I'm going to go back to the other side. I'm going to go back to the other side. Next case is Frank Wier at Alvers' Facebook 2014-1378. We're here from Mr. Wier who is apparently both inventor and counsel. Yes, thank you. Good morning, Your Honours
. As you mentioned, Frank Wier, I'm an attorney for the opellans who are myself and Coenventer Troy Jabahre, who's also here today. I think our arguments are clearly set forth in our brief. The only thing I would like to bring to Your Honours' attention is a decision issued in September by a different panel of this court of which Judge Moore was a member that is relevant to the argument made in my Facebook in its opposition brief. That this court does not have its jurisdiction to review the claim construction used by the Patent Trial and the Peel Board in its decision. And if that construction is not correct to remand the case to the board for consideration under the correct interpretation. In the relevant part of that decision, the September decision, the court stated, because the board analyzed the claims and the prior art under an erroneous construction, we vacate the board's decision and remand to the Patent Office to assess the validity of these claims under the correct construction
. The case was Facebook, the pragmatist AV, case number 2013-1550, and the date of the decision is September 11, 2014. We cited other authority on this issue, but this case is particularly on point because it is recent and Facebook is a party. Hopefully in light of the pragmatist decision, Facebook will concede that is wrong on the jurisdiction issue in any case. So I have been rejected out of 102-103-112, but correct me if I'm wrong, that I don't think you're really arguing the merits of those rejections just the claim construction. That's correct. And in any case, because of that, I respectfully yield the floor now to Facebook and reserve the remainder of my time for rebuttal and to answer your honours questions
. We will certainly save that time for you. Thank you. Mr. Chair, good morning, your honours. May I please the court? My name is Ruben Chen, and I represent Apple Lee, Facebook. First, let me address a comment's argument regarding the pragmatist versus Facebook case, or the Facebook versus pragmatist interparties examination
. So that case involved Facebook arguing for a particular claim construction and providing specific arguments as to how that claim construction would impact the validity of the patent. So it's very distinguishable from the current appeal here. And if I could point your honours to the Federal Circuit's decision in Fresnius versus Baxter, the facts there are very similar to the facts here, or the court noted, that it need not construe claim terms when the appellant will explain why a modified claim construction would affect a judgment. So what appellants are requesting on this appeal is a rewriting of the acclaims. First, they want the court to give an advisory opinion and insert an interfaith server limitation into claim steps where such language does not exist as the patent office confirm. Alternatively, they want to do over at the patent office so that they themselves can amend claims even though they had ample opportunity and reason to do so earlier
. You're saying this is like an interlocutorial appeal and claim construction and he hasn't argued the rejections. That's correct, Your Honor. There were 10 rejections that were affirmed by the PTAG and in none of appellants briefing does he address those rejections. I guess isn't. Excuse me. The premise of his argument on appeal is because steps A, B and C, the first three steps require them to be performed by a server
. None of the references teach that. That's why those rejections need to be undone. Is that kind of the premise of this whole debate over claim construction? Your Honor, I don't think that appellants actually make that point clear. They do argue, I agree with your Honor, that an interfaith server performs the first three claim steps. We strongly disagree with that argument and I'm happy to explain. When you say you don't think they make that argument clear, you mean in their blueberries? Because they made that argument crystal clear almost verbatim to the way just Changes explained it in their briefing before the board below
. They repeatedly and consistently argued if an interfaith server computer was imported into A, B, and C, none of those references disclose an interfaith server computer doing all five steps. And that argument they made expressly repeatedly throughout the proceedings below what your argument is since they failed to say it in their blueberries. They have waved it for appeal. Is that your argument? That is correct, Your Honor. Three tough positions with this pro say. If I could respond to that comment, the appellant Mr
. Wire who is representing both himself and also Mr. Dobberher is actually a registered attorney with over 25 years of experience. And so I don't think he is the typical pro say point if he is an attorney. He is. It's an inherent in his argument about this. This doesn't feel at all like the advisory opinion sort of claim construction request that we have gotten them refused to do
. And so it's not a matter of what you think is the right thing to do in case in the past it kind of feels an awful lot like inherent in his request is his argument that it would have changed the outcome granted not with any specificity. But it does seem in light of this record inherent in his argument. It may be inherent that I don't think that is the standard that's laid out by the federal circuit of Indian such as Fresnias where an appellant must lay out the reasoning for why a claim construction would impact the judgment below and here appellants have not. And there are 10 as I said separate grounds of rejection and some of those separate grounds of rejection actually do address the interface server for form particular steps that the appellants that is missing. So if the talent is correct on this claim construction arguments what do we do. And why well, you're on our I don't think he is crap in his claim construction argument
. So could I address that question. Well, no second. Okay. Address the one I asked what if he is correct. What do we do correct if he is correct in his claim construction, then I would argue that the prior art still discloses that an interface server performs with each. But the board didn't make fact findings in order to the examiner to that extent because they made their facts findings only on the claims as they construed them. So you would argue that to us. What do we send it back? Wouldn't it be improper for us to in the first instance decide what a prior reference does and doesn't teach. Yes, it would in the first instance I agree with that, but I do believe that in the record there is a showing that the examiner considered the prior art and even though the examiner did not agree that the claim construction required that an interface server perform each claim step that in fact the prior art did disclose that. And it at least certain references did disclose that interface server does perform you agree though that the patent board didn't reach this issue. Yeah, I understand your argument that the examiner may have said something along these lines, but you know this court refused board decisions that doesn't review. You know the using of the examiner that is correct
. So you would argue that to us. What do we send it back? Wouldn't it be improper for us to in the first instance decide what a prior reference does and doesn't teach. Yes, it would in the first instance I agree with that, but I do believe that in the record there is a showing that the examiner considered the prior art and even though the examiner did not agree that the claim construction required that an interface server perform each claim step that in fact the prior art did disclose that. And it at least certain references did disclose that interface server does perform you agree though that the patent board didn't reach this issue. Yeah, I understand your argument that the examiner may have said something along these lines, but you know this court refused board decisions that doesn't review. You know the using of the examiner that is correct. You know, I do agree with you. If you wanted to get to the merits. Yes, yes, if I could, if the court is willing to consider claim construction, the claim language actually does not support a pellant claim construction position and if I could point your honors to the record at a 90. A 90 is an amendment that a pellance made during the original prosecution of the one to two patent and what A 90 shows us is that the appellant expressly included performance. And then my an interface server computer with respect to the last two claim elements and did not include performance by an interface server computer with respect to the first three claim element. Mr
. You know, I do agree with you. If you wanted to get to the merits. Yes, yes, if I could, if the court is willing to consider claim construction, the claim language actually does not support a pellant claim construction position and if I could point your honors to the record at a 90. A 90 is an amendment that a pellance made during the original prosecution of the one to two patent and what A 90 shows us is that the appellant expressly included performance. And then my an interface server computer with respect to the last two claim elements and did not include performance by an interface server computer with respect to the first three claim element. Mr. Wires relying on the reference to the interface server computer and the preamble right. And so therefore the preamble informs how all the steps are being carried out. They're all being carried out by the interface server computer. What's wrong with that argument? Yeah, I think what's wrong with that argument, your honor, is that the preamble is not limiting. The preamble is just a statement of purpose here. And when you look at the preamble language in conjunction with the specific amendments that were made by a pellant, I think it's strong evidence, especially under the broadest reasonable interpretation that the correct construction is that an interface server need only perform the last two steps
. Wires relying on the reference to the interface server computer and the preamble right. And so therefore the preamble informs how all the steps are being carried out. They're all being carried out by the interface server computer. What's wrong with that argument? Yeah, I think what's wrong with that argument, your honor, is that the preamble is not limiting. The preamble is just a statement of purpose here. And when you look at the preamble language in conjunction with the specific amendments that were made by a pellant, I think it's strong evidence, especially under the broadest reasonable interpretation that the correct construction is that an interface server need only perform the last two steps. So the preamble is just a throat clearing exercise warm up back. I think it's I think the statement of purpose. And I think that this case is analogous to the storage technologies case where similarly a preamble was found by the federal circuit to not be limiting except for only where that language was explicitly real tight recited in claim steps for. So for claim steps where the preamble language was not recited, the court concluded that those claim steps did not have such a limitation. Is your could I was just the characterization of your argument this might be a different case if the only amendment that was made in this particular response to an office action was to add the language to the preamble, but because it was added to the preamble and expressly to only certain claim limitations. The most logical interpretation is that that it was only meant to be a limitation in those limitations
. So the preamble is just a throat clearing exercise warm up back. I think it's I think the statement of purpose. And I think that this case is analogous to the storage technologies case where similarly a preamble was found by the federal circuit to not be limiting except for only where that language was explicitly real tight recited in claim steps for. So for claim steps where the preamble language was not recited, the court concluded that those claim steps did not have such a limitation. Is your could I was just the characterization of your argument this might be a different case if the only amendment that was made in this particular response to an office action was to add the language to the preamble, but because it was added to the preamble and expressly to only certain claim limitations. The most logical interpretation is that that it was only meant to be a limitation in those limitations. Yes, that is correct, Your Honor. This might be a different case though if only it was added to the preamble because then we might feel like it's pretty clear he's meaning to add a limitation and maybe then we could conclude it was for all the elements. I would be a different a harder case for you. Yes, yes, that is true. And I think that the specification also supports this construction. If I could point to your honors to two places
. Yes, that is correct, Your Honor. This might be a different case though if only it was added to the preamble because then we might feel like it's pretty clear he's meaning to add a limitation and maybe then we could conclude it was for all the elements. I would be a different a harder case for you. Yes, yes, that is true. And I think that the specification also supports this construction. If I could point to your honors to two places. The first is at the end of the patent I call on 13 line 55 starting with line 55, although certain functions have been described herein as being provided by an interface server computer. Those functions may be provided by one or more other devices and because the first three claim steps do not specify performance, excuse me, but any particular device, those first three claim steps should not be so limited. Secondly, if I can point your honors to column 10 at around line 15 on to column 11 through the end of column 11, here the specification is talking about performance of the three, the first three steps. And in this section, there is no requirement that an interface server perform those first three steps. Anything further, Mr. Chin, know your honor
. The first is at the end of the patent I call on 13 line 55 starting with line 55, although certain functions have been described herein as being provided by an interface server computer. Those functions may be provided by one or more other devices and because the first three claim steps do not specify performance, excuse me, but any particular device, those first three claim steps should not be so limited. Secondly, if I can point your honors to column 10 at around line 15 on to column 11 through the end of column 11, here the specification is talking about performance of the three, the first three steps. And in this section, there is no requirement that an interface server perform those first three steps. Anything further, Mr. Chin, know your honor. All right, then Mr. Wire has reserved a fair amount of time for the butter. And it should be a bottle not issues that could have been raised earlier and he could have responded to. The first issue, one to respond to, which has to do with raising the issue of the actual merits of the projections that as your honors observed, the board did not get to and in the board's decision, every point where they affirm the examiner on the projection of claim one, they acknowledged that the appellans had argued that the prior art did not disclose the first three methods steps being performed by an interstate server computer, but they said we don't have to consider that or it doesn't matter because we read the claim is not requiring that. So in terms of why that wasn't raised to your honors, the reason is because the patent the board had not yet considered that in the first place. And therefore, is my understanding that it was not yet right to raise that before the board
. All right, then Mr. Wire has reserved a fair amount of time for the butter. And it should be a bottle not issues that could have been raised earlier and he could have responded to. The first issue, one to respond to, which has to do with raising the issue of the actual merits of the projections that as your honors observed, the board did not get to and in the board's decision, every point where they affirm the examiner on the projection of claim one, they acknowledged that the appellans had argued that the prior art did not disclose the first three methods steps being performed by an interstate server computer, but they said we don't have to consider that or it doesn't matter because we read the claim is not requiring that. So in terms of why that wasn't raised to your honors, the reason is because the patent the board had not yet considered that in the first place. And therefore, is my understanding that it was not yet right to raise that before the board. With respect to as Judge Moore has been pointed out that the issue that the claim is different because the limitation of vine interface server computer that was added the preamble was also added last two steps and the claims that that somehow undoes the effect of having that limitation in the preamble. And this is a this is a this is a reason that was done that way and this is a way that I've done claim drafting is as as your honors are way whenever you read a claim, it's a very difficult thing when you start out, it's easy to understand where you're starting but by the time you get later on in a claim, sometimes because it's complex, but you're something. It's not yet as fresh in your mind what it started out to be so when I draft claims that they're longer in the end, I tried to remind the reader as to what is is we're talking. So for the first three steps, it comes immediately after the preamble, so it's a by an interface server computer so okay, you have it in your mind by the some point later on, then I just to make it easier on the reader. And to emphasize it for mind what it is that's carrying out these steps, that's why I also put it in at the bottom true, we could have been put in in each step that makes the claim somewhat longer and there's someone, someone of a judgment used when you do that, but to try and do sort of more efficient claim drafting that's. That's the process that I use and that's why it was done this way here
. With respect to as Judge Moore has been pointed out that the issue that the claim is different because the limitation of vine interface server computer that was added the preamble was also added last two steps and the claims that that somehow undoes the effect of having that limitation in the preamble. And this is a this is a this is a reason that was done that way and this is a way that I've done claim drafting is as as your honors are way whenever you read a claim, it's a very difficult thing when you start out, it's easy to understand where you're starting but by the time you get later on in a claim, sometimes because it's complex, but you're something. It's not yet as fresh in your mind what it started out to be so when I draft claims that they're longer in the end, I tried to remind the reader as to what is is we're talking. So for the first three steps, it comes immediately after the preamble, so it's a by an interface server computer so okay, you have it in your mind by the some point later on, then I just to make it easier on the reader. And to emphasize it for mind what it is that's carrying out these steps, that's why I also put it in at the bottom true, we could have been put in in each step that makes the claim somewhat longer and there's someone, someone of a judgment used when you do that, but to try and do sort of more efficient claim drafting that's. That's the process that I use and that's why it was done this way here. As to the spec disclosure that there are alternative embodiments and that the specification is not limited to the specific embodiments included in the specification that's pretty much language that is always put in path and specifications. It really comes down to what is in the claims, not what is in the specification, and in this case, the claim does in fact specify that the steps are performed by the interface server computer, so these other embodiments aren't being claimed, so that really doesn't come into effect. I think that's all the points that were raised by Mr. Chen. Thank you, Mr. Leyer, no one ever gets penalized for not using all of this time
. Okay, thanks for taking some advice