Paper 47
`
`Trials@uspto.gov
` Entered: October 20, 2020
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00941
`Patent 8,296,351 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Thursday, September 3, 2020
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
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`Trials@uspto.gov
` Entered: October 20, 2020
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00941
`Patent 8,296,351 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: Thursday, September 3, 2020
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
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`IPR2019-00941
`Patent 8,296,351 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK WEINSTEIN, ESQ.
`HEIDI KEEFE, ESQ.
`COOLEY LLP
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`650.843.5001
`mweinstein@cooley.com
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`NIKKI K. VO, ESQ.
`CHRISTEN M. R. DUBOIS, ESQ.
`FACEBOOK, INC.
`1 Hacker Way
`Menlo Park, CA 94025
`650.391.6527
`nvo@fb.com
`
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`IPR2019-00941
`Patent 8,296,351 B2
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JAMES M. GLASS, ESQ.
`JOHN T. MCKEE, ESQ.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Ave, 22nd Floor
`New York, NY 10010
`212.849.7142
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`OGNJEN ZIVOJNOVIC, ESQ.
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, California 94111
`415.875.6600
`ogizivojnovic@quinnemanuel.com
`
`ALSO PRESENT:
`ALEXANDER TSEHAY
`CASSANDRA GARCIA
`JOHN DILL
`JOHN LEQUANG
`
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`The above-entitled matter came on for hearing on Thursday,
`September 3, 2020, commencing at 11:00 a.m. ET, by video/by
`telephone.
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`IPR2019-00941
`Patent 8,296,351 B2
`
` (On the record at 11:03a ET.)
`
` JUDGE KINDER: Good morning, everyone.
` This is Judge Robert Kinder, and with me on the
` panel today are Judges Miriam Quinn and Gregg
` Anderson.
` The case caption for today is Facebook,
` Instagram, and WhatsApp as Petitioner versus
` BlackBerry Limited, Patent Owner. And the IPR
` number we’re going to be hearing first today is
` IPR2019-00941 involving Patent Number 8,296,351.
` If we could do a quick rollcall for --
` we’ll just find out who is representing each
` party, and we’ll start with Petitioner’s counsel.
` MR. WEINSTEIN: Thank you, Your Honor.
` This is Mark Weinstein from Cooley LLP
` for petitioner. And with me on the line is Heidi
` Keefe, who is lead counsel. And for the record,
` also Nikki Vo, N-I-K-K-I V-O; and Christen
` Dubois -- that’s D-U-B-O-I-S -- from inhouse
` Facebook. They’re also on the line with me today.
` JUDGE KINDER: All right.
` Mr. Weinstein, who is going to be presenting this
` case for your side?
` MR. WEINSTEIN: I am, Your Honor.
` JUDGE KINDER: Okay. Thank you.
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`IPR2019-00941
`Patent 8,296,351 B2
` And for patent owner, BlackBerry, can
` you please make an appearance?
` MR. GLASS: Good morning, Your Honor.
` This is Jim Glass for Patent Owner. I will be
` presenting. I’m lead counsel for Patent Owner.
` With me on the phone is my colleague and
` backup counsel, Ogi Zivojnovic and John McKee.
` JUDGE KINDER: All right, Mr. Glass,
` thank you very much.
` In case I forget at the end of the oral
` hearing today, after the case is submitted, I’d
` ask lead counsel for each side to stay on with our
` court reporter, Ms. Harrison, and answer any
` questions she might have about the transcript
` after -- after we close the case. Thank you.
` So today’s hearing, we’re going to start
` out with Petitioner, and each side will have
` 45 minutes to present their case. Petitioner, you
` can reserve a portion of your 45 minutes for
` rebuttal.
` So at this time, Mr. Weinstein, how much
` time would you like to reserve for rebuttal?
` MR. WEINSTEIN: 15 minutes, if that’s
` okay, Your Honor.
` JUDGE KINDER: That is fine. Thank you.
` And then after your case in chief,
` Patent Owner will present their case; and after
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`IPR2019-00941
`Patent 8,296,351 B2
` your rebuttal, we allow the patent owner to
` respond with a sur-rebuttal, if you will. And
` that’s optional.
` But, Mr. Glass, would you like to
` reserve some time for that?
` MR. GLASS: Yes. I’ll optimistically
` reserve 15 minutes as well.
` JUDGE KINDER: All right. So I will
` keep the time, but just in case, I would ask that
` each of you also keep your time and take a look at
` it; and that way, I don’t have to interrupt you
` with how much time is remaining. I’ll try to give
` you maybe about a 5-minute warning; but, again,
` that is requiring me to make sure I don’t forget.
` I hate to set an alarm to interrupt your hearing.
` So I’ll try to remind you when there’s 5 minutes,
` but also please keep your own time.
` One key thing today is for each speaker
` to identify themselves when they start speaking.
` It’s a little bit -- the speaker is supposed to
` appear up on the screen, but it seems like a
` little bit of lag.
` And another important thing is to please
` keep muted -- and us judges will do the same --
` and only unmute yourself when you’re speaking.
` So, hopefully, I’ll remember to unmute myself if
` we have any questions as judges, or else we’ll be
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`IPR2019-00941
`Patent 8,296,351 B2
` talking to ourselves, which sometimes happens.
` Also, when you’re presenting a
` demonstrative or talking about an exhibit, we
` would ask that you give the demonstrative number,
` the exhibit number, or the page number in the
` brief. And if you could, give us -- I know your
` time is short, but give us just a quick few
` seconds to find that demonstrative or find the
` page. We certainly like to follow along as you’re
` discussing it, but it takes a couple seconds for
` us to get to that point.
` All right. Then if you have any
` problems today -- hopefully, there will be none,
` but if there are any problems, just try to let our
` administrative staff know. I don’t know if
` they’ll be able to see you, for example, unless --
` unless you’re talking; but if you lose connection
` or otherwise have problems, you can call in or
` email us right away and let us know. We’ll
` also -- if we notice something, we’ll stop and get
` it corrected. We have a great administrative
` staff, so I hope everything can go smooth.
` And with that, I believe I have all
` the -- all the initial setup out of the way, and I
` think we can proceed, if -- Mr. Weinstein, if
` you’re ready to go, I’ll call the petitioner.
` MR. WEINSTEIN: Thank you, Your Honor.
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`IPR2019-00941
`Patent 8,296,351 B2
` We just had one technical question. I’m hearing
` you just fine, but I’m not actually receiving
` video from Your Honors, so maybe you guys are only
` on audio. But the only person I see is myself and
` Mr. Glass. So are guys only on audio?
` JUDGE KINDER: That, I do not know. I
` thought we were supposed to pop up. I thought the
` speaker was supposed to pop up onto the screen.
` So I’m booking that conversation from our
` administrative staff to see if --
` MR. WEINSTEIN: Actually, I apologize,
` Your Honor. That was my fault. I actually see
` you now. That’s my fault.
` JUDGE KINDER: Okay. All right.
` MR. GLASS: Actually, before we start, I
` have the same issue as Mark is. I do not -- I
` only see myself and Mark.
` JUDGE KINDER: All right.
` MR. WEINSTEIN: There is a control,
` Counsel, to actually change the view, and that’s
` how I was able to get to see Judge Kinder.
` MR. TSEHAY: On the top right, please
` click on the “Active Speaker” icon.
` MR. GLASS: Perfect. Okay. Thank you.
` JUDGE KINDER: Not a problem. I think
` we’ve all had that issue with our setup. I think
` we’re doing it a little bit different than we had
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`IPR2019-00941
`Patent 8,296,351 B2
` before. So not an issue. Thank you both for
` letting us know that, and I think we are now ready
` to go.
` Mr. Weinstein, if you are ready, you may
` proceed when you’re ready.
` MR. WEINSTEIN: Thank you, Your Honor.
` Thank you, Your Honor.
` During our presentation, we’re going to
` be referring to the demonstrative exhibit that we
` filed, and that’s Exhibit 1043.
` And just so the record is clear, neither
` party has objected to either party’s demonstrative
` exhibits, so there’s no objections that I’m aware
` of that Your Honor has to deal with.
` With respect to Exhibit 1043, I want to
` just jump to slide 3 of the demonstrative. That
` lists the instituted grounds that Your Honors
` instituted. And really, there’s only two sort of
` sets of grounds. Grounds 3 and 4 add the De Boor
` reference, which isn’t particularly -- not a lot
` of arguments are presented on that.
` I will note, just for the record, on
` slide 3, the listing of claims is the listing that
` was instituted by Your Honors in the institution
` decision. I will note that after institution, the
` patent owner disclaimed statutorily two of the
` claims that were instituted. That’s Exhibit 2006.
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`IPR2019-00941
`Patent 8,296,351 B2
` That’s claims 9 and 15. So even though we listed
` them in the slides being faithful to the
` institution decision, Your Honors will not need to
` issue any decisions on claims 9 or 15 because they
` have been statutorily disclaimed.
` If we go, Your Honors, to slide 4,
` there’s basically a very brief summary of the
` issues. And there are different issues for
` different claims, and there’s really only one
` issue and argument that Patent Owner makes that,
` so to speak, cuts across all of the asserted
` instituted grounds, and that’s the proxy content
` server argument. And I’m just going to jump right
` into that argument, because I think we can -- once
` we deal with that argument, some of the issues can
` fall out.
` I’m going to move now to slide 6 of the
` demonstrative. And that shows the parties’
` competing constructions on proxy content server.
` And as you can see, the patent owner has
` proposed that the term “proxy content server” be
` construed as “a server that aggregates at least
` content information from an information source for
` distribution for a device.”
` The only part of this construction
` that’s at all controversial is this requirement
` that the server must aggregate at least content
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`IPR2019-00941
`Patent 8,296,351 B2
` information. That’s important because the parties
` agreed in the District Court, and it’s actually
` the District Court rule, that content information
` is something other than advertisement information.
` So under the patent owner’s
` construction, a proxy content server must
` aggregate something that’s nonadvertising
` information. And that’s an argument that they’re
` using to try to distinguish the Noble prior art.
` And, obviously, we don’t think that that
` construction is correct, and we’re going to go
` into the reasons why we think that’s wrong.
` JUDGE KINDER: Quick question: Would
` this create a negative limitation?
` This is Judge Kinder. Quick question:
` Would this create a negative limitation because
` it’s information other than advertising
` information?
` MR. WEINSTEIN: I think the way the
` patent owner has construed it is not necessarily,
` because their construction doesn’t preclude the
` system from also getting advertising information.
` I think what they said in their papers is the
` proxy content server could still get advertising
` information; but under their view, it must always
` be capable of receiving content information.
` So not so much a negative limitation as
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`IPR2019-00941
`Patent 8,296,351 B2
` it is a limitation that the server has to receive
` a certain category of data. And the reason we
` think that’s wrong is primarily based on
` specification and the claim structure.
` And I’m going to move Your Honors to
` slide 8. And that’s just a page of our brief of
` our position reply, and it just reminds us of what
` Phillips tells us. Phillips tells us that when
` you look at a construed claim, a lot of times the
` claim language itself, the structure of the claim,
` the surrounding claim language can give you a lot
` of insight into what the claims actually mean.
` This is an example that really illustrates the
` truth of that principle.
` If you look at slaim 9 -- I’m sorry --
` at slide 9 -- I apologize -- of the demonstrative,
` you can see we’ve reproduced claim 1. And claim 1
` shows and tells us from -- using the Phillips
` standard, it tells us by its structure, its
` language, and its expressed limitation, what is
` the information the proxy content server needs to
` aggregate and receive?
` The first limitation shown in Figure --
` on slide 9 says “a proxy content server that
` receives information.” Just says “information.”
` It’s not limited to content information or
` advertising information. It just says
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`IPR2019-00941
`Patent 8,296,351 B2
` “information.”
` You go down the claim, there’s an --
` JUDGE QUINN: This is Judge Quinn. I
` just have a question about how does this correlate
` with the specification, which just describes the
` proxy content server as aggregating both content
` and advertisements? Is there any disclosure of,
` like, a channel that is strictly just
` advertisement channel?
` MR. WEINSTEIN: Sure. Yes. There
` are -- I mean, Your Honor, there are actually --
` there are actually separate channels for content
` and separate channels for advertising information.
` An example of an advertising channel
` would be shown, for example, in Figure 1. There
` are ad channels 21a and 21b, and then there are
` content channels that are different.
` And the way the patents describe, there
` are actually different channels for different
` categories of information. There’s a -- there
` could be a channel for dynamic advertisement
` information, you know, static advertisement
` information.
` So there’s -- you know, and I think our
` position is that when you look at the structure of
` the claim, in light of the specification, the
` claim actually tells us what has to be aggregated.
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`IPR2019-00941
`Patent 8,296,351 B2
` Because going back to slide 9, Your
` Honors, in that second limitation we have, it says
` “wherein the information comprises at least one of
` static advertising information, dynamic
` advertising information, default advertising
` information, or content information.” And again,
` it’s referring to the information -- referring
` back to the same information that the proxy
` content server receives, the same information the
` proxy content server stores in the information
` channel, and the same information that would be
` pushed to a wireless device based on, for example,
` the position of the mobile device.
` So the claim tells us what information
` does the proxy content server have to receive, at
` least one of four categories of information.
` And this is not disputed. Both parties’
` experts have looked at this language and says this
` wherein clause only requires one of the four
` categories.
` So you could just have static
` advertising information and the claim is
` satisfied. You could just have dynamic
` advertising information and the claim is
` satisfied.
` JUDGE KINDER: Is this limitation
` supported, then, by the specification? I think
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`Patent 8,296,351 B2
` the follow-up to Judge Quinn’s question: Is there
` any example where the information comprises or
` does not comprise content information and just
` comprises one of statistic, dynamic, or default
` advertising?
` MR. WEINSTEIN: Well, the spec
` doesn’t -- it’s more or less silent on that. If
` you look at, for example, column 9, what it
` discloses is a process. Where -- you’re talking
` about the Figure 4. It talks about a process
` where information comes in and it parses the
` information to figure out what is it. Is it
` content information, or is it advertising
` information? And it goes and figures out where it
` is.
` But there’s nothing in the spec saying
` you have to receive content information or you
` have to receive advertisement information. The
` spec is silent on what’s actually required. It
` just says information can be one of these
` categories and figures it out.
` That’s the support for what’s in the
` wherein clause, because the specification says
` we’re going to figure out what the data is as it
` comes in; we’re going to assign it to the
` appropriate category based on what it is. The
` spec doesn’t say, well, the data has to be this or
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` has to be that. There’s no mandatory language
` either way on this.
` JUDGE QUINN: I think -- this is Judge
` Quinn -- my issue with these constructions is that
` they’re functional descriptions of things that are
` perhaps already claimed, perhaps in different
` terms. But in the end, what I see a lot of
` argument is, is not the fact that it’s a server,
` and it’s not the fact that it’s a proxy; it’s
` about what does this server contain, or what does
` this server handle? And that -- that’s really
` just the functional part of what a server does.
` And to the extent that there is a distinction
` between content and information, I think you’ve
` made arguments that content could be also
` advertisement; is that right?
` MR. WEINSTEIN: The word “content” by
` itself, Your Honor. And we actually do have a
` slide on that. I’ll just go straight to it.
` Slide 9 -- I’m sorry. Slide 13, the
` word “content” in the patent specification
` repeatedly is being used for advertising content,
` as well as what the patent calls information
` content. In fact, if do you a search, you’ll find
` the word “advertising content” about three dozen times
` in the specification.
` To answer your other point, Judge Quinn,
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`IPR2019-00941
`Patent 8,296,351 B2
` you’re correct about the functional aspect of the
` claim limitation. And that is partially the
` reason why the District Court said, “I’m not going
` to construe proxy content server.” The District
` Court said, “there’s so much detail in the claim
` about what the proxy content server does that I
` don’t really need to construe what the term does;
` because, again, the structure, the claim, the
` other limitations provide that kind of detail.”
` And so the only real issue to resolve
` here isn’t so much the construction, because the
` construction isn’t necessarily relevant as much as
` it is does the claim require, under all
` circumstances, that it receive at least content
` information.
` And I think we’ve said the fact that the
` claim uses the word “proxy content server,” the
` word “content,” that’s not enough to require
` content information, because the spec uses the
` word “content” broadly to describe both
` advertising content and information content.
` And so that -- and so because of that,
` we think the term “proxy content server” needs to
` be construed simply -- you know, either not
` construed at all or construed as simply, you know,
` Patent Owner’s construction without the additional
` proviso.
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`IPR2019-00941
`Patent 8,296,351 B2
` I’ll note finally, if we go to slide 15,
` the District Court actually made this observation.
` And we’re citing Exhibit 1029 at page 13.
` District Court said that the independent claims,
` quote, “Provide extensive information about the
` claimed proxy content server and how it functions
` and/or interacts with other components of the
` claim system.” That was his reason for not
` construing the claim, and we agree with the Court.
` The claims give us the guidance. They tell us the
` information.
` JUDGE QUINN: So this is Judge Quinn.
` What is the status of this District
` Court litigation?
` MR. WEINSTEIN: With respect to these
` two patents, both patents were found invalid under
` § 101. There is currently a federal circuit
` appeal with respect to those two patents. The
` appeal has been fully briefed, but it’s not been
` set for argument. And I believe the parties have
` indicated that they’re not going to be available
` for argument this year, so there will not be oral
` arguments on that appeal until sometime next year.
` So I don’t expect the decision from the Federal
` Circuit for a while.
` But as far as the District Court,
` there’s nothing going on with respect to these two
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`IPR2019-00941
`Patent 8,296,351 B2
` patents. It’s only the 101 issue currently on
` appeal at the Federal Circuit.
` JUDGE QUINN: So the construction of
` this term is not at issue in the appeal; is that
` correct?
` MR. WEINSTEIN: That’s correct. In the
` appeal, they’ve made arguments that the proxy
` content server is relevant to the issues of
` inventive concepts. But the actual construction
` of the term is not at issue in the appeal, that’s
` correct, Your Honor.
` JUDGE QUINN: Thank you.
` MR. WEINSTEIN: And so that argument,
` Your Honor -- I want to skip now to two of the
` grounds -- you know, there’s two sets of grounds
` that were instituted: one set of grounds relies
` on Noble and Hassett. The other set of grounds
` relies on Johnson and Mann. That’s grounds 2 and
` 4.
` Those two grounds --
` JUDGE KINDER: Mr. Weinstein, This is
` Judge Kinder. Sorry to interrupt you.
` Could you jump back to slide 12? And I
` just want your take why you have this slide here
` and how this supports your instruction -- or your
` proposed kind of interpretation of how we should
` look at a proxy content server.
`
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`IPR2019-00941
`Patent 8,296,351 B2
` This slide 12 apparently has information
` sources, and then you have your content servers,
` 10a but your ad servers 10b.
` Can you talk about the relationship and
` how this supports your position?
` MR. WEINSTEIN: Yes, Your Honor.
` I think the reason we cited this was
` just to show that the proxy content server, as
` described in specification, doesn’t state a
` preference for whether or not you have to get
` content or ad. They both come into the same
` pipeline, and they both get stored in the same
` proxy content server.
` So the patent owner’s position is no
` matter what the term is construed at, it must
` receive content information.
` When you look at, like, Figure 1,
` there’s nothing to suggest elevating content
` information over advertising information. There’s
` simply no -- there’s simply no -- nothing to
` suggest that the claim prefers one over the other.
` So our argument is they’re really sort
` of weighted equally in terms of what the proxy
` content server can receive. So neither of them is
` actually required in order to satisfy the claim
` limitation.
` And we also note, if Your Honors note,
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`IPR2019-00941
`Patent 8,296,351 B2
` the 12b and 12c on that slide on the right side
` show -- show information that comes in from the ad
` servers and from other ad sources. We have the
` citations at the bottom of that slide. It
` actually refers to those at advertising content.
` At 12b and 12c are advertising information, and
` the patent refers to them as advertising content,
` yet another indication that the patent actually
` uses the term “content” in a broader sense to
` describe both advertising as well as informational
` content.
` JUDGE KINDER: Thank you.
` MR. WEINSTEIN: Thank you, Your Honor.
` So I want to jump to grounds 2 and 4,
` because with the exception of the content -- proxy
` content server argument, the patent owner only
` presents one argument on grounds 2 and 4, and
` that’s the argument about the storage and
` predefined information categories.
` Grounds 2 and 4, as you may recall,
` those are the ones that use the relational
` database teachings of Mann and the database
` teachings of Johnson in combination with Noble in
` order to arrive at the claimed invention. And
` there isn’t any dispute about motivations to
` combine. The only issue is does it meet a
` particular limitation. It’s both a claim
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`IPR2019-00941
`Patent 8,296,351 B2
` construction question and a disclosure. They’re
` arguing for a narrow construction. We don’t
` agree. But even under the narrow construction, we
` think that we meet that claim limitation.
` So I’m going to jump right to it and go
` to slide 42. This is referring to really the only
` claim language that is at issue for grounds 2 and
` 4. And that’s this language about proxy content
` server. And here it is in highlighting. “Stores
` the information to one of a plurality of channels
` based on pre-defined information categories.”
` This language -- the patent owner is
` arguing that the way this language is written, you
` have to use two channels or consult two channels
` or at least two channels have to influence
` which -- two categories -- I’m sorry -- at least
` two categories have to influence or have an effect
` on the particular channel that it’s being stored
` in.
` Our position is the claim doesn’t
` require that you actually use multiple channels --
` I’m sorry -- multiple categories in order to store
` information in the channel. It simply requires
` that you store the information in a channel based
` on first line category.
` Now, we tried --
` JUDGE KINDER: This is Judge Kinder.
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`IPR2019-00941
`Patent 8,296,351 B2
` Doesn’t Patent Owner’s position make
` sense, though, that if it’s based on -- it’s
` saying that since it is based on it, it has to be
` derived from multiple information categories? To
` read that as based on a single information
` category seems to be contrary to the claim
` language.
` MR. WEINSTEIN: Your Honor, I think we
` can answer that with a rather simple analogy that
` I tried to come up with.
` If I was to make a statement saying I’m
` going to assign a child to a classroom based on,
` you know, predefined grade levels -- you know, in
` other words, a child -- first grader goes into
` classroom 1, a second grader goes into classroom
` 2, in ordinary English, that doesn’t mean I have
` to consult grades 2 through 5 to know that Johnny,
` a first grader, goes into the room for claim 1.
` But based on language, it’s actually
` relatively squishy and ambiguous. And I think
` what helps us understand this language is this
` specification.
` The specification doesn’t actually
` describe using multiple categories to store
` information in a channel. It actually discloses
` just the opposite. There’s actually a one-to-one
` correspondence between the channels and the
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`IPR2019-00941
`Patent 8,296,351 B2
` categories.
` If you look, for example, one of the
` patents that were cited in the petition -- I’ll
` just read it into the record. This is column 3,
` lines 58 through 60 of the patent. This is
` Exhibit 1001. And I’ll read it into the record.
` It says that “[a]s information 12 from an
` Information Sources 10 is received by the Proxy
` Content Server 18, the information is collected
` into channels or categories 21.”
` Now, it’s actually using the number 21
` to refer both to the channels and to the
` categories. It kind of shows they’re one in the
` same thing.
` If you go to column 4, lines 43
` through 46 -- this is the actual patent that’s
` cited in our petition as far as explaining why we
` think our construction is correct -- it says “[e]ach
` channel 21, may thus represent a category of
` information that the user may, or may not, be
` interested in receiving.”
` So there’s a one-to-one correspondence
` between a category and a channel that represents
` that particular category. There’s no disclosure
` in the patents of using multiple categories in
` order to store the information in a particular
` channel. That’s just not disclosed there.
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`IPR2019-00941
`Patent 8,296,351 B2
` JUDGE KINDER: Do you think the patent
` has a one -- this is Judge Kinder.
` Do you think the patent has a 112 issue,
` then, on that front?
` MR. WEINSTEIN: No. I think the better
` way to reconcile is just to construe that based on
` language as saying you have a number of
` information categories. One of those categories
` is what’s going to -- you pick the category it
` goes into, and that category corresponds to a
` particular channel. So you can reconcile the
` language with a specification by just saying that
` “based on” simply means one of those categories is
` where it’s going to be stored, and you identify
` the channel based on the category it goes to.
` So I think you can reconcile and avoid
` 112 problems with that construction.
` But even if Your Honors agree with
` Patent Owner that that construction is correct, if
` you go to slide 44, we think the prior art still
` discloses it through the system called a
` “clustered index.” And it’s laid out in great
` detail in the petition in the opening declaration.
` What the cluster index does -- here, you
` have an example of a database table that has
` geographical location and promotional information.
` And if you look, it has, you know, three rows for
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`IPR2019-00941
`Patent 8,296,351 B2
` three pieces of promotional information
` corresponding to each geographic location.
` In a clustered index, that data is going
` to be stored on disc in actually the order in
` which
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