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The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

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We'll hear argument first in number 192269 via Vodis LLC versus Blizzard Entertainment, Inc., Mr. DeNovo.

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Thank you, Your Honor, and may it please the court

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The principal issue presented to the court is whether the phrase pre-specified parameters is indefinite under Nautilus.

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The inventions in the 5-2-1 patent are directed to distributed computer networking and making data transfer in a distributed network more rapid, reliable, and the data more available.

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It does this in part by measuring certain pre-specified parameters.

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Now, several... I'm sorry?

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This is Judge Wallach.

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It seems to me that much of your argument deals with your belief that Blizzard, in its proposed constructions in inter-partis review, basically conceded the case as far as you're concerned when it got to the trial.

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And what Blizzard says in response is that,

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And I'm quoting from page 12 of the red brief.

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In their petition for inter-partis review, Blizzard's proposed constructions did not necessarily reflect appropriate claim constructions to be used in litigation and other proceedings where a different claim construction standard applies.

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And in fact, they said that, squarely said it, in their argument before the PTAB.

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Why were those different claim construction standards discussed by the avatis in the blue brief?

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Thank you, Judge Wallach.

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So to respond to your first point, our principal argument is not based on their actions before the PTAB.

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As I hope to get into momentarily, every aspect of the intrinsic record, including the claims, the specification, and the prosecution history support

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a very simple plain, ordinary, meaning construction.

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Now, our position is that when they went to the PTAB, as this court decided and reaffirmed in the Samsung versus Priscilla engineering case, you can seek an IPR review when claims are definite.

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And the PTAB actually applies a more strict

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passed for definite is called the Packard standard, in which claims have to be clear.

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As part of their gatekeeping function, they say that they apply a more strict standard than the Nautilus standard, which is applied by this court, which is they have to be reasonably clear.

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And so when the appellees approached the PTAB with their petition and with a duty of candor said that these claims are definite,

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and are subject to IPR review in an effort to invalidate the claims.

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Mr. Genova, this is Judge Chen.

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Did they, in fact, proclaim that these claims are definite in their IPR petition?

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Well, they... Did they say, yes, these claims are definite, and so therefore they are completely amenable to an IPR review based on our 102-103 concerns?

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I don't think they quite said it like that.

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I agree with you, Judge Chen.

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I think it was implicit in the fact that they know the rules, that the regimen or the regime is set up for 102 and 102.

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Well, let's go to what those rules are.

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I mean, you referred to the Samsung opinion, and what actually happened in the Samsung opinion is that this court remanded the appeal of the IPR back to the board because the board refused to consider

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the patentability of certain claims due to a certain type of indefiniteness defect.

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And we said, no, there are circumstances where you can, as a patent board in these IPR proceedings, go forward and do your 102-103 analysis in spite of your view that there is an indefiniteness problem.

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Am I misunderstanding the Samsung case?

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Well, perhaps I am, Your Honor.

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I'm reading from the case.

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It says, as such, the proper course for the board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, is to decline to institute the IPR.

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And so it's my understanding that that is the rule.

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Do you have case 1355 of the Samsung opinion?

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I do, Your Honor.

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948 at 3rd.

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1355?

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I do.

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OK.

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You see subsection number two?

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I do, your honor.

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But did you read this part of the opinion?

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I did, this IPXL type indefiniteness.

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Right.

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So this is the part that I'm recalling from, and I'm asking you to

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respond to because you seem to be taking a position this morning that there is no way, no how that the patent board in an IPR can review claims if it believes that there are any indefiniteness problems.

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That's what I heard you say.

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Now I want you to talk about what this part of Samsung says, which to me reads that it

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It contradicts what you just said.

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Perhaps my statement then was too broad.

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The IPXL decision, it relates to mixed method and apparatus.

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And the court here says that the validity of the challenge claims may be subject to question for IPXL type indefiniteness.

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But that's not what is present in this case.

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Right.

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So what you need to do is to try to explain what's the principle

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this court should take away from cases like Samsung and the recently issued Cochlear opinion to try to understand what are the kinds of circumstances where there can be an indefiniteness defect and yet it's still appropriate for the patent board to move forward.

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Are you familiar with the Cochlear opinion?

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I am not, Your Honor.

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Okay.

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I mean, if you just want to take the position that

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only IPXL type indefiniteness problems are the only kinds of problems that can ever be considered in an IPR despite that defect, then fine, we can move on because you don't have more to say on it.

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Well, I would like, if I could, to get to the intrinsic record aspect of our argument, which I think is the principal portion of our argument under Nautilus.

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Under the claim language that the claims claim 1 and 30 the Apple is arguing that based on the specification You can't determine when this determination is to be made.

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Could you address that?

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Absolutely, your honor.

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Well, first of all the passage that they're referring to is

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talks about the detection of pre-specified parameters.

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So first of all, it doesn't even address, or it's not directed to the limitation in question.

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It is directed to the detection of the pre-specified parameters.

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And so the PTA be determined, and that what is meant by pre-specified is, well, it was particularly pre-determined in that case, is in accordance, in advance, in accordance with the claim's purpose.

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And so the passage that they're referring to, which is a preferred embodiment.

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You say it just means in advance, right?

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And they argue based on a specification passage that that's not clear, right?

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That's correct.

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So what's your answer?

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Well, first of all, the specification passage is not directed to a preference for pre-determined or pre-specified parameters.

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Mr. DeNaveau, this is Judge Chen.

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Can you point us to the passage?

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When you say the passage, I don't know what passage you're referring to.

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This is the 27th of the patent.

[00:09:04] Speaker 03:
Yes, Your Honor.

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For example, on page 26 of the red brief... I'm talking about the passage in the patent.

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Okay.

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There's several such passages.

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There is Appendix 101 at 339.47, where it is referred to as

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prior to the transmission of the data.

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There's Appendix 101 at 420 to 24.

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Again, prior to transmission of the data.

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And in each of these cases, there are two things that are occurring.

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There is the specification of the parameter, and there is the measurement or detection of the parameter.

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And of course, in order to detect or measure the parameter, one would expect that you would want to know what the parameter is that you were measuring or detecting.

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And so these passages actually refer to a preferred embodiment, which is claimed, in which case the pre-specified parameter is detected prior to the transmission of the data.

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Of course, if... Right.

[00:10:06] Speaker 04:
And so, Mr. Denovo, my understanding of the other side's argument is, as you point out, these certain passages at column three, column four, and column five seem to be directed to preferred embodiment.

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and that these preferred embodiments talk about parameters that are specified prior to the transmission of the data.

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And because they're preferred embodiments, that suggests strongly that perhaps the claims aren't limited to just the preferred embodiment.

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And therefore, maybe your claim is not limited to specifying the parameters prior to the transmission of data.

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my understanding of their argument about these passages, and you need to explain why that understanding of these passages, column three, column four, column five, is incorrect, and that's the wrong way to think about them.

[00:11:05] Speaker 05:
Yes.

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And in that connection, focus particularly on column five, line 27, 35.

[00:11:15] Speaker 03:
Very well.

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Again, this column, Judge Dyke refers to, it is preferred that the determination of the pre-specified parameters occur prior to the transmission of the data.

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And so here there has to be a specification, which in order to accomplish the objectives of the claim, has to be specified in advance of transmission.

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And the determination of that parameter, the measurement of that parameter also must be

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And of course, this court has said repeatedly, including in Adam's respiratory therapeutics, that a claim construction that excludes the preferred embodiment is rarely, if ever, correct.

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That's not the concern.

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The concern is that perhaps the claim is not only does it include your preferred embodiment, but it also includes something else, non-preferred embodiment in which

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your parameters are specified perhaps during the data transmission or maybe even after the data transmission.

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And that's their argument and so therefore this claim becomes, the scope of it becomes very, very unclear very, very quickly because that kind of scope of the claim is not explained in the patent how that's even possible.

[00:12:46] Speaker 03:
Well, Your Honor, first of all, the term pre has a plain and ordinary meaning, which means prior.

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So it's specified in advance.

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That's what the plain and ordinary meaning of the claim means, which incidentally is precisely what this court.

[00:12:58] Speaker 05:
Please deal with this passage in the specification.

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If this passage is read to say it is preferred that the determination be made prior to the transmission of the data, then as Judge Chen says, that's just a preferred embodiment.

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And there could be other embodiments.

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when the determination is made at another time, which creates potentially an indefiniteness problem?

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Well, first of all, Judge Dyke, again, this passage says nothing about pre-specified parameters when that occurs.

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It says it is preferred that the determination occur prior to the transmission of the data.

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So the fundamental premise that this passage even describes a preferred embodiment about the pre-specification is incorrect.

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It describes a preferred embodiment that the determination occurs.

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Moreover, patentees routinely describe things as preferred embodiments.

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This doesn't make claims indefinite when they claim the preferred embodiment.

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It simply says that the preferred embodiment is claimed and embodied in claims one and 30, which is consistent with this court's jurisprudence.

[00:14:09] Speaker 04:
So it's a novel.

[00:14:11] Speaker 04:
Can we go to the means plus function

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issue.

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I know that the district court agreed with you as to what the corresponding structure is for both the initial means for detecting pre-specified parameters of the data transmission between the data storage means and the computer unit and then the second means for detecting.

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And what I'm trying to understand is

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What is the actual structure that does the first means for detecting pre-specified parameters?

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So I would say with respect to this, there are two different structures affirmatively disclosed.

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And then there's logarithmic structure provided.

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Let's start with the hardware structure first.

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What is the hardware structure for the first means for detecting?

[00:15:04] Speaker 03:
There are two structures that are provided, a timer and a counter.

[00:15:10] Speaker 05:
OK, but they're measuring the same parameter, which is duration, right?

[00:15:15] Speaker 03:
A counter could be used as a timer, but it is also used for other things, such as an error rate or a fault rate in accordance with the language of the patent.

[00:15:31] Speaker 05:
Where does specification talk about the counter being used for those purposes?

[00:15:38] Speaker 03:
Yes, Your Honor, I have that here.

[00:15:40] Speaker 03:
So the counter at appendix 112, column 26, lines 30 to 42, the counter is used, it says it's used to determine transmission duration and optionally a timer is implemented.

[00:15:58] Speaker 05:
Okay, but you're not answering my question.

[00:16:00] Speaker 05:
I understand that it refers to measuring duration.

[00:16:04] Speaker 05:
You said it's used to measure something else.

[00:16:07] Speaker 05:
And I'm asking you where in the spec we find that reference to it being used to determine something else other than duration.

[00:16:16] Speaker 03:
All right, very well.

[00:16:17] Speaker 03:
In column three, lines 39 to 47, the pre-specified parameters include the duration of transmission, the fault rate.

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And so there's a number of instances where

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And there's also the 521 patent 631.

[00:16:30] Speaker 05:
I'm asking you a specific question about where does the specification talk about the use of the counter to determine anything other than duration?

[00:16:42] Speaker 03:
OK.

[00:16:43] Speaker 03:
At column 11, line 6 through 13, the counter counts a number of hops along the message path.

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And so it generates what it calls a ticket number.

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There is a continuous counter generated in the cell associated with the ticket number for what are pseudo-reliable messages.

[00:17:05] Speaker 04:
Mr. Denovo, I'm looking for the word counter in column 11.

[00:17:08] Speaker 04:
Can you point me to it?

[00:17:11] Speaker 03:
Yes.

[00:17:11] Speaker 03:
Let me pull the patent.

[00:17:29] Speaker 03:
So the passage I'm looking for says, as long as the respective operation included in the message MSG.

[00:17:43] Speaker 03:
Yes, it's on column 11, line 12.

[00:17:48] Speaker 04:
And where does it say that the counter is doing something that

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act as a parameter that is different from figuring out duration of transmission?

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So what it does in my understanding is that there is an increment of the ticket number for each hop along the path.

[00:18:23] Speaker 05:
But it talks about here again measuring duration by combining, combined by the sending

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sending time of the message, which is duration, right?

[00:18:34] Speaker 03:
Well, fault rate inherently has, any rate has a duration component, but it also has a fault component.

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So the duration component would be the denominator, but the faults would be the numerator.

[00:18:48] Speaker 05:
Okay, but here it's the counters determining the time of the sending of the message, right?

[00:18:57] Speaker 03:
Well, it's combined by the sending time of the message and the sender's identification.

[00:19:02] Speaker 05:
OK, is there any other place, just before we finish, is there any other place in the patent where you contend that the counter is being used to measure anything except timing or duration?

[00:19:15] Speaker 05:
Well, there's repeated references in the patent to fault rate.

[00:19:20] Speaker 05:
And the only one that's not my question.

[00:19:23] Speaker 05:
My question is, where does the patent

[00:19:26] Speaker 05:
describe using the counter to determine anything except duration or timing?

[00:19:33] Speaker 03:
Well, there's also a reference to an average duration.

[00:19:38] Speaker 03:
So an average duration of transmission would require, in this case, would require the addition of the times divided by a number of counters.

[00:19:48] Speaker 03:
Of course, that's how averages are calculated.

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So the counter is used in addition to that.

[00:19:53] Speaker 00:
Is there anything else?

[00:19:55] Speaker 03:
Well, there is, of course, the pseudo code associated with the pseudo-reliable messages on columns 11 and 12, which provide very explicit... Are we still talking about the counter?

[00:20:05] Speaker 03:
Well, the counter is used in conjunction with the pseudo-reliable messages.

[00:20:11] Speaker 04:
Let me get back to my question about the means for detecting.

[00:20:16] Speaker 04:
Yes, sir.

[00:20:16] Speaker 04:
As I understood what you argued below and what the district court adopted, the means for detecting pre-specified parameters

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is a network of computers that performs a four-step algorithm.

[00:20:32] Speaker 04:
Is that right?

[00:20:34] Speaker 03:
Well, in addition to the... That is correct.

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That is, of course, under this court's jurisprudence, if it's a general purpose computer or network of computers, one looks to algorithmic teaching.

[00:20:46] Speaker 04:
That's right, but I'm just trying to figure out what in that network of computers is the actual hardware

[00:20:54] Speaker 04:
Is it, I mean, it's not the monitors.

[00:20:57] Speaker 04:
Which part of the computer are we referring to there?

[00:21:01] Speaker 03:
It's the processor.

[00:21:02] Speaker 03:
So, well, and a clock.

[00:21:05] Speaker 03:
So it could be a crystal.

[00:21:07] Speaker 04:
And then is that also true for your second means for detecting pre-specified parameters for data transmission between said data storage means?

[00:21:18] Speaker 03:
Well, I think the notion of a timer or counter

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incorporates aspects of both hardware and software.

[00:21:27] Speaker 04:
Well, what I'm trying to understand is below, I believe you advocate in the district court adopted that the exact same stuff, hardware, software, algorithms that are associated with the first means for detecting is identical to the second means for detecting.

[00:21:51] Speaker 04:
Is that right?

[00:21:53] Speaker 04:
That is what the court ruled.

[00:21:56] Speaker 04:
Because that's what you argued for.

[00:21:58] Speaker 03:
That's correct, Your Honor.

[00:22:00] Speaker 03:
OK.

[00:22:00] Speaker 04:
And now what I'm trying to figure out is in this claim, one, the second means, before it says second means, it actually says the data storage means comprising the second means for detecting pre-specified parameters.

[00:22:18] Speaker 03:
Yes.

[00:22:19] Speaker 04:
So to me, that suggests

[00:22:23] Speaker 04:
or that requires that the second means, whatever it is, it's located in the data storage means.

[00:22:30] Speaker 03:
So this is a distributed network that's disclosed.

[00:22:34] Speaker 03:
The client is a computer.

[00:22:35] Speaker 03:
And under column 8, 5 to 6, the client is a internet provider, personal computer, or network computer.

[00:22:43] Speaker 03:
The storage means also have associated computer systems.

[00:22:47] Speaker 03:
And at column 10, lines 4 to 10.

[00:22:50] Speaker 04:
Do you understand my concern, though?

[00:22:52] Speaker 04:
I mean, you can't possibly refer to the entire network of computers as being the hardware for performing the second means for detecting when the claim itself is referring to the data storage means.

[00:23:04] Speaker 03:
I completely understand, Judge Ten, what you're saying.

[00:23:07] Speaker 03:
My point is that these are nodes on a distributed network, each of which is a computer.

[00:23:13] Speaker 03:
And so column 10, lines 4 to 10, points out that the storage means of other computer systems which are distributed over the computer system

[00:23:22] Speaker 03:
So the network has nodes, and those may fill a role of client computer or data storage means, again, having associated clocks and processors that would perform the algorithm.

[00:23:36] Speaker 03:
And I would finally point out, I realize I'm over time, but this court in intellectual property development, note nine, and at least one case cited therein say there's nothing wrong with having the same

[00:23:50] Speaker 03:
structure perform multiple functions, one could easily imagine a patent claim directed to a chair where the legs are attached to the seat with... Well, are you telling me that it's the data storage means that's also performing the first means for detecting?

[00:24:06] Speaker 03:
Well, no, that's inconsistent with the claim, Your Honor, but my point is that they are general... Well, what hardware is performing the first means for detecting?

[00:24:16] Speaker 04:
The network of computers?

[00:24:18] Speaker 04:
I believe that the processor is in each individual computer.

[00:24:23] Speaker 03:
And in the context of a timer, it would also include a clock, either external or internal.

[00:24:30] Speaker 03:
This is a general purpose computer.

[00:24:32] Speaker 03:
And so our approach was to apply the algorithmic structure, which is set out in pseudocode in great detail in the patent specification.

[00:24:41] Speaker 03:
But in each case, we're not identifying any particular processor, but it has to be a processor associated with that which is claimed as the computer, or in the case of the second means, the data storage means.

[00:25:01] Speaker 05:
Okay.

[00:25:01] Speaker 05:
Well, unless there are further questions, maybe we should hear from Mr. Kelly.

[00:25:06] Speaker 05:
Thank you very much.

[00:25:07] Speaker 05:
We'll give you two minutes for a bottle, Mr. D'Angelo.

[00:25:10] Speaker 05:
Thank you.

[00:25:11] Speaker 05:
Mr. Kelly?

[00:25:13] Speaker 02:
May it please the court?

[00:25:14] Speaker 02:
Good morning, Your Honors.

[00:25:15] Speaker 02:
I'd like to begin just real quickly with the clock counter issue.

[00:25:18] Speaker 02:
There really can be no debate about this.

[00:25:22] Speaker 02:
V. of Audits told the district court, and now I'm going to read from appendix page 340, quote, the patent discloses a counter and optional timer for the purposes of calculating transmission duration.

[00:25:34] Speaker 02:
That's what the clock and counter are for.

[00:25:35] Speaker 02:
They're not for anything else.

[00:25:37] Speaker 02:
And beyond what the avadas told the district court, the patent itself makes that clear.

[00:25:43] Speaker 02:
And I will point briefly to column 26 of the patent, which is at page 112 of the record.

[00:25:50] Speaker 02:
Mr. DeNovo reads from that column right around lines 33 plus that mentions the clock and the counter.

[00:25:57] Speaker 02:
But the next paragraph begins by saying the evaluation of the data transmission performance with respect to the data transmission duration, however,

[00:26:06] Speaker 02:
is to be understood as an example only.

[00:26:09] Speaker 02:
So the patent also makes crystal clear that the counter and the clock are used for one and only one purpose, and that's data transmission.

[00:26:17] Speaker 02:
Now I'd like to circle back quickly to the language prior to the transmission of the data, which is relevant to the pre-specified language in the claim.

[00:26:27] Speaker 02:
So the Avadas focuses on this throughout their brief and they put this down as the marker, the marker that determines whether the pre-specified limitation has been met.

[00:26:36] Speaker 02:
And of course, that's the indefiniteness that the district court focused on.

[00:26:40] Speaker 02:
There's no debate here that pre-specified is not a temporal limitation.

[00:26:44] Speaker 02:
The problem is we don't know the end point of that limitation.

[00:26:48] Speaker 05:
Wait a moment.

[00:26:48] Speaker 05:
Why?

[00:26:49] Speaker 05:
There's no dispute that it's a temporal limitation.

[00:26:53] Speaker 05:
You mean there's no dispute that

[00:26:57] Speaker 05:
At some point, there has to be a measure.

[00:27:00] Speaker 02:
Sure.

[00:27:01] Speaker 02:
Sure.

[00:27:01] Speaker 02:
That's what pre-specified means.

[00:27:02] Speaker 02:
That one thing happens before another thing.

[00:27:05] Speaker 02:
The issue the district court had was that we don't know what the other thing is.

[00:27:11] Speaker 02:
And what VIAVODIS is now telling this court is that the other thing that is the point in time about which we have to decide if a parameter was, in fact, pre-specified is the transmission of the data.

[00:27:23] Speaker 05:
The ARU that's prior to the transmission, right?

[00:27:27] Speaker 02:
That's right, Judge Dyke, and you were asking this.

[00:27:30] Speaker 05:
Why isn't that correct?

[00:27:32] Speaker 05:
I mean, you have this language in column five of the patent about the further it is to be preferred on line 28.

[00:27:43] Speaker 05:
But that seems to me susceptible to two interpretations.

[00:27:47] Speaker 05:
One is that it's to be preferred that it be done before the transmission, or it's preferred that it be done using this kind of data

[00:27:57] Speaker 05:
determination prior to the transmission.

[00:28:03] Speaker 02:
Your Honor, I'd like to point something else out about the language prior to the transmission of the data, which I think will clarify why it's not relevant at all to this discussion.

[00:28:13] Speaker 02:
And we describe this in our brief at page 27.

[00:28:16] Speaker 02:
That language that Your Honor has pointed to

[00:28:20] Speaker 02:
prior to the transmission of the data, that doesn't modify the pre-specified language.

[00:28:26] Speaker 02:
That modifies the language, quote, the duration of data processing operations of the individual data storage means prior to the transmission of the data.

[00:28:37] Speaker 02:
In other words, this patent is talking about various parameters.

[00:28:42] Speaker 02:
And when it lists those parameters, one is the duration of the transmission.

[00:28:47] Speaker 02:
Another example is the fault rate.

[00:28:49] Speaker 02:
And another example is the duration of data processing operations of the individual data storage means prior to the transmission of the data.

[00:28:57] Speaker 04:
Well, that also is probably subjected to different readings.

[00:29:01] Speaker 04:
I mean, one reading I agree is your reading, but another reading would be that all of these types of parameters are specified prior to the transmission of the data.

[00:29:14] Speaker 04:
And then when you step back and think about the entire goal of this patent,

[00:29:18] Speaker 04:
and the purpose of the invention, it seems necessary or necessarily that all of these parameters have to be specified before you actually do your data transmission.

[00:29:31] Speaker 04:
Because the goal here is to optimize the speed and reliability of data transmission to a given client by redundantly storing the data in a lot of different locations.

[00:29:44] Speaker 04:
And then you use these rules, these parameters,

[00:29:48] Speaker 04:
to assess which of those data storage locations will most rapidly deliver the desired data to a given client.

[00:29:57] Speaker 04:
So you've got to have those parameters on hand at the time you are doing your decision making as to which storage location you're going to be accessing to deliver the data.

[00:30:12] Speaker 04:
So when you read this entire patent and think about the context of what's going on here,

[00:30:19] Speaker 04:
Of course, all of these parameters have to be specified before you do the actual data transmission in order to use the parameters to make the choice and decision of which data storage location to access.

[00:30:36] Speaker 04:
So why wouldn't we understand the term pre-specified to be parameters that are specified in advance of the data transmission?

[00:30:51] Speaker 02:
So your honor, I understand where you're going with that and I understand the point of the invention and the answer is that the connection between the transmission of the data in the language that we're talking about is not the transmission of the data that is detected for the purposes of the duration.

[00:31:09] Speaker 02:
In other words,

[00:31:10] Speaker 02:
In order to more efficiently download data, right, from a storage means to a computer, you want to know the transmission of the data, the time it's going to take to do that.

[00:31:20] Speaker 02:
And obviously, if the claim is written in terms of detecting that time, it has to not only be pre-specified, but it has to be detected before that transmission.

[00:31:31] Speaker 02:
In other words, the transmission that they're talking about, the transmission the Avadas is talking about, has nothing to do with the transmission

[00:31:38] Speaker 02:
where the duration is detected because of course it would be irrelevant to detect the duration of the actual transmission when it's happening because at that point it doesn't make any sense.

[00:31:50] Speaker 02:
So to key off this pre-specified word on the transmission of the data that we're all focused on makes no sense whatsoever because the transmission of the data that we're all focused on is sort of not related to the duration

[00:32:08] Speaker 02:
analysis that is being used by the system.

[00:32:11] Speaker 02:
And what I point the court to, I'm sorry.

[00:32:14] Speaker 04:
I'm not sure what you're getting at because let me just tell you what's in my mind.

[00:32:21] Speaker 04:
What's in my mind is that these parameters are based on prior messages having been sent and figuring out what is the duration of those messages, those transmissions

[00:32:37] Speaker 04:
And then now you know what that variable is.

[00:32:42] Speaker 04:
And then that's stored in the data storage cell.

[00:32:48] Speaker 04:
And so now we know, OK, it takes four milliseconds for this cell to transmit data to client X. And so we know that already.

[00:33:01] Speaker 04:
And so now we're going to look that up and figure out whether

[00:33:05] Speaker 04:
that amount of time is too slow or the fastest available compared to other cells that store this exact same piece of data.

[00:33:16] Speaker 02:
So, Your Honor, what the Court's question does there is it disconnects the pre-specification with the actual data transfer that we're talking about, because I think the Court referred to earlier data transfers.

[00:33:30] Speaker 02:
And that may be a fair way to read this, but of course,

[00:33:33] Speaker 02:
once you refer to earlier data transfers, you're no longer talking about the transmission of data that's used in the specification.

[00:33:40] Speaker 02:
More importantly, Your Honor, we still have the problem... Go ahead, finish.

[00:33:46] Speaker 02:
Okay, thanks, Judge Teich.

[00:33:48] Speaker 02:
More importantly, we still have the problem of knowing when that pre-specification has to occur, and let me try and give the Court an example.

[00:33:54] Speaker 02:
The claim is written in terms of means for detecting pre-specified parameters.

[00:34:00] Speaker 02:
We don't know who

[00:34:01] Speaker 02:
or where that pre-specification occurs.

[00:34:04] Speaker 02:
For example, is it the computer programmer, the coder who designs the means?

[00:34:09] Speaker 02:
Is the person at that point pre-specifying the parameters so that the means is able to detect them?

[00:34:15] Speaker 02:
Or is the means programmed to detect many parameters and the means has some sort of functionality within it that while it's detecting pre-specifies which ones that it's going to be used?

[00:34:25] Speaker 02:
And there's even a third possibility.

[00:34:27] Speaker 02:
The third possibility is that the means actually detects all the parameters.

[00:34:31] Speaker 02:
It's checking all of them.

[00:34:33] Speaker 04:
Mr. Kelly, what I don't understand is, why do we need to know any of that to figure out what the meaning of the parameter, pre-specified parameters is?

[00:34:45] Speaker 04:
I mean, if we know what the pre-specified parameter is, which is a parameter that's specified in advance of a data transmission, why isn't that sufficient for

[00:35:01] Speaker 04:
1.12b purposes, why do we need to know where this parameter came from or how it was calculated?

[00:35:11] Speaker 04:
Maybe those are other issues, whether it's enablement or written description or something else.

[00:35:15] Speaker 04:
But just for 1.12b purposes or 1.12 second purposes, we already know what the parameter is or what the definition of it is.

[00:35:28] Speaker 04:
I mean, I'm not aware of any case law that says you need to know all this other stuff about how it came to be or where it came from or what person or device actually ultimately generates the parameter.

[00:35:41] Speaker 04:
I mean, that's not recited in the claim, so I don't know why it's required here.

[00:35:48] Speaker 04:
You didn't cite a case that suggests we need that kind of detail recited in the claim.

[00:35:56] Speaker 04:
As far as we see, the closest case that the parties cite in their briefing is the IGT versus Valley Gaming for predetermined events.

[00:36:08] Speaker 02:
Right, Your Honor.

[00:36:09] Speaker 02:
And in that case, we have a simple if-then situation, right?

[00:36:13] Speaker 02:
A command is issued if something happens before it.

[00:36:15] Speaker 02:
So we know what the timing is.

[00:36:16] Speaker 02:
The command follows what happened before it.

[00:36:19] Speaker 02:
To go back to Your Honor's question about why we have to figure out the timing in this case precisely, it's because the word pre-specified is in the claim.

[00:36:26] Speaker 04:
But I'm asking about how it gets made or what device or person makes it.

[00:36:33] Speaker 04:
I don't see why that needs to, that's now a requirement for definiteness.

[00:36:39] Speaker 02:
Your Honor, it's not a requirement for definiteness, but what it would be in this case is it would be a clue to tell us when this is determined.

[00:36:47] Speaker 02:
If it's pre-specified in order to create the means, then the person coding the means has to know what it is.

[00:36:53] Speaker 05:
If it's done by the means.

[00:36:54] Speaker 05:
Mr. Kelly, suppose this

[00:36:56] Speaker 05:
this claim had said pre-specified parameters per ren determined prior to the transmission of the data.

[00:37:03] Speaker 05:
Would the claim then be indefinite?

[00:37:11] Speaker 02:
Your Honor, I think it would because, again, the transmission of the data has nothing to do

[00:37:17] Speaker 02:
with when the parameters are pre-specified, because the transmission of the data is something that happens at the very end of the entire process.

[00:37:27] Speaker 02:
So, of course, the claim has to do something before the very end of its process.

[00:37:32] Speaker 02:
The question is how early does it have to do it?

[00:37:35] Speaker 02:
They don't just have to be pre-specified at the point of the data transmission, because if they're not specified, Your Honor, until the instantaneous moment before the data transmission, then the claim doesn't work anymore.

[00:37:46] Speaker 02:
Because remember, they have to be pre-specified before they can be determined.

[00:37:50] Speaker 02:
And as Judge Chen described in how the court perceived the claim operating, they get determined before the data transmission of the claim.

[00:37:58] Speaker 02:
There are some pre-data transmissions that happen earlier in time.

[00:38:02] Speaker 02:
So keying the pre-specification off the data transmission in claim one makes no sense.

[00:38:09] Speaker 02:
Because that data transmission is not the data transmission where the parameters are measured.

[00:38:16] Speaker 02:
The best example of that I can give you is that Appendix 31, where the District Court outlined the Avadas' description of this function.

[00:38:26] Speaker 02:
And the District Court at Numeral 3 in the left side of the column said, wherein said determining or checking occurs periodically based on time intervals or subsequent specified actions.

[00:38:37] Speaker 02:
In other words, this determining is not something that is keyed off the data transmission.

[00:38:42] Speaker 02:
It's something that's keyed off of something else.

[00:38:46] Speaker 04:
Mr. Kelly, I want to move on to judicial estoppel as well as the means plus function issue.

[00:38:53] Speaker 04:
On judicial estoppel, even though you may have reserved in your IPR petition that just for purposes of BRI, you proposed a specific claim construction for these means for detecting limitations.

[00:39:15] Speaker 04:
or the meaning of pre-specified parameters.

[00:39:19] Speaker 04:
But nevertheless, in order to trigger an IPR, you had to take the position that the claim term was amenable to construction.

[00:39:33] Speaker 04:
And now you're saying it's not amenable to construction.

[00:39:38] Speaker 04:
And so why is it that you're allowed to do that?

[00:39:45] Speaker 04:
I understand that there are two different claim construction rubrics that are applied in the IPR context and then in district court.

[00:39:54] Speaker 04:
But if anything, at the patent board and at the PTO, as you know, the agency uses a standard for definiteness which makes it easier to find indefiniteness, that less ambiguity is required to find something ambiguous.

[00:40:13] Speaker 04:
And so under the circumstances,

[00:40:16] Speaker 04:
If it's good enough for the board and good enough for you to trigger an IPR challenge, why aren't you constrained to that position and precluded from advancing a conflicting position in district court?

[00:40:37] Speaker 02:
So I have a couple.

[00:40:38] Speaker 02:
May I continue?

[00:40:39] Speaker 04:
Yes.

[00:40:40] Speaker 02:
I have a couple of answers to that, Your Honor.

[00:40:42] Speaker 02:
The first is that we never said it was definite.

[00:40:44] Speaker 02:
We just laid out a construction that was agnostic to timing, so we're not taking a position now that's inconsistent.

[00:40:50] Speaker 02:
But to go to the higher sort of policy level aspect of the Your Honor's question, it's not that there's two standards of indefiniteness.

[00:40:57] Speaker 02:
BRI permits the agency to approach definiteness in a different way, where they can make a prima facie case

[00:41:04] Speaker 02:
when a claim is unclear, but maybe not indefinite under Nautilus standards.

[00:41:08] Speaker 02:
That's what Packard explains.

[00:41:10] Speaker 02:
The problem here is not that the claim needs to be clear enough in both tribunals at once for the same purposes, but that the purposes are different.

[00:41:19] Speaker 02:
And this is what the Samsung case refers to that your honor was asking via Bautista's counsel about.

[00:41:25] Speaker 02:
The question at the board is whether or not the claim can be construed for the purposes of applying the prior art.

[00:41:33] Speaker 02:
And the district court felt it could.

[00:41:35] Speaker 04:
Why can it be construed enough for purposes of doing an IPR when you're telling us now we have no idea when these parameters are getting specified and we don't know where they're coming from or who and how they're being developed?

[00:41:57] Speaker 04:
I mean, if you need to know all that information,

[00:41:59] Speaker 04:
then you likewise need all that information for purposes of applying prior art.

[00:42:08] Speaker 02:
Your Honor, the difference is that when you're trying to figure out if the claim is anticipated or rendered obvious, it doesn't matter if the boundary of the claim is fuzzy, as long as you know that the prior art lands squarely within it.

[00:42:19] Speaker 02:
And that's exactly what happened in this case, because the prior art that was applied by us in our petition, the Rabinovitch reference,

[00:42:28] Speaker 02:
That reference had what we'll call the pre-specified parameters hardwired into it.

[00:42:33] Speaker 02:
It was an article written by a scientist who said, here's some parameters that should be looked at.

[00:42:40] Speaker 02:
And the article wrote out how it all worked.

[00:42:42] Speaker 02:
So when they were pre-specified, it was frankly irrelevant to that prior art question.

[00:42:47] Speaker 02:
That doesn't mean it's not irrelevant, or I should say that doesn't mean it's not relevant

[00:42:51] Speaker 02:
to an infringement action, where we do have to know the outer boundaries of a claim, particularly when the claim is not being assessed against a academic article, but is being assessed against a functioning system.

[00:43:06] Speaker 02:
At that point, somebody alleging that system of infringement has to do a lot more lifting to determine exactly what the outer boundary of that claim is, and it frankly wasn't necessary at the PTAB.

[00:43:19] Speaker 02:
And I'm well over my time, so unless the court has more questions.

[00:43:22] Speaker 04:
I'm sorry.

[00:43:22] Speaker 04:
This is my fault.

[00:43:24] Speaker 04:
But let's assume for the moment we have to get to the means plus function question.

[00:43:30] Speaker 04:
Could you just speak to that really briefly, just focusing on the second means for detecting?

[00:43:36] Speaker 04:
And why, in your view, there's no corresponding structure in the specification?

[00:43:45] Speaker 02:
Sure.

[00:43:45] Speaker 02:
So, two reasons.

[00:43:46] Speaker 02:
The first, of course, is that even if it is the same structure, for the first means, that structure doesn't perform the function because it only looks for one parameter.

[00:43:56] Speaker 02:
That's the counter-timer argument, counter-clock argument.

[00:44:00] Speaker 02:
But the bigger argument also, Your Honor, is that it can't be the same structure.

[00:44:05] Speaker 02:
It can't be the same structure because there's nothing in the specification that links the structure they're talking about

[00:44:11] Speaker 02:
with parameters between storage means, which is what they have to have.

[00:44:16] Speaker 02:
And I think what Your Honor pointed out is another reason, which is the structure of this claim.

[00:44:21] Speaker 02:
It puts the means for detecting the pre-specified parameters, the first means, at sort of the outer level as one of the main components of the system.

[00:44:29] Speaker 02:
But the second means is a subcomponent of the storage means itself, because it says the data storage means comprising a second means.

[00:44:39] Speaker 02:
So we have a means nested within a structure which is within a system that alternatively includes another means.

[00:44:46] Speaker 02:
If the argument is that one means is doing both things, they need to do a lot more to explain that.

[00:44:53] Speaker 02:
And they've done nothing close to explain that here.

[00:44:56] Speaker 02:
And Your Honor, I would also point the court out, point out to the court that when the district court reached its decision on this, it changed the function of the means.

[00:45:05] Speaker 02:
The only way the District Court was able to read the same means on both functions was by explicitly altering the function without explanation.

[00:45:14] Speaker 02:
And I would point the Court to Appendix page 31.

[00:45:16] Speaker 05:
Mr. Kelly, I think we're about out of time.

[00:45:20] Speaker 05:
Thank you.

[00:45:21] Speaker 02:
Okay, you're welcome.

[00:45:22] Speaker 02:
Thank you, Your Honor.

[00:45:23] Speaker 05:
Mr. DeNovo, we'll give you two minutes.

[00:45:26] Speaker 03:
Thank you, Judge Zak, and I'll try to be brief.

[00:45:29] Speaker 03:
So first to address the criticism or argument that we don't know when the determination occurs because the data is sent on a recurring basis.

[00:45:43] Speaker 03:
This system by its nature is an iterative system, a distributed network.

[00:45:48] Speaker 03:
You're going to be measuring these parameters on an ongoing basis as Council for Appellees read and then for subsequent

[00:45:56] Speaker 03:
data transmissions you will be applying these pre-specified parameters for that transmission because necessarily the dynamics of a distributed network change on a regular basis.

[00:46:07] Speaker 03:
And I would like to talk briefly about the IGT case which Judge Chen raised.

[00:46:13] Speaker 03:
That case, in that case there was actually some confusion caused by an argument made during prosecution that

[00:46:21] Speaker 03:
predefined event was different than predetermined event.

[00:46:25] Speaker 04:
Mr. DeNovo, we're running out of time and I'm particularly concerned about the means plus function limitation.

[00:46:31] Speaker 04:
The function for the second means is detecting pre-specified parameters for data transmissions between said data storage means.

[00:46:41] Speaker 04:
So as I understand it, the parameters here are related to

[00:46:48] Speaker 04:
Doing a data transmission from one data storage means to another data storage means, is that correct?

[00:46:54] Speaker 04:
It is correct, Your Honor.

[00:46:56] Speaker 04:
OK, so.

[00:47:02] Speaker 04:
Well, if I could.

[00:47:03] Speaker 04:
Is that what shifting redundantly stored data in claims 30 also means?

[00:47:10] Speaker 04:
Transmitting data between said data storage means?

[00:47:15] Speaker 03:
I'd have to look more carefully at claim 30 to see if it's, I assume because it's not expressed in means plus function language, it would be somewhat different, but I don't have a ready answer to the differences between that and claim one.

[00:47:32] Speaker 03:
I would simply say again that claim that the data storage means our computer systems is set forth at 10, 4 to 10.

[00:47:39] Speaker 03:
I think we think of data storage means as simply storage devices, but in this computer system and in figure one, what is disclosed is distributed computers performing roles or functions on the distributed network.

[00:47:55] Speaker 05:
Okay.

[00:47:56] Speaker 05:
Mr. Denovo, I think we're out of time.

[00:47:58] Speaker 03:
Thank you.

[00:47:58] Speaker 05:
Thank you.

[00:47:59] Speaker 05:
Thank you, Mr. Kelly.

[00:48:00] Speaker 05:
The case is submitted.

[00:48:01] Speaker 05:
Thank you.