[00:00:04] Speaker 03: Good morning, everyone. [00:00:06] Speaker 03: The first argued case this morning is number 15-1129, Indycon, Incorporated against Facebook, Incorporated. [00:00:15] Speaker 03: Mr. Shah. [00:00:26] Speaker 04: May it please the court, the Deek Shah for plaintiff, appellant, Indycon. [00:00:30] Speaker 04: This appeal involves a construction of two sets of claim language in Indicon's patent covering a computer-based indexing and hyperlinking computer system. [00:00:41] Speaker 04: I'd like to start by addressing the issue of whether the assertive claims require that all instances, as opposed to fewer than all instances, of a defined term in the database be capable of being hyperlinked. [00:00:54] Speaker 04: Importing the limitation from the preferred embodiments [00:00:57] Speaker 04: The district court answered, yes, it must be all instances, each and every instance. [00:01:02] Speaker 04: But in conflict with established principles of claim differentiation, that construction equates the asserted claims use of the word instances unmodified with other unasserted claims that use the phrase all instances, which is the modifier that Facebook seeks to import into the asserted claims. [00:01:24] Speaker 04: Facebook's reliance on prosecution history [00:01:27] Speaker 04: which really addresses a distinct issue falls far short of the clear, deliberate, and unmistakable disavowal of claim scope necessary to overcome those claim differentiation principles. [00:01:40] Speaker 03: But that was a very strong argument. [00:01:43] Speaker 03: Was it not that there was really nothing in the specification, but there was the argument in the prosecution history concerning all instances? [00:01:53] Speaker 04: Well, Your Honor, in the prosecution history, it is true. [00:01:57] Speaker 04: there are statements in which Indicon is providing an overview of its invention. [00:02:02] Speaker 04: And it says that there are occasions in which it provides all instances of the link term. [00:02:08] Speaker 04: But I think it's important to remember a couple things when looking at that prosecution history. [00:02:12] Speaker 04: And that prosecution history appears at pages 1178 to 1186 of the joint appendix. [00:02:18] Speaker 04: So a couple things I'd say about that. [00:02:19] Speaker 04: First, there are certain claims in Indicon's invention, in particular claims 14 and 15, [00:02:26] Speaker 04: which do actually require all instances. [00:02:29] Speaker 04: So when Indicon was providing an overview of its invention, it's not remarkable that it mentioned that limitation, but the key distinction that Indicon was making in the prosecution history was about another distinction over the prior art. [00:02:45] Speaker 04: The prior art that was being discussed in the prosecution histories was a source called folio views. [00:02:50] Speaker 04: The primary distinction, and this becomes clear when you read the thrust of those pages, [00:02:55] Speaker 04: from 1178 to 1186. [00:02:56] Speaker 04: The thrust of Indikhan's distinction was that folio views taught manual insertion of links, while the invention here, all of the claims, teach automatic generation of links. [00:03:09] Speaker 04: That was the primary distinction, not this all versus fewer than all distinctions. [00:03:14] Speaker 04: The other point I would make, and if you look at page 1178, which is... Counselor, did the court actually construe the word instances? [00:03:24] Speaker 04: Your Honor, this comes out of the construction of a couple claim terms. [00:03:28] Speaker 00: I know. [00:03:28] Speaker 00: It comes out of Link Term and Customs Link and Customs Link and Relationship. [00:03:34] Speaker 04: Exactly, Your Honor. [00:03:35] Speaker 04: And the main dispute with regards to those set of terms, both before the magistrate judge and the district court, was whether those terms require just instances, as the claim language says, for all instances. [00:03:47] Speaker 00: But just to be clear, the word instances, that's not included in the claim limitations, correct? [00:03:52] Speaker 04: It is. [00:03:53] Speaker 04: The word appears in the claim language itself, instances. [00:03:56] Speaker 04: So in claims two and nine, for example, Your Honor, of those asserted claims, it uses the term instances. [00:04:04] Speaker 04: And then claims 14 and 15, which are not at issue, uses specifically the language all instances. [00:04:11] Speaker 04: But getting back to the prosecution history that you asked about, Judge Newman, if you look at page 1178 of the Joint Appendix, and this is where Indicom's response [00:04:21] Speaker 04: to the patent examiner's objection based upon folio view starts. [00:04:25] Speaker 04: It starts with what it calls, quote, an overview and comparison of folio views with the product described in applicant specification. [00:04:33] Speaker 04: And then it says, quoting, the purpose of this section is to familiarize the examiner with the overall differences between folio views as described in the cited references and applicant's invention. [00:04:45] Speaker 04: Applicants, and this is the key sentence, applicants are mindful of the fact the differences between the disclosures of the two references [00:04:51] Speaker 04: does not necessarily shed any light on the scope of an applicant's claims. [00:04:57] Speaker 04: And then it says, in the next section, certain claim limitations are specifically identified in reference to specific claims in the next section. [00:05:07] Speaker 04: What that next section is, unfortunately, it doesn't appear in the joint appendix. [00:05:11] Speaker 04: Facebook doesn't cite that next section. [00:05:13] Speaker 04: But if you look at that document, which you can find, obviously, in the record or on the PTO's website, page 32 [00:05:19] Speaker 04: which is the next section where Indicon actually goes claim by claim in talking about the differences between folio views and its claims. [00:05:28] Speaker 04: When it gets to the point about folio views on which it's addressing, it's at page 32, it says, the relevant claims, it cites the claim numbers, all recite structure or steps for automatically generating links. [00:05:42] Speaker 04: The cited references do not disclose equivalent structure for automatically generating links. [00:05:49] Speaker 04: That is the sum total of its explanation. [00:05:51] Speaker 04: It doesn't say anything about all instances or every instances. [00:05:55] Speaker 04: And there's good reason, because some of the claims that Indicon wrote and that were approved had instances, and others had all instances. [00:06:04] Speaker 04: So I think when you read the prosecution history in its whole, it becomes clear as, yes, it did say every instances in its general description of the invention. [00:06:12] Speaker 04: But when it got down to the nitty gritty of describing the claims, [00:06:15] Speaker 04: The clear focus was between manual generation in folio views and automatic generation in Indycon's invention, which applies to all of the claims. [00:06:26] Speaker 04: And that certainly falls well short of clear, unmistakable, and deliberate disavowal of claim scope. [00:06:32] Speaker 04: As you well know, this quotes precedents, Omega Engineering, and others. [00:06:36] Speaker 04: When you're talking about prosecution history estoppel or claim disavowal, it has to be clear that the inventor is giving up that claim scope. [00:06:44] Speaker 04: If you read this prosecution history against folio views, I just don't think you can get there. [00:06:50] Speaker 04: And so that would be my response about the prosecution history. [00:06:53] Speaker 02: So it's your view that that prosecution history is publicly available? [00:06:59] Speaker 02: Or we could probably get it anyway? [00:07:01] Speaker 02: Yes, Your Honor. [00:07:01] Speaker 04: It's available. [00:07:04] Speaker 02: I understand your position that they didn't cite it, but I'm surprised that you didn't if you thought it was the case. [00:07:10] Speaker 04: Yes, Your Honor. [00:07:10] Speaker 04: We should have cited that page as well. [00:07:13] Speaker 04: The document, the first page of the document is on Appendix, Joint Appendix 1162. [00:07:18] Speaker 04: It goes through for the next six or so pages. [00:07:21] Speaker 04: We're happy to submit for the court's convenience just the full document by letter after the argument. [00:07:28] Speaker 04: Yes, please do. [00:07:30] Speaker 03: We have this rigid requirement. [00:07:32] Speaker 03: And in fact, we do sometimes grumble [00:07:34] Speaker 03: when people cite or include more than what they specifically refer to? [00:07:39] Speaker 04: Sure, Your Honor. [00:07:43] Speaker 04: We'll be happy to send that along. [00:07:44] Speaker 04: And I apologize if it wasn't in the Joint Appendix. [00:07:48] Speaker 02: OK, proceed. [00:07:48] Speaker 02: I have another question for you, which is those dependent claims, like Defending Claim 14, do you know when they were added? [00:07:55] Speaker 04: Your Honor, I don't know the precise point in the prosecution history that they were added. [00:08:00] Speaker 04: I would say just to be fair to the other side, it's not a dependent claim. [00:08:04] Speaker 04: Those are independent claims, claims 14 and 15. [00:08:09] Speaker 04: What I would say about that, now the other side of course makes the point that claim differentiation is stronger when you're talking about independent claims. [00:08:17] Speaker 04: Clearly it is stronger, but that doesn't mean claim differentiation principles don't apply across independent claims. [00:08:24] Speaker 04: This court has a number of cases. [00:08:25] Speaker 04: I would focus on the Arlington Industries case, which I think is the most factually analogous to the set of claims we have here. [00:08:32] Speaker 04: And it's a case discussed on page five of our reply brief. [00:08:35] Speaker 04: And what you had there was a claim that involved, there was a claim language that said metal adapter. [00:08:41] Speaker 04: That was one independent claim. [00:08:43] Speaker 04: And the other independent claim said split metal adapter. [00:08:46] Speaker 04: And what the argument there was, well, all of the claims, the defendant in that case argued, well, all of the claims [00:08:53] Speaker 04: have to have the split metal adapter limitation. [00:08:57] Speaker 04: And it pointed to the fact that every drawing in the specification in that patent showed a split metal adapter. [00:09:03] Speaker 04: There was an opening in the metal adapter. [00:09:05] Speaker 04: It was in a full circle. [00:09:06] Speaker 04: And what this court said is, well, look, we don't read claims like that. [00:09:10] Speaker 04: When you have a modified claim language and then an unmodified claim language, you presume that the inventor is meant to add that modifier for a reason. [00:09:21] Speaker 04: And it would render supplurfluous [00:09:22] Speaker 04: the addition of that modifier if you were to give them the same scope. [00:09:26] Speaker 03: Well, but we have all sorts of cases which point out that that doesn't mean that the unmodified claim is broader than what's supported in the specification. [00:09:37] Speaker 03: And that's the problem, is it not? [00:09:39] Speaker 04: Well, Your Honor, I would agree with you that that's true. [00:09:42] Speaker 04: But I don't think that you can say that this limitation is unsupported in the specification. [00:09:47] Speaker 04: To be sure, in most instances when you're doing a database, [00:09:51] Speaker 04: you would expect it to return sort of all links, and that's kind of the general understanding. [00:09:57] Speaker 04: But there's certainly situations, and it's not hard to imagine, that you would have situations where you would want a system to return something less than all links. [00:10:05] Speaker 04: And although it's in a slightly different context, the functionality should be exactly the same in the specification. [00:10:11] Speaker 04: The specification in terms of search results [00:10:14] Speaker 04: does allow specification to exclude certain search results, just like when you do in Westlaw and Lexis. [00:10:21] Speaker 04: You can specify, look, I don't want to return every instance of this term if it appears in a separate paragraph from another term. [00:10:29] Speaker 04: I don't want to see it. [00:10:30] Speaker 04: The same sort of functionality is described in the specification with respect to searching. [00:10:36] Speaker 04: There's no reason why the hyperlinking, when you're setting up hyperlinks, should function in any different way. [00:10:42] Speaker 04: So I think there is support in the specification for the idea that you could, in fact, return something less than all instances. [00:10:50] Speaker 04: And we know that that's not a crazy idea, or that's not just a hypothetical, because the accused device in this very case is a system where it doesn't return, as the party stipulated in the joint stipulation. [00:11:03] Speaker 04: It doesn't actually return every instance. [00:11:07] Speaker 04: So there's no reason that the inventors would have want to given up the possibility [00:11:11] Speaker 04: that you could have certain databases, especially in the internet age when there is sort of a stream of information and sometimes the objective is not capturing every instance but actually filtering out extraneous instances, that you would have a database system that would return fewer than all instances. [00:11:28] Speaker 04: You would have a system set up like that. [00:11:30] Speaker 04: And if you had a system that returned 99% of instances but not 100% instances, there's no reason to assume the inventors would have wanted to give up [00:11:40] Speaker 04: the claim coverage over that other device. [00:11:44] Speaker 04: So I think there's enough in the specification when you start with the principles of claim differentiation, when you start with the claim language, and then you read it against the specification, I think there's enough there to give effect to the inventor's decision to use those different terms, the modifier and the unmodified phrase, and to give it real effect. [00:12:02] Speaker 02: Can I get back to my question when I asked you when were those independent claims that talked about each instance when they were added? [00:12:10] Speaker 02: They weren't original claims, right? [00:12:13] Speaker 04: Right. [00:12:14] Speaker 04: I don't know the exact order of when they were added with respect to the other claims. [00:12:20] Speaker 04: What is clear from the prosecution history, however, was that the examiner never raised an objection based upon the absence or the introduction of the all instances versus the instances limitation that simply was never a ground for coming back to the inventor and saying, [00:12:38] Speaker 02: There's a tape description problem or something like that. [00:12:41] Speaker 02: Right. [00:12:42] Speaker 04: So that much, I think, is clear and undisputed from the prosecution. [00:12:49] Speaker 02: I have another question for you, which is, if we were to agree with the district on one construction but not another, what would be the result of that? [00:12:56] Speaker 04: So if you were to agree on this claim construction, on the instances versus all instances, and you disagreed with some other, it would still require vacator and remand [00:13:06] Speaker 04: because they're certain of the asserted claims, for example, Asserted Claim 2, which doesn't contain the alias limitation. [00:13:14] Speaker 04: The converse is not true, though. [00:13:17] Speaker 04: If you agree with us on alias but disagree with us on this one, it would just be an affirmance because this instances versus all instance appears in all limitations. [00:13:28] Speaker 04: So if we win on this claim, instances versus all instances, that requires a vacatur and remand to the district court. [00:13:36] Speaker 04: Since you asked about it, I'll turn to the second issue, which is the alias, the construction of alias. [00:13:43] Speaker 04: And there, we think the magistrate judge got it exactly right. [00:13:47] Speaker 04: Now, again, importing limitations from the preferred embodiments, the district court can exclude alias to exclude graphics, any graphical element. [00:13:56] Speaker 04: But that limitation is not in the claim language, and as the magistrate judge explained, and this is on pages 19 to 21 of the magistrate judge's opinion, [00:14:04] Speaker 04: it contradicts the specifications description that the invention stores indexes and hyperlinks, both text and objects, and that an alias presents as a hyperlink. [00:14:16] Speaker 04: Now the prior, and this is I think the important part, the prior art that's recited in the patent and discussed in the prosecution history, and I know there's an argument, oh is this intrinsic or extrinsic evidence, but everyone agrees, if the prior art is actually discussed in the prosecution history, [00:14:32] Speaker 04: then it is intrinsic evidence. [00:14:33] Speaker 04: And if you look at page A1034 of the joint appendix, it is abundantly clear that the two most important patents, the De La Huerta and the Hobbs patent, were part of extensive discussion back and forth between the patent examiner and Indicon. [00:14:49] Speaker 04: And so when you look at those prior art patents, the De La Huerta and Hobbs patent, what you'll see is they make continuous discussion of hyperlinks [00:14:59] Speaker 04: link terms and pointers and targets, the very same terminology that the inventors used in the Indicon patent, they use them with respect to equally, with respect to text and graphics. [00:15:13] Speaker 04: So if we keep in mind that the inventors used the very parlance of the cited patents that are part of the prosecution history, I think the default understanding should be that alias, which presents as a hyperlink, whether it's directly a hyperlink itself [00:15:28] Speaker 04: as we would submit or whether you accept Facebook's assertion that it becomes a hyperlink once the custom linking functionality is added. [00:15:39] Speaker 04: Either way, it presents in the invention as a hyperlink. [00:15:43] Speaker 04: And under the relevant prior art, hyperlink was always understood to be text and graphics, same thing with link term. [00:15:51] Speaker 04: And so when you read it against that and you read it against the specification in light of that. [00:15:56] Speaker 02: What about what the comments [00:15:58] Speaker 02: in this specification, like for example, there's one in column 10. [00:16:02] Speaker 02: There's a number of places in this specification where it suggests that the patent and the inventor did not have graphics in mind. [00:16:10] Speaker 02: And for example, if you look at column 10, lines 30 through 33, where it says, from a searchable database perspective, the crucial parts of the HTML composite file are those parts that contain text. [00:16:24] Speaker 02: So why doesn't something like that suggest that [00:16:27] Speaker 02: You know, in the context of this invention, what was contemplated and thought about for terms was text. [00:16:34] Speaker 04: Well, Your Honor, it is true that large parts in the column that you're reading from is from one of the preferred embodiments was primarily about text. [00:16:42] Speaker 04: But there are other points in the specification that I would point you to that talk about the ability of the invention to store index and hyperlink graphics. [00:16:51] Speaker 04: And the first part I would point you to is column five, which is not in the preferred embodiments. [00:16:56] Speaker 04: It's in the background of the invention. [00:16:58] Speaker 04: Column 5, lines 19 through 26. [00:17:00] Speaker 04: And it says, another object of the invention is to provide a method and system for storing search results from various sources, including the internet with internet format files, objects, or documents. [00:17:12] Speaker 04: The locally stored results can be automatically indexed for fast searching and hyperlinked by the user to make subsequent finding of the previously located information quick and simple. [00:17:22] Speaker 04: So it's talking about files, objects, and documents, not just text. [00:17:26] Speaker 04: And I think a more explicit description there would be at the bottom of column 32, carrying over to column 33, if you look at the last two lines of column 32, it says a speed, and this is one of the preferred embodiments, it says a speed save button immediately saves the displayed document along with all of its pictures, graphics, images, hypertext links, and layout to the database name in the database name file. [00:17:54] Speaker 04: And then if you skip down to line 10, a few lines, it says, the file can be saved as a normal text file, an HTML file without images, an HTML file with images linked to their internet source, or an HTML file with all images retrieved and saved on the local computer's hard drive. [00:18:14] Speaker 04: Pressing an exit browser button causes the software of the system to create a fully indexed and searchable database of all files [00:18:22] Speaker 04: saved into the database name. [00:18:24] Speaker 04: And so there in the preferred embodiment, you have it specifically saying you can save every image retrieved, and then it's a fully indexed searchable database of all files saved. [00:18:35] Speaker 04: So I think that language in the specification supports the general understanding in the prior art, and specifically in the patents cited in this very patent, that hyperlinking technology and this sort of low-term database technology would include both text and graphics. [00:18:52] Speaker 03: Let's hear from the other side, Mr. Schaub. [00:18:55] Speaker 03: Thank you, Your Honor. [00:19:06] Speaker 03: Mr. Huggett. [00:19:07] Speaker 01: Thank you, Your Honor, and may it please the Court. [00:19:10] Speaker 01: The District Court correctly construed the linking terms to require the capability to identify and display each instance of the linking term as a link [00:19:21] Speaker 01: The judgment for Facebook should be affirmed for that reason alone. [00:19:25] Speaker 01: First of all, looking at the claim language, each of the asserted claims requires a custom link or custom linking relationship that links specified terms in a database to a specified file and further requires generation of a searchable index of the data contained in the database, including the custom linking terms or linking relationships. [00:19:45] Speaker 01: And therefore, since an index of the data would necessarily or at least logically include each iteration of the relevant term, the indexing function supports the conclusion of the district court that the system must be capable of identifying and displaying each link term, each instance of the term as a link. [00:20:07] Speaker 01: And that's just consistent with an ordinary understanding of the claims. [00:20:12] Speaker 01: Council relies on the word instances, but as Judge Raina's question suggested, the term instances was not actually construed. [00:20:19] Speaker 01: Indicon did not ask the court to construe the term instances, and that's probably because it doesn't actually even appear in four of the six asserted independent claims. [00:20:29] Speaker 01: Only claims two and nine even use the word. [00:20:31] Speaker 01: Although both parties in their proposed constructions use the word, it doesn't actually appear in four of the six independent claims. [00:20:40] Speaker 01: And the fundamental starting point for construing this patent is to recognize that it is undisputed. [00:20:47] Speaker 01: Facebook made this point below and in our brief here, and it was not disputed by Indicon, that these terms are coined terms. [00:20:53] Speaker 01: The linking relationship and so forth terms are coined terms. [00:20:56] Speaker 01: They do not have an ordinary and customary meaning in the prior art. [00:21:01] Speaker 01: And therefore, under this court's precedence, in cases like J.T. [00:21:05] Speaker 01: Eaton and Erdetto and Honeywell, it is the obligation of the applicant [00:21:10] Speaker 01: to define the coined terms in the specification so that the person of ordinary skill knows what they mean. [00:21:15] Speaker 01: So you look to the specification to see how those terms are used and either explicitly or impliedly defined, and they cannot be construed to be broader than their usage in the specification. [00:21:28] Speaker 01: And here, the specification makes very clear that the system provides and contemplates that these terms convey the capability [00:21:36] Speaker 01: to display and identify each instance as a link, which of course is consistent with how one would normally expect the system to work. [00:21:46] Speaker 01: Essentially this was along the lines of a Westlaw or a Nexus system, and if you think about Westlaw, when you look at a Westlaw file and there's a site like 28 USC 1338, it's hyperlinked. [00:21:59] Speaker 01: And you can click on that and go look at the statute if you want to see what the statute actually says. [00:22:03] Speaker 01: And if every iteration is that way, because otherwise it would be pointless, because when you needed it in the paragraph you were looking at, it might not be there. [00:22:10] Speaker 02: How do you respond to the position that that part of the specification that you're talking about is simply the preferred embodiment? [00:22:18] Speaker 02: And what's happening here is that the district court read something from the preferred embodiment into the claim. [00:22:24] Speaker 02: Why is it that there was a disclaimer or something else here, [00:22:29] Speaker 02: something that requires that you read into the word linking, that there has to be each and every should be read into that, particularly where there is a claim that says instance and other claims that say every instance. [00:22:43] Speaker 01: So several responses. [00:22:44] Speaker 01: First of all, remember the construction is not each and every. [00:22:47] Speaker 01: The construction is each must be capable, and that's an important threshold. [00:22:51] Speaker 01: And I think Indicon sometimes misconstrues the construction [00:22:54] Speaker 01: by suggesting that the construction of the asserted claims always requires that all of the linked terms actually be displayed as a link. [00:23:03] Speaker 01: That's not what the construction says. [00:23:04] Speaker 01: It's only that the system allows the user, allows each linked term to be displayed as a link. [00:23:11] Speaker 01: So it provides the capability, not the actuality, which is one of the distinctions between the asserted claims and claims 14 and 15, which they argue for claim differentiation purposes. [00:23:20] Speaker 01: Those claims automatically [00:23:23] Speaker 01: generate all of the links. [00:23:25] Speaker 01: So they require all of the links to be automatically generated. [00:23:28] Speaker 01: The other claims merely require the capability, which of course is a distinction between capability and actuality that in and of itself is sufficient to defeat the claim differentiation argument. [00:23:37] Speaker 01: But turning back to the specification, even within the specification, there are two, I think, principal responses to your question. [00:23:44] Speaker 01: The first one is the point I already made about coined terms. [00:23:47] Speaker 01: The normal rule is when a term has a customary and ordinary meaning, [00:23:52] Speaker 01: a claim term, you don't look to an embodiment and then narrow the meaning of the ordinary and customary meaning. [00:24:01] Speaker 01: But here, that rule doesn't apply because there is no ordinary and customary meaning. [00:24:06] Speaker 01: That's undisputed for these terms. [00:24:08] Speaker 01: These are coined terms. [00:24:09] Speaker 01: And so, again, under Erdetto and J.T. [00:24:12] Speaker 01: Eaton and Honeywell, this court has repeatedly said [00:24:14] Speaker 01: The applicant, when it's a coin term, needs to define in the spec and we have to look to the spec to see what they meant because that's what a person of ordinary skill would do. [00:24:22] Speaker 01: They can't just consult customary meaning because it doesn't have one. [00:24:26] Speaker 01: So we have to look to the spec and in those circumstances, whenever usage in the spec shows what the term means and it's consistently and unambiguously used to mean, as in this case, each instance is capable of being displayed as a link, [00:24:40] Speaker 01: the spec controls. [00:24:42] Speaker 01: And that's even before we get to the prosecution history, of course, which provides a completely independent and sufficient and compelling ground for reaching the same conclusion. [00:24:51] Speaker 01: But even beyond all that, if you actually look at the spec, even under this court's normal principles that don't apply here because these are coined terms, if you look at the spec, the description, the summary of the invention before we get to the preferred embodiments, the summary of the invention itself, again, supports this interpretation. [00:25:07] Speaker 01: And I would refer the court to columns five and six [00:25:12] Speaker 01: And specifically, column 5, lines 62 to 63, the link module, which is one of the required portions of the invention according to the summary of the invention, the link module enables association of any selected link term with any of the plurality of files. [00:25:35] Speaker 01: If the invention must be capable of associating any link term, it must therefore provide the capability [00:25:42] Speaker 01: to associate each link term, because otherwise any doesn't include each, and any obviously must include each. [00:25:49] Speaker 01: Then again, the construction does not say for the asserted claims that they must always do it. [00:25:53] Speaker 01: It only says they have to provide the capability. [00:25:55] Speaker 01: And this confirms any link term can be linked. [00:25:58] Speaker 01: And similarly, column 6, lines 23 to 26, any selected link terms defined by the link module are also indicated in a similar manner, that is, [00:26:10] Speaker 01: being graphically indicated in some fashion color style highlighting. [00:26:15] Speaker 01: And the display utility enables interaction with any indicated selected linked terms to enable pre-usual of linked files. [00:26:22] Speaker 01: So again, any term can be linked. [00:26:24] Speaker 01: Therefore, each instance of the term can be linked. [00:26:28] Speaker 01: And again, because this is a coin term, it's entirely appropriate to look at the embodiments to see if they ever describe an embodiment that broadens the meaning beyond [00:26:40] Speaker 01: each instance, and they never do. [00:26:41] Speaker 01: In fact, if you look at the embodiments, and we've just said these in our brief, but just to go through them very briefly, they say that the link term can be displayed, is indicated and can be displayed as a link, quote, when a link term is encountered in a file, column 11, lines 29 to 32, quote, when the specified word is encountered, [00:27:06] Speaker 01: Com 25 lines 3 to 4. [00:27:08] Speaker 01: Quote, whenever a user encounters the link word. [00:27:11] Speaker 01: Com 30 lines 34 to 39. [00:27:14] Speaker 01: Quote, whenever the term appears. [00:27:16] Speaker 01: Com 32 lines 24 to 29. [00:27:18] Speaker 01: Quote, all such words should link. [00:27:21] Speaker 01: Com 30 lines 22 to 26. [00:27:24] Speaker 01: Every single time. [00:27:25] Speaker 01: And then, if you go to figure 11, it says that the linking function, this is describing the linking function, the linking designation process, [00:27:35] Speaker 01: It associates any word with a file by clicking on the link word in any file. [00:27:40] Speaker 01: You can then see the file. [00:27:44] Speaker 01: So again, over and over and over again, consistently, the description of the invention and the specification, which is controlling here because these are coined terms, makes clear that the system is capable of displaying any instance, each instance, of the link word as a link. [00:27:59] Speaker 02: How do you respond to Indikhan's argument about the prosecution history, that first you've got [00:28:04] Speaker 02: What we've got in the appendix here is something that generally compares the prior art to the specification. [00:28:13] Speaker 02: And then what we're missing is something that more directly says these various differences that we've pointed out on the prior page relates to these different claims. [00:28:23] Speaker 02: How do you respond to that argument, that we can't really rely on that as a clear and ambiguous disclaimer because it's not directly linked to the particular claims at issue here? [00:28:34] Speaker 01: it's it's wrong for several reasons first of all this court in the microsoft and public against multi-tech case and the hill rom case which we cited in our briefs makes very clear that that a clear case perhaps the clearest case but certainly a compelling case for disclaimer that in prosecution history is when the patentee says when the applicant says applicant's invention when they say the invention has the following characteristics hill rom and multi-tech say [00:29:02] Speaker 01: is taken as a disclaimer because the public is entitled to rely on the applicant's description of his or her invention and can't get broader scope than the patentee has said what the invention is. [00:29:14] Speaker 01: And here the applicant in the prosecution history at issue repeatedly and consistently was describing, quote, applicant's invention. [00:29:22] Speaker 01: It's actually more compelling than [00:29:24] Speaker 01: a description in the context of a particular claim, because it's not limited to a particular claim. [00:29:28] Speaker 01: It's a description of the invention. [00:29:30] Speaker 01: And let me remind the court. [00:29:31] Speaker 02: We do have other cases, though, where the prosecution history stopples limited based on which precise claims were being discussed. [00:29:40] Speaker 02: I agree with you. [00:29:41] Speaker 02: I just think there's probably cases that go both ways. [00:29:43] Speaker 02: But do you agree? [00:29:45] Speaker 02: Is there anything that somehow links this particular argument to the claims at issue here? [00:29:53] Speaker 01: No, Your Honor, but certainly they haven't cited us any case that says it has to be the claim-by-claim analysis. [00:30:00] Speaker 01: Indeed, I think, if I recall correctly, in Microsoft against Multitech, this same point was discussed. [00:30:06] Speaker 01: And the point was it wasn't the claim-by-claim analysis. [00:30:09] Speaker 01: It was the general description of the invention. [00:30:11] Speaker 01: And that's exactly what we have here on 1182 to 1183. [00:30:16] Speaker 01: They say it five times. [00:30:17] Speaker 01: Applicant's invention [00:30:19] Speaker 01: provides a user with a linking control panel in which the user can designate a specific file to be linked with every instance of a specified word. [00:30:27] Speaker 01: And the program displays every instance of that custom term and its alias terms, if any, as a hyperlink. [00:30:32] Speaker 01: Applicant's invention enables a user to designate the pattern and cause the program to display each instance of a text string. [00:30:39] Speaker 01: These innovations distinguish applicant's invention [00:30:43] Speaker 01: And then again, on 1186, applicants' invention enables a user to associate all instances of a specified word and all instances of a specified pattern. [00:30:53] Speaker 01: They say it five times each time saying, applicants' invention, applicants' invention, applicants' invention. [00:30:58] Speaker 01: That's a clear disclaimer under this court's precedence. [00:31:01] Speaker 01: And I don't think IndyCon, I'm not aware of any case they cite that says, when an applicant says, applicants' invention is X five times, we can nonetheless broaden the scope beyond what [00:31:10] Speaker 01: They've clearly said in what a person of ordinary skill reading the file wrapper would conclude it means. [00:31:16] Speaker 01: And in addition, if you're looking at the prosecution history, they also say on 1182, applicant's invention provides a linking control panel illustrated in Figure 11 and pages 70 to 72 of applicant's specification. [00:31:31] Speaker 01: And Figure 11 I already mentioned makes clear that the capability to display any link term as a link is part of the invention. [00:31:40] Speaker 01: Pages 70 to 72 of applicant specification are actually in the joint appendix. [00:31:48] Speaker 01: And they make clear page 70 is actually column 30 of the specification, which is the one I previously read to the court, which says, which uses the phrase, sorry, whenever a user encounters delinquency. [00:32:10] Speaker 01: So again, in the prosecution history, they specifically referred and relied on the very language that we have pointed out compels the construction adopted by the district court in addition to reiterating in the prosecution history the same point explicitly. [00:32:23] Speaker 01: So it all ties together. [00:32:25] Speaker 01: It's very clear and unambiguous. [00:32:27] Speaker 01: I don't see how any person of ordinary skill reviewing the prosecution history and the specification in light of the claims and construing them in light of the full information provided [00:32:38] Speaker 01: in the intrinsic record could possibly be confused about the scope of this invention. [00:32:44] Speaker 01: And it makes perfect sense, again, that why would you not want to have the capability when the purpose of the system is to provide a searchable index and allow people to connect to the dots, and when they see a term, if there's some related information they might want to be able to look at, why would you not want to have the capability to provide that linking relationship? [00:33:03] Speaker 01: It makes no sense. [00:33:04] Speaker 01: And there's nothing, there's not a hint of a suggestion of any reason [00:33:07] Speaker 01: in the patent or the specification why somebody would want to have, given the purpose of the invention, there's no suggestion why anybody would want to be denied the capability to do that. [00:33:19] Speaker 01: And with respect to claim differentiation, first of all, Indicon concedes that at most what we're talking about here is the weak form, not the strong form, because the claims 14 and 15 are independent claims. [00:33:33] Speaker 01: But secondly, they don't concede this, but it's true, [00:33:37] Speaker 01: not even a weak form of claim differentiation applies here because the presumption that forms the basis and defines the concept of claim differentiation is the presumption that claims are intended to have different scope and should therefore not be construed to be redundant or superfluous, absent some reason otherwise in the specification or the prosecution history. [00:34:00] Speaker 01: But that's not even applicable here. [00:34:02] Speaker 01: We identified 10 differences between the claims [00:34:05] Speaker 01: Claims 2 and 9 on the one hand, and 14 and 15 on the other hand. [00:34:09] Speaker 01: In our brief at 31 to 32, Indicon disputes only one of them, and that one unpersuasively. [00:34:15] Speaker 01: But it's undisputed that the claims have different scope, even under the district court's interpretation. [00:34:20] Speaker 01: So claim differentiation, even the weak form, doesn't apply here. [00:34:23] Speaker 01: Moreover, this court has repeatedly held in Fenner and other cases cited in our briefs that the guidance from the specification, when it's clear as it is here, [00:34:34] Speaker 01: and the guidance from the prosecution history went as clear as it is here, overcome claim differentiation, even in its strong form, let alone its weak form, or as here, where it doesn't apply at all. [00:34:45] Speaker 01: So for all those reasons, the district court's construction, we submit, was clearly correct and should be affirmed. [00:34:52] Speaker 01: I'm happy to address the alias terms issue if the court would like. [00:34:57] Speaker 03: Well, yes, take a moment. [00:34:59] Speaker 03: We have run over on the other side. [00:35:02] Speaker 01: Thank you, Your Honor. [00:35:04] Speaker 01: So, first of all, Indicon concedes that alias and alias term are used interchangeably in this patent. [00:35:12] Speaker 01: They say that at footnote three of their brief, and it's undisputed. [00:35:15] Speaker 01: So they must be given the same meaning. [00:35:18] Speaker 01: The patent makes very clear that the word term is given its ordinary meaning in this patent as a textual expression. [00:35:25] Speaker 01: Indeed, the claims require that, because claims eight, nine, and 11 equate the word term with the phrase [00:35:32] Speaker 01: quote, words and phrases, close quote. [00:35:35] Speaker 01: They say part of what's required in each of those claims is you locate words and phrases, and then you highlight those located terms. [00:35:45] Speaker 01: So the patent claims themselves make clear that terms are words and phrases, textual expressions. [00:35:50] Speaker 01: The summary at column 6, lines 27 to 28 equates link term with a word, as does figure 11. [00:35:59] Speaker 01: And, of course, the specification actually defines the word term as, quote, i.e., words, numbers, spaces, et cetera, at column 12, lines 55. [00:36:11] Speaker 00: In this place. [00:36:12] Speaker 00: Councilor, intercom indicates in its brief at page 35 says the district court did not dispute that an alias functions as a hyperlink and that hyperlinks were known in the art to be both textual and graphical. [00:36:26] Speaker 00: Is that correct? [00:36:28] Speaker 01: The second part is true. [00:36:29] Speaker 01: Certainly hyper, it was known in the art that a hypertext link could be attached to, could be, the jumping off point for a hypertext link could be an image or a text. [00:36:40] Speaker 01: That was clearly known in the art. [00:36:42] Speaker 01: The problem, the core issue here, and the one that we think in the count is clearly mistaken on, is they try to say alias means hypertext link. [00:36:51] Speaker 01: And that's just not true. [00:36:53] Speaker 01: Alias, an alias term are terms, just like link term is a term, [00:36:57] Speaker 01: They're words, according to the patent, that are found in the database. [00:37:02] Speaker 01: And then they serve as the jumping off point for a link. [00:37:05] Speaker 01: And the patent claims themselves make this clear by repeatedly saying that the linking relationship can be created and defined between the link term or the alias term. [00:37:19] Speaker 01: and the file. [00:37:20] Speaker 01: So there's the link term or alias term on the one hand, there's the file on the other hand, and there's the linking relationship between them. [00:37:27] Speaker 01: So those are three different things, obviously associated but distinct. [00:37:30] Speaker 01: And indeed, in the patent, if you look at Figure 11 and the columns 30 to 31, they go through in detail describing how first you define, you just determine what your link term or link phrase is going to be, and then you press a button and the system generates [00:37:47] Speaker 01: the links. [00:37:47] Speaker 01: So the links and the link term are two different things. [00:37:50] Speaker 01: And similarly, the links and the alias term in these claims and in the specification. [00:37:54] Speaker 01: And so the predicate, the first step of their argument, which entails assuming that alias means hypertext link, is not correct under the language of the patent. [00:38:05] Speaker 01: And secondly, even if it were, which it isn't, it wouldn't make any difference just because a hypertext link can be associated with an image as well as text. [00:38:13] Speaker 01: That doesn't mean that the predicate for the hypertext link itself must always be image as opposed to text. [00:38:20] Speaker 01: You can certainly have text that serves as a hypertext link, as indeed is the case here. [00:38:25] Speaker 01: And there's nothing in the patent that provides any suggestion that the predicate for the link is itself an image, or that text must be given a meaning contrary to its ordinary meaning. [00:38:38] Speaker 01: And again, this is where the doctrines [00:38:43] Speaker 01: that this court normally applies, that is, we're not going to depart from the ordinary and customary meaning of the word unless there's clear evidence to the contrary in the specification or the prosecution history. [00:38:53] Speaker 01: This is where that doctrine applies. [00:38:56] Speaker 01: They would have to satisfy the lexicography standard in order to give alias term a meaning other than the ordinary meaning of term, which is textual expression, and far from being able to satisfy the lexicography standard [00:39:09] Speaker 01: the specification actually defines text in accordance, I'm sorry, term in accordance with its ordinary meaning, which is textual expression. [00:39:17] Speaker 01: And then finally, the searching and indexing function description in the patent likewise confirms that images are not to be equated with aliases or with linked terms because the patent makes clear that alias terms need to be searchable and need to be [00:39:37] Speaker 01: searchable and indexed in the searchable index. [00:39:40] Speaker 01: And that the indexing process, according to the patent, quote, discards images. [00:39:47] Speaker 01: That's column 22, line 63 to 65. [00:39:50] Speaker 01: And it focuses on, quote, visible characters. [00:39:53] Speaker 01: That's column 23, lines 46 to 48. [00:39:56] Speaker 01: And then they give a reason. [00:39:58] Speaker 01: They give a reason why the indexing process discards images. [00:40:02] Speaker 01: And the reason is this. [00:40:03] Speaker 01: Quote, from a searchable database perspective, [00:40:07] Speaker 01: The crucial parts of the file are those that contain text. [00:40:12] Speaker 01: That's column 10, lines 30 to 33. [00:40:15] Speaker 01: So it makes perfect sense. [00:40:17] Speaker 01: There's not a shred of a suggestion anywhere in the patent that they are claiming a method for indexing and searching images. [00:40:26] Speaker 01: And interestingly, in their reply brief, Indicon says, oh, well, but that's commonly understood because two and a half years later, in 2001, they cite something that's not even in the record. [00:40:37] Speaker 01: Google announced the ability to search images. [00:40:40] Speaker 01: Well, this pattern was filed in the beginning of 1999. [00:40:43] Speaker 01: There's no enablement, no description of any ability to search images. [00:40:49] Speaker 01: It talks about images as being in the files that are in the database, of course. [00:40:55] Speaker 01: That's not surprising, but it never gives any suggestion of any ability to index and search images, let alone treat them as aliases. [00:41:04] Speaker 01: in order to construe the term to mean something other than its ordinary meaning, you would need clear indications in the specification or the prosecution history, and none of that is present here. [00:41:16] Speaker 02: Do you happen to know when those claims that talked about each and every instance were added to the prosecution history, added to the specification? [00:41:26] Speaker 02: I wouldn't expect you to know, but do you happen to know? [00:41:29] Speaker 01: So this argument was not made, of course, and so I have not [00:41:33] Speaker 01: examined it. [00:41:34] Speaker 01: But I just, in the course of this morning, when you asked the question, I looked through the information that we have available. [00:41:40] Speaker 01: And so this is what I know. [00:41:41] Speaker 01: Again, I don't know more than what I'm saying, so please don't take me for saying more than I am. [00:41:47] Speaker 01: But it appears from page 1428 of the Joint Appendix that claims 14 and 15 resulted from claims 110 and 111 of the application. [00:42:00] Speaker 01: Okay, and then from page 1178 of the joint appendix, it appears that claims 78 through 115, which would therefore include 110 and 111, were added as part of the very submission that we rely on as the prosecution history. [00:42:16] Speaker 01: That's 1178 is where they say we added 78 to 115, and then they go on later in that very same document to say our invention, applicant's invention, entails the ability [00:42:27] Speaker 01: to display every instance of the link term as a link. [00:42:31] Speaker 01: That's what I say five times in the pages that we've cited. [00:42:35] Speaker 01: So again, I haven't done any sort of analysis beyond that because it wasn't argued and therefore is waived, but certainly that's entirely consistent with the point that the applicants were quite unambiguously disclaiming, even if the specification had not been so clear, they were quite unambiguously disclaiming any attempt to claim an invention that doesn't convey the capability [00:42:57] Speaker 01: to display each instance as a link. [00:43:01] Speaker 03: Any more questions? [00:43:04] Speaker 03: Thank you, Mr. Hunter. [00:43:05] Speaker 03: Thank you. [00:43:06] Speaker 03: Let's enlarge the rebuttal time since we've run over. [00:43:09] Speaker 03: Let's make it five minutes. [00:43:13] Speaker 04: Thank you, Your Honor. [00:43:14] Speaker 04: I'd just like to make three points, if I may. [00:43:17] Speaker 04: The first is the issue of coin terms. [00:43:21] Speaker 04: Opposing counsel talks about how [00:43:23] Speaker 04: because these aren't defined terms of art. [00:43:26] Speaker 04: You have to look at the specification to coin the term. [00:43:28] Speaker 04: But we do have prior art in this case that's, in fact, cited on the face of the patent, that's, in fact, discussed back and forth in the prosecution history, as shown in the office examination on page A1034 of the appendix. [00:43:44] Speaker 04: And those two patents are, importantly, the de la Huerta patent and the Hobbs patent. [00:43:50] Speaker 04: Those two patents use the terms that are used [00:43:53] Speaker 04: in this invention, they use the term link term, that's the Hobbes patent, and they use the term hyperlinks, that's the de la Huerta patent. [00:44:02] Speaker 04: In those prior art patents that are cited in this patent, and the inventors here borrowed that terminology, they use the same terminologies, there can be no dispute that hypertext link and link term refer to both graphics and links. [00:44:16] Speaker 04: So if we're talking about coin terms, it's not enough, you should look at the actual [00:44:22] Speaker 04: coin terminology that they're using. [00:44:24] Speaker 04: You don't have to limit yourself to dictionary definitions, which Facebook cites in its briefs, or language from the preferred embodiments. [00:44:30] Speaker 04: You can look at those patents, which are intrinsic evidence. [00:44:33] Speaker 00: The term graphic was also well known at that time. [00:44:36] Speaker 00: Why wasn't that used in the patent? [00:44:39] Speaker 04: Well, Your Honor, there is in the specification. [00:44:41] Speaker 04: It certainly talks about it in the claims. [00:44:44] Speaker 04: In the claims? [00:44:45] Speaker 04: In the claims, no, Your Honor, but that's because it uses terms [00:44:49] Speaker 04: that were meant to encompass both, it doesn't also just say text, it was meant to encompass both text and graphics. [00:44:55] Speaker 04: And so I think that's probably the best reading. [00:44:57] Speaker 04: If you look at the fact that the inventors were using terminology well known in the art to encompass both text and graphics, they shouldn't also have to repeat it in the claims itself. [00:45:07] Speaker 04: So that would be our response on the coin terms argument. [00:45:09] Speaker 04: The second point I would mention briefly is the fact that claims 14 and 15 are independent claims, are clearly independent claims. [00:45:15] Speaker 04: And all independent claims have different scopes than other independent claims. [00:45:19] Speaker 04: Otherwise, they wouldn't be independent claims. [00:45:22] Speaker 04: But the key point is, under Facebook's reading, the word all would be completely superfluous. [00:45:27] Speaker 04: They would give the exact same construction to the claim in independent claims 14 and 15. [00:45:32] Speaker 02: Actually, they say, no, it's not the same, because the district court added the word capability, right? [00:45:37] Speaker 04: Well, your Honor, no. [00:45:39] Speaker 04: In their view, and I don't want to speak but words in their mouth, but if you read claims 14 and 15, [00:45:45] Speaker 04: and you take out the word all, in their view, it would read exactly the same. [00:45:49] Speaker 04: It would not change the interpretation of how those claims operate. [00:45:53] Speaker 04: That's the definition of rendering the word superfluous. [00:45:57] Speaker 04: It would read exactly the same in their view. [00:45:59] Speaker 04: Automatic generation of instances versus. [00:46:01] Speaker 02: I thought that what they were saying, and I could be wrong, but I thought that I heard them say is that without all, it would merely require capability. [00:46:09] Speaker 02: In addition to the word all, it requires that you actually [00:46:13] Speaker 02: link in each instance. [00:46:15] Speaker 04: I don't think that that's not my understanding. [00:46:17] Speaker 04: I think they rely on the word automatic generation for that point. [00:46:21] Speaker 04: And whether it's all instances or instances wouldn't change the construction of claims 14 and 15. [00:46:27] Speaker 04: They rely on automatic, but it's not disputed amongst any of the parties that the generation of links across all of these claims is in fact automatically done, whether it's all or 99% of the links and not all the links. [00:46:40] Speaker 04: The last point I would make is coming back to the prosecution history, which of course will submit the full document, and I think it's just best for the court to read that full document and come to a judgment. [00:46:51] Speaker 04: But I would just say a couple things about the prosecution history. [00:46:54] Speaker 04: Again, if you look on 1178, when you're talking about prosecution history estoppel, you're talking about clear, unmistakable, and deliberate disavowals of claim scope. [00:47:04] Speaker 04: That's the standard. [00:47:06] Speaker 04: Here, it cuts exactly opposite way when it says, [00:47:10] Speaker 04: Applicants be mindful, or I mean, office be mindful in this preliminary discussion, we are mindful of the fact that the differences between the disclosure of the two references does not necessarily shed any light on the scope of applicant's claims. [00:47:25] Speaker 04: So it's in fact saying, it's putting the caveat. [00:47:28] Speaker 04: So when you're talking about clear, unmistakable disavowals, you first have to read it against that caveat in this section. [00:47:35] Speaker 04: Then even if we do look at that preliminary section, which is talking about the invention writ large, which included some claims that required each and every instance and others that did not. [00:47:47] Speaker 03: Mr. Shah, this is supposed to be a rebuttal. [00:47:49] Speaker 03: And I think you're arguing some new points that we haven't considered. [00:47:54] Speaker 03: We might hear from Mr. Hunger if you need to continue. [00:47:57] Speaker 03: Is this? [00:47:59] Speaker 04: Oh, I just meant to respond to his reliance on the same page of the prosecution history estoppel. [00:48:05] Speaker 04: Okay. [00:48:06] Speaker 04: That was the only point, but I have nothing further unless this court has any questions. [00:48:12] Speaker 03: Okay. [00:48:13] Speaker 03: Okay. [00:48:14] Speaker 03: I think we have it under as well in mind as we might. [00:48:18] Speaker 03: Thank you both. [00:48:18] Speaker 03: The case is taken under submission.