[00:00:00] Speaker 02:
Our next case is number 242298, Intuit, Inc. v. Same Surf.

[00:00:05] Speaker 02:
Mr. Sackstetter.

[00:00:17] Speaker 01:
Thank you, Your Honor. Michael Sackstetter for Appellant, Intuit, in this appeal. May it please the Court, the Board... made a number of errors in its decision regarding the 448 patent. You have to win on all of them, right? I have to run the table, Your Honor. Okay. All right.

[00:00:40] Speaker 01:
The first one relates to limitation 1C, which is sending an invitation.

[00:00:47] Speaker 01:
From the host device, all the actions are performed by the host device here, except in the wherein clause, as we'll discuss in a little bit. From the host device to the invitee device, which is called in the 448 patent.

[00:01:02] Speaker 01:
where the invitation includes a session identifier. And LeBron discloses that in sending that first to the first web client, sends the invitation to the group surfing server, and then that server sends the invitation on to... Well, what's the invitation in LeBron?

[00:01:26] Speaker 04:
That's the question.

[00:01:28] Speaker 01:
It's a message that initiates the session and identifies... Which message are you actually referring to in LeBron?

[00:01:39] Speaker 04:
Because it looked like you were referring to the session creation message 151. That's correct, Your Honor. And there's no evidence that the session creation message 151 gets forwarded from the synchronization server to the guest devices.

[00:01:53] Speaker 01:
There is evidence that the guest devices receive an invitation...

[00:01:58] Speaker 01:
to join the same session.

[00:02:02] Speaker 04:
Right, but if the theory is that the session creation message 151 gets sent from the host to the synchronization server and then session creation message 151 gets forwarded from the synchronization server to the guest devices, I think that was the problem that the board found that LeBron doesn't speak to that message literally getting forwarded to the guest devices. That's my understanding of the board's rationale.

[00:02:34] Speaker 01:
There's no disclosure in LeBron that says that that particular message is the one that is relayed.

[00:02:41] Speaker 04:
Right. And the concern there is that if that was your theory, that and the petition replies seems to make clear that that was the theory, then why does the board's finding lack substantial evidence There really isn't any meaningful evidence showing that session creation message 151 gets forwarded to the guest device.

[00:03:06] Speaker 01:
There is evidence from Dr. Lieberman that a person of ordinary skill in the art would understand that that is a way that it would be done.

[00:03:14] Speaker 01:
And that is the support for the theory in this case.

[00:03:19] Speaker 03:
But even if that's true, how would we say there's a lack of substantial evidence for the board's conclusion to the contrary looking at this record?

[00:03:28] Speaker 01:
The board is contradicting the only expert testimony that it has on the issue and is failing to credit that and is making an assumption that that is not what is sent.

[00:03:45] Speaker 02:
Could we look at 1G? Yes, Your Honor. That's the one I have the most trouble with. Okay.

[00:03:54] Speaker 02:
The claim language here is very convoluted and difficult to follow. But as I understand 1G, it's talking about three steps that are performed in order. One is the host request to the website.

[00:04:13] Speaker 02:
and then transmitting information to the synchronization server and receiving information from the website. Do you agree that's what 1G says?

[00:04:26] Speaker 01:
Well, it's 1G in combination with 1E and I think 1F.

[00:04:31] Speaker 02:
Okay, but that's the order, right?

[00:04:34] Speaker 01:
That's correct, Your Honor.

[00:04:36] Speaker 02:
How does LeBron disclose that order?

[00:04:41] Speaker 01:
Well, I think that it is – It relates to the next page message where the... So there's the page we're on, and then there's the next page. The next page message goes to the website server from the first web client, what would be the host device.

[00:05:03] Speaker 01:
And it is sent to the joint surfing server, and then that goes on to the...

[00:05:12] Speaker 01:
the second web client, the guest device or the invitee device in this case. So there's a request that is made, and then that gets sent immediately because it's the next page.

[00:05:28] Speaker 01:
And then later on, when we're on the next page, then that gets to the invitee device, to the second web client.

[00:05:37] Speaker 04:
I guess the concern I have is, at least for your purely...

[00:05:42] Speaker 04:
next page embodiment, because I know there was a little bit of mixing and matching as a possible alternate theory. Even assuming that there was a pure next page embodiment contained somewhere in your petition, I didn't quite see the explanation of how you first send that next page request to a website server and And then subsequent to sending that request to this website server, the host device then transmits information related to a web browsing interaction to a synchronized server.

[00:06:26] Speaker 01:
So the request is sent first to the website server.

[00:06:33] Speaker 04:
And I didn't see where that was explained in the petition for the next page.

[00:06:42] Speaker 01:
Then, well, for instance, if we can go back to the partial page example for a second, the website, the first web client is not even going to have that partial page, which includes requests for images and so forth, until it has received them. So it has to transmit the request to the Joint Surfing Server, and then it has to go to the guest device, the invitee device.

[00:07:31] Speaker 01:
Okay, so 1F, there are a couple of issues with 1 is whether it's a limitation for the claim at all. Our contention is that it is not and that it is the claim. Claim 1 requires a series of actions that are specified in the preamble as being performed by the host device.

[00:07:55] Speaker 01:
And the wherein clauses 1F1 through 1F3 are not performed by the host device. They're performed either by the synchronization server or by the invitee device.

[00:08:11] Speaker 04:
It wouldn't be the first time we saw a claim drafter do funny things with a claim.

[00:08:17] Speaker 01:
That's true, Your Honor.

[00:08:18] Speaker 04:
And here... The claim drafter chose to amend this claimed method performed by a host device to now call for other kinds of devices to undertake particular actions.

[00:08:34] Speaker 04:
And the claim drafter added those limitations to overcome a prior art rejection and made it quite clear to the examiner, the prior art doesn't do all this new stuff that I'm adding to limitation 1f.

[00:08:50] Speaker 04:
So under those circumstances, should we still ignore those limitations and conclude they don't have patentable weight when they were relied upon to overcome a prior art rejection?

[00:09:01] Speaker 01:
I'm not sure the extent to which they were relied upon to overcome a prior art rejection.

[00:09:05] Speaker 04:
Let's assume the remarks are crystal clear. This is where the patent owner was laying down, it's planting its flag. I'm overcoming your prior art rejection because I'm adding limitations to this claim and that the prior art does not disclose. Now this claim, as amended, is patentable over your prior art.

[00:09:27] Speaker 01:
Making that assumption, I don't disagree. Let's assume all that. Yeah, making that assumption, I don't disagree with you.

[00:09:33] Speaker 04:
OK.

[00:09:34] Speaker 01:
OK. I don't know if we've hit all. Oh, just the performance of 1F1 through 1F3. Again, I think the primary place to look for that is the partial page.

[00:09:48] Speaker 01:
embodiment where the question is where the invitee device is getting information about the web page from the website server. And in that embodiment, they go out and do exactly that.

[00:10:03] Speaker 04:
Does the invitee device make a request?

[00:10:07] Speaker 01:
They do when there are links or pointers in the data that is provided to the invitee device to go out to another, to the website server and get pieces of the website.

[00:10:26] Speaker 01:
And if the court has no other questions.

[00:10:30] Speaker 02:
Okay.

[00:10:32] Speaker 01:
Thank you, Your Honor.

[00:10:35] Speaker 02:
Mr. McFadden.

[00:10:45] Speaker 00:
May it please the court, Ryan McBeth on behalf of APA Lee, same sir.

[00:10:51] Speaker 00:
Your Honors, I'd first like to rebut a point that counsel raised. In talking about the partial webpage embodiment, that was actually not brought by Intuit in this appeal. And I would note in the IPR final written decision, footnote 16, appendix page 47, the board noted that that arguments regarding that partial web page embodiment were not raised in the IPR and they're not part of this appeal. Your Honor, the court correctly brought up the point Intuit must overcome six individual claim elements, must reverse on 1C, 1E, 1FI to 1F3 and 1G.

[00:11:34] Speaker 00:
Intuit bore the burden of proving by a preponderance of evidence that every claim limitation of the 448 patent claim is disclosed or suggested by LeBrun or LeBrun in combination with Wendt.

[00:11:47] Speaker 02:
But let's cut to the chase. For example, tell me why 1G, with the three ordered steps that I described earlier, isn't disclosed by LeBrun.

[00:12:02] Speaker 00:
Yes, Your Honor.

[00:12:05] Speaker 00:
And I would counter Intuit's argument that they raised in their reply brief at page 23.

[00:12:11] Speaker 00:
In that, they talked about the next page message specifically in LeBron. And the board in its final written decision correctly concluded that the next page message doesn't actually go to either the invitee device to be performed or to the host device. The next page message goes to the group surfing server of LeBron, which they've analogized to the synchronization server. In LeBron, the architecture is that the group surfing server goes and retrieves the web pages, the web content, and then distributes those web pages, that web content, to each of the web clients.

[00:12:47] Speaker 00:
And so the timing cannot be met. If the next page message is mapped to both 1E and 1G, well, it is the group surfing server that's actually retrieving that web content and then spreading it out to the web clients. So 1G wouldn't be met by LeBron under that understanding, which the board explained on appendix page 16 of their final written decision.

[00:13:16] Speaker 00:
And then on Appendix Page 41 of their final written decision, they explained that the next page message is not forwarded or relayed to the web clients.

[00:13:30] Speaker 00:
So, Your Honor, in addition to 1G, Intuit also would have to show that the board should be reversed on 1C and also the wherein clauses 1FI to 1F3.

[00:13:42] Speaker 00:
With regard to 1C, Intuit has not met by a preponderance of the evidence. They have not demonstrated to the board or in their appeal that by a preponderance of the evidence that they could show LeBron met claim limitation 1C. What they pointed to in LeBron was two different communication messages. Intuit pointed to, first, the session creation message, and second, a message sent by the group surfing server to its participants informing the participants in the group surfing session of the session.

[00:14:18] Speaker 00:
Your Honors, those messages the Board found in their final written decision on a preponderance of the evidence could not meet the invitation limitations of 448 Claim 1. The reason that they found that is that LeBron itself is absent of a description of an invitation framework. LeBron has these messages that it explains. It doesn't use the word invite invitation. But aside from that, it doesn't actually describe an invitation framework.

[00:14:50] Speaker 00:
And I'd like to give an example here. So my wife is an elementary school teacher. Her classroom is assigned laptops or Chromebooks.

[00:14:58] Speaker 02:
Those students could- Did the board determine that LeBron didn't describe an invitation framework?

[00:15:04] Speaker 00:
Your Honor, they- They didn't say that in their opinion, but they did state that by a preponderance of the evidence, this is at Appendix Page 30, by a preponderance of the evidence...

[00:15:18] Speaker 00:
The board considered both the direct sending argument raised by Intuit and the indirect sending argument, and they said that those two messages did not meet their understanding of what claims he wrote.

[00:15:32] Speaker 02:
But that's different. I mean, it seems on the face of it that LeBron does describe imitation frameworks.

[00:15:40] Speaker 00:
Your Honor, I'd go back to my hypothetical here. Students in a classroom, they open laptops, they run a program, they're all automatically, programmatically joined into a session of whatever computer program they're running. An invitation is not required to get participants into a session. Sure, it's one way they could get into a session, but it's not a requirement.

[00:16:04] Speaker 04:
Somehow, these invitee devices in LeBron are getting... the needed information in order to go get the web page from the website server, right?

[00:16:17] Speaker 00:
Your Honor, the architecture of LeBron is that the group surfing server in the primary embodiment goes out and retrieves the web pages, the web content itself, and then distributes the web pages, the web content to the web clients.

[00:16:33] Speaker 00:
This makes the group surfing server a bottleneck. It's retrieving the web content. It's passing it out to the web clients. This is different from the architecture that's laid out in 448 Claim 1, where the users, the host device, the guest devices are retrieving that web content.

[00:16:49] Speaker 03:
Counsel, on the other side says that only his expert addressed this point as to whether LeBron's message, for example, 151, is an invitation and gets to the invitees.

[00:17:03] Speaker 03:
Is it true that there's no other evidence in the record on this point?

[00:17:07] Speaker 00:
Your Honor, I guess two separate questions there. Did our expert also opine on this issue? I believe he did. I do not believe that that's in the record on appeal, Your Honor.

[00:17:19] Speaker 03:
Okay, so if I have to treat the record, and maybe you're saying I don't, but if I have to treat the record as completely one-sided... In his favor, how do I affirm the board's finding?

[00:17:29] Speaker 00:
Your Honor, I would look at the board's final written decision, and I would consider the evidence that they looked at, which was looking at the disclosures of LeBron, considering what was presented for them from each side, and giving deference to their decision. They looked at substantial evidence, and they ended up deciding what I would concur is what a reasonable party would decide in looking at that evidence.

[00:17:57] Speaker 00:
Your Honor, Intuit also failed to raise or failed to show what was in the wearing clauses, 1FI, 1FI2, and 1FI3.

[00:18:09] Speaker 00:
And the question before the court is, well, are those wearing clauses material to patentability? And I would say, yes, Your Honors, they are. If we look at appendix pages, excuse me here, If we look at the patent prosecution history and specifically the examiner's stated reasons for allowance, very specifically the examiner made an amendment to claim element 1FI, and very specifically the examiner stated in his reasons for allowance that that, paraphrasing that claim amendment, that that claim amendment was part of the stated reasons for allowance.

[00:18:53] Speaker 00:
And I would submit to this court, not only did the examiner The examiners state that in the prosecution history, but also those are procedural steps that are necessary for a synchronized browsing session to occur. Those are procedural steps. They're part of what it takes. Both the host device and both the invitee device need to go retrieve that web content for them to be synchronized, for them to be looking at the same web page at the same time as part of the synchronized browsing session.

[00:19:36] Speaker 00:
I would submit to this court that Intuit has not met its burden. They have not shown by a preponderance of the evidence that each of claim elements 1C, 1E, 1FI to 1F3, and 1G can be met by LeBron or LeBron in combination with Wang. I believe the board got it correct in its final written decision.

[00:19:57] Speaker 00:
On each of these claim elements, they looked at all of the same evidence, all of the same disclosures in LeBron that are now before this court on appeal.

[00:20:06] Speaker 00:
In each of these instances, they made determinations on these claim elements that they were not shown or rendered obvious by LeBron, and I believe that they came to conclusions that a reasonable mind would come to when considering this evidence.

[00:20:28] Speaker 00:
There are no other questions, Your Honor?

[00:20:31] Speaker 02:
Okay.

[00:20:32] Speaker 00:
Thank you.

[00:20:33] Speaker 02:
Thank you.

[00:20:37] Speaker 01:
Thank you, Your Honor. To address 1G, it requires that the host device in 1E and 1F preamble make a request to the website server. The request...

[00:20:58] Speaker 01:
After that, the host device transmits the information that's needed for the invitee device via the synchronization server. And after making that transmission, then receives the web page from the website server.

[00:21:18] Speaker 01:
That is described in the next page embodiment at 1616.

[00:21:26] Speaker 01:
where the group surfing server directs the target website to deliver the next page to the group surfing server itself, or in an alternative embodiment, the web client, the first web client, can request that page directly from the web client.

[00:21:46] Speaker 02:
It then sends the information to... The board said these steps occurred, but they didn't occur in the order that's specified, right?

[00:21:57] Speaker 01:
I think it has to occur in the order it's specified.

[00:22:01] Speaker 02:
The request is sent and it's sent to the website server and then the return from the website server to the host and then the sending of the material to the web browsing interaction server, whatever it is, the synchronization server.

[00:22:27] Speaker 01:
So when the website, fair point, Your Honor.

[00:22:36] Speaker 01:
It may be that that's the case. I don't think it has to be the case. And I think that LeBron effectively discloses everything, discloses both ways of doing it.

[00:22:53] Speaker 01:
Thank you, Your Honors.

[00:22:54] Speaker 02:
Thank you. Thank you, both counsel. The case is submitted.