`
`
`
`
`
` UNITED STATES DISTRICT COURT
` WESTERN DISTRICT OF TEXAS
` WACO DIVISION
`MULTIMEDIA CONTENT ) Docket No. W 18-CA-207 ADA
`MANAGEMENT, LLC
`)
` )
`vs.
` ) Waco, Texas
` )
`DISH NETWORK, LLC
`) April 26, 2019
`
` TRANSCRIPT OF MARKMAN HEARING
`BEFORE THE HONORABLE ALAN D. ALBRIGHT
`APPEARANCES:
`For the Plaintiff:
`
`Mr. Benjamin R. Johnson
`Mr. Aakash S. Parekh
`Mr. Jeffrey G. Toler
`Toler Law Group
`8500 Bluffstone Cove, Suite A201
`Austin, Texas 78759
`
`For the Defendant:
`
`Mr. G. Hopkins Guy, III
`Baker Botts
`1001 Page Mill Road,
`Building One, Suite 200
`Palo Alto, California 94304
`Mr. Ali Dhanani
`Baker Botts
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002
`Mr. John P. Palmer
`Naman Howell Smith & Lee
`P.O. Box 1470
`Waco, Texas 76703
`
`Court Reporter:
`
`
`Ms. Lily Iva Reznik, CRR, RMR
`501 West 5th Street, Suite 4153
`Austin, Texas 78701
`(512)391-8792
`
`Proceedings reported by computerized stenography,
`transcript produced by computer.
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`EXHIBIT 2010
`
`
`
`2
`
`THE CLERK: The Court calls: Waco case
`18-CV-207, Multimedia Content Management, LLC vs. DISH
`Network, for Markman hearing.
`THE COURT: Counsel, if you all would announce,
`
`please.
`
`MR. JOHNSON: Ben Johnson with Aakash Parekh and
`Jeff Toler for Plaintiff Multimedia, LLC, your Honor.
`THE COURT: Mr. Johnson, are you going to be
`doing the majority of the speaking?
`MR. JOHNSON: Yes.
`THE COURT: Okay. Great. Good morning.
`MR. GUY: Good morning, your Honor.
`Guy Hopkins with Baker Botts for DISH Network,
`LLC. With me is Thomas Carter, Ali Dhanani and Brad
`Bowling from my firm. And also here with us is Jim Hanft
`and Larry Katzin. Larry Katzin is vice-president and
`associate general counsel. Mr. Hanft is director of
`intellectual property. And also with us is John Palmer.
`THE COURT: Well, let me say, I always appreciate
`it when folks who ask their clients show up. I think it's
`important that the clients see and grade may papers and
`grade your papers and, though, I have no doubts there on
`behalf of Baker Botts. And so, I appreciate anyone taking
`the time to come to court and participating.
`I can't remember, though, did we say we were
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:16:45
`
`09:16:49
`
`09:16:56
`
`09:16:57
`
`09:16:59
`
`09:17:01
`
`09:17:04
`
`09:17:08
`
`09:17:10
`
`09:17:11
`
`09:17:12
`
`09:17:13
`
`09:17:14
`
`09:17:17
`
`09:17:24
`
`09:17:29
`
`09:17:34
`
`09:17:38
`
`09:17:42
`
`09:17:44
`
`09:17:50
`
`09:17:55
`
`09:17:59
`
`09:18:02
`
`09:18:05
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`3
`
`going to do a tutorial in this case or not? I just don't
`remember.
`MR. GUY: Your Honor, I believe you commented
`that having gone through the motion to dismiss, that you
`felt that there was no need for a tutorial. We'd be happy
`to go through that, if you'd like, but I believe that as
`we take up the terms, if you'd like, we would also give a
`brief introduction of the technology relevant to that
`term.
`
`THE COURT: Yeah. Let's do it that way. That's
`what I thought I said and -- so everyone knows, I've
`carefully gone through everything and let me go on record.
`A couple of y'all were -- yesterday, I was at an
`intellectual property law association meeting here and I
`talked about it.
`Baker Botts provided me with a audio version of
`their Markman briefing. I'm going to make a couple of
`comments about that. Number one, I can't tell you how
`much I appreciate it. It was exceptionally helpful. I
`listened to everything that was submitted. Some of the
`stuff I'm saying just publicly because I'm going to
`actually then -- I think I'm gong to actually enter an
`order.
`
`I was so satisfied with the manner in which the
`audio files were provided to me. I have a new enough
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:18:09
`
`09:18:12
`
`09:18:13
`
`09:18:15
`
`09:18:18
`
`09:18:22
`
`09:18:24
`
`09:18:28
`
`09:18:31
`
`09:18:31
`
`09:18:33
`
`09:18:38
`
`09:18:41
`
`09:18:45
`
`09:18:48
`
`09:18:51
`
`09:18:56
`
`09:19:00
`
`09:19:04
`
`09:19:12
`
`09:19:15
`
`09:19:18
`
`09:19:20
`
`09:19:20
`
`09:19:23
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`4
`
`truck that I don't have a CD player, so I couldn't play
`the CD. But I also have a young law clerks who are
`competent enough that they will take what you gave me and
`put it on Dropbox. So I was able to put it on my phone
`and my iPad and listen to it on the drive up because I am
`-- I can use Bluetooth, which still amazes me. But I
`listen to everything that you all submitted.
`And, frankly, it helped both sides because just
`having -- just hearing, you know, y'all's version made it
`much better. It made me -- helped me understand both
`sides' arguments much better, even though yours was, in
`many ways, in the negative of, you know, while they're
`long, it was still very helpful to help me go through it.
`So I was so impressed by what you submitted that
`I believe I'm going to make -- in the future, I'm going to
`make it mandatory for everyone to submit audio versions of
`any -- before I have a Markman hearing. I want you to
`know that it was -- for -- at least for me, it was
`exceptionally helpful, and wanted to say thank you for
`doing it.
`MR. GUY: Thank you, your Honor.
`I've already gotten a number of requests for
`exactly the format you'd like. So if you'd like to say on
`the record that you want it on a jump drive for your
`truck, then that would be very helpful for everybody now.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:19:29
`
`09:19:31
`
`09:19:35
`
`09:19:38
`
`09:19:42
`
`09:19:45
`
`09:19:49
`
`09:19:51
`
`09:19:55
`
`09:20:00
`
`09:20:06
`
`09:20:10
`
`09:20:13
`
`09:20:17
`
`09:20:22
`
`09:20:24
`
`09:20:27
`
`09:20:31
`
`09:20:33
`
`09:20:37
`
`09:20:37
`
`09:20:38
`
`09:20:41
`
`09:20:43
`
`09:20:46
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`5
`
`THE COURT: Jump drive on the truck. Also, I
`will say this on the record and I'm going to put this in
`the order. The one thing I learned from listening to your
`version, what I don't need is case citations. You know, I
`have the case citations in the written briefs, and so, it
`only -- it takes up audio time that's unnecessary for the
`entire case. I would be fine if you made a point or had a
`quote and then, just said, see case citation, because I
`have the written briefs and have reviewed them.
`And so -- and let me add, I think I'm going to
`make it mandatory for all Markman hearings, but that
`doesn't mean that I would not invite it for when you all
`have your motions in limine, when you all have your
`Daubert, whatever you wanted to submit, you know, with my
`current lifestyle where I have hours. And I'm going to
`say this, Mr. Palmer. I don't mean it to come out the way
`it does. I have many hours in Waco where I don't have a
`lot to do. And I love being in Waco, so that comes out
`not the way I mean it, but I fill those hours usually by
`running, or walking, or doing something where I can be
`listening to these things, and I prefer to do that.
`So I have hours where I'm listening to things and
`this is -- it's very -- a very good use of my time. So I
`was very pleased with what you all did. I think it
`benefitted both parties and it was terrific. So thank you
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:20:48
`
`09:20:51
`
`09:20:53
`
`09:20:55
`
`09:21:01
`
`09:21:06
`
`09:21:10
`
`09:21:15
`
`09:21:18
`
`09:21:21
`
`09:21:24
`
`09:21:30
`
`09:21:34
`
`09:21:37
`
`09:21:41
`
`09:21:48
`
`09:21:50
`
`09:21:53
`
`09:21:58
`
`09:22:02
`
`09:22:06
`
`09:22:09
`
`09:22:13
`
`09:22:18
`
`09:22:21
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`6
`
`for doing that. I really appreciate it.
`And you were the first -- y'all were the first
`folks who -- in a patent case who had done it, and so I
`was -- y'all were the guinea pigs because I thought, well,
`you know, if I listen to it and it's not very helpful, I
`won't keep asking you to do it. But to the contrary, I
`think it was a great asset to the Court.
`So having said all of that, the way I intend to
`move forward today is obviously -- and I'll start with
`disputed term No. 1, which is "to generate controller
`instructions." I am agnostic as to who goes first on each
`of these. If y'all haven't talked about it, I'm happy for
`the plaintiff or defendant to go first. There is no time
`limit on any of the claims. We're going to go back and
`forth on each claim term until I'm satisfied that I know
`what I want to do on it.
`And the only time limit is when I cry uncle and
`say, okay, I think that's all I can absorb. But -- so it
`doesn't matter which order you all go. And there's no
`advantage to going first or last. But I do want it claim
`term by claim term, and once I'm satisfied with one, then
`we'll move on to the next one.
`So with that being said, I invite whichever party
`wants to start with the "to generate controller
`instructions" to go.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:22:27
`
`09:22:30
`
`09:22:32
`
`09:22:37
`
`09:22:39
`
`09:22:41
`
`09:22:44
`
`09:22:46
`
`09:22:50
`
`09:22:59
`
`09:23:05
`
`09:23:08
`
`09:23:11
`
`09:23:15
`
`09:23:18
`
`09:23:23
`
`09:23:26
`
`09:23:29
`
`09:23:32
`
`09:23:35
`
`09:23:40
`
`09:23:44
`
`09:23:45
`
`09:23:48
`
`09:23:56
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`7
`
`MR. GUY: A little usual, but I'd be happy to
`begin as the defendant.
`MR. JOHNSON: Just a second. Your Honor, we have
`a couple of demonstratives here that have, for example,
`claim 1 and claim 1 blown up large as well as the main
`figure in our patent. Would that be helpful to set these
`over here?
`THE COURT: It would be super helpful to me.
`MR. GUY: Your Honor, we've agreed to alternate
`who goes first. I'll start first, then he'll go first and
`last.
`
`THE COURT: Let me make kind of a generic comment
`on some of these at least and we'll get there. But, for
`example, on No. 2, this is pervasive through the entire
`thing. You know, we have a claim term that says a
`controller node, and each one of you want me to give a
`long sentence of what controller node means. I'm a little
`concerned about that just generically.
`So I want you to know that's overall my general
`way of looking at things is, for better or worse, I'm a
`government major, and I know what a controller node is and
`I figure -- and so, that's just a general comment as
`you're going through, both of you, trying to explain to me
`why I need to say so much in a construction on a couple of
`these terms that say so little. You might keep that in
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:23:56
`
`09:23:59
`
`09:24:00
`
`09:24:01
`
`09:24:05
`
`09:24:09
`
`09:24:12
`
`09:24:13
`
`09:24:46
`
`09:24:49
`
`09:24:51
`
`09:24:51
`
`09:24:58
`
`09:25:05
`
`09:25:10
`
`09:25:14
`
`09:25:18
`
`09:25:22
`
`09:25:27
`
`09:25:30
`
`09:25:37
`
`09:25:41
`
`09:25:46
`
`09:25:49
`
`09:25:52
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`8
`
`mind.
`
`Yes, sir.
`MR. JOHNSON: Can you see these at all, your
`Honor? They won't sit on the chairs. They're a little
`too slidy.
`THE COURT: I can't, but let's do this.
`MR. PALMER: Maybe if we do this, your Honor.
`Maybe if we stick them here against this screen?
`THE COURT: That would be great. In fact, that's
`even more helpful because I can see it at that angle much
`better. That's perfect.
`Yes, sir. I've interrupted you twice and I
`apologize.
`MR. GUY: Not at all. Let me begin.
`As an opening comment, see if I can go to full
`screen here. There we go. Both of the patents in this
`case use the same title, same priority date, same
`specification, same drawing to the person of ordinary
`skill in the art will be commenting or depending would be
`as of the same date. Also, to the extent that things
`occur in the prosecution history of the 468 patent, it
`certainly applies to the continuation, as well.
`So in many cases, I'm not going to make much of a
`distinction between the two. We'll be blurring the two
`together. That was on page 2.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:25:56
`
`09:25:57
`
`09:25:58
`
`09:25:59
`
`09:26:02
`
`09:26:02
`
`09:26:06
`
`09:26:08
`
`09:26:10
`
`09:26:12
`
`09:26:15
`
`09:26:46
`
`09:26:47
`
`09:26:48
`
`09:26:54
`
`09:27:00
`
`09:27:05
`
`09:27:09
`
`09:27:14
`
`09:27:18
`
`09:27:21
`
`09:27:25
`
`09:27:28
`
`09:27:30
`
`09:27:34
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`9
`
`Now, I know the Court wants me to pull out the
`slide numbers, and I've practiced, I've tried to do that.
`But hopefully the Court will remind me, from time to time,
`when I make that mistake. So, for the record, we're
`beginning DISH 4 --
`THE COURT: The only time I care if you say the
`slide number is if you were telling me about something on
`it, referring to a slide itself. When I get in the back
`and someone says, you see here on the slide, it says this,
`if they don't say the slide number, history will forget
`which slide you're talking about. But I'll also be paying
`pretty close attention.
`MR. GUY: Well, let's begin with term No. 1, "to
`generate controller instruction" term. What we've done is
`provide at page 4 of our slides is the -- in yellow and
`you'll see this throughout our graphics, the antecedent
`basis is provided, followed by each other occurrence of
`that term in the claim. And in general, we have provided
`both the system claim and the method claim. I believe
`that the same format was followed in the 925 patent, which
`there's a system claim followed by a method claim.
`In addition, at slide 5, we provide side-by-side
`comparisons for the Court in basically the same format
`that we have in our briefing in order to track that to
`allow the Court to do a side-by-side construction.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:27:35
`
`09:27:38
`
`09:27:43
`
`09:27:46
`
`09:27:50
`
`09:27:52
`
`09:27:58
`
`09:28:01
`
`09:28:06
`
`09:28:08
`
`09:28:12
`
`09:28:16
`
`09:28:19
`
`09:28:22
`
`09:28:28
`
`09:28:34
`
`09:28:37
`
`09:28:40
`
`09:28:44
`
`09:28:47
`
`09:28:53
`
`09:28:56
`
`09:29:02
`
`09:29:07
`
`09:29:10
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`10
`
`THE COURT: And explain to me why I need to
`change the word "generate" to "create or bring."
`MR. GUY: Judge, the point of construction is to
`actually construe the term within its plain meaning or
`customary meaning, and that is typically done. So in this
`situation, defining the term with a term itself, we find,
`is unhelpful. I don't think there's any dispute -- and if
`you'll look at their brief and -- reply brief on page 2,
`they said they're willing to accept that construction. So
`we believe that that's an important point.
`More specific is the fact that the word
`"generate" is a bit ambiguous within the specification.
`The word "generate" means that it is created -- and this
`will be with respect to a controller node. It is created
`or brought into being for its first time, comes into
`existence for the first time at the controller node. It's
`then sent from that node.
`It's actually aspect of the invention in that the
`controller instructions are not really just generated and
`passed from place to place. So it is an important point
`of construction because the way in which generate
`controller instructions is used in the claim is with
`respect to the controller node.
`Take, for example, either claim 1 or claim 23 in
`slide 4, it says, controller node comprising a first
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:29:13
`
`09:29:15
`
`09:29:20
`
`09:29:23
`
`09:29:26
`
`09:29:32
`
`09:29:36
`
`09:29:39
`
`09:29:43
`
`09:29:45
`
`09:29:49
`
`09:29:53
`
`09:29:57
`
`09:30:01
`
`09:30:05
`
`09:30:10
`
`09:30:14
`
`09:30:15
`
`09:30:21
`
`09:30:26
`
`09:30:29
`
`09:30:32
`
`09:30:35
`
`09:30:38
`
`09:30:43
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`11
`
`processor configured to generate controller instructions.
`So it is a controller node with the process that's
`configured to generate those instructions. Similarly in
`the method claim, it says generating by a controller node
`coupled to the service provider network controller
`instructions.
`So it is an important point of defining the word
`"generate," as we've done, as creating or bringing into
`being -- I don't think there's any controversy about that
`meaning -- that, in fact, it fits within the claim itself
`as to where that occurs. So generate could be, you know,
`I issue something. That could be one definition that a
`juror might consider.
`THE COURT: Or transmit.
`MR. GUY: But that's too broad in this case.
`THE COURT: Is the fuss at all -- is there an
`issue of whether or not it also could be transmit?
`MR. GUY: Yes. That is exactly the issue. To
`generate could mean to issue or transmit, and we want to
`make sure that it's actually created at that node. I
`think the parties both agree to that.
`THE COURT: And so, your concept which you said
`the plaintiffs agree to is, you need to define generate so
`that the jury would understand that it means create and
`does not mean transmit.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:30:49
`
`09:30:53
`
`09:30:57
`
`09:31:00
`
`09:31:04
`
`09:31:10
`
`09:31:11
`
`09:31:13
`
`09:31:17
`
`09:31:19
`
`09:31:24
`
`09:31:29
`
`09:31:34
`
`09:31:35
`
`09:31:39
`
`09:31:42
`
`09:31:45
`
`09:31:48
`
`09:31:53
`
`09:31:57
`
`09:32:01
`
`09:32:02
`
`09:32:06
`
`09:32:11
`
`09:32:14
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`12
`
`MR. GUY: Yes.
`THE COURT: Okay. I got that down. Is there --
`I'm being picky here. Is there -- because I'd rather use
`field words than more. But if y'all are fine, I'm not
`going to whine, but it seems to me the word "bringing into
`being" is redundant of creating. But if you all feel that
`you need both.
`I mean, I never know which of your really bright
`people wasn't happy with just "to create" and they decided
`it needed to be both and maybe they're -- I'm sure they're
`brighter than I am. But that seems to be redundant. But
`if you all think it's necessary to have it in there, that
`I'm not opposed to, I guess.
`MR. GUY: Actually, it was shorter than the
`alternative, which I think was in the testimony if we go
`to slide 8. Here, this is their expert. I'll go into the
`declaration in a moment. But here, we've actually
`substantially shortened it to two alternative words in
`order to give a precise meaning to a juror that this means
`that it's brought into being or is created at that point,
`as opposed to the long definition there in paragraph 80,
`which was submitted in the patent owner's preliminary
`response in the IP law.
`So there's not a dispute, really, here at all
`about the meaning of the word "generate": "Whether the
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:32:16
`
`09:32:16
`
`09:32:19
`
`09:32:27
`
`09:32:31
`
`09:32:35
`
`09:32:40
`
`09:32:44
`
`09:32:49
`
`09:32:53
`
`09:32:57
`
`09:33:00
`
`09:33:04
`
`09:33:07
`
`09:33:10
`
`09:33:17
`
`09:33:23
`
`09:33:27
`
`09:33:31
`
`09:33:34
`
`09:33:39
`
`09:33:42
`
`09:33:46
`
`09:33:48
`
`09:33:52
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`13
`
`verb produce, create, or originate is used to describe the
`meaning of generate, what is required for a complete
`understanding with respect to the recited claims of the
`468 patent is that the processor is performing the action
`of producing, creating, or originating, a controller
`instruction and that the controller instruction did not
`exist prior to being generated by the processor."
`So we have actually done exactly what the Court
`is suggesting here. How can we shorten this up? We
`shorten it up to create or bring into being.
`THE COURT: Okay.
`MR. GUY: Let me move on to the other dispute
`which has to do with what a controller instruction is, and
`there's some dispute about that. I believe their main
`complaint is based upon a misguided view of claim
`differentiation. The controller instruction as stated in
`this claim is one in which there's a determination whether
`to transmit or not transmit a content request from a user
`and the service provider network. And, again, that's as
`concise a definition we would provide of a controller
`instruction.
`What -- I don't think there's a real dispute
`there, either, because later in the selectively transmit
`step, they actually go to something of a similar
`construction about whether or not to transmit or do some
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:33:59
`
`09:34:02
`
`09:34:03
`
`09:34:07
`
`09:34:10
`
`09:34:14
`
`09:34:17
`
`09:34:20
`
`09:34:22
`
`09:34:27
`
`09:34:33
`
`09:34:37
`
`09:34:39
`
`09:34:43
`
`09:34:47
`
`09:34:51
`
`09:34:57
`
`09:35:01
`
`09:35:07
`
`09:35:12
`
`09:35:15
`
`09:35:15
`
`09:35:20
`
`09:35:23
`
`09:35:30
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`14
`
`other conduct. So I think we're agreement about what a
`controller instruction is generally.
`Our concise definition there is, whether to
`transmit or not is actually a decision in the controller
`instruction with regard to the content request.
`THE COURT: I'll show my technical ignorance
`here. Is there a difference between -- that matters
`between computer-executable instructions and -- which you
`have, and computer processor-executable instructions? Is
`that a meaningful difference?
`MR. GUY: You know, I haven't highlighted that,
`your Honor. You see in one claim, they actually call out
`the processor. So in claim 1 on our slide 4 here, you see
`a first processor is actually doing the generating of the
`controller instructions. And in the second one, it leaves
`it a bit open. You know, we're happy with the processor
`executable instructions. You know, we don't see a
`difference there.
`THE COURT: Okay. Do you?
`MR. JOHNSON: Yes, your Honor. I was going to
`ask, if you have questions like that, would you prefer
`that I pop up or wait for Mr. --
`THE COURT: That's fine.
`MR. JOHNSON: Okay. There's no difference,
`either. We're happy with that.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:35:32
`
`09:35:37
`
`09:35:40
`
`09:35:43
`
`09:35:47
`
`09:35:49
`
`09:35:53
`
`09:35:59
`
`09:36:04
`
`09:36:08
`
`09:36:12
`
`09:36:14
`
`09:36:17
`
`09:36:21
`
`09:36:25
`
`09:36:31
`
`09:36:37
`
`09:36:41
`
`09:36:41
`
`09:36:43
`
`09:36:44
`
`09:36:47
`
`09:36:48
`
`09:36:49
`
`09:36:51
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`15
`
`THE COURT: Okay. So I'm going to add to -- so
`far, to the defendant's processor computer -- okay. And
`if you can continue. I'm sorry.
`MR. GUY: All right. Let me go on to one of the
`things that I think will be a continuing theme in this
`claim construction, at least from our perspective, and
`that is that there were roughly three events that occurred
`which I believe inform the Court as to what the proper
`construction is.
`The first is that there was a prosecution history
`for the specification itself, which we consider there's no
`dispute that that's intrinsic evidence. In a number of
`cases, they made fairly unequivocal statements, were
`absolutely clear, unequivocal statements in the
`prosecution history, and that resulted in our belief in a
`disclaimer of the claim scope, and we're entitled to
`present that to the Court and ask the Court construe the
`term in accordance with that disclaimer.
`What also happened in this case in about 2017 in
`the fall was, there was a petition filed by Unified
`Patents, not us, and an IPR petition, and they challenged
`that petition and they were successful. And so, there
`were two events there. One of them was the argument made
`by MCM in their briefing as well as a declaration by the
`-- by their expert. And that becomes intrinsic evidence,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:36:52
`
`09:36:56
`
`09:37:01
`
`09:37:03
`
`09:37:08
`
`09:37:12
`
`09:37:15
`
`09:37:18
`
`09:37:22
`
`09:37:24
`
`09:37:27
`
`09:37:29
`
`09:37:32
`
`09:37:37
`
`09:37:39
`
`09:37:43
`
`09:37:45
`
`09:37:48
`
`09:37:51
`
`09:37:57
`
`09:38:01
`
`09:38:06
`
`09:38:09
`
`09:38:12
`
`09:38:20
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`16
`
`as well, because it is under oath, it was for the purpose
`of defeating a claim of invalidity for which they were
`successful, and it has become part of the public record of
`the patent.
`The third thing is that there was a deposition
`three weeks ago in which that same expert was deposed on
`his December 2017 declaration. It is important for the
`Court to note that the 2017 declaration was what was
`submitted to this court in this claim construction, not a
`new declaration. So it is our view that that is intrinsic
`evidence in the case because they are relying upon an
`intrinsic record that was created in the IPR, and then,
`they, again, rely on that, and nothing else, for claim
`construction.
`At slide 7, we provide the brief description of
`that. It was a 91-page declaration, and 20 pages of it
`were dedicated to claim construction issues. They made
`arguments on many of the same terms that we are in dispute
`today. So you'll see us again to talk about prosecution
`history in the spec. The fast way of talking about it is,
`we'll call it the IPR POPR, which is -- stands for
`P-O-P-R, which is the patent owner's preliminary response.
`You'll see us introducing that in our slide 7.
`So in this situation, our case law, at slide 9,
`as to why a declaration such as this becomes part of the
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:38:24
`
`09:38:28
`
`09:38:32
`
`09:38:34
`
`09:38:34
`
`09:38:38
`
`09:38:41
`
`09:38:48
`
`09:38:53
`
`09:38:59
`
`09:39:03
`
`09:39:09
`
`09:39:13
`
`09:39:17
`
`09:39:18
`
`09:39:23
`
`09:39:28
`
`09:39:31
`
`09:39:38
`
`09:39:41
`
`09:39:47
`
`09:39:52
`
`09:39:57
`
`09:40:02
`
`09:40:07
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`17
`
`intrinsic record and certainly can be relied upon. In the
`deposition, at slide 10, we provide that which is also
`provided in our reply regarding what generate meant. We
`then asked the expert, two weeks ago, their MCM's expert,
`the questions specifically about the controller
`instructions.
`Question: "Is it your understanding that in the
`context of claim 1, that the controller instructions in
`that case were to determine whether to transmit or not
`transmit a content request?" Then three asterisks there
`that was a deleted instruction, objection, and the answer
`was, "Generally, I would say yes." And that was the
`complete answer.
`So we believe that we have the proper
`construction, that the result here is quite clear that
`there really is no dispute as to what that is. Their
`expert has agreed with us basically.
`Now, if I can address their issue briefly on
`dependent claims. Before we get into whether or not a
`dependent claim under a claim differentiation situation
`should control and that we are offering a construction
`that's too narrow, it's important to recognize what the
`law is under Phillips:
`The presence of a dependent claim that adds a
`particular limitation gives rise to a presumption that the
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:40:10
`
`09:40:17
`
`09:40:20
`
`09:40:28
`
`09:40:34
`
`09:40:38
`
`09:40:40
`
`09:40:43
`
`09:40:46
`
`09:40:50
`
`09:40:57
`
`09:41:00
`
`09:41:04
`
`09:41:04
`
`09:41:09
`
`09:41:16
`
`09:41:19
`
`09:41:25
`
`09:41:30
`
`09:41:34
`
`09:41:39
`
`09:41:43
`
`09:41:48
`
`09:41:51
`
`09:41:53
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`18
`
`limitation in question is not present in the independent
`claim. Now, that means that I shouldn't take a dependent
`claim and then, read that into the broader independent
`claim. I think we all agree with that.
`Some issues are that, however, if a dependent
`claim adds the word "wherein," they are narrowing that.
`But if they add an additional term, such as "comprise,"
`they add an additional term. So that doesn't mean that a
`construction in the independent claim is necessarily
`incorrect if they added something different. It does
`narrow it, but it narrows it by adding additional an
`supplemental element, even if it happens to be under the
`same rubric of what an instruction is, or the instruction
`further comprises or comprises X. I just want to make
`sure that's clear.
`As a result, your Honor, of the combination --
`this is slide 14 for our generate construction. Again,
`you saw how we tried to limit all of the possible
`definitions of generate to merely creating or bringing
`into being to avoid this idea that it's going to be simply
`a retransmitted instruction. We agree that it could be
`processor or computer-executable instruction.
`And then, their expert agreed on the final
`portion of what a controller instruction was, which is to
`determine whether to transmit or not transmit a content
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:41:57
`
`09:42:00
`
`09:42:06
`
`09:42:10
`
`09:42:14
`
`09:42:16
`
`09:42:22
`
`09:42:29
`
`09:42:32
`
`09:42:34
`
`09:42:36
`
`09:42:39
`
`09:42:42
`
`09:42:46
`
`09:42:51
`
`09:42:52
`
`09:42:55
`
`09:43:00
`
`09:43:03
`
`09:43:08
`
`09:43:14
`
`09:43:19
`
`09:43:22
`
`09:43:25
`
`09:43:29
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`19
`
`request from a user to a service provider network. And
`there's no further comments unless there are any
`questions.
`THE COURT: Why don't we do this. I'll hear from
`plaintiff's counsel. I'm curious as to why they want to
`include the language that they have in their amended
`construction that starts after the word "instructions,"
`and then, I'll have you respond to why that's not the
`appropriate language.
`MR. GUY: Thank you, your Honor.
`THE COURT: Counsel.
`MR. JOHNSON: Your Honor, I want to start at
`slide 16. Actually, first just to get started, you
`mentioned earlier, the possibility of a tutorial. These
`demonstratives that we brought, which you saw at the one
`hearing with the color coding and the mapping of the
`various -- those are included in the slides in this
`presentation so if you want to refer back.
`THE COURT: Okay.
`MR. JOHNSON: So I have on slide 16, a comparison
`of the MCM's construction with DISH's construction,
`color-coded to match -- roughly match up. As you
`mentioned, we had generate to create or bring into being.
`MCM's position generally on that question would mean that
`going from the combination of generate and "excluding
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`09:43:33
`
`09:43:40
`
`09:43:42
`
`09:43:43
`
`09:43:47
`
`09:43:53
`
`09:43:57
`
`09:44:00
`
`09:44:03
`
`09:44:04
`
`09:44:04
`
`09:44:23
`
`09:44:40
`
`09:44:48
`
`09:44:53
`
`09:44:56
`
`09:44:59
`
`09:45:01
`
`09:45:04
`
`09:45:07
`
`09:45:10
`
`09:45:17
`
`09:45:22
`
`09:45:29
`
`09:45:35
`
`LILY I. REZNIK, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`EXHIBIT 2010
`
`
`
`20
`
`operations in which the controls instructions are only
`transmitted or are relayed" is roughly equivalent to the
`create or bring into being. So the language there in red
`was intended to address this issue of excluding just
`"transmitted or are relayed" instructions.
`So on that first the question that you had on
`that language there, MCM, I believe, would be comfortable
`going with create or bring into being as DISH has
`suggested there. And the same one, computer-executable or
`computer-processor executable.
`THE COURT: So leaving out for purpose of
`argument what would be on the slide 16 of your brief -- of
`your presentation, your argument is that the red is the
`equivalent in your proposed construction of the purple in
`theirs.
`
`MR. JOHNSON: No, sir. Our argument is that --
`THE COURT: It's the matching up of the?
`MR. JOHNSON: The original question of whether --
`of what does generate mean and whether that means create
`or bring into bein