[00:00:00] Speaker 01:
Science Corp.

[00:00:02] Speaker 01:
I may be saying that wrong versus Innova Systems Inc.

[00:00:06] Speaker 01:
Ms.

[00:00:06] Speaker 01:
Karina.

[00:00:40] Speaker 01:
Okay, Ms.

[00:01:04] Speaker 01:
Farina please proceed.

[00:01:06] Speaker 00:
Good morning, Your Honor.

[00:01:07] Speaker 01:
How do I say your client's name?

[00:01:08] Speaker 00:
It's Proveris Scientific.

[00:01:10] Speaker 00:
Proveris, got it.

[00:01:12] Speaker 00:
And I am here on behalf of Proveris Scientific.

[00:01:15] Speaker 00:
With me is Barry Schindler from the law firm.

[00:01:17] Speaker 02:
And your name is Farina, right?

[00:01:18] Speaker 00:
Farina?

[00:01:18] Speaker 00:
Farina, yes.

[00:01:20] Speaker 00:
With me is Barry Schindler from the law firm of Greenberg Trowry.

[00:01:24] Speaker 00:
Your honor, based simply on the intrinsic record in this case, the court can affirm claim three and at the outset should look specifically

[00:01:38] Speaker 00:
at the preamble to narrow the scope of Claim 3 by virtue of the Federal Circuit's decision in the Provaris, what we call the Provaris 3 case, which is cited at 739 F1367, also in our joint appendix at page 536.

[00:01:58] Speaker 00:
Based on that case, the rule between the parties in this case is that the preamble

[00:02:04] Speaker 00:
is in fact limiting.

[00:02:06] Speaker 00:
It was an argument that third-party requester Innova Systems raised in defense to contempt, and Innova won on that argument.

[00:02:15] Speaker 00:
The Federal Circuit ruled that the preamble... Right, but we have a mystery.

[00:02:19] Speaker 02:
We know that there is a binding precedent that says the preamble limits claim three, right?

[00:02:25] Speaker 02:
But we don't know what it is, right?

[00:02:29] Speaker 02:
We don't know what the precise limitation is, because the board didn't tell us, right?

[00:02:34] Speaker 00:
No, Your Honor, I don't think that's true.

[00:02:37] Speaker 00:
I'm sorry, the Federal Circuit told us at least what one aspect of the preamble is limited.

[00:02:48] Speaker 00:
Because what the Federal Circuit did was look first to the specification to find, quote, that the specification identifies the invention as producing a sequential set of images

[00:03:01] Speaker 00:
and focuses on the ability of the invention to capture the time evolution of the spray.

[00:03:05] Speaker 00:
The Federal Circuit then looked at the preamble to Claim 3 and said it's the only reference of any independent claim to the inventive concept of capturing a sequence of images in order to characterize the time evolution of the spray plume.

[00:03:20] Speaker 00:
That's at pages A5-43.

[00:03:21] Speaker 00:
I see that.

[00:03:21] Speaker 02:
What's that mean in the English language?

[00:03:23] Speaker 00:
I'm sorry?

[00:03:24] Speaker 02:
What's that mean in the English language for writing a limitation in the claim, adding something to claim three that isn't already there?

[00:03:31] Speaker 00:
It's not adding anything to claim three, Your Honor, because the preamble that's in claim three states that the apparatus is for producing image data representative of at least one sequential set of images of a spray plane.

[00:03:46] Speaker 00:
The Federal Circuit found that that language means or it incorporates the concept of capturing

[00:03:54] Speaker 00:
the time evolution of the spray claim, because it's the only place in any independent claim where that inventive concept is found.

[00:04:03] Speaker 00:
So it's not adding anything to the claim.

[00:04:05] Speaker 00:
There's nothing that has to be added into this claim to affirm it.

[00:04:09] Speaker 00:
It's all in the intrinsic record and actually first in the claim itself.

[00:04:15] Speaker 00:
So looking at that language, the Federal Circuit in Provera Street then went on and looked at the body of the claim.

[00:04:24] Speaker 00:
noting that an imaging device for generating the image data, the phrase the image data clearly drives antecedent basis from the phrase image data in the preamble.

[00:04:38] Speaker 01:
Counsel, I feel like you need to get to your point.

[00:04:41] Speaker 01:
I mean, I think that you're strangely arguing with Judge Clevenger over something that I don't even understand.

[00:04:47] Speaker 01:
Everybody agrees the preamble is a limitation.

[00:04:50] Speaker 01:
The fact that there's antecedent basis is irrelevant.

[00:04:53] Speaker 01:
There's antecedent basis goes to whether it's a limitation.

[00:04:57] Speaker 01:
That's something we're bound by.

[00:04:59] Speaker 01:
So why don't you get to your point, which it seems to me is the point that Judge Clevenger was trying to move you along to, which is you say the preamble should be limiting.

[00:05:07] Speaker 01:
And in particular, one of your arguments that seems quite important to you is the geometric plane and whether it has to be one geometric plane at a time.

[00:05:16] Speaker 01:
And so why don't you get to that with specificity?

[00:05:20] Speaker 01:
Does this preamble, which just says along a geometric plane, necessarily limit the claim to one geometric plane at a time?

[00:05:29] Speaker 00:
Because when you're looking at the preamble, a geometric plane, and by virtue of what is being described in the preamble, it has to happen one geometric plane at a time.

[00:05:40] Speaker 00:
Now what the board did is look at the specification and say, and admit it, the board admitted

[00:05:48] Speaker 00:
that the specification only depicts one plane at a time, and repeatedly refers to one plane at a time, except for one place.

[00:05:57] Speaker 00:
And in one place, the specification does disclose, and this is on page 86.

[00:06:02] Speaker 02:
What do you mean by one plane at a time?

[00:06:05] Speaker 02:
Explain to me, in the working of the invention, what does that mean?

[00:06:08] Speaker 00:
OK.

[00:06:09] Speaker 00:
What that means, and this is claim three, is that an illuminator.

[00:06:16] Speaker 02:
You shine a light, right?

[00:06:18] Speaker 00:
But not any particular light.

[00:06:20] Speaker 00:
Because light that projects along multiple planes is like light in this room.

[00:06:25] Speaker 02:
OK, so what you're arguing that you basically need a structured light.

[00:06:31] Speaker 00:
Exactly.

[00:06:32] Speaker 00:
That projects a thin sheet of light.

[00:06:35] Speaker 00:
And there's no dispute about the thin sheet of light.

[00:06:38] Speaker 02:
I'm sort of trying to put the pieces together.

[00:06:40] Speaker 02:
Sure.

[00:06:40] Speaker 02:
Because when you were originally in front of your exam a long time ago,

[00:06:45] Speaker 02:
to distinguish over prior art, which was a beam art, a laser light.

[00:06:49] Speaker 02:
You said, we're not that.

[00:06:51] Speaker 02:
We are structured light.

[00:06:52] Speaker 02:
Exactly.

[00:06:53] Speaker 02:
We said we're structured light.

[00:06:54] Speaker 02:
So that, I mean, you wouldn't be able to go out and sue infringement over somebody that used a beam.

[00:06:59] Speaker 02:
That's correct.

[00:07:00] Speaker 02:
So you say, that's the kind of light we are.

[00:07:02] Speaker 00:
That's correct.

[00:07:03] Speaker 02:
And you say, that's the reason why we're that kind of light is because of the kind of measurements we're trying to achieve.

[00:07:09] Speaker 02:
in an accurate way, and you can't get those with a beam of light.

[00:07:12] Speaker 02:
That's correct.

[00:07:13] Speaker 02:
So that's what you say.

[00:07:14] Speaker 02:
So you say, that's what we're talking about.

[00:07:17] Speaker 02:
And it gets into this one plane.

[00:07:19] Speaker 02:
The board seems to think you mean only one plane at a time, as opposed to many planes when all... Provera says one plane at a time.

[00:07:29] Speaker 00:
The board said that by virtue of the specifications disclosure of

[00:07:33] Speaker 00:
an illumination device adapted to simultaneously or sequentially illuminate the spray, et cetera, that because it said simultaneously, it means two.

[00:07:44] Speaker 00:
Now, here's the interesting part.

[00:07:46] Speaker 00:
Let me come back.

[00:07:48] Speaker 02:
The way I was seeing the case was that you were trying to say basically what my induction is doing is using structured light as my illuminating source.

[00:07:57] Speaker 02:
And we distinguish over prior earth that doesn't.

[00:08:02] Speaker 02:
Correct.

[00:08:02] Speaker 02:
have a bunch of stuff happening in the district court that never really gets to claim construction.

[00:08:07] Speaker 02:
You finally get up to the federal circuit and they say, oh, whoops, wait a second, your preamble limits the claim.

[00:08:14] Speaker 02:
But we can't figure it out.

[00:08:16] Speaker 02:
We'll let the district court do it on remand.

[00:08:19] Speaker 02:
It goes back to the district court.

[00:08:20] Speaker 00:
The district court.

[00:08:21] Speaker 00:
Not quite right, you're right.

[00:08:23] Speaker 02:
Well, our opinion adds some verbiage.

[00:08:27] Speaker 02:
talking a little bit about the preamble, but expressly says we're passing, we're not going to construe the claim.

[00:08:33] Speaker 00:
Well, what the court said was that we're not going to construe the disputed language.

[00:08:39] Speaker 00:
That's what the court said.

[00:08:40] Speaker 00:
And Nova raised the issue of one subclass.

[00:08:43] Speaker 02:
So my point is you go back and then the case goes through the process on the re-exam and you get an original opinion on the re-exam,

[00:08:53] Speaker 02:
A board is saying, you made an argument here that you are limited to structured light, we reject that.

[00:09:00] Speaker 02:
Clearly they reject that.

[00:09:02] Speaker 02:
You come back on the request on the rehearing and you say, whoops, you haven't taken account of the preamble.

[00:09:11] Speaker 02:
Now, aren't you somehow saying the preamble is helping to teach us that we have to use structured light?

[00:09:19] Speaker 00:
The preamble does that and more than that.

[00:09:21] Speaker 00:
For instance,

[00:09:23] Speaker 00:
with the preamble.

[00:09:25] Speaker 00:
And this is why we bring up the federal, the provisional case.

[00:09:31] Speaker 02:
All right.

[00:09:31] Speaker 02:
Well, stick with me.

[00:09:32] Speaker 02:
I mean, you're saying that I'm, you agree with me thus far that you're saying to the board on the rehearing, if you take account of the preamble the way you were told to, that you'll appreciate that we were right all along that structured light is required for the invention.

[00:09:48] Speaker 00:
Yes, and for other reasons, because you don't even have to get to structures like the majority of the references.

[00:09:55] Speaker 02:
I understand that, but what other reason?

[00:09:57] Speaker 00:
The other reason is the sequence of images that is the only place where the inventive concept of a time evolution of the spray is found.

[00:10:06] Speaker 00:
Only one reference in all the cited references

[00:10:09] Speaker 00:
even remotely discloses a time evolution.

[00:10:13] Speaker 02:
That has to do with the prior reading on the properly interpreted claims.

[00:10:17] Speaker 02:
What I was understanding that you were trying to achieve here was the fact that your claim has been misunderstood from claim day one at the original examiner when you were trying to say what we were limited to.

[00:10:31] Speaker 02:
It followed straight through when you're reminded

[00:10:35] Speaker 02:
On your rehearing, look at the preamble, you'll understand that.

[00:10:39] Speaker 02:
And once you've done that, then you're going to have to go back and relook at the prior art.

[00:10:44] Speaker 00:
What the preamble gets to with the reference to a geometric plane as antecedent basis for the later claims along at least one geometric plane,

[00:10:58] Speaker 00:
is essentially that it can only be one geometric plane at a time.

[00:11:03] Speaker 01:
I don't see how.

[00:11:04] Speaker 01:
I mean, at least one geometric plane.

[00:11:07] Speaker 01:
Your definition would read out the at least one.

[00:11:11] Speaker 00:
Your claim says at least one.

[00:11:12] Speaker 00:
So that means this claim covers two or three or four.

[00:11:14] Speaker 00:
No, it wouldn't, Your Honor.

[00:11:16] Speaker 00:
Because with the structured light source, with the geometric plane, in order to do, for instance, what's disclosed in claim five,

[00:11:26] Speaker 00:
the illuminator has to be able to project along at least one geometric plane.

[00:11:33] Speaker 00:
But it could project, why can't it project along two?

[00:11:38] Speaker 00:
Well, that's what's disclosed in the specification as the alternative, simultaneous or sequential, but what's only claimed is sequential.

[00:11:47] Speaker 01:
No, your claim is at least one geometric plane.

[00:11:51] Speaker 01:
The plain language of that includes and anticipates coverage of more than one.

[00:11:56] Speaker 01:
But not at the same time.

[00:11:58] Speaker 01:
Why not?

[00:12:01] Speaker 01:
You're not at the same time language would actually seem to me to be completely inconsistent with the claim language.

[00:12:07] Speaker 00:
It's not that when you look at a long A geometric plane that intersects the spray plane.

[00:12:13] Speaker 00:
That's the preamble.

[00:12:14] Speaker 01:
But the body of the claim says along at least one geometric plane.

[00:12:19] Speaker 01:
The body of the claim expressly says at least one.

[00:12:24] Speaker 01:
That means it expressly covers two or three or four and anticipates that.

[00:12:30] Speaker 01:
No, not in this case.

[00:12:31] Speaker 00:
Well, then you should have chose different claim language.

[00:12:34] Speaker 00:
No, you're right.

[00:12:35] Speaker 00:
I respectfully disagree with that, because when you look at the specification, everything in the specification, as the board even admits... Then tell me how to understand the at least one language.

[00:12:46] Speaker 00:
Because when you look at claim five, claim five, which is dependent and therefore can't be broader than claim three,

[00:12:54] Speaker 00:
Claim five expressly discloses a first time sequential set of images and then a second time sequential set of images.

[00:13:06] Speaker 00:
If claim three were to be read the way the board would have it be read, then claim five would be broader.

[00:13:15] Speaker 00:
So it can't happen like that.

[00:13:18] Speaker 03:
You want us to read the claim to teach a single plane of light.

[00:13:24] Speaker 00:
Right, the illuminator has to do it.

[00:13:26] Speaker 03:
But doesn't the prior art teach that as well?

[00:13:28] Speaker 03:
I mean, it seems to me that even if we adopt your claim construction that you lose because of the prior art.

[00:13:36] Speaker 00:
No, the prior art doesn't teach a geometric plane at all.

[00:13:41] Speaker 00:
None of the illuminators in the prior art actually teach that.

[00:13:44] Speaker 00:
And then, even if the court concluded that it did, which perverse disagrees with me, but even if it did,

[00:13:54] Speaker 00:
That's where the preamble also becomes important, because none of the references, with the possible exception of the Mizuk reference, teaches capturing the time evolution of a spray plume along a geometric plane.

[00:14:13] Speaker 00:
It physically can't happen.

[00:14:15] Speaker 00:
That's like standing in the room right here,

[00:14:18] Speaker 00:
and spraying a short duration spray and trying to see the timing that you can do it.

[00:14:22] Speaker 02:
Coming back to your one and more point, wasn't the board's view that because you can have, when you say at least one geometric plane, you have an infinite number of geometric planes, you produce a beam?

[00:14:36] Speaker 02:
Right?

[00:14:36] Speaker 00:
That's in essence what the board's saying.

[00:14:38] Speaker 02:
You're telling me that you surrendered scope in terms of a beam, right?

[00:14:43] Speaker 00:
We're not claiming beam at all.

[00:14:45] Speaker 02:
Yeah, but if you have an infinite number of geometric planes,

[00:14:49] Speaker 02:
You end up a bean.

[00:14:51] Speaker 00:
Right, which we're not claiming.

[00:14:53] Speaker 02:
Well, I'm trying to get you back to the point talking with the presiding judge about what one or more means in here.

[00:15:00] Speaker 02:
And you're saying, oh, no, no.

[00:15:02] Speaker 02:
You think that it's talking about more than one, but not at the same time.

[00:15:09] Speaker 02:
So there's just a disconnect in the one or more here.

[00:15:13] Speaker 02:
And the shorter matter is that you feel you've disclaimed

[00:15:17] Speaker 02:
an infinite number of planes because that produces the beam.

[00:15:22] Speaker 00:
Absolutely.

[00:15:23] Speaker 02:
So your claim covers a whole lot of images, right?

[00:15:31] Speaker 00:
Depends on what you mean by that.

[00:15:33] Speaker 00:
What the claim covers is only the sequence of images along a geometric plane.

[00:15:39] Speaker 00:
However, that geometric plane could shift so that the first sequential set of images

[00:15:45] Speaker 00:
is perpendicular to a short duration spray.

[00:15:48] Speaker 00:
The second set of images is at a 40 degree angle change from the perpendicular.

[00:15:56] Speaker 02:
So you agree that could be an infinite number of geometric planes.

[00:15:59] Speaker 00:
But only one at a time.

[00:16:02] Speaker 00:
And the board even recognizes that.

[00:16:05] Speaker 00:
And I directed at pages 39 and 40 of the appendix.

[00:16:09] Speaker 01:
Ms.

[00:16:10] Speaker 01:
Farina, you've used all of your rebuttal time and all of your main time.

[00:16:13] Speaker 01:
I'll restore two minutes of rebuttal, but I think finish your answer to Judge Clevenger's question, and then we need to move on.

[00:16:19] Speaker 00:
Thank you, Your Honor.

[00:16:20] Speaker 00:
The board looked at, the board said, we don't find Perverus's, your use of the Norian case to be persuasive, because in the Norian case, it's, the specification uses only a single solute, and makes no reference to using a mixture of multiple solutes, et cetera.

[00:16:39] Speaker 00:
And then the board says in contrast here, the specification supports simultaneously illuminating two geometric planes.

[00:16:47] Speaker 00:
On the next page in footnote two, the board says, look, we recognize that the specification describes simultaneously illuminating just two geometric planes.

[00:17:00] Speaker 00:
That's it.

[00:17:01] Speaker 00:
And then the board says, but there's nothing in the specification to suggest

[00:17:06] Speaker 00:
that it's limited only to two geometric planes, which is crazy because that puts Proveris in the position of having to provide negative disclosures for every type of light that's out there.

[00:17:17] Speaker 01:
And... Okay, I think we have to stop you before you're in because that was a very long answer to Judge Clevenger's question.

[00:17:22] Speaker 01:
So let's hear from Mr. Pasillopoulos.

[00:17:34] Speaker 04:
I'm representing Inova in this case.

[00:17:39] Speaker 04:
With me is Frank Carroll.

[00:17:40] Speaker 04:
We're from Fox Rothschild.

[00:17:43] Speaker 04:
The board's decision in this case should be affirmed for two very important fundamental reasons.

[00:17:49] Speaker 04:
The first one is that there is no error in the claim construction as the board presented.

[00:17:57] Speaker 04:
Despite, and one of the things I'm going to do is go through and explain why there is no error.

[00:18:03] Speaker 04:
But Judge Raina, as you mentioned, even, so that's one main reason.

[00:18:07] Speaker 04:
So there's no error, given that there's no error, there's no reason for reversal.

[00:18:13] Speaker 04:
But the second reason is even if you take Provaris' claim constructions, which they say the board should have made, the result is still the same.

[00:18:22] Speaker 04:
The decision here is the same.

[00:18:24] Speaker 04:
The prior art discloses the things that they are trying to read.

[00:18:29] Speaker 02:
Well, you're asking us to make that determination.

[00:18:32] Speaker 04:
Well, I'm actually not.

[00:18:34] Speaker 02:
The board didn't make that determination.

[00:18:35] Speaker 02:
The board didn't read the prior art against a different claim construction.

[00:18:41] Speaker 04:
Well, it actually did in connection with reviewing the petition for rehearing.

[00:18:48] Speaker 04:
So in the petition, so you're right.

[00:18:51] Speaker 04:
Two things.

[00:18:52] Speaker 02:
Let's just say that I reach a conclusion that the board didn't properly take account of the preamble in the rehearing decision.

[00:19:02] Speaker 04:
Okay.

[00:19:04] Speaker 02:
Then you've got to agree that they didn't read the prior art against the correct interpretation?

[00:19:09] Speaker 04:
Well, except Proveris still loses.

[00:19:12] Speaker 04:
And the reason is because it's Proveris' burden to show.

[00:19:17] Speaker 04:
So let's assume that's an error.

[00:19:19] Speaker 04:
It's Proveris' burden to show that error is not harmless error.

[00:19:24] Speaker 04:
In other words, would there have been a different result in this case?

[00:19:29] Speaker 04:
And Proveris spends almost its entire time in its brief

[00:19:32] Speaker 04:
saying that the claim construction is wrong and no time providing this court with the ammunition it would need to say, and because of that different claim construction, when I apply that claim construction and I look at the prior art, I only have one conclusion, that the claims are not anticipated and the claims are in fact obvious.

[00:19:55] Speaker 04:
And they have not done that.

[00:19:56] Speaker 04:
There's not a scintilla of evidence in this case which establishes that, and it was their burden to do so.

[00:20:03] Speaker 04:
Notwithstanding that, we went ahead and we, by way of example, because there's 47 separate rejections in this case.

[00:20:13] Speaker 04:
By way of example, we included in our brief on page 11, just by way of example, a side-by-side comparison of the Proveris figure and the figure from Deljurovich, which the board cited the Deljurovich's reference

[00:20:32] Speaker 04:
as anticipating claim 15.

[00:20:34] Speaker 04:
And the reason we brought that to the court's attention is because claim 15 expressly includes the limitation of a thin sheet of light that Provera says should be read in to the main claim.

[00:20:48] Speaker 02:
Do you agree that in the original prosecution Provera surrendered a beam of light as an eliminating source?

[00:20:56] Speaker 04:
No, Your Honor.

[00:20:58] Speaker 04:
There's no evidence of that.

[00:21:01] Speaker 02:
It's at page four and five of their brief.

[00:21:03] Speaker 02:
They're talking about the prior art that was cited to them by the original examiner.

[00:21:07] Speaker 02:
This is Crohn-Schmidt and Gardner.

[00:21:09] Speaker 02:
Yes.

[00:21:10] Speaker 04:
Yes, Your Honor.

[00:21:10] Speaker 04:
And if we look.

[00:21:12] Speaker 02:
Crohn-Schmidt is a laser beam.

[00:21:15] Speaker 04:
Well.

[00:21:16] Speaker 02:
And they say we're not that.

[00:21:18] Speaker 04:
Yes.

[00:21:19] Speaker 04:
So we have to be careful.

[00:21:20] Speaker 04:
And I think that's Appendix A255, which is a single page from the prosecution history that they rely on as allegedly

[00:21:30] Speaker 04:
constituting this surrender.

[00:21:32] Speaker 04:
And if you go to that page, first of all, Your Honor, there's nothing in the record that actually tells us what claims were pending in the case at that time.

[00:21:43] Speaker 04:
The one thing that's sure is they're not the claims as they issued because the claims don't match up.

[00:21:49] Speaker 04:
If you read the remarks there, it says, claim one is the only independent claim.

[00:21:54] Speaker 04:
But putting that aside, what they're saying in Crohn Schmidt, Your Honor,

[00:21:59] Speaker 04:
Chrome Schmidt is the type of device where the laser beam is used to... You see the drawing in Chrome Schmidt.

[00:22:07] Speaker 02:
It just shines the beam straight through the plant.

[00:22:10] Speaker 04:
Yes, and that's their point of distinction.

[00:22:13] Speaker 04:
They're saying that the purpose of the light in Chrome, and it's in their... They say this in their third full paragraph.

[00:22:22] Speaker 04:
They say the purpose of the light in Chrome is to have a light sensing

[00:22:29] Speaker 04:
device on the other side of the plume to measure how much the light is attenuated.

[00:22:36] Speaker 04:
So they're right in the sense that Krone-Schmidt does not deal with the concept of illuminating the plume, right?

[00:22:43] Speaker 02:
What they're saying in... Well, they're not dealing with structured light.

[00:22:45] Speaker 02:
I'm coming back to the structured light, the non-structured light distinction.

[00:22:49] Speaker 04:
Exactly.

[00:22:50] Speaker 04:
So there's nothing... It would have been very easy

[00:22:55] Speaker 04:
for Krovaris during his prosecution to have said exactly what Ms.

[00:22:59] Speaker 04:
Farina just said.

[00:23:01] Speaker 04:
And that is, this patent is different than Crohn-Schmidt because it uses, Crohn-Schmidt uses unstructured light and we use structured light.

[00:23:11] Speaker 04:
That's never said.

[00:23:13] Speaker 02:
Let's assume that I read it that way.

[00:23:16] Speaker 04:
Well, okay.

[00:23:18] Speaker 04:
So the other problem you have with this, that you read this as

[00:23:22] Speaker 02:
I read the original prosecution for the premises to say, we use structured light.

[00:23:30] Speaker 02:
We only use beams.

[00:23:32] Speaker 04:
OK.

[00:23:33] Speaker 04:
So in other words, you're reading the page 255 that they are making the distinction.

[00:23:39] Speaker 02:
They surrendered scope.

[00:23:41] Speaker 04:
Well, Your Honor, I think even in that case,

[00:23:44] Speaker 02:
You certainly would argue that if your client used a beam and they were trying to sue you for infringement, you'd say, haha, they surrendered the scope during the original prosecution.

[00:23:54] Speaker 04:
Let me try to answer your question first.

[00:23:57] Speaker 02:
What I'm trying to get at is, doesn't the invention require structured light?

[00:24:01] Speaker 02:
No.

[00:24:01] Speaker 02:
They're not going to get what they want without it?

[00:24:04] Speaker 04:
Well, I don't know what they want, Your Honor, but... The kind of readings they want in time.

[00:24:11] Speaker 04:
In order for them, and here's why I would answer your question as no, even if you could read this as distinguishing structured and unstructured light, which I'd like to get back to that because I don't think it does, but even if you read it that way, according to the Simon case, you have to, the disavowal of claim scope has to be clear and I think the term they use is unmistakable.

[00:24:38] Speaker 04:
In this particular case,

[00:24:40] Speaker 04:
So what did SIMED do?

[00:24:42] Speaker 04:
SIMED, the court, looked at four factors, all of those factors they looked at before they got to the prosecution history.

[00:24:50] Speaker 02:
OK, let me ask you just on another point.

[00:24:52] Speaker 02:
What, in your view, did the board think the preamble added to Claim 3?

[00:24:58] Speaker 02:
Because before the board, the regional examiner, were looking at Claim 3, they ignored the preamble.

[00:25:06] Speaker 02:
Well.

[00:25:06] Speaker 02:
They made it because the preamble doesn't contain any limitations.

[00:25:09] Speaker 02:
Right.

[00:25:10] Speaker 02:
So what, in your opinion, did the board think the preamble added to claim three?

[00:25:16] Speaker 04:
OK.

[00:25:16] Speaker 04:
So let me just, I do think the board didn't ignore the preamble even before the proverus decision.

[00:25:22] Speaker 04:
They did mention it.

[00:25:23] Speaker 04:
But they didn't focus.

[00:25:24] Speaker 02:
Sorry answering the question.

[00:25:26] Speaker 04:
OK.

[00:25:27] Speaker 04:
What I think the board thought that the preamble added to the claim was this concept, the requirement that the device

[00:25:37] Speaker 04:
provide a time evolution sequence of images of the spray plume.

[00:25:43] Speaker 04:
Because that's what the Federal Circuit talked about in Provaris 3.

[00:25:47] Speaker 02:
Where in the board's re-hearing opinion would you point me to tell me that that's where I know what they're thinking?

[00:25:55] Speaker 04:
Well, I could refer back, but I think that's what I... Well, that's helpful.

[00:26:00] Speaker 02:
I mean, you brought the opinion with you, didn't you?

[00:26:02] Speaker 02:
Yes, I did.

[00:26:02] Speaker 02:
Re-hearing opinion?

[00:26:03] Speaker 02:
Yes, I did.

[00:26:05] Speaker 02:
To be candid with you, I'm having a little bit of an Enray Lee problem here.

[00:26:09] Speaker 02:
Enray Lee is a presidential case that says that when the patent office through the board renders its decisions, we're supposed to be able to understand what they say.

[00:26:18] Speaker 02:
So they clearly had an obligation to find something new in claim three that wasn't there before.

[00:26:28] Speaker 02:
And they should tell us what it is and then tell us why it is that their previous decision on the prior art is the same.

[00:26:35] Speaker 02:
Well, Your Honor, I would say, you know... So show me in the rehearing decision, if you could, sir, where they are accounting for what the preamble did to claim three.

[00:26:49] Speaker 04:
Yes, sir.

[00:26:51] Speaker 04:
So if we look at...

[00:27:08] Speaker 04:
So that begins on A37.

[00:27:29] Speaker 04:
So I guess two things, Your Honor.

[00:27:35] Speaker 04:
One is the board

[00:27:36] Speaker 02:
So like in here, so they realize that they're supposed to take account of the preamble, right?

[00:27:42] Speaker 04:
Correct.

[00:27:42] Speaker 04:
They realize that.

[00:27:43] Speaker 04:
And what the board did on rehearing, Your Honor, is responded to the points raised by Provaris in their request for rehearing.

[00:27:52] Speaker 04:
And Provaris articulated several arguments why the

[00:27:58] Speaker 04:
change in the preamble, or the terminology from the preamble should affect the construction of the claim.

[00:28:05] Speaker 04:
And the board goes through.

[00:28:07] Speaker 04:
They specifically identify one of those things, for example, was the issue that Judge Moore was talking about it.

[00:28:14] Speaker 04:
And that is at the bottom of page A39.

[00:28:17] Speaker 04:
They repeat the patent owner's statement.

[00:28:21] Speaker 02:
Sure.

[00:28:21] Speaker 02:
But I'm just looking for, they can say, no, no, we disagree with you, Prevarus, with what you think.

[00:28:28] Speaker 02:
the preamble did to the claim.

[00:28:33] Speaker 02:
Where does the board say, ha ha, here's what it does do?

[00:28:41] Speaker 04:
Let's just see.

[00:28:44] Speaker 04:
Well, again, I think the board does not lay out what I would call kind of a classic claim construction analysis in the rehearing.

[00:28:53] Speaker 04:
But I think what the board said is we've looked at

[00:28:55] Speaker 04:
And the board did look at the preamble in the original decision.

[00:29:00] Speaker 04:
There was reference to the preamble in the original decision.

[00:29:02] Speaker 04:
They looked at this request.

[00:29:04] Speaker 02:
And they didn't recognize it as a limiting factor.

[00:29:07] Speaker 04:
Well, I disagree, Your Honor, because- Well, they would have told us that.

[00:29:12] Speaker 02:
But again, part of their- You will agree with me that in the rehearing decision, nowhere does the board tell us what it thinks.

[00:29:21] Speaker 02:
The effect on claim three is as a result of the preamble.

[00:29:26] Speaker 04:
That's, I agree, Your Honor.

[00:29:27] Speaker 04:
It does not interpret the preamble.

[00:29:30] Speaker 04:
But again, I think, Your Honor, on appeal here, the question is, even if the board should have interpreted the preamble, and even if the board had decided that the preamble means one plane at a time.

[00:29:44] Speaker 02:
Don't I need to know what the claim means?

[00:29:51] Speaker 02:
in the light of the preamble so that I can decide whether you're right or, as Judge Ranis said, his question was, well, doesn't the result the same on the prior art?

[00:30:02] Speaker 02:
How do I know that until I know the correct interpretation?

[00:30:05] Speaker 04:
Well, I think for the purposes of this appeal, Your Honor, the correct interpretation, if we give the benefit to Provaris, it's what they say the correct interpretation is.

[00:30:15] Speaker 04:
So in other words, we're here on appeal based upon Provaris' statement that

[00:30:20] Speaker 04:
the claim should have been interpreted according to mean x, y, and z. And in this case, that one plane means one, at least one plane, at least one geometric plane, which is the claim language, means only one plane at a time.

[00:30:36] Speaker 04:
That the term illuminator should be construed as a thin sheet of light.

[00:30:42] Speaker 04:
And that the term spray plume should mean only a spray plume that comes from

[00:30:48] Speaker 04:
a drug delivery device and lasts one second.

[00:30:52] Speaker 04:
Those are their three claim construction positions that they have argued was error for the board not to adopt.

[00:31:01] Speaker 04:
And on appeal here, it was Provaris' burden to establish for the benefit of this panel that those errors were not harmless errors, and they didn't do that.

[00:31:15] Speaker 04:
And that alone

[00:31:17] Speaker 04:
is sufficient for this board to say their appeal should be denied and the board's decision affirmed.

[00:31:30] Speaker 04:
The only other point I'll make before I close is, Judge Moore, you had raised the question about the meaning of at least one meaning only one, according to Provaris's construction,

[00:31:43] Speaker 04:
And I think this is important to note, in their brief, they cite the Halmedica case for the proposition that it says at least one means only one.

[00:31:55] Speaker 04:
And that's not what the Halmedica case says.

[00:31:57] Speaker 02:
In fact, the Halmedica case means it's limited to one.

[00:32:00] Speaker 02:
They're saying it can be many, but only one at a time.

[00:32:03] Speaker 02:
That's different than the normal.

[00:32:06] Speaker 02:
you know, comprising a language that says, you know, at least one means one or more.

[00:32:10] Speaker 02:
They say, yeah, more or more than one.

[00:32:11] Speaker 02:
No question about in terms of the counting the numbers.

[00:32:14] Speaker 02:
They're just saying at a time.

[00:32:17] Speaker 02:
That's a different matter.

[00:32:19] Speaker 04:
Except if you say at one at a time, that is still a limitation on the at least one that's not in the claim.

[00:32:26] Speaker 02:
And it's constraining the- That's also giving, allowing the

[00:32:36] Speaker 02:
preamble to breathe life into at least one.

[00:32:41] Speaker 04:
Well, again, the other thing that's important about this.

[00:32:45] Speaker 02:
You agree that a preamble can breathe life into a limitation that exists in the claim.

[00:32:54] Speaker 04:
I agree with that, Your Honor.

[00:32:55] Speaker 04:
But here's why.

[00:32:55] Speaker 02:
There's a case law that says it can't breathe life into at least one.

[00:33:00] Speaker 02:
In fact, we have a case that says it can't.

[00:33:03] Speaker 04:
Well, understood in that case, Your Honor.

[00:33:05] Speaker 04:
But in this particular case, I would posit this.

[00:33:09] Speaker 04:
First of all, the use of a geometric plane in the preamble does not have anything to do with the illuminator or the light.

[00:33:18] Speaker 04:
If you read the preamble that refers to a geometric plane, it's referring to the image.

[00:33:24] Speaker 04:
It's not referring to the illuminator.

[00:33:27] Speaker 02:
Had a predetermined incident in time.

[00:33:29] Speaker 04:
No, no.

[00:33:31] Speaker 04:
So just to be clear, Your Honor, if we go back

[00:33:33] Speaker 04:
The claim.

[00:33:34] Speaker 02:
I'm talking about the preamble.

[00:33:36] Speaker 04:
Exactly.

[00:33:36] Speaker 04:
So claim three, the preamble.

[00:33:39] Speaker 04:
Let me get there.

[00:33:43] Speaker 02:
A spray poem along a geographic plane that intersects a plane and at a predetermined instant in time.

[00:33:50] Speaker 04:
Yes.

[00:33:51] Speaker 04:
But that's not the point where they're talking about.

[00:33:53] Speaker 04:
If you look at the preamble, they're referring to the language that appears after small i. It says along a geometric plane.

[00:34:03] Speaker 04:
right, in claim three?

[00:34:05] Speaker 04:
They're arguing that that A there, it doesn't say at least one geometric plane.

[00:34:10] Speaker 04:
It says along A geometric plane.

[00:34:12] Speaker 04:
Their argument is that A is antecedent basis for their argument about structured light.

[00:34:19] Speaker 04:
But that's wrong, Your Honor, because that A geometric plane doesn't refer to the illuminator or the light at all.

[00:34:25] Speaker 04:
If you go back, it's referring to the image.

[00:34:29] Speaker 04:
It's saying the image

[00:34:30] Speaker 04:
is representative of the density characteristic of the spray plume along a geometric plane.

[00:34:36] Speaker 04:
It's not making any connection to the illuminator.

[00:34:40] Speaker 04:
So the image, in that case, Your Honor, the camera, is what takes the image.

[00:34:45] Speaker 04:
It can focus on a single geometric plane, even if the illuminator is illuminating multiple geometric planes.

[00:34:57] Speaker 01:
conflation of ideas that- And if that's an additional limitation that Pro Veris 3 said needs to be incorporated into the claim, is there any argument about whether that limitation is met in the anticipation references?

[00:35:12] Speaker 04:
No, I think there's no question about that.

[00:35:16] Speaker 04:
Because one of Pro Veris' arguments is that if you look, for example, at page 11 of our brief, we see that the Del Jorvis reference

[00:35:27] Speaker 04:
has a single image, one geometric plane at a time, and it describes that the video camera takes a video image along that one geometric plane.

[00:35:43] Speaker 04:
And the question about whether the prior art discloses a time evolution of the plume is really a red herring, because most of this prior art discloses a video camera.

[00:35:57] Speaker 01:
Okay, we're way over time, so we're going to have to stop now.

[00:36:01] Speaker 01:
Let's let Ms.

[00:36:02] Speaker 01:
Farina come up and give her two minutes of rebuttal time.

[00:36:05] Speaker 01:
Thank you, Your Honor.

[00:36:06] Speaker 01:
Thank you.

[00:36:16] Speaker 00:
Thank you for the opportunity for some brief replies for your ad.

[00:36:19] Speaker 02:
The Secretary says even if you're right on claim construction, you lose because you haven't made it showing to us that it makes any difference.

[00:36:27] Speaker 02:
They say your brief doesn't deal with, doesn't go through the prior art and say, okay, we're right on claim construction, and for that reason, the board's wrong on the way it read the prior art.

[00:36:39] Speaker 00:
Two points to that, Your Honor.

[00:36:40] Speaker 00:
First of all, we requested re-hearing with the board in order to provide a full argument regarding the preamble.

[00:36:47] Speaker 00:
We were denied it.

[00:36:48] Speaker 02:
So we haven't had the opportunity to... Now he's talking about what you said to us.

[00:36:52] Speaker 00:
Right.

[00:36:54] Speaker 00:
Well, looking specifically to the Prevarice III Court's decision in context with the body of the claim in the preamble, the Prevarice Court III decision explicitly stated that the image data in the body of the claim drives antecedent basis from image data in the claim.

[00:37:13] Speaker 02:
But you're not answering my question.

[00:37:15] Speaker 02:
Your average survey says even if you're right on the claim construction, you haven't made any showing in your brief that the board is wrong.

[00:37:24] Speaker 02:
You haven't made any showing in your brief that the prior art, this is the point that Judge Raina was raising, I believe, the first point he raised today.

[00:37:32] Speaker 00:
I disagree, Your Honor.

[00:37:33] Speaker 00:
I direct the court to page 17 of our reply brief.

[00:37:36] Speaker 00:
Because in that, on page 17, we have a chart that shows that the references that are raised with participation don't include image data, as image data narrows the patent

[00:37:54] Speaker 00:
in the preamble.

[00:37:55] Speaker 00:
It's talking specifically about capturing a sequence of images to capture the time evolution of the spray and being along a geometric plane.

[00:38:06] Speaker 00:
So none of the references

[00:38:10] Speaker 00:
uses a geometric plane to capture a sequence of images at a predetermined instant in time of a density characteristic that includes the time evolution of the spread.

[00:38:22] Speaker 03:
None of them do that.

[00:38:23] Speaker 03:
Doesn't Gilles Verrouche disclose a planar region of illumination to capture images of a planar region within a flow?

[00:38:33] Speaker 03:
I'm sorry, which reference?

[00:38:35] Speaker 03:
The Degere Abouche.

[00:38:38] Speaker 03:
I'm not sure.

[00:38:39] Speaker 03:
The Jurovich, the Jurovich.

[00:38:42] Speaker 00:
The Jurovich does not capture any sequence of images to characterize the time evolution of the spray, which is what the Prevarus III court found to be limiting in its decision.

[00:38:59] Speaker 00:
There's no disclosure whatsoever that anything like that is happening before you even get to what a long at least one geometric plane means.

[00:39:10] Speaker 00:
You don't even have to reach that question for Deljuravish, because they're not capturing, disclosing, or even addressing in any way the time evolution.

[00:39:19] Speaker 03:
What does a camera do in that reference?

[00:39:20] Speaker 03:
I'm sorry?

[00:39:21] Speaker 03:
What does the camera do in that reference?

[00:39:24] Speaker 00:
In Deljuravish?

[00:39:25] Speaker 03:
Yes.

[00:39:27] Speaker 00:
It's filming what they're doing.

[00:39:30] Speaker 00:
But they're not capturing a time evolution of the spray.

[00:39:34] Speaker 00:
In that case, it's a steady flow.

[00:39:37] Speaker 00:
It's just on.

[00:39:39] Speaker 00:
There is no time evolution.

[00:39:41] Speaker 00:
And again, what you have to do is go back to the specification.

[00:39:44] Speaker 00:
And I addressed the court to the pacing technologies case.

[00:39:47] Speaker 00:
It came out this year.

[00:39:48] Speaker 00:
Pacing technology talks explicitly about disavowal.

[00:39:52] Speaker 00:
When you look at the specification, you look at the intrinsic record.

[00:39:56] Speaker 00:
There is nothing anywhere that talks about anything other than a geometric plane.

[00:40:02] Speaker 00:
The only time it doesn't.

[00:40:03] Speaker 00:
You're well over your time, Ms.

[00:40:05] Speaker 00:
Brina.

[00:40:05] Speaker 01:
So we're going to have to close for today.

[00:40:07] Speaker 01:
Thank both Kelsa for their argument.