[00:00:00] Speaker 00: case this morning for argument is 15 1979 GE lighting solutions versus lights of America. [00:00:45] Speaker 00: Good morning, Mr. Raney. [00:00:47] Speaker 03: Good morning, Your Honors, and may it please the Court. [00:00:49] Speaker 03: Richard Ranney on behalf of GE Lighting. [00:00:52] Speaker 03: Your Honors, the District Court held on summary judgment that the asserted claims of the 999 and 864 patents were invalid based on its determination that the claim termed to heat sink in the 999 patent and elongated in the 864 patent were indefinite. [00:01:08] Speaker 03: We submit that determination was based on some fundamental legal errors [00:01:12] Speaker 03: And that when the proper law is applied, this court should reverse. [00:01:15] Speaker 03: These terms are sufficiently definite within this court's precedent. [00:01:19] Speaker 00: Well, can I ask you about that? [00:01:21] Speaker 00: In my own experience, we just haven't had that many indefiniteness cases. [00:01:24] Speaker 00: So I really would appreciate a little help on this. [00:01:29] Speaker 00: Let's assume that we agree with the district court that this is elongated, only elongated. [00:01:33] Speaker 00: Yes. [00:01:34] Speaker 00: We agree with the district court that your proposed clit construction, which was what? [00:01:40] Speaker 00: Extends in length. [00:01:41] Speaker 00: is indefinite and doesn't cure the indefiniteness. [00:01:45] Speaker 00: But let's assume that if we independently scoured the record, we could conceivably come up with something that satisfied the definiteness requirement. [00:01:53] Speaker 00: For example, going back to the prior art and the disk shape, adding on the fins, come up with some objective boundaries that we were satisfied with. [00:02:04] Speaker 00: Is that an acceptable way to proceed when no side, including your side, has ever advocated [00:02:10] Speaker 00: assume for a moment, in my hypothetical, a claim construction that we think is anywhere close to definite. [00:02:18] Speaker 03: So I think this is an impact of considering claim construction and indefiniteness together. [00:02:23] Speaker 03: The court had both of these legal issues in front of it at the same time. [00:02:27] Speaker 03: So it seems to us that if that's the court's view, that you have to actually build all these parameters into the claim construction. [00:02:35] Speaker 03: Honestly, I don't think that if you read the Biosig case, for example, [00:02:40] Speaker 03: That's the approach this court took at all. [00:02:43] Speaker 03: It did not impose the boundaries of the claim term into the claim construction itself. [00:02:49] Speaker 03: Rather, it looked to the intrinsic evidence and found those blaze marks on the record. [00:02:53] Speaker 03: So I think if you follow Biosig, this court's guidance so far has been those guideposts don't need to be in the claim construction. [00:03:01] Speaker 03: But if that's the guidance the court wants to make, then I think the appropriate thing to do would be to remand and say, you have to consider all these issues together. [00:03:09] Speaker 00: But where does that leave us, if you've never made the argument? [00:03:12] Speaker 00: So we are independently allowed to go through the record and come up with something that we think satisfies the reasonable certainty standard? [00:03:20] Speaker 03: Well, so these issues are coming up together in this appeal. [00:03:23] Speaker 03: It seems to me there is authorization in the court if that's what the court wants to do, to resolve these two legal issues together. [00:03:28] Speaker 03: But as I said, that's not the guidance that the court has given thus far. [00:03:33] Speaker 03: The Biosig case is very clear. [00:03:35] Speaker 03: That claim construction, [00:03:37] Speaker 03: said nothing about the lower or the upper boundary at issue there. [00:03:41] Speaker 03: And the court said very clearly that there was enough in the record for a person of ordinary skill and the art to understand where the lower and the upper boundaries were, as well as perhaps the side boundaries as well, to that claim term. [00:03:53] Speaker 03: So the issue that was, frankly, being resolved here with respect to elongating was a single dispute. [00:04:00] Speaker 03: Is it a one-dimensional limitation or a two-dimensional limitation? [00:04:04] Speaker 03: And that's what the parties argued over, and they were [00:04:07] Speaker 03: as often as the case in claim construction, dealing with a term that is pulled out of the claim writ large in isolation. [00:04:17] Speaker 00: Yeah, but it's a pretty clear term. [00:04:19] Speaker 00: I mean, the prosecution history indicates that this was the be all and end all. [00:04:22] Speaker 00: I mean, you've got your claim because you added the word elongated to differentiate from the prior art, which is kind of weird because the prior. [00:04:30] Speaker 00: So how would you characterize the prior art and differences between why you would [00:04:37] Speaker 00: you did not read on a disc shaped. [00:04:41] Speaker 03: So I think the prosecution here is very clear that the prosecuting attorney took the position with the examiner that the Reisenauer and Sarasawa references, the disc or plate shaped structures were not elongated and the patent office agreed. [00:04:57] Speaker 03: Those are not elongated structures. [00:04:59] Speaker 03: Nobody has argued to the contrary. [00:05:01] Speaker 02: Supposing we said that, looking at this, that claim one provides the lower [00:05:06] Speaker 02: bound elongated by specifying it must be long enough to attach the LED assembly spreader and appendages. [00:05:16] Speaker 02: And claim eight provides the upper bound of elongated by specifying that the thermally conductive elongated core is designed to be accommodating to existing light fixtures. [00:05:29] Speaker 00: I mean, that's the essence of our argument. [00:05:31] Speaker 00: But that can't save anything other than claim eight. [00:05:34] Speaker 00: You can't get the upper, if we think we need an upper boundary, we can't borrow it from another claim to make claim one definite, can we? [00:05:41] Speaker 03: Well, certainly claim eight stands on its own. [00:05:43] Speaker 03: We've made that point in the brief. [00:05:45] Speaker 03: But I would argue, actually, if you look again at the Biosig case, the upper boundary in that case did not come out of the claim itself. [00:05:51] Speaker 03: It came out of the environment in which the apparatus is intended to be used. [00:05:54] Speaker 03: It's a piece of exercise equipment. [00:05:56] Speaker 03: The court said the outer boundary is the width of the human hand. [00:06:01] Speaker 03: Similarly here, it's very clear from the specification of the 864 patent that this invention is intended to be used in light form factors that are out in the market. [00:06:12] Speaker 00: But you've got claim one and you've got claim eight. [00:06:15] Speaker 00: There must be a difference between the two. [00:06:17] Speaker 00: If the difference is the outer boundary, then why would we use that? [00:06:23] Speaker 00: And if we are assuming that that satisfies the upper boundary, the upper [00:06:28] Speaker 00: objective limitation, how can we import that into Claim 1? [00:06:32] Speaker 00: It's clearly not part of Claim 1. [00:06:34] Speaker 03: So Claim 8 specifies two specific form factors, MR and PAR type form factors. [00:06:40] Speaker 03: Those are clearly not limitations on Claim 1, but this invention is designed to fit into other form factors. [00:06:46] Speaker 03: There are other form factors beyond MR and PAR. [00:06:49] Speaker 03: The idea here is that's what this invention is directed to be used at. [00:06:53] Speaker 00: But how do we know which they are or where they exist? [00:06:56] Speaker 00: Is there something in the specification that guides us to claim one, having some of those four factors? [00:07:01] Speaker 03: I think the specification is clear that this invention is designed to be used in existing form factors. [00:07:07] Speaker 03: And people of ordinary skill and the art understand what the form factors are that are out there. [00:07:11] Speaker 03: There are a number of them. [00:07:12] Speaker 03: So MR and PAR are two types of those. [00:07:15] Speaker 03: There are others. [00:07:17] Speaker 03: So my basic premise is [00:07:19] Speaker 03: You have guidance to the person born in a school in the art what the lower boundary is in, what the upper boundary is coming from the claims, the specification, and the prosecution history as to elongated. [00:07:28] Speaker 00: How could your addition of the word elongated have overcome the prior art? [00:07:34] Speaker 00: Because don't Reisenhower and the other reference extend in length, too? [00:07:40] Speaker 03: So if you take that term and ride into outer space without any connection to the intrinsic record, [00:07:48] Speaker 03: That, which is exactly, we would submit respectfully what the district court judge did here. [00:07:53] Speaker 03: You can argue that a disc has some length to it, so therefore it extends in length. [00:07:56] Speaker 03: But if you look at that term as it's used in context, with the requirements, as Judge Wallach pointed out, of fins extending around the core, and when you put that back into the claim, it's very clear that, as the experts testified, this [00:08:16] Speaker 03: structure has to extend beyond what those structures lay down. [00:08:19] Speaker 03: They have sort of the baseline. [00:08:20] Speaker 03: It can't be shorter than those structures. [00:08:22] Speaker 03: But it could potentially be longer than those structures. [00:08:24] Speaker 00: And the idea here is... But you were proposing a claim construction for elongating. [00:08:31] Speaker 00: So shouldn't that claim construction that you proposed have satisfied and dealt with those issues? [00:08:36] Speaker 03: So I don't think there's any requirement, again, that the claim construction answer all the questions in the case. [00:08:41] Speaker 03: And again, I would just turn back to this court's guidance in biosig. [00:08:45] Speaker 01: I'm really confused by what's going on here. [00:08:50] Speaker 01: Sorry. [00:08:51] Speaker 01: No. [00:08:52] Speaker 01: It's mine. [00:08:53] Speaker 01: I suppose it's me. [00:08:54] Speaker 01: I'll take the blame. [00:08:57] Speaker 01: You put the elongated end to overcome the prior arc. [00:09:00] Speaker 01: I'm going to use a hypothetical because I don't have the facts at hand as well as I should. [00:09:05] Speaker 01: This disk has some elongation. [00:09:10] Speaker 01: because it goes down a little bit. [00:09:12] Speaker 01: Let's say it has a quarter inch elongation. [00:09:15] Speaker 01: Correct. [00:09:16] Speaker 01: Your view is you put the elongated in to mean that it's longer than the quarter inch. [00:09:23] Speaker 01: You have to because otherwise you're reading on the prior art, right? [00:09:26] Speaker 01: It extends beyond the prior art. [00:09:28] Speaker 01: It extends beyond the quarter inch. [00:09:30] Speaker 01: So the minimum has to be elongated over a quarter of an inch. [00:09:36] Speaker 03: Taking into consideration the other elements in the claim as well. [00:09:38] Speaker 01: And then it has to go down whatever. [00:09:40] Speaker 01: I don't really care about how big it is. [00:09:42] Speaker 01: Maybe it's four inches, maybe it's two inches, maybe it's whatever. [00:09:47] Speaker 01: But at least because you're extending over that prior arc, it has to mean something other than it can't encompass a quarter inch. [00:09:58] Speaker 01: Yes, and I think that... But you propose a claim construction that is so broad that it includes a quarter an inch. [00:10:07] Speaker 01: So I, again, I disagree that the proposed construction... So then do you agree that elongated in length means elongated more than whatever the prior art was? [00:10:20] Speaker 03: What I would agree with is that thermally conductive elongated core is not [00:10:26] Speaker 03: the structures of Sarazawa and Reisenauer, which were the two that were distinguished over. [00:10:31] Speaker 03: I think to take, again, to take a term out of the claim and try to argue that everything rides on one word here is not what the exercise we're supposed to be engaged in here is. [00:10:41] Speaker 01: Well, except that this is the one word that got you your patent. [00:10:45] Speaker 01: I might agree if it wasn't the key operative word, but it is. [00:10:48] Speaker 03: Well, the arguments in the prosecution history, JA 407 and 409, make clear that [00:10:54] Speaker 03: The reliance wasn't entirely on the word elongated. [00:10:57] Speaker 03: There was discussion of thermally conductive elongated core and moving heat away from the LED structure farther than the prior arc cores, which also didn't have fins extending around them as well. [00:11:09] Speaker 01: Let me ask you this in a more general way. [00:11:12] Speaker 01: Let's assume elongated is generally, we wouldn't consider it indefinite because we can look at the specification and the like and see that a reasonable person would understand [00:11:24] Speaker 01: that it has a meeting under sufficient to satisfy the statute. [00:11:30] Speaker 01: Yes. [00:11:31] Speaker 01: But you propose a claim construction that renders it indefinite. [00:11:38] Speaker 01: What do we do there? [00:11:40] Speaker 01: I know you don't think your claim construction renders it indefinite, but let's assume it does. [00:11:45] Speaker 01: What do we do when we have a claim term that in the claim and in the patent is not indefinite, but your construction renders it indefinite? [00:11:55] Speaker 03: Your Honor, I think, you know, my reaction to that is I don't think that was the intent here. [00:12:03] Speaker 01: I'm asking a hypothetical, though. [00:12:05] Speaker 01: I know you don't agree with that hypothetical, but what do we do? [00:12:11] Speaker 03: So to me, again, the exercise here is to arrive, I mean, if finding the right result, the truth, the accurate result in the legal question is what this exercise is about, then the court should fix that. [00:12:22] Speaker 01: If the court thinks... So you should get a do-over on your claim construction. [00:12:25] Speaker 03: So yes, I think if that's the way the hypothetical is set up, then yes. [00:12:34] Speaker 03: As I said, our view here is you have to read the claim as a whole in order to understand its boundaries. [00:12:40] Speaker 00: Well, if we were to take the initiative and come up with what we think is the reasonable certainty, that answers the claim construction question, does it not? [00:12:50] Speaker 00: I mean, by coming up with the reasonably certain definition, [00:12:55] Speaker 00: is the claim, is how we construe the claim. [00:13:00] Speaker 03: So again, I would go back to the guidance the court has given so far in the BioSig case is that these are two separate inquiries. [00:13:08] Speaker 03: That the court will look to the intrinsic record independent of what the claim instruction is to find the boundaries. [00:13:14] Speaker 03: So far, that's been the court's guidance. [00:13:16] Speaker 00: But that's the inquiry, but I'm talking about the result, the consequence. [00:13:19] Speaker 03: And the consequence was the same there. [00:13:20] Speaker 03: The court did not say in BioSig [00:13:22] Speaker 03: we're going to impose the width of the human hand on the claim construction or the lower boundary of the two electrodes not coming in contact on the claim. [00:13:32] Speaker 00: How does this work in the real world? [00:13:33] Speaker 00: Ultimately we're all moving up towards an infringement determination. [00:13:38] Speaker 00: So if we conclude, we find this is reasonably certain because we construe it as follows. [00:13:46] Speaker 00: You're not going to [00:13:47] Speaker 00: Do you argue that you're going to be able to proceed with an infringement on a claim construction that's different than the one you propose? [00:13:57] Speaker 00: Do you still think you're going to be able to proceed on your initial claim construction, extending in length? [00:14:03] Speaker 03: Read in the context of all the other limitations in the claims, I don't think anybody would, for example, no expert or lawyer on the GE side of this would argue that this nevertheless covers the structures that were distinguished during prosecution history. [00:14:17] Speaker 00: Can you tell me, there was some discussion in the record, and the district court had this exchange with your expert about, no, what I really mean is not extended in length, but that it's long enough. [00:14:27] Speaker 00: And you argue that in your brief. [00:14:29] Speaker 00: What does that mean? [00:14:30] Speaker 00: What does long enough mean? [00:14:31] Speaker 03: Well, again, it's the very same, going back to the biosec case, the very same construct. [00:14:37] Speaker 03: You have to look at this invention in the context of, first of all, through the eyes. [00:14:41] Speaker 00: Well, that's why I'm asking you to tell me. [00:14:42] Speaker 00: long enough to, there's got to be something at the end of that sentence, right? [00:14:45] Speaker 03: And I think what we've said in the brief is long enough to function to draw heat away from the LED light and distribute it out through the fins, the various elements of the claims. [00:14:54] Speaker 03: The heat flows down through the spreader, down through the core, and out through the fins. [00:14:59] Speaker 03: Long enough for that to function, too. [00:15:02] Speaker 02: Firmly conductive elongated. [00:15:04] Speaker 00: Yes, exactly. [00:15:05] Speaker 00: And do you agree with Judge Hughes' question, then, that in order to differentiate it from the prior art, it has to be [00:15:11] Speaker 00: long enough, but at least over a quarter of an inch, which was in the prior art? [00:15:16] Speaker 00: In that hypothetical, yes. [00:15:19] Speaker 01: Even if that hypothetical, the under the quarter of an inch might also be long enough to do the thermal conduction? [00:15:26] Speaker 03: I think by operation of law, the prior art is out under prosecution disclaimer, well-settled precedent of this court. [00:15:35] Speaker 03: They can't cover what the element was added to distinguish over, but again, [00:15:40] Speaker 03: The claim on what we're talking about here is thermally conductive elongated core, not just elongated in isolation. [00:15:47] Speaker 00: I understand. [00:15:48] Speaker 00: That's the world we live in, though. [00:15:49] Speaker 00: I mean, the claim construction was over the word. [00:15:51] Speaker 00: This comes up not infrequently in our cases, where obviously Phillips and others say we have to look the claim term in context. [00:15:58] Speaker 00: But it's a little hard to do when Markman is done based on particular terms. [00:16:03] Speaker 00: And then we didn't make that world. [00:16:05] Speaker 00: I don't know if you could have influenced or not at the district court stage. [00:16:09] Speaker 03: Well, so again, I think the dispute that we were confronted with on this term at the district court was whether it was a two-dimensional or a one-dimensional limitation. [00:16:18] Speaker 03: These issues did not come up in the context of claim construction. [00:16:21] Speaker 03: They were raised in the context of indefiniteness. [00:16:24] Speaker 00: Well, why don't we restore a couple minutes for rebuttal and hear from the other side. [00:16:33] Speaker 04: Good morning, Your Honors. [00:16:33] Speaker 04: May it please the court? [00:16:36] Speaker 04: Garrett Leach on behalf of the lighting manufacturers. [00:16:39] Speaker 04: I think the question, Chief Judge Proce, you asked right at the get-go was, can this court come up with a definite claim construction? [00:16:47] Speaker 04: I think the answer to that is we looked at the precedent. [00:16:50] Speaker 04: We didn't find any precedent where this court could take their successful claim construction and fix it for them. [00:16:55] Speaker 04: And the reason I think that's not the case is I think it would set a bad precedent. [00:16:59] Speaker 04: Because what you would have is situations where patentees clearly trying to cover products as broadly as they can for infringement purposes would advocate for claim constructions [00:17:09] Speaker 04: as broad, over-broad as possible. [00:17:11] Speaker 04: If they get a district court judge like we did, who actually takes time and effort and really goes through and looks at this definiteness inquiry and determines that the claims are indefinite, they'll just come up to the federal circuit and say, you know what? [00:17:24] Speaker 04: We gave it a shot. [00:17:25] Speaker 04: Can you fix it for us now? [00:17:26] Speaker 04: Can you send it back and tell the district court what the construction is supposed to be? [00:17:29] Speaker 04: I don't think that's what we want here. [00:17:31] Speaker 04: And in fact, if you look at what the Supreme Court said in Nautilus, and I quote, absent a meaningful definiteness check, [00:17:38] Speaker 04: Patent applicants face powerful incentives, just as they did, to inject ambiguity into their claims and eliminating that temptation is in order. [00:17:47] Speaker 00: So do you mean that leaving aside even the claim construction, there was a dispute here and papers filed and responses made to the indefiniteness inquiry. [00:17:57] Speaker 00: Absolutely. [00:17:57] Speaker 00: So are you saying there's kind of a waiver thing? [00:18:00] Speaker 00: unless what they posited to the district court in connection with, not plain construction, indefiniteness, unless they came up with the satisfactory, if we think there's a satisfactory reasonable construction, but they didn't present it to the district court, then our hands are tied and we can't do that. [00:18:16] Speaker 04: Again, we didn't see any precedent that said you could. [00:18:19] Speaker 00: Well, what happened in Biosig? [00:18:20] Speaker 00: Because your friend mentioned Biosig. [00:18:22] Speaker 04: Yeah, so in Biosig, that was where the case came back from the Supreme Court under the new standard. [00:18:26] Speaker 04: And this court looked at it under the new standard. [00:18:29] Speaker 04: and determined there was stuff in the intrinsic record that allowed there to be limitations. [00:18:34] Speaker 04: I think that's a different situation. [00:18:35] Speaker 04: They didn't change the claim construction. [00:18:37] Speaker 04: They didn't say, we're now going to make this a definite claim construction. [00:18:41] Speaker 04: The problem they have here on both terms, and I submit it's exactly the same on the heat sink as it is elongated. [00:18:47] Speaker 04: In their briefing, they really hit on this extrinsic evidence. [00:18:50] Speaker 04: It's the exact same thing. [00:18:52] Speaker 04: There's an intrinsic record, an argument in each prosecution history that creates this uncertainty [00:18:58] Speaker 04: that when you read it in light of the claim construction that they advanced and they got. [00:19:03] Speaker 00: Oh wait, I want to talk about two different things. [00:19:04] Speaker 00: Because in the 864, we have the prosecution history for that claim. [00:19:08] Speaker 00: We do from the 999. [00:19:09] Speaker 00: I thought we were relying on the prosecution history in another. [00:19:14] Speaker 04: That was advocated to, I think, confuse the issue. [00:19:18] Speaker 04: If you look at our briefing. [00:19:19] Speaker 00: I thought you conceded that it was extrinsic evidence. [00:19:22] Speaker 04: Oh, the 864 is. [00:19:23] Speaker 04: But there is stuff in the 999. [00:19:24] Speaker 04: In the 999 prosecution, and let me just read that for you, because I don't [00:19:28] Speaker 04: I think this came across as clear because in their gray brief, they didn't even address it, which we found kind of telling. [00:19:34] Speaker 04: But in the prosecution of the 999, and this is a JA5912, they had to overcome the prior art, the Roller reference. [00:19:44] Speaker 04: And the way they did that is they added the fact that Roller didn't heat sink. [00:19:48] Speaker 04: And I quote the language that they used there. [00:19:51] Speaker 04: They said, and Roller, by the way, we have that in the appendix. [00:19:55] Speaker 04: I can get you the site for that. [00:19:57] Speaker 04: But Roller was a lighting assembly that had a light source, a control module, a heat sink in between them, all one combined thing. [00:20:04] Speaker 04: Clearly in thermal communication, just under the law of thermodynamics, they're all connected. [00:20:08] Speaker 04: There's no dispute about that. [00:20:09] Speaker 04: What they said about Roller to overcome that in the prior art is they said, there is no disclosure or fair suggestion in Roller of any thermal communication between the control components and the heat sink. [00:20:23] Speaker 00: Are you looking at 5912? [00:20:24] Speaker 04: 5912. [00:20:26] Speaker 00: Can you, is that at the bottom of the page? [00:20:29] Speaker 00: I don't know. [00:20:30] Speaker 00: I'm looking at the page. [00:20:31] Speaker 00: We've only got one. [00:20:40] Speaker 04: So it's page 5912, J5912, the bottom of the first paragraph there, with their distinguished enroller. [00:20:50] Speaker 04: There is no disclosure or fair suggestion [00:20:53] Speaker 04: in this roller reference, which again is one interconnected lighting assembly, of any thermal communication between the control components and the heat sink, which is their big new invention, as would be necessary to provide heat sinking. [00:21:08] Speaker 04: And the reason they said that is because in roller there was an intervening layer between the heat sink and the control model. [00:21:14] Speaker 04: Just like we've argued in this case, you can't have something shielding that. [00:21:19] Speaker 04: That's not heat sinking. [00:21:20] Speaker 04: That's what the record would show. [00:21:22] Speaker 04: However, their construction, which they got at the district court, two different district courts, would allow that to be included. [00:21:28] Speaker 04: And the judge, Chief Judge Polster, when he went through this, specifically asked them, there was about four pages or five pages of testimony on this. [00:21:37] Speaker 04: We are not saying that it should go as broad as including things that are shielded. [00:21:41] Speaker 04: And they said, absolutely, Your Honor, that should be included, even though it's completely inconsistent with what the scope was in. [00:21:47] Speaker 00: Can we get back to it? [00:21:48] Speaker 00: Sure. [00:21:49] Speaker 00: Sorry. [00:21:49] Speaker 00: As you could tell, some of us are struggling with that here. [00:21:52] Speaker 00: Absolutely. [00:21:55] Speaker 00: Why isn't it sufficiently certain, reasonably certain? [00:21:59] Speaker 00: If we conclude one, we've got to cut out the prior art. [00:22:02] Speaker 00: So let's assume that's a quarter of an inch long. [00:22:06] Speaker 00: We know when we look at the whole specification and the context of the whole claim, we're dealing with the minimal limit, which deals with the fins. [00:22:14] Speaker 00: And so we have a bottom limit. [00:22:17] Speaker 00: We don't have a top limit, but by necessity, [00:22:20] Speaker 00: This can't go on forever. [00:22:22] Speaker 00: We're dealing with particular devices, so we know at the limit. [00:22:25] Speaker 00: Why is that not sufficient? [00:22:27] Speaker 00: Whether we call it a claim construction or we call it a decision on indefiniteness, why is that not construing the term elongated with sufficient clarity to let the patent stand? [00:22:37] Speaker 04: So I think what you're talking about is re-construing the claim to not just mean extending in length, which everything extends in length. [00:22:44] Speaker 04: To actually say, we're going to say extending in length now means you have to be [00:22:48] Speaker 04: minimum of what the prior art shows. [00:22:50] Speaker 04: The problem with the prior art, though, is you've got a drawing, you say a quarter inch. [00:22:54] Speaker 04: I don't know that it's a quarter inch. [00:22:56] Speaker 04: I don't know exactly what that is. [00:22:57] Speaker 00: Well, what's the construction you came up with? [00:22:58] Speaker 04: You came up with the construction which says, which I thought was based on the prior art, where you said it has to be longer than... Greater in length than width, which this court has found numerous times is the appropriate construction for elongated. [00:23:11] Speaker 04: And that's the one we came up with. [00:23:13] Speaker 00: And that seemed, is that, in your view, consistent with the disc shape that we were talking about in the record? [00:23:18] Speaker 04: We agree that that would be consistent with the disc shape, yes. [00:23:21] Speaker 04: Now, whether or not this court can now adopt our construction, because we can't raise it. [00:23:27] Speaker 01: I don't get that construction either. [00:23:29] Speaker 01: I mean, it can be elongated and still be greater in width than length, can't it? [00:23:35] Speaker 01: If it's a big disc, but still goes down a certain amount of thing, it's elongated. [00:23:40] Speaker 04: I guess it depends on your read of elongated. [00:23:42] Speaker 01: Well, the whole point of, I mean, this is not a general usage of the term elongated here. [00:23:47] Speaker 01: It was used to overcome the prior art and get that patent. [00:23:52] Speaker 01: Correct. [00:23:52] Speaker 01: And so, you know, it has to have some content in the terms of the prosecution history, the specification and the like. [00:24:01] Speaker 01: And I mean, I certainly agree with you that the claim construction they have taken, you know, at its face seems very indefinite. [00:24:09] Speaker 01: But we have, I don't think we can invalidate a patent just because there's an over-broad claim construction. [00:24:15] Speaker 01: Don't we have to look at the patent, the claims, the specific, you know, at all of it to determine whether a reasonable person would find it definite? [00:24:25] Speaker 04: And we've done that. [00:24:25] Speaker 04: For elongated, elongated is not used in the specification. [00:24:29] Speaker 04: When we go to the prosecution history, what do we have? [00:24:31] Speaker 04: We have this prior art and they keep saying, well, you got to have fins around it. [00:24:34] Speaker 04: We don't know what size of fins. [00:24:35] Speaker 04: There's all kinds of different sizes of fins. [00:24:37] Speaker 04: I don't think that gives it to me. [00:24:38] Speaker 04: determination. [00:24:39] Speaker 04: In fact, when you look at the prosecution history, it's clear that there's an uncertainty there, because we don't know where elongated begins and non-elongated ends. [00:24:50] Speaker 04: In fact, we asked their expert that, their expert. [00:24:53] Speaker 00: We've all read the cases. [00:24:55] Speaker 00: You don't need precise numbers, right? [00:24:58] Speaker 04: Correct. [00:24:59] Speaker 00: So if we have some, whether it's from the disk shape in the photo with the figure we're looking at, or where the fins are, as explained in Mr. Rainey's brief, [00:25:09] Speaker 00: I think let's assume that we can discern some lower limit. [00:25:14] Speaker 00: And so all we're left with is how do we discern something around the ends of a higher limit? [00:25:21] Speaker 00: And you look to the device and you know generally what we're talking about. [00:25:26] Speaker 00: Why is that not sufficient? [00:25:28] Speaker 04: Well, because I think, Your Honor, to me you're still in that zone of uncertainty. [00:25:33] Speaker 04: We're one of skill in the art. [00:25:34] Speaker 04: Again, you can say that disk shape. [00:25:38] Speaker 04: What's a disc? [00:25:39] Speaker 04: Can a disc be this? [00:25:40] Speaker 04: Can a disc be this? [00:25:41] Speaker 04: I mean, are we supposed to measure the prior arch? [00:25:43] Speaker 00: Well, apparently, we start with the patent that gets the clear and convincing evidence standard for overturning it. [00:25:48] Speaker 00: We start with the patent, and the examiner was going to reject the claim and granted it based on the addition of the word elongated. [00:25:57] Speaker 04: Yes. [00:25:58] Speaker 00: So that's our starting point. [00:25:59] Speaker 00: Can I ask you another? [00:26:00] Speaker 00: Sure. [00:26:00] Speaker 00: I mean, you seem to reject the notion that we could do this on our own. [00:26:04] Speaker 00: But isn't it a fact that even in a regular claim construction proceeding, [00:26:09] Speaker 00: this court is free and in fact has rejected both parties claim constructions that come up with its own claim construction in that context. [00:26:16] Speaker 04: And I think that's when claim construction is at issue. [00:26:19] Speaker 04: Now, you could say indefiniteness is a part of claim construction, but I'll submit to this court, you often hear arguments about invalidity where somebody loses under 102 or 103. [00:26:28] Speaker 04: And maybe the claim construction that the patentee advocated for in that case is broader than it should have been because they're trying to pull in more infringement stuff, but they still lose because they make it so broad that it pulls in [00:26:38] Speaker 04: This court doesn't say, I'm going to now give you an opportunity to go back and fix that claim construction and make it narrower and give what we think should be the proper claim construction because they've won their claim construction. [00:26:50] Speaker 04: So they don't, they don't really have a right. [00:26:52] Speaker 00: Well, we used to, right? [00:26:53] Speaker 00: I mean, the law used to be that you're supposed to construe a patent in order to preserve its validity. [00:26:57] Speaker 00: And we cap in that sound bite quite strenuously, I think in Phillips, right? [00:27:03] Speaker 04: You did. [00:27:04] Speaker 04: And again, that's in the claim construction realm. [00:27:05] Speaker 04: This is more of the invalidity realm. [00:27:07] Speaker 04: And I don't think this court [00:27:09] Speaker 04: as a practice typically goes back, and again, I'll take it in the 102, 103 world and says, you can shoot this too broadly, it's invalid in the prior art, but we're going to fix it for you because you got it wrong. [00:27:21] Speaker 04: I think that's what the Supreme Court was saying when they need to temper that temptation that they're giving patentees. [00:27:28] Speaker 00: Okay. [00:27:29] Speaker 00: So if we take this out of the claim construction world, why is it, is it a waiver kind of argument? [00:27:34] Speaker 00: If we're just looking at the question of what, how do we define it for purposes of indefiniteness and reasonable certainty? [00:27:41] Speaker 00: Are you saying that because we're not allowed to come up with the way to define it in the context of indefiniteness other than the one presented by the parties to us on appeal? [00:27:51] Speaker 04: I think that's right, Your Honor. [00:27:52] Speaker 04: I think as the court said even earlier today, [00:27:54] Speaker 04: We didn't raise, I don't think any party's raised any sort of claim construction arguments in this appeal. [00:28:00] Speaker 04: Nobody's argued that the claim construction's wrong. [00:28:02] Speaker 04: I mean, we probably would have liked to have, but the court, the law says we can't because we prevailed on impolidity. [00:28:10] Speaker 04: They certainly didn't because that was their claim construction. [00:28:13] Speaker 00: Is there anything in the record here that would give us any guidance as to how all of this impacts the infringement? [00:28:19] Speaker 00: We're kind of at sea here. [00:28:20] Speaker 00: We used to not be able to do that. [00:28:22] Speaker 00: Now we can. [00:28:23] Speaker 04: Yeah, I don't think there's... I'm trying to think if there's anything in the record. [00:28:26] Speaker 04: I mean, certainly... Maybe it's just curiosity, but I... Certainly in the... If something shielded or insulated, I can tell you all the accused products have insulation between the control module and the heat sink. [00:28:36] Speaker 04: They're clearly not trying to heat sink exactly what their invention is. [00:28:40] Speaker 04: So they don't want to change the claim for instruction. [00:28:42] Speaker 04: They don't want to narrow it with what they said in the prior art. [00:28:44] Speaker 04: similar with elongated. [00:28:46] Speaker 00: Just tell us stuff that's in the record. [00:28:48] Speaker 04: Okay, I'm sorry. [00:28:50] Speaker 02: So what in the record tells us what the limits of a disc are? [00:28:55] Speaker 04: I don't think anything does other than maybe that picture. [00:28:58] Speaker 04: The picture you could look at, and there's a couple of different pictures. [00:29:00] Speaker 04: You've got two different prior art references. [00:29:02] Speaker 04: It looks pretty flat. [00:29:04] Speaker 04: Well, yeah, there's one that's flat, but those are supposed to be examples. [00:29:08] Speaker 04: I don't think they're necessarily drawn to scale. [00:29:11] Speaker 02: I know. [00:29:14] Speaker 02: prior discussion has me thinking about disks that are something in a space telescope, 10 feet wide and 5 foot thick at the center, narrowing to... There's a lot of sporting arenas that are disk-shaped, that are very, very large. [00:29:33] Speaker 04: So I don't think it gives us any more clarity or takes us out of that zone of uncertainty that we're currently in, with both these terms. [00:29:42] Speaker 01: I mean, I think the most... [00:29:44] Speaker 01: I'm trying to follow you here. [00:29:46] Speaker 01: Are you now arguing that even if we ignore this really broad claim construction, that there is no claim construction that we could get to that would make this patent definite? [00:30:03] Speaker 04: No, Your Honor. [00:30:04] Speaker 04: I don't know that I'm arguing that. [00:30:05] Speaker 01: I don't know that we've really considered that. [00:30:07] Speaker 01: So let me ask you that. [00:30:08] Speaker 01: Let's throw out this claim construction, not look at it. [00:30:12] Speaker 01: Is the patent indefinite on its face? [00:30:15] Speaker 04: I have not seen a claim construction that makes it definite. [00:30:19] Speaker 04: I haven't heard one yet. [00:30:19] Speaker 01: I think I'm asking you a little different question, because I'm trying to get outside of the claim construction question. [00:30:26] Speaker 01: Let's just assume we're not going to talk about claim construction. [00:30:29] Speaker 01: We're going to look at this in terms of indefinite. [00:30:32] Speaker 01: We have this claim that uses the word elongated, and we add the specification as it is. [00:30:38] Speaker 01: the standard for definiteness. [00:30:40] Speaker 01: And if it doesn't, why not? [00:30:42] Speaker 04: I don't believe so because I believe in the claim construction. [00:30:45] Speaker 04: And again, I know you're throwing it out, but you have to do some claim construction. [00:30:48] Speaker 04: No. [00:30:50] Speaker 01: I want you to answer my question without claim construction. [00:30:52] Speaker 01: So without claim construction, can we find this claim construction? [00:30:55] Speaker 01: Do we know, would a reasonable person under the new standard find that this gives certainty? [00:31:02] Speaker 04: Without claim construction, I do not believe so. [00:31:06] Speaker 04: Because I don't even know where you would start if you don't [00:31:08] Speaker 04: If you're just saying the word elongated. [00:31:12] Speaker 01: Do we know what the invention is under that claim based upon the specification, the prosecution history, and the claim term? [00:31:20] Speaker 01: With reasonable certainty. [00:31:22] Speaker 04: I do not believe so. [00:31:23] Speaker 04: Because you look at what they did in the prosecution history and the distinctions they made, we do not know what elongated is. [00:31:30] Speaker 04: There is just not clearly there under any construction. [00:31:33] Speaker 04: So again, I hate to keep going back to claim construction, but that's what we keep getting pounding into our heads as patent lawyers. [00:31:39] Speaker 04: I see my time is up. [00:31:40] Speaker 04: Are there any other questions? [00:31:43] Speaker 00: Thank you. [00:31:43] Speaker 04: Thank you. [00:31:52] Speaker 03: Just a couple of quick points in rebuttal. [00:31:54] Speaker 03: One, I think. [00:31:55] Speaker 02: Tell me about a disk that's 10 feet wide and 5 foot thick. [00:32:01] Speaker 02: Is it elongated? [00:32:02] Speaker 03: I'm not sure that could appear in a LED structure, Your Honor, which is what we're talking about here. [00:32:09] Speaker 03: So I'm not sure how to answer that question. [00:32:10] Speaker 03: I mean, again, this invention is an LED replacement bulb for existing form factors. [00:32:16] Speaker 03: The people of ordinary school in the art have a very clear understanding of what the outer boundaries and the lower boundaries are here. [00:32:22] Speaker 03: And I think that the examiner and the applicant here had a very rich discussion. [00:32:27] Speaker 03: And what are they, the lower boundaries and the upper boundary? [00:32:30] Speaker 03: Well, the lower boundary is clearly not the structure disclosed in Reisenauer and Serizawa. [00:32:35] Speaker 03: We know that. [00:32:36] Speaker 03: And this court has said time and again, [00:32:38] Speaker 03: Deer versus Bush Hall of other cases, that mathematical precision is not what this exercise is about, and this invention isn't about mathematics. [00:32:46] Speaker 03: What's the upward? [00:32:48] Speaker 03: The upper boundary is the existing form factors, which is precisely what this invention was intended to be used in. [00:32:56] Speaker 03: One last comment. [00:32:57] Speaker 03: There was some discussion about the prosecution history of the 999 patent, and I believe counsel stated it's undisputed. [00:33:04] Speaker 03: We hotly dispute what the Roller disclosure was. [00:33:07] Speaker 03: We think it's very clear in the prosecution history. [00:33:09] Speaker 03: You're talking about a totally different kind of device. [00:33:11] Speaker 03: That's all I have. [00:33:13] Speaker 00: Thank you. [00:33:13] Speaker 00: We thank both sides. [00:33:14] Speaker 00: The case is submitted, and that concludes our proceedings for this morning. [00:33:19] Speaker 00: All rise. [00:33:23] Speaker 00: The Honorable Court is adjourned until tomorrow morning. [00:33:25] Speaker 00: It's at o'clock a.m. [00:33:31] Speaker 03: Hey, nice to meet you.