[00:00:25] Speaker 05:
Okay.

[00:00:26] Speaker 05:
The next case is number 16, 1795.

[00:00:30] Speaker 05:
Intellectual Ventures 1 and Intellectual Ventures 2 against Motorola Mobility.

[00:00:36] Speaker 05:
Mr. Nelson.

[00:00:36] Speaker 03:
Thank you, Your Honor.

[00:00:41] Speaker 03:
May it please the Court?

[00:00:43] Speaker 03:
What I'd like to do is start with the written description issue, if I may.

[00:00:46] Speaker 03:
So the history in how this raised, it starts with Markman, the claim construction issues at the Court below.

[00:00:53] Speaker 03:
There was an argument made by Motorola

[00:00:55] Speaker 03:
that said you can't have storage of the message on intermediate devices during the transfer.

[00:01:03] Speaker 00:
No matter how transient?

[00:01:04] Speaker 03:
Correct.

[00:01:05] Speaker 00:
And the other side's position was?

[00:01:08] Speaker 03:
No storage.

[00:01:09] Speaker 00:
The other side's position was transient storage is permissible.

[00:01:14] Speaker 00:
You're going to explain why this is wrong, because I think this is what the district court concluded.

[00:01:19] Speaker 00:
The range of the debate was between no storage and transient.

[00:01:23] Speaker 00:
The district court said,

[00:01:24] Speaker 00:
Ivy is right.

[00:01:26] Speaker 00:
It wasn't on the table.

[00:01:28] Speaker 00:
Nobody suggested that the claim allowed long-term storage of any sort.

[00:01:35] Speaker 00:
And your written description argument depends on the disparity between a long-term storage claim construction and the absence of written description support.

[00:01:43] Speaker 00:
And I think the district court said that was never on the table as a claim construction.

[00:01:48] Speaker 03:
So part of that's right and part of that's wrong.

[00:01:51] Speaker 03:
And let me explain the part of that that's incorrect.

[00:01:53] Speaker 03:
At Markman, that wasn't the issue.

[00:01:55] Speaker 03:
At Markman, what was presented was no storage.

[00:01:59] Speaker 03:
That was Motorola's position.

[00:02:01] Speaker 03:
You can't have storage during transfer.

[00:02:03] Speaker 03:
IV's position was storage is allowed, right?

[00:02:07] Speaker 03:
No limitation on that.

[00:02:10] Speaker 03:
In other words, those two requirements, there were two requirements that were stated in the patent about the keys to the invention being I don't have any intermediate storage and I don't require user login.

[00:02:23] Speaker 03:
The court, and I believe this is appendix of 378 is my recollection, and the markman said those were two distinct things.

[00:02:30] Speaker 03:
And there was no reason why you had to claim both of those things in any particular claim.

[00:02:35] Speaker 03:
Therefore, I'm not reading a storage limitation in.

[00:02:38] Speaker 03:
Where the transient, non-transient came in, Your Honor, was in the written description.

[00:02:43] Speaker 03:
Because Motorola then, the way Judge Robinson does her proceedings is the summary judgment motions are filed at the same time as the markman.

[00:02:51] Speaker 03:
So in the alternative, the argument was made, if you don't have this storage limitation in there that Motorola sought during claim construction, then you violate the written description.

[00:03:02] Speaker 03:
The argument made by IV was, no, no, we have written description for no storage limitation because we describe using the internet as an intermediary device.

[00:03:13] Speaker 03:
And our expert, through a declaration, says that there is transient storage, so to speak, that goes on temporary storage in there.

[00:03:21] Speaker 03:
So that was the claim construction issue.

[00:03:24] Speaker 03:
Now, given that claim construction at trial is what the court said at written description, I'm not going to decide summary judgment of written description because I believe there's a factual issue as to whether there's disclosure of this transient storage through the use of the internet.

[00:03:39] Speaker 03:
So then at trial, the decision was made by Motorola.

[00:03:43] Speaker 03:
Take that factual dispute off the table.

[00:03:45] Speaker 00:
So just at that point in the summary judgment, did you say,

[00:03:49] Speaker 00:
for purposes of this argument, will stipulate to transient storage being disclosed, still wouldn't be enough because the claim construction actually allows any period of storage.

[00:04:01] Speaker 03:
No, that wasn't, at the summary judgment, that position was not taken.

[00:04:04] Speaker 00:
Doesn't that confirm that this question of long-term storage was simply nowhere asserted by, I mean, obviously not asserted by you, but also not asserted by them?

[00:04:16] Speaker 00:
No.

[00:04:16] Speaker 00:
So they were asserting long-term storage is allowed,

[00:04:19] Speaker 00:
you would have had to say, transient storage doesn't support long-term storage.

[00:04:25] Speaker 03:
No, that was raised at trial.

[00:04:27] Speaker 03:
So there's no requirement that you have to raise every issue in summary judgment in order to preserve that.

[00:04:33] Speaker 03:
In fact, I don't need to file a summary judgment motion on anything.

[00:04:36] Speaker 03:
The reason why that dichotomy was set up was because of the claim construction position was taken in summary judgment and Judge Robinson's procedures that she would consider summary judgment in connection with the claim construction.

[00:04:49] Speaker 03:
So the position was taken then.

[00:04:51] Speaker 03:
There is a storage limitation.

[00:04:54] Speaker 03:
Storage on intermediate devices is precluded.

[00:05:00] Speaker 03:
And then the alternative position in the written description summary judgment motion at the time was, if you don't have that, in other words, if that limitation is not part of claim 41 in this case, then it's invalid for written description.

[00:05:13] Speaker 01:
But there's no question but that there is a written description that would support

[00:05:18] Speaker 01:
temporary storage is part of the transfer, right?

[00:05:21] Speaker 03:
Actually, we would disagree with that, but we don't need to take that position.

[00:05:26] Speaker 01:
But what's precluded, it seems to me, is long-term storage that continues after the transfer takes place.

[00:05:34] Speaker 01:
And that quite apart from whether the issue was raised that Judge Robinson was quite correct, that the claims here don't include long-term storage that's not part of the transfer.

[00:05:47] Speaker 03:
No, the written description issue is that the claims allow long-term storage as part of the transfer process.

[00:05:54] Speaker 01:
So in other words... I don't understand what that means.

[00:05:58] Speaker 01:
As I understand it, what happens here in the transfer is if the device isn't turned on, there might be temporary storage until it is turned on and the transfer can be completed and there's a delay in the transfer as a result of the device not being turned on.

[00:06:17] Speaker 01:
And that that, as you say, that's part of the internet, that's what happens.

[00:06:24] Speaker 01:
But that doesn't present a written description issue.

[00:06:27] Speaker 01:
What presents a written description issue if there's some storage that continues after the transfer is complete?

[00:06:32] Speaker 01:
And I don't see that the claims address that or cover that.

[00:06:37] Speaker 03:
So when you say that device, are you talking about the accused devices or talking about those

[00:06:44] Speaker 03:
device that's described in the patent.

[00:06:46] Speaker 01:
The device that's described by the claims.

[00:06:49] Speaker 01:
It doesn't seem to me that a reasonable interpretation is that that would include long-term storage that continues after the transfer is complete.

[00:06:59] Speaker 03:
Well, there's no limitation in claim 41.

[00:07:01] Speaker 03:
There's no limitation in storage at all.

[00:07:03] Speaker 01:
There are in claims 10, 26... The specification says that the

[00:07:10] Speaker 01:
storage that long-term storage is associated with email is undesirable, you know, we don't want to do that, so why wouldn't one just construe the claim not to reach that?

[00:07:20] Speaker 03:
Well, but that wasn't IV's position.

[00:07:22] Speaker 03:
IV's position was any type of storage is allowed.

[00:07:25] Speaker 03:
They didn't take the position in response to claim construction that said, we want a negative limitation on the claim.

[00:07:32] Speaker 03:
Their argument and the district court's conclusion, which is the appendix of 378, that's the Markman opinion,

[00:07:38] Speaker 03:
is there's no limitation of storage at all, your honor.

[00:07:42] Speaker 03:
And so the device, just to address your question directly, you wouldn't have a situation in the device that's described in the specification, as well as claimed in the patent, where the device, the receiving device, is off when the message is sent.

[00:07:58] Speaker 03:
Because at column 13, for example, of the patent.

[00:08:02] Speaker 00:
But the transient storage, my understanding is that was,

[00:08:06] Speaker 00:
that they had evidence is part of what the internet does, is trans and storage that occurs when the receiving device is on.

[00:08:15] Speaker 03:
That would occur when the receiving device is on.

[00:08:18] Speaker 00:
Correct.

[00:08:19] Speaker 00:
Correct.

[00:08:20] Speaker 00:
That was their response at trial to your claim that the written description doesn't support it.

[00:08:29] Speaker 00:
The written description refers to internet transmission.

[00:08:33] Speaker 00:
even for devices that are on, temporarily stores things that routers are somewhere along the way.

[00:08:39] Speaker 00:
And so it has to allow that.

[00:08:41] Speaker 03:
That was the response to the written descriptions of the judgment motion.

[00:08:44] Speaker 03:
That's correct, Your Honor.

[00:08:45] Speaker 00:
At trial too, right?

[00:08:46] Speaker 00:
Didn't that then issue went to trial?

[00:08:48] Speaker 03:
At trial, that really wasn't the issue.

[00:08:50] Speaker 03:
So in other words, that was what was taken off the table.

[00:08:55] Speaker 03:
The court said that there's a factual dispute on this, whether the internet presents transient storage during transfer.

[00:09:02] Speaker 03:
So rather than argue that factual dispute, the decision was made, well, let's just focus on the long-term storage piece, which there was no argument that that was allowed by the claim.

[00:09:15] Speaker 03:
In other words, long-term storage during transfer.

[00:09:18] Speaker 03:
Everybody agreed.

[00:09:19] Speaker 03:
The Markman opinion said there's no limitation on storage during transfer at all.

[00:09:23] Speaker 03:
Their expert agreed repeatedly that yes, long-term storage during transfer is allowed by claim 41.

[00:09:29] Speaker 01:
But what is during?

[00:09:31] Speaker 01:
See, that's the problem I'm having, enduring transfer as opposed to storage that is occurring after transfer is completed.

[00:09:39] Speaker 03:
Well, the fact of the matter is the second one was never, we could never have raised that because that wasn't the claim construction.

[00:09:46] Speaker 03:
There was no limitation on storage at all.

[00:09:49] Speaker 03:
That's true in these devices and that would have been a non-infringement argument had that

[00:09:54] Speaker 03:
you know point that i think that interspecification is saying long-term storage is bad it's talking about long-term storage after transfers completed that would occur for example well no long-term storage it isn't just after there's no distinction that's being made right because you you could have an email system and there are plenty of those that when it's popped in other words it's downloaded that's the end of the message doesn't retain a copy but you do have

[00:10:22] Speaker 03:
for security issues, the fact is it exists there.

[00:10:26] Speaker 03:
It exists in some interim devices that are outside the control of the receiving party, and that creates a security risk.

[00:10:34] Speaker 03:
That's what the patent says.

[00:10:35] Speaker 03:
There is no distinction made in the patent between long-term storage after transfer versus long-term storage during transfer.

[00:10:43] Speaker 03:
And, Your Honor, you'll never have the second long-term storage during transfer, not just the disparagement issue that's there,

[00:10:51] Speaker 03:
but in terms of the way the invention is described.

[00:10:53] Speaker 03:
So in column 13 of the patent, at line 60, it says in the present invention, so in the present invention, broad language, to send a file from one interconnected PC to another, each PC must be able to detect communication responses from other PCs.

[00:11:10] Speaker 03:
So in other words, there's already a ping that's made before a message is ever sent, and it goes out in detail and explains embodiments of what those things are.

[00:11:19] Speaker 01:
I don't want to truncate this too much, but I do, and I don't know whether Judge Toronto has more questions on this, but I did want to get to direct infringement before we run out of time.

[00:11:29] Speaker 01:
Sure, absolutely.

[00:11:32] Speaker 01:
In reading the specification and the claims, it seems to me that where it's talking about an authentication message, it's talking about the authentication message being received by the center.

[00:11:48] Speaker 01:
I think it's rather explicit about that.

[00:11:51] Speaker 01:
Isn't that a requirement of the claim that the authentication message be received by the sender as opposed to being stored by the carrier somewhere?

[00:12:03] Speaker 03:
Yeah, that's correct.

[00:12:04] Speaker 03:
The authentication message would be received by the sender as well as then a delivery report.

[00:12:11] Speaker 00:
Can you show me where in the claim it says that and whether that's part of what you

[00:12:17] Speaker 00:
at them instructed on that.

[00:12:19] Speaker 03:
Right, right.

[00:12:20] Speaker 01:
So let me... It's in column 19, right, of the patent.

[00:12:29] Speaker 01:
For example, on 19 line 4, the receipt file is returned from the recipient to the sender directly or through a third-party authenticator.

[00:12:42] Speaker 01:
Isn't that suggesting that this receipt

[00:12:46] Speaker 03:
Message is sent back to the sender Well, that is there's no question that that's the idea in claim 41.

[00:12:54] Speaker 03:
I'm not sure That there is that explicit requirement in claim 40, right?

[00:12:59] Speaker 03:
I didn't need to understand that was a dispute No, that is so let me let me frame what the dispute is so that the wet what claim 41 requires in that regard to there's two things there's the the delivery delivery confirmation message and

[00:13:14] Speaker 00:
as well as... That goes to the third party authenticator.

[00:13:18] Speaker 03:
Correct.

[00:13:18] Speaker 03:
That would be from the recipient of the message sent to the third party authenticator.

[00:13:25] Speaker 03:
Then the third party authenticator generates a delivery report, right?

[00:13:30] Speaker 03:
And this obviously goes to the obviousness argument as to the importance of that and having a third party authenticator so that there's no dispute between parties in the instance of when there's a lack of trust, so to speak.

[00:13:43] Speaker 03:
In terms of the direct infringement issue, there was absolutely no evidence.

[00:13:48] Speaker 00:
So let's just focus on the delivery report, because under the Centillion case, what's required is that all... Let me just ask you this, because it connects about three sentences ago with the current point.

[00:14:01] Speaker 00:
Why does the user, the center, the customer, not benefit from the anti-fraudulent claim benefit that you just mentioned?

[00:14:12] Speaker 00:
that the third party authenticator provides?

[00:14:15] Speaker 03:
Well, I'm not talking about the delivery confirmation message.

[00:14:19] Speaker 03:
There's two separate requirements.

[00:14:20] Speaker 03:
There's also the report as well.

[00:14:23] Speaker 03:
And it's the report that we focused on, which would be generated by the authenticator.

[00:14:27] Speaker 03:
What was accused was in what's called the MMSCs, which would be something in the networks of the service providers, somebody like Verizon, for example.

[00:14:39] Speaker 03:
There was a point pointed to a log that was generated.

[00:14:42] Speaker 03:
There was no evidence whatsoever that that was sent to the recipient, or excuse me, the sender of the message.

[00:14:48] Speaker 00:
Why doesn't each user, as you described a moment ago, benefit from the existence of such a report that if needed can be obtained?

[00:15:01] Speaker 03:
Well, there's no evidence of that.

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

[00:15:03] Speaker 01:
I thought it couldn't be obtained.

[00:15:04] Speaker 03:
it was the reason that it is far as the record is in this case it can't be obtained by the sent the recipients either part for three of the carrier for three of the carriers absolutely one percent that's yet so there was no evidence put into it in at the trial in terms of the record that says here here's the center could get this if they needed it and this would be the benefit associated with that or the recipient i guess so as part of your obvious in this case you had a witness say

[00:15:34] Speaker 00:
One reason for the motivation to get the third party authenticator in the process was that it provides a benefit, I assume, to users of the system, that there is this third party out there who can call out one of the parties who claims falsely that the message was never gotten.

[00:16:00] Speaker 03:
To a degree.

[00:16:03] Speaker 00:
Wasn't that what you had?

[00:16:04] Speaker 03:
What your witness said?

[00:16:05] Speaker 03:
In terms of the motivation to combine the two references, that's right.

[00:16:08] Speaker 00:
Right, but it's still a... You said that it was a benefit to do this, to have the third party authenticator.

[00:16:18] Speaker 00:
Why is that not a benefit that under your reading of Centillion is a benefit to the user of the system?

[00:16:27] Speaker 03:
Two different benefits that we're talking about.

[00:16:29] Speaker 03:
So the benefit in terms of the motivation to combine

[00:16:32] Speaker 03:
was that in the reference that was direct, where the sender would send the delivery confirmation message to the recipient, would send the delivery confirmation to the sender.

[00:16:48] Speaker 03:
And then there would be a delivery report that would be generated.

[00:16:52] Speaker 03:
The reference itself, which the primary reference is the over-end reference, said that part of the reason why you do that is because parties may not trust, so generate contemporaneous records of that.

[00:17:03] Speaker 03:
The McCauley reference further recognizes having a third party in there.

[00:17:10] Speaker 03:
It transmits the messages as well, but to handle the reports such that there is further

[00:17:16] Speaker 03:
You know, trust, in other words, no dispute that you can't Jimmy the system, so to speak, to generate a false confirmation message or vice versa.

[00:17:23] Speaker 00:
So when a user, a sender of this system, one of the two kinds of direct infringers alleged sends a picture and text.

[00:17:35] Speaker 03:
Correct.

[00:17:36] Speaker 00:
Why does that user not benefit from that feature of the system?

[00:17:40] Speaker 03:
And when you say that feature, you're talking about the delivery.

[00:17:43] Speaker 00:
The third party authenticators receiving information that it's been received and generating a report.

[00:17:51] Speaker 03:
Okay.

[00:17:51] Speaker 03:
So it's that last piece, the generating a report.

[00:17:54] Speaker 00:
So in the... So was that not part of your obviousness case?

[00:17:58] Speaker 00:
You didn't say that there was a motivation to generate a report by the third party?

[00:18:02] Speaker 03:
No, there absolutely is.

[00:18:03] Speaker 03:
That is part of the obviousness case.

[00:18:04] Speaker 01:
I thought that the obviousness testimony was that there was a benefit to the sender.

[00:18:10] Speaker 01:
in being able to secure verification that it was sent, but that with respect to three, with respect to direct infringement, with respect to three of the carriers, that opportunity does not exist.

[00:18:22] Speaker 01:
That the sender cannot secure that benefit of being able to secure a confirmation from the carrier.

[00:18:30] Speaker 03:
Is that correct?

[00:18:31] Speaker 03:
That is correct.

[00:18:32] Speaker 03:
That is correct.

[00:18:33] Speaker 03:
And that's the distinction that I'm trying to draw.

[00:18:35] Speaker 03:
So with respect to the motivation to combine,

[00:18:39] Speaker 03:
The question was, would there be a motivation of somebody that already recognizes a problem when there are these?

[00:18:46] Speaker 03:
There was no dispute that there was a delivery confirmation message from recipient to sender, as well as the delivery report generated in the primary reference.

[00:18:57] Speaker 00:
But that was a dissent.

[00:18:59] Speaker 00:
These details matter.

[00:19:00] Speaker 00:
Did you make a carrier-specific non-infringement JMLL argument?

[00:19:04] Speaker 00:
I don't remember seeing it in your brief.

[00:19:06] Speaker 03:
With respect to the direct infringement?

[00:19:08] Speaker 03:
Yes.

[00:19:09] Speaker 03:
Yeah.

[00:19:10] Speaker 00:
So as long as there is some carrier that makes this anti-fraud report available, your JMOL argument has to be rejected on that ground, on that point.

[00:19:24] Speaker 03:
Well, I agree with respect to that particular issue.

[00:19:27] Speaker 03:
If that were the argument, it would be a damages issue.

[00:19:29] Speaker 03:
I understand that, Your Honor, which we haven't raised yet.

[00:19:33] Speaker 03:
But that isn't the argument.

[00:19:35] Speaker 03:
Here, there was no evidence that was made.

[00:19:38] Speaker 03:
Right?

[00:19:39] Speaker 03:
No evidence that was made that that delivery report, which is a requirement of the claim, has any benefit to the sender at all.

[00:19:45] Speaker 00:
Your own obviousness evidence?

[00:19:47] Speaker 03:
No.

[00:19:49] Speaker 03:
It doesn't at all.

[00:19:50] Speaker 03:
Because the obviousness evidence was only the motivation to substitute in the position of the sender generating the messages in the report, the third party authenticator.

[00:20:04] Speaker 03:
So there was no dispute as to whether there would be a motivation to generate a delivery report whatsoever.

[00:20:15] Speaker 05:
Last point, and we're going to save your rebuttal time, but anything else you need to tell us at the moment?

[00:20:21] Speaker 03:
No.

[00:20:22] Speaker 03:
I'll save it for later.

[00:20:22] Speaker 03:
Thank you, Your Honor.

[00:20:24] Speaker 05:
OK.

[00:20:24] Speaker 05:
Thank you, Mr. Nelson.

[00:20:26] Speaker 05:
Mr. Berlovy.

[00:20:29] Speaker 02:
May I please the court?

[00:20:31] Speaker 01:
I think it's important with the written description argument to... Let's stick with the direct infringement thing since we were discussing that just now.

[00:20:40] Speaker 01:
If I understand correctly, you don't dispute that with respect to three of the carriers that it had no capability of sending this report back to the sender, right?

[00:20:50] Speaker 02:
Right, but you still benefit from the overall use of the system and it's there just because it doesn't send it back, which the claim doesn't require.

[00:20:57] Speaker 01:
Okay, I understand the position, but they can't get with three of them.

[00:21:01] Speaker 01:
With respect to the other one, is it agreed that there's no evidence that the report was sent back?

[00:21:10] Speaker 02:
The capability is certainly there.

[00:21:13] Speaker 02:
Was there evidence that the carriers were actually doing this?

[00:21:18] Speaker 02:
No, but the capability is there.

[00:21:21] Speaker 02:
But it doesn't matter to the claim, because the claim only requires that the authentication device generate the delivery report.

[00:21:28] Speaker 02:
It doesn't require it to go back.

[00:21:30] Speaker 02:
And you still benefit from that being there, because you could call the carrier, or you can look at your bill and see what messages you see.

[00:21:38] Speaker 01:
As to one carrier.

[00:21:40] Speaker 01:
As to US Cellular.

[00:21:42] Speaker 02:
Well, really as to any carrier, because it's going to be recorded at the authentication device.

[00:21:47] Speaker 01:
I thought the record was pretty clear that as to the three, you couldn't get the message.

[00:21:52] Speaker 02:
that it wouldn't be sent back.

[00:21:54] Speaker 02:
It doesn't mean that you couldn't get it through alternative means.

[00:21:56] Speaker 02:
It doesn't mean that it's not there for you to call the carrier or get it on your bill.

[00:22:01] Speaker 02:
I think the point with direct infringement is that you benefit from each of the limitations, even though centillion doesn't require that you literally benefit on an element by element basis.

[00:22:12] Speaker 00:
I don't think that that's a... This does seem awfully important.

[00:22:19] Speaker 00:
Was there evidence as to three of the carriers

[00:22:22] Speaker 00:
that there was no way for the sender, for example, to get the information about whether the message had been received?

[00:22:35] Speaker 02:
It's not that there was no way to get that information because by definition of it being retained at the MMSC there is a way to get it.

[00:22:42] Speaker 02:
It's that it wasn't actually sent back to them.

[00:22:45] Speaker 02:
That would be

[00:22:46] Speaker 01:
As part of the system, you couldn't get the information.

[00:22:49] Speaker 01:
You'd have to go outside the system to get the information.

[00:22:52] Speaker 01:
Is that fair?

[00:22:53] Speaker 02:
That would be fair.

[00:22:54] Speaker 02:
But again, what the claim requires is only that that authentication device generate that delivery report.

[00:23:01] Speaker 02:
The claim does not require that the delivery report be sent back to the sender.

[00:23:08] Speaker 02:
It doesn't require that at all.

[00:23:10] Speaker 01:
Yeah, but I think this discussion is assuming that it doesn't require that it be sent back.

[00:23:14] Speaker 01:
But the question is whether, under centillion, there's a benefit to the sender if it's not sent back.

[00:23:22] Speaker 02:
Right, but under centillion, you have to benefit from the invention as a whole.

[00:23:26] Speaker 02:
It's not a benefit.

[00:23:27] Speaker 00:
Well, let's assume that the better reading of centillion is that you have to benefit from each feature, including here, the creation of a record

[00:23:39] Speaker 00:
in the third party authenticator, just assume this, a record by the third party authenticator that the message was received.

[00:23:48] Speaker 02:
You're benefiting from it, regardless of whether you see it, because there's a record of it.

[00:23:52] Speaker 00:
But do you see it then?

[00:23:53] Speaker 00:
Would you really benefit from it if you never could get it?

[00:23:57] Speaker 02:
You don't have to know that you benefit.

[00:23:59] Speaker 02:
Yes, because if you never could get it, because it could go on your bill.

[00:24:03] Speaker 00:
It's used to track.

[00:24:03] Speaker 02:
It's used for anti-fraud.

[00:24:05] Speaker 02:
As you said, it could be used for anti-fraud.

[00:24:07] Speaker 02:
The fact that you don't get the delivery report, which again, is not a requirement of the claim, there's no knowledge piece to centering.

[00:24:15] Speaker 02:
You don't have to know that you're benefiting.

[00:24:18] Speaker 02:
And to hold that would be grafting on almost a science or knowledge requirement to 271A.

[00:24:24] Speaker 02:
And 271A is a strict liability offense.

[00:24:28] Speaker 02:
So if you are using it, and if you're benefiting from the system as a whole, if you're using a system that meets all the elements,

[00:24:36] Speaker 02:
you are deriving that benefit whether you know it or not.

[00:24:39] Speaker 01:
Do you agree that they don't know it, that the users here don't know it?

[00:24:43] Speaker 02:
I don't agree that they know or don't know because most of them presumably are receiving a bill that would have all of those records.

[00:24:50] Speaker 01:
In other words, the record doesn't show that they knew it.

[00:24:53] Speaker 01:
Right.

[00:24:54] Speaker 02:
The record is agnostic as to whether they know or not, but there is no knowledge requirement for use.

[00:25:01] Speaker 02:
You don't have to

[00:25:03] Speaker 02:
All you have to do is put it into service.

[00:25:05] Speaker 01:
But the problem is how do you benefit from it if you don't know that the feature exists?

[00:25:11] Speaker 02:
Well, I'll give you an example, Your Honor.

[00:25:13] Speaker 02:
I mean, there could be a thousand inventions in a cell phone that you don't know exist, but you're benefiting from all the time.

[00:25:23] Speaker 02:
Phones get faster.

[00:25:25] Speaker 02:
You don't know how it's getting faster.

[00:25:27] Speaker 02:
You don't know the inner workings of it.

[00:25:29] Speaker 02:
But nevertheless, you're benefiting from it

[00:25:32] Speaker 02:
from the feature.

[00:25:34] Speaker 02:
You don't know what's going on at the base station.

[00:25:36] Speaker 01:
It's a situation in which somebody is doing something for you that benefits you.

[00:25:40] Speaker 01:
So the question here is, in terms of the ability of the user to secure verification, the user doesn't know about the ability to secure verification, so it's a little bit difficult to see how that's a benefit to the user.

[00:25:55] Speaker 01:
Now, in terms of anti-fraud, that's something

[00:25:58] Speaker 01:
which arguably benefits the user, even though the user doesn't know about it.

[00:26:02] Speaker 01:
But it seems to me that if the claim benefit is being able to get the report and the user doesn't know about the ability to get the report, it's a little difficult to see how the user has benefited.

[00:26:13] Speaker 02:
Well, there's the anti-fraud scenario, as you said.

[00:26:16] Speaker 02:
But say you had encryption.

[00:26:20] Speaker 02:
The user has no idea what encryption is going on, but they're still benefiting from that encryption here.

[00:26:25] Speaker 02:
You're benefiting from the authentication device.

[00:26:27] Speaker 02:
You're benefiting from someone making sure that message was delivered.

[00:26:31] Speaker 02:
And you are benefiting on that basis alone.

[00:26:35] Speaker 02:
So there's a device out there that's confirming this for you.

[00:26:38] Speaker 02:
You benefit by having someone confirm something for you.

[00:26:40] Speaker 02:
If you had a banker confirming all your transactions for you, that's a benefit to you whether you know the bank is confirming them for you or not.

[00:26:49] Speaker 02:
Someone is confirming delivery of these messages for these users

[00:26:53] Speaker 02:
And that's a benefit that they're receiving, whether they get that report or whether they know about it.

[00:26:59] Speaker 00:
Can I ask a turn to another piece of the infringement, the contributory infringement?

[00:27:04] Speaker 00:
Why is picture only MMS transmission not a substantial non-infringing use?

[00:27:12] Speaker 02:
So based on the jury instruction, which was the MMS hardware and software was what was pointed to as the

[00:27:22] Speaker 02:
the piece that we were pointing to.

[00:27:24] Speaker 02:
If you don't have a text with the picture, you don't have multimedia, and not having multimedia can't be the same as having multimedia.

[00:27:34] Speaker 00:
Well, here's my confusion about that.

[00:27:36] Speaker 00:
It seems to me that what you just said, and which I think is the argument you made in your brief, is a way of saying, well, this can't be a substantial non-infringing use because it's not infringing.

[00:27:49] Speaker 02:
It's not just that it's not infringing.

[00:27:51] Speaker 02:
It's almost like it's the opposite.

[00:27:53] Speaker 00:
Does it use this same system?

[00:27:58] Speaker 00:
A picture only transmission.

[00:28:01] Speaker 00:
Does it use the MMS functionality?

[00:28:06] Speaker 02:
No.

[00:28:06] Speaker 00:
You used functionality.

[00:28:07] Speaker 02:
No, because it's not an MMS.

[00:28:09] Speaker 02:
It's just a picture only.

[00:28:11] Speaker 02:
That's not a multimedia message.

[00:28:13] Speaker 00:
I guess I'm truly seeing that as like 180 degrees backwards.

[00:28:19] Speaker 00:
So you're going to need to explain.

[00:28:20] Speaker 00:
It seems to me it's one thing to say it's not infringing.

[00:28:23] Speaker 00:
It's another thing to say, forget about what the patent claims.

[00:28:28] Speaker 00:
What does the accused device do?

[00:28:31] Speaker 00:
The accused functionality, does it, when I send a picture without any text, am I using the MMS functionality?

[00:28:41] Speaker 00:
The accused MMS functionality.

[00:28:43] Speaker 02:
We would say no, because it's not, an MMS is not being sent.

[00:28:50] Speaker 02:
Because it's not multimedia, it's one form of media.

[00:28:54] Speaker 01:
Is the software different?

[00:28:57] Speaker 01:
I mean, is there some, what are you suggesting here?

[00:29:00] Speaker 01:
That there's separate software for sending pictures and pictures plus text?

[00:29:04] Speaker 02:
Well, the software, well, there is separate, truly separate software for the text only.

[00:29:10] Speaker 00:
The text only.

[00:29:10] Speaker 02:
The SMS, completely different.

[00:29:12] Speaker 00:
Right, that's what I thought, picture only.

[00:29:14] Speaker 02:
The MMS, you're not using

[00:29:16] Speaker 02:
And if you look at the jury instruction again, because this was a jury instruction that was agreed upon and was not objected to, it had to be the hardware and the software for the MMS functionality, the full extent of that.

[00:29:28] Speaker 02:
And what's missing is when you don't have the text, it's A, not multimedia, and you're not having this combining, this single combined file that has to get encapsulated to be sent, because there's the limitations about the single combined file.

[00:29:39] Speaker 01:
But that doesn't seem to me to answer the question.

[00:29:41] Speaker 01:
The question is whether there

[00:29:44] Speaker 01:
there is the same software that's used for sending a picture as sending a picture plus text.

[00:29:50] Speaker 02:
I would say it's within the same application is what it is.

[00:29:54] Speaker 01:
That sounds like a substantial non-infringing use.

[00:29:58] Speaker 02:
Again, for the reason set forth in every trial, we would say it's not.

[00:30:03] Speaker 00:
You haven't argued or pointed to evidence that

[00:30:06] Speaker 00:
Basically, it's an oddball thing to send a picture without text.

[00:30:11] Speaker 00:
Everybody puts text, so it may be non-infringing, but it's not substantial.

[00:30:16] Speaker 00:
I don't remember seeing that point being made.

[00:30:18] Speaker 02:
That point was not made in the briefing.

[00:30:21] Speaker 00:
And what about on the inducement side of things?

[00:30:24] Speaker 00:
Isn't there a difference between, I'm not going to get the numbers right, two of the manuals and the other manuals?

[00:30:33] Speaker 02:
Well, yes, but there's evidence that cuts across all models.

[00:30:38] Speaker 02:
First of all, all the models work the same.

[00:30:40] Speaker 02:
That was the evidence adduced to trial.

[00:30:43] Speaker 02:
So you're putting out the same functionality.

[00:30:45] Speaker 02:
I would submit you can't have intent as to some phones and not other phones when they have the same functionality.

[00:30:53] Speaker 02:
Putting that aside, we also have advertisements and what was called MotoCare, which is on their website, which tells you how, highlights this

[00:31:02] Speaker 02:
feature and tells you how to use it across models.

[00:31:05] Speaker 02:
What's this feature?

[00:31:06] Speaker 02:
The MMS feature, the MMS functionality.

[00:31:09] Speaker 02:
So there's what we have.

[00:31:10] Speaker 02:
Plus text?

[00:31:12] Speaker 01:
Pictures plus text?

[00:31:13] Speaker 02:
Pictures plus text, yes, MMS.

[00:31:15] Speaker 02:
So you have it in multiple manuals, you have it in advertisements, and you have it in MotoCare.

[00:31:21] Speaker 02:
There's also literally no counter evidence on intent.

[00:31:27] Speaker 02:
It was struck.

[00:31:27] Speaker 02:
There was no witness.

[00:31:29] Speaker 02:
No one got up from

[00:31:30] Speaker 02:
Motorola and said, we didn't have intent for this to infringe because A, B, or C. There was none of that.

[00:31:39] Speaker 02:
And the only argument they say Motorola advances on appeal is that, well, oh, Centillion would negate our intent.

[00:31:47] Speaker 02:
But who was the trier effect?

[00:31:49] Speaker 02:
The trier affects the jury.

[00:31:50] Speaker 02:
The jury never heard anything about Centillion.

[00:31:53] Speaker 02:
So Centillion's not a basis to negate intent.

[00:31:56] Speaker 02:
They have nothing that negates intent on their side of the scale.

[00:32:00] Speaker 02:
And then on our side of the scale, we have manuals.

[00:32:04] Speaker 02:
We have all the products work the same.

[00:32:06] Speaker 02:
We have MotoCare.

[00:32:07] Speaker 02:
We have advertisements.

[00:32:09] Speaker 00:
But MotoCare is a website.

[00:32:12] Speaker 02:
Oh, part of the Motorola website explaining this.

[00:32:15] Speaker 00:
Correct.

[00:32:15] Speaker 00:
Without distinguishing among the several different models that are accused.

[00:32:19] Speaker 02:
Precisely, your honor.

[00:32:20] Speaker 02:
Yep.

[00:32:21] Speaker 02:
And you have the fact that they didn't change and never changed their behavior afterwards.

[00:32:24] Speaker 02:
So when you stack all these things on our side and the dearth of evidence for them,

[00:32:29] Speaker 02:
there's more than substantial evidence to infer intent for inducement.

[00:32:36] Speaker 02:
And again, saying that only two manuals having it when you have evidence that cuts across, that can't negate intent for evidence that cuts across all models.

[00:32:49] Speaker 02:
And you can't have intent as to some models when you have the same feature across all models.

[00:32:58] Speaker 02:
individualized intent for each product.

[00:33:03] Speaker 02:
You can't, especially when there's no evidence to the contrary.

[00:33:09] Speaker 01:
Is the jury actually supposed to receive evidence about cases and legal interpretations to determine the reasonableness of a legal interpretation?

[00:33:20] Speaker 02:
Right, but it's not, it needs to be in a

[00:33:24] Speaker 02:
Well, I would say yes because the jury is the one determining the intent.

[00:33:27] Speaker 02:
I'm not sure we've decided that.

[00:33:29] Speaker 02:
Okay.

[00:33:30] Speaker 02:
But regardless, it would have had, even if the jury didn't hear it, it has to come from someone at Motorola.

[00:33:35] Speaker 02:
Motorola is not saying we have no intent because.

[00:33:40] Speaker 02:
That can't be articulated through the mouth of an attorney because it needs to come from a witness.

[00:33:46] Speaker 02:
It needs to come from Motorola.

[00:33:47] Speaker 02:
And that's what Judge Robinson recognized when she struck this good faith belief defense.

[00:33:54] Speaker 02:
because there was no witness.

[00:33:56] Speaker 02:
There was no one there at Motorola to say, we have this belief.

[00:34:01] Speaker 02:
It's almost like hearsay.

[00:34:04] Speaker 02:
The attorney is saying, Motorola's intent is negated.

[00:34:09] Speaker 02:
And again, this is a litigation defense after the fact, and the law is not such that... So your view is it has to be subjective intent.

[00:34:19] Speaker 01:
Objective reasonableness isn't enough.

[00:34:22] Speaker 02:
Well, I don't think they've even shown the objective reasonableness because, again, there's no- Well, why should they have been entitled to argue to the jury that it was objectively reasonable?

[00:34:34] Speaker 01:
She prohibited them from doing, right?

[00:34:38] Speaker 02:
Well, she didn't prohibit them from arguing anything to the jury if they would have had a witness or someone to put forward this.

[00:34:47] Speaker 02:
And also, the centilian piece, what was struck was

[00:34:51] Speaker 02:
a good faith belief based on invalidity.

[00:34:54] Speaker 02:
There was never good faith belief based on centillion until in the post-trial briefing.

[00:35:01] Speaker 02:
That was not the evidence that was struck.

[00:35:03] Speaker 02:
So they said, we want to put on evidence of a good faith belief based on invalidity.

[00:35:09] Speaker 02:
No witness.

[00:35:10] Speaker 02:
That was struck.

[00:35:11] Speaker 02:
And then the centillion is now what they think their basis is for a good faith belief raised in the 50, the Rule 50 papers.

[00:35:21] Speaker 00:
Can I just double check one thing that may seem trivial?

[00:35:25] Speaker 00:
You do not request an injunction in this case, is that right?

[00:35:29] Speaker 02:
Have we not requested an injunction?

[00:35:31] Speaker 02:
The injunction was not put in the complaint.

[00:35:35] Speaker 00:
Okay.

[00:35:35] Speaker 00:
I ask that for jurisdictional reasons.

[00:35:38] Speaker 02:
Our jurisdiction.

[00:35:40] Speaker 02:
Yep.

[00:35:40] Speaker 02:
And then I will reserve any time unless anyone has any questions about specific waiver or description.

[00:35:47] Speaker 02:
Thank you.

[00:35:51] Speaker 05:
Mr. Nelson, would you rebuttal time?

[00:35:58] Speaker 03:
So on the direct infringement piece, this goes back to the centillion issue, there isn't any evidence in the record for any of this.

[00:36:06] Speaker 03:
So the only evidence in the record is as to three of the carriers, you cannot.

[00:36:11] Speaker 03:
The user can't request the delivery report.

[00:36:14] Speaker 03:
It can't be used for anything.

[00:36:15] Speaker 00:
Where is that?

[00:36:15] Speaker 00:
Can you show me that?

[00:36:18] Speaker 03:
Yeah, that is in our brief.

[00:36:20] Speaker 03:
You have that?

[00:36:21] Speaker 03:
Here.

[00:36:25] Speaker 03:
The appendix is 639.

[00:36:28] Speaker 03:
639.

[00:36:29] Speaker 00:
Right.

[00:36:32] Speaker 03:
And that's the trial record, 399, 11 to 13.

[00:36:35] Speaker 03:
And then it's page 49 and 50 of our brief year.

[00:36:39] Speaker 03:
And the other citation as to U.S.

[00:36:44] Speaker 00:
I'm sorry, 639 where?

[00:36:47] Speaker 03:
It's page 399, 11 to 13.

[00:36:52] Speaker 01:
What is this testimony from their expert witness?

[00:36:55] Speaker 01:
Yes, I believe that's right.

[00:36:58] Speaker 03:
Yeah, the cross of... It's the testimony, but the cross-examination testimony.

[00:37:04] Speaker 03:
And then you'll see... Oh, I should let you look at that before I move to the next one.

[00:37:09] Speaker 00:
I'm sorry.

[00:37:09] Speaker 00:
So what are you pointing me to say that carriers other than U.S.

[00:37:13] Speaker 00:
Cellular do not make reports in any way available?

[00:37:22] Speaker 00:
No, where is that?

[00:37:26] Speaker 00:
The lines you just showed me, I'm understanding to say something about US Cellular.

[00:37:35] Speaker 03:
Right, that's in the answer.

[00:37:37] Speaker 03:
So there's no evidence with respect to anybody.

[00:37:40] Speaker 03:
So it's page 399.

[00:37:41] Speaker 03:
It's appendix 639.

[00:37:44] Speaker 03:
It's 399 of the trial record.

[00:37:46] Speaker 03:
And the answer is as to US Cellular is the only one that even saw evidence

[00:37:51] Speaker 03:
of the generation of a delivery report.

[00:38:00] Speaker 00:
So that sounds like an argument for non-infringement.

[00:38:07] Speaker 00:
Not no benefit, just non-infringement as to all of the calls that go over the carriers other than the US cellular.

[00:38:15] Speaker 00:
I don't see you making that argument.

[00:38:17] Speaker 03:
Well, no, no, we're talking about the benefit piece.

[00:38:20] Speaker 00:
You just said something about three of the carriers.

[00:38:22] Speaker 00:
You said this evidence, and I can't read it this fast, says that three of the carriers don't even generate a report.

[00:38:30] Speaker 00:
How in the world is that not a non-infringement argument?

[00:38:32] Speaker 03:
Well, if I said that don't generate the report, don't make the report available is what I meant.

[00:38:37] Speaker 03:
So if I said that, I misspoke, Your Honor.

[00:38:38] Speaker 03:
I apologize.

[00:38:39] Speaker 03:
It's not available to the sender.

[00:38:41] Speaker 03:
That's correct.

[00:38:42] Speaker 03:
And that's what this testimony is.

[00:38:44] Speaker 03:
So the evidence was only that it's even available as to one.

[00:38:47] Speaker 03:
And there was no evidence whatsoever provided that that was ever done, that it was ever used for any purpose.

[00:38:53] Speaker 03:
You heard a bunch of speculation by IV's counsel saying, well, that could be used for billing.

[00:38:58] Speaker 03:
Again, there's no, excuse me, no evidence that it's actually used for billing at all.

[00:39:02] Speaker 03:
That's just speculation.

[00:39:05] Speaker 03:
What about inducement?

[00:39:06] Speaker 03:
Inducement as to the manuals.

[00:39:09] Speaker 01:
Well, the whole question of inducement as to whether J-Moll should have been granted on inducement.

[00:39:15] Speaker 03:
Right.

[00:39:15] Speaker 03:
So as to 12 of the 14, what they primarily relied on was the manuals and showed the manuals instructing, they say, the use of MMS.

[00:39:26] Speaker 03:
As to 12 of the 14, it's undisputed that there is no discussion of sending text in a picture, which is what's required under their infringement theory in the case.

[00:39:36] Speaker 00:
What about this website thing that they, that Mr. Yeah, the website thing was

[00:39:45] Speaker 03:
Well, in their brief, what they cite for benefit is a discussion by their expert of the patent itself.

[00:39:52] Speaker 03:
So they don't cite the website.

[00:39:56] Speaker 00:
On inducement.

[00:39:57] Speaker 03:
Correct.

[00:39:58] Speaker 03:
And they cite that for evidence of inducement.

[00:40:00] Speaker 00:
Why is that not enough?

[00:40:02] Speaker 00:
That plus actual testimony that these all work and were designed to work the same way?

[00:40:09] Speaker 03:
Well, for two reasons.

[00:40:10] Speaker 03:
One, there isn't anything that's talking about those with respect to particular funds.

[00:40:14] Speaker 00:
Right?

[00:40:16] Speaker 00:
Right, but if the website says, this applies regardless of the phone.

[00:40:20] Speaker 03:
It's just talking about functionality generally.

[00:40:23] Speaker 03:
It's not talking about the functionality in a particular phone, nor is there any discussion.

[00:40:28] Speaker 03:
Remember, another requirement in the phones is that they be set under their infringement theory for automatic receipt.

[00:40:35] Speaker 03:
And there's no pointing to it, whether it be in the manuals themselves or in this website.

[00:40:41] Speaker 03:
that the user set these up for automatic receipt of these messages.

[00:40:46] Speaker 03:
So you're lacking that functionality as well.

[00:40:50] Speaker 03:
And so what we have here is a broad, well, I've pointed to two of the manuals.

[00:40:58] Speaker 03:
And in the two of the manuals, I can point to picture and text being an example that's shown.

[00:41:04] Speaker 03:
I can't point to any functionality that says do this with automatic delivery of the message.

[00:41:11] Speaker 03:
And then there's a website statement that isn't particular to any of the phones where there's just a generic statement about sending MMS messages.

[00:41:20] Speaker 03:
And there's no discussion in there about setting these phones up for automatic delivery, why you would want to do that, what the benefits are of doing that.

[00:41:29] Speaker 03:
So there's a gaping hole, and this is their burden, to show this.

[00:41:36] Speaker 03:
I know there was a lot of talk about

[00:41:37] Speaker 03:
Motorola not having a witness to come up and rebut this.

[00:41:42] Speaker 03:
But it's their burden to show the intent required for inducement.

[00:41:46] Speaker 03:
It's not Motorola's burden to show a lack of intent.

[00:41:50] Speaker 03:
Now there was, Your Honor, in addition, one other question about, and I believe this goes to both the contrib and the inducement point, about whether a picture only message would use MMS.

[00:42:03] Speaker 03:
And that is the case.

[00:42:05] Speaker 03:
I think they conceded that.

[00:42:07] Speaker 03:
I think they conceded that.

[00:42:09] Speaker 03:
Okay.

[00:42:10] Speaker 03:
It's the appendix 634 and that testimony continues to 635.

[00:42:15] Speaker 03:
So it is the case.

[00:42:17] Speaker 03:
And there was no dispute that that would be a substantial amount of infringing use.

[00:42:22] Speaker 03:
I think you saw that here.

[00:42:24] Speaker 03:
Rather the argument was that can't be because it doesn't infringe, which I don't quite understand that logic.

[00:42:30] Speaker 03:
But that was the argument that was made.

[00:42:35] Speaker 03:
Without that, I won't go back to address the written description unless your honors have any questions there.

[00:42:41] Speaker 03:
Or we didn't address the obviousness.

[00:42:44] Speaker 03:
I don't know if there are questions specific.

[00:42:47] Speaker 03:
I'd be happy to address those, but I don't want to belabor that if your honors don't have any questions.

[00:42:51] Speaker 05:
Any more questions?

[00:42:52] Speaker 05:
Any more questions, Mr. Nels?

[00:42:54] Speaker 05:
OK.

[00:42:55] Speaker 05:
We'll take the case under submission.

[00:42:58] Speaker 05:
Thank you, Ruth, for the argument.

[00:42:59] Speaker 03:
Thank you very much.

[00:43:01] Speaker 05:
All rise.

[00:43:16] Speaker 05:
The honorable court is adjourned until tomorrow morning at 10 a.m.