[00:00:02] Speaker 02:
The next case for argument is 141629, Nuance Communications versus Adley Software House.

[00:00:10] Speaker 02:
Everybody's getting settled.

[00:00:12] Speaker 02:
Ms.

[00:00:12] Speaker 02:
Maynard, whenever you're ready.

[00:00:40] Speaker 01:
May it please the court?

[00:00:41] Speaker 01:
Deanne Maynard for Appellant Nuance.

[00:00:44] Speaker 01:
The district court erroneously construed identifying and recognizing by relying solely on a definition from a general purpose dictionary that's contradicted by the specification.

[00:00:55] Speaker 01:
That requires reversal.

[00:00:58] Speaker 01:
The specification explicitly teaches that identifying and recognizing a character can be less than unequivocal.

[00:01:08] Speaker 01:
Specifically.

[00:01:09] Speaker 02:
Is that the construction that your client proposed right off in the Markman?

[00:01:13] Speaker 01:
It's not, is it?

[00:01:15] Speaker 01:
At the initial Markman, Your Honor, we proposed plain meaning.

[00:01:19] Speaker 01:
And at that time, Abby agreed that the ordinary meaning of identify included an ambiguous identification.

[00:01:29] Speaker 01:
Abby's initial claim construction brief said, many times an identified character is still ambiguous.

[00:01:38] Speaker 04:
So the question here is whether you're stuck with ordinary meaning, since you agreed to that at the initial claim construction.

[00:01:45] Speaker 04:
The question is, is it error for the district court to look to a general purpose dictionary for ordinary meaning?

[00:01:52] Speaker 01:
It is in this situation two points about that, Judge Dyke.

[00:01:56] Speaker 01:
One, the ordinary meaning, of course, in patents is the ordinary meaning as understood by a person of skill in the art.

[00:02:04] Speaker 01:
Here, this is one of the ordinary meanings of identify.

[00:02:08] Speaker 01:
But you must look to the patent specification to determine the ordinary meaning.

[00:02:14] Speaker 02:
So if you were to say... But in that instance, if that's your argument, then that's a claim construction argument that should have been raised in the first instance in the Markman proceeding, right?

[00:02:24] Speaker 02:
If you're saying, no, it's not

[00:02:26] Speaker 02:
ordinary meaning in general, it's ordinary meaning in light of the specification and therefore it includes the ambiguous stuff, then that should have been raised at the Markman and something that was conclusively determined at the Markman, but it wasn't.

[00:02:40] Speaker 02:
You were set with ordinary meaning, right?

[00:02:43] Speaker 01:
This is one of the ordinary meanings.

[00:02:44] Speaker 01:
What we're seeking is one of the ordinary meanings, Chief Judge Prost.

[00:02:47] Speaker 01:
At the time of the Markman, it was common ground between the parties.

[00:02:50] Speaker 01:
that an identified character could be ambiguous.

[00:02:53] Speaker 01:
That's the introduction to Abbey's claim construction brief on A537.

[00:02:59] Speaker 01:
The dispute arose about which ordinary meaning it was at summary judgment.

[00:03:04] Speaker 04:
How was the jury instructed?

[00:03:06] Speaker 04:
What was the jury?

[00:03:06] Speaker 04:
Where do we find the jury instruction?

[00:03:08] Speaker 01:
The jury was told it means to... No, but where?

[00:03:14] Speaker 01:
The jury instruction, Judge Dyke, appears on A3452.

[00:03:30] Speaker 01:
And it says, the terms identifying and recognizing, this is line five, each has the same plain and ordinary meaning, quote, to establish the identity of.

[00:03:41] Speaker 04:
OK, so how does that preclude your interpretation?

[00:03:45] Speaker 01:
Because it doesn't make clear that the scope of identify includes non-final identifications.

[00:03:52] Speaker 04:
Yeah, but it doesn't preclude that, right?

[00:03:54] Speaker 04:
But there was a- Is that correct?

[00:03:56] Speaker 01:
We think it does, Your Honor, because- Precludes that?

[00:03:59] Speaker 04:
Well, the judge allowed you to argue for your interpretation at the trial, right?

[00:04:06] Speaker 01:
This is a question, though.

[00:04:08] Speaker 04:
Is that correct?

[00:04:09] Speaker 01:
Yes, Your Honor.

[00:04:10] Speaker 01:
But that can't save the error.

[00:04:13] Speaker 01:
Under O2 micro, that was the case as well.

[00:04:15] Speaker 01:
The parties argued their different constructions to the jury.

[00:04:18] Speaker 01:
But this court held it's a markman question.

[00:04:21] Speaker 01:
It's a question for the judge.

[00:04:23] Speaker 01:
This scope dispute arose at summary judgment when both parties briefed

[00:04:28] Speaker 01:
Claim construction, the meaning of identify.

[00:04:32] Speaker 02:
But you never proposed.

[00:04:34] Speaker 02:
If we buy your argument that it is a matter for claim construction, you never proposed explicitly to say that identifying includes non-final identification.

[00:04:47] Speaker 02:
Yes, Your Honor.

[00:04:48] Speaker 02:
Yes, you did?

[00:04:49] Speaker 01:
Yes, we did, Your Honor.

[00:04:50] Speaker 01:
At A-1436 is the briefing on the supplemental briefing.

[00:04:55] Speaker 01:
So the court reopened claim construction.

[00:04:57] Speaker 01:
When we raised this issue, the court reopened claim construction, allowed the parties to brief what they thought the ordinary meaning of it was.

[00:05:04] Speaker 01:
And at A-1436, we asked for identifying paren, finally or tentatively, or in the alternative to Judge Pros, identifying has its plain and ordinary meaning.

[00:05:17] Speaker 01:
many times an identified character is still ambiguous.

[00:05:22] Speaker 01:
That was straight from Abby's first claim construction briefing.

[00:05:25] Speaker 04:
I don't understand how you can argue that the instruction that the court gave to the jury precludes that view of what ordinary meaning means.

[00:05:35] Speaker 04:
If we think it's... I mean, if he said to finally establish the identity, maybe you'd have an argument, but it doesn't seem to me

[00:05:45] Speaker 04:
that the instruction he gave precluded you from arguing that a tentative or preliminary identification would qualify.

[00:05:55] Speaker 04:
And indeed, you did argue that to the jury, and the jury rejected it.

[00:06:00] Speaker 01:
Your Honor, to establish the identity of, to establish the identity of suggests a definitive determination that is inconsistent with the specification.

[00:06:09] Speaker 01:
That's the definition that Abby requested.

[00:06:12] Speaker 01:
That's the definition they got.

[00:06:13] Speaker 01:
The error that the judge made was not resolving this claim construction dispute between the parties, which was, does the ordinary meaning of identify in this patent include ones that don't finally establish the identity of?

[00:06:29] Speaker 03:
Why couldn't it be a fact question?

[00:06:31] Speaker 03:
Whether a system that performs ambiguous identifications, tentative identifications,

[00:06:38] Speaker 03:
It's a fact question whether that meets the limitation of identifying or to establish the identity of it.

[00:06:45] Speaker 01:
Because it's a question about the scope of the meaning of the claim term, identify.

[00:06:49] Speaker 03:
Do you understand my point?

[00:06:51] Speaker 03:
It's a close question whether we should regard that as a claim construction question, whether ambiguous identifications is encompassed by the word

[00:07:03] Speaker 03:
It sounds also like a fact question.

[00:07:05] Speaker 01:
Both parties understood it, Judge Chen, as a claim construction question.

[00:07:09] Speaker 01:
In the summary judgment briefing, both parties briefed it as a claim construction question.

[00:07:13] Speaker 02:
But you didn't get your answer.

[00:07:14] Speaker 02:
I don't understand.

[00:07:15] Speaker 02:
If there was claim construction, you were satisfied coming out of claim construction with plain and ordinary meaning.

[00:07:20] Speaker 02:
So was it your view that no one could construe the plain and ordinary meaning to be something other than includes the non-final identifiers, the ambiguous identifiers?

[00:07:33] Speaker 01:
The dispute at claim construction was about something else, Chief Judge Pros.

[00:07:37] Speaker 01:
The parties agreed then that it included tentative.

[00:07:39] Speaker 01:
When Abby suggested at summary judgment that it excluded tentative identifications, which that is their argument in the summary judgment papers at A943.

[00:07:51] Speaker 01:
They give definitions of identify, and they say under their definitions, they don't infringe, and they're entitled to summary judgment.

[00:08:00] Speaker 01:
We replied, Judge Chen, in claim construction arguments, saying, no, that's inconsistent with the language of the specification.

[00:08:08] Speaker 01:
This is a scope issue.

[00:08:09] Speaker 01:
It's a claim construction issue that, under Markman, the jury would have benefited from an explanation of what the boundaries of our claim is.

[00:08:18] Speaker 01:
It ultimately is what?

[00:08:20] Speaker 03:
I guess the question is, the district court, I don't think, erred in saying that it wasn't going to reopen claim construction after it

[00:08:30] Speaker 03:
decided to go with plain and ordinary meaning, which is what you urged at the Markman.

[00:08:36] Speaker 03:
So maybe what the district court did wasn't necessarily a claim construction on the Eva trial, but instead, once everyone agrees to go with plain meaning,

[00:08:50] Speaker 03:
Now what that means is the patent doesn't really matter anymore.

[00:08:55] Speaker 03:
Now it's just the jurors' understanding, their own experiential understanding of the word identify that matters.

[00:09:04] Speaker 03:
And so you don't necessarily have to engage in a review of the intrinsic evidence anymore.

[00:09:13] Speaker 01:
Several points, Judge.

[00:09:14] Speaker 01:
What do you think?

[00:09:15] Speaker 01:
No, I disagree with you on almost everything you just said.

[00:09:18] Speaker 01:
The district court did reopen Klang Construction.

[00:09:21] Speaker 01:
Initially, it hadn't construed identify as identify.

[00:09:24] Speaker 01:
It reopened Klang Construction, and it adopted Abby's construction, which is to establish the identity of, and rejected our construction, which was identifying, finally or tentatively.

[00:09:34] Speaker 04:
So there was a- So suppose the district court had instructed the jury that this term should be given its plain and ordinary meaning and hadn't given them any guidance.

[00:09:42] Speaker 04:
Would you have a complaint about that?

[00:09:44] Speaker 01:
Yes, Judge Dyke.

[00:09:47] Speaker 01:
about the scope of the plain and ordinary meaning arose right before, in summary judgment, plenty of time to resolve, more than a month before trial.

[00:09:56] Speaker 04:
I tell you what's the problem.

[00:09:57] Speaker 04:
It's the problem that Judge Chen identified.

[00:10:00] Speaker 04:
There's a murky line between claim construction and infringement.

[00:10:04] Speaker 04:
I mean, I suppose you could get really detailed in the claim construction so that every infringement question would become a claim construction question.

[00:10:12] Speaker 04:
But there has to be some sort of

[00:10:14] Speaker 04:
a gray area between the two where something can appropriately be treated as a question of infringement rather than claim construction, which seems to be what the district court did here, no?

[00:10:27] Speaker 01:
This is plainly on the side of claim construction, Judge Dyke, and both parties saw it that way.

[00:10:33] Speaker 02:
So I thought you said to Judge Chen, if at the end of the day you proposed plain and ordinary meaning, and you came up to the judge afterwards and said, can you reopen Markman because we want more clarity than plain and ordinary meaning, I thought you would agree that that wouldn't be reversible error on the part of the district court judge to say, no, we're not reopening it.

[00:10:54] Speaker 01:
Yes, it would be, under 02 Micro.

[00:10:56] Speaker 01:
Absolutely, Chief Judge Prosth.

[00:10:58] Speaker 01:
02 Micro says, a dispute about the scope of the claim term arose before trial in time for the judge to fix it.

[00:11:06] Speaker 01:
And here was plenty of time.

[00:11:07] Speaker 01:
It was five weeks before trial.

[00:11:09] Speaker 01:
This is really ultimately a jury instruction question.

[00:11:11] Speaker 01:
And it was proposed well before the close of the jury instruction debate.

[00:11:17] Speaker 01:
It was about the scope under 02 Micro, Chief Judge Prosth.

[00:11:21] Speaker 01:
It's a markman question.

[00:11:22] Speaker 01:
It's the court's duty to resolve it.

[00:11:24] Speaker 01:
And Judge Stike, this is way on the side of claim construction.

[00:11:27] Speaker 01:
Both parties briefed it that way in the summary judgment motion.

[00:11:30] Speaker 01:
That's why we went back to the court when the court didn't resolve it on summary judgment and just didn't give any explanation.

[00:11:36] Speaker 01:
The parties had each briefed claim construction issues in the summary judgment.

[00:11:40] Speaker 01:
And we said, a dispute has arisen of claim construction, that we need your guidance for the jury.

[00:11:46] Speaker 01:
We asked for it to be construed.

[00:11:48] Speaker 01:
He did reconstitute, and he construed it incorrectly.

[00:11:51] Speaker 01:
There's no way to read column 20 of this patent without concluding that identification here includes recognizing a character by a group of characters that it belongs to and not definitively.

[00:12:08] Speaker 03:
Well, I don't know if we're outside the game of what is the intrinsic evidence is as soon as there's an agreement about plain and ordinary meaning.

[00:12:15] Speaker 03:
But I guess your position is once the district court adopted plain and ordinary meaning,

[00:12:21] Speaker 03:
it was your understanding that all parties understood that to necessarily encompass ambiguous identification.

[00:12:28] Speaker 01:
Absolutely.

[00:12:29] Speaker 03:
And so therefore, when in your view, the other side at a late stage said, no, it doesn't include ambiguous identifications, you're saying, OK, now the playing field has completely changed.

[00:12:41] Speaker 03:
And at this late stage, we need resolution because of this switch in position by the other party.

[00:12:48] Speaker 01:
That's right, Judge Chen.

[00:12:49] Speaker 01:
Abbey changed its position.

[00:12:50] Speaker 01:
about what the plain meaning of identify means by saying it means establishing, finally, the character.

[00:12:59] Speaker 03:
But did the district court ever say, when I say plain and ordinary meaning here at the Markman border, what that encompasses is ambiguous identifications?

[00:13:08] Speaker 01:
No, Your Honor.

[00:13:08] Speaker 03:
It doesn't sound like the most natural common understanding of the word identify.

[00:13:13] Speaker 01:
It is.

[00:13:13] Speaker 01:
So if you got on the elevator this morning,

[00:13:16] Speaker 01:
and in the courthouse, and you recognize the other individual as one of Chief Judge Pro's four law clerks, but you didn't know who it was, you would say, I recognize that law clerk.

[00:13:26] Speaker 01:
You've identified that law clerk.

[00:13:28] Speaker 01:
You just don't know precisely who it is.

[00:13:31] Speaker 01:
And that's exactly the way the patent uses identify and recognize.

[00:13:35] Speaker 01:
You identify someone by a group or a class in which it applies.

[00:13:40] Speaker 04:
Could I, unless my colleagues have more questions about the claim construction, could I bring you to this other question of whether you were entitled to a second trial?

[00:13:49] Speaker 04:
I've looked at the special master's report, and particularly 691.

[00:13:55] Speaker 04:
And it strikes me that the special master recognizes that there's a dispute about whether there should be more than one trial, and says we're going to have a trial, and sets forth a number of patents and a number of claims.

[00:14:10] Speaker 04:
that can be brought up at the trial, why doesn't that resolve the question that you're trying to argue in the brief?

[00:14:21] Speaker 01:
Because this was against a backdrop of many discussions about how to orderly proceed to trial in a way that would hopefully resolve the case with one trial.

[00:14:30] Speaker 04:
Correct.

[00:14:31] Speaker 04:
So wasn't that resolved in the special master report, which was adopted by the district court?

[00:14:36] Speaker 01:
No, Your Honor, because in the order appointing the special master, as the special master's point says, she was submit the following report and recommendation on case management.

[00:14:46] Speaker 01:
And the district court had repeatedly, throughout the discussions about this case, drawn a distinction between the order in which we're going to present things to the trier of fact versus

[00:14:57] Speaker 01:
No nuance.

[00:14:58] Speaker 01:
I recognize.

[00:14:58] Speaker 01:
I can't take away your causes of action without resolving them.

[00:15:01] Speaker 02:
I don't understand your answer.

[00:15:03] Speaker 02:
The special master recommended and adopted by the judge, I don't think you put in any argument that you shouldn't adopt the special master recommendation.

[00:15:14] Speaker 02:
He says, we recommend all parties proceed through discovery, mediation, and then trial on both the first and the second group.

[00:15:21] Speaker 02:
And then from that, he draws out that the numbers are going to be

[00:15:25] Speaker 02:
limit to total of four patents and 15 claims that covered trial on both patents, right?

[00:15:32] Speaker 02:
On all patents, right?

[00:15:33] Speaker 01:
Everything went to discovery up to expert discovery and then a subset of patents had to be picked for expert discovery and trial but it was understood and no one ever said, they can point to no statement in the record where either they or the district court said once we have a trial on this subset of patents

[00:15:50] Speaker 01:
that the rest of the patents are going to be dismissed with prejudice, which is what is happening.

[00:15:54] Speaker 04:
But this contemplates a single trial, doesn't it?

[00:15:58] Speaker 04:
On page 691, the special master's report.

[00:16:00] Speaker 01:
But the discussion's up to that.

[00:16:02] Speaker 04:
Wait, is that correct?

[00:16:03] Speaker 04:
Does it contemplate a single trial?

[00:16:06] Speaker 01:
Does it?

[00:16:07] Speaker 04:
Yes.

[00:16:08] Speaker 01:
Yes, Judge Dyke, but not only one trial.

[00:16:10] Speaker 01:
And the discussions before this had all contemplated that one trial might not be enough to resolve everything.

[00:16:18] Speaker 01:
Hopefully it would be.

[00:16:19] Speaker 01:
Hopefully, if nuance went to trial in its best patents, that it would come out in a way that that would end it.

[00:16:24] Speaker 03:
But I read all of your side's statements and course of dealings leading up to the trial as yourself acknowledging and recognizing that there needed to be a winnowing process.

[00:16:36] Speaker 03:
And the most important thing to your side was to ensure that

[00:16:40] Speaker 03:
your side was able to get discussion on all the eight patents and all the various claims, but then ultimately your side even wanted to go down to just three or four patents, and ultimately urged four patents and 15 claims to the special master, which the special master adopted, right?

[00:16:59] Speaker 01:
No, Your Honor.

[00:17:00] Speaker 01:
What Nuant said, and here's an example of it.

[00:17:03] Speaker 03:
Am I wrong that Nuant recognized and made efforts to winnow down the case?

[00:17:10] Speaker 01:
winnow it down, yes, to the extent that there were efforts to winnow down so there could be a first trial that would hopefully resolve everything.

[00:17:18] Speaker 01:
So if I could just quote.

[00:17:21] Speaker 03:
I guess what I don't know is, do you know of a case where the parties are working hard in a very complex case, spanning several patents and dozens of claims, where they mutually winnow it down to a handful of claims?

[00:17:36] Speaker 03:
And then after that case is over, they say, OK, now that

[00:17:40] Speaker 03:
We still have non-selected claims.

[00:17:43] Speaker 03:
Let's go on a second trial for that.

[00:17:45] Speaker 03:
Do you know of a case where that's happened?

[00:17:47] Speaker 01:
This is the only case I know of where a court has dismissed separate causes of action without trying them when they were never abandoned.

[00:17:55] Speaker 02:
Why didn't you, when under the recommendation, you could have raised asserted four patents at the trial and 15 claims?

[00:18:02] Speaker 02:
It's my understanding that you asserted three patents and seven claims.

[00:18:06] Speaker 02:
Why?

[00:18:07] Speaker 02:
If I'm right about that, why?

[00:18:09] Speaker 02:
If you had other good patents, why didn't you

[00:18:11] Speaker 02:
He had room for another patent.

[00:18:13] Speaker 02:
He had room for eight more claims.

[00:18:14] Speaker 02:
Why didn't they go in the first trial?

[00:18:16] Speaker 01:
We initially selected four patents, Chief Judge Prost, for that trial.

[00:18:21] Speaker 01:
And those four patents went through the six months of expert discovery getting ready for trial.

[00:18:25] Speaker 01:
On the eve of trial, in order to winnow down the trial further, we dropped one, the 009 patent.

[00:18:31] Speaker 01:
But in that document, dropping that patent, we expressly reserved the right to try the other patents, the untried patents.

[00:18:39] Speaker 01:
Abia here has not made a distinction between the patents, but if the court were going to draw a distinction, one could draw a logical distinction between the 009 patents and the other untried patents.

[00:18:47] Speaker 01:
But if I could just point you to three documents that I think establish the understanding of the parties up until the time of trial.

[00:18:55] Speaker 01:
The first is the document that you suggested, which is the court ordered Nuas to pick a subset of the patents for the trial.

[00:19:02] Speaker 04:
The special master of one?

[00:19:03] Speaker 01:
The special master recommended it in the court

[00:19:05] Speaker 01:
adopted that order.

[00:19:07] Speaker 01:
Yes, Judge Dyke.

[00:19:07] Speaker 04:
I don't see where in that there's any support for the notion there was going to be a second trial.

[00:19:14] Speaker 04:
Where does he say there's going to be a second trial?

[00:19:15] Speaker 04:
What does she say?

[00:19:17] Speaker 01:
That document does not mention a second trial, Judge Dyke.

[00:19:20] Speaker 01:
But in the course of dealings up until that point, the district court had made clear, and nuance had repeatedly stated, that it thought, wanted to postpone the rest of the case.

[00:19:30] Speaker 01:
Hopefully.

[00:19:31] Speaker 04:
Where did the district court ever say that there was going to be a second trial?

[00:19:35] Speaker 01:
The district court said, early on, things like this.

[00:19:39] Speaker 01:
In response to another defendant who's not in the case anymore, who wanted to dismiss some of our patents with prejudice, the district court said, I can't do that.

[00:19:45] Speaker 01:
I can't just dismiss.

[00:19:46] Speaker 01:
They have separate causes of action.

[00:19:47] Speaker 04:
Well, that's not responsive to my question.

[00:19:49] Speaker 04:
Where did the district court ever say there was going to be a second trial?

[00:19:53] Speaker 01:
The district court never promised a second trial, Judge Daigle.

[00:19:56] Speaker 01:
The district court never said there's not going to be a separate trial.

[00:19:59] Speaker 02:
The language that Judge Teich pointed into in the special master's report talks about a trial on both the first group and the second group.

[00:20:10] Speaker 02:
If there were a trial that covered the first group and the second group, wouldn't that cover all the patents we're talking about here?

[00:20:16] Speaker 01:
No, Your Honor.

[00:20:17] Speaker 01:
So there are other patents beyond the first and second group?

[00:20:21] Speaker 01:
I think the first and second group encompass all of the patents.

[00:20:24] Speaker 01:
But the point was that there was going to be fact discovery on all the groups.

[00:20:29] Speaker 01:
and then forced selection of the four patents, and then expert discovery and trial on those patents.

[00:20:36] Speaker 03:
It was your side that recommended four patents and 15 claims, right?

[00:20:41] Speaker 01:
For the first trial, Judge Chen.

[00:20:44] Speaker 02:
Well, that's not what the special master report says, because it says trial on both first and second groups followed, and then the next sentence deals with the total of four patents and however many claims.

[00:20:56] Speaker 01:
When we followed the order that resulted from the special masters report, we expressly stated we will postpone the other patents.

[00:21:06] Speaker 01:
We will go to trial on these patents.

[00:21:08] Speaker 01:
So that is at A727.

[00:21:18] Speaker 01:
Line 5.

[00:21:20] Speaker 01:
Nuance maintains its allegations that defendants infringe the claims in asserted but unselected claims from all previously asserted patents and reserves its right to reassert them against Abby and or Lexmark at a later time in this suit or a future suit.

[00:21:34] Speaker 01:
Abby never disputed this.

[00:21:36] Speaker 01:
Second thing, on January 4th.

[00:21:44] Speaker 04:
So you're saying that if a party

[00:21:47] Speaker 04:
says something that's contrary to a court order that we go with the party's interpretation rather than the meaning of the court order?

[00:21:54] Speaker 01:
It's completely consistent with the court's order, Judge Dyke.

[00:21:57] Speaker 01:
The court's order says select four patents for the trial.

[00:22:00] Speaker 01:
It doesn't say select four patents for the only trial and that the remaining costs of action you have, which are separate and independent and cover separate inventions,

[00:22:09] Speaker 01:
will be dismissed with prejudice, despite having been determined on the merits.

[00:22:13] Speaker 01:
And then there are two things past this that I would like to bring your attention to.

[00:22:18] Speaker 01:
One is, after this, subsequently, before the trial, in two joint case management reports, things that Abby joined did not dispute.

[00:22:28] Speaker 01:
But in fact, anything in just nuance of statement is a joint statement.

[00:22:31] Speaker 01:
One is on A740.

[00:22:38] Speaker 01:
Line 24, pursuant to the court's order at the request of defendants, Nuance has narrowed its case for expert discovery and trial by selecting a subset of claims for four of its eight asserted patents, and it names them.

[00:22:51] Speaker 01:
Nuance reserves all rights on previously asserted patents and claims that were not selected as part of Nuance's court ordered selection.

[00:22:59] Speaker 01:
The next one is a joint pretrial order, joint proposed pretrial order, which is in the other volume of the JA.

[00:23:07] Speaker 04:
740s kind of stopped short of saying that the parties agree that there's going to be a second trial, right?

[00:23:15] Speaker 01:
It's a clear statement of agreement between the parties, Judge Dyke, that this trial is not going to resolve the patents that are not being tried.

[00:23:23] Speaker 01:
This is not a situation like Katz.

[00:23:24] Speaker 01:
There was no discussion that these are representative patents and the rest of the patents are going to be judged based on these.

[00:23:31] Speaker 01:
If this were a non-patent case and you had four separate causes of action,

[00:23:35] Speaker 01:
and the court went to trial on two of them and then entered judgment on the other two without deciding the merits, that would clearly be reversible error.

[00:23:45] Speaker 04:
Where's your third one?

[00:23:46] Speaker 01:
My third one is on A1222 in the footnote.

[00:23:52] Speaker 01:
This is the place I was mentioning a chief judge prose right before the trial in order to narrow.

[00:23:57] Speaker 01:
I'm sorry, what is the site again?

[00:23:58] Speaker 01:
I'm sorry, it's on A1222.

[00:24:00] Speaker 01:
It's in footnote one.

[00:24:01] Speaker 01:
And this is a joint.

[00:24:04] Speaker 01:
submission by the bullet party, pre-trial, proposed pre-trial order, footnote one.

[00:24:12] Speaker 01:
And this is where we say we're going to narrow out the 09.

[00:24:15] Speaker 01:
So that's where I was saying one could possibly draw a distinction.

[00:24:17] Speaker 01:
But the last sentence says, I'm sorry, the last

[00:24:22] Speaker 01:
sentence of the first paragraph in the footnotes.

[00:24:24] Speaker 01:
The nuance reserves all rights on previously asserted patents, claims, and causes of action that were not selected as part of nuances selection.

[00:24:31] Speaker 01:
So this is right before the trial.

[00:24:33] Speaker 01:
The first time Abby ever says that this judgment resolves our other patents, our untried patents, and that they were abandoned was in the cost motion after the trial.

[00:24:48] Speaker 01:
That's the first time that they ever asserted that.

[00:24:51] Speaker 01:
And the judge's order saying that he'd entered judgment on not resolved patents was the first time that had ever been said by the judge.

[00:24:58] Speaker 04:
The discussions before leading up to the special master's... But both of these stopped short of saying that we understand we're going to get a second trial, right?

[00:25:08] Speaker 01:
The first one that I pointed to you to, Judge Dyck, where we name our

[00:25:15] Speaker 01:
So on A727, the first one where we comply with the court's order to select the four.

[00:25:22] Speaker 04:
No, but I'm talking about the joint statement.

[00:25:23] Speaker 01:
The two joint statements.

[00:25:24] Speaker 04:
The joint statements don't say anything about a second trial, right?

[00:25:28] Speaker 01:
They don't.

[00:25:29] Speaker 01:
That's true.

[00:25:30] Speaker 01:
But they don't say anything about us abandoning our patents or that judgment.

[00:25:35] Speaker 01:
What's happened here, Judge, I guess, is judgment has been entered against us on untried patents.

[00:25:43] Speaker 01:
There's no precedent for that.

[00:25:45] Speaker 01:
except where there's been a showing like in Katz that they were representative.

[00:25:51] Speaker 03:
So I guess you're saying when all the parties, the special master and the district court are collectively working together to winnow down a case down to a reasonable number of claims, the default should be that everyone is on notice that there's going to be a rematch after a trial on those selected claims?

[00:26:11] Speaker 01:
You wouldn't have to hold that as a broad principle here because those aren't the facts.

[00:26:14] Speaker 01:
Here, leading up to it, the understanding was that nuance continually, repeatedly expressed and reserved its rights, that the parties in joint statements after this election said that nuance reserved its rights.

[00:26:26] Speaker 01:
When nuance chose the patents, nuance said it reserves the rights, and this is the language I was trying to point you to, Judge Dyke, at page A727, to reassert them against Abbey and her Lexmark at a later time in this suit or a future suit.

[00:26:39] Speaker 01:
So you wouldn't have to hold that, no.

[00:26:41] Speaker 01:
And here we're just talking about it would be like one more trial.

[00:26:44] Speaker 02:
But can I just assume hypothetically, you've got a special master's report adopted by the district court judge that says, you might want a second trial.

[00:26:54] Speaker 02:
You might want to assert eight patents.

[00:26:56] Speaker 02:
This is what we're going to do.

[00:26:58] Speaker 02:
In that circumstance, however many documents you submitted, joint or singularly, that said we reserve our rights to a second trial would all be irrelevant, right?

[00:27:08] Speaker 02:
You don't get to reserve rights if the district court has decided, you know, I'm going to do this case this way.

[00:27:14] Speaker 02:
You don't reserve your rights to do something other than what he's directed, right?

[00:27:20] Speaker 01:
Perhaps.

[00:27:21] Speaker 01:
But if that's how you view this?

[00:27:25] Speaker 01:
That is reversible error.

[00:27:26] Speaker 01:
That is beyond the discretion of a district court judge to enter judgment on causes of action that are separate and independent and not real.

[00:27:35] Speaker 04:
The question is whether you made and whether you preserved this argument.

[00:27:39] Speaker 04:
And the special master's report, presumably there was briefing when that was approved by the district court.

[00:27:46] Speaker 04:
Was there briefing?

[00:27:48] Speaker 01:
There was some briefing after that, Your Honor.

[00:27:51] Speaker 04:
Before it was approved?

[00:27:53] Speaker 04:
But nuance is... Did you raise this question about a second trial in that briefing?

[00:27:59] Speaker 04:
Did you object to the special master's report on the ground that it contemplated only a single trial?

[00:28:06] Speaker 01:
It didn't contemplate only a single trial, Judge Dyke.

[00:28:09] Speaker 04:
But did you make the argument?

[00:28:11] Speaker 01:
No, because it didn't contemplate that.

[00:28:13] Speaker 01:
One couldn't read the course of dealings here to understand it that way.

[00:28:18] Speaker 01:
And if we did have to preserve it, we preserved it when we made this election on A727.

[00:28:24] Speaker 01:
We reserved the right to reassert them against Abby and her Lexmark at a later time in this suit or future suit.

[00:28:30] Speaker 01:
They never disputed that.

[00:28:31] Speaker 01:
But Abby, the first time Abby said that the other claims had been resolved with prejudice was after the judgment.

[00:28:38] Speaker 01:
That's the first time they ever argued that or said it.

[00:28:42] Speaker 01:
They can't point to a single statement, a single clear statement from either the district court judge, which I don't think that select four patents for a trial is not such a statement, or from Abby saying that the rest of the unresolved patents were going to be resolved with prejudice.

[00:28:59] Speaker 03:
In pre-trial, you were all along fighting for a single trial, right?

[00:29:04] Speaker 03:
Whereas the other side, Abby, was looking to have two states of trials, one for the OCR and another one for the non-OCR patents.

[00:29:13] Speaker 03:
And you resisted that, and the special master and district court agreed with you that it would all get rolled up into a single trial, right?

[00:29:21] Speaker 01:
In the hope, Judge Chen.

[00:29:23] Speaker 01:
that it could all be resolved in one trial.

[00:29:26] Speaker 01:
But if I could quote you what I was trying to quote you earlier, like A421, there are other statements like this in the record.

[00:29:32] Speaker 01:
This is from Nuance.

[00:29:33] Speaker 01:
If you do that, in other words, if you let us go to trial on subset of what we think are our strongest patents, either win or lose, that will typically resolve the whole dispute.

[00:29:45] Speaker 01:
In the meantime, the other patents, quote, would effectively be stayed.

[00:29:49] Speaker 01:
That's A422.

[00:29:51] Speaker 01:
Those were the conversations in that it's consistent.

[00:29:54] Speaker 01:
If one reads the record, there were a lot of conversations back and forth.

[00:29:57] Speaker 01:
But it's consistent if one reads the record.

[00:29:58] Speaker 01:
The district court was talking about the difference between the case management and how to manage it in the hope that it would get resolved easily versus what it could do on the merits.

[00:30:08] Speaker 01:
And it more than once said it couldn't resolve.

[00:30:11] Speaker 01:
It would violate nuances due process rights to resolve its separate patent claims without

[00:30:17] Speaker 01:
patent causes of action without actually determining them on the merits.

[00:30:21] Speaker 01:
So yes, did Nuance hope, Judge Tin, that one trial on the strongest patents would end this case, or that if all the patents went up through discovery, there might be summary judgment that would resolve it one way or the other.

[00:30:32] Speaker 01:
And at one place, Nuance's lawyer said, yes, maybe summary judgment of non-infringement would be entered.

[00:30:37] Speaker 01:
And that would win over the case down.

[00:30:38] Speaker 01:
Yes, that was the hope.

[00:30:40] Speaker 01:
And had we prevailed in the trial, which I think we would have if the claim construction had been correct,

[00:30:47] Speaker 01:
You know, that might have been enough to resolve it all, but what's happened here is unprecedented.

[00:30:52] Speaker 01:
The judge has issued...

[00:30:57] Speaker 02:
Package of eight patents, is that true?

[00:30:59] Speaker 02:
Eight patents, yes.

[00:30:59] Speaker 02:
Eight patents.

[00:31:00] Speaker 02:
Okay, somehow it got winnowed down to at least six before it went down to four, right?

[00:31:04] Speaker 02:
Am I mistaken about that?

[00:31:05] Speaker 01:
No, I mean, I think there's a lot of confusing discussions, Chief Judge Prost, in the dialogue, but there were patents selected for Markman and there were different selections.

[00:31:15] Speaker 02:
Okay, so you went to trial on what you conceded, what you agree are your strongest patents.

[00:31:20] Speaker 02:
So your thought all along, everybody was assuming all along that if you won on those patents, then there wouldn't be a second trial.

[00:31:28] Speaker 02:
But if you lost, there would be.

[00:31:30] Speaker 02:
What was the thought process here?

[00:31:32] Speaker 01:
I'm not sure.

[00:31:33] Speaker 01:
That's essentially what Nuance's lawyer was suggesting.

[00:31:36] Speaker 01:
There were lots of dialogue.

[00:31:38] Speaker 02:
So you're saying he was saying if we win, we don't need a second trial.

[00:31:43] Speaker 01:
Typically, that resolved the whole dispute.

[00:31:45] Speaker 01:
But what's happened here is that we have a complaint that includes aid patents.

[00:31:53] Speaker 01:
Judgment's been entered on patents, which this court's held, independent causes of action.

[00:31:59] Speaker 01:
There's no argument that what was tried is representative of these untried patents.

[00:32:03] Speaker 01:
And judgment's been entered against us, on them without the merits being determined.

[00:32:08] Speaker 04:
What strikes me is there's a real risk of sandbagging here.

[00:32:12] Speaker 04:
You have an order from

[00:32:14] Speaker 04:
a proposed order from the special master, which talks about one trial.

[00:32:18] Speaker 04:
And what you're saying is that because of some ambiguous statements that were made later on that the district court can't give that report, it's plain being interpreted as barring a second trial.

[00:32:35] Speaker 04:
I mean, it seems to me that if you thought you wanted a second trial, you had the obligation

[00:32:41] Speaker 04:
to come to the district court and say, by agreeing to this, we're agreeing to what the scope of the first trial is going to be, and there will be a second trial if we want it on the remaining claims.

[00:32:55] Speaker 04:
And you never came to the district court and said, we want the order revised or supplemented to say that, right?

[00:33:04] Speaker 01:
I don't know how much clearer we could have been, Judge Dyke, in complying with that order to select.

[00:33:08] Speaker 01:
We said nuance reserves its right to reassert them.

[00:33:11] Speaker 04:
But that's the problem.

[00:33:14] Speaker 04:
In private practice, I saw lots of statements like that by lawyers about reserving rights to this or reserving rights to that.

[00:33:21] Speaker 04:
become part of the court order.

[00:33:23] Speaker 04:
It doesn't change the court order.

[00:33:26] Speaker 04:
Why isn't it up to you to say to the court, your order is ambiguous or your order precludes us from doing this.

[00:33:33] Speaker 04:
Please change it and make clear that we're entitled to a second trial if we want it.

[00:33:38] Speaker 04:
And it seems to me that that never happened here at all.

[00:33:43] Speaker 04:
What we have

[00:33:43] Speaker 04:
is just some stray statements about reservation of rights.

[00:33:47] Speaker 04:
And it doesn't seem to me that that cuts it, that that fulfills your obligation to make a record about your claim that you were entitled to a second trial.

[00:33:58] Speaker 04:
That's the problem.

[00:34:00] Speaker 01:
When you put it, though, Judge Dyke, against the backdrop of the discussions that occurred before the magistrate judge's order, ordering, I mean the, I'm sorry, the judge's order, ordering nuance to select the four patents,

[00:34:13] Speaker 01:
It was clear that the district court judge was just talking about the order of trying to resolve the case and hoping.

[00:34:19] Speaker 01:
So there are places where, like in the very first conference in February of 2010, Abbey's counsel proposed a procedure like one in Texas.

[00:34:30] Speaker 01:
And the court said, where you construe some claims and you let the case proceed on those claims only.

[00:34:38] Speaker 01:
And the court says, is that without prejudice to any additional claims being litigated thereafter?

[00:34:42] Speaker 01:
And Abby says, yes, yes, because of course, you can't just dismiss claims and say, you're done.

[00:34:49] Speaker 01:
And the court says later on, it says, I'm not going to do what the district court judge did in Texas, but I want you to come back having met and conferred on a way to narrow down the claims that are initially adjudicated.

[00:35:00] Speaker 01:
This is the conferences at A365.

[00:35:03] Speaker 01:
And then in joint statements after that all along, nuance talks about postponing resolutions, going to postpone its cases, it's going to cooperate with the court to narrow the case, to put on the side burner other patents.

[00:35:15] Speaker 01:
That was the course of discussion all the way up that led to the special master's recommendation, which doesn't say there's only going to be one trial.

[00:35:24] Speaker 01:
It says we're going to have

[00:35:26] Speaker 01:
for patents selected for trial.

[00:35:28] Speaker 01:
It doesn't say the only trial.

[00:35:31] Speaker 01:
Given the course of dealings before that Judge Dyke, nuance was on no notice that it needed to come in and say, well, we just want to make clear.

[00:35:37] Speaker 01:
This isn't going to be the only trial.

[00:35:39] Speaker 01:
We're going to litigate everything else.

[00:35:40] Speaker 01:
And to the extent we need to do that, we did do that, because we say on A727 that we aren't giving up our patents.

[00:35:48] Speaker 01:
We don't have any intention to dismiss them.

[00:35:53] Speaker 02:
We're way beyond our time, but that's not your fault.

[00:35:57] Speaker 02:
Why don't we, we'll give you back three minutes if we thought of it.

[00:36:00] Speaker 02:
I appreciate the opportunity.

[00:36:01] Speaker 02:
And we're obviously going to have to have some symmetry here, so why don't we add at least 10 minutes to start over at the other side.

[00:36:10] Speaker 00:
Thank you, Your Honor.

[00:36:11] Speaker 02:
I hope that you don't feel compelled to use those of me.

[00:36:14] Speaker 02:
I hope I don't.

[00:36:20] Speaker 00:
I'd like to start where nuance left off.

[00:36:23] Speaker 00:
And especially I want to talk about Nuance's understanding of its proposal in July 2011, which is what the special master adopted.

[00:36:33] Speaker 00:
I'm going to quote from the July 2010 case management hearing transcript at 47576.

[00:36:40] Speaker 00:
And this is what Nuance's counsel told the judge in July 2010.

[00:36:45] Speaker 00:
Quote, my concern is that having multiple trials could be very expensive.

[00:36:51] Speaker 00:
I would think that we could have a markman process, maybe have a subsequent markman process, and perhaps by then do summary judgments or whatever.

[00:37:00] Speaker 00:
We get to a manageable set for one trial.

[00:37:03] Speaker 00:
And Judge White responds to that at A478.

[00:37:07] Speaker 00:
And what Judge White tells Nuance's lawyer is, I'm not in favor of serial trials.

[00:37:12] Speaker 00:
I can tell you that.

[00:37:13] Speaker 00:
That's a bad idea.

[00:37:15] Speaker 00:
In July 2011, Nuance formally proposes

[00:37:20] Speaker 00:
this dual Markman single trial procedure, A663 to 65.

[00:37:26] Speaker 00:
And if you compare that to the special masters chart, A699.

[00:37:29] Speaker 02:
No, I understand.

[00:37:31] Speaker 02:
And we've looked at, as I think you can appreciate, all of the various references.

[00:37:35] Speaker 02:
But how do you avoid, there's no clear statement in the special masters report or otherwise, this is going to be the one and only trial.

[00:37:44] Speaker 02:
And this trial is going to take care of all of the asserted patents.

[00:37:47] Speaker 02:
And in the absence of that, what we've got are other statements that Ms.

[00:37:51] Speaker 02:
Maynard pointed us to, where they clearly reserved their rights.

[00:37:55] Speaker 02:
Clearly the suggestion that at least one person here was not assuming that this was necessarily going to be the one and only trial.

[00:38:03] Speaker 00:
Well, I think, excuse me, the context, what I just discussed in what nuances counsel told the judge, and then in combination with the dual Markman single trial proposal,

[00:38:17] Speaker 00:
and how Nuance was going to select claims to window down.

[00:38:21] Speaker 00:
Their conclusion from that, that they would always be able to assert these patents later on, makes no sense.

[00:38:27] Speaker 00:
And what I want to talk about is some of the, well, all of the things that they point to that say contradict Judge White's finding that Nuance got exactly what it requested.

[00:38:38] Speaker 00:
And Nuance's counsel pointed to some statements that were made at A421 and 422.

[00:38:44] Speaker 00:
Those statements were made in April.

[00:38:47] Speaker 00:
2010, three months before Nuance came up with his dual markman single trial proposal.

[00:38:53] Speaker 00:
And in that April 2010 case management conference statement, Nuance did propose two trials.

[00:39:02] Speaker 00:
No question about it.

[00:39:03] Speaker 00:
It proposed a phased case where it was able to choose the trials.

[00:39:07] Speaker 00:
But if you go to that transcript at 434 to 441, you'll see the parties in the court discussing that.

[00:39:14] Speaker 00:
And Judge White expressing disfavor based on some bad experiences he had earlier in his career, where the parties assured him that if he could only take care of inventorship, the rest of the case would go away.

[00:39:25] Speaker 00:
And he says, I'm not going to do that.

[00:39:27] Speaker 00:
And after that point, Nuance never again raises a two-trial proposal.

[00:39:35] Speaker 00:
Nuance's counsel talked about Judge White's assurances that due process would be followed.

[00:39:41] Speaker 00:
Those statements are that the district court would allow nuance to keep all the patents it wanted in the case up until discovery closed.

[00:39:49] Speaker 00:
It would get markman on all the patents it wanted to get markman on.

[00:39:52] Speaker 00:
And then when it came time for trial, nuance, not the court, not the defendants, would be able to choose the patents that were going to go to trial.

[00:40:00] Speaker 02:
Can I ask you, in Judge White's, somewhere in his conclusion, he said, considering blah, blah, blah,

[00:40:08] Speaker 02:
And he pointed to nuances failure to mention in its post trial motions or its notice of appeal, its potential request for a new trial.

[00:40:17] Speaker 02:
Why would that be necessary?

[00:40:20] Speaker 00:
Well, it goes to nuances expectations.

[00:40:25] Speaker 02:
Well, why would they have to?

[00:40:26] Speaker 02:
I mean, they've got post-trial motions on what went down here.

[00:40:30] Speaker 02:
Why would necessarily there be discussion by nuance about a second trial?

[00:40:37] Speaker 00:
Well, there ought to be some discussion somewhere, whether it comes in the new trial or J-Mole motions or some other

[00:40:43] Speaker 02:
motion to sever or well that that may be fair enough they should have been they should have said something sooner rather than later but the judge himself whose opinion we're reviewing points out points to nuances failure to mention at the post trial motions as if he takes that as one factor demonstrating that they never intended to they really never contemplated that they would necessarily be second trial and i'm not understanding why why that's compelling well it's

[00:41:12] Speaker 00:
It doesn't necessarily have to be in that motion through that vehicle.

[00:41:15] Speaker 00:
But what Judge White is saying is that if they really expected a second trial after they lost the first one, I would have expected competent counsel, and there's no question Nuance has excellent counsel here, that they would have alerted me somehow.

[00:41:31] Speaker 00:
For example, I issued a final judgment.

[00:41:34] Speaker 02:
Yeah, but that cuts against you, doesn't it?

[00:41:35] Speaker 02:
The suggestion in the judge's mind, he thought, well, maybe there was an opening, but they should have rate.

[00:41:41] Speaker 02:
Why does it matter?

[00:41:42] Speaker 02:
I mean, if his view was that they never ever, they gave up their rights voluntarily to ever have a second trial early on, at least after the special master's report, et cetera, then why does it matter whether they said something after trial or not right away or a little later?

[00:41:59] Speaker 00:
I think it's corroborating.

[00:42:01] Speaker 00:
I understand.

[00:42:02] Speaker 00:
By itself.

[00:42:03] Speaker 00:
Maybe not.

[00:42:04] Speaker 00:
But Judge White was there in July 2010 when these proposals were being discussed.

[00:42:10] Speaker 00:
He's the only one among us that was there.

[00:42:13] Speaker 00:
And his primary finding at A23 is based on these July 2010 and July 2011, what was going on at the case at that time.

[00:42:26] Speaker 00:
And then I think he looks at the stuff leading up to trial and post trial.

[00:42:31] Speaker 00:
and says that's corroborating, that nuance knew all along.

[00:42:34] Speaker 00:
And this is just more evidence that nuance knew all along, that it wasn't until eight months after final judgment is entered that nuance finally comes forward and says, oh, no, no, no, no.

[00:42:45] Speaker 00:
We're ready for our second trial.

[00:42:47] Speaker 00:
Now, nuance is counseled.

[00:42:49] Speaker 00:
I'm sorry.

[00:42:50] Speaker 04:
Ms.

[00:42:51] Speaker 04:
Maynard points to these two joint pretrial orders, which have this ambiguous language about reserving rights.

[00:43:01] Speaker 04:
Why in heaven's name did you allow that ambiguous language to go in the pretrial order?

[00:43:07] Speaker 04:
What did you understand that they were talking about?

[00:43:11] Speaker 00:
I, Your Honor, the way these joint pretrial are set up is each side puts in their own part.

[00:43:18] Speaker 00:
It's not that we're sitting down and crafting figure one together, or footnote one.

[00:43:22] Speaker 00:
They write the first paragraph of footnote one, rewrite the second paragraph of footnote one, that those reservations of rights

[00:43:31] Speaker 00:
You commented on it earlier.

[00:43:32] Speaker 00:
I mean, those are reflexive statements of lawyers.

[00:43:36] Speaker 04:
If I were in your position, I would never have permitted that language.

[00:43:39] Speaker 00:
Your Honor, if we fought every time somebody put in this reservation of rights language, we would never get done what the district court wants us to get done.

[00:43:52] Speaker 00:
At the end of an expert report, at the end of a deposition, at the end of trial, everybody's always reserving rights that they don't have.

[00:44:00] Speaker 00:
And if we fought over that and bickered over that, the district court's work would just never get done.

[00:44:06] Speaker 00:
And so these statements appear all the time, and you just can't physically respond to all of them.

[00:44:12] Speaker 00:
But it cannot override.

[00:44:14] Speaker 02:
Well, it seems the clearest case we have on this in our precedent is the in Ray Katz case.

[00:44:20] Speaker 02:
Correct.

[00:44:21] Speaker 02:
And it seems to me that what went down here is arguably clearly distinguishable from Katz.

[00:44:27] Speaker 02:
I mean, as I understand, all that Katz says is the judge was disallowing assertion of a million claims because he said it's all duplicative.

[00:44:35] Speaker 02:
There's nothing new here.

[00:44:37] Speaker 02:
And he gave them the ability to come back

[00:44:42] Speaker 02:
And if they could show the district court judge that they weren't duplicative, that there was something different about those claims, then he'd rethink it.

[00:44:51] Speaker 02:
So that doesn't get you very far.

[00:44:53] Speaker 02:
It certainly doesn't get you very close to this case.

[00:44:55] Speaker 00:
I think that the procedure in this case was even more permissive than Katz.

[00:44:59] Speaker 00:
Because Judge White didn't say it has to be duplicative.

[00:45:03] Speaker 00:
All he said was, and nobody disputes that there was this claim substitution procedure.

[00:45:09] Speaker 00:
The local rules of the Northern District of California have a good cause exception to the patent rules that allow you to amend your infringement contentions.

[00:45:21] Speaker 00:
All of these vehicles were available to nuance on just a showing of good cause.

[00:45:26] Speaker 00:
It wasn't even specifically that it had to be.

[00:45:29] Speaker 02:
But they were capped at four, right?

[00:45:31] Speaker 02:
There was no way they could go beyond four.

[00:45:33] Speaker 02:
They could switch in and out.

[00:45:35] Speaker 00:
They proposed four.

[00:45:37] Speaker 02:
I know, but just answer my question.

[00:45:39] Speaker 00:
Yeah, they were capped.

[00:45:40] Speaker 00:
The schedule capped them at four.

[00:45:43] Speaker 02:
And they had eight.

[00:45:44] Speaker 00:
On the eve of the trial, they had eight patents.

[00:45:47] Speaker 00:
Two of them were dropped voluntarily before there was any order in place.

[00:45:51] Speaker 02:
What do you mean dropped voluntarily?

[00:45:53] Speaker 02:
Dropped from this trial as part of this, or dropped from the case?

[00:45:57] Speaker 00:
The 053 and 983 patents in May 2010 were not part of nuances, original 24 claims that they selected.

[00:46:06] Speaker 00:
The 24 claims, they proposed the 24 claims.

[00:46:09] Speaker 02:
Well, Ms.

[00:46:09] Speaker 02:
Maynard is going to tell us because they were only talking about what they would put forward in the first round.

[00:46:14] Speaker 00:
Oh, that they anticipated they'd be able to assert them in a second case.

[00:46:17] Speaker 00:
I understand their position.

[00:46:19] Speaker 00:
But yes, the rules allowed them four patents, 15 claims.

[00:46:24] Speaker 00:
They leave one claim, or they leave eight claims and one patent on the table and never ask to substitute it.

[00:46:31] Speaker 00:
So it's hard for nuance to assert any kind of prejudice here.

[00:46:36] Speaker 00:
when they leave these things behind and don't try to replace them?

[00:46:39] Speaker 02:
Well, hypothetically, they had used up all four slots.

[00:46:41] Speaker 02:
If they had switched in and out, switched in and out, and they ultimately used 15 claims, which they were allotted, I think, for patents.

[00:46:52] Speaker 02:
Would that be a different case from your perspective?

[00:46:54] Speaker 00:
Well, if the judge came up on his own without working with the parties on this plan, if Judge White had a standing order,

[00:47:05] Speaker 00:
that said, no matter how many patents you bring to this case, you're only going to trial on 15 claims, four patents.

[00:47:14] Speaker 00:
And I'm not going to give you any opportunity to add more.

[00:47:18] Speaker 00:
I think that's a violation of this court's case management procedures that set out in CATS.

[00:47:26] Speaker 00:
But here, like Judge Chen mentioned,

[00:47:28] Speaker 00:
is this is a several year process where the parties are talking.

[00:47:32] Speaker 02:
So what is the difference here because you're saying they voluntarily, everybody was in the same room and everybody voluntarily agreed to this?

[00:47:38] Speaker 00:
Yes.

[00:47:39] Speaker 00:
Yes.

[00:47:42] Speaker 00:
Judge White was very clear.

[00:47:44] Speaker 00:
His charge to the parties was narrow this case into something that we can try.

[00:47:50] Speaker 00:
And you'll see statements from Nuance's own counsel who knows

[00:47:54] Speaker 00:
they're not taking eight patents to the jury, that they're going to try and maximize nuances, chances of success.

[00:48:00] Speaker 00:
And before there's any order, they've already indicated to the judge, we're really not going to go to trial on any more than three or four.

[00:48:06] Speaker 00:
And so when the parties are working together, and this is a voluntary process, Judge White didn't force anything at any time.

[00:48:13] Speaker 00:
Everything that was done here was done at nuances urging.

[00:48:17] Speaker 03:
And then nuance is telling us that they understood the practicalities

[00:48:24] Speaker 03:
presenting only a certain number of claims and patents to a jury.

[00:48:28] Speaker 03:
But that doesn't necessarily preclude them from also feeling like there will be a second trial, where we can still go forward with the other patents.

[00:48:38] Speaker 00:
And that's where the July 2010 case management hearing comes in, which makes it clear, yes, they understand they're going to have to narrow their claim.

[00:48:45] Speaker 00:
And they're doing this in full light of their demand that there only be a single trial here, and Judge White

[00:48:54] Speaker 00:
responding, yes, serial trials are a bad idea.

[00:48:58] Speaker 00:
So everybody understands there's only going to be one trial.

[00:49:00] Speaker 00:
And in that context, Nuance is making this four patent 15 claim proposal.

[00:49:05] Speaker 00:
There is no other way to interpret those events other than as Judge White interpreted those events.

[00:49:13] Speaker 00:
But even if there is a reasonable explanation otherwise that supports Nuance, in order to prevail on this, Nuance has to prove, has to convince you, that Judge White's interpretation

[00:49:24] Speaker 00:
as historical fact on what happened on this case is clearly erroneous.

[00:49:29] Speaker 00:
And they can't possibly show that on this record.

[00:49:32] Speaker 00:
You want to move forward about the claim construction issue?

[00:49:36] Speaker 00:
Yes.

[00:49:37] Speaker 00:
The history of the case is also very different from what Nuance argues on the claim construction.

[00:49:44] Speaker 00:
First, the district court didn't allow the parties to argue claim construction to the jury.

[00:49:49] Speaker 02:
nuance has not but let's go back to the argument about to make okay they say plain meaning but that somebody and recognizes that the heart of this dispute and it's going to determine likely infringement or non-infringement is going to be

[00:50:06] Speaker 02:
this nuance in identification as to whether it allows ambiguity or not.

[00:50:11] Speaker 02:
They think there's their position, their more refined position, supported by the spec.

[00:50:17] Speaker 02:
You probably disagree with that.

[00:50:19] Speaker 02:
Why, when they call that to the attention of the district court judge, shouldn't he say, yeah, I better clean this up and do a markment?

[00:50:26] Speaker 02:
Because this case is going down on this claim construction point.

[00:50:30] Speaker 00:
Well, he's not going to reopen Markman at this point.

[00:50:35] Speaker 00:
What he tells Nuance is, you told me plain and ordinary meaning, and we are going to trial on the plain and ordinary meaning.

[00:50:42] Speaker 00:
Now, if there's a dispute over plain and ordinary meaning, please, parties, come to me and help me craft a jury instruction so that I can help the jury understand, give them more guidance on what the plain and ordinary meaning is.

[00:50:55] Speaker 00:
And what he rejects is Nuance's attempt to put a gloss

[00:50:59] Speaker 00:
on the ordinary meaning of identify based on alleged inconsistencies in the specification.

[00:51:06] Speaker 02:
But he didn't reject that.

[00:51:07] Speaker 02:
I mean, really?

[00:51:08] Speaker 02:
I mean, so in effect, what you're saying is he had another markman.

[00:51:13] Speaker 02:
And he considered the much more refined, detailed definition.

[00:51:18] Speaker 02:
And he rejected it.

[00:51:20] Speaker 02:
So aren't we supposed to review that?

[00:51:23] Speaker 02:
And shouldn't he?

[00:51:24] Speaker 02:
I mean.

[00:51:25] Speaker 00:
No.

[00:51:25] Speaker 00:
Well, so he didn't.

[00:51:28] Speaker 00:
He told Nuance it's too late to do another Markman.

[00:51:30] Speaker 02:
And so he- Yeah, but that's what I'm asking you about O2 micro.

[00:51:34] Speaker 02:
Right.

[00:51:34] Speaker 02:
I mean, is that enough?

[00:51:35] Speaker 02:
I mean, if there's a claim construction dispute, and if, at least when we're looking at it later on in the day, we conclude that that was dispositive of infringement, and therefore the district court was compelled to give us more than ordinary meaning because it's a claim construction and not an infringement issue,

[00:51:52] Speaker 02:
Too bad.

[00:51:53] Speaker 02:
I mean, isn't the answer so what if he already construed it as a micro?

[00:51:57] Speaker 00:
Well, and that's true.

[00:51:59] Speaker 00:
I think Nuance did suggest that he just tell the jury, give it its ordinary meaning.

[00:52:06] Speaker 00:
I don't think that would have been enough under 02 micro.

[00:52:09] Speaker 00:
But what he did was enough under 02 micro because he provided a definition.

[00:52:13] Speaker 00:
Establish the identity of.

[00:52:14] Speaker 00:
That's the ordinary meaning of identify.

[00:52:17] Speaker 00:
Now, Nuance says that that's inconsistent

[00:52:20] Speaker 00:
with how the term is used in the specification, but it's not.

[00:52:24] Speaker 00:
And nuance, in order to make its point that it means something different, is they keep using identify in different phrases.

[00:52:30] Speaker 00:
But the word identify in all of those phrases means exactly the same thing.

[00:52:34] Speaker 00:
The only reason those phrases.

[00:52:35] Speaker 02:
So this is a claim construction dispute that we're supposed to review de novo here.

[00:52:39] Speaker 00:
There are two aspects to it.

[00:52:42] Speaker 00:
There is the first question, which is, was Judge White correct in keeping, was he

[00:52:49] Speaker 00:
Did he abuse his discretion in keeping nuance to its ordinary meaning position?

[00:52:56] Speaker 00:
And then the second question is, if he was supposed to reopen claim consent, because this goes back to what Judge Chen, the way we interpret it was the same way you did, which was, look, they didn't just say plain meaning like Philip says plain meaning.

[00:53:12] Speaker 00:
Identifying is a simple word that is used every day.

[00:53:15] Speaker 00:
So it wasn't just ordinary meaning as it's used in the art of OCR technology.

[00:53:19] Speaker 00:
It's ordinary meaning to a lay person.

[00:53:21] Speaker 00:
So Judge White said, you cannot go off of that.

[00:53:25] Speaker 00:
But then if you say, well, under O2 micro, he did abuse his discretion, so we're going to say he should have reopened Markman.

[00:53:32] Speaker 00:
So now we're going to look at that's an error.

[00:53:34] Speaker 00:
Then you look at that part of it de novo.

[00:53:37] Speaker 00:
But there is nothing in the specification inconsistent.

[00:53:39] Speaker 00:
Like I said, the word identify means exactly as Judge White construed it.

[00:53:44] Speaker 00:
The only reason it means something different in these phrases is nuance puts an adjective in front of identifying, or it asks about identifying something different.

[00:53:54] Speaker 00:
And I think that's what you have to keep in mind when you hear these constant discussions about ambiguous identification, because that phrase appears nowhere in the patent.

[00:54:04] Speaker 03:
But what about Ms.

[00:54:05] Speaker 03:
Maynard's argument that what happened here was a change in the playing field by Abby when, according to Ms.

[00:54:14] Speaker 03:
Maynard, everybody understood at a certain point at the markman stage that identify would encompass ambiguous identification.

[00:54:25] Speaker 03:
And then, much later in time, on the eve of trial, for the first time, nuances hearing from Abby that

[00:54:32] Speaker 03:
the ordinary meaning of identify does not include ambiguous identifications.

[00:54:36] Speaker 03:
And now it realizes in a way that it relied on an understanding that Abby had about identify at the Markman level that Abby was now taking away.

[00:54:47] Speaker 03:
And that's why we now have an O2 micro problem that needs to be resolved.

[00:54:52] Speaker 00:
So first, let me try and take the term ambiguous identification completely out of this case.

[00:55:00] Speaker 00:
What she's doing is she's taking an adjective ambiguous and removing it from character, which is where it is in our statement, where sometimes an identified character can be ambiguous.

[00:55:11] Speaker 00:
And the patent talks about ambiguous and unambiguous characters.

[00:55:15] Speaker 00:
The patent never talks about ambiguous identification in the sense that they mean it.

[00:55:20] Speaker 00:
She needs to move the adjective from character, where it is in the patent, to identification.

[00:55:24] Speaker 00:
And the reason she has to do that

[00:55:26] Speaker 00:
is because character is defined very precisely at A8, and they can't appeal that because they proposed that construction.

[00:55:33] Speaker 00:
So they're very cleverly moving it.

[00:55:34] Speaker 03:
What was the thing you said at the marketing?

[00:55:36] Speaker 00:
We said sometimes an identified character can be ambiguous.

[00:55:39] Speaker 00:
And we've never backed away from that in our summary judgment at trial.

[00:55:44] Speaker 00:
Sometimes a character can be ambiguous in the sense that it shares the same shape.

[00:55:50] Speaker 03:
That sounds really close to ambiguous identification.

[00:55:53] Speaker 00:
No, and let me explain why it's not.

[00:55:54] Speaker 00:
Because when they take ambiguous from character and move it into identification, all of a sudden they open up this possibility that identifying a character is really just identifying a class to which the character might belong.

[00:56:08] Speaker 00:
And that's inconsistent both with the ordinary meaning of identify, it's inconsistent with the

[00:56:14] Speaker 00:
the construction of character that they convinced the district court to adopt.

[00:56:18] Speaker 00:
And it's inconsistent with the specification of the patent, which says that when you've identified the class to which the character belongs, you need to keep doing feature recognition until you reach the end of the process.

[00:56:31] Speaker 03:
Right, but can you translate what your statement was in the Markman to explain to me why that's different?

[00:56:37] Speaker 00:
Sometimes an identified character can be ambiguous, meaning sometimes you will identify an S

[00:56:45] Speaker 00:
And it's ambiguous in the sense that you don't know whether it's a capital S or a lowercase s. And that's what an ambiguous character is.

[00:56:52] Speaker 00:
And you can find the discussions of what an ambiguous character is.

[00:56:56] Speaker 03:
That's not the same thing as ambiguous identification in the sense that now we're not sure.

[00:57:00] Speaker 03:
Maybe it's a probability.

[00:57:02] Speaker 03:
It could be a capital S or a probability it's a lowercase s. It is an s. It's that shape.

[00:57:07] Speaker 00:
There is a single shape code that's output at that point, which is

[00:57:14] Speaker 00:
it's an S, now we need to do some further processing, whether it's capital S or lowercase s. They're talking about something different.

[00:57:20] Speaker 00:
What they're trying to do is ambiguous identification all of a sudden becomes what Abby does, which is the feature, the thing they accused of feature recognition outputs eight guesses along with probabilities of the correctness of each guess.

[00:57:37] Speaker 00:
And so that's

[00:57:40] Speaker 00:
When they say ambiguous identification, that's what they're trying to cover.

[00:57:44] Speaker 00:
Because there's no analog in our system of it's an S, and then we go back and see how tall it is compared to the other letters.

[00:57:51] Speaker 00:
So that's why it's so important for them to shift the adjective.

[00:57:55] Speaker 04:
What strikes me that the real issue here is what do we do with O2 micro when there's an agreement by the parties at the initial claim construction that something has a particular meaning?

[00:58:08] Speaker 04:
And then later on, the parties say, well, we understood different things by playing an ordinary meeting.

[00:58:20] Speaker 04:
Does that mean that the district court under 02 Micro has to come back and resolve that dispute instead of saying, as the court did here, well, you agreed to this, and you're stuck with it, and I'm not going to revisit it?

[00:58:33] Speaker 04:
Isn't that basically what we're dealing with here?

[00:58:37] Speaker 04:
it like that but like i said if he if he refused to do anything else and just say i'm just going to tell the jury or not i don't think you're addressing isn't that isn't the question whether when there's an agreed claim construction it turns out it's a difference between the parties as to what that means whether the district court has to revisit it or whether you can just say well too bad you agreed to that and i'm going to give the instruction to the jury even

[00:59:05] Speaker 04:
with the ambiguity that may exist in it, and you're both stuck with it.

[00:59:10] Speaker 00:
So he did further construe... Well, no, no, but help me.

[00:59:16] Speaker 00:
Yeah, no, he does have to.

[00:59:17] Speaker 04:
If the parties come to him with a dispute... Let's assume here that the parties that read the ordinary meaning and the judge that simply said in the jury instructions, this has plain and ordinary meaning.

[00:59:29] Speaker 04:
Does O2 micro under those circumstances, and there's a dispute about the parties on each side,

[00:59:35] Speaker 04:
says, well, we made a mistake.

[00:59:38] Speaker 04:
We need a greater definition.

[00:59:41] Speaker 04:
Does O2 Micro compel him to revisit the claim construction that the parties agreed to at the original mark?

[00:59:47] Speaker 04:
That, it seems to me, is the heart of the question.

[00:59:50] Speaker 00:
Yeah, it requires him to resolve the dispute that's in front of him right then.

[00:59:54] Speaker 00:
And what the dispute that was in front of him right then is what exactly is the ordinary meaning of it.

[00:59:59] Speaker 00:
It seems to me you're giving up your case.

[01:00:01] Speaker 03:
Yeah, I think your answer is no.

[01:00:03] Speaker 00:
But he says, ordinary meeting.

[01:00:06] Speaker 00:
You convinced me that this term should be given the ordinary meeting.

[01:00:12] Speaker 00:
And so they get to trial, and they say, well, obviously we've got a disagreement on what the ordinary meeting is.

[01:00:17] Speaker 00:
So he says, OK, help me resolve that.

[01:00:19] Speaker 00:
That's what he's now satisfied with.

[01:00:21] Speaker 04:
The question is, does he have to resolve that when the parties said, we go with ordinary meeting?

[01:00:26] Speaker 04:
Can he say, too bad.

[01:00:28] Speaker 04:
You agreed to that.

[01:00:29] Speaker 04:
And you're stuck with it.

[01:00:30] Speaker 04:
And that's what I'm going to instruct you.

[01:00:31] Speaker 00:
Oh, I'm sorry.

[01:00:33] Speaker 00:
No, that's right.

[01:00:34] Speaker 00:
That's this court's deference to district courts enforcing the local rules, which is we have a schedule for these things to take place.

[01:00:43] Speaker 00:
And you can't come to me two weeks before trial and all of a sudden ask me to reopen this whole mess that we should have taken care of before there were expert reports, before there

[01:00:56] Speaker 00:
Before a waiver, waiver trumps O2 micro is basically the idea.

[01:00:59] Speaker 00:
Oh, yes.

[01:01:00] Speaker 00:
Oh, yes.

[01:01:00] Speaker 00:
Yes, it does.

[01:01:01] Speaker 00:
I mean, a party, yeah, waiver can trump O2 micro.

[01:01:05] Speaker 02:
Really?

[01:01:07] Speaker 02:
If you take O2 Micro and you insert the fact that let's assume the parties, which often happens.

[01:01:13] Speaker 02:
Obviously, they didn't recognize until later on.

[01:01:16] Speaker 02:
I think that's what may have happened in O2 Micro too.

[01:01:19] Speaker 02:
So if the parties come back and try to get it revisited, as Judge Dyke referred, it's a waiver.

[01:01:24] Speaker 02:
So waiver trumps.

[01:01:26] Speaker 02:
Two weeks ago, you agreed it was plain and ordinary.

[01:01:31] Speaker 02:
You can't get any refinement to this juncture.

[01:01:33] Speaker 02:
Even if you are correct, hypothetically, that this refinement that you're disputing now is outcome determinative in terms of a claim construction that will affect infringement?

[01:01:46] Speaker 00:
I'm not sure I understand.

[01:01:47] Speaker 02:
I mean, if it's a really critical distinction.

[01:01:50] Speaker 02:
I mean, plain and ordinary mean is nothing.

[01:01:51] Speaker 02:
And it turns out, as the parties get into the case, they realize, well, plain and ordinary mean doesn't get it, because a refinement is necessary, because that refinement to plain and ordinary meaning is going to be what determines infringement or non-infringement.

[01:02:06] Speaker 00:
If the party that said ordinary meaning originally departs from the plain and ordinary meaning or tries to put some kind of gloss on it, then yes, the district court can reject that argument, because that party

[01:02:17] Speaker 00:
cannot push a claim construction.

[01:02:19] Speaker 00:
It can't change its claim construction in the middle of the case.

[01:02:21] Speaker 00:
It's basically the gist.

[01:02:23] Speaker 03:
Maybe another way of looking at it is somebody can change their claim construction position later on after a markman if they had good reason to learn about something after the markman that they couldn't have known of before.

[01:02:37] Speaker 03:
And then once they realize it,

[01:02:39] Speaker 03:
they timely and diligently take it to the district court.

[01:02:42] Speaker 03:
But under that situation, if the district court said no, maybe that's an abuse of discretion.

[01:02:47] Speaker 03:
But if there's a situation where the party was not timely or was unreasonable in discovering a problem late in the game,

[01:02:56] Speaker 03:
either or both those situations together then the district court's well within its discretion to say no we're not going to be doing this all over again.

[01:03:04] Speaker 00:
In the situation you're talking about the local rules of the Northern District do have an avenue for a party to say we've learned new information and we'd like to do this.

[01:03:12] Speaker 00:
That wasn't done here.

[01:03:13] Speaker 00:
We have a case about that.

[01:03:14] Speaker 04:
It doesn't relate to claim construction but to discovery.

[01:03:18] Speaker 04:
Pardon me?

[01:03:18] Speaker 04:
We have a case about that.

[01:03:20] Speaker 04:
We construed the rules of the Northern District of California and we talked about this.

[01:03:26] Speaker 04:
something that there has to be a room in the process for later knowledge to reopen.

[01:03:33] Speaker 00:
Oh, correct.

[01:03:33] Speaker 00:
Right.

[01:03:33] Speaker 00:
I mean, these rules can't just be, you know, that's a rule and we're done.

[01:03:36] Speaker 00:
There is a good cause exception to how the rules go forward.

[01:03:43] Speaker 00:
There's nothing else.

[01:03:44] Speaker 03:
Establish an identity of versus identifying.

[01:03:49] Speaker 03:
Are those so similar that

[01:03:53] Speaker 03:
Maybe even if the district court shouldn't have done that last minute lurch to a dictionary, it doesn't make a difference because everybody was able to make the arguments that they needed to make in terms of their relative conception of identifying or establishing identity such that the jury was within its reason to come to this conclusion.

[01:04:20] Speaker 00:
Yeah.

[01:04:21] Speaker 00:
The identity of identify in the patent all means the same thing.

[01:04:25] Speaker 00:
I'm glad you asked me that question, because nuances counsel keep saying that we said an identification needed to be final.

[01:04:34] Speaker 00:
It needed to be unequivocal.

[01:04:36] Speaker 00:
And they accused us of arguing to the jury.

[01:04:38] Speaker 00:
We never argued to the jury that that claim term meant anything other than as the court construed it.

[01:04:44] Speaker 00:
And they provide some citations to the trial record.

[01:04:48] Speaker 00:
You'll see if you go to those pages,

[01:04:50] Speaker 00:
The expert is talking about the definition of character.

[01:04:53] Speaker 00:
And he does talk in one section about the specifications disclosure of an embodiment when there's unequivocal identification.

[01:05:01] Speaker 00:
But he never suggests to the jury, never argues to the jury, that that embodiment is required by the claims.

[01:05:07] Speaker 00:
It's just a discussion of the background of the specification, that they twist into some kind of argument that we kept pushing for finality

[01:05:16] Speaker 00:
as the end-all and be-all of identification.

[01:05:19] Speaker 00:
And there's just no support for that.

[01:05:20] Speaker 00:
We only use the district court's definition of identify when we were making our non-infringement defenses.

[01:05:26] Speaker 03:
There's a matter of practice when district courts say that for all of these terms, you should just use the ordinary meaning.

[01:05:37] Speaker 03:
Does that mean that juries just go in like a black box and do the best they can with those non-construed terms?

[01:05:44] Speaker 03:
Are there ever instances where juries say, help, I need a dictionary or something?

[01:05:53] Speaker 03:
Or is everybody just say, ordinary meaning, like it's a grenade and run out of the room?

[01:06:00] Speaker 00:
I think, in fairness, a lot of plaintiffs do that.

[01:06:04] Speaker 00:
But in my experience, most district courts, when there's a dispute, they do their best to try and give the jury more guidance on what the ordinary meaning is.

[01:06:14] Speaker 00:
like Judge White did here.

[01:06:18] Speaker 04:
You're getting yourself into trouble.

[01:06:21] Speaker 04:
Because what you're suggesting is that despite the agreement at the initial markment as to the meaning of the term, that he had an obligation to reconstrue it later on.

[01:06:34] Speaker 00:
I'm not saying he had an obligation to reconstrue it.

[01:06:37] Speaker 00:
I'm saying that

[01:06:40] Speaker 00:
he provided the jury more guidance on what the ordinary meaning of identifying is.

[01:06:46] Speaker 00:
And what he wouldn't allow to happen is nuance.

[01:06:49] Speaker 04:
But suppose he's given the jury a definition saying identification means finally identifying.

[01:06:55] Speaker 04:
That's the ordinary meaning, and that's what I think.

[01:06:58] Speaker 00:
If he had said that?

[01:06:59] Speaker 04:
Yeah.

[01:07:00] Speaker 00:
I don't think he wouldn't have been able to support that with any kind of, I mean, he just can't come out of his mind.

[01:07:09] Speaker 00:
It can't just come out of his mind.

[01:07:10] Speaker 00:
That would be reversible error, right?

[01:07:12] Speaker 00:
It would, because there'd be no support that that's the ordinary meaning of identify.

[01:07:15] Speaker 04:
No.

[01:07:16] Speaker 04:
That's because he changed.

[01:07:18] Speaker 04:
He didn't just give them the ordinary meaning.

[01:07:20] Speaker 04:
He changed it.

[01:07:24] Speaker 00:
In that situation, he would have added an adjective that appears nowhere in the claim.

[01:07:28] Speaker 00:
I agree that that would have changed the meaning of the claim.

[01:07:32] Speaker 00:
And it certainly wouldn't have been the ordinary meaning of the term.

[01:07:35] Speaker 00:
But here, establish the identity of.

[01:07:37] Speaker 00:
That's the way lay people use it.

[01:07:43] Speaker 00:
Thank you.

[01:07:51] Speaker 01:
This is a rare situation where the parties agreed at claim construction.

[01:07:56] Speaker 04:
I'm not sure it's a rare situation.

[01:07:58] Speaker 04:
I think this is a pretty common situation that parties

[01:08:01] Speaker 04:
agreed to ordinary meaning and then have fires remorse later on.

[01:08:07] Speaker 04:
And the question is, how do we deal with that?

[01:08:10] Speaker 04:
I mean, can the district courts stick them with the agreed claim construction to ordinary meaning when a later dispute erupts?

[01:08:21] Speaker 01:
This is a variant of that, Judge Dyke.

[01:08:23] Speaker 01:
It's not that situation.

[01:08:25] Speaker 01:
This is a situation where the parties agreed that the ordinary meaning included ambiguous identifications.

[01:08:31] Speaker 01:
And when Abby changed its position on that in the summary judgment papers, arguing a different claim construction than that, and then we disputed it, then we... He didn't get that instruction.

[01:08:42] Speaker 04:
That's not what the district court instructed the jury.

[01:08:45] Speaker 04:
It's difficult for me to see that he gave an instruction which was inconsistent with ordinary meaning.

[01:08:52] Speaker 04:
If he adopted their view that it had to be a final identification, you'd be right.

[01:08:57] Speaker 04:
But it doesn't seem to me that he really departed from the ordinary meaning.

[01:09:01] Speaker 04:
And the basic question is, are we going to say that O2 micro comes into play even if the parties have agreed to the claim construction earlier and there's been no additional evidence or circumstance which suggests that there's something new?

[01:09:16] Speaker 01:
That's precisely what O2 micro holds, Your Honor.

[01:09:18] Speaker 01:
O2 micro holds that when a claim construction dispute is presented to the judge in time... But it doesn't... It didn't involve a waiver situation.

[01:09:26] Speaker 01:
It involved... This doesn't either, Judge Dyke.

[01:09:29] Speaker 01:
This is one of the... This is... This is... Assume for me that it does.

[01:09:32] Speaker 04:
That the parties are stipulated.

[01:09:36] Speaker 04:
This term should be given to the ordinary meeting.

[01:09:40] Speaker 04:
The district court instructs the jury, give it the ordinary meeting, and refuses to resolve a later arising claim construction dispute

[01:09:48] Speaker 04:
on the ground that there was a waiver by the agreed claim construction of the Martin here.

[01:09:53] Speaker 04:
Are we supposed to apply 02 micro in those circumstances and say, well, despite the earlier agreement, the judge was obligated to construe the term later on and instruct the jury as to the specific meaning?

[01:10:05] Speaker 01:
Yes.

[01:10:06] Speaker 01:
Markman says, the scope of the claims is a question for the court, not the jury.

[01:10:12] Speaker 01:
O2 Micro says, if that's brought to the attention of the trial court as a claim construction dispute in time to resolve it, he needs to resolve it.

[01:10:19] Speaker 01:
And this was raised in plenty of times, more than five weeks before its trial.

[01:10:23] Speaker 01:
It's basically a jury instruction question, and it was

[01:10:26] Speaker 01:
We raised it again.

[01:10:27] Speaker 01:
We objected at the jury's conference about it.

[01:10:29] Speaker 01:
This is a question of how you tell the jury what the scope and bounds of the claim mean.

[01:10:33] Speaker 03:
And Martin said- But what if there's a situation where one of the parties is unreasonable in coming at a very late date to the district court saying that it now wants a construction on something it didn't want a construction on?

[01:10:45] Speaker 03:
I think that would be a situation where there would be a waiver, right?

[01:10:48] Speaker 03:
Even if there's a genuine dispute about the meaning of a claim term, or as to what the

[01:10:55] Speaker 03:
ordinary meaning is.

[01:10:56] Speaker 01:
This isn't that case, Judge Chen.

[01:10:59] Speaker 01:
I think that in that situation, the outer bounds would probably be Rule 51, the Federal Rules of Civil Procedure with Respected Jury Instructions, which allow you to bring up jury instruction issues well into the trial in most situations.

[01:11:11] Speaker 01:
This was five weeks before the trial.

[01:11:13] Speaker 04:
No, I don't think that's true.

[01:11:14] Speaker 04:
I think you've said that you can

[01:11:18] Speaker 04:
a claim construction thing and have a dispute about that and you don't have to raise it again at the time of the jury instruction.

[01:11:26] Speaker 04:
I mean, there's got to be some room for resolving these things at the markman so that things don't have to be raised later on.

[01:11:33] Speaker 04:
I mean, suppose there were

[01:11:36] Speaker 04:
Suppose at the Markman, the judge had adopted an agreement by the parties that identified means final identified.

[01:11:49] Speaker 04:
I mean, you certainly wouldn't be coming in here and contending that later on, the parties start disagreeing about that, that they can reopen the claim construction, right?

[01:12:00] Speaker 01:
If they disagreed about what finally identify meant?

[01:12:03] Speaker 01:
No, no.

[01:12:03] Speaker 04:
Yes.

[01:12:04] Speaker 04:
No.

[01:12:04] Speaker 04:
The patentee says, well, I made a mistake about finally identify.

[01:12:11] Speaker 04:
I don't think that was the right construction.

[01:12:13] Speaker 04:
I'm not going to ask you to change it.

[01:12:14] Speaker 04:
The district court wouldn't have to change it under those circumstances, right?

[01:12:18] Speaker 01:
That's not the case.

[01:12:20] Speaker 04:
No, I understand.

[01:12:21] Speaker 04:
But you have to answer hypotheticals.

[01:12:25] Speaker 01:
it would depend on the circumstances.

[01:12:27] Speaker 01:
Here, the other side changed their position about what identify means.

[01:12:30] Speaker 01:
And we raised it at the first possible opportunity.

[01:12:32] Speaker 04:
I would have thought that you would have agreed that if there was a specific construction and they wanted to change it, the judge could say waiver too late.

[01:12:40] Speaker 01:
It would depend on the reasons for raising it, I think, Judge Dyke.

[01:12:42] Speaker 01:
It would depend on the reasons for re-raising it.

[01:12:46] Speaker 01:
Here, and could I just, I know we're well over here.

[01:12:49] Speaker 01:
Yeah, well, we've got to, just one final thought.

[01:12:51] Speaker 00:
OK.

[01:12:52] Speaker 01:
So I would urge the court to,

[01:12:55] Speaker 01:
look at column 20 because in column 20 and again in column 25 the patent does use identify a character and it includes within identifying a character identifying the class to which it belongs.

[01:13:10] Speaker 02:
Thank you.