[00:00:24] Speaker 03: Our final case this morning is number 15, 1046, JS Products, Inc. [00:00:29] Speaker 03: versus Cabo Tool Company, Mr. Davis. [00:00:33] Speaker 00: May I please the court? [00:00:35] Speaker 00: My name is Harold Davis, and I represent the appellant, Cabo Tool Company, and Mr. Shea. [00:00:40] Speaker 00: This case presents a relatively straightforward question of how much difference does difference mean? [00:00:46] Speaker 03: Well, it seems to me what you're trying to do is to have one claim construction for infringement and another claim construction for anticipation. [00:00:55] Speaker 03: in doing that by saying that the claim language has a plain meaning which can be determined by the jury because is it not the case that the same things that you are accusing of infringement existed in the prior art? [00:01:14] Speaker 00: No, Your Honor. [00:01:15] Speaker 00: In fact, it's actually JFP that's arguing for differing constructions of the word different depending on the context whether infringement or infidelity is accused here. [00:01:25] Speaker 02: Let's slow down there for a second. [00:01:28] Speaker 02: In your Markman briefing, when it came down to the word different, I believe at A1013 you promoted the idea that plain meaning, the jury will let the jury decide what the word different means based on ordinary understandings of the word different. [00:01:49] Speaker 02: But now today you want, for invalidity purposes obviously, you're telling us that [00:01:55] Speaker 02: different has to be understood with respect to one of our new skill in the art and that it had some kind of technical understanding in the wrench art that it would take into account that I guess what you would call non-negligible differences based on manufacturing imperfections would not count for different. [00:02:19] Speaker 02: Do you understand why from my vantage point it sounds like your conception of the word different changed from [00:02:26] Speaker 02: Markman to today. [00:02:28] Speaker 00: I understand your question, your honor. [00:02:30] Speaker 00: I don't agree with the premise that it changed over time. [00:02:34] Speaker 02: Okay, which part am I wrong about? [00:02:36] Speaker 02: Am I wrong that at A1013 you wanted the district judge to understand the word different to not need any construction and let the jury decide based on plain ordinary meaning? [00:02:51] Speaker 02: without any context to how one of ordinary skill in the art and the wrench art would understand this. [00:02:57] Speaker 00: That is actually incorrect. [00:02:59] Speaker 00: That is incorrect? [00:03:00] Speaker 00: That is incorrect, Your Honor. [00:03:01] Speaker 00: Okay. [00:03:02] Speaker 00: And the reason why it's incorrect is because our paper actually said as a jury and a person of ordinary skill in the art would understand the term. [00:03:09] Speaker 00: At the Markman hearing, and this can be found at multiple locations, I argued, and this is at A1355, [00:03:16] Speaker 02: I'm just looking at A1013. [00:03:18] Speaker 02: This is a straightforward word and so commonly understood in the English language that it reveals how unnecessary it is for the court to construe. [00:03:29] Speaker 02: So no construction is necessary for this term. [00:03:33] Speaker 00: That's correct, John. [00:03:34] Speaker 00: In fact, both of the experts agreed on the construction. [00:03:36] Speaker 02: So, I mean, there's no suggestion in here that [00:03:40] Speaker 02: about anything with respect to the context of how one ordinary skill in the art and the manufacturing of wrenches would understand it. [00:03:47] Speaker 02: It's all about plain meaning. [00:03:50] Speaker 00: It is plain meaning, as one of ordinary skill in the art would understand it, and that's precisely what I argued at the Markman hearing. [00:03:56] Speaker 00: If you go to A1355, A1384-1385, and A1392-1393, the argument at the Markman hearing [00:04:07] Speaker 00: what the person with ordinary skill in the art would understand this term in the context of manufacturing tolerances. [00:04:12] Speaker 02: Did you present any evidence of that? [00:04:14] Speaker 03: I did, Your Honor. [00:04:15] Speaker 03: What does that mean, the individual tolerances of the individual manufacturer? [00:04:21] Speaker 00: No, there's standard, I mean, these are hand tools. [00:04:24] Speaker 00: Hand tools have standards that are related to manufacturing tolerances. [00:04:28] Speaker 00: For example, if you take a wrench, the opening of the wrench, and this was cited by- The same manufacturing tolerances for everybody. [00:04:35] Speaker 00: Manufacturing tolerance is different by product. [00:04:38] Speaker 00: So, for example, if you have a... Yeah, but it doesn't differ for manufacturers. [00:04:41] Speaker 00: Generally, manufacturing tolerances are the same. [00:04:45] Speaker 03: But generally, I mean, but what's your argument? [00:04:47] Speaker 03: Is it a general standard applicable to all manufacturers, or does it depend on the tolerances specified by the particular manufacturer? [00:04:55] Speaker 00: It's actually specified generally by customers, not by manufacturers. [00:04:59] Speaker 03: So a customer for a particular... Is it customer specific then? [00:05:02] Speaker 03: No, not generally for hand tools. [00:05:04] Speaker 03: We keep using the word general. [00:05:06] Speaker 03: That's right. [00:05:06] Speaker 03: What I'm trying to understand is, are you saying that the manufacturing tolerance is a general standard applicable to all products of the same type? [00:05:18] Speaker 03: And without regard to which customer it is or which manufacturer it is? [00:05:24] Speaker 00: in the context of hand tools. [00:05:25] Speaker 03: Wait, answer my question. [00:05:28] Speaker 00: I'm trying to answer in the context of hand tools. [00:05:31] Speaker 00: The answer would be yes, that there would be an understanding of tolerance, depending on what tolerance you're talking about. [00:05:39] Speaker 00: If we're talking about tilt angle differences, which is an issue here, then yes, there would be an understanding by person of ordinary skill in the art. [00:05:46] Speaker 03: Okay, so what evidence did you present as to what the tolerances are? [00:05:51] Speaker 00: Your Honor, I presented a number of different evidence, a particular evidence to that. [00:05:55] Speaker 00: The first is we showed the opinions of both of the experts in this case, both Mr. Buckley and Mr. Olson, established that a person of ordinary skill in the art, someone that had a... Are we back to the Markman hearing or are we sometime later? [00:06:13] Speaker 02: This is the Markman hearing. [00:06:14] Speaker 02: Okay. [00:06:14] Speaker 01: Now prior to the Markman hearing, you didn't present any evidence to the argument that you're about to make. [00:06:21] Speaker 01: You were relying on the declarations of other actions. [00:06:25] Speaker 01: You did not present any evidence, and if you did, where in the record is it? [00:06:29] Speaker 00: Prior to the Markman hearing. [00:06:31] Speaker 00: Prior to the Markman hearing, we did provide intrinsic evidence. [00:06:33] Speaker 03: Let's find out what the evidence is first, and then we'll find out when you presented it. [00:06:37] Speaker 03: What is the evidence that you presented as to what the tolerances are? [00:06:43] Speaker 00: Sure. [00:06:44] Speaker 00: Your Honor, we weren't arguing about specific tolerances because the patents are broader [00:06:48] Speaker 00: They cover different tolerances. [00:06:49] Speaker 00: If you have a wrench of one size, one that's a half-inch wrench versus a wrench of... Did you present any evidence as to what the tolerances were? [00:06:57] Speaker 00: We presented that evidence at the claim construction hearing, Your Honor. [00:07:00] Speaker 00: What was the evidence about what the tolerances were? [00:07:03] Speaker 00: Your Honor, the evidence was that it was, at least from our expert testimony, that it varied by above 1, 1 hundredth of a millimeter for jaw thickness, and that it was zero degrees difference [00:07:18] Speaker 00: for tilt angle. [00:07:20] Speaker 00: And that was testimony by our expert. [00:07:22] Speaker 03: Any difference? [00:07:22] Speaker 03: His testimony was that any difference? [00:07:25] Speaker 00: No. [00:07:27] Speaker 03: Would come within? [00:07:29] Speaker 03: No. [00:07:30] Speaker 00: In fact, he actually found that certain products were not infringing because they were below a thousandth of a degree in tilt angle. [00:07:41] Speaker 03: He's not saying that the issue here is that they actually... So is the standard a thousandth of a... I thought that tilt angle was zero [00:07:49] Speaker 00: That's what is specified, but one of ordinary skill in the art, when measuring tilt angle difference, would go to the thousandth of a degree. [00:07:56] Speaker 00: That's the testimony by Mr. Buckley. [00:07:58] Speaker 03: Well, there was plenty of evidence that in the prior art, there were tilt angles that differed by more than a thousandth of a degree, right? [00:08:07] Speaker 02: For and Schler, they didn't have absolute perfection. [00:08:10] Speaker 02: Everybody agrees with that. [00:08:13] Speaker 00: You're correct, Your Honor, that there is no, if you look at a subatomic level, there may or may not be. [00:08:19] Speaker 00: We don't know. [00:08:20] Speaker 02: One thousandth of a degree is getting pretty close to atomic level. [00:08:26] Speaker 02: I mean, we're talking micron level in terms of difference in thickness between one jaw and another. [00:08:32] Speaker 02: I'm pretty sure I can't see a micron. [00:08:35] Speaker 00: And, Your Honor, I respectfully disagree. [00:08:37] Speaker 00: One thousandth of a degree is not a micron degree. [00:08:39] Speaker 00: It's something that can be viewed with the naked eye. [00:08:41] Speaker 02: But what was it, like, one one hundredth of a millimeter? [00:08:44] Speaker 02: I guess maybe that's ten microns? [00:08:47] Speaker 00: That's right. [00:08:47] Speaker 00: It is something that can be viewed without a microscope. [00:08:50] Speaker 02: I can see ten microns? [00:08:53] Speaker 00: According to one one hundredth of a millimeter, our experts didn't even use a microscope. [00:08:57] Speaker 00: They used imaging that they measured with a laser imaging, and so it wasn't [00:09:02] Speaker 00: that you have to look at microscopes. [00:09:04] Speaker 00: In fact, when they showed him a wrench, Mr. Buckley, at deposition, he was able to identify it just by sight, which wrenches varied in degree differences. [00:09:13] Speaker 00: To go back to your question about Schlier. [00:09:15] Speaker 03: There are plenty of prior art wrenches in the record here that varied much, much more than that on the tilt angle. [00:09:23] Speaker 00: Your Honor, only two wrenches are at issue on our appeal. [00:09:27] Speaker 00: These are the two patents. [00:09:29] Speaker 00: That's all that this court is deciding. [00:09:31] Speaker 00: Those two patents do not specify tilt angle differences, both recognized by the examiner and by the... I don't think you're answering my question. [00:09:39] Speaker 03: There was testimony by the experts about prior art wrenches that had tilt angles that varied by more than a thousandth of a degree, right? [00:09:49] Speaker 00: Your Honor, JSP presented some evidence that we can test that the work facility... We didn't present any evidence to the contrary. [00:09:56] Speaker 03: You didn't measure any prior art wrenches, did you? [00:09:59] Speaker 03: to show that they didn't vary by more than a thousandth of a degree? [00:10:05] Speaker 00: Right, Your Honor. [00:10:06] Speaker 00: We challenged their testing methodology and also showed that it wasn't due to a manufacturing issue that it could have been due to wear and tear. [00:10:13] Speaker 00: We don't know the chain of custody of these wrenches that they identified. [00:10:17] Speaker 00: And these wrenches, some of them that they showed were 60 years old. [00:10:20] Speaker 00: They showed significant scratches and use and tearing and some of it could have been bent. [00:10:25] Speaker 00: They don't know where these wrenches even came from. [00:10:28] Speaker 00: had been sitting around in some person's garage, had been used for decades on car repair, and so we don't know whether that was accidentally created, and that's where, you know, the issue here is anticipation, not some accidental... Do you seriously contend that prior art wrenches [00:10:44] Speaker 03: always were varied their tilt angle by less than a thousandth of a degree? [00:10:49] Speaker 00: Your honor, their own testimony found that a wrench from 80 years ago had a zero degree tilt angle. [00:10:54] Speaker 03: You don't like to answer the question. [00:10:56] Speaker 03: Answer my question, not the question you want to answer. [00:10:59] Speaker 03: Do you seriously contend that prior art wrenches were all within the tolerance of a thousandth of a degree? [00:11:06] Speaker 00: I do not contend that all wrenches were within a thousandth of a degree. [00:11:13] Speaker 00: that they have identified. [00:11:16] Speaker 00: I'm saying that they have not shown any wrenches in this case, and there's only two patents at issue on appeal here, that varied by more than a thousandth of a degree. [00:11:28] Speaker 00: They haven't. [00:11:29] Speaker 00: The patents that they showed were within manufacturing tolerances. [00:11:33] Speaker 00: That's their testimony. [00:11:34] Speaker 00: That's our testimony. [00:11:35] Speaker 00: Anything that's below manufacturing tolerances wouldn't infringe, also wouldn't be valid. [00:11:41] Speaker 02: It wouldn't be an invalidated reference. [00:11:43] Speaker 02: infringement theory that any wrench that has a variance in tilt angle between the two jaws of more than one one-thousandth of a degree infringes? [00:11:55] Speaker 00: It meets that limitation of the claim. [00:11:57] Speaker 00: It has to meet the other limitation of the claim. [00:11:58] Speaker 00: Yes. [00:11:59] Speaker 02: Assuming... What is the purpose of changing the difference in tilt angle between the two jaws? [00:12:06] Speaker 00: There are two purposes that were testified in the record. [00:12:08] Speaker 02: The first is... What benefit would you get if the variance in the tilt angle was a [00:12:13] Speaker 02: to one-thousandth of a degree. [00:12:15] Speaker 00: Right, and our expert testified that the benefit would be increased comfort and also increased torque power. [00:12:20] Speaker 00: So you'd be able to, on an uneven surface... To one-thousandth of a degree is going to get you those bennies? [00:12:27] Speaker 00: Along with smaller jawhead thickness and the combination with the tilt head differences, the tilting of the tilted angles of both of the heads, yes, you would get benefits. [00:12:40] Speaker 00: And that's testimony from our expert. [00:12:43] Speaker 00: Now there's a dispute, there's a factual dispute. [00:12:46] Speaker 00: Well, our expert's testimony would be found in the rebuttal report, found at 1605. [00:12:54] Speaker 00: I'm sorry, excuse me, I quoted the wrong one. [00:13:08] Speaker 00: It would be, [00:13:14] Speaker 00: Mr. Buckley's rebuttal report. [00:13:20] Speaker 00: And I was just incorrectly citing you to Mr. Olson's rebuttal report to be at... Your Honor, I apologize. [00:13:40] Speaker 00: I find it, but I will find it. [00:13:41] Speaker 00: It's in the rebuttal report. [00:13:43] Speaker 00: where he identifies the benefits of the tilt angle differences. [00:13:46] Speaker 00: Also, we presented some inventor data from a notebook from our inventor that indicated that these degrees and differences showing some mathematical formulas, you know, and admittedly, Your Honor, it does show a degree of difference. [00:14:03] Speaker 00: It doesn't go down to your hypothetical, which is 0.21 thousandth of a degree, but does show mathematically if you plugged in [00:14:11] Speaker 00: to one-thousandth of a degree, you would show the torque difference using a mathematical formula that's contained in the inventor's notebook. [00:14:17] Speaker 00: Now, the example in the inventor's notebook is one degree, and I can see that that's a substantial difference from, you know, to one-thousandth of a degree, but still there would be benefit in torque and comfort level given the entire design and entirety of the wrench. [00:14:32] Speaker 03: Okay, Mr. Davis, you need a rebuttal time. [00:14:35] Speaker 03: You want to save the rest of it here? [00:14:36] Speaker 00: I'll save the rest for rebuttal. [00:14:37] Speaker 00: Thank you, Your Honor. [00:14:50] Speaker 04: The district court's decision on invalidity based on anticipation should be affirmed because the record was undisputed factually that the accused products were practicing the prior art. [00:15:03] Speaker 04: They were using the well-known hand polishing technique that introduced variations in the angle and thicknesses of the jaws that all witnesses, experts, fact witnesses alike agreed would result in variations exactly of [00:15:20] Speaker 04: the type that were found in the accused product. [00:15:23] Speaker 03: Where does their witness say that the prior or wrenches varied according to more than a thousandth of a degree? [00:15:32] Speaker 03: I know there was some testing by your expert. [00:15:35] Speaker 03: What did their experts say about this that supports you? [00:15:39] Speaker 04: Well, their expert, I don't know that anything he said supports him on this point, Your Honor. [00:15:42] Speaker 04: What their expert said was that all wrenches would be using this hand polishing technique and that [00:15:48] Speaker 04: naturally that would result in several thousandths of an inch in variation. [00:15:55] Speaker 04: What I'm asking is where do I find that? [00:15:58] Speaker 04: Where would you find that your honor? [00:16:00] Speaker 04: You would find that in Mr. Buckley's testimony that we submitted to the court and if you'd like a record site for that I will... Buckley is their expert? [00:16:12] Speaker 04: Mr. Buckley was the [00:16:15] Speaker 04: patent owner's expert and that was submitted, it was identified in the statement of uncontroverted fact along with the fact witness testimony that we presented to the court that the natural result of... But I just want to see where Mr. Buckley said that. [00:16:37] Speaker 04: Where do I find that? [00:16:44] Speaker 04: In a moment, Your Honor, let me see if I could identify the actual portion of the transcript here that we have of the record on that where he testified that all of the trenches would result in having these inherent differences [00:17:16] Speaker 04: We cited in our brief, Your Honor, at 1700 in the appendix that all wrenches would have differences in tilt angle if measured precisely enough. [00:17:39] Speaker 04: And likewise at 1704 and 1705, [00:17:44] Speaker 04: He gave some specifics about how many thousandths of an inch of material would be removed from the head of the wrench, and I'm pointing to the sites at page 55 of our brief. [00:18:01] Speaker 01: Didn't the addition of the word different render the pen allowable over the prior art? [00:18:10] Speaker 04: Well, there were a number of changes to the scope of the claim, Your Honor. [00:18:13] Speaker 01: Initially, as claimed, the claims were directed to... That was significant, wasn't it, in order to get over the prior work? [00:18:23] Speaker 04: Yes, Your Honor. [00:18:24] Speaker 04: I mean, it was that amendment by removing the reference to common planes and adding in this language that works. [00:18:29] Speaker 01: So, in the industry, there's no wrenches that ever measure the same, because you can drop one, put one in your pocket, hand polish another. [00:18:38] Speaker 01: You always have [00:18:40] Speaker 01: these differences. [00:18:42] Speaker 01: Wouldn't a placida understand differences or different to be something other than just manufacturing tolerances? [00:18:51] Speaker 04: Your Honor, that's where the person with skill in the art would start in their analysis in reviewing the patent. [00:18:58] Speaker 04: And what the problem arises immediately is that because the disclosure in the patent is so thin, we have a column and a half of disclosure, not a single dimension, not a single reference [00:19:10] Speaker 04: to a manufacturing tolerance. [00:19:13] Speaker 04: And in fact, there is no standard manufacturing tolerance associated with the variations resulting from the hand polishing. [00:19:20] Speaker 03: I would be pretty happy with their claim construction, because they've come here today and said that anything that varies by more than a thousandth of an inch infringes. [00:19:33] Speaker 03: So if it's something that varies by more than a thousandth of an inch infringes, that also must be the test for invalidity. [00:19:40] Speaker 03: And if the prior art varied by more than a thousandth of an inch, there's anticipation. [00:19:46] Speaker 03: Why aren't you happy with their claim construction? [00:19:48] Speaker 04: I agree, Your Honor. [00:19:49] Speaker 04: And one of the points I wanted to make today was that their dispute about the claim construction really won't change the outcome here because their own expert relied on a zero degree tolerance in the difference in tilt angle as his foundation for his infringement opinion. [00:20:09] Speaker 04: even if manufacturing tolerances were somehow taken into account in the claim construction and we've yet to hear a really firm articulation of how that should be done because at the district court the argument was any lay person would understand the meaning of different and we've never actually heard exactly where the court erred, what the court should have done differently. [00:20:36] Speaker 04: They're saying the court erred by [00:20:38] Speaker 04: by construing the claim and that the court should not have construed the claim at all, but all that aside, correct your honor. [00:20:43] Speaker 04: If there is a modification to the claim construction as the patent owner must read the claim to find infringement, that same standard when applied on the anticipation side will result in anticipation as a matter of law because it again is undisputed. [00:21:06] Speaker 04: that the accused products had the same variations resulting from the same hand polishing process as was inherent in all the prior art. [00:21:13] Speaker 01: How could that be if in order to overcome the prior art they already had to add the word different and that was allowed. [00:21:20] Speaker 01: So there's already, we had that determination that different as used in the claim overcomes the prior art. [00:21:28] Speaker 04: Well, Your Honor, they were not just adding the limitation difference to overcome the prior [00:21:35] Speaker 04: they removed another limitation about a reference to a common claim. [00:21:39] Speaker 04: And they really changed the nature of the feature that they were trying to claim rather than just simply narrow an existing claim feature. [00:21:50] Speaker 02: But wasn't it different that what the examiner relied on? [00:21:53] Speaker 02: Wasn't it in the notice of allowance some statement by the examiner along the lines of this notion of differing, changing the slope of the two jaws? [00:22:04] Speaker 02: That's not something that's taught or suggested in the prior art. [00:22:09] Speaker 02: Is that the key moment? [00:22:10] Speaker 04: Well, Your Honor, in what the examiner, there was an examiner's amendment that resulted in this additional language. [00:22:17] Speaker 04: What the examiner was trying to help the applicant do, I believe, from the file history was to focus the claim on the idea that each jaw is at a different angle from the other jaw. [00:22:30] Speaker 04: And that was something that wasn't very apparent, wasn't very clear from the claims as originally written referring to a common claim. [00:22:39] Speaker 04: But at no point in the file history is there any indication that there is this standard hand polishing manufacturing technique that's been widely used for decades that results in these thousandths of an inch variations. [00:22:57] Speaker 04: And no indication in the file history that the patent [00:23:01] Speaker 04: applicant is now going to take that claim as allowed and read it so broadly as to cover accused products where they're... I would describe one potential problem with your position. [00:23:15] Speaker 02: If I were to read the prosecution history for this patent, I would feel like I could go buy a wrench from Mr. Foer or Mr. Schler and I would be fine. [00:23:30] Speaker 02: It turns out that no, as a technical matter, based on this claim construction, that wrench that I purchased would be infringing these claims. [00:23:43] Speaker 02: And it seems like one could argue that whatever For and Schler disclose and whatever wrench they sell based on that disclosure has been disclaimed from the scope of the claim. [00:23:59] Speaker 02: Well, Your Honor, that's fundamentally... Therefore, that somehow informs the validity analysis here in that whatever these claims are, they can't necessarily be invalidated by these prior art references. [00:24:14] Speaker 04: What I would say is that if we look at this court's Smith-Kline decision, the court dealt with a very similar issue of as a policy matter, shouldn't we try to [00:24:27] Speaker 04: construe the claim in a way so that we do not ensnare the prior art. [00:24:33] Speaker 03: And that's the way the district court in the Smith-Kline case... Well, this is an argument for saying, based on the prosecution history, that different must mean differences that exceed what exists in the prior art, which suggests that their claim construction, that is the 1000th of a degree, [00:24:52] Speaker 03: is not the correct claim construction. [00:24:55] Speaker 03: The claim construction would have to be things that would eliminate the prior art and I assume would eliminate infringement of your client's product as well. [00:25:04] Speaker 04: That's correct, Your Honor, because in the summary judgment context, I think the district court properly drew the infringement inference in favor of the patent owner and applying the claims as broadly as [00:25:17] Speaker 04: the plaintiff did in order to find infringement by the accused wrenches, which were essentially the Schlerer and Foer wrenches. [00:25:25] Speaker 04: The court came to the conclusion that there was this anticipation, and I think that's the same pattern that happened in that Smith-Kline case where this court said [00:25:35] Speaker 04: the claim construction, you know, if you've claimed it broadly, you have to live with that broad claim, and the result is inherent anticipation. [00:25:43] Speaker 02: I guess the problem that I see for the other side is that it's not clear from the prosecution history that anybody, either the examiner or the applicant, had in mind the possibility that there would be some naturally occurring differences in the wrench thicknesses in the prior art, and then that issue didn't really [00:26:06] Speaker 02: come up in time during the markman process. [00:26:09] Speaker 02: Although the opposing counsel says that they brought up the notion of manufacturing tolerances and how one ordinary skill in the arts in reading these kinds of claims and understanding this industry would know that you're going to have a little bit of play in the joints in terms of relative sameness or the difference would be a non-negligible difference. [00:26:33] Speaker 04: Your Honor's raised two points. [00:26:34] Speaker 04: Let me, if I could take them in order. [00:26:36] Speaker 04: First, as to the prosecution history, yes, the prior art and the patent and suit are not directed to the manufacturing process. [00:26:47] Speaker 04: And I don't see how the examiner could have been contemplating that differences in angle and thickness, which are on the order of the lines of ink [00:26:59] Speaker 04: on the drawings and the patents, it's not smaller. [00:27:03] Speaker 04: Your Honor is correct. [00:27:03] Speaker 04: We're talking about 10 microns and thousands of degrees. [00:27:07] Speaker 04: So I don't think the file history really informed the issue. [00:27:11] Speaker 04: The examiner really made this conscious decision about the issue with respect to manufacturing colleges. [00:27:19] Speaker 04: In the claim construction process below, the patent owner was consistent in saying, don't rely on extrinsic evidence. [00:27:27] Speaker 04: We went through the patent local legal process and in two rounds of briefing and in a joint claim construction statement, they rely solely on intrinsic evidence and they say any lay person would be able to appreciate this meaning of different. [00:27:44] Speaker 04: When we get to the Markman hearing, at no point is there an effort to make of record the expert testimony. [00:27:52] Speaker 04: The expert reports were in connection with infringement and invalidity. [00:27:56] Speaker 01: They were not submitted to the district court for... Were the arguments we're hearing today made during the claim construction hearing? [00:28:04] Speaker 04: Mr. Davis did mention at the transcript this issue of he thought that the experts said that tolerances should be taken into account. [00:28:15] Speaker 04: He said that my expert said that he did not submit my expert's report to the district court. [00:28:22] Speaker 04: The argument that I was making was along the lines of Judge Seick's comment. [00:28:28] Speaker 04: We want the same construction for both infringement and validity, and we are very concerned that what the plaintiff, the patent owner, rather, was trying to do was to leave the patent term very wide open. [00:28:45] Speaker 04: and allow them to use the classic nose of wax situation and argue one way for infringement and then in front of the jury to then argue that in fact different meant something else and therefore they were able to distinguish the prior art. [00:29:01] Speaker 04: That was exactly the issue [00:29:04] Speaker 04: that got framed. [00:29:07] Speaker 02: So your point is when it came to make ruling and issuing a markman order there wasn't any extrinsic evidence in front of the judge at the time to understand and evaluate to what degree should he understand the term different with respect to manufacturing tolerance? [00:29:24] Speaker 04: There was never a submission, correct your honor, there was never a submission by either party [00:29:31] Speaker 04: saying these experts have given opinions this is the extrinsic evidence that should be considered because that claim construction briefing and exchange had all happened quite some time ago. [00:29:43] Speaker 04: No effort to ask to supplement the record or to modify the position that either party had taken in connection with the claim construction process. [00:29:55] Speaker 04: We asked for not identical from the very outset and the [00:30:01] Speaker 04: patent owner asked for no construction from the very outset. [00:30:05] Speaker 04: And so given those choices, we think the district court made the correct choice. [00:30:11] Speaker 04: And again, we don't think that ultimately the expert opinions would have made a difference. [00:30:16] Speaker 04: The reason being that when the experts looked for the tolerance that would have governed, they both came away concluding that the patent was silent on the tolerances. [00:30:31] Speaker 04: and that there were no standards applying to the hand polishing process. [00:30:37] Speaker 04: This was not something that was based on a particular industry standard. [00:30:44] Speaker 04: And let me just point to the record, there was testimony by two different witnesses to that point that there is no general industry standard on this hand polishing [00:31:01] Speaker 04: process because that, I think, really ultimately resolved the issue. [00:31:07] Speaker 04: Mr. Olson, our expert at A1668, said it's just a visual inspection. [00:31:12] Speaker 04: After you hand polish it, you just take a look at it visually. [00:31:14] Speaker 04: There's no specific number of microns that you're measuring. [00:31:19] Speaker 04: Likewise, Mr. Moore, our vice president of engineering at 1686 to 87, said the same thing. [00:31:27] Speaker 04: Said this is basically, it's literally [00:31:29] Speaker 04: an operator holding the wrench, pressing it up against a spinning abrasive device, and there are naturally differences depending on which operator's doing it, how much pressure they apply. [00:31:42] Speaker 04: Again, no formal standard tolerance that applies to that. [00:31:48] Speaker 04: I think we're about out of time. [00:31:51] Speaker 03: Thank you. [00:31:52] Speaker 03: Thank you, Mr. Gunn. [00:31:53] Speaker 03: Mr. Davis? [00:32:04] Speaker 00: Your Honor, the problem with not identical is it means differences below a manufacturing tolerance to the subatomic level. [00:32:11] Speaker 03: We have claimed consistently that... So what's your contention is that it should be a thousandth of an inch? [00:32:16] Speaker 00: No, it's within the manufacturing tolerance. [00:32:18] Speaker 00: And it's not a thousandth of an inch. [00:32:20] Speaker 03: I misspoke. [00:32:21] Speaker 03: A thousandth of a degree. [00:32:22] Speaker 00: Yeah, a degree. [00:32:23] Speaker 03: And degrees are not... You said that every wrench infringes if it varies by more than a thousandth of a degree. [00:32:28] Speaker 03: So that has to be the claim construction, right? [00:32:31] Speaker 00: No, the claim construction because it could vary between [00:32:34] Speaker 00: wrenches for different purposes. [00:32:37] Speaker 00: So if you have a wrench that's used for medical issues versus one that's used on race cars, those wrenches have different standards, Your Honor. [00:32:46] Speaker 00: I mean, that's the reason why the claim didn't limit and didn't say manufacturing tolerance to one one-thousandth of a degree. [00:32:51] Speaker 00: This Court's long said you don't have to have mathematical precision in defining these terms. [00:32:55] Speaker 00: And to Judge Chen's point where he says, well, naturally occurring differences were not contemplated, that's not [00:33:02] Speaker 00: true if you look at the intrinsic record, the four reference, which they assert as inherently infringing, uses the term approximately, approximately 45 degrees. [00:33:13] Speaker 00: Those are, that term approximately, near or at, means less than that manufacturing tolerance. [00:33:18] Speaker 00: That reference was considered by the examiner and rejected that particular reference as not being differing tilt angles because it was within or below manufacturing tolerances. [00:33:30] Speaker 00: Their construction reduces this to absurd. [00:33:32] Speaker 03: I think we're out of time. [00:33:34] Speaker 03: Okay. [00:33:34] Speaker 03: Thank you. [00:33:35] Speaker 03: Thank both councils.