[00:00:45] Speaker 04:
Our next case this morning is number 16-1691, an OVCIS LLC versus AT&T Mobility.

[00:00:53] Speaker 04:
Mr. Chappell.

[00:00:59] Speaker 00:
Thank you, Your Honor.

[00:01:00] Speaker 00:
May it please the Court?

[00:01:02] Speaker 00:
This case presents a situation where the claim construction, the District Court read in limitations that are perceived from the specification and prosecution history into the claim.

[00:01:13] Speaker 00:
And in specific, I'm talking about the construction

[00:01:15] Speaker 00:
of pre-authorized, which the court construed as having a code specific to a mobile device that permits a request for that device's location to be made.

[00:01:25] Speaker 02:
If we think the district court got that right, I mean, I know there's a lot of back and forth, a lot of issues in the briefs.

[00:01:34] Speaker 02:
But if we think the district court got that right, then where does that take us down the line with respect to the other issues?

[00:01:41] Speaker 00:
That takes us to, in either case, we go to invalidity.

[00:01:45] Speaker 00:
where we don't believe that there's clear and convincing evidence of invalidity.

[00:01:50] Speaker 00:
And it takes us to the preclusion order where there was a combination that was precluded that would, I believe, satisfy the district court's current claim construction.

[00:01:59] Speaker 02:
Okay.

[00:01:59] Speaker 02:
I didn't mean to cut you off.

[00:02:00] Speaker 02:
I just was asking how these all play together.

[00:02:04] Speaker 00:
So I think the two overarching issues are claim construction and invalidity.

[00:02:12] Speaker 00:
Anopsis loses on claim construction, then it goes to the preclusion order.

[00:02:16] Speaker 00:
There's part of the preclusion order I should mention, though.

[00:02:19] Speaker 00:
It's continuously tracking that we believe should be addressed in any case.

[00:02:25] Speaker 05:
In your reply briefing, you say that nothing in the specification says the special code must be unique for each mobile device.

[00:02:34] Speaker 05:
Yes.

[00:02:35] Speaker 05:
What would be a special code that isn't unique?

[00:02:40] Speaker 00:
identifies the source of the request as an improved source.

[00:02:45] Speaker 05:
So all such and such type of phones?

[00:02:51] Speaker 00:
That would be an example.

[00:02:52] Speaker 00:
All phones and devices I have.

[00:02:56] Speaker 00:
And I think I'm jumping around here, but it relates to the argument that I would make about PIN.

[00:03:04] Speaker 05:
I have a question about that, yeah.

[00:03:06] Speaker 00:
I don't think PIN is a code

[00:03:10] Speaker 00:
So I don't think PIN should be read into the claims.

[00:03:13] Speaker 00:
I don't think that's the distinction that the inventor was making.

[00:03:16] Speaker 00:
But if it were, what a PIN does is it identifies the person seeking information.

[00:03:22] Speaker 00:
So I have a PIN for my bank account.

[00:03:25] Speaker 00:
I have a PIN for my alarm system.

[00:03:27] Speaker 00:
I have a PIN for my iPad.

[00:03:28] Speaker 00:
And they probably shouldn't all be the same PIN, but they are.

[00:03:31] Speaker 00:
And in that case,

[00:03:33] Speaker 00:
They're identifying me as the person is seeking the information.

[00:03:37] Speaker 05:
I do suppose this is public.

[00:03:43] Speaker 02:
But isn't that what the trial court found?

[00:03:47] Speaker 02:
Is that in order to be pre-authorized, there has to be a code that relates to the seeker of the information?

[00:03:54] Speaker 00:
No, I think the trial court, by this language specific to a mobile device, said there has to be a code that relates to the

[00:04:02] Speaker 00:
the device from which the information is being sought.

[00:04:06] Speaker 00:
So in other words, there would need to be a code for my bank account, there would need to be a code for my home alarm system, there would need to be a code for my iPad.

[00:04:14] Speaker 00:
So what's wrong with that?

[00:04:15] Speaker 04:
There's a lot of discussion that relates to this in the specification and in the prosecution history, and there seems to be a lot of suggestion that there does have to be a specific code.

[00:04:27] Speaker 00:
I think there are three reasons.

[00:04:29] Speaker 00:
I'll go through them.

[00:04:30] Speaker 00:
First is if you look at pre-authorized across all the claims, not just the ones that were asserted.

[00:04:35] Speaker 00:
And we take a look at claim 20.

[00:04:39] Speaker 00:
Claim 20 talks about the first resource that provides a pre-authorized service to a mobile device.

[00:04:46] Speaker 00:
And then it goes on to refer to a second resource that is pre-authorized to access the first service.

[00:04:53] Speaker 00:
So in claim 20, pre-authorized is used in context with access to a service, not access to a mobile device.

[00:05:00] Speaker 00:
And I think the court's claim construction specific to a mobile device doesn't make much sense when plugged into claim 20.

[00:05:07] Speaker 00:
The second point I'd like to make is with regard to the specification.

[00:05:13] Speaker 00:
The district court focused on one section of the specification.

[00:05:18] Speaker 00:
And that's the special code section of the specification.

[00:05:25] Speaker 00:
But there's another section of the specification with a broader discussion

[00:05:29] Speaker 00:
of pre-authorized, and that, that occurs earlier in column two, and it says the caller may add specific codes.

[00:05:44] Speaker 00:
What line?

[00:05:45] Speaker 00:
Excuse me?

[00:05:46] Speaker 04:
What line?

[00:05:47] Speaker 00:
Oh, lines 20 through 24.

[00:05:49] Speaker 00:
It says the caller may add specific codes

[00:05:57] Speaker 00:
to a paging message to enable the paging network to disclose the global position of the remote receiving unit after the message is transmitted.

[00:06:08] Speaker 00:
And the Cluck construction ought to take into account that broader description as well.

[00:06:14] Speaker 00:
And I did want to point out, because AT&T points to prosecution history of subsequent patents, but page 8900 in the record

[00:06:27] Speaker 00:
There is a discussion of pre-authorized and pointing to two sections in the specification, both the part that the district court looked at and the part that I just read.

[00:06:49] Speaker 00:
And my point here is that if you have a description in the specification, one that is narrower and one that is broader,

[00:06:57] Speaker 00:
that the claim construction ought to encompass both.

[00:07:02] Speaker 00:
And I don't believe that the district court's claim construction does that.

[00:07:11] Speaker 00:
And I guess finally, I will talk a little bit more about the prosecution history where the word pin was introduced.

[00:07:21] Speaker 00:
And there were two pieces of prior art.

[00:07:23] Speaker 00:
One was the Lemelson patent, and one was the Singer patent.

[00:07:27] Speaker 00:
And they both used a PIN as a permission to access location of a mobile device.

[00:07:34] Speaker 00:
And in distinguishing the invention over those two, it's correct that the inventor referred to PIN as part of the pre-authorization.

[00:07:46] Speaker 00:
But then he went on to say, the PIN is not enough, that you need the second check.

[00:07:51] Speaker 00:
So the real point in distinguishing the prior art there was that there were two checks

[00:07:57] Speaker 00:
of permission before you got to preauthorize.

[00:08:01] Speaker 00:
That's not something we're running away from.

[00:08:03] Speaker 00:
That's something we embrace.

[00:08:05] Speaker 00:
The concept of a PIN in the prosecution history really came out of the prior art.

[00:08:10] Speaker 00:
Essentially, the inventor said, even if you have a PIN that gives you a preauthorization, that's not enough.

[00:08:15] Speaker 00:
We have this second check.

[00:08:17] Speaker 00:
So I think if you look at the real substance rather than the superficial, the inventor used the name,

[00:08:26] Speaker 00:
the word invention and use the word pin.

[00:08:29] Speaker 00:
But if you look at the substance of what he's saying is the distinction between the prior art and the invention, it's the two checks.

[00:08:40] Speaker 00:
Even if it's pre-authorized, you still have the second check.

[00:08:44] Speaker 02:
But the second check is in the accept or deny limitation, is that right?

[00:08:49] Speaker 00:
That's right.

[00:08:50] Speaker 00:
The key here is that, and what the inventor foresaw, is that you might have multiple

[00:08:56] Speaker 00:
applications, sources, people that want to get the location of your mobile phone.

[00:09:00] Speaker 00:
And you might want to have that mobile phone give the location to some sources and not others.

[00:09:08] Speaker 00:
And in the prior art, what you did, if you turn the permission off, you shut off location.

[00:09:15] Speaker 00:
So it was available to no one.

[00:09:17] Speaker 00:
And you were left with this all or nothing.

[00:09:19] Speaker 00:
And what the invention does is it comes up with a system where

[00:09:23] Speaker 00:
The location is continually being provided to the system.

[00:09:26] Speaker 00:
It can be provided to anyone, but you can then selectively, well, it can be provided to anyone that's pre-authorized, but then you can selectively pick.

[00:09:35] Speaker 02:
But does that have to do with whether pre-authorized was properly construed, or does that have to do with whether or not the accept or deny limitation is found in the prior art that was relied upon for the invalidity determination?

[00:09:50] Speaker 00:
Well, I think it has to do with both.

[00:09:52] Speaker 00:
It has to do with the construction because I believe that the district court read a discussion that encompassed both pre-authorization.

[00:10:01] Speaker 04:
Pre-authorization has nothing to do with the second check and so the prosecution history in talking about PINs and pre-authorization must be talking about the first one, right?

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

[00:10:11] Speaker 00:
If that was the question, I'm sorry I didn't understand it.

[00:10:13] Speaker 00:
The PIN is being used in connection with pre-authorization.

[00:10:17] Speaker 00:
That's absolutely correct, but it's not being used to distinguish the invention because pin comes from the prior art.

[00:10:23] Speaker 00:
The concept of the pin comes from the prior art.

[00:10:26] Speaker 04:
Wait, our cases don't suggest that you can't be bound by prosecution history just because you rely on something that was in the prior art.

[00:10:36] Speaker 00:
No, I think the cases suggest that if you distinguish your invention in the prosecution history, you're barred from picking up

[00:10:44] Speaker 04:
Well, even in our cases, say, even if you distinguish it based on a feature that was in the prior art, you're still barred.

[00:10:51] Speaker 00:
But I guess my argument is that he's not distinguished it based on a feature in the prior art.

[00:10:57] Speaker 00:
He's using the feature in the prior art as part of a discussion as to why it's distinguished.

[00:11:03] Speaker 00:
So if we take a look at the discussion of Lemelson.

[00:11:06] Speaker 00:
In Lemelson, his argument is, these are the things you would need to do to improve the Lemelson reference.

[00:11:13] Speaker 00:
And he says, the pre-authorization PIN, then you'd have to have this second step where you have a second check.

[00:11:19] Speaker 00:
So what he's talking about is changing the prayer art before it would meet the invention.

[00:11:27] Speaker 00:
I don't think he's using PIN to define what the invention is.

[00:11:32] Speaker 02:
So how does the invention practice the accept or deny?

[00:11:40] Speaker 00:
There is a code that would be checked to see if it's turned on or off for that particular.

[00:11:44] Speaker 00:
So a second code.

[00:11:46] Speaker 00:
A second code.

[00:11:47] Speaker 00:
Or it could be part of the same code.

[00:11:50] Speaker 00:
You could have a long code to check the first part for pre-authorization.

[00:11:53] Speaker 00:
You could check the second part for accept or deny.

[00:11:56] Speaker 00:
The specification is silent as to the structure of that code.

[00:12:01] Speaker 02:
Well, the district court thought that Parctab practiced accept or deny.

[00:12:04] Speaker 02:
Explain to me why that was the wrong conclusion.

[00:12:08] Speaker 00:
Well, I'm not sure I completely understand why the district court thought that it practiced accept or deny.

[00:12:13] Speaker 00:
But my understanding of it.

[00:12:15] Speaker 02:
Because it could cut off all access.

[00:12:19] Speaker 00:
Right.

[00:12:20] Speaker 00:
And the park type system looks at the incoming ID.

[00:12:24] Speaker 00:
And there's a check of a file called TabRC to see if it's approved.

[00:12:30] Speaker 00:
And the district court then cited that same check of the TabRC code.

[00:12:34] Speaker 00:
for the accept or deny.

[00:12:36] Speaker 00:
So you have the same code, not even different parts of it, but the exact same act that ends up being the first and second check.

[00:12:43] Speaker 00:
I believe that's why the district court's analysis was incorrect in that regard.

[00:12:49] Speaker 04:
OK.

[00:12:49] Speaker 04:
You want to save the rest of your time for recall?

[00:12:52] Speaker 04:
Yes, please.

[00:12:55] Speaker 04:
Mr. Hawes?

[00:12:59] Speaker 01:
Thank you, Your Honor, and may it please the court?

[00:13:03] Speaker 01:
While there are a lot of interesting issues with regard to the construction of pre-authorized, this court doesn't need to reach them.

[00:13:09] Speaker 01:
Because while the plaintiff has asserted error, the plaintiff has not shown this court or even asserted the correct requirements for prejudicial error.

[00:13:18] Speaker 01:
As AT&T established in its brief, there is a separate requirement, the second check that we discussed, for which there is no substantial evidence in the record.

[00:13:28] Speaker 01:
As a result,

[00:13:28] Speaker 02:
No substantial evidence, what, that AT&T practices it?

[00:13:32] Speaker 01:
Yes, Your Honor, that AT&T practices a second shell.

[00:13:36] Speaker 01:
All of the evidence in the record, as pointed out in our brief, not only from AT&T witnesses, but also from third-party witnesses who actually build the equipment used in the network, was that the only feature they pointed to was never implemented in the AT&T network.

[00:13:50] Speaker 02:
So it's there, but you're just saying nobody implemented it?

[00:13:53] Speaker 01:
No, Your Honor, it's not there.

[00:13:55] Speaker 01:
When the network is put together.

[00:13:56] Speaker 02:
Well, that's not the way I read your brief.

[00:13:57] Speaker 02:
I read your brief to say, well, even our customers haven't bothered to implement it.

[00:14:01] Speaker 02:
But the implication is that it's there.

[00:14:04] Speaker 01:
Well, the third party, that's the third party testimony, Your Honor.

[00:14:07] Speaker 01:
So when they say they're customers, they're talking about AT&T editors.

[00:14:10] Speaker 01:
So when they put the system together, they either include that feature or they don't.

[00:14:14] Speaker 01:
And so the third party was saying, none of our customers have asked us to include that feature.

[00:14:18] Speaker 01:
It's never been implemented.

[00:14:20] Speaker 01:
And I would point out also, Your Honor, that the jury instructions in this case only go to use of the system as the infringement case, and that's not challenged on appeal.

[00:14:30] Speaker 01:
So it's not a question of making a system that might be capable.

[00:14:33] Speaker 01:
It's a question of using a system with that feature.

[00:14:36] Speaker 02:
And the evidence is... What about as it relates to validity?

[00:14:39] Speaker 02:
I mean, you're saying that AT&T never practiced that feature, but I don't see that feature being practiced in the prior art either.

[00:14:48] Speaker 01:
Which prior art?

[00:14:50] Speaker 02:
So we have two different... I know, but the judge relied primarily on ParkTab, which I think maybe that was a reverse of what she should have done, but she did.

[00:14:58] Speaker 01:
Well, Your Honor, we're looking at the judgment, not the opinion, and we have a jury verdict of invalidity for three of four claims, not all four.

[00:15:07] Speaker 02:
Yeah, with nobody who is somebody who is ordinarily skilled in the art having testified.

[00:15:15] Speaker 01:
Actually, Your Honor, I'd have to disagree with that.

[00:15:17] Speaker 01:
While there certainly was no one with an invalidity expert hat on, there were numerous witnesses who testified who had an ordinary skill in the art.

[00:15:24] Speaker 02:
Well, they were extraordinary skill in the art, were they not?

[00:15:27] Speaker 02:
You had other inventors testify.

[00:15:30] Speaker 02:
That's not ordinary skill in the art.

[00:15:31] Speaker 01:
Well, in terms of how skill in the art was defined in the evidence of this case, it actually is, Your Honor, in the sense of, for example, Mr. Foladare,

[00:15:39] Speaker 01:
is not a doctorate.

[00:15:40] Speaker 01:
He has a bachelor's and years of experience, which is what the skill and the art was defined as.

[00:15:44] Speaker 02:
But he never read his product onto the claims.

[00:15:48] Speaker 01:
No, Your Honor, he discussed for the jury what was in his product in ordinary terms and how it worked.

[00:15:54] Speaker 02:
Okay, so where in his product does it practice accept or deny with a secondary check?

[00:15:59] Speaker 01:
So, Your Honor, in terms of accept or deny with a secondary check, in the Joint Appendix at page 46754,

[00:16:07] Speaker 01:
And that's in column three, lines 36 to 38.

[00:16:10] Speaker 01:
The Foladare patent specifically says- Which volume is that in?

[00:16:15] Speaker 01:
I'm sorry, Your Honor.

[00:16:16] Speaker 01:
That, I believe, is, I think it's the fourth volume.

[00:16:23] Speaker 01:
Well, that one splits in there.

[00:16:25] Speaker 01:
Volume three.

[00:16:28] Speaker 05:
No.

[00:16:29] Speaker 01:
I believe it's actually volume five.

[00:16:40] Speaker 02:
46,754.

[00:16:42] Speaker 01:
No, it's volume four.

[00:16:50] Speaker 01:
Those two split right there in the 46,000s, which makes it a... It's five.

[00:16:55] Speaker 01:
Is it?

[00:16:56] Speaker 01:
Oh, no.

[00:16:58] Speaker 01:
All right.

[00:16:59] Speaker 01:
Okay, I got it.

[00:16:59] Speaker 01:
You found it.

[00:17:01] Speaker 01:
All right.

[00:17:01] Speaker 01:
So if you turn to column 40 of the pattern, and if you'll look at lines 36 to 38,

[00:17:08] Speaker 01:
And this is kind of a sum up, but it gives you the critical piece.

[00:17:12] Speaker 01:
You'll see that based on the ANI and or CED.

[00:17:17] Speaker 01:
You see that point, Your Honor?

[00:17:19] Speaker 01:
Yes.

[00:17:19] Speaker 01:
In 1136?

[00:17:20] Speaker 02:
Yeah.

[00:17:21] Speaker 01:
So that's critical, because these are different embodiments.

[00:17:23] Speaker 01:
And we don't disagree that there's an embodiment with one check.

[00:17:26] Speaker 01:
But the and there is an embodiment with two checks, because it does allow to check two different things before it provides the location information.

[00:17:36] Speaker 01:
ANI is the automatic number identification.

[00:17:39] Speaker 01:
So that's checking where someone is calling from.

[00:17:43] Speaker 01:
So for example, if I don't want someone to call from, I don't know, Houston, then I'm going to block ANIs that have a 713 at the beginning.

[00:17:51] Speaker 01:
The CED is the customer entered digits.

[00:17:55] Speaker 01:
That's the pin, your honor.

[00:17:56] Speaker 01:
So that's the idea of checking if that person has your particular code.

[00:18:01] Speaker 01:
So I can both check who that person is and whether they have my particular code.

[00:18:06] Speaker 01:
That's why there are two checks.

[00:18:07] Speaker 01:
This is, at minimum, substantial evidence, which, of course, is all we need for the jury verdict to be of help.

[00:18:14] Speaker 01:
And of course, these jury verdicts do not have different verdicts for Foladare or Dr. Watt's ParkTab system.

[00:18:20] Speaker 01:
So if you find this is substantial evidence, that's enough to uphold the verdicts of invalid.

[00:18:25] Speaker 02:
So this and what testimony from the inventor?

[00:18:31] Speaker 01:
So the inventor testimony, Your Honor,

[00:18:33] Speaker 01:
is at JA43854 and it runs through 858.

[00:19:02] Speaker 01:
And so he discusses that he talks about the ANI.

[00:19:05] Speaker 01:
You'll see that on what is page 47 of the testimony, but it's page 43875 of the appendix.

[00:19:13] Speaker 01:
And if you look at lines 18 through 20, you'll see he discusses the use of the ANI as a check.

[00:19:20] Speaker 01:
And then up above that- Wait, 43854?

[00:19:23] Speaker 01:
43875.

[00:19:24] Speaker 01:
Oh, 75.

[00:19:25] Speaker 01:
Sorry.

[00:19:26] Speaker 01:
OK.

[00:19:26] Speaker 01:
So 43875.

[00:19:31] Speaker 01:
And if you'll look, Your Honor, at lines 18 through 20, you'll see he's discussing the use of A&I as a check.

[00:19:38] Speaker 01:
Do you see that, Your Honor?

[00:19:40] Speaker 01:
Up above on the page, he talks about the first check.

[00:19:42] Speaker 01:
And this is lines 1 through 9, where he tells the jury, in ordinary person terms, what the 8-digit CID is.

[00:19:50] Speaker 01:
It's a PIN.

[00:19:51] Speaker 01:
It's a personal identification number.

[00:19:53] Speaker 01:
So he testified, explaining to the jury how the A&I and the CED made up the two checks used by his system.

[00:20:01] Speaker 01:
So the second check is just the number of the person who dialed?

[00:20:06] Speaker 01:
Well, you check that against numbers that are allowed to be used for location information.

[00:20:11] Speaker 01:
But yes, you're right.

[00:20:11] Speaker 01:
That's the data that's being checked.

[00:20:14] Speaker 02:
Why didn't you put on your validity expert?

[00:20:18] Speaker 01:
Your Honor, we felt we had, and the jury backed us up on this, we felt we had a great non-infringement pace.

[00:20:24] Speaker 01:
And the jury came our way on non-infringement.

[00:20:27] Speaker 01:
We didn't feel we needed to put on our invalidity expert.

[00:20:29] Speaker 01:
And we had already also put on

[00:20:31] Speaker 01:
no less than three witnesses who testified to what these... You must have been pretty surprised then when the jury sided with you on validity.

[00:20:40] Speaker 01:
Your Honor, we put on live witnesses describing the prior art to the jury in the terms that the jury had already heard experts.

[00:20:46] Speaker 01:
Dr. Wicker and the plaintiff's Dr. Rhodes have described what the claim required in real person terms.

[00:20:54] Speaker 01:
The jury took that together with the testimony of the prior art witnesses

[00:20:59] Speaker 01:
and was able, because they had substantial evidence, to find that there was invalidity.

[00:21:03] Speaker 01:
And this was a nuanced decision.

[00:21:05] Speaker 01:
This was not just a jury saying, we're going to rule for AT&T on everything.

[00:21:09] Speaker 01:
This jury deliberated for two days, and they found three of the claims invalid, but the fourth claim they did not find invalid.

[00:21:16] Speaker 01:
So this is not an unsophisticated situation.

[00:21:20] Speaker 01:
It's a situation that really shows us why this court has a very good rule of no bright line test for invalidity experts.

[00:21:27] Speaker 01:
you look whether there's substantial evidence.

[00:21:29] Speaker 01:
And you look at the record as a whole.

[00:21:31] Speaker 01:
The appellant has never in any of its briefs looked at the record as a whole and told you why there isn't substantial evidence.

[00:21:38] Speaker 01:
And that's the test, not a bright line test of is there a person with an invalidity expert hat.

[00:21:44] Speaker 01:
That's not the test that this court uses.

[00:21:46] Speaker 01:
And this jury's nuanced decision illustrates why the test you do use is the right test.

[00:21:56] Speaker 01:
Any other questions on invalidity?

[00:22:00] Speaker 01:
I would like to get to the prejudicial arrow point, because I think it's a fairly interesting point, given that we have an appellant who comes up and says, oh, pre-authorized.

[00:22:11] Speaker 01:
Court got it wrong.

[00:22:13] Speaker 01:
And then in the reply brief, they actually admit that all of their complaints about the motion to strike and the evidence being excluded also related to pre-authorized.

[00:22:25] Speaker 01:
And if Your Honor, if you can look, if you have their reply rate.

[00:22:27] Speaker 02:
So their position is that, yes, you may need the code of the mobile device for pre-authorization.

[00:22:35] Speaker 02:
But just like we talked about, you need a second pre-authorization piece in order to be able to do both, right?

[00:22:43] Speaker 02:
Well, so the pre-authorization is the first check.

[00:22:45] Speaker 02:
And the judge did a lot for that.

[00:22:47] Speaker 01:
The pre-authorization is the first check.

[00:22:49] Speaker 01:
The second check has to just be a second check.

[00:22:53] Speaker 01:
And what I'm saying is.

[00:22:54] Speaker 02:
But they have to be both.

[00:22:55] Speaker 02:
But you've just conceded that that second check has to be based on something that's already listed in the group of numbers, right?

[00:23:07] Speaker 01:
The claim just says you have to be able to accept or deny.

[00:23:10] Speaker 01:
Our example of that in the Folidaire reference is a comparison of numbers.

[00:23:15] Speaker 01:
But the claim says you accept or deny even though the person is pre-authorized.

[00:23:21] Speaker 01:
That's that second check.

[00:23:23] Speaker 01:
But the claim doesn't say exactly

[00:23:25] Speaker 01:
what you're checking.

[00:23:26] Speaker 01:
It just says you have to have the ability to accept or deny even though they are pre-authorized.

[00:23:32] Speaker 01:
And the problem, and the reason there's no prejudicial error here, even if there were error, the problem is at trial, they never put on any adequate substantial or evidence otherwise that AT&T does an accept or deny of pre-authorized, even under their theory, of pre-authorized individuals.

[00:23:53] Speaker 01:
That's why this court does not need to reach the construction of pre-authorized, because the jury's decision couldn't be changed even if pre-authorized was brought up.

[00:24:02] Speaker 01:
And I point the court to the SSL services versus Citrix systems case, which is 769 Fed 3rd, 1073.

[00:24:12] Speaker 01:
And there's a good quote that's right on point here on page 1084, which is, even if the district court erred in its construction,

[00:24:21] Speaker 01:
and talks about what the construction is.

[00:24:23] Speaker 01:
The result the jury reached would not change.

[00:24:27] Speaker 01:
And that court went on to not consider that construction at all because there was no need to do so.

[00:24:33] Speaker 01:
And that's the situation here.

[00:24:34] Speaker 01:
There's no need to consider the pre-authorized construction.

[00:24:37] Speaker 01:
AT&T showed in its brief that Anopsis did not show a second check.

[00:24:42] Speaker 01:
And Anopsis, in their reply, doesn't deny that there wasn't substantial evidence.

[00:24:46] Speaker 01:
They say, well, AT&T said it was pre-authorized.

[00:24:49] Speaker 01:
It was really important.

[00:24:50] Speaker 01:
So it must be prejudicial.

[00:24:52] Speaker 01:
But that confuses necessary and sufficient.

[00:24:56] Speaker 01:
Of course, each element of a claim is important because each element is necessary.

[00:25:01] Speaker 02:
Well, what's your response to their argument that, well, you know, this isn't really a fair comparison because if pre-authorized had been appropriately construed, the whole case would have been presented differently?

[00:25:14] Speaker 01:
First of all, that's always the case.

[00:25:20] Speaker 01:
And clearly, there are situations where claim construction is not prejudicial error.

[00:25:25] Speaker 01:
The point is, when you go to trial, if you disagree with construction of one element, that doesn't absolve you of your responsibilities to put on evidence for the other elements.

[00:25:33] Speaker 01:
And that's what we're saying they failed to do here.

[00:25:35] Speaker 01:
They didn't like the construction of pre-authorized.

[00:25:37] Speaker 01:
We all know that.

[00:25:39] Speaker 01:
But that doesn't mean that they get to go to trial, put on

[00:25:42] Speaker 01:
insufficient evidence as to the second check, and then come here and say, we want a whole new trial.

[00:25:48] Speaker 01:
It's not how it works under SSL services.

[00:25:50] Speaker 01:
Under SSL services, you need to show that based on what you did at trial, there would have been an impact on the jury decision.

[00:25:59] Speaker 01:
And given that there was no substantial evidence on an element of the claims at issue here, that means you can't have any prejudice, even if the court misconstrued, pre-authorized.

[00:26:11] Speaker 01:
But now I would like to hit some of the points made by Appellant with regard to the pre-authorized construction.

[00:26:20] Speaker 01:
First of all, the Appellant pointed out claim 20 and made a new argument about whether claim 20 makes a difference.

[00:26:26] Speaker 01:
And they said, well, that shows that uses the word service, which is broader than location.

[00:26:33] Speaker 01:
And it's true that claim 20 uses the word service.

[00:26:36] Speaker 01:
But really, claim 20 was just using a broader term

[00:26:39] Speaker 01:
And so perhaps it's true that you could be pre-authorized under claim 20 to do something other than seek the location of the cell phone.

[00:26:47] Speaker 01:
Maybe you're pre-authorized to make the cell phone create some really loud noise.

[00:26:52] Speaker 01:
Maybe you're pre-authorized to make the cell phone light up.

[00:26:55] Speaker 01:
But that doesn't change the scope of pre-authorized, especially when this inventor told the public what the invention was.

[00:27:03] Speaker 01:
If you look at the appendix, turn right side up,

[00:27:08] Speaker 01:
On page 880, the appellate, the applicant said, and this is, it's in the middle of that second paragraph there, said, in applicant's invention, even after the system verifies a PIN to provide location information, the remote unit still determines when a pre-authorized unit should get location and when it shouldn't.

[00:27:33] Speaker 01:
They're not talking about the prior app.

[00:27:36] Speaker 01:
The public has the right to rely on prosecution history that says, in applicant's invention.

[00:27:43] Speaker 01:
But that's a description of applicant's invention.

[00:27:45] Speaker 01:
And there's no question that it verifies a pin to provide location information.

[00:27:51] Speaker 01:
Keep in mind that pre-authorized was not in the original claims.

[00:27:56] Speaker 01:
And this court has held, for example, in the University of Texas versus Ben Q case,

[00:28:01] Speaker 01:
that when new terms are introduced to the claim that don't have specific specification, you look to the prosecution history to see what they mean.

[00:28:09] Speaker 04:
OK.

[00:28:09] Speaker 04:
Thank you, Mr. Rose.

[00:28:10] Speaker 04:
I think we're out of time.

[00:28:21] Speaker 00:
I would like to start with the prejudicial error argument and just explain.

[00:28:27] Speaker 02:
Did you introduce evidence that AT&T's product

[00:28:31] Speaker 02:
practiced the second check?

[00:28:34] Speaker 00:
Yes, we did.

[00:28:35] Speaker 00:
OK.

[00:28:35] Speaker 00:
And AT&T introduced evidence that that was not present.

[00:28:39] Speaker 04:
Where's the evidence that you introduced?

[00:28:42] Speaker 00:
I don't have that at hand right now, Your Honor.

[00:28:45] Speaker 00:
But the point I want to make that... What was it?

[00:28:48] Speaker 04:
It's not very convincing to say that you don't have it at hand.

[00:28:51] Speaker 04:
You're supposed to come and know your case enough to be able to answer the question.

[00:28:55] Speaker 00:
I do, but I don't think... I mean, I realize that.

[00:29:01] Speaker 00:
The point here is that we intended to present a case at different levels of their system.

[00:29:07] Speaker 00:
The gateway to the AT&T system, and the supple silver to the AT&T system, and the handsets, and the district court's pre-authorization and subsequent summer judgment precluded us from offering evidence at the gateway.

[00:29:25] Speaker 00:
And the evidence that we believe

[00:29:28] Speaker 00:
was particularly prejudicial.

[00:29:31] Speaker 00:
I mean, the prejudicial error came from excluding under that construction.

[00:29:35] Speaker 04:
But if the jury was compelled to find against you on the second issue, that is the second check, then it is harmless error, isn't it?

[00:29:45] Speaker 00:
No, because the evidence as to what that second check would have been at the gateway is completely different than what that second check was at the simple server.

[00:29:55] Speaker 04:
I don't understand what you're saying.

[00:29:56] Speaker 00:
The AT&T system has numerous checks.

[00:30:01] Speaker 00:
The first check is when a request is made for location at the gateway to the network by a third party.

[00:30:06] Speaker 00:
At that gateway, there's a check to see if that requester is authorized.

[00:30:12] Speaker 00:
And then there's a check to see if that requester is authorized for that specific mobile device.

[00:30:19] Speaker 00:
And that was our primary theory as to what

[00:30:25] Speaker 00:
pre-authorized and the second check were.

[00:30:27] Speaker 00:
That entire theory was precluded by the summary judgment in the district court.

[00:30:33] Speaker 00:
So the evidence of that first check and the second check was never presented.

[00:30:37] Speaker 03:
So in order for you to win, we'd have to agree with you the district court made an error in precluding that theory.

[00:30:44] Speaker 00:
Yes.

[00:30:44] Speaker 00:
And the reason that it made an error in precluding that theory is because the claim construction was incorrect.

[00:30:51] Speaker 00:
The claim construction

[00:30:52] Speaker 00:
of pre-authorized resulted in the preclusion.

[00:30:56] Speaker 02:
Well, putting aside the claim construction, couldn't you have argued to the district court that she shouldn't preclude it because what she's effectively doing is precluding you showing that second check, regardless of what pre-authorized meant as it relates to the first check?

[00:31:14] Speaker 00:
Well, I mean, I think there were issues in the way that district court granted summary judgment as a preclusion order rather than

[00:31:21] Speaker 00:
as a findings of fact.

[00:31:22] Speaker 00:
But the order which was enforced throughout the trial was that no evidence at the gateway was admissible.

[00:31:30] Speaker 00:
So we were completely missing that evidence, both of the first and second check at the gateway.

[00:31:37] Speaker 04:
OK.

[00:31:37] Speaker 04:
OK.

[00:31:37] Speaker 04:
Thank you, Mr. Chapman.

[00:31:38] Speaker 04:
Thank both counsels.

[00:31:39] Speaker 04:
The case is submitted.