and apple the board's rejection of our i p r obviousness challenge rests on a single limitation of the claims what we call element one point six which requires the account identifying information is not sent to the provider such as a merchant but is sent to a rd party to enable or deny the transaction we show that the brenner prior art reference discloses this in two ways the same two ways disclosed and claimed in the five hundred and thirty nine patent st brenner describes sending account identifying information to a rd party shipper to allow delivery without disclosing i'll continue all right thank you first brenner described sending account identifying information to a rd party shipper to allow delivery without disclosing the customer's address to the merchant nd brenner discloses sending account identifying information to a rd party bank to verify the customer has sufficient funds for the purchase without providing account information to the merchant either one of those on its own satisfies the claim the board was only able to reject both showings by committing numerous errors with respect to the shipping aspect to brown or the board erred in construing the claims to exclude rd party shippers larify at least from my thinking this shipper theory that we're talking about mean the language was whether the shipper could enable or deny the transaction right that's what the query is correct  and maybe i agree with you that a shipper can refuse to ship something but it's not clear to me why it necessarily follows that their refusal to ship something quite with denying the transaction is there any evidence of the entity in the provided just give up their approved transaction merely because one shipping company decides not to provide shipping services can't they just find another shipper well st it's important to no that our position is denial of the transaction is not a required aspect of the claims provided the rd party enables the transaction the terms are presented in the alternative and as long as the rd party  and whether the merchant could turn to an alternative source of shipment is no different than whether a customer could turn to an alternative source of funds if a bank says oh you don't have enough funds in this account that's really outside the scope of the claims and what's described in the specification where both describe that you know that there's just one bank involved there's just one shipper involved in these  that's correct figure can and figure eleven both describe the anonymous shipping aspect figure can is in conjunction with a purchase whereas figure eleven is just more generally referring to anonymous shipping and neither one of those describes multiple shippers or turning to an alternative just like the figure seven embodiment doesn't describe turning to an alternative bank for another source of  just referred figure can in the corresponding written description describe a method of conducting a transaction with a merchant without requiring the user to provide to the merchant the user's name address or other identifying information while enabling the merchant that its purported invention facilitates multiple new forms of transactions including enabling anonymous identification that will enable the person to receive mail and other items without providing the recipient address information to the sender and that's you know separate and apart from any financial approval purchase transaction that's simply about the shipping in the five dollars to nine dollars patent makes it clear that that's one of the disclosed  and contemplated embodiments is the anonymous shipping that's the same as what's in brenner so there is simply no basis for the board to conclude that the independent claims are limited to financial approval and exclude a rd party shipper once you get past that even patent owners own expert had to agree that a shipping carrier enables a transaction if the term enable is not limited to financial approval and that's a two thousand seven hundred and ninety six where he testified that the shipping carrier received account identifying information in order to enable the shipping of the merchandise to the purchaser now as i mentioned i don't you know i don't have that testimony in front of me i those words are somewhat different as an enabling the shipping might not transaction with the versions well but claim for clears that up because the shipping is part of the transaction the shipping the is is a service is provided as part of the transaction and the delivery is achieved by a rd party shipper so we see that from the dependent claims so once once we have the understanding that the shipment is part of the transaction the claims require that at least the dependent claims so the independent claims have to encompass that scope then there's really no way to distinguish from what brenner's talking about with its anonymous ship to briefly touch on the board's other error in construing the unable or deny term where they interpreted the taint terms to require a binary choice to enable or deny the transaction rather than finding the claim satisfied by simply performing one of the other this perhaps flowed from the board's interpretation that mistakenly equated enabling with approving but in truth nothing in the claim or cites making such a choice and the claim is satisfied by performing either alternative and then even if the court finds no fault in that aspect of the board's decision it still erred in finding brinner shipper cannot deny the transaction because as we discussed us our own expert testified that of course a shipper can refuse to complete a shipment and the board's finding that it was speculative whether that could happen in brenner ignores that evidence unrebutted evidence by the patent owner's own expert that that's how a person of ordinary skill in the art would understand that shippers operate so that was there so for these reasons numerous reasons the board erred in concluding that brenner's shipping disclosure cannot satisfy claim element one dollar now turning to the banking disclosure in brenner here the board erred both by misinterpreting the reference and by refusing to consider an alternative obviousness theory that was properly raised during the i p r st we showed the brenner discloses sending account identifying information to a bank in the form of linking information which provides the ability to determine the customer identity and account number the board didn't take issue with the mapping of the linking information to the claimed account identify information but rather found a purported inconsistency between our mappings to limitations one three and one six in doing so the board concluded on its own that it doesn't make sense for both the secure provider and the bank to use the linking information in brenner that was an issue that u s r had raised the board reached just conclusion on its own in the final written decision but it's for feuded by the reference itself it makes perfect sense for the secure provider to use the linking information to look up for example shipping information to provide to a shipper and for the bank to also use the linking information after receiving it from the secure provider to board's conclusion to the contrary has no evidentiary support finally we presented all turnitin theory to that the bank in britain are satisfied element one point six when it receives the customer's actual account number from the secure provider as opposed to the linking information the board abused its discretion in refusing to consider this argument the board faulted us for not raising the argument in the petition but that was incorrect in the petition for limitation one point six we asserted that brenner secure provider sends customer information to the bank such as a name or address that's at a one  moreover we provided the exact mapping at issue with respect to for example claims sixteen and eighteen dependent claims that require that the account identifying information reciting claim one is an secure provider stores the account number to provide to the bank computer the argument and evidence were there in the petition from day one moreover i'm sorry finish your sentence i apologize to get to finish what you were going to say i was just going to say moreover even if this is somehow considered a new argument decisions of this court such as apple v andrea electronics show that it was error to for the board to refuse to consider it when when we raised it when it was in response to arguments that came up during the i p r and they didn't rely on any new evidence the evidence was cited in the petition i don't want to this is judge press and i want to cut too much into your rebuttal but i don't know if you were listening to the apple case that preceded this the argument in that case yes your honor but we asked about the relationship between this case and the one hundred and one district court appeal that was heard earlier this  week do you have a view on that is your view contrary to what the other side the parties in the other case seem to agree that been ten no it's pathetically but go ahead i do not have a contrary view i would agree that if the patentability of any of the claims based on the combination of brenner weiss and decide is supported by substantial evidence and not contrary to law as a student volves essentially two imitation is claim one  provided to a rd party to enable or deny the transaction with the provider in connection with the question that judge protests raise about refusal to ship and whether that was a quibble and or could be equivalent to the nine the transaction correctly that a couple of things number one that there's no disclosure of vendor shipping carrier denying the transaction the board found that the appellant's argument the brenner shipping carrier could refuse to provide shipping  was used to the claim i can say that the board didn't have any difficulty understanding that enabling arginine the transaction means that the rd party is presented with the binary choice of the labeling or denying the transaction and that the board also concluded that brenner did not disclose a shipper who had the power to deny the transaction certainly you could imagine one could imagine that could be given that power for example if the credit card company were making a decision as to whether or not to ship a new credit card and needed to evaluate the account to dine to find information that was sent to the credit card meant to read on and if you look at figure ten the you can see where the board's conclusion comes from that the shipper when the ship is involved is only involved after the the conclusion of the transaction other words the super only becomes involved after the credit card company has decided to approve the transaction and that's that's a rd party in that in that transaction the credit card company not the shipper with respect to the specify an optional additional delivery component to a service provided by the provider again this is the tourette transaction with the provider his claims do not as opponents attempt argue require that the rd party case that just means that the shipper might be able to enable janata transaction addition to shipping the item brenner's rd party shipping carrier has no capacity to enable or deny the transaction with the provider because it is no not dr jacobson did not admit that shippers could be accused to provide service he explained that shippers could theoretically refuse to provide shipping for a number of reasons but not in the not in a way that would satisfy limitation one six if you look at appendix tw and ninety six which is page sixty seven of his testimony he says so it's their job to send it u p s or us postal service would not determine whether this should be done or not of course they could refuse to provide service or lose the package or whatever but board found here does it take and i just ask you and i don't know if this makes any sense is i mean are we talking about something akin to creating a contract namely the transaction between provider merchant and customer they the transaction and the enabling or denying of it is the positive or negative decision about entry into the contract whereas a contract but it certainly has to do with you know there are separate parties the provider of the ship or and and the rd party the ship is not mentioned in the claim of course and here are the rd party has to be able to enable or deny the transaction with the provider so yes it in some sense when i go to target and you know i don't and try to buy something at some level the rd party credit card company has to approve or deny that transaction and that is my that is the transaction that i'm trying to conduct with with target right so so is that a contractual arrangement i would make it that narrow but it's certainly a transaction that is between me and the  as the entity and the merchant and not not specifically me in the rd party i don't know if that addresses your your question no i guess i was just trying to think of it there's something intuitively distinct about the entry into an agreement and the actions that a variety of people might have to take in order for the agreement to be fulfilled and some of those might involve people other than the merchant on the customer but the claim i kind of take the board's view in your view to be that the claim about enabling or denying the transaction is an enabling or denying the creation of a binding relationship between the merchant and the customer sings that might be necessary for both sides of that agreement to do what they need to do under it are not part of the enabling or denying  is necessary to complete the transaction so there's a few steps that need to be handled carefully with respect respect to this claim to make sure that that transaction is is handled appropriately and so i think i think ron is correct on that point i was a time i have left i'd like to discuss the rd party bank disclosure move from the shipping carrier disclosure the board found you know the boy did find that there was inconsistency is and the st time this this  providers so it can satisfy the mapping requirement for limitation one three the judge asked why would the secure provider send the linking information to the bank the board told appellants that their mapping of brown or mixed two different e with vendors and so i don't have to give any of my personal information i just give them the customer object and the vendor knows the customer object doesn't know any of the personal information the brenner disclosed as well when the vendor wants to complete that transaction they can either contact the secure provider give them to the complete customer object and the secure provider can look up the personal information or you can send that customer object directly to the bank and the bank will have the leaking information and that is and somewhat what the board determined was it doesn't make any sense to have it in both places it's inefficient and brenner doesn't disclose that at all and brenner leaves no doubt that the leaking operation was performed only once either at the secure a significant and consistency between the mappings of limitation one three and one six and that that conclusion is supported by substantial evidence and then with respect to the alternate mapping the court looked at those disclosures and said you know what this doesn't put anyone on notice that in fact you were intending to rely on that in that particular disclosure that brenner would send account information both locations your reply confirmed that your general discussion the petition that appendix eighteen that discusses the petition talks about a secure provider map the customer object to the account identifying the commission but doesn't discuss her provider sending the information to the rd party bank and so in the end they felt that then this excluded as being necessarily knew what they said was it's just not there it's not in the petition at any of the claims based on the combination thank you thank you council we bottle thank you your honor it's important to remember with respect to the shipping embodiment of brenner that brought us reasonable interpretation is the claim construction standard that applies here so there was a question to mr mr matthews about whether enable means approved and whether deny means terminate there is no support in the specification for those interpretations nor is it the broadest reasonable interpretation of the terms enable or deny us our urges the court to ignore the plain language of the dependent claims and interpret the rd party limited to a financial entity such as a bank but they can't point to any disclosure in their patent of a bank that provides financial approval and also provides the delivery recited in the dependent claims nor would that make any sense with respect to the linking aspect of brown or the banking embody meant we made no such concession that mr matthews asserted at the oral argument in front of the board that the secure provider at the hearing we understood the board line of questioning to refer to using the linking information to look up the customer's account number specifically and i would refer the court to a six hundred and sixty eight through a six hundred and sixty nine for that nothing in our responses to the board conceded that the secure provider and bank would not both use the linking information for separate purposes and in fact it was undisputed until the final written decision that the secured provider uses the linking information to obtain the customer's address