[00:00:00] Speaker 06:
Our final case for argument is 21-2111, Innovation Sciences versus Amazon.

[00:00:05] Speaker 06:
Mr. Jackson, please proceed.

[00:00:09] Speaker 01:
Thank you, Your Honor.

[00:00:10] Speaker 01:
And please, the Court.

[00:00:12] Speaker ?:
Judge Mazant and the District Court made a lot of rulings against us that resulted in this appeal.

[00:00:18] Speaker ?:
And in each case, those rulings were erroneous.

[00:00:23] Speaker ?:
With respect to the written description issue, it was

[00:00:27] Speaker ?:
part of the alternative support for the in validity decision.

[00:00:31] Speaker 01:
Amazon stipulated to the priority date, and that should have ended the issue.

[00:00:35] Speaker 01:
But that issue should never have gone to the jury.

[00:00:37] Speaker 01:
In addition, the jury instruction itself was wrong.

[00:00:40] Speaker 06:
Do you believe Amazon stipulation of the priority date was a stipulation that written description requirement is met?

[00:00:49] Speaker 06:
Yes, I do, Your Honor.

[00:00:50] Speaker 06:
Even though they clearly were disputing it throughout?

[00:00:55] Speaker 01:
In the final pretrial order, that's

[00:00:57] Speaker 01:
You know, shortly, obviously, before trial, they stipulated that fact.

[00:01:01] Speaker 01:
It's in the stipulations of fact section.

[00:01:03] Speaker 06:
Yes, I see the stipulation of fact section, but they were also continuing to maintain their written description defense.

[00:01:12] Speaker 01:
Yes, and under the stipulation, they were necessary to also, at the same time, agree that the specifications supported the claims.

[00:01:21] Speaker 06:
No, they agreed that that was the priority date.

[00:01:24] Speaker 06:
They didn't agree that the specification met all the requirements for that priority date.

[00:01:31] Speaker 06:
Those are two different points.

[00:01:35] Speaker 01:
Your Honor, I respectfully read the case law differently.

[00:01:39] Speaker 01:
In particular, the Riefen versus Microsoft case, which I think

[00:01:43] Speaker 01:
lays the statutory scheme out in great detail.

[00:01:45] Speaker 06:
Yes, but that wasn't a case involving a stipulation where here it's clear that while they were stipulating that this is the priority date, they were still continuing unequivocally throughout the process to maintain their written description defense.

[00:01:58] Speaker 06:
So it's a matter for us to understand what it was precisely they were stipulating to.

[00:02:03] Speaker 06:
So they were clearly stipulating to this is the priority date, i.e.

[00:02:07] Speaker 06:
this is the effective date that you are claiming you're entitled to for your claims.

[00:02:11] Speaker 06:
But they were clearly, by virtue of everything else in the litigation, continuing to dispute whether there was, in fact, written description support for that date in this specification.

[00:02:21] Speaker 06:
So while theoretically, I understand your point, it seems to us in interpreting the documents here, it's clear that they were not acquiescing and giving up their defense in that one throwaway stipulation.

[00:02:36] Speaker 01:
If I could make one point, your Honor, I think to say, to use the phrase effective filing date, as we laid out in our briefs, necessarily means that you're, that's the date on which the claims are first supported by the specifications.

[00:02:48] Speaker 01:
So those two ideas are linked.

[00:02:52] Speaker 01:
They're essentially one and the same.

[00:02:53] Speaker 06:
When you make a determination, for example- But Amazon made it clear that was not what they were attempting.

[00:02:57] Speaker 06:
Why don't, you have about a thousand arguments.

[00:02:59] Speaker 06:
You have to win on all of them in order to get a reversal.

[00:03:02] Speaker 06:
You're not gonna win on this one.

[00:03:03] Speaker 06:
So move on to the next one.

[00:03:04] Speaker 04:
OK, can I get you to the next one and stay on written description for a moment?

[00:03:08] Speaker 04:
Usually we see priority date disputes, and they involve obviousness and whether or not a piece of prior art covers it or doesn't cover it.

[00:03:19] Speaker 04:
This doesn't affect the obviousness determination.

[00:03:22] Speaker 04:
So was the fight over priority date dealing with damages the damages question?

[00:03:29] Speaker 04:
Why was this in dispute?

[00:03:34] Speaker 01:
It did not have to do with damages.

[00:03:36] Speaker 01:
And to be honest with you, up until the final pretrial conference, we did not think it was an issue that was going to be litigated.

[00:03:44] Speaker 01:
I know that they, to Judge Moore's point, that they had put that in their interrogatory responses.

[00:03:50] Speaker 01:
But it was never actually picked up on and litigated.

[00:03:53] Speaker 01:
And when we got to the final pretrial conference, we believed that this issue was going away.

[00:03:58] Speaker 01:
And it didn't.

[00:04:01] Speaker 04:
So what is the issue?

[00:04:04] Speaker 04:
Is it your view that even if, let's assume, the priority date was the date that you stipulated to, and the other side, that the written description obligation that exists, that you just should look at the specification for what?

[00:04:21] Speaker 04:
Just the 2017 claims?

[00:04:23] Speaker 04:
And not anything that preceded that?

[00:04:26] Speaker 04:
Or what date do you pick in terms of what specification we rely on for written description support?

[00:04:33] Speaker 01:
So, Your Honor, excellent question.

[00:04:36] Speaker 01:
Under Ibrahimovic versus Microsoft in other cases, you look at the specification of the patents and suit themselves to determine whether the written description requirement in section 112 satisfy or not.

[00:04:48] Speaker 04:
So we're just looking at the 2017 specification, that's it?

[00:04:52] Speaker 04:
There's obviously a lot going on in this case.

[00:04:57] Speaker 04:
And the record seems pretty fulsome.

[00:05:00] Speaker 04:
But I read your expert's testimony that you seem to rely on here.

[00:05:05] Speaker 04:
And it came up with the date of May 2007.

[00:05:09] Speaker 04:
And that's what your expert was talking about, not the 2017 date.

[00:05:13] Speaker 01:
Ultimately, Your Honor, the

[00:05:18] Speaker 01:
Ultimately, it doesn't matter in this case, because Amazon didn't rely on any intervening prior art.

[00:05:24] Speaker 01:
And therefore, whether we're allowed to rely on 35 USC 120 to claim an earlier date or not does not affect the validity of the claims, because there was no intervening prior art.

[00:05:37] Speaker 01:
So I agree that what happens, first of all, I think it was August 2006 and February 2007 dates, which show up in the jury instruction,

[00:05:47] Speaker 01:
That was part of our disclosure of intentions at the beginning of the case.

[00:05:53] Speaker 01:
And when we went to trial, the decision was made, look, there isn't any intervening priority anyway.

[00:06:01] Speaker 01:
Amsoil never relied on any.

[00:06:03] Speaker 04:
Yeah, but in order to resolve the written description dispute, you have to figure out what patent you're looking at so you can identify the correct specification, which has to provide support for written description.

[00:06:16] Speaker 04:
Right?

[00:06:17] Speaker 04:
That's right.

[00:06:18] Speaker 04:
And so your position is that it's 2017, which is the date of this patent?

[00:06:24] Speaker 04:
What is your view of what the date is?

[00:06:27] Speaker 01:
The date is the actual filing date of each of the three patents.

[00:06:32] Speaker 01:
And those are common.

[00:06:34] Speaker 01:
They share a common specification.

[00:06:36] Speaker 01:
One is a continuation of the other and so forth.

[00:06:39] Speaker 01:
And that specification, just for clarity, I don't think it's an issue, but I just want to be clear.

[00:06:44] Speaker 01:
That specification was originally filed in 2013.

[00:06:47] Speaker 01:
There were continuations after 2013.

[00:06:49] Speaker 04:
OK, I'm mistaken in my recollection of what the record said, because I thought your expert, when he was testifying on support and specification, was relying on May 2007.

[00:07:00] Speaker 04:
Am I just mistaken about my recollection of the record here?

[00:07:04] Speaker 01:
No, Your Honor, you're correct.

[00:07:05] Speaker 01:
In responding to their contention that there was no support

[00:07:10] Speaker 01:
back in the, I think it was the May, I'm sorry, August 2006 and the February 2007 specifications, he was essentially saying, well clearly there is support in the May 2007 disclosure.

[00:07:25] Speaker 01:
That was his position.

[00:07:27] Speaker 04:
Following the Chief's suggestion, can we move on to the other issue, question, which is you didn't object to the jury instruction, right?

[00:07:35] Speaker 04:
You didn't object to the burden shifting issue that you suggest here on appeal when you objected to the jury instruction, is that correct?

[00:07:48] Speaker 01:
We objected to the jury instruction in its totality because it's originally written, it was friendly circular in that

[00:07:55] Speaker 04:
But did you lodge a specific objection to the jury instruction that involved the burden shifting question that you know what I'm talking about, right?

[00:08:06] Speaker 04:
The part of the jury instruction that suggests Hamilton's, what Amazon was arguing, was that it's your burden and not his.

[00:08:15] Speaker 04:
Did you object to that?

[00:08:17] Speaker 01:
I don't know that we objected in the context of the 112.

[00:08:19] Speaker 01:
I'm sorry, the written description instruction, but clearly we have it.

[00:08:23] Speaker 01:
Excuse me.

[00:08:25] Speaker ?:
We have other jury instructions that talk about the burden of proof and who bore the burden of proof.

[00:08:30] Speaker ?:
And that was clearly given to the jury as part of the court's charge.

[00:08:35] Speaker 04:
So on appeal, you're saying that on appeal here, your challenge to the jury instruction with respect to written description does not include the portion of the instruction that speaks to who has to show what by clear and convincing evidence?

[00:08:54] Speaker 01:
Well, specifically, Your Honor, no.

[00:08:56] Speaker 01:
But I think that that's endemic within the scope of the jury instructions.

[00:09:02] Speaker 01:
As we were talking about with respect to the stipulation, I think you have to look at the totality, obviously, of the circumstances.

[00:09:08] Speaker 01:
And we have clear jury instructions as to import the burden of proof.

[00:09:12] Speaker 01:
And obviously, they're fine with that because they put the burden on Amazon.

[00:09:17] Speaker 01:
This instruction

[00:09:18] Speaker 01:
It doesn't explicitly say that we bear the burden, but it talks about how the specification had to show, like, clearly convincing evidence that it was supported by the earlier applications, which the court then erroneously included dates for and said it was the August 2006 and February 2007 files, which is problematic for a number of reasons that I can go into.

[00:09:48] Speaker 06:
There's also an anticipation and obviousness arguments.

[00:09:51] Speaker 06:
If we were to find there's substantial evidence to support jury findings on either anticipation or obviousness, would that sort of moot any need to reach any of this written description material?

[00:10:05] Speaker 01:
Yes, Your Honor.

[00:10:06] Speaker 01:
I think it would, because either one of them obviously supports the jury's verdict of indolence.

[00:10:13] Speaker 06:
So do you want to address any of those?

[00:10:15] Speaker 01:
Yes.

[00:10:16] Speaker 01:
Yes, I didn't know if you had a follow-up.

[00:10:18] Speaker 01:
I apologize.

[00:10:19] Speaker 01:
So with respect to the prior art, or alleged prior art, I should say, they relied on a system called the Howell system that was created in the lawyers' offices in 2019.

[00:10:29] Speaker 01:
The lawyers specified what pieces should be assembled.

[00:10:34] Speaker 01:
They've worked with Mr. Shriver, who had a company back in the early 2000s that sold the Howell software, no systems but software.

[00:10:42] Speaker 01:
And accordingly, he assembled that system at the lawyer's instructions.

[00:10:47] Speaker 01:
In fact, at one point, he had to fly out to California from the East Coast to help the lawyers put it together because they and their experts couldn't actually make it work.

[00:10:57] Speaker ?:
That's the supposed system that was the prior art that they relied on, that Amazon's extra relied upon.

[00:11:04] Speaker ?:
But there's no evidence that that system, as constructed,

[00:11:08] Speaker 01:
uh... ever existed in the prior art Mr. Shriver never said that he said that his company sold software and that they did not sell systems in fact that uh... they only sold software to customers individuals with assembly and he said every system was unique as a snowflake to use his phrase and that he did not know in August 2006 whether any whether such a system would have existed or not the other uh...

[00:11:34] Speaker ?:
I'll put evidence in quotation marks.

[00:11:36] Speaker 01:
The other evidence that Amazon relied upon were these demonstrative videos showing some system, nobody knows what that system is, in operation in the, I think it was very early 2000s.

[00:11:49] Speaker 01:
One of them famously was referred to as the Open Video Trial.

[00:11:53] Speaker 01:
But there was never any testimony from anyone, including Mr. Shriver, about how those systems were constructed.

[00:11:59] Speaker ?:
We don't know, primarily it appears the systems were wire systems, for example.

[00:12:03] Speaker ?:
That's a major distinction between what's in the claims.

[00:12:06] Speaker ?:
But there is no discussion of how the system was constructed and how it operated.

[00:12:11] Speaker 01:
So there was no prior art that they actually put forward that a jury could have found supported the verdict of invalidity based on prior art.

[00:12:22] Speaker 01:
And if I could briefly, Your Honor, with respect to infringement, all four of Amazon's non-infringement arguments that are relying on here are claim instruction arguments that Judge Mazan

[00:12:33] Speaker 01:
was technically let go to the jury.

[00:12:36] Speaker 01:
The idea of what constituted a hub, for example, and what the requirements were on that, that was never part of his claim to construction order.

[00:12:44] Speaker 01:
And yet, the Amazon's expert testified about what it required to be a hub, what it meant to be a hub, with respect to the two interfaces argument.

[00:12:54] Speaker 01:
Again, the black litter law of this court is that

[00:12:59] Speaker 01:
two elements of the claim to be satisfied by a single structure unless there's something about the claim with prosecution history or some other limitation that prevents that from being the case.

[00:13:11] Speaker 01:
So for example, if it recited a first interface and a second interface.

[00:13:15] Speaker 01:
OK.

[00:13:15] Speaker 06:
You have to win on all of these to prevail, right?

[00:13:18] Speaker 06:
Because any one of them could have supported the jury's non-imprisonment verdict, correct?

[00:13:22] Speaker 06:
Why don't you draw them?

[00:13:23] Speaker 06:
Well, then why don't you address configured two?

[00:13:25] Speaker 06:
Because I think that sort of

[00:13:28] Speaker 06:
attacks everything, doesn't it?

[00:13:31] Speaker 01:
So configured to, that is, that they didn't set up a complete system.

[00:13:35] Speaker 01:
So they, that the testimony, well, the unrequited testimony from one of Amazon's vice presidents was that they sold these accused devices bundled together with other smart home devices.

[00:13:48] Speaker 01:
And so even if you assume

[00:13:50] Speaker 01:
the smart home device has to be part of the claim, which it does not, or said many of the claims, which they do not, then the testimony uttered about it from Amazon was they did in fact sell those complete systems.

[00:14:02] Speaker 01:
But largely, and just to take claim 22 of the 983 patent as an example, largely these claims are directed to a wireless hub or a management system device

[00:14:13] Speaker 01:
that manages other devices, manages these smart home devices.

[00:14:17] Speaker 01:
And so in claim 22, the smart home device corresponds to the claimed item.

[00:14:23] Speaker 01:
And so it's a hub for managing that item.

[00:14:27] Speaker 01:
So it has to communicate in certain ways.

[00:14:29] Speaker 01:
It has to be able to manage that using short-range wireless communication, for example.

[00:14:35] Speaker 01:
But the item itself is not affirmatively recited as part of the hub.

[00:14:39] Speaker 01:
So that's, fundamentally, where that's the claim construction argument with respect to that defense.

[00:14:45] Speaker 01:
That's erroneous as well.

[00:14:47] Speaker 06:
Councilor, you've used up almost all your rebuttal time.

[00:14:49] Speaker 06:
Do you want any at all?

[00:14:50] Speaker 06:
I'm sorry.

[00:14:51] Speaker 04:
Can I ask one quick question, though?

[00:14:53] Speaker 04:
Sorry, my apologies.

[00:14:54] Speaker 04:
Just a quick question on the costs.

[00:14:56] Speaker 04:
You're challenging both the video costs and the printing costs, right?

[00:15:02] Speaker ?:
Yes, Your Honor.

[00:15:03] Speaker 04:
And I understand there are a lot of exhibits here, and there are printing costs for a lot of exhibits.

[00:15:08] Speaker 04:
But how do you conclude that that's an abuse of discretion for the district court to conclude that that was a permissible expenditure that was charged?

[00:15:16] Speaker 01:
They were sought as exemplifications, Your Honor.

[00:15:19] Speaker 01:
And this court and the fiscal circuit have been very clear as to what an exemplification is.

[00:15:23] Speaker 01:
It has to be an accurate reproduction of a public record.

[00:15:26] Speaker 01:
And none of the exhibits, they sought

[00:15:29] Speaker 01:
cost for public records.

[00:15:31] Speaker 01:
And I apologize, and I didn't realize it was in my rebuttal time.

[00:15:34] Speaker 01:
I can't tell the color of the light from here.

[00:15:37] Speaker 04:
All right, that's enough.

[00:15:38] Speaker 01:
Thank you.

[00:15:39] Speaker 01:
Thank you.

[00:15:40] Speaker 06:
OK.

[00:15:44] Speaker 06:
Here for Mr. Haddon.

[00:15:46] Speaker 02:
Thank you.

[00:15:47] Speaker 02:
May it please the court to give Haddon for Amazon.

[00:15:49] Speaker 02:
Let me start with the configured question, the last one on infringement.

[00:15:57] Speaker 02:
IS took the position in this case that every fire TV device, every fire tablet, and every Echo directly infringed when it was sold by Amazon out of the box.

[00:16:10] Speaker 02:
That was their hook for trying to get damages on all those sales.

[00:16:14] Speaker 02:
But their actual infringement theory that their expert put on relied entirely on third party Phillips components, including Phillips Hue light bulb,

[00:16:25] Speaker 02:
Philips Hue Bridge and the Philips Cloud and application they interacted with.

[00:16:31] Speaker 02:
Now, none of those components are part of the accused Amazon devices, and none of the accused Amazon devices are configured out of the box to work with those Philips components.

[00:16:44] Speaker 02:
What the Amazon Echo does is if you say, turn on the light, it wakes up when it hears the word Alexa,

[00:16:52] Speaker 02:
And it sends a digitized recording of the sounds that followed to the Alexa clap.

[00:16:58] Speaker 02:
So it does exactly the same thing if you say, Alexa, turn on the light, or Alexa, tell me a joke.

[00:17:05] Speaker 02:
The devices don't know anything about Phillips, Phillips bulbs, or Phillips bridges.

[00:17:11] Speaker 02:
And they don't receive the short-range wireless communication that the claims require.

[00:17:17] Speaker 06:
I'm curious why you started with the non-infringement arguments.

[00:17:21] Speaker 06:
validity arguments render the patent invalid in its entirety?

[00:17:26] Speaker 02:
I was just going in reverse order.

[00:17:28] Speaker 02:
I'm happy to switch to invalidity.

[00:17:29] Speaker 06:
That's actually not true.

[00:17:30] Speaker 06:
If you're going in reverse order, you would have started with printing costs and exemplary.

[00:17:36] Speaker 02:
I wasn't going to spend my time on printing costs, but I apologize.

[00:17:40] Speaker 02:
I'm happy to discuss re-description to start with.

[00:17:45] Speaker 02:
Starting out the timeline, right?

[00:17:47] Speaker 03:
I think your opposing counsel suggested that if we could affirm on obviousness or anticipation, then we didn't need to reach written description, which seems thorny.

[00:18:01] Speaker 03:
Do you agree with that?

[00:18:02] Speaker 02:
Absolutely.

[00:18:03] Speaker 02:
And so if you would rather be so with obviousness and anticipation, I'm happy to.

[00:18:07] Speaker 02:
So the prior art was a system called HAL, Home Automation Living.

[00:18:12] Speaker 02:
It was created by

[00:18:14] Speaker 02:
Mr. Shriver, who is the founder of the company and also wrote the software.

[00:18:19] Speaker 02:
And Mr. Shriver testified via deposition.

[00:18:22] Speaker 02:
He was then testified live, but he unfortunately came down with COVID right before trial.

[00:18:27] Speaker 02:
But as he explained, he wrote the software back in the late 90s and early 2000s.

[00:18:33] Speaker 02:
And he specifically made the software interoperable with existing smart home devices, like security cameras and smart light bulbs and thermostats.

[00:18:47] Speaker 02:
So he would test his software with new devices when they came out of the market that he would get from the suppliers.

[00:18:53] Speaker 02:
And he also testified that he would provide customer support to make sure that those devices interoperated correctly with his software.

[00:19:03] Speaker 02:
The exemplary system that was demonstrated at trial was created by Mr. Shriver in response to a subpoena for a representative system.

[00:19:14] Speaker 02:
The components were all components that he had in his possession and had purchased prior to 2006.

[00:19:20] Speaker 02:
So he assembled them, sent them to California,

[00:19:24] Speaker 02:
had them reassembled, and that was a system that was demonstrated.

[00:19:28] Speaker 02:
It was not concocted after the fact.

[00:19:30] Speaker 02:
It was the existing system that Mr. Shriver had.

[00:19:34] Speaker 02:
In addition, he testified that the functionality that Dr. Johnson primarily relied on in showing invalidity, which was the ability for the software to send an email notification when a security camera detected motion,

[00:19:51] Speaker 02:
was a very common use case at the time before 2006 by his customers.

[00:19:59] Speaker 02:
The functionality that was pointed to existed.

[00:20:03] Speaker 02:
It was part of the software.

[00:20:05] Speaker 02:
The software was designed to work with these existing prior components, like security cameras.

[00:20:11] Speaker 02:
And that's what was demonstrated and shown to the jury to meet every element of the claims.

[00:20:17] Speaker 02:
The notion of the demonstration videos, the Oprah Winfrey demonstration was actually part of the install disk of the software from 2006.

[00:20:28] Speaker 02:
So in addition to the actual software, it included a video showing this Oprah Winfrey episode that was before that, obviously, where the system was also demonstrated and showed much of the same overlapping functionality that Dr. Johnson demonstrated.

[00:20:46] Speaker 02:
So there was more than substantial evidence to support the jury's finding of invalidity based on anticipation and obviousness.

[00:20:55] Speaker 02:
Just briefly to the written description because I think Judge Crost asked why it mattered.

[00:21:00] Speaker 02:
It mattered because these patents were filed in 2016 and 2017, two and three years after the Q's Echo device was launched and on the market.

[00:21:12] Speaker 02:
So to have any viable case, IS needed to establish an earlier priority date.

[00:21:19] Speaker 02:
And consistent with the local patent rules in eastern Texas, they had to identify their priority date in their initial 3-1 disclosure.

[00:21:27] Speaker 02:
They did.

[00:21:28] Speaker 02:
They picked the August 2006 date.

[00:21:32] Speaker 02:
That was the date that their expert relied on in his expert report.

[00:21:36] Speaker 02:
That was the date that was relied on by our expert, Dr. Johnson, in providing his written description opinion.

[00:21:44] Speaker 02:
And that was the date that I, as Trump did,

[00:21:49] Speaker 02:
in their opening statement, and that their first witness, Ms.

[00:21:53] Speaker 02:
Wong, one of the inventors, testified was the priority date, and that the application she filed on August 2006 fully supported all of the claims in this case.

[00:22:04] Speaker 02:
So it was only in the middle of the trial where IAS tried to back away from that date and tried to come up with something else.

[00:22:12] Speaker 02:
But by that time, it was too late, and Amazon

[00:22:16] Speaker 02:
can't be put in the position of whack-a-mo.

[00:22:18] Speaker 02:
If you look at the file wrapper here, there's like 20 or plus applications.

[00:22:25] Speaker 06:
Just to be clear, you brought this on yourself.

[00:22:27] Speaker 06:
You stipulated to the date.

[00:22:29] Speaker 06:
You brought this on yourself right now in argument.

[00:22:31] Speaker 06:
You didn't have to address this argument.

[00:22:32] Speaker 06:
But for you to suggest they've got you playing whack-a-mole or something, you stipulated to the date.

[00:22:38] Speaker 06:
Full stop.

[00:22:38] Speaker 06:
That was it.

[00:22:39] Speaker 06:
You stipulated to the date.

[00:22:41] Speaker 06:
You didn't have to stipulate to the priority date, but you did.

[00:22:43] Speaker 06:
And you lied in your brief when you said you didn't stipulate to it.

[00:22:46] Speaker 06:
So this is the one thing in this whole case where I was really disappointed.

[00:22:50] Speaker 06:
I was going to let it go.

[00:22:51] Speaker 06:
But you've decided not just to stand here and take on the argument, but to make derogatory whack-a-mole type comments about the other side.

[00:22:57] Speaker 02:
Not OK.

[00:23:00] Speaker 02:
I disagree, Your Honor.

[00:23:02] Speaker 02:
What we stipulated to you was the priority, as you suggested in your opening question.

[00:23:06] Speaker 06:
The priority date.

[00:23:07] Speaker 06:
You just made it.

[00:23:08] Speaker 06:
OK, wait.

[00:23:08] Speaker 06:
Let's turn to page 49 of your brief.

[00:23:11] Speaker 06:
Go to page 49 of your brief.

[00:23:22] Speaker 06:
Right after the site, the Motion Medical Tech.

[00:23:25] Speaker 06:
I'd like you to read me the sentence in your brief.

[00:23:35] Speaker 06:
Go ahead and read it.

[00:23:37] Speaker 02:
I read it.

[00:23:37] Speaker 02:
Here, Amazon did not stipulate to a priority date.

[00:23:40] Speaker 02:
Nor did it concede that the asserted claims had written descriptions before.

[00:23:43] Speaker 05:
Here, Amazon did not stipulate to a priority date.

[00:23:47] Speaker 05:
Did you or did you not stipulate to a priority date?

[00:23:49] Speaker 02:
I agree.

[00:23:49] Speaker 02:
I agree that is a misstatement, Your Honor.

[00:23:53] Speaker 02:
But it was clear that from the pretrial statement,

[00:23:57] Speaker 02:
that what we were doing was agreeing that the priority date that IAS was relying on as the effective filing date was the August 2006 date that they specified in the local patent rules, that they specified in their expert report, and that was the date that governed what was prior in this case.

[00:24:17] Speaker 02:
And it also governed what specification had to meet the written description requirement.

[00:24:22] Speaker 02:
And that is the position we took throughout the case, throughout the trial,

[00:24:27] Speaker 02:
And that is the correct position.

[00:24:30] Speaker 02:
They picked their priority date.

[00:24:32] Speaker 02:
They had to live by it.

[00:24:33] Speaker 02:
And we showed that it did not support that specification, did not support the claims that were filed in 2017.

[00:24:44] Speaker 06:
Would you turn now to the printing costs and exemplification costs, please?

[00:24:50] Speaker 02:
Yes, Your Honor.

[00:24:51] Speaker 06:
I'd like you to address

[00:24:53] Speaker 06:
How a graphic artist's preparation of trial exhibits could be exemplification costs?

[00:25:02] Speaker 02:
If exemplification costs are limited to the reproduction of a public record, I agree they are not.

[00:25:12] Speaker 02:
But under the Fifth Circuit law, our understanding, as Judge Mazant agreed, was that these are the types of costs that are now considered appropriate.

[00:25:21] Speaker 03:
But isn't there a difference between the cost of producing the graphic

[00:25:27] Speaker 03:
reproducing the actual graphic once it's made and the underlying cost for making the graphic in the first place?

[00:25:35] Speaker 03:
Absolutely, Your Honor.

[00:25:36] Speaker 03:
And are you claiming the cost for making the graphic?

[00:25:39] Speaker 02:
I think they were drastically reduced.

[00:25:43] Speaker 03:
I'm confused, but it seemed to me that some of these categories covered cost for making the graphic, not reproducing it.

[00:25:52] Speaker 02:
I think part of the cost of making the graphic wasn't clear.

[00:25:57] Speaker 02:
And that would be wrong.

[00:25:59] Speaker 02:
So if that's the case... If that's the case and that's beyond exemplification, then that would be wrong.

[00:26:06] Speaker 03:
Well, that's clearly beyond exemplification.

[00:26:09] Speaker 03:
Even if we have a broader definition of what copies are, making the original exhibit is not copying the... I agree with that.

[00:26:17] Speaker 03:
But you asked for it.

[00:26:21] Speaker 02:
My understanding was that under the Fifth Circuit law, those types of graphic costs had been awarded.

[00:26:31] Speaker 03:
Including making it, rather than just copying it?

[00:26:34] Speaker 03:
Yes.

[00:26:39] Speaker 03:
OK.

[00:26:39] Speaker 03:
Even though this is a provision, even at Broadden, it's about copies, not copies.

[00:26:43] Speaker 03:
That sounds more like some kind of expert, you know witness cost or something like that Its service is not copying.

[00:26:52] Speaker 06:
I absolutely agree the creating graphics and not copying Mr. Jackson you have some rebuttal time I'll restore two minutes of rebuttal time Can you hear us?

[00:27:08] Speaker 06:
Okay, but you're doing I'm sorry.

[00:27:11] Speaker 06:
Can you hear me now?

[00:27:13] Speaker 01:
Thank you, Your Honor.

[00:27:14] Speaker 01:
Thank you for the extension.

[00:27:16] Speaker 01:
Two quick, it's one on the prior art.

[00:27:18] Speaker 01:
This court and the Supreme Court have been very clear.

[00:27:21] Speaker 01:
There has to be corroboration with respect to prior art.

[00:27:24] Speaker 01:
In the Art Buyer case, I think there were close to a dozen prior art witnesses.

[00:27:28] Speaker 01:
That was deemed insufficient.

[00:27:29] Speaker 01:
There has to be documentary proof that the prior art, as it's alleged to have existed, actually existed.

[00:27:35] Speaker 01:
We don't have that in this case.

[00:27:37] Speaker 01:
We have Mr. Shriver giving testimony that doesn't, in fact, say that it even existed as constructed by him in 2019.

[00:27:45] Speaker 01:
But even if he had said that, that wouldn't be enough under barbed wire.

[00:27:49] Speaker 01:
And I would also ask the court to review the Juicy Whip versus Orange Van case, where Judge Lynn at length goes through this court's prior precedent, as well as the barbed wire case, talking about the requirement for corroboration

[00:28:04] Speaker 01:
With respect to the written description requirement, again, Amazon's counsel's arguments reveals fundamental misunderstanding of the way 35 USC 120 works in conjunction with 35 USC 102.

[00:28:17] Speaker 01:
120 is all about finding out the earliest date at which the claim is supported.

[00:28:22] Speaker 01:
And then from there, that defines the universe of prior art.

[00:28:26] Speaker 01:
Anything prior to that or more than a year prior to that qualifies as prior art.

[00:28:31] Speaker 01:
We, under Local Rule 3-1, were required to give our contention, and it literally says the contention date you attend, your claims are entitled to.

[00:28:39] Speaker 01:
And that was all that was.

[00:28:41] Speaker 01:
They were free to use later prior art, and as part of their burden of proving the validity, show that we were not entitled to that date.

[00:28:49] Speaker 01:
In fact, it was a later date, and therefore the prior art they were relying on is invalidating.

[00:28:54] Speaker ?:
And that is the factual context that comes up in all of the cases that they've cited,

[00:28:59] Speaker 01:
Your Honor, with respect to finding claims that are validated based on the failure to comply with the written description requirement, you're essentially short-handing two steps into one when the court uses language that's about how failure to prove the priority date results in invalid.

[00:29:19] Speaker 01:
Thank you, Your Honor.

[00:29:20] Speaker 06:
Okay, thank both counsel.

[00:29:21] Speaker 06:
This case is taken under submission.