[00:00:00] Speaker 02:
We will hear argument next in number 231912, Xerox against meta-platforms.

[00:00:14] Speaker 04:
Good morning, your honors, and may it please the court, Lauren Simenauer with Mikul Smith for Xerox.

[00:00:20] Speaker 04:
The board misconstrued the displaying term in claim nine by starting with the dependent claims and then working backwards.

[00:00:28] Speaker 04:
Today, Xerox asks this court to give the displaying term its proper construction, which requires the display of both the tag address and the recipient address.

[00:00:38] Speaker 04:
And under that construction, claim nine was not disclosed or rendered obvious by metas for prior art references.

[00:00:46] Speaker 02:
So can you start by addressing the untimeliness argument, which seems, as I understand it, but you correct me if I'm wrong, that in your opposition, you've had no response.

[00:01:04] Speaker 02:
You didn't question

[00:01:06] Speaker 02:
the case for obviousness for this limitation at all.

[00:01:13] Speaker 04:
Yes, Your Honor, we did not raise the displaying term in the patent owner response.

[00:01:18] Speaker 04:
That's because the significance of the displaying term really only percolated to the surface after Metta's reply, where Metta essentially shifted theories of obviousness.

[00:01:33] Speaker 04:
And it became clear to us that under their theory, the recipient address did not have to be included in the header

[00:01:42] Speaker 04:
at all, or on the envelope at all, and that made it clear that nothing was going to be displayed to the end user.

[00:01:51] Speaker 04:
So at that point, as soon as Xerox realized it, Xerox raised the issue and the server apply.

[00:01:57] Speaker 00:
And importantly... Is that the reason the board granted you the right to file a server?

[00:02:03] Speaker 00:
You don't usually get a server apply, do you?

[00:02:06] Speaker 00:
Did you have to move for leave to file a server apply?

[00:02:09] Speaker 04:
I don't want to speak out of turn.

[00:02:11] Speaker 04:
I believe so.

[00:02:12] Speaker 04:
I'll double check and get back to you.

[00:02:14] Speaker 00:
Well, if you had to move for leave, what was your reason to move for leave to file a cert reply?

[00:02:20] Speaker 04:
I'm sure that it was because we interpreted the Meadows reply as shifting obviousness theories.

[00:02:27] Speaker 04:
And we did want to address the issue.

[00:02:30] Speaker 04:
But I am being told there was no leave.

[00:02:33] Speaker 00:
So you just filed it, and they took it?

[00:02:36] Speaker 04:
Yes.

[00:02:37] Speaker 04:
OK.

[00:02:40] Speaker 04:
But in any event, we didn't waive claim construction of the displaying term, because not only did we raise it in the surapply, META actually litigated it at the hearing.

[00:02:53] Speaker 04:
And then the board.

[00:02:55] Speaker 02:
But the problem, I mean, the problem I think META says, to tell me why there is something wrong with this, the point of insisting that

[00:03:07] Speaker 02:
arguments be raised early in the process is that there is a regularly scheduled response to those arguments.

[00:03:16] Speaker 02:
And if you're not making an argument, then that response is not going to include the kind of material that eventually at the oral hearing, META had to stand up and present, I don't know, with slides or however, but in any event, not in its reply.

[00:03:36] Speaker 04:
That's right.

[00:03:37] Speaker 04:
And I think that here it's important to remember the guidance from SAS, which is that the petitioner's petition needs to guide the life of the IPR.

[00:03:48] Speaker 04:
The petitioner, Metta, did not raise claim construction.

[00:03:52] Speaker 04:
And only in Metta's reply was Xerox able to determine, OK, based on their shift in obvious theories.

[00:04:01] Speaker 02:
I mean, in the ordinary course, when a petitioner says element 1c is shown in this piece of prior art,

[00:04:11] Speaker 02:
And it does the usual claim mapping thing.

[00:04:15] Speaker 02:
And there's, it doesn't have to particularly say, and here's an explanation of how we understand this term.

[00:04:24] Speaker 02:
And then the patent owner response says, no, no, no, no.

[00:04:28] Speaker 02:
That prior art does not show 1C.

[00:04:30] Speaker 02:
And the reason is that you're misinterpreting it.

[00:04:34] Speaker 02:
Isn't that the right stage for this to occur?

[00:04:36] Speaker 02:
So that in reply, the petitioner can come back and say, oh, this client construction that the patent owner is putting forward is wrong.

[00:04:45] Speaker 04:
Your Honor, that is typically what happens, and I won't pretend like this was not unusual.

[00:04:51] Speaker 00:
I mean, their petition must have addressed the displaying limitation, right?

[00:04:58] Speaker 00:
They're not saying they didn't address it at all.

[00:05:00] Speaker 00:
They must have said, here's where it's shown in the prior art.

[00:05:03] Speaker 00:
And you had an opportunity to respond and say, no, it's not shown in the prior art.

[00:05:07] Speaker 04:
The petitioner addressed the displaying term and said that it was not necessary to construe the term, and the parties agreed that we would all- Well, what was your response to their petition on this displaying limitation?

[00:05:19] Speaker 00:
Did you dispute that the prior art showed it or not?

[00:05:23] Speaker 04:
At the time, we did not dispute that.

[00:05:25] Speaker 00:
I mean, that's the time to dispute it, right?

[00:05:27] Speaker 00:
I mean, if you had an argument, then you should have come back, and then they could have put it in their response.

[00:05:35] Speaker 00:
instead of having the need for a serve reply.

[00:05:38] Speaker 04:
Yes, Your Honor.

[00:05:39] Speaker 04:
Again, this is unusual, but this court's precedent has provided that after a petition, if the significance of a claim term comes to light, then the parties and the board can raise- I think the significance is played on the face, right?

[00:05:56] Speaker 00:
I mean, they're pointing to the prior ART that says, here's what shows the displaying message.

[00:06:01] Speaker 00:
If you had looked at that and said, oh, that prior ART doesn't show the recipient and tag addresses.

[00:06:08] Speaker 00:
It only shows what you think it shows, just the body of the message.

[00:06:13] Speaker 00:
Is that correct?

[00:06:14] Speaker 04:
So that's an important point, because up until the reply, the parties were arguing, or Xerox assumed.

[00:06:23] Speaker 00:
Ask me, what in the prior art do you think it doesn't show that you were unaware of until they're arguing and aware of this later?

[00:06:31] Speaker 00:
Sorry, that was super inarticulate.

[00:06:34] Speaker 00:
You have this displaying the incoming message limitation.

[00:06:38] Speaker 00:
They point to something.

[00:06:40] Speaker 00:
What do that?

[00:06:40] Speaker 00:
What is the prior art they point to show and what do you think's deficient with it?

[00:06:46] Speaker 04:
They so they pointed to a combination of high loft RFC five two three three low And not breaks me yet all of those just for the displaying limitation I believe I Believe so I'm gonna have to verify and come back up on rebuttal I appreciate that

[00:07:09] Speaker 04:
Again, you're not answering what my question is.

[00:07:12] Speaker 00:
I'm sorry.

[00:07:13] Speaker 00:
I don't mean to be so short, but it seems to me that what the point was, you're not saying that none of this prior art shows displaying a message at all.

[00:07:21] Speaker 00:
Are you?

[00:07:22] Speaker 00:
It displays something.

[00:07:23] Speaker 00:
It just doesn't display a message with the recipient address and tag address.

[00:07:30] Speaker 04:
Yes, it's Xerox's position that none of the prior art.

[00:07:33] Speaker 00:
So why, when they cited all that art, could you not have looked at that and said, well, it displays something of a message, but it doesn't display the recipient address and tag address?

[00:07:45] Speaker 00:
What prevented you from knowing of your position on that claim construction?

[00:07:50] Speaker 00:
Or is it just you realize you were losing on this, and you found another way to distinguish it in the server fly?

[00:07:56] Speaker 04:
respectfully, and it's possible that we could have done that.

[00:08:00] Speaker 00:
But Xerox was focused on- If you could have done it, then you should have done it.

[00:08:04] Speaker 00:
I think the board's entirely right.

[00:08:05] Speaker 00:
If it was available to you at the time you filed your response, then you're untimely.

[00:08:10] Speaker 00:
The only reason you should be able to do it in a cert reply if it's something that is dramatically new.

[00:08:16] Speaker 00:
And it doesn't sound to me like you're saying there is anything dramatically new.

[00:08:20] Speaker 00:
They put this limitation in their petition.

[00:08:24] Speaker 00:
I don't have the petition.

[00:08:26] Speaker 00:
I mean, I have it.

[00:08:26] Speaker 00:
You can point to me if you think it was unclear on that point.

[00:08:30] Speaker 00:
They pointed to the prior ART.

[00:08:31] Speaker 00:
Why couldn't you have said this prior ART doesn't show the recipient address and tag address in your response?

[00:08:39] Speaker 04:
And I think that just at the time, the parties were very focused on what the incoming message actually had in it.

[00:08:48] Speaker 04:
And maybe there were assumptions made that that would mean that they be displayed to the end user.

[00:08:55] Speaker 04:
But regardless.

[00:08:56] Speaker 00:
I mean, these cases are really complicated with lots of different limitations.

[00:09:02] Speaker 00:
And they have to go through and put every single limitation in and show where it is in the prior art.

[00:09:07] Speaker 00:
If you don't respond to something and saying it's not there, then aren't they entitled to think you concede at that point?

[00:09:15] Speaker 00:
So we're done with that point.

[00:09:17] Speaker 00:
We're going to reply to the points you're arguing.

[00:09:22] Speaker 04:
I think under axonics, the significance of a claim construction can arise later.

[00:09:29] Speaker 04:
And then, taking that a step further,

[00:09:31] Speaker 04:
O2 Micro says that whenever a dispute is raised, the court has to decide it.

[00:09:39] Speaker 04:
And that doesn't have a temporal limitation.

[00:09:41] Speaker 04:
So under that framework.

[00:09:45] Speaker 00:
I think that reads O2 Micro a little too far.

[00:09:47] Speaker 00:
I think you can certainly waive a claim construction argument if you make it too late.

[00:09:54] Speaker 04:
And I think that making it in the surply is evidence that Xerox was not.

[00:09:58] Speaker 00:
But the board found it was too late.

[00:10:00] Speaker 00:
What's the review that we review the board's determination that it was untimely?

[00:10:06] Speaker 00:
Is it an abuse of discretion?

[00:10:07] Speaker 04:
So the case law that counsel shared with us a couple of nights ago suggests that it's abuse of discretion if the board makes a determination based on its own rules for an obviousness finding.

[00:10:21] Speaker 02:
Our position is that- This is Core Photonics?

[00:10:24] Speaker 02:
I'm sorry.

[00:10:24] Speaker 04:
Is Core Photonics the kind of- Oh, I think it was LIS.

[00:10:29] Speaker 04:
OK.

[00:10:29] Speaker 04:
It was disclosed a couple of nights ago.

[00:10:34] Speaker 04:
Sorry, part of the LSI Corporation versus Regents of the University of Minnesota.

[00:10:39] Speaker 04:
And that case just addresses timeliness in the context of an obviousness finding.

[00:10:46] Speaker 04:
I think it's important.

[00:10:48] Speaker 04:
to consider this in the context of claim construction, which O2 Micro says is a different inquiry.

[00:10:54] Speaker 04:
And this court has de novo review over.

[00:10:59] Speaker 00:
But even under- Let's assume we apply abuse of discretion.

[00:11:02] Speaker 00:
You're getting there, sorry.

[00:11:03] Speaker 00:
Say why it's an abuse of discretion to find this untimely.

[00:11:08] Speaker 04:
Oh, OK.

[00:11:09] Speaker 04:
It's an abuse of discretion to find this

[00:11:12] Speaker 04:
Pardon me.

[00:11:13] Speaker 00:
It is... If we find an abusive discretion standard applies, what's your argument on why it's an abuse?

[00:11:23] Speaker 04:
If the board held... It's an abuse to hold our argument untimely because O2 micro

[00:11:31] Speaker 04:
and its progeny, Kenoko, compel us to review claim construction arguments if the dispute is raised and the parties have.

[00:11:39] Speaker 00:
In a timely manner.

[00:11:40] Speaker 00:
I'm sorry.

[00:11:40] Speaker 00:
You can't use O2 micro to read out a time limits requirement.

[00:11:43] Speaker 00:
Otherwise, you could raise claim construction any time at all, including in a motion for reconsideration.

[00:11:49] Speaker 00:
And clearly, we're not going to allow that.

[00:11:52] Speaker 00:
There has to be a timely claim construction being raised.

[00:11:57] Speaker 04:
I agree.

[00:11:57] Speaker 00:
And I think the key determination here answer the abuse of discretion argument with O2 micro.

[00:12:05] Speaker 00:
Why was an abuse of discretion from the board to say it's just too late?

[00:12:09] Speaker 04:
Because the board ultimately decided to claim construction.

[00:12:11] Speaker 00:
That's what lower tribunals do all the time.

[00:12:15] Speaker 00:
They make their finding, and then they make an alternative finding.

[00:12:18] Speaker 00:
So we have something to review if we disagree with them.

[00:12:21] Speaker 00:
The fact that they made an alternative finding doesn't mean that it was an abuse of discretion to make the first finding, does it?

[00:12:29] Speaker 04:
I'm not aware.

[00:12:30] Speaker 04:
No, it does not.

[00:12:31] Speaker 04:
But I'm not aware of any case where the lower court, where the board actually decided claim construction.

[00:12:37] Speaker 04:
And then being informed by the party's arguments, and then this court said that that was untimely.

[00:12:45] Speaker 04:
So we've got two components.

[00:12:46] Speaker 00:
But the board said it's untimely.

[00:12:47] Speaker 00:
Our job is not to say de novo whether it's untimely.

[00:12:50] Speaker 00:
The board said it's untimely.

[00:12:52] Speaker 00:
We review that for abuse of discretion.

[00:12:54] Speaker 00:
If we disagree with them and find an abuse of discretion, then we review their plaint construction that they made.

[00:12:59] Speaker 00:
But if it's not an abuse of discretion, then where do we go?

[00:13:02] Speaker 04:
But their timeliness determination was in direct conflict with O2 Micro and Conoco.

[00:13:09] Speaker 00:
If that's your argument, you lose that point with me.

[00:13:13] Speaker 04:
Well, even accepting the correct claim construction

[00:13:16] Speaker 04:
or pardon me, the board's claim construction.

[00:13:20] Speaker 04:
Substantial evidence doesn't support a motivation to combine because that would require starting with a reference that was designed to reduce emails.

[00:13:33] Speaker 04:
layering on three additional references and ending up at an agglomeration where you get more emails and the board not only arrived at its obviousness finding even under its own construction by ignoring that the prior art taught away from the proposed combination, but it also accredited disclosures that

[00:13:56] Speaker 04:
Metta either did not rely upon or to which Xerox didn't have an opportunity to respond.

[00:14:02] Speaker 02:
Does this combination argument apply to the displaying limitation, the receiving limitation?

[00:14:11] Speaker 02:
What was the combination used for?

[00:14:13] Speaker 04:
Yes, Your Honor.

[00:14:14] Speaker 04:
It was used for the receiving limitation, receiving an incoming message with a recipient address and adding one or more users to a content tag.

[00:14:24] Speaker 04:
I also see that I'm in my rebuttal time and I did want to save some.

[00:14:30] Speaker 02:
I'll give you the rebuttal time back, but not if you keep going for a long time.

[00:14:36] Speaker 04:
Yeah.

[00:14:36] Speaker 04:
I should have just gone through.

[00:14:38] Speaker 04:
So, right.

[00:14:40] Speaker 04:
The board found that, so, Hidloff doesn't disclose adding a recipient address to this publishable message that goes to a shared content source, and that whole system is based on natural language processing.

[00:14:56] Speaker 04:
It states in Hidloff that there's an indication that Hidloff is not a normal message.

[00:15:02] Speaker 04:
And essentially, the board relied on this disclosure that was not identified as going to the receiving limitation that says that while HIDELOFF further allows for receipt of a user-provided natural language destination address value, if Xerox had had an opportunity to respond, we would have said that the very next line

[00:15:25] Speaker 04:
says that the natural language destination address value can include free text and that free text is then matched with these categories.

[00:15:35] Speaker 04:
And again, I think that goes to the greater point of Hidloff teaching expressly away from this kind of combination because Hidloff allows a user not to receive emails to their personal email address.

[00:15:49] Speaker 04:
but to go to the shared content source and pick out emails that they might be interested in.

[00:15:57] Speaker 04:
The board also credited a lawyer argument that it would have been obvious to include the recipient address at least sometimes.

[00:16:07] Speaker 04:
That's classic hindsight to me.

[00:16:10] Speaker 04:
And then secondly, the prior art does not disclose or render obvious, adding a recipient to the at least content tag.

[00:16:21] Speaker 04:
This is an even

[00:16:24] Speaker 04:
more egregious example of what Hydlock was expressly designed to avoid.

[00:16:28] Speaker 04:
So not only is a user receiving an incoming message, they're receiving this incoming message.

[00:16:35] Speaker 04:
They might not have even given their permission to be forwarded this email to their personal email address.

[00:16:42] Speaker 04:
They're receiving an incoming message, and then they receive notifications that they've been added to this conversation address.

[00:16:51] Speaker 04:
And Xerox pointed out, and the board

[00:16:55] Speaker 04:
didn't really address that that goes against Hidloff's teaching that spam and flooding.

[00:17:00] Speaker 04:
Hidloff expressly says the downsides of traditional email systems were spam, were being shown emails that you didn't want to see.

[00:17:14] Speaker 04:
And so this technology allowed a user to seek out

[00:17:19] Speaker 04:
messages they were interested in based on their own autonomy.

[00:17:25] Speaker 01:
I think you should probably wrap up.

[00:17:30] Speaker 04:
And with that, I yield the rest of my time.

[00:17:32] Speaker 04:
Thank you.

[00:17:43] Speaker 03:
Good morning, Your Honors.

[00:17:44] Speaker 03:
Heidi Keefe on behalf of Appellee.

[00:17:48] Speaker 03:
Your honor's got the issue exactly right regarding waiver.

[00:17:52] Speaker 03:
While preparing for this hearing, we did come across the LSI case.

[00:17:57] Speaker 03:
And I just want to make sure that that's in the record with citation.

[00:18:01] Speaker 03:
That's LSI Corporation versus Regents University of Minnesota 43F4 1349, which stands for the proposition that unless

[00:18:15] Speaker 03:
the issue of timeliness was raised on appeal is forfeited.

[00:18:20] Speaker 03:
And so this is a very clear example of exactly what happened here.

[00:18:24] Speaker 03:
The issue of timeliness was not raised here on appeal.

[00:18:28] Speaker 03:
They simply said at one point in the briefing, I think at pages 34 and 35 of the blue brief, that, well, because the court engaged in claim construction, we're OK engaging in claim construction.

[00:18:40] Speaker 03:
They didn't address the timeliness issue at all, and so it's forfeited.

[00:18:44] Speaker 03:
Here, though, just to answer.

[00:18:45] Speaker 00:
Even if we address it, do you agree that's an abuse of discretion standard?

[00:18:49] Speaker 03:
Absolutely, Your Honor.

[00:18:50] Speaker 03:
And that's clear both from LSI and from the in-ray Google technologies case that we cited in our brief.

[00:18:56] Speaker 03:
It is definitely an abuse of discretion standard.

[00:18:58] Speaker 03:
And here, the board below specifically applied its rules that says that you're not allowed to come up with a new argument.

[00:19:07] Speaker 03:
Here in surreplied, just so Your Honors are clear,

[00:19:09] Speaker 03:
The surreply is allowed only for observations.

[00:19:13] Speaker 03:
In other words, if something happened during the testimony when you took the expert's declaration after the reply was filed, you're allowed to file observations.

[00:19:22] Speaker 03:
And so it's sort of point to, here's a quote that I want you to make sure that you look at.

[00:19:25] Speaker 03:
It's not a point to raise brand new issues for the first time on appeal.

[00:19:30] Speaker 03:
And that's exactly what the board said and what the board found when they went back and looked at the response and found that there was nothing in that response.

[00:19:38] Speaker 03:
one of the only things that I would also.

[00:19:41] Speaker 00:
Can you, and I assume in your actual petition on this, you specifically addressed this displaying claim, right?

[00:19:49] Speaker 03:
We absolutely did, Your Honor.

[00:19:50] Speaker 03:
In fact, the displaying claim was addressed in the petition at pages 126 and 127, which came after all of the conversation about everything, about where the recipient address was, where the tag address was.

[00:20:04] Speaker 03:
And it was always clear from the petition

[00:20:06] Speaker 03:
that those two addresses were actually in different places.

[00:20:11] Speaker 03:
And in fact,

[00:20:12] Speaker 03:
The argument was always there that the tag address was separate.

[00:20:16] Speaker 03:
The tag address was in the envelope, and the recipient address was in the header.

[00:20:19] Speaker 03:
So they knew that they were in.

[00:20:21] Speaker 02:
Starting with 126, this says, limitation doesn't add anything not already discussed.

[00:20:29] Speaker 02:
What here would point the patent owner back to what page for what the display of the incoming message is?

[00:20:42] Speaker 03:
Everything above, which described what the recipient address was and what the tag address was, and that's all in 9A and the discussions for 9A, discussed the fact that the tag address is in the envelope and the recipient address is in the header.

[00:21:01] Speaker 03:
And that's actually something that Judge Galligan specifically pointed to during the oral argument.

[00:21:10] Speaker 03:
Judge Galligan asked

[00:21:11] Speaker 03:
But I'm looking at the petition, the envelopes all over the place.

[00:21:15] Speaker 03:
Why couldn't this argument that the envelope is different from the header be made in patent owner's response?

[00:21:23] Speaker 03:
That's at Apix 455.

[00:21:26] Speaker 03:
Patent owner at that point said the petition itself said the tag address was in the envelope and the recipient address was in the header.

[00:21:33] Speaker 03:
So they admit that they're put in two different places, and yet they never made any argument that the display had to be in one place.

[00:21:40] Speaker 03:
and not in two different places.

[00:21:41] Speaker 03:
Judge Galligan goes on to say, it sounds like they made the contention that these are in two different places, yet you waited until the surreply to point out that that wouldn't meet the displaying limitation.

[00:21:54] Speaker 03:
And that goes between epics 455 and appendix 456, lines 20 on 455 through 3 on 456.

[00:22:02] Speaker 02:
So on the merits of that claim construction argument, what's your best?

[00:22:08] Speaker 02:
argument that the, is it the incoming message?

[00:22:14] Speaker 02:
Is that the claim language?

[00:22:15] Speaker 03:
Yeah, the claim language specifically is the incoming message.

[00:22:20] Speaker 02:
Displaying the incoming message and earlier the incoming message is supposed to have these two things.

[00:22:26] Speaker 03:
So it says that you receive a message with a recipient address and a tag address.

[00:22:31] Speaker 03:
The limitation of displaying the incoming message does not say display the entire incoming message.

[00:22:37] Speaker 03:
It does not say display the incoming message with these addresses.

[00:22:41] Speaker 03:
It just says display the message.

[00:22:43] Speaker 02:
So tell me this is what I'm remembering when I was reading your brief and the the board's decision the board I thought made a point that with does not necessarily mean as part of correct just means along with I don't remember that you made that point in your brief and

[00:23:07] Speaker 03:
I don't know that we did, however, we did make the point that you can, for example, display a car that has an engine without displaying the engine or displaying a car that comes with some instruction manuals without displaying those instruction manuals.

[00:23:26] Speaker 03:
We definitely made that argument.

[00:23:27] Speaker 03:
And so I think that goes directly onto the same thing, that you don't have to show every single thing.

[00:23:32] Speaker 03:
that's included with something to have displayed it.

[00:23:35] Speaker 03:
And then the board and us showed that that's further supported by looking at the dependent claims, which talk about other things that must be displayed in order to accomplish claim nine.

[00:23:49] Speaker 03:
So claim nine, as your honors know, has to be broad enough to encompass all of the dependent claims.

[00:23:54] Speaker 03:
The dependent claims also require displaying all of the other messages received, and that's in

[00:24:01] Speaker 03:
Claim, for example, 14, displaying a list of all of the received messages.

[00:24:07] Speaker 03:
And that's only in Figure 6.

[00:24:10] Speaker 03:
And I think Your Honor spoke a little bit earlier to Figure 6.

[00:24:14] Speaker 02:
I did want to get back to Figure 6.

[00:24:15] Speaker 03:
And that is why I wanted to bring it up.

[00:24:17] Speaker 03:
Figure 6 is the only embodiment that actually shows displaying a list of incoming emails.

[00:24:24] Speaker 03:
And that's in 97.

[00:24:26] Speaker 03:
And the specification clearly tells us that 97 are the list of incoming emails.

[00:24:31] Speaker 03:
Figure 6 also shows the recipients and the tags, which are also required to come with the email message, but it doesn't list out the at and then the symbol following it.

[00:24:44] Speaker 03:
And so if you were to require that the full tag address and the full recipient address

[00:24:50] Speaker 03:
be a part of every displaying limitation, which again we think was late, that would read out Figure 6.

[00:24:58] Speaker 03:
But the specification makes clear that Figure 6 is an example of how you see these messages that have been coming in.

[00:25:05] Speaker 02:
Right.

[00:25:05] Speaker 02:
And just to see if I understand this correctly.

[00:25:08] Speaker 02:
So figure six itself is not the message.

[00:25:11] Speaker 02:
Figure six is a different screen that includes two messages, both of them given the same number, 94.

[00:25:20] Speaker 03:
It displays many things.

[00:25:22] Speaker 02:
It displays a variety of other, but only two messages.

[00:25:25] Speaker 03:
Yes, it displays two messages.

[00:25:27] Speaker 03:
The first message is listed as 94.

[00:25:29] Speaker 03:
The second message doesn't actually have a number attached to it at all.

[00:25:32] Speaker 03:
So those are two separate messages.

[00:25:33] Speaker 04:
Yeah.

[00:25:34] Speaker 03:
And you can tell by the box that is used.

[00:25:38] Speaker 03:
I highlighted mine in blue.

[00:25:39] Speaker 03:
You can tell by the box that's used to circle message 94.

[00:25:42] Speaker 03:
And then below is another message.

[00:25:44] Speaker 03:
The specification describes that as

[00:25:48] Speaker 03:
Basically, this is a discussion board happening.

[00:25:50] Speaker 03:
And this is a message where someone says, we recently installed that.

[00:25:53] Speaker 03:
Hey, there's a training session.

[00:25:55] Speaker 03:
Come on, let's take a look at all this.

[00:25:56] Speaker 02:
And do I remember right that the patent never suggests that the appearance of the message in this screen would be different from the appearance to the recipient when the message was received?

[00:26:11] Speaker 03:
It does not.

[00:26:12] Speaker 03:
It does not say one way or the other.

[00:26:14] Speaker 03:
It just uses this as an example of

[00:26:16] Speaker 03:
how you can display a message to the user.

[00:26:20] Speaker 03:
And that language is very clear in column 8, Apix 655.

[00:26:26] Speaker 03:
Each email message, 94, displayed can also include an email header, email content, et cetera.

[00:26:33] Speaker 03:
So this is very specifically talking about exactly what we're saying.

[00:26:38] Speaker 03:
So we believe that it is the proper construction, not just because we win on forfeiture, but because this is also the proper construction.

[00:26:45] Speaker 02:
Can you turn to the second issue about the challenge to the board's finding that the several references would be combined in the way that you're using?

[00:26:59] Speaker 03:
Yes, Your Honor.

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

[00:27:00] Speaker 02:
Largely because of the flooding of your inbox.

[00:27:04] Speaker 03:
Yeah, the biggest argument, or principally the only argument, is that somehow, Hidloff teaches away from the combination.

[00:27:12] Speaker 03:
But the problem is, that's not actually what Hidloff says.

[00:27:15] Speaker 03:
What Hidloff says in its first paragraph, and this is 765, starting at line 22, is publication by email, in other words, everybody's email all the time, to multiple recipients is problematic.

[00:27:29] Speaker 03:
in that the resulting email messages appear in the destination user's inboxes, even if they are not important to- I'm sorry, this is column what?

[00:27:38] Speaker 03:
I apologize, column one.

[00:27:40] Speaker 03:
Yeah.

[00:27:41] Speaker 03:
The sentence that starts at line 22.

[00:27:43] Speaker 03:
OK, thank you.

[00:27:45] Speaker 03:
The part that is the most important is to start at line 24, even if they are not important to that receiving user.

[00:27:52] Speaker 03:
This may cause a flooding problem in the inbox.

[00:27:55] Speaker 03:
So flooding is only that which you don't want.

[00:27:58] Speaker 03:
And so the point is, you might get too many things that aren't of interest to you.

[00:28:03] Speaker 03:
That causes flooding.

[00:28:05] Speaker 03:
The combination is specifically geared to only sending you the things that you desire, categories that you have subscribed to or that you have said are interesting.

[00:28:16] Speaker 03:
That's what Hidloff wants to do.

[00:28:17] Speaker 03:
It wants to get you things that you're interested in.

[00:28:21] Speaker 03:
the entire combination is set up to do.

[00:28:24] Speaker 02:
Rigsby says that- Did the board point to that particular distinction in responding to the argument against the combination?

[00:28:33] Speaker 03:
No, the board did not point to that distinction.

[00:28:35] Speaker 03:
That's something I'm raising for your honors.

[00:28:37] Speaker 03:
The board pointed to the fact that even if you were to credit flooding as a problem, that there are always both trade-offs and benefits that can be found from any combination.

[00:28:47] Speaker 03:
And what the board found was that the flooding problem could be solved by virtue of the fact that you're using Rigsby's newsletter.

[00:28:54] Speaker 03:
So you're not really flooding the recipient at all.

[00:28:56] Speaker 03:
You're sending them one message that includes things that might be important to it, and that that one message is not a flooding situation.

[00:29:04] Speaker 03:
That's what they were saying.

[00:29:05] Speaker 03:
And so that's what the board said in its acknowledgment that this would actually be something that a user would want, because here,

[00:29:13] Speaker 03:
The newsletter that Rigsby teaches and you put that in combination with Heidloff, you're saying here are the things I'm interested in.

[00:29:19] Speaker 03:
You combine that with Rigsby and Rigsby says I'll look at those categories and overnight I'll send you a digest or a newsletter of only the things that have come in that are of interest to you.

[00:29:29] Speaker 03:
That's something that would be of benefit to users because it would limit the things that are in their inbox to things that are wanted by them.

[00:29:37] Speaker 03:
And that's why I point back to column one.

[00:29:40] Speaker 03:
That wasn't even the problem that Hidloff was trying to solve in the first place.

[00:29:43] Speaker 03:
But the board definitely had substantial evidence by virtue of how they said that the digest alone would mean that there's only one email.

[00:29:50] Speaker 03:
The board also pointed out the possibility of unsubscribing and all of the other things that are also listed in the combination.

[00:29:58] Speaker 03:
If Your Honors have no other questions, I very much appreciate your time.

[00:30:04] Speaker 03:
Thank you, Your Honors.

[00:30:28] Speaker 04:
Your Honors, first I have to state that Xerox did not waive its timeliness arguments.

[00:30:35] Speaker 04:
Xerox discussed the board's finding of timeliness on page 17 and page 39 of its opening briefs.

[00:30:43] Speaker 04:
But going into this discussion of what the petition actually said, my esteemed friend said that everything above in the petition disposes the argument about the envelopes.

[00:30:55] Speaker 04:
It's actually not so.

[00:30:57] Speaker 04:
If you go to appendix 126, the petitioner states nothing about anything that's supposed to be included in the envelopes.

[00:31:07] Speaker 04:
In fact, this section on displaying the incoming message to the at least one users associated with the at least contact tag says nothing about displaying the content tag.

[00:31:18] Speaker 04:
It refers to this Rigsby categorization system where documents can be grouped for displaying purposes.

[00:31:30] Speaker 04:
So the first time

[00:31:31] Speaker 04:
Xerox became aware of this argument was actually in Metta's reply.

[00:31:37] Speaker 04:
And actually, I've been told that the PTAB has now adopted sir replies without leave for everyone.

[00:31:43] Speaker 00:
And then- Wait, we're in Metta's reply.

[00:31:48] Speaker 00:
What did they reply to?

[00:31:49] Speaker 00:
If you didn't address anything in your response, what were they replying to?

[00:31:54] Speaker 04:
In our response, we were talking about what had to be included with the incoming

[00:32:01] Speaker 04:
with the incoming message.

[00:32:02] Speaker 04:
And that led into a discussion about what is on the outside of the envelope and what's inside the header of the envelope.

[00:32:08] Speaker 04:
And that's what Xerox was... And in their reply, Manna took the position that you didn't need to have the recipient address in the... You didn't need to have it in one place or another.

[00:32:19] Speaker 04:
And that's what prompted Xerox to realize

[00:32:23] Speaker 04:
Oh, that would mean it wouldn't be displayed at all.

[00:32:25] Speaker 04:
Now it's not in line with the plain language of claim term 9.

[00:32:30] Speaker 04:
And then finally, I wanted to talk a little bit about figure 6 and figure 4.

[00:32:38] Speaker 04:
There's no evidence that figure 6 is an embodiment.

[00:32:41] Speaker 04:
Figure 6 is described in the specification as a screenshot showing a web page association.

[00:32:49] Speaker 04:
And that can include emails.

[00:32:51] Speaker 04:
There's no evidence that it's referred to as an embodiment.

[00:32:54] Speaker 04:
And regardless, we are not permitted to limit claims to their embodiments, particularly where there's no preferred embodiment identified, certainly not where there are multiple figures that could represent the incoming message.

[00:33:09] Speaker 02:
This wouldn't be limiting, though.

[00:33:11] Speaker 02:
I mean, their point is that something that you said is required is not actually required.

[00:33:18] Speaker 02:
And here's an example, assuming it's an embodiment.

[00:33:21] Speaker 02:
It doesn't include it.

[00:33:22] Speaker 02:
So the claim is broad enough to include a display that lacks a particular piece of information.

[00:33:32] Speaker 04:
I see.

[00:33:33] Speaker 04:
And their argument is that

[00:33:35] Speaker 04:
because figure six reads on some of the independent.

[00:33:40] Speaker 02:
It doesn't show an address.

[00:33:41] Speaker 04:
Right.

[00:33:44] Speaker 04:
And my response to that is that conflicts with the plain language of claim term nine.

[00:33:50] Speaker 04:
And when you have, even if it were an embodiment, which it is not, if you had an embodiment that conflicted with the plain language, the plain language predominates.

[00:34:01] Speaker 04:
And here we've got the

[00:34:02] Speaker 04:
claim language that says that an incoming message has to come with a recipient address and a tag address.

[00:34:11] Speaker 04:
My esteemed friend said, well, you can show a car, a car that has an engine without showing the engine.

[00:34:18] Speaker 04:
That may very well be true.

[00:34:20] Speaker 02:
But a message is not that kind of thing.

[00:34:24] Speaker 04:
A message is not that kind of thing.

[00:34:26] Speaker 04:
I would compare this situation to showing a car

[00:34:30] Speaker 04:
with its license plate.

[00:34:32] Speaker 04:
And regardless, the claims tell us what needs to be shown.

[00:34:35] Speaker 04:
It tells us that we need to show the recipient address and the tag address.

[00:34:41] Speaker 04:
Unless you have more questions for me, I yield my time.

[00:34:44] Speaker 02:
Thank you so much.