UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC., HULU INC., and
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`__________
`
`Case IPR2017-00948
`Patent 8,566,960 B2
`__________
`
`Record of Oral Hearing
`Held: May 8, 2018
`__________
`
`
`
`Before DAVID C. McKONE, BARBARA A. PARVIS, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`
`.
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC., HULU INC., and
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`__________
`
`Case IPR2017-00948
`Patent 8,566,960 B2
`__________
`
`Record of Oral Hearing
`Held: May 8, 2018
`__________
`
`
`
`Before DAVID C. McKONE, BARBARA A. PARVIS, and MICHELLE N.
`WORMMEESTER, Administrative Patent Judges.
`
`
`.
`
`
`
`
`
`Case IPR2017-00948
`Patent 8,566,960 B2
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DANIEL T. SHVODIAN, ESQ.
`ANDREW T. DUFRESNE, ESQ.
`Perkins Coie, LLP
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`(650) 838-4413
`DShvodian@perkinscoie.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BRETT MANGRUM, ESQ.
`Etheridge Law Group, PLLC
`2600 E. Southlake Boulevard
`Suite 120/324
`Southlake, TX 76092
`(817) 470-7249
`Brett@etheridgelaw.com
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, May 8,
`
`2018, commencing at 1:29 p.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`
`
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`Case IPR2017-00948
`Patent 8,566,960 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE WORMMEESTER: Good afternoon, everyone. We have
`our final hearing in this case, IPR2017-00948, which concerns U.S. patent
`number 8566960. I'm Judge Wormmeester and to my right is Judge Parvis.
`Judge McKone is appearing remotely.
`Let's get the parties appearances please. Who do we have for
`Petitioner?
`MR. SHVODIAN: Good morning, Your Honor. Dan Shvodian
`for Petitioner from Perkins Coie. And with me is Andy Dufresne.
`JUDGE WORMMEESTER: Thank you.
`MR. SHVODIAN: And as I noted in our email, we are going to
`divide the argument where Mr. Dufresne will address the amended claims.
`JUDGE WORMMEESTER: Okay, great. Thank you.
`Welcome. And for Patent Owner?
`MR. MANGRUM: Good afternoon, Your Honors. Brett
`Mangrum for the Patent Owner, Uniloc Luxembourg S.A. I'll be
`presenting all or our evidence today.
`JUDGE WORMMEESTER: Okay, great. Thank you.
`Welcome. We set forth the procedure for today's hearing in our trial order.
`But just to remind everyone the way this will work, each party will have 45
`minutes to present arguments. Petitioner will go first and present its
`arguments on the instituted claims and may reserve time for rebuttal.
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`Patent owner will then have the opportunity to present its response,
`as well as its arguments on its motion to amend and may also reserve time
`for rebuttal on its motion to amend issues.
`Petitioner may then present rebuttal arguments and respond to Patent
`Owner's arguments on its motion to amend. And finally, Patent Owner
`may present rebuttal arguments regarding its motion to amend.
`Please remember that Judge McKone will be unable to hear you
`unless you speak into the microphone. Also, when referring to any
`demonstrative, please state the slide number so that he can follow along.
`And this is a reminder that the demonstratives you submitted are not
`part of the record. The record of the hearing will be the transcript. We
`will give you a warning when you're into your rebuttal time or reaching the
`end of your argument time. Any questions before we proceed?
`MR. SHVODIAN: No, Your Honor.
`JUDGE WORMMEESTER: Okay. Judges Parvis and McKone,
`do you have anything you want to discuss before we proceed?
`JUDGE MCKONE: I do. But first, can you hear me okay?
`JUDGE WORMMEESTER: Yes.
`JUDGE MCKONE: Great. Second, I just wanted to draw the
`parties’ attention. Yesterday you may have noticed that we submitted a
`short order in this case. By way of background in our decision on
`institution, we instituted on all claims brought forward in the petition but not
`all grounds, at least as to one obviousness ground for three of the claims.
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`In light of the recent Supreme Court decision in SAS, our standard
`practice in instances of these have been to usually issue a standard order that
`makes clear that the case is proceeding on all grounds and all claims. We
`don't believe that that has any bearing on the hearing today based on the
`arguments that the parties have presented in their briefing and in the slides.
`However, I did want to bring your attention to it.
`And also in the order, it mentions that there's a direction to the
`parties to meet to confer to determine whether any additional briefing or
`schedule changes would be necessary. We're not aware of any that would
`be necessary, but we wanted to give you an opportunity to weigh in if you
`want to. But as I said, we don't anticipate any impact on this hearing today.
`And with that, we invite you to begin your presentations.
`JUDGE WORMMEESTER: Will you be reserving time, counsel?
`MR. SHVODIAN: Yes, Your Honor. I'd like to reserve -- we'll
`use 15 minutes now and reserve 15 minutes for my rebuttal and then 15
`minutes to address the amended claims.
`JUDGE WORMMEESTER: Okay.
`MR. SHVODIAN: And, Your Honor, if -- we're prepared to
`discuss the SAS issue after the presentations are done if Your Honors would
`like to do so today.
`On Slide 2, I've set forth the issues that I intend to address, though
`given the limited amounted of time, I think we're going to focus on the
`setting and the verifying limitations for both claim construction and then
`how those limitations are taught in the prior art. But obviously I'm ready to
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`address any questions Your Honors might have. So please direct me to any
`other issues that you'd like me to address.
`So jumping into the first issue on claim construction regarding the
`setting limitation, we think this is a pretty straightforward issue and that
`Your Honors already correctly construed this limitation. And the dispute
`here, the limitations shown on Slide 3 and the dispute concerns whether
`setting can be an initial setting or whether it requires an adjustment, as
`Patent Owner argues.
`And if you look to Slide 4, we have a quote from the '960 patent in
`which the word "set" is used to discuss an initial setting of the allowed copy
`count. It says even though the device limit is initially set to five -- so that's
`talking about an initial setting, so that's an instance and specification where
`setting is used to discuss an initial setting.
`And then on Slide 5, we have an example where setting is used to
`discuss setting the allowed copy count from one limit to another limit. So
`there it's being adjusted.
`So as Your Honors construed the claim limitation, setting is broad
`enough to cover both an initial setting and an adjustment to the setting of the
`allowed copy count. And we believe that's the proper construction and that
`Patent Owner has not shown any error in that construction.
`So going on to the claim construction, the verified limitation --
`JUDGE PARVIS: Does your expert provide testimony on the
`setting versus adjusting --
`MR. SHVODIAN: Yes, Your Honor.
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`JUDGE PARVIS: -- limitation?
`MR. SHVODIAN: Yes.
`JUDGE PARVIS: Does your expert think that setting and adjusting
`means two different things, Mr. –
`MR. SHVODIAN: Yes, he does. He has set forth in his report
`that setting can be an initial setting or setting to a new level, whereas
`adjusting is only setting to a new level. And Patent Owner is going to
`present part of his deposition testimony where he wasn't given a copy of his
`report and he gave a statement that the setting limitation requires adjusting.
`But in other portions of his deposition testimony, he said that setting is
`different. Setting can be an initial setting or a setting to a new level,
`whereas adjusting is only setting to a new level.
`JUDGE PARVIS: So setting's broader than adjusting?
`MR. SHVODIAN: Yes. It encompasses adjusting but it's
`broader. So going on to the -- if Your Honors have no further questions on
`setting, I'll jump into the verify limitation.
`And on Slide 6, we've highlighted what we believe is a relevant
`portion of this limitation where it says that the verification is based at least
`in part on a device identity. And on Slide 7, we have a quote from the
`institution decision where Patent Owner has pointed to the Step 13 and
`Figure 2 of the '960 patent. And they say that is a verification step that
`corresponds to verify in the claim. But as Your Honors have noted in the
`institution decision, that Step 13, there is a check that takes place but there's
`no description of including device information in performing that check.
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`So going on to Slide 8, Your Honors further said that the test
`disclosed in the '960 patent where there is a determination of whether the
`device identity is already on record, is the only test that the specification
`describes as based at least in part on the unique device information. So
`that's the only test that corresponds to the full claim limitation -- full verified
`limitation.
`And on Slide 9, I've just highlighted the portion here. This is what
`Patent Owner points to. It's highlighted in the red box. But again, that
`says the license info is checked. It doesn't say that the device identity is
`checked.
`And going on to Slide 10, I've highlighted here in red, this is where
`the device identity is checked. And it's checked to see if it's already on
`record in the database. So that's the only test in the patent where there's a
`verification based at least in part on the device identity.
`And going back to the Board's decision. So the Board in the
`institution decision said that the verified limitation can encompass checking
`whether unique device information is reflected in the database as authorized
`for a license.
`So now going on to the DeMello reference and how that teaches the
`verified limitation, on Slide 12, I've just got the listing of that limitation
`from the claim.
`Now on Slide 13, this is part of DeMello that teaches that there is a
`unique device identification that's derived from the hardware components.
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`It's transmitted from the requesting device up to the server. So we do have
`the unique device identity disclosed in DeMello.
`And now on Slide 14, this is where DeMello discusses that the
`system determines at Step 164 if this is a new activation for the reader as
`opposed to a prior recovery. So that's where the DeMello system is
`checking to see if the device identity is on record. And it does this, as
`shown on Slide 15, because it stores in an activation database, a list of all the
`prior activations.
`JUDGE MCKONE: Now this is essentially verifying the Microsoft
`PASSPORT ID. Is that right?
`MR. SHVODIAN: Well it's using the PASSPORT ID to identify
`the user. And then it's using that PASSPORT ID to check to see which
`devices have been registered for that user or previously authorized for that
`user. So it uses both the PASSPORT ID and it uses the device identity to
`see if that device identity is already on record. So it uses --
`JUDGE MCKONE: In other words, does -- it indicates as to what
`license data associated with the digital product is. And I'm trying to get my
`arms around what you're pointing to here in DeMello as license data
`associated with the digital product.
`MR. SHVODIAN: We think both the unique ID and the
`PASSPORT ID are within the broad construction of license data -- the
`broadest reasonable interpretation. That is information that's used to
`determine whether or not the user is licensed and should be granted access.
`So that falls within the broad construction of license data.
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`JUDGE MCKONE: And did you propose a construction of
`license data associated with the digital product?
`MR. SHVODIAN: We did not think that term required
`construction. We thought it was broad enough and that these two pieces of
`information fall within that construction. Patent owner hasn't proposed a
`construction. They argued -- I believe they argued that PASSPORT ID is
`not license data but they haven't provided a construction for that term.
`JUDGE MCKONE: But the burden's going to fall on Petitioner in
`this case --
`MR. SHVODIAN: Yes, Your Honor.
`JUDGE MCKONE: All right.
`MR. SHVODIAN: So one of the ways, you know, the licensed
`data needs to be these two pieces of information because if a new device is
`used, a user has a new device, wants to access the digital product. That
`new device has never previously had access. It doesn't have other
`information. What it might have is the user logging in the user ID and the
`unique device ID. And that's what a new device can send off to the server
`and request permission.
`So that's what the claims require, is a new device to be able to
`request to access to the digital product. So the license data that can be sent
`has to encompass this information. We pointed to that as the only
`information that's disclosed as being transmitted. And Patent Owner has
`not identified what other license data might be sent from a new device or
`what that construction of that term might be. They just argue it's not a
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`PASSPORT ID. We believe that's incorrect. We think the term is broad
`and would encompass PASSPORT ID.
`JUDGE MCKONE: Okay.
`MR. SHVODIAN: So going on to Slide 16, this is where, I've
`highlighted in this box, this is where the test is performed or asked is this a
`new device? So it checks the system in DeMello. Would check whether
`or not the device identity that's received is already on record in the database.
`And this is Step 164 in Figure 8 of the DeMello patent.
`And going on to Slide 17, again, this goes back to Your Honors
`construction of the verified limitation when you say that the verified
`limitation can encompass checking whether unique device information is
`reflected in the databases authorized for a license. And that's precisely
`what DeMello discloses, falls squarely within Your Honors’ construction.
`So I don't have anything further on the verified limitation. If Your
`Honors have any other questions on that.
`And then just going quickly to the setting limitation where that's
`disclosed in DeMello. We have the claim limitation set forth on Slide 18.
`And on Slide 19, we have DeMello disclosing that, you know, if it is
`determined that this is a new activation at Step 164, then proceed to Step
`168. So that says that this occurs in response to the device identity not
`being on the record. And DeMello discloses that the number of devices
`that can be allowed access is limited. They can be limited both to a set
`number or there can be a rate at which these activations can be performed.
`So the number can be adjusted over time.
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`JUDGE MCKONE: Now do we have to accept your claim
`construction of this limitation in order to rule in your favor on Claim 1?
`MR. SHVODIAN: No, Your Honor. We believe that DeMello
`discloses both setting at an initial level and it discloses setting to new levels.
`So if Your Honors were to say that setting requires adjusting the limit,
`DeMello does disclose that.
`JUDGE MCKONE: So where does it show adjusting the limit in
`response to the device identity not being on the record?
`MR. SHVODIAN: Sure. So, Your Honor, if we go to Slide 23,
`this is Figure 8 of the DeMello patent. And you see the portion I have
`highlighted here. So Step 164 asks is this a new activation? And if it is
`not a new activation, then it bypasses and it just goes over to the right in that
`figure and reauthorizes the previous device. But if the device identity is
`not on record, then it proceeds down to the step where it determines what it
`is the limit that applies now and has the user activated that number of
`devices. So this is why --
`JUDGE MCKONE: Here it just says -- it just says has user
`activated over five readers in 90 days? Yet, how is that an adjustment of
`one limit to another?
`MR. SHVODIAN: Sure, Your Honor. So that is what's disclosed
`in this figure, I agree. But the specification also then says that if I back up
`to Slide 22, it says the limit on activations may also allow for additional
`activations as time passes. Example 1, addition activation for each 90-day
`period after the first 90 days, up to a limit or total of ten activations. So
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`down in that Step 168 is where the system would determine what time
`period it is and what the device limitation is at that point in time and then
`test to see whether -- how many devices have been activated already. So
`that --
`
`JUDGE MCKONE: So how do you connect this to the test, the
`device identity not being on the record? How do we connect that to the
`language that you just showed me about the limit changing over time?
`MR. SHVODIAN: Well I think -- Your Honor if you look at
`Figure 8 on Slide 23, that you don't reach this determination at all about the
`device limit and what is the limit and have you exceeded the limit. You
`don't get to that point unless the device identity is not on record. If it is on
`record, then you bypass this step. If it isn't on record, only then do you get
`down to this step where you look at what device limit should we apply now
`and has the user exceeded that. So the limit is set in response to the device
`not being on record.
`And this is similar to exactly what's disclosed in the patent order -- I
`would say the same as what's disclosed in the '960 patent where the '960
`patent goes through and it looks at, is the device on record. If not, then
`determine what time period you're in and apply the appropriate limit for that
`time period. It's not -- and as shown in -- well I have a slide later.
`Here, Your Honor, on Slide 24, this is what's disclosed in the '960
`patent. Where the '960 patent also uses -- in some of the dependent
`claims, there is a static schedule as using Patent Owners terminology of a
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`defined number of days comprised of six days and the upper limit
`compromises five authorized devices.
`And the other dependent claims, Claim 11, sets a limit for the next --
`for the second time period. It says that the second upper limit is seven
`devices up through 31 days. And Claim 15 says that the limit after 31 days
`is 11 devices. So those dependent claims set forth a static schedule in the
`'960 patent. And if the dependent claims cover this type of static schedule,
`then the independent claims have to cover that type of static schedule. And
`so that type of schedule that's disclosed in DeMello has to fall within the
`limitations of the independent claims such as Claim 1 of setting the limit in
`response to the device not being on record. Even though those limits are
`known in advance, you don't get down and analyze what limit to apply
`unless the device identity is not on record.
`So I was going to stop at that point and reserve the rest of my time
`but if Your Honors have further questions on these limitations or any of the
`other claims, I'd be happy to address them. Thank you.
`JUDGE WORMMEESTER: Thank you.
`MR. MANGRUM: So I don't know if I mentioned, I would like to
`reserve 15 minutes. So if I can dedicate 30 minutes to my initial remarks.
`JUDGE WORMMEESTER: Of course.
`MR. MANGRUM: There will be -- So I guess we will go to 129 or
`220. I believe there's an indication somewhere. I think the light turns
`yellow when I'm four minutes out.
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`JUDGE WORMMEESTER: I'm keeping time but I'll let you -- I'll
`give you a ten-minute warning if you'd like.
`MR. MANGRUM: That would be great. Thank you very much.
`Well I have some prepared remarks as Your Honors are aware and I
`have them corresponding to a slide. But I would initially like to address
`some things that weren't mentioned in what I just heard today. And one is
`you never heard the Petitioner mention the word "machine ID", which is
`interesting because their briefing focuses on the machine ID and identifying
`the machine ID in DeMello.
`So what is the machine ID and what's the difference, in DeMello,
`between the machine ID and the device ID and why is that significant? So
`I'm going to take you now to Slide 2 -- it's actually significant whether we
`look at the original claims or the amended claims.
`The device identity is defined in the claim language itself -- and
`now I'm on Slide 2, in the first highlighted portion -- as being generated by
`sampling physical parameters of the given device. And then what you have
`here in response to the device identity not being on the record.
`So in their briefing, they focused on machine ID. I believe there's a
`reason why today, they only referred to the device ID. And if -- I'm going
`to take Your Honors to -- if you go to --
`JUDGE MCKONE: Now to be clear on this -- are we talking about
`the motion to amend now or the Patent Owner response material here? I
`don't remember that the Patent Owner made any arguments about the
`machine ID versus anything else in the Patent Owner response.
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`MR. MANGRUM: We did and I have a slide dedicated to that.
`But it actually -- to answer Your Honor's question, it affects both. Because
`in both instances, the device identity is defined the same way as being
`generated based off sampling parameters of a given device.
`If you go again -- So now we're in DeMello at Exhibit 1003, Column
`13, the bottom of the column, Line 64, 65, and 66. You have -- Let me just
`read the whole sentence. The activation server carries out tasks associated
`with the activation process on the front end activation servers including
`receiving the hardware ID uploaded by the reader client, creating a unique
`machine ID based on the hardware ID -- and then it continues.
`Now when you look at DeMello's disclosure of what is it checking?
`It's not the hardware ID. It is instead a server-created machine ID. And
`that will have some significance in some of our future slides. So I want to
`draw attention to that particular claim language.
`There was also some questions asked about this relationship in the
`claim language that exists both in the original claims and in the amended
`claims of this in response to language. And incidentally, this language was
`emphasized during prosecution as a cause and effect relationship. And
`successfully argued as distinguishing over the prior art. We would also
`posit that the same reason that the claims was successfully distinguished
`over the art of the record, apply here to DeMello in that DeMello does not --
`JUDGE MCKONE: Can you show me where this cause and effect
`is described in the specification? I did not see that in, for example, Figure
`2 or the surrounding description of Figure 2.
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`MR. MANGRUM: There's -- well first of all, it's the original
`claims that have that cause and effect. Figure 3(a) also has the exact same
`claim language. So I would first point Your Honors to the flow chart that
`directly matches the claim language in the accompanying figures. That's --
`It's a direct mapping in correlation to what is claimed. So I guess that
`would be the simplest answer.
`JUDGE MCKONE: Right. My concern is Figure 2 and its
`description is about the same level of detail as we see in DeMello of how the
`actual limits are set.
`MR. MANGRUM: Well let me jump ahead there and answer that.
`JUDGE MCKONE: So I'm just wondering, if it's described in the
`specification, why it wouldn't also be described in DeMello.
`MR. MANGRUM: Well I would just defer to the specific claim
`language and this is what -- incidentally this is what the applicant did during
`prosecution. Applicant pointed to --
`JUDGE MCKONE: I'm sorry. Just to clarify, does that mean
`you're arguing that we need to rely on the original claim language and not
`the preferred embodiment described in the specification?
`MR. MANGRUM: Well no. I would just say that the claim
`language itself directs the relationship. It's explicit. But the setting is not
`described in the abstract. The setting is described in connection with -- in
`response to a determination of the device identity is not on record.
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`So the correlation between those two limitations is explicit. We
`don't have to go to the spec. The claim language itself requires a cause and
`effect relationship. That's all I'm saying.
`JUDGE MCKONE: Well I'll ask does the specification describe it?
`MR. MANGRUM: Yes. And I would again refer Your Honors to
`the description of 3(a) that perfectly match the claim language.
`JUDGE MCKONE: A description of what? I'm sorry.
`MR. MANGRUM: Figure 3(a), which is a one-to-one correlation
`of the claim language.
`JUDGE MCKONE: All right now -- how about, does your
`description of Figure 2 describe this aspect?
`MR. MANGRUM: I'm not -- let me pull up Figure 2. And I
`would also just answer the question by saying there's not a requirement.
`Regardless of whether or not there's a specific description in Figure 2, there's
`not a requirement that every embodiment be mapped on to the claim
`language. I would say one embodiment's enough, but.
`JUDGE MCKONE: But I do want an answer to my question.
`MR. MANGRUM: Yes, okay. Yes, I would say when you look
`at the description of Figures 13 -- sorry. So you have Step 13 and Step 15.
`We have a decision first. Is the license valid? Is the license info valid?
`That occurs in Step 13. And then separately in Step 15, an authorization
`database is consulted. And then separately, in Step 16, is the device
`identity on record? If it is, reauthorization is allowed. If not, then you
`proceed down into a separate chain of events according to that decision. So
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`there is a conditional statement that requires -- it's a condition precedent to
`proceed into for example the 26 in sequence.
`And so we would say yes, there is a specific description of a
`decision. And contingent upon that decision, other steps are performed.
`JUDGE MCKONE: Now that's almost -- that's very similar to what
`Petitioner points to in DeMello. How is that different than what's described
`in DeMello?
`MR. MANGRUM: So with reference to the original claim
`language, it would be based off an interpretation of whether or not the
`original claim language requires adjusting. So let me go back and if --
`JUDGE MCKONE: But my question was -- you just told me that
`this feature is described in Figure 2. And I -- what I asked and what
`Petitioner argued a moment ago is that what is shown, for example, in Figure
`8 of DeMello is very similar to what is in Figure 2. If Figure 2 describes
`this feature, why does Figure 8 of DeMello not describe this feature?
`MR. MANGRUM: Well to be clear, what I said was Figure 2
`describes a condition, which must be met for subsequent steps to be
`performed. And I'm only mapping that condition to a condition in the
`claim language, that says if the device identity is on record. But that was
`my only statement to be clear on that.
`JUDGE MCKONE: Okay.
`MR. MANGRUM: But --
`JUDGE MCKONE: Figure 2 did not show setting?
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`MR. MANGRUM: I'm not saying that. Exactly yes. I'm relying
`on Figure 3(a) and the claim language itself for the setting. But let me go to
`the setting and let me take us to Slide 3. Because the question with respect
`to the original claims and the distinguishing thing -- element that Uniloc has
`made with respect to the original claims is whether setting requires an
`adjustment. And so I have, in Slide 3, the issue posited as whether a
`system or method for adjusting requires any adjusting whatsoever.
`And the Petitioner, what you just heard, they said that it
`encompasses scenarios where there is no adjusting. And we would say
`that, that would then read out the language of the preamble which the Board
`has said is the expressed purpose of the claim language, if it can be
`accomplished without any adjusting whatsoever.
`There was another question earlier on as to the testimony of experts.
`What you heard Dan say was, and I'm paraphrasing, but essentially his
`expert testified that adjusting is only going from one level to another level.
`That's what adjusting means, according to his expert. And I asked him,
`actually my colleague asked him during the deposition --
`Let me read from the testimony that appears on Slide 3. This is --
`Can you tell me -- Question: Can you tell me if there's any adjusting
`occurring in Claim 1 of -- this is the original claim. The second, in
`response to limitation, shows an adjustment and what is being adjusted in
`that limitation, the allowed copy count? And can you tell me how the
`allowed copy count is being adjusted? It's being set to a first upper limit.
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`Now again if adjusting -- according to Petitioner's expert means
`going from one level to another. Incidentally in litigation, Petitioner made
`the same argument that, that's what adjusting means. You have to go from
`one level to another. It's not an initial setting. It has to be going from an
`existing level to a different level. If that's correct and if the claim language
`in its preamble introduces the limitations as being directed to an adjusting,
`then to read Claim 1 as encompassing something that all parties agree is not
`an adjustment, would be an unreasonably broad reading of the claim.
`So what we're saying is, regardless whether the specification shows
`different ways in which limitations -- or sorry, the limit could be initially set,
`what Claim 1 is directed to is an adjustment. Adjusting the limit. And
`when you go to the first upper limit, that is an adjustment.
`And incidentally, one of our arguments we presented in our briefing
`was that when you look at the allowed copy count, that term is introduced in
`the preamble. And it's defined in the preamble as at least 1. So you have
`a definition of what the allowed copy count is. It's not empty. It's not a
`zero. It has a value. And then when you go to the setting limitations --
`the original setting limitations, it changes from at least one to what is called
`out as a first upper limit. So we would say that, that setting -- and it's use
`of the allowed copy count, which has antecedent basis, confirms to a
`practitioner that what you have here is an adjustment. You're going from
`whatever this one value was to now
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