[00:00:01] Speaker 00:
The next case for argument is 24-2178, Google v. Wildseed.

[00:00:13] Speaker 00:
Can you handle that?

[00:00:14] Speaker 00:
I think we can handle it, yes.

[00:00:16] Speaker 00:
All right.

[00:00:18] Speaker 00:
Mr. Bagotow.

[00:00:43] Speaker 00:
Please proceed.

[00:00:44] Speaker 00:
Good morning.

[00:00:47] Speaker 04:
May it please the court, Dan Bagatell on behalf of Google, along with Jonathan Tietzen and Tara Curtis.

[00:00:53] Speaker 04:
This appeal is limited to claim 15 of the 169 patent, and our argument is straightforward.

[00:00:59] Speaker 04:
That claim calls for generating a hotlink message as either

[00:01:04] Speaker 04:
an SMS message or an instant messaging message, an IM message, and the board simply didn't reach.

[00:01:10] Speaker 00:
No, I agree it's straightforward, but let me ask you.

[00:01:12] Speaker 00:
I mean, the standard of review, it's an abuse of discretion case, correct?

[00:01:17] Speaker 04:
Yes, in the sense that the board has to reach every argument that we raise.

[00:01:24] Speaker 04:
Wildseed makes three arguments.

[00:01:26] Speaker 04:
A, we never raised this IM prong.

[00:01:30] Speaker 04:
B, we waived it.

[00:01:31] Speaker 04:
Or C, the board implicitly addressed it, even though it never mentioned IM.

[00:01:35] Speaker 04:
So that's the question.

[00:01:37] Speaker 04:
Did they actually address it?

[00:01:38] Speaker 00:
I know.

[00:01:38] Speaker 00:
That goes to the heart of my question, and I was going to ask your friend that too.

[00:01:42] Speaker 00:
How are we to review an abuse of discretion

[00:01:45] Speaker 00:
when there's silence.

[00:01:48] Speaker 00:
I mean, if the board had said...

[00:01:51] Speaker 00:
they waive this, this issue is no longer on the table, then OK, then we look at the waiver issue.

[00:01:58] Speaker 00:
If the board gave us some guidance as to what, even short shrift to a merit argument on the IM, we can review that.

[00:02:08] Speaker 00:
But how do we review an abuse under abusive discretion?

[00:02:12] Speaker 00:
We don't know what happened here, right?

[00:02:15] Speaker 04:
We don't know what happened.

[00:02:17] Speaker 04:
I mean, the board's decision

[00:02:20] Speaker 04:
Quotes claim 15, but doesn't mention the IM prong.

[00:02:23] Speaker 04:
It then addresses the SMS prong in about three pages, a pretty fulsome analysis, and we aren't appealing that.

[00:02:33] Speaker 00:
thought that was no longer in the case, or never thought it was in the case in the first place, would be subject to claim 15.

[00:02:39] Speaker 04:
It is unclear.

[00:02:39] Speaker 04:
And I think, to be honest, you'd have to remand for the board to explain what it was doing there.

[00:02:44] Speaker 02:
I mean, it's clear that- Why do we find that the petition is so unclear that that argument is even being made?

[00:02:51] Speaker 04:
Well, OK, may I address why I think it's pretty clearly made?

[00:02:54] Speaker 02:
Well, yeah, you can.

[00:02:55] Speaker 02:
Let me just, for purposes of this question, let's just assume that the board looked at this, and they don't see this argument.

[00:03:03] Speaker 02:
And so that's why they don't mention it.

[00:03:05] Speaker 02:
Then it probably wouldn't be an abuse.

[00:03:07] Speaker 02:
If they had said that.

[00:03:08] Speaker 02:
I know you can walk me through the petition and I'm going to have you do that because I think the petition is pretty confusing, but it may be there.

[00:03:15] Speaker 04:
Well, let me just say that if I find it hard to believe that because we raised I am an SMS in the same portion of the petition

[00:03:24] Speaker 04:
And what we said was, you know, Rothschild talks primarily about email, but here with respect to claims five and 15, Rothschild also expressly says you can use this method with other methods.

[00:03:36] Speaker 02:
Well, sure.

[00:03:37] Speaker 02:
But the problem there, I think, is that you've said you could use, I'm going to get this all messed up because this is complicated to me.

[00:03:45] Speaker 02:
You can use SMS and IM with HTML.

[00:03:50] Speaker 02:
And well, I mean, that's Rothschild's

[00:03:53] Speaker 02:
Rothschild's is talking about HTML, isn't it?

[00:03:56] Speaker 02:
Or is it not?

[00:03:58] Speaker 02:
Let's just assume you're reading that to say Rothschild uses HTML with email, and then it also says you can use the same methods with SMS and IM.

[00:04:10] Speaker 02:
Well, that's wrong with regards to SMS, isn't it?

[00:04:12] Speaker 02:
You don't use HTML with SMS.

[00:04:15] Speaker 04:
You wouldn't use HTML with SMS.

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

[00:04:17] Speaker 04:
We weren't relying, basically.

[00:04:20] Speaker 02:
But HTML, in your view, can work with IM.

[00:04:25] Speaker 04:
It was never contested.

[00:04:26] Speaker 04:
All of their evidence was limited to SMS.

[00:04:28] Speaker 04:
So if I can just explain about the petition.

[00:04:31] Speaker 04:
The petition.

[00:04:31] Speaker 02:
Why don't you cite us?

[00:04:33] Speaker 02:
to the exact parts of the petition and walk us through it?

[00:04:35] Speaker 04:
Okay, it's actually mentioned in several spots, but if you look at the introduction to the petition, at 82, we mentioned IM and SMS along with email, but more directly, that's at appendix 82, but more specifically with respect to claims 5 and 15, and 15 is at 129, but it refers back to appendix 115.

[00:04:57] Speaker 04:
And that's where we explain that although Rothschild primarily described email, he expressly recognized that you could use the same technique with other messaging types, including SMS, IM, video messages.

[00:05:12] Speaker 04:
And by the way, that is no different than what the patent does.

[00:05:16] Speaker 04:
If you look at the patent at appendix 71,

[00:05:19] Speaker 04:
That's all the patent says.

[00:05:22] Speaker 02:
I get it, but when you're citing that statement in Rothschild for SMS, it has to mean with regards to JPEG files, not HTML, doesn't it?

[00:05:31] Speaker 04:
No, no.

[00:05:33] Speaker 02:
Am I wrong?

[00:05:34] Speaker 02:
I thought it was uncontested that HTML coding doesn't work with SMS.

[00:05:38] Speaker 02:
We did not contest that.

[00:05:42] Speaker 02:
Let me back up, because you keep saying this, and I think this is a sticking point for the board and it's a sticking point for me.

[00:05:46] Speaker 02:
When you say Rothschild teaches the same method as for email as it does for SMS, to the extent the email method is HTML, then Rothschild is wrong that you could use that with SMS.

[00:06:01] Speaker 04:
Here's the problem.

[00:06:07] Speaker 04:
It's a complication.

[00:06:08] Speaker 04:
It's actually a complication that they argued.

[00:06:10] Speaker 04:
They argued that Rothschild never expressly mentioned HTML.

[00:06:13] Speaker 04:
So we got into a big argument.

[00:06:14] Speaker 04:
Is Rothschild talking about RTF or HTML?

[00:06:17] Speaker 04:
The board said, we were not making an argument of expressed disclosure.

[00:06:22] Speaker 04:
We were arguing that it was obvious in light of the additional reference Chen and the HTML.

[00:06:28] Speaker 04:
So we had expert testimony from Dr. Ho.

[00:06:32] Speaker 02:
I think what's happening, I struggled with this, is that Rothschild's teaches this at a high level, but it doesn't necessarily teach the details of how to implement it with regards to the specifics of email.

[00:06:44] Speaker 02:
SMS and IM, right?

[00:06:46] Speaker 04:
Well, it discusses HTML, excuse me, it doesn't stress HTML, but it discusses the method pretty extensively without necessarily using the words to HTML.

[00:06:55] Speaker 04:
It also discusses it pretty extensively regarding SMS.

[00:06:59] Speaker 04:
But again, this is exactly the way the petition, excuse me, that the patent does it.

[00:07:02] Speaker 04:
Appendix 71, column 14.

[00:07:04] Speaker 02:
You know what?

[00:07:05] Speaker 02:
I don't really care about the patent.

[00:07:06] Speaker 02:
I care about your petition and where the board was on notice that you were making the specific argument that

[00:07:13] Speaker 02:
Claim 15 with regards to IM, and HTML rendered it obvious.

[00:07:20] Speaker 04:
OK, two points about that.

[00:07:21] Speaker 04:
First, Wildseed itself acknowledged as much in its surapply.

[00:07:25] Speaker 04:
They acknowledged that our arguments regarding SMS and IM, we made them saying that they were the same as email.

[00:07:30] Speaker 04:
This is where they say it.

[00:07:31] Speaker 04:
They say it at appendix 477.

[00:07:35] Speaker 04:
They admit that we made the same argument, just like email.

[00:07:38] Speaker 04:
And then at the oral hearing, when they argued that we had waived it, their only point for waiver was really that we said SMS can't be used with HTML.

[00:07:48] Speaker 04:
But we answered that at the hearing.

[00:07:50] Speaker 04:
It was quick.

[00:07:51] Speaker 04:
It was at the end of the hearing.

[00:07:52] Speaker 02:
Where in the petition would it be clear to the board that with regards to Claim 15's focus on IAM, that your theory was that IAM and HTML

[00:08:03] Speaker 04:
Render claim 15 obvious, okay, so it's the combination of the discussion of in detail about email in connection with limitation 1.4 and That talks about the email and HTML aspects Let me find the citation for that

[00:08:32] Speaker 04:
I will find it here.

[00:08:35] Speaker 04:
If you look at the petition in connection with 1.4, it's at appendix 106 to 108.

[00:08:42] Speaker 04:
And then, just a few pages later at 115 in connection with claim 5, we say, Rothschild describes its technique with the example of an email message.

[00:08:52] Speaker 04:
It states that it is applicable to other forms of communication, including SMS and IM.

[00:08:57] Speaker 04:
That's out of appendix 115.

[00:08:58] Speaker 04:
And we quote from Rothschild, column 8.

[00:09:00] Speaker 04:
That's actually appendix 1226, where it's reprinted.

[00:09:08] Speaker 04:
And we go on to say the same thing in connection with claim 15, which also contains that.

[00:09:12] Speaker 02:
So can you go back to your discussion in claim 1 and 1.4?

[00:09:17] Speaker 02:
Is this not, you went over that quickly, is the theory here

[00:09:25] Speaker 02:
on a high level that it just does it, or the theory that for email it does it through HTML?

[00:09:32] Speaker 04:
Well, we raised the two theories here is that you can do it via HTML.

[00:09:38] Speaker 04:
And we also mentioned the image data.

[00:09:39] Speaker 04:
So we secondarily raised image data.

[00:09:42] Speaker 02:
The board at the end of the day said- Where in the discussion of one does it talk about image data?

[00:09:55] Speaker 04:
I believe, well, we mentioned the image data.

[00:09:59] Speaker 04:
Is it at the bottom of page 106?

[00:10:01] Speaker 04:
That's part of it.

[00:10:02] Speaker 04:
Yeah.

[00:10:04] Speaker 04:
But we also, we explained.

[00:10:08] Speaker 02:
I mean, because then you go over to the next page, and you're really talking about HTML.

[00:10:18] Speaker 04:
Well, but we also said that the URL could be

[00:10:21] Speaker 04:
displayed to the user via a JPEG graphic.

[00:10:25] Speaker 04:
And we had some expert testimony from Dr. Ho as well.

[00:10:27] Speaker 02:
But eventually the board said... Your view is that this is enough in one to put

[00:10:32] Speaker 02:
the board on notice that you're not just arguing HTML.

[00:10:35] Speaker 02:
You're arguing that these hot links through email can be used through HTML or JPEG.

[00:10:48] Speaker 04:
Yes.

[00:10:49] Speaker 04:
And also, keep in mind that we raised

[00:10:52] Speaker 04:
SMS and IM in the same place in the petition at the same time.

[00:10:57] Speaker 04:
And the board recognized that we didn't forfeit SMS.

[00:11:00] Speaker 01:
Here's where I'm struggling.

[00:11:01] Speaker 01:
Even if I grant you that maybe you talked about email and IM and SMS using HTML in the petition, and the board was supposed to understand that, when you later give up, abandon the SMS-HTML theory, if all along you've said IM is the same as SMS,

[00:11:21] Speaker 01:
then the board reasonably understood that when you gave up the SMS HTML theory, you were giving up the IM HTML theory.

[00:11:28] Speaker 01:
Well, one, the board never said that.

[00:11:30] Speaker 01:
It says that, but we're reviewing for an abusive expression how they read the petition

[00:11:36] Speaker 01:
and how they understood what arguments were put in front of them.

[00:11:42] Speaker 04:
Well, first of all, we put IM in play.

[00:11:44] Speaker 04:
They came back and said, you can't use it with SMS.

[00:11:47] Speaker 04:
And we pointed out that that argument was limited to SMS.

[00:11:50] Speaker 04:
And we said in the hearing, we said at the hearing that we're still raising IM.

[00:11:54] Speaker 01:
Can you point to any place where you would have told the board,

[00:11:58] Speaker 01:
hey, our arguments about IM are different than our arguments about SMS.

[00:12:02] Speaker 01:
I understood your whole colloquy with my colleague here to be, every time we said SMS, we also meant IM.

[00:12:09] Speaker 01:
But then when you give up SMS, it doesn't fit logically follow you're giving up IM.

[00:12:14] Speaker 04:
No, because the argument was strictly, the counter argument was strictly limited to SMS.

[00:12:19] Speaker 04:
It had nothing to do with YM.

[00:12:21] Speaker 04:
If you remember, they were trying to raise the argument in our petitioner's reply.

[00:12:25] Speaker 04:
Our petitioner's reply,

[00:12:27] Speaker 04:
only responded to the arguments they made in their Patnona response.

[00:12:30] Speaker 04:
And those arguments were limited to claim one.

[00:12:32] Speaker 04:
They never mentioned claim 15.

[00:12:33] Speaker 04:
They never mentioned IM.

[00:12:34] Speaker 04:
They threw in passing this.

[00:12:36] Speaker 04:
Sure.

[00:12:36] Speaker 02:
But can we just go back to the petition?

[00:12:39] Speaker 02:
Because your problem, for me, is when you get to claim 15, you don't say anything.

[00:12:44] Speaker 02:
You don't have an argument here.

[00:12:46] Speaker 02:
You're just going.

[00:12:47] Speaker 02:
And I get it.

[00:12:48] Speaker 02:
You have limited amounts of pages.

[00:12:50] Speaker 02:
So you have to do cross our first thing and stuff.

[00:12:52] Speaker 02:
That's maybe the board's fault for having such strict page limits, whatever.

[00:12:57] Speaker 02:
But 15, all you have, you don't distinguish between SMS or IM.

[00:13:03] Speaker 02:
You just quote the thing, and then you say, see claims 5 and 10.

[00:13:07] Speaker 02:
Right.

[00:13:07] Speaker 04:
And that's on appendix 115.

[00:13:10] Speaker 04:
And we mentioned.

[00:13:12] Speaker 02:
And if we go back to the discussion of, is it more helpful to go to 10 or 5 first?

[00:13:20] Speaker 04:
Well, five is the one that calls out the IM alternative along with the SMS and email.

[00:13:26] Speaker 04:
So 10 would have been just basically a rehash of claim one, because it's not specific to.

[00:13:33] Speaker 02:
Well, OK.

[00:13:34] Speaker 02:
But this is here again.

[00:13:38] Speaker 02:
I understand the board may be missing this.

[00:13:42] Speaker 02:
It may be that it's good enough and it needs to go back.

[00:13:46] Speaker 02:
But this discussion in five definitely calls out SMS and IM.

[00:13:50] Speaker 02:
But it doesn't say anything about which specific formatting it's using, HTML or JPEG.

[00:14:00] Speaker 02:
And if you go back to one, you did show me where one talks about it in terms of HTML or JPEG.

[00:14:07] Speaker 02:
And that's what you're saying is enough.

[00:14:10] Speaker 04:
Well, in our view, we raised it in the petition.

[00:14:13] Speaker 04:
We didn't wave it along the way, and the board never reached it.

[00:14:15] Speaker 04:
If you have doubts about that, maybe the board did it sub silencio, I think the right answer is to remand and ask the board.

[00:14:22] Speaker 04:
Because, again, how would they have remand?

[00:14:24] Speaker 01:
Do they have the right to tell us they didn't address it because you waved it or because you didn't adequately articulate it?

[00:14:30] Speaker 01:
That would be within the scope of the remand.

[00:14:33] Speaker 04:
It would be up to the board to make the ruling that they should have said.

[00:14:37] Speaker 04:
I mean, they just never even quoted

[00:14:39] Speaker 04:
The relevant portion of claim 15 never addressed it.

[00:14:42] Speaker 01:
You're not asking us to rule out the possibility that they found that you waived it.

[00:14:47] Speaker 04:
I think, well, if they had wanted to rely on waiver, I think they would have said so.

[00:14:52] Speaker 04:
I think they just overlooked it.

[00:14:54] Speaker 04:
But if you have doubts about that, then I suggest that you remand for the board to say what it meant, because we don't know.

[00:15:00] Speaker 01:
And how about would the remand allow the board to give both sides a chance to present more evidence, if they wished, on whether IM uses HTML?

[00:15:10] Speaker 04:
That would be in the board's discretion.

[00:15:12] Speaker 04:
We are confident.

[00:15:13] Speaker 04:
It has never been raised so far.

[00:15:15] Speaker 04:
But if they want to challenge whether IM can be used with HTML, we welcome that.

[00:15:20] Speaker 04:
We would be happy to debate that issue.

[00:15:23] Speaker 00:
OK.

[00:15:23] Speaker 00:
Why don't we hear from the other side and we'll restore some rebuttal.

[00:15:26] Speaker 00:
Thank you.

[00:15:35] Speaker 03:
Good morning, Your Honors.

[00:15:36] Speaker 03:
May it please the court, Zach Higgins for Wildseed.

[00:15:39] Speaker 03:
So what we have here is not silence and it's not waiver.

[00:15:43] Speaker 03:
Instead, the board quoted Google and was not abusing its discretion.

[00:15:49] Speaker 03:
when it ruled that Google's argument is limited to email.

[00:15:54] Speaker 00:
Well, look at what the board said about 15.

[00:15:58] Speaker 00:
It's just discussing SMS, right?

[00:16:01] Speaker 00:
Is there any reference to IM, either to a waiver of IM or to a discussion of the merits, right?

[00:16:09] Speaker 03:
It is true that the board didn't use the term IM, but what we're pointing to is the statement at appendix 35 where the board says, first in the body,

[00:16:19] Speaker 03:
Petitioner requires an email embodiment.

[00:16:22] Speaker 03:
And in footnote six, they say that our decision would be the same under the other ground, the only other relevant ground, because that ground still relies upon email.

[00:16:31] Speaker 03:
The corollary of that statement, because their petition relies on email, anything other than email is not included in that argument.

[00:16:38] Speaker 03:
And there's three places, three different statements from Google, that each independently prove that Google never articulated an instant messaging plus HTML argument.

[00:16:48] Speaker 00:
Let me just, before you get to that, and I'll let you get to that, is you've got a circumstance.

[00:16:54] Speaker 00:
There are lots of claims here.

[00:16:56] Speaker 00:
And this is just a dependent claim, right?

[00:17:00] Speaker 00:
And it didn't come up really in detail in terms of a robust discussion until your surreply.

[00:17:09] Speaker 00:
So assuming it was treated in the petition, both of those for claim 15, SMS and IM.

[00:17:17] Speaker 00:
And then you get your surreply, and you make good, obviously persuasive arguments about SMS and HTML.

[00:17:25] Speaker 00:
Where does that leave us?

[00:17:28] Speaker 00:
Is it incumbent upon the other side to say, well, we're still preserving?

[00:17:33] Speaker 00:
They didn't make the good case against IM?

[00:17:35] Speaker 00:
Or is it just clear on the papers that, yeah, they made a case about a portion of claim 15, but not the entirety.

[00:17:43] Speaker 00:
So Google doesn't have to jump up and down and reiterate what is going on in IM, because your surreply was limited to SMS.

[00:17:52] Speaker 03:
Yes, in an alternative universe, that fact scenario would be more challenging.

[00:17:57] Speaker 03:
What we have here, though, the reason I say that the three statements prove that Google never articulated an instant messaging plus HTML argument is because Google's petition reply brief below, their reply brief that the board quoted in its ruling that Google's argument requires email, their reply brief characterizes their own petition as not being

[00:18:20] Speaker 03:
setting forth anything about SMS plus HTML, which is undisputed.

[00:18:24] Speaker 03:
So that knocks out the three messages.

[00:18:27] Speaker 02:
Let's stop talking about SMS, because I think at least I agree with the notion that SMS and HTML can't work together.

[00:18:35] Speaker 02:
So that's not going to render Claim 15 obvious.

[00:18:38] Speaker 02:
But the real question, and I think what they're arguing is they also presented in their petition, and they walked me through it.

[00:18:45] Speaker 02:
a very skeletal version of IM with either HTML or with the JPEG.

[00:18:53] Speaker 02:
And the board clearly did not address IM with JPEG, right?

[00:18:58] Speaker 02:
So if it's in the petition and they didn't address it, that's probably an abusive discretion.

[00:19:04] Speaker 03:
Well, here's the important fact on top of that, Your Honor, is there's the petition itself, which at best is maybe vague, maybe wrong about HTML and SMS.

[00:19:16] Speaker 03:
But then what happened after the petition is what's important here.

[00:19:20] Speaker 03:
That's what the board quoted.

[00:19:21] Speaker 03:
That's Google's own brief characterizing its petition.

[00:19:25] Speaker 03:
Google characterized its petition.

[00:19:26] Speaker 03:
This is not a waiver.

[00:19:28] Speaker 03:
This is not a change to the argument.

[00:19:29] Speaker 03:
Google said that its petition relies on email.

[00:19:33] Speaker 03:
And the board quoted them and said, yes, you said you did.

[00:19:35] Speaker 03:
We're in the appendix, the brief.

[00:19:38] Speaker 03:
Yes, at appendix 35, the board quotes petitioner

[00:19:45] Speaker 03:
the petitioner's brief at 20 to 21, which corresponds to the appendix at 433 to 4.

[00:19:52] Speaker 03:
We quoted different passage of the same discussion at appendix 433.

[00:19:58] Speaker 00:
Oh, yes.

[00:19:59] Speaker 03:
So the second full paragraph of page 35, Your Honor.

[00:20:03] Speaker 03:
First, they talk about what the petition does and that they rely on email.

[00:20:11] Speaker 02:
and then and they're quoting the petition that's talking about 1.4 yes because that 1.4 is the only this is what's confusing they definitely for claim one relied on email and HTML but for claim 15

[00:20:28] Speaker 02:
Because it doesn't involve email, they, by definition, had to rely on something other than email.

[00:20:34] Speaker 02:
They may not have raised the argument sufficiently, but they certainly put the board on notice that they intended to argue that IM or SMS was also obvious.

[00:20:44] Speaker 03:
So Your Honor, this exact issue came up at the hearing.

[00:20:48] Speaker 03:
So I first wanted to make sure that Your Honors understand the first statement by Google, first of three.

[00:20:53] Speaker 01:
Show us where Google made the statement, not what the board said about Google.

[00:20:57] Speaker 03:
Yes, certainly.

[00:20:58] Speaker 03:
Certainly, Your Honor.

[00:20:58] Speaker 03:
So appendix 35, in that second paragraph, they're quoting the- Show me where we have the Google brief that you're relying on.

[00:21:07] Speaker 01:
Right.

[00:21:08] Speaker 03:
So that site is to 433 to 434.

[00:21:11] Speaker 01:
And where is it?

[00:21:13] Speaker 03:
So at appendix 433, at the bottom of the page, that quote starts.

[00:21:22] Speaker 03:
And it says, quote, for the reasons explained in the petition,

[00:21:27] Speaker 03:
The combination of Rothschild and Chen represents the combination of email and HTML.

[00:21:33] Speaker 01:
They never say anything there about SMS or IM.

[00:21:36] Speaker 01:
They don't say, and we're not also arguing,

[00:21:40] Speaker 01:
where our petition didn't also put in play IM or SMS.

[00:21:44] Speaker 03:
Yes, but the board read that statement as confirming that the petition only makes an argument about email.

[00:21:50] Speaker 02:
Well, that's just wrong.

[00:21:51] Speaker 02:
I mean, that's just flat out wrong that it's only making an argument about email, because it has very cursory stuff on claim 15, which by definition is an email.

[00:22:00] Speaker 02:
And also the stuff he pointed to us while he was up here

[00:22:04] Speaker 02:
in their petition on claim one, it definitely talks mostly about the email and HTML.

[00:22:09] Speaker 02:
But there are references to Rothschild doing all this stuff with JPEG files.

[00:22:16] Speaker 02:
It's in the petition.

[00:22:17] Speaker 03:
Yes, so Your Honor, this exactly.

[00:22:19] Speaker 02:
But what you seem to be arguing is waiver.

[00:22:21] Speaker 02:
No, we're not arguing waiver.

[00:22:23] Speaker 02:
OK, well, let me say this then.

[00:22:25] Speaker 02:
If it's in the petition and the board didn't address it,

[00:22:29] Speaker 02:
then why isn't it there?

[00:22:31] Speaker 03:
Our point is that it's not in the petition.

[00:22:33] Speaker 03:
In their three statements by Google, we're getting through just the first one so far.

[00:22:36] Speaker 03:
The petition is the first statement by Google.

[00:22:40] Speaker 03:
So at appendix 430, this is the part that we quote in our brief.

[00:22:43] Speaker 03:
It's the same discussion.

[00:22:44] Speaker 02:
I don't find this helpful.

[00:22:46] Speaker 03:
Well, I just want to make sure that you understand what we're saying.

[00:22:48] Speaker 02:
I think this is addressing claim one.

[00:22:50] Speaker 03:
It's not addressing Claim 15.

[00:22:52] Speaker 03:
It says the petition, and it applies to the entire petition, including Claim 15.

[00:22:56] Speaker 03:
I think you're way over reading this.

[00:22:58] Speaker 03:
So this is the first part where it comes up.

[00:23:02] Speaker 03:
So in the first full paragraph of Appendix 430, that's what we're quoting.

[00:23:10] Speaker 00:
Maybe I'm misremembering your brief, but you say repeatedly, I think in your brief, you use this and you say only in email.

[00:23:18] Speaker 00:
You put in the word only.

[00:23:19] Speaker 00:
And so it's a different reading to say in email.

[00:23:24] Speaker 00:
It doesn't say only in email.

[00:23:26] Speaker 03:
I agree, Your Honor, that it's possible to read that different ways.

[00:23:29] Speaker 03:
The point that we're raising by pointing you to the board's ruling page at Appendix 35 is that the board quoted Google's characterization of Google's own petition and said that Google requires an email embodiment.

[00:23:43] Speaker 03:
So it's true that that means they don't have an email.

[00:23:44] Speaker 02:
Can you explain to me how that makes any sense that Google would say,

[00:23:49] Speaker 02:
All of our arguments require an email embodiment when one of your claims is not email.

[00:23:54] Speaker 03:
Yes.

[00:23:55] Speaker 02:
Wouldn't that be them conceding that on its face, claim 15 is valid?

[00:24:01] Speaker 03:
Yes.

[00:24:01] Speaker 03:
And that was a mistake, and it came up at the hearing.

[00:24:04] Speaker 03:
The petition didn't do it.

[00:24:05] Speaker 03:
That sounds like a waiver.

[00:24:06] Speaker 03:
It's not waiver.

[00:24:07] Speaker 03:
It's a characterization of what the petition said in the first instance.

[00:24:10] Speaker 00:
I thought you acknowledged in your briefings that Google was arguing IM when Wildseed's surreply raised the SMS IM thing.

[00:24:20] Speaker 00:
So I thought, I didn't think you were making the argument that it wasn't in the petition.

[00:24:25] Speaker 00:
I thought you were conceding it was in the petition, and then you were going to the surreply, and your so-called waiver or forfeiture argument wasn't with respect to the petition at all, it was with respect

[00:24:36] Speaker 00:
to not responding to the surreply and be raising the IM, even though the surreply just dealt with SMS.

[00:24:43] Speaker 00:
Am I right about that?

[00:24:44] Speaker 03:
So we acknowledge that Google articulated a JPEG argument for SMS and instant messaging.

[00:24:50] Speaker 03:
And point number two is that this came up at the hearing.

[00:24:53] Speaker 03:
The board on Appendix 36, however, said that this alternative argument about image data is merely the same argument that Google made.

[00:25:00] Speaker 03:
It's part of their HTML embodiment.

[00:25:02] Speaker 03:
That's the last paragraph of Appendix 36.

[00:25:04] Speaker 03:
So the board's ruling at the end of the day was there is only one argument.

[00:25:08] Speaker 03:
There's no alternative argument.

[00:25:10] Speaker 00:
But I guess the confusing thing of all the pages you're citing, 34, 35, and 36, the board starts off and quotes claim 15.

[00:25:20] Speaker 00:
and just refers to the SMS portal.

[00:25:24] Speaker 00:
And it continues in every discussion you've pointed to.

[00:25:27] Speaker 00:
It's only talking about the paragraph starts.

[00:25:30] Speaker 00:
The record establishes that SMS does not use HTML.

[00:25:34] Speaker 00:
And the thing you just showed us, it says petitioner does not explain in an SMS.

[00:25:42] Speaker 00:
So all of this discussion, it's not the board saying anything about IM, right?

[00:25:47] Speaker 03:
That's true.

[00:25:48] Speaker 03:
And we would have preferred the board to have said, I am.

[00:25:50] Speaker 03:
That's true.

[00:25:51] Speaker 03:
But this exact issue came up at the hearing.

[00:25:53] Speaker 03:
This is statement number two by Google.

[00:25:55] Speaker 03:
At the hearing, when we pointed out, because Google's petition requires email and because claim 15 does not allow for email, it's the outlier claim is the only one that doesn't, we said and made a slide on the point, Google has no argument for claim 15.

[00:26:10] Speaker 03:
At the hearing, Google addressed our slide and said, well, we have an argument for claim 15.

[00:26:14] Speaker 03:
You have a feed page.

[00:26:15] Speaker 03:
Yes.

[00:26:16] Speaker 03:
The hearing transcript is at 610, and it's lines 16 to 25.

[00:26:23] Speaker 03:
And the underlying slide, I can point you to as well.

[00:26:26] Speaker 03:
But what Google says is, we don't have an argument about SMS and HTML, but what the petition does rely on.

[00:26:35] Speaker 03:
So here again, we're not talking about waiver.

[00:26:37] Speaker 03:
We're talking about Google characterizing its own petition.

[00:26:40] Speaker 03:
It says the petition relies on... I'm sorry.

[00:26:42] Speaker 00:
There's a page number on 610.

[00:26:44] Speaker 03:
A line number.

[00:26:45] Speaker 03:
Oh, yes.

[00:26:45] Speaker 03:
So it's 16, Your Honor, is where the paragraph starts.

[00:26:49] Speaker 03:
And what I'm reading from is starting at line 20, what Google says about its own petition.

[00:26:54] Speaker 03:
So not a waiver.

[00:26:55] Speaker 03:
This is a characterization of its petition, just like the characterization before.

[00:27:00] Speaker 03:
But what the petition does rely on is that Rothschild's teaching of a technique, it can apply to SMS or instant messaging.

[00:27:07] Speaker 03:
And then that's the JPEG argument.

[00:27:08] Speaker 03:
That's it.

[00:27:09] Speaker 01:
Well, it could also be the IM HTML argument.

[00:27:13] Speaker 01:
They're not giving anything up there.

[00:27:16] Speaker 03:
But Your Honor, when the exact issue, when we made the argument that they have no argument for claim 15 because their petition relies on email, their response was, well, we have a JPEG argument.

[00:27:27] Speaker 03:
Note that they never said, oh, what are you talking about?

[00:27:30] Speaker 03:
We do have an HTML for I am argument.

[00:27:32] Speaker 03:
So what Google would have us believe is that at the hearing when this exact issue came up.

[00:27:36] Speaker 03:
I don't see anywhere where they say we don't.

[00:27:38] Speaker 00:
Can I go back to where I started, which is assuming the standard is abuse of discretion.

[00:27:43] Speaker 00:
How are we to review whether the board abused its discretion with even the exchange that we've had here in the past 20 minutes?

[00:27:54] Speaker 00:
indeed, thought that there was a waiver.

[00:27:57] Speaker 00:
And maybe they could carve a way to do that.

[00:28:00] Speaker 00:
But in order to establish the absence of an abuse of discretion, don't we need an analysis from the board?

[00:28:07] Speaker 00:
Maybe they thought there was a waiver.

[00:28:09] Speaker 00:
Maybe they forgot this provision was in there.

[00:28:12] Speaker 00:
And yet, it would have been nice and helpful if Google had called it out again after the sir reply.

[00:28:17] Speaker 00:
Like, yeah, this is our answer to SMS, but don't forget about this IM thing.

[00:28:22] Speaker 00:
We don't have anything to review on abuse of discretion.

[00:28:24] Speaker 00:
And I think we've well established for the past 15 minutes that there's nothing for us to review because we don't know the basis of what the board did.

[00:28:33] Speaker 03:
So the statement to review, Your Honor, is at appendix 35.

[00:28:37] Speaker 03:
Petitioner requires an email embodiment.

[00:28:40] Speaker 03:
That statement, the corollary of that statement is that something besides email is not included.

[00:28:46] Speaker 01:
Can I ask you, you started by saying, if I recall correctly, the board was not silent

[00:28:52] Speaker 01:
was not silent on IM is what I think he wanted us to say.

[00:28:55] Speaker 01:
But you have to admit, the discussion at 34 to 37

[00:29:00] Speaker 01:
is silent on IM, I can find nothing at all about IM expressly, correct?

[00:29:06] Speaker 01:
You're right.

[00:29:06] Speaker 01:
You're right that they don't mention the word IM.

[00:29:08] Speaker 01:
In fact, when they start off by quoting the claim language, they don't even give us the full claim language, right?

[00:29:15] Speaker 03:
Yes.

[00:29:17] Speaker 01:
So it's silent.

[00:29:18] Speaker 03:
So we have to send it back to them to tell us why they're silent.

[00:29:22] Speaker 03:
Well, no, Your Honor.

[00:29:23] Speaker 03:
And then there's that third statement that I also want to make sure I point out, the third independent statement

[00:29:27] Speaker 03:
and that independently proves that Google never articulated an HTML and IM argument, is that Google is now asking for permission to inject new facts in the record.

[00:29:36] Speaker 03:
They're saying that they want notice and a chance to respond to any doubt about whether IM could use HTML.

[00:29:42] Speaker 00:
You're saying in their briefing.

[00:29:43] Speaker 03:
Yeah, in their reply brief at page 21.

[00:29:46] Speaker 03:
But they're looking the wrong direction.

[00:29:48] Speaker 01:
If I think that this needs to go back because I have no idea what the board thought about the IM

[00:29:57] Speaker 01:
HTML or the IMJPEG arguments.

[00:30:01] Speaker 01:
I don't know if they thought it wasn't in the petition or if they thought it was in the petition and that it was abandoned.

[00:30:06] Speaker 01:
I just don't know.

[00:30:07] Speaker 01:
Don't I need to send it back and the board will exercise its discretion to tell us maybe it was waived, maybe it was never there, maybe there's not a sufficient evidentiary record?

[00:30:17] Speaker 01:
Why would I micromanage that?

[00:30:20] Speaker 03:
So you can simply affirm the statement that petitioner requires an email embodiment.

[00:30:24] Speaker 03:
But also, if you did remand, we just ask that the records stay closed.

[00:30:27] Speaker 03:
Because if there's any proof about, I am using HTML, and there's not.

[00:30:31] Speaker 03:
But if there were any, that is what Google should be pointing to.

[00:30:34] Speaker 03:
The fact that there's not even proof or a suggestion of that combination means that Google cannot have articulated an argument based on this non-existent hypothetical combination.

[00:30:43] Speaker 01:
It turns out the board completely overlooked this portion of their petition and of your claim.

[00:30:50] Speaker 01:
Why would I tell the board it can't ask for more evidence if it wants it?

[00:30:54] Speaker 03:
The board didn't overlook anything because Google characterizes its own argument as being limited to email, Your Honor.

[00:30:59] Speaker 03:
And I understand it's frustrating that the board didn't say the word I am.

[00:31:02] Speaker 03:
But because they said it requires email, the logical corollary is that it's a misreading of their petition.

[00:31:09] Speaker 02:
I don't think that if that's what the board meant, then they misread their petition.

[00:31:14] Speaker 02:
Well, Your Honor, if that's the case, I don't want to argue about whether they did or not.

[00:31:19] Speaker 02:
Let's just assume for hypothetical purposes that's my conclusion.

[00:31:23] Speaker 02:
Then don't we have to send it back?

[00:31:25] Speaker 03:
Well, Your Honor, I agree that it's an unusual situation where something comes up and a petitioner in reply says, yes, we're making an argument.

[00:31:36] Speaker 03:
And that leaves them with no argument on a defendant claim.

[00:31:38] Speaker 03:
That's exactly why we brought it up.

[00:31:40] Speaker 02:
But you're not answering my question.

[00:31:41] Speaker 02:
I'm assuming you're wrong about all that.

[00:31:43] Speaker 02:
And they didn't give it up, that it's in the position.

[00:31:47] Speaker 02:
And what they were saying there doesn't have anything to do with giving up claim 15.

[00:31:51] Speaker 02:
Then if IM was addressed in the petition,

[00:31:55] Speaker 02:
and the board didn't address it at all, we have to send it back.

[00:31:58] Speaker 03:
If you wanted to do that, Your Honor, if you're inclined to do that, all we ask is that you keep the record closed.

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

[00:32:16] Speaker 00:
Can you start off with just this last question we were talking about?

[00:32:19] Speaker 00:
I do recall, but I can't find where it was in both blue and gray.

[00:32:22] Speaker 00:
You said in the alternative about the board reopening the record or making new arguments.

[00:32:28] Speaker 04:
What we said in our brief and what I will say here is that if the other side or the board wants to suggest that IM cannot be used with HTML, then that new argument

[00:32:41] Speaker 04:
is something that we have a right to respond to.

[00:32:44] Speaker 04:
So if somebody is going to inject that issue this late in the game, let us respond to it, just as a matter of due process.

[00:32:51] Speaker 04:
But if I can just address really quickly, appendix 35, the sentence says, petitioner requires an email embodiment with HTML to meet limitation 1.4, because that's what our discussion of 1.4 said.

[00:33:08] Speaker 04:
OK, then they go on to discuss SMS.

[00:33:11] Speaker 04:
If we were limiting our arguments to HTML with email, why would the board then go on for two pages to address the merits of our SMS argument?

[00:33:21] Speaker 04:
No, they were just pointing out that that's what we were talking about for limitation 1.4.

[00:33:25] Speaker 04:
Then in connection with 5 and 15, we said you can apply the same approach with something other than email.

[00:33:33] Speaker 04:
And that's what the board goes on to talk about, but only in connection with SMS.

[00:33:38] Speaker 04:
In our petitioners' reply, we again were discussing claim one.

[00:33:46] Speaker 04:
That's the only thing that was in play at that time.

[00:33:48] Speaker 04:
We were relying on that discussion of email.

[00:33:50] Speaker 04:
There was other discussion in the petition about extending it.

[00:33:54] Speaker 04:
That's another part of Rothschild.

[00:33:56] Speaker 04:
But we were relying on Rothschild's detailed disclosure of

[00:34:00] Speaker 04:
of email for purposes of claim one, which was what was in play then.

[00:34:04] Speaker 04:
Finally, Appendix 610, which is the hearing transcript, I'll admit it's not a model of clarity.

[00:34:12] Speaker 04:
My argument today is probably not a model of clarity.

[00:34:16] Speaker 04:
But what the sentence says, if you don't clip it short, supports what we have to say.

[00:34:22] Speaker 04:
First, we say we're not making the case that SMS messages would include HTML.

[00:34:26] Speaker 04:
This is Appendix 610.

[00:34:28] Speaker 04:
But what the petition does rely on is that Rothschild's explicit teaching of a technique, it can apply that to SMS or instant messaging.

[00:34:36] Speaker 04:
We also mentioned the image data.

[00:34:40] Speaker 04:
And the board didn't buy our image data argument saying it was derivative of our HTML argument.

[00:34:45] Speaker 04:
OK, but that still leaves our primary argument involving HTML and HTML with IM.

[00:34:51] Speaker 04:
So I think it was adequately raised in the petition.

[00:34:56] Speaker 04:
We did not waive it.

[00:34:57] Speaker 04:
We did not waver from it.

[00:34:59] Speaker 04:
And the board simply didn't reach it.

[00:35:01] Speaker 04:
So at least you ought to go back and

[00:35:03] Speaker 01:
Depending I don't want to kind of game out all the possible Possibility is they could say look you have an obligation to be clear in your petition and in your argument You were not clear therefore.

[00:35:16] Speaker 04:
We didn't see it and a story you lose And you know at that point we could consider whether we wanted to appeal from that decision But I don't know what the board's going to say.

[00:35:25] Speaker 04:
I don't know whether the boards want to hear more evidence.

[00:35:27] Speaker 04:
I think they overlooked it Thank you.

[00:35:30] Speaker 00:
Thank both sides the case is submitted