Legal Case Summary

Summit 6, LLC v. Samsung Electronics Co.


Date Argued: Wed Sep 10 2014
Case Number:
Docket Number: 2605734
Judges:Not available
Duration: 45 minutes
Court Name: Federal Circuit

Case Summary

**Case Summary: Summit 6, LLC v. Samsung Electronics Co.** **Docket Number:** 2605734 **Court:** [Specify Court if known, e.g., United States District Court] **Filing Date:** [Specify the relevant date if known] **Parties Involved:** - **Plaintiff:** Summit 6, LLC - **Defendant:** Samsung Electronics Co. **Background:** Summit 6, LLC initiated this case against Samsung Electronics Co. over various claims related to intellectual property rights. The plaintiff, Summit 6, alleges that Samsung infringed upon its patents involving specific technologies or products. **Claims:** The plaintiff contends that Samsung’s actions constitute patent infringement, which has led to financial harm to Summit 6. The case may involve allegations of willful infringement, seeking not only damages but also further relief to prevent Samsung from continuing its alleged infringing activities. **Legal Issues:** The primary legal issues at hand include: - Determination of patent validity. - Assessment of infringement concerning the cited patents. - Potential defenses raised by Samsung, which may include challenges to the validity of Summit 6's patents or claims of non-infringement. **Proceedings:** As the case proceeds through the court system, several motions may have been filed, including motions to dismiss, motions for summary judgment, or discovery-related motions. Details of these proceedings would typically involve the exchange of evidence, expert testimonies, and legal argumentation from both sides. **Possible Outcomes:** The possible outcomes could range from a ruling in favor of Summit 6, which may include monetary damages and injunctions against Samsung, to a ruling in favor of Samsung, potentially dismissing the case and upholding the validity of their practices. **Current Status:** As of the last update, further proceedings are anticipated, and parties may be preparing for trial or settlement discussions. **Conclusion:** Summit 6, LLC v. Samsung Electronics Co. presents significant questions about patent law and the enforcement of intellectual property rights in the technology sector. The outcome of the case could have implications for other entities involved in intellectual property disputes in similar technological fields. (Note: The details provided in this summary may be subject to updates based on subsequent court rulings or new filings in the case.)

Summit 6, LLC v. Samsung Electronics Co.


Oral Audio Transcript(Beta version)

131648 summit six for the sound sum electronic. It's that old here. I'm going to give you a few. Thank you. Morning, honours, may I please the court. The district courts of fundamental error in this case was in its claim construction of claim 38. It analyzed claim 38 and the specific language parameters being provided to in that claim. It's simply a characteristic as opposed to what I think is the appropriate way to interpret that, which is that it is a limitation on the claim. And I think the easiest way to understand that because the language can be read, I think, in a variety of ways is to undertake what I view as the more holistic approach, which is to look at it in the context of the patent prosecution, the other claims in the case, and the specification. And if you do that, and I think the prosecution is the most clear in terms of demonstrating that this has a temporal limitation embodied in it. And on 25179 of the joint appendix, the examiner rejects these claims as indefinite on the basis of that they recite previously received pre-processing parameters. Since the claims are not shown any previously received parameter prior to the pre-processing step, such claim is indefinite. And then, in response to that, what did the inventors do? They went through and changed all of the language, including the claim that became claim 38, from past tense to present tense. They kept some provisions that have a true past tense component in them at just as they were. But they changed everything else into a present tense. So that's the term being provided to that you're referring to? Yes, Your Honor. So your argument would appear to be clearly a claim-construction argument. Did you make that argument during the dobert hearing? During the dobert hearing, as opposed to during the claim-construction process. During the claim-construction process

. Oh, absolutely. Our argument all along was that the timing of this is absolutely critical. And the reason you know that is because Samsung obviously puts the parameters onto the phone weeks, months, maybe even years before the pre-processing is implemented on the computer implemented methodologies. So we said all along that that temporal component is important. Now to be sure, we focused primarily on the preamble and the specification. Because that was in our mind at the time, the single biggest part of the invention, where they came out with this ability to just tap in immediately and go right into the, frankly, to go right on the same thing. But what led the district court to stray here? I mean, I get your argument and I think there's some power to it. So what explains what the district court doesn't buy it below? I mean, I think he just bought the plaintiff's argument that it's a characteristic that that's the way he would read it. I don't think he really did business with the prosecution history, which we cited to them both in the claim construction and in the J-Mall. But he basically just said, you know, I think being provided to can be read any of a number of words. I don't think he performed the function you expected this record for form with respect to claim construction, which is to set out the meats and bounds. You know, the whole purpose is this is to provide notice. Somebody looking at this, and particularly Samsung looking at this, and seeing what they did in response to a very clear rejection based on past pre-processing being provided, and see somebody go in and adjust the entire patent to provide for temporarily present pre-processing as the mechanism, and then read the preamble that says that's the key to this is to be able to do it during the computer implemented methodology. It seems to me that the meats and bounds of fairly are clearly defined on that temporal basis. Why did you like to miss that? I don't know. Steven Markman, what was the focus of your argument? Wasn't it on the terms receiving and provided to, which would be passed since as opposed to being provided to? Well, now I mean, we did all of those things, but again, I think it's fair to say, Judge Raynor, that the primary focus at the time was on the preamble and using that as a limitation on the entirety of Rule 38. And all we're doing here, frankly, is essentially what the court, I think, recognized as permissible under O2, which is that if you so, if you have laid out for the district court, why it is that this ought to be interpreted temporarily as of the time of the actual operation, the computer implemented operation, you then permitted to go through and find additional arguments that support it to be sure we didn't do the claim differentiation portion of the analysis that we put forward in our brief. But the truth is it all hangs together

. So the argument in your brief is clear. There's no doubt about that. I don't have a difficulty in understanding whether you made that argument below, whether you waived the argument to making that or whether you waived it. Yeah, we clearly did not waive that. What we said to the district judge that the claim construction, throughout the trial, and then the J-Mall was that there is a temporal component to claim 38. Now, to be sure, again, we focus primarily in the claim construction on the preamble, but we also cited him to the prosecution history, and he didn't find the preamble persuasive, and he concluded that then he didn't have to go any further in terms of being provided to needing any additional interpretation. So again, it seems to me we're talking about exactly what O2 talks about. And didn't the district court not say something and proceedings below we got in the waiver? In other words, when we reformulated the argument at the J-Mall stage, he said exactly that. You're making essentially the same argument before you're just dressing it up in a different guard. And while it wasn't specifically in response to a waiver point, it was simply there wasn't a waiver argument made. He did not obviously buy that. He was just explaining his analysis of what we were saying compared to what we had said before. So it seems to me particularly inappropriate for this court to come in and say there's been a waiver when that issue was presented to the district judge, and the district judge wasn't offended by it, because obviously the whole purpose of this exercise is that we shouldn't be laying in the weeds and wishing a judge. He didn't feel that way. He thought the issue had been properly put before, and he just didn't agree with us. Now, if we agree hypothetically with you on this question, but not on the other issues we raised with regard to anticipation of a foreign infringement on the publication, that's a new trial, right? This is no connection with the motion for a new trial. No, I think actually the right answer at this stage would be a judgment for the defendant on these circumstances, because there is no evidence. I don't think there's any evidence

. And it was certainly not presented to the jury that there's anything other than the evidence that the Samsung puts it on the phones long before the pre-conflicts. I think it's always so in connection with just the motion for a new trial. I think is that what you asked for below a straight-up reversal? Yeah, in our general. Let me ask, but given the way the thing is. I'm sorry, you're right. It was. It was a new trial. Okay, so the other thing is the other argument is I guess that if assuming they were operating under the different claim construction, you're right. They may not put on any evidence, but in fairness to them, they didn't think they had to put on certain evidence, assuming they had it. No, I think that's fair. I don't think they have any evidence, because I think the proof is quite clear that Samsung, even, I mean, most of this is all put on obviously in Korea, but even any of it, they may have been put on in the United States, it's still put on well before the pre-processing process is undertaken by the cell phone itself. But it's a fair point if they have an evidence that they can put on, presumably they would have the opportunity to do that. Can I just ask the other question about this being provided to argument? I've found this kind of puzzling and I'm trying to get where the real force of your argument is. Is it based really on your reading of the claim? Where is it more on the claim differentiation argument looking at the other claims and the various verb tenses used in those? Well, as I said, I think the claim can be read sort of either way. I like our reading of it better for obvious reasons. I'm guessing being paid to you on that. I don't find the being provided to the language very clear and that it has to be provided at the time. So it's for me that the force of the argument really still comes primarily from the history, which explains where did the, you know, where did this language come from? Because if you just had this language and the abstract, I don't know what you do with it

. But when you see the history and the specific rejection because all you've got is, you know, you don't have anything about parameters in the patent. So they say, well, let's make everything in the pattern. Are there any uncertain claims that do you use the past tense of the verb? Yeah. In situations where it clearly calls for actions that have been taken in the past every time, but all of the other references and they, and you know, give the inventors credit they, asciuously went through and modified everything to eliminate this problem. This was not an accommodation to the, to the examiner. This is a recognition that there was a problem. They didn't have any evidence of past parameters being put on. The whole purpose of this invention, the preamble tells you is to be able to access these on a real time basis while the computer method is being implemented. So when they're using the past tense in claims 36 and 37, which are unaxerted, that's about something entirely different, about something entirely different. Yes. It's fundamentally different. And again, I, I, I, I, why is that? Because I, I mean, they are they specifically use the term parameters or provided. Right. Because under those circumstances, they were provided in the, in the previous, in some previous point. They're talking about it's been pre-processed. I mean, that's, it's, it's just, it goes to a, it goes to a fundamentally different approach. I'm not interested in damages. I was just going to say that, just right

. You know, my view on the damages is that, that's a, Mr. Benoit is not, was never should have been allowed to testify. Certainly not on the particular methodology. Is a CPA, he's gone through here and exactly the way he would not want a jury to evaluate an expert, which is he takes usage data, which he can't, which he has no evidence from any scientific basis, correlate to the value, and immediately correlates it directly, one to one, on the value of this, of, of this particular feature. If we agree with you on that, and even if we agree with you with one of the licenses, that we're still left with disagreeing with you on whether or not the rimmed license was appropriately considered, isn't that a base to fight itself, just to stay in the jury with us? I don't see how you could get anywhere near $15 million on the rim license alone. I mean, I guess they started, well, I don't, I don't know what number is on, I'm allowed to talk about that. But if you do it on the rim license, that license comes nowhere near the damages in this particular case. I can, that much I can tell you, you would need the other license in order to get there. So on the rim license, is that, is that a lump sum figure that came up with? Yes, that is non-sumptivity. No, that's a lump sum figure. Indeed, all of the settlements are lump sum figures, which is why the jury decided this is a lump sum based on. On my basic point on the damages, it's been wise methodology had no acknowledges, no scientific method. Nothing he had ever done used himself. No basis from any literature that suggests that you can take simple usage and convert it into value. And using his methodology, if you do it on the other features, means that 580 percent of the value of the telephone is on features other than uses as a telephone. I mean, it's a crazy methodology. It should have been rejected out of me and taken off the table. I know you're into your vital time, but I want to ask you about the lump sum one time license for all time

. You didn't present that theory to the jury. Did you? We have evidence on it. No, no, no. My question is, did you specifically present that theory to the jury? Did we argue with the jury? Yeah, closing, I don't believe we did. It's not in the jury instructions either. Well, the jury instruction says specifically in the jury instructions that you can grant a one time lump sum and that covers a pass and future license. Are you asking me if it said that? No, it doesn't say that. What it says is that you should grant damages on basis that will fully and fairly compensate the plaintiff. And that can be a lump sum damage's number, which the jury had plenty of evidence that lump sum is the way that negotiations. Well, did they have plenty of evidence or even an argument to them that they should be considering a lump sum, not just for past damages, but for future damages as well? Well, there was no distinction made and anything presented to the jury asking them to distinguish past. Well, don't you think? I mean, the law on this seems to me to be very unclear about whether the future award is actually damages or an equitable award and whether that can even be awarded to a jury, but even assuming it can, shouldn't it come at six beyond notice about that's the theory? I mean, I mean, I understand you point to evidence from an expert testimony that he mentioned that it could, but it doesn't seem to me that there was any explicit argument anywhere that that was actually the theory you were proposing to the jury. Well, I mean, not only did we have an expert who testified on that, but over and above that, all of the licenses that are, all of the settlement agreements everything, was that your expert or was that the other side's expert? I thought it was just their expert saying, oh, experts testified to it their expert defined a lump sum and our expert defined a lump sum. So it was all in front of the jury on both sides. Where did your expert define a lump sum as, as including future damages? Well, I don't think he called it future damage. What he said was, you would, you would enter into an agreement to pay for the entirety of the use throughout the entirety of the use and the settlement agreements themselves specifically say it covers the entire period of the patent. So that was clearly in front of the jury. Okay, let me just assume that that we disagree with you that that was properly presented. What do we do and that we're going to not? I would defer a district

. What do we do with the $15 million? Do we affirm it or do we send it back and say you need to reconsider whether this was intended to be a future license as well? Well, I think the district court already made that determination because they raised the issue of what to do with it as a future and the district judge specifically said, this jury had in front of evidence that a lump sum includes for the entire period of the patent and reached the conclusion that the judge did under these circumstances. So I don't think there's anything to send back. See, the jury has made it as clear as possible the nature of the royalty. I guess my lump sum maybe my question wasn't clear because there's different results. But soon we find a district court abused this discretion in interpreting the jury verdict that way. Do we affirm the $15 million and send it back on what should be done for a future license or we defend the whole thing back? I think you'd have to send the whole thing back under those circumstances. Thank you, honor. Will we store three minutes of reputal and will add three minutes to the other slide to keep the event? Maybe in the court. Cross the field. Thank you, May, please the court. First of all, I'd like to address the claim construction issue on claim 38. Initially, claim 38 was presented as an original claim. It was never rejected in prosecution. The rejection statements that are mentioned by my friend and in the briefing pertained to other claims that had different wording. Those claims recited pre-processing based on previously received parameters. And the examiner rejected under 112 indefiniteness saying, well, you've mentioned in these claims as a claim drafting exercise previously received parameters, but you know it's in the claim that you've expressly claimed receipt of them. And so the applicant acquiesced in that and amended those claims under that specific language, but the claim in this case, which is application 86 claim 38 was an original claim. And it didn't have the previously received parameters being used for pre-processing

. What it said was said parameters being previously received or being provided, excuse me. I think it's clear that being provided is acting as an adjective in this claim and it modifies the noun parameters. And the issue here is not that some of the six ever took the position. We don't have to prove that. Of course, we have to prove it. It's an element of the claim that we didn't. In an example, outside of the context of this pattern, were that phrase being provided to would be used to talk about something that occurred in the past? The pad being provided to me. I'm using the pad today. It has been provided to me by my firm. Well, you just changed the verb test there from being the pad. Right. The pad being provided or, for instance, yeah, okay, no, let's stick with the pad being provided. That's being provided in the present. Would that suggest a connote that it was provided to you in the past? Yes, it does. It connotes past and it's an adjective that applies to the pad. The pad is of the condition that it being provided or, for instance, if I was had a claim for hammering a nail into the wall, the nail being galvanized. Right. The action is hammering the nail

. The user completes that element of the method claim when he hammeres the nail. For infringement, you have to prove that the nail is galvanized. But if it was galvanized previously, not by the same user, but by whoever manufactured it. Yeah, but galvanized. I mean, we argue here on the debate, grammar and so forth, is about whether or not it's a characteristic. But it seems to me being provided to one could clearly argue is different because it's not a characteristic, right? I, the words are different, but if you look at the context of the specification, what does being provided mean? When does it happen? In the context of the specification, here's what happens. A user goes to a website and the website pushes a program down an active X or an applet to the user's browser. That has the parameters and that's when the being provided happens. Right. Initially, then a user may, that's because being provided to refers back to the parameters. Yes, the parameters your argument has been already been provided to the to the client. Yes, that is exactly it. And so the way the invention works is when the user visits a website, the programmers put on the user's computer, that's when the parameters are provided. Then the user may or may not choose to use that page or that that website to upload images at a later time. There's no temporal limitation. It doesn't say you have to do it right away. You could sit around for a long time. It's also clear that the parameters are provided well in advance in the preferred embodiment and the only embodiment of the actual pre-processing going on

. So in the context of what does being provided in this claim mean, it means the parameters have been provided in advance of the pre-processing. But it doesn't say when anything. And they have to be in advance of the pre-processing because the pre-processing is. Looks like, again, saying being provided means have been provided. I mean, that's in the future. In the previously, yes, that's what it means. And that's consistent with how the embodiment is used. What about the other claim languages that use the past tense for having been provided? Doesn't there just think to be drawn between that when someone uses just the reconstitute statutes when they use different languages of suggestion as they're talking about different things? So we have past use in other cases. Well, that's true, but I think if you look at the language of this claim in connection to other claims, some other claims set this out as an active step of met where it would say, you know, for instance, receiving parameters, right? Here there was a choice made. This is a method claim that's written on the context of a written around a client device, right, the user. I find this all faffling because there are different verb tenses in all the different things. And clearly, there's claims 36 and 37, which I talked about with your friend that says we're provided. If you would use word provided here, you'd be on lot from a ground. He argues that that's for different kinds of methods. I'm not so sure about that. Maybe you can explain. But then you point to other claims claim one, I guess, that is receiving pre-processing parameters, which does sound like it at the same time. I don't know where to fit in provided to in this whole thing. It's such an odd construction that it seems neither were provided or receiving. Right. Okay. And let me explain that because that's exactly the point I want to make. Pick claim one for instance that you referred to. That sets out the steps of first receiving the pre-processing parameters. Secondly, receiving an identification of what photos you wish to upload. Third, pre-processing the photos you wish to upload and finally transmitting them. Those are the four steps. Clearly, receiving the parameters happens first because the parameters have to be there so that the pre-processing can occur in the performance. Now let's go to claim 38. Now let's go to claim 36 and 37 where they talk about where provided. I see your point on claim one. The receiving is talking about a different step. It's not talking about the processing. It's talking about the receiving. But how does the language from claim 36 and 37, which is talked about, for and were, were provided? Which stage of the method is that referring to? This is referring to it says receiving from the client device. Pre-processed content

. It's such an odd construction that it seems neither were provided or receiving. Right. Okay. And let me explain that because that's exactly the point I want to make. Pick claim one for instance that you referred to. That sets out the steps of first receiving the pre-processing parameters. Secondly, receiving an identification of what photos you wish to upload. Third, pre-processing the photos you wish to upload and finally transmitting them. Those are the four steps. Clearly, receiving the parameters happens first because the parameters have to be there so that the pre-processing can occur in the performance. Now let's go to claim 38. Now let's go to claim 36 and 37 where they talk about where provided. I see your point on claim one. The receiving is talking about a different step. It's not talking about the processing. It's talking about the receiving. But how does the language from claim 36 and 37, which is talked about, for and were, were provided? Which stage of the method is that referring to? This is referring to it says receiving from the client device. Pre-processed content. That includes and this is a claim that's written at the server. Okay. So these are method claims and this is a computer implemented method. But what they're doing is the joining Frenchman issues. You have to make sure you white your claim to cover the steps all performed by one actor. 37 is a claim that is written on the server and they're looking at it from the server standpoint, receiving from the client device this pre-processed digital content that was processed in accordance with pre-processing parameters. And so that's why that's an explanation for why the verbiages are different. The reference quickly to those claims if you can't. Don't worry about it. Well, it's in patent. It's claim 37 and that's really all I'm looking at is the claim itself. Where is that in the appendent? It is at a 330. So 37 is a claim written from the server perspective and the the drafter is taking great pains to write all the steps in a tense and in a it a fashion that the server would be you know rivers working at the server would be implementing them. 38 which was asserted in this case is written from the perspective of the client device, the computer or cell phone. And what 38 says is you've got three steps. You initiate at the client device to transfer. Secondly, pre-process and third you transmit. When it talks about pre-processing it says the parameters having been provided

. That includes and this is a claim that's written at the server. Okay. So these are method claims and this is a computer implemented method. But what they're doing is the joining Frenchman issues. You have to make sure you white your claim to cover the steps all performed by one actor. 37 is a claim that is written on the server and they're looking at it from the server standpoint, receiving from the client device this pre-processed digital content that was processed in accordance with pre-processing parameters. And so that's why that's an explanation for why the verbiages are different. The reference quickly to those claims if you can't. Don't worry about it. Well, it's in patent. It's claim 37 and that's really all I'm looking at is the claim itself. Where is that in the appendent? It is at a 330. So 37 is a claim written from the server perspective and the the drafter is taking great pains to write all the steps in a tense and in a it a fashion that the server would be you know rivers working at the server would be implementing them. 38 which was asserted in this case is written from the perspective of the client device, the computer or cell phone. And what 38 says is you've got three steps. You initiate at the client device to transfer. Secondly, pre-process and third you transmit. When it talks about pre-processing it says the parameters having been provided. The reason now here's the critical point. Why do we shift verbs there? In other words, why is having been provided not an active step of the method? The reason is you want to write a claim that all the active steps are performed by one user which is what this is done. Now what Samson says is they don't dispute and they didn't dispute a trial that they do provide parameters that was never in dispute. The argument was at trial this is an active step of the method. We do it in Korea it doesn't count because it's not in the United States. Our retort to that was number one no it's not an active step it's an adjective and it's an adjective that modifies parameters because it's not an active step to Korea exception doesn't apply because we don't have to prove this step is done in the United States. We just have to prove it's true when we did prove it's true. The secondary retort to that was even if it is an active step even if we grant that argument it is done in the United States because the phones when they are updated are reloaded with the parameters and there's evidence in the record that the Samson phones are all updated in the United States as part of the routine update system that we're all familiar with for operating systems on cell phones and so that was the proof under either construction whether this is active or not. Now I'd like to talk about the waiver point because this active step never came out in in Markman. What happened in Markman was Samson argued that the preamble the implementation they said the preamble essentially must all be done in one computer program and they wanted to try to limit this method to be done being done in a single executable and the district court rejected that finding that there wasn't grounds to limit this to being all done in one single executable program. In fact this specification calls out two programs for doing this a web submission tool and a media object identifier tool. There was also a requested construction that the language we have been discussing having been provided is part of the computer implemented method and that's all they asked it's part of the method and the method all needs to be in one computer program that was the argument. Now what's happened is after trial and on appeal the argument is shifted. Yeah but the district court here is you know considered the question of waiver and really said they're just reshaping the argument these are the same thing. Can you do you know of any case in which where district courts is concluded having assessed their self for all the time that there was really no waiver an appellate court would then re-guess the district court and say yep there was the waiver he was wrong. Now I can't fight you in case you're on around that but the argument is shifted again on appeal beyond what they argued is the district court. On appeal now what Samson suggested in this argument is there's a temporal limitation we heard that just moments ago that is the point that has never been raised at the district court. We didn't really join issue on whether this is an active step or not but we argued it in front of the jury and it went to verdict and I'm not saying that you can't decide based on waiver whether it's an active step or not an active step

. The reason now here's the critical point. Why do we shift verbs there? In other words, why is having been provided not an active step of the method? The reason is you want to write a claim that all the active steps are performed by one user which is what this is done. Now what Samson says is they don't dispute and they didn't dispute a trial that they do provide parameters that was never in dispute. The argument was at trial this is an active step of the method. We do it in Korea it doesn't count because it's not in the United States. Our retort to that was number one no it's not an active step it's an adjective and it's an adjective that modifies parameters because it's not an active step to Korea exception doesn't apply because we don't have to prove this step is done in the United States. We just have to prove it's true when we did prove it's true. The secondary retort to that was even if it is an active step even if we grant that argument it is done in the United States because the phones when they are updated are reloaded with the parameters and there's evidence in the record that the Samson phones are all updated in the United States as part of the routine update system that we're all familiar with for operating systems on cell phones and so that was the proof under either construction whether this is active or not. Now I'd like to talk about the waiver point because this active step never came out in in Markman. What happened in Markman was Samson argued that the preamble the implementation they said the preamble essentially must all be done in one computer program and they wanted to try to limit this method to be done being done in a single executable and the district court rejected that finding that there wasn't grounds to limit this to being all done in one single executable program. In fact this specification calls out two programs for doing this a web submission tool and a media object identifier tool. There was also a requested construction that the language we have been discussing having been provided is part of the computer implemented method and that's all they asked it's part of the method and the method all needs to be in one computer program that was the argument. Now what's happened is after trial and on appeal the argument is shifted. Yeah but the district court here is you know considered the question of waiver and really said they're just reshaping the argument these are the same thing. Can you do you know of any case in which where district courts is concluded having assessed their self for all the time that there was really no waiver an appellate court would then re-guess the district court and say yep there was the waiver he was wrong. Now I can't fight you in case you're on around that but the argument is shifted again on appeal beyond what they argued is the district court. On appeal now what Samson suggested in this argument is there's a temporal limitation we heard that just moments ago that is the point that has never been raised at the district court. We didn't really join issue on whether this is an active step or not but we argued it in front of the jury and it went to verdict and I'm not saying that you can't decide based on waiver whether it's an active step or not an active step. I think that's fair game but the more critical limitation that Samson is now trying to advocate for is that there is a temporal limitation. What they basically want to say is now not only do that parameters have to be provided but they have to be provided close in time when the pre-processing is done. That was never raised at Markman. There was never an argument at Markman about order steps temporal limitation any of that and if the upshot of this argument today is that Samson wants to convince the court that this all has to happen with him pre-processing or close to it in time that's a very fresh issue and that's right. I think it's either the damage or the issue you're running out of your time. The customer surveys, it seems very problematic that expert report relying on customer surveys of usage and somehow directly correlating that with the value it is to a customer. I use my phone to take pictures and text them but frankly if it didn't have it on it I would have still bought the same phone. I know that's anecdotal but it does seem to me that there's a big distinction between use and value and I didn't see anywhere in the expert report where he discussed how he got from use to value. Yes, Ronan and the value is at the very beginning of the analysis. The camera component costs to put it in a phone on average across all the phones, $14.15 and the expert testified that that is a proxy for what the value is. In other words, the fact that these phones are ubiquitous with cameras means that in aggregate, consumers value the camera capability at $14 or greater or you wouldn't see them being manufactured in. That's the starting point of value. The surveys are used then to reduce that number based on other features of the camera that we try to segregate out such as video. Let's take out people who video but don't take pictures. Next, who shares pictures and who doesn't and then next, who shares by MMS or text versus sharing by other ways that we're accused? The value is not in the surveys. The value is in the initial $14.15 which the surveys then used to or should down reduce to a smaller allocation of value to just the claimed feature

. I think that's fair game but the more critical limitation that Samson is now trying to advocate for is that there is a temporal limitation. What they basically want to say is now not only do that parameters have to be provided but they have to be provided close in time when the pre-processing is done. That was never raised at Markman. There was never an argument at Markman about order steps temporal limitation any of that and if the upshot of this argument today is that Samson wants to convince the court that this all has to happen with him pre-processing or close to it in time that's a very fresh issue and that's right. I think it's either the damage or the issue you're running out of your time. The customer surveys, it seems very problematic that expert report relying on customer surveys of usage and somehow directly correlating that with the value it is to a customer. I use my phone to take pictures and text them but frankly if it didn't have it on it I would have still bought the same phone. I know that's anecdotal but it does seem to me that there's a big distinction between use and value and I didn't see anywhere in the expert report where he discussed how he got from use to value. Yes, Ronan and the value is at the very beginning of the analysis. The camera component costs to put it in a phone on average across all the phones, $14.15 and the expert testified that that is a proxy for what the value is. In other words, the fact that these phones are ubiquitous with cameras means that in aggregate, consumers value the camera capability at $14 or greater or you wouldn't see them being manufactured in. That's the starting point of value. The surveys are used then to reduce that number based on other features of the camera that we try to segregate out such as video. Let's take out people who video but don't take pictures. Next, who shares pictures and who doesn't and then next, who shares by MMS or text versus sharing by other ways that we're accused? The value is not in the surveys. The value is in the initial $14.15 which the surveys then used to or should down reduce to a smaller allocation of value to just the claimed feature. What is the value of the feature claimed in the invention to Samsung? One more point on the survey. I know there's been some discussion about was Mr. Benoit qualified to rely on the surveys. Interestingly, Samsung's survey expert testified that she contacted all the survey companies before they interviewed them and found no flaws in the methodology of the surveys. The surveys were properly admitted methodologies are fine. Then the issue really becomes, can an accountant who's a CPA and has a lot of history testifying in patent infringement cases reasonably use that information which he basically took just verbatim carried over as to how many people use various features and use that to do an importion. These importion and analysis are clearly within what Mr. Benoit does on a routine basis. Was the methodology used by the expert has any that would have been tested or subject to peer review of any kind? You know interestingly the peer review I think would be discord because this court has set up that there's an requirement to do an importion. Each case is its own case so you don't see for instance experts take the confidential information from cases and put them out in an article for peer review. A lot of the peer review cases that we see that discuss this really come up in the context of toxic port cases where an analysis is done and then the question is well with this peer review that we can rely upon it. But when you have a methodology that has essentially been established by the court which is we have to go ahead and importion. Then I think that methodology carries the impromotor of being reliable and in the specific factual. That's essentially the incident that Rayna is. No. I haven't seen peer review articles on the use of these surveys for smartphones the answer to your right is no. As far as peer review of this court's methodology I don't think that's occurred just because there's really no purpose in doing this this court has set up the methodology. I know my time is up but I'd like to at least address my cross appeal very briefly

. What is the value of the feature claimed in the invention to Samsung? One more point on the survey. I know there's been some discussion about was Mr. Benoit qualified to rely on the surveys. Interestingly, Samsung's survey expert testified that she contacted all the survey companies before they interviewed them and found no flaws in the methodology of the surveys. The surveys were properly admitted methodologies are fine. Then the issue really becomes, can an accountant who's a CPA and has a lot of history testifying in patent infringement cases reasonably use that information which he basically took just verbatim carried over as to how many people use various features and use that to do an importion. These importion and analysis are clearly within what Mr. Benoit does on a routine basis. Was the methodology used by the expert has any that would have been tested or subject to peer review of any kind? You know interestingly the peer review I think would be discord because this court has set up that there's an requirement to do an importion. Each case is its own case so you don't see for instance experts take the confidential information from cases and put them out in an article for peer review. A lot of the peer review cases that we see that discuss this really come up in the context of toxic port cases where an analysis is done and then the question is well with this peer review that we can rely upon it. But when you have a methodology that has essentially been established by the court which is we have to go ahead and importion. Then I think that methodology carries the impromotor of being reliable and in the specific factual. That's essentially the incident that Rayna is. No. I haven't seen peer review articles on the use of these surveys for smartphones the answer to your right is no. As far as peer review of this court's methodology I don't think that's occurred just because there's really no purpose in doing this this court has set up the methodology. I know my time is up but I'd like to at least address my cross appeal very briefly. There's only two points to cross appeal. The first is just some of the facts of this case. The question wasn't framed or put to the jury in sufficient detail that they could have awarded a lump sum that would exhaust future infringement. There was never any projections introduced by the parties. The district court never instructed the jury on how to evaluate and value future infringement. And the damages question that was provided on the verdict form said what amount do you find fair to compensate the plaintiff for the infringement you have found and all the infringement of course was proved up based on past acts of infringement. No discussion of proof of future acts of infringement. So I think from that context if the court finds that the lump sum is and the jury writing lump sum verdict award is clearly not appropriate. In other words they weren't trying to exhaust the future of the patent. The court can affirm the jury verdict and should remain for proceedings for future infringement and the district if we can't tell. Well if you can't tell the problem that you're arguing. It was evidence right. I mean your own witness talked about the distinction. Your own witness was the witness I think that defined what the differences between lump sum and not right. He the jury presumably we can assume that they heard it they understand it and in this instance maybe even believed them. These are the two alternatives put out here. It's your burden on damage is not there is in any of them right. Yes it's our burden as far as the definition it was one Q&A in the record and they asked the expert on cross our expert can lump sum be something that exhausts the life of the patent which the answer to is yes but they never followed up with the second question which you would have disagreed with which is and all are all lump sums doing that

. There's only two points to cross appeal. The first is just some of the facts of this case. The question wasn't framed or put to the jury in sufficient detail that they could have awarded a lump sum that would exhaust future infringement. There was never any projections introduced by the parties. The district court never instructed the jury on how to evaluate and value future infringement. And the damages question that was provided on the verdict form said what amount do you find fair to compensate the plaintiff for the infringement you have found and all the infringement of course was proved up based on past acts of infringement. No discussion of proof of future acts of infringement. So I think from that context if the court finds that the lump sum is and the jury writing lump sum verdict award is clearly not appropriate. In other words they weren't trying to exhaust the future of the patent. The court can affirm the jury verdict and should remain for proceedings for future infringement and the district if we can't tell. Well if you can't tell the problem that you're arguing. It was evidence right. I mean your own witness talked about the distinction. Your own witness was the witness I think that defined what the differences between lump sum and not right. He the jury presumably we can assume that they heard it they understand it and in this instance maybe even believed them. These are the two alternatives put out here. It's your burden on damage is not there is in any of them right. Yes it's our burden as far as the definition it was one Q&A in the record and they asked the expert on cross our expert can lump sum be something that exhausts the life of the patent which the answer to is yes but they never followed up with the second question which you would have disagreed with which is and all are all lump sums doing that. Lump sum is a a term of worth that gets used and it can be for a lump sum deal for five years, lump sum deal for life of patent, lump sum through trial and in fact sam sums expert when talking about texting plans that go month to month said you can pay a lump sum of $15 for a texting plan. So what all that shows is lump sum means converted to a full of money but it doesn't answer the temporal question but to judge use point is if you're if you're confused about in other words if it could go either way obviously the standard is to disregard abuse its discretion in interpreting the verdict one. If you feel the judge did not abuse his discretion then the remedy is to remand for new trial on damages because the jury has obviously done more than it can do given the instruction the verdict form the evidence in the record. But that will also and I will request that the court consider if it does remand on that giving instruction to the district court about whether exhausting and extinguishing a future violation or future infringement is even cognitively is a jury issue. I think typically that is vested in the discretion to the district court on an equitable basis the jury deals with past infringement and damages and on a future looking basis the court the district court and it's equitable jurisdiction has injunction compulsory forward looking royalty or doing nothing which would not extinguish the cause of action but permit the patent owner to file another lawsuit for post convicted infringement. Okay I'm wondering we wrap it up. I find a follow up. I think we'll give you one minute for rebuttal on the cross deal and we'll add a couple more minutes to Mr Phillips time. Thank you to judge the process. I'm trying to be brief here. The fundamental difference judge used between 36 and 37 as I think my colleague explained it is all the pre-processing that happens in the past and the first sentence of each of those claims says has been pre-processed by a client device and then it has been as was received. I think it's fascinating that my friend over here consistently changes the language of claim 38 and said at least four times having been provided which I'm sure if they had embraced that language when they wrote this claim we would be having more of a discussion of publication and other issues than we would on having been received but having not raised that claim. It's absolutely clear you go back to the history that what the inventor did in response to the rejection was change everything to the present tense and the reason they did that was to make it absolutely clear that this was going to be implemented in the computer implementation methodology described in the preamble that all falls into place frankly it is amazing how well this patent lines up with that particular theory. The entire or additional language in that claim limitation said pre-processing parameters being provided to what does it say and refer to? The ones that the device itself is reaching out for I mean it's the ones that are that are you know it's the general description of pre-processing. It's it's it's all the pre-processing that allows you to access either to transmit or it's published fitting on what it is they're asking you to do. Is it referring to the parameters that are mentioned above in the in the in the claims? No I think those not have already been provided? No that's clearly not going back to 36 and 37 that's what that's just talking about the pre-processing parameters generally that are described I mean that's a that's a term that's used throughout this invention. What's just talking about said pre-pronged? There's not there's not some subset of them dealing with something that had already been provided to them. It's absolutely clear because even this language in 38 says digital you know this is for pre-processing digital content

. Lump sum is a a term of worth that gets used and it can be for a lump sum deal for five years, lump sum deal for life of patent, lump sum through trial and in fact sam sums expert when talking about texting plans that go month to month said you can pay a lump sum of $15 for a texting plan. So what all that shows is lump sum means converted to a full of money but it doesn't answer the temporal question but to judge use point is if you're if you're confused about in other words if it could go either way obviously the standard is to disregard abuse its discretion in interpreting the verdict one. If you feel the judge did not abuse his discretion then the remedy is to remand for new trial on damages because the jury has obviously done more than it can do given the instruction the verdict form the evidence in the record. But that will also and I will request that the court consider if it does remand on that giving instruction to the district court about whether exhausting and extinguishing a future violation or future infringement is even cognitively is a jury issue. I think typically that is vested in the discretion to the district court on an equitable basis the jury deals with past infringement and damages and on a future looking basis the court the district court and it's equitable jurisdiction has injunction compulsory forward looking royalty or doing nothing which would not extinguish the cause of action but permit the patent owner to file another lawsuit for post convicted infringement. Okay I'm wondering we wrap it up. I find a follow up. I think we'll give you one minute for rebuttal on the cross deal and we'll add a couple more minutes to Mr Phillips time. Thank you to judge the process. I'm trying to be brief here. The fundamental difference judge used between 36 and 37 as I think my colleague explained it is all the pre-processing that happens in the past and the first sentence of each of those claims says has been pre-processed by a client device and then it has been as was received. I think it's fascinating that my friend over here consistently changes the language of claim 38 and said at least four times having been provided which I'm sure if they had embraced that language when they wrote this claim we would be having more of a discussion of publication and other issues than we would on having been received but having not raised that claim. It's absolutely clear you go back to the history that what the inventor did in response to the rejection was change everything to the present tense and the reason they did that was to make it absolutely clear that this was going to be implemented in the computer implementation methodology described in the preamble that all falls into place frankly it is amazing how well this patent lines up with that particular theory. The entire or additional language in that claim limitation said pre-processing parameters being provided to what does it say and refer to? The ones that the device itself is reaching out for I mean it's the ones that are that are you know it's the general description of pre-processing. It's it's it's all the pre-processing that allows you to access either to transmit or it's published fitting on what it is they're asking you to do. Is it referring to the parameters that are mentioned above in the in the in the claims? No I think those not have already been provided? No that's clearly not going back to 36 and 37 that's what that's just talking about the pre-processing parameters generally that are described I mean that's a that's a term that's used throughout this invention. What's just talking about said pre-pronged? There's not there's not some subset of them dealing with something that had already been provided to them. It's absolutely clear because even this language in 38 says digital you know this is for pre-processing digital content. Now and all of the language in 38 is in the present tense so as I say it all lines up to my mind very very cleanly. I did not understand my colleagues response to the question of how do you camera inside the phone has to do with anything that remotely suggests whether consumers attach any value to this simply because of the use and I took his answer to your question just use it. There is nothing that really connects use and value and there is no methodology that provides for that. The issue is not the surveys of the validity of the surveys the question is the methodology for using the surveys and on that frankly says nothing. With respect to the long-sum. I know this is asking you to prove your friends case fits. Allowing damages in these self-hugged cases is just really confusing to me when there's multiple patents on features and stuff. How if you don't have this kind of allocation based upon here's what the camera cost and we're going to look specifically at different usage surveys and say well we don't have anything specific but this looks pretty good. What more would you require to get to an apportionment which is really up to the end? Well the easiest way is to do a survey that asks consumers specifically what value do you attach to this not to use it but what values do you attach to it? Okay pretty straightforward and that's not that complicated. Now he wouldn't have been he couldn't have done that because he's a CPA but you could hire an expert who could do that. I mean that answer seems satisfactory but then on second thought it seems like then in every single one of these cell phone cases you're going to require the patentee to go out and do all kinds of scientific evidence to come up with this and so the patentee has the burden of proof that's to demonstrate real damages. You can't use the the total market rule you've got you've got I mean the allocation. It's just really like if that's the standard we're going to require that's going to impose substantial litigation costs on people to come up with value that specifically and I'm just wondering if if damages have to be defined not precisely or where the line is? Well no because first of all a survey it's not going to say the survey is not going to say you know what you know what how many cents would you value this at it would tell it would be a different kind of a survey so it's not it's not going to be that precise there's still going to be judgments that's embedded in it and then there's still going to be an interpretation that gets applied to it. Well I think it would save themselves the CPA. Right yeah let me ask you this though I mean if you go out with this survey to customers of these cell phones and say do you value the text messaging or not and and then give them three choices a lot some or none aren't you still going to end up with some kind of the same approximate isn't their usage a fair approximation for how much they value it. I mean I would assume that if somebody uses it a lot they're going to say I value it a lot and I assume if they're going to use it they're going to say they value it. Well I'm not saying there isn't some relationship potentially there but the point here is this is a non-scientist who's put this together based on his reading of other of other research tools with no peer review. I mean the notion that this court is the peer reviewer for his scientific methodology is a pretty remarkable proposition under Daubert

. Now and all of the language in 38 is in the present tense so as I say it all lines up to my mind very very cleanly. I did not understand my colleagues response to the question of how do you camera inside the phone has to do with anything that remotely suggests whether consumers attach any value to this simply because of the use and I took his answer to your question just use it. There is nothing that really connects use and value and there is no methodology that provides for that. The issue is not the surveys of the validity of the surveys the question is the methodology for using the surveys and on that frankly says nothing. With respect to the long-sum. I know this is asking you to prove your friends case fits. Allowing damages in these self-hugged cases is just really confusing to me when there's multiple patents on features and stuff. How if you don't have this kind of allocation based upon here's what the camera cost and we're going to look specifically at different usage surveys and say well we don't have anything specific but this looks pretty good. What more would you require to get to an apportionment which is really up to the end? Well the easiest way is to do a survey that asks consumers specifically what value do you attach to this not to use it but what values do you attach to it? Okay pretty straightforward and that's not that complicated. Now he wouldn't have been he couldn't have done that because he's a CPA but you could hire an expert who could do that. I mean that answer seems satisfactory but then on second thought it seems like then in every single one of these cell phone cases you're going to require the patentee to go out and do all kinds of scientific evidence to come up with this and so the patentee has the burden of proof that's to demonstrate real damages. You can't use the the total market rule you've got you've got I mean the allocation. It's just really like if that's the standard we're going to require that's going to impose substantial litigation costs on people to come up with value that specifically and I'm just wondering if if damages have to be defined not precisely or where the line is? Well no because first of all a survey it's not going to say the survey is not going to say you know what you know what how many cents would you value this at it would tell it would be a different kind of a survey so it's not it's not going to be that precise there's still going to be judgments that's embedded in it and then there's still going to be an interpretation that gets applied to it. Well I think it would save themselves the CPA. Right yeah let me ask you this though I mean if you go out with this survey to customers of these cell phones and say do you value the text messaging or not and and then give them three choices a lot some or none aren't you still going to end up with some kind of the same approximate isn't their usage a fair approximation for how much they value it. I mean I would assume that if somebody uses it a lot they're going to say I value it a lot and I assume if they're going to use it they're going to say they value it. Well I'm not saying there isn't some relationship potentially there but the point here is this is a non-scientist who's put this together based on his reading of other of other research tools with no peer review. I mean the notion that this court is the peer reviewer for his scientific methodology is a pretty remarkable proposition under Daubert. I understand your objections on that but I'm if he had presuming this person had actually been qualified and I'm not saying it was but assuming he's qualified to do all this and he said you know this is really hard to do it and my best estimate for what value is is to correlate it with usage. Assuming he's qualified is that enough and then then he would have to demonstrate at the Daubert hearing that somebody else has ever you know that there's some scientific basis for that other than that other than he just made it up. I mean there has to be a scientific basis for it and there isn't. Just two seconds on the on the cross appeal you ask me specifically about the testimony. 64, 53, Benoit describes Alumsum license that's their expert. 64, 79 Benoit again just general it says Alumsum payment is paying for the use of the technology without hindsight. Alumsum payment goes to the licensee because they're bearing the risk of commercialization and then our our experts testified on at 7089 and 7090 specifically it's my opinion that this should be a lump sum one time payment that covers the entirety of the patent and that's what and that's how he describes Alumsum payment. Did you remade that determination? It's not an abusive discretion. If the court decides that the 15 million is not supportable the right answer is which is leave the lump sum in place as the license as they jury found the licensing agreement and remand it either either impose 1.5 million or or restricted to no more than 15 million and Alumsum. I don't know for their questions. Thank you. Thank you. So you're on the cross appeal I have nothing further to add unless the court has questions of me. Thank you. Thank you. Thank you.

131648 summit six for the sound sum electronic. It's that old here. I'm going to give you a few. Thank you. Morning, honours, may I please the court. The district courts of fundamental error in this case was in its claim construction of claim 38. It analyzed claim 38 and the specific language parameters being provided to in that claim. It's simply a characteristic as opposed to what I think is the appropriate way to interpret that, which is that it is a limitation on the claim. And I think the easiest way to understand that because the language can be read, I think, in a variety of ways is to undertake what I view as the more holistic approach, which is to look at it in the context of the patent prosecution, the other claims in the case, and the specification. And if you do that, and I think the prosecution is the most clear in terms of demonstrating that this has a temporal limitation embodied in it. And on 25179 of the joint appendix, the examiner rejects these claims as indefinite on the basis of that they recite previously received pre-processing parameters. Since the claims are not shown any previously received parameter prior to the pre-processing step, such claim is indefinite. And then, in response to that, what did the inventors do? They went through and changed all of the language, including the claim that became claim 38, from past tense to present tense. They kept some provisions that have a true past tense component in them at just as they were. But they changed everything else into a present tense. So that's the term being provided to that you're referring to? Yes, Your Honor. So your argument would appear to be clearly a claim-construction argument. Did you make that argument during the dobert hearing? During the dobert hearing, as opposed to during the claim-construction process. During the claim-construction process. Oh, absolutely. Our argument all along was that the timing of this is absolutely critical. And the reason you know that is because Samsung obviously puts the parameters onto the phone weeks, months, maybe even years before the pre-processing is implemented on the computer implemented methodologies. So we said all along that that temporal component is important. Now to be sure, we focused primarily on the preamble and the specification. Because that was in our mind at the time, the single biggest part of the invention, where they came out with this ability to just tap in immediately and go right into the, frankly, to go right on the same thing. But what led the district court to stray here? I mean, I get your argument and I think there's some power to it. So what explains what the district court doesn't buy it below? I mean, I think he just bought the plaintiff's argument that it's a characteristic that that's the way he would read it. I don't think he really did business with the prosecution history, which we cited to them both in the claim construction and in the J-Mall. But he basically just said, you know, I think being provided to can be read any of a number of words. I don't think he performed the function you expected this record for form with respect to claim construction, which is to set out the meats and bounds. You know, the whole purpose is this is to provide notice. Somebody looking at this, and particularly Samsung looking at this, and seeing what they did in response to a very clear rejection based on past pre-processing being provided, and see somebody go in and adjust the entire patent to provide for temporarily present pre-processing as the mechanism, and then read the preamble that says that's the key to this is to be able to do it during the computer implemented methodology. It seems to me that the meats and bounds of fairly are clearly defined on that temporal basis. Why did you like to miss that? I don't know. Steven Markman, what was the focus of your argument? Wasn't it on the terms receiving and provided to, which would be passed since as opposed to being provided to? Well, now I mean, we did all of those things, but again, I think it's fair to say, Judge Raynor, that the primary focus at the time was on the preamble and using that as a limitation on the entirety of Rule 38. And all we're doing here, frankly, is essentially what the court, I think, recognized as permissible under O2, which is that if you so, if you have laid out for the district court, why it is that this ought to be interpreted temporarily as of the time of the actual operation, the computer implemented operation, you then permitted to go through and find additional arguments that support it to be sure we didn't do the claim differentiation portion of the analysis that we put forward in our brief. But the truth is it all hangs together. So the argument in your brief is clear. There's no doubt about that. I don't have a difficulty in understanding whether you made that argument below, whether you waived the argument to making that or whether you waived it. Yeah, we clearly did not waive that. What we said to the district judge that the claim construction, throughout the trial, and then the J-Mall was that there is a temporal component to claim 38. Now, to be sure, again, we focus primarily in the claim construction on the preamble, but we also cited him to the prosecution history, and he didn't find the preamble persuasive, and he concluded that then he didn't have to go any further in terms of being provided to needing any additional interpretation. So again, it seems to me we're talking about exactly what O2 talks about. And didn't the district court not say something and proceedings below we got in the waiver? In other words, when we reformulated the argument at the J-Mall stage, he said exactly that. You're making essentially the same argument before you're just dressing it up in a different guard. And while it wasn't specifically in response to a waiver point, it was simply there wasn't a waiver argument made. He did not obviously buy that. He was just explaining his analysis of what we were saying compared to what we had said before. So it seems to me particularly inappropriate for this court to come in and say there's been a waiver when that issue was presented to the district judge, and the district judge wasn't offended by it, because obviously the whole purpose of this exercise is that we shouldn't be laying in the weeds and wishing a judge. He didn't feel that way. He thought the issue had been properly put before, and he just didn't agree with us. Now, if we agree hypothetically with you on this question, but not on the other issues we raised with regard to anticipation of a foreign infringement on the publication, that's a new trial, right? This is no connection with the motion for a new trial. No, I think actually the right answer at this stage would be a judgment for the defendant on these circumstances, because there is no evidence. I don't think there's any evidence. And it was certainly not presented to the jury that there's anything other than the evidence that the Samsung puts it on the phones long before the pre-conflicts. I think it's always so in connection with just the motion for a new trial. I think is that what you asked for below a straight-up reversal? Yeah, in our general. Let me ask, but given the way the thing is. I'm sorry, you're right. It was. It was a new trial. Okay, so the other thing is the other argument is I guess that if assuming they were operating under the different claim construction, you're right. They may not put on any evidence, but in fairness to them, they didn't think they had to put on certain evidence, assuming they had it. No, I think that's fair. I don't think they have any evidence, because I think the proof is quite clear that Samsung, even, I mean, most of this is all put on obviously in Korea, but even any of it, they may have been put on in the United States, it's still put on well before the pre-processing process is undertaken by the cell phone itself. But it's a fair point if they have an evidence that they can put on, presumably they would have the opportunity to do that. Can I just ask the other question about this being provided to argument? I've found this kind of puzzling and I'm trying to get where the real force of your argument is. Is it based really on your reading of the claim? Where is it more on the claim differentiation argument looking at the other claims and the various verb tenses used in those? Well, as I said, I think the claim can be read sort of either way. I like our reading of it better for obvious reasons. I'm guessing being paid to you on that. I don't find the being provided to the language very clear and that it has to be provided at the time. So it's for me that the force of the argument really still comes primarily from the history, which explains where did the, you know, where did this language come from? Because if you just had this language and the abstract, I don't know what you do with it. But when you see the history and the specific rejection because all you've got is, you know, you don't have anything about parameters in the patent. So they say, well, let's make everything in the pattern. Are there any uncertain claims that do you use the past tense of the verb? Yeah. In situations where it clearly calls for actions that have been taken in the past every time, but all of the other references and they, and you know, give the inventors credit they, asciuously went through and modified everything to eliminate this problem. This was not an accommodation to the, to the examiner. This is a recognition that there was a problem. They didn't have any evidence of past parameters being put on. The whole purpose of this invention, the preamble tells you is to be able to access these on a real time basis while the computer method is being implemented. So when they're using the past tense in claims 36 and 37, which are unaxerted, that's about something entirely different, about something entirely different. Yes. It's fundamentally different. And again, I, I, I, I, why is that? Because I, I mean, they are they specifically use the term parameters or provided. Right. Because under those circumstances, they were provided in the, in the previous, in some previous point. They're talking about it's been pre-processed. I mean, that's, it's, it's just, it goes to a, it goes to a fundamentally different approach. I'm not interested in damages. I was just going to say that, just right. You know, my view on the damages is that, that's a, Mr. Benoit is not, was never should have been allowed to testify. Certainly not on the particular methodology. Is a CPA, he's gone through here and exactly the way he would not want a jury to evaluate an expert, which is he takes usage data, which he can't, which he has no evidence from any scientific basis, correlate to the value, and immediately correlates it directly, one to one, on the value of this, of, of this particular feature. If we agree with you on that, and even if we agree with you with one of the licenses, that we're still left with disagreeing with you on whether or not the rimmed license was appropriately considered, isn't that a base to fight itself, just to stay in the jury with us? I don't see how you could get anywhere near $15 million on the rim license alone. I mean, I guess they started, well, I don't, I don't know what number is on, I'm allowed to talk about that. But if you do it on the rim license, that license comes nowhere near the damages in this particular case. I can, that much I can tell you, you would need the other license in order to get there. So on the rim license, is that, is that a lump sum figure that came up with? Yes, that is non-sumptivity. No, that's a lump sum figure. Indeed, all of the settlements are lump sum figures, which is why the jury decided this is a lump sum based on. On my basic point on the damages, it's been wise methodology had no acknowledges, no scientific method. Nothing he had ever done used himself. No basis from any literature that suggests that you can take simple usage and convert it into value. And using his methodology, if you do it on the other features, means that 580 percent of the value of the telephone is on features other than uses as a telephone. I mean, it's a crazy methodology. It should have been rejected out of me and taken off the table. I know you're into your vital time, but I want to ask you about the lump sum one time license for all time. You didn't present that theory to the jury. Did you? We have evidence on it. No, no, no. My question is, did you specifically present that theory to the jury? Did we argue with the jury? Yeah, closing, I don't believe we did. It's not in the jury instructions either. Well, the jury instruction says specifically in the jury instructions that you can grant a one time lump sum and that covers a pass and future license. Are you asking me if it said that? No, it doesn't say that. What it says is that you should grant damages on basis that will fully and fairly compensate the plaintiff. And that can be a lump sum damage's number, which the jury had plenty of evidence that lump sum is the way that negotiations. Well, did they have plenty of evidence or even an argument to them that they should be considering a lump sum, not just for past damages, but for future damages as well? Well, there was no distinction made and anything presented to the jury asking them to distinguish past. Well, don't you think? I mean, the law on this seems to me to be very unclear about whether the future award is actually damages or an equitable award and whether that can even be awarded to a jury, but even assuming it can, shouldn't it come at six beyond notice about that's the theory? I mean, I mean, I understand you point to evidence from an expert testimony that he mentioned that it could, but it doesn't seem to me that there was any explicit argument anywhere that that was actually the theory you were proposing to the jury. Well, I mean, not only did we have an expert who testified on that, but over and above that, all of the licenses that are, all of the settlement agreements everything, was that your expert or was that the other side's expert? I thought it was just their expert saying, oh, experts testified to it their expert defined a lump sum and our expert defined a lump sum. So it was all in front of the jury on both sides. Where did your expert define a lump sum as, as including future damages? Well, I don't think he called it future damage. What he said was, you would, you would enter into an agreement to pay for the entirety of the use throughout the entirety of the use and the settlement agreements themselves specifically say it covers the entire period of the patent. So that was clearly in front of the jury. Okay, let me just assume that that we disagree with you that that was properly presented. What do we do and that we're going to not? I would defer a district. What do we do with the $15 million? Do we affirm it or do we send it back and say you need to reconsider whether this was intended to be a future license as well? Well, I think the district court already made that determination because they raised the issue of what to do with it as a future and the district judge specifically said, this jury had in front of evidence that a lump sum includes for the entire period of the patent and reached the conclusion that the judge did under these circumstances. So I don't think there's anything to send back. See, the jury has made it as clear as possible the nature of the royalty. I guess my lump sum maybe my question wasn't clear because there's different results. But soon we find a district court abused this discretion in interpreting the jury verdict that way. Do we affirm the $15 million and send it back on what should be done for a future license or we defend the whole thing back? I think you'd have to send the whole thing back under those circumstances. Thank you, honor. Will we store three minutes of reputal and will add three minutes to the other slide to keep the event? Maybe in the court. Cross the field. Thank you, May, please the court. First of all, I'd like to address the claim construction issue on claim 38. Initially, claim 38 was presented as an original claim. It was never rejected in prosecution. The rejection statements that are mentioned by my friend and in the briefing pertained to other claims that had different wording. Those claims recited pre-processing based on previously received parameters. And the examiner rejected under 112 indefiniteness saying, well, you've mentioned in these claims as a claim drafting exercise previously received parameters, but you know it's in the claim that you've expressly claimed receipt of them. And so the applicant acquiesced in that and amended those claims under that specific language, but the claim in this case, which is application 86 claim 38 was an original claim. And it didn't have the previously received parameters being used for pre-processing. What it said was said parameters being previously received or being provided, excuse me. I think it's clear that being provided is acting as an adjective in this claim and it modifies the noun parameters. And the issue here is not that some of the six ever took the position. We don't have to prove that. Of course, we have to prove it. It's an element of the claim that we didn't. In an example, outside of the context of this pattern, were that phrase being provided to would be used to talk about something that occurred in the past? The pad being provided to me. I'm using the pad today. It has been provided to me by my firm. Well, you just changed the verb test there from being the pad. Right. The pad being provided or, for instance, yeah, okay, no, let's stick with the pad being provided. That's being provided in the present. Would that suggest a connote that it was provided to you in the past? Yes, it does. It connotes past and it's an adjective that applies to the pad. The pad is of the condition that it being provided or, for instance, if I was had a claim for hammering a nail into the wall, the nail being galvanized. Right. The action is hammering the nail. The user completes that element of the method claim when he hammeres the nail. For infringement, you have to prove that the nail is galvanized. But if it was galvanized previously, not by the same user, but by whoever manufactured it. Yeah, but galvanized. I mean, we argue here on the debate, grammar and so forth, is about whether or not it's a characteristic. But it seems to me being provided to one could clearly argue is different because it's not a characteristic, right? I, the words are different, but if you look at the context of the specification, what does being provided mean? When does it happen? In the context of the specification, here's what happens. A user goes to a website and the website pushes a program down an active X or an applet to the user's browser. That has the parameters and that's when the being provided happens. Right. Initially, then a user may, that's because being provided to refers back to the parameters. Yes, the parameters your argument has been already been provided to the to the client. Yes, that is exactly it. And so the way the invention works is when the user visits a website, the programmers put on the user's computer, that's when the parameters are provided. Then the user may or may not choose to use that page or that that website to upload images at a later time. There's no temporal limitation. It doesn't say you have to do it right away. You could sit around for a long time. It's also clear that the parameters are provided well in advance in the preferred embodiment and the only embodiment of the actual pre-processing going on. So in the context of what does being provided in this claim mean, it means the parameters have been provided in advance of the pre-processing. But it doesn't say when anything. And they have to be in advance of the pre-processing because the pre-processing is. Looks like, again, saying being provided means have been provided. I mean, that's in the future. In the previously, yes, that's what it means. And that's consistent with how the embodiment is used. What about the other claim languages that use the past tense for having been provided? Doesn't there just think to be drawn between that when someone uses just the reconstitute statutes when they use different languages of suggestion as they're talking about different things? So we have past use in other cases. Well, that's true, but I think if you look at the language of this claim in connection to other claims, some other claims set this out as an active step of met where it would say, you know, for instance, receiving parameters, right? Here there was a choice made. This is a method claim that's written on the context of a written around a client device, right, the user. I find this all faffling because there are different verb tenses in all the different things. And clearly, there's claims 36 and 37, which I talked about with your friend that says we're provided. If you would use word provided here, you'd be on lot from a ground. He argues that that's for different kinds of methods. I'm not so sure about that. Maybe you can explain. But then you point to other claims claim one, I guess, that is receiving pre-processing parameters, which does sound like it at the same time. I don't know where to fit in provided to in this whole thing. It's such an odd construction that it seems neither were provided or receiving. Right. Okay. And let me explain that because that's exactly the point I want to make. Pick claim one for instance that you referred to. That sets out the steps of first receiving the pre-processing parameters. Secondly, receiving an identification of what photos you wish to upload. Third, pre-processing the photos you wish to upload and finally transmitting them. Those are the four steps. Clearly, receiving the parameters happens first because the parameters have to be there so that the pre-processing can occur in the performance. Now let's go to claim 38. Now let's go to claim 36 and 37 where they talk about where provided. I see your point on claim one. The receiving is talking about a different step. It's not talking about the processing. It's talking about the receiving. But how does the language from claim 36 and 37, which is talked about, for and were, were provided? Which stage of the method is that referring to? This is referring to it says receiving from the client device. Pre-processed content. That includes and this is a claim that's written at the server. Okay. So these are method claims and this is a computer implemented method. But what they're doing is the joining Frenchman issues. You have to make sure you white your claim to cover the steps all performed by one actor. 37 is a claim that is written on the server and they're looking at it from the server standpoint, receiving from the client device this pre-processed digital content that was processed in accordance with pre-processing parameters. And so that's why that's an explanation for why the verbiages are different. The reference quickly to those claims if you can't. Don't worry about it. Well, it's in patent. It's claim 37 and that's really all I'm looking at is the claim itself. Where is that in the appendent? It is at a 330. So 37 is a claim written from the server perspective and the the drafter is taking great pains to write all the steps in a tense and in a it a fashion that the server would be you know rivers working at the server would be implementing them. 38 which was asserted in this case is written from the perspective of the client device, the computer or cell phone. And what 38 says is you've got three steps. You initiate at the client device to transfer. Secondly, pre-process and third you transmit. When it talks about pre-processing it says the parameters having been provided. The reason now here's the critical point. Why do we shift verbs there? In other words, why is having been provided not an active step of the method? The reason is you want to write a claim that all the active steps are performed by one user which is what this is done. Now what Samson says is they don't dispute and they didn't dispute a trial that they do provide parameters that was never in dispute. The argument was at trial this is an active step of the method. We do it in Korea it doesn't count because it's not in the United States. Our retort to that was number one no it's not an active step it's an adjective and it's an adjective that modifies parameters because it's not an active step to Korea exception doesn't apply because we don't have to prove this step is done in the United States. We just have to prove it's true when we did prove it's true. The secondary retort to that was even if it is an active step even if we grant that argument it is done in the United States because the phones when they are updated are reloaded with the parameters and there's evidence in the record that the Samson phones are all updated in the United States as part of the routine update system that we're all familiar with for operating systems on cell phones and so that was the proof under either construction whether this is active or not. Now I'd like to talk about the waiver point because this active step never came out in in Markman. What happened in Markman was Samson argued that the preamble the implementation they said the preamble essentially must all be done in one computer program and they wanted to try to limit this method to be done being done in a single executable and the district court rejected that finding that there wasn't grounds to limit this to being all done in one single executable program. In fact this specification calls out two programs for doing this a web submission tool and a media object identifier tool. There was also a requested construction that the language we have been discussing having been provided is part of the computer implemented method and that's all they asked it's part of the method and the method all needs to be in one computer program that was the argument. Now what's happened is after trial and on appeal the argument is shifted. Yeah but the district court here is you know considered the question of waiver and really said they're just reshaping the argument these are the same thing. Can you do you know of any case in which where district courts is concluded having assessed their self for all the time that there was really no waiver an appellate court would then re-guess the district court and say yep there was the waiver he was wrong. Now I can't fight you in case you're on around that but the argument is shifted again on appeal beyond what they argued is the district court. On appeal now what Samson suggested in this argument is there's a temporal limitation we heard that just moments ago that is the point that has never been raised at the district court. We didn't really join issue on whether this is an active step or not but we argued it in front of the jury and it went to verdict and I'm not saying that you can't decide based on waiver whether it's an active step or not an active step. I think that's fair game but the more critical limitation that Samson is now trying to advocate for is that there is a temporal limitation. What they basically want to say is now not only do that parameters have to be provided but they have to be provided close in time when the pre-processing is done. That was never raised at Markman. There was never an argument at Markman about order steps temporal limitation any of that and if the upshot of this argument today is that Samson wants to convince the court that this all has to happen with him pre-processing or close to it in time that's a very fresh issue and that's right. I think it's either the damage or the issue you're running out of your time. The customer surveys, it seems very problematic that expert report relying on customer surveys of usage and somehow directly correlating that with the value it is to a customer. I use my phone to take pictures and text them but frankly if it didn't have it on it I would have still bought the same phone. I know that's anecdotal but it does seem to me that there's a big distinction between use and value and I didn't see anywhere in the expert report where he discussed how he got from use to value. Yes, Ronan and the value is at the very beginning of the analysis. The camera component costs to put it in a phone on average across all the phones, $14.15 and the expert testified that that is a proxy for what the value is. In other words, the fact that these phones are ubiquitous with cameras means that in aggregate, consumers value the camera capability at $14 or greater or you wouldn't see them being manufactured in. That's the starting point of value. The surveys are used then to reduce that number based on other features of the camera that we try to segregate out such as video. Let's take out people who video but don't take pictures. Next, who shares pictures and who doesn't and then next, who shares by MMS or text versus sharing by other ways that we're accused? The value is not in the surveys. The value is in the initial $14.15 which the surveys then used to or should down reduce to a smaller allocation of value to just the claimed feature. What is the value of the feature claimed in the invention to Samsung? One more point on the survey. I know there's been some discussion about was Mr. Benoit qualified to rely on the surveys. Interestingly, Samsung's survey expert testified that she contacted all the survey companies before they interviewed them and found no flaws in the methodology of the surveys. The surveys were properly admitted methodologies are fine. Then the issue really becomes, can an accountant who's a CPA and has a lot of history testifying in patent infringement cases reasonably use that information which he basically took just verbatim carried over as to how many people use various features and use that to do an importion. These importion and analysis are clearly within what Mr. Benoit does on a routine basis. Was the methodology used by the expert has any that would have been tested or subject to peer review of any kind? You know interestingly the peer review I think would be discord because this court has set up that there's an requirement to do an importion. Each case is its own case so you don't see for instance experts take the confidential information from cases and put them out in an article for peer review. A lot of the peer review cases that we see that discuss this really come up in the context of toxic port cases where an analysis is done and then the question is well with this peer review that we can rely upon it. But when you have a methodology that has essentially been established by the court which is we have to go ahead and importion. Then I think that methodology carries the impromotor of being reliable and in the specific factual. That's essentially the incident that Rayna is. No. I haven't seen peer review articles on the use of these surveys for smartphones the answer to your right is no. As far as peer review of this court's methodology I don't think that's occurred just because there's really no purpose in doing this this court has set up the methodology. I know my time is up but I'd like to at least address my cross appeal very briefly. There's only two points to cross appeal. The first is just some of the facts of this case. The question wasn't framed or put to the jury in sufficient detail that they could have awarded a lump sum that would exhaust future infringement. There was never any projections introduced by the parties. The district court never instructed the jury on how to evaluate and value future infringement. And the damages question that was provided on the verdict form said what amount do you find fair to compensate the plaintiff for the infringement you have found and all the infringement of course was proved up based on past acts of infringement. No discussion of proof of future acts of infringement. So I think from that context if the court finds that the lump sum is and the jury writing lump sum verdict award is clearly not appropriate. In other words they weren't trying to exhaust the future of the patent. The court can affirm the jury verdict and should remain for proceedings for future infringement and the district if we can't tell. Well if you can't tell the problem that you're arguing. It was evidence right. I mean your own witness talked about the distinction. Your own witness was the witness I think that defined what the differences between lump sum and not right. He the jury presumably we can assume that they heard it they understand it and in this instance maybe even believed them. These are the two alternatives put out here. It's your burden on damage is not there is in any of them right. Yes it's our burden as far as the definition it was one Q&A in the record and they asked the expert on cross our expert can lump sum be something that exhausts the life of the patent which the answer to is yes but they never followed up with the second question which you would have disagreed with which is and all are all lump sums doing that. Lump sum is a a term of worth that gets used and it can be for a lump sum deal for five years, lump sum deal for life of patent, lump sum through trial and in fact sam sums expert when talking about texting plans that go month to month said you can pay a lump sum of $15 for a texting plan. So what all that shows is lump sum means converted to a full of money but it doesn't answer the temporal question but to judge use point is if you're if you're confused about in other words if it could go either way obviously the standard is to disregard abuse its discretion in interpreting the verdict one. If you feel the judge did not abuse his discretion then the remedy is to remand for new trial on damages because the jury has obviously done more than it can do given the instruction the verdict form the evidence in the record. But that will also and I will request that the court consider if it does remand on that giving instruction to the district court about whether exhausting and extinguishing a future violation or future infringement is even cognitively is a jury issue. I think typically that is vested in the discretion to the district court on an equitable basis the jury deals with past infringement and damages and on a future looking basis the court the district court and it's equitable jurisdiction has injunction compulsory forward looking royalty or doing nothing which would not extinguish the cause of action but permit the patent owner to file another lawsuit for post convicted infringement. Okay I'm wondering we wrap it up. I find a follow up. I think we'll give you one minute for rebuttal on the cross deal and we'll add a couple more minutes to Mr Phillips time. Thank you to judge the process. I'm trying to be brief here. The fundamental difference judge used between 36 and 37 as I think my colleague explained it is all the pre-processing that happens in the past and the first sentence of each of those claims says has been pre-processed by a client device and then it has been as was received. I think it's fascinating that my friend over here consistently changes the language of claim 38 and said at least four times having been provided which I'm sure if they had embraced that language when they wrote this claim we would be having more of a discussion of publication and other issues than we would on having been received but having not raised that claim. It's absolutely clear you go back to the history that what the inventor did in response to the rejection was change everything to the present tense and the reason they did that was to make it absolutely clear that this was going to be implemented in the computer implementation methodology described in the preamble that all falls into place frankly it is amazing how well this patent lines up with that particular theory. The entire or additional language in that claim limitation said pre-processing parameters being provided to what does it say and refer to? The ones that the device itself is reaching out for I mean it's the ones that are that are you know it's the general description of pre-processing. It's it's it's all the pre-processing that allows you to access either to transmit or it's published fitting on what it is they're asking you to do. Is it referring to the parameters that are mentioned above in the in the in the claims? No I think those not have already been provided? No that's clearly not going back to 36 and 37 that's what that's just talking about the pre-processing parameters generally that are described I mean that's a that's a term that's used throughout this invention. What's just talking about said pre-pronged? There's not there's not some subset of them dealing with something that had already been provided to them. It's absolutely clear because even this language in 38 says digital you know this is for pre-processing digital content. Now and all of the language in 38 is in the present tense so as I say it all lines up to my mind very very cleanly. I did not understand my colleagues response to the question of how do you camera inside the phone has to do with anything that remotely suggests whether consumers attach any value to this simply because of the use and I took his answer to your question just use it. There is nothing that really connects use and value and there is no methodology that provides for that. The issue is not the surveys of the validity of the surveys the question is the methodology for using the surveys and on that frankly says nothing. With respect to the long-sum. I know this is asking you to prove your friends case fits. Allowing damages in these self-hugged cases is just really confusing to me when there's multiple patents on features and stuff. How if you don't have this kind of allocation based upon here's what the camera cost and we're going to look specifically at different usage surveys and say well we don't have anything specific but this looks pretty good. What more would you require to get to an apportionment which is really up to the end? Well the easiest way is to do a survey that asks consumers specifically what value do you attach to this not to use it but what values do you attach to it? Okay pretty straightforward and that's not that complicated. Now he wouldn't have been he couldn't have done that because he's a CPA but you could hire an expert who could do that. I mean that answer seems satisfactory but then on second thought it seems like then in every single one of these cell phone cases you're going to require the patentee to go out and do all kinds of scientific evidence to come up with this and so the patentee has the burden of proof that's to demonstrate real damages. You can't use the the total market rule you've got you've got I mean the allocation. It's just really like if that's the standard we're going to require that's going to impose substantial litigation costs on people to come up with value that specifically and I'm just wondering if if damages have to be defined not precisely or where the line is? Well no because first of all a survey it's not going to say the survey is not going to say you know what you know what how many cents would you value this at it would tell it would be a different kind of a survey so it's not it's not going to be that precise there's still going to be judgments that's embedded in it and then there's still going to be an interpretation that gets applied to it. Well I think it would save themselves the CPA. Right yeah let me ask you this though I mean if you go out with this survey to customers of these cell phones and say do you value the text messaging or not and and then give them three choices a lot some or none aren't you still going to end up with some kind of the same approximate isn't their usage a fair approximation for how much they value it. I mean I would assume that if somebody uses it a lot they're going to say I value it a lot and I assume if they're going to use it they're going to say they value it. Well I'm not saying there isn't some relationship potentially there but the point here is this is a non-scientist who's put this together based on his reading of other of other research tools with no peer review. I mean the notion that this court is the peer reviewer for his scientific methodology is a pretty remarkable proposition under Daubert. I understand your objections on that but I'm if he had presuming this person had actually been qualified and I'm not saying it was but assuming he's qualified to do all this and he said you know this is really hard to do it and my best estimate for what value is is to correlate it with usage. Assuming he's qualified is that enough and then then he would have to demonstrate at the Daubert hearing that somebody else has ever you know that there's some scientific basis for that other than that other than he just made it up. I mean there has to be a scientific basis for it and there isn't. Just two seconds on the on the cross appeal you ask me specifically about the testimony. 64, 53, Benoit describes Alumsum license that's their expert. 64, 79 Benoit again just general it says Alumsum payment is paying for the use of the technology without hindsight. Alumsum payment goes to the licensee because they're bearing the risk of commercialization and then our our experts testified on at 7089 and 7090 specifically it's my opinion that this should be a lump sum one time payment that covers the entirety of the patent and that's what and that's how he describes Alumsum payment. Did you remade that determination? It's not an abusive discretion. If the court decides that the 15 million is not supportable the right answer is which is leave the lump sum in place as the license as they jury found the licensing agreement and remand it either either impose 1.5 million or or restricted to no more than 15 million and Alumsum. I don't know for their questions. Thank you. Thank you. So you're on the cross appeal I have nothing further to add unless the court has questions of me. Thank you. Thank you. Thank you