[00:00:10] Speaker 02:
We have four cases on the calendar this morning.

[00:00:13] Speaker 02:
A trademark case from the PTO, two patent cases, one from a PTO, one from a district court, and an employee case from the MSPB that's submitted on the briefs and will therefore not be argued.

[00:00:31] Speaker 02:
The first case is Virginia Innovation Sciences versus Amazon 2018-1495.

[00:00:40] Speaker 02:
Mr. Jackson.

[00:00:46] Speaker 01:
Thank you, Your Honor.

[00:00:46] Speaker 01:
May it please the Court?

[00:00:48] Speaker 01:
The District Court erred in finding the 140 patent invalid under 101 because primarily the District Court stripped away, didn't look at the claims rather, as a whole and instead looked at each individual item and found that each of those items were by themselves conventional and

[00:01:10] Speaker 01:
Ultimately, by ignoring the claim as a whole, found it was directed to an abstract idea.

[00:01:16] Speaker 01:
And then under step two, found that there wasn't an inventive concept.

[00:01:21] Speaker 01:
Because again, in the courts of view, everything was conventional.

[00:01:24] Speaker 04:
It was already known and conventional, wasn't it, to have a server for handling online payment transactions with credit card information in which the server would be able to handle that in a secure manner?

[00:01:38] Speaker 01:
That was known, yes, Your Honor.

[00:01:40] Speaker 01:
But the difference here is the architecture as a whole that's in the claim.

[00:01:44] Speaker 01:
So it's not simply that there's an online payment server that you can send secure information, credit card information to.

[00:01:51] Speaker 01:
In fact, if you look at figure 1 of the 140 patent, that's an embodiment in which that occurs.

[00:01:56] Speaker 01:
Now, it happens to be a combined merchant server and credit card information processing server.

[00:02:02] Speaker 01:
And that's part of the concern behind the invention is the idea that to secure that credit card information

[00:02:08] Speaker 01:
take it out of the hands of merchants who you may or may not want to have that information and instead direct that to a secure, a known secure server so that it can be securely processed separate from the selecting the items at the, what's called in the patent the WebDB server.

[00:02:26] Speaker 01:
And then the communication between the two servers, both the redirecting of the user from the WebDB server to the secure server as well as the confirmation information that's routed back

[00:02:37] Speaker 01:
automatically to the WebDB server so that on the merchant side of things the computer can both update its inventory and receive confirmation that the purchase has gone through or not.

[00:02:49] Speaker 04:
Let me try it a different way.

[00:02:51] Speaker 04:
If the goal is to try to do an online payment in a secure manner, what is the inventive concept, what is the inventor's contribution beyond

[00:03:07] Speaker 04:
sending this customer from a server that can't do a transaction securely to a server, a known server that can do the transaction securely?

[00:03:20] Speaker 01:
Well, a known server, again, if I could just caveat that a little bit, it was known to have a single server that received both merchant information, let the buyer shop, and then also submit that credit card information.

[00:03:35] Speaker 01:
That's figure one in the patent.

[00:03:37] Speaker 01:
What's novel, what's the inventive concept, is the overall architecture that's shown in Figure 2 and the way that the different pieces of that system interact.

[00:03:46] Speaker 01:
And that interaction is recited in the claims.

[00:03:50] Speaker 01:
So that's the inventive concept here.

[00:03:53] Speaker 01:
And frankly, I'm sorry.

[00:03:54] Speaker 03:
Do you put me in the claim language?

[00:03:56] Speaker 03:
What is the inventive concept, according to you?

[00:03:59] Speaker 01:
It's the combination, Your Honor.

[00:04:01] Speaker 01:
Let me look at my notes quickly here.

[00:04:03] Speaker 01:
It's the combination of both the payment server

[00:04:06] Speaker 03:
No, what in the claim language?

[00:04:08] Speaker 03:
I'm looking at claim 17.

[00:04:09] Speaker 01:
OK.

[00:04:10] Speaker 03:
What claim language in there do you think articulates this innovative idea that you're describing?

[00:04:27] Speaker 01:
So in claim 17, it's multiple parts of this claim, Your Honor.

[00:04:32] Speaker 01:
It's receiving at the payment server the credit card information,

[00:04:35] Speaker 01:
dot dot dot.

[00:04:37] Speaker 03:
Well, receiving credit card information is not innovative or novel, right?

[00:04:42] Speaker 01:
Yes, Your Honor.

[00:04:42] Speaker 01:
It's the combination.

[00:04:43] Speaker 03:
Yes, it is.

[00:04:43] Speaker 03:
Receiving credit card information is novel.

[00:04:45] Speaker 01:
No, I'm sorry.

[00:04:46] Speaker 01:
I was agreeing with you.

[00:04:48] Speaker 03:
Okay, good.

[00:04:48] Speaker 01:
Got it.

[00:04:49] Speaker 01:
It's the combination of the pieces together, Your Honor.

[00:04:52] Speaker 03:
I still don't understand what pieces combine together.

[00:04:55] Speaker 01:
It's the combination of the WebDB server where the user browses and makes selections of items to be purchased.

[00:05:03] Speaker 01:
And that's what's referred to in the claims

[00:05:05] Speaker 01:
as the website listing the items for purchase.

[00:05:16] Speaker 01:
So the websites are known to operate on servers or other computing devices, servers typically.

[00:05:30] Speaker 01:
So it's the website listing the items.

[00:05:33] Speaker 01:
And then the purchaser selects the items for purchase, is redirected to a payment server.

[00:05:39] Speaker 01:
The payment server accepts the credit card information instead of accepting it through the item, the website listing the items.

[00:05:47] Speaker 01:
And then the credit card payment server processes the information with the various banks, sends the confirmation information back to.

[00:05:56] Speaker 03:
You want to make a transaction on a website.

[00:05:58] Speaker 03:
Instead of giving the website your credit card, it sends you to a secure server.

[00:06:02] Speaker 03:
It's hard for me to see how that's not an abstract idea.

[00:06:06] Speaker 03:
Transmitting something from a location that's not secure to one that is, so it accepts credit card information for a sale.

[00:06:14] Speaker 01:
But it's the overall architecture, Your Honor.

[00:06:16] Speaker 03:
There is no overall architecture.

[00:06:18] Speaker 03:
You haven't described any architecture.

[00:06:19] Speaker 03:
You described a website, and you described a secure server.

[00:06:22] Speaker 03:
That's not architecture.

[00:06:24] Speaker 01:
in the communications between those.

[00:06:26] Speaker 01:
I mean, Your Honor, I would disagree, but in the communications among those pieces as well.

[00:06:31] Speaker 01:
So you have the buyer who's using his or her own computer to browse and make selection of items, but it's also then, it's the interplay between the two, the website listing the items and the payment server, how that's processed, and also the automatically updating the merchant server or the website listing the items with the confirmation and providing it, allowing it to,

[00:06:54] Speaker 01:
update the inventory and confirm that the payment has been processed accordingly.

[00:06:59] Speaker 02:
Do you want to address the other patents briefly?

[00:07:03] Speaker 02:
Yes, Your Honor.

[00:07:09] Speaker 01:
With the 398 patent, the district court's errors were in construing multimedia content item and destined for a destination device located within a home.

[00:07:22] Speaker 01:
So the multimedia content item error was based on this idea that the district court said that the format of the item that's received from the internet, some source across the internet, typically, that whatever format is associated with that item has to be the same format that's applied to the display device.

[00:07:43] Speaker 01:
In claim one, we're talking about the television.

[00:07:51] Speaker 01:
If you look at the claim itself, the claim says that it's not the unconverted, originally received multimedia content item that's applied to the television.

[00:08:01] Speaker 01:
It's the converted version.

[00:08:03] Speaker 01:
So the converted version in the claim, it says it applies display formatting to the multimedia content item so that it can be appropriate displayed on the display device.

[00:08:13] Speaker 01:
The district court completely ignored that, it missed that in its analysis and said that

[00:08:18] Speaker 01:
the formatting that's applied to the television has to be the same formatting that was associated with the multimedia content item when it was received initially.

[00:08:27] Speaker 01:
But the second point with respect to destined for a destination device within the home, that error there really comes out of the idea that the district court was looking at the wrong device in the claims as being the device that was doing the converting and applying the display formatting.

[00:08:45] Speaker 01:
This claim is directed to

[00:08:47] Speaker 01:
the embodiment of Figure 9 in the specification.

[00:08:51] Speaker 01:
And in Figure 9, what happens is that a multimedia content item is received by a cell phone.

[00:08:59] Speaker 01:
The cell phone relays that to what's referred to as an MTSCM in the specification.

[00:09:04] Speaker 01:
And the MTSCM is the thing that takes the file, applies the display formatting, and forwards it to the television.

[00:09:11] Speaker 01:
So the claim says that the multimedia content item is received from the wireless terminal device.

[00:09:16] Speaker 01:
in that embodiment the wireless terminal device corresponds to the cellular phone.

[00:09:21] Speaker 01:
So the converting, the reception, the conversion and applying the display formatting and sending it to the display device occurs in the MTSCM in Figure 9.

[00:09:30] Speaker 04:
I don't recall seeing anything in the specification that contemplated

[00:09:37] Speaker 04:
user at the cell phone stage in the middle of embodiment figure nine or any other embodiment where there's a cell phone in the middle of the whole communication, where the user at that moment in time selects the destination device.

[00:09:58] Speaker 01:
It's, it's, the specification is, I want to say, let me, if I could, you want to check that quickly.

[00:10:14] Speaker 01:
The specification is silent, at least the portion I'm looking at here.

[00:10:19] Speaker 01:
I'll look again on the break.

[00:10:20] Speaker 01:
But the portion I'm reading here about Figure 9 is silent as to the user's involvement.

[00:10:25] Speaker 01:
So it would permit the cell phone to be perhaps pre-configured to route it to the MTSCM or the user could make a selection and route it to the MTSCM.

[00:10:37] Speaker 01:
It's not dictated in the specification one way or the other.

[00:10:40] Speaker 01:
And the claims don't require it one way or the other either.

[00:10:43] Speaker 04:
I guess when I read the claim limitation of a multimedia content item originating from a source and then received by something, I assume it's a conversion module, received through a wireless network and from a wireless device, to me that strongly suggests that

[00:11:06] Speaker 04:
the multimedia content item, whatever it is, is originated somewhere outside at a source.

[00:11:12] Speaker 04:
And then it gets funneled through a wireless network and through the cell phone to the unstated conversion module, as is.

[00:11:25] Speaker 04:
And there doesn't seem to be any contemplation or room for any alteration to said multimedia content item.

[00:11:32] Speaker 04:
only until later in the claim, where later in the claim, the unstated conversion module converts the multimedia content item into something called a converted multimedia content item.

[00:11:45] Speaker 04:
And now we know, at that moment in time in the claim, the multimedia content item, format one, has been reformulated into multimedia content item, format two.

[00:11:59] Speaker 04:
What's wrong with looking at the claim language in that way?

[00:12:02] Speaker 01:
I think you, if I'm understanding your statement, I think I agree with you 100%.

[00:12:07] Speaker 01:
So in Figure 9, the item is routed through the phone unchanged.

[00:12:13] Speaker 01:
Well, it could be unchanged.

[00:12:16] Speaker 01:
It's certainly not converted per the claim.

[00:12:18] Speaker 01:
It's the conversion module, the MTSCM, which is downstream of the phone.

[00:12:23] Speaker 01:
In the claim in Figure 9, shown in Figure 9, that's the module.

[00:12:27] Speaker 01:
that does the conversion.

[00:12:28] Speaker 01:
And it applies the display formatting appropriate for the display device.

[00:12:31] Speaker 01:
And that's where the district court misread the claim.

[00:12:35] Speaker 01:
The district court was thinking the phone had to do the conversion.

[00:12:38] Speaker 01:
And that's why when you, if you look at that part of the claim where it says, you know, receiving and then converting, it's looking at the phone as doing that.

[00:12:48] Speaker 01:
And so from that phone's perspective, it thinks that the multimedia content item- My understanding is you want the claim multimedia content item

[00:12:56] Speaker 04:
as used in the claim to be open to the possibility of that multimedia content item being somehow altered, modified, reformatted in some way before the step of converting the multimedia content item into a converted multimedia content item.

[00:13:13] Speaker 04:
And the district court, you're right, there could be some loose language in there, but ultimately the district court ruled that the claim doesn't allow for that kind of

[00:13:27] Speaker 04:
Alteration or modification of the multimedia content item before the actual expressed step of converting the multimedia content item and so what I'm trying to Find out from you and the remaining moments you have is what's wrong with that based on the claim language that says multimedia content item originates from a source and Then it gets routed that multimedia content item as it originates from the source Gets routed through a wireless network and then routed through a cell phone

[00:13:57] Speaker 01:
I think that you're correct, Your Honor, and it touches on another error that the district court made, which I haven't discussed yet.

[00:14:03] Speaker 01:
But the item gets routed through the phone and to the conversion device.

[00:14:07] Speaker 01:
In the case of the accused products, it's the Amazon Fire TV and Fire Stick devices.

[00:14:12] Speaker 01:
That's where the conversion is done.

[00:14:14] Speaker 01:
That's the conversion in the claim.

[00:14:16] Speaker 01:
That's where the display formatting is applied for the destination device, typically a television.

[00:14:21] Speaker 01:
The error with respect to what's happening in the phone is that the district court resolved a factual error against innovation at the district court level regarding formatting and whether the file in fact changes or not.

[00:14:34] Speaker 04:
Is this about compression and decompression?

[00:14:35] Speaker 01:
It's about, yes, compression and decompression.

[00:14:39] Speaker 01:
And the way the particular Miracast accused functionality works, there was... How does that change the formatting?

[00:14:45] Speaker 04:
It's just reducing the number of bits that are getting transmitted in the video signal in the format that it's in.

[00:14:51] Speaker 01:
That's our point, that the compression formatting is different from the display formatting in the claim.

[00:14:57] Speaker 01:
And I think that's part of the confusion that the judge had, was he was looking at formatting as being formatting is formatting is formatting.

[00:15:03] Speaker 01:
It's all the same.

[00:15:04] Speaker 01:
And it's not.

[00:15:05] Speaker 01:
And in our specification, it talks about how files are downloaded using compression formats.

[00:15:10] Speaker 01:
Fewer bits are transmitted.

[00:15:12] Speaker 01:
But it's not in the claim, but in the specification, it decompresses the file.

[00:15:19] Speaker 01:
and then applies the display formatting.

[00:15:20] Speaker 01:
And that's the step that's recited in the claim.

[00:15:23] Speaker 01:
At the district court, we had 30b6 testimony from Amazon's witnesses explaining that the file format that the phone receives is the same file format that the phone transmits to the accused Fire TV devices.

[00:15:36] Speaker 02:
Counsel, you've just about consumed all of your huddle time, but let's hear from the other side.

[00:15:42] Speaker 02:
We'll give you two minutes for a huddle.

[00:15:43] Speaker 01:
All right.

[00:15:44] Speaker 01:
Thank you, Your Honor.

[00:15:50] Speaker 02:
Mr. Haddon.

[00:15:51] Speaker 05:
May it please the court, Dave Haddon for Amazon.

[00:15:54] Speaker 05:
Just picking up on what Your Honor was discussing, you have it exactly right, the way the patent works and the way Judge O'Grady understood it.

[00:16:04] Speaker 05:
There is some, I think, a mistake in some language in his summary judgment order where he refers to being in the format of the destination device.

[00:16:14] Speaker 05:
And I think he really meant

[00:16:15] Speaker 05:
essentially, the converting device.

[00:16:17] Speaker 05:
So he clearly understood there was a conversion step, just as you have articulated.

[00:16:24] Speaker 05:
And the issue, as somebody judgment was, going back to how they're mapping this claim.

[00:16:29] Speaker 05:
They're mapping this claim to this use of Miracast on a cell phone to a Fire TV device.

[00:16:37] Speaker 05:
And they're saying that the Fire TV device is what performs the conversion.

[00:16:42] Speaker 05:
So up to that point, the received

[00:16:45] Speaker 05:
multimedia content item has to be what was received by the cell phone, unconverted, and it has to be destined for the television.

[00:16:55] Speaker 05:
And none of that is true in Miracast, as Judge O'Grady recognized, because the way Miracast works is it creates a new video stream of whatever is on the user's screen on their phone.

[00:17:09] Speaker 05:
So as Judge O'Grady properly recognized, the video that you get in from your

[00:17:15] Speaker 05:
from the outside source on your cell phone stops at your cell phone.

[00:17:20] Speaker 05:
And Miracast is a completely separate process that just samples the screen buffer on the cell phone and creates a new video stream of whatever is being displayed on your screen.

[00:17:31] Speaker 05:
It could be pictures of your kids.

[00:17:33] Speaker 05:
It could be the home screen of your phone.

[00:17:36] Speaker 05:
Miracast knows nothing about this received video that may have come in to the phone originally.

[00:17:42] Speaker 05:
So it's a completely different video.

[00:17:44] Speaker 04:
I guess when the video signal gets displayed on the phone, then Miracast is going to capture that.

[00:17:50] Speaker 04:
Well, Miracast does.

[00:17:51] Speaker 04:
And then re-display it on the television.

[00:17:55] Speaker 05:
Well, it doesn't capture the video signal.

[00:17:57] Speaker 05:
It just samples the frame buffer of the phone at a fixed 30 frame per second rate and creates a new video stream from that sampling, which will be of whatever is on the user's phone.

[00:18:10] Speaker 05:
And it will be in a different format

[00:18:13] Speaker 05:
from whatever was received on the phone, because the format is fixed by Miracast.

[00:18:18] Speaker 05:
It has a fixed frame rate, and it depends on whatever the resolution of the user's phone was, rather than what the video was that was originally sent from the outside source.

[00:18:30] Speaker 05:
So, Judge O'Grady got the concepts completely correct, both that that cannot be, the conversion can't happen at the Fire TV, because

[00:18:41] Speaker 05:
What the Fire TV receives is not what the phone received from the outside source.

[00:18:47] Speaker 05:
And when the video is received, it's not destined for a television or anything else other than the cell phone, because all you're doing is downloading a video to your cell phone.

[00:19:01] Speaker 02:
You want to address the one-photing pattern?

[00:19:03] Speaker 05:
Yes, Your Honor.

[00:19:09] Speaker 05:
VIS's counsel acknowledged the 140 patent explains that figure one is completely conventional, including the 128-bit encryption, the credit card processing, the interactions between the user and an e-commerce site.

[00:19:29] Speaker 05:
So their argument below was that the magic and the invention in the 140 patent was that the user was switched

[00:19:38] Speaker 05:
from this merchant server to the payment server.

[00:19:42] Speaker 05:
But there is nothing in the patent that describes how that switching is done.

[00:19:48] Speaker 05:
In fact, the claim itself just uses the passive voice.

[00:19:52] Speaker 05:
It says the user was switched.

[00:19:54] Speaker 05:
It doesn't even explain who does the switching.

[00:19:58] Speaker 05:
And their expert at summary judgment acknowledged that there is no mechanism for performing that switching in the claim.

[00:20:06] Speaker 04:
So I guess in your view then if the claim had recited some operation, maybe even a simple operation of transferring the customer from the merchant server to the payment server, in your mind then it would satisfy section 101?

[00:20:24] Speaker 05:
It would be a closer call.

[00:20:26] Speaker 05:
It depends on what that mechanism is.

[00:20:29] Speaker 05:
But here we have the confluence of all the 101 benchmarks.

[00:20:35] Speaker 05:
We have essentially a standard commercial transaction using admittedly conventional technology.

[00:20:42] Speaker 05:
And when you get to the point of what the claim novelty is, there's nothing but an empty black box with a result.

[00:20:47] Speaker 04:
Did the district court articulate what the abstract idea is in this claim?

[00:20:54] Speaker 04:
I don't remember the district court saying,

[00:20:57] Speaker 04:
Under step one, I have to figure out if this claim is directed to an abstract idea.

[00:21:02] Speaker 04:
I do conclude it's directed to an abstract idea.

[00:21:05] Speaker 04:
And the abstract idea is X. What is X?

[00:21:08] Speaker 05:
I don't recall precisely, Your Honor.

[00:21:13] Speaker 05:
We argued this at the pleading stage, and then it came up again at summary judgment.

[00:21:18] Speaker 05:
I believe it was processing a transaction with a secure payment server.

[00:21:24] Speaker 05:
the idea, at least the one that we proposed.

[00:21:26] Speaker 05:
And I don't recall if Judge O'Grady articulated that.

[00:21:30] Speaker 05:
Again, it's summary judgment.

[00:21:32] Speaker 05:
But that was the basic idea.

[00:21:34] Speaker 05:
Let me go back to one point, because there's some discussion about how there's a novel architecture here, because there's two servers versus one.

[00:21:42] Speaker 05:
That is not true either.

[00:21:45] Speaker 05:
And it's clear from the prosecution history, there was this Ogram reference that

[00:21:52] Speaker 05:
explained essentially the same thing.

[00:21:54] Speaker 05:
So user would be worth making a purchase on a merchant website.

[00:21:58] Speaker 05:
They would get to the payment stage, and their computer would connect with a different server to complete the payment.

[00:22:06] Speaker 05:
And over and over again, the applicant distinguished Algram by saying, no, the switching there is initiated by the user's computer.

[00:22:18] Speaker 05:
That's not what my patent does.

[00:22:20] Speaker 05:
And so I'm different.

[00:22:21] Speaker 04:
What did the examiner's reasons for allowance say?

[00:22:25] Speaker 05:
That.

[00:22:26] Speaker 05:
That was the only thing.

[00:22:28] Speaker 05:
They said, over and over again, the switch is not initiated by the user's computer, so it was allowed.

[00:22:34] Speaker 05:
There's no explanation of how the switching actually occurred, which was the frustrating part where you got the claim construction.

[00:22:40] Speaker 05:
As you can see in the order, Judge O'Grady basically throws up his hands.

[00:22:45] Speaker 05:
He says, I don't know how to construe this.

[00:22:47] Speaker 05:
I don't know how you can distinguish Holgram like they did.

[00:22:51] Speaker 05:
and then have the switching point to anything concrete, because there's nothing in the patent that explains how it actually happens.

[00:23:00] Speaker 05:
So this, to me, and I've argued several of these 101 cases, this is not even a close call.

[00:23:09] Speaker 05:
There is nothing in this patent that could be a specific solution or an improvement to computer technology.

[00:23:16] Speaker 05:
They're claiming the magic is in this switching,

[00:23:19] Speaker 05:
But there's no mechanism to describe even how that would occur.

[00:23:23] Speaker 02:
The title reads method and system for conducting business.

[00:23:28] Speaker 05:
Yes, it's a system for conducting business.

[00:23:30] Speaker 05:
So it's a business method with no technology using conventional, admittedly conventional, service and encryption.

[00:23:38] Speaker 05:
And then it adds this magic step that it is just a result.

[00:23:43] Speaker 04:
I guess the other side would say there was a problem.

[00:23:46] Speaker 04:
The problem was how do you do it

[00:23:49] Speaker 04:
online credit card payment with a server that is unsecured.

[00:23:58] Speaker 04:
And then they said, that's the problem.

[00:24:00] Speaker 04:
Here's our solution.

[00:24:01] Speaker 04:
Our solution is, in the means of accomplishing a secure transaction, is to transfer the customer from that initial unsecured server to a server that can handle the credit card payment in a secure manner.

[00:24:18] Speaker 04:
Right.

[00:24:19] Speaker 04:
what you call the abstract idea, they call a means, an application of the abstract idea.

[00:24:27] Speaker 05:
And if there was a means, a technical solution for transferring the user from one server to another in a secure manner that was a solution to that problem, then they would be at least along the road to having a patentable idea.

[00:24:43] Speaker 05:
But they don't have that.

[00:24:44] Speaker 05:
So they haven't even started on the path.

[00:24:47] Speaker 05:
They're just claiming

[00:24:48] Speaker 05:
It would be awesome if you could do this that's claimed the result.

[00:24:53] Speaker 03:
Is it correct that for the 844 patent it was a stipulation of non-infringement based on the claim constructions?

[00:24:59] Speaker 05:
Yes, sort of.

[00:25:01] Speaker 05:
So VIS says we stipulate a non-infringement based on a claim construction.

[00:25:08] Speaker 05:
There was no actual stipulation.

[00:25:09] Speaker 05:
They got filed.

[00:25:11] Speaker 05:
It got sort of baked into the summary judgment record.

[00:25:15] Speaker 03:
But the court didn't rule on summary judgment.

[00:25:16] Speaker 03:
He accepted the stipulation.

[00:25:18] Speaker 03:
Is that correct?

[00:25:18] Speaker 03:
Correct.

[00:25:18] Speaker 03:
He did not rule.

[00:25:19] Speaker 03:
So what do I do if I am troubled by one of the claim constructions of the many with regard to the 844?

[00:25:30] Speaker 05:
That's a good question.

[00:25:32] Speaker 05:
I think you have to affirm.

[00:25:35] Speaker 03:
But they stipulated in light of all the constructions.

[00:25:40] Speaker 03:
Yeah.

[00:25:40] Speaker 05:
I have the same.

[00:25:42] Speaker 05:
lack of clarity on that issue.

[00:25:46] Speaker 05:
I think the short answer is there is no written description for these claims as the court found at claim construction.

[00:25:54] Speaker 05:
The only reason he didn't, I think, pull up the trigger and rule that on summary judgment is because of this.

[00:26:00] Speaker 03:
I have no idea what you're talking about.

[00:26:02] Speaker 03:
None of that is in front of us.

[00:26:03] Speaker 03:
There's no holding of a lack of written description or anything like that.

[00:26:06] Speaker 03:
And I'm sure as heck not going to do that on appeal.

[00:26:08] Speaker 03:
Written description is a question of fact.

[00:26:10] Speaker 03:
I don't even understand why you would make that argument.

[00:26:13] Speaker 03:
It's not in your briefs.

[00:26:14] Speaker 03:
It's not relevant.

[00:26:15] Speaker 03:
But in any event, so what's troubling me about the 844 patent in particular is claim 28 clearly specifies a wireless device.

[00:26:24] Speaker 03:
claim 35 and 52 absolutely do not require a wireless device.

[00:26:30] Speaker 03:
And we've read a wireless device limitation into both of those claims, and I'm not certain why.

[00:26:35] Speaker 05:
Oh, sure, Your Honor.

[00:26:37] Speaker 05:
I think it doesn't say wireless device in 35 and 52, but it says wireless transmitter.

[00:26:45] Speaker 05:
And it includes the same functionality.

[00:26:50] Speaker 03:
No, actually it says wireless communication channel.

[00:26:53] Speaker 05:
All right, no.

[00:26:54] Speaker 05:
But there's also a wireless transmitter.

[00:26:57] Speaker 05:
So if you look at 35.

[00:27:00] Speaker 02:
Claim 52?

[00:27:00] Speaker 05:
Well, I was starting with 35.

[00:27:03] Speaker 05:
I can go to 52.

[00:27:04] Speaker 05:
52 says, where in the wireless signal transmitter is designated to transmit an item's status signal?

[00:27:12] Speaker 05:
This is at appendix 141.

[00:27:14] Speaker 02:
And that's in 35 also.

[00:27:17] Speaker 02:
Yes.

[00:27:18] Speaker 03:
But that doesn't mean everything's done by a single wireless device.

[00:27:22] Speaker 03:
It doesn't mean all the steps in the claim are performed by a single wireless device.

[00:27:26] Speaker 05:
Well, I think it does for the same reason, Your Honor, which is that the claim requires the same identifier for the wireless signal transmitter that is used for both

[00:27:44] Speaker 05:
So the wireless signal transmitter sends the item status signal, right, the diaper update in the specification.

[00:27:50] Speaker 05:
But it also has the same identifier has to be used for the purchase transaction.

[00:27:57] Speaker 05:
So if you look at... Well, let's just look at claim 35.

[00:28:00] Speaker 04:
I am.

[00:28:01] Speaker 04:
Okay, claim 35 says an output interface, right, is configured to communicate the information through a communication channel, right?

[00:28:12] Speaker 04:
Yes.

[00:28:13] Speaker 04:
That's the first time the claim refers to an output interface.

[00:28:16] Speaker 04:
Earlier in the claim, it refers to this wireless device, wireless transmitter, right?

[00:28:21] Speaker 04:
Yes.

[00:28:22] Speaker 04:
So it stands to reason that the never before mentioned output interface could be something different than the wireless transmitter.

[00:28:31] Speaker 05:
Yes, Your Honor.

[00:28:32] Speaker 04:
OK, so just if you could answer Judge Moore's initial question, let's assume, hypothetically,

[00:28:40] Speaker 04:
We're not going to sort out claim 35 and 52 right now.

[00:28:44] Speaker 04:
But let's assume for a moment, hypothetically, we disagree with the district court's construction that in claim 35 and 52, just as in claim 28, it's the wireless device slash wireless transmitter that is communicating across the communication channel.

[00:29:02] Speaker 04:
What does that do to the summary judgment ruling of non-infringement?

[00:29:06] Speaker 04:
Does it necessarily

[00:29:08] Speaker 04:
require us to vacate it because the stipulation of non-infringement was predicated on all of the claim constructions that the judge did.

[00:29:21] Speaker 04:
Or was it merely just some of them?

[00:29:24] Speaker 04:
Like, for example, there's something about your accused product that if the other constructions were to be affirmed,

[00:29:31] Speaker 04:
There's just no earthly way that that accused product could infringe these claims as construed with the other limitations about an item status signal and detection of an updated condition.

[00:29:46] Speaker 05:
Yeah, there's an easy answer to that, right?

[00:29:48] Speaker 05:
The accused product was the dash button.

[00:29:51] Speaker 05:
So you push the button when you want to order something.

[00:29:54] Speaker 05:
There is no item status signal that is being associated or conveyed.

[00:30:00] Speaker 05:
There is no updated condition of a merchandise involved.

[00:30:04] Speaker 05:
Nothing is detected.

[00:30:06] Speaker 05:
There is no change in any condition of the merchandise.

[00:30:09] Speaker 05:
And the merchandise in the claim has to be the merchandise for which the updated status, the changing condition was detected.

[00:30:18] Speaker 05:
There's no such thing in their mapping.

[00:30:23] Speaker 05:
The lower court had claimed construction.

[00:30:24] Speaker 05:
They took no position on any of these terms so they could make up a construction after the fact.

[00:30:29] Speaker 05:
They had nothing to do with item status or updated condition or a change in the merchandise.

[00:30:37] Speaker 05:
So if item status signal is affirmed or updated condition of a merchandise is concerned, is affirmed, or even just the antecedent basis point that the merchandise has to refer to the

[00:30:51] Speaker 05:
merchandise for which the updated condition is detected, any of those, there can be no infringement.

[00:30:58] Speaker 05:
Let me just follow up on the one point from Judge Moore, because there is a requirement that all of this purchasing and updated signal transmitting is done by the same device, because in Claim 35, it says, we're in the system is further configured to identify a purchase request

[00:31:18] Speaker 05:
for the merchandise based on the recognition of the unique identifier corresponding to the wireless signal transmitter.

[00:31:26] Speaker 05:
This is in around line 39 in column 17, Appendix 141.

[00:31:31] Speaker 05:
So just like Claim 28, though it doesn't talk about a wireless device, it talks about this wireless signal transmitter.

[00:31:40] Speaker 05:
There has to be one of those that has a unique identifier that is used both

[00:31:46] Speaker 05:
to send the updated status signal and also the purchase request, because it is that identifier that has to be recognized in the purchase request.

[00:31:56] Speaker 02:
And that's the one device that- Council, as you see, time has expired.

[00:32:00] Speaker 02:
Do you have one final thought?

[00:32:02] Speaker 05:
No, I was just trying to close the loop on those claims.

[00:32:05] Speaker 05:
I think they are consistent, that the language is slightly different.

[00:32:09] Speaker 05:
Thank you.

[00:32:10] Speaker 02:
Thank you.

[00:32:11] Speaker 02:
Mr. Jackson, there's two minutes for rebuttal.

[00:32:17] Speaker 04:
Can you answer the question about even if we were to agree with you about the meaning of communication channel and whether it could be a different device other than the wireless transmitter that's transmitting over that communication channel, just with respect to claims 35 and 52, what difference does that make for any infringement theory?

[00:32:39] Speaker 04:
Why wouldn't you still be stuck with

[00:32:44] Speaker 04:
non-infringement outcome in light of an affirmance of the claim construction for item status signal and updated condition and all of that?

[00:32:55] Speaker 01:
Your Honor, obviously we disagree that those constructions are correct and it's laid out primarily in our brief on that, but if any of these, because there wasn't a segregation of which claim term was dispositive or that required all of them,

[00:33:09] Speaker 01:
I think it has to be remanded to the district court for further consideration.

[00:33:12] Speaker 04:
I would just like you to explain what your infringement theory would be for Amazon's Dash button when item status signal and all the rest are getting affirmed in terms of their claim constructions.

[00:33:26] Speaker 01:
So the updated condition of the merchandise would be the status of the merchandise as to whether, first of all, we start from the end.

[00:33:39] Speaker 01:
can't be limited to a single item.

[00:33:40] Speaker 01:
It's referred to in the specification.

[00:33:42] Speaker 01:
There's the inventory management aspect of the claims, of the specification in the claims, primarily in figure eight, I believe it is.

[00:33:50] Speaker 01:
So it's more than just a single item.

[00:33:52] Speaker 04:
How is the pressing of the dash button providing information about a detected change in some condition of the merchandise?

[00:34:03] Speaker 04:
I'm sorry, Your Honor.

[00:34:04] Speaker 01:
The detected change is also a mistake in error.

[00:34:07] Speaker 04:
I know I'm asking you this is a hypothetical Okay, maybe it's not hypothetical, but really let's just call it for now a hypothetical Your honor, I think I would be the infringement theory for your dash button when the claim requires The signal the item status signal to provide information about a detection of a change in condition of the merchandise Your honor

[00:34:32] Speaker 01:
That's frankly a hypothetical I haven't considered prior to today.

[00:34:37] Speaker 01:
And I'd like to... But you know your case, right?

[00:34:40] Speaker 04:
You know your patent.

[00:34:41] Speaker 04:
You know the accused product.

[00:34:44] Speaker 04:
It's pressing a button.

[00:34:46] Speaker 01:
The accused product.

[00:34:47] Speaker 01:
It's pressing a button in the process.

[00:34:48] Speaker 04:
To order more detergent or something like that.

[00:34:52] Speaker 04:
That's right, Your Honor.

[00:34:53] Speaker 04:
OK.

[00:34:53] Speaker 04:
So I mean, I'm just sitting here wondering what could you possibly say to Judge O'Grady

[00:35:03] Speaker 04:
to persist with an infringement theory.

[00:35:06] Speaker 01:
Right.

[00:35:07] Speaker 01:
And the problem I'm having, Your Honor, is you're asking me to take some of the constructions that we don't agree with and apply them, as well as some constructions which I'm assuming you're suggesting might be reversed, and then try to do that analysis on the fly.

[00:35:22] Speaker 01:
And I haven't prepared that, Your Honor.

[00:35:25] Speaker 03:
I don't understand.

[00:35:26] Speaker 03:
How do you not know whether you have to win on all four terms on appeal to prevail or not?

[00:35:31] Speaker 03:
How did you come to court not knowing that?

[00:35:33] Speaker 01:
I believe that we can prevail on, I think it's less than all of them, but I'm not, I think it's the communication, the longer one, which says, configure to communicate the information for processing of the purchase request.

[00:35:46] Speaker 01:
That one, that one we absolutely have to have reversed, your honor.

[00:35:50] Speaker 01:
That one requires, because the way the court read it, it requires a single device to send both purchase requests.

[00:35:54] Speaker 01:
But that's not my question.

[00:35:55] Speaker 03:
Not my question whether you have to have that reversed.

[00:35:57] Speaker 03:
My question is there are four separate plain terms, each which probably result in non-infringement.

[00:36:02] Speaker 03:
If we only reverse one, how do you not have non-infringement?

[00:36:06] Speaker 01:
I think item status signal, we could prevail below.

[00:36:10] Speaker 03:
If the construction were left intact?

[00:36:13] Speaker 01:
I think if it were left intact.

[00:36:15] Speaker 03:
How about an updated condition of merchandise?

[00:36:19] Speaker 03:
How could you possibly prevail on that, given the technology, if you left intact that definition?

[00:36:29] Speaker 01:
detected change, if the detected change is detecting that the inventory is low, then I think we would prevail on that.

[00:36:37] Speaker 01:
Again, it would have to be, merchandise couldn't be limited to a single item because we're not monitoring, in the inventory control side, we're not monitoring a single item as a group.

[00:36:48] Speaker 04:
All the pressing of the button conveys is the desire for more of the product, more detergent for example.

[00:36:58] Speaker 04:
That's right.

[00:36:59] Speaker 04:
convey any information that the customer has run out of detergent or has fallen below a certain threshold amount of detergent in the household.

[00:37:13] Speaker 04:
It just wants more.

[00:37:14] Speaker 04:
So I guess I'm at a loss why it's detecting a change in any condition.

[00:37:22] Speaker 04:
It could be that the person never had any detergent.

[00:37:27] Speaker 04:
and for the very first time is requesting the detergent.

[00:37:32] Speaker 01:
I think that detecting a change, I'm not disagreeing there wouldn't be a challenge to prevail.

[00:37:40] Speaker 01:
And again, I wasn't counsel record below, so I don't know the case as well as someone would.

[00:37:45] Speaker 01:
But having studied the record on appeal here, I'm not sure that we have the evidence necessary to make that call that we couldn't prevail below.

[00:37:54] Speaker 01:
Because I think that you could, again,

[00:37:56] Speaker 01:
You know, you're implicitly construing the detected change to mean it's got to be something automatic.

[00:38:02] Speaker 01:
And I'm not sure that that's supported by the record, Your Honor.

[00:38:05] Speaker 02:
Thank you, counsel, for the question, yes.

[00:38:08] Speaker 03:
One last, it's not really a question so much as it is a statement.

[00:38:11] Speaker 03:
The only people that would benefit from this being vacated to Merman hit based on one of four possible bases for non-imprisonment are you, the lawyers.

[00:38:20] Speaker 03:
because your client couldn't possibly benefit under these facts.

[00:38:22] Speaker 03:
You've articulated nothing at all that amounts to a legitimate theory of infringement.

[00:38:27] Speaker 03:
And if we do send it back under those circumstances, then I think that you ought to seriously be aware of the fact that I think the lower court would be within its right to consider fees and possibly sanctions against you if the case is not disposed of promptly upon the realization that there are three other separate bases for non-infringement

[00:38:46] Speaker 03:
which you stood in front of our court and made a lot of hoopla with no sense at all about why they ought to, nonetheless, result in vacating.

[00:38:53] Speaker 03:
So I'm just putting that on the record so they can cite it to Liam O'Grady below.

[00:38:57] Speaker 03:
So if you don't come forward with some really legitimate arguments and this gets sent back, he understands what is going on.

[00:39:05] Speaker 02:
Thank you, counsel.

[00:39:06] Speaker 02:
Thank you.