Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 1 of 85
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`) AU:22-CV-00058-LY
`)
`
`FOR THE DEFENDANT:
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
` 1
` 2
` 3 IDENTITY SECURITY LLC,
` 4 Plaintiff,
` 5 v.
` 6 APPLE, INC.,
`) MARCH 9, 2022
` 7 Defendant.
`**********************************************
` 8
`TRANSCRIPT OF CLAIMS CONSTRUCTION HEARING
`BEFORE THE HONORABLE LEE YEAKEL
` 9
`**********************************************
` 10
`FOR THE PLAINTIFF:
`JOHN P. LAHAD
`BRIAN D. MELTON
` 11
`MENG XI
`TAYLOR C. HOOGENDOORN
` 12
`SUSMAN GODFREY, L.L.P.
`1000 LOUISIANA STREET, SUITE 5100
` 13
`HOUSTON, TEXAS 77002
` 14
`J. STEPHEN RAVEL
`KELLY HART & HALLMAN LLP
` 15
`303 COLORADO STREET, SUITE 2000
`AUSTIN, TEXAS 78701
` 16
`COSMIN MAIER
` 17
`LESLIE M. SPENCER
`EDWARD GEIST
` 18
`AMY WANN
`MADELINE ELISABETH BYRD
` 19
`JOZE WELSH
`DESMARAIS LLP
` 20
`230 PARK AVENUE
`NEW YORK, NEW YORK 10169
` 21
` 22 COURT REPORTER:
`ARLINDA RODRIGUEZ, CSR
`501 WEST 5TH STREET, SUITE 4152
`AUSTIN, TEXAS 78701
` 23
`(512) 391-8791
` 24
`Proceedings recorded by computerized stenography, transcript
` 25 produced by computer.
`
`))
`
`) AUSTIN, TEXAS
`)
`
`))
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 2 of 85
`
`2
`
`10:31:26
`
`10:31:26
`
`10:31:28
`
`10:31:30
`
`10:31:34
`
`10:31:34
`
`10:31:36
`
`10:31:36
`
`10:31:38
`
`10:31:41
`
`10:31:45
`
`10:31:48
`
`10:31:54
`
`10:31:55
`
`10:31:58
`
`10:31:59
`
`10:32:03
`
`10:32:06
`
`10:32:07
`
`10:32:09
`
`10:32:12
`
`10:32:15
`
`10:32:20
`
`10:32:24
`
`10:32:27
`
` 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
`
`(Open court)
`THE COURT: All right. We are back. I presume
`you-all have discussed how you want to present and what order
`you want to proceed in and what have you? Am I correct,
`Mr. Ravel?
`MR. RAVEL: We have, Your Honor.
`MR. MELTON: Yes, Your Honor.
`THE COURT: All right. Tell me about it.
`MR. MELTON: Well, there's two sets of terms,
`Your Honor, and I -- on the ones where they bear the burden,
`the indefiniteness argument, we're going to have them go first,
`we'll go second. And then on the second set of terms, we'll go
`first, and they'll go second.
`THE COURT: All right. Work for you, Mr. Ravel?
`MR. RAVEL: Your Honor, that's correct. And I think
`we have two other agreements. And that is that we'll -- an
`hour and a half per side, if that works for you.
`THE COURT: It does.
`MR. RAVEL: And I think both sides think some
`rebuttal would be useful, if you can stand it.
`THE COURT: Well, I usually don't have rebuttal, but
`let's get through the first phase, and then we'll see about
`rebuttal. Usually, because nobody has the burden of proof on
`claim construction, I just hear from each side and make my
`decision that way. But, as I've told you-all before, I'm not a
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 3 of 85
`
`3
`
`10:32:31
`
`10:32:35
`
`10:32:38
`
`10:32:39
`
`10:32:40
`
`10:32:43
`
`10:32:44
`
`10:32:44
`
`10:32:46
`
`10:32:50
`
`10:32:56
`
`10:33:02
`
`10:33:06
`
`10:33:10
`
`10:33:12
`
`10:33:14
`
`10:33:14
`
`10:33:17
`
`10:33:21
`
`10:33:27
`
`10:33:31
`
`10:33:31
`
`10:33:34
`
`10:33:37
`
`10:33:40
`
` 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
`
`one-size-fits-all, so let's get through the initial part of
`claim construction, and then I'll see if I think rebuttal would
`be helpful.
`MR. MELTON: That's fair.
`MR. RAVEL: Judge, may I introduce my team before we
`go forward?
`THE COURT: You may.
`MR. RAVEL: Steve Ravel from the Kelly Hart Office
`here in Austin. You've already met our client and our tutor.
`With me from the Desmarais Firm are Maddy Byrd,
`Joze Welsh, Cosmin Maier, Leslie Spencer, Ed Geist and
`Amy Wann, three of whom this is their first ever live Markman.
`And Mr. Maier will be our primary spokesman.
`THE COURT: There is an argument that Markman
`hearings are never "live."
`(Laughter)
`THE COURT: They're just a legal device to allow you
`to attempt to instill reversible error in a court's record so,
`if the trial does not go well, you have a sleeping entity out
`there that can be resurrected in Washington to the Federal
`Circuit.
`
`MR. RAVEL: Thanks for the tip, Judge. The next time
`I make that speech, it will be their first "in-person" Markman.
`THE COURT: Okay. There you go..
`MR. MELTON: Judge, I'm Brian Melton. This is John
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 4 of 85
`
`4
`
`10:33:43
`
`10:33:51
`
`10:33:53
`
`10:33:57
`
`10:34:01
`
`10:34:02
`
`10:34:06
`
`10:34:08
`
`10:34:11
`
`10:34:13
`
`10:34:16
`
`10:34:16
`
`10:34:19
`
`10:34:22
`
`10:34:25
`
`10:34:29
`
`10:34:32
`
`10:34:36
`
`10:34:41
`
`10:34:46
`
`10:34:51
`
`10:34:55
`
`10:34:57
`
`10:34:58
`
`10:34:59
`
` 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
`
`Lahad, this is Meng Xi, and Taylor Hoogendoorn. We're all from
`Susman Godfrey out of the Houston office. With us is Aure Tan,
`our client, and the inventor on all of the patents that we're
`going to be talking about today. And Matt Boles here is in
`charge of making sure all this works.
`THE COURT: Well, I compliment you for not bringing
`my former law clerk that works with you --
`MR. MELTON: Ashley McMillian.
`THE COURT: -- here to sit at the table just because
`you think that might influence me. So it's a good move not to
`do that.
`
`MR. MELTON: I told her she couldn't come.
`THE COURT: In the trade I call that a show pony,
`when one side or the other brings somebody that doesn't
`participate but used to work for me, as if you-all wouldn't
`guess that I could guess what you-all were doing in that
`regard. So you're to be complimented on that. So that's good.
`Well, all right. So go ahead and, just to be sure
`that I understand because there's a lot of you, when you get up
`to participate, always state your name again so I'll know who I
`have in front of me. So this is the stage where the defendant
`will proceed first; is that correct?
`MR. MAIER: That's correct, Your Honor.
`THE COURT: All right. And you are?
`MR. MAIER: This is Cosmin Maier on behalf of Apple.
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 5 of 85
`
`5
`
`THE COURT: All right. You may proceed.
`MR. MAIER: Thank you, Your Honor. May it please the
`
`Court:
`
`Turning to slide 2 of our deck, as you heard this
`morning, there are four patents in this case. The '497 patent
`is the parent patent, and the other three patents are
`continuations from that '497. All four patents have the same
`specification. Three of the four patents have expired, and the
`fourth expires early next year.
`If we could go to slide 3, there are four asserted
`claims in this case, one from each patent. Each of those
`claims recites an algorithm that performs a particular
`function. That's the first term we will address. And then the
`second term we will address are the microprocessor identity or
`microprocessor identity information terms.
`So beginning with the algorithm terms on slide 4,
`there are two primary disputes between the parties. The first
`is whether section 112, paragraph 6 applies to these terms, and
`the second is whether those terms are indefinite because the
`specification fails to disclose a corresponding algorithm for
`performing those claimed functions.
`So I'll begin by starting to explain why paragraph 6
`of section 112 applies to these terms and then I will turn to
`the lack of disclosure in the specification. In addition,
`Apple submits that these claims are independently indefinite
`
`10:35:09
`
`10:35:10
`
`10:35:14
`
`10:35:14
`
`10:35:17
`
`10:35:21
`
`10:35:25
`
`10:35:32
`
`10:35:35
`
`10:35:37
`
`10:35:46
`
`10:35:49
`
`10:35:52
`
`10:35:56
`
`10:36:01
`
`10:36:03
`
`10:36:10
`
`10:36:14
`
`10:36:19
`
`10:36:24
`
`10:36:29
`
`10:36:34
`
`10:36:37
`
`10:36:40
`
`10:36:44
`
` 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
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 6 of 85
`
`6
`
`10:36:48
`
`10:36:51
`
`10:36:56
`
`10:36:59
`
`10:37:05
`
`10:37:06
`
`10:37:10
`
`10:37:16
`
`10:37:20
`
`10:37:25
`
`10:37:29
`
`10:37:35
`
`10:37:36
`
`10:37:39
`
`10:37:44
`
`10:37:49
`
`10:37:53
`
`10:38:01
`
`10:38:05
`
`10:38:09
`
`10:38:12
`
`10:38:17
`
`10:38:22
`
`10:38:25
`
`10:38:28
`
` 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
`
`because the specification fails to disclose what specific
`algorithm could be used to perform the claim functions. And,
`without such guidance, a person of skill would not know which
`of the myriad algorithms could be used to perform those claimed
`functions.
`
`So first a bit of legal background, starting with
`slide 5. Now, it used to be the standard that if a claim term
`did not recite the word means, there was a, quote, strong
`presumption against applying section 112, paragraph 6 for claim
`construction. The Federal Circuit did away with that strong
`presumption in 2015 in a case called Williamson v. Citrix
`Online.
`
`Today the standard is different. Today a claim term
`is subject to section 112, paragraph 6 even if it does not use
`the word means if that term does not recite sufficient
`structure for performing the claimed function. And that is
`under a preponderance of the evidence standard.
`So turning to the claims on slide 6, as I mention,
`each of these claim terms recite an algorithm, which we've
`highlighted in yellow, and a function that the algorithm
`performs, which we've highlighted here in pink. Apple submits
`to Your Honor that these claim terms do not recite sufficiently
`definite structure for performing those claimed functions,
`because neither an algorithm nor anything else in these claim
`terms provides sufficient structure.
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 7 of 85
`
`7
`
`10:38:31
`
`10:38:38
`
`10:38:41
`
`10:38:46
`
`10:38:50
`
`10:38:55
`
`10:39:00
`
`10:39:03
`
`10:39:06
`
`10:39:10
`
`10:39:14
`
`10:39:20
`
`10:39:22
`
`10:39:29
`
`10:39:33
`
`10:39:37
`
`10:39:43
`
`10:39:47
`
`10:39:51
`
`10:39:56
`
`10:40:03
`
`10:40:07
`
`10:40:13
`
`10:40:17
`
`10:40:21
`
` 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
`
`Now, you will hear from Plaintiff primarily that,
`just because the disputed terms recite functions, that fact
`alone does not subject the terms to section 112, 6. Now, that
`is true but that argument misses the point. It's not that
`these claim terms just recite functions. It's that they recite
`functions without also reciting sufficient structure for
`performing those functions.
`So the key question under the Williamson line of
`cases is whether those claim terms recite sufficient
`structures -- sufficiently definite structure for performing
`the claimed functions. If not, then section 112, paragraph 6
`applies to these terms, and we proceed accordingly.
`So turning to slide 7, please, there appears to be no
`dispute that the term algorithm by itself does not recite
`sufficient structure. Apple's expert submitted testimony that
`is unrebutted by any expert from Plaintiff, and he testified
`that an algorithm does not recite any particular structure. As
`you heard Dr. Wicker this morning, an algorithm just refers to
`a set of steps for doing something.
`Now, turning to slide 8, the case law supports this
`understanding of terms like algorithm, applying section 112,
`paragraph 6 to similar terms. What we have here on slide 8 is
`we've attempted to aggregate some similar cases for the Court's
`convenience. As you can see, the Federal Circuit, Western
`District of Texas, and other courts have held that terms like
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 8 of 85
`
`8
`
`10:40:25
`
`10:40:31
`
`10:40:35
`
`10:40:37
`
`10:40:42
`
`10:40:47
`
`10:40:55
`
`10:40:58
`
`10:41:03
`
`10:41:08
`
`10:41:15
`
`10:41:19
`
`10:41:23
`
`10:41:29
`
`10:41:32
`
`10:41:37
`
`10:41:43
`
`10:41:46
`
`10:41:47
`
`10:41:52
`
`10:41:57
`
`10:42:01
`
`10:42:05
`
`10:42:09
`
`10:42:13
`
` 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
`
`logic, computer program, and code are nonstructural. And, as
`the evidence cited on the previous slide 7 shows, an algorithm
`is just that, it's a computer program.
`And so when you look at the cases, they've treated
`those types of terms, computer program, code, logic, under
`section 112, paragraph 6.
`If we could turn to slide 9, I'll also point out that
`consistent with Apple's contention that an algorithm is a
`placeholder for the word means in these particular claims, the
`specification also uses the typical 112 paragraph 6 indicator
`means in place of the claimed algorithm in the specification
`when referring to that binding function that is claimed.
`Now, there are cases -- this is an Eastern District
`of Texas case. There are cases from other courts that have
`found that use of the word means in the specification but not
`in the claims actually warrants against applying 112, 6. But I
`would submit to Your Honor that the Eastern District of Texas
`here got it right.
`And the pure policy reason is that, if an applicant
`could simply put the word means into a specification and then
`use a different word in the claims, and then therefore argue,
`well, I didn't use means in the claims and I used it in the
`specification, so, therefore, 112, 6 doesn't apply, well, that
`would create a bad incentive for applicants to try to get
`around section 112, 6 by simply writing means in the spec and
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 9 of 85
`
`9
`
`10:42:18
`
`10:42:20
`
`10:42:23
`
`10:42:27
`
`10:42:31
`
`10:42:34
`
`10:42:38
`
`10:42:41
`
`10:42:48
`
`10:42:51
`
`10:42:54
`
`10:42:59
`
`10:43:03
`
`10:43:08
`
`10:43:14
`
`10:43:18
`
`10:43:22
`
`10:43:26
`
`10:43:31
`
`10:43:33
`
`10:43:39
`
`10:43:43
`
`10:43:47
`
`10:43:51
`
`10:43:54
`
` 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
`
`then using a different word in the claims.
`So we think here that the Eastern District of Texas
`got it right under policy because it said that, if you have
`means in the claim -- or if you have means in the spec and you
`use it to describe the same function that you are claiming,
`then that is consistent with the use of -- with the application
`of section 112, paragraph 6.
`Turning to slide 10, I'm going to turn now to what I
`believe is Plaintiff's primary argument. So I mentioned before
`I don't think Plaintiff is arguing that the word algorithm
`standing alone provides the requisite structure for performing
`the claimed functions. Instead, Plaintiff in its responsive
`brief shown here at page 5, argues that the addition of the
`words encryption or encoding provide sufficient structure
`beyond, quote, a mere algorithm.
`But just like the term algorithm, Plaintiff's own
`evidence and the case law shows that the words encryption and
`encoding, added to a nonstructural term like algorithm does not
`provide sufficient structure.
`If we can turn to slide 11, I'll start with the --
`the evidence on what encoding is and what encryption is.
`What's shown here on slide 11 are Plaintiff's own dictionary.
`These are the dictionaries that Plaintiff cited in its brief.
`And those dictionaries describe encryption quite clearly as a
`process or a function, not structure.
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 10 of 85
`
`10
`
`10:43:58
`
`10:44:02
`
`10:44:10
`
`10:44:15
`
`10:44:18
`
`10:44:23
`
`10:44:30
`
`10:44:34
`
`10:44:39
`
`10:44:46
`
`10:44:49
`
`10:44:54
`
`10:44:58
`
`10:45:04
`
`10:45:08
`
`10:45:14
`
`10:45:18
`
`10:45:24
`
`10:45:28
`
`10:45:32
`
`10:45:36
`
`10:45:42
`
`10:45:46
`
`10:45:51
`
`10:45:55
`
` 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
`
`So pointing out additional function does nothing to
`satisfy the requirement that the claims provide structure.
`Again, you see here that encryption -- the function of
`cryptography is encryption. The encrypt function transforms
`data. Encryption is a function, not a structure.
`Turning to slide 12, Plaintiff concedes that in its
`responsive brief as well. As you can see here at page 14 of
`its responsive brief, Plaintiff called encoding and encryption
`an operation of the algorithm, not structure. Similarly, at
`page 6 of the responsive brief, Plaintiff described encryption
`and encoding as approaches for disguising data, not something
`structural.
`And turning to slide 13, just like the case law we
`showed that stands for the proposition that an algorithm or
`computer code, similar software terms like this, are
`nonstructural, there's case law that says adding encryption or
`encoding to a nonstructural term similarly fails to provide
`sufficient structure to the claims.
`For example, in the Intellectual Ventures case, the
`court found that an encryption/decryption module that was
`described as being implemented in software was insufficiently
`structural. And I'll also note that this case involved a
`patent that was filed in 2004, so later than the patents at
`issue here. So there were -- there was even more known in the
`art regarding this field at the time that the court found
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 11 of 85
`
`11
`
`10:45:58
`
`10:46:04
`
`10:46:08
`
`10:46:15
`
`10:46:18
`
`10:46:22
`
`10:46:25
`
`10:46:28
`
`10:46:32
`
`10:46:40
`
`10:46:43
`
`10:46:47
`
`10:46:52
`
`10:46:56
`
`10:47:03
`
`10:47:08
`
`10:47:13
`
`10:47:18
`
`10:47:22
`
`10:47:27
`
`10:47:32
`
`10:47:37
`
`10:47:43
`
`10:47:45
`
`10:47:50
`
` 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
`
`encryption nonstructural in the Intellectual Ventures case.
`Similarly in the Umbanet case, encoding component was
`described as being implemented in software that bundled
`information into a particular format like an e-mail, and the
`court found that term to be insufficiently structural as well.
`So Apple submits that the same is true for the
`algorithm that performs encryption or encoding in this case.
`There is no substantive difference between the terms here and
`the terms found subject to 112, 6 in these cases.
`Now, turning to slide 14, I just want to run through
`the Intellectual Ventures case for Your Honor a little bit more
`in detail, because we do believe it is the most analogous case
`of all the cases. So in that case the disputed term recited an
`"encryption/decryption module that generated a device key seed
`based on a time interval and where that generated device key
`was then applied to a set of data to encrypt that data." And
`you can see that in the claim term shown on slide 14.
`Part of the function there was applying that device
`key seed to perform data encryption on this set of data called
`D. So this claim, if you look at it in totality, it describes
`an input in form of this time interval, an output in the form
`of a device key, a function for encrypting the data using this
`device key, and then the thing that did all of this, the
`encryption/decryption module for performing that function.
`Now, in that case the defendant there first observed
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 12 of 85
`
`12
`
`10:47:53
`
`10:47:58
`
`10:48:04
`
`10:48:08
`
`10:48:13
`
`10:48:16
`
`10:48:20
`
`10:48:26
`
`10:48:29
`
`10:48:32
`
`10:48:38
`
`10:48:43
`
`10:48:46
`
`10:48:53
`
`10:48:58
`
`10:49:00
`
`10:49:02
`
`10:49:10
`
`10:49:11
`
`10:49:16
`
`10:49:20
`
`10:49:23
`
`10:49:28
`
`10:49:32
`
`10:49:36
`
` 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
`
`that the term module doesn't provide sufficient structure. So
`then the plaintiff said, well, even if module doesn't provide
`sufficient structure, the modifiers of encryption or decryption
`do provide structure beyond the nonstructural module.
`But the court rejected that argument because it found
`that encryption does not carry, quote, known structural
`context, and it recognized that this module could be any
`software that performed the claimed function.
`And we submit to Your Honor that the same reasoning
`applies in this case. The term algorithm is nonstructural. As
`we've shown, the case law supports terms like code and computer
`program as nonstructural. And the evidence that was submitted
`in this case from the expert and the technical materials shows
`that it's a set of steps, a procedure, that could be any number
`of different things.
`And so, like the plaintiff in the Intellectual
`Ventures case, what you have here is Plaintiff arguing that
`adding the adjectives encryption and encoding provides
`structure beyond this nonstructural algorithm. But, as the
`court in IV found, encryption still does not carry a known
`structural context. And that's even truer from the patents in
`this case that came four years before the patent in the
`Intellectual Ventures case. So adding encryption or encoding
`to the nonstructural term algorithm is similarly insufficient
`to provide definite structure.
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 13 of 85
`
`13
`
`10:49:44
`
`10:49:49
`
`10:49:55
`
`10:49:59
`
`10:50:04
`
`10:50:07
`
`10:50:11
`
`10:50:15
`
`10:50:19
`
`10:50:25
`
`10:50:31
`
`10:50:35
`
`10:50:40
`
`10:50:46
`
`10:50:52
`
`10:50:56
`
`10:51:00
`
`10:51:06
`
`10:51:10
`
`10:51:14
`
`10:51:17
`
`10:51:21
`
`10:51:24
`
`10:51:30
`
`10:51:37
`
` 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
`
`Now, slide 15, this just compares some of the cases
`that each party relies on. And the purpose of this slide is to
`paint a picture of how the law has evolved since the Williamson
`case. So if you remember before Williamson, there was this
`strong presumption. I believe the standard was that the term
`had to be devoid -- entirely devoid of structure in order to
`apply section 112, 6 absent the word means. All that changed
`in Williamson. And what I hope this slide shows is that,
`increasingly post-Williamson, courts have applied section
`112, 6 to terms like computer program, code, and logic.
`In stark contrast to Apple-cited cases that talk
`about terms like encryption, talk about terms like encoding,
`Plaintiff's cited cases largely implicate terms that are like
`connector, scanner, physical things not subject to 112, 6. And
`many of those cases that Plaintiff relies on actually were
`decided under a standard that no longer applies. Many of those
`cases are pre-Williamson cases.
`So, as you can see from Apple-cited cases, since
`Williamson, court's have increasingly found that terms like
`encryption module and computer program subject to
`section 112, 6.
`Now, I want to focus on three other cases that I
`believe Plaintiff focuses on its brief. The first is
`Zeroclick v. Apple. Now Zeroclick was a case where the term
`program and user interface code were found not subject to
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 14 of 85
`
`14
`
`10:51:41
`
`10:51:47
`
`10:51:50
`
`10:51:53
`
`10:51:57
`
`10:52:02
`
`10:52:06
`
`10:52:08
`
`10:52:10
`
`10:52:16
`
`10:52:21
`
`10:52:28
`
`10:52:33
`
`10:52:37
`
`10:52:41
`
`10:52:44
`
`10:52:49
`
`10:52:53
`
`10:52:55
`
`10:53:00
`
`10:53:05
`
`10:53:08
`
`10:53:13
`
`10:53:16
`
`10:53:21
`
` 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
`
`section 112, paragraph 6. So, in the Intellectual Ventures
`case that I discussed earlier, we believe that deals with the
`most similar terms that are at issue in this case. I believe
`Plaintiff's most similar terms are found in the Zeroclick case.
`And in the Zeroclick case, program and user interface code were
`found not subject to 112, paragraph 6 for two reasons that are
`inapplicable here.
`And I don't have a slide on these. I'm just going to
`present the discussion to Your Honor. The first distinction
`between Zeroclick and the case that we have here is that the
`patent in Zeroclick made clear that, quote, specific references
`to conventional graphical user interface programs or code
`existing in the prior art at the time of the invention is what
`the patent was referring to when it talked about user interface
`code. And the court observed that the specification actually
`drew distinctions between the interface programs that existed
`at the time and the improvement to those that were described in
`the patent.
`In contrast, here at page 8 of Plaintiff's responsive
`brief, plaintiff argues that, quote, anyone of the encryption
`algorithms available at the time of the patent application, or
`since then, may be used as part of the claimed invention within
`the encrypting and encoding claim limitations.
`So the algorithms in the patents at issue here are
`not limited and not specifically described in time as limited
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 15 of 85
`
`15
`
`10:53:25
`
`10:53:29
`
`10:53:31
`
`10:53:35
`
`10:53:40
`
`10:53:47
`
`10:53:52
`
`10:53:56
`
`10:53:59
`
`10:54:03
`
`10:54:06
`
`10:54:09
`
`10:54:12
`
`10:54:18
`
`10:54:21
`
`10:54:28
`
`10:54:31
`
`10:54:35
`
`10:54:40
`
`10:54:42
`
`10:54:48
`
`10:54:53
`
`10:54:58
`
`10:55:02
`
`10:55:06
`
` 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
`
`to those that were existing at the time. Plaintiff is trying
`to claim much more broadly.
`The second critical point on the Zeroclick case that
`shows its inapplicability here is that the defendant in
`Zeroclick provided, quote, no evidentiary support. So because
`there is a -- you start with a presumption that section 112, 6
`does not apply and you have to rebut that presumption by a
`preponderance of the evidence, if you put forth no evidence
`that section 112, 6 applies, then the presumption has not been
`rebutted. And that was the problem with Zeroclick.
`In contrast here, the opposite is true. The only
`evidence of the understanding of a person of ordinary skill in
`the art is that of Apple's expert. And we've also cited
`numerous references that support applying section 112,
`paragraph 6. So here the evidence is the opposite. In
`Zeroclick there was no evidence for application of 112, 6; here
`we believe the only view of a person of skill in the art is
`that 112, 6 applies.
`I'll quickly talk about two more cases that Plaintiff
`highlights in its brief. The next case is Apple v. Motorola.
`In Apple v. Motorola the Federal Circuit found the term
`heuristic was not subject to section 112, paragraph 6. But
`there's a very simple answer why that case does not apply here,
`and it is because it was decided before Williamson and,
`therefore, applied the outdated, strong presumption that
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 16 of 85
`
`16
`
`10:55:11
`
`10:55:16
`
`10:55:19
`
`10:55:22
`
`10:55:24
`
`10:55:29
`
`10:55:32
`
`10:55:36
`
`10:55:41
`
`10:55:45
`
`10:55:49
`
`10:55:52
`
`10:55:55
`
`10:56:03
`
`10:56:06
`
`10:56:09
`
`10:56:14
`
`10:56:17
`
`10:56:20
`
`10:56:25
`
`10:56:29
`
`10:56:34
`
`10:56:37
`
`10:56:42
`
`10:56:46
`
` 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
`
`section 112, paragraph 6 does not apply. In fact, Apple v.
`Motorola was overruled by Williamson when the Federal Circuit
`sat en banc in part.
`And that case is actually a really interesting case
`because it talks -- it gives you a picture of the history of
`how this law has been developing, because if you look at the
`dissent of the Apple-Motorola case, the dissent stated that,
`quote, choosing to include means in a claim limitation is a
`minor drafting decision that correspondingly merits little
`weight in a section 112, paragraph 6 analysis.
`The majority had to disagree from that -- with that
`dissent because it was obviously bound at the time by this
`strong presumption against 112, 6 that existed at the time.
`But a little bit more than one year later, a Federal Circuit
`en banc actually adopted the dissent's view.
`And it's actually pretty interesting because you can
`see a little bit of the history, why did we arrive here, and
`it's because you had these patents claiming functions without
`giving sufficient structure, and it was resulting in ambiguity
`in patents the public was unable to discern because of these
`vague terms used in claims. What am I excluded from -- from
`using for the next 20 years? And that's why you saw the law
`evolve beginning with Williamson case to require more
`specificity. And if that specificity is not provided, then
`we'll see in the next step of the analysis finding the patents
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 17 of 85
`
`17
`
`10:56:50
`
`10:56:56
`
`10:57:00
`
`10:57:09
`
`10:57:12
`
`10:57:16
`
`10:57:20
`
`10:57:26
`
`10:57:29
`
`10:57:37
`
`10:57:41
`
`10:57:42
`
`10:57:44
`
`10:57:45
`
`10:57:48
`
`10:57:54
`
`10:57:56
`
`10:58:00
`
`10:58:06
`
`10:58:09
`
`10:58:12
`
`10:58:19
`
`10:58:20
`
`10:58:26
`
`10:58:32
`
` 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
`
`indefinite.
`The last case I'll mention is Ancora Technologies v.
`LG. In that case the term at issue was agent. And agent was
`found to be not subject to 112, 6. Now, the first point I'll
`make is that we think encryption/decryption module is much
`closer to encryption algorithm that is at issue here. We don't
`think agent is similar. But there are a couple of reasons that
`the term agent is different than what we have here.
`First, the court found that the term agent was a
`reference to a specific -- specific set of software, not just
`software generally, like an algorithm. An algorithm can be
`software generally that does encryption or encoding or whatever
`function.
`But agent was actually a specific piece of software
`that sat at a specific place within the software hierarchy in
`the device. It was running at the operating system level and
`interacting with -- with a different program. So it sat in a
`very specific place in the software hierarchy. In the asserted
`patents in this case, algorithm is not specified. It's not
`specified whether it's got to be in the operating system,
`whether it's an application, or wherever else. It's not
`limited in that way.
`And then the -- and the other thing here is that the
`court in Ancora actually said that software alone does not
`connote structure and warrants the application of
`
`ARLINDA L. RODRIGUEZ, OFFICIAL COURT REPORTER
`U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (AUSTIN)
`
`

`

`Case 1:22-cv-00058-LY Document 66 Filed 03/23/22 Page 18 of 85
`
`18
`
`10:58:34
`
`10:58:35
`
`10:58:38
`
`10:58:41
`
`10:58:45
`
`10:58:49
`
`10:58:58
`
`10:59:01
`
`10:59:04
`
`10:59:07
`
`10:59:16
`
`10:59:19
`
`10:59:22
`
`10:59:26
`
`10:59:31
`
`10:59:34
`
`10:59:36
`
`10:59:42
`
`10:59:47
`
`10:59:51
`
`10:59:56
`
`10:59:59
`
`11:00:06
`
`11:00:08
`
`11:00:10
`
` 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
`
`section 112, 6.
`So without -- if all you're saying is you have
`software for doing something, software for performing
`encryption, software, an algorithm, for performing encoding,
`then that's insufficient even under the Ancora case. You need
`something more specific than that.
`So, with that, those are the primary cases I think on
`both sides, and I hope that discussion was helpful to
`Your Honor. I have just a few more points on the first part