good morning warning we have three cases which will be orally argued two of additional cases which will be submitted on the record for purposes of our record i will list those two submitted cases the first one is two thousand and ten three one zero one cahill versus the french the second is two zero one x five one three nine parker versus the united states first case to be orally argued is two thousand and ten one zero six nine japan cash machine versus rounds for the day same appellants is going to make some brief remarks to begin my argument concerning the four of six patent that's on appeal there is a primary claim construction issue before the court  fairly dispositive of most of the issues concerning infringement ample it is and it's a very simple issue what processing does the discriminator means of claim  it simply determining whether the bar code is proper or whether the bar code it number is acceptable for play now this issue became crystallize at trial because the at the validator and used the back end system to determine except ability the exact same way that any ice product worked as well after the court heard testimony about that product from m court indicated that perhaps it made an error in its claim construction on that issue however the court did two things number one it said it would be unfair to force any eye to litigate that issue at that point in the trial and number two when the court consider line j malt nevertheless decided that the proper claim construction was the discriminator means had to do processing concerning the acceptability for play coupon we claim that was there plain and simple there is nothing in claim one that requires acceptability of a bar code coupons be determined by the discriminat claim one refers to storing and comparing barcode patterns but says nothing about using these patterns to determine whether the barcode a coupon is acceptable for play now there is a key term that we think is very important in claim one it is the word coincidence because that term is very clearly defined in the specification so the comparison of claim one is to detect coincidence between the stored farkle i have the stop you because you've got four minutes and i don't know what you're saying are you talking about whether there has to be inside the housing or not are you trying to focus on whether or not the bar code that is stored has to be pre determined i'm just i'm not following you that's fine there is a third issue on appeal for purposes of claim construction other than the two you just mentioned and that's the one i'm focusing on and that is what is the discriminator means  it goes to is the connection the court found that the connection term within the claimed alternately required that the discriminant means be inside the so then there was an argument by m e i fall for at trial and on summary judgment that there discriminator means was outside the bill balloted or head because it was determining not the argument that you're making now it's a different argument your honor and then again i have a lot of my time on the forest six i do want to finish my comment that when you determine the coincidence between the bar code signals and memory in the ones that were sensible the term that coincidence the specification makes clear that the only thing you're doing it's a terminal whether the barcode is genuine mystery around  question independent of the question of infringement of the four hundred six why why is there not substantial evidence in the form of the the laser coin evidence as a whole that invalidity just doesn't rise to that base well the question i have is why because mr white's testimony was highly questionable on that issue for a number of reasons which we've outlined in the br your honor is that the law requires that the testimony be corroborated and we certainly felt that the evidence that was submitted on that issue did not in fact corroborate mr white's testimony in fact the manual that he relied upon got an article you had a number of things that corroborate his testimony your honor the only thing that truly could corroborate the testimony would be the schematic the other two documents were far too bag so it all really came down to the all kinds of problems too it was very clear when mr white was exam cross examined that there were a number of handwritten notations on that document that were not contemporaneous the court did allow the document in but there was so  axiom that that was just insufficient corroboration of oral testimony why what element of the claim was not accurately not adequately corroborated well i think your honor bottom line it was just the document as a the document didn't adequately corroborating testimony yet and i think we'll we outlined that are pretty but there were several circumstances where he was cross examined concerning the specifics that document or he really didn't know what they had written notation d you have not asked us to review the determination of whether that document with admissible that foundation or personal knowledge is relevant well that's correct i think that the arguments really twofold and where i began and just i'm going to respond to some of the issues that were raised in your questioning of mr brown's in a moment but first focusing on the four six there's no invention here we have testimony from j c m's own witnesses that it's a substantial evidence would we need to address the claim construction if it were a mock my response be no your honor if you rule the patents invalid then addressing the claim construction issue not be necessary applying the court's construction clearly the product performs no comparison of the kind required by the claim language pointing out the acceptability issue which mr round brought up for a moment except ability was never and the bill validator is has within it a defeat of the following figures all show details of that bill validator when you read the specification it specifically points out that the comparative means is comprised  part of one of the elements is a barcode the barcode detectors the barcode detectors are expressly shown in figure want so you have elements of the discriminator means literally shown in the figures of the c p u was another disclosed piece of whole notion of the invention is an improved bill validators so the notion is you have an apparatus which has constituent parts to disclose the location of the discriminator means in the pattern as being within the bill value data which i don't believe can be challenged creates a answer your question your honor i would say that the distributed distributed means which is what you're suggesting be distribute the functionality including some of it outside of the bill validator is so different from the disclosure as to what they're teaching that it wouldn't put people on proper notice as to the scope of the claims so putting a processor outside of the actual apparatus that you're directing your claims to seems to me to be so different from an infringement analysis perspective that one looking at the scope of the claims could not be reasonably on notice i will say your honor that if there was no mention of discriminator means components being resident inside the building allocator which there are then you'd have a different analysis but here they've they they haven't talked about a system with components sprawled across the internet or across a building we're talking about a device a single device in which components are expressly disclosed as being within that device so you believe the disclosure is not exemplary it's  if it's definitive video finds the and yes i believe that is due to the invention is limited by the scope of the disclosure which in fact the fines the bill validator and specific in express manner which frankly is consistent i think with throughout the entire specification looking at figure three the c p u is resident smack in the middle and that's the that's the brains of the discriminator means if you will and there can be no reasonable or you meant it as disclosed that's sitting inside the building elevator i do concede that it doesn't expressly say you can't locate parts of the discriminator means in some other machine some other building but that seems to me completely a completely separate disclosure that's not here  that testimony there is an element by element analysis of both bittner and laser coins there are pages of testimony in regard to each and every mr rounce telling me could not express to you a single element that was missing from that analysis nor could he challenge when asked specifically please provide what elements were not corroborated and all you heard were ambiguous statements of best of what they were the reason is it was one of the most exhaustive exhaustive element by element analysis that you'll probably ever see in a in a patent trial so i would say to you that we're not limited to laser coined by itself but ultimately of the laser point by itself would suffice as but just to point out one important issue here though the reversal of the claim constructions sought by g c m would render a this case in would render the pattern valid for different reasons there were four prototypes which were clearly on sale sigma prototypes of j c m's own products they were tested before they left japan to confirm that they actually fulfilled the function of the invention and there's testimony from jason's own witness testify at the machine was tested coupons were used so before honor actually that the lower court ruled there was a sale or at a minimum an offer for sale and if you look at the sigma products as being the basis for a conception or reduction or practice argument that would move behind bittner as advanced by j c am i think you're compelled to say there is an admission all the elements are present by g c m in advancing its own conception argument and all you need to do is look and say was your determination that there was a sale or an offer for sale below i think the answer to both is yes it's contested by j thousand and two and april of two thousand and that everything that was sold was marked no there is dramatic disagreement as to that right you disagree over that one one of the two you actually both i believe when the court took the fifty a motion  d by g c m there at the d v d there is a single document in which the intention to more was manifest and it was put into evidence there's not despite thirty thousand units being sold there's not a single marked product in evidence i would say to you that if that had gone to the jury that evidence the jury could have it could have concluded no more of the substantial evidence that there was no marking the d v there was confusion in the record in that mr round when asked if the d v d had been on sale for the relevant period he said no there was admit evidence and that was it that was submitted by the plaintiffs and admitted that shows forty thousand d v d s were sold and there's not a single piece of evidence that they were actually mark other than a document saying they more importantly your honor the u b a was a replacement for the w p a in the d v d there was an acknowledgement by j c and they had an obligation to mark that product in response to that if they wanted to collect damages they knew a practice the patent and faced with that they put thirty thousand of their cutting edge products on of the market over the course of several months and took not a single step to market i would say to you that alone is repugnant to the statute and if no effort could be made and no explanation was proffered by the way by j c of the witness as to why that occurred on the stand if that would be if that would stand as being sufficient for purposes of continuous substantial and consistent marking i would say to you that we've rendered the patent statute for marking purposes  forty five forty five in that general vicinity demonstrate that they did in fact continue to sell the w p a prada throughout the april through december time period in two thousand i yes so the so so it wasn't the case that there was this nine subset of all diet coke cans i think the public still on notice i would say very well the number thinking at that up when you look at the number theory doesn't mean i would say there's one of two circumstances if it's a new coke and it's a new product they need to mark because they're entering the marketplace and putting the public on notice that there isn't a good invention inside of the new coke and it's the old coke or you consider new coke to be an extension of the old poke i would argue to you that the marking hasn't been substantial and continuous because the omission the knowing omission of an entire product line even if it's an extension of the patent articles that are all built alligators i'd say the omission is flagrant and if you rule that there can be no effort made in regard to a new product and where you say you got you  batch while i would say to you that if they actively are aware of the marking obligation and choose not to do it which is our circumstance here i still think you could have a small number where the flagrant c of it needs to be addressed but i would suggest you get a small batch of trial products that are later cured by for continuous marking would be open to say if flagrant and then you see they chose not to do it and i know i don't see that the record supports either that it was flagrant or that it was  deliberate i did as i understand it there were labels that were created and then the witness said i did i can on the i can explain why they weren't on that model let me walk through the evidence as i understand your honor unlike the w p a where there's a document which says intend to mark and then a drawing which says here's what the label looks like and then an engineering change order saying gold market none of those documents were produced or so far as we know exist they weren't navid and so there wasn't a single label in evidence for the u there was no testimony of the exact testimony was something akin to this i don't know what happened to the process so here we have a company that wants to evaluate bail itself of the marking statute for purposes of getting priests who damages who can't show a single not notify the public at all does it matter that they had these by that act recognize that the marking requirement did exist and at least with respect to the w b a units took steps to avail themselves of the constructive notice certainly here on or the evidence that the jury did not get to hear they should of fifty a as a standard that says no reasonable jury could come to a different conclusion that's not met here certainly a jury looking at the w b evidence there's actually evidence of marking a single unit and some internal part plans and procedures that is as lacking as to the d v d with the exception of a single document saying it should mark there was no engineering change or telling us more there was no more marked meaning to commence marking february two thousand there's nothing like that for the d v d i would concede that a jury could look at the w b evidence and at least consider consistent with s c b that it may have been marking although i think there's a strong argument that there isn't with a single unit when they could have scoured the earth for them but the d v d there is not one single marked item presented as evidence that to me screams the big thing you need to keep in mind is twenty percent of the product in two thousand and five the last year before the filing in this case were not marked the evidence supports a conclusion of no more king of twenty percent what if the product was only four percent it would be included in your ocean it's you know i think past cases have found in circumstances where they can't can't show they actually took it took steps affirmatively to mark a particular product in this instance t i still think it would be repugnant to the statute but if it was let's take the u p a out of the equation it was the w p a by itself and all they did was fail to more four percent of the units that would be a different analysis your honor i can see that but of course we have one out of hundreds of continuous marking of of the relevant product that's the w p a its substance continuous is substantial the problem is is that otoh five the exact same period of time when the d v d s not being marked and i say do you want the motion should be granted in our favor the court marking of morning the court said it was going to consider the issue there was a i think a day gap in the court came back and said i think there's enough here correct the jury never heard evidence of the jury did not consider evidence as to marking there was no one here in evidence where you're presenting the jury was presented evidence but there was no instruction given to it to consider the issue the judge took it away did you appeal lack of brown's may say they moved my reading of the record is the judge in response to our request to grant a fifty in our favor comes back and says i don't think this issue needs to go to the jury i believe that the evidence is that there is no marking and he in that that order he actually states that he considered the actual borking of a product the was single u b a that was in possession of f b i as one of the reasons he granted his decision said we were on actual knows he did show the jury that he did so he gives his reason on the record as to why he's not going to grant fifty in our favor he's going to grant that in favor of j c m the problem with his decision is independent completely leaving to deviate out his analysis it clearly was the case that reasonable inference this could be drawn from the evidence in fact i think the reasonable inference is to be drawn by the evidence is that twenty percent at least twenty percent of the products were not marked the jury never got to consider that evidence and as a result it's clear error for the judge to have figure represents a recognition of no priest suit damages and the other record in that recognizes damages going back to zero two the judge said look in the event that this thing is going to go up on appeal effectively i want to of marking and the u b a and it must be clear the judge didn't consider the d v d in part based on mr brown's representations that it wasn't on sale for the relevant period of time the whole thing has has layers of power but the most important thing is this a if you take every one of the bill validated all three families twenty percent of the units were on more like it but at the evidence that i offered in support of that are the u p a the u p a is thirty thousand of those units a and and uva the bigger the bigger vise of course is if you go back to the entire time period two thousand and two through two thousand and five each and every year the d v d no evidence in support  percent yeah i think that math is correct you are looking at the table one ninety one through three thousand units of v b these were not we believe the evidence supports no more you know five thirty one thousand uvas which totals twenty percent but i do believe the ten percent number which is the number  the products that we maintain there is no evidence of marking of actual marking is d v d so there is not a single marked item in evidence for d v v or uva what isn't evidence is that there were forty thousand s sold so you have this no evidence of actual marking a single acknowledgment that they should mark and then not a single product now what's more telling is this they didn't put a witness up and said yeah i saw hundreds of d v marked comply with the marking requirement correct effectively yes your honor and did you preserve your objection to that to that ruling we in our in our subsequent that are game all papers we stated in  posits some interesting issues however as the court knows from our papers we don't think this issue's been preserved the only thing that any i did with respect to this marking issue is move for a new trial the only thing they referenced in the motion for a new trial was their summary judgment motion all of the arguments and evidence that they're making on this appeal were not presented to the court in the motion for new trial if they file a fifty b motion they did wrong but not on not on this issue this issue was brought solely as a motion for mistrial so i think more important all of our genome motions and he accepted that oral suggestion by them as adequately preserving all of their prior to a motion so why isn't that enough to preserve all that's at the close of evidence but fifty b requires a motion but the rule requires fifty p file a motion within ten days it's they did file that motion they filed it purely as a new trial motion i think most importantly iran and only you can orally raise a motion in a judge can deem that acceptable you don't have to moon that's a fair question you know my view of it in reading for rule fifty b is that it contemplates it contemplates a written motion and i think most importantly your honor the reason it contemplates a written motion is because they want the court to have the ability to look at all of the record the transcript what are the witnesses to say what are you arguing that is typically i'm sure the record that this court sees on the jay ma motion and that's not what happened motion they did file that motion and they gave the court the opportunity to consider all their arguments in a luminous motion on everything all of the issues that were presented in that same motion they  tiny sliver referring to rule fifty nine motion for new trial and referring to the summary judgment motion on marking i just don't think that can be determined to be an adequate raising of the colleague that the u p a wasn't want that was the issue that they asked the court to rule as a matter of law and they did not argue that there had not been substantial compliance with the marking statute in the  raised to the court yeah i think the court can rule on that issue as a matter of law and that's ultimately what happens when he rule is a matter of why he slowly rule on the issue that the courts been discussing with their with my colleague and that is ok below now in fact even if you look at the summary judge much and they never raise the issue of this d v that never came up although and just to touch upon the comment that was made by the ice counsel there's that that came out on summary judgment in fact it's summary judgment they did raise the issue of whether there had been marking on summary judgment your honor that did come up at that time but it trial certainly the record hopefully will bear me out of my recollection and from studying this this issue last night is the only thing that they they moved for jay milan and we actually agreed to was this issue of what is the u p a lead us what kind of evidence w placed on the product and the product itself and in addition the product the market product that was in the possession of embryonic now the court mentioned earlier you know one of the one that i'm working the story when was that continues to be on the market to that's correct mark now i so medical and we believe that if you do consider this issue when you look at the collective whole that we've got ninety six percent of the products market over a period of three years probably longer but if we're looking at the relevant timeframe for when infringement commenced there was substantial and continuous marking of the products as a collective whole now nike says that it has to be substantially all and i think we've met that test as well again looking at what this company did if their intent or should that be relevant to the dallas of marketing i don't think so not the way i read the statute your honor how do we do term and what is substantial and continuous where do you draw the line on what on what basis does a court conclude that there's been compliance is it a percentage i think that's certainly one factor i think you could have a case where products are very very expensive and maybe you've got one hundred fifty products but we have a case where there was a lot of products many many many products i mean a vast majority of court look to see where there there was a policy in place and that whatever products were not bark or excusable for some reason or other words in determining whether there was substantial and continuous used as a court look to see whether there was some explanation for the  i think it could be relevant evidence but to be honest ron i don't read the statute that way i think that the statute is plain and simple in the two cases that are most prominent in this area from the federal circuit have ten percent and i think that's going to differ on the facts of each case but i do think in this case when you look at the number of products that were placed in commerce and you look at the percentages that we satisfy that you can say that the market statute was satisfied as a matter of law only guinea to decide in this issue whether or not eighty eight percent is enough because i do think you need to focus on what the products are how many there were and what the aggregate whole was of the number that was marked first as the ones that were unmarked that's that seems to be the analysis that is being and take undertaken by the federal circuit when it gets into these issues does it make a difference if if if a party is acting deliberately or not in other words let's let's say you have a company that inadvertently fails to mark two percent of its products compared to a company that deliberately chooses not to market two percent of its products for one reason or another i don't read the statute that way i just think that the statute says look at two percent and decide is that or is that not substantial that's how i see it i don't i'm not here to say that it's irrelevant evidence but i do think that at least the way i've read the cases out of this court that they are simply looking at the statute and they d i think my response would be how many products were unmarked in that period ok because i'd have to team with i guess any systematic and continuous is not a percentage over a long period of time right it has to be continuous if you have  result would be that there be no marking under the statute however that would raise a different question now when and it would raise the question of whether or not the damages period would be allowed for the period of time in which it was systematic and continuous but i don't think that's before this court either in my view well hypothetically if i had a product and had a policy to mark every other woman there would still be would say the fifty push on is not the minimum i would say fifty percent would not satisfy the intent of the statute that's for sure so how much higher you would we need to bring in very i think it needs to be looked at on the facts of each case and the reason i say that is because i think each product is different that's marked and again if you have a situation where there's only one hundred fifty products as opposed to that the millions we have an issue here i just think it's a it's a different fact pattern and he does have to look at you know the facts as a whole decent weather as it does any difference in applying the test compared with say substantial and continuous or that you consider the two i've seen mirror reflections of each other i think are consistent yes i think you'd be more consistent with substantially all which is fifty percent or more continuously over a period of time you could make the argument that substantial and continuous but if if the units that were not marked demanded to forty percent that's hardly up on one quick point so the court understood my argument is to the four zero zero six the court is correct that the court made a finding on summary judgment that the discriminator meets had to within the bill validator head there's no question but also with that finding the court indicated and made a finding as to what's going on in the head that's part of your original argument that's then i'll be finished so at first just to clarify the record it was in the car at the close of the plaintiff's evidence there was a conversation between the parties in the court as about jury instructions that's the context in which the judge made his fift that ruling included exhaustive conversation about the w p a of the u p a but conspicuously did not include a d v discussion because of mr rounds of representation that they were on sale i refer you generally to j one one four nine seven that discussion but more importantly fifty be simply does not apply in two thousand and six for the amendments of the and that's a good question because you you suggested that the district court basically shut down all of your ability to argue marking and put evidence before the jury and have a decision made by the right you say that earlier motion stand practice he said no there's adequate marking and you can you know basically you would not be able to put on evidence related to whether the deputy d a in the remark no no i don't think that's the case or i meant to say the judge would let the jury consider that evidence the evidence was put forward to the judge just didn't get a chance didn't give the jury chance to consider it i don't understand there's  reading the record here and there's lots of evidence that me and the judge says mark this is about marking ladies and gentleman there is a check there may be a challenge to pat infringement based on the timeliness of the marking of a product and he goes on and on to explain all of the jury why you're putting on all this evidence and they're putting out evidence so all of the evidence before was before the jury he didn't shut down your ability to put on that oh you know on the i'm saying if the jury got to deliberate on the evidence that was before them i'm not seeing any more evidence mostly due to object to the lack of a special verdict form or the lack of a jury instruction on these points you didn't object to any well actually it was in the car it was in the context of a discussion over the jury instruction at the close of the plaintiff's evidence where the judge said show me your objection preserving the if you want to appeal to the jury was an adequately allowed to consider this evidence and write your verdict on it was in the context of the exchange on the record in which only one page of your i don't have a page cite for you but i'll see if i can find one but the might my understanding is is if you're looking for an express the state on the record that we didn't agree with the court's decision but i don't know if there's a word we say out we object and then we followed it up right so in the context of this case you have fifty fifty a motion is decided by the judge in the context of discussion about jury instructions since the court has already granted a judgment and then present a jury instruction marking the did judge wouldn't allow it you didn't object to the jury instructions when they were issued the failure to include one marking correct i want to make sure i understand all the things that didn't happen like and yet look for the things that did yeah i think procedurally what happened was the judge takes up the fifty day grants it thereby taking it out of the context of fifty b because there's already been a decision as a matter of law and then we we proceed to file a jame all paper saying if i construe decision on fifty eight to be limited to whether if the facts demonstrate twenty percent are during a nine month window are not market that is inadequate as a matter of law and if i construe his opinion as limited to that then you have an obligation to continue to either and point out to him and point to present evidence to the jury that these no it's not the only marking issue before the court there are these other factual issues which do need to be resolved i think there are in the context the case we were new to our prior motion including our summary judgment motion we said to the court in our post trial papers that the constructive notice issue was decided wrongly and during the actual exchange on the merits mr bannon got up and said look your honor this this this this should go our way is there expressed a bit of objection your honor i don't recall seeing one during that exchange what wasn't there is some confusion as to whether there were any sales at all of the d b be human there was at the time mr brown's represented and i believe he did a good faith that there were no sales and as a result when the judge states on the record his reasons for granting he doesn't include the d v d now when did it come to light that there was this issue of that was not not being considered with respect to these d v units that come to light during the exchange when the judge granted the motion saying that the constructive though it wasn't provided that counsel was in possession of the information that there were actually d v d s that were on sale as as as judge morris pointed out it's within the appendix there are spread sheets that are difficult to read but they do include d v d sales so you so you saying on the motion for reconsideration this issue was brought to the court's attention no your honor ed mr rounds is right that the that the placeholder for purposes of the marking issue that was in the jame all papers was a paragraph saying that neither plaintiff is entitled to damages because neither compile complied with the constructive notice provisions and because both on reason establish some basis on which you can now assert that that was an issue that should have been resolved that you were entitled to present to the jury well the jury was presented with plaintiff's evidence that there were that there were compliance it seemed to be was not presented to the jury and your argument should have been my question that's on the on what basis well should have been presented to the jury on the basis that there was evidence that was presented by both no your honor which basically assemble for the appeal oh as you can see from the table your honor there are references to each part of the appendix from which that date is dr but you are correct or on of th table was not present at the all that's what i understand that you can derive this from all of the evidence in the appendices but this was never summarize and presented at the trial in the simple form or merely harmless in there what should we should if we agree that the marked prada represents a large enough percentage to constitute systematic continue with and that even if it were one percent less that we should d so if you take the d v d s five percent the uva is roughly five percent your ten percent number is a edition of the d v d there frankly are more d v units that the evidence supports no marking of forty thousand then there are which were thirty something the combined number your honor is ten percent so the be you d v d is a larger complement of on more products and i'm saying it's roughly five five and a half percent then the u b s but if i could but if i could i want to just make sure that the procedural  posture of the of this issue is proper fifty p says if the court does not grant a motion for a judgment as a matter of law under will fifty eight clearly the judge in fact granted a motion as a matter of law and there would be no requirement to ask the judge to revisit the legal issue that he's already decided that the issue did not go to the jury fifty simply doesn't apply but if i might one final point you're on your honors one sentence the american medical case to answer the proposition of the  fairness associated with the marking statute if we if you place products into commerce and you don't mark them you're not upholding the policy concern and at the end of the day you're putting in the rule of reason cases you ask for good