[00:00:00] Speaker 01: Nine, A-List Networks versus Apple. [00:00:42] Speaker 01: There's some more seats in the back. [00:00:44] Speaker 01: Marshall, if you want to tell people they can file in, there's more seats back there. [00:00:47] Speaker 06: Now that people left. [00:01:08] Speaker 06: We're here on behalf of ALIS, the King, for the motion of summary judgment of no infringement. [00:01:13] Speaker 06: The motion for summary judgment of no infringement was ran on three basic matters. [00:01:18] Speaker 06: The primary matter was claim differentiation. [00:01:20] Speaker 06: Second, the district court looked at the specification to find support for its conclusion of claim differentiation. [00:01:28] Speaker 00: Isn't it just claim construction? [00:01:30] Speaker 00: So you've got claim construction, and those are the different sources of claim construction, right? [00:01:35] Speaker 06: Correct. [00:01:35] Speaker 06: No, the court looked at it. [00:01:37] Speaker 06: The court attempted to do claim destruction, but in his claim destruction, it did so primarily based on the principle of claim differentiation, looked us back to support that claim differentiation, and then said it was confirmed by a couple of statements that we had made to the IPR. [00:01:51] Speaker 06: So I want to address each one in turn, because the single primary basis of the court's plan was based on the claim differentiation. [00:01:57] Speaker 06: And we believe the claim of initiation, the court misunderstood the difference between claim of initiation. [00:02:03] Speaker 06: So let me start with what the fundamental of the invention is. [00:02:06] Speaker 06: The fundamental of the invention is an iPhone that controls the control point proxy, an iTunes server that controls the control point, the media server with the content list, and the media center of the tablet. [00:02:18] Speaker 06: Those are the four components of the invention. [00:02:21] Speaker 06: What the court said, what claim one says is, if one is in communication with one, the other one is in communication with the other, the only way the media can get from the media server to the media vendor is if the control point proxy and the control point work together. [00:02:37] Speaker 06: Because that's the only way that could happen, because the two of them aren't necessary. [00:02:41] Speaker 01: OK, how about this? [00:02:41] Speaker 01: If you don't mind, I'm going to fast forward you. [00:02:44] Speaker 01: Suppose I agree with you that the plain meaning of the claims, written in the context of the spec, does not prohibit [00:02:50] Speaker 01: CP from being invoked in claims 2 and 21. [00:02:54] Speaker 01: So let's just jump forward and say that I agree with you until that point, but your hurdle to overcome, it seems to me, is disclaimer. [00:03:01] Speaker 01: Now we can give it a lot of different names. [00:03:02] Speaker 01: We can call it Plastic Use and History Disclaimer, we can call it Judicial Estoppel, and I'm not sure what the right name would be if it applies here. [00:03:09] Speaker 01: But that, to me, is, it seems, like, the heart of what you need to convince us of. [00:03:13] Speaker 06: And, Johan, if I was reading and preparing for this, that was my conclusion as well. [00:03:17] Speaker 06: The issue is really not one of what the claim differentiation is. [00:03:20] Speaker 06: It's whether there's a prosecution history disclaimer or not. [00:03:23] Speaker 06: And so there's really two arguments. [00:03:24] Speaker 06: First is a pre-IPR statement is itself not a disclaimer. [00:03:27] Speaker 06: This court hasn't provided guidance on that. [00:03:29] Speaker 06: And I think the IPR practitioners would appreciate that. [00:03:32] Speaker 06: But I actually want to focus on the second half. [00:03:34] Speaker 06: which was there a disclaimer in the statement. [00:03:37] Speaker 06: And there are two statements made in the appendix. [00:03:40] Speaker 05: So I told you both those statements. [00:03:44] Speaker 05: The first statement is on the appendix 973, and then the second statement is in appendix 1003. [00:04:01] Speaker 01: What is our standard for review when someone else finds there's a disclaimer? [00:04:05] Speaker 06: Under what standard of review do we review the lower court decision of a disclaimer? [00:04:17] Speaker 06: The district court actually didn't find a disclaimer. [00:04:20] Speaker 06: They said it was akin to a disclaimer. [00:04:22] Speaker 06: It really focused on the claim differentiation argument and really looked at the disclaimer as what the court specifically said, a confirmation. [00:04:30] Speaker 06: But let me show you specifically the disclaimer issue. [00:04:34] Speaker 06: The disclaimer was the first sentence. [00:04:37] Speaker 06: Similarly, certain of the challenge-dependent claims require only that the control point, or the control point logic, is determined in either the media's or the media's press or any communication that local bodies have. [00:04:50] Speaker 06: So let's start with the word similarly. [00:04:52] Speaker 00: You're at JA1039. [00:04:53] Speaker 00: No, I'm sorry, I'm 972. [00:04:55] Speaker 05: Middle of the page. [00:04:57] Speaker 05: Middle of the page, much more similarly. [00:05:05] Speaker 06: So. [00:05:07] Speaker 06: There's the first sentence where we said that challenge-dependent language required only that the control point logic would be used. [00:05:14] Speaker 06: It would suggest to the ordinary meter from the English language that would exclude the involvement of the control point. [00:05:22] Speaker 06: So it would suggest to the user that the only thing that could be used is the CPD. [00:05:26] Speaker 06: And what I would say is, the case goes exactly what the Sanders situation was, which is, [00:05:32] Speaker 06: you have a sentence that would appear to go against us. [00:05:36] Speaker 06: If this was the entirety of the record, I would read that to say, that sentence seems to imply that the control point can't be used. [00:05:43] Speaker 06: But it's not the entirety of the record. [00:05:45] Speaker 06: The entirety of the record are actually a combination of three sentences, so you should read the next two sentences as follows. [00:05:51] Speaker 06: So let me read those two sentences. [00:05:53] Speaker 06: It says, [00:05:55] Speaker 06: So remember, the question going is, is only the CPP allowed, or is only the CPP required? [00:06:01] Speaker 06: And the very next sentence says, in other words, the challenge claims require selectively invoking the CPP logic and the CPP logic. [00:06:09] Speaker 06: And in the very next sentence, it says, as discussed above, this is a key aspect of the claim invention. [00:06:15] Speaker 06: which addresses an important objective, namely the reducing of expensive bandwidth. [00:06:20] Speaker 06: So in 1994, cellular bandwidth cost about 25 cents a minute or whatever. [00:06:24] Speaker 06: So your goal when he was planning it was to go to the server remotely through the phone, but minimize that usage of the cellular communication as much as possible so that the free Wi-Fi would do as much. [00:06:37] Speaker 06: But again, reducing does not equal eliminating. [00:06:42] Speaker 06: What they are saying [00:06:43] Speaker 06: Well, the court concluded, based on that statement, was two-fold. [00:06:48] Speaker 06: Only the CPE is allowed. [00:06:50] Speaker 06: It did not say our interpretation, which is only the CPE is required. [00:06:54] Speaker 06: And two, it said the CPE eliminates the use of the CPE. [00:06:58] Speaker 06: Excuse me, the CPE uses eliminate. [00:07:01] Speaker 06: And I'm saying the very next sentence says, don't eliminate. [00:07:05] Speaker 06: Reduce the use. [00:07:06] Speaker 06: So I believe this is identical to the standards scenario, where one statement standing alone, one sentence standing alone, [00:07:14] Speaker 06: I'll concede, probably favors apples like the other one. [00:07:17] Speaker 06: If you took that first sentence, and there was nothing else in the record, yes, that would seem to imply that the CP can't be used. [00:07:26] Speaker 06: But if you read the next two statements, it doesn't say only the CP is allowed. [00:07:31] Speaker 06: It just basically says the CP is required. [00:07:33] Speaker 06: It certainly doesn't say the CP can have no involvement, because it says you're reducing wireless candy. [00:07:39] Speaker 06: Reducing would not imply elimination. [00:07:41] Speaker 06: So if you take three sentences together, [00:07:44] Speaker 06: the entirety of the prosecution statement. [00:07:47] Speaker 06: Your Honor, we've alleged this court that that's not the case. [00:07:50] Speaker 00: What about the language at JA 1004, which talks about, again, it has the language, only the CPP is in boat, and refers to that as being in claims two and 21. [00:08:03] Speaker 06: So is that? [00:08:05] Speaker 06: Yes. [00:08:05] Speaker 06: Those are two, basically, mirror statements. [00:08:07] Speaker 06: But I would again argue, if you look at the statement, look at the very next statement that follows. [00:08:14] Speaker 06: These steps serve the key purpose of enabling the Keynes invention to use in a local wireless network, wherever such network is available, in order to reduce the wireless-consuming spectrum, consuming communication. [00:08:26] Speaker 06: So again, what we're trying to do is, in this scenario, reduce the amount of work that the server on the internet needs to do because you're using wireless communications. [00:08:38] Speaker 06: But the idea that a scorefront would not be involved in paid content [00:08:42] Speaker 06: which will be the logic. [00:08:43] Speaker 06: I mean, let's just step back from the claims and understand what the patent is about. [00:08:47] Speaker 06: The patent is about internet delivery of media content. [00:08:51] Speaker 06: The first scenario is that one is in connection with the server, the other one's connection with the media renderer. [00:08:57] Speaker 06: Logic will require the two to communicate. [00:08:59] Speaker 06: But even if claim two structure was possible, which is where the CP, the phone with the wireless communication with the media renderer, [00:09:08] Speaker 00: What about the PTO's response itself to those statements? [00:09:20] Speaker 00: So we're looking at either judicial estoppel or prosecution history estoppel. [00:09:26] Speaker 00: And in this case, at page JA842, you've got the P tab saying specifically that talks about the CP logic or the CPP logic exclusively handling the negotiation of the media content delivery, suggesting that they were looking at this only language and interpreting it [00:09:50] Speaker 00: in a way that's the way Apple is now interpreting it and therefore making a decision about IPR institution based on that understanding of the language that ALIS used. [00:10:02] Speaker 06: So I have two responses to that. [00:10:04] Speaker 06: One of the first responses, both Apple actually, at the district court level, argued that what matters is what we said, and this court should not take into account what the PTAB said or did. [00:10:15] Speaker 00: Well, it's a legal issue, so. [00:10:16] Speaker 06: So it's ABPX 1166. [00:10:18] Speaker 06: OK. [00:10:20] Speaker 06: I'm just giving you the whole Apple thing. [00:10:22] Speaker 06: Sure. [00:10:22] Speaker 06: It should not be considered. [00:10:24] Speaker 06: And I don't necessarily disagree with that. [00:10:26] Speaker 06: But let's take a look at what the PTAB said. [00:10:29] Speaker 06: The PTAB said, [00:10:31] Speaker 06: the identical evidence is being used for claim one and claim two. [00:10:35] Speaker 06: It didn't go into detail as to explain why, what it found as a distinguishing feature between the two as to what evidence was missing. [00:10:43] Speaker 06: What it did say was it appeared to the [00:10:46] Speaker 06: CP is exclusively handling. [00:10:49] Speaker 06: And that was actually a poor part of the argument of the district court level. [00:10:52] Speaker 06: What does the word handling mean? [00:10:54] Speaker 06: In handling, one of the things that we argued at the district court level was handling doesn't mean an exclusion of involvement. [00:11:02] Speaker 06: Handling could mean, which is what we were saying at the district court level potentially was the CP can say, touch the phone, I want this movie. [00:11:11] Speaker 06: I want to pay for the movie. [00:11:12] Speaker 06: Get it to me. [00:11:13] Speaker 06: And then you just go to the CPE, and all you get is a specific encryption key, is a lot of the term. [00:11:18] Speaker 06: Least ad. [00:11:19] Speaker 06: And you get that information, and then you go get the content. [00:11:22] Speaker 06: Handling could easily be understood to mean what we present at the district court, which is, look, you can get the content, you can do it, select it, get your content, but you can be the active agent. [00:11:34] Speaker 06: Handling could easily have meant that. [00:11:35] Speaker 01: And so what I would say is- But in the prior art that was asserted against these claims, [00:11:43] Speaker 01: Both CPP and CP logic were invoked, correct? [00:11:48] Speaker 06: Correct. [00:11:49] Speaker 06: Both of them were capable of being invoked. [00:11:50] Speaker 01: Both of them were capable of being invoked. [00:11:53] Speaker 01: You got around that prior art, arguably, with regard to claim two and by 21, by a sentence that says only CPP is invoked to negotiate media content between the MS and MR. I guess I don't understand the prior art had both. [00:12:11] Speaker 01: You say the way you get around the priorities, you only use one. [00:12:14] Speaker 01: I don't understand how to reconcile that. [00:12:18] Speaker 01: You want me to look at the context of everything. [00:12:20] Speaker 01: Well, the context of everything includes what were you trying to overcome and the thing you were trying to overcome used both. [00:12:26] Speaker 01: How do you overcome that thing if I don't give the same reading to this language the district court did? [00:12:34] Speaker 06: without a detailed explanation of the prior art. [00:12:37] Speaker 06: The difference between claim one and claim two is, claim one says both these must be present, and both of these must negotiate to deliver the content. [00:12:44] Speaker 06: Claim two is one step beyond. [00:12:47] Speaker 06: Well, claim two says, not only must you have the option of having the two of them work, you must also have the option of having pure delivery. [00:12:55] Speaker 06: So the concept of claim two was delivering was, I'm going to give you iTunes paid content, [00:13:00] Speaker 06: I can give you in claim two the structure of having a YouTube content where I don't want to be involved or a website delivery, right? [00:13:07] Speaker 06: So you could have the point of claim two is it provides an additional limitation in terms of optionality. [00:13:13] Speaker 06: So what is the additional limitation? [00:13:15] Speaker 06: The additional limitation is that the CP cannot, it can be eliminated. [00:13:19] Speaker 06: It doesn't say it's required to be eliminated. [00:13:22] Speaker 06: The additional limitation of claim two is you can't have a structure where only the CPP does all the content. [00:13:29] Speaker 06: And that would not be the end of it. [00:13:32] Speaker 03: But that was the argument you made to overcome the prior arc reference. [00:13:37] Speaker 06: But the difference to overcome the prior reference was that's a possibility, not the question that's required. [00:13:43] Speaker 06: So I feel like what we're doing is we're getting confused between validity issues with respect to what's allowed and with respect to infringement, what's required. [00:13:53] Speaker 06: What is allowed to overcome a prior reference is if there is a structure, one possibility within [00:14:00] Speaker 06: the different possibilities that allows us to say, this is not what the prior art allows. [00:14:06] Speaker 00: Now you agree, of course, just as a basic teaching point, that something that anticipates a claim, if earlier, would later infringe the claim, right? [00:14:17] Speaker 06: Something that anticipates would later infringe the claim, correct? [00:14:20] Speaker 00: Right. [00:14:20] Speaker 00: So the analysis, somebody shouldn't be able to say one thing to the patent office in order to avoid a prior art rejection [00:14:29] Speaker 00: and then later take a different approach when asserting infringement, right? [00:14:32] Speaker 06: Correct. [00:14:33] Speaker 06: And I'm not saying that's what we did. [00:14:35] Speaker 06: What I'm trying to explain is that what we said to the patent office is that claim two requires two functionalities. [00:14:43] Speaker 06: One is both work. [00:14:45] Speaker 06: One is one works. [00:14:46] Speaker 06: And that is two different functionalities. [00:14:48] Speaker 01: Where do you get the idea that it says both work? [00:14:51] Speaker 06: Well, claim two would require that, right? [00:14:53] Speaker 06: Because claim two is dependent on claim one. [00:14:55] Speaker 06: So the logic of claim two would be that you have two separate functionalities. [00:14:59] Speaker 01: Claim two is dependent on claim one, which means that therefore it must be narrower than claim one. [00:15:03] Speaker 01: Claim one required two. [00:15:04] Speaker 01: Claim two came along and required only one. [00:15:06] Speaker 06: The narrower doesn't mean an additional functionality, limitations. [00:15:09] Speaker 06: You have to have two functionalities in claim two. [00:15:12] Speaker 00: So your specification also talks about the advantages of in some circumstances having the CCP logic work and sometimes having [00:15:22] Speaker 00: the CCP logic and the CP logic. [00:15:24] Speaker 00: But it provides a very specific reason why in the scenario of Claim 2, you'd want to only have the CP logic work. [00:15:31] Speaker 00: Isn't that right? [00:15:33] Speaker 06: Correct. [00:15:33] Speaker 06: We're trying to eliminate or reduce the bandwidth that's used from the viral inspection. [00:15:38] Speaker 06: So the consequence is that you want the CPP to do as much as possible. [00:15:44] Speaker 06: You want to have the CP do as little as possible. [00:15:47] Speaker 06: Because the CP communication is going across the wireless spectrum, and that consumes money. [00:15:52] Speaker 06: And what we're trying to do is reduce that consumption of money. [00:15:56] Speaker 06: And that's exactly what we said to the PTAV, is that we're attempting to reduce that cost. [00:16:01] Speaker 01: And you do successfully reduce it if you use only one, right? [00:16:05] Speaker 06: Absolutely. [00:16:05] Speaker 06: When you're talking about reduction, one theoretical possibility of reduction is elimination. [00:16:12] Speaker 01: We don't just do that. [00:16:15] Speaker 01: What you agreed to in the beginning was that one sentence read out of context, you said would look really bad for you. [00:16:22] Speaker 01: And you started on page nine something, I'm on page 104. [00:16:25] Speaker 01: There's that one sentence appears in multiple places in this record. [00:16:29] Speaker 01: So this one sentence you said looks bad for you, but you said the sentences that come after save us. [00:16:35] Speaker 01: But I could interpret the sentence that come after about reduction to you reduce the bandwidth if you use only one. [00:16:43] Speaker 01: I mean, and that is, [00:16:45] Speaker 01: how you in fact do reduce the bandwidth. [00:16:47] Speaker 01: So why don't I read those two sentences as consistent with each other, since reduction, if I read the first sentence and it says only this one, and I read the second sentence it says will reduce bandwidth, well yes, if you use only this one it will reduce bandwidth. [00:17:01] Speaker 01: I don't understand how the reduction sentence saves you. [00:17:04] Speaker 06: Because reduction is not elimination. [00:17:07] Speaker 06: If we had meant to say no involvement, we would have said, in the very next sentence, we would have said, the use of the CP is eliminated, therefore there's a benefit in the communication. [00:17:21] Speaker 06: in both 1973 and in 2004, is followed immediately by the issue of reduction. [00:17:30] Speaker 06: And I think an understanding of the technology makes it clear that you're never going to provide paid content without decent properties. [00:17:38] Speaker 06: And so the idea that the CPP would eliminate the use of the CPP entirely would sort of not fall into how entertainment content is delivered and would be delivered in a logical sense. [00:17:51] Speaker 01: Okay. [00:17:52] Speaker 01: I think we have your argument. [00:17:54] Speaker 01: You've used all your time and your rebuttal time. [00:17:56] Speaker 01: I'll restore some, but let's hear from the other side. [00:18:04] Speaker 01: I would encourage you to focus your argument on the same things that he did, if you don't mind. [00:18:08] Speaker 04: Absolutely, Your Honor. [00:18:09] Speaker 04: Please support. [00:18:10] Speaker 04: What I'd like to do is pick up exactly where we were on Appendix 973. [00:18:16] Speaker 04: I won't belabor the actual disclaiming sentence, because counsel seems to concede that that says what it says. [00:18:23] Speaker 04: But the law says you can't look at the context. [00:18:25] Speaker 04: But the context here are the following two sentences. [00:18:28] Speaker 04: And counsel glossed over the second sentence. [00:18:31] Speaker 04: The second sentence on 973 starts [00:18:34] Speaker 04: In other words, the challenge claims referring to the dependent claims [00:18:44] Speaker 04: require selectively invoking the CP logic and or CP logic based on whether the MS and or MR can communicate with the UV through the local network. [00:18:55] Speaker 04: So it's saying that in the context of both being connected, which is the context of claims two and 21, that it is the CP logic that is selectively invoked. [00:19:07] Speaker 04: That's just another way of saying only. [00:19:10] Speaker 04: So we've got two things saying the same thing right back to back. [00:19:14] Speaker 04: And even if you turn to the third sentence, which is what counsel... What about the and? [00:19:19] Speaker 01: I'm sorry? [00:19:20] Speaker 01: Selectively invoking CP logic and or CPP logic. [00:19:25] Speaker 01: Wait, wouldn't you normally say or if you meant them to be alternatives? [00:19:29] Speaker 04: Well, that's because this is covering all three scenarios. [00:19:31] Speaker 04: It's covering the independent claim scenario, which is both. [00:19:34] Speaker 04: I understand. [00:19:35] Speaker 04: And so it says, based on whether they communicate. [00:19:39] Speaker 04: So it says, as discussed above, [00:19:41] Speaker 04: This is a key aspect of the claimed invention. [00:19:43] Speaker 04: So what do we know about that? [00:19:45] Speaker 04: That means that this was not a slip of the lip. [00:19:47] Speaker 04: This is something that they were focused on as being essential to their argument, to the PTAB. [00:19:52] Speaker 04: And then we have the language that was just quoted, which addresses an important objective, namely reducing the use of expensive bandwidth. [00:19:58] Speaker 04: You know, counsel, both in their brief and today, stopped there. [00:20:02] Speaker 04: They stopped there. [00:20:03] Speaker 04: The sentence goes on. [00:20:05] Speaker 04: EG-wide area cellular networks, by implementing [00:20:08] Speaker 04: So now we're going to tell you how this reduction occurs by implementing a least-cost routing decision about how to negotiate media content delivery. [00:20:19] Speaker 04: Well, what's the how to negotiate media content delivery? [00:20:22] Speaker 04: Well, that's what we were just going over in the claims. [00:20:24] Speaker 04: It's choosing either the CP or the CPP or both, depending on the network context. [00:20:30] Speaker 04: So all three of these sentences are saying the same thing. [00:20:33] Speaker 04: The least cost routing decision is the how to negotiate. [00:20:37] Speaker 04: And in this case, when you pick the CPP, as the court has acknowledged, that reduction goes down to zero. [00:20:45] Speaker 04: So you can read all three of these things consistently. [00:20:48] Speaker 01: So can I ask you then, is it your view that the as discussed above key aspect and the reducing, which includes the reducing language sentence, [00:20:59] Speaker 01: is a sentence that applies to pretty much all the challenge claims and the arguments made with regard to say claim one as well as claim two or is that sentence really only applying to what is it two and twenty or two and twenty one? [00:21:15] Speaker 04: I can't remember what the numbers are precisely that are at issue. [00:21:22] Speaker 04: The reducing sentence. [00:21:26] Speaker 01: The one you just said. [00:21:27] Speaker 01: As discussed above, this is a key aspect of the invention, which addresses an important objective, namely reducing use of expensive bandwidth. [00:21:35] Speaker 01: Now, if that sentence was tailored only to a Claim 2 argument, and if you were right about Claim 2 is one or the other, basically only one thing, then it would actually say eliminating, and instead it says reducing. [00:21:49] Speaker 01: So is your view [00:21:50] Speaker 01: That sentence is a broader sentence that applies to all the challenged claims. [00:21:55] Speaker 01: In some cases, it reduces. [00:21:56] Speaker 01: In other cases, it eliminates. [00:21:57] Speaker 04: Yes, exactly. [00:21:59] Speaker 04: It applies to all. [00:22:00] Speaker 04: If you go back up into the text, it's talking about the different variations. [00:22:05] Speaker 04: And so this is capturing all of them. [00:22:07] Speaker 00: What about how going up further in the text, it actually starts with similarly certain of the challenge-dependent claims. [00:22:15] Speaker 00: So it's not talking about claims 1 and 20. [00:22:19] Speaker 00: is talking about the dependent claims, right? [00:22:21] Speaker 04: Right. [00:22:21] Speaker 04: The sentence immediately proceeds that is talking about the independent claims. [00:22:25] Speaker 04: It says based on the determination to challenge independent claims. [00:22:29] Speaker 04: So first the independent claims, then it turns to the dependent claims. [00:22:32] Speaker 01: So you're saying within one paragraph, they're kind of hitting both, and then at the end when they summarize the advantages, those are the advantages of both or either one. [00:22:40] Speaker 01: It's not crystal clear which [00:22:43] Speaker 04: Sure, that's right. [00:22:44] Speaker 04: So the reduction language that's being pointed to is zero in the context of claims 2 and 21 and the situation of the dependent claims would be reduction. [00:22:55] Speaker 04: But the point is all three of these sentences can be read together. [00:22:58] Speaker 04: The first sentence, the disclaiming sentence, means what it says. [00:23:02] Speaker 04: The counsel doesn't disagree with that. [00:23:04] Speaker 04: And if I could turn your honors to the other disclaimer, because this helps in my situation as well. [00:23:09] Speaker 04: If we turn to 1.003 and 1.004, again, we have to look at the context. [00:23:15] Speaker 04: If we look at 1.003, at the very last paragraph at the bottom of that page, it starts with claims 1, 2, and 4. [00:23:23] Speaker 04: So it's claims 1, 2, and 4, as well as claims [00:23:25] Speaker 04: 2021 and 2023 combined to claim three alternative steps. [00:23:31] Speaker 04: So here they're telling the Patent Office that these are different ways to accomplish something, depending upon what the network environment is. [00:23:39] Speaker 04: Then we have the disclaimer itself, which is at the top of 1004, which says if, however, the MS and MR are both in communication with the UE via the local wireless network, then only [00:23:50] Speaker 04: The CPD is involved to negotiate media content delivery between the MS and the MR. It refers to things 2 and 21. [00:23:57] Speaker 04: So there you have a very clear if-then situation. [00:24:01] Speaker 04: If A, then B. Council then pointed to the reduced language, but if you go down to the bottom of that page, 1004, we have the same point made. [00:24:10] Speaker 04: It says the fact that the UP&P is the very end of the page. [00:24:14] Speaker 04: The fact that the UPnP does not care how the MS and MR communicate with the UE confirms that the UPnP design cannot and does not teach or suggest this feature of the claims, this is the key part, which requires a least cost routing decision based on the determination of available networks. [00:24:29] Speaker 04: And so, as we learned from looking at page 973, the least cost routing decision is the decision of which of a CP or the CPP logic is going to be invoked to do the media content delivery. [00:24:42] Speaker 04: So again, [00:24:43] Speaker 04: The language of the disclaimer itself is clear and the context surrounding it confirms that they meant exactly what they said. [00:24:50] Speaker 03: Mr. Fowler, even if we agree with you that this amounts to a disclaimer, this is part of the colloquy between the petitioner and the patent owner that occurred prior to the institution of the review. [00:25:07] Speaker 03: Why should we treat that as prosecution history? [00:25:12] Speaker 04: There's, I think, two parts of the answer to that. [00:25:14] Speaker 04: The first is the existing case law that the court can turn to seek guidance from. [00:25:19] Speaker 04: So first we have the Supreme Court's Quozo decision. [00:25:23] Speaker 04: Quozo said, in part, that IPRs are reexaminational. [00:25:28] Speaker 04: I have the quotes here if you'd want, but they say it has a judicial aspect to it. [00:25:31] Speaker 04: and has a re-examination aspect to it. [00:25:34] Speaker 03: But because I didn't draw a line between pre-institution, post-institution. [00:25:39] Speaker 04: Exactly. [00:25:40] Speaker 04: That was going to be my next point. [00:25:41] Speaker 04: In making that determination or making those statements that is partly judicial and partly examinational, they didn't draw a line saying that some of it's not and some of it is. [00:25:50] Speaker 04: The statements are broadly worded statements. [00:25:52] Speaker 04: And this court, in its prior pre-quozo decisions, has held that comparable proceedings, such as ex parte re-examination, inter-parties re-examination, and reissue proceedings, that those kinds of statements, same kind of statements that are made here, when made there, constitute part of the prosecution history and can be disclaimers. [00:26:11] Speaker 04: And we have those cases in our brief, the Katz case, which had to do with re-examination, DuPont. [00:26:16] Speaker 01: So you're addressing now the point about whether or not [00:26:21] Speaker 01: Something that doesn't occur. [00:26:22] Speaker 01: I mean, prosecution, we all typically think of as being that ex parte proceeding that results in the grant of a patent. [00:26:31] Speaker 01: Re-exam, inter parte re-exam, all this IPR stuff is sort of different. [00:26:36] Speaker 01: And what you seem to be addressing now is the idea that statements made in those contexts have nonetheless been held by our court to constitute prosecution history disclaimer [00:26:45] Speaker 01: Don't fiddle with the words Judge Moore. [00:26:47] Speaker 01: We could have called it re-exam disclaimer. [00:26:49] Speaker 01: We could have called it IPR disclaimer. [00:26:50] Speaker 01: But why give it so many different names? [00:26:52] Speaker 01: But I guess the question I thought that Judge Lynn asked you, which I don't think any of those cases you point to address, and definitely correct me if I'm wrong, is, but this statement was made before the proceeding was even initiated. [00:27:06] Speaker 01: So to what extent is a statement made in advance of such a proceeding part of the history [00:27:15] Speaker 01: that ought to be folded in. [00:27:16] Speaker 04: Very good. [00:27:16] Speaker 04: So there are two parts to that as well. [00:27:18] Speaker 04: So the cases that address this issue of when the proceeding starts have had to do with, for example, whether you can appeal a denial of a motion to stay in a CPM. [00:27:28] Speaker 04: That's an intellectual property case. [00:27:30] Speaker 04: Or whether IPR-ASAPL applies. [00:27:34] Speaker 04: That's the Shaw case. [00:27:35] Speaker 04: And in those cases, both cases, the court had to grapple with the issue of when does a proceeding start, because the right to do those two things, or the occlusion for estoppel, turned on when a proceeding began. [00:27:47] Speaker 04: So the court did a statutory analysis as it should and determined that because those two things are based on the proceeding, [00:27:54] Speaker 04: the proceeding will start upon institution. [00:27:56] Speaker 04: But that doesn't answer the different question of whether what happened before that is part of the prosecution history. [00:28:02] Speaker 04: None of the cases that this court has addressed, including the HP case, so those are really the three cases in addition to Cuomozo that have addressed this issue, have said that what happened before is not part of the prosecution history. [00:28:13] Speaker 04: It doesn't compel that result either. [00:28:14] Speaker 03: Well, let me ask you a question. [00:28:16] Speaker 03: I don't mean to interrupt, but let me ask you a question and try to shed some light on this. [00:28:21] Speaker 03: Let's suppose these same [00:28:23] Speaker 03: Same two statements were made in a colloquy that occurred in a separate lawsuit between Ailes and Apple. [00:28:35] Speaker 03: That would not amount to a prosecution history estoppel because it has nothing to do with the normal prosecution activities that take place in the Patent Office, where the Patent Office has a proceeding before it [00:28:51] Speaker 03: that will ultimately determine the scope of patent coverage, whether claims are allowed or not allowed. [00:29:00] Speaker 03: So arguments made in a separate lawsuit between parties don't create estoppels like that, don't create prosecution history. [00:29:11] Speaker 03: Why should this argument made in the course of a proceeding that occurs prior to the review [00:29:19] Speaker 03: be treated any different? [00:29:20] Speaker 04: Well, that's a very good question. [00:29:22] Speaker 04: First of all, this is in front of the Patent Office. [00:29:24] Speaker 04: That's one of the distinguishing factors. [00:29:26] Speaker 03: What difference does that make? [00:29:27] Speaker 04: Well, I'll tell you. [00:29:28] Speaker 04: Because these are statements made by the Patent Holder to the Patent Office for the purposes of telling the Patent Office what the scope and meaning of the claims is to avoid prior art in order to avoid a finding of unpatentability. [00:29:42] Speaker 04: That's something that's very much like original prosecution and the same statements that you can see here could have been made in original prosecution and without knowing the context you wouldn't be able to tell the difference because in both cases [00:29:55] Speaker 04: the patent holders trying to avoid patentability. [00:29:57] Speaker 04: And this court's law on prosecution history disclaimers founded at least on two very important public interest policies, one of which is to avoid the situation of allowing a patent holder to approach the patent office and say one thing to avoid a finding of unpatentability, which is exactly what happened here, and then be able to go to the district court and say something else against an alleged infringer. [00:30:19] Speaker 04: That underlies many cases that this court is going all the way back to Southwall, for example. [00:30:25] Speaker 04: Similarly, public notice function. [00:30:27] Speaker 04: This court has said prosecution history disclaimer is based on the fact that election infringers or people practicing patents are entitled to look to the patent office, the record in the patent office, this is part of the record in the patent office, to see what the patentee has said about the meaning and scope of the claimers. [00:30:44] Speaker 04: And the last thing I would say is that even if the disclaimers are made and they're effective, [00:30:53] Speaker 04: then that's it. [00:30:55] Speaker 04: That's it for the alleged infringer in the PTAB, because the statements have consequences. [00:31:00] Speaker 04: The failure to institute or decision not to institute is final and not appealable. [00:31:06] Speaker 04: So you have a situation here where Apple made a substantive argument to the Patent Office. [00:31:11] Speaker 04: ALIS made a substantive argument to the Patent Office. [00:31:14] Speaker 04: The Patent Office [00:31:15] Speaker 04: Although it's not part of any, quote, merits proceeding, evaluated the merits of the party's claims on the substance and decided that it wasn't substantially likely that Apple would be able to prove its claim based upon the disclaimers made by ALIS. [00:31:29] Speaker 04: And having denied that institution, Apple therefore had no right to a remedy. [00:31:36] Speaker 01: Yes, it does. [00:31:37] Speaker 01: You can go after it in district court. [00:31:39] Speaker 01: There's no estoppel. [00:31:40] Speaker 01: That's what Shaw says. [00:31:41] Speaker 01: So Apple still has another venue in which to pursue exactly the same claim. [00:31:45] Speaker 01: That's why it would be so awful if Estoppel kicked in earlier, wouldn't it? [00:31:49] Speaker 01: If Estoppel kicked in earlier, then Apple would be arguably precluded. [00:31:54] Speaker 04: Well, I'm sorry, I didn't have any remedy with respect to what had happened because it's not appealable. [00:31:58] Speaker 04: The fact is what happened is... Yeah, but lots of people deal with that every day. [00:32:02] Speaker 01: The PTO denies and sometimes they don't even give you a reason why. [00:32:05] Speaker 01: and you've got no right to appeal. [00:32:07] Speaker 04: Well, it's the same context. [00:32:09] Speaker 04: This is one reason why a disclaimer should be applied. [00:32:11] Speaker 04: This court has had a well-developed body of disclaimer law that applies to statements exactly like this. [00:32:17] Speaker 04: And oftentimes, you have a disclaimer in the original prosecution. [00:32:20] Speaker 04: The examiner doesn't require an amendment, allows the claim. [00:32:24] Speaker 04: But because the patent holder said something in public very clearly that limits the claims, this court has said, [00:32:29] Speaker 04: That should limit the claims. [00:32:31] Speaker 04: The people should be bound by what they said. [00:32:32] Speaker 04: There's no public policy reason or no legal reason why that shouldn't apply here, where someone's talking to the Patent Office and limiting their claims to try to avoid a finding of unpatentability. [00:32:43] Speaker 00: This is exactly what happened in the Constitution. [00:32:48] Speaker 00: You mentioned earlier that we have held that statements made during re-examination or probably re-issue [00:32:57] Speaker 00: have been found to be prosecution history estoppel statements. [00:33:02] Speaker 00: My question is, are any of those, are you aware of any cases where, you know, I know the patent owner can request re-examination, the patent owner can request re-issue, only the patent owner can, and there can be times when [00:33:17] Speaker 00: those statements that are made in those requests. [00:33:19] Speaker 00: Have any of those statements been considered to be prosecution history statements that are important for understanding the meaning of claims? [00:33:28] Speaker 04: Well, in the Dupont case, which is brief, that was a reissue case. [00:33:32] Speaker 04: So I think that may answer your question. [00:33:33] Speaker 04: And that was held to be part of the prosecution. [00:33:36] Speaker 00: Not just the reissue, but maybe the preliminary statement before the reissue is actually instituted or granted. [00:33:41] Speaker 00: I mean, there is some procedure by which the PTO looks at the declaration that is provided with the reissue. [00:33:46] Speaker 00: It makes the determination, for example, as to whether that is adequate for the reissue to occur. [00:33:52] Speaker 00: Is that a situation you're talking about? [00:33:55] Speaker 04: I am not sure of the answer to that question, to be honest. [00:33:58] Speaker 01: And can I ask you a very policy-oriented question? [00:34:02] Speaker 01: Sure. [00:34:02] Speaker 01: So as I'm sitting here thinking about what you said, which was helpful because it called to mind to me the purpose of notice. [00:34:09] Speaker 01: So a person, a competitor, who wanted to know what the scope of these claims are would likely read the patent [00:34:16] Speaker 01: you know, if they had any gumption at all, would get the entire prosecution history of this patent. [00:34:21] Speaker 01: If there were a re-exam, they'd want it and they'd get it. [00:34:23] Speaker 01: That's what I believe people would do. [00:34:26] Speaker 01: And so those statements in there put the world on notice, at least with regard to what the inventor believes is the scope of his or her invention. [00:34:35] Speaker 01: And they affect more than just individual parties in individual cases, right? [00:34:39] Speaker 01: They would block prosecution more generally because they're all public. [00:34:43] Speaker 01: Unlike judicial estoppel, [00:34:45] Speaker 01: where a competitor wouldn't necessarily go after all the documents. [00:34:50] Speaker 01: And in fact, those could be sealed, right? [00:34:52] Speaker 01: Confidential. [00:34:52] Speaker 01: So many times, all this stuff's confidential. [00:34:55] Speaker 01: So what's said before the patent office is something that is routinely turned to by every competitor in a space. [00:35:02] Speaker 01: They may not have access to, know about, or have any even ability to acquire. [00:35:06] Speaker 01: Things may or may not be stated. [00:35:08] Speaker 04: in a judicial document. [00:35:26] Speaker 04: The court need not get there, and this is a superior way to reach the same conclusion. [00:35:33] Speaker 04: I see I'm over my time. [00:35:34] Speaker 01: That's OK. [00:35:35] Speaker 01: We're going to restore a little bit of rebuttal time for your colleagues. [00:35:38] Speaker 01: So are you all set? [00:35:40] Speaker 01: Yep. [00:35:40] Speaker 01: OK, thank you very much. [00:35:42] Speaker 01: OK, let's do two minutes of rebuttal. [00:35:45] Speaker 01: Two minutes. [00:35:45] Speaker 01: I'm used to seeing you over here, Reggie. [00:35:48] Speaker 01: Two minutes. [00:35:49] Speaker 06: Thank you, Your Honor. [00:35:51] Speaker 06: At the time, I'd like to respond to three issues. [00:35:54] Speaker 06: The first one was Ms. [00:35:56] Speaker 06: Fowler talked about the least cost routing, suggesting that that would go to the lowest price. [00:36:01] Speaker 06: But in telecommunications, the least cost routing is a decision. [00:36:05] Speaker 06: When you look at alternative pathways to the least cost, then you would take into account load balancing [00:36:11] Speaker 06: pathways, encryption, and so on. [00:36:14] Speaker 06: So the least cost routing terminology in telecommunications and entertainment content refers to looking at the cost, but deciding within those alternatives what we're not. [00:36:23] Speaker 06: So I just didn't brief it. [00:36:25] Speaker 06: We didn't get a chance to brief what the meaning of the word least cost routing is. [00:36:28] Speaker 06: But that's what least cost routing means. [00:36:30] Speaker 06: Secondly, we discussed the issue of pre-IPR and whether those should be prosecution history disclaimers. [00:36:39] Speaker 06: The court found that the post-institution are hybrid proceedings. [00:36:44] Speaker 06: The pre-IPR are very similar to an ITC type proceeding, where you are truly just sort of going back and forth and explaining to the court, to PTAB and saying, this is what our patent's about. [00:36:56] Speaker 06: So to hold those as prosecution disclaimers, rather, sort of would change the nature of a pre-IPR proceeding more akin to an actual one that's instituted, where the outcome of the patent, the scope of the claims can be discussed. [00:37:11] Speaker 03: I mean, you're not arguing that the [00:37:14] Speaker 03: The remarks made should go away and be ignored because they're going to have some effect. [00:37:21] Speaker 03: They should have some effect. [00:37:23] Speaker 03: Wouldn't you agree? [00:37:24] Speaker 03: Either as a matter of prosecution history, disclaimer or judicial estoppel. [00:37:29] Speaker 03: One way or the other, the statement was made. [00:37:32] Speaker 03: It's part of the public record. [00:37:34] Speaker 03: It's before the patent office. [00:37:35] Speaker 03: It's in the final history. [00:37:38] Speaker 03: It's not going to go away. [00:37:39] Speaker 06: And we're not arguing that it goes away, Your Honor. [00:37:41] Speaker 03: Well, we're saying... Well, if you're not arguing that it goes away, then you're stuck with it. [00:37:45] Speaker 06: Right, but the question is whether we should be stuck with it in terms of as a prosecution disclaimer or whether we should be stuck with it as a judicial stop well. [00:37:53] Speaker 03: I think the right standard... The end result in terms of your case doesn't matter what we call it, does it? [00:38:00] Speaker 06: There are different standards. [00:38:01] Speaker 06: The first one is clear and unequivocal. [00:38:03] Speaker 06: The second one is clear inconsistency. [00:38:08] Speaker 06: So I do think the standards are a little bit different. [00:38:11] Speaker 06: Again, I come back to this case and say, Mark, please look at this case in those three sentences in their entirety, the context. [00:38:18] Speaker 06: And in those contexts, that was not intended to be a clear and unequivocal disclaimer. [00:38:23] Speaker 06: What we were trying to do was just reduce the virus spectrum that was being consumed. [00:38:29] Speaker 01: OK. [00:38:29] Speaker 01: I thank both counsels. [00:38:30] Speaker 01: The argument is taken under advisement.