this right and that said opponent petitioner is has twenty minutes in their direct and and then we bottle is that correct that's correct and then on the other side same thing we've got twenty t the second issue i'm going to speak about today is the issue of pal and it's a patient there the board found that there is no express disclosure in part of the client invention and they didn't find that the client invention w before the board on that because the cases seem to make it fairly clear that in a written description situation you start out in plain construction and then the question is the claim is properly construed does the record show that that the inventor was in possession of what is the construed claim and was we have these two definitions we have this definition of tag and indorse token in the door syntax was was there discussion of claim construction between the board of the parties at the because the board didn't do any claimed instruction i think you hit the key point your honor that the board did not decline moment itself seem to skip over that ish seem to jump right into the specification and do this backwards they looked at the written scripts in first and seem it's a little unclear but they seem to want to jump from bayer and see if someone would divine in the abstract the term tag or token so there was no discussion of the oral argument before the board as to the proper plane construction other words as to the party saying that the board please adopt this construction i think the board didn't ask those questions your honor the parties agree on it there's no dispute on what the claim construction should be but the board didn't seem to be in inquire about that issue i think you hit on on what may be the fundamental problem with  or so it's your position than we can take the construction that was proposed now there may be some question from this side of this that was proposed at the board namely what indorsement tag and token mean and token mean hyperlink or executable link they weren't explicit and explicitly or there used a construction like that for purposes of the one hundred two with paul but certainly with respect to the written description they didn't go curious why did your side come up with these terms and doris montag and token that clearly nowhere in the written description of why did you all that midstream during prosecution insert those yes you're on a one thing that i can offer as a possible explanation is the original application was filed with one prosecuting attorney and then midstream that the the applicant switched to a different prosecuting attorney in a different firm and that's when the claims were amended and and i are only thing i can suggest is maybe it's a different style the prosecution and a different style of how to turn the operators it's clear when you look at the claims that and how those two terms are used in the honor it is true there was a c i p filed during the pendency and that was filed by the new prosecuting attorney and it did add some additional embodiments but the detail is it's not additional description of a link it was more description about how this link was created such as hashing more technical details about a particular body that the original disclosure itself the straps a link and even the board agreed that that that back to the board for the order to make a formal claim construction determination and there is no need to send this back to the board not agree the board hasn't said here's the correct instruction where the board in implicitly must be an executable link because it made findings that part of the slows a hyperlink and that was the basis for finding them to spatial on some of these elements with and paul so the ones already done the boards already agreed with the parties and looked at the pattern this way and  the board didn't seem to disagree with this particular maybe it's possible that the board simply just assumed without deciding for purposes of doing the want to rejection and i think ice understand here what you recognize  tension in the logic between assuming a claim construction for purposes of one rejection and then concluding there is no good claim construction for another rejection but i'm not so sure we can conclude from the fact that they didn't want to rejection that the board necessarily embraced a claim construction for purposes of the written description given what they said on the written description rejection i guess the follow up on judge charles question is is it possible that we would need every man on the written description question because assuming that you're right that there's a defect with the written description rejection and we need to hear more from the board as to why is it that what is it that endorsement tag and token really mean and to the extent it means something it has migrated away from the content of the written description or alternatively should we just reverse if you are right because i guess in our view anybody would know when you review the written description the met their initial burden of proof it and so without actually getting to the heart of the merits of whether there is or is not written description we would say because the other side need to go further in making the case for written description just because the claim uses different words that alone it's is not good enough they have to go further and say why those different words in the claimed means something different than what's in the spect and then met therefore the written description rejection cannot stand that's right your honor that also would be a good reason to reverse and not have to remain on the  that's it and that the lot holds that the applicant can either only hungry for and then to support the written scripts and you don't have to use the same words their expert didn't say anything about the meaning of token endorsement tag in this relevant field of art now that's a good point the expert said tag and token in the abstract he said some things about that but if you look at what he said in no way did he actually do a claim construction and now says he didn't look at the the the so the the abstract but there is no evidence of what that expert says of the proper claim construction except what he admits in this decade and his deposition which is that yes it is a proper claim construction for indorsement tagging token to be  that part doesn't say that you can combine in the group for a friend routine with the direct email marketing campaign routine but the board nevertheless did find that part of freshly disclosed that combining it would simply lead you over then to start a new campaign and create a new campaign using the direct mail campaign tool where petitions actually arguing is a modification of these tools not simply combination so when that when the said you know without support when the board said that you can expressly combined these two tools that's not enough because you still must modify the tools and there's no suggestion of modification of these tools and in order to put them together to meet this client invention and with the problem that the board had though when it came to that conclusion at the end that that it used together a but that actually finds no support in the record first it contradicts what the board set the board said we acknowledge that paul does not indicate expressly that any of the computer routine routines in the campaign manager can be used with any of the other campaign manager computer teams so that contradicts what it already found out and then second when you look at what dr yoshi says that the boards it doesn't matter of law is can be used together enough in other words is anticipation be able to say that the whole records necessarily shows that they are in fact used no there there could be if it were the case that there was a  that one could modify these routines in order to apply the targeted e mailing to any of these other teams if that were actually expressed in paul that would be a different scenario we don't have that  that if you go to the kennametal case for example and there what happened was you had a claimed invention that was an apparatus with two things i and the disclosure in the prior art disclosed  things they just weren't the exact things and in there were several combinations for what one of those things could be and several possibilities for what the other thing could be and therefore because it expressly disclosed that you can put those two together and one of the possible disclosed combinations is the kind of invention that was this patient here you haven't reached the first step you happened got something in paul that would combine these two together and that's the first step that i would have to find for disclosing combining the various various way to make a multitude of email campaign so in that sense the board made a finding it patent you can get by didn't any which way possible and or that she'd be able to anticipate future inventions in the future technology that no one's even thought of yet simply because it's possible that you can pick and choose from th reference and someone says boilerplate everything and here you can combine any which way and that's why invention that would be that would be a rule that would destroy the ability for new inventions to combine new things or things and new ways novel d overall as combining these three different tools but then a specifically talks about this direct email campaigning tool beginning on paragraphs sixty and continuing through seventy one when it describes how these t operate there were teens fellow a certain path in a certain procedure now simply saying that combining these two routines together isn't going to get you there it's not enough because all you're doing the stack on each other and you complete one or two and then you finish with the other what petitioner needs to show in order for it to anticipate is modify the way for it refer for energy it doesn't operate in the way paul describes instead of sending it to all members what you do is you take this piece from the middle of the campaign manager description of the campaign tool on paragraph sixty four the claim limitations and that is what the board found they simply tried to argue that it's in two separate sections of paul either the advertising method which they say disclose is trying to advertisements based on demographics and the refer friend  d but i think it's clear when you report all as the board did that it describes a single system supported at g eight sixty to sixty one that is a system or computer program that a person of skill in the art here a computer scientist familiar with mobile and electronic commerce would understand could use different tools and different routines you argu but even if you look at paragraph one hundred where it talks about the campaign manager can specifically call the refer our friend it is a tool within that manager the campaign manager is actually needed in order to run the campaign and send the email contrary to pet owners arguments it's not just them sometimes skilless you're not arguing that paragraph one hundred or anywhere else and paul explicitly discloses the tomba nation of the direct retain it's a tool within the campaign manager and you need that campaign manager in order to send out the emails paul also teaches that the emails don't have to go oh to everyone they can be targeted based on demographics the lso j eight seventy one it paragraph seventy seven if we look at paragraph fifty where it said pa state finances can at new news items with graphics web links or hyperlinks  i'm sorry if we look at paragraph fifty of paul where paul talks about sponsors can add new news items with graphics web links or hyperlinks and have the ability to create numerous types of e mail campaign such as refer friend campaign through the campaign manager discuss later so i think clearly paul has contemplated that the complaint campaign manager of this system tense and targeted advertisements to specific users were i'm sorry i didn't quite pull that out of that sentence just read you the sentence clearly talks about a refer friend campaign it doesn't say anything about multiple sections of paul gather all of which we cite in our papers i think if you look at paragraph fifty of paul which i just cited too if you look at paragraph eighty six of paul where paul expressively discloses that when you set up a campaign or a program function is available as a tool when you look at how the board found that paul teaches all the key elements of the claims creating a profile  nine that talks about paul being a single system i think you can look to figure five which again gives a diagram it for you the entire system you can look at paragraph which talks about the campaign manager being able to send refer to emails i think you read that in the context of the section that talks about what they were for a friend routine is designed to do i think you can look at paragraph forty two or paul that talks about how profiles are generated based on geographic data you can look at paragraph fifty one that talks about the match condition for paul does that with respect to refer friend campaign again this is a system where all of these items are intended to work together akin to what he said judge can say it's like if you're using microsoft word what about mr conrad's concern that what you have to do in order to combine the direct e mail marketing campaign routine which is in my view what you're describing in all those other parts of the spec of all combining that with dean with the refer a friend campaign routine that you have to do some modifications t routines in order to get them to operate together i don't think you need to do that i think again looking at paragraph fifty one of paul also looking at our record at j seventy one paragraph seventy seven the campaign manager of paul is expressly taught as having the ability to target it's campaign and you just wondering how you would do the combination together as i understand mr conrad he's you seem to be saying you you do the research of friend campaign first routine and then you do the the direct email marketing campaign after that i would think it would be the reverse it would do the direct email attempt and first and then through that campaign you would have a sub routine the refer a friend campaign that i i'm well you know we need to understand for sure how it's possible to see how it is with the claim so what's the the to the combination of the two reasons that one would in visit one of ordinary and then based on the accumulation argument the directly e mail marketing campaign no no these are both this is profile information that you can collect and then the campaign manager has access to you and can control that information and then you can use a refer campaign to target those particular individuals that you determine that's matched the criteria of the advertiser at issue i think your exten think here we're dealing with someone who is at least as a bachelor of science in computer science who is very skilled with computer programming and very skilled with mobile and electronics i understand all of that but don't show me then show me show me ending in the rest just by looking at it that you wouldn't want to understand the combination sure and like i say i think you can look at the diagram of the entire system and how the campaign manager is like the brain at that system to run the various routines that the system can carry out the system describes a means for sending targeted advertisements to specific users and a way by which those users can refer those various paragraphs of paul that i mention paragraph twenty nine forty two fifty fifty one fifty three one hundred eighty six fifty seven and there's numerous support if you look at paragraphs twenty nine and fifty of our teachers that not only is he talking about individual tools he's talking about the combination of said individual tools and so therefore again just trying to point the board to the numerous sections in paul itself which describe to a post how the system works how it's one system and how these two concepts work together i want to switch to brain description confused by the written description rejection because it seemed to me that what the board but if they are sort of done is maybe make alternative projections either have one of two rejection on paul or do a written description rejection because somehow the terms token and tag mean something completely different than link or token in tag or are somehow insoluble ambiguous and so there's just no support for these mysterious words but as soon as you arrive at that conclusion then i don't see how you can do a one of two rejection likewise if you do a one of two rejection it's because you know what token in they mean a link and paul teaches a link and that's why the one or two is a final it seems like an either or proposition i don't see how the board was able to really impose both rejection i'll address that we've reply made the alternative argument me first lead with the endorsement tagging token have no want well sport and we believe that and there's ample support for that both in the final written  decision and in our papers we also make the alternative argument that if we did not prevail on one twelfth or those two arguments that the prior are either anticipated or rendered i believe this court found both in validity based on one twelve and based on prior art objections so i do think there is a world where those two objections can stand side by side if we first deal with the written description argument but w inventor had possession of what those terms were and the p tab that is acknowledge that both sides say it could mean a link and part of why groupon took that position is that was the construction twelve purposes proof within the four corners that this inventor had possession of these two terms there's no dispute that endorsement tag and token are nowhere in the one for four application you asked  concern and you know and maybe there's no good answer you know and all we can do is just say a bunch of words at this point i don't know but it seems to me that if you're doing a written description rejection it's because tagon token means something different different than the disclosed link to the written description look what what is it your what's your view of what token and tag mean because for purpose the written description rejection i did not see the forward reach and you can conclusion what token untag may and i think it's almost a necessary step you have to do for you conclude that the written description somehow parties that a court of the board accept or a determination by the board has to a clean instruction i do think that the board implicitly makes that construction if you look at the final written decision for the five one six for example i page thirty five and that decision they say petition there asserts as in that endorsement to actually be construed as executable length such as hyperlink and that endorsement tag must be related to an advertiser link with advertising content and they say that if that's the time of the invention you know right and if the claim construction ultimately is that this these terms mean length then there is written description support i guess the way i see your argument is as a matter of in the context of the written description then there is an i don't i don't it seems more like an indefinite that's probably in some ways but regardless then there would be written description support because we understand what the claim term means and in fact it winds up with what is being disclosed and again i think i would go a step farther than what you're saying i think you would saying as a matter of law not only here where the patent on it doesn't say endorsement tag or token me here we've got claims that use three different terms we've got plain terms that use indorsement tag claim terms that use a token and we've got claim terms that use like for example claims twenty five and twenty seven use li here i think if you look at the prosecution history the prosecution history undercuts in a couple of ways they added those terms because link was rejected as being obvious so that was a motivation for them to come up with me i think you've got to look at both the prosecution for the five one six and then look at the subsequent prosecution for the other applications let's say got to that number two to six seven nine patents they added additional new content new i'm sorry j eight to eight to eight to to eight to nine and our expert dr you know she also gave alternative definitions for endorsement tags and token that don't equal length at j sixteen fifty seven to fifty eight and the applied medical research case that we cited in our papers as to why use of different claim terms and of course their position on thank you i think the state of the internet and two thousand and three and two thousand and four the relevant critical day period here as based on a prior art reference that we rely on ajay eleven seventy five and also there is an about public assess ability being the cornerstone of a publication and whether or not it is hosts are exercising reasonable diligence could have found this reference i think all the factors and evidence in th there at the relevant time period it on a public website we're talking about a major university university of maryland baltimore county computer science doubling department well that that's the question  moore's publication page which then has a link to the paper then that would be something to suggest that this particular link with this paper has been indexed or could be indexed but right now what is missing from the record and this is what the board seem to be harping on was any suggestion that this particular page was fined of all by search engines and this is the the board on the fact that nobody still in the art would know how to get your l address because there was no evidence of indexing nor was there any evidence that one still in the art would know about this particular you are your own address and then consult and i can address that again i think the facts in our case are stronger than voter verified again voter verified dealt with the best an article which was an online periodical from the mid ninety timeframe that we're talking about as of one nine hundred ninety nine and there the court said that commercial internet search engines were available at that time and even though there was no evidence owner showed that the article was there and available the question the board had was could a post mocking it our response is yes this post a computer scientist and two thousand and three motivated to find articles about mobile and electronic commerce where you've got a group of authors if you compare the front page of the rats more report to the front page of the related you're making an argument about the research notion right you're not making an argument that this website at been indexed or that this website was really popular among those of foreigners going there and so they would already know to go to this you are university website it is the computer science and doubly department of that website and it is the location of multiple authors professors who are known in the space to be working on these topics they have starch engines are advanced and we're talking about a major university website and computer science folks when you look at the research ate up for male or are welcomed by are clearly the rats more article at twenty fifty two was person of skill would have been motivated to look up dr rats more go to the u n besides if you plug in her name you get to either it will be public and you're making a new argument and then i did ask you to conclude  that the patent includes any sort of data or process those that are that have that include a financial component and so in that sense that whether or not there is something that that uses a data processing or a management system in a in the financial sector or industry but as as the board found and as the as the regulations include those that did that discrimination is not just limited to the financial sector but could you explain what would be an example of an uncovered business method of an uncovered yeah i mean it says covered business math and the center stand drug grayness question that means there is likely uncovered well here's the determination is there reacted to the claims themselves so to be sent the claims themselves have a financial commercial component it would be covered business method but to the extent that they don't they would not be would not qualify for covered business methods or another way of putting it is is that the agency's view that anything related to e commerce is it covered business of the patent eligible for this proceeding also had a financial aspect to it then i think they would be covered but you would have to look at the claims themselves in that hypothetical you're asking me what the pattern is generally directed to you but what the court does is look at the claims and styles to determine whether or not it a financial sector in it or not in your mind well i think again to the extent the claims themselves had some sort of financial component that isn't the business plans i mean these are they would address the hands that fall out of that definition so and to be extending your in your hypothetical if they're if the business method relates to protecting homeowners from people who are breaking into their homes this or the and the reason the board looks at that issue is because there are certain patents where are though they may have a claim best directed to a covered as a method method itself there is something else on that in that invention that  i guess will lift it out of that out of that arena and has a technological aspects to it where and there is something that they're using whether it be a new type of software or a new type  technological patentable advance over the prior art and my misreading the regulation well the board is not making any one of two or one and three determination at that point all the board is doing is looking at the claims themselves and determining if point they're comparing it to the prior art they're comparing it to the prior art in the sense if so is that it is there anything that's only generic to the claim and that's i mean generic in the sense that generics are the technology of the claim in the claims that issue the destination where this paper may have been and there's just simply no proof in the record and this is the problem board hat there's no proof in the record of how one could get to that paper whether it's by indexing through search engines whether it's  following some path or series of links or anything there's just no evidence at all and this wasn't something that would have been difficult to do had there in fact gillis was saying that you in d c computer science department department doing research in this area and therefore one of ordinary skill in the art would be inclined to go digging through the computer science website in order to see what's going on and then ultimately stage what's your answer to that i mean how is that any different than first off how is that any different than saying would be enough for someone to go digging through some library somewhere to find a book that's on on the shelf but is not an intellect and dexter catalogue you'd have to go through every single stack want to find these books in that situation there's no public accessibility of erbil ability there is there anything in the record that shows that when you're at the computer science departments website there's a link from that website the computer science departments website is rotten publications page during the relevant time there's zero proof that there's any link at get there through the computer science department website that's right based on the record today that was presented to the board when you look at what there was at the relevant time any relevant time for these patents what would take someone from the main page of the computer science department and the way to eventually where the patent was ultimately found that there's a proof of that now that would not have been a difficult thing do we raise this issue during the proceeding and petitioner has an expert who wrote the paper and is still a professor at this university all he did was say in his original declaration this was available somewhere on the website in two thousand and three he did not come back in his supplemental declaration and provide more proof a full listing of proof which he was in full control of to be able to do this is how it works this  is what the website looked like this is where people would have got to this is where we would and someone would have been led to this is how you would follow links the simple conclusion from all this lack of proof is that that trail didn't exist so even if you assume someone would have been you know instant wanted to follow the trail of the children exist at the time there's no proof that that's the proof of the trail or that's the issue with the trail there is no proof official bio page there is no proof that that is how the page ever looked prior to two thousand and four that's something that dr joshi their expert could have testified to if it were true and that there was actually something available but that's just not the case there's no proof there and that's even contradicted by the fact that the official website doesn't list this paper project page doesn't list this paper the only person that lists this paper is dr rats and more at some point in issue it doesn't say it exists it doesn't cite a website address it doesn't cite project address there's nothing that would lead someone directly to the university's website and then ultimately how would they get this publication it's you just can't follow that path that's different than the case law where for example i forget the name of the one case but there was an explicit reference to this paper that was at issue in the prior art and one would have known that paper existed and could have sought out here no one would know that this paper existed from the october two thousand and three publication and absolutely this comes down to a judgment call by the district by the of the board the reason being that there are a lot of factual issues here that were weight it's not simply an area where the parties agree on what the relevant facts are and wasn't available on the official website they present it hearsay evidence a particular dates and various times two thousand and three or five they argued two thousand and seven that the reliability of those dates what they mean that was all a judgment call to the board to make those are when we treat the argument concerning the method they have of them so very simply your honor metadata evidence is evidence of the creation of those documents but not any evidence of dissemination or bail ability the fact that the document was created on a computer doesn't indicate in any way that it could have been accessed by anyone outside of the computer at any particular address all it was is it's created not that's a failure proof our experts at four seven three five in the five one six appendix ackford testimony about how he would have viewed how he looked at the specification would have understood and come to these claims petitioners expert could have contradicted that could have rebutted that but she was silent on how one actually construes these claims and we're left with is the fact that the words of deference and that don't we don't want to confuse this overall campaign manager with the two distinct rules that are descriptor explicitly described in how they operate if there are no other questions but if you are thank you very much want to start briefly with rats more again if you look at what's in the record at j a four five three what patent owner the official university you did for the website that website if you click on people and mobile commerce area that it identifies dr rats more as an alumnus because as of the present day she is no longer with the university but through fear that this page would have left virtually identical particularly what is that the three this report was available and we have in the record ajay eight three three that that page was last updated in two thousand and five so this is not something that is being done in present day this is a and that that link is where you can get the report but we also have in the record is the method data to show that the report was there but we additionally have in the report was that that at this link was last updated and  the report was there were simply when it was created it shows two things we have met at data evidence that shows it was created in two thousand and three at one record site and we have met it data evidence and that that frets met a data evidence  the environment there were in its ubiquity site is where these particular authors collected their work related to the subject matter so if you go to you n b c and you type in rats more you might get this page if you've got a rats more you might get hurt equally page you're one click away from the technical report at most two this is better than the road map and cornell and broken mire where you had to have an article in hand online any of the number of one thousand plus people whether it's in the record that more than four thousand downloads of the related rat somewhere are article where you could find that article on the same publication page for the technical report exists it is certainly reasonable to conclude that apart post exercising reasonable diligence under belittle grabbed by would have found it and would have been motivated to find it where the article says we're going to build on this research we're going to do more we're getting briefly on call again the patent owners making a false argument that there are two completely separate systems again discloses how to store sales files how to use a campaign manager to start a campaign how did then tell the campaign manager to direct the campaign it's specific individual based on profile data that you collect it and how to use to refer them to little which computer programmers know programs have tools and routines that can be called to do that the bratz found that and a post that would now yes you're probably right so probably into the but unless there's any further question we would ask that abort i mean the panel reverse the board with respect to rats more and find that rats more either alone