Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 31
`Entered: December 7, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`GOOGLE LLC, MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`CAROLYN W. HAFEMAN,
`Patent Owner.
`________________
`
`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`________________
`
`Record of Oral Hearing
`Held: November 2, 2023
`________________
`
`
`
`Before JEFFREY S. SMITH, DANIEL J. GALLIGAN, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`
`ON BEHALF OF THE PETITIONER:
`
`
`CARRIE A. BEYER, ESQ.
`KRISTIN L. STOLL-DEBELL, ESQ.
`Faegre Drinker Biddle & Reath LLP
`1717 Main Street, Suite 5400
`Dallas, Texas 75201
`(469) 357-2500
`
`
`
`MATTHEW A. SMITH, ESQ.
`ANDREW S. BALUCH, ESQ.
`Smith Baluch LLP
`1100 Alma St. Ste 109
`Menlo Park, California 94025
`(202) 669-6207
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`STEPHEN UNDERWOOD, ESQ.
`JASON C. LINGER, ESQ.
`Glaser Weil Fink Howard Avchen & Shapiro LLP
`10250 Constellation Blvd, 19th Floor
`Los Angeles, California 90067
`(310) 553-3000
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`
`November 2, 2023, commencing at 1:00 p.m. Eastern Time via video
`conference.
`
`
`
`
`
`
`2
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`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE GALLIGAN: Thank you. Good afternoon. This is
`Administrative Patent Judge Galligan. And with me are Administrative
`Patent Judges Peslak and Smith. This is an oral argument for six IPRs.
`There's IPR 2022-01188, and '89, and that concerns patent 10,325,122. IPR
`2022-01190 and '91, concerns patent 10,789,393, and IPR 2022-01192 and
`'93 concerns U.S. Patents 9,892,287. The Petitioners are Google, LLC and
`Microsoft Corp. The Patent Owner is Carolyn W. Hafeman. May we have
`appearances starting with Petitioner, please? Counsel, I think you're muted.
` MS. BEYER: Apologies, Your Honor. Carrie Beyer on behalf of
`Petitioner and with me today our co-counsel Andy Beluch, and we have on
`the public line co-counsel Matt Smith and Kirstin Stoll-DeBell.
` JUDGE GALLIGAN: Thank you. For Patent Owner?
` MR. UNDERWOOD: Thank you, Your Honor. For Patent
`Owner, this is Stephen Underwood, and with me who will be presenting the
`argument is Jason Linger.
` JUDGE GALLIGAN: Excuse me, can you repeat that name?
` MR. UNDERWOOD: Yes. This is Stephen Underwood for
`Patent Owner, and with me and who will be presenting the argument is
`Jason Linger.
` JUDGE GALLIGAN: Yes, sir. Thank you. Okay. In the hearing
`order that we issued in these cases, we granted each side 60 minutes of
`argument time for 1188, '90, and '92 cases, even numbered cases, and we
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`granted each side another 60 minutes for the odd numbered cases 1189, '91,
`and '93.
`Our first priority is your right to be heard. So if at any time during
`the hearing you encounter technical or other difficulties you feel undermine
`your ability to adequately represent your client, please let us know
`immediately. And you may do this by contacting the team who provided
`you with the connection information. If you may drop off, please note what
`was being discussed so we can figure out where to pick up again.
`Please mute your microphone and only unmute when speaking.
`Please identify yourself when you speak so that the transcript accurately
`reflects the speaker. When referring to an item in the record, please do so
`with specificity so that the panel can follow along. And for clarity, in the
`transcript, we have all the papers and we have the parties' demonstratives.
`Because there are several cases, please identify the case. And if you want to
`refer to the for the odd numbered cases to the 1189, that's fine. You can
`refer to one, assuming they're the same argument, you can refer to one
`instead of three.
`Finally, there is a public line for this. There's nothing confidential in
`the record, that shouldn't be a problem. So, Petitioner, we got an email
`saying that the parties had conferred and that Petitioner planned to present
`the odd numbered cases, first, the Hafeman prior art first, the alleged prior
`art; is that correct?
` MS. BEYER: Yes, Your Honor. That's correct.
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
` JUDGE GALLIGAN: Okay. And then, Patent Owner, are you
`planning on then responding to that argument before moving on to the even
`numbered cases?
` MR. UNDERWOOD: Yes, we will follow the same order.
` JUDGE GALLIGAN: Great. Okay, so we'll start with Petitioner
`and the odd numbered cases. And would you like to reserve time for
`rebuttal?
` MS. BEYER: Yes, we would, Your Honor. Twenty minutes,
`please.
` JUDGE GALLIGAN: Okay, please keep time. I will give you a
`heads up when you're at 40 minutes, and I’ll get my stopwatch going. And
`then Patent Owner, if Petitioner has a rebuttal, you may have a surebuttal,
`and I'll ask you about that when you present. Petitioner, you may begin.
`Actually, I have a question right off the bat for you. So, in the DI, we
`mentioned that, let me see, let me get the right briefing. We said that on
`page 19 of the 1189 DI we said that if we determine the claims the '122
`patent are entitled to the benefit of the 2004 filing date of the '332
`application, then the pre-AIA versions of 102, 103 apply and then Hafeman
`would not -- Hafeman 298 would not qualify as prior art under any category
`in pre AIA 102. And therefore, we wouldn't -- if we decide that we wouldn't
`need to reach the Hafeman 298 and Chiu ground; is that correct?
` MS. BEYER: Yes, that's correct, Your Honor.
` JUDGE GALLIGAN: Okay, thank you.
` MS. BEYER: Thank you. Okay, starting with slide 2 today, Your
`Honors, a summary of the topics for today's hearing. As we discussed,
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`where the priority break IPRs first and then the non-break IPRs. First, I'll
`start with a quick overview of the six IPR proceedings. As Your Honor
`noted, there are six IPRs here for three patents. One relies on a priority
`break, the other does not. For the priority break IPRs, the primary issue is
`anticipation. For the non-break IPRs, the primary issue is obviousness.
`Petitioners have requested consolidation of each pair of IPRs to promote
`administrative efficiency and to ensure that the final written decisions for
`each patent are issued together.
` JUDGE GALLIGAN: Counsel, this is Judge Galligan. Just as a
`reminder, please mention the slide number. I know we're looking at it. Just
`make sure for the record. Thank you for the transcript.
` MS. BEYER: Thank you. I was just looking at slide 3. I
`apologize. Moving on to slide 4, Your Honors. Slide 4 shows claim 1 of
`each patent. While there are minor differences in the language amongst each
`of the claims 1, for purposes of these proceedings, there is no meaningful
`difference between the challenge claims. And other than their claim, the
`challenged patents share a common specification. So we will be referring to
`papers from the 1189 proceeding regarding the '122 patent.
`Turning up to slide 5, the arguments are the same across each set of
`proceedings. The Patent Owner did not separately argue any of the claims,
`as shown in the tables of contents for the Patent Owner responses on pages 5
`and 6 of the slides. For this reason, all claims will rise or fall together. I'm
`going to jump to slide 14 and jump right into the merits of the priority break
`IPR.
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`For the priority break IPR, each of the petitions presents two
`grounds. We're focusing on ground 2 here today. For ground 2, there is no
`need for claim construction. There are no issues regarding missing
`limitations. This is an anticipation ground, so there is no need to consider
`secondary considerations. We've indicated a solid line on this slide 15, and
`that's where the board can stop as we discussed a few moments ago. There
`is no situation in which ground 1 but not ground 2 would succeed.
`Turning to slide 16, ground 2 presents an argument that claims 1
`through 7 are anticipated by Hafeman 670. Hafeman 670 is a publication of
`an earlier application by the Patent Owner. Turning to slide 17, the
`threshold question of the priority date is dispositive here for ground 2. The
`Patent Owner has conceded that the Hafeman 670 publication anticipates the
`challenged claims if they are not entitled to the claimed 2004 priority date of
`the '332 application. And as explained in the petitions, replies and
`supporting declarations from Dr. Zadok, they are not. Turning to slide 18.
`Just a quick overview of the patent family. The three challenged patents are
`shown at the bottom, and as we can see, each of the challenged, excuse me,
`each of the challenged patents on their faces claims priority to a 2002
`application at the top of the slide and to a 2004 CIP application through a
`series of applications.
`Turning to slide 19, claims are not entitled to claim priority to an
`earlier filing date unless the claims are disclosed in the earlier application as
`required by section 112. This includes written description. The written
`description of the earliest application to which priority is claimed must
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`convey with clarity to a person of skill in the art that as of the filing date
`sought, the inventor was in possession of the invention.
`Turning to slide 20, here, all of the challenged claims require
`initiating or changing return recovery information remotely. Therefore, the
`earlier application, in order to provide written description support and
`support a priority claim, must provide written description for both remote
`initiating and remote changing. Turning to slide 21, briefly, in the surreply,
`the Patent Owner argued that the Petitioners failed to meet their burden to
`show lack of written description. That is not quite what the law requires.
`When we look at the Federal Circuit's Presidential PowerOasis case, we can
`see that once the Petitioners carried their burden to show that the cited
`references were invalidating prior art to the challenged claims, the burden
`was on the Patent Owner forward with evidence to prove entitlement to
`claim priority to an earlier filing date. But even if the burden had been on
`the Petitioners to come forward with evidence to disprove the priority claim,
`the Petitioners have shown that the 332 application does not convey that the
`Patent Owner had possession of the remote initiating limitations of the
`challenged claims.
`Turning now to slide 22, the first application in the chain, the '827
`application filed in 2002, disclosed a program that would display return
`recovery information on a screen. The application describes installing a
`program and is part of the installation process. Return recovery information
`is locally input into the program by the Patent Owner. The owner is
`prompted to provide some return recovery information for display as part of
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`the installation program. For example, the contact name, the phone number,
`an email address, and other information also can be included.
`This installation process created a return recovery display screen,
`inputs the owner information, and created an administrative section that
`could be accessed by the owner locally to change return recovery
`information. The Patent Owner admits the '827 application does not contain
`any written description of remotely initiating or remotely changing return
`recovery information, so the challenged claims cannot claim priority to the
`'827 application. Turning to slide 23, the Patent Owner instead on the next
`application in the chain, the '332 CIP for the priority claim. Exhibit 1016
`illustrates the differences between the '827 application and the '332 CIP
`application where the ability to remotely change the locally input
`information was added.
`We turn to slide 24. The four corners of the '332 CIP application
`does not provide adequate written description support for the remote
`initiating limitation as discussed in detail in the petition reply and supporting
`declarations. The first application disclosed local initiating and local
`changing, and the CIP added remote changing but not remote initiating. The
`feature disclosed in the ’332 application allowed the owner to initiate a
`download of changes to eliminate erroneous or misleading return recovery
`information and replace it with correct recovery information. This is remote
`changing. Additional references to return recovery information and remote
`communication in the '332 application relate to changing return recovery
`information already stored in local memory.
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`

`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`Turning to slide 25 between the Patent Owner response and the
`surreply, there are four concepts that Patent Owner alleges provide support
`for remote initiating. I'm going to walk through each of these concepts now
`and show why the original specification does not convey that the inventor
`had possession of remotely initiating return recovery information. The first
`argument is a statement that the invention allows the owner to initiate a
`download of changes. The board correctly found in the institution decision
`that this language does not support the remote initiating operation.
`The claims require remotely initiating return recovery information,
`not just changing, downloading changes, or even beginning to change the
`return recovery information. Here we note that the recent decision from the
`Supreme Court in Biden versus Nebraska is somewhat analogous. In that
`case, the Secretary of Education attempted to end the program and call this
`destructive action a modification. Here, the Patent Owner is seeking to
`create something from nothing and equate this creation with merely
`changing. Both actions creating and ending exceed the plain and ordinary
`meanings of changing and modifying.
`Moving on now, from slide 26 to slide 27. The Patent Owner argued
`in the sur-reply that Dr. Zadok agrees with their position that initiating return
`recovery information occurs if changing is started but not completed. He
`does not. The statements in the deposition and the newly cited article both
`relate to initiating actions, not initiating information. Initiating a download
`of changes is starting the action of downloading changes, not initiating
`return recovery information. Turning to slide 28, Dr. Zadok even more
`clearly explains in his rebuttal declaration that he does not agree that
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`remotely initiating means beginning to remotely change the return recovery
`information. The claims require remotely initiating or changing return
`recovery information. These are separate limitations.
`Turning to slide 29, we're looking at the context of Dr. Zadok's
`testimony regarding the new article where he explains how a background
`process could initiate the conversion of files. He's talking here about
`starting a conversion process which again, is different from initiating
`information. Moving on to slide 30, Patent Owner's argument regarding
`beginning the process of changing return recovery is inconsistent with the
`claim language and does not provide support for remotely initiating return
`recovery information. Now, moving on to the second argument regarding
`controlling the recovery screen displayed by remote. Moving to slide 31.
`The Patent Owner's second argument also fails. First, as the board suggested
`in the institution decision, controlling information that is already being
`displayed does not support remotely initiating. As to the specific portions of
`the specification relied by the Patent Owner regarding controlling. Again,
`these relate to changes.
`You can see in the highlighted portions of this slide 31, and the single
`paragraph cited in the Schaefer declaration, shown on the right is conclusory
`and unsupported. Again, looking at the highlighted words, we can see that
`the examples we provide do not discuss remote initiating. Moving on to
`slide 32. Instead, the examples that Dr. Schaefer provided control,
`eliminating, replacing, changing, deleting, all related to changing
`information that is already being displayed, not sending wholly new return
`recovery information from the remote computer in the first instance.
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`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`Turning to slide 33. The Petitioner's position is supported by Dr.
`Zadok's rebuttal declaration explaining that eliminating return recovery
`information and replacing it with other return recovery information is
`changing, not initiating, as Dr. Schaefer also testified in the district court.
`Turning to slide 34. This slide shows the excerpts the Patent Owner relies
`upon in context. In context, we can see the specification is discussing
`remotely making changes to the return recovery information, not remotely
`initiating. Turning to slide 35.
`Similarly, none of these excerpts relate to remotely initiating. They
`all relate to previously existing return recovery information. On the top left
`(inaudible) to control over display of information that was interactively
`inputted by the owner. There's no reference to remote. On the bottom left,
`this is controlling whether the program is enabled, which is first mentioned
`in the surreply. This does not relate to initiating changing. On the top right,
`the excerpt discusses overriding information being displayed. Overriding
`information, again, is changing. And when we look at the Schaefer
`declaration excerpt on the bottom, this is not supported by the specification
`and conflates separate limitations of initiating and changing.
`Turning to slide 36, the portions of the specification regarding
`control recovery screen's existing, return recovery information do not
`provide support for remotely initiating return recovery information. Nothing
`conveys the Patent Owner had possession of remote initiating. Now,
`moving to the third argument regarding interactively entering, changing, and
`updating return recovery information at any time or "on the fly.".
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`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`The Patent Owner agrees that interactive does not mean remote.
`Instead, they're relying on interactive together with other actions. Looking
`at the excerpts shown on this slide, when we look at the top left, this first
`clip was in the 2002 application and it discusses displaying return recovery
`information entered by the owner. It says nothing about remote. The second
`clip relates to replacing information. That's changing, not initiating. The
`third clip was in the 2002 application as well, locally inputting return
`recovery information. Also, contrary to Patent Owner's argument, Dr.
`Zadok's testimony does not support the new argument that the phrase "on the
`fly" discloses remote initiating. As shown on the right, he said whenever,
`not wherever.
`Turning to slide 38. The cited portions of the specification were in
`the 2002 application, which the Patent Owner does not disclose remote
`initiating or remote changing. The Patent Owner's reliance at any time and
`"on the fly" is misplaced. I'm going to pause here for a moment to look at
`Exhibit 1026. So switch to -- Exhibit 1026 is part of a file history from the
`European Patent Office when we look at pages 287, 288 of Exhibit 1026. In
`response to an obviousness rejection based on the publication of the 2002
`application, the Patent Owner told the European Patent Office that
`references to changing return recovery information "on the fly" and at any
`time do not suggest remote access. We can see this at the bottom of page
`287 and then over onto the top of 188.
`So "on the fly" and did any time do not support remote initiating.
`Moving on to slide 39, the portions of the specification regarding
`interactively editing at any time and "on the fly" don't provide support for
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`remotely initiating. Again, they do not convey that the Patent Owner had
`possession of remotely initiating. Moving on to the fourth and final
`regarding providing new return recovery information that did not previously
`exist on the computer, I'll move to slide 40. The Patent Owner's fourth
`argument also fails. The '332 application doesn't disclose remotely
`providing new return recovery that did not previously exist. The disclosure
`relied upon instead refers to remote communication generally or remote -- or
`to changing does not convey possession of remote initiating.
`Turning to slide 41. The Patent Owner is relying on hypothetical
`examples that are not part of the specification. There is no disclosure in the
`specification of the '332 application of a situation where the owner has not
`yet set return recovery information. Instead, the specification discloses that
`entering this information is part of the installation process. There is no
`disclosure of an employee deleting information after it has been locally
`entered by the owner. The Patent Owner's arguments are not based on
`what's actually within the specification. This is not an obviousness analysis
`or an inquiry into whether what a person of ordinary skill in the art could
`have figured out how to do or how they might have changed what is
`disclosed to arrive at something different. Here we're focused on what is
`disclosed within the four corners of the application.
` JUDGE SMITH: Let me ask you about that, Counsel. This is
`Judge Smith. So the spec discloses initially entering the ownership
`information, but a lot of times the owner would just skip over entering the
`return information. Just say there are buttons on these screens that they skip
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`or they just don't enter it. Why wouldn't that be within the scope of what a
`person of ordinary skill would understand?
` MS. BEYER: The specification doesn't disclose a situation where
`the owner is able to skip over providing return information during the
`installation process.
` JUDGE SMITH: Let me try -- I understand that, but let me -- let
`me phrase it differently. Does the specification require this information to
`be input into the computer?
` MS. BEYER: It does.
` JUDGE SMITH: And what does it say that makes it a
`requirement in the spec?
` MS. BEYER: Find the citation here. When we look at Exhibit
`1012, the '332 application, page 25 of the exhibit starting at -- this is page 19
`of the application. It says that the owner will be prompted to provide, sorry,
`during the installation process the owner is prompted to provide some
`recovery return information that the owner would like to display, for
`example, phone and email information. And this installation process then
`creates this return recovery display screen that will be displayed later.
`Also, if we look -- if I go ahead to a couple of slides here to my slide
`43. When we look at figure 2, we can see what we have highlighted here in
`green. That the recovery name, the phone number, and the email each are
`required information during the installation process.
` JUDGE SMITH: I see. So there's some that says required, some
`not required?
` MS. BEYER: Correct.
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
` JUDGE SMITH: Why wouldn't the initiating apply to the
`information that's not required? Because you're not -- you're not, in that
`case, you're not changing information that already exists. You're initiating
`information that doesn't exist.
` MS. BEYER: Adding this return recovery information as a whole
`is a required step during the installation process. The specification --
` JUDGE SMITH: Not as a whole, I mean, there's some
`information that's required and some that's not required. So as a whole,
`some of it is required and some of it is not required. So, I mean, to the
`extent that a user initially enters the required information and then
`subsequently enters the not required information. That would be initiating
`the not required information.
` MS. BEYER: I don't agree with that interpretation of it. The
`return recovery information is discussed as a whole. There's either return
`recovery information -- you're required to put return recovery information
`into the program when you -- if you change your mind later and want to add
`something else and have your return recovery information include additional
`information, maybe you put your first name in and now you want to add
`your last name. Maybe you put your phone number in and now you want to
`add the area code. You're not adding new return recovery information.
`You're changing what you've chosen to input. (inaudible).
` JUDGE SMITH: That's what I don't understand. That's what I
`don't understand. I mean, you're not changing anything that's been input.
`You're adding to what has already been. What's being changed if you add
`the organization name or an additional address? The original information
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`

`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`isn't changed. I guess when you use the word changing, what's being
`changed?
`MS. BEYER: We're changing what exists as a whole for the return
`recovery information and we're changing what's displayed. The claims don't
`discuss, you know, adding or displaying, you know, a portion of the return
`recovery information. So when I look at, for example, you know, Exhibit
`1016, which is our comparison of the two applications and, you know,
`paragraph 6, we're focusing -- return recovery information into the program.
`If later you want to change what is displayed from one thing to something
`else, that's changing the return recovery information that has been locally
`input into the program. You were displaying one thing, you've made some
`changes, and now something else is being displayed.
`Go back to slide 41. I'd also like to note that contrary to the
`argument, the Patent Owner surreply, Dr. Zadok did not agree with Patent
`Owner's new argument that adding a logo to existing return recovery
`information supports remote initiating. Turning to slide 42, and we're
`looking at the specific portions relied upon by the Patent Owner again. Our
`clip here on the left relates to changing. Our clip on the right from the 2002
`application does not relate to remotely initiating either. Here, nothing that
`they've cited demonstrates possession of remotely initiating. Turning to
`slide 43. Excuse me. Again, this is -- we're showing changing updating
`return recovery information to include additional kinds of information as
`we've just discussed, not adding returning recovery information where there
`was none.
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`IPR2022-01188, IPR2022-01189 (Patent 10,325,122 B2)
`IPR2022-01190, IPR2022-01191 (Patent 10,789,393 B2)
`IPR2022-01192, IPR2022-01193 (Patent 9,892,287 B2)
`
`
`The specification discloses that return recovery information is added
`during installation of the program can later be changed, but it must be there
`to begin with. Dr. Zadok did not testify that adding a logo to existing return
`recovery information -- initiating return recovery information. Moving on to
`slide 44. What we've shown that none of the four concepts that the Patent
`Owner relies upon for alleged support provide sufficient written description
`for the remotely initiating limitation. Nothing in the '332 application
`conveys that the inventor had possession of an invention in which remotely
`initiating existed.
`Briefly discuss with respect to ground 1, this is an obviousness
`ground, and the board does not need to reach it after reaching its decision on
`ground 2. So for ground 1, we will rest on our papers at this point. Before
`seating the podium to the Patent Owner, I want to very briefly comment on
`the Sotera (inaudible). The Patent Owner's argument is objectively baseless,
`at least because the board said that any dispute regarding the scope or
`alleged violation of the stipulation should be addressed by the district court.
`The district court found that LG was using system references that could not
`be raised in an IPR. There is no precedent for terminating a proceeding
`where there was a good faith dispute over the scope of a stipulation, whether
`it extended to system art that could not be raised in an IPR. And with that,
`I'll reserve my remaining time for rebuttal.
` JUDGE GALLIGAN: Thank you, counsel. You used 31 minutes.
`Okay, Patent Owner, you have 60 minutes. Would you like to reserve any
`time for surrebuttal if Petitioner has a rebuttal?
` MR. LINGER: Yes, I'd like to reserve 20 minutes, please.
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