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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`
`v.
`QUALCOMM, INC.,
`Patent Owner.
`
`Case IPR2018-01276
`Patent 8,971,861 B2
`
`Record of Oral Hearing
`Held: November 14, 2019
`
`Before MICHELLE N. WORMMEESTER, AMANDA F. WIEKER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`
`
`Case IPR2018-01276
`Patent 8,971,861 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`W. KARL RENNER, ESQ.
`TIMOTHY W. RIFFE, ESQ.
`RYAN CHOWDURY, ESQ.
`Fish & Richardson
`1000 Maine Avenue, SW
`Suite 1000
`Washington, DC 20024
`202-626-6447
`renner@fr.com
`riffe@fr.com
`
`ON BEHALF OF THE PATENT OWNER:
`
`EAGLE ROBINSON, ESQ.
`DANIEL LEVENTHAL, ESQ.
`CAT GARZA, ESQ.
`Norton Rose Fulbright US, LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701-4255
`512-474-5201
`eagle.robinson@nortonrosefulbright.com
`
`The above-entitled matter came on for hearing on Thursday, November
`14, 2019, commencing at 3:16 p.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`Case IPR2018-01276
`Patent 8,971,861 B2
`
`P-R-O-C-E-E-D-I-N-G-S
`JUDGE WORMMEESTER: Good afternoon. We have our final
`hearing in Case IPR 2018-01276, Apple Inc. v. Qualcomm Inc., which
`concerns U.S. Patent No. 8,971,861. I'm Judge Wormmeester. Judges
`Wieker and Howard are appearing remotely. Let's get the parties'
`appearances, please. Who do we have for Petitioner?
`MR. RENNER: Good afternoon, Your Honors. This is Karl Renner
`from Fish & Richardson joined by Tim Riffe and Ryan Chowdury from Fish
`& Richardson, also.
`JUDGE WORMMEESTER: Thank you, and who will be
`presenting?
`MR. RENNER: All of us should be presenting collectively. Tim
`will start off, I'll follow, and Ryan will follow up at the end. And for timing
`--
`
`JUDGE WORMMEESTER: Yes, what time?
`MR. RENNER: We thought we'd reserve 20 minutes.
`JUDGE WORMMEESTER: Twenty minutes, okay.
`MR. RENNER: And would you like a hard copy of the
`demonstratives?
`JUDGE WORMMEESTER: Sure.
`MR. RENNER: Okay. There you go.
`JUDGE WORMMEESTER: Okay, and for Patent Owner, who do
`we have?
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`MR. ROBINSON: Good afternoon, Your Honor. Theodore
`Robinson with Norton Rose Fulbright. With me today is Mr. Daniel
`Leventhal and Ms. Catherine Garza. Mr. Leventhal will be presenting, and
`we'd like to reserve 20 minutes for surrebuttal, please.
`JUDGE WORMMEESTER: Okay, great.
`MR. ROBINSON: And if Your Honor would like a hard copy of our
`demonstratives?
`JUDGE WORMMEESTER: Sure. Thank you. We set forth the
`procedure for today's hearing in our trial order, but just to remind everyone
`how this will work, each party will have 60 minutes to present arguments.
`Petitioner has the burden and will go first, and may reserve time for rebuttal.
`Patent Owner will then have the opportunity to present its response and may
`reserve time for surrebuttal, and both of you so far have indicated 20
`minutes.
`Please remember that Judges Wieker and Howard will be unable to
`hear you unless you speak into the microphone, and when referring to any
`demonstrative, please state the slide number so they can follow along.
`Please also remember that the demonstratives you submitted are not part of
`the record. The record of the hearing will be the transcript. We'll give you a
`warning when you are reaching the end of your argument time. Any
`questions before we proceed?
`Okay, great. I'll set the clock for you. Okay, so the clock is set for
`40 minutes, and you'll have a five minute warning, indicated by the yellow
`light.
`
`MR. RIFFE: Great, thank you.
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`JUDGE WORMMEESTER: When you're ready.
`MR. RIFFE: Good afternoon, Your Honors. My name is Tim Riffe,
`again, and I'm on behalf of Apple, the Petitioner. Here with me, again, is
`Carl Renner and Ryan Chowdury. We'll be discussing today some various
`aspects of the IPR related to U.S. Patent No. 8,971,861, which we'll refer to
`as the '861 Patent. Turning to Slide 2, Your Honors, during our presentation
`today, we plan to focus our time on several distinct issues that have arisen
`during the IPR, rather than repeating an element-by-element analysis of the
`claims.
`As such, we don't intend to address any undisputed issues, but
`unless Your Honors have questions about certain aspects of the claims that
`are undisputed, we'll certainly entertain those. I'll be providing, looking at
`Slide 2, a brief overview of the '861 Patent, and the petition grounds. I'll
`then address the Hjelt grounds as they relate to issues one and two.
`My colleague Karl Renner will then address the means plus function
`limitations recited in the '861 Patent as they relate to Issue 6, and then Mr.
`Chowdury will address the Hoffman grounds with respect to Issues 3, 4, and
`5 shown on Slide 2. Let's go to Slide 4, please. Here, we see the cover page
`of the '861 Patent, we're well familiar with it, at this point. We'll be
`discussing how the claims are directed generally to delivery of relative
`content to a mobile device of the user.
`Again, the IPR challenges all claims of the patent, Claims 1 through
`34 as being unpatentable under those Sections 102 and 103. Slide 5, please.
`As I mentioned earlier, generally, each of the independent claims is directed
`to the same general process of selecting content from a plurality of pre-
`defined content to deliver to a mobile device, at least partially based on
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`physiological state data collected from the user. The selected content is not
`to include physiological state data collected from the user.
`Let's turn to Slide 7, please, which provides an overview of the
`grounds with respect to the Hoffman reference, which Mr. Chowdury will be
`addressing later. Now, although the petition includes three grounds based on
`the Hoffman reference, today, we'll be focusing most of our time on ground
`1A, and the grounds of course 1B and 1C are addressed in the Petitioner's
`papers. Slide 8, please. This shows an overview of the Hjelt reference
`grounds, and I'll be discussing those with Your Honors in just a few minutes.
`So let's turn our attention now to Slide 9, which is Issue 1, and the
`question of whether the Hjelt reference discloses the selecting limitation
`recited in the independent claims of the '861 Patent. Let's turn to Slide 10,
`please. As we know, the selecting limitation recited in Claim 1, as shown on
`the left-hand side of Slide 10, highlighted for Your Honors, and this can be
`understood to have two main requirements. First, a selection of content
`from a plurality of pre-defined content in which the selection is based at
`least partially on physiological state data, and second, a requirement that the
`selected content not include the physiological state data.
`Now, Patent Owner, in its briefs, tends to distinguish the Hjelt
`reference content items from the claim pre-defined content on three main
`grounds. One, the Hjelt content is not pre-defined. Second, that Hjelt’s
`content items are not based on the physiological state data. And three, that
`Hjelt's content items include the physiological state data. And we'll address
`those briefly, and these items are, of course, addressed in the Petitioner's
`brief.
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`Case IPR2018-01276
`Patent 8,971,861 B2
`
`While we'll address each of the points, the second bullet point in
`Slide 10 is of particular importance, as it demonstrates, as we highlighted in
`our reply brief, Patent Owner's flawed claim interpretation for the selected
`content feature of the claims in attempting to distinguish the Hjelt reference,
`and we'll talk about that in a minute. Slide 11, please.
`Now, as understood from the petition, Hjelt discloses what's referred
`to as a destination. They label that destination 120. It can be a server that
`returns or transfers content items related to, for example, a user's exercise
`program to a terminal 10, which is equated to the mobile device. Now,
`examples of the content that's transferred from the destination to the terminal
`that the Petitioners described in the petition, which are recited in the Hjelt
`reference, are new exercise programs for the user, modifications or
`adjustments to existing exercise programs for the user, or new or adjusted
`goals for the terminal user, or what Hjelt refers to generally as other content
`generally related to an exercise program.
`Slide 11, please. I'm sorry, Slide 12. Now, as mentioned in previous
`Slide 11, the petition explains that Hjelt meets the selection requirement of
`Claim 1 since the reference discloses that the destination 120 can transmit
`content that's selected at least partially based upon physiological data
`received from the user. Now, in the Board's institution decision, the phrase
`“plurality of pre-defined content” was construed as “multiple content items
`that exist prior to receiving the physiological state data”. Consistent with
`that construction, the institution decision found that the Hjelt reference
`explains that content is selected after physiological data is received and
`processed, thereby meeting the construction of pre-defined. Indeed, as the
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`Board’s institution decision further correctly noted, Hjelt specifically
`discloses -- and I'll direct Your Honors' attentions to Columns 26, Line 65 to
`Column 27, Line 14 of the Hjelt reference.
`And as the Board noted in its institution decision, Hjelt notes that at
`that passage, that after performing one or more operations based upon the
`pieces of physiological information, one or more of the destinations may
`select or otherwise determine content to return or otherwise transfer to the
`terminal 10 based upon the operations performed by the destinations. So we
`have a nesting of the based upon physiological information in that statement
`of Hjelt.
`That selected content that is selected by the destination and then
`transmitted to the terminal can include a new exercise program or
`modifications or adjustments to an existing exercise program, so something
`that was already in existence prior to receipt of physiological state data, new
`or adjusted goals, and, as Hjelt tells us, this generally other content related to
`the exercise program.
`To be clear, one of the specific examples of the selections that the
`institution decision references, and from Hjelt, is the modifications or
`adjustments to an existing exercise program, as noted in Petitioner's reply
`brief.
`
`Given Hjelt's teachings of modifying existing exercise programs and
`goals, and the destinations then selecting those modifications for
`transmission to the mobile devices, that recognizes that some aspect of pre-
`defined data, i.e., the existing exercise program, existed prior to receipt of
`the physiological information. Slide 13, please.
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`Now, as I mentioned earlier, the Patent Owner response attempts
`numerous times to distinguish over Hjelt by arguing that the content items
`identified in Hjelt are not the claimed pre-defined or the selected content,
`since Hjelt does not teach that the content items are generated based on the
`physiological information.
`However, I think as the record shows and is
`clear, the requirement that the content be generated based on physiological
`state data is nowhere found in the '861 Patent, and certainly not in the '861
`Patent claims. As confirmed by, as we see on the right-hand side of Slide
`13, Qualcomm's own expert, Dr. Villasenor, confirmed that the claims do
`not require generation of content based on physiological state data.
`Slide 14, please. The Patent Owner appears to recognize in other
`parts of the Patent Owner response that the selecting limitations of the '861
`Patent claims do not require generation based on physiological state data.
`As shown on the right-hand side of this slide, 14, in the Patent Owner
`response, Patent Owner recognized that selection of content does not define
`the nature of the content, i.e. the generation of the content. Thus the
`Petitioner's reply pointed out that generation of the selected content is
`irrelevant to whether the mapping to Hjelt is proper, since again, Hjelt does
`not define the nature of that content.
`Let's turn our attention next to Slide 17. Slide 17 is directed to Issue
`2, which is whether Hjelt discloses or renders obvious the selecting
`limitations recited in the dependent claims, and we're going to be focusing
`our attention on Dependent Claim 3. Slide 18, please. Now, as we can see
`on the left-hand side of Slide 18, highlighted for Your Honors, Dependent
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`Claim 3 specifies that selection of content is further at least partially based
`on environmental labels.
`So we have at least partially based on physiological data, Claim 3
`then adds to it at least partially based on environmental data. Now, let's see
`what the Patent Owner argues with respect to this. They argue that the
`presence information that's described in Hjelt, which is mapped to the
`claimed environmental data, is not taught the reference for any type of
`content selection, but as the record reflects, that is simply incorrect.
`Slide 19, please. As described in the initial petition, Hjelt discloses
`that presence information is monitored when a user is performing a certain
`activity. Hjelt also discloses that while monitoring that presence
`information, the destination, which is doing the selection of content, when
`the presence information indicates that the user's performing a selected
`activity, will select content based upon that.
`For example, let's look at the highlighted portion of Hjelt on Slide 19
`that we reproduced. It teaches that a data manager can identify a location of
`a user and provide workout information based on the location of the user.
`Let's break that down further by looking at Dr. Anthony's testimony, Apple's
`expert.
`
`Dr. Anthony said that that establishes that the selection of content is
`based on presence information since the presence information can be used to
`determine when to select content based on when physiological information
`is transferred to the destination. So in other words, because Hjelt teaches
`that selection of content occurs, at least partially based on physiological data
`being transferred to the destination, and the transfer of physiological
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`information is at least partially based on presence information, for instance,
`based on the location of the user, then the selection of content that occurs
`once the physiological information is transferred would also be at least
`partially based on that presence information. And this interpretation of Hjelt
`is appropriate under the broadest reasonable interpretation standard that
`we're operating under for this particular IPR. Slide 20.
`JUDGE WIEKER: Let me ask you a question about that. Doesn't
`the reference talk about just the uplink based on presence information?
`Meaning, doesn't it talk about transmitting, for example, your location of
`being at the gym, from the mobile station -- the mobile device -- to the
`destination? But the reference doesn't actually talk about anything coming
`back, does it?
`MR. RIFFE: What happens, Your Honor, is when that presence
`information is transferred from the mobile device to the destination, that tells
`the destination to select content based on that physiological state data. So
`there is a time between the presence information being sent to the
`destination as well as the physiological information being sent.
`So again, we -- I think what got lost in the IPR, in my personal
`opinion, is the fact that the claims say, based at least partially on
`physiological state data for the presence information. So given that the
`presence information in some instances, according to Hjelt, is what kicks off
`that transfer of the physiological information to the destination, then
`certainly the resulting selection of that pre-defined content that is, again,
`based on the physiological information, which then is -- we can think of as
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`nested back to the presence information. Those certainly -- that selection
`then is based partially upon each of those aspects.
`JUDGE WIEKER: Thank you.
`MR. RIFFE: Slide 20, please. Now, Hjelt also renders the selecting
`limitation on Claim 3 as obvious, okay? As mentioned in the previous slide,
`Hjelt discloses that the destination monitors the presence information, such
`as the user's location while he or she performs a selected activity, say for
`example working out at the gym, and determines based on the user's location
`when to transfer physiological data to the location -- or, the destination,
`excuse me. Based on these descriptions, a person of skill in the art would
`have understood that a user's location can be used to determine the type of
`activity being performed by the user, which is then used to select the
`corresponding type of content based on the user's location. And again, it's
`shown on the right in Slide 20, Dr. Anthony's declaration testimony, again,
`Apple's expert, confirmed how user's location, for example, somebody is
`working out at the gym, could be used to select content that represents a
`workout procedure corresponding to a selected activity that the user
`performs at that particular location.
`In other words, an exercise program, a modified exercise program
`that's being monitored, perhaps by a trainer, they can then make
`modifications to that existing data, and then send it back to the user in
`almost real time, to some extent, as Hjelt contemplates.
`JUDGE WIEKER: And what would your understanding of “based
`on” be in these claims? I understand from your slides and presentation, you
`don't think it's generating. I think I saw somewhere in your papers
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`something like, it's “a consequence of,” is that what you understand “based
`on” to mean?
`MR. RIFFE: It can be, Your Honors, and then of course, it's “at least
`partially based on” is the claim language here. And so receipt of
`physiological information, then as Hjelt tells us at Columns 26, it says, after
`performing one or more operations based on the pieces of physiological
`information, okay? So there's an operation, excuse me, that can be
`performed based on that data received by the destination.
`One or more
`destinations may select or otherwise determine content to reach and/or
`otherwise transfer to the terminal based upon the operations. So again, it's
`really -- I agree, Your Honor, that the reference and the claims themselves
`can be, “as a consequence of.” I think that's synonymous with “based
`upon,” but that selection is being processed or performed in part due to
`receipt of the physiological information or the presence data, as set forth in
`Hjelt. With no further questions, Your Honor, I'll turn it over to Mr. Renner.
`JUDGE WIEKER: Actually, I do have a question regarding
`Dependent Claims 5 and 14. Patent Owner presented some arguments about
`those, which you did not address in your reply. Is the Petitioner's position or
`intent to just rest on the briefs -- the original petition?
`MR. RIFFE: Your Honors, I believe that we will rest on the briefs.
`We do believe that the obviousness argument with respect to Claims 5 and
`14 is still viable in view of the disclosure of the various sensors in Hjelt and
`their coverage, and understanding by a person of skill in the art, as to the
`applicability to the specific sensors that are called out in Claims 5 and 14.
`However --
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`JUDGE WORMMEESTER: Okay.
`MR. RIFFE: -- otherwise, we rest on papers.
`JUDGE WORMMEESTER: Thank you.
`MR. RENNER: I'm going to turn to Slide 38, please. And as
`foreshadowed, we will be talking about the construction of the means plus
`function claims in the petition, in particular, in our time together the next
`few minutes. Relating means plus function limitations of Claims 26 to 34,
`37 C.F.R. § 104(b)(3) is implicated, and it's that section that Qualcomm
`focuses on in contending that Apple's petition had failed to meet the burden
`of the petition that's appropriate to kick off one of these proceedings.
`In our time together, I want to draw your attention to really two
`items in response to this in the record. The first of which is that we believe
`that the petitions were proper, that they had sufficient information in them to
`satisfy 37 C.F.R. § 104(b)(3), and we'll walk through that by looking both at
`§ 104(b)(3), as well as some of the petition material.
`And the second is that the record before us today has even become
`more informed, and we believe Your Honors have every ability to review
`that record on today's -- as it stands today. And we'll point out some case
`law that helps us understand why we would say that, as well as the
`sufficiency of the record before us. If we could go to Slide 40, please,
`together.
`The first issue that, again, relates to 37 C.F.R. § 104(b)(3), and
`Apple's position that the petition was sufficient against this requirement, and
`on this slide you can see in the center of it, I'll say, we produced language
`from that section that the Petitioner must identify the specific portions of the
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`specification that describe the structure and material of acts corresponding
`each claim function when dealing with means plus elements.
`Now, if we look carefully at that, it's important to focus on what the
`requirement is. The requirement is to identify specific portions. Now, if we
`look -- I'd say let's look at the petition, if we could, Paper 2, Pages 7 and 8
`of it, just by way of example, and I just picked one. One of the means that's
`actually discussed throughout the proceeding is the selecting means.
`And so the paragraphs that bridge Pages 7 and 8, they are, we
`believe, illustrative of what the petition looks like as its treatment goes on
`means plus function. So I don't think there's anything special with this one,
`but here it is, and it demonstrates for us what is said on the means.
`In the means, it tells us there's a function identified, in this case, the
`function of the limitation is selecting content from a plurality of pre-defined
`content to deliver to the mobile device, at least partly based on the
`physiological state data collected from the user. But then, it goes on and it
`starts getting to the more interesting aspects. It says that corresponding
`structures for performing this function are, quote, host computer system 140
`and computer system 800 tells us that those contain processors, storage
`devices, input devices, output devices, you've seen this before. And it
`doesn't stop there.
`I think what we wanted to make sure Your Honors were aware of,
`and we focused our attention on, is this section, nor any of the other sections,
`stop right there. There's a string site that follows that, and when you look at
`it, it's only four sections of the relevant reference that are defined here.
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`Again, I'll remind the relevant section, your § 104(b)(3) tells us we need to
`identify specific portions of the specification.
`Here, there are four identified, three of which relate to algorithms,
`perhaps, because the first of which, in this case, Column 10, 15 to 33 is
`referenced. And if you looked at it with us, we took the time to do so, we
`find that that speaks to the notion that 140 is structure. The structure it's
`actually talked about in the sentence we said is corresponding structure, we
`point to 140 and that section actually refers to it. After that, there is cited to
`12 lines from Column 15, 14 lines from Column 17, and 18 lines from
`Column 19. And in those columns -- yes, Your Honor?
`JUDGE WIEKER: Would you agree that the corresponding
`structure needs to include an algorithm here?
`MR. RENNER: Yes, Your Honor. Yes.
`JUDGE WIEKER: And is it your contention that we should've been
`able to identify the algorithm through this string site?
`MR. RENNER: I would, Your Honor. That is our contention, and
`the reason for that contention is because we have a record that demonstrates
`that not only should or could you have, and that's our intention here, but we
`have opposing counsel at Qualcomm that did themselves. I mean, it's such a
`limited amount of citation -- sorry, Your Honor.
`JUDGE WIEKER: But before I move on to what Qualcomm did in
`its response, let's turn then to your mapping of this limitation. Can you show
`me where you mapped the algorithm that's purportedly included in this
`string site to the prior art?
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`MR. RENNER: Yes, thank you, Your Honor. It's our position that
`we actually mapped the prior art to this element in the functional sense, as
`well as the way it was set forth in the patent, and in each --
`JUDGE WIEKER: But we need more than the functional sense. We
`need to map the prior art to the specific structural algorithm, and it's unclear
`to me -- it's unclear to me how you could have mapped to a specific
`algorithm without identifying that algorithm in your papers.
`MR. RENNER: Understood, Your Honor. It's our position that, for
`instance, with respect to Claim 26, Petition 31 to 32, that'll give an example,
`for instance, of the disclosure in the references being actually applied to the
`subject-matter that is claimed and that is otherwise construed here.
`Now, we believe that's sufficient, but in addition, Your Honor, we
`would say that the record has developed throughout this proceeding, and
`even includes more information when you go to Petitioner's reply, and when
`we look at the case law that has developed, and we'll have to get to this in a
`minute, it tells us that as long as the Board -- and frankly, the record is such
`that can be discerned, what is the algorithm and how mappings go, then
`we've seen the Board actually take on, and construe, and apply the art to
`terms that are in question. The Mobile Media case is the case I'm referring
`to.
`
`JUDGE WIEKER: So it seems to me that the Federal Circuit is
`pretty clear that our first requirement is to construe the claims, and for
`means plus function claims, that requires identifying a structural algorithm,
`and then to apply the prior art to that structure. So I'm still looking at Pages
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`31 and 32, and I don't see where an algorithm is identified or that structure,
`in Hoffman, for example, is mapped to that.
`MR. RENNER: Your Honor, it's our position that the embodiments
`that are discussed in the entirety of the record, which comes through in not
`only here, but the Petitioner's reply, gives Your Honors and the Court what it
`needs to actually interpret the claims, because we've got -- for instance, in
`this instance, the element that we're talking about was construed by Patent
`Owner as the algorithm was the Hjelt Team 10 -- sorry, Your Honor.
`JUDGE WIEKER: But isn't it your burden in the petition to set forth
`how the prior art teaches the structure? So I'm looking at the petition, and
`I'm just not seeing a mapping of an algorithm to prior art, and I understand
`that in the reply, you did not make a mapping for Hoffman --
`MR. RENNER: Correct.
`JUDGE WIEKER: -- but even if, you know -- that's assuming we'd
`be willing to look to the reply. I'm not quite clear why we're looking beyond
`the petition when your burden was to set it forth there.
`MR. RENNER: Certainly. So, Your Honor, the 37 C.F.R.
`§ 104(b)(3) requirement is to identify the structure and algorithms that come
`into the claim for claim construction. So just to parse things, we believe
`that's been established, and that was established by the virtue of the material
`that was set forth on each of the claims' elements for means.
`In the section we're talking about, the illustration that I gave with
`respect to the selecting, we think drives that home. Once we have those
`identified, now it's a question of the prior art meeting the limitations, as you
`were talking about, and here is where we've seen the Court -- we've seen the
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`Board actually take on the mapping on the full record at the time the final
`written decision, because the threshold showing of what of the means has
`been established. And in fact, in cases where there was not even treatment
`of what was found to be means plus elements, and that's the Mobile Media
`case, again.
`JUDGE WIEKER: So in your reply, you cited the Samsung case.–
`My understanding is that's not a case where algorithms were at issue. Is that
`correct?
`MR. RENNER: It's a case where means plus were at issue, and the
`consequence of the case is, I think, exactly the same. There was no
`treatment in means plus of what the claim element was, and as a
`consequence, the record -- actually, in that case, the petition had no
`treatment on means plus, and yet, there was thought to be a sufficient
`amount of clarity as to what the claim meant by the time the decision in final
`was to be made that the Board actually went ahead and took on the means
`claim based on the record that it had before it.
`JUDGE WIEKER: So from my perspective, I'm seeing a little bit of
`a difference where you've given me a string site that purportedly shows an
`algorithm, but you haven't identified the algorithm, versus the Samsung case
`where the specification disclosed an off-the-shelf structure for performing
`the claimed function. Are you aware of any more applicable case law?
`MR. RENNER: Well, Your Honor, I would say that the case law
`that's on the record that's advanced not for us, but against us, the Syrinix
`case. It also was without means plus, but their case actually didn't have any
`disclosure, either. So we're distinguishing both cases on the same basis,
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`Case IPR2018-01276
`Patent 8,971,861 B2
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`which is that neither of the cases that we're looking at that are on the record
`had any treatment of means plus, and the Board in the case that -- the
`Samsung case, the Board was able to discern the meaning based on the
`record, and then apply the art consequently.
`So my answer to you straightforwardly is, there is not another case
`on the record that supports that proposition, but my response to your
`question or your comment on the case is, it is different in various respects,
`but one of those respects is, you have a means plus that is not defined, and
`with the record before it, the Board was able to ascertain the meaning of the
`claimed term in question.
`So not ne
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