i reserved three minutes for my rebuttal please good morning in may appease the court this appeal is an example of the worst case scenario for a patent owner in and i p r not only have the claims been cancelled as being anticipated by reference that lacks the fundamental petition was such a mess here that the patent owner never understood the mappings of the reference to the claim elements and if i could turn you to the petition i'd just like to explain because this petition is really extraordinarily difficult and unintelligible i'd like to turn you if i may to the blue brief pages twenty nine to thirty three it was difficult for us to explain given the complexity of the and the massive amounts of citations with little to no explanation it was difficult to explain how that failed three twelve and this is our attempt to do so and i just want to make sure that you understand what we're showing here the claims include a system configuration that has multiple that we kill that review three twelve issues that's right but this is an e p a issue as well and there were also three sixteen issues and i can talk about that where the board king and i guess the reason i'm focusing so much on the petition is not so much i'm asking you to an institute the case or review the board's institution decision what i want to make sure you guys understand is that the petition was such a mess they threw everything at the wall  tomioka and the board introduces that sentence that a person of ordinary skill would understand that listening viewing in browsing preferences disclose activities on different devices and consequently accessing those preferences on different devices and the new carrier argument with regard to what you call this new argument about inherent involves paragraph seventy two on the sea side that's right paragraph if we're reading everything the board said which i'm of the abscess right so they've got several couple pages on the axis element numerous i taped and of the exhibits and the petitioners brief they never even mention many examples which is why i started with the petition because the petition was such a mess that there end up being multiple and you've seen in our brief there are different there are multiple different new citations and mappings throughout the proceeding yet you get but we're talking about  of three paragraphs that your argument here is they relied on a new argument which was something to do with inherent yes we do that we find that reliance other than fair graf seventy two so if you look at what paragraph seventy two actually so seventy two was not advanced by the petitioner not in the decision and not understanding the point so even if i were to agree with you that paragraph seventy two speak of inherent even if i were to completely agree with you on th access element it doesn't say the wording here is see anywhere in it it doesn't even use the words necessity or anything so even a paragraph seventy two does it's a c cite there's other stuff cited i'm looking at all the other stuff cited and all that other stuff so i did is a part the key claim element we have that color coded claim in our brief to show you that the key in these planes is that an activity on a first device affects content sent to a user during an activity on a second different device that's what's missing and it is most clear in the transmit element but it appears here in the access element the relationship between those two devices and the activities on different devices but this is america argument and if you want to go there and a a argument which is not a merits argument the a p a argument is a procedural argument about not having fair due process you know and you've answered my due process question with a with turning to the merits which is fine if you want to turn to the merits and give up on the present so i'm focusing not on the merits if you want to go there we can i'm focusing on the a p a issue you said this is the single clearest example and i don't see anything well that's my problem and i'd i'm not walking away from the procedural issue and i would say that it's more than an a p a issue of this new theory the and i and i believe you understand that the inherent the argument is coming from the expert who said something was necessarily present which is an inherent see argument which was not me and they're doing it  combine that with they're doing it based on a paragraph that was never cited by that paragraph as something different than all the other paragraphs and it was never cited by the petitioner in the petition or the reply and so it's the coupling of those two things that makes that what we hop a clear example of a problem under three sixteen like magnum oil where the board is not requiring the petitioner to make its full case but it's relying on its own theory and its own evidence but in addition to that three sixteen problem i do believe that it is an a p a problem similar to sas or america where the board introduces a new theory of the final written decision but even on top of those we do have a violation of three twelve and i don't believe you're not allowed to a review at all whether a board force three twelve that's part of the statute and the requirement for the petition to be particular under three twelve is talked about in the alumina case as being particularly important because if the patent or cannot tell from the petition what the grounds are then and here it was a huge amount of things that were shot and that there is were shifted by both the board and the patent and the petitioner throughout the here at throughout the trial and the problem is that these are expedited beyond the decision to institute but there are other a p a violations as well which are spelled out in our brief and so i don't by any means mean to walk away from those issues because this case is an egregious example of not just one but multiple problems that all stemmed from a petition that had literally sow's of different possible mappings through the configuration and these claims which runs throughout the configure which runs throughout the elements of the claims and we've given you an example in our brief one reference i p r and i counted those pages less than eighty pages that reference most of which looks to be code that isn't actually cited to the cited pages seem to be narrowly limited to the first one hundred twenty paragraph that reference which is really about twenty two pages how convoluted can a petition really be when it's based on anticipation of one reference and cites only twenty two pages of that reference really i mean you think elements are shown in the arrangement and the claims and here where we have claims that have a link that carries throughout all of the claims what was missing in that petition i'm not concerned about the size of the reference we've had hope excited against us although i will tell you i have handled a lot of these i p s and this is the worst petition i have ever seen and i say that with my experience and my having sat down and others on our team will tell you when you sit down and actually without the benefit of the hindsight of where they went later go back to that petition and try to understand what they were mapping to the first activity in the first device the ventilator has to be the second activity in the second device and how they have to be related and most importantly the final element the final connection which is activity on the second device affecting content not just that there are two devices not just that there can be content from the web or content from t v but that there actually has to be an express recitation of activity on the first device affecting the content that is sent quite clear if you turn to pages eight twenty eight twenty twenty three to appendix twenty thirty three that's a ten page range me saying not that bad yeah i should look i mean let's just look at the the appendix that was provided the claim char that was provided with the petition i'm sorry but that site starts at appendix twenty twenty three that's the very first page of the claimed charter but what the petitioner did which is quite common for a lot of these petitions they come in with some prose explanation of where the elements are in a particular prior reference and they provide a claim chart summarizing if you see starting on page appendix twenty twenty three going up to pages thirty three that is a range of ten pages but that is a claim char that lays out each element of claim fourteen and where those elements are found in the reference in you know in the chart you see the element on the left and you'll see the citation to the reference is the paragraph in the reference on the right and if you go through all those  what you'll find is if you go back to the board decision the board decision sites come from this claim chart this is where they come from so we don't think it's that confusing or that difficult to understand in fact we think it provided a pretty clear roadmap of where the prior art provided the features in the claim now just to talk about the prior artist in simple english let's not get too bogged down in in terminology but essentially what the claim requires is that a user profile be developed by you're using age of a device let's say for example a t v or radio you use the t v watch certain programs the programs that you watch data is collected and it determines that you like a particular type of program for example i might like to watch football and it develops a profile for me that i'm a football watcher so it knows now this data says bill likes football he likes to see that the profiles developed in the claim they call it a user profile in the pirate they call it a user description scheme there are effectively the same thing they use different words to describe the same type of feature i now take my profile it's more the priorities as the profile is mobile or portable i can take that profile to another device i can plug it into another it's physically or i can transfer it it's the other device electronically either way the prior it says can be done now that new device has been personalized for my use so i can turn on a radio in my car i can turn on a t v in a hotel room i can listen i can go browse the internet whatever it is the new device that i've uploaded my profile to will now provide me with customized programming that's affectively what the claimed invention is and that's exactly what the prior talks about now it's true turn it off if you choose to that's what's in the disclosure the prior to vice butt well you know the point we're trying to make is the claim charge pretty clear if it's true that within the within the prior reference there are many many paragraphs that's like interesting because the strongest argument that she made it certainly it's what she led with and she believes it's her strongest argument is that paragraph seventy two reference in the board's opinion now forget about whether or not paragraph seventy two actually trigger that's true the petition however had attached to it the expert declaration when it came in so that the expert technician was provided along with the petition and i think that what you that with that would make my head explode if i can attach a lot of time right in this one don't we don't disagree with your honor ok and i'm agreeing with you paragraph seventy two from the expert declaration was not cited in the petition all i'm pointing out is decoration didn't just come out and come from nowhere it was attached with the petition and by the way the two was not cited but as you pointed out earlier i think when you were questioning open these council when you read the board decision the board does cite to many other citations in the prior reference which are cited in the petition which are in the seventy two what we have a problem here i think it would be closer to being more of a problem because if that's all the court relied on if they relied on brand new citation that was never mentioned before never addressed before and all of a sudden that became the essential if the board opinion had said it was relying on inherent see the narrative in the board opinion if it wasn't just this random paragraph you cite along with a bunch of other i don't even know if that would get him there because their argument is it's a brand new theory that the that the p t o board has shifted midstream the middle of this thing the bottom line is what's the issue in this case anticipation what's the issue from the very beginning whether or not tomioka anticipates claim fourteen that has always been the issue from the very beginning and the disputed elements hasn't haven't really changed declaration yeah i think the i don't know why the board put that in there but if you go look at an seventy six all they're talking about there is that of course there the board is responding to an argument by open t v what was the argument that all comedy made you haven't shown us t v and ninety advice you said twenty seventy presents the user with current content based on the user's history and preferences when a user in gauges in a new activity on a different device based on these disclosures it is necessarily the case that the tomioka system is configured to quote detect a sound user ekta a second user activity performed using a second device and access the user profile in response to that it simply isn't as as unclean fourteen so now what's the board talking about in the board decision where they if you go back to page appendix seventeen of the board decision they're saying why they believe tomioka has the the detect element right and they're talking about that that the access and the detect element here access element on page sixteen they go to page seventeen and they keep talking about that that element and what they say at the very end a person of ordinary skill would understand that listening viewing and browsing disclose activities on different devices remember what they're responding to the allegation then goes on to make c the anticipation of finding i guess the way i would characterize that your honour's a little differently i'd say rather than using its you with the oh they're simply pointing to a nother piece of evidence confirming what they've already deter if that's true as when it  shouldn't the other side have an opportunity to address that new piece of evidence and are and they had an opportunity or they had an opportunity i mean if if if that they talked about this at the oral hearing and if they had aptitude be they could have made a motion to a city sir reply which they didn't do they could have made a motion to exclude the evidence which they didn't do those of this court has already had knowledge of those are opportunities to respond if you know about and have knowledge of the evidence furthermore is the centerpiece of this analysis by the board where they talk about having a central user profile or a centralized user description scheme where all of your information is one in one place and where you can plug that information into multiple other devices listening devices viewing devices and browsing devices on the board is saying is if it's a listening device or a viewing device or a browsing device those are different than just t v s those are like computers that you browse those are like audio systems in your car that you listen to those are like t v s that you watch so that's all the board is saying and they further confirmed it by something that the experts at and remember the board's writing this decision in response to the arguments that have been will read it's necessarily the case that is it it is just an inherent showing of finding that the board rate here well i don't believe it is your honor i think judge moore asked me earlier viewing browsing they say those are necessarily things that are different than just t v watching that's what they're saying in an ordinary person but understand that nowhere does the declaration say that that's a basis for an inherently rejection so i don't think inherent the word in the very petition beginning petition is the elements of the claim are disclosed in the prior the board looked at that evidence the board considered it and they said we're persuaded we think a preponderance of the evidence is the standard that's necessary satisfies anticipation it's not the spending here it's not a new theory it's not a shift it's the theory that's always been there all along if anything it's in here that might be different than what was in the original petition it's simply as a basis to respond t patient and i think if you read the tomioka reference closely like the board did and like the petition summarizes you'll see you'll see that it is express we disclose what tomioka expressly disclose is this use of multiple devices not just v s audio equipment v c r computer browsing equipment to develop a profile once you develop the profile from the use of all those different devices it shows my preferences i can then take that profile and i can plug it into multiple different devices including t v s v c r audio equipment sound recording and sound devices in my car and those that profile will work on any of those devices that's what tomioka teaches now open t v s are good you board decision does show you those limitations shows you each limitation of the claim and i can give you examples for example in paragraph if the in tomioka is this closure which the board cites to it tells you right in that  paragraph in this manner the user i'm going to take you to page a twenty four eighty set ok your honor and i'm going to go write the paragraph fifty eight which is the top of that age of twenty four eighty seven this is just an example to help ease your concern you preference at most wants on a single device and subsequently the descriptors are automatically uploaded into devices by the removable storage device what they're saying is then further reading keep reading down the system can store the user history and concrete entries into programs that viewing information to obtain desired information the user descriptor scheme enables modeling the user by providing a central storage for the users listening viewing browsing preferences now you you've got this centralized stored profile you can then use it on any of these other devices for either listening or browsing on a computer or viewing on a t v and in some new theory this is a theory that's been there all along from the view very beginning and from the petition so i think all the features are disclosure on who thank you thank you so we don't dispute that the reference says different devices it says that over and over again but what it's talking about is user preferences in behavior affecting content the user gets on or not even content affecting how other devices work in that same paragraph gives you the example of setting radio stations for a car stereo and a home stereo and so what tomioka is talking about when it talks about the user profile it talks about on the same device and actually line let's see around line thirty five when we're talking about the different types of user descriptions i'm on appendix twenty five fourteen which is in tomioka paragraph ninety three about line thirty five the reference explains what happens if you use different types of devices a radio and a t v which is required in the claims the reference says here and in other places that the use of multiple user identification descriptions for the same user is useful when the user uses a thing that's multiple different types of devices such as a television home stereo etc and maintains multiple different sets of preference descriptions that is what the reference says about a relationship and embodiment where there's a connection between two different types of devices there are multiple user profiles and so that is not a teaching as required under content the activity on one type of device affecting the contents and on another type of device which is what the claims require and the fact that it's anticipation is one of the things that made this the hardest petition i've ever seen because it's not just anticipation where you need a high bar of particularities but it's also a detailed claim with a configuration and connections between the elements that appears in almost every element in the claim and a petition with huge amounts