[00:00:00] Speaker 00:
Before we begin this morning, I just want to, on behalf of the board, extend our gratitude to the Second Circuit and Chief Judge Katzman for hosting us today as part of our stay in New York, and we very much appreciate it.

[00:00:13] Speaker 00:
The first case this morning is 16-2362 Interdigital Cop Communications versus ZTE.

[00:00:21] Speaker 00:
Mr. McMahon, whenever you're ready.

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

[00:00:31] Speaker 03:
Good morning, Your Honors.

[00:00:32] Speaker 03:
May it please the Court.

[00:00:34] Speaker 03:
Two and a half years ago, a panel of this Court considered exactly the same patent specification that's at issue today and concluded that the invention as disclosed is the use of short codes and that the short codes used for that purpose carry no data.

[00:00:52] Speaker 00:
So what was the timing of that case, of our opinions, and when the district court considered this case?

[00:00:59] Speaker 00:
Was there an overlap in terms of timing?

[00:01:03] Speaker 03:
There was an overlap, Your Honor.

[00:01:04] Speaker 03:
By the time the court issued this decision, interdigital two, the jury had already reached a verdict in Delaware, and J-Mall motions were briefed, but not yet decided.

[00:01:16] Speaker 03:
And the parties notified the court in Delaware about this court's decision,

[00:01:21] Speaker 03:
and the court ultimately denied the Jamal motion and the parties then sought, ZTE sought and obtained a Rule 54B judgment to bring this issue to the court's attention.

[00:01:32] Speaker 03:
The court should follow that precedent from Interdigital 2 and reach the same conclusion here.

[00:01:39] Speaker 03:
Having failed to prove that ZTE infringes this patent family in two successive

[00:01:45] Speaker 03:
International Trade Commission investigations.

[00:01:47] Speaker 05:
Can I ask you about interdigital too?

[00:01:50] Speaker 05:
Did interdigital in that case contest the proposition that the language of the claims there was actually limited to short codes and excluded embodiment number one described in the spec?

[00:02:10] Speaker 05:
It's kind of a strange conclusion, right?

[00:02:15] Speaker 03:
Well, I don't think it is, and I can explain why, but to answer your question first, I think by the time it came to this court, it was basically undisputed that that claim language, in that case, successively sent transmissions, referred to the shortcodes.

[00:02:29] Speaker 03:
So it was undisputed?

[00:02:31] Speaker 03:
It was disputed at times.

[00:02:33] Speaker 03:
I think by the time it was argued, it was disputed.

[00:02:36] Speaker 05:
Right, but I guess what I'm wondering is, if that proposition was not disputed, then

[00:02:44] Speaker 05:
What's the status of what we said about that proposition in the course of resolving what was disputed in Interdigital 2?

[00:02:53] Speaker 03:
Well, I think the answer is that the court in Interdigital 2 looked at the two points, and I can talk about those two points, in the intrinsic record, in the specification, that lead to the conclusion that the invention is the short codes, and the short codes used for that purpose carry no data.

[00:03:07] Speaker 03:
And specifically, these two points come straight from the specification.

[00:03:11] Speaker 03:
The first point

[00:03:12] Speaker 03:
The short codes are the invention.

[00:03:14] Speaker 03:
I'll just read two passages here.

[00:03:16] Speaker 03:
The first one is at appendix 144.

[00:03:19] Speaker 03:
Appendix what?

[00:03:20] Speaker 03:
144.

[00:03:21] Speaker 03:
In the 966?

[00:03:22] Speaker 03:
This is the 966 patent, column one.

[00:03:25] Speaker 03:
Line 27.

[00:03:27] Speaker 03:
More specifically, the present invention.

[00:03:30] Speaker 05:
Right.

[00:03:30] Speaker 05:
So it does say that, but then when you get to the rest, it's absolutely clear.

[00:03:35] Speaker 05:
It says the first embodiment of the invention is as a whole column about the access codes and then, but the access code one is really not as good as it might be.

[00:03:46] Speaker 05:
And so we have a preferred embodiment.

[00:03:48] Speaker 05:
And I agree that there is, I mean, you might even call it a contradiction between what's said and what you were just describing and what comes

[00:03:55] Speaker 05:
comes later.

[00:03:57] Speaker 05:
But there's a whole column of what is described not as either prior art or an idea that we don't think is part of our invention, but is expressly described as the first embodiment of the invention.

[00:04:11] Speaker 05:
And you're saying we, maybe with their help in interdigital too, said really that's not what all of these claims are about.

[00:04:21] Speaker 05:
It reads those out.

[00:04:22] Speaker 03:
I think that's right.

[00:04:23] Speaker 03:
I think Your Honor is right to recognize the tension inside the patent, and I think the tension is resolved by two very clear statements that refer to the present invention, the first in column one, the second in column three, appendix 145, line

[00:04:40] Speaker 03:
19, which again says the present invention comprises a novel method and then goes on to say utilizing transmission of short codes.

[00:04:48] Speaker 03:
Those two statements make it perfectly clear using the language that this court uniformly accepts that the present invention is the short codes.

[00:04:57] Speaker 03:
The second step is what do the short codes do?

[00:05:00] Speaker 03:
How are they used for this purpose?

[00:05:02] Speaker 03:
And column 7 makes that clear.

[00:05:05] Speaker 03:
This is at appendix 147.

[00:05:08] Speaker 03:
I will read the whole passage.

[00:05:10] Speaker 03:
It certainly begins with the word the preferred embodiment, but it makes clear at the end of that paragraph, the short code used for this purpose carries no data.

[00:05:18] Speaker 03:
And that's exactly what the court quoted in Interdigital 2 and relied upon in concluding that the short code is the invention and the short code used for this purpose carries no data.

[00:05:28] Speaker 03:
I'm sorry.

[00:05:29] Speaker 03:
Line 49, 48 to 49.

[00:05:35] Speaker 05:
and carries no data you take to mean what we quoted the ALJ in the ITC case as meaning namely the signal is the code is not modulated with data and is not there was a nor neither nor in there does not modulate data nor is not used or intended to be used for this purpose I think is if that's the language you're referring to your

[00:06:05] Speaker 03:
Oh, neither modulated.

[00:06:06] Speaker 03:
Yes, there are different ways that this same concept has been described, that it's neither modulated by data, doesn't carry data.

[00:06:17] Speaker 03:
Does that address your question?

[00:06:18] Speaker 00:
Yes.

[00:06:19] Speaker 00:
Thanks.

[00:06:20] Speaker 00:
Can I just take on a little bit of a different direction?

[00:06:22] Speaker 00:
Quick question, which is, it doesn't seem you make a real strong or at least detailed argument why, if we agree with you on the claim construction, there's a problem with the infringement finding.

[00:06:34] Speaker 00:
That's your position, right?

[00:06:37] Speaker 03:
I'm sorry, Your Honor, here's the first part of your question.

[00:06:39] Speaker 00:
That if we were to agree with you that the claim construction was incorrect, that in fact changes or arguably changes the infringement.

[00:06:47] Speaker 03:
That's exactly right, Your Honor.

[00:06:49] Speaker 03:
That's exactly right.

[00:06:50] Speaker 03:
Interdigital on the same products, same

[00:06:53] Speaker 03:
common patent specification, essentially the same claim language, InterDigital failed twice at the ITC to prove infringement under the construction that was adopted in InterDigital 2.

[00:07:03] Speaker 03:
But you're asking for a remand and not a... Well, with respect, I think reversal would be more appropriate because it would be futile to go back for a third bite at the apple under this construction, having done it twice on these patents that share exactly the same specification.

[00:07:20] Speaker 03:
And when I say twice, what I mean is in the 800 investigation, the other two patents from this patent family, the 830 and the 636 patents, were at issue.

[00:07:29] Speaker 03:
But in the 868 investigation, the second round against ZTE, these two patents, 966 and 847, were at issue.

[00:07:37] Speaker 03:
And again, the commission sided with ZTE, found that Interdigital had not proved infringement, Interdigital appealed, and then withdrew that appeal.

[00:07:45] Speaker 03:
In light of those two proceedings,

[00:07:47] Speaker 03:
This would be the third bite of the apple we think it would be futile to root.

[00:07:50] Speaker 01:
Counsel, are these patents expired?

[00:07:54] Speaker 03:
Yes, they have, Your Honor.

[00:07:55] Speaker 01:
So we're just talking about damages, ultimately.

[00:07:58] Speaker 03:
That's correct, Your Honor.

[00:07:59] Speaker 01:
Are there suits pending against other defendants than these?

[00:08:03] Speaker 03:
I believe the answer is no, Your Honor, to my knowledge.

[00:08:08] Speaker 05:
If we were to conclude that there is some kind of doesn't carry data

[00:08:17] Speaker 05:
requirement for these terms.

[00:08:21] Speaker 05:
Does that idea have to be further clarified to define that somewhat general phrase so that if we were to say there's something missing, something important missing,

[00:08:43] Speaker 05:
But there might well be some work to be done in figuring out precisely how to define what implied limitation there is in there.

[00:08:57] Speaker 05:
Right, I guess that's my question.

[00:08:59] Speaker 05:
Or is it a very simple, carries no data, everybody understands what that means.

[00:09:04] Speaker 05:
It can't possibly mean more than one thing.

[00:09:07] Speaker 05:
So once we say that, we know what the claim construction is.

[00:09:10] Speaker 03:
I think that is the answer, Your Honor, and I think you're referring to Interdigital's argument that there should be a remand to address the construction of the word data.

[00:09:18] Speaker 03:
And the answer to that is no, it's not necessary.

[00:09:20] Speaker 03:
First of all, data is not a claim term.

[00:09:22] Speaker 03:
At this point, we're construing the construction.

[00:09:25] Speaker 05:
Yeah, but you're now making an argument about a limitation that is also not a claim term.

[00:09:30] Speaker 03:
Well, from a clear disclaimer within the specification, but the specification doesn't say anything more to narrow the term data or to define that term.

[00:09:39] Speaker 03:
The specification statement that the short code carries, no data, is clear on its face.

[00:09:44] Speaker 03:
And the purpose behind that is really quite simple.

[00:09:49] Speaker 03:
Prior to these patents, the signal that was ramped up, the ramp up of these power ramp up patents was a well-known concept, but the signal that was ramped up was a mixed, modulated signal, and there was data built into that signal.

[00:10:03] Speaker 05:
What kind of data?

[00:10:04] Speaker 03:
I think it varied by implementation, but

[00:10:07] Speaker 03:
signaling data.

[00:10:09] Speaker 05:
Data that ultimately became part of the content that somebody wanted to communicate or data about that was communicating with the setup functionality of the central network.

[00:10:28] Speaker 03:
I think more the latter, Your Honor, although I'm not sure I can universally speak to all implementations, but more the latter, setup data, not voice, not your voice, not your email.

[00:10:37] Speaker 03:
not that type of data, but set up data that was arranging the type of services, the type of call, was... Does that matter in terms of the infringement charge here?

[00:10:47] Speaker 05:
That is, maybe it's theoretically possible that something that one might call data is carried and that's not really excluded by the passage in the spec.

[00:11:00] Speaker 05:
But never the voice or the email or whatever it is.

[00:11:07] Speaker 05:
But maybe that dispute is immaterial to the charge of infringement.

[00:11:11] Speaker 05:
Can you enlighten?

[00:11:13] Speaker 03:
If I understand your question correctly, Your Honor, I think it is immaterial to the charge of infringement.

[00:11:17] Speaker 03:
And the reason is the purpose behind the invention.

[00:11:19] Speaker 03:
Going back to column one, which first said that the short code is the invention, it explains why the short code is the invention.

[00:11:26] Speaker 03:
There are two things that they were trying to accomplish.

[00:11:29] Speaker 03:
This is at appendix 144, 966, patent column one.

[00:11:34] Speaker 03:
Continuing the paragraph that we read from before.

[00:11:37] Speaker 03:
which says that the improved detection time allows a faster ramp up of the initial transmit power from the subscriber unit while reducing the unnecessary power overshoot.

[00:11:48] Speaker 03:
The point is they were trying to get the ramp accomplished as quickly as possible.

[00:11:51] Speaker 03:
And the way to do that was to send a naked code, a code not modulated by data.

[00:11:56] Speaker 03:
You modulate the signal by data, it becomes a longer signal.

[00:11:59] Speaker 03:
It takes more time to transmit.

[00:12:01] Speaker 03:
If you just transmit a naked code, you can complete that ramp up faster

[00:12:05] Speaker 03:
which moves on to the next step of setting up the call faster.

[00:12:08] Speaker 03:
And because it happens faster... But there's some lower limit, right?

[00:12:12] Speaker 05:
Because what the... What is it?

[00:12:16] Speaker 05:
The base station?

[00:12:18] Speaker 05:
What the base station is looking for is not just any little ping, but a ping with enough information to identify, I know who to communicate back with and send the pilot code back, right?

[00:12:28] Speaker 03:
A pattern.

[00:12:29] Speaker 03:
The pilot code is always transmitting, but you're right.

[00:12:32] Speaker 03:
The base station is looking for a pattern.

[00:12:34] Speaker 05:
a pattern, and that's why the longer the code, the more it takes time, the more time it takes for the base station to read through it, to use a shorthand, to figure out if the pattern is there, and if you send it something shorter, it'll take less time, and so you can send more of them quickly and overshoot less, right?

[00:12:51] Speaker 03:
That's exactly right, and interdigital was trying to reduce that down to the bare minimum.

[00:12:55] Speaker 03:
The shortest that could be sent, that was in the form of a short code, not modulated by data.

[00:13:01] Speaker 00:
Can I take you back to the question I asked earlier, which is assuming we were to agree with some variation of your analysis of the claim construction.

[00:13:11] Speaker 00:
And your answer, I recall, to whether or not it's a reversal or a remand was that it shouldn't be a remand because they shouldn't get a third bite at the apple.

[00:13:21] Speaker 00:
Is there some legal principle attached to they shouldn't get a third bite at the apple?

[00:13:25] Speaker 00:
I mean, what they would want is a jury trial to put on arguably new and different evidence to try to prove their case.

[00:13:31] Speaker 00:
of infringement.

[00:13:32] Speaker 00:
What precludes them from having the right to do that?

[00:13:35] Speaker 03:
Well, Your Honor, I can't cite a specific case that says they can't do that, except to say that we've been through this twice.

[00:13:42] Speaker 03:
They've been up to this court twice, previous to today.

[00:13:45] Speaker 03:
They withdrew the second appeal.

[00:13:47] Speaker 03:
The issue has been tried and tried again, and they have, except for this jury trial, which applied the wrong claim construction, they've lost every time.

[00:13:54] Speaker 03:
And at some point, my client begins to wonder, when is enough enough?

[00:13:58] Speaker 03:
When have we defended this enough times?

[00:14:00] Speaker 03:
I think that's why I point to the futility of going back to retread the same evidence of the same accused products, the same patents under the court's claim construction as adopted in Interdigital Two.

[00:14:12] Speaker 05:
Like an exhaustion, Doctor.

[00:14:14] Speaker 03:
Yes, that would be one way to say it.

[00:14:16] Speaker 03:
And I think my time is running very short.

[00:14:19] Speaker 03:
I haven't gotten to the second issue.

[00:14:22] Speaker 03:
Very briefly on that, Your Honor, I think that the

[00:14:29] Speaker 03:
Regardless of the claim construction issue, the court should reverse the district court's denial of Jamal because the expert, Dr. Jackson in this case, basically misapplied the claims.

[00:14:40] Speaker 03:
He was looking for two codes from the same code generator instead of the same code, which is what the claim requires.

[00:14:50] Speaker 05:
why the following understanding is wrong.

[00:14:52] Speaker 05:
And I thought from your brief, I was for a long time getting the idea that all that he was saying was it comes from the same generator, but the same generator runs independently for the first portion, for the second portion.

[00:15:05] Speaker 05:
But then the red brief points to a number of passages in the Joint Appendix from, in particular, the 3G spec, which seemed to indicate, as I understand it, that in fact

[00:15:19] Speaker 05:
The generator is given some inputs.

[00:15:22] Speaker 05:
Those inputs, in fact, produce or can produce, without changing the inputs, the whole thing.

[00:15:28] Speaker 05:
And the first portion, the first 2 to the 12 bits, are the first thing.

[00:15:34] Speaker 05:
And then when you want the second thing, you basically just continue.

[00:15:38] Speaker 05:
So it is actually the same code, not just from the same generator.

[00:15:43] Speaker 05:
It's different pieces of a singly generated string.

[00:15:48] Speaker 05:
Is that wrong?

[00:15:50] Speaker 03:
It is, and because the string that you're pointing to is a theoretical sequence that's never actually generated.

[00:15:56] Speaker 03:
And interdigital does not say that that theoretical sequence, which constitutes 33 million values, is the same code.

[00:16:03] Speaker 03:
They're pointing to two separate codes that are generated using that and say that those two separate things, those two separate codes are the same code because they come from the same code generator.

[00:16:15] Speaker 03:
Dr. Jackson admitted that the first code is defined

[00:16:18] Speaker 03:
as 4,096 bits in the standard.

[00:16:20] Speaker 03:
He admitted that the second code is defined as 38,400 bits in the standard.

[00:16:25] Speaker 03:
He admitted that the standard never defines the collective 42,496 bits as a code.

[00:16:31] Speaker 03:
And he admitted, shockingly, that no device ever takes those two and adds them together to the 42,000.

[00:16:36] Speaker 03:
His entire theory was premised on the fact that these two codes are coming from the same generator.

[00:16:41] Speaker 03:
He even called it a DVD player and said it's just like pressing pause.

[00:16:44] Speaker 03:
But the fact that the claims don't say

[00:16:46] Speaker 03:
same code generator.

[00:16:47] Speaker 03:
They say same code.

[00:16:51] Speaker 00:
Thank you.

[00:16:52] Speaker 00:
We'll restore some rebuttal.

[00:16:54] Speaker 02:
Thank you, Your Honor.

[00:16:58] Speaker 02:
May it please the Court, Max Grant for Interdigital, just so we're clear, Your Honor, on that last point, the 847 patent doesn't say same code.

[00:17:05] Speaker 02:
Code, of course, is a sequence of bits or chips.

[00:17:08] Speaker 02:
It says portion of a code and remainder of a code, and that's what the 847 patent says.

[00:17:15] Speaker 02:
Judge Toronto, your question with regards to whether this data issue was contested is 100% right.

[00:17:23] Speaker 02:
And in fact, in the interdigital two opinion at page 11 of the slip opinion, it says this argument would have been more effective.

[00:17:30] Speaker 05:
The slip opinion?

[00:17:31] Speaker 05:
Do you by any chance have the FX, you know, the Fed appendix site?

[00:17:37] Speaker 04:
I'll go give a section.

[00:17:39] Speaker 04:
I don't have to slip it.

[00:17:41] Speaker 04:
That's fine, Your Honor.

[00:17:42] Speaker 02:
I don't have it in my fingertips.

[00:17:45] Speaker 02:
I apologize.

[00:17:45] Speaker 02:
I've been working on the original opinion.

[00:17:47] Speaker 02:
But what it says is the argument would have been more effective.

[00:17:50] Speaker 05:
Tell us what the page is or something.

[00:17:51] Speaker 05:
Give us some context.

[00:17:53] Speaker 05:
Under what headings or something?

[00:17:56] Speaker 05:
Under what headings?

[00:17:57] Speaker 05:
We're going to try to follow along.

[00:17:59] Speaker 04:
We don't have the same version you have.

[00:18:01] Speaker 04:
I understand.

[00:18:02] Speaker 04:
It's under discussion, the power ramp of patents.

[00:18:06] Speaker 02:
it goes past the section and then there's a couple block quotes and then it says second interdigital argues and then the paragraph right after that says as an initial matter okay okay says as an initial matter this argument would have been more would have been more effective at challenging the commission's infringement analysis and not its claim construction so you're right that that

[00:18:35] Speaker 02:
issue wasn't live.

[00:18:37] Speaker 02:
My brother here talked about the same specification.

[00:18:40] Speaker 02:
That's true.

[00:18:41] Speaker 02:
But we have different claims.

[00:18:43] Speaker 02:
And one of the reasons the court, I think, was able to find that in the last interdigital two on the distinct patents that it said were different, that those short codes were synonymous with what was claimed was every single asserted claim in both of those patents included the limitation where the preamble, the initial, where the successively sent transmission

[00:19:05] Speaker 02:
is shorter than the message.

[00:19:12] Speaker 02:
Every single one of them said that and therefore the court treated the short code embodiment, one of two embodiments, as being coextensive with the claims.

[00:19:22] Speaker 02:
It's certainly possible that a patentee can limit its claims in a given patent to one of several disclosed embodiments.

[00:19:29] Speaker 02:
Here in the 847 patent, that limitation is absent.

[00:19:34] Speaker 02:
And therefore, the claims in the 847 patent, which don't include this shorter than the message limitation, have to be broad enough to include that first-embodiment access code.

[00:19:46] Speaker 02:
I think Mr. McMahon is wrong.

[00:19:48] Speaker 05:
If the access code is covered by the sending or transmitting language in this patent, what is the message

[00:20:02] Speaker 05:
that is also part of the claim that is in any way described in the spec.

[00:20:11] Speaker 02:
So there's no question in the description of the access code, which starts at column six, line one, and goes on as the court noted for a column and a half, that that is distinct from the message.

[00:20:23] Speaker 02:
And it describes it as being distinct.

[00:20:25] Speaker 02:
And what it describes is the access code functioning in the same way that the second description of the short code embodiment

[00:20:33] Speaker 02:
the same function that the short codes are using.

[00:20:36] Speaker 02:
And so it's wrong to say that the entire invention is limited to short codes.

[00:20:41] Speaker 02:
That access code embodiment includes the power ramp-up feature.

[00:20:46] Speaker 05:
Does the column in the patent that describes the first embodiment, the access code embodiment, also speak of message or not?

[00:20:55] Speaker 02:
Yes, it does, Your Honor.

[00:20:56] Speaker 05:
So what is it indicating that the message is

[00:21:01] Speaker 05:
that must be over and above the access code.

[00:21:08] Speaker 02:
It says in column seven, around line 26, it continues to increase the output transmission level until it receives a detection indication from the base station.

[00:21:22] Speaker 02:
And then it goes on to say that the scriber unit and longer call up set up time and so what it does in exactly the same way as the short codes are described is the access code is used to reach out to the base station until it receives an indication from the base station.

[00:21:44] Speaker 02:
Once it receives that indication from the base station, the power ramp up

[00:21:48] Speaker 02:
process concludes and then the subsequent message is provided.

[00:21:55] Speaker 02:
Now, the issue here, Your Honor, it is very important that the Court understand the distinction in the intrinsic record.

[00:22:01] Speaker 02:
Okay, in the Interdigital II case, we did not have the prosecution history, which ZTE neglects to mention in its gray brief, that expressly

[00:22:12] Speaker 02:
removed a carry-no-data limitation from the claims.

[00:22:17] Speaker 02:
In the 847 patent, the original claims included a no-data limitation, and then those were canceled and replaced with claims, some of which had a data limitation and some of which don't.

[00:22:31] Speaker 02:
Now, that modifier, just like the steel of the baffles in Phillips, needs to be given meaning.

[00:22:37] Speaker 02:
Similarly, in 966, the carry no date limitation was included in claims, and they were all canceled.

[00:22:44] Speaker 02:
And the subsequent claims that replaced them lacked that limitation.

[00:22:49] Speaker 02:
In order to give meaning to that prosecution history, what we have here is the exact opposite of an express disclaimer.

[00:22:58] Speaker 02:
We have an express claimer.

[00:23:01] Speaker 02:
where interdigital went out of its way to say that limitation we want it out of some of the claims and indeed in the 966 all of the claims.

[00:23:10] Speaker 02:
So that intrinsic record was not present in the interdigital two case and when this court ruled that those are distinct patents, when we try to argue based on that presence in some claims but not in other claims, this court said

[00:23:26] Speaker 02:
Well, those are distinct patents, and it doesn't weigh.

[00:23:28] Speaker 02:
And in fact, I think if the court looks at that and looks at also the distinct evidentiary record that was present in that ITC case, it will see that in that case, as the court relied on, it was expert testimony equating the successively sent transmissions with the short code.

[00:23:46] Speaker 02:
There's no evidentiary basis to come to that conclusion here.

[00:23:50] Speaker 02:
And I think the court correctly, somewhat reluctantly,

[00:23:54] Speaker 02:
found that the claims were limited to the short codes because they all included that express language and because the evidentiary record from the expert equated those.

[00:24:04] Speaker 02:
That basis isn't here.

[00:24:06] Speaker 02:
And so what we need to do here, I would respectfully submit, is when a football team has trouble, they go back to blocking and tackling.

[00:24:15] Speaker 02:
And when courts face tough issues, they should return to first principles.

[00:24:21] Speaker 02:
Claim terms are presumed to have their plain meaning.

[00:24:24] Speaker 02:
There's no dispute that the district court's construction, both sides agree, is the plain meaning.

[00:24:29] Speaker 02:
They're trying to have it be something other than the plain meaning.

[00:24:31] Speaker 02:
First principles.

[00:24:33] Speaker 02:
Terms should be interpreted so that the words of the claim, both asserted and unasserted, have full meaning.

[00:24:39] Speaker 02:
Phillips and the steel baffles.

[00:24:41] Speaker 02:
Here, in the 847 patent, it's not just that there are some claims that include the no-carry data limitation.

[00:24:47] Speaker 02:
They expressly say, and wherein,

[00:24:51] Speaker 02:
the transmitted signals, anteceded basis is the successively transmitted signals, carry no data.

[00:24:59] Speaker 02:
That's an express limitation that my brother would have read out of the claims.

[00:25:06] Speaker 02:
First principles.

[00:25:08] Speaker 02:
The limitations should not be read into claims absent a clear and unmistakable disclaimer.

[00:25:15] Speaker 02:
I would submit that this court struggled with the specification in Interdigital 2 and more importantly in Interdigital 1

[00:25:21] Speaker 02:
which dealt with these precise patents, that court ruled correctly that these claims on this intrinsic record were not limited by the very same preferred embodiment.

[00:25:34] Speaker 02:
And as I said, not only does the specification not support a clear and unmistakable disclaimer of these claims on this record,

[00:25:43] Speaker 02:
But the prosecution history supports just the opposite.

[00:25:46] Speaker 02:
It supports a finding that interdigital went out of its way to ensure claim scope that included signals, successively transmitted signals that did carry data because they changed the claims to reflect that.

[00:26:01] Speaker 02:
And indeed, if you look at the prosecution history, you'll see that the examiner in permitting and allowing the claims made a distinction.

[00:26:09] Speaker 02:
For the claims that had the carry no data limitation, he used that as a basis to distinguish the prior art.

[00:26:15] Speaker 02:
And in the claims that lacked that express limitation, he didn't say anything about it.

[00:26:21] Speaker 02:
And he distinguished the claims from the prior art on another basis.

[00:26:26] Speaker 02:
Last first principle, claims should not be interpreted to exclude embodiments in the specification.

[00:26:33] Speaker 02:
The court's exactly correct that the access code, first embodiment,

[00:26:37] Speaker 02:
says expressly that the access code is a spreading code, and as this court has ruled, spreading codes can be either modulated or unmodulated.

[00:26:48] Speaker 02:
Importantly, the 010 patent incorporated by reference, which was not adequately developed in the interdigital 2 case, and we took the court's dressing down to heart, and we ensured it was adequately developed in this case.

[00:27:03] Speaker 02:
It was argued extensively at claim construction,

[00:27:06] Speaker 02:
It was part of the record, the experts testified about it, and the court included it in the evidentiary record, knowing it would be important for appeal.

[00:27:15] Speaker 02:
That 010 patent has exactly the kind of data that you're talking about, Your Honor, where it's not the modulated voice signal, but it's an information indicating channels that are used for different indications.

[00:27:29] Speaker 02:
So the way these phones really work is

[00:27:32] Speaker 02:
Whether it's access codes or short codes or preambles, there are no initial handshake codes that include modulated voice data.

[00:27:42] Speaker 02:
It just doesn't exist.

[00:27:43] Speaker 02:
But they include all kinds of other data and information about whether it's a 911 call and should be given priority over all other calls.

[00:27:51] Speaker 02:
That data is expressly claimed, that implementation is expressly claimed in the 010 patent.

[00:27:57] Speaker 02:
It was argued at claim construction extensively and was

[00:28:00] Speaker 02:
part of what was presented to Judge Andrews as a basis for not limiting the successively transmitted signals to ones that carried no data and an importation of a specific embodiment in the disclosure.

[00:28:14] Speaker 05:
I return to a question I asked you earlier and this has to do with trying to figure out whether even putting aside interdigital two

[00:28:28] Speaker 05:
whether if we were to read the claims here, say of the 966, just focus on that, which includes sending a transmission signal and then later on a message after the signal has been recognized, basically.

[00:28:46] Speaker 05:
If we were to read that to cover the full access code embodiment,

[00:28:54] Speaker 05:
what meaning would be left to the message language in that claim and I guess I was just reading in column six and half of seven before one gets to the preferred embodiment.

[00:29:08] Speaker 05:
I don't see in this tiny print the word message in there.

[00:29:13] Speaker 02:
So the process your honor is there's an initial

[00:29:19] Speaker 02:
sending of what's called a preamble in the products.

[00:29:23] Speaker 02:
In the specification, it's either the short code or the access code.

[00:29:27] Speaker 02:
That's sent at an increasing power level until the base station sees it and the subscriber unit or the handset receives an acknowledgement.

[00:29:35] Speaker 02:
That receipt of an acknowledgement is expressly disclosed in both implementations.

[00:29:42] Speaker 02:
Once the acknowledgement is received, then the message is sent.

[00:29:45] Speaker 02:
And what that message does is set up the call.

[00:29:48] Speaker 02:
So the first access code or short code is done literally to create a communication link at the correct power level and then once the acknowledgement from the base station comes, I can hear you, then the message is sent, it sets that up.

[00:30:07] Speaker 02:
So where it's explained in specification, Your Honor, is when it says the base station sends an acknowledgement.

[00:30:13] Speaker 02:
Until the base station sends an acknowledgement, no message is sent and no message would be sent.

[00:30:18] Speaker 02:
It's that message that includes the information for the call setup.

[00:30:23] Speaker 02:
And to be clear, that also doesn't include the actual voice data, the information that you would call the package or the payload of the communication.

[00:30:38] Speaker 00:
Will you run out of time?

[00:30:39] Speaker 00:
Of course.

[00:30:40] Speaker 00:
One quick question, and that's to tag on to what we discussed with your friend, which is if we happen to disagree with you on the claim construction,

[00:30:47] Speaker 00:
is you don't make an argument that the jury verdict on infringement should stand even on the different plaint construction, right?

[00:30:55] Speaker 02:
Your Honor, I think the case has to be remanded for an interpretation of this term data and there's two views of what data means.

[00:31:06] Speaker 02:
There's no debate and I think the record is clear and perhaps Judge Andrews would enter Jamal in our favor, but I don't think there's any debate that there's

[00:31:15] Speaker 02:
call setup information, channel identification information in that initial preamble that's sent by the accused of products.

[00:31:21] Speaker 02:
If he construes data as being that, as it's set forth in the 010 patent, then I think he could issue infringement, finding of infringement based on the existing record as a matter of law.

[00:31:35] Speaker 02:
If data means the baseband signal, the actual substantive payload, then we'd have a very different issue.

[00:31:42] Speaker 02:
there's probably no handset that I'm aware of that operates in that way.

[00:31:49] Speaker 02:
And the other point I would make, Judge Toronto, is in the interdigital one opinion, again, at page six of the slip opinion, it says, on receipt of the access code, the base station searches through the phases of the access code to acquire the correct phase, and then that

[00:32:04] Speaker 02:
enables the data communication, right?

[00:32:09] Speaker 02:
So that's the point.

[00:32:11] Speaker 02:
With regards to the same code issue, what I would say, Your Honor, is the record is complete.

[00:32:17] Speaker 02:
The citations are on pages 46, 47, 51, 52 of the Red Brief.

[00:32:23] Speaker 02:
Dr. Jackson testified that the infringing devices always use the first 42,496 chips.

[00:32:30] Speaker 02:
That's a portion and a remainder.

[00:32:33] Speaker 02:
The code is the same sequence of chips.

[00:32:36] Speaker 02:
Mr. McMahon keeps saying the word same code, but properly construed, and that construction was in Interdigital One.

[00:32:43] Speaker 02:
Code or signal means sequence of chips.

[00:32:46] Speaker 02:
So it needs to be the same sequence.

[00:32:48] Speaker 02:
It doesn't have to be an identical code.

[00:32:50] Speaker 02:
Dr. Kakaus, who is here today, in the middle of page 51 of the red brief,

[00:32:56] Speaker 02:
has the impeachment testimony where he admitted that those 42,000 are the same long scrambling code and where he said once the shift registers are frozen without a gap, it starts again with the same sequence of chips.

[00:33:11] Speaker 02:
The Qualcomm documents that are listed on page 48 of the red brief expressly say the scrambling code for the message corresponds to the, quote, same scrambling code

[00:33:21] Speaker 02:
that's used for construction of the preamble and the source code which is cited at page 48 of the red brief also says that C long one N is a single code.

[00:33:31] Speaker 02:
I would submit to the court that if the court returns to first principles

[00:33:36] Speaker 02:
Affirmance of this case is straightforward and completely consistent with the decisions in interdigital one and interdigital two.

[00:33:43] Speaker 02:
In the unlikely event that the court seeks to review that claim construction, I agree that the issue has to be remanded for the district court to evaluate what data means.

[00:33:53] Speaker 02:
Thank you.

[00:33:53] Speaker 00:
Thank you very much.

[00:33:55] Speaker 00:
Mr. McManel, we start two minutes.

[00:34:03] Speaker 03:
Thank you, Your Honor.

[00:34:03] Speaker 03:
Just a few brief points.

[00:34:04] Speaker 03:
First, on the prosecution history,

[00:34:06] Speaker 03:
ZTE did address the prosecution history in the gray brief.

[00:34:09] Speaker 03:
That's at pages 16 to 17.

[00:34:13] Speaker 03:
And the arguments that InterDigital made in the briefs were about reasons for allowance.

[00:34:18] Speaker 03:
We addressed that in the gray brief.

[00:34:20] Speaker 03:
What my friend Mr. Grant said today about amendments and such were not in the briefs.

[00:34:24] Speaker 03:
But none of that matters because I agree with Mr. Grant that the court should return to first principles.

[00:34:29] Speaker 03:
And the first principle is that when a patentee says something clearly in their patent, the public can rely on it.

[00:34:35] Speaker 03:
In this case, the patentee said twice that the present invention involves the transmission of short coats.

[00:34:41] Speaker 03:
Those are two very clear statements of the type that this court uniformly says patentees should be held to.

[00:34:47] Speaker 03:
That's a first principle.

[00:34:48] Speaker 05:
But what do you make of the first sentence of column six in a first embodiment of the present invention, et cetera?

[00:34:56] Speaker 05:
And that's, I think, undisputedly not about short coats.

[00:35:00] Speaker 03:
Your Honor, I agree with that.

[00:35:02] Speaker 03:
And like I said before, I think there is a tension there.

[00:35:04] Speaker 03:
But I don't think that can overcome the two very clear statements that the present invention involves the transmission of short codes.

[00:35:15] Speaker 03:
On the question of the 010 patent, there are a lot of things that my friend Mr. Grant said today about the 010 patent that I don't think appear in that patent.

[00:35:22] Speaker 03:
But let me just read one thing from the 966 patent, the common patent specification

[00:35:27] Speaker 03:
in this case.

[00:35:28] Speaker 03:
There are two places where that patent refers to the 010 patent, never by number, just by name, because they were simultaneously filed.

[00:35:34] Speaker 03:
But this is appendix 148, column 9.

[00:35:39] Speaker 03:
The 966 patent says, a detailed description of the selection and updating of the shortcodes is outside the scope of this invention.

[00:35:48] Speaker 03:
However, such a detailed description is disclosed

[00:35:50] Speaker 03:
in the related application and then refers to the 010 patent.

[00:35:54] Speaker 03:
So the details of the 010 patent should not drive the claim construction here of these claims.

[00:36:01] Speaker 05:
Okay, can I ask you one other question about the specification?

[00:36:06] Speaker 05:
Is the term message used in the description in the spec of one or the other or both of the two embodiments?

[00:36:20] Speaker 03:
The message would be transmitted in both of the embodiments, and I think, Your Honor, the clearest indication of that is figures five and seven.

[00:36:29] Speaker 05:
Five goes with the first embodiment of, let's call it the invention, and seven goes with the second, with the short one.

[00:36:38] Speaker 05:
Yes, and as I understand it, the message would be transmitted... Yes, so I was actually asking a question about the word message, which doesn't seem to appear in figures five or seven.

[00:36:48] Speaker 05:
and whether that word appears in columns 6 through, let's say, 10, in describing either the first embodiment or the preferred embodiment.

[00:37:01] Speaker 03:
Your Honor?

[00:37:02] Speaker 05:
If you don't know, it's easy enough for me to check.

[00:37:04] Speaker 03:
I believe it does.

[00:37:05] Speaker 03:
I don't think I could find it any more quickly than Mr. Grant did.

[00:37:08] Speaker 03:
The last thing I would say regarding the interplay between interdigital 1 and 2, I think this was addressed very succinctly in the gray brief at page 20.

[00:37:17] Speaker 00:
Thank you, Your Honor.