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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
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`v.
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`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
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`Case IPR2018-00340 (Patent 7,260,538)
`Case IPR2018-00341 (Patent 7,260,538)
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`___________
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`Record of Oral Hearing
`Held: January 28, 2019
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`Before JAMESON LEE, ROBERT KINDER, and ALEX S. YAP,
`Administrative Patent Judges.
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`Case IPR2018-00340 (Patent 7,260,538)
`Case IPR2018-00341 (Patent 7,260,538)
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`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
`JAMES L. DAY, ESQ.
`DANIEL CALLOWAY, ESQ.
`Farella, Braun & Martel
`Russ Building
`235 Montgomery Street, 17th Floor
`San Francisco, California 94104
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`
`ON BEHALF OF PATENT OWNER:
`JACOB A. SCHROEDER, ESQ.
`JOSH GOLDBERG, ESQ.
`DANIEL F. KLODOWSKI, ESQ.
`Stanford Research Park
`3300 Hillview Avenue, 2nd Floor
`Palo Alto, California 94304-1203
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`The above-entitled matter came on for hearing on Monday,
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`January 28, 2019, commencing at 10:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2018-00340 (Patent 7,260,538)
`Case IPR2018-00341 (Patent 7,260,538)
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`P R O C E E D I N G S
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`JUDGE KINDER: Good morning. Please be seated. Good
`morning, everyone. I'm Judge Kinder, and with me today in Alexandria is
`Judge Jameson Lee, and remote today will be judge Alex Yap from our
`remote location out in California. And today's this morning's case is
`Comcast Cable Communications, LLC versus Promptu Systems
`Corporation, and the two IPRs we're going to be going through this morning,
`IPR2018-00340 and IPR2018-00341. And both of those IPRs involve U.S.
`Patent Number 7,260,538.
`If we could have counsel make an appear. If we have Petitioner
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`first.
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`MR. DAY: Good morning, Your Honors, James Day with Farella,
`Braun & Martel, for Petitioner Comcast. I am joined by my partner, Daniel
`Callaway.
`JUDGE KINDER: Mr. Day, who will be arguing for you today?
`MR. DAY: I will, Your Honor.
`JUDGE KINDER: Okay. And Patent Owner, please?
`MR. SCHROEDER: Good morning, Your Honors. My name is
`Jacob Schroeder from Finnegan Henderson, and with me is lead counsel,
`Josh Goldberg, and at counsel table with me is Dan Klodowski. And Dan
`Klodowski and I will split the argument this morning.
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`JUDGE: All right. Thank you. So this morning's arguments, as I
`mentioned, are for the 340 and 341 IPRs. Each party will have a total of 60
`minutes of argument time, and I appreciate the parties pretty much coming
`to a joint agreement on that. The parties may allocate their argument time at
`their discretion over each of the two cases, not to exceed 60 minutes in total
`for each party.
`The Petitioner will go first and present arguments, then the Patent
`Owner will have the opportunity to rebut those arguments. The Petitioner
`may use any time it has reserved for rebuttal, and then we also now allow
`Patent Owner to present a brief sur-rebuttal time. One point on those, the
`rebuttal and sur-rebuttal should not introduce anything new. It should be
`specifically responding to those things that were brought up. If we think
`something is new, we may stop you, okay? So make sure it's very tight on
`that.
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`And I think that is it. We didn't have any objections on
`demonstratives as far as I recall, so I think we will be ready to begin, but
`before we do, I want to get your time for each party.
`So, Petitioner, how much time would you like to reserve for your
`rebuttal?
`MR. DAY: I'll reserve five minutes, Your Honor.
`JUDGE KINDER: So just to make sure I've got the math, you're
`going 55 minutes?
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`MR. DAY: That's what I'm anticipating. I would like to reserve
`whatever I don't use of my 60 minutes, but I anticipate about five.
`JUDGE KINDER: All right. So I will set the initial timer for 55
`minutes and then you will have five left, okay?
`MR. DAY: Okay.
`JUDGE KINDER: Patent Owner, do you know how long you
`want to reserve for your sur-rebuttal?
`MR. SCHROEDER: I think about 10 minutes, Your Honor, is
`what we're anticipating.
`JUDGE KINDER: Okay. Again, nothing new, so it would just be
`direct response.
`MR. SCHROEDER: Yes, Your Honor.
`JUDGE KINDER: Thank you. All right, I think we are ready.
`Mr. Day, if you will.
`MR. DAY: Great. Thank you, Your Honor.
`JUDGE KINDER: Before we -- does either party have
`demonstratives they wanted to hand out? I see some here on the table. And
`I hope Judge Yap has electronic copies that you all have provided.
`JUDGE YAP: I do.
`JUDGE KINDER: Okay. One last instruction, I think both of you
`have probably had proceedings before us before. Especially for Judge Yap's
`benefit, any time you refer to a demonstrative or slide number, please start
`your sentence with the slide number that you're on so he's able to see it. He
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`won't be able to follow here as well what you're showing. So just give a
`slight pause after the slide number, give him a second to look to it, and that
`makes our life easier. Plus it also makes the record cleaner when we go
`back to look at all the evidence when we know which slide you're referring
`to.
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`MR. DAY: Very good, Your Honor.
`JUDGE: Okay, thank you. Whenever you're ready.
`MR. DAY: Good morning, Your Honors. We have a lot to talk
`about today, so I'm just going to dive in this morning. As you noted, we're
`talking about the '538 patent. The '538 patent discloses and claims a
`voice-controlled television system. Basically what you've got is a
`remote-controlled television, remote-controlled microphone. You can speak
`into that microphone. Your spoken command is sent to a set-top box.
`I'm sorry, I started off by not doing what you just told me to do,
`Your Honor. We're looking at slide number 2, which is the abstract.
`And back to the story, the set-top box can then send that voice
`command up to the cable head-end. At the head-end, you're going to have
`some voice processing that's done to convert that spoken command into the
`equivalent command that the set-top box can understand, sent back to the
`set-top box; the set-top box does what it's told to do. That's basically what
`this patent talks about and claims.
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`And we've presented a couple of different grounds of obviousness,
`showing the claims being challenged are obvious in light of first Julia, and
`then second in light of Murdock.
`And so I'm going to start with Julia this morning. And beginning
`on slide 5, you see on the left-hand side the claim language of Claim 1. And
`what I'd like to do is talk a bit about Julia and talk about how it discloses
`each of the claims or elements of Claim 1.
`And the first few are not disputed, so I'll move a little bit quickly.
`Julia talks about using spoken natural language requests in a television
`system to find and deliver content to users. So it's voice-controlled TV.
`That's what Julia talked about. And here, we can see on slide 6 in the lower
`right-hand corner is Figure 1A from Julia, and Julia tells us that this is the
`invention, it has these fundamental pieces, you've got a person talking into a
`remote control 102 that's user device 102. It speaks with the communication
`box 104, that's a set-top box. The signal gets sent over a network cable --
`sorry, Julia tells us that can be a cable -- coaxial cable television network, to
`a remote server 108 that performs speech recognition processing.
`So the idea is the same that we're talking about in the '538 patent.
`Julia refers to this as server-side processing of a request at the remote server,
`which we map to the head-end.
`As I just mentioned, if you look at slide 7, Julia explicitly states
`that this invention can be implemented on a two-way communications
`network like a cable -- coaxial cable television network.
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`In the preamble, the first few elements are not disputed. Julia says
`that you can have a remote control via the microphone, the preamble is the
`first few elements. The television remote control, so that's the television
`remote control sends the spoken request to communications box 104, that's
`the cable set-top box. No dispute with that.
`Then we get down to the next element, this is addressed on slide
`10, and it says that the set-top box sends the spoken signal to the head-end
`unit, remotely located head-end unit. Julia says, this could be a cable
`network, you're going to send the signal over the cable network to a remote
`server 108. Remote server 108 maps to a remotely located head-end unit.
`Now, I want to stop here because this is where we find a dispute.
`The Patent Owner says, look, just because Julia discloses a remote server,
`that doesn't make it a head-end unit. But first I want to observe that's sort of
`an odd argument, because in the District Court proceeding, Patent Owner
`said -- defined head-end unit to be a component of a cable system that's
`remote from the television controller or receiver. So it's a component that's
`remote from the set-top box.
`JUDGE KINDER: Have any of those arguments at the District
`Court been adopted by the District Court or it was just initial contentions?
`MR. DAY: Those were -- they have not been adopted, Your
`Honor. That case was stayed before the judge issued a final order on claim
`construction. So my point is not that we're bound by that construction, but it
`is an odd argument for the Patent Owner to show up here and say, well, Julia
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`doesn't disclose a head-end unit because just being remote is not enough,
`when the position -- the definition they applied in the District Court, the
`definition they applied to Comcast for infringement is that being remote is
`enough.
`We didn't have that proposed construction at the time we filed our
`petition, so we didn't apply it. We read head-end unit to be a unit at the
`head-end. And so relying on Julia and supporting testimony from our expert
`witness, Mr. Wechselberger, we showed that Julia discloses to a person of
`ordinary skill in the art that remote server 108 would be located at the
`head-end. It's a head-end unit.
`JUDGE LEE: Can I ask you something? I'm a little confused,
`because you seem to indicate had you been given that position of the Patent
`Owner, perhaps you would have applied that construction in the petition. Is
`that what you were suggesting?
`MR. DAY: That's not what I'm suggesting, Your Honor. I think
`that Julia clearly discloses a head-end unit, as you understand it, as a unit of
`the head-end. We wouldn't need it to do that. I think that you could
`shortcircuit this debate by saying that the Patent Owner's construction in the
`District Court -- I can't be narrower here. I mean, that just sort of defeats the
`argument that they are making, but no, I'm not presenting a different
`argument here than we presented in our brief.
`JUDGE LEE: So really it doesn't matter, so why are you telling us
`all of this? I mean, it is what it is, regardless of what they said before. I'm
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`trying to wrap my head around what exactly you're saying. A lot of times
`petitioners say, look, this is not what they said before, then, why does it all
`matter? You're the Petitioner, you read the argue -- read the claims. It is
`what you say it is, unless they dispute. So why do I really care that they said
`that before or they didn't say that before?
`MR. DAY: Because they do dispute a remote server computer is
`the head-end unit. All I'm suggesting, Your Honor, is that's an inconsistent
`position that they're taking. I'm not changing our position from the petition,
`from a year ago, and that's what I want to walk through here is just telling
`you why we believe and why we've shown -- how we've shown that the
`remotely located head-end unit is the server computer.
`JUDGE LEE: So the fact that you think it's odd really doesn't lead
`us anywhere.
`MR. DAY: I think when you evaluate their arguments, and you
`weigh the evidence according to their arguments, it's important to note that
`they've taken an inconsistent position. That's the point, Your Honor.
`JUDGE LEE: And what are we supposed to do with that? So
`what if they're inconsistent? They're not precluded from being inconsistent,
`so what are you saying we should do? We're going to say, well, they're
`inconsistent, so we are less persuaded by their argument?
`MR. DAY: Yes.
`JUDGE LEE: Okay.
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`MR. DAY: Yes. So, as I said, the way that we mapped Julia to the
`challenged claims is to say essentially a head-end unit is a unit at the
`head-end. Mr. Wechselberger, our expert witness, explained based on
`disclosures in Julia why a person of ordinary skill in the art would
`understand that.
`I want to move ahead. Part of that was, if you look at slide 14,
`simply the fundamentals of how a cable network is put together. A cable
`network has a set-top box, lots of set-top boxes, it's got cable that creates a
`network, it's fiber and cable between those set-top boxes and a head-end.
`The head-end delivers content to the set-top boxes.
`In Mr. Wechselberger's opening declaration, he provided a bunch
`of background information citing prior art documents to show that he wasn't
`just making it up, and based on his 40 years of experience in two-way
`interactive communications, that industry, including companies that made
`set-top boxes for cable networks, he said, look, this is the way cable
`networks are put together, this is the way a person of ordinary skill in the art
`would understand Julia.
`In his reply declaration, he went farther and sort of made very
`explicit that those three fundamental pieces were how a person of ordinary
`skill in the art would understand Julia. And it would understand Julia as
`disclosing, look, if this is going to be in a cable network, you put the remote
`server at the head-end.
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`That's what he said. And there, Julia tells a person of ordinary skill
`in the art that the voice processing is performed at a remote server which is
`the head-end unit of the device. That's the testimony.
`Now, I want to contrast that, and we should be very clear on the
`contrary expert testimony, the one you're getting from the Patent Owner.
`Now, Mr. Tinsman disagrees with what Mr. Wechselberger has said, but his
`disagreement is not based on some construction of the term "head-end unit."
`He didn't try to construe the term, and he didn't try to -- what I'm pointing to
`now is slide 17, some testimony where he confirmed, no, I didn't try to
`construe head-end unit.
`On slide 18, there is some testimony where he says, I asked him, is
`it your opinion that neither Julia nor Murdock teaches a head-end unit? He
`says, essentially, that wasn't my job, I wasn't trying to figure out if Julia
`discloses it, I was just analyzing your arguments.
`Again on slide 19, there is more testimony where he confirms, I
`wasn't trying to either understand what the claim terms mean, or what Julia
`discloses, I was just considering the arguments that you've made and
`whether I'm convinced. Now, I'm citing this not to suggest that we shift the
`burden to the Patent Owner to prove that the patents aren't obvious. That's
`not the point. The point here is, we have a burden of proof, and in order to
`meet our burden of proof, we've given a lot of evidence, including expert
`activity that's based on a detailed analysis of the claims in the patent, the
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`challenged claims of the '538 patent, and the prior art, and how the prior art
`maps to those challenged claims.
`And when you weigh the evidence, you should be weighing that
`detailed analysis against expert testimony from someone who didn't try to
`understand what the claims mean and didn't look to see if the prior art
`discloses what we say it does. And I think when you do that weighing,
`you'll see it clearly established that this element, turning to slide 20, the
`element has been proven.
`Next I'll move to something in dispute, the head-end unit performs
`a speech recognition processing. Here, the remote server performs speech
`recognition processing. Which takes us to slide 22, and the last few
`elements raise one issue, and that issue is around this notion of the set-top
`box compatible command function.
`Now, the patent uses that phrase basically to mean what you would
`think. It's a function that tells the set-top box what to do. And, certainly,
`Julia discloses that you can speak into your remote control on a perceived
`particular TV. The program will want to see a particular movie, and it
`will -- the system will cause the set-top box to show you the video or the
`channel or whatever content or whatever it was that you asked for.
`What Julia says is, the set-top box -- I'm sorry, the head-end unit
`will perform the speech recognition processing, and I'm looking at slide 23,
`and it will send the video content, it will send what you've requested
`basically back to the set-top box for receiving and decoding and formatting
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`the desired electronic information. So the TV show, you send the movie
`back, the set-top box does what it needs to do to show you that content.
`That's the whole point of Julia. Now, our expert --
`JUDGE KINDER: Is it explicit that the -- that there's deriving the
`set-top box compatible command function, or are you saying that would be
`essentially implicit, that it's always going to do it?
`MR. DAY: Well, it doesn't use the phrase "command function." It
`does say that you convert the spoken command at the head-end unit. So it
`has to be converted. That's the point of the speech recognition processing,
`and then you send the -- you find the requested content and you send it back
`to the set-top box for formatting and decoding. We would say that
`formatting and decoding that Julia discloses, that those are -- those require
`command functions that the set-top box can perform.
`JUDGE KINDER: So your position is that they would at least
`require some instruction to the set-top box to perform the function?
`MR. DAY: Yes. What we're saying is, when you tell your TV, I
`want to see Unforgiven, and that's interpreted at the head-end, but the
`interpreting that gets done is taking the phrase, "I want to see Unforgiven,"
`and turning it into the commands that direct, cause, instruct, the set-top box
`to display that movie.
`JUDGE KINDER: You're pointing to examples, but is there
`anything explicit in the -- in Julia itself that explains that?
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`MR. DAY: That -- yes. Julia says you request content, and here
`on slide 23, it says that content is sent back so that the set-top box can
`decode and format what you've sent back to be shown. Right? That's the
`disclosure. Certainly we rely on our expert to explain how a person of
`ordinary skill in the art would understand what that's -- what that means.
`JUDGE KINDER: Okay, I understand your position.
`JUDGE LEE: What's the counterargument? They're not saying
`that the TV doesn't do what the user asked it to do. So where is the dispute?
`MR. DAY: Well, counterargument is that the TV -- that the
`set-top box doesn't necessarily -- you could design a system where the
`set-top box doesn't need to perform any command, where essentially it's just
`a screen that shows you what's at the head-end. That's all that Julia is talking
`about. This is not an anticipation case. We don't have to show that
`inherently you would have to in every case use something called a command
`function.
`What we're talking about is if a person of ordinary skill in the art at
`the time read Julia, what would they understand? And what they would
`understand is, you say, "I want to see Unforgiven," that would be interpreted
`at the head-end and converted into commands that cause the set-top box to
`show Unforgiven.
`JUDGE LEE: Well, that's a logical reading, but when would it not
`be the case? I mean, where is the exception?
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`MR. DAY: I don't know, Your Honor. That's the other side's
`position, they don't provide an exception, they just -- their assertion is we
`haven't shown that this would have to be done in every case. The argument
`is we haven't shown that it's inherent, but that's -- again, this is not an
`anticipation case, it's an obviousness case. I don't know the use case they're
`talking about. And I'll --
`JUDGE YAP: But you're relying on your expert to interpret Julia
`to be sending the command over to the set-top box, right?
`MR. DAY: Well, I think that's right, Your Honor. Now, Julia
`certainly says that the content is transmitted from the remote server back to
`the set-top box for decoding and formatting so the user can watch the show.
`So that's explicit in Julia, that there's this conversion to something that gets
`sent to the set-top box. Our expert is telling you that a person of ordinary
`skill in the art reads that, they understand that the set-top box is not going to
`do anything unless it's told to do it. And the thing telling it to do it is the
`head-end.
`So yes, it's a long way of answering yes, we're relying on our
`expert to explain how a person of ordinary skill in the art would read and
`understand Julia, how they would interpret Julia.
`The point is, this is not gap filling. What our expert has done, if
`you look at slide 24, we've cited a few of the paragraphs from his opening
`declaration where he has an extensive discussion really of here's how Julia
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`works, and here's how a person of ordinary skill in the art would understand
`Julia, and based on that, Julia is disclosing the claimed command functions.
`JUDGE LEE: Let me be clear. So you are not relying on the
`theory of inherency at all, it's just a POSITA reading Julia would come away
`with that understanding of what Julia is disclosing?
`MR. DAY: That's right, Your Honor. That's correct.
`I'd like to note, before I move on, that if we look at the Patent
`Owner's papers, that they interpret command function in essentially the same
`way we do, that it's just you send a command, the head-end tells the set-top
`box what to do. Let me go through these examples and then I'll come back
`to that in a moment.
`The first example is what we just talked about, decoding and
`formatting prior command functions. Another example that
`Mr. Wechselberger pointed out is, Julia talks repeatedly about on-demand
`video, video-on-demand. Mr. Wechselberger firmly says, in the time frame,
`a person of ordinary skill in the art would have known that that requires
`authorization and security. That signal for video on-demand would be
`scrambled.
`That was just the way cable systems operated at the time, and so if
`you ask for Unforgiven, in a video on-demand system, which Julia discloses,
`and it's sent to your set-top box, then it has to tell the set-top box, this person
`is authorized, descramble this and show it to them. That's what we cite here
`on slide 25 is some of Mr. Wechselberger's discussion around that example.
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`But finally, we want to get to this third example that he goes
`through, and that's an interactive list of movies. So Julia says, this is explicit
`in Julia, a user could say, I can't remember the movie, show me all the
`movies starring and directed by Clint Eastwood. And if you look at slide 27,
`it then says that the system would put up a list of those movies, the user
`could use their remote control to either click on one or could say, "let's see
`Unforgiven."
`This is an explicit example of the head-end interpreting these
`requests and then telling the set-top box, okay, first put up a list of movies, a
`list of on-demand movies, and then when the user picks one, the command
`goes up to the head-end, and the head-end sends back the instructions to the
`set-top box saying, okay, now run Unforgiven, because that's what they just
`picked.
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`Those are command functions. Mr. Wechselberger went through
`this example and explained this in detail, a person of ordinary skill in the art
`reading Julia would know that these are command functions, set-top box
`compatible command functions that are causing the set-top box first to put
`up an interactive menu, and then when the user makes a selection, to send
`that selection and display it on the television.
`Here on slide 28, we cite to some of that testimony from
`Mr. Wechselberger. And the point I alluded to a moment ago that I want to
`get back to is, if you look at the way the Patent Owner maps its own
`construct to these challenged claims, the Patent Owner says, yeah, command
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`functions, that's like saying I want to see on-demand movies and you say,
`on-demand, and the screen brings up a list of movies.
`JUDGE KINDER: When you say maps, are you talking about the
`secondary considerations?
`MR. DAY: Yes, Your Honor. So in order to attempt to establish a
`nexus, Patent Owner cites to a paragraph in Mr. Tinsman's declaration that
`has a 45-page claim chart. And in that claim chart, when the Patent Owner
`maps these very same limitations of Claim 1 that we've been talking about,
`and they're here on slide 28, they point to things like say on demand and
`you'll get a list of on-demand movies.
`That's exactly the example we see in Julia of --
`JUDGE YAP: But Patent Owner -- sorry about that. But Patent
`Owner also cites to a document showing that the system that they are
`referring to, AgileTV, actually notes that the command was going to be sent,
`versus here you're allowing an expert to say that that command would be
`sent.
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`MR. DAY: That's true, Your Honor, but the question is not about
`labels and whether you call it a command function or not. It's a fair point,
`though, that we are relaying -- relying on our expert to explain what a person
`of ordinary skill in the art would know. I, frankly, think the fact that in the
`system they say they're sending command functions, just validates what
`we're saying. If you are going to bring up an interactive menu, you send
`commands from the head-end to the set-top box to bring up that menu. It's
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`those words may not be in Julia, but a person of ordinary skill in the art
`looking at Julia would know, that's the way this is going to work. That's
`how a person of ordinary skill in the art would interpret Julia.
`And again, I think it's important to look at the contrary evidence.
`Mr. Tinsman did not try to construe the terms of this patent. He did not try
`to understand -- so this is not based -- their argument is not based on some
`narrow reading of what a command function is. Mr. Tinsman didn't say,
`yeah, I analyzed it, actually it's much narrower than the Patent Owner says.
`It did not try to construe the term. When I asked him, wait a minute, doesn't
`the prior art disclose "go to ESPN," isn't that going to generate a command
`function? He said, well, I don't know, I didn't try to figure that out.
`JUDGE KINDER: Let me ask a --
`MR. DAY: I have not done that kind of work.
`JUDGE KINDER: Let me ask a more general question. The
`Petitioner under our regulations has an affirmative duty to construe the
`claims and apply it to the prior art. What duty does the Patent Owner have
`to do the same, to construe the claims?
`MR. DAY: Well, Your Honor, I don't know that there's a rule
`creating a duty. What I would say is that if you want to try to distinguish the
`prior art and you want to win, you ought to say that, well, in this case, this
`claim term actually means something and is different from what the
`Petitioner is saying.
`Now, I do know --
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`JUDGE KINDER: So you're going to the weight of his evidence
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`that --
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`MR. DAY: We're arguing about the weight. I do know that if a
`Patent Owner thinks that a term has some special meaning, what they're
`supposed to do, either prove that up or amend the claims, and neither of
`those things happened here. They haven't proven up any sort of narrow,
`specific construction, and they haven't -- obviously they haven't tried to
`amend the claims.
`Now, again, we didn't have their evidence that they have used to
`try to prove their secondary considerations evidence. When they do that,
`they're essentially saying a command function is the equivalent of issuing a
`spoken command. You tell the set-top box what to do, verbally, the
`head-end interprets that, it sends the command function, the equivalent
`command functions back, but that's how broadly they're reading it for their
`own side of the case, and if you read command functions that broadly,
`Mr. Wechselberger's examples are much more narrow than that. Clearly we
`would win that.
`And again, before I leave, Mr. Tinsman's evidence, it, again, goes
`to the weight. On one side you've got a lot of evidence saying this is how a
`person of ordinary skill in the art would understand Julia. There is no
`contrary evidence saying, no, no, no, a person of ordinary skill in the art
`would have looked at Julia and thought something else. That wasn't his job,
`that's not what he did.
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