IOENGINE, LLC v. INGENICO INC.
Oral Argument — 12/07/2023 · Case 21-1227 · 32:32
0:00
Judge Lourie
Our first case is Ioengine v. Ingenico, 2021, 12-27, 13-31, and 13-32.
0:10
Mr. Leibowitz.
0:13
Appellant Attorney (Noah Leibowitz)
Thank you, Your Honor.
0:14
May it please the Court, Noah Leibowitz on behalf of Appellant and Patent Donor Ioengine.
0:20
The three final written decisions of the PTAB in these cases,
0:25
finding invalid certain of the challenged claims in three related cases,
0:31
in three related patents, should be reversed for a number of reasons.
0:36
First, the PTAB's construction of the term interactive user interface,
0:42
which was a key term and key to all three decisions,
0:46
vacillated between different constructions,
0:49
and the PTAB ultimately arrived at one that allows any computer,
0:54
no matter how remote, to take any response, no matter how attenuated, to the user.
1:01
And that is not what the intrinsic evidence would support,
1:04
not what the extrinsic evidence would support,
1:06
and not what a person of ordinary skill in the art would understand
1:09
an interactive user interface to be at the time of the invention.
1:16
Second, even under the Board's construction of interactive user interface,
1:21
substantial evidence does not support that the reference, the art AIDA,
1:27
would anticipate the claims of the 969 and 703,
1:32
AIDA discloses only a display of a picture of menus,
1:37
and that would not meet the term interactive user interface under any construction,
1:42
certainly not the correct construction.
1:45
Third, with respect to the 047 patent,
1:48
the Board's obviousness analysis of combining AIDA and Genske
1:52
was riddled with hindsight and a view of the world that we live in today,
1:57
where everyone carries a touchscreen smartphone with them,
2:01
in their pocket, as opposed to the world that existed in 2004,
2:05
when the patents were filed, three years before the iPhone was released,
2:11
and a person of ordinary skill in the art at the time
2:13
would not have had motivation to combine those references,
2:16
and in fact they teach away from each other in relevant aspects.
2:20
Judge Chen
Is that the combination where you're switching out the menu screens
2:24
for Genske's graphical user interface?
2:28
Appellant Attorney (Noah Leibowitz)
Correct, Judge, yes.
2:30
That's where...
2:32
Judge Chen
Graphical user interfaces were clearly known by 2004.
2:36
Appellant Attorney (Noah Leibowitz)
Yes, Your Honor, the graphical user interfaces were certainly known,
2:39
and in fact AIDA even refers to a portable PDA and computers as terminals,
2:47
but AIDA's specific...
2:48
Judge Chen
I guess the concern I have here is it was known in the art,
2:53
clearly the primary reference had its own user interface,
2:56
it was different, but it was a user interface,
2:58
and this is a substantial evidence finding.
3:01
That we have to review deferentially.
3:04
I don't really know what we can do,
3:05
and an expert on the other side said that, yes,
3:09
a skilled artisan would be motivated to swap out the menu screens
3:13
for this particular graphical user interface.
3:17
I don't know where we go from there.
3:20
Appellant Attorney (Noah Leibowitz)
Well, Your Honor, the references themselves, right,
3:23
I mean, AIDA itself talks about the particular interface
3:27
that it provides specifically so that it would not be limited
3:31
to certain types of terminals or certain types of phones,
3:35
but in fact be able to apply to a broad range,
3:39
in fact the broadest range possible of devices at the time,
3:42
and the evidence of record even supports,
3:44
in fact there was evidence put in on what phones
3:49
and what terminals were available at the time,
3:52
including and generally push-button type devices,
3:56
and that's why AIDA goes to great pains to describe the interface that it provides,
4:01
with just the pictures of menus.
4:05
If it was just, okay, have a GUI on your terminal,
4:09
why would AIDA need to provide all the disclosure that it does
4:12
with respect to the specific system that it,
4:15
the interface that it talks about,
4:18
because you're talking about two different devices,
4:21
and having a GUI where you can cause program code to be executed,
4:25
as the claims require, on a different device
4:27
than the one that you're interacting with.
4:29
Judge Stoll
Counsel, can I ask you a question?
4:31
About your claim construction?
4:33
It appears to me that you have changed your claim construction on appeal.
4:38
The substance of the claim construction now proffered
4:42
differs substantively from that below,
4:45
and so why isn't your claim construction forfeited?
4:49
Appellant Attorney (Noah Leibowitz)
So, Your Honor, I think the language,
4:52
some of the words in the claim construction that we put in,
4:55
has changed, but the claim construction that we proffered here
4:59
embodies the exact same concept,
5:01
that we had below.
5:04
Exactly.
5:04
Judge Stoll
If I don't agree with you that you haven't changed your claim construction,
5:07
does that mean that you forfeited your claim construction under our case law?
5:11
Do you agree with that?
5:12
Appellant Attorney (Noah Leibowitz)
Well, I think, Your Honor, I think the cases,
5:14
the only cases that petitioners died in,
5:16
and the cases I'm aware on this, on this point,
5:18
are where the party below didn't proffer any claim construction for the term that was...
5:23
Judge Stoll
Well, there are cases where a party changes its claim construction,
5:26
and the court has said that that's improper to raise a new claim construction on appeal.
5:31
So, I guess we should go ahead and talk about the other issue.
5:35
Previously, you had the terminal,
5:38
and now you have the device executing code to present a fact of presentation, right?
5:43
Why isn't that different?
5:45
I mean, terminal's pretty broad,
5:47
and the device executing code to present a fact of presentation differs from terminal.
5:53
Appellant Attorney (Noah Leibowitz)
Well, Your Honor, so as the board and everyone recognized,
5:57
in the challenged claims, that is the terminal.
6:00
The challenged claims require...
6:01
The challenged claims require that that device is the terminal.
6:03
The issue was, and the reason why the board came to the...
6:07
Part of the reason why the board came to the construction it did
6:09
is it looked at other claims in the patents that were not challenged
6:15
and said that in those claims,
6:17
the portable device could be the device that executes the interface.
6:22
And so our construction now embodies the same concept.
6:25
And, in fact, we have a number of places in our briefing and in the appendix,
6:29
I can refer, Your Honor, to appendix...
6:31
12-8-5-2 and 12-2-3-6 to 3-7,
6:36
and the board, in fact, recognized this as part of its own analysis,
6:39
that what our argument was...
6:41
Judge Chen
I'm a little lost.
6:42
You're saying terminal means the same thing as device that executes all that code?
6:46
Appellant Attorney (Noah Leibowitz)
With respect to the challenged claims, it does, Your Honor,
6:49
because the challenged claims require that to be the terminal.
6:52
Why didn't you just say terminal?
6:54
Well, that's what we said below, Your Honor, and the board said...
6:57
Judge Chen
Right, why didn't you just say terminal again to us?
6:59
Appellant Attorney (Noah Leibowitz)
Because we were trying to do...
7:01
What we were trying to do was account for the point that the board raised, right,
7:05
where it went, we think, incorrectly into the construction that it came up with,
7:10
which was just a computer, which can refer to any device.
7:13
Judge Chen
And then you switched the idea of something about taking action that...
7:18
Well, there's some responsive action by some device or terminal
7:22
to now we're going to modify what is presented on the display or on the presentation.
7:31
So that seemed to be another switch in your claim construction
7:34
that you're presenting to us now
7:36
compared to what you presented in your patent owner response.
7:40
Appellant Attorney (Noah Leibowitz)
So, again, Your Honor, so that particular point on modification
7:43
was what we had presented in the preliminary patent owner response.
7:47
Judge Chen
Right, then it was rejected by the board in the institution decision,
7:51
and then you didn't pick it back up in your patent owner response.
7:54
I mean, to me, that looks like an abandonment
7:56
of a particular claim construction argument that you gave up on,
8:01
and the board clearly didn't need to address it,
8:03
and now it pops up out of nowhere like a jack-in-the-box here at the Federal Circuit.
8:09
So I'm trying to figure out why shouldn't we consider that to be an abandoned argument.
8:14
Appellant Attorney (Noah Leibowitz)
Well, so, Your Honor, again, the substance of what we were arguing below and here did not change.
8:21
The concepts are the same, meaning that the way the device responds...
8:25
Judge Chen
Having a device respond in a particular way
8:28
and then modifying what is displayed on the monitor,
8:31
those are two different thoughts, I think.
8:34
Appellant Attorney (Noah Leibowitz)
Well, I think, Your Honor, in the context of the construction of IUI,
8:37
which both sides have presented as a display or presentation
8:40
that the device is providing to the user,
8:44
the modification of that is the way the device responds to the user's interaction with it.
8:49
And I think that is what we argued below,
8:52
even if the wording was slightly different,
8:54
and certainly on the point of which device is executing the code.
8:59
Judge Chen
Do you think that the meaning of IUI depends on the claim?
9:01
Throughout all of your claims?
9:03
Appellant Attorney (Noah Leibowitz)
We don't think the meaning of IUI changes depending on the challenge claims, Your Honor.
9:08
Appellee Attorney (Lawrence M. Green)
Okay.
9:09
Judge Stoll
Can you address your printed matter argument?
9:15
Appellant Attorney (Noah Leibowitz)
Yes, Your Honor.
9:16
So our argument on the printed matter with respect to those claims
9:20
is that the Board incorrectly applied the printed matter doctrine
9:24
to what are functional limitations.
9:27
The cases that deal with printed matter
9:30
all deal with...
9:32
That's the communicative content.
9:33
What matter is provided for a communicative content.
9:36
That's the words that Bard uses
9:38
and all of the cases that came before it.
9:40
And if you look at those cases,
9:41
it's all about information that's provided to a person.
9:46
Instructions, a hash mark on a band, or a...
9:52
Judge Chen
I just asked the question here.
9:53
When your claim says transmitting encrypted communications,
10:00
is that the fact that you're...
10:03
Transmitting communications, is that transmitting information?
10:06
And if it's transmitting information,
10:08
then should that information be considered printed matter
10:10
for purposes of the printed matter doctrine?
10:13
Appellant Attorney (Noah Leibowitz)
Sure.
10:13
So, Your Honor, so the term of the claim,
10:15
it's facilitating the transmission of encrypted communications.
10:19
And we think both with respect to the term facilitating
10:22
in terms of what the system is doing
10:24
and with respect to encrypted communications,
10:27
those are both functional aspects.
10:29
Encrypted communications differ...
10:31
It's not a matter of content.
10:33
You can have an encrypted communication
10:34
that's the movie Home Alone,
10:37
or you can have an encrypted communication
10:39
that's the movie Casablanca.
10:41
That doesn't matter.
10:42
It's not being transmitted for its communicative content.
10:45
An encrypted communication is functionally different
10:48
in form from an unencrypted communication.
10:51
Judge Chen
So, if the claim said transmission of an encrypted
10:56
electronic copy of Casablanca,
10:58
would you say that's printed matter?
11:00
Appellant Attorney (Noah Leibowitz)
The Casablanca part of it is.
11:02
Yeah.
11:03
And I think that's the point, right?
11:06
You're talking about what's being provided
11:08
for the communicative content
11:09
as opposed to a difference in form and function
11:14
as it relates to a computer system.
11:16
The two elements at issue here
11:18
in terms of encrypted communications and program code,
11:21
those are functional aspects
11:23
and functional computing aspects.
11:25
And we're not aware of a case where...
11:27
Judge Stoll
You keep on saying functional,
11:28
but they could be structural as well,
11:30
at least program code, right?
11:32
Appellant Attorney (Noah Leibowitz)
Of course.
11:33
Of course.
11:33
It could also be structural,
11:34
but it's certainly not...
11:35
Judge Stoll
I was just saying program code is structural
11:37
in the context of 112.6 paragraph.
11:40
Appellant Attorney (Noah Leibowitz)
Certainly, Your Honor.
11:40
It could certainly be structural as well.
11:43
That's not content
11:44
in terms of communicating a particular content to a user.
11:50
Judge Stoll
What do you think the substrate is?
11:52
Appellant Attorney (Noah Leibowitz)
With respect to the program code?
11:55
Judge Stoll
I'm not sure what the substrate is.
11:56
I'm wondering if you have a view.
11:58
Appellant Attorney (Noah Leibowitz)
Sure.
11:58
I think the substrate are the devices...
12:00
What is the substrate?
12:01
Yes.
12:01
I think we do address that in the briefing, Your Honor,
12:04
but the substrate is the portable device or the terminal
12:07
that is going to be executing either that program code
12:11
or the encrypted communications.
12:15
And again, Your Honor, the specification...
12:19
We're not reading...
12:20
A petitioner accused us of sort of reading the limitations
12:22
from the specification into the claims.
12:24
That's not what we're doing.
12:25
What we're saying is you can look to the specification
12:27
to understand the functional relationship
12:30
between the element and the other parts of the claim.
12:35
Judge Lourie
Counselor, you're into your rebuttal time.
12:36
You can use it or save it.
12:38
Appellant Attorney (Noah Leibowitz)
I'd like to reserve some time for rebuttal.
12:40
Thank you, Your Honor.
12:41
Judge Lourie
All right.
12:41
I'll save it for you.
12:42
Mr. Green.
12:54
Appellee Attorney (Lawrence M. Green)
Lawrence Green for the FLE and Genico.
12:59
Excuse me, Your Honor.
13:02
I'd first like to address the interpretation
13:05
or the construction of IUI.
13:09
I think it's...
13:10
I think we can sort of summarize, I think,
13:13
what the...
13:15
what the argument is by IO Engine
13:19
by referring to page three of the reply brief
13:22
in which they say that by placing no limit
13:25
on how the remote...
13:27
how remote the purported action can be,
13:30
the board's construction contradicts
13:32
the consistent language of interactive
13:33
in the patents at issue
13:35
in which every example of interaction with an IUI
13:39
results in responsive action
13:40
by the device presenting the interface.
13:42
Now, this...
13:43
First of all, I would take issue...
13:45
of consistent usage of interactive
13:47
because I don't think the word interactive
13:48
is found in the patents.
13:51
But I'd also take issue with the assertion
13:55
that every example results in responsive action
13:58
by the device presenting the...
13:59
by the device presenting the interface.
14:02
One of the...
14:03
The only real evidence cited there
14:07
is an affidavit or declaration by their expert.
14:13
And in that...
14:15
In that declaration,
14:17
the...
14:19
The statement is there that's attributed to them
14:22
that in all examples of the baseline IUIs,
14:26
it is the device presenting the user interface
14:28
that takes action in response to user interaction
14:31
by responding to the user.
14:33
Well, that statement,
14:34
which is cited in support of the assertion
14:38
in the reply brief,
14:41
is only dealing with prior art.
14:43
It's talking about...
14:45
In all the examples of the baseline IUIs,
14:47
which is prior art.
14:48
It's the Apple operating system
14:50
or Microsoft operating system.
14:54
So that statement does not support the assertion
14:57
that all of the examples of user interaction
15:04
with an IUI result in responsive action
15:07
by the device presenting the interface.
15:09
In fact, the witness goes on to actually talk about...
15:16
In fact, the witness goes on to actually talk about...
15:16
the present invention as opposed to the prior art.
15:19
And what he says about the present invention,
15:21
I think, is instructive.
15:22
In paragraph 52 on appendix page 4708,
15:27
he says,
15:28
all the descriptions in the 047 patent
15:30
of user interaction with the IUI
15:32
involve the terminal taking action responsibly
15:36
to user interaction by responding to the user.
15:41
That's in the same paragraph
15:43
in which the quoted statement was taken.
15:45
Judge Lourie
Counsel, do you want to...
15:46
address the printed matter issue
15:48
that your opponent just finished with?
15:50
Appellee Attorney (Lawrence M. Green)
Sure.
15:51
I'd love to, Your Honor.
15:52
I would just go on to say...
15:54
I'd like to finish this thought, though.
15:55
In paragraph 53, 4709,
15:59
Dr. Butler goes on to say,
16:04
in my opinion,
16:05
it would be improper to construe IUI
16:07
to require that a portable device
16:08
take action responsibly to user interaction.
16:12
Under such a construction,
16:13
there would be no IUI
16:14
unless there's an associated portable device,
16:16
to take action responsibly.
16:18
But many IUIs exist in the art
16:21
with no associated portable device.
16:23
So even their own expert
16:26
finds such a construction to be improper.
16:28
With regard...
16:29
Judge Stoll
Why is it that encrypted communications,
16:34
in the phrase,
16:35
the transmission of encrypted communications,
16:37
could possibly be printed matter?
16:41
Appellee Attorney (Lawrence M. Green)
Because it's nothing more than...
16:42
It's a previously encrypted communication.
16:44
So it's a...
16:47
It's like...
16:48
It's like sending a copy of a book or something.
16:51
It's something that's been previously encrypted.
16:53
It's not encrypted in the steps
16:55
in the particular claim.
16:58
It's not...
17:00
There's no relationship
17:00
between that encrypted communication
17:02
and the devices.
17:03
It's simply taking a communication,
17:06
previously encrypted,
17:07
and transmitting it to who knows where.
17:10
Judge Stoll
But that's...
17:10
Printed matter usually requires us, you know,
17:13
to learn.
17:14
Is it something that's just in conveying...
17:16
Communicative content?
17:18
For example,
17:19
there is a case that talks about having
17:22
marks on measuring cups.
17:25
And the question there was
17:26
whether those marks on the measuring cups
17:28
were printed matter or not.
17:30
And then if they were printed matter,
17:32
to determine whether there's a relationship
17:33
between that printed matter and the substrate.
17:36
In this case,
17:38
it's hard to even see how it's printed matter
17:40
because it's not a specific communication.
17:44
It's just encrypted communications.
17:46
Same thing with downloading.
17:48
The step of downloading program code
17:50
to say program code is printed matter
17:54
and thus undeserving of any weight
17:56
seems wrong under our case law.
17:59
Appellee Attorney (Lawrence M. Green)
Well, I would disagree, Your Honor.
18:00
There have been cases
18:02
that have applied printed matter
18:03
to computer software
18:05
or computer types of inventions or devices.
18:09
So it's not limited to just printing on a paper
18:12
or on a cup or something.
18:15
Judge Chen
Sure, but if I understand,
18:16
your theory of the printed matter doctrine
18:18
in the computer context,
18:20
it would hold that any communication
18:24
going on in a computer network
18:26
is printed matter.
18:28
Appellee Attorney (Lawrence M. Green)
Oh, not so, Your Honor.
18:29
Judge Chen
If this claim had said
18:32
transmission of emails,
18:35
would you say that the emails are printed matter?
18:39
Appellee Attorney (Lawrence M. Green)
If there's no relationship between the...
18:43
Judge Chen
No, no, I'm not talking about step two.
18:45
That's step two.
18:46
I'm just getting...
18:47
I'm just getting to the baseline question
18:49
of whether it's printed matter at all.
18:52
Appellee Attorney (Lawrence M. Green)
I would say that the email,
18:56
yes, it would be printed matter.
18:58
Judge Chen
So in your view,
19:00
any communication,
19:02
any type of communication
19:03
from node one to node two
19:06
is going to be printed matter.
19:08
And so therefore,
19:09
it only gets patentable weight
19:11
if said printed matter,
19:14
said communication
19:15
has some kind of functional relationship
19:17
to something in the claim.
19:19
Appellee Attorney (Lawrence M. Green)
Something in the claim.
19:20
Judge Chen
Which is something I don't think we've ever said.
19:22
And I don't think there's anything...
19:24
You'd be subjecting millions of,
19:27
millions of computer network claims
19:30
to the printed matter doctrine.
19:34
Appellee Attorney (Lawrence M. Green)
Functional relationship with something in the claim
19:37
or functional relationship
19:40
with a device that's recited in the claim.
19:43
In other words, if the...
19:44
If there was a step in the claim
19:47
where it recited encrypting
19:49
and then transmission,
19:50
transmitting,
19:51
and then the encryption process,
19:55
again, maybe I've leapt on to step two.
19:57
Judge Chen
My concern is the fact
19:59
that there's a communication
20:01
itself is not content.
20:03
What matters is what is the content.
20:07
And that's what we've always been looking for,
20:10
hunting for in the printed matter cases.
20:13
Correct.
20:13
That's how we know
20:14
whether there's printed matter.
20:15
For example,
20:16
if there's a label
20:17
that provides instructions
20:20
line by line instructions
20:21
on how to administer a particular drug,
20:24
that's printed matter.
20:25
Yes.
20:26
We don't have that kind of situation here.
20:29
I don't know what the closest case you have here
20:32
that would tell us
20:34
that the basic recitation
20:37
of a communication occurring
20:39
from node one and node two
20:41
is printed matter.
20:44
Appellee Attorney (Lawrence M. Green)
I cannot cite a case on all fours
20:46
of these facts.
20:47
We did not find a case on all fours
20:49
of these facts.
20:51
If...
20:51
If we were to reverse
20:54
Judge Chen
the rejection of the claims
20:57
subject to the printed matter doctrine,
21:00
did you have any alternative theories
21:02
for those dependent claims?
21:04
Or were all your theories
21:07
for attacking these particular dependent claims
21:09
premised on the printed matter doctrine?
21:13
Appellee Attorney (Lawrence M. Green)
All of our theories were premised
21:15
on the printed matter doctrine.
21:16
Judge Chen
Okay.
21:16
So that would mean
21:17
if we disagreed with that theory
21:20
that you proposed,
21:22
that it would lead to a reversal
21:24
for those claims,
21:25
not a vacate and remand
21:27
to do further evaluation of claims
21:29
based on some theory
21:30
that the board had before it
21:32
but did not address.
21:33
Is that right?
21:33
Appellee Attorney (Lawrence M. Green)
That's correct, yes.
21:35
I would submit, though, Your Honor,
21:37
that, again, we're talking about...
21:39
This is just a communication,
21:41
like an email,
21:42
but it's been encrypted.
21:43
So there's no real difference
21:45
between just taking the email
21:47
or sending an encrypted copy
21:48
of that same email.
21:49
That's the same thing.
21:51
And it's printed matter
21:52
in both...
21:52
both situations.
21:55
And I submit that.
21:57
You may not agree.
21:58
And...
21:58
But it's still just a communication.
22:02
The fact that it's been encrypted
22:03
or the fact that something has been done to it,
22:05
I don't think changes that
22:06
into something that's not printed matter.
22:09
And the program code, again,
22:12
there's nothing in the claim
22:14
or nothing talked about
22:17
where you actually execute the code.
22:19
All you're doing, again,
22:20
it's a message.
22:21
It's a...
22:21
It could be an email.
22:23
In an email,
22:24
you're taking the code
22:25
and you're downloading it.
22:26
And then something else happens
22:27
that's outside the claim.
22:28
Judge Stoll
I'm familiar with a case law
22:30
that says that program code
22:33
should be in structure
22:35
under 112-6 paragraph.
22:38
So, in other words,
22:39
that term connotes structure
22:40
for a person with ordinary-skilling artists.
22:42
Appellee Attorney (Lawrence M. Green)
Yes, under section 112, paragraph 6.
22:45
Well, under any interpretation of the term.
22:49
I would argue, again,
22:51
if it's...
22:52
It would be structure
22:53
if, in fact,
22:55
if it had a functional relationship
22:57
where it was being executed
22:58
and not just merely being downloaded
23:00
or sent someplace.
23:01
Judge Stoll
What is a communicator?
23:03
Appellee Attorney (Lawrence M. Green)
Communicate.
23:04
Judge Stoll
When you say program code
23:06
is printed matter,
23:08
what is it communicating?
23:12
Appellee Attorney (Lawrence M. Green)
Well, it's presumably
23:14
communicating a computer routine
23:17
that could be implemented
23:18
if it were...
23:19
Judge Stoll
But it's not a specified routine, right?
23:21
Nor is it specified words.
23:23
It's just a computer program.
23:26
Downloading...
23:26
Code.
23:26
Yeah, it's...
23:27
Program code.
23:28
Appellee Attorney (Lawrence M. Green)
Yes, correct.
23:29
Yeah.
23:30
But nothing is being done with that code.
23:32
So there's not any kind of
23:34
functional relationship
23:35
between that code,
23:36
the computer...
23:37
Judge Stoll
Isn't it being downloaded?
23:38
That's not enough?
23:40
Appellee Attorney (Lawrence M. Green)
It's a message.
23:41
It's like a message,
23:41
like an email being downloaded.
23:48
Judge Lourie
Next issue.
23:49
Appellee Attorney (Lawrence M. Green)
I'm sorry?
23:50
Judge Lourie
Next issue.
23:51
Appellee Attorney (Lawrence M. Green)
Thank you, Your Honor.
23:53
The next issue I'd like to address
23:55
is the issue of whether or not...
24:03
There's one limitation.
24:04
I think...
24:04
I think I would like to say
24:07
that if under any construction
24:09
of interactive user interface,
24:11
I believe that AIDA anticipates
24:14
the claims that it's being applied to.
24:19
The...
24:23
What happens is that a menu or text
24:28
is brought up with some figures
24:29
and then the person operating the computer
24:34
has an opportunity then to select,
24:35
select one of those figures,
24:36
make a choice by entering a number
24:38
like one, two, or three.
24:40
That then causes a change in the display
24:42
and then sends...
24:46
gives the operator another chance
24:49
to choose another...
24:49
take another course of action
24:51
so that there is interaction
24:54
and this interaction is with the device
24:58
or the figures presented on the screen
25:01
and their numbers that are associated
25:03
with each drawing.
25:04
And there is another...
25:05
There's another embodiment
25:07
in which there's a cursor that appears
25:10
and it's presumably moved by a touchpad
25:13
or the like
25:14
and that can actually engage
25:15
with the structures or with the screen
25:17
and cause actions to be taken
25:20
and also cause the screen to change.
25:23
And there are examples in AIDA
25:25
in which both of those functions
25:26
are performed by the same computer,
25:30
whether it be the terminal
25:32
or the portable device.
25:35
So we believe that there...
25:37
we've demonstrated anticipation
25:39
of those claims.
25:42
Judge Chen
Is it your view that the board's construction
25:44
of this user interface
25:45
is essentially the same
25:48
as Judge Bryson's construction
25:51
of his term in the Delaware case?
25:56
Appellee Attorney (Lawrence M. Green)
It's essentially the same.
25:59
Judge Bryson did reject
26:01
those other limitations that were...
26:04
Judge Chen
The interface elements?
26:06
Appellee Attorney (Lawrence M. Green)
Well, no.
26:07
The...
26:07
The...
26:08
The computer...
26:09
He didn't adopt the...
26:12
the provision that required
26:13
that the...
26:15
that the...
26:16
the display be changed
26:18
in response to user interaction.
26:21
I wouldn't...
26:21
Judge Chen
But that's not part of the board's construction
26:23
here either.
26:24
Appellee Attorney (Lawrence M. Green)
Oh, it's not.
26:25
I'm sorry.
26:25
You're talking about the board's construction.
26:27
I apologize.
26:28
My mistake.
26:28
No, that's...
26:29
That's the difference between
26:31
Judge Bryson's construction
26:32
and the one being proposed here.
26:36
It's not identical.
26:37
I would say...
26:37
It's substantially the same,
26:38
but it's not identical.
26:39
I'd have to...
26:41
We would...
26:42
could live with either,
26:44
but I do like the board's construction.
26:46
I think it deals with all the issues
26:48
that are presented,
26:49
and I think they're essentially the same.
26:57
The other thing I'd like to deal with here
26:59
is the second or third program code
27:08
that provides a node.
27:10
It's been asserted by IO Engine
27:13
that this is...
27:14
We waived this argument.
27:16
This is the one in which
27:18
there's no node actually disclosed in AIDA,
27:21
but one reading AIDA would understand
27:23
that there is a node.
27:26
I'm not sure how we could have waived this argument
27:28
because it's exactly the same argument
27:29
that we're making below
27:31
as we're making on appeal,
27:32
and it's exactly the same argument
27:34
that was adopted by the board
27:36
in its decision,
27:37
so I can't see how this argument
27:39
was waived in any way.
27:41
And the argument was
27:42
is that it's...
27:44
And this isn't disputed.
27:45
It's not disputed.
27:46
A node is a well-known feature,
27:48
and it's a well-known and necessary condition
27:51
precedent to communication...
27:54
Condition precedent to communication
27:55
is taught by AIDA,
27:57
and therefore AIDA teaches one a skill in the art
28:00
that there is such a node
28:01
that enables the communication,
28:02
and it's known that these nodes have software.
28:04
So we have substantial evidence.
28:08
The Geyer testimony,
28:09
which supports this finding by the board,
28:14
and we feel that there's been no waiver
28:16
and that we've clearly demonstrated
28:18
that that code or that node is present
28:21
and that the claims are anticipated.
28:24
We dealt with one combination with Jensky,
28:28
so I don't have anything further.
28:32
Judge Lourie
Thank you, counsel.
28:33
We have your argument.
28:35
Thank you.
28:36
Mr. Leibowitz has a little of other time.
28:39
Judge Chen
Mr. Leibowitz,
28:50
the printed matter claims,
28:52
are those being asserted in any pending litigation?
28:56
Appellant Attorney (Noah Leibowitz)
Not currently, Your Honor.
28:58
Judge Chen
Do these patents expire?
28:59
Next year?
29:01
Appellant Attorney (Noah Leibowitz)
They do, Your Honor.
29:02
I believe it's in March of next year.
29:03
Judge Chen
Yep. Okay.
29:06
Appellant Attorney (Noah Leibowitz)
If I can just address a couple of points, Your Honor.
29:09
Your Honor, first on the waiver point
29:12
with respect to the construction,
29:13
I think, again, the cases we cite,
29:15
the Gauss v. Conair case and the Harris Corp.,
29:18
the Erickson case,
29:19
make clear that if the construction we're proposing here
29:21
embodies the same concept
29:23
as we were telling where we were construing below,
29:26
there should be no waiver.
29:28
And here, the board even quoted,
29:30
on appendix page 212,
29:33
in the board's final written decision
29:34
with respect to the 703 patent,
29:36
the board even quoted the precise language
29:39
that we used here,
29:40
meaning that the device,
29:42
and this is the quote,
29:42
the device that executes the code
29:44
relating to presentation of the IUI
29:47
is the one that takes action responsibly
29:49
by responding to the user.
29:51
The board understood that that was what our proposal,
29:54
our construction embodied below.
29:56
We used the word terminal
29:57
because the only challenge claims,
29:59
and the challenge,
30:00
that is the terminal.
30:02
So we could shorthand that,
30:04
and in fact, the reason why it came up that way
30:06
was because the board had first used the word computer,
30:10
then realized that that term, computer,
30:13
is ambiguous,
30:14
and so limited itself,
30:16
but limited itself only to the portable device.
30:19
And so our arguments were directed
30:20
to the board's preliminary construction below
30:24
to explain to the board
30:26
why the portable device
30:27
is not the right device
30:29
in every case.
30:30
And in the challenge claims,
30:32
it is always the terminal,
30:33
but with respect to a construction
30:34
that would apply to IUI
30:37
that goes beyond the challenge claims,
30:39
it's the same exact concept
30:41
that we had argued to the board below,
30:43
and the board understood that,
30:44
as you can see on appendix page 212.
30:47
With respect,
30:48
excuse me, Your Honor,
30:49
with respect to Your Honor's question
30:50
about Judge Bryson's construction,
30:52
we think that that's actually different
30:54
than what the board did below,
30:56
but is consistent with what our construction is here
30:59
in two ways.
31:00
One, in fact, the part...
31:03
Judge Chen
You rejected the idea
31:03
of modifying the display
31:04
in response to the user interacting
31:06
with the user interface, right?
31:08
Correct, Your Honor.
31:09
I think he found that was...
31:10
That's a key part
31:11
of your proposed construction here
31:12
in front of us.
31:13
Appellant Attorney (Noah Leibowitz)
Well, that's one part of it,
31:15
but I think on the other element
31:17
of the construction,
31:19
what Judge Bryson wrote,
31:20
that the computer
31:21
that directly communicates with
31:23
or affects the communication
31:25
with the user
31:26
will likely always have some hand
31:28
in responsive communications.
31:30
It's on page six of our reply brief.
31:32
I think we cited it
31:33
in the opening brief as well.
31:34
And to that part of the construction,
31:38
and to the fact that Judge Bryson
31:41
added two-way
31:42
to account for the interactivity
31:44
between the user
31:45
and the particular device
31:47
that is being used
31:48
and interacted with,
31:50
we think is part of the problem,
31:52
and part of the problem
31:53
why the board's construction
31:55
of interface is so broad
31:57
that it essentially sweeps in
31:58
any kind of interface
32:00
that is being used.
32:00
into the definition
32:01
of interactive user interface.
32:03
Even a punch card interface
32:04
would satisfy the board construction
32:07
of interactive user interface,
32:09
and no person of ordinary skill
32:10
in the art in 2004
32:11
would consider a punch card
32:13
to be an interactive user interface.
32:17
I think I'm over my time,
32:19
Your Honor.
32:20
Judge Lourie
You are.
32:21
I think Aida is part of this case.
32:24
One can say that the lady
32:26
has finished singing,
32:27
and our time is up.
32:29
The case is submitted.
32:31
Appellant Attorney (Noah Leibowitz)
Thank you, Your Honor.