[00:00:00] Speaker 02:
The final case today is number 18-1392, Sophos Inc.

[00:00:04] Speaker 02:
versus Harpost Holdings Inc.

[00:00:11] Speaker 04:
If there are any amici in the audience, those were good briefs.

[00:00:38] Speaker 02:
Okay, don't start the clock yet.

[00:00:40] Speaker 02:
Ms.

[00:00:40] Speaker 02:
Addy, would you like to explain why you weren't here at 10 o'clock?

[00:00:44] Speaker 00:
Yes, I'm sorry, Your Honor.

[00:00:45] Speaker 00:
We had some technical difficulties with the computer and the printer, and we couldn't get those things resolved.

[00:00:51] Speaker 02:
What does that have to do with your being here on time?

[00:00:53] Speaker 00:
It had to do with my oral argument.

[00:00:55] Speaker 00:
I apologize, Your Honor.

[00:00:56] Speaker 02:
Well, your technical difficulties are not an excuse.

[00:00:59] Speaker 02:
You're an experienced advocate.

[00:01:01] Speaker 02:
You know you're supposed to be here at 10 o'clock.

[00:01:04] Speaker 02:
The court was ready.

[00:01:05] Speaker 02:
You weren't.

[00:01:07] Speaker 00:
Yes, Your Honor, I'm very sorry.

[00:01:10] Speaker 02:
All right, why don't you go ahead.

[00:01:11] Speaker 00:
Thank you, Your Honors.

[00:01:12] Speaker 00:
Good morning.

[00:01:14] Speaker 00:
This case requires reversal based on one of any one of three legal errors.

[00:01:20] Speaker 00:
First, the failure of the district court to recognize disputes regarding missing limitations in the cited references.

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Second, the failure of the district court to credit our post's evidence that it was entitled to its provisional filing date.

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And third,

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the district court's improper invalidation of the entire 628 patent, even though only six claims were at issue.

[00:01:43] Speaker 00:
Missing limitations resolve this case for both references.

[00:01:47] Speaker 00:
First, Muldoon and Dickinson require that the decision to send the message is routed based on the address, whereas the claims here require that the decision to send a message is based on what's in the message.

[00:02:05] Speaker 04:
Let me ask you a sort of housekeeping question.

[00:02:10] Speaker 04:
On 34 of the red brief, SOFO states that your argument on appeal is different from the arguments made before the district court.

[00:02:22] Speaker 04:
Specifically, they say that you argue for a new root theory under which you claim the 628 patent requires a server to determine the root that the message takes to the recipient

[00:02:35] Speaker 04:
And that SOFA has never explained how the lack of a particular indication determines the route the messages take to the recipient.

[00:02:47] Speaker 04:
Where was that argument made below?

[00:02:49] Speaker 04:
They say after having convinced the district court that the first route is not any particular path, you shouldn't be permitted

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

[00:03:06] Speaker 00:
We're not changing the claim construction.

[00:03:08] Speaker 00:
We're arguing that when you go through the references, and I believe this one is the Dickinson reference, when you go through the references, the first root, as identified in the claims, is not met by the Dickinson reference.

[00:03:23] Speaker 00:
And I can walk you through that.

[00:03:25] Speaker 00:
For example, Sophos, Your Honor, argues that the facility

[00:03:32] Speaker 00:
Facility Manager 216 determines whether there is a particular limitation, a particular indication.

[00:03:40] Speaker 00:
Assuming that it does determine whether there's a particular indication, then the fact that the particular indication is not present doesn't have anything to do with whether in Dickinson the message takes the first route to the recipient.

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And that's because in Dickinson,

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It's the decision to encrypt at 624 that makes the decision whether to route on the first route.

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So we're not trying to further limit the first route as the court has construed it.

[00:04:14] Speaker 00:
We're just noting that when you go through Dickinson, Dickinson assigns the particular indication at facility manager 216.

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And it doesn't have anything to do with

[00:04:31] Speaker 00:
whether the message is routed to the recipient on a first route, because that is made by the decision to encrypt, which is at 624.

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And the particular indication has already been satisfied up in 216, which is one of 610 through 16.

[00:04:48] Speaker 04:
On page 25 of the red brief, Sophos identifies what they say is an inconsistency in your argument.

[00:04:57] Speaker 04:
First, you argue that

[00:04:58] Speaker 04:
The six to eight patent is not limited to the figure three embodiment.

[00:05:02] Speaker 04:
But on appeal, you argue that the figure three embodiment illustrates your point.

[00:05:08] Speaker 04:
How do you square those two apparently contradictory?

[00:05:12] Speaker 00:
Your Honor, there are two things going on here.

[00:05:14] Speaker 00:
First, the parties aren't disputing what is a particular indication.

[00:05:22] Speaker 00:
The parties are disputing where the claims require that particular indication to be.

[00:05:28] Speaker 00:
So the 628 specification is clear, and it distinguishes routing based on what's in the message from routing based on the address.

[00:05:42] Speaker 00:
And for example, at column 18, 11 through 18, routing can be based on the address, which we do not claim.

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And if you read that language, it separates out routing based on the address, based on routing,

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Rather, routing based on what's in the subject or in the message.

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You can also see those terms distinguished at 2602, which is column 22, 50 to 53.

[00:06:07] Speaker 00:
And Your Honor, Dickinson's in accord with that.

[00:06:10] Speaker 00:
Dickinson says, message heading information generally refers to the message excluding the body and the attachments.

[00:06:19] Speaker 00:
Message heading information is the address.

[00:06:22] Speaker 00:
It's entirely different.

[00:06:25] Speaker 00:
Sophos doesn't dispute with us that Dickinson routes based on whether there is a registered encryption key that relates to the recipient domain, not what's in the message.

[00:06:36] Speaker 00:
And that's at decision 624.

[00:06:38] Speaker 04:
You argue in 36 and 37 that in the message excludes information contained in certain fields of the email.

[00:06:47] Speaker 04:
Where in the record did you raise that below?

[00:06:50] Speaker 00:
We raised that on...

[00:06:53] Speaker 00:
It's in the patent, Your Honor.

[00:06:55] Speaker 00:
It's in the patent specifically at column 22.

[00:07:00] Speaker 02:
That's not the question.

[00:07:01] Speaker 02:
The question is not where it is in the patent.

[00:07:03] Speaker 02:
The question is, where did you raise the issue?

[00:07:15] Speaker 00:
We raised it as part of claim construction, Your Honor, because we're trying to

[00:07:19] Speaker 00:
We had a definition of in the message, which is the ordinary definition and meaning.

[00:07:25] Speaker 00:
And I believe the parties disputed it in the claim construction briefs, which I'm not sure I have here in the record.

[00:07:38] Speaker 02:
Did you point to those in your library?

[00:07:46] Speaker 00:
Did I point to?

[00:07:48] Speaker 02:
The red brief says you didn't raise this issue.

[00:07:51] Speaker 02:
And you say, yes, we raised it at the claim construction hearing.

[00:07:54] Speaker 02:
Did you make that argument in your reply brief?

[00:07:58] Speaker 00:
No, Your Honor.

[00:07:59] Speaker 00:
We made other arguments relating to distinguishing the address header from the subject and the body.

[00:08:09] Speaker 04:
I'm not sure the red brief did.

[00:08:10] Speaker 04:
I asked it from the blue brief.

[00:08:13] Speaker 04:
Because I didn't see where you raised it.

[00:08:15] Speaker 02:
No, the red brief did.

[00:08:16] Speaker 02:
doesn't argue that it wasn't properly raised.

[00:08:20] Speaker 04:
On page 34 of the blue brief you say, Dickinson expressly distinguishes the message header which includes the source and destination address from the message.

[00:08:30] Speaker 04:
And Sophos argues that's a misreading.

[00:08:34] Speaker 04:
Do you have something to support your argument?

[00:08:37] Speaker 00:
I do, Your Honor.

[00:08:38] Speaker 00:
Dickinson says, quote, message heading information generally refers to portions of the message excluding the body

[00:08:46] Speaker 00:
and attachments.

[00:08:47] Speaker 00:
And that's at 26, 24 of the record.

[00:08:51] Speaker 00:
It's column 7, lines 31 to 34 of Dickinson.

[00:09:00] Speaker 00:
In addition, Your Honor, there are other missing limitations.

[00:09:04] Speaker 02:
I went through the fact that... Dickinson specifically mentions messages which aren't in the heading.

[00:09:10] Speaker 02:
Does not?

[00:09:11] Speaker 00:
It does, Your Honor, and that's what we're not disputing.

[00:09:14] Speaker 00:
We're not disputing

[00:09:15] Speaker 00:
that there may be a particular indication that's not in the heading.

[00:09:19] Speaker 02:
Well, then how is it that Dickinson doesn't anticipate when it doesn't require that the message be in the heading?

[00:09:25] Speaker 02:
It's not limited to that.

[00:09:28] Speaker 00:
The policy rules at 216, Your Honor, talk about indications that may be in the body, one or two.

[00:09:40] Speaker 00:
Once you walk through the claim limitations of claim 14, claim 14 requires that you determine a particular indication.

[00:09:50] Speaker 00:
And if you do that at the manager 216, you have now satisfied that limitation for a particular indication.

[00:09:57] Speaker 00:
That's the particular indication.

[00:10:00] Speaker 00:
But what determines whether the message is delivered along a first route is not the particular indication from the

[00:10:11] Speaker 00:
facility 216, it's actually the decision not to encrypt, which is at 624.

[00:10:17] Speaker 00:
And that's why, and we did make this argument in our blue brief at 33.

[00:10:23] Speaker 00:
And that's why Dickinson doesn't anticipate, in addition to the fact that the address is separate from the message and the patentee distinguished that in his spec.

[00:10:35] Speaker 00:
And there's also testimony that Sophos cites about that

[00:10:39] Speaker 00:
SOFO cites our expert to say that our expert agrees, but if you look at what SOFO cites, SOFO is citing to the record where our expert is saying, yes, there may be a particular indication in different areas in the message, in the email, in the address, but

[00:11:01] Speaker 00:
But our expert is very clear that he distinguishes, and those of skill in the art would distinguish, the subject and the message from the address.

[00:11:11] Speaker 00:
So the difference is, looking at the claim language, where is the particular indication satisfied?

[00:11:17] Speaker 00:
In Dickinson, it's satisfied at 216.

[00:11:20] Speaker 00:
Who makes the decision to route through the first route?

[00:11:24] Speaker 04:
It's made at 624.

[00:11:28] Speaker 04:
36 of the red brief in which we're discussing Muldoon at that point.

[00:11:38] Speaker 04:
They say in the district court, our post expressly represented to SOFOs that it would not claim that the asserted claims of the 628 patent are entitled to a priority date earlier than the July 27, 2000 filing date on the face of the patent.

[00:11:58] Speaker 04:
And I won't go through all of this, but then there's a letter with an amended interrogatory response and so on.

[00:12:09] Speaker 04:
I want you to discuss that.

[00:12:10] Speaker 04:
How can you justify that?

[00:12:12] Speaker 00:
Yes, Your Honor.

[00:12:13] Speaker 00:
Two points.

[00:12:14] Speaker 00:
Number one, the district court failed to decide the case on this asserted waiver issue.

[00:12:19] Speaker 00:
It said putting waiver aside, and that's at A35 of the record.

[00:12:23] Speaker 04:
Yes, but I'm talking about direct representation.

[00:12:27] Speaker 00:
Yes.

[00:12:27] Speaker 00:
Number two,

[00:12:29] Speaker 00:
That representation was made before either of the references at issue here were part of the record.

[00:12:35] Speaker 00:
And they were served just before the close of discovery.

[00:12:39] Speaker 00:
So that representation was made when there wasn't anything that fell into that category of prior ARP.

[00:12:44] Speaker 00:
But once there was, our post relied on them.

[00:12:48] Speaker 00:
And SOFO was not prejudiced because it had the opportunity to respond.

[00:12:55] Speaker 02:
Do you want to save the rest of your time?

[00:12:57] Speaker 00:
Yes, Your Honor.

[00:12:58] Speaker 00:
Thank you.

[00:13:02] Speaker 02:
Okay, Mr. Klein.

[00:13:12] Speaker 03:
Good morning, Your Honors.

[00:13:13] Speaker 02:
May it please the Court, Doug Klein, for Sophos.

[00:13:17] Speaker 02:
We have this issue about the invalidation of the claims that weren't asserted here, and the District Court had declined to issue

[00:13:27] Speaker 02:
a ruling about that?

[00:13:28] Speaker 02:
It did.

[00:13:29] Speaker 02:
Do you agree that the judgment should be amended to extend only to the asserted claims?

[00:13:35] Speaker 03:
Yes, Your Honor.

[00:13:36] Speaker 03:
We don't take the position that the unasserted claims are invalid.

[00:13:39] Speaker 03:
So whatever this court feels it might need to do, we tried to clean that up below and are opposed to pose that motion.

[00:13:47] Speaker 03:
I don't really understand why, but nevertheless, we certainly don't have any objection to this court affirming as modified or amending or whatever needs to be done.

[00:13:57] Speaker 03:
Otherwise, with respect to the asserted claims, the court need look no further than the Dickinson reference.

[00:14:03] Speaker 03:
There's no dispute.

[00:14:04] Speaker 03:
It's prior art.

[00:14:06] Speaker 03:
Our post makes some claim construction arguments that are inconsistent with things that it did below to try to save the claim.

[00:14:13] Speaker 03:
You're saying we don't need to look at Muldoon if we agree on it.

[00:14:16] Speaker 03:
No, you don't need to look at Muldoon.

[00:14:17] Speaker 03:
Dickinson anticipates the claims that are asserted.

[00:14:21] Speaker 03:
The claim construction arguments that our post has made don't overcome.

[00:14:26] Speaker 03:
distinctions in any event regarding the Muldoon reference as the Dickinson reference.

[00:14:34] Speaker 03:
Informative, from our post's opening brief, our post itself notes that Dickinson describes a system by which email messages containing certain content or originating from or being transmitted to specified addresses or domains

[00:14:55] Speaker 03:
can be automatically encrypted and or filtered before they are transmitted to the recipient.

[00:15:04] Speaker 03:
That's all the elements of the claim right there.

[00:15:06] Speaker 03:
And that's from our post's opening brief.

[00:15:09] Speaker 03:
Our post makes an argument that Dickinson does not disclose the particular indication.

[00:15:14] Speaker 03:
And they make that argument for a couple of reasons.

[00:15:16] Speaker 03:
They argue that the claims require that the particular indication dictate the special processing.

[00:15:23] Speaker 03:
But these are all

[00:15:25] Speaker 03:
Computer systems, your honor, things go together in an if-then function.

[00:15:29] Speaker 03:
If the particular indication is in the email message, then the special processing takes place.

[00:15:35] Speaker 03:
Just like in the 628 pattern, if in one of the embodiments, there is a paren, r paren in the subject field of the message, then the r post server will performance registration functions.

[00:15:50] Speaker 03:
It's exactly the same way.

[00:15:52] Speaker 03:
They also argue that in Dickinson, the particular indication is not

[00:15:55] Speaker 03:
in the message.

[00:15:56] Speaker 03:
Well, of course, Dickinson discloses a content manager, which looks at the content of the message.

[00:16:03] Speaker 03:
The language that my friend pointed to from the 628 or from Dickinson referenced itself, saying it distinguished somehow, we're conflating things.

[00:16:16] Speaker 03:
The art distinguishes headers from the body, but not headers from the message.

[00:16:22] Speaker 03:
An email message includes

[00:16:24] Speaker 03:
fields, there's a address field, a source field, a subject field, and a body field.

[00:16:31] Speaker 03:
The claim simply says the message.

[00:16:34] Speaker 03:
And in fact, the 628 patent itself, this is page 2600 of the appendix, it's column 18 around lines 14 or so, of the 628 patent.

[00:16:48] Speaker 03:
Alternatively, in our post server,

[00:16:51] Speaker 03:
might register only those messages having certain destinations, the address field.

[00:16:58] Speaker 03:
For example, external to an organization, or from certain senders, the source field.

[00:17:04] Speaker 03:
So the 628 patent itself acknowledges that within an email message, there are fields, address fields, subject fields, body fields.

[00:17:13] Speaker 03:
And of course, the subject field, which is the primary example in the 628 patent, our posts

[00:17:21] Speaker 03:
expert, Dr. Sorati, admitted that's a field.

[00:17:25] Speaker 03:
And he doesn't distinguish that from the body for purposes of the patent.

[00:17:30] Speaker 03:
So the argument that in the message somehow excludes the address fields, it's incorrect.

[00:17:37] Speaker 03:
And even if it were correct, which it's not, the Dickinson reference discloses a content manager that looks at content.

[00:17:44] Speaker 03:
Our post also makes an argument that Dickinson fails to disclose the transmitting step.

[00:17:51] Speaker 03:
required by the claims, as Judge Casper noted below.

[00:17:54] Speaker 03:
Figure 6b includes block 630, transmit to specified destination.

[00:18:02] Speaker 03:
So there certainly is a transmitting step disclosed in the 628 patent.

[00:18:09] Speaker 03:
The district court explained that the claimed first route does not need to be any particular route.

[00:18:15] Speaker 03:
And it does not need to be devoid of any further processing.

[00:18:19] Speaker 03:
The district court opinion, this is the appendix at page 40, Your Honors, Judge Casper dealt with this issue expressly and explained that if every email in the Dickinson patent undergoes some processing and only some email undergo additional processing, then Dickinson still practices this element.

[00:18:40] Speaker 03:
Because the first route, as specified in Dickinson, may just contain more process

[00:18:45] Speaker 03:
than the first route as specified in some particular embodiment of the 628 patent.

[00:18:51] Speaker 03:
It cannot be the case, Your Honors, that because Dickinson may disclose more than the claimed invention, that it somehow undercuts Dickinson's value.

[00:19:01] Speaker 04:
Thank you.

[00:19:02] Speaker 04:
Mr. Klein, I want you to discuss 35 and 36 of the Red Breed.

[00:19:08] Speaker 04:
It sure looks to me, reading the direct quotation and so on, that you're saying

[00:19:15] Speaker 04:
that you were sandbagged.

[00:19:19] Speaker 03:
Which issue are you on?

[00:19:20] Speaker 03:
35 and 36 of the red brief.

[00:19:23] Speaker 03:
Oh, with regard to the waiver issue?

[00:19:25] Speaker 03:
Certainly.

[00:19:26] Speaker 03:
And the court found it didn't have to reach the waiver issue.

[00:19:29] Speaker 03:
I know that.

[00:19:30] Speaker 03:
So it didn't find the waiver.

[00:19:32] Speaker 03:
What's interesting, there's an allegation.

[00:19:34] Speaker 04:
But I'm concerned about this kind of conduct.

[00:19:36] Speaker 03:
Yeah, I understand that, Your Honor.

[00:19:37] Speaker 03:
What I would say is, with respect to my friend's comment that we weren't prejudiced in any way, there was a late disclosure of some kind.

[00:19:44] Speaker 03:
The supplemental interrogatory response said, we're not going to try to get an earlier date than our utility filing.

[00:19:50] Speaker 03:
And discovery proceeded along the way.

[00:19:52] Speaker 03:
Before the close of fact discovery, there were invalidity contentions served that identified the Muldoon reference.

[00:19:59] Speaker 03:
Sophos served its opening invalidity brief, pardon me, expert report.

[00:20:06] Speaker 03:
And Sophos' expert, Dr. Tigger, relied on the Muldoon.

[00:20:10] Speaker 03:
Let's characterize Muldoon as intervening prior art.

[00:20:13] Speaker 03:
relied on the Muldoon reference as a basis for his invalidity opinion.

[00:20:17] Speaker 03:
And in ARPOST's responsive invalidity report, their expert said, I have been told that SOFOS is not going to assert a date of priority earlier and did not respond.

[00:20:34] Speaker 03:
So we certainly do take the position that, at that point, ARPOST ought to have been bound by that.

[00:20:41] Speaker 03:
It was for the first time on summary judgment briefing that our post began to argue that it was entitled to the priority date of the provisional application.

[00:20:53] Speaker 03:
What Judge Casper did, she said, I don't have to get to that.

[00:20:57] Speaker 03:
Under cases like tech licensing, she looked to, you know, she found that we had.

[00:21:02] Speaker 03:
I know what she did.

[00:21:03] Speaker 03:
Right.

[00:21:03] Speaker 03:
And she went and she said, I've looked at the evidence.

[00:21:06] Speaker 03:
I've looked at the provisional applications.

[00:21:09] Speaker 03:
I've looked at the interrogatory response supplement where they say they're not relying, so there's no interrogatory evidence about how a person of ordinary skill in the art might rely on that.

[00:21:19] Speaker 03:
I've looked at the expert reports where he said Dr. Sorati was told that they're not going to rely on an earlier date, which is why Dr. Sorati's report omits any evidence that a person of ordinary skill in the art would have found a written description in that provisional application.

[00:21:36] Speaker 03:
And she therefore concludes that our post had failed to meet its burden to come forward at that point with evidence.

[00:21:42] Speaker 03:
So we certainly think they should have been stopped from asking for an earlier date.

[00:21:48] Speaker 03:
Judge Casper in the management of her court decided she would look at it on the merits.

[00:21:52] Speaker 03:
She looked at the merits.

[00:21:53] Speaker 02:
What about the merits?

[00:21:54] Speaker 03:
I mean, what is it that wasn't in the provisional?

[00:21:58] Speaker 03:
For example, the provisional doesn't disclose encrypting.

[00:22:01] Speaker 03:
But that's not a requirement of all.

[00:22:03] Speaker 03:
It certainly is within the scope of the claims that are asserted.

[00:22:06] Speaker 03:
It's certainly within the scope of claims 14 and claim 30.

[00:22:09] Speaker 03:
And as the court's certainly well aware, they have an obligation.

[00:22:12] Speaker 03:
Within the scope of?

[00:22:13] Speaker 03:
Pardon me, Your Honor.

[00:22:14] Speaker 03:
Within the scope of?

[00:22:16] Speaker 03:
They have an obligation to provide a written description of the full scope of the claims.

[00:22:20] Speaker 03:
And certainly, encryption is one of those.

[00:22:23] Speaker 03:
In any event, as far as the argument is concerned, Your Honor, the legal argument that counsel for our post provided in the summary judgment briefing for the first time

[00:22:32] Speaker 03:
It's focused on one element of one of the claims.

[00:22:35] Speaker 03:
It can go through any orderly analysis.

[00:22:37] Speaker 03:
And there was no evidence.

[00:22:38] Speaker 03:
It was just legal argument at that point.

[00:22:40] Speaker 02:
Well, there was evidence in terms of the provisional application.

[00:22:43] Speaker 03:
Yes, certainly.

[00:22:43] Speaker 03:
I agree with that, Your Honor.

[00:22:44] Speaker 03:
There's evidence.

[00:22:44] Speaker 03:
The provisional application is evidence.

[00:22:47] Speaker 03:
But there was no evidence on the question of how a person of your ordinary skill would interpret the provisional application on the day it was filed.

[00:22:54] Speaker 03:
And would that person conclude that the inventor possessed the invention as it was claimed in the issue patent years later?

[00:23:03] Speaker 03:
So I have nothing further, Your Honor, if you have more questions.

[00:23:06] Speaker 03:
Thank you.

[00:23:07] Speaker 03:
Thank you.

[00:23:12] Speaker 02:
Is that heavy?

[00:23:25] Speaker 00:
Your Honor, what Sophos glosses over is that

[00:23:30] Speaker 00:
we're not disputing what the particular indications are, and particular indications in some embodiments may be in the address field.

[00:23:37] Speaker 00:
However, in this claim, it requires the particular indication to be in the message, and based on the specific particular indication in the message that is determined, for example, in Dickinson at 216, that has to make the determination to send it on a first route to the recipient.

[00:23:58] Speaker 00:
That limitation, 216, is satisfied when it looks to see if there is a particular indication.

[00:24:05] Speaker 00:
So that cannot be the same particular indication that determines the route, because the route is determined by the decision to encrypt.

[00:24:14] Speaker 00:
And that's an entirely different decision than what happens at Policy Manager 216.

[00:24:18] Speaker 00:
OK.

[00:24:22] Speaker 02:
Anything further?

[00:24:23] Speaker 00:
Nothing further, Your Honor.

[00:24:24] Speaker 00:
Thank you.

[00:24:26] Speaker 02:
Thank you.

[00:24:26] Speaker 02:
Thank both counsels.

[00:24:27] Speaker 02:
The case is submitted.

[00:24:28] Speaker 02:
That concludes our session for this morning.

[00:24:31] Speaker 01:
All rise.

[00:24:32] Speaker 01:
The Honorable Court is adjourned until tomorrow morning.

[00:24:36] Speaker 01:
It's an o'clock a.m.