[00:00:00] Speaker 03:
The first case is Almond Net versus Meta Platforms, 2024, 1834. Mr. Milkey. Thank you, Your Honor. I may please the Court.

[00:00:13] Speaker 02:
Thank you.

[00:00:16] Speaker 02:
In the proceedings below, the petition proposed a combination of the system described in Rosenberg with the Firefly system, which was a real-world system that was discussed in two textbooks called Zeff and Stern. Now, there's no dispute that Rosenberg alone does not disclose or render obvious all limitations of any challenge claims.

[00:00:41] Speaker 02:
Specifically, the petition proposed a combination of Rosenberg with Firefly to arrive at the claims. Meta thus needed to show and the board needed to find a motivation to combine Rosenberg with Firefly in a way that the petition proposed. However, the board in its final written decision never made any finding of motivation to combine Rosenberg with Firefly.

[00:01:07] Speaker 02:
The board erred by ignoring the motivation... Can I just ask?

[00:01:10] Speaker 00:
I thought that there was a dispute about whether there was a need to modify Rosenberg.

[00:01:17] Speaker 00:
Am I misremembering?

[00:01:19] Speaker 00:
That is, there is a dispute right now between the parties in front of us whether you're right in saying in order for the board to reach its decision, it had to find a reason... to modify Rosenberg. Am I just misremembering?

[00:01:37] Speaker 02:
I think that that was Meta's sort of careful articulation of a certain standard. I don't think that, I think that there's no dispute that Rosenberg has to be combined with Firefly to arrive at at least one limitation. Meta, in its brief, argues that it's a non-technical limitation that's not being satisfied by Firefly, but there is actually no dispute that the petition only argued an obviousness combination of Rosenberg with Firefly.

[00:02:09] Speaker 02:
There's no theory in the petition that Rosenberg itself... discloses all the limitations. And I don't understand meta to argue that in appeal that Rosenberg itself discloses all limitations. They just said that if you look at the non-technical requirements of the claims, Rosenberg itself discloses everything. That's my understanding of their argument.

[00:02:31] Speaker 04:
I thought your argument was that in the petition, the proposed combination was a two-computer argument. combination and that it wouldn't have been realistic to use Rosenberg in a two-computer setting.

[00:02:49] Speaker 04:
Is that a fair statement of what your argument is?

[00:02:51] Speaker 02:
Not quite, Your Honor. The issue is that they have to provide a combination of Rosenberg with Firefly that arrives at all limitations, and that would have been obvious. They haven't shown that a combination of Rosenberg or Firefly that applied to only two computers would have been obvious, and that's the only thing that they described.

[00:03:09] Speaker 04:
Why are we talking about two computer combinations? The claims certainly allow multiple computers.

[00:03:18] Speaker 04:
Right? There's no question about that. And Rosenberg itself... contemplates multiple computers.

[00:03:26] Speaker 02:
We would be happy to address a combination of Rosenberg with Firefly that address multiple computers if Meta could explain how that would operate.

[00:03:34] Speaker 04:
But answer my question. It is true that the claims allow multiple computers, right?

[00:03:40] Speaker 02:
Yes, Your Honor.

[00:03:41] Speaker 04:
And it is also true that Rosenberg contemplates multiple computers. In fact, that's part of your argument is that that's what it does, right?

[00:03:49] Speaker 02:
Yes, Your Honor.

[00:03:50] Speaker 04:
So what's the problem?

[00:03:52] Speaker 02:
So the problem is that Rosenberg...

[00:03:55] Speaker 02:
They're relying on specific teachings of Rosenberg that relate only to two computers in their explanation of how the system would operate. There's no dispute that many of... In the petition, you mean?

[00:04:06] Speaker 04:
In the petition?

[00:04:10] Speaker 02:
Yes, in the petition and in their theory overall. There's no dispute that many of the teachings of Rosenberg do not read on the claims. Many of the ways to implement Rosenberg, including the ways that would have been required to arrive at multiple servers, do not read on the claims.

[00:04:32] Speaker 02:
For example, Meta acknowledges in the blue brief, page 19, this is explained in our blue brief at page 19, footnote 3, that...

[00:04:44] Speaker 02:
certain implementations of Rosenberg do not meet the claim requirement that the redirection be automatic. So it's not enough to just say that Rosenberg teaches everything. You have to look at what specific embodiment and what specific way that you're implementing Rosenberg to know whether or not it discloses everything. Another example of this is in footnote eight of Pat Nona's response. This is at appendix 338.

[00:05:12] Speaker 02:
The petition at Appendix 141 relies on the frames being visible in order to establish a certain timing requirement of the claims. So it's part of the petition's theory of obviousness that the frames have to be visible. However, there's no dispute that Rosenberg contemplates other ways of implementing things as you would scale up the servers. When Meta's expert was questioned as to whether it would be obvious for CNN, a website like CNN, to show frames for 10 different servers on its homepage, Meta's expert said, well, you would just make the frames invisible.

[00:05:52] Speaker 02:
But that wouldn't satisfy the claim requirements. So it really matters how exactly you're implementing Rosenberg as you scale it up to multiple servers. It's not enough just to say, Rosenberg for two servers satisfies the claims, and it doesn't satisfy the claims, but for Metis to say that Rosenberg for two servers satisfies certain technical details, and therefore if you scaled it up to multiple servers, those multiple server embodiments would also include those technical details, We don't know that unless we know what the implementation would look like as you scaled it up to multiple servers.

[00:06:29] Speaker 02:
Rosenberg only explicitly discloses how you do the implementation for two servers. The rest of it is all obviousness. The rest of it is all a person of ordinary skill in the art has to figure out what would be a reasonable way to scale this up. Rosenberg doesn't explicitly teach you how to do that.

[00:06:51] Speaker 02:
has many different options that a person could consider in terms of how things would work, but it doesn't say how you would send these identifiers to multiple different servers, and Meta's petition didn't explain that either, so there was nothing that we could address in terms of explaining what was deficient, other than just to say we don't know what their combination is.

[00:07:21] Speaker 02:
There is a dispute that Rosenberg... Rosenberg itself does not disclose all the limitations.

[00:07:32] Speaker 02:
Rosenberg with Firefly is alleged to disclose all the limitations, but they need to show a motivation to combine Rosenberg with Firefly. And again, the board's final written decision did not address motivation to combine Rosenberg with Firefly at all.

[00:07:48] Speaker 02:
The...

[00:07:49] Speaker 02:
So on appeal, to us, it's still not entirely clear what exactly Meta believes its combination with Rosenberg and Firefly would look like, but at a high level, there's two possibilities. There's a two-server combination.

[00:08:03] Speaker 02:
This is articulated in the petition at Appendix 140, where there's a mock-up of website A opening up another frame on website B. But this only explains how to do the...

[00:08:19] Speaker 02:
the implementation of Rosenberg, where there is exactly two servers.

[00:08:24] Speaker 02:
But again, the board never found any motivation to combine Rosenberg with Firefly at all, but certainly no motivation to combine Rosenberg with Firefly in a two-server combination. And in fact, Mehta's expert acknowledged that a two-server combination of the two references was not obvious, specifically when he was asked how many servers were in his proposed combination.

[00:08:50] Speaker 02:
He began his answer by noting that, quote, Firefly had a variable number of servers, unquote. And then he went on to say, quote, and indeed it would be rather foolish to build a system like Rosenberg just to synchronize two servers, unquote. And this is appendix 1425 through 1426. So if you look at the evidence, there really is no motivation to combine Rosenberg with Firefly whatsoever. for a two-server combination at all, and the board certainly didn't make any finding in that regard.

[00:09:24] Speaker 02:
Now, the other possibility for meta is that the combination involves more than two servers. But again, they need to explain what this combination would look like and how it would operate, because again, not all aspects of Rosenberg read on the claims. They need to show that there is some combination that is motivated and obvious and reads on the claim limitations that satisfies what they need to show. And they haven't articulated this.

[00:09:56] Speaker 02:
Mehta's expert acknowledged that he didn't explain what his combination quote would look like for synchronization of unique identifiers between more than two servers, unquote. And this is Appendix 1439.

[00:10:12] Speaker 02:
And, of course, if Rosenberg actually did disclose a technique for a specific design for sending identifiers in the system having more than two servers, Meta's expert could have just pointed us to that disclosure in Rosenberg. Rosenberg doesn't disclose that. And that's really the problem here. Meta and the board seem to treat Rosenberg as some sort of anticipatory reference.

[00:10:38] Speaker 02:
Meta's red brief at 30 says that the board effectively treated Rosenberg as anticipatory for its technical teachings.

[00:10:49] Speaker 02:
They're not allowed to do that because this is a motivation to combine case, and Rosenberg, even if you just look at the technical teachings, does not disclose how to do these multiple server combinations like the only thing that could possibly even be motivated. it doesn't disclose the technical details of how you would design these multiple server combinations beyond merely just saying that there are certain things that you would have to consider and you would have to use your ordinary creativity as a person of skill in the art to figure out how to implement this stuff.

[00:11:21] Speaker 02:
So even within the context of Rosenberg, we're really dealing with obviousness because a person of ordinary skill in the art would have to use their skills their skill and creativity to figure out how to implement these things. And I'll just conclude by saying that the fact that Meta never explained how its multiple server combination would operate is really evidenced by this track and field analogy that they raised for the first time at the oral argument before the patent office.

[00:11:51] Speaker 02:
So that was never raised in any briefing. There's no evidence at all, no expert evidence supporting that, no evidence in Rosenberg supporting that there is sort of a relay race of batons or identifiers being handed over from server to server. And I think this just exemplifies how little evidence there is to support Meta's theory of this case. So unless your honors have further questions, I'll reserve the rest of my time for rebuttal.

[00:12:17] Speaker 03:
We will save it for you, Mr. Moore.

[00:12:24] Speaker 01:
I think you may please the Court. The Board's decision below is supported by substantial evidence and should not be overturned here.

[00:12:34] Speaker 01:
The combination of Zeph and Rosenberg, so with Rosenberg with Zephyr and Stern. So Rosenberg, that was relied upon for all of the claim limitations other than the unaffiliated third-party limitation. That was just to – Zephyr and Stern was included to just put a finer point on the fact that you could have web servers that are associated with unaffiliated third parties.

[00:12:58] Speaker 01:
That is – I'm sorry.

[00:13:00] Speaker 00:
I didn't understand your lessons. That was included for some – That was included by the patentee in the claim?

[00:13:06] Speaker 01:
No, sorry, in the obviousness combination.

[00:13:11] Speaker 01:
We used Zeph and Stern, the Firefly references.

[00:13:15] Speaker 01:
There was a limitation in Claim 11 about unaffiliated third parties, that these servers are associated with unaffiliated third parties. Zeph and Stern was only for that specific teaching. Rosenberg was relied upon for the remainder of the claim.

[00:13:32] Speaker 03:
Why don't you address motivation to combine? That seems to be opposing counsel's main point.

[00:13:40] Speaker 01:
So there's ample evidence in the record about motivation to combine at JX 147 to 150 and at JX 160 to 161. Do you have page citations for where the board made findings on that?

[00:13:56] Speaker 01:
So the board addressed the motivation to combine at Appendix 37 in the final written decision.

[00:14:16] Speaker 01:
Where the... The board states the patent owner's argument that petitioner's reasoning in support of the challenge only applies to two servers is undermined by Dr. Sherwood's testimony that a person of ordinary skill would seek to create a system that could have been scaled to an arbitrary number of servers because Rosenberg, Zeff, and Stern all teach the desirability of such scaling.

[00:14:41] Speaker 04:
With respect to the – Was Almanet's argument that there was no motivation to combine simply because there was no motivation to combine for a two-server combination, was that the only argument that they made?

[00:14:53] Speaker 01:
That was the focus that they made down below – of their argument down below, yes. That's correct, Your Honor.

[00:15:01] Speaker 01:
With respect to the discussion of frames, that was addressed below by the board extensively. There's substantial evidence to support the finding of the frames not being any type of issue in this combination. That was addressed by the board at JX38-39, where the board made extensive findings that These are just trade-offs in an obviousness combination.

[00:15:40] Speaker 01:
Are there any other questions, guys, I can answer here? Not yet. Not yet? Okay.

[00:15:49] Speaker 03:
The time is yours.

[00:15:50] Speaker 01:
Okay. Well, if there aren't any other questions, I'm happy to save my time.

[00:15:57] Speaker 03:
All right.

[00:16:03] Speaker 03:
Not a lot to respond to, but it's your time.

[00:16:06] Speaker 02:
Thank you, Your Honor, and it may please the court. So I want to address Appendix 37 in the final written decision.

[00:16:14] Speaker 02:
That does not address a motivation to combine Rosenberg with Firefly.

[00:16:22] Speaker 02:
They're just... What... As Meta acknowledges, again, in its red brief at 30, the board effectively treated Rosenberg as anticipatory in terms of his technical teaching.

[00:16:33] Speaker 00:
I'm sorry. The sentence that was quoted, Dr. Sherwood, he was your expert or she? Yes. Okay. The board says – that Dr. Sherwood's testimony that a, quote, Posita would seek to create a system that could have been scaled to an arbitrary number of servers because Rosenberg, Zeffenstern, Zeffenstern is Firefly, right? Correct. So Rosenberg and Firefly all teach the desirability of such scaling.

[00:17:05] Speaker 00:
So that says something about a motivation to combine? There are two scaling kinds of pieces of prior art. Why is that insufficient in your view?

[00:17:18] Speaker 02:
So, Your Honor, I encourage you to read the context surrounding that citation to the expert testimony, but what that expert testimony was talking about is that assuming that there would be some combination of these two systems, that was not ever considered that there would be some combination of these two systems, but assuming that there would be some combination of these two systems, Aposito would have only done this in a system that would scale to multiple servers. There was no statement that, yes, these would have been two systems that would be obvious to combine.

[00:17:54] Speaker 02:
They just said that if you were to combine these systems, you would have wanted to scale them to multiple servers, such that a two-server combination would not have been obvious. But yet, the petition only ever explained how its combination would have worked for a two-server combination.

[00:18:12] Speaker 04:
Was that your sole motivation to combine arguments?

[00:18:18] Speaker 02:
Our motivation to combine argument is that it's not limited to that. It is that we need to know... Not now, at the time. No, it never was limited to that, because we said... Where do we find a broader argument? We said that the petition never explained how its combination would operate with respect to more than... Show me where you said it made a broader argument.

[00:18:42] Speaker 02:
In our patent on a response at...

[00:18:57] Speaker 02:
starting at page 14. 258 of the appendix? Yes, yes, thank you. So we said the petition only explains how its proposed combination would apply to exactly two participating servers in Rosenberg.

[00:19:10] Speaker 04:
Okay, but that's the two-server argument. What I was doing was to go beyond that.

[00:19:15] Speaker 02:
So... As part of this argument, Your Honor, we need to know how the proposed combination would apply to more than two servers before we can even begin to address motivation to combine. If we don't know what the combination looks like, we don't know whether that combination would have been obvious.

[00:19:31] Speaker 04:
And that's reflected in... I don't see you making anything more than the two-server argument.

[00:19:38] Speaker 04:
And that's what the board responded to. So I don't see a problem with what the board did.

[00:19:45] Speaker 02:
What we're saying is that the two-server combination would have been obvious, and beyond that, they have to show how their combination would actually work, which they failed to do. We don't know whether their multi-server combination works. We don't know if it reads on the challenge plan because they haven't explained how it works. We don't know if it would have been obvious because we don't know how it works. So whether there's a motivation or not to do the multi-server combination, we need to see what that combination looks like so we can evaluate that.

[00:20:18] Speaker 02:
But they've never explained how it works, and that's the fundamental problem here, is that unless they explain how their system works, we can't even... We've explained how there are certain aspects of the limitations that...

[00:20:33] Speaker 02:
are not satisfied by various teachings of Rosenberg and different ways to implement Rosenberg. So you can't just say you scale Rosenberg up to more servers and then you arrive at the challenge claims. You actually need to explain how that operates. So yes, we do have the two-server argument in the sense that they haven't motivated a combination of two servers.

[00:20:56] Speaker 02:
which I think is abundantly clear from their expert's admission that it would be foolish to do a two-server combination. But it's the multiple-server combination we've argued that we don't know what it would look like. Thank you, Your Honor.

[00:21:11] Speaker 03:
Thank you, Your Honor.