[00:00:02] Speaker 01:
a medic a corporation versus zimmer pain field from the district of new jersey and we are dividing as i understand the uh... the response between

[00:00:31] Speaker 01:
Mr. Lenny and Mr. Jakes, is that right?

[00:00:33] Speaker 05:
That's right, Your Honor.

[00:00:34] Speaker 01:
And who's going to go first?

[00:00:35] Speaker 01:
Oh, Mr. Jakes is going first on that one.

[00:00:37] Speaker 01:
Yes, thank you.

[00:00:37] Speaker 01:
All right.

[00:00:38] Speaker 01:
And Mr. Lombardi, you want three minutes for rebuttal.

[00:00:41] Speaker 03:
Yes, Your Honor.

[00:00:42] Speaker 01:
OK.

[00:00:44] Speaker 01:
OK, you may begin.

[00:00:47] Speaker 03:
I may close the court.

[00:01:02] Speaker 03:
Members of the court, the district court erred with respect to both of the claim terms at issue here because it failed to give effect to the plain language of the claims.

[00:01:12] Speaker 03:
There is nothing in the specification or the file history that justifies altering the claims in the way the district court did in this instance.

[00:01:20] Speaker 03:
And for that basic reason, the district court judgment should be reversed.

[00:01:25] Speaker 03:
There are two claim terms, as the court is aware.

[00:01:28] Speaker 03:
I'll talk first about the claim term that involved reading

[00:01:31] Speaker 03:
the word sleeve into the claims.

[00:01:34] Speaker 03:
That's a claim term that we've referred to as a securement paper claim term.

[00:01:39] Speaker 01:
Can I go to the other one first?

[00:01:42] Speaker 01:
Yes, Your Honor.

[00:01:43] Speaker 01:
Because I've got more questions on that one.

[00:01:47] Speaker 01:
I'm trying to understand, I mean, you have recited that there has to be some kind of

[00:01:58] Speaker 01:
juxtaposition and that they have to be juxtaposed for a particular purpose.

[00:02:04] Speaker 01:
So do you now agree with the district court that we can't just interpret the term juxtaposed out of context of the rest of the language of the claim?

[00:02:14] Speaker 03:
Your Honor, while I understand that the district court felt that we were taking juxtaposed out of context, that was never our intention.

[00:02:22] Speaker 03:
I do think juxtaposed needs to be taken in the context, and now on appeal, we have an agreement as to what juxtaposed means.

[00:02:29] Speaker 03:
It means positioned nearby.

[00:02:31] Speaker 03:
So we have a specific

[00:02:33] Speaker 03:
indication there of where the taper and the groove, or we also call it the recess, is positioned in the shell.

[00:02:41] Speaker 03:
It's positioned nearby and the additional part of the claim that Your Honor referred to is that it has to effectively, effectively you have to position them so that they work.

[00:02:51] Speaker 03:
So there is language concerning the positioning of the recess or the groove and the taper in the shell that is specifically in the claims.

[00:03:00] Speaker 03:
What's not in the claims

[00:03:01] Speaker 03:
is this reference to essentially midway.

[00:03:04] Speaker 03:
And that's what the district court read in.

[00:03:06] Speaker 03:
And in our view, that was incorrect.

[00:03:08] Speaker 01:
But it says, placed at relative locations such that the effectiveness of each of the securement recess and the internal securement taper is maintained while in the presence of the other.

[00:03:19] Speaker 01:
Correct.

[00:03:20] Speaker 01:
And the district court then turns to the specification and says that the only place that you describe how to maintain the effectiveness

[00:03:32] Speaker 01:
is the place in which you talk about those tapers essentially being equal in size.

[00:03:41] Speaker 03:
And it is true, and we've conceded from the beginning, Your Honor, that the only place in the specification that talks about the placement of the groove along the taper is in two mentions of preferred embodiment.

[00:03:53] Speaker 03:
Two mentions.

[00:03:53] Speaker 01:
Well, I get that.

[00:03:54] Speaker 01:
I mean, you know, I understand the whole cardinal sin thing that you're going after here.

[00:03:58] Speaker 01:
And just because it's in a preferred embodiment doesn't mean that it's the only way to do it.

[00:04:05] Speaker 01:
My problem is I don't see any place else in the specification that you describe what gives life to this effectiveness term other than the fact that the tapers are as long as possible on each side.

[00:04:26] Speaker 02:
Is there anywhere else in the patent?

[00:04:28] Speaker 02:
specification or not, that describes another effect?

[00:04:32] Speaker 03:
Not a literal embodiment, your honor, but what it does describe in column seven is it talks about the axial length as being important to effectiveness.

[00:04:42] Speaker 03:
So that, while it doesn't describe a specific embodiment, it describes what the person of skill in the art would need to be paying attention to in order to ensure that there's effectiveness.

[00:04:52] Speaker 01:
So how do the axial lengths of each tapers get maximized if

[00:04:58] Speaker 01:
if it's not positioned in a way so that they're maximized on both sides.

[00:05:04] Speaker 03:
Well, it could be, the actual length could be maximized by having the groove at the very tip of the taper, the very end of the taper.

[00:05:12] Speaker 03:
Then you have the longest taper possible.

[00:05:14] Speaker 03:
It could be with the groove on the outside of the taper, but close to it, positioned nearby under the language.

[00:05:22] Speaker 03:
You would have one taper on the shell in that instance.

[00:05:27] Speaker 03:
I think in all instances, under the language of the patent, the taper on the shell is referred to as one taper.

[00:05:33] Speaker 03:
Whether it's bisected or has a groove as part of it, it's still one taper.

[00:05:38] Speaker 03:
And so the maximizing the axial length

[00:05:41] Speaker 03:
is a message to the person of skill and the art how you would position the groove and the taper to make sure that it's effective.

[00:05:49] Speaker 03:
And Your Honor, I know and I understand your point about the Cardinal said, and I'm sure you hear that in many, many cases.

[00:05:55] Speaker 03:
But what I think makes this case different is that when you read essentially midway into the language, in this case, the only indicia they can point to that the invention is limited that way

[00:06:09] Speaker 03:
are preferred embodiments.

[00:06:11] Speaker 03:
The cases that they cite involve much more in the way of indicia that the positioning of the, that the limitation should be read into the claim.

[00:06:21] Speaker 03:
So for instance, there are statements in those cases that it's the present invention, or that the problem has to be solved by reference to this specific way of doing things, or that- It says in the paper under your argument, they could be located

[00:06:37] Speaker 03:
anywhere in the shell.

[00:06:38] Speaker 03:
No, Your Honor, not under the plain language of the claim.

[00:06:41] Speaker 03:
They have to be positioned nearby and that's juxtaposed, Your Honor.

[00:06:45] Speaker 03:
And the claim, and the parties agree, that's positioned nearby and that's something that will be determined at a further trial if necessary.

[00:06:52] Speaker 03:
They have to be positioned nearby and they have to be positioned in a way that they effectively maintain their utility as locking mechanisms.

[00:07:02] Speaker 01:
But you're talking about a first and second securing structure.

[00:07:06] Speaker 01:
position nearby one another.

[00:07:08] Speaker 01:
How do we have just one long taper with the groove at the top, then only one of those structures is long?

[00:07:18] Speaker 03:
Well, the securement structures that the securement structures are talking about are a securement recess, which is the groove, and a securement taper, which is the taper.

[00:07:27] Speaker 03:
And they can be positioned nearby each other if they are positioned nearby.

[00:07:31] Speaker 03:
If one is right next to the other, one I would submit that if they are given the language of the specification and the claims as a whole, if they are part of the taper, if they are in the taper, they are positioned nearby.

[00:07:44] Speaker 03:
And so language is provided about the location.

[00:07:48] Speaker 03:
Now, in the cases where a limitation is read in from the specification, they are different from this case.

[00:07:56] Speaker 03:
This case does not have any statement that essentially midway is the present invention.

[00:08:01] Speaker 03:
There was no art that was avoided by reference to the location of the groove along the taper.

[00:08:09] Speaker 03:
This is a case that is different.

[00:08:11] Speaker 03:
It is a case where literally the only thing they can point to

[00:08:15] Speaker 03:
that limits the definition of the term and provides the essentially midway language of the term is a preferred embodiment.

[00:08:23] Speaker 03:
And this court has a lot of case law that says that you're not to limit the claim terms to the preferred embodiment.

[00:08:31] Speaker 00:
Let me come out the same problem, but from a slightly different direction.

[00:08:36] Speaker 00:
I take your point that when you read the claims, it's clear that the trial judge added

[00:08:44] Speaker 00:
something to those claims.

[00:08:46] Speaker 00:
It's not in there, not in the claims.

[00:08:48] Speaker 00:
Now, here's my puzzle.

[00:08:53] Speaker 00:
For the moment, if I read the record correctly, the defendants counterclaimed on validity.

[00:09:02] Speaker 00:
Is that correct?

[00:09:03] Speaker 00:
Yes.

[00:09:03] Speaker 00:
What happened to that counterclaim?

[00:09:06] Speaker 03:
It never got tried because.

[00:09:08] Speaker 03:
It never got tried because.

[00:09:09] Speaker 03:
Right.

[00:09:09] Speaker 03:
Yes.

[00:09:10] Speaker 03:
And in fact, this whole thing was resolved basically as a result of claim construction.

[00:09:13] Speaker 03:
Summary judge in motion that filed the claim construction.

[00:09:16] Speaker 00:
OK.

[00:09:17] Speaker 00:
Let's assume the trial judge didn't read those conditions, those two, the sleeve and the midway conditions.

[00:09:30] Speaker 00:
Wouldn't you be faced with a rather serious question of indefinite?

[00:09:36] Speaker 03:
And I don't think so, Your Honor, because I think that the preferred embodiment does provide written description support for the claim.

[00:09:43] Speaker 03:
So I don't think there would have been an issue at that.

[00:09:45] Speaker 03:
And I think that the evidence would have been that a person of ordinary skill in the art is fully capable of determining what position nearby is in the context of this claim.

[00:09:55] Speaker 03:
and in the context of the other requirements of this claim.

[00:09:57] Speaker 00:
And wouldn't that look an awful lot like the way the trial judge read the claim?

[00:10:02] Speaker 03:
I don't believe so, Your Honor.

[00:10:03] Speaker 03:
I think it would be broader than the way the trial judge read the claim.

[00:10:06] Speaker 03:
Because essentially, midway is not the only way that one of these can work.

[00:10:11] Speaker 03:
And we know that because we have examples from the real world where positioning of the groove along the taper

[00:10:19] Speaker 03:
is different than essentially midway, and it does work.

[00:10:22] Speaker 03:
So I don't believe that it would have come out the way that the trial judge read it in this particular instance.

[00:10:29] Speaker 00:
So you would resist any interpretation of the trial judge's claim construction as one way to save the claims?

[00:10:38] Speaker 03:
Yes, I would.

[00:10:39] Speaker 03:
I don't believe that that's what was going on at all in this instance.

[00:10:43] Speaker 03:
I just think

[00:10:43] Speaker 03:
It was the trial judge misapprehending the way that the law should be applied.

[00:10:48] Speaker 03:
The trial judge started the analysis with the specification rather than with the claims.

[00:10:54] Speaker 03:
And I understand that this specification is always referred to, but I think it's telling the way the trial judge went about the analysis was to begin with a specification.

[00:11:02] Speaker 03:
And it's a notable opinion, I believe, for how little time the trial judge spends talking about the claims themselves.

[00:11:08] Speaker 00:
Well, for understanding the claims,

[00:11:11] Speaker 00:
Normally one might start with what I call the written description.

[00:11:15] Speaker 00:
Normally you might want to start with reading the written description before you get to the claims.

[00:11:25] Speaker 00:
You don't disagree with that.

[00:11:27] Speaker 03:
I guess it's a matter of preference, and I don't disagree with that, Your Honor.

[00:11:30] Speaker 03:
But I think you still, whatever the case.

[00:11:32] Speaker 00:
You want the trial judge, when the trial judge writes the opinion, to begin with the claim.

[00:11:37] Speaker 03:
Your Honor, I'm not suggesting that that is an error that is a basis for reversal at all.

[00:11:42] Speaker 03:
I'm just suggesting that in this case, I think it is

[00:11:45] Speaker 03:
emblematic of the lack of emphasis the court brought to the claim terms themselves.

[00:11:53] Speaker 03:
And I think that that is the fundamental problem here.

[00:11:55] Speaker 03:
And Judge O'Malley, I just wanted to- To the sleeve for a second?

[00:11:58] Speaker 03:
Yes.

[00:11:59] Speaker 03:
OK.

[00:12:02] Speaker 01:
Go ahead.

[00:12:02] Speaker 03:
Thank you.

[00:12:03] Speaker 01:
And I think- That's where you wanted to start.

[00:12:05] Speaker 03:
Yeah, that's fine.

[00:12:06] Speaker 03:
Thank you very much, Your Honor.

[00:12:07] Speaker 03:
And the problem with sleeve is that in this instance,

[00:12:11] Speaker 03:
the district court added a structure that is simply not present.

[00:12:16] Speaker 03:
A sleeve is not present.

[00:12:18] Speaker 03:
There's no reference to anything resembling a sleeve.

[00:12:22] Speaker 03:
This is different than the cases that the defendant cite to here, because in all of those cases, I think the main ones were retractable, Honeywell and Wang.

[00:12:32] Speaker 03:
there is a structure that's disclosed in the claims.

[00:12:36] Speaker 03:
And then the court looked to the specification to construe how broad that structure should be construed.

[00:12:43] Speaker 01:
But again, my problem with your argument is that if you look at the specification, when you're talking about the metal version, every time you talk about it, you talk about it in terms of using a sleeve.

[00:13:00] Speaker 03:
And that's not accurate, Your Honor.

[00:13:01] Speaker 03:
At column two, lines 41 and forward, there is a specific reference to what we refer to as the two-piece configuration.

[00:13:10] Speaker 03:
And that is a configuration that does not include a sleeve.

[00:13:14] Speaker 03:
And there are at least two other references to such a configuration in the specification.

[00:13:21] Speaker 03:
And that, in fact, Your Honor, is consistent with the way this patent has been structured from the beginning, from the very original claims in this case

[00:13:29] Speaker 03:
And those are at A1687 of the appendix.

[00:13:34] Speaker 03:
There were claims to configurations without a sleeve and claims to configurations with a sleeve.

[00:13:42] Speaker 03:
And that held true all the way up to the issued patent, where there are claims without a sleeve and there are claims with a sleeve.

[00:13:49] Speaker 03:
Now, the claims with a sleeve are not the ones that we asserted in this case.

[00:13:54] Speaker 03:
But they're still there, and that was the structure throughout.

[00:13:57] Speaker 03:
We disagree with the contention by the other side that there's no reference to a sleeve in the specification.

[00:14:04] Speaker 03:
It's there, as I referred to, column two and two other places that we have referenced in our briefs.

[00:14:11] Speaker 00:
Indeed, if you read the specification as including all of the claims, then that strengthens your argument.

[00:14:18] Speaker 03:
It does.

[00:14:18] Speaker 03:
And that is a point I had intended to make, Judge Plager.

[00:14:21] Speaker 03:
So yes, it's true.

[00:14:22] Speaker 03:
But it shows the intention from the beginning where to have claims with a sleeve,

[00:14:27] Speaker 03:
and without a seat.

[00:14:28] Speaker 01:
But isn't that because there were some claims that relate to the plastic material and other claims that related to the hard material?

[00:14:37] Speaker 03:
There are references to plastic and the hard material independent claims that that is true.

[00:14:43] Speaker 03:
But that is not the reason for the structure being the way it was.

[00:14:47] Speaker 03:
And in fact, there's nothing in the language in column two, the language that I've been referring to, Your Honor.

[00:14:52] Speaker 03:
that indicates that the two-piece configuration has anything to do, two-piece meaning the configuration without a sleeve, has anything to do with the plastic or the ceramic.

[00:15:02] Speaker 03:
So it's there, it's in this jar.

[00:15:05] Speaker 02:
In the appellee's page 12 at the bottom, they say apart from using a sleeve, the 243 patent does not teach any other mechanism for achieving these objectives with a hard bearing.

[00:15:18] Speaker 02:
You disagree with that?

[00:15:19] Speaker 03:
Yes, I disagree.

[00:15:20] Speaker 03:
Well, I agree in this respect that it does teach that you can use a sleeve with a hard bearing like a ceramic bearing.

[00:15:28] Speaker 03:
But it also teaches that you can do it without having a sleeve at all.

[00:15:32] Speaker 03:
So it is incorrect to say that a sleeve is the only way because the patent has specific references to a configuration that does not have a sleeve.

[00:15:42] Speaker 03:
And that's been the case with this patent from the time it was originally filed

[00:15:46] Speaker 03:
And that's the reference I gave you to the file history.

[00:15:50] Speaker 03:
I believe I made it through my time.

[00:15:52] Speaker 01:
I'll give you your rebuttal time back.

[00:15:54] Speaker 03:
Thank you, Your Honor.

[00:15:55] Speaker 01:
We spent a lot of time on the first issue.

[00:16:00] Speaker 01:
Mr. Dakes?

[00:16:02] Speaker 05:
Thank you, and may it please the Court.

[00:16:05] Speaker 01:
Your biggest problem, I think, in both of these instances is claim differentiation.

[00:16:11] Speaker 01:
And I know why, while that's not the end of the world, here,

[00:16:15] Speaker 01:
There are very specific dependent claims that claim precisely the limitations that the trial court read in to the independent claims.

[00:16:28] Speaker 05:
Well, it's true, Your Honor.

[00:16:29] Speaker 05:
The claim differentiation in this situation, there are dependent claims that do recite essentially midway.

[00:16:37] Speaker 05:
And same thing with respect to the sleeve.

[00:16:40] Speaker 05:
That's true.

[00:16:41] Speaker 05:
But just looking at the essentially midway,

[00:16:43] Speaker 05:
We know claim differentiation, it's an analytical tool, and it's not a hard and fast rule.

[00:16:50] Speaker 05:
And here where the claim language really has no other meaning, claim differentiation has to yield.

[00:16:58] Speaker 05:
What do you mean it has no other meaning?

[00:16:59] Speaker 00:
Maybe it has no meaning at all.

[00:17:01] Speaker 05:
Well, that could be, Judge Plager.

[00:17:04] Speaker 01:
But that's not a claim construction issue, right?

[00:17:08] Speaker 05:
That's right.

[00:17:09] Speaker 05:
And looking at construing these claims, we do think that the language

[00:17:13] Speaker 05:
you start with, it's certainly uncertain and rising to the level of ambiguity.

[00:17:19] Speaker 05:
But if you take claim differentiation to its end here, then you're back to basically Stryker's construction, which is nearby.

[00:17:29] Speaker 05:
And then the rest of that claim language, the relative locations such that their effectiveness is maintained while in the presence of the other, it has no meaning.

[00:17:39] Speaker 01:
I mean, your friend on the other side argues that the effectiveness is maintained as long as you can maximize the length of the taper.

[00:17:48] Speaker 01:
And couldn't you argue that maximizing the length of the taper is better done by having the groove at the very end of the taper rather than midway?

[00:18:00] Speaker 05:
I don't agree, Your Honor.

[00:18:01] Speaker 05:
And for the reason is, that's not what the specification says.

[00:18:05] Speaker 05:
That's a misreading of the specification.

[00:18:08] Speaker 05:
The specification says having generally the same and therefore maximized axial length.

[00:18:15] Speaker 05:
Right, but that's a preferred embodiment.

[00:18:17] Speaker 05:
Well, it's saying you prefer to have the same length because that will maximize the axial length, not maximize the axial length by placing the recess outside of the taper.

[00:18:29] Speaker 05:
If you do that, then you're ignoring other claim language.

[00:18:31] Speaker 05:
You have also in the presence of the other.

[00:18:35] Speaker 01:
Tell me why maximizing axial length

[00:18:38] Speaker 01:
can only be done by having two equal lengths.

[00:18:43] Speaker 01:
Why couldn't it be done by placing it at the end of the table?

[00:18:47] Speaker 05:
That could be, Your Honor, but that's not what the specification says.

[00:18:50] Speaker 01:
Tell me where it says that it can't be done.

[00:18:54] Speaker 05:
It says having generally the same length and therefore maximizing.

[00:18:58] Speaker 01:
Then in the preferred embodiment.

[00:19:00] Speaker 01:
What I'm trying to understand is

[00:19:04] Speaker 01:
You know, are we committing, are you asking us to commit the cardinal sin of claim construction and simply put the limitation from a preferred embodiment in there, or is there something in the specification that would teach us a way from maximizing axial length in a different way?

[00:19:24] Speaker 05:
I think you have to take the specification at face value, but it says what you want to do is have equal lengths and therefore maximize it.

[00:19:32] Speaker 05:
It doesn't say maximize one over the other.

[00:19:36] Speaker 05:
One taper, really, right?

[00:19:39] Speaker 05:
It is, yes.

[00:19:40] Speaker 05:
And the recess has to be within the taper.

[00:19:44] Speaker 05:
It cannot be outside it, or they're not in the presence of the other.

[00:19:48] Speaker 01:
We have to give meaning to it.

[00:19:49] Speaker 01:
Not in the presence of the other?

[00:19:50] Speaker 01:
I thought there was an agreement on appeal here that juxtapose means nearby each other.

[00:19:56] Speaker 05:
That's right, juxtapose.

[00:19:57] Speaker 05:
But there's more to the claim language than that.

[00:20:00] Speaker 05:
Stryker wants to focus just on juxtapose, which we say, okay, nearby, but there's more to it.

[00:20:07] Speaker 05:
It also says in the presence of the other, and if you read the specification where it talks about the presence of one and the other, it's the presence doesn't compromise the other.

[00:20:17] Speaker 05:
And where is that?

[00:20:17] Speaker 05:
It's because it's within the taper.

[00:20:21] Speaker 05:
Where are you in the specification where you find that?

[00:20:23] Speaker 05:
It's the same paragraph in column seven.

[00:20:25] Speaker 01:
Okay, so you're still in the preferred embodiment?

[00:20:29] Speaker 05:
Your Honor, there is only an embodiment or two embodiments that show the same thing, which is essentially midway.

[00:20:36] Speaker 05:
Whether or not that's a preferred embodiment, it is the embodiment in the patent.

[00:20:42] Speaker 05:
The language in the preferred embodiment is used in the middle of the paragraph to describe the angle and the preferred material, and I don't think you can assume because anything that follows that throughout the following columns of the patent is all of a sudden the preferred embodiment.

[00:20:59] Speaker 05:
So if we're looking at that in column seven, it says that the two segments.

[00:21:04] Speaker 05:
What line are you at?

[00:21:06] Speaker 05:
On column seven and line 16, having generally the same and therefore maximized axial length.

[00:21:14] Speaker 05:
All right.

[00:21:14] Speaker 05:
You're still not helping me.

[00:21:15] Speaker 01:
So we have to conclude that because this preferred embodiment describes this, that by definition,

[00:21:27] Speaker 01:
That's the end of the inquiry.

[00:21:28] Speaker 05:
I mean... No, Your Honor, it's certainly not that.

[00:21:31] Speaker 05:
We're trying to figure out, first of all, what in the presence of the other means, which is not a readily understandable term.

[00:21:37] Speaker 01:
Okay, so where in the specification, other than that, is there any discussion of in the presence of the other?

[00:21:42] Speaker 05:
Well, if you continue on to the end of that particular paragraph in column seven, it talks about subsequently attaining the desired locking engagement with the seating surface,

[00:21:54] Speaker 05:
is not compromised by the presence of the recess, meaning the recess within the taper doesn't compromise the effect of the taper.

[00:22:04] Speaker 05:
And it uses the word presence.

[00:22:06] Speaker 05:
Presence doesn't mean somewhere outside.

[00:22:09] Speaker 05:
We're just back to nearby and then the rest of this claim line, which doesn't mean anything.

[00:22:13] Speaker 01:
So now you're asking us to read presence to mean in the presence.

[00:22:16] Speaker 01:
I'm in the presence of my colleagues here, but we're not, you know, butted up against each other.

[00:22:22] Speaker 01:
So you're asking us to read presence to mean that they have to be inside of each other?

[00:22:28] Speaker 05:
That's what is shown.

[00:22:29] Speaker 05:
The recess is shown inside the taper.

[00:22:31] Speaker 05:
It's not shown anywhere else.

[00:22:32] Speaker 05:
It's not shown outside the taper.

[00:22:34] Speaker 05:
It's not shown somewhere else on the shell.

[00:22:37] Speaker 05:
That's where it's shown.

[00:22:38] Speaker 05:
And the whole purpose of this description is by putting the recess within the taper, you don't want to compromise the taper.

[00:22:49] Speaker 05:
That's the point of this invention.

[00:22:51] Speaker 05:
Why couldn't the recess be a quarter of the way instead of midway?

[00:22:57] Speaker 05:
It could be, but then you have to look at the other claim language, which says they have to be at relative locations such that their effectiveness is maintained while in the presence of the other.

[00:23:08] Speaker 05:
Where do we learn that?

[00:23:10] Speaker 05:
The specification not only tells you how, but it tells you why.

[00:23:13] Speaker 05:
Put it essentially midway.

[00:23:15] Speaker 05:
It doesn't say a quarter of the way will work.

[00:23:17] Speaker 05:
It doesn't say one end of the other will work.

[00:23:20] Speaker 05:
This is the way that works.

[00:23:22] Speaker 05:
And to give meaning to that language, you come to essentially midway, which is what the district court judge did.

[00:23:30] Speaker 00:
You do appreciate that there is nothing in the claims that sounds like what the district court read into it.

[00:23:39] Speaker 05:
Well, I will agree that the judge used different words.

[00:23:42] Speaker 05:
And I think that's part of the problem with using this type of vague claim language.

[00:23:47] Speaker 05:
when you use relative locations such that their effectiveness is maintained.

[00:23:51] Speaker 05:
If all that means is it has to work, then it's a meaningless limitation.

[00:23:56] Speaker 05:
If all it means in the presence of one another means is that it has to be somewhere on the same device, that's a meaningless limitation, and we're just back to nearby, and that means nothing.

[00:24:09] Speaker 05:
Now, if I could just turn briefly to the tapered securement terms.

[00:24:16] Speaker 05:
I disagree that the specification discloses a two-piece embodiment with hard bearings.

[00:24:23] Speaker 05:
The important parts are the shell and the bearing.

[00:24:25] Speaker 05:
There's no doubt about it.

[00:24:26] Speaker 01:
Let's look at the claims, and that's part of my concern.

[00:24:31] Speaker 01:
Isn't it, if you look at the amended claims... You're looking at 41?

[00:24:36] Speaker 00:
41.

[00:24:37] Speaker 00:
Okay, that's the amended one.

[00:24:41] Speaker 01:
And let's compare that to

[00:24:45] Speaker 01:
original claim one.

[00:24:46] Speaker 01:
In other words, you can see that where they wanted to claim a three-part mechanism, they knew how to claim a three-part mechanism.

[00:24:55] Speaker 01:
And yet claim 41 doesn't expressly do that.

[00:25:01] Speaker 05:
It does not expressly do that, but it uses the words compatible with.

[00:25:06] Speaker 05:
And here again, we have another phrase that compatible with doesn't mean something or does it not.

[00:25:13] Speaker 05:
If it means something, we have to figure out from the specification what it means.

[00:25:17] Speaker 05:
If it means it just has to work, then again, this is a meaningless limitation.

[00:25:22] Speaker 05:
So what is compatible with?

[00:25:24] Speaker 05:
Well, you might think, well, they have to mate together.

[00:25:28] Speaker 05:
But that's not described in the patent.

[00:25:30] Speaker 05:
The only thing that's described in the patent for these hard bearings is that you use a sleeve to accomplish the mating so that they're compatible with each other.

[00:25:40] Speaker 05:
Otherwise, compatible with means

[00:25:43] Speaker 05:
they work.

[00:25:45] Speaker 05:
And that's not a limitation.

[00:25:50] Speaker 05:
I'll let Mr. Lenny continue as the Court has no questions.

[00:26:04] Speaker 04:
Good morning.

[00:26:05] Speaker 04:
Brad Lenny for Defendant Smith and Nephew.

[00:26:07] Speaker 04:
May it please the Court.

[00:26:09] Speaker 04:
As Smith and Neff you just joined on the relative locations claim construction issue, that's what I'm here to focus on today.

[00:26:15] Speaker 04:
And just to follow up on a couple of things.

[00:26:17] Speaker 04:
Speak up a little, would you please, sir?

[00:26:18] Speaker 04:
Sure, your honor.

[00:26:19] Speaker 01:
Smith and Neff, it doesn't use the sleep.

[00:26:22] Speaker 04:
That's correct.

[00:26:23] Speaker 04:
Well, we actually do use the sleep in ours.

[00:26:25] Speaker 04:
So we're not addressing that issue on appeal.

[00:26:30] Speaker 04:
The parties disagree on a fundamental issue with respect to the relative location language.

[00:26:33] Speaker 04:
And that's whether or not this language is ambiguous or not.

[00:26:36] Speaker 04:
And that's the key point here is that

[00:26:38] Speaker 04:
there is no plain and ordinary meaning as to what limitations are required and how this terminology restricts the scope of the claim.

[00:26:47] Speaker 04:
It renders an uncertain claim scope.

[00:26:50] Speaker 04:
And they try to distinguish the world class case by saying without explanation that this disputed language is plain on its face.

[00:26:57] Speaker 04:
And we submit that it's not.

[00:26:59] Speaker 04:
And it's very important to recognize that there are really three requirements juxtaposed, which we agree on means nearby.

[00:27:08] Speaker 04:
and that the other two requirements are linked together.

[00:27:11] Speaker 04:
So there are two requirements.

[00:27:13] Speaker 01:
So I think we get the ambiguous versus non-ambiguous argument, and we need to look at the specification to determine what the point is.

[00:27:25] Speaker 01:
And clearly, the point is maximizing the axial length of the taper, right?

[00:27:31] Speaker 01:
Isn't that one of the key points?

[00:27:33] Speaker 04:
You've mentioned that a few times and that is a point, but again, that is not what the specification says.

[00:27:39] Speaker 04:
If we look at the key part of the specification, and again, I'm in column seven and starting at line 10, it says by placing the recess essentially midway between the upper end and the lower end of the taper.

[00:27:55] Speaker 04:
So you now have two taper segments and essentially midway.

[00:27:58] Speaker 04:
Then you facilitate the engagement in the seating surfaces

[00:28:04] Speaker 04:
and in the NOMDON account or line 14.

[00:28:07] Speaker 04:
And by virtue of the locking being accomplished among segments 116 and 118, and 116 and 118 are the segments on the shell, and having the same and therefore maximize axial length, we can't overlook the fact that the specification doesn't just say that you're maximizing the axial length of the two taper segments.

[00:28:31] Speaker 04:
It says that they have to have

[00:28:33] Speaker 04:
the same and therefore maximize axial length.

[00:28:37] Speaker 04:
The only way that you have the taper segments being the same and therefore maximized axial length is to put the recess essentially midway.

[00:28:48] Speaker 04:
So I think it's disingenuous when in their brief, in their blue brief on page 49, Stryker argues that the patent teaches that the components are best secured by maximizing the length of the taper zone.

[00:29:04] Speaker 04:
It mentions maximize the axial length of the taper zone, but it also expressly teaches that the key is having both of those taper segments have the same and maximized axial length.

[00:29:16] Speaker 04:
They've completely dropped that requirement that they'd be the same.

[00:29:20] Speaker 04:
So if you have to have the same and therefore maximized axial length of the taper segments, you can't have the recess bias towards one edge or the other.

[00:29:32] Speaker 04:
This is the key point here.

[00:29:34] Speaker 04:
By including this claim language that says that the first and second securing elements have to be placed at relative locations.

[00:29:46] Speaker 01:
And your answer for why it's okay for us to limit the claim in this way, even though this discussion isn't a preferred embodiment, is what?

[00:29:57] Speaker 04:
Okay, two points.

[00:29:58] Speaker 04:
First, I don't agree that it's a preferred embodiment.

[00:30:01] Speaker 04:
I think that the

[00:30:02] Speaker 04:
section of the specification referring to the preferred embodiment is a sentence before this and deals with a completely different description of the invention.

[00:30:09] Speaker 04:
The angle of the taper and the fact that it's titanium.

[00:30:12] Speaker 04:
And that's column seven, beginning on line five.

[00:30:15] Speaker 04:
The next sentence that starts, it's completely not talking about the angle or the material.

[00:30:22] Speaker 04:
It now talks about the relative locations of the two locking mechanisms.

[00:30:25] Speaker 04:
And again.

[00:30:26] Speaker 02:
But it's also a factual concession.

[00:30:29] Speaker 02:
Wherever it's located.

[00:30:32] Speaker 02:
in order to maximize it has to be midway.

[00:30:35] Speaker 04:
That's right and that's what it says and all of this language that I'm talking about was added in the CIP.

[00:30:41] Speaker 04:
So the preferred embodiment sentence was in the original application.

[00:30:45] Speaker 04:
If they had wanted to specify that this description

[00:30:49] Speaker 04:
of the relative locations of the two locking mechanisms was a preferred embodiment, they could have added another prefatory introduction by saying, in another preferred embodiment, here's what we're gonna talk about, the preferred embodiment for the two locking mechanisms.

[00:31:03] Speaker 04:
But again, I don't think it's dispositive as to whether or not it's a preferred embodiment.

[00:31:07] Speaker 04:
The point is, this is the only embodiment that's disclosed on how you can maintain the effectiveness

[00:31:17] Speaker 04:
of the two locking mechanisms when one is in the presence of the other.

[00:31:22] Speaker 04:
And I think it's important to understand that those two are linked.

[00:31:26] Speaker 04:
So it's not that you simply have to have two locking mechanisms that are effective, and then you have to have the two locking mechanisms being in the presence of another.

[00:31:36] Speaker 04:
What it's saying is when you're in the situation where you have one locking mechanism in the presence of the other, and I'll explain why that requires

[00:31:46] Speaker 04:
the groove to be within the taper.

[00:31:48] Speaker 04:
When you've got that situation where you're having the groove within the taper, the way to do that, to maintain the effectiveness, is to have it in the middle, because when you have it in the middle, you maximize the length by having the same length taper segments.

[00:32:04] Speaker 04:
You can't have the groove outside the taper, can you?

[00:32:08] Speaker 04:
Yes, in theory you could.

[00:32:09] Speaker 04:
They did not claim that.

[00:32:11] Speaker 04:
By invoking this claim language, they're talking about having the groove

[00:32:15] Speaker 04:
in the presence of the taper.

[00:32:17] Speaker 04:
And the key point here is at the very end of this paragraph.

[00:32:20] Speaker 04:
Column 7 clearly says it has to be within the taper.

[00:32:24] Speaker 04:
That's what it's talking about.

[00:32:25] Speaker 04:
This entire language about how you can locate these two locking mechanisms together and still have them work is addressing the situation where the groove is within the taper.

[00:32:36] Speaker 04:
The key point is the very last sentence.

[00:32:38] Speaker 01:
We know from the allegedly infringing devices that it doesn't have to be within the taper.

[00:32:45] Speaker 04:
Agreed, but again, the perspective is construing the claim language from the perspective of a person of already skill in the art at the time the invention was disclosed.

[00:32:54] Speaker 04:
To the extent others, years later, found out that there were other ways that you could have the two Locke mechanisms configured, that's beside the point.

[00:33:05] Speaker 04:
It's what the inventors described at the time of the inventor, and all we have to go by is the specification.

[00:33:12] Speaker 04:
There's nothing in the specification that indicates that they contemplated as being part of their invention any other configuration other than the configuration where it's essentially midway.

[00:33:22] Speaker 04:
No other disclosure.

[00:33:24] Speaker 01:
I gave you extra time because I gave extra time to your friend on the other side.

[00:33:28] Speaker 01:
But do you want to wrap up?

[00:33:30] Speaker 04:
Just a quick point on claim differentiation.

[00:33:32] Speaker 04:
Again, claim differentiation, we understand that it's a presumption, but it is just a tool.

[00:33:38] Speaker 04:
It's not a rigid rule.

[00:33:39] Speaker 04:
And I would submit that the

[00:33:42] Speaker 04:
a case from the 1967 case from the Court of Federal Claims that's been cited approvingly by this Court in numerous decisions is instructive here.

[00:33:50] Speaker 04:
And again, claim differentiation is a guide, not a rule.

[00:33:54] Speaker 04:
If a claim will bear only one interpretation, similarity will have been tolerated.

[00:33:59] Speaker 04:
And we submit that this language bears one.

[00:34:01] Speaker 01:
I know.

[00:34:01] Speaker 01:
Everybody argues claim differentiation when it suits them and then tells us to disregard it when it doesn't.

[00:34:06] Speaker 01:
But OK.

[00:34:07] Speaker 01:
Thank you.

[00:34:08] Speaker 03:
Thank you, Your Honor.

[00:34:13] Speaker 03:
Your Honor, to pick up where counsel left off, essentially, midway is a preferred embodiment.

[00:34:21] Speaker 03:
And you don't have to rely on me for that.

[00:34:23] Speaker 03:
That is what the defendant said in the district court.

[00:34:27] Speaker 03:
It's in the record at A4614.

[00:34:29] Speaker 03:
We talk about it at page 18 of our reply brief.

[00:34:32] Speaker 03:
This idea that the essentially midway is not simply disclosure of preferred embodiment is a creation of the appeal, and it's incorrect.

[00:34:40] Speaker 01:
Well, I mean, we get to decide.

[00:34:42] Speaker 01:
whether that's the case or not.

[00:34:43] Speaker 01:
I mean, he's making the argument that the preferred embodiment language there, even though it's in the same paragraph, is really just talking about the construction or what the material is that's at issue and what the size of the angle.

[00:35:01] Speaker 01:
Isn't it at least arguable that the rest of this

[00:35:05] Speaker 01:
is not preferred embodiment language?

[00:35:07] Speaker 03:
I mean, they clearly make the argument.

[00:35:09] Speaker 03:
So I guess it's arguable.

[00:35:10] Speaker 03:
But I don't agree with the argument, Your Honor.

[00:35:11] Speaker 03:
And here's why.

[00:35:12] Speaker 03:
That preferred embodiment sentence was the last sentence of the paragraph in the paragraph that's originally written.

[00:35:19] Speaker 03:
The entire remainder was added to it as part of the CIP process.

[00:35:25] Speaker 03:
And so they added it knowing that preferred embodiment was there.

[00:35:28] Speaker 03:
They added it knowing that preferred embodiment was going to be there from there through the end of the paragraph.

[00:35:34] Speaker 03:
Had they wanted it to be something other than the preferred embodiment, they could have made it a new paragraph.

[00:35:39] Speaker 03:
And what was added at the same time as this paragraph was added to the CIP were the dependent claims that talk about essentially Midway.

[00:35:48] Speaker 03:
And that, Your Honor, I think indicates

[00:35:50] Speaker 03:
that essentially Midway was always intended to be a preferred embodiment because it was only added as part of the dependent claims, not as part of the independent claims.

[00:35:59] Speaker 03:
Had this not been a preferred embodiment, it would have been part of the independent claims.

[00:36:03] Speaker 00:
Incorporating the preferred embodiment is the third rail of patent law claim construction.

[00:36:12] Speaker 00:
That's true.

[00:36:13] Speaker 00:
But if you only have one preferred embodiment and you have

[00:36:18] Speaker 00:
ambiguity that can only be understood in light of the description of the preferred embodiment, do you think it's reasonable to make an exception to take that description without necessarily incorporating the preferred embodiment?

[00:36:38] Speaker 03:
Well, I think that preferred embodiment and the use of preferred embodiment in this case is different than what this court has

[00:36:46] Speaker 03:
contemplated as permitting limitations on the claims, additional limitations on the claims.

[00:36:51] Speaker 03:
Because where the only factor, the only indicia that you add a limitation is the preferred embodiment, this court has typically held that you can't read the preferred embodiment in.

[00:37:02] Speaker 03:
What typically happens, and this is true of every case that the defendants have cited here, is that there's more.

[00:37:08] Speaker 03:
There's a statement that the limitation is the present invention.

[00:37:12] Speaker 03:
There is amendment around prior art.

[00:37:15] Speaker 03:
that is based on that preferred embodiment.

[00:37:18] Speaker 03:
There is more.

[00:37:19] Speaker 00:
You even suggested a new paragraph would have done the job.

[00:37:22] Speaker 03:
Well, in terms of trying to determine whether it actually is a preferred embodiment, yes.

[00:37:26] Speaker 03:
I think a new paragraph would have been a much more clear way to do it.

[00:37:30] Speaker 03:
But I rely mainly on two other things, Judge, and that is that treating it as a preferred embodiment is consistent with its presence only in the dependent claims.

[00:37:39] Speaker 03:
And my colleagues agreed with me in the district court below with my assessment.

[00:37:45] Speaker 01:
find the language of the claim to be ambiguous, where else in the specification do we understand how to maintain the structure effectiveness?

[00:37:59] Speaker 03:
Well, in the specification, I think that language in column seven, although it talks about a preferred embodiment, it does have the reference to axial length, which tells you that the axial length is one of the keys to the effectiveness.

[00:38:13] Speaker 01:
That same language talks about

[00:38:16] Speaker 01:
the groove being between two pieces of the taper.

[00:38:22] Speaker 03:
It does, and that was clearly the preferred embodiment.

[00:38:25] Speaker 03:
That's clearly what the inventors in this case were teaching as a preferred embodiment.

[00:38:29] Speaker 01:
So the same language as the preferred embodiment that we can't incorporate, but it's also the language that teaches us what the words mean.

[00:38:36] Speaker 03:
Well, I would say it's different in this respect, Your Honor, is that what it does by making the reference to maximizing the axial length

[00:38:44] Speaker 03:
is it tells the person of skill and the art what it is about the placement of the groove that's important along the taper.

[00:38:51] Speaker 03:
It provides the rationale for this inventor's selection of the particular preferred embodiment.

[00:38:57] Speaker 03:
So it's giving a factor that is used in determining the axial length.

[00:39:03] Speaker 01:
Okay, you're out of time.

[00:39:04] Speaker 03:
Thank you very much, Your Honor.

[00:39:10] Speaker 01:
All right, the case will be submitted.