Oral Argument Legal Case Summary

Oral Audio Transcript(Beta version)

. It might as urge them to. Perhaps the board to? We did, and the petitioner did, and their petition, Your Honor, they argued it was an ex-cubal link. In our response, we argued the claim construction was an ex-cubal link. The board itself seemed to skip over that issue. It seemed to jump right into the specification and do this backwards. They looked at the written description first, and seemed, it's a little unclear, but they seemed to want to jump from there and see if someone would divine in the abstract the term tag or token. So there was no discussion at the oral argument before the board as to the proper claim construction. In other words, as to the party saying to the board, please adopt this construction. I think the board didn't ask those questions, Your Honor. The party is agree on it. There's no dispute on what the claim construction should be, but the board didn't seem to be inquire about that issue. I think you hit on what may be the fundamental problem with the error in the board. So it's your position that we can take the construction that was proposed, now there may be some question from the aside on this, that was proposed at the board, namely what endorsement tag and token mean and executable link, right? Yes. Yes, when you adopt the board's, the party's constructions, Your Honor, the board already made the finding. They said that there's no question that the written description supports endorsement tag and token if there were a construction of executable link. Sorry, you're saying that the board expressly said, if that claim construction purposes, no, Your Honor. Endorsement tag and token mean hyperlinker executable link. They weren't explicitly, they used a construction like that for purposes of the 102 with Paul, but certainly with respect to the written description, they didn't go nearly as far as maybe what you were suggesting. Well, here's one thing that did say, Judge Chen, the board said if the specification set forth a definition that tag meant an executable link such as a hyperlink, the written description requirement clearly would have been met. They said that on the Pelopage 37. Now, what the board seemed to be saying there was the applicant had a requirement, if they were going to use a word that's not in the written description, the applicant had an requirement to expressly set forth a definition of that term. And here they said had that expressed definition and set forth the written description requirement would have clearly been met. That itself is another error that the board seemed to use. Curious why did your side come up with these terms endorsement tag and token? They're clearly nowhere in the written description. So why did you all the midstream during prosecution insert those otherwise unknown terms into the claims? That's a fair question, Your Honor. I don't think we can divine any. Well, it's your client, right? Your client wrote these claims. One, one thing your client write those claims the way they wrote those claims

. Yes, Your Honor. One thing that I can't offer as a possible explanation is the original application was filed with one prosecuting attorney. And then midstream the applicant switched to a different prosecuting attorney and a different firm. And that's when the claims were amended and I only think I can suggest as maybe did different style of prosecution and a different style of how an attorney operates. It's clear when you look at the claims though and how those two terms are used in the claims, what they do in both cases the user can execute them or interact with them in order to see the claim. Is the amendments to the claims occur before or after the CIP was filed? I'm sure you are. There was a continuation in part application filed from this from the original application, right? And then the CIP had more explanation about endorsement, tag and token. I'm not sure of the exact timing of the CIP, Your Honor. It is true there was a CIP filed during the dependency and that was filed by the new prosecuting attorney. And it did add some additional embodiments but the detail is not additional description of a link. It was more description about how this link was created such as hashing, more technical details about a particular embodiment. The original disclosure itself describes a link and even the board agreed that concept as it's claimed in the 516 patent is supported. So in the arguments that you made concerning 102 and 103, you did argue certain construction, correct? Yes, Your Honor's terms. And why shouldn't you be held to that construction with respect to 112? You mean before the board, the arguments you wanted to one and two and one and three? Well, a blue clip so argued that the construction for those terms is an executable link such as hyperlick. And that's an agreement with the petitioner's proposal as well. So we didn't feel the need for those wanted to one or three issues before the board to argue the executable link as the key issue on novelty. So that didn't really come up too much. But the fact remains, both parties agreed. We agreed with the petitioner on what the proper construction should be. One question, can we decide the case? In your view, Mr. Connor, based upon what you say is the agreed upon construction, or is there any necessity for us to send it back to the board, for the board to make a formal claim construction determination? There's no need to send this back for the board. So you would agree the board hasn't said, here's the correct construction. Well, the board implicitly accept this construction. It did analyze other issues in the petition. It analyzed one or two and one or three in front of the Paul reference, for example. And in that analysis, the board necessarily already concluded that it must be an executable link because it made findings that Paul disclosed a hyperlink. And that was the basis for finding anticipation on some of these elements within Paul. So the board's already done this

. The board's already agreed with the parties and looked at the petition this way. And the board didn't seem to disagree with this particular issue. So maybe it's possible that the board simply assumed without deciding for purposes of doing a 102 rejection. And I think I understand what you recognize as attention in the logic between assuming a claim construction for purposes of one rejection, and then concluding there's no good claim construction for another rejection. But I'm not so sure we can conclude from the fact that they did a 102 rejection that the board necessarily embraced a claim construction for purposes of the written description, given what they said on the written description rejection. I guess the follow up on Judge Scholl's question is, is it possible that we would need to remand on the written description question because assuming that you're right that there's a defect with the written description rejection, we need to hear more from the board as to, why is it that, what is it that endorsement tag and token really mean and to the extent it means something it has migrated away from the content of the written description. Or alternatively should we just reverse if you are right, because I guess in our view, anybody would know when you review the written description, the endorsement tag and token can really only mean one thing, i.e. executable link. I think your last point, Your Honor, is exactly on, on the money, and that's that reversals are probed here. There's nothing in the record that would suggest that an alternative construction would even be possible. The, even, there'd be another way of doing it, which is to say we, that may be reversing the written description rejection because in our view, the other side just hasn't met their initial burden of proof. And so without actually getting to the heart of the merits of whether there is or is not written description, we would say because the other side needed to go further in making the case for written description, just because the claim uses different words, that alone is not good enough, they have to go further and say why those different words in the claim can mean something different than what's in the spec. And then because that burden had not been met, then therefore the written description rejection cannot stand. That's right, Your Honor, that also would be a good reason to reverse and not have to remand. The, the, the, the burden of proof is on the petitioner and the only evidence that they offered with respect to claim construction with that with respect to, to the support in the written description is that the words are not used in the written description. That's it. And that the law holds that the applicant can be their own ex-cographer and that to support the written description, you don't have to use the same words. Their expert didn't say anything about the meaning of token endorsement tag in this relevant field of art. Now, that's a good point. Their expert said tag and, and token in the abstract, he, he said some things about that. But if you look at what he said, in no way that he actually do a claim construction analysis, he didn't look at the, the, the, the, the context of the patent and prosecution history and say, okay, I've got these ideas of tag and token. Let me apply it and see what a proper construction is. That part he did not do. He simply just, just, just hedged and, instead of few things about in the abstract, but there's no evidence of what that expert says of the proper claim construction except what he admits in his, in his deposition, which is that yes, it is a proper claim construction for endorsement tag and token to be an executable link. Our expert agrees in the petitioner's agree. So there is really no dispute on claim construction and nothing in the record would support something else. All the, let's left with the petitioner's burden that they tried to meet is the words are different

. And that's it. So we have to move on to the Paul reference. And thank you, patient. Thank you, Runner. As I said, there is no express disclosure in the Paul reference of the claimed invention. And the board found so. The board said several times that there is no Paul did not disclose expressly an example of two aspects of Paul that petitioner argued would be used together. And that Paul did not indicate expressly that those two routines could be used together. If we agree with the board's finding that the Paul reference expressly discloses that one of ordinary skill, that what Paul is disclosing is not only just different routines, but the, but that the routines can be combined together. The routines that it's disclosing, then would you agree at that point, then what we have here is something that's very akin to Kenne metal. And therefore, the one or two is a firmable. No, your honor for two reasons. One, the board didn't actually say that you can expressly combine Paul is expressly combined these tools. In fact, it said, I agree with you that Paul doesn't say that you can combine the refer a friend routine with the direct email marketing campaign routine. But the board nevertheless did find that Paul expressly disclosed that the various routines that Paul discloses, Paul says you can combine them. There's some boilerplate to that effect, but let's assume for a second that you can combine, it does say you can combine refer a friend tool with the direct email campaign tool that targets users. That still would not be enough. And the reason is, as petitioner's argument actually requires modifying what Paul discloses as the refer a friend tool with aspects of the campaign manager. It doesn't simply say use this tool and then combine it with this tool. In fact, if you use the refer a friend tool, what you'll do is you'll create an email and Paul describes sending that email to all users. Combining it would simply lead you over then to start a new campaign and create a new campaign using the direct email campaign tool. What petition is actually arguing is a modification of these tools, not simply combination. So when the board said, you know, without support, but when the board said that you can expressly combine these two tools, that's not enough because you still must modify the tools and there's no suggestion of modification of these tools in order to put them together to meet this claim intervention. And what the problem that the board had though when it came to that conclusion at the end, that it said that there was anticipation. It relied on one fact, and that was Dr. Yoshi's testimony. The board said that Dr. Yoshi testimony was that, quote, the campaigns can be used together

. But that actually finds no support in the record first. It contradicts what the board said. The board said we acknowledge that Paul does not indicate expressly that any of the computer routine routines in the campaign manager can be used with any of the other campaign manager computer routines. So that contradicts what it already found. And then second, when you look at what Dr. Yoshi says that the board does matter of law is can be used together enough. In other words, is it enough for Dr. Yoshi it is here? Yes, and Ryan was the other expert on the other side, right? That's correct. Is it enough for Dr. Yoshi to say they can be used together or do you have to find anticipation be able to say that the Paul reference necessarily shows that they are in fact used together? No, there could be, if it were the case that there was a suggestion and Paul that one could modify these routines in order to apply the targeted emailing to any of these other routines. If that were actually expressly in Paul, that would be a different scenario. We don't have that. If you go to the kinemmental case, for example, in there what happened was you had a claimed invention that was an apparatus with two things. And the disclosure in the prior art disclosed two things. They just weren't the exact same things. And then there were several combinations for one of those things could be and several possibilities for what the other thing could be. And therefore because it did expressly the disclose that you can put those two together. And one of the possible disclosed combinations is the claimed invention. That was anticipation. Here you haven't reached the first step. You haven't got something in Paul that would combine these two together. And that's the first step that the petitioner would have had to find for the board to reach the question. Where, looking at the 1399 appeal, that patent board decision at J829, J830, the board expressly referred to paragraphs 29 and 50 of the Paul reference. And looked at those two paragraphs to make a finding that what Paul is disclosing is not just individual routines, but Paul is also disclosing combining the various routines in various ways to make a multitude of email campaigns. So in that sense, the board has made a finding. It has made a reading about what this reference teaches to one of ordinary skill in the art. If we conclude there's substantial evidence there for that, then that's what makes this case more like Kenamite. Well, Your Honor, I think the board distinguished Kenamite based solely on Yoshi's Declaration when we pointed out Kenamite and argued that this is different than Kenamite in the opinion, the board distinguished that case solely on Dr

. Yoshi's testimony. When you look at those two paragraphs in Paul, paragraph 29 is simply boilerplate and to conclude from that, that that would meet substantial evidence that someone can simply say, everything in this patent, you can combine it in any which way possible. And for that to be able to anticipate future inventions and future technology that no one's even thought of yet, simply because it's possible that you can pick and choose from this reference and someone says boilerplate, everything in here, you can combine it in which way and that's why invention. That would be a rule that would destroy the ability for new inventions to combine new things, old things and new ways in a novel and not a successful. Well, it seems like the statement is important because if Paul, Mr. Paul, wanted to write a claim that combined two routines together, he would have written description support for that because he expressly said in a specification that you can combine two or more of these routines that he discloses. Well, you have, Your Honor, I don't think that would be enough because Paul would need to be more explicit about what it's combined. And boilerplate wouldn't be, wouldn't get you there. Paul describes a system that operates in a very specific way and refer for and operates starting on paragraphs 100 through 102. It's described in operating one way. The campaign manager is described overall as combining these two different tools, but then it specifically talks about this direct email campaigning tool beginning on paragraphs 60 and continuing through 71. When it describes how these two tools operate, the routines follow a certain path and a certain procedure. Now, simply saying that combining these two routines together isn't going to get you there. It's not enough because all you're doing is stacking one routine on each other and you complete one routine and then you finish with the other. What petitioner needs to show in order for it to anticipate is modify the refer for, refer for and routine. It doesn't operate in the way Paul describes. Instead of sending it to all members, what you do is you take this piece from the middle of the campaign manager description of the campaign tool on paragraph 64 where it describes how upon selection of the send function the user must establish which members will be sent. So you're taking the middle of the campaign tool 108 and attaching it to the middle of the refer for in tool. You're modifying it. You're not simply combining them together. You're into your rebuttal term. You want to register? Thank you. Your Honor, I'll reserve my time. The skills. Please, the court. My name is John Gill and I'm counsel for cross-appellant group on and also appellant group on in the case of the 646 Patent Appeal. I want to address requit points. Address Patent Honours commentary about Paul on the written description argument and also deal with our cross-appell argument which focuses on rats the more

. First, with respect to Paul. The Patent Honours doesn't really dispute that the four corners of Paul teach all of the claim limitations and that is what the board found. They simply try to argue that it's in two separate sections of Paul, either the advertising method which they say discloses targeted advertisements based on demographics and the refer a friend method. But I think it's clear when you read Paul as the board did that it describes a single system supported at J860 to 61. That is a system or a computer program that a person of skill in the art here, a computer scientist familiar with mobile and electronic commerce. What understand could use different tools and different routines. Do you argue in that what we have here is a case of inherent anticipation? No, Your Honor. The board does not use a herancy and its decision at all and I don't think that a herancy is needed. Paul is describing a single system not just in paragraphs 29 and 50 that Judge Chen referred to, but even if you look at paragraph 100 where it talks about the campaign manager can specifically call the refer a friend routine. It is a tool within that manager. The campaign manager is actually needed in order to run the campaign and send the email. Contrary to Patent Honours' arguments, it's not just a matter of time. I'm sorry, Miss Gillis, you're not arguing that paragraph 100 or anywhere else in Paul explicitly discloses the combination of the direct email marketing campaign routine with the refer a friend routine. Are you? I do think that that is suggested by Paul when it says that. The board didn't say that. Right? I think there's a support in the record for that where it says Paul teaches that refer a friend routine is a tool within the campaign manager and you need that campaign manager in order to send out the emails. Paul also teaches that the emails don't have to go to everyone. They can be targeted based on demographics. Does Paul teach that with respect to the refer a friend campaign? I believe it does within the context of Paul and the position. Where does it teach that? If we look at J.A.A. 866 or paragraph 51 of Paul. Also J.A.A. 871 at paragraph 77. If we look at paragraph 50 where it says Paul state sponsors can add new news items with graphics, web links or hyperlink

. Sorry, what line are you at? I'm sorry. If we look at paragraph 50 of Paul where Paul talks about sponsors can add new news items with graphics, web links or hyperlinks and have the ability to create numerous types of email campaigns such as refer a friend campaign through the campaign manager discussed later. So I think clearly Paul has contemplated that the campaign manager of this system can send targeted advertisements to specific users. I'm sorry. I didn't quite pull that out of that sentence. The sentence clearly talks about a refer a friend campaign. It doesn't say anything about doing the refer a friend campaign in a targeted customer kind of a way rather than what it earlier disclosed about just an email blast everybody. Right. I think you've got to look at multiple sections of Paul together all of which we cited our papers. I think if you look at paragraph 50 of Paul which I decided to if you look at paragraph 86 of Paul where Paul expressly discloses that when you set up a campaign the refer a friend function is available as a tool when you look at how the board found that Paul teaches all the key elements of the claims, the creating of profiles, ensuring that there's a match condition providing a subsidy all of the claimed elements and features. They don't disclose any of that in reference to the refer a friend campaign. Do they? I believe that they do and our expert Dr. Yoshi. Well what is this sentence in paragraph 50 your best sentence for the know what's your best sentence. I think again you've got to look at several paragraphs of call and look at them together. You've got to look at paragraph 29 that talks about Paul being a single system. I think you can look to figure five which again gives a diagramic view of the entire system. You can look at paragraph 50 which talks about the campaign manager being able to send refer a friend emails. I think you read that in the context of the section of Paul that talks about what the refer a friend routine is designed to do. I think you can look at paragraph 42 of Paul that talks about how profiles are generated based on geographic data. You can look at paragraph 51 that talks about the match condition for Paul. Does that with respect to refer a friend campaign again this is a system where all of these items are intended to work together akin to what Pete have judge Kim said it's like if you're using Microsoft work. What about Mr. Conrad's concern that what you have to do in order to combine the direct email marketing campaign routine which in my view is what you're describing and all those other parts of this back of Paul combining that routine with the refer a friend campaign routine that you have to do some modifications to the routines in order to get them to operate together. I don't think you need to do that. I think again looking at paragraph 51 of Paul also looking at our record at J871 paragraph 77. The campaign manager of Paul is expressly taught is having the ability to target its campaign. How you would do the combination together as I understand Mr

. Conrad he seemed to be saying you do the refer a friend campaign first routine and then you do the direct email marketing campaign after I would think it would be reverse you would do the direct email campaign first and then through that campaign you would have a sub routine the refer friend campaign. Is that possible? We need to understand for sure how it's possible to see how it matches with the claim. So what would be the combination of the two routines that one would envisage one of ordinary skilling art would envisage in order to read on every single one of these elements in the order that they're presented. One would envision that you would collect the profile and matching data as described in the earlier sections of Paul and then based on the accumulation. Talking about the direct email marketing campaign. No, no, these are. This is profile information that you can collect and then the campaign manager has access to and can control that information and then you can use a refer friend campaign to target those particular individuals that you determine best match the criteria of the advertiser at issue. I think you're exchange with just chant illustrates a problem that I'm having with this particular with your argument and in kind of mental we said that you can have this type of information if a person skilled in the art would it's not just in vision it's at once. In vision and it seems to me that you you've jumped around a lot in the Paul reference and you're going to be able to do that together and with argument cobbling together the different limitations and I'm not sure that I would call that you know once skilled in the art would at once. In vision this this combination. I respectfully disagree your honor. I think here we're dealing with someone who is at least has a bachelor of science in computer science who is very skilled with computer programming and very skilled with mobile and electric. But show me then show me show me in the in the reference just by looking at it the two of that once understand the combination. Sure like I said I think you can look at the diagram of the entire system and how the campaign manager is like the brain of that system to run various routines that the system can carry out. The system describes a means for sending targeted advertisements to specific users and away by which those users can refer those advertisements and get an incentive or reward in doing so. And our expert puts all of that together and again I direct the board to or the panel to J.A. size a 60 to 61 J.A. 18 39 to 41 J.A. 52 41 to 45 again all the various paragraphs. I'm sorry sir J.A. 5241 to 5245. So all the various paragraphs of Paul that I mentioned paragraph 29 42 50 51 53 186 57. There's no more support for Paul being one system and all of the elements being there just like 53 57. Yes sir 86 100 and the subsequent paragraphs that describe how the refer a friend routine works there is substantial evidence

. I think you might be making it unnecessarily complicated I mean if you just the board handed you a roadmap. Yes I did. There's a handful of tools here in the Paul reference one of them is the direct marketing email marketing campaign another one is the refer a friend campaign. Yes. And if you and if you look at paragraphs 29 and 50 of Paul Paul teachers that not only is he talking about individual tools he's talking about the combination of said individual tools. And so therefore the board found that Paul teachers combining the disclose tools and by that disclosure one of ordinary skill in the art would at once envision the combination of the refer a friend campaign with the direct email marketing campaign. Yes your honor I grew to 100% and I think the board summarizes that in its final written decision for the 516 for example at pages 25 to 27 I was again just trying to point the board to the numerous sections in Paul itself which describe to a post how the system works how it's one system and how these two concepts work together. I want to switch to written description. I was confused by the written description rejection because it seemed to me that what the board could have or should have done is maybe make alternative rejections either do a one of two rejection on Paul or do a written description rejection because somehow the terms token and tag means something completely different than link or token and tag or somehow and solumly ambiguous and so there's just no support for these mysterious words but as soon as you arrive at that conclusion then I don't see how you can do a 102 rejection. Likewise if you do a 102 rejection it's because you know what token and tag me a mean a link and Paul teaches a link and that's why the 102 is a firmable it seems like an either or proposition I don't see how the board was able to do a two really impose both rejections. I'll address that we group on make the alternative argument we first led with the endorsement tag and token have no 112 support and we believe that and there's ample support for that both in the final written decision and in our papers. We also make the alternative argument that if we did not prevail on 112 or those two arguments could coexist that the prior art either anticipated or rendered obvious it sounds like you agree that we can't sustain both rejections. I don't necessarily agree in one of the cases that we cite I don't have it at hand but we cited I think in our papers is a decision in which I believe this court found both in validity based on 112 and based on prior art objections so I do think there is a world where those two objections can stand side by side. If we first deal with the written description argument. So what would the logic be for how those two rejections can stand by side by side. The query for written description is is there proof within the four corners of the application that these inventors had possession of what those terms were and the p tab does acknowledge that both sides say it could mean a link and part of why group on took that position is that was the construction that was the construction that was the part of that pattern owner had used in the related litigation using the broadest construction for infringement purposes so we say if that's a construction that the court adopts for purposes of the prior art objections where is for 112 purposes proof within the four corners that this inventor had possession of these two terms. There's no dispute that endorsement tag and token are nowhere in the one for four application you asked a question about the timing that application was filed in December of 2005 it wasn't until an RCE four years later that these terms show up endorsement tag and token show up for those times. I'm still getting to my concern and, you know, and maybe there's no good answer, you know, and all we can do is just say a bunch of words at this point. I don't know, but it seems to me that if you're doing a written description rejection it's because tag and token means something different, different than the disclosed link in the written description. What is it your view of what token and tag mean because for purposes of the written description rejection I did not see the board reach any conclusion what token and tag and mean and I think it's almost a necessary step you have to do before you conclude that the written description somehow fails to support what token and tag on. I think what the board does is say first analyze whether the inventors had possession of those two terms and the board says they do not because again we have to understand what token and tag mean before we can figure out whether the inventor has possession of those terms and they say when there is certainly disclosure in the application for what is the link or what is a hyperlake and their diagrams and their paragraphs that refer to that what is missing is saying token equals hyperlake. And this goes don't don't the parties agree to that construction they say that token and tag equals hyperlake we agree to that construction for purposes of our one or two one or three arguments where we argued in the alternative and the board acknowledges that agreement with the decision but you don't agree with it for purposes of the one 12 projection for one 12 we say even if it did nowhere do you tell a person of skill in the art. That those two things are equivalent and there's reasons in the record to suggest why they're not. It doesn't that suggest that we need to have a claim construction exercise here some kind of mean if the board had said we conclude based on the arguments of the parties and our examination of the claims and the written description that endorsement tag and token mean executable hyperlink then that would be one thing if they said if the board said that the board said that the argument is not going to be a complete argument. But it said it concluded that they meant something else that being done doesn't there have to be some kind of somewhere either a claim construction that's agreed upon by the parties that a court or the board accepts or a determination by the board is to a claim construction. I do think that the board implicitly makes that construction if you look at the final written decision for the 516 for example I page 35 of that decision they say petitioner asserts as an us endorsement tag should be construed as executable links such as hyperlink and that endorsement tag must be related to an advertiser link with advertising content. And they say that if that's the construction that there's disclosure there's not disclosure of saying that word and endorsement tag but haven't said that endorsement tag equals hyperlink and if endorsement tag equals hyperlink and the hyperlink is disclosed and that's us looking at it now where in the corners of the 1 4 4. The claim construction is the claim construction and it says is done at the time of the invention, you know, and if the claim construction ultimately is that this these terms mean link then there's written description support. I guess the way I see your argument is as a matter of law in your view the specification needed to take the step of saying tag and token mean link. But if we disagree with that and conclude that our law stands for the proposition that if you use a term that is never discussed before in the spec nevertheless that claim term can is discernible based on the context of how it's used in the claim and the context of the written description then there isn't this. I don't it seems more like an indefinite in this problem in some ways but regardless then there would be written description support because we understand what the claim term means and in fact it lines up with what is being disclosed. Again, I think I would go a step further than what you're saying. I think we would say as a matter of law not only here where the patent owner doesn't say endorsement tag or token means link here we've got claims that use three different terms we've got claim terms that use endorsement tag claim terms that use token and we've got claim terms that use link for example claims 25 and 27 use link other claims use endorsement tag. Or token. What about cases like innova which says you can you you know we recognize that there are times where patent owners use different terms and the claims to refer to the same concept. Here I think if you look at the prosecution history the prosecution history undercuts them in a couple of ways they added those terms because link was rejected as being obvious. So that was motivation for them to come up with another term that meant in theory something else to overcome. If you look at the prosecution though they did a massive overhaul to the claims they didn't just delete the word link and then insert the term endorsement tag or token. It was a major overhaul claim so I don't think you can rely on that as as some kind of. Colleagues suggestion that they were trying to run away from equating endorsement tag. I think you've got to look at both the prosecution for the 516 and then look at the subsequent prosecution for the other applications once they got to patent number two the 679 patent they added additional new content new disclosure to support what. Indoorcement tag meant why would you need to do that if there was adequate written description in the one for four application there was not. Do you want to quickly address the counter claim given the fact that time is running. Sure again just a site for some record sites for our written description position J742 to 759 J828282829 the Yoshi Declaration. What's the second site I'm sorry J828282829 and our expert doctor Yoshi also gave alternative definitions for endorsement tag and token that don't equal link at J81657 to 58 and the applied medical research case that we cite in our papers as to why use of different claim terms undercuts their position. Thank you thank you. Thank you. Our cross appeal solely relates to whether or not the rats more reference is a printed publication here I think there's no dispute as to the level of skill in the art. A person with a computer science degree. The state of the internet in 2003 and 2004 the relevant critical date period here as based on a prior art reference that we rely on at J81175. Also there's an existence of a related article the rats more article from one month earlier at J8205 to 5.9. And here I think if you look at the cases that talk about public accessibility being the cornerstone of publication and whether or not a total exercising reasonable diligence could have found this reference. I think all the factors and evidence in the case support that a computer scientist fast-spiled with mobile commerce would have been able to find the rats more reference here. This is a better case than rough a Meyer the federal circuit case cited in our brief where the court there said a Canadian patent was a roadmap to deleted patent figures in a patent file. That patent file was in a physical location in one patent office in Quebec here what we what evidence though do you have that the rats for references existed in 2003 that it actually wasn't there in order to be accessible

. I guess the way I see your argument is as a matter of law in your view the specification needed to take the step of saying tag and token mean link. But if we disagree with that and conclude that our law stands for the proposition that if you use a term that is never discussed before in the spec nevertheless that claim term can is discernible based on the context of how it's used in the claim and the context of the written description then there isn't this. I don't it seems more like an indefinite in this problem in some ways but regardless then there would be written description support because we understand what the claim term means and in fact it lines up with what is being disclosed. Again, I think I would go a step further than what you're saying. I think we would say as a matter of law not only here where the patent owner doesn't say endorsement tag or token means link here we've got claims that use three different terms we've got claim terms that use endorsement tag claim terms that use token and we've got claim terms that use link for example claims 25 and 27 use link other claims use endorsement tag. Or token. What about cases like innova which says you can you you know we recognize that there are times where patent owners use different terms and the claims to refer to the same concept. Here I think if you look at the prosecution history the prosecution history undercuts them in a couple of ways they added those terms because link was rejected as being obvious. So that was motivation for them to come up with another term that meant in theory something else to overcome. If you look at the prosecution though they did a massive overhaul to the claims they didn't just delete the word link and then insert the term endorsement tag or token. It was a major overhaul claim so I don't think you can rely on that as as some kind of. Colleagues suggestion that they were trying to run away from equating endorsement tag. I think you've got to look at both the prosecution for the 516 and then look at the subsequent prosecution for the other applications once they got to patent number two the 679 patent they added additional new content new disclosure to support what. Indoorcement tag meant why would you need to do that if there was adequate written description in the one for four application there was not. Do you want to quickly address the counter claim given the fact that time is running. Sure again just a site for some record sites for our written description position J742 to 759 J828282829 the Yoshi Declaration. What's the second site I'm sorry J828282829 and our expert doctor Yoshi also gave alternative definitions for endorsement tag and token that don't equal link at J81657 to 58 and the applied medical research case that we cite in our papers as to why use of different claim terms undercuts their position. Thank you thank you. Thank you. Our cross appeal solely relates to whether or not the rats more reference is a printed publication here I think there's no dispute as to the level of skill in the art. A person with a computer science degree. The state of the internet in 2003 and 2004 the relevant critical date period here as based on a prior art reference that we rely on at J81175. Also there's an existence of a related article the rats more article from one month earlier at J8205 to 5.9. And here I think if you look at the cases that talk about public accessibility being the cornerstone of publication and whether or not a total exercising reasonable diligence could have found this reference. I think all the factors and evidence in the case support that a computer scientist fast-spiled with mobile commerce would have been able to find the rats more reference here. This is a better case than rough a Meyer the federal circuit case cited in our brief where the court there said a Canadian patent was a roadmap to deleted patent figures in a patent file. That patent file was in a physical location in one patent office in Quebec here what we what evidence though do you have that the rats for references existed in 2003 that it actually wasn't there in order to be accessible. We have two sets of metadata evidence that are not disputed we have metadata evidence at J.A. 1991 and 1992 that shows rats more was created in 2003 we have metadata evidence that said that rat more the board considered this evidence. It was in the record the board did not in my view adequately consider the wealth of evidence that supported brought to their attention yes it was your honor both in our argument and in many of the papers that second set of metadata evidence show that rats more was on the web server no later than October 2004 at J.A. 2028 which is prior to the critical date here. So there's no dispute that it was there at the relevant time period on a public website we're talking about a major university university of Maryland Baltimore County computer science double department well that that's the question concern I saw the board having was that there was no evidence that this particular page with this publication was indexed. So to the extent that a search engine would be able to find it now if you were to tell me that you could go to the official UMBC website that would have a link to the computer science department and the computer science department web page would have the direct link to rats more publication page which then has a link to the paper then that would be something to suggest that this particular link with this paper. It's been indexed or could be indexed but right now what is missing from the record and this is what the board seemed to be harping on was any suggestion that this particular page was findable by search engines and this is this point that I think our court was making and voter verified where we did find that online reference to be accessible but not because there was evidence of indexing because there was no evidence of indexing. But instead it was because that particular web page was known to those of skill in the art as a place to go to find interesting things in that relevant field which is lacking in this particular instance with respect to rats more publication page. I wanted to address voter verified first I want to say that we have unrebutted testimonial evidence from Dr. Yoshi that as of 2003 at that particular web link this article or report was available to the public for viewing and downloading that testimony. We know that the board the board I think didn't challenge the question of whether it was available at that particular URL address the board on the fact that nobody of skill in the art would know how to get to that URL address because there was no evidence of indexing nor was there any evidence that one skill in the art would know about this particular URL address and then consult with the public. I can address that again I think the facts in our case are stronger than voter verified again voter verified dealt with the Binson article which was an online periodical from the mid 90 timeframe. So we're talking about as of 1999 and there the court said that commercial internet search engines were available at that time and even though there was no evidence and voter verified that that particular article was specifically crawled or index similar to us and voter verified the court still found that it was publicly accessible. So now let's look at the time frame. Because in voter verified there was sufficient proof that the article was there and we have sufficient proof of that. So the question was whether it was available or accessible. There's got to be more than showing that it's there. Your problem is I think that you haven't shown there's evidence or problem with it. The article is actually there and your expert says well it was around or says it was around November 2003 and query whether that substantial evidence that he was there. I don't think the board quibble was whether or not it was there. I think both Yoshi's testimonial evidence showed that it was there the two sets of metadata evidence that were undisputed not challenged by patent owner showed that the article was there and available. The question the board had was could a Posa located our responses yes this Posa a computer scientist in 2003 motivated to find articles about mobile and electronic commerce where you've got a group of authors if you compare the front page of the rats more report to the front page of the related rats more article from one month earlier. You've got identity of authors you have their titles their job locations their email addresses. Just to clarify because there's a couple different things going on. You're going you're making an argument about the research eight notion right you're not making an argument that this website had been indexed or that this website was really popular among those of ornars skill in the art. So they would already know to go to this you are a right

. We have two sets of metadata evidence that are not disputed we have metadata evidence at J.A. 1991 and 1992 that shows rats more was created in 2003 we have metadata evidence that said that rat more the board considered this evidence. It was in the record the board did not in my view adequately consider the wealth of evidence that supported brought to their attention yes it was your honor both in our argument and in many of the papers that second set of metadata evidence show that rats more was on the web server no later than October 2004 at J.A. 2028 which is prior to the critical date here. So there's no dispute that it was there at the relevant time period on a public website we're talking about a major university university of Maryland Baltimore County computer science double department well that that's the question concern I saw the board having was that there was no evidence that this particular page with this publication was indexed. So to the extent that a search engine would be able to find it now if you were to tell me that you could go to the official UMBC website that would have a link to the computer science department and the computer science department web page would have the direct link to rats more publication page which then has a link to the paper then that would be something to suggest that this particular link with this paper. It's been indexed or could be indexed but right now what is missing from the record and this is what the board seemed to be harping on was any suggestion that this particular page was findable by search engines and this is this point that I think our court was making and voter verified where we did find that online reference to be accessible but not because there was evidence of indexing because there was no evidence of indexing. But instead it was because that particular web page was known to those of skill in the art as a place to go to find interesting things in that relevant field which is lacking in this particular instance with respect to rats more publication page. I wanted to address voter verified first I want to say that we have unrebutted testimonial evidence from Dr. Yoshi that as of 2003 at that particular web link this article or report was available to the public for viewing and downloading that testimony. We know that the board the board I think didn't challenge the question of whether it was available at that particular URL address the board on the fact that nobody of skill in the art would know how to get to that URL address because there was no evidence of indexing nor was there any evidence that one skill in the art would know about this particular URL address and then consult with the public. I can address that again I think the facts in our case are stronger than voter verified again voter verified dealt with the Binson article which was an online periodical from the mid 90 timeframe. So we're talking about as of 1999 and there the court said that commercial internet search engines were available at that time and even though there was no evidence and voter verified that that particular article was specifically crawled or index similar to us and voter verified the court still found that it was publicly accessible. So now let's look at the time frame. Because in voter verified there was sufficient proof that the article was there and we have sufficient proof of that. So the question was whether it was available or accessible. There's got to be more than showing that it's there. Your problem is I think that you haven't shown there's evidence or problem with it. The article is actually there and your expert says well it was around or says it was around November 2003 and query whether that substantial evidence that he was there. I don't think the board quibble was whether or not it was there. I think both Yoshi's testimonial evidence showed that it was there the two sets of metadata evidence that were undisputed not challenged by patent owner showed that the article was there and available. The question the board had was could a Posa located our responses yes this Posa a computer scientist in 2003 motivated to find articles about mobile and electronic commerce where you've got a group of authors if you compare the front page of the rats more report to the front page of the related rats more article from one month earlier. You've got identity of authors you have their titles their job locations their email addresses. Just to clarify because there's a couple different things going on. You're going you're making an argument about the research eight notion right you're not making an argument that this website had been indexed or that this website was really popular among those of ornars skill in the art. So they would already know to go to this you are a right. I'm focusing on research it I'm making to I'm making both of those arguments and let me try to separate them. Yes this was a website that I think people of skill and the art would have gone to it is a major university website it is a computer science and double Lee department of that website and it is the location of multiple authors professors who are known in this space to be working on these topics. They have published on e-commerce you want to wind up your your out of time. Yes so again voter verified indexing was not done in that case that was nineteen ninety nine where five years later with the critical date here where search engines are advanced and we're talking about a major university website and computer science folks when you look at the research aid of Cornell or Brooklyn Meyer clearly the rats more article at twenty fifty two was a sufficient research aid where that article was downloaded more than four thousand times. A person of skill in the art would have been motivated where that article said we are doing more we're getting government funding we are expanding on this. A person of skill would have been motivated to look up doctor rats more go to the UMB site if you plug in her name you get to either ubiquity publications you're making you're making new arguments I know you get asked you to conclude. I'm I'm going to restore you back to five minutes from your for your your bottle. Okay because we could kill of course and thank you very much. Thank you Anna. Yeah for him. Your honors may place the court the director intervening this in these cases to address the boards initial determination as blue colipsos did not address that issue in its opening we request that the court. Affirm the boards initial determination that blue colipsos patents are covered business method patents subject to CBM review. This is quick question what's the difference between a a covered business method and a business method when it's not covered a covered business method and one that is not covered a covered business method patent includes any sort of data or processes that are that have a that include a financial component. And so in that sense that whether or not there is something that that uses a data processing or a management system in a in the financial sector or industry but as as the board found and as the as the regulations include those that that determination is not just limited to the financial sector. But could you explain what would be an example of an uncovered business method of an uncovered business method. Yeah. I mean it says covered business method as I understand Judge Rainer's question that means there is likely uncovered business methods. So what kinds of business method patents are not eligible for the covered business method patent proceeding. If the business method did not have anything to do with the practice administration or management of a financial product to service then I guess it would not be a covered business method patent or if it was a technical invention then it would not be a covered business method patent. You say that all business pens have some have a financial sector to it or financial purpose to all business methods. Yes. Well here the determination is directed to the claims themselves. So to the extent the claims themselves have a financial component they would be a covered business method but to the extent that they don't they would not be they would not fall under that definition. Does that answer your question? That's okay. You can go on. Yeah. I'm just curious. What kind of patent that relates to commerce would not qualify for covered business method patent or another way of putting it is is that the agency's view that anything related to e-commerce is a covered business method patent eligible for this proceeding

. I'm focusing on research it I'm making to I'm making both of those arguments and let me try to separate them. Yes this was a website that I think people of skill and the art would have gone to it is a major university website it is a computer science and double Lee department of that website and it is the location of multiple authors professors who are known in this space to be working on these topics. They have published on e-commerce you want to wind up your your out of time. Yes so again voter verified indexing was not done in that case that was nineteen ninety nine where five years later with the critical date here where search engines are advanced and we're talking about a major university website and computer science folks when you look at the research aid of Cornell or Brooklyn Meyer clearly the rats more article at twenty fifty two was a sufficient research aid where that article was downloaded more than four thousand times. A person of skill in the art would have been motivated where that article said we are doing more we're getting government funding we are expanding on this. A person of skill would have been motivated to look up doctor rats more go to the UMB site if you plug in her name you get to either ubiquity publications you're making you're making new arguments I know you get asked you to conclude. I'm I'm going to restore you back to five minutes from your for your your bottle. Okay because we could kill of course and thank you very much. Thank you Anna. Yeah for him. Your honors may place the court the director intervening this in these cases to address the boards initial determination as blue colipsos did not address that issue in its opening we request that the court. Affirm the boards initial determination that blue colipsos patents are covered business method patents subject to CBM review. This is quick question what's the difference between a a covered business method and a business method when it's not covered a covered business method and one that is not covered a covered business method patent includes any sort of data or processes that are that have a that include a financial component. And so in that sense that whether or not there is something that that uses a data processing or a management system in a in the financial sector or industry but as as the board found and as the as the regulations include those that that determination is not just limited to the financial sector. But could you explain what would be an example of an uncovered business method of an uncovered business method. Yeah. I mean it says covered business method as I understand Judge Rainer's question that means there is likely uncovered business methods. So what kinds of business method patents are not eligible for the covered business method patent proceeding. If the business method did not have anything to do with the practice administration or management of a financial product to service then I guess it would not be a covered business method patent or if it was a technical invention then it would not be a covered business method patent. You say that all business pens have some have a financial sector to it or financial purpose to all business methods. Yes. Well here the determination is directed to the claims themselves. So to the extent the claims themselves have a financial component they would be a covered business method but to the extent that they don't they would not be they would not fall under that definition. Does that answer your question? That's okay. You can go on. Yeah. I'm just curious. What kind of patent that relates to commerce would not qualify for covered business method patent or another way of putting it is is that the agency's view that anything related to e-commerce is a covered business method patent eligible for this proceeding. I think any patent that claims e-commerce that includes a financial component would be covered by the covered business method patent definition and would be subject to CBN review. So it is a broad definition and e-commerce patents such as the one that are at issue here are the type that would be covered by the CBN definition and subject to CBN review. What about a patent for example that would help a business owner determine whether they locked the doors at night or not. Would that be a covered business method patent? Well to the extent that claims themselves included something that also had a financial aspect to it then I think they would be covered but you would have to look at the claims themselves. In that hypothetical you're asking me what the patent is generally directed to but what the board does is look at the claims themselves to determine whether or not it is a covered business method patent within the data. The example I gave you the business owner's concern about losing having somebody break in or or or or still things and some just curious whether that business patent. It has a financial sector in it or not in your mind. Well I think again to the extent that claims themselves had some sort of financial component to them. But the business pens I mean these are the business so don't they all have some sort of financial component built into them. Well the CBN proceedings were instituted to address a specific type of patent that that's my point I agree. What type of pens do they not address? They would address patents that would fall out of that definition. So to the extent in your hypothetical if the business method relates to protecting homeowners from people who are breaking into their homes. The business owners. If there is nothing in that claim that brings in the definition that the that the Congress as well as the used to put in some regulations then it would not fall under the definition of a cover business that the pen. One question on the regulation for technological invention. I mean I saw a part of the regulation say that a condition to be a technological invention or not a technological invention. And therefore institute one of these proceedings is to see whether the patentable advance in the claim is technological in nature somehow. And I was just wondering why is it reasonable that something that seems to be a merits based final determination would be a basis for figuring out whether to institute the proceeding in the first place. So the technological invention aspect is an exception to the CBM proceeding and the reason the board looks at that issue is because there are certain patents where although they may have a claim that's directed to a covered business method. There is something else in that invention that I guess will lifted out of that out of that arena and has a technological aspect to it wherein there is something that they're using whether it be a new type of software or a new type of routine or anything that is not within the norm of the technology in that area that will lifted out of the CBM definition. So. But as I understand it this is a merits based determination right from the final determination is a merits based determination. But in terms of understanding the regulation for instituting one of these proceedings it very much looks like a merits based conclusion that there is or is not a technological patentable advance over the prior art. Am I misreading the regulation? Well the board is not making a 102 or 103 determination at that point all the board is doing is looking at the claims themselves and determining if those claims bring forth some sort of technological idea or notion that would that would lift it from the CBM definition. So they're not making a merits based determination based on 102 or 103 at that point. They're comparing it to the prior art though right. They're comparing it to the prior art in the sense is is that is there anything that's only generic to the claim that's I mean generic in the sense that generic to the technology of the claim in the claims that issue here all the technology that was related to in the claims with generic in nature and there was nothing that was new in the terms of the technology that was used. Anything you want to add in conclusion? No that is all your honor

. I think any patent that claims e-commerce that includes a financial component would be covered by the covered business method patent definition and would be subject to CBN review. So it is a broad definition and e-commerce patents such as the one that are at issue here are the type that would be covered by the CBN definition and subject to CBN review. What about a patent for example that would help a business owner determine whether they locked the doors at night or not. Would that be a covered business method patent? Well to the extent that claims themselves included something that also had a financial aspect to it then I think they would be covered but you would have to look at the claims themselves. In that hypothetical you're asking me what the patent is generally directed to but what the board does is look at the claims themselves to determine whether or not it is a covered business method patent within the data. The example I gave you the business owner's concern about losing having somebody break in or or or or still things and some just curious whether that business patent. It has a financial sector in it or not in your mind. Well I think again to the extent that claims themselves had some sort of financial component to them. But the business pens I mean these are the business so don't they all have some sort of financial component built into them. Well the CBN proceedings were instituted to address a specific type of patent that that's my point I agree. What type of pens do they not address? They would address patents that would fall out of that definition. So to the extent in your hypothetical if the business method relates to protecting homeowners from people who are breaking into their homes. The business owners. If there is nothing in that claim that brings in the definition that the that the Congress as well as the used to put in some regulations then it would not fall under the definition of a cover business that the pen. One question on the regulation for technological invention. I mean I saw a part of the regulation say that a condition to be a technological invention or not a technological invention. And therefore institute one of these proceedings is to see whether the patentable advance in the claim is technological in nature somehow. And I was just wondering why is it reasonable that something that seems to be a merits based final determination would be a basis for figuring out whether to institute the proceeding in the first place. So the technological invention aspect is an exception to the CBM proceeding and the reason the board looks at that issue is because there are certain patents where although they may have a claim that's directed to a covered business method. There is something else in that invention that I guess will lifted out of that out of that arena and has a technological aspect to it wherein there is something that they're using whether it be a new type of software or a new type of routine or anything that is not within the norm of the technology in that area that will lifted out of the CBM definition. So. But as I understand it this is a merits based determination right from the final determination is a merits based determination. But in terms of understanding the regulation for instituting one of these proceedings it very much looks like a merits based conclusion that there is or is not a technological patentable advance over the prior art. Am I misreading the regulation? Well the board is not making a 102 or 103 determination at that point all the board is doing is looking at the claims themselves and determining if those claims bring forth some sort of technological idea or notion that would that would lift it from the CBM definition. So they're not making a merits based determination based on 102 or 103 at that point. They're comparing it to the prior art though right. They're comparing it to the prior art in the sense is is that is there anything that's only generic to the claim that's I mean generic in the sense that generic to the technology of the claim in the claims that issue here all the technology that was related to in the claims with generic in nature and there was nothing that was new in the terms of the technology that was used. Anything you want to add in conclusion? No that is all your honor. I owe my time. Thank you. I'm first going to address the issue of rats and more. There's two failures of proof that the petitioner has here. The first as you heard during argument was the issue of was there a road map that would lead an interested researcher ultimately to the destination where this paper may have been. And there's there's simply no proof in the record and this is the problem the board have. There's no proof in the record of how one could get to that paper. Whether it's by indexing through search engines whether it's by following some path or series of links or anything. There's just no evidence at all and this wasn't something that would have been difficult to do had that are in fact skill is saying that the UMBC computer science department is a significant department doing research in this area and therefore one of ordinary skill in the art would be inclined to go digging through the computer science. And that's a website in order to see what's going on and then ultimately find miss rats and more page what's your answer to that? How is that any different then first off how is that any different than saying that it would be enough for someone to go digging through some library somewhere to find a book that's on on the shelf but is not an end to like index or catalog you'd have to go through every single stack want to find these books. In that situation there's no public accessibility or availability there is there anything in the record that shows that when you're at the computer science department's website there's a link from that website the computer science department's website to miss rats and more publications page. During the relevant time there's zero proof that there's any link at all to Dr. Ratzi Moore's personal web space and it is only in her personal web space where this paper is eventually found we know it's found today. So you'd have to know the specific URL address in order to get there that's going to be able to get there through the computer science department's website. That's right based on the record today that was presented to the board when you look at what there was at the relevant time any relevant time for these patents what would take someone from the main page of the computer science department all the way to eventually where the patent was ultimately found that's there's no proof of that. Now that would not have been a difficult thing to do we raised this issue during the proceeding and petitioner has an expert who wrote the paper and is still a professor at this university all he did was say in his original declaration this was available somewhere on the website in 2003. He did not come back in his supplemental declaration and provide more proof a full listening proof which he was in full control of to be able to do this is how it worked this is what the website looked like this is where people would have gone to this is where we would have been someone would have been led to this is how we would follow links. The simple conclusion from all this lack of proof is that that trail didn't exist so even if you assume someone would have been. You know, one to follow the trail the trail didn't exist at the time there's no proof of that that's the proof of the trail that that's the issue with the trail there is no proof the second issue is as I alluded to time. There is I think petitioner raised one issue of a bio page that had a link on Mr. Dr. Ratzimor's web official bio page there's no proof that that is how the page ever looked prior to 2004 that's something that that Dr. Yoshi their expert could have testified to if it were true and that there was actually something available but that's just not the case there's no proof there. Dr. the panel noted Dr. Yoshi's testimony is really the only thing that suggests that this paper was available on this website at the time and and all he says is it was available and that's even contradicted by the fact that the official website doesn't list this paper. The project page doesn't list this paper. The only person that lists this paper is Dr

. I owe my time. Thank you. I'm first going to address the issue of rats and more. There's two failures of proof that the petitioner has here. The first as you heard during argument was the issue of was there a road map that would lead an interested researcher ultimately to the destination where this paper may have been. And there's there's simply no proof in the record and this is the problem the board have. There's no proof in the record of how one could get to that paper. Whether it's by indexing through search engines whether it's by following some path or series of links or anything. There's just no evidence at all and this wasn't something that would have been difficult to do had that are in fact skill is saying that the UMBC computer science department is a significant department doing research in this area and therefore one of ordinary skill in the art would be inclined to go digging through the computer science. And that's a website in order to see what's going on and then ultimately find miss rats and more page what's your answer to that? How is that any different then first off how is that any different than saying that it would be enough for someone to go digging through some library somewhere to find a book that's on on the shelf but is not an end to like index or catalog you'd have to go through every single stack want to find these books. In that situation there's no public accessibility or availability there is there anything in the record that shows that when you're at the computer science department's website there's a link from that website the computer science department's website to miss rats and more publications page. During the relevant time there's zero proof that there's any link at all to Dr. Ratzi Moore's personal web space and it is only in her personal web space where this paper is eventually found we know it's found today. So you'd have to know the specific URL address in order to get there that's going to be able to get there through the computer science department's website. That's right based on the record today that was presented to the board when you look at what there was at the relevant time any relevant time for these patents what would take someone from the main page of the computer science department all the way to eventually where the patent was ultimately found that's there's no proof of that. Now that would not have been a difficult thing to do we raised this issue during the proceeding and petitioner has an expert who wrote the paper and is still a professor at this university all he did was say in his original declaration this was available somewhere on the website in 2003. He did not come back in his supplemental declaration and provide more proof a full listening proof which he was in full control of to be able to do this is how it worked this is what the website looked like this is where people would have gone to this is where we would have been someone would have been led to this is how we would follow links. The simple conclusion from all this lack of proof is that that trail didn't exist so even if you assume someone would have been. You know, one to follow the trail the trail didn't exist at the time there's no proof of that that's the proof of the trail that that's the issue with the trail there is no proof the second issue is as I alluded to time. There is I think petitioner raised one issue of a bio page that had a link on Mr. Dr. Ratzimor's web official bio page there's no proof that that is how the page ever looked prior to 2004 that's something that that Dr. Yoshi their expert could have testified to if it were true and that there was actually something available but that's just not the case there's no proof there. Dr. the panel noted Dr. Yoshi's testimony is really the only thing that suggests that this paper was available on this website at the time and and all he says is it was available and that's even contradicted by the fact that the official website doesn't list this paper. The project page doesn't list this paper. The only person that lists this paper is Dr. Ratzimor at some point in time and that's all on a personal site. What about the research aid argument with respect to the Ratzimor article? Heading that this Ratzimor team was doing a lot further investigation and work in this very area and therefore one of ordinary skill would be motivated to go looking around for what else Ratzimor was up to. You're talking first about a significant jump of being able to follow a trail and then second there's no proof that the trail ultimately would lead you there. The Ratzimor paper in October of 2003 only lists the names of the authors and and their university. It doesn't cite the reference the Ratzimor reference that was that was an issue. It doesn't say it exists. It doesn't cite a website address. It doesn't cite a project address. There's nothing that would lead someone directly to the university's website and then ultimately how would they get to this publication. You just can't follow that path. That's different than the case law where for example I forget the name of the one case but there was an explicit reference to this paper that was at issue in the prior art. One would have known that that paper existed and could have sorted out here. No one would know that this paper existed from the October 2003 publication. Ultimately this comes down to a judgment call by the board. The reason being that there are a lot of factual issues here that were weighed. It's not simply an area where the parties agree on what the relevant facts are and we can work on the law based on that. Here the petitioner was relying on Dr. Yoshi's testimony. We presented evidence that that was unreliable and incorrect that the paper wasn't available on the official website. They presented here say evidence of particular dates and various times 2003, 4, 5, they argued 2007 that the reliability of those dates, what they mean, that was all a judgment call for the board to make. We treat the argument concerning the metadata evidence. Very simple your honor. A metadata evidence is evidence of the creation of those documents but not any evidence of dissemination or availability. The fact that the document was created on a computer doesn't indicate in any way that it could have been accessed by anyone outside of the computer at any particular address. All it was is it's created, not disseminated. Is that into your question? And briefly I'd like to get to the written description argument. The only evidence that the petitioner offered is that the words are not the same. That's a failure proof

. Ratzimor at some point in time and that's all on a personal site. What about the research aid argument with respect to the Ratzimor article? Heading that this Ratzimor team was doing a lot further investigation and work in this very area and therefore one of ordinary skill would be motivated to go looking around for what else Ratzimor was up to. You're talking first about a significant jump of being able to follow a trail and then second there's no proof that the trail ultimately would lead you there. The Ratzimor paper in October of 2003 only lists the names of the authors and and their university. It doesn't cite the reference the Ratzimor reference that was that was an issue. It doesn't say it exists. It doesn't cite a website address. It doesn't cite a project address. There's nothing that would lead someone directly to the university's website and then ultimately how would they get to this publication. You just can't follow that path. That's different than the case law where for example I forget the name of the one case but there was an explicit reference to this paper that was at issue in the prior art. One would have known that that paper existed and could have sorted out here. No one would know that this paper existed from the October 2003 publication. Ultimately this comes down to a judgment call by the board. The reason being that there are a lot of factual issues here that were weighed. It's not simply an area where the parties agree on what the relevant facts are and we can work on the law based on that. Here the petitioner was relying on Dr. Yoshi's testimony. We presented evidence that that was unreliable and incorrect that the paper wasn't available on the official website. They presented here say evidence of particular dates and various times 2003, 4, 5, they argued 2007 that the reliability of those dates, what they mean, that was all a judgment call for the board to make. We treat the argument concerning the metadata evidence. Very simple your honor. A metadata evidence is evidence of the creation of those documents but not any evidence of dissemination or availability. The fact that the document was created on a computer doesn't indicate in any way that it could have been accessed by anyone outside of the computer at any particular address. All it was is it's created, not disseminated. Is that into your question? And briefly I'd like to get to the written description argument. The only evidence that the petitioner offered is that the words are not the same. That's a failure proof. Our expert at 4, 7, 3, 5 and the 516 appendix offered testimony about how he would have viewed how he looked at the specification, would have understood and come to these claims. The petitioner's expert could have contradicted that, could have rebutted that, but he was silent on how one actually construes these claims. All you're left with is the fact that the words are different. And that ultimately is a failure proof and this panel can reverse the decision, it doesn't have to remand it. Finally on Paul I'd like to point out that the campaign manager is the overall program is got to be very careful but that when you refer to that you're referring generally to the overall program. Element 108 is the campaign tool. That's the direct email tool with the demographic targeting. The refer friend tool is a separate tool. Don't we don't want to confuse this overall campaign manager with the two distinct tools that are explicitly described and how they operate. If there are no other questions, thank you. Well, thank you very much. I want to start briefly with Ratsmore. Again, if you look at what's in the record at J.A.453, what Pat and owner calls the official university, you pick what he website. That website, if you click on people and you put in Ratsmore, you get this page, which is in the record at J.A.453, that page has the same URL link. The doctor Yoshi refers to in his declaration. It says J.A.453 exists in 2003. This is an alumni page. This is an identifier and a volunteer. This is a website about ubiquity, which is the page. I'm seeing here that says alumnus graduation date May 2007. This seems to have been a particular page created after May 2007. No, sir

. Our expert at 4, 7, 3, 5 and the 516 appendix offered testimony about how he would have viewed how he looked at the specification, would have understood and come to these claims. The petitioner's expert could have contradicted that, could have rebutted that, but he was silent on how one actually construes these claims. All you're left with is the fact that the words are different. And that ultimately is a failure proof and this panel can reverse the decision, it doesn't have to remand it. Finally on Paul I'd like to point out that the campaign manager is the overall program is got to be very careful but that when you refer to that you're referring generally to the overall program. Element 108 is the campaign tool. That's the direct email tool with the demographic targeting. The refer friend tool is a separate tool. Don't we don't want to confuse this overall campaign manager with the two distinct tools that are explicitly described and how they operate. If there are no other questions, thank you. Well, thank you very much. I want to start briefly with Ratsmore. Again, if you look at what's in the record at J.A.453, what Pat and owner calls the official university, you pick what he website. That website, if you click on people and you put in Ratsmore, you get this page, which is in the record at J.A.453, that page has the same URL link. The doctor Yoshi refers to in his declaration. It says J.A.453 exists in 2003. This is an alumni page. This is an identifier and a volunteer. This is a website about ubiquity, which is the page. I'm seeing here that says alumnus graduation date May 2007. This seems to have been a particular page created after May 2007. No, sir. The ubiquity is a section of the UMB website which organizes papers in this e-commerce, mobile commerce area. It identifies Dr. Ratsmore as an alumnus because as of the present day, she is no longer with the university. But proof that this page would have looked virtually identical, particularly what is that the URL would have been virtually identical, saying URL link that you would get when you pull up the UMBC ubiquity site, click people, one click to Ratsmore, and you go to this URL, which is a hot link to her publications page. This same hot link is the hot link that Dr. Yoshi and his declaration said where the article or report was available for viewing. Yes, where he says in 2003 this report was available and we have in the record at J.A.833 that that page was last updated in 2005. So this is not something that is being done in present day. This is all prior work. This is a better roadmap than what was in Cornell and Brookamire because again, where did Dr. Yoshi say that the page of J.A.4543 existed in 2003? What he says is that the report was available at this link. So what I'm saying to you is where this link and what is on that link was last update in 2005. That suggests its existence prior to 2005. Right. So the link that this web page refers to existed in 2003, but I don't see any evidence in the record that anyone testified that this page with this particular address existed in 2003. But I'm saying is Dr. Yoshi testified that this link that is shown on this page existed in 2003 and that that link is where you could get the report. What we also have in the record is the metadata to show that the report was there. What we additionally have in the report was that that page at this link was last updated in 2005. Is the metadata to show that the report was there or simply when it was created? It shows two things. We have metadata evidence that shows it was created in 2003 at one record site and we have metadata evidence. And that that first metadata evidence is that site J.A. 1991 in 1992 and then evidence that it was on the server at at least as of October of 2004 at J

. The ubiquity is a section of the UMB website which organizes papers in this e-commerce, mobile commerce area. It identifies Dr. Ratsmore as an alumnus because as of the present day, she is no longer with the university. But proof that this page would have looked virtually identical, particularly what is that the URL would have been virtually identical, saying URL link that you would get when you pull up the UMBC ubiquity site, click people, one click to Ratsmore, and you go to this URL, which is a hot link to her publications page. This same hot link is the hot link that Dr. Yoshi and his declaration said where the article or report was available for viewing. Yes, where he says in 2003 this report was available and we have in the record at J.A.833 that that page was last updated in 2005. So this is not something that is being done in present day. This is all prior work. This is a better roadmap than what was in Cornell and Brookamire because again, where did Dr. Yoshi say that the page of J.A.4543 existed in 2003? What he says is that the report was available at this link. So what I'm saying to you is where this link and what is on that link was last update in 2005. That suggests its existence prior to 2005. Right. So the link that this web page refers to existed in 2003, but I don't see any evidence in the record that anyone testified that this page with this particular address existed in 2003. But I'm saying is Dr. Yoshi testified that this link that is shown on this page existed in 2003 and that that link is where you could get the report. What we also have in the record is the metadata to show that the report was there. What we additionally have in the report was that that page at this link was last updated in 2005. Is the metadata to show that the report was there or simply when it was created? It shows two things. We have metadata evidence that shows it was created in 2003 at one record site and we have metadata evidence. And that that first metadata evidence is that site J.A. 1991 in 1992 and then evidence that it was on the server at at least as of October of 2004 at J.A. 2028. Again, part of the environment that we're in is the ubiquity site is where these particular authors collected their work related to this subject matter. So if you go to UMBC and you type in rats more, you might get this page. If you got a rats more, you might get her ubiquity page. You're one click away from the technical report at most two. This is better than the roadmap in Cornell and Brookamire where you had to have an article in hand online and then go to an office, a physical location. We're talking about two or three clicks. Is there any evidence of anyone actually having access to article by following the link that you're citing? I think through the exercise of reasonable diligence, any of the number of 4,000 plus people, whether it is in the record that more than 4,000 downloads of the related rats more article where you could find that article on the same publication page where the technical report exists. It is certainly reasonable to conclude that a post exercising reasonable diligence under voter verify would have found it and would have been motivated to find it where the article says we're going to build on this research. We're going to do more of getting government funding. Well, we have to decide whether the board had substantial evidence to conclude the opposite. I don't think they did your honor. I think the substantial evidence is better than voter verify, better than bear, better than cron and bread and then Brookamire. Basically on call, again, the patent owner is making the false argument that there are two completely separate systems. Again, call discloses, how to store profiles, how to use the campaign manager to start a campaign, how to then tell the campaign manager to direct the campaign, specific individuals based on profile data that you've collected, and how to use the refer-friend tool, which computer programmers know, programs have tools and routines that can be called to do that. The board found that an opposed would have understood it and been able to combine it. A written description. The skills can you conclude, pretty soon? Yes, sir. Again, you're in your rebuttal on your cross appeal, right? Right now? Yes, you're probably right, so I probably need to. Without, unless there's any further questions, we would ask the board, I mean, the panel reverse the board with respect to ratsmora and finite ratsmora, either alone or with the cited references, renders the challenge claims and valid. Thank you. You thank the party for the arguments and we'll take it under the advisory.

We have before us today five different cases. Four cases are being argued. And one case has been submitted on the briefs. We've consolidated the four cases of argument this morning given their common issues. And let me make sure I have this right. And that said, a parent petitioner has 20 minutes in their direct and can we bottle? Is that correct? That's correct, Rob. And then on the other side, same thing. We've got 20, 10 and five minutes. We've allotted to the government. Is that correct? That's correct, Carter. OK, well, let's get going here. Mr. Conrad, let me proceed. Good morning. May I please the court? My name is David Conrad. I'm representing the appellant blue flip. So I'm going to focus my arguments today on two legal errors by the court. The first issue is the written description issue for the 516 patent where the board found that there was, or the parties agreed that the claim construction for two terms endorsement tag and token was an executable link. And the board found that there is no question that there is an executable link to describe in the original specification. The second issue I'm going to speak about today is the issue of Paul and anticipation. There, the board found that there is no express disclosure in Paul of the claim invention. And it didn't find that the claim invention was either inherent in Paul. And therefore, there's no anticipation, but yet the board found anticipation anyways. I'm going to turn first to the issue of written description. Conrad, on that, what was the dialogue, if you will, before the board on that? Because the case has seemed to make it fairly clear that in a written description situation, you start out with claim construction. And then the question is, the claim is properly construed. Does the record show that the inventor was in possession of what is the construed claim? And we had these two definitions. We had this definition of tag and endorsement, token and endorsement tag. Was there a discussion of claim construction between the board and the parties? At the, because the board didn't do any claim construction? I think you hit the key point, Your Honor, that the board did not do claim construction on this issue. It might as urge them to. Perhaps the board to? We did, and the petitioner did, and their petition, Your Honor, they argued it was an ex-cubal link. In our response, we argued the claim construction was an ex-cubal link. The board itself seemed to skip over that issue. It seemed to jump right into the specification and do this backwards. They looked at the written description first, and seemed, it's a little unclear, but they seemed to want to jump from there and see if someone would divine in the abstract the term tag or token. So there was no discussion at the oral argument before the board as to the proper claim construction. In other words, as to the party saying to the board, please adopt this construction. I think the board didn't ask those questions, Your Honor. The party is agree on it. There's no dispute on what the claim construction should be, but the board didn't seem to be inquire about that issue. I think you hit on what may be the fundamental problem with the error in the board. So it's your position that we can take the construction that was proposed, now there may be some question from the aside on this, that was proposed at the board, namely what endorsement tag and token mean and executable link, right? Yes. Yes, when you adopt the board's, the party's constructions, Your Honor, the board already made the finding. They said that there's no question that the written description supports endorsement tag and token if there were a construction of executable link. Sorry, you're saying that the board expressly said, if that claim construction purposes, no, Your Honor. Endorsement tag and token mean hyperlinker executable link. They weren't explicitly, they used a construction like that for purposes of the 102 with Paul, but certainly with respect to the written description, they didn't go nearly as far as maybe what you were suggesting. Well, here's one thing that did say, Judge Chen, the board said if the specification set forth a definition that tag meant an executable link such as a hyperlink, the written description requirement clearly would have been met. They said that on the Pelopage 37. Now, what the board seemed to be saying there was the applicant had a requirement, if they were going to use a word that's not in the written description, the applicant had an requirement to expressly set forth a definition of that term. And here they said had that expressed definition and set forth the written description requirement would have clearly been met. That itself is another error that the board seemed to use. Curious why did your side come up with these terms endorsement tag and token? They're clearly nowhere in the written description. So why did you all the midstream during prosecution insert those otherwise unknown terms into the claims? That's a fair question, Your Honor. I don't think we can divine any. Well, it's your client, right? Your client wrote these claims. One, one thing your client write those claims the way they wrote those claims. Yes, Your Honor. One thing that I can't offer as a possible explanation is the original application was filed with one prosecuting attorney. And then midstream the applicant switched to a different prosecuting attorney and a different firm. And that's when the claims were amended and I only think I can suggest as maybe did different style of prosecution and a different style of how an attorney operates. It's clear when you look at the claims though and how those two terms are used in the claims, what they do in both cases the user can execute them or interact with them in order to see the claim. Is the amendments to the claims occur before or after the CIP was filed? I'm sure you are. There was a continuation in part application filed from this from the original application, right? And then the CIP had more explanation about endorsement, tag and token. I'm not sure of the exact timing of the CIP, Your Honor. It is true there was a CIP filed during the dependency and that was filed by the new prosecuting attorney. And it did add some additional embodiments but the detail is not additional description of a link. It was more description about how this link was created such as hashing, more technical details about a particular embodiment. The original disclosure itself describes a link and even the board agreed that concept as it's claimed in the 516 patent is supported. So in the arguments that you made concerning 102 and 103, you did argue certain construction, correct? Yes, Your Honor's terms. And why shouldn't you be held to that construction with respect to 112? You mean before the board, the arguments you wanted to one and two and one and three? Well, a blue clip so argued that the construction for those terms is an executable link such as hyperlick. And that's an agreement with the petitioner's proposal as well. So we didn't feel the need for those wanted to one or three issues before the board to argue the executable link as the key issue on novelty. So that didn't really come up too much. But the fact remains, both parties agreed. We agreed with the petitioner on what the proper construction should be. One question, can we decide the case? In your view, Mr. Connor, based upon what you say is the agreed upon construction, or is there any necessity for us to send it back to the board, for the board to make a formal claim construction determination? There's no need to send this back for the board. So you would agree the board hasn't said, here's the correct construction. Well, the board implicitly accept this construction. It did analyze other issues in the petition. It analyzed one or two and one or three in front of the Paul reference, for example. And in that analysis, the board necessarily already concluded that it must be an executable link because it made findings that Paul disclosed a hyperlink. And that was the basis for finding anticipation on some of these elements within Paul. So the board's already done this. The board's already agreed with the parties and looked at the petition this way. And the board didn't seem to disagree with this particular issue. So maybe it's possible that the board simply assumed without deciding for purposes of doing a 102 rejection. And I think I understand what you recognize as attention in the logic between assuming a claim construction for purposes of one rejection, and then concluding there's no good claim construction for another rejection. But I'm not so sure we can conclude from the fact that they did a 102 rejection that the board necessarily embraced a claim construction for purposes of the written description, given what they said on the written description rejection. I guess the follow up on Judge Scholl's question is, is it possible that we would need to remand on the written description question because assuming that you're right that there's a defect with the written description rejection, we need to hear more from the board as to, why is it that, what is it that endorsement tag and token really mean and to the extent it means something it has migrated away from the content of the written description. Or alternatively should we just reverse if you are right, because I guess in our view, anybody would know when you review the written description, the endorsement tag and token can really only mean one thing, i.e. executable link. I think your last point, Your Honor, is exactly on, on the money, and that's that reversals are probed here. There's nothing in the record that would suggest that an alternative construction would even be possible. The, even, there'd be another way of doing it, which is to say we, that may be reversing the written description rejection because in our view, the other side just hasn't met their initial burden of proof. And so without actually getting to the heart of the merits of whether there is or is not written description, we would say because the other side needed to go further in making the case for written description, just because the claim uses different words, that alone is not good enough, they have to go further and say why those different words in the claim can mean something different than what's in the spec. And then because that burden had not been met, then therefore the written description rejection cannot stand. That's right, Your Honor, that also would be a good reason to reverse and not have to remand. The, the, the, the burden of proof is on the petitioner and the only evidence that they offered with respect to claim construction with that with respect to, to the support in the written description is that the words are not used in the written description. That's it. And that the law holds that the applicant can be their own ex-cographer and that to support the written description, you don't have to use the same words. Their expert didn't say anything about the meaning of token endorsement tag in this relevant field of art. Now, that's a good point. Their expert said tag and, and token in the abstract, he, he said some things about that. But if you look at what he said, in no way that he actually do a claim construction analysis, he didn't look at the, the, the, the, the context of the patent and prosecution history and say, okay, I've got these ideas of tag and token. Let me apply it and see what a proper construction is. That part he did not do. He simply just, just, just hedged and, instead of few things about in the abstract, but there's no evidence of what that expert says of the proper claim construction except what he admits in his, in his deposition, which is that yes, it is a proper claim construction for endorsement tag and token to be an executable link. Our expert agrees in the petitioner's agree. So there is really no dispute on claim construction and nothing in the record would support something else. All the, let's left with the petitioner's burden that they tried to meet is the words are different. And that's it. So we have to move on to the Paul reference. And thank you, patient. Thank you, Runner. As I said, there is no express disclosure in the Paul reference of the claimed invention. And the board found so. The board said several times that there is no Paul did not disclose expressly an example of two aspects of Paul that petitioner argued would be used together. And that Paul did not indicate expressly that those two routines could be used together. If we agree with the board's finding that the Paul reference expressly discloses that one of ordinary skill, that what Paul is disclosing is not only just different routines, but the, but that the routines can be combined together. The routines that it's disclosing, then would you agree at that point, then what we have here is something that's very akin to Kenne metal. And therefore, the one or two is a firmable. No, your honor for two reasons. One, the board didn't actually say that you can expressly combine Paul is expressly combined these tools. In fact, it said, I agree with you that Paul doesn't say that you can combine the refer a friend routine with the direct email marketing campaign routine. But the board nevertheless did find that Paul expressly disclosed that the various routines that Paul discloses, Paul says you can combine them. There's some boilerplate to that effect, but let's assume for a second that you can combine, it does say you can combine refer a friend tool with the direct email campaign tool that targets users. That still would not be enough. And the reason is, as petitioner's argument actually requires modifying what Paul discloses as the refer a friend tool with aspects of the campaign manager. It doesn't simply say use this tool and then combine it with this tool. In fact, if you use the refer a friend tool, what you'll do is you'll create an email and Paul describes sending that email to all users. Combining it would simply lead you over then to start a new campaign and create a new campaign using the direct email campaign tool. What petition is actually arguing is a modification of these tools, not simply combination. So when the board said, you know, without support, but when the board said that you can expressly combine these two tools, that's not enough because you still must modify the tools and there's no suggestion of modification of these tools in order to put them together to meet this claim intervention. And what the problem that the board had though when it came to that conclusion at the end, that it said that there was anticipation. It relied on one fact, and that was Dr. Yoshi's testimony. The board said that Dr. Yoshi testimony was that, quote, the campaigns can be used together. But that actually finds no support in the record first. It contradicts what the board said. The board said we acknowledge that Paul does not indicate expressly that any of the computer routine routines in the campaign manager can be used with any of the other campaign manager computer routines. So that contradicts what it already found. And then second, when you look at what Dr. Yoshi says that the board does matter of law is can be used together enough. In other words, is it enough for Dr. Yoshi it is here? Yes, and Ryan was the other expert on the other side, right? That's correct. Is it enough for Dr. Yoshi to say they can be used together or do you have to find anticipation be able to say that the Paul reference necessarily shows that they are in fact used together? No, there could be, if it were the case that there was a suggestion and Paul that one could modify these routines in order to apply the targeted emailing to any of these other routines. If that were actually expressly in Paul, that would be a different scenario. We don't have that. If you go to the kinemmental case, for example, in there what happened was you had a claimed invention that was an apparatus with two things. And the disclosure in the prior art disclosed two things. They just weren't the exact same things. And then there were several combinations for one of those things could be and several possibilities for what the other thing could be. And therefore because it did expressly the disclose that you can put those two together. And one of the possible disclosed combinations is the claimed invention. That was anticipation. Here you haven't reached the first step. You haven't got something in Paul that would combine these two together. And that's the first step that the petitioner would have had to find for the board to reach the question. Where, looking at the 1399 appeal, that patent board decision at J829, J830, the board expressly referred to paragraphs 29 and 50 of the Paul reference. And looked at those two paragraphs to make a finding that what Paul is disclosing is not just individual routines, but Paul is also disclosing combining the various routines in various ways to make a multitude of email campaigns. So in that sense, the board has made a finding. It has made a reading about what this reference teaches to one of ordinary skill in the art. If we conclude there's substantial evidence there for that, then that's what makes this case more like Kenamite. Well, Your Honor, I think the board distinguished Kenamite based solely on Yoshi's Declaration when we pointed out Kenamite and argued that this is different than Kenamite in the opinion, the board distinguished that case solely on Dr. Yoshi's testimony. When you look at those two paragraphs in Paul, paragraph 29 is simply boilerplate and to conclude from that, that that would meet substantial evidence that someone can simply say, everything in this patent, you can combine it in any which way possible. And for that to be able to anticipate future inventions and future technology that no one's even thought of yet, simply because it's possible that you can pick and choose from this reference and someone says boilerplate, everything in here, you can combine it in which way and that's why invention. That would be a rule that would destroy the ability for new inventions to combine new things, old things and new ways in a novel and not a successful. Well, it seems like the statement is important because if Paul, Mr. Paul, wanted to write a claim that combined two routines together, he would have written description support for that because he expressly said in a specification that you can combine two or more of these routines that he discloses. Well, you have, Your Honor, I don't think that would be enough because Paul would need to be more explicit about what it's combined. And boilerplate wouldn't be, wouldn't get you there. Paul describes a system that operates in a very specific way and refer for and operates starting on paragraphs 100 through 102. It's described in operating one way. The campaign manager is described overall as combining these two different tools, but then it specifically talks about this direct email campaigning tool beginning on paragraphs 60 and continuing through 71. When it describes how these two tools operate, the routines follow a certain path and a certain procedure. Now, simply saying that combining these two routines together isn't going to get you there. It's not enough because all you're doing is stacking one routine on each other and you complete one routine and then you finish with the other. What petitioner needs to show in order for it to anticipate is modify the refer for, refer for and routine. It doesn't operate in the way Paul describes. Instead of sending it to all members, what you do is you take this piece from the middle of the campaign manager description of the campaign tool on paragraph 64 where it describes how upon selection of the send function the user must establish which members will be sent. So you're taking the middle of the campaign tool 108 and attaching it to the middle of the refer for in tool. You're modifying it. You're not simply combining them together. You're into your rebuttal term. You want to register? Thank you. Your Honor, I'll reserve my time. The skills. Please, the court. My name is John Gill and I'm counsel for cross-appellant group on and also appellant group on in the case of the 646 Patent Appeal. I want to address requit points. Address Patent Honours commentary about Paul on the written description argument and also deal with our cross-appell argument which focuses on rats the more. First, with respect to Paul. The Patent Honours doesn't really dispute that the four corners of Paul teach all of the claim limitations and that is what the board found. They simply try to argue that it's in two separate sections of Paul, either the advertising method which they say discloses targeted advertisements based on demographics and the refer a friend method. But I think it's clear when you read Paul as the board did that it describes a single system supported at J860 to 61. That is a system or a computer program that a person of skill in the art here, a computer scientist familiar with mobile and electronic commerce. What understand could use different tools and different routines. Do you argue in that what we have here is a case of inherent anticipation? No, Your Honor. The board does not use a herancy and its decision at all and I don't think that a herancy is needed. Paul is describing a single system not just in paragraphs 29 and 50 that Judge Chen referred to, but even if you look at paragraph 100 where it talks about the campaign manager can specifically call the refer a friend routine. It is a tool within that manager. The campaign manager is actually needed in order to run the campaign and send the email. Contrary to Patent Honours' arguments, it's not just a matter of time. I'm sorry, Miss Gillis, you're not arguing that paragraph 100 or anywhere else in Paul explicitly discloses the combination of the direct email marketing campaign routine with the refer a friend routine. Are you? I do think that that is suggested by Paul when it says that. The board didn't say that. Right? I think there's a support in the record for that where it says Paul teaches that refer a friend routine is a tool within the campaign manager and you need that campaign manager in order to send out the emails. Paul also teaches that the emails don't have to go to everyone. They can be targeted based on demographics. Does Paul teach that with respect to the refer a friend campaign? I believe it does within the context of Paul and the position. Where does it teach that? If we look at J.A.A. 866 or paragraph 51 of Paul. Also J.A.A. 871 at paragraph 77. If we look at paragraph 50 where it says Paul state sponsors can add new news items with graphics, web links or hyperlink. Sorry, what line are you at? I'm sorry. If we look at paragraph 50 of Paul where Paul talks about sponsors can add new news items with graphics, web links or hyperlinks and have the ability to create numerous types of email campaigns such as refer a friend campaign through the campaign manager discussed later. So I think clearly Paul has contemplated that the campaign manager of this system can send targeted advertisements to specific users. I'm sorry. I didn't quite pull that out of that sentence. The sentence clearly talks about a refer a friend campaign. It doesn't say anything about doing the refer a friend campaign in a targeted customer kind of a way rather than what it earlier disclosed about just an email blast everybody. Right. I think you've got to look at multiple sections of Paul together all of which we cited our papers. I think if you look at paragraph 50 of Paul which I decided to if you look at paragraph 86 of Paul where Paul expressly discloses that when you set up a campaign the refer a friend function is available as a tool when you look at how the board found that Paul teaches all the key elements of the claims, the creating of profiles, ensuring that there's a match condition providing a subsidy all of the claimed elements and features. They don't disclose any of that in reference to the refer a friend campaign. Do they? I believe that they do and our expert Dr. Yoshi. Well what is this sentence in paragraph 50 your best sentence for the know what's your best sentence. I think again you've got to look at several paragraphs of call and look at them together. You've got to look at paragraph 29 that talks about Paul being a single system. I think you can look to figure five which again gives a diagramic view of the entire system. You can look at paragraph 50 which talks about the campaign manager being able to send refer a friend emails. I think you read that in the context of the section of Paul that talks about what the refer a friend routine is designed to do. I think you can look at paragraph 42 of Paul that talks about how profiles are generated based on geographic data. You can look at paragraph 51 that talks about the match condition for Paul. Does that with respect to refer a friend campaign again this is a system where all of these items are intended to work together akin to what Pete have judge Kim said it's like if you're using Microsoft work. What about Mr. Conrad's concern that what you have to do in order to combine the direct email marketing campaign routine which in my view is what you're describing and all those other parts of this back of Paul combining that routine with the refer a friend campaign routine that you have to do some modifications to the routines in order to get them to operate together. I don't think you need to do that. I think again looking at paragraph 51 of Paul also looking at our record at J871 paragraph 77. The campaign manager of Paul is expressly taught is having the ability to target its campaign. How you would do the combination together as I understand Mr. Conrad he seemed to be saying you do the refer a friend campaign first routine and then you do the direct email marketing campaign after I would think it would be reverse you would do the direct email campaign first and then through that campaign you would have a sub routine the refer friend campaign. Is that possible? We need to understand for sure how it's possible to see how it matches with the claim. So what would be the combination of the two routines that one would envisage one of ordinary skilling art would envisage in order to read on every single one of these elements in the order that they're presented. One would envision that you would collect the profile and matching data as described in the earlier sections of Paul and then based on the accumulation. Talking about the direct email marketing campaign. No, no, these are. This is profile information that you can collect and then the campaign manager has access to and can control that information and then you can use a refer friend campaign to target those particular individuals that you determine best match the criteria of the advertiser at issue. I think you're exchange with just chant illustrates a problem that I'm having with this particular with your argument and in kind of mental we said that you can have this type of information if a person skilled in the art would it's not just in vision it's at once. In vision and it seems to me that you you've jumped around a lot in the Paul reference and you're going to be able to do that together and with argument cobbling together the different limitations and I'm not sure that I would call that you know once skilled in the art would at once. In vision this this combination. I respectfully disagree your honor. I think here we're dealing with someone who is at least has a bachelor of science in computer science who is very skilled with computer programming and very skilled with mobile and electric. But show me then show me show me in the in the reference just by looking at it the two of that once understand the combination. Sure like I said I think you can look at the diagram of the entire system and how the campaign manager is like the brain of that system to run various routines that the system can carry out. The system describes a means for sending targeted advertisements to specific users and away by which those users can refer those advertisements and get an incentive or reward in doing so. And our expert puts all of that together and again I direct the board to or the panel to J.A. size a 60 to 61 J.A. 18 39 to 41 J.A. 52 41 to 45 again all the various paragraphs. I'm sorry sir J.A. 5241 to 5245. So all the various paragraphs of Paul that I mentioned paragraph 29 42 50 51 53 186 57. There's no more support for Paul being one system and all of the elements being there just like 53 57. Yes sir 86 100 and the subsequent paragraphs that describe how the refer a friend routine works there is substantial evidence. I think you might be making it unnecessarily complicated I mean if you just the board handed you a roadmap. Yes I did. There's a handful of tools here in the Paul reference one of them is the direct marketing email marketing campaign another one is the refer a friend campaign. Yes. And if you and if you look at paragraphs 29 and 50 of Paul Paul teachers that not only is he talking about individual tools he's talking about the combination of said individual tools. And so therefore the board found that Paul teachers combining the disclose tools and by that disclosure one of ordinary skill in the art would at once envision the combination of the refer a friend campaign with the direct email marketing campaign. Yes your honor I grew to 100% and I think the board summarizes that in its final written decision for the 516 for example at pages 25 to 27 I was again just trying to point the board to the numerous sections in Paul itself which describe to a post how the system works how it's one system and how these two concepts work together. I want to switch to written description. I was confused by the written description rejection because it seemed to me that what the board could have or should have done is maybe make alternative rejections either do a one of two rejection on Paul or do a written description rejection because somehow the terms token and tag means something completely different than link or token and tag or somehow and solumly ambiguous and so there's just no support for these mysterious words but as soon as you arrive at that conclusion then I don't see how you can do a 102 rejection. Likewise if you do a 102 rejection it's because you know what token and tag me a mean a link and Paul teaches a link and that's why the 102 is a firmable it seems like an either or proposition I don't see how the board was able to do a two really impose both rejections. I'll address that we group on make the alternative argument we first led with the endorsement tag and token have no 112 support and we believe that and there's ample support for that both in the final written decision and in our papers. We also make the alternative argument that if we did not prevail on 112 or those two arguments could coexist that the prior art either anticipated or rendered obvious it sounds like you agree that we can't sustain both rejections. I don't necessarily agree in one of the cases that we cite I don't have it at hand but we cited I think in our papers is a decision in which I believe this court found both in validity based on 112 and based on prior art objections so I do think there is a world where those two objections can stand side by side. If we first deal with the written description argument. So what would the logic be for how those two rejections can stand by side by side. The query for written description is is there proof within the four corners of the application that these inventors had possession of what those terms were and the p tab does acknowledge that both sides say it could mean a link and part of why group on took that position is that was the construction that was the construction that was the part of that pattern owner had used in the related litigation using the broadest construction for infringement purposes so we say if that's a construction that the court adopts for purposes of the prior art objections where is for 112 purposes proof within the four corners that this inventor had possession of these two terms. There's no dispute that endorsement tag and token are nowhere in the one for four application you asked a question about the timing that application was filed in December of 2005 it wasn't until an RCE four years later that these terms show up endorsement tag and token show up for those times. I'm still getting to my concern and, you know, and maybe there's no good answer, you know, and all we can do is just say a bunch of words at this point. I don't know, but it seems to me that if you're doing a written description rejection it's because tag and token means something different, different than the disclosed link in the written description. What is it your view of what token and tag mean because for purposes of the written description rejection I did not see the board reach any conclusion what token and tag and mean and I think it's almost a necessary step you have to do before you conclude that the written description somehow fails to support what token and tag on. I think what the board does is say first analyze whether the inventors had possession of those two terms and the board says they do not because again we have to understand what token and tag mean before we can figure out whether the inventor has possession of those terms and they say when there is certainly disclosure in the application for what is the link or what is a hyperlake and their diagrams and their paragraphs that refer to that what is missing is saying token equals hyperlake. And this goes don't don't the parties agree to that construction they say that token and tag equals hyperlake we agree to that construction for purposes of our one or two one or three arguments where we argued in the alternative and the board acknowledges that agreement with the decision but you don't agree with it for purposes of the one 12 projection for one 12 we say even if it did nowhere do you tell a person of skill in the art. That those two things are equivalent and there's reasons in the record to suggest why they're not. It doesn't that suggest that we need to have a claim construction exercise here some kind of mean if the board had said we conclude based on the arguments of the parties and our examination of the claims and the written description that endorsement tag and token mean executable hyperlink then that would be one thing if they said if the board said that the board said that the argument is not going to be a complete argument. But it said it concluded that they meant something else that being done doesn't there have to be some kind of somewhere either a claim construction that's agreed upon by the parties that a court or the board accepts or a determination by the board is to a claim construction. I do think that the board implicitly makes that construction if you look at the final written decision for the 516 for example I page 35 of that decision they say petitioner asserts as an us endorsement tag should be construed as executable links such as hyperlink and that endorsement tag must be related to an advertiser link with advertising content. And they say that if that's the construction that there's disclosure there's not disclosure of saying that word and endorsement tag but haven't said that endorsement tag equals hyperlink and if endorsement tag equals hyperlink and the hyperlink is disclosed and that's us looking at it now where in the corners of the 1 4 4. The claim construction is the claim construction and it says is done at the time of the invention, you know, and if the claim construction ultimately is that this these terms mean link then there's written description support. I guess the way I see your argument is as a matter of law in your view the specification needed to take the step of saying tag and token mean link. But if we disagree with that and conclude that our law stands for the proposition that if you use a term that is never discussed before in the spec nevertheless that claim term can is discernible based on the context of how it's used in the claim and the context of the written description then there isn't this. I don't it seems more like an indefinite in this problem in some ways but regardless then there would be written description support because we understand what the claim term means and in fact it lines up with what is being disclosed. Again, I think I would go a step further than what you're saying. I think we would say as a matter of law not only here where the patent owner doesn't say endorsement tag or token means link here we've got claims that use three different terms we've got claim terms that use endorsement tag claim terms that use token and we've got claim terms that use link for example claims 25 and 27 use link other claims use endorsement tag. Or token. What about cases like innova which says you can you you know we recognize that there are times where patent owners use different terms and the claims to refer to the same concept. Here I think if you look at the prosecution history the prosecution history undercuts them in a couple of ways they added those terms because link was rejected as being obvious. So that was motivation for them to come up with another term that meant in theory something else to overcome. If you look at the prosecution though they did a massive overhaul to the claims they didn't just delete the word link and then insert the term endorsement tag or token. It was a major overhaul claim so I don't think you can rely on that as as some kind of. Colleagues suggestion that they were trying to run away from equating endorsement tag. I think you've got to look at both the prosecution for the 516 and then look at the subsequent prosecution for the other applications once they got to patent number two the 679 patent they added additional new content new disclosure to support what. Indoorcement tag meant why would you need to do that if there was adequate written description in the one for four application there was not. Do you want to quickly address the counter claim given the fact that time is running. Sure again just a site for some record sites for our written description position J742 to 759 J828282829 the Yoshi Declaration. What's the second site I'm sorry J828282829 and our expert doctor Yoshi also gave alternative definitions for endorsement tag and token that don't equal link at J81657 to 58 and the applied medical research case that we cite in our papers as to why use of different claim terms undercuts their position. Thank you thank you. Thank you. Our cross appeal solely relates to whether or not the rats more reference is a printed publication here I think there's no dispute as to the level of skill in the art. A person with a computer science degree. The state of the internet in 2003 and 2004 the relevant critical date period here as based on a prior art reference that we rely on at J81175. Also there's an existence of a related article the rats more article from one month earlier at J8205 to 5.9. And here I think if you look at the cases that talk about public accessibility being the cornerstone of publication and whether or not a total exercising reasonable diligence could have found this reference. I think all the factors and evidence in the case support that a computer scientist fast-spiled with mobile commerce would have been able to find the rats more reference here. This is a better case than rough a Meyer the federal circuit case cited in our brief where the court there said a Canadian patent was a roadmap to deleted patent figures in a patent file. That patent file was in a physical location in one patent office in Quebec here what we what evidence though do you have that the rats for references existed in 2003 that it actually wasn't there in order to be accessible. We have two sets of metadata evidence that are not disputed we have metadata evidence at J.A. 1991 and 1992 that shows rats more was created in 2003 we have metadata evidence that said that rat more the board considered this evidence. It was in the record the board did not in my view adequately consider the wealth of evidence that supported brought to their attention yes it was your honor both in our argument and in many of the papers that second set of metadata evidence show that rats more was on the web server no later than October 2004 at J.A. 2028 which is prior to the critical date here. So there's no dispute that it was there at the relevant time period on a public website we're talking about a major university university of Maryland Baltimore County computer science double department well that that's the question concern I saw the board having was that there was no evidence that this particular page with this publication was indexed. So to the extent that a search engine would be able to find it now if you were to tell me that you could go to the official UMBC website that would have a link to the computer science department and the computer science department web page would have the direct link to rats more publication page which then has a link to the paper then that would be something to suggest that this particular link with this paper. It's been indexed or could be indexed but right now what is missing from the record and this is what the board seemed to be harping on was any suggestion that this particular page was findable by search engines and this is this point that I think our court was making and voter verified where we did find that online reference to be accessible but not because there was evidence of indexing because there was no evidence of indexing. But instead it was because that particular web page was known to those of skill in the art as a place to go to find interesting things in that relevant field which is lacking in this particular instance with respect to rats more publication page. I wanted to address voter verified first I want to say that we have unrebutted testimonial evidence from Dr. Yoshi that as of 2003 at that particular web link this article or report was available to the public for viewing and downloading that testimony. We know that the board the board I think didn't challenge the question of whether it was available at that particular URL address the board on the fact that nobody of skill in the art would know how to get to that URL address because there was no evidence of indexing nor was there any evidence that one skill in the art would know about this particular URL address and then consult with the public. I can address that again I think the facts in our case are stronger than voter verified again voter verified dealt with the Binson article which was an online periodical from the mid 90 timeframe. So we're talking about as of 1999 and there the court said that commercial internet search engines were available at that time and even though there was no evidence and voter verified that that particular article was specifically crawled or index similar to us and voter verified the court still found that it was publicly accessible. So now let's look at the time frame. Because in voter verified there was sufficient proof that the article was there and we have sufficient proof of that. So the question was whether it was available or accessible. There's got to be more than showing that it's there. Your problem is I think that you haven't shown there's evidence or problem with it. The article is actually there and your expert says well it was around or says it was around November 2003 and query whether that substantial evidence that he was there. I don't think the board quibble was whether or not it was there. I think both Yoshi's testimonial evidence showed that it was there the two sets of metadata evidence that were undisputed not challenged by patent owner showed that the article was there and available. The question the board had was could a Posa located our responses yes this Posa a computer scientist in 2003 motivated to find articles about mobile and electronic commerce where you've got a group of authors if you compare the front page of the rats more report to the front page of the related rats more article from one month earlier. You've got identity of authors you have their titles their job locations their email addresses. Just to clarify because there's a couple different things going on. You're going you're making an argument about the research eight notion right you're not making an argument that this website had been indexed or that this website was really popular among those of ornars skill in the art. So they would already know to go to this you are a right. I'm focusing on research it I'm making to I'm making both of those arguments and let me try to separate them. Yes this was a website that I think people of skill and the art would have gone to it is a major university website it is a computer science and double Lee department of that website and it is the location of multiple authors professors who are known in this space to be working on these topics. They have published on e-commerce you want to wind up your your out of time. Yes so again voter verified indexing was not done in that case that was nineteen ninety nine where five years later with the critical date here where search engines are advanced and we're talking about a major university website and computer science folks when you look at the research aid of Cornell or Brooklyn Meyer clearly the rats more article at twenty fifty two was a sufficient research aid where that article was downloaded more than four thousand times. A person of skill in the art would have been motivated where that article said we are doing more we're getting government funding we are expanding on this. A person of skill would have been motivated to look up doctor rats more go to the UMB site if you plug in her name you get to either ubiquity publications you're making you're making new arguments I know you get asked you to conclude. I'm I'm going to restore you back to five minutes from your for your your bottle. Okay because we could kill of course and thank you very much. Thank you Anna. Yeah for him. Your honors may place the court the director intervening this in these cases to address the boards initial determination as blue colipsos did not address that issue in its opening we request that the court. Affirm the boards initial determination that blue colipsos patents are covered business method patents subject to CBM review. This is quick question what's the difference between a a covered business method and a business method when it's not covered a covered business method and one that is not covered a covered business method patent includes any sort of data or processes that are that have a that include a financial component. And so in that sense that whether or not there is something that that uses a data processing or a management system in a in the financial sector or industry but as as the board found and as the as the regulations include those that that determination is not just limited to the financial sector. But could you explain what would be an example of an uncovered business method of an uncovered business method. Yeah. I mean it says covered business method as I understand Judge Rainer's question that means there is likely uncovered business methods. So what kinds of business method patents are not eligible for the covered business method patent proceeding. If the business method did not have anything to do with the practice administration or management of a financial product to service then I guess it would not be a covered business method patent or if it was a technical invention then it would not be a covered business method patent. You say that all business pens have some have a financial sector to it or financial purpose to all business methods. Yes. Well here the determination is directed to the claims themselves. So to the extent the claims themselves have a financial component they would be a covered business method but to the extent that they don't they would not be they would not fall under that definition. Does that answer your question? That's okay. You can go on. Yeah. I'm just curious. What kind of patent that relates to commerce would not qualify for covered business method patent or another way of putting it is is that the agency's view that anything related to e-commerce is a covered business method patent eligible for this proceeding. I think any patent that claims e-commerce that includes a financial component would be covered by the covered business method patent definition and would be subject to CBN review. So it is a broad definition and e-commerce patents such as the one that are at issue here are the type that would be covered by the CBN definition and subject to CBN review. What about a patent for example that would help a business owner determine whether they locked the doors at night or not. Would that be a covered business method patent? Well to the extent that claims themselves included something that also had a financial aspect to it then I think they would be covered but you would have to look at the claims themselves. In that hypothetical you're asking me what the patent is generally directed to but what the board does is look at the claims themselves to determine whether or not it is a covered business method patent within the data. The example I gave you the business owner's concern about losing having somebody break in or or or or still things and some just curious whether that business patent. It has a financial sector in it or not in your mind. Well I think again to the extent that claims themselves had some sort of financial component to them. But the business pens I mean these are the business so don't they all have some sort of financial component built into them. Well the CBN proceedings were instituted to address a specific type of patent that that's my point I agree. What type of pens do they not address? They would address patents that would fall out of that definition. So to the extent in your hypothetical if the business method relates to protecting homeowners from people who are breaking into their homes. The business owners. If there is nothing in that claim that brings in the definition that the that the Congress as well as the used to put in some regulations then it would not fall under the definition of a cover business that the pen. One question on the regulation for technological invention. I mean I saw a part of the regulation say that a condition to be a technological invention or not a technological invention. And therefore institute one of these proceedings is to see whether the patentable advance in the claim is technological in nature somehow. And I was just wondering why is it reasonable that something that seems to be a merits based final determination would be a basis for figuring out whether to institute the proceeding in the first place. So the technological invention aspect is an exception to the CBM proceeding and the reason the board looks at that issue is because there are certain patents where although they may have a claim that's directed to a covered business method. There is something else in that invention that I guess will lifted out of that out of that arena and has a technological aspect to it wherein there is something that they're using whether it be a new type of software or a new type of routine or anything that is not within the norm of the technology in that area that will lifted out of the CBM definition. So. But as I understand it this is a merits based determination right from the final determination is a merits based determination. But in terms of understanding the regulation for instituting one of these proceedings it very much looks like a merits based conclusion that there is or is not a technological patentable advance over the prior art. Am I misreading the regulation? Well the board is not making a 102 or 103 determination at that point all the board is doing is looking at the claims themselves and determining if those claims bring forth some sort of technological idea or notion that would that would lift it from the CBM definition. So they're not making a merits based determination based on 102 or 103 at that point. They're comparing it to the prior art though right. They're comparing it to the prior art in the sense is is that is there anything that's only generic to the claim that's I mean generic in the sense that generic to the technology of the claim in the claims that issue here all the technology that was related to in the claims with generic in nature and there was nothing that was new in the terms of the technology that was used. Anything you want to add in conclusion? No that is all your honor. I owe my time. Thank you. I'm first going to address the issue of rats and more. There's two failures of proof that the petitioner has here. The first as you heard during argument was the issue of was there a road map that would lead an interested researcher ultimately to the destination where this paper may have been. And there's there's simply no proof in the record and this is the problem the board have. There's no proof in the record of how one could get to that paper. Whether it's by indexing through search engines whether it's by following some path or series of links or anything. There's just no evidence at all and this wasn't something that would have been difficult to do had that are in fact skill is saying that the UMBC computer science department is a significant department doing research in this area and therefore one of ordinary skill in the art would be inclined to go digging through the computer science. And that's a website in order to see what's going on and then ultimately find miss rats and more page what's your answer to that? How is that any different then first off how is that any different than saying that it would be enough for someone to go digging through some library somewhere to find a book that's on on the shelf but is not an end to like index or catalog you'd have to go through every single stack want to find these books. In that situation there's no public accessibility or availability there is there anything in the record that shows that when you're at the computer science department's website there's a link from that website the computer science department's website to miss rats and more publications page. During the relevant time there's zero proof that there's any link at all to Dr. Ratzi Moore's personal web space and it is only in her personal web space where this paper is eventually found we know it's found today. So you'd have to know the specific URL address in order to get there that's going to be able to get there through the computer science department's website. That's right based on the record today that was presented to the board when you look at what there was at the relevant time any relevant time for these patents what would take someone from the main page of the computer science department all the way to eventually where the patent was ultimately found that's there's no proof of that. Now that would not have been a difficult thing to do we raised this issue during the proceeding and petitioner has an expert who wrote the paper and is still a professor at this university all he did was say in his original declaration this was available somewhere on the website in 2003. He did not come back in his supplemental declaration and provide more proof a full listening proof which he was in full control of to be able to do this is how it worked this is what the website looked like this is where people would have gone to this is where we would have been someone would have been led to this is how we would follow links. The simple conclusion from all this lack of proof is that that trail didn't exist so even if you assume someone would have been. You know, one to follow the trail the trail didn't exist at the time there's no proof of that that's the proof of the trail that that's the issue with the trail there is no proof the second issue is as I alluded to time. There is I think petitioner raised one issue of a bio page that had a link on Mr. Dr. Ratzimor's web official bio page there's no proof that that is how the page ever looked prior to 2004 that's something that that Dr. Yoshi their expert could have testified to if it were true and that there was actually something available but that's just not the case there's no proof there. Dr. the panel noted Dr. Yoshi's testimony is really the only thing that suggests that this paper was available on this website at the time and and all he says is it was available and that's even contradicted by the fact that the official website doesn't list this paper. The project page doesn't list this paper. The only person that lists this paper is Dr. Ratzimor at some point in time and that's all on a personal site. What about the research aid argument with respect to the Ratzimor article? Heading that this Ratzimor team was doing a lot further investigation and work in this very area and therefore one of ordinary skill would be motivated to go looking around for what else Ratzimor was up to. You're talking first about a significant jump of being able to follow a trail and then second there's no proof that the trail ultimately would lead you there. The Ratzimor paper in October of 2003 only lists the names of the authors and and their university. It doesn't cite the reference the Ratzimor reference that was that was an issue. It doesn't say it exists. It doesn't cite a website address. It doesn't cite a project address. There's nothing that would lead someone directly to the university's website and then ultimately how would they get to this publication. You just can't follow that path. That's different than the case law where for example I forget the name of the one case but there was an explicit reference to this paper that was at issue in the prior art. One would have known that that paper existed and could have sorted out here. No one would know that this paper existed from the October 2003 publication. Ultimately this comes down to a judgment call by the board. The reason being that there are a lot of factual issues here that were weighed. It's not simply an area where the parties agree on what the relevant facts are and we can work on the law based on that. Here the petitioner was relying on Dr. Yoshi's testimony. We presented evidence that that was unreliable and incorrect that the paper wasn't available on the official website. They presented here say evidence of particular dates and various times 2003, 4, 5, they argued 2007 that the reliability of those dates, what they mean, that was all a judgment call for the board to make. We treat the argument concerning the metadata evidence. Very simple your honor. A metadata evidence is evidence of the creation of those documents but not any evidence of dissemination or availability. The fact that the document was created on a computer doesn't indicate in any way that it could have been accessed by anyone outside of the computer at any particular address. All it was is it's created, not disseminated. Is that into your question? And briefly I'd like to get to the written description argument. The only evidence that the petitioner offered is that the words are not the same. That's a failure proof. Our expert at 4, 7, 3, 5 and the 516 appendix offered testimony about how he would have viewed how he looked at the specification, would have understood and come to these claims. The petitioner's expert could have contradicted that, could have rebutted that, but he was silent on how one actually construes these claims. All you're left with is the fact that the words are different. And that ultimately is a failure proof and this panel can reverse the decision, it doesn't have to remand it. Finally on Paul I'd like to point out that the campaign manager is the overall program is got to be very careful but that when you refer to that you're referring generally to the overall program. Element 108 is the campaign tool. That's the direct email tool with the demographic targeting. The refer friend tool is a separate tool. Don't we don't want to confuse this overall campaign manager with the two distinct tools that are explicitly described and how they operate. If there are no other questions, thank you. Well, thank you very much. I want to start briefly with Ratsmore. Again, if you look at what's in the record at J.A.453, what Pat and owner calls the official university, you pick what he website. That website, if you click on people and you put in Ratsmore, you get this page, which is in the record at J.A.453, that page has the same URL link. The doctor Yoshi refers to in his declaration. It says J.A.453 exists in 2003. This is an alumni page. This is an identifier and a volunteer. This is a website about ubiquity, which is the page. I'm seeing here that says alumnus graduation date May 2007. This seems to have been a particular page created after May 2007. No, sir. The ubiquity is a section of the UMB website which organizes papers in this e-commerce, mobile commerce area. It identifies Dr. Ratsmore as an alumnus because as of the present day, she is no longer with the university. But proof that this page would have looked virtually identical, particularly what is that the URL would have been virtually identical, saying URL link that you would get when you pull up the UMBC ubiquity site, click people, one click to Ratsmore, and you go to this URL, which is a hot link to her publications page. This same hot link is the hot link that Dr. Yoshi and his declaration said where the article or report was available for viewing. Yes, where he says in 2003 this report was available and we have in the record at J.A.833 that that page was last updated in 2005. So this is not something that is being done in present day. This is all prior work. This is a better roadmap than what was in Cornell and Brookamire because again, where did Dr. Yoshi say that the page of J.A.4543 existed in 2003? What he says is that the report was available at this link. So what I'm saying to you is where this link and what is on that link was last update in 2005. That suggests its existence prior to 2005. Right. So the link that this web page refers to existed in 2003, but I don't see any evidence in the record that anyone testified that this page with this particular address existed in 2003. But I'm saying is Dr. Yoshi testified that this link that is shown on this page existed in 2003 and that that link is where you could get the report. What we also have in the record is the metadata to show that the report was there. What we additionally have in the report was that that page at this link was last updated in 2005. Is the metadata to show that the report was there or simply when it was created? It shows two things. We have metadata evidence that shows it was created in 2003 at one record site and we have metadata evidence. And that that first metadata evidence is that site J.A. 1991 in 1992 and then evidence that it was on the server at at least as of October of 2004 at J.A. 2028. Again, part of the environment that we're in is the ubiquity site is where these particular authors collected their work related to this subject matter. So if you go to UMBC and you type in rats more, you might get this page. If you got a rats more, you might get her ubiquity page. You're one click away from the technical report at most two. This is better than the roadmap in Cornell and Brookamire where you had to have an article in hand online and then go to an office, a physical location. We're talking about two or three clicks. Is there any evidence of anyone actually having access to article by following the link that you're citing? I think through the exercise of reasonable diligence, any of the number of 4,000 plus people, whether it is in the record that more than 4,000 downloads of the related rats more article where you could find that article on the same publication page where the technical report exists. It is certainly reasonable to conclude that a post exercising reasonable diligence under voter verify would have found it and would have been motivated to find it where the article says we're going to build on this research. We're going to do more of getting government funding. Well, we have to decide whether the board had substantial evidence to conclude the opposite. I don't think they did your honor. I think the substantial evidence is better than voter verify, better than bear, better than cron and bread and then Brookamire. Basically on call, again, the patent owner is making the false argument that there are two completely separate systems. Again, call discloses, how to store profiles, how to use the campaign manager to start a campaign, how to then tell the campaign manager to direct the campaign, specific individuals based on profile data that you've collected, and how to use the refer-friend tool, which computer programmers know, programs have tools and routines that can be called to do that. The board found that an opposed would have understood it and been able to combine it. A written description. The skills can you conclude, pretty soon? Yes, sir. Again, you're in your rebuttal on your cross appeal, right? Right now? Yes, you're probably right, so I probably need to. Without, unless there's any further questions, we would ask the board, I mean, the panel reverse the board with respect to ratsmora and finite ratsmora, either alone or with the cited references, renders the challenge claims and valid. Thank you. You thank the party for the arguments and we'll take it under the advisory

Legal Case Summary

Groupon, Inc. v. Blue Calypso, LLC

Date Argued: Mon Dec 07 2015

Case Number: 2015-1396

Docket Number: 3056209

Judges:Not available

Duration: 78 minutes

Court Name: Federal Circuit

Case Summary

Groupon, Inc. v. Blue Calypso, LLC

Oral Audio Transcript(Beta version)