[00:00:03] Speaker 01:
We have four argued cases this morning.

[00:00:06] Speaker 01:
The first is number 17.

[00:00:08] Speaker 01:
They have 1649 Finisar Corporation versus Mystica.

[00:00:13] Speaker 01:
Mr. Radulescu, is that how you pronounce it?

[00:00:16] Speaker 04:
That's correct, Your Honor.

[00:00:17] Speaker 01:
Okay.

[00:00:18] Speaker 01:
Thank you.

[00:00:25] Speaker 04:
Ready?

[00:00:26] Speaker 04:
If you are.

[00:00:27] Speaker 04:
I am.

[00:00:28] Speaker 04:
May it please the Court.

[00:00:30] Speaker 04:
The proper construction

[00:00:32] Speaker 04:
for the term focusing in the 599 patent is causing to converge in at least one dimension.

[00:00:40] Speaker 04:
I thought from the spelling is focusing in Australia.

[00:00:44] Speaker 04:
It's focusing in the U S it's focusing the inventors from Australia.

[00:00:48] Speaker 04:
So he spells it with a double S with respect to under markman.

[00:00:54] Speaker 04:
It's the court's duty and role to not only construe the meaning

[00:01:01] Speaker 04:
of the term focusing, but also the scope.

[00:01:06] Speaker 01:
Well, that certainly is true as a general matter.

[00:01:10] Speaker 01:
The question is whether your request for construction here came too late, years, years after the Markman hearing.

[00:01:20] Speaker 01:
And as I read the district court decision, she said, among other things, that the request was untimely.

[00:01:28] Speaker 01:
Why did it take two and a half years to come up with this construction?

[00:01:32] Speaker 01:
Apparently you were aware of the issue long before you actually asked for the construction.

[00:01:38] Speaker 01:
What was the excuse for not doing it earlier?

[00:01:42] Speaker 04:
What matters is that there was a construction.

[00:01:45] Speaker 04:
There was a Markman hearing.

[00:01:47] Speaker 04:
There was a briefing.

[00:01:48] Speaker 04:
There was briefing on the construction just prior to the second trial.

[00:01:53] Speaker 04:
And when the court undertook the duty to construe

[00:01:58] Speaker 04:
this element and, and this dispute, she was obligated to not answer my question.

[00:02:03] Speaker 01:
Why did it take, this was not something that just happened on the eve of the second trial.

[00:02:10] Speaker 01:
You were aware for a long time that this difference between the parties existed as to the construction.

[00:02:19] Speaker 01:
And yet there was no request for the claim construction that you're now urging on us.

[00:02:25] Speaker 04:
The, the, the dispute over the scope.

[00:02:28] Speaker 04:
came up for the first time in response to Finisar's summary judgment motion where we argued that the scope of this term and the meaning of this term should be given its full scope.

[00:02:39] Speaker 01:
We didn't ask for a construction.

[00:02:41] Speaker 04:
We didn't ask for a construction because it was too late for Nistika to try to now argue the scope should be confined and restricted to something other than the plain language in this specification and in the claims.

[00:02:57] Speaker 01:
I don't understand what you're saying.

[00:02:58] Speaker 01:
Why, when this came up at summary judgment, didn't you ask for a construction that said focusing in one dimension was sufficient?

[00:03:07] Speaker 04:
That's in fact what we argued, that focusing in at least one dimension.

[00:03:12] Speaker 01:
You argued that was the meaning of the term.

[00:03:15] Speaker 01:
You did not ask for a different claim construction until much later.

[00:03:18] Speaker 04:
We asked for a construction of the meaning, and we asked for a construction of the scope.

[00:03:26] Speaker 01:
Because it was Nistakha that was arguing, even though- Where at the summary judgment stage did you ask for a new claim construction that would require focusing only on one image?

[00:03:41] Speaker 04:
In the Jamal order, the court characterized- Where are you in the record, please?

[00:03:47] Speaker 04:
So I'm at Jamal, appendix 14.

[00:03:52] Speaker 04:
where the court makes clear that Finisar, page 14, indicated that Finisar argued, this is at SJ, that focusing meant to bring to focus, causing to converge, and argued that it required convergence in only one dimension.

[00:04:10] Speaker 04:
So we were arguing full scope, because Mystica was trying to argue.

[00:04:15] Speaker 01:
One question is, where did you ask that the claim construction be changed?

[00:04:21] Speaker 04:
Well, the claim construction should be causing to converge.

[00:04:24] Speaker 04:
Its plain and ordinary meaning in the context of this patent means causing to converge.

[00:04:29] Speaker 01:
It's not the same thing as asking for the claim construction to be changed.

[00:04:33] Speaker 01:
We're talking about a claim construction usually adopted at a markman hearing, which is going to govern the proceedings and the jury is going to be charged in terms of that.

[00:04:46] Speaker 01:
You need to ask

[00:04:48] Speaker 01:
if you don't like the claim construction, to have it changed.

[00:04:52] Speaker 01:
You certainly argued that your view of the patent was that focusing in one dimension was sufficient.

[00:04:58] Speaker 01:
What you didn't do is say, please change the claim construction to read this way.

[00:05:02] Speaker 04:
Yeah.

[00:05:03] Speaker 04:
At that time, in connection with summary judgment, prior to that time, the term focusing should be construed in the context.

[00:05:12] Speaker 03:
Didn't you make that request at the J-Mall

[00:05:18] Speaker 03:
stage post trial?

[00:05:22] Speaker 04:
We had a separate Markman hearing just prior to the second trial where she undertook the claim construction process to construe this term prior to the second trial.

[00:05:33] Speaker 04:
We went to trial.

[00:05:35] Speaker 03:
Is that the place in the record where you first made the precise claim construction, precise claim construction, you now argue for on appeal?

[00:05:43] Speaker 03:
It's been the same construction.

[00:05:45] Speaker 02:
Let's start over again.

[00:05:48] Speaker 02:
The actual articulation of the construction that you wanted for the term focusing all along before the first trial was the idea of pausing to converge, stop, period.

[00:06:01] Speaker 02:
That's the end.

[00:06:02] Speaker 02:
Then you had your own preferred conception of what that meant.

[00:06:08] Speaker 02:
And your preferred conception would be that as long as there's some kind of converging going on in a single dimension, that is good enough.

[00:06:18] Speaker 02:
but that is not what you actually argued for for your articulated preferred construction.

[00:06:24] Speaker 02:
Your construction was nothing more than the broader basic idea of converging.

[00:06:30] Speaker 02:
Is that a fair understanding?

[00:06:31] Speaker 02:
That's not a fair understanding because... Okay, where in the record did you say for your markman that you wanted the word focusing to mean

[00:06:42] Speaker 02:
Focusing means converging in a single dimension.

[00:06:46] Speaker 02:
That is our proposed construction.

[00:06:48] Speaker 02:
That's what we want you, Judge, to adopt as the articulated claim construction for the word focusing.

[00:06:54] Speaker 02:
Where's that?

[00:06:57] Speaker 04:
It's the same position.

[00:07:00] Speaker 02:
Where is it?

[00:07:02] Speaker 04:
In the summary judgment briefing, and again, the courts, it's an appendix 28153.

[00:07:12] Speaker 04:
and I'll read the quote from the summary judgment briefing.

[00:07:41] Speaker 03:
Sorry.

[00:07:43] Speaker 03:
I assume you're starting at six, but I want to know.

[00:07:46] Speaker 03:
Yes.

[00:08:02] Speaker 04:
The statistic is efforts to restrict focusing, and I've got to find it on this page.

[00:08:06] Speaker 04:
And I can't find it right now.

[00:08:10] Speaker 03:
I can get help with the line number.

[00:08:12] Speaker 03:
Look at page, line 7, where the sentence begins.

[00:08:16] Speaker 02:
What page are we on?

[00:08:19] Speaker 03:
28153.

[00:08:35] Speaker 04:
The very top line of that page actually indicates that this is because efforts to restrict

[00:08:40] Speaker 04:
focusing, to only focusing in both dimensions and to the exclusion of cylindrical ends, like that in the accused boxes, should be rejected.

[00:08:50] Speaker 01:
That was the position.

[00:08:50] Speaker 01:
You didn't ask to have the claim construction changed.

[00:08:54] Speaker 01:
I mean, this is the sort of thing that's really important in these cases, is to have a specific construction, which is what district judges do routinely.

[00:09:04] Speaker 01:
And then the jury is charged in terms of the construction.

[00:09:08] Speaker 01:
help anyone to argue that construction means something different than what it is unless you ask the judge to specifically change the language of the claim construction.

[00:09:21] Speaker 01:
That you didn't do until June of 2016, right?

[00:09:25] Speaker 04:
In connection with SJ, we said no further construction.

[00:09:28] Speaker 02:
Right.

[00:09:29] Speaker 02:
You said as line 20 of 28153, the proper definition of focusing as the term is used in claim 24 is the plain and ordinary

[00:09:38] Speaker 02:
And then at the top of 28154, line two, plain ordinary meaning of focusing is to bring back to a focus causing to converge, period.

[00:09:48] Speaker 04:
That's our position.

[00:09:50] Speaker 02:
That's right.

[00:09:50] Speaker 02:
My point is, and this is where we started with Judge Dyke at the very beginning of your argument, we were asking, did you in fact argue for just a single dimension to be included in the construction of the word focusing?

[00:10:06] Speaker 02:
And you said yes.

[00:10:07] Speaker 02:
And then that's why we've been spending the past nine minutes trying to explore that.

[00:10:12] Speaker 02:
Now we see, oh, it's not, it never was.

[00:10:15] Speaker 02:
You didn't ask for the construction to include the words in a single dimension.

[00:10:21] Speaker 04:
Is that fair to say?

[00:10:22] Speaker 04:
Is that fair to say?

[00:10:24] Speaker 04:
We argued no construction.

[00:10:27] Speaker 04:
It's too late to assert the defense based on some interpretation of this word.

[00:10:32] Speaker 04:
That's correct.

[00:10:33] Speaker 04:
But we also argued that their effort to restrict the scope

[00:10:37] Speaker 04:
to focusing in both dimensions is inconsistent with how this specification uses the term, given that the court needs to construe, based on its plain and ordinary meaning, in the context of this patent.

[00:10:49] Speaker 04:
So with summary judgment, we said, don't do it.

[00:10:52] Speaker 04:
Don't allow this to be a patent.

[00:10:54] Speaker 04:
This is not particularly productive.

[00:10:56] Speaker 01:
Let's assume that our view is correct and that you didn't ask to have the actual construction change.

[00:11:04] Speaker 01:
to say that it didn't require focusing in both directions.

[00:11:08] Speaker 01:
It only required focusing in one direction.

[00:11:10] Speaker 01:
Let's assume that you didn't ask for that until June of 2016.

[00:11:14] Speaker 01:
Correct.

[00:11:15] Speaker 01:
Why, under those circumstances, shouldn't you be barred from objecting to the court's rejection of that that late in the proceedings?

[00:11:25] Speaker 04:
Right.

[00:11:25] Speaker 04:
So at that point, she decided that she would construe.

[00:11:29] Speaker 04:
She decided that she's going to take this term focusing and construe it.

[00:11:33] Speaker 04:
And at that point, we have... She also said it was untimely.

[00:11:38] Speaker 04:
But what matters is that she did it eventually.

[00:11:40] Speaker 04:
She did her claim construction.

[00:11:42] Speaker 01:
No, it doesn't necessarily mean that we can't hold you to the fact that it was untimely.

[00:11:48] Speaker 01:
Why wasn't it untimely to raise that years after the markman in 2016?

[00:11:56] Speaker 04:
Because we were arguing for plain and ordinary meaning in the context of this patent.

[00:12:03] Speaker 04:
There's no need to further restrict it.

[00:12:05] Speaker 04:
Plain and ordinary meaning in the context of this patent means causing to converge.

[00:12:11] Speaker 04:
And in the context of this patent, the scope, the dispute over scope, clearly should cover various types of causing to converge.

[00:12:20] Speaker 04:
And in fact, the dispute was whether the scope should cover as broad as you would articulate based on the meaning of causing to converge.

[00:12:32] Speaker 04:
focusing in at least one dimension.

[00:12:46] Speaker 01:
You knew about this issue for years and you didn't ask for a change in the claim construction and therefore you're barred from challenging the claim construction and asking for a new construction that you could have asked for earlier.

[00:12:59] Speaker 01:
Is there anything wrong with that?

[00:13:01] Speaker 04:
There is something wrong with it because it was Mystica that injected this defense that the scope is somehow now disputed.

[00:13:10] Speaker 04:
And we told her at summary judgment, which I'm not going to go through again, but we went through a first trial without the construction, and then she realized she had to do a construction.

[00:13:21] Speaker 04:
There was clearly a dispute only over the scope.

[00:13:24] Speaker 04:
There was no dispute that the acute products converge.

[00:13:28] Speaker 04:
They, in fact, admit it.

[00:13:30] Speaker 04:
Their product converges.

[00:13:31] Speaker 04:
The dispute is over, does converging in at least one dimension, is that good enough to fall within the scope of the claim?

[00:13:38] Speaker 02:
If it diverges in the other dimension.

[00:13:40] Speaker 04:
It doesn't matter what it does in the other dimension, given that in this specification, focusing is referring to focusing to achieve these elongated signals, which you do by converging the light.

[00:13:54] Speaker 04:
The claim refers to the elongation.

[00:13:56] Speaker 04:
The purposes of the focus is to in fact converge the light to get the elongated signals.

[00:14:03] Speaker 04:
And therefore, given that the patent only describes two embodiments

[00:14:09] Speaker 04:
where they're one-dimensional focusing.

[00:14:11] Speaker 04:
They converge in one dimension.

[00:14:13] Speaker 02:
Even if we were to reach the claim construction question and agree with you that focusing basically means converging, you don't have anything in the spec that actually describes what does it mean to focus the wavelength signal itself as opposed to focusing a particular dimension of

[00:14:38] Speaker 02:
the wavelength signal.

[00:14:40] Speaker 02:
And so that's what I saw in your specification, and that's why I was sympathetic with the judge below in trying to figure out what does it mean to focus the wavelength signal as a whole.

[00:14:55] Speaker 02:
Can it be enough to just focus in one dimension, even if there is

[00:15:04] Speaker 02:
crazy amount of divergence in the other dimension, should that be enough to say that you have accomplished focusing of the signal itself?

[00:15:15] Speaker 02:
I think there was nothing in the specification that said one way or another, which I can understand why it caused her to provide something of a limited construction rather than the kind of very, very detailed construction you wanted for the wavelength signal itself.

[00:15:30] Speaker 04:
The specification only describes focusing in one dimension.

[00:15:34] Speaker 04:
With respect to the other dimension, it teaches collimation.

[00:15:36] Speaker 02:
It contrasts.

[00:15:37] Speaker 02:
That's true.

[00:15:38] Speaker 02:
But now you have claims for focusing in one dimension.

[00:15:41] Speaker 02:
And then you have this claim, the claim that you've asserted here, which is not about focusing in one dimension.

[00:15:47] Speaker 02:
It is about focusing the signal itself.

[00:15:49] Speaker 02:
So it's not just focusing one dimension of the signal.

[00:15:51] Speaker 02:
It is focusing the signal.

[00:15:53] Speaker 02:
So now we have to understand what that means.

[00:15:54] Speaker 02:
And there's nothing in the specification that provides you

[00:15:58] Speaker 02:
any actual specificity on what does it mean to focus the entire signal?

[00:16:02] Speaker 04:
Well, the claim language says focusing, you know, to achieve or into a series of elongated signals.

[00:16:10] Speaker 04:
The language is the same in both claim 1 and claim 24.

[00:16:13] Speaker 04:
And given that claim 1 restricts the focusing to one particular dimension, and given that the term focusing has to mean the same thing in both claim 1 and claim 24, by default

[00:16:25] Speaker 04:
as long as we're interpreting the words the same.

[00:16:29] Speaker 02:
But you're focusing two different objects in the two different claims.

[00:16:32] Speaker 02:
One is focusing a particular dimension of the signal, and then the other one is focusing the signal.

[00:16:38] Speaker 02:
The first one is an aspect of the signal, and the other one is the entire signal itself.

[00:16:46] Speaker 02:
That's the trouble the judge had.

[00:16:47] Speaker 02:
That's not clearly defined in the spec as to what does it mean to actually accomplish focusing of the entire signal.

[00:16:55] Speaker 04:
So the language is actually, in both claims, the same.

[00:16:59] Speaker 04:
It's focusing, and what are you focusing, the angularly dispersed wavelength signals.

[00:17:05] Speaker 04:
It's the same language in both claims.

[00:17:08] Speaker 02:
It's focusing in a particular dimension in claim one of the wavelength signal.

[00:17:14] Speaker 04:
Right.

[00:17:14] Speaker 04:
So it's a particular dimension, claim 24, unrestricted, no restrictions on dimensionality.

[00:17:21] Speaker 04:
Therefore, it should cover both focusing in one dimension,

[00:17:24] Speaker 04:
or focusing in two dimensions.

[00:17:25] Speaker 04:
That's actually the best intrinsic evidence that we have.

[00:17:28] Speaker 01:
I'm not sure that that's the correct construction of claim one.

[00:17:32] Speaker 01:
It mentions focusing in the direction, but that doesn't to me necessarily mean that it doesn't contemplate focusing serially in

[00:17:46] Speaker 01:
one dimension and then the other one.

[00:17:48] Speaker 01:
It's not 100% clear.

[00:17:50] Speaker 01:
It's focusing in one dimension.

[00:17:52] Speaker 04:
It doesn't spell out which dimension.

[00:17:54] Speaker 04:
It could be either, but it has to be one dimension to be contrasted with Cling 24 that has no restriction on the type of focusing or any dimensionality.

[00:18:04] Speaker 04:
Therefore, it should be given its full scope.

[00:18:07] Speaker 04:
In other words, it should cover focusing in at least one dimension.

[00:18:10] Speaker 04:
In other words, one dimension focusing or both dimensions focusing.

[00:18:14] Speaker 02:
Well, where in the specification does it say you can accomplish focusing the entire signal by focusing in one dimension and having divergence in the other dimension?

[00:18:25] Speaker 02:
And that would still constitute focusing the entire signal.

[00:18:29] Speaker 04:
There's no disclosure in the specification of that second dimension in terms of diverging light.

[00:18:34] Speaker 04:
is contrasted with collimation in the second dimension.

[00:18:38] Speaker 04:
Clearly, both embodiments teach focusing in one dimension, collimation in the other, they're different.

[00:18:45] Speaker 04:
And the word that the patent uses to contrast them is the word but.

[00:18:49] Speaker 04:
Therefore, the scope of this patent should cover at least these embodiments, focusing in at least one dimension, which is what's happening with respect to both of these embodiments.

[00:19:03] Speaker 04:
The problem that you run into when you start the construction issue from extrinsic evidence and take a construction from outside the context and, for example, on this issue, on Dornistica's position, collimation is a form of focusing.

[00:19:18] Speaker 02:
Is there a reason why the trial wasn't about claim one?

[00:19:22] Speaker 02:
I mean, claim one, we wouldn't be having this debate because claim one specifically says focusing in the angular dimension.

[00:19:31] Speaker 04:
Yeah, that claim was taken out.

[00:19:33] Speaker 02:
Right.

[00:19:33] Speaker 02:
But it looks almost the same as the asserted claim 24, except one says focus the entire signal.

[00:19:42] Speaker 02:
The other one just says focus just in this one dimension.

[00:19:44] Speaker 04:
Yeah.

[00:19:45] Speaker 04:
Well, it says focus the wavelength signals.

[00:19:48] Speaker 04:
It doesn't say all the signal.

[00:19:50] Speaker 04:
It says focus the wavelength signals into a series.

[00:19:53] Speaker 04:
That's broader than claim one.

[00:19:56] Speaker 04:
There's no restriction on dimensionality.

[00:19:58] Speaker 04:
And given that both embodiments teach one-dimensional focusing, that claim has to cover the embodiments.

[00:20:06] Speaker 04:
Therefore, that claim has to be broad enough and broader than claim one.

[00:20:10] Speaker 02:
It's claim one.

[00:20:11] Speaker 02:
Just one quick question.

[00:20:12] Speaker 02:
Column five, this embodiment between lines 50 and 60, it talks about starting at line 51, the spectral components are focused in the x dimension.

[00:20:25] Speaker 02:
And then the following sentence says,

[00:20:28] Speaker 02:
And then upon return, the spectral components are now collimated in the X dimension but continue to converge in the Y dimension so as to focus that dimension.

[00:20:41] Speaker 02:
And when I read those two sentences together, it looks like this embodiment is saying that you focus

[00:20:48] Speaker 02:
the signal in both the X and Y dimension.

[00:20:51] Speaker 04:
Absolutely not.

[00:20:52] Speaker 04:
It contrasts collimation with focusing.

[00:20:57] Speaker 02:
It says focus in the X dimension and then it says converge in the Y dimension so as to focus that dimension.

[00:21:03] Speaker 04:
Yeah, so it's converging in the Y to focus that dimension.

[00:21:07] Speaker 04:
It's focusing that dimension associating convergence with focusing.

[00:21:11] Speaker 02:
But the prior sentence says the spectral components are focused in the X dimension.

[00:21:16] Speaker 04:
That's in the other

[00:21:18] Speaker 04:
that's in the other component.

[00:21:20] Speaker 04:
Of course, there's focusing in various elements with respect to return through this lens 113.

[00:21:28] Speaker 04:
It's teaching that we focus by converging in one dimension to make the elongation.

[00:21:33] Speaker 04:
The other dimension is collimated.

[00:21:35] Speaker 04:
It's contrasting.

[00:21:36] Speaker 02:
Wait, wait, wait, wait.

[00:21:38] Speaker 02:
I'm just trying to understand the words of this spec.

[00:21:42] Speaker 02:
Why isn't it telling me that you're

[00:21:45] Speaker 02:
focusing in the X dimension, it says the words right there, and it's focusing in the Y dimension.

[00:21:52] Speaker 04:
Because in the X dimension, it's focused before this mirror.

[00:21:57] Speaker 04:
It's actually focused before the mirror.

[00:21:59] Speaker 04:
There's a couple components.

[00:22:01] Speaker 02:
There's a spectral mirror that's actually doing the... But do you agree with me this embodiment in column five is contemplating the focusing of the spectral components

[00:22:13] Speaker 02:
in the X dimension and the Y dimension?

[00:22:16] Speaker 04:
Not with respect to the optical power element.

[00:22:19] Speaker 04:
One, the optical power element.

[00:22:21] Speaker 04:
This is teaching focusing in only one dimension.

[00:22:23] Speaker 04:
The other dimension, the light is collimated.

[00:22:26] Speaker 04:
And so we have collimation.

[00:22:28] Speaker 01:
So your view is collimating isn't focusing.

[00:22:30] Speaker 01:
That's the explanation.

[00:22:31] Speaker 04:
That's not how this patent uses the term focusing.

[00:22:33] Speaker 04:
Because that's your view, right?

[00:22:34] Speaker 04:
Yeah.

[00:22:34] Speaker 04:
This view contrasts collimation, which is parallel to convergence, which is focusing.

[00:22:39] Speaker 01:
If we consider collimating to be focusing, then no.

[00:22:42] Speaker 01:
If we considered collimating to be focusing, then Judge Chen would be right.

[00:22:45] Speaker 01:
The only way you get there... Is that yes or no?

[00:22:48] Speaker 04:
If you considered it, yes.

[00:22:50] Speaker 04:
The issue is it's extrinsic evidence.

[00:22:53] Speaker 04:
In this spec, in this specification, it's contrasting the two, so it's error to consider collimation a form of focusing.

[00:23:02] Speaker 04:
That's not how this spec uses the term.

[00:23:04] Speaker 04:
It contrasts the two.

[00:23:06] Speaker 04:
And therefore, both embodiments are teaching, focusing in only one dimension.

[00:23:10] Speaker 04:
I think we're out of time.

[00:23:11] Speaker 04:
We're way out of time.

[00:23:12] Speaker 01:
We're going to give you two minutes for rebuttal.

[00:23:15] Speaker 01:
Thank you, Your Honor.

[00:23:17] Speaker 01:
Let's go.

[00:23:17] Speaker 01:
Mr. Cramer.

[00:23:38] Speaker 00:
Good morning, Your Honors.

[00:23:39] Speaker 00:
Yes.

[00:23:40] Speaker 00:
You were exactly right in your conclusion in analyzing this record that Finisaur chose at its own peril to wait and first ask for the construction it now seeks after it saw what happened at the first trial.

[00:23:55] Speaker 00:
We had a Markman proceeding never, never throughout this case, not during Markman, not at summary judgment, at no time until after the first trial,

[00:24:04] Speaker 00:
Did Finisar ask that the construction of focusing the angularly dispersed wavelength signals include in that construction, which would be the jury instruction, that this requires focusing in only or at least one dimension?

[00:24:19] Speaker 00:
That's when they first asked for it.

[00:24:21] Speaker 00:
And as Your Honors, I think, identified, that really is not the way to run patent cases, to have district court judges.

[00:24:29] Speaker 00:
on the eve, literally days before going into a second jury trial.

[00:24:33] Speaker 02:
But what are we to do?

[00:24:34] Speaker 02:
Because she actually did issue a claim construction and then instructed the jury on that claim construction.

[00:24:39] Speaker 02:
Are we to pretend that didn't happen and it should just somehow be ripped out of the trial?

[00:24:45] Speaker 00:
No.

[00:24:45] Speaker 00:
No, Your Honor.

[00:24:46] Speaker 02:
So we're kind of stuck with the construction, right?

[00:24:49] Speaker 00:
She did give a construction.

[00:24:50] Speaker 00:
We believe it's the correct construction under the circumstances.

[00:24:54] Speaker 00:
We think that the arguments that she was required as a matter of law under O2 Micro and so forth to address the issue of one dimension versus two is an incorrect statement of the laws applied to this case.

[00:25:07] Speaker 01:
Suppose that the original Markman hearing, this issue had been raised, wouldn't she have been obligated to resolve it then?

[00:25:15] Speaker 00:
She would be obligated to construe the claim at then or at whatever point in time she was to construe the claim.

[00:25:22] Speaker 00:
The question of whether she was required to decide whether focusing the angularly dispersed wavelength signals had to be, had a dimensionality requirement, whether she would have to say it requires one dimension or two dimensions, she never had that obligation.

[00:25:38] Speaker 01:
On this specification... You're not answering my hypothetical question.

[00:25:42] Speaker 01:
Suppose they had raised this very issue at the original markment.

[00:25:47] Speaker 01:
They said, we want you to define focusing as being satisfied by focusing in a single direction.

[00:25:56] Speaker 01:
Would she have had to resolve that at that point?

[00:25:58] Speaker 00:
No, Your Honor, not in our view.

[00:26:00] Speaker 00:
And the reason is because the specification itself, the claim itself, the claim

[00:26:07] Speaker 00:
this claim speaks of focusing the annually dispersed wavelength signals, right, the entire signal.

[00:26:13] Speaker 00:
On that type of claim, that intrinsic evidence of what this claim's actually requiring focusing, it's completely appropriate and I believe correct for the judge to decide what focusing means if the judge does not conclude that there's a dimensionality requirement, then there's no obligation to end that.

[00:26:31] Speaker 01:
That's resolving the issue.

[00:26:33] Speaker 01:
If that was her view,

[00:26:35] Speaker 01:
at the original Markman hearing, then she would have said, I don't think this claim includes a scope that would be satisfied by focusing only in a single direction, that the claim is directed to focusing the entire signal, and therefore I'm going to reject your claim construction.

[00:26:54] Speaker 01:
She could have said that, right?

[00:26:56] Speaker 00:
And Judge, she in effect did.

[00:26:57] Speaker 00:
If we look at appendix 22, that's page 11 of the judge's Jamal order.

[00:27:04] Speaker 00:
Appendix 22, near the bottom of the page, line 26.

[00:27:10] Speaker 00:
Judge Freeman says, quote, the specification of the 599 patent never clarifies whether focusing occurs in one or both dimensions.

[00:27:20] Speaker 00:
And the claims only indicate that focusing produces a series of elongated spatially separated wavelength signals.

[00:27:28] Speaker 00:
And she continues on the top of Appendix 23.

[00:27:31] Speaker 00:
Given this ambiguity,

[00:27:32] Speaker 00:
and taking the plain meaning of, quote, focusing, end quote, in this context, it is not improper for the court to define focusing at a higher level rather than make a specific number of dimensions outcome-determinative.

[00:27:47] Speaker 00:
Further, this does not exclude all disclosed embodiments.

[00:27:49] Speaker 02:
So, in my understanding, what Judge Freeman is saying is

[00:27:53] Speaker 02:
She couldn't go further with a deeper, more granular claim construction because there just wasn't enough material in the patent to give her the guidance to go ahead and shovel in a lot of details about dimensionality.

[00:28:07] Speaker 00:
Yes, Judge.

[00:28:08] Speaker 00:
And in fact, she tells us that at appendix 21 at line 15.

[00:28:13] Speaker 00:
This is also her J-Mall order.

[00:28:16] Speaker 00:
She says, quote, both parties' supplemental claim construction briefs addressed whether focusing

[00:28:23] Speaker 00:
required convergence in one or both dimensions.

[00:28:26] Speaker 00:
The court carefully considered these arguments and chose to adopt a higher level construction that addressed the wavelength signals as a whole, as opposed to its particular dimensions.

[00:28:37] Speaker 01:
Well, I'm not sure that's appropriate.

[00:28:39] Speaker 01:
I mean, I think if someone says this claim construction requires focusing only on one direction, in one direction,

[00:28:47] Speaker 01:
It would seem as though, if this were properly raised at the Markman hearing, that she should have said, that is not what the claim means.

[00:28:54] Speaker 01:
It is not satisfied by focusing in one direction.

[00:28:57] Speaker 01:
We have to focus on the overall issue of focusing of the signal, and that's my claim construction.

[00:29:03] Speaker 00:
And that's in effect what she did, Your Honor.

[00:29:05] Speaker 00:
They came in and said, Judge, construe the claim such that it would be satisfied if focusing occurs in at least one dimension.

[00:29:13] Speaker 00:
The judge, in deciding claim construction, said, there's not evidence in the specification to support that construction.

[00:29:20] Speaker 00:
Therefore, she construed the term focusing the angrily dispersed wavelength signals as requiring focusing the entire signal.

[00:29:27] Speaker 00:
I'll tell you what the problem is.

[00:29:28] Speaker 01:
Claim construction is not supposed to be argued to the jury.

[00:29:31] Speaker 01:
What she did was to create a situation in which the parties were allowed to argue claim construction to the jury.

[00:29:37] Speaker 01:
That's not supposed to happen.

[00:29:39] Speaker 01:
That's not the jury's job.

[00:29:41] Speaker 01:
If this had been raised

[00:29:42] Speaker 01:
in a timely manner, I think she probably had an obligation to tell the jury what the construction was so that the parties wouldn't be arguing about claim construction in front of the jury.

[00:29:54] Speaker 00:
Judge Mystica agrees that claim construction should not be argued to the jury, but we respectfully disagree as to whether that occurred here.

[00:30:01] Speaker 00:
The judge construed focusing to mean making the wavelength signal clearer and more defined.

[00:30:07] Speaker 00:
Then what she sent to the jury was the factual issue of, on this accused product,

[00:30:12] Speaker 00:
is the wavelength signal.

[00:30:14] Speaker 00:
The signal itself as a whole being made clearer and more defined.

[00:30:17] Speaker 01:
But it was argued before the jury as to whether the claim was satisfied by focusing in one direction.

[00:30:25] Speaker 01:
That was argued to the jury, right?

[00:30:27] Speaker 01:
As a factual matter, Your Honor, they were permitted.

[00:30:29] Speaker 01:
It's not a fact matter.

[00:30:31] Speaker 01:
It's a question of claim construction.

[00:30:32] Speaker 01:
If that's the issue as to whether this claim is satisfied by focusing in one dimension, that's not a

[00:30:40] Speaker 01:
That's not an infringement issue.

[00:30:42] Speaker 01:
That's a claim construction issue.

[00:30:44] Speaker 00:
But because a party presents that I think the claim means it should be construed in one dimension, two dimensions, and so forth, if there's no evidence of that, nothing to support that in the specification, a district court judge would be well within her purview to look at the claim and say the claim says focus this claim, claim 24, as opposed to claim 1, which says focus in one dimension.

[00:31:06] Speaker 00:
This claim, 24, says focus the wavelength signal

[00:31:09] Speaker 00:
focus the angular dispersed wavelength signals.

[00:31:12] Speaker 00:
It's a proper claim construction.

[00:31:13] Speaker 01:
All she has to do is say this is not focused, this claim is not focusing on whether, is not directed to focusing in one direction.

[00:31:23] Speaker 01:
It has to look overall and that's the appropriate claim construction.

[00:31:26] Speaker 01:
And then you don't get this situation before the jury where one party is saying well it's satisfied in one direction.

[00:31:33] Speaker 01:
That wouldn't happen.

[00:31:35] Speaker 00:
Under this claim construction that Judge Freeman gave, infringement could occur by focusing in either one dimension or two dimensions.

[00:31:47] Speaker 00:
That's what she said this claim means.

[00:31:50] Speaker 00:
So they had the ability as a factual matter, and they did argue to the jury, show evidence that there was, in their view, focusing in one dimension.

[00:31:57] Speaker 01:
No, what they argued to the jury was that the claim was satisfied by focusing in one dimension, right?

[00:32:02] Speaker 01:
I'm sorry, Judge.

[00:32:03] Speaker 01:
They argued to the jury that the claim was satisfied by focusing in one dimension, right?

[00:32:07] Speaker 01:
Yes.

[00:32:08] Speaker 01:
Well, she should have told the jury that if that was the correct claim construction, that that's not right, that it's not satisfied by focusing in one dimension.

[00:32:16] Speaker 01:
It requires that you look at the overall focus in both dimensions or

[00:32:22] Speaker 01:
just look at the overall signal and see whether it's clear or less clear.

[00:32:26] Speaker 00:
Judge, I understand your point.

[00:32:27] Speaker 00:
What she determined is that focusing in this claim requires making the signal clearer and more defined.

[00:32:34] Speaker 00:
She turned to a 20-page thorough declaration of an optics expert, Dr. Goosen, a Princeton PhD, a 15-year professor in optics, who said that there's an understood meaning of the term focusing in this field, in the field of optics, that it means making clearer and more defined.

[00:32:50] Speaker 00:
and then she had in front of her a claim that requires focusing the angularly dispersed wavelength signals.

[00:32:56] Speaker 00:
Based on that, she said this claim means making the angularly dispersed wavelength signals clearer and more defined.

[00:33:03] Speaker 00:
She did not limit how that could be accomplished.

[00:33:05] Speaker 00:
She said as a factual matter, it could be accomplished by

[00:33:08] Speaker 00:
converging in a single dimension.

[00:33:10] Speaker 00:
It could be accomplished by converging or another optical function in both dimensions.

[00:33:15] Speaker 00:
That is a factual dispute for the jury to decide whether the wavelength signal has been made clear and more defined by this optical element.

[00:33:27] Speaker 00:
Anything more?

[00:33:29] Speaker 00:
On that point, we don't, Your Honor.

[00:33:34] Speaker 00:
Your Honor, we believe that in this case, Judge Freeman's construction

[00:33:38] Speaker 00:
The subsidiary factual issues incorporated into Judge Freeman's claim construction should be reviewed under the TIVA standard for clear error.

[00:33:48] Speaker 00:
Here, Judge Freeman turned to extrinsic evidence, the declaration of Dr. Goosen, dictionary definitions of the term focusing, and NISTEC also presented in Dr. Goosen's declaration five other patents in the area of optics very similar to this patent.

[00:34:06] Speaker 00:
which showed that focusing incorporates the concept of collimation, that it's a form of focusing.

[00:34:13] Speaker 00:
So we'd ask that this be reviewed under clear error under Kiva rather than de novo.

[00:34:22] Speaker 00:
We have nothing further on or unless you have questions.

[00:34:26] Speaker 01:
Okay, thank you Mr. Kramer.

[00:34:33] Speaker 04:
What's legally relevant is that she undertook claim construction prior to the second trial, whether it's on the eve of trial or a year before she did it.

[00:34:43] Speaker 04:
She undertook that duty.

[00:34:45] Speaker 04:
She construed the meaning.

[00:34:47] Speaker 04:
With respect to the scope, she determined that she would not resolve that fundamental dispute as to whether the claim should be broadly construed to cover focusing in

[00:34:58] Speaker 04:
one or both dimensions as Pinnasar was proposing, or whether Nistaka should be allowed to argue they have a defense because the scope should be restricted.

[00:35:07] Speaker 04:
She decided this she will leave open to the jury.

[00:35:12] Speaker 04:
That's where she ran a foul of O2 Micro.

[00:35:16] Speaker 04:
It now gave the parties, particularly Nistaka, the ability to argue they don't infringe because of what the patent says.

[00:35:25] Speaker 04:
The only dispute

[00:35:27] Speaker 04:
was over what the patent discloses and describes.

[00:35:31] Speaker 04:
There was absolutely no dispute over the function of this lens, this optical power element in the accused products.

[00:35:38] Speaker 04:
We all agree it converges in one dimension.

[00:35:41] Speaker 04:
With respect to the other dimension, we agree it's not converging.

[00:35:46] Speaker 04:
We agree there's some small amount of divergence.

[00:35:49] Speaker 04:
The only ability to argue there is no infringement

[00:35:54] Speaker 04:
is arguing over what the scope of these claims say.

[00:35:58] Speaker 04:
And that isn't made more clear than in the closing argument that we cite at page 50 of the blue brief, where it's NISTACA arguing that you should not find infringement, that it's page 48.

[00:36:14] Speaker 04:
It's starting out with all the embodiments in the patent.

[00:36:18] Speaker 04:
All the examples show focusing in two dimensions.

[00:36:22] Speaker 04:
And when you analyze the product to think about how every single example in the patent shows focusing in the wavelength signals in both dimensions, that's claim construction.

[00:36:34] Speaker 04:
And that's in error because the specification teaches focusing in only one dimension in both embodiments.

[00:36:41] Speaker 04:
The other dimension, it teaches collimation.

[00:36:44] Speaker 04:
So the only dispute was one over claim construction.

[00:36:48] Speaker 04:
She decided she would not address this issue and she's now going to let the jury decide whether or not there is, there was infringement.

[00:36:58] Speaker 04:
Okay.

[00:36:58] Speaker 04:
Okay.

[00:36:58] Speaker 04:
We're out of time.

[00:36:59] Speaker 04:
Thank you very much.

[00:37:01] Speaker 01:
Thank both counsel and cases submitted.