[00:00:00] Speaker 03:
Before we get started, I want to welcome and thank Judge Wong, who is here with us from the District of Colorado.

[00:00:07] Speaker 03:
We appreciate her coming in to help out with us, she said, today and yesterday as well.

[00:00:14] Speaker 03:
We have three cases for argument today.

[00:00:16] Speaker 03:
The first case is in-depth USA versus Park Assist, number 24-1023.

[00:00:24] Speaker 03:
Mr. Storm, when you're ready.

[00:00:27] Speaker 02:
Good morning and may it please the Court.

[00:00:29] Speaker 02:
I'd like to focus on four issues this morning.

[00:00:32] Speaker 02:
One is our request for a new trial with respect to our Lanham Act claim on the basis that the Court excluded evidence at trial after finding the same evidence presented to tribal issue of fact on summary judgment.

[00:00:45] Speaker 02:
The issue that the patent is invalid for impossibility and the court's claim construction resolving that impossibility does not comport with claim construction rules and particularly discussion of the cyber settled case, the non-precedential case that the court relied on in reaching its result.

[00:01:01] Speaker 02:
the indefiniteness based on high resolution and the impact of the Kessler Doctrine and the judgments that have been entered that would prevent Clark Assist from continuing to threaten or harass potential index customers with infringement of this patent in view of the rulings that have happened.

[00:01:23] Speaker 04:
Does that last issue only arise in the cross-appeal?

[00:01:27] Speaker 02:
It's basically in the cross-appeal of the issue with respect to subject matter jurisdiction, but it's also related to the Lanham Act claim because we are seeking injunctive relief that they discontinue the actions that we assert were a violation of the Lanham Act.

[00:01:43] Speaker 02:
They have effectively discontinued them since the result, but we would like injunctive relief on that.

[00:01:48] Speaker 02:
So there is some overlap on those issues.

[00:01:51] Speaker 02:
With respect to the Lanham Act claim, our claim is that Park Assist brought and maintained the patent infringement case against San Diego Airport in a way that was in bad faith because it was objectively baseless.

[00:02:07] Speaker 02:
That argument was based on evidence that the San Diego Airport never did some of the things that Park Assist asserts constitutes infringement of the method claim at issue here.

[00:02:21] Speaker 02:
and that absence of infringement was publicly observable.

[00:02:28] Speaker 02:
During the case, our process moved for summary judgment that we could not establish our Lanham Act claim, and the court denied that motion finding

[00:02:37] Speaker 02:
This is Appendix 65 that we have, INDECT has at least created a tribal issue of fact as to whether Park Assist continued pursuit of the airport case was objectively baseless.

[00:02:50] Speaker 02:
And that included a number of witnesses from the airport, people who had installed the airport system.

[00:02:57] Speaker 02:
operated the airport system.

[00:02:58] Speaker 04:
But that's a summary judgment decision.

[00:03:00] Speaker 04:
It's not an evidentiary decision.

[00:03:03] Speaker 04:
The district court has a great deal of discretion under Rule 403 to decide.

[00:03:08] Speaker 04:
How much time to give you for trial?

[00:03:10] Speaker 04:
How many witnesses to allow?

[00:03:12] Speaker 04:
Whether this might confuse the jury?

[00:03:16] Speaker 04:
How can we say it was an abuse of discretion here to make the evidentiary decision that you're challenging?

[00:03:23] Speaker 02:
A couple of reasons.

[00:03:25] Speaker 02:
Number one, it was a time trial.

[00:03:26] Speaker 02:
So Indect was already under a time limitation.

[00:03:30] Speaker 02:
So Indect was prepared to perdone its case.

[00:03:33] Speaker 02:
There was no issue about it.

[00:03:34] Speaker 02:
You didn't ask for more time.

[00:03:36] Speaker 02:
We did not ask for more time.

[00:03:38] Speaker 02:
The decision that the court made to exclude these witnesses came basically the morning trial started.

[00:03:44] Speaker 02:
So we had witnesses lined up, we had deposition testimony designated, et cetera, and we're planning to present that case within the time limits that had already been imposed by the court.

[00:03:55] Speaker 05:
How would those witnesses, though, pertain to whether or not the patent holder was objectively baseless?

[00:04:03] Speaker 05:
I understand how they would pertain to whether or not there was infringement.

[00:04:08] Speaker 05:
But how would it pertain to whether or not they persisted in litigation without a basis?

[00:04:14] Speaker 02:
They pertained to that because after the litigation got started, this information was provided to Park Assist in various forms, letters from counsel, declarations, and so on, and the case persisted.

[00:04:28] Speaker 02:
But maybe more importantly, part of the evidence was that the absence of infringement was observable before the lawsuit was filed.

[00:04:38] Speaker 02:
So it was both that they would know that

[00:04:44] Speaker 02:
There was no infringement before the lawsuit was filed.

[00:04:47] Speaker 02:
After the lawsuit was filed, even if there were some question of good faith at the point of filing, they were given multiple avenues to show that infringement did not occur and precision in the case.

[00:05:00] Speaker 02:
I think it was for two and a half years before that case settled.

[00:05:04] Speaker 02:
Also, the evidence was that after the lawsuit was filed, they quickly used that lawsuit in communications with potential customers.

[00:05:13] Speaker 02:
So this frequently appeared in a situation where Indect and Park Assist were bidding against each other for a new installation.

[00:05:22] Speaker 02:
And Park Assist would say, just be careful, don't do business with Index, because if you do, you may run afoul of this patent.

[00:05:29] Speaker 02:
You know, you might want to think about that.

[00:05:30] Speaker 02:
In case you're curious, we have sued an Index customer.

[00:05:34] Speaker 02:
So they used the existence of that lawsuit.

[00:05:38] Speaker 02:
to bolster their threats to get business in the bidding process.

[00:05:43] Speaker 02:
And we think the combination of showing that the case was meritless from the beginning was pursued meritlessly, but was used in commercial communications to tip the scales in the bidding process is an important factor in determining whether the new trial should be permitted.

[00:06:04] Speaker 04:
You filed a Rule 11 motion in the airport case.

[00:06:07] Speaker 02:
Yes, we did.

[00:06:07] Speaker 04:
And this same judge denied it.

[00:06:09] Speaker 04:
Yes.

[00:06:10] Speaker 04:
Does that have any implications for whether you should be able to prevail on your Lanham Act claim in this case if we were to send it back?

[00:06:17] Speaker 02:
I don't think so.

[00:06:18] Speaker 02:
The judge considered that issue in the summary judgment.

[00:06:20] Speaker 02:
It was argued by park assist there.

[00:06:22] Speaker 02:
And he held that because the standard regarding conduct of counsel and the meritless case were different,

[00:06:29] Speaker 02:
that the denial of the rule of motion did not insulate Park Assist from this claim.

[00:06:36] Speaker 02:
That doesn't mean it couldn't be considered further by the district court if the case is returned.

[00:06:41] Speaker 04:
And in that regard, if we did remand, if we vacate the judgment of No Lanham Act liability and remand as you ask, they ask in one of their briefs that they be permitted to present their evidence that the airport was infringing.

[00:06:58] Speaker 04:
maybe they would want to present.

[00:07:00] Speaker 04:
the rule 11 as well.

[00:07:02] Speaker 04:
Is all that fair game and on the table if there's a remand?

[00:07:05] Speaker 02:
I think it's fair game for the district court.

[00:07:07] Speaker 02:
I don't think that this court needs to rule one way or the other what's admissible on that front.

[00:07:12] Speaker 02:
Obviously part of our Lanham Act claim would be that they acted in bad faith.

[00:07:16] Speaker 02:
That's a subjective standard that we're going to talk about what they knew and what they could have known.

[00:07:21] Speaker 02:
They clearly get to rebut that by saying, well look what we knew was they actually infringed.

[00:07:26] Speaker 02:
So I think a lot of that evidence would come in.

[00:07:29] Speaker 04:
You're not asking us to decide that.

[00:07:31] Speaker 02:
I'm not asking you to decide that.

[00:07:34] Speaker 02:
I'm happy to answer more questions, but I would like to talk about the impossibility issue and the cyber settle decision.

[00:07:40] Speaker 02:
I think that there's really no debate between the parties that the claim as written is impossible.

[00:07:47] Speaker 02:
The debate is whether it's properly construed to resolve that problem.

[00:07:52] Speaker 02:
Step H is a step that follows F and G. Basically the layout of the claim is that there's cameras monitoring spaces.

[00:08:00] Speaker 02:
If a space becomes occupied, status is set to occupied, pictures taken for permit handling, etc.

[00:08:08] Speaker 02:
then an image is reviewed to determine whether that occupation status is correct.

[00:08:14] Speaker 02:
Step H says if it's incorrect, that is, the system has incorrectly identified that a car is in a vacant spot, that error must be corrected.

[00:08:24] Speaker 02:
Step I requires extracting a permit.

[00:08:28] Speaker 02:
Nobody's debating that you cannot do step H and step I at the same time.

[00:08:32] Speaker 02:
One requires a vacant space, one requires an occupied space.

[00:08:35] Speaker 02:
The question is whether the resolution of going from one to the other that the court did is correct or not.

[00:08:42] Speaker 05:
The court... Isn't that resolved by step D, or I'm sorry, sorry, step G that says deciding whether said occupied status is incorrect?

[00:08:52] Speaker 05:
So there's a toggle in step G?

[00:08:55] Speaker 02:
Yes.

[00:08:56] Speaker 02:
Step G says decide whether, but step I, as written, doesn't state that it is contingent on G. Our view is that that's what the court did.

[00:09:07] Speaker 02:
And we did it in a flowchart form on page 42 of the blue brief, where the court essentially said, do G if there's an error, do H if there's not an error, do I.

[00:09:22] Speaker 02:
works as sort of a flowchart, but the claim doesn't say that.

[00:09:26] Speaker 02:
So the claim doesn't say N-I.

[00:09:27] Speaker 03:
Isn't it just a claim construction issue?

[00:09:30] Speaker 02:
It is a claim construction issue.

[00:09:31] Speaker 03:
And if the claim can be reasonably read to do that from the viewpoint of a skilled artisan, and I don't think the level of skill here is particularly high, why isn't it in a proper claim construction?

[00:09:45] Speaker 02:
It's not a proper, you're correct that it should be read reasonably if a person learning a skill would do that.

[00:09:51] Speaker 02:
We're not challenging that.

[00:09:52] Speaker 02:
The problem here is that there's not a claim construction principle that gets us to this result.

[00:09:57] Speaker 02:
The claim itself, the language of the claim doesn't do it.

[00:10:00] Speaker 02:
And if you look at the specification, there's nothing in the specification that links the permit handling steps of IMJ with the review and correction steps of FG&H.

[00:10:10] Speaker 03:
So when you link them in the claim... No, but it links back up earlier where it talks about taking a picture of a vehicle with the license plate under the high-res image, which is what leads to

[00:10:22] Speaker 03:
the preferred parking steps, isn't it?

[00:10:24] Speaker 02:
You do need the high resolution image to do the permit handling.

[00:10:27] Speaker 02:
I don't know.

[00:10:27] Speaker 03:
I just find this argument incredibly overly technical.

[00:10:32] Speaker 03:
If you're looking at this from a skilled artisan standpoint, that people can read this and understand what they were trying to invent and the scope of their invention.

[00:10:41] Speaker 03:
And that's all we're looking at in terms of claim construction and particularly indefiniteness, right?

[00:10:46] Speaker 03:
This is not our typical indefiniteness case where you have something that specifies a way of doing or a way of measuring or some of those things and there are dozens of ways of doing it and it doesn't tell you how to do it and sometimes they end up in different answers.

[00:11:01] Speaker 03:
You know exactly what they meant here.

[00:11:05] Speaker 03:
They just wrote it badly and I'll grant you it is a very badly written claim because they've added on these steps at the end.

[00:11:13] Speaker 03:
without rewording the top part.

[00:11:16] Speaker 03:
But isn't it still a reasonable claim construction to construe it as if it's occupied, you do all these steps and do the preferred parking.

[00:11:25] Speaker 02:
If it's unoccupied, you don't.

[00:11:27] Speaker 02:
I'm hard to argue that that's not reasonable, but I think it didn't follow claim construction principles.

[00:11:33] Speaker 02:
Which one?

[00:11:34] Speaker 02:
It sounds to me like you're relying on a very strict

[00:11:38] Speaker 02:
like limited by the claim language, plain language standard and supported by the specification of the prosecution history.

[00:11:45] Speaker 02:
I'm in my rebuttal time.

[00:11:46] Speaker 02:
I do want to just... Well, let me just ask you one more question.

[00:11:50] Speaker 03:
When you say supported by the specification, are you suggesting that those... You're not suggesting lack of enablement or written description though.

[00:12:00] Speaker 02:
I think there would be a written description.

[00:12:02] Speaker 02:
It's not a lack of enablement, but it would be a written description in the sense that these two processes, the permit handling and the correction review, are not linked in the written description in any way.

[00:12:11] Speaker 04:
But they're both in the written description.

[00:12:14] Speaker 04:
They're both in there.

[00:12:15] Speaker 04:
OK.

[00:12:15] Speaker 04:
I'm sorry to take more of your time, but I'm confused by your answers to my colleague.

[00:12:20] Speaker 04:
Your blue brief says, claim one requires the impossible and thus is invalid for lack of enablement.

[00:12:26] Speaker ?:
Right.

[00:12:27] Speaker 04:
Are we here on a pure claim construction question or something where you have a burden of clear and convincing evidence to show that people of ordinary skill in the art would lack reasonable certainty or would be unable without undue experimentation to practice this patent?

[00:12:44] Speaker 02:
The lack of enablement is the inability

[00:12:47] Speaker 02:
to process both a vacant space and an occupied space at the same time.

[00:12:52] Speaker 04:
The question that Judge Hughes asked was that you have a burden of clearing convincing evidence if you're going to get a judgment from us that these claims are invalid for lack of enablement, right?

[00:13:01] Speaker 02:
I think Judge Hughes is right.

[00:13:03] Speaker 02:
This is a pure claim construction question, namely whether the resolution that the court came up with is the correct claim construction.

[00:13:10] Speaker 04:
Do you have any evidence, and maybe this is what you're trying to tell me you don't, do you have any evidence in the record

[00:13:16] Speaker 04:
that one of ordinary skill would not be able to understand these claims.

[00:13:23] Speaker 02:
The evidence is that one requires a vacant space, one requires ... You don't have any extrinsic evidence.

[00:13:28] Speaker 02:
You don't have an expert who testified to that.

[00:13:29] Speaker 02:
No, we don't have extrinsic evidence.

[00:13:31] Speaker 02:
I did just want to quickly point out we have a regular indefiniteness argument on high resolution as to what is resolution and what is high, and that interacts with one of their arguments where they want to lead low resolution into one of the claim elements.

[00:13:45] Speaker 02:
I'll reserve the rest of my time.

[00:13:53] Speaker 03:
Council, I understand you're splitting time on issues.

[00:13:57] Speaker 03:
You can give it a try, but sometimes that doesn't work if we have questions on the same issue, on different issues.

[00:14:03] Speaker 03:
But tell us what you're prepared to talk about.

[00:14:05] Speaker 00:
Yeah, sure, Your Honor.

[00:14:08] Speaker 00:
First, may it please the Court, my name is Todd Melgar for Park Assist, and thank you for letting us split the time.

[00:14:13] Speaker 00:
I intend to address the response to index appeal and my colleague Mr. Stimson intends to address our cross-appeal issues.

[00:14:24] Speaker 00:
So I would like to take nine minutes of time to address Mr. Storm's arguments and then he will take four for the cross-appeal and save two for his rebuttal if that's okay with the court.

[00:14:37] Speaker 03:
Go ahead.

[00:14:44] Speaker 00:
Your honors, I'd like to start with the Lanham Act issue.

[00:14:48] Speaker 00:
And it's our position that the judge acted well within his discretion in excluding the evidence of the airport infringement.

[00:14:57] Speaker 00:
So INDECT was planning on bringing in a host of witnesses and many documents.

[00:15:03] Speaker 00:
And we had many, many documentary exhibits and witnesses as well.

[00:15:07] Speaker 04:
How does the fact that it's a time trial and they didn't ask for any extra time impact whether this is an abuse of discretion?

[00:15:14] Speaker 00:
Well, I can say that without all of these extra witnesses and documents, I think we essentially used all of our time.

[00:15:21] Speaker 00:
This ended up being a seven-day trial.

[00:15:23] Speaker 04:
That doesn't help you.

[00:15:24] Speaker 04:
That's after the fact.

[00:15:28] Speaker 04:
I mean, I understand lawyers will use all the time you give them.

[00:15:31] Speaker 04:
I don't think that proves anything.

[00:15:33] Speaker 04:
Are the facts here that the judge set an amount of time you all thought you were going

[00:15:38] Speaker 04:
tried, to whatever extent, the airport litigation as part of this case.

[00:15:43] Speaker 04:
And then he took that off the table, but you kept the same amount of time.

[00:15:48] Speaker 00:
Well, in a way.

[00:15:49] Speaker 00:
But we've maintained our position that the airport evidence shouldn't be admissible.

[00:15:54] Speaker 00:
And we maintained that up and through the trial.

[00:15:57] Speaker 00:
And at the first day of trial, the court heard many issues that had remained open, including some claim construction issues and this issue.

[00:16:04] Speaker 00:
And on the day of trial, things had changed significantly since the time of that summary judgment motion.

[00:16:10] Speaker 00:
The court had become much more familiar with the case.

[00:16:13] Speaker 00:
He was the same judge on the airport case.

[00:16:16] Speaker 00:
And he had learned a lot of facts.

[00:16:19] Speaker 05:
But he's not the weight of evidence.

[00:16:22] Speaker 05:
I mean, you have to admit certain evidence in order for the jury to weigh it.

[00:16:26] Speaker 05:
There is no question that to prevail that they would have to establish that the defendant pressed the action for improper malicious purpose.

[00:16:35] Speaker 05:
So how were they supposed to satisfy that burden with just what was admitted on the record?

[00:16:42] Speaker 05:
As I understand it, the trial court allowed letters to be submitted, but no other evidence with respect to the airport litigation.

[00:16:49] Speaker 00:
Yeah, that's correct.

[00:16:50] Speaker 00:
So I'd like to start with the fact that this court held in the Zenith case that litigation itself is clearly not a basis covered by the Lanham Act or a basis for bringing a Lanham Act claim.

[00:17:03] Speaker 00:
The letters can be, and that's what happened in the Zenith case.

[00:17:07] Speaker 00:
And the court on the first day of trial said the letters are admissible and the index can ask questions about them, and that happened.

[00:17:15] Speaker 00:
Aside from that, that the litigation itself cannot be a basis.

[00:17:19] Speaker 04:
They had to show that the litigation was objectively baseless in order to show the bad faith to support their claim.

[00:17:27] Speaker 04:
And the district court recognized all that at summary judgment, but then didn't let them try to prove that the litigation was objectively baseless.

[00:17:35] Speaker 04:
Isn't that what happened?

[00:17:38] Speaker 00:
No, I don't think so.

[00:17:39] Speaker 00:
So the issue is the difference between the litigation and the letters.

[00:17:44] Speaker 00:
The litigation can never be the basis for a Lanham Act claim.

[00:17:47] Speaker 00:
The Lanham Act only covers commercial advertising.

[00:17:50] Speaker 00:
Did they have to show that the litigation was objectively baseless?

[00:17:55] Speaker 00:
No, because the litigation can never be

[00:17:59] Speaker 00:
the basis for a Lanham Act.

[00:18:02] Speaker 04:
Sorry, what is your understanding as to what they failed to prove?

[00:18:06] Speaker 04:
When the jury said they didn't prove bad faith, what is it that they failed to prove?

[00:18:10] Speaker 00:
So for example, commercial activity.

[00:18:12] Speaker 00:
So the Lanham Act is covering commercial advertising and promotions.

[00:18:16] Speaker 00:
So one of the things that they argued primarily is that the letters, that the sending of notice letters to several customers constituted unfair competition.

[00:18:26] Speaker 05:
because the underlying litigation that they were reflecting in the letters was in bad faith.

[00:18:33] Speaker 00:
Well, so there were only about six letters, I think, sent in this case.

[00:18:36] Speaker 00:
Most of them did not say anything about the airport litigation.

[00:18:40] Speaker 00:
There were only two letters that mentioned the airport litigation, and those are at appendix 17426 and 17457.

[00:18:49] Speaker 00:
And those two letters said nothing false.

[00:18:52] Speaker 00:
All they said was that there was a case filed

[00:18:56] Speaker 00:
against the airport and what is more we even put in that letter the airport's defenses to infringement so at that time we had some feedback responses from the airport about what their defenses were and we even included those in the letter.

[00:19:10] Speaker 00:
So it's hard to see what was false.

[00:19:12] Speaker 04:
And it was certainly, certainly if you're... At page 65 in the district court summary judgment opinion, he wrote, the court finds that INDEC has at least created a trialable issue of fact as to whether Park Assist's continued pursuit of the airport case was objectively baseless.

[00:19:30] Speaker 04:
Tribal issue a fact as to whether you're sued, at least the continuation of it, maybe not the filing, was objectively baseless.

[00:19:38] Speaker 04:
Therefore, I am denying your summary judgment and we're going to trial.

[00:19:43] Speaker 04:
That happened, right?

[00:19:44] Speaker 04:
That happened, correct.

[00:19:45] Speaker 04:
And then they say, okay, here's our proof.

[00:19:47] Speaker 04:
Here's all our witnesses and our documents.

[00:19:50] Speaker 04:
We're going to do it within the 16 hours you've allocated to us.

[00:19:54] Speaker 04:
We're going to prove

[00:19:55] Speaker 04:
our side, and you'll have a chance to prove your side, no doubt, as to whether this case was objectively baseless.

[00:20:01] Speaker 04:
But then the judge suddenly says, I'm not going to let you do that.

[00:20:05] Speaker 04:
Isn't that an abuse of discretion?

[00:20:07] Speaker 00:
No, because the judge had additional information.

[00:20:10] Speaker 00:
Again, he was the same judge on the airport case.

[00:20:14] Speaker 04:
Did the additional information

[00:20:18] Speaker 04:
eliminate what he said was a genuine dispute of fact at the time of summary judgment?

[00:20:23] Speaker 00:
Well, so there's a lot of information that came in in this case, and even in this appeal, for example, at page 36 of index brief, where there are statements made that the airport, for example, didn't do acts.

[00:20:35] Speaker 00:
They didn't have license plate recognition.

[00:20:37] Speaker 00:
But there's evidence that they clearly did, including from the airport itself, and an interrogatory response where they said they had it on.

[00:20:48] Speaker 00:
And there are instances like that where the judge was aware of the situation.

[00:20:52] Speaker 00:
He was the judge who handled the Rule 11 motion, and he said it was without merit.

[00:20:58] Speaker 00:
And this would have taken over the entire trial.

[00:21:01] Speaker 00:
In other words, we would not have been able to put on the other issues in the case, essentially, if all of these witnesses had come in on the airport case.

[00:21:14] Speaker 03:
There are a lot of issues here, and we didn't get to this with your

[00:21:17] Speaker 03:
opposing counsel but I'm going to ask him about it so I want you to respond to the on sale bar.

[00:21:22] Speaker 03:
Did the district court, is it fair to read the district court's conclusion as saying an offer for sale of a product can never be used to show that a method was on sale?

[00:21:34] Speaker 00:
No, I think what the district court said was with respect to these claims because a sale can be an offer for sale of a product.

[00:21:44] Speaker 00:
If we read the district court is saying that, that's legally incorrect, right?

[00:21:49] Speaker 00:
I think that's right.

[00:21:50] Speaker 00:
And I think that the court did not exactly say that.

[00:21:53] Speaker 00:
He said with respect to these claims, because these are not product by process claims.

[00:21:58] Speaker 00:
Well, do they have to be product by process claims?

[00:22:01] Speaker 00:
Well, if they are, then an offer to sell the product could be prior art to a product by process.

[00:22:07] Speaker 03:
Yeah, but couldn't a product with a manual that outlines all of the steps in the method claim also show that the method was on sale?

[00:22:16] Speaker 03:
That's what I read the district court is excluding.

[00:22:19] Speaker 03:
And if that's correct, that that's what he did, and I think that's wrong, doesn't it have to go back for a jury trial?

[00:22:28] Speaker 00:
Yeah, I think what the court said... Sorry, I'm trying to...

[00:22:37] Speaker 00:
The court said with respect to these claims.

[00:22:40] Speaker 00:
And so there are three instances where an offer for sale could be prior art to a process.

[00:22:45] Speaker 00:
One is if the offer specifically lists the steps.

[00:22:49] Speaker 00:
So he was saying with respect to these claims, the offer doesn't do that.

[00:22:53] Speaker 00:
And I think he even made a ruling in that context that the offer does not describe the steps.

[00:23:00] Speaker 00:
The other way is if the product

[00:23:03] Speaker 03:
discloses the steps, and it's understood that it's part of the offer, then why isn't that invalidating?

[00:23:10] Speaker 00:
Right, so that's number two.

[00:23:12] Speaker 00:
That's if the product inherently practices the steps, and in this case, the product is not.

[00:23:18] Speaker 03:
It seemed to me that there was essentially agreement in the record that the product did show these steps of this method.

[00:23:28] Speaker 00:
No.

[00:23:29] Speaker 00:
In fact, at the time there really was no product.

[00:23:31] Speaker 00:
It was just in development.

[00:23:33] Speaker 00:
But, but also the product, even out of... Let me ask you this.

[00:23:36] Speaker 03:
Did the district court say that...

[00:23:41] Speaker 03:
The product sold here doesn't disclose any of the steps of the method.

[00:23:46] Speaker 03:
It's just a product.

[00:23:47] Speaker 03:
And therefore, as a matter of law, it can't be invalidating.

[00:23:52] Speaker 03:
Or did the district court say a product, an offer to sell a product, can't be an invalidating sale for a method claim?

[00:24:02] Speaker 03:
The former sounds like potentially correct.

[00:24:05] Speaker 03:
The latter sounds incorrect.

[00:24:07] Speaker 03:
And I read the district court is saying the latter.

[00:24:10] Speaker 00:
I think it was the former.

[00:24:12] Speaker 00:
On appendix page 53 of the order, the judge said, Park assist also contends that the process claims, like those at issue in the 956 patent, cannot be the subject of an offer for sale.

[00:24:28] Speaker 00:
And then he followed that with the court agrees with park assist with respect to this.

[00:24:32] Speaker 03:
I'm sorry.

[00:24:33] Speaker 03:
That sounds exactly like the first one, not the second or the second one, not the first one.

[00:24:37] Speaker 03:
I'm getting my things mixed up.

[00:24:39] Speaker 03:
That sounds like it sounds like the wrong one.

[00:24:43] Speaker 03:
It sounds like you argued to him that a product can't be offered to sell a product can't be invalidating for a method claim.

[00:24:53] Speaker 00:
No, it's that.

[00:24:55] Speaker 00:
It can't be invalidating for this type of method claim.

[00:24:58] Speaker 00:
This method claim.

[00:24:59] Speaker 03:
What's distinct about this method claim from other method claims?

[00:25:02] Speaker 00:
Because it's not a method of producing this product.

[00:25:04] Speaker 03:
OK, that's wrong.

[00:25:06] Speaker 03:
If I disagree with you on that and I do, then what's your next answer?

[00:25:12] Speaker 03:
Also the other the district court.

[00:25:14] Speaker 03:
Here's where I'm struggling.

[00:25:16] Speaker 03:
The district court did not find that the offer for the sale of the product here couldn't possibly be invalidating because it didn't show all the method steps here.

[00:25:27] Speaker 03:
He found as a matter of law that it can't be invalidating because of

[00:25:31] Speaker 03:
offer to sell a product can't be an offer to sell a method.

[00:25:36] Speaker 03:
If that's wrong, then it has to go back, doesn't it?

[00:25:39] Speaker 03:
And then you can try to show that the offer to sell this product doesn't actually show all the steps of your method.

[00:25:46] Speaker 03:
But the jury didn't get that, and he didn't get there.

[00:25:49] Speaker 03:
He cut it off too early.

[00:25:55] Speaker 00:
I don't think the offer to sell the product can disclose the steps.

[00:26:01] Speaker 00:
OK, we got that.

[00:26:02] Speaker 03:
If that's your position, we don't need to talk to them anymore.

[00:26:04] Speaker 04:
That's one more.

[00:26:05] Speaker 04:
Yeah, yeah.

[00:26:05] Speaker 04:
On the indefiniteness, the so-called impossibility argument that they make, do you see that as, is that a claim construction argument?

[00:26:13] Speaker 04:
Is that a clear and convincing evidence argument?

[00:26:15] Speaker 04:
Or how am I supposed to analyze that?

[00:26:18] Speaker 00:
Yeah, so that was an enablement issue below, and it was appealed as an enablement issue.

[00:26:25] Speaker 00:
So I think it's a clear and convincing evidence standard.

[00:26:29] Speaker 05:
Isn't it both enablement and indefiniteness in the brief?

[00:26:32] Speaker 00:
They did write that in their heading, but that was not the argument below.

[00:26:36] Speaker 00:
There was no indefiniteness argument, and there was also no indefiniteness argument that I saw even within the appeal brief.

[00:26:42] Speaker 04:
Why isn't it just a claim construction question?

[00:26:46] Speaker 04:
Is it because they didn't preserve it, or is it because that would be legally wrong for us to look at it that way?

[00:26:52] Speaker 00:
Well, yeah, they never actually asked for a construction of steps I and J below in the way that they're seeking them now.

[00:26:58] Speaker 00:
The only issue below was whether step H was optional.

[00:27:03] Speaker 00:
So this issue of claim construction on I and J had not been addressed below at all.

[00:27:08] Speaker 00:
And only this enablement argument had been raised.

[00:27:10] Speaker 00:
And that's what was appealed.

[00:27:12] Speaker 05:
But there is no dispute that no individual user can execute or reach the limitations, every limitation in claim one.

[00:27:21] Speaker 05:
You can't do all of them because if you have a vacant space, you don't get to the latter steps.

[00:27:29] Speaker 05:
If you have an occupied space, you have to skip a step.

[00:27:32] Speaker 05:
Isn't that right?

[00:27:33] Speaker 00:
Yes, that's right.

[00:27:34] Speaker 05:
And there's no, there's no disjunctive in the claim limitation.

[00:27:38] Speaker 05:
So it's not, and if this happens, you do this.

[00:27:42] Speaker 05:
If this happens, you do that.

[00:27:44] Speaker 05:
Would you agree with that?

[00:27:45] Speaker 00:
Well, there isn't step H, and there is also some language in step D where you obtain the high resolution, which is based on... Right, but it doesn't say if space is occupied, you obtain the high resolution.

[00:27:57] Speaker 05:
Would you agree with that?

[00:27:59] Speaker 00:
Yeah, that's step D, I think.

[00:28:02] Speaker 00:
If the space is occupied.

[00:28:03] Speaker 05:
Well, step D is a fork in the road.

[00:28:05] Speaker 05:
It's a weather question.

[00:28:08] Speaker 05:
Correct?

[00:28:09] Speaker 00:
It's an obtain as a result of the space having an occupied status, a high resolution image.

[00:28:17] Speaker 00:
So you don't get a high resolution image unless there's a car there.

[00:28:21] Speaker 05:
All right.

[00:28:25] Speaker 05:
So you don't get a high resolution image, but you do get a thumbnail that is incorrectly marked.

[00:28:34] Speaker 05:
What I'm struggling with is it seems to me like the district court rewrote the claim for you all.

[00:28:40] Speaker 00:
No, I mean, I think it's implicit in the claim language that you are not, and everybody agrees, including index counsel, said that you're not going to extract a permit identifier from a vacant space.

[00:28:55] Speaker 00:
And step D, provide some support for that, as well as the patent specification at column three, lines one through 36.

[00:29:07] Speaker 00:
where it deals with the correction and you don't proceed past the correction step.

[00:29:15] Speaker 05:
But the specification doesn't delineate this work in the road and the choice between the two concepts?

[00:29:22] Speaker 00:
No, it just keeps them separate.

[00:29:23] Speaker 00:
They're separate.

[00:29:24] Speaker 00:
There's never any discussion of trying to do them together.

[00:29:28] Speaker 00:
They're separate processes.

[00:29:30] Speaker 00:
So they're like the Avlera case, for example, where the court construed the claim as implicitly allowing only one pass through the steps A and B, and you didn't have to repeat them.

[00:29:46] Speaker 00:
Or the other cases we cited, like Interdigital and Schulhauser and Highterra, where the court said you can have this fork in the road and go either way.

[00:29:56] Speaker 04:
Weren't these last two steps added as an amendment in order to get the claims?

[00:30:03] Speaker 04:
And the district court's view of the claims seems to mean they don't have much weight or any meaning, which seems inconsistent with the prosecution history.

[00:30:12] Speaker 00:
I believe that they were added by amendment.

[00:30:16] Speaker 00:
I think you're correct.

[00:30:16] Speaker 00:
I do not know the answer to the last part of your question there about what the district court stated.

[00:30:22] Speaker 04:
Do you think it should impact how we view the claims?

[00:30:26] Speaker 04:
It seems like your argument is, well, you can just kind of ignore what we all kind of agree is sort of problematic language.

[00:30:36] Speaker 04:
But yet it may be that problematic language that actually got you the claims.

[00:30:42] Speaker 00:
No, I mean I think from the perspective of prosecution those elements are there and they need to be shown and practiced if that's your question.

[00:30:54] Speaker 00:
But this is sort of the construction I think that index seeking is sort of like the Lincoln case where there was a claim element that said pay out money even if there is no cash left in the account.

[00:31:06] Speaker 03:
Okay, Mr. Melgaard, this is why I don't like explaining argument.

[00:31:09] Speaker 03:
You've not only exhausted all of your time, you've exhausted all of your co-counsel's time and his rebuttal time, but Mr. Stimson, I'll give you two minutes, and you can have one minute for rebuttal if you want.

[00:31:21] Speaker 00:
Thank you, Your Honor.

[00:31:22] Speaker 00:
Thanks, Your Honor.

[00:31:27] Speaker 01:
Thank you.

[00:31:28] Speaker 01:
My name is Scott Stimson.

[00:31:29] Speaker 01:
I'm with Sills, Cummings, and Gross in New York City.

[00:31:31] Speaker 01:
You may please the court.

[00:31:33] Speaker 01:
With my two minutes, of course, I'm addressing the cross-appeal issues.

[00:31:36] Speaker 01:
So I'd like to address the customer issue, if I may please.

[00:31:40] Speaker 01:
There are three things the district court did wrong.

[00:31:43] Speaker 01:
The first two are the most important, standing and jurisdiction.

[00:31:47] Speaker 01:
In order to have standing, to bring this third clause.

[00:31:50] Speaker 03:
Didn't you ask for declaratory judgment against their customers?

[00:31:53] Speaker 01:
Yes, your honor, but that was after it was a bit of a tricky position.

[00:31:57] Speaker 01:
I don't think I was involved back then, but the district, you know, saying you weren't involved.

[00:32:02] Speaker 03:
It's not ever a good answer.

[00:32:06] Speaker 01:
I know.

[00:32:06] Speaker 01:
I know what happened.

[00:32:07] Speaker 01:
Your honor.

[00:32:08] Speaker 01:
We moved to dismiss the district court judge said, no, these future claims are still in the case.

[00:32:13] Speaker 01:
And so then what we're doing is we're facing a situation where, OK, we don't really think that standing in jurisdiction is correct.

[00:32:20] Speaker 01:
But we've got a federal judge who's now told us that there is standing in jurisdiction.

[00:32:25] Speaker 01:
So if we don't bring those claims, then we risk waiving them because they're compulsory counterclaims.

[00:32:31] Speaker 01:
So we're in a bit of a pickle.

[00:32:33] Speaker 01:
And the only way to resolve that is to bring them.

[00:32:35] Speaker 01:
Standing in jurisdiction for its index third claim is absolutely wrong.

[00:32:42] Speaker 01:
I'm getting my rebuttal time already.

[00:32:45] Speaker 01:
But standing in that has to have a legal risk to bring those claims.

[00:32:51] Speaker 01:
It had no indemnification.

[00:32:53] Speaker 01:
They didn't show any indemnification.

[00:32:55] Speaker 01:
And so they have no legal risk with regard to that claim.

[00:32:58] Speaker 01:
And secondly, on jurisdiction, if you look at those letters we sent,

[00:33:02] Speaker 01:
Every one of them, except for one, Indect hadn't even purchased a system yet.

[00:33:09] Speaker 01:
So we had no quarrel with those customers.

[00:33:12] Speaker 01:
There wasn't the real and immediate threat that's needed for the customer case.

[00:33:15] Speaker 01:
I'm gone.

[00:33:16] Speaker 01:
I'm already over.

[00:33:16] Speaker 01:
I have to leave.

[00:33:17] Speaker 03:
That's OK.

[00:33:17] Speaker 03:
We have your argument.

[00:33:18] Speaker 03:
Thank you.

[00:33:20] Speaker 03:
If he addresses the cross-appeal, I'll give you a full minute back.

[00:33:23] Speaker 03:
Thank you.

[00:33:26] Speaker 02:
Yeah, I would just briefly like to address a cross-appeal.

[00:33:30] Speaker 02:
We have judgment.

[00:33:31] Speaker 03:
Why don't you address the on-sale bar?

[00:33:33] Speaker 02:
The on-sale bar.

[00:33:35] Speaker 02:
On-sale bar.

[00:33:36] Speaker 02:
I think you've got it right.

[00:33:37] Speaker 02:
I think the judge excluded proof of the on-sale bar from the Arone's legal position that the sale of a product can never be prior art to a method claim.

[00:33:48] Speaker 02:
And I think that's wrong.

[00:33:50] Speaker 03:
And is that the way you read it?

[00:33:51] Speaker 03:
Because it's the way I read it, but if he had read it the other way and said, this offer for sale of the product,

[00:34:00] Speaker 03:
Even though the product itself may practice this method, the offer for sale, including the product itself, doesn't show the steps.

[00:34:10] Speaker 03:
That it may be used for those steps, that would be a different story, right?

[00:34:13] Speaker 03:
Your argument, though, is that it's clear from the offer for selling this product, is there a manual or something like this, that those show all the methods.

[00:34:22] Speaker 02:
Yeah, the particular document we're talking about is like 50 pages long.

[00:34:25] Speaker 02:
It's got a ton of information about how to use the equipment in the method.

[00:34:28] Speaker 03:
OK.

[00:34:29] Speaker 02:
Yeah.

[00:34:29] Speaker 03:
And your view is that that discloses all the steps of this method?

[00:34:33] Speaker 02:
As considered by the court, yes.

[00:34:35] Speaker 02:
And I do think that the question earlier on this impossibility issue was it's claim construction or clean and convincing.

[00:34:41] Speaker 02:
I think it's pure claim construction, because it's either impossible or it's resolved.

[00:34:45] Speaker 02:
And the court resolved it, and that's the question there.

[00:34:49] Speaker 02:
With respect to the subject matter jurisdiction,

[00:34:52] Speaker 02:
Our claim three is not the only issue.

[00:34:54] Speaker 02:
We went to summary judgment on their claim against Indect that Indect induced its customers to infringe.

[00:35:02] Speaker 02:
That claim by Park Assist was not limited to customers that have received letters from Park Assist or otherwise.

[00:35:09] Speaker 02:
And we move for summary judgment that they didn't have evidence that any customer directly infringed, therefore their claim that Indect induced infringement failed.

[00:35:20] Speaker 02:
and they did not respond with any evidence of direct infringement by any customer.

[00:35:25] Speaker 02:
When we got judgment on that, that case was over, basically.

[00:35:30] Speaker 02:
Their claim that we induced customers' infringement was resolved by judgment, summary judgment.

[00:35:36] Speaker 02:
And that's where the Kestler Doctrine comes in.

[00:35:38] Speaker 02:
Kestler says once you've got judgment that this hasn't happened, they can't do it again just because patent infringement is a continuing, can be a continuing.

[00:35:48] Speaker 04:
I'm not sure that I follow that.

[00:35:49] Speaker 04:
If the judgment was they had no evidence that any particular customer was actually following every step of the method,

[00:35:59] Speaker 04:
That's not the same thing I don't think as a finding that your product does not itself infringe and can never be used in an infringing manner.

[00:36:07] Speaker 04:
And I would have thought the latter is what you need for the Kessler doctrine to apply.

[00:36:13] Speaker 02:
I think there's some nuance there.

[00:36:15] Speaker 02:
Basically, I think they had a full opportunity to investigate both the operation of our system and its use by customers.

[00:36:22] Speaker 02:
And I think what Kester would say is if they want to bring a claim now, they have to show a difference between what was that issue in this case and what they would bring the claim about in the future.

[00:36:32] Speaker 04:
Is there a finding in our record that your accused product does not infringe and cannot infringe?

[00:36:40] Speaker 02:
There is not that finding.

[00:36:42] Speaker 04:
But you contend you don't need that for Kessler?

[00:36:44] Speaker 02:
I contend we don't need it because it's a hypothetical that's essentially impossible to get to when you have a method claim and you say somebody can change the method.

[00:36:54] Speaker 02:
Well, if they change the method, well, then Kessler doesn't provide protection.

[00:36:58] Speaker 04:
How about indemnification?

[00:36:59] Speaker 04:
Where's the evidence that you actually had to indemnify your client customers?

[00:37:03] Speaker 02:
Steven Evans, our corporate representative, testified that we had indemnification with San Diego Airport, Atlanta Airport, and so on.

[00:37:12] Speaker 02:
Correct to say that there's not evidence in the record of an indemnification duty for every customer, but it is incorrect to say that there's no evidence of an indemnification duty.

[00:37:22] Speaker 04:
But the only evidence of a duty is the oral statement about one customer.

[00:37:27] Speaker 02:
No, it was at least two, and I believe the oral statement went further and said, and some others, and I don't recall the names of the others after those two.

[00:37:36] Speaker 02:
But I think more importantly is we were subject to a claim of inducement against all customers.

[00:37:43] Speaker 02:
I'm probably out of time, but if you have any more questions, happy to address them.

[00:37:47] Speaker 03:
Thank you.

[00:37:56] Speaker 01:
With my one minute, there is no evidence in this room on indemnification.

[00:38:00] Speaker 01:
If you read what index submitted on indemnification, there's nothing there.

[00:38:06] Speaker 01:
Mr. Neff testified that there's something about indemnification.

[00:38:09] Speaker 01:
It wasn't attached to any specific customer, let alone all these customers.

[00:38:14] Speaker 01:
There's absolutely nothing there.

[00:38:15] Speaker 01:
And indemnification should be in writing, of course, assuming there's statute of frauds, and it just wasn't there.

[00:38:21] Speaker 01:
On the Kessler doctrine, Kessler attaches to an exonerated product.

[00:38:28] Speaker 01:
Mr. Storm just admitted, there's no evidence in this record that that index system has been exonerated in any way.

[00:38:35] Speaker 01:
There's a basic system, but it's got lots of bits and pieces that you can buy that are optional.

[00:38:41] Speaker 01:
And so Kessler has absolutely no applicability here.

[00:38:45] Speaker 01:
Is there further questions?

[00:38:46] Speaker 01:
Otherwise, thank you.

[00:38:48] Speaker 03:
Thank you.

[00:38:49] Speaker 03:
The case is submitted.