[00:00:00] Speaker 04:
The next case for argument is 23-1435, Udo versus Metro Tech.

[00:01:19] Speaker 04:
Mr. Tennyson, good morning.

[00:01:21] Speaker 02:
Good morning, Your Honors.

[00:01:22] Speaker 02:
May it please the Court, our issue, our main issue is pretty simply, should the District Court have engaged in claim construction on a motion to dismiss.

[00:01:34] Speaker 02:
Now, this court said pretty clearly in Nalco versus Kim mods that that's generally inappropriate.

[00:01:42] Speaker 02:
At the pleading stage, that's not the time to be engaging a claimant.

[00:01:45] Speaker 03:
Sure.

[00:01:46] Speaker 03:
Usually, district courts do allow some discovery and do markmen and all that kind of stuff.

[00:01:51] Speaker 03:
But is there any kind of real legal rule that they shouldn't?

[00:01:57] Speaker 03:
or can't do it at a motion to dismiss stage.

[00:02:00] Speaker 03:
I mean, that case, sure, in that case, maybe there were reasons they shouldn't have done it.

[00:02:06] Speaker 03:
But let's just assume the claim term at issue has a plain and ordinary meaning.

[00:02:12] Speaker 03:
As a matter of law, there's no dispute whatsoever.

[00:02:15] Speaker 03:
And then the factual allegations in the complaint don't raise sufficient allegations of infringement under what's the plain and ordinary meaning of the claim construction.

[00:02:25] Speaker 03:
What is there to prevent the district from saying, we're going to dismiss because your allegations don't meet the limitations of this claim on its face?

[00:02:37] Speaker 02:
That is what the district court was doing here.

[00:02:40] Speaker 02:
I think that the Blackbird case.

[00:02:42] Speaker 03:
That's what I'm asking you.

[00:02:43] Speaker 03:
What's wrong with that?

[00:02:44] Speaker 03:
If, as a matter of law, there's no dispute.

[00:02:47] Speaker 03:
And I understand we'll get into whether there's dispute here.

[00:02:51] Speaker 03:
But that's a different question.

[00:02:52] Speaker 03:
You got up here and said they shouldn't do it at the motion to dismiss.

[00:02:56] Speaker 03:
That may be the case in some cases.

[00:02:58] Speaker 03:
But is there a legal rule that says you can never do claim construction at a 12-B6 stage?

[00:03:05] Speaker 02:
Never ever.

[00:03:06] Speaker 02:
There are circumstances, like Your Honor just said, if there's no dispute.

[00:03:10] Speaker 02:
And some of the cases that the district court has.

[00:03:12] Speaker 02:
Right.

[00:03:12] Speaker 03:
And claim construction is a matter of law, right?

[00:03:15] Speaker 03:
Right.

[00:03:15] Speaker 03:
So even if the plaintiff disputes the legal interpretation of the claim construction, the district court has the authority to decide, as a matter of law, that the claim means x, right?

[00:03:30] Speaker 03:
They don't have to rely.

[00:03:31] Speaker 03:
You don't get a plausible allegation of law on your pleadings.

[00:03:38] Speaker 03:
All the factual allegations are construed in your favor.

[00:03:41] Speaker 03:
But the district court still gets to decide what the law is.

[00:03:46] Speaker 02:
The district court can decide.

[00:03:48] Speaker 02:
that there's no need to engage in a claim construction or a claims construction hearing, because in this case, there's prosecution history estoppel, or in this case, the plaintiff didn't even suggest another instruction.

[00:04:02] Speaker 02:
What it was saying on its face is clear as a matter of law.

[00:04:07] Speaker 03:
Which is what the district court did here.

[00:04:10] Speaker 03:
The district court found this claim was plain as a matter of law, and it included that the term group of data points was plural, right?

[00:04:22] Speaker 02:
I think the problem there is that the way the district court... No, no, no.

[00:04:27] Speaker 03:
Let me follow this up.

[00:04:29] Speaker 03:
Let's assume that is the correct claim construction.

[00:04:33] Speaker 03:
I know you dispute it, but it's a matter of law.

[00:04:34] Speaker 03:
So we get it decided as a matter of law too, right?

[00:04:38] Speaker 03:
Right.

[00:04:38] Speaker 03:
So if we think that the group of data points language clearly has to have plurals,

[00:04:45] Speaker 03:
Then what's wrong with dismissing your case because the infringing device doesn't have plurals?

[00:04:51] Speaker 02:
Because it conflicts with the specification.

[00:04:54] Speaker 02:
No, no, no, no.

[00:04:55] Speaker 03:
That's a different question.

[00:04:56] Speaker 03:
Answer my question.

[00:04:57] Speaker 03:
If we conclude as a matter of law and argue that the claim term is plain and requires plurals,

[00:05:05] Speaker 03:
So if we've already dealt with the specification, then it is OK to discuss, right?

[00:05:10] Speaker 02:
Well, I think that plurals is also in a difficult area.

[00:05:14] Speaker 02:
Can you answer my question?

[00:05:15] Speaker 02:
This is a hypothetical.

[00:05:16] Speaker 03:
I am not asking you to give away the case and what the specification says and argue arguments about plurals and singulars being interchangeable.

[00:05:24] Speaker 03:
We have decided, as a matter of rare, that the District Court's claim construction here was correct.

[00:05:31] Speaker 03:
If that's the case, is this an affirm?

[00:05:34] Speaker 02:
This would be new, because that's not what the court said in NALCO.

[00:05:38] Speaker 02:
NALCO said it's not appropriate.

[00:05:40] Speaker 02:
But yeah, if you're going to say.

[00:05:42] Speaker 04:
OK, let's assume that our view, or my view, is the same as Judge Hughes, which is that there's not a legal barrier to doing claims injection at the 12b6 state.

[00:05:56] Speaker 04:
might depend, there might be circumstances there where it's inappropriate, and that may be your case.

[00:06:02] Speaker 04:
So what is the argument?

[00:06:04] Speaker 04:
So assume we're not, as a matter of law, the district court wasn't precluded from doing crime construction.

[00:06:11] Speaker 04:
What was there in your complaint?

[00:06:13] Speaker 04:
What did you put forth to say, no, there are things you have to do before you can reach this conclusion, and that's why we can't do it at 12b6?

[00:06:23] Speaker 02:
It's partly in the complaint, and it's partly the argument.

[00:06:26] Speaker 02:
One of the arguments that we made was that he didn't go through the normal type of construction that you would under Phillips, where you say, I'm going to look at the whole patent.

[00:06:38] Speaker 02:
I'm going to consider the specification.

[00:06:40] Speaker 04:
and now I'm going to say what I think you did that and I think maybe you may have misled a little because the suggestion that he didn't look at the spec comes from the preliminary injunction

[00:06:55] Speaker 04:
But I think in the papers before us, in the motion to dismiss, he clearly, you may disagree with his conclusions, but he did clearly look at this language in the spec and discuss why that doesn't compel dislodging what he viewed as the plain North American meaning of the plain language.

[00:07:13] Speaker 02:
Well, first of all, you did deal with it.

[00:07:15] Speaker 02:
You just disagree with how he dealt with it.

[00:07:17] Speaker 02:
Well, what he dealt with was saying, I don't have to look at the specification, because it conflicts with my understanding of the plain meaning.

[00:07:24] Speaker 02:
And I believe that that is contrary to Phillips.

[00:07:28] Speaker 00:
Can I ask you this question?

[00:07:30] Speaker 00:
So when I look at your opening claim construction brief, there is, if I remember right,

[00:07:42] Speaker 00:
significantly more material, including from the specification that you argue bears on this question of two or more or one or more as an interpretation of group.

[00:07:58] Speaker 00:
You point, I think, to specification material that you did not point to in the opposition to motion to dismiss.

[00:08:07] Speaker 02:
No, no, we said it several times.

[00:08:10] Speaker 02:
We said in the specification it says one or more.

[00:08:13] Speaker 02:
It says that you could be

[00:08:15] Speaker 00:
Let me try to put my cards on the table, OK?

[00:08:19] Speaker 00:
I think there's material in the specification that helps you, that you do cite in your claim construction brief.

[00:08:25] Speaker 00:
I don't recall your citing in your opposition to motion to dismiss.

[00:08:29] Speaker 00:
I'm thinking in particular of a passage in column 12 that appears on its face to contemplate the idea of a single data point buffer zone, the one and only one place, but nevertheless it's there.

[00:08:43] Speaker 00:
I don't remember.

[00:08:44] Speaker 00:
And then you also have the material in, I think, column five and column six, or column five and column nine.

[00:08:51] Speaker 00:
There are seven, one or more passages.

[00:08:55] Speaker 00:
And the district court said, I don't really know what to make of one or more.

[00:09:00] Speaker 00:
I just think it can't possibly be enough, because group, to me, means more than one.

[00:09:08] Speaker 00:
But you have more material.

[00:09:13] Speaker 00:
I'm going to call it a NALCO-based argument.

[00:09:17] Speaker 00:
To the extent you are arguing NALCO establishes a bright line, it might suggest it, but it's not going to stand for that.

[00:09:25] Speaker 00:
It can't possibly stand for that for the reasons Judge Hughes and Judge Warrick.

[00:09:30] Speaker 00:
What?

[00:09:31] Speaker 02:
Judge Warrick.

[00:09:32] Speaker 00:
No, for the reason of Judge Hughes, who's sitting right here, who's discussing with you.

[00:09:38] Speaker 00:
So it can't be a bright line, even though it may sound like it was a bright line.

[00:09:42] Speaker 00:
So then the question is just an incredibly case-specific, pragmatic one.

[00:09:49] Speaker 00:
Is there a relevant, relevant to the infringement question, issue of claim construction that needs more process than has taken place?

[00:10:02] Speaker 02:
Well, we had three motions to dismiss that we responded to.

[00:10:07] Speaker 02:
We did mention the column 9 and 10 language about one or more.

[00:10:14] Speaker 00:
And there's another one or more in column 5.

[00:10:16] Speaker 00:
But then this buffer zone language seemed to me quite important in column 12.

[00:10:22] Speaker 00:
You do cite that in your code construction brief.

[00:10:26] Speaker 00:
And do you also offer extrinsic evidence?

[00:10:30] Speaker 02:
we would have if we had a claim construction hearing.

[00:10:33] Speaker 00:
Right.

[00:10:33] Speaker 00:
So claim construction is a matter of law, but that can be underlying.

[00:10:38] Speaker 00:
Facts, what kind of extrinsic evidence constitutes either weighty enough or actually constitutes extrinsic factual evidence is sometimes a little bit unclear.

[00:10:52] Speaker 00:
But I guess I took it that you were making two arguments on the patent.

[00:10:57] Speaker 00:
One is you didn't get process that you should have gotten.

[00:11:00] Speaker 00:
Second is this record is wrong.

[00:11:03] Speaker 02:
Yes.

[00:11:04] Speaker 02:
Those are the two arguments other than now code, that if you are going to do a claim construction

[00:11:09] Speaker 02:
You should look at the specification and not say, I'm going to disregard the specification.

[00:11:13] Speaker 00:
He didn't disregard it.

[00:11:14] Speaker 02:
He just said it can't.

[00:11:16] Speaker 00:
Sometimes spec statements cannot overcome something sufficiently plain.

[00:11:22] Speaker 00:
And he took the word group to be sufficiently plain.

[00:11:25] Speaker 00:
I take it you do actually dispute that.

[00:11:30] Speaker 00:
And I think actually you have decent grounds for disputing it.

[00:11:35] Speaker 00:
I look at, it's not easy to find the word group in various decisions, but I look for example at this IEX non-preq case and it talks about a group of one or more

[00:11:50] Speaker 00:
agents and who said that covers one or more.

[00:11:54] Speaker 00:
The word group doesn't negate what's later in the language.

[00:12:00] Speaker 00:
We have something a little bit similar where the word set is used in another case.

[00:12:09] Speaker 00:
And Judge Orrick relied on the idea that group should be treated the same as a plural, even if that's true, right?

[00:12:19] Speaker 00:
We have a bunch of cases that say sometimes, depending on a variety of things like the spec, a plural can be one or more.

[00:12:26] Speaker 00:
The way that Congress says it is in one USC section one that says the plural includes the singular.

[00:12:35] Speaker 00:
There's a lot more contextual stuff

[00:12:38] Speaker 00:
than just saying, group means plural.

[00:12:43] Speaker 02:
Yes.

[00:12:44] Speaker 02:
This court in VersaCorp versus Agbag said exactly that.

[00:12:48] Speaker 02:
It said, in context

[00:12:50] Speaker 02:
Plural can be singular, singular can be plural.

[00:12:52] Speaker 03:
But it all comes down to the context, right?

[00:12:54] Speaker 03:
I mean, the normal meaning of a group is two or more.

[00:12:59] Speaker 03:
So in order to depart from the normal meaning, there has to be either a lexicography or some clear language in the specification to suggest that group shouldn't be given its ordinary meaning.

[00:13:14] Speaker 02:
Well, this court has said that you can have explicit lexicography or it could be implied from what's going on.

[00:13:21] Speaker 02:
No, I'm not.

[00:13:21] Speaker 03:
I'm not.

[00:13:22] Speaker 03:
I am not of the ilk that says, for lexicography, it has to say group means X. It certainly can be inferred from the context.

[00:13:33] Speaker 03:
My question is, what is your best evidence for the red group?

[00:13:39] Speaker 03:
Because I find it a little bit hard to find.

[00:13:42] Speaker 03:
There are places where it talks about one and more, that it's hard to find that in the context of the pattern group.

[00:13:51] Speaker 02:
I think the most analogous case is Yogi.

[00:13:54] Speaker 02:
No, no, no.

[00:13:55] Speaker 02:
I don't care about the case.

[00:13:57] Speaker 02:
That's the point.

[00:13:58] Speaker 03:
If you're going to define group as including one or more, then it has to be clear, at least to me, you have to have done something in the specification to suggest that you have defined group in that way.

[00:14:13] Speaker 03:
Because it just can't be that the ordinary meaning of group is one.

[00:14:21] Speaker 03:
I mean, that's not the meaning you're going to find in any dictionary.

[00:14:25] Speaker 03:
That's not a common meaning.

[00:14:27] Speaker 03:
But we're not bound by dictionary means.

[00:14:30] Speaker 03:
You can alter the meaning of that term if, by context, in the specification, we'll leave aside the extrinsic evidence for now, because I think that would be harder.

[00:14:39] Speaker 03:
But in the context of specification, it's clear that when we use the rope,

[00:14:46] Speaker 03:
group of buried asset data points, you meant that that could just be a single asset data point.

[00:14:53] Speaker 02:
What's your evidence on this specification where you've defined group in that way?

[00:14:58] Speaker 02:
It's mostly columns 9 and 10 of the patent where it says that there could be one or more data points and it says... Would you point me to the specific lines?

[00:15:10] Speaker 02:
Yeah, sure.

[00:15:13] Speaker 02:
This is at

[00:15:16] Speaker 00:
The last three lines of column nine over to the top four lines of column 10.

[00:15:25] Speaker 02:
Exactly.

[00:15:28] Speaker 00:
And you have something a little bit similar in the last four lines of column five.

[00:15:36] Speaker 02:
Right.

[00:15:36] Speaker 02:
What it's saying is that in the situation where you are dealing with only one,

[00:15:54] Speaker 02:
OK.

[00:15:55] Speaker 02:
The device calculates one or more buried asset data points for the targeted buried asset.

[00:16:02] Speaker 00:
So if it's calculated.

[00:16:04] Speaker 00:
And in the next sense, the device uploads the buried asset data points.

[00:16:10] Speaker 00:
That's a use of a plural to refer back to what was just referred to, which includes one.

[00:16:16] Speaker 02:
Right.

[00:16:17] Speaker 00:
That, I think, by a long shot, is the best thing you have.

[00:16:22] Speaker 00:
And the question is, how good is that?

[00:16:24] Speaker 02:
I think it's good because it's the situation where you're only dealing with one data point.

[00:16:29] Speaker 02:
So what do you think would happen with the one data point?

[00:16:32] Speaker 02:
You're going to do a buffer zone around the one data point.

[00:16:34] Speaker 02:
It's going to be a circle just like that.

[00:16:36] Speaker 00:
Just to complete that, the passage on column

[00:16:41] Speaker 00:
that I was referring to is at line 16, divided by the figure 4C, shows that a circular two-dimensional area comprising a buffer zone has been created around each buried asset data point.

[00:16:58] Speaker 00:
Other than that, it sure looks like everything else in the patent contemplates a buffer zone being defined by more than one data point.

[00:17:11] Speaker 00:
This, it seems, you can certainly have a buffer zone, right?

[00:17:17] Speaker 00:
You have one point and draw a circle around it.

[00:17:19] Speaker 00:
You now have a two-dimensional buffer zone.

[00:17:22] Speaker 00:
So that's one other thing.

[00:17:25] Speaker 00:
Weighing against that, or at least in my mind weighing against it, is the fact that right at the beginning of the patent, the patent defines buried asset to be something linear.

[00:17:39] Speaker 00:
Buried asset is a utility line.

[00:17:43] Speaker 00:
which suggest, and you can't have a definition of a line without two points, so what do you do with that as a kind of fundamental substantive contextual point that this whole, this patent is entirely about buffer zones around lines and you just have to have two data points for that?

[00:18:06] Speaker 02:
It doesn't say anywhere in there that it has to be lines and it does discuss turning off

[00:18:13] Speaker 02:
the functions relating to?

[00:18:15] Speaker 00:
I'm sorry, it says the technical field in column one says, the technical field relates generally to the detection and identification of buried assets, parenthesis IE, underground utility lines.

[00:18:30] Speaker 00:
And then if you go down to line 54, utility lines are referred to as buried assets herein.

[00:18:37] Speaker 00:
You make a reference, which in your brief, I think, to a junction box.

[00:18:45] Speaker 00:
I don't see that in the patent.

[00:18:48] Speaker 02:
Because it says that there could be one data point, that's why I was giving an example of what that could be.

[00:18:57] Speaker 02:
And the point of this patent is to be able to turn off the extraneous points.

[00:19:04] Speaker 02:
And so if you wanted to focus on just one point,

[00:19:07] Speaker 02:
Let's say that you wanted to update the data relating to one point, whether it's on the line or whether it's just a thing like a junction box that is just one data point.

[00:19:18] Speaker 02:
The point is that you turn off the receipt of information about the extraneous data points so that you can be dealing with just one, because that's something that somebody in the field might want to do.

[00:19:30] Speaker 02:
when they're updating the data on it.

[00:19:31] Speaker 04:
Can I turn you to column two of your patent?

[00:19:35] Speaker 04:
Because when a different, the background section, column two, I guess starting at line eight, you've got a long paragraph and then a short paragraph.

[00:19:44] Speaker 04:
And I'm not sure I understand the terminology, but it very much says the whole point of this patent is to be able to, when you're encountering multiple

[00:19:55] Speaker 04:
buried assets.

[00:19:57] Speaker 04:
And that's the importance and significance of this versus encountering one buried asset.

[00:20:04] Speaker 02:
It's encountering multiple data points or multiple buried assets, yes, that have signals that are interfering with each other.

[00:20:13] Speaker 02:
And that's why you want to turn some of them off.

[00:20:16] Speaker 02:
And that's why you might want to just focus on the one data

[00:20:19] Speaker 02:
The point of this thing, although I know it's called, it has in the title multiple buried assets, but the point is to be able to isolate what you're dealing with because you might be getting these interfering signals.

[00:20:32] Speaker 02:
That's the whole point of this patent.

[00:20:34] Speaker 02:
But that wouldn't be a problem if it was just a singular buried asset.

[00:20:39] Speaker 02:
If it's a singular buried asset with only one data point, so it's not a line and it's just a junction box or something like that, then you don't have that problem.

[00:20:47] Speaker 04:
So if there's one data point, there's no problem and there's no applicability.

[00:20:53] Speaker 04:
So this patent was intended to be covering a group, right?

[00:20:58] Speaker 04:
More than one?

[00:20:59] Speaker 02:
In general, it would be covering the group of data points that are retrieved.

[00:21:05] Speaker 02:
But if you want to focus on one of them,

[00:21:08] Speaker 02:
then you turn the other ones off.

[00:21:11] Speaker 00:
I'm sorry.

[00:21:11] Speaker 00:
I, I, I, I take it that, um, I guess I'm understanding the question to be if you have, um, say a junction box for which you can generate a little buffer zone on one data point, wherever the junction box is, just draw a circle around it.

[00:21:30] Speaker 00:
I took the question to be, how in that circumstance could there be a problem of interference by some nearby buried asset?

[00:21:41] Speaker 02:
Say there's a junction box.

[00:21:43] Speaker 02:
There could be.

[00:21:44] Speaker 02:
And there's a pipe over here.

[00:21:47] Speaker 02:
And so you've got these conflicting or interfering signals.

[00:21:51] Speaker 02:
But then you have a group of data points.

[00:21:53] Speaker 03:
You have the junction box data point, and you have the other data point.

[00:21:56] Speaker 03:
I understand your argument that you want to be able to turn

[00:21:59] Speaker 03:
interfering stuff off, but that's because the group is more than one.

[00:22:05] Speaker 03:
And so sure, at the end of the day, you might be focusing on one, but you've identified more than one as part of the method.

[00:22:13] Speaker 02:
Judge Oreck actually ruled for us on that point, because as it turned out when they showed their video,

[00:22:20] Speaker 02:
They pull in all the different data points, too.

[00:22:22] Speaker 02:
They always pull in groups of data points.

[00:22:24] Speaker 00:
The dispute is how many data points you need for a single buried asset.

[00:22:28] Speaker 00:
He said at least two.

[00:22:29] Speaker 00:
You say one will do.

[00:22:30] Speaker 02:
Yeah, I don't see how you'd necessarily have two for a junction box.

[00:22:34] Speaker 04:
Can I just bring this back a little?

[00:22:37] Speaker 04:
Because the issue before us, and we've had a discussion that is if we could, and I think we would have the ability to take this case up,

[00:22:45] Speaker 04:
and decide whether or not the claimants reject your thing, that he couldn't have done it on 12b6, and just decide the correctness or incorrectness of the claim construction done here.

[00:22:58] Speaker 04:
But I saw the issue a bit differently.

[00:23:01] Speaker 04:
I mean, you want to establish that he shouldn't have done it.

[00:23:04] Speaker 04:
We've already cast aside the notion that there's black letter law, that we can't do claim construction.

[00:23:10] Speaker 04:
So in the absence of that, you've come up with the argument on the spec, which as Judge Hughes points out.

[00:23:17] Speaker 04:
Well, any judge looks at the spec pure question of law.

[00:23:21] Speaker 04:
In your complaint, as I recall, you did have one line going to the definition of group, saying that person skilled in the art would have defined group to include one.

[00:23:33] Speaker 04:
I think that's what you said.

[00:23:36] Speaker 04:
And because that's what they do in mathematics, and that's what they, yadada.

[00:23:40] Speaker 04:
Is it your argument that that's the reason that the district court geared here, because all inferences should be going in your direction?

[00:23:50] Speaker 04:
And you should have been entitled to put on that additional evidence to inform the legal question.

[00:23:58] Speaker 04:
But at least there's an evidentiary component here about one skilled in the art.

[00:24:03] Speaker 04:
To do that, is that what your argument is?

[00:24:04] Speaker 04:
And you're just saying, no, it's all about the spec.

[00:24:07] Speaker 02:
And it's all about a question of law.

[00:24:09] Speaker 02:
No, that was part of the argument as well, that if you look at what we said, it was a mathematical definition of group.

[00:24:15] Speaker 02:
that an artisan in this buried asset location field would know.

[00:24:20] Speaker 04:
If this case, if we rejected resolving this on 12b6, it next goes to summary judgment, but there's presumably some sort of markman hearing.

[00:24:35] Speaker 04:
Is there stuff you have to say and put on, evidence that you have to put on that you have available to you to inform the district court's judgment, notwithstanding what he may ultimately decide in the end anyway?

[00:24:48] Speaker 02:
Well, we definitely have an expert who was ready to go.

[00:24:51] Speaker 02:
We were going to have the claims construction hearing very soon.

[00:24:55] Speaker 04:
So is that your argument with respect to why 12b6 was inappropriate in addition to the one that we've already kind of rejected that claimed construction is absolutely barred?

[00:25:05] Speaker 02:
Yeah, that was the main argument other than NELCA.

[00:25:10] Speaker 00:
I'm not sure why, if there was a full claim construction process taken, why 12b6 would be barred.

[00:25:20] Speaker 00:
It could well be that the claim construction, after you've gotten all the process you asked for on the claim construction that Judge Oreck

[00:25:29] Speaker 00:
would conclude the correct claim construction is group requires at least two data points for an individual buried asset, at which point he could say the facts alleged in the complaint do not allege that in the accused product there is more than one data point for a buried asset.

[00:25:56] Speaker 00:
Dismiss.

[00:25:57] Speaker 00:
That doesn't have to be summary judgment.

[00:26:01] Speaker 02:
I'm a little confused.

[00:26:03] Speaker 02:
Is your order saying that if we had the claim construction hearing and then there was a 12b6?

[00:26:09] Speaker 03:
If there's a black man and he decides to claim construction the same day again and your complaint doesn't have any allegations, why wouldn't it be 12b6?

[00:26:19] Speaker 03:
Why does it have to be similar judgment?

[00:26:22] Speaker 02:
I guess it would have to be 12c probably at that point because they would have answered.

[00:26:29] Speaker 02:
Um, but, uh, uh, I guess that would be possible if he came up with, if he went with a claim construction and we disagreed with, and then we'd be here again saying that we disagree.

[00:26:42] Speaker 04:
So what are you asking us to do in that regard?

[00:26:44] Speaker 04:
You have to tell us what you would do if you had the ability.

[00:26:47] Speaker 04:
You have to, you have to say that there is something that we were prepared to do, we would have done, and we didn't get to do because of the posture of this case.

[00:26:56] Speaker 04:
Is that, you mentioned an expert declaration.

[00:26:58] Speaker 04:
You want him to look at your expert declaration.

[00:27:01] Speaker 02:
We had an expert.

[00:27:02] Speaker 02:
We did not submit a declaration because it was a 12b6 motion.

[00:27:06] Speaker 02:
We had an expert who was getting ready for the claim construction hearing.

[00:27:10] Speaker 02:
At the claim construction hearing, I also expect that we would have put in more evidence of the prosecution history because there were related patents.

[00:27:17] Speaker 02:
And I think they make the points that we've made more clear as well.

[00:27:20] Speaker 04:
Did you make that argument to Judge Orrick?

[00:27:22] Speaker 04:
Did you say, hey, wait a minute, 12b6 is premature because we want to put out an expert declaration

[00:27:28] Speaker 04:
above group and we have prosecution history that reforms this question.

[00:27:34] Speaker 04:
Did you say that to him?

[00:27:39] Speaker 02:
We definitely said that we wanted to have more, we wanted to have a claim construction hearing which was weeks away.

[00:27:45] Speaker 03:
That's a different question that you have additional evidence and stuff that may alter his claim construction.

[00:27:54] Speaker 03:
I mean, the problem here is, if you didn't preserve any of that, and he goes back and says, well, they didn't preserve the right to submit expert testimony, they didn't preserve the right to allow the prosecution history because they didn't tell me any of this in the opposition to the 12b6, then we're going to be stuck with what he decided on claim construction and for us to decide whether that's right or wrong.

[00:28:20] Speaker 02:
We were proceeding under the local rules for claim construction and getting all of that stuff together.

[00:28:26] Speaker 02:
He was aware of that.

[00:28:27] Speaker 02:
I didn't make the argument in the 12b6 because it was limited to the pleadings.

[00:28:33] Speaker 02:
I wasn't going to get a declaration in.

[00:28:35] Speaker 04:
No, but don't you think in an opposition to a motion to dismiss, you would want to call out why a dismissal of 12b6 would be premature here.

[00:28:45] Speaker 04:
And you can't just say, because we want to claim construction hearing.

[00:28:49] Speaker 04:
I mean, because we want to claim construction hearing in which we could introduce evidence of what one's guilt and how they would have construed group about the prosecution history in this case and how it informs it.

[00:29:03] Speaker 04:
I mean, did the district court not?

[00:29:08] Speaker 04:
Did the district court have any idea that's what you wanted, other than we know you wanted to argue about, to dispute the ground, the group, and the spec, but beyond that?

[00:29:22] Speaker 02:
I believe at the last hearing, orally, I said that.

[00:29:25] Speaker 02:
You said what?

[00:29:26] Speaker 02:
I said that we wanted to get in more about the claim construction.

[00:29:31] Speaker 03:
Well, of course, the plaintiffs always want to get past the motion to dismiss stage.

[00:29:35] Speaker 03:
I mean, you're going for this all or nothing rule that you can never do claim construction at 12b6.

[00:29:41] Speaker 03:
I can tell you, you're not going to win that argument at me, because it doesn't make any sense.

[00:29:46] Speaker 03:
If the claim is clear as a matter of law, and the complaint doesn't plead sufficient allegations, then the district court can and should dismiss it.

[00:29:55] Speaker 03:
And so if there's a motion to dismiss

[00:30:00] Speaker 03:
file on the ground, why don't you have to give the district court some explanation of why claim construction is necessary, rather than rely on, well, this is just the way it's always done in patent cases if we want claim construction.

[00:30:16] Speaker 02:
I've never actually seen that as the issue before in any of the cases.

[00:30:21] Speaker 03:
That's the problem, is you're assuming you have some right to a formal claim construction hearing.

[00:30:27] Speaker 03:
And I don't think you do.

[00:30:29] Speaker 03:
So if you don't, in response to a 12b6, and you don't say their claim construction on this is wrong, and even if you think it's legally right, looking at the specification, we have evidence from the prosecution history.

[00:30:46] Speaker 03:
from an expert and we made a good thing pleading in our complaint that this scope artisan would understand this differently that creates an issue of fact for the district court, but we've just come in and say

[00:31:02] Speaker 03:
You know, their claim construction, you know, we disagree with it and you shouldn't move on to claim construction when you're left with the problem that if he doesn't agree with you and it goes with them, then he's going to grant the motion to dismiss.

[00:31:15] Speaker 02:
We didn't just rely on NALCA.

[00:31:16] Speaker 02:
We explained why we thought that the claim construction was wrong.

[00:31:20] Speaker 04:
Beyond just relying on arguing the specification or suggesting to tell one speaker in the art would have construed a group in these circumstances, I have no idea what the prosecution is, history.

[00:31:34] Speaker 04:
I didn't see any reference in the records.

[00:31:37] Speaker 02:
I mentioned it at an oral argument.

[00:31:39] Speaker 02:
I did mention that it had to do with the drawing.

[00:31:42] Speaker 04:
So beyond just telling him, we need a hearing because I want to be able to talk.

[00:31:47] Speaker 04:
you know, debate more about the impact of this specification, how it informs that.

[00:31:54] Speaker 02:
We mostly just said that the interpretation is wrong.

[00:31:59] Speaker 02:
An artisan would know that for the reasons of what's in the specification, and that you should have the specification in the form you are.

[00:32:09] Speaker 03:
And that's all legal, right?

[00:32:11] Speaker 03:
That's all illegal determination because it's intrinsic evidence, which means the district court can look at your argument and look at that argument and say, which one of you is right?

[00:32:23] Speaker 02:
And this court could then review it de novo and say that the court disagrees with the construction.

[00:32:29] Speaker 02:
That's a possibility.

[00:32:31] Speaker 00:
Do you happen to recall in which document, preferably in the joint appendix with the citation you could give, you set forth the argument about why it was wrong to say that group means at least two

[00:32:56] Speaker 02:
I think we said that several times.

[00:32:59] Speaker 02:
I'm happy to start with the first.

[00:33:05] Speaker 00:
The first of the group.

[00:33:10] Speaker 00:
Thank you Judge Glory.

[00:33:30] Speaker 00:
I mean, he must have said something because Judge Orrick actually addressed it, so.

[00:33:40] Speaker 04:
I think, what's it, 91.

[00:33:43] Speaker 04:
Is that what you think?

[00:33:46] Speaker 04:
It'll be left 32 on the top of page 91.

[00:33:52] Speaker 04:
Oh, this is in the complaint.

[00:33:53] Speaker 00:
No, I mean in an actual opposition to one of the three or four motions to dismiss.

[00:34:00] Speaker 00:
Or maybe you said this in your motion for preliminary injunction and just knew it was at play or something.

[00:34:09] Speaker 02:
We said it in opposition to the motion for preliminary injunction, because that's what I first heard.

[00:34:14] Speaker 02:
I thought it was your motion.

[00:34:15] Speaker 02:
Huh?

[00:34:15] Speaker 02:
Wasn't it your motion?

[00:34:17] Speaker 02:
I'm sorry.

[00:34:18] Speaker 02:
It was probably the reply.

[00:34:20] Speaker 02:
We talked about VersaCorp from the beginning.

[00:34:25] Speaker 02:
Then he said, I'm just going with what, in the next motions to dismiss, he said, I'm going with what I came up with for the preliminary injunction ruling.

[00:34:33] Speaker 02:
And then by the time we got to the very last one, I'm pretty sure that we put in VersaCorp again.

[00:34:48] Speaker 04:
You know, this doesn't feel, this case doesn't feel like one might assume 12b6, the judge just wants to get this case off its plate, and he thinks this is the easiest, most efficient way to do it.

[00:35:04] Speaker 04:
This judge went through with the preliminary injunction motion.

[00:35:07] Speaker 04:
He encouraged you to file three amended complaints.

[00:35:12] Speaker 04:
He kept trying to help you.

[00:35:15] Speaker 04:
and took the time to give you another chance to do things.

[00:35:19] Speaker 04:
Is that a correct sort of analysis of the proceedings as they went down below?

[00:35:25] Speaker 02:
Judge Oreck not only was helpful, but also changed his rulings.

[00:35:31] Speaker 02:
So originally he said, your product, your device, you haven't shown that the accused device

[00:35:40] Speaker 02:
brings in a group and they had originally said it doesn't either receive a group, two or more, and it doesn't generate a buffer zone based on two or more.

[00:35:54] Speaker 02:
We showed the video and then he changed his mind about that one.

[00:35:57] Speaker 02:
We were getting close to the claim construction hearing.

[00:35:59] Speaker 00:
And by that one, he changed his mind about the receiving.

[00:36:02] Speaker 00:
The receiving, he did change his mind about the receiving.

[00:36:04] Speaker 00:
It ended up relying simply on the absence of any allegation that the generating of the buffer zone was based on at least two data points per buried asset.

[00:36:14] Speaker 02:
Yeah, but part of the specification that we were going over today shows that if it gets one, it would be generating a buffer zone around the lawn in the places that your honor

[00:36:27] Speaker 02:
cited in, as I said, in columns 9 and 10.

[00:36:31] Speaker 03:
Can I ask just one more question?

[00:36:32] Speaker 03:
I know we're super aware of that.

[00:36:34] Speaker 03:
Let's assume we don't think you preserved any arguments that you should have been allowed to submit extrinsic evidence or expert testimony or anything like that.

[00:36:44] Speaker 03:
And so we're just stuck with the language of the claim in the context of the specification.

[00:36:52] Speaker 03:
And since it's de novo,

[00:36:54] Speaker 03:
We presumably can figure out for ourselves whether your interpretation and their interpretation is correct.

[00:37:07] Speaker 03:
Is there nonetheless any good reason that we may not want to do that?

[00:37:12] Speaker 03:
We think that there was problems with the analysis, and we want to send it back for kind of a more detailed discussion of group in the context of this specification.

[00:37:25] Speaker 02:
That would be a good outcome, because Your Honor pointed out things that we did not address.

[00:37:30] Speaker 02:
I had not thought of that.

[00:37:31] Speaker 02:
I was basing it all on the law that I knew of.

[00:37:34] Speaker 02:
We could have raised points about what we should bring in.

[00:37:38] Speaker 03:
The problem is, I don't understand why you aren't on notice that when you get a 12b6 motion, you need to make all the arguments in response and not just assume that when you say that we need claim construction, the court is going to kick it to after Markman.

[00:37:57] Speaker 03:
Maybe that's the typical way of doing things.

[00:37:59] Speaker 03:
But you put the district court on us in a bad position by not being specific about that on the record.

[00:38:07] Speaker 04:
Do you think, did you preserve the argument on them?

[00:38:11] Speaker 04:
I mean, maybe you did.

[00:38:12] Speaker 04:
I hadn't thought of this before.

[00:38:13] Speaker 04:
But you're appealing the motion to dismiss most of your arguments, but you couldn't do it.

[00:38:19] Speaker 04:
Do you think your appeal

[00:38:22] Speaker 04:
includes, but as an alternative, he's wrong on the claim construction.

[00:38:28] Speaker 04:
I'm appealing the substance of the claim construction, and you should reverse him on the claim construction.

[00:38:34] Speaker 04:
12b6.

[00:38:36] Speaker 02:
Yes, because we started with NALCO, and then we said, if you are going to construe this claim, why would you do that about a plural versus singular?

[00:38:45] Speaker 02:
And then finally, if you're going to say that you're

[00:38:51] Speaker 02:
interpreting the claim, you should look at the entirety in the specification and consider those things when you're interpreting it and we disagreed with the way that he disregarded, we think he disregarded the specification, said this conflicts with my understanding of the meaning.

[00:39:09] Speaker 04:
Thank you.

[00:39:09] Speaker 04:
Let's hear from the other side, finally.

[00:39:12] Speaker 04:
Thanks for your patience and we'll certainly, if necessary, take more time to allow you to speak on these issues.

[00:39:34] Speaker 01:
Thank you, Your Honor.

[00:39:35] Speaker 01:
May it please the court, Jason Laughlin from Metro Tech.

[00:39:39] Speaker 01:
The district court properly provide precedent to dismiss both Udo's patent infringement claim and its intentional interference claim.

[00:39:46] Speaker 01:
And as the court was noting, I think there's a lot of labor issues.

[00:39:49] Speaker 03:
Can you just jump right to the claim construction?

[00:39:53] Speaker 03:
Because I don't have any problems with the notion that the district court could have done this under 12b6.

[00:40:00] Speaker 03:
But I do have problems with the way he looked at the term group and then didn't.

[00:40:07] Speaker 03:
He certainly looked at the specification because he noted that there was some conflicting

[00:40:13] Speaker 03:
you know, language to the normal meaning, but I have a hard time understanding why he found that there wasn't, you know, sufficient explanation in the specification from all these

[00:40:29] Speaker 03:
And it's not a lot, but there's some discussions, as we talked about, in the specification where it does suggest you can look at just one data point in the operation of this patent.

[00:40:41] Speaker 03:
And that is the kind of evidence we often look to to define a term different than its ordinary meaning.

[00:40:47] Speaker 03:
So can you address both why he didn't look at that and then, assuming we can just do a tenet above, why that isn't enough to suggest that his claim construction is wrong?

[00:40:57] Speaker 01:
Yes, sure.

[00:40:58] Speaker 01:
I actually believe the district court did look at it, and he was looking at it in the context of the generating limitation.

[00:41:05] Speaker 01:
So I'll point you to Appendix 63.

[00:41:07] Speaker 01:
That's the first reference, Column 5.

[00:41:10] Speaker 01:
lines 63 or so.

[00:41:14] Speaker 00:
Before you point to the patent, can you point to the J page where Judge Oreck discussed these things?

[00:41:23] Speaker 00:
Yes.

[00:41:24] Speaker 00:
There are four opinions here, and I don't have in my memory what things he said and which opinions.

[00:41:32] Speaker 01:
That's right.

[00:41:32] Speaker 01:
On this point, at least.

[00:41:33] Speaker 01:
If you look at appendix 39, I think that this was in

[00:41:42] Speaker 01:
I think he's talking about the generating limitation.

[00:41:44] Speaker 01:
This was the order of grand devotion to dismiss.

[00:41:50] Speaker 04:
Well, I think it starts maybe even on 37.

[00:41:52] Speaker 04:
He's talking about figure A on page 37.

[00:42:00] Speaker 01:
That's right.

[00:42:00] Speaker 01:
So yes, so he starts on, I think, appendix 38.

[00:42:08] Speaker 01:
He's talking about the third amended complaint, figures 4A through 4G.

[00:42:13] Speaker 01:
And so those are the portions there.

[00:42:15] Speaker 01:
Right.

[00:42:16] Speaker 00:
And undeniably, every one of those has at least two data points for the buffer zone.

[00:42:21] Speaker 00:
Right.

[00:42:21] Speaker 00:
The argument on the other side is, as the specification is almost insufferable about saying, it constantly uses in the example the embodiment example, the example embodiment, that carefully avoids ever saying, in the invention,

[00:42:43] Speaker 00:
I don't mean insufferable.

[00:42:44] Speaker 00:
What I mean is legally extremely excellent.

[00:42:49] Speaker 01:
Understood, Your Honor.

[00:42:51] Speaker 01:
Appendix 37 talks about, and this is in Judge Orrick's order, and I'm looking at lines 22 through 27.

[00:42:59] Speaker 01:
The crux of the allegation is that even if the accused product, Art Decay Pro... You have about six lines from the bottom of the page.

[00:43:08] Speaker 00:
Five lines, yeah.

[00:43:09] Speaker 01:
Minus 23, that's correct.

[00:43:11] Speaker 01:
It says the Q's product, RTK Pro, we're using just one walk-back point at the time to generate buffer zones over and over.

[00:43:20] Speaker 01:
That is the functional equivalent.

[00:43:21] Speaker 00:
Well, now he's talking about DOE.

[00:43:24] Speaker 00:
I'm interested in what he said about claim construction.

[00:43:28] Speaker 01:
I see.

[00:43:31] Speaker 01:
I will find out for you in a second.

[00:43:34] Speaker 00:
Okay.

[00:43:35] Speaker 01:
But he didn't address specifically

[00:43:38] Speaker 01:
this column, column five, I think.

[00:43:41] Speaker 00:
Where is the passage where he says, oh, I see that there are a couple of one or more references, but group is just so darn plain?

[00:43:51] Speaker 00:
Doesn't he say, he says something like that?

[00:43:53] Speaker 00:
He does.

[00:43:53] Speaker 00:
Where is that?

[00:44:07] Speaker 04:
Well, that's in the preliminary injunction, if that's what you're thinking of, page six and seven.

[00:44:14] Speaker 04:
And he gives a construction there?

[00:44:15] Speaker 04:
Yes.

[00:44:16] Speaker 04:
That's very brief.

[00:44:18] Speaker 04:
I think that's what I was recalling, where he does refer to this best.

[00:44:21] Speaker 04:
But he says neither supports the ordinary rate.

[00:44:27] Speaker 00:
So is that the one and only place where he discusses the one or more?

[00:44:35] Speaker 00:
Is there anything additional?

[00:44:41] Speaker 01:
I think there is additional.

[00:44:42] Speaker 00:
Yeah, these are the two places, the bottom of column 5 and the bottom of column 9, top of 10.

[00:44:51] Speaker 00:
And by the way, did Judge O'Rourke say once the motion to dismiss cycle was beginning, I'm done with claim construction.

[00:45:00] Speaker 00:
On this point, on group, I'm just going to follow what I said before?

[00:45:04] Speaker 00:
Or was it still an open issue?

[00:45:05] Speaker 01:
Yeah, it was still an open issue.

[00:45:07] Speaker 01:
In fact, I think Judge O'Rourke was saying, even under Iqbal Talambli, he was saying either under one, if group or buried asset data points means one, or two, it wouldn't satisfy the generating limitations.

[00:45:19] Speaker 01:
So he wasn't actually saying,

[00:45:21] Speaker 01:
it needs to be construed.

[00:45:23] Speaker 01:
He actually says in an order that that's premature to determine whether it's one or two.

[00:45:28] Speaker 01:
But the generating limitation requires two or more, and that goes back to the figures we were just describing, figures 4a through 4g.

[00:45:36] Speaker 01:
Each of those examples has

[00:45:38] Speaker 00:
I think we're focused, at least I'm focused in my mind on a different question from the one you may have just answered.

[00:45:47] Speaker 00:
We spoke, we talked extensively about whether on the motions to dismiss, there was a opportunity and obligation

[00:45:59] Speaker 00:
on the part of the plaintiff to say on this interpretation of group as two or more pro-buried asset, we need more process.

[00:46:12] Speaker 00:
Because here are some of the things that we think you need to consider

[00:46:16] Speaker 00:
that you haven't considered yet, that we really even haven't had a full opportunity to present.

[00:46:23] Speaker 00:
So a threshold question about whether there was essentially a forfeiture of the opportunity is whether co-construction was still at issue in the motion to dismiss, or whether he thought that on the group interpretation issue, he was done with that because he'd already decided it.

[00:46:45] Speaker 01:
I think with the group interpretation with respect to the generating limitation, I think Judge Orrick was clear that he had decided it required two or more to satisfy the generating limitation.

[00:46:57] Speaker 03:
So I'm a little confused now, but I'm looking at claim one.

[00:47:03] Speaker 03:
Are you suggesting that the group of buried asset data points in the generating

[00:47:11] Speaker 03:
phrase means something's different than in the receiving phrase above it, because they refer back.

[00:47:19] Speaker 03:
So if a group of those assets' data points can be a singular data point, then the generating set will be based on a single data point, wouldn't it?

[00:47:33] Speaker 03:
Well, if you look at the figures.

[00:47:35] Speaker 03:
If we're arguing now that we need some claim construction on what generating means, then this has to go back, because I don't think any of this was described to me in the briefs clearly.

[00:47:48] Speaker 03:
I don't think we are arguing.

[00:47:50] Speaker 00:
So my understanding, just to see if it's right, he concluded that some

[00:47:57] Speaker 00:
I think early stage that group requires at least two data points for a given buried asset.

[00:48:04] Speaker 00:
He ultimately was persuaded by the video or something on YouTube that your product does actually receive

[00:48:13] Speaker 00:
at least two data points sometimes for a given buried asset.

[00:48:17] Speaker 00:
But he concluded, you nevertheless win on the generating because you never use two data points to generate a buffer zone, even though you've received them.

[00:48:30] Speaker 00:
Is that right?

[00:48:31] Speaker 01:
That is correct, Your Honor.

[00:48:34] Speaker 01:
I wanted to go back to Judge Hughes.

[00:48:36] Speaker 01:
You were asking me a point about claim construction earlier, and you were saying, well,

[00:48:40] Speaker 01:
Let's say we wanted to interpret it.

[00:48:42] Speaker 01:
What did Judge Orrick or what did the claim language mean if we had to interpret it de novo right now?

[00:48:47] Speaker 01:
And I wanted to step through the portion of the specification starting in Column 5, Appendix 63.

[00:48:53] Speaker 01:
The first point there in Column 5, if we go to Line 63, talks about a database may store one or more records for each buried asset.

[00:49:06] Speaker 01:
And so that's the one or more language.

[00:49:08] Speaker 01:
But of course, a database may store one or more records for each buried asset, and each record may include one or more buried asset data.

[00:49:25] Speaker 00:
So their point is, even that sentence contemplates storage

[00:49:30] Speaker 00:
of only one data point for a particular buried asset.

[00:49:36] Speaker 00:
That's their first place in the spec.

[00:49:41] Speaker 00:
It includes that.

[00:49:42] Speaker 00:
Contemplates meaning encompasses, comprises, whatever.

[00:49:46] Speaker 01:
And I think if you think about what a database is, a database is storing data, it has to store one or more points for a buried asset.

[00:49:58] Speaker 01:
It may not be sufficient to generate that frame, but the first piece of data that comes in will correlate to the buried asset, just like there was an example earlier about a junction box.

[00:50:10] Speaker 01:
But that's not what is contemplated in this claim, as I think Your Honor noted.

[00:50:16] Speaker 01:
The actual buried assets, there's examples of them.

[00:50:18] Speaker 01:
Let's call them one lines.

[00:50:20] Speaker 00:
You're treating those as only examples.

[00:50:22] Speaker 00:
That's not a helpful thing for you to be doing.

[00:50:25] Speaker 01:
No, I'm not, Your Honor.

[00:50:27] Speaker 01:
I was just saying that junction box was not one of those examples.

[00:50:30] Speaker 01:
That was the only point I was trying to make there.

[00:50:33] Speaker 03:
But going back to the database... You're not saying, I'm sorry to keep interrupting you, but you're not saying that data point itself has to be

[00:50:45] Speaker 03:
Construed as plural data points could be one or more.

[00:50:48] Speaker 03:
It's the group.

[00:50:49] Speaker 03:
That's the problem Yes, how does what they're talking about as a record correspond to a group?

[00:50:56] Speaker 03:
That's my problem.

[00:50:58] Speaker 03:
I mean if this these phrase to talk about may store one or more

[00:51:03] Speaker 03:
records for groups of each buried asset or all that kind of stuff, then it would be pretty clear you'd be out because they'd be defining groups.

[00:51:11] Speaker 03:
But is the record the same thing as receiving and generating groups?

[00:51:18] Speaker 01:
I would say they're not.

[00:51:19] Speaker 03:
How do we know that?

[00:51:21] Speaker 01:
Well, there are different words.

[00:51:22] Speaker 01:
We assume that the patent means different things.

[00:51:25] Speaker 01:
I understand your honor.

[00:51:26] Speaker 01:
But I mean, in the database context, you're putting information into a database

[00:51:32] Speaker 01:
it's going to be fed one or more records.

[00:51:34] Speaker 01:
That's how the database actually receives data.

[00:51:37] Speaker 01:
So the group here would be two MA records.

[00:51:44] Speaker 03:
Maybe I need to stop this.

[00:51:47] Speaker 03:
This is the problem with this entire case is there's stuff in the specification that I know we have the ability to review together, but without any kind of, you know, further briefing and more detailed analysis and amalgamate.

[00:52:04] Speaker 03:
It's very hard.

[00:52:06] Speaker 03:
to determine whether I have a step that's talking about one or more.

[00:52:10] Speaker 03:
Not at all.

[00:52:11] Speaker 03:
There's not very much, admittedly, and most of the actual embodiments or maybe all of them just seem to be two or more, but it's very hard to figure out.

[00:52:22] Speaker 03:
whether these trade references to one or more are just unclaimed embodiments or meant to inform the reading of group here in a way that normally shouldn't have, wouldn't be understood.

[00:52:40] Speaker 01:
Well, a lot of arguments about this particular portion.

[00:52:43] Speaker 01:
I think Uta's counsel was referring to Com 5, Com 10.

[00:52:47] Speaker 01:
This was raised before Judge Orrick.

[00:52:49] Speaker 01:
I think Judge Orrick.

[00:52:50] Speaker 04:
Did he raise them before Judge Orrick?

[00:52:52] Speaker 04:
Yes.

[00:52:54] Speaker 04:
I think this is where Judge Toronto started.

[00:52:56] Speaker 04:
We were looking for where Judge Orrick dealt with them.

[00:53:00] Speaker 04:
And we have the very current stuff in the motion, in the preliminary injunction motion.

[00:53:05] Speaker 04:
And then we've got some stuff that you pointed to, pages 37 through 39 or so.

[00:53:10] Speaker 04:
But as Judge Toronto correctly points out, that's talking about doctrine of equivalence.

[00:53:16] Speaker 04:
So tell us where and what Judge Oreck had to say about why these citations to the spec don't change his view about what you were going to mean.

[00:53:34] Speaker 01:
I think Judge Oreck actually referred that none of those references actually refer to generating a buffer zone.

[00:53:38] Speaker 01:
And we were talking about the generating limitation.

[00:53:41] Speaker 01:
And in his order, he refers to that generating limitation.

[00:53:44] Speaker 01:
I think you're correct, Your Honor,

[00:53:46] Speaker 01:
in the preliminary injunction order.

[00:53:49] Speaker 01:
Judge Ork does take that on.

[00:53:50] Speaker 01:
I understand he could have potentially written more on that subject, but he did consider that argument that the one or more limits the group of buried asset data points.

[00:54:02] Speaker 01:
And he said that doesn't make sense in light of the claim language and the specification.

[00:54:08] Speaker 04:
OK.

[00:54:09] Speaker 04:
But do you think why is it not

[00:54:14] Speaker 04:
incumbent upon us, or at least within her discretion, to say 12b6 or what.

[00:54:21] Speaker 04:
This is not sufficient treatment of the arguments made, and more needs to have been done by him, whether it's at the 12b6 or the summary judgment stage.

[00:54:34] Speaker 04:
Maybe then he can sort out whether or not your friend has waived the right to put in other material or whatever.

[00:54:45] Speaker 04:
That's too much for me.

[00:54:48] Speaker 01:
I think, of course, the court has the ability to say that when considering de novo, this was not the proper decision, or even to reverse and say,

[00:55:00] Speaker 01:
Judge Orrick, the judicial court, needs to go back and reconsider that.

[00:55:03] Speaker 01:
But I think that because Judge Orrick actually took this under consideration, and Udo's 12b6 motion actually was only arguing doctrine of equivalence.

[00:55:15] Speaker 00:
Opposition to your 12b6 motion.

[00:55:16] Speaker 01:
I apologize.

[00:55:17] Speaker 01:
Opposition to our 12b6 motion only argued doctrine of equivalence for one

[00:55:23] Speaker 01:
For one minute.

[00:55:23] Speaker 04:
Isn't that because the judge, I mean, we had a series of these.

[00:55:26] Speaker 04:
And I think in a way that he was trying to be helpful to your friend, but we made it agree on his predicate.

[00:55:32] Speaker 04:
He was telling them to do this, right?

[00:55:35] Speaker 04:
He was making the suggestion.

[00:55:36] Speaker 04:
It wasn't, I mean, it's sort of like, all you've got left, given where I am, is DOE.

[00:55:42] Speaker 04:
So go for DOE.

[00:55:44] Speaker 04:
That doesn't, it's hard press to call that a waiver.

[00:55:47] Speaker 01:
Well, I mean, going back to what the court was saying,

[00:55:52] Speaker 01:
He's had a chance to write a preliminary injunction motion.

[00:55:55] Speaker 01:
He's had multiple chances to 12b6.

[00:55:57] Speaker 01:
I'm talking about Udo had that chance.

[00:56:00] Speaker 01:
So it had a chance to raise any arguments about why the construction was wrong.

[00:56:08] Speaker 03:
Kind of preliminary claim construction for purposes of preliminary injunction hearing can't be binding on the case necessarily.

[00:56:16] Speaker 03:
What do you do with their allegation that in their complaint, they specifically alleged, and I didn't go back to look to verify, but I'm going to assume it's true, that a person scaled under an understanding group in this patent and this field to mean one?

[00:56:35] Speaker 03:
If that's, if you, if you take that allegation and construe it in the light of a favorable plaintiff, and that seems to me to be a factual allegation, did that ever come up again, or is that a waiver, or is it sufficient to plead it in the complaint, and Judge Orrick should have grappled with that allegation at some point in the claim construction process?

[00:57:00] Speaker 01:
I don't believe that was in the complaint.

[00:57:03] Speaker 04:
Well, I'm looking at Appendix 87.

[00:57:07] Speaker 04:
There's so many documents, so maybe I'm in the wrong document, but I think this is the Third Amendment complaint.

[00:57:11] Speaker 04:
At the bottom of paragraph 19, the first act of ordinary skill in the art would understand the 441 patent could work with the buffer zone around a single data point in this manner.

[00:57:25] Speaker 04:
So is that what we're talking about and aren't all inferences supposed to go to the other side?

[00:57:36] Speaker 01:
I think all reasonable inferences should go to the other side, but looking at the claim and the specification, Judge O'Rourke actually didn't say that in the order dismissing the second amended complaint, we were talking about the doctrine of coven's argument earlier, he didn't actually say that

[00:57:57] Speaker 01:
They never allege if it's one or two.

[00:58:00] Speaker 01:
He didn't say that.

[00:58:02] Speaker 01:
And that's in Appendix 26.

[00:58:04] Speaker 01:
It was Udo that dropped two and focused only on one.

[00:58:07] Speaker 01:
We were talking about whether they were impermissibly narrowed to only argue a doctrine of covenants argument.

[00:58:16] Speaker 03:
I mean, this is the problem for me, though.

[00:58:19] Speaker 03:
A lot of what you're saying seems to suggest that there's waiver on their part for not being specific about this.

[00:58:26] Speaker 03:
But the way this went down, it's very unclear whether anybody ever grappled with this notion.

[00:58:32] Speaker 03:
Let's just assume, for purpose of the hypothetical, that they have indisputable evidence that for this specific industry and technology,

[00:58:45] Speaker 03:
everybody uses the word group to mean one or more.

[00:58:49] Speaker 03:
And then that allegation is in the complaint.

[00:58:54] Speaker 03:
Why wouldn't that be enough to defeat a 12b6 motion and at least proceed to a mark on unclined construction?

[00:59:03] Speaker 03:
Setting aside the waiver, I know.

[00:59:05] Speaker 03:
That's, I assume, your primary response.

[00:59:08] Speaker 03:
But if that had been the case, and he had said, no, no, no, this patent language is clear in its face, it's plain and ordinary, meaning

[00:59:19] Speaker 03:
It means to him that there's nothing in the specification that alters that.

[00:59:27] Speaker 03:
Even if that, as a matter of the veil, is true on the specification, if they've made a good-faith allegation that extrinsic evidence would alter that conclusion, doesn't he have to grapple with that extrinsic evidence?

[00:59:39] Speaker 01:
I think you does not have to grapple with the intrinsic evidence based on how clear their claim and specification are.

[00:59:45] Speaker 03:
If their clarity is there enough that it... I think you're... You know, I'm asking the hypothetical so you can concede because I'm not sure that that's what happened here.

[00:59:55] Speaker 03:
That doesn't seem right to me that on a 12b6, if somebody has come in with a complaint and said, and I know, let's just make it very clear, that

[01:00:06] Speaker 03:
Group or merely means two or more.

[01:00:09] Speaker 03:
The patentee admits group or merely means two or more.

[01:00:13] Speaker 03:
The specification on its face doesn't have any specific lexicography.

[01:00:18] Speaker 03:
But in this industry, every skilled artisan would know

[01:00:23] Speaker 03:
that means more and more.

[01:00:26] Speaker 03:
Isn't that enough to create a factual issue that at least has to be resolved at Markman?

[01:00:32] Speaker 01:
I think that's more like MALCO, to your point, right?

[01:00:34] Speaker 03:
If there's more... And if that's what had happened here, then it would have been error for...

[01:00:40] Speaker 03:
to do this at the 12b6 stage.

[01:00:44] Speaker 03:
It is unclear whether that sentence and the complaint is sufficient or if they preserve that.

[01:00:52] Speaker 03:
I don't know if you put in the complaint and don't bring it up in your opposition to a motion to dismiss that you necessarily preserved that.

[01:01:00] Speaker 03:
But that's part of the problem with this whole case is the way it happened.

[01:01:04] Speaker 03:
And, you know, there was lots of moving parts and I think they gave

[01:01:08] Speaker 03:
the planet numerous opportunities, but it's very unclear to me how we arrived at this claim construction necessarily.

[01:01:18] Speaker 04:
Did you ever do briefing?

[01:01:19] Speaker 04:
I mean, you were prepared, but we're not going to go down that route.

[01:01:22] Speaker 04:
I mean, I was prepared to listen to your rebuttal of the points made about the various pieces of the specification.

[01:01:30] Speaker 04:
Was that ever debated or discussed with Judge Oreck in the papers here before Judge Oreck?

[01:01:37] Speaker 01:
The terms came up.

[01:01:39] Speaker 04:
The two or more came up repeatedly.

[01:01:41] Speaker 04:
I'm talking about his argument pointing to two or three places in the specification, which he argues rebuffs the fact that group can only mean more than one.

[01:01:52] Speaker 04:
And I'm sure you have good or at least answers to those arguments.

[01:01:57] Speaker 04:
Did that happen?

[01:02:00] Speaker 04:
Yes.

[01:02:03] Speaker 01:
At which stage?

[01:02:04] Speaker 01:
That definitely happened, Your Honor.

[01:02:15] Speaker 01:
I'll go to 118.

[01:02:27] Speaker 01:
So 118 is our motion to dismiss.

[01:02:44] Speaker 01:
And if we start on

[01:02:46] Speaker 01:
Appendix 120, line 11.

[01:02:49] Speaker 01:
It says, Udo's second, Udo's TAC raises a new attorney argument, trying to re-argue what this court has already repeatedly held, namely that a group of buried asset data points can include a single data point.

[01:03:06] Speaker 01:
And then we go on to point to, I think we talked about the YouTube video.

[01:03:13] Speaker 04:
No, well, Lenny says that they

[01:03:15] Speaker 04:
Yeah, the point about the mathematical computing sense, which is in their second or third amended complaint.

[01:03:21] Speaker 04:
That's right.

[01:03:24] Speaker 00:
But he seems to say there, or yes, no, this is, I mean, you actually, I guess, saying there that the court's already drawn its conclusion about the term proof.

[01:03:36] Speaker 00:
It sounds like you're saying, actually, that's not really an issue anymore.

[01:03:43] Speaker 00:
There are issues about whether the group is received, and there are issues about whether it's used for generating the buffer zone.

[01:03:55] Speaker 00:
But the interpretation of group sounds like you're saying, group past that, that's settled.

[01:04:09] Speaker 00:
And we don't, I don't think in, not surprisingly, the motion for preliminary injunction and opposition and reply are not in the joint appendix, because it's not part of the 12b6 record.

[01:04:27] Speaker 00:
There must have been some briefing on that in the PI papers, because back to where you pointed out, page six and seven of the

[01:04:37] Speaker 00:
opinion denying the P.I.

[01:04:38] Speaker 00:
of June 2022, Judge O'Rourke is discussing this point, the one or more point.

[01:04:44] Speaker 04:
And is that what your citation is on line 23 at 120, document 21?

[01:04:49] Speaker 04:
Is that the decision, the court's decision on the P.I.?

[01:04:54] Speaker 04:
You say the court has previously decided it.

[01:04:57] Speaker 04:
Yes.

[01:04:58] Speaker 04:
I assume that's the reference to that.

[01:05:00] Speaker 01:
That's right, Your Honor.

[01:05:04] Speaker 01:
I was looking

[01:05:07] Speaker 01:
at the motion to dismiss, and this was addressed, some of the language was addressed in these earlier motions to dismiss.

[01:05:13] Speaker 01:
I'm looking for it.

[01:05:14] Speaker 01:
I apologize, Your Honor.

[01:05:27] Speaker 04:
It's okay.

[01:05:27] Speaker 04:
You didn't expect this to happen.

[01:05:48] Speaker 03:
This stuff you're quoting from your motion to dismiss that we're looking at, is this the motion, the last one that was granted?

[01:05:54] Speaker 03:
The third amendment complaint, yes.

[01:05:55] Speaker 03:
Okay.

[01:05:56] Speaker 01:
But as part of the appendix, we included our other motions to dismiss.

[01:05:59] Speaker 03:
I guess what I'm concerned about is this specifically acknowledges that the third amendment complaint raises, you call it an attorney argument, but it's in the complaint that a group of data points in the mathematical sense could be one.

[01:06:19] Speaker 03:
And if that's a factual allegation, then that, you know, if it's good faith and, you know, construed in the right way, we shouldn't have the court of gravity with it, except, and we don't have the entirety of the plaintiff's opposition, so maybe they're opposed to it that the pages we have filing this don't seem like they address that.

[01:06:44] Speaker 01:
I think the argument, when we're saying it's attorney argument, is you can't just put in the construction into the complaint and then say you have to take that as true.

[01:06:53] Speaker 03:
But that's not what even your thing suggests.

[01:06:56] Speaker 03:
What your thing suggests is not construction, but that a skilled artisan would understand this as a matter of fact in the mathematics field, that this is the definition.

[01:07:08] Speaker 03:
I don't think that's a legal argument.

[01:07:10] Speaker 03:
That's what a skilled artisan would think.

[01:07:12] Speaker 04:
And isn't there an inference to be drawn from that at the 12b6 stage?

[01:07:16] Speaker 04:
Isn't he entitled to an inference?

[01:07:19] Speaker 01:
That a skilled artisan would understand?

[01:07:21] Speaker 01:
Would understand, yeah.

[01:07:27] Speaker 01:
I think he can make an inference at the 12b6 stage.

[01:07:36] Speaker 05:
Anything else, Judge John?

[01:07:39] Speaker 01:
One very brief point.

[01:07:40] Speaker 01:
Yes, of course.

[01:07:41] Speaker 01:
I didn't get a chance to walk through some of my outline here, but just very briefly.

[01:07:45] Speaker 04:
Hopefully it's not on the second issue, because we've got to make that clear.

[01:07:49] Speaker 01:
It is not.

[01:07:50] Speaker 01:
It is not.

[01:07:50] Speaker 01:
Just on the patent, in terms of amending the complaint, I just wanted to note that that's a different standard, as the court knows.

[01:07:59] Speaker 01:
De Novo, it's actually at the discretion of the court.

[01:08:01] Speaker 01:
He's had multiple times, or really has had multiple times, to consider amending the complaint.

[01:08:07] Speaker 01:
So to the extent.

[01:08:08] Speaker 04:
No, and we take that.

[01:08:09] Speaker 04:
And I think you've mentioned it, that Judge Oreck seemed to not be trying to efficiently get rid of this case, but trying to be helpful in terms of figuring out all of the issues and arguments.

[01:08:26] Speaker 01:
So we take that.

[01:08:26] Speaker ?:
OK.

[01:08:27] Speaker 01:
Well, any other questions?

[01:08:30] Speaker 01:
Thank you.

[01:08:31] Speaker 01:
Thank you very much.

[01:08:42] Speaker 02:
I know.

[01:08:43] Speaker 02:
I argue with that.

[01:08:44] Speaker 04:
Well, we'll restore it two minutes if you need it.

[01:08:46] Speaker 02:
I just wanted to clarify something.

[01:08:48] Speaker 03:
Can I just have one question?

[01:08:49] Speaker 03:
Come on.

[01:08:50] Speaker 03:
Sure.

[01:08:51] Speaker 03:
That last point we were talking about, about your 30-minute complaint alleging what it's good I was going to know about the term in mathematics, which they acknowledged in their last motion to dismiss.

[01:09:05] Speaker 03:
Did you respond to that in your opposition?

[01:09:08] Speaker 03:
Because it's not.

[01:09:09] Speaker 03:
or that issue about what a skilled artisan thinks.

[01:09:12] Speaker 03:
Because we want to have excerptive pages in the appendix and I don't see any discussion in the excerptive pages that you said you can't dismiss this because a skilled artisan would define group as one or more.

[01:09:28] Speaker 02:
What I recall that we argued was that he could reconsider what he'd thought before.

[01:09:32] Speaker 02:
Yes, I can't hear you.

[01:09:34] Speaker 02:
What we argued to him was that he could reconsider what he had concluded before because there's been more discovery and things like that.

[01:09:43] Speaker 02:
Specifically on that point?

[01:09:44] Speaker 02:
I believe it related to group, but I cannot recall from memory.

[01:09:48] Speaker 02:
In that opposition?

[01:09:51] Speaker 02:
in the opposition, the last opposition.

[01:09:54] Speaker 02:
We said a lot of things.

[01:09:55] Speaker 02:
And we were just saying, for doctrine of equivalence, we were saying that because we were stuck with claims of construction we didn't want.

[01:10:02] Speaker 03:
I understand.

[01:10:03] Speaker 03:
But if you didn't respond, if you put this in your amended complaint, they acknowledged it and said they shouldn't be able to raise this, and you didn't respond in your opposition,

[01:10:16] Speaker 02:
Wouldn't that be waiver?

[01:10:18] Speaker 02:
I'm sure we did respond.

[01:10:19] Speaker 02:
That sounds like waiver, what you're describing.

[01:10:23] Speaker 02:
But we don't have those pages, I don't think.

[01:10:26] Speaker 02:
I thought the rule was that we put in the appendix only those pages that were referred to in the briefs.

[01:10:31] Speaker 03:
Well, I would think that arguments about what a skilled artisan would think about the proper construction of group would be central to your argument here.

[01:10:40] Speaker 02:
We can supplement now if the court wants.

[01:10:43] Speaker 02:
And we make sure.

[01:10:45] Speaker 02:
We have your document.

[01:10:48] Speaker 00:
I did want to point out that you made the argument about rolling claim construction.

[01:10:53] Speaker 00:
But I'm not sure you made this specific point about the allegation of what might be a factual point about irrelevant artisans.

[01:11:03] Speaker 00:
I understand.

[01:11:04] Speaker 02:
On page 15 of the appendix is where Judge Work says, I already decided this issue.

[01:11:10] Speaker 04:
They were saying that it was whatever the term we used on our cases that it would have been.

[01:11:15] Speaker 04:
Utah.

[01:11:16] Speaker 04:
Utah.

[01:11:17] Speaker 04:
Thank you.

[01:11:18] Speaker 04:
That was just frivolous.

[01:11:22] Speaker 04:
Thank you.

[01:11:23] Speaker 04:
Anything more to say?

[01:11:25] Speaker 04:
We thank both sides.

[01:11:28] Speaker 04:
Case is submitted.