[00:00:01] Speaker 00:
Before we begin our proceedings today, I'd just like to say on behalf of Judge Taranto, myself, and indeed the entire court, we'd like to welcome Judge Kovner from ED New York, who's here helping us this week, and we're delighted to have her. Thank you.

[00:00:17] Speaker 00:
Our first case for argument this morning is 24-1102, Track Time versus Amazon. Mr. Greenspoon.

[00:00:28] Speaker 04:
Thank you, Your Honor.

[00:00:31] Speaker 04:
Good morning, Your Honors, and may it please the Court. I'll start with the 978 patent and then move on to the 638 patent.

[00:00:41] Speaker 04:
The District Court invalidated the 978 patent prior to and without the benefit of this Court's DIFAN and WSOU decisions.

[00:00:50] Speaker 04:
Those decisions hold that claim limitations written as executable code for performing a function where the function is known in the art will not trigger means treatment.

[00:01:02] Speaker 04:
They are not nonce words.

[00:01:06] Speaker 03:
Isn't it more limited than that in the sense that, and I would be the first to, I think, recognize that it's a little hard to interpret the collection of five or six cases we have in the area, but the ones that are most helpful to you, DIFAN, maybe ZeroClick, the non-PREC WSOU, is that what it's called? Yes, Judge. Which is sort of half helpful to you and half not, right? There's a piece that was, in which 112.6 was rejected, right?

[00:01:37] Speaker 03:
I don't recall that, Your Honor. Two different patterns, I think.

[00:01:42] Speaker 03:
But I thought that the dive fan in particular, to focus on that, but zero-click as well, involved and kind of rely on the fact that they involved two kinds of things. One, a function at some level that feels like a software step and not just a user end result. And second, the intrinsic and extrinsic evidence that skilled artisans would recognize the off-the-shelf software as being available to perform those.

[00:02:21] Speaker 03:
And I'm not sure you have either of those two things here. That's kind of at least where my focus is.

[00:02:29] Speaker 04:
Well, Judge, I don't think the case is turned on the point that Your Honor just mentioned. I think the case is turned on the analysis of whether the executable code limitation as written in those patents would be deemed a nonce word or not. And in all the cases, the thread running through all of them, it's the burden of the challenger to demonstrate that these are nonce words triggering meaningful dysfunction treatment by clear and convincing evidence, I believe. In this case, well, in DIFAN, for example, the case turned on the fact that it was unrebutted testimony in the record, unrebutted evidence that this was a limitation directed to a class of structures and therefore known in the R2.

[00:03:12] Speaker 04:
as something of its own, not just a nonce word. So on that level, we run on four legs with DIFAN.

[00:03:20] Speaker 04:
We have unrebutted testimony in the record.

[00:03:23] Speaker 04:
We have just a variety in the declaration of our expert, a variety of off-the-shelf software items that have the, let's see, the facilitating annotation class of structures and the synchronously playing multimedia class of structures.

[00:03:42] Speaker 03:
When you say you have it, this is how I'm remembering things, and you can correct me. I thought you pointed as to both of the limitations at issue to just one, which is live note in the spec, and then you say look at the other side's validity aspect. challenges, and they rely on all sorts of prior art that shows this, so it must be kind of conventional.

[00:04:08] Speaker 04:
Well, our presentation actually was much more comprehensive than that. Our expert named something like six or seven.

[00:04:12] Speaker 03:
Was there anything else besides LiveNote in the spec?

[00:04:15] Speaker 04:
In the spec?

[00:04:17] Speaker 04:
I don't recall anything besides LiveNote. But what's intriguing is that we have in the record at 1680 and 1691, Amazon's own claim chart mapping LiveNote onto this limitation. So I don't think there was ever any dispute that the facilitating annotation and synchronously playing multimedia features as software features were a class of structure known in the art. Thus, when the executable code language appears in the claims, that is going to be immediately perceived by a person of skill in the art as structural.

[00:04:52] Speaker 01:
So I think your adversary says the expert's explanation is too conclusory And I wonder if you could respond to that.

[00:05:01] Speaker 04:
That confused me when I read that because the expert goes through point by point all sorts of different existing off-the-shelf programs.

[00:05:12] Speaker 04:
I don't have recollection of all of them, but there are six or seven of them. That's a declaration at 1634 to 1645. Okay.

[00:05:21] Speaker 04:
So I don't understand how we can call that conclusory when that reaches precisely the question under the legal standard whether this is a class of structures understood by persons of skill in the arts.

[00:05:34] Speaker 04:
So moving on to the 638 patent, I'll address this.

[00:05:37] Speaker 03:
Can I just double-check something? Sure. So assuming that all of that is true about the prior art, you still think you can escape prior art invalidity defense?

[00:05:48] Speaker 04:
Yes, yes. Of course, that's not before this court in this appeal, but we're confident that on remand, there's still very much of a case to be had.

[00:05:58] Speaker 01:
So what do we think the district court made of what the expert said? I mean, it seems like the district court wasn't persuaded by it, because the district court concluded you didn't show a person of ordinary skill in the art would have understood executed world program code to have had that meaning, right? So is that what we think the district court did, and then how is that reviewed?

[00:06:22] Speaker 04:
What I read in the district court decision is that there's no engagement with the expert evidence whatsoever. There was some kind of analysis and a conclusion of indefiniteness, but there was no citation or discussion of our expert evidence on this point in that section of the district court's opinion.

[00:06:38] Speaker 01:
Well, let's assume that the district court did consider the expert and just found that you hadn't met your – you hadn't actually presented persuasive evidence that a person of ordinary skill in the art would have understood it, as your expert said. What then? How do we review that?

[00:06:55] Speaker 04:
If that's what the district court did, and actually it did not, it did not engage the expert, but had it engaged the expert and come up with some verbiage of that nature, it still wouldn't be enough to invalidate or render indefinite these claims because, recall, It's Amazon's burden by clearly convincing evidence to show that the executable code limitation is not a nonce term. So whatever our experts said or didn't say in a very real sense shouldn't have mattered anyway because it's really the absence of evidence from Amazon's side that controls the question.

[00:07:27] Speaker 03:
But at least just on the terms of the standard of review, your view is that the evaluation of expert evidence about skilled artisans' understanding is a factual matter, but it's one on which they have a burden and elevate it because it's an invalidated challenge.

[00:07:47] Speaker 04:
Exactly, and I believe that's explicitly stated in basically those terms in zero click and the WSOU and DIFAN probably in less detail.

[00:07:56] Speaker 04:
So on the 638 patent, I'll address the new trial ruling and ALICE step one.

[00:08:03] Speaker 04:
if I can have time for that. Most remarkable here on the new trial is that Amazon responded to the clear weight.

[00:08:11] Speaker 03:
This is the one where there are so many grounds that the jury rejected it on. It's a little hard to count. I agree. If you would address the anticipation by live note.

[00:08:24] Speaker 04:
Yes. So I agree there's quantity but not quality in the district court's ruling. So anticipation by live note, that's You could say there's a verb I learned preparing for oral argument today, mosaicing. Mosaicing will not end up with a proper anticipation finding. So on live note, we demonstrated that there was no legally sufficient evidence on which the jury could find anticipation. The reason was... The LiveNote Prior Art presentation by Amazon was of a whole system.

[00:08:55] Speaker 04:
It was a commercial product system, and they produced a variety of manuals, some manuals over here, some manuals over there. And what they stitched together was that in one very, very narrow aspect, there's a tablet PC on which you can use a pen stylus to write handwritten annotations.

[00:09:15] Speaker 04:
Fine, as far as that goes. That tablet PC was never involved in any kind of media navigations. On the other hand, they did present some documentation of a big desktop computer operating with a mouse, and as we show in the briefing, that's not a mobile device, that's not human touch gestures used to navigate the multimedia. So there is no, under the net money in line of cases, for there to be anticipation, you have to have

[00:09:46] Speaker 03:
In the piece of prior art, you have to connect into something like a single embodiment of different pieces for the claim. Why wasn't that a factual, which would generally be a factual question because it's about reading the prior art, why wasn't it a triumval factual question and therefore the jury's verdict has to stand?

[00:10:10] Speaker 04:
Well, it was triable.

[00:10:11] Speaker 03:
No, no, I know. You know what I mean.

[00:10:13] Speaker 04:
But, of course, under the net money in standard, the legally sufficient evidence had to be that which showed the claim as arranged in the claim. So all the elements as arranged in the claim. When you have disembodied mosaic items that never really interoperated for purposes of what the claim was doing, there's no anticipation.

[00:10:37] Speaker 04:
So it's an absolutely rock-solid, J-Mall, no substantial evidence issue.

[00:10:44] Speaker 03:
Am I remembering right that the live, your...

[00:10:50] Speaker 03:
Your new trial grounds affect a number of the prior art invalidity, but not the live note anticipation.

[00:11:00] Speaker 04:
That is not correct, Your Honor. If you read the clear weight argument in our new trial section of our brief... Clear weight, but other new trial.

[00:11:09] Speaker 03:
Do you have other new trial arguments?

[00:11:10] Speaker 04:
We do, but they sort of stand independently of the clear weight issue. Right, the clear weight and... Right, so the inconsistency in the verdict issue didn't... directly reach the live note issue. I think that may be what Your Honor is thinking. But again, all these new trial grounds, they're all interwoven together. And so if we show jury confusion and manifest injustice, for example, with the inconsistency between the Taliban anticipation and Amazon music infringement, that confusion was woven into every single issue. Likewise with the improper exclusion of the draft patent application, the improper exclusion of the patenting statements by Amazon on conventionality.

[00:11:49] Speaker 04:
I see I'm well into my rebuttal.

[00:11:51] Speaker 00:
Let's hear from the other side.

[00:11:53] Speaker 04:
Thank you.

[00:12:03] Speaker 02:
Good morning. May it please the court, Dave Haddon for Amazon and Audible. Let me start with the 978 patent, as counsel did.

[00:12:13] Speaker 02:
Tracton's reliance on zero-click and die fan is incorrect.

[00:12:20] Speaker 02:
The patent itself explains that the computer executable program code, first the claim requires that it has to be in mobile computing device software.

[00:12:37] Speaker 02:
And the whole premise of this patent is that that mobile computing device software did not exist. And so if we look even at the first column of the patent, it explains the problem. And it says that, and this is around column 1, line 52, existing software, and it's talking about this transcript management software, like LiveNote and Sanction that are discussed in the patent, It says that that software requires a full version of Microsoft's Windows operating system.

[00:13:13] Speaker 02:
And it goes on and says, as a result, the full Microsoft Windows operating system is unsuitable for mobile computing devices, and they cannot run transcript management utilities. So the patent is saying the problem we have is that there is no software for managing these transcripts and doing this synchronization that can run on a mobile computing device. And it goes on, that same part of the column one says, the result is that there has been no transcript management utility for display of smoothly scrolling synchronized text and multimedia for use on a mobile computing device.

[00:13:57] Speaker 02:
So in ZeroClick and DiFAN, The patent, I can zero-click the claim itself, referred to existing programs. It's talking about existing user interface programs. And in DIFAN, same issue, the undisputed testimony was that these programs were existing, you could take one off the shelf, and a skill would understand that the executable program or the program code elements were referring to those off-the-shelf programs.

[00:14:28] Speaker 02:
Here we have completely the opposite. The patent says there is no off-the-shelf mobile computing device software that will do this. That's my invention. And the applicant told the patent office the same thing during the prosecution. This is at Appendix 1599. This is a quote. Applicant's solution required extensive effort, time, and money to complete. In fact, in developing software that would function on a mobile computing device, because a mobile web browser would not so function, applicants spent approximately $150,000 and approximately 18 months with professional software developers.

[00:15:12] Speaker 01:
I think the statements you're alluding to are saying the particular, are disclaiming the idea that there are off-the-shelf programs that can do these specific pieces, because I take it they're saying... Yeah, our software, the thing that we're trying to patent is innovative, and there's not a program that does this whole thing right now. But I guess for this to be – there are very specific tasks that they're describing being performed by some means or some executable software code.

[00:15:49] Speaker 01:
Are you thinking? the language that you just read indicates that those very specific tasks can't be performed by off-the-shelf software?

[00:15:56] Speaker 02:
Well, I think the problem is the whole claim is for this mobile computing device software. And the whole premise of the patent is that that didn't exist. It didn't exist to perform any of the functions that are described in the patent and claimed. Whether it's annotating, whether it's tapping and clicking like in the 638 patent. The whole premise is that didn't exist. It could only run it on a desktop.

[00:16:28] Speaker 03:
I think this is the question that Judge Koffner was asking.

[00:16:34] Speaker 03:
The passages that you read from the bottom of column one say maybe.

[00:16:42] Speaker 03:
We don't have a package that does everything necessary to do this on a mobile device doesn't quite say there's nothing off the shelf for individual components like the annotating part as opposed to annotating and then getting the switch made over to the video and all of that. And the two claim elements in the two that are at issue here, one of them is about the annotating and the other about synchronously playing, I guess sort of two pieces.

[00:17:21] Speaker 03:
Why is there not a gap there?

[00:17:23] Speaker 02:
Well, I don't think there's a gap because the question is, right, if you read the claim and those executable program code elements, whether it's for facilitating annotation or synchronizing, right, in the zero-click die-fan land, undisputed evidence, the person of skill would read that and say, oh yeah, that's this off-the-shelf package I can grab over here and it will run. There's nothing like that here.

[00:17:50] Speaker 02:
The patent says there's no mobile device software that will do this transcript management stuff. There's no suggestion that a piece of LiveNote or something else could have been separately run on a mobile computing device. There's nothing like that.

[00:18:06] Speaker 01:
What do you make of the expert testimony that a person skilled in the art would have understood, hey, these are things. There's a lot of software out there.

[00:18:15] Speaker 02:
Well, if he's saying that LiveNote and all these things existed and could be run on a mobile computing device, then he's just contradicting the fact. He didn't say that. He just lists what is listed in the invalidity contentions and in the spec. But there's no analysis that says this particular... feature or functionality of LiveNote could have been run on a mobile device. There's nothing like that.

[00:18:42] Speaker 01:
So it's not detailed enough?

[00:18:43] Speaker 02:
No, he doesn't say it at all. There's no testimony from a person of skill in the art that says, I recognize this as an existing software package that can run on a mobile computing device. There's nothing like that.

[00:18:59] Speaker 02:
So that is the key difference. And if you think about it, right?

[00:19:04] Speaker 01:
I'm looking at the summary of his testimony rather than, so maybe it's just factually to speak about what he said because your adversary says Dr. Agrawala testified that skilled artisans would have understood the claim implications to refer to well understood code. Is that not what he said or do you think it's too conclusory?

[00:19:25] Speaker 02:
Well, he pointed to the live note and he said that as a conclusory way. He didn't say that there's something in LiveNet that could have run on a mobile computing device that someone would have taken off the shelf and used in this way. They just ignored this requirement that it has to be for this mobile computing device software, which is the whole purported invention.

[00:19:50] Speaker 03:
These claim elements, right, they have mobile computing device in them, or, yeah, a mobile computing device, but at least that the way... I don't remember...

[00:20:05] Speaker 03:
What follows it is the executable program code configured to do these different things, either the annotation or the synchronization.

[00:20:16] Speaker 03:
Was the analysis by the district court one that said the function was this function on a mobile device or just this function of annotating?

[00:20:33] Speaker 02:
I don't think that – I think the district court just followed the claim language. The claim language says, wherein said mobile computing device software comprises executable program configured to facilitate annotation. So the court – maybe I'm not following it. Right.

[00:20:53] Speaker 03:
So, okay, let's just look at that one. So the wherein the mobile device comprises something – I guess I have been remembering that the parties were discussing and the district court was discussing. Putting that aside, we're now into an expression, executable program code configured to...

[00:21:16] Speaker 03:
That's got to be the thing that either has structure or doesn't have structure. And if it doesn't have structure, then you look at the function and we're into 112.6.

[00:21:26] Speaker 02:
Yes.

[00:21:27] Speaker 03:
Without regard for this phrase mobile device.

[00:21:31] Speaker 03:
And you want to build in the need to be able to be run on a mobile device into the analysis of the nonce or nonce word for these functions.

[00:21:47] Speaker 02:
I'm not trying to build it in. My point is that because it says that it's mobile computing device software that comprises this stuff, that is inconsistent with the argument that we are like zero-click anti-fam. Because there is, as I've gone through the spec, the patent says there is no existing mobile computing device software that does this stuff. So one of skill cannot read this and the intrinsic record and say, oh yeah, that's referring to a known off-the-shelf package that that I can take and use on a mobile computing device to achieve this functionality.

[00:22:28] Speaker 03:
And I guess on that particular one, the element in claim one, the mobile device is actually in the back half of it also. That is in the functional description. Yeah. Okay. But that's not quite true of the claim two one, right?

[00:22:49] Speaker 02:
I'm sorry, Hunter?

[00:22:50] Speaker 03:
That's not equally true of the claim two element.

[00:22:56] Speaker 02:
Yeah, no, it is. Mobile computing device software comprises executable program code configured to synchronize.

[00:23:04] Speaker 02:
It's exactly the same in both.

[00:23:06] Speaker 02:
So the point is, I mean, stepping back, the whole premise of this patent is we invented some new mobile computing device software. that did this stuff that before you needed a desktop computer to do, like with LiveNote. That's the whole thing. And when we get to the point of novelty, which is doing this on a mobile computing device, there's no there there. There's nothing in the patent that says how to do it on a mobile computing device, which is why Judge Naraka found this, you know, ineligible under 101.

[00:23:41] Speaker 02:
There's no solution. But there is also...

[00:23:45] Speaker 02:
nothing to establish what this structure is because they say it doesn't exist, right? We're going to develop it. And they told the patent office we spent $150,000 to develop it. But that means the whole software, right? I mean, this whole piece of software is not that every... Understood, Your Honor, but that piece of the prosecution history I was reading from was in response to an office action related to this claim too.

[00:24:14] Speaker 02:
So it was directly addressing this limitation.

[00:24:19] Speaker 02:
But the other point is, right, so we get to kind of the point of novelty here, mobile computing device, and it's only described in the vaguest functional way, right? To facilitate annotation.

[00:24:32] Speaker 02:
Like, what does that mean? And what structure would be known to a person with a skill in the arts that could facilitate annotation?

[00:24:41] Speaker 01:
Did you have your own expert or their expert... and then the construction of the language of the claim.

[00:24:48] Speaker 02:
No, we had our own expert, and Judge Norica credited him and relied on him.

[00:24:54] Speaker 01:
So do you think this, because I guess part of what I'm trying to understand is what the district court made of that, because it doesn't seem like...

[00:25:02] Speaker 01:
the district court said, hey, you know, said exactly what you were saying about their expert or said, hey, we credit your expert. How is that all reflected in that?

[00:25:12] Speaker 02:
So I think what Judge Monica did is she credited our expert, Dr. Schoenfeld, and said to a person with a skill in the art, she's saying executable program code is not sufficient structure to perform this function. And she...

[00:25:29] Speaker 02:
looked at the intrinsic evidence and saw that, contrary to the argument that we're hearing today, there's nothing in the intrinsic evidence that identifies some existing off-the-shelf program that would perform this function.

[00:25:44] Speaker 01:
So you think kind of implicit in the analysis is comparing of the experts, and how is that reviewed now? Is that reviewed de novo?

[00:25:53] Speaker 02:
I would think it's reviewed for abusive discretion.

[00:25:55] Speaker 01:
Because it's a factual issue?

[00:25:56] Speaker 02:
It's an underlying factual issue.

[00:26:01] Speaker 03:
Abuse of discretion?

[00:26:03] Speaker 03:
Clear error?

[00:26:04] Speaker 02:
Clear error, yeah. Sorry, Your Honor. Have I answered your question on 9-7-9?

[00:26:11] Speaker 03:
I guess we have another patent to talk about. Yeah, we have another patent to talk about. So, as Your Honor noted... What about mosaicing? Excuse me? What about mosaicing, if that was the right expression? mosaicing. I've never heard the word either used that way, but that was like the centerpiece of this point.

[00:26:32] Speaker 02:
So we're talking about LiveNote. Yeah, so LiveNote was a product, and the documentation for it that Dr. Schoenfeld went through and explained to the jury explained that it could run both on a desktop computer and on a tablet PC.

[00:26:54] Speaker 02:
So it wasn't this notion that there's some limited functionality over here that you could do on a tablet PC. No. The software ran on a tablet PC. And so it called out, saying, because it now runs on a tablet PC, you have this additional ability to annotate with the stylus on the screen, which they point to.

[00:27:21] Speaker 02:
But it does everything else on the tablet PC too, including being able to jump to a place in video when you select a word. You can now select a word not with the mouse, but with the stylus or your finger on the touchscreen. So there's one product. It ran on this mobile device, as Dr. Schoenfeld explained.

[00:27:46] Speaker 03:
And just to be clear, this was a product anticipation, not a single publication anticipation?

[00:27:55] Speaker 02:
Yes, it was a product. And there was user documentation that was relied on. I see I'm out of time. I can stop here. Other than that, there were six grounds that had plenty of evidence. Thank you.

[00:28:18] Speaker 04:
I'll very quickly address LiveNote. There was no documentation and no testimony that the fully functional LiveNote worked on a tablet PC. Instead, as you see on page 8906 in the record, there was a tablet PC which had only one function, which was to allow these annotations. It was a very thin annotation.

[00:28:39] Speaker 04:
feature set in the tablet PC itself. So that's why the mosaicing problem, really more precisely the net money in problem of no evidence of the elements of the claim arranged as in the claim was a very real problem and meant that there was legally insufficient evidence for anticipation.

[00:29:00] Speaker 04:
All of my friend's argument on the 978 patent was waived.

[00:29:06] Speaker 04:
There was no indication in the red brief that he was going to come here and explain to your honors that the mobility or the mobile computing device aspect kind of bled into the full flesh of the executable code claim element. And just reading the executable code claim element, I think, Judge Kovner, I think you hit it, which is, It comes after the recitation of the mobile computing device. The facilitating annotation is just the executable code is configured to facilitate annotation.

[00:29:36] Speaker 03:
Finish that phrase.

[00:29:38] Speaker 04:
Of course. Of a portion of said synchronization index responsive to user input received by the mobile computing device.

[00:29:44] Speaker 03:
By the mobile device.

[00:29:45] Speaker 04:
Well, that's just a receipt. That's a trivial data exchange that we're talking about. So there is going to be data exchanged for receipt in the commercial products.

[00:29:54] Speaker 03:
But you don't think that that almost necessarily implies that this annotation function has to be doable on the mobile device?

[00:30:05] Speaker 03:
Not... So the question, is this off the shelf, is a question about whether a mobile version of it is off the shelf.

[00:30:14] Speaker 04:
To answer that question, I think we have to pan out. The question... We're getting very deep in the weeds. The question is really, did they provide evidence, support their burden of proof to show that this was a nonce word? We have case law saying that if the executable program code reflects the class of structures known in the art, and when that evidence is undisputed, then there's no indefiniteness issue here. We don't trigger means treatment.

[00:30:40] Speaker 01:
When you say this is undisputed, your adversary got it and said they had an expert that didn't. Right.

[00:30:47] Speaker 04:
And to that point, there's another inaccuracy I have to report to the court, which is Dr. Schoenfeld, their expert, did not provide any opinions on this question of non-status for the executable code claim element. He did present a declaration. He went straight to the is there an algorithm in the specification or not question. But he did not present any testimony at all whatsoever on this point, nor did the district court credit Dr. Schoenfeld on this point because he had no evidence on this point.

[00:31:19] Speaker 04:
So I would like to just conclude, if I may, with... Ten seconds on Alice step one. I know we didn't have an exchange in pure rebuttal format, but I would just like to say the framework I would ask your honors to look at this patent, the 638 patent, is the framework of not a user interface as such, but instead a computer navigation interface that brings us squarely within the ambit of core wireless and data engines.

[00:31:49] Speaker 04:
And unless there are further questions.

[00:31:51] Speaker 00:
Thank you. Thank you very much.