[00:00:00] Speaker 02:
Our final case for argument today is 24-2292 Nimbelink Corp.

[00:00:07] Speaker 02:
vs. Digi International.

[00:00:09] Speaker 02:
Mr. Manobin.

[00:00:13] Speaker 02:
Thank you.

[00:00:14] Speaker 01:
May it please the court.

[00:00:18] Speaker 01:
Your honors, the district court made two errors.

[00:00:21] Speaker 01:
The first one is a patent law error and the second one, also important to this appeal, is an error on the adequacy of the complaint.

[00:00:30] Speaker 01:
Let me address the first error.

[00:00:32] Speaker 01:
The district court erred in holding that the term space-efficient cellular modem device is indefinite.

[00:00:40] Speaker 01:
The term at issue is a term of degree.

[00:00:43] Speaker 01:
As such, as this court has made clear, the specification is key.

[00:00:48] Speaker 02:
And in fact, the district court found... Be clear, you're starting with what the claim should... how that preamble should be construed.

[00:00:56] Speaker 02:
Are you accepting that it is in fact a limitation?

[00:01:00] Speaker 01:
No, Your Honor.

[00:01:02] Speaker 01:
Well, so let me be clear on that.

[00:01:05] Speaker 01:
We think under your Allen Engineering case, it is a limitation if you find meaning.

[00:01:10] Speaker 01:
If you find that there is no meaning, that it is actually indefinite, which you don't believe it is, then we don't think it breathes life into the claim and it's not a limitation.

[00:01:20] Speaker 02:
What about the fact that it is relied on for antecedent basis by dependent claims?

[00:01:25] Speaker 01:
Your Honor, I think there's a case, and I can't come up with it right now, but there's a case that we cite in our brief.

[00:01:30] Speaker 01:
The dependent claims don't actually use the word space efficient, and I think that makes a difference in the antecedent basis argument for your law.

[00:01:37] Speaker 02:
Well, it doesn't make a difference in whether the preamble's an antecedent basis argument.

[00:01:40] Speaker 02:
So you're saying some portions of the preamble are limiting, but other portions are not?

[00:01:44] Speaker 01:
Yes, well the term space efficient is not being used as an antecedent basis in the rest of the claims.

[00:01:49] Speaker 01:
And so, and I think that's consistent with the law from this court.

[00:01:53] Speaker 01:
And that's the reason we're saying it's not being used for antecedent basis.

[00:01:57] Speaker 00:
So on that point, just on the limiting nature of

[00:02:01] Speaker 00:
that particular element of the preamble.

[00:02:04] Speaker 00:
And I don't have the case in my mind either, but I'm pretty sure there is a case that says some elements of a preamble can be.

[00:02:11] Speaker 00:
There isn't anything in any of that.

[00:02:15] Speaker 00:
bodies of the claims that do refer back to space efficient as a preamble as an antecedent basis, I think.

[00:02:24] Speaker 00:
Let me just tell you how one way that I'm exploring, I don't know what to make of this, is as follows.

[00:02:32] Speaker 00:
The spec talks about a number of different properties that could have space-saving effects.

[00:02:42] Speaker 00:
Some of them are footprint properties, some of them are stacking multi-layer properties, some are use of two sides properties.

[00:02:51] Speaker 00:
all of which could have space-saving effects for, I think, pretty obvious reasons.

[00:02:59] Speaker 00:
And I think it's true that at least one of the four or five different properties that could lead to saving of space is in the body of every single claim, including

[00:03:16] Speaker 00:
the independent claims.

[00:03:20] Speaker 00:
If that's true, then

[00:03:24] Speaker 00:
Why wouldn't this be a case in which the quite general term space efficient is not limiting?

[00:03:36] Speaker 00:
Because it's not necessary for any of the structural features.

[00:03:42] Speaker 00:
And the general idea conveyed by that term is, in fact, reflected in specific structural features in every single claim.

[00:03:52] Speaker 01:
And Your Honor, we would agree with that.

[00:03:55] Speaker 01:
We would agree that it's not necessarily limiting.

[00:03:58] Speaker 01:
It is a label.

[00:03:59] Speaker 01:
But in this case, the reason we were saying if you find

[00:04:04] Speaker 01:
find it to be useful, because the specification really does focus in on this footprint idea.

[00:04:11] Speaker 00:
Partly because the prior art devices had such a large footprint, and so they teach the XB sized type devices, and in that... I guess my, just to be clear about what I've been trying to understand, and its significance too, other aspects

[00:04:31] Speaker 00:
that are not themselves the footprint can contribute to having a smaller footprint.

[00:04:40] Speaker 00:
By putting, you know, like you can have a smaller footprint of a house if you have four stories or something.

[00:04:45] Speaker 04:
I thought, as I read your brief, that you agreed that space efficient was a limitation unless it was indefinite, in which event it wasn't a limitation.

[00:04:57] Speaker 01:
And that is how we've argued it because we believe that

[00:05:00] Speaker 04:
In other words, you say it's a limitation unless it's indefinite.

[00:05:02] Speaker 01:
Well, because I think I'm following your rule under Allen Engineering, saying it's a label.

[00:05:09] Speaker 01:
We think there's a value to interpreting it and making it a limitation.

[00:05:14] Speaker 01:
But as in Allen Engineering, if you find that space efficient,

[00:05:20] Speaker 01:
even with the examples and everything from the specification is not definite enough and doesn't provide enough guidance, then we don't think it breeds life into it because all the other mandatory reasons aren't applicable.

[00:05:33] Speaker 00:
The idea that I was exploring is not the same thing as what you just said.

[00:05:40] Speaker 00:
The idea I was exploring would be an argument or a way of saying it's not limiting without regard to whether it is indefinite or not, just because it doesn't come under a series of standards we have for limiting things, not the structures in the body are complete, there's no antecedent basis, and in fact,

[00:06:05] Speaker 00:
Every single claim has some structural feature in the body that does fall under the general idea.

[00:06:13] Speaker 00:
That's not an argument you have made.

[00:06:15] Speaker 01:
That is not an argument we made, but I don't have a dispute with that argument either.

[00:06:20] Speaker 01:
It's true that if you were to interpret the claim that way and say it's not limiting and reverse it, we would be fine with that too.

[00:06:27] Speaker 01:
We can live with... But you didn't argue it.

[00:06:29] Speaker 01:
No, because we think the fair read of this based on your case law in Sonics, it's a term of degree.

[00:06:37] Speaker 01:
It is defined by the drawings and the spec and the claims.

[00:06:41] Speaker 01:
And we think there is meaning to it.

[00:06:44] Speaker 01:
And so it would help.

[00:06:45] Speaker 04:
How is it defined by the spec?

[00:06:49] Speaker 04:
Because it's an XB factor.

[00:06:54] Speaker 04:
that's a refers to pin placement, not size, right?

[00:06:59] Speaker 01:
No, your honor.

[00:07:00] Speaker 01:
So it refers to... No, standing alone.

[00:07:04] Speaker 01:
Standing alone, XB refers to both the footprint and there's drawing after drawing in the provisional as well as in the spec where what they're talking about for the Skywire product that they designed, which is where all this started, is that that is considered part of an XB

[00:07:22] Speaker 01:
form factor, but it's an XB footprint.

[00:07:25] Speaker 01:
And so XB is not just the pins.

[00:07:27] Speaker 04:
But the footprint could be anything.

[00:07:28] Speaker 04:
I mean, in your product, the footprint is one thing.

[00:07:36] Speaker 04:
digital, digitized, digity.

[00:07:39] Speaker 04:
It's another, right?

[00:07:41] Speaker 01:
I don't think that's true, Your Honor, because part of what the spec and even the court, when they found that one meaning was the size of the modem, the court even found that references to XB size, the drawings in figures 5, 8, and 10, I think, where they show the actual size as a dimension.

[00:08:01] Speaker 04:
That's a digity product, right?

[00:08:03] Speaker 04:
I'm sorry?

[00:08:03] Speaker 04:
That's the digity product.

[00:08:06] Speaker 01:
as a Digi product?

[00:08:08] Speaker 01:
No, but both as a, it refers to a Digi product which the extrinsic evidence also shows at the time of the filing there's only three sizes, but beyond that the patent itself shows dimensions for it.

[00:08:20] Speaker 02:
Okay, stop.

[00:08:21] Speaker 02:
I have a couple of technical questions.

[00:08:22] Speaker 02:
You said at the time of the patent there were only three sizes.

[00:08:27] Speaker 02:
What are the three sizes you're talking about?

[00:08:29] Speaker 02:
And just give me one second here.

[00:08:31] Speaker 02:
I understand there to be

[00:08:35] Speaker 02:
three types of XB products.

[00:08:39] Speaker 02:
The TH, which is what I think this patent is about, and do you know what I mean by TH?

[00:08:45] Speaker 01:
It's XB Pro.

[00:08:46] Speaker 02:
Through hole.

[00:08:47] Speaker 02:
There are three types of embedded cellular moldomes.

[00:08:51] Speaker 02:
There's the through-hole, there's the surface-mounted, and then there's the micro-mounted, right?

[00:08:55] Speaker 02:
I mean, are you following me?

[00:08:57] Speaker 01:
Yep, yep, I'm following you.

[00:08:58] Speaker 02:
Are you?

[00:08:59] Speaker 02:
That is what I think your expert, Mr. Fernand, or Fernald, whatever his name is, that's what I think he's talking about when he talks about the three types.

[00:09:07] Speaker 02:
I think he's talking about TH, MMT, and SMT, which is what I understand the technology to be.

[00:09:13] Speaker 02:
But my problem is MMT didn't exist at the time of this patent.

[00:09:16] Speaker 02:
Only TH and SMT did.

[00:09:19] Speaker 02:
So I'm just trying to track what are the three types that he refers to, or what are the three sizes that you just mentioned.

[00:09:28] Speaker 02:
Because none of those sizes correspond precisely to the dimensions in your dependent claims, but they're similar.

[00:09:34] Speaker 02:
And let me just give you a tiny bit of background.

[00:09:37] Speaker 02:
Because I understand that in this art,

[00:09:43] Speaker 02:
Prior to the invention of these embedded cellular modems, the modems were enormous.

[00:09:50] Speaker 02:
We're talking multiple inches by multiple inches each.

[00:09:54] Speaker 02:
And this Digi XB wave of invention reduced size with regard to RF.

[00:10:01] Speaker 02:
And then your client came around and figured out how to reduce size with regard to cellular.

[00:10:06] Speaker 02:
Now, maybe not quite as small as the RFs could be, but your client was able to reduce the size

[00:10:13] Speaker 02:
in an embedded cellular modem.

[00:10:15] Speaker 02:
That's what I understand the state of the art to be.

[00:10:18] Speaker 02:
I understand that from the record from all of the expert declarations and testimony.

[00:10:22] Speaker 02:
So tell me what's wrong with that.

[00:10:24] Speaker 02:
But what are the three?

[00:10:25] Speaker 02:
Tell me what's wrong with my understanding of the technology based on what I've read and what's been presented.

[00:10:30] Speaker 02:
But also tell me what are the three?

[00:10:32] Speaker 02:
Because the expert talks about three.

[00:10:33] Speaker 02:
You just mentioned three.

[00:10:34] Speaker 02:
And the only three that I know of, which, by the way, these words don't appear on the record.

[00:10:38] Speaker 02:
But the three I know about are TH, SMT, and MMT.

[00:10:42] Speaker 02:
And so that is a tiny bit of my mental supplementing of the record.

[00:10:47] Speaker 02:
But what I'm trying to do here is to understand what your expert meant when he talked about three, because one of those three did not exist in 2005.

[00:10:55] Speaker 02:
Didn't come along till much later.

[00:10:56] Speaker 02:
So what are these magic three that you just mentioned and that your expert mentioned?

[00:11:01] Speaker 01:
So, Your Honor,

[00:11:03] Speaker 01:
It's on appendix page 741, paragraph 10.

[00:11:07] Speaker 02:
I am right there.

[00:11:08] Speaker 02:
I got it open in front of me.

[00:11:09] Speaker 02:
Go ahead.

[00:11:10] Speaker 01:
OK.

[00:11:10] Speaker 01:
And so what the expert says at the bottom is...

[00:11:17] Speaker 01:
So the nimbling sky bar, which is the product that you mentioned is the upgrade, which is the cellular modem, is with the XB form factor and he mentions the size there, 33.6.

[00:11:28] Speaker 02:
When you say XB form factor, that's pin placement.

[00:11:32] Speaker 02:
When you're talking about form factor, for example, in the throughput,

[00:11:35] Speaker 02:
modems.

[00:11:37] Speaker 02:
It's the typical 10 and 10, each one separated by two millimeters.

[00:11:41] Speaker 02:
That's what the form factor is.

[00:11:42] Speaker 02:
It doesn't matter whether it's a trapezoid or a rectangle.

[00:11:44] Speaker 02:
That's what I understand the form factor to be.

[00:11:47] Speaker 02:
Tell me if I'm wrong.

[00:11:48] Speaker 02:
Correct my technical understanding, especially if you have record evidence.

[00:11:51] Speaker 01:
Yep, Your Honor.

[00:11:52] Speaker 01:
And so the pins can be part of the form factor, but

[00:11:56] Speaker 01:
The dimensions, in other words, the actual footprint is also part of that form factor.

[00:12:02] Speaker 01:
Because that is why when the patent says XB sized, what they're talking about is the footprint, the actual dimensions of the product.

[00:12:12] Speaker 01:
And you can look.

[00:12:13] Speaker 02:
I agree.

[00:12:13] Speaker 02:
I agree.

[00:12:15] Speaker 02:
I 100% agree.

[00:12:16] Speaker 02:
XB size, the Digi product was revolutionary at the time.

[00:12:21] Speaker 02:
I remember it.

[00:12:23] Speaker 02:
It was really a big deal to be able to significantly reduce the size of these modems the way they did.

[00:12:29] Speaker 02:
Now, theirs were RF, and you all came along and did a cellular version.

[00:12:33] Speaker 02:
Also, super cool, by the way.

[00:12:35] Speaker 02:
You know, but what I'm, so I get, I get it that when you talk XB, when I hear the word XB, I think small size modem.

[00:12:44] Speaker 02:
That's what comes to mind.

[00:12:45] Speaker 02:
Did you did a great job with that branding?

[00:12:47] Speaker 02:
And that's what comes to my mind.

[00:12:48] Speaker 02:
But, but your dependent claims don't track in size exactly.

[00:12:54] Speaker 02:
to the XB form that was in existence at the time, those RF modems were a tiny bit smaller than what your dependent claims claim.

[00:13:01] Speaker 02:
Now, in the same general approximate size compared to the 2 by 3 inch modems that existed otherwise, but a little bigger.

[00:13:11] Speaker 02:
So what do I make of all that?

[00:13:12] Speaker 02:
And if you want to, you never did answer my question about your magic number three, so I definitely want you to do that.

[00:13:17] Speaker 01:
So your honor, and then if you see below the next sentence, it says Digi XBRF and the XB Pro, and it gives dimensions for those.

[00:13:26] Speaker 01:
And those are the three that I'm talking about.

[00:13:30] Speaker 02:
Where?

[00:13:31] Speaker 02:
I'm in paragraph 10.

[00:13:33] Speaker 01:
At the last three lines, or the last two lines, you see that we attach a data sheet for the mechanical drawing of Digi XBRF modem and the XB Pro dimensions and then we lay out the dimensions for them.

[00:13:47] Speaker 01:
Do you see that?

[00:13:48] Speaker 02:
Two things.

[00:13:49] Speaker 02:
I see RF and I see Pro.

[00:13:52] Speaker 02:
You said there's a magic number three.

[00:13:53] Speaker 02:
What's number three?

[00:13:56] Speaker 02:
You said three, and your expert said three times.

[00:13:58] Speaker 02:
I can take you through his deposition where he said three.

[00:14:00] Speaker 02:
I think he's talking about THSMT and MMT, because he's being deposed years later when all three existed.

[00:14:06] Speaker 01:
And then the third is the Skywire, because the Skywire is the other one that we have in there.

[00:14:11] Speaker 01:
So the Nimbling Skywire.

[00:14:13] Speaker 02:
But that's not an XB.

[00:14:15] Speaker 01:
That is, it is an, I mean, the way we filed it for the provisional and for this patent, it was considered part of the XB size.

[00:14:26] Speaker 02:
So that's, and actually that's in paragraph, I mean that's... Is the NimbleLink Skywire the exact size as the dependent claims?

[00:14:33] Speaker 02:
I gotta ask you, because you know that there are need of it.

[00:14:36] Speaker 01:
It's not.

[00:14:36] Speaker 01:
It's not identical to the dependent.

[00:14:38] Speaker 01:
Dependent claims cover a range of the sizes, but the dependent claim is not specific to the XP size.

[00:14:43] Speaker 00:
Very close in area to the claim seven, claim six is about 40% larger in area.

[00:14:53] Speaker 01:
Yeah, it's very close.

[00:14:54] Speaker 01:
I mean, it is close.

[00:14:54] Speaker 00:
It's close to one.

[00:14:55] Speaker 00:
No, it's the 40% that I think I'm more interested in what you make of.

[00:15:05] Speaker 00:
So the area of the claim 6-way is, I think, 1,400 square millimeters.

[00:15:11] Speaker 00:
The area, I think, of the Skywire 5 is about 975 and 74 and change.

[00:15:17] Speaker 00:
So there's about a 40% difference.

[00:15:21] Speaker 00:
One way to think about what the district court said, just on the footprint side, on the side of things, is, boy, if you can go 40% higher, what's the maximum?

[00:15:38] Speaker 00:
How is anybody supposed to know what the maximum is under this term space efficient if it's

[00:15:46] Speaker 00:
going to be, I don't know, tied to something to the three examples given.

[00:15:52] Speaker 01:
And so, Your Honor, it's tied to both the examples and the dependent claims, because it's a first action allowance as part of the original disclosure.

[00:15:59] Speaker 01:
And so those would be the guidelines and the objective measures that would provide one of skill.

[00:16:08] Speaker 00:
How far can you get from that?

[00:16:11] Speaker 00:
The two XB things, depending on how you count, I think have in the low 600s to maybe 800 square millimeters.

[00:16:25] Speaker 00:
And that's if you take the hexagon and fill it out into a rectangle slightly lower if you don't.

[00:16:31] Speaker 00:
Um, obviously, and then the three examples, your sky wire, which is figure five, the claim seven and six get bigger and bigger and bigger until you get to claim six, which is 1400 square millimeters.

[00:16:45] Speaker 00:
And if what, and admittedly, I think you have to be able to say.

[00:16:49] Speaker 00:
If, um, uh, you know, space efficiency.

[00:16:57] Speaker 00:
has a meaning.

[00:16:58] Speaker 00:
It's got to be somehow keyed to those examples.

[00:17:01] Speaker 00:
They have to include those examples.

[00:17:04] Speaker 00:
But how much more?

[00:17:07] Speaker 01:
Your Honor, the way we had always viewed it was we were limited to those examples and that disclosure.

[00:17:14] Speaker 01:
We weren't thinking about going beyond those because.

[00:17:18] Speaker 00:
Yeah, but somebody else might be thinking of it.

[00:17:20] Speaker 01:
That's the whole point of indefinite.

[00:17:22] Speaker 01:
It's somebody else.

[00:17:23] Speaker 01:
But on somebody else, the space efficient, the way we've described it and the way we've guided people on it is to say, hey, look at the footprint.

[00:17:32] Speaker 01:
Prior Art had larger footprints.

[00:17:34] Speaker 01:
And we've now given you guidance because we've given you the examples with the dimensions.

[00:17:41] Speaker 04:
The examples aren't referenced in the spec.

[00:17:44] Speaker 04:
I'm sorry?

[00:17:44] Speaker 04:
The examples are not referenced in the specification.

[00:17:48] Speaker 01:
What do you mean?

[00:17:49] Speaker 01:
I don't understand that.

[00:17:50] Speaker 01:
But they're in figures five, eight, and ten.

[00:17:53] Speaker 02:
So those... The dimensions are all there.

[00:17:55] Speaker 01:
The dimensions are in the figures themselves.

[00:17:57] Speaker 02:
And in the text at column four.

[00:17:59] Speaker 01:
Yeah.

[00:18:00] Speaker 00:
And so... Does the spec reference any of the dimensions of the prior art cellular modem ones?

[00:18:08] Speaker 00:
The ones that are like dollar size?

[00:18:10] Speaker 00:
I take it, but that's...

[00:18:11] Speaker 01:
No, the spec doesn't do anything with the big cellular modems.

[00:18:18] Speaker 00:
I think the chief referred to, I think, an idea.

[00:18:22] Speaker 00:
If there is a realm of the small XB devices, the RF devices, that are down in the mid to high hundreds range, not three digits yet, but getting close,

[00:18:40] Speaker 00:
and the cellular modems are huge, 20 times bigger or something in area, then maybe there really is room with getting up to 1,400.

[00:18:53] Speaker 00:
And a skilled artisan would know it's a lot more like the XB size than the dollar size.

[00:19:03] Speaker 00:
But I don't know where that second comparison comes from.

[00:19:06] Speaker 01:
And so, Your Honor, the second comparison, I mean,

[00:19:09] Speaker 00:
You have a very long list of prior art.

[00:19:14] Speaker 00:
Does any of them provide a size of prior art cellular modems so that a skilled artist might read this and understand?

[00:19:27] Speaker 00:
Well, obviously, you've got to be much closer to the digi-RF size

[00:19:35] Speaker 00:
and the size of the examples specifically called out in this patent than to the prior art.

[00:19:44] Speaker 00:
It's the van part.

[00:19:45] Speaker 00:
I don't have numbers to put on it.

[00:19:47] Speaker 01:
And so, Your Honor, the closest would be, other than it would be knowledge, one skill in the art would have, just because the progression that Chief Judge.

[00:19:55] Speaker 00:
Did your expert say, here are rough dimensions of prior art cellular murder?

[00:20:01] Speaker 00:
I think he addressed it.

[00:20:04] Speaker 02:
Page 740 and 741.

[00:20:09] Speaker 01:
I think he talks about the history of it, Your Honor.

[00:20:11] Speaker 01:
I just.

[00:20:12] Speaker 02:
Patenties were critical.

[00:20:13] Speaker 02:
This is your expert.

[00:20:13] Speaker 02:
The patentees were critical of prior art embedded cellular modems, in part because they required a large footprint.

[00:20:19] Speaker 02:
And he does not specifically call out with specificity any individual prior art cellular modems or point to, for example, which he might have, some of the patents that are listed as prior art on the front page of this patent, which are two old-fashioned cellular modems.

[00:20:36] Speaker ?:
No.

[00:20:37] Speaker 01:
The only thing I can add to that is the notice of allowance.

[00:20:41] Speaker 01:
The notice of allowance where the examiner said it's the relative size and he was the closest art that he cited and I forgot the name of it now.

[00:20:53] Speaker 01:
But that is one of the more bigger modems.

[00:21:01] Speaker 02:
Okay, the examiner was on 927.

[00:21:02] Speaker 02:
So, prior art.

[00:21:07] Speaker 01:
Yeah.

[00:21:08] Speaker 02:
And he says the closest prior art is Rofu Garen, and that's one of the big ones.

[00:21:13] Speaker 01:
Yep, disclosing the cellular modem.

[00:21:14] Speaker 02:
Regular cellular modem that's like two and a half inches by four inches, I think, if I remember right.

[00:21:19] Speaker 02:
Something in that genre.

[00:21:21] Speaker 02:
And then he says, by contrast, prior art doesn't disclose the relative size and overall complete structure of the claimed invention.

[00:21:29] Speaker 02:
So he is expressly comparing it to one of the old, big prior art.

[00:21:33] Speaker 02:
Prior art.

[00:21:34] Speaker 01:
And he says the relative size.

[00:21:44] Speaker 02:
OK, why don't we save time?

[00:21:45] Speaker 02:
Well, you don't have any time left.

[00:21:46] Speaker 02:
I'll give you two minutes for rebuttal.

[00:21:48] Speaker 02:
Let's go ahead and hear from opposing counsel.

[00:21:51] Speaker 01:
Your Honor, can I get five seconds or 10 seconds to mention the contract issue, just in case?

[00:21:56] Speaker 01:
Go.

[00:21:57] Speaker 01:
One.

[00:21:57] Speaker 01:
Sir, Your Honor, the judge violated the rules under Iqbal and Twombly.

[00:22:02] Speaker 01:
If you take the allegations as true, we plead breach of contract, and it excludes the independent development that the judge is suggesting.

[00:22:11] Speaker 01:
And that's the error the judge made.

[00:22:13] Speaker 02:
OK.

[00:22:14] Speaker 02:
How do I pronounce your name?

[00:22:20] Speaker 02:
Razavi?

[00:22:24] Speaker 03:
May it please the court, Catherine Razavi from Fagry-Jinker on behalf of Digi International.

[00:22:30] Speaker 03:
The district court correctly held that Nimbleling's patents are invalid for indefiniteness and that the complaint failed to plead plausible claims for breach of contract, and Digi would ask that the court would affirm.

[00:22:43] Speaker 03:
My friend on the other side has spent most of his time talking about indefiniteness, so I'm going to start there.

[00:22:48] Speaker 03:
And beginning with this idea that the preamble is limiting.

[00:22:53] Speaker 03:
The court correctly noted that Nimbelink's primary position that they enthusiastically argued in the district court and to this court is that the preamble is limiting.

[00:23:03] Speaker 03:
That's why, for example, on places like the reply brief at page two, they argued vigorously that the

[00:23:10] Speaker 03:
the patent describes the embedded cellular modem, the invention of the embedded cellular modem as being space efficient.

[00:23:18] Speaker 03:
So that's where we begin.

[00:23:19] Speaker 03:
Their backup argument is, as the court noted, limited to a legal argument that there is a proposition that arises from Allen Engineering that says that

[00:23:30] Speaker 03:
A term cannot be both indefinite and limiting at the same time.

[00:23:34] Speaker 03:
That is their single argument for this backup argument on the preamble being limiting.

[00:23:39] Speaker 03:
Allen Engineering does not say that.

[00:23:42] Speaker 03:
No court that we're aware of or that NimbleLink has cited has ever applied Allen Engineering in that way.

[00:23:48] Speaker 03:
Ellen Engineering was a case where the term at issue in the context of that patent happened to be both not limiting and indefinite.

[00:23:57] Speaker 03:
But to announce... Whether a preamble is limiting or not is a question of law, correct?

[00:24:00] Speaker 02:
That's correct, Your Honor.

[00:24:01] Speaker 02:
Can an advocate wave a question of law to the court?

[00:24:05] Speaker 02:
Do you forfeit it by not raising it?

[00:24:08] Speaker 02:
We're being asked to perform a claim construction.

[00:24:12] Speaker 03:
Can you waive a question of law?

[00:24:14] Speaker 03:
I think, Your Honor, often this comes up when something, I'm going to get to this later, when something pops up in a reply brief, Your Honor, including questions of law.

[00:24:23] Speaker 03:
I think that that can be waived.

[00:24:24] Speaker 03:
But I'd also say that this is a combination of a question of law and a question of fact as applied to their particular patent in this case.

[00:24:34] Speaker 03:
We don't think that Allen Engineering has addressed the issue.

[00:24:39] Speaker 02:
But Judge Toronto raised a point earlier, which I'd love to hear your thoughts on, which are why should space efficient be considered limiting in the preamble?

[00:24:49] Speaker 02:
We do have cases that say just because antecedent basis for the word cellular, for example, in the preamble exists later on doesn't mean all the words surrounding it also become limiting.

[00:25:00] Speaker 02:
Do you agree with that, or do you have some problem with that statement of the law?

[00:25:04] Speaker 03:
I don't have a problem with that statement of the law, Your Honor, but I would say that, so the district court recognized multiple different ways that the preamble is limiting in this case.

[00:25:13] Speaker 03:
Antecedent basis is part of it.

[00:25:15] Speaker 03:
There is no other cellular modem that's referred to in the patent.

[00:25:19] Speaker 02:
Right, but the words the space efficient part aren't part of what's being used for antecedent basis.

[00:25:24] Speaker 02:
So the question then becomes, does the word space efficient breathe life and meaning into the claim, because it isn't

[00:25:31] Speaker 02:
part of what is providing antecedent basis for the later reference.

[00:25:35] Speaker 02:
So what's the problem with what Judge Toronto said earlier, which is, as I understood it, that the word space efficient don't breathe life in meeting him because you have a complete and operative invention regardless of those words.

[00:25:52] Speaker 02:
And each of the claims in some manner incorporate

[00:25:57] Speaker 02:
tangible physical properties described throughout the spec as creating space efficiency in one of various ways.

[00:26:06] Speaker 03:
Here's what I meant by, I think this is a combination of a question of law and a question of fact.

[00:26:11] Speaker 03:
In theory, plaintiffs could have made the argument that there are multiple different ways of getting at space efficient.

[00:26:20] Speaker 03:
And if we were to list them, we could then, as Your Honor was doing as an academic exercise, I think, we could look at the independent claim and say,

[00:26:29] Speaker 03:
Is it there an independent claim?

[00:26:30] Speaker 03:
Trying to get to this ultimate question of does the preamble add additional structure?

[00:26:34] Speaker 03:
Is it giving us more information about the structure?

[00:26:37] Speaker 03:
Which we think it does, in which the district court agreed with us on.

[00:26:41] Speaker 03:
But here, this is, plaintiffs have not done that.

[00:26:44] Speaker 03:
We have, they have argued vehemently.

[00:26:46] Speaker 02:
I asked you, I said fine.

[00:26:48] Speaker 02:
I'll accept your representation, plaintiffs haven't done that.

[00:26:51] Speaker 02:
I don't actually think that's relevant to me because I am construing a claim term and I could come up with a whole different construction than either of you propose or I could say it's not limiting.

[00:27:01] Speaker 02:
So why don't you focus on exactly my question, which is why should I treat it regardless of what the plaintiff argued?

[00:27:09] Speaker 02:
Why should I treat it as limiting if it doesn't breathe life and meaning in, if the claim is entirely operative, structurally sufficient, standalone, and what's more, that this claim, by virtue of other elements within it, demonstrates some degree of space efficiency, either by virtue of having a stacked

[00:27:29] Speaker 02:
You know, layered structure, placement on the pins, XB form, whatever.

[00:27:34] Speaker 02:
Through a variety of different ways, the various claims at deep planet claims achieve space efficiency.

[00:27:40] Speaker 02:
Why ought I to treat the word space efficient as some independent limitation to create structure in light of that acknowledgement?

[00:27:50] Speaker 03:
To start the patent describes the present invention as being space efficient.

[00:27:54] Speaker 03:
That is meaningful.

[00:27:55] Speaker 03:
And this court has relied on that to find the plan.

[00:27:58] Speaker 02:
I completely agree with you.

[00:27:59] Speaker 02:
But if every single one of these claims has incorporated into it a structural element, which the patent has described in the specification as creating space efficiency or efficiency.

[00:28:12] Speaker 02:
Why isn't that enough on its own?

[00:28:13] Speaker 02:
I'll be honest.

[00:28:14] Speaker 02:
When I first read this, first thing I said to my clerk, he can tell you he's in the back, why in the world are we treating this as a limitation?

[00:28:20] Speaker 02:
This feels like every patent preamble I've ever seen that isn't a limitation.

[00:28:25] Speaker 02:
And I was a little baffled.

[00:28:27] Speaker 02:
But I can also grant you that they seem to treat it as a limitation.

[00:28:30] Speaker 02:
So I kind of beat my head against the desk a couple times after that.

[00:28:33] Speaker 02:
But fair enough, I don't know that I have to.

[00:28:36] Speaker 02:
Whether they did or not doesn't mean I have to, because it is a question of law.

[00:28:40] Speaker 03:
The reason that they're calling it limiting over and over again is because they're relying on it to distinguish prior art.

[00:28:46] Speaker 03:
We have an inequitable conduct argument.

[00:28:48] Speaker 03:
Their entire argument, their defense to that is that they were relying on the space efficient.

[00:28:51] Speaker 03:
So that's not in the record, Your Honor, but just as a practical matter.

[00:28:55] Speaker 03:
That's an issue for another day, but they are relying on it.

[00:28:57] Speaker 03:
That's why they're here taking it as their primary argument.

[00:29:00] Speaker 03:
What I would quibble with factually is that the specification gives us a checklist of different ways that something could be space-efficient and that each of those ways is in the independent claim.

[00:29:11] Speaker 03:
For example... No, no.

[00:29:12] Speaker 02:
Not each of those ways are in the independent claim.

[00:29:14] Speaker 02:
I agree.

[00:29:14] Speaker 02:
I agree.

[00:29:15] Speaker 02:
Specification talks about multiple ways in which space efficiency or efficiency can be achieved.

[00:29:20] Speaker 02:
I 100% agree with that.

[00:29:22] Speaker 02:
Why would it have to be that every one of those ways has to be present in the claim?

[00:29:27] Speaker 03:
Let me say this, I think none of those ways are present in, for example, independent claim one of the 570 patent.

[00:29:33] Speaker 03:
There's no limitation in claim one of the 570 patent that gets at any aspect of size, which is what plaintiff's position is what this means.

[00:29:43] Speaker 03:
There's no limitation in claim one of the 570 patent.

[00:29:48] Speaker 03:
that gets at efficient spacing of surface mounted components.

[00:29:53] Speaker 03:
We don't see anything in there about height.

[00:29:55] Speaker 03:
We don't see anything that gives us illumination of what space efficient could mean in claim one.

[00:30:03] Speaker 03:
That's why plaintiffs are hanging their hat on the preamble.

[00:30:06] Speaker 03:
That's why, Chief, they're coming to you vigorously saying that this is limiting and why

[00:30:12] Speaker 03:
why we've ended up in this posture.

[00:30:14] Speaker 02:
Well, if what you're saying is correct, then maybe there's a problem with claim one.

[00:30:20] Speaker 02:
But like one of the other, just like when I first read this, I'm like, why in the world is somebody saying this is limiting?

[00:30:25] Speaker 02:
When I first read this, I said, how in the world could this district court hold all these claims indefinite?

[00:30:30] Speaker 02:
Space efficiency is clearly defined by claim number six and seven.

[00:30:36] Speaker 02:
So while claim one

[00:30:38] Speaker 02:
Maybe you were right on claim one being indefinite, but how could claim six be indefinite?

[00:30:43] Speaker 02:
Because claim six needs to be rewritten in independent form and separately analyzed for definiteness.

[00:30:49] Speaker 02:
Just because claim one falls doesn't mean claim six falls.

[00:30:52] Speaker 02:
If claim six provides the clarity of what is meant by space efficiency in the preamble, because claim six has to be rewritten in independent form to analyze it for indefiniteness,

[00:31:04] Speaker 02:
I don't see how anyone can conclude claim six is indefinite.

[00:31:07] Speaker 02:
Forget about every other argument in this case.

[00:31:10] Speaker 02:
I do not see how claim six or claim seven could ever be deemed indefinite in this case.

[00:31:14] Speaker 03:
And here's how I would respond to that.

[00:31:16] Speaker 03:
In a case like Niazi, when the court looked at dependent claims and said, here are examples that inform and give us a sense of what this term might mean, pliable or resilient, there was language in the specification that said the materials will make it pliable.

[00:31:31] Speaker 03:
The materials will make it resilient, which naturally guides a person skilled in the art to go take a look at those materials.

[00:31:37] Speaker 03:
And you can see how the court got there.

[00:31:39] Speaker 03:
There is a gigantic missing link.

[00:31:41] Speaker 03:
In this case, we're dealing with a two and a half page specification and we are really focusing on about two sentences of discussion that have anything to do with space or efficiency.

[00:31:51] Speaker 03:
There's nothing in there that looks like Niazi.

[00:31:54] Speaker 03:
I don't care about the spec.

[00:31:55] Speaker 03:
Look at claim six.

[00:31:56] Speaker 02:
Right now, look at claim six.

[00:31:58] Speaker 02:
How can you tell me the word space-efficient cellular modem device is indefinite when claim six incorporates into claim one the limitations of the exact length and width dimensions of the cellular modem device?

[00:32:14] Speaker 02:
How can you say that doesn't satiate

[00:32:17] Speaker 03:
the need for clarity around the space efficiency.

[00:32:20] Speaker 03:
Because there is no disclosure in the specification that length and width inform the meaning of space efficient.

[00:32:27] Speaker 03:
And I want to read something to your honor.

[00:32:29] Speaker 02:
There doesn't have to be.

[00:32:30] Speaker 02:
The claim is read by a person of skill in the art.

[00:32:34] Speaker 02:
The spec, and forget about a person of skill in the art.

[00:32:39] Speaker 02:
which I might even actually technically qualify as, but forget about that for a second, just a normal human, a space-efficient cellular modem device.

[00:32:48] Speaker 02:
Forget all the other limitations.

[00:32:50] Speaker 02:
Wherein modem device does not exceed 40 millimeters of width and cellular modem device does not exceed 35 millimeters of length.

[00:32:59] Speaker 02:
What's indefinite about that?

[00:33:01] Speaker 04:
Well, because... Did they ever argue that six and seven should be treated differently than one?

[00:33:06] Speaker 02:
No, Your Honor.

[00:33:07] Speaker 02:
Yes, they did.

[00:33:08] Speaker 02:
They argued it below and they argued it here by pointing to 6 and 7 and saying, wait, Your Honor, 6 and 7 give precise dimensions.

[00:33:16] Speaker 03:
I would push back, Your Honor, they have not asked for different treatment of claims 6 and 7 ever in the district court or here.

[00:33:21] Speaker 02:
They pointed to 6 and 7 here and they pointed to 6 and 7 as the district court as the reason why the word space efficient could not be held indefinite.

[00:33:29] Speaker 03:
Here's what I would say, Your Honor, on indefiniteness.

[00:33:32] Speaker 03:
In their reply brief at page 11, they have told this court, I'm quoting, dimensions are just one way to measure the footprint or size of a device.

[00:33:41] Speaker 03:
So I would disagree with the journey to lengthen with that example.

[00:33:45] Speaker 02:
No, but what they mean by that is you can give the dimensions or you could say it has a relative XB size.

[00:33:51] Speaker 02:
That's what they meant by that.

[00:33:52] Speaker 02:
Don't take it out of context.

[00:33:54] Speaker 03:
Your honor, they have respectfully not said that and neither does the patent.

[00:33:58] Speaker 03:
And that's the situation that we're in.

[00:33:59] Speaker 03:
I think they've said it over and over and so is their expert.

[00:34:03] Speaker 03:
I think that we are in a situation where, number one, we don't get, we don't think we get to size as the clear and exclusive meaning.

[00:34:13] Speaker 00:
We think the district court was correct by saying... When you say size, do you keep meaning footprint?

[00:34:19] Speaker 03:
I do not, Your Honor.

[00:34:20] Speaker 03:
No.

[00:34:20] Speaker 00:
It can be this.

[00:34:21] Speaker 00:
It can be this.

[00:34:22] Speaker 03:
I'm using size in the way that they do.

[00:34:25] Speaker 00:
All dimensions in the three-dimensional world we live in.

[00:34:29] Speaker 03:
I think that the most powerful sentence in the district court's opinion is when she got through this question, you know, there's this question of whether we're even talking about any aspect of size, but then she says, it doesn't help you if I agree with you when it says XB size or something that space sufficient isn't about size because the question remains, what aspect of size are we talking about?

[00:34:50] Speaker 03:
and where are the objective boundaries for measuring that.

[00:34:53] Speaker 03:
That's why I think it's important when NimbleLink is telling us that this is not just about length and width.

[00:34:59] Speaker 03:
It could be any other dimension.

[00:35:01] Speaker 03:
We don't have, for example, we don't have, even like in the MediaPoint case from November, there was a list of various different factors one might consider to try to shed light on what the meaning

[00:35:13] Speaker 03:
of optimal or best might mean.

[00:35:15] Speaker 03:
The court found in that case that even in that scenario where we have a very clear list, if they kind of depart in different directions and we can't reconcile to them to the same resolution.

[00:35:25] Speaker 03:
What they're arguing, you keep focusing on their arguments.

[00:35:27] Speaker 02:
And I understand why.

[00:35:28] Speaker 02:
It's easier to knock those down because their arguments are not super great.

[00:35:33] Speaker 02:
But the patent isn't bad.

[00:35:35] Speaker 02:
And when you just look at claim six, I don't see how that could be deemed indefinite.

[00:35:39] Speaker 02:
When you just look at claim seven, it doesn't matter what they say.

[00:35:43] Speaker 02:
the word space efficient means.

[00:35:44] Speaker 02:
It matters what a posa reading this cold would understand it to mean because a posa doesn't have them as a reference to chat with.

[00:35:52] Speaker 03:
And for that, Your Honor, I would just encourage the court to take a look at the appendix.

[00:35:57] Speaker 03:
We've cited this significantly in our brief, but at appendix 2149, 2150, and I know we have other citations in our brief, this is the deposition of the expert who wrote that declaration, Your Honor, and we asked him the type of questions that

[00:36:14] Speaker 03:
Frankly, we've gotten probably more informed answers from the court today on these.

[00:36:19] Speaker 03:
What was in existence at the time of this invention?

[00:36:23] Speaker 03:
What do you understand the footprint of an XB form factor to be?

[00:36:26] Speaker 03:
Would you refer me to specific spaces where you'd like me to look?

[00:36:30] Speaker 02:
And he went way over.

[00:36:32] Speaker 02:
Whether you're happy or not, I'm going to give you more time.

[00:36:34] Speaker 02:
I don't know if you're happy about that idea, but you can have plenty of time, so don't feel like you have to rush.

[00:36:41] Speaker 03:
Yeah, so I'm going to refer now, Your Honor, to the deposition page number.

[00:36:46] Speaker 03:
So I'm at appendix 2149.

[00:36:48] Speaker 03:
For example, on page 95, we are asking about at this point number.

[00:36:57] Speaker 03:
Let's start at line five.

[00:36:59] Speaker 03:
The context of this, Your Honor, is that we're asking you, as the identified person skilled in the art, what do you know about the size of prior art devices?

[00:37:11] Speaker 03:
We asked, have you done any investigation into whether there are other devices with an XB form factor other than Digi or NimbleLink devices?

[00:37:18] Speaker 03:
You asked about three devices, Your Honor, referenced in paragraph 10.

[00:37:22] Speaker 03:
There are- But no, wait, stop, stop.

[00:37:24] Speaker 02:
There's a difference between XB form factor and XB size.

[00:37:27] Speaker 02:
There just is.

[00:37:28] Speaker 02:
XP form factor refers to pin placement or pads.

[00:37:31] Speaker 02:
If you're talking about MMT or SMT, you're talking about pads.

[00:37:34] Speaker 02:
If you're talking about TH, you're talking about pins.

[00:37:37] Speaker 02:
So there's just a difference between form factor.

[00:37:40] Speaker 02:
That's not size.

[00:37:41] Speaker 02:
That isn't a question related to size right there.

[00:37:44] Speaker 03:
Your Honor is articulating a challenge we have had in this case over and over again, because when we are talking about XB form factor, we're using it exactly the way that the patent does.

[00:37:53] Speaker 03:
In column five, it identifies XB form factor as the configuration of the pins.

[00:37:58] Speaker 03:
So I would agree with Your Honor vigorously on that.

[00:38:02] Speaker 03:
In this deposition, we're talking also about form factor as the way this expert is using it.

[00:38:06] Speaker 03:
So I think that may be the reason for this.

[00:38:10] Speaker 03:
I will paraphrase a little, Your Honor, about what's happening on page 95.

[00:38:15] Speaker 03:
We are asking this alleged expert who they have brought forward, what do you know about the prior art?

[00:38:21] Speaker 03:
He said, and we quote this in our brief, Your Honor, he said he didn't even know what XB was before he started working on the case.

[00:38:29] Speaker 03:
He was not in the deposition able to give us examples

[00:38:33] Speaker 03:
or any type of objective boundaries and your honor their expert was doing what they are doing in this case which is asking the court to accept a claim construction that

[00:38:47] Speaker 03:
Impossible to apply it it matters when they say dimensions are not the only way of measuring a form factor Because we're trying to decide what counts as prior art What is in and out and if we don't have even from council during this claim construction process?

[00:39:05] Speaker 03:
an enumeration of what those others might be construction and

[00:39:08] Speaker 02:
Space-efficient cellular modem device means a cellular modem device incorporating a multi-layer PCB with a footprint consisting of the footprint of an XB form factor.

[00:39:21] Speaker 02:
That is footprint.

[00:39:22] Speaker 02:
Footprint is clear dimensions.

[00:39:23] Speaker 02:
That's area.

[00:39:24] Speaker 02:
That's length and width.

[00:39:25] Speaker 02:
Nobody's footprint has a height to it.

[00:39:27] Speaker 02:
I guess maybe technically it does, but that's not the way we think about a footprint as having a height.

[00:39:32] Speaker 02:
We think about having a length and a width.

[00:39:34] Speaker 02:
And so that's their claim construction.

[00:39:36] Speaker 03:
So I'm misunderstanding how they're not telling you how to measure.

[00:39:40] Speaker 03:
This is where it matters what they are saying.

[00:39:42] Speaker 03:
In this case, the record evidence from their expert is that footprint means something different.

[00:39:47] Speaker 03:
Their expert has said in his declaration and that they have cited it in their brief, for example, opening brief at eight.

[00:39:54] Speaker 03:
And then also the appendix at 22, this is the district court's opinion, they're calling form factor a family of wireless connectivity devices that share a few form factors.

[00:40:06] Speaker 02:
That is shape, size, and other.

[00:40:08] Speaker 02:
Again, I understand you're fighting their arguments.

[00:40:13] Speaker 02:
I get that part, but you're not dealing with the patent.

[00:40:17] Speaker 02:
The patent, the XP form, I don't see this expert as saying anything

[00:40:23] Speaker 02:
wrong when he uses the term XB form factor.

[00:40:26] Speaker 02:
I don't see what you're saying.

[00:40:31] Speaker 02:
I see their arguments being somewhat flawed at various times.

[00:40:36] Speaker 02:
And that's why I see your frustration.

[00:40:38] Speaker 02:
I understand your frustration.

[00:40:39] Speaker 02:
And I could get why the district court could be frustrated.

[00:40:42] Speaker 02:
But I just don't understand what's wrong with the patent.

[00:40:45] Speaker 02:
That's the problem.

[00:40:46] Speaker 03:
Here's what I would say, excluding their arguments, Your Honor, I'll try my best here, is I do think their arguments illuminate the problems that we have here.

[00:40:56] Speaker 03:
So that was, for example, in the MediaPoint case recently, the proposed claim constructions of the patentee were found to illuminate the open-endedness of the inquiry.

[00:41:09] Speaker 03:
That's from page 1378 from MediaPoint.

[00:41:12] Speaker 03:
We think that it matters there.

[00:41:13] Speaker 02:
But here's what the technology was.

[00:41:15] Speaker 02:
Both the examiner knew it because in the allowance, he said it.

[00:41:19] Speaker 02:
He pointed to the cellular modems that are quite large, several inches by several inches.

[00:41:25] Speaker 02:
Your client revolutionized the modem industry, coming up with this RF modem that was super small in size, which they branded the XB.

[00:41:34] Speaker 02:
Awesome invention, but it was only RF.

[00:41:37] Speaker 02:
They came along with a cellular version.

[00:41:39] Speaker 02:
Cellular can't be as small as RF because of the components necessary, the noise,

[00:41:44] Speaker 02:
that is created among the various components, it can't be.

[00:41:48] Speaker 02:
So they created an RF version.

[00:41:50] Speaker 02:
It's a tiny bit larger, I mean, a cellular version, a tiny bit larger than your RF.

[00:41:55] Speaker 02:
But the prior art cited on the front page of the patent and that the examiner expressly referenced was huge by comparison.

[00:42:01] Speaker 02:
So when you say we don't know what they meant by size, I just, so I don't understand.

[00:42:09] Speaker 03:
enjoy so much talking about this with the court because you have knowledge.

[00:42:13] Speaker 03:
I will say it is critical that we are restricted to the record evidence here.

[00:42:18] Speaker 03:
For example, Your Honor, because there are other... Everything I just said to you is what the prosecution did.

[00:42:23] Speaker 02:
All I did was look at the prosecution history, look at the same patent.

[00:42:27] Speaker 02:
The examiner had a notice of allowance.

[00:42:29] Speaker 02:
Did you look at that patent?

[00:42:30] Speaker 02:
Because he only cited one piece of prior art in his notice of allowance, and then he said relative size.

[00:42:35] Speaker 02:
So if you didn't look at that, that's on you.

[00:42:37] Speaker 02:
But if you did look at it, you would know that that prior art patent showed a much larger modem by comparison.

[00:42:43] Speaker 03:
Yeah, and Your Honor, what I would just add is that

[00:42:47] Speaker 03:
I mentioned earlier briefly, we have an inequitable conduct claim in this case.

[00:42:50] Speaker 03:
They did not bring prior art that was in existence before this patent to the Patent Office that was a much smaller size.

[00:42:58] Speaker 03:
So I just want to say in case it is informing any of the analysis today, this idea that they were first to shrink down a cellular modem is not true.

[00:43:07] Speaker 03:
That is a full part of our case that is still

[00:43:11] Speaker 03:
active in the inequitable conduct realm.

[00:43:14] Speaker 03:
So it's important for me to say that there's a lot of complexity about what was out there.

[00:43:18] Speaker 00:
But the way... Do you know, so the Rofu Garan piece of fire art, which I guess the examiner cited, and it's listed with a little asterisk cited by examiner in the patent itself, does it identify the size of the cellular

[00:43:40] Speaker 00:
modems?

[00:43:42] Speaker 03:
I don't have an answer for you on the disclosure from that prior art patent.

[00:43:47] Speaker 00:
That would, I guess, be, you know, technically in the record to the extent the record includes the whole prosecution history, right?

[00:43:55] Speaker 03:
Yes.

[00:43:56] Speaker 03:
Yes, Your Honor.

[00:43:58] Speaker 03:
If I

[00:43:59] Speaker 03:
may gently add, the examiner's reliance on size.

[00:44:04] Speaker 03:
We were talking earlier about whether a preamble is limiting.

[00:44:08] Speaker 03:
We have present invention language.

[00:44:10] Speaker 03:
We have certain views of antecedent basis, but we absolutely have prosecution history that we think informs the examiner's reliance on some aspect of space efficiency.

[00:44:23] Speaker 00:
Do you remember where is the prosecution history that you think would help support the idea that this two-word phrase is limited?

[00:45:16] Speaker 03:
That citation is not on my one page of urgent citations I prepared for today, Your Honor.

[00:45:21] Speaker 03:
So I apologize for the slight delay.

[00:45:24] Speaker 03:
If it helps you, I would say that our citations in our response brief would direct the court there, we think.

[00:45:32] Speaker 03:
I would also note that the district court relied on the prosecution history specifically in the court's opinion finding these claims to be indefinite.

[00:45:42] Speaker 02:
Do you want to touch on the other issue at all, the breach of contract

[00:45:46] Speaker 03:
At a very high level, Your Honor, just to offer the context.

[00:45:53] Speaker 03:
This is an appeal from the dismissal of a contract claim from the original complaint.

[00:45:59] Speaker 03:
We had a hearing in the district court where the plaintiffs were represented to the court.

[00:46:03] Speaker 03:
They could cure any deficiencies.

[00:46:04] Speaker 03:
The court gave them a dismissal without prejudice, and they did not act with diligence.

[00:46:11] Speaker 03:
By the time they got around to filing their motion for leave to amend, it was denied.

[00:46:15] Speaker 03:
for untimeliness.

[00:46:16] Speaker 03:
They admit that in Nimbling's opening brief and they're not appealing that today.

[00:46:22] Speaker 03:
So that's just a little bit of context that kind of informs what's going on and why is it that we're looking at the sufficiency of allegations and what they would describe as I think they're kind of first shot at it.

[00:46:35] Speaker 03:
The second thing I would add on the contract claims is that there's something

[00:46:38] Speaker 03:
going on in their reply brief, which I heard two seconds from counsel about just now, where they are asking for the first time for this court to make an inference that the allegations in the complaint support an inference that in equitable conduct, or I'm sorry, that Digi was not capable of independent development.

[00:46:59] Speaker 03:
So that is not in their opening brief in this court.

[00:47:02] Speaker 03:
This is a new argument in reply.

[00:47:04] Speaker 03:
It is also a wildly implausible allegation.

[00:47:08] Speaker 03:
I believe that their primary evidence when they're asking the court to say that you have to draw an inference that Digi was incapable of inequitable conduct is the absence of language in the 2015 NDA.

[00:47:20] Speaker 03:
The 2015 NDA talks at length about independent development.

[00:47:25] Speaker 03:
and what would happen if Digi engaged in independent development.

[00:47:29] Speaker 03:
We don't think any of their other evidence asking for this gigantic inference in their reply brief gets them there.

[00:47:35] Speaker 03:
And they haven't given the court any example of any federal court in this country that has ever taken the type of evidence they're citing.

[00:47:44] Speaker 03:
done an inference that Digi had no knowledge, an inference that because we had no knowledge, we must have gotten it from them, and then an inference that independent development was off the table.

[00:47:56] Speaker 03:
I'm raising this because counsel said he's going to address this.

[00:48:01] Speaker 03:
And I want to let the court know our position on it.

[00:48:03] Speaker 03:
We just think it's wildly improper for them to be bringing it up in the reply brief and at argument.

[00:48:08] Speaker 03:
And we don't think there's any basis for that kind of inference upon inference upon inference.

[00:48:15] Speaker 03:
Okay, thank you.

[00:48:28] Speaker 01:
Your Honor, I've never said this before, but unless you have questions, I don't have anything more to add on any of the topics, because I think you've asked all the questions, unless you have a specific question for me.

[00:48:42] Speaker 02:
Okay, thank both counsels.

[00:48:43] Speaker 02:
This case is taken under submission.