[00:00:00] Speaker 05:
The first is number 22, 1386 Roku Inc.

[00:00:06] Speaker 05:
versus ITC.

[00:00:08] Speaker 05:
Mr. Hall, one very much.

[00:00:15] Speaker 02:
Thank you, Judge Dyck.

[00:00:17] Speaker 02:
May it please the court?

[00:00:19] Speaker 02:
We have three issues on the panel.

[00:00:20] Speaker 02:
I'd like to address all three, so I'll try to be efficient.

[00:00:25] Speaker 02:
Probably best to start with the two threshold questions of standing in domestic industry.

[00:00:30] Speaker 05:
I think the brief's mark is confidential, the assignment language and the 2004 and 2012 assignments.

[00:00:41] Speaker 05:
I mean, that really seems not appropriate.

[00:00:45] Speaker 02:
I apologize, Your Honor, if we have overdesigned.

[00:00:49] Speaker 02:
I know we complied with the limits of words to mark as confidential.

[00:00:58] Speaker 02:
But I apologize.

[00:00:59] Speaker 05:
And is there any reason why the assignment language should be confidential?

[00:01:02] Speaker 00:
Not on our side, Your Honor.

[00:01:03] Speaker 00:
I mean, aren't the assignments are usually provided to the PTO and public record, right?

[00:01:09] Speaker 02:
It's not an issue on our side, Your Honor.

[00:01:16] Speaker 02:
So I'm hearing no objection from you.

[00:01:19] Speaker 05:
OK, well, we'll treat it as not competent.

[00:01:22] Speaker 02:
OK.

[00:01:23] Speaker 02:
Go ahead.

[00:01:23] Speaker 02:
We'll start this time over again.

[00:01:26] Speaker 02:
Thank you, Your Honor.

[00:01:27] Speaker 02:
With respect to standing, the

[00:01:32] Speaker 02:
ALJ made only one finding of fact with respect to the trial record, and that was with respect to Mr. Barnett's understanding of his 2004 employment agreement, which language used there was that UEI shall own, which this court has held, and OMNMEDSAI does not reflect a present assignment, but rather an intent

[00:01:57] Speaker 02:
to assign in the future.

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So that was not enough.

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UEI recognized that that was the basis of the holding of the ALJ in its brief to the commission.

[00:02:07] Speaker 02:
But my understanding is nobody's much relying on that.

[00:02:10] Speaker 02:
And nobody is relying on that anymore, Your Honor.

[00:02:13] Speaker 02:
Now on appeal, the commission is saying that the ALJ based its decision

[00:02:19] Speaker 02:
on the 2012 assignment.

[00:02:21] Speaker 02:
But that's not so.

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Although the ALJ did.

[00:02:24] Speaker 05:
It really did.

[00:02:25] Speaker 05:
The truth is, it's quite confusing as to what the ITC did.

[00:02:29] Speaker 05:
Originally, they seemed to rely on the 2012 agreement.

[00:02:32] Speaker 05:
And yet, in the final decision, they seemed to approve the ALJ's decision, which itself is unclear, but seems to rely on the 2004.

[00:02:43] Speaker 02:
It does seem to rely on 2004.

[00:02:46] Speaker 02:
What we know with respect to 2012 is that all the ALJ did is note the commission's own decision reversing summary judgment in Roku's favor.

[00:02:58] Speaker 02:
But the ALJ, and this is on page 140 of the appendix, recognized that in that earlier interlocutory appeal, the commission had not purported to resolve as a matter of law whether UEI had satisfied its burden to show standing.

[00:03:14] Speaker 05:
But cut to the chase.

[00:03:16] Speaker 05:
Why isn't the 2012 assignment sufficient?

[00:03:20] Speaker 02:
Well, Your Honor, what the 2012 assignment

[00:03:22] Speaker 02:
does, and this is a language that is quoted on page 140 of the appendix in the ALJ's decision, is assign Mr. Barnett's interest in the priority applications.

[00:03:36] Speaker 02:
But it is a question of fact.

[00:03:38] Speaker 05:
It actually assigns his interest in the invention.

[00:03:41] Speaker 02:
In the invention in the priority applications.

[00:03:46] Speaker 02:
But the question is whether the 196 patent is the same invention.

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And that is an issue that Roe can contest.

[00:03:56] Speaker 02:
And it contested at trial, including through- I'm going to interrupt you for a minute.

[00:03:59] Speaker 00:
You're saying, keep on referring to priority applications.

[00:04:02] Speaker 00:
But do I remember correctly that the exact languages, divisionals, continuations,

[00:04:07] Speaker 00:
Maybe not continuation in part, but it does say continuations.

[00:04:10] Speaker 02:
Yes, it does say continuations, but not continuations in part.

[00:04:14] Speaker 02:
And continuations in part differ from continuations specifically because they may include additional material, a different invention.

[00:04:24] Speaker 02:
To which this person, Barnett, did not contribute, right?

[00:04:28] Speaker 02:
Well, that is a question of fact, Your Honor.

[00:04:31] Speaker 02:
And it depends upon whether the invention in the 19th century

[00:04:35] Speaker 02:
What's that, Your Honor?

[00:04:36] Speaker 05:
I thought it was accepted that he didn't contribute.

[00:04:40] Speaker 02:
No, Your Honor, that was his testimony in an affidavit.

[00:04:43] Speaker 02:
But at trial, they did not put on any additional testimony from Mr. Barnett on that fact.

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He instead testified with respect to the 2004 agreement, not the 2012 assignment.

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So there was no additional testimony at trial on this.

[00:04:58] Speaker 02:
there may not be additional testimony but the records on disputed that he didn't contribute well your honor if that's is not true well your honor it's not clear invention in in the one nine six claimed by the one nine six patent is the same invention that he assigned user questions of fact

[00:05:18] Speaker 02:
It may be that the ALJ... Well, Your Honor, we do contest that what is claimed in 196 is the same invention that Mr. Barnett reported to assign in 2012.

[00:05:32] Speaker 02:
But at the base, our objection is that that is a finding that has to be made in the first instance by the ALJ or the commission.

[00:05:42] Speaker 02:
They have not made it.

[00:05:43] Speaker 02:
The ALJ simply refers back

[00:05:45] Speaker 02:
to the commission's interlocutory appeal ruling, which the commission recognized was just on the basis of the summary judgment record.

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It can't be a ruling on the basis of the trial record, which doesn't exist yet.

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And the ALJ does not make independent findings with respect to the trial record on that point, as he would have to.

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As this court may be aware, the Supreme Court has addressed this

[00:06:09] Speaker 02:
in the case of Ortiz versus Jordan, which is at 562 US 180, which it said that after trial, we don't review summary judgment determinations.

[00:06:20] Speaker 02:
We review the facts established at trial.

[00:06:24] Speaker 02:
The findings of fact have to be made on the basis of that record, not the summary judgment record.

[00:06:29] Speaker 02:
but there have not been factual findings by the Commission or the ALJ whose findings the Commission adopted on the trial record with respect to the 2012 assignment.

[00:06:40] Speaker 05:
In the absence of such findings... Did you ever dispute before the ALJ that this guy was not the inventor of the new matter and the continuation of our... Well, we said that it was their burden to establish

[00:06:56] Speaker 02:
and that he would have to present testimony on that.

[00:07:00] Speaker 02:
There was no additional testimony at the trial on that.

[00:07:03] Speaker 05:
Where did you say that?

[00:07:05] Speaker 02:
What's that?

[00:07:05] Speaker 05:
Where did you say that?

[00:07:06] Speaker 02:
We said that in our opposition to their motion in Lemonade.

[00:07:10] Speaker 02:
They moved for in Lemonade.

[00:07:11] Speaker 02:
Is that in the appendix?

[00:07:12] Speaker 02:
It is in the appendix.

[00:07:13] Speaker 02:
Where?

[00:07:14] Speaker 02:
Oh, actually, Your Honor, I'm sorry.

[00:07:15] Speaker 02:
That is not in the appendix.

[00:07:18] Speaker 02:
There is a reference in the appendix and this is at 27366.

[00:07:24] Speaker 02:
This is on appeal to the commission where Roku cites that it had contested whether the 196 is the same invention that Mr. Barnett assigned.

[00:07:36] Speaker 02:
and points to, for example, its cross-examination of UEI's expert, Mr. Rosenberg, on this.

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And the fact that Mr. Rosenberg was not able to provide any detail, he ultimately concluded that he had not opined that it was the same invention.

[00:07:52] Speaker 02:
So there were disputes of fact that had to be resolved by the ALJ or the commission.

[00:07:58] Speaker 05:
I understand what the dispute of fact is.

[00:08:01] Speaker 05:
If I'm not mistaken.

[00:08:03] Speaker 05:
Point to me where you said there was a dispute of fact as to whether Barnett was the inventor of the new matter.

[00:08:12] Speaker 02:
Your Honor, I would point to the Appendix 27366, which is where, on our appeal to the Commission, we said that there were disputes as to these issues.

[00:08:27] Speaker 05:
Where does it say there's a dispute on this issue?

[00:08:33] Speaker 02:
where we say UEI failed to carry its burden of standing here because it did not show that the invention of the priority applications is the same as that of the 196 patent.

[00:08:58] Speaker 02:
We note that the assignment

[00:09:00] Speaker 02:
assigns only continuations, not continuations in part.

[00:09:05] Speaker 02:
So there would have to be.

[00:09:06] Speaker 05:
Where does it say there's a dispute as to whether Barnett contributed to the new matter?

[00:09:10] Speaker 02:
Well, Your Honor, that would be part of the questions that UEI bore the burden of.

[00:09:17] Speaker 02:
And it had the burden to establish.

[00:09:18] Speaker 02:
And the ALJ had to make that finding.

[00:09:21] Speaker 02:
The ALJ did not make that finding.

[00:09:23] Speaker 02:
So I do want to make sure I get to the other issues.

[00:09:28] Speaker 04:
He has an affidavit.

[00:09:30] Speaker 04:
There is no evidence from your side specifically confronting his affidavit.

[00:09:35] Speaker 04:
You're just relying on the burden of proof.

[00:09:37] Speaker 02:
That's right, Your Honor.

[00:09:37] Speaker 04:
So the undisputed fact and the record, even if they ailed, they didn't find it, is that he didn't contribute to the new matter.

[00:09:45] Speaker 02:
Well, Your Honor, I think that that would depend on whether it's the same invention.

[00:09:49] Speaker 02:
They're saying it's the same invention.

[00:09:51] Speaker 02:
If it's not the same invention, then we would have the question, well, who contributed that additional material?

[00:09:57] Speaker 02:
So I think that... Why does that matter?

[00:09:59] Speaker 04:
He said even if there is new stuff, he didn't do it.

[00:10:02] Speaker 02:
Well, Your Honor, he said that he did not contribute the blue language that had been added to the specification.

[00:10:08] Speaker 02:
That's what he said he hadn't.

[00:10:10] Speaker 02:
Hadn't.

[00:10:10] Speaker 02:
Is that enough?

[00:10:11] Speaker 04:
If it's not a new invention, he assigned, right?

[00:10:14] Speaker 02:
If it is not a new invention that he assigned.

[00:10:17] Speaker 02:
And if it is new, he said in his affidavit that he didn't contribute.

[00:10:21] Speaker 02:
He said specifically he had not contributed to the blue matter, which was the additional language in the spec.

[00:10:27] Speaker 02:
Whether that's the same question or not, I think is one that the ALJ had to resolve as a question of factor.

[00:10:34] Speaker 02:
So without a finding by the ALJ or by the commission, there's nothing for this court to review.

[00:10:40] Speaker 02:
We have nothing to point to and take issue with.

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And as a matter of agency practice, it has to be done in the first instance by the ALJ or commission.

[00:10:49] Speaker 02:
I do want to address the other issues, Your Honor.

[00:10:52] Speaker 02:
With respect to domestic industry, there is

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Notice that the commission did not require that UEI prove either that its investment in development of the patent actually related to the Samsung televisions.

[00:11:13] Speaker 02:
Why does it have to do that?

[00:11:14] Speaker 04:
Its product in the patent doesn't cover the Samsung

[00:11:17] Speaker 02:
televisions it covers the it's called what quick set no you're right quick set does not itself practice the patents that's not disputed quick set is used in practicing the patents but they didn't invent the TV I find this argument completely wrong I mean they're not trying

[00:11:36] Speaker 04:
to say they invented all the technology in the TV.

[00:11:39] Speaker 04:
They're trying to say they invented Quickset, which as implemented by the TV covers the patents.

[00:11:45] Speaker 02:
Well, it is part of practicing the patents in the televisions, but they don't even show that their investment in Quickset all relates to the domestic industry articles, which are the Samsung TVs.

[00:11:59] Speaker 02:
They acknowledge that Kwikset is used in Sony and other televisions and other devices, but that's not protected under 337.

[00:12:08] Speaker 00:
It's your view, I take it, that any time somebody contributes to part of a product that's sold,

[00:12:14] Speaker 00:
and that the scope of the claim covers the product sold, that at that point there always has to be some kind of allocation for the economic problem.

[00:12:26] Speaker 00:
And what would your case law, if any, do you have to support?

[00:12:28] Speaker 02:
Well, Your Honor, we cite interdigital for this, that the investment has to be one, quantitative, and two, it has to be with respect to the protected articles.

[00:12:40] Speaker 05:
But interdigital doesn't talk about allocation.

[00:12:42] Speaker 02:
The case talks about the need to allocate the intellectual property.

[00:12:47] Speaker 02:
The commission itself has recognized the need to allocate on page 40.

[00:12:52] Speaker 05:
None of our decisions?

[00:12:53] Speaker 02:
Well, they do speak about allocation in interdigital.

[00:12:59] Speaker 02:
And we believe that the language with respect to the protected article needs allocation.

[00:13:07] Speaker 02:
And the commission acknowledges this on page 44, if we're talking, for example, about a plant.

[00:13:12] Speaker 00:
This is just to make sure.

[00:13:14] Speaker 00:
You've got two arguments, as I understand it.

[00:13:17] Speaker 00:
Yes.

[00:13:17] Speaker 00:
There has to be allocation in terms of showing that the quick set was significant compared to the other expenditures made for Samsung TV.

[00:13:26] Speaker 00:
Is that the one you're talking about?

[00:13:28] Speaker 00:
Which one are you talking about now?

[00:13:29] Speaker 02:
Right now I'm talking about the first, allocation.

[00:13:32] Speaker 02:
Quick set.

[00:13:33] Speaker 02:
They both sound like allocation.

[00:13:34] Speaker 02:
So the first argument is that their investment in quick set does not exclusively relate to Samsung.

[00:13:41] Speaker 00:
In other words, they have to show that

[00:13:44] Speaker 00:
their investment specifically for Samsung compared to like other TV user products?

[00:13:50] Speaker 02:
Samsung or other articles that practice the patent, not to things that don't practice the patent.

[00:13:56] Speaker 02:
On their view, as long as there was one in a thousand uses of Kwikset that practices the patent, if that's all that the Samsung televisions represented of applications or uses of Kwikset, that would be enough.

[00:14:09] Speaker 02:
But they have acknowledged if you're talking about a plant where both

[00:14:13] Speaker 02:
protected articles and non-protected articles are made.

[00:14:16] Speaker 05:
Well, that's different.

[00:14:17] Speaker 05:
That's under V, right?

[00:14:18] Speaker 02:
Well, but this court in interdigital, and again in Lilo, indicated that the analysis is the same for A, B, or C. With respect to the protected articles language is in the preface.

[00:14:30] Speaker 02:
It's the language that precedes A, B, or C. And so it would apply equally to A, B, and C. And that is what the court says in interdigital.

[00:14:39] Speaker 05:
Well, it's interdigital to make clear that it has to relate.

[00:14:40] Speaker 05:
The intellectual property has to relate to the protected articles.

[00:14:44] Speaker 05:
But why does it follow from that that you have to allocate?

[00:14:48] Speaker 05:
What's the purpose of the allocation?

[00:14:49] Speaker 02:
The allocation is to make sure you're not counting investments that were made with respect to unprotected articles, as in the plant or here, if the quick set had been developed.

[00:14:59] Speaker 05:
And determine the substantiality, or what?

[00:15:01] Speaker 02:
And then in substantiality, what the court said

[00:15:05] Speaker 02:
in Lilo is that it must be the complainant's total amount of investment must be significant relative to its overall investment with respect to the articles at issue.

[00:15:18] Speaker 02:
In other words, if the complainant was actually making the televisions outside of the United States, but it made some little component in the United States that was in exploitation of the patent,

[00:15:32] Speaker 02:
It would have to show that its investment in the component in the United States domestically was significant with respect to the value of the articles.

[00:15:40] Speaker 02:
That's what Lilo says.

[00:15:42] Speaker 02:
And it is the same whether it's UEI producing the televisions or someone else.

[00:15:49] Speaker 02:
I see my time is almost running out.

[00:15:50] Speaker 02:
I do want to say something about the... Can I answer that Lilo?

[00:15:55] Speaker 00:
I mean, I'm sorry.

[00:15:55] Speaker 00:
I know you're running out of time, but isn't Lilo really answering?

[00:15:59] Speaker 00:
It says in the case itself, it's addressing the sole question

[00:16:02] Speaker 00:
of whether qualitative evidence can satisfy the economic problem.

[00:16:07] Speaker 02:
And they held that it has to be quantitative.

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But in the process of doing so.

[00:16:11] Speaker 00:
But you don't have qualitative evidence here.

[00:16:12] Speaker 02:
You have quantitative evidence.

[00:16:14] Speaker 02:
But in the process of doing so, it explains what is meant by significant or substantial.

[00:16:19] Speaker 02:
It treats those two the same and says that it has to be with respect to the articles.

[00:16:24] Speaker 02:
With respect to obviousness, Your Honors, I want just quickly to say that in Appendix 30,

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which is the commission's analysis on this.

[00:16:34] Speaker 02:
It's like a law school exam in how to misapply patent law.

[00:16:40] Speaker 02:
On Appendix 30, they say that they overturned the ALJ.

[00:16:45] Speaker 02:
The ALJ found that it would be obvious, the invention would be obvious in the combination of Chardon and Mishra.

[00:16:54] Speaker 02:
And the commission overturned that.

[00:16:56] Speaker 02:
and 30 of the appendix is its analysis.

[00:16:59] Speaker 02:
It says Roku identifies no teaching, suggestion or motivation in Chardon or Mishra to divide control.

[00:17:07] Speaker 02:
They're insisting that we identify the teaching, motivation or suggestion in the references.

[00:17:12] Speaker 02:
KSR says that's not how you do it.

[00:17:15] Speaker 02:
They say that

[00:17:17] Speaker 02:
I'm doing so would run contrary to Charles teaching as though that's a teaching away when in Ray Fulton says no there must actually be criticism or some denigration of the of the patented technology and then it says that

[00:17:34] Speaker 02:
Combining the two would be wasteful or duplicative by adding a second IR pathway.

[00:17:40] Speaker 02:
But that's not true because that presumes, contrary to this court's holding in Remutet, that you just corporally combine the two rather than, as was proposed, to substitute Mishra's IR pathway for Chardon's.

[00:17:55] Speaker 02:
It's important to understand how close Chardon comes to this invention.

[00:18:01] Speaker 02:
Chardon has two pathways.

[00:18:03] Speaker 02:
It has an HDMI pathway, it has an IR pathway, and it chooses which one based upon which devices they use.

[00:18:16] Speaker 02:
That's right, Your Honor.

[00:18:17] Speaker 02:
That's the part that Chardon doesn't do.

[00:18:19] Speaker 02:
The IR blaster is incorporated in the set-top box.

[00:18:26] Speaker 02:
But we rely on Mishra to translate the IR command through the remote control.

[00:18:33] Speaker 02:
Chardon does have a remote control.

[00:18:35] Speaker 02:
In fact, Chardon is called a remote control system.

[00:18:38] Speaker 02:
So it's not as though remote controls are foreign to Chardon.

[00:18:42] Speaker 02:
It's just that, as your honor said, it doesn't relay the IR command through the remote control.

[00:18:49] Speaker 05:
What was your evidence that it would be a motivation to modify and shorten to look to a separate device?

[00:18:57] Speaker 02:
Well, we explained that the IR blaster... Forget about explained.

[00:19:02] Speaker 05:
Was there testimony?

[00:19:04] Speaker 02:
There was, Your Honor, and I don't have the citation to it, the testimony was that the IR blaster being contained in the set-top box was less desirable because if you put it in an entertainment unit, for example, it could be blocked, whereas having it in the remote

[00:19:24] Speaker 02:
where you're pointing it at the device, that's more useful.

[00:19:28] Speaker 02:
And so that was the motivation combined.

[00:19:31] Speaker 02:
The analysis of the commissioner on that is wrong, too, because they say, well, we didn't show that that would have been the preferred.

[00:19:39] Speaker 02:
We don't have to show it would be the preferred.

[00:19:41] Speaker 02:
There were other ways to solve, they said.

[00:19:43] Speaker 02:
We don't have to exclude other ways to solve.

[00:19:47] Speaker 02:
I think we're out of time.

[00:19:48] Speaker 05:
We'll give you two minutes for a bottle.

[00:19:50] Speaker 05:
Thank you.

[00:19:58] Speaker 03:
Good morning.

[00:19:59] Speaker 03:
May it please the court?

[00:20:00] Speaker 03:
I'd like to start with the standing issue.

[00:20:03] Speaker 03:
You're Mr. Stevens, is that right?

[00:20:06] Speaker 03:
Carl Brecher for the IT side.

[00:20:07] Speaker 03:
Brecher, okay.

[00:20:08] Speaker 03:
Sorry.

[00:20:12] Speaker 03:
First point is that we heard a lot this morning about the 2012 assignments, Mr. Barnett's contributions before and after the

[00:20:20] Speaker 03:
what we call the priority applications.

[00:20:22] Speaker 03:
None of that was in Roku's opening brief.

[00:20:24] Speaker 03:
So we never had a chance to respond to any of this.

[00:20:25] Speaker 03:
And we think all those arguments have been waived for purposes of this appeal.

[00:20:30] Speaker 05:
Not if the ALJ's decision was based on the 2004 assignment.

[00:20:37] Speaker 05:
But it wasn't.

[00:20:38] Speaker 05:
I'm not sure you're right about that.

[00:20:41] Speaker 05:
uh... i'm sorry you're going to be in the uh... the e l j relied on testimony that he had it from beginning of his employment which was two thousand four

[00:20:50] Speaker 05:
It's just that the Commission doesn't deserve high marks for clarity here.

[00:20:55] Speaker 05:
What it was doing is unclear.

[00:20:58] Speaker 05:
So at least I'm inclined not to fault them for addressing 2004 initially.

[00:21:07] Speaker 05:
The question is, does the 2012 do it?

[00:21:13] Speaker 03:
Well, respectfully, Your Honor, I have to disagree, because we have to bear in mind that... You can disagree, but let's talk about whether the 2012 assignment is efficient.

[00:21:23] Speaker 03:
It is, Your Honor, because first of all, the ID expressly refers to the 2012 assignment and the Commission's findings with respect to that assignment.

[00:21:30] Speaker 03:
It says there's nothing in the record from Barnett or from Roku

[00:21:35] Speaker 03:
that would upset the Commission's findings with respect to the 2012 assignment.

[00:21:39] Speaker 05:
The Commission's findings were... You're not addressing the merits of the 2012 assignment.

[00:21:43] Speaker 05:
That was my question.

[00:21:44] Speaker 05:
The merits... The 2012 assignment doesn't mention continuations in part, so why does that confer a standing?

[00:21:54] Speaker 03:
First of all, it's not relevant because the testimony from Mr. Gordon... You keep saying that, but I didn't ask you about that.

[00:22:00] Speaker 05:
I'm asking you to address the merits of the 2012 assignment.

[00:22:05] Speaker 03:
The assignment is broadly written, covers especially cons, divisionals, there's applications.

[00:22:12] Speaker 03:
And we looked at the case law and we found, well, I should back up.

[00:22:16] Speaker 03:
Roku was saying cons have to be limited strictly to con and can include continuations in part.

[00:22:23] Speaker 03:
We looked at their case law, we looked at cases from this court, and there have been cases where cons in the sense of a

[00:22:30] Speaker 03:
Assignment like this, a broad assignment, have been interpreted to cover CIPs, and there's nothing in these assignments.

[00:22:37] Speaker 03:
Which things?

[00:22:37] Speaker 03:
University of New Mexico you're talking about?

[00:22:41] Speaker 03:
New Mexico, and there's others that were cited in the commission's opinion.

[00:22:44] Speaker 03:
But the New Mexico case had other language in it.

[00:22:48] Speaker 03:
And our point was that there have been cases where con is just construed more broadly, and there's no

[00:22:55] Speaker 03:
evidence the record of why would they were limiting Mr. Barnett just to his cons and not his CIPs when this was a standard assignment.

[00:23:04] Speaker 03:
There's been no evidence, no testimony of why they would do that.

[00:23:08] Speaker 05:
I mean, a CIP is a standard reference and what's more in the... Well, I think there's a good reason that continuations and continuations in part would be different in terms of an assignment by an employee who

[00:23:23] Speaker 05:
might invent something later, which was the new matter in the continuation and part assignment.

[00:23:30] Speaker 05:
And that would be a good reason not to cover that with a general assignment in the first place without knowing what's coming in the future.

[00:23:39] Speaker 05:
So what about the argument that Burnett didn't invent anything that was in the new matter?

[00:23:48] Speaker 03:
Well, as the commission pointed out in its

[00:23:51] Speaker 03:
Earlier decisions, the ID points out Mr. Barnett contributed in what were called the priority applications.

[00:23:58] Speaker 03:
These were two provisionals and the original utility application in the chain that eventually led to 196.

[00:24:04] Speaker 03:
He contributed to that material, but there's never been any evidence that he contributed any inventive material after that.

[00:24:12] Speaker 05:
And even today, there's no... Does the record show that he didn't contribute to the material after that?

[00:24:18] Speaker 03:
He contributed on the first three applications, but there's nothing saying he contributed anything after that.

[00:24:23] Speaker 03:
He didn't say that.

[00:24:26] Speaker 03:
Does the record establish he didn't contribute?

[00:24:29] Speaker 03:
Yes, it does.

[00:24:30] Speaker 03:
There's a declaration from him to that effect.

[00:24:35] Speaker 03:
I also just want to note that when the Commission reviews an ID, it steps into the shoes of the ALJ.

[00:24:40] Speaker 03:
It's making decisions as if it were making the initial decision.

[00:24:43] Speaker 03:
There were legal findings with respect to the

[00:24:46] Speaker 03:
Assignments, the only reason the commission didn't go to the final question of standing was because that wasn't a question before.

[00:24:53] Speaker 03:
It didn't have a complete record.

[00:24:54] Speaker 03:
So it took these legal findings, sent them back to the ALJ.

[00:24:57] Speaker 03:
The ALJ expressly referred to these findings, legal findings, in his analysis and said, there's no testimony here.

[00:25:05] Speaker 03:
There's nothing from Roku, nothing to upset the commission's understanding of the operation of these assignments.

[00:25:12] Speaker 03:
And so therefore, there was standing.

[00:25:15] Speaker 03:
I want to move then to the economic prong analysis.

[00:25:22] Speaker 03:
Roku's been using the word allocation to refer to the concept that UEI has to compare its own expenses to the final cost of the product.

[00:25:31] Speaker 03:
That's never been a legal requirement.

[00:25:33] Speaker 03:
There's no case from this court that's imposed such a requirement.

[00:25:37] Speaker 05:
In fact, what inter-indigenous... Does that understand what they're saying on their first argument about allocation, is that you've got to allocate the costs of the intellectual property to a particular product covered by the patent and show that it was significant for that product, right?

[00:25:58] Speaker 03:
Well, what the state... Is that not one of their arguments?

[00:26:02] Speaker 03:
They may be arguing that, but what the statute says is UEI has to show a substantial

[00:26:08] Speaker 03:
investment, in this case domestic investment, in the patent's exploitation, meaning research, development, improvements, and such.

[00:26:16] Speaker 03:
So the substantial evidence, a substantial investment, I'm sorry, goes to the R&D.

[00:26:21] Speaker 03:
The R&D in turn has to be with respect to the articles protected by the patent.

[00:26:25] Speaker 03:
That's exactly what UEI did here.

[00:26:28] Speaker 03:
They allocated their expenses in the sense that they identified those research and development activities relating to

[00:26:37] Speaker 03:
development of Kwikset, which is necessary for the TVs to practice its invention.

[00:26:42] Speaker 03:
They identified projects that are uniquely for integrating that software into Samsung TVs.

[00:26:48] Speaker 03:
And then they separated out all the other research projects for other companies, other TVs, other products that weren't relevant.

[00:26:54] Speaker 03:
So they did the allocation.

[00:26:56] Speaker 00:
So it's your view that that was enough to show substantial?

[00:27:00] Speaker 00:
I mean, in the question of whether it's a substantial investment, is that a question of fact?

[00:27:06] Speaker 03:
Well, the first part of your question, Your Honor, was, is that substantial?

[00:27:10] Speaker 03:
That's just the first step.

[00:27:11] Speaker 03:
This is the allocation.

[00:27:13] Speaker 00:
I understand.

[00:27:14] Speaker 00:
I think the argument is that allocation has to be used in order to be able to show that something's substantial, that it was a substantial investment.

[00:27:23] Speaker 00:
And you're showing that some allocation, you're telling us about what was presented so that the ALJ and the Commission could see, could determine whether

[00:27:34] Speaker 00:
it was substantial investment or not, right?

[00:27:37] Speaker 03:
Right.

[00:27:37] Speaker 03:
They went from the allocation to the substantiality.

[00:27:40] Speaker 03:
And as I was going to mention, they did show that those investments, the allocations are.

[00:27:45] Speaker 00:
I just want to make sure I understand what you're arguing.

[00:27:46] Speaker 00:
I mean, it's very clear to me.

[00:27:47] Speaker 00:
But I think you're arguing that that framework that they used was sufficient for showing that there was a substantial investment.

[00:27:55] Speaker 03:
Yes, it was.

[00:27:56] Speaker 03:
Allocation is the first step.

[00:27:58] Speaker 03:
Substantiality is the second step.

[00:28:00] Speaker 05:
And in this case, UEI shows... So the idea is that if you show that the investment in intellectual property is substantial, you don't have to show that the incorporation of that intellectual property in the product is substantial.

[00:28:17] Speaker 03:
It's substantial in a qualitative sense here, and that's essential to make the Samsung TVs practice the invention.

[00:28:23] Speaker 03:
But there's not a financial

[00:28:26] Speaker 03:
mathematical requirement that you compare UEI's cost to the cost of the final product.

[00:28:30] Speaker 03:
That's never been a whole other story.

[00:28:32] Speaker 04:
So hypothetically, let's say they've shown that all of their R&D is related to creating this software.

[00:28:43] Speaker 04:
And so they've shown that they've invested substantially in that software.

[00:28:49] Speaker 04:
and the software as implemented in the TV practices the patent.

[00:28:54] Speaker 04:
But what if that software is only licensed at 50 cents a TV and the TV costs $1,000?

[00:29:03] Speaker 04:
Is that substantial under the meeting of the statute?

[00:29:06] Speaker 04:
Because all of their investment, they've shown they've substantially invested in the piece of the software, but the software itself is not a substantial part of the cost of the TV.

[00:29:18] Speaker 04:
Do they have to show somehow that the software is a substantial part of the TV's cost?

[00:29:26] Speaker 03:
On a cost-for-cost basis, no.

[00:29:28] Speaker 03:
But I would just clarify that there's a certain level of effort and research and development that has to go on before you can even get to the point of licensing it.

[00:29:37] Speaker 03:
And they've shown they've invested in the software, they've improved it, they've integrated it, and so on.

[00:29:43] Speaker ?:
Sure.

[00:29:43] Speaker 04:
I think, if I didn't make it clearly, the premise was they've met that first part, that they've invented something and they spent a lot of R&D to invent something that, once it's incorporated into the TB practice of the patent,

[00:29:59] Speaker 04:
But that the software itself, let's maybe, let me make it a little bit more refined.

[00:30:05] Speaker 04:
Once it's incorporated into the TV, it's all these other physical components of the TV that practice the patent in combination with their software.

[00:30:14] Speaker 04:
All of their investment is in the software itself.

[00:30:17] Speaker 04:
They didn't create the TV, they didn't create any of the hardware outlets, the sensors, the remotes, or anything like that.

[00:30:25] Speaker 04:
But is, if,

[00:30:30] Speaker 04:
Do they have to show somehow that still their software is a substantial part of the TV, or just that their investment in the software as implemented in the TV is substantial?

[00:30:43] Speaker 03:
I know that's a little hard to follow, but... If we're just looking at the cost of downloading the software onto a TV, that's not a big cost, but that's the magic of software, is that once you've developed it, you can put it on one TV, a million, it's not going to cost that much.

[00:31:00] Speaker 03:
I think we need to remind ourselves this is subprong C, which goes specifically to research and development.

[00:31:06] Speaker 03:
And this aspect was added to 337 specifically to allow research intensive companies or universities to potentially come before the commission.

[00:31:20] Speaker 03:
They're not making products, and in interdigital, for example, it doesn't require the complaint that they make.

[00:31:24] Speaker 05:
That's all true, but that doesn't really answer the question that Judge Hughes is asking about, and that is, does the investment in the intellectual property need to be allocated to the product so that it's substantial once it's allocated to the product rather than substantial as a whole before allocation?

[00:31:44] Speaker 03:
it's substantial in that it makes the TV's practice the invention.

[00:31:48] Speaker 03:
But if we're looking just at a licensing cost, this court's not required that kind of financial analysis, that kind of financial comparison.

[00:31:56] Speaker 03:
But it doesn't require it one way or the other.

[00:31:58] Speaker 03:
It doesn't address the question, right?

[00:32:00] Speaker 03:
Well, it has in, say, interdigital.

[00:32:02] Speaker 03:
In that case, the complainant was licensing software to develop certain

[00:32:09] Speaker 03:
software that went into certain standards, and it was all based on licensing.

[00:32:12] Speaker 03:
They weren't making the product.

[00:32:13] Speaker 03:
No, but Interdigital didn't address the allocation question, right?

[00:32:20] Speaker 03:
Well, it didn't require it either.

[00:32:22] Speaker 03:
And what it seemed to be saying here is there has to be a requirement.

[00:32:24] Speaker 03:
Well, there's never been that requirement.

[00:32:26] Speaker 03:
Substantially, it has a quantitative aspect, which UEI has shown, and it has a qualitative aspect.

[00:32:33] Speaker 03:
And it's qualitatively important that it makes its EVs perform the patent.

[00:32:39] Speaker 03:
It's quantitatively significant in this context, because they've shown that their research accounts for about two-thirds of their global R&D in Quickset and implementing it in the Samsung TVs.

[00:32:50] Speaker 03:
That's the kind of analysis support that's accepted in the past.

[00:32:54] Speaker 04:
I would note that... So is the sum of your answer is they have to show a quantitative investment in the invention they made, the software, and that they contributed substantially to the R&D.

[00:33:08] Speaker 04:
then they only have to show that qualitatively it's important to the overall product.

[00:33:15] Speaker 03:
In this case, yes.

[00:33:16] Speaker 03:
And that's been true in other cases, too.

[00:33:18] Speaker 03:
I mean, there have been other cases where companies like Microsoft write operating systems for cell phones.

[00:33:25] Speaker 03:
The operating system itself, loading on the phone may not be that expensive, but it is still being an acceptable model.

[00:33:34] Speaker 03:
you know, in the Microsoft case, there were other problems with the cell phone itself and whether they practiced invention, but that was engineer.

[00:33:41] Speaker 03:
I'm sorry, I see that I'm out of time.

[00:33:44] Speaker 05:
Before you sit down, just address briefly the question of obviousness.

[00:33:50] Speaker 05:
It seems to me that they're contending that the Commission said some things about obviousness which aren't consistent with our case law.

[00:34:02] Speaker 03:
They're frankly wrong because what the commission was doing and what it was required to do is apply a gram-type analysis to look at the scope and the content of the prior art, compare the prior art to the invention, take into consideration the objective indicia.

[00:34:16] Speaker 03:
So what council was describing are factual findings about the priority.

[00:34:19] Speaker 05:
They're not local requirements.

[00:34:21] Speaker 05:
Wait, wait, wait.

[00:34:22] Speaker 05:
They're talking about specific things that the commission said that seem not to be right.

[00:34:27] Speaker 05:
For example, that there isn't any suggestion in Chardon or Mishra to combine them, which is not, would not be an accurate statement of our law.

[00:34:40] Speaker 05:
In fact, that's what led to KSR.

[00:34:42] Speaker 03:
But we weren't summarizing the law.

[00:34:44] Speaker 03:
We were making factual findings on what the prior art said and what it didn't say.

[00:34:49] Speaker 03:
And what the commission concluded is that there's a gap in the prima facie showing, and that's why the objective and DC are so important.

[00:34:55] Speaker 03:
It showed that to persons skilled in the art and knowledgeable in the art, this little gap was important.

[00:35:03] Speaker 03:
And we have these two references that are explaining the invention and the long-felt need and the industry praise and so forth.

[00:35:10] Speaker 03:
And those references are directed specifically to this invention as it practiced in the very TVs that were at issue here, the Samsung TVs.

[00:35:19] Speaker 03:
So no, we're not making legal requirements that defy KSR.

[00:35:25] Speaker 03:
We're making factual findings on the prior art.

[00:35:28] Speaker 03:
And those factual findings, what not, are even admitted in Roku's brief.

[00:35:32] Speaker 03:
The Shardin doesn't disclose certain things.

[00:35:34] Speaker 03:
Mishra doesn't disclose certain things.

[00:35:37] Speaker 03:
That's significant.

[00:35:38] Speaker 03:
It's not the end game.

[00:35:40] Speaker 03:
It's not the end of it, but it's significant.

[00:35:44] Speaker 03:
Okay.

[00:35:44] Speaker 03:
I think we're out of time.

[00:35:48] Speaker 05:
Thank you, Mr. Stevens.

[00:35:58] Speaker 01:
May it please the court.

[00:35:59] Speaker 01:
Thank you, your honor.

[00:36:01] Speaker 01:
To discuss that point first, when the commission mentioned the fact that there was no explicit teaching in the two references,

[00:36:08] Speaker 01:
That was in direct response to an argument that Roku had made in the underlying proceeding.

[00:36:13] Speaker 01:
The commission then continued to analyze other arguments that they made regarding motivation to combine that went beyond the patents and did not credit the position that they were taking.

[00:36:23] Speaker 01:
So it was not based upon, it did not run afoul of KSR.

[00:36:26] Speaker 01:
That was in response to an argument they made and they went further and analyzed the facts.

[00:36:30] Speaker 01:
Going back to domestic industry, Judge Stoltzer, to answer your question, I do believe that substantiality is directly a question of fact.

[00:36:38] Speaker 01:
This should be reviewed for substantial evidence.

[00:36:40] Speaker 01:
And Judge Hughes, to answer your question, the statute itself in subsection C talks about substantial investment in its exploitation.

[00:36:51] Speaker 01:
And the it's there has been held to refer to the intellectual property right, the patent.

[00:36:55] Speaker 01:
So what the substantiality test is, is are the investments here that UEI made, are those substantial in the context of investment in this technology?

[00:37:06] Speaker 04:
So if they only spent $1,000 in R&D because it didn't take them long to do the software, then maybe that's not substantial, but whatever the 7, 8 million or whatever is in the record in your view is.

[00:37:19] Speaker 01:
Yeah, that's generally right.

[00:37:20] Speaker 01:
If they spent $1,000 and it's a multi-million dollar company,

[00:37:23] Speaker 01:
That might not be substantial, and that might not meet the test year.

[00:37:27] Speaker 01:
Here, the evidence is the total spend was over $17 million, $17.8, I believe, in the time frame that we were looking at.

[00:37:34] Speaker 05:
And over that same- They might be testing that that's substantial.

[00:37:36] Speaker 05:
They're saying you've got to allocate that to the product and show that it's substantial in the particular product, right?

[00:37:44] Speaker 01:
That is their argument, and I disagree that the law requires that for subsection C. I think that's inconsistent with interdigital.

[00:37:51] Speaker 01:
But as the commission pointed out, we did do an allocation.

[00:37:55] Speaker 01:
We made sure to take out any investments made in Kwikset that weren't directly one-to-one to support something that went in the Samsung televisions.

[00:38:03] Speaker 01:
So for example, if some other customer had said, hey, we'd like Kwikset to have this special bespoke feature just for us, we took that out.

[00:38:11] Speaker 01:
We did not count that as part of the investments.

[00:38:13] Speaker 01:
We only looked at things that were necessary to implement for Samsung.

[00:38:18] Speaker 01:
And there is undisputed testimony in the record that every dollar that we allocated went directly to that effort.

[00:38:24] Speaker 01:
That's another factual finding that's not really been challenged here.

[00:38:28] Speaker 05:
So I'd like to- Factual finding by whom?

[00:38:31] Speaker 05:
I'm just- Factual finding by whom?

[00:38:34] Speaker 05:
You said that there's a finding about allocation.

[00:38:37] Speaker 05:
Who made the finding?

[00:38:38] Speaker 01:
So the judge did.

[00:38:39] Speaker 01:
And our- ALJ?

[00:38:41] Speaker 01:
That's correct, Your Honor.

[00:38:42] Speaker 01:
Where did the ALJ make that finding?

[00:38:46] Speaker 01:
So on pages, the ALJ is discussing the economic prong on pages APPX 175 all the way through about 181 or 182.

[00:39:01] Speaker 01:
In there, he talks about Mr. Barnett's testimony that all the event.

[00:39:06] Speaker 05:
Where does he make a finding about allocation?

[00:39:12] Speaker 01:
For example, on page APPX 177, near the middle of the page, the ALJ finds, quote, Mr. Barnett explained that these projects involve the integration of Kwikset implementations on the Samsung products.

[00:39:27] Speaker 01:
Going earlier in the paragraph, in addition to the investments in the Kwikset platform, UEI states that it invests in R&D projects, quote, dedicated to implementing and integrating Kwikset on the Samsung DI products specifically.

[00:39:40] Speaker 01:
And then go on from there.

[00:39:42] Speaker 01:
So the testimony that we offered at trial was that we had excluded anything that didn't relate to providing this in a way that Samsung implemented it.

[00:39:50] Speaker 05:
And I believe that the judges... I don't see that the ALJ made a specific finding about allocation.

[00:39:56] Speaker 05:
It recites your testimony.

[00:39:58] Speaker 01:
Well, sure.

[00:39:59] Speaker 01:
The page beforehand, he goes through the actual dollars and says, you know, this is for Samsung DI products, you know, in appendix page 176.

[00:40:08] Speaker 01:
Both the Kwikset SDK and Cloud are necessary

[00:40:11] Speaker 01:
for Samsung's implementation and use of Kwikset in the Samsung DI product.

[00:40:15] Speaker 01:
So I do believe the testimony supports the notion that every dollar was allocated to projects necessary for Samsung.

[00:40:22] Speaker 01:
I believe the ALJ agreed with that.

[00:40:25] Speaker 01:
The commission, of course, affirmed the subsection C funding.

[00:40:28] Speaker 05:
But it doesn't mean that the intellectual property couldn't also be used in other products which aren't covered by the

[00:40:35] Speaker 01:
It doesn't mean that, but every dollar that we included within our math, every dollar was necessary in order for that quick set to be on a Samsung TV in order for it to work.

[00:40:46] Speaker 05:
But maybe that same intellectual property was used in other products which aren't covered by the math.

[00:40:52] Speaker 05:
That's the argument.

[00:40:53] Speaker 01:
Well, sure.

[00:40:53] Speaker 01:
If there's intellectual property that was used in other ways, perhaps there would have been other money that we could have allocated.

[00:40:58] Speaker 01:
So I'm not sure I understand that part of your question.

[00:41:02] Speaker 00:
Can I ask you a question?

[00:41:05] Speaker 00:
The argument is you contest the legal framework that your adversary is suggesting.

[00:41:12] Speaker 00:
That is that you have to show that of the $17 million or whatever it was that was provided, this much you would allocate to Samsung, or this much you would allocate to some other customer or some other use of Quickset.

[00:41:28] Speaker 00:
Is that a requirement under law?

[00:41:30] Speaker 01:
I don't believe that's a requirement under law.

[00:41:32] Speaker 01:
I think this court's case in her digital

[00:41:34] Speaker 01:
and the ITC's precedent about subsection C does not make that a required allocation.

[00:41:41] Speaker 01:
That as long as the investment is in the intellectual property, that there's a tie to articles protected by the patent, that's enough.

[00:41:48] Speaker 01:
I don't believe that there's any precedent either from this court or the ITC that we needed to exclude

[00:41:55] Speaker 01:
things that the fact that quick set could have been used for another customer as well and then looking at the question of substantiality or significance of those expenditures if you don't have allocation why is it nonetheless significant well there was an allocation policy yes no i understand uh... there was an allocation here to get rid of expenses that we didn't take recovered and then we performed the significance test based upon

[00:42:20] Speaker 01:
the overall quick set R&D.

[00:42:22] Speaker 01:
So here we did precisely, I think what you're suggesting is we looked at those dollars that were spent in order to be able to have something that would go on the Samsung TVs against the total spend of R&D.

[00:42:33] Speaker 05:
But the problem is that this same intellectual property could have been used in other products, which is the basis for their argument that there should be an allocation.

[00:42:43] Speaker 05:
And my question was,

[00:42:46] Speaker 05:
in response to your suggestion that there was an allocation, I don't think that you made the kind of allocation they say would be required.

[00:42:54] Speaker 05:
Maybe it's not necessary.

[00:42:55] Speaker 05:
That's a different question.

[00:42:57] Speaker 01:
I understand your question.

[00:42:59] Speaker 01:
Yes, they say that we should have allocated out based upon customers, which is what we had done at the ALJ level for sub B. But that's not the same test for sub C. So your honor is precisely correct.

[00:43:10] Speaker 01:
They're criticizing us for not doing that.

[00:43:12] Speaker 01:
We don't believe the law requires it.

[00:43:14] Speaker 01:
We believe that C is different, and the court's precedent shows that.

[00:43:18] Speaker 01:
If I could go back to the standing issue for a moment.

[00:43:21] Speaker 01:
I see my time has expired, but with your honor's indulgence.

[00:43:25] Speaker 01:
To answer your question, there's at least two reasons why the 2012 assignment takes care of any issue in this case.

[00:43:32] Speaker 01:
The first is it didn't just say that you're assigning a patent application and any continuations.

[00:43:40] Speaker 01:
it said that it was the entire invention.

[00:43:43] Speaker 01:
There were no rights left when he signed that document.

[00:43:46] Speaker 01:
There were no rights at that point in time.

[00:43:48] Speaker 01:
But the second part that I believe has been unaddressed, really, is that, as you pointed out, Mr. Barnett has testified under oath in his affidavit that he didn't have anything to do with the conception of the new matter.

[00:44:01] Speaker 01:
That was all Mr. Arling's later conception.

[00:44:03] Speaker 01:
So he gave away all of his rights when he signed that 2012 agreement, the facts

[00:44:09] Speaker 01:
I think are not in dispute about that.

[00:44:11] Speaker 01:
And then at no point in time did he sort of collect any more of the bundle of sticks.

[00:44:16] Speaker 01:
He never got a right back because he didn't contribute to the conception of anything more.

[00:44:21] Speaker 01:
So for either of those two reasons, the 2012 agreement is rock solid and should be dispositive of this issue entirely.

[00:44:29] Speaker 05:
OK.

[00:44:29] Speaker 05:
Thank you, Mr. Steele.

[00:44:30] Speaker 05:
Thank you, Your Honor.

[00:44:31] Speaker 05:
Mr. Hallward, to remark, you've got two minutes.

[00:44:37] Speaker 02:
Thank you, Your Honor.

[00:44:38] Speaker 02:
In interdigital, the court said, quote, and this is at 1297 and 98, the research and development, so they're talking about subsection C, must pertain to products covered by the patent.

[00:44:50] Speaker 02:
The suggestion that C is somehow different from A and B is inconsistent with the language of the statute, which sets out the requirement with respect to protected articles in the preamble that applies equally with respect to A, B, and C.

[00:45:04] Speaker 02:
C does require that the investment research and development be in exploitation of the patent.

[00:45:09] Speaker 02:
But that is not substituting for the requirement that it be substantial with respect to the protected articles.

[00:45:17] Speaker 02:
And this question of allocation, they point to the total amount, which is on appendix 188.

[00:45:24] Speaker 02:
But of that amount, the vast majority is in quick set.

[00:45:27] Speaker 02:
They pointed, I think, Your Honors.

[00:45:29] Speaker 00:
Can I ask you one question?

[00:45:30] Speaker 00:
Do you think it makes a difference at all that this is, you know, software that's downloaded as opposed to, you know, like a widget that's manufactured?

[00:45:38] Speaker 02:
Well, I don't think that it matters.

[00:45:40] Speaker 02:
It could in the actual facts of a case, but they haven't established those facts because they thought it wasn't necessary.

[00:45:48] Speaker 00:
Well, you think about it when you, if you download software,

[00:45:52] Speaker 00:
You know, they're going to have to make the same amount of investment regardless of how many customers you sell.

[00:45:56] Speaker 02:
Well, Your Honor, but what we don't know, we do know, and this is cited on the Gray Brief, page 15, is that this software is applicable for Sony,

[00:46:07] Speaker 02:
Microsoft, Xbox, all kinds of things other than the Samsung TVs.

[00:46:11] Speaker 02:
And what we don't know is, was it all developed for Sony, which doesn't, as far as we know, practice the patent, and then some minor amount was invested in then tweaking it to make it applicable to Samsung?

[00:46:23] Speaker 00:
I understand your position.

[00:46:24] Speaker 00:
I understand your position.

[00:46:27] Speaker 02:
So on page 177, the appendix, which they cite to, they're citing to the discussion, and there is some Samsung-specific

[00:46:35] Speaker 02:
investment.

[00:46:35] Speaker 02:
It's the much smaller of the two numbers on app 188.

[00:46:40] Speaker 02:
And that's all they're saying with respect to Samsung.

[00:46:42] Speaker 02:
That is, in addition to investments in Kwikset, that's the much larger number, and that's the one that they failed to allocate.

[00:46:49] Speaker 02:
And your honor, Judge Hughes,

[00:46:52] Speaker 02:
Your question is exactly the fact of this case, where the licensing fee is minuscule with respect to the value of the televisions.

[00:47:02] Speaker 02:
And I think under Lilo, which says that it must be assessed in relation to investment with respect to the articles at issue, if UEI was making these televisions outside of the United States in just this really small, minuscule thing,

[00:47:20] Speaker 02:
in the United States, that would not be sufficient as substantial under the statute.

[00:47:26] Speaker 04:
Just want to say with respect to the... The UEI didn't make the televisions.

[00:47:30] Speaker 04:
UEI made the software, right?

[00:47:32] Speaker 04:
So what if you have an American company that specializes in a very small component

[00:47:37] Speaker 04:
a software that's nonetheless revolutionary.

[00:47:41] Speaker 04:
And even though it's only a small fraction of the value of the actual product sold, it's still an important part of that product.

[00:47:49] Speaker 04:
How does that American company get protection for its patent from

[00:47:54] Speaker 04:
uh... incorporation when most of the products made outside the company.

[00:47:59] Speaker 02:
That's also the tax.

[00:48:00] Speaker 02:
It may be that in an absolute sense it would be substantial.

[00:48:06] Speaker 02:
Here we have a licensing fee that is both in an absolute sense and a relative sense minuscule with respect to the value of the televisions.

[00:48:19] Speaker 02:
With respect to the affidavit, I just want to say that the ALJ's rules

[00:48:24] Speaker 02:
were that affidavits did not count as testimony.

[00:48:27] Speaker 02:
It had to be live testimony.

[00:48:29] Speaker 02:
Mr. Barnett did not testify at trial with respect to the 2012 assignment.

[00:48:34] Speaker 02:
He only testified at trial.

[00:48:36] Speaker 05:
Did you ask him to?

[00:48:37] Speaker 02:
We did not cross-examine him because he hadn't offered it in live testimony.

[00:48:43] Speaker 05:
I think we're out of time.

[00:48:45] Speaker 05:
Thank you.

[00:48:45] Speaker 05:
Thank you.

[00:48:46] Speaker 05:
Thank all counsel, the cases.