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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______
`
`
`20/20 VISION CENTER, LLC,
`
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS, LLC,
`
`Patent Owner.
`
`___________
`
`
`PGR 2018-00100
`Patent 9,980,644 B2
`
`___________
`
`RECORD OF ORAL HEARING
`Held: January 23, 2020
`
`
`
`
`Paper No. 25
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`
`
`
`

`

`PGR 2018-00100
`Patent 9,980,644 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONR:
`
`
`ALEXANDER WARDEN, ESQUIRE
`Bryan Cave Leighton Paissler
`1290 Avenue of the Americas
`New York, NY 10104
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ROBERTO DEVOTO, ESQUIRE
`KARL RENNER, ESQUIRE
`Fish & Richardson
`1425 K Street, N.W.
`11th Floor
`Washington, D.C. 20005
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, January
`23, 2020, commencing at 12:00 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia, before Chris Hofer, Notary
`Public.
`
`
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`2
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`PGR 2018-00100
`Patent 9,980,644 B2
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`P R O C E D I N G S
`- - - - -
`JUDGE PAULRAJ: Good afternoon. We're here for IPR
`
`
`2018-00100. I'm Judge Paulraj and we have the other two judges
`participating remotely today. On the left side of the screen here is Judge
`Patrick Boucher from our Denver office and on the right hand side of the
`screen is Judge Matthew Meyers from St. Louis. So let's start with
`appearances, so Petitioner's counsel first and then Patent Owner's counsel.
`
`
`MR. WALDEN: Good afternoon, Your Honors Alexander
`Walden of Bryan Cave Leighton Paissner, LLP, on behalf of Petitioner
`20/20 Vision Center, LLC.
`
`
`MR. RICHETTI: Joseph Richetti for 20/20 Vision Center,
`LLC.
`MR. DEVOTO: Thank you, Your Honors. This is Roberto
`
`
`Devoto from Fish & Richardson on behalf of Patent Owner. We also have
`my colleague, Karl Renner, from Fish & Richardson as well as my other
`colleague, Ryan Chowdhury, from Fish & Richardson. Karl Renner and I
`will be doing most of the speaking. Ryan will be providing support today.
`
`
`JUDGE PAULRAJ: All right, thank you, Mr. Devoto. So as
`per our Oral Hearing Order, each side will have 40 minutes to present their
`arguments. We are in receipt of the modified demonstratives that were sent
`by email today. If you're going to refer to those demonstratives, please
`make sure to identify the specific slide number as the remote judges won't
`necessarily be able to see what's being shown on the screen in the room here.
`I trust the parties have resolved any objections to the demonstratives but if
`you're going to object any further, I would like you to save those objections
`
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`PGR 2018-00100
`Patent 9,980,644 B2
`until the end of the presentation. I don't want to take up the parties'
`argument time with resolving objections; is that clear? All right, with that
`let's start with Petitioner's arguments. How much time would you like to
`reserve?
`MR. WALDEN: Fifteen minutes, please.
`
`
`JUDGE PAULRAJ: All right. Thank you. So I have set the
`
`
`count down clock for 25 minutes here and then I think the clock should
`change colors when you have one minute left. With that, whenever you're
`ready.
`MR. WALDEN: Good afternoon, Your Honors. The 644
`
`
`patent which is the subject of this PGR proceeding is generally directed to,
`and I'm sorry, I'm on slide 1 of the demonstratives, will try and remember to
`do that. The 644 patent is generally directed to techniques for allowing eye
`examinations to be performed remotely with three individuals, so one local
`person and two remote individuals so that's apparent on the slide from the
`way that the system is described generally. You've got a local on-site
`technician who's there at the diagnostic center. You've got a remote
`technician who's located remotely as it sounds, as well as a remote eyecare
`doctor who's also remote and these three people together perform administer
`an eye exam.
`
`
`So moving on to slide 2, there's really no dispute about this. On
`this slide we see in a couple of places how the Patent Owner has
`characterized the claim system and again it's enabling remote -- you can see
`in the top box -- enabling remote eye exams in which two remote individuals
`collaborate to administer a remote eye examination for a patient located at a
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`PGR 2018-00100
`Patent 9,980,644 B2
`diagnostic center and below talking specifically about claims 12 through 20
`which are the ones that remain at issue. They categorize it as a procedure
`that involves three types of individuals in the administration of the eye
`exam, one local individual, two remote.
`
`
`So at the beginning of this proceeding, moving on to slide 3 just
`to kind of set the framework for what's left in this proceeding, at the
`beginning there were claims 1 through 20 in the 644 patent. There were
`seven grounds raised in the petition to demonstrate why all of those claims,
`claims 1 through 20 were unpatentable under various sections of 35 U.S.C.
`and at this point we move on to slide 4 we can see that Patent Owner has
`now disclaimed -- in response to the Institution decision -- they've now
`disclaimed claims 1 through 11 and that was the first claim set. There were
`really two claim sets. There were two independent claims, claim 1 and
`claim 12, a little bit different and 2 through 11 depended off 1 and 13
`through 20 depend off 12. So they disclaimed the first set and the other
`thing we see in the Patent Owner response as well as the surreply is that
`there's no separate arguments. Patent Owner hasn't advanced any separate
`arguments specific to dependent claims 13 through 20. So really what's left
`and what we're finding about here today is just independent claim 12. So
`claims 12 through 20 are all going to rise and fall with the patentability of
`independent claim 12. If we move to slide 7. The parties -- sorry.
`
`
`JUDGE PAULRAJ: On that point counsel, I just want to
`confirm that given that ground 1 only focused on the disclaimed claims 1
`through 11, the 101 grounds, that's a moot issue at this point, correct?
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`Patent 9,980,644 B2
`
`
`MR. WALDEN: Yes, that's my understanding, correct is those
`claims no longer are in the bag.
`
`
`JUDGE PAULRAJ: So we don't need to address any 101
`issues correct, in our final decision at this point?
`
`
`MR. WALDEN: That's correct.
`
`
`JUDGE BOUCHER: Can I ask also whether you would
`comment on the Patent Owner's articulation of the level of skill in the art. I
`didn't see your reply to that in your reply, I just want to make sure I didn't
`miss it because it seemed to me the Patent Owner had a better articulation,
`especially with respect to the system of claim 12, for the level of skill in the
`art than the Petitioner did.
`
`
`MR. WALDEN: No, I think that's correct. So there was a little
`bit of a dispute over exactly how to kind of frame the person of ordinary
`skill in the art. I believe our definition in the petition was focused a little bit
`more on the ophthalmic equipment side, you know, the ability to administer
`eye exams and control ophthalmic equipment, that kind of experience and
`background. But their definition in the Patent Owner's response focused a
`little bit more on computer science and computer architecture networking
`but also included the necessity of having experience with eye exams and
`ophthalmic equipment. So I think it's really a matter of degree. Theirs is
`more heavily leaning towards computer science and computer art
`networking architecture and ours was a little bit more towards the
`ophthalmic. I mean as far as the references and the grounds --
`
`
`JUDGE BOUCHER: (Indiscernible.)
`
`
`MR. WALDEN: Sorry, go ahead.
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`PGR 2018-00100
`Patent 9,980,644 B2
`
`
`JUDGE BOUCHER: -- do you disagree with the Patent
`Owner's articulation of level of skill in the art or is that something you're
`willing to accept?
`
`
`MR. WALDEN: I think I would say as I would be willing to
`accept it on the basis that I don't think it makes any difference to the -- so the
`application of the Seriani reference which is the only one we're really
`dealing with at this point to claim 12 and so for purposes of the proceeding,
`yes, I'd be willing to accept it on that basis.
`
`
`JUDGE BOUCHER: Okay, thanks.
`
`
`MR. WALDEN: So just turning back to slide 7. So there's
`really only two claim constructions or two terms that have been discussed by
`the parties and those are different locations and these were both raised in the
`petition by Petitioner. The term different locations and the terms eye care
`technician and eye care doctor together, and so if we jump to slide 8 just real
`quick. So different locations Petitioner still maintains that that term, at least
`in the context of claim 12, is indefinite under Section 112. I'll get to that if
`there's time at the end.
`
`
`The Board in its Institution decision, as we can see here in the
`middle, construed it as meaning each of the parties in a different location
`and the Patent Owner has accepted that construction, and also in the reply
`we accepted that construction for purposes of this proceeding with the caveat
`obviously that we still maintain that it's indefinite.
`
`
`The point that I guess really the takeaway on different locations
`is that there is no dispute, at least as far as I'm aware, that Seriani discloses
`each of the three parties being in different locations as is required in the
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`PGR 2018-00100
`Patent 9,980,644 B2
`context of claim 12 so I don't think this construction really is going to have
`much impact at this point.
`
`
`JUDGE PAULRAJ: So then to that point do we even need to
`construe different locations in our final decision in order to address issues in
`this case?
`MR. WALDEN: I don't believe you do. I mean I think the one
`
`
`thing I would say is that -- I mean I would hope the Board addresses some of
`the additional argument that was in the reply and the surreply regarding the
`indefiniteness issue. But as far as assuming -- sorry, I guess I would say it
`this way -- assuming the Board decides that it is not indefinite then no, I
`don't believe there's any need to construe it for purposes of this proceeding
`any further than it was already construed.
`
`
`JUDGE PAULRAJ: Did you make any arguments regarding
`indefiniteness or address indefiniteness arguments?
`
`MR.
`WALDEN: We did in the reply. We raised those in the reply, cited to some
`of the deposition testimony of Patent Owner's expert. I can go through that
`quickly in a little bit, if you'd like me to do it now I'm happy to jump to that.
`
`
`JUDGE PAULRAJ: No, you can proceed with the order that
`you have.
`MR. WALDEN: Okay. So just jumping to slide 9. This is the
`
`
`only other term, this one I think is even more straightforward. These are the
`terms eye care technician and eye care doctor. Petitioner proposed that both
`these terms be construed as any eye care individual who is licensed,
`qualified or otherwise capable of performing the steps recited in the
`challenged claims. The Board in the Institution decision adopted that
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`Patent 9,980,644 B2
`construction and the Patent Owner has agreed with that as well, so I think
`that's, you know, again not something that should impact in the final written
`decision.
`JUDGE PAULRAJ: And the same question, is our construction
`
`
`necessary in the final written decision to address issues in this case?
`
`
`MR. WALDEN: I don't believe so. I just would say that from
`the perspective of this construction that has already been basically agreed
`upon by everyone, it just makes clear that the eye care technician and eye
`care doctor -- there is some overlap. There's not a clear cut distinction
`between the two. In other words I think in the Institution decision at page 11
`I believe the Board noted that a doctor could also perform the role of the
`claimed eye care technician.
`
`
`So in other words it could be that you have two doctors, one
`doing the role of the eye care technician in the claim and one doing the role
`of the eye care doctor, and so just with that understanding and we'll see in a
`little bit why that relates to the Seriani disclosure which has very similar
`broad disclosure of who these individuals may be I think it's fine. But to
`answer your question I think everyone's agreed on what the construction is
`so I don't think there's anything more to do at this point with these terms.
`
`
`JUDGE PAULRAJ: I believe we said in our Institution
`decision more or less that a doctor could function as a technician but not
`necessarily a technician could necessarily function as a doctor.
`
`
`MR. WALDEN: Precisely.
`
`
`JUDGE PAULRAJ: As long as we have that understanding --
`
`
`MR. WALDEN: Absolutely.
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`Patent 9,980,644 B2
`
`
`JUDGE PAULRAJ: -- (indiscernible) we're on the same page.
`
`
`JUDGE BOUCHER: Let's jump into some of the meat of the
`issues here. If we look at figure 2 of the patent why, and there's an issue of
`claim construction, why isn't Patent Owner correct that there is a sequential
`nature to these -- to the examination process? One remote individual does
`part of it and the second individual does the second part of it.
`
`
`MR. WALDEN: So to answer your question, so figure 2 is
`certainly one example not necessarily limiting on the claims. But I guess to
`take a step back what I would say is I don't think Petitioner's position is
`necessarily that there is no sequence or ordering at all to the steps. So if we
`look at slide 5, for example, and I apologize but it's really slides 5 and 6 that
`have the claim language on it because the claim is a little bit lengthy. So if
`we start with claim 5, if you look at what's labeled there as C and D, the
`limitations that correspond to C and D it's talking about a remote technician
`who's being sent a request to administer an eye exam and then there's
`instructions being received that permit that remote technician to control
`operation of the ophthalmic equipment at the diagnostic center from a first
`remote location in order to administer at least one test and so if we go on to
`the next slide down to the corresponding limitations which is F and G at the
`top, and in particular -- I'm sorry, G and H -- and in particular H, now we're
`talking about an eye care doctor who's reviewing the at least one test.
`
`
`So I think what Petitioner acknowledges is that clearly there has
`to be a test that is administered or being administered in order for that test to
`be reviewed by the doctor. So there is some, just by the express claim
`language, there is some relationship between these later limitations and the
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`PGR 2018-00100
`Patent 9,980,644 B2
`earlier ones. It's the same test that's being administered and then reviewed.
`What we're saying is other than that, nor has there been any argument that
`there's any other specific kind of segmentation and to us it appears like what
`Patent Owner is arguing is the basis of the entire exam has to be
`administered and completed and then after that's been completed, the eye
`care doctor has to do the review at some point after that.
`
`
`In other words, full segmentation and what we said coming
`back in the reply was when you look at the claim language there's nothing
`that prohibits there being some overlap, that it could be that the eye care
`doctor is reviewing as the remote technician is administering or kind of in a
`parallel manner.
`
`
`JUDGE BOUCHER: We construe claims in light of the
`specification and we're not using broadest reasonable interpretation here, and
`if I look at figure 2 of the patent the steps where the patient is just waiting
`which does seem to me to suggest that there is some kind of explicit
`segmentation, at least in the embodiments disclosed in the patent. Is that not
`correct?
`MR. WALDEN: There are certain embodiments that disclose a
`
`
`waiting between the -- I mean if we're looking at figure 2, for example, the
`waiting between the remote technician and the doctor, yes I certainly agree
`with that. But I just want to make sure I understood something you said
`right before that when you said it's not under BRI because I think it's my
`understanding that this proceeding is under BRI.
`
`
`JUDGE BOUCHER: Was it filed that early on?
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`Patent 9,980,644 B2
`
`
`MR. WALDEN: Yes. That was filed September 14, 2018
`which is almost a month before.
`
`
`JUDGE BOUCHER: Okay.
`
`
`MR. WALDEN: Just want to make sure we're clear on that,
`and so even to take a further step back our view is that whether or not there
`is full segmentation which we do not believe is required by the claim, in
`other words you can have one test be administered and then have that same
`test be reviewed and then have another test administered and then that test be
`reviewed. Because the other piece I will just point out in express claim
`language is that it does not say on slide 6 limitation H that the eye care
`doctor reviews the eye examination that's been administered, it just says that
`he reviews the at least one test. So it certainly could be that the remote
`technician does one test, eye care doctor reviews it, remote technician does
`another test, eye care doctor reviews it. But again, regardless of whether it's
`like that or even if it required full segmentation argue is that Seriani
`discloses both.
`
`
`JUDGE MEYERS: Counsel, going back I mean doesn't the
`doctor review the at least one test which sets the antecedent basis back to the
`test that's administered by the remote tech, I mean?
`
`
`MR. WALDEN: No, no, I agree with you fully on that. But
`there's nothing to preclude there being another test that's not recited in the
`claim. So if we look back to where that comes up in the first place on
`limitation D, so in limitation D that's where it's administered. We have a
`remote technician administering at least one test and then I agree with you
`100 percent that when you get down to H, and it says that the doctor is
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`PGR 2018-00100
`Patent 9,980,644 B2
`reviewing the at least one test that that is antecedent basis and so therefore at
`a minimum the administration of that test has to have started at the point
`where the view is happening, otherwise you couldn't review if the test hasn't
`at least been started. What I'm saying, and what we explained in the reply, is
`that there could be other tests. There's a full blown eye examination, this is
`just one part of it this at least one test so there could be other tests that are
`being administered subsequently and then reviewed in kind of a staged
`approach. But again, Petitioner doesn't believe that's dispositive of the
`issues in this case, that Seriani discloses the full segmentation anyway.
`
`
`So moving on to slide 10. So Seriani, which was filed in 2014,
`is also directed to remote eye exams using multiple individuals and Seriani
`discloses -- there's a lot of disclosure of kind of different individuals who
`can be located on site as well as remote including remote technicians, remote
`equipment operators, remote practitioners and if we look, and this goes a
`little bit to the distinction between eye care practitioners and eye care
`doctors. If we go to Seriani at column 11, so Seriani like we were talking
`about earlier with the 644 patent and there was an eye care doctor who was a
`remote technician, Seriani says basically in certain embodiments the remote
`eye care practitioner may be a licensed optometrist or ophthalmologist, still
`an eye doctor but the remote practitioner could also be any other individual
`who's qualified, licensed or otherwise capable of administering and
`monitoring one or more eye health an visual acuity tests, et cetera, it goes on
`through the end of column 16 and so whenever in this disclosure in Seriani
`when it's talking about the remote practitioner as we've explained and as our
`experts explained that remote practitioner or eye care practitioner can be the
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`Patent 9,980,644 B2
`remote technician, it could be a remote practitioner's assistant, it could be a
`remote doctor and so again I don't think there's any dispute that when it talks
`about an eye care practitioner in Seriani that eye care practitioner could be
`performing the role of an eye doctor or the role of a remote technician
`depending on who that person is and what's needed.
`
`
`So just to get into the real meat of what's going on here, so if
`we go to slide 11 just real quick before we do that again, here's Patent
`Owner describing Seriani and if we look at the bottom of this box on slide
`11 they admit that Seriani teaches that another participant distinct from the
`remote practitioner, an off-site technician, can assist the remote practitioner
`in administering a remote eye exam and then it says who the off-site
`technician can be. So there's no argument here that Seriani teaches or
`discloses three individuals participating in an eye exam. One local person,
`two remote people.
`
`
`What the dispute really is, there's really two arguments and if
`we jump to slide 27 the first argument, and this comes out of the surreply, is
`that according to Patent Owner Seriani doesn't disclose these first
`instructions and second instructions limitations in claim 12 that basically
`recite that the remote technician and the eye care doctor respectively.
`Instructions are received from those two parties, remote parties to permit
`them to control the same ophthalmic equipment during the same exam. So
`the fight really here in the surreply, the dispute is over does Seriani disclose
`the two people controlling the same equipment during the same exam. The
`dispute is not over whether there are two people who can control ophthalmic
`equipment, it's just this issue of is it the same equipment, same exam?
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`PGR 2018-00100
`Patent 9,980,644 B2
`
`
`So if we jump to slide 28, we see again here at the top Patent
`Owner acknowledging in its Patent Owner response that Seriani does
`describe general architectures relating to the capability of its system to allow
`multiple remote practitioners to participate in remote control of ophthalmic
`equipment and below that this is the deposition of Patent Owner's expert
`when he's asked, and if we look in the middle at line 22 he's being asked
`does Seriani describe serial control of the ophthalmic equipment by the
`persons listed here -- the remote practitioner, the off-site technician and/or
`the on-site operator and he says I think that's possible.
`
`
`So this is clearly, especially down here in the context of a single
`exam, serial control meaning I control it, the people listed here remote
`practitioner controls it, the off-site technician controls it and vice versa.
`That's exactly what the serial control is and that's their expert admitting that.
`
`
`Now quickly if we jump down to slide 30 and you'll see this in
`the surreply from Patent Owner, they say that we only cited three portions of
`Seriani for this feature and while I disagree with that characterization of
`what we've cited, here on these three slides we have these three portions that
`they've acknowledged there is no dispute that these are three portions of
`Seriani that have been decided for this feature. So here's the first one which
`is column 12, lines 41 through 65 and if we look around line 47 or 46 it talks
`about a real time connection may be established between a customer
`diagnostic center and a remote practitioner device which allows the remote
`practitioner to view and interact with a customer, access and view the
`customer examination data and provide customer evaluation data to the
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`PGR 2018-00100
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`customer in real time, such as during or shortly after the administration of
`one or more eye health and vision tests.
`
`
`So this first piece here is talking about a remote practitioner
`being able to review examination data shortly after tests have been
`administered. It goes on right after that to say the remote practitioner may
`also be able to monitor and control certain ophthalmic equipment and the
`administration of one or more tests. Immediately following that it says in
`addition the server may establish a real time connection with an off-site
`technician and then it says, if you follow this through, it says for monitoring
`and controlling the equipment and the administration of the tests. So these
`are the same tests, the same equipment that's being discussed up above that
`the remote practitioner is controlling and he's reviewing the tests. So this is
`the same equipment, same test, this is not as Patent Owner characterizes it
`oh, these could be completely different tests, completely different patients, et
`cetera.
`If we jump to slide 31 this is very similar. Given the time I'm
`
`
`not going to go through this. The only other argument, if we jump to slide
`38 and this is really the only other argument the Patent Owner has raised at
`this point is that their position is that Seriani doesn't disclose two requests, a
`request to review data like a request for one person to do an administration
`of the test and another request for another person to do a review of that test.
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`
`JUDGE PAULRAJ: Thank you, counsel, unless you'd like to
`go into your rebuttal time.
`
`
`MR. WALDEN: No, that's fine.
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`
`
`JUDGE PAULRAJ: How much surrebuttal time would you
`like counsel?
`
`
`MR. DEVOTO: We would like to reserve 15 minutes in
`surrebuttal time.
`
`
`JUDGE PAULRAJ: Okay. I'll set the clock for 25 minutes and
`you'll get a warning light when it's one minute left.
`
`
`MR. DEVOTO: Great.
`
`
`JUDGE PAULRAJ: Whenever you're ready, counsel.
`
`
`MR. DEVOTO: Yes, let's begin. Before I get into our case in
`chief I do want to make one comment about the slide 28 of Petitioner's
`demonstratives where they have cited a portion of our expert's cross-
`examination testimony as well as a portion of our Patent Owner response. I
`would submit to you that if you look carefully at both the cross-examination
`testimony and look at that Patent Owner snippet that they've extracted, in its
`full context you'll find that we have repeatedly asserted that this is not
`during the same examination, that this participation of these multiple remote
`practitioners is not something that is going to be the same examination and
`that's important to recognize.
`
`
`Now turning to our response, I do want to make mention that
`my colleague Karl Renner and I will be presenting on behalf of obviously
`the Patent Owner. I'll be discussing the grounds related to Seriani, so that's
`grounds 4 to 7, and to the extent that my colleague wishes to address the
`indefiniteness grounds which really weren't addressed by my colleague here
`or by opposing counsel, he may or may not take some time to do that as
`well. As always and as we recognize, the main purpose of this oral hearing
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`is to make sure we answer all of your questions and we certainly welcome
`them.
`I'd like to turn to slide 13 of our presentation. So claim 12 is
`
`
`directed to an innovative telemedicine computer system for providing eye
`examinations. An important innovation of that system is captured in the
`features that the Petitioner has labeled 12D and 12H. Specifically feature
`12D which recites receive first instructions to permit --
`
`
`JUDGE BOUCHER: Sorry to interrupt you but I do want to
`address this issue of copying because when you look at the claims that
`Petitioner just highlighted, at least claim 1 in Seriani and the challenged
`claim in the patent.
`
`
`MR. DEVOTO: Yes.
`
`
`JUDGE BOUCHER: The similarity is striking so do we know
`whether or not there was an attempt to copy those claims or what happened
`there?
`MR. DEVOTO: Well first thing we think there's an extremely
`
`
`important difference between the two distinct claims. We think that the
`claim in the Seriani patent is directed to a multiplicity of diagnostic centers
`dealing with a multiplicity of instructions being received by a multiplicity of
`eye practitioners and in fact the portion of that claim that even led to the
`allowance of it ultimately was directed to an automated refractive test,
`subjective refractive test. In contrast, our claim was focused on a single
`diagnostic center pertaining to a single examination pertaining to
`instructions directed to controlling ophthalmic equipment within the context
`of that single examination as those instructions are received from two
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`distinct remote locations. Now these are meaningful and important
`distinctions. As far as the copying I cannot speak to that as I don't know, but
`what I can tell you is that these two claims are extremely different and in
`fact as I will get into in a moment shortly I will explain that in fact it's the
`Petitioner's misguided attempt to try to map claim 1 to claim 12 that has led
`to some of the problems that have arisen in their petition.
`
`
`JUDGE BOUCHER: Okay. So the answer is we don't know
`whether or not there was an intent to copy.
`
`
`MR. DEVOTO: I don't, Your Honor. But again the overall
`claim is very different. The claim is very different.
`
`
`JUDGE PAULRAJ: You don't acknowledge the similarity
`between the other claims; is that (indiscernible?)
`
`
`MR. DEVOTO: I think that there is some wording that
`overlaps but --
`
`
`JUDGE PAULRAJ: But there's a lot of the wording that
`overlaps. So I think that you need to acknowledge that much that there is a
`significant amount --
`
`
`MR. DEVOTO: I will acknowledge that there's a lot of
`wording that overlaps but let's be clear that one claim is directed to one
`diagnostic center instructions received with respect to a single examination
`from two different remote locations, the other claim is not. It's directed to a
`multiplicity of diagnostic centers, multiplicity of distinct remote eye care
`practitioners and a multiplicity of different eye examinations and these are
`important differences, so.
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`
`
`JUDGE MEYERS: Are the differences that you've set out there
`are between the claims and not necessarily reading challenged claim 12
`against the Seriani reference?
`
`
`MR. DEVOTO: So I do want to talk about reading challenged
`claim 12 against the Seriani reference and in fact I'm more than happy, and
`as we've stated in our briefs, there's our contention that features 12D and
`12E properly construed based on plain meaning and antecedent basis are not
`satisfied by the Seriani reference and we think that the record stands
`unrebutted on this