trials@uspto.gov
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`571-272-7822
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`IPR2016-00019, Paper No. 26
`IPR2016-00020, Paper No. 26
`February 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC
`TITLE INSURANCE GROUP, INC.; and OLD REPUBLIC
`NATIONAL TITLE INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`____________
`
`Held: January 10, 2017
`____________
`
`
`
`BEFORE: MEREDITH C. PETRAVICK, JENNIFER S. BISK,
`and SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`January 10, 2017, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2016-00019, Paper No. 26
`IPR2016-00020, Paper No. 26
`February 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC
`TITLE INSURANCE GROUP, INC.; and OLD REPUBLIC
`NATIONAL TITLE INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`____________
`
`Held: January 10, 2017
`____________
`
`
`
`BEFORE: MEREDITH C. PETRAVICK, JENNIFER S. BISK,
`and SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`January 10, 2017, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`APPEARANCES:
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`
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
`
`JOSEPH MICALLEF, ESQ.
`SAMUEL A. DILLON, ESQ.
`Sidley Austin LLP
`1501 K Street, NW
`Washington, DC 20005
`
`JAMES P. MURPHY, ESQ.
`HENRY A. PETRI, JR., ESQ.
`RUSS RIGBY, ESQ.
`Polsinelli
`1000 Louisiana Street, 53rd Floor
`Houston, Texas 77002
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`P R O C E E D I N G S
`- - - - -
`JUDGE McSHANE: Good afternoon, everyone. We
`are here this afternoon for a final hearing in the cases
`IPR2016-00019 and 00020. These are the Old Republic General
`Insurance Group, et al., v. Intellectual Ventures I LLC.
`If we could have the parties' appearances. Start with
`Petitioners, please.
`MR. MICALLEF: Good afternoon, Your Honor, Joe
`Micallef for Petitioners, with me is my colleague, Sam Dillon,
`and my client, Tom Dare.
`JUDGE McSHANE: And will you be speaking on
`behalf of the Petitioners?
`MR. MICALLEF: I will, Your Honor.
`JUDGE McSHANE: Thank you.
`And if we could have Patent Owner, please.
`MR. MURPHY: Good morning, Your Honors. James
`Murphy, and with me is Henry Petri, Jr., from Polsinelli P.C.
`We're representing Intellectual Ventures. And with us in the
`audience is Russ Rigby, who is a representative of the Patent
`Owner. And I will be speaking today, Your Honor.
`JUDGE McSHANE: You will be speaking, good, thank
`you very much. I'm sorry for speaking over you.
`Okay, we issued a trial -- rather an order for the
`presentation of this hearing. I'm just going to briefly review the
`order. We're going to hear both cases together, the arguments
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`Patent 6,510,434 B1
`together. Each side will have an hour in total. We're going to
`start with the Petitioner, they're going to put on their case in chief,
`if you will. You can reserve time for rebuttal. Then we'll hear
`from Patent Owner who will provide your opposition, and you
`can also address your motion to exclude if you so choose. Then
`we will allow rebuttal from Petitioners, and if Petitioners raise
`any issues that you would like to address concerning the motion
`to exclude, you can address that then.
`Any questions on that procedure? Any issues?
`MR. MICALLEF: No, Your Honor.
`MR. MURPHY: No.
`JUDGE McSHANE: A few other things of note. If
`you're using demonstratives, and it appears you are, if you could
`please try to call out the number of the sheet you're on. It helps to
`keep the record clear. Also, please use the microphone at the
`podium, it helps the court reporter quite a bit.
`And one last thing. Here in this hearing, we will not
`address objections as they come up. So, please if you have an
`objection, you can raise the objection, but please raise it once it's
`your argument time. If somebody has stated something that you
`have an objection to in the final portion of the argument, please
`let us know and we will not adjourn the hearing until you have a
`chance to get that objection on the record.
`Okay, and with that, we will start argument. And,
`Petitioners, you can proceed, and do you wish to reserve rebuttal
`time?
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`MR. MICALLEF: I would, Your Honor. I would like
`to reserve 15 minutes if I may.
`JUDGE McSHANE: And we have a very fancy
`tracking system here. So, we will start that up, and hopefully this
`will work for you.
`MR. MICALLEF: I think it's new, isn't it? The clock?
`JUDGE BISK: No, it's very old. I don't remember.
`JUDGE McSHANE: So, off to the races.
`MR. MICALLEF: Thank you, good afternoon again,
`Joe Micallef for Petitioners. I do have a number of
`demonstratives, more than I can probably get to. I will -- I would
`like to just start with slide 28, just to point out, as you mentioned,
`there are two proceedings at issue here, a number of different
`grounds; however, they are all based on the same principal prior
`art reference, the Okamoto patent. There are a couple of other
`prior art references in play, I will refer to them, but obviously I'm
`going to be talking about Okamoto the most.
`So, on slide 3, I have a sort of a rough roadmap of the
`slides. And I doubt, as I said, I will be able to get to everything,
`and in fact, I may -- I'm going to start sort of going down this, but
`I may jump around and I'm certainly happy to jump around if
`Your Honors have questions, but if left to my own devices, I may
`skip over some things, in particular based on the order that issued
`yesterday in the IBM, what I'm calling the other IPR on the '434
`patent, because I think it may have resolved some things, but I'm
`happy to answer questions on any of these issues.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`So, if I can start with a brief overview, and I'll just go to
`slide 5, and I intend to be very brief on the overview. I'm sure
`Your Honors have read this art and these patents, so I don't want
`to use too much of my time, but the '434 patent, of course, is
`entitled System and Method for Retrieving Information From a
`Database Using an Index of XML Tags and Metafiles. And it
`says that the index includes XML tags that correspond to domains
`and categories.
`On slide 6, we've put a couple of figures from the
`patent. Figure 4B is an example of a record in the database that
`this particular system builds, it has two parts. The first part, 408,
`is called an alpha component, I believe, and that is basically the
`substantive content of the record, and here it's the example is a
`particular restaurant, so it has the name of the restaurant and the
`address.
`And then there's an XML tags component, or I guess the
`phrase is XML index component, which has a number of XML
`tags related to this particular restaurant. And the patent also
`discloses a metafile related to a particular tag, in this particular
`example on this slide, figure 3B, XML tag 320, and the metafile
`relates other tags and perhaps some other relationship information
`to this XML tag 320. And the metafile is used essentially to
`expand a search request to find other records that might be
`responsive to a user's search request, based on the tags.
`So, the Okamoto patent filed ten months before the '434
`in February 1999, it's 102(e) prior art. I don't think there's any
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`debate here about its prior art status, is directed to a document
`search method and apparatus and portable medium used
`therefore. And the system in this patent is designed to register
`and create a database of what Okamoto calls structured
`documents; that is, documents who have codes in them, tags, such
`as SGML tags that define different portions or parts or structures
`within the document.
`Now, the principal embodiment of Okamoto is
`described with respect to SGML tags, which is a certain type of
`prior art tags. But if you look at slide 8, Okamoto first of all,
`mentions that at the time of his writing, XML was being worked
`on and it was expected to be used, and that he notes that the
`probable trend is toward the situation in which the document
`having a document structure, such as an SGML document, is not
`the only object of search.
`So, he's saying, I think, fairly saying, XML documents
`are coming down the pike, and people are going to want to search
`for them. And later in his -- in the specification, he points out
`specifically that, you know, structured documents described in
`other forms can be used with his system.
`So, Okamoto is a very thick patent, but I feel, and I'm
`going to move to slide 9, I feel I need to touch on several of the
`structures that he talks about, because they're relevant to the
`claims here, and they're relevant to the arguments that -- the
`disputes between the parties.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`First off, Okamoto describes a structure called a
`structure index, and the structure index is an index created by
`analyzing the structure of the documents that are registered in his
`system. And basically this requires an analysis of the documents
`themselves, in a related DTD file, and for each additional
`document that's registered, for a particular kind of document, say
`a report, any new structures that are found in the document are
`added to the structure index.
`And you can see that on the slide, on the right. This is
`figure 12, where document 1 is registered, and the structure index
`essentially has the exact same structure as document 1 because
`that's the first document. But the second document has some
`additional structures to it. And again, it's the same kind of
`document, but it has some additional structures, and those
`additional structures are added to the structure index. And then it
`goes to document 3 and, of course, on and on until whatever the
`relevant universe of documents exists are registered in the
`system, and that's how Okamoto builds this structure index that
`he uses to search -- later on to search for -- in response to a search
`request.
`Now, another important structure, data structure that
`Okamoto describes, is this meta structure index, which is
`basically a combination of two different structure indexes, and on
`this slide 10, I have figure 49, which is an example where he
`combines the structure index for thesis documents, you can see
`that structure index 1 labeled 4901, with a structure index for
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`report documents, and he basically makes them into a single data
`structure he calls a meta structure index. And the reason for
`doing this is that the user has said that these two types of
`documents are related. They're similar. They're basically the
`same thing. And so later on, if a user indicates that this structure
`should be used, this structure permits a user request to be
`expanded, and then searched not only for, say a particular type of
`document, like thesis, but also through related documents, like
`reports.
`
`And so that expansion aspect of Okamoto has to do with
`the thing I have on the right-hand side of slide 10, figure 50,
`which is the type definition table. And Okamoto explains that
`when he -- his system receives a search request, that is to be used
`with the meta structure index. And which has what he calls a
`structural condition in it; that is, tags that are indicating the
`structure that the user would like searched.
`The type definition table relates that structure, those
`tags, to other similar structures or structures that basically are the
`same thing. And so you can -- one example here, in figure 50,
`you can see in the middle this row that's sort of labeled date, the
`type is date, he has two element type names there, date of issue
`and reporting date. And so in this process, if someone wanted to
`search for a particular date and put in date of issue, the system
`would expand that so that the search would search not only date
`of issue, but reporting date on the notion that the user would want
`that information, it's a better response to the search.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`One more data structure disclosed by Okamoto, and I
`won't go into it in detail because I don't think we have to for the
`purposes of the disputes here, but just the alias structure index,
`which is yet another way that Okamoto discloses to modify the
`searches that are the structure-based searches that are sort of the
`point and the focus of his invention.
`The important thing I think for purposes of the
`discussion today about the alias structure index is how Okamoto
`describes in one embodiment that the system can use both the
`meta structure index and the alias structure index, and it permits
`the user to steer the search, if you will, to tell the system which
`one of those to use. And that is done, Okamoto says, by the user
`placing I think what he calls a signal, an alias signal, it's basically
`the word alias with a colon, in the search request. And if that, in
`this particular embodiment, if that signal is in the search request,
`the system will use the alias structure index and go through a
`process with this alias definition table, but if not, it will default to
`the meta structure index and go through the process I just told
`you about with the type definition table.
`So there's this determination made in that embodiment
`which way to go, which structure index to use.
`Okay. The two other prior art references that are at
`issue here I'll just mention very quickly. The XML 1.0
`specification, I think there's no debate that it's 102(b) prior art, it
`came out in 1998. And the Payne patent, which is a very early
`online sales system, patented online sales system, which
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`permitted users to purchase different kinds of products, including
`articles and written products, and which were organized into
`domains in Payne's database.
`JUDGE McSHANE: Let the record reflect that counsel
`was referring to slide number 13.
`MR. MICALLEF: I apologize.
`JUDGE McSHANE: That's all right.
`MR. MICALLEF: So, let me go to slide 15 and address
`what I think is probably the main issue here, and that is the
`interpretation of these terms index and metafile. I would like to
`point out first that, you know, the Board has adopted
`interpretations of those phrases in the institution decision for
`purposes of the institution decision. They're very similar to
`what -- not exactly the same, but very similar to what we
`proposed in the petition. And I think those same interpretations
`were finally adopted in the IBM proceeding.
`But the point I'd like to make is the Patent Owner has
`not argued any ground, any reason for patentability, based on
`these terms, on the claim constructions that were adopted in the
`institution decision here. So, if you maintain those, those
`interpretations, then these claim terms, index and metafile, are not
`the basis of any -- there's nothing more to argue about. It is
`undisputed that Okamoto discloses them. Now, they do have
`some other arguments, that's true, but on these, this is purely
`claim construction.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`So, I should have put in a slide with the Board's
`tentative claim constructions, but I think we all know what they
`are, they're on the record, and on slide 16, I've put in what I think
`are the primary passages from the '434 patent about these terms.
`Both of these passages, as you'll see, are from column 2 of the
`'434 patent, which is the summary of the invention. And we think
`they are definitional, and if not definitional, they are I guess you
`would say very close to definitional. I mean, sentences like these
`in the summary of the invention I think are probably some of the
`most important intrinsic evidence that one can come across to
`construe the claims.
`And the Board's interpretations that were in the
`institution decision are very similar to this. In fact, the first one,
`an index is essentially a guide that is used to locate information
`stored in a database, I think the Board's interpretation -- I don't
`know if it used essentially, but I think it was almost exactly that.
`And the metafile, just about the same thing, it's
`something that provides additional information about the tag.
`So, this is -- these passages are very close to the Board's
`interpretations, almost verbatim.
`Now -- and very close to the ones we proposed in the
`petition. And in the petition, we read the creating of the index, or
`on the creating of Okamoto's structure index, as I'm showing on
`slide 17, because that structure index is essentially a guide that is
`used to locate information in the database. It's used in the process
`of finding the appropriate records in the database in response to a
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`search. We read Okamoto's meta structure index on the claimed
`metafile, because the metastructure index has additional
`information about the tags. In fact, it has additional related tags
`to a tag that's in a search request.
`So, that was our reading. Now, Patent Owner's
`argument here, and this is on slide 18, is that the index should be
`construed to necessarily include multiple tags and multiple
`metafiles. They say multiple, they don't make a big deal of it, but
`that is what they're asking for. But I think the big dispute is on
`the inclusion part, they are asking for this interpretation that
`requires a structural relationship. The metafile has to be in the
`index, one or more of them, and the index has to include the
`metafile. That's their theory.
`Now, I think as we pointed out in our papers, and our
`reply, and I'll just put on slide 19, this is completely inconsistent
`with what the Patent Owner has argued in the proceeding -- the
`IBM IPR proceeding where they argued over and over that, in
`fact, the index and the metafile have to be separate and distinct.
`In fact, if you look at slide 20, their expert during his deposition
`in that matter, who is the same expert in this matter, said over and
`over again that the index and metafile had to be separate and
`distinct.
`And, in fact, if you look at slide 21, I'm sorry, let's go to
`slide -- whoops. Yeah, slide 21, I'm sorry. Slide 21, you know,
`the expert argued, testified, I should say, in his deposition in that
`matter, that the index cannot include the metafile, right? That's
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`what he agreed to, under cross examination. Yes, cannot include
`the metafile.
`And, of course, in this proceeding, he's saying that the --
`that the patent requires the index to include the metafile. So, I
`don't think you could really come up with two more inconsistent
`positions between these two. This is night and day, and they've
`never even attempted to square them.
`I note in the IBM proceeding, this inconsistency was
`noted, and the Board concluded that essentially this expert was
`not credible and wouldn't credit his testimony. I urge -- I suggest
`that that should be the result here, too. That this expert is simply
`not credible on these matters.
`So, that should -- I actually think that should be the end
`of it, but let me move on, because what was resolved on these
`issues in the IBM proceeding really probably doesn't resolve the
`argument here, because ours is a little bit different than theirs.
`So, let me deal with their arguments.
`Their main argument, and I have it on slide 22, is a
`resort to this line of cases under the Phillips claim construction
`standard, usually, where the term "the present invention," is used,
`as it exists in a specification, is used or argued should be used to
`import a limitation from the specification into the claims in order
`to narrow the ordinary meaning of the claim language. It is a
`very narrow, I guess exception, in the Phillips standard, but there
`are a couple of cases that do that.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`Now, I would like to, you know, a couple of points
`about that. One high-level point about that, the cases that adopt
`that, and that where the Federal Circuit adopts that, exists in a
`very different situation than you have here. Those cases are
`usually, in fact I think almost always, if not always, a situation
`where a defendant charged with infringement asks the court to
`limit the ordinary meaning of the claim term to some limitation in
`the specification.
`And the rationale behind it is that the patent owner has
`placed this statement on the public record somewhere in order to
`secure allowance of the patent, and he or she or it shouldn't be
`allowed to run away from that. I want to suggest to you that that's
`not the case here, all right?
`In this case, it's the Patent Owner who had an obligation
`to put -- define the invention in the claim under Section 112.2,
`who's saying that even though they didn't do it, what they were
`supposed to do, they want you to rewrite the claim anyway.
`That's a very different situation. The rationale of those
`cases like Howmedica simply does not apply, in my view, and I
`suggest that that's the case.
`Now, secondly, even as they point out, and this is their
`brief we've cited here on slide 22, the standard here is that you
`don't read, even in cases where this line of precedent applies, you
`don't read the limitation into the claim, unless the specification
`makes it clear that the invention requires that feature.
`JUDGE BISK: Can I ask you a quick question?
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`MR. MICALLEF: Yes?
`JUDGE BISK: There's a recent case that came out from
`the Federal Circuit, right before -- at the end of December, that
`does look at prosecution history in this type of situation. It's the
`D'Agostino v. MasterCard case, and in that case, they said the
`prosecution history is relevant as reinforcing the evident meaning
`of the claim language at issue, whether or not it would meet the
`standards for disclaimer and disallowance. Does that change any
`of your argument?
`MR. MICALLEF: I don't think so. I've gotten a similar
`question about exactly this. There's clearly a spectrum of
`comments that could be placed in the intrinsic record between an
`out and out disavow or disclaimer, you know, where every judge
`on the Federal Circuit would say, Yep, that's clear and
`unambiguous. And the other end of the spectrum, statements
`where you're not really sure what they're saying. And in between,
`I think there's no line, no clear line that says, well, this is
`disclaimer and then this is something that sort of informs the
`understanding of the claim.
`But, you know, those cases where it informs the
`understanding of the claim, I would submit to you, usually come
`up in the situation where claim language is, for lack of a better
`phrase, a little funky, where you're not really sure. It's not just a
`plain, ordinary English word or something that's, you know, well
`known in the art, like we have here. Indexes were known, right?
`Metafiles were known. The other argument -- the other claim
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`terms they're talking about, corresponding, right? It corresponds
`to, relating.
`In these things, I think those are not the cases where you
`might want to look to some statement in the intrinsic record to
`help you understand the contours of what the claim is.
`Did I answer your question?
`JUDGE BISK: Yes.
`MR. MICALLEF: Okay, thank you.
`So, back to the standard in slide 22, it has to -- the
`specification has to require this feature. And I've put on this same
`slide the two passages I cited to earlier, from the summary of the
`invention, which clearly don't say anything about the metafile
`being included in the index or the index including the metafile.
`So, right there, it's clear that the specification doesn't make clear
`that this structural requirement is required.
`As we pointed out in our brief, and I will go to slide --
`I'm sorry -- slide 23. Yeah. Their argument is also inconsistent
`with the claim language, which is, of course, part of the
`specification. As we pointed out, under their theory, this first
`step in claim 1, creating the index, would actually require
`creating the metafile also, because they say the claimed index
`includes a metafile, so therefore you cannot create the claimed
`index until you get one that actually has a metafile in it.
`But, of course, if that's the interpretation, then the
`second step of claim 1 is superfluous, right, it doesn't mean
`anything. It's just creating the metafile again. So, their claim
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`interpretation is inconsistent with the claim language, which is
`reason enough to reject it, but it also shows that the specification
`doesn't require that feature to be read into the claims.
`Similarly, as we pointed out, and this is on slide 24,
`claim 25 of the '434 patent requires a metafile, but doesn't require
`an index. And so to adopt their interpretation, you would have to
`read an index into this claim that doesn't ever mention it. That's
`got to be wrong, I want to submit to you, and surely that means
`that the specification doesn't require it.
`JUDGE McSHANE: Counsel, just a quick question.
`You've been sort of going down classic Phillips lines here. Do
`you take the position that the claim interpretation that we've used
`in the institution decision should be adopted under either a
`Phillips construction or a broadest reasonable interpretation
`standard?
`MR. MICALLEF: Well, I don't know. I think it's the
`broadest reasonable interpretation standard, but I must say, for
`these last few, what I've really been trying to apply, and I think
`I've been -- I've tried to be careful with how I say it, is this
`standard from Howmedica that says, you only read in this
`limitation when the specification requires it.
`So, these points I'm making, I agree with you, they
`would be relevant to a Phillips analysis, or a straight-up BRI
`analysis, but the point we are making is responding to their
`argument that the present invention language opens up the claim
`in some manner, or narrows it, I should say.
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`JUDGE McSHANE: Yeah, I understand that, but the
`point is you end up at the same place. You end up with not
`importing limitations.
`MR. MICALLEF: Well, I'm saying under the broadest
`reasonable interpretation, you do not import the limitation of this
`particular claim language, that's right.
`JUDGE McSHANE: Got it. Thank you.
`MR. MICALLEF: So, one more point on this, and that
`is I want to address, because they seem to put -- and I'll go to
`slide 25 -- they seem to place a lot of emphasis on this, so I feel I
`need to address it. And that is they have cited to I think five
`different passages, sentences in the specification of the '434
`patent that talk about indexes and metafiles. And they say those
`passages support their view.
`And I want to look very carefully at them, because I
`want to suggest to you, they don't support their view at all. Four
`of them, which I have here on slide 25, are each in a particular
`format; that is, under ordinary English grammar rules, ambiguous
`as to what they're saying. That is, if you look at column 1, 25 to
`27, they use this phrase, "using an index that includes tags and
`metafiles."
`As we pointed out in our brief, a phrase like that could
`be -- could mean two different things. It could mean, as I'm
`showing on sort of the bottom part of this slide 25, it could mean
`using an index that includes tags and metafiles, that is they're
`both in the index. But a different reading of it would be, using
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`two things, using an index that includes tags, and using metafiles.
`In either reading of those sentences is plausible, is consistent with
`ordinary English grammar.
`Now, there's one example in the patent -- so I guess the
`first point is, these passages, therefore, do not require this
`limitation to be read in. It's plausible, but they don't require it.
`The other passage that they cited, which I have on slide
`26, I believe it's in column 7 of the patent, now that one is in a
`different format, right? That one says the index includes a
`number of tags and metafiles associated with the tags." And, you
`know, they'll probably say, well, that one means the metafiles and
`the index. The problem with that is, that statement is made with
`respect to figure 1B, which the patent says is an exemplary
`embodiment of the present invention. Okay? An exemplary
`embodiment. So, this is not the invention; it's an example of a
`preferred embodiment.
`I want to suggest one other thing to you. When you
`look at these two slides, 25 and 26, where there's a number of
`statements that could be interpreted broadly, and then there's
`another one that can be interpreted narrowly, that is not a
`coincidence that they all exist in this patent, right? This is typical
`and actually quite well done patent drafting. This -- people do
`this for a reason, it's not underhanded, there's nothing wrong with
`it. They draft these sentences in different ways so to avoid any
`argument that their specification will not be supported or their
`claims will not be supported by the specification.
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`IPR2016-00019; IPR2016-00020
`Patent 6,510,434 B1
`If they draft all the sentences broadly and later try to
`claim narrow, they're going to have a written description problem,
`or at least an argument of that. If they draft -- if they describe
`their invention narrowly, and then later on try to claim broadly,
`they may also have a written description problem under the sort
`of Gentry Gallery kind of cases.
`So, I'm suggesting to you this was intentional. You
`know, they did this so that they could support, if they wanted to,
`or if they had to, different kinds, different claims of different
`scopes. But the claims they drafted, the ordinary meaning don't
`have the metafile included in the index, it just says create an
`index, create a metafile.
`So, based on all that, we think their argument about
`index and metafiles is wrong as a matter of law. I think the Board
`agreed with us in the institution decision, and if that decision is
`maintained in the final written decision, then as I mentioned, all
`the patentability arguments on these
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