[00:00:05] Speaker 01: 15, 1580, Alfred E. Mann Foundation against the Cochlear Corporation. [00:00:11] Speaker 01: Mr. Jakes. [00:00:13] Speaker 02: Good morning. [00:00:14] Speaker 02: May it please the court? [00:00:16] Speaker 02: Claim 10, which is the focus of our appeal and the only claim that was found to be infringed in the judgment, requires displaying voltage. [00:00:26] Speaker 02: Cochlear systems measure voltage across the electrodes but display only impedance, not the voltage. [00:00:32] Speaker 02: So there's no literal infringement, and the district court should have granted judgment on Claim 10. [00:00:38] Speaker 02: This case turns on claim construction. [00:00:40] Speaker 02: The entire claim has to be interpreted in context, not just certain words in isolation. [00:00:46] Speaker 02: And when the claim is read as a whole, it requires displaying a voltage measurement, regardless of whether impedance is also displayed. [00:00:54] Speaker 02: You have to go through the various parts of Claim 10 to arrive at that conclusion. [00:00:59] Speaker 02: You can't just look at one term. [00:01:02] Speaker 02: For example, the measurement of the voltage, it takes place in the implant. [00:01:08] Speaker 02: And once measured, the results of the voltage measurements are used to generate stimulator status indicating signals. [00:01:17] Speaker 02: They're then transferred to the external receiver. [00:01:20] Speaker 02: Then the stimulator status indicating signals are processed into processed status indicating signals. [00:01:27] Speaker 03: And then the claim calls for displaying said, [00:01:30] Speaker 03: process status indicating signals? [00:01:33] Speaker 02: It does. [00:01:33] Speaker 02: But before you get to that, it tells you what those process status indicating signals are. [00:01:38] Speaker 02: First, they have to convey information about the status of the implanted stimulator. [00:01:44] Speaker 02: And second, they have to include the measurements that were made within the implanted stimulator. [00:01:49] Speaker 02: So that's before you get to displaying. [00:01:51] Speaker 02: Then you have to display those signals. [00:01:53] Speaker 02: And that requires displaying voltage because those signals include the voltage measurements [00:01:59] Speaker 02: that were made within the implanted stimulator. [00:02:01] Speaker 02: The whereby clause confirms that. [00:02:03] Speaker 02: There was a finding by the district court judge that it didn't provide any additional restrictions because the claimant already required that the signals obtained by testing the stimulator have to be displayed. [00:02:21] Speaker 02: If you go through the sequence, then the whereby clause merely confirms that. [00:02:25] Speaker 02: If you conclude, as apparently the district judge did, the display of voltage is not required before that point, that the process status indicating signals don't include the voltage, then the whereby clause makes clear that that's a limitation. [00:02:38] Speaker 02: So either way, the voltage measurements have to be displayed. [00:02:42] Speaker 03: I guess we have a figure six, though, in the patent, right? [00:02:45] Speaker 03: Yes, you do. [00:02:46] Speaker 03: And it does show, at least with respect to that embodiment, we could be displaying a lot of different things. [00:02:52] Speaker 03: You could be displaying voltage measurements. [00:02:55] Speaker 03: displaying impedance values, current levels. [00:03:00] Speaker 03: That's right. [00:03:01] Speaker 03: It looks like the district court's construction. [00:03:05] Speaker 03: Let's face it, who really knows what a process status indicating signal is? [00:03:10] Speaker 03: But at the very least, it has enough wiggle room inside that. [00:03:16] Speaker 03: term that it's not restricted to just a voltage measurement. [00:03:21] Speaker 03: And it looked like from claim 10, the applicant understood how to recite measurement of voltage because that's what, in fact, earlier in the claim he recited. [00:03:32] Speaker 03: So I guess there's a journey in the claim, right? [00:03:38] Speaker 03: There is. [00:03:38] Speaker 03: Between a measurement of a voltage all the way down to ultimately, after a lot of processing, [00:03:44] Speaker 03: displaying something called the process status in the case. [00:03:47] Speaker 02: That's right. [00:03:48] Speaker 03: So I guess I'm left with why isn't this an appropriate construction in light of the specifications, contemplation of displaying all sorts of different things, and the fact that the claim itself doesn't call for displaying the voltage measurement. [00:04:06] Speaker 02: Well, Your Honor, I disagree. [00:04:07] Speaker 02: I believe the claim does call for it, and it calls for it in two places. [00:04:11] Speaker 02: one where it defines what the processed status indicating signals are and in that case they have to include the measurements and those measurements refer back up to the voltage measurements. [00:04:23] Speaker 02: And then those signals have to be displayed and the whereby clause confirms that that includes the results of the measurements. [00:04:32] Speaker 02: So it's repeated there in two places that the process status indicating signals have to include those measurements. [00:04:39] Speaker 02: Now I agree the specification is broader. [00:04:41] Speaker 02: There are other embodiments. [00:04:43] Speaker 02: But these claims were narrowed. [00:04:45] Speaker 02: They were narrowed during prosecution. [00:04:48] Speaker 02: to recite voltage and to recite that these signals were displayed and the signals were limited to voltage. [00:04:56] Speaker 02: I admit it's a narrow claim, but that was their choice. [00:05:01] Speaker 02: The examiner's reasons for allowance confirm that that's what the claims mean. [00:05:06] Speaker 02: You go through this journey and I will say these claims are probably not the best written, but when you get through that journey and through the prosecution history, [00:05:16] Speaker 02: The examiner found, he said, the prior art does not show or suggest the measuring of the electrode voltage for external display. [00:05:25] Speaker 02: I don't think anything could be clearer as to what the claims mean and what those amendments meant. [00:05:31] Speaker 02: So there is no literal infringement because Cochlear's devices do not display voltage. [00:05:38] Speaker 02: They display impedance. [00:05:39] Speaker 02: And while impedance may be calculated from voltage, it's not the same thing. [00:05:43] Speaker 02: And they chose to limit their claimed embodiment [00:05:46] Speaker 02: to voltage. [00:05:47] Speaker 03: I guess getting back to your whereby clause argument, I mean assuming for the moment that the whereby clause in fact is a limitation that deserves patentable weight, why can't the display of the impedance value provide [00:06:07] Speaker 03: information or about the results of the voltage measurement because as we all know there's a very clear relationship between voltage and impedance. [00:06:20] Speaker 02: It requires more than that. [00:06:22] Speaker 02: The whereby clause requires, well first of all the clause is displaying the signals, whereby the status of the implanted stimulator may be made known. [00:06:34] Speaker 02: But that has to include the results of the measurements made within the implanted stimulator. [00:06:41] Speaker 02: So those results, that refers to voltage. [00:06:43] Speaker 02: Those measurements are voltage. [00:06:44] Speaker 02: Impedance isn't measured. [00:06:47] Speaker 02: And the claims were limited in that way. [00:06:49] Speaker 02: So the whereby clause specifically refers to the measurements made within the implanted stimulator. [00:06:56] Speaker 02: And that has to be voltage, because those are the measurements that are made. [00:07:00] Speaker 02: So there is no literal infringement. [00:07:02] Speaker 02: Cochlear's devices don't display voltage simply knowing what the current is, even if that were, there's no evidence that the current was known and so even under those circumstances there can't be an infringement. [00:07:16] Speaker 02: And the doctrine of equivalence as well, this prosecution history is stoppable here. [00:07:23] Speaker 02: AMF distinguished this Claim 10, if you agree with our interpretation that it requires displaying voltage, [00:07:31] Speaker 02: They distinguish claim 10 at the point of the exact point of difference between the claim and our system. [00:07:38] Speaker 02: And that's displaying the voltage measurement. [00:07:41] Speaker 02: It's their burden to show that there wasn't any estoppel, that the prosecution history doesn't have another objectively. [00:07:48] Speaker 03: Just so I understand, the amendment that added the display limitation was in response to an indefiniteness rejection. [00:07:54] Speaker 02: There was also prior rejection. [00:07:57] Speaker 02: And the amendment says, [00:07:58] Speaker 02: that the claims should be in shape to be allowed over the prior art as well. [00:08:02] Speaker 02: But whether or not it's indefiniteness or prior art, it's a reason related to patentability and that can raise an estoppel. [00:08:10] Speaker 02: Even if there are multiple reasons in the prosecution, as long as there is one that is related to it, it's not tangential. [00:08:17] Speaker 02: And I don't see how you can find that this amendment was tangential. [00:08:21] Speaker 03: Wouldn't it be tangential if the examiner said, I don't understand what you're doing with all these signals. [00:08:26] Speaker 03: Please explain. [00:08:27] Speaker 03: And then the person came back with an amendment saying, OK, what we're going to do with these signals is we're going to display them. [00:08:35] Speaker 03: And then now we're going to fight over whether impedance value is the equivalent of a voltage value. [00:08:42] Speaker 03: It feels like there's an argument why it would be tangential. [00:08:46] Speaker 02: Judge Chen, if that were the case, there might be an argument as to whether or not it was tangential. [00:08:51] Speaker 02: 112 rejections can result in estoppels, and it would depend on the particular factual circumstances. [00:08:59] Speaker 02: But that's not what we have here. [00:09:00] Speaker 02: We have the examiner saying that the prior art doesn't show or suggest measuring the electrode voltage for external display. [00:09:09] Speaker 02: How can that be tangential when that's the way the examiner interpreted the amendment? [00:09:16] Speaker 01: OK. [00:09:16] Speaker 01: Let's hear from the other side because we have a cross appeal as well. [00:09:22] Speaker 01: Mr. Peterson. [00:09:33] Speaker 00: May it please the court. [00:09:34] Speaker 00: What the Alfred Mann Foundation asked the court to do in this case is to uphold infringement of the 916 patent. [00:09:41] Speaker 00: And I think if you uphold as to either claim 1 or claim 10, you can then move on to reinstate the damages and to reinstate the willfulness verdict. [00:09:49] Speaker 00: And if the court has a problem with that roadmap, then I think you get to the 691 indefiniteness issue. [00:09:55] Speaker 04: How is the damages issue before us? [00:09:57] Speaker 04: There's no final judgment on damages. [00:09:59] Speaker 00: Your Honor, there is a final judgment within the context of 1292C2, because what the court did is it specifically... That would be for the liability and validity determination. [00:10:13] Speaker 00: Well, but the court included in its judgment a recitation with respect to the issue of vacating the damage award as part of the judgment it entered. [00:10:22] Speaker 04: And if you look at 1292- We're not bound by the district court's recitation, though. [00:10:26] Speaker 04: We have to apply the law. [00:10:27] Speaker 00: I understand. [00:10:27] Speaker 04: Whether there's an actual final judgment. [00:10:30] Speaker 04: And I recognize we have an odd final judgment statute that allows appeal before the case is always over. [00:10:37] Speaker 04: But it doesn't allow piecemeal appeals when damages aren't final. [00:10:42] Speaker 00: Well, but the Major at Toys case of this court says that there is a final, when all you have left to do is an accounting, and if the issue of damages has been determined before, that does not preclude jurisdiction under 1293. [00:10:54] Speaker 04: Right, which is why we have jurisdiction over the cross appeals about infringement and invalidity and the like. [00:11:02] Speaker 04: But we still don't have a final decision as to damages, because it was vacated. [00:11:07] Speaker 04: Let me ask you this hypothetical. [00:11:09] Speaker 04: Suppose we have all the facts here, and the district court denied the J-Mall, did everything else it did here, and vacated the damages rewards, and the parties [00:11:20] Speaker 04: on their own decided, we have no arguments whatsoever with the merits that we want to bring to the appeals court. [00:11:26] Speaker 04: But we want to appeal the vacatur of damages now, rather than await for a final damages award. [00:11:33] Speaker 04: Do you think you could do that? [00:11:35] Speaker 00: I think under the Major Ed Toys case, which says that the finality principle of 1292C is broad enough to include a case [00:11:42] Speaker 00: where damages has already been tried, but there were residual attorney's fee issues. [00:11:46] Speaker 04: And I also think it's consistent with- But that's not a residual attorney fee issue. [00:11:50] Speaker 04: That's a damages issue. [00:11:51] Speaker 00: But the court decided that the damages issue is part of what is encompassed within the final judgment entered under 1292C2 in major at Toys. [00:12:00] Speaker 03: And it's consistent with what- Don't we have a subsequent opinion after- [00:12:03] Speaker 03: majorette toys called Orenstein or something like that? [00:12:06] Speaker 00: You've got two, Favalla and Orenstein. [00:12:09] Speaker 00: Neither of them have retreated from the case. [00:12:11] Speaker 00: Both are distinguishable because neither involved a judgment of patent infringement, neither upset the principle of the case, which was that if damages were decided ahead of time, they would be included within the jurisdiction. [00:12:24] Speaker 00: And they talk about pending jurisdiction in the subsequent Swint case. [00:12:28] Speaker 00: But this isn't a pending jurisdiction principle. [00:12:30] Speaker 00: It's an interpretation of the statute, I think. [00:12:33] Speaker 00: So I'd like to go back for a minute and talk about claim 10, if the court would permit me, and respond to my colleague. [00:12:41] Speaker 00: Here, the key thing, if you look at this claim construction, it would have been the easiest thing in the world to say that there was going to be a display of damages. [00:12:49] Speaker 00: I'm sorry, a measured numerical voltage number, if that was what was intended. [00:12:56] Speaker 00: There's a whole series of processing steps which are clearly contemplated within the context of this claim. [00:13:02] Speaker 00: with respect to the whereby clause. [00:13:04] Speaker 00: Let's be very clear. [00:13:05] Speaker 00: What the whereby clause talks about when it speaks of the result of the measurement is it talks about the consequence of practicing the patented method. [00:13:14] Speaker 00: And that's consistent with what the court's cases talk about when they say whereby clauses are not ordinarily limiting clauses. [00:13:21] Speaker 00: In addition, my colleague talks about this idea that there is measured information about the measurement. [00:13:29] Speaker 00: But let's keep in mind if you step up to step nine, what's important is that what is being explored is conveying information regarding the status of the implanted stimulator or information regarding the measurements. [00:13:43] Speaker 00: Nothing about that success suggests a numeric value. [00:13:46] Speaker 03: But getting back to the whereby clause, I mean, the whereby clause says essentially whereby the results of the measurements made within the implanted stimulator may be made known. [00:13:59] Speaker 03: I understand that the term process status indicating signal sounds very broad and doesn't necessarily have to be restricted to a voltage measurement. [00:14:08] Speaker 03: But then maybe, just maybe, with your whereby limitation that you added, you arguably backed your way into a requirement that the process status indicating signal [00:14:21] Speaker 03: whatever that is, it actually provides the results of the voltage measurement also be in the display. [00:14:28] Speaker 00: No, Your Honor, it doesn't do that because the result in this context is consequence. [00:14:33] Speaker 00: What is the consequence of doing this process? [00:14:36] Speaker 00: That interprets the claim consistently with Figure 6, as Your Honor pointed out in one of your earlier questions. [00:14:42] Speaker 00: It also interprets the claim consistently with what a doctor wants to know, which is not necessarily a numeric value, but the number [00:14:49] Speaker 00: But the status, that is, is the implanted stimulator working in a proper fashion? [00:14:54] Speaker 00: And then let's jump over for a minute and talk about the amendment process. [00:14:59] Speaker 00: Your Honor, there were two reasons for an amendment. [00:15:02] Speaker 00: One was indefiniteness in that nothing was displayed. [00:15:06] Speaker 00: If you were to get to prosecution history of Staple, I think clearly that's a place where the fact that someone indicates they are going to display process status indicating signals [00:15:16] Speaker 00: That's clearly a place where you would be squarely within the tangential domain. [00:15:20] Speaker 00: But with respect to the examiner's comments, what he was doing was distinguishing prior art. [00:15:26] Speaker 00: First, examiner comments themselves don't limit claim, don't trigger limits under prosecution history estoppel. [00:15:32] Speaker 00: You've got to look at the amendment. [00:15:34] Speaker 00: If you go back and look at the amendment in the examiner's comments in context, they clearly show you that the limitations which were being carried out was first [00:15:43] Speaker 00: a limitation with respect to simultaneous stimulation of the electrodes, and second, real-time display. [00:15:50] Speaker 00: The real-time display is the critical distinctive feature, and you can read the examiner's comment perfectly consistently with that. [00:15:57] Speaker 00: It does not suggest there was any numeric voltage requirement that was imposed in this circumstance. [00:16:03] Speaker 00: I'd like to jump ahead and talk for a minute about the indefiniteness issues. [00:16:09] Speaker 00: Because obviously, if you have a concern about jurisdiction, if you agree with us on the indefinite issues, you get the damage problem back. [00:16:18] Speaker 00: Because you've got even what would be a 1295 final judgment, I think, in that circumstance, Judge Hughes. [00:16:24] Speaker 00: First you have the matter of the Ohm's law. [00:16:29] Speaker 00: issue that is raised with respect to the indefinite issue on claim one of the 616 patent. [00:16:37] Speaker 00: The judge made a fundamental mistake here in that he decided that there was an inadequate means plus function disclosure because Ohm's law wasn't specified. [00:16:46] Speaker 00: It doesn't have to be. [00:16:47] Speaker 00: It doesn't have to be set out in prose. [00:16:51] Speaker 00: That's a point the court made in the Typhoon case. [00:16:56] Speaker 00: And so that was an error the court made. [00:16:58] Speaker 00: But there's even a more fundamental problem with what the court did. [00:17:02] Speaker 00: And that is that this case with respect to the necessity of a means plus function type disclosure and algorithm disclosure falls within the CATS exception because you could display voltage. [00:17:17] Speaker 00: There's undisputed testimony in the case that if you displayed voltage you would need no algorithm. [00:17:22] Speaker 00: And so the determination of indefiniteness with respect to this claim was clearly erroneous on the court's part. [00:17:29] Speaker 00: And with respect to the court's alternative suggestion that there was some different ways you could calculate Ohm's law, the record is clear that fundamentally it's a single formula. [00:17:39] Speaker 00: It can have minor variations. [00:17:40] Speaker 00: But some variations in how a formula like that are carried out, according to Dr. Young, would be immaterial in this context. [00:17:48] Speaker 00: And hence, the record establishes that the court erred with respect to its indefiniteness determination on that claim. [00:17:55] Speaker 03: Z equals r plus jx, right? [00:17:58] Speaker 03: Yes. [00:17:59] Speaker 03: So you had an expert that said, well, the x would be tiny under these circumstances. [00:18:06] Speaker 00: I think he's immaterial or word to that effect, correctly. [00:18:08] Speaker 03: Did the other side have any evidence? [00:18:10] Speaker 03: No. [00:18:10] Speaker 03: There are testimony that's saying, well, actually, with these cochlear implant systems, the x would be [00:18:17] Speaker 03: No. [00:18:17] Speaker 03: Arguably significant so that it would actually change the impedance value. [00:18:21] Speaker 00: No. [00:18:22] Speaker 00: And the burden was to establish indefiniteness to a clear and convincing degree. [00:18:25] Speaker 00: And there's really no conflict in the evidence with respect to that subject. [00:18:30] Speaker 00: Skipping over to the indefinite issue with respect to the 6-9-1 patent, here this is the inverse logarithmic algorithm. [00:18:40] Speaker 00: The court conceded that the disclosure suggested there was a need for such an algorithm. [00:18:47] Speaker 00: While it was expressed not only in prose, you'll find it in the specification, but most importantly, you'll find it in the diagrams, which both experts agreed, because once the sound is sent outside of the processor, it's clear it has to do an exponential conversion. [00:19:04] Speaker 00: That means both expert agreed that you had to have a logarithmic conversion on the front end. [00:19:09] Speaker 00: That's what the processing step was all about. [00:19:12] Speaker 00: The judge had some concern about whether there was an adequate disclosure of where that occurred. [00:19:16] Speaker 00: But at the claim construction stage, the dispute being whether it was in the processor or the immediately preceding A to D converter, at the claim construction stage, the court, it was construed that the A to D converter number 28 did nothing more than the conversion, and thus did not do any sort of additional processing. [00:19:37] Speaker 03: And so there is- I thought you had an expert that was a little bit equivocal at one point. [00:19:44] Speaker 03: He was asking- It could be done in the A to D converter? [00:19:46] Speaker 03: Or it could be done in the microprocessor. [00:19:49] Speaker 00: As a hypothetical matter, he was asked that. [00:19:51] Speaker 00: And he testified that here, it's done in the processor. [00:19:54] Speaker 00: And the specification confirms that to be the case here, Your Honor, because whenever we have a conversion being shown that is more than just a conversion, the diagram shows you. [00:20:04] Speaker 00: If you look at 64 and 207 in the steps in the patent, you'll see that. [00:20:09] Speaker 00: And the specification also tells you that all of the processing is done within the processor. [00:20:14] Speaker 00: So if you reinstate those things, I think then we do definitely get back to damages. [00:20:19] Speaker 00: And I don't, yeah, I still think if you look at, yes, Your Honor. [00:20:25] Speaker 04: Can you tell me what you want us to do on willfulness? [00:20:27] Speaker 04: On willfulness. [00:20:28] Speaker 04: Do you want us to, I assume you just want us to vacate and send it back because Halo and Stryker have changed the landscape for what the district court should do. [00:20:38] Speaker 00: At a minimum, you do that, but I think here you should do more. [00:20:41] Speaker 04: I think here... You're going to ask for more than you're going to get probably, but go ahead. [00:20:45] Speaker 00: Well, but you asked me what I'd like you to do. [00:20:48] Speaker 00: What you should do in this case is the verdict is based on instructions better than the defendant deserved. [00:20:57] Speaker 00: Those instructions under subjective willfulness, totally satisfied [00:21:01] Speaker 00: at the totality of the circumstances sort of inquiry. [00:21:05] Speaker 04: Even though the Supreme Court just told us that this is a question for the district court, you want us to make that determination under this new standard [00:21:14] Speaker 04: that the district court should make in the first place? [00:21:16] Speaker 00: Well, the district court still gets to take step two. [00:21:18] Speaker 00: We never got to that step. [00:21:20] Speaker 00: And here, step one was tried to the jury without objection and tried and tried. [00:21:25] Speaker 00: And I don't think the Supreme Court has cleared up how you deal with that first step in terms of decision making. [00:21:29] Speaker 04: What do you mean by step one and step two? [00:21:31] Speaker 00: Step one being the determination of willfulness as a factual matter. [00:21:35] Speaker 00: So here that was tried, and there's ample evidence to support it. [00:21:40] Speaker 00: And the only reason the court gave for setting aside subjective willfulness has nothing to do with claim 10. [00:21:45] Speaker 04: So you think our old two-part subjective objective test survives halo and striker? [00:21:51] Speaker 00: I don't know, Your Honor. [00:21:53] Speaker 00: I don't think that's true at all. [00:21:55] Speaker 00: What I do think is that in a case where willfulness is tried under instructions at subjective level, which asked an examination of the totality of the circumstances, [00:22:05] Speaker 00: That survives Halo's striker. [00:22:07] Speaker 00: And in a jury having made that determination, you should keep it and send the case back for the step two district court discretion under 284. [00:22:16] Speaker 03: I would expect that you would have said that Halo makes clear that defenses to infringement or validity that are generated during the litigation [00:22:29] Speaker 03: are no longer relevant for purposes of defending a willfulness allegation. [00:22:34] Speaker 03: And all that matters is whether, at the time of knowing about the patent, did they at that time, pre-complaint, have any understanding of a good, reasonable defense against infringement. [00:22:48] Speaker 00: I agree with you, Your Honor. [00:22:50] Speaker 03: And so therefore, that would be something that would need to be explored below, because the district court [00:22:56] Speaker 03: didn't have that appreciation of the law at that time because that wasn't the law. [00:23:01] Speaker 00: It's clear that both of the defenses that the defense the district court imposed under the objective prong did not come into existence until five years after the lawsuit was filed. [00:23:09] Speaker 00: So I think you can finish that work here. [00:23:11] Speaker 00: There's nothing to remand to reconsider with respect to that. [00:23:14] Speaker 00: I'm just suggesting that the way subjective willfulness was tried, the standard the jury considered was essentially the halo standard of substantial totality of the circumstances. [00:23:25] Speaker 00: and that the court can preserve that decision. [00:23:28] Speaker 00: I present my time. [00:23:30] Speaker 01: Thank you, Mr. Peterson. [00:23:31] Speaker 01: We'll save you rebuttal time, and then Mr. Jakes. [00:23:39] Speaker 02: Thank you. [00:23:39] Speaker 02: If I could start with indefiniteness. [00:23:42] Speaker 02: On the 616 Claim 1, you have to look at the claim language. [00:23:50] Speaker 02: It's a processor means for processing the status indicating signals, plural, to derive information about the operation of the stimulator. [00:24:00] Speaker 02: How do we get to Ohm's law from that? [00:24:04] Speaker 02: There isn't an algorithm that corresponds to this particular function of processing the status indicating signals. [00:24:11] Speaker 02: They have come up with Ohm's law and said, well, that would be one thing you could do. [00:24:16] Speaker 02: Well, OK. [00:24:18] Speaker 02: But the scope of the claim is much more than that. [00:24:21] Speaker 02: It talks about processing these signals. [00:24:23] Speaker 01: But what do you think should have been included? [00:24:27] Speaker 01: This is of course a constant problem as to where the lines are drawn in terms of the programming and so on for these steps. [00:24:37] Speaker 02: I agree, Your Honor. [00:24:39] Speaker 02: Something should have been disclosed. [00:24:41] Speaker 02: There's nothing. [00:24:41] Speaker 02: There's nothing that describes the processing that goes on. [00:24:44] Speaker 02: in this microprocessor that corresponds to processing the signals. [00:24:49] Speaker 01: Did they say that this is just standard procedures? [00:24:53] Speaker 02: No, there is something clearly that is going on because one of the experts describes such things as aligning, formatting, averaging, all types of things that could go on to process the signals. [00:25:06] Speaker 02: But there's none of that that's disclosed. [00:25:08] Speaker 02: So just focusing on Ohm's law and saying, well, that's enough of an algorithm, it really doesn't satisfy the claims. [00:25:14] Speaker 02: Same with AMF's argument that simply measuring voltage and passing voltage through. [00:25:20] Speaker 03: Well, I guess if we were just to go to figure six issues and the possible things that could end up being a processed status indicating signal, one could be impedance, and then that's where Ohm's law comes in. [00:25:35] Speaker 03: One could be voltage, and we already have the voltage measurement, so it's really just getting passed through. [00:25:40] Speaker 03: And I think the point the other side's trying to make is, [00:25:44] Speaker 03: there's no algorithm in that circumstance that actually needs to be disclosed because you wouldn't be using any algorithm. [00:25:53] Speaker 03: And so there's no structure that needs to be actually disclosed when you've already got the voltage measurement to display the voltage measurement. [00:26:03] Speaker 03: So I guess what I'm trying to figure out is you're [00:26:08] Speaker 03: You're trying to get me to be concerned. [00:26:11] Speaker 03: What should I be concerned about? [00:26:13] Speaker 02: Well, let me address the voltage, transmitting to voltage issue first. [00:26:19] Speaker 02: That doesn't meet the claim language. [00:26:21] Speaker 02: The claims require processing the signals. [00:26:22] Speaker 02: That's not processing. [00:26:24] Speaker 02: That's just passing it through. [00:26:25] Speaker 02: So if no algorithm is required, that's fine because it doesn't correspond to the claim language of processing the status indicating signals. [00:26:34] Speaker 02: I did mention it says signals. [00:26:35] Speaker 02: They're plural. [00:26:36] Speaker 02: So simply doing one of these, whether it's calculating impedance, is not necessarily enough. [00:26:43] Speaker 02: The scope of that particular limitation is broader than that. [00:26:47] Speaker 02: It has to have an algorithm that corresponds to the entire function there. [00:26:51] Speaker 02: And simply coming up with one, that's a partial algorithm at best. [00:26:56] Speaker 02: The voltage to voltage, not an algorithm because it doesn't actually process. [00:27:01] Speaker 02: But the Ohm's law, it's not anywhere mentioned. [00:27:04] Speaker 02: We're talking about claim definiteness, not enablement, not whether someone would know how to do this. [00:27:11] Speaker 02: But what's the scope of the claim? [00:27:13] Speaker 02: What corresponds to the processor means for processing these signals? [00:27:17] Speaker 02: What is the microprocessor doing? [00:27:18] Speaker 02: It's a black box. [00:27:20] Speaker 02: You have some inputs that are described, some outputs are described. [00:27:23] Speaker 02: They say it could be very simple. [00:27:26] Speaker 02: The patent doesn't say what it is, and that's really what the problem is. [00:27:30] Speaker 03: If it said Holmes law, would that be good enough for it? [00:27:33] Speaker 02: If it said this function for processing the status indicating signals, the function corresponding to that is computing impedance, calculating impedance using Ohm's law, we might have an issue. [00:27:46] Speaker 02: But it doesn't say anything like that. [00:27:48] Speaker 01: It's just generic. [00:27:49] Speaker 01: But their expert said that any experienced person would know that. [00:27:54] Speaker 02: Your Honor, we're not talking about enablement. [00:27:57] Speaker 02: We're not talking about whether somebody could do this. [00:27:58] Speaker 02: We're talking about the scope of the claim. [00:28:00] Speaker 02: And how do we know what the microprocessor has to do? [00:28:03] Speaker 02: It could do anything. [00:28:05] Speaker 02: And simply going in and saying, well, here are some of the results that the processor achieves. [00:28:10] Speaker 02: Therefore, we can come up with an algorithm. [00:28:13] Speaker 02: That's backwards. [00:28:14] Speaker 02: We need to know what the processor is doing. [00:28:17] Speaker 02: That's what the law requires. [00:28:19] Speaker 02: And the same for the other, the 691 patent as well. [00:28:23] Speaker 02: It requires generating data indicative of an audio signal. [00:28:28] Speaker 02: That corresponds to the microprocessor, so there has to be some programming. [00:28:33] Speaker 02: The problem is there's nothing about inverse logarithmic conversion that's described. [00:28:38] Speaker 02: That's just their expert saying, well, someone would know to do that. [00:28:40] Speaker 03: Did your expert agree that you would use logarithmic conversion on this end because you go exponential on the back end? [00:28:48] Speaker 02: Not necessarily. [00:28:49] Speaker 02: So there are many things that could be done. [00:28:52] Speaker 02: But I'm just trying to figure out if your expert actually agreed to that. [00:28:56] Speaker 02: I believe he did agree that that could be done. [00:28:58] Speaker 02: But I don't think it's limited to that. [00:29:00] Speaker 02: And there are many ways to actually do that function. [00:29:02] Speaker 02: But we don't actually know that the microprocessor is doing that function. [00:29:07] Speaker 02: It could be in the A to D converter. [00:29:10] Speaker 02: And if that's the case, then where is the structure corresponding to generating data indicative of an audio signal that has to be in the microprocessor if it's being done somewhere else? [00:29:21] Speaker 02: We have the same problem. [00:29:22] Speaker 02: We have just this general function of generating data and nothing that corresponds to that. [00:29:29] Speaker 02: And what they have done is they've picked out something and said, well, somebody would know to do this somewhere. [00:29:34] Speaker 02: It has to be in the microprocessor. [00:29:36] Speaker 02: And they go through all these steps. [00:29:38] Speaker 02: But it's indefinite, as we're talking about. [00:29:40] Speaker 02: Not whether somebody could figure out a way to do it, but what are the scope of these claims? [00:29:44] Speaker 02: And what corresponds to this particular means? [00:29:48] Speaker 02: We don't know. [00:29:48] Speaker 02: It's just treated as a black box. [00:29:51] Speaker 02: On the jurisdictional question on damages, there's no case that says you can do what the cross-appellants are trying to do here. [00:30:01] Speaker 02: The Majorette Toys case, it has been considered dicta. [00:30:06] Speaker 02: The issue of pendant jurisdiction is not here. [00:30:09] Speaker 02: I don't see how a non-final order, such as a new trial order, gets dragged along by 1292C. [00:30:17] Speaker 02: And finally, back to the [00:30:20] Speaker 02: on our appeal on the display of voltage. [00:30:23] Speaker 02: Council said that the amendment was made to distinguish the prior art based on real-time display. [00:30:32] Speaker 02: Well, there's nothing about real-time in these claims. [00:30:35] Speaker 02: I heard him say that it's easy to say display of voltage. [00:30:39] Speaker 02: Well, it would be easy to say real-time display as well, and that's not in there. [00:30:43] Speaker 02: It's not obvious from [00:30:44] Speaker 02: the prosecution history. [00:30:46] Speaker 03: Quick question on willfulness. [00:30:48] Speaker 03: Yes. [00:30:49] Speaker 03: Was there any evidence presented to the jury that your side had developed the view of this voltage display versus impedance display non-infringement argument before the complaint was filed? [00:31:05] Speaker 02: No, there is no evidence of that. [00:31:08] Speaker 02: But I think that it focuses too much, first of all, on Claim 10, because there was a reason that was given in the correspondence as to why there was no infringement. [00:31:20] Speaker 02: The letter that was sent did not identify any claims. [00:31:23] Speaker 02: It identified products that were not sold in the US, and that was the response. [00:31:28] Speaker 02: It took three years for them to respond. [00:31:32] Speaker 02: I'm not sure what the court should do in all willfulness cases, whether everyone should be sent back. [00:31:37] Speaker 02: But if this court is not planning to send everyone back, this is a case where you can affirm based on what the district court said, because the court found there was no subjective willful infringement. [00:31:48] Speaker 02: He focused on the right time frame, and there's a considerable overlap with what HALO requires. [00:31:53] Speaker 02: There's really nothing left to do other than to decide whether that's an abuse of discretion. [00:31:58] Speaker 02: Otherwise, every case is going to have to be sent back after HALO. [00:32:04] Speaker 01: Any more questions for Mr. Jakes? [00:32:07] Speaker 01: Thank you, Mr. Jakes. [00:32:16] Speaker 01: Thank you. [00:32:16] Speaker 01: Mr. Peterson. [00:32:17] Speaker 00: Thank you, Your Honor. [00:32:18] Speaker 00: With respect to the disclosure on the 616 Claim 1, Ohm's Law, Figure 6 and Table 7, [00:32:27] Speaker 00: are a disclosure of the fact that you have to get to impedance, and that's something which one can readily calculate. [00:32:33] Speaker 00: There's also a reference at line 35, 10 to 15. [00:32:38] Speaker 00: The patent claims use of a tester that computes an impedance measurement based on the voltage measured by the implant and the peak output current. [00:32:45] Speaker 00: And importantly, in its claim construction brief, Cochlear wrote, [00:32:50] Speaker 00: that it does not dispute that the 616 patent describes measuring the voltage and using Ohm's law to calculate an impedance. [00:32:58] Speaker 00: With respect to the argument that there's some sort of differing voltage processing that might go on, I don't think that's ever been argued here before in this case. [00:33:07] Speaker 00: So I really am not in a position to debate about it. [00:33:10] Speaker 00: The point is that if you simply pass along the voltage measurement [00:33:15] Speaker 00: You fall within the cat's exception, and you don't have to do any kind of processing, which means that the indefinite finding has to be set aside with respect to that claim. [00:33:24] Speaker 03: But the claim function requires some kind of processing of the status indicator. [00:33:27] Speaker 00: I beg your pardon? [00:33:28] Speaker 03: I'm sorry. [00:33:28] Speaker 03: The plain language of the claim calls for processing of the status indicating signal. [00:33:35] Speaker 00: It does. [00:33:36] Speaker 00: And I think there's filtering that happens. [00:33:39] Speaker 00: in order to help facilitate the display. [00:33:42] Speaker 00: And that would be true even as to a voltage display. [00:33:44] Speaker 00: But the record, Your Honor, I didn't make my point very well, the record doesn't really develop that particularly because it wasn't disputed here before. [00:33:53] Speaker 00: This is an argument which has been presented at the first court here. [00:33:58] Speaker 00: The inquiry then is what would one skilled in the art understand from the information that is found in the specification. [00:34:05] Speaker 00: And this court's case is the all-voice case is a good example. [00:34:09] Speaker 00: You didn't require pros. [00:34:11] Speaker 00: You didn't require a specific designation of a principle or an equation. [00:34:17] Speaker 00: You looked primarily at charts. [00:34:20] Speaker 00: And here you can look at figures. [00:34:21] Speaker 00: You can look at what I've quoted you. [00:34:23] Speaker 00: And you can look at the concession that's been made. [00:34:25] Speaker 00: And I think that ought to be sufficient to establish that the indefiniteness finding here needs to be set aside. [00:34:33] Speaker 00: Turning to indefiniteness with respect to the 691 patent, with respect to [00:34:38] Speaker 00: In response to one of Judge Chen's questions, you asked about what their experts said in this case. [00:34:45] Speaker 00: Dr. Stevenson testified at appendix 2592 and 93 that you could determine that there was a logarithmic equation that had to be done because once you got through the processor, you knew that it had to become exponential on the other side. [00:35:03] Speaker 00: So we have a situation where the experts are in agreement [00:35:06] Speaker 00: with respect to the necessity for engaging in this sort of event, this occurrence. [00:35:14] Speaker 03: But then there was a lot of testimony below that this is not like a V equals IR situation. [00:35:20] Speaker 03: There's a lot of different kinds of logarithmic algorithms that could be employed. [00:35:24] Speaker 00: And that brings us then, I think, to the court's case law, Your Honor, which says that you [00:35:31] Speaker 00: There's a wonderful statement in the Typhoon case, which is you don't have to tell expert people how to do things and to burden specifications with unnecessary detail. [00:35:43] Speaker 00: There can be implementation choices that have to be made. [00:35:47] Speaker 00: I think one of the most interesting cases, to my way of thinking, is if you read Judge Bryson's opinion in the aristocrat case, where he's talking about the earlier Dossel case, and he's pointing out that if you tell a person skilled in the art [00:36:01] Speaker 00: generally how to go about accomplishing something. [00:36:04] Speaker 00: The fact that he has mathematical choice or methods by which to do it is not a reason to find indefiniteness. [00:36:10] Speaker 00: And part of the reason for that is that what you're concerned about with indefiniteness is to avoid generic claiming. [00:36:17] Speaker 00: That's not going to happen here because there's other ways you could process this sound wave, linear fashion for example, so you wouldn't create that problem in the first place. [00:36:29] Speaker 00: You don't implicate the concerns that underlie the indefinite principles. [00:36:34] Speaker 00: And also, this is not the point of innovation of this technology. [00:36:40] Speaker 00: We're starting to talk about something which is akin to the Intel case, where the court said that if you have a patent which calls for use of a chair, you don't have to have a lot of discussion about how the chair might be put together by an expert. [00:36:54] Speaker 00: And this is squarely in that situation. [00:36:58] Speaker 00: With respect to the jurisdictional point, I'd like to just return to another point that I neglected to mention, which is that we also have here a 54B certification from the district court. [00:37:10] Speaker 00: And as we pointed out, the Ninth Circuit, the regional circuit law that is applicable on this kind of a question, [00:37:16] Speaker 00: has a very broad view of the existence of jurisdiction under 54B when you have residual damage inquiry that has to be conducted in this case. [00:37:27] Speaker 03: Isn't 54B about having multiple claims in a case and then splitting claims into two buckets and then maybe allowing completed litigation on some of the claims to go forward? [00:37:39] Speaker 03: You're correct as a general matter, Your Honor. [00:37:42] Speaker 03: Well, that's the language of 54B. [00:37:44] Speaker 00: You're correct. [00:37:45] Speaker 00: All I'm saying is that if you look at the way the Ninth Circuit has interpreted that principle in the case we've cited, and you've certainly got a certification from the district court, this is the kind of situation which fits within the rule, which is this court [00:38:00] Speaker 00: Congress clearly intended under 1292C2 to eliminate the need for proceedings which would be mooted by an appellate decision. [00:38:08] Speaker 00: And that's where we are, if we are correct, that the damages flow from any one of these claims, as I think the record establishes. [00:38:16] Speaker 00: And we didn't have a chance to talk too much about today, but you have the benefit of the briefs. [00:38:21] Speaker 00: So unless the court has any other questions, I see I've run over my time. [00:38:24] Speaker 01: Anything else that you wanted to ask? [00:38:26] Speaker 00: Thank you. [00:38:27] Speaker 01: Thank you, Mr. Peterson, Mr. Jacobson. [00:38:29] Speaker 01: The case is taken into submission.