[00:00:00] Speaker 00:
The next case for argument is 21-2093, Finjen versus Eset.

[00:00:14] Speaker 00:
Yes, please, whenever you're ready.

[00:00:15] Speaker 00:
Thank you.

[00:00:16] Speaker 01:
Good morning.

[00:00:17] Speaker 01:
Juanita Brooks on behalf of Finjen.

[00:00:19] Speaker 01:
It's a pleasure to be back before the court and seeing everyone's faces.

[00:00:23] Speaker 01:
This is actually a very simple issue here.

[00:00:27] Speaker 01:
It's a claim construction issue.

[00:00:28] Speaker 01:
Obviously, therefore, it's de novo review.

[00:00:31] Speaker 01:
And the only question for the court is, what is the appropriate construction for the term downloadable that appears in each of the asserted claims in the five patents at issue?

[00:00:42] Speaker 01:
In order to answer that question, we need look no further than this printed patent itself, the 844, for example, contains a definition of downloadable.

[00:00:53] Speaker 01:
We can find it at appendix 178, column 1, line 44.

[00:00:59] Speaker 01:
A downloadable is an executable application program, which is downloaded.

[00:01:04] Speaker 03:
Ms.

[00:01:04] Speaker 03:
Brooks, Councilor Brooks?

[00:01:05] Speaker 03:
Yes, Your Honor.

[00:01:07] Speaker 03:
So I have more of a theoretical question, but I think it bears on the issue here.

[00:01:13] Speaker 03:
When the patent incorporates another patent, the specification of another patent by reference,

[00:01:19] Speaker 03:
To what degree is the incorporating pen limited by that which it brings down by incorporation?

[00:01:27] Speaker 01:
I think this court addressed it very well in the X-2-1 case, and particularly, I believe, in your honor's concurrence.

[00:01:34] Speaker 01:
So when there is an incorporation by reference, particularly when we're talking about, for example, a continuation in part application,

[00:01:42] Speaker 01:
One is not limited.

[00:01:43] Speaker 01:
One adds, in fact, new matter.

[00:01:45] Speaker 01:
That's the essence of what a continuation in part is.

[00:01:48] Speaker 01:
So one adds new matter.

[00:01:50] Speaker 01:
And therefore, if one is incorporating by reference a previous application, one cannot be bound and should not be bound by a more narrow definition in the patent that is being incorporated.

[00:02:02] Speaker 01:
So I think the court's already answered that question in the X2Y case and answered it in our favor.

[00:02:08] Speaker 01:
So what we had here.

[00:02:10] Speaker 00:
was, just to follow up on Judge Raina's question, other categories of information or portions of patents that count and that don't count?

[00:02:20] Speaker 00:
I mean, you limited it to they cannot be bound by a different definition.

[00:02:26] Speaker 00:
So that's one category.

[00:02:28] Speaker 00:
Are there many, many categories, or is that the one?

[00:02:33] Speaker 01:
I think it's case specific, Your Honor, that you would need to look at

[00:02:37] Speaker 01:
And what all the cases talk about is context is king.

[00:02:40] Speaker 01:
You have to look at the context in which that language is being used.

[00:02:45] Speaker 01:
There are some corporations by reference where there is actually a reliance on the previous specification to support written description.

[00:02:55] Speaker 01:
We certainly don't have that here, where we have the definition clearly and unequivocally in the printed patent itself.

[00:03:01] Speaker 00:
Well, before we get into that, there are two different buckets here.

[00:03:04] Speaker 00:
So you're making an argument with respect to the 844 and maybe another one.

[00:03:09] Speaker 00:
But that's where there's, in your view, a specific definition of downloadable.

[00:03:14] Speaker 00:
That is not the case for a number of patents that are also being challenged here.

[00:03:18] Speaker 00:
And there, you're picking between,

[00:03:22] Speaker 00:
to cited patents as reference, not the patent itself.

[00:03:27] Speaker 00:
And that's a different and a much harder argument for you, is it not?

[00:03:31] Speaker 01:
Your Honor, with all due respect, we're not actually doing that.

[00:03:33] Speaker 01:
So as to, Your Honor is correct, as to the 844 and the 780 patent, there is a specific definition which I just read to the court.

[00:03:41] Speaker 01:
Now as to the other patents, the 086, the 755, and the 621, there is not a specific definition within

[00:03:51] Speaker 01:
that I'll call it the printed patent.

[00:03:54] Speaker 01:
But we aren't relying on the incorporation by reference of another patent.

[00:03:59] Speaker 01:
What we are relying on is that those patents go back to the original provisional patent.

[00:04:06] Speaker 01:
And that was where the court made its first mistake.

[00:04:09] Speaker 01:
The court in its claim construction order found that, and it's that appendix two, the court said,

[00:04:17] Speaker 01:
Downloadable initially appears as a defined term in the specification of the 520 patent and its continuation of the 962 patent.

[00:04:28] Speaker 01:
And actually, respectfully, that is not accurate.

[00:04:32] Speaker 01:
It actually appears originally as a defined term in the provisional, the one that started this whole thing, and that is the 639 patent.

[00:04:41] Speaker 01:
We can find that at Appendix 1862.

[00:04:44] Speaker 01:
And in the provisional, the specific definition of downloadable, excuse me.

[00:04:49] Speaker 00:
So your argument with respect to the second bucket we're talking about is you still don't look at any of the reference patents.

[00:04:57] Speaker 00:
You just look at the initial patent.

[00:05:00] Speaker 01:
You can look at the reference, but you can definitely go back to the provisional.

[00:05:05] Speaker 01:
And that is the one, as I said, that started the whole thing.

[00:05:07] Speaker 00:
The court actually... Well, you said you can look at the reference patents.

[00:05:12] Speaker 00:
So if you look at the reference patents in bucket two, you've got both one definition of downloadable that does not include size and the other that includes small.

[00:05:23] Speaker 00:
So how do you know what to pick?

[00:05:26] Speaker 00:
And isn't that question driving you to an indefinite conclusion in any event?

[00:05:30] Speaker 01:
No, Your Honor, it does not.

[00:05:32] Speaker 01:
Here's how you know how to pick.

[00:05:34] Speaker 01:
One, you go back to the original definition, which this court unfortunately, the district court unfortunately thought was the 520, but it's not.

[00:05:41] Speaker 01:
It's the provisional.

[00:05:42] Speaker 01:
And the definition there is a downloadable is an executable application program, which is automatically downloaded from a source computer

[00:05:51] Speaker 01:
and run on the destination computer.

[00:05:54] Speaker 01:
So first we look at that and we don't see anything about the word small in there.

[00:05:59] Speaker 01:
But then we can look at the context of the three patents where we don't have the express definition.

[00:06:04] Speaker 01:
So let's look at the 086 and let's look specifically at Appendix 253, Column 2.

[00:06:12] Speaker 01:
There is described, starting at Line 3, that downloadable information comprising program code

[00:06:20] Speaker 01:
can include distributable components, and they describe what they are.

[00:06:25] Speaker 01:
It can also include, for example, application programs, Trojan horses, multiple compressed programs such as zip or metafiles.

[00:06:35] Speaker 01:
One doesn't even need to be one with skill in the art to know that a zip file is not small.

[00:06:41] Speaker 00:
OK, can I move you back, maybe?

[00:06:44] Speaker 00:
The word is back to the more global questions about reference patents.

[00:06:49] Speaker 00:
It seems to me that your argument rests on the fact, as a given, that there is a contradiction between the definition of downloadable in those patents and in the reference patent.

[00:07:05] Speaker 00:
Why?

[00:07:06] Speaker 00:
What if we were to conclude that there's no contradiction because there's silence on size in one definition and specificity on size in the other?

[00:07:19] Speaker 00:
In other words, the others don't say large.

[00:07:23] Speaker 00:
And so you have to pick between opposites and contradictions.

[00:07:27] Speaker 00:
One is silent, and one gives a size.

[00:07:29] Speaker 00:
Why is that not a different way of looking at it that when you say there's a contradiction, and therefore we go with the other?

[00:07:36] Speaker 01:
And actually, Your Honor, I think ESET's argument is that there's a contradiction, and therefore you have to pick the one that has both small and interpretable.

[00:07:44] Speaker 01:
Our argument is not that.

[00:07:46] Speaker 01:
Our argument is that there is not a contradiction.

[00:07:49] Speaker 01:
In the 780 and the 844, there is this explicit definition.

[00:07:55] Speaker 01:
Now the question is, when we were talking about the other three, where do we find the definition for that?

[00:08:00] Speaker 01:
Once again, we find it in the provision.

[00:08:02] Speaker 00:
There is no specific definition of what the size is, right?

[00:08:05] Speaker 00:
Is there silence in terms of what the size is?

[00:08:08] Speaker 01:
There's not quite silence.

[00:08:10] Speaker 01:
I mean, the definition itself doesn't have the word small.

[00:08:12] Speaker 01:
Therefore, one must assume it is not modified by small.

[00:08:15] Speaker 01:
If it was small, the word small would appear in there.

[00:08:18] Speaker 01:
But we can also look elsewhere in the specification with all three of those other patents that don't have the specific definition.

[00:08:25] Speaker 01:
All three of them talk about downloadables having, for example, zip files.

[00:08:30] Speaker 01:
zip files are not small.

[00:08:32] Speaker 03:
And if they say one doesn't even need to be... But do those pants also incorporate small, like applets and things of that nature?

[00:08:40] Speaker 01:
Correct.

[00:08:40] Speaker 01:
They do both.

[00:08:41] Speaker 01:
They have large or not small, and then they have some that are small, which is applets, which is why the definition is in these provisional, the 780 and the 844 is the correct definition because it doesn't limit it to small.

[00:08:55] Speaker 01:
By limiting it to small, you have read out

[00:08:58] Speaker 01:
various examples that appear throughout these patents.

[00:09:02] Speaker 01:
The only place small appears is in the one-off, the 520 patent, which came off of the same provisional, but was dealing only with applets.

[00:09:12] Speaker 01:
It says so.

[00:09:12] Speaker 01:
It says in the patent, i.e., applets.

[00:09:15] Speaker 01:
So it wasn't talking about zip files, and it wasn't talking about metafiles.

[00:09:19] Speaker 01:
It was only talking about applets, and therefore it was appropriate, I guess,

[00:09:23] Speaker 01:
or the drafters, and we're not here talking about whether that's going to render the 520 invalid or not or indefinite.

[00:09:31] Speaker 01:
They chose to put the word small in there since they were only dealing with applets, whereas in all the other patents.

[00:09:37] Speaker 03:
But the incorporating patent doesn't also say we're dealing both with small and something else.

[00:09:43] Speaker 03:
I mean, I understand your argument that that's the case.

[00:09:48] Speaker 03:
But the pen itself doesn't say that.

[00:09:50] Speaker 03:
That may be the claim to advance in that particular new invention that you're building upon the prior inventions.

[00:10:00] Speaker 03:
But where do I see that?

[00:10:03] Speaker 03:
Where do you hang your hat in that regard?

[00:10:06] Speaker 01:
Well, we hang our hats certainly for the 780 and the 844 in the specific definition.

[00:10:11] Speaker 01:
It doesn't contain the word small.

[00:10:13] Speaker 01:
For the other three, we go back to their going back to the provisional, which does not contain the word small.

[00:10:20] Speaker 01:
And for when we look in context as X to Y case explicitly talked about context is king in this matter, we look at what does the rest of the specification say?

[00:10:31] Speaker 01:
and it talks about downloadables containing things that are not small, like, for example, zip files.

[00:10:37] Speaker 01:
And all three of those, the other, the 086, the 755, and the 621, also do that.

[00:10:44] Speaker 01:
I would also point out, let's look at the 086, for example.

[00:10:48] Speaker 01:
There is a dependent claim.

[00:10:49] Speaker 01:
If we look at appendix 263 and column 21, there is a dependent claim, dependent claim two, that specifically talks about

[00:10:59] Speaker 01:
the computer-based method of claim one, wherein the downloadable includes an applet.

[00:11:04] Speaker 01:
So we know, for claim differentiation purposes, that the downloadable in claim one has got to be bigger than the downloadable in claim two.

[00:11:12] Speaker 01:
And the downloadable in claim two is that small applet that is the subject of the 520 patent.

[00:11:19] Speaker 03:
So there's a general principle that a claim is not construed in the manner which renders a claim invalid.

[00:11:27] Speaker 03:
Is that what's happened here?

[00:11:28] Speaker 01:
Well, that is exactly, unfortunately, what's happened here.

[00:11:30] Speaker 01:
And the sad thing is it never needed to happen.

[00:11:32] Speaker 01:
This all started where ESEC convinced the district court that the district court needed to have the word interpretable explicitly in the definition when, in fact, the district court did not need to have the word interpretable in the definition because executable covers interpretables.

[00:11:51] Speaker 01:
The patent itself gives examples of what are downloadables and includes, for example, JavaScripts, which are interpretables.

[00:11:58] Speaker 01:
The only difference is an interpretable gets interpreted simultaneously with being executed.

[00:12:04] Speaker 01:
There was no reason.

[00:12:05] Speaker 01:
And the irony is the district court got it at the hearing.

[00:12:08] Speaker 01:
At Appendix 23606, the district court said that the district court found, as far as the 086, 844, and 780, that the definition

[00:12:18] Speaker 01:
The definition that appears in there includes examples that are interpretable and therefore within that definition, being executable, is interpretable.

[00:12:27] Speaker 01:
So there was no reason to go back and find interpretable.

[00:12:31] Speaker 01:
And the reason we're here is exactly that.

[00:12:33] Speaker 01:
We had valid battle-tested claims that had been through multiple proceedings, both at the PTAB

[00:12:39] Speaker 01:
the PTO end in court, and then all of a sudden all five of them are invalid as being indefinite because of this incorporation of the word small when there was never any need to, because there was never any need to bring an interpretable.

[00:12:52] Speaker 01:
But before I read it.

[00:12:53] Speaker 03:
So you would agree that the incorporation of the small within the definition, at the end of the day, invalidates the pen due to indefiniteness?

[00:13:06] Speaker 01:
Well, I would agree that that's what the district court found.

[00:13:08] Speaker 01:
I believe the district court was wrong on the record.

[00:13:12] Speaker 01:
to grant summary judgment of indefiniteness.

[00:13:14] Speaker 03:
So you're arguing that use of the word small within the construction invalidates the patent, invalidates that claim?

[00:13:22] Speaker 01:
According to the district court, yes, Your Honor.

[00:13:24] Speaker 01:
That is what the district court found.

[00:13:26] Speaker 01:
We aren't conceding that.

[00:13:28] Speaker 00:
If the court... You're disputing that.

[00:13:29] Speaker 00:
I mean, I understood that you said even if you find that small is in the patent, small is not indefinite.

[00:13:37] Speaker 01:
Does that make you argue?

[00:13:37] Speaker 01:
Not based on the record.

[00:13:39] Speaker 01:
What the district court did on the record, and this is the separate

[00:13:41] Speaker 01:
part of the second part of the argument is the district court shifted the burden to Finjen to prove that Small did not render the claim indefinite.

[00:13:49] Speaker 01:
So we very much dispute that it was appropriate to grant summary judgment against Finjen and find indefinite on the record that was based on a case that mistried after one because of COVID after one expert testified.

[00:14:01] Speaker 01:
So but the irony is as I say we never needed to get here.

[00:14:05] Speaker 01:
The definition is clear.

[00:14:07] Speaker 01:
We don't need to look for interpretable.

[00:14:09] Speaker 01:
Even if we did need to look for interpretable, we certainly don't have to have small come along.

[00:14:14] Speaker 01:
There's nothing about that.

[00:14:15] Speaker 01:
And I would just like to point out one other thing, which is the second mistake that happened here, which is the use of the interval licensing case that ESET argues stands for the proposition that if you take a definition

[00:14:29] Speaker 01:
that is a lexicography definition, you can't alter it.

[00:14:32] Speaker 01:
Actually, interval licensing stands for the exact opposite of that.

[00:14:36] Speaker 01:
You can alter it if necessary for clarity purposes.

[00:14:39] Speaker 01:
So with that, Your Honors, unless the Court has any further questions, I'll reserve my 46 seconds for rebuttal.

[00:14:44] Speaker 01:
Thank you.

[00:14:56] Speaker 04:
Good morning, Your Honors.

[00:14:57] Speaker 04:
I'm Nick Pizzano from Evershed Sutherland with me today at council table, Scott Penner.

[00:15:04] Speaker 04:
Your Honor, I've been living with this case for seven years, and I just heard some things that I didn't hear during the entirety of the case.

[00:15:11] Speaker 04:
But let me start with just a, I'm sure you have questions.

[00:15:15] Speaker 04:
Let me start with a couple of observations.

[00:15:17] Speaker 02:
Can I start with a question?

[00:15:20] Speaker 02:
Explain the reference to the zip and metafiles

[00:15:25] Speaker 02:
and the 086.

[00:15:29] Speaker 04:
Well, that's a very good question, Your Honor, because no one ever mentioned that.

[00:15:33] Speaker 04:
That's exactly what I was talking about.

[00:15:34] Speaker 02:
It's in the blue brief.

[00:15:36] Speaker 02:
It's in the blue brief.

[00:15:37] Speaker 04:
No, I understand that, Your Honor.

[00:15:40] Speaker 04:
Well, that's the first time it's there.

[00:15:42] Speaker 04:
May I?

[00:15:43] Speaker 04:
So the whole question about zip files is that's other than the other.

[00:15:49] Speaker 02:
I'm sorry.

[00:15:52] Speaker 02:
Do I take it your position is that

[00:15:54] Speaker 02:
Reliance on that piece of the spec was not made by Finjan in the district court.

[00:16:01] Speaker 02:
That's correct, Your Honor.

[00:16:02] Speaker 04:
As a matter of fact, that was going to be my point.

[00:16:05] Speaker 04:
When Finjan filed its opening brief, they focused on excising the word small because they said that related to athletes.

[00:16:13] Speaker 04:
When we got around to the reply brief, however, we now learn that

[00:16:19] Speaker 04:
executable, or rather, interpretable, is just a species of executable.

[00:16:23] Speaker 04:
There's no testimony about that in the entire trial record.

[00:16:28] Speaker 04:
And there was no suggestion to that to the district court.

[00:16:31] Speaker 02:
That's entirely to argument.

[00:16:32] Speaker 02:
Right.

[00:16:33] Speaker 02:
So let me just say, I must say, I don't find the heavy emphasis on the need to have interpretables to be particularly, to advance the ball a lot.

[00:16:45] Speaker 02:
I think of this case in the following way.

[00:16:48] Speaker 02:
Every single one of the patents in front of us has, by the law of incorporation by reference, the 520 definition right in there.

[00:16:56] Speaker 02:
What's right in there outranks something that is in the provisional but not in the spec itself.

[00:17:05] Speaker 02:
The question is, it's perfectly permissible for something in the later specs to have overridden language that is in there, and the only question is,

[00:17:14] Speaker 02:
Is there language in these five patents that overrides the small language that, by law, is in there?

[00:17:21] Speaker 02:
The reason I focus on this zip business is that that's the first thing that I've heard that sounds like it might be an override.

[00:17:31] Speaker 04:
OK.

[00:17:31] Speaker 04:
Your Honor?

[00:17:32] Speaker 04:
Is that clear what I just said?

[00:17:35] Speaker 04:
I hope so, and hopefully my answer will respond to your question.

[00:17:39] Speaker 04:
Is there any override?

[00:17:40] Speaker 04:
The answer is no.

[00:17:42] Speaker 04:
And if you look at the cases where there was an override,

[00:17:45] Speaker 04:
There was a broad claim.

[00:17:46] Speaker 04:
It was narrowed in the continuation.

[00:17:48] Speaker 04:
The subsequent case narrowed the scope.

[00:17:51] Speaker 02:
But you could have it going the other way, too.

[00:17:53] Speaker 02:
You could say, we now have sense number one drawn in is narrow.

[00:18:00] Speaker 02:
We now have additional material.

[00:18:02] Speaker 02:
And we are now going to adopt a broader definition.

[00:18:05] Speaker 02:
The best examples of that would be, here are some examples that we're now putting in the spec that wouldn't fit the narrower definition.

[00:18:15] Speaker 02:
That's why my ears really perked up when I heard this zip thing.

[00:18:19] Speaker 04:
Yeah.

[00:18:20] Speaker 04:
I think, Your Honor, in the 086 that's a reference to remote operating code, that is not actually a reference to downloadable.

[00:18:28] Speaker 04:
There's also a reference to downloadable information, which is not a downloadable.

[00:18:32] Speaker 04:
So in the specification, and there's only two that define downloadable.

[00:18:37] Speaker 04:
That's the 780 and the 844.

[00:18:39] Speaker 04:
And they say the downloadable is executable.

[00:18:43] Speaker 04:
Now the problem is,

[00:18:44] Speaker 04:
There are then explanations or examples, excuse me.

[00:18:49] Speaker 04:
There's an example that says EG, a downloadable, and that includes scripts.

[00:18:53] Speaker 04:
And the fight during the district court was, well, is a downloadable and executable, or does it include an interpretable?

[00:19:00] Speaker 04:
And the district court, who's a

[00:19:03] Speaker 04:
you know, a former patent litigator with hundreds of patent trials under her belt basically looked through all of the incorporated references, and that's Appendix 13, that chart that she had.

[00:19:17] Speaker 04:
And she says the only way that I can make sense of

[00:19:21] Speaker 04:
these claims of the specification, the examples, the intrinsic evidence, and the extrinsic evidence, the under-budded extrinsic evidence by Dr. Stafford, who testified about what an interpretable is and how it's different than executable.

[00:19:35] Speaker 04:
It is important, Your Honor.

[00:19:37] Speaker 04:
That is an important distinction.

[00:19:38] Speaker 04:
Because the district court said the only way I can arrive at that is if I use the incorporated definition from the 520.

[00:19:45] Speaker 04:
So there was no override.

[00:19:49] Speaker 04:
the language that says a downloadable is an executable is not an override.

[00:19:54] Speaker 04:
And it's not an override for the same reason it was not an override next to y attenuators.

[00:19:59] Speaker 02:
Because in that case, the... But for what it's worth, I do not regard the sentence that appears in the two, a downloadable is an executable as a definition that is somehow inconsistent with the other words that are by law in the same thing.

[00:20:16] Speaker 02:
If I say

[00:20:17] Speaker 02:
uh... downloadable is a small thing in the next and says downloadable is a thing right the intersection is what governs which is a small thing i agree you are that's why i'm looking at this material that has been at least uh... highlighted uh... in a way that uh... i hadn't noticed before about this reference to the uh... that this is it's it's it's like what you're on it but i think i'd i would love to hear your explanation of of this again

[00:20:48] Speaker 04:
Let me, the 086 describes remote operating code.

[00:20:52] Speaker 04:
That is not a downloadable.

[00:20:54] Speaker 04:
That example, I believe, I don't have that in front of me.

[00:20:57] Speaker 04:
My colleague printed it, but it was too small for my old eyes to see.

[00:21:01] Speaker 04:
But I believe the sentence says, remote operating code, and then it gives examples.

[00:21:07] Speaker 04:
And the zip files is in that example.

[00:21:10] Speaker 04:
The problem was, back when these

[00:21:13] Speaker 02:
Inventions were created back in 1996.

[00:21:15] Speaker 02:
I'm sorry to speak.

[00:21:16] Speaker 02:
Does it matter?

[00:21:17] Speaker 02:
It says in effect downloadable information information can include for example application programs Trojan horses multiple

[00:21:27] Speaker 02:
compressed programs such as zip or metafiles, among others.

[00:21:30] Speaker 04:
Right, Your Honor.

[00:21:31] Speaker 04:
And as the district court pointed out, that is downloadable with a small d, and it's downloadable information.

[00:21:36] Speaker 04:
That is not our claim term, which is downloadable.

[00:21:38] Speaker 04:
It's not a small d. OK, I apologize.

[00:21:41] Speaker 04:
Again, I don't have it in front of me.

[00:21:42] Speaker 04:
But it's the information.

[00:21:44] Speaker 04:
It's not a downloadable.

[00:21:46] Speaker 04:
So there was no discussion of the remote operating code.

[00:21:49] Speaker 04:
This section that we are discussing now never came up in front of the district court.

[00:21:54] Speaker 04:
District court focused on the 780.

[00:21:57] Speaker 04:
folks on 844.

[00:21:59] Speaker 04:
And then she went to the other two, the 621 and the 755 patents.

[00:22:04] Speaker 04:
And in those patents, the only explanation for the claim terms in those patents comes from the 962 patent.

[00:22:15] Speaker 04:
And the 962 patent is a descendant of the 520 patent.

[00:22:20] Speaker 04:
It's identical.

[00:22:22] Speaker 04:
And so during prosecution of those patents, let me see if I can find

[00:22:26] Speaker 04:
the uh... the citation tort okay so as if you look at the appendix uh... ten sixty one ten sixty two uh... appendix ten seventy three ten seventy six those are the discussion in the six twenty one and the seven five five prosecution histories where Fingen was asked tell me where the claim support is for these claim limitations and Fingen said well they're in the nine six two

[00:22:52] Speaker 04:
And so for those claims or for those patents, the only support is provided or the support for the disclosed inventions is in the 520-962 patent.

[00:23:05] Speaker 04:
And why would you then define downloadable any way otherwise than as is described in the 520-962 patent, which is a small executable or interpretable application program?

[00:23:17] Speaker 04:
So for those two, that's very clear.

[00:23:20] Speaker 04:
For the 086 patent,

[00:23:22] Speaker 04:
There is no definition of downloadable.

[00:23:25] Speaker 04:
You've pointed to downloadable information.

[00:23:27] Speaker 04:
That patent does not say a downloadable is an executable application program, as it says for the 780 and the 844.

[00:23:36] Speaker 04:
There's no definition in the 086, and no one focused on the language that counsel just pointed at.

[00:23:43] Speaker 02:
There's no so-called definition expressly.

[00:23:46] Speaker 02:
There is one there, namely,

[00:23:48] Speaker 02:
the entirety of the 962, which is incorporated by reference.

[00:23:52] Speaker 02:
That's right, Your Honor.

[00:23:53] Speaker 02:
It's just as if it was there.

[00:23:55] Speaker 04:
That's right.

[00:23:55] Speaker 04:
Now, if I might, Your Honor, we're running out of time.

[00:24:01] Speaker 04:
The question about small, it was not the district court's position that just because it included the word small, it was automatically indefinite.

[00:24:10] Speaker 04:
That's not what happened.

[00:24:11] Speaker 04:
What happened was we file an original motion of summary objection.

[00:24:15] Speaker 04:
The judge said, I want to hear more from the experts about what is small.

[00:24:21] Speaker 04:
And so during expert discovery, we asked each of Finjen's six experts, well, how big is small?

[00:24:27] Speaker 04:
Because the court decided that she had two choices.

[00:24:30] Speaker 04:
She could either pick the definition from the 780 844 patent, that a downloadable is an executable, or she could pick the definition from the 520 patent, whereas a downloadable is a small.

[00:24:42] Speaker 04:
executable or interpretable application program because there was an agreement between the the The experts that downloadable has no ordinary meaning so she felt as she should she's constrained to one of two meanings that were provided by the by the inventors and During the expert discovery we went around and asked each of Finch's expert well how big is small keeping in mind that back in the time this invention was created in 1996 and

[00:25:12] Speaker 04:
the size of the hard drive was two gigabytes.

[00:25:14] Speaker 04:
So you're not going to have a very large, everything was small back then, basically.

[00:25:20] Speaker 04:
And so that term, which is in the patent, it ought to be credited.

[00:25:26] Speaker 04:
And I think the process control case says, if it's time dependent, it doesn't change as the patent expands.

[00:25:39] Speaker 04:
this reference to zip files that later with respect to downloadable information.

[00:25:43] Speaker 03:
There's a change in provisional applications based on that panel.

[00:25:49] Speaker 03:
If at a certain point in time small meant something because the technology only gave you so much space.

[00:25:55] Speaker 03:
Yes.

[00:25:56] Speaker 03:
And later you're adding on to that particular invention and you're advancing.

[00:26:02] Speaker 02:
Okay.

[00:26:03] Speaker 03:
And you get to a point where now you don't just have a

[00:26:09] Speaker 03:
you know, a 5.2 floppy drive disc, now you have a zip drive.

[00:26:16] Speaker 04:
You're right, your honor.

[00:26:17] Speaker 04:
I agree with you.

[00:26:18] Speaker 04:
And in fact, the district court judge said, I'm not going to say that the use of the term small inherently makes it indefinite.

[00:26:28] Speaker 04:
I want to hear some testimony.

[00:26:30] Speaker 04:
So we took the testimony of each of Finch's experts, and we found out that small, according to them, was anywhere from a couple of

[00:26:38] Speaker 04:
kilobytes, to a couple of megabytes, to a couple of gigabytes.

[00:26:43] Speaker 04:
Then we got to our aborted trial.

[00:26:46] Speaker 04:
Dr. Cole testified, who was the infringement expert, I believe for the 844 pen, and we asked him, Dr. Cole, how big is small?

[00:26:55] Speaker 04:
And Dr. Cole said, well, small has nothing to do with size.

[00:26:59] Speaker 04:
Small is something that's now non-installable.

[00:27:03] Speaker 04:
And that came as a shock to me.

[00:27:05] Speaker 04:
It came as a shock to the district court.

[00:27:07] Speaker 02:
And no one had ever espoused that few before.

[00:27:12] Speaker 02:
I mean, did you say is installable or non-installable?

[00:27:18] Speaker 04:
So the file can be very large.

[00:27:23] Speaker 04:
And Dr. Cole testified it could be two terabytes, which is like the Library of Congress.

[00:27:29] Speaker 04:
It could be that large.

[00:27:30] Speaker 04:
But if it's not installed, then it is a small downloadable.

[00:27:36] Speaker 04:
And that information on top of, I mean, so just to back up, during experts discovery, we had the range of the size of small from anywhere from a couple of megabytes to a couple of gigabytes at a time, again, when hard drives are very small.

[00:27:53] Speaker 04:
By the time we got the trial, it could go to two terabytes.

[00:27:57] Speaker 04:
And then the ultimate definition was it had nothing to do with actual size.

[00:28:04] Speaker 04:
It was not related to size.

[00:28:06] Speaker 04:
At that point, the district court judge, taking into account that Dr. Cole's testimony was done, and unless someone else came in with yet a different explanation, she had heard basically quite a range and reasonably concluded that a person of still any art could not have concluded with any reasonable certainty, as is required, what is small.

[00:28:28] Speaker 04:
Now, just one last point, Your Honor.

[00:28:30] Speaker 04:
On the executable and interpretable, I think under Tevin, the court did do

[00:28:35] Speaker 04:
a subsidiary fact-finding based on Dr. Spathard's unributed testimony that interoperable and executable are different.

[00:28:43] Speaker 04:
Finjen never submitted anything other than a comment by Dr. Medvedevich saying, I disagree.

[00:28:51] Speaker 04:
But he never explained why.

[00:28:52] Speaker 04:
He never cited any extrinsic evidence.

[00:28:55] Speaker 03:
And so I found it curious that the district court would find on the one hand

[00:29:02] Speaker 03:
And when all this process is going on and there's kind of defined small and you have expert testimony going all over the place, and really nobody can latch on with a good definition, right?

[00:29:15] Speaker 03:
Why didn't the district court at that point say, wait a minute, if all these experts don't know what small is, why did I include it in my claim construction?

[00:29:24] Speaker 04:
well you're on it again because i think she felt as though she had to because downloadable had no ordinary meaning it had no meaning and so she had two choices she picks the one out of five twenty which applies to everything invalidated no she didn't

[00:29:41] Speaker 04:
If they had been a consistent, for example, if they had testified that small is a couple of megabytes and everyone had consistently testified that, well, they might have lost something on the back end on infringement, but at least they would have been able, I mean, the judge would not have found the term indefinite because it wasn't the fact that it was intrinsically indefinite, it was the fact that no one could give her an answer when she asked, how big is small?

[00:30:05] Speaker 04:
It was entirely all over the range and there was no way to tell, and that's what really dipped the balance for her.

[00:30:10] Speaker 00:
Can I just ask a question?

[00:30:11] Speaker 00:
I can ask Miss Brooks the same thing.

[00:30:13] Speaker 00:
Is there such a thing as a small zip file?

[00:30:17] Speaker 04:
Certainly, Your Honor.

[00:30:18] Speaker 04:
I mean, zip files could be any size at all.

[00:30:20] Speaker 04:
And there was no discussion in the prosecution history as to what was big or what was small.

[00:30:26] Speaker 04:
That just simply isn't fair.

[00:30:29] Speaker 04:
I mean, thank you, Your Honor.

[00:30:41] Speaker 01:
First, I would like to address the statement that Dr. Stafford's opinion was unrebutted.

[00:30:55] Speaker 01:
It was very much rebutted.

[00:30:57] Speaker 01:
Appendix 2115.

[00:30:59] Speaker 01:
Dr. Medvedevich submitted a declaration specifically saying he disagreed with Dr. Spafford and said specifically why.

[00:31:06] Speaker 01:
He said a person of ordinary skill in the art would understand that Java, JavaScript, ActiveX, and Visual Basic files are executable application programs that can execute other software components.

[00:31:19] Speaker 01:
Those are the very interpretables that Dr. Spafford said were not executable, as Dr. Medvedevich said otherwise.

[00:31:26] Speaker 01:
Going next to this argument about zip files is the first that counsel's hearing of it.

[00:31:32] Speaker 01:
On page 36 of our blue brief, we make this exact argument.

[00:31:36] Speaker 02:
What about in the district court?

[00:31:38] Speaker 01:
In the district court, we made the exact argument that small would override the intentions of the inventors in the five patents at issue.

[00:31:46] Speaker 02:
Did you cite this material?

[00:31:48] Speaker 01:
I don't know if we cited this exact.

[00:31:50] Speaker 01:
We cited the specification as a whole.

[00:31:52] Speaker 01:
I wasn't counseled below, so I'm not sure if this exact one was cited.

[00:31:56] Speaker 01:
But I do know that our blue brief, it was cited at page 36.

[00:31:59] Speaker 01:
We specifically talked about multiple compressed programs, zip files, and so on.

[00:32:04] Speaker 01:
And by the way, that same language also appears in the 755 appendix 327, lines 40 and 41, and again, also appears

[00:32:16] Speaker 01:
in the 621, Appendix 290.

[00:32:19] Speaker 00:
Again... But in your brief, just to be clear, on page 36, you're just talking about the 086 patent.

[00:32:24] Speaker 01:
We are, Your Honor, but it also, that same exact language appears in the other two.

[00:32:28] Speaker 01:
So the same argument would in fact apply.

[00:32:30] Speaker 00:
And are there such things as small zip files?

[00:32:34] Speaker 01:
I'm not aware of any.

[00:32:35] Speaker 01:
I have to admit I'm not one of skill in the art, but certainly the multiple compressed files that are also talked about in that very same language

[00:32:43] Speaker 01:
as we say, shows that we're not focused.

[00:32:46] Speaker 01:
Unlike the 520, these five patents are not focused on applets, which are per se small.

[00:32:52] Speaker 01:
And I would also point out that the district court originally thought and believed that interpretables were encompassed in executable.

[00:33:01] Speaker 01:
So Dr. Spafford at that point was an outlier.

[00:33:04] Speaker 01:
There is no explanation, sadly, in the court's claim construction order, which starts at appendix two, for why the court

[00:33:11] Speaker 01:
decided to bring in the 520.

[00:33:14] Speaker 01:
And in bringing in the 520, even if it was to find interpretables, which the court didn't need to do because it was already covered by executables, there's no explanation in the court's claim construction order or anywhere in ESET's brief as to why Small had to come along with it, other than to argue that lexicography says you can't take part of a definition when, in fact, the case they cite stands for the exact proposition

[00:33:40] Speaker 01:
that you do, in fact, and can, in fact, take part.

[00:33:43] Speaker 01:
So the court brought in what the court then found, automatically infected all the patents, and rendered them all indefinite.

[00:33:50] Speaker 01:
Thank you very much.

[00:33:52] Speaker 00:
Thank you.

[00:33:52] Speaker 00:
We thank both sides for the cases submitted.

[00:33:54] Speaker 00:
That concludes our proceeding for this morning.