[00:00:00] Speaker 02:
All right.

[00:00:01] Speaker 02:
The next argued case is number 192142, Book IT Hawaii against Bank of America Corporation.

[00:00:09] Speaker 02:
Mr. Cole.

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

[00:00:11] Speaker 01:
May it please the Court?

[00:00:13] Speaker 01:
And we presented three issues in this appeal, and we believe in all three.

[00:00:18] Speaker 01:
The crucial questions for this Court to address are ones of substance.

[00:00:22] Speaker 01:
And I'll start with the claim construction issue.

[00:00:25] Speaker 01:
And we believe that an examination of the substance of this invention

[00:00:30] Speaker 01:
The substance of these claims and the role, in particular, the service provider element played in these claims demonstrates that the district court's decision to ignore the plain and ordinary meaning of that term in favor of an alleged definition and spec was incorrect and should be reversed.

[00:00:50] Speaker 03:
This is Judge Lorre.

[00:00:52] Speaker 03:
Yes, Your Honor.

[00:00:54] Speaker 03:
You talk about an alleged definition.

[00:00:56] Speaker 03:
It looked pretty expressed to me.

[00:00:59] Speaker 03:
And I find it difficult not to think that this is a frivolous appeal.

[00:01:04] Speaker 03:
Under the description of the invention, it states, the path states, the invention relates to, and then states, the booking system in accordance with the invention.

[00:01:15] Speaker 03:
And then the next paragraph, it defines what service providers are, and then says, as used in this application, the mediator is.

[00:01:28] Speaker 03:
How better a definition can one expect than expressly what the patent discloses?

[00:01:36] Speaker 01:
Your Honor, the service provider term does not actually include the word the invention.

[00:01:43] Speaker 01:
It simply says the service providers are.

[00:01:46] Speaker 03:
It's in the paragraph under the description of the invention.

[00:01:52] Speaker 01:
That's correct.

[00:01:53] Speaker 01:
And below that, it continues by talking, as Your Honor mentioned, about as used in this application.

[00:01:59] Speaker 01:
And what you see here is both the District Court and Bank of America assuming that the application term means this patent application as opposed to what we contend.

[00:02:09] Speaker 01:
It means this application of the invention in the context of a booking system.

[00:02:15] Speaker 01:
And one point I should make here that was not in our brief that I noticed a late before oral argument.

[00:02:21] Speaker 01:
If you look in the same section, Appendix 75, Column 3, under the title Brief Description of the Drawing, this is further support for our position.

[00:02:30] Speaker 01:
It says, quote, in the following section, the following section is the one Your Honor just referred, description of the invention.

[00:02:38] Speaker 01:
In the following section, the invention will be described in detail

[00:02:42] Speaker 01:
by the aid of a few examples of its embodiments, which is our position here.

[00:02:49] Speaker 01:
And that statement at the beginning, which points to the section Bank of America leans on, is then bookended at the end of the specification by a paragraph that we pointed to in our brief that mentions the foregoing being examples of embodiments and not the entirety of the invention.

[00:03:07] Speaker 03:
So we don't believe... Both examples relate to

[00:03:11] Speaker 03:
A booking system.

[00:03:14] Speaker 01:
I'm sorry, both examples.

[00:03:17] Speaker 01:
I apologize.

[00:03:18] Speaker 01:
Are both examples of what?

[00:03:20] Speaker 03:
Both examples in the patent relate to the booking system.

[00:03:23] Speaker 03:
Example one is a preferred booking system.

[00:03:26] Speaker 03:
There is no non-preferred booking system.

[00:03:28] Speaker 03:
And there's no system other than a booking system.

[00:03:31] Speaker 03:
Correct me if I'm wrong.

[00:03:33] Speaker 01:
There is a preferred booking system, but simply because there's a preferred embodiment does not mean the preferred embodiment cannot be a subset of another embodiment that is not necessarily preferred and is broader than the preferred embodiment.

[00:03:47] Speaker 03:
The question here is not... Where is there another embodiment?

[00:03:52] Speaker 01:
The specification talks about a booking system.

[00:03:55] Speaker 01:
There's an example of the Bookit system.

[00:03:57] Speaker 01:
There's an example of the dynamic dialogue matrix at the end.

[00:04:02] Speaker 01:
And as I mentioned, there's every indication in the specification that that section is talking about the use made of the invention.

[00:04:11] Speaker 01:
And one other point I would make on that in this decision here is, as you know, as we pointed in our brief, the definition of service provider taken from the spec includes the concept of a customer's intent, what the customer wants.

[00:04:26] Speaker 01:
And while that could be theoretically proper, I would submit that the fact that the definition refers to the state of mind of someone using the system is a strong indicator that that is talking about the use made of the invention as opposed to a definition of the crux of the invention itself.

[00:04:46] Speaker 01:
And I also think, Your Honor, it's very important to look at the claims and what role the service provider provides in the claims.

[00:04:53] Speaker 01:
because this court does regularly look to the substance of the invention in assessing these arguments.

[00:05:00] Speaker 01:
This is a test that is considered under the standard of a person of skill in the art.

[00:05:06] Speaker 01:
It is not a grammar test per se, although we certainly look to the language included there.

[00:05:11] Speaker 01:
And if you look at claim one, for example, you will see service provider actually does nothing.

[00:05:18] Speaker 01:
It is simply something to which an inquiry message pertains.

[00:05:23] Speaker 01:
So if you if someone a skill in the art is reading these claims, which we believe is the proper place to start the analysis.

[00:05:31] Speaker 01:
There is no indication or no confusion that they would suffer in reading the term service provider as to whether this is just a provider of services or something different.

[00:05:41] Speaker 01:
There's no technical aspect to that term.

[00:05:43] Speaker 01:
It's not technical at all.

[00:05:45] Speaker 01:
As we pointed out, it has nothing whatsoever to do with the inventive aspects of this invention.

[00:05:51] Speaker 01:
The invention disclosed is a novel system to communicate between a service provider and a customer with a mobile device or other device.

[00:06:00] Speaker 01:
And the fact that that service provider element plays no substantive role in the claims and no substantive role in the inventiveness of the claims is an important clue that we should be very careful in attempting to ignore the plain and ordinary meaning in favor of a definition from the specification.

[00:06:18] Speaker 01:
And again, the specification here does not even say in the present invention the service provider is X or is defined as Y.

[00:06:28] Speaker 01:
And as I indicated too, the specification contains indications that that is an embodiment.

[00:06:33] Speaker 01:
And even if it's the only embodiment, even if the court concludes that, that still does not tell you anything meaningful about whether it's proper here to import that into the claims.

[00:06:49] Speaker 01:
Okay, I will turn now to the third issue, actually, unless there are other questions about the claim construction.

[00:06:56] Speaker 01:
the, as we put it out.

[00:06:59] Speaker 04:
This is Judge Cole.

[00:07:00] Speaker 04:
Just asking one question for my own clarification.

[00:07:04] Speaker 04:
You've been discussing the specification language on page 75 of the Joint Appendix starting with line 55 in column 3.

[00:07:14] Speaker 04:
It says the service providers are those with whom clients want to make appointments, reservations, or other bookings and comprise the resources for the booking system to allocate

[00:07:25] Speaker 04:
Correct.

[00:07:26] Speaker 04:
What exactly is resources a reference to?

[00:07:28] Speaker 01:
I think resources is a reference to, for example, if you take one of the disclosed examples, would be an airline ticket.

[00:07:39] Speaker 01:
I think what it means is the service provider has the seats on the plane that would be allocated according to the invention.

[00:07:49] Speaker 04:
OK.

[00:07:50] Speaker 04:
And when you say allocate, the service provider would

[00:07:54] Speaker 04:
allocate in the sense of providing them to the client?

[00:08:01] Speaker 01:
Correct.

[00:08:01] Speaker 01:
That's correct.

[00:08:02] Speaker 01:
Now, and I will point out, interestingly enough, there's actually another section of the specifications, page 79, column 11.

[00:08:10] Speaker 01:
It's in the middle of a hypothetical text exchange according to the invention you can see here.

[00:08:16] Speaker 01:
It is actually an airline example.

[00:08:18] Speaker 01:
One of the examples around page, excuse me, line 23 talks about a meal selection.

[00:08:24] Speaker 01:
Vegetarian beef or chicken, which is not the kind of quote unquote reservation you would normally think of like an airline ticket or a movie ticket or something like that.

[00:08:35] Speaker 01:
That's an example from the specification.

[00:08:37] Speaker 01:
But this would be a resource.

[00:08:40] Speaker 01:
A resource.

[00:08:41] Speaker 01:
That's a resource.

[00:08:43] Speaker 01:
This is a resource that's allocated.

[00:08:46] Speaker 01:
I guess you can debate the question of allocation is a little unclear there.

[00:08:50] Speaker 01:
I think you could say it's allocated, but if you believe that's allocated, it is difficult to understand how other product or service purchases would not be in allocation.

[00:09:02] Speaker 01:
I mean, two years ago, no one would think toilet paper was something that was scarce enough that it needed to be allocated, but depending on the circumstances, it can be.

[00:09:10] Speaker 01:
And this goes to our major point, which is

[00:09:12] Speaker 01:
The limitation here is problematic substantively because it basically talks about the identity and the types of products or offerings or services offered by an element in the claims that does nothing, affects nothing.

[00:09:29] Speaker 01:
And if you were to literally take the court's claim construction and apply it, one could argue that this meal example on the airline falls out because that's not a reservation, that's a purchase of a product, a beef or a chicken or a vegetarian meal.

[00:09:44] Speaker 01:
And that doesn't make sense.

[00:09:46] Speaker 01:
And that's why, again, we have to look at the substance of the invention.

[00:09:50] Speaker 01:
And that is an important clue on the propriety of applying lexicography.

[00:09:54] Speaker 01:
And there's an even more important part to consider in Bank of America's second argument, where it simply notes that the concept of booking is discussed extensively throughout the patent.

[00:10:04] Speaker 01:
That's true.

[00:10:05] Speaker 01:
But the question is, if it's appropriate to import that into service provider limitation only if it could be shown to be a clear,

[00:10:14] Speaker 01:
deliberate, meticulous definition, a disavowal, which there's no argument about at all, or something that at least goes to the very heart of the invention here, as opposed to something that is tangential, like what we have.

[00:10:29] Speaker 04:
You answered my question that I had about the resources.

[00:10:34] Speaker 04:
Thank you.

[00:10:34] Speaker 04:
I didn't want to divert you from the other point you wanted to move on to.

[00:10:39] Speaker 01:
Thank you, Your Honor.

[00:10:40] Speaker 01:
That's fine.

[00:10:42] Speaker 01:
I guess the second one I'll talk about, it's a three-order chain, as we pointed out in our brief, that led to this result.

[00:10:50] Speaker 01:
And the result being we were thrown out of court despite the district court never once reaching the merits here.

[00:10:56] Speaker 01:
And I'm going to focus on the last link in that chain right now, which is the court's order

[00:11:01] Speaker 01:
that struck expert reports that we provided where we attempted to show why, notwithstanding the service provider limitation that we disagree with, that nonetheless Bank of America's use fits within that language.

[00:11:16] Speaker 01:
The problem with what happened here is the district court appears to have been under the misimpression that its order on the amendment of contentions

[00:11:26] Speaker 01:
addressed and disposed of the question of whether this particular concept, the concept that what Bank of America does, qualifies as a booking.

[00:11:36] Speaker 01:
The district court seems to have misunderstood and thought that it addressed that issue in the order on amending contentions, but that is incorrect.

[00:11:45] Speaker 01:
You can read that order beginning to end, and there is absolutely nothing in it that addresses that question at all.

[00:11:52] Speaker 01:
And then when the court struck the expert reports, the entirety of the court's analysis was, I already struck that thing.

[00:12:00] Speaker 01:
That was a theory.

[00:12:01] Speaker 01:
I found it was a theory, and I struck it.

[00:12:03] Speaker 01:
But that order does nothing of the sort, and the district court

[00:12:08] Speaker 01:
did not do, and Bank of America does not offer a standard to say how does one decide if a particular concept is in fact a new infringement theory, as they contend, or alternatively, an explanation of how and why the original theory applies in view of the construction that was made.

[00:12:30] Speaker 01:
That's our position.

[00:12:31] Speaker 01:
We... I see my... I'm going to do a... No, finish your thought.

[00:12:36] Speaker 01:
Okay.

[00:12:37] Speaker 01:
Thank you, Your Honor.

[00:12:37] Speaker 01:
Yeah.

[00:12:39] Speaker 01:
How do you decide that?

[00:12:40] Speaker 01:
We show the standard we believe is correct, that the infringement contention themselves, in particular the identification of where that limitation is met, that is what sets the theories.

[00:12:54] Speaker 01:
And our evidence is consistent with our original theory, not inconsistent.

[00:12:58] Speaker 01:
It is consistent with it, and that means it's a proper application, not a new theory.

[00:13:03] Speaker 01:
Thank you.

[00:13:05] Speaker 02:
Okay.

[00:13:05] Speaker 02:
Any questions at the moment for Mr. Cole?

[00:13:08] Speaker 02:
No, no.

[00:13:10] Speaker 02:
All right.

[00:13:11] Speaker 02:
Thank you.

[00:13:11] Speaker 02:
Then we'll hear from the other side, Mr. Lombardi.

[00:13:15] Speaker 00:
Thank you, Your Honor, and may it please the court.

[00:13:17] Speaker 00:
I'll start with claim construction.

[00:13:20] Speaker 00:
The patent clearly indicates that the invention relates to booking systems and defines the claim terms expressly in terms of booking systems.

[00:13:29] Speaker 00:
The section of the patent that Judge Lurie referred to is the place where the terms are defined.

[00:13:38] Speaker 00:
There is a structure to the paragraphs right under the description of invention.

[00:13:42] Speaker 00:
It starts with what the invention is.

[00:13:46] Speaker 00:
It then lays out what the components of the invention are in paragraph two when it says the booking system in accordance with the invention.

[00:13:56] Speaker 00:
And then the third paragraph, again, which Judge Lurie referred to, service provider and mediator are defined.

[00:14:03] Speaker 00:
That is a definition.

[00:14:05] Speaker 00:
It's a clear definition.

[00:14:06] Speaker 00:
It tells those reading the patent exactly how to read the term service provider and mediator going forward and throughout the patent and the claims.

[00:14:18] Speaker 00:
The entire specification indicates that this patent is about booking systems from the title which is booking method and system through each section of the specification.

[00:14:32] Speaker 00:
It is about booking systems.

[00:14:34] Speaker 00:
It's about booking systems in the embodiments.

[00:14:38] Speaker 00:
The answer to the question, I believe it was Judge Lurie's question, is that all embodiments in the patent are about bookings.

[00:14:48] Speaker 00:
The invention here is bookings.

[00:14:50] Speaker 00:
The embodiments are examples of particular types of bookings or appointments or reservations that are included within the general definition of bookings.

[00:15:00] Speaker 00:
And so everything about this patent teaches that it's about bookings and that service provider and mediator is about bookings.

[00:15:10] Speaker 00:
As to the section that council referred to and that was not argued in the briefs, which is under the brief description of the drawings at column three,

[00:15:24] Speaker 00:
All that section does is lay out what the figures are and note that those figures are going to be discussed later in the context of discussions of the embodiments.

[00:15:36] Speaker 00:
And that's exactly what happens.

[00:15:38] Speaker 00:
After the terms are defined and the invention is defined, there are embodiments.

[00:15:44] Speaker 00:
Those figures are discussed after that beginning at column four at line 27.

[00:15:51] Speaker 00:
And so what counsel points to, newly points to in the brief description of the drawings, excuse me, does not change the analysis.

[00:16:01] Speaker 00:
In fact, it confirms the analysis because the invention is defined first, the claim terms are defined first, and then the examples are defined.

[00:16:11] Speaker 04:
Mr. Lombardi, Judge Schall here.

[00:16:13] Speaker 04:
I have two questions if I could, please.

[00:16:17] Speaker 04:
Yes.

[00:16:17] Speaker 04:
The first one is just it doesn't relate to

[00:16:21] Speaker 04:
claim construction or anything about, uh, well, we've been talking about, but what, what exactly is I'm trying to understand from my own knowledge, what exactly is the accused, uh, product or system here that is, that, uh, the bank has bank of America has.

[00:16:41] Speaker 00:
Well, it changed over time, your honor.

[00:16:43] Speaker 00:
It started with three different things and it ended up being one.

[00:16:48] Speaker 00:
which was a system for the bank communicating with a customer about whether there was a fraud, for instance, in the account.

[00:17:00] Speaker 00:
And so it was communications back and forth between the bank for those purposes.

[00:17:06] Speaker 00:
It had nothing to do with a booking or a reservation or an appointment.

[00:17:10] Speaker 00:
Um, and it was never, um, covered by, by the, um, the scope of the invention here or the definitions of the invention here.

[00:17:19] Speaker 04:
Okay.

[00:17:20] Speaker 04:
My second question, uh, relates to the, I guess, the second point, uh, that Mr. Cole got into about the judge's ruling striking the expert reports.

[00:17:31] Speaker 04:
Um, and I, if I understood what he was saying correctly, he said that the judge

[00:17:39] Speaker 04:
misunderstood his previous orders, the three dash six and the three dash seven orders with respect to infringement contentions and improperly struck the expert reports.

[00:17:52] Speaker 04:
That's what I understood he was saying.

[00:17:54] Speaker 04:
What is your response to that?

[00:17:56] Speaker 00:
Well, my response, your honor, is that the district court understood very well what had happened and understood very well what he was doing.

[00:18:08] Speaker 00:
What happened was that Bookett amended their contentions late.

[00:18:13] Speaker 00:
Those amendments were stricken properly.

[00:18:15] Speaker 00:
And then when they tried to reassert the stricken theory in the expert reports, the district court would not let them do that, which was appropriate, Your Honor.

[00:18:27] Speaker 00:
The district court, as this court is well aware, has the authority to set up patent rules.

[00:18:33] Speaker 00:
They're important case management tools.

[00:18:36] Speaker 00:
They're designed to further the goal

[00:18:38] Speaker 00:
a full timely discovery and provide all parties with adequate notice and information with which to litigate their cases.

[00:18:47] Speaker 00:
And in this particular district, you are to do that early and the court warns you that you are to do that early.

[00:18:53] Speaker 00:
They did not do that.

[00:18:55] Speaker 00:
And when they were unsuccessful in amending their contentions, they tried to do an end run around what the court had done by putting those contentions

[00:19:07] Speaker 00:
into the expert reports.

[00:19:10] Speaker 00:
And when they did that.

[00:19:12] Speaker 04:
Excuse me, how did these contentions exactly, I'm sorry, how did these reports exactly key into the contentions that have been not allowed?

[00:19:26] Speaker 00:
Probably the easiest way to see that, Your Honor, is the amended contentions

[00:19:31] Speaker 00:
referred to a reservation engine.

[00:19:35] Speaker 00:
Reservation engine is not a term in the patent, but it was a term they came up with for their contentions.

[00:19:42] Speaker 00:
And you see that in the amended contentions at page 85161, for example.

[00:19:52] Speaker 00:
They also, in a letter sent to us right around the time of the filing of the amended contentions,

[00:20:00] Speaker 00:
referred to the reservation engine theory, which is at A6631.

[00:20:07] Speaker 00:
And that reservation engine theory is A6631 and thereafter, Your Honor.

[00:20:18] Speaker 00:
But that's where it starts.

[00:20:20] Speaker 00:
And it says there that

[00:20:23] Speaker 00:
in their new contention that Bank of America acts as the mediator and service provider of the asserted claims by providing a reservation engine for booking or reserving financial resources such as money or credit, and then it talks about credit card blocks and credit card holes, concepts that are nowhere in the patent, but that was the contention they set forth and it was ultimately struck.

[00:20:48] Speaker 00:
The expert reports, which are part of the record, there were two experts at issue, Your Honor.

[00:20:53] Speaker 00:
One was Shamos, and the report is that A6216 to 6233 specifically references

[00:21:04] Speaker 00:
this hold or reservation of credit or funds and refers to that specific concept, the reservation engine concept.

[00:21:15] Speaker 00:
And the Kapanen report is that A6240 and the relevant pages are A6242 to 51 again talks about the reservation of available credit and or funds in connection with payment card transactions.

[00:21:32] Speaker 00:
And so the reservation engine theory, which was brand new to the amended contentions, was repeated in the expert reports.

[00:21:43] Speaker 00:
And that was how they tried to get around what happened with the amended contentions.

[00:21:47] Speaker 00:
Now, there's been some argument made that actually this reservation engine theory wasn't new, but that's belied by the facts here, Your Honor.

[00:21:56] Speaker 00:
They thought they had to amend the contentions in order to state their reservation engine theory.

[00:22:02] Speaker 00:
And in fact, they stated in filing a brief trying to get further discovery in the case on the new reservation engine theory, they conceded it was a different theory.

[00:22:15] Speaker 00:
They said they were seeking discovery on their new theory, not their old theory.

[00:22:20] Speaker 00:
And that admission is at 5364.

[00:22:25] Speaker 00:
It's a brief that Bookett filed.

[00:22:27] Speaker 00:
He said, Bookett does not contend that the new

[00:22:31] Speaker 00:
Yes, A5364.

[00:22:36] Speaker 00:
It says there, Bookett does not contend that the new topics, meaning the new topics in the 30B6 contentions, have any basis in the original contentions.

[00:22:47] Speaker 00:
Instead, these new 30B6 topics properly relate to Bookett's amended infringement contentions.

[00:22:55] Speaker 03:
And so, the basis.

[00:22:56] Speaker 03:
Mr. Lombardi, Judge Laurie here.

[00:22:59] Speaker 03:
Getting back to Judge Schroll's question about the particular system of Bank of America that's being accused, is it not correct that that issue is not before us here because there was a stipulated judgment of non-infringement?

[00:23:19] Speaker 00:
That is correct, Your Honor.

[00:23:20] Speaker 00:
Given the rulings on claim construction and the rulings on the amended contentions and expert reports

[00:23:28] Speaker 00:
book it stipulated to dismissal of the action and here we are in appeal as a result.

[00:23:37] Speaker 00:
That is correct, Your Honor.

[00:23:41] Speaker 00:
And the court has considered striking expert reports in this manner and has done so most recently in the Phigenix case.

[00:23:55] Speaker 00:
In Phigenix case,

[00:23:56] Speaker 00:
was a case where this court held that there's no abuse of discretion in striking expert opinion on infringement where narrowing of infringement theory was not disclosed in operative contentions.

[00:24:09] Speaker 00:
The court ruled that you can't get around this by providing a very broad contention the first and then a narrower contention later.

[00:24:17] Speaker 00:
And it's noted in coming to this conclusion that the purpose of the contentions is to provide notice of the infringement theory so that you can prepare for trial.

[00:24:26] Speaker 00:
It is the case, Your Honor, that we apply an abuse of discretion standard here and that this court gives broad deference to a district court's enforcement of local patent rules.

[00:24:41] Speaker 00:
And this district court certainly had the authority and the ability to police the contentions that were required in this case and to ensure that both parties were given proper notice

[00:24:56] Speaker 00:
as most importantly in this instance, Bank of America was given proper notice of the contentions in the case so the case could be properly litigated along those lines.

[00:25:07] Speaker 00:
It was not an abuse of discretion for the district court to strike the portions of the expert reports that related to the new theory.

[00:25:18] Speaker 00:
And that's one further point I would make on that, Your Honor, is,

[00:25:24] Speaker 00:
That the district court was there's been talk about this being a death penalty for.

[00:25:30] Speaker 00:
for Bookett, it really wasn't anything other than the district court enforcing its rules.

[00:25:40] Speaker 00:
And it looked very carefully at the situation related to these amended contentions that we're talking about here concerning the claim terms.

[00:25:48] Speaker 00:
And it looked also at another amended contention, which Bookett raised, related to divided infringement.

[00:25:55] Speaker 00:
And there the district court said the amendment was proper because, essentially,

[00:25:59] Speaker 00:
Bookett learned that information during discovery.

[00:26:02] Speaker 00:
So this was a court that was anything but abusive of discretion.

[00:26:07] Speaker 00:
It was a court that carefully considered the issues and came to the correct result.

[00:26:14] Speaker 00:
Your Honors, if there are further questions, I'm happy to answer them.

[00:26:18] Speaker 00:
Otherwise, I am prepared to rest on the briefs.

[00:26:23] Speaker 02:
Is there any more questions, Mr. Lombardi?

[00:26:26] Speaker 02:
Did it show?

[00:26:26] Speaker 00:
No.

[00:26:28] Speaker 02:
Okay, thank you.

[00:26:29] Speaker 02:
All right, we'll hear rebuttal from Mr. Cole.

[00:26:34] Speaker 01:
Thank you, Your Honor.

[00:26:36] Speaker 01:
On the question of expert reports, there's a massive bit of confusion here, and that is this.

[00:26:40] Speaker 01:
With regard to the claim construction, we did offer a truly new theory.

[00:26:47] Speaker 01:
Nobody disputes that.

[00:26:48] Speaker 01:
And that theory is different than the one we're arguing about.

[00:26:51] Speaker 01:
We propose an amended contention in which third parties, rather than Bank of America, would satisfy the service provider element.

[00:27:00] Speaker 01:
That was rejected.

[00:27:02] Speaker 01:
We're not appealing that decision.

[00:27:04] Speaker 01:
The problem is,

[00:27:06] Speaker 01:
Basically, let me put this in context.

[00:27:09] Speaker 01:
At the time this was going on, Bank of America had sent us the standard letter demanding attorney fees if we don't immediately dismiss the case.

[00:27:18] Speaker 01:
In response to that, we made two points.

[00:27:20] Speaker 01:
One is we have an alternative read that we're going to seek leave to amend.

[00:27:24] Speaker 01:
That's the one where we change who satisfies the service provider limitation.

[00:27:28] Speaker 01:
In addition, however, we made clear that we still have a read under the claim construction as done because we contended what the bank did qualifies as bookings and reservations.

[00:27:42] Speaker 01:
That's this booking engine thing they're talking about.

[00:27:46] Speaker 01:
And that's not a new theory because Bank of America was originally accused of being the service provider and is still accused of being the service provider.

[00:27:55] Speaker 01:
That was the theory of invention.

[00:27:58] Speaker 01:
That's what the local rules state.

[00:28:00] Speaker 01:
And that's what we are pursuing.

[00:28:02] Speaker 01:
And what's happened here is the confusion over the fact that we had a legitimately new theory

[00:28:08] Speaker 01:
coupled with an explanation addressing Bank of America's attorney's fees threat and what happened is those two were conflated and the district court seemed to think that they all stand or fall together with no extra analysis needed and that's just wrong.

[00:28:23] Speaker 01:
Now, second, with regard to this, I'm not quite sure I understood the argument about whether this is properly before us.

[00:28:29] Speaker 01:
But we had a stipulation of non-infringement because the district court struck any attempt we could make to offer evidence to show the bank meets the service provider limitation.

[00:28:42] Speaker 01:
Under that scenario, given what happened, we had no choice but to stipulate an appeal.

[00:28:48] Speaker 01:
Because if we had pursued further, we would have been sanctioned.

[00:28:55] Speaker 01:
The only other point I was going to make was that if you look at Appendix 6014, this is in some of the briefing on the motion to shrug the expert reports.

[00:29:10] Speaker 01:
There is a chart that shows clearly

[00:29:12] Speaker 01:
the original theory coupled with the explanation of how that meets the court's claim construction, again, done in response to the attorney's fees threat.

[00:29:21] Speaker 01:
And then under that, you'll see the truly new contention that we all acknowledge was excluded.

[00:29:26] Speaker 01:
That's Appendix 6014.

[00:29:27] Speaker 02:
Okay.

[00:29:30] Speaker 02:
Thank you.

[00:29:31] Speaker 02:
Any more questions for Mr. Cole?

[00:29:35] Speaker 04:
No.

[00:29:35] Speaker 02:
Okay.

[00:29:37] Speaker 02:
Thank you.

[00:29:38] Speaker 02:
Thank you both.

[00:29:39] Speaker 02:
The case is taken under submission and that concludes this panel's argued cases for this morning.

[00:29:50] Speaker 00:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.