[00:00:00] Speaker 05:
We have four argued cases this morning.

[00:00:02] Speaker 05:
The first is number 24, 1600, Haifman versus Google.

[00:00:07] Speaker 05:
Mr. Hadley.

[00:00:09] Speaker 03:
Thank you, Your Honor, and may it please the court.

[00:00:12] Speaker 03:
Ms.

[00:00:12] Speaker 03:
Haifman's appeal raises three issues.

[00:00:14] Speaker 03:
I'd like to focus my time this morning on the implicit construction and the Jenny patent issue.

[00:00:22] Speaker 03:
The board did construe the claim language at issue, and that warrants de novo review.

[00:00:30] Speaker 03:
The board did so implicitly, if not explicitly.

[00:00:34] Speaker 03:
And that is the limitation of initiating.

[00:00:36] Speaker 04:
Did you ever argue to them that the without assistance of a user meant no assistance except for turning on the power?

[00:00:45] Speaker 03:
Yes.

[00:00:45] Speaker 03:
That was argued during the, at the very least, in the papers.

[00:00:48] Speaker 04:
In the response to the petition?

[00:00:51] Speaker 03:
In the patent donor response, it was argued that the Jenny patent did not meet the limitation.

[00:00:58] Speaker 04:
That's different than a claim construction argument.

[00:01:02] Speaker 03:
We did not ask for an explicit claim construction, and neither did the petitioner of that term.

[00:01:07] Speaker 04:
So you've got the plain language without the assistance of the user.

[00:01:11] Speaker 04:
The board looks at it and determines that the prior art does it without the assistance of the user, because the user may have to turn it on, which even you agree is

[00:01:21] Speaker 04:
OK and connected to the internet, but it doesn't actually require the specific assistance to carry out the specific steps that's referred to in that paragraph.

[00:01:31] Speaker 04:
Why isn't that all substantial evidence for you?

[00:01:34] Speaker 03:
Because this court has said that if during the proceedings,

[00:01:39] Speaker 03:
in order to reach a decision, and this is the Google versus EcoFactor case.

[00:01:43] Speaker 04:
No, but the problem is we do that when it's clear that there's a dispute of scope and the board should have been on notice.

[00:01:51] Speaker 04:
You didn't put the board on notice that you thought without assistance of the user met some assistance, but not too much, which is essentially your argument.

[00:02:00] Speaker 04:
And so the board looked at this and said, well, without assistance, the user clearly can't mean zero involvement, because somebody's got to do something with the device for it to be able to do the other steps.

[00:02:12] Speaker 04:
And it found that turning it on and connecting to the internet was still not violative of the step.

[00:02:21] Speaker 04:
If you would argue to them that the claim should be limited to the only assistance can be turning it on, then they would have had to confront that.

[00:02:29] Speaker 03:
and they did confront it we did point out in the response that in figure three in the context of addressing jenny that figure three says you turn on the computer and then the user has to do nothing else zero and we also pointed out that that language was added during the file history to overcome broils and then we also and then in the argument and in the papers and in the final written decision

[00:02:55] Speaker 03:
What the board did was actually perform a claim construction.

[00:02:58] Speaker 03:
It did everything that a tribunal does in determining what a term means.

[00:03:05] Speaker 03:
It looked at the claim language.

[00:03:07] Speaker 03:
It looked at the specification.

[00:03:08] Speaker 03:
And it looked at the file history.

[00:03:10] Speaker 03:
And it also cited this court's precedence on claim construction.

[00:03:16] Speaker 03:
And it actually reached a claim construction.

[00:03:19] Speaker 03:
It said that without

[00:03:23] Speaker 03:
It said that it did not view the claim term without assistance of the user as prohibiting user interactions besides Well, you agree that it doesn't prohibit all user interactions, right?

[00:03:35] Speaker 03:
Correct because the specification does make clear that you at least have to turn on the power if you don't turn on the power then nothing happens, but then the specification also goes on to say that the

[00:03:47] Speaker 03:
return and recovery information then appear during the boot up process before the user logs on or takes any other action.

[00:03:55] Speaker 03:
And that's the whole point of the invention.

[00:03:58] Speaker 00:
So I want to ask you, so your position is that the board construed the term incorrectly?

[00:04:05] Speaker 03:
Correct.

[00:04:06] Speaker 03:
The board construed the term incorrectly by misreading and misapplying both

[00:04:12] Speaker 03:
the claim language, the specification, and the file history.

[00:04:15] Speaker 00:
So we have to agree with you first that a claim construction actually occurred and then we have to agree with you that the board's claim construction was incorrect.

[00:04:25] Speaker 03:
Yes.

[00:04:27] Speaker 03:
And the reason that the board's claim construction was incorrect is that first in terms of the claim language, the board

[00:04:40] Speaker 03:
characterized logging on and establishing a remote connection as quote an unrecited action.

[00:04:47] Speaker 03:
But it's not unrecited.

[00:04:49] Speaker 05:
You can't update what's in the computer without logging on to the internet, right?

[00:04:56] Speaker 03:
That's the whole invention.

[00:04:57] Speaker 03:
You can.

[00:04:58] Speaker 03:
The invention itself combines... How can you update without logging on without being connected to the internet?

[00:05:06] Speaker 03:
Patent explains how you do that.

[00:05:09] Speaker 03:
Well, how do you do that?

[00:05:15] Speaker 03:
At column 2, line 23 through 30, it says that the invention doesn't rely on the computer modem.

[00:05:27] Speaker 03:
Appendix 125.

[00:05:28] Speaker 00:
Thank you very much.

[00:05:30] Speaker 03:
And it says that the present invention uses a layered program that's, first of all, put on the hard drive, as opposed to someplace else.

[00:05:38] Speaker 05:
I'm sure the original program's on the hard drive, but how can you update it without being connected to the internet?

[00:05:46] Speaker 03:
Because what the retriever program, the invention, does is that during the boot-up process, the computer program

[00:05:56] Speaker 03:
looks for a network or a connection, and it automatically makes the connection if it's available.

[00:06:04] Speaker 05:
Well, you have to be connected to the internet.

[00:06:05] Speaker 05:
So the answer to my question is, yes, you have to be connected to the internet to do the update.

[00:06:10] Speaker 03:
You have to be connected, but the user doesn't have to do anything to connect.

[00:06:14] Speaker 03:
That's the whole point.

[00:06:14] Speaker 00:
But doesn't it say that the user doesn't have to do anything?

[00:06:17] Speaker 00:
Even in column two, where you're directing us,

[00:06:20] Speaker 03:
That's actually in the claim language itself.

[00:06:24] Speaker 03:
The fourth limitation makes clear, first of all, the second limitation says without assistance from the user.

[00:06:32] Speaker 00:
I know, but it says without assistance by the user in connection with other things.

[00:06:36] Speaker 00:
What it says, without assistance in connection with initiating or changing the return recovery information.

[00:06:42] Speaker 00:
And we've made it clear, you've made it clear,

[00:06:46] Speaker 00:
that turning the computer on is not part of that.

[00:06:49] Speaker 00:
So it's kind of hard to know where it starts and where it doesn't, this initiating or changing the return recovery information.

[00:06:57] Speaker 03:
It starts before the logging on to the device.

[00:07:01] Speaker 00:
So everything happens that the... So without assistance by the user requires without turning on the device.

[00:07:08] Speaker 03:
No, it requires turning on the device, but the assistance... It's everything after that.

[00:07:12] Speaker 03:
The assistance happens when the user logs on.

[00:07:14] Speaker 05:
How do you get the internet connection without logging on?

[00:07:16] Speaker 05:
At the time of this patent, it was dial-up internet.

[00:07:21] Speaker 05:
Where does this say that you get an internet connection without logging on?

[00:07:26] Speaker 03:
It says you get a connection.

[00:07:27] Speaker 05:
Again, this is... Where... column two, line one?

[00:07:32] Speaker 03:
Column two says that the... Line...

[00:07:38] Speaker 03:
23 the present invention does not rely on the use of the computer modem Instead it uses a layered program in the boot-up process.

[00:07:47] Speaker 00:
That's how it works The problem is let me just back up owner repeat my question.

[00:07:51] Speaker 00:
Okay, so the claim says changing return information without assistance by user and So that's the big question is

[00:08:03] Speaker 00:
What is changing return information?

[00:08:04] Speaker 00:
How many steps fall within that?

[00:08:06] Speaker 00:
You say turning on the computer doesn't fall within that.

[00:08:11] Speaker 00:
But you say connecting to the internet does.

[00:08:15] Speaker 00:
I want to know where in your specification it makes that distinction clear.

[00:08:21] Speaker 03:
It makes it clear in two places, actually in the claim language.

[00:08:24] Speaker 00:
OK, I'm going to listen to you.

[00:08:30] Speaker 00:
assistance by a user, that's going to be a little too vague.

[00:08:34] Speaker 03:
First of all, the claim language that we're looking on doesn't just say initiate or change the return information.

[00:08:41] Speaker 03:
It says initiate or change the return information through remote communications without assistance from the user.

[00:08:48] Speaker 03:
Without assistance from the user applies to not just changing or initiating the return information, but also remote communications.

[00:08:55] Speaker 03:
You can't do something through remote communication.

[00:08:58] Speaker 00:
But also since initiating or changing return information, which appears on the display through remote communication.

[00:09:06] Speaker 03:
Correct.

[00:09:07] Speaker 00:
So maybe through remote communication is modifying which appears on the display.

[00:09:12] Speaker 03:
But then the fourth limitation says that that very display that has to appear without assistance from the user through remote communication does so before or with the security prompt, which prevents the user from accessing operatively the computer.

[00:09:29] Speaker 03:
to establish an internet connection or any other type of remote connection, that is accessing the computer operatively.

[00:09:38] Speaker 03:
You have to access and operate the computer.

[00:09:40] Speaker 05:
Did you have expert testimony explaining how you could connect with the internet without a logon?

[00:09:45] Speaker 03:
We did.

[00:09:47] Speaker 03:
Where is that testimony?

[00:09:48] Speaker 03:
That was in a declaration that was cited during the trial, and it was also in the testimony.

[00:09:56] Speaker 05:
OK, but where is it in the record?

[00:09:57] Speaker 05:
I'm having difficulty understanding how, at this time, you could connect to the internet without logging onto the computer.

[00:10:06] Speaker 05:
And I don't understand that, and this doesn't seem to me to say that you can do that.

[00:10:11] Speaker 05:
If you had a declaration from an expert saying that was possible and how it was done, I'd be interested to see that.

[00:10:17] Speaker 05:
Where is it?

[00:10:19] Speaker 03:
It's explained in the specification in a number of places.

[00:10:24] Speaker 05:
I don't see it explained in the specification.

[00:10:26] Speaker 05:
It says you don't have to use the modem, but that's true with respect to the original thing loaded onto the hard drive.

[00:10:32] Speaker 05:
But for updates, I don't understand how you can do this without using the modem.

[00:10:37] Speaker 03:
You do it by putting the program into the hard drive in a layered manner.

[00:10:42] Speaker 04:
You keep saying layered.

[00:10:44] Speaker 04:
What does that mean?

[00:10:46] Speaker 04:
That program is still connecting.

[00:10:49] Speaker 04:
to the remote server via something, right?

[00:10:52] Speaker 04:
Exactly.

[00:10:53] Speaker 04:
At this time, it was dial-up.

[00:10:55] Speaker 03:
So that's the way it connected.

[00:10:57] Speaker 03:
Exactly.

[00:10:57] Speaker 03:
It connects.

[00:10:58] Speaker 03:
But the point is not that it, whether it connects or not, it definitely connects.

[00:11:02] Speaker 03:
The program worked.

[00:11:04] Speaker 05:
How do you get a dial-up connection without logging on?

[00:11:08] Speaker 03:
Because the program looked for the connection and established the connection automatically.

[00:11:13] Speaker 05:
Show me where your expert said you could connect to the internet without

[00:11:17] Speaker 05:
dial-up connection after logging on.

[00:11:23] Speaker 00:
Our expert pointed to places in the specification and I don't have... For example, one of the problems I think you have with your construction is the language at column 14, line 30.

[00:11:35] Speaker 00:
And what that talks about is it analogizes the invention to being like McAfee in a various software internet updating capability where every time you go online, you communicate

[00:11:46] Speaker 00:
computer automatically checks to make sure you have the most recent current antivirus software.

[00:11:53] Speaker 00:
So that's making clear that every time you go online, if that's the analogy, every time you go online, you would go ahead and update what the prompt screen is going to say.

[00:12:07] Speaker 03:
Exactly.

[00:12:08] Speaker 03:
And what it says is that that is how you download the initial program, the retriever program, or you upload it.

[00:12:16] Speaker 03:
But then it goes on to say that that's not the invention, that that is the prior art.

[00:12:21] Speaker 03:
Everybody agrees that that's the prior art.

[00:12:24] Speaker 00:
And then what it goes on to say is that the... This is in column 14.

[00:12:27] Speaker 00:
Maybe you should walk us through these places in the specification that make it clear that this without assistance by the user would include

[00:12:38] Speaker 00:
that the user does not sign onto the Internet.

[00:12:42] Speaker 05:
Exactly where we are reading... Where did your expert analyze the specification and say that it doesn't require logging on?

[00:12:51] Speaker 03:
I don't have the exact paragraph in the record.

[00:12:54] Speaker 05:
If you don't have the exact paragraph, I'm going to assume there's no such paragraph.

[00:12:58] Speaker 03:
But if you look at the language,

[00:13:01] Speaker 03:
it goes on to say that you take that existing technology and combine it with the retriever program column and line number that's the way you're going to be most convincing at column fourteen line thirty four through forty

[00:13:18] Speaker 03:
through 40, it says nobody has ever considered to design a product combining this type of communication, the McAfee and the PDA synchronization, with the ability of this type of recovery security program that's talked about in the specification, that's the receiver program, that seizes control of the display monitor until a security prompt is satisfied.

[00:13:40] Speaker 03:
And that's where it makes clear that the user doesn't have to do anything

[00:13:44] Speaker 03:
like log on.

[00:13:45] Speaker 05:
The user doesn't have to do anything except for updating when you can't update without the user logging on because that requires an internet connection.

[00:13:57] Speaker 05:
The original display is loaded onto the hard drive and doesn't require an internet connection, but the updating does.

[00:14:05] Speaker 05:
That's the problem.

[00:14:06] Speaker 03:
It requires an internet connection, absolutely, but what it doesn't require is for the user to log on and to physically make that connection because it would defeat the entire purpose of the invention.

[00:14:18] Speaker 04:
The invention doesn't allow... Are you just saying that it logs on automatically when the user turns on the computer?

[00:14:25] Speaker 03:
Yes, during the boot up process, this retriever program runs and it logs on to whatever connection is available.

[00:14:33] Speaker 03:
Now, granted, there has to be a connection available, but it does log on.

[00:14:38] Speaker 04:
Let's see how that's without assistance to the user.

[00:14:40] Speaker 04:
The user is the one turning on the computer that then causes everything to run.

[00:14:44] Speaker 03:
But as the patent explains, if the user had to log on, the user would have access to everything on the computer before connecting to the internet and it would defeat the entire purpose of the invention.

[00:14:55] Speaker 00:
Where does it say that the user cannot log on to the internet or it will defeat the purpose of it?

[00:15:00] Speaker 03:
Among other things, the fourth limitation of claim one says displaying the screen with the return and recovery information with or before a security prompt

[00:15:14] Speaker 03:
which prevents the user from accessing operably the computer.

[00:15:20] Speaker 03:
And that's the claim construction.

[00:15:23] Speaker 03:
Now, if the expert or the patent doesn't explain how to do that, that may be an enablement issue.

[00:15:29] Speaker 03:
But that is separate from claim construction.

[00:15:32] Speaker 03:
The board could certainly look at it and say, OK, this isn't enabled.

[00:15:38] Speaker 03:
But that doesn't affect how this court should properly construe the term.

[00:15:43] Speaker 05:
Unless my colleagues have questions you're out of time here.

[00:15:46] Speaker 05:
We'll give you two minutes room How are you dividing?

[00:16:08] Speaker 05:
Your honor five minutes for my time pardon me five minutes right no, but in terms of subject matter

[00:16:14] Speaker 01:
I'm sorry, Your Honor.

[00:16:15] Speaker 01:
So the USPTO has only intervened on the question of the reviewability.

[00:16:20] Speaker 01:
That's the intervention.

[00:16:23] Speaker 01:
Good morning, Your Honors, and may it please the court.

[00:16:25] Speaker 01:
Shallow win for the director of the USPTO.

[00:16:28] Speaker 01:
This court may not review the board's denial of Ms.

[00:16:30] Speaker 01:
Haydman's request to de-institute these IPRs.

[00:16:33] Speaker 01:
That denial has instituted institution as its direct, immediate, and expressed subject.

[00:16:39] Speaker 01:
And it is final and non-appealable under Section 314B.

[00:16:44] Speaker 04:
Even if this court disagrees on revability, the board was- Wasn't our recent decision in ethanol control this issue?

[00:16:52] Speaker 01:
I'm not sure, Your Honor.

[00:16:53] Speaker 04:
You didn't submit a 28-J letter on this, I don't think.

[00:16:56] Speaker 04:
You should have.

[00:16:57] Speaker 04:
We just decided a case within the last month that said, you know, the patent owner argued that because the PTO violated its own rules or did something alter virus, it should have been de-instituted.

[00:17:11] Speaker 04:
And we said, that's not reviewable.

[00:17:13] Speaker 04:
If that's the case, that controls this, doesn't it?

[00:17:16] Speaker 04:
It's the same type of argument.

[00:17:19] Speaker 01:
Without the benefit of reading that decision closely, Your Honor, I can't say whether it can.

[00:17:24] Speaker 04:
It's in your favor.

[00:17:25] Speaker 04:
If it wasn't clear.

[00:17:26] Speaker 01:
I want to say, I'm not sure what the facts there are, but yes, I think.

[00:17:34] Speaker 04:
Well, the facts there are what I told you.

[00:17:36] Speaker 04:
The patent owner said the board

[00:17:38] Speaker 04:
unlawfully stayed its institution decision that it couldn't, and therefore it was ultra virus and we should order deinstitution.

[00:17:48] Speaker 04:
And we said, we can't order deinstitution.

[00:17:51] Speaker 04:
The error here is maybe similar, but it's still something we can't order, right?

[00:17:56] Speaker 04:
If he's asking for deinstitution, he can't get it.

[00:17:59] Speaker 01:
Correct, Your Honor.

[00:18:00] Speaker 01:
And this court has held repeatedly in many cases, even on reconsideration,

[00:18:05] Speaker 01:
This is in the Medtronic case, even after a final written decision.

[00:18:09] Speaker 01:
This court may not review the director's exercise of discretion to institute.

[00:18:21] Speaker 01:
If the court has any other questions, I'm happy to answer them.

[00:18:25] Speaker 05:
OK, thank you.

[00:18:26] Speaker 05:
Thank you, Your Honor.

[00:18:27] Speaker 05:
Mr. Bellucci.

[00:18:37] Speaker 02:
May please the court, on behalf of the appellees, I'll address the claim construction issue.

[00:18:43] Speaker 02:
It's true.

[00:18:43] Speaker 02:
There was not an express requested claim construction.

[00:18:48] Speaker 02:
The board at page seven of the final written decision enumerates all of the claim terms that the parties sought construction for, about half a dozen.

[00:18:56] Speaker 02:
And it was not the without assistance.

[00:18:59] Speaker 02:
So for that term and any other term that parties did not request an express construction, the board applied the plain and ordinary meaning.

[00:19:06] Speaker 00:
And in applying that plane and ordering meaning, what is, what is the response to the argument that they also looked at the prosecution history and they also looked at the specification, like that there were indicia of a Phillips analysis.

[00:19:21] Speaker 00:
So therefore.

[00:19:22] Speaker 00:
it was a claim construction.

[00:19:24] Speaker 02:
Sure.

[00:19:24] Speaker 02:
The board did cite vitronix, but for the uncontroversial proposition that when there is a preferred embodiment in the specification, presumptively that's somewhere within the scope of the claim.

[00:19:38] Speaker 02:
But the board did not say or delimit the outer boundary of that.

[00:19:43] Speaker 02:
So that's how I would address that.

[00:19:45] Speaker 02:
Now, vitronix is a claim construction case.

[00:19:50] Speaker 02:
The EcoFactor case, which is the main case on point for an implicit construction, doesn't say that merely citing claim construction precedent triggers an implicit construction.

[00:20:04] Speaker 02:
Rather, the board relied on these cases to determine the scope and meaning of the claims.

[00:20:10] Speaker 02:
But that's not what happened here.

[00:20:12] Speaker 02:
The board was performing a factual comparison of the genie updating feature to the preferred embodiment.

[00:20:18] Speaker 02:
And that's very much like what the board did in the Appleverse Unilock case that we discuss on page 34 of the red brief, which this court held was not an implicit construction.

[00:20:29] Speaker 02:
That was a factual comparison.

[00:20:31] Speaker 02:
And I think, of course, the APJs are very smart.

[00:20:34] Speaker 02:
And if this panel says merely citing a claim construction case is going to result in an implicit construction, and we can review that de novo, I think the APJs will stop doing that.

[00:20:48] Speaker 02:
And that would be unfortunate, because I think we want- Can I ask you- Yes.

[00:20:52] Speaker 00:
I hear what you're saying, but my question was just a little bit different than what you're addressing.

[00:20:57] Speaker 00:
I was concerned about the discussion of the specification and the prosecution history, not the mere citation of the mitronics case.

[00:21:04] Speaker 00:
Yes.

[00:21:04] Speaker 00:
That there is an actual discussion of those things.

[00:21:07] Speaker 00:
So what is the distinction between claim construction and factual analysis when the intrinsic evidence is the thing that's being discussed?

[00:21:18] Speaker 02:
Yes.

[00:21:18] Speaker 02:
And in EcoFactor, the court said it is the setting of the scope of outer boundaries, whereas here we're looking on the internal inside the scope of the claim and not resolving where that outer boundary might be.

[00:21:32] Speaker 02:
The court was looking at.

[00:21:33] Speaker 00:
There's a lot of cases.

[00:21:34] Speaker 00:
I don't want to get off, because I'm sure you also have an argument that that claim construction is correct.

[00:21:40] Speaker 00:
But there's a number of cases where we have also said very clearly that the court does not have to resolve the entire meaning of a claim term.

[00:21:53] Speaker 00:
They are just to resolve as much as they need to to resolve the dispute between them, whether they're at issue in the case, whether it's invalidity or infringement.

[00:22:02] Speaker 00:
And so I'm not sure that I'm following your distinction there.

[00:22:06] Speaker 02:
Right.

[00:22:07] Speaker 02:
And indeed, that was the case law on page eight of the final written decision, that is, we only need to construe the terms in controversy and only to the extent necessary to resolve the controversy.

[00:22:18] Speaker 02:
The board was not resolving the outer bound.

[00:22:20] Speaker 00:
That's the way claim construction is.

[00:22:22] Speaker 00:
That can be a claim construction, regardless of whether you say, this is what it means for all intents and purposes in all cases ever in the future.

[00:22:29] Speaker 00:
versus we're resolving what this term means for purposes to resolve the dispute in this case.

[00:22:35] Speaker 00:
I don't see how that makes something a factual analysis versus a claim construction.

[00:22:40] Speaker 00:
Does that make sense?

[00:22:41] Speaker 02:
Yes, but I think I go back to the eco factor.

[00:22:44] Speaker 02:
It's the outer boundary, the limit of where the claim term is.

[00:22:49] Speaker 02:
Where does the permissible user action and impermissible user assistance begin?

[00:22:56] Speaker 02:
We don't know where that line is, and it's that boundary that eco factor says is important.

[00:23:01] Speaker 02:
The board here just safely said, presumptively, this user assistant, the automatically

[00:23:09] Speaker 02:
Checking for updates anytime you go online in column 14.

[00:23:13] Speaker 05:
That's a species within the the claim Okay, I think Unless there still has further questions on this you should turn to treating this as an issue of claim construction.

[00:23:24] Speaker 02:
Yes Right, and this is a very easy claim construction case on the merits I think you need to look no farther than the specification statement of a phone line and cable and

[00:23:36] Speaker 02:
in columns 13 and 14, which the user would be the one plugging in that cable to establish the internet connection.

[00:23:45] Speaker 02:
And in patent owner's reply at page 19, it pretty much gives up the ghost on this claim construction issue when they

[00:23:53] Speaker 02:
when they acknowledge this argument about the phone line and cable and say that these are exemplary ways, the claims are not limited to cable-based communication, so they're not disclaiming the use of a cable or a phone line.

[00:24:08] Speaker 02:
So the question is, who is the one that makes that internet connection?

[00:24:12] Speaker 02:
Can it be the user?

[00:24:14] Speaker 02:
We say yes.

[00:24:15] Speaker 02:
What they say on page 19 of their grade brief is that even for the phone line and cable examples, the computer could still be connected by the owner and not the user.

[00:24:26] Speaker 02:
But notably, they need to say must here, that it must.

[00:24:29] Speaker 02:
not be connected by the user, but that flies in the face of the patent when that listing of all of the phone line and cable.

[00:24:40] Speaker 05:
You've got to help me, because I'm not clear about what's going on here.

[00:24:44] Speaker 05:
Are you agreeing that you could have an internet connection without a logon?

[00:24:48] Speaker 02:
No.

[00:24:49] Speaker 02:
You need to have that internet connection for this to work.

[00:24:52] Speaker 05:
Well, you do have to have the internet connection, but does that require a logon?

[00:25:00] Speaker 02:
It could.

[00:25:00] Speaker 02:
I don't know if it requires a logging in.

[00:25:03] Speaker 02:
So back in the day, in the 2002 time frame, you would normally, through the AOL, log in to go online via the phone line.

[00:25:15] Speaker 05:
How could you get the internet connection without doing that?

[00:25:21] Speaker 02:
Certainly the patent doesn't say that that's possible.

[00:25:27] Speaker 02:
And in fact, so when we have that listing of the phone line or cable or Wi-Fi, Bluetooth in column 13, one sentence before that is the mention of the disgruntled employee.

[00:25:39] Speaker 02:
So it's appendix 131, column 13.

[00:25:45] Speaker 02:
53.

[00:25:45] Speaker 02:
53 is the phone line, oral cable, Wi-Fi, Bluetooth.

[00:25:50] Speaker 02:
So that's how we all agree the internet connection or the remote connection of the claim can be established.

[00:25:58] Speaker 02:
But the question is, who is making that connection?

[00:26:00] Speaker 02:
Can it be the user?

[00:26:02] Speaker 02:
Yes, of course, because one sentence before that

[00:26:05] Speaker 02:
says this is an important feature in case the assigned to person is a disgruntled employee who simply reports equipment as stolen and is still using the equipment.

[00:26:15] Speaker 02:
So that disgruntled employee is the user in the claim.

[00:26:18] Speaker 02:
He's absconded with the laptop, taking it home or to another location, and will most logically be the person who's connecting the phone line or cable to establish that internet connection.

[00:26:32] Speaker 02:
Now, as for the expert testimony, indeed, there was none by patent owner on this point about the genie and the without assistance.

[00:26:45] Speaker 02:
And the relevant pages just for the record for the patent owner response was appendix 8184 through 8188.

[00:26:53] Speaker 02:
That's their patenonal response, where they would have needed to put at site an expert for this argument.

[00:27:01] Speaker 02:
And there is not a single citation to an expert declaration.

[00:27:05] Speaker 02:
And the board

[00:27:07] Speaker 02:
Also, on page 22 of the final written decision, factually disagreed with the proposition, the attorney argument by Pat Nonor that you could just, as anyone knows, back in 2002, you can just open your phone and it would automatically go online.

[00:27:26] Speaker 02:
As a factual matter, the board rejected that, found there was no evidence of that.

[00:27:31] Speaker 02:
And then the blue brief on appeal doesn't dispute that.

[00:27:36] Speaker 02:
Yes, so if there are any other questions on the claim?

[00:27:39] Speaker 02:
Where does the board say that?

[00:27:43] Speaker 05:
Pardon?

[00:27:43] Speaker 05:
Where does the board say that?

[00:27:47] Speaker 05:
What page?

[00:27:48] Speaker 02:
Appendix 22, the first full paragraph addressing patent owner's argument.

[00:27:56] Speaker 02:
As anyone who has turned on a cell phone can attest, a connection can be established automatically without any involvement by the user.

[00:28:03] Speaker 02:
The user simply turns on the device.

[00:28:06] Speaker 02:
And there, reviewing the expert testimony of our expert on cross-examination, who is Dr. Zadalk, the board factually disagrees with this.

[00:28:17] Speaker 02:
Patent owner does not direct us to any evidence that iPhones or other smartphones, to the extent they even existed at the time of the invention, 2002, had such capabilities in 2002.

[00:28:32] Speaker 02:
Finally and then yes, Judge Stoll you're correct that you would get only to the genie arguments on appeal if both you have would have to find that there was an implicit construction and that And adopting patent owners proposed construction Thank you Okay, Mr.. Hadley Three quick points your honor

[00:28:59] Speaker 03:
First, in terms of how this works without the user taking action to login and connect, the claim language without assistance was added during prosecution.

[00:29:10] Speaker 03:
And during the prosecution, the patent donor explained how this worked.

[00:29:13] Speaker 03:
The appendix sites are at 141 through 143.

[00:29:17] Speaker 03:
three zero six one three zero six five and three zero eight three and that's where the patent owner provided the support for without assistance from the user before passing a security prompt and logging in second in terms of phone lines and cables yes the specification does refer to that but that doesn't make the connection that simply provides the conduit for the connection

[00:29:42] Speaker 03:
Even back then, the owner still had or the person with the device still had to pass a security prompt and log in to make that connection through the available cable and phone line.

[00:29:55] Speaker 03:
Again, the specification explains that and makes that clear.

[00:29:59] Speaker 04:
So without assistance by the user doesn't just include turning the computer on.

[00:30:03] Speaker 04:
It also includes plugging it into a phone line or something.

[00:30:07] Speaker 04:
That's okay.

[00:30:08] Speaker 03:
If that's the way it's going to work.

[00:30:09] Speaker 03:
The plugging into a phone line or a cable

[00:30:12] Speaker 03:
is akin to plugging in the power.

[00:30:15] Speaker 03:
And certainly if you don't plug something in, if it's dead or you have to have a modem, the specification talks about updating through a modem and says that the user doesn't have to log in to update through the modem.

[00:30:29] Speaker 03:
And so yes, plugging in to a cable or a phone line is the same as plugging in power.

[00:30:38] Speaker 03:
The whole point of the patent is

[00:30:40] Speaker 03:
stopping the user from logging in to access the content of the computer until the user has at least seen that the computer is lost or stolen and the return or recovery information.

[00:30:54] Speaker 03:
That is the invention.

[00:30:57] Speaker 03:
And then finally, in terms of the Sotera stipulation, the patent owner is not asking for this court to de-institute.

[00:31:06] Speaker 03:
Instead, under Unilock or Facebook, we're simply arguing that the violation of the stipulation should have been addressed in the final written decision.

[00:31:15] Speaker 04:
And what would you have them say if they addressed it?

[00:31:19] Speaker 03:
What we would have them say is that after institution, after we instituted based on

[00:31:25] Speaker 03:
the satirist stipulation that the petitioners, which includes LG, violate as a real party in interest violated the stipulation and deny the in the final written decision deny the recovery that the petitioners were seeking based on the violation.

[00:31:46] Speaker 04:
On what basis?

[00:31:47] Speaker 03:
On the basis of the violation of the satirist stipulation.

[00:31:52] Speaker 04:
Where does it say they have the statutory authority to do that?

[00:31:56] Speaker 04:
The statutory... Once they've instituted, they've got to decide whether it's unpatentable or not.

[00:32:02] Speaker 03:
Under the CFR, there is a provision that allows the patent office

[00:32:09] Speaker 03:
to decide a matter short of a trial or during the trial based on a violation.

[00:32:16] Speaker 03:
So, for example, if during the... I'm sorry.

[00:32:20] Speaker 04:
What do they do when they do that?

[00:32:21] Speaker 04:
They dismiss the IPR.

[00:32:24] Speaker 03:
They dismiss the IPR.

[00:32:25] Speaker 03:
But that's different from de-instituting the IPR.

[00:32:29] Speaker 03:
So, for example, if during the trial the patent don't offer... It sounds like the same thing to me.

[00:32:33] Speaker 03:
It's a little bit different because if, for example, if during the case

[00:32:37] Speaker 03:
During discovery, it's found that the petitioners are not the real parties in interest, for example.

[00:32:43] Speaker 03:
Then the Patent Office has the authority to dismiss the matter, even after institution.

[00:32:51] Speaker 04:
Well, the Patent Office can do it, but we can't review that.

[00:32:55] Speaker 03:
In fact, that's pretty close to the Unilock v. Facebook case, where this court did find that it could review that.

[00:33:03] Speaker 04:
But it reviewed what?

[00:33:04] Speaker 03:
Review taking action

[00:33:07] Speaker 03:
as to the matter after institution based on something that comes up during discovery.

[00:33:16] Speaker 03:
For example, in the Uniloc versus Facebook case, the issue was the scope of estoppel.

[00:33:22] Speaker 03:
And this court found that it had the... That's different.

[00:33:24] Speaker 04:
We can review scope of estoppel on anything because it relates to the compatibility question.

[00:33:29] Speaker 04:
The ultimate goal you're seeking in this case is to have the IPR dismissed, which is essentially de-institution.

[00:33:37] Speaker 05:
to have just to have it just can't do that i think that the the unilot case gives the court this that authority but i i i agree that this is not in fact no satara violation here because the district court was applying the wrong law in concluding there was and in the in genica we decided uh... to adopt the other line of authority

[00:34:03] Speaker 03:
The facts there were a bit different here.

[00:34:05] Speaker 03:
What the court looked at was that the eligible.

[00:34:08] Speaker 04:
No, the court's had it wrong.

[00:34:10] Speaker 04:
I mean, you can try to argue that.

[00:34:11] Speaker 04:
It's not before us.

[00:34:13] Speaker 04:
It came up from the district court.

[00:34:14] Speaker 04:
We would reverse, because Ingenico is controlling here.

[00:34:18] Speaker 04:
And they didn't violate the Satara stipulation.

[00:34:22] Speaker 04:
The district court may have not had the benefit of our Ingenico case.

[00:34:25] Speaker 04:
But now that it's issued, it demonstrates that the district court's wrong.

[00:34:31] Speaker 03:
I agree as the prior art, under the priority date issue, the exact same argument was raised in the district court as it was in the IPRs.

[00:34:42] Speaker 03:
The exact same issue.

[00:34:44] Speaker 03:
And that's what the district court denied the summary judgment.

[00:34:51] Speaker 05:
Okay.

[00:34:51] Speaker 05:
We're out of time.

[00:34:52] Speaker 05:
Thank you.

[00:34:53] Speaker 05:
Thank all counsel.

[00:34:54] Speaker 05:
The case is submitted.