of function as designed on the mobile device.

[00:04:03] Speaker 03:
It's not any data.

[00:04:05] Speaker 03:
It has to be that specific data.

[00:04:07] Speaker 03:
And that is explicitly prepared on the ICS.

[00:04:11] Speaker 03:
The WCM doesn't have access to the actual data as it is.

[00:04:16] Speaker 03:
It is the secret data to authenticate transactions.

[00:04:19] Speaker 02:
The claim just says preparing data.

[00:04:22] Speaker 02:
And it doesn't talk about any particularized type of data.

[00:04:27] Speaker 02:
So why can't preparing data be just consolidating different sets of data together into a payload be the same thing as preparing data?

[00:04:38] Speaker 03:
Because I don't believe that data is being prepared when it's consolidated.

[00:04:42] Speaker 03:
It's merely just being packaged.

[00:04:45] Speaker 03:
The data was created, generated by the ICS

[00:04:49] Speaker 03:
Before the WCM does anything, the WCM passively receives a message or request from the ICS that includes that data.

[00:04:59] Speaker 02:
You understand, though, that this is a fact-finding that we have to give deference to the patent board.

[00:05:05] Speaker 02:
This is not something we just review on a clean slate.

[00:05:09] Speaker 03:
I do understand that.

[00:05:11] Speaker 03:
If the court is not inclined to consider this a claim construction issue, as the director suggested it was, then yes, this has to be review of the fact finding for substantial evidence.

[00:05:21] Speaker 03:
And I believe there is no substantial evidence because, again, the WCM is merely forwarding that data.

[00:05:29] Speaker 03:
It's not preparing it.

[00:05:30] Speaker 04:
Well, it's doing at least basic formatting and editing, correct?

[00:05:35] Speaker 03:
The only formatting it is allowed to do is formatting on the phone number.

[00:05:40] Speaker 03:
And the phone number is not data that is necessary for the application of function that's designed in the mobile device.

[00:05:45] Speaker 03:
It was not argued to the board below.

[00:05:47] Speaker 03:
There's no evidence in the record that it is.

[00:05:49] Speaker 03:
But the phone number is how the WCM actually addresses the mobile device.

[00:05:55] Speaker 03:
And if you look at them.

[00:05:56] Speaker 02:
Without an accurate phone number, though, then the system wouldn't work as intended.

[00:06:01] Speaker 02:
Is that right?

[00:06:04] Speaker 03:
The application

[00:06:06] Speaker 03:
Without an accurate phone number, the WCM can't transmit any data to a mobile device.

[00:06:11] Speaker 03:
That is correct.

[00:06:13] Speaker 03:
But the mobile device doesn't need that data to function as designed.

[00:06:17] Speaker 03:
It needs the credentials.

[00:06:18] Speaker 03:
It needs the keys.

[00:06:19] Speaker 03:
It needs the data that was prepared by the ICS.

[00:06:21] Speaker 02:
I guess that then leads to the question of what is function as designed.

[00:06:27] Speaker 02:
It could encompass any data that could actually make the system function.

[00:06:34] Speaker 03:
Well, the only data that was identified as a function as designed was the credentials and keys that are generated by the ICS.

[00:06:42] Speaker 03:
That's what was before the board.

[00:06:44] Speaker 03:
That's what's before the court today.

[00:06:46] Speaker 02:
But what if we conclude the board made this alternate fact finding about the data formatting?

[00:06:54] Speaker 03:
Well, I don't believe the board did provide that fact-finding.

[00:06:58] Speaker 03:
If it did, it did not explain how the phone number is data necessary for the device to function.

[00:07:04] Speaker 03:
And then I believe the score would still need to vacate and revamp for the board to at least explain that reasoning so we can address it properly in a further appeal if necessary.

[00:07:14] Speaker 00:
So your argument is that any activity that the WCM engages in is not preparing data.

[00:07:23] Speaker 03:
The activities that the WCM describes as performing do not prepare that data, that's correct.

[00:07:31] Speaker 00:
The validation process, none of that is preparing data?

[00:07:37] Speaker 03:
That's correct.

[00:07:39] Speaker 03:
The validation is done on the phone number, which as I explained a moment ago, is used under the SIP protocol to actually address, forward the data to the mobile device.

[00:07:56] Speaker 04:
Anything further?

[00:07:58] Speaker 03:
Let me check for a moment if you don't mind.

[00:08:02] Speaker 03:
I think the director elucidated part of the claim construction issue pretty well.

[00:08:07] Speaker 03:
The director's brief says, the plain language of the claim merely requires the server to facilitate the application to function as designed.

[00:08:14] Speaker 03:
And that's how the board read the claim.

[00:08:16] Speaker 03:
But that reads out prepared data entirely out of the claim.

[00:08:21] Speaker 03:
Prepared data has to mean something.

[00:08:23] Speaker 03:
It has to be given some sort of form.

[00:08:29] Speaker 03:
And both the director and the board agrees that WCM is a server that delivers electronic credentials from an issuer to the electronic device.

[00:08:35] Speaker 03:
It doesn't prepare them.

[00:08:36] Speaker 03:
It doesn't generate them.

[00:08:38] Speaker 03:
It doesn't even request them.

[00:08:42] Speaker 03:
And unless the court has anything further, I'll reserve the rest of my time.

[00:09:02] Speaker 01:
May it please the court I think this case can be Resolved just by looking at paragraphs 62 and 63 and do a Sean appendix page 997 in paragraph 62 it Addresses the issue of whether the data is necessary to

[00:09:26] Speaker 01:
for the application to function as intended, because it says that in order for an issuer to send confidential information to an approved user's wireless device, the WCM must first validate that the phone number is a syntactically correct E164 number.

[00:09:44] Speaker 01:
So that makes clear that if the number is not formatted correctly, confidential data cannot pass from the issuer

[00:09:51] Speaker 01:
to the mobile device.

[00:09:53] Speaker 04:
And so it's your position that that satisfies the definition of prepare?

[00:09:58] Speaker 01:
Well, it satisfies the claim limitation necessary for the application to function as desired.

[00:10:07] Speaker 01:
And then if you look at paragraph 63, it talks about how the WCM can perform formatting on the phone number to make sure that it's in the correct

[00:10:20] Speaker 01:
the E164 format.

[00:10:24] Speaker 01:
And so regardless of whether merely passing data on

[00:10:32] Speaker 01:
It constitutes preparing.

[00:10:34] Speaker 01:
I mean, we have an example in the prior art where the server is taking an active role in formatting the data so that the application can function as desired.

[00:10:45] Speaker 01:
And I think that's sufficient.

[00:10:47] Speaker 01:
Regardless of the claim construction dispute, that's sufficient to support the board's decision.

[00:10:54] Speaker 04:
So you use the word active, and your friend used the word active.

[00:10:57] Speaker 04:
So you're conceding that active is a necessary definitional

[00:11:02] Speaker 01:
I mean, I still think that their proposed definition is unnecessarily narrow and is clearly pulling from the two embodiments in the specification, which opposing counsel acknowledged were not limiting.

[00:11:19] Speaker 01:
But I think that

[00:11:21] Speaker 01:
you know, under any construction out there that this example meets the claim limitation.

[00:11:30] Speaker 01:
And so, I mean, the court doesn't even, I think the point is the court doesn't even need to address

[00:11:40] Speaker 01:
whether merely passing data from one place to the next meets the claim limitation because we have this example of the server having an active role in editing the data.

[00:11:53] Speaker 01:
And that in itself is sufficient.

[00:11:56] Speaker 01:
And the board pointed to that example in their decision on appendix pages 33 and 34.

[00:12:06] Speaker 02:
The board also cited to, I think with approval, the passage in Dua and the Apple expert declaration, the part about how Dua packages different content, like the authentication data and encryption keys, into a payload for the WCM server to transmit that payload to the mobile device.

[00:12:30] Speaker 01:
Yes.

[00:12:31] Speaker 01:
And so I think that that is also

[00:12:34] Speaker 02:
I didn't see you discuss the payload game in your brief.

[00:12:37] Speaker 01:
No, because I think that the, you know, the board, you know, while it's citing the expert declaration,

[00:12:48] Speaker 01:
It says on appendix page 33, we find sufficient that Dua discloses that the WCM receives the file and forwards it to the user device.

[00:12:58] Speaker 01:
So the board was not discussing payloads.

[00:13:04] Speaker 02:
It cited the paragraphs, though.

[00:13:06] Speaker 01:
It did.

[00:13:07] Speaker 01:
That is correct.

[00:13:08] Speaker 01:
And so.

[00:13:09] Speaker 02:
Are you saying it didn't rely on the payload idea?

[00:13:17] Speaker 02:
Think it's saying I can't use it.

[00:13:19] Speaker 01:
I think it's I know I think I think it can be used I think it's clear that that the board relied on the formatting of the phone number example To show how the WCM takes an active role In preparing the data.

[00:13:35] Speaker 02:
I think that's I mean, I haven't heard anything that that If I could do it to the side and just ask ourselves, what is preparing data?

[00:13:44] Speaker 02:
What does the PTO think preparing data means?

[00:13:48] Speaker 01:
I think preparing is kind of a broad word.

[00:13:52] Speaker 01:
I think it has to be something that's not as narrow as generating or modifying or creating.

[00:14:00] Speaker 04:
Is transmitting too broad?

[00:14:03] Speaker 01:
No, I don't think transmitting is too broad in this case.

[00:14:05] Speaker 01:
I think that the information has to pass

[00:14:12] Speaker 01:
I mean, the key point here is that the information needs to reside on the mobile device for the mobile device to be able to communicate with the issuer.

[00:14:22] Speaker 01:
And so this is all happening through this server.

[00:14:26] Speaker 01:
And so if the server is transmitting the information onto the mobile device such that the mobile device can then communicate with the issuer, I think that's sufficient for preparing.

[00:14:39] Speaker 01:
And I think that that's

[00:14:41] Speaker 01:
you know, had they wanted something more specific, like generating, modifying, creating.

[00:14:46] Speaker 01:
I mean, all those words are out there to show more of an active, you know, step of creation than preparing.

[00:14:58] Speaker 01:
There are no further questions.

[00:15:00] Speaker 01:
Thank you.

[00:15:15] Speaker 03:
I'd like to start with the last point that you just made, Judge Crost, about transmitting.

[00:15:21] Speaker 03:
That is too broad.

[00:15:22] Speaker 03:
As we say in our briefs, if merely transmitting is preparing, then any server where the data passes through is preparing the data.

[00:15:32] Speaker 03:
As the ONI patent discusses, there are

[00:15:35] Speaker 03:
servers in the chain of any computer communication.

[00:15:40] Speaker 03:
If every single server in that chain is transmitting, which they are, if that is equal to preparing the data, then the term really doesn't have any meaning.

[00:15:52] Speaker 03:
It's not a limitation anymore.

[00:15:55] Speaker 03:
Now, Council mentioned the two embodiments that we did cite, and I agree, they're not limiting.

[00:16:02] Speaker 03:
What they do is they inform a person of skill in the art

[00:16:05] Speaker 03:
that the server is doing something.

[00:16:07] Speaker 03:
It has to actively do something.

[00:16:09] Speaker 03:
And it's a major difference between the 009 patent and DOA.

[00:16:14] Speaker 03:
DOA has the WCM as sort of a hub, where all the data from every issuer goes to the WCM first.

[00:16:22] Speaker 02:
The problem we have here is this term, preparing, is very vague.

[00:16:26] Speaker 02:
And it's not a term of art in telecommunications or data transfer.

[00:16:33] Speaker 02:
So it's a very peculiar word to be using in this patent claim.

[00:16:37] Speaker 02:
And I can just hear it that you're struggling to try to locate a coherent understanding of this term by saying it's got to do something.

[00:16:50] Speaker 02:
And it's very hard to understand what is the scope or the limit of what the something can be or has to be.

[00:17:00] Speaker 03:
I think I would disagree with that a little bit.

[00:17:04] Speaker 03:
The reason I'm saying it has to be an active step is I'm trying to set the furthest boundary you can.

[00:17:09] Speaker 03:
This wasn't formally construed below, so we have to think about what does it mean.

[00:17:13] Speaker 03:
It means doing at least something which the WCM does not do.

[00:17:17] Speaker 03:
What does preparing mean?

[00:17:18] Speaker 03:
It means taking data and transforming it from an unprepared state to prepared state so it's ready for use.

[00:17:24] Speaker 03:
Now, that wasn't briefed below, so I don't think we can use that today, but that's the plain meaning of preparing.

[00:17:31] Speaker 03:
And I think, as I said, I think the person reading the 009 patent would understand that the server is doing something to make that data ready for use.

[00:17:41] Speaker 03:
And finally, I want to address the points on paragraph 62 and 63, I think, of DOA.

[00:17:48] Speaker 03:
I think we all agree the WCM can format the phone number.

[00:17:53] Speaker 03:
There's no doubt of that.

[00:17:54] Speaker 03:
But as the subsequent paragraphs state, it uses that, invalidates that, to make the connection.

[00:18:01] Speaker 03:
The application itself is not described as using its own phone number.

[00:18:09] Speaker 03:
in order to function as designed.

[00:18:12] Speaker 03:
So unless the court has any further questions.

[00:18:17] Speaker 03:
Thank you.

[00:18:18] Speaker 03:
We thank both sides.