plaintiffs-appellants v. appel-lant
Oral Argument · Case 2009-1372 · 40:46
0:02
Judge Rader
I think it's quite fitting that my first action as a Chief Judge will be to cede to one of my colleagues the right to preside.
0:13
Judge Lynn, would you please preside at this point, because I'd like to make a motion.
0:19
Judge Linn
First of all, I'm delighted to be on the panel with our new Chief Judge, on the first panel as Chief Judge, and at this point I would entertain your motion.
0:31
Judge Rader
Well, I'd like to, Adam Stand, if you would, I'd like to move the admission of Adam Eltuki, who is a member in good standing of the Bar of New York.
0:45
Adam has served me magnificently and will, I'm sure, continue to serve the Bar magnificently, and I would move his admission to the Federal Circuit Bar.
0:57
Judge Prost
I enthusiastically endorse.
1:00
Judge Linn
Chief Judge, your first act is?
1:03
Unanimously approved.
1:04
Judge Rader
Oh, can we make that a matter of repetition?
1:11
Judge Linn
The motion is granted. Adam, welcome. If you'll please face the clerk, you can now take the oath of office.
1:19
Clerk
Please raise your right hand.
1:20
We swear our firm that you will report yourself as an attorney and counsel of this court, uprightly and according to law, in the United States of America.
1:37
Judge Linn
Chief, it's all yours.
1:38
Judge Rader
Okay, our first case is Akamai.
1:41
Okay.
1:42
versus Limelight Networks.
1:44
Mr. Dunn.
1:45
Appellant Attorney
May it please the court, there are three broad issues on our main appeal.
1:57
I'd like to go, cut to the chase, and go to the joint infringement issue right away, and the basic question here is, does Muni Auction dictate the result of this case?
2:10
We submit it does not, that the facts of this case are totally different from the Muni Auction cases.
2:16
I will try to explain that.
2:19
In this case, Limelight thoroughly exercised direction, if not control, over every aspect of the claimed invention, and Muni Auction, they not only did not direct anything to the claimed invention, but whatever direction there was, was minimal.
2:35
Let me be more specific.
2:37
There's only one, I just want to make clear, there's only one patent involved on the joint infringement issue, the 703 patent.
2:44
There are only four claims, 19 to 21 and 34, that are involved.
2:48
And I'd like to focus on claim 34, at the beginning, which has only a single element dealing with the joint infringement issue, and that element is tagging.
2:59
The parties stipulated as to what that word means.
3:03
They stipulated that it means providing, providing a pointer or hook, so that the object resolves to a domain other than the content provided domain.
3:12
The evidence shows that Limelight not only came up, created the...
3:19
It provided the tag.
3:21
It not only provided the tag, but it instructed the content provider as to how to use the tag.
3:29
It instructed the content provider that there are two ways to do it, prepending and c-naming.
3:35
Judge Prost
But didn't Muni Auction, just sort of directing your argument here, didn't Muni Auction exclude instruction from the joint infringement binding category?
3:46
Appellant Attorney
Your Honor, Muni Auction hasn't...
3:49
It has a statement in it about instruction.
3:51
But BMC preceded Muni Auction and said instruction was proper.
3:56
It focused on instruction.
3:58
It also focused on a contract.
3:59
I cannot, I do not believe that Muni Auction intended to overrule BMC because one panel can't overrule another panel.
4:09
Judge Prost
But you're not reading Muni Auction is quite clearly saying that Thompson controls access to its system and instructs bidders on its use.
4:16
It's not sufficient to incur liability of direct enforcement.
4:19
Appellant Attorney
And BMC said just the opposite.
4:22
BMC said instructions, no instructions in that case.
4:27
Judge Prost
So does your argument, does your prevailing here rest on our ignoring portions of Muni Auction because they're in conflict with BMC?
4:35
Appellant Attorney
No, I don't think they're in conflict with BMC.
4:38
All I'm saying is under the facts of Muni Auction, you could well say the instructions were not proper.
4:43
The instructions had nothing to do with the claimed invention.
4:47
The claimed invention in Muni Auction was...
4:49
It was inputting data associated with at least one bid.
4:53
There was nothing in Muni Auction giving instructions as to that claim limitation.
4:59
Thompson, who was the key person there, did not create the bid, did not provide the bid to the bidder.
5:08
While he instructed the use of the system, he didn't instruct about how to bid, when to bid, there was no mention in Muni Auction
5:18
that there was a staff as there was here, a staff on hand 24-7 to help to instruct the content provider as to how to use it.
5:28
I am saying that in the context of Muni Auction, you've got to read that language about instructions.
5:34
And in the context of Muni Auction, instructions may not have been relevant.
5:39
And I cannot read the Muni Auction language to suggest that it's overruling the invention.
5:48
MCA because they can't overrule the MCA.
5:50
Judge Rader
In Muni Auction, the website
5:52
had a space
5:54
for you to enter bids. Isn't that
5:56
kind of an implicit instruction
5:57
as to how to
6:00
carry out the invention?
6:02
Appellant Attorney
Your Honor, my answer is yes,
6:04
but let me amplify that
6:06
answer. Muni Auction
6:09
has some language in it. It doesn't
6:11
use the word continuum. It talks about
6:13
a spectrum, but there's a continuum.
6:15
At one end, there's arm's length
6:17
transaction
6:17
involving cooperation.
6:20
At the other end, there is
6:22
direction and control.
6:24
I suggest that
6:26
it's a jury question as to which
6:29
end of the spectrum we're on.
6:30
It is not a bench question. It's a jury question.
6:33
The question is, is there substantial
6:34
evidence to support a
6:36
verdict in
6:38
Akamai's favor? And I suggest
6:40
there is because the
6:42
degree of direction,
6:44
the degree of control, it's as though
6:47
limelight
6:48
was sitting over the shoulder
6:50
of the content provider
6:52
and saying, press this button,
6:54
do this, do that.
6:56
The direction was almost
6:58
complete in that case, about every aspect
7:00
of it. Mr. Duggan, in
7:02
Judge Linn
the limelight contract,
7:05
whose
7:06
responsibility was it to
7:08
accomplish the tagging step?
7:12
Appellant Attorney
Under the limelight contract,
7:14
the ultimate actual
7:16
physical event of
7:18
tagging is the tagging.
7:19
The tagging was the content
7:20
provider. And the contract
7:22
Judge Linn
specified that it was
7:25
the content provider's responsibility
7:27
to do that. Here's what the contract
7:29
Appellant Attorney
says, Your Honor, at 17807.
7:32
The customer
7:32
shall provide company
7:34
with all cooperation and information
7:37
reasonably necessary for
7:39
company to implement the CDS.
7:41
Judge Linn
Yeah, and that's in the paragraph
7:43
paragraph 2 that says
7:45
customer responsibility.
7:47
Appellant Attorney
Right, but it's
7:49
under, actually,
7:51
limelight directed
7:52
and controlled that event.
7:54
It gave the customer, the
7:56
content provider, the tag.
7:58
Judge Linn
On whose behalf
8:00
is the tag
8:01
Appellant Attorney
added? The tag is
8:05
necessary
8:08
without adding the tag,
8:09
the system won't work.
8:11
So, the question is,
8:13
on whose behalf? It's
8:15
in order for the
8:17
content provider to have access
8:19
to this claimed invention,
8:21
the content, the content
8:23
provider must perform
8:25
that last step, but under the direction
8:27
Judge Linn
And it's the content provider's
8:30
discretion as to
8:32
which objects to tag
8:34
and whether to tag
8:36
or not, correct? Once
8:38
Appellant Attorney
the issue here is
8:40
given the situation
8:43
where the invention is being used,
8:45
because that's what we're talking about,
8:47
is there direction and control
8:49
where the invention is being used?
8:51
And I submit that once
8:53
a user, the ultimate user,
8:55
wants to get content
8:57
from a content provider,
8:59
the content
9:01
provider does not have
9:03
any discretion as to
9:05
whether or not the question is
9:07
tagging. And it does
9:09
not have any discretion. It has a contractual
9:11
obligation to tag in the
9:13
manner in which
9:15
limelight tells it it has to tag.
9:17
Judge Prost
So is this any difference
9:19
of any relationship where a customer
9:21
is required to create a username
9:23
and password in order
9:25
to use an online
9:27
service? Is there any difference
9:29
between that relationship and the one at issue here?
9:31
Appellant Attorney
It's different in this respect,
9:33
Your Honor. Again, I go back
9:35
to the continuum. The continuum
9:37
says, are we at this end
9:39
or at this end? I am saying
9:41
the degree of direction,
9:43
the degree of control,
9:45
if you parse the
9:47
thing, sort of like slicing a salami,
9:49
if you slice the salami thin enough,
9:51
it doesn't look like a salami anymore.
9:53
And all I'm saying is, when you look
9:55
at the whole picture, and you look at
9:57
every step that is being performed,
9:59
and you look at the involvement of limelight
10:02
in every step,
10:03
you are all the way at the other end
10:05
of the spectrum. You're not at the end of the
10:07
spectrum where many options
10:09
say it's not any good.
10:11
You're at the end of the spectrum where
10:13
there is direction, if not
10:15
control, over exactly
10:17
what the content provider
10:19
is doing. Is there any
10:25
Judge Prost
dispute that the case would rise or fall
10:27
on this issue? I mean, if
10:28
we were to find that
10:31
there is no joint infringement, then
10:33
all of the other issues here,
10:35
including the claim construction, fall, correct?
10:37
Am I correct? Only
10:40
Appellant Attorney
as to the 703
10:41
patent, Your Honor.
10:43
Judge Linn
Aren't the other patents
10:46
implicated as well? No, they're
10:48
not. Because it's just
10:50
the involvement is simply
10:52
in the preamble, it's not
10:53
a separate step. The other patents do not
10:56
Appellant Attorney
have this joint invention issue.
10:58
And there's no dispute about that.
11:00
The 645 patent
11:02
and the 413 patent do not
11:04
have that issue. So let me
11:06
go on to the 645
11:08
patent. There are only
11:10
two issues I need to deal with. One is
11:12
the 645 patent, claim one,
11:15
both issues involved
11:17
claim one. And the issue is whether or not
11:19
the word alphanumeric
11:21
string includes the original
11:23
URL.
11:25
And I submit that the
11:27
finding that it does is
11:29
inconsistent with the claims, it's inconsistent
11:31
with the spec. How is it
11:33
Judge Rader
inconsistent with the spec, which seems
11:35
to use that as the one
11:37
way, the one
11:38
in fact it describes it as the
11:41
invention in several places.
11:43
Appellant Attorney
Because the spec
11:45
says at page
11:47
257
11:50
column 12, lines 47
11:51
to 49, the
11:53
name of the original server
11:56
preferably is included
11:58
as part of the URL, preferably.
12:00
That's one, but
12:02
Judge Rader
there's other instances
12:04
where it says the invention
12:06
and then shows the URL.
12:08
Appellant Attorney
Your Honor, the word preferably
12:10
appears throughout the spec.
12:12
I think I counted five, six,
12:14
seven times where the word preferably is
12:16
used. When
12:17
the spec says the invention is and then it
12:20
says preferably it's done this
12:22
way, I think that makes
12:24
clear that it's not restricted
12:26
to
12:28
the one way. But moreover,
12:30
during the prosecution
12:32
history, they characterized,
12:34
the applicant characterized
12:36
the alphanumeric string
12:38
not to include the URL.
12:40
Judge Rader
Then look at column 6,
12:42
so lines 50
12:43
and column 7. According to
12:46
the invention, the
12:48
embedded object URL,
12:50
according to the present invention,
12:53
a virtual host
12:54
name is prepended
12:56
into the URL
12:58
I'm kind of lifting those.
13:00
Appellant Attorney
This is column 6, Your Honor.
13:02
Judge Rader
Well, column 6, 54 through 57
13:04
and column 7, 36
13:06
through 38, both of those
13:09
refer to the invention
13:11
as the
13:12
embedded object URL.
13:15
Appellant Attorney
Can you tell me what lines you're looking at?
13:17
Judge Rader
54 through, on column
13:19
6, lines 54
13:20
through 57, and then
13:24
on column 7, 36
13:25
Appellant Attorney
through 38. Well, on column 6,
13:27
the word preferably in the
13:30
exact part that you're reading,
13:31
immediately followed by two references to preferably.
13:36
The word preferably is all through
13:38
here. I think you have to read
13:40
the word the invention in the
13:42
light of the statement that
13:44
preferably it's done x. When something
13:46
says preferably it's done, that
13:48
obviously, that means to me that
13:50
it can be done another way. And that's
13:52
consistent with the prosecution history
13:54
where they characterize
13:56
the strings without the full URL
13:58
as
14:00
Judge Rader
If you don't have the URL for the
14:02
embedded object, how does a
14:05
content provider
14:06
obtain the embedded object?
14:08
Appellant Attorney
You can replace the
14:10
object, you can replace the
14:12
host name in the URL
14:14
with the virtual host name.
14:16
That's one way to do it. That's the simplest
14:18
way to do it. And
14:20
in fact,
14:23
Limelight doesn't.
14:25
Judge Prost
Can I just take it back to your
14:27
answer to the Chief Judge's
14:29
question on column 6 was
14:31
that it uses the word preferably, but
14:34
there's another reference in column
14:35
7 lines 36 through
14:38
39
14:40
which talks about according to the
14:42
present invention and it doesn't
14:44
there's no preferably limitation
14:46
with respect to this particular
14:48
sentence in the spec. Column 7
14:50
Column 7 starting at
14:52
line 36. Thus
14:54
according to the present invention
14:56
a virtual server host name is prepended
14:58
into the URL. I mean there's no
15:00
limitation here in terms of saying
15:02
Appellant Attorney
preferably. Column 7 is
15:05
part of the preferred embodiment.
15:07
The title on column 5
15:09
is detailed description of the preferred
15:11
embodiment. So
15:12
whenever they use the word invention
15:15
they, I think, reading this
15:17
spec as a whole, they're talking about
15:19
the preferred embodiment and the proof of putting
15:21
is the language I read to you
15:23
and that is where it says
15:25
preferably the host name
15:27
original host name is
15:29
retained. But that means
15:31
that the original host name doesn't
15:33
need to be retained and that's exactly
15:35
how YMI does it. It does
15:37
retain the original host name.
15:40
Now
15:41
I would
15:43
like to just briefly talk about
15:45
the other issue. Again it involves
15:47
645.1
15:49
selection by the alternate DNS.
15:52
The question is whether
15:53
or not the given name server
15:55
which is part of the alternate
15:58
domain name system must
16:00
be selected by the alternative
16:01
domain name
16:03
system. There are multiple problems
16:06
with that. The claim doesn't
16:07
recite any selecting, importing
16:09
at all.
16:11
The claim only requires
16:14
that the given name server be close
16:16
to the client local name server.
16:19
The district
16:20
court's construction is inconsistent with
16:22
the other claim language which says
16:24
that one or more
16:25
DNS levels can be involved
16:27
and the district court's construction requires
16:30
multiple DNS levels
16:32
while the district court came up
16:34
with a proposal as
16:36
to how it can be done with only one.
16:38
The spec, the record,
16:40
nothing in the record supports
16:42
what the district court did.
16:44
However I submit the
16:46
district court system, her claim
16:48
construction requires two
16:51
servers both in the alternate domain
16:53
name system and
16:55
therefore her construction is
16:56
inconsistent with the claims.
16:58
I see I have... Thank you
17:01
Judge Rader
Mr. Dunner. We'll restore your
17:03
rebuttal time and would you
17:05
give Mr. McKinnon
17:07
an extra four minutes should he need
17:09
to use it and then we'll have equal
17:11
time. Just one second Mr. McKinnon
17:16
while we reset the time now you may
17:18
proceed.
17:21
Appellee Attorney (Alexander F. Mackinnon)
On the issue of
17:23
joint infringement...
17:25
Judge Rader
Every time they exercise the option
17:28
there's infringement
17:30
right? Every time if
17:33
they decide they want to get information
17:35
from a content provider
17:37
they then
17:39
by using the system
17:42
must do it according to the
17:44
instruction and control
17:46
that they've received right? They have to
17:48
Appellee Attorney (Alexander F. Mackinnon)
follow the instructions I don't believe they're under
17:50
direction and control your honor and the reason is that
17:53
there is no... The system only works
17:55
Judge Rader
if they do it as they're directed
17:57
and controlled to do it. As in
17:59
Appellee Attorney (Alexander F. Mackinnon)
the Muni auction case
18:01
Thompson had to follow the instructions if they
18:03
were going to insert a bid properly. Now there wasn't
18:05
Judge Rader
instructions there was
18:06
a gap where a
18:09
bid could be put but there was no
18:11
instructions there was moreover
18:13
there was no contract. Well
18:15
this has an actual contract.
18:17
Judge Prost
Is there any difference between direction
18:19
and instruction? Maybe you can include
18:21
Appellee Attorney (Alexander F. Mackinnon)
that in... Okay if I could address
18:23
those questions. First of all in Thompson
18:25
Muni auction there were instructions. The court
18:27
stated in its opinion that
18:30
Thompson instructs bidders on
18:31
use of the system. That means they instruct them
18:33
how are you going to place a bid? You have to do it the right way.
18:35
You have to go into the system, enter the bid
18:37
in the right place. You can't just
18:38
go into any place and enter a bid. You have to do it according
18:41
to the instructions. If you don't put in
18:43
the bid according to the instructions it won't work.
18:45
The bidder had the discretion
18:46
do I want to bid or not? Once it decided
18:49
it was going to bid it had to follow those
18:51
instructions to make the bidding process work
18:53
properly just like here.
18:54
If a customer... There was a contract
18:57
here too. There was a contract
18:59
in Muni auction as well. Both briefs
19:01
to this court discussed the
19:03
contract and said that the contract governed
19:05
the parties relationship extensively.
19:07
There's no doubt that there was a contract involving
19:09
the bidders. The bidders had to pay
19:11
if they were going to use the system
19:13
just like Wine White's customers have to pay
19:15
if they're going to have Wine White deliver
19:17
content on their behalf. In both instances
19:19
instructions had to be followed.
19:21
It's no different than any other service provider.
19:23
If the customer decides
19:25
they want to use the system
19:27
then they have to follow the instructions.
19:29
But Wine White cannot obligate
19:31
the customer to tag any
19:33
Judge Rader
objects. What more could they do
19:35
here to direct and control
19:37
that's been done here?
19:39
Appellee Attorney (Alexander F. Mackinnon)
In a situation involving
19:41
a typical direction or control, let's say
19:43
in Wine White's case, if Wine White
19:45
runs name servers, which it does,
19:47
and it said to another party,
19:49
we want you to run these name servers for us.
19:51
We'll issue a contract to you. You promise
19:53
we'll operate the name servers for us.
19:55
We will pay you some compensation
19:57
for that, and in return they do it for you.
19:59
Judge Rader
That's just making it a subsidiary.
20:01
That's still limelight.
20:03
Appellee Attorney (Alexander F. Mackinnon)
No, not necessarily. It could be an independent contractor
20:05
contracting out, doing it on their behalf.
20:08
That sounds to me
20:09
Judge Rader
like that's making them limelight
20:11
again. If you're going to retain
20:14
separate entities
20:16
there's almost nothing more
20:17
you could do, right? There's a contract,
20:19
there's directions, there's instructions,
20:22
and they give you the option.
20:23
If you don't want to get into the
20:25
system, of course you
20:27
don't have to. But
20:29
once you enter the system, you've
20:31
got to follow every step we give you.
20:33
Appellee Attorney (Alexander F. Mackinnon)
I don't think it's entering the system.
20:35
The user, the customer, has complete
20:37
discretion as to whether or not they're going to
20:39
modify a URL for a particular object.
20:41
Judge Rader
If they exercise the option
20:43
to tag, they've got to
20:45
follow the instructions.
20:45
Appellee Attorney (Alexander F. Mackinnon)
Then they have to follow the instructions,
20:46
just like in Muni Auction.
20:48
Just like in Muni Auction,
20:51
if the bidders are going to use the system,
20:53
they have to follow the instructions.
20:54
And this Court said those instructions
20:56
are legally insufficient to establish
20:58
direction of control. I think the instructions
20:59
Judge Rader
were much more implicit in Muni Auction.
21:04
There was a blank, but they didn't tell you.
21:07
Appellee Attorney (Alexander F. Mackinnon)
The Court said
21:08
specifically,
21:10
on page 1330,
21:13
that Thompson
21:14
instructs bidders on use of the system.
21:17
Now, with regard to the issue of the contract,
21:19
and Judge Prost, I'll get back to
21:21
the construction. How do you reconcile the
21:22
Judge Rader
difference between BMC, the
21:24
prior case, and Muni Auction?
21:27
Appellee Attorney (Alexander F. Mackinnon)
I don't believe there is a difference.
21:28
The only thing that BMC said
21:30
was, it mentioned the fact that there
21:32
wasn't instructions and there wasn't a contract, but
21:34
it didn't say what implication or what
21:36
would have to be done in order for that to be controlled.
21:39
Judge Prost
The whole point of this relationship is
21:40
to practice the patent for the
21:43
mutual benefit of both parties.
21:44
Am I wrong about that? I think the whole point of the
21:46
Appellee Attorney (Alexander F. Mackinnon)
relationship is to serve content on behalf of the
21:49
customer. That's the purpose of it.
21:51
What's going on here, Limelight is working for the
21:53
customer. The customer isn't working for Limelight.
21:56
Judge Prost
So if they sued the customer
21:57
then, then there
21:59
wouldn't be a problem, right? Because you're saying
22:01
that Limelight is essentially a contractor
22:03
for the customer in this regard. Well, I think it would
22:05
Appellee Attorney (Alexander F. Mackinnon)
be a different case. They'd have to run through those elements
22:07
with the customer and say, does the customer have
22:09
direction or control over each element? But certainly
22:11
Limelight doesn't have direction or control
22:13
over all the elements, and certainly not
22:15
what the customer does. If you look at
22:17
this contract, because it's been mentioned
22:19
a couple times, it uses very specific
22:21
language. It says, customer shall be
22:23
responsible for identifying, and then
22:25
it continues. The same
22:27
language is used in the next sentence of the contract
22:29
with regard to other things, and it says
22:31
contract, excuse me, customer
22:33
shall be solely responsible for
22:35
operating his website,
22:37
domain names, IP addresses,
22:39
making sure it's website up and running.
22:42
Clearly this isn't a
22:44
promise by the customer
22:45
to Limelight saying, we contractually
22:47
promise we'll do all these things.
22:49
Those are the customer's jobs. If the customer
22:52
Judge Prost
wants to do... Well, they do, with the caveat
22:54
that if we want to use
22:56
the system,
22:58
we promise to do all of these things.
23:00
Appellee Attorney (Alexander F. Mackinnon)
If we want to use the system, it'll be our responsibility.
23:02
It's our job, it's not your job.
23:04
We couldn't sue the customer
23:06
if they didn't modify
23:08
a URL. We can't sue them. In fact,
23:10
the record is undisputed
23:12
that there are numerous customers where the
23:14
customer switches back and forth between
23:16
Limelight and Akamai. If it were out of
23:18
control, if Limelight actually
23:20
controlled the situation, we wouldn't have
23:22
our customers directing traffic to other
23:24
Judge Prost
companies. Well, you could sue them if they refused
23:26
to pay on the contract, and you said to them,
23:28
well, you didn't pay up what you owed us,
23:30
and they said, well,
23:32
all they didn't
23:34
fail to do was to follow your direction.
23:36
Appellee Attorney (Alexander F. Mackinnon)
If they didn't follow directions, the system won't work.
23:38
But we can't require them to do it in the sense
23:40
that they say, we don't want to tag this object.
23:43
We can't say, that's breach of contract,
23:45
you're required to tag it. We cannot control
23:46
them and direct them in that way.
23:49
The question was asked, I think the question
23:51
was, what's the difference between an instruction
23:53
Judge Prost
and a direction? Yeah, we just, a minute ago,
23:55
both called them directions, because I don't
23:57
think there is a difference between directions.
24:00
Appellee Attorney (Alexander F. Mackinnon)
I think there is, Your Honor.
24:02
An instruction is
24:03
providing guidance, essentially, to someone.
24:05
This is how to do it. For it to be
24:07
a direction, there has to be some
24:10
authority to enforce
24:11
the instructions. It's not just really
24:14
guidance.
24:15
Judge Prost
Any product you have at home, some of them say
24:17
these are the instructions, others say these are
24:19
the directions. Directions being,
24:21
if you want to use it, this is what you're
24:23
directed to do. Is there any difference
24:25
Appellee Attorney (Alexander F. Mackinnon)
between those two? I think under this
24:27
test, if the court's identified, yes, there is.
24:30
And here's a distinction that
24:31
I thought about. If this court told
24:33
me to sit down, that
24:36
is a direction. I have to do it,
24:38
you have authority over me to do it.
24:41
If I'm walking down the street and someone says
24:42
sit down, that may be an instruction to me.
24:44
I don't have to sit down. It's my own choice
24:47
and discretion.
24:48
Judge Linn
So it's not the word that
24:50
makes the difference, it's the relationship.
24:53
Is that what you're arguing?
24:54
Appellee Attorney (Alexander F. Mackinnon)
Yes, absolutely. The relationship that gives
24:56
authority to that statement.
24:59
And here, although
25:00
Limelight, and your example of a consumer
25:03
product where there's directions,
25:05
the seller of the product can't
25:07
force you to follow those instructions.
25:08
I can follow them if I want to, I don't have to.
25:11
And the same with Limelight's customers.
25:13
They don't have to follow the instructions.
25:15
If they want to make
25:17
service work properly, then they follow them.
25:19
That's exactly what was going on
25:20
in the Muni Auction case with the bidders.
25:22
Judge Linn
Well the relationship here though
25:24
may not necessarily
25:27
be authoritative.
25:30
Certainly the relationship is such
25:32
that Limelight
25:34
is specifying
25:36
that to make the system work
25:38
this step, namely
25:41
tagging, has to be performed.
25:43
And is providing the directions
25:45
to its
25:46
how to do that.
25:49
So why is that
25:51
any different than if the contract
25:53
specified in a separate
25:55
paragraph that
25:58
Limelight
26:00
hereby instructs
26:01
and directs that
26:03
implementing this system you will
26:06
conduct the following tagging
26:08
step
26:10
on Limelight's behalf
26:11
in order to provide
26:15
this mutually beneficial service.
26:17
Appellee Attorney (Alexander F. Mackinnon)
I agree, Your Honor. If there was a contractual
26:19
provision that says by the
26:22
customer promised to do this
26:24
at Limelight's instruction,
26:25
Limelight's behalf, I retain no discretion,
26:28
it's all, whenever you tell me to do it,
26:30
Judge Linn
I'll do it. But isn't that in effect
26:32
what this arrangement is?
26:34
Appellee Attorney (Alexander F. Mackinnon)
I don't believe so. If they're
26:36
Judge Rader
going to use the service, they have to follow
26:38
the instructions, right? Well that's a big if.
26:40
Appellee Attorney (Alexander F. Mackinnon)
The if is, they signed
26:42
a contract with Limelight, but that contract
26:44
is like an option. They have
26:46
the option whether or not to use the service. It isn't a big if.
26:48
Judge Rader
Because the only time we're
26:50
interested in whether they follow
26:52
the method steps are
26:54
if they, are those
26:56
instances when they do. And that's
26:58
even set out in the contract.
27:00
Which was not the Muni option.
27:02
There's no explicit
27:04
instruction to follow
27:06
each of the method steps.
27:09
Whereas we have here
27:10
each of the method steps specifically
27:13
set out as what
27:15
you must do to obtain our
27:17
Appellee Attorney (Alexander F. Mackinnon)
service. There are
27:19
certainly instructions, I agree with that, sir.
27:21
And directions.
27:23
There are not directions because
27:24
the customer retains discretion.
27:27
If it doesn't do it, Limelight has
27:29
no recourse. But that's
27:31
Judge Rader
just saying if they choose
27:33
not to infringe,
27:35
they're not infringers. I agree.
27:37
But once they choose
27:39
to enter
27:41
the realm of the method steps,
27:44
then they are directed
27:45
exactly how to do it.
27:47
Appellee Attorney (Alexander F. Mackinnon)
But the key thing is they're choosing. They're the ones that are
27:49
choosing whether or not they're going to do this.
27:50
We have no ability to
27:53
require them to do that.
27:54
It's just the bidders in Muni
27:57
Auction were exactly the same.
27:58
They had the option whether or not they wanted to bid.
28:01
Judge Rader
So I'd only infringe a patent
28:03
if I use it.
28:04
I sometimes choose not to use it.
28:07
Sometimes I choose to use it.
28:10
Obviously I only
28:11
infringe on the instances that I use it.
28:13
It's no different than here.
28:15
Appellee Attorney (Alexander F. Mackinnon)
Well here it's different because there's a control
28:16
of direction standard.
28:17
Judge Rader
Which is clearly part of this.
28:20
By contract and by the terms.
28:23
Appellee Attorney (Alexander F. Mackinnon)
The contract does not require them to do it.
28:25
The contract allocates responsibilities
28:27
between the parties. It says these are your
28:29
jobs. We line wide are not going to be involved
28:31
in things like running your website
28:34
or your domain names
28:35
or your IP addresses or
28:36
whether or not you're going to
28:39
associate a new host name with an object.
28:41
That's your decision.
28:43
That's within your bailiwick. We're not doing it.
28:45
If you do it, fine. If you don't do it, fine.
28:47
We can't do anything about it.
28:49
It's your choice throughout the whole process.
28:51
Judge Linn
Well it seems to me the question here is not
28:53
whether that step is or is not performed
28:55
and whether there is or is not
28:57
infringement.
28:58
The question is if the
29:01
step that is specified in the
29:03
claim is performed by the
29:05
customer, whether that's
29:07
attributable to limelight so that
29:09
limelight would be deemed the
29:11
infringer of the overall
29:13
Appellee Attorney (Alexander F. Mackinnon)
method. I think that's the same
29:15
question that we had in
29:17
union auction where the bidders
29:18
What about the jury?
29:21
Judge Rader
They weighed in on this and found against you.
29:24
Appellee Attorney (Alexander F. Mackinnon)
It did, but your honor, the
29:25
union auction decision was a question of
29:28
law as well. It was decided as a matter of law.
29:31
Under those circumstances, there could
29:32
not be joint infringement where you had
29:34
instructions, where you had a contractual
29:36
Judge Rader
This is pretty heavily fact dependent too
29:38
as we are finding, right?
29:40
Appellee Attorney (Alexander F. Mackinnon)
I don't believe so. The fundamentals
29:42
the fundamental
29:45
issues are not disputed.
29:47
The question of what the contract says is not
29:49
disputed. The question of that they are
29:51
instructions is undisputed and we've
29:53
cited in the record testimony
29:55
from both parties that these
29:57
customers can decide which content
29:59
delivery network they're going to send content
30:01
to. We have customers under contract
30:03
with us that aren't modifying the law
30:05
or all the URLs. In the same
30:07
way, in union auction,
30:09
the bidders, it was undisputed that bidders
30:11
could enter information which
30:13
would infringe the claim. You want this to
30:15
Judge Rader
be law, isn't it a question of
30:17
fact for the jury whether there's infringement?
30:19
Appellee Attorney (Alexander F. Mackinnon)
Not under these circumstances, no.
30:21
Judge Prost
Well, you have argued, have you not, that in the
30:23
alternative we just should send it back for a new
30:25
trial with proper instructions, right?
30:27
Appellee Attorney (Alexander F. Mackinnon)
We have argued that in the alternative, yes, Your
30:29
Honor, and we've also argued that there is an
30:31
alternative ground for affirmance because
30:33
of the tagging issue we believe
30:35
was not interpreted consistent with
30:37
645 patent. Can I
30:39
Judge Prost
just, before you get to that,
30:41
turning you now to just the
30:43
threshold question, do you
30:45
agree with Mr. Dunner that even if you
30:47
were to decide the joint infringement issue
30:49
in your favor, there would still be remaining
30:51
questions of claim construction on the two
30:53
remaining patents, the 645 and the
30:55
Appellee Attorney (Alexander F. Mackinnon)
703? I think in terms of the status
30:57
of this case, yes, but I disagree with Mr.
30:59
Dunner to the extent he says there are not joint
31:01
infringement issues in these other patents.
31:03
The issues aren't ripened yet
31:05
because those, the patents came up
31:07
here on summary judgment or stipulations
31:09
and we never got in to develop that record,
31:11
but under the polling
31:13
of the 703 patent on joint infringement,
31:15
I think absolutely there are joint issues in the other
31:18
two patents as well that require
31:19
steps that are performed only by the customer.
31:22
Judge Prost
But we can't, but you acknowledge them
31:24
that those records haven't been developed. There was not
31:26
We can't dispose of those
31:28
Appellee Attorney (Alexander F. Mackinnon)
I think that's right. All I'm saying is he said
31:29
it's undisputed that joint infringement doesn't have
31:32
anything to do with these other patents. It doesn't right
31:34
now because the record isn't right.
31:36
So we do need to get to the claim construction
31:38
issues on the other two patents. Yes, Your Honor.
31:44
Judge Rader
Switching to
31:45
claim construction for a minute, does the
31:47
district court's construction require
31:49
multiple DNS levels? No, it does
31:51
Appellee Attorney (Alexander F. Mackinnon)
not. Why? Because
31:53
the court explained that you can
31:55
do it with a single DNS level
31:57
and I think what
31:59
Akamai does is they confuse
32:00
DNS level, the number of DNS
32:03
levels with the number of DNS servers.
32:06
You can have a single level
32:07
DNS system that has two
32:09
DNS servers at the same level, which is
32:11
exactly what the district court said.
32:13
The way you determine how many DNS
32:15
levels there are is
32:17
does the user have to make multiple
32:19
requests to DNS? If it makes
32:21
one request for a resolution,
32:23
the DNS does its thing and eventually returns
32:25
the IP address of the content
32:27
server, that's a one level DNS
32:29
system. The district court explained
32:31
how that happened because what you do is you have
32:33
the user makes a request
32:35
to the first DNS server on that
32:38
level, it determines where
32:40
is the close name server and
32:41
directly goes to that
32:43
name server without having to come back to the user.
32:46
That close name server then
32:47
returns the IP address of the content
32:49
server back to the user,
32:51
one level. How does a
32:54
Judge Rader
limelight obtain the embedded objects
32:55
if it does not have the full URL?
32:58
Appellee Attorney (Alexander F. Mackinnon)
How does it do it? It does
33:00
it by a different method than the patent
33:01
talks about. The patent,
33:03
as I think one of the questions brought out
33:05
earlier, the patent uses the original
33:08
URL. If the content server
33:10
doesn't have the object, it looks at that original
33:12
URL, knows exactly where to go,
33:14
it's a ready made solution that's
33:16
embedded into every one of those URLs.
33:18
In the limelight situation,
33:20
limelight has to create a table of all of
33:22
its servers, thousands and thousands of
33:24
servers, and in that table it has to
33:26
take host names and match them up
33:28
to locations where objects are found.
33:30
Very different, much more complicated
33:32
solution and less
33:34
inefficient, actually more efficient
33:35
than what the patent talks about
33:38
which has this built in solution by retaining
33:40
the original URL. Isn't this a classic
33:42
Judge Prost
case of conflating the validity and the
33:44
infringement issues? I mean
33:46
isn't this a classic case where if the
33:48
judge had two alternatives
33:50
and one of them was to re-construe
33:52
the language broadly as
33:54
the other side wanted, that
33:55
may result in the absence
33:58
of language in the specification and
34:00
some written description or enablement
34:01
problems, but it doesn't necessarily,
34:04
or at least under our case law, is not
34:05
supposed to infect our construction
34:07
of the claims themselves, right?
34:10
Appellee Attorney (Alexander F. Mackinnon)
Well, I agree that it's not,
34:12
one is not supposed to do that. I don't
34:14
think that's what the judge did. I think she was very
34:16
careful to point to the places in the
34:17
specification that referred to the invention.
34:20
What happened here is the inventors
34:22
very clearly specified what their
34:24
invention was in several places. They used
34:26
the language of the invention, they
34:28
described only one way of doing it,
34:30
and even with regard to associating
34:32
in the file history told the patent office
34:34
this is the way we effectuate our
34:36
invention by including the original URL.
34:39
Now they want to say we're entitled
34:40
to every way of doing it. Even if we didn't
34:42
invent it, even if we didn't describe it,
34:44
we're entitled to every way of associating it.
34:46
Judge Prost
But all of the references you're talking about appear
34:48
in the preferred embodiment, and
34:50
as Mr. Dunner pointed out, at least in one
34:52
of those, they talk about
34:54
preferably a preferable
34:56
method, which is the URL,
34:58
but only as a preferable method.
35:00
Appellee Attorney (Alexander F. Mackinnon)
Here's another citation
35:02
that I think, I don't agree with
35:05
Mr. Dunner's characterization, but beyond
35:07
that, if you look at
35:09
column 4, for example,
35:12
of the 645
35:13
patent, starting
35:15
in line 16,
35:17
it starts out with preferable. It says
35:19
each embedded URL is
35:21
preferably modified by prepending a
35:23
virtual server hostname into the URL.
35:25
That is what they say there is preferable.
35:27
But then it goes on to say, more
35:29
generally, the virtual server hostname
35:32
is inserted into the URL.
35:34
You still retain the original
35:36
URL, and that's
35:38
what the judge's construction said. She said
35:40
it includes the original
35:42
URL. Her construction didn't require
35:45
prepending or putting it
35:46
somewhere else. She just said you have to have the
35:48
original URL in order to
35:50
make the invention work. And that's
35:53
Judge Rader
undisputed. I'm going to have to
35:55
hold you to your time,
35:57
so do you want to save 30 seconds
35:59
for your potential
36:01
Appellee Attorney (Alexander F. Mackinnon)
surrebuttal? Yes, please. Thank you.
36:03
Judge Rader
Mr. Dunner, you have four minutes.
36:09
Appellant Attorney
Your Honor, Mr. McKinnon has
36:20
given away the store. If I
36:22
understood him correctly, he said
36:24
if there was a contract,
36:26
if there was an obligation under the contract,
36:28
that would be a different story.
36:30
Well, there is an obligation under the contract,
36:32
and moreover, Limelight could
36:34
sue if it wanted to under the
36:36
contract. It might not want to sue
36:38
as a practical matter, but it could sue
36:40
because once
36:42
the content
36:44
provider elects to use
36:46
this invention, the contact
36:48
provider is obligated. Customer,
36:51
who is the content provider,
36:52
shall provide company with all
36:54
cooperation information reasonably
36:56
necessary to company to implement
36:58
the CDS. This is not
37:00
an option. Once the user
37:02
asks for
37:04
the object, there's
37:07
an obligation. There's a legal
37:08
obligation. It can be sued on, and
37:10
I submit that should
37:12
end the story.
37:15
Mr. McKinnon also talked about...
37:17
Judge Prost
The user
37:19
can choose not
37:21
to do this.
37:23
There's no way that it is
37:25
legally liable to
37:27
Limelight if it chooses just not
37:29
to use the system at all, right?
37:31
Appellant Attorney
Your Honor, it depends what
37:33
you mean by that question. What you
37:35
mean is, once the user
37:37
asks the content
37:39
provider for that information,
37:41
the content provider is legally
37:43
obligated to perform
37:45
the tasks. Once
37:47
it is used, this whole issue is,
37:49
as Judge Rader, I think,
37:51
correctly pointed out, we're talking
37:53
about what happens when the system is used,
37:56
not when the system is not used.
37:57
Once it is used, there's a
37:59
legal obligation. Limelight
38:01
could come to me, though it probably wouldn't,
38:03
come to Mr. McKinnon and say,
38:05
Mr. Donner, I'd like to sue
38:09
the content
38:10
Judge Linn
provider. Well, how would
38:11
you breach that provision? If
38:13
you opted to use the system,
38:16
then you would use
38:19
some other instruction,
38:21
or you would insert
38:23
some other... You'd just not do it.
38:24
Well, if you don't do it, then you're not using
38:26
the system. But
38:30
Appellant Attorney
they're obligated,
38:32
once they
38:34
get into the system,
38:36
they have to follow the
38:37
directions. They have to
38:39
not only... But if they don't follow the
38:41
Judge Linn
directions, it doesn't work, so they're not
38:43
using the system. It seems
38:45
a bit of a circular argument. It sounds like a
38:47
Appellant Attorney
circular argument, Your Honor.
38:50
I don't know that you mention it.
38:52
But the fact
38:53
is that
38:56
we're talking about using the system.
38:58
And if they use the system,
39:00
they've got to follow all the directions.
39:02
They've got to do exactly
39:03
what we have told them to do.
39:05
Judge Linn
The question, though,
39:08
is whether
39:10
you know, who is it that is
39:12
performing that step?
39:14
Is it the customer
39:16
or is it Limelight?
39:18
Or is it the customer
39:20
acting on behalf
39:21
of or for the benefit of
39:23
Limelight? Or in what
39:25
respect is the customer's
39:28
action in
39:29
performing that step
39:32
properly attributed to Limelight?
39:34
Appellant Attorney
In this respect,
39:37
it is attributed to Limelight
39:39
because Limelight is the mastermind
39:41
to use the Muni Auction language.
39:43
Limelight is telling
39:45
the content
39:47
provider exactly what to
39:49
do, when to do it, how
39:51
to do it. It provides engineering.
39:54
It provides quality assurance.
39:56
It does everything it could
39:57
possibly do without physically
39:59
being there in person. Because
40:01
of the modern age, it's able to do this
40:03
electronically. But it doesn't.
40:05
Judge Linn
But then it's up to the customer to do it or not.
40:08
Appellant Attorney
Once the
40:11
process is
40:12
initiated, if the customer
40:14
deviates from that process
40:16
by suddenly saying,
40:17
I don't want to do it.
40:19
It's done some tagging. It says,
40:22
I don't want to do it. There's a legal obligation
40:24
for it to do it because that legal obligation
40:26
is in this contract. And Mr. Rainey
40:28
told this court in Muni Auction
40:30
that there was no contract
40:32
in the record, contrary to what Mr. McKinnon
40:34
said in Muni Auction.
40:36
I see my time has... Thank you, Mr.
40:38
Judge Rader
Gunner. I don't think we have anything
40:42
for you to address, Mr. McKinnon.
40:44
Thank you. Our next