[00:00:02] Speaker 04:
It is an appeal from a decision out of the district court in the district of Delaware.

[00:00:56] Speaker 04:
All right.

[00:00:58] Speaker 04:
The trainer was just pointing out that he thinks she killed a lot of trees with this record that you submitted to us.

[00:01:03] Speaker 04:
But it is certainly you've given us a fully developed record to work from, even though I think some of the issues are narrower than they might otherwise appear on first glance.

[00:01:21] Speaker 04:
But Mr. Letall,

[00:01:24] Speaker 04:
You want four minutes for rebuttal?

[00:01:26] Speaker 00:
Yes, Your Honor, thank you.

[00:01:27] Speaker 04:
OK, you may begin.

[00:01:28] Speaker 00:
Thank you, Your Honor, and may it please the Court.

[00:01:31] Speaker 00:
Brian Liddell, on behalf of the plaintiff, appellant Kronos Technologies, to your comments about the record.

[00:01:40] Speaker 00:
I think, in part, some of the volume is a consequence of the Court's rules regarding submission of summary judgment briefing in the record when a summary judgment is on appeal.

[00:01:51] Speaker 00:
There were a number of issues on summary judgment, many of which are not really at the heart of the appeal.

[00:01:55] Speaker 00:
But nonetheless, we understood the court's rules to require those submissions as part of the appendix.

[00:02:02] Speaker 04:
Let me ask you that.

[00:02:03] Speaker 04:
So when you say what is really at the heart of the appeal, if we were to decide, and I'm not saying we are, but if we were to decide the item code and identifying code issue against you, is that really the end of the inquiry?

[00:02:17] Speaker 00:
No, Your Honor, it's not.

[00:02:19] Speaker 00:
I assume you're talking about, well, let me make that clear.

[00:02:22] Speaker 04:
The construction.

[00:02:23] Speaker 04:
We would say that the court got the claim construction correct.

[00:02:26] Speaker 00:
No, that would not be the end of the inquiry.

[00:02:28] Speaker 00:
So we've presented our argument in three parts, because from our perspective, there are sort of a series of three areas of error committed by the district court.

[00:02:39] Speaker 00:
And I'll present them, and we presented them in a particular order, because a reversal at each stage would obviate the further stages

[00:02:47] Speaker 00:
But an affirmance would not.

[00:02:49] Speaker 00:
So in the first instance, we address the claim construction.

[00:02:52] Speaker 00:
And the primary claim construction issue is the item code or identifying code terms.

[00:02:57] Speaker 00:
The parties and the court all agreed that those terms should be construed the same way.

[00:03:02] Speaker 00:
Item code appears in claim one, identifying code in claim 22.

[00:03:06] Speaker 00:
The district court also construed two related terms about the user inputting the item code.

[00:03:16] Speaker 00:
From our perspective, the district court erred on those constructions in a couple of ways.

[00:03:23] Speaker 00:
In the context of item code, the district court actually did not and made a point of not entering a construction of the word code or an interpretation of what constitutes a code.

[00:03:34] Speaker 00:
In fact, the court's claim construction order, and this is pages 21 to 22 of the appendix, actually affirmatively says that code has a plain and ordinary meaning and that

[00:03:47] Speaker 00:
it's not appropriate to give it any further construction.

[00:03:50] Speaker 00:
The district court, however, in then granting summary judgment, appears to have departed from that in an unspecified manner.

[00:03:59] Speaker 00:
At page 5 of the appendix, we see the court holding that the items that our expert and that the plaintiff's papers pointed to as constituting the accused codes, the district court said those don't meet

[00:04:16] Speaker 00:
codes as construed by the court.

[00:04:19] Speaker 00:
The court did not enter a construction of codes.

[00:04:21] Speaker 04:
What the court refused to do at pages 21 and 22 is to say that the word unique should be basically built into the identifying code limitation.

[00:04:32] Speaker 04:
But the court did say that item codes and identifying codes cannot include

[00:04:38] Speaker 04:
user discernible information.

[00:04:41] Speaker 00:
And that is one of the areas we assign as error to the district court's construction.

[00:04:45] Speaker 00:
I thought that was the heart of your... That is very much an important part of the error.

[00:04:51] Speaker 00:
As I mentioned, and as I'll be happy to get to, affirming that decision does not get to the place where you affirm the summary judgment on non-infringement, because there are separate problems with that determination.

[00:05:06] Speaker 04:
OK, tell me why.

[00:05:08] Speaker 04:
Because that's where I started, and that's why I'm still confused.

[00:05:10] Speaker 00:
Sure.

[00:05:11] Speaker 00:
So after the court entered its amended construction, it provided the parties an opportunity to submit supplemental expert reports, basically supplemental declarations.

[00:05:23] Speaker 01:
And by the amended construction, you mean the one that shifted from the item code can't be the user discernible information that comes up on the display to it can't have

[00:05:34] Speaker 01:
any use of discernible information in it.

[00:05:37] Speaker 00:
That was a real shift.

[00:05:40] Speaker 00:
That was a real shift.

[00:05:41] Speaker 00:
That's correct.

[00:05:42] Speaker 00:
But also, Your Honor, as the Court may recall, this case initially had claim construction proceedings long before the summary judgment stage.

[00:05:51] Speaker 00:
The item code terms were never proposed by any party for construction.

[00:05:55] Speaker 00:
The District Court did not enter any construction of them.

[00:05:57] Speaker 00:
At the summary judgment stage, the district court then invited for the first time additional briefing on the construction of item code as a term and entered a new construction of that and the related terms in July of 2016.

[00:06:12] Speaker 00:
But it wasn't really new.

[00:06:14] Speaker 00:
It was the only construction of it.

[00:06:16] Speaker 00:
That's fair.

[00:06:17] Speaker 00:
It was the only construction.

[00:06:18] Speaker 00:
It was new in that it was not part of the court's original claim construction order in the case.

[00:06:22] Speaker 02:
And were there any objections to the entry of that construction of those terms?

[00:06:28] Speaker 00:
I'm sorry, Your Honor.

[00:06:29] Speaker 02:
Do you object to this?

[00:06:32] Speaker 00:
Yes, very much so.

[00:06:35] Speaker 00:
We objected both that it was inappropriate to be offering construction of those terms at the time, because the defendant had not proposed that they required construction, and indeed moved for summary judgment, arguing an interpretation that we argued was inconsistent with the ordinary meaning of the term, which would, of course, apply where there was no construction.

[00:06:55] Speaker 00:
I do want to disagree a little bit with one comment you made about the court's ruling on construction and the word unique, because what the district court said at page 22 of the appendix is, it is appropriate to give the word code in item code its plain and ordinary meaning to one of skill in the art.

[00:07:14] Speaker 00:
So the district court did decline to offer a particular construction of the word code.

[00:07:20] Speaker 00:
And from our perspective, then,

[00:07:24] Speaker 00:
offering a meaning of that.

[00:07:25] Speaker 00:
And I do want to get to the point.

[00:07:27] Speaker 04:
Well, it says, including the examples, because that's where he said he wasn't going to do this, is unnecessary in light of the court's inclusion of defendants distinct limitation discussed below.

[00:07:39] Speaker 04:
And what the court then goes on to say is that item code and user identifiable information must be distinct from one another.

[00:07:48] Speaker 00:
That's right.

[00:07:50] Speaker 00:
Let me get to where I think the district court got a little bit off track with that part of the construction.

[00:07:56] Speaker 00:
There is an element of the claims that refers to user discernible in claim one or user cognizable information in claim two.

[00:08:05] Speaker 00:
The structure of these claims talk about two sets of product or group of product identifying information.

[00:08:12] Speaker 00:
You have an item code or an identifying code, and you have user discernible or user cognizable information.

[00:08:18] Speaker 00:
And those are both claim elements.

[00:08:20] Speaker 01:
And the structure of the invention... So we presume under long-standing precedent, consistent with long-standing English usage, they're probably different.

[00:08:29] Speaker 00:
That is correct.

[00:08:31] Speaker 00:
But that means that they refer to different things in the application of the claim to an accused device and in the claim itself.

[00:08:39] Speaker 00:
And so one way to conceptualize this, you can think of the user cognizable or user discernible information as a more robust, fulsome, helpful, whatever terminology you want to use,

[00:08:50] Speaker 00:
description of some product or service or group of products potentially that the patent talks about that you might be looking at.

[00:08:58] Speaker 00:
And the item code as more of a shorthand or an abbreviated or condensed form that is actually what the system uses to communicate the information within itself.

[00:09:10] Speaker 00:
So you could think of, for example.

[00:09:14] Speaker 01:
Well, let me just, I guess, this is why I guess

[00:09:18] Speaker 01:
I've been thinking about this way and I want you to clarify it.

[00:09:20] Speaker 01:
It seems to me that in the claim construction, the judge said one thing, namely the item code can't be the same as the user discernible information that comes up on the display.

[00:09:30] Speaker 01:
Then in doing summary judgment, the judge said the item code can't be user discernible, can't have any user discernible information or at least not any that has some derivability

[00:09:46] Speaker 01:
with respect to the displayed information.

[00:09:49] Speaker 01:
And the first is a much less restrictive construction than the second, and the second is what he relied on for the summary judgment.

[00:10:04] Speaker 00:
I believe you have accurately summarized the problem.

[00:10:07] Speaker 01:
So tell me why the second is wrong, and in particular, address for me

[00:10:14] Speaker 01:
two passages in the specification, column six line, I don't know, let's say 10 to 16 or something, and column eight lines, what is it, 22 to 25, both of which are pretty strongly suggestive, until you explain otherwise, of the proposition that the item code can't actually have user discernible

[00:10:42] Speaker 01:
information in it.

[00:10:43] Speaker 00:
Sure.

[00:10:44] Speaker 00:
So I think you've very correctly identified exactly where we see the district court going astray.

[00:10:49] Speaker 00:
And so let me address those passages first.

[00:10:52] Speaker 00:
And I want to start at column six.

[00:10:55] Speaker 00:
This is about line 19.

[00:10:57] Speaker 00:
Under most circumstances, this information.

[00:11:00] Speaker 01:
Right.

[00:11:01] Speaker 01:
But can you start a little bit above it?

[00:11:05] Speaker 01:
Certainly.

[00:11:06] Speaker 01:
It says, we'll be unable to provide the user with a user discernible interpretation of the product identifying code.

[00:11:15] Speaker 00:
Right.

[00:11:15] Speaker 00:
So remember that the context of the invention, and in one embodiment, you have an offline ability to enter an item code.

[00:11:25] Speaker 00:
And when the system connects at some point in the future, it will bring back the more robust product description that is referred to as the user discernible or user cognizable data.

[00:11:36] Speaker 00:
Now that doesn't mean, however, that there is nothing user discernible in the item code itself.

[00:11:42] Speaker 00:
What it means is that you won't have the fulsome product description until it brings that back.

[00:11:49] Speaker 00:
But that's different than saying the item code is completely unintelligible to any human.

[00:11:54] Speaker 00:
And the next sentence that I was getting to a moment ago at line 19 says, under most circumstances, this information, and that's the item code, will be of little use to the DPU user.

[00:12:06] Speaker 00:
So what that's saying is many times that information, that item code, won't be very useful to you as a person, human being, looking at it.

[00:12:16] Speaker 00:
But by implication, that obviously means it's not always the case.

[00:12:20] Speaker 01:
You won't understand it.

[00:12:20] Speaker 01:
Let's put aside the very small class of people who speak UPC.

[00:12:26] Speaker 00:
That's fair, but that's an example.

[00:12:29] Speaker 00:
So the patent contemplates, for example, that the item code may be entered

[00:12:34] Speaker 00:
in any number of ways, including by a keyboard, by voice recognition, etc.

[00:12:40] Speaker 00:
And that's explicitly discussed in the specification.

[00:12:43] Speaker 00:
If you can enter the item code by a keyboard or by a voice recognition device, you clearly have to be able to understand it enough to type it in or speak it.

[00:12:57] Speaker 00:
uh... you know it's internet uh... what's that uh... you doesn't care protocol addresses that we had not to address right and i think what does i'd once did that i don't anymore know what the series of however many digits is that i can read them a lot sure but that's an instance where let's imagine for the moment and i apologize i'm a little in my rebuttal time let's imagine for the moment that the uh... the code was instead of twenty seven digits only four

[00:13:27] Speaker 00:
It would still be a code.

[00:13:28] Speaker 00:
It would still be something.

[00:13:29] Speaker 00:
But you could pretty readily learn the four digits that represent a bottle of Diet Coke or four digits that represent a particular other product.

[00:13:39] Speaker 00:
And you would understand those things.

[00:13:41] Speaker 00:
And they would be recognizable to you in the same way that text becomes recognizable to people.

[00:13:46] Speaker 00:
They're not distinct from user cognizable.

[00:13:48] Speaker 04:
What about the fact that the specification expressly states that user discernible information is in no way

[00:13:58] Speaker 04:
directly derivable from the product code?

[00:14:00] Speaker 00:
Well, and we haven't suggested that what we've referred to.

[00:14:06] Speaker 00:
So I think the problem arises from the fact that the specification and the claims refer to these two categories, the user discernible information and the item code.

[00:14:16] Speaker 00:
And we agree that those point to different things, but that's not the same as saying that the item code can never be in any way discernible.

[00:14:24] Speaker 00:
And so the fact that it may be discernible and that you may be able to recognize it doesn't mean it's not an item code.

[00:14:32] Speaker 04:
Indeed.

[00:14:32] Speaker 04:
Well, when you say discernible, the patent isn't talking about the fact that somebody, as Judge Tarantos says, might speak UPC.

[00:14:40] Speaker 04:
The patent is talking about user-dissertable information that has to do with how you pick your product.

[00:14:50] Speaker 00:
That's correct.

[00:14:51] Speaker 00:
But the patent is very expansive on what could qualify as an item code.

[00:14:56] Speaker 00:
It could be almost anything.

[00:14:58] Speaker 00:
The item code itself isn't really the core aspect of the invention, obviously.

[00:15:03] Speaker 00:
The invention is about creating this remote ability to interactively update and develop order lists and edit them and so forth.

[00:15:12] Speaker 00:
And indeed, at column three, it talks about it.

[00:15:15] Speaker 01:
But the patent is really not about searching.

[00:15:18] Speaker 00:
I would disagree with that.

[00:15:21] Speaker 00:
I think as we pointed out there are a number of embodiments.

[00:15:24] Speaker 01:
Using ordinary language searches to develop a list of items that fall under the more categorical search terms and then second step putting the items that come up into a shopping cart, a figurative shopping cart, before you press the button that says order this one.

[00:15:46] Speaker 00:
I would suggest the patent explicitly does talk about that very thing.

[00:15:50] Speaker 01:
This is figure four.

[00:15:51] Speaker 00:
Figures four, five, eight.

[00:15:53] Speaker 01:
Where's the item code in that?

[00:15:55] Speaker 00:
The item code, your honor, is essentially the thing behind what you click.

[00:16:02] Speaker 00:
This is really what the invention and the patent is talking about.

[00:16:05] Speaker 00:
There's the description that you look at as a user, and then there's the item code that the system uses to communicate back and forth between the merchant and your system.

[00:16:14] Speaker 00:
and tell it, OK, this is what you want.

[00:16:16] Speaker 00:
So when you select a particular kind of butter in one of the examples in the patent, the user discernible part you're seeing is which kind of butter you selected.

[00:16:27] Speaker 00:
The system is sending the item code and using the item code as the item on your list.

[00:16:32] Speaker 00:
Now, because you've already got it.

[00:16:34] Speaker 04:
Where in that written description is there any reference to item code that ties item code to figure four?

[00:16:41] Speaker 00:
So it doesn't use the word item code in discussing Figure 4.

[00:16:45] Speaker 00:
What the patent says is that Figures 3 through 10 involve exemplary DPU screens that illustrate following the sequence of steps involved in creating and submitting the order list.

[00:17:03] Speaker 00:
And that obviously includes Figures 4, 5, 8, all of which involve this very approach of

[00:17:09] Speaker 00:
being presented with suboptions and selecting one to have that placed on your list.

[00:17:15] Speaker 00:
And that's the explicit context of those figures.

[00:17:17] Speaker 04:
You're way out of time.

[00:17:18] Speaker 04:
I'll give you two minutes for rebuttal.

[00:17:20] Speaker 00:
Thank you, Your Honor.

[00:17:22] Speaker 04:
And we'll give you an extra two minutes if you need it.

[00:17:26] Speaker 03:
Thank you.

[00:17:29] Speaker 03:
Your Honor, if it will please the Court, my name is Nathan Sinclair.

[00:17:31] Speaker 03:
I'm here on behalf of Expedia, Priceline, and Trivelocity.

[00:17:35] Speaker 03:
I have two primary points that I'd like to cover with the Court.

[00:17:38] Speaker 03:
And if the court sees fit, we can also address the standard of review issues that came into play as well.

[00:17:43] Speaker 03:
First, the district court's claim construction is correct.

[00:17:47] Speaker 03:
The construction came straight from the patent specification.

[00:17:53] Speaker 01:
I'm sorry, which construction?

[00:17:55] Speaker 01:
It seems to me that the district court did actually change constructions between the one announced under the claim construction, which had that crucial word, the, in it, the user-deservable information.

[00:18:07] Speaker 01:
And then in summary judgment said the item code can't have a user, can't have user discernible information, even if it's different from the user discernible information that comes up on the display.

[00:18:23] Speaker 03:
Right.

[00:18:24] Speaker 03:
And I think the court has already highlighted the portions of the patent that the district court was leaning on in that construction, particularly column eight around lines 22 through 25.

[00:18:36] Speaker 03:
which address that particular issue as it deals with item code.

[00:18:39] Speaker 03:
As the court has already looked at it, it talks about the translation referring to the translation of the item codes is distinct from the user discernible representation of the product.

[00:18:50] Speaker 03:
And then that same language goes on to say that the latter referring to user discernible representations, which can be anything from the manufacturer, the source, the product name, the description, all of which is taught by this patent

[00:19:04] Speaker 03:
the latter being in no way derivable from the product code.

[00:19:09] Speaker 04:
The critical thing, really, then, is the district court's exception or accepting your distinct limitation in the claim.

[00:19:20] Speaker 03:
Yes.

[00:19:21] Speaker 04:
That's separating the two.

[00:19:23] Speaker 03:
Yes.

[00:19:23] Speaker 03:
OK.

[00:19:25] Speaker 03:
And with that, obviously, as we were getting to, the court took that and it imported that directly into its memorandum opinion

[00:19:33] Speaker 03:
In page 13, it recognized that that column 8 portion of the patent, and also I think we refer to a portion in column 6, that discusses that the representation is not stored in memory.

[00:19:45] Speaker 03:
It further supports what the court found in column 8 with respect to lines 22 through 25.

[00:19:52] Speaker 01:
Can you address what seems to me the largest point the other side has to make about the spec, which is,

[00:20:03] Speaker 01:
the whole situation described in figure four and column nine and getting a menu of options and you use that, the butter one or the perishable items or perishable goods or whatever it is and you then at that point start the process of putting it into an order list which you can then modify.

[00:20:32] Speaker 01:
Why is that process not the entry by the user into the data entry device of an item code?

[00:20:46] Speaker 01:
We don't know quite what it is, but it's something behind the hyperlink, presumably, that is not identical to the words on the screen, but is one way for

[00:21:02] Speaker 01:
entering an item code and if that's true how can that be squared with this this notion that it can't be discernible by the user?

[00:21:11] Speaker 03:
Well the way we would square those issues is we would actually we wouldn't just jump to that remote portion of the lower portion of column nine and ten we'd actually start our review where it initially discusses figure three which is around column seven and in column seven it discusses once an item has been added to the current

[00:21:32] Speaker 03:
product order list, response icons 62 and 64 appear on the screen.

[00:21:37] Speaker 03:
Those response icons, which are shown in figure three, are shown as call number 62 and 64.

[00:21:47] Speaker 03:
Those are also referred to in the patent as virtual buttons.

[00:21:51] Speaker 03:
Those virtual buttons appear as a result of a product being scanned or being entered in some way.

[00:21:58] Speaker 03:
So say, for example, from column 7 continuing on through column 9, there's further discussion at column 9 around 35 through 52 of those same response icons, 62, which appear as the result of a product being added to the list.

[00:22:17] Speaker 03:
So as we talk about these response icons, they are a result of the command entry device.

[00:22:27] Speaker 03:
The command entry device is something that is separately claimed in the patent from the data entry device for inputting the item codes.

[00:22:35] Speaker 03:
The data entry device has the item codes input via a scanning wand, as counsel also said, through a keyboard or some other means.

[00:22:44] Speaker 03:
But it teaches that the data entry- For a touch screen.

[00:22:49] Speaker 03:
It may perhaps teach that as well.

[00:22:51] Speaker 03:
But it be a separate device performing a separate function.

[00:22:55] Speaker 03:
Without that,

[00:22:56] Speaker 03:
Without the input of the item code itself, this invention is otherwise rendered useless.

[00:23:01] Speaker 04:
It would be taking- So your position is that figure four is directed to the command entry for the display screen, and that that's separate and apart from all the other data that was previously inputted?

[00:23:14] Speaker 03:
That is correct.

[00:23:15] Speaker 03:
As figures three and four, they both discuss this command entry device.

[00:23:20] Speaker 03:
And this command entry device is for user selection to provide these response icons which are taught

[00:23:26] Speaker 03:
in column 10 as well, line seven through 17, which the appellant continues to reference throughout his briefing.

[00:23:33] Speaker 03:
Specifically in columns seven, nine, and 10, the patent teaches that once an item is added to the ordered list by scanning the product, response icon 62 appear on the display as virtual buttons.

[00:23:47] Speaker 03:
And they can be used for anything ranging from adjusting increments of the highlighted items, which is taught in column seven around line 36 through 45,

[00:23:55] Speaker 03:
or displaying these option lists or these submenus that provide for frequently ordered items.

[00:24:01] Speaker 03:
So as we look at their construction, the appellant's construction would again, would essentially write out the item code limitation as a required portion of the claim.

[00:24:12] Speaker 03:
The item code, the data entry device is required as is taught by this patent in both claims one, claims 22, and throughout the specification

[00:24:22] Speaker 03:
that the item is input through some form of a data entry device, and then subsequently, and not subsequently in time, but as the patent teaches, that some user selection or manipulation can happen after the item code is input.

[00:24:38] Speaker 04:
If item code was so important to your overall analysis here, why didn't you ask for that construction upfront?

[00:24:46] Speaker 03:
Initially, there were some issues with respect to

[00:24:49] Speaker 03:
other claim terms that we thought got us to the same point, particularly in this case, the data entry device was a term that was a part of the original claim construction and the court involved that in the supplemental construction as well.

[00:25:02] Speaker 03:
So as a result of several issues that came up in summary judgment, the court invited additional construction with relation to this term and the data entry device and user inputting terms as well.

[00:25:16] Speaker 03:
So moving along, if there are no further questions with respect to those issues, really the core of this issue is the appellate attempting to conflate the selection by user, which is taught in columns 10 around line 7 through 17, with the actual item code inputting that is done by the data entry device in this case.

[00:25:39] Speaker 04:
If we accept the district court's proposition that the item code and the user

[00:25:46] Speaker 04:
discernible information have to be distinct.

[00:25:49] Speaker 04:
Is there really any debate about infringement?

[00:25:53] Speaker 03:
No.

[00:25:54] Speaker 03:
I think if that follows along with the data entry device being separate from the command entry device and not allowing this user presentment to overtake or write out

[00:26:05] Speaker 03:
the necessity of the item code or the data entry device as the patent teaches, then the infringement, the district court's opinion should be affirmed.

[00:26:14] Speaker 02:
To what extent does it matter, if any, that Judge Stark did not rely or use the expert reports to making the summary judgment determination?

[00:26:24] Speaker 03:
Well, I think what Judge Stark did in this particular case, he looked at the record.

[00:26:28] Speaker 03:
He reviewed the record as a whole.

[00:26:29] Speaker 03:
He reviewed the claim construction briefing on these issues.

[00:26:32] Speaker 03:
And again, as clearly came out at page 13 of the memorandum opinion, he highlighted on the record itself, column eight, lines 22 through 25.

[00:26:41] Speaker 03:
Although the court did say it consulted the expert opinion of Dr. Shamos, because his opinion supported the record itself, the answers were here in the record.

[00:26:55] Speaker 02:
And the response- I understand that the intrinsic record will trump the extrinsic evidence.

[00:27:02] Speaker 02:
But it just seems to me that we should be careful in saying that it's OK for a trial court to disregard expert testimony or an expert report in making a summary judgment determination on the basis that the judge is satisfied on the basis of the intrinsic record alone.

[00:27:24] Speaker 02:
I mean, why then have expert reports?

[00:27:27] Speaker 02:
They're designed and intended to raise material facts in dispute.

[00:27:34] Speaker 03:
Well, first, the issues with respect to that we're addressing were issues of claim construction that were decided earlier in the case as an issue of law.

[00:27:43] Speaker 03:
And subsequently, again, at this supplemental point, still again as an issue of law.

[00:27:47] Speaker 03:
But this court has dealt with those very issues which you discussed, which are almost analogous.

[00:27:52] Speaker 03:
In the Collins versus Nortel case, which is a case around 2000, it was a case relating to fiber optics and dynamic networking switching.

[00:28:02] Speaker 03:
In that very case, the court reviewed expert reports and there was an expert affidavit that otherwise cited a JNET switch is the same as a TST switch.

[00:28:12] Speaker 03:
And the court in viewing that having legal insufficiency because the expert said X is Y because I define it as that.

[00:28:20] Speaker 03:
And the court said without factual foundation, this opinion of this expert

[00:28:24] Speaker 03:
is legally insufficient.

[00:28:26] Speaker 03:
So this is the reason why.

[00:28:28] Speaker 03:
Because the expert report that was provided did not adopt the court's claim construction in its application to find a probable theory of infringement.

[00:28:36] Speaker 03:
It used the improperly brought, previously rejected claim construction that it had previously issued to the court.

[00:28:42] Speaker 03:
In subsequent cases, 2001, there was a Novartis versus Benvenu letter.

[00:28:47] Speaker 02:
Did the court here find that the expert reports were legally insufficient?

[00:28:51] Speaker 02:
There's no such finding in this case.

[00:28:53] Speaker 03:
No, the court found that the report by Dr. Schamels applied the court's claim construction, and it further undergirded the court's review of the intrinsic record as it saw it.

[00:29:05] Speaker 03:
And the court does have the authority under the Planet Bingo case to refuse a particular construction or review of it if it otherwise provides for the antithesis of what the claim construction and the claims as construed were required.

[00:29:19] Speaker 03:
And that's what we did in this particular case.

[00:29:21] Speaker 04:
Can you just explain to me, with respect to the allegedly infringing devices or activity, how do you all match up the user selections with the actual things that are chosen?

[00:29:40] Speaker 04:
There is no database with item codes for a hotel or a flight or anything like that?

[00:29:46] Speaker 03:
I'm not sure if I'm understanding your question correctly.

[00:29:49] Speaker 03:
This has to do with infringement.

[00:29:51] Speaker 03:
Right.

[00:29:52] Speaker 03:
As far as our systems, our users would input a series of parameters that they understand to find, say, a destination, a flight, or a hotel room.

[00:30:03] Speaker 03:
So those set of parameters would otherwise allow them to purchase what would be a purchasable product, a flight, which would be on a particular day, a particular flight route, a seat on that flight at a particular time.

[00:30:16] Speaker 03:
a hotel in a particular city on a data range.

[00:30:19] Speaker 04:
So what does your system do then?

[00:30:21] Speaker 04:
Just take those parameters and then search for those things?

[00:30:25] Speaker 04:
Yes.

[00:30:25] Speaker 04:
So there's not a pre-established database that you're searching from?

[00:30:30] Speaker 03:
It reaches out to several backbone travel databases to find the available flights through, say, to use one of them as an example, Expedia.

[00:30:41] Speaker 03:
You would put in these series of parameters

[00:30:43] Speaker 03:
based on the user's preferences, what they would understand, and where they want to go, all being things that they understand and know, and put it into the database.

[00:30:53] Speaker 03:
The database would search and provide potential options for flights on that particular set date under which the user searched.

[00:31:01] Speaker 01:
But why isn't the category LAX to DCA

[00:31:11] Speaker 01:
nine, if you guys use an example, nine one 17 to nine five 17 and item code.

[00:31:18] Speaker 03:
Because all of them are user discernible.

[00:31:21] Speaker 01:
Even though they do meet the definition of item code as something that can actually refer to a group.

[00:31:31] Speaker 01:
And even though the databases, presumably if they're searchable, are using those terms

[00:31:40] Speaker 01:
to identify a group of things that come within those terms.

[00:31:46] Speaker 01:
It's all about user discernibility of the terms entered by the consumer.

[00:31:53] Speaker 01:
Correct.

[00:31:53] Speaker 01:
And is it true that in the figure four situation, and I don't mean to limit it to figure four, but the general discussion of how you say, tell me what perishable items you have, that the result is

[00:32:10] Speaker 01:
There is not, in fact, something that appears on that screen for which the user hasn't entered an item code.

[00:32:19] Speaker 01:
Everything that appears on that screen is something for which the user has, in fact, entered an item code.

[00:32:26] Speaker 03:
Reading the patent in totality as it's taught from Column 7 through Column 9 and 10, which refer all to Figures 3 and 4 within the parameters of Figures 3 and 4,

[00:32:38] Speaker 03:
It continues to discuss, even as far as in column 9, at line 54, in a further embodiment of the system, the user can scan a barcode or other machine-readable code as appropriate to the data entry device.

[00:32:52] Speaker 01:
Maybe I'm just misremembering.

[00:32:53] Speaker 01:
I thought there was something in there about how you can ask the system, what perishable goods do you have today?

[00:33:01] Speaker 01:
And it will then give you

[00:33:03] Speaker 01:
You know, so we got onions or bananas or something, and then you start your selection process.

[00:33:12] Speaker 01:
And I guess what I'm trying to figure out is, is your position that that description of that scenario is simply outside the claims, so it's an embodiment, who cares whether it's preferred or not, an embodiment, not insignificant embodiment, that simply isn't covered by the claims, or are you saying it is actually covered by the claims

[00:33:31] Speaker 01:
because the user entered some item code for these items suggested by the database.

[00:33:38] Speaker 03:
The claims, as they're written, do not suggest any option for immediately selecting fresh salmon or bananas.

[00:33:49] Speaker 03:
Both claims require some form of a user input.

[00:33:52] Speaker 03:
So these are just unclaimed embodiments?

[00:33:54] Speaker 03:
Perhaps.

[00:33:58] Speaker 02:
OK.

[00:33:59] Speaker 02:
What if, for example, we're going back to a flight and I have it on hold.

[00:34:05] Speaker 02:
I put a flight on hold or reservation, hotel reservation.

[00:34:09] Speaker 02:
And I go back to it and I say, go back to your website and I want to revise that reservation or to finalize it.

[00:34:20] Speaker 02:
And I'm asked for a record locator number or a hotel reservation number.

[00:34:26] Speaker 02:
It seems to me that once I punch in that

[00:34:29] Speaker 02:
And I can find it.

[00:34:33] Speaker 02:
And I've identified it.

[00:34:35] Speaker 02:
I'm a user now identified this code that if I input this code, I'm going to be back to where I want to be.

[00:34:42] Speaker 02:
Why isn't that a user-discernible information?

[00:34:46] Speaker 03:
The record locator?

[00:34:48] Speaker 03:
Correct.

[00:34:50] Speaker 03:
The record locator, although it is discernible,

[00:34:53] Speaker 03:
the series of numbers 5, 6, ZYK, they are discernible and readable.

[00:34:58] Speaker 03:
It is not user discernible in the terms of this patent.

[00:35:02] Speaker 03:
And I still refer you back.

[00:35:03] Speaker 03:
But it doesn't say hotel room.

[00:35:06] Speaker 02:
I can't put in hotel room in Abilene.

[00:35:08] Speaker 02:
I've got to use something that's totally, to me, unrelated to hotel room in Abilene.

[00:35:14] Speaker 02:
It's just a series of numbers, just like a UPC code or a barcode that's got the numbers underneath it.

[00:35:22] Speaker 02:
Those numbers

[00:35:23] Speaker 02:
I can identify them as having to input them, but is that really a user-designable information?

[00:35:29] Speaker 02:
Am I not entering an item code when I do that?

[00:35:35] Speaker 03:
No, because the flight that you otherwise would have on hold is not necessarily derivable if you just had that item code.

[00:35:45] Speaker 03:
You would not know that that related to a flight from ORD to DCA.

[00:35:50] Speaker 03:
It would not provide that information, and it would not provide it in return if you had that flight.

[00:35:56] Speaker 03:
Knowing that flight goes from DCA to O'Hare, you would not necessarily be able to derive that item code as well, and the patent teaches that.

[00:36:05] Speaker 04:
OK, thank you.

[00:36:16] Speaker 00:
Thank you, Your Honours.

[00:36:17] Speaker 00:
I wanted to address a couple of the points that came up during my friend's argument.

[00:36:23] Speaker 00:
First, I think Judge Toronto, you asked a number of questions about Figure 4 and the related figures, and I think you had asked whether

[00:36:31] Speaker 00:
Those described only situations where the user had previously entered the item code for the particular items that were presented in the options.

[00:36:40] Speaker 00:
And the patent makes very clear that's not the case.

[00:36:43] Speaker 00:
Where?

[00:36:43] Speaker 00:
Well, in context of figure 8 is probably one of the clearest examples.

[00:36:47] Speaker 00:
Figure 8?

[00:36:48] Speaker 00:
Figure 8.

[00:36:49] Speaker 00:
And this is discussed at column 12, lines 3 to 13 of the specification.

[00:36:55] Speaker 00:
Figure eight involves, and this portion discusses, a situation where a merchant can present you with special offers for that day.

[00:37:03] Speaker 00:
These are the specials we have today.

[00:37:05] Speaker 00:
Those don't have to be things that the user has previously entered in the item code in some other form.

[00:37:11] Speaker 01:
Like I get from Southwest Airlines.

[00:37:14] Speaker 00:
Exactly.

[00:37:15] Speaker 00:
Or any other number of possible ways.

[00:37:17] Speaker 00:
But figure eight, I think, shows certain cola or something like that that's the special today and what the price is.

[00:37:24] Speaker 04:
But it specifically says it provides the opportunity for the user to add these items to the present order list.

[00:37:31] Speaker 04:
And those have to be done by adding the item code, right?

[00:37:35] Speaker 00:
Well, and the way that you'd add the item code is by selecting that pre-presented item.

[00:37:43] Speaker 00:
So if I turn to Figure 8 here, Figure 8 shows the specials, and then it has this little box next to them.

[00:37:53] Speaker 00:
Checking that box is what transmits the item code and adds those to your list, not typing in a number.

[00:38:00] Speaker 00:
It's checking the box to add that item to the list.

[00:38:03] Speaker 00:
And those weren't things that you previously had typed in a number or scanned a barcode for.

[00:38:08] Speaker 00:
Those are things that are presented to you.

[00:38:10] Speaker 00:
You check the box.

[00:38:12] Speaker 00:
The item code is transmitted and thus used to add that item to your list.

[00:38:18] Speaker 04:
So you're presupposing that you have to have the item code in order to add something to the list.

[00:38:23] Speaker 00:
I'm presupposing that the patent contemplates that submitting an item code can be done in a number of ways and one of them is by clicking something on the screen.

[00:38:35] Speaker 04:
Well, isn't the patent basically just saying that there are a number of ways to put a list together and one of them is with item codes and then the other is through this mechanism?

[00:38:46] Speaker 00:
I would disagree with that.

[00:38:47] Speaker 00:
I don't think the patent ever suggests that

[00:38:50] Speaker 00:
there are two alternative ways to create a list, one with item codes and one without.

[00:38:55] Speaker 00:
It suggests there are a number of ways to create lists, but it never suggests that any of them are exclusive of the use of item codes and user discernible representations.

[00:39:05] Speaker 01:
There is a slightly different way of saying that is you just don't think that significant

[00:39:13] Speaker 01:
embodiments here are unclaimed.

[00:39:16] Speaker 00:
That's correct, Your Honor.

[00:39:16] Speaker 00:
We don't think that these significant embodiments are completely unclaimed.

[00:39:20] Speaker 00:
There's nothing in the specification or the prosecution history that suggests that those embodiments were in any way disclaimed or not to be part of the invention.

[00:39:29] Speaker 00:
I also want to point out one thing.

[00:39:32] Speaker 00:
Council referred to the command entry device as being distinct from the data entry device.

[00:39:37] Speaker 00:
That's not correct.

[00:39:39] Speaker 01:
It says it can be the same.

[00:39:40] Speaker 00:
Exactly.

[00:39:41] Speaker 00:
Finally, I do want to say that to pick up on something that Judge Reyna asked about, the district court did not find legally insufficient any of Dr. Ryan's opinions about why item codes were present and found.

[00:39:57] Speaker 00:
Both declarations found at pages 4621 to 29 of the appendix and at 4758 to 61, or also

[00:40:08] Speaker 00:
because of the way the appendix was created at 4825 to 29.

[00:40:12] Speaker 00:
These were never found insufficient, and we think that the district court failed to properly recognize that those created a factual basis for a finding of infringement, even under the district court's construction.

[00:40:25] Speaker 04:
OK, thank you.

[00:40:26] Speaker 04:
The case will be submitted.

[00:40:27] Speaker 00:
Thank you, Your Honor.