[00:00:00] Speaker 02:
for argument is 15-1-4-4-7 HBAC matchmaker media versus Google.

[00:00:47] Speaker 02:
Is it Mr. Letall?

[00:00:48] Speaker 02:
Liddell.

[00:00:49] Speaker 02:
Liddell.

[00:00:49] Speaker 01:
Thank you, Your Honor.

[00:00:51] Speaker 01:
Ready?

[00:00:52] Speaker 01:
Yes.

[00:00:53] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:56] Speaker 01:
Brian Liddell on behalf of the appellant HBAC Matchmaker Media.

[00:01:02] Speaker 01:
If I may, I'd like to reserve four minutes for rebuttal.

[00:01:06] Speaker 01:
I want to begin where I think this case sits, which is a single and, we submit, straightforward claim construction issue in which the district court

[00:01:18] Speaker 01:
improperly imported extraneous limitations based on particular embodiments within the patent specification to limit a claim term head-end system to a particular embodiment or class of embodiments and excluded other embodiments that the specification describes.

[00:01:35] Speaker 02:
You know, I understand the argument, and both of you seem to be on the same lane in terms of arguing this.

[00:01:40] Speaker 02:
It seems to me

[00:01:41] Speaker 02:
tentatively, very tentatively, that this is kind of a different case.

[00:01:46] Speaker 02:
It's not a claim versus spec case.

[00:01:48] Speaker 02:
It seems to me more this claim term that we're talking about appears nowhere in the specification, right?

[00:01:54] Speaker 01:
That's correct, Your Honor.

[00:01:56] Speaker 02:
And it seems to me what the district court was really doing was not playing with or defining what that claim term was.

[00:02:02] Speaker 02:
She was really narrowing the context in which that term was in play

[00:02:09] Speaker 02:
with regard to this patent.

[00:02:11] Speaker 02:
And that seems to me a little different.

[00:02:13] Speaker 02:
Do you have any reaction to that?

[00:02:15] Speaker 01:
I think that's a fair observation, Your Honor.

[00:02:19] Speaker 01:
From my perspective, I think part of where we perceive the district court going astray is approaching the claim construction exercise as essentially one in which it was to list those embodiments or things that might actually infringe the claim

[00:02:37] Speaker 01:
create a negative limitation as to those things that would not infringe the claim.

[00:02:40] Speaker 01:
We submit that that's not the proper exercise for claim construction, that not all constructions necessarily, especially the single term, define fully the scope of infringement or non-infringement in a way that sets out these embodiments or these instrumentalities infringe and these don't.

[00:02:58] Speaker 01:
that rather the construction exercise is one of determining the meaning of the term under the various procedures that the court set forth in the Phillips decision.

[00:03:08] Speaker 01:
And here we think that this is a term that was, as your honor referred to, it was added to the claims.

[00:03:13] Speaker 01:
But it was added to clarify and explain a distinction between whether certain decision making took place sort of at the distribution point or at what the patent refers to as the display site.

[00:03:26] Speaker 01:
So as I'm sure the court noted,

[00:03:28] Speaker 01:
During prosecution, the examiner raised a particular prior art reference.

[00:03:32] Speaker 01:
And the applicants pointed out that in that prior art reference, the decision making, because this is all about how to decide what advertisements to show and targeting particular advertisements to particular consumers.

[00:03:46] Speaker 01:
And the applicants pointed out that in that prior art reference, the decision making was happening at the display site.

[00:03:52] Speaker 03:
But the context of the Wacob reference is conventional television.

[00:03:58] Speaker 03:
So the suggestion is that it's appropriate to adopt the meaning that was given to the term hidden system in that prior art reference because that was the assumption that was being made when this term was plucked out and added to the patent to distinguish that prior art.

[00:04:21] Speaker 01:
Well, I would disagree with the factual premise of your question.

[00:04:25] Speaker 01:
First, I don't think that the walk-up reference was strictly limited to cable TV systems.

[00:04:30] Speaker 01:
That was a preferred embodiment, and it was described.

[00:04:34] Speaker 01:
The applicant in describing the walk-up reference even referenced the head-end system of walk-up, for example, in cable television systems.

[00:04:42] Speaker 03:
Well, it may not be limited to cable television, but it's limited to conventional television, which would include cable.

[00:04:48] Speaker 01:
But the point that the applicant made very clearly in the distinction was not that

[00:04:56] Speaker 01:
We want this to suddenly be an invention only about cable or about conventional television.

[00:05:01] Speaker 03:
You're absolutely right.

[00:05:02] Speaker 03:
They weren't focusing on that aspect of WACOP.

[00:05:05] Speaker 03:
But what they were doing is taking a term which was used in WACOP and adding it to the claims here.

[00:05:13] Speaker 03:
And the question is, what meaning and what understanding should we give to that claim?

[00:05:18] Speaker 03:
I mean, if WACOP, for example, had said head-end system means a system for conventional television,

[00:05:25] Speaker 03:
you wouldn't dispute, would you, that we'd have to give it that meaning, that that would be the appropriate way to approach it?

[00:05:33] Speaker 01:
I think, if I may, I think what you're asking is, was this a term of honor?

[00:05:38] Speaker 03:
What's the answer to my question?

[00:05:40] Speaker 03:
If Wacom had said, head-end system means a system relating to conventional television,

[00:05:47] Speaker 01:
I think if Wacob had provided an express definition of that type, and particularly if this was not a term that was widely used, then that might be the case.

[00:05:56] Speaker 01:
That's not the case here.

[00:05:58] Speaker 01:
Wacob doesn't say that, and the applicants didn't say that.

[00:06:01] Speaker 01:
And indeed, the evidence in the record is that this was a widely used term with not a specific context of cable television or conventional television, but rather distribution systems much more generally.

[00:06:14] Speaker 01:
that this is a term that refers not to what kind of system it's in, but the organization of any kind of system or communications and telecommunications systems more generally.

[00:06:25] Speaker 01:
That you have essentially a central distribution hub and multiple receiving points.

[00:06:30] Speaker 01:
And that's the topology as contrasted with, for example, a peer-to-peer distribution system, where you have multiple distribution points and multiple recipients and direct communication between them.

[00:06:43] Speaker 01:
The patent is indeed talking about a topology for communications in which you have central distribution with distributed recipients.

[00:06:52] Speaker 01:
The central distribution is at the head end.

[00:06:54] Speaker 01:
The recipients, the patent refers to as the display sites or the consumer display sites.

[00:06:59] Speaker 03:
Can I ask you about the specification?

[00:07:01] Speaker 03:
Because one of your major points is that video on demand systems wouldn't be, as I understand it, within the court's plain construction.

[00:07:10] Speaker 03:
referred to as the third preferred embodiment in the specification.

[00:07:15] Speaker 03:
That's correct, Your Honor.

[00:07:16] Speaker 03:
And yet, when one looks at Figure 7, which is described as a block diagram of a video-on-demand system, it seems to include a conventional television set in the figure as part of the display site.

[00:07:33] Speaker 01:
That is your correct, Your Honor.

[00:07:35] Speaker 01:
That is used as an example of a display device in Figure 7.

[00:07:40] Speaker 01:
I would refer the court to, in the specification, the discussion of this embodiment.

[00:07:47] Speaker 01:
And I think some of this is not necessarily specific only to this embodiment.

[00:07:52] Speaker 01:
But the discussion of figure seven begins in column 12.

[00:07:55] Speaker 01:
This is page 896 of the record, around line 37.

[00:07:59] Speaker 01:
And it talks about the video on demand system.

[00:08:03] Speaker 01:
It makes clear that it's used in cable and other broadband video systems, not just cable.

[00:08:08] Speaker 03:
Yeah, but figure seven shows what looks like conventional television set.

[00:08:13] Speaker 01:
That's right, Your Honor.

[00:08:14] Speaker 03:
That's referred to in the spec as a television receiver.

[00:08:17] Speaker 01:
And when we continue the discussion in the specification in column 13 on the following page, and when we get to about line 13 or 14 here, it states that the preferred embodiment of the invention involves supplementary electronics built into set-top boxes, consumer electronics products, personal computers,

[00:08:38] Speaker 01:
plug-in modules for the decoder interface of cable ready products and other display devices.

[00:08:44] Speaker 01:
I think this is very clear disclosure that the TV set is merely an example, not an exclusive or limiting disclosure.

[00:08:52] Speaker 01:
It's not, I think, this kind of language.

[00:08:55] Speaker 03:
It shows that a conventional TV is not inconsistent with video on demand, which is what you seem to have been arguing.

[00:09:02] Speaker 01:
Well, I think that, Your Honor, what I'm suggesting is that the construction is

[00:09:09] Speaker 03:
In describing.

[00:09:10] Speaker 03:
Now, but what's the answer to my question?

[00:09:12] Speaker 03:
Isn't it, aren't you conceding that video on demand is not inconsistent with requiring a conventional television set?

[00:09:20] Speaker 01:
No.

[00:09:21] Speaker 01:
Well, conventional television set by itself is not inconsistent with video on demand.

[00:09:26] Speaker 01:
But that was not the extent and total of the court's limits.

[00:09:29] Speaker 01:
The court also referred, for example, to multi-channel distribution.

[00:09:33] Speaker 01:
That, we submit, is distinct from what the patent describes about video on demand systems.

[00:09:39] Speaker 01:
At the bottom of column 12, starting at line 65, in discussing this video on demand embodiment, the specification states, in this embodiment, the optional video and audio storage device 551 is not required, nor are a multitude of additional channels for the transport of alternative commercials.

[00:10:00] Speaker 01:
So the district court didn't stop just with a conventional television set.

[00:10:05] Speaker 01:
We submit that limiting the claims to a conventional television set is inconsistent with the disclosure.

[00:10:10] Speaker 01:
But the district court also described conventional television systems as involving multiple channels of distribution.

[00:10:17] Speaker 01:
The patent says that's not what a video on demand system has to be.

[00:10:21] Speaker 01:
You could, in theory, have multiple channels in a video on demand system, but you don't need them.

[00:10:25] Speaker 01:
And that's not what the patent is really talking about.

[00:10:28] Speaker 01:
And I think there is where we get to the point of,

[00:10:31] Speaker 01:
adding these limitations that don't match up with the scope of the disclosure and the way that the applicants were describing their system as delivery system agnostic.

[00:10:41] Speaker 01:
They talked about a structure, but they didn't say it had to be cable, or it had to be broadcast, or it had to be satellite.

[00:10:47] Speaker 01:
They referenced each of those things, to be sure, but they weren't limiting references.

[00:10:53] Speaker 00:
At the Blueberry for pages 17 through 18,

[00:10:56] Speaker 00:
You make much of the fact that Judge Robinson's construction excluded the embodiment of radio.

[00:11:03] Speaker 00:
But the claims talk about a display device, and a radio isn't a display device.

[00:11:07] Speaker 00:
That's not a very compelling argument.

[00:11:09] Speaker 01:
But the discussion of saying that the term head-end system by itself excludes radio, you're right.

[00:11:16] Speaker 01:
Other language in certain claims might exclude radio.

[00:11:19] Speaker 01:
But saying the term head-end system by itself excludes radio embodiments

[00:11:24] Speaker 01:
is inconsistent with the way that a patent is written.

[00:11:27] Speaker 01:
So you could imagine another claim that might be written to a radio embodiment that used the term head-end system.

[00:11:34] Speaker 01:
We submit that that would still be something that the patent was discussing.

[00:11:38] Speaker 02:
And I don't think that radio can- If I could interrupt for a moment, in fairness to the district court judge, she dropped a footnote in her markman, which says, while the patent also describes radio commercials, neither party seeks to include radio applications in the construction.

[00:11:54] Speaker 02:
So the parties put her in a position of saying, yeah, otherwise I put in radio.

[00:11:59] Speaker 02:
But you're not talking about it.

[00:12:01] Speaker 02:
I'm leaving on an aside.

[00:12:02] Speaker 02:
And now you use that kind of against her?

[00:12:04] Speaker 01:
Well, to be fair, Your Honor, I think that the district court radio was discussed in passing by one counsel during the argument.

[00:12:14] Speaker 01:
But the construction put forward by appellant

[00:12:19] Speaker 01:
would have included radio in the construction of the term head end system.

[00:12:23] Speaker 01:
We're not purporting to talk about the exact scope of every element of the claim, but head end system by itself did not exclude radio

[00:12:30] Speaker 01:
And our construction spoke about network communications and would indeed have included radio as one of the kinds of communications.

[00:12:37] Speaker 01:
We didn't purport to offer a construction that listed these embodiments in fringe and these domes.

[00:12:42] Speaker 03:
So what it seems to me that you're saying in response to Judge Stahl's question and to Judge Frost's question is that perhaps what the district court did here was to construe the wrong term.

[00:12:54] Speaker 03:
And that perhaps the term, the relevant term here, is display site.

[00:13:00] Speaker 03:
and that that term requires a conventional television set because a display site is always referred to as having a television receiver.

[00:13:09] Speaker 01:
Well, I disagree with the further point you made about the display site always being referred to as having a conventional television receiver.

[00:13:17] Speaker 01:
For example, as I mentioned, the specification refers to personal computers as one possible item in that context.

[00:13:24] Speaker 03:
Are you contending that the claims cover watching a video on a computer?

[00:13:29] Speaker 03:
Yes.

[00:13:30] Speaker 03:
Because how?

[00:13:32] Speaker 01:
Because the claims use the term display site to refer to the location where you're viewing.

[00:13:37] Speaker 01:
And the specification makes clear that that can include lots of different kinds of devices.

[00:13:42] Speaker 01:
And the television set is an example in the specification.

[00:13:46] Speaker 01:
But television is unquestionably something that people watch on lots of devices.

[00:13:50] Speaker 01:
What does it say that the display site can include something other than television?

[00:13:54] Speaker 01:
Well, I mentioned, for example, at column 13, where the patent describes

[00:14:00] Speaker 01:
the various equipment that can be involved and specifically refers to personal computers as one thing.

[00:14:07] Speaker 01:
This is, again, page 890.

[00:14:09] Speaker 03:
Yeah, but it doesn't refer to personal computers as being the display site, does it?

[00:14:14] Speaker 01:
Actually, I disagree, Your Honor.

[00:14:16] Speaker 01:
Where does it say that?

[00:14:17] Speaker 01:
So in column 13, personal computers is listed about line 14 in a series of items

[00:14:25] Speaker 01:
And it goes on to refer to and other display devices at the end of that sequence.

[00:14:29] Speaker 01:
So I think it is unquestionably referring to personal computers as display devices in that list.

[00:14:41] Speaker 03:
That wouldn't be consistent with the last antecedent rule.

[00:14:45] Speaker 01:
Well, I think now we're into a debate between some members of the court

[00:14:53] Speaker 01:
Justice Kagan, and perhaps formerly Justice Scalia.

[00:14:55] Speaker 01:
But I appreciate your point.

[00:14:58] Speaker 01:
I think that it does list, in our view, personal computers as a display device in that context.

[00:15:04] Speaker 02:
You're into your rebuttal time.

[00:15:06] Speaker 02:
Have a seat.

[00:15:07] Speaker 02:
We'll restore four minutes.

[00:15:08] Speaker 02:
And let's hear from Mr. Pinkus.

[00:15:15] Speaker 04:
Thank you, Your Honor.

[00:15:16] Speaker 04:
And may it please the Court, just to follow up on my colleague's last

[00:15:20] Speaker 03:
I think Judge Dyke's question was about radio, not about personal computers, and the citation, the language... My question was directed to the question of whether the display site here, which seems throughout the patent to be referring to a television set and to exclude radio, but put aside radio, could include watching the video on a computer as opposed to a television set.

[00:15:51] Speaker 03:
occurs on computers and not on television sets.

[00:15:57] Speaker 04:
I think, Your Honor, that language that was just discussed talks about the various devices on which the technology for managing the ads might be placed.

[00:16:10] Speaker 04:
If the court turns to the prior page in column 12, the language in 59 to 63

[00:16:22] Speaker 04:
This whole section is a description of figure seven, the video on demand figure, which, as Your Honor noted, includes only a set-top box and a television.

[00:16:32] Speaker 04:
And this language explains that the set-top box is the way the signal is processed.

[00:16:38] Speaker 04:
And so that language doesn't include computer.

[00:16:41] Speaker 04:
It only talks about set-top box.

[00:16:42] Speaker 04:
It's consistent with the figure, which only has a set-top box.

[00:16:46] Speaker 04:
The language later in that description

[00:16:50] Speaker 04:
talks about the devices on which things may be viewed, which is a different kettle of fish than whether the head-end system requires a set-top box, which we think is the critical question.

[00:17:02] Speaker 04:
The other thing I would say about personal computer is the argument here, of course, is about whether internet delivered video is covered.

[00:17:12] Speaker 04:
And just putting personal computer in a list of things that include

[00:17:18] Speaker 04:
something as broad as consumer electronics products really doesn't give any information about the idea that this could extend beyond what the rest of the specification talks about, and as Your Honor talked about,

[00:17:32] Speaker 04:
which are about cable and other cable-like delivery systems.

[00:17:35] Speaker 02:
Well, that sounds to me, as do a lot of the arguments in your brief, more of an enablement or a written description issue than really a claim construction.

[00:17:44] Speaker 02:
And Judge Dyke's broader point in his last question was that we've got a term that's being construed that's nowhere in the specification.

[00:17:52] Speaker 02:
And we're not redefining, we're not talking about the definition of the term.

[00:18:00] Speaker 02:
We're only answering the question of what context are you able to use this and not able to use that.

[00:18:06] Speaker 02:
Your answer to the sort of thing like, are we really talking about the right thing here, claim construction versus validity, seems to only be that our case law has this maximum that you're supposed to construe claims to preserve their validity.

[00:18:21] Speaker 02:
Which is also too broader than what I think our case law says.

[00:18:26] Speaker 04:
I think the first part of our brief was directed to the court's methodology for construing terms, as set forth most recently in the Columbia University case, which is that the court looks broadly at the specification, the prosecution history, as well as the claim language itself.

[00:18:43] Speaker 02:
And we think here... But in all of those cases, I mean, I remember that case, but I don't remember specifically, but I would assume that the term that was being construed from the claims...

[00:18:53] Speaker 02:
was also we looked for the use of that term in the spec to tell us what the real true meaning of that term was.

[00:19:01] Speaker 04:
I'll double check, but I believe in Columbia University that there was a similar amendment to add a term.

[00:19:09] Speaker 04:
But I think here, even though the term isn't used in the spec because it was added later, the spec itself

[00:19:15] Speaker 04:
tells us the kind of system that's being talked about.

[00:19:18] Speaker 03:
Maybe you're looking at the wrong word.

[00:19:21] Speaker 03:
Instead of head-end system, maybe it ought to be display side.

[00:19:26] Speaker 04:
Well, Your Honor, obviously we would be happy with the construction that eliminates internet delivery either way.

[00:19:32] Speaker 04:
But I do think head-end system is the right focus because the focus here

[00:19:41] Speaker 04:
when the Wacob Amendment was made was about what was on head and system.

[00:19:47] Speaker 00:
What kind of system is this?

[00:19:49] Speaker 00:
OK, I understand what you're saying, that you looked at that prior art, since that's where the word came from.

[00:19:54] Speaker 00:
And that prior art talks about cable as a preferred embodiment.

[00:19:57] Speaker 00:
Although it does have some language at the beginning of it in the first column, but it's a little broader than that, and says it could be a satellite system or the like.

[00:20:05] Speaker 00:
But nonetheless, how do you respond to the evidence of contemporaneous

[00:20:11] Speaker 00:
definitions that define the word head end with respect to a cable system or an internet system.

[00:20:18] Speaker 00:
They're like for example on page 32 of the blue brief.

[00:20:22] Speaker 00:
And then also

[00:20:23] Speaker 00:
the evidence that is in the blue brief at page 33, where it says head end in a broadband network, the starting point for transmissions to end users.

[00:20:33] Speaker 00:
For example, cable networks broadcast stations.

[00:20:36] Speaker 00:
So here we are with a specification that doesn't use the word head end.

[00:20:41] Speaker 00:
And there's evidence that the word head end, as defined at the time of the invention, includes internet applications.

[00:20:49] Speaker 00:
How do you deal with that?

[00:20:51] Speaker 04:
Well, in several ways, Your Honor.

[00:20:52] Speaker 04:
I think, first of all, we have evidence that it wasn't defined that way, including evidence in the Newton's telecom dictionary, which my colleague takes issue with us for relying on because it's broader than just telecommunications.

[00:21:11] Speaker 04:
But notwithstanding that fact, it adopts the definition that we advocate.

[00:21:16] Speaker 04:
that the dictionary definitions actually support our perspective.

[00:21:22] Speaker 04:
Well, I don't think you have to get to the dictionary definition, so I think they do because I think there are two other important things.

[00:21:27] Speaker 04:
First, I think WACAB, although your honor is right, it says cable television or the like.

[00:21:34] Speaker 04:
It is repeatedly, as we set forth in our brief,

[00:21:37] Speaker 04:
making clear that it's cable television systems or cable television-like systems, which is the precise construction that the district court adopted here, that she didn't say cable television only.

[00:21:47] Speaker 04:
She said cable television or similar systems that use a set-top box or conventional television and not internet, which of course is the critical question for this case.

[00:21:56] Speaker 04:
And so we think it's totally consistent with WACOM.

[00:22:01] Speaker 03:
Suppose we were to disagree with you and say that the real question here is what's meant by the term display site.

[00:22:09] Speaker 03:
Could you address whether display site should be interpreted to require a conventional television set?

[00:22:19] Speaker 03:
Because that's a term that is used throughout the specification.

[00:22:25] Speaker 03:
We have more guidance as to what that term means than head-end system.

[00:22:31] Speaker 04:
We would say it should be interpreted to include either a television set or a device that receives signals from a set-top box, which is the answer to personal computer and the other things there.

[00:22:42] Speaker 04:
The district court said set-top box or conventional television.

[00:22:45] Speaker 04:
And as I discussed, not just in the discussion of Figure 7, but in the discussion of the first two embodiments, a set-top box is an essential element, because that's what translates the signals.

[00:22:57] Speaker 04:
And then a variety of different devices might display them.

[00:23:01] Speaker 03:
So let me, along that line, let me understand.

[00:23:06] Speaker 03:
That would mean that viewing video on a computer wouldn't be covered by the claims.

[00:23:11] Speaker 03:
But if I understand correctly now that you have boxes, and I don't know whether you would call them set-top boxes, that allow you to view video from the internet on your television set, right?

[00:23:24] Speaker 03:
Are you familiar with that?

[00:23:26] Speaker 03:
Yes.

[00:23:27] Speaker 03:
Wouldn't that suggest that perhaps those implementations would be covered where you're using a box, which might be called a set-top box, to view video from the internet on your TV?

[00:23:42] Speaker 04:
I don't think so, Your Honor, because I think that the context of this patent and the set-top box requirement are tied back to cable and similar

[00:23:53] Speaker 04:
technologies and personal computers at the time could be plugged in to set-top boxes to receive video because the set-top box would have provided the signal.

[00:24:05] Speaker 04:
Obviously things have advanced a lot since then.

[00:24:08] Speaker 02:
Why does any of this matter?

[00:24:09] Speaker 02:
If you invent a bicycle, a wheel,

[00:24:12] Speaker 02:
And the spec is all about using this wheel on bicycles, because cars hadn't been invented.

[00:24:17] Speaker 02:
But somehow, 10 years in, somebody invents a car that didn't even exist at the time of the invention and uses this wheel.

[00:24:25] Speaker 02:
They're still infringing, even though the context of the use of the wheel was exclusively in the spec for bicycles, right?

[00:24:33] Speaker 04:
Well, I guess a couple of answers to that, Your Honor.

[00:24:37] Speaker 04:
Certainly, the question here is whether

[00:24:40] Speaker 04:
internet delivery is covered and internet delivery was certainly known at the time.

[00:24:45] Speaker 04:
One of the inventors as we point out in our brief was an expert in the internet and there's no reference whatsoever to the internet.

[00:24:52] Speaker 02:
So the fact that a smart computer... But TVs aren't mentioned in most of the claims either.

[00:24:58] Speaker 02:
Well, they're mentioned in the specifications and in many other places.

[00:25:03] Speaker 02:
So that's the context in which you've invented something, you've claimed something, and in the spec you say, this is for use on conventional televisions.

[00:25:12] Speaker 02:
So you can't be infringing if you use, and I don't know what the facts are, I don't know what the evidence is for infringement, but that you can't be infringing this claim because you use it exactly as it's described in the claims in another context?

[00:25:26] Speaker 04:
Well, I don't think a conventional television works here because a conventional television doesn't have the technology that that judge referred to.

[00:25:34] Speaker 02:
Isn't that the classic enablement or written description

[00:25:38] Speaker 02:
An inquiry that ensues, and those issues come up when you construe a claim broadly, like the case, remember, of electronics, electrical sensors, and mechanical sensors.

[00:25:51] Speaker 02:
Construe the claim broadly, libel says, too bad, we gave you what you asked for, and you're not enabled, or there's not a sufficient written description, right?

[00:26:00] Speaker 02:
Isn't that the classic inquiry?

[00:26:02] Speaker 04:
We certainly think that is an appropriate inquiry.

[00:26:05] Speaker 04:
And perhaps if the court thinks that that's appropriate, maybe the appropriate thing would be to remand the case for the district court to address whether there would be a violation there if the claim had been construed as broadly as appellants claim it should be.

[00:26:18] Speaker 04:
Are you also raising a 101 issue or not?

[00:26:21] Speaker 04:
Well, we think there also would be a 101 problem.

[00:26:24] Speaker 04:
We didn't talk about it in our brief just because we ran out

[00:26:27] Speaker 02:
I think we didn't get to that level of specificity.

[00:26:36] Speaker 00:
No, I think that's the critical point.

[00:26:48] Speaker 04:
Nothing says how it would work.

[00:26:50] Speaker 04:
And it all, which I recognize, might be a 112 argument.

[00:26:53] Speaker 00:
But I think the critical- My question was a little different.

[00:26:55] Speaker 00:
My question was, is there anything in there that suggests to you that it would not work?

[00:27:00] Speaker 04:
Yeah.

[00:27:00] Speaker 04:
Well, I think the consistent references to set-top boxes in all three of the embodiments as being a required element and in the figures, in figure four, five, and seven.

[00:27:15] Speaker 04:
Set-top box is an essential part of this system.

[00:27:19] Speaker 04:
And I think that fact, combined with the Wacob definition of cable, which obviously has a set-top box, are the two critical pieces that fit together to say this system wouldn't work.

[00:27:33] Speaker 04:
It requires a set-top box or conventional television to work.

[00:27:37] Speaker 04:
And the set-top box or technology like a set-top box

[00:27:42] Speaker 04:
is set forth, just so the court has it convenient, at 4, 7 to 8, 5, 2 to 7, and the passages of 12 that we were talking about with respect to Figure 7.

[00:27:51] Speaker 04:
All three of those embodiments say we need a set-top box.

[00:27:55] Speaker 04:
And the fourth embodiment doesn't discuss one way or another.

[00:27:57] Speaker 03:
But a set-top box might include the boxes that allow you to view internet video on your television set.

[00:28:04] Speaker 04:
I think, first of all, the other part of the specification that we do have talks about the context of this invention being the change from over-the-air broadcast a few channels to the multi-channel cable television environment.

[00:28:21] Speaker 04:
That seems a very important reference for giving definition to set-top bots, but also

[00:28:27] Speaker 04:
WACOP is a very important context for giving definition to what set-top box means and why it has to be part of a head-end system, just to tie it back to the claim that was being construed, because WACOP talks about head-end in the cable context

[00:28:43] Speaker 04:
And in the prosecution history.

[00:28:46] Speaker 02:
As you acknowledge in your brief, the district court didn't discuss at all anything about prosecution history.

[00:28:53] Speaker 02:
I presume the arguments were made.

[00:28:55] Speaker 02:
The arguments were made.

[00:28:56] Speaker 02:
What is your view of that, that you just thought the specification was so consistent?

[00:29:00] Speaker 04:
I think she thought the specification was enough and that she didn't have to reach them.

[00:29:03] Speaker 04:
But they were made.

[00:29:05] Speaker 04:
And although my colleague tries in their brief to say that we sort of backed off from them,

[00:29:11] Speaker 04:
the full passage at A1457 makes clear that we put those arguments front and center for the very reason that we're talking about here, which is that they provide more support for the context that we rely on.

[00:29:27] Speaker 02:
But her whole analysis, at least in version one, was her rationale for reaching the conclusion she reached was that the specification consistently refers to cable TV, television, and VCR.

[00:29:42] Speaker 02:
That's a little thin, given our case law.

[00:29:44] Speaker 02:
Even if we were replying, or she doesn't talk about what the plain meaning is, she doesn't talk about disclaimers, implicit or explicit.

[00:29:51] Speaker 02:
There's none of that discussion.

[00:29:53] Speaker 02:
A specification consistently referring to certain things doesn't necessarily equate to, therefore, limiting claim construction to that, right?

[00:30:05] Speaker 04:
I think it doesn't necessarily.

[00:30:06] Speaker 04:
There was a lot of other argumentation before the district judge, and she certainly

[00:30:10] Speaker 04:
expanded on it when that argument was made in the decision on rehearing.

[00:30:15] Speaker 02:
Well, what does the rehearing give us on that?

[00:30:18] Speaker 02:
Does it give us any more specificity on that?

[00:30:20] Speaker 02:
I didn't think it did.

[00:30:23] Speaker 02:
Maybe it gives us a few sites of respect, but I didn't get much more than that out of the rehearing.

[00:30:28] Speaker 04:
Well, it talks about the need for tuners.

[00:30:30] Speaker 04:
The material that's at the bottom on it, I'm looking at A30.

[00:30:35] Speaker 04:
The citations that start at the bottom of A30

[00:30:38] Speaker 04:
and go through the rest there, they're talking about channel indicators, tuners, and hundreds of more channels, all characteristics of cable or similar systems, which is the argument.

[00:30:52] Speaker 04:
And we've certainly in our brief tried to show some of that other information that was before her.

[00:30:57] Speaker 04:
that really does paint a picture of a term that was taken from Watch Up, which, again, with all respect to my colleagues, really is limited to cable and similar systems, just as the district court construed here, put in here.

[00:31:11] Speaker 04:
They could have said, they didn't have to use that term.

[00:31:14] Speaker 04:
They could have said, not at the display site, which was the reason that the distinction was being made.

[00:31:19] Speaker 04:
But they took that term because that term had a meaning.

[00:31:25] Speaker 04:
Certainly it had a meaning.

[00:31:26] Speaker 04:
And we think the meaning was consistent with what the specification shows was what this patent was getting at.

[00:31:32] Speaker 04:
So it was no problem for them to take that term with its meaning because it fit in with exactly what they were doing.

[00:31:40] Speaker 03:
Before you sit down, I'm not sure that I understand what the systems are

[00:31:47] Speaker 03:
Can you tell me some examples?

[00:31:51] Speaker 03:
Because I don't think of Google, for example, as selling a system that has the things that are listed in your workbook.

[00:31:59] Speaker 04:
It's going to websites like Hulu or YouTube and viewing video.

[00:32:04] Speaker 04:
So it's an inducement issue?

[00:32:07] Speaker 04:
Well, YouTube is actually a Google-owned company.

[00:32:11] Speaker 04:
So it is

[00:32:14] Speaker 04:
any kind of internet viewing of video, which is obviously something very broad.

[00:32:19] Speaker 04:
Internet was known at the time and would greatly expand the scope of this patent.

[00:32:27] Speaker 04:
Thank you.

[00:32:38] Speaker 01:
Thank you, Your Honors.

[00:32:39] Speaker 01:
I do want to speak to a couple of points.

[00:32:41] Speaker 02:
I think that- Well, do you have any comment about the question that Judge Dyke ended with with you?

[00:32:48] Speaker 02:
Why this term is being construed as opposed to display site or something that appears in the claims and the spec?

[00:32:54] Speaker 01:
Well, I think from the procedural context, this was a term that the defendants in the case proposed and suggested originally.

[00:33:02] Speaker 01:
And to be fair, the district court adopted a conclusion

[00:33:06] Speaker 01:
construction that was slightly different than the construction that was proposed below.

[00:33:10] Speaker 01:
The defendants all proposed the construction or the appeal.

[00:33:14] Speaker 02:
No, we understand.

[00:33:15] Speaker 02:
I don't want to take your time.

[00:33:16] Speaker 02:
I just wondered if you know.

[00:33:18] Speaker 01:
So this was a construction that they suggested should be provided early because it would be dispositive because their construction was that it was limited only to cable television systems.

[00:33:27] Speaker 03:
Where would we be, for example, if we said, OK, the district court focused on the wrong term?

[00:33:32] Speaker 03:
The right term to focus on is display site

[00:33:35] Speaker 03:
and display site requires the use of a conventional television set.

[00:33:39] Speaker 03:
Where would we be there?

[00:33:41] Speaker 01:
Well, I think first, my suggestion, the district court has not construed display site.

[00:33:47] Speaker 01:
There's been no marked proceeding of any kind.

[00:33:49] Speaker 01:
And so I think if the court's view is that head-end system, maybe this was not the right construction and there should be construction of display site, the appropriate

[00:34:00] Speaker 01:
First step would be a remand for the district court.

[00:34:02] Speaker 01:
I understand.

[00:34:03] Speaker 03:
But suppose we said, we don't need a remand.

[00:34:05] Speaker 03:
It's clear.

[00:34:06] Speaker 03:
Display site requires a conventional television set.

[00:34:09] Speaker 03:
Where are we in terms of infringement?

[00:34:10] Speaker 01:
Well, I think that that arguably might limit some infringement.

[00:34:15] Speaker 01:
But I think Your Honor very correctly pointed out, probably not all.

[00:34:18] Speaker 01:
Because as you quite correctly stated, there are devices that allow viewing of internet video content.

[00:34:26] Speaker 01:
I'll give one example that I'm personally familiar with, the Apple TV device.

[00:34:30] Speaker 01:
It's a box.

[00:34:31] Speaker 01:
It's essentially a smaller but a set-top box type device.

[00:34:36] Speaker 01:
It connects to your conventional television set.

[00:34:39] Speaker 01:
Whether today's television sets are conventional and what constitutes a conventional television set might be an open question.

[00:34:45] Speaker 01:
But it connects to your television set.

[00:34:47] Speaker 01:
It allows you to watch video content on that television set, including, for example, videos from the YouTube service.

[00:34:54] Speaker 01:
or from other sites and services that provide internet content, including from some of the defendants.

[00:35:01] Speaker 01:
That's one example.

[00:35:02] Speaker 01:
And in many instances, of course, the claims aren't just watching video from a source on a site.

[00:35:09] Speaker 01:
They involve how you deliver and decide what advertisements to send to a consumer.

[00:35:14] Speaker 01:
And that's really, obviously, the focus of the invention and of the claims is about the targeting of advertisements.

[00:35:21] Speaker 01:
The references to the head end and the display site

[00:35:24] Speaker 01:
we submit are really more about the orientation of where things are happening in the overall system, not about limiting it to a particular specific context or a particular technology device.

[00:35:36] Speaker 01:
In that respect, I think the specification is repeatedly clear that it's talking about a number of systems.

[00:35:42] Speaker 01:
I just wanted to reference, for example, I think counsel referenced some portions as well.

[00:35:48] Speaker 01:
But in column four of the patent, for example,

[00:35:53] Speaker 01:
Delivery and material coming over cable, DBS, which was a direct broadcast satellite type of technology, telephone, et cetera.

[00:36:03] Speaker 00:
Where were you in column four?

[00:36:04] Speaker 01:
I'm sorry.

[00:36:04] Speaker 01:
This is at column four around line eight to nine.

[00:36:08] Speaker 01:
And this isn't a patent from 1995.

[00:36:14] Speaker 01:
DBS was far from a conventional television service at that time.

[00:36:18] Speaker 01:
This was a brand new satellite delivery technology.

[00:36:21] Speaker 01:
Telephone was virtually non-existent as a means for delivery of television and video programming in 1995.

[00:36:27] Speaker 01:
These are talking about new technologies.

[00:36:29] Speaker 01:
There's lots of references and specifications to broadband delivery.

[00:36:33] Speaker 01:
These are various and multi-faceted communication systems not limited to one particular kind of delivery.

[00:36:45] Speaker 01:
Thank you.

[00:36:45] Speaker 02:
Thank you, Your Honor.