[00:00:00] Speaker 01:
Our second case this morning is number 24-1703, Consumeron LLF-3 versus Maple Bear AMIA.

[00:00:08] Speaker 01:
OK, Mr. Lerman.

[00:00:08] Speaker 00:
Good morning, and may it please the court, Dan Lerman for Consumeron.

[00:00:14] Speaker 00:
The court invention here is a personal shopping agent, and the board's decision misread the patents in several key respects.

[00:00:22] Speaker 00:
First, the board erred in construing the acquisition request limitations.

[00:00:27] Speaker 00:
The only question on appeal is whether those terms encompass a request for an agent to simply pick up pre-purchased and pre-packaged goods.

[00:00:36] Speaker 00:
That's because the only reference here is park.

[00:00:38] Speaker 00:
That's the only reference asserted in the petitions and the only reference relied on by the board.

[00:00:43] Speaker 00:
Park is just a pick up and delivery service.

[00:00:45] Speaker 00:
A guy goes on his scooter and he picks up goods that were ordered in advance and assembled and delivers them to the customer.

[00:00:52] Speaker 00:
Here, the claim language and specification all show that acquisition request does not include a request to just pick up goods.

[00:00:59] Speaker 00:
To begin with, the whole point of the invention is to allow the customer to see the goods and inspect them in real time.

[00:01:06] Speaker 00:
So the agent provides real-time images of the goods during the purchase process so the customer can inspect them remotely before their purchase.

[00:01:15] Speaker 00:
In part, the agent just simply picks up a pre-assembled bag of pre-purchased items.

[00:01:19] Speaker 00:
There is no remote inspection and there is no customer confirmation followed by purchase.

[00:01:24] Speaker 00:
So part is the very problem the patent expressly sought to solve.

[00:01:29] Speaker 00:
Two of the patent's flame language expressly require the agent to purchase goods and not just pick them up.

[00:01:35] Speaker 00:
The 191 patent expressly recites a quote purchasing and delivery agent.

[00:01:39] Speaker 00:
and it says that the agent will, quote, immediately purchase the goods in connection with the acquisition request.

[00:01:45] Speaker 00:
The 835 patent also refers to the customer approval of the agent's purchase of the goods.

[00:01:51] Speaker 03:
Counsel, if we disagree with your construction of acquisition request, then would you agree that Park discloses the relevant limitation?

[00:02:00] Speaker 00:
If you adopt the board's construction instead of ours, then I agree that PARC would disclose that.

[00:02:06] Speaker 00:
Because there's no real dispute over the scope of PARC.

[00:02:10] Speaker 00:
The only dispute was over a claim construction issue.

[00:02:12] Speaker 00:
And in particular, whether the claims here encompass the mere pickup and pre-purchase of goods.

[00:02:18] Speaker 00:
Our view is that they don't.

[00:02:20] Speaker 00:
As noted, two of the patents expressly require purchase by the agent.

[00:02:25] Speaker 04:
Can we say that patents expressly require purchase by the agent?

[00:02:30] Speaker 04:
Do you mean in the specification or the claims?

[00:02:34] Speaker 04:
Because I mean, that's the very issue, right?

[00:02:36] Speaker 04:
That question is, what is the meaning of acquisition requests?

[00:02:39] Speaker 04:
So for you to say it expressly requires it, it seems to be that you're just giving the answer to the claim construction question without saying why.

[00:02:48] Speaker 00:
The answer is both the claims and the specifications.

[00:02:51] Speaker 00:
So with respect to the claims, the 191 patent says, quote, the agent will immediately purchase the goods in connection with the acquisition request.

[00:03:00] Speaker 00:
The 835 patent also refers to the purchase.

[00:03:02] Speaker 00:
That's the specification.

[00:03:03] Speaker 00:
No, no.

[00:03:03] Speaker 00:
Those are the claims.

[00:03:04] Speaker 00:
That's the claim language, Your Honor.

[00:03:05] Speaker 04:
Okay, so it says receiving through the at least one remote server a first acquisition request.

[00:03:12] Speaker 04:
And I understand you to be arguing that an acquisition request means that it's a purchase.

[00:03:18] Speaker 04:
It's a purchase request.

[00:03:19] Speaker 04:
It's a request to purchase, right?

[00:03:21] Speaker 00:
Well, our position is that an acquisition request is a request for this process.

[00:03:25] Speaker 00:
Where the agent goes, shops for the goods, you have the real-time inspection, approval, followed by a purchase or other transaction after the customer approval.

[00:03:35] Speaker 00:
Now, the 191 patent expressly says the agent will quote, immediately purchase.

[00:03:40] Speaker 00:
the one or more goods in connection with completing the acquisition request.

[00:03:46] Speaker 00:
But even aside from the claim language, which we believe is important here, the specifications also show the same thing.

[00:03:52] Speaker 00:
Figure three shows that the agent arrives at a shopping location and then purchases a product after the customer approves the purchase.

[00:03:59] Speaker 00:
The spec expressly distinguishes between acquisition services and near pickup and delivery services.

[00:04:05] Speaker 00:
And it says when you have acquisition services, the invoice is for

[00:04:08] Speaker 00:
quote, shopping services rendered.

[00:04:11] Speaker 00:
The petitions themselves all say, the INSECRET petitions all refer to the location where, quote, the agent is to purchase a product.

[00:04:18] Speaker 00:
And that's at A5298.

[00:04:20] Speaker 00:
And the spec is replete with references to the customer being able to request, quote, further shopping by the agent.

[00:04:28] Speaker 00:
It refers to a shopping request.

[00:04:30] Speaker 00:
It refers to the agent completing the transaction.

[00:04:33] Speaker 03:
But Counsel, what about the portions of the specification?

[00:04:36] Speaker 03:
that talk about purchase or otherwise acquire a product.

[00:04:41] Speaker 00:
That's right.

[00:04:42] Speaker 00:
So that is the principal argument, I think, by the board below, at least with respect to the intrinsic evidence.

[00:04:48] Speaker 01:
Yeah, but what's wrong with it?

[00:04:49] Speaker 00:
What's wrong with it is that otherwise means similar to.

[00:04:51] Speaker 00:
That's what the Supreme Court's done in Fisher, and that's what this patent makes clear.

[00:04:55] Speaker 03:
But otherwise doesn't mean the same.

[00:04:56] Speaker 00:
It doesn't mean the same.

[00:04:57] Speaker 00:
You're right, Your Honor.

[00:04:58] Speaker 00:
Our position is that the agent is completing the transaction.

[00:05:02] Speaker 00:
And that's what the patent says.

[00:05:05] Speaker 00:
It says the agent completes the transaction.

[00:05:07] Speaker 00:
The purchase is the canonical transaction.

[00:05:09] Speaker 00:
It is not the only one.

[00:05:10] Speaker 00:
For example, the patent expressly contemplates the customer having a pre-approved credit limit with the agent.

[00:05:17] Speaker 00:
It could also refer to a store account or some other sort of credit.

[00:05:21] Speaker 00:
In those cases, it is possible that someone could argue that the agent is not purchasing the item because he's using the pre-authorized credit limit, or he's using a coupon code, or he's using a two-for-one offer.

[00:05:32] Speaker 00:
Otherwise, acquire is meant just to encompass these other types of transactions, but we know this because the patents use the word purchase.

[00:05:40] Speaker 00:
The specification refers repeatedly to the shopping request, and that's really the key here.

[00:05:43] Speaker 00:
The invention here is that the agent allows the customer to.

[00:05:48] Speaker 03:
So why does otherwise require?

[00:05:51] Speaker 03:
require a transaction.

[00:05:53] Speaker 03:
I feel like that's what you just indicated to me.

[00:05:55] Speaker 00:
Well, because the specification refers to the agent completing the transaction.

[00:05:59] Speaker 00:
You can see this on page 264.

[00:06:03] Speaker 00:
And it says that the agent can complete the transaction.

[00:06:06] Speaker 00:
There is a provision in which the agent can just do pickup and delivery services.

[00:06:11] Speaker 00:
That's the pre-purchase embodiment, right?

[00:06:13] Speaker 00:
But we know that the pickup

[00:06:15] Speaker 04:
drug services are different because the specification says that they're different and the specification says that this is the concern is that it's a little bit difficult to determine you know people disclose different embodiments in their specification and then their claims can be broader

[00:06:34] Speaker 04:
They could encompass all embodiments.

[00:06:37] Speaker 04:
The problem you have here is that the claims are pretty broad.

[00:06:40] Speaker 04:
They're broader than just one embodiment, and they could be reasonably interpreted to include both those embodiments.

[00:06:47] Speaker 04:
And so that's our question is, why was that interpretation not reasonable when the broad language of the claim is acquisition request and the specification says language like purchase or otherwise acquire?

[00:07:02] Speaker 00:
Well, for three reasons.

[00:07:03] Speaker 00:
Two of the patents expressly say that the agent completes the purchase in connection with the acquisition request.

[00:07:09] Speaker 00:
The board did not address the fact that the 835 and the 19, at least with respect to the 835, the board did not address that in connection with its interpretation of acquisition request.

[00:07:19] Speaker 04:
We're talking about the claims now.

[00:07:21] Speaker 00:
Yeah, I'm talking about the claims.

[00:07:22] Speaker 00:
So that's two of the four patents expressly referred to purchasing.

[00:07:25] Speaker 00:
The key here is some of the claims then.

[00:07:28] Speaker 00:
Excuse me?

[00:07:28] Speaker 00:
Some of the claims then.

[00:07:30] Speaker 00:
Two of them.

[00:07:30] Speaker 01:
I'm not following how it is that some claims referring to purchase means that all claims have to mean purchase.

[00:07:40] Speaker 00:
It certainly does in those claims, Your Honor.

[00:07:42] Speaker 01:
That's a different argument.

[00:07:44] Speaker 01:
That's not an argument about the meaning of acquisition.

[00:07:47] Speaker 00:
No, sorry.

[00:07:50] Speaker 00:
It says the purchase is made in connection with the acquisition request.

[00:07:54] Speaker 00:
To me, that makes crystal clear that that is the fulfillment of the acquisition request.

[00:07:58] Speaker 00:
As to your honor's question about the embodiment, you are correct that sometimes you can include embodiments, sometimes you can't.

[00:08:03] Speaker 00:
But the spec tells us that this is an alternative embodiment.

[00:08:07] Speaker 00:
It expressly says it's an alternative embodiment, and it says you're charged only for pickup services in that context, and you're not charged for the shopping services.

[00:08:16] Speaker 00:
So the spec makes abundantly clear that the court invention here is for a personal agent that shots for and delivers.

[00:08:23] Speaker 03:
They concede in their petitions that the agent makes the purchase.

[00:08:33] Speaker 00:
Well, again, one answers the claim.

[00:08:35] Speaker 00:
Two of the claims require purchase.

[00:08:36] Speaker 00:
The second is the acquire.

[00:08:39] Speaker 00:
You have to read.

[00:08:40] Speaker 00:
This is, this is Phil's.

[00:08:41] Speaker 00:
You have to read the claims in the context of the entire patent, including the figures.

[00:08:45] Speaker 00:
Figure three refers to purchase product.

[00:08:48] Speaker 00:
Figure three makes clear that that 121 step is performed by the agent.

[00:08:52] Speaker 00:
Figure three refers to a shopping location.

[00:08:54] Speaker 00:
Figure three says print out the invoice.

[00:08:57] Speaker 00:
And that invoice is only for shopping services rendered.

[00:09:00] Speaker 00:
There is no delta here.

[00:09:02] Speaker 00:
The only question, just to go back to it, the only question is whether the acquisition request in this patent includes mere pickup of pre-purchased and pre-assembled items by an agent on a moped like in park.

[00:09:16] Speaker 00:
That is the only question in dispute with respect to the claim construction.

[00:09:20] Speaker 00:
And the patent expressly distinguishes that system.

[00:09:22] Speaker 00:
That is the prior art internet shopping experience that the specification identifies as the problem and improves upon.

[00:09:31] Speaker 00:
If I could turn then to the purchasing requirements, because that isn't two of the patents, Your Honor.

[00:09:35] Speaker 00:
And two of the patents expressly require purchasing.

[00:09:38] Speaker 00:
Instacurt's principal argument below was that the customer approved his own purchase, or that those are just non-limiting statements.

[00:09:45] Speaker 00:
And that's their argument on authority.

[00:09:47] Speaker 00:
There was no argument.

[00:09:49] Speaker 01:
The board said it would have been obvious to modify Kim to do that, right?

[00:09:53] Speaker 00:
Correct, Your Honor.

[00:09:54] Speaker 00:
The board said it would be obvious to combine Park and Kim.

[00:09:59] Speaker 00:
The board expressly said that Kim teaches this.

[00:10:02] Speaker 00:
It says the combination of Park's teachings and Kim's teachings disclosed the agent making the purchase after approval.

[00:10:10] Speaker 00:
That was not the argument.

[00:10:11] Speaker 00:
And that is not a modification.

[00:10:12] Speaker 00:
Those are two different inquiries, Your Honor.

[00:10:14] Speaker 00:
The board did not say a person of skill in the art would have been motivated to alter Kim.

[00:10:19] Speaker 04:
The board expressed.

[00:10:21] Speaker 04:
Is Kim the primary reference?

[00:10:23] Speaker 00:
Yes.

[00:10:23] Speaker 00:
I mean, they did rely on PARC as modified by Kim.

[00:10:26] Speaker 00:
They were relying on PARC for the delivery agent.

[00:10:28] Speaker 00:
Kim is the reference that's relied on for the purchase aspect of this.

[00:10:32] Speaker 04:
Right.

[00:10:32] Speaker 04:
So it's modifying PARC in view of Kim.

[00:10:34] Speaker 00:
Yeah.

[00:10:34] Speaker 00:
It is modifying PARC in view of Kim.

[00:10:36] Speaker 00:
But the board expressly stated that Kim discloses this.

[00:10:40] Speaker 00:
It used the word Kim teaches this.

[00:10:41] Speaker 00:
their expert testified, expressly testified, that it's the customer who pays.

[00:10:47] Speaker 04:
And this is on page 9316.

[00:10:56] Speaker 04:
On that point, one of the arguments you're making is that the board, you know, there isn't substantial evidence to support the board's reading of Kemp, right?

[00:11:08] Speaker 00:
One argument you're saying is the board ignored contradictory evidence.

[00:11:11] Speaker 00:
So the board ignored their expert's own testimony that said the custom records.

[00:11:15] Speaker 00:
That is one argument.

[00:11:16] Speaker 04:
That's part of the substantial evidence inquiry.

[00:11:18] Speaker 00:
It is, except it's also a state farm inquiry.

[00:11:21] Speaker 00:
It's also, as Your Honor suggests, unsupported by substantial evidence if you ignore contradictory evidence.

[00:11:26] Speaker 00:
So that is a substantial evidence question.

[00:11:28] Speaker 00:
But it is a question about the board ignoring the key claim language.

[00:11:34] Speaker 00:
Also, the other side does not contend that Kim, in fact, teaches this.

[00:11:39] Speaker 00:
They do not defend that on appeal.

[00:11:40] Speaker 00:
They say that's not what the board held.

[00:11:42] Speaker 00:
So they're not saying that King, in fact, teaches or discloses this.

[00:11:47] Speaker 00:
That was not the argument below.

[00:11:48] Speaker 00:
Their argument here is that it would somehow have been obvious perhaps to modify.

[00:11:52] Speaker 00:
But again, that is not what the board held.

[00:11:55] Speaker 00:
So this court cannot affirm on a factual determination that was not made by the board.

[00:12:00] Speaker 00:
There was no dispute below that King doesn't.

[00:12:03] Speaker 01:
Where's what the board said about this webpage?

[00:12:10] Speaker 00:
If you look at page 59 of the appendix, it says in the footnote, we find that the combination of Perth and Kim teaches an agent sending the image.

[00:12:22] Speaker 00:
If you look at page 19, it refers to Park modifying, sorry, modifying Park with Kim's teaching so that the agent purchases the goods after the purchase.

[00:12:31] Speaker 00:
The only question here was the combination of Park's delivery agent with Kim's approval.

[00:12:37] Speaker 00:
And we know that Kim has an approval because it says it has an approval.

[00:12:40] Speaker 03:
Would you refer to page 19 in appendix page 58?

[00:12:44] Speaker 00:
Yeah.

[00:12:45] Speaker 00:
Sorry.

[00:12:45] Speaker 00:
Yeah, 19 on the decision appendix 58 as an exemplar.

[00:12:48] Speaker 01:
They're at the top of page.

[00:12:50] Speaker 01:
59, A-59, the board is saying the combination teaches or suggests the page you're purchasing, right?

[00:12:58] Speaker 01:
That is correct, but it is more suggest.

[00:13:00] Speaker 00:
So two points.

[00:13:01] Speaker 00:
One is, if you read the footnote, it says, because we find the combination teaches.

[00:13:04] Speaker 00:
So it is saying what it meant there.

[00:13:06] Speaker 00:
But in any event, suggestion isn't for it.

[00:13:09] Speaker 04:
Isn't that referring back to their findings earlier in the opinion?

[00:13:14] Speaker 04:
For example, page A-19 is Judge Cunningham.

[00:13:18] Speaker 04:
Directed you earlier.

[00:13:19] Speaker 01:
I think it's referring to the whole thing, but that's beside let me just say if I can answer just next question Suggest doesn't mean modify Kim suggest just means a purpose only art would you say the 19 on 58 it says this evidence further sports would have been obvious to modify part with Kim's teaching such that the region purchases the goods and

[00:13:40] Speaker 00:
Well, it doesn't say that.

[00:13:42] Speaker 00:
It says so that the customer could confirm the purchase.

[00:13:44] Speaker 00:
But it still says, Modify Park with Kim.

[00:13:47] Speaker 00:
It doesn't say Modify Kim.

[00:13:48] Speaker 00:
The board understood Kim.

[00:13:50] Speaker 01:
It's talking about the combination.

[00:13:52] Speaker 00:
What?

[00:13:52] Speaker 00:
It is a combination.

[00:13:53] Speaker 00:
It's talking about the combination.

[00:13:54] Speaker 00:
That's correct.

[00:13:55] Speaker 00:
But what it didn't say is that there's a modification using ordinary creativity.

[00:14:00] Speaker 00:
This court has made clear that when you're relying on modifying a reference, as opposed to modifying one of the things.

[00:14:05] Speaker 04:
I'm sorry.

[00:14:06] Speaker 04:
You've got to stop for a second.

[00:14:07] Speaker 04:
What about at the top of page A20?

[00:14:09] Speaker 04:
That's the first sentence.

[00:14:12] Speaker 04:
That's not relying on a modification.

[00:14:16] Speaker 04:
It's relying on how they read him in the figuring.

[00:14:21] Speaker 00:
Right.

[00:14:23] Speaker 00:
It is reading Kim to disclose an agent purchasing.

[00:14:26] Speaker 00:
That is correct.

[00:14:27] Speaker 00:
That is our position about the Brunel.

[00:14:28] Speaker 01:
What you're going to have to say is at least suggest.

[00:14:30] Speaker 00:
Yeah.

[00:14:30] Speaker 00:
That's right, Your Honor.

[00:14:31] Speaker 00:
But suggest just means a person of ordinary skill in the art would read this to disclose and teach that.

[00:14:37] Speaker 01:
But in any event, we again know that Kim doesn't have.

[00:14:40] Speaker 01:
This is not rocket science.

[00:14:42] Speaker 01:
Purchasing agents were well known, right?

[00:14:44] Speaker 00:
No, we, this is, this is an invention.

[00:14:48] Speaker 00:
The key, it's not rocket science, it's a personal delivery agent.

[00:14:51] Speaker 01:
But purchase them needed for a while now, right?

[00:14:53] Speaker 00:
No, no, no.

[00:14:53] Speaker 00:
This is a distinction from the prior art, Your Honor.

[00:14:56] Speaker 00:
The difference is this interactive approval mechanism, where the shopper is inspecting it in real time, Your Honor, and is able to say, I do like this, I don't like this.

[00:15:05] Speaker 00:
Go to a different location and find me a more suitable product.

[00:15:08] Speaker 00:
That is not in the prior art.

[00:15:09] Speaker 00:
That is not in park, because park is just a pick-up.

[00:15:12] Speaker 00:
And it's not in Kim.

[00:15:13] Speaker 00:
Kim has no suggestion of a purchase at all.

[00:15:16] Speaker 00:
And it doesn't suggest that each of you were.

[00:15:18] Speaker 01:
Oh, I'm sorry, Your Honor.

[00:15:18] Speaker 01:
OK, we'll give you two minutes.

[00:15:20] Speaker 01:
Thank you.

[00:15:25] Speaker 01:
Ms.

[00:15:25] Speaker 01:
O'Hara?

[00:15:41] Speaker 01:
Go ahead.

[00:15:42] Speaker 02:
Good morning, and may it please the court.

[00:15:44] Speaker 02:
Angela Oliver on behalf of Instacart.

[00:15:47] Speaker 02:
I'll address two issues, unless the court prefers otherwise, the claim construction issue that we heard this morning, and the purchase language in the other two patents.

[00:15:55] Speaker 04:
I think one thing to really focus on, would you mind starting with this point about Kim?

[00:16:00] Speaker 04:
Sure.

[00:16:01] Speaker 04:
And specifically, what the board's finding was with respect to whether Kim teaches

[00:16:10] Speaker 04:
acquiring or purchasing the product by an agent after the customer inspects the image, that finding that's page A20, and whether that's supported by substantial evidence or not.

[00:16:22] Speaker 02:
Yes, of course.

[00:16:23] Speaker 02:
I can start there.

[00:16:24] Speaker 02:
And yes, it is supported by substantial evidence.

[00:16:26] Speaker 02:
So I think at A20, as Your Honor pointed out, also at A58, just right before that, the sentence before this, the board makes clear that this is an obviousness analysis.

[00:16:37] Speaker 02:
specifically says it would have been obvious to modify ParkwithKim's teachings such that the agent purchases the goods.

[00:16:43] Speaker 04:
So what is the substantial evidence, and how would you address what I heard to be the argument that this was not a theory that you suggested?

[00:16:52] Speaker 02:
Sure.

[00:16:53] Speaker 02:
So let me first start with the second question.

[00:16:57] Speaker 02:
And I think in this case, it

[00:16:59] Speaker 02:
There are two parts to this answer.

[00:17:00] Speaker 02:
There are two patents.

[00:17:01] Speaker 02:
In the 191, this was very clearly raised in the petition.

[00:17:04] Speaker 02:
And we can see that.

[00:17:05] Speaker 02:
That is at appendix 16489.

[00:17:07] Speaker 02:
If it's helpful, we can turn there.

[00:17:10] Speaker 02:
It might be helpful.

[00:17:12] Speaker 02:
Let me just pull that up.

[00:17:14] Speaker 02:
It's 16489.

[00:17:16] Speaker 02:
This is the volume three.

[00:17:25] Speaker 02:
So this is the 191 petition.

[00:17:39] Speaker 02:
And in the first full sentence on the top of that page, the petition says, the customer places an order of a product to a delivery service provider rather than placing the order with the seller in Kim.

[00:17:51] Speaker 02:
So it would have been obvious that the delivery service provider makes the purchase and does not do so until the customer confirms the image.

[00:17:58] Speaker 02:
And we cite paragraph 123 of Dr. Hu's declaration.

[00:18:02] Speaker 02:
And if you'll turn with me to the board's decision in the 191, this is at appendix 173.

[00:18:10] Speaker 02:
This is the exact paragraph of testimony that the board cites in that decision.

[00:18:20] Speaker 02:
Again, appendix 173.

[00:18:24] Speaker 02:
And the board here says, we credit Dr. Hu's testimony.

[00:18:26] Speaker 02:
And then they cite 123.

[00:18:28] Speaker 02:
And they quote this paragraph of testimony, which says, smack in the middle of it, it would have been obvious that the delivery service provider makes the purchase and does not do so until the customer confirms the image.

[00:18:40] Speaker 02:
Otherwise, the efficiencies gained by replying customer confirmation would be negated.

[00:18:43] Speaker 02:
You'd have to purchase and then return the goods.

[00:18:46] Speaker 02:
So there's some reasoning explaining why it would make sense to save the purchase.

[00:18:49] Speaker 02:
for later for the agent to do that.

[00:18:51] Speaker 02:
So that was squarely raised in the petition in the 191, and that's fully supported by substantial evidence.

[00:18:56] Speaker 02:
In the 835 case, this argument was raised in the reply, because the language there is a little different.

[00:19:03] Speaker 02:
As we've argued elsewhere in our brief, the 835 should be read to just include the customer approving their own purchase.

[00:19:10] Speaker 02:
And so when in the patent owner response in the 835, it was argued by consumer on that actually required the agent to make a purchase.

[00:19:18] Speaker 02:
Then we directly responded to that in our reply and said, no, even if you think that, that would still be obvious.

[00:19:24] Speaker 02:
And we used essentially this same testimony that was in the reply brief and our expert's reply in that case.

[00:19:30] Speaker 02:
So it was fairly presented.

[00:19:31] Speaker 02:
There's been no argument here that that was improper reply evidence or something like that.

[00:19:36] Speaker 02:
And the board in the 835 then discussed this expert testimony.

[00:19:41] Speaker 02:
Paragraph 69 of Dr. Hughes' reply declaration is helpful.

[00:19:44] Speaker 02:
Paragraph 56 of the original declaration is helpful.

[00:19:47] Speaker 02:
And there's additional evidence as well.

[00:19:49] Speaker 02:
So we think this was fairly presented and fully supported by substantial evidence.

[00:19:54] Speaker 03:
Opposing counsel spent quite a bit of time relying on figure three in particular in the specification for an argument to support that you need to maybe more narrowly read or otherwise acquire.

[00:20:08] Speaker 03:
Do you have a response to that?

[00:20:10] Speaker 02:
Yes.

[00:20:10] Speaker 02:
And so this goes back to the clean construction issue.

[00:20:12] Speaker 02:
So I'll turn to that.

[00:20:13] Speaker 02:
So what was missed with respect to the discussion of Figure 3 is that in Figure 3 itself, Step 121 in the picture says, Purchase product.

[00:20:23] Speaker 02:
But when you turn to the text that is describing that exact step, Step 121, it says, if the product is approved, the delivery agent will- Can you give me an appendix page so I can- Oh, I'm sorry.

[00:20:35] Speaker 02:
264.

[00:20:37] Speaker 02:
Appendix 264.

[00:20:39] Speaker 02:
And it's column seven.

[00:20:42] Speaker 02:
And this is line 56 through 59.

[00:20:48] Speaker 02:
And so here, this is corresponding to step 121.

[00:20:51] Speaker 02:
If the product is approved, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at step 121.

[00:20:58] Speaker 02:
And that's critical language right there, because this or otherwise acquire language in this sentence was added by the applicant during prosecution when going from the provisional to the non-provisional application.

[00:21:10] Speaker 02:
So this is significant language that bears on how the applicant understood this acquisition term to be used.

[00:21:16] Speaker 02:
It's not limited to purchasing.

[00:21:17] Speaker 02:
The patent is not limited to purchasing the specification or the claims.

[00:21:21] Speaker 02:
And acquisition means something broader than that.

[00:21:26] Speaker 02:
Now, if you go to the next column, in column eight, you'll see around line 15, this is where the prepay option is also disclosed.

[00:21:37] Speaker 02:
And this is described in the context of this figure three discussion.

[00:21:41] Speaker 02:
So we just talked about step 121.

[00:21:43] Speaker 02:
Now we're talking about payment options that are disclosed in this process flow.

[00:21:48] Speaker 02:
And then later on in column nine, you'll see it finish out talking about figure three, steps 124, 125.

[00:21:54] Speaker 02:
But the point is, right in the middle of this discussion is where the patentee talks about these different payment options.

[00:22:00] Speaker 02:
And there's multiple disclosed.

[00:22:01] Speaker 02:
Certainly the agent can pay.

[00:22:03] Speaker 02:
The customer can pay directly in advance.

[00:22:05] Speaker 02:
And then later in column 10, we see there's an option where there's no payment at all, where we're picking up ordering free goods.

[00:22:12] Speaker 02:
So certainly there's no purchase there.

[00:22:14] Speaker 02:
All of these different ideas are encompassed in the idea of an acquisition request.

[00:22:18] Speaker 02:
These are all types of acquisition.

[00:22:22] Speaker 02:
The patentee chose to claim these claims broadly and the court should affirm the board's construction of this.

[00:22:31] Speaker 02:
Unless the court has further questions on claim construction, I'll just conclude with one final point.

[00:22:35] Speaker 02:
We heard a lot this morning about how the invention here was about this customer inspection, inspecting a product, and that was the advance over the prior art.

[00:22:44] Speaker 02:
And that's exactly what we've shown with our combination.

[00:22:46] Speaker 02:
Outside of this discussion about acquisition requests, there are other limitations in these claims that go through those reportedly inventive steps about sending an image to the customer

[00:22:56] Speaker 02:
so they can approve and look at the product.

[00:22:58] Speaker 02:
All of that is disclosed and rendered obvious by their other claims that are no longer in dispute on appeal.

[00:23:04] Speaker 02:
Kim basically teaches us a very similar process where you send an image and the customer inspects the process.

[00:23:10] Speaker 02:
So there is no concern here about that not being part of the combination.

[00:23:16] Speaker 02:
Unless the court has questions, we ask the court to affirm.

[00:23:26] Speaker 00:
Two points, Your Honors, and I'll pick up on what we just said.

[00:23:29] Speaker 00:
The acquisition request only relies on park.

[00:23:33] Speaker 00:
The only question is whether mere pickup alone.

[00:23:36] Speaker 00:
on to that limitation, because that's what the board held.

[00:23:40] Speaker 00:
So that is the only question here.

[00:23:42] Speaker 00:
And there's no dispute in park.

[00:23:44] Speaker 00:
There is no inspection or approval.

[00:23:47] Speaker 00:
On this point, with respect to Figure 3, this alternative embodiment, pre-purchase embodiment, is not part of Figure 3.

[00:23:54] Speaker 00:
That paragraph that is cited expressly says that if

[00:23:58] Speaker 00:
the acquisition request cannot be completed, then there's a separate process, which is pick up and delivery services.

[00:24:04] Speaker 00:
We know this because the specification expressly says that is different from acquisition services.

[00:24:10] Speaker 00:
Acquisition services are one thing, and in that case, you are billed for, quote, the shopping services rendered.

[00:24:15] Speaker 00:
The pick up and delivery services are another, and you're billed only for pick up and delivery.

[00:24:19] Speaker 00:
The spec makes clear that that is outside the scope of figure three.

[00:24:23] Speaker 00:
On Kim and the purchasing limitations, which is a different limitation and that involves the combination of Park and Kim, their expert Q expressly testified that in Kim it is the customer making the purchase.

[00:24:36] Speaker 00:
He said the customer makes it by cash or the customer pays by credit.

[00:24:40] Speaker 00:
That contradicts the board's finding that in Kim, it is the agent making the purchase.

[00:24:45] Speaker 00:
At a minimum, the board had to confront that evidence, which we cited, and the board failed to do so.

[00:24:51] Speaker 00:
And so even though Kim does have a approval step, it is different in sequence and it is different by agency.

[00:24:59] Speaker 00:
The purchase in that case is made before the customer just inspects.

[00:25:03] Speaker 00:
The whole point of Kim is just to enhance the reliability of the delivery services.

[00:25:07] Speaker 00:
So maybe you get to give an up or down vote right before it's dropped at the door.

[00:25:10] Speaker 00:
But second, there is nothing in Kim that talks about an agent purchasing.

[00:25:15] Speaker 00:
Nobody found that.

[00:25:16] Speaker 00:
They said in their opening brief, perhaps it would have been obvious to modify, but that is not what the board held.

[00:25:21] Speaker 00:
And they don't say that on appeal.

[00:25:22] Speaker 00:
There is no dispute on appeal that Kim does not teach or disclose an agent making a purchase after approval.

[00:25:30] Speaker 01:
OK.

[00:25:30] Speaker 01:
Thank you, Mr. Norman.

[00:25:30] Speaker 01:
Thank you, council.

[00:25:31] Speaker 01:
The case is submitted.