`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`WACO DIVISION
`
`*
`
`* *
`
`MV3 PARTNERS, LLC
`
`VS.
`
`ROKU, INC.
`
`* CIVIL ACTION NO. W-18-CV-308
`*
`*
`
`July 19, 2019
`
`BEFORE THE HONORABLE ALAN D ALBRIGHT, JUDGE PRESIDING
`MARKMAN HEARING
`
`APPEARANCES:
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`For the Plaintiff:
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`For the Defendant:
`
`J. Mark Mann, Esq.
`Andy W. Tindel, Esq.
`Mann Tindel Thompson
`300 W. Main St.
`Henderson, TX 75652
`
`Jonathan K. Waldrop, Esq.
`Rodney R. Miller, Esq.
`Daniel C. Miller, Esq.
`Kasowitz Benson Torres LLP
`1349 West Peachtree Street N.W.
`Suite 1500
`Atlanta, GA 30309
`
`Craig D. Cherry, Esq.
`Haley & Olson, P.C.
`100 N Ritchie Road, Suite 200
`Waco, TX 76712
`
`Richard D. Milvenan, Esq.
`McGinnis Lochridge and Kilgore
`600 Congress Avenue, Suite 2100
`Austin, TX 78701
`
`Alexander J. Hadjis, Esq.
`Lisa M. Mandrusiak, Esq.
`Michael D. West, Esq.
`Oblon, McClelland, Maier &
` Neustadt, LLP
`1940 Duke Street, 11th Floor
`Alexandria, VA 22314
`
`Page 1 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 2 of 60
`
`2
`
`Court Reporter:
`
`Kristie M. Davis
`United States District Court
`PO Box 20994
`Waco, Texas 76702-0994
`
`Proceedings recorded by mechanical stenography, transcript
`
`produced by computer-aided transcription.
`
`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
`
`Page 2 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 3 of 60
`
`3
`
`(July 19, 2019, 9:20 a.m.).
`
`THE BAILIFF: All rise.
`
`THE COURT: Good morning, everyone. Thank you. You may
`
`be seated.
`
`DEPUTY CLERK: Court calls Waco Case 18-CV-308, MV3
`
`Partners, LLC vs. Roku, Inc. for Markman hearing.
`
`THE COURT: I apologize for the confusion on the time when
`
`we were getting started this morning.
`
`Am I on?
`
`DEPUTY CLERK: Yeah. It's just not picking up very well.
`
`THE COURT: I'm pretty sure that if you need any evidence
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`that the federal government goes with the low bidder on
`
`13
`
`everything when they're building...
`
`14
`
`At any rate, good morning everyone. If counsel for
`
`15
`
`plaintiff would stand up and introduce themselves and then same
`
`16
`
`for the defendant.
`
`17
`
`18
`
`Mr. Mann?
`
`MR. MANN: Thank you, Your Honor. Good morning. Mark
`
`19
`
`Mann for the plaintiffs, Your Honor, and my colleagues with me
`
`20
`
`today are John Waldrop, Andy Tindel, Dan Miller, Rodney Miller,
`
`21
`
`Craig Cherry, and then also in the gallery, Your Honor, we have
`
`22
`
`Wayne Barr who is the general counsel for MV3 here and Dr. Dan
`
`23
`
`Schoenfeld who is our expert for tutorial.
`
`24
`
`THE COURT: Okay. Well, I appreciate your client being
`
`25
`
`here. I think that's always a great thing when that happens.
`
`Page 3 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 4 of 60
`
`4
`
`And Mr. Milvenan?
`
`MR. MILVENAN: Thank you, Your Honor. Our lineup today
`
`includes myself Rick Milvenan from McGinnis Lochridge. I'm
`
`joined by Alex Hadjis and Lisa Mandrusiak and Michael West who
`
`are all from the Oblon firm in Alexandria, Virginia. Our
`
`client is here. That's Joe Hollinger. He's Roku's vice
`
`president of litigation and intellectual property and we're
`
`also joined by our expert witness Dr. Robert Akl.
`
`THE COURT: Very good. Again I appreciate the clients who
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`take the time to be here. I think that's a great thing.
`
`11
`
`Do we -- Mr. Mann, I'll call on you first. Who is
`
`12
`
`primarily going to be speaking just so I have a cheat sheet?
`
`13
`
`MR. MANN: Your Honor, we're going to have -- John Waldrop
`
`14
`
`will direct our tutorial if that's okay. And we planned on
`
`15
`
`doing it question and answer with the expert talking a lot more
`
`16
`
`than the lawyer.
`
`17
`
`18
`
`THE COURT: Okay.
`
`MR. MANN: And then Dan Miller and Rodney Miller will be
`
`19
`
`splitting time doing the terms.
`
`20
`
`THE COURT: I like it when more than one lawyer has the
`
`21
`
`same last name.
`
`22
`
`23
`
`(Laughter.)
`
`THE COURT: My chance of getting it wrong goes down a
`
`24
`
`little bit.
`
`25
`
`MR. MANN: That's why we lined it up this way, Your Honor.
`
`Page 4 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 5 of 60
`
`5
`
`THE COURT: Wasn't there a movie where they show up and
`
`everyone has the same last name?
`
`MR. MANN: It was...
`
`THE COURT: Men in Black or --
`
`MR. MANN: Schwarzenegger and I forgot who was on the
`
`other side. Danny DeVito.
`
`THE COURT: I think it'd be great if everyone just had the
`
`same last name and I could --
`
`MR. MANN: I think that's how -- there was a boxer from
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`Marshall who all his kids -- he named them all -- all of them
`
`11
`
`had the same name George Foreman.
`
`12
`
`So, anyway, and then Dr. Schoenfeld will be doing our
`
`13
`
`tutorial.
`
`14
`
`15
`
`THE COURT: Very good.
`
`MR. MILVENAN: Your Honor, in accordance with your
`
`16
`
`suggestions back in February in this case I'm going to
`
`17
`
`introduce Dr. Akl but then we were going to let him just not
`
`18
`
`proceed in Q and A fashion but just go through the slide show
`
`19
`
`to move things along.
`
`20
`
`THE COURT: Well, I'll miss getting to hear your voice,
`
`21
`
`but however you want to do it will be fine with me.
`
`22
`
`MR. MILVENAN: Thank you. And then in terms of the
`
`23
`
`Markman presentation -- and I guess we'll go by their -- so
`
`24
`
`that we can all go by the same name, Alex Milvenan, Lisa
`
`25
`
`Milvenan and myself will all handle different aspects of that.
`
`Page 5 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 6 of 60
`
`6
`
`THE COURT: Well, I would go with a different name than
`
`Milvenan.
`
`(Laughter.)
`
`MR. MILVENAN: Smith then.
`
`THE COURT: Miller's a lot easier. Mann's a lot easier.
`
`Milvenan's tough, but your name hears more fame primarily
`
`because of your wife's success.
`
`(Laughter.)
`
`MR. MILVENAN: It's good to be known for something.
`
`THE COURT: Mr. Mann?
`
`MR. MANN: Yes, Your Honor.
`
`THE COURT: It's your turn.
`
`MR. MANN: Thank you, Your Honor. Mr. Waldrop I think
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`will start off with the tutorial if that's okay.
`
`15
`
`16
`
`17
`
`18
`
`THE COURT: Absolutely.
`
`MR. TINDEL: Your Honor, if I may approach.
`
`THE COURT: Sure.
`
`MR. TINDEL: We've got some hard copies of our technology
`
`19
`
`tutorial in our PowerPoint presentation.
`
`20
`
`THE COURT: I was planning on not taking down the tutorial
`
`21
`
`unless you all -- we can, but Judge Yeakel doesn't. I'm happy
`
`22
`
`to or not to. I don't care.
`
`23
`
`MR. HADJIS: Your Honor, we'd be happy with no record on
`
`24
`
`the tutorial.
`
`25
`
`THE COURT: Well, then no record it will be.
`
`Page 6 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 7 of 60
`
`7
`
`Let me put on the record -- I think I made this clear, but
`
`I have reviewed everything that you guys have submitted both in
`
`writing and in audio format. I mean, I'm sure that I'll find
`
`this very helpful, but I have really gone through everything
`
`that you all submitted so I'm pretty up to speed already.
`
`(Tutorial held from 9:27 to 10:25.)
`
`THE COURT: The Court has -- as I think I've told you I
`
`had the good fortune to go over this stuff a click ahead, and
`
`also, for better or worse, most of what we're dealing with here
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`falls within areas of cases that I got to handle for different
`
`11
`
`reasons and so I'm going to tell you all that with respect to
`
`12
`
`the following claim terms: Television signal, docking port,
`
`13
`
`accepted in and configured to accept, adaptive circuitry and
`
`14
`
`determining, which is G, determining, based on the validity of
`
`15
`
`the user, that the received first media content is permitted to
`
`16
`
`be provided to the display device, I'm going to apply a plain
`
`17
`
`and ordinary meaning to those claim terms.
`
`18
`
`I have -- the briefing was outstanding which is why I
`
`19
`
`don't know that it would help you all that much to do
`
`20
`
`arguments. I mean, it really was very good, but I've been
`
`21
`
`through it all really carefully and I would prefer to use our
`
`22
`
`time over the ones that I do have questions about. I think
`
`23
`
`that would be more helpful to the Court. Which are mobile set
`
`24
`
`top box, which is D. F which is determining -- I won't read
`
`25
`
`the whole thing, but it's the one that begins with determining
`
`Page 7 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 8 of 60
`
`8
`
`the native display resolution. And H, which is multicast
`
`broadcasts.
`
`And I will point out to the parties that my concern with
`
`mobile set top box and with multicast broadcasts are the same
`
`which are -- is what I want to hear from you guys about is, as
`
`the doctor said from the witness stand, you know, mobile was
`
`known, set top box was known, but if mobile set top box is
`
`something I need to construe, then that's important, and I
`
`think less so with multicast broadcasts. I think it's more
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`likely I think that that's something that was probably pretty
`
`11
`
`well understood. But I'm not in that -- you know, I'm not a
`
`12
`
`Ph.D. so I don't know. I'm more likely -- well, I think I know
`
`13
`
`what multicast broadcasts means, but with regard to mobile set
`
`14
`
`top box, I definitely want to understand what -- I want to come
`
`15
`
`up with the correct claim construction of that, and then also
`
`16
`
`F, the determining the native display resolution.
`
`17
`
`I will point out as I -- the reason I called you all the
`
`18
`
`other day was it is the Court's opinion with respect to the
`
`19
`
`claim construction for Claim Term G that determining, based on
`
`20
`
`the invalidity of the user, that the received first media
`
`21
`
`content is permitted to be provided to display device, I think
`
`22
`
`all of those -- every bit of that I had some concern about
`
`23
`
`whether or not there was some fight that you all would raise
`
`24
`
`over what was meant by based on the validity of the user, but
`
`25
`
`you didn't, and so I think we should be in good shape on that
`
`Page 8 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 9 of 60
`
`9
`
`and the jury should be able to understand that. I understand
`
`it for sure.
`
`So with that being said, I'll take up mobile set top box.
`
`Whoever would like to start is free to do so.
`
`And the first of the Mr. Millers?
`
`MR. DANIEL MILLER: I wouldn't say I'm first, but I'm one
`
`of the Mr. Millers. I'm the first one up here. I will say
`
`that.
`
`THE COURT: I'll say also after the trial I had this week
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`I hope there's no crying.
`
`11
`
`12
`
`13
`
`(Laughter.)
`
`MR. DANIEL MILLER: No guarantees, Your Honor.
`
`THE COURT: I think I'm going to have to impose a rule
`
`14
`
`that if anyone cries during opening or closing argument I'm
`
`15
`
`going to put them in jail. I should have said it before we
`
`16
`
`started and I didn't and that was my fault, but there'll be no
`
`17
`
`crying during the Markman hearing or during opening or
`
`18
`
`closings.
`
`19
`
`20
`
`MR. DANIEL MILLER: Even from boredom?
`
`THE COURT: Crying should be on the inside. And so if you
`
`21
`
`would be so kind, Mr. Miller, as to tell me in your PowerPoint
`
`22
`
`where mobile set top box is at, that would be helpful.
`
`23
`
`MR. DANIEL MILLER: Sure. So I think we'll begin on
`
`24
`
`Slide -- give me a second, Your Honor. I believe it's Slide 59
`
`25
`
`is where we begin with mobile set top box.
`
`Page 9 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 10 of 60
`
`10
`
`(Off-the-record discussion.)
`
`MS. MANDRUSIAK: We don't have a copy.
`
`MR. DANIEL MILLER: Oh, come on, Andy.
`
`THE COURT: I could give you Judge Nowlin's copy.
`
`(Laughter.)
`
`MR. DANIEL MILLER: So I will say I'm looking at Slide 60,
`
`61 and 62. And I think this is probably just some sort of
`
`mixup, but we've had like three separate constructions from
`
`Roku. The first they offered I just highlight. You see they
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`offered it as television set. The second they offered in their
`
`11
`
`responsive claim construction brief where they said they would
`
`12
`
`be willing to replace the television set with display device,
`
`13
`
`but then in the joint claim construction brief, I don't know if
`
`14
`
`it was an intentional change or if it was just an omission, but
`
`15
`
`it says -- it says television set and then the second one is
`
`16
`
`display device. So I'm not sure which one we're --
`
`17
`
`THE COURT: Maybe I can find out from Roku which they're
`
`18
`
`going to be arguing or both.
`
`19
`
`20
`
`MR. DANIEL MILLER: Do you guys like one of them?
`
`MR. HADJIS: Your Honor, we made it very clear in our
`
`21
`
`brief after we submitted our initial proposed interpretation
`
`22
`
`that the point that had been made about television set versus
`
`23
`
`display device was a point of which we could agree with MV3 and
`
`24
`
`we changed that construction.
`
`25
`
`THE COURT: So that was the way I took it too was that you
`
`Page 10 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 11 of 60
`
`11
`
`guys were saying essentially they're the same thing.
`
`MR. HADJIS: That is correct. We are happy to include in
`
`our proposed constructions --
`
`THE COURT: I got it.
`
`MR. HADJIS: -- the term "display device." So it
`
`shouldn't be an issue. It isn't an issue from our perspective
`
`other than there is certainly a history here where we started
`
`at one point, and to resolve an issue we ended up at the point
`
`where we are right now.
`
`THE COURT: Well, that's all I care about is --
`
`MR. DANIEL MILLER: Where we are.
`
`THE COURT: -- where we are. And so for purposes of -- if
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`I were to go with defendant's construction, the defendant and
`
`14
`
`the plaintiff are both agnostic as to whether the word "display
`
`15
`
`device" or "television set" is used. Is that fair?
`
`16
`
`17
`
`MR. DANIEL MILLER: So with --
`
`MR. HADJIS: That is correct. And I do want to check what
`
`18
`
`counsel is referring to when it comes to television signal.
`
`19
`
`MR. DANIEL MILLER: I thought in the joint claim
`
`20
`
`construction --
`
`21
`
`22
`
`(Conference between counsel.)
`
`MR. HADJIS: If this is in the joint claim construction
`
`23
`
`statement, it's somebody's typo. Okay? And it shouldn't be
`
`24
`
`there.
`
`25
`
`THE COURT: Well, you're saying if this is here, and I
`
`Page 11 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 12 of 60
`
`12
`
`don't know what the "this" is.
`
`MR. HADJIS: Television set. It should be display
`
`universally through --
`
`THE COURT: That was the point Mr. Miller was making I
`
`think.
`
`MR. HADJIS: That's correct. And --
`
`THE COURT: And we want display.
`
`MR. HADJIS: Somehow that made it in as a typo.
`
`THE COURT: I bet it was the plaintiff's fault.
`
`MR. HADJIS: They did create the document and submit it.
`
`MR. DANIEL MILLER: I'm always happy to have it be my
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`fault. Most things are.
`
`13
`
`THE COURT: Okay. So just to make clear, our fight is
`
`14
`
`between plaintiff's position which is no construction is needed
`
`15
`
`and the defendant's position that I have -- I should assume I'm
`
`16
`
`going to hear the defendant say that the word should be display
`
`17
`
`device.
`
`18
`
`MR. HADJIS: So the dispute, there are two. One is about
`
`19
`
`whether a construction is needed or not.
`
`20
`
`21
`
`22
`
`23
`
`THE COURT: I got that.
`
`MR. HADJIS: And that's the first dispute.
`
`THE COURT: Uh-huh.
`
`MR. HADJIS: The second dispute is the definitional
`
`24
`
`interpretation of mobile set top box, and for that we are
`
`25
`
`agreeable to use display device in our proposed definition.
`
`Page 12 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 13 of 60
`
`13
`
`Everything else about our proposed definition is proper and
`
`correct and should be the conclusion for that term, but
`
`television can be substituted with display device.
`
`THE COURT: Okay. We're on the record. Mr. Miller, it's
`
`your turn now. But I don't need any clarification beyond that.
`
`MR. DANIEL MILLER: All right. I think we're ready to go
`
`then. We don't believe construction's necessary in the context
`
`at least of Claims 1 and 32 where it just recites a mobile set
`
`top box comprising and then it lists how it works, all the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`components of it. If the Court does think that a construction
`
`11
`
`is necessary at least with regard to Claim 30, which is the
`
`12
`
`method claim, we believe that a broader construction is
`
`13
`
`required, at least as broad a construction as is necessary to
`
`14
`
`include all of the functionality defined in Claims 1 and 32 if
`
`15
`
`that makes sense.
`
`16
`
`THE COURT: Well, here is the Court's concern. It seems
`
`17
`
`to me that -- do you have any debate -- you probably don't,
`
`18
`
`Mr. Miller. Maybe the defendant does. I doubt you do -- that
`
`19
`
`as of the time of filing the patent set top box was pretty
`
`20
`
`well-known? That we wouldn't be fighting over what set top box
`
`21
`
`was?
`
`22
`
`23
`
`MR. DANIEL MILLER: That is correct.
`
`THE COURT: And so what the fight is over, as your
`
`24
`
`professor said, he knew what mobile meant. I know what mobile
`
`25
`
`means. He knew what set top box was. I know what a set top
`
`Page 13 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 14 of 60
`
`14
`
`box is. The question is what is a mobile set top box? And so
`
`my concern about the plaintiff's position that no construction
`
`is needed, if your person didn't know -- didn't believe in --
`
`I'm sorry. That in 2009 that it was known in the industry what
`
`that meant, why wouldn't I need to give a construction?
`
`MR. DANIEL MILLER: I think at least with regards to Claim
`
`1 and 32 the claim itself defines what it is.
`
`THE COURT: Okay. Then let's look at that and have you
`
`walk me through that. Because before your professor said that,
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`I thought I did know what it was as well. And so -- because,
`
`11
`
`you know, the way I look at things is, you know, there's
`
`12
`
`someone who's probably a friend of mine right now sitting
`
`13
`
`drafting these claims not knowing what y'all are going to be
`
`14
`
`fighting over when they're trying to say they don't infringe
`
`15
`
`and you're trying to say they do and later when they're trying
`
`16
`
`to say something is invalid and you're trying to say, no, it's
`
`17
`
`not because it -- and all that, but my guess is that when the
`
`18
`
`drafter of this wrote down a mobile set top box, I mean, he --
`
`19
`
`you know, I think he probably assumed that those words would be
`
`20
`
`pretty understandable.
`
`21
`
`MR. DANIEL MILLER: Yeah. And I think if you look at
`
`22
`
`Claim 1 it defines what is included within mobile set top box
`
`23
`
`or you have the docking port. You have the mobile device
`
`24
`
`input. You have television signal. You have a video processor
`
`25
`
`and then you -- it executes upconversion. It walks through
`
`Page 14 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 15 of 60
`
`15
`
`what it does and what it is.
`
`THE COURT: And so perhaps the better question I should
`
`have asked your person but he was just doing a tutorial and it
`
`wouldn't -- is, you know, whether one skilled in the art in
`
`your opinion would be able by reading Claim 1 which does
`
`exactly what you said a mobile set top box comprising, and I'm
`
`always -- I'm always concerned about giving a claim
`
`construction when the inventor's taken the time to say -- to
`
`explain what the mobile set top box -- or not in this case. It
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`could be anything, but in this case he has told the world what
`
`11
`
`a mobile set top box is it seems to me in pretty great detail.
`
`12
`
`And so -- but maybe that -- I'm sure I'll hear from the
`
`13
`
`defendant that that still doesn't help explain what a mobile
`
`14
`
`set top box is. It comprises the following, but what doesn't
`
`15
`
`need -- I guess I'm rambling, but I'm trying to figure this
`
`16
`
`out. Maybe go all the way back to does mobile set top box, is
`
`17
`
`it -- is it ambiguous in a manner that needs to be construed?
`
`18
`
`MR. DANIEL MILLER: We don't believe it is, but if you
`
`19
`
`want to construe it because there is a Claim 30. I mean, I
`
`20
`
`don't want -- I want the Court to understand there's a Method
`
`21
`
`Claim 30 that separately calls out a mobile set top box in the
`
`22
`
`first element. And so if the Court does want to construe it,
`
`23
`
`our concern with Roku's construction is that it -- it seems to
`
`24
`
`be limiting in some ways that we think is too limited. We
`
`25
`
`think it imports limitations into -- into an understanding of a
`
`Page 15 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 16 of 60
`
`16
`
`mobile set top box. We think our definition --
`
`THE COURT: Where in 30 is there a mobile set top box?
`
`MR. DANIEL MILLER: So if you read 30, the first element
`
`says --
`
`THE COURT: Oh, here it is. Querying a display. I
`
`thought -- I just saw mobile computing device, but it goes down
`
`and says querying a -- so the court reporter knows what I'm
`
`saying -- I don't how to say it exactly. Querying, if that's
`
`it. Or querying a display device that is separate from the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`mobile set top box the display device and then it goes on.
`
`11
`
`Okay.
`
`12
`
`MR. DANIEL MILLER: It's also in the first element where
`
`13
`
`it says receiving first media content from a mobile computing
`
`14
`
`device.
`
`15
`
`16
`
`THE COURT: That's correct. Yes.
`
`MR. DANIEL MILLER: So our definition, if the Court seeks
`
`17
`
`to construe it, is that it be hardware and/or software that
`
`18
`
`combines functionality of a set top box and a mobile
`
`19
`
`communication system. And you'll see that -- you remember back
`
`20
`
`to when you asked Dr. Schoenfeld his understanding, he said
`
`21
`
`that he knew what mobile was. He knew what a set top box was
`
`22
`
`and he knew the combined functionality of those two things.
`
`23
`
`THE COURT: If -- I want to ask you about the defendant's
`
`24
`
`position and then I'll let them respond to this. If we took
`
`25
`
`away the word "mobile," would -- let me see how I can break
`
`Page 16 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 17 of 60
`
`17
`
`this down. For the defendant's position -- and this is hard
`
`because maybe I should go with the defendant first and ask him
`
`and then -- why don't we do this? Let me let the defendant
`
`counsel -- let me ask him and then I'll let you respond.
`
`MR. DANIEL MILLER: Thank you, Your Honor.
`
`THE COURT: Because I think I know what I'm trying to ask.
`
`MR. HADJIS: So, Your Honor, we split up the terms and
`
`with your initial statements I think you've Xed me out from
`
`today's argument.
`
`THE COURT: Well, because those were the really hard ones.
`
`MR. HADJIS: Well, I'd love to talk about them.
`
`THE COURT: I understand.
`
`MR. HADJIS: Ms. Mandrusiak will be handling this term.
`
`THE COURT: Yes, ma'am.
`
`MS. MANDRUSIAK: Good morning.
`
`THE COURT: So do I understand your position with regard
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`to mobile set top box -- here's the way I read it, and you can
`
`18
`
`correct me, that the first half of it is a device that converts
`
`19
`
`an input television signal to an output signal to display
`
`20
`
`device. Is that what the set top box is -- is that your
`
`21
`
`construction of set top box?
`
`22
`
`MS. MANDRUSIAK: That's exactly right, Your Honor. The
`
`23
`
`first half of the construction is directed to traditional set
`
`24
`
`top box functionality.
`
`25
`
`THE COURT: Okay. And then you are saying that to make it
`
`Page 17 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 18 of 60
`
`18
`
`a mobile set top box that it also permits content from a mobile
`
`computing device to be displayed on the same display device to
`
`which a device is connected. That's what makes it mobile.
`
`MS. MANDRUSIAK: Yes, Your Honor.
`
`THE COURT: And where do you -- specifically could you
`
`point out where -- you probably have it in your Markman
`
`presentation. Could you get me to that page and explain to me
`
`where -- because I'm going to ask when I get Mr. Miller -- the
`
`first Mr. Miller up here to find out whether or not what his
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`arguments are about the half of your construction is that deals
`
`11
`
`with set top box and then I'm going to ask him to respond to
`
`12
`
`your argument of why I need to add all the verbiage that you
`
`13
`
`have for what makes it a mobile set top box. So can you get me
`
`14
`
`to where that would be in your PowerPoint?
`
`15
`
`16
`
`17
`
`MS. MANDRUSIAK: Certainly. I'll direct you to Slide 54.
`
`THE COURT: Okay. Okay. I'm there.
`
`MS. MANDRUSIAK: And so as described in the patent, the
`
`18
`
`mobile set top box is --
`
`19
`
`20
`
`THE COURT: You need to slow down just a little bit.
`
`MS. MANDRUSIAK: Is part traditional set top box, and our
`
`21
`
`construction simply spells out what the functionality of that
`
`22
`
`set top box is. And our construction is entirely consistent
`
`23
`
`with how set top boxes were known in the art. And Dr. Akl's
`
`24
`
`declaration, which was Exhibit 3 to our opening brief at
`
`25
`
`Paragraph 90, explains what set top box is with dictionary
`
`Page 18 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 19 of 60
`
`19
`
`definitions, but, more importantly, Roku's construction is
`
`directly consistent with how the patent itself describes
`
`functionality of set top box, and that's the second column on
`
`Slide 54 here. The patent says that the set top box receives
`
`the television signal. It reformats it and then sends it to
`
`television for display.
`
`THE COURT: Okay. But what I -- okay. What I really care
`
`about is what in the patent specification you are relying on
`
`that -- I want you to address two things: One, what -- why --
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`and I'll ask them in reverse order. I do want -- I want you to
`
`11
`
`address second why Claim 1 doesn't teach well enough what a
`
`12
`
`mobile set top box is, but first I'd like you to address what
`
`13
`
`it is in the patent that tells me I've got to construe, to turn
`
`14
`
`a set top box into a mobile set top box, I have to turn that
`
`15
`
`device into something that also permits content from a mobile
`
`16
`
`computing device to be displayed on the same display device to
`
`17
`
`which the device is connected. Where does that come from in
`
`18
`
`the patent?
`
`19
`
`MS. MANDRUSIAK: Okay. So I think that that most clearly
`
`20
`
`comes from the claims themselves.
`
`21
`
`22
`
`23
`
`THE COURT: Okay.
`
`MS. MANDRUSIAK: We can look at Claim 1.
`
`THE COURT: Okay. Well, if it's in Claim 1, then why do I
`
`24
`
`need to tell it to the jury?
`
`25
`
`MS. MANDRUSIAK: Because as Dr. Schoenfeld said, a mobile
`
`Page 19 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 20 of 60
`
`20
`
`set top box was an unknown term at the time.
`
`THE COURT: Well, but he -- but the point of Claim 1 is to
`
`teach those skilled in the art what it is and so -- and I know
`
`I sound like I'm arguing with you. I'm trying to help myself
`
`out here. I don't mean to sound like I'm arguing. But again
`
`what I -- you want me to -- for example, the way I'm reading
`
`this now is if we take out the first half of yours -- your
`
`proposed construction and just said a mobile set top box is a
`
`set top box that -- because you've told me that's what you
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`meant by the first half, that also permits content, where does
`
`11
`
`that come from? Why do I have to define it to mean that? And
`
`12
`
`if it is in Claim 1, then I'm going to ask the plaintiff if
`
`13
`
`it's in Claim 1 why they're unhappy with it.
`
`14
`
`MS. MANDRUSIAK: Okay. So I think the reason that you
`
`15
`
`have to do it is that mobile set top box defines itself by
`
`16
`
`using the term "mobile set top box." It's included twice in
`
`17
`
`the body that is described in the functioning.
`
`18
`
`THE COURT: No, ma'am. I asked a bad question. Why do
`
`19
`
`I -- why do I have to use what you have suggested? Where does
`
`20
`
`the patent limit me to say that that -- your proposed
`
`21
`
`construction for what turns a set top box into a mobile set top
`
`22
`
`box, why do I have to use your proposed construction to do
`
`23
`
`that? Where does that come from in the patent? And if my
`
`24
`
`question isn't clear, it may not be, but I'll ask it a
`
`25
`
`different way.
`
`Page 20 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 21 of 60
`
`21
`
`MS. MANDRUSIAK: Okay. Well, I mean, I think I kind of
`
`have to repeat the same answer that mobile set top box combines
`
`that functionality and our construction explains that combined
`
`functionality.
`
`THE COURT: Okay. Anything else?
`
`MS. MANDRUSIAK: Not at this time.
`
`THE COURT: And then if you would also go through and
`
`explain why the Claim 1 the way it claims a mobile set top box
`
`comprising isn't sufficient to teach one skilled in the art
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`what it means such that it would have its plain and ordinary
`
`11
`
`meaning within the context of the entire Claim 1.
`
`12
`
`MS. MANDRUSIAK: Okay. Well, I think that the reason
`
`13
`
`there that we can't go on plain and ordinary meaning is because
`
`14
`
`it is used in the claim itself, which makes it challenging to
`
`15
`
`understand, and the fact that plaintiffs have suggested that
`
`16
`
`it's plain and ordinary meaning but there's a dramatic
`
`17
`
`difference between the two parties' constructions illustrating
`
`18
`
`that plain and ordinary meaning is not sufficient here. It
`
`19
`
`would not resolve the dispute. And the primary problem there
`
`20
`
`is that plaintiffs have suggested that a mobile set top box can
`
`21
`
`be hardware and/or software, but the specification explains
`
`22
`
`that it is a device.
`
`23
`
`24
`
`THE COURT: Well, the set top box is a device.
`
`MS. MANDRUSIAK: So that illustrates the problem with
`
`25
`
`trying to adopt the plain and ordinary meaning because
`
`Page 21 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 22 of 60
`
`22
`
`plaintiff is going to say it's software.
`
`THE COURT: But it doesn't because the plaintiff's
`
`proposal says hardware and/or software that combines the
`
`functionality of a set top box which is the set top box part
`
`and a mobile communication system.
`
`MS. MANDRUSIAK: Our concern with that is that the or
`
`software means it could be software alone.
`
`THE COURT: Okay. So your position is that it could
`
`not -- it could not be software that combines the functionality
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`of a set top box and a mobile communication system?
`
`11
`
`12
`
`MS. MANDRUSIAK: Correct. Not software alone. No.
`
`THE COURT: Okay. I'll raise that with the -- and so do
`
`13
`
`you have anything else you'd like to say about why Claim Term 1
`
`14
`
`doesn't sufficiently teach one skilled in the art of what a
`
`15
`
`mobile set top box is? Do you have any other argument you'd
`
`16
`
`like to make with respect to that?
`
`17
`
`MS. MANDRUSIAK: Well, the specification does explain that
`
`18
`
`the mobile set top box combines functionality of the set top
`
`19
`
`box a mobile communication system which is entirely consistent
`
`20
`
`with Roku's proposal.
`
`21
`
`22
`
`THE COURT: Okay. Anything else?
`
`MS. MANDRUSIAK: I would just reiterate that plain and
`
`23
`
`ordinary meaning can't apply here because Dr. Schoenfeld and
`
`24
`
`both parties agree that this is an unknown term. So plain and
`
`25
`
`ordinary meaning for an unknown term just doesn't exist.
`
`Page 22 of 60
`
`Koss 2010
`IPR2021-00297
`
`
`
`Case 6:18-cv-00308-ADA Document 83 Filed 07/22/19 Page 23 of 60
`
`23
`
`THE COURT: Well, I don't know that that's actually true.
`
`I mean, certainly I think -- I find it hard to believe that an
`
`expert couldn't, and I'm not going to ask either of the experts
`
`because I don't want -- I mean, it wouldn't be fair, but my
`
`guess is that your expert who's super bright and super
`
`experienced would