[00:00:48] Speaker 04:
Okay, the next case is number 15, 1125, Florida Atlantic University Research Corporation, again placed with Computer International and others.

[00:00:59] Speaker 04:
This is Stillman.

[00:01:02] Speaker 01:
Good morning.

[00:01:04] Speaker 01:
May it please the court, my name is Greg Stillman and I'm here today on behalf of Florida Atlantic University and Domain Associates asking the court to reverse an order of summary judgment.

[00:01:16] Speaker 01:
It was entered

[00:01:17] Speaker 01:
based upon the trial court's erroneous conclusion that the 385 patent lacks structural support for the function of recognizing the number of lines in an incoming video signal.

[00:01:31] Speaker 01:
By any standard of review, whether that standard be de novo or whether it be based upon a review of findings of fact that are clearly erroneous, we believe that the trial court's ruling was an error.

[00:01:45] Speaker 03:
Do you think there are any findings of fact that are relevant here?

[00:01:51] Speaker 01:
Well, the ultimate finding of fact, obviously, that the patent lacks structure for providing the function of recognizing the lines is the ultimate finding of fact that we think is relevant to the extent that she found that the patent did not disclose an actual counter that increments

[00:02:10] Speaker 01:
on the H-sync and resets on the V-sync, yes, I think that would be a finding of fact.

[00:02:16] Speaker 03:
And wouldn't it also be a finding of fact as to whether or not one of skill and the art would have understood that something that black box denotes a particular structure?

[00:02:28] Speaker 01:
Absolutely.

[00:02:29] Speaker 01:
That would certainly be a finding of fact.

[00:02:33] Speaker 01:
You know, at the end of the day, I really do believe that the principal error made by the trial court in this case was a finding that because the word counter was not included in auto line 30, that somehow the patent lacked structure sufficient to inform a person of ordinary skill of the art how this patent recognizes an incoming video signal.

[00:02:53] Speaker 03:
So let me, can I just put it in context here?

[00:02:56] Speaker 03:
So everybody agrees that we're in the world of 112.6, right?

[00:03:01] Speaker 03:
Yes.

[00:03:02] Speaker 03:
That this is means plus function.

[00:03:03] Speaker 03:
Yes.

[00:03:04] Speaker 03:
And everybody agrees, well, there's some back and forth about the function, but it seems to be pretty clear that the function is recognizing, right?

[00:03:11] Speaker 01:
Exactly.

[00:03:12] Speaker 01:
I don't think there's any disagreement that the function is simply recognizing the number of lines in an incoming video signal without being told.

[00:03:21] Speaker 03:
OK, so the only issue before it is whether auto line number 30, which is the structure, you agree that that's the structure.

[00:03:28] Speaker 03:
I agree.

[00:03:30] Speaker 03:
that structure tells us enough to satisfy one process.

[00:03:33] Speaker 01:
Whether a person of ordinary skill in the art, looking at the patent in its entirety, its figures, and its specifications, would be informed sufficiently to understand what structure performs that function of recognizing the line.

[00:03:45] Speaker 01:
And you agree that, I'm sorry, go ahead.

[00:03:47] Speaker 04:
I was just going to say, you're skipping over what seems to be the most critical aspect of this decision, and that is that there must be enough structure in the specification

[00:03:59] Speaker 05:
Exactly.

[00:03:59] Speaker 04:
You are telling us that this box with a black line around it and a number is the structure.

[00:04:07] Speaker 02:
I am.

[00:04:08] Speaker 02:
And you also agree that the term itself, bottom line number, is not a term that one of ordinary skill in the art would instantly understand as

[00:04:20] Speaker 02:
corresponding to some particularized structure?

[00:04:24] Speaker 01:
That term taken in isolation, absolutely.

[00:04:26] Speaker 01:
I would agree with that.

[00:04:27] Speaker 01:
But obviously, you have to look at the pattern as a whole and understand that there is, in fact, structure that accepts an incoming video signal.

[00:04:37] Speaker 01:
There's also structure that separates the V-sync from the 8-sync, which

[00:04:43] Speaker 01:
The only reason for doing that would be to count it as even the other side's expert has admitted.

[00:04:49] Speaker 01:
Perhaps it would be helpful if I could give you just a little bit of background about this invention.

[00:04:55] Speaker 01:
As you know, the 385 patent is called an adaptive scan converter.

[00:05:00] Speaker 01:
It is certainly not the first scan converter ever invented, but it discloses a method of converting an incoming video signal that was more efficient

[00:05:11] Speaker 01:
by virtue of the fact that it did not have to rely upon a fully stored frame or field before it can begin actually processing the information.

[00:05:21] Speaker 01:
And as you know from reading the briefs, an incoming video signal presents itself in lines of digital information.

[00:05:29] Speaker 01:
And depending upon its source, whether that source be NBC or whether it be ESPN or CNN,

[00:05:36] Speaker 01:
The incoming video signal may be presented in 1080p, 1080 lines of horizontal information or 780 or 480 or some variation thereof.

[00:05:49] Speaker 01:
So the first thing that any scan converter, not just Dr. Glenn's scan converter, has to do

[00:05:56] Speaker 01:
is to recognize how many lines are being presented to be converted.

[00:06:01] Speaker 01:
And it's undisputed that there's various ways to do that, right?

[00:06:04] Speaker 01:
There are various ways to do that, yes, but there is only one way that is disclosed in this patent.

[00:06:12] Speaker 01:
The novel aspect of Dr. Glenn's patent was that it allowed the scan converter to begin processing or interpolating

[00:06:21] Speaker 01:
to make that scan conversion process complete.

[00:06:25] Speaker 02:
Right, but right now this case hinges on trying to understand this spec, this term called auto line number.

[00:06:35] Speaker 02:
It does.

[00:06:36] Speaker 02:
And how that box performs this function of recognizing the number of lines for the input.

[00:06:44] Speaker 02:
It does indeed.

[00:06:45] Speaker 02:
And then I read the district court saying that

[00:06:50] Speaker 02:
Everyone agrees that the intrinsic evidence doesn't tell it to you.

[00:06:54] Speaker 02:
We have to go outside the intrinsic record and see if there's any expert testimony that might be able to provide and shed some light on the meaning here.

[00:07:06] Speaker 02:
And then concluded that your expert had testified that there were multiple ways of doing it, counter, timer.

[00:07:16] Speaker 02:
In the end, whether it's a counter or whether it's a timer,

[00:07:20] Speaker 02:
You're ultimately trying to achieve a count of the lines.

[00:07:25] Speaker 02:
But in the end, it could be done, as your expert said, by a counter, by a timer, et cetera.

[00:07:32] Speaker 02:
And so now the district court seemed to feel like it was stuck with that kind of testimony and then wasn't going to let the expert come back for validity purposes and say, oh,

[00:07:48] Speaker 02:
It's really just a counter.

[00:07:49] Speaker 02:
So I guess the point is, from the district court's perspective, I can understand its concern that the claim was being perhaps treated like a nose of wax.

[00:07:58] Speaker 02:
Read one way for infringement, read another way for validity.

[00:08:02] Speaker 02:
What's the response?

[00:08:03] Speaker 01:
That's an excellent point.

[00:08:04] Speaker 01:
And in many respects, that question goes to the very heart of the error that the trial court committed.

[00:08:12] Speaker 01:
And in fact,

[00:08:13] Speaker 01:
I think pertains to your earlier question, Judge O'Malley, as to what findings of fact she made that were inappropriate.

[00:08:20] Speaker 01:
The problem that the trial judge encountered, and the reason why there was error here, was that she confused testimony about equivalence under 112.6, which is a matter ultimately for the jury, as to alternative ways that one could go about recognizing the number of lines.

[00:08:41] Speaker 01:
For purposes of proving infringement, obviously, we're entitled to all of the structure that's disclosed in this patent and all equivalent structure.

[00:08:51] Speaker 04:
Provided you start with a structure under 112.6, it's a structure disclosed and equivalent.

[00:08:59] Speaker 04:
We're not arguing about whether some of these alternatives, I was just looking to see the most that it says about block 30, is that it's there and it says under control,

[00:09:12] Speaker 04:
of an 1125 line read clock derived from block 30.

[00:09:18] Speaker 04:
That is, it's quite a stretch to say that that substantive structure, which would then, since this talks about the clock, entitle the patentee to equivalence.

[00:09:31] Speaker 04:
Where did the court go wrong on that?

[00:09:35] Speaker 01:
Let's look at what the evidence was in front of the judge with respect to the

[00:09:40] Speaker 01:
persons of ordinary skill in the art and how they understood this pattern.

[00:09:45] Speaker 01:
Both experts, Dr. Reeder and Dr. Von Herzen, agreed that the H and B structure in figure one informs a person of ordinary intelligence with respect to this pattern that the auto line 30 includes a counter that recognizes function, that recognizes the number of lines.

[00:10:06] Speaker 02:
Did you just say that the other side's expert testified that auto line 30 is a counter that recognizes the line?

[00:10:14] Speaker 02:
There's no question, but there is evidence in this record.

[00:10:17] Speaker 02:
Now I'm getting ready to voice you to it.

[00:10:19] Speaker 02:
Because I saw other testimony from the other side's expert that says there's something in there that counts.

[00:10:25] Speaker 02:
And I understand that because at bottom, you're trying to figure out what is the count of the H-sync pulses between the V-sync pulses.

[00:10:32] Speaker 02:
And what he said... But he didn't say counter.

[00:10:36] Speaker 01:
What he said was that, yeah, that's exactly right.

[00:10:39] Speaker 01:
The light between these two experts is you have one expert says that I see a counter and the other expert saying that I see an element that counts.

[00:10:48] Speaker 01:
That's the basis upon which this patent has been declared to be invalid.

[00:10:51] Speaker 03:
Let me ask.

[00:10:52] Speaker 03:
I mean, clearly, if you had said counter means for recognizing,

[00:10:57] Speaker 03:
Or if you had said means for recognizing and in the specification you referred to a counter, then your equivalent argument as it relates to the expert reports on validity would seem to, on infringement would seem to make more sense.

[00:11:13] Speaker 03:
But you don't have that kind of language.

[00:11:15] Speaker 03:
You have no language that calls it anything.

[00:11:17] Speaker 03:
And then if we go back to the testimony of the Markman hearing that had to do with claim construction and was not having to do with infringement at all,

[00:11:26] Speaker 03:
You've got Van Herzen saying that the auto line is variously a box that counts the number of input lines or a little digital state machine that could work by counting or timing sync signals or could have other features such as looking at the front porch or back porch of a horizontal scan line.

[00:11:48] Speaker 03:
I mean, those are a lot of options.

[00:11:51] Speaker 01:
Well, remember that auto line 30 is structure that's performing more than simply the function for recognizing the number of lines.

[00:11:59] Speaker 01:
And so when he's talking about the fact that auto line number 30 is essentially a digital state machine, he's talking about more than the structure that's in auto line 30 for essentially performing the function of recognizing the number of lines.

[00:12:15] Speaker 01:
And that's an important point because

[00:12:17] Speaker 01:
Auto Line 30, there's a lot going on in Auto Line 30 if you read this patent, and the suggestion that Auto Line 30 is anything more than a counter with respect to performing the function of recognizing the number of lines is not supported by this record.

[00:12:34] Speaker 01:
Let me go on with respect to

[00:12:37] Speaker 01:
your question, Judge, because I think it's an important one, and that is what does their expert actually say?

[00:12:42] Speaker 02:
First of all, he says... Can we go back to what your expert said during the Markman hearing?

[00:12:48] Speaker 02:
It could be done, for example, by counting.

[00:12:50] Speaker 02:
It could be done, for example, by timing.

[00:12:53] Speaker 01:
And here's the point.

[00:12:55] Speaker 01:
That's different from saying what the patent, in fact, discloses.

[00:12:59] Speaker 01:
What he was saying in the context of that hearing was explaining to her

[00:13:04] Speaker 01:
This was in a tutorial.

[00:13:06] Speaker 01:
This was not a hearing in which we're discussing the issue of invalidity or indefiniteness.

[00:13:11] Speaker 02:
Well, it's trying to understand how these sync signals work when they go and get fed into auto line number 30.

[00:13:18] Speaker 01:
But there's a difference between saying this is how it could be done versus how it is in fact done in this patent.

[00:13:27] Speaker 01:
And that's what he was doing in this case.

[00:13:29] Speaker 01:
He was giving a tutorial and she was asking a number of questions

[00:13:33] Speaker 01:
about how it could be done, but he was not offering an opinion about what the patent, in fact, discloses as to how it's done.

[00:13:40] Speaker 02:
And that's the important thing that I wanted to- Let's get differently, Ben.

[00:13:43] Speaker 02:
Is there something in the Markman hearing where the expert says, aha, out of line number 30 equals counter?

[00:13:54] Speaker 01:
Yes.

[00:13:55] Speaker 01:
Let me point you again.

[00:13:57] Speaker 01:
You know, in this case,

[00:13:59] Speaker 01:
You could rely almost entirely upon the testimony of the plaintiff's own experts in this case as to what they perceive was going on in Autoline 30.

[00:14:10] Speaker 01:
Dr. Reeder says, quote, the purpose of the Sink separator.

[00:14:15] Speaker 01:
Are we going back to the other side's expert?

[00:14:17] Speaker 01:
Yes.

[00:14:17] Speaker 01:
Okay.

[00:14:18] Speaker 01:
I'm talking about your expert.

[00:14:19] Speaker 01:
Yeah.

[00:14:20] Speaker 01:
I'll be happy to talk about my expert in a moment, but remember it's their burden to prove that this patent is an indefinite.

[00:14:26] Speaker 01:
So that's why I want to focus.

[00:14:28] Speaker 03:
Are you in the JA?

[00:14:29] Speaker 03:
Are you a JA 500?

[00:14:32] Speaker 01:
I'm at the, in the appendix, which was the Markman hearing at appendix 362 at 63.

[00:14:39] Speaker 01:
And Dr. Reeder says the purpose, and he's talking about the sync separator.

[00:14:43] Speaker 01:
is to strip out the horizontal sync pulses and the vertical sync pulses.

[00:14:48] Speaker 01:
And those pulses are sent to the line marked here, and they go to unit 30, which is the auto line number.

[00:14:54] Speaker 01:
What the auto line number does is automatically derive the number of lines in the analog input signal.

[00:15:02] Speaker 01:
The way it does that, it simply counts.

[00:15:05] Speaker 01:
It simply counts how many of the horizontal sync pulses occurred before a vertical sync pulse occurs.

[00:15:13] Speaker 01:
And that's at the appendix of 362, 363.

[00:15:16] Speaker 04:
Something maybe you can explain it.

[00:15:19] Speaker 04:
The specification actually says control of an 1125 line read clock.

[00:15:25] Speaker 04:
Then it says in parentheses derived from block 30.

[00:15:30] Speaker 04:
Yes.

[00:15:31] Speaker 04:
And I didn't see any reliance on saying that this was a sufficient structure.

[00:15:38] Speaker 04:
Is that because of the derived usage?

[00:15:41] Speaker 01:
Perhaps Dr. Reeder, in responding in fact to a question from the judge during the Martman hearing, said this.

[00:15:50] Speaker 01:
He said, the patent doesn't use the word count, but because the nature of the signal that is coming through sync separator 24, remember, there's no reason to separate these signals unless you're going to count them.

[00:16:05] Speaker 01:
The way the patent is designed, you have to perform that count as an active duty.

[00:16:10] Speaker 01:
And this is Dr. Bremer's work.

[00:16:13] Speaker 01:
You know, I'm not altogether sure.

[00:16:15] Speaker 02:
I would think it would work by, based on you figure out the time between the vertical sync pulses, and then you would figure out the time between two individual horizontal sync pulses, and then knowing those two numbers, you could divide out and figure out the number of each sync pulse.

[00:16:30] Speaker 01:
Exactly.

[00:16:30] Speaker 02:
But sooner or later... That would be the timer.

[00:16:32] Speaker 02:
And that wouldn't be the same thing as using a counter.

[00:16:35] Speaker 02:
Well, but sooner or later... But you would be using the H sync pulse and V sync pulse.

[00:16:38] Speaker 01:
You would.

[00:16:39] Speaker 01:
But sooner or later, you would have to count.

[00:16:43] Speaker 01:
I mean, sooner or later, you have to ascertain the number of lines.

[00:16:48] Speaker 01:
So that means you have to count.

[00:16:49] Speaker 01:
But the point is, whether or not it is the same or whether it is not would be a matter of whether it's of equivalence under 112.6.

[00:16:58] Speaker 01:
What we're suggesting to you is that this record shows that the only testimony, if you look at the declaration of Dr. Barnherson when he was submitting his declaration in opposition to the motion for summary judgment on the question of indefiniteness,

[00:17:13] Speaker 01:
he was quite clear as to how the patent worked.

[00:17:16] Speaker 01:
The confusion that occurred, occurred during the Markman hearing and tutorial where the expert was talking about how you could do certain things for purposes of equivalence under infringement, which is an issue ultimately for the jury.

[00:17:31] Speaker 03:
But that's a different question.

[00:17:33] Speaker 03:
What about your own counsel argument during the Markman hearing where you said to the court, you know, this recognizing

[00:17:39] Speaker 03:
function is broader than just counting.

[00:17:41] Speaker 03:
It's using a variety of tools available to us to determine how many lines there are.

[00:17:48] Speaker 01:
Right.

[00:17:49] Speaker 01:
And during the Markman hearing, there was an issue about whether or not we were going to construe the claim as deriving versus suggesting that there's some kind of calculate or some kind of processing going on as opposed to a simple count versus ascertaining the number of lines without being told.

[00:18:08] Speaker 04:
Let's hear from the other side.

[00:18:10] Speaker 04:
We're over time, but we'll see if you rebuttal, see where that takes us.

[00:18:17] Speaker 04:
Mr. Hackett.

[00:18:20] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:18:22] Speaker 00:
The District Court did correctly hold that Patent 385 is indefinite as a matter of law.

[00:18:27] Speaker 00:
The problem, as I think the colloquy this morning has made clear, is very simple.

[00:18:31] Speaker 00:
The claims define a, quote, means for recognizing the number of lines in the input format.

[00:18:36] Speaker 00:
But the corresponding structure is only a mysterious black box labeled nothing more than auto line number 30.

[00:18:43] Speaker 04:
Well, why is it so mysterious?

[00:18:45] Speaker 04:
If all of the experts on both sides agreed that these were straightforward, there are a whole bunch of different ways that you could perform this.

[00:18:55] Speaker 00:
That's exactly what's mysterious about it is which particular structure is supposed to be used to perform what is indeed the agreed upon function, which is to recognize the number of line, which as Judge Chen points out, the experts ultimately agreed, includes a count in the sense of identifying the number

[00:19:13] Speaker 00:
But the whole problem is it's a complete mystery based on the specification as to what the structure of the device is that is to arrive at what might colloquially be referred to as a kill.

[00:19:24] Speaker 04:
So it wasn't a mystery to the people in this field.

[00:19:27] Speaker 04:
It may be a mystery to us.

[00:19:28] Speaker 04:
But they had no trouble in testifying that there are all sorts of ways that somebody who knows his way around this technology would conduct that function.

[00:19:41] Speaker 00:
Well, two points, Your Honor.

[00:19:42] Speaker 00:
First of all, it wasn't clear.

[00:19:45] Speaker 00:
For example, the inventor himself didn't have any idea, literally zero idea, what structure would be used to accomplish the function he envisioned when he invented it.

[00:19:54] Speaker 03:
But your expert was pretty clear at the Markman hearing.

[00:19:57] Speaker 03:
I mean, we go back to the pages that were being cited to us, 362 and 363.

[00:20:03] Speaker 03:
says the auto-line number, what it does is automatically derive the number of lines in the analog input signal from the sync signal.

[00:20:09] Speaker 03:
The way it does that is that it simply counts how many of those horizontal sync pulses occurred before a vertical sync pulse occurred.

[00:20:17] Speaker 03:
And there's a colloquy with the court where the court asked him to explain that.

[00:20:21] Speaker 03:
And he said it does it by counting.

[00:20:24] Speaker 03:
But counting's not a function.

[00:20:26] Speaker 03:
The function is recognized.

[00:20:27] Speaker 00:
Well, not quite.

[00:20:29] Speaker 00:
What he's describing there is what it does, and that's part of the colloquy where the issue in dispute was whether it recognizes the number of lines by being told.

[00:20:38] Speaker 00:
It's a passive function, which would be true, for example, in the digital standard.

[00:20:42] Speaker 00:
The first packet of information that comes through will have literally the number written on it effectively, and the device will just read that number.

[00:20:49] Speaker 00:
And the point here was that the patent contemplated a device

[00:20:55] Speaker 00:
that perform the function of actually actively identifying that number.

[00:20:59] Speaker 00:
That's what was meant by the term counting.

[00:21:02] Speaker 00:
But at no point, and here's the critical point with respect to means plus function claim, at no point does Dr. Reeder, does Dr. Von Herzen, does any other expert testify in this case identify the one particular structure.

[00:21:14] Speaker 00:
And that's the burden that this court's presence established, the one particular structure

[00:21:20] Speaker 00:
that all experts would identify as the way to recognize the number of lines.

[00:21:26] Speaker 00:
That's the point.

[00:21:27] Speaker 00:
Dr. Reeder never said anything like that.

[00:21:29] Speaker 00:
To the contrary, in that same colloquy, the court itself referring back again to Dr. von Herzen, who had said not only could it be performed by a counter and a timer and et cetera, he also said it could be a digital state machine.

[00:21:43] Speaker 00:
And the court then says to Dr. Reeder, well, couldn't it be a digital, a little computer?

[00:21:47] Speaker 00:
And he says, it's an element that counts.

[00:21:50] Speaker 00:
Yes.

[00:21:51] Speaker 00:
So all he's recognizing is that, yes, there has to be a structure that performs the function of counting in the sense of recognizing the numbers, arriving at a count, as Judge Chen put it.

[00:22:02] Speaker 00:
But at no point does Dr. Reeder say, here's the structure that I, as a person skilled in the art, recognize as the one structure that performs that recognizing function.

[00:22:13] Speaker 04:
They weren't looking for the one structure.

[00:22:15] Speaker 04:
They were saying, this is old news.

[00:22:17] Speaker 04:
anybody in this field would know how to conduct the counting.

[00:22:21] Speaker 00:
But the problem is when you're doing a means plus function claim, as this court's precedents have repeatedly said, it is insufficient for the claim to say, there are known ways of doing this.

[00:22:32] Speaker 00:
Experts will figure that out.

[00:22:33] Speaker 00:
I'm just claiming all of the ways of doing that.

[00:22:35] Speaker 00:
That's this court's decision in Biomedino.

[00:22:38] Speaker 00:
The patent here is much worse or much less definite than the patent in Biomedino, which was held to be indefinite.

[00:22:45] Speaker 00:
That patent explicitly

[00:22:47] Speaker 00:
With specification, they're explicitly referred to, quote, known equipment, known equipment for gauging the pressure, valves, and other things.

[00:22:56] Speaker 00:
And this court said that was insufficient and wasn't definite enough because it didn't specify which equipment.

[00:23:01] Speaker 04:
Now, I agree with that.

[00:23:03] Speaker 04:
But there are thousands and thousands of software patents out there which have exactly the same method of presentation.

[00:23:12] Speaker 04:
There's a box with a line around it.

[00:23:16] Speaker 04:
He says this is the next step that's conducted.

[00:23:19] Speaker 04:
And it's all conducted, computer controlled.

[00:23:21] Speaker 04:
And each step is known.

[00:23:23] Speaker 04:
And what we've done is that we've put them together to achieve something that hasn't previously been achieved.

[00:23:32] Speaker 04:
And this is where the technological contribution is.

[00:23:36] Speaker 04:
And so for each of these steps, what's described, much of the time isn't much more.

[00:23:43] Speaker 04:
It says that it's an 1125 line read clock.

[00:23:46] Speaker 04:
It isn't completely devoid of the description.

[00:23:50] Speaker 00:
Not overall.

[00:23:51] Speaker 00:
I mean, there are things that are described in the patent, but would this court's precedent require?

[00:23:55] Speaker 04:
That number 30.

[00:23:56] Speaker 00:
Yes, you have to focus in on what is auto-line.

[00:23:58] Speaker 04:
So they're talking about number 30, and they say under control of an 1125 line reads clock.

[00:24:05] Speaker 04:
So isn't that structure of a clock?

[00:24:08] Speaker 00:
I don't think anything in the specification refers to auto-line number 30 as a clock.

[00:24:12] Speaker 00:
And certainly, it doesn't.

[00:24:13] Speaker 04:
That's not the argument.

[00:24:15] Speaker 04:
from which I'm reading.

[00:24:16] Speaker 00:
I'm sorry, which page in the?

[00:24:20] Speaker 04:
Under control.

[00:24:21] Speaker 04:
Under control of an 1125 line read clock derived from block 30.

[00:24:27] Speaker 04:
It's a U1.

[00:24:29] Speaker 02:
These are lines 58, 59.

[00:24:32] Speaker 02:
Which page are they?

[00:24:33] Speaker 02:
I'm sorry.

[00:24:33] Speaker 04:
So it isn't that it's totally silent.

[00:24:36] Speaker 04:
And the question, the difficult question, is how much more is needed?

[00:24:48] Speaker 00:
I mean, I'm not sure where the clock is coming from, but if anything, your honor has just underscored the whole problem here, which is none of their experts say that it is only a clock.

[00:25:02] Speaker 04:
But your experts did.

[00:25:04] Speaker 00:
No, our experts said you can't identify the clock.

[00:25:07] Speaker 04:
All I have to do is read the lines.

[00:25:09] Speaker 04:
This is not a major technological contribution or even a minor technological contribution.

[00:25:16] Speaker 04:
The invention, what's covered, is all of these steps together to start from wherever it starts and to end up with a result not previously achieved.

[00:25:29] Speaker 00:
But not with respect to Autoline 30.

[00:25:30] Speaker 00:
If you're focusing on that particular element,

[00:25:34] Speaker 00:
There it's a black box.

[00:25:35] Speaker 00:
I mean, there's nothing described there.

[00:25:36] Speaker 00:
That's the whole problem.

[00:25:38] Speaker 00:
It doesn't say clock.

[00:25:39] Speaker 00:
It doesn't say counter.

[00:25:40] Speaker 00:
It doesn't say digital state machine.

[00:25:41] Speaker 00:
All of that is expert testimony, which I agree.

[00:25:44] Speaker 00:
Nobody is saying that there's, it would have been impossible for an expert to figure out a way to recognize the number.

[00:25:50] Speaker 04:
The experts for both sides said this is old news.

[00:25:54] Speaker 04:
There's nothing new about counting.

[00:25:57] Speaker 00:
But the problem is a means plus function claim.

[00:25:59] Speaker 00:
That was true in Biomedino, Your Honor.

[00:26:01] Speaker 00:
In Biomedino, everybody understood that there's a way to measure to control the pressure.

[00:26:05] Speaker 00:
That was nothing interesting, nothing new.

[00:26:07] Speaker 00:
This court said the patent was indefinite because it didn't specify the structure, the particular structure that was contemplated for accomplishing that function.

[00:26:17] Speaker 03:
What if it said counter?

[00:26:18] Speaker 03:
What if there was

[00:26:20] Speaker 03:
Is counter a known structure?

[00:26:23] Speaker 00:
Right.

[00:26:23] Speaker 00:
So point one is it doesn't say counter, and that's enough for this court to affirm, and that's exactly what the lower court identified.

[00:26:29] Speaker 00:
But point two was that is precisely the problem here is that if it had said counter, you would have had a different evidentiary inquiry.

[00:26:37] Speaker 00:
You would have had the kind of evidentiary inquiry and the kind of analysis

[00:26:41] Speaker 00:
that this court applied in the S3 case.

[00:26:43] Speaker 00:
You would have had the experts join and say, do I know what a counter is?

[00:26:46] Speaker 00:
Do all the experts know what a counter is?

[00:26:48] Speaker 00:
Is the word counter being used here in a noun form of a description that it's something that counts?

[00:26:53] Speaker 00:
Or does it mean this counter thing that all experts can go on the shelf and pull off the counter and we all know what a counter looks like?

[00:26:59] Speaker 00:
You would have that kind of a battle joined.

[00:27:01] Speaker 00:
And the court would resolve that battle, presumably, and you would have a different kind of inquiry.

[00:27:06] Speaker 03:
It might even result in the conclusion that it's not a means plus function analysis.

[00:27:09] Speaker 00:
Absolutely.

[00:27:10] Speaker 03:
That's exactly right.

[00:27:11] Speaker 00:
It would depend on where you have the word counter.

[00:27:14] Speaker 00:
If it's in the claim, then it might eliminate the means plus function.

[00:27:19] Speaker 00:
Here, my hypothesis would be appearing in the specification.

[00:27:22] Speaker 04:
Let me ask you a different question.

[00:27:24] Speaker 04:
In your complaint, the district court mentioned the delay.

[00:27:29] Speaker 04:
In your complaint, you mentioned latches.

[00:27:31] Speaker 04:
The district court apparently remembered and commented on the equitable aspects.

[00:27:40] Speaker 04:
Have you abandoned any suggestion that there was an unreasonable delay?

[00:27:46] Speaker 00:
We certainly have not, for purposes of litigation, abandoned anything.

[00:27:49] Speaker 00:
What we're arguing on appeal is that the district court was right.

[00:27:51] Speaker 00:
We're just talking about this appeal.

[00:27:56] Speaker 00:
That's right.

[00:27:56] Speaker 00:
We have no obligation to urge all of the other potential reasons we might prevail if the district court were wrong and the reasons she gave.

[00:28:03] Speaker 00:
She's absolutely right.

[00:28:05] Speaker 00:
And I want to add one other reason that she's right beyond the reasons that she

[00:28:08] Speaker 00:
specified, which is an important concession made this morning, which was that the resolution of the record by the district court involved factual findings, factual determinations to which this court is required to defer and only reverse if clearly erroneous.

[00:28:25] Speaker 00:
I don't think the court needed to or needs to decide the case that way.

[00:28:29] Speaker 00:
The regular summary judgment standard can be applied and what you have is a simple failure of proof.

[00:28:34] Speaker 00:
There's just no evidence

[00:28:35] Speaker 00:
that everybody agrees that there's one particular structure that's referred to in the specification.

[00:28:41] Speaker 00:
But if you view the court's analysis of the evidence as factual findings, like my adversary suggested you should this morning, then the case is even easier because there's no way you can find it to be clearly erroneous given the fact that the standard is whether there's

[00:28:57] Speaker 00:
substantial evidence supporting it.

[00:28:58] Speaker 00:
Dr. Reeder says there's nothing known to persons skilled in the art as to what an auto line number 30 is.

[00:29:08] Speaker 00:
The inventor had no idea.

[00:29:10] Speaker 00:
Dr. von Herzen explicitly stated there could be multiple different things that accomplish that.

[00:29:17] Speaker 00:
It could be a counter, it could be a timer, it could be et cetera, it could be a digital state machine.

[00:29:22] Speaker 00:
None of that is sufficient under this court's

[00:29:24] Speaker 00:
indefinite precedence as opposed to a novelty.

[00:29:26] Speaker 03:
Is there something wrong with our indefinite law that we don't allow a class of structures to be claimed when it's not actually the point of novelty of the patent?

[00:29:40] Speaker 00:
I don't think so.

[00:29:41] Speaker 00:
I mean, that's obviously for this court to analyze.

[00:29:43] Speaker 00:
But I think what the court has said, and it's absolutely fair and understandable, is the notice function required of the notice policy underlying all of patent law requires

[00:29:52] Speaker 00:
particularly with respect to means plus function claiming.

[00:29:55] Speaker 00:
If you just say patent a means for doing something, you can claim all the means possible in the world and other potential innovators down the road will have no idea whether their new device fits within the scope of the claims patent.

[00:30:09] Speaker 00:
That's why this court has for, at this point, decades now insisted upon rigid adherence to the specification as identifying the particular structure, the particular structure

[00:30:20] Speaker 00:
known to persons skilled in the art as the structure for accomplishing the specified means.

[00:30:28] Speaker 04:
Well, that's in the statute.

[00:30:29] Speaker 04:
That wasn't any creative law of the court.

[00:30:34] Speaker 04:
But as you know, that statute was adopted to overrule some cases of the Supreme Court.

[00:30:41] Speaker 04:
We said you can't claim a function.

[00:30:43] Speaker 04:
Doesn't matter what structure you've got.

[00:30:45] Speaker 04:
You can't claim a function.

[00:30:47] Speaker 04:
So the purpose was to enable it, claiming a function.

[00:30:50] Speaker 04:
And then the question comes and I agree that it turns on a question of fact as to has it been enabled and that there is a threshold requirement.

[00:31:01] Speaker 04:
And I think the real question coming up here is when all of the experts on all sides really did not see this as a problem, that there is enablement because anybody would know and therefore be sketchy

[00:31:19] Speaker 04:
admittedly quite sketchy statement in the specification satisfies the statute requirement of structure when you're talking about software.

[00:31:28] Speaker 00:
So I think you're referring to a novelty analysis that it satisfies the novelty.

[00:31:32] Speaker 00:
No, I'm talking about 126.

[00:31:34] Speaker 00:
OK.

[00:31:34] Speaker 00:
But the problem there is this case court's cases have consistently said that it's not enough.

[00:31:39] Speaker 00:
I don't think you'll cite, you'll find any precedents of this court that say it suffices to satisfy the definiteness requirements of mean plus function

[00:31:47] Speaker 00:
if all of the experts say it's easy enough to figure out what one would do.

[00:31:51] Speaker 04:
Well, it isn't quite that.

[00:31:52] Speaker 04:
I keep taking this back to the one sentence here, which does go into further detail.

[00:31:58] Speaker 04:
And the question is, does that suffice when it suffices for the expert?

[00:32:04] Speaker 00:
But I guess I'm just resisting your understanding of the facts, and I'd ask you to rely on the district court.

[00:32:09] Speaker 00:
Not the facts, it's the specification.

[00:32:11] Speaker 00:
Right.

[00:32:11] Speaker 00:
I understand.

[00:32:12] Speaker 00:
But the specification, nobody thinks that the speci- literally nobody before the court thinks that the specification identifies a clock as the one structure that fulfills the function.

[00:32:25] Speaker 04:
It's just not there.

[00:32:26] Speaker 04:
It's the same one structure that's in the specification.

[00:32:29] Speaker 00:
I understand the specification has to identify with sufficient particularity, the structure for accomplishing the function.

[00:32:36] Speaker 00:
And they have the burden on appeal.

[00:32:38] Speaker 00:
I mean, if anything, then they, I mean, there's a multiple problems here, but among them is the fact that they've waived this argument that it's a clock and nothing else.

[00:32:47] Speaker 00:
None of the experts below said it was a clock.

[00:32:49] Speaker 00:
They haven't raised it in the brief.

[00:32:50] Speaker 04:
Where did they waive the argument?

[00:32:53] Speaker 00:
In their entire brief.

[00:32:53] Speaker 00:
I don't think the word clock appears in their brief.

[00:32:56] Speaker 00:
Nobody thinks it's a clock.

[00:32:58] Speaker 00:
Zero people in this case.

[00:32:59] Speaker 00:
There's no expert thing that thinks it's a clock.

[00:33:01] Speaker 04:
They say they're not limited to a clock.

[00:33:03] Speaker 04:
So the fact that they don't mention clock, how can they have waived something that they didn't propose?

[00:33:10] Speaker 00:
The problem then is the specification covers, you don't know what it covers.

[00:33:15] Speaker 00:
It was their obligation and is their obligation to identify the one particular structure that is in the specification.

[00:33:23] Speaker 00:
And if it's a clock,

[00:33:24] Speaker 00:
or a timer, if that's the same thing as a clock, or a counter, or a digital state machine, then this court's case decision in Biomedino and others, but Biomedino I think is the most important one because there it was the same thing.

[00:33:37] Speaker 00:
But worse, there at least they specifically said there's known structures, the patent referred to known structures for controlling pressure, and this court said the fact that you can have experts come in and agree, there's multiple different ways to gauge and control the pressure,

[00:33:53] Speaker 00:
isn't enough because with a means plus function claim, it is incumbent upon the patent to identify the particular structure for accomplishing that function, not simply to refer back to the idea that experts will be able to figure out and implement some functional structure.

[00:34:09] Speaker 00:
If there are no further questions.

[00:34:11] Speaker 00:
Any more questions?

[00:34:12] Speaker 00:
We urge the court to affirm.

[00:34:13] Speaker 00:
Thank you very much.

[00:34:13] Speaker 04:
Thank you.

[00:34:21] Speaker 04:
Mrs. Stillman.

[00:34:22] Speaker 01:
May it please the court collectively, I think all of the questions that the panel has asked counsel today, I think, inform what this decision needs to be based upon.

[00:34:32] Speaker 01:
We are not suggesting that the evidence below was simply that the experts could somehow figure out what kind of structure is in this patent.

[00:34:43] Speaker 01:
The evidence below is that both of these experts, persons skilled in the art of this patent,

[00:34:50] Speaker 01:
testified that this was, in fact, a counter.

[00:34:54] Speaker 01:
Not just a counter, mind you, but a specific kind of counter that increments on the 8-sync and resets on the V-sync.

[00:35:05] Speaker 04:
But you're, again, talking about the evidence, the testimony.

[00:35:10] Speaker 01:
I am.

[00:35:10] Speaker 01:
I'm talking about the evidence in front of the trial court.

[00:35:13] Speaker 04:
What's needed is some threshold in the specification.

[00:35:15] Speaker 04:
The statute is clear.

[00:35:17] Speaker 04:
I am.

[00:35:20] Speaker 04:
It's hard to find that one sketchy line.

[00:35:24] Speaker 01:
Well, as you know, from the court's precedence, all of these patents have to be interpreted and viewed in the light of the testimony of one skilled in the art.

[00:35:35] Speaker 01:
To be sure, if I were left to my own devices to interpret some of the patents that I try on a daily basis, I'd be in big trouble.

[00:35:44] Speaker 01:
So we have to rely upon the testimony of those skilled in the art.

[00:35:48] Speaker 01:
Council just said to you that neither expert was able to identify a particular structure.

[00:35:55] Speaker 01:
I would encourage you to look at the appendix at 776 through 813, where Dr. Reeder talked about a specific kind of counter that was found in the BB Dalton patent, which he says, in fact, invalidates our patent because it was anticipated or

[00:36:16] Speaker 01:
rendered obvious apparently as a result.

[00:36:19] Speaker 01:
He goes on to say, based upon what APOSA would understand about ALM 30, it is my opinion that these components in the BB Dalton patent would have the identical structure to it, or at a minimum, the identical structure under plaintiff's application of this claim for arguing infringement.

[00:36:40] Speaker 01:
In other words, how do you know that I've got a patent here that's invalidating

[00:36:45] Speaker 01:
based upon the identical structure unless you know what that structure is.

[00:36:50] Speaker 01:
He had to know what that structure is.

[00:36:51] Speaker 01:
He said so in his report and in his testimony, and that it was a counter that increments on the H-sync and resets on the V-sync.

[00:37:04] Speaker 03:
Again, I encourage... Didn't that whole section, though, begin with the proposition that he's only arguing that to the extent that

[00:37:15] Speaker 03:
we would find or that the court would find that the patent actually discloses a structure and that the structure happens to be what you're saying it is?

[00:37:24] Speaker 01:
Your honor, these declarations are made under oath.

[00:37:29] Speaker 01:
He's basically saying that he finds that there is a prior art reference that has the identical structure.

[00:37:35] Speaker 03:
Now, if he doesn't understand what that structure is... The identical structure that you're arguing

[00:37:39] Speaker 03:
can be found in the patent.

[00:37:40] Speaker 03:
But he begins that with the proposition that he doesn't find it in the patent.

[00:37:45] Speaker 01:
Well, I don't know how one could find the dental structure unless you had a pretty good idea of what that structure is.

[00:37:51] Speaker 01:
But let me close by asking you to look at the language in the telephoria case.

[00:37:58] Speaker 01:
So the figures of the 763 patent show the controller circuit as a black box.

[00:38:05] Speaker 01:
However, the absence of internal circuitry in the written description does not automatically render the claim indefinite.

[00:38:12] Speaker 01:
Here, the expert testified that a person of ordinary skill would know how to interpret the specifications and actually build a circuit.

[00:38:21] Speaker 01:
Therefore, the specification along with the figure shows sufficient structure to define the claim terms for an ordinary artisan in the field.

[00:38:31] Speaker 01:
defendant in that case bears the burden of proving by clear and convincing evidence that a person of ordinary skill would not understand the disclosure.

[00:38:40] Speaker 01:
Can anyone really say, based upon this record, that neither of these experts understood that the function of recognizing the lines in an incoming video signal was done by a counter that implements on the 8-sync and

[00:38:58] Speaker 01:
resets on the VC.

[00:38:59] Speaker 01:
That's exactly what Dr. Reeder understood.

[00:39:01] Speaker 01:
That's exactly what Dr. Von Herson understood.

[00:39:05] Speaker 01:
And for that reason and all of the other reasons articulated in our brief, we ask that the court reverse the trial court's ruling on summary judgment.

[00:39:14] Speaker 04:
Thank you.

[00:39:15] Speaker 04:
Thank you, Mr. Stillman.

[00:39:16] Speaker 04:
Mr. Hacker, the case is taken under the commission.