[00:00:00] Speaker 01: Our next case for argument is 20-2210 Specs Technology versus Apricorn. [00:00:06] Speaker 01: Mr. Fenster, please proceed. [00:00:10] Speaker 04: Good morning, Your Honors. [00:00:11] Speaker 04: May it please the court, Mark Fenster, for the appellant Specs. [00:00:15] Speaker 04: The court should reverse the Jamal order because the district court improperly tested the sufficiency of the evidence against a new [00:00:24] Speaker 04: post-verdict claim construction that was procedurally improper and substantively wrong under oedetics. [00:00:31] Speaker 04: Separately, the court should also reverse the order finding the means for providing claims indefinite, because this court has already found on the identical record that the specification clearly linked structure to the recited means there. [00:00:47] Speaker 01: Can I just ask you as a matter of housekeeping, is it correct that that indefiniteness argument is something we have to address? [00:00:54] Speaker 01: regardless of what we do with the other aspects of this case, meaning it's a standalone issue. [00:01:00] Speaker 04: I believe that's correct, Your Honor. [00:01:04] Speaker 04: First, as to the procedural defect in the court's Jamal order. [00:01:10] Speaker 04: Jamal must be reversed because the district court, contrary to this court's holdings in Hewlett-Packard and Weiland, changed the claim construction materially [00:01:20] Speaker 04: from the jury instruction. [00:01:22] Speaker 03: I'm not sure that I see the change in the claim construction. [00:01:25] Speaker 03: You say, and this is in your yellow brief at page 19, that TORO holds that the indispensable component is a claim limitation. [00:01:36] Speaker 03: And that is largely the basis for your idea that there's been a change in the claim construction. [00:01:42] Speaker 03: I don't see that language in Toro. [00:01:45] Speaker 03: Would you show me where Toro says that if structure is indispensable it becomes a quote claim limitation? [00:01:56] Speaker 03: I see, to me, what happened here is that the issue that you're debating now about indispensability just wasn't addressed at all in the instructions. [00:02:06] Speaker 04: That's exactly right. [00:02:09] Speaker 03: So I don't understand how you get from TORO that indispensability is a claim limitation. [00:02:16] Speaker 04: Okay. [00:02:16] Speaker 04: So my understanding is that [00:02:20] Speaker 04: In general, the rule is odetics. [00:02:23] Speaker 03: Odetics says, as the court was instructing... The instructions pretty much came from odetics. [00:02:29] Speaker 04: That's right, and it's the overall construction. [00:02:31] Speaker 04: Individual sub-components are not claim limitations. [00:02:35] Speaker 04: Further parsing is improper. [00:02:37] Speaker 04: That's how the court has, how the jury was instructed. [00:02:40] Speaker 00: Can I just, I don't want to interrupt your chain of thought, but just to sort of amend or add to Judge Dyke's question, [00:02:46] Speaker 00: Odetics, Toro and Solomon are our precedent decided after Odetics. [00:02:53] Speaker 00: So what Toro and Solomon said with respect to either a significant claim limitation, they used several words other than indispensable. [00:03:03] Speaker 00: How can that be, what you seem to be saying is that that is inconsistent and contradicts the Kajuri instruction that came out of Odetics. [00:03:12] Speaker 00: Well, you're only right if we've got precedent that's conflicting and inconsistent and contradictory. [00:03:19] Speaker 04: The inconsistency, Your Honor, is that the claim construction that the court applied on Jamal required a specific showing of configuration registers. [00:03:31] Speaker 04: The jury was not so instructive. [00:03:34] Speaker 04: The jury instruction was that it's the interface control device, ICD910. [00:03:39] Speaker 03: Are you agreeing now that there was no error in the claim construction? [00:03:44] Speaker 04: The original claim construction, we've never challenged. [00:03:49] Speaker 04: On JMAW, the post-verdict claim construction was new and different. [00:03:53] Speaker 03: OK, so we're not dealing with a question of inconsistency between the original construction and the post-JMAW. [00:03:59] Speaker 03: I think that the procedural defect, Your Honor, is the answer to that question. [00:04:04] Speaker 03: Are you arguing that there's an inconsistency between what he did on Jamil and the jury instruction? [00:04:12] Speaker 04: Yes, absolutely. [00:04:13] Speaker 03: I don't see that and where would you please show me and that rests on [00:04:17] Speaker 03: as I understand it, on your notion that indispensability is a claim limitation. [00:04:23] Speaker 03: I disagree, Your Honor. [00:04:25] Speaker 03: So the court instructed the jury. [00:04:28] Speaker 03: Let's do this at a granular level. [00:04:29] Speaker 03: What supports your statement on 19 of the yellow brief that Toro holds that the indispensable component is a claim limitation? [00:04:38] Speaker 03: Where does Toro say that? [00:04:42] Speaker 04: Your honor, in Toro, there was not a jury verdict. [00:04:45] Speaker 04: The court specifically held that CAM limitation was a specific claim limitation that had to be shown. [00:04:52] Speaker 03: I don't see the language in Toro. [00:04:54] Speaker 03: I don't see it saying that because something is indispensable, it becomes a separate claim limitation. [00:05:00] Speaker 04: Your honor, respectfully, I think that that's [00:05:03] Speaker 04: That's not our point. [00:05:05] Speaker 03: Toro did it. [00:05:06] Speaker 03: You said it in your brief. [00:05:07] Speaker 03: I'm just asking you to show me the support for what you said in the brief. [00:05:11] Speaker 04: Your Honor, in Toro, the court specifically held at 1323, the court determined that the corresponding structure includes a mechanical cam structure. [00:05:27] Speaker 04: And then so there was a specific holding that the mechanical cam structure [00:05:33] Speaker 04: was a claim limitation. [00:05:36] Speaker 04: In this case, the jury was not instructed that... Where does Toro say that? [00:05:41] Speaker 03: I don't see that Toro says that when something becomes indispensable, that makes it a separate claim limitation. [00:05:47] Speaker 03: I don't see that language. [00:05:48] Speaker 03: It was just pointed to me and I'll be satisfied. [00:05:54] Speaker 04: I don't, let me just agree with you because it's not material to my point. [00:05:58] Speaker 04: I apologize if I misled you in the yellow brief. [00:06:02] Speaker 04: It's not material to the point. [00:06:03] Speaker 04: The material point here is that the district court on Jamal held for the first time that configuration registers had to be shown [00:06:12] Speaker 04: And that was a material difference from the jury instruction, which did not reference configuration registers at all, specifically instructed the jury. [00:06:21] Speaker 00: Well, I think you said initially it contradicted. [00:06:25] Speaker 00: I think you used the word contradicted, the construction. [00:06:27] Speaker 00: And I think, again, my question, if you could just address sort of my question. [00:06:31] Speaker 00: I understand I interrupted Judge Dyke, so I'm not thanking you for doing it. [00:06:35] Speaker 00: But it seemed to me, and I think you even kind of said it today, the jury instruction comes out of Odettex. [00:06:41] Speaker 00: And the indispensable central role, greater weight comes out of Toro and Solomon. [00:06:48] Speaker 00: Those decisions, in my view, are consistent. [00:06:51] Speaker 00: They must be consistent. [00:06:53] Speaker 00: So how can you say that a jury instruction out of Odettex is inconsistent and contradicts what is subsequently relied on coming out of Toro? [00:07:06] Speaker 04: Okay. [00:07:07] Speaker 04: The district court did not hold as part of its claim construction originally that configuration registers were indispensable. [00:07:16] Speaker 01: Where is that? [00:07:18] Speaker 01: Where is the place where you think the district court instructed the jury as to the meaning of the interface control device and what language in the spec corresponds to the interface control device? [00:07:32] Speaker 04: Yes. [00:07:32] Speaker 04: So specifically at appendix 11276, the judge [00:07:37] Speaker 04: The judge instructed the jury that the corresponding structure for the means for mediating... I don't have the line. [00:07:52] Speaker 04: Is the interface control device 910 as shown in Figure 9B? [00:08:06] Speaker 01: Did he or did he not somewhere, I mean I haven't been through all of these jury instructions, but instruct the jury that they are obligated to look to the structure that performs the particular function? [00:08:20] Speaker 04: So he instructed them that the corresponding structure is interface control device 910 and then at 11279 to 280 [00:08:32] Speaker 04: He specifically instructs the jury that the individual components... Yes, but see, here's my problem. [00:08:38] Speaker 01: My problem is the configuration registers are actually the only thing in Figure 9 which perform the function. [00:08:45] Speaker 04: That's not true. [00:08:46] Speaker 04: That's not true. [00:08:48] Speaker 01: So first of all... The testimony seems to be that that's true. [00:08:51] Speaker 04: Go ahead. [00:08:52] Speaker 04: That's not the case. [00:08:53] Speaker 04: This is an interface control device that routes data from the host through the security to the target. [00:09:01] Speaker 01: Now you're telling me what the interface control device does in a broad sense. [00:09:05] Speaker 01: What is the particular claimed function? [00:09:08] Speaker 04: Your Honor, the particular claimed function is that it must mediate the data so that it must pass through the security means. [00:09:21] Speaker 04: The configuration registers allow it to be configured from one mode to another. [00:09:34] Speaker 04: But what routes the data is that three interface structure, ICD, which the jury was instructed, and instructed specifically that it's the overall structure. [00:09:46] Speaker 03: The configuration register determines whether it goes through the security feature, right? [00:09:54] Speaker 04: And that's not true. [00:09:56] Speaker 04: The configuration registers just determine which mode that ICD functions in. [00:10:03] Speaker 04: But the ICD has data lines that route the data from the host to the security to the target. [00:10:09] Speaker 04: That's what does it. [00:10:10] Speaker 03: And the specification... We're not talking about routing the data. [00:10:12] Speaker 03: We're talking about whether it goes to the security [00:10:16] Speaker 03: box or not. [00:10:18] Speaker 04: That's what I meant by routing the data, Your Honor. [00:10:20] Speaker 04: It has to go through the security in order to get to the target. [00:10:23] Speaker 04: And the specification at Column 10 specifically says that it can be operated in multiple modes or it can be fixed at manufacture to only operate in that mode. [00:10:35] Speaker 03: The configuration registers go to configuration... If it's fixed so that it only operates in that mode, then the function's not seen performing. [00:10:46] Speaker 04: That's just not the case, Your Honor. [00:10:50] Speaker 04: Your Honor, the jury was not instructed that configuration registers are essential. [00:10:58] Speaker 03: the jury instructions do not mention configuration registers are giving up on your argument that there's a conflict between what he did and what the jury instruction was. [00:11:08] Speaker 04: Absolutely not. [00:11:09] Speaker 04: It is completely at odds. [00:11:11] Speaker 04: The jury was not instructed that configuration registers are required. [00:11:14] Speaker 03: But that doesn't mean that the jury instruction is in conflict with it. [00:11:18] Speaker 03: It just means that there's an issue here about indispensability that wasn't presented to the jury. [00:11:25] Speaker 03: It was never raised by... Maybe so, but I don't understand where the conflict is between the oedetics instruction that he gave and what he did post trial, which was consistent with Toro. [00:11:40] Speaker 04: Because in YLAN and HP, this court held... What language in the instruction [00:11:47] Speaker 03: was contradicted by what he did post-trial. [00:11:49] Speaker 04: The language was the specific language that the individual components are not claim limitations. [00:11:56] Speaker 04: The claim limitation is the overall structure, further deconstruction. [00:11:59] Speaker 03: Well, that's correct. [00:11:59] Speaker 03: And Toro didn't change that. [00:12:01] Speaker 03: And your effort in the yellow brief to say that the indispensability is a claim limitation isn't consistent with Toro. [00:12:11] Speaker 04: My point, Your Honor, is that the judge on Jamal [00:12:15] Speaker 04: specifically added a limitation that's inconsistent with the jury instruction. [00:12:21] Speaker 04: That's inconsistent with Weiland and Hewlett-Packer. [00:12:24] Speaker 01: They added the construction. [00:12:25] Speaker 01: Here's the problem. [00:12:26] Speaker 01: I don't think it's inconsistent, but here's why. [00:12:29] Speaker 01: Look at column 17, line 25 to 32. [00:12:33] Speaker 01: It's the only portion of the patent that addresses the functionality for the interface control device that is in the claim, the mediating [00:12:42] Speaker 01: instruction. [00:12:43] Speaker 01: This is the only place where you can find the structure. [00:12:46] Speaker 01: And the jury had the patent as part of this case when they were deciding it. [00:12:51] Speaker 01: And this says that the configuration registers, in fact, it's the only thing they point to in the interface control device, is what actually performs the function. [00:13:00] Speaker 04: That's not true. [00:13:01] Speaker 01: OK, what am I missing? [00:13:02] Speaker 01: What other aspects of the interface control device does Columns? [00:13:06] Speaker 01: Is there another portion of the patent that I'm missing other than Column 17, line for F.A. [00:13:10] Speaker 01: 24-ish? [00:13:11] Speaker 04: Column 17 describes the interface control device. [00:13:16] Speaker 04: The interface control device is this entire thing shown in Figure 9-10. [00:13:19] Speaker 01: If I know it's 9-10, I know how to read a patent. [00:13:21] Speaker 01: Where is the language about the particular functionality? [00:13:24] Speaker 01: Because remember, under B. Braun, you have to link the structure to the functionality. [00:13:29] Speaker 04: And the court found... Where is it? [00:13:31] Speaker 01: Where is that language? [00:13:31] Speaker 01: In the patent. [00:13:32] Speaker 01: I don't want to know what the court found. [00:13:33] Speaker 01: I want you to tell me where it is in the patent. [00:13:37] Speaker 01: Because it's right there. [00:13:37] Speaker 01: That's the only place it is. [00:13:38] Speaker 01: And the only thing it talks about is it links the configuration registers. [00:13:42] Speaker 01: And you don't like it, but that's the truth. [00:13:43] Speaker 04: Your Honor, you're taking the configuration registers. [00:13:49] Speaker 04: I'm doing what? [00:13:51] Speaker 04: You're taking the configuration registers out of column 15, but that is part of the discussion of the interface control device, and it's the interface control device that is the means for mediating that routes this data. [00:14:05] Speaker 01: No, that's not what that paragraph says. [00:14:08] Speaker 01: The data stored in the configuration registers establishes operating characteristics of the interface control device in particular, yada, yada, yada. [00:14:15] Speaker 01: That is the only place where the function in the claims is linked to any structure at all. [00:14:21] Speaker 04: Your Honor, the district court did not hold pre-trial that the configuration registers were the corresponding structure. [00:14:33] Speaker 04: He didn't. [00:14:34] Speaker 04: I don't agree with you. [00:14:37] Speaker 00: How can you say that? [00:14:38] Speaker 00: We had the figure. [00:14:41] Speaker 00: This is cleaner. [00:14:42] Speaker 00: Sometimes we have to go to the structure and there are paragraphs with lots of language and lots of narratives and we have to pull a structure out of that. [00:14:50] Speaker 00: Here we had a figure. [00:14:52] Speaker 04: The figure is the entire structure and just like in [00:14:56] Speaker 00: And can I just ask you as a sort of sideline to what the Chief was saying? [00:15:01] Speaker 00: In a related proceeding in this case, the judge held that this claim was not indefinite. [00:15:09] Speaker 00: And in that analysis, I can't recall exactly what it says, is essentially relied on the language and the spec. [00:15:15] Speaker 00: And all the stuff that they relied on had to do with the registers, right? [00:15:20] Speaker 00: the configuration registers. [00:15:22] Speaker 00: That was the basis for holding the claim not indefinite. [00:15:25] Speaker 04: In part, yes it was, but that is not, that is different. [00:15:29] Speaker 00: That's a tell, was it not? [00:15:31] Speaker 04: So Your Honor, had the jury been instructed that configuration registers are the corresponding structure, I don't have a case. [00:15:40] Speaker 00: They were identified as part of the component of the corresponding structure. [00:15:46] Speaker 00: Are you suggesting that we should say in an opinion as matter of black letter law that jury instructions on means plus function cases where there's a corresponding structure, if there is a component, [00:15:58] Speaker 00: that is either indispensable or important or the other words that Toro uses, then they have to be there without equivalency. [00:16:07] Speaker 00: Are you suggesting that the error here is a legal requirement to put that in? [00:16:12] Speaker 00: No, Your Honor. [00:16:12] Speaker 04: This is exactly the Odetics case. [00:16:15] Speaker 00: No, but I can, I guess, I'm sorry to interrupt, but I've asked you twice before and maybe you've tried to answer and I just haven't absorbed it. [00:16:24] Speaker 00: How can you say it's inconsistent with Odettex? [00:16:28] Speaker 00: This claim construction is inconsistent with Toro, where the two are coming out of cases side by side. [00:16:34] Speaker 04: The specific inconsistency that we're complaining about here is that the jury instructions did not mention configurations, registers, or say that they were essential. [00:16:46] Speaker 04: And yet, on post verdicts... That's not an inconsistency. [00:16:49] Speaker 03: It may be an omission. [00:16:50] Speaker 03: You know, your body language showing the frustration with the questions is not appropriate. [00:16:57] Speaker 03: You're here to answer questions, and you're supposed to do it in good nature, OK? [00:17:02] Speaker 04: I absolutely apologize, Your Honor. [00:17:04] Speaker 04: Your Honor, the inconsistency [00:17:09] Speaker 04: And it was an omission, okay? [00:17:11] Speaker 04: And that's just what happened in Weiland and Hewlett-Packard. [00:17:14] Speaker 00: In Weiland... If there was an inconsistency, what is... Our case law, is our case law, Odettex, Toro, and Solomon, is there an inconsistency in those cases? [00:17:24] Speaker 04: Between those? [00:17:24] Speaker 04: No. [00:17:25] Speaker 04: What's inconsistent is my understanding of the case law, Your Honor, is that Toro and Solomon created a narrow exception to the Odettex rule. [00:17:37] Speaker 04: The Odetic's rule is that when the court identifies a corresponding structure, it's the overall structure. [00:17:44] Speaker 04: And further parsing and individual components of that are generally not claim limitations, unless under Toro or Solomon, they are indispensable. [00:17:55] Speaker 03: OK, but you wait a second. [00:17:57] Speaker 03: Like 10 minutes ago, I pointed out your statement to that effect in the yellow brief and asked you to show me where in Toro it said it was a claim limit. [00:18:05] Speaker 03: You couldn't do that, and you gave up on the argument. [00:18:07] Speaker 03: Now you're reviving. [00:18:09] Speaker 04: I'm not saying that Toro's inconsistent. [00:18:13] Speaker 04: I believe that Toro and Solomon are wholly consistent with oedetics. [00:18:16] Speaker 04: I believe that they recite the narrow exception. [00:18:20] Speaker 03: Because something's indispensable, it becomes a claim limitation. [00:18:23] Speaker 03: There is no language to that effect in Toro. [00:18:28] Speaker 03: You may have a situation here in which there is a missing instruction [00:18:32] Speaker 03: but you're not in a situation in which there's a conflict between the instruction and what he did post trial. [00:18:38] Speaker 04: So the missing instruction is a further gloss. [00:18:41] Speaker 04: And your honor held, your honor held, actually, in Hewlett-Packard that the court on Jamal can't add more detailed claim construction than what was given to the jury instruction. [00:18:55] Speaker 03: OK, but you're missing Cyprus. [00:18:56] Speaker 03: And the obligation of the district court in a doctrine of equivalence and an equivalent situation [00:19:02] Speaker 03: to look for evidences and linking arguments. [00:19:05] Speaker 03: That's part of the district court's obligation. [00:19:08] Speaker 03: Is that what he was doing here? [00:19:11] Speaker 04: He did that pre-trial and found... Post-trial. [00:19:15] Speaker 03: He's going to do that post-trial. [00:19:17] Speaker 03: That's what Cypress is. [00:19:18] Speaker 03: And that was recognized in Hewlett-Packard itself. [00:19:21] Speaker 04: Right, but what Hewlett-Packard and Weiland state, my understanding, is that Hewlett-Packard and Weiland stand for the proposition that [00:19:30] Speaker 04: If the jury instructions went in without objection, it is improper for the district court to add further detail to the claim construction that was not given. [00:19:40] Speaker 03: He's told the jury to look at the patent, and as Judge Moore points out, the patent tells you that this is indispensable. [00:19:48] Speaker 04: Your Honor, respectfully. [00:19:51] Speaker 04: It was, the jury was specifically instructed that individual components are not claim limitations. [00:19:56] Speaker 01: Unfortunately, I feel like we're in a never-ending loop and your time has long since expired, so let me move on to opposing counsel and I'll restore some of your rebuttal time. [00:20:07] Speaker 01: Mr. Richards? [00:20:10] Speaker 01: Before we get into the merits of the main issue here, what happens with indefiniteness? [00:20:22] Speaker 01: Is that a completely stand-alone issue that we need to resolve regardless of how the primary appeal gets resolved? [00:20:30] Speaker 02: I agree that there's the same claim construction order that was appealed from here regarding to their indefiniteness issue, and there was a previous ruling on that. [00:20:41] Speaker 02: I think the court probably would need to address it. [00:20:43] Speaker 02: These are not consolidated cases, but if it wants to address it in a summarily fashion and otherwise affirm, we would obviously be fine with that as well. [00:20:50] Speaker 00: But we would be fine with what? [00:20:53] Speaker 00: We would adopt, we would follow Western Digital and reverse or vacate the judge's [00:20:59] Speaker 00: determination of indefiniteness with respect to that claim, right? [00:21:02] Speaker 02: I mean, I'm not here to argue that this is a different issue. [00:21:04] Speaker 02: I continue to disagree. [00:21:06] Speaker 03: It's different claims, right? [00:21:07] Speaker 03: The indefiniteness issue lies to different claims than the other issues we're talking about here. [00:21:11] Speaker 02: Correct. [00:21:12] Speaker 02: It's a different set of claims. [00:21:13] Speaker 03: We have to send the other claims back for further proceeding. [00:21:16] Speaker 02: Should you all agree that Western Digital controls in this case, yes, you would have to send the other claims back, correct. [00:21:20] Speaker 03: Do you agree that it controls? [00:21:22] Speaker 02: I leave it to this court to determine that. [00:21:24] Speaker 02: I disagree with it. [00:21:25] Speaker 02: I would urge this court to look at the expert testimony. [00:21:28] Speaker 01: But you want us to contradict it? [00:21:31] Speaker 00: I don't expect you all to contradict it. [00:21:32] Speaker 00: Well, the other side said it's brief. [00:21:34] Speaker 00: So you didn't have time because it came down at a certain point. [00:21:38] Speaker 00: But don't you think if you really disagree that Western Digital has any applicability to these particular claims here, different than the ones we were talking about with Mr. Fenster, [00:21:49] Speaker 00: Shouldn't you have sort of submitted a 20-J? [00:21:51] Speaker 00: They say it controls, and you're silent for four months. [00:21:55] Speaker 02: I don't disagree that it probably controls in this case. [00:22:01] Speaker 01: I will concede that it controls in this case. [00:22:03] Speaker 01: Okay, there we go. [00:22:04] Speaker 01: Done. [00:22:04] Speaker 01: Thank you. [00:22:04] Speaker 00: And so that portion of the case, which is separate and distinct from the portion we were discussing, Mr. Fenster, would need a reversal or vacate. [00:22:13] Speaker 00: On that issue, yes. [00:22:15] Speaker 00: And those claims. [00:22:18] Speaker 02: Six, seven, and 20. [00:22:19] Speaker 02: Yes, correct. [00:22:20] Speaker 02: Thank you. [00:22:22] Speaker 02: So on to the issue that we've been discussing here. [00:22:25] Speaker 02: I want to kind of start off with the jury instruction. [00:22:29] Speaker 02: I do believe the jury was properly instructed. [00:22:30] Speaker 02: The language comes directly from eudetics. [00:22:32] Speaker 02: And what the jury was instructed was that they were to look at the way the claimed function is performed [00:22:39] Speaker 02: And if we look at the patent, the way it's performed is through the configuration registers that program the device to mediate it in a particular way. [00:22:46] Speaker 02: And the result [00:22:47] Speaker 02: Those, if we look at 11279, that is exactly what the jury... But that's a problem. [00:22:52] Speaker 01: If you're now telling me the configuration registers are the structure that performs the claimed function, then isn't there a problem with the district court concluding that no, it was not the configuration registers, but rather the interface control device, all of what's in 910? [00:23:13] Speaker 02: I would disagree that it said it was the configuration registers divorced, sorry, the interface control device divorced from the configuration registers. [00:23:22] Speaker 02: The disputed claim construction was whether there was adequate programming to tell the interface control device what to do. [00:23:31] Speaker 02: If you look at Appendix 64, where it's part of the district court's opinion, where it provides the various constructions, the construction proposed by Apricorn, [00:23:43] Speaker 02: was the Interface Control Device 910 as programmed to mediate. [00:23:48] Speaker 02: So this was a central part of this dispute. [00:23:51] Speaker 02: And in the district court's claim construction order, he pointed specifically to the configuration registers as saving this term, at least in part, as my friend can see. [00:23:59] Speaker 00: Yeah, but if you're the jury. [00:24:01] Speaker 00: But the jury wasn't part of that. [00:24:02] Speaker 00: Sure. [00:24:03] Speaker 00: The jury gets its instruction, which it takes very seriously. [00:24:06] Speaker 00: And it's got this figure 9B. [00:24:07] Speaker 00: And it has several components, including the registers. [00:24:11] Speaker 00: How would they, are you suggesting that they would have known or intuitive that this one thing, this register stuff, if that's not there, if they haven't shown that, then this case is over because that is indispensable. [00:24:27] Speaker 00: How would the jury have known to do that? [00:24:31] Speaker 00: And if they didn't really know to do that, is that okay? [00:24:35] Speaker 00: That's what we have JMA for, or is that a problem? [00:24:39] Speaker 02: I would say yes to both of those parts of that question. [00:24:43] Speaker 02: Yes, I think the jury, if I were sitting on this jury and I read this instruction that asked me to look at the way that the structure is performing the function, I would look to the specification and say... Where is the portion of the instruction? [00:24:55] Speaker 01: Walk me just through it. [00:24:56] Speaker 01: Where is the portion of the instruction that you think should have keyed the jury into the fact that configuration registers were critical? [00:25:04] Speaker 02: Well, sure. [00:25:05] Speaker 02: I would point you to 11279. [00:25:06] Speaker 01: Okay, let me get there. [00:25:09] Speaker 02: Mm-hmm. [00:25:11] Speaker 01: 11279, what do you know at line number by any chance? [00:25:15] Speaker 02: Yeah, I've got a line 14, starting on line 14. [00:25:23] Speaker 02: You must then determine whether the structure is the same or as or equivalent to the structure I've identified. [00:25:29] Speaker 02: If they are same or equivalent, excuse me. [00:25:32] Speaker 01: Okay, now where's the structure he's identified? [00:25:35] Speaker 02: Apologies. [00:25:40] Speaker 02: So they have to determine... I would point, to amend my previous answer, lines 21 and 22. [00:25:46] Speaker 02: Specs must show the structure in the accused device performs the claimed function in substantially the same way to achieve substantially the same result. [00:25:55] Speaker 02: So I think that's the key critical language, and I would also point to... Yes, but you pointed us to the worst part for you, right? [00:26:01] Speaker 01: Which is what he says, and you don't get to identify what that structure is I have. [00:26:05] Speaker 01: You have to follow my identification of the structure. [00:26:10] Speaker 01: Correct? [00:26:10] Speaker 01: That's what he told them. [00:26:12] Speaker 02: Correct. [00:26:12] Speaker 02: And what the district court identified was interface control device 910. [00:26:18] Speaker 01: Where is that? [00:26:18] Speaker 01: What page? [00:26:19] Speaker 02: 11276. [00:26:19] Speaker 02: 11276. [00:26:21] Speaker 01: OK. [00:26:25] Speaker 01: Yep. [00:26:25] Speaker 01: So he said, you have to find an equivalent to my identified structure, not whatever structure you perceive does it, but the structure I've identified. [00:26:35] Speaker 01: OK. [00:26:35] Speaker 01: So where is the structure he identified? [00:26:38] Speaker 02: It's on lines 22 and 23. [00:26:40] Speaker 02: It is the interface control device 910 as shown in figure 9B. [00:26:46] Speaker 02: They had the figure. [00:26:48] Speaker 02: They had the patent. [00:26:49] Speaker 02: They had the figure. [00:26:51] Speaker 02: Correct. [00:26:52] Speaker 02: And if you look at the figure, plainly on the figure are a number of different components, including the configuration registers. [00:26:58] Speaker 02: They have the specification, which explains this figure. [00:27:02] Speaker 02: And it explains that the configuration registers are what clearly link the functions. [00:27:07] Speaker 01: I understand. [00:27:08] Speaker 01: But he didn't tell them it was their obligation to figure out which portion of the specification or which portion of the interface control device is clearly linked to this function. [00:27:19] Speaker 01: In fact, that's claim construction, right? [00:27:21] Speaker 01: That's not part of the province of the jury. [00:27:24] Speaker 01: That part's the question of law, what the structure is that linked. [00:27:29] Speaker 01: So that wasn't part of what he instructed them at any point to do. [00:27:33] Speaker 01: I, me, it's my job to identify the structure. [00:27:37] Speaker 01: I'm telling you it's the interface control device, which is 910. [00:27:40] Speaker 01: It's your job, jury, not to see if they have something equivalent to 910. [00:27:45] Speaker 01: He didn't tell them they got to dig deeper into the spec and see if there is some subcomponent in this structure that they believe is critical. [00:27:53] Speaker 01: In fact, he instructed them that they're not permitted to focus on subcomponents. [00:27:59] Speaker 02: I would disagree with that, and I'd point to 11280, right at the top, continuing from the previous part of the instruction. [00:28:10] Speaker 02: My friend on the other side talks about the overall structure, but he ignores the words that follow it. [00:28:14] Speaker 02: It's the overall structure corresponding to 24. [00:28:17] Speaker 02: 11280. [00:28:17] Speaker 02: 11280. [00:28:21] Speaker 02: Right at the top, lines one and two. [00:28:23] Speaker 02: And he said, what the claim limitation is, is the overall structure [00:28:28] Speaker 02: corresponding to the claim limitation. [00:28:31] Speaker 02: And with respect to Odetics and Toro and Solomon, there is a sentence in Odetics. [00:28:36] Speaker 01: And he then goes on to say, further deconstructing or parsing is incorrect. [00:28:41] Speaker 01: And he told them, as a part of claim construction, what the overall structure corresponding to the claim function was, didn't he? [00:28:49] Speaker 02: He said the corresponding structure is this. [00:28:52] Speaker 02: And then he instructed them, they were to look to the overall part of that structure that corresponds to the claimed function. [00:29:00] Speaker 02: And so if I were on the jury, I would ask, well, what's part of this structure? [00:29:04] Speaker 02: What aspects of this structure? [00:29:07] Speaker 02: What is the overall structure that corresponds to the claimed function? [00:29:10] Speaker 01: I'm sorry. [00:29:10] Speaker 01: Do you think that's part of claim construction and for the judge or for the jury? [00:29:14] Speaker 01: Do you think that's a question of law or a question of fact? [00:29:18] Speaker 02: I think the identification of corresponding structure is certainly a question of law. [00:29:22] Speaker 01: Right. [00:29:22] Speaker 01: So can juries decide questions of law? [00:29:25] Speaker 02: No. [00:29:26] Speaker 01: I mean, sometimes we give them things for advisory verdicts or whatever, but not really. [00:29:32] Speaker 01: So if identification of the corresponding structure is a question of law, which you're right it is, and we have many cases that say that, that's for the judge to do. [00:29:40] Speaker 01: I don't see in any instruction to the jury anything about the words reconfiguration, [00:29:46] Speaker 01: I was like, I know I'm getting that wrong. [00:29:51] Speaker 01: I don't see anything from him to them to suggest that he's identified that particular component within the structure. [00:29:59] Speaker 02: I would agree that there's nothing in the jury instructions that calls out specifically the configuration registers. [00:30:05] Speaker 02: That's certainly apparently true. [00:30:07] Speaker 02: I think what short circuits this analysis some is there was a JML. [00:30:12] Speaker 02: But in addition to the JML, the district court allowed them to make an offer of proof. [00:30:16] Speaker 02: to go beyond what the trial record was. [00:30:18] Speaker 02: and to present additional efforts. [00:30:20] Speaker 01: So here's the problem with the short structure of the JMAW. [00:30:22] Speaker 01: That has nothing to do with whether the jury had in front of it the right construction and whether he changed it in JMAW. [00:30:28] Speaker 01: So for me, cards on the table. [00:30:31] Speaker 01: Configuration registers are absolutely the structure that is clearly linked to the function. [00:30:34] Speaker 01: Column 17, I think I read the pattern right. [00:30:37] Speaker 01: That's where it is. [00:30:39] Speaker 01: Cards on the table. [00:30:40] Speaker 01: You cannot perform this function without configuration registers. [00:30:43] Speaker 01: That's the only thing that's linked, and you could theoretically. [00:30:46] Speaker 01: But that's what the spec links to it. [00:30:48] Speaker 01: That's what they have to have an equivalent of. [00:30:51] Speaker 01: I'm just stuck back at that first step, which is, is that really what he told the jury to do? [00:30:56] Speaker 01: I think that's the right thing to do. [00:30:58] Speaker 01: So you win on that for me. [00:30:59] Speaker 01: Boom, done. [00:31:00] Speaker 01: But I don't know what the right thing to do is for whether he actually communicated that to the jury. [00:31:07] Speaker 02: Sure. [00:31:08] Speaker 02: Well, to go back to Judge Pro's question from earlier, this is kind of the function of JML, is to decide whether the evidence presented at trial is legally sufficient to carry their burden. [00:31:18] Speaker 02: And here, if we look at the actual evidence, what they presented was this three-way interface, which in my view is nothing more than the function itself we were citing. [00:31:25] Speaker 02: The function is mediating communicated data between a host computer A, [00:31:29] Speaker 00: Well, you're talking about the strength of the evidence. [00:31:31] Speaker 00: Can I bring you back to this jury instruction we were looking at, Mr. Fenster's argument, main argument, of the inconsistency between this jury instruction, which is important distinction, I think, which is whether it was just clarifying or whether or not there was an absolute inconsistency. [00:31:49] Speaker 00: And so the sentence is, the individual components, if any, I'm reading line 24, 25 of 11279, [00:31:56] Speaker 00: of an overall structure that corresponds to the claimed function are not claim limitations. [00:32:03] Speaker 00: Is anything you're saying or any of the discussion about Toro and Solomon and indispensable, does that contradict the fact that none of them are claim limitations? [00:32:17] Speaker 02: No, Your Honor, if we look at what Odetics actually says, there's a sentence that says the level of specificity required is exactly what it said out in the statute. [00:32:25] Speaker 02: It must be the structure that corresponds to the claim to function. [00:32:30] Speaker 02: And that is exactly, I think that's what Toro and Solomon followed up on, was that language is we have to look, and this is exactly what the jury was instructed. [00:32:37] Speaker 02: look to the function I have told you, and then look to the structure and decide what structure. [00:32:42] Speaker 01: No, the jury was not instructed. [00:32:44] Speaker 01: Where was the jury instructed? [00:32:45] Speaker 01: Look at the specification and determine what structure. [00:32:48] Speaker 02: Well, the jury was instructed to... Were they? [00:32:50] Speaker 01: Were they instructed to that? [00:32:51] Speaker 01: Because that's what you just said. [00:32:52] Speaker 02: Not in hot verba, no. [00:32:53] Speaker 01: And they shouldn't be, because that's a question of law. [00:32:55] Speaker 01: So we couldn't have it. [00:32:56] Speaker 01: He could not have instructed them the way you just said, and he did not. [00:32:59] Speaker 02: Correct. [00:33:00] Speaker 02: It wasn't in hot verba. [00:33:01] Speaker 01: Sorry, now I'm getting as upset as he was earlier. [00:33:03] Speaker 02: Apologies, but I quote directly. [00:33:05] Speaker 02: He says, the claim limitation is the overall structure that corresponds to the claimed function. [00:33:12] Speaker 02: That's what the jury was instructed. [00:33:14] Speaker 01: The jury wasn't instructed that it had any role to play in determining what that structure was, though. [00:33:19] Speaker 01: The jury was instructed that he, as the judge, determined that. [00:33:23] Speaker 01: He told them what it was. [00:33:25] Speaker 02: I mean, there's buckets of case law from this court that talk about the required specificity for a claim construction. [00:33:31] Speaker 02: I think we can get into that. [00:33:33] Speaker 02: uh... you know that that the required specificity and passed a certain point because i guess a question of fact i think what the judge did here was satisfy what he was supposed to do was to identify corresponding structure could he have uh... you know in retrospect could the jury instructions have been better certainly could the claim to structure but there was no objection on their part to the jury instruction right correct your honor and and so it may be that there was a missing jury instruction but that [00:34:02] Speaker 03: is not a ground for setting aside a verdict if there was no objection to the instruction that was given. [00:34:10] Speaker 03: So here we are in Jamel. [00:34:13] Speaker 03: And the question is whether in Jamel the district court could properly conclude that there was no evidence to support a verdict of infringement because of the indispensability of the configuration registers. [00:34:27] Speaker 03: That would seem to be the posture of the verdict. [00:34:30] Speaker 02: Right. [00:34:30] Speaker 02: And I think that there's precedent from this court, and I'd point the court to Cordis, is I think one of our best cases on this subject. [00:34:37] Speaker 02: And I think Weiland actually supports us, but we'll talk about it. [00:34:40] Speaker 02: I see everybody on time. [00:34:42] Speaker 02: But Cordis says that a district court is able to clarify its construction after trial. [00:34:47] Speaker 02: And that's to the extent there was any change. [00:34:49] Speaker 02: I don't believe there was a change. [00:34:50] Speaker 02: It was the same before and after. [00:34:52] Speaker 02: But the district court simply clarified what its construction was, and then looked to the evidence, and then allowed them to make an offer of proof beyond even what they presented at trial. [00:35:01] Speaker 03: And the district court... Well, I think you'd be in trouble if the jury here could properly have found infringement based on the record that exists. [00:35:11] Speaker 03: But my understanding of your argument is that Seymour is appropriate because the jury couldn't find infringement under the record that exists. [00:35:19] Speaker 02: correct and i think what was presented by their expert and i see that i'm out of time so i'll just briefly answer this question but i'm happy to answer any other questions i'll just briefly say what the evidence that was presented was insufficient on a legal basis they presented that a three-way interface they didn't discuss the the way [00:35:37] Speaker 00: That's what I was just going to ask, and I'm sorry to interrupt, but the jury was instructed that they have to determine whether the structure performed the recited function in substantially the same way. [00:35:52] Speaker 00: So if on J-Mall we hadn't gotten into this indispensable and all of this stuff, [00:35:57] Speaker 00: the judge just looks at the legal record and says that they could not, as a matter of law, have established that this does it substantially the same way, given what the structure is, right? [00:36:10] Speaker 02: And I think that that's analogous to what the court did here, because the way the specification tells us it does this configuration, sorry, the way it tells us it does this mediation is through the structure as programmed by the information and the configuration. [00:36:25] Speaker 00: And substantially the same way, there was a failure of proof to show that without the configuration registers, this functions in substantially the same way, right? [00:36:39] Speaker 02: Correct, Your Honor. [00:36:40] Speaker 02: I would agree. [00:36:41] Speaker 02: And if you look at the evidence they offered, it was this three-way interface. [00:36:46] Speaker 02: There was no discussion of the way that the alleged three-way interface in the accused products was configured in any way. [00:36:53] Speaker 02: And they focus on these three lines of testimony here, but all they say is that it is capable of being configured. [00:37:03] Speaker 00: Yeah. [00:37:04] Speaker 00: Just as an aside, and Mr. Fenster raised this too, Hewlett-Packard, I mean, everybody's got their two cases or whatever going different ways. [00:37:13] Speaker 00: And I mean, I think Hewlett-Packard, the situation there is demonstrably different than this. [00:37:18] Speaker 00: I think there was a real absolute change, a contradiction in the claim to instruction. [00:37:23] Speaker 00: But there's no case that calls out at me. [00:37:25] Speaker 00: I mean, you have to sort of, court is your case, or M-formation. [00:37:31] Speaker 00: But they're all a little different. [00:37:33] Speaker 00: I mean, I think would we be saying something new and different? [00:37:39] Speaker 00: Doesn't this present kind of a particular peculiar fact situation that would mean us to say something a little different, maybe more, maybe less than the prior case law has articulated? [00:37:51] Speaker 02: I would say that there's certainly no case that either party has cited that is exactly on point. [00:37:55] Speaker 02: I think Cortis is the closest case to what happened here. [00:37:58] Speaker 02: But I don't think there's anything extraordinary about looking to the legal sufficiency of the evidence presented at trial on a legally complicated issue like a means plus function equivalency and say that what was presented at trial was legally insufficient. [00:38:11] Speaker 02: And I think that's what the district court did here. [00:38:14] Speaker 02: They looked at the configuration registers and said, that is the way that's disclosed. [00:38:20] Speaker 02: There was no evidence to that point. [00:38:22] Speaker 02: And so I don't think there's anything unusual or requires any sort of stretch to say that the evidence presented at trial was legally insufficient. [00:38:29] Speaker 01: Thank you, counsel. [00:38:30] Speaker 01: We will restore Mr. Fenster's foal for a minute to the panel. [00:38:34] Speaker ?: Thank you. [00:38:35] Speaker 04: Thank you very much, Your Honors. [00:38:38] Speaker 04: I have two primary points. [00:38:41] Speaker 04: I do believe that it was an omission. [00:38:43] Speaker 04: I believe that the jury was not instructed anything about configuration registers. [00:38:48] Speaker 04: So even if you don't find that it's inconsistent, it was an omission that this court has found in Hewlett-Packard and Weiland that it's too late for the J-Mall to supplant. [00:39:00] Speaker 04: And if you do add that jury instruction, then it needs a new trial. [00:39:07] Speaker 04: HP and Weiland both stand for the proposition that you have to judge the sufficiency of the evidence by the jury instruction actually given. [00:39:15] Speaker 04: There was sufficient evidence. [00:39:18] Speaker 04: of configuration registers here. [00:39:21] Speaker 04: That's the key, right? [00:39:23] Speaker 03: If there wasn't a configuration register that would allow the jury to find that it was a configuration register, then you lose, right? [00:39:31] Speaker 04: Yes. [00:39:31] Speaker 04: I think that there clearly is sufficient evidence drawing all inferences in favor of the verdict. [00:39:37] Speaker 03: But you agreed that if there was not sufficient evidence for the jury to find a configuration register in the accused product, you lose. [00:39:45] Speaker 04: I actually disagree with that, Your Honor, respectfully, because the jury was not so instructed. [00:39:53] Speaker 03: But you never asked to have them instructed either, right? [00:39:57] Speaker 04: We didn't object to the instruction. [00:39:59] Speaker 04: We were fine with Odetics, and we prevented sufficient evidence as to the overall structure. [00:40:03] Speaker 04: But let me go through the sufficient evidence of configuration registers, because I see that's where the court is. [00:40:08] Speaker 04: May I? [00:40:09] Speaker 04: So, Youngren testified by deposition, this is at appendix 9708, 9709, and 9719, specifically that configuration registers are in the accused device. [00:40:23] Speaker 01: Yeah, but he said that accused devices as a whole have configuration registers. [00:40:28] Speaker 01: He didn't stick them inside any kind of interbase control device. [00:40:31] Speaker 04: Let me go through and remember, Your Honor, that this is [00:40:34] Speaker 04: we're testing the sufficiency of the evidence where you have to draw all inferences in favor of the verdict. [00:40:39] Speaker 01: Yeah, but it has to be the corresponding structure performing the corresponding function. [00:40:43] Speaker 04: So Mr. Koh testified that bit registers are used to disable AES encryption and that is at appendix 9731 to 9732 and again at 9696 to 9697. [00:40:58] Speaker 04: Now, [00:41:01] Speaker 04: Mr. Gomez, the expert, specifically testified to configuration registers in the accused devices that correspond to the structure. [00:41:11] Speaker 04: This was the INNIC 3607 chip and the 1861 bridge chip. [00:41:17] Speaker 04: So he did this at, this is at 970. [00:41:20] Speaker 01: He's talking about a USB register. [00:41:22] Speaker 01: He doesn't map it. [00:41:23] Speaker 04: So you're, okay. [00:41:24] Speaker 04: So your honor, if you look at 97043. [00:41:26] Speaker 01: Okay, I read your case. [00:41:27] Speaker 01: You know, I'm in, I'm all in on this one. [00:41:30] Speaker 04: Okay. [00:41:31] Speaker 04: The way this interface control device works, there's a host interface. [00:41:35] Speaker 04: The host interface in ICD was PCMCIA. [00:41:42] Speaker 04: In the accused device, it was USB. [00:41:45] Speaker 04: But the configuration registers [00:41:48] Speaker 04: Belonged to that host interface the PCM CIA Okay, the host interface and he drew he showed the jury that the USB interface in the accused devices is the same structurally equivalent and that's at nine seven four three Okay, which was his demonstrative and then his testimony on this is at ten six six eight [00:42:17] Speaker 04: to 673. [00:42:19] Speaker 01: Do either Mr. Gomez, I'm sorry, Mr. Gomez or Dr. Jones offer testimony to the extent that the USB register is what performs that claimed mediating function? [00:42:32] Speaker 04: Yes, so one, Mr. Koh said that the bit registers are used to disable AES encryption. [00:42:38] Speaker 04: Disable AES encryption means you turn off the security function, meaning it no longer must pass through or it passes through. [00:42:47] Speaker 04: Similarly, Mr. Jones testified that the USB uses configuration registers and then at appendix 12138. [00:43:00] Speaker 04: This is the demonstrative of the 3607 chip and Mr. [00:43:11] Speaker 04: Gomez testifying about is that Appendix 10-684 where he says that line is a USB register access and it's not available if AES is enabled. [00:43:23] Speaker 04: So what he's saying is that these bit registers, so there's evidence that there are configuration registers in the devices. [00:43:30] Speaker 04: That bit registers turn off encryption. [00:43:34] Speaker 04: I want to help you, I want to answer your question Judge Moore. [00:43:38] Speaker 04: So what are you, [00:43:40] Speaker 04: So one, we weren't specifically told by the judge and the jury instruction weren't specifically told that you have to show specifically configuration registers. [00:43:52] Speaker 04: But we did show configuration, and remember, configuration registers are not the corresponding structure here as instructed. [00:44:01] Speaker 04: You may have a different view and you may change the claim construction and send it back [00:44:05] Speaker 04: with a new claim construction, which would warrant a new trial. [00:44:08] Speaker 04: But the jury was not instructed that configuration registers are the corresponding structure that performed the function. [00:44:16] Speaker 04: Rather, they were instructed that it's the ICD, the interface control device, as shown in 9B. [00:44:23] Speaker 01: Of which configuration registers are a component. [00:44:26] Speaker 04: Yes. [00:44:26] Speaker 04: And what column 17 says, Your Honor, is that... [00:44:33] Speaker 04: This is mediating. [00:44:35] Speaker 04: You've got a host interface, security, and target. [00:44:37] Speaker 04: And what the ICD is this single component that interfaces all three that is capable of routing the data through the security. [00:44:46] Speaker 04: And what column 17, your honor, says is not that the configuration registers do it. [00:44:51] Speaker 04: Configuration registers are just a place to hold bits, yes or no, one or zero. [00:44:57] Speaker 04: What that configuration register does to want to skill in the art [00:45:01] Speaker 04: is tell the ICD how to route that data within that three-way interface. [00:45:11] Speaker 04: Do you route it to security or do you route it directly to the target? [00:45:15] Speaker 04: And so I believe that the district court was correct in finding that the ICD is the proper corresponding structure. [00:45:24] Speaker 04: That was the instruction, the claim construction. [00:45:27] Speaker 01: We are beyond our [00:45:29] Speaker 01: Extended rebuttal time by quite a bit, so I'm going to have to call a close. [00:45:32] Speaker 01: I thank both counsel for their arguments. [00:45:35] Speaker 01: This case is taken under submission. [00:45:36] Speaker 01: Thank you, Your Honor.