[00:00:00] Speaker 02:
The next argument is docket number 23-1176, DDR Holdings versus Priceline.com.

[00:00:09] Speaker 02:
Mr. Crosby, you reserve five minutes, right?

[00:00:11] Speaker 02:
Yes, Your Honor.

[00:00:14] Speaker 03:
Thank you.

[00:00:16] Speaker 03:
The judgment below should be reversed because the district court adopted a construction that limits the term merchants to purveyors of goods alone when the patent expressly defines that term to include purveyors of both goods

[00:00:30] Speaker 03:
and services.

[00:00:32] Speaker 02:
And so you're asserting basically the conclusion here.

[00:00:38] Speaker 02:
It's the provisional that talks about this definition of merchants that includes selling not only goods but services as well.

[00:00:46] Speaker 03:
Yes, Your Honor, and that is equally part of the patent specification.

[00:00:49] Speaker 02:
And just so we're all talking from the same place, the actual text of the 399 patent

[00:00:55] Speaker 02:
Don't worry about the provisional application, but just the text.

[00:00:59] Speaker 02:
If you were to open up the 399 and read it from column 1 to column, whatever, 25, that text does not attach to the word merchants the idea that these actors, the merchants, are selling not only goods but services, right?

[00:01:15] Speaker 03:
So the printed text on the face of the patent does not specifically mention the word services as being sold by merchants, although there are indications

[00:01:24] Speaker 03:
within the patent that the invention is not limited to the specific example given in which goods are sold, for example, in the merchant manager where the shipping option can be NA, not applicable.

[00:01:36] Speaker 03:
There are other places where it says that merchants sell something.

[00:01:40] Speaker 03:
So it certainly doesn't have any words of limitation that would suggest that goods are the only thing that's sold.

[00:01:48] Speaker 03:
And there's only one reference to goods.

[00:01:50] Speaker 03:
Throughout the rest, it says products, which can have, and I think the district court acknowledged, a meaning that includes both goods and services.

[00:01:57] Speaker 02:
Right.

[00:01:58] Speaker 02:
As I understand it, the district court said in the context of this patent, the 399 patent,

[00:02:06] Speaker 02:
the term goods is interchangeable with the word products.

[00:02:11] Speaker 02:
Am I just correctly capturing what the district court said?

[00:02:15] Speaker 03:
Well, that's what the district court said, but it's inconsistent with this court's decision in Thorner, where this court said just simply using words in the alternative does not necessarily define them exclusively.

[00:02:30] Speaker 02:
So the key problem that we have here that we've got to sort out is the fact that the provisional, let's assume for the moment, clearly defines merchants to be people that sell both goods and services.

[00:02:47] Speaker 02:
But now when we transfer over to ultimately the non-provisional, the 399, it talks

[00:02:56] Speaker 02:
at least expressly in terms of exclusively just about goods and not services.

[00:03:02] Speaker 02:
And so the services part of the merchant's definition from the provisional got taken out, got removed, got extracted.

[00:03:11] Speaker 02:
And so we have to figure out what is the meaning of that extraction in combination with the fact that the provisional itself has been incorporated by reference into the 399.

[00:03:21] Speaker 03:
Well, I think the fact that the provisional has been incorporated by reference means there was no extraction.

[00:03:26] Speaker 03:
The incorporation by reference of the provisional occurred simultaneously in the same act with the filing of the regular specification.

[00:03:35] Speaker 03:
The patentee presumably knew what was in that provisional and intentionally included it.

[00:03:39] Speaker 03:
And this court's precedent says everything that's in that provisional is equally in that specification.

[00:03:44] Speaker 03:
So it's really just a false thing.

[00:03:45] Speaker 02:
Except for the fact that we have these cases like Modine Manufacturing, MPHJ, and FinGen, which seem to

[00:03:56] Speaker 02:
express an exception to the rule when it comes to incorporating some earlier application by reference into the host patent, where these three cases all seem to stand for the principle that when you look at the context of that incorporation, if in fact the text of the host patent has deleted something from what was contained in the provisional, then that's a very

[00:04:25] Speaker 02:
flashing light signal to a skilled artisan that the inventor has contemplated that whatever got deleted has been in fact removed from the meaning of that particular term.

[00:04:35] Speaker 03:
So I don't think that that's a correct way of looking at any of those cases.

[00:04:39] Speaker 03:
Those cases are all about how do you reconcile

[00:04:42] Speaker 03:
assertively conflicting signals about the meaning of a term that appear within the entirety of the patent, including its file history and its incorporated applications.

[00:04:53] Speaker 02:
Is it fair to say that all three of those cases, in terms of their holdings, they rejected the idea that the incorporated patent, whatever content was in there, controlled the meaning of a particular claim term in that given case?

[00:05:07] Speaker 02:
I'm talking about Modi Manufacturing, MPHJ, and Finja.

[00:05:11] Speaker 03:
So I think the one that's closest on point is Fingen, because that's one that actually involved express lexicographic definitions.

[00:05:19] Speaker 03:
This court's never declined, as far as I'm aware, to apply an express lexicographic definition that's incorporated in a patent.

[00:05:25] Speaker 03:
But in Fingen, you had two different competing lexicographic definitions.

[00:05:31] Speaker 03:
One was in, and both of them were incorporated by different applications by reference.

[00:05:35] Speaker 03:
Neither of them were in the host patent.

[00:05:38] Speaker 03:
And the court looked at these two different

[00:05:41] Speaker 03:
definitions and what didn't emphasize the sequence which came first and which came later.

[00:05:47] Speaker 03:
It looked at the patent itself and said the entire patent includes embodiments so the issue was whether this definition which was otherwise the same of this term downloadable should include small as in some of these incorporated applications or not include the word small as in some of these incorporated applications.

[00:06:05] Speaker 01:
Could there be essentially two competing definitions like if we look at the provisional

[00:06:10] Speaker 01:
I think that's the one that you are arguing for in terms of merchants.

[00:06:13] Speaker 01:
But then when you look at Column 22, it seems like there, merchants is not talked in terms of services.

[00:06:21] Speaker 03:
Well, so in Column 22, that is not the definition.

[00:06:24] Speaker 03:
And it's Abbott Labs versus Andrix actually makes clear that while is can in some circumstances signal that a patentee is trying to define a term in Abbott Labs,

[00:06:40] Speaker 03:
There were also instances where the patentee defined terms using specific lexicographic terms, using means or defined as.

[00:06:47] Speaker 03:
And in Abbott Labs, the court said, is does not connote definition, where elsewhere within the patent or file history, the patentee specifically used lexicographic terms.

[00:06:56] Speaker 03:
So I don't think you can infer that is is definitional in the printed patent specification.

[00:07:01] Speaker 01:
So if we disagree that it was definitional in the provisional application in terms of merchants, do you believe that you lose?

[00:07:10] Speaker 03:
No, Your Honor.

[00:07:12] Speaker 03:
So for two reasons.

[00:07:13] Speaker 03:
First of all, there's no dispute.

[00:07:14] Speaker 03:
I don't think anybody's argued that, you know, it says defined as.

[00:07:18] Speaker 03:
But I think the principle that you draw that I wanted to land and finge in is that when you look at the context as a whole, right, that the general rule is that you interpret claims to incorporate, to cover all the embodiments that are disclosed.

[00:07:32] Speaker 03:
And so the totality

[00:07:33] Speaker 03:
of the combined specification in FinGEN included both embodiments with small downloadables and embodiments with large downloadables.

[00:07:41] Speaker 03:
Now let's contrast Modine, okay, where Modine really truly was a case of deletion.

[00:07:48] Speaker 03:
And so there was a amended, a new specification that was filed that was identical, the continuation part, identical to the previous one except in every place where a certain range would exist, it was replaced with a smaller range.

[00:08:01] Speaker 03:
And this court said in that circumstance, and also there was prior art that was prosecuted over that had the larger range, but not the smaller range, and said in that circumstances, it was conspicuous and unequivocal that this was intentional to limit this term.

[00:08:17] Speaker 03:
There's no definition in there, but the court was construing this range by virtue of the examples in the patent.

[00:08:22] Speaker 02:
We have been understanding why

[00:08:25] Speaker 02:
in the final patent here, the 399, it doesn't talk about merchants in the context of selling services.

[00:08:33] Speaker 02:
It only talks about merchants in terms of selling goods, in direct contrast to the provisional application.

[00:08:40] Speaker 03:
we know why that happened because mom wrote a cookbook and they wrote that mom wrote a cookbook so the inventors asked two of the inventors are father and son and mom wrote a cookbook this uh... dunwoody gourmet cookbook that they used was actually is the example that they used

[00:08:55] Speaker 03:
to illustrate the operation of the invention.

[00:08:57] Speaker 03:
But what they're selling is essentially printed matter when it comes to this invention.

[00:09:02] Speaker 03:
As Your Honor knows from the opinion of the previous DDR case, this patent was found to have an inventive concept that was a way of creating a composite web page to conduct e-commerce.

[00:09:13] Speaker 03:
The subject matter of that e-commerce is immaterial to the point of this invention.

[00:09:18] Speaker 03:
This was the example.

[00:09:20] Speaker 03:
And again, this court does not

[00:09:22] Speaker 03:
ordinarily construe, even when there's a single example, does not ordinarily limit claims to that example when their ordinary meaning would be broader.

[00:09:32] Speaker 03:
And here we have something more than ordinary meaning.

[00:09:33] Speaker 03:
We have expressed lexicography.

[00:09:35] Speaker 03:
So you would need what you have in Modine, which is something that is clear, unequivocal, that can't be interpreted in multiple ways, before you could infer from just the fact that they discussed this embodiment with goods that they meant to put it that way.

[00:09:50] Speaker 02:
After you said

[00:09:51] Speaker 02:
mom read a cookbook, I got lost.

[00:09:54] Speaker 02:
So I've still stuck on my question of why does the text of the 399 patent not describe merchants as selling services as well as goods when that was very clearly what the provisional was expressing as to how to understand the meaning of the term merchants.

[00:10:16] Speaker 03:
Because the 399 patent is describing a specific embodiment of the invention, and they just happen to use, as the example of what's being sold using the invention, this cookbook, which happens to be a good.

[00:10:33] Speaker 03:
But there's literally no emphasis at all on any importance

[00:10:36] Speaker 03:
that fact.

[00:10:38] Speaker 03:
The invention is about how you are able to conduct e-commerce on the web without having to set up your own store using this composite web page that's provided by an outsource provider, and what you sell is completely immaterial.

[00:10:50] Speaker 03:
So I think it's just happenstance.

[00:10:54] Speaker 02:
Feel free to continue or save your remainder of your time.

[00:10:58] Speaker 03:
I am in my rebuttal time, Your Honor, so I will reserve it.

[00:11:01] Speaker 03:
Thank you.

[00:11:12] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:11:15] Speaker 00:
I'd like to pick up where DDR's counsel left off with whether the statements are clear and unequivocal.

[00:11:20] Speaker 00:
And the problem here with the term merchant is that there isn't clear and unequivocal language for a lexicographic statement or for disclaimer.

[00:11:31] Speaker 00:
Clear and unequivocal language needs to be present for either of these exceptions to apply.

[00:11:35] Speaker 00:
And the Court's precedent has long counseled us that we're to look at the entirety

[00:11:41] Speaker 00:
of the intrinsic record from beginning to end.

[00:11:43] Speaker 00:
That includes the provisional.

[00:11:45] Speaker 00:
It includes the non-provisional.

[00:11:46] Speaker 00:
We're looking at the full scope of the intrinsic record here.

[00:11:51] Speaker 00:
And there's no clear and unequivocal way that we can get to a single definition here.

[00:11:56] Speaker 00:
Priceline and Booking believes that the definition set forth in the non-provisional.

[00:12:03] Speaker 00:
It is definitional.

[00:12:06] Speaker 00:
It further reinforces why we should look at the entirety of the intrinsic record and look at what merchant means in the context of that entirety of the intrinsic record.

[00:12:15] Speaker 00:
We know from the non-provisional that merchant is limited to goods.

[00:12:20] Speaker 00:
It's limited to products.

[00:12:22] Speaker 00:
That's what the whole point of this invention was.

[00:12:25] Speaker 02:
Do you decide it's just a preferred embodiment, though?

[00:12:28] Speaker 00:
It's not, Your Honor.

[00:12:29] Speaker 00:
If you look at column 22 of the patent beginning at line 5,

[00:12:35] Speaker 00:
it sets forth what the present invention is.

[00:12:38] Speaker 00:
The present invention, and it talks about the foregoing discussion, and that's right before it discloses what a merchant is.

[00:12:48] Speaker 00:
And that definition of a merchant in the non-provisional also finds its way into the provisional as well.

[00:12:55] Speaker 00:
That's at Appendix 870.

[00:12:57] Speaker 00:
The provisional and the non-provisional actually use that same description of merchant.

[00:13:01] Speaker 00:
When it's talking about the context of this invention,

[00:13:04] Speaker 00:
what the applicant intended to invent here.

[00:13:07] Speaker 02:
Wait a second.

[00:13:09] Speaker 02:
870?

[00:13:09] Speaker 02:
I thought the provisional at 876 is where the definition of merchants is.

[00:13:14] Speaker 00:
Yes, Your Honor.

[00:13:15] Speaker 00:
The provisional at 876 has that definition of merchants that DDR relies on.

[00:13:20] Speaker 00:
It does use the word defined.

[00:13:22] Speaker 00:
We don't disagree with that.

[00:13:24] Speaker 01:
But if you look at 870, in the middle of the- Why doesn't its use of that word defined and also including both goods and services

[00:13:33] Speaker 01:
than be the one that would actually be incorporated into the non-provisional.

[00:13:36] Speaker 01:
Why wouldn't that control?

[00:13:38] Speaker 00:
It doesn't control, Your Honor, because we know from this court's precedent, such as the Gutman case, Jack Gutman, that a definition only controls if it's not contradicted by the entirety of the intrinsic record.

[00:13:53] Speaker 00:
If the intrinsic record casts doubt on a definition that's set forth somewhere in the

[00:13:59] Speaker 00:
specification or the provisional, then it can't control.

[00:14:04] Speaker 00:
It doesn't arise to the level of clear and unmistakable language that this court has demanded is necessary in order for a definition that contradicts the plain and ordinary meaning to control.

[00:14:16] Speaker 00:
And here, the plain and ordinary meaning of a merchant is a provider of goods.

[00:14:21] Speaker 00:
That's what we know from how the specification describes what this invention is intended to do.

[00:14:28] Speaker 00:
and turning back your honor to column 22 of the 399 patent, where it sets forth that this present invention, that the present invention language, and then it goes into what the merchant is defined as in the 399.

[00:14:42] Speaker 02:
Just to be clear, you're not relying on or not asking us to consider extrinsic evidence to figure out the meaning of the term merchants.

[00:14:52] Speaker 02:
It's just a purely intrinsic evidence exercise, right?

[00:14:56] Speaker 00:
We think the intrinsic evidence fully supports the plain and ordinary meaning of merchant to the extent that you looked at it.

[00:15:03] Speaker 02:
Right, but then that raises the next question.

[00:15:05] Speaker 02:
What the heck is the plain and ordinary meaning of merchant?

[00:15:07] Speaker 00:
Well, in the context of this invention, which repeatedly uses the phrase goods to be sold or products to be sold, and in the 399 patent it repeatedly discusses products, commodities, a buying opportunity, this invention is about merchant selling

[00:15:23] Speaker 00:
That's what this invention is about.

[00:15:25] Speaker 00:
So when you're looking at what the plain and ordinary meaning of merchant is, you're looking at it in the context of the specification and what the applicant meant in this patent.

[00:15:34] Speaker 00:
And the district court was right in evaluating this patent and the shift, as we know that the court must do in PHJ, the shift in language from the provisional to the non-provisional to reach the conclusion that the applicant went back to the plain and ordinary meaning of merchant in the non-provisional.

[00:15:52] Speaker 00:
It's a provider of a good.

[00:15:53] Speaker 00:
And that's all that's necessary for this court to resolve in order to affirm.

[00:15:58] Speaker 00:
Because DDR stipulated that if this construction includes a good, regardless of what else a merchant may purvey, as long as a merchant purveys a good, DDR stipulated to non-infringement.

[00:16:10] Speaker 00:
And so all this court is tasked with resolving is does a merchant need to sell a good under the plain and ordinary meaning.

[00:16:16] Speaker 00:
And we would argue that the answer to that is yes.

[00:16:19] Speaker 02:
I saw something in DDR's gray brief that suggested you're stopped from making certain kinds of claim construction arguments.

[00:16:29] Speaker 02:
Something about how something really happened at the patent board.

[00:16:33] Speaker 02:
and the patent board made some kind of ruling, and now you're stuck with that ruling from the patent board.

[00:16:40] Speaker 02:
Can you comment on that?

[00:16:41] Speaker 00:
We disagree with that, Your Honor, first and predominantly, because DDR didn't raise this argument in its opening brief.

[00:16:48] Speaker 00:
It very well could have, because DDR raised the argument below.

[00:16:51] Speaker 00:
The court evaluated it quite thoroughly below, and the problem below is that DDR also didn't raise the argument adequately in its briefing below.

[00:17:00] Speaker 00:
And so the district court

[00:17:02] Speaker 00:
took this up and said that DDR was waived effectively from raising this estoppel argument.

[00:17:10] Speaker 00:
That's at Appendix 1394, and the discussion actually carries on quite a bit, Your Honors, from 1371 to 1396, quite a long discussion about whether this argument was raised and adequately preserved.

[00:17:25] Speaker 00:
But even on its merits,

[00:17:27] Speaker 00:
The standard that the PTAB was tasked with resolving on claim construction was broadest reasonable interpretation.

[00:17:33] Speaker 00:
And we wouldn't be as stopped from arguing against the PTAB's findings under the Phillips standard, which this court applies.

[00:17:42] Speaker 02:
Where would we be if we looked at the 399 specification, just the text on the face of the 399 patent?

[00:17:52] Speaker 02:
and couldn't conclude what is the right meaning of merchants.

[00:17:59] Speaker 02:
Where would we be left with?

[00:18:01] Speaker 02:
Would we be left with running back to the provisional and just falling back onto that definition?

[00:18:08] Speaker 00:
No, Your Honor, I don't believe so.

[00:18:09] Speaker 00:
I mean, I think if you looked at the 399 patent on its face and you couldn't conclude what the plain and ordinary meaning of merchant was in light of the entirety of the text of the 399 patent, there is extrinsic evidence that supports our position.

[00:18:25] Speaker 00:
That extrinsic evidence defines merchants as a provider of commodities, as a provider of goods.

[00:18:32] Speaker 00:
And so to the extent, and that definition is consistent,

[00:18:36] Speaker 00:
with the intrinsic evidence.

[00:18:37] Speaker 00:
And so you can rely on extrinsic evidence when it is consistent with the intrinsic evidence here.

[00:18:42] Speaker 00:
And so that evidence would support us as well.

[00:18:45] Speaker 01:
Do you want to speak to commerce objects at all?

[00:18:49] Speaker 00:
Yes, Your Honor, I would.

[00:18:50] Speaker 00:
Because commerce object is a separate basis on which this court could affirm the judgment of non-infringement.

[00:18:57] Speaker 00:
These are independent terms.

[00:18:59] Speaker 00:
And the stipulation recognizes that, the stipulation of non-infringement between the parties.

[00:19:03] Speaker 00:
So this court need not even reach merchant if it affirms the construction of commerce object.

[00:19:09] Speaker 00:
And there, the parties really, the only dispute between the parties is whether the word product in the district court's construction means goods or services.

[00:19:19] Speaker 00:
The district court lifted the construction of commerce object directly from the 399 patent, from the non-provisional.

[00:19:25] Speaker 00:
It didn't appear in the provisional.

[00:19:27] Speaker 00:
It said product repeatedly.

[00:19:29] Speaker 00:
And DDR argued, well, product means goods or services.

[00:19:32] Speaker 00:
But the problem with DDR's argument there is that goods is repeatedly distinguished from services throughout the non-provisional and provisional.

[00:19:41] Speaker 00:
And in fact, it's equated with goods.

[00:19:44] Speaker 00:
And the provisional, in fact, uses the disjunctive, products or services.

[00:19:50] Speaker 00:
And the district court below properly recognized that that's a distinction.

[00:19:53] Speaker 00:
That means you're distinguishing the two things.

[00:19:57] Speaker 00:
DDR admitted that distinction results in a redundancy.

[00:20:03] Speaker 00:
If products or services, if products means goods or services, then when the provisional said products or services, what DDR asks that to mean is goods or services or services.

[00:20:15] Speaker 00:
And that makes no logical sense.

[00:20:17] Speaker 00:
It does result in a redundancy.

[00:20:18] Speaker 00:
The district court was right to reject that redundancy.

[00:20:22] Speaker 00:
DDR asks for it again in its reply brief.

[00:20:25] Speaker 00:
It says, yes, it wants the court to affirm that products or services equates to goods or services or services.

[00:20:33] Speaker 00:
And that's just incorrect and inconsistent with the plain and ordinary meaning of product as understood in this invention and this specification.

[00:20:40] Speaker 00:
There's repeated instances in the intrinsic record

[00:20:44] Speaker 00:
in which product refers to something that's tangible.

[00:20:46] Speaker 00:
That's what we all know product to be in the context of this invention.

[00:20:50] Speaker 00:
When a merchant is dealing with commodities, a buying opportunity, selling goods that have sizes, colors, that are packaged and shipped, all of those things are products.

[00:21:01] Speaker 00:
And just responding to DDR's argument that some of the products don't require shipping, well, of course, back in 1998, there was digital media, such as movies,

[00:21:13] Speaker 00:
music.

[00:21:14] Speaker 00:
Those are products that don't require shipping, but those are goods.

[00:21:17] Speaker 00:
And that's reflected in Appendix 878, in which the provisional refers to entertainment websites.

[00:21:23] Speaker 00:
Those are the types of websites that may be selling products in the context of this invention that don't require shipping.

[00:21:29] Speaker 02:
I haven't heard you say that the case name's Modine or MPHJ or Fingent.

[00:21:39] Speaker 02:
Do you not think those cases have relevance here?

[00:21:43] Speaker 00:
I do think they have relevance here, Your Honor.

[00:21:45] Speaker 00:
I apologize.

[00:21:47] Speaker 00:
I thought I mentioned MPHJ earlier.

[00:21:49] Speaker 00:
But when we're looking for merchant at the shift of the definition set forth in the provisional to the language put in the non-provisional, it is significant under MPHJ.

[00:22:00] Speaker 00:
It instructs you to look at those intentional deletion of word choices and determine whether that reflects a significant shift in the claim scope.

[00:22:10] Speaker 00:
And we do think that that supports the argument here.

[00:22:12] Speaker 00:
that to the extent that there was a definition set forth in the provisional, it was intentionally deleted, services was intentionally deleted from the non-provisional, and that reflects a significant choice by the applicant here.

[00:22:25] Speaker 00:
But you don't even have to reach that because there's enough ambiguity between the provisional and the non-provisional here to say there's not quite a clear and unmistakable lexicographic definition that anyone could go with here.

[00:22:41] Speaker 00:
The court requires it to be with reasonable clarity, deliberateness, and precision.

[00:22:47] Speaker 00:
And suffice it to say, there is some ambiguity here.

[00:22:52] Speaker 00:
And so if there's ambiguity, then you need to look at the entirety of the intrinsic record here.

[00:22:57] Speaker 00:
And merchant has a plain and ordinary meaning in the context of this invention, in the context of the 399 patent as it was claimed.

[00:23:05] Speaker 00:
And it means a provider of goods.

[00:23:07] Speaker 00:
And as long as a merchant has to provide goods,

[00:23:10] Speaker 00:
the court should affirm because the DDR stipulated to non-infringement on the basis that a merchant provides a good.

[00:23:18] Speaker 01:
Maybe I'm playing devil's advocate here, but it doesn't look like a ton of ambiguity I'm seeing on the top of page 876 in terms of how merchants define.

[00:23:26] Speaker 01:
Can you just further explain the ambiguity you were referring to?

[00:23:31] Speaker 00:
The ambiguity, Judge Cunningham, is between the shift between the provisional and the non-provisional.

[00:23:37] Speaker 00:
I agree with you that

[00:23:39] Speaker 00:
the statement at the top of 876 uses the word defined.

[00:23:43] Speaker 00:
But earlier in the provisional, the language at 870, where it says, next chain merchants are the producers of the goods to be sold through next change, that's the same language that finds its way into the non-provisional.

[00:23:57] Speaker 00:
And indeed, that language in the non-provisional is preceded by the present invention language, which we know from this court's case law is significant when looking to see whether

[00:24:06] Speaker 00:
whether a term has been given a limited or specific meaning.

[00:24:10] Speaker 00:
And at least in the context of the provisional here, there may be, it could be fairly read as some ambiguity between what merchants are.

[00:24:18] Speaker 00:
And I'll just raise one other distinction in the provisional between 870 and 876.

[00:24:24] Speaker 00:
876 talks about a merchant value proposition.

[00:24:28] Speaker 00:
And it says, merchants defined as producers, manufacturers, and select distributors of products or services are strongly attracted to the sales potential of the internet.

[00:24:36] Speaker 00:
And this is sort of marketing language referring to merchants in a broader context.

[00:24:41] Speaker 00:
But then on 870, it's talking about this invention.

[00:24:44] Speaker 00:
It's going back to this invention.

[00:24:46] Speaker 00:
And 870 is a language that finds its way into the non-provisional.

[00:24:50] Speaker 00:
It talks about the next change concept.

[00:24:53] Speaker 00:
And this is what the applicant intended to include in the non-provisional and to claim.

[00:25:01] Speaker 00:
Unless there are any further questions, Your Honor.

[00:25:04] Speaker 02:
Okay, thank you.

[00:25:05] Speaker 00:
Thank you.

[00:25:13] Speaker 03:
So counsel's argued that there's not a clear and unequivocal intention to

[00:25:19] Speaker 03:
include to more broadly read merchants in the printed patent specification.

[00:25:26] Speaker 03:
But that's not the standard for having a broader reading of the claims.

[00:25:32] Speaker 03:
We ordinarily read them to include all the embodiments that are disclosed, including those that are incorporated by reference, unless there's a clear and unequivocal disclaimer, as in Modine, where it was conspicuous that there was this substitution.

[00:25:47] Speaker 03:
That's a deletion.

[00:25:47] Speaker 03:
There was no deletion here, because

[00:25:49] Speaker 03:
a file specification is not simply the provisional specification that's been edited to be filed.

[00:25:56] Speaker 03:
And so I would suggest that by saying that it is not clear and unequivocal that the patentee intended to restrict the definition, she's admitted, counsel's admitted, that the standard for narrowing is not present.

[00:26:12] Speaker 03:
If it is unequivocal, then you need to go with the broader construction, which is the one that is set out

[00:26:18] Speaker 03:
in clear, definitional terms, using the terms defined as and incorporated by reference in the specification.

[00:26:26] Speaker 03:
The discussion of merchants as sellers of the goods, that's with a definite article referring back to what's been previously disclosed, namely what's the cookbook that's being sold in the example, that occurs in the context specifically described as a preferred embodiment.

[00:26:40] Speaker 03:
At the end of the patent, it says there are many other ways that you can implement this.

[00:26:44] Speaker 03:
This reference to the present invention

[00:26:46] Speaker 03:
is in a preceding paragraph that doesn't specifically refer to that discussion of merchants.

[00:26:51] Speaker 03:
And it says, these are ways you could do according to the present invention.

[00:26:55] Speaker 03:
So these are embodiments of the present invention, not equating this specifically with the present invention.

[00:27:02] Speaker 03:
The definition in the provisional application does not contradict anything in the regular application, because the definition in the provisional says that merchants are sellers of goods or services, and

[00:27:16] Speaker 03:
in the regular application, it gives you an example of a merchant selling a good.

[00:27:20] Speaker 03:
It's within the scope of the definition.

[00:27:23] Speaker 03:
There's no contradiction with that definition in either the embodiment or the language of the regular specification.

[00:27:32] Speaker 03:
So we submitted evidence that the plain and ordinary meaning

[00:27:37] Speaker 03:
of merchants and products in the prior art included in the one hand, purveyors of services, and on the other hand, services themselves.

[00:27:47] Speaker 03:
And those were actually unlike the general purpose dictionary definitions that were submitted by the appellees.

[00:27:53] Speaker 03:
These are examples of including a prior art of record in which merchants and merchandisers are described as selling services.

[00:28:01] Speaker 03:
In terms of whether they're stopped from arguing now that this reference to merchants as the sellers of goods in column 24 is itself definitional, we did not waive that argument.

[00:28:18] Speaker 03:
It is a rebuttal argument.

[00:28:20] Speaker 03:
We made it in our reply brief.

[00:28:24] Speaker 03:
And the issue in the district court was whether we'd use the magic word to stopple.

[00:28:28] Speaker 03:
So we did point out in our opening brief that the PTAB had, in fact, rejected the specific claim that this reference to merchants and sellers of goods was definitional and that they should be held by that.

[00:28:41] Speaker 03:
And the district court was very interested in whether we used the words to stop on that.

[00:28:45] Speaker 03:
But we substantively raised the issue.

[00:28:48] Speaker 03:
As to whether there's a different standard from the broadest reasonable interpretation to the Phillips standard, which is now applicable,

[00:28:56] Speaker 03:
With respect to lexicography, there's no distinction between BRI and Phillips.

[00:29:00] Speaker 03:
It's the same, how do you use words of definition, how do you use these symbols or markers of definition.

[00:29:07] Speaker 03:
With respect to the commerce object, below there was no separate reasoning about that.

[00:29:13] Speaker 03:
Everybody agreed that commerce object should be construed consistently with the term merchants.

[00:29:17] Speaker 03:
Commerce object is a term that the patentee used essentially generically to refer the object of the commerce that is being conducted with the invention.

[00:29:26] Speaker 03:
It should be whatever merchants sell.

[00:29:30] Speaker 03:
And I think I'm out of time, Your Honor, but I'm happy to answer any further questions you'd like.

[00:29:34] Speaker 02:
This patent has expired.

[00:29:35] Speaker 02:
Is that right?

[00:29:36] Speaker 03:
That's correct, Your Honor.

[00:29:36] Speaker 02:
OK.

[00:29:37] Speaker 02:
Are there any other pending litigations with this patent other than the ones before us?

[00:29:42] Speaker 03:
No, Your Honor.

[00:29:43] Speaker 02:
OK, great.

[00:29:44] Speaker 03:
Thank you very much.

[00:29:45] Speaker 02:
Thank you, Your Honor.

[00:29:46] Speaker 02:
The case is submitted.