[00:00:09] Speaker 02:
The next case for argument is 15-1686, TechSac versus Adobe Systems.

[00:00:55] Speaker 02:
Okay, I think we're ready, Mr. Oakes.

[00:00:57] Speaker 02:
I want to be ready.

[00:01:05] Speaker 04:
Thank you.

[00:01:05] Speaker 04:
May it please the court, Michael Oakes, for the appellant, TechSec, Inc.

[00:01:09] Speaker 04:
The district court's suespante grant of summary judgment of no infringement based on the selecting a label limitation in this case with both procedurally and substantively flawed and resolving either one of those errors in TechSec's favor warrants reversal of the court's judgment.

[00:01:25] Speaker 04:
With respect to the procedural errors, despite the notice requirements of Rule 56 and this Court's admonition that sui sponte grants of summary judgment are disfavored, the District Court rejected the arguments that Adobe advanced in its pre-discovery motion for summary judgment and no infringement, and instead raised an issue for the first time at the hearing with no prior notice, posed only as a question to the parties that it was considering having the parties brief.

[00:01:50] Speaker 02:
And so I understand, but you appreciate we've read the transcript.

[00:01:55] Speaker 02:
At the end, certainly, the court observes that neither side feels the need to further brief this issue.

[00:02:02] Speaker 02:
That's true.

[00:02:03] Speaker 02:
You had an opportunity, did you not, before the district court?

[00:02:06] Speaker 02:
I mean, in your brief, you say Adobe had an opportunity and it didn't ask for briefing.

[00:02:10] Speaker 02:
Well, I don't see in the transcript where the opportunity presented to Adobe was any different or any more than the opportunity presented to you for additional briefing.

[00:02:20] Speaker 04:
That's true.

[00:02:21] Speaker 04:
Either party could have briefed the issue.

[00:02:22] Speaker 04:
Rule 56 states that if the court is considering

[00:02:25] Speaker 04:
a grant of summary judgment, usually the proper procedure is to invite the motion from the party who would benefit from that.

[00:02:33] Speaker 04:
And here they invited the motion from Adobe.

[00:02:36] Speaker 04:
Adobe declined the opportunity to brief it.

[00:02:38] Speaker 04:
So at that time, there's no pending motion from Adobe.

[00:02:41] Speaker 04:
The court didn't indicate that it was moving on its own.

[00:02:44] Speaker 04:
We have been precluded from the discovery order from taking discovery on any issue that was not raised by Adobe in a brief.

[00:02:50] Speaker 04:
So we couldn't have taken discovery on the issue that the court was discussing anyway.

[00:02:53] Speaker 02:
Well, so why didn't you say that?

[00:02:55] Speaker 02:
You didn't tell that, say that to the district court.

[00:02:57] Speaker 04:
Because I understood Adobe to be declining the invitation to brief that issue.

[00:03:00] Speaker 04:
There's no pending motion at that point.

[00:03:02] Speaker 02:
Well, she clearly said neither side feels the need to further brief.

[00:03:06] Speaker 02:
She didn't say since Adobe isn't going to brief further or bring a new motion.

[00:03:11] Speaker 04:
At that point, I believe there was nothing for our side to brief because the invitation to brief that issue by the moving party was declined.

[00:03:17] Speaker 04:
the court did not indicate that it was moving on its own merits.

[00:03:21] Speaker 04:
And so there was nothing for me to brief.

[00:03:22] Speaker 04:
There was no pending claim construction that the court had proposed at the hearing.

[00:03:26] Speaker 04:
That word pre-existing label never came up at the hearing.

[00:03:29] Speaker 04:
So I would have been briefing against myself, I suppose.

[00:03:32] Speaker 04:
There was really nothing pending as the non-movement

[00:03:35] Speaker 04:
for me to brief.

[00:03:36] Speaker 04:
There was a motion for a summary judgment of non-infringement.

[00:03:40] Speaker 04:
There was, and we had already briefed that and we actually were successful.

[00:03:43] Speaker 04:
This was a new issue that the court raised.

[00:03:46] Speaker 01:
This was a new issue in conjunction with the hearing on that motion.

[00:03:50] Speaker 04:
On that motion, yes, an issue not briefed by Adobe, an issue that we were precluded from taking care of.

[00:03:56] Speaker 01:
This was an argument she felt was compelling that she didn't find in your brief.

[00:04:01] Speaker 04:
She actually firstly asked Adobe, you did not move on this ground, did you?

[00:04:05] Speaker 04:
And Adobe said, we did not move on this ground.

[00:04:07] Speaker 01:
And then she invited briefing.

[00:04:09] Speaker 01:
Yes.

[00:04:09] Speaker 01:
Obviously, she felt that was an issue that either was overlooked or wasn't fully appreciated by the parties.

[00:04:16] Speaker 01:
But she felt that it was important and asked for the briefing.

[00:04:21] Speaker 04:
Yes.

[00:04:22] Speaker 04:
And the moving party that would have benefited from that declined the invitation.

[00:04:25] Speaker 04:
So again, there was no pending motion.

[00:04:29] Speaker 04:
Under Rule 56, all benefits, all notice, all is supposed to be taken in the favor of the not moving party.

[00:04:35] Speaker 04:
The moving party declined to brief that issue, so we deem that to be not an issue that they deem to be sufficient to be grounds for a grant of summary judgment.

[00:04:44] Speaker 04:
Again, we couldn't have taken discovery on that issue.

[00:04:47] Speaker 04:
Discovery was expressly denied.

[00:04:49] Speaker 04:
If you look at A56, if you look at the discovery order, it says expressly, we strike every one of TechSec's discovery requests that are not explicitly necessary.

[00:04:59] Speaker 04:
To respond to Adobe's question.

[00:05:00] Speaker 00:
Can I ask, and I don't remember the transcript well enough.

[00:05:07] Speaker 00:
So this is what I'm remembering, and tell me if I'm wrong, that the district court raised this question with Adobe first.

[00:05:16] Speaker 00:
That's true.

[00:05:16] Speaker 00:
That's correct.

[00:05:17] Speaker 00:
And Adobe said... We've got our ground.

[00:05:20] Speaker 00:
Not interested.

[00:05:20] Speaker 00:
Yes.

[00:05:21] Speaker 00:
So by the time you get up, the district court raises it again with you.

[00:05:30] Speaker 00:
Why at that point is it not clear that the district court is thinking about doing this sua sponte even without a motion from Adobe so that your explanation this morning, the issue was over and done with once Adobe declined the offer.

[00:05:53] Speaker 00:
Right.

[00:05:53] Speaker 00:
Doesn't seem quite to square with the scenario.

[00:05:56] Speaker 00:
that I'm remembering, perhaps.

[00:05:58] Speaker 04:
Yeah, I'm looking at A3937.

[00:06:00] Speaker 04:
The court looks.

[00:06:01] Speaker 04:
I was the one standing there, so I can say exactly what happened.

[00:06:06] Speaker 04:
She said, let me hear from TechSec briefly.

[00:06:08] Speaker 04:
So Adobe has already declined the invitation.

[00:06:10] Speaker 04:
And I said, no.

[00:06:13] Speaker 04:
I don't think the reason why Adobe is not arguing it is I don't think there's any reasonable argument to be made there.

[00:06:18] Speaker 02:
Oh, wait a minute.

[00:06:18] Speaker 02:
Can I get a clear picture?

[00:06:19] Speaker 02:
Because I'm looking at 3934, and that's when Ms.

[00:06:22] Speaker 02:
Murrow is.

[00:06:23] Speaker 04:
Right.

[00:06:23] Speaker 04:
I think his question was when she finally turns to me.

[00:06:26] Speaker 02:
Yeah, but before she turns to you, I mean, Ms.

[00:06:29] Speaker 02:
Morrow had done a quick step, I think pretty much maybe embraced where the district court was going on this other issue, and concludes by saying, I think, maybe I misunderstand the transcript.

[00:06:43] Speaker 02:
So if that were the case, would not that be sufficient to grant your judgment of non-infringement?

[00:06:48] Speaker 02:
And Ms.

[00:06:48] Speaker 02:
Morrow says, we believe it would, Your Honor.

[00:06:51] Speaker 02:
And then she says, but you didn't argue that.

[00:06:54] Speaker 04:
uh... court appeared we've had a number of additional non infringement arguments we didn't argue but so you read that as being that was the end of the matter yes that adobe is declining the the invitation once again to brief it and then again at the end of the hearing declining the invitation to brief it so again rule fifty six says the court should invite the motion what exactly did the district court say to you on this subject after adobe had sat down and you're standing right what what i was saying is the court says

[00:07:24] Speaker 04:
There's two parts here.

[00:07:25] Speaker 04:
So the first one is, all right, let me hear your quick response.

[00:07:30] Speaker 04:
This is 3935, starting at line 10.

[00:07:34] Speaker 04:
Again, this is not something explicitly raised.

[00:07:36] Speaker 04:
Let me hear your quick response.

[00:07:38] Speaker 04:
So I said, they didn't argue it.

[00:07:40] Speaker 04:
The reason they didn't argue it, I think.

[00:07:41] Speaker 00:
It's a really bad argument, right?

[00:07:43] Speaker 00:
OK.

[00:07:43] Speaker 04:
It's a terrible argument, right?

[00:07:44] Speaker 04:
And then, again, she says the 3937.

[00:07:47] Speaker 04:
So you don't think there's any briefing needed?

[00:07:49] Speaker 04:
I don't.

[00:07:49] Speaker 04:
There's a reason why Adobe didn't argue this.

[00:07:51] Speaker 04:
And Adobe actually stated,

[00:07:53] Speaker 04:
in their argument, the construction that we agreed with.

[00:07:56] Speaker 04:
Adobe said, selecting a label is selecting the type of label that I want to apply or a particular label.

[00:08:02] Speaker 04:
And we agreed with that.

[00:08:04] Speaker 04:
So again, at that time, there was no dispute.

[00:08:06] Speaker 04:
They didn't say it's selecting a pre-existing label.

[00:08:10] Speaker 04:
They actually said a construction that we would have agreed with.

[00:08:13] Speaker 04:
The court went on its own and then picked a construction that nobody talked about at the hearing.

[00:08:17] Speaker 04:
This pre-existing label is incredibly wrong, but it was also never discussed at the hearing.

[00:08:21] Speaker 04:
So there's no notice that the court is contemplating

[00:08:23] Speaker 04:
construing some term that doesn't appear anywhere in the patent, the prosecution history, its investigation, the claims, the word pre-existing doesn't appear anywhere.

[00:08:32] Speaker 02:
Can I just ask you a process question before your time runs out?

[00:08:35] Speaker ?:
Yes.

[00:08:35] Speaker 02:
Because there's just so much floating around in this case it's hard to keep track.

[00:08:39] Speaker 02:
Assuming hypothetically we would agree with you, even on the merits.

[00:08:45] Speaker 04:
Yeah, I think the merits are just as clear, yes.

[00:08:48] Speaker 02:
Then what are we left with in this case?

[00:08:52] Speaker 02:
there are still some re-judgment motions by the other side that are pending that she has not yet ruled on, right?

[00:08:59] Speaker 02:
She decided to rule on this.

[00:09:00] Speaker 02:
She didn't rule on the others, right?

[00:09:02] Speaker 04:
Well, there's only one motion pending.

[00:09:04] Speaker 02:
I understand.

[00:09:04] Speaker 04:
I'm sorry, but other issues pending.

[00:09:07] Speaker 04:
It's a little complicated getting through her ruling.

[00:09:09] Speaker 02:
Well, I understood.

[00:09:10] Speaker 04:
She rose a couple issues.

[00:09:11] Speaker 04:
She has a few more issues to respond to that she threw into her motion.

[00:09:14] Speaker 02:
Yeah, I know.

[00:09:14] Speaker 02:
But let me talk about the three alternatives that you have raised in, I'm sorry, that they have raised in red.

[00:09:21] Speaker 02:
is an alternative basis to uphold the judgment.

[00:09:24] Speaker 02:
My understanding is that all of those three were bases upon which they filed a motion for summary judgment, and that the judge has not yet ruled on those alternative bases.

[00:09:35] Speaker 02:
Am I right about that?

[00:09:37] Speaker 04:
So there's one alternative basis about the label, and the court did rule that certificate security is the label.

[00:09:45] Speaker 04:
So encryption with certificate security is the label.

[00:09:47] Speaker 04:
So they lost on that one.

[00:09:50] Speaker 04:
The multi-level security argument, they also lost on that one.

[00:09:53] Speaker 04:
The court found that we had demonstrated that the product does do two layers of encryption and does do multi-level security.

[00:10:01] Speaker 04:
So I think the court reserved on the object-oriented key manager issue.

[00:10:05] Speaker 04:
I don't believe that there was an expressed decision on that.

[00:10:08] Speaker 04:
So there's still matters pending.

[00:10:12] Speaker 04:
Correct.

[00:10:13] Speaker 04:
So the court decided, the court said,

[00:10:15] Speaker 04:
later on at the hearing when they had moved for fees that we did not find Adobe's arguments overwhelming or persuasive.

[00:10:22] Speaker 04:
So I'm not sure that there's actually, and she may have just set those aside because she didn't want to decide them, but I think the court found Adobe's motion and what Adobe presented at the hearing

[00:10:31] Speaker 04:
to be not persuasive, and that's why the court went out on its own and found another issue.

[00:10:35] Speaker 02:
She made that statement in connection with the attorney's fee.

[00:10:37] Speaker 04:
That's correct.

[00:10:38] Speaker 02:
Right, which is a different stand.

[00:10:39] Speaker 04:
Adobe said, well, we are victorious.

[00:10:41] Speaker 04:
And she said, well, actually, you weren't.

[00:10:42] Speaker 04:
I was, basically.

[00:10:44] Speaker 02:
OK.

[00:10:44] Speaker 02:
So with respect to where you stand now, you've got a few issues that are still open where they've moved for summary judgment and the court hasn't decided it.

[00:10:50] Speaker 02:
And then she's made reference, as you point out in her opinion, that she might be thinking about other things as well.

[00:10:56] Speaker 04:
That's correct.

[00:10:57] Speaker 04:
no one's raised this issue to me but I think there are some 101 concerns with this patent and then she said no one raised this labeling issue but you know I would have found that this thing doesn't actually do labeling even though she found that there's a label and she found that the label is inserted into the trailer.

[00:11:15] Speaker 00:
Can I ask you two very specific record things that confuse me a little bit but one is

[00:11:22] Speaker 00:
Just in terms of what you allege to be infringing, do you allege that the multi-level security feature is infringed when you have a single encrypted object plus a label or do you need an embedded object, a second object?

[00:11:39] Speaker 04:
So from the prior appeal.

[00:11:41] Speaker 04:
The court held that multi-level security requires two sets of encryption.

[00:11:45] Speaker 04:
So Acrobat has a feature called PDF envelope.

[00:11:49] Speaker 04:
So you need an encrypted PDF or encrypted object inside something else that is not encrypted.

[00:11:55] Speaker 00:
And the other thing I just wanted to be clear about, you have not given up the allegation that Adobe is an indirect infringer.

[00:12:04] Speaker 00:
all you did was say that if the product acrobat is not directly infringing, nobody can be a direct infringer.

[00:12:12] Speaker 00:
That's exactly right.

[00:12:13] Speaker 04:
Yes.

[00:12:14] Speaker 04:
The representation by Adobe that we gave that up, we said, if we can't prove direct infringement, then by this court's precedent, we can't prove direct infringement.

[00:12:21] Speaker 00:
I read it exactly the same way.

[00:12:22] Speaker 04:
There's one other thing I want to point out.

[00:12:24] Speaker 04:
I don't know how much time I have.

[00:12:28] Speaker 04:
One other thing about selecting a label limitation that the court found on

[00:12:32] Speaker 04:
It is only found in the method claims.

[00:12:34] Speaker 04:
There's no dispute about that.

[00:12:36] Speaker 04:
The system claims do not have that limitation.

[00:12:38] Speaker 04:
The word selecting label does.

[00:12:39] Speaker 04:
So again, it would be impossible to find summary judgment against all the claims on that.

[00:12:44] Speaker 04:
I think the court said that we waived that right because we said claim one was representative, which we said in the beginning of our brief just to demonstrate the technology.

[00:12:53] Speaker 04:
But throughout our summary judgment opposition, every time there was a distinction between system and method claims, we highlighted that in our brief to the court saying this only applies to system claims.

[00:13:02] Speaker 04:
This only applies to method claims.

[00:13:04] Speaker 04:
And same thing for the display header.

[00:13:06] Speaker 04:
This only applies to the 755 patent.

[00:13:08] Speaker 04:
The word displaying only applies to the 452.

[00:13:10] Speaker 04:
So there was no waiver where we said every claim rises or falls on claim one, whether or not the limitation is found within that claim.

[00:13:17] Speaker 04:
So I want to be clear about that.

[00:13:19] Speaker 04:
Thank you.

[00:13:19] Speaker 04:
Thank you.

[00:13:25] Speaker 03:
Thank you, Your Honor.

[00:13:25] Speaker 03:
Charlene Morrow for Adobe Systems.

[00:13:28] Speaker 03:
The procedure that the district court followed was not an abuse of discretion.

[00:13:32] Speaker 03:
The district court ruling states that at oral argument the court advised the parties that it viewed the claim term as potentially dispositive and indicated that she gave the parties opportunities to brief the issues that the parties declined and that's in her order at A-19.

[00:13:47] Speaker 02:
Yeah, but I mean you've got to acknowledge there's a bit of confusion.

[00:13:51] Speaker 02:
I mean I wasn't standing there, you two individuals were, but at the beginning she says

[00:13:56] Speaker 02:
The very first thing she says is, I don't think either side has really addressed or briefed this issue, so I want to raise it with you orally here in the court, and most likely I'm going to send you back to the offices to brief it in detail.

[00:14:09] Speaker 02:
So when she starts off, she says what it is we're talking about.

[00:14:12] Speaker 02:
It sounds like she just wants to get a bit of clarification, and we'll see if we move on.

[00:14:17] Speaker 03:
But at A3934, which is two pages past the excerpt that the court is referring to,

[00:14:24] Speaker 03:
She asks us whether ruling on selecting would be sufficient to grant you, Adobe, a judgment of non-infringement.

[00:14:32] Speaker 03:
So she expressly opposed the question to counsel before I argued this issue and before Counsel for TechSec argued this issue.

[00:14:41] Speaker 03:
She then goes on and asks me about why we didn't raise this, and I explained that.

[00:14:46] Speaker 03:
And then what I said was,

[00:14:49] Speaker 03:
We didn't necessarily argue that term.

[00:14:51] Speaker 03:
This is at A3935.

[00:14:56] Speaker 03:
We didn't separately argue that term.

[00:14:58] Speaker 03:
But obviously, if the court is amenable to hearing argument on that, and we certainly wouldn't object to TechSec being heard on that, and the court ruling on that ground rather than the other ground that we had raised, that the encryption dictionary is not a label.

[00:15:10] Speaker 03:
So at that point, we in no way declined the district court's suggestion that she hear argument on the term selecting and consider it as a potentially dispositive issue.

[00:15:21] Speaker 03:
We accepted that as a potential ground for a judgment for Adobe and said that we would not object to TechSec being heard on that and then the court ruling on that.

[00:15:32] Speaker 03:
So this was clearly a process where the court was following the usual suesponte process of identifying an issue for counsel.

[00:15:39] Speaker 03:
seeking input from both parties on how that should be heard, and then proceeding with the hearing.

[00:15:43] Speaker 02:
What about your friend's argument with respect to discovery?

[00:15:46] Speaker 02:
I'm assuming we don't agree.

[00:15:48] Speaker 02:
I know you pointed to something in the record when you said this, but let's assume that we do not see this as having degrees.

[00:15:57] Speaker 03:
There's no prejudice to TechSec.

[00:15:58] Speaker 03:
In TechSec's brief, which we didn't cite in our pleadings, but this is at page A3467, in opposition to the summary judgment motion,

[00:16:08] Speaker 03:
TechSec lays out its theory on selecting a label.

[00:16:11] Speaker 03:
It says, by selecting the encrypt with password option, this selection also establishes the content for the label, because the password security handler must retrieve certain information from the encryption dictionary, i.e., selecting a label for the object.

[00:16:26] Speaker 03:
So TechSec, in its opposition to Adobe's summary judgment motion, explained its position with regard to this entire claim limitation of selecting the label, not just what a label was.

[00:16:37] Speaker 03:
In addition, TechSec's expert similarly provided his opinion, that's at 3790, and TechSec's expert said, under the proper construction, it is my opinion that Adobe Acrobat selects a label for a PDF object.

[00:16:52] Speaker 03:
So it's not the case that TechSec was faced with a situation where it had not thought through its infringement theory or where it had not been able to present evidence on it.

[00:17:03] Speaker 00:
I was thinking a little bit about

[00:17:04] Speaker 00:
that, and I was thinking in particular about the passage in the district court's opinion rejecting doctrine of equivalence.

[00:17:13] Speaker 00:
And I think the opinion says, it's right near the end or something, it says their expert just didn't do anything about that, so you can't do that.

[00:17:21] Speaker 00:
But how could you expect their expert to say if there is a distinction between selecting from a pre-existing menu and creating,

[00:17:32] Speaker 00:
Um, then the accused product is an equivalent of that when that theory had not been in the motion itself.

[00:17:39] Speaker 00:
And why isn't that prejudice?

[00:17:41] Speaker 03:
That is the absolute... And that was, that was not our argument.

[00:17:43] Speaker 03:
We argued that specifically with regard to the other terms that had been briefed, um, where the expert didn't have the opportunity to do that.

[00:17:50] Speaker 00:
But at the argument... I apologize.

[00:17:52] Speaker 00:
Yeah, thank you.

[00:17:53] Speaker 00:
You get to, um... Too excited.

[00:17:55] Speaker 00:
No, no, I didn't mean that.

[00:18:00] Speaker 00:
They get to make a doctrine of equivalence argument, including expert evidence that does it in sufficient detail to meet the standards of our precedence.

[00:18:14] Speaker 00:
But you can't fault them for not doing that if the particular issue has not been in the motion.

[00:18:21] Speaker 00:
And so when you said there's no prejudice, I don't really understand that.

[00:18:25] Speaker 03:
So with regard specifically to doctrine of equivalence, and also with regard to the argument that the apparatus claims were different, had counsel for TechSec thought that there were issues associated with that below, they had the opportunity to argue that, raise that with the court, ask for additional briefing.

[00:18:41] Speaker 03:
She told us we could have time to prepare before we did the hearing.

[00:18:47] Speaker 03:
So there was no reason for them to

[00:18:49] Speaker 03:
Make the strategic decision that they did that they should proceed on the records.

[00:18:53] Speaker 00:
I'm sorry prepare prepare before the hearing At the beginning of the hearing she asked us whether.

[00:18:59] Speaker 00:
At which she first asked.

[00:19:01] Speaker 00:
Yeah, when she first asked she asked us.

[00:19:03] Speaker 00:
I'm sorry.

[00:19:03] Speaker 00:
I speak slowly.

[00:19:04] Speaker 00:
Can you just wait for me to finish?

[00:19:06] Speaker 00:
Thank you.

[00:19:06] Speaker 03:
I apologize.

[00:19:10] Speaker 00:
How did they have an opportunity to prepare for some before the hearing for something that was never raised until the hearing?

[00:19:18] Speaker 03:
She, at the beginning of the hearing, indicated that she asked the parties, and this is at A3933, she identified the issue and asked the parties, are you comfortable addressing that right now or do you want time to go back and think about that?

[00:19:37] Speaker 03:
And so she was giving us the option at the hearing itself.

[00:19:41] Speaker 00:
I'm sorry, you said prepare before the hearing.

[00:19:46] Speaker 03:
No, Your Honor, I apologize if I misspoke.

[00:19:49] Speaker 03:
I said she gave us the opportunity at the hearing to take a break and come back, or obviously at that point to ask for another opportunity to be heard on this issue.

[00:20:01] Speaker 03:
She said, and this is at A934 to 33, are you comfortable addressing that right now, or do you want time to go back and think about it?

[00:20:10] Speaker 03:
And so we had the opportunity to ask her, both sides had the opportunity to ask her to not take up hearing on the issue at all at that time.

[00:20:18] Speaker 02:
I'm sorry, I'm looking at the transcript and I'm not seeing what you're seeing because when the district court raises that and says, are you comfortable addressing that right now or do you want to go back and think about that, seems to me she's just talking to you because you're the only one that responds to her question.

[00:20:36] Speaker 02:
By the time we get to Mr. Oaks, you've done your thing and responded and the court says, all right, let me hear Mr. Oaks.

[00:20:44] Speaker 02:
So it doesn't seem to me, I wasn't there, but all I see in the transcript is she seems to be directing that question to you and you're the only one that ever responds to that question, right?

[00:20:55] Speaker 03:
But counsel for TechSec, at any of the three opportunities where they were given the opportunity to say they wanted to brief this could also have said,

[00:21:02] Speaker 03:
We want to brief this and we'd like additional oral argument, or we'd like to set another oral argument, or we'd like to submit an expert declaration on doctrine of equivalence, or we'd like to separately address the apparatus claims.

[00:21:15] Speaker 02:
Is there anything she asked about that had anything to do with the doctrine of equivalence?

[00:21:19] Speaker 02:
Any suggestion that she was thinking?

[00:21:22] Speaker 02:
I mean, we know she had to read this question about selecting a label on how it's the construction.

[00:21:29] Speaker 02:
notion about doctrine of equivalence?

[00:21:31] Speaker 00:
Well, she did say enter judgment for Adobe, which would logically be dispositive of... I thought there was a paragraph right at the end of her opinion where she says, she addresses doctrine of equivalence and says, you know, you really need some detail.

[00:21:45] Speaker 00:
There's no detail.

[00:21:48] Speaker 03:
In the record to address Judge Prost's question first, in the record it says, would not

[00:21:55] Speaker 03:
Would that not be sufficient to grant you judgment of non-infringement?

[00:21:59] Speaker 03:
And that's at A3934.

[00:22:02] Speaker 03:
And so she was asking me the question of whether that would be sufficient to grant you judgment of non-infringement.

[00:22:07] Speaker 02:
That's to you.

[00:22:08] Speaker 02:
She didn't ask the kind of reverse flip question to Mr. Oates.

[00:22:15] Speaker 02:
And her response to that is to your saying, we believe it would.

[00:22:20] Speaker 02:
She acknowledges, but you didn't argue that, did you?

[00:22:24] Speaker 03:
Um, I did not argue doctrine of equivalence.

[00:22:27] Speaker 03:
Um, and I apologize, judge Toronto, I believe I may have lost track of a question that you had posed.

[00:22:32] Speaker 00:
No, no, I, to the extent there's any doubt about whether the district court addressed the doctrine of equivalence in the court's opinion, it's at a 40 to 41.

[00:22:40] Speaker 00:
There's that, and it basically says you need to have detail.

[00:22:43] Speaker 00:
You don't have detail.

[00:22:44] Speaker 00:
And I guess I'm not sure how they could possibly have had detail on an issue that you didn't present to them in the motion.

[00:22:50] Speaker 03:
Well, and I think the issue there is the scope of the waiver by counsel in electing not to ask for additional time to argue this and in declining briefing three times.

[00:23:02] Speaker 03:
And we would submit that by not separately arguing the apparatus claims, by not raising doctrinal equivalence, by not asking for additional time or additional briefing, that those arguments were waived.

[00:23:15] Speaker 03:
And specifically with regard to the apparatus claims analysis, I did want to point out that in the TECSEC infringement contentions, TECSEC itself took the position that the apparatus claims, which require this object labeling subsystem, that those claims are met by Adobe Acrobat, quote, selecting an object.

[00:23:41] Speaker 03:
And this is in the record at A2208.

[00:23:45] Speaker 03:
And so it was TechSec itself that originally had the theory that the apparatus claims that require an object labeling subsystem are met by a device that, quote, selects a label.

[00:23:57] Speaker 03:
When it charted, it says, the accused product has an object labeling subsystem.

[00:24:03] Speaker 03:
For example, Adobe Acrobat products select a label for an object.

[00:24:07] Speaker 03:
And so based on that, it was our understanding, and it was not surprising to us, that they didn't separately argue

[00:24:13] Speaker 03:
that the apparatus claims will not be impacted by the district court's construction of selecting a label.

[00:24:20] Speaker 02:
Can I, before your time runs out, can I ask you the same question I asked your friend, which is where this case stands.

[00:24:28] Speaker 02:
So do you agree with what he said?

[00:24:30] Speaker 02:
Or let me repeat my understanding, which is if we were to disagree with your position on this question, there remain before the district court portions of the summary judgment motion with respect to other terms which he has not ruled on.

[00:24:43] Speaker 03:
Yes, that's correct.

[00:24:45] Speaker 03:
We raised two or three alternative arguments that the court has not yet addressed.

[00:24:52] Speaker 03:
With regard to the construction of selecting, the district court construction was simply the plain meaning of construction.

[00:25:00] Speaker 03:
We've cited a number of dictionaries to the court that indicate that the plain meaning of selection

[00:25:05] Speaker 03:
is to pick from a number or a group of objects.

[00:25:09] Speaker 00:
Well, let me ask you about that.

[00:25:10] Speaker 00:
It does seem to me that it depends on the context.

[00:25:14] Speaker 00:
And one context in which that feels more wrong than right is the context of selecting a name.

[00:25:24] Speaker 00:
When you say, select a name for your pet, you're not given a menu.

[00:25:33] Speaker 00:
And that's what we're talking about here.

[00:25:34] Speaker 00:
We're talking about selecting in the name of, in the, in the context of dubbing of, and I don't understand why in the common sense world and the common sense, meaning in that context, one needs a set of preexisting choices that you're having to choose among.

[00:25:53] Speaker 03:
Well, I think when we're going through the book of baby names, you pick from a number of existing names and that would be selecting a name.

[00:26:02] Speaker 03:
You can.

[00:26:02] Speaker 03:
Or you may decide to create a new name.

[00:26:06] Speaker 03:
You may decide to create a new name.

[00:26:08] Speaker 00:
When Prince was thinking of what he was going to call himself, I don't know that he had a book of glyphs, but I'm assuming not.

[00:26:20] Speaker 03:
I would argue that he created his name, or one of them, or both of them, and he did not select from the book of baby names.

[00:26:31] Speaker 03:
And that similarly here, a plain English definition of selecting is picking from a group of existing objects as opposed to creating something anew.

[00:26:38] Speaker 03:
And the TechSec claim construction just doesn't make any sense in the sense of it being selecting, because what they say is selecting is some, it's not a plain English meaning of anything.

[00:26:49] Speaker 03:
It is starting a process that generates some data that gets read into a file that they then call the label.

[00:26:56] Speaker 03:
And there is no

[00:26:57] Speaker 03:
plain meaning of the word selecting that gets you to starting some long process.

[00:27:04] Speaker 03:
In addition, TechSec's construction is inconsistent with what it advanced to the district court in the Pritegrity case as being the proper construction of selecting for this particular portfolio.

[00:27:17] Speaker 03:
This is quoted in our brief at 28.

[00:27:21] Speaker 03:
But there, their expert opined, the term selecting means to one of ordinary skill in the art in 1993, the act of choosing, typically in computer software, by highlighting a block of data, pointing out or clicking a selection, or providing identifying information for one of a set of choices.

[00:27:39] Speaker 03:
So a couple years ago, TechSec agreed that in connection with this particular portfolio and given the technology at issue, selecting meant picking from a group of choices on a menu.

[00:27:49] Speaker 03:
And they also provided a dictionary from the Microsoft Computer Dictionary that says, and this is also quoted in our brief, select in general computer use is to specify an item displayed on a screen by highlighting or otherwise marketing it with the intent of manipulating information in some way.

[00:28:08] Speaker 03:
So this is a term that, as you note, has a plain English meaning.

[00:28:11] Speaker 03:
It's also a term that has a technical meaning in connection with picking one of the objects that's displayed on the screen.

[00:28:19] Speaker 03:
A label, a menu item, it may be picking some text, but it's picking for something displayed on the screen.

[00:28:25] Speaker 03:
And the only evidence that TechSec supports to show a different kind of meaning is an Adobe help document, not about the infringing products.

[00:28:37] Speaker 03:
But what TechSec doesn't mention is in that document, 12 of the 13 times they use select, it refers to just that, picking menu items or picking some information on the screen.

[00:28:46] Speaker 03:
There is one possibly confusing sentence that refers to both selecting a file and entering data for the file name that they refer to as being evidence that Adobe uses selecting in a different fashion, but that's not enough to support a claim construction.

[00:29:00] Speaker 02:
Thank you.

[00:29:07] Speaker 04:
So I would like to spend a little bit of time on the selecting versus

[00:29:12] Speaker 04:
The district court thought the distinction was between selecting and creating, and I don't view that to be the argument, and we rejected that distinction at the oral argument.

[00:29:21] Speaker 04:
Select means choose.

[00:29:22] Speaker 04:
That is the plain and ordinary meaning of it.

[00:29:24] Speaker 04:
The dictionaries that are cited here all cite to it as choose.

[00:29:29] Speaker 04:
Sometimes, even the dictionary that Adobe cites, it says usually from among other options, but it's not an express requirement.

[00:29:36] Speaker 04:
That is not a limitation that is read into this claim from some dictionary that they found.

[00:29:41] Speaker 04:
Again, pick means

[00:29:42] Speaker 04:
Select means pick or choose, just like with a name, a baby name.

[00:29:46] Speaker 04:
I can select any name that I want.

[00:29:48] Speaker 04:
If I'm starting a company and I want to select a name for my company, I'd probably be better, sir, at picking a name that no one else has had before.

[00:29:54] Speaker 04:
I can select whatever name I want, and that is exactly how this file label is supposed to work.

[00:29:59] Speaker 04:
I'm sending out an encrypted object, and I'm going to select all the permissions that will go into that.

[00:30:03] Speaker 04:
I don't have to know before I made the object who I'm going to send it to, what permissions they might have.

[00:30:09] Speaker 04:
I have the object, I encrypt it,

[00:30:10] Speaker 04:
I decide who's gonna get that, and then the software creates that label based on the selections that I've made.

[00:30:16] Speaker 04:
That's exactly how the software works.

[00:30:17] Speaker 04:
That's exactly how the patent specifies it's supposed to work.

[00:30:20] Speaker 04:
In column two of the patent, it talks about selecting label conditions.

[00:30:24] Speaker 04:
Again, we're talking about the things that will go into the label.

[00:30:27] Speaker 04:
So I've selected the label, and with the Acrobat product, you can only select two different types of labels.

[00:30:32] Speaker 04:
There's encrypt with password, and there's an encrypt with certificate.

[00:30:37] Speaker 04:
I have to make that selection at the outset

[00:30:39] Speaker 04:
Then I'm going to select the encryption algorithm, and I'm going to select what permissions the people have, and then the Acrobat will write that label into the trailer.

[00:30:46] Speaker 04:
That becomes the label.

[00:30:48] Speaker 04:
And the court already found that that is the label.

[00:30:50] Speaker 04:
There's no label when it's not encrypted, and then when the document is encrypted, there's a label on it.

[00:30:55] Speaker 04:
So if somebody selected that, and me as the user, I have to make those picks.

[00:30:59] Speaker 04:
I have to make those selections so that label will get created by Acrobat as an act of infringement

[00:31:05] Speaker 04:
Somebody has to make the choices, and the user is the one who makes those choices, and that's what creates a label.

[00:31:11] Speaker 04:
Now, Adobe's documentation, exactly same thing.

[00:31:14] Speaker 04:
If I want to select a file name for a PDF, I come up with whatever I want to.

[00:31:18] Speaker 04:
I select the file name, and that becomes the name for the PDF.

[00:31:22] Speaker 04:
Other courts have come to the same conclusion.

[00:31:24] Speaker 04:
We cited that ClinTech nutrition case.

[00:31:26] Speaker 04:
To select is just to choose.

[00:31:28] Speaker 04:
It doesn't mean anything more than that.

[00:31:29] Speaker 04:
You don't have to have a static list of choices.

[00:31:31] Speaker 04:
The whole point of this patent is to be flexible and on the fly.

[00:31:34] Speaker 04:
So I don't have just one drop down of people that I might be able to send a document to.

[00:31:39] Speaker 04:
I can pick them as I go.

[00:31:40] Speaker 04:
That's my selection.

[00:31:42] Speaker 04:
Again, the examples that the court used to get to this pre-existing only came from a different part of the specification where it's talking about selecting an object and even then those were just embodiments talking about a different claim term altogether.

[00:31:57] Speaker 04:
So again, select means choose.

[00:31:58] Speaker 04:
I think I've just gone over my time, so.

[00:32:00] Speaker 02:
You have.

[00:32:01] Speaker 04:
You have.

[00:32:01] Speaker 04:
Anything else?

[00:32:02] Speaker 04:
No.

[00:32:02] Speaker 04:
Thank you.

[00:32:02] Speaker 04:
Thank you.

[00:32:03] Speaker 04:
Thank both sides.

[00:32:03] Speaker 04:
The case is submitted.