[00:00:00] Speaker 02:
We only have one argument before the court this afternoon.

[00:00:04] Speaker 02:
This argument has been previously scheduled, but upon examination, the court determined that no final judgment had been entered, which would give rise to our jurisdiction.

[00:00:14] Speaker 02:
I understand that that issue has been corrected and that Judge Guilford has now issued a Rule 54B certification.

[00:00:23] Speaker 02:
that will allow this appeal to go forward.

[00:00:27] Speaker 02:
Mr. Huntsman, I know that you requested to have five minutes for opening and ten minutes for rebuttal.

[00:00:32] Speaker 02:
I don't allow that.

[00:00:35] Speaker 02:
I require at most a six-minute rebuttal because I don't want sandbagging.

[00:00:41] Speaker 02:
The whole point here is for the appellant to lay out their argument.

[00:00:45] Speaker 02:
so that there is something to respond to.

[00:00:48] Speaker 02:
So I will give you nine minutes for opening and six minutes for rebuttal.

[00:00:52] Speaker 02:
I see, gentlemen, that you have asked for five minutes apiece.

[00:00:56] Speaker 02:
That's fine, but just understand that means I don't want you all to say the same thing.

[00:01:02] Speaker 02:
We don't need to hear the same thing three times.

[00:01:04] Speaker 02:
So if you're dividing up the argument and you're dividing it up substantively, then that's fine.

[00:01:09] Speaker 00:
Yes, we are, Your Honor.

[00:01:10] Speaker 02:
Okay.

[00:01:11] Speaker 02:
All right.

[00:01:11] Speaker 02:
Are you prepared to go forward?

[00:01:14] Speaker 04:
Yes, Your Honor.

[00:01:15] Speaker 02:
Okay.

[00:01:28] Speaker 04:
May it please the Court.

[00:01:30] Speaker 04:
The Seventh Amendment provides civil litigants the right of a trial of a jury of six or twelve to resolve civil disputes, generally speaking.

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Patent law provides that inventions and patents

[00:01:43] Speaker 04:
generally are analyzed from the perspective of one skilled in the art.

[00:01:50] Speaker 04:
Here, Mr. Shepley's case was terminated by one judge without a jury and without any input from those skilled in the art.

[00:02:02] Speaker 04:
Judge Benson dismissed the case below largely because he believed to make his case, Mr. Shepley would have to show, he would have to prove that software is hardware.

[00:02:13] Speaker 04:
But this is not a fair assessment of the proofs required by Mr. Shepley.

[00:02:18] Speaker 04:
Mr. Shepley need only show that the claim convention could read on software or a hardware implementation.

[00:02:26] Speaker 02:
Let me understand.

[00:02:29] Speaker 02:
You did not assert the method claims against these defendants in this case.

[00:02:33] Speaker 02:
That's correct.

[00:02:35] Speaker 02:
So you've only asserted the apparatus claims.

[00:02:37] Speaker 04:
That's correct.

[00:02:38] Speaker 02:
And is it your argument that software

[00:02:43] Speaker 02:
constitutes the means, the processor means that you are identifying in your apparatus claim?

[00:02:49] Speaker 04:
That's correct.

[00:02:49] Speaker 04:
We're saying that the software provides the structure of the means element of the asserted claim.

[00:03:00] Speaker 02:
Okay, but these defendants, as I understand it, are simply designers of the software, is that right?

[00:03:07] Speaker 04:
That's correct.

[00:03:07] Speaker 02:
So if we're talking about an apparatus claim, how could these defendants practice each and every element of the claim?

[00:03:16] Speaker 04:
It's our position that simply because an invention is implemented in software, that does not exclude it from being an apparatus claim.

[00:03:26] Speaker 04:
We think that the Patent Office, we can show that the Patent Office has issued claims where at least part, if not all, of the claim inventions, the elements of the structure are implemented in software.

[00:03:35] Speaker 04:
It's our position that the distinction between hardware and software is not necessarily dispositive.

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That a lot of things that used to be implemented in hardware are now implemented in software.

[00:03:47] Speaker 02:
Even if your argument that somehow software can be relegated to a hard surface and it shouldn't be viewed as something just out there in the ether, we are talking about

[00:04:05] Speaker 02:
particular claims with particular elements and particular limitations.

[00:04:09] Speaker 02:
How do these defendants practice each and every one of the elements of the claim?

[00:04:14] Speaker 04:
Well, they create a structure that contains every element of the structure that they make and sell, a structure that has every element of the asserted claim.

[00:04:24] Speaker 03:
So is software a computer?

[00:04:29] Speaker 03:
No.

[00:04:31] Speaker 03:
Well, how then can a claim that incites software

[00:04:35] Speaker 04:
Well, the claim doesn't cite the computer, it cites processing means, in fact it actually, it's going to discuss, the claim term is processing means, the claim term at issue is processor means under the control of a pre-stored computer program.

[00:05:03] Speaker 04:
So a computer isn't explicitly claimed.

[00:05:07] Speaker 04:
And it's our contention that that means can be implemented in software.

[00:05:10] Speaker 04:
It makes just as much sense to implement that in software as it does hardware.

[00:05:15] Speaker 04:
And that the Pat law doesn't make a distinction between what technology is used to implement structure and that we think it would be grave error for the court to hold that software can never satisfy a apparatus claim or part of an apparatus claim.

[00:05:33] Speaker 02:
Where does the software, where is there a processor means under the control of a pre-sorted computer program for correlating the personal data with the pre-sorted nutritional data?

[00:05:51] Speaker 04:
The processor means is largely the operating system of the computer.

[00:05:56] Speaker 04:
If you're on a

[00:05:59] Speaker 04:
an Apple system or an Android system, there's the Android operating system that controls these apps, that it functions the overall processing means and within the confines of that operating system you have these apps that do particular things.

[00:06:16] Speaker 04:
And I can kind of give you an example just from the popular culture.

[00:06:19] Speaker 04:
We talk about Apple iPhones and usually when you think of an Apple phone you think of a physical phone

[00:06:26] Speaker 04:
We also talk largely about Android phones, the big competitor app.

[00:06:29] Speaker 04:
But Android is a reference to the operating system.

[00:06:32] Speaker 04:
When you're talking about an Android phone, it's not plastic.

[00:06:34] Speaker 04:
It's not buttons.

[00:06:35] Speaker 02:
It's not screens.

[00:06:35] Speaker 02:
It's not things.

[00:06:36] Speaker 02:
Let me tell you, you've got a phone that has a computer module in it, and that has software that operates on that computer module.

[00:06:44] Speaker 02:
Even if you could argue that that constitutes the apparatus that you're claiming, how do the designers of the software practice all of those elements?

[00:06:57] Speaker 02:
It might be their software that's being purchased for purposes of then practicing those claims, but they're not practicing each and every one of those claims.

[00:07:08] Speaker 04:
Well, it's our contention that the app itself is an apparatus, and that apparatus has each of the claim elements of the asserted claim.

[00:07:18] Speaker 04:
The software, even though it seems intangible, it isn't really.

[00:07:22] Speaker 04:
It's as much an apparatus as a hardware device that

[00:07:25] Speaker 04:
as hardwired to do that.

[00:07:29] Speaker 04:
So, where I mean that the computer hardware is largely something you have to have in order for the thing to turn on, but the actual apparatus itself is in fact the app.

[00:07:44] Speaker 03:
Let's let's take a different Maybe it's it's the same issue, but a different approach I'm looking at a 19 of the record at the 115 pattern column 6 line 20 and There reads the system includes processor means under the control of pre-store computer program the processor which is conventional may comprise and then goes on talks about an Intel 8086 and

[00:08:11] Speaker 03:
82, 86, and Motorola 600.

[00:08:15] Speaker 03:
Those are computer units.

[00:08:18] Speaker 03:
I mean, those are actual computers, hardware, right?

[00:08:20] Speaker 04:
Okay.

[00:08:21] Speaker 04:
Yeah, if you read the specification, the word processor is used by itself approximately six times.

[00:08:26] Speaker 04:
And in those cases, when it's used by itself, it was referring to particular embodiments that have particular chips.

[00:08:32] Speaker 03:
the the first-term report here here just looking at this at this portion of specification it it would inform me what the term process means means and and and not not looking we're talking now about what what the processor is you're saying it's also it's software correct and if if if I want to look at this instance in and and see if you're you're correct or if I agree with you

[00:09:00] Speaker 03:
I look at it and the specification is informing me something else.

[00:09:03] Speaker 03:
It's actually identifying hardware computers by models.

[00:09:09] Speaker 04:
Well, the phrase process ravines under the control of a pre-stored program was intentionally chosen to be broader than just hardware.

[00:09:17] Speaker 04:
Our contention is the hardware that's disclosed in the specification is an embodiment.

[00:09:21] Speaker 04:
In fact, it was the preferred embodiment back in 1990s.

[00:09:24] Speaker 02:
But in a mean plus function claim,

[00:09:27] Speaker 02:
because you recite processor means, so we presume it's a means suspension claim.

[00:09:31] Speaker 02:
Aren't you limited to the structures disclosed?

[00:09:34] Speaker 04:
Well, our position there, if you look at the particular claim at issue, every element in it is couched.

[00:09:40] Speaker 04:
It has means language.

[00:09:41] Speaker 04:
Our contention is that's a rebuttable presumption, and that that particular claim element has the structure of the claim.

[00:09:47] Speaker 04:
It's actually within the claim.

[00:09:48] Speaker 04:
And so we think that falls outside of the 112, Section 6,

[00:09:54] Speaker 04:
We would propose that this is a case where the presumption could be rebutted.

[00:09:59] Speaker 02:
You didn't assert any joint infringement allegations, did you?

[00:10:05] Speaker 04:
That's correct.

[00:10:07] Speaker 02:
You appeal from the dismissal, and yet you separately complain about the denial of the motion to amend, but I don't see that you identify the denial of a motion to amend as an issue from which you are actually appealing.

[00:10:23] Speaker 04:
We're not playing directly.

[00:10:25] Speaker 04:
It was denied under Rule 12b6 because the court ruled that it was futile.

[00:10:29] Speaker 02:
So our position is that it's somewhat of a tangential issue here because... Well, the motion to amend was denied under Rule 15 because it was futile.

[00:10:38] Speaker 04:
Because it was deemed futile.

[00:10:40] Speaker 04:
Right.

[00:10:42] Speaker 04:
But we're saying that it wasn't futile.

[00:10:45] Speaker 04:
There was some argument below that one of the claims included words that were interpreted to be alleging joint infringement.

[00:10:57] Speaker 04:
An argument was we didn't put those words into the complaint to assert joint infringement.

[00:11:03] Speaker 04:
It was just to describe the situation.

[00:11:05] Speaker 04:
And so my argument was that if those words somehow are dragging us into a theory of joint infringement, we'd be happy to amend and strike them because we thought that argument was

[00:11:14] Speaker 04:
You know, they were reading something.

[00:11:15] Speaker 02:
Okay, so you, you disclaim any theory of joint infringement?

[00:11:18] Speaker 04:
Correct.

[00:11:19] Speaker 02:
Okay.

[00:11:19] Speaker 02:
You're into your rebuttal.

[00:11:20] Speaker 02:
You want to save the rest of it?

[00:11:21] Speaker 04:
No, I'll, I'll, thank you.

[00:11:26] Speaker 02:
Mr. Hayden, is that correct?

[00:11:28] Speaker 06:
No, Your Honor, Mr. Ross.

[00:11:30] Speaker 02:
No, we're going, are we in opposite direction here?

[00:11:32] Speaker 06:
Yes, Your Honor.

[00:11:33] Speaker 06:
I'm sorry about that.

[00:11:34] Speaker 06:
That's okay.

[00:11:37] Speaker 06:
May I please report?

[00:11:38] Speaker 06:
My name is Terrence Ross and I represent the Appellee Wave Watchers International, Inc.

[00:11:42] Speaker 06:
The substantive positions of the appellees are substantially similar.

[00:11:48] Speaker 06:
And so we, as Judge Romali suggested, have coordinated the argument.

[00:11:53] Speaker 06:
And we're going to only argue separate issues, each one of us.

[00:11:57] Speaker 06:
And we will be speaking on behalf of all the appellees with respect to each of those issues.

[00:12:02] Speaker 06:
And we'll use the phrase software providers instead of the individual names.

[00:12:07] Speaker 06:
But we're speaking on behalf of all of them.

[00:12:09] Speaker 06:
And I'll start first, and I'll address, Your Honor, why we don't make or sell the apparatus that's claimed by Claim 1.

[00:12:17] Speaker 06:
Then Mr. Shrum will get up and talk about the language of the patent, I think, going to the point Judge Rainey was trying to make.

[00:12:22] Speaker 06:
And then finally, Mr. Padden will get up and talk about why we don't use the apparatus claimed under Claim 1.

[00:12:29] Speaker 06:
So let me start and go directly to the questions I think that both Judge O'Malley and Judge Rainey were getting at with respect to this question.

[00:12:36] Speaker 06:
and it's found at 8020, that's the patent, and it's claimed 1, which is the only asserted claim, and specifically 1C, the processor means under the control of a pre-stored computer program.

[00:12:51] Speaker 06:
Now, let me point out that the processor means that you've been asking questions about is under the control of a pre-stored computer program.

[00:12:59] Speaker 06:
In other words, it's under control of software.

[00:13:02] Speaker 06:
That means that the processor means cannot be software, or else it wouldn't be written like this.

[00:13:09] Speaker 06:
What we do is make software.

[00:13:12] Speaker 06:
That's the pre-stored computer program.

[00:13:14] Speaker 05:
Can software be controlled by other software?

[00:13:18] Speaker 06:
An operating system can instruct a piece of software how to operate, so that is a possibility.

[00:13:26] Speaker 06:
That is not what a processor means could possibly mean because as Judge O'Malley pointed out, this is means plus function language and therefore they're stuck with the structure that they've identified in the specifications.

[00:13:38] Speaker 06:
which are Intel and Motorola microprocessors.

[00:13:42] Speaker 05:
There wasn't a claim construction that happened below that.

[00:13:44] Speaker 06:
No, it's not required in Rule 12b6.

[00:13:46] Speaker 06:
You're right, Your Honor.

[00:13:47] Speaker 06:
It's supposed to be given the broadest reasonable construction, and we would say that it's not reasonable to construe an apparatus or hardware as software.

[00:13:56] Speaker 06:
It's simply not reasonable any more than it would be to say the guy outside is right.

[00:14:00] Speaker 02:
No, under 12b6, you don't give it the broadest reasonable construction.

[00:14:03] Speaker 02:
You give it the construction that the plaintiff proposes.

[00:14:06] Speaker 06:
Actually, this court has said in the R&L Carriers case, which we cite in our brief, footnote 13, it actually says what I just said, that there is no claim construction be done to be given the broadest reasonable construction.

[00:14:25] Speaker 02:
Well, but in that case, because it was a broad construction that the plaintiff was asserting.

[00:14:30] Speaker 06:
That's right.

[00:14:30] Speaker 02:
And we believe that this is the broadest... And here, this plaintiff is asserting that it's not a means of function.

[00:14:35] Speaker 02:
I mean, regardless of whether that is a viable assertion, that's what he just said.

[00:14:40] Speaker 06:
No, I don't believe that's true.

[00:14:41] Speaker 06:
You can ask him when he gets back up on rebuttal, but below he certainly agreed, and his repeated reference is that this is a process for me.

[00:14:47] Speaker 06:
But let's look at the language of the First Amendment complaint, the operative complaint, because I don't even know that you need to get to these questions.

[00:14:54] Speaker 06:
Under the First Amendment complaint,

[00:14:56] Speaker 06:
They describe this patent in the following terms.

[00:15:00] Speaker 06:
This is at paragraph 15.

[00:15:02] Speaker 06:
Quote, the 115 patent teaches and claims technology directed toward using handheld computer devices.

[00:15:08] Speaker 06:
Handheld computer devices.

[00:15:10] Speaker 06:
The software providers don't make handheld computer devices.

[00:15:14] Speaker 06:
And just so that you're clear on this, Judge Chen, if you look at paragraph 69, which goes to Weight Watchers, but the same paragraphs there with respect to the other software providers,

[00:15:23] Speaker 06:
They say, quote, WW apps, when deployed on an Apple iPhone or tablet, each is an apparatus that infringes at least claim one of the 115 patents.

[00:15:34] Speaker 06:
In other words, only after being deployed on the iPhones, you have an apparatus.

[00:15:39] Speaker 06:
By itself, the app is not an apparatus.

[00:15:42] Speaker 06:
And therefore, it could not possibly, under any assertion,

[00:15:46] Speaker 06:
simply not plausible to use the words of Iqbal and Twombly.

[00:15:50] Speaker 06:
It's not plausible to say that we could be infringing this particular apparatus patent.

[00:15:56] Speaker 02:
Does the software that's at issue, does it practice the method claims of claims 11 and its dependent claim?

[00:16:07] Speaker 06:
No, we don't believe so, Your Honor.

[00:16:09] Speaker 06:
That wasn't presented.

[00:16:10] Speaker 06:
It is clear that they have argued to the district court they represented they're only arguing

[00:16:15] Speaker 06:
claim one infringes and that they're only arguing a direct theory of infringement.

[00:16:19] Speaker 06:
But even if they had argued 11, we would say that we still do not practice that because we do not control the end user, which is the critical added piece, and we do not control Apple, which is the device manufacturer.

[00:16:35] Speaker 06:
And therefore, we couldn't even infringe under the method claims if they had been asserted.

[00:16:41] Speaker 06:
my time is up here.

[00:16:43] Speaker 03:
I'd like to ask a specific question.

[00:16:47] Speaker 03:
So in the hitting of the pleadings, the name Weight Watchers is kind of different.

[00:16:55] Speaker 03:
You've got WeightWatchers.com and Weight Watchers, correct?

[00:16:59] Speaker 06:
Yes, Your Honor, that's correct.

[00:17:02] Speaker 03:
So would an affirmance in this case resolve all claims against WeightWatchers.com?

[00:17:09] Speaker 06:
I believe it would, Your Honor, because WeightWatchers.com is actually within Weight Watchers International, Inc.

[00:17:16] Speaker 03:
But it's a different entity, isn't it?

[00:17:19] Speaker 06:
It's a website.

[00:17:20] Speaker 06:
It's not... It's an Inc.

[00:17:22] Speaker 03:
It's WeightWatchers.com, isn't it?

[00:17:28] Speaker 06:
We didn't write the caption, but you're correct.

[00:17:30] Speaker 06:
That is what the caption says.

[00:17:32] Speaker 06:
It also says non-party.

[00:17:35] Speaker 06:
My understanding

[00:17:37] Speaker 06:
And I should probably check this if you'd like me to, Your Honor, is that that is a website, webweightwatchers.com, through which Weight Watchers International Inc.

[00:17:45] Speaker 06:
does business.

[00:17:47] Speaker 06:
But I will be happy to check that if that's an issue in your mind.

[00:17:51] Speaker 03:
It is an issue, but I don't need you to check it.

[00:17:55] Speaker 06:
Okay.

[00:17:55] Speaker 06:
It might actually, if you went to that website, it might actually say, if you look at the bottom where it has terms and conditions, it will often identify the corporate entity.

[00:18:05] Speaker 06:
And it might say that if that's just a suggestion, I don't know, though, Your Honor.

[00:18:08] Speaker 06:
I'm sorry that I can't answer that.

[00:18:12] Speaker 02:
Okay, Mr. Strong.

[00:18:17] Speaker 07:
Thank you, Your Honors.

[00:18:18] Speaker 07:
May it please the court, Jay Jackson Strong, on behalf of Mindit Diary, Inc.

[00:18:24] Speaker 07:
I have been asked, just as Mr. Ross indicated, I'm going to briefly address the Means Plus Function

[00:18:31] Speaker 07:
I don't need to recite the background to what the Means Plus Function is.

[00:18:39] Speaker 07:
In a nutshell though, of course, it used to be language and patents like this that are construed as Means Plus Function language were illegal.

[00:18:49] Speaker 07:
1952, Congress amended the code and allowed what seemingly broad Means Plus Function language would be acceptable in a patent.

[00:19:01] Speaker 07:
There was a caveat to that, and that was that the language itself had to describe within the specifications a sufficient structure.

[00:19:11] Speaker 02:
Yeah, but we don't actually have a claim construction here, so we don't really know what the trial court found to be the structure that corresponds to the identified function.

[00:19:21] Speaker 07:
The question is, I believe that we do, although it didn't frame it in just the way that Your Honor did.

[00:19:27] Speaker 03:
Does this really matter with respect to the issues regarding the dismissal of the complaint?

[00:19:33] Speaker 07:
I was really mainly responding to an argument that I thought had been raised below and also an argument that we had brought up in the briefs here.

[00:19:42] Speaker 07:
It really ends any need.

[00:19:47] Speaker 07:
Once you look at the structure that's described in the specification of the patent, even to get to the next step, we don't need to get to a claims construction.

[00:19:56] Speaker 07:
We don't need to get to a marksman hearing.

[00:19:58] Speaker 07:
All of these issues are resolved fully.

[00:20:02] Speaker 07:
by simply looking at the face of the patent.

[00:20:04] Speaker 07:
Nowhere in this patent does it describe what software is needed.

[00:20:10] Speaker 07:
It simply describes it in this overly broad language, which would theoretically subsume anything that could bespeak what the function of the means plus function language is.

[00:20:32] Speaker 03:
then perhaps the complaint should have been dismissed and it should have gone on to claim for instruction.

[00:20:38] Speaker 07:
I agree with the lower court.

[00:20:40] Speaker 07:
In fact, we raised this issue below and I believe the lower court was absolutely correct when it viewed this in light of software versus hardware.

[00:20:49] Speaker 07:
What the patent really is trying is a black box.

[00:20:52] Speaker 07:
Data goes in, some data is outputted to an end user.

[00:20:57] Speaker 07:
What happens and what that black box is and how it works is not described in the patent.

[00:21:03] Speaker 07:
That's what we did.

[00:21:05] Speaker 07:
That's what we do as software developers, as software providers.

[00:21:08] Speaker 07:
We write code.

[00:21:09] Speaker 07:
We write algorithms.

[00:21:10] Speaker 07:
That's not listed anywhere in here.

[00:21:14] Speaker 03:
That's the whole job of the court during the proceeding of the trial is to determine the strength of the patent.

[00:21:24] Speaker 03:
And that's what you're arguing.

[00:21:26] Speaker 03:
But this case was

[00:21:27] Speaker 03:
never even got there.

[00:21:28] Speaker 03:
Never even got off the ground floor.

[00:21:30] Speaker 07:
I don't think we need to get there.

[00:21:31] Speaker 02:
Part of my problem is you're saying, look at the face of the patent.

[00:21:35] Speaker 02:
You can see that it's a mean plus function claim, and you can tell what the function is and what the structure is.

[00:21:40] Speaker 02:
But we shortcutted all that.

[00:21:43] Speaker 02:
That wasn't done by the trial court.

[00:21:45] Speaker 07:
I don't think it was necessary under this court's precedent in the case law, in the case like Balamant, the Trimark case, the W

[00:21:56] Speaker 07:
MS Gaming case, these cases are clear that, you know, if there's no structure that's described that does what the alleged infringer does, you could dismiss it even at the 12-by-6 stage.

[00:22:09] Speaker 02:
No, those cases weren't 12-by-6 cases.

[00:22:12] Speaker 02:
Those were indefiniteness cases.

[00:22:14] Speaker 07:
Well, that's right.

[00:22:15] Speaker 07:
And since we have those rules that describe clearly what the courts, how the court is to look at these, there's no need to get into whether, there's no plausible basis

[00:22:25] Speaker 07:
that there's no plausible argument, rather, that the appellate can claim.

[00:22:30] Speaker 03:
It's not whether there's a plausible argument.

[00:22:32] Speaker 03:
It's whether there's plausible facts pled.

[00:22:36] Speaker 07:
Agreed, yes.

[00:22:37] Speaker 03:
And that's the issue.

[00:22:39] Speaker 03:
And you want us to kind of make a marriage decision here.

[00:22:43] Speaker 03:
You're section of this argument here.

[00:22:45] Speaker 03:
You're arguing the merits of the case.

[00:22:48] Speaker 03:
And I, myself, am not going to go there.

[00:22:51] Speaker 03:
You're going to have to argue that.

[00:22:53] Speaker 03:
I understand.

[00:22:53] Speaker 03:
OK.

[00:22:54] Speaker 03:
No, I understand.

[00:22:56] Speaker 07:
Thank you.

[00:22:57] Speaker 07:
I didn't really want to, like I said, I was going to keep mine brief.

[00:22:59] Speaker 07:
I do appreciate your questions and feedback.

[00:23:02] Speaker 07:
We believe that the lower courts dismissal was correct.

[00:23:07] Speaker 02:
How do you write code?

[00:23:08] Speaker 02:
I mean, don't you write code on a computer using processor means?

[00:23:14] Speaker 07:
It's different for different types of code, but that's one way to do it.

[00:23:20] Speaker 07:
That particular computer, when we're writing code,

[00:23:23] Speaker 07:
onto a computer of some kind, that does not become an infringing device or an apparatus, even if it mirrored exactly what was in the patent.

[00:23:35] Speaker 07:
It's not until we get to the other steps about the making, the using, and the selling, it has to include all of these elements, because this complaint, this first amendment complaint, which is the operative complaint is devoid of these.

[00:23:47] Speaker 07:
of these assertions, and there's no way that he can get there based on not only this complaint, I don't think any complaint that he can file is going to get him there.

[00:23:57] Speaker 07:
So I'm out of time, I apologize, but I did want to leave some time for Mr. Haddon to speak.

[00:24:10] Speaker 01:
Let me start with your last question, Judge O'Malley.

[00:24:17] Speaker 01:
Certainly you write software on a computer, but we have to remember what is that issue here, which is an application that you download, as you said, over the ether.

[00:24:28] Speaker 01:
So for Mr. Huntsman's claim to be plausible,

[00:24:32] Speaker 01:
the processing means under the control of a pre-stored computer program all have to be something that is floating over the ether to the device.

[00:24:42] Speaker 02:
And that's not plausible.

[00:24:44] Speaker 02:
It doesn't operate until it's on a device that has a computer module.

[00:24:48] Speaker 01:
Right.

[00:24:49] Speaker 01:
And once it's on a device, it's no longer our direct infringement.

[00:24:52] Speaker 01:
All we do is provide the software.

[00:24:54] Speaker 01:
We don't provide the device.

[00:24:55] Speaker 01:
We don't download the software onto the device.

[00:24:58] Speaker 01:
That's why this case is completely controlled by this court's decision in Centillion, which had exactly the same issue.

[00:25:05] Speaker 01:
It was Quest that provided some backend services.

[00:25:08] Speaker 01:
It also provided some client software that ran on a PC.

[00:25:12] Speaker 01:
And the claim in that case required personal computer processing means under controlled software to do something.

[00:25:19] Speaker 01:
Very analogous to the processor means element we've been talking about.

[00:25:23] Speaker 01:
And the court held there that one,

[00:25:26] Speaker 01:
Quest didn't make or use that system because Quest did not put the software on the user's PC.

[00:25:33] Speaker 01:
The user did.

[00:25:34] Speaker 01:
Exactly the same situation here.

[00:25:37] Speaker 02:
Under our new Akamai decision, couldn't you have a joint infringement issue?

[00:25:41] Speaker 01:
Potentially.

[00:25:41] Speaker 01:
But they have just disclaimed joint infringement.

[00:25:45] Speaker 01:
Not only did they say, we're not accusing you of joint infringement, we want to strike the in concert language from our complaint.

[00:25:52] Speaker 01:
And they told the district court and this court in their brief that we are alleging only direct infringement and solely that MyFitnessPal, for example, performs all elements.

[00:26:05] Speaker 01:
So if there was a theoretical joint infringement claim, they haven't made it, and they in fact disclaim it.

[00:26:11] Speaker 01:
So we're left with the outcome in centilling, which is downloading software by a consumer is not direct infringement by the software provider.

[00:26:22] Speaker 01:
The alternative argument that they made that I was allocated to address was that somehow by providing backend services, data in response to the app, my client is directly infringing.

[00:26:35] Speaker 01:
And the argument there was that somehow 271A for use of an apparatus claim did not require using all elements.

[00:26:43] Speaker 01:
But again, the court addressed that very issue in Centillion, said yes, it does require using all elements, and again found the quest

[00:26:51] Speaker 01:
did not infringe by merely providing back end services because they were not operating the user's PC, which was required element, just like it's a required element here.

[00:27:02] Speaker 01:
So every issue that Mr. Huntsman has raised was addressed in a very analogous situation in Centillion.

[00:27:11] Speaker 01:
We relied on that case in the district court.

[00:27:13] Speaker 01:
We cited it throughout our brief here.

[00:27:16] Speaker 01:
Remarkably, Mr. Huntsman did not acknowledge it

[00:27:20] Speaker 01:
or even reference it in any of his appeal briefs.

[00:27:24] Speaker 01:
So these arguments are, in my opinion, frivolous.

[00:27:31] Speaker 02:
Thank you.

[00:27:32] Speaker 02:
Thank you.

[00:27:34] Speaker 02:
All right.

[00:27:35] Speaker 02:
You have about a little over five minutes left for rebuttal.

[00:27:42] Speaker 04:
All right.

[00:27:42] Speaker 04:
In the time remaining, I would like to discuss sort of the use argument just referenced.

[00:27:47] Speaker 04:
The statutory language of Section 271A of the patent statute expressly provides that whosoever without authority uses a patented invention during the term of the patent, therefore infringes the patent.

[00:27:59] Speaker 04:
It is noteworthy that the statutory language does not provide any safe harbor for so-called limited use.

[00:28:07] Speaker 04:
We're here to expressly, specifically claim... I'm not sure what you mean by that, limited use.

[00:28:12] Speaker 02:
I mean, it's clear that we have said repeatedly that every step of a claim must be practiced.

[00:28:18] Speaker 02:
And you need to have direct infringement, which means every element of a claim has to be practiced.

[00:28:25] Speaker 02:
And it has to be practiced either by one individual or by a group that can be jointly liable.

[00:28:32] Speaker 02:
Now, you've not alleged joint infringement.

[00:28:34] Speaker 02:
So how do you have one person here practicing each and every element of this claim?

[00:28:40] Speaker 04:
OK, we believe that the court has incorrectly conflated method claim infringement under 271B with infringement by use of a patent under 271A.

[00:28:52] Speaker 04:
Which court?

[00:28:53] Speaker 04:
The district court?

[00:28:54] Speaker 04:
This court in Centillion.

[00:28:57] Speaker 04:
Our argument is we believe that case, to the extent it holds that every element of a claim has to be exercised on a use claim, we believe that's error, that the Supreme Court has held

[00:29:10] Speaker 04:
The beneficial use standard is the correct standard.

[00:29:12] Speaker 04:
And under the Supreme Court precedent, beneficial use does not require every element of an apparatus be used.

[00:29:21] Speaker 04:
That's different than asserting every element of a method claim be exercised.

[00:29:24] Speaker 02:
Well, clearly this panel could not overrule Centillion.

[00:29:30] Speaker 04:
Well, I respectfully argue that the Supreme Court case law is controlling here.

[00:29:36] Speaker 04:
that the beneficial standard is controlling to this panel and to this court.

[00:29:42] Speaker 02:
All right.

[00:29:42] Speaker 02:
What Supreme Court cases are you relying on?

[00:29:44] Speaker 04:
Primarily Roberts v. Ryre, which was an old case that this court has relied on in the past.

[00:29:53] Speaker 04:
Roberts v. Ryre is 91 U.S.

[00:29:55] Speaker 04:
150, where the court held the inventor of a patented invention that's entitled to the benefits of all the uses in which it can be put.

[00:30:04] Speaker 04:
no matter whether you can see the idea of the use or not.

[00:30:08] Speaker 04:
And this court said in the Catalina Marketing International Decision 289F3D801, a patent grants the right to exclude others from using the claimed apparatus or composition for any use of that apparatus or composition, whether or not the patentee envisions such use.

[00:30:28] Speaker 03:
That case takes us back to the apparatus question.

[00:30:31] Speaker 04:
It does.

[00:30:32] Speaker 03:
So our argument is that once you've established that... So even following the use or beneficial use that you're arguing, how are these defendants practicing a processor means?

[00:30:48] Speaker 03:
Okay.

[00:30:49] Speaker 03:
The Intel computer.

[00:30:51] Speaker 04:
Well, first of all, let me just state that we do have argued alternate theories in the case below, theories of both when the app is running on a phone and the apps running by themselves.

[00:31:01] Speaker 04:
In this use case, what happens is it's already been loaded on a phone and it's already, so there isn't really the issue of the hardware versus software because by the time the use comes up, it's a running functional thing.

[00:31:15] Speaker 04:
Okay.

[00:31:15] Speaker 04:
They provide two steps of the apparatus and we're claiming that they are using the claimed invention that once the invention, under 271A, once all the elements are there, you have a patented invention.

[00:31:31] Speaker 04:
that once you have prevention, you're limited.

[00:31:32] Speaker 04:
Any use, then, is violating the statute.

[00:31:34] Speaker 02:
You say all the elements are there.

[00:31:36] Speaker 02:
I mean, yes, any use, but it has to be one person or joint infringers.

[00:31:43] Speaker 02:
So any use doesn't mean one person practices this element, the other person practices this element, the third person practices this element.

[00:31:54] Speaker 02:
That's not what those cases stand for.

[00:31:57] Speaker 04:
Well, I think with all due respect, I guess that's where

[00:32:00] Speaker 04:
I disagree.

[00:32:01] Speaker 04:
I think that the patentee is entitled to require a license for any use of his patented device as long as he can show that it's beneficial use.

[00:32:10] Speaker 04:
That's the Supreme Court standard.

[00:32:13] Speaker 05:
Just curious, why have you chosen not to pursue joint infringement theory or indirect infringement theory or direct infringement of any of your method patent claims?

[00:32:26] Speaker 04:
Because we believe that it's better suited to direct infringement.

[00:32:29] Speaker 04:
I mean, we may have been wrong.

[00:32:30] Speaker 04:
We certainly sincerely believe that these software apps are apparatuses that are capable of Imprinting that and and that's just the route we took as a matter of I guess litigation tactics

[00:33:00] Speaker 00:
I don't want to go to the bar but I can tell you.