We're seated without argument on the brief today namely appeal number 0 6-3195 white versus United States Postal Service and appeal number 0 6-3265 non-versus department of defense on the four case argument list we'll hear argument first and appeal number 0 6-1116 IAP Intermodal versus Northwest airlines Mr. Hemmily good morning to you welcome to the court please proceed this court again my name is Stephanie my representative IAP Intermodal for this court two primary issues both dealing with client instruction which this court has review of the standard of review we're quite aware of the standard of review in your blue and gray briefs you argue a link that Judge Ward misinterpreted the notion of real time but I couldn't see where he ever said what you said he said so can you point us to the specific language in his opinion where he mangled the notion of real time in the way that you argue with great length in both briefs I'm asking a question about Langston where is it that he interpreted real time in the way that you then argue at such length is wrong in his order I believe through seeing page 10 and going back to the pages he analyzes the fact or the issue of whether those inventions belong into real time and not and at the end of the section before having be on page 10 he comes to the conclusion these methods contemplate flexible schedules and route IE those that are not fixed or rather a capable of change based on received transportation plus at that point he got a grotto the problem is where he he takes the next step which is at the last line of this page this is where he he takes the step too far which is he says in particular the court has adopted a definition of you that the transportation request must be prospective in nature so the the errors in the words perspective yes you're wrong that's exactly why is that an error well you're a real time means exactly what he found initially real time means it's dynamic it's capable of being changed it's capable of being changed on on any number of different data points or information that the system will consider your your specification makes it so clear that the present invention is a method of scheduling a vehicle in real time to transport freight and passengers simultaneously yes you're wrong that's the invention the real and real time the real issue here is what do you define as real time do you find it here up to this point which is the first step that just more comes to why didn't you say it simultaneously freight and passengers on the fly you're on a simultaneous means they're transporting porting both simultaneous the passengers and freight not just passengers not just freight the simultaneously it's not talking about on the fly except in one embodiment which is disclosing the specification but throughout the specification it talks about how the invention is flexible if you can schedule and change routes periodically every day every week every month how can this not be invalid but you're on I know that's not before us but it's got to have been trucking companies that call their trucks on the on the fly and tell them stop in Pittsburgh and pick up something to go to Chicago the novelty of the invention your honor is that you take a remote transportation of west from remote areas remote passenger transportation of west remote freight transportation of course you're combining those together and you're modifying the schedules based on those remote transportation of west okay that's really not before stick stick with but I'm glad you brought that up because it requires both pieces of information and what the prior art does not teach is using both of these events of the mission from remote locations so I understand it's not before you before but getting back to your question you guys Michelle the the analysis that leads from that first step that says this is a dynamic system this is capable of being changed and that's what real-time means to its pro only prospective in nature that means he is telling us that the claim is limited only prospective unfulfilled new request as opposed to what as opposed to old requests as opposed to historical information but it isn't that what's the claim itself tells us is it claim if you look at claim one the three six two patent it talks about the last three or four steps predicting an arrival time generating a schedule including the predicted time updating the generated route schedule etc all of that is is language that is clearly prospective it could be but it's not restricted to just that piece of information it probably have to cover but it's not limited to that and that's where the step two and three go a foul of claim differentiation and reading of limitations from specification into the to the to the claim we we don't even have to worry about reading anything to the claim the prosecutor disclaimed coverage of anything that wasn't real time he quite sensibly distinguished the prior art by saying that's not at all what my invention is about the words of the claim could have said anything but in light of that prosecution history whatever they otherwise might have meant they no longer mean because he told us they don't mean that you're not you're talking about the petitioning special well and and numerous places in the specification but if you just want to address the position to make special that would be a good place to start the petitioning special addresses the fact that it's real time but nowhere in this in this state it's restricted to only consideration of prospective unfulfilled new when you characterize your invention and say my invention is real time prospective unfulfilled requests why why wouldn't we hold you to what you have described as your invention we characterize it as real time your honor we characterize this dynamic but we did not characterize it as only required in the consideration of only new unfulfilled transportation request and there are specific claims the call for that not claims one through eleven of the three six two patent and not claims one through eleven of the five eight two but claim eight or I'm sorry claim twelve and thirteen of both the three six two and the the five eight two patent required accommodation of transportation request these are this is a transportation request coming in and you're changing the schedule based on that and accommodating it that that's the claim language for recline twelve and thirteen and if you look at the eight nine seven patent your honor what you've got is specific claim language that falls for new transportation requests these are new requests are coming in and accommodating those scheduled request for service where's the conflict the conflict is claims one through eleven of the first two patents don't require that language but there are the differences between those two claims your honor you may find that but I I don't see that if you look at claim twelve of the first two patents the three six two patent and and the five eight two that's a very short claim is a deep and a claim is deep and a claim eight and and frankly there there are no substantive differences apart from the word accommodating those transportation requests that's you're looking at the routes and you're accommodating the incoming transportation requests and modifying the schedule I think it's a three step point on claim twelve of both the five eight two and the three six two patents wrong also there may be some other differences between the eight nine seven patent claims all their claims and the other two patents claims but the I said I would argue to you honor the primary differences is the difference between new transportation requests and just the word transportation request which is to find much broader on the specification and is not restricted to just and only prospective unfulfilled newer quest and that's and that's the story I thought the dichotomy the judge would was drawing was between what was called historical transportation schedules and transportation schedules that are in the making based on evolving debt so when you complain that in part big at the bottom of page ten that he used the word prospective and say that that was error maybe it depends on how one reads his use of the word perspective in that sentence I read it as simply meaning not the old are historical fixed immutable schedule and if that's all it means I don't see any problem or conflict here but your honor I believe what he's counted the conclusion of this is prospective only and that's the only piece of information that you can but every one of your independent claims has the first step that you receive a request and then act on those requests prospectively the first thing you do is you have to have a request what you have a request you may fulfill that request in the broadest claims and then you may consider that request later in modifying your schedule you may require you may consider new requests in those broadest claims but those broadest claims are not restricted to new unfulfilled or prospective those words are not used in the patent claims give a given example or give an example that we illustrate what you're saying you're on the prior art you mentioned the primary the the train schedule a train leaves the station at 810 passengers no passengers freight no no freight it's leaving that's a fixed schedule we we we follow that this system is dynamic in the fact that it can be changed and Judge Ward had it exactly right when he said they contemplate flexible schedules that's but you're you're complaining that he interjected the notion of prospective only in it you went on to say just a minute and a half ago that fulfilled requests could all also be considered so I'm asking you to illustrate a case where fulfilled requests would be would result in a change in the schedule okay there may be a plane schedule that contemplates flying from Washington DC to Raleigh Durham over the course of the period of six months or 12 months the passenger or freight demand and requests increase because a new factory is built in Raleigh and it is bringing workers down or there's a new FedEx location that's it with one example at that time how does that illustrate your point well my point is that they that the brought systems in planes one through eleven of the first two patents contemplate using both the historical current or prospective I don't say how I can agree with that well you're on that's the broadest claim and the specifications not restricted to that now what what Judge Ward has indicated on page 12 is that transportation requests must relate to transportation service transmitted for formal terminal to the host before the transportation service is fulfilled in anticipation of some future service he's restricted the the scope of the invention claims one through eleven which are not restricted to new considering just new requests or considering prospective or or anticipated transportation plus these are strictly those claims to that scope I want to bring it back very briefly to your claim differentiation argument claim 12 depends on claim eight claim eight talks about creating a route for the vehicle only want to predetermined profit value is generated yes you see that limitation in claim one you're on the the whole scope the invention is just answering my question you see that limitation claim one or not about generating I believe it's based on a profit I believe it's there I would address that on my your butto time if I could look forward thank you mr
. Hemingway your ares welcome back thank you good morning and please proceed I'm pleased the court you know I'm here today on behalf of American Airlines with me is mr
. Bruce Borkridge and says the general council of American Airlines also at countertapled is John Borders here on behalf of continental airlines and within is Scott Barber and attorney from we we should hasten to add that it's not the John word who is the district judge rendering the challenge decision you know you are correct John there's no relationship between judge or audience case and and defendants council it seems you're on or that that the court has the basic issued well in hand but one issue that's not in addressed because we're never given the opportunity and our brief is that is to address our waiver arguments we believe that other than the term host that the appellant has waved it's right to appeal the the claim construction terms that it complains of first of all because they did not articulate a claim construction at all in their opening brief other than to just complain about some of the things that Judge Ward said in the course of considering his claims nor did they advance any arguments in support of those apps and claim constructions and so we believe that that they've been waived well mr
. ears let's let's look at the one thing that they do point out that suggests something in the direction of what they argue and that is column 11 where they talk about the process of figures one form five is continuous iterative maybe periodic a periodic or continuously operating in the background that they seem to be suggesting there that there are few limitations on this process as such as the limitation that Judge Ward has found in the language of the claim that statements measures perfectly with Judge Ward's claim construction each and every one of the embodiments that are disclosed in the appellant argues is a non real-time embodiment you can have and there's a description of this you can have these requests accumulate for 24 hours before you create the route those requests are still a prospective they have not been fulfilled if they had been fulfilled you'd be creating what the prior calls a fixed schedule which is a schedule that's that projects demand indeed all the claims start with the request right absolutely which is kind of the defining point for the rest of the client absolutely on this this construction turns on the text of the claims as Judge Lynn correctly pointed out the language demands that these requests be prospective their term request itself how can you request something that's already transpired it's clear that a request is prospective not only without the only way that you can achieve the claimed requirement of creating a route only when the vehicle can transport a predetermined term a number of passengers and predetermined number of freight as used in claim one or only when a predetermined profit value based on said retrieve received transportation requests is generated is if those requests are prospective because the only way you can ensure a profitable result is by knowing what actually demand you have and the revenue that you're going to derive from those requests so a fixed schedule really has an assumed demand which may or may not turn out to be correct absolutely but the dynamic or real-time schedule uses actual demand as expressed in those requests that's that's their opposite approach and that's exactly there's no overlap there's none at all your honor and they they disclank the fixed schedule is clearly in the specification and in the prosecution history now back to my waiver argument your honor because we didn't have the opportunity to see a balance new constructions until their their reply brief but if the court looks at those constructions they will see that they differ radically from the claim constructions that they propose to judge awarding the first instance and as a result they have waived those new constructions by not presenting them to the district court in the first instance take for example route schedule their original construction was the time a vehicle will travel between the departure and destination location meaning the elapsed time from from departure to to destination now their construction which is a red line strikeout version of the district court's construction which we never saw before until their reply brief is a transportation timetable for the vehicle traveling along its respective route I take it the main problem isn't that you didn't have a chance to brief this since it only came up in their reply brief the main problem I would think is the judge ward never had a chance to adjudicate this because it was never presented to him absolutely so that's really it's not so much that it's unfair to you it's one might one might say it's unfair to the trial judge because he couldn't avoid the error because he was never presented with the option that's now said to be the only correct option there both are both tossed to separate forms of waiver and we can't review a decision he didn't make that's exactly right this is clearly a court of errors and by not presenting the district court with that in the first instance they await that if there are happy to answer any questions about anything in the intrinsic record what why isn't there any validity argument here has certainly hasn't made it there yet it has not the following the court's planning destruction the plank is stipulated to a judgment of non-infringement and we dismissed our counter claims of invalidity without prejudice I have a little worry that you win you go away but they asserted against somebody else it floats around out there isn't there some value and making an earlier validity claim so that these things might not bang around in the system so long perhaps you're on about that would be an advisory opinion okay you're right thank you thank you mr
. heirs mr
. Hemingway you use up virtually all your time it will give you a good half minutes for about thank you uh
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. did you want to have sorry in response to your question regarding claim believe it was claim that's a broad that's a broad claim what it was distinguishing it's apparent for claim twelve the one that you referred to and claim twelve does not have uh
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.. limitations regarding profitability so it's only adding the combination claim a claim claim well this dependent from claim a correct runner but good to all the limitations of claim it yes claim a does require a combination of prospective unfilled new plus it just talks about looking at transportation request that has been submitted you're fulfilled and it's making a profitability determination when claim twelve is dependent from claim a and it has the limitation burning accommodating the request is coming in and changing schedule that's the prospective limitation is added to claim twelve that's not that's not understand that but you you're you're trying to make the point that uh
. limitations regarding profitability so it's only adding the combination claim a claim claim well this dependent from claim a correct runner but good to all the limitations of claim it yes claim a does require a combination of prospective unfilled new plus it just talks about looking at transportation request that has been submitted you're fulfilled and it's making a profitability determination when claim twelve is dependent from claim a and it has the limitation burning accommodating the request is coming in and changing schedule that's the prospective limitation is added to claim twelve that's not that's not understand that but you you're you're trying to make the point that uh.
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.. based on claim differentiation and based on the fact that claim twelve talks about new roots and has prospective language therefore claim ones can't be read to be prospective but the claim differentiation argument fails if there are other distinctions between the claim this all all claims one or don't have that including claim i understand but i understand you're not answering my question i understand your point which is there are other limitations from claim well correct and profitability is underlined termination in in the entire uh
. based on claim differentiation and based on the fact that claim twelve talks about new roots and has prospective language therefore claim ones can't be read to be prospective but the claim differentiation argument fails if there are other distinctions between the claim this all all claims one or don't have that including claim i understand but i understand you're not answering my question i understand your point which is there are other limitations from claim well correct and profitability is underlined termination in in the entire uh.
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. spec but i understand that but but i'm i'm focusing on the details of claim twelve and and uh... with respect to the waiver argument uriner we identified the claim terms of issue opening brief on pages twenty five twenty six uh... in the opposition brief they indicated what you didn't tell us how you would change the the poor's claim construction what we're offering now that's why i reply grieve said okay answer that question here's what we would do to to minimally change the truck was decision it would avoid errors that we're talking about it's not that we're offering these up you know as a any as anything more than response to you agree from the app time is expired thank both council take the case under righ