smoke thank you josh when i do i move the admission of dorothy doof who's a member of the bar and is in good standing of the highest court of new york i have knowledge of her credentials and i'm satisfied that you possesses the necessary qualification and fact i have intimate knowledge of her credentials because she i have had the privilege of having her clerk for me for the last year and she has been a fabulous addition to our chambers and in every way she is a graduate of the harvard law school and an undergraduate with an undergraduate from cornell university in biology and society she has a whole host of honors on her resume and now she's going to have the honor of joining us as a member of this bar i am going to miss her very much i am happy that her fiance david raise here too and even happier that very soon and not only will i be able to preside over this motion practice with respect to  thank you no ok now it's time to begin the first two cases anger stand counsel you have been told that we think we can combine these cases so we don't have twenty minutes aside certainly if we think that there are issues that we need please the court we now are looking at two appeals dealing with a related to patents the seven zero seven patent in the four three seven patent both of these appeals come from inner parties reexamined and both concerning errors that were committed by the examiner and the p t a b and finding anticipation of certain claims in both of these patterns i'm going to begin with the four three seven patterns the error committed by the examiner and the p below is one of the claim construction contracts concerning the term calculating directly and what's most important about luke the error in the broadest reasonable interpretation as found in this case is that it's one hundred eighty degrees from interpretation of the term given in the organic prosecution and i'll begin by laying out the fundamental terms of this claim and identifying where that turnaround occurred  contention as i understand it that it's not really a question of that that there's any intermediate step as it relates to the changing of the raw data it's that you're doing this you're determining whether it's a resting or an active algorithm first and that's what makes it indirect so as turns to be a mama reference you're not performing a calculation step with the two values of the claimed expressly claimed parameters so in  essence what's claimed in by the calculating directly term and what was described in the original prosecution and where it was applied by the examiner you have two values a first physiological parameter that's generated in claim thirty two a second physiological parameter of the generated claim thirty two and then a calculation step that involves those two values and that's where the distinction occurs because in a mano there is no second value that's used in the calculation stuff it's a condition and that's put on the system to decide whether and when to perform a given equal agent with one data value county you so it's your position just to make sure i think i understand exactly what you're saying you're saying that hour so there's been a lot of talk in the appeal breaks here and below that there is no algorithm set forth in claim thirty two and there's no specific formula given in the specification and that's true which makes the claim thirty two broad but it's not overly broad algorithm so that gets back to what happened in the organic prosecution right so in the organic prosecution that's exactly the same piece of prior art construct that was put before the exam or you had a variable that lets you know whether or not you were in motion and then the second one actually was performed the regression calculation in the in the in the in their original file history and the examiner correctly concluded that's not directly that's not a value that you see that second parameter decides when to do the calculation do the calculation but it's not part of the calculation step and previously as part of the reading part of the organic prosecution that's exactly what the applicant said about the termcap the adult the calculating from the statement about actual calculation done by the by the algorithm so that both both parameters have an effect on the ultimate value correct i would agree that it has an effect on the ultimate or other in other words the calculation is with the calculation is from those two parameters invariably so ultimately that's probably correct your first step is you choose which formula to use the second is your input the actual physiological result yes and no i mean so it does depend so the first one is not really a value right it's whether there's motion or not that doesn't go into the calculation step that then picks which equation we use but it is a parameter isn't it i mean them brothers reasonable interpretation i understand but it's not a it's not a value it's so it is a parameter but when you look at the construct of the claims it's not attaining that the motion sensor isn't for example the motion sensor isn't just saying yes or no to motion it's saying things like how fast is your heart beating or what your body temperature is then there's a value obtained from that that's what's described in the specification and then there's math done to that and those two values are what gets put into the equation that gets performed that's why the claim says calculating directly from the first and second parameter it's not just you obtain a piece of data you obtain another piece of data will do some stuff to the data and then ultimately do will do a calculation it's very specific it lists off that you can use sure you can say for three seven column fourteen if you go down to lines forty five through fifty three it describes the various types of information that can be used in a qualitative status information calculation that includes the generated physiological device the in data indicative of various physiological parameters generated by the user device that's exactly the first and second parameter of that or scribing claim thirty two then you have the data derived from the data indicative of various physiological parameters that's actually more relevant to the other pattern but it's still an example of not just the generated data but something we've done to the data so back to judge lynn's question so let's say i do have a sensor in a monotone that lets me know if i'm moving or not it then says ok you're moving or not that's actually more of a derived others that are more relevant to the seven zero seven than the four three seven pattern but so so back to your question shows your mallet no there's no specific formula given in the four three seven but the specification which describes a host of inputs that could go into a actual change to the physiological data well it's there's no deviate point to point that the definition that they've used at that point to point without deviation and that kind of change that the way they've kind of interpreted that definition is to say you're not really manipulating the date even for it any further and respectfully at i think that really matters at this point we've left the calculating director late and we're trying to figure out how much wiggle room we can give to what happens to piece two pieces of data to then fit it back into calculating directly and that's why i would put the endings of pretty broad calculating does that mean there's one formula though it's a mathematical process i agree that that's why there's no real dispute on the calculations are mean we all kind of agree that's just the ma process but the how which is directly is a limiting term i mean so when you go back to even before the term directly was added to the claim if you look at how the applicants in the original prosecution described it they were talking about this step and said that the essence of the above limitation that's the calculating quantitative status information step is a is a calculating step where in the inputs to the calculation are the first and second parameter and that's it a one seven six five so this is this is the this one and that was persuasive to the original examiner examiner looked at the original model reference which i will agree is not the same but i would put forward that the nuances between what we've called them on a one in a model to have no import here it's really the both of them get down to the same thing today two pieces of data one that's used to pick an equation and the other that's actually used in the math so in that instance they're talking about the same thing and the examiners logic in the organic prosecution was that's not calculating having kind of an interesting thing created now with in our parties re examine our party's review and the next part theory exam when we're talking about this broadest reasonable interpretation constructions and we've got a construction that went through in the original prosecution i can understand in a later re exam we come back and say ok you didn't get it exactly right here's another piece of prior that's even closer than we had before and so there might be some tweaks necessary to your original interpretation to make sure that the office got it right but to me this is one hundred  eighty degree shift the exact logic on the exact claim term has been decided was completely wrong and the office below neither the examined nor the p t b and the requester no one explained why the original application wasn't the broadest reasonable interpretation they keep saying it's not the broadcast but it's no one's explaining why it's not reasonable and why it why that was an unreasonable interpretation instead we've come forward and said that the current application is broader i'll give you that but it's  not reasonable in light of what's described in the claim specifically and how it should be applied based on what was done in the original prosecution the other thing i would like to point out is that their claim differentiation was raised by the first parameter in the second parameter and then if you look at what the examiner actually actual words the examiner used when describing why it overcame the amount of one reference talks about how sorry i'm just  g the original examiner to use the term this is a two for a one of the record the examiner says amano teaches that the second parameter motion is only used to determine whether and when the calculation is performed therefore the second parameter motion value that is used in the calculation and i think when you read eight to forty one and a one seven six five together you're still a lot of the language there is very similar in the examiner said value and i think that's where the distinction occurs between the way body media is reading the pattern the pattern is reading it and the requestor and the current stance of the office is that you have a calculating step where the inputs are the two values that are expressly claimed in the claim the first and second physiological i think the claim differentiation point that the requester may actually goes the other way than requester thinks it should claim fifty one adds a nother step to the calculation  nother variable to the calculation it says if you take the original calculation that's being done using the first and second parameter and then you add in the list of input values include i'm sorry claim fifty you claim fifty one  further limits it and includes a calculation to add a derived data input so back to that list that we talked about in column fourteen there are now three input variables required to claim fifty one the two physiological parameters and a derived physiological parameter so i think that goes even further to suggest that any kind of derivation step that would happen but for what the calculation that occurs in claim thirty two is the logical data well but then the patent office the board of that goes through a mathematical formula doesn't mean it changes the board goes on to say that that what they mean by point to point without deviation is that there is no significant inference being done and that's at page a seven of the of perform a calculation using that equation on a piece of data that i generated somewhere else i mean just using the p t abs own explanations for why directly can include some level of indirect kind of emphasizes the point that seven the issue here is not a claim construction issue unlike the four three say this is a fundamental failure of evidence in the record that the the output indicators that are shown to the user include the same data that are in the derived physiological parameter as well as the underlying generated physiological parameter that went into that calculation so in an effort to be quick am applied below pulse rate is the first visit logical parameter body temperature is the second physiological parameter and caloric expenditure is the derived physiological parameter there is no evidence that the output in the record there is no evidence  the output in a monotone of caloric expenditure is based on the data that was generated for body temperature or heart rate just looking at figures one thousand and thirty seven shows this they have different numbers of data points the scale expenditures is kilocalories per day the scale for body temperature is just over time nowhere in the amount of reference does it say the same body temperature that generated this caloric expenditure data is shown to the user in fact is that what you're saying if they have to be shown to the user at the same time on the seams no mandela's article up and i would agree that the simultaneous vs non simultaneous aspect was an element of claim construction that we put forward below assuming non simultaneous use there is nothing that says that the data in thirty seven of body temperature is the body temperature data that generated the clerk expenditure in figure nineteen and that's the problem you have to be able to link the data between the two outputs whether they're shown at the same time i'm not and in fact amano the teachers issue it's probably not the same data and i emphasize probably because nowhere below did anyone say this was inherent no one below that there was some level of inherent see that yes automatically the body data shown in thirty seven must be nineteen because that would require you to show that it was necessarily the case and no one did that instead if you look at health if you look at how the kil s i'm sorry for look at how far the temperature is done in the amount of reference in relation to what gets generated figure thirty seven i would point the court to a one ninety seven which is the model referenced at twenty four twenty four lines four through nineteen it actually talks about switching out of modes in order to collect and display the body temperature data there is no suggestion there that the body temperature data that's being collected in real time even talks about when you get into the body temperature mode it goes from current time forward and then when you're done you're depressed which two and you switch out of body temperature mode and the circuits are released so if you're releasing the circuits you're not storing the body temperature data and there's no expressed reference in amano that the body temperature data or the pulse rate that are described in a different column that could be displayed to the user without some statement that that same data underline physiological parameter data is used in the derivation calculation that ultimately shown in the caloric expenditure data you can't have it dissipate there's just nothing there to support that ok you better save a little bit yes ma'am point with no nothing intervening are no unnecessary step what would be an intervening step give me an example so i think and this has a somewhat to the original prosecution so the claim before was amended calculating whatever it is i thought from data and gave it if the first and second parameter so the idea before the amendment was that the inputs to the calculation did not have to be the measure parameters but it could be some data indicator so you can think about something that could be a proxy for your polls or your body temperature but his not something else that is measuring ok my best understanding what the board said was that that would be your inferring a parameter like holes or body temperature from something else that you are actually using in the calculation and i would not be direct that that is a believe because amano as judgment noted actually clearly used is to measured values in its calculation so figure seventeen is a flow chart that shows the calculation of and those are actual values they are compared against thresholds to silat the regression formula so there is a value for body temperature is part of a mathematical calculation is compared against a stored threshold value aren't you ultimately inferring or derive an inference from your conclusion as to whether you're at a moving or resting state there is and you are a part of the calculation is trying to figure out where you are in th information to figure out whether you're moving or not but the calculation doesn't confirm anything the calculation cakes measured polls the measured body temperature and the measured motion feeds it into an algorithm and  minute based on the other sure and we explained in our briefing you can rewrite that algorithm as a single formula with three variables it's just a different representation of the same calculation but it will always depend on the values of these measure parameters now you would you would concede that that there is no actual teaching from either of the references that any g s r sensor would be patents themselves so there's a list table to that shows sort of calculated parameters and the relevant sensors that you could use in g s r is not listed among the senses that you would use to calculate callus and there is no description of using g s r in these bands to calculate calories the only description for calculating calories in that is says you can use heat flux times time time some factor or you could use motion time to time physical activity it would be useful to have that edition on indication of physical activity along with body temperature polls and a model to more accurately pick the right regression for me that's all the boards logic wise and it makes perfect there is a lot of statements about this is what the p tab did was inconsistent with the original prosecution and that's just not true there's actually nothing in the original prosecution that addresses it calculated directly language so there are parallel planes claim one has calculated from without the directly and so in the in the appeal that went up to the p tab in the original calculation the board actually relied on claim one they did not have the directly language as the exemplary claim so there was never any discussion of this directly word that was added to one plan and not  too much so we can't accurately measure your pulse weight so we disabled that that that measure is the thing we do is it would say ok you're moving a lot you're now in an exercise period we can start trying to calculate your calories but it didn't body temperature and they didn't use motion as part of the calculation it were just a turn on turn off based on motion so it was a completely different reference and it's used in your mind a reference at issue here which does use the actual measured value in the calculation that's the big advantage and a motto talks about it that it is more accurate then prior method polls because you may have a high poles due to stress or other factors and it would useful to look at other measured parameters to determine what the cause of the bolts was to know where on that curve  is it your grammar body you can now come in and say that that calculation is somehow not good enough or a not direct enough when their own patent doesn't have any calculation at all there is no formula for a calculation of calories using multiple parameters that is described in the body at all so you can't come in and say your calculation is not direct enough somehow and this claim require there's kind of two points to this the first is their claim construction argument is that the data at that house be presented in relation to the calculation data must be claim says there's no support for that such a limitation in the seven zero seven itself because again the seven a seven pound doesn't have any calculation of a derived parameter from anything so there's nothing shown here that is calculated from either the heat flux for the motion and nothing in particular this calculate from those in combination as this claim would require and there's certainly not logical point that that's your friend on the other side is making is that you know we're trying to show you how your heat date on your skin or whatever it is will then give us information about your caloric expenditure or about your sleep patterns or whatever i mean isn't isn't that the point if their son after to show the user that the relationship between the  two that's what the claim says i'm saying is that there's nothing in their power there would support the notion that to to give that relationship you would have to use exactly the same data points right so think about a system where it samples your body temperature every second and maybe eases the odd samples to calculate your calories in the even samples it displays to use an indication of your body temperature they would say that is excluded from this claim to do construction there's just no  for that right there's nothing in their claim or in their power to describe that sort of scenario requires let me go to a model because i think in a sense none of this matters because a miner at the end describes exactly what they're saying i data so that they can see the relationship and this it and its it says also that in fact and this is later calling twenty eight i want to describe is that it can actually store and does store measured body temperature in the mind measured motion and the measure whole fight of it as a function of said it's one thing to store them and it's one thing to even calculate from them but isn't the point of this patent that you not only calculate from them it's saying that the body temperature the used in the calculation is the same one that they're describing here in the body temperature measurement section and then if you go to color twenty four lines for s now if we go back to the action of a monitor that is talking about calorie calculation it says and this is a column twenty two lines sheen says in this case is also acceptable to provide a design in which the body motion detected by the body motion detector went to one means body temperature detected by body temperature is tied to one on one in the pulse rate detected in australia calculator one fourteen or stored in ram two or three in a time series right so this is the same ram and the same time series where these values that are measured thirty years in the calorie calculation are stored and then when they are if hour is selected the specific time interval in the calorie expenditure in one hour is calculated so that's the same one hour period it's shown for body temperature thirty seven  language in terms of responding counsel can't point to an actual rejection or p t a argument in a brief in which they're actually laying out this over time the first time you see that argument presented by the board is at a six in the decision so you know i can explain and those words but when you read this context he's explaining he says this wasn't an issue in the reexamined the question of whether this overtime think was an issue with the reexamined says that  don't see anything in the office actions or the briefing below to indicate this was actually laid out by the office or the examiner do you agree that it at a minimum you just said that it was released for the first time i know says you but it was at least raised you agree i think during that argument to be yes to be fair judge golf judge jeffreys question beginning on page eighty five is the first time in which the logic of caloric expenditure over time body temperature over time they're linked by time t on the seven o seven patent council's walking through of all the citations to the i'm on a reference that's not anticipated and to subpoena should require that you show all of the claims elements not only in a single reference but in the manner of symbol so that's the net money in case five forty five a third thirteen sixty nine this is trying to cobble together a statement that this could be the same data as it is over here is not anticipated you would have to show that the body temperature data that you're showing in figure thirty seven and the caloric expenditure that are showing in one thousand are the same data and i specifically want to point out that it's not council indicated to you that column twenty three and twenty four indicated that they're talking about the same if you stopped reading in column twenty four where the switch is and let you know that it's not the same data so let's go back to a one ninety seven column twenty four and i won't read all of it begins when the subject wants to know the change in body temperature he just press switch to and then counsel read down to about line number not i but if you go back to i'm sorry about line number seven but if you keep reading as a result this is it line si as a result c p u reads out from ram the measure temperature values and the time of measurement for a specific portion of time from the current time so i hit the switch it starts so that's napped so this isn't what i'm looking at  being collected in this column is temperature data starting now the data that is in converted to a display instead to the display that's at lines ten and eleven the next paragraph at fifteen when it is no longer necessary to measure body temperature the subject again presses switch s one and c p u two zero one concludes the processing to measure body temperature and releases the settings in the watch circuit so when you're done with body temperature you hit the button if you leave body temperature so a model has nothing in there that expressly links the body temperature data that's being destroyed in figured thirty seven and the cold war expenditure data that's being shown in figure nineteen the claim is judge malley pointed out requires that the display in the claim the output to the user are indicative of the data of the derived physiological parameter and at least one of the physiological parameters that went into the derivation