[00:00:54] Speaker 03:
Our next case is number 14, 1085, Nycotechnologies Inc.

[00:00:59] Speaker 03:
versus Energizer Holdings Inc.

[00:01:02] Speaker 03:
Mr. Hassan, is that how you pronounce it?

[00:01:04] Speaker 03:
Yes, Your Honor.

[00:01:14] Speaker 04:
May I please the court?

[00:01:16] Speaker 04:
Art Hassan, Christie Parker and Hill for plaintiff, appellant, Nycotechnologies Inc.

[00:01:26] Speaker 04:
The lower court's grant of summary judgment should be reversed for at least the following three reasons, Your Honors, that we believe are mandated by this court's precedent.

[00:01:35] Speaker 03:
Could I ask you a preliminary question?

[00:01:37] Speaker 03:
Sure.

[00:01:37] Speaker 03:
The parties spent a lot of time talking about this claim construction and whether claim one covers the adapter embodiment and the non-adapter embodiment.

[00:01:55] Speaker 03:
Does that really make a difference?

[00:01:57] Speaker 03:
I mean, isn't it the case that if one of the embodiments within the claim isn't supported by the provisional application that the claim falls as is the case in other areas where, for example, if part of the claim scope is obvious or anticipated, it's invalid?

[00:02:21] Speaker 03:
In other words, I'm asking why are we

[00:02:23] Speaker 03:
spending so much time worrying about the claim construction when perhaps it doesn't make any difference since the whole of the claim one, for example, would have to be supported by the provisional.

[00:02:40] Speaker 04:
That is a good point, Your Honor.

[00:02:41] Speaker 04:
You know, when we feel that the whole of claim one is supported by the provisional based on the ordinary mean.

[00:02:46] Speaker 03:
Well, I understand that, but you spent a lot of time arguing

[00:02:50] Speaker 03:
about whether the adapter embodiment is covered by claim one or not.

[00:02:56] Speaker 03:
It doesn't seem to me that that necessarily makes any difference here.

[00:03:03] Speaker 03:
We wouldn't necessarily disagree with that.

[00:03:06] Speaker 01:
You agree that the non-adapter embodiment is covered by claim one.

[00:03:10] Speaker 05:
Yes.

[00:03:11] Speaker 01:
The question is whether that is supported by the provisional application, whether or not

[00:03:18] Speaker 01:
the claim as ultimately issued also covers the adapter.

[00:03:23] Speaker 04:
That's correct, Your Honor.

[00:03:25] Speaker 04:
That is what we are stating here in argument.

[00:03:29] Speaker 04:
And if you look at Figure 3, for example, of the provisional application, we don't think that there can be in doubt that Claim 1 and Claim 13 would read on Figure 3 of the provisional.

[00:03:42] Speaker 03:
Well, isn't it possible that Claim 3 of the provisional is just showing

[00:03:47] Speaker 03:
how the adapter fits into the base and that in operation the controller would be attached to the adapter when it's attached to the base?

[00:03:59] Speaker 04:
Well, it doesn't have to be.

[00:04:00] Speaker 04:
There's nothing in the spec of the provisional that says that the adapter must remain with the controller.

[00:04:08] Speaker 04:
As a matter of fact, it says that the adapter can remain with the controller.

[00:04:13] Speaker 03:
But apart from figure three, there's nothing in there to suggest that the adapter is attached to the base before the controller is attached to the adapter, right?

[00:04:28] Speaker 04:
Well, there is a statement in the provisional that says that the adapter, not the adapter plus the controller, but just the adapter, maybe snap it, for example, onto the base.

[00:04:44] Speaker 01:
It doesn't say whether what's contemplated there is snapping the adapter into the base alone or with the controller connected to it, since the controller is not actually making direct contact with the base at all.

[00:05:02] Speaker 04:
It doesn't say that, but I believe the language of the provisional in that... A81?

[00:05:08] Speaker 04:
Yes.

[00:05:11] Speaker 04:
A81.

[00:05:12] Speaker 04:
says that in one embodiment, the adapter is placed into the docking bay by a push fit, press fit, or snap fit, rather than simply a drop fit.

[00:05:22] Speaker 01:
Let me just step back and ask you this.

[00:05:26] Speaker 01:
The provisional application discusses the purpose of this as being to reduce wear and tear on the plug-in socket by repeated connecting and disconnecting.

[00:05:44] Speaker 01:
proposes a solution to that problem by having an adapter which, perhaps not always, but in general, is going to stay with the controller so that you don't have very many disconnecting connectors.

[00:06:01] Speaker 01:
Maybe sometimes, but not very many.

[00:06:04] Speaker 01:
And the problem of wear and tear is not a either-or, on-off, all-or-nothing problem.

[00:06:10] Speaker 01:
It's a problem of how often you do it.

[00:06:14] Speaker 01:
How is it that a non-adapter embodiment of the claim as issues fits with that, and I take it by that, I mean the only real solution to the problem that the provisional application addresses.

[00:06:35] Speaker 01:
Something else would be needed to address the problem of wear and tear if the plug is fixed to the base and constantly has to

[00:06:44] Speaker 01:
go on and off.

[00:06:45] Speaker 04:
Yes, Your Honor, those are the docking bays.

[00:06:47] Speaker 01:
The docking bays would be opposing sidewalls that guide the... But does anything in the provisional application, and I didn't see it, so, say, or show how the docking bays, the kind of turnstiles, the total walls, are supposed to be so designed as to

[00:07:13] Speaker 01:
substantially eliminate the wear and tear problem that comes from the connecting disconnecting process.

[00:07:21] Speaker 04:
The provisional says that they're dimensioned.

[00:07:23] Speaker 01:
It just says you can fit.

[00:07:24] Speaker 01:
It just says the controller fits between them.

[00:07:28] Speaker 01:
I don't think that that sentence says anything about these walls will help address the wear and tear problem that results from repeated connecting and disconnecting.

[00:07:43] Speaker 01:
What are you looking at?

[00:07:45] Speaker 04:
Is A78 that the docking bays 12, 14 are each dimension to accept a hand-held controller.

[00:07:53] Speaker 04:
And if you look at figure six, for example, of the provisional and figure three, they both show to one skilled in the art that that's how it would work.

[00:08:02] Speaker 04:
For example, if you look at figure six, Your Honor, it clearly shows in figure six, those in figure five as well, those controllers

[00:08:12] Speaker 04:
inside the docking base there.

[00:08:15] Speaker 04:
Closely, you know, fitting inside of there.

[00:08:18] Speaker 04:
Now, importantly, Your Honor, the same problem of... Where was the language you were just reading on the page?

[00:08:26] Speaker 04:
Yes, Your Honor.

[00:08:27] Speaker 04:
That is on page A78.

[00:08:31] Speaker 04:
A78.

[00:08:36] Speaker 04:
Importantly, Your Honors, in the non-provisional application, the 848 patent,

[00:08:42] Speaker 01:
At line 20.

[00:08:44] Speaker 01:
Excuse me?

[00:08:44] Speaker 01:
At line 20, I think.

[00:08:46] Speaker 04:
Yeah.

[00:08:46] Speaker 04:
Um, yeah.

[00:08:48] Speaker 04:
In the non-provisional, what I was going to say is that the identical problem is set forth in the background of the invention.

[00:08:55] Speaker 04:
This is on page eight, one 26.

[00:08:58] Speaker 04:
I mean, there's some additional paragraphs there, but these paragraphs are reproduced from the provision.

[00:09:05] Speaker 04:
They state the exact same problem that Judge Toronto, you were referring to.

[00:09:11] Speaker 01:
Right, but I guess what I'm focusing on is that there are two different solutions to that problem.

[00:09:18] Speaker 01:
One of them is essentially very substantially reducing, if not to zero, than something approaching zero the number of times you separate the plug and the socket.

[00:09:32] Speaker 01:
Another possible solution is somehow configuring the guiding walls to protect

[00:09:40] Speaker 01:
the connecting pieces, the plug and the socket, and I don't see that second piece in the provisional.

[00:09:46] Speaker 04:
The second piece, again, it would inherently be shown in the drawings, but the fact that the opposite walls of the docking bays are dimensioned to receive the controller, this is in our expert report at Gary Kitchen, one of skill in the art would understand that that would prevent a torque from being applied to the DC port on the base.

[00:10:07] Speaker 00:
But they're dimensioned to receive the controller in not the provisional, but the 864, right?

[00:10:15] Speaker 04:
No, that's in the provisional, Your Honor.

[00:10:17] Speaker 03:
Well, it's in the provisional, but also it says it's dimensioned to accept the adapters.

[00:10:22] Speaker 03:
And then it says it's dimensioned to accept the controllers.

[00:10:26] Speaker 03:
It's the same reference.

[00:10:33] Speaker 04:
It says it's dimensioned to receive the adapters.

[00:10:36] Speaker 04:
then it says that it's the mention to receive the controllers.

[00:10:39] Speaker 01:
I guess below, I gave you the wrong line number, right at the bottom 27, carrying over to 879.

[00:10:46] Speaker 04:
So carrying on with the 848 pattern on page 8126, if you look at column 2, line 19, and this is just after the same statement in the provisional of the problem to be solved at Judge Toronto's

[00:11:02] Speaker 04:
alluded to, it says in one monument, the at least one structure on the base includes opposite surfaces configured to align one of the at least one video game controllers such that the power input port of the video game controller couples to one of the at least one DC port.

[00:11:25] Speaker 04:
So that is describing exactly, just expressly describing in words, what is

[00:11:31] Speaker 04:
clearly disclosed in figures 3, 5, and 6.

[00:11:37] Speaker 04:
So therefore, this gives some visibility and confirmation to our expert's testimony that the docking base and the opposite walls by themselves are a solution to the problem.

[00:11:52] Speaker 04:
Where was that reference that you just made?

[00:11:56] Speaker 04:
It's on A126.

[00:11:57] Speaker 04:
126?

[00:11:58] Speaker 04:
Yes, which is the

[00:12:00] Speaker 04:
non-provisional, the 848 patent, on lines 19 through 24.

[00:12:08] Speaker 03:
But that doesn't tell us anything about the provision.

[00:12:12] Speaker 04:
We believe it does because it's describing the exact same structure.

[00:12:16] Speaker 04:
It's expressing it in words, but disclosure can be in the form of drawings.

[00:12:21] Speaker 04:
In this court precedent, in co-etail manufacturing in Basquiat, for example, drawings alone may be sufficient to support

[00:12:30] Speaker 00:
Right, but we're not supposed to be looking at the written description of the patents.

[00:12:34] Speaker 00:
We're supposed to be looking at the claim in the patent and comparing it to the written description in the provisional period.

[00:12:40] Speaker 05:
Yes.

[00:12:41] Speaker 00:
So that's where your focus needs to be.

[00:12:43] Speaker 05:
Yes.

[00:12:44] Speaker 00:
So the only line that you're relying upon is that one at line 27 on page A78 that goes over to 79?

[00:12:53] Speaker 04:
We're relying on that.

[00:12:54] Speaker 04:
We're relying on the fact that the adapters

[00:12:57] Speaker 04:
not the adapter plus the controller, maybe snap fit, push fit, or crest fit.

[00:13:03] Speaker 04:
So the adapters fit in.

[00:13:05] Speaker 00:
Is there any place that you show an embodiment in the absence of adapters in a provisional?

[00:13:14] Speaker 04:
There's not a place where we show an embodiment.

[00:13:16] Speaker 00:
Or describe an embodiment?

[00:13:18] Speaker 04:
We describe the docking base.

[00:13:21] Speaker 00:
OK, so you're saying they're dimensions to accept.

[00:13:23] Speaker 00:
Are they dimensions to prevent the bending

[00:13:27] Speaker 04:
That would be understood clearly by the one skilled in the art.

[00:13:30] Speaker 00:
But that's not really the question, is it?

[00:13:32] Speaker 00:
I mean, the question is, this is not enablement that we're talking about.

[00:13:36] Speaker 00:
We're talking about written description.

[00:13:39] Speaker 04:
Yes.

[00:13:39] Speaker 04:
We believe looking at Figures 5 and 6, for example, Figures 3, 5, and 6, it shows the controller within the docking bay, you know, closely held by those opposite side walls.

[00:13:50] Speaker 03:
It doesn't show it without an adapter, I think is what Judge O'Malley is talking about.

[00:13:57] Speaker 03:
I mean, that's correct, is it not?

[00:13:59] Speaker 04:
It doesn't show it without an adapter.

[00:14:02] Speaker 04:
But we go back to the court's precedent in Crown packaging.

[00:14:06] Speaker 04:
In Crown packaging, it says that if there are two solutions to a problem stated in a specification, that the claims don't fail if they focus on only one of the solutions to the problem.

[00:14:21] Speaker 04:
Here, the docking bay is a solution to the problem.

[00:14:23] Speaker 04:
At the very least, that's a fact issue.

[00:14:27] Speaker 04:
I mean, in VASCAP, for example, design patent drawings alone, without any description, were sufficient.

[00:14:35] Speaker 01:
But that's pretty common for design patents, right?

[00:14:38] Speaker 01:
I mean, description is very extensive.

[00:14:42] Speaker 04:
I believe in that case, Your Honor, it was a subsequently filed nonprovisional, if I'm not mistaken, that referred to drawings, it claimed priority of a design patent, I believe, was in that case.

[00:14:54] Speaker 04:
That may be incorrect, but you know,

[00:14:57] Speaker 04:
For example, it says that drawings, text, or would be known.

[00:15:04] Speaker 04:
I draw an analogy to the doctrine of inherency in anticipation.

[00:15:10] Speaker 04:
This is inherently disclosed here, and it's understood by one skilled in the art.

[00:15:16] Speaker 04:
These are small, fragile connectors.

[00:15:18] Speaker 04:
If you have a docking bay that is dimensioned to receive the controllers, preventing those controllers from

[00:15:24] Speaker 04:
providing torque onto the fragile connector, that would be a solution to the problem.

[00:15:31] Speaker 03:
So what case says that we use the doctrine of inherency for written description?

[00:15:36] Speaker 04:
Well, maybe that was a loose analogy, Your Honor.

[00:15:40] Speaker 04:
I was drawing an analogy to it.

[00:15:42] Speaker 04:
Not a case, but what I'm saying is that it would be understood by one skilled in the art.

[00:15:48] Speaker 04:
I mean, why else are the docking bays there?

[00:15:51] Speaker 04:
And that's a question that should potentially be asked.

[00:15:54] Speaker 04:
What is the purpose of the docking base?

[00:15:57] Speaker 04:
Why have docking base if that isn't doing anything?

[00:16:01] Speaker 04:
Well, it says it's guiding the adapters It says it's guiding the adapters and then it says its dimension to receive the controllers there are two Statements there your honor on page 78

[00:16:23] Speaker 04:
there are two statements.

[00:16:24] Speaker 04:
So I'm looking at the one at the bottom on line 27.

[00:16:32] Speaker 04:
This court's recent decision in script pro, which we, which was, I think Ms.

[00:16:37] Speaker 03:
Trezano, we're out of time.

[00:16:40] Speaker 03:
We'll give you two minutes for rebuttal.

[00:16:46] Speaker 03:
Mr. Heaney, is that how you spell it?

[00:16:49] Speaker 03:
Hanley.

[00:16:49] Speaker 03:
Hanley.

[00:16:51] Speaker 02:
Okay.

[00:16:52] Speaker 02:
Yeah.

[00:16:53] Speaker 02:
All right.

[00:16:54] Speaker 02:
Go ahead.

[00:16:55] Speaker 02:
Yes.

[00:16:55] Speaker 02:
Thank you, Your Honor.

[00:16:57] Speaker 02:
This is Steve Hanley for the appellees.

[00:16:59] Speaker 02:
I'm with Shepard, Mullen, Richter, and Hampton.

[00:17:02] Speaker 02:
So first of all, I would say that the district court got it right and it framed the issue correctly.

[00:17:07] Speaker 02:
The only question is whether the claims of the non-provisional are adequately described in the provisional.

[00:17:16] Speaker 02:
And starting with the answer to Your Honor's initial question, does claim construction matter?

[00:17:20] Speaker 02:
And I would submit that no, it doesn't.

[00:17:21] Speaker 02:
And the reason it doesn't is because regardless of what supported by the base and on the base mean, we know that they're at least broad enough to cover the DC ports directly on the base that establish a direct connection between the controller and the charging station, and that is not disclosed in the provisional.

[00:17:39] Speaker 02:
So I would answer your first question that no, client construction does not matter.

[00:17:42] Speaker 01:
So why is it not a fact question what figure three of the provisional would teach a skilled artist

[00:17:51] Speaker 02:
Well, I think a couple of discourse decisions are instructive.

[00:17:55] Speaker 02:
I think the area decision is instructive just as sort of a baseline description of the written description requirement is that it really depends on the four corners of the written description of the application.

[00:18:04] Speaker 02:
In this case, I think read in context and looking at figure three, what you see is that there are adapters and the adapters are required to achieve the object of the invention.

[00:18:17] Speaker 02:
And so in context, figure three,

[00:18:21] Speaker 02:
shows that the adapter is consistent with the rest of the application that shows that the adapters are required.

[00:18:30] Speaker 00:
Going- Figure three is described as having the adapter sitting in the recesses, correct?

[00:18:38] Speaker 00:
It is.

[00:18:38] Speaker 02:
Not the port for the- It is described as having the- It shows having the adapter in the recesses.

[00:18:48] Speaker 02:
It's not described as having

[00:18:51] Speaker 02:
the DC ports directly on the base and having a direct connection.

[00:18:54] Speaker 02:
In fact, the provisional, as your honors have made reference to, actually criticizes that configuration where the DC port is directly on the base and there's a direct connection between the DC port and the controller.

[00:19:10] Speaker 01:
I guess maybe be a little bit more specific about the question.

[00:19:14] Speaker 01:
Why is it not a factual question?

[00:19:17] Speaker 01:
Figure 3 shows, whatever else it shows,

[00:19:20] Speaker 01:
It shows a device with the plugs sticking up already connected to the power station, waiting for the controllers to come and get attached.

[00:19:36] Speaker 02:
That is one interpretation of Figure 3.

[00:19:38] Speaker 02:
I don't believe it's the correct interpretation of Figure 3 in the context.

[00:19:41] Speaker 01:
But why is it not a factual question whether a skilled artisan would understand that that

[00:19:50] Speaker 01:
arrangement is taught by the provisional application, and that's not materially different from having the plug directly connected to the base without the intervening adapter.

[00:20:09] Speaker 02:
Yeah, I think the Lockwood case and the Martin D. Mayer case are instructive on that issue, and counsel used the term inherently, but what those cases, so in Lockwood,

[00:20:19] Speaker 02:
you had a situation where the claims required a video disc player in addition to a television set and a keypad at the consumer's home.

[00:20:29] Speaker 02:
And there was an argument made that it would have been obvious, since everybody knew about video disc players, to include a video disc player, even though that wasn't disclosed.

[00:20:37] Speaker 01:
Right.

[00:20:38] Speaker 01:
But my question, I think, as you could tell, avoided using any language about obviousness.

[00:20:47] Speaker 01:
said was why is it not a factual question whether a skilled artisan would understand that what was being taught there was a base station with plugs sticking up waiting for the controller?

[00:21:01] Speaker 02:
Yeah, and I think the way the court addressed that in Lockwood answers that question, which is the question is not whether a claimed invention is an obvious variant of what is disclosed.

[00:21:13] Speaker 02:
It's rather

[00:21:15] Speaker 02:
what is disclosed in the specification.

[00:21:17] Speaker 02:
A prior application itself must describe the invention.

[00:21:21] Speaker 02:
And the court in Lockwood, that case was decided on summary judgment.

[00:21:26] Speaker 02:
And despite expert testimony, that would have been apparent to a person's skill in the art that you could have a video disc player.

[00:21:33] Speaker 02:
So although it may be a fact question under the law, it can be determined as a matter of law based on undisputed facts, namely the content of the written description.

[00:21:45] Speaker 02:
And not what a testimony of a person skilled in the art that they would understand that a variant of that would be just putting the DC ports directly on the base doesn't create a fact issue.

[00:21:57] Speaker 02:
And that's what the Lockwood court says.

[00:21:59] Speaker 03:
The testimony of an expert- In other words, what you're saying is it has to be explicit rather than something that might be inferred by someone skilled in the art.

[00:22:09] Speaker 02:
It absolutely does.

[00:22:09] Speaker 02:
And that's consistent with the Lockwood case and that's consistent with the Martin D. Mayer case.

[00:22:15] Speaker 02:
where the BPAI said that it would be conventional to make a harness consisting of cables.

[00:22:22] Speaker 02:
The claim to harness consisting of cables, the earlier written description described a cable consisting of a plurality of wires.

[00:22:31] Speaker 02:
And the BPAI awarded priority and said that, well, a harness consisting of a plurality of cables would be conventional.

[00:22:39] Speaker 02:
And this court said it is not a question of whether one skilled in the art might be able to construct

[00:22:44] Speaker 02:
the patentee's device from the teaching of the disclosure.

[00:22:46] Speaker 02:
Rather, it is a question of whether the application necessarily discloses the particular device.

[00:22:52] Speaker 02:
And the particular device in this case is the device of the claims of the 848, which has DC ports directly on the base and which has a direct connection between the adapters, excuse me, between the controllers and the charging station.

[00:23:08] Speaker 01:
Can I ask you one technical question?

[00:23:13] Speaker 01:
that despite the somewhat broader language of the district court's invalidation decision, the only claims actually invalidated are the asserted claims, ones that cover non-adapters that they did not, in fact, because they're not even at issue in the case, invalidate claims that cover, that require the adapter.

[00:23:36] Speaker 02:
We did not ask for those other claims to be invalidated, nor do we believe the district court's order invalidated any other claim that those

[00:23:43] Speaker 02:
than those that would cover an embodiment that included a direct connection.

[00:23:48] Speaker 02:
And so I think the answer to the second question that was discussed at some length with Mr. Hassan was whether this disclosure of docking bays that are dimensioned to accept the controllers is a sufficient disclosure of an additional way to achieve the goal of the invention.

[00:24:11] Speaker 02:
And I would say it certainly is not.

[00:24:13] Speaker 02:
The docking bays are not described as an invented feature of the invention that accomplishes the goal of enabling a fast, easy, and reliable connection between the controller and the charging station.

[00:24:24] Speaker 02:
Neither the abstract nor the summary of invention even mentions docking bays.

[00:24:29] Speaker 02:
The docking bays are disclosed only with recesses at the bottom that have contacts in them, and those recesses accept the adapters with the leads on the bottom face of the adapters

[00:24:43] Speaker 02:
And so the only way that the provisional discloses achieving the object of the invention of achieving a fast, easy and reliable connection is that mating of the adapters and the recess and the leads on the recess.

[00:25:00] Speaker 02:
So there's never any disclosure of a docking bay without a recess to accept the adapter.

[00:25:06] Speaker 02:
And nor are the docking bays disclosed in the provisional as performing an alignment function.

[00:25:13] Speaker 02:
the council's reference to those provisions in the non-provisional that talk about the alignment function of docking bays, it supports the opposite conclusion that in the non-provisional, you have actually discussion of the opposite surfaces with locators that can help perform the function of aligning the controllers with the USB port.

[00:25:37] Speaker 02:
There is no disclosure of that function of the docking bays in the provisional.

[00:25:43] Speaker 02:
And so that contrast is also helpful to the analysis.

[00:25:47] Speaker 02:
And it ties into our new matter argument that in order to support these much broader claims, there's considerable new matter that's included in the non-provisional application that supports DC ports on the base that support a direct connection between the controllers and the chargers.

[00:26:06] Speaker 02:
So one reading, the provisional would not understand that the docking base could perform

[00:26:13] Speaker 02:
the purpose, the object of the invention without the adapters and without the mating recesses and context.

[00:26:23] Speaker 03:
Anything further?

[00:26:24] Speaker 02:
I believe I'm out of time here, Your Honor.

[00:26:27] Speaker 02:
No, you still have time.

[00:26:29] Speaker 02:
Oh, I misread.

[00:26:30] Speaker 02:
You don't have to use it.

[00:26:31] Speaker 02:
No, no.

[00:26:33] Speaker 02:
There are a couple of points that I would like to make.

[00:26:35] Speaker 02:
I think that I would

[00:26:39] Speaker 02:
I would track you just slightly through the language of the provisional.

[00:26:43] Speaker 02:
And the background of the invention first starts by criticizing the direct connection and says that the problem is that the user has to be careful to connect the plug slowly, gently, and completely.

[00:26:56] Speaker 02:
And in the very next paragraph talks about this fast, easy, and reliable connection.

[00:27:01] Speaker 02:
And then there are three references to a fast, easy, or reliable connection in the rest of the provisional.

[00:27:07] Speaker 02:
Each one of them is expressly tied

[00:27:09] Speaker 02:
the adapter.

[00:27:11] Speaker 02:
So paragraph 16 of the provisional says the adapters drop fit easily into the docking bays thus providing a fast and easy connection of the handheld health controllers.

[00:27:23] Speaker 02:
Then paragraph 22 that's where you have this more extensive discussion of keeping the adapters attached to the controllers and that so there's a lot of discussion there about enabling this fast easy connection but it concludes by stating

[00:27:38] Speaker 02:
this recharging process is fast and easy as the adapter allows the controller to be simply dropped into place rather than carefully connected to a fragile port or connector.

[00:27:49] Speaker 02:
And in paragraph 23, in describing these fitting options, such as the snap fit or the push fit, says these fitting engagements are fast and easy to use and also provide a reliable connection between the adapter and the charging station.

[00:28:04] Speaker 02:
So in every instance where the provisional is discussing

[00:28:08] Speaker 02:
how to achieve the advantages that are the object of the invention expressly ties it to the adapter.

[00:28:16] Speaker 02:
I would say that in addition, the language of the provisional very clearly sets forth that the adapter is a requirement of the invention.

[00:28:26] Speaker 02:
And that is contrasted with other features of the invention which are disclosed as optional.

[00:28:30] Speaker 02:
So for example, the

[00:28:34] Speaker 02:
Embodiments are described that they may include four connectors or they may include fewer than four connectors.

[00:28:40] Speaker 02:
They may include more than four connectors.

[00:28:42] Speaker 02:
But that's optional.

[00:28:44] Speaker 02:
It may include an internal AC to DC converter or an external AC to DC converter.

[00:28:49] Speaker 02:
But again, that's optional.

[00:28:52] Speaker 02:
But each time that the adapters are disclosed, they are not described as optional.

[00:28:58] Speaker 02:
They are required.

[00:28:59] Speaker 02:
In sum, it is the adapter and the mating recesses with electrical contacts that are described as essential to the invention.

[00:29:08] Speaker 02:
And then I would conclude with the point that it is entirely proper to decide this case on summary judgment.

[00:29:17] Speaker 02:
We've talked a little bit about that.

[00:29:19] Speaker 02:
Both the New Railhead case and the Lockwood case affirm district court summary judgment

[00:29:24] Speaker 02:
including the Lockwood case, despite expert testimony that purportedly created this issue of fact about whether a certain aspect that was not disclosed in the earlier application was quote unquote apparent.

[00:29:39] Speaker 02:
And so nevertheless, the district court granted summary judgment and this court upheld it.

[00:29:44] Speaker 02:
The Aniscape and the Tronzo cases were both decided by this court, even though, and reversing jury verdicts,

[00:29:52] Speaker 02:
So, and including in those cases, over expert testimony that would purportedly create a tribal issue of fact.

[00:30:03] Speaker 02:
And in the Aniscape case, the court said that the expert testimony, quote, cannot override the objective content of the earlier application.

[00:30:13] Speaker 02:
The other point about an issue of fact purportedly created by expert testimony

[00:30:20] Speaker 02:
is the expert testimony here was really only offered on a single issue and that was claim construction.

[00:30:24] Speaker 02:
Basically, you had an expert saying that on the base could include not directly on and supported by the base could include not directly on.

[00:30:33] Speaker 02:
As we discussed at the outset, your honor, we don't believe claim construction matters because regardless of the construction of on the base or supported by the base, both claims one and 13 are broad enough to include a direct connection and the direct connection is not disclosed in the provisional

[00:30:50] Speaker 02:
application.

[00:30:53] Speaker 02:
Finally, to the extent that there's any errors deemed in the district court's analysis, this is a de novo review.

[00:31:02] Speaker 02:
It's decided essentially based on the four corners of the provisional application and comparing those to the claims.

[00:31:08] Speaker 03:
This court should affirm on any grounds that it finds proper.

[00:31:22] Speaker 04:
I'll highlight a statement that Mr. Hanley made in response to Judge Toronto's question about figure three.

[00:31:30] Speaker 04:
He said that's one interpretation.

[00:31:33] Speaker 04:
You know, one interpretation is that it has the disclosure.

[00:31:38] Speaker 04:
I mean, that's the issue here.

[00:31:39] Speaker 04:
The narrow issue is whether there's a statement of fact.

[00:31:43] Speaker 04:
Also in this court's precedent, including Scripprow, there must be a clear statement of limitation.

[00:31:52] Speaker 04:
that a skilled artisan, if being reasonable, would have to read as requiring the, in this case, the detachable connectors at issue.

[00:32:01] Speaker 04:
There is no clear statement that says that it has to be there.

[00:32:08] Speaker 01:
I mean, what I keep focusing on is that all of that, including in ScriptPro, focuses on what functions or what problem is being solved, what and how.

[00:32:21] Speaker 01:
And the provisional application in particular, the sentence at the bottom of A78 says as to the little walls, no more than they have to be big enough to hold to accept the controller.

[00:32:41] Speaker 01:
They don't say they have to be, speaking informally, snug enough either to prevent the wobbling

[00:32:50] Speaker 01:
or to guide the placement?

[00:32:55] Speaker 04:
Well, you know, we would state with our expert testimony that dimensioned is something that means snuggling.

[00:33:03] Speaker 04:
It's dimensioned to accept it.

[00:33:05] Speaker 04:
It's not, you know, just there for no purpose.

[00:33:08] Speaker 04:
And then if you look at, in the context of figures three, four, and five, I mean, five and six particularly, with the controllers in it, it shows a very snug fit.

[00:33:18] Speaker 04:
It shows the controllers.

[00:33:19] Speaker 00:
But the figure three, your description of figure three, correct me if I'm wrong, is at the bottom of A79, right?

[00:33:24] Speaker 00:
Beginning at line 25?

[00:33:28] Speaker 04:
That is one portion.

[00:33:29] Speaker 00:
I'm having a hard time understanding why you keep focusing on figure three, where figure three specifically addresses simply adapters being in those recesses.

[00:33:40] Speaker 04:
Certainly figure three shows adapters in the recesses, but the fact is is that the

[00:33:46] Speaker 04:
Many patents show drawings that have features in each and every... But there's no written description of figure three that's different from that, is there?

[00:33:55] Speaker 04:
The written description includes the figures.

[00:34:00] Speaker 04:
Right.

[00:34:00] Speaker 04:
Right.

[00:34:01] Speaker 04:
So the question here, we believe, is the question in crown packaging.

[00:34:05] Speaker 04:
The written description shows docking bays and opposite walls that show a snug fit with the controllers in figures five and six, for example.

[00:34:13] Speaker 04:
that would prevent the torque on the DC port.

[00:34:17] Speaker 04:
That's shown.

[00:34:19] Speaker 04:
One skilled in the art would see that.

[00:34:20] Speaker 04:
And that is not obvious.

[00:34:22] Speaker 04:
That's not derived.

[00:34:23] Speaker 04:
That is actually shown.

[00:34:25] Speaker 04:
And we have expert testimony that shows that.

[00:34:28] Speaker 04:
In the cases that Mr. Hanley brought up, those cases had to do with where there was an extra element that wasn't disclosed.

[00:34:37] Speaker 03:
What's not shown, I guess, is putting the adapter in the base and then

[00:34:42] Speaker 03:
fitting the controller into the adapter.

[00:34:45] Speaker 03:
That's not something to show.

[00:34:47] Speaker 04:
How else would figure 3 work?

[00:34:50] Speaker 04:
I mean, there's no other way for figure 3 to operate here.

[00:34:55] Speaker 04:
There's no other way.

[00:34:56] Speaker 04:
And we would go back to the fact that in this case, it shows that the adapters are snap fit, press fit, or push fit.

[00:35:03] Speaker 04:
Take a snap fit.

[00:35:04] Speaker 04:
A snap fit is a mechanical fastening of one part to another.

[00:35:09] Speaker 04:
If it snapped it in there in figure three, which is fully disclosed, you would put the controller on top of it.

[00:35:17] Speaker 04:
I mean, how else would figure three work, is our question.

[00:35:20] Speaker 04:
That's the question.

[00:35:21] Speaker 00:
But there's still the adapter, right?

[00:35:23] Speaker 04:
Snapped into the base.

[00:35:25] Speaker 00:
The adapter snapped into the base.

[00:35:27] Speaker 04:
The adapter is snapped into the base.

[00:35:28] Speaker 04:
It's part of the base at that point.

[00:35:30] Speaker 04:
And the only way that the embodiment of figure three would work is to put the controller on it, as shown in figure six.

[00:35:39] Speaker 03:
Assume that figure three shows part of the snapping in and the controller would be attached to the adapter before it snapped in.

[00:35:52] Speaker 04:
It says that it can.

[00:35:53] Speaker 04:
The application does not say that it must.

[00:35:56] Speaker 04:
That is not a clear and unequivocal disavowal with can.

[00:36:00] Speaker 04:
I mean, there are cases stronger than that criticizing the environment.

[00:36:04] Speaker 03:
That's not the written description standard, right?

[00:36:08] Speaker 03:
that there has to be a clear and unmistakable disavowal of what you say is supported by the provisional application.

[00:36:15] Speaker 03:
You have to show that it is supported by the provisional application.

[00:36:18] Speaker 04:
Well, we believe that there has to be a statement, Your Honor.

[00:36:20] Speaker 04:
In Script Pro, there must be a clear statement of limitation that a skilled artisan, if being reasonable, would have to read as requiring the featured issue.

[00:36:31] Speaker 04:
You know, this is like an omitted element test.

[00:36:33] Speaker 04:
Where does it say

[00:36:34] Speaker 04:
that you have to have it.

[00:36:36] Speaker 04:
Whereas a clear statement that omits, that says that a claim that omits that feature is not available.