[00:00:32] Speaker 00:
Next case for argument is 15.1448 site update solutions versus CBS Corp.

[00:01:14] Speaker 00:
Mr. Tchaikovsky.

[00:01:16] Speaker 02:
Yes, thank you.

[00:01:17] Speaker 02:
May it please the court.

[00:01:18] Speaker 02:
Yar Tchaikovsky, Paul Hastings on behalf of Appellant Newegg.

[00:01:23] Speaker 02:
Your Honor, we stand before you for the second time here post-Octane, where the Supreme Court in Octane changed the 285 standard to be a less rigid and... I think we understand that.

[00:01:38] Speaker 03:
Why is the claim construction frivolous here?

[00:01:41] Speaker 02:
Why is the claying construction frivolous?

[00:01:45] Speaker 02:
The court found that the constructions in the Eastern District of Texas were frivolous.

[00:01:51] Speaker 02:
And then as we moved from Northern District of California in this case, the court found that the constructions were not entirely frivolous or not entirely objectively unreasonable.

[00:02:05] Speaker 02:
And so given the lower standard, as OPALIS Technologies has stated, the considerably lower standard

[00:02:11] Speaker 02:
that we have in octane, that the court here used the exact same language from the first opinion from Brooks furniture and used that language and repeated it again.

[00:02:21] Speaker 02:
And what we have in octane is this less rigid.

[00:02:26] Speaker 03:
I think it's a question.

[00:02:27] Speaker 03:
I don't think the district court applied the wrong standard here.

[00:02:30] Speaker 03:
The question is whether, applying the right standard, he reached the wrong result.

[00:02:36] Speaker 03:
And that depends on whether his determination that the claim construction position in California was not frivolous was correct or incorrect.

[00:02:50] Speaker 02:
So Your Honor, let me answer that in two parts if I may.

[00:02:54] Speaker 02:
Two, I would say under the high mark where there can be an error of law and then there's the clear error of the application of the facts or evidence.

[00:03:04] Speaker 02:
The error of law here is the standard that was applied here in the Northern District of California to those constructions was not entirely frivolous.

[00:03:13] Speaker 02:
The language I have is not entirely unreasonable or frivolous, not completely without support, not entirely frivolous or objectively unreasonable.

[00:03:24] Speaker 02:
That was entirely, completely, that's a zero-tolerance standard.

[00:03:29] Speaker 02:
That's looking for in each... I don't want to address the question I'm asking.

[00:03:34] Speaker 03:
Was the claim construction frivolous or not?

[00:03:38] Speaker 02:
And the answer is yes.

[00:03:39] Speaker 02:
As we've pointed out in our brief, the constructions, plural, were frivolous in and of themselves.

[00:03:47] Speaker 02:
As Octane points out with respect to its standard and the lack of substantive strength of the position, we have a situation here where there was no support for the legal position

[00:04:01] Speaker 02:
of a special purpose computer with no algorithm.

[00:04:04] Speaker 02:
In fact, each one of those positions was shot down by the district court as a legal position.

[00:04:09] Speaker 02:
So we have the absence of legal support.

[00:04:12] Speaker 00:
Well, we're only here because they lost.

[00:04:14] Speaker 00:
I mean, that's a given.

[00:04:16] Speaker 00:
In all of these cases where attorney's fees, clearly the party is lost.

[00:04:19] Speaker 00:
And the district court clearly saw some distinction between what they offered up in Texas and what they offered up here.

[00:04:27] Speaker 00:
He found that distinction to not be relevant in terms of a finding

[00:04:31] Speaker 00:
a violation, but he says they added some more stuff, right?

[00:04:35] Speaker 00:
He understood.

[00:04:35] Speaker 00:
And as I read his opinion, he said, you know, there's this inmate cat's case, and there was some ambiguity as to how broadly it has to be construed.

[00:04:44] Speaker 00:
So I can see where there might have been some confusion in the law, and therefore, this isn't sufficient.

[00:04:50] Speaker 00:
Why was the district court wrong?

[00:04:52] Speaker 00:
Why did he abuse his discretion?

[00:04:54] Speaker 02:
Right.

[00:04:55] Speaker 02:
And again, the district court was, as we've stated in our papers, the district court was wrong.

[00:05:01] Speaker 02:
because we have a situation where we never had any support for this special purpose computer, no algorithm position.

[00:05:07] Speaker 02:
We got to the reply brief in California after almost two and a half years of litigation.

[00:05:12] Speaker 02:
Goss was cited, searched for and located in Northern District of Illinois opinion that doesn't support the position.

[00:05:20] Speaker 02:
In fact, the district court confirmed it doesn't support the position that was propounded by the plaintiff.

[00:05:25] Speaker 02:
And then there was a Katz remand from the Central District of California opinion

[00:05:30] Speaker 02:
that somehow it was a burden shifting position to the defendant, to the defendants, excuse me, with respect to we have the duty to provide evidence that this is not a general purpose computer.

[00:05:41] Speaker 02:
There was an obfuscation of whether we're asking for a special purpose computer or a general purpose computer and that's exactly what the plaintiff was doing before dismissal.

[00:05:50] Speaker 03:
It seems to me that the issue here is that there is a special purpose computer but that without additional software

[00:05:58] Speaker 03:
it doesn't perform the functions that are described here.

[00:06:02] Speaker 03:
And that's basically, as I understand it, your position.

[00:06:05] Speaker 03:
In other words, that there's a special purpose computer because the GCI software is part of that and maybe other things in it, but that that alone is not sufficient to perform the functions here.

[00:06:18] Speaker 03:
Isn't that your position?

[00:06:19] Speaker 02:
So your honor, respectfully, that's not our position.

[00:06:21] Speaker 02:
It's not true.

[00:06:22] Speaker 02:
No.

[00:06:22] Speaker 02:
In fact, our position would be at best we have general purpose computer components, whether it's a CGI script, a website database, a form.

[00:06:33] Speaker 02:
Those are general purpose computers.

[00:06:36] Speaker 02:
They don't do anything special.

[00:06:38] Speaker 02:
And then there is no algorithm.

[00:06:40] Speaker 02:
And as this court has made clear, quite frankly, in the EON versus AT&T mobility case,

[00:06:48] Speaker 02:
There's really two ways to look at it.

[00:06:49] Speaker 00:
Yeah, we're familiar with EON.

[00:06:51] Speaker 00:
Didn't EON come after this, though?

[00:06:53] Speaker 02:
EON did come after this.

[00:06:55] Speaker 00:
I mean, the court felt the need in EON to clarify a lot of what had been going on in the cases.

[00:07:01] Speaker 00:
Why can't we look at that and say, look, this preceded EON.

[00:07:05] Speaker 00:
There was, I won't say confusion.

[00:07:07] Speaker 00:
That might be too strong.

[00:07:08] Speaker 00:
But there was some give and take in the cases.

[00:07:11] Speaker 00:
Clearly, they lose.

[00:07:12] Speaker 00:
They were wrong.

[00:07:13] Speaker 00:
But it's not sufficient to make it frivolous or unreasonable.

[00:07:16] Speaker 02:
And I would suggest that EON is a great statement, an overarching statement of what the law was.

[00:07:23] Speaker 02:
As we've provided in our brief, the law from aristocrat blackboard on forward, I don't think there was any lack of clarity in what the law was.

[00:07:31] Speaker 02:
We had a cat's exception.

[00:07:32] Speaker 02:
And if you didn't meet the cat's exception, you needed to aid an algorithm to be a special purpose computer, whether in prose or in steps.

[00:07:40] Speaker 02:
It doesn't have to be source code.

[00:07:41] Speaker 02:
No one's suggesting that.

[00:07:43] Speaker 02:
But that's what you needed in this situation.

[00:07:46] Speaker 02:
and what we had.

[00:07:47] Speaker 02:
And we presented that to plaintiffs throughout this process.

[00:07:51] Speaker 02:
And there was no effort made.

[00:07:53] Speaker 02:
Yes, there was additional computer structures, general structures added.

[00:07:58] Speaker 02:
But those general structures were not special structures.

[00:08:01] Speaker 02:
And then we had a reach for goss and cats, which don't support the position.

[00:08:06] Speaker 03:
And in fact, we were... I don't think this depends on an interpretation of the cases.

[00:08:10] Speaker 03:
I think it depends on an interpretation of the claims and specification here.

[00:08:16] Speaker 03:
and the determination of whether the construction for which they were arguing was frivolous in the light of the facts of this case.

[00:08:27] Speaker 03:
And you may want to argue this as, you know, depending on case authority and things like that, which is fine, but you're not, in my mind, addressing the heart of the issue when you do that.

[00:08:41] Speaker 02:
focusing on the heart of issue, which is the aggregate of defects, which you can see on page 45 of our brief, which are the factual defects in the claim.

[00:08:50] Speaker 02:
We have a demonstrative in there that shows all of the defects in one claim with eight means plus function elements that was asserted by a experienced patent litigant, Acacia, which should be a factor under octane, and an experienced patent litigation counsel

[00:09:10] Speaker 02:
the Goldstein and Lipski firm, who had actually been before this court, on means plus function elements and actually found to be indefinite vis-a-vis aristocrat in 2010 in the Brown case.

[00:09:23] Speaker 01:
And they should have known the law.

[00:09:24] Speaker 01:
So all of these factors that you set out in your brief, the court was well aware of those.

[00:09:33] Speaker 01:
And the court had to endure the arguments.

[00:09:36] Speaker 01:
And probably part of the frustration that you cite in your brief,

[00:09:39] Speaker 01:
The court decided that this was not enough.

[00:09:44] Speaker 01:
What is it that, why should we, why is that an abuse of discretion?

[00:09:49] Speaker 01:
You know, oxygen works both ways, doesn't it?

[00:09:53] Speaker 01:
It gives us, it creates deference to the district court both in establishing attorney's fees and also in denying attorney's fees.

[00:10:02] Speaker 02:
And I agree with you, Your Honor.

[00:10:05] Speaker 02:
And that's why I do think what's ultimately important is this aggregation of defects.

[00:10:10] Speaker 02:
However, what is also important with respect to that abuse of discretion, as you go through the opinion of the district court judge, is applying the standard throughout, which is effectively the objectively baseless standard that was thrown out by the Supreme Court in Octane.

[00:10:27] Speaker 02:
And in fact,

[00:10:28] Speaker 02:
perhaps heightened in the sense of not entirely, or not without foundation, or not completely, looking for the absence of any support.

[00:10:38] Speaker 02:
The test in Octane was a position that simply stands out from others with respect to the substantive strength of a party's litigation position, governing the governing law and facts of the case.

[00:10:50] Speaker 02:
And instead what we see throughout this opinion, from the summary on page 13, A13,

[00:10:56] Speaker 02:
to the conclusion by this court on A32 is that we have language saying not entirely.

[00:11:03] Speaker 02:
So we were frivolous in Texas.

[00:11:05] Speaker 01:
Can we understand what the district court there was also saying?

[00:11:09] Speaker 01:
And the district court here has experience in PAN cases.

[00:11:13] Speaker 01:
And the judge here has quite a bit of experience in PAN cases.

[00:11:18] Speaker 01:
Maybe he gets other cases that also have blunders and are based on a long legal theory.

[00:11:25] Speaker 01:
This does not stand out as totally exceptional in his experience, in the court's experience.

[00:11:32] Speaker 02:
And again, I would suggest to your honors that with a case with one patent, one claim, eight needs plus function elements, we're not talking about the multiple claims we just heard from the prior panel, that a case where a judge says positions are frivolous, highly problematic, they strain credibility, they're difficult to make logical sense of,

[00:11:53] Speaker 02:
They didn't follow the law.

[00:11:54] Speaker 02:
In fact, there was no support for their position.

[00:11:57] Speaker 02:
In fact, TECSEC, which was brought up for the first time when we were here on appeal, this court on remand shot down TECSEC as support.

[00:12:06] Speaker 02:
That can't meet the considerably lower octane standard.

[00:12:12] Speaker 02:
If this doesn't meet the considerably lower octane standard, I'm not sure what does meet the considerably, even under the abusive discretion standard when we're looking for an error of law

[00:12:21] Speaker 02:
or clear error of the application of the evidence.

[00:12:28] Speaker 04:
May it please the court, John Edmonds, for the APLI site update solutions.

[00:12:43] Speaker 03:
Let me tell you what the problem is, OK?

[00:12:45] Speaker 03:
I read the specification here.

[00:12:48] Speaker 03:
I see the functions described in the claims.

[00:12:51] Speaker 03:
And I have a very hard time finding any structure here that even arguably performs the functions.

[00:12:59] Speaker 03:
And what specification does, it talks about the GCI software and so on and so forth.

[00:13:08] Speaker 03:
But obviously specialized software is needed to perform these functions and the

[00:13:17] Speaker 03:
specification says that.

[00:13:18] Speaker 03:
If you look at column 3, line 63, by augmenting or replacing existing agents and manual registration methods with specialized tools on the local website.

[00:13:29] Speaker 03:
And then it talks about these software tools again and again and again.

[00:13:34] Speaker 03:
But it never says what the software tools are.

[00:13:39] Speaker 03:
It never sets forth an algorithm, either mathematically or in prose, and it just

[00:13:47] Speaker 03:
totally leaves it up in the air.

[00:13:49] Speaker 03:
And the problem is, it seems to me, even under the case law, as it existed, as of the time that this suit was filed, it was clear that you needed some structure to perform the functions.

[00:14:02] Speaker 03:
And I don't think that referring to that structure as specialized software or software tools satisfies that requirement.

[00:14:10] Speaker 03:
So that's the problem I'm having.

[00:14:12] Speaker 04:
So help me with that.

[00:14:14] Speaker 04:
All right.

[00:14:16] Speaker 04:
First of all, we didn't appeal to claim construction.

[00:14:20] Speaker 04:
As far as the indefinite is go, there is no... But you didn't appeal it.

[00:14:23] Speaker 03:
But the question here is the district court said it's not wholly unreasonable.

[00:14:28] Speaker 03:
And if we agree with the district court that it's not wholly unreasonable, probably Highmark tells us that we should affirm it.

[00:14:38] Speaker 03:
So the question is, is this frivolous?

[00:14:41] Speaker 03:
Is it wholly unreasonable?

[00:14:42] Speaker 03:
I'm suggesting to you that the description

[00:14:45] Speaker 03:
of the structure here is so vague and indefinite that it can't possibly potentially satisfy the requirements of having some structure in the claims that would perform a function, because it just refers to it as software tools or specialized software.

[00:15:02] Speaker 03:
That's the problem.

[00:15:04] Speaker 04:
As Side Update read this, and I would refer the court to the declaration of our expert, Dr. Lavien, which was submitted along with the claim construction,

[00:15:15] Speaker 04:
Our understanding of this technology, his understanding of the technology in the context of the patent was that these tools that he's talking about are the CGI script and the form, which would be a robot's text file and the database.

[00:15:30] Speaker 04:
And those would augment the server.

[00:15:32] Speaker 04:
So what ultimately this was was a factual dispute where there were experts on both sides.

[00:15:38] Speaker 04:
One was saying that this structure performs a function.

[00:15:42] Speaker 04:
This structure is linked to the function.

[00:15:44] Speaker 04:
another expert who said this structure doesn't perform, it isn't linked.

[00:15:49] Speaker 04:
And ultimately, and it's reflected in the court's opinion, the court blended their experts.

[00:15:54] Speaker 03:
The GCI program and these other things can't perform the functions that are described in the claim.

[00:16:00] Speaker 03:
It needs additional software, no?

[00:16:04] Speaker 04:
That was the holding of the court.

[00:16:06] Speaker 04:
What I'm saying is that side update was reasonable in that our expert, and I think whose qualifications were not

[00:16:14] Speaker 04:
challenged, his opinions were not challenged under Dr. Baer, gave clear opinions that this software was sufficient.

[00:16:20] Speaker 03:
Where does he say that?

[00:16:22] Speaker 03:
Could you show me?

[00:16:23] Speaker 03:
Sure.

[00:16:24] Speaker 04:
His declaration is at 1590 through 1619 of the appendix.

[00:16:35] Speaker 04:
The thing is it's lengthy.

[00:16:39] Speaker 04:
He has a lengthy detailed analysis

[00:16:42] Speaker 04:
And he talks about what person.

[00:16:44] Speaker 03:
Where do I look here for him to, where he says that that structure, the GCI programs, et cetera, were sufficient?

[00:16:54] Speaker 04:
OK.

[00:16:55] Speaker 04:
I would look at the analysis of means for enabling and disabling, which is at 1607.

[00:17:02] Speaker 04:
1607?

[00:17:03] Speaker 03:
Yeah.

[00:17:04] Speaker 03:
OK.

[00:17:06] Speaker 03:
What paragraph?

[00:17:07] Speaker 04:
All right.

[00:17:12] Speaker 04:
Here.

[00:17:13] Speaker 04:
You know, let me do this, because I don't have that index as well as I have the specification.

[00:17:19] Speaker 04:
What I would refer you to is we cite it in our brief, which I think is probably a better place to look, because it's quoting from his declaration.

[00:17:26] Speaker 04:
It's also quoting from the patent, and I have it right here in front of me.

[00:17:29] Speaker 04:
So, for example, at Column 6, Lines 48 through 49, it says that the installation of these tools places the... Hold on.

[00:17:37] Speaker 04:
Hold on.

[00:17:37] Speaker 04:
Hold on.

[00:17:37] Speaker 04:
Yes, certainly.

[00:17:38] Speaker 03:
48 to 49.

[00:17:39] Speaker 03:
Okay.

[00:17:39] Speaker 01:
Yeah, I've seen that.

[00:17:40] Speaker 01:
What page are we looking at, Council?

[00:17:42] Speaker 03:
153.

[00:17:44] Speaker 04:
So the tools place the CGI scripts, database tables, and HTML forms on the server.

[00:18:05] Speaker 04:
It then says that each element, I think we say referring to those exactly what was named, performs a specific function.

[00:18:12] Speaker 03:
Yeah, but I don't see that saying that the only software tools are the CGI scripts, database tables, and HTML forms.

[00:18:22] Speaker 04:
If you read, I mean, it's a detailed specification.

[00:18:26] Speaker 04:
But when it's talking about each element performs a specific function, it's talking about those specific things that preceded.

[00:18:33] Speaker 04:
And I think that's even made more clear in column seven, lines 18 through 22.

[00:18:38] Speaker 04:
It says the users provided with an HTML form and a CGI script.

[00:18:42] Speaker 04:
here and after referred to a CGI program in order to configure the enabled and table of fields files.

[00:18:49] Speaker 04:
That's where you get into configuration.

[00:18:52] Speaker 04:
So there are other references here in our brief, and I can't quote them out of memory, but there are numerous places in the spec that Dr. Lavien relied on in terms of saying that the user uses the scripts, the tables, or the database in the forms,

[00:19:13] Speaker 04:
to perform these specific functions.

[00:19:15] Speaker 04:
The opening function or the creating function, the identifying function, the transmitting function is different.

[00:19:25] Speaker 04:
That's the web server and the CGI program itself.

[00:19:31] Speaker 04:
But that's where we had a difference, because the specification teaches that these things that Newegg contends are general.

[00:19:40] Speaker 04:
The specification teaches that they perform

[00:19:43] Speaker 04:
specific functions.

[00:19:44] Speaker 04:
And that was fundamentally Dr. Levy's position that one of ordinary skill in the art would also understand, just like the specification teaches, that this software, when installed on a server, performs certain functions.

[00:19:59] Speaker 04:
And that's where we saw the special purpose computer.

[00:20:02] Speaker 04:
Now, the court has disagreed with that.

[00:20:04] Speaker 04:
The court said that additional disclosure is necessary and on

[00:20:14] Speaker 04:
means for creating the court, instead of referring to the CGI script, the database, and the form, the court referred to a disclosed server algorithm.

[00:20:23] Speaker 04:
But if you read the spec, the disclosed server algorithm performed the same functions that we were talking about in terms of what we were calling a CGI script, a database, and a form.

[00:20:35] Speaker 04:
So it's not just something where there was a difference in views, a reasoned difference in views that was based on

[00:20:42] Speaker 04:
the specification and based upon a reasoned expert's opinion as to whether this software is sufficient to perform these functions or whether... Were the CGI programs in the prior art?

[00:20:54] Speaker 04:
Yes, they're mentioned in the prior art, yes.

[00:20:56] Speaker 03:
Yeah, so this is saying we're coming up with some new software that would enable you to perform the functions that are described here.

[00:21:06] Speaker 04:
Well, the claim has to be read as a whole.

[00:21:07] Speaker 04:
The CGI program is not the point of novelty.

[00:21:10] Speaker 04:
And what this pattern is primarily directed to is the local performance of these functions.

[00:21:15] Speaker 03:
It says, for example, in column four, the process has begun by distributing a set of search engine update software tools to the website owner.

[00:21:22] Speaker 03:
Those software tools are new kinds of software, right, that enable the functions here to be performed.

[00:21:29] Speaker 04:
I think the fact that this is being done.

[00:21:31] Speaker 04:
Is it true or not?

[00:21:32] Speaker 04:
No, it's not.

[00:21:33] Speaker 04:
I may have misunderstood your question, but what I'm trying to say is that,

[00:21:39] Speaker 04:
What it's saying is that these are now local functions that are being performed on the server.

[00:21:43] Speaker 04:
So it's taking a burden off of the crawler.

[00:21:46] Speaker 04:
It's allowing all kinds of benefits for the website owner.

[00:21:50] Speaker 04:
So a CGI script was not new, but its use in this method and the apparatus here with the claim, that is new.

[00:22:00] Speaker 04:
So I'm not saying that robots.txt didn't exist before.

[00:22:05] Speaker 04:
I'm not saying there were not CGI scripts before.

[00:22:08] Speaker 04:
their use in this fashion is what is new.

[00:22:11] Speaker 03:
Maybe their use in this fashion is new, but in order to be used in this fashion, you need new software, which is repeatedly referred to here, but not described in any way that's specific or provides an algorithm.

[00:22:26] Speaker 04:
I don't know if the district court held that.

[00:22:28] Speaker 04:
I mean, the district court said that... It's not a question of what the district court held.

[00:22:32] Speaker 03:
It's a question of whether the district court's finding of non-fragility is sustainable.

[00:22:38] Speaker 04:
Well, I think the district court's finding it non-frivolity.

[00:22:41] Speaker 04:
In each instance where the district court criticized and they quoted the district court, in each instance the district court provided further detailed analysis as to why there was a basis for each of the positions that Side Update took.

[00:22:56] Speaker 04:
So it talked about that there was a dispute.

[00:23:01] Speaker 04:
And the district court said that Side Update misunderstood the level of detail.

[00:23:07] Speaker 04:
That was a dispute over whether the details were there.

[00:23:10] Speaker 04:
And that's the thing.

[00:23:11] Speaker 04:
We have a different understanding as to whether this software performs these functions without any additional teaching.

[00:23:18] Speaker 04:
And the court held that it required additional teaching, which it added certain steps in an algorithm.

[00:23:24] Speaker 04:
And we respect that.

[00:23:25] Speaker 04:
But our view is certainly reasonable.

[00:23:27] Speaker 04:
And it was based upon a reasonable view of the patent, based upon what the patent says that these functions perform.

[00:23:36] Speaker 04:
So I don't think in every case, one side is wrong.

[00:23:42] Speaker 04:
And in almost every claim construction battle, one side is wrong.

[00:23:47] Speaker 04:
And that's not the touchstone.

[00:23:48] Speaker 04:
I think what the court should focus on is that in the TechSec case we cited, and the court said, well, they don't have enough detailed pros to fall under TechSec.

[00:24:02] Speaker 04:
Well, we've accepted that, but there's a factual, reasonable factual dispute over whether there were sufficient detailed pros in the specification to follow under TechSec to where identifying the software itself as opposed to some type of steps in an algorithm would be sufficient.

[00:24:19] Speaker 04:
It was a reasonable dispute.

[00:24:20] Speaker 04:
It was a position to where the plan fell short, but a position that wasn't without support in the specification.

[00:24:27] Speaker 04:
I'd also point out on the indefiniteness, new eggs

[00:24:32] Speaker 04:
first claim construction briefing in Texas did not claim that these elements were indefinite.

[00:24:38] Speaker 04:
So they're saying that, well, you plaintiff have acted frivolously because you didn't realize your claim elements were indefinite when they didn't either.

[00:24:48] Speaker 04:
And it's their job as a defendant to point those kinds of things out.

[00:24:52] Speaker 04:
So if the defendant doesn't initially point it out, I think it's more difficult to say that the plaintiff

[00:24:58] Speaker 00:
should be faulted for not... What led you then in California to change your construction?

[00:25:06] Speaker 04:
In Texas, the claim constructions, I think, were inartful.

[00:25:12] Speaker 04:
I think if you read them as a whole, I think they were trying to argue, the arguments were making a day, but it was not well-written.

[00:25:19] Speaker 04:
And in Texas, there was a mark-and-brief, there was a response.

[00:25:23] Speaker 04:
The response pointed out deficiencies in the plaintiff's constructions.

[00:25:28] Speaker 04:
the case was transferred before a reply came due.

[00:25:31] Speaker 04:
So the plaintiff had no ability to correct those.

[00:25:34] Speaker 04:
When it went to California, there was essentially a reset.

[00:25:36] Speaker 04:
And the plaintiff said, we're correcting these issues.

[00:25:39] Speaker 04:
We're coming forth with more structure in our constructions.

[00:25:43] Speaker 04:
So my colleague said that there was a finding that those claim constructions were frivolous.

[00:25:48] Speaker 04:
That's not correct.

[00:25:48] Speaker 04:
That's not what the district court said.

[00:25:51] Speaker 04:
He said, I would have likely found them frivolous had they not changed them.

[00:25:53] Speaker 04:
He did not say they were frivolous.

[00:25:56] Speaker 04:
You know, I'd also point out, look at Newegg's alternative constructions for these claim elements that it claims that our position was frivolous.

[00:26:06] Speaker 04:
Its alternative constructions are not that far from our constructions.

[00:26:10] Speaker 04:
They have a web server, a CGI script.

[00:26:13] Speaker 04:
You know, we're not saying they're frivolous.

[00:26:15] Speaker 04:
The parties have positions.

[00:26:16] Speaker 04:
Parties have reasonable positions.

[00:26:17] Speaker 04:
They're going to be supported by experts.

[00:26:19] Speaker 04:
They're supported by the city.

[00:26:20] Speaker 03:
Do their constructions include additional software beyond the CGI and the...

[00:26:26] Speaker 03:
Robots, whatever.

[00:26:28] Speaker 04:
Newegg's alternative construction for means for transmitting is a website server.

[00:26:37] Speaker 04:
That's it.

[00:26:39] Speaker 04:
It's on appendix 8.

[00:26:41] Speaker 04:
The court, in its opinion, goes through the party's proposed constructions.

[00:26:47] Speaker 04:
Newegg's proposed construction for means for parsing the alternative construction, if it wasn't found indefinite, was a website server which parses a CGI script.

[00:26:56] Speaker 04:
Not very far from the constructions that Site Update was proposing in this case.

[00:27:02] Speaker 04:
So these were proposed if it wasn't at that point?

[00:27:04] Speaker 04:
If it wasn't.

[00:27:05] Speaker 04:
But again, for them to say they're not admitting that their constructions are frivolous, the same thing would apply for means for updating.

[00:27:13] Speaker 04:
They're not admitting their constructions are frivolous, yet their alternative constructions are very similar to what ours were and are based upon the same concept that the CGI script would be sufficient programming to where you don't need additional algorithmic

[00:27:26] Speaker 04:
disclosure.

[00:27:27] Speaker 04:
So again, I don't think they can have it both ways to say that they've taken all these positions and now, just because we've lost, we should be held under a higher standard.

[00:27:38] Speaker 04:
These claims have been allowed twice.

[00:27:40] Speaker 04:
It was allowed once by the patent officer reissued.

[00:27:44] Speaker 04:
They were reissued.

[00:27:46] Speaker 04:
And the examiner had no problem with finding structure in the specification for these elements.

[00:27:52] Speaker 04:
I think that

[00:27:53] Speaker 04:
You know, that adds to the reasonableness of this.

[00:27:55] Speaker 04:
But I think fundamentally, New Lake has not alleged clear error.

[00:28:00] Speaker 04:
So we're just looking at whether the district court abused its discretion.

[00:28:05] Speaker 04:
And that's a very high standard.

[00:28:06] Speaker 04:
I think this district court is very experienced.

[00:28:11] Speaker 04:
This district court in the northern California is very no-nonsense.

[00:28:14] Speaker 04:
And the district court has done a detailed analysis twice.

[00:28:19] Speaker 04:
And the district court heard every argument

[00:28:21] Speaker 04:
that Newegg made.

[00:28:22] Speaker 04:
The hearing on this lasted, I think, two hours.

[00:28:24] Speaker 04:
They finally had to just kind of send everybody home because the court was closing.

[00:28:28] Speaker 04:
And the district court has heard all of this and has decided in its judgment that this is not an exceptional case.

[00:28:35] Speaker 04:
It stands out from the other.

[00:28:37] Speaker 04:
As the court said, octane goes both ways.

[00:28:40] Speaker 04:
And there's been no error here.

[00:28:42] Speaker 04:
The district court's decision should be affirmed.

[00:28:46] Speaker 04:
Its discretion should be appealed.

[00:28:48] Speaker 04:
Thank you.

[00:28:55] Speaker 02:
Thank you, Your Honor.

[00:28:55] Speaker 02:
It's George Iacoste again for Appellant Newick.

[00:28:59] Speaker 02:
With regard to indefiniteness, we can look at A994.

[00:29:04] Speaker 02:
We did assert in East Texas that the terms were indefinite, so that's actually not correct statement, that we took the position the terms were indefinite.

[00:29:12] Speaker 02:
And in fact, with respect to those terms that were identified as

[00:29:16] Speaker 02:
as your honor pointed out, that for the means for transmitting and the means for parsing, we argued those terms were indefinite.

[00:29:21] Speaker 02:
We provided an alternative construction given the burden on indefiniteness, but we said that does not meet the test.

[00:29:28] Speaker 02:
That is not sufficient.

[00:29:29] Speaker 02:
It's a generic structure, and it does not meet the test because the algorithm is not there.

[00:29:33] Speaker 02:
The fact that the patent had been reissued is in some sense of no consequence.

[00:29:37] Speaker 02:
It issued in 1999 in a pre-WMS gaming situation, and it reissued in 2009 as blackboard

[00:29:46] Speaker 02:
and aristocrat came to be, and we didn't even have the PTO's examination guidelines with respect to the means plus function come in after the reissue issued.

[00:29:56] Speaker 02:
With respect to what your honor focused on on the CGI scripts, I mean, that's the exact problem.

[00:30:02] Speaker 02:
These are generic software components that the district court said it would likely be found frivolous if they maintained just that position, because six out of the eight terms, all they did until we got to California to say,

[00:30:14] Speaker 02:
Hey, CGI script, software, without providing more, even though this specification has a lot more detail and a lot more information in it, and just adding later website database, a website server, which could be my home computer sending information back and forth, tells me nothing.

[00:30:33] Speaker 02:
You know, that can't be a routine patent case.

[00:30:36] Speaker 02:
We take on the expert, and the expert, Dr.

[00:30:41] Speaker 02:
I mean, this is a red herring with respect to whether we had to Daubert the expert.

[00:30:45] Speaker 02:
We weren't going to a jury trial here and trying to exclude evidence before our jury.

[00:30:49] Speaker 02:
This would be our fact finder.

[00:30:51] Speaker 02:
And quite frankly, we filed a surreply after they filed the opposition of the expert.

[00:30:57] Speaker 02:
In their reply, they filed an opposition, or they filed the expert declaration.

[00:31:02] Speaker 02:
And we filed a surreply pointing out the defects

[00:31:04] Speaker 02:
in this expert's opinion.

[00:31:06] Speaker 02:
And this happened just two weeks before the Markman hearing.

[00:31:08] Speaker 02:
We had a tech tutorial coming.

[00:31:11] Speaker 02:
We had the Markman hearing coming.

[00:31:12] Speaker 02:
So we did what we could and point out in a short reply the defects.

[00:31:16] Speaker 02:
And those defects are significant.

[00:31:18] Speaker 02:
Council spoke about the means for enabling, which I'll note is not in his brief before this court.

[00:31:25] Speaker 02:
And the defects in the expert report is that the law that the

[00:31:33] Speaker 02:
expert relied on in his report was the law provided to him by counsel, which is the law that the district court has found actually had no support for their opinion.

[00:31:43] Speaker 02:
You know, we see that in the expert's declaration.

[00:31:46] Speaker 02:
And in that long lengthy declaration, if we look at the means for enabling, there is no linkage, no linkage conducted in that expert's declaration.

[00:31:57] Speaker 02:
In fact, I opened up

[00:31:59] Speaker 02:
what counsel is pointing to, and you asked about the expert declaration in A1610.

[00:32:05] Speaker 02:
At the end, paragraph 79, he just, a throwaway sentence after citing many paragraphs of the specification, which paragraphs they could have included as arguing their algorithms with respect to these elements, but they didn't, both in Texas and in California.

[00:32:21] Speaker 02:
And just the expert says, oh, somehow this is somehow linked, without telling us how it's linked.

[00:32:28] Speaker 02:
So there's an absence of linkage, both by the party and the expert.

[00:32:32] Speaker 02:
And that's why you don't see the expert's opinion cited once by the district court in either opinion, Brooks Furniture or Octane.

[00:32:41] Speaker 02:
The Levian declaration is cited in neither.

[00:32:45] Speaker 02:
In fact, just as Your Honor's concurrence and Raylon pointed out, when we see someone advocate this uninformative declaration, that is some evidence of bad faith.

[00:32:56] Speaker 02:
And that's what we're seeing here, is this constant refraining of this expert declaration somehow saving them.

[00:33:03] Speaker 02:
And it doesn't save them here.

[00:33:04] Speaker 00:
I think your time is concluded.

[00:33:08] Speaker 00:
Thank you.

[00:33:09] Speaker 02:
Thank you, Your Honor.