UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01688
`Patent 9,300,792 B2
`____________
`
`Record of Oral Hearing
`Held: October 25, 2017
`
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01688
`Patent 9,300,792 B2
`____________
`
`Record of Oral Hearing
`Held: October 25, 2017
`
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`Case IPR2016-01688
`Patent 9,300,792 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`SARAH GUSKE, ESQUIRE
`WAYNE STACY, ESQUIRE
`Baker Botts, LLP
`101 California Street, Ste. 3600
`San Francisco, California
`sarah.guske@bakerbotts.com
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`JESSE J. CAMACHO, ESQUIRE
`MARY JANE PEAL, ESQUIRE
`Shook, Hardy & Bacon, LLP
`2555 Grand Boulevard
`Kansas City, Missouri 64108
`jcamacho@shb.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
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`October 25, 2017, at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia.
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`Case IPR2016-01688
`Patent 9,300,792 B2
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`P R O C E E D I N G S
`JUDGE ARBES: Please be seated. Good morning everyone. This is
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`the oral hearing in Case IPR2016-01688 involving Patent 9,300,792.
`
`Can counsel please state your names for the record?
`
`MS. GUSKE: Sarah Guske from Baker Botts from Petitioner,
`Twilio. And with me is a Jay B. Schiller and Wayne Stacy, also from Baker
`Botts.
`
`MR. CAMACHO: Jesse Camacho with Shook, Hardy & Bacon.
`And with me is Mary Jane Peal.
`
`JUDGE ARBES: Thank you.
`
`Per the Trial Hearing Order in this case, each party will have 45
`minutes of time to present arguments. The order of presentation is first
`Petitioner will present its case regarding the challenged claims and may
`reserve time for rebuttal. Patent Owner may then respond to Petitioner's
`presentation, and may also argue its motion to exclude if you'd like, and may
`reserve rebuttal time only for the motion to exclude. Petitioner then may do
`the same with its remaining time to respond to Patent Owner's presentation
`on all issues. Patent Owner then may use any remaining time to respond
`only to Petitioner's arguments on the motion to exclude.
`
`One issue before we begin. The Trial Hearing Order allowed the
`parties to jointly file a one-page list of objections to each other's proposed
`demonstrative exhibits with a short statement of the reasons for each
`objection. The parties filed two pages of objections, partially singled
`spaced, with lengthy explanations. The objections therefore are overruled.
`
`I will remind the parties, though, that the demonstrative exhibits are
`merely visual aids to assist the parties' presentations at the hearing. They're
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`not briefs and they're not evidence. And the panel will be able to determine
`today whether any substantive arguments made at the hearing are improper,
`and if so, those arguments will not be considered.
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`Finally, if either party believes that the other party is presenting an
`improper argument, we would ask you to please raise that during your own
`presentation rather than interrupting the other side.
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`Any questions before we begin today?
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`MS. GUSKE: No.
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`JUDGE ARBES: Okay. Counsel for Petitioner, you may proceed.
`And would you like to reserve time for rebuttal?
`
`MS. GUSKE: Yes. Twenty minutes, please.
`
`JUDGE ARBES: Okay.
`
`MS. GUSKE: Thank you, Your Honors. The '792 patent, the patent
`that is at issue here today in this case, claims to describe a security method
`and software for executing that security method. It's basic two-factor
`authentication using different channels where a user registers themselves to
`the system, verifies information about themselves and their devices, and then
`if the -- a user later tries to accomplish some sort of activity that requires
`reverification, according to the system, the user gets a message indicating
`that this has happened and asks the user to acknowledge that action in some
`manner.
`
`The Bennett reference, Petitioner's primary reference in this case,
`that's Exhibit 1003, discloses the same invention. The Bennett reference,
`like the '792 patent, is a security system, two-factor authentication, two
`different channels, it has a decision engine, it has rules, looks for certain
`actions to occur and requires user confirmation through entry and
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`completion code.
`
` The only issue that the Board needs to decide here is whether it's
`obvious to add a word phrase or sentence explanation about the -- to the
`message in Bennett that gives the completion code the user has to enter.
`And I'll stop here for a moment.
`
` The message in Bennett is a text message. It carries the completion
`code, but by its very name, it's set up to present texts. It would be obvious to
`add that message explanation to that text message, either by itself or
`following Bennett's approach, take the disclosure in Campbell that describes
`using a sentence to explain why a message is coming through and put that
`into Bennett.
`
` Let's take a step back. The Board in its institution decision and the
`limitation that seems to be at issue in Patent Owner's arguments is
`notification event. This Board, as I'm sure it knows, has construed that
`claim limitation. And here on slide 5, a quote from Your Honors' decision
`institution, notification event has been construed as an event that results in
`the user being notified the event occurred.
`
` It's the same construction that was adopted by the Board in two IPRs
`unrelated petitions or petitions regarding related patents, IPRs No. 2016-450
`and 451. And here, what we've done is shown obviousness with Bennett and
`Bennett plus Campbell. And that's really -- these are the only limitations
`that are in dispute.
`
` So briefly just to remind everyone here what we are dealing with, the
`claims that are at issue are shown here in slide 2, the instituted claims on the
`left. The six or so claims on the right, those were disclaimed in a CBM
`petition on the same patent by Patent Owner.
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` And really, the disputed limitations appear only in the independent
`
`Claims 1 and 10. There's no challenges with respect to the dependent
`claims, we're here just focused on 1 and 10.
`
` And while [inaudible] does notification event related disputes, it's
`truly, if you look at Patent Owner's response and then also -- at Patent
`Owner's response, it's really about other words that appear alongside
`notification event. There's not much challenge on notification event
`anymore at this point.
`
` And then also, as a recap, Patent Owner in its response has indicated
`that for purposes of these proceedings, it views Claims 1 and 10 as
`effectively the same claim limitations with the same issues that they
`challenge, so there's -- I will often refer to Claim 1, but the elements match
`almost word for word, one is just method, the other is just a Beauregard
`claim describing the same exact steps.
`
` So Patent Owner makes four challenges. Challenges one and two are
`basically Patent Owner arguing that Bennett and Campbell references don't
`disclose actions. Again, [inaudible] says a notification challenged, but really
`it's about actions.
`
` Argument 3 -- and I'll just address these in order, unless Your Honors
`have questions and want to jump around.
`
` Argument No. 3 is Patent Owner basically making a procedural
`argument that Petitioners can't rely on antecedent basis in these -- or the AIA
`proceedings.
`
` And then, finally, four, Patent Owner argues that a person of ordinary
`skill in the art would have no motivation to add a phrase or a sentence to
`benefit its completion code message.
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` So let's move to that first argument of Patent Owner. So it's about
`
`action. I think it's helpful to start with what is an action in the '792 patent.
`The '792 patent gives examples of what actions are and the context of the
`invention.
`
` And I'll point Your Honors to the '792 specification, that's Exhibit
`1001, Figure 9. And if you look midway down on Figure 9, there's three
`boxes, one's labeled 906, the others are 908 and 910. And within those, it's
`user logging into an account, 908 is attempting to make a transaction, and
`910 is attempting to modify account information.
`
` The related disclosure in Exhibit 1001 to this figure in those boxes is
`found at column 9, lines 7 through 20, while I'll point you specifically to
`lines 14 to 17. And it describes those actions again. These actions,
`transactions log-in attempts, exact same actions that are in Bennett that are
`the subject of the petition.
`
` JUDGE ARBES: Counsel, the claim language recites notification
`events associated with actions, so they have to be two different things, right?
`
` MS. GUSKE: So they're -- I mean, it's associated, it's a broad term.
`There's a relationship between the two. And Patent Owner's own expert
`provided some insight in his deposition testimony about what that means,
`because he, himself, points to the same disclosure that we're talking about
`here in column 9 as being both indicative of what an example of a
`notification event is in the patent and also what an action is because they are
`associated with one another.
`
` The actions are, you know, what's being attempted, what's occurring,
`the events are what's in the system related to those actions that end up
`triggering the notification event.
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` JUDGE ARBES: What would you point to in the specification of the
`
`'792 patent as disclosing what you just described, that the event is really
`what's in the system and the action is the thing that needs to be completed?
`
` What's the best disclosure you can point us to?
`
` MS. GUSKE: The best disclosure? It all comes in column 9, and it's
`this long -- a little bit longer of a section describing Figure 9. And it's
`referring to -- let's see here, so if you look at line 25, "If a previously
`established event occurs, then the system will notify or verify the user." And
`that paragraph that starts there at line 25 is describing that disclosure that
`comes above.
`
` So, you know, a -- the --
`
` JUDGE ARBES: So if those are events described above in column 9,
`what is the action?
`
` Let's take one of those for example. Attempts to make a transaction,
`908, what is the action associated with that event?
`
` MS. GUSKE: So it would be the beginning of making that -- a
`transaction, for instance, a financial transaction or trying to log in. It's the
`actual activity that's occurring.
`
` JUDGE ARBES: It's not allowing the transaction -- I believe Patent
`Owner has argued that the notification event is a request to do the
`transaction, a request for withdrawal, and the action that requires
`
`acknowledgment is the allowing of that. Do you disagree with that?
`MS. GUSKE: So I think from an -- an example of what meets a
`notification event and what could meet an action, I don't disagree at a level
`that -- that that could be an example of allowing a transaction or the event to
`occur, like a transaction would be -- could be an action as claimed and the
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`request could be a notification event.
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` But I don't know that they actually -- that Patent Owner actually
`advances any sort of claim construction beyond that. I don't know what
`claim construction that they're actually pursuing to try to draw an actual
`distinction.
`
` I don't disagree with the examples that they have in their chart, that
`one could be -- the request could be the notification event, according to the
`system; whereas, the action is the -- the attempting and the -- or the
`attempting and the allowing of the -- of the underlying transaction.
`
` JUDGE ARBES: Okay. But you agree that for purposes of proving
`the obviousness of these claims, you can't point to the same thing as the
`notification event and the action, right?
`
`MS. GUSKE: Well, they're associated with one another, so I think to
`say that the same disclosure can't disclose both is not right.
`
` JUDGE ARBES: Well, I see your point about the same disclosure --
`
` MS. GUSKE: Yeah.
`
` JUDGE ARBES: -- but the thing that we're pointing to as the
`notification event cannot be the same as the action. And the claim recites
`them separately, one is associated with the other, but they're not exactly the
`same. Do you agree with that?
`
` MS. GUSKE: They're different claim terms, and I think we -- we
`don't point to the same thing in either Bennett or even Campbell, which is a
`little bit of a different issue, but we're not actually pointing to the same
`thing, so I think regardless, the petition covers whatever interpretation you're
`giving those terms, whether you accept Patent Owner's contention that there
`has to be something different between a notification event and action or
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`whether because they are associated with one another. They are such
`intertwined concepts that they can be, from an appearance, the same thing.
`JUDGE ARBES: Okay. But the Petitioner has never advanced a
`claim interpretation argument that they can be the same thing, right?
`
` MS. GUSKE: I don't think we've created an exclusive construction,
`no.
` JUDGE ARBES: All right.
`
` MS. GUSKE: All right. So moving back. We've gone over what
`
`the '792 -- yeah, the '792 gives us examples of actions. And as I mentioned,
`it's consistent with what Patent Owner's own expert has said.
`
` And I'll point you to Petition slide 11 and it's a quote directly from
`Dr. Neilson's deposition testimony, it's Exhibit 1035. And in here, he gives
`an example of what an action would be according to the '792.
`
` And let me get my laser pointer going here. His action is
`withdrawing a certain amount of money, so it's the action of withdrawing a
`certain amount of money. It's consistent with what the '792 says regarding a
`transaction, that's the box 908 that we were talking about. Patent Owner's
`expert goes on again and -- a little bit earlier in his deposition at page 18 and
`gives that withdrawal example again.
`
` And then, finally, in the same Exhibit 1035, and very close in time,
`when asked what interpretation of action he was applying when analyzing
`the claims, Patent Owner's expert said he was using a conventional
`understanding of action, like an operation transaction. And that's exactly
`what's in Bennett.
`
` JUDGE ARBES: Counsel, do you agree with the Patent Owner's
`position that, I believe they've advocated that the action is something that
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`could take place in the future after the user acknowledges it?
`
` A notification event is what triggers the notification, the action is
`what can be completed after acknowledgment?
`
` MS. GUSKE: So the temporal aspects that Patent Owner is
`advancing, I'm not even sure what claimed construction the Board could
`adopt that would -- that would exclude certain activities because of the point
`in time versus, you know, past, future, contemporaneous. I'm really not
`certain.
`
` I think the claims allow for, and what Bennett also itself teaches, is
`the idea that until Bennett's completion code has been entered by the user,
`whatever the underlying action that they're trying to perform isn't completed
`until they enter the completion code, so it's a completion code.
`
` So I think if we're dealing with this notion of timing and that the
`action has to happen at some later point in time, you still have that in the
`Bennett reference, because the transaction, which is in Bennett, the
`transactions, there's a number of examples given, but they have online
`financial sort of transactions, log-in attempts, all of those things. You can't
`actually complete that desired action until the completion code is entered,
`authentication is required.
`
` JUDGE KIM: Is that acknowledgment, though, or is that the action?
`
` MS. GUSKE: The acknowledgment would be the entry of the
`completion code, but the underlying action that the user is trying to perform
`would be completed upon entry of that completion code. So the underlying
`activity, the action. So making a financial transaction, trying to log in would
`only completely occur after the completion code has been entered, so
`thereby becoming an action requiring acknowledgment.
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` So, again, stepping back to Bennett, which is what Patent Owner --
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`or, sorry, Petitioner contents either by itself renders these claims obvious
`with addition of a few words to meet the Board's construction of notification
`event, or with Campbell, to accomplish that same goal.
`
` As I previously mentioned, you can see that in Bennett, it's Exhibit
`1003, column 15, 66 through 51. These are examples given by Bennett of
`actions, opening an account, paying a bill, transferring funds, purchasing
`goods.
`
` Bennett goes on to expand on that, those concepts in column 13, 1
`through 23. And I'll point specifically to this online transaction section, that
`if you get in there, you get banking transactions, those sorts of things.
`Again, matches what the '792 says is an action.
`
` JUDGE ARBES: Counsel, I think one of the issues here obviously is
`that the portion of the petition that you were citing there is under the heading
`that says Bennett discloses the full limitation, notification event associated
`with actions that require acknowledgment by the user.
`
` And we disagreed in the DI that Bennett discloses a notification
`event. What can you point us to in the petition that makes the argument of
`relying on Bennett for the actions and Campbell for the notifying the user
`aspect?
`
` MS. GUSKE: Sure.
`
` So Bennett, where the discussion of Bennett starts for this claim
`limitation, and I think we're talking about the D in the claims, starts on page
`38, so I'll point you there first. And this is the -- the sort of an expanded
`discussion of Bennett.
`
` And you see right here, it's even up on slide 9 where he talks about
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`Bennett's transactions, and in parentheses, actions, so we have introduced
`here, starting on page 38, what Bennett discloses is actions.
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` And if we're -- if we're talking about the argument of combination
`with Campbell, then I'll move you to in the petition, so that the combination
`with Campbell for this element starts on page 44 and continues through 47.
`And it's subsection B that starts at the bottom of page 45 that deals with, all
`right, how would we be combining Campbell with Bennett. And it's that
`section.
`
` So the bottom of page 45 through 47, where the concept that's being
`discussed there and presented and argued with the combination with
`Campbell is taking the words of Campbell, that concept of sending a
`sentence explaining why a message is being sent to the user and saying, hey,
`we can take that word concept, that explanation, and the notification if you
`will, and it would be obvious to put that into the text message that sends the
`completion code in Bennett. That's what this section is addressing.
`
` JUDGE ARBES: And then how would you respond to Patent
`Owner's argument on page 44, the heading there says that Campbell teaches
`the full limitation?
`
` MS. GUSKE: Sure.
`
` Campbell also teaches that full limitation, and it provides context for
`why ultimately you would be combining Bennett and Campbell to take the
`sentence or the phrase explanation from Campbell and put it into Bennett to
`fill the gap under the Board's interpretation of the notification of that
`construction.
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` JUDGE ARBES: Campbell also teaches actions requiring the
`acknowledgment of the user?
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` MS. GUSKE: Yes.
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` JUDGE ARBES: How so?
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` MS. GUSKE: In Campbell, you -- what the -- what you have
`
`happening in Campbell, the description -- or the example that's disclosed in
`Campbell is log-in attempts. So you have -- the system could be set up for
`any number of things, but I think the example is ten failed log-in attempts
`that result in account suspension, so account suspension by virtue of bad log-
`in attempts.
`
` The attempted log-in and that suspension, resulting suspension, ends
`up locking the system down, the notification event that comes in and the
`message that comes in is that, hey, the account has been disabled due to
`suspicious activity. Now you've got to call into this number and talk with
`the -- I think it's the authentication authority.
`
` I can point you exactly to that. It's in paragraph 41 of Campbell, it's
`Exhibit 1004. You have to talk to the authentication authority in order to be
`able to get your account back up and log in.
`
` JUDGE ARBES: So what is the notification event and what is the
`action in that scenario?
`
` MS. GUSKE: The notification events that are disclosed in Campbell
`are the criteria, so it's whatever is set up in the system. And in that particular
`example it's the nth log-in that says, okay, now we're disabling the account
`and we're going to notify the user that it's been disabled because of the failed
`log-in attempts. And the action is the logging -- the attempt to log in and the
`attempt to authenticate the user.
`
` JUDGE ARBES: But how are you --
`
` MS. GUSKE: By the way, those are referred to in Campbell, those
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`attempts, those authentication attempts, are referred to as events in
`Campbell, which I think cause some confusion for the Patent Owner.
`
` JUDGE ARBES: So those log-in attempts, how are you
`acknowledging them when you call in?
`
` MS. GUSKE: You're -- you would -- just like if you were entering a
`completion code, you're going to call into the authentication authority and
`say, this is me, or potentially if it wasn't you and it's a blocked fraud,
`because these are all security systems again, then you'd say, no, that's not
`me.
` JUDGE ARBES: And does Campbell --
`
` MS. GUSKE: But, again -- sorry. Go ahead. I --
`
` JUDGE ARBES: Does Campbell expressly disclose that, what you're
`
`talking about when you call in, or does it just say, please call this number?
`
` MS. GUSKE: It discloses in Campbell right under that quote in
`paragraph 41, it discloses that you're going to reach out to the authentication
`authorities, so you're going to be talking to someone for the purpose of
`authentication.
`
` But before we get too far down the road on Campbell, we don't need
`Campbell for that disclosure, Bennett has it. Really what the combination is
`here, and what the Board said in its institution decision even, it's taking the
`concept of the word explanation from Campbell and putting it into Bennett.
`
` JUDGE ARBES: Well, that's -- I understand that first position.
`
` MS. GUSKE: Yeah.
`
` JUDGE ARBES: What I'm asking about is the arguments made on
`pages 44 and 45 that seems to be an alternative argument that Campbell also
`teaches the actions requiring acknowledgment. Are you making two
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`different arguments relying on Bennett for it and relying on Campbell for it?
`
` MS. GUSKE: Yes. I mean, that is an alternative argument --
`
` JUDGE ARBES: Okay.
`
` MS. GUSKE: -- but it doesn't -- it's not the only argument that
`Campbell itself discloses, all these limitations.
`
` JUDGE ARBES: Okay. So in the reason to combine analysis it
`seems to be the previous argument that you were making that --
`
` MS. GUSKE: Yes.
`
` JUDGE ARBES: Okay.
`MS. GUSKE: That's correct.
` So coming up on my time here, before reserving rebuttal, we've kind
`
`of already addressed the requiring acknowledgment, so I'll move on to the
`Patent Owner's third argument briefly, that Element F was somehow not
`addressed with respect to the combination of Bennett and Campbell.
`
` And Plaintiff's argument is effectively that -- an argument that the
`petition somehow only relies on Bennett for F, completely ignoring the
`combination of Bennett and Campbell that were handled in great detail for
`the actual notification event limitations when those were first introduced.
`
` If you look at the claim language that's in these elements -- in
`Element F, moving to slide 39, and that's just simply a capture of F. You see
`there, there's nothing new about notification event. It's not a new limitation
`that appears in this claim element. It refers to "The established notification
`event."
`
` Its antecedent basis comes from it's introduction at D, and then there's
`additional disclosure about the notification event and the message that
`transmits the notification event occurrence. Those were already addressed.
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`It doesn't meet -- it just simply -- there's no reason to address it again.
`There's no requirement under the APA that Petitioners cut and paste
`redundant proofs and arguments to handle previously addressed limitations.
`
` And with that, I'll reserve my remaining time.
`
` MR. CAMACHO: If it will please the Board, I will start. Your
`Honors, I think one thing that might be helpful to look at is to go through
`portions of our response and clarify that it seems like there's -- the Board
`might be able to benefit from some clarifications. I may be able to speed the
`analysis along.
`
` I think one of the things to focus on is, is their argument that counsel
`for Twilio just ended on, and this -- this argument -- we placed it third in our
`brief, so for the record, I'm looking at the response, the Patent Owner's
`response on page 30.
`
` And in view of the fact that there is a difference between a
`notification event and then a -- like a request to withdraw money, and then a
`corresponding action, which would be like allowing the withdraw, and then
`there's a message that gets sent informing the user of the notification event.
`
` And then the last one -- this is what gives life to the required. The
`claim recites, "A notification event associated with an action requiring
`acknowledgment." Well, what does requiring acknowledgment mean? It
`means that if the acknowledgment isn't received, then the action doesn't
`occur. If the acknowledgment is not received, then the funds would not be
`allowed to withdraw.
`
` So there seems to be a little bit of a misunderstanding possibly in the
`reply that the receiving element somehow is not important, when it is. So
`this is our third argument.
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` And our third argument is the petition fatally relies on Bennett alone.
`
`It relies on Bennett alone to show not a concept, not -- the petition does not
`rely on anything besides Bennett to show the receiving element. And the
`receiving element is a notification event limitation. It's receiving the
`acknowledgment associated with a notification event.
`
` It's one of the elements of the claims. And there is no analysis, no
`mention, nothing, in the petition whatsoever to address the very last element
`of Claim 1, except Bennett.
`
` JUDGE ARBES: Counsel, can I ask just a general question?
`
` MR. CAMACHO: Yes.
`
` JUDGE ARBES: If I'm filing a petition and I have one limitation and
`I say that the secondary reference discloses that, and then in a later
`limitation, it refers to "the" element, it takes antecedent basis from the earlier
`recitation, is it your position the Petitioner needs to repeat everything that
`they argued at the beginning for that limitation?
`
` MR. CAMACHO: No. No. That's not our argument. I think -- I
`think -- now, I do think it is incumbent upon the Petitioner to somehow
`provide some sort of a signal back if the Petitioner is relying on some other
`portion, but just to be clear, the issue is not notification event, the issue is an
`entire limitation receiving that acknowledgment associated with the
`notification event. Here, this -- slide 1 of our -- of Patent Owner's
`presentation, and slide 1 is very, very small, but it's -- no, it's not slide 1, it's
`slide 2, and it shows all of the -- it's a screen graph of the Claim 1.
`
` The last three elements are all separate, these are gerunds, these are
`actions that must occur, there must be a maintained, there must be a
`receiving, upon receiving an indication of the occurrence of an event and
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`then there's a receiving.
`
` So the argument here, I'm not trying to make some sort of a, oh, you
`didn't copy-and-paste argument, that's not what I'm saying, it's totally true,
`Petitioner is correct, there is an antecedent basis, it does say the established
`notification, but that's really beside the point. The point is, there is an entire
`element that needs to be shown.
`
` JUDGE ARBES: Aren't they arguing that Bennett discloses that
`whole element except for the aspect of the event in which the user has to be
`notified of it, that's the only thing that is missing from Bennett that they're
`relying on Campbell for?
`
` MR. CAMACHO: I think that might be their argument, but I do not
`think that is a sound argument because one cannot untether the action from
`the notification event from the acknowledgment.
`
` These -- what the claim recites are not just notification events in the
`abstract, these are -- these are notification events that are associated with
`actions that require acknowledgment. These cannot -- I do not think it is
`proper to be able to separate out and find some recitation in a prior art
`somewhere that describes some action. And then somewhere in the prior art,
`there's something -- there's some other reference somewhere that describes
`acknowledgment.
`
` JUDGE ARBES: Well, you would have to have a reason why a
`person ordinarily skilled in the art would have made that combination. But
`it's not your position that you need one reference to disclose every single
`thing, right?
`
` MR. CAMACHO: No, of course not. And we don't need one
`reference to disclose every single thing, but we do need to put the Petitioner
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`on notice, the Board on notice, that somehow that last element, actually
`receiving the acknowledgment, how is it done, how is it happening, how it
`occurs, does it occur. And that's completely devoid in the petition.
`
` There's no analysis, outside of Bennett, has to how one can receive an
`acknowledgment of an action associated with a notification event.
`
` So, to me, it seems impossible. If Bennett doesn't teach notification
`event, the notification event limitations, how can it possibly teach receiving
`an
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