[00:00:00] Speaker 07:
First is number 22, 1762, Arendi SARL versus Oath Holdings, Inc.

[00:00:07] Speaker 07:
versus Mr. Walker.

[00:00:08] Speaker 03:
Good morning, Your Honors.

[00:00:11] Speaker 03:
May it please the court.

[00:00:12] Speaker 03:
I want to focus my argument on three points today, the 101 point and the two claim construction points regarding document and electronically displayed.

[00:00:23] Speaker 03:
But before I get to those, let me briefly touch on this waiver reviewability argument that Google makes.

[00:00:31] Speaker 03:
First, it is substantively incorrect because the final judgment in this is about the anticipation obviousness

[00:00:40] Speaker 07:
verdict?

[00:00:41] Speaker 07:
Yes, Your Honor.

[00:00:43] Speaker 07:
And the district court denied the post trial motions, right?

[00:00:48] Speaker 03:
The district court denied them as moot.

[00:00:53] Speaker 03:
It refused to consider the post trial motions at all.

[00:00:58] Speaker 03:
It did not issue a substantive ruling agreeing or disagreeing with our post trial motions.

[00:01:03] Speaker 03:
But didn't it rule that it was moot?

[00:01:09] Speaker 03:
Did it rule that it was moot?

[00:01:11] Speaker 03:
She denied the here's what the district court said this record declined to address the.

[00:01:20] Speaker 03:
Issues raised in that post trial motion because according to this record there's only one claim.

[00:01:26] Speaker 07:
in the case at the time.

[00:01:27] Speaker 07:
But there was an order that denied the motion.

[00:01:31] Speaker 07:
I'm sorry, Your Honor?

[00:01:31] Speaker 07:
There was an order that denied the motion.

[00:01:34] Speaker 07:
Yes, Your Honor, yes.

[00:01:34] Speaker 07:
And as Judge Lind didn't say it was moot, it just denied the motions, right?

[00:01:40] Speaker 03:
I may have misspoke with the moot part, but at the end of the day, the district court didn't reach the merits.

[00:01:46] Speaker 03:
of that post-trial motion, because there was no counterclaim filed.

[00:01:51] Speaker 03:
And so it was within the district court.

[00:01:52] Speaker 06:
What's the difference?

[00:01:53] Speaker 06:
The jury found two independent bases to find against your claim of infringement.

[00:02:00] Speaker 06:
I don't understand how the district court judge

[00:02:06] Speaker 06:
can elect to ignore part of the jury verdict.

[00:02:09] Speaker 06:
She either had to rule on your Rule 50 motion and grant or deny it.

[00:02:14] Speaker 06:
And it sounds like she denied it, which means the jury's verdict on infringement is still out there.

[00:02:19] Speaker 06:
Or alternatively, if she didn't rule on it and held it in abeyance somehow, then this isn't even a final judgment.

[00:02:32] Speaker 06:
I think the case the case all you cite to us as far as I can tell is when the case is tried to the bitch and the district court judge has before it.

[00:02:44] Speaker 06:
Questions of infringement and invalidity in the district court judge certainly without a counterclaim can elect to decide only on infringement this case was tried to a jury.

[00:02:55] Speaker 06:
Both questions were submitted to the jury.

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They weren't submitted in the alternative.

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The jury found against you on both of them.

[00:03:01] Speaker 06:
And that's, can you give me any authority that says a district court judge is free to disregard a portion of a jury

[00:03:10] Speaker 06:
verdict without granting a post-trial motion.

[00:03:13] Speaker 03:
That is the multiform desiccant case that we cite in our brief.

[00:03:19] Speaker 03:
And the multiform desiccant case is instructive.

[00:03:23] Speaker 03:
I think it controls here.

[00:03:26] Speaker 03:
And that case stands for the proposition that a district court need not address the validity

[00:03:31] Speaker 03:
when it is asserted only as an affirmative defense.

[00:03:34] Speaker 03:
Was that a jury trial?

[00:03:36] Speaker 03:
I do not know, Your Honor.

[00:03:37] Speaker 03:
I can check on that.

[00:03:38] Speaker 06:
Well, let's just assume it wasn't a jury trial.

[00:03:42] Speaker 06:
Then it's not relevant to this situation, right?

[00:03:46] Speaker 06:
Do you have any citation for authority that says the district court, after a jury verdict, can enter

[00:03:52] Speaker 06:
judgment only on one of those grounds, absent expressly ruling on some kind of post-trial motion.

[00:03:58] Speaker 03:
The cases are uniform.

[00:04:00] Speaker 06:
The cases you're talking about, unless you can point me to a specific one that's applicable in this situation, are where it was tried to the judge as a bench trial.

[00:04:11] Speaker 06:
But you're absolutely right.

[00:04:13] Speaker 06:
When it's tried as a bench trial, the judge can elect to rule on only infringement and not reach invalidity if there's no counterclaim.

[00:04:21] Speaker 06:
That's not what happened here.

[00:04:24] Speaker 06:
You're asking us to ignore a jury verdict that the judge did not set aside.

[00:04:30] Speaker 03:
The cases that we cite do not distinguish between jury and non-jury.

[00:04:35] Speaker 06:
No.

[00:04:37] Speaker 06:
Are any of them involving a jury situation?

[00:04:40] Speaker 03:
I don't know.

[00:04:40] Speaker 03:
I could find that out for you, but I do not know.

[00:04:42] Speaker 06:
You would think you would have known that before you came in here and argued it.

[00:04:46] Speaker 06:
Do you not understand the distinction between this?

[00:04:48] Speaker 03:
I absolutely understand the distinction, but the cases don't make...

[00:04:51] Speaker 06:
The cases don't make the distinction because I don't think you cited anyone where it involved a jury.

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The cases distinguish between an affirmative defense and a counterclaim.

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Cardinal chemical and multi-form desiccants, if the defendant doesn't have a counterclaim, there's only one claim in the case.

[00:05:05] Speaker 03:
It is the claim for infringement.

[00:05:07] Speaker 07:
And if there's a non-infringement... Cardinal chemical line of cases has much to do with this.

[00:05:11] Speaker 07:
Cardinal chemical is whether you're entitled to a ruling on the invalidity issue if you haven't filed a counterclaim.

[00:05:20] Speaker 07:
I hear the question is, does this judgment rest on two alternative theories, only one of which you've appealed?

[00:05:29] Speaker 03:
Right.

[00:05:30] Speaker 03:
Final judgment is abundantly clear from the district court's ruling.

[00:05:34] Speaker 03:
The district court did not consider or implicate invalidity in the final judgment.

[00:05:39] Speaker 06:
All that she says is your claims of infringement fail.

[00:05:43] Speaker 06:
But that doesn't mean that it failed on non-infringement grounds.

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It could just as well mean that it failed because they approved their affirmative defense.

[00:05:51] Speaker 03:
Well, in the absence of a counterclaim, excuse me, in the absence of a counterclaim,

[00:05:56] Speaker 03:
that from the defense becomes surplusage.

[00:05:59] Speaker 04:
What happens to the jury verdict on validity after we decide the case one way or the other?

[00:06:08] Speaker 03:
I think that the jury verdict on invalidity is surplusage given the non-infringement finding.

[00:06:13] Speaker 04:
You mean it just vanishes?

[00:06:16] Speaker 03:
It does not have any kind of legal force given the non-infringement findings.

[00:06:21] Speaker 04:
If we remand

[00:06:23] Speaker 04:
whether we affirm or reverse or vacate, if we remand, then what happens?

[00:06:32] Speaker 03:
Well, I guess it depends on how you remand.

[00:06:36] Speaker 07:
If there's a claim... I'm sure to agree with you that the non-infringement finding has to be set aside.

[00:06:42] Speaker 07:
And there's a remand.

[00:06:43] Speaker 07:
I mean, surely at that point, you must agree that the district court has to reach the invalidity ground, right?

[00:06:51] Speaker 03:
If the court changes the claim constructions that were applied below, I think that needs to be a new trial on infringement and invalidity.

[00:07:02] Speaker 03:
There's nothing in the record.

[00:07:03] Speaker 04:
Well, my point is one way or the other, if we remand with instructions to the district court to proceed with whatever issues remain,

[00:07:18] Speaker 04:
Wouldn't the district court be obligated to address that validity verdict?

[00:07:23] Speaker 04:
I mean, it can't just disappear.

[00:07:28] Speaker 03:
I think it can disappear, to use Your Honor's words, if there is a new claim construction that's issued along with the order, right?

[00:07:36] Speaker 07:
That's an understandable position.

[00:07:39] Speaker 07:
I mean, if you're right and she hasn't decided the invalidity question,

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And that has to be open on a remand.

[00:07:52] Speaker 07:
You may argue that the change claim construction would affect that, or that there needs to be a new trial.

[00:07:58] Speaker 07:
But it has to be, under your view of what's happened here, that a remand has to require the district court to address the invalidity.

[00:08:11] Speaker 07:
Right?

[00:08:11] Speaker 07:
Yes, Your Honor.

[00:08:11] Speaker 07:
I would agree with that.

[00:08:12] Speaker 03:
Yes.

[00:08:13] Speaker 04:
And it would still be a viable issue because the validity of this patent might affect other parties, or might very well affect other parties in the future.

[00:08:26] Speaker 04:
I would agree with that.

[00:08:27] Speaker 06:
Yes?

[00:08:28] Speaker 06:
Are you saying that when the parties agree to submit two questions to the jury, not in the alternative, that when the jury finds for non-infringement, then the invalidity

[00:08:42] Speaker 06:
portion is just advisory or not effective somehow?

[00:08:46] Speaker 03:
According to the case thought, in the absence of a counterclaim, yes.

[00:08:53] Speaker 07:
You could have a decision.

[00:08:55] Speaker 07:
She could have entered judgment on the invalidity verdict, even though there wasn't a counterclaim.

[00:09:00] Speaker 07:
The counterclaim has nothing to do with it.

[00:09:03] Speaker 07:
The question is, what's the judgment that's before us?

[00:09:06] Speaker 07:
Does it include the invalidity finding, or doesn't it, as an alternative ground?

[00:09:11] Speaker 03:
I don't think it does.

[00:09:11] Speaker 03:
The court made clear that it did not.

[00:09:13] Speaker 06:
I don't see how you think the court made clear.

[00:09:15] Speaker 06:
She said she wasn't going to narrow it to non-infringement in her order and set aside the invalidity part.

[00:09:25] Speaker 06:
Let me ask you this, because you keep insisting that without a counterclaim, the jury's finding on invalidity somehow goes out.

[00:09:35] Speaker 06:
What if she had just flat out denied both of your motions?

[00:09:39] Speaker 06:
on both of them and let the jury verdict stand, would you still be taking the same position that you didn't need to appeal the invalidity because there was no counterclaim?

[00:09:51] Speaker 06:
Yes.

[00:09:53] Speaker 06:
That's just wrong.

[00:09:55] Speaker 06:
I mean, you have no authority that says that.

[00:09:57] Speaker 06:
If there's a jury verdict on both grounds and they're not conditional, then there are independent grounds for supporting the judgment.

[00:10:06] Speaker 06:
And if you failed to appeal them, then you would be out.

[00:10:10] Speaker 06:
And if you're reading the case law that way, I think you're just misreading it.

[00:10:14] Speaker 06:
You're reading it for when district court judges things are tried to the bench.

[00:10:19] Speaker 06:
You're asking us to void a jury verdict that the district court didn't void.

[00:10:26] Speaker 03:
Yes.

[00:10:26] Speaker 03:
And I think that is the law under multi-form desiccants and related cases.

[00:10:30] Speaker 03:
You can't take an affirmative defense

[00:10:33] Speaker 03:
and transform it into an affirmative claim.

[00:10:36] Speaker 07:
That's ridiculous.

[00:10:37] Speaker 07:
I mean, you can have alternative grounds for the judgment.

[00:10:39] Speaker 07:
If she'd entered judgment on the jury verdict on both grounds, you'd have to appeal both grounds if you wanted to prevail.

[00:10:46] Speaker 06:
What if the jury had found no infringement but invalidity, even though it's just an affirmative defense?

[00:10:51] Speaker 06:
Then surely the jury verdict rests on infringement.

[00:10:54] Speaker 03:
As an alternative defense, yes, it rests on an alternative ground.

[00:11:00] Speaker 03:
But there's no alternative ground here, given the absence of a counterclaim.

[00:11:03] Speaker 03:
If Google wanted to have its own.

[00:11:06] Speaker 07:
Let's assume we don't agree with that.

[00:11:10] Speaker 07:
That's not our flaw.

[00:11:12] Speaker 07:
The problem is that what the district court did here is very unclear.

[00:11:17] Speaker 07:
She was very unclear about what she was doing.

[00:11:21] Speaker 07:
the post-trial motions with respect to the invalidity verdict, but then seemed to say somehow that the invalidity verdict wasn't part of the judgment.

[00:11:32] Speaker 07:
It's very hard to follow what she was saying.

[00:11:35] Speaker 03:
The court did say that she was going to enter judgment in favor of Google.

[00:11:38] Speaker 03:
This is at appendix 98.

[00:11:40] Speaker 03:
Regardless of what the court thinks about the merits of Arendy's arguments about Google's affirmative defenses, I think that's some evidence that she did not reach

[00:11:48] Speaker 03:
the invalidity issues, whether you want to frame it as a claim or an affirmative defense, she was not reaching it, regardless of what the court thinks of the merits of the arguments about this case.

[00:11:58] Speaker 06:
So let's just assume we don't think she's free to disregard the jury's verdict on invalidity.

[00:12:04] Speaker 06:
I know you disagree, but I think you're wrong.

[00:12:07] Speaker 06:
Then where are we?

[00:12:09] Speaker 06:
You filed post-trial motions.

[00:12:12] Speaker 06:
She denied them.

[00:12:14] Speaker 06:
And but she entered a judgment that doesn't appear to address it.

[00:12:19] Speaker 06:
And I don't even know if this is correct, but reading it most favorably to you, she entered a judgment that appeared to cabinet to infringement and not include invalidity.

[00:12:31] Speaker 06:
Then how is it a final judgment?

[00:12:34] Speaker 03:
Well, again, I know I'm sounding like a broken record, but the absence of accountants is only one claim in the case.

[00:12:41] Speaker 03:
OK, if that's your only answer, then you're going to lose on that with me.

[00:12:44] Speaker 03:
That's the final judgment aspect of it.

[00:12:46] Speaker 03:
There was only one claim in the case.

[00:12:48] Speaker 03:
The court entered judgment.

[00:12:49] Speaker 03:
The claim is for patent infringement.

[00:12:51] Speaker 06:
An affirmative defense of invalidity is a defense to that, without a counterclaim.

[00:12:56] Speaker 06:
Without a counterclaim, it's an affirmative defense.

[00:12:59] Speaker 06:
The jury could have found no infringement here but invalidity, and you still would have lost on your claim of patent infringement.

[00:13:08] Speaker 06:
Right?

[00:13:09] Speaker 06:
So there are two independent bases for you losing your claim of patent infringement.

[00:13:16] Speaker 06:
Our claim of patent infringement?

[00:13:19] Speaker 06:
Without a counterclaim.

[00:13:21] Speaker 06:
Right.

[00:13:21] Speaker 06:
And their defense against your claim of patent infringement rests on two independent bases.

[00:13:26] Speaker 06:
One, they didn't infringe, and two, it was invalid.

[00:13:29] Speaker 06:
The jury agreed with them on both, and you only appealed one of them.

[00:13:33] Speaker 03:
We only appealed the aspect that was part of the final judgment.

[00:13:37] Speaker 03:
The rhetorical question is, what could we have appealed with respect to the invalidity of the court?

[00:13:43] Speaker 06:
Well, you shouldn't have confused the district court by asking her not to rule on something that was part of the jury's verdict.

[00:13:51] Speaker 06:
I mean, I blame this confusing entirely on you for saying she didn't need to reach it because there was no counterclaim.

[00:13:58] Speaker 06:
She certainly needed to reach it because it was part of the jury's verdict and she submitted both questions to them, not an alternative.

[00:14:06] Speaker 06:
You filed post trial motions on both those issues and then went back and said, oh no, you don't have to rule on this one.

[00:14:11] Speaker 06:
And now you've left us with a judgment that is confusing and we don't know what to do with.

[00:14:19] Speaker 03:
We'll take the blame, but I will also say that the district court did raise the issue Suis Fonte after we filed our post trial motion and kind of raised the issue as to whether or not she had the discretion to consider the post trial motions on invalidity.

[00:14:33] Speaker 07:
Unless there are further questions about this, I'm going to give you some time to address the merits of the infringement verdict and the 101 issues.

[00:14:44] Speaker 03:
Thank you very much.

[00:14:47] Speaker 03:
Going back to 101, as the court said in the Randy versus Apple case, the invention in the 843 patent is, quote, it provides a beneficial coordination between a first computer program displaying a document and a second computer program for searching an external information source.

[00:15:06] Speaker 03:
And so this invention is an improvement in the computer's ability to undertake inner program orchestration, including through an improved interface.

[00:15:14] Speaker 03:
I'm using analyze, identify, search.

[00:15:17] Speaker 07:
He didn't decide that the 843 was, or Judge Stark, I guess it was, didn't decide that the 843 was patentable under 101, right?

[00:15:30] Speaker 07:
Right.

[00:15:31] Speaker 07:
I think the same benefit... There's a assertion that that's an alternative ground for sustaining the judgment here.

[00:15:41] Speaker 07:
That's problematic.

[00:15:43] Speaker 07:
But so why don't you address the one-on-one question with respect to the other patents and then maybe at the end of that discuss whether they're right that the 843 is the same.

[00:15:56] Speaker 03:
Absolutely.

[00:15:57] Speaker 03:
This improvement in the computer as a tool is reflected in those other claims from the other patents.

[00:16:04] Speaker 03:
well all four claims from the four patents specify these orchestrated actions that only computers can perform analyzing a document for first information of a certain type and invoking a second program to search for an external source we see that in claim two of the three five six and claim one of the nine nine three and

[00:16:27] Speaker 03:
And the district court's basis to distinguish those two claims from the 843 doesn't really have support in the claim language.

[00:16:35] Speaker 03:
The district court mentioned some kind of temporal limitation of both documents or both programs, excuse me, being open at the same time or running at the same time.

[00:16:45] Speaker 07:
So both parties agree that all the patents should stand or fall together under 101?

[00:16:54] Speaker 03:
If your question is, I don't know if we agree, but I think if your question is should the patents all rise and fall together, I think the answer's a little nuanced in the sense that I think they're all directed to an improvement in computer functionality.

[00:17:07] Speaker 03:
So what's step one?

[00:17:08] Speaker 04:
Well, they're all directed to the idea of sort of fetching data from a different program while you're operating in a single program.

[00:17:23] Speaker 04:
interesting idea.

[00:17:25] Speaker 04:
The problem for me is in the details.

[00:17:29] Speaker 04:
I don't see anything in the claims that describes the computer functionality in terms of how that is accomplished.

[00:17:39] Speaker 04:
Just a broad statement of, you know, when you're in one program it will look and find signs of information that will give

[00:17:50] Speaker 04:
clues to fetch other information related, such as a name or an address, that's an idea.

[00:17:59] Speaker 04:
But I don't know that that describes the functionality of how that is done.

[00:18:06] Speaker 03:
I think two things on that.

[00:18:08] Speaker 03:
Number one, I think it does describe the functionality in the context of telling you what to look for and then what to do with it

[00:18:15] Speaker 03:
When you find it search and then what to do when you find that to describe how that's done my second point is In other cases that have found claims very similar claims eligible There's a similarly not a how it's done if you look at data engine that we cite if you look at Finjin that we cite if you look at ancora those are directed to to use the coursework ideas without a

[00:18:42] Speaker 03:
really any kind of specificity on how it's done.

[00:18:44] Speaker 04:
Data engine, it strikes me that the claims in question here are more like claim one in that case rather than claim 12 in that case.

[00:18:55] Speaker 04:
Why am I wrong?

[00:18:57] Speaker 03:
I think you're wrong because the claims in data engine are, I would even submit, are even broader than these claims.

[00:19:07] Speaker 03:
Because the claims in Data Engine, the eligible claim in Data Engine, was simply a selection of claims that involved displaying certain pieces of data and inputting pieces of data.

[00:19:18] Speaker 03:
Not necessarily telling you how or what to do with that data.

[00:19:24] Speaker 03:
So I think the claims in Data Engine, and certainly the claim in ANCORA, and certainly the claim in FinGEN, are broader from a details perspective than those are all eligible claims.

[00:19:35] Speaker 03:
I think they're broader from a details perspective than any of the representative claims in this case.

[00:19:50] Speaker 03:
And in the data engine case, the claims were eligible because they improved computers functionality as a tool.

[00:20:01] Speaker 03:
right, as a tool.

[00:20:02] Speaker 03:
We're not using the computer as a tool to do something else or to practice a long-standing commercial practice.

[00:20:09] Speaker 03:
We're improving the computer's functionality as a tool to instantly access all parts of complex 3D spreadsheets.

[00:20:17] Speaker 03:
In this case, similarly, the limitations approve the computer's functionality to access information by analyzing a document to determine the presence of first information, retrieving that information, performing a search using that information, and that

[00:20:32] Speaker 03:
avoids the user having a contact switch, avoids the user having to have access to and knowledge of a secondary information repository.

[00:20:42] Speaker 03:
So these claims I think are directed to a specific technique that departs from earlier information processing, having to go back and forth between disparate computer programs, getting access to those programs,

[00:20:59] Speaker 03:
and being able to understand how that second program works.

[00:21:04] Speaker 03:
I would like to touch on the claim construction issues if I can, Your Honor.

[00:21:08] Speaker 03:
We'll give you a couple of minutes, Scott.

[00:21:09] Speaker 03:
Thank you.

[00:21:11] Speaker 03:
So very briefly, the document term need not be limited to one in which text can be entered.

[00:21:19] Speaker 03:
It is not limited to a word processing spreadsheet or similar file.

[00:21:24] Speaker 03:
But at the end of the day, editability is not a requirement to be a document in this patent.

[00:21:29] Speaker 03:
Right you start with the plan or any meeting of the patent and in this case document has two limitations Got to be electronic.

[00:21:39] Speaker 03:
It's got to contain text and If you look at the claims, there's nothing that says that that mandates editability

[00:21:48] Speaker 03:
And we can see that when the patentee wanted to mandate edibility in the claims, he said so in the claims.

[00:21:55] Speaker 03:
If you look at claim one of the 843 and compare that to claim one of the 356, the latter requires edibility.

[00:22:04] Speaker 03:
And again, if we look at the specification, that too doesn't mandate edibility.

[00:22:10] Speaker 03:
These are non-limiting examples in the specification.

[00:22:13] Speaker 03:
I don't have to tell this court about

[00:22:15] Speaker 03:
You know, improperly importing limitations from the specification into the claims.

[00:22:21] Speaker 03:
That's even the case when every single embodiment in the patent, as you know, does so.

[00:22:28] Speaker 04:
If we agree with you on this document claim construction, then the case goes back to the district court.

[00:22:39] Speaker 04:
And now we're back to the validity judgment or the validity verdict.

[00:22:45] Speaker 04:
Right?

[00:22:46] Speaker 04:
Yes, your honor.

[00:22:48] Speaker 04:
So you, in effect, your argument on infringement will get you back to the district court to argue once again validity.

[00:23:00] Speaker 04:
Well, yes, because... You would have been better off not arguing that and leaving your validity issue to go away, as you say, which I don't think is the case in any event.

[00:23:13] Speaker 03:
I think if there is a reversal on the construction of document, yes, we'd go back.

[00:23:19] Speaker 03:
We'd have a new trial on everything, because it's a brand new construction.

[00:23:23] Speaker 03:
And that's one of the reasons the district court cited in her discussion.

[00:23:29] Speaker 03:
I don't want to take any more time.

[00:23:31] Speaker 07:
I think we're about out of time.

[00:23:34] Speaker 07:
We'll give you two minutes for rebuttal.

[00:23:36] Speaker 07:
Thank you so much, Your Honor.

[00:23:37] Speaker 07:
Ms.

[00:23:37] Speaker 07:
Anders?

[00:23:44] Speaker 01:
Thank you.

[00:23:45] Speaker 01:
And may it please the court, I'm Ginger Anders for Google LLC.

[00:23:48] Speaker 07:
You've got a jurisdictional problem, too, because you didn't file a cross appeal on the 101 eligibility of the 843 patent, which RadioSteel and TypeWrite suggest you need to do.

[00:24:02] Speaker 07:
It has nothing to do with whether it's a counterclaim or not, because the unpatentability finding would expand the judgment.

[00:24:10] Speaker 01:
So we don't think that's the case here because the judgment rests on invalidity as well as on non-infringement.

[00:24:16] Speaker 01:
So there would be no expansion of the judgment if the 843 is ruled ineligible.

[00:24:21] Speaker 01:
So I think that takes us back to the 843 invalidity issue.

[00:24:24] Speaker 06:
So if I could.

[00:24:25] Speaker 06:
Ineligibility is the same thing as invalidity.

[00:24:28] Speaker 06:
Have we ever held that?

[00:24:29] Speaker 01:
I'm not sure that the court has, but I think it just doesn't matter.

[00:24:31] Speaker 06:
I think that there might be a distinction there.

[00:24:36] Speaker 06:
Invalidity is 102 or 103 as presented to the jury.

[00:24:37] Speaker 06:
Ineligibility is.

[00:24:39] Speaker 06:
You know, it has the same effect in rendering a patent invalid or unenforceable, but I'm not sure it's the same thing as invalidity.

[00:24:50] Speaker 06:
If it's not, then he would have had to cross-appeal, right?

[00:24:53] Speaker 01:
I think they're doctrinally somewhat distinct things, but I think they are both defenses.

[00:24:59] Speaker 01:
We would have had to cross appeal if you don't think that invalidity is exactly the same as ineligibility.

[00:25:04] Speaker 01:
But I also think that the court should not reach any of the 843 issues because of the invalidity issue that you were discussing with my friend on the other side.

[00:25:12] Speaker 01:
So if I could maybe turn to that and explain why I think the judgment does rest on invalidity.

[00:25:18] Speaker 07:
I think what the district court did here was really confusing.

[00:25:21] Speaker 01:
And if I could.

[00:25:22] Speaker 07:
And you know, she denies the post trial motions, but yet she seems to treat this as an unresolved issue.

[00:25:31] Speaker 07:
So go ahead.

[00:25:32] Speaker 01:
Sure.

[00:25:32] Speaker 01:
So I'd like to make three points.

[00:25:34] Speaker 01:
So I think the first one is that once the jury ruled on invalidity as well as non-infringement, the Seventh Amendment kicked in.

[00:25:41] Speaker 01:
This was a jury verdict.

[00:25:42] Speaker 01:
The re-examination clause

[00:25:44] Speaker 01:
Forbids re-examining disturbing a jury verdict except on the grounds that were available at common law, which means essentially rule 59.

[00:25:51] Speaker 01:
Arendi filed a rule 59 motion, but then it pulled it back and asked the court not to rule on it.

[00:25:55] Speaker 01:
The district court denied that JML motion, leaving the verdict to stand.

[00:26:00] Speaker 01:
So the jury verdict stands.

[00:26:01] Speaker 01:
At that point, the district court also denied Arandi's request to narrow the judgment.

[00:26:06] Speaker 01:
And although my friend on the other side suggested that maybe the judgment rested only on non-infringement, I think it could not be clearer.

[00:26:13] Speaker 07:
I would suggest in some of those colloquies that she's not entering judgment in validity.

[00:26:20] Speaker 07:
And I don't know whether she has the authority to do that or not.

[00:26:24] Speaker 07:
Does she?

[00:26:24] Speaker 01:
No, I don't think she would have had the authority to narrow the judgment.

[00:26:27] Speaker 01:
And I think that's not what she did.

[00:26:28] Speaker 06:
So what do we do if we have a situation where she doesn't have the authority to do that absent granting the appropriate post-trial motion, which she didn't do, but she thinks she was doing that?

[00:26:42] Speaker 06:
And so do we hold her to what

[00:26:50] Speaker 06:
I mean, at least I think the law would provide, which is if it wasn't disturbed, then it still underpins the judgment.

[00:26:57] Speaker 06:
Or what she thought she was doing, and reading it, I think the proper way to read it, she thought she wasn't putting the imbility as part of the final judgment.

[00:27:06] Speaker 01:
So I think, actually, I would disagree with that, Your Honor.

[00:27:09] Speaker 01:
I think she did think that she was, and if I could read the part of the... I understand.

[00:27:13] Speaker 06:
There's a way to read it your way.

[00:27:16] Speaker 06:
I let's just assume for hypothetical sake that that I think she thought she was not including in validity as a ground for the final judgment.

[00:27:27] Speaker 06:
And so if she didn't do that, then what do we do with with the case?

[00:27:32] Speaker 06:
It almost seems like

[00:27:33] Speaker 06:
You know, it's not really a final judgment, because she's deferred deciding on something she needed to decide on.

[00:27:40] Speaker 01:
So let me make a couple points with respect to that.

[00:27:42] Speaker 01:
So the first is, I think if you look at the order, I don't mean to question the premise, but if you look at page 95 of the appendix, what the district court says is, Arendy asks the court to clarify in the judgment document that the judgment is based on the jury's non-infringement verdict at trial.

[00:27:57] Speaker 01:
The court declines to do so.

[00:27:59] Speaker 01:
It is unclear if Reni's request represents an attempt to limit what issues the parties can or must raise on appeal against or in support of the judgment.

[00:28:05] Speaker 01:
Nothing in this order is intended to preclude either side from making whatever arguments on appeal they are permitted to make under the law or that they are required to make in order to preserve their arguments.

[00:28:13] Speaker 01:
And then she entered judgment for Google and against Arendi on the only claim in the case, which was Arendi's claim of non-infringement.

[00:28:19] Speaker 01:
So I think if you read all of that together, I think it's very clear that she thought that she was entering a judgment that was supported by two independent grounds, non-infringement and validity.

[00:28:29] Speaker 01:
I don't think it's clear.

[00:28:30] Speaker 07:
I think it's very unclear.

[00:28:31] Speaker 01:
And so I think even if you think it's unclear, then I think the principles we've been talking about, the Seventh Amendment background principle here that says that jury verdicts can't be disturbed unless a Rule 59 motion is granted,

[00:28:43] Speaker 01:
I think that kicks in, and I would urge the court to interpret what the court did.

[00:28:46] Speaker 07:
There's another alternative here, and we've done this in other cases, is to give leave to the parties to go back to the district court and clarify what the judgment is.

[00:28:57] Speaker 01:
I think Orende has waved several times over any kind of action like that.

[00:29:02] Speaker 07:
It's a question of what we think we need

[00:29:06] Speaker 07:
in order to decide this case.

[00:29:08] Speaker 07:
If we can decide that the judgment is confusing and unclear, we can ask the parties to go back and get the district court to clarify it.

[00:29:17] Speaker 07:
Should we do that?

[00:29:18] Speaker 01:
I don't think the court should do that, because I do think, one, it's clear.

[00:29:23] Speaker 01:
I understand your honors may disagree with that.

[00:29:24] Speaker 01:
If you disagree with that, then I do think that the Seventh Amendment background principle here is really important.

[00:29:29] Speaker 01:
And then the next point I want to make, and so I think the court should interpret what the district court did in light of that principle, because it wouldn't have had authority to.

[00:29:39] Speaker 06:
Well, that's the question, Your Honor.

[00:29:42] Speaker 06:
opponent wants to raise, which is that because this was only an affirmative defense, not a counterclaim, that the district court is always free to rest the judgment on only the non-infringement finding.

[00:29:55] Speaker 06:
And I think you would agree in a bench trial that a district court judge is free to do that.

[00:30:03] Speaker 06:
If he or she finds infringement, that they need not go on without a counterclaim to reach invalidity.

[00:30:09] Speaker 06:
But are you aware of any cases where both of those questions were submitted to the jury and not in any conditional way?

[00:30:16] Speaker 06:
They found for the defendant on both, and the judge was allowed to base the final judgment on only one of the jury's verdicts, not both.

[00:30:27] Speaker 01:
No, I'm not aware of any such case.

[00:30:29] Speaker 01:
I do think it would be inconsistent with the Seventh Amendment and Rule 59 to do that.

[00:30:33] Speaker 01:
So I think that's why there aren't any cases.

[00:30:34] Speaker 01:
I think the only significance of the fact that invalidity wasn't a counterclaim was that before the jury ruled, the court would have been able to say the verdict form should be in the alternative.

[00:30:47] Speaker 01:
Rendy had that opportunity.

[00:30:49] Speaker 01:
They forfeited it.

[00:30:49] Speaker 01:
They in fact proposed a verdict sheet that asked the jury to rule on both.

[00:30:53] Speaker 01:
So the jury found both.

[00:30:55] Speaker 01:
It found invalidity.

[00:30:56] Speaker 01:
It found non-infringement.

[00:30:58] Speaker 01:
So at that point, the Seventh Amendment had kicked in.

[00:31:01] Speaker 01:
If Arendi wanted to disturb that verdict, it had a couple options.

[00:31:04] Speaker 01:
It could move for Rule 59 to frontally attack the verdict.

[00:31:06] Speaker 01:
It did that at first.

[00:31:08] Speaker 01:
The district court denied that motion.

[00:31:09] Speaker 01:
The other thing it could do is come up on appeal and say that there are other issues in the case that undermine the invalidity verdict.

[00:31:17] Speaker 01:
And so just to turn to that, they could have appealed the invalidity verdict in some sense.

[00:31:25] Speaker 01:
They didn't do that.

[00:31:26] Speaker 01:
So I guess the way I would think about this is as a forfeiture waiver issue several times over, not as a finality issue.

[00:31:32] Speaker 01:
There is a final judgment from the district court that rests on both of these grounds.

[00:31:35] Speaker 01:
could have challenged invalidity as well as non-infringement, it was incumbent on it under Rule 61 to essentially say we're raising claim construction challenges, we're raising other challenges that somehow undermine the invalidity verdict because a party, an appellant, is required to show an effect on its substantial rights in order to disturb a jury court.

[00:31:56] Speaker 07:
You're arguing this without any case support.

[00:31:59] Speaker 07:
I'm sorry?

[00:31:59] Speaker 07:
You're arguing this without any case support.

[00:32:02] Speaker 07:
Well, I think that just right now, I don't know what the right answer is as to whether the district court has the authority to withhold entry of judgment on this alternative grant.

[00:32:12] Speaker 07:
I would like to know whether there are cases one way or the other.

[00:32:16] Speaker 07:
You're not citing any.

[00:32:18] Speaker 07:
I mean, you're just arguing the Seventh Amendment sort of in the abstract requires this.

[00:32:22] Speaker 07:
I don't know whether that's true or not.

[00:32:24] Speaker 01:
Well, I think rule 59 itself established.

[00:32:27] Speaker 01:
I think the federal rules established that there are certain grounds for challenging.

[00:32:30] Speaker 07:
There's no case authority.

[00:32:31] Speaker 07:
That's the problem.

[00:32:32] Speaker 06:
Well, and I think Gasparini versus Center for Humanities, the Supreme Court said the re-examination clause forbids re-examining a jury verdict, except on the- Well, it's better, of course, here to just send this back to the district court and have her clarify whether she meant to set aside the invalidity finding or not and make clear to her that she can't hold it in abeyance because it was part of the jury's verdict.

[00:32:52] Speaker 06:
And then she can decide

[00:32:54] Speaker 06:
It sounds, I think, that the parties confused her, and I'm not suggesting necessarily it was you, confused her into thinking that she had the discretion not to reach it.

[00:33:04] Speaker 06:
I don't think she did.

[00:33:06] Speaker 06:
But maybe there's case law that suggests she did.

[00:33:09] Speaker 06:
But in any way, we could avoid that hard legal question if we just make her clarify whether the final judgment rested on both grounds or one.

[00:33:19] Speaker 06:
And if she says, yes, I can do it on one ground, then maybe we need briefing on whether that's legally permissible.

[00:33:25] Speaker 06:
But when we don't even know whether she restricted it on one ground or two, we're being asked to resolve a very difficult legal question with a factual basis that is very unclear.

[00:33:37] Speaker 01:
Well, let me make a couple points.

[00:33:38] Speaker 01:
I think, first, I think it is clear what she thought she was doing.

[00:33:42] Speaker 01:
And anyway, I don't think that she would have had the authority under the rules to do anything other than, and the Seventh Amendment to do anything other than what she did.

[00:33:50] Speaker 01:
And I guess I would also point out that if, Arendi is the appellant here.

[00:33:54] Speaker 01:
There is an existing verdict of invalidity that the district court did not set aside.

[00:34:00] Speaker 01:
If Rendy thought that there was some lack of clarity there or disagreed with something that the district court did there, it was incumbent on it to appeal that.

[00:34:08] Speaker 01:
And it didn't.

[00:34:09] Speaker 01:
It didn't raise that.

[00:34:10] Speaker 01:
So I would submit that this is very much like the court's decision in Beckton Dickinson versus Bard.

[00:34:14] Speaker 01:
which is a case where the district court was the fact finder.

[00:34:17] Speaker 01:
It ruled on both invalidity and non-infringement.

[00:34:20] Speaker 01:
The case came up.

[00:34:21] Speaker 01:
The patentee ignored invalidity as though it didn't exist and argued only non-infringement.

[00:34:26] Speaker 01:
And the court said that when that happens, the thing to do is to treat that as waiver on behalf of, by the patentee because it's incumbent on the appellant to raise all issues that it thinks might be unclear or that it might need in order to win.

[00:34:41] Speaker 01:
And I do think that there are compelling reasons not

[00:34:43] Speaker 01:
send this back for yet more here.

[00:34:46] Speaker 01:
This case, Google prevailed entirely at trial.

[00:34:49] Speaker 01:
This went to trial.

[00:34:51] Speaker 01:
Randy had a chance to ask for the verdict to be in the alternative.

[00:34:54] Speaker 01:
It didn't, so Google prevailed on both grounds.

[00:34:58] Speaker 01:
As any prevailing defendant, it has a really strong interest in having... The jury verdict doesn't result in an automatic judgment.

[00:35:05] Speaker 07:
There has to be an entry of judgment.

[00:35:07] Speaker 07:
And she apparently thought, at least the way I read it, that she wasn't entering judgment on the invalidity issue.

[00:35:13] Speaker 07:
It's very confusing, but that would be, like Judge Hughes, that's the way I would read it.

[00:35:18] Speaker 01:
Well, I guess I would submit on that that she changed the form of the verdict of the judgment slightly between the trial and the final judgment.

[00:35:28] Speaker 01:
The only change was that now the verdict said, or the judgment said, it just said entry for Google and against Arendy on the sole claim of non-infringement.

[00:35:39] Speaker 01:
So the only difference between the two was that the very first judgment mentioned invalidity.

[00:35:44] Speaker 01:
The second judgment didn't.

[00:35:45] Speaker 01:
It just said verdict against Arendy.

[00:35:47] Speaker 01:
I think that the best reading of that is that what she said on pages 95 and 96 of the appendix, that she wasn't making any substantive change to the verdict.

[00:35:57] Speaker 01:
She expressly declined to take out invalidity.

[00:36:02] Speaker 01:
And so I think all she was doing was just saying, I acknowledge that there's no counterclaim of invalidity here, so I'm just going to make the judgment clear that there's only one claim in the case, and it's Arendi's claim of non-infringement.

[00:36:12] Speaker 01:
And so I think that's what she was doing.

[00:36:14] Speaker 01:
She was just saying,

[00:36:15] Speaker 01:
I'm sorry, I misspoke.

[00:36:24] Speaker 01:
There's one claim, which is Arendy's claim of infringement under comma versus Cisco.

[00:36:31] Speaker 01:
Right.

[00:36:31] Speaker 01:
And what we know is from Comma versus Cisco is that that can be supported by alternative grounds of non-infringement and invalidity.

[00:36:37] Speaker 01:
So I think that is what the district court did here.

[00:36:40] Speaker 07:
But the problem is, look, at page 99, in the middle of the page, she says, because Google did not seek a declaratory judgment of invalidity, the court also has discretion to not consider Arendi's arguments.

[00:36:54] Speaker 07:
And under the circumstances of this case, the court will exercise this discretion to not do so, as it would be a waste of judicial resources.

[00:37:01] Speaker 07:
That sounds very much as though she's not addressing the merits of the post-trial motions.

[00:37:08] Speaker 01:
I think that's right.

[00:37:08] Speaker 01:
She was not addressing the merits of the post-trial motions.

[00:37:10] Speaker 01:
And I think the reason... But here's the problem.

[00:37:13] Speaker 06:
If your view of the law is correct, then she can't do that.

[00:37:18] Speaker 06:
right?

[00:37:19] Speaker 06:
She has to address it because it's a motion that's pending.

[00:37:22] Speaker 06:
She can't, she has to either deny it or grant it.

[00:37:26] Speaker 06:
She cannot refuse to address it.

[00:37:28] Speaker 01:
Well, I think she could refuse to address the merits.

[00:37:30] Speaker 01:
I think she denied it the way I would understand this.

[00:37:32] Speaker 06:
I do want to read it as her denying it implicitly, but it's hard

[00:37:36] Speaker 06:
It's very, very hard for me to, I mean, you can parse out portions of the record to support either view, I think, on this, that she just entered final judgment against them on patent infringement and entered the jury verdict, which had two things, but then you look at these colloquies and stuff.

[00:37:54] Speaker 06:
It sounds like she thought she had discretion not to rule on the post-trial motion about invalidity.

[00:38:02] Speaker 06:
And I think your position is she didn't have discretion not to rule on it.

[00:38:07] Speaker 06:
She had to deny it if she wanted.

[00:38:10] Speaker 06:
She had to grant it if she wanted to remove invalidity from the case, right?

[00:38:15] Speaker 06:
Yes.

[00:38:15] Speaker 06:
And if she didn't want to grant it, she had to deny it.

[00:38:19] Speaker 06:
And it doesn't sound to me like she thinks she's denying it either.

[00:38:23] Speaker 01:
So I think what she did was deny it as harmless.

[00:38:25] Speaker 06:
That's how I would read this, that because Arendi had not challenged- Again, you want to read the record in the light most favorable to you.

[00:38:33] Speaker 06:
And I just don't understand from the record that that's what she thought she was doing.

[00:38:39] Speaker 06:
And isn't it better for us to figure out what she actually was doing?

[00:38:44] Speaker 06:
And then we can figure out if what she did was legally correct or not.

[00:38:47] Speaker 06:
Because if she did think she had

[00:38:53] Speaker 06:
discretion to disregard the jury's verdict on invalidity and enter a final judgment only on infringement.

[00:39:03] Speaker 06:
Your view is that that's just legally incorrect unless she ruled against in their favor on a post trial motion.

[00:39:10] Speaker 01:
She can't do that legally.

[00:39:11] Speaker 01:
That's correct.

[00:39:12] Speaker 01:
And that's what we told her below.

[00:39:13] Speaker 01:
That's what we told the court below.

[00:39:15] Speaker 01:
But I guess I'm not, with respect, not reading this simply in the light most favorable to Google.

[00:39:22] Speaker 01:
I think if you read these sentences.

[00:39:23] Speaker 01:
No, I know.

[00:39:24] Speaker 06:
I don't want to quibble about what it says.

[00:39:25] Speaker 06:
Because I understand your point.

[00:39:28] Speaker 06:
And I mean, if I'm forced to decide who has the better reading, I don't know what I would do.

[00:39:32] Speaker 06:
Because I would have to do it in light of what the law says.

[00:39:36] Speaker 06:
But I don't know what she was doing.

[00:39:39] Speaker 06:
insisted she did something legally wrong when she thought she was just doing what was available to her.

[00:39:47] Speaker 06:
And that would be basically what we would be saying if we said that the invalidity

[00:39:57] Speaker 06:
verdict of the jury is an independent basis for her because I don't really let's just assume I don't think she thought that she was keeping that in the case well I think even if she didn't think she was keeping that in the case I did I think she she did keep it in the case

[00:40:12] Speaker 01:
And Arendi could have appealed that, right?

[00:40:14] Speaker 01:
It could have appealed her way of handling the post-trial litigation.

[00:40:19] Speaker 01:
It didn't.

[00:40:20] Speaker 01:
And then I think what it would have had to do here before this court is say, the arguments we are making, it would have to show the court how the arguments it's making somehow undermine the invalidity verdict.

[00:40:30] Speaker 01:
That's what you would do to get relief.

[00:40:32] Speaker 01:
from a verdict on appeal under Rule 61, which does say that this court must disregard any errors that don't affect the substantial rights of the parties.

[00:40:42] Speaker 01:
And we would say that because they didn't appeal the invalidity verdict or suggest that there's anything that undermines it in their other challenges, that anything with respect to the 843 is harmless.

[00:40:53] Speaker 01:
But I guess if I could turn to the 101

[00:40:55] Speaker 01:
issues with my remaining time.

[00:40:58] Speaker 07:
Why don't you first, since we're on the 843, let's talk about whether the district court's construction of document was correct, which seems to me to be possibly wrong.

[00:41:10] Speaker 01:
So just to be clear, I think the issue with respect to document that makes a difference here is the editability issue, not the word processing one, because it was the editability issue that governed the summary judgment.

[00:41:21] Speaker 07:
The district court seemed to reason

[00:41:23] Speaker 01:
Because the document has to be a word processor document that somehow it has to be editable I don't follow that since the word processing document could be a read-only document I I think you're right about that so I think I think the two claims are in I think the two Definitional issues are independent though, and they rest on independent evidence so with respect to editability I think the primary point there

[00:41:45] Speaker 01:
is that all of the claims of the 356 patent require the document to be editable because they all contain a limitation that says the user enters textual information into a document.

[00:41:55] Speaker 01:
So we know that in those claims, the word document has to be an editable document because it's not modified.

[00:42:02] Speaker 01:
It just says document.

[00:42:03] Speaker 01:
We know it has to be editable.

[00:42:05] Speaker 07:
But there are some claims that don't have that language.

[00:42:10] Speaker 07:
And claim one talks about performing an action

[00:42:15] Speaker 07:
clearly contemplates that perform the action could be editing or display, right?

[00:42:22] Speaker 01:
So yes, there are some claims that are sort of agnostic as to whether the document would be editable.

[00:42:27] Speaker 01:
But I think once we know that all of the claims in the 356 and some of the claims in the 843 require the word document to mean editable document, then the principle that a term that is used throughout a family of patents that came from the same application, that share common specifications,

[00:42:43] Speaker 01:
that term has to be interpreted the same across all the patents.

[00:42:47] Speaker 01:
So what that means is that once we know the document has to be editable in the 356, the term has to be given the same meaning in all of the claims, even those that don't necessarily, if they were standing alone, require that same characteristic.

[00:43:02] Speaker 01:
But I think that's just sort of a consequence of this court's principle that a term that has to have one meaning in a particular claim has to be interpreted the same for all of the related claims.

[00:43:13] Speaker 01:
Well, it's presumptively interpreted the same and I would say that there is that all of the evidence all of the other evidence points to that interpretation points the same way so in the specification every single flow chart every the description of the problem the description of the present invention all of the all of the embodiments they all talk about user editing the document working in the document inserting text

[00:43:36] Speaker 01:
It's unanimous.

[00:43:38] Speaker 01:
And Arendi has not pointed to a single thing that goes the other way.

[00:43:41] Speaker 01:
It has not pointed to a single limitation that would be redundant or anything that wouldn't make sense in any of the claims.

[00:43:47] Speaker 01:
So I think this is a case where the presumption that the term has to be interpreted the same in all of the claims has to be the right answer here, because all of the evidence points in the same direction.

[00:43:58] Speaker 01:
Why don't you turn to unpackability?

[00:44:00] Speaker 01:
back to 101.

[00:44:03] Speaker 01:
So I think these claims are directed to, I think, the quintessential abstract idea of manipulating, analyzing, and manipulating information.

[00:44:12] Speaker 01:
The court has held that that is abstract.

[00:44:15] Speaker 01:
And I think the claims are directed to that abstract idea rather than to any improvement in the technological capability of a computer.

[00:44:24] Speaker 01:
And I think we know that because although Arendy claims that beneficial coordination is the

[00:44:29] Speaker 01:
is the technological improvement, even assuming that that sort of coordination is in fact a concern of the patent, and I'm not sure that it is, but even assuming that it is, the claims never explain how to achieve beneficial coordination.

[00:44:42] Speaker 01:
I think Arendi defines that term as sort of while the user is working in the document, the search will be performed for related contact info in a second program.

[00:44:54] Speaker 01:
The claims are completely functional with respect to that limitation.

[00:44:57] Speaker 01:
So for instance, in the 843 Claim 1, it just says that while the document is displayed, the user presses a button, causing a search for the search term in a separate source.

[00:45:07] Speaker 01:
The A54 is the same thing.

[00:45:08] Speaker 01:
It just says, use the text to search the database.

[00:45:12] Speaker 01:
That is just claiming the result of the beneficial coordination.

[00:45:15] Speaker 01:
It's not explaining how it's done.

[00:45:16] Speaker 01:
There's nothing about how to overcome any potential barriers.

[00:45:19] Speaker 01:
coordination between the two programs like security barriers or compatibility barriers and so I think what that shows under this court's case law is that the claims are really focused they're not focused on how to improve a computer's capability to coordinate between programs instead they sort of assume that a skilled arson would know how to do that function because it's not it's not the innovation of the patent

[00:45:42] Speaker 01:
So I think that the patents just come down to automating this coordination function and in that sense they are just like the claims that the court held abstract in credit acceptance where the court said that communication between previously unconnected systems or databases is not a technological improvement.

[00:46:00] Speaker 01:
So I think that's the case here with respect to all four patents.

[00:46:02] Speaker 01:
I think we agree that the patents rise and fall together and I think they are all very clearly abstract under this court's case law.

[00:46:08] Speaker 07:
Okay, thank you.

[00:46:10] Speaker 07:
Mr. Kaminsky.

[00:46:20] Speaker 05:
May it please the court, Jeffrey Kaminsky.

[00:46:22] Speaker 05:
On behalf of oath, I will be addressing the grant of summary judgment of no direct infringement by oath.

[00:46:28] Speaker 07:
Which Mr. Lahan didn't discuss.

[00:46:31] Speaker 05:
He did not.

[00:46:33] Speaker 07:
Okay.

[00:46:35] Speaker 05:
So under Arendt's theory, the infringing device is a user device such as a smartphone loaded with the Android operating system and an Oath app.

[00:46:45] Speaker 05:
Oath only provides one of those required components.

[00:46:49] Speaker 05:
In addition, the evidence shows that it's the user that's the final assembler of the device.

[00:46:54] Speaker 05:
This is insufficient to show direct infringement.

[00:46:57] Speaker 05:
So under Arendt's first theory of infringement on appeal, it asserts that Oath makes the claim to computer-readable media encoded with instruction

[00:47:05] Speaker 05:
when oath downloads its code onto the user device.

[00:47:09] Speaker 05:
But the brief doesn't cite any evidence that oath itself downloads the code onto the user device.

[00:47:14] Speaker 05:
In fact the evidence cited on page 54 of Randy's brief they cite to 7725 of the appendix.

[00:47:21] Speaker 05:
That's a document that describes that the user does the downloading onto their own device from either the Apple App Store or the Play Store.

[00:47:28] Speaker 05:
None of those, not the user, not the App Store or the Play Store, are oath.

[00:47:33] Speaker 05:
And Orendy doesn't present any evidence that they are.

[00:47:36] Speaker 05:
The Centrix case relied on by Orendy doesn't help them.

[00:47:39] Speaker 05:
In the Centrix case,

[00:47:41] Speaker 05:
There was evidence that the accused infringer itself went to the customer site and did the installation to create the infringing system.

[00:47:48] Speaker 05:
But that's not what happens here.

[00:47:50] Speaker 05:
Neither Oath nor anybody acting on Oath's behalf does the installation or the downloading onto the user device.

[00:47:57] Speaker 05:
Or in the second theory of infringement that Oath offers to sell the claimed computer-readable medium fails for at least the same reasons.

[00:48:03] Speaker 05:
In addition, there's no genuine dispute that the oath code, oath app, that is available for download does not include all the required elements.

[00:48:12] Speaker 05:
And Lorenzo's expert testified that he did not provide any opinion that it is.

[00:48:17] Speaker 05:
This, again, is insufficient to show direct infringement by oath.

[00:48:20] Speaker 05:
And for those reasons and the other reasons set forth in the briefing, the grant of summary judgment of no direct infringement by oath should be upheld.

[00:48:28] Speaker 07:
OK, thank you.

[00:48:30] Speaker 07:
Mr. Lahab, you have two minutes.

[00:48:35] Speaker 03:
So as Your Honor alluded to, we don't appeal verdicts.

[00:48:39] Speaker 03:
We appeal judgments.

[00:48:40] Speaker 02:
And in this case, I think the judgment only rested on infringement.

[00:48:46] Speaker 03:
And if you go to Appendix 100, there's footnote four in the court's order.

[00:48:53] Speaker 03:
I think that sheds additional light on what the court was trying to do, and perhaps might help resolve some of this confusion.

[00:49:00] Speaker 03:
I don't want to read the entire thing, but the upshot is that

[00:49:05] Speaker 03:
The court was talking about deciding a case on alternative grounds and how it may help a higher court.

[00:49:12] Speaker 03:
And the court said, under the unique circumstances of this case, there is no reason for this court or the court to expend judicial resources writing an opinion to address the alternative grounds of invalidity, where that opinion is either going to be unhelpful because it's unnecessary or uses the wrong claim construction and thus unlikely to be all that helpful to an appellate court.

[00:49:35] Speaker 03:
that is going to review the invalidity issues de novo.

[00:49:39] Speaker 03:
So she is expressly not deciding anything on the alternative grounds.

[00:49:46] Speaker 03:
I think the fact that there was a change in the judgment, post verdict versus the final judgment.

[00:49:54] Speaker 06:
You could just as easily assume that what she's saying is, I'm not going to write anything on invalidity, because it won't be helpful to the court.

[00:50:04] Speaker 06:
But there's nothing that prohibits what the parties can or must raise on appeal.

[00:50:10] Speaker 06:
And so it's not clear to me what she was doing, but I can read this as her saying, I'm just not going to write on your rule 59 emotion.

[00:50:21] Speaker 06:
I'm going to enter judgment based on the jury's verdict.

[00:50:24] Speaker 06:
And the judgment she entered does not say judgment in favor of Google on non-infringement.

[00:50:31] Speaker 06:
It says judgment against you on your claim of patent infringement.

[00:50:36] Speaker 06:
And both grounds found by the jury would defeat your claim of patent infringement.

[00:50:42] Speaker 06:
That is what the judgment says, yes.

[00:50:44] Speaker 06:
And she didn't.

[00:50:45] Speaker 06:
That's what her final judgment was, right?

[00:50:48] Speaker 06:
It doesn't specifically rule out the invalidity ground.

[00:50:52] Speaker 06:
And I understand what you're trying to say.

[00:50:54] Speaker 06:
My view here is that this is just all very, very confusing, and I don't have any idea whether she actually thought she could not rule on the 1519 motion on the portion of invalidity, and if she thought that, whether that's legally correct.

[00:51:11] Speaker 03:
I think she did think that, that she could not rule that she had a discretion.

[00:51:15] Speaker 03:
I think she did think that it was legally correct under multi-form desiccants.

[00:51:18] Speaker 03:
Well, what if we think that's legally incorrect?

[00:51:23] Speaker 03:
Then the court would have to address language from multi-form desiccants, saying that the district court has some discretion on that point.

[00:51:37] Speaker 07:
All right.

[00:51:37] Speaker 07:
I think we're out of time.

[00:51:39] Speaker 07:
Thank you, Your Honor.

[00:51:40] Speaker 07:
Thank all counsel.

[00:51:41] Speaker 07:
The case is submitted.