trials@uspto.gov
`571-272-7822
`
`IPR2015-01031, Paper No. 21
`July 21, 2016
`
`
`
`RECORD OF ORAL HEARING
`
`BYRON ROGERS FEDERAL BUILDING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`-------------------------------------------------------
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`OPENTV,INC.,
`
`Patent Owner.
`
`-------------------------------------------------------
`
`Case IPR2015-01031
`Patent 7,900,229 B2
`
`-------------------------------------------------------
`
`
`
`Oral Hearing Held: June 21, 2016
`
`Before: JAMES B. ARPIN, DAVID McKONE (via videoconference), and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`The above entitled matter came on for hearing on Tuesday, June 21, 2016, at
`the Byron Rogers Federal Building, 1961 Stout Street, 14th Floor, Denver,
`Colorado, at 1:15 p.m.
`
`
`571-272-7822
`
`IPR2015-01031, Paper No. 21
`July 21, 2016
`
`
`
`RECORD OF ORAL HEARING
`
`BYRON ROGERS FEDERAL BUILDING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`-------------------------------------------------------
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`OPENTV,INC.,
`
`Patent Owner.
`
`-------------------------------------------------------
`
`Case IPR2015-01031
`Patent 7,900,229 B2
`
`-------------------------------------------------------
`
`
`
`Oral Hearing Held: June 21, 2016
`
`Before: JAMES B. ARPIN, DAVID McKONE (via videoconference), and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`The above entitled matter came on for hearing on Tuesday, June 21, 2016, at
`the Byron Rogers Federal Building, 1961 Stout Street, 14th Floor, Denver,
`Colorado, at 1:15 p.m.
`
`
`
`APPEARANCES:
`
`
`
` ON BEHALF OF PETITIONER, APPLE INC.:
`
`
`
` MELODY DRUMMOND HANSEN, ESQ.
` O'Melveny & Myers LLP
` Two Embarcadero Center, 28th Floor
` San Francisco, California 94111-3823
` (415)984-8700
`
`
`
` ON BEHALF OF PATENT OWNER, OPENTV, INC.:
`
`
`
` ERIKA H. ARNER, ESQ.
` Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` (571)203-2700
`
`
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`Case IPR2015-01031
`Patent 7,900,229 B2
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`
`P R O C E E D I N G S
`
`(1:15 p.m.)
`JUDGE MOORE: Good afternoon, Counsel.
`We will hear arguments now in Case No. IPR2015- 01031,
`Apple Inc., Petitioner, vs. OpenTV, Inc., Patent Owner,
`concerning U.S. Patent No. 7,900,229 B2.
`Counsel for both parties, please step up to
`the lectern and introduce yourselves, starting with
`Petitioner.
`
`MS. HANSEN: Good afternoon, Your
`Honors. Melody Drummond Hansen for Apple Inc. And if
`it is acceptable to Your Honors, with me at counsel table
`is an attorney who is not of record, Clarence Rowland.
`JUDGE MOORE: Any objection, Patent
`
`Owner?
`
`MS. ARNER: No.
`JUDGE MOORE: Okay. Thank you.
`MS. ARNER: I'm Erika Arner. I'm lead
`counsel for the Patent Owner, OpenTV. I'm joined at
`counsel table by Cory Bell, also of my firm, Finnegan.
`And in the room, we have Bill Goldman, who is a
`representative of the Patent Owner, OpenTV. In the
`overflow room, we have backup counsel, Joshua Goldberg
`and Dan Tucker, as well as another OpenTV
`representative, Brian Platt.
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`JUDGE MOORE: Okay. Thank you.
`This morning, before the first hearing, I
`gave a series of instructions and admonitions to counsel
`regarding such things as the use of laptops in the hearing
`room, the importance of speaking to the camera, so that
`Judge McKone can see you, speaking at the lectern, so
`that he can hear you, as well as instructions on how the
`hearing will proceed and how to present objections.
`Did counsel for both parties hear and
`understand those instructions? Start with Petitioner.
`MS. HANSEN: Yes, Your Honor.
`JUDGE MOORE: Patent Owner?
`MS. ARNER: Yes. Thank you.
`JUDGE MOORE: Okay. Thank you.
`Those instructions will also apply during this hearing.
`As we mentioned before, pursuant to our
`scheduling order, each party is going to have 30 minutes
`to present its arguments. We will begin with Petitioner.
`Petitioner may reserve rebuttal time if it desires to do so.
`We'll then proceed with Patent Owner's
`arguments. Patent Owner will present all of its argument
`and will not be able to reserve rebuttal time because there
`are no motions pending or other matters for which Patent
`Owner bears the burden of proof.
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`Once Patent Owner has completed its
`arguments, Petitioner will continue with rebuttal time if it
`has reserved such time. But once again, rebuttal
`arguments are strictly limited to the scope of Patent
`Owner's arguments.
`And with that being said, Counsel for
`Petitioner, please proceed when you're ready.
`MS. HANSEN: Thank you, Your Honor.
`If it pleases you, I'll step forward to give
`you copies of the demonstratives.
`JUDGE MOORE: You may proceed.
`MS. HANSEN: Thank you.
`JUDGE ARPIN: Thank you.
`JUDGE MOORE: Thank you.
`MS. HANSEN: Thank you. And a copy
`also has been provided to the court reporter.
`JUDGE MOORE: Thank you.
`Would you like to reserve any rebuttal
`
`time?
`
`MS. HANSEN: Yes, Your Honor. Ten
`minutes, please.
`JUDGE MOORE: Okay. Ten minutes.
`MS. HANSEN: This presentation will
`focus on the issues that were disputed based on the
`briefing. If we could turn to Slide 17, please.
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`Case IPR2015-01031
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`
`On Slide 17, you'll see that the Patent
`Owner disputes the anticipation of Independent Claim 14
`and Independent Claim 26 for the same reasons, as well as
`anticipation of Dependent Claims 24 and 31. Patent
`Owner has not substantively disputed any additional
`limitations of Dependent Claims 15, 16, 19, 21, 28 or 30.
`Turning to Slide 19, please.
`JUDGE ARPIN: Counsel, you mean except
`insofar as Patent Owner is disputing the independent
`claims from which those claims depend, correct?
`MS. HANSEN: That's correct, Your Honor.
`JUDGE ARPIN: Thank you.
`MS. HANSEN: And in addition, with
`respect to Independent Claim 14, Patent Owner has not
`disputed that Tomioka discloses the limitations that
`appear as 14a on Slide 19. The remote unit, the set-top
`box, and the broadcast station couple to convey a
`programming signal to the set- top box.
`A portion of the claims -- turning to Slide
`20. What is disputed are the other elements referenced
`here as 14b through e that relate to the claimed inner
`activities of first user activities and second user activities
`related and unrelated to television viewing.
`And in making these arguments, there are
`four core arguments that the Patent Owner makes. One is
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`that the claims do not claim a common user profile, that
`there is something more to the claims than that. Two is
`that Tomioka has no single embodiment that discloses the
`activities related to television viewing and activities
`unrelated to television viewing.
`And then with respect to what's marked
`here as 14e, that Tomioka does not access user profile in
`response to a second activity and that the many references
`in Tomioka to recording, presenting, discovering,
`providing and et cetera content to users somehow does not
`meet the transmitting limitations of the claims.
`And turning to Slide 21, what this
`presentation will focus on is how each of these arguments
`is wrong. There is a common user profile claimed in the
`claims. There -- Tomioka has all of these disclosures in a
`single embodiment. Tomioka does access the user profile
`in response to the second activity.
`And the disclosures of Tomioka with
`respect to transmitting do meet the elements of the claims
`as can be shown by reviewing the patents, looking at the
`other claims, and, in addition, Tomioka explicitly
`discloses transmitting.
`Starting first with the common user profile,
`if we could have Slide 5, please. The '229 Patent claims a
`system where a user can access the system through
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`various means. And some of those means are through a
`set-top box; for example, here is shown Figure 3. And
`other means are through what are referred in the claims as
`remote units, which may be mobile units or fixed units.
`And the system is configured to create and
`maintain a user profile that reflects the activities of the
`user in the system.
`And turning to Slide 23, what the '229
`Patent discusses is that, ultimately, all of the user
`interaction with the system may affect the user profile,
`which may in turn affect the information the user
`receives.
`
`And turning to Slide 24, during the
`prosecution history, the applicant, in distinguishing prior
`art and explaining the claims that were pending, talked
`about how this common profile is actually how the claims
`function. So there is a common profile that may be
`updated via multiple distinct types of user activities: One
`comprising activity related to television viewing and the
`other comprising activity unrelated to television viewing,
`and that that is in -- that the user profiles update in
`response to first activities and second activities.
`And it explains that the user profile is
`common to both of the differing types of activities and,
`accordingly, updates made in response to the first user
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`Case IPR2015-01031
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`activity may change the data transmitted to a user
`engaged in a completely unrelated activity.
`Tomioka discloses the same sort of system
`with a common user profile across activities and devices.
`Turning to Slide 12, Tomioka disclosed a
`problem that existed where the average consumer has an
`increasing number of devices, including audio systems,
`stereos, home television sets, web browsers, and the user
`currently has to customize all of them for viewing and/or
`listening preferences.
`And what Tomioka proposed was a system
`that records and presents to the user audio and video
`information based on the user's prior viewing and
`listening habits and -- as well as the preferences and
`personal characteristics generally referred to as user
`information.
`
`And the way that it proposed to do that was
`through a common profile called the user description
`scheme and sometimes referred to, as here, "user
`descriptor scheme" that provides a central storage for the
`user's listening, viewing, browsing preferences, and
`behavior.
`
`JUDGE ARPIN: Counsel, is it Petitioner's
`position that the presenting or the providing or both
`teaches the transmitting limitation?
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`
`MS. HANSEN: Yes, it is, Your Honor. We
`can turn to -- specifically to address that, to Slide 54.
`So as the -- as the Institution Decision
`noted, transmitting data responsive to the second user
`activity was supported by the Petition as the system
`recording and presenting to the user audio and video
`information based on the prior viewing and listening
`habits.
`
`And this is the same sort of language that
`claim 229 -- that the '229 Patent uses in describing the
`functionality of the system. It states that based on the
`user profile, specific information may be selected for
`presentation to the user.
`And if you look at the way that transmitting
`works in the claims, for example, Claim 26 claims a
`medium that would exist potentially in a single device.
`And it, too, includes transmitting as a claim element, just
`like Claim 14.
`So it's clear that transmitting can be
`transmitting within a device or from another device. And
`the -- and Tomioka is replete with disclosures of
`transmitting from both within a device and from one
`device to another.
`For example, looking at Slide 55, Tomioka
`specifically discloses that the user preferences may be
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`stored on a server, and the content adaptation can be
`performed according to user descriptions at the server and
`then the preferred content is transmitted to the user.
`And this is only one of the descriptions of
`communicating across the network. It's discussed in
`many other portions of Tomioka, including paragraph 52
`about disclosing -- transmitting the user profile over a
`network.
`
`And in addition, Tomioka discloses set- top
`boxes and in -- and set- top boxes also transmit
`information for display. They would not necessarily be
`part of the display itself. And Tomioka discloses many
`set-top boxes.
`Turning to Slide 42, the -- it's clear that
`Tomioka's user description is used across devices in a
`network, and this also relates to the concept of presenting
`being transmitting. This is described in Figure 2, and it
`states that the program may originate at any suitable
`source: Broadcast television, digital video discs,
`cameras, videotape, audiotape, et cetera.
`And the source provides the device with an
`image, audio, and/or video content. And it states that the
`system -- at the bottom here -- may include any devices
`suitable to receive any one or more of such programs.
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`
`And turning to Slide 57, continuing with
`Figure 2 here, you can see that the searching, filtering,
`and browsing module browses on the basis of information
`contained in the description schemes, and desirable
`content may be provided to the user through the display.
`So it's clear that this system can be
`provided through any number of means that include many
`different types of transmitting, whether it's broadcast or
`within a device or from a set- top box to a display and et
`cetera.
`
`JUDGE ARPIN: Counselor, referring to
`Claim 1, where is the profile stored?
`MS. HANSEN: Claim 1 of --
`JUDGE ARPIN: Of the challenge patent,
`the '229 Patent.
`MS. HANSEN: Do you mean Claim 14,
`
`Your Honor?
`
`JUDGE ARPIN: Excuse me. Claim 14.
`You're correct.
`MS. HANSEN: Okay. No problem.
`It doesn't say. So I believe Slide 18 has the
`claims. So it doesn't say where the user profile is stored.
`And in fact, the way that the claims read, there is a
`remote unit, a set- top box, and a broadcast station. And
`the claims do not limit which of these devices might be
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`transmitting the information to the user based on the user
`profile. It could be any one of those elements that are
`described in 14a.
`JUDGE ARPIN: Well, we know that --
`from element e, the "access" element, that the
`transmitting of data responsive to the second user activity
`must go someplace. Does it go to the remote, or does it
`go to the set -top box, or is that taken up by limitation --
`the "wherein" limitation d , where it says it can be one or
`the other?
`
`MS. HANSEN: Yes, Your Honor. The
`claims are written in an either/or and a vice-versa
`fashion. So with respect to which device is used first,
`you'll see in the portion marked -- portions marked b and
`c, that there's a first device and a second device, and it
`can be either one that's used for the first or second
`activity.
`
`And similarly, at 14d, either the first
`activity can be related television viewing or not and vice
`versa.
`
`And with respect to where it's stored, if you
`look at -- going back to Slide 5, Figure 3 of the '229
`Patent, the '229 Patent mentions, just like Tomioka, that
`the profile can be stored in multiple locations or only
`one.
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`So you can have a profile at a broadcast
`station. You can have a profile at a fixed unit or at a set-
`top box. That's what's described here. And that profile
`can be shared among devices in a network, just as it is in
`Tomioka.
`
`JUDGE ARPIN: Does this slide mean that
`it can't be stored on the mobile unit?
`MS. HANSEN: No, Your Honor. There are
`no limitations in the specification or the claims that the
`profile would not be stored on the remote -- on the remote
`unit. And, in fact, the fixed unit is one of the remote
`units disclosed in the specification, which was reflected
`in the claim construction portions of the Petition.
`JUDGE ARPIN: But Counsel, I do note
`that we did not construe any claim terms for this -- for
`this case, or we found it not necessary to. Do you agree
`with that, no claim constructions are necessary?
`MS. HANSEN: Yes, Your Honor. We
`agree no claim constructions are necessary. And in
`instituting, the Board noted that there was no issue taken
`with any of our constructions, and they seemed
`reasonable.
`
`But regardless, the support there and the
`specification shows that the fixed unit is considered a
`remote unit by the specification.
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`JUDGE ARPIN: But not a mobile unit 305?
`MS. HANSEN: The mobile unit is also a
`remote unit. So the claims don't refer to -- here, Claim
`14 doesn't refer to a mobile unit or a fixed unit. It refers
`to a remote unit, and, if you read the specification, which
`is described in the claim construction section of our
`Petition, you'll see that both of those are described in a
`way that maps onto the remote unit.
`So turning to the argument that Tomioka
`doesn't access the user profile in response to the second
`activity, on Slide 51, you'll see here one example of
`accessing in response to second activity. And that's
`because when a user is engaged in a temporally later
`activity, which would be a second activity, the profile is
`used to provide information to the user, and here is an
`example of when a machine is restarted.
`The new -- the following program or
`content may be automatically provided to the user for
`viewing, for example, if the user had stopped watching
`something before. And also, a new program can be
`recommended based on the preference information.
`So it's clear that the -- that the device as
`contemplated by Tomioka access the profile to transmit
`content based on the user profile.
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`And turning to Slide 52, the information
`that is recorded and presented to the user is based on the
`user's prior viewing and listening habits, preferences, and
`personal characteristics. And it's portable between
`devices.
`
`And in -- and so here you can see that it is
`-- it's accessing the user profile because it needs to use
`the prior viewing and listening habits to provide content
`for the user.
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`In addition, it's clear that the profile is
`accessed in response to second activity because the
`system updates the user profile based on the second
`activity.
`
`So turning to Slide 40, you see here a
`description that the user's preferences are readily movable
`to different devices. And it includes a TiVo player, a car
`radio, et cetera. Yet, the user preference description may
`be updated in accordance with the user's browsing,
`filtering, searching, and device preferences.
`So Tomioka is clear that the -- that the user
`profile is accessed in response to the second activity.
`And, in fact, Patent Owner did not dispute Claim 15,
`which provided updating of the user profile based on the
`second activity.
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`JUDGE MOORE: Counsel, one quick
`administrative question. I'm noticing that the headers of
`these slides in particular, the background images, differ
`somewhat from the background on the slides that were
`emailed to the Board.
`MS. HANSEN: I believe that's an issue of
`the printing, Your Honor, because these are -- these are
`the slides from which I made -- I can --
`JUDGE ARPIN: It's a -- Counsel, it's a
`question of shading. There is a kind of a semicircular arc
`stretching from one end of the header to the other, and it
`just, I guess, raised the question in Judge Moore's mind
`whether we have the accurate slides.
`MS. HANSEN: Yes, Your Honor, these are
`the accurate slides. I think it's a process of going to
`Adobe PDF and then printing out in hard copy. This is
`the -- this is the PowerPoint that the -- that Adobe copy
`was made from.
`JUDGE MOORE: Okay. So the
`PowerPoints you're presenting today are substantively
`identical to the ones that you emailed to the Board?
`MS. HANSEN: Yes, Your Honor.
`JUDGE MOORE: Okay. You may proceed.
`JUDGE ARPIN: Counsel, you have about
`two minutes left before you reach your ten minutes.
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`Patent 7,900,229 B2
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`There are two questions I'd like to ask you before you get
`there.
`
`MS. HANSEN: Okay.
`JUDGE ARPIN: The first is, one of the
`four points that you mentioned was the question of
`whether a single embodiment was shown in Tomioka or
`whether there were multiple embodiments and there is not
`a single embodiment.
`I think in the -- in the Decision to Institute,
`we said that there were variations on the single
`embodiment and not necessarily alternative embodiments.
`First, I would like you to comment on
`whether we are correct, that there are -- that variations on
`a single embodiment are not alternative embodiments.
`The second thing I would like you to get to
`before you run out of time is the Patent Owner's
`arguments regarding Claims 24 and 31.
`MS. HANSEN: Yes, Your Honor. We do
`agree with the Board that those figure -- that the figures
`relied on in Petition relate to variations on a single
`embodiment. And this issue was addressed in Nelson
`Products, which was cited by Board in Institution
`Decision at 12, where -- where the Board discussed how
`having different portions that describe different
`variations does not make it a different embodiment.
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`And, in addition, Kennametal addressed a
`situation where there were actually different
`embodiments, but the Board found that the disclosure -- if
`one of those taught one of ordinary skill to envisage the
`claims, that's sufficient.
`So if we agree that they're all in one
`embodiment in addition to the figures that the Board cited
`in the Institution Decision, we would submit that Figure
`28 also is a variation on the single embodiment.
`JUDGE ARPIN: And the elements -- the
`elements cited in your claim charts in the Petition, they,
`too, relate to a single embodiment; is that Petitioner's
`argument?
`
`MS. HANSEN: That's correct. Tomioka is
`a kind of -- is built like a kind of database and it discuss,
`in fact, extensible markup language in paragraph 119; it
`discusses MPEG-7.
`They are presenting a number of options
`that can be performed with the same system, for example,
`using filters. And that is an issue that's discussed in the
`Petition as well, that there is a filtering for multiple user
`preferences.
`
`JUDGE ARPIN: Counsel, you're into your
`rebuttal time, but I do want you to address Claims 24 and
`31. And, in particular, Claim 24, which is dependent
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`Case IPR2015-01031
`Patent 7,900,229 B2
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`from Claim 14, talks about updating the user profile in
`response to detecting physical location of the user's
`location trackable mobile unit.
`And Claim 31 talks about the program
`instructions -- Claim 31 being dependent from the other
`Independent Claim 26 -- talks about the program
`instructions are executable to select the data to be
`transmitted, at least in part, on the detected physical
`location of the second device.
`In particular, where does Tomioka teach
`detecting as opposed to receiving from the user's device a
`physical location?
`MS. HANSEN: Okay. Thank you, Your
`
`Honor.
`
`First, with respect to the detecting element,
`turning to Slide 60, Tomioka discloses a number of
`mobile devices that were known to be -- have detectable
`locations or location trackability as the term is used in
`Claim 24.
`
`A cellular telephone is one of them, and we
`submitted an expert declaration that this is something that
`is known to one of ordinary skill. And that's shown in
`Slide 61. And there were multiple kinds of --
`JUDGE ARPIN: Counselor, though, the
`fact that it was known to a person of ordinary skill sounds
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`more like an obviousness argument than an anticipation
`argument.
`
`How is that an anticipation argument as
`showing that it's disclosed either expressly or inherently
`in a single reference?
`MS. HANSEN: So, Your Honor, this isn't
`an obviousness argument, and it's not even an inherency
`argument. Inherency is when there is an element that's
`missing from the prior art, and you have to fill that in
`with the knowledge of ordinary skill.
`This is a quality that's known about
`something that is disclosed, and so this is much more akin
`to, for example, the Olympus decision in IPR2014- 00233
`where, for example, a slit is something that would be
`known to be able to emit steam; or like cases, like
`Toshiba, where an SEP is known to be -- to be a DSP.
`Here, cellular telephones were trackable --
`known to be trackable in two ways. One is by the fact
`that you're being passed off base station to base station.
`It is necessarily the case that a cell phone is trackable in
`that way.
`
`And another is the known quality of GPS.
`And both of these are acknowledged in the cited art of the
`'229 Patent. This is not something that's claimed to be
`invented.
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`JUDGE ARPIN: Counselor, though, isn't
`there a difference between me telling you where I am and
`you determining or detecting where I am?
`MS. HANSEN: I don't believe, in terms of
`the claim, that there -- and I don't believe there's the
`support in the specification for a difference between the
`device telling the system where it is and the system
`detecting where a device is.
`And, in fact, the '229 Patent, when it talks
`about how the location will be performed in the patent, it
`is through this common aspect of simply having
`triangulation capabilities at a base station or GPS
`capabilities. It isn't anything special about how the
`system will do that. But --
`JUDGE ARPIN: But, Counselor, I'm asking
`about the plain and ordinary meaning of the term
`"detecting," and I'm asking whether or not and where
`precisely in Tomioka it describes detecting.
`MS. HANSEN: So, Your Honor, I think
`detecting is disclosed if you -- if you look, for example,
`to Slide 62 and the functionality that we cited were the
`other portion of -- for -- in part, for the other portion of
`transmitting.
`
`The fact that Tomioka discloses -- first, the
`whole system is automated, right? The system is
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`watching the user. It describes, it is -- it is developing
`information based on its -- based on the behavior of the
`user.
`
`If we can turn for a moment to Slide 66.
`You can see here that -- the description of the software
`watching the user and the user description scheme being
`updated in a dynamic fashion, including for the user's
`behavior.
`
`And, in fact, Patent Owner Slide 18 talks
`about the ability to turn on and turn off automatic
`updating when you're traveling.
`JUDGE ARPIN: Counselor, on that Slide
`66, though, in the upper quote box on the right side of the
`screen, the second highlighted portion says the "user
`description scheme can be updated in a dynamic fashion
`by the user or automatically."
`Are you saying that "or automatically" is
`
`detecting?
`
`MS. HANSEN: The "automatically" is the
`watching and the automatic updating. So the system is
`watching the user, including their behavior, and then
`updating.
`
`JUDGE ARPIN: But doesn't that refer to
`the pattern and usage history, not necessary -- I don't see
`location there.
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`MS. HANSEN: Well, it also refers to user
`behavior here on Slide 66. And if you turn to -- back to
`Slide 62, the functionality of the claims to be able to
`provide to the user content that the user prefers based on
`their location -- and here it even talks about stationary
`versus traveling in a vehicle.
`One of ordinary skill reading that in
`paragraph 126 would understand that this system is not
`only able to detect location, it's able to track whether the
`user is stationary or traveling and thereby give the user
`their preferences based on that.
`One example that's given on Slide 69 is,
`"When traveling to a different city the user description
`scheme together with the system description scheme will
`permit reprogramming the radio stations."
`In another example, given in paragraph
`133, is a preference for using English that would only be
`used when you're traveling in Japan.
`JUDGE ARPIN: But, Counselor, that's kind
`of shoehorning all of that into “automatically,” though,
`isn't it? I mean, all of that could happen if I told you that
`I'm going to Japan or if I told you that I'm going to the
`Central Time Zone or I've told you I'm going to Chicago,
`instead of being in Denver.
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`MS. HANSEN: Your Honor, that's
`possible, but I think that would be contrary to the central
`teachings of Tomioka, whose whole aim is to automate
`these schemes on behalf of the user, and it discusses
`location as a form of filtering that's used on behalf of the
`user.
`
`JUDGE ARPIN: But, I mean, the goal and
`the intent of the application, yes, that all is -- that all
`plays into our analysis of it or the reference all plays into
`our analysis of it. But we have a rather strict standard for
`anticipation, that each and every element must be
`disclosed either expressly or inherently in the patent and
`in a single embodiment of the patent.
`Now, we've already addressed the single
`embodiment issue, but I'm trying to see whether we have
`an express or inherent teaching of detecting as opposed to
`something else.
`MS. HANSEN: And, Your Honor, I think it
`is both -- I think it is both express and inherent.
`If you turn to Slide 63, for example, the
`preference description that's described here distinguishes
`the set of preferences on behalf of the user, including a
`place and time.
`So, I mean, why -- it just -- it would be
`contrary to these teachings to require the user to tell the
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`device. If it's going to do that, then there would be no
`point in having these different preferences that are going
`to be used to direct content to the user.
`So I think the reference is clear and, in
`fact, much, much more detailed in its teachings than the
`patent is on how location will be detected and how
`content will be delivered.
`JUDGE ARPIN: Counselor, I've taken you
`way over your time.
`MS. HANSEN: Okay.
`JUDGE ARPIN: We're going to give you
`another five -- you're almost out of your time, but we're
`going to give you five minutes for rebuttal because I
`basically ate up your rebuttal time.
`MS. HANSEN: Thank you, Your Honor.
`JUDGE ARPIN: Thank you.
`JUDGE MOORE: Counsel for Patent
`Owner, you may proceed when you're ready.
`MS. ARNER: Thank you.
`I don't have the lights, the warning lights
`so I'm just making a note of the time. Okay.
`JUDGE ARPIN: Counselor, if you would
`li
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