[00:00:00] Speaker 04:
Mr. Bolling.

[00:00:04] Speaker 04:
Good afternoon, Your Honors. May it please the Court? Aaron Bolling on behalf of Appellant Nike.

[00:00:09] Speaker 04:
The Board committed two fundamental errors in this case.

[00:00:14] Speaker 04:
both of which require remand. First, the board erred when it construed the claim term record in a vacuum, a divorce from a specification that includes hundreds of references to recording devices that capture and measure athletic activity.

[00:00:32] Speaker 04:
Had the board properly considered that context, it would not have arrived at a construction in which record simply means safe.

[00:00:41] Speaker 00:
Did the board interpret record as being save or did it interpret it as meaning that it could be save or could be both save and measure?

[00:00:52] Speaker 04:
by the board interpreted to mean strictly saving data for storing data over the same result that they interpreted to include recording as well as measuring and if it includes saving if it included measuring it would be a much different result your honor because none of the prior art teaches a recording device that measures and captures athletic activity.

[00:01:19] Speaker 01:
I'm sorry, I didn't make my question clear. If they interpret a record to include both, say, and or measure, right, that wouldn't change the result.

[00:01:34] Speaker 01:
In other words, if we said the board made a mistake by saying that work for it only means save, we could still affirm if we said it means and or save, right?

[00:01:48] Speaker 04:
That's right, Your Honor. Our position is that record must include an act of measuring or capturing. So if there was a construction that it could be save or measure and capture, our position would be that that's incorrect because it's inconsistent with the specification. But to Your Honor's question, the result would likely be the same because one of those two things was satisfied by the prior art, the storing piece.

[00:02:14] Speaker 01:
Whose phone is ringing, please?

[00:02:21] Speaker 04:
So, as I mentioned, Your Honor, we think that construction would be incorrect because the specification over and over describes devices that measure or capture athletic activity. The claims indicate that that's required as well.

[00:02:40] Speaker 01:
recording is distinguished from measuring. It talks about recording and measuring.

[00:02:46] Speaker 04:
We disagree respectfully, Your Honor. We think the examples that the Board has latched onto do not show an expressed distinction at all. We think those examples are consistent with our construction. If I can direct, Your Honor, to a few of those

[00:03:04] Speaker 00:
Do you agree, though, that the plain and ordinary meaning of the cord could include simply saving a memory?

[00:03:13] Speaker 04:
Yes, Your Honor. In some circumstances, that is an ordinary meaning. Under Phillips, we think that we need to select the ordinary meaning that best fits with the specification, and we think over the hundreds of pages, that means it has to include capturing or measuring. But there seems to be no dispute that In some instances, not in this patent, the ordinary meaning of record could simply be saving.

[00:03:37] Speaker 00:
So turning to the specification, I didn't mean to just talk to you. Sure.

[00:03:39] Speaker 04:
No, thank you, Your Honor. So Lululemon identifies essentially one instance where there's an express distinction, and that is this automatic detection embodiment that we identify. And the board latched onto this as well.

[00:03:59] Speaker 04:
And what the board pointed to was a single sentence fragment in which it says that the GPS device is always on, but recording is turned off and on. And if we look at the entire context of that embodiment... This is column 20? Yes. So if we look, for example, Your Honor, it's column 19. It begins at line 61, and it goes into column 20. So what this embodiment does... is you can imagine if you're exercising in different environments, you may want an accelerometer to measure your athletic activity or a GPS device.

[00:04:38] Speaker 04:
And the example in the spec says if you're indoors, for example, and I'm reading starting at line 61 here, if an individual is running on a treadmill, GPS device 713 would likely be unable to detect or provide significant exercise data since the individual generally remains stationary in a GPS satellite device. device may be unavailable.

[00:05:02] Speaker 04:
Or on the other hand, starting at line two of column 20, individuals running outdoors, GPS may be preferable. So what the embodiment does here is it has both of those things running. They're both on. but then only one of them is selected to capture and record the athletic activity data. You wouldn't want the device to use GPS if you're indoor to measure your athletic activity data. So the GPS device is always on, but it's not recording athletic activity in the indoor version of that embodiment.

[00:05:37] Speaker 01:
Okay, but there are various references in here. Take column 8, for example, line 48.

[00:05:45] Speaker 01:
And then similarly in column 9, line 5, where the specification refers to measure and record as though those are two distinct things.

[00:05:56] Speaker 04:
Yeah, we've seen those, Your Honor, of course. We don't think that constitutes an express distinction. There's also examples in the specification where it says... You mean disclaimer? No, we don't think that's a distinction between record and measure. the X and Y formulation of two terms doesn't necessarily imply that they're different. And in fact, there's instances in the specification where it says recorded and stored. So if they're correct that the X and Y formulation constitutes the distinction between those two terms, their proposed construction would not make sense either.

[00:06:32] Speaker 02:
Recorded and stored may be redundant. Are you saying measure and record is redundant?

[00:06:37] Speaker 04:
Yes, Your Honor. We think they're used interchangeably throughout the specification.

[00:06:42] Speaker 02:
So record has to include measure, and measure has to include record.

[00:06:47] Speaker 04:
Well, our construction of record is an act of measuring and capturing and then saving. The way it's used in the patent, both of those things happen.

[00:06:54] Speaker 02:
Are you also taking the view, though, that measure requires recording?

[00:07:00] Speaker 02:
Measure would be one component of recording, so it wouldn't necessarily... Sorry, how does your redundancy theory work? Measure and record... They're not two synonyms even on your view, are they?

[00:07:10] Speaker 04:
We think in that instance the specification is using them interchangeably.

[00:07:15] Speaker 00:
So it's referring to... Does measure necessarily include scoring?

[00:07:21] Speaker 04:
No, it does not, Your Honor. We believe that record includes those two separate components.

[00:07:26] Speaker 02:
So measure and record are not interchangeable?

[00:07:27] Speaker 04:
Not interchangeable. as it's used in the claim. But we think those examples of the specification, it's using them interchangeably, saying you could record or measure the same thing.

[00:07:41] Speaker 02:
You say, and you mentioned it again today, that there's places in the specification that are inconsistent with the board's construction. Give me an example. Yes, sure, Your Honor.

[00:07:54] Speaker 04:
If I can direct your attention to...

[00:07:58] Speaker 04:
Column 26, lines 7 through 9.

[00:08:12] Speaker 04:
So here you'll see it says interface 1045 may further display option 1054 for displaying a route that the user run.

[00:08:22] Speaker 04:
if the run was recorded using a GPS device. We think that's clearly an example of it discussing the GPS device, which there's no dispute is a measurement device, capturing device. The run was recorded with a GPS device.

[00:08:39] Speaker 02:
There's another example at... And if it helped me, what's inconsistent? Are you saying under the board's construction that embodiment is not within the scope of the claims, or what's inconsistent about it?

[00:08:50] Speaker 04:
So we think that that's one of the many examples in which the board selected the wrong ordinary meaning. It didn't consider all of these instances where the recording device that's described in the spec is something that captures or measures. If it was just to simply save, that wouldn't make sense because a GPS device doesn't just save data. It's capturing the run data. And that's the entire context of this invention.

[00:09:17] Speaker 00:
Recording using a GPS device. That could be understood to be measuring using the GPS followed by storage and memory, couldn't it?

[00:09:27] Speaker 04:
And we think that would be correct. The recording would require both steps, the measurement and the saving.

[00:09:33] Speaker 00:
But I'm having a hard time understanding how it's inconsistent in the sense that a person of ordinary scale in the art could still read this and think that the recording is simply the step of storing.

[00:09:47] Speaker 04:
We respectfully disagree, Your Honor. The GPS is described repeatedly in this specification as what is used to capture athletic activity. If it's not, then it's unclear how any of this works. the individuals running outside, the running on a treadmill, whatever it might be, the GPS or the step counter, the accelerometer, I don't think there's any dispute that those devices are measuring and capturing the athletic activity.

[00:10:13] Speaker 00:
Do I remember correctly that there is no mention of accelerometers or any other sensors in the claims?

[00:10:19] Speaker 04:
That's correct, Your Honor. In our view, the apparatus is what does the recording, and a skilled artisan who's reading that claim in view of the specification would say, okay, there's a couple ways we can do that. Let's see, in here they describe a GPS device, an accelerometer. So this court's precedent does not require every component of an apparatus claim to be recited in the claims. It clearly recites an apparatus that records athletic activity And then the skilled artisan would know, looking at the specification, these devices, these sensors, that's what's doing the measuring or capturing.

[00:10:58] Speaker 04:
And if I may, Your Honors, we think that beginning portion of the claim is really important.

[00:11:04] Speaker 04:
When it says the apparatus records athletic activity performed by the user, it's recording the activity. It's not just saving data. It's capturing the activity. And that claim language we think is really powerful. That wouldn't make sense if it was just storing. You can't save activity.

[00:11:22] Speaker 00:
You could if the user inputted it.

[00:11:25] Speaker 04:
Right, and that's expressly distinguished in the specification that this is not a manual input. This is a device that records that. It makes that process easier and therefore motivates users to exercise more.

[00:11:40] Speaker 02:
Just briefly, there's a motivation to combine issue, I think, as well. Yes, Your Honor. I couldn't find where prior to the oral hearing you challenged Lululemon's showing with respect to motivation to combine Sutton and plus three. Sure, Your Honor. Can you show me where you challenge motivation to do that combination?

[00:12:00] Speaker 04:
Absolutely. In our preliminary response, which is at Appendix 953 through 54, we said, quote, Lululemon offers no support for its claim that a skilled artisan would have been motivated to modify Sutton.

[00:12:15] Speaker 02:
Yeah, but what about combine it with plus three?

[00:12:20] Speaker 04:
That was in response to that section.

[00:12:24] Speaker 04:
And in our patent owner response at 1033 to 34, we similarly say Lululemon also has the burden to show that there would be some motivation to combine the prior art. Again, that's in the section discussing Sutton.

[00:12:38] Speaker 00:
That's just the legal section, right? That 1033 to 1034 is just your statement of the law and what obviousness requires.

[00:12:47] Speaker 04:
Yes. Yeah, that's right, Your Honor.

[00:12:48] Speaker 00:
But how does that relate more specifically to Claim 14?

[00:12:53] Speaker 04:
Well, we directly address this in oral argument as well, specifically on Claim 14. We took the position in our briefing that they had failed generally to show a motivation to combine. And then in oral argument, Claim 14 specifically came up. We articulated it more specifically with respect to that.

[00:13:10] Speaker 00:
Do you think that the Board...

[00:13:14] Speaker 00:
thought that your presentation of this issue for the first time at oral argument was sufficient to avoid waiver we didn't see any indication in their order to the contrary saying that we had waived it so we believe it was sufficient based on their order where did the did the board specifically address your argument in its decision

[00:13:36] Speaker 04:
No, but it did not say we had waived a motivation to combine argument is what I meant.

[00:13:40] Speaker 00:
Is it fair to think maybe from the fact that they didn't address it specifically that they didn't realize you had made it?

[00:13:47] Speaker 04:
Because you didn't make it to oral argument?

[00:13:51] Speaker 04:
They could have. I think there's a lot of issues that they didn't address in their order that we didn't waive as well, so I guess it's difficult to read into that. But we think the way it was raised in the earlier briefing and at oral argument was sufficient to preserve that argument.

[00:14:06] Speaker 04:
I'll reserve the rest of my time.

[00:14:07] Speaker 01:
We'll give you two minutes for a while, but before you sit down, the word misrepresentation appears in your briefs, particularly in the reply brief repeatedly, accusing the other side of misrepresentation. You shouldn't be using language like that in the briefs.

[00:14:23] Speaker 04:
Okay. Understood, Your Honor. Thank you.

[00:14:25] Speaker 01:
Mr. Mitsui? Thank you.

[00:14:38] Speaker 03:
Thank you, Your Honor. May it please the Court, Brian Matsui on behalf of Lululemon. I'd like to start with the claim construction issue on the meaning of record and then briefly discuss Claim 14, where Nike raises a motivation to combine issue that they didn't preserve. The board correctly rejected Nike's narrow construction of record to require measuring or capturing and then saving. And there's three reasons that I'd like to discuss as to why that's wrong. The first is that the ordinary meaning, an ordinary meaning of record does not require measuring or capturing.

[00:15:15] Speaker 03:
The second is that Nike's construction would require this court to ignore places where the specification distinguishes between measuring and capturing. And third, just as a matter of claim construction principles, Nike's asking the court to import all these limitations and requirements from the specifications into the claim based upon the single word, record, which this court consistently directs.

[00:15:42] Speaker 00:
I want to talk about that first thing you said on the meaning of record.

[00:15:46] Speaker 00:
that the plain and ordinary meaning does not necessarily include measuring, right? I think that's what you were saying.

[00:15:53] Speaker 03:
That is correct, Your Honor.

[00:15:54] Speaker 00:
Are you saying that it doesn't include measuring, or are you saying that that's one of the possible meanings, the plain and ordinary meanings of the word recording?

[00:16:05] Speaker 03:
I think that record is best – I don't think it includes measuring. I think that record is best understood as a plain and ordinary meaning, as not including or not requiring measuring or capturing. And the reason why is because record –

[00:16:25] Speaker 00:
that the plan in ordinary meaning could be measure and record, or it could be record. So I just want to make sure we're being honest.

[00:16:33] Speaker 03:
Our position was that the ordinary meaning of record was save, and so that's the consistent position that we've maintained throughout these proceedings. The board said that the ordinary meaning of record Record here is saved. Even if there is more than one ordinary meaning of record, there are many reasons why this patent wouldn't require the more narrow construction, as Nike said. But just to sort of show why the ordinary meaning of record does not, require, measure, or capture.

[00:17:09] Speaker 03:
It's just because record is basically to make a record of something. It's to document something. And so what might be, there might be a record of, or what might be documented might dictate how that information is obtained. So if something is recorded, like GPS data, then the fact that it's GPS data might indicate that there was measuring or capturing. If it's like recording thoughts, then that might indicate that there's thinking that goes in advance. But the word record in isolation doesn't mean that you are going to incorporate in or draw in everything that makes that creation of the actual information that's being recorded.

[00:17:52] Speaker 03:
I'd like to just Regardless of that, though, just to turn to the specification itself, I think, Judge Dyck, as you pointed, at column 8 and column 9, there's an express sort of distinction between measure and record. And I think that that right there just shows that these are distinct concepts. and that they're not overlapping here in the patent. Because at column 8 at line 44, it says, with various implementations of the invention, one or more different athletic information monitoring devices may be used to measure and record athletic data corresponding to athletic activity performed by the person and convert that information into a form of currency.

[00:18:37] Speaker 03:
And so you're trying to get that information. And so the reason why you have measure and capture is because in that sentence right there, it's making clear that you have to measure it in addition to saving it, in addition to recording it. And the same distinction is made at column 9 at line 5 when it says measure and record in similar terms. I'll note that Nike has pointed out right now to column 26 as an example of where it will record as inconsistent with the board's construction.

[00:19:18] Speaker 03:
I don't believe that that's the case. When you look at the language that was pointed to at line 7, it says, may further display options for displaying a route that the user...

[00:19:34] Speaker 03:
if the run was recorded using a GPS device. Recorded right there is entirely consistent with that being saved. It's just the fact that it was a GPS device which indicates that you have GPS data. And when you look at the claim, which was pointed to here, It's referring to, at claim 11, record athletic activity performed by the user. And so the athletic activity performed by the user is telling you what is being recorded. But there's nothing there saying how that information has to be reported, whether you need to have GPS, an accelerometer, or just have some sort of manual entry.

[00:20:12] Speaker 03:
In fact, we know from the patent itself that it treats recorded as something that can include manual entry. For example, at column 1, line 29, the patent talks about, quote, the effort that may be required in recording and tracking workout results. For example, an individual may be required to manually enter workout information. That right there is showing that Record can also encompass the manual information. There's nothing in here that would require record to be measure or capture.

[00:20:47] Speaker 02:
There's some references, I think, to save and store, and we heard some reference to it today.

[00:20:55] Speaker 02:
Is that a redundancy, and is it a problem for your position if sometimes the patent does use A and B when A and B are redundant?

[00:21:04] Speaker 03:
Well, two answers to that, Judge Stork. No, I don't think that that is a problem, because I think that in certain contexts, store is different than save. Store might be where you are putting the data. You might be storing that in a hard drive long term. Save might be saving something in the first interest instance. Record, however, I think is best understood in the context of this patent of making a record of something, documenting something. And so that seems more like a first instance type of thing. But to take a step back here, there's a lot of different words that are being used, like save, store, record, measure.

[00:21:43] Speaker 03:
But it's just unreasonable to think that at best what Nike has shown is there might be some ambiguity here in this patent.

[00:21:50] Speaker 03:
Now they're trying to impose some sort of hyper-technical precision that record now has to mean measure or capture and then save to sweep in all these different types of devices like GPS, accelerometer, and exclude data just being transmitted to the mobile device, which might then be recorded automatically. and then transferred on the Internet into social networks. I mean, that's what these claims are directed to, sharing information on the Internet. And it's not talking about the process of actually recording data here and trying to measure things from GPS or measure action from accelerometers.

[00:22:32] Speaker 03:
And there is no place... that they have pointed to where an embodiment would be excluded with respect to the board's construction. In fact, the patent itself is broad.

[00:22:45] Speaker 00:
Is that your view because it's a comprising claim?

[00:22:50] Speaker 00:
Is that what your basis is for saying that?

[00:22:52] Speaker 03:
I mean, yes, it is. It's a comprising claim. And also the patent itself talks about at column...

[00:23:02] Speaker 03:
around line 34, it talks about the device having separation between the mobile device and potentially the devices like GPS devices that might be actually measuring and capturing data.

[00:23:19] Speaker 00:
So at line 41... Do they disclose any embodiment in the preferred embodiment, not in the background section of the patent, but in the detailed description of the patent? Do they refer to any embodiment in which a user is just inputting their athletic performance data?

[00:23:39] Speaker 03:
No, they don't, but they also don't disclose all of the audience where the actual measuring or capturing is done by the device that's doing the recording. And if we look at line, column 15, line 41, for example, it says, for example, some implementations of the invention may employ a music player, mobile telephone, watch, or personal digital assistant. that incorporate accelerometers, a satellite positioning device.

[00:24:10] Speaker 03:
So right there it's showing that it's some implementations that might have these measuring and capturing devices that are part of the mobile device, but it's not requiring all implementations to do that. And so in that situation, the mobile device itself would not be doing record under... But it says that incorporate accelerometers, right?

[00:24:33] Speaker 00:
So if it incorporates accelerometers, right, then it would be measuring, right?

[00:24:40] Speaker 03:
Certainly, and that's a comprising claim in that situation. I think that it would be measuring, but that doesn't mean that the word record would necessarily encompass that because it would mean that those other implementations where it didn't include things like accelerometers, GPS, anything else that might measure or capture would not actually fall within the scope of the word and the claim here. So I think that that's one of the problems that they have here.

[00:25:08] Speaker 02:
I want to just make sure I'm following you because there's various negatives in the prior statement.

[00:25:16] Speaker 02:
If one had a device that recorded but the same device also measured the athletic activity, nothing about your constructions takes that device necessarily outside the scope of the claims, right?

[00:25:30] Speaker 03:
No, because it's a comprising claim. And so under our construction, it would record. It just would be something else in the device that would be measuring or capturing.

[00:25:42] Speaker 03:
I'm sorry.

[00:25:43] Speaker 02:
Maybe I misheard the question. If the same thing in the device was both measuring and recording... It's still within the scope. That doesn't take it outside the claim.

[00:25:53] Speaker 03:
No, that would not take it outside the claim.

[00:25:57] Speaker 03:
Just to briefly turn to claim 14, unless the court has any other questions about record. This was a waived, if not forfeited, argument. At the reply brief at pages 20 to 21, they set forth in block votes the three places where they say they preserved it. The first was in the preliminary response under the court's invasive decision. You can't just raise an issue in the preliminary response. It has to be in the patent owner response.

[00:26:26] Speaker 03:
In the patent owner response, it's just in a legal standard section under a heading of what the legal standards are, and they don't make any detailed arguments as to motivation to combine. And then at the oral hearing, that's the first time they raise it, but this court has rejected the argument that you can preserve an issue by raising it the first time at the oral hearing.

[00:26:49] Speaker 00:
So this is an argument that they... Ordinarily, this would be a scenario where we would review... for an abuse of discretion, whatever it is, the board held.

[00:26:59] Speaker 03:
So what do you think the board held here? I think the board did not understand them to be making this argument realistically. And first of all, in the preliminary response, they weren't even challenging Claim 14 motivation to combine. So if that's what Nike is trying to sort of latch everything onto, which would be counter to Novasiv, they make only a motivation to combine, anti-motivation to combine argument as to claim 11, not to claim 14.

[00:27:28] Speaker 03:
So I think from the board's perspective, this was not something that was teed up. And it's entirely consistent for the board to only decide the issues that are actually in dispute. And it addressed the issues. that Nike raised in its patent owner response, which is what it's had to do in order to preserve the issue. So given those circumstances, there's nothing here for the court to review on motivation to combine for claim 14.

[00:27:56] Speaker 02:
Do you have a site to give me to one case where we've said the oral hearing is too late to raise?

[00:28:01] Speaker 03:
Yes, so that would be Schwindemann, 82F4-1371.

[00:28:06] Speaker 03:
Thank you. And we did provide that site to opposing counsel before argument.

[00:28:14] Speaker 03:
If there are no further questions, we would ask the court to affirm.

[00:28:27] Speaker 04:
Thank you, Your Honor. Just a couple of quick points. I think we heard counsel admit initially that the term record when it's used with GPS devices in that context would include an act of measuring or capturing. And we think the citations we provided earlier where it talks about recording with a GPS device clearly shows that that's what the specification here is discussing. We're recording, measuring athletic activity, and that's the only way we think it makes sense.

[00:28:59] Speaker 04:
As Your Honor pointed out, Judge Stoll, there is no embodiment, aside from distinguishing the prior art, there's nothing in the patent about manual entry of athletic activity. It's not mentioned once.

[00:29:12] Speaker 00:
And in fact, the steps that are discussed, calibration, that sort of thing... Just to be clear, though, somebody could choose to have broader claims than what's in the specification, right?

[00:29:23] Speaker 04:
Sure, of course, Your Honor. But we think the right framing of the issue today is which of these ordinary meanings makes the most sense in view of the specification. And when we have steps like calibration, that clearly indicates that we need to check the what was captured or measured, that wouldn't make sense if I'm running a mile and just punching in 1.0 mile run. There would be no need to calibrate. And calibration is discussed extensively in the specification. So when we view the specification as a whole, we think the ordinary meaning that's appropriate for record necessarily includes the act of measuring or capturing.

[00:30:02] Speaker 01:
Okay. I think we're out of time. Thank you. Okay. Thank you, Your Honor.