suggests that we sit outside washington from time to time so once a year we decide to go to another city and give or go we accepted invitations  various denver into t's voting itself i'm sure and we decided to come here and we're very pleased to be here we have four cases on the calendar this morning indicating the diversity of our jurisdiction first cases a patent case from a district court then we have a customs classification case from the court of international trade we have a patent office appeal and we have an appeal from the merit systems protection board a government employee case that is pro se and submitted on the briefs and therefore will not be argued we are pleased to have sitting with us today judge marshall krieger district judge from the district of colorado could refer to as  the first case is stored value versus cuds activation twenty eleven fifteen twenty eight mr  peterson please a court good morning your honor smart peterson on behalf of the appellate court activation runners this is a case that involves the prepaid card industry and specifically a method of processing purchase transactions which  secure manner the method utilizes three codes with three distinct functions the first being a customer code well that's what your claims your new claims twenty and twenty nine recite three codes clerk authorization code in the independent claims one in ten and you will then find those codes also in the defense perhaps two that's true in the general authorization code you'll find in claims original claims twenty and twenty nine and i  with one call exactly but where in the specifications for an original claims three of them set out to get your honor i believe that there is a section where there is the identification of the terminal because i see reference to clerks office and customer authorization codes but i don't see three together and that seems to be to him is one skill the are clearly identified a code which is entered that is a series of numbers or letters which is which establish the communication link between the register and the host and indicated that commit no communication could indeed take place without in fact the concessions were made by s b s is expert also indicating that that without a code that it just makes sense without a code which identifies which register is calling and where and what merchant is calling and what killer register is calling that there would be that any communication could take place certainly the host as we know has to return information indicating that that card is accepted or not or whether there is sufficient value on those cards and obviously that communication link has to be established the those killed  eight five nine patent also identifies a terminal i d and specifically sets for that so when when the when the claims were amended twenty and twenty nine and the the was anything having to do with a new general or authorization code but when the independent claims roamin that that we placement was not made so you ended up with three different codes and a special occasion only goes to t all there and i believe that the claims twenty and twenty nine originally indicated that with a dependent claim that you could have a code theoretically which would perform both of the important functions of the general authorization code which the original examiner and the resemblance found was simply to start to see or to make the system available for use and then but continued to indicate that that clerk authorization code was the novel subject matter it wasn't the original examination and wasn't the reexamination as well found to be a novel subject matter now what about the empty manual is prior anticipatory for one or the  the micro track manual we believe this latest is not in any way shape or form prior art and b and i want to make sure i'm very clear with this is that what the court references and what s b s references is two different versions of my contract there is a version seven reference which is before you there is a reference with then the opinion of the of the district court which one is no i don't think so your honor i think that what you have is if you look at obviously to be a printed publication under one hundred two you have to have both the printed document as well as evidence that it was publicly disseminated with respect to version t no not and i want to get to version seven and then you asked the same question is there a printed publication well the ritz there is a printed publication that exists and it's you know the version seven is there any testimony that version seven was in any way disseminated prior to the critical day or the application date under a and the answer is not mr erlich never testified nor is there any comment by the court or s b s that version seven was any way ever disseminated to the public into copyright notice stand for something for corroboration number one it's not just someone say so you've got a printed document that has a date on it   i think it may be evident that the document was printed in ninety four ninety five but it certainly has no effect on whether it was disseminated that is was it sent to anybody i mean that  match that they tend to corroborate each other none of the cases that irene sees that you cited to have precisely that factual situation they might have oral testimony or they might have an individual document but patent under a clear and convincing standard without the document every being in record did i know of nothing like that and so when you take that combination when you take a combination of version two and seven you know go back to the test is there a printed document well there is there is a printed document in the combination that's version seven but is it really the document that you know that we're looking at that was prior will no there isn't but let's you know given the benefit the down say ok are there is a printed document but is there any evidence as to the dissemination besides the naked testimony of mr klein and who says that i disseminated version two whatever it might be and the answer is there's absolutely no corroboration that that version t or seven was ever disseminated the public all they point to is this copyright date that's on a version seven well the copyright gives you is indicated just a second ago i don't believe that has ever provided any evidence that version or that that document was ever actually sent to anybody and one thing i want to point out is this is this isn't a surprise due to the there was a subpoena issued at the time  testimony was given many years ago at this point if a subpoena specifically asked for do you have any information any and all information that would show that these documents or this document is my tracks manual was sent to anybody and his response when questioned about that was specifically i don't have any documents at all except this version seven and not only that i went to my customers and they don't have anything else besides version seven either  that afternoon your honour's may it please the court my name is alan fish i'm enjoying the my colleague bill say quote we have the honor and privilege of representing store value here today i'd like to begin by addressing a few of the questions that were already posed by the panel first thing i'd like to do is touch on what we just were hearing dialogue about which is whether or not the micro tracks version seven manual constitutes prior art it does and it's unequivocal that it does there are two ways to break this down i'd like to begin with the statute which this issue conce three of the transcript of his deposition he references exhibit four exhibit four is version seven of the my protract manual and he indicates in the question and all of the stores that you sold the software to received exhibit four which we now know is the version seven of the micro tracks manual as well is that correct answer from the witness yes correct so there he validates what we need to see out of hundred two a thirty five u s c one zero two a in particular the printed publication component is the piece that we are relying on to invalidate the patent the obligation under one of two a print publication is that the publication occur and exists before the critical date and that it be disseminated we now have so little what about the dissemination because looking at the record the manual was provided to customers and stores and provided within  bundled with the software that was provided to stores is that sufficient for public dissemination can would somebody that that's not privy to those transactions have access to the documents but public dissemination here your honor it is sufficient and it's sufficient because we don't define public in the generic sense to mean anybody on the street we define it to mean people outside of the corpus of individuals that would have knowledge or who authored the document so the moment this goes out to a store it begins to meet that test for public dissemination in other words if a thesis in a foreign university is open that's that meets the test of that well that if this is available with with the in subject matter when it's purchased listening that would meet the public and they'll ability reclined it your thesis example your honor you know is one of the classic examples in the print publication dialogue here i think we go even further than anything like that though quite frankly because we're talking about software that substantial the manual itself is three hundred eighty one pages so this is not a piece of software that necessarily just put into a machine and goes from there there has to be a configuration component to it there are other aspects to the point of sale register the cash register that have to be involved in this process so this is not like just loading something on the p c and throwing the manual in the desk or the closet we have people who needed to understand how to configure the system to be able to use it and we know it was used so those are the two obligations we have under one of two at a vis red herring of corroboration it's always been an interesting one to me because corroboration is not required under one hundred two way the idea of corroboration generally in one hundred two was we now speaks to the idea of a self interested party identifying for example that they have a prior use defense or non sale bar defense that exists well before anyone would be able to demonstrate it under that step from stance under that rubric we invite we have demand in fact under the case law that that be validated through some other form of evidence that's not what's required under one of the two a but even if it were even if that were the standard which would be setting a very high standard for print publication if that were the new one that would be made in this case that test is still met because we have the corroboration of the gentleman who wrote the manual who was a co founder of the company and who wrote the software you saying the date on the document wouldn't be enough i think that the date itself is self authenticating your honor i'm suggesting if this court requires a new standard of establishing corroboration were and didn't prevail actually require it that even under that test which would be a new test or honor that that standard would be met by the case here the facts  suggest and teach that we've gone well beyond anything that would be necessary under one of two way but what about the written description issue mr peterson said all three of th what terminal i d s purpose in the pattern is it's to identify which cash registers the data is being sent from and that's an important piece of data because say in a multi lane a multi checkout lane environment like a safeway or a target a wal mart any big grocery store where there can be ten twenty thirty different lanes those will all have separate cash registers which are really computers and they all need to be uniquely identified so the transactions flow back and forth to the person who's actually stand the set that defines those two elements you honor that is not an independent of the what is the meaning of the claims which are sites three of them as if the different i don't believe that they are different so i start with that your honor i believe that what those claims are seeking to do first in the amendments was to try to get past the prior art that was what it looked like their first attempt was it was a calculated louver i believe your honor where they thought they'll live to fight again another day with today being that other day that if they can you just get out of the patent office with something they can keep their case alive and then argue the point later that there's no support in the specification for the amendment they may and so into that environment terminal id can't be a terminal ideas of static number it doesn't serve the purpose which we know from the claims themselves that the general authorization code is to initiate communication with the host to initiate communication with the hopes a terminal id doesn't do that now we have testimony that's i think a very interesting your honest sober hero so we knew he had a communication is different from authorizing access to a certain base which is what the second in the third limitations are all those limitations then speak to what happens as a result of being able to correctly identify the code numbers right you need step one in fact the micro tracks manual speaks about this that the first real step chapter two of my projects many of speaks of us that the first real step is to have the checker id authorize we don't want just anybody walking up to a cash register and being able to open it it would not make a commercially viable product micra tracks manual understands that and says step one is to make sure that there's a check out a check a check or i d so that the checkout process can occur we don't just want people stepping on the cash register but this idea of terminal i d serving in a capacity different than what the pat described is a new one and i'd like to call your honor's attention to a couple places in the appendix which i think will elaborate with great specificity what we're seeing today that we understand that when we're talking about terminal idea again pat carney activations today says the terminal i d and the shiites communication with the host that's what they say today that's what they say in their papers  but if we were to look at their experts deposition in this case dr grimes and his depositions excerpt can be found in a nine eight five one eight nine eight five one what did he say about universal acceptance the terminal i day it's not anything that forms the basis of this specialized code that we're being told by katz lawyers today it's not agreed to by catch ever general authorization code has been given the definition terminal idea it's the only definition i've been given an explanation by cat that is an improper definition that there is no such thing as determine like the serving in that capacity so we're back to the set subset issue i referenced earlier that the only authorization codes that the pattern speaks to are the two that identifies those two by the way are also taught in the micro tracts manual so what we're really looking at here right is a pattern that has two codes not three and certainly in the first half of the patent claims one three one team there isn't even an argument that there are three codes that is wedged in through the process of the reexamination really written worse a claim twenty one moves in to claim twenty thirty two moves in to claim twenty nine those are pushed together squished out in hopes that it passes through at the p t o so in your view the reexamination claims twenty and twenty nine destroyed the patent under written description that's correct your honor but it sounded like was also you know a view that if they hadn't entered these claims they would have claims now are all the contest claims in your view invalid under both grounds or one ground applies to some in the other to some of the other i believe your honor they all political with respect to the prior art argument with respect to the written description argument only the back half of the claims twenty and twenty nine suffer from that the fact that was a defect introduced through the reeds emanation process those are the independent claims yes  are there any further questions on these or any other issues i'll be happy to answer them no whenever you lose it's black marks by not using up all the t required or that corroboration is required with all one to her that would stick to listen i don't think so your honor because if you well even if it was even if it was it seems to me it should be the rule of law due to the fact that if you don't have a requirement of corroboration i mean and if you were to sustain a case like this you would open up a huge avenue for what isn't prior art to be prior art because what you what you have is individual saying look i have this document and i know it's not prior to the critical date of this patent but i know trust me i sent this to somebody else and i sent this before the critical date or a version that was something like this the court there is no but no need you know process and how does that view fit with the hypothetical that go to glory post about the thesis i your honor i think the thesis if i remember i think that's right i think those those cases were turned on and whether or not they're available now you know if i look at if there was a piece there harper there's no necessity to have corroboration that somebody actually viewed the in order to what extent you're asking the chute rewrite the statute not at all i mean on this particular case on corroboration on a printed publication that isn't a patent that isn't otherwise shown as being out there a actually sent i don't think this is any different than the barbwire case which had you know an eighteen whatever it was that had a number of people saying look i you know i remember i think i remember seeing that out there in the public before and there are a number of cases sort of follow that that said trust me i i think i saw that out there before the critical day and this court given the clear and convincing standard and i think is has always been been proper in saying no you've got to show more than that you've got to show with some other document that that thing was sent and as i stated before that's usually not a difficult burden it was actually done i mean you know we're talking ninety four ninety five i mean there's there's all sorts of things the record in the case that that cat the two did not bring any evidence showing that the the man no it's not a printed publication we did not bring anything forward mostly on the basis that mr lynott could already provided the evidence that there was no you couldn't i mean he testified that he had actually gone to his customers and said do you have any other records pursuant to the subpoena that i talked about before and his testimony was my customers don't have it either so i mean it doesn't do us any good to subpoena his his customers and ask him gee are you sure you don't have anything or should i go to his non customers and say have you ever seen version to a man of course it there was nothing to do with the point except some of trying to prove  negative which you know certainly can't be done there was nothing to to evidence and so to all the evidence that from your perspective all the evidence that could be produced on this issue was pretty i believe well i think so i mean i don't know what else they could do unless mr klein i can he said his records were burned up in a fire or flood or something to that effect so what you're saying is that where all the evidence on this issue has been correct is the court should say that's not sufficient to meet the clear and convincing standard is that correct that's correct which is court has done on numerous occasions i mean it is their obligation it is presumed valid it is and it requires evidence that it was both a printed publication as well as publicly disseminated that is it was out there before just like in leicester just like in the number of cases of that have come before it has to reach both of those threshold and in this case it just simply doesn't and i i i think the changing topics real quickly with respect to the you don't have more time with have to answer judge