Legal Case Summary

Okay, the next case is number 15, 1832, in RCSP system international and incorporated Mr. Koch. Good morning. May please the court. My name is Bruce Cook

. On behalf of the Palant, CSB, since the International. This is an appeal from a re-examination where they found the firm the ability findings. We believe that there are at least three main legal errors committed by the PTO in its 102-103 and validity analysis. First, we believe they failed to consider that this is a system claimed to a specific type of architecture

. Two, their claim constructions are not supported by evidence and in fact, contradicted by the contemporaneous evidence of the par-art itself. And three, the use of the broadest reasonable interpretation standard instead of the Philip standard since the underlying patent expired during the re-examination. Now, turning to the first main legal error, this claim won what's a system claimed, specific system claimed to integrate an EDP and telephone system to allow the customer service representative to receive the customer information at his computer by one-the-call arise. Now, this is a specific architecture listed in claim one of the patent

. It has a server and a client and a person ordinary skill in the art viewing this would see that this is clearly a client server architecture. Now, so the relevant question for the 102 and 103 is does the par-art references alone or in combination teach the specific architecture set forth and claim one, the specific client server architecture? Now, looking at the par-art references, Gersahani and the call coordinator, they have a host to a terminal system. A person ordinary skill in the art in 1993 would clearly see this as a host terminal architecture, a different and discrete architecture than described and claim one of the patent. What is it that you think can claim one in a minute fits to a client's server architecture? Sure

. The good question. The fact that there's a server and personal computers receiving and sending data records as this court recently reiterated in the Apple versus Samsung case that the mention of a server to a person ordinary skill in the art would signal a client server relationship. It was citing the Apple versus Motorola case 757 fed through Fed 3rd 304. So to a person who are in our skill in the art seeing claim one, they would see a client server architecture

. Now when you're looking at the prior art of Gersahani and Cole Cornel, as I said, it's a host terminal architecture. And how do we know that? Well, the prior art itself states that. Gersahani clearly has many passages stating that in this invention is a host computer communicating through screen images to terminal, a functioning terminal. But why what evidence did you present that the terminals in the prior art reference can't be considered personal computers? Because if you look at Gersahani itself, the prior art author himself refers to these workstations converted into terminals as terminals

. He states that the flow information is to the terminal from the terminal and he states that the invention in the invention, the host computer must interface with a terminal with a 3270 or 5280 terminal. So in his mind, and he states it explicitly, this is a host terminal architecture. He does not, he does not, it shows that he does not believe that he was in possession of a client server architecture for this integrated EDP and telephone system. So I think that's the best evidence

. You articulate, this claim articulate personal computers and then it articulates a land server. If the terminals in the prior art reference perform all the functions that the claim acquires of personal computers and the host performs all the functions as the land server as only limited in the claims, because of course from that can import functions or objectives from the specification to the claim. So if the disclosure in the prior art reference has a terminal computer that can for example send and receive and all of that other stuff that is required by this claim, then why is it not anticipatory? Why does the simple context of host versus client server matter if all of the elements of the claim are identically performed by thus structures disclosed in the prior art reference? I'm glad you asked that question. I believe the answer is one, a person of ordinary skill in the art in 1993 would believe that these are not the same architectures

. You say that, but I can't find any evidence in the records that are submitted that would have made it implausible, improper or even, and even worse, I've got to give substantial evidence to the board's findings. So what evidence of record is there other than your personal statement as a attorney argument to establish? Sure, as I said, the statements by Mr. Gersahani himself in his patent, what he refers to these terminals as terminals, and also if you look at.

.. Distrofered from his terminals, but he also discusses later on that they're capable of sending and receiving. He also has at column 16 he says they have a multi-tasking operating system. That's true, but when you look at the relevant legal question is in the system what is the nature of that component? No, I think it's what's the nature of that component

. I think the question is does that component meet all of the elements of the claim? We don't do some, you know, general analysis, right? We've got a claim. The claim articulates certain functions, a personal computer must perform certain structures it must have, whatever, and I don't think that what I'm having trouble seeing is how the prior art doesn't actually meet each of these limitations even though it calls itself a terminal rather than a personal computer. And your answer as I understand it is, but one of skill-narr understand these things to be different, but the fact that they have differences that are irrelevant to the claim limitations doesn't seem to meet each other. Well, if you look at the glossary of the call coordinator, if you look at 49.62 and 49.63, you'll see that that has discrete definitions for host computer versus server. So at that time, a person would not believe that a host computer was equivalent to a server. And the other thing I would like to point out, I don't believe that there is a doctrine of equivalence and validity analysis, which I believe is what is kind of morphing into

.62 and 49.63, you'll see that that has discrete definitions for host computer versus server. So at that time, a person would not believe that a host computer was equivalent to a server. And the other thing I would like to point out, I don't believe that there is a doctrine of equivalence and validity analysis, which I believe is what is kind of morphing into. It's what a person of ordinary skill in the art would believe this to be. And there's a different flow of logic in a client server versus a host terminal. But that doesn't even spread curve. You're true, because I have an electrical engineer at heart

. It's what a person of ordinary skill in the art would believe this to be. And there's a different flow of logic in a client server versus a host terminal. But that doesn't even spread curve. You're true, because I have an electrical engineer at heart. But none of that is in this record. There is no expert that said this in this case. There are no documents that you can point me to in this record that can establish beyond the substantial evidence standard that I've got to give reference to the board for that the arguments you're making in as an attorney are factually unequivocally correct and that no conclusion to the contrary will be supported by substantial evidence. That's my problem with this

. But none of that is in this record. There is no expert that said this in this case. There are no documents that you can point me to in this record that can establish beyond the substantial evidence standard that I've got to give reference to the board for that the arguments you're making in as an attorney are factually unequivocally correct and that no conclusion to the contrary will be supported by substantial evidence. That's my problem with this. Okay, first I would like to point out that the board itself has no evidence at all about that a person ordinary skill in the art would believe that a host computer is equivalent to a land server and that a term functioning terminal would be could would be is the same as a personal computer in the system. Time out, Estich, Stolt pointed out the prior reference discloses what this terminal contains in the way of architecture and the prior reference discloses what this structure is capable of doing in the way of functionality sending and receiving. At that point in time the terminal as disclosed in the prior art reference doesn't seem to me to be distinguishable from a personal computer in any meaningful sense. So why is there no substantial evidence for that board conclusion? Well I believe it back to back to what the prior author says he refers to these as terminals and I think you can safely say that if it was just a plain terminal and not a personal computer converted to terminal it would definitely be different in the eyes of a person ordinary skill in the art

. Okay, first I would like to point out that the board itself has no evidence at all about that a person ordinary skill in the art would believe that a host computer is equivalent to a land server and that a term functioning terminal would be could would be is the same as a personal computer in the system. Time out, Estich, Stolt pointed out the prior reference discloses what this terminal contains in the way of architecture and the prior reference discloses what this structure is capable of doing in the way of functionality sending and receiving. At that point in time the terminal as disclosed in the prior art reference doesn't seem to me to be distinguishable from a personal computer in any meaningful sense. So why is there no substantial evidence for that board conclusion? Well I believe it back to back to what the prior author says he refers to these as terminals and I think you can safely say that if it was just a plain terminal and not a personal computer converted to terminal it would definitely be different in the eyes of a person ordinary skill in the art. What's missing is for example evidence on your part that people of skill in the art understood terminals to differ from personal computers. You're just pointing at the fact that two different words happen to be used but the evidentiary length that's missing is that those two different words would convey to one of skill in the art the idea of very different non-equivalent structures. Sure but I don't think the board itself has connected that structure either it hasn't provided any evidence either and they had the bird initial burden of production and the burden of persuasion on that issue and I think as a threshold matter they didn't prove it either and I and I contrary I've been risked respectfully disagree I believe that the fact that the prior art glossaries and cells have distinct definitions discrete definitions show it and also I think to a person who already skilled in art this is inherent this is inherently different architecture that a person ordinary skill in the art would readily understand I know but you can't just say it I can say it but I can I come back to what what the prior author himself if in fact in the in the Gersahani there's no mention of server at all host is mentioned 630 13 times and servers never mentioned and when he talks about the invention he says the invention is a host computer that must interface with a terminal and you got to realize at this time the historical time there was all these host terminal legacy systems but the manufacturers had stopped making the hardware terminal so they needed to create some terminal out of something so that they could keep these host terminal legacy systems operating so that's why they had a terminal emulation and further I think well you look at you look at the definition of terminal emulation that's in the record it states where can I find that definition sure take me directly to it probably around 49 59 something that I haven't found it yet well perhaps you can find yeah I'll find that on a bottle I believe but I just want to point out I think as just as a threshold matter I know you your honor has said that we haven't had the linking information but I don't think as a threshold matter the board has presented any evidence to conclude on these claim constructions that a person ordinary skill in the art in 1993 would believe that the system described in those two prior references read on a client-server architecture the system and just want to point out the relevant issue 40213 is the claim system in the prior art that is the threshold thank you thank you mr. Cook mr

. What's missing is for example evidence on your part that people of skill in the art understood terminals to differ from personal computers. You're just pointing at the fact that two different words happen to be used but the evidentiary length that's missing is that those two different words would convey to one of skill in the art the idea of very different non-equivalent structures. Sure but I don't think the board itself has connected that structure either it hasn't provided any evidence either and they had the bird initial burden of production and the burden of persuasion on that issue and I think as a threshold matter they didn't prove it either and I and I contrary I've been risked respectfully disagree I believe that the fact that the prior art glossaries and cells have distinct definitions discrete definitions show it and also I think to a person who already skilled in art this is inherent this is inherently different architecture that a person ordinary skill in the art would readily understand I know but you can't just say it I can say it but I can I come back to what what the prior author himself if in fact in the in the Gersahani there's no mention of server at all host is mentioned 630 13 times and servers never mentioned and when he talks about the invention he says the invention is a host computer that must interface with a terminal and you got to realize at this time the historical time there was all these host terminal legacy systems but the manufacturers had stopped making the hardware terminal so they needed to create some terminal out of something so that they could keep these host terminal legacy systems operating so that's why they had a terminal emulation and further I think well you look at you look at the definition of terminal emulation that's in the record it states where can I find that definition sure take me directly to it probably around 49 59 something that I haven't found it yet well perhaps you can find yeah I'll find that on a bottle I believe but I just want to point out I think as just as a threshold matter I know you your honor has said that we haven't had the linking information but I don't think as a threshold matter the board has presented any evidence to conclude on these claim constructions that a person ordinary skill in the art in 1993 would believe that the system described in those two prior references read on a client-server architecture the system and just want to point out the relevant issue 40213 is the claim system in the prior art that is the threshold thank you thank you mr. Cook mr. Helen thank you very much your honor may please the court board correctly constitute the terms personal computer and land server and claim one with respect to personal computer the board came to the common sense conclusion that a personal computer is defined by the hardware it contains and not by the program that's running at the time and the board held that the prior art which explicitly disclosed a personal computer or disclosed disclosed something that had all the hallmarks of a personal computer to fill that limitation but this is a reexamination so the burden is on the office not on the petitioner for reexamination so isn't there more of a burden not to just say well it is because I say it is but to provide the foundation for the position on which the previously allowed claim now presented for reexamination is no longer allowable your honor I think the burden is exactly the same as the first time around but exactly exactly and that's my question and I think that the board certainly came forward with more than enough I'm not exactly clear why the term personal computer requires a construction I think it has a plain being that's very well known in the art I think we interact with computers on a daily basis and certainly even in the applicant now the patent he raises the issue and says that you you can throw it one way and I'm home free in another way and there's an obstacle that that's correct your honor and so the argument that was presented was that when the personal computer starts running a program the program is called Terminal Unleashed Program it's a way for the personal computer to communicate with another computer on a network which incidentally is exactly what's claimed so when it starts the issue was when it starts running that program does it suddenly transform from something other than a personal computer does it that's suddenly transform fundamentally into a different device and the answer is is no the prior artist clear that it clearly calls for example of the IBM guides it says we use personal computers in the system they run a terminal emulation program in order to to affect this communication so that I think that's pretty good evidence that once you're in the art would understand that a personal computer running a program doesn't change it doesn't change its status as a personal computer so I'm not sure I hope that's addressing your question or addressing what I'm trying to explore and really what I'm trying to think about is it here we have the action in the office it's not before a district court so we have experts on each side and understand at which point additional support for the rejection is required because the inventor himself as an expert says no this is this means something different I understand what you're saying now I see what you're saying I actually believe the testimony there was testimony given by Mr. Gersahane I may be pronouncing that incorrectly but there was testimony from him and his testimony was this is exact the type of architecture that we understood to be claimed this is this reads on those claims so his testimony his testimony was in both the IBM guides and in his own pattern his testimony was this is what we understood at the time to be involved in that type of architecture the type of claimed architect it was 20 years ago it was quite a lot more more than 20 years ago I think the relevant date was 93 so it's more than 20 years ago and at the time we we use computers for an amazing amount of things now and our interaction with things over network is fundamentally different than was in 1993 1993 was at the very beginning of web browsers so really before that time we were dialing up into AOL but the type of terminal communication systems that were described in the prior and used in the prior art those were how computers communicated with each other at that point in time that was how how people could get access from one computer to another now I believe the like as I said if this is something that was so special the specific architecture the client server architecture if it was so special this to distinguish this piece of this pattern from the prior art which otherwise as close as a system is essentially identical in arrangement you would expect the the patent to mention a client or to claim a client as opposed to this claiming a piece of hardware which is what a server is so you could in 1993 you would not want the internet you would go to your catalog you look it up you would order a server from IBM and we come in a box and you take it on you'd set it up with your personal computers and your local area network and that's that's what you would do at the time and I believe that's what's claimed I think that's what the board what the board included well one of the arguments presented in this case has to do with what the proper standard that ought to have been applied to this patent is namely the Xander applied BRI which is like the correct standard because well I don't think it's the correct standard but it appears to be the correct standard yes you're out there because the patent had not expired at the time the examiner was reviewing it that's correct then by the time it got to the board the patent was expired that's correct that's correct that's right that way shouldn't the standard have morphed into Phillips since the patent was since still within the PTO under the executive office adjudication process shouldn't I realize it's odd to say the examiner the board is reviewing the examiner but at that point is it is it really entitled to review the examiner using the wrong standard given that the patent expired well under our rules the examiner under our rules the examiner carries out the re-examination and then there's an appeal to the board and the board reviews again under our rules reviews the part of the executive branches resolution of this issue and what we held in Rambus is the patent expires you all have to use books you don't get to use and isn't it true that in Rambus the exact same facts were present in Rambus as I read the exact same facts the patent had not expired all was in front of the examiner it wasn't until before the board and nonetheless we held note you should have used the Phillips so I think there's one very very important distinction between Rambus in this case and that's that in Rambus the board issued a new grounds of rejection which is which reopened the prosecution so if the board had done that in this case and absolutely they should have used Phillips in their attendant claim construction whereas in Rambus what happened was the board got the examiner's rejection consider it considered it did not like it issued a new grounds of rejection and so in that case under our rules it did not date but that that was essentially a reopening of prosecution under our rules that reopens gives the opportunity to reopen prosecution makes for their men they could have gone back to the examiner they could have well they claimed because the powers expired which is why they had to apply Phillips so at that point so if in this case there had been a new grounds of rejection absolutely then Phillips would apply but that's because the board was not in Rambus the board was not actually reviewing the examiner's rejection at that point they were acting they're stepping to the shoes of the examiner and acting as a sort of you know super examiner in that case and making their own rejection and under those circumstances absolutely Phillips Phillips would apply and that's what they quite correctly helped in Rambus what standard did the board apply for the plan construction? I don't recall at the board explicitly said whether they're applying BRI or Phillips I just I don't recall they may have they may have said that I just don't recall but certainly this court applied Phillips in their review of it so I'm unaware of any case where the pan expired and without a new grounds of rejection the this court has held that BR the board should have had the obligation the firm to obligation to their then enter a new grounds of rejection so essentially that would be what the board would have to do in this case they can't just they can't review the examiner's decision they would have to enter in a new grounds why not I can't they review it and say under either standard the result would be the same why does that constitute a new ground of rejection? possibly I mean it may it may because because they're going to make a factual finding based upon an arrow of construction they could no that was in some yes that's in some every BRI and claim construction under Phillips would be different sometimes they would be identical so if the claim why couldn't and I think that may actually be the case here I agree I was about to say that why then couldn't the board have said well since the patents expired it's we're now in a Phillips world but since the construction is identical it changes nothing and that's as a matter of law you know there's no facts that need to be taken into account to reach that conclusion and and so there's there's no harm no foul I think if if there's no new factual finding that the board undertakes I think they could put that I think they could do that and I actually think that they did something along those lines here I think the examiner does well I or the board board considering when the examiner's the examiner's rejection the amateurs fact-finding because what the board did says did was they said you know we agree with what the examiner said for their claim constructions we're also looking with the district court did they they considered what the district court did when they construed the claims which is always nice when the board does that right something they may have been counseled to do in the past it's yeah it's but well unfortunately that council may have come after this board opinion but they may be anticipated so it's but it's it's something that is good to do and they made they made the factual fine they said for example with respect to the land server they said well let's look and see what these what the hallmarks are in the in the claim construction that the district court gave and then looked in it found that these these systems the systems of the Slytherin Pryor had those hallmarks so did they respond to requests did they meet these limitations the limitations in the claim construction said yes so so if when this came to the to the board on appeal and it looked to the board as if with further amendment the core of what had been invented could be handled what what would the board do would you remand back to the examiner for further examination if the board disagreed with what the examiner did and it would be they they could either enter a new grounds or they could reverse the reverse the rejection so reverse the rejection rather than send it for further examination I'm you're on I'm not I'm not exactly sure what happened in this case because of because since it's since the patent was expired at the time I'm not sure that there's any it makes any difference to send it back to the examiner maybe they could have sent it back to the examiner because that's the issue that I really wanted to raise because it did it it did expire and we know the rule is that once it's when it's expired so that amendment is no longer available neither is VRI to be applied that's so but they go together and if the RRI continues to be applied on appeal even though the patent is expired one would think that amendment would still be available in order to again bring out what was actually invented to the interest of the inventor so now it gets more and more complicated yes I think I see your point and my my response to your honor is that the the patent had every opportunity before when they were before the examiner to make the amendments necessary to convey patentability over these what here to be very strong prior references I think there may have been problems putting in the type of limitations that they're arguing are somehow inherently present or should be inserted into the claim there may be there may be written description problems with making those amendments because I don't see any description for those in the specification claims setting aside those issues saying aside issues of why they chose not to put those that language into their claims once it gets to the board and the patents expired if the board says we think we disagree with the examiner after that point whatever further prosecution takes place or whatever further rejection takes place because it's not it's no longer a review of the examiner's decision that it will have to be conducted under Phillips can I ask you a technical question yes you're on the technology so the prior art yes your honor is is it your view that it discloses in fact a personal computer it's just that that meaning all of the structure that anyone would think of as encapsulating a personal computer a microprocessor you know a screen hard drive a keyboard mouse whatever the structures are that meet the definition of personal computer is it the opposite position that all of those structures were present in what is being referred to as a terminal in Gershchahani it's just that it was running a particular program that had it functioned for that purpose as a terminal but nonetheless it had all of the structural elements of a personal computer yes your honor that that's correct and just to be clear I think that in addition to referring to the system talking about terminals it also refers to these as workstations and at the time I maybe we don't use that term as much now but at the time these computers that were attached to local area networks it at least and I fear I'm using my own recollection here yeah I thought he was doing which is even if you're correct and I would agree with your recollection it probably isn't I don't think that's no record yeah but yes you're absolutely right you're on it and as I said it's it's just my that's just my but but absolutely what they do they they certainly do disclose that the what they call workstation they disclose that those those workstations have all of the hallmarks of what we would expect a personal computer including the fact that they are IBM PS2 which was IBM's personal computer at the time that was why so let me see I have figure 53 figure 53 27 figure one a Gershchahani yes all the figures of Gershchahani show that and then also in the text of the at 53 55 column 15 lines let me see 28 to 29 so that that says the workstation 100 can be an IBM PS2 model 80 for example now is the that is yes that's the personal computer that IBM sold at the time or why the personal computer is IBM sold at the time and so and then they go on after that to discuss very specific aspects what is that column line number is that that's that was at 15 line 28 29 and then my column 16 lines 6 to 8 they talk about that it has memory in the workstation it has a multitasking operating system which is the OS 2 extended edition by IBM and they go on and so to talk to talk further about the the workstations so and again when they talking about terminals it's supposed that this reference maybe discloses more than just the the type of system that's claimed because when they're talking about terminals there's an alternative and this is what Mr. Gershchahani said in the district court litigation he said there's more than just there's more than just I'm sorry I'm over my time if I could just it is a complete finish there's more than just terminal there's terminals interacting with mainframes and then we also have this type of system which is personal computers interacting with the server and so he was saying that that type of personal computer interacting with a server that's the type of architecture that they were going for especially IBM guides. Thank you Mr

. Helen thank you very much your honor may please the court board correctly constitute the terms personal computer and land server and claim one with respect to personal computer the board came to the common sense conclusion that a personal computer is defined by the hardware it contains and not by the program that's running at the time and the board held that the prior art which explicitly disclosed a personal computer or disclosed disclosed something that had all the hallmarks of a personal computer to fill that limitation but this is a reexamination so the burden is on the office not on the petitioner for reexamination so isn't there more of a burden not to just say well it is because I say it is but to provide the foundation for the position on which the previously allowed claim now presented for reexamination is no longer allowable your honor I think the burden is exactly the same as the first time around but exactly exactly and that's my question and I think that the board certainly came forward with more than enough I'm not exactly clear why the term personal computer requires a construction I think it has a plain being that's very well known in the art I think we interact with computers on a daily basis and certainly even in the applicant now the patent he raises the issue and says that you you can throw it one way and I'm home free in another way and there's an obstacle that that's correct your honor and so the argument that was presented was that when the personal computer starts running a program the program is called Terminal Unleashed Program it's a way for the personal computer to communicate with another computer on a network which incidentally is exactly what's claimed so when it starts the issue was when it starts running that program does it suddenly transform from something other than a personal computer does it that's suddenly transform fundamentally into a different device and the answer is is no the prior artist clear that it clearly calls for example of the IBM guides it says we use personal computers in the system they run a terminal emulation program in order to to affect this communication so that I think that's pretty good evidence that once you're in the art would understand that a personal computer running a program doesn't change it doesn't change its status as a personal computer so I'm not sure I hope that's addressing your question or addressing what I'm trying to explore and really what I'm trying to think about is it here we have the action in the office it's not before a district court so we have experts on each side and understand at which point additional support for the rejection is required because the inventor himself as an expert says no this is this means something different I understand what you're saying now I see what you're saying I actually believe the testimony there was testimony given by Mr. Gersahane I may be pronouncing that incorrectly but there was testimony from him and his testimony was this is exact the type of architecture that we understood to be claimed this is this reads on those claims so his testimony his testimony was in both the IBM guides and in his own pattern his testimony was this is what we understood at the time to be involved in that type of architecture the type of claimed architect it was 20 years ago it was quite a lot more more than 20 years ago I think the relevant date was 93 so it's more than 20 years ago and at the time we we use computers for an amazing amount of things now and our interaction with things over network is fundamentally different than was in 1993 1993 was at the very beginning of web browsers so really before that time we were dialing up into AOL but the type of terminal communication systems that were described in the prior and used in the prior art those were how computers communicated with each other at that point in time that was how how people could get access from one computer to another now I believe the like as I said if this is something that was so special the specific architecture the client server architecture if it was so special this to distinguish this piece of this pattern from the prior art which otherwise as close as a system is essentially identical in arrangement you would expect the the patent to mention a client or to claim a client as opposed to this claiming a piece of hardware which is what a server is so you could in 1993 you would not want the internet you would go to your catalog you look it up you would order a server from IBM and we come in a box and you take it on you'd set it up with your personal computers and your local area network and that's that's what you would do at the time and I believe that's what's claimed I think that's what the board what the board included well one of the arguments presented in this case has to do with what the proper standard that ought to have been applied to this patent is namely the Xander applied BRI which is like the correct standard because well I don't think it's the correct standard but it appears to be the correct standard yes you're out there because the patent had not expired at the time the examiner was reviewing it that's correct then by the time it got to the board the patent was expired that's correct that's correct that's right that way shouldn't the standard have morphed into Phillips since the patent was since still within the PTO under the executive office adjudication process shouldn't I realize it's odd to say the examiner the board is reviewing the examiner but at that point is it is it really entitled to review the examiner using the wrong standard given that the patent expired well under our rules the examiner under our rules the examiner carries out the re-examination and then there's an appeal to the board and the board reviews again under our rules reviews the part of the executive branches resolution of this issue and what we held in Rambus is the patent expires you all have to use books you don't get to use and isn't it true that in Rambus the exact same facts were present in Rambus as I read the exact same facts the patent had not expired all was in front of the examiner it wasn't until before the board and nonetheless we held note you should have used the Phillips so I think there's one very very important distinction between Rambus in this case and that's that in Rambus the board issued a new grounds of rejection which is which reopened the prosecution so if the board had done that in this case and absolutely they should have used Phillips in their attendant claim construction whereas in Rambus what happened was the board got the examiner's rejection consider it considered it did not like it issued a new grounds of rejection and so in that case under our rules it did not date but that that was essentially a reopening of prosecution under our rules that reopens gives the opportunity to reopen prosecution makes for their men they could have gone back to the examiner they could have well they claimed because the powers expired which is why they had to apply Phillips so at that point so if in this case there had been a new grounds of rejection absolutely then Phillips would apply but that's because the board was not in Rambus the board was not actually reviewing the examiner's rejection at that point they were acting they're stepping to the shoes of the examiner and acting as a sort of you know super examiner in that case and making their own rejection and under those circumstances absolutely Phillips Phillips would apply and that's what they quite correctly helped in Rambus what standard did the board apply for the plan construction? I don't recall at the board explicitly said whether they're applying BRI or Phillips I just I don't recall they may have they may have said that I just don't recall but certainly this court applied Phillips in their review of it so I'm unaware of any case where the pan expired and without a new grounds of rejection the this court has held that BR the board should have had the obligation the firm to obligation to their then enter a new grounds of rejection so essentially that would be what the board would have to do in this case they can't just they can't review the examiner's decision they would have to enter in a new grounds why not I can't they review it and say under either standard the result would be the same why does that constitute a new ground of rejection? possibly I mean it may it may because because they're going to make a factual finding based upon an arrow of construction they could no that was in some yes that's in some every BRI and claim construction under Phillips would be different sometimes they would be identical so if the claim why couldn't and I think that may actually be the case here I agree I was about to say that why then couldn't the board have said well since the patents expired it's we're now in a Phillips world but since the construction is identical it changes nothing and that's as a matter of law you know there's no facts that need to be taken into account to reach that conclusion and and so there's there's no harm no foul I think if if there's no new factual finding that the board undertakes I think they could put that I think they could do that and I actually think that they did something along those lines here I think the examiner does well I or the board board considering when the examiner's the examiner's rejection the amateurs fact-finding because what the board did says did was they said you know we agree with what the examiner said for their claim constructions we're also looking with the district court did they they considered what the district court did when they construed the claims which is always nice when the board does that right something they may have been counseled to do in the past it's yeah it's but well unfortunately that council may have come after this board opinion but they may be anticipated so it's but it's it's something that is good to do and they made they made the factual fine they said for example with respect to the land server they said well let's look and see what these what the hallmarks are in the in the claim construction that the district court gave and then looked in it found that these these systems the systems of the Slytherin Pryor had those hallmarks so did they respond to requests did they meet these limitations the limitations in the claim construction said yes so so if when this came to the to the board on appeal and it looked to the board as if with further amendment the core of what had been invented could be handled what what would the board do would you remand back to the examiner for further examination if the board disagreed with what the examiner did and it would be they they could either enter a new grounds or they could reverse the reverse the rejection so reverse the rejection rather than send it for further examination I'm you're on I'm not I'm not exactly sure what happened in this case because of because since it's since the patent was expired at the time I'm not sure that there's any it makes any difference to send it back to the examiner maybe they could have sent it back to the examiner because that's the issue that I really wanted to raise because it did it it did expire and we know the rule is that once it's when it's expired so that amendment is no longer available neither is VRI to be applied that's so but they go together and if the RRI continues to be applied on appeal even though the patent is expired one would think that amendment would still be available in order to again bring out what was actually invented to the interest of the inventor so now it gets more and more complicated yes I think I see your point and my my response to your honor is that the the patent had every opportunity before when they were before the examiner to make the amendments necessary to convey patentability over these what here to be very strong prior references I think there may have been problems putting in the type of limitations that they're arguing are somehow inherently present or should be inserted into the claim there may be there may be written description problems with making those amendments because I don't see any description for those in the specification claims setting aside those issues saying aside issues of why they chose not to put those that language into their claims once it gets to the board and the patents expired if the board says we think we disagree with the examiner after that point whatever further prosecution takes place or whatever further rejection takes place because it's not it's no longer a review of the examiner's decision that it will have to be conducted under Phillips can I ask you a technical question yes you're on the technology so the prior art yes your honor is is it your view that it discloses in fact a personal computer it's just that that meaning all of the structure that anyone would think of as encapsulating a personal computer a microprocessor you know a screen hard drive a keyboard mouse whatever the structures are that meet the definition of personal computer is it the opposite position that all of those structures were present in what is being referred to as a terminal in Gershchahani it's just that it was running a particular program that had it functioned for that purpose as a terminal but nonetheless it had all of the structural elements of a personal computer yes your honor that that's correct and just to be clear I think that in addition to referring to the system talking about terminals it also refers to these as workstations and at the time I maybe we don't use that term as much now but at the time these computers that were attached to local area networks it at least and I fear I'm using my own recollection here yeah I thought he was doing which is even if you're correct and I would agree with your recollection it probably isn't I don't think that's no record yeah but yes you're absolutely right you're on it and as I said it's it's just my that's just my but but absolutely what they do they they certainly do disclose that the what they call workstation they disclose that those those workstations have all of the hallmarks of what we would expect a personal computer including the fact that they are IBM PS2 which was IBM's personal computer at the time that was why so let me see I have figure 53 figure 53 27 figure one a Gershchahani yes all the figures of Gershchahani show that and then also in the text of the at 53 55 column 15 lines let me see 28 to 29 so that that says the workstation 100 can be an IBM PS2 model 80 for example now is the that is yes that's the personal computer that IBM sold at the time or why the personal computer is IBM sold at the time and so and then they go on after that to discuss very specific aspects what is that column line number is that that's that was at 15 line 28 29 and then my column 16 lines 6 to 8 they talk about that it has memory in the workstation it has a multitasking operating system which is the OS 2 extended edition by IBM and they go on and so to talk to talk further about the the workstations so and again when they talking about terminals it's supposed that this reference maybe discloses more than just the the type of system that's claimed because when they're talking about terminals there's an alternative and this is what Mr. Gershchahani said in the district court litigation he said there's more than just there's more than just I'm sorry I'm over my time if I could just it is a complete finish there's more than just terminal there's terminals interacting with mainframes and then we also have this type of system which is personal computers interacting with the server and so he was saying that that type of personal computer interacting with a server that's the type of architecture that they were going for especially IBM guides. Thank you Mr. Helm. Thank you there's a few points to be brief first of all what he said about Mr. Gershchahani and saying that in his patent is a server communicating with the PC that's not the contemporaneous evidence which is his own patent totally contradicts them. Servers never mentioned in his patent there's nothing in did where personal computers are sending and receiving any type of information as personal computers is undisputed that in the system of Gershchahani host computers exchange menu images with workstations functioning as terminals and when you take a look at the what the analysis has to be in one oh two one oh three it's you have to find the system in the system of claim one in Mr

. Helm. Thank you there's a few points to be brief first of all what he said about Mr. Gershchahani and saying that in his patent is a server communicating with the PC that's not the contemporaneous evidence which is his own patent totally contradicts them. Servers never mentioned in his patent there's nothing in did where personal computers are sending and receiving any type of information as personal computers is undisputed that in the system of Gershchahani host computers exchange menu images with workstations functioning as terminals and when you take a look at the what the analysis has to be in one oh two one oh three it's you have to find the system in the system of claim one in Mr. Gershchahani the system of claim one has a server and personal computers and personal computers are not just sitting doing nothing they're sending and receiving data records as personal computers and it's just I just in Gershchahani he refers into him as as terminals and to say that Mr. Gershchahani conceived and enabled an invention of claim one seems doesn't seem to be supported by any evidence and you heard them they haven't been able to point to any evidence even and his argument he hasn't pointed to any evidence. Now on the flip side as you say Mr. Gershchahani is own patent he himself refers to these workstations as terminals and information is sent to the terminal and from the terminal and then you look at the definition of emulation at a 911 a it talks about the term emulation makes what you refer to them as terminals but doesn't he also refer to them as workstation workstation but if you look at the I this is not a record if you look at the IBM it might be in one of the glossary's but if you look at the definition of workstation is a terminal with a with the human what in the IBM references but no but he defines it Gershchahani defines it in reference doesn't find it as a human he defines it as the workstation 100 can be an IBM PS-2 model 80 for example yes it can start out as a personal computer it starts out as a person but when you look at it from the perspective of the system it is a terminal it's been converted into a terminal in the system and that is the relevantly equal question in the system what is the nature of that component and in this system Mr

. Gershchahani the system of claim one has a server and personal computers and personal computers are not just sitting doing nothing they're sending and receiving data records as personal computers and it's just I just in Gershchahani he refers into him as as terminals and to say that Mr. Gershchahani conceived and enabled an invention of claim one seems doesn't seem to be supported by any evidence and you heard them they haven't been able to point to any evidence even and his argument he hasn't pointed to any evidence. Now on the flip side as you say Mr. Gershchahani is own patent he himself refers to these workstations as terminals and information is sent to the terminal and from the terminal and then you look at the definition of emulation at a 911 a it talks about the term emulation makes what you refer to them as terminals but doesn't he also refer to them as workstation workstation but if you look at the I this is not a record if you look at the IBM it might be in one of the glossary's but if you look at the definition of workstation is a terminal with a with the human what in the IBM references but no but he defines it Gershchahani defines it in reference doesn't find it as a human he defines it as the workstation 100 can be an IBM PS-2 model 80 for example yes it can start out as a personal computer it starts out as a person but when you look at it from the perspective of the system it is a terminal it's been converted into a terminal in the system and that is the relevantly equal question in the system what is the nature of that component and in this system Mr. Gershchahani clearly says his are terminals and then function as terminals and they receive and send screen images as terminals whereas in contrast claim one the personal computers are sending and receiving data records as personal computers and even if you take a look at the not just not the personal computer terminal issue there's a land server issue and the host computer if you look at the IBM glossaries there's discrete definitions of of these things and even the IBM definition host computer is the controlling or main computer in a in an architecture where the definite server says it serves other components in the system which are clients in this case the personal computer so when you take a look at the system as a whole and not just parsing individual components it's clear that Gershchahani and the core coordinator does not show the system of claim one and I say we can point to the evidence of record is Mr. Gershchahani himself referring to these as terminals the IBM glossary for instance 49 62 and 49 63 with discrete definitions of host computer and server and the definition of term emulation and you can look at the core coordinator 4306 where it says the host computer communicates via sending screen images via term emulation and we believe that that the term emulation turns a personal computer into a terminal in the system now going back to BRI I think their distinction about the Ramdis case of distinction without a distinction the court did not make a distinction saying it was because it was sent back in fact I think that actually cuts against them the fact that they were given an additional opportunity to amend the claims and they still use said Phillips had to apply actually cuts against them I believe that in this case Phillips should have been used because the patent expired now and I just think person of ordinary skill in the art looking at the the prior art and the claim one would not believe that Mr. Gershchahani was in possession of the client server system of claim one and we know the claim one is a client server I mean person of ordinary skill in the art it's inherent when I see a server they see a client server relationship and I think this court reiterated that in the Apple Samson case couple weeks ago and that's all I had thank you. Okay thank you thank you both the case has taken under submission

Okay, the next case is number 15, 1832, in RCSP system international and incorporated Mr. Koch. Good morning. May please the court. My name is Bruce Cook. On behalf of the Palant, CSB, since the International. This is an appeal from a re-examination where they found the firm the ability findings. We believe that there are at least three main legal errors committed by the PTO in its 102-103 and validity analysis. First, we believe they failed to consider that this is a system claimed to a specific type of architecture. Two, their claim constructions are not supported by evidence and in fact, contradicted by the contemporaneous evidence of the par-art itself. And three, the use of the broadest reasonable interpretation standard instead of the Philip standard since the underlying patent expired during the re-examination. Now, turning to the first main legal error, this claim won what's a system claimed, specific system claimed to integrate an EDP and telephone system to allow the customer service representative to receive the customer information at his computer by one-the-call arise. Now, this is a specific architecture listed in claim one of the patent. It has a server and a client and a person ordinary skill in the art viewing this would see that this is clearly a client server architecture. Now, so the relevant question for the 102 and 103 is does the par-art references alone or in combination teach the specific architecture set forth and claim one, the specific client server architecture? Now, looking at the par-art references, Gersahani and the call coordinator, they have a host to a terminal system. A person ordinary skill in the art in 1993 would clearly see this as a host terminal architecture, a different and discrete architecture than described and claim one of the patent. What is it that you think can claim one in a minute fits to a client's server architecture? Sure. The good question. The fact that there's a server and personal computers receiving and sending data records as this court recently reiterated in the Apple versus Samsung case that the mention of a server to a person ordinary skill in the art would signal a client server relationship. It was citing the Apple versus Motorola case 757 fed through Fed 3rd 304. So to a person who are in our skill in the art seeing claim one, they would see a client server architecture. Now when you're looking at the prior art of Gersahani and Cole Cornel, as I said, it's a host terminal architecture. And how do we know that? Well, the prior art itself states that. Gersahani clearly has many passages stating that in this invention is a host computer communicating through screen images to terminal, a functioning terminal. But why what evidence did you present that the terminals in the prior art reference can't be considered personal computers? Because if you look at Gersahani itself, the prior art author himself refers to these workstations converted into terminals as terminals. He states that the flow information is to the terminal from the terminal and he states that the invention in the invention, the host computer must interface with a terminal with a 3270 or 5280 terminal. So in his mind, and he states it explicitly, this is a host terminal architecture. He does not, he does not, it shows that he does not believe that he was in possession of a client server architecture for this integrated EDP and telephone system. So I think that's the best evidence. You articulate, this claim articulate personal computers and then it articulates a land server. If the terminals in the prior art reference perform all the functions that the claim acquires of personal computers and the host performs all the functions as the land server as only limited in the claims, because of course from that can import functions or objectives from the specification to the claim. So if the disclosure in the prior art reference has a terminal computer that can for example send and receive and all of that other stuff that is required by this claim, then why is it not anticipatory? Why does the simple context of host versus client server matter if all of the elements of the claim are identically performed by thus structures disclosed in the prior art reference? I'm glad you asked that question. I believe the answer is one, a person of ordinary skill in the art in 1993 would believe that these are not the same architectures. You say that, but I can't find any evidence in the records that are submitted that would have made it implausible, improper or even, and even worse, I've got to give substantial evidence to the board's findings. So what evidence of record is there other than your personal statement as a attorney argument to establish? Sure, as I said, the statements by Mr. Gersahani himself in his patent, what he refers to these terminals as terminals, and also if you look at... Distrofered from his terminals, but he also discusses later on that they're capable of sending and receiving. He also has at column 16 he says they have a multi-tasking operating system. That's true, but when you look at the relevant legal question is in the system what is the nature of that component? No, I think it's what's the nature of that component. I think the question is does that component meet all of the elements of the claim? We don't do some, you know, general analysis, right? We've got a claim. The claim articulates certain functions, a personal computer must perform certain structures it must have, whatever, and I don't think that what I'm having trouble seeing is how the prior art doesn't actually meet each of these limitations even though it calls itself a terminal rather than a personal computer. And your answer as I understand it is, but one of skill-narr understand these things to be different, but the fact that they have differences that are irrelevant to the claim limitations doesn't seem to meet each other. Well, if you look at the glossary of the call coordinator, if you look at 49.62 and 49.63, you'll see that that has discrete definitions for host computer versus server. So at that time, a person would not believe that a host computer was equivalent to a server. And the other thing I would like to point out, I don't believe that there is a doctrine of equivalence and validity analysis, which I believe is what is kind of morphing into. It's what a person of ordinary skill in the art would believe this to be. And there's a different flow of logic in a client server versus a host terminal. But that doesn't even spread curve. You're true, because I have an electrical engineer at heart. But none of that is in this record. There is no expert that said this in this case. There are no documents that you can point me to in this record that can establish beyond the substantial evidence standard that I've got to give reference to the board for that the arguments you're making in as an attorney are factually unequivocally correct and that no conclusion to the contrary will be supported by substantial evidence. That's my problem with this. Okay, first I would like to point out that the board itself has no evidence at all about that a person ordinary skill in the art would believe that a host computer is equivalent to a land server and that a term functioning terminal would be could would be is the same as a personal computer in the system. Time out, Estich, Stolt pointed out the prior reference discloses what this terminal contains in the way of architecture and the prior reference discloses what this structure is capable of doing in the way of functionality sending and receiving. At that point in time the terminal as disclosed in the prior art reference doesn't seem to me to be distinguishable from a personal computer in any meaningful sense. So why is there no substantial evidence for that board conclusion? Well I believe it back to back to what the prior author says he refers to these as terminals and I think you can safely say that if it was just a plain terminal and not a personal computer converted to terminal it would definitely be different in the eyes of a person ordinary skill in the art. What's missing is for example evidence on your part that people of skill in the art understood terminals to differ from personal computers. You're just pointing at the fact that two different words happen to be used but the evidentiary length that's missing is that those two different words would convey to one of skill in the art the idea of very different non-equivalent structures. Sure but I don't think the board itself has connected that structure either it hasn't provided any evidence either and they had the bird initial burden of production and the burden of persuasion on that issue and I think as a threshold matter they didn't prove it either and I and I contrary I've been risked respectfully disagree I believe that the fact that the prior art glossaries and cells have distinct definitions discrete definitions show it and also I think to a person who already skilled in art this is inherent this is inherently different architecture that a person ordinary skill in the art would readily understand I know but you can't just say it I can say it but I can I come back to what what the prior author himself if in fact in the in the Gersahani there's no mention of server at all host is mentioned 630 13 times and servers never mentioned and when he talks about the invention he says the invention is a host computer that must interface with a terminal and you got to realize at this time the historical time there was all these host terminal legacy systems but the manufacturers had stopped making the hardware terminal so they needed to create some terminal out of something so that they could keep these host terminal legacy systems operating so that's why they had a terminal emulation and further I think well you look at you look at the definition of terminal emulation that's in the record it states where can I find that definition sure take me directly to it probably around 49 59 something that I haven't found it yet well perhaps you can find yeah I'll find that on a bottle I believe but I just want to point out I think as just as a threshold matter I know you your honor has said that we haven't had the linking information but I don't think as a threshold matter the board has presented any evidence to conclude on these claim constructions that a person ordinary skill in the art in 1993 would believe that the system described in those two prior references read on a client-server architecture the system and just want to point out the relevant issue 40213 is the claim system in the prior art that is the threshold thank you thank you mr. Cook mr. Helen thank you very much your honor may please the court board correctly constitute the terms personal computer and land server and claim one with respect to personal computer the board came to the common sense conclusion that a personal computer is defined by the hardware it contains and not by the program that's running at the time and the board held that the prior art which explicitly disclosed a personal computer or disclosed disclosed something that had all the hallmarks of a personal computer to fill that limitation but this is a reexamination so the burden is on the office not on the petitioner for reexamination so isn't there more of a burden not to just say well it is because I say it is but to provide the foundation for the position on which the previously allowed claim now presented for reexamination is no longer allowable your honor I think the burden is exactly the same as the first time around but exactly exactly and that's my question and I think that the board certainly came forward with more than enough I'm not exactly clear why the term personal computer requires a construction I think it has a plain being that's very well known in the art I think we interact with computers on a daily basis and certainly even in the applicant now the patent he raises the issue and says that you you can throw it one way and I'm home free in another way and there's an obstacle that that's correct your honor and so the argument that was presented was that when the personal computer starts running a program the program is called Terminal Unleashed Program it's a way for the personal computer to communicate with another computer on a network which incidentally is exactly what's claimed so when it starts the issue was when it starts running that program does it suddenly transform from something other than a personal computer does it that's suddenly transform fundamentally into a different device and the answer is is no the prior artist clear that it clearly calls for example of the IBM guides it says we use personal computers in the system they run a terminal emulation program in order to to affect this communication so that I think that's pretty good evidence that once you're in the art would understand that a personal computer running a program doesn't change it doesn't change its status as a personal computer so I'm not sure I hope that's addressing your question or addressing what I'm trying to explore and really what I'm trying to think about is it here we have the action in the office it's not before a district court so we have experts on each side and understand at which point additional support for the rejection is required because the inventor himself as an expert says no this is this means something different I understand what you're saying now I see what you're saying I actually believe the testimony there was testimony given by Mr. Gersahane I may be pronouncing that incorrectly but there was testimony from him and his testimony was this is exact the type of architecture that we understood to be claimed this is this reads on those claims so his testimony his testimony was in both the IBM guides and in his own pattern his testimony was this is what we understood at the time to be involved in that type of architecture the type of claimed architect it was 20 years ago it was quite a lot more more than 20 years ago I think the relevant date was 93 so it's more than 20 years ago and at the time we we use computers for an amazing amount of things now and our interaction with things over network is fundamentally different than was in 1993 1993 was at the very beginning of web browsers so really before that time we were dialing up into AOL but the type of terminal communication systems that were described in the prior and used in the prior art those were how computers communicated with each other at that point in time that was how how people could get access from one computer to another now I believe the like as I said if this is something that was so special the specific architecture the client server architecture if it was so special this to distinguish this piece of this pattern from the prior art which otherwise as close as a system is essentially identical in arrangement you would expect the the patent to mention a client or to claim a client as opposed to this claiming a piece of hardware which is what a server is so you could in 1993 you would not want the internet you would go to your catalog you look it up you would order a server from IBM and we come in a box and you take it on you'd set it up with your personal computers and your local area network and that's that's what you would do at the time and I believe that's what's claimed I think that's what the board what the board included well one of the arguments presented in this case has to do with what the proper standard that ought to have been applied to this patent is namely the Xander applied BRI which is like the correct standard because well I don't think it's the correct standard but it appears to be the correct standard yes you're out there because the patent had not expired at the time the examiner was reviewing it that's correct then by the time it got to the board the patent was expired that's correct that's correct that's right that way shouldn't the standard have morphed into Phillips since the patent was since still within the PTO under the executive office adjudication process shouldn't I realize it's odd to say the examiner the board is reviewing the examiner but at that point is it is it really entitled to review the examiner using the wrong standard given that the patent expired well under our rules the examiner under our rules the examiner carries out the re-examination and then there's an appeal to the board and the board reviews again under our rules reviews the part of the executive branches resolution of this issue and what we held in Rambus is the patent expires you all have to use books you don't get to use and isn't it true that in Rambus the exact same facts were present in Rambus as I read the exact same facts the patent had not expired all was in front of the examiner it wasn't until before the board and nonetheless we held note you should have used the Phillips so I think there's one very very important distinction between Rambus in this case and that's that in Rambus the board issued a new grounds of rejection which is which reopened the prosecution so if the board had done that in this case and absolutely they should have used Phillips in their attendant claim construction whereas in Rambus what happened was the board got the examiner's rejection consider it considered it did not like it issued a new grounds of rejection and so in that case under our rules it did not date but that that was essentially a reopening of prosecution under our rules that reopens gives the opportunity to reopen prosecution makes for their men they could have gone back to the examiner they could have well they claimed because the powers expired which is why they had to apply Phillips so at that point so if in this case there had been a new grounds of rejection absolutely then Phillips would apply but that's because the board was not in Rambus the board was not actually reviewing the examiner's rejection at that point they were acting they're stepping to the shoes of the examiner and acting as a sort of you know super examiner in that case and making their own rejection and under those circumstances absolutely Phillips Phillips would apply and that's what they quite correctly helped in Rambus what standard did the board apply for the plan construction? I don't recall at the board explicitly said whether they're applying BRI or Phillips I just I don't recall they may have they may have said that I just don't recall but certainly this court applied Phillips in their review of it so I'm unaware of any case where the pan expired and without a new grounds of rejection the this court has held that BR the board should have had the obligation the firm to obligation to their then enter a new grounds of rejection so essentially that would be what the board would have to do in this case they can't just they can't review the examiner's decision they would have to enter in a new grounds why not I can't they review it and say under either standard the result would be the same why does that constitute a new ground of rejection? possibly I mean it may it may because because they're going to make a factual finding based upon an arrow of construction they could no that was in some yes that's in some every BRI and claim construction under Phillips would be different sometimes they would be identical so if the claim why couldn't and I think that may actually be the case here I agree I was about to say that why then couldn't the board have said well since the patents expired it's we're now in a Phillips world but since the construction is identical it changes nothing and that's as a matter of law you know there's no facts that need to be taken into account to reach that conclusion and and so there's there's no harm no foul I think if if there's no new factual finding that the board undertakes I think they could put that I think they could do that and I actually think that they did something along those lines here I think the examiner does well I or the board board considering when the examiner's the examiner's rejection the amateurs fact-finding because what the board did says did was they said you know we agree with what the examiner said for their claim constructions we're also looking with the district court did they they considered what the district court did when they construed the claims which is always nice when the board does that right something they may have been counseled to do in the past it's yeah it's but well unfortunately that council may have come after this board opinion but they may be anticipated so it's but it's it's something that is good to do and they made they made the factual fine they said for example with respect to the land server they said well let's look and see what these what the hallmarks are in the in the claim construction that the district court gave and then looked in it found that these these systems the systems of the Slytherin Pryor had those hallmarks so did they respond to requests did they meet these limitations the limitations in the claim construction said yes so so if when this came to the to the board on appeal and it looked to the board as if with further amendment the core of what had been invented could be handled what what would the board do would you remand back to the examiner for further examination if the board disagreed with what the examiner did and it would be they they could either enter a new grounds or they could reverse the reverse the rejection so reverse the rejection rather than send it for further examination I'm you're on I'm not I'm not exactly sure what happened in this case because of because since it's since the patent was expired at the time I'm not sure that there's any it makes any difference to send it back to the examiner maybe they could have sent it back to the examiner because that's the issue that I really wanted to raise because it did it it did expire and we know the rule is that once it's when it's expired so that amendment is no longer available neither is VRI to be applied that's so but they go together and if the RRI continues to be applied on appeal even though the patent is expired one would think that amendment would still be available in order to again bring out what was actually invented to the interest of the inventor so now it gets more and more complicated yes I think I see your point and my my response to your honor is that the the patent had every opportunity before when they were before the examiner to make the amendments necessary to convey patentability over these what here to be very strong prior references I think there may have been problems putting in the type of limitations that they're arguing are somehow inherently present or should be inserted into the claim there may be there may be written description problems with making those amendments because I don't see any description for those in the specification claims setting aside those issues saying aside issues of why they chose not to put those that language into their claims once it gets to the board and the patents expired if the board says we think we disagree with the examiner after that point whatever further prosecution takes place or whatever further rejection takes place because it's not it's no longer a review of the examiner's decision that it will have to be conducted under Phillips can I ask you a technical question yes you're on the technology so the prior art yes your honor is is it your view that it discloses in fact a personal computer it's just that that meaning all of the structure that anyone would think of as encapsulating a personal computer a microprocessor you know a screen hard drive a keyboard mouse whatever the structures are that meet the definition of personal computer is it the opposite position that all of those structures were present in what is being referred to as a terminal in Gershchahani it's just that it was running a particular program that had it functioned for that purpose as a terminal but nonetheless it had all of the structural elements of a personal computer yes your honor that that's correct and just to be clear I think that in addition to referring to the system talking about terminals it also refers to these as workstations and at the time I maybe we don't use that term as much now but at the time these computers that were attached to local area networks it at least and I fear I'm using my own recollection here yeah I thought he was doing which is even if you're correct and I would agree with your recollection it probably isn't I don't think that's no record yeah but yes you're absolutely right you're on it and as I said it's it's just my that's just my but but absolutely what they do they they certainly do disclose that the what they call workstation they disclose that those those workstations have all of the hallmarks of what we would expect a personal computer including the fact that they are IBM PS2 which was IBM's personal computer at the time that was why so let me see I have figure 53 figure 53 27 figure one a Gershchahani yes all the figures of Gershchahani show that and then also in the text of the at 53 55 column 15 lines let me see 28 to 29 so that that says the workstation 100 can be an IBM PS2 model 80 for example now is the that is yes that's the personal computer that IBM sold at the time or why the personal computer is IBM sold at the time and so and then they go on after that to discuss very specific aspects what is that column line number is that that's that was at 15 line 28 29 and then my column 16 lines 6 to 8 they talk about that it has memory in the workstation it has a multitasking operating system which is the OS 2 extended edition by IBM and they go on and so to talk to talk further about the the workstations so and again when they talking about terminals it's supposed that this reference maybe discloses more than just the the type of system that's claimed because when they're talking about terminals there's an alternative and this is what Mr. Gershchahani said in the district court litigation he said there's more than just there's more than just I'm sorry I'm over my time if I could just it is a complete finish there's more than just terminal there's terminals interacting with mainframes and then we also have this type of system which is personal computers interacting with the server and so he was saying that that type of personal computer interacting with a server that's the type of architecture that they were going for especially IBM guides. Thank you Mr. Helm. Thank you there's a few points to be brief first of all what he said about Mr. Gershchahani and saying that in his patent is a server communicating with the PC that's not the contemporaneous evidence which is his own patent totally contradicts them. Servers never mentioned in his patent there's nothing in did where personal computers are sending and receiving any type of information as personal computers is undisputed that in the system of Gershchahani host computers exchange menu images with workstations functioning as terminals and when you take a look at the what the analysis has to be in one oh two one oh three it's you have to find the system in the system of claim one in Mr. Gershchahani the system of claim one has a server and personal computers and personal computers are not just sitting doing nothing they're sending and receiving data records as personal computers and it's just I just in Gershchahani he refers into him as as terminals and to say that Mr. Gershchahani conceived and enabled an invention of claim one seems doesn't seem to be supported by any evidence and you heard them they haven't been able to point to any evidence even and his argument he hasn't pointed to any evidence. Now on the flip side as you say Mr. Gershchahani is own patent he himself refers to these workstations as terminals and information is sent to the terminal and from the terminal and then you look at the definition of emulation at a 911 a it talks about the term emulation makes what you refer to them as terminals but doesn't he also refer to them as workstation workstation but if you look at the I this is not a record if you look at the IBM it might be in one of the glossary's but if you look at the definition of workstation is a terminal with a with the human what in the IBM references but no but he defines it Gershchahani defines it in reference doesn't find it as a human he defines it as the workstation 100 can be an IBM PS-2 model 80 for example yes it can start out as a personal computer it starts out as a person but when you look at it from the perspective of the system it is a terminal it's been converted into a terminal in the system and that is the relevantly equal question in the system what is the nature of that component and in this system Mr. Gershchahani clearly says his are terminals and then function as terminals and they receive and send screen images as terminals whereas in contrast claim one the personal computers are sending and receiving data records as personal computers and even if you take a look at the not just not the personal computer terminal issue there's a land server issue and the host computer if you look at the IBM glossaries there's discrete definitions of of these things and even the IBM definition host computer is the controlling or main computer in a in an architecture where the definite server says it serves other components in the system which are clients in this case the personal computer so when you take a look at the system as a whole and not just parsing individual components it's clear that Gershchahani and the core coordinator does not show the system of claim one and I say we can point to the evidence of record is Mr. Gershchahani himself referring to these as terminals the IBM glossary for instance 49 62 and 49 63 with discrete definitions of host computer and server and the definition of term emulation and you can look at the core coordinator 4306 where it says the host computer communicates via sending screen images via term emulation and we believe that that the term emulation turns a personal computer into a terminal in the system now going back to BRI I think their distinction about the Ramdis case of distinction without a distinction the court did not make a distinction saying it was because it was sent back in fact I think that actually cuts against them the fact that they were given an additional opportunity to amend the claims and they still use said Phillips had to apply actually cuts against them I believe that in this case Phillips should have been used because the patent expired now and I just think person of ordinary skill in the art looking at the the prior art and the claim one would not believe that Mr. Gershchahani was in possession of the client server system of claim one and we know the claim one is a client server I mean person of ordinary skill in the art it's inherent when I see a server they see a client server relationship and I think this court reiterated that in the Apple Samson case couple weeks ago and that's all I had thank you. Okay thank you thank you both the case has taken under submissio