[00:00:21] Speaker 05:
Our last argument of the day, Kismar versus Echo Brands Corporation, appeal number 15-1715.

[00:00:31] Speaker 05:
Mr. Silberscher?

[00:00:40] Speaker 04:
Yes, that's correct, Silberscher.

[00:00:42] Speaker 04:
Silberscher, okay.

[00:00:43] Speaker 04:
Whenever you're ready.

[00:00:45] Speaker 04:
Thank you.

[00:00:47] Speaker 04:
May it please the court, this case involves two patents and

[00:00:51] Speaker 04:
Unless the court has a preference, I'm going to begin with the 140 patent, in which the district court found that the elastic pivot, which is recited in claim 20 of the 140 patent, was not adequately described in the parent application.

[00:01:05] Speaker 04:
Now, to begin with, what's important is that there was no separate markman hearing in this case, but the court appears to have construed the phrase elastic pivot to require two things.

[00:01:15] Speaker 04:
On the one hand, a hinge that is elastic, and on the other hand, a fulcrum that exhibits cantilever bending.

[00:01:22] Speaker 04:
The first important point to note is that the structure of the elastic pivot, namely the hinge and the fulcrum, were not challenged by the district court as not appearing in figure 25 of the 640 patent.

[00:01:33] Speaker 04:
Instead, what the district court found was that the inherent properties of that structure, namely the fact that the hinge is elastic and the fact that the fulcrum exhibits cantilever bending, was not precisely described with those words in the earlier apparent application.

[00:01:50] Speaker 05:
So is it your view that

[00:01:51] Speaker 05:
the continuation in part application that ultimately actually expressly described an elastic joint, and the word elastic joint of course didn't exist in the original application, that the CIP application actually didn't provide any new content?

[00:02:14] Speaker 04:
Our view is that what was disclosed in the earlier parent application was the hinge.

[00:02:18] Speaker 05:
So theoretically, the CIP could have been just a continuation application?

[00:02:23] Speaker 04:
Well, with respect to claim 20, it could have been a continuation application.

[00:02:26] Speaker 04:
That's the only asserted claim in this case so far.

[00:02:28] Speaker 04:
And the only challenged element, and the element on which the district court found no written description existed, is the elastic pivot.

[00:02:35] Speaker 04:
And with respect to the elastic pivot, to your question, that actual feature could have been part of a continuation application.

[00:02:42] Speaker 05:
I guess why did you add all that new written description and all those new figures?

[00:02:48] Speaker 04:
The fact that inherent properties of what was disclosed in the earlier application was added to elucidate more features of the invention in and of itself is not a sufficient basis to deprive an asserted patent from claiming priority to an earlier patent.

[00:03:05] Speaker 04:
And we cited case law in our briefs to that effect, namely Allergen v. Santos and Kennecutt v. Sera.

[00:03:12] Speaker 04:
So what's important here and what I want to emphasize is what did the district court find was missing?

[00:03:17] Speaker 04:
Not the hinge, not the fulcrum.

[00:03:19] Speaker 04:
Rather what was missing was the fact that the hinge was not elastic and the fulcrum did not exhibit cantilever bending.

[00:03:26] Speaker 04:
Going to elasticity, the patent describes that the hinge is located in the back cover and the patent expressly describes that the back cover can be made of cardboard, plastic, or semi-rigid material.

[00:03:39] Speaker 04:
The district court acknowledged

[00:03:41] Speaker 04:
that semi-rigid material is elastic.

[00:03:43] Speaker 04:
And so therefore, on the record, the district court is saying that the very material that the hinge is made out of is elastic.

[00:03:49] Speaker 04:
The district court construed the phrase elastic as being capable of deformation without permanent loss of size or shape.

[00:03:56] Speaker 04:
That was a definition provided by the district court.

[00:03:59] Speaker 04:
The hinge, to the extent that it bends repeatedly over the life cycle of a binder, is itself capable of deformation without permanent loss of size or shape.

[00:04:10] Speaker 04:
The issue here is whether or not this case was warranted to be dismissed on summary judgment.

[00:04:16] Speaker 04:
The issue is whether an issue of fact exists that a hinge that is supposed to bend back and forth over the life cycle of a binder that is described as being made of cardboard, plastic, or semi-rigid material is capable of sustaining deformation without permanent loss of size or shape.

[00:04:32] Speaker 04:
And so to your question, could that elastic feature have been part of a continuation application?

[00:04:37] Speaker 04:
It could have.

[00:04:38] Speaker 04:
Now with respect to the cantilever bending, again it's another inherent property of the structure that was actually disclosed.

[00:04:45] Speaker 04:
We identified in figure 25 of the parent application element 1740C.

[00:04:52] Speaker 04:
We provided a figure comparing figure 25 of the earlier patent with figure 19 of the later patent.

[00:04:59] Speaker 04:
And they both illustrated a fulcrum.

[00:05:01] Speaker 04:
The district court did not find that element 1740C was not a fulcrum.

[00:05:06] Speaker 04:
Instead it found that that fulcrum

[00:05:08] Speaker 04:
lacked, was not expressly described as exhibiting cantilever bending.

[00:05:14] Speaker 04:
But what did the earlier patent describe?

[00:05:17] Speaker 04:
It described that that feature, which we identified as a fulcrum, is made of plastic, which is the same material that the elastic pivot is made out of in the later patent.

[00:05:26] Speaker 04:
And it also described that that feature that we identified as a fulcrum is an area of reduced thickness.

[00:05:31] Speaker 04:
And elsewhere in the patent, in the earlier patent, areas of reduced thickness are expressly described as being flexible.

[00:05:38] Speaker 04:
Taken together, there was sufficient evidence.

[00:05:41] Speaker 04:
And I think we satisfied our burden of production that this feature was flexible.

[00:05:45] Speaker 04:
And to the extent it was flexible, it could bend like a diving board.

[00:05:48] Speaker 04:
And to the extent it could bend like a diving board, there was an issue of fact that that fulcrum exhibits cantilever bending.

[00:05:54] Speaker 04:
And so therefore, should this case have been dismissed on summary judgment without allowing a jury to decide these questions?

[00:06:02] Speaker 04:
Our position is no.

[00:06:04] Speaker 05:
So I guess the idea is even though when you read the original spec,

[00:06:09] Speaker 05:
no one would really think after reading it about cantilevered bending.

[00:06:15] Speaker 05:
It was still somehow necessarily an inherent part of the disclosure.

[00:06:20] Speaker 05:
And so therefore, it's fair to say the inventor had possession of an elastic joint.

[00:06:28] Speaker 04:
An elastic pivot, yes.

[00:06:29] Speaker 04:
An elastic pivot.

[00:06:30] Speaker 04:
First of all, I don't think our position is that people would have thought of it.

[00:06:33] Speaker 04:
The answer that no one would have thought that a piece of plastic that looks like a fulcrum

[00:06:39] Speaker 04:
that is described elsewhere in the patent as being flexible, would not have cantilever bending.

[00:06:43] Speaker 04:
But even so, we want to underscore that the idea of cantilever bending was an inherent property of the structure that was actually disclosed.

[00:06:51] Speaker 05:
Why doesn't the claim just say elastic pivot?

[00:06:55] Speaker 05:
Instead, it says hinge joint or elastic pivot.

[00:06:57] Speaker 05:
Or I think it says elastic pivot or hinge joint, something like that.

[00:07:00] Speaker 04:
Well, before the district court, we took the position that those two structures were the same.

[00:07:04] Speaker 04:
The district court disagreed, and we're not challenging that on this appeal.

[00:07:07] Speaker 04:
So how did the district court construe the phrase elastic pivot?

[00:07:11] Speaker 04:
Again, there was no separate Markman hearing in this case, but the district court appears to have said that the elastic pivot is something different than the hinge joint, namely it has an elastic hinge and a fulcrum that exhibits cantilever bending.

[00:07:22] Speaker 04:
So whether or not the elastic pivot and the hinge joint are the same is really not at issue on this appeal right now.

[00:07:28] Speaker 04:
What's on issue on this appeal, at least with respect to the 140 patent, is whether or not what the district court said the elastic pivot was

[00:07:36] Speaker 04:
could have been described, was described in the earlier patent, putting aside those inherent properties that are not required to be expressly spelled out.

[00:07:46] Speaker 05:
Do you want to move to the other patent?

[00:07:47] Speaker 04:
Sure.

[00:07:47] Speaker 04:
I'll move to the claim construction issue on the 6-4-0 patent.

[00:07:51] Speaker 04:
So as you recall, this issue dealt with whether or not the column-like thick portions were required to be on opposite sides of the ring.

[00:07:59] Speaker 04:
The district court held that the claim recites column-like thick portions in the plural,

[00:08:04] Speaker 04:
But those two portions must be on opposite sides of the ring.

[00:08:08] Speaker 04:
To begin with, the district court acknowledged in its opinion that its construction was a departure from the plain meaning of the claim term.

[00:08:15] Speaker 04:
It expressly held that the column-like fit portions are not defined expressly in the patent as being on opposite sides of the ring or being separated by the upper thin bow-like portion.

[00:08:25] Speaker 04:
And therefore, to the extent it construed the claim as a departure from its plain meaning, we're in the realm of having to identify either lexicography or disclaimer

[00:08:33] Speaker 04:
to justify that construction.

[00:08:35] Speaker 05:
Well, I have to admit, you know, I read your claim first and, you know, it's the claim is painting a picture of this oblong ring and it's got a upper horizontal portion and then a lower horizontal portion and then it has vertical column like thick portions.

[00:08:56] Speaker 05:
And I'll just be honest, a vision came to my mind as to what this claim was calling for.

[00:09:02] Speaker 05:
And then once I understood what the theory of infringement was, my mind got scrambled.

[00:09:07] Speaker 05:
Because now the vertical portions are actually not on either side of the ring, the claimed ring.

[00:09:14] Speaker 05:
We're stacking the vertical portions on top of each other on one side.

[00:09:18] Speaker 05:
Correct.

[00:09:19] Speaker 05:
And so I did not expect that.

[00:09:22] Speaker 05:
And then when I go back and hunt through the spec, I don't see anything even remotely suggesting that.

[00:09:29] Speaker 04:
Well, I think there is.

[00:09:30] Speaker 04:
embodiments remotely suggesting that.

[00:09:32] Speaker 04:
We identified figure 59, and I think it's important to also go back to what's the purpose.

[00:09:37] Speaker 04:
Figure 59 is located on page 52 of our brief, as well as A0126.

[00:09:45] Speaker 04:
And what's important to note about figure 59 is that the right side of that figure is much bigger than the left side.

[00:09:51] Speaker 04:
And so to the extent that your mind went to this idea of two column-like portions

[00:09:55] Speaker 04:
on each side of the ring, the claim does not actually require two equally sized portions.

[00:09:59] Speaker 04:
And there's a reason for that.

[00:10:01] Speaker 04:
And that reason is what justifies it.

[00:10:04] Speaker 01:
Figure 59, you say the two column-like portions are where?

[00:10:08] Speaker 01:
On the right side, and they're sort of stacked on top of each other?

[00:10:12] Speaker 04:
Figure 59 is described as having plural column-like portions.

[00:10:15] Speaker 01:
And that is because one of the column-like portions is inserted into the other?

[00:10:20] Speaker 04:
Well, our position is that the one on the left side is not a column-like portion.

[00:10:24] Speaker 01:
Well, I understand, but I'm trying to see what your theory is as to where the two column-like portions are in figure 59.

[00:10:31] Speaker 04:
They would be stacked on top of one another.

[00:10:33] Speaker 01:
And one is the part that is going into the other, right?

[00:10:37] Speaker 04:
The thin one going into the thick one.

[00:10:39] Speaker 04:
No, the thick portions are the column-like thick portions on the right side.

[00:10:43] Speaker 01:
Well, you're not helping me by saying, when I ask you what are the two column-like thick portions, you say they are the two column-like thick portions.

[00:10:50] Speaker 01:
Show me in the figure where the two column-like thick

[00:10:54] Speaker 01:
Allow me to finish my question, please.

[00:10:56] Speaker 01:
Show me, in the figure, where the two column-like thick portions are in figure... Let's just take figure 59B.

[00:11:06] Speaker 04:
Our position is that, to the extent there's two column-like thick portions in that figure, they're stacked on top of each other inside of the figure.

[00:11:15] Speaker 03:
I can see your argument in 59A, but I don't see it in 59B.

[00:11:19] Speaker 04:
The figure 59A and B are the same ring.

[00:11:22] Speaker 03:
They're not the same drawing.

[00:11:24] Speaker 04:
Well, they're the same ring.

[00:11:25] Speaker 04:
One is in the compressed state, and one is in the expanded state.

[00:11:27] Speaker 01:
Right, which is why I was asking, is your argument about the two column-like thick portions that identifies the two parts that get joined together in figure 59B?

[00:11:42] Speaker 01:
But you said no, which surprised me.

[00:11:44] Speaker 04:
Well, because they don't necessarily have to.

[00:11:47] Speaker 04:
They can be the two parts that are joined together, but the specification is not explicit on this point.

[00:11:52] Speaker 01:
Here's where I'm having trouble.

[00:11:55] Speaker 01:
I think we may be passing on another in the night here with the questions and answers.

[00:12:00] Speaker 01:
I don't understand why, if you're not saying that the two column-like portions in figure 59A are the portion that gets inserted A, and the portion into which something is inserted B, if those aren't necessarily the two column-like figures,

[00:12:22] Speaker 01:
Then why isn't it fair to say that the column-like figures, there are 10 column-like features on the right side of figure 59A or 20?

[00:12:34] Speaker 01:
I mean, you just say, you just divide them into a number of different column-like features and count each of them.

[00:12:41] Speaker 01:
You're saying there are two of them there, and I can't see the validity.

[00:12:44] Speaker 04:
We're not necessarily saying there's two of them.

[00:12:46] Speaker 04:
We are agreeing that in one embodiment, one could be on top and one could be on the bottom.

[00:12:50] Speaker 04:
We're also suggesting that the patent is not specific, at least in this figure, as enumerating precisely where the column-like fit portions are.

[00:12:57] Speaker 04:
And there's a reason for that.

[00:12:59] Speaker 04:
There's a reason for why the column-like fit portions can be on one side of the ring.

[00:13:03] Speaker 04:
And we're not necessarily saying that this figure 59 is a precise example of this claim.

[00:13:08] Speaker 01:
If I were to look at figure 59, how many column-like features would I be seeing?

[00:13:17] Speaker 04:
More than one.

[00:13:18] Speaker 04:
How many?

[00:13:19] Speaker 04:
The patent says that there's plural.

[00:13:20] Speaker 04:
How many?

[00:13:22] Speaker 04:
It's not a position that we have to specify exactly where they are in order for the construction of this claim to be justifiable.

[00:13:27] Speaker 01:
So how would I know whether I'm looking at one or two or three?

[00:13:33] Speaker 04:
I think that a fair reading is that there's not more than three.

[00:13:37] Speaker 04:
And a fair reading is that there's two.

[00:13:39] Speaker 04:
And the two column-like portions are on the right side of the ring.

[00:13:43] Speaker 04:
And the reason they're on the right side of the ring is because that's the part of the ring that has to resist permanent buckling.

[00:13:48] Speaker 04:
which is a theory of the claim.

[00:13:50] Speaker 04:
The purpose of the claim is that when the ring gets compressed, it won't get smushed.

[00:13:54] Speaker 05:
But you would agree that if I imagine for myself that there are two vertical column-like portions on the right-hand side, one of them is really skinny compared to the other one, right?

[00:14:12] Speaker 04:
And that's why our position is that the skinny one doesn't necessarily have to be a column-like fixed portion.

[00:14:17] Speaker 04:
And that does not necessarily lead to the conclusion that there's infinite column-like thick portions in that one column underneath.

[00:14:23] Speaker 01:
But it does lead to the conclusion, in your view, that there's more than one.

[00:14:26] Speaker 04:
There can be, yes.

[00:14:27] Speaker 01:
Simply by virtue of your declaring that it is more than one.

[00:14:31] Speaker 04:
Because of what this patentee said in the specification, he described this embodiment as having multiple column-like portions.

[00:14:37] Speaker 04:
He did not enumerate, like he did in other embodiments, precisely where the column-like thick portions were.

[00:14:42] Speaker 04:
And therefore, to the extent that

[00:14:44] Speaker 03:
He said multiple column-like that were thick?

[00:14:48] Speaker 04:
He said multiple column-like that were thick, correct.

[00:14:51] Speaker 03:
Where did he say that is?

[00:14:55] Speaker 04:
That's on page... It's on column 56 of the 640 patent, which is A0156 towards the bottom.

[00:15:11] Speaker 04:
near lines.

[00:15:13] Speaker 05:
Which column was it?

[00:15:14] Speaker 04:
I think it must be column 59, right?

[00:15:16] Speaker 04:
I'm sorry, 59 at A0156.

[00:15:21] Speaker 04:
At the very last two cents, line 66, 67.

[00:15:23] Speaker 04:
66?

[00:15:29] Speaker 05:
When upright and closed ring 2046 has roughly vertical column-like portions that are relatively thicker than its roughly horizontal bow-like portions.

[00:15:40] Speaker 05:
Right?

[00:15:40] Speaker 05:
So that's when the ring is closed.

[00:15:45] Speaker 05:
So we should be looking at 59B?

[00:15:46] Speaker 05:
No, no.

[00:15:47] Speaker 04:
That's when the ring is open or closed.

[00:15:49] Speaker 04:
I'm into my rebuttal time.

[00:15:51] Speaker 03:
But it's not relatively thicker than the horizontal portions, 59A.

[00:15:58] Speaker 04:
Our position is that this embodiment doesn't set the confines of the claim.

[00:16:03] Speaker 04:
Without lexicography or disavowel, there's a reason why the column-like thick portions can be on one side of the ring.

[00:16:08] Speaker 04:
to support the ring when it's compressed so that that portion resists permanent buckling.

[00:16:15] Speaker 01:
But for clarification, if I could, just to make sure I understand, you're saying that the portion that's on the left side of 59A that's marked 220, that's not a column?

[00:16:28] Speaker 04:
We're saying it's not column-like.

[00:16:29] Speaker 04:
The claim requires a column.

[00:16:31] Speaker 04:
That was my question.

[00:16:32] Speaker 05:
And are you also saying that on the right-hand side,

[00:16:37] Speaker 05:
what I'll call the skinny vertical portion that is labeled 2046N.

[00:16:44] Speaker 05:
You're not saying that's thick, are you?

[00:16:46] Speaker 04:
We're not taking the position that's thick.

[00:16:48] Speaker 05:
OK, so then it would be the lower right-hand vertical portion that is actually perhaps more than one column-like thick vertical portion.

[00:17:02] Speaker 04:
Correct.

[00:17:02] Speaker 04:
Is that right?

[00:17:03] Speaker 04:
In conjunction with what Judge Bryson just said.

[00:17:05] Speaker 05:
It's showing one.

[00:17:07] Speaker 05:
But his argument is there's more than one there.

[00:17:13] Speaker 05:
Sure.

[00:17:13] Speaker 05:
OK.

[00:17:13] Speaker 05:
We'll give you two minutes for rebuttal.

[00:17:16] Speaker 05:
Let's hear from the other side.

[00:17:19] Speaker 06:
Chad Stover for Appellees.

[00:17:20] Speaker 06:
May it please the court.

[00:17:21] Speaker 06:
I think some of the issues that your honors are struggling with are ones that we struggled with as well.

[00:17:27] Speaker 06:
I'd just like to point out, before I get into the merits, that there seem to be some attacks on the process used by the district court here.

[00:17:35] Speaker 06:
And I'd just like to note that that's not

[00:17:37] Speaker 06:
The process is not being appealed here.

[00:17:40] Speaker 06:
It's not something that's been appealed.

[00:17:42] Speaker 06:
It also did not appeal the construction of the term elastic pivot to the extent the district court construed it.

[00:17:50] Speaker 06:
I'll start with the invalidity issue on the 140 patent claim 20.

[00:17:56] Speaker 06:
We believe that the district court should be affirmed.

[00:17:59] Speaker 06:
So going back to the beginning, we identified prior art actually our own product.

[00:18:04] Speaker 06:
that would invalidate the claim unless they can rely on this earlier application that matured into the 640 patent.

[00:18:11] Speaker 06:
And the written description argument that they make focuses on elastic pivot.

[00:18:15] Speaker 06:
We also have another argument that other claim elements in that claim are not present in the prior application as well, including elastic binder rings.

[00:18:23] Speaker 06:
But for purposes here, I'll stick with elastic pivot.

[00:18:26] Speaker 06:
And that term, as Judge Shen, you noted,

[00:18:30] Speaker 06:
appears for the first time in the CIP, the continuation and part application that led to the 140 patent.

[00:18:37] Speaker 06:
So if you look at the earlier application, it's not there.

[00:18:40] Speaker 06:
In the later application, it appears.

[00:18:42] Speaker 06:
Figures 19 and descriptions of figure 19A and 19B appear for the first time in the CIP.

[00:18:50] Speaker 06:
And that's where an elastic pivot is for the first time described.

[00:18:57] Speaker 06:
in the 140 patent, as you noted, is elastic pivot or hinge joint.

[00:19:02] Speaker 06:
So it's stated in the disjunctive showing that there's a difference between an elastic pivot and a hinge joint.

[00:19:08] Speaker 06:
And if you look at the specification, it describes them differently as well.

[00:19:13] Speaker 06:
Now they're trying to rely on this hinge joint 76 in the earlier patent as written description support for an elastic pivot.

[00:19:23] Speaker 06:
There's just no evidence.

[00:19:25] Speaker 06:
There's no evidence from a person of ordinary skill in the art.

[00:19:28] Speaker 06:
There's no evidence from any expert.

[00:19:30] Speaker 06:
They just didn't submit any evidence.

[00:19:31] Speaker 06:
So that's grounds enough to affirm the district court's judgment.

[00:19:36] Speaker 05:
Do you agree that they disclosed an embodiment of a cover that is inherently flexible?

[00:19:42] Speaker 06:
No.

[00:19:43] Speaker 06:
I do not agree with that.

[00:19:44] Speaker 06:
In discussing a separate embodiment, it was discussed that the cover could be made out of a wide variety of materials.

[00:19:53] Speaker 06:
could be cardboard, could be plastic, could be an elastic, sorry, semi-rigid material.

[00:20:00] Speaker 06:
And then they extrapolate from that and they take on a burden of the doctrine of inherency, which we never saw for the district court.

[00:20:07] Speaker 05:
But a couple of those inherently are capable of being deformed, at least to a certain degree, right?

[00:20:16] Speaker 06:
That a hinge joint might be deformed doesn't get you where they need to go.

[00:20:21] Speaker 06:
What they need is they need to show an elastic pivot.

[00:20:23] Speaker 06:
An elastic pivot has an elastic hinge, a fulcrum, and cantilever bending of that fulcrum.

[00:20:29] Speaker 06:
So they need to show all three.

[00:20:31] Speaker 06:
At best, they've shown an elastic hinge.

[00:20:34] Speaker 06:
There's no way that they've shown a fulcrum, and there's no way that they've shown cantilever bending of a fulcrum.

[00:20:40] Speaker 06:
The figure that they focus in on that shows the hinge joint 76, they point to a part of that figure 1740C, which the patent describes as a back cover portion.

[00:20:52] Speaker 06:
You'll notice in their briefing, they always refer to it as a fulcrum, but it's never referred to as a fulcrum in the patent itself.

[00:21:00] Speaker 06:
And that, so that there's a structural difference between what's disclosed in the earlier patent and what's disclosed in the later 140 patent.

[00:21:10] Speaker 06:
And also they take on this doctrine of inherency, and the doctrine of inherency says that something must necessarily be so.

[00:21:17] Speaker 06:
It's not sufficient that it might be so or that sometimes it might be so.

[00:21:20] Speaker 06:
So we have a disclosure that the back cover could be cardboard, could be plastic.

[00:21:25] Speaker 06:
Plastic is not necessarily elastic.

[00:21:27] Speaker 06:
For instance, I mean, my pen is plastic.

[00:21:30] Speaker 06:
It's very hard, rigid.

[00:21:31] Speaker 06:
No one would argue that that's elastic.

[00:21:33] Speaker 06:
It's not necessarily elastic.

[00:21:36] Speaker 06:
And cardboard, for instance, is not elastic.

[00:21:39] Speaker 06:
And that's another material that the back cover could be made out of.

[00:21:42] Speaker 06:
And if you look at the figure at 25A and 25B, it shows a ring, first in an upright position,

[00:21:50] Speaker 06:
and then in a rotated position.

[00:21:53] Speaker 06:
And if you look at 1740C, it doesn't move.

[00:21:57] Speaker 06:
It doesn't flex.

[00:21:58] Speaker 06:
It doesn't bend, even when the ring rotates.

[00:22:01] Speaker 06:
So the 640 patent explicitly shows no bending.

[00:22:12] Speaker 06:
And I'd just like to note also that the Lockwood decision, we believe, is right on point for this.

[00:22:19] Speaker 06:
that entitlement to a filing date does not extend to subject matter, which is not disclosed, but would be obvious over what is expressly disclosed.

[00:22:28] Speaker 06:
And that's a case that we cited at the district court level.

[00:22:31] Speaker 06:
The district court relied on that.

[00:22:33] Speaker 06:
Now, to try to pivot around that decision, the other side is trying to argue this doctrine of inherency.

[00:22:43] Speaker 06:
But really, the inherency argument they're making is just another way of saying it was obvious and it wasn't.

[00:22:49] Speaker 06:
There's no testimony in the record that it was.

[00:22:52] Speaker 06:
I'll move on to the literal infringement of claim 17 of the 640 patent.

[00:22:59] Speaker 06:
The roughly vertical column-like thick portions in the patent must be on opposing sides.

[00:23:05] Speaker 06:
They're arguing lexicography or disavowal must be shown.

[00:23:09] Speaker 06:
But what the district court properly did was to look at the claim and evaluate that claim, construe it in light of the intrinsic evidence

[00:23:18] Speaker 06:
and how a person of ordinary skill in the art would have construed the claim in light of the specification.

[00:23:24] Speaker 06:
And if you look at, for instance, the claim itself and the claim function, the claim itself talks about column-like thick portions on the sides.

[00:23:34] Speaker 06:
It talks about a bow-like upper portion and an extendable lower portion.

[00:23:38] Speaker 06:
And it talks about a specific function, that the ring is compressed.

[00:23:43] Speaker 06:
And when that happens, the upper portion and the lower portion widen and flatten outward,

[00:23:48] Speaker 06:
and the columns don't widen in flat.

[00:23:51] Speaker 06:
And so if you have that claimed functionality, the only way that claimed functionality can work is if you have columns... Column remains with the tops of above squished down, right?

[00:24:02] Speaker 06:
That's right.

[00:24:03] Speaker 06:
So the compressibility, the compression, is happening in the top portion and the lower portion... He says you can do that with the columns on the same side.

[00:24:11] Speaker 06:
You couldn't do that.

[00:24:12] Speaker 06:
There's no disclosure of how the claimed

[00:24:17] Speaker 06:
function would work with the columns on the same side.

[00:24:20] Speaker 01:
Well, but if you look at figures 59A and 59B, why isn't that a disclosure setting aside whether there are two columns on the right side or one?

[00:24:34] Speaker 01:
Why isn't that at least a disclosure of a situation in which the function is performed even though you only have one, only have a column or columns on one side?

[00:24:46] Speaker 01:
If you start with the assumption that 220 is not a column.

[00:24:50] Speaker 06:
If you start with the assumption that 220 is not a column, that I don't understand how there could be more than one column on the other side.

[00:24:58] Speaker 01:
Well, that's a separate question.

[00:25:01] Speaker 01:
They argue, well, there are two columns there.

[00:25:04] Speaker 01:
But let's assume that problem away for a moment.

[00:25:08] Speaker 01:
You certainly could have the resistance to compression with only the one column on the right side, right?

[00:25:15] Speaker 01:
I mean, that's what appears to be happening in figure 59A and figure 59B, right?

[00:25:22] Speaker 06:
There appears to be compression in the lower and upper portions of the ring.

[00:25:28] Speaker 01:
And the thick section on the right is keeping that compression from collapsing the ring altogether.

[00:25:35] Speaker 06:
I would argue that the thick section on the right and on the left is keeping the ring from collapsing.

[00:25:41] Speaker 01:
But that's the basis for your argument that what's at 220, even though it is long,

[00:25:46] Speaker 01:
is thick enough to constitute a column, right?

[00:25:49] Speaker 06:
That's correct.

[00:25:49] Speaker 06:
And I believe they admitted that in their reply brief.

[00:25:51] Speaker 06:
If you look on page 23 of their reply brief, they say, I'm sorry, not the reply brief, in their opening brief, the bottom of page 23, they say,

[00:26:14] Speaker 06:
despite having only a small sliver of a portion actually column-like on the left side, figures 59A, 59B nonetheless satisfy the functional requirements.

[00:26:24] Speaker 06:
So they're admitting that there's at least a sliver of a column-like thick portion on the left side.

[00:26:29] Speaker 06:
And I'll admit in other parts of their brief they seem to take a contradictory point of view on that.

[00:26:33] Speaker 06:
But at least for the doctrine of equivalence, they seem to be admitting that there is a column-like thick portion on the left side and on the right side.

[00:26:42] Speaker 06:
And the other issue

[00:26:43] Speaker 06:
I wanted to address is something that you touched on earlier, Judge Bryson, and that is the sort of absurd result that would happen if you took their claim construction.

[00:26:54] Speaker 06:
And that is there would be no way to tell how many portions were in a ring, where they are, or where a portion might start or end.

[00:27:02] Speaker 06:
So it would leave the claim invalid

[00:27:07] Speaker 06:
as indefinite, and I would argue also invalid for lack of any written description because there's no written description in the patent of how a claim with columns, or how a ring, I'm sorry, with columns both on the same side would work.

[00:27:21] Speaker 06:
And then we have an alternative reason to affirm the district court's judgment as well.

[00:27:26] Speaker 06:
We have the claim construction, but even if you don't go with this on claim construction, we have the argument that the accused rings do not have any more than one vertical column-like thick portion.

[00:27:37] Speaker 06:
and no reasonable juror could find that they would.

[00:27:40] Speaker 06:
They point to, in their brief, an area above the snap closure and an area below.

[00:27:47] Speaker 06:
But if you look, for instance, figure 55 of the patent, it shows, for example, whenever there's a ring closing mechanism.

[00:28:01] Speaker 06:
In fact, every figure that has a ring closing mechanism shows that

[00:28:07] Speaker 06:
shows that there's a portion above and a portion below.

[00:28:09] Speaker 06:
And when it refers to that, it refers to it as a single column-like thick portion.

[00:28:13] Speaker 06:
It doesn't refer to them as two column-like thick portions in the patent.

[00:28:17] Speaker 06:
So we would submit that you could sustain the district court's summary judgment of non-imprisonment.

[00:28:24] Speaker 05:
Is there some point in the written description that where they're discussing 55A that refers to the left-hand side as just being a single portion?

[00:28:37] Speaker 06:
I believe there is, Your Honor.

[00:28:51] Speaker 06:
So you'll see column 58 of the 640 patent, column 58, line 45.

[00:29:03] Speaker 06:
It says, when closed and upright, ring 1646 has column-like roughly vertical thick portions 1646P and 1646Q that resist buckling and has bow-like thin upper portion 1646R.

[00:29:20] Speaker 05:
That's 55B we're looking at.

[00:29:22] Speaker 05:
Yep.

[00:29:24] Speaker 05:
Right.

[00:29:25] Speaker 06:
And so if you... It's also shown in 56B.

[00:29:34] Speaker 06:
as well.

[00:29:36] Speaker 06:
On the left-hand side of the ring there is what is said to be a single column and there is shown to be a closure in the middle of that column, but it's not... nowhere does it say that there's a column-like thick portion above and a column-like thick portion below the closure mechanism.

[00:29:55] Speaker 06:
And then just briefly on the doctrine of equivalence, we believe they have a

[00:30:01] Speaker 06:
lack of evidence and that's what the district court found.

[00:30:03] Speaker 06:
There was no testimony from a person of ordinary skill in the art that supports their arguments, no testimony from an expert.

[00:30:13] Speaker 06:
The only testimony they rely on is the testimony of ACO's 30B6 witness and they try to contort that testimony to fit into the function that they claim.

[00:30:23] Speaker 06:
And they have a couple problems.

[00:30:24] Speaker 06:
First, they're talking about the wrong function.

[00:30:27] Speaker 06:
They're talking about

[00:30:28] Speaker 06:
there being a bigger column on one side and a smaller column on the other side, and the bigger column can absorb more of the compression force than the smaller column on the other side, that's just simply not in the claim.

[00:30:41] Speaker 06:
What the claim says is that you have reversible compressibility relative to a moderate compressive force roughly exerted in the direction of the minor diameter.

[00:30:52] Speaker 06:
Again, like I said before, that's going to cause that top portion and bottom portion to compress while the sides don't.

[00:30:58] Speaker 06:
That's the proper function, that's not the function that they analyzed and therefore their doctrine of equivalence argument doesn't have any support.

[00:31:05] Speaker 06:
In terms of the testimony from ACCO's 30b6 witness, it simply was addressing the snapping close of closure of the ring, not the claimed vertical moderate compressive force.

[00:31:19] Speaker 06:
So it's a different force and it's also a different action.

[00:31:23] Speaker 06:
And it's a different force because the claimed force

[00:31:26] Speaker 06:
is a force on the ring, not a force solely on the column.

[00:31:29] Speaker 06:
So in the reply brief at page five, they say, they claim this R-axis that runs through the center of the accused column, and they say the force that Mr. Boussam testified to is a force that goes directly into that column, along the R-axis.

[00:31:43] Speaker 06:
That's not the claimed force, because that force wouldn't cause any compression of the top and bottom portions of the ring.

[00:31:50] Speaker 06:
It's a different force.

[00:31:52] Speaker 06:
And then it's a different action.

[00:31:53] Speaker 06:
I mean, he's talking about

[00:31:56] Speaker 06:
shutting the ring, not compressing the ring.

[00:31:59] Speaker 06:
If you look at the patent claim and the description, it talks about perhaps the notebook would be put into a crowded bookcase or briefcase, and it would be compressed.

[00:32:12] Speaker 06:
And that's a totally different situation, something that no witness testified about, no expert testified about.

[00:32:19] Speaker 06:
Mr. Chismar himself didn't submit any declaration about that either.

[00:32:28] Speaker 05:
All right, I think we have your argument, Mr. Stover.

[00:32:30] Speaker 05:
Thank you very much.

[00:32:31] Speaker 05:
Thank you, Your Honor.

[00:32:32] Speaker 05:
We'll hear two minutes from Mr. Silbisher.

[00:32:38] Speaker 04:
I'd first like to go back to the 140 patent.

[00:32:41] Speaker 04:
Mr. Stover made a point about figure 25, that element 1740C in the 640 patent is not depicted or illustrated as bending.

[00:32:54] Speaker 04:
But the one point I want to make about, again, what I'm talking about,

[00:32:57] Speaker 04:
Figure 25, element 1740C, which we identified as the fulcrum, Mr. Stover is suggesting that because it's not illustrated as bending, that's dispositive of the fact that it cannot exhibit, it's not flexible, and it can't exhibit cantilever bending.

[00:33:12] Speaker 04:
But what's important about that figure is that the ring is only partially rotated.

[00:33:17] Speaker 04:
In fact, it's not nearly as rotated as it can be.

[00:33:20] Speaker 04:
If you look at figure 23, which is on the page before, you see that the ring can rotate much more all the way around.

[00:33:26] Speaker 04:
And in fact, in figure 25, to go back, all the paper is still on the top.

[00:33:32] Speaker 04:
None of the paper has been rotated around.

[00:33:34] Speaker 04:
And so what's important to know about Mr. Stover's argument is that simply because element 1740C is not illustrated in this figure as not bending, is not dispositive of the fact that it cannot be flexible, particularly given that it is described as being made of cardboard, plastic, or semi-rigid material,

[00:33:54] Speaker 04:
particularly because it's described as being an area of reduced thickness, particularly because elsewhere in the patent, areas of reduced thickness like that in figure 25 are described as being flexible.

[00:34:09] Speaker 04:
I'd like to address Mr. Stover's points on the doctrine of equivalence really quickly.

[00:34:13] Speaker 04:
His suggestion that we do not present testimony of a person of ordinary skill is incorrect.

[00:34:19] Speaker 04:
Mr. Busum, who was their 30b6 witness,

[00:34:22] Speaker 04:
has more than five years of experience designing and developing consumer products, including binders.

[00:34:27] Speaker 04:
He has a mechanical engineering degree.

[00:34:29] Speaker 04:
This is consistent with their own definition of a person of ordinary skill.

[00:34:33] Speaker 04:
They never challenged him in the district court or at some recruitment that he's not a person of ordinary skill.

[00:34:38] Speaker 04:
And more importantly, he expressly testified that when the ring is compressed, that right rigid portion of defendant's ring, the right side of the ring, does not break or deflect.

[00:34:48] Speaker 04:
In other words, he testified that it does not resist permanent buckling under vertical pressure.

[00:34:54] Speaker 05:
One final point.

[00:34:56] Speaker 04:
The district court interpreted his testimony as being limited to the snap closure, as Mr. Silver explained.

[00:35:02] Speaker 04:
That was precise error.

[00:35:04] Speaker 04:
And what the district court said is that nothing in the Sixth World Patent teaches a relationship between reversible compressibility, resisting permanent buckling, and making sure that the ring snaps together properly.

[00:35:16] Speaker 04:
That was error.

[00:35:17] Speaker 04:
on page A0153 of the appendix at column 54, lines 54 to 56, the patent expressly teaches a connection between what Mr. Boussaint testified to, namely making sure the ring snaps together properly and the fact that the ring is stiff enough to resist permanent buckling.

[00:35:36] Speaker 05:
Okay.

[00:35:36] Speaker 05:
Thank you.

[00:35:37] Speaker 05:
Case is submitted.

[00:35:41] Speaker ?:
All rise.

[00:35:45] Speaker 00:
The Honorable Court is adjourned from day to day.