[00:00:00] Speaker 00: another for a number of reasons, including that it's undisputed. [00:00:04] Speaker 00: The experts agree on that point. [00:00:08] Speaker 00: In the evidentiary hearing before the district court, Dr. Heppi, Polish expert, agreed with Dr. Islam on three different occasions at 2152 in the Joint Appendix, 2155 and 2159 that the terms in-ban and out-of-ban have a general [00:00:24] Speaker 00: and had a general meaning and generally understood meaning to those of ordinary skill in the art at the time of the invention, which was 2001, and that that understood meaning was that they're separate and distinct from one another. [00:00:35] Speaker 02: But separate and distinct, is that enough? [00:00:40] Speaker 00: Well, so there's more, certainly. [00:00:42] Speaker 00: That helps get us there. [00:00:44] Speaker 00: But the claim language itself provides considerable context. [00:00:47] Speaker 00: The in-band communication provides the additional context of being between the [00:00:53] Speaker 02: exercise apparatus in the local server, it also must be... But you concede that both in-band and out-of-band could change over time, correct? [00:01:04] Speaker 00: That's right. [00:01:05] Speaker 02: So you're saying that what's in-band today could be totally different than what it is tomorrow. [00:01:11] Speaker 02: I understand that that might be useful for the innovators, but how does the public then [00:01:18] Speaker 02: judge its conduct based on those descriptions of in-band and out-of-band, if they are necessarily moving targets? [00:01:25] Speaker 00: Because the in-band and out-of-band are used in the claims in the same way that you might use first and second. [00:01:30] Speaker 00: So if you go through the specification and substitute, every time you see in-band, substitute the word first, and every time you see out-of-band, substitute the word second, it reads exactly the same. [00:01:40] Speaker 00: We're just talking about two separate and distinct instances of communication, and that's the constant throughout the specification, that when we're talking about [00:01:47] Speaker 00: The system, we talk about out of band communication and in band communication, they're separate and distinct. [00:01:54] Speaker 00: There's sometimes some crossover in which is which in any given example. [00:01:58] Speaker 00: But when you have a situation like that... Wait, wait, wait. [00:02:01] Speaker 02: So you're saying that I could have first and second and don't define what first is and don't define what second is and sometimes they overlap? [00:02:10] Speaker 00: No, I'm not... You said crossover. [00:02:12] Speaker 00: I'm referring to the places in the specification that [00:02:16] Speaker 00: Polar is trying to draw out as being inconsistent with the idea that first and second, or that in-band and out-of-band refer to separate and distinct instances of communication. [00:02:27] Speaker 00: That's the main point, the specification. [00:02:29] Speaker 00: And the claims don't cover every single thing that's in the specification. [00:02:32] Speaker 00: The claims only cover systems that have both in-band and out-of-band communication going on at the same time. [00:02:38] Speaker 00: So if everything was in-band, the claims don't cover that, and they don't purport to cover that. [00:02:42] Speaker 02: But you do admit that what's out-of-band today could be in-band tomorrow. [00:02:48] Speaker 00: I do as far as that goes, certainly, because the example, and then the specification provides an illustration. [00:02:54] Speaker 00: It doesn't limit. [00:02:55] Speaker 00: It provides an example of a preferred embodiment. [00:02:58] Speaker 00: And in the example, they illustrate the distinction of separateness using in-band and out-of-band, and in-band communications being tied to sort of a simple apparatus, a simple mode of communication where things such as [00:03:15] Speaker 00: interactions with sensors and actuators, very low bandwidth, very low tech communications are provided for. [00:03:21] Speaker 00: Out-of-band communication, that was something that required additional componentry in 2001. [00:03:26] Speaker 00: These days, a lot of that could happen over one band. [00:03:30] Speaker 00: It could all be Wi-Fi. [00:03:31] Speaker 00: But back then, you needed separate and distinct out-of-band hardware in order to make that happen. [00:03:38] Speaker 00: And so the claims cover [00:03:40] Speaker 00: two separate and distinct instances, a system that has those two separate and distinct instances of communication. [00:03:45] Speaker 00: And the claim language says that out-of-band communication must be with the user and it must be related to the in-band communication or have a relationship to the in-band communication. [00:03:55] Speaker 00: And in-band communication must be wireless, bidirectional, and between the exercise apparatus and the local server. [00:04:03] Speaker 00: So we provide plenty of specificity in the claim language itself that helps us understand [00:04:09] Speaker 00: when we're talking about in-ban and out-of-ban. [00:04:11] Speaker 00: But the questions that you're asking plays really into the argument that the district court bought into, that the idea that the patent is speaking in terms of specific bans and that the claims are directed to specific bans. [00:04:27] Speaker 00: They're not directed to specific bans. [00:04:29] Speaker 00: They're directed to instances of communication they're referred to as an in-ban communication, which is between the exercise apparatus and the local server. [00:04:36] Speaker 00: and everything else, which is out-of-band communication. [00:04:38] Speaker 00: So you have to have both of those. [00:04:39] Speaker 04: It looks as if what was bothering the district court was your statement in the specification that it moves from out-of-band to in-band as the technology advances. [00:04:50] Speaker 04: So that as the technology advances, what's out-of-band now might be so straightforward that it's in-bad later. [00:04:59] Speaker 04: So what would follow from that would be that an invention made 20 years ago covers [00:05:05] Speaker 04: all of the advances that have since been made by others, presumably, not disclosed and described as filed. [00:05:14] Speaker 04: And it looks as if that seems to underlie what was bothering the district court. [00:05:22] Speaker 00: job really is to try to understand the claims, not to try to be confused by them. [00:05:26] Speaker 00: If you try to understand them, you realize in-band and out-of-band are referring to two separate and distinct instances of communication, a first communication and a second communication. [00:05:34] Speaker 04: But you said very clearly that the movement depends on the capabilities of the technology, as to whether it's in-band or out-of-band. [00:05:42] Speaker 00: Right. [00:05:42] Speaker 00: That's in the specification by way of illustration to make the distinction between in-band and out-of-band. [00:05:48] Speaker 00: And it said that over time, things that are in-band [00:05:52] Speaker 00: these days or out-of-band these days might become in-band by way of illustration. [00:05:56] Speaker 00: That doesn't mean that they will meet the claim limitations unless you have a claim, unless you have a device, a system that has two instances of communication. [00:06:07] Speaker 00: The characteristics don't matter of this in-band and out-of-band. [00:06:11] Speaker 00: In-band and out-of-band, like I said, is used just like first and second. [00:06:14] Speaker 00: So the characteristics of it don't matter. [00:06:16] Speaker 00: If in-band is FM92.1 and out-of-band is everything else, [00:06:21] Speaker 00: That's fine. [00:06:22] Speaker 00: In band can be any other specific band. [00:06:27] Speaker 00: And everything else is everything else. [00:06:29] Speaker 00: Out of band is everything else. [00:06:30] Speaker 04: But if it doesn't matter, but those limitations are in the claims. [00:06:34] Speaker 04: If there were claims without those limitations to whether it's in band or out of band, then we wouldn't be concerned about subsequent advances. [00:06:46] Speaker 00: But in band and out of band, [00:06:48] Speaker 00: or not that they're merely referring to first and second. [00:06:52] Speaker 00: They're not referring to a particular band. [00:06:55] Speaker 00: So if something migrates to a different type of characteristic by way of illustration in the specification. [00:07:01] Speaker 03: That's not consistent with what the experts said. [00:07:03] Speaker 03: What the experts said, this first and second communication, I didn't see the expert testimony embrace that idea at all. [00:07:11] Speaker 03: I thought both experts said that in band and out of band have meaning to one of skill in the art. [00:07:17] Speaker 03: There is a reference point to understand what you mean by in-band and out-of-band. [00:07:21] Speaker 03: And in fact, there were 10 extrinsic references that were cited, 10 pieces of prior art discussing in-band and out-of-band that were presented to the district court. [00:07:32] Speaker 03: And none of these said it's a first communication and a second communication. [00:07:35] Speaker 03: And if I'm wrong, show me in the appendix where any one of these references describes in-band and out-of-band as simply a first communication versus a second communication. [00:07:44] Speaker 03: I understood them all. [00:07:46] Speaker 03: consistent with the expert testimony to be in band and out of band with reference to something, with a starting point, a reference point, whether it be frequency or I don't know, anything. [00:07:59] Speaker 03: You could have any criteria and then say everything, like you said, 92.7. [00:08:03] Speaker 03: Well, that's a frequency, right? [00:08:05] Speaker 03: So in band is you've defined in band. [00:08:07] Speaker 03: So now we can define what's out of band, everything that's not that. [00:08:11] Speaker 03: Am I wrong? [00:08:12] Speaker 03: Am I mistaken? [00:08:13] Speaker 03: missing something in the 10 pieces of evidence submitted or the two experts testifying, did one of them say clearly and unequivocally that it just means first and second to one of skill in the art, what you're arguing now? [00:08:24] Speaker 00: It would be inappropriate for either of those experts to do that because that's claim construction. [00:08:28] Speaker 00: That's assessment of the internal coherence in the context of the patent. [00:08:33] Speaker 03: No, no, time out. [00:08:34] Speaker 03: The Supreme Court said in Teva that experts can tell us what terms mean to one of skill in the art. [00:08:40] Speaker 03: And I thought both of these experts did testify to that point. [00:08:43] Speaker 03: And neither of them said that to one of skill in the art, this term means first and second communication. [00:08:48] Speaker 03: I don't see that in any testimony presented. [00:08:50] Speaker 00: I'm not arguing that that's what they mean to one of skill in the art. [00:08:53] Speaker 00: I'm arguing that's what their legal meaning is in the context of the claims. [00:08:57] Speaker 03: So you're saying that this patent redefined the terms different from their meaning to a skilled artisan. [00:09:08] Speaker 00: I don't intend to say that, no. [00:09:11] Speaker 00: No, I'm saying that the testimony of the experts is consistent and wholly supports the reading of the claim. [00:09:18] Speaker 03: Neither of the experts testified that it means first or just first and second communications. [00:09:24] Speaker 03: Neither of them testified to that. [00:09:25] Speaker 00: Well, actually, our expert did testify to that. [00:09:28] Speaker 00: He was asked about it. [00:09:29] Speaker 00: I can't take you to it in the appendix right now, but it is in there. [00:09:34] Speaker 00: I believe we cite to it in the briefs. [00:09:36] Speaker 00: I'm not certain of that. [00:09:37] Speaker 00: That was part of his testimony at the evidentiary hearing. [00:09:40] Speaker 00: He did say that. [00:09:40] Speaker 00: He said you could call it first and second. [00:09:43] Speaker 00: I think he even said you could call it Ralph. [00:09:46] Speaker 03: He both said with regard to a reference point, though. [00:09:49] Speaker 00: That's true. [00:09:50] Speaker 00: But when you're making the system, the claim system, you can pick your starting point. [00:09:58] Speaker 00: You do need to pick your starting point. [00:10:00] Speaker 03: These claims don't inform anyone as to the starting point, which is part of the ambiguity the district court is troubled with. [00:10:06] Speaker 03: It does. [00:10:07] Speaker 00: It does. [00:10:07] Speaker 00: It has to be between the exercise apparatus and the local server. [00:10:13] Speaker 00: It needs to be wireless. [00:10:14] Speaker 00: It needs to be bi-directionable. [00:10:15] Speaker 00: And it needs to be separate and distinct from everything else, which is the out-of-band. [00:10:20] Speaker 02: And have a relationship with everything else. [00:10:22] Speaker 00: And have a relationship, which means that it regards the same exercise session. [00:10:26] Speaker 00: That's consistent with the entire context of the specification. [00:10:30] Speaker 00: Every single example that's given in there, in-band and out-of-band. [00:10:33] Speaker 02: But Julie mentioned relationship once in the entire specification. [00:10:38] Speaker 00: The relationship's a plain and ordinary meaning kind of term, and the word does not appear in there, but in-ban and out-of-ban, undeniably, have a relationship throughout the entirety of the specification. [00:10:49] Speaker 00: They're always referring to the same, their communications regarding the same exercise session. [00:10:56] Speaker 04: Okay. [00:10:56] Speaker 04: Let's hear from the other side, and we'll save you for rebuttal, Mr. Freeman. [00:11:00] Speaker 01: Thank you. [00:11:04] Speaker 01: Mr. Moran. [00:11:05] Speaker 01: Good morning, Your Honors. [00:11:08] Speaker 01: May I'd like to briefly touch on three points this morning. [00:11:11] Speaker 01: They are the topic that was just discussed, in-band and out-of-band communications, the relationship between those two communications, and the issue of waiver that was not discussed. [00:11:22] Speaker 01: With respect to in-band and out-of-band communication, this case resolves on the fundamental principle that patents are looked at through the lens of one skilled in the art. [00:11:33] Speaker 01: And that's precisely what the district court did. [00:11:35] Speaker 01: that initial ground of briefing and a hearing on claim construction. [00:11:39] Speaker 01: The Nautilus case came down. [00:11:41] Speaker 01: The district court asked for a hearing and extra briefing on how that impacted the decision and the analysis. [00:11:47] Speaker 02: Before Nautilus, you didn't have any trouble proposing a claim construction for in-band and out-of-band, did you? [00:11:55] Speaker 01: Yes. [00:11:56] Speaker 01: The parties disputed what out-of-band was. [00:11:59] Speaker 01: But you still had a proposed construction. [00:12:03] Speaker 02: Excuse me, you can't talk when I'm talking, okay? [00:12:07] Speaker 02: You had a proposed construction that did not argue it was indefinite, right? [00:12:12] Speaker 01: Yes, Your Honor. [00:12:13] Speaker 02: Okay. [00:12:15] Speaker 02: And why wasn't that enough? [00:12:17] Speaker 02: Why couldn't even under your construction, why wouldn't that save this patent from a 112 attack? [00:12:24] Speaker 01: For two reasons, because the in-band and out-of-band communications [00:12:28] Speaker 01: that were agreed to initially, we did not agree on out-of-band. [00:12:32] Speaker 01: And that was a controversy. [00:12:34] Speaker 01: The in-band definition is plainly, flatly wrong. [00:12:39] Speaker 01: And if I may, I refer the report to page 17 of Appelli's brief. [00:12:47] Speaker 01: And there's an annotated figure, 14 from the patent. [00:12:52] Speaker 01: And just to put that into context, that is the controller inside an exercise device. [00:12:59] Speaker 01: And looking at that figure, the top geometric shape is identified as out-of-band communications. [00:13:10] Speaker 01: And below, there was no dispute. [00:13:12] Speaker 01: Both experts testified and as explained in our brief with sites to the appendix, that that's out-of-band communication. [00:13:19] Speaker 01: And it goes to and from the exercise device. [00:13:22] Speaker 01: Below that, there's a transmitter and receiver that constitute in-band communication, and that's plainly [00:13:29] Speaker 01: set forth in the patent. [00:13:31] Speaker 01: So this figure shows in-band and out-of-band communications going to and from the exercise device. [00:13:38] Speaker 01: And consequently, the initial proposed construction, and the proposed construction is before the court from appellants, is wrong. [00:13:49] Speaker 01: You can't distinguish in-band and out-of-band because they both go to and from the exercise device on the plain disclosure of the patent. [00:13:58] Speaker 02: Well, how was your original construction of high bandwidth communication? [00:14:03] Speaker 02: How did that distinguish, in your mind, in-band from out-of-band? [00:14:06] Speaker 01: It didn't. [00:14:07] Speaker 01: And that was a proposal that the parties were discussing at the time and trying to find some common ground. [00:14:11] Speaker 01: And as the parties' discussion progressed, it became plain that these two terms could not be resolved or differentiated. [00:14:19] Speaker 01: And consequently, as I just demonstrated, the original in-band construction was plainly wrong. [00:14:28] Speaker 01: Faced with that, the district court asked for the input from experts and found three fundamental facts as discussed briefly. [00:14:39] Speaker 01: The terms are generally known. [00:14:40] Speaker 01: There's no dispute about that. [00:14:42] Speaker 01: They're generally known to be relative terms. [00:14:45] Speaker 01: And importantly, they only have meaning in a given context with a reference. [00:14:51] Speaker 01: And the district court, as discussed earlier, went through the testimony [00:14:55] Speaker 01: looked at her testimony about 5X intrinsic references. [00:14:59] Speaker 02: Why isn't the reference the machine itself? [00:15:02] Speaker 02: It's in-band if it's on the machine. [00:15:05] Speaker 01: Because both communications are involved with the machine, so it doesn't provide any kind of reference. [00:15:12] Speaker 01: There's no way of distinguishing whether, as the district court said here, [00:15:19] Speaker 01: We come to the fundamental issue, which is that all of these things, that's the 10 references, require a reference. [00:15:28] Speaker 01: Without a reference, you cannot tell what is in or what is out. [00:15:32] Speaker 01: And that's the fundamental point here. [00:15:34] Speaker 01: The court made that fundamental. [00:15:38] Speaker 01: He asked, what does one skill to the art bring to the table in order to try to read this patent? [00:15:43] Speaker 01: The expert testimony, as the court found, clear background technology. [00:15:48] Speaker 01: Tools were it needed a reference. [00:15:52] Speaker 01: The district court looked for a reference, couldn't find one, and consequently came to the legal question, which is a de novo question, that the patent is invalid for indefiniteness. [00:16:06] Speaker 01: With respect to the issue of the relationship between the two claimed communications that was touched upon briefly in the opening argument, [00:16:18] Speaker 01: There's no question that, as mentioned a few moments ago, that the term relationship's not in the patent specification. [00:16:26] Speaker 01: It only appears in the claims. [00:16:28] Speaker 01: It was entered into the claims by amendment, so it was not part of the original patent. [00:16:34] Speaker 01: And at the time of the amendment, there was no explanation of what relationship between the communications were. [00:16:39] Speaker 02: But aren't there some things in the specification that define the difference between in-ban and out-of-ban, like the robustness or the [00:16:48] Speaker 02: the cost, aren't those kinds of things enough to give you a reference point? [00:16:54] Speaker 01: No, because the robustness of, for example, as a panel argues, the robust complex, whoever defines these terms, expensive hardware is out of band hardware. [00:17:09] Speaker 01: However, the patent also says that as things get more complicated and better processing, [00:17:16] Speaker 01: becomes available, everything can be in-band. [00:17:19] Speaker 01: So the robustness, expense, complexity argument falls apart because what should have been out-of-band is called in the patent in-band. [00:17:28] Speaker 01: That is, everything becomes in-band. [00:17:30] Speaker 04: But the patent explained that. [00:17:32] Speaker 04: And wouldn't a person of skill in this field, as the experts appreciate, that as the technology advanced, that some of the transmissions [00:17:44] Speaker 04: would move from out-of-band to in-band without anyone misunderstanding what was happening? [00:17:53] Speaker 01: No, because you don't know what an in-band or out-of-band is. [00:17:57] Speaker 01: And for example, one example is that the proposal that was discussed this morning briefly was... We don't know in advance. [00:18:04] Speaker 01: We don't know in advance. [00:18:05] Speaker 04: But the specification tells you that as the technology advances, so does the nature of the communication. [00:18:15] Speaker 01: As technology advances, Your Honor, you don't know, if you have a system today, and three years from now the system is out there, which one of the communications in your apparatus... Why does it matter? [00:18:32] Speaker 04: That's not their invention. [00:18:33] Speaker 04: Their invention is the sequence of steps whereby certain communications take place at certain stages in the relationship. [00:18:44] Speaker 04: And they explained what a person of ordinary skill would look for and would understand. [00:18:50] Speaker 04: And I didn't see that the experts said that they didn't understand what was meant. [00:18:58] Speaker 01: Well, the experts did at least, a Pelley's expert testified at the hearing that, as I briefly mentioned, the terms in band and out of band, while generally understood like left or right, tall or short or hot or cold, [00:19:13] Speaker 01: have a general understanding, but do not only have meaning in a given context with a reference. [00:19:20] Speaker 01: And the expert testified at the hearing that after exhaustive review of the patent specification, the patent prosecution, that could not find a reference to distinguish the terms in band and out of band. [00:19:36] Speaker 01: And moreover, simply removing the terms in band and out of band from the claim [00:19:43] Speaker 01: and replacing them with one and two changes the issue before the court. [00:19:48] Speaker 01: That's not what the claim language is. [00:19:50] Speaker 01: The claim language is in-band and out-of-band. [00:19:52] Speaker 01: But it's explained in the specification. [00:19:55] Speaker 04: You don't need a reference if the inventor has explained it. [00:19:59] Speaker 01: That's the problem. [00:20:00] Speaker 01: The inventor didn't explain it. [00:20:02] Speaker 01: The inventor used contradictory overlapping and circular discussions. [00:20:06] Speaker 01: Everything that could be in-band, everything out-of-band can someday be in-band. [00:20:13] Speaker 01: Or doesn't he have to wait to someday? [00:20:14] Speaker 01: If you use the appropriate hardware, everything is in band. [00:20:18] Speaker 01: And moreover, you can't use the definition of that you select in band, everything else is out of band, because the claim is claim one, for example, also resides, as we discussed in our brief, a third communication. [00:20:33] Speaker 01: So the principle that if you pick in band, everything else is out of band, [00:20:39] Speaker 01: addresses two communications, but the claims has a third. [00:20:43] Speaker 01: So that argument doesn't fit with the claim language, which has three communications, both claims one and five, as we discussed in our brief. [00:20:54] Speaker 04: Do the issues of infringement, if you get to infringement, depend on whether any particular communication is in band or out of band, or is defined as in band or out of band? [00:21:09] Speaker 01: I believe so, yes, your honor. [00:21:11] Speaker 01: The confused systems, the actual discovery and progression of the case hadn't advanced far along. [00:21:19] Speaker 01: But it's my understanding that it rests on certain communications being in-band, certain communications being out-of-band. [00:21:27] Speaker 01: And the question arises, and it's here today, what is an in-band communication? [00:21:34] Speaker 01: What is an out-of-band communication? [00:21:36] Speaker 01: And what is the relationship between these two? [00:21:39] Speaker 01: And as the testimony before the court below and as discussed in the brief, the relationship can be the same thing. [00:21:46] Speaker 01: The patent says they can be the same thing. [00:21:48] Speaker 01: They don't have to have a temporal relationship. [00:21:51] Speaker 01: The patent specification, because it doesn't discuss any relationship, does not provide any definition with any reasonable certainty of what this claimed relationship is between the [00:22:07] Speaker 01: to communications out of band and in band communication. [00:22:10] Speaker 02: Were you able to find any, any authority from us that would indicate that whenever you have a claim limitation that, that could change over time, that, that by definition it's indefinite? [00:22:26] Speaker 01: I did not look at that, your honor. [00:22:27] Speaker 01: No, by, by, by, in heresy though, if you have this pen, for example, [00:22:35] Speaker 01: that because now it has a polymer in the plastic is not infringing, simply because time has passed. [00:22:48] Speaker 01: If I have my pen here today, it's infringing. [00:22:51] Speaker 01: And then next week, it's not infringing if I have the same pen. [00:22:55] Speaker 01: Just because time has advanced is the in essence of indefiniteness. [00:23:02] Speaker 01: And as we discussed in the brief, the other example is if we're going to have changing over time, you don't even have to wait for changing over the time. [00:23:09] Speaker 01: You use the complexity or the expense type distinguishing factor that the appellant says. [00:23:15] Speaker 01: It depends upon the manufacturer. [00:23:17] Speaker 01: Some manufacturers get good prices so that theirs is all in band because it's cheap. [00:23:22] Speaker 01: Other manufacturer making the same device doesn't get good prices, and consequently, they have an infringing device. [00:23:29] Speaker 01: That's not a guiding principle. [00:23:31] Speaker 01: That's not reasonable certainty. [00:23:33] Speaker 01: And then one other point with respect to the issue of waiver. [00:23:37] Speaker 01: Appellant's case before the court today rests on having separate instances of communication. [00:23:45] Speaker 01: In band and out of band just basically can be written out of the claim, just have separate instances of communication. [00:23:51] Speaker 01: That's not the construction they presented below. [00:23:54] Speaker 01: It's not the one that's in their reply brief. [00:23:56] Speaker 01: The reply brief specifically says that in band communication is communication to and from [00:24:01] Speaker 01: exercise device, and all other communication is out of that. [00:24:09] Speaker 01: But their argument, as stated in, for example, in the reply brief, I'll give you an example. [00:24:23] Speaker 01: Page 16 of their reply brief, and this just illustrates that the fact is that their case before the court today [00:24:30] Speaker 01: rests on a new construction. [00:24:32] Speaker 01: They state that they have these different hardware components illustrates the correctness of its construction, its being dependent, that these terms is used in the claims to note separate and discrete instances of communication. [00:24:46] Speaker 01: Well, that's a different construction, and it's not one that District Court below addressed. [00:24:52] Speaker 01: And moreover, it illustrates the indefiniteness of the claims in and by itself because [00:25:00] Speaker 01: The patent does not support separate and distinct hardware limitation, as we pointed out in the claim, and we discussed briefly this morning with respect to Figure 14, which shows out-of-band communication going into the controller and in-band communication going into the controller, the same hardware processing both communications. [00:25:23] Speaker 01: Consequently, the patent does not support the different hardware [00:25:29] Speaker 01: hardware argument of a parent. [00:25:31] Speaker 03: Is it fair to say the heart of your argument is that there are just no distinguishing criteria articulated in the spec and certainly not in the claim for what ought to distinguish in-band from out-of-band? [00:25:44] Speaker 03: It's like saying I'm going to form a group and then telling you you can or can't be in it but not telling you what the criteria for the group is, not giving you any idea of what I'm looking for to distinguish between this group and that group. [00:25:58] Speaker 01: Yes. [00:25:59] Speaker 01: And that relates back to the fundamental principle or idea that the district court found that you need some sort of reference. [00:26:05] Speaker 01: What's the guiding reference for being in one group or another? [00:26:09] Speaker 01: I see my time is just about up. [00:26:11] Speaker 01: I'll be glad to take any further questions. [00:26:13] Speaker 04: Let me see. [00:26:14] Speaker 04: Any more questions? [00:26:15] Speaker 04: You're satisfied with your answer. [00:26:17] Speaker 04: Any more questions? [00:26:18] Speaker 04: OK. [00:26:19] Speaker 04: Thank you, Mr. Moran. [00:26:34] Speaker 00: I think for any patent ever issued, if you want to make a concerted effort to try to be confused by it, you can do that. [00:26:44] Speaker 00: And you can find ways to do that in the specification. [00:26:48] Speaker 00: What defines the invention are the claims. [00:26:52] Speaker 00: And the claims define what's an in-band communication and what's an out-of-band communication. [00:26:57] Speaker 00: The claims do not suggest, and nothing in the specification suggests, that when we talk about in-band [00:27:03] Speaker 00: we have in mind something specific, in fact, in band and out of band, used in the varying ways that we're talking about, that denotes a breadth of meaning. [00:27:14] Speaker 00: And the case law is clear on that. [00:27:16] Speaker 02: Well, the problem is that when you say there's nothing, we're not contemplating anything specific. [00:27:24] Speaker 02: We've got a public notice function here, and that's what this indefiniteness issue is. [00:27:30] Speaker 02: Court could have construed in-ban and out-of-ban exactly as you want, which is whatever you want it to be, essentially. [00:27:37] Speaker 02: But that doesn't satisfy the question of whether or not you have definitely described what it is that you've claimed. [00:27:47] Speaker 00: I believe it does, because you're practicing the invention. [00:27:52] Speaker 00: If you have a system that has two separate and distinct instances of communication, one that's in-ban, that [00:27:59] Speaker 00: you do need to choose. [00:28:00] Speaker 00: You need to pick what it is, what's specific. [00:28:03] Speaker 00: And then everything else is out of band. [00:28:05] Speaker 00: But there's additional context provided by the claims as to what's in band and out of band. [00:28:10] Speaker 00: We've gone over them 100 times already. [00:28:12] Speaker 00: Between the exercise device and the local computer, wireless bidirectional, that's in band. [00:28:18] Speaker 00: Out of band is with the user. [00:28:21] Speaker 02: So let me give you a hypothetical. [00:28:22] Speaker 02: So you've got one of these little exercise devices that has the time on it and then can tell you how many steps [00:28:29] Speaker 02: You did. [00:28:30] Speaker 02: And you're saying that if you claim that as in-band and everything else is out-of-band, then you get an Apple Watch that has a thousand things in-band, but still could communicate with the phone, that therefore you would be infringing the in-band, out-of-band patent on the little exercise device. [00:28:51] Speaker 00: Is that right? [00:28:52] Speaker 00: No, I don't think so. [00:28:53] Speaker 00: So the example that comes to my mind is a bicycle [00:28:59] Speaker 00: and a bicycle computer. [00:29:01] Speaker 00: And the bicycle is the exercise apparatus. [00:29:04] Speaker 00: It's got sensors on it for cadence and your pedals. [00:29:06] Speaker 00: It's got a sensor that tells how many times the wheel goes around for the speed. [00:29:12] Speaker 00: And you've got your local computer, which is the thing you mount on your handlebars. [00:29:16] Speaker 00: It tells you how fast you're going. [00:29:17] Speaker 00: So you've got signals going back and forth. [00:29:19] Speaker 00: The local computer's saying, send me information. [00:29:21] Speaker 00: The sensors are saying, here's some information. [00:29:24] Speaker 00: It's wireless. [00:29:24] Speaker 00: It's bi-directional. [00:29:26] Speaker 00: And it's between the exercise [00:29:28] Speaker 00: apparatus and the local server. [00:29:31] Speaker 00: And then separately, you're out of band communication. [00:29:33] Speaker 00: When you get done with all that, you send it up to the internet, you send it to a remote server. [00:29:38] Speaker 00: And then separately later, or in real time, whatever, you can sit down and have an out of band communication to review your data regarding that exercise session. [00:29:49] Speaker 00: That's a separate communication. [00:29:50] Speaker 00: It's out of band. [00:29:51] Speaker 00: It involves the user. [00:29:53] Speaker 00: That's how we know they're distinct. [00:29:56] Speaker 00: Where does it say that in the specification? [00:29:59] Speaker 00: It provides context for the bicycle use at Figure 13 in the bottom quadrant there. [00:30:05] Speaker 00: It shows bicycles in the mobile, they call it mobile local server in that context. [00:30:12] Speaker 00: That's a bike computer. [00:30:15] Speaker 00: If you look at Figure 13, it looks like this. [00:30:19] Speaker 00: In the specification, they talk about using the system in connection with bicycles. [00:30:25] Speaker 00: at A63 in the joint appendix. [00:30:28] Speaker 00: That's column 5, line 37 through 53, also at page 69. [00:30:32] Speaker 00: That's column 17, lines 19 through 46. [00:30:37] Speaker 00: And really quickly, before I run out of time, I would like to say that in the joint appendix at 2126, Mr. Moran did ask Dr. Islam about the question about first and second and A and B. I know. [00:30:49] Speaker 03: I just went back and read it when he was talking. [00:30:51] Speaker 03: And what Dr. Islam said is you can replace it with the word George. [00:30:55] Speaker 03: That's right. [00:30:56] Speaker 03: You couldn't place it with the word George. [00:30:57] Speaker 03: You couldn't place in band with the word George. [00:30:59] Speaker 03: And I think everyone was a little bit perplexed. [00:31:02] Speaker 03: And he says, because it doesn't mean anything. [00:31:03] Speaker 03: You can use any random word you want. [00:31:05] Speaker 03: The word George could be inserted in. [00:31:08] Speaker 03: But you didn't choose to use the word George, nor would one of skill in the art have any understanding of any meaning of the word George in the abstract. [00:31:15] Speaker 03: Nor did you use it in the specification. [00:31:17] Speaker 03: You said in band communication, and that has a meaning to people of skill in the art, only if there is a reference point. [00:31:24] Speaker 03: And that's what everyone said. [00:31:26] Speaker 00: That's a step too far. [00:31:27] Speaker 00: That's not what the claims require. [00:31:28] Speaker 00: The claims require a big jail. [00:31:31] Speaker 03: But that's what their experts said. [00:31:33] Speaker 03: There's nothing that backs that up. [00:31:35] Speaker 03: That's what their experts said. [00:31:36] Speaker 03: There were 10 pieces of extrinsic evidence that were introduced. [00:31:40] Speaker 03: They're cited in the red brief. [00:31:42] Speaker 03: And the district court made fact findings about what one of skill in the art would understand these terms to mean outside the context of the patent. [00:31:50] Speaker 03: We have to review all that for deference. [00:31:52] Speaker 03: And that's what you're up against here. [00:31:53] Speaker 03: You want to make this de novo and replace the word in band and out of band with your expert saying, replace them with the word, what, George and Charlie? [00:32:00] Speaker 03: I mean, he didn't even give us an alternative name for out of band. [00:32:03] Speaker 03: I'll just come up with Charlie. [00:32:04] Speaker 03: Why not? [00:32:05] Speaker 03: It seems consistent with his testimony. [00:32:07] Speaker 00: Clear error applies to that last fact finding, because in none of those 10 references does it say what he says they say. [00:32:16] Speaker 00: It uses in-band with a specific reference and out-of-band to mean everything else. [00:32:20] Speaker 00: That's consistent. [00:32:21] Speaker 00: That's fine. [00:32:22] Speaker 00: But you don't have the reference. [00:32:23] Speaker 00: There's no reference. [00:32:24] Speaker 00: We don't need to supply the reference in order for a person of ordinary skill in the art. [00:32:28] Speaker 00: But that's his own unsupported conclusion. [00:32:30] Speaker 00: There's nothing that he points to that says that. [00:32:34] Speaker 00: He points to things that look exactly like the patent that do use in-band and out-of-band, in-band specifically, out-of-band to mean everything else. [00:32:41] Speaker 00: But he doesn't say [00:32:42] Speaker 00: We can't, it's impossible to have a generalized discussion of in-band and out-of-band. [00:32:47] Speaker 00: That's nonsensical. [00:32:49] Speaker 00: Of course it's possible to have a generalized discussion of things that are in-band and out-of-band without first saying what's in-band and out-of-band. [00:32:56] Speaker 00: What's in-band, specifically. [00:33:01] Speaker 00: I am out of time. [00:33:02] Speaker 04: Any more questions for Mr. Freeman? [00:33:05] Speaker 04: Thank you, thank you both. [00:33:06] Speaker 04: Thank you. [00:33:07] Speaker 04: The case is taken under submission.