[00:00:02] Speaker 00:
Two from district courts, one from the Patent Office, PTAB, and one from the CIT Court of International Trade.

[00:00:14] Speaker 00:
Our first case is Unified Messaging versus Google et al.

[00:00:23] Speaker 00:
2014-16-11, Mr. Greenspoon.

[00:00:31] Speaker 01:
Thank you, Judge Lurie.

[00:00:33] Speaker 01:
Good morning, your honors, and may it please the court.

[00:00:36] Speaker 01:
Under either side's case law in this case, without lexicography or a disavowal, one cannot limit the plain meaning of a claim term to features of the preferred embodiment.

[00:00:49] Speaker 01:
But that's what the district court did in this case with message, a communication between a sender and a recipient.

[00:00:57] Speaker 01:
But the case here is even stronger for reversal on message in particular.

[00:01:02] Speaker 01:
And that's because there are usages of the term message within the intrinsic record that are just not consistent with the limitations imposed by the district court, the meanings imposed by the district court.

[00:01:15] Speaker 01:
So first, I'll turn attention to notification message.

[00:01:18] Speaker 01:
That's something in the intrinsic record.

[00:01:20] Speaker 01:
It's a message.

[00:01:21] Speaker 01:
And I think nobody in this case disputes that those can come in over the internet, which is otherwise excluded by the district court.

[00:01:30] Speaker 01:
And those are emails, another sense excluded from the term message by the district court.

[00:01:37] Speaker 01:
Second, even if we were to focus just microscopically on incoming messages into the preferred embodiments, MSDS 10, incoming messages, because we're asked to focus just on those, we have yet further examples.

[00:01:55] Speaker 01:
an incoming message that's an email.

[00:01:57] Speaker 01:
That's at column 23, lines 2 to 5.

[00:02:00] Speaker 01:
I'm going to refer to the 074 patent.

[00:02:03] Speaker 01:
I believe that citation is... Yeah.

[00:02:06] Speaker 04:
Column 23, that was new matter that was later added.

[00:02:09] Speaker 04:
That particular verbiage, yes, Your Honor, was added as new matter.

[00:02:12] Speaker 04:
There were a couple columns of, or more than a couple columns of new material, but new matter added.

[00:02:18] Speaker 01:
That may be new matter in the sense of the words were not there, but it's not new matter in the sense of

[00:02:24] Speaker 01:
disclosure that was not already available.

[00:02:26] Speaker 04:
For example, I guess I was wondering if that column 23 reference is really a red herring because it feels so aberrational compared to the maybe a couple dozen other references to this very repetitive troika of types of messages, right?

[00:02:46] Speaker 04:
I understand.

[00:02:47] Speaker 04:
Clone messages, fax messages, data messages.

[00:02:52] Speaker 04:
And then finally, you know, there's this one place where it says email messages, phone messages, faxed messages.

[00:03:00] Speaker 04:
But then if you look at all the context, you know, before and after that quick reference, it goes back to the repeating troika of types of messages.

[00:03:11] Speaker 04:
So I guess what I'm trying to figure out is to what extent should I give some intentionality there

[00:03:21] Speaker 04:
to the reference to email when you look at the other twenty some odd columns of the spec?

[00:03:31] Speaker 01:
Well, first to answer the question, Your Honor, it's not the only place where there's something called an email message.

[00:03:37] Speaker 01:
I would point, Your Honor, to column three, lines four to five, I believe column four, line forty, those are also examples.

[00:03:46] Speaker 04:
Yeah, the column three, that's talking about the prior art.

[00:03:48] Speaker 04:
That is indeed the background prior art.

[00:03:50] Speaker 04:
And then the column four,

[00:03:52] Speaker 04:
It seems to make a distinction between email messages and data messages, right?

[00:03:59] Speaker 01:
I believe, Your Honor, it's more an emphasis than a distinction.

[00:04:02] Speaker 01:
Data messages were known in the art, and we have proof of this, were known in the art to include electronic mail messages.

[00:04:09] Speaker 01:
There is extrinsic evidence that we point to to show that.

[00:04:12] Speaker 04:
But then the data messages being discussed in column four talk about a dedicated data

[00:04:19] Speaker 04:
talk about data messages, like the phone line has to be set up to receive either a phone call or a fax or a data message.

[00:04:29] Speaker 04:
And so that made me wonder, okay, are we talking about a particular kind of data message, the kind that comes over a phone line that is somehow the equivalent of a fax message or a phone call?

[00:04:43] Speaker 01:
So let me answer the question and then I'll expand back to my argument because I think this is a good segue.

[00:04:48] Speaker 01:
The dedicated data line in column four actually proves our point on the other aspect of the claim construction because it's not necessarily a telephone line.

[00:04:57] Speaker 01:
The verbiage is dedicated data line, which means that a person of skill and the art approaching the intrinsic record knows that one can have a dedicated data line bring in data messages.

[00:05:09] Speaker 01:
We also

[00:05:10] Speaker 01:
as I mentioned a moment ago, confirmed that data message was known in the art as including electronic mail messages.

[00:05:18] Speaker 01:
So underscoring all of this, let's go back.

[00:05:21] Speaker 01:
Remember, our exercise here today is to determine what does the term message mean to one of ordinary skill in the art?

[00:05:27] Speaker 01:
What is its plain meaning, and is there any lexicography or disavowal?

[00:05:31] Speaker 04:
Right, after reading this entire patent.

[00:05:34] Speaker 04:
Correct.

[00:05:34] Speaker 04:
And so what I'm trying to figure out here is when this patent issued,

[00:05:39] Speaker 04:
were filed 20 years ago, after reading this patent and understanding what this person invented and what they're trying to accomplish and what they ultimately claimed, they would see that the inventor was trying to solve a problem where if a person was away from the office and was receiving a phone call or a fax message or something called a data message, that the person couldn't

[00:06:06] Speaker 04:
get access to because they weren't in the office and they needed to be in the office, then this is some kind of system where you set up a server that can somehow get those messages and then email the person wherever they may be.

[00:06:20] Speaker 04:
They may be at home.

[00:06:21] Speaker 04:
They may be on vacation.

[00:06:23] Speaker 04:
And then they can get a notification that such a message arrived.

[00:06:28] Speaker 04:
And then they can access the server from wherever they are.

[00:06:33] Speaker 04:
And so it feels

[00:06:36] Speaker 04:
illogical to say that if this system were to include emails, incoming emails, that you would have a system set up to send a notification email to let the person know that they received an email.

[00:06:57] Speaker 04:
That's not really what the written description is describing, and it doesn't really make sense to me why someone would

[00:07:05] Speaker 04:
create a system like that, or at least when you read this patent, it doesn't appear that that was being contemplated at all.

[00:07:15] Speaker 01:
Your Honor did correctly identify some problems being solved by the preferred environment in the claimed invention.

[00:07:22] Speaker 01:
That's absolutely right.

[00:07:23] Speaker 01:
But what Your Honor perhaps has overlooked in the statements that you just made is that the use of email

[00:07:31] Speaker 01:
into a central secure server, where you have authenticated login, and then the sending out of email of a notification message that one has come in, itself circumvents the problems identified in the background of the invention.

[00:07:44] Speaker 01:
So we also see, I mean, this is perhaps not intrinsic evidence, but I think it's a valid point, that it's not nonsensical to have email into a central machine and then a notification email out.

[00:07:57] Speaker 01:
That's in fact what the entire infringement case is about.

[00:08:00] Speaker 01:
The very fact there's an infringement case means it can't be considered nonsensical to have a system like that.

[00:08:05] Speaker 01:
But if I can point to one more area of the intrinsic record that addresses some of your concerns, Judge Chen, it's that column 26, line 66 through column 27, line 5, shows messages coming into the MSDS over the internet.

[00:08:25] Speaker 01:
The word internet is actually in these passages.

[00:08:28] Speaker 01:
So this is something that the intrinsic record calls a message and it comes into the MSDS over something that's not just a telephone.

[00:08:37] Speaker 01:
This is the translation system or feature?

[00:08:41] Speaker 01:
That's right.

[00:08:42] Speaker 01:
There has been an intermediary.

[00:08:43] Speaker 01:
In this embodiment as described, there has been an intermediary action where initially the message comes in over a telephone line.

[00:08:51] Speaker 01:
I don't dispute that as a description of the preferred embodiment.

[00:08:54] Speaker 01:
But again, we're searching for the meaning of the word message.

[00:08:58] Speaker 01:
in the intrinsic record and the sense of the word message includes explicitly things that can come into the preferred embodiments, MSDS 10, over the internet.

[00:09:09] Speaker 01:
So the fact that there was a translation as an intermediary activity in the preferred embodiment doesn't deprive the significance of being intrinsic evidence in conflict with the district court's exclusion of internet or requirement, rather, of telephone line.

[00:09:26] Speaker 00:
I'm sort of curious, you've got a lot of claims here, 28 claims, and you don't have anything specific to emails.

[00:09:34] Speaker 00:
If emails were contemplated.

[00:09:37] Speaker 01:
There are emails described as, I think, in dependent claims with regard to notification messages.

[00:09:44] Speaker 01:
But I would grant, Your Honor, there's nothing in a dependent claim that explicitly claims email as the incoming message.

[00:09:52] Speaker 01:
But I don't think that's the test, Your Honor.

[00:09:54] Speaker 01:
I mean, again, the test is plain meaning.

[00:09:56] Speaker 01:
And then we ascertain if there was a lexicography or a disclaimer.

[00:10:01] Speaker 00:
We looked at the specification, too.

[00:10:04] Speaker 01:
We looked at the specification and the prosecution history, which I haven't yet spoken about.

[00:10:09] Speaker 01:
But in the prosecution history, email was explicitly noted and agreed to by the examiner as something within the scope of an incoming message into the system.

[00:10:20] Speaker 01:
The examiner even applied prior art

[00:10:22] Speaker 01:
email against the claims in that aspect, essentially with the patentee's consent, with the applicant's consent, because every party in the prosecution history understood that email that comes in over the internet into the preferred embodiments MSDS can qualify as a quote-unquote message.

[00:10:40] Speaker 01:
And, Your Honor, we would ask that the Court reverse on all three areas where we pointed to claim construction errors, as well as to vacate or reverse the Section 285 partial fee award.

[00:10:51] Speaker 01:
I'd like to reserve the rest of my time for a while, please.

[00:10:54] Speaker 00:
Thank you.

[00:10:54] Speaker 00:
Unless there are any further questions.

[00:10:57] Speaker 00:
Mr. Tchaikovsky.

[00:11:05] Speaker 02:
Good morning, Your Honors.

[00:11:06] Speaker 02:
Yar Tchaikovsky on behalf of Yahoo Twitter, and I'll also be arguing on behalf of all of appellees and cross-appellants this morning.

[00:11:16] Speaker 02:
We just heard from counsel that there was

[00:11:21] Speaker 02:
nothing limiting with respect to these disclosures.

[00:11:24] Speaker 02:
If we follow this court's case law that has existed post Phillips, we see an abundant number of cases, whether that be more recently Trustees of Columbia, GP&E, IV versus Capital One, Ruckus Wireless, that all use the specification to interpret the claims as they should post Phillips.

[00:11:46] Speaker 02:
and even cases cited by counsel in their briefing, Thorner and Unwired Planet can be explained and are in concert with Phillips and its decision.

[00:11:57] Speaker 02:
The fact that there can be explicit disclaimers or disavowals doesn't change the ultimate result.

[00:12:02] Speaker 02:
And so what we have here is an integrated document that must be read in context.

[00:12:06] Speaker 02:
And when you read that integrated document in each of its columns with the claims, there is only one conclusion.

[00:12:12] Speaker 02:
And that one conclusion is we have a system

[00:12:15] Speaker 02:
that has messages that are inbound, different than notification messages.

[00:12:19] Speaker 02:
There is a species of communications or messages that are greater, but we have, effectively, sorry, there's a generic communication.

[00:12:29] Speaker 02:
We have species here that include, for example, inbound messages and notification messages, and they don't overlap.

[00:12:34] Speaker 02:
There are different forms of messages in the description.

[00:12:39] Speaker 04:
Was the patent examiner applying email-based prior art against these claims?

[00:12:44] Speaker 02:
The examiner actually did, in the parent applications, provide email-based prior art, and in fact, during that, discussed, and I can provide the A site, Your Honor, that email was not disclosed with respect, and there was no acquiescence by the examiner, but the examiner said email was not disclosed with respect to the messages in this disclosure, only with respect to notification messages, was the statement in the file history, and we have that in our briefing, Your Honor.

[00:13:13] Speaker 02:
Moreover, I think what's forgotten is kind of what goes to the history here that's quite important is, and we have that image on Respondents Brief 14 of the separation of assets here that transpired.

[00:13:27] Speaker 02:
The assets here were separated by UMS and Acacia versus AMT, who later added to this case, and J2 Global.

[00:13:37] Speaker 02:
Why is that?

[00:13:38] Speaker 02:
Because if you look at that separation of assets that is on Respondents Brief, page

[00:13:43] Speaker 02:
the statements that have been made to the Central District of California about these assets and the claim.

[00:13:49] Speaker 04:
Are we moving over to attorney's fees now?

[00:13:51] Speaker 04:
Are we doing claim construction right now?

[00:13:53] Speaker 02:
I apologize, Your Honor.

[00:13:54] Speaker 02:
No.

[00:13:55] Speaker 02:
The extrinsic evidence in the statements by counsel was when before these assets were litigated by UMS was in concert with what appellees are arguing.

[00:14:06] Speaker 02:
They argue that these messages are on an incoming telephone line.

[00:14:10] Speaker 02:
They argued, in fact, that the claims

[00:14:12] Speaker 02:
actually recited on a telephone line, right?

[00:14:16] Speaker 02:
Some of the claims did recite on a telephone line.

[00:14:18] Speaker 02:
The 321 patent, which actually was separated, the bottom left of its respondent actually does not recite on a telephone line.

[00:14:25] Speaker 02:
And more importantly, in the 2005 litigation, counsel for J2, now AMT subsidiary, said the patent was, the description was lexicographical and actually limited to audio facts

[00:14:41] Speaker 02:
and data transfers.

[00:14:43] Speaker 02:
This is for message signal, right?

[00:14:45] Speaker 02:
No.

[00:14:46] Speaker 02:
This actually was for the word document at the time, dealing with the 321 patent.

[00:14:52] Speaker 02:
And in the specification, the word document, as it exists in what is for using the 074 patent, is used interchangeably, your honor, between message and

[00:15:10] Speaker 02:
file, quite frankly, in the specification.

[00:15:14] Speaker 04:
What if the specification here, maybe 25 times, said a message can be a facsimile message?

[00:15:23] Speaker 04:
The trio has used... Sorry.

[00:15:25] Speaker 04:
And a data message.

[00:15:27] Speaker 04:
And it just said it like that.

[00:15:29] Speaker 04:
Would that, in your mind, be enough?

[00:15:33] Speaker 04:
Can you repeat the question, Your Honor?

[00:15:34] Speaker 04:
Sorry.

[00:15:35] Speaker 04:
A message can be a fax message.

[00:15:39] Speaker 04:
a phone call or a data message.

[00:15:42] Speaker 04:
And it just kept saying that over and over again for 24 times.

[00:15:46] Speaker 04:
Would that, in your mind, be enough to read and interpret the word message and the claim as being restricted to those three things?

[00:15:57] Speaker 02:
I can't answer that in the abstract because it may not be enough.

[00:16:02] Speaker 02:
I think it's a

[00:16:03] Speaker 02:
Again, given Columbia, given Philips, we have to look at the entire context.

[00:16:07] Speaker 02:
And here we have the problem of the invention that was being solved, that we couldn't connect a user with a telephone line of communication, and the problems with facsimiles, with voicemails, with data transfers.

[00:16:20] Speaker 02:
And that problem then being resolved, and the conversion process.

[00:16:24] Speaker 04:
Well, I guess to what extent should an articulated purpose of

[00:16:30] Speaker 04:
goal be incorporated into the claim language?

[00:16:39] Speaker 04:
Because that's another question, but my first question, I guess you're saying you can't answer it because it depends on context, but if that's the only context, I guess it sounds like maybe that would be going too far to read the word message that particular way.

[00:16:55] Speaker 02:
I guess stated differently, I would say this court has case law, and I wouldn't deviate, obviously, from that precedent, that just because something has only one embodiment and a sole embodiment doesn't lead one to necessarily say the claim should be limited to that sole embodiment.

[00:17:12] Speaker 02:
I would word it that way, Your Honor.

[00:17:14] Speaker 02:
And your question seems to suggest that.

[00:17:17] Speaker 02:
But that's not what we have here.

[00:17:18] Speaker 02:
We have what we have in trustees of Columbia, GP&E, Ruckus, and we have

[00:17:25] Speaker 02:
an explanation of the problem and the solution through columns of patents, including in the new matter, as your honor noted in 97, if you want to include that new matter from 23.

[00:17:37] Speaker 02:
And much like in trustees of Columbia, that new matter is perhaps, in column 23 at best, confusing and perhaps referring to the storage of notification messages.

[00:17:48] Speaker 02:
It's unclear because the troika, as you use the term,

[00:17:52] Speaker 02:
is mentioned over 17 times in this patent, and even in that context around column 23, or even in column four, where it does differentiate between data message and email messages, right after the Troika is handled in terms of what is described in column four, only those three items, and email messages and the problems of email messages are not described there, only the problems of the Troika.

[00:18:16] Speaker 04:
Can I move away from Troika?

[00:18:19] Speaker 04:
It sounds so negative.

[00:18:21] Speaker 04:
How about Trinity?

[00:18:22] Speaker 04:
Oh, the trio.

[00:18:27] Speaker 02:
The three items that are described at length in this patent.

[00:18:31] Speaker 02:
And then when dealing with the conversion process, which is ultimately important about what you're receiving over an incoming call on this system because of the problems of hooking up a user, it is then after we deal with the conversion.

[00:18:45] Speaker 02:
And this patent has columns about the conversion, right, especially about a fax, but also about a voicemail.

[00:18:51] Speaker 02:
and about a data transfer.

[00:18:53] Speaker 02:
It doesn't have anything about a conversion by email for the reasons you noted.

[00:18:56] Speaker 02:
You wouldn't need to convert an email.

[00:18:58] Speaker 02:
It would already be available in HTML and already be processed.

[00:19:02] Speaker 02:
And as the district court found, there's no reason to address what the problems were here for a message if that message were to include inbound email messages.

[00:19:12] Speaker 02:
But the defendants are now practicing this version of the invention?

[00:19:18] Speaker 02:
Well, what I would say,

[00:19:20] Speaker 02:
The answer to that is we're not practicing the invention.

[00:19:23] Speaker 04:
No, I understand, but the email.

[00:19:27] Speaker 04:
Collecting up the emails into a central server and then sending a notification email.

[00:19:33] Speaker 02:
I think the notion that really the appellants would like to capture is the 321 patent, for example, that was canceled and re-examined was originally asserted back in 2005 by Parent J2, which is a broad notion of

[00:19:46] Speaker 02:
I have a central repository, a unified messaging system that stores email, voicemail, fax, and I then deliver that message.

[00:19:54] Speaker 02:
Well, this pen itself already tells you in column three, with the other mention of email, that those systems already existed.

[00:20:03] Speaker 02:
And I would suggest to you that one of the reasons the applicant and Charles Bobo, the inventor, converted his system after doing a prior art search that is part of the record and getting those results is knowing that these systems

[00:20:16] Speaker 02:
such as the ones to Micholi and Boas that are described in column three of the 074A308, had to change and have something that was patentable, which leads to this system of dealing with the three items, converting them, and providing a notification messages.

[00:20:33] Speaker 03:
Can I move you quickly to the attorney's fees question?

[00:20:38] Speaker 03:
It's a little peculiar to grant fees

[00:20:46] Speaker 04:
for the costs of handling motions where your side lost those motions, right?

[00:20:53] Speaker 04:
You filed certain sanctions motions and they responded and the judge below ruled against you.

[00:21:03] Speaker 04:
and then nevertheless said that they have to pay your attorney's fees for asserting those motions.

[00:21:12] Speaker 04:
It's a little confusing.

[00:21:14] Speaker 04:
And could you explain why that was a permissible decision when it appears at one point she says UMS really needed to

[00:21:33] Speaker 04:
come forward with the standing issue and didn't in the motions papers, but in fact it sounds like they did identify or propose a willingness to add AMT as a party to the case.

[00:21:52] Speaker 02:
I can answer that, Your Honor.

[00:21:54] Speaker 02:
First, I'd like to disabuse the notion that they ever offered to add AMT to the party to the case.

[00:21:58] Speaker 02:
In the briefing, they did everything possible to ensure that AMT was not added as a party to the case.

[00:22:05] Speaker 02:
They just noted that if there was a standing issue, that it can be cured by adding AMT.

[00:22:11] Speaker 02:
So there was no offer by them.

[00:22:14] Speaker 02:
It was just a notation that there's a potential for cure.

[00:22:16] Speaker 02:
after efforts in that briefing to make sure AMT was not a case, not a party.

[00:22:21] Speaker 02:
As to the motions, we didn't have any discovery in the case.

[00:22:26] Speaker 02:
The parties agreed not to have discovery in the case until after the Markman hearing.

[00:22:32] Speaker 02:
So at the Markman hearing, we were surprised to hear UMS, who was the only party in the case, say, we're not in privity, we're not bound.

[00:22:38] Speaker 02:
I was raising those prior statements in district court because

[00:22:42] Speaker 02:
If J2 were AMT, we would potentially have judicial estoppel issues.

[00:22:46] Speaker 02:
We'd also just have the party making inconsistent statements.

[00:22:49] Speaker 02:
And we had a vociferous argument during Markman that they're not a party, they're not here, we're a different party.

[00:22:54] Speaker 02:
And it was only through this briefing process, which that briefing was structured as an unforcibility, not structured as a standing item based on the fact that really the parties are not, the owners are not here.

[00:23:09] Speaker 02:
that it became uncovered that there was a standing issue in the case and not all rights, the exclusive licensee did not have all rights, that was UMS, and had to get added.

[00:23:20] Speaker 02:
The Markman order didn't consider, even though this happened in the interim, we had Markman hearing, we had these motions, the motions were denied.

[00:23:27] Speaker 04:
I guess I'm wondering, you know, sometimes there are standing related motions, you know, that occur and then ultimately the plaintiff

[00:23:36] Speaker 04:
recognizes or the judge instructs that, you know, there's another party that's a necessary party and gives them the room to add that other party as a co-plaintiff.

[00:23:50] Speaker 04:
And then that's just motions practice.

[00:23:53] Speaker 04:
And so now why did what happened here, you know, litigation is oftentimes an educational process where you learn about issues that need to get

[00:24:05] Speaker 04:
paired.

[00:24:05] Speaker 04:
And so why wasn't that what happened here?

[00:24:09] Speaker 02:
I would reframe the issue and what the judge learned through the 285 process as we file the exception is that actions of what UMS and J2AMT need to do need to be deterred under octane.

[00:24:23] Speaker 02:
And it's not the motions.

[00:24:25] Speaker 02:
In fact, as we argue, we should get fees broader than the motions.

[00:24:29] Speaker 02:
As she found in her order,

[00:24:33] Speaker 02:
that their activity had to be based on lack of candor and transparency in the sense that they brought this case arguing no privity, no privity.

[00:24:43] Speaker 02:
We have, and it's in all the record with respect to the statements in Central District of California, and like I said, the separation of assets, that only became clear to the court after we went through this case in the 285 motion thinking about what happened through the Markman process.

[00:24:57] Speaker 02:
So although she granted fees solely for those motions in the standing and bringing AMT,

[00:25:03] Speaker 02:
That's why we come forward and say, really, these people knew from the inception of the case.

[00:25:09] Speaker 02:
And it was motivated, as she found, by the lack of candor and transparency, for them to not add AMT.

[00:25:16] Speaker 02:
They opposed those motions, both of them that were denied, strenuously and vigorously saying that AMT shouldn't be added, that they have the rights to proceed.

[00:25:25] Speaker 02:
And it's at that point, in the 285, when we have all this information, that the district court can see this and see that

[00:25:32] Speaker 02:
Under Octane, this case does stand out.

[00:25:35] Speaker 02:
They knew AMT should have been a party to this case.

[00:25:38] Speaker 02:
And then there was a litigation strategy that was enacted based on lack of candor and transparency.

[00:25:43] Speaker 02:
And just like Octane says from the Supreme Court, we should be deterring others, other plaintiffs, from doing the same and manipulating.

[00:25:50] Speaker 02:
Those statements made in the prior litigation, if they had been readily available and they weren't able to argue lack of privity and that they're not a party here,

[00:26:01] Speaker 02:
would have been ultimately damning to their positions with respect to message and other terms that are not here on appeal because of what they said in district court.

[00:26:09] Speaker 02:
And so this was a cognizant plan by UMS and J2.

[00:26:13] Speaker 02:
And she discovered that at the 285 process.

[00:26:16] Speaker 00:
Counsel, your time has expired.

[00:26:19] Speaker 00:
And we'll hear rebuttal from Mr. Greenspoon.

[00:26:24] Speaker 02:
Thank you, Your Honor.

[00:26:32] Speaker 01:
Thank you, Your Honor.

[00:26:34] Speaker 01:
Your Honors, unless there are questions, I don't think I heard any specific articulated argument on the cross appeal.

[00:26:40] Speaker 01:
Just in case there was one, I'll just make one point on the cross appeal and then move on to reply on the main appeal.

[00:26:47] Speaker 01:
And that is that the theory of the cross appeal, that there was sanctionable conduct for the whole case, is that there was a plan, I think you just heard, to conceal the involvement of AMT or conceal

[00:27:00] Speaker 01:
the involvement of a parent patent in prior litigation, I would just submit to Your Honors that it's a litigation impossibility in the context of a hard-fought patent case for any plaintiff, any party, any patentee to conceal the involvement of a family in the patent in prior litigation.

[00:27:18] Speaker 01:
So moving back to a question, Your Honor, Judge Chen, that you asked, I'm not sure if you got a good answer from my friend here, but Your Honor, you asked what if

[00:27:28] Speaker 01:
The patent, the specification said that the message is or can be a fax message, a phone call, or a data message, and it said it 24 times.

[00:27:38] Speaker 01:
What would that mean in terms of our claim construction law?

[00:27:41] Speaker 01:
I think it means virtually nothing in the sense that it's a preferred embodiment statement.

[00:27:48] Speaker 01:
And no matter how pervasively a preferred embodiment is characterized, that doesn't necessarily mean that you import features of the preferred embodiment.

[00:27:58] Speaker 01:
into the claims.

[00:27:58] Speaker 01:
And that question is actually answered explicitly by the Thorner case, perhaps by the Unwired Planet case.

[00:28:05] Speaker 01:
One or both of those address that exact scenario and say that even exclusive usage in a certain sense won't justify adding this feature as a limitation.

[00:28:17] Speaker 01:
One comment on the Columbia case cited by my friend here, the Columbia University case

[00:28:23] Speaker 01:
was a wholly distinct situation.

[00:28:25] Speaker 01:
It involved explicit lexicography.

[00:28:28] Speaker 01:
Explicit lexicography.

[00:28:31] Speaker 01:
In fact, the terminology was byte sequence feature, and the lexicography said that had to be a machine code extraction rather than a file resource.

[00:28:43] Speaker 01:
It's not our case here today, obviously, but it was lexicography where my friend here is not even arguing lexicography in this case.

[00:28:51] Speaker 01:
in all the briefing and all the argument you just heard.

[00:28:54] Speaker 04:
They're arguing multiple things.

[00:28:55] Speaker 04:
They're talking about the repetitive nature of the trinity of messages.

[00:29:01] Speaker 04:
And it doesn't discuss them necessarily as a can-be kind of a context.

[00:29:09] Speaker 04:
And then the summary of the invention talks about how the present invention involves receiving an incoming phone call.

[00:29:16] Speaker 04:
And then when you look at the

[00:29:19] Speaker 04:
the true purpose of the invention, which can be a tool for acclaimed construction, it becomes clearer that, as I was mentioning before, that it feels a bit illogical to collect up emails and then send a notification email to say that you've received emails, at least in the context of this patent.

[00:29:44] Speaker 01:
And everything your honor just said, recharacterizing or recasting my friend's argument,

[00:29:49] Speaker 01:
falls under the heading of a disavowal argument.

[00:29:52] Speaker 01:
My point was that it's not a lexicography argument.

[00:29:54] Speaker 01:
And this is actually important.

[00:29:55] Speaker 01:
This has meaning in our patent law, because implied disavowal, which is what he's going after, is something that's addressed in the unwired planet case.

[00:30:05] Speaker 01:
It's addressed in the VOTA case, and particularly with respect to present invention statements.

[00:30:09] Speaker 01:
And I think my friend, when he makes that argument, he's referring to column five.

[00:30:14] Speaker 01:
Present invention statements that are equivocal, as they are here,

[00:30:17] Speaker 01:
simply don't count as an implied disavowal.

[00:30:21] Speaker 01:
And even if they were unequivocal, even if the statement was the present invention is, name your feature, even those situations confront the Voda case, which we cite in our papers, which says that that gets neutralized if you have broadening intrinsic record disclosure elsewhere, and we do.

[00:30:39] Speaker 01:
And I can point to chapter and verse on that in response to any question.

[00:30:42] Speaker 01:
But I see my time is expiring.

[00:30:45] Speaker 01:
Unless there are any questions, I

[00:30:47] Speaker 00:
Thank you Mr. Greenspoon.

[00:30:49] Speaker 00:
Mr. Tchaikovsky wanted to save some time but ultimately you utilized it and there's nothing to respond to essentially on the cross appeal anyway.

[00:30:59] Speaker 00:
So we'll take the case under advisement.

[00:31:01] Speaker 01:
Thank you and good morning Your Honor.