[00:00:50] Speaker 02: The next case this morning is number 17-1063 Technology Properties Limited versus Cannon Inc. [00:00:57] Speaker 02: Mr. Simon. [00:00:59] Speaker 02: Yes, Your Honor. [00:00:59] Speaker 01: May I please the Court? [00:01:03] Speaker 01: I'd like to first address the summary judgment order by the District Court. [00:01:06] Speaker 01: That's a de novo review. [00:01:08] Speaker 01: There are just a few points I'd like to make. [00:01:11] Speaker 01: The District Court described Cannon's motion for summary judgment as seeking summary judgment on two reasons. [00:01:16] Speaker 01: One is [00:01:18] Speaker 01: that we were reading her claim construction too broadly, and two, the claim was invalid. [00:01:24] Speaker 01: The whole purpose of the invention is to allow a controller to communicate with different card types. [00:01:30] Speaker 01: We never contended that simply using MMC and SD cards in the same slot constitutes infringement. [00:01:37] Speaker 01: There also had to be a signing of signals based on the card type by the processor. [00:01:43] Speaker 01: By the controller. [00:01:45] Speaker 02: It controls the car. [00:01:46] Speaker 02: That's why it's called a controller. [00:01:48] Speaker 02: And what the district court said was that the undisputed evidence, including the testimony of your own expert, said that your controller didn't do that, that the signing was done based on specifications for the product. [00:02:04] Speaker 01: Well, with all due respect, the court did not say the first part. [00:02:08] Speaker 01: She did not address our expert's contention, and our expert [00:02:12] Speaker 01: specifically said that when an SD card is inserted, it defaults to one bit, and the controller sends a signal and tells it to go to four bits, thereby assigning four lines to data. [00:02:24] Speaker 01: That's undisputed, and it's at 5258 of the appendix, paragraph 70, 5275, paragraph 99. [00:02:34] Speaker 01: What page? [00:02:35] Speaker 01: 5258. [00:02:36] Speaker 01: That's our expert's declaration. [00:02:41] Speaker 01: Dale Buscano. [00:02:51] Speaker 01: And he specifically says, at paragraph 70, I confirm that each represent... Wait, at 5258? [00:03:04] Speaker 01: Yes, appendix 5258, paragraph 70. [00:03:07] Speaker 01: We don't have such a page. [00:03:10] Speaker 01: I'm sorry? [00:03:11] Speaker 03: We don't have that in our appendix. [00:03:13] Speaker 01: Oh, I'm sorry. [00:03:14] Speaker 01: It's not in the addendum, Your Honors. [00:03:16] Speaker 01: It's in the appendix. [00:03:17] Speaker 03: It's not in our appendix. [00:03:20] Speaker 01: You mean it's in the record, but not in the appendix? [00:03:22] Speaker 03: Not in the appendix. [00:03:25] Speaker 01: I don't know what happened there. [00:03:26] Speaker 01: I thought we had that in the appendix. [00:03:28] Speaker 01: I have an appendix page stamped with an appendix number here. [00:03:31] Speaker 02: Well, if not the entire record is in the appendix, it's up to you to put the parts in the appendix that you're going to rely on. [00:03:40] Speaker 02: We didn't. [00:03:41] Speaker 02: You didn't, and we don't have it. [00:03:43] Speaker 01: OK, well, Your Honor, I thought we did rely on it and put it in there. [00:03:47] Speaker 01: But there's also another page. [00:03:50] Speaker 01: 527599. [00:03:52] Speaker 00: We don't go that high. [00:03:57] Speaker 00: The appendix stops at 1219. [00:04:00] Speaker 03: We have 5230, and then it jumps to 5833. [00:04:06] Speaker 03: And so the way it works is the briefs cite particular pages to the record, and those are the pages that go into the appendix. [00:04:14] Speaker 01: I understand. [00:04:14] Speaker 01: And that's what I thought we did, Your Honor. [00:04:16] Speaker 01: In any event, it's undisputed in this case that [00:04:20] Speaker 01: The SD card operates in 1-bit mode or 4-bit mode. [00:04:24] Speaker 01: That's in the district court's order. [00:04:27] Speaker 01: It can do either. [00:04:28] Speaker 01: The controller tells it to operate in either mode. [00:04:31] Speaker 01: Now, the second point, I agree with you, Your Honor. [00:04:34] Speaker 01: The district court said that on what controls how the card operates is the SD specification. [00:04:40] Speaker 01: Well, what the controller is programmed to do, its whole purpose is to communicate with different types of cards. [00:04:47] Speaker 01: So as noted in the patent in Figures 4 and 5, one would look at the specifications for the different cards and program the controller to recognize the card and assign lines based on Figures 4 and 5 in the specification. [00:05:02] Speaker 01: Can I get some water, please? [00:05:03] Speaker 01: I'm sorry. [00:05:12] Speaker 02: I apologize. [00:05:13] Speaker 02: I thought that your expert agreed that [00:05:17] Speaker 02: the assignment was done by the specification. [00:05:23] Speaker 01: Well, our expert not only agreed with it, our expert in his declaration says the way the controller knows what lines to put and how to control an SD card is to look at the specification. [00:05:35] Speaker 01: That's in the patent. [00:05:36] Speaker 01: The controller has to be able to communicate with the cards. [00:05:39] Speaker 01: Every single card has a specification that tells you how to communicate with it. [00:05:44] Speaker 01: The specification is written and says, if you're going to use SD cards, here's what you need to do. [00:05:49] Speaker 01: Here are the commands that you use. [00:05:51] Speaker 01: And so the controller sends commands based on the specification to the card. [00:05:56] Speaker 00: I think the confusion... What is it that's controlling the so-called mapping of the pins? [00:06:02] Speaker 00: The controller or the specification? [00:06:04] Speaker 01: The controller. [00:06:05] Speaker 01: The controller controls it. [00:06:07] Speaker 01: The information in the controller, it comes from the specification. [00:06:10] Speaker 01: It basically says, the SD organization said, here's how you communicate with our cards. [00:06:15] Speaker 01: The smart card organization says, here's how you communicate with our cards. [00:06:19] Speaker 01: That's what the controller does. [00:06:20] Speaker 01: I mean, that's in the patent specification. [00:06:23] Speaker 01: Where is it in the specification? [00:06:26] Speaker 01: If you look at appendix 124, I have the 424 patent. [00:06:33] Speaker 01: I hope you have that. [00:06:36] Speaker 01: Appendix 124 is the 424 patent. [00:06:49] Speaker 01: Okay. [00:06:50] Speaker 01: And in column six, beginning at line one, it speaks to the different, it's talking about figures four and five, and it explains. [00:07:07] Speaker 01: This is the 424 pen? [00:07:08] Speaker 01: Yes. [00:07:09] Speaker 01: And if you look at figures four and five, there are charts, which on the left side gives you the pin number, and on the right side, I'm sorry, along the top, [00:07:19] Speaker 01: gives you the card type, and then within there, that's what a signing is. [00:07:25] Speaker 02: That's what the district... Where does it say that the controller is getting the information from the specification? [00:07:33] Speaker 01: Well, one of our new skills in the ARC, it actually talks about the SD organization and who are members of it. [00:07:40] Speaker 01: Let me see where that is. [00:08:03] Speaker 01: I'm not finding that right now. [00:08:05] Speaker 01: I know that it mentions the SD organization. [00:08:08] Speaker 02: It seems as though we've got two different views here. [00:08:11] Speaker 02: You say that if the controller just follows the directions from the specification and does the mapping based on that, that that's covered by the claims. [00:08:22] Speaker 02: Your opponents say, no, that's not true. [00:08:26] Speaker 02: If the specification tells you what to do, the fact that that's implemented by the controller doesn't count. [00:08:32] Speaker 02: Is that a fair statement of where we are? [00:08:34] Speaker 01: I think that's correct, Your Honor. [00:08:37] Speaker 01: And here's the distinction. [00:08:38] Speaker 01: The purpose of the patent was that instead of having a separate controller and separate slot for each type of card, you'd have one controller to control multiple cards and some of the pins at least would be shared. [00:08:50] Speaker 01: That's what Figures 4 and 5 show. [00:08:53] Speaker 01: A person implementing this invention has to get the information of how the different cards work. [00:08:58] Speaker 01: I mean, the fact that Figures 4 and 5 list [00:09:01] Speaker 01: all the different pin-outs for the cards. [00:09:04] Speaker 01: That information came from the specifications of the cards. [00:09:07] Speaker 00: Does the specification use the MCC and the SD cards interchangeably? [00:09:14] Speaker 01: The specification does not do that. [00:09:17] Speaker 01: In fact, the patent specification you're talking about. [00:09:20] Speaker 01: In fact, it says at column two that multimedia cards or secure digital cards which have the same form factor but slightly different pin-out. [00:09:30] Speaker 01: at line three and four, two through four, column two of the 424 patent. [00:09:37] Speaker 01: It specifically says they have different pin outs. [00:09:40] Speaker 01: And what's more important is at the markman hearing, the district court made a finding that MMC and SD cards are not the same type of card. [00:09:49] Speaker 01: If I can, I'd like to move to the attorney's fees issue. [00:09:53] Speaker 01: The district court made two, the district court based its attorney's fees exceptionalist finding on [00:10:01] Speaker 01: the weakness of our infringement claim. [00:10:03] Speaker 01: There were two bases given for that. [00:10:05] Speaker 01: The first was, she said, it lay claim to prior art. [00:10:09] Speaker 01: So she basically assessed our infringement claim on whether or not the claim covered prior art. [00:10:15] Speaker 01: Unfortunately, she didn't go through. [00:10:16] Speaker 00: I'm sorry. [00:10:18] Speaker 00: Go back to where you were reading in the panel. [00:10:21] Speaker 00: Yes, Your Honor. [00:10:24] Speaker 00: Show me there that the controller is making unique assignments based on the SD or the [00:10:31] Speaker 00: C card. [00:10:33] Speaker 01: Well, first off in column two, it specifically says they have slightly different pin-out. [00:10:39] Speaker 01: It's undisputed in this case that one of Orrishkill and the Art would know that an SD card uses four bits, an MMC card can only use one. [00:10:47] Speaker 01: In their brief at page 10, they have a chart. [00:10:50] Speaker 00: But that doesn't answer the question because the two different cards could share or use the different pin at different times. [00:10:59] Speaker 00: Show me in the specification where there's a unique assignment to the pins based on whether you've got an SD card or an MMC card. [00:11:08] Speaker 01: Your honor, that's not in the specification. [00:11:10] Speaker 01: In the prosecution history and in the card supports Markman order, I can direct you to. [00:11:15] Speaker 01: Cannon argued at Markman that SD and MMC were the same type of card. [00:11:19] Speaker 01: She found that the intrinsic evidence makes it clear they're not the same type of card. [00:11:24] Speaker 01: There's no dispute about that. [00:11:25] Speaker 01: On page 10 of their brief, they have a chart with the pinouts [00:11:28] Speaker 01: I mean, an MMC card only has seven pins. [00:11:31] Speaker 01: It can't have the same pin out as an SD card, which has nine pins. [00:11:35] Speaker 01: It's impossible. [00:11:37] Speaker 01: And Warner-Moray Skilled in the Art knows that. [00:11:41] Speaker 01: May I jump to the attorney's piece? [00:11:43] Speaker 02: Your problem is that by your own commission, the directions of what to do are coming from the specification. [00:11:50] Speaker 02: It's not choices being made by the controller. [00:11:54] Speaker 02: And it would seem as though, [00:11:56] Speaker 02: the invention here was a controller which did something about the mapping that was unique, different from what the specification would require. [00:12:10] Speaker 02: So that seems to me to be your problem here. [00:12:13] Speaker 01: No, Your Honor, with all due respect, the controller has to implement the card specification. [00:12:19] Speaker 02: Well, sure, of course it does. [00:12:20] Speaker 02: But the question is whether merely implementing the [00:12:25] Speaker 02: part specification is within the scope of the claims or whether the claims are limited to situations where the controller is making decisions about them. [00:12:35] Speaker 01: Well, the claims do require a decision be made. [00:12:38] Speaker 01: And that decision is what is the type of card that's been inserted. [00:12:42] Speaker 01: And there's no dispute they do that. [00:12:43] Speaker 01: Their products say, do I have an SD card or MMC card? [00:12:48] Speaker 01: If I have an SD card, I'm going to implement the SD specifications for data lines. [00:12:52] Speaker 01: If I have an MMC card, in parallel. [00:12:54] Speaker 01: If I have an MMC card, I'm going to implement one data line. [00:12:57] Speaker 01: And that's absolutely a decision made by the controller. [00:13:00] Speaker 01: And the controller changes based on the type of card inserted. [00:13:04] Speaker 01: In their products, if you put an MMC card and think it's an SD, it will not work. [00:13:08] Speaker 01: The controller has to make that decision. [00:13:11] Speaker 01: And they admit that it does that. [00:13:12] Speaker 01: Their expert admits that it does that. [00:13:15] Speaker 01: It really wasn't a disputed issue in the case. [00:13:18] Speaker 01: I mean, I agree with you that the district court in Cannon said, well, the controller doesn't decide what data lines. [00:13:24] Speaker 01: the specification does but that misunderstands the invention the invention is there's lots of different types of cards as shown in figure four and five and you have a single controller that makes decisions once it knows the card type in order to make that decision of what lines do what on the card type it has to have that information and that's controlled by the card specifications okay i understand what you're saying you want to go on yes yes uh... i just want to make two uh... two quick points with respect to the uh... exceptionalness uh... [00:13:54] Speaker 01: There's two reasons that the district court found that our infringement case was weak, which was the only basis for exceptionalists. [00:13:59] Speaker 01: One was we essentially lay claim to prior art. [00:14:03] Speaker 01: And the second was she didn't believe that we had a reasonable basis for thinking that her construction would change the ITC commission outcome. [00:14:11] Speaker 01: With all due respect, we in the beginning of the case, because the commission just said with no explanation, if you use some data line sometimes and not others, then that's not mapping. [00:14:24] Speaker 01: They didn't tell us what mapping was. [00:14:26] Speaker 01: Figures four and five show exactly that. [00:14:28] Speaker 01: It was inconsistent with the specification. [00:14:30] Speaker 01: We immediately, first thing in the district court, I personally said, your honor, could you construe mapping for us beside this dispositive issue? [00:14:38] Speaker 01: They asked her in Markman after resisting that, can you find what the ITC said? [00:14:43] Speaker 01: This is not mapping. [00:14:44] Speaker 01: You're merely using some signal and sometimes. [00:14:47] Speaker 01: She disagreed with that and said, and I'm quoting, [00:14:51] Speaker 01: She said it's not plain that using signal lines in some circumstances but not others is not mapping. [00:14:57] Speaker 01: At the hearing, she even said her understanding of assigning was taking a group of one things on one side and assigning them to a group on the other side. [00:15:05] Speaker 01: So exactly what we argue. [00:15:07] Speaker 01: But here's the bigger point. [00:15:09] Speaker 01: Five defendants, all five defendants including Cannon in the case management statement agree that if the district court adopts our position on mapping, it is not dispositive. [00:15:19] Speaker 01: Cannon agreed and told the district court in writing, if you adopt a signing, which is my position, it's not dispositive. [00:15:27] Speaker 01: And yet somehow six months later, I'm to be blamed because I should have known that that was dispositive when Cannon itself said it wouldn't be dispositive. [00:15:38] Speaker 03: I heard you say that you think that the district court judge's decision is based on two things alone. [00:15:47] Speaker 03: You don't think that there's other things in her decision that she relied on to find that this was an exceptional case. [00:15:53] Speaker 03: Do I understand that correctly? [00:15:55] Speaker 01: Correct, Your Honor. [00:15:55] Speaker 01: And I can point you to her order. [00:15:58] Speaker 03: I've read her order. [00:15:59] Speaker 03: I just see other things in there where she talks about, for example, the litigating position being significantly weaker than those of plaintiffs in other cases. [00:16:09] Speaker 03: It seemed to me as if [00:16:11] Speaker 03: There were multiple different reasons that were provided for why overall in this particular district court judges view it was an exceptional case. [00:16:19] Speaker 01: Well, Your Honor, with all due respect, that point supports her weakness argument. [00:16:23] Speaker 01: She starts out and says there's two reasons. [00:16:26] Speaker 01: The only reason is that we had a weak infringement argument. [00:16:28] Speaker 01: She rejected that we litigated in a way to exacerbate the case. [00:16:32] Speaker 01: She said Cannon did that, not us. [00:16:34] Speaker 01: But she specifically says her only basis for finding is the substantial weakness of our case [00:16:40] Speaker 01: She gives two reasons for that. [00:16:41] Speaker 01: And what you just quoted is her saying that our case is weaker than other cases we cited. [00:16:47] Speaker 01: But the basis for weakness in our case was that we lay claim to the prior art, which is not a test. [00:16:54] Speaker 01: You can't assess an infringement. [00:16:57] Speaker 02: I don't see her as having said that. [00:17:00] Speaker 02: Where does she say that? [00:17:02] Speaker 01: I have it, Your Honor. [00:17:03] Speaker 01: In her order, it's the appendix page. [00:17:16] Speaker 01: Here it is. [00:17:17] Speaker 01: It's her order on page appendix 18 and 17. [00:17:27] Speaker 01: If you look at 17, line 13, appendix 17, line 13, she says, the merits of plaintiff's lawsuit were exceptionally weak for two primary reasons. [00:17:38] Speaker 01: First, plaintiff's infringement theory essentially lay claim to prior art. [00:17:43] Speaker 01: And then she explains. [00:17:45] Speaker 02: Okay. [00:17:46] Speaker 02: But she's doing that as an input for her claim construction, right? [00:17:53] Speaker 02: No, Your Honor. [00:17:54] Speaker 02: This is the attorney's fees argument. [00:17:55] Speaker 02: No, I understand that. [00:17:56] Speaker 02: But she's saying that your claim construction is unreasonable because the effect of it would be to encompass the wire art, right? [00:18:05] Speaker 01: But that's the problem, Your Honor. [00:18:06] Speaker 01: In the Markman order, which is in the record, she agreed with our claim construction. [00:18:12] Speaker 01: Cannon said, that's too broad. [00:18:14] Speaker 01: You should limit it. [00:18:14] Speaker 01: There's a disclaimer. [00:18:15] Speaker 01: It would lay claim to prior art. [00:18:17] Speaker 01: And she said no. [00:18:18] Speaker 01: She disagreed with that. [00:18:20] Speaker 01: Yet in the order for attorney's fees for the first time, she finds you would think that would be in the claim construction order. [00:18:25] Speaker 01: I agree with you. [00:18:26] Speaker 01: But in the claim construction order, she adopted a construction that Cannon said wouldn't be dispositive. [00:18:31] Speaker 01: And then on page 18 of her order, she says, secondly, [00:18:39] Speaker 01: The ITC decision in this case should have clearly indicated to plaintiffs the weakness of their claims. [00:18:44] Speaker 02: Where is the claim construction order? [00:18:48] Speaker 01: The claim construction order is the appendix 9251. [00:18:53] Speaker 01: I hope that's in there. [00:18:57] Speaker 02: I apologize. [00:18:59] Speaker 02: You have an obligation to check your own appendix. [00:19:01] Speaker 02: You're the one who prepared it. [00:19:10] Speaker 01: If you look at... Hang on. [00:19:13] Speaker 03: We don't have that. [00:19:15] Speaker 01: I am so sorry. [00:19:16] Speaker 01: I know we cited to all that. [00:19:21] Speaker 01: My copy that I have has those pages. [00:19:24] Speaker 03: I took out... Wait, wait. [00:19:25] Speaker 03: You said 9... What was the number? [00:19:27] Speaker 01: 9259. [00:19:27] Speaker 01: It's the Markman order. [00:19:28] Speaker 01: It's document number 334. [00:19:31] Speaker 01: And I could just read it. [00:19:32] Speaker 03: I was sitting in the wrong place. [00:19:33] Speaker 03: Hang on. [00:19:34] Speaker 03: You might have that. [00:19:35] Speaker 03: We might have that. [00:19:37] Speaker 03: We have that. [00:19:38] Speaker 01: Sorry about that. [00:19:38] Speaker 01: I'm sorry. [00:19:39] Speaker 01: This is my fault. [00:19:41] Speaker 03: So we do have that. [00:19:42] Speaker 01: So we're on page 9259. [00:19:44] Speaker 01: On line 19, she says, defendants further urge the court to specify that the use of some signal lines in some circumstances but not others based on fixed assignments does not constitute mapping. [00:20:03] Speaker 01: Then she goes on, on the next page, 9260, line 17, it is not plain from this discussion that mapping must mean varying the assignment such that using signal lines in some circumstances but not others does not constitute mapping. [00:20:19] Speaker 01: She specifically rejected the ITC's basis and Cannon wanted her to do that. [00:20:25] Speaker 01: And I agree. [00:20:26] Speaker 01: If she would have adopted that construction and said your claim construction is too broad at Markman, [00:20:30] Speaker 01: The case would have been over. [00:20:32] Speaker 01: I would have stipulated to infringement. [00:20:34] Speaker 01: She didn't do that. [00:20:36] Speaker 01: And then after that, HP agreed that it wasn't dispositive and told that to the district judge when they were trying to expand their ability contentions and explain lack of diligence. [00:20:46] Speaker 01: They then settled. [00:20:47] Speaker 01: The other defendants all settled. [00:20:49] Speaker 01: Why did they settle? [00:20:50] Speaker 01: It wasn't dispositive. [00:20:51] Speaker 01: They all admitted it wouldn't be dispositive. [00:20:54] Speaker 01: $1.8 million later, Cannon comes along and files a motion for summary judgment on that same basis, the very same basis that she rejected in Markman and she grants it. [00:21:15] Speaker 02: Okay, well, we're out of time. [00:21:17] Speaker 02: We'll give you two minutes for a rebuttal. [00:21:18] Speaker 02: Thank you, Your Honor. [00:21:19] Speaker 01: And again, I apologize if there's a... I should have confirmed that with the appendix. [00:21:26] Speaker 04: Mr. Mayor, honor. [00:21:29] Speaker 04: Exactly, your honor. [00:21:30] Speaker 04: Excellent. [00:21:30] Speaker 04: Thank you very much. [00:21:31] Speaker 04: May it please the court. [00:21:34] Speaker 04: First of all- Why don't you address the last point while it's fresh in our minds about the plane construction. [00:21:39] Speaker 04: Yes, your honor. [00:21:41] Speaker 04: What happened at the district court Markman hearing was both sides argued for a certain type of assigning. [00:21:47] Speaker 04: They wanted logical assigning. [00:21:48] Speaker 04: We wanted physical assigning because we were arguing that the ITC got it right. [00:21:53] Speaker 04: What she actually said was, I'm going to consider it to mean assigned. [00:21:57] Speaker 04: All these other arguments about the type of assigning, that goes to infringement. [00:22:00] Speaker 04: We'll address that later in the case. [00:22:02] Speaker 04: So when we got to summary judgment, we argued under your construction, Your Honor, cannons controllers do not assign. [00:22:08] Speaker 04: Then therefore, we do not infringe full stop. [00:22:11] Speaker 04: And she agreed with us. [00:22:12] Speaker 04: She said in the order that no assignment occurs. [00:22:15] Speaker 04: So this issue about what was said at the Markman hearing and what the judge did is really a sideshow. [00:22:20] Speaker 04: What matters here was before the court is whether she properly granted summary judgment of non-infringement [00:22:25] Speaker 04: and properly awarded the attorney's fees under the Octane Fitness Standard. [00:22:29] Speaker 00: The only evidence... Doesn't this exchange that your opponent was pointing to, doesn't this show that there was merit, there was some strength in the litigation position that they were taking? [00:22:41] Speaker 04: Actually, Your Honor, we would submit that the outcome of the Markman, her claim construction supports the award of fees because they even said in their blue brief that the claim construction was broader than what the [00:22:52] Speaker 04: ITC had held, and they still lost on summary judgment. [00:22:55] Speaker 04: Didn't even get to the trial. [00:22:56] Speaker 04: The judge found there was not enough evidence for a reasonable jury to find infringement. [00:23:00] Speaker 04: So actually, we would submit the judge saying that it means to assign, and she still found summary judgment of non-infringement supports the award of fees. [00:23:08] Speaker 04: The only evidence that they point to in the record is the conclusory statements of their expert, Mr. Buscaino. [00:23:14] Speaker 04: And all his report says is that the cards transfer data in accordance with the card specifications. [00:23:21] Speaker 04: But mapping has to mean more than simply transferring data. [00:23:25] Speaker 04: The card specifications, and you can find the SD card specification at 6803 in the appendix, it lays out which signals go on which pins. [00:23:35] Speaker 04: The MMC specification does the same thing. [00:23:37] Speaker 04: To the extent there's any assigning in this case, it's done by these card standards. [00:23:41] Speaker 04: And all these cards have to comply with the card standards. [00:23:44] Speaker 04: In fact, the Canon controllers are incapable of changing that. [00:23:47] Speaker 04: They cannot make a decision that today I'm going to put [00:23:51] Speaker 04: the clock signal on line seven, they can't do that. [00:23:53] Speaker 04: All they can do is follow the card standards as dictated to them. [00:23:56] Speaker 02: I guess my question is, where in the specification does it describe what you say is within the scope of the claims? [00:24:05] Speaker 02: And that is the controller making a decision that's not dictated by the specification. [00:24:12] Speaker 02: Where does it say that? [00:24:13] Speaker 04: So first of all, Your Honor, mapping doesn't appear anywhere in the patent suit. [00:24:17] Speaker 04: That was introduced during [00:24:19] Speaker 04: prosecution. [00:24:20] Speaker 04: So you're not going to find a definition of mapping in the patents. [00:24:22] Speaker 04: What about the prosecution history? [00:24:26] Speaker 04: The prosecution history, the only thing that happened was there was a reference, Hong Ju, which is described in the briefs, which has a slot for several different types of cards. [00:24:35] Speaker 04: But it has one set of pins for SD and MMC. [00:24:38] Speaker 04: They argued to the patent office, Hong Ju does not disclose mapping. [00:24:42] Speaker 04: They amended the claim to change it to require mapping as it is in the issued patent. [00:24:47] Speaker 04: And they said, Hong Ju does not [00:24:49] Speaker 04: require mapping. [00:24:50] Speaker 04: It doesn't disclose mapping. [00:24:52] Speaker 04: So my friend pointed to figure 4 and 5. [00:24:54] Speaker 02: Where did they say that? [00:24:55] Speaker 02: Could you show us in the prosecution history where they said that? [00:25:02] Speaker 04: Yes, so it's at appendix 13234 to 239, Your Honor. [00:25:17] Speaker 04: It's also on page six of the red brief, we reproduce the amendment and the arguments there for the court. [00:25:23] Speaker 04: My friend pointed to figure four and five to say, this is a disclosure. [00:25:28] Speaker 04: Hold on, hold on. [00:25:31] Speaker 02: I've got 13-234. [00:25:33] Speaker 02: Where do they explain that the controller is making a decision independent of the specification? [00:25:42] Speaker 04: That statement is not anywhere in the prosecution history. [00:25:46] Speaker 04: Mapping does not appear in the patents. [00:25:48] Speaker 04: Mapping does not appear in the file history, other than they added the word in and said, Hongju doesn't disclose it. [00:25:54] Speaker 04: But what they did say in Judge Wilkin, point of the Southerner's Army Judgement Order, is that figures four and five is the disclosure of mapping. [00:26:02] Speaker 04: And my friend said to this court a few minutes ago, figures four and five shows mapping, because the controller has to decide what pins go on, what signals go on what lines. [00:26:11] Speaker 04: But if you look at figures four and five, MMC and SD [00:26:14] Speaker 04: is in a single combined column. [00:26:17] Speaker 04: So to the extent that there's any mapping describing these patents and what that means, it can't be the difference between MMC and SD because the patents themselves refer to those two cards as the same thing. [00:26:29] Speaker 04: In fact, as Judge Wilkin pointed out in the summary judgment order, those cards are mentioned 22 times and every single time it's SD slash MMC or MMC slash SD. [00:26:39] Speaker 04: So to the extent mapping means anything, it can't be [00:26:41] Speaker 04: the difference between transferring data on four lines for an SD card and transferring data on one line for an MMC card. [00:26:48] Speaker 04: First of all, that's required by the card standards. [00:26:51] Speaker 04: The controllers in the Canon products have no say in that. [00:26:53] Speaker 04: They only implement what the standard requires of them, and they can't change it. [00:26:57] Speaker 04: So the controllers are not doing any mapping. [00:27:01] Speaker 04: With respect to the cards that... What does Hongju do, the prior? [00:27:07] Speaker 04: Hongju had a slot with pins for different types of cards, which was the [00:27:11] Speaker 04: prevailing type of product at the time when the patent was filed. [00:27:15] Speaker 04: What these patents claim to have invented is one slot that you can put every single kind of card in, and you have either 18 or 21 pins, depending on whether it's figure four or five. [00:27:26] Speaker 04: You have one slot where every single type of card goes in. [00:27:30] Speaker 04: They all use the same pins. [00:27:31] Speaker 04: Did Hanju accommodate both the SD and the MMC cards? [00:27:38] Speaker 04: Yes, Your Honor, it did. [00:27:39] Speaker 04: And it had one set of pins. [00:27:41] Speaker 04: just like the Canon products accused of infringement, had one shared set of pins for SD and MMC because the SD card was designed as a follow-on to the MMC card. [00:27:51] Speaker 04: The MMC card only had one data pin, so if you had a large digital picture, it took a long time for that to transfer to your computer on a single pin. [00:27:59] Speaker 04: So the whole point of SD was to have parallel data transfer of four pins. [00:28:03] Speaker 04: But that distinction between four-bit transfer and serial and parallel has no bearing on infringement here. [00:28:09] Speaker 04: Because it's all data. [00:28:10] Speaker 04: It's the same kind of data. [00:28:11] Speaker 04: It's going on the same lines, whether it's an SD or MFC card. [00:28:14] Speaker 04: And Canon's controller has no say in which signals go onto which lines. [00:28:20] Speaker 04: So there's no mapping here. [00:28:21] Speaker 04: The controllers do not perform any mapping as required by the claims. [00:28:24] Speaker 04: And all these sort of claims require mapping based on the type of card inserted. [00:28:31] Speaker 04: The Canon controllers do not do any mapping, as Judge Wilkin correctly found. [00:28:37] Speaker 04: had warned them in the Markman order that if Canon's products operate like Hongju, which is the art that they distinguished and said is not mapping, then you likely have no infringement here. [00:28:50] Speaker 04: She said that in the Markman order, and that's what came to fruition in the summary judgment order. [00:28:54] Speaker 04: We explained to her, and their expert actually agrees, we all agree, our products operate according to the card standards. [00:29:00] Speaker 04: They have to. [00:29:02] Speaker 04: But that does not constitute mapping as these patents contemplate, because the controller is not deciding [00:29:08] Speaker 04: which signals go on which lines. [00:29:09] Speaker 04: It's told which signals to put on which lines. [00:29:12] Speaker 04: It cannot decide or assign those based on the type of card. [00:29:22] Speaker 04: I wanted to point the court to Appendix 6803, which is the SD memory card specification. [00:29:29] Speaker 04: It actually shows which signals go on which lines. [00:29:33] Speaker 04: All of this is done [00:29:34] Speaker 04: and set in the Canon products before the controller is even powered on for the first time. [00:29:38] Speaker 04: So there's no way that the controllers can be found, and there's no evidence in the record that the Canon controllers actually do any mapping or have any control or say over which signals go on which lines. [00:29:49] Speaker 02: They're just- They do mapping, but it's mapping that's the result of an instruction from the specification, the card specification. [00:29:57] Speaker 04: The court's construction of mapping, Your Honor, was to assign. [00:30:00] Speaker 04: So our argument to Judge Wilkin was, [00:30:02] Speaker 04: the assignment to the extent it occurs is being done by the card standards because they say which pin has to have which signal. [00:30:10] Speaker 02: That's the question, whether that comes within the claims or not. [00:30:15] Speaker 04: Right, and so our view, Your Honor, is that the controllers, our controllers can't vary that. [00:30:21] Speaker 04: In fact, they have no say in it. [00:30:22] Speaker 04: They're just there passively transferring data on the assignments that were already set by the card standards. [00:30:31] Speaker 04: Judge Wilkin correctly found that there's no mapping based on what the controllers are doing. [00:30:35] Speaker 04: And there's no evidence in the record on which a reasonable jury could find there is mapping. [00:30:40] Speaker 04: The only thing that they pointed to is their expert report that they attached to their summary judgment opposition. [00:30:46] Speaker 04: And all that Mr. Ruscano said was the controllers, the canon products operate in accordance with the card specifications. [00:30:53] Speaker 04: The SD cards have four bits of data and the MMC cards have one bit of data. [00:30:57] Speaker 04: And then he says, and therefore that's mapping. [00:30:59] Speaker 04: It's just a conclusion. [00:31:01] Speaker 04: There's no actual evidence, and she found this. [00:31:03] Speaker 04: There's no evidence in which a reasonable jury could rely to find that the controller is perform mapping. [00:31:08] Speaker 00: I asked your opponent, S2, we're in the specification. [00:31:13] Speaker 00: We could find that the controller assigned uniquely on the basis of whether you have an SD card or an MMC card. [00:31:20] Speaker 00: And he directed me to column 2 at the very top there, lines 1 to 3 in red from that. [00:31:27] Speaker 00: Do you read that in the same manner as your opponent? [00:31:40] Speaker 04: All that says, Your Honor, in fact, the reason that my friend pointed to that point, that's the only place in the entire record that MMC and SDU refer to without the slash between them. [00:31:51] Speaker 04: All that says is that they actually have the same form factor but a slightly different pinout. [00:31:56] Speaker 04: That's what I was getting at. [00:31:57] Speaker 04: SDU was designed intentionally. [00:31:59] Speaker 00: That slightly different pinout, is that going to cause a controller to make a unique assignment? [00:32:06] Speaker 04: The controller doesn't make any assignment. [00:32:08] Speaker 04: The card specifications... Well, the controller does make the assignment. [00:32:12] Speaker 04: It's just doing what it's told by the specification, right? [00:32:15] Speaker 04: Well, it's not an assignment, Your Honor. [00:32:17] Speaker 04: It's just passively... It's transmitting data is what it is. [00:32:20] Speaker 04: It's data transfer. [00:32:21] Speaker 04: But in terms of which PIN has which signal, the controller has no say over that. [00:32:26] Speaker 04: It's just sending data down the lines that the spec card standards require. [00:32:32] Speaker 04: And on page 10 of the red brief, my friend pointed out we have a table showing you that [00:32:38] Speaker 04: Pins 2, 3, 4, 5, 6, and 7, the signals are the same as between MMC and SD cards. [00:32:44] Speaker 04: That was intentional by the SD card designers. [00:32:47] Speaker 04: They wanted SD cards to be the same as MMC so that you would have the ability to have retroactive use. [00:32:54] Speaker 00: So the language, but a slightly different pin out, does that alter which pins are used depending on which card is inserted? [00:33:06] Speaker 04: It does not, Your Honor, and I'll point again to the red brief at page 10. [00:33:11] Speaker 04: The only difference is pin 1 for an SD card is data. [00:33:15] Speaker 04: Pin 1 of an MMC card is reserved for future use, so it's not used. [00:33:19] Speaker 04: Pins 8 and 9 for SD cards are data. [00:33:22] Speaker 04: Those pins don't exist in an MMC. [00:33:24] Speaker 04: That's the only difference. [00:33:25] Speaker 04: Every other pin that's common between the two has the same type of signal for an SD or an MMC card, so there's no [00:33:32] Speaker 03: mapping or signing even going on about the patent specification having no mapping or signing. [00:33:38] Speaker 03: Do I understand you correctly? [00:33:40] Speaker 04: The patent does not use the word mapping at all. [00:33:42] Speaker 04: So the only thing that my friend pointed to is figures four and five saying that that shows you as between these different type of cards what the controller is doing. [00:33:55] Speaker 04: The issue is these pinouts that are in figures four and five, they're not the same as the card standards. [00:34:02] Speaker 04: So if you were to look at the card standard for smart media, for example, ground is not going to be pin one. [00:34:08] Speaker 04: So the inventors said, let's use one slot, one set of 18 or 21 pins for every single type of card that's in existence. [00:34:16] Speaker 04: And they listed them here. [00:34:18] Speaker 04: And then they said, we're going to assign different signals to different types of pins. [00:34:24] Speaker 04: But the controller, even if it was operating in accordance with this, the controller is going to be passively sending signals down [00:34:31] Speaker 04: But the key point, and Judge Wilkin pointed out in her order, MMC and SD is in a single column in both figures four and five. [00:34:38] Speaker 04: So even the inventors of these patents didn't contemplate as between MMC and SD that there's any mapping. [00:34:45] Speaker 02: And what happened is... Do you know about how this device works when we're talking about cards other than SD and MMC? [00:34:54] Speaker 02: Do the specifications in those instances also direct the controller as to what to do? [00:35:01] Speaker 04: All of these cards have specifications just like SD and MMC, but the patent does not, these pinouts in the patents, figures four and five, do not match the specifications for those cards. [00:35:13] Speaker 04: The inventors change those around for those types of cards, but for MMC and SD, it's treated as a single type of card. [00:35:21] Speaker 02: So with respect to other cards, there's a choice being made by the controller that's not dictated by the specifications. [00:35:30] Speaker 04: Yes, because the mappings in figures four and five are not the same as the card specifications. [00:35:37] Speaker 04: So the controller is sending signals down in accordance with figures four and five, whereas for an SD and MMC card in the accused canon products, the controller is making no decision about anything. [00:35:48] Speaker 04: It's just passively sending the signals down the lines that were set up, set forth by the card standards before [00:35:55] Speaker 04: Canon even made one of these products. [00:35:57] Speaker 04: Those things are fixed in stone before the Canon products are even powered on for the first time. [00:36:01] Speaker 00: So there are instances where the controller engages in mapping. [00:36:07] Speaker 00: Is that what you just told us? [00:36:09] Speaker 04: With respect to the accused product? [00:36:11] Speaker 00: Yes. [00:36:12] Speaker 00: There are instances with respect to the different cards. [00:36:16] Speaker 00: And there's other cards that I look at that are used here in Figure 4. [00:36:21] Speaker 00: where the controller engages in what we're calling now mapping. [00:36:28] Speaker 04: With respect to the other types of cards that are listed in the figures, the patent talks about the controller varying the signal. [00:36:37] Speaker 04: So for example, if you look at pin three in figure five, it's ready for XD, it's MCMD for MMCSD, and so on. [00:36:46] Speaker 04: So there are different types of signals on that same pin for all these other kinds of cards. [00:36:50] Speaker 04: But for MMC and SD, they're the same. [00:36:53] Speaker 04: They're in a single column. [00:36:54] Speaker 04: So the controller is not varying anything with respect to those two cards at all, as shown in the figure on page 10 of the red brief. [00:37:01] Speaker 04: The signals are all the same. [00:37:02] Speaker 02: What I'm still unclear about is whether, with respect to the other cards, the specification is what dictates the assignment of the pins, or whether the controller is making some choices that are not dictated by the specification. [00:37:16] Speaker 04: Well, with respect to the cards other than MMC and SD, Your Honor, the specifications are not [00:37:20] Speaker 04: dictating which signals are on which pins because figures four and five don't match the card specifications. [00:37:26] Speaker 04: They change those pins assignments up in figures four and five, but they did not do that for SD and MMC. [00:37:33] Speaker 04: Those are treated as a single type of card in the patent. [00:37:36] Speaker 04: So to the extent there's any mapping at all here, it would have to occur with respect to cards other than SD and MMC because as between, this is what the ITC found, as between an SD and MMC card, no mapping is required because those cards are the same. [00:37:51] Speaker 04: The shape is the same, the pins are the same, the signals that go out are the same. [00:37:55] Speaker 04: The only difference is SD has four lines for data, MMC has one line for data. [00:38:00] Speaker 04: And ITC and Judge Wilkin both found that that arrangement, which is the only arrangement accused of infringement here, is not mapping. [00:38:08] Speaker 00: So with respect to the other cards, what controls the mapping there? [00:38:13] Speaker 00: Is it the controller or the specification? [00:38:18] Speaker 04: The card specification doesn't control anything [00:38:21] Speaker 00: with respect to these other kinds of cards because these assignments of pins... I guess what I'm driving at is there is mapping involved with respect to the other type of cards? [00:38:30] Speaker 04: Yes. [00:38:32] Speaker 04: Okay. [00:38:32] Speaker 04: But not with respect to SD and MMC because they are the same. [00:38:37] Speaker 00: You can make a plausible argument perhaps that if you're doing it with respect to the specification has the capacity to conduct a mapping for other cards [00:38:50] Speaker 00: I could see a possible argument be made so. [00:38:52] Speaker 00: It does with the SD card and the MMC card. [00:38:58] Speaker 04: With respect to the SD and MMC card. [00:39:00] Speaker 00: And I'm talking about the exceptionality of the case and the argument. [00:39:03] Speaker 04: OK. [00:39:04] Speaker 04: Right. [00:39:05] Speaker 04: What happened with respect to the fees, and I know I'm over my time, but I'll address your question, Judge Ranian. [00:39:11] Speaker 04: Judge Wilkin found that the ITC decision, which was affirmed by the full commission, that was not appealed [00:39:18] Speaker 04: The appellants here chose not to appeal to this court the ITC's determination that there's no mapping. [00:39:24] Speaker 04: Instead, they restarted the district court case and Judge Wilkin found in that decision, along with her warning in the markman order, that if the accused products operate the same as Hongju, which means the type of arrangement that they disclaimed during the file history, then there's no infringement. [00:39:41] Speaker 04: They were warned then and they still proceeded with the case and opposed our summary judgment. [00:39:45] Speaker 04: They didn't concede. [00:39:46] Speaker 04: non-infringement and come to this court, they opposed it. [00:39:49] Speaker 04: And Judge Wilkin found the case was exceptional from the start, and that the fees incurred by Cannon to defend it were reasonable and within the realm of what was necessary to defend against a case that they had no choice but to respond to. [00:40:06] Speaker 02: All right. [00:40:06] Speaker 02: We're out of time. [00:40:08] Speaker 02: Thank you. [00:40:08] Speaker 02: Thank you, Your Honor. [00:40:09] Speaker 02: Mr. Simon, you've got two minutes. [00:40:12] Speaker 01: Yes. [00:40:13] Speaker 01: I'd like to make two quick points. [00:40:16] Speaker 01: This point about this warning that if, think about this, if their products operate like prior art, there's no infringement. [00:40:25] Speaker 01: That's not the test for infringement. [00:40:27] Speaker 02: And it's undisputed. [00:40:29] Speaker 02: What they disclaimed in terms of the prior art is relevant to the claim construction. [00:40:33] Speaker 01: I agree with you, Your Honor. [00:40:34] Speaker 01: If she found disclaimer, they argued disclaimer, and the district court addressed it and said there's no disclaimer. [00:40:42] Speaker 01: Well, it's not a question of disclaimer. [00:40:43] Speaker 01: It's a question of how you construe mapping. [00:40:46] Speaker 01: And she construed mapping. [00:40:47] Speaker 01: They wanted her to construe it in a way that said, if we're like Hongju, it doesn't count. [00:40:51] Speaker 01: And she didn't do that. [00:40:53] Speaker 01: She specifically said no. [00:40:55] Speaker 01: What's the difference between Hongju and what Canon does? [00:40:59] Speaker 01: This is undisputed. [00:41:01] Speaker 01: Footnote five of our opening brief, Hongju has eight pins in the SDMMC slot. [00:41:08] Speaker 01: It's undisputed, and we cite the evidence in our opening brief in footnote five, that you can't do four-bit parallel transfer [00:41:15] Speaker 01: with eight pins. [00:41:17] Speaker 01: You need nine for SD cards. [00:41:20] Speaker 01: Their product isn't like Hung-Ju. [00:41:22] Speaker 01: They have nine pins and they do parallel transfer. [00:41:24] Speaker 01: The specification he cited to you that's in the record, Appendix 6813 specifically says the default bus after power up is one bit bus in SD cards. [00:41:37] Speaker 01: Our expert didn't just come to conclusions. [00:41:40] Speaker 01: He tested these products, and he confirmed that their products change from 1-bit bus to 4-bit bus. [00:41:46] Speaker 01: That was not addressed by their expert. [00:41:48] Speaker 01: It wasn't addressed by the court. [00:41:50] Speaker 01: There's no question about that. [00:41:51] Speaker 01: If they were like Hangzhou, we wouldn't be here. [00:41:53] Speaker 01: That's why we did an appeal. [00:41:55] Speaker 01: In the ITC, some of the defendants said, you know what? [00:41:58] Speaker 01: We're not going to use MMC anymore. [00:41:59] Speaker 01: We're going to change our products. [00:42:01] Speaker 01: So you can only read SD. [00:42:02] Speaker 01: And so we couldn't get an injunction. [00:42:05] Speaker 02: Is it correct with respect to the other cards [00:42:07] Speaker 02: Other than the SD and MMC cards that the controller is making the decision as to which lines to assign and is not being directed to do that by the specification? [00:42:20] Speaker 01: No, that's not correct. [00:42:21] Speaker 01: And it's not in the record. [00:42:22] Speaker 01: Not correct? [00:42:23] Speaker 01: No. [00:42:24] Speaker 01: Let me make sure I'm understanding. [00:42:26] Speaker 01: The controller, with respect to all the cards, makes the decision based on the card specifications. [00:42:33] Speaker 02: But with respect to the other cards, it's not doing just what is directed by the specifications. [00:42:38] Speaker 02: It's making a choice. [00:42:40] Speaker 01: No, it is doing just what's directed by the specifications. [00:42:44] Speaker 01: Is that in the record? [00:42:46] Speaker 01: Well, I don't think it's in the record because that wasn't a question that came up for these other cards. [00:42:53] Speaker 03: Is it your view that what's depicted in Figure 5 is the same as the specifications for MMC and SD cards? [00:43:00] Speaker 01: For MMC and SD, yes. [00:43:02] Speaker 03: Do you think the pins are the exact same as what's in the specifications? [00:43:05] Speaker 01: Well, with the exception of there is a different pin out. [00:43:10] Speaker 03: Really, why there is a different pin out? [00:43:12] Speaker 01: Well, MMC only uses one bit. [00:43:14] Speaker 01: It specifically does. [00:43:15] Speaker 03: I'm just asking if, as depicted in Figure 5, you have a column that says MMC-SD. [00:43:23] Speaker 03: Yes. [00:43:24] Speaker 03: I'm asking if the pins that are listed there are the same as if I were to look at the specifications for MMC and SD, would I see that the same pins are used for the same thing? [00:43:35] Speaker 01: I believe so, Your Honor. [00:43:36] Speaker 01: I haven't compared them. [00:43:37] Speaker 01: I know that his, we don't dispute the chart on page 10 of their brief for SD and MMC. [00:43:42] Speaker 01: And I think that tracks with what's in the patent. [00:43:45] Speaker 01: And I do need to address this. [00:43:46] Speaker 01: He specifically said the district court found in her summary judgment that MMC and SD are the same and treated the same. [00:43:52] Speaker 01: That's another area where, in the Markman order, she specifically found at page appendix 925. [00:43:59] Speaker 00: What was talking about? [00:44:05] Speaker 01: Because they can have all the other pins are the same, except one has seven pins, one has nine pins. [00:44:12] Speaker 01: And what I want to direct you to is that they made that argument in Markman, and the district court [00:44:18] Speaker 01: cites the intrinsic evidence because it's not just the patent but there's amendments and back and forth and she cites them in her markman order and she specifically says I'm sorry this is on page this is for type of card okay so she found in her markman order a crux of the case is going to be whether MMC and SD are the same type of card because if they are you don't need an adapter she says that at the markman transcript [00:44:42] Speaker 01: She goes on an appendix page 9279 and says, the court rejects the defendant's proposal that MMC and ST are the same. [00:44:50] Speaker 01: The intrinsic evidence does not support such a conclusion that the applicant clearly limited the term to mean MMC and ST cards are a single type of card. [00:44:58] Speaker 01: Instead, and she goes through and talks about figure one. [00:45:00] Speaker 01: Figure one of the pet shows them as separate cards. [00:45:03] Speaker 01: She talks about our brief where we talk about the [00:45:07] Speaker 01: the prosecution history where specifically the applicant tells the patent office, well, SDMMC aren't the same because of this four-pin, one-pin issue. [00:45:15] Speaker 02: Okay, I think we're out of time. [00:45:16] Speaker 01: Thank you very much, and again, I apologize for the appendix. [00:45:19] Speaker 01: If there's something I can do to fix that, please, I'm happy to.