[00:00:00] Speaker 01:
Our next case is Konami Gaming, Incorporated versus High Five Games, 2022-1370.

[00:00:07] Speaker 01:
Mr. Ryan, we're ready when you are.

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

[00:00:15] Speaker 04:
May it please the court, I'm Robert C. Ryan of Holland and Hart for the appellant High Five Games.

[00:00:23] Speaker 04:
As Your Honors may recall, these two of you were on the prior panel.

[00:00:27] Speaker 04:
You have visited this case before.

[00:00:31] Speaker 04:
And I'm pleased to say you affirmed the grant of summary judgment to our client that the claims in these four patents in issue, 52 patent claims asserted, were all invalid as being functional under 112 paragraph 6.

[00:00:46] Speaker 04:
which is what governed these claims at the time, and that the claims recited a variety of functions of a general purpose computer in a gaming context, providing a game

[00:01:03] Speaker 04:
This appeal is about fees, right?

[00:01:06] Speaker 04:
Correct, Your Honor.

[00:01:07] Speaker 04:
Yes, it is.

[00:01:08] Speaker 04:
So we had the summary judgment.

[00:01:10] Speaker 04:
Then we went back down.

[00:01:11] Speaker 04:
You affirmed on Rule 36.

[00:01:13] Speaker 04:
We went back down before the district court to request fees because of our belief that the case that was brought against our client was baseless for multiple different reasons.

[00:01:25] Speaker 04:
I can't get through them all in the short time allotted.

[00:01:28] Speaker 04:
Of course.

[00:01:29] Speaker 06:
Well, obviously I was, I was not here last time.

[00:01:32] Speaker 06:
So tell me if I'm remembering the following.

[00:01:37] Speaker 06:
The district court in granting summary judgment did sue, did so on 112 F or used to be called 112 6 grounds and also on 101 grounds.

[00:01:48] Speaker 06:
And there was a certain challenge.

[00:01:52] Speaker 06:
to deciding it on 112.6 grounds because the claim's not written as a means plus function claim, but you persuaded the district court that it should be treated as such.

[00:02:04] Speaker 06:
And then there was not enough in the spec to meet 112.6 requirements.

[00:02:10] Speaker 06:
And on 101, I guess one fact, I think I'm remembering this right, but correct me if I'm wrong, that sticks in my mind was that on appeal,

[00:02:19] Speaker 06:
IGT filed an amicus brief to say, dear court, please beware of the 101 ground.

[00:02:30] Speaker 06:
A lot of gaming kinds of things should be eligible under 101.

[00:02:36] Speaker 06:
And it would be better if you just stayed away from that.

[00:02:39] Speaker 06:
Why aren't those characterizations, if accurate,

[00:02:44] Speaker 06:
enough to make at least not an abuse of discretion, the district court's determination now on the fees motion that this was not an exceptionally weak case.

[00:02:57] Speaker 04:
Thank you, your honor.

[00:02:59] Speaker 04:
Everything you said is accurate.

[00:03:01] Speaker 04:
Under 112, the key issue in the case was the law announced

[00:03:14] Speaker 04:
in the early 2000 and before time frames, repeated in Williamson en banc, but not new in that case, that a claim would be functional under 112 if it recited function without in the claim sufficient structure to perform the function.

[00:03:36] Speaker 04:
That law was black letter at the time of this litigation when it commenced in 2014.

[00:03:42] Speaker 04:
And then it was re-articulated in Williamson, en banc, as I say, which quotes a 2000 watts decision from this court as the source of that law, that it was quoting in the Williamson opinion.

[00:03:57] Speaker 04:
The point being that if their expert had been instructed that that was the law, we wouldn't be here.

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Because their expert admitted, first of all,

[00:04:10] Speaker 04:
He testified that he had not been instructed that that was law, and that his view was that the claims weren't functional because they didn't define any structure, not sufficient structure to perform the function.

[00:04:26] Speaker 04:
Had he been instructed, he would have come to the conclusion he had to because he admitted, and the district court so found in its summary judgment,

[00:04:36] Speaker 04:
that the claims did not recite sufficient structure to perform the function.

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And not only did they not recite sufficient structure, i.e.

[00:04:46] Speaker 04:
the algorithm required for the processor, claim processor, to perform the voluminous functions in the claim, there were many of them, game outcomes on display.

[00:04:57] Speaker 01:
But the district court said Konami's litigating position, while ultimately flawed,

[00:05:05] Speaker 01:
not so objectively baseless as to make the case exceptional.

[00:05:10] Speaker 04:
Yes, Your Honor.

[00:05:11] Speaker 04:
That's what he said.

[00:05:12] Speaker 04:
And that was the error.

[00:05:14] Speaker 04:
That was the legal error.

[00:05:15] Speaker 04:
If you look at it.

[00:05:16] Speaker 01:
That's within his discretion.

[00:05:19] Speaker 04:
Not if he's making a legal error, correct?

[00:05:22] Speaker 04:
If that's based on a legal error, then it's an abusive discretion necessarily.

[00:05:27] Speaker 04:
The legal error in that discussion, he's citing aristocrat.

[00:05:32] Speaker 04:
And so because aristocrat

[00:05:35] Speaker 04:
had a claim that was an express means plus function claim, had means for language in the claim.

[00:05:42] Speaker 04:
Because aristocrat said means for, and your claim in these cases, in this case, did not recite means for, they had a reasonable basis to dispute the applicability of aristocrat.

[00:05:57] Speaker 04:
First of all, that had nothing to do with the decision in this case on summary judgment.

[00:06:02] Speaker 04:
That point was not even articulated in the opinion.

[00:06:06] Speaker 04:
The point of aristocrat was not that means for was recited in the claim.

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And by the way, the expert in this case agreed.

[00:06:22] Speaker 04:
And Konami admitted multiple times in this case that its claims recited functions.

[00:06:30] Speaker 04:
So the question was not,

[00:06:32] Speaker 04:
whether Means 4 was recited in the claim.

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The question was, what was in the claim sufficient to perform the function that was recited?

[00:06:44] Speaker 05:
The problem with these cases is that you're figuring they will have a claim or the spec will.

[00:06:50] Speaker 05:
The claim hasn't been written in Means plus Functional Language.

[00:06:54] Speaker 05:
And there's some functional material in there somewhere.

[00:06:58] Speaker 05:
And then the question is, is there enough

[00:07:01] Speaker 05:
functional stopped in there to say, well, this is now going to be treated that way.

[00:07:07] Speaker 05:
That's a very fine line.

[00:07:09] Speaker 05:
I don't think their expert ever testified that there was no functional information at all.

[00:07:14] Speaker 05:
The question was whether there was functional information of a sufficient nature to carry on.

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Konami denied that there was any function at all in its claims, while at the same time, in other places, admitting

[00:07:30] Speaker 04:
that they were functional, that there were functions in the claims.

[00:07:33] Speaker 04:
And it's expert making those admissions.

[00:07:36] Speaker 04:
Konami's arguments were all over the place.

[00:07:39] Speaker 04:
Pardon me?

[00:07:39] Speaker 05:
Function for what purpose?

[00:07:41] Speaker 04:
To perform the game, to provide the outcome at the interface.

[00:07:46] Speaker 05:
Their side was to say, well, but what the function you're pointing to is not necessary for the game.

[00:07:51] Speaker 04:
Well, the function was necessary for the game.

[00:07:54] Speaker 04:
The claims recited functions.

[00:07:57] Speaker 05:
But that's to have a different point of view about what was being discussed.

[00:08:01] Speaker 05:
All I'm saying is the question in a means plus function claim, especially where it hasn't been written in that way, there's a question.

[00:08:10] Speaker 04:
Right, and that question is?

[00:08:11] Speaker 05:
What's the purpose of the function and all of this?

[00:08:13] Speaker 04:
Well, the question is, and was under Williamson and was prior to Williamson,

[00:08:19] Speaker 04:
established before 2000 by this court, was the function recited in the claim supported by structure either in the claim or in the specification sufficient to perform the function?

[00:08:33] Speaker 04:
It was that.

[00:08:34] Speaker 05:
Well, I've been around before Williamson.

[00:08:36] Speaker 05:
I've been around for a long time.

[00:08:38] Speaker 01:
And that's the problem of the states.

[00:08:39] Speaker 05:
And the problem, and oh my gosh, what's the answer to the question, has been plaguing me ever since I greeted this, when they said, gee whiz, it doesn't say mean plus function, but it might be.

[00:08:50] Speaker 04:
Yes.

[00:08:51] Speaker 05:
And then there's always a debate.

[00:08:53] Speaker 05:
And what I understood as a district court to say here was there was a debate, and you won the debate, but the debate wasn't frivolous.

[00:09:03] Speaker 04:
The debate was frivolous because of what their expert admitted.

[00:09:06] Speaker 04:
Their expert admitted that there was not sufficient structure to perform the claim function, either in the claim or in the spec.

[00:09:16] Speaker 04:
This case should never have been brought.

[00:09:18] Speaker 04:
It was a waste of time.

[00:09:20] Speaker 04:
It cost our client many millions of dollars.

[00:09:22] Speaker 04:
We told them early on, you're going to lose this case.

[00:09:26] Speaker 04:
your claim to recite functions without sufficient structure to perform either in the claim or in the specification.

[00:09:34] Speaker 04:
Their expert admitted at his deposition that that was the case.

[00:09:39] Speaker 04:
This case should have been over at least by that time when their expert admitted at his deposition.

[00:09:45] Speaker 05:
Don't you actually win the argument on the 101 point as well to prevail?

[00:09:49] Speaker 04:
No.

[00:09:51] Speaker 04:
The question is whether the case is exceptional.

[00:09:54] Speaker 04:
And that means, were any of the legal arguments baseless?

[00:09:59] Speaker 04:
The non-trivial, important arguments in the case, baseless?

[00:10:03] Speaker 05:
Can a case be partially exceptional and partially non-exceptional?

[00:10:07] Speaker 04:
That has not been argued in the case, Your Honor.

[00:10:10] Speaker 04:
That has not been argued in this case.

[00:10:11] Speaker 05:
Is that going to be present for us in this case?

[00:10:14] Speaker 04:
I don't think so, because it's not argued by the parties.

[00:10:17] Speaker 04:
The parties pitched this to the court under the party presentation rule as an all or nothing proposition.

[00:10:24] Speaker 04:
The case is either exceptional or not.

[00:10:27] Speaker 04:
There's not an argument that fees should be apportioned, is what I believe your honor is saying.

[00:10:33] Speaker 05:
What's the court supposed to do if it's so that there are two grounds that were presented in a case?

[00:10:40] Speaker 05:
On one ground, it's an exceptional case.

[00:10:43] Speaker 05:
On the other, it's not.

[00:10:44] Speaker 04:
Because I think the case is either exceptional or it's not.

[00:10:47] Speaker 04:
And fees should be awarded based on whether it's exceptional or it's not.

[00:10:51] Speaker 04:
And that issue is not before the court as to whether to divide the baby or fees based on differing arguments that were presented in the case.

[00:11:00] Speaker 06:
Can I just ask you for a joint appendix site if you happen to have it to the, you referred repeatedly to the testimony of the other side's expert.

[00:11:12] Speaker 06:
Conceding, if that's the right word, that there is no meaningful structure in the claim.

[00:11:20] Speaker 03:
May I bring it up on the reply?

[00:11:24] Speaker 03:
Thank you, Your Honor.

[00:11:25] Speaker 03:
I appreciate the question very much.

[00:11:27] Speaker 01:
We will reserve the rest of your time.

[00:11:29] Speaker 01:
Mr. Holleberger.

[00:11:31] Speaker 07:
Good morning, Your Honors.

[00:11:32] Speaker 07:
May it please the Court.

[00:11:33] Speaker 07:
Chris Holleberger of Howard and Howard Attorneys on behalf of Konami Gaming.

[00:11:37] Speaker 07:
As Mr. Ryan was just speaking of both the abstractness and the means plus function.

[00:11:42] Speaker 07:
In this case, neither of those are warranting an exceptional case finding.

[00:11:47] Speaker 06:
Would you agree that if one of them

[00:11:49] Speaker 06:
was frivolous, truly so weak, they needed to only win one of them to win the whole case.

[00:11:59] Speaker 07:
I think in the totality of the circumstances, it would be within the discretion of the court to look at both of them.

[00:12:04] Speaker 07:
And if one of them was so weak that it was exceptional, whether that court would find grounds to hold the whole case exceptional, I think it's a case by case situation.

[00:12:15] Speaker 07:
And I think in octane, the issue that the court has charged

[00:12:19] Speaker 07:
this court and district courts with is whether or not it stands out from all the other cases.

[00:12:23] Speaker 07:
And I think the most instructive case is the three versus biomedical, which is what we raised in our response, which wasn't addressed by high five and reply, where you had an IPR ruling that the claims were means plus function.

[00:12:39] Speaker 07:
There was not sufficient structural limitations.

[00:12:42] Speaker 07:
It went back to the district court.

[00:12:44] Speaker 07:
The plaintiff there, the patent holder, continued to assert means plus function.

[00:12:49] Speaker 07:
And they did so with further limitations.

[00:12:51] Speaker 07:
Now, it's a distinction.

[00:12:53] Speaker 07:
That claim recited means.

[00:12:55] Speaker 07:
Konami's patents never recited means.

[00:12:57] Speaker 07:
And we'll talk about Mr. Akers in a moment.

[00:13:00] Speaker 07:
In that case, they continued.

[00:13:02] Speaker 07:
They alleged by the defendant that the patentee relied on expert testimony, similar to what Hi-5 is doing for Mr. Akers.

[00:13:13] Speaker 07:
And the court said you did not abuse your discretion.

[00:13:15] Speaker 07:
This court said the district court did not abuse its discretion in denying attorney's fees.

[00:13:20] Speaker 07:
And that's paralleling High Five's arguments here.

[00:13:26] Speaker 07:
In contrast, the cases they rely on, in particular, Rothschild, where you had Patent Troll, who had declarations from the patentee and the Patent Council,

[00:13:41] Speaker 07:
saying they never evaluated the prior art.

[00:13:44] Speaker 06:
Can I ask, does it really matter whether the Rothschild plaintiff was a troll or not?

[00:13:56] Speaker 06:
Either the arguments were frivolous or not.

[00:13:58] Speaker 06:
Does it really matter whether the plaintiff was in a product creating business or was a university or was a

[00:14:09] Speaker 06:
um, inventor financing outfit that paid for its financing by, um, um, filing lawsuits.

[00:14:18] Speaker 07:
So, uh, in that particular case, the reason the court characterized it, they didn't actually characterize your honor as patent troll.

[00:14:25] Speaker 06:
Right.

[00:14:26] Speaker 06:
That's right.

[00:14:26] Speaker 07:
I guess I was suggesting that you should have left the word out.

[00:14:29] Speaker 07:
Well, yes, correct.

[00:14:31] Speaker 07:
To be more precise, it was 58 different lawsuits on a wide ranging technology from like alarm clocks to

[00:14:38] Speaker 07:
something on the very other end of it.

[00:14:40] Speaker 07:
I forget what it was.

[00:14:41] Speaker 07:
But they weren't meaningful, I suppose, patents on key technology.

[00:14:47] Speaker 07:
Konami spent years developing this game and promoting it.

[00:14:50] Speaker 07:
And it was featured in many of their customers.

[00:14:54] Speaker 07:
And so much, in fact, that it started being copied by the likes of the high fives and the other lawsuits against Mark Studios, which I want to talk about briefly because the reasonableness.

[00:15:03] Speaker 07:
It's not just Konami that's saying this is reasonable.

[00:15:06] Speaker 07:
You had the p-tab, who also did not construe the clamped-with-meaning-plus function.

[00:15:11] Speaker 07:
High Five didn't assert that they were means plus function in that proceeding.

[00:15:15] Speaker 07:
Now, they drop a footnote and they say, we're only doing that for this proceeding.

[00:15:20] Speaker 07:
But is Konami reasonable in finding the claims are not means plus function?

[00:15:24] Speaker 06:
So 101, obviously, I think it was an IPR, right?

[00:15:29] Speaker 06:
Correct.

[00:15:29] Speaker 06:
So 101 was not an issue before the board.

[00:15:32] Speaker 06:
And 112.6 would not have been before the board as an invalidity ground.

[00:15:41] Speaker 06:
So I'm not sure this matters, but in what sense did something before the board bear on reasonableness or non-extreme weakness or something of the position here?

[00:15:55] Speaker 07:
Sure.

[00:15:56] Speaker 07:
Judge Fronto, in the IPR context, High Five's position today and in this exceptional case standard is, our grounds were so baseless that no one could have construed these claims without means plus function, and they're indefinite.

[00:16:11] Speaker 07:
Yet in their IPR petition, they construed the claims.

[00:16:15] Speaker 05:
And they had a basic sort of- They took a position in front of the IPR where they're saying it's not a means-plus-function claim.

[00:16:22] Speaker 07:
I'm sorry, Judge Clinger.

[00:16:23] Speaker 05:
They took a position in front of the patent office saying it's not a means-plus-function claim.

[00:16:27] Speaker 05:
That is correct.

[00:16:28] Speaker 05:
And you're saying, well, they ought to be held to that.

[00:16:29] Speaker 05:
How can they possibly tell us to change them up?

[00:16:33] Speaker 05:
Certainly, it shows that we weren't unreasonable.

[00:16:35] Speaker 05:
That particular take on what happened to the PTO is not what the judge here relied on.

[00:16:41] Speaker 05:
Well, you read the judge's opinion.

[00:16:45] Speaker 05:
He didn't say, well, the claim construction piece of the IPR is humming in my ear.

[00:16:53] Speaker 05:
He said the fact they did an institute is humming in my ear.

[00:16:57] Speaker 05:
And he's wrong about that.

[00:17:00] Speaker 05:
Yes?

[00:17:01] Speaker 05:
I mean, he did say that.

[00:17:02] Speaker 05:
Yes, he did say that.

[00:17:03] Speaker 05:
That was just when you were being honest with me.

[00:17:05] Speaker 05:
He did say that, yes.

[00:17:06] Speaker 07:
I wish he would have said as you've articulated it, quite frankly.

[00:17:09] Speaker 05:
But it seems to me like you're sort of humming in the wrong direction.

[00:17:13] Speaker 05:
The other side got up here and said, your expert in the trial, in essence, confessed that this claim fails as a matter of law.

[00:17:27] Speaker 05:
And what's your response to that?

[00:17:28] Speaker 05:
Right.

[00:17:29] Speaker 05:
So we cite in our brief.

[00:17:30] Speaker 05:
What did your expert say?

[00:17:32] Speaker 05:
Are they wrong?

[00:17:33] Speaker 05:
I think they are wrong.

[00:17:34] Speaker 05:
Don't you think you have an obligation to tell us, in light of the fact that that's his best argument?

[00:17:39] Speaker 07:
Well, so, and I would say this, right?

[00:17:41] Speaker 06:
His argument is... Can you give me a page in the appendix to look at?

[00:17:45] Speaker 06:
Because we're talking about what the expert said.

[00:17:47] Speaker 06:
I'm sure it would help to look at it.

[00:17:49] Speaker 07:
Well, so all I can say is what we provided in our response, which is at... So nobody can tell us in the record where this testimony is?

[00:17:59] Speaker 07:
Well, page 9 and 10 of our red book brief.

[00:18:02] Speaker 05:
Yeah, that's not in the record, I don't believe.

[00:18:04] Speaker 05:
We're talking about the record in the case that was up here before when we ruled 36th.

[00:18:09] Speaker 06:
Or in this, in the joint appendix.

[00:18:11] Speaker 06:
It would be quite remarkable if this central point, and maybe it's true, but it would be remarkable if this central point does not actually appear in the appendix.

[00:18:20] Speaker 07:
As I let them point that out to you, as opposed to me helping them.

[00:18:24] Speaker 07:
But what I would say is, when you look at what we cite in our response brief, and this is at pages 9 and 10, where we put, and this is in the record.

[00:18:31] Speaker 05:
Well, you're both putting a twist on what was a record in the earlier case, right?

[00:18:38] Speaker 05:
And I don't blame you for putting a twist on it, right?

[00:18:41] Speaker 07:
So the question is, whose twist is right?

[00:18:43] Speaker 07:
So I would tell you, Judge Cleverger, it doesn't matter.

[00:18:46] Speaker 07:
And here's why.

[00:18:47] Speaker 07:
Under this analysis, was Konami reasonable?

[00:18:51] Speaker 07:
And as part of that, you have to look at, we were a claim without means plus function.

[00:18:57] Speaker 07:
It wasn't written that way.

[00:19:00] Speaker 07:
Correct.

[00:19:00] Speaker 07:
But the word is processor.

[00:19:01] Speaker 07:
And claim one in the representative of the 896 patent is processor.

[00:19:05] Speaker 07:
Konami had decisions of this court as well as district courts that were finding the word processor was a structural term that was not subject to means plus function.

[00:19:16] Speaker 07:
That was our basis for moving forward.

[00:19:18] Speaker 07:
And he talks about, High Five talks about Williamson and wants to say that we cited the wrong law.

[00:19:24] Speaker 07:
We literally gave them the standard from the first sentence on page 1349 of Williamson.

[00:19:29] Speaker 07:
The second sentence, which is what they want to focus on, says, the challenger can rebut that.

[00:19:35] Speaker 07:
And it goes on to say, sufficiently definite structure.

[00:19:39] Speaker 07:
That's not Konami's burden.

[00:19:41] Speaker 07:
And we have a foremost expert in gaming technology who said processor to him is a structural term.

[00:19:49] Speaker 07:
The claim is a gaming machine with a processor.

[00:19:52] Speaker 07:
800,000 of those existed at the time for virtual slot machines.

[00:19:57] Speaker 06:
Do you have in your mind what the testimony of your expert that the other side thinks is so key, some kind of concession that your expert made to the effect, and I'm summarizing it here, perhaps incorrectly, that the claim does not recite structure that would perform the function.

[00:20:21] Speaker 07:
Sure.

[00:20:22] Speaker 07:
Judge Boulware examined Mr. Akers during our four-day omnibus claim construction hearing.

[00:20:28] Speaker 07:
And so he was on the stand and Judge Boulware phrased a question in the context of, would a off-the-shelf processor be able to do what this claim says?

[00:20:41] Speaker 06:
I mean, I think Mr. Akers... You have no idea how frustrating this is.

[00:20:47] Speaker 06:
You cannot give me the page where I can turn my eyes and look at it and start to talk about the reality of what was said.

[00:20:55] Speaker 07:
Hold on.

[00:20:55] Speaker 07:
Let me see if I can.

[00:20:59] Speaker 07:
So long as you don't hold it against me if I find it, your honor.

[00:21:02] Speaker 07:
And maybe Mr. Ryan has already found it.

[00:21:05] Speaker 07:
I can tell you what he said.

[00:21:07] Speaker 02:
Probably 2510 area.

[00:21:08] Speaker 02:
APPX2671.

[00:21:16] Speaker 06:
Sorry.

[00:21:17] Speaker 06:
I'm sorry.

[00:21:17] Speaker 06:
20, please.

[00:21:19] Speaker 04:
2671, Rob.

[00:21:20] Speaker 04:
2671.

[00:21:22] Speaker 06:
That's a deposition.

[00:21:24] Speaker 04:
Yes.

[00:21:24] Speaker 04:
And his declaration is at 1378 through 79.

[00:21:31] Speaker 04:
And there's more that's recited in our briefs on the topic.

[00:21:34] Speaker 02:
Thank you.

[00:21:36] Speaker 02:
Thank you, Rob.

[00:21:37] Speaker 02:
Do you have a page on 2671 of the transcript?

[00:21:41] Speaker 02:
Do I have the page?

[00:21:42] Speaker 02:
I have the citation here in my notes.

[00:21:45] Speaker 07:
Want to proceed, counsel?

[00:21:47] Speaker 07:
Yeah, Your Honor, looking at 2671, I don't see the question as to whether or not processor is a sufficiently structural term.

[00:21:55] Speaker 07:
Maybe Mr. Ryan will address it on his.

[00:21:57] Speaker 07:
But in addition, it wasn't just the fact that High 5 argued to the PTAB that these claims weren't means plus function.

[00:22:05] Speaker 07:
In the Sister District Court case before Judge Dorsey, she found and construed the 896 patent without going to means plus function.

[00:22:16] Speaker 07:
If that's not a good sign that Konami's positions are reasonable.

[00:22:21] Speaker 07:
Well, was it challenged in that case?

[00:22:24] Speaker 07:
The claim constructions issues were challenged.

[00:22:26] Speaker 07:
Did the other side, AMWAL 100, state they were means?

[00:22:30] Speaker 05:
How do we know the other case was on all fours, perfectly parallel on the rest?

[00:22:34] Speaker 07:
So Konami was asserting exactly the same patents and certainly the same claimants?

[00:22:38] Speaker 05:
I mean, nobody told us.

[00:22:39] Speaker 05:
The briefs don't tell us.

[00:22:41] Speaker 05:
Just this reference to the other case, the other case may or may not be pertinent.

[00:22:46] Speaker 05:
Whether it's pertinent depends on a lawyer stacking the other case up and saying this is exactly the same question, the same kind of testimony, and yada, yada, yada.

[00:22:55] Speaker 05:
And that type of explanation doesn't exist in the briefing that's in front of us.

[00:23:01] Speaker 05:
I'm just supposed to believe you when you come and tell me a general explanation of what happened in a specific setting.

[00:23:10] Speaker 05:
doesn't work that way, sir.

[00:23:12] Speaker 05:
Your Honor, I would say in our briefs, we cite the opinion from that other case, and it's in the... You cite the opinion, and I'm supposed to go read it, and I'm supposed to go get the briefs in that case, and I'm supposed to do all this work that you're supposed to do for me?

[00:23:25] Speaker 05:
Is that really the way you think this system functions?

[00:23:27] Speaker 07:
Of course not, Your Honor, and I would say Judge Dorsey did that work for you when she wrote the opinion.

[00:23:32] Speaker 07:
And she didn't even raise means plus function.

[00:23:35] Speaker 07:
That wasn't raised by the other side in that case.

[00:23:38] Speaker 07:
So it wasn't pertinent.

[00:23:40] Speaker 07:
Which shows the reasonableness of Konami in believing means plus function didn't apply.

[00:23:47] Speaker 07:
You have an AmLaw 100 firm who's not raising that argument.

[00:23:52] Speaker 07:
Pi 5 is the only defendant that raised this argument.

[00:23:55] Speaker 07:
And so if you're trying to adjudicate whether we were reasonable, Konami was reasonable.

[00:23:58] Speaker 05:
Failure to raise an argument in another case is grounds for saying that.

[00:24:03] Speaker 05:
position taken in this case doesn't have any merit?

[00:24:07] Speaker 07:
No.

[00:24:07] Speaker 07:
I'm saying that Kami was reasonable in this case as evidence.

[00:24:12] Speaker 07:
You have lots of evidence.

[00:24:13] Speaker 07:
But the conduct of Judge Dorsey and the other defendants would demonstrate we were reasonable.

[00:24:19] Speaker 07:
We weren't so far gone.

[00:24:21] Speaker 07:
And it wasn't so plainly obvious that we were wrong in asserting means plus function.

[00:24:27] Speaker 07:
But if I can turn to the abstractness is, again, as the case has evolved,

[00:24:33] Speaker 07:
Under Aldous, this was not a financial outcome case.

[00:24:38] Speaker 07:
The claimer cites a gaming machine, and when Inray Smith came out, we evaluated whether or not we were gaming rules.

[00:24:47] Speaker 07:
And quite frankly, the conclusion that we came up with was we weren't.

[00:24:51] Speaker 07:
High five will cite to the testimony of Mr. Yoshimi, but that's not conclusive on whether we were gaming rules.

[00:25:01] Speaker 07:
This court said in Inray Smith, if you have a new deck of cards, you can still be patent eligible if you have game rules.

[00:25:10] Speaker 07:
And that was what Konami set forth.

[00:25:12] Speaker 07:
We defined the structure of our reels and the strips such that each game, it was a new deck of cards in essence.

[00:25:19] Speaker 07:
And so under the Inray Smith exception, we continued with that argument.

[00:25:23] Speaker 07:
Again, that was reasonable, and that's what Judge Bullwer held to be reasonable.

[00:25:29] Speaker 07:
Turning just quickly.

[00:25:31] Speaker 07:
In addition to the cases we talked about, Rothschild, they also cite High Five relies on RoMAG.

[00:25:39] Speaker 07:
And again, it's whether or not we stand out from other cases.

[00:25:41] Speaker 07:
In RoMAG, that case clearly stands for attorneys fees, because you had a district court that excluded litigation misconduct.

[00:25:50] Speaker 07:
And that was not something that this court did in Judge Bulwer's decision.

[00:25:56] Speaker 07:
And Your Honors, as my time is about to expire, if there are any other questions, I'd be happy to address them.

[00:26:01] Speaker 01:
Thank you, Council.

[00:26:02] Speaker 07:
Thank you.

[00:26:03] Speaker 01:
Mr. Ryan, close to four minutes for a bottle.

[00:26:08] Speaker 04:
Yes, so I read into the record some of the citations.

[00:26:12] Speaker 04:
There is more of it in our briefs.

[00:26:14] Speaker 04:
It was central to this case.

[00:26:16] Speaker 04:
It is not the only reason.

[00:26:17] Speaker 04:
There was a lot, and we addressed this in our briefs.

[00:26:19] Speaker 04:
There were a lot of reasons that this case was baseless, the contention that the claims had no function.

[00:26:25] Speaker 05:
Can you come back to A2671, 1378, 79, and whatnot?

[00:26:31] Speaker 05:
And I think those were the, we had this debate earlier, and I think,

[00:26:38] Speaker 05:
I mean, it seems to me that you have something on your side if you can say, well, at the time they brought their lawsuit, their other experts said, you shouldn't have brought the lawsuit because there's no merit at all.

[00:26:50] Speaker 05:
So it seems to me that you need to.

[00:26:54] Speaker 05:
Take that and show us in that language.

[00:26:56] Speaker 04:
Yes.

[00:26:57] Speaker 05:
And so I'm all ears.

[00:26:59] Speaker 04:
Yes, Your Honor.

[00:26:59] Speaker 04:
Thank you.

[00:27:00] Speaker 04:
So it's at those pages.

[00:27:02] Speaker 04:
It's at lines 93, page 93 in the deposition.

[00:27:07] Speaker 04:
At line 11, it starts.

[00:27:09] Speaker 05:
At 93 in the depot is what page in the record act?

[00:27:13] Speaker 04:
Yes, and that's APPX 2671, acres deposition.

[00:27:18] Speaker 04:
And in his declaration, at page 90, lines 2 through 91,

[00:27:24] Speaker 04:
line 14, and page 92, line 12 through 93, line 11, at APPX 1378 through 79, his declaration.

[00:27:36] Speaker 04:
He admits, admitted repeatedly below, and this is uncontested.

[00:27:45] Speaker 04:
Konami did not contest this in their brief.

[00:27:48] Speaker 05:
Can you read them to us?

[00:27:49] Speaker 04:
Yes.

[00:27:51] Speaker 05:
First, what the question presented was, and then what the answer is.

[00:27:55] Speaker 06:
Is this all about how, if you have a processor, you have to program it to do what you want it to do?

[00:28:01] Speaker 06:
Yes.

[00:28:01] Speaker 06:
OK.

[00:28:02] Speaker 04:
That's correct, Your Honor.

[00:28:03] Speaker 04:
He testified that, quote, processor, unquote, and, quote, game controller, unquote, claim elephants were insufficient to perform the associated claimed

[00:28:15] Speaker 04:
function because detailed software programming is required, which was not in the claim and was not in the specification.

[00:28:28] Speaker 04:
The specification, in fact, expressly states in columns five through seven that programming is required, but that programming is not disclosed.

[00:28:41] Speaker 04:
I believe I'm out of time, Your Honor.

[00:28:42] Speaker 04:
I'm happy to answer any questions or go further if you like.

[00:28:45] Speaker 04:
You're not out of time.

[00:28:45] Speaker 04:
You have another minute.

[00:28:47] Speaker 04:
OK.

[00:28:47] Speaker 04:
Thank you.

[00:28:48] Speaker 04:
Thank you.

[00:28:49] Speaker 04:
OK.

[00:28:50] Speaker 04:
So a couple things.

[00:28:52] Speaker 04:
In the IPR, and this is in the briefs, we explain in detail, that we said in our IPR response,

[00:29:05] Speaker 04:
We are not taking a position under 112 in the IPR.

[00:29:11] Speaker 04:
We reserve that for later.

[00:29:13] Speaker 04:
We didn't want to present it to the Patent Office.

[00:29:16] Speaker 04:
We wanted to say that if there was going to be a court fight.

[00:29:19] Speaker 04:
There's nothing wrong with that.

[00:29:21] Speaker 05:
You didn't take a position one way or the other.

[00:29:23] Speaker 04:
Correct.

[00:29:24] Speaker 04:
That's what we said.

[00:29:25] Speaker 05:
So you weren't saying it's not a maintenance function claim.

[00:29:28] Speaker 04:
Well, that's right.

[00:29:29] Speaker 05:
So if an institution had been granted, then it would have been presumably a mean plus function coin?

[00:29:35] Speaker 05:
It could be.

[00:29:36] Speaker 05:
No, but it would have been, because you're not challenging at all.

[00:29:39] Speaker 05:
So you're saying, go ahead and run this IPR and invest the time and effort of the patent office on the other side.

[00:29:47] Speaker 05:
We're agreeing that it's not a mean plus function coin.

[00:29:51] Speaker 04:
No, we're not either agreeing or disagreeing.

[00:29:53] Speaker 05:
We're going to reserve that for later.

[00:29:55] Speaker 05:
You're allowing the whole enterprise to go forward, right?

[00:29:59] Speaker 04:
Well, we were, at the time, since I was lead counsel, I can tell you, we didn't want to get into 112 and get a partial decision from the patent office.

[00:30:08] Speaker 04:
We wanted to reserve that for the court.

[00:30:11] Speaker 06:
Proceed.

[00:30:12] Speaker 06:
Did the petition in that case assert, as a matter of claim construction, that this was meansful dysfunction?

[00:30:20] Speaker 04:
No.

[00:30:21] Speaker 04:
And the reason was Konami had been contending that his claims were broader.

[00:30:25] Speaker 06:
And did the board, in denying institutions, say, we construe the claim as follows?

[00:30:33] Speaker 04:
No, it did not.

[00:30:34] Speaker 06:
It didn't get into anything under 112.

[00:30:37] Speaker 04:
It didn't get into 112 at all.

[00:30:39] Speaker 06:
Did it get into claim construction?

[00:30:40] Speaker 04:
I believe it did some claim construction, yes, Your Honor.

[00:30:43] Speaker 06:
But it went ahead and construed it?

[00:30:44] Speaker 04:
Yes, very broadly, without 112.

[00:30:46] Speaker 06:
That was not a 112-6 construction.

[00:30:49] Speaker 06:
without referring to the fact that it was not.

[00:30:52] Speaker 06:
It was just proceeding to say, here we have a processor.

[00:30:55] Speaker 06:
All processors have to be programmed and whatever the debate was about claim construction.

[00:31:02] Speaker 04:
They didn't get into the programming aspect.

[00:31:05] Speaker 04:
They just addressed the word processor by itself.

[00:31:09] Speaker 04:
As your honors may know, the patent office is notorious, unfortunately, for not applying in Ray Donaldson.

[00:31:18] Speaker 04:
and not properly construing claims under 112.

[00:31:22] Speaker 04:
So we didn't want to get into that fight in front of the patent office.

[00:31:25] Speaker 04:
We wanted to reserve it for the court and said we would expressly in our petition.

[00:31:31] Speaker 01:
Thank you, counsel.

[00:31:32] Speaker 01:
You are now out of time.

[00:31:33] Speaker 04:
Thank you very much.

[00:31:34] Speaker 01:
The case is submitted.