[00:00:23] Speaker 00: Next case is International Controls and Measurements versus Honeywell, 12-15-17-24. [00:00:30] Speaker 00: Mr. Hinderacker. [00:00:32] Speaker 03: Good morning, your honors. [00:00:37] Speaker 03: May it please the court and the council? [00:00:41] Speaker 03: We're here today because the board fundamentally misunderstood the invention of the 719 patent. [00:00:49] Speaker 03: And that fundamental misunderstanding led to the claim construction [00:00:53] Speaker 03: which is wrong as a matter of law. [00:00:56] Speaker 03: The 719 patent calls for a coil that serves two different functions. [00:01:04] Speaker 03: One of those functions is the accumulation of voltage for ignition. [00:01:10] Speaker 03: And a different, separate function is to power on, or to use a phrase in the specification, switch on another component of the furnace that is necessary for the furnace [00:01:23] Speaker 03: to start. [00:01:25] Speaker 03: There is no evidence in this record of any prior art with a coil that serves those two different functions. [00:01:35] Speaker 04: What is the best support that you have in the specification for the assertion that you just made that the purposes are to accumulate voltage and to power on another component? [00:01:52] Speaker 03: I'll begin to answer that question with figure one. [00:01:58] Speaker 04: Well, let's look at the written specification first. [00:02:00] Speaker 04: All right. [00:02:01] Speaker 04: I'm curious whether there's anything there that alludes any specificity to this other component. [00:02:09] Speaker 03: I'll start at column three, approximately lines 50 to 52 or so. [00:02:15] Speaker 03: Here an inducer relay actuator coil, 12, [00:02:21] Speaker 03: is employed for switching on an inducer motor not shown. [00:02:26] Speaker 03: And then it continues on. [00:02:27] Speaker 03: This coil is in series with a switching transistor and a microprocessor, square wave gating pulses, and it carries on to the flyback diode. [00:02:38] Speaker 03: And that is all the function of the accumulation of voltage for ignition. [00:02:43] Speaker 04: So that we know is present all through the specifications, the accumulation of voltage. [00:02:49] Speaker 04: But where is the other function other than ignition? [00:02:53] Speaker 03: It is in the use of the coil, which is also used to actuate the furnace. [00:03:03] Speaker 04: But where is that laid out in the specification? [00:03:08] Speaker 03: Let me go to column two. [00:03:11] Speaker 03: According to one aspect of this invention. [00:03:13] Speaker 02: What line are you reading from? [00:03:15] Speaker 03: I'm sorry, line one. [00:03:18] Speaker 03: According to one aspect of this invention, an igniter circuit for a gas burner employs pulsating current to a relay coil, such as the relay coil for the inducer motor. [00:03:32] Speaker 03: That's the one purpose, to actuate the furnace being the inducer motor. [00:03:37] Speaker 04: And that coil is used... The inducer motor is alluded to, but no functions are associated with it, right? [00:03:48] Speaker 03: In the specification, an inducer motor and in figure one with the inducer relay is one of the components that must be activated to start a furnace because you must have air, combustible air, and you must have exhaust before you would start a flame. [00:04:10] Speaker 03: Now, that is in the fact of the inducer relay [00:04:16] Speaker 03: being actuated by the coil is as I'm describing in the specification. [00:04:22] Speaker 03: Now, in the record before the board, our expert also explained in paragraph 27 of his declaration that there are necessary things that must happen in order to start a furnace. [00:04:36] Speaker 03: And ignition is the last of those steps. [00:04:40] Speaker 03: You must have combustible air and exhaust, the function of the inducer motor, [00:04:46] Speaker 03: Hence, figure one shows the inducer relay and that embodiment. [00:04:51] Speaker 03: You must have the integrity of the flame sensing circuit confirmed so that you will know if there is just gas passing through the building or flame. [00:05:01] Speaker 03: You must have the gas valve turned on. [00:05:04] Speaker 03: And finally, you must have an arc or spark to ignite the flame. [00:05:09] Speaker 04: Do you think that if [00:05:10] Speaker 04: You accused a product that did not have the inducer motor that performed the actuation as you view it, other than ignition, that that would infringe claim on? [00:05:28] Speaker 03: We agree. [00:05:28] Speaker 03: I have two aspects to respond to your question, Your Honor. [00:05:35] Speaker 03: First, we agree that if [00:05:39] Speaker 03: the accused device only use the coil for actuation only I'm thinking ignition only use the coil for ignition only use the coil for ignition that would not be infringing because this claim is limited by a coil with two purposes my second part of my answer to your question is that the language of the claim is and and we must give meaning to the conjunctive in which [00:06:06] Speaker 03: pulsating current is applied to a coil in order to actuate the furnace. [00:06:10] Speaker 03: So I'm not limiting the scope of the claim to only the preferred embodiment where it is the inducer motor that is actuated in order to start the furnace in addition to the function of ignition. [00:06:28] Speaker 03: When the claim is construed, properly in our view, to be limited [00:06:35] Speaker 03: to a coil that serves these two functions. [00:06:38] Speaker 03: Then we look to whether there is any evidence in the record of prior art with a coil serving those two functions. [00:06:46] Speaker 03: I submit there is none. [00:06:49] Speaker 03: Consequently, this court should determine, I submit, that as a matter of law, Honeywell did not carry its burden to prove by a proponents of the evidence that 719 patent is invalid. [00:07:04] Speaker 03: As a consequence, there's no reason to remand, and the result that we request is the declaration of the proper claim construction. [00:07:13] Speaker 03: And given the absence of any evidence of a coil serving a second function, the 719 patent is not invalid. [00:07:21] Speaker 02: The PCASH said that it appeared to them that the two purposes for the coil that you referred to, they appeared to just simply overlap. [00:07:33] Speaker 02: observation due to the construction that they gave? [00:07:36] Speaker 03: It's a consequence of their construction. [00:07:39] Speaker 03: It's not a construction that was argued before the board at the time. [00:07:42] Speaker 03: It's not a construction that Honeywell advanced or that obviously that we advanced. [00:07:47] Speaker 03: But it is a consequence of their construction. [00:07:49] Speaker 03: And I might say or I might put it this way. [00:07:53] Speaker 03: They construed the claim so broadly that under these claims of this patent [00:08:01] Speaker 03: the only function of the coil is ignition. [00:08:05] Speaker 03: Or they construed, saying the same thing in a slightly different way, they construed the claims so broadly that everything boiled down to ignition. [00:08:14] Speaker 03: So when you look at the language of the claim, the board's interpretation of the claim is very consistent with the following. [00:08:25] Speaker 03: All the claim has to say is an igniter circuit in which [00:08:29] Speaker 03: a flame starts in the burner, comprising then the body of the claim carries through with the coil and the accumulation of voltage. [00:08:41] Speaker 03: So that the language of the claim, and in which pulsating current is applied to a coil in order to actuate the furnace, is completely redundant. [00:08:53] Speaker 03: It's meaningless under the board's interpretation. [00:08:57] Speaker 03: Similarly, and when we look at figure one, [00:09:00] Speaker 03: There's no purpose served in Figure 1 to show an inducer relay, which is an ad-embodiment, what receives the pulsating current from the coil in order to actuate the furnace. [00:09:13] Speaker 03: It would have been sufficient for Figure 1 to only show the right-hand side where there's the igniter. [00:09:19] Speaker 03: But that's not what 719 claims. [00:09:23] Speaker 03: It's limited by a coil that serves those two [00:09:27] Speaker 04: The only thing, as I understand it, in figure one that isn't integral to the igniter function is the reference to the inducer relay. [00:09:42] Speaker 04: Is that right? [00:09:43] Speaker 04: Everything else is necessary to make the igniter function operate as the claim requires. [00:09:50] Speaker 04: Exactly. [00:09:51] Speaker 04: So there's that one unnumbered element there, inducer relay. [00:09:56] Speaker 03: And so what we have is one of the values, one of the benefits of this invention, is this invention takes a furnace control that uses a coil, 12, to in this embodiment induce the inducer motor, the inducer relay. [00:10:17] Speaker 03: That's there. [00:10:19] Speaker 03: And then this invention takes that same coil and applies it for the accumulation of voltage [00:10:26] Speaker 03: for ignition. [00:10:28] Speaker 03: Not only does it use a single component for two purposes, one benefit, then the specification, as you know, describes the benefits that follow from using the coil for the accumulation of voltage. [00:10:42] Speaker 03: The absence of a booster transformer, the lower turns ratio on the step-up transformer. [00:10:51] Speaker 03: If I might turn then to the [00:10:55] Speaker 03: Evidence that's in the record. [00:10:57] Speaker 03: The board instituted on Puryear and Potts and no other. [00:11:04] Speaker 03: And Honeywell's evidence at the board is only directed to the ignition function and nothing else. [00:11:13] Speaker 03: Its expert testimony is only directed to the ignition function and nothing else. [00:11:19] Speaker 03: So when we were at the hearing. [00:11:20] Speaker 04: Would you agree that courier would render invalid a claim that did not have the inducer relay? [00:11:32] Speaker 03: Subject to my qualification about inducer relay being an embodiment as opposed to all possible ways and other necessary things for actuating a furnace, if the claim is construed as the board construed it, [00:11:47] Speaker 03: Courier invalidates 719 pattern. [00:11:51] Speaker 03: And you don't have to look at POTS. [00:11:53] Speaker 03: POTS is not pertinent, if that answers your question. [00:11:56] Speaker 03: It does. [00:11:57] Speaker 03: Thank you. [00:12:00] Speaker 02: You can clear something up for me that has been kind of in the back of my mind. [00:12:05] Speaker 02: It seems to me that the PTAB may have conflated activate with actuate. [00:12:11] Speaker 02: Am I wrong with that? [00:12:14] Speaker 03: The PTAB, yes. [00:12:15] Speaker 03: Well, yes and more. [00:12:19] Speaker 03: You are right for additional reasons. [00:12:23] Speaker 03: They took the definition of actuator. [00:12:27] Speaker 03: Actuator is not part of the claim in any regard. [00:12:32] Speaker 03: They then took that definition of actuator and applied it to the verb to actuate. [00:12:39] Speaker 03: Then they took the definition of actuator, which is an electrical energy [00:12:46] Speaker 03: that causes a mechanical action, some physical movement. [00:12:51] Speaker 03: And then they applied that definition in a way that's nonsensical to the claim, because they applied it to the discharge of the accumulated voltage. [00:13:02] Speaker 03: They applied the definition of actuator, which requires a physical output of mechanical motion by their own definition. [00:13:11] Speaker 03: They applied it to the discharge of the energy itself. [00:13:16] Speaker 03: to which the definition, under the definition that the board chose, that is not an actuator. [00:13:23] Speaker 03: Now, a relay, like the inducer relay, that would be an actuator. [00:13:29] Speaker 03: But that's not specifically part of the claim. [00:13:32] Speaker 03: So that's a longer-winded way of saying what the board did with the terms to the term actuator for construing the verb to actuate. [00:13:44] Speaker 03: I frankly don't think all the dots ever line up on that. [00:13:49] Speaker 03: But the core problem of the board, and I submit, was to render the claim language and in which pulsating current is applied to a coil in order to actuate the furnace out of the claim. [00:14:03] Speaker 04: I guess there are a number of steps that would be necessary to actuate a furnace. [00:14:07] Speaker 03: There are. [00:14:08] Speaker 04: So you could have many candidate actuate [00:14:11] Speaker 04: Well, it's a limited number of candidates, but there are more than one. [00:14:16] Speaker 04: Wouldn't you agree, though, that one of the four or five actuating steps would be ignition of the flame? [00:14:24] Speaker 03: In our common parlance, Your Honor, I would. [00:14:27] Speaker 03: But if you look at the specification, the words actuator or to actuate is never used in conjunction with the accumulation of voltage for ignition. [00:14:38] Speaker 03: It is never used in that way. [00:14:41] Speaker 03: Actuation to actuate the furnace in the specification is always used in conjunction with an inducer relay or a gas valve relay. [00:14:51] Speaker 03: It's always used for this second function. [00:14:55] Speaker 03: So if we're going to be true to the language of the specification and the claim, then the board's construction is not a reasonable one. [00:15:05] Speaker 00: Council, you mostly consumed your rebuttal time, but we'll give you two minutes. [00:15:09] Speaker 03: All right. [00:15:10] Speaker 03: Thank you, John. [00:15:12] Speaker 01: Thank you, Your Honor. [00:15:18] Speaker 01: May it please the Court. [00:15:20] Speaker 01: As is clear from the briefing and the arguments of ICM's counsel here today, this case boils down to the preamble of claim one of the patented issue. [00:15:29] Speaker 01: What extent it's limiting and what it means. [00:15:33] Speaker 01: I'd like to address two issues in response to ICM's arguments. [00:15:38] Speaker 01: One is [00:15:39] Speaker 01: The preamble is partially limiting based on the rationale that the board put forth in its final decision. [00:15:47] Speaker 01: The court need go no further. [00:15:48] Speaker 01: To actuate the furnace is not a limitation of the claim under the board's rationale. [00:15:53] Speaker 01: The second thing I want to address is ICM's tortured construction of the preamble. [00:15:59] Speaker 01: To actuate the furnace does not make sense in view of the plain language of the preamble or the specification. [00:16:07] Speaker 01: Turning first to the [00:16:08] Speaker 01: preamble being partially limiting. [00:16:10] Speaker 01: If I can draw the court's attention to the board's final decision, which is at Joint Appendix 10, in the middle of the page there, in response or considering Honeywell's arguments regarding the preamble and to what extent it was limiting, the board stated, and I quote, as petitioner correctly notes, two terms in the preamble provide antecedent basis, coil and igniter. [00:16:38] Speaker 01: Neither party has provided persuasive argument regarding any other reason why we should consider the preamble to be limiting. [00:16:47] Speaker 01: We therefore determine that the preamble is limiting to the extended recite structure that provides antecedent basis to the term set relay coil and the igniter. [00:16:58] Speaker 01: The board could have stopped there. [00:17:00] Speaker 01: It need not construe under that rationale to actuate the furnace. [00:17:04] Speaker 01: And that makes sense. [00:17:08] Speaker 01: ICM hasn't challenged that finding by the board here today. [00:17:12] Speaker 01: The issues that it's presented to this court take no issue with the board's finding along those lines with respect to the preamble, and it can't challenge it here today. [00:17:23] Speaker 01: The board's conclusion are supported by the general principles that this court applies in the context of determining whether a preamble is limiting or not. [00:17:33] Speaker 01: Generally, as this court has said multiple times, a preamble is not limiting. [00:17:37] Speaker 01: There are exceptions to that. [00:17:38] Speaker 01: One is where it provides antecedent basis. [00:17:41] Speaker 01: The board decided that only to those two structural aspects of the preamble does it provide antecedent basis. [00:17:49] Speaker 01: The said relay coil and the igniter said nothing about to actuate the furnace. [00:17:54] Speaker 01: To actuate the furnace does not provide antecedent basis for any other portion of the body of the claim. [00:18:01] Speaker 01: To actuate the furnace doesn't recite an essential step or structure. [00:18:05] Speaker 01: We're talking about [00:18:07] Speaker 01: an apparatus claim here, not a method claim. [00:18:09] Speaker 01: And the only structural aspects that are necessary and needed from the preamble are those two structural aspects that the board found limiting as requiring antecedent basis. [00:18:23] Speaker 01: To actuate the furnace is not necessary to give life meaning or vitality to the claim for the same reason that I described. [00:18:30] Speaker 01: It's merely describing the function of the igniter and the coil to actuate the furnace. [00:18:38] Speaker 01: It doesn't. [00:18:39] Speaker 04: Well, of course, that assumes the conclusion that the actuation is the ignition. [00:18:44] Speaker 04: That's true. [00:18:45] Speaker 04: But if you're not right about that, your preamble argument is separate from your argument on the rest of the merits of what actuating means. [00:18:54] Speaker 04: If you're wrong about what actuating means, then the argument you just made, it seems to me, is unpersuasive. [00:19:02] Speaker 04: In other words, what you just said, if I understand you, was that, well, the reason [00:19:08] Speaker 04: that this language about actuating doesn't contribute anything is because ignition is actuating. [00:19:14] Speaker 04: But if that's not the meaning of actuate in the context of this claim, then that argument is simply both redundant and according to your opposing counsel, wrong. [00:19:24] Speaker 01: That's correct. [00:19:25] Speaker 01: But you need to consider not just to actuate, but to actuate dot furnace, the full context of that phrase. [00:19:31] Speaker 01: And whether to actuate dot furnace includes ignition or excludes ignition [00:19:36] Speaker 01: as ICM's counsel proposes. [00:19:38] Speaker 04: Well, ICM's counsel's argument is that in the context of this preamble, it's clear that ignition and actuation are two different steps. [00:19:49] Speaker 04: And therefore, actuation refers to some actuating step other than ignition. [00:19:54] Speaker 04: So why don't you address why you think that's wrong? [00:19:57] Speaker 01: Sure. [00:19:58] Speaker 01: And I think it's best to step back and understand what we're talking about here. [00:20:01] Speaker 01: If we think about a Venn diagram and the ultimate goal [00:20:05] Speaker 01: is to actuate the furnace. [00:20:06] Speaker 01: There's a number of things, as Your Honor recognized, that goes into actuating the furnace. [00:20:11] Speaker 01: Ignition, making sure there's gas in the system. [00:20:13] Speaker 04: And in the abstract, that would include ignition. [00:20:16] Speaker 04: But why, in the context of this preamble, the language of this preamble, is that still true? [00:20:23] Speaker 04: Which is to say that actuation, why, in other words, to use your opposing counsel's argument, why isn't the reference to actuating redundant if you're right that it refers to ignition? [00:20:35] Speaker 01: because it's merely describing what it is, those two structural components that I described, the igniter and the coil are doing in the system. [00:20:43] Speaker 01: The whole claim is directed towards ignition and the igniter circuit. [00:20:47] Speaker 01: It doesn't make sense to try to turn it into something else. [00:20:50] Speaker 04: Well, put another way. [00:20:51] Speaker 04: Let me ask the question this way. [00:20:54] Speaker 04: The igniter starts a flame in the burner. [00:21:00] Speaker 04: done the way that is described in the claim, the body of the claim, through the coil, the diodes, the zener, and ultimately the transformer. [00:21:11] Speaker 04: Okay. [00:21:12] Speaker 04: And then, in order to actuate the furnace, is applied to the coil, in order to actuate the furnace, if we've already got the ignition, why isn't that redundant? [00:21:26] Speaker 01: It's actually consistent because if you take [00:21:29] Speaker 01: the latter part of that, the process that we're talking about here. [00:21:32] Speaker 01: And what this patent is focused on is the use of flyback voltage to generate enough spark, a high enough voltage to generate spark. [00:21:41] Speaker 04: You have to go from 12 volts to 20,000. [00:21:43] Speaker 01: Exactly. [00:21:44] Speaker 01: And several steps to get there. [00:21:45] Speaker 01: Right. [00:21:46] Speaker 01: And what this preamble is talking about is that progression. [00:21:49] Speaker 01: So you're getting pulsating current onto this coil. [00:21:52] Speaker 01: It's creating a magnetic field that causes a spike in that voltage that can be stored on a capacitor. [00:21:58] Speaker 01: Once it reaches a certain threshold voltage in order to generate a spark, it sends that voltage to the spark circuit to cause the spark and ignite the flame in the burner as described here. [00:22:15] Speaker 04: All of which is described in the steps of the claim. [00:22:18] Speaker 04: So one is added by the language and in which pulsating current is applied to a coil in order to actuate the furnace. [00:22:24] Speaker 01: It's just describing the overall goal of what's happening with ignition. [00:22:28] Speaker 04: So it's a general pricey of what's to follow? [00:22:31] Speaker 01: That's correct. [00:22:32] Speaker 04: OK. [00:22:33] Speaker 04: Let me ask you one other question, then, on the same topic. [00:22:35] Speaker 04: What do you make of the fact that, for example, in figure one, we have the circuit which is necessary to perform the function of claim one, but we also have the inducer relay, which presumably is not necessary to perform the precise ignition function of that [00:22:53] Speaker 04: of that claim. [00:22:55] Speaker 04: What's the inducer relay doing in that figure if it isn't, if the performance of the functions of the inducer relay are not part of the claim? [00:23:04] Speaker 01: It's certainly well known that you can use an existing coil in a system like they're showing here for some other purpose. [00:23:10] Speaker 01: That was before the examiner. [00:23:12] Speaker 04: But that's a separate issue that the board never reached. [00:23:15] Speaker 04: It's a question of whether, if you assume that another function can be performed by the coil other than ignition, that the claim would still be invalid. [00:23:23] Speaker 04: But we're not there. [00:23:24] Speaker 01: Understood. [00:23:25] Speaker 04: So what's the inducer relay doing in the diagram? [00:23:29] Speaker 01: It's providing the voltage for the ignition circuit. [00:23:32] Speaker 04: No, the inducer relay is not, right? [00:23:35] Speaker 04: The inducer relay is just the device [00:23:38] Speaker 04: that on figure one is to the left of the coil. [00:23:41] Speaker 04: That is picking up current from the coil, right? [00:23:46] Speaker 01: Fair point. [00:23:47] Speaker 04: And it's opening and closing the contacts in order to actually... I thought the opening and closing of the contacts was coming from microprocessor just below the inducer with the squared off, isn't it? [00:23:58] Speaker 01: The microprocessor is causing the pulsating current. [00:24:02] Speaker 04: It's causing the break in the circuit that causes the pulses, right? [00:24:06] Speaker 01: Correct. [00:24:06] Speaker 01: That opens and closes the contact. [00:24:07] Speaker 04: So the inducer relay isn't doing that. [00:24:10] Speaker 01: That's right. [00:24:11] Speaker 04: Okay. [00:24:12] Speaker 04: So what's the inducer relay doing if it isn't part of the invention? [00:24:17] Speaker 01: In the context of figure one, it is providing voltage and providing voltage for [00:24:27] Speaker 04: I'm talking about the device that is immediately to the left of the coil in figure one. [00:24:33] Speaker 04: The coil 12. [00:24:35] Speaker 01: It's turning the inducer on and off, if that's what your honor is asking. [00:24:40] Speaker 01: Correct. [00:24:41] Speaker 01: It's opening and closing those contacts based on that pulsating current to turn the inducer motor on or off. [00:24:49] Speaker 04: But the inducer, but that is a separate [00:24:53] Speaker 04: That performs a separate function, does it not? [00:24:56] Speaker 04: The inducer relay is connected to a motor. [00:24:59] Speaker 04: It's part of a motor that is available to perform other functions, correct? [00:25:04] Speaker 01: That's correct. [00:25:05] Speaker 04: Okay, so it suggests that other functions are contemplated to be performed by figure one. [00:25:12] Speaker 01: That's true. [00:25:13] Speaker 01: Does it not? [00:25:14] Speaker 01: That's true, but it doesn't play out in the claims. [00:25:16] Speaker 04: So this in effect is, you're saying, is sort of an unclaimed feature. [00:25:20] Speaker 01: Correct. [00:25:21] Speaker 01: It's a preferred embodiment. [00:25:23] Speaker 01: And if we look at that in the context of the claims, nowhere in the claims does it refer to an inducer relay coil. [00:25:29] Speaker 01: And ICM, in the claims, knew how to use and specify a particular type of coil when it wanted to. [00:25:36] Speaker 01: If we look at the patent at JA 40, claim 9, which is in column 6, right there refers to a gas valve relay coil. [00:25:45] Speaker 01: So ICM knew when to refer to a particular type of coil, that it was being used for multiple purposes. [00:25:51] Speaker 01: In the context of any other claim, there's no specificity along those lines, and thus it requires a broader interpretation. [00:25:59] Speaker 01: The board was mindful of that when it came to its construction, not to incorporate preferred embodiments or claim limitations into the claim that are not actually claimed or covered by [00:26:11] Speaker 01: the language itself. [00:26:12] Speaker 04: I guess your argument would be that they could have amended to include more explicitly the functions performed by the inducer coil and motor? [00:26:22] Speaker 01: They could have. [00:26:23] Speaker 01: And I think what's even more telling is the fact that if this is really the genius of the invention, why is it relegated to the preamble? [00:26:32] Speaker 01: There's nothing in the body of the claims that goes towards this so-called genius or so-called novelty. [00:26:38] Speaker 01: And it wasn't contested during prosecution. [00:26:40] Speaker 01: In the face of prior art that was presented by the examiner, ICM didn't talk about this so-called genius to get around the prior art. [00:26:48] Speaker 01: In fact, it amended the claims, the switching means arrangement, so that it was automatically discharged based on a predetermined voltage threshold. [00:26:58] Speaker 04: Did the examiner in the original prosecution have career with that? [00:27:03] Speaker 01: It did not, but it had a Bilsma reference, the Bilsma reference, which [00:27:07] Speaker 01: talks explicitly about using a coil, a fuel injector coil, to not only control the fuel injector, but also the ignition circuit. [00:27:18] Speaker 01: So just turning back to the preamble being partially limiting, that's what the board's rationale leads to the conclusion that the preamble is only partially limiting. [00:27:29] Speaker 01: And that's consistent with this court's precedent in a number of cases, including TomTom, which we cite in our brief at page 35. [00:27:36] Speaker 01: as well as Loctite, which is cited in TomTom. [00:27:40] Speaker 01: Both of those cases stand for the proposition that you can have a partially limiting preamble. [00:27:44] Speaker 01: And in those cases, the court walked through the exact same rationale that the board did here, finding structural aspects to be limiting in the preamble and functional descriptions of those structural aspects not limiting. [00:27:59] Speaker 01: That's dispositive of all the issues on appeal here. [00:28:02] Speaker 01: The court need not go further. [00:28:04] Speaker 01: The board need not go further. [00:28:06] Speaker 01: And the board's decision can be affirmed on that ground. [00:28:15] Speaker 01: The other point I'd like to mention is ICM raises these benefits, saying that the benefits are being read out and not considered in the context of this construction. [00:28:28] Speaker 01: But if I can point the court to JA38, this is the patent again, column one, starting at line [00:28:36] Speaker 01: What this patent is talking about is the concern presented in a low voltage environment, trying to get enough voltage in order to generate a spark in the igniter. [00:28:47] Speaker 01: And what the prior art did was it used high windings on a coil or a booster transformer. [00:28:54] Speaker 01: What this patent is directed to is taking those elements out and using fly back voltage instead. [00:29:02] Speaker 01: There's no connection between a two purpose coil and those benefits. [00:29:13] Speaker 01: So even if we consider the ICM's construction of to actuate the furnace doesn't hold water, it's not substantiated by the evidence and the board got it right and should be affirmed. [00:29:26] Speaker 01: But even if we go beyond that and consider the context of what we're talking about here, as I described earlier, it was well known to use an existing coil in a system like an inducer coil [00:29:41] Speaker 01: a fuel injector coil for actuating another component of the system like an igniter circuit. [00:29:45] Speaker 01: That was clear in the prosecution, it's clear in Bilsma, and it's also clear in Courier. [00:29:51] Speaker 01: While ICM takes hyper-technical arguments of Courier about requiring DC power at the flame sense circuit, what is undisputed is that coil in Courier, the voltage from that coil is being used for two purposes. [00:30:07] Speaker 01: It's causing ignition, [00:30:09] Speaker 01: in the igniter circuit, as well as powering the flame set circuit. [00:30:15] Speaker 04: Let me make sure that I didn't misunderstand something you said earlier. [00:30:22] Speaker 04: And I think, in retrospect, that I probably did. [00:30:25] Speaker 04: So let me make sure that I've got it right. [00:30:29] Speaker 04: I understood you to be saying that the inducer relay was responsible for the switching on and off that causes the flyback voltage by virtue of the disruption of voltage going through the coil. [00:30:44] Speaker 04: But I thought that it was the microprocessor that is causing the switching, the very rapid switching on and off that creates the flyback voltage. [00:30:56] Speaker 04: It's the latter that's true, is it not? [00:30:58] Speaker 01: Correct. [00:30:58] Speaker 01: It's the microprocessor that's causing the pulse anchor. [00:31:01] Speaker 00: OK. [00:31:01] Speaker 01: I misunderstood what you were saying. [00:31:03] Speaker 01: Yep. [00:31:03] Speaker 01: Precisely. [00:31:04] Speaker 00: I see I'm out of time. [00:31:05] Speaker 00: Thank you, Mr. Vogel. [00:31:06] Speaker 01: Thank you, Your Honors. [00:31:07] Speaker 00: Hinderaka has a couple of minutes. [00:31:11] Speaker 03: Thank you, Your Honor. [00:31:13] Speaker 03: I'd like to start with another answer or a further answer to an earlier question in terms of the specification. [00:31:20] Speaker 03: At column 1, lines 57 to 61, [00:31:24] Speaker 03: It is another object to provide an ignition circuit that employs flyback current from a furnace relay coil to develop a primary ignition circuit. [00:31:36] Speaker 03: It is from the preamble that both of those purposes of this coil is detailed in the claim. [00:31:46] Speaker 03: The fact [00:31:49] Speaker 03: that the use of the coil for one purpose of ignition has the various benefits detailed in the specification does not deny the separate fact that the claim requires a coil to serve the second function of pulsating current in order to actuate the furnace. [00:32:08] Speaker 03: If I may reference the TomTom case wherein structure in the preamble was limiting, here the language that we're dealing with is [00:32:18] Speaker 03: and in which pulsating current is applied to a coil in order to actuate the furnace. [00:32:23] Speaker 03: The coil is structured. [00:32:25] Speaker 03: TomTom supports our position. [00:32:29] Speaker 03: All of this argument that we've just heard regarding the preamble not being limiting is a new argument. [00:32:37] Speaker 03: It was not before the board. [00:32:39] Speaker 03: The claim construction of the board was not argued before the board. [00:32:45] Speaker 03: The argument before the board [00:32:48] Speaker 03: was whether there was sufficient evidence in the record to conclude that the prior art disclosed a two-function coil. [00:33:00] Speaker 03: And because there was no evidence, we said there is no evidence. [00:33:05] Speaker 03: Therefore, Honeywell has not carried this burden of proof, the same issue that we have here. [00:33:10] Speaker 03: So I will conclude by saying council said that it is not disputed [00:33:16] Speaker 03: that the coil of courier powers the flame sensing circuit, it certainly is. [00:33:22] Speaker 03: And there is no evidence of Honeywell that supports that position. [00:33:27] Speaker 04: Just on the question of the preamble and whether the board addressed the preamble issue, pages 9 through 11 of the board's opinion addressed the preamble issue, right? [00:33:41] Speaker 03: They do. [00:33:41] Speaker 03: And I think then they want to go on and construe it on 11. [00:33:45] Speaker 03: And they have to deal with the what does actuate mean. [00:33:48] Speaker 03: What they're taking on is. [00:33:50] Speaker 04: So it's not the case that the board didn't, that the issue of preamble, whether the preamble was limiting, was not before the board, right? [00:33:56] Speaker 03: It was not before the board. [00:33:57] Speaker 03: I find that. [00:33:58] Speaker 04: But it was before the board, right? [00:33:59] Speaker 04: Because this is where the board is discussing that very issue. [00:34:03] Speaker 03: Exactly. [00:34:04] Speaker 03: They take the phrase, and in which pulsating current is applied to a coil in order to actuate the furnace. [00:34:09] Speaker 03: And they find it limiting, and therefore they construe it. [00:34:12] Speaker 04: So the issue was before them. [00:34:15] Speaker 04: as to whether the preamble was limiting. [00:34:21] Speaker 03: Honeywell agreed it was limiting. [00:34:22] Speaker 03: We agreed it was limiting. [00:34:23] Speaker 03: They found it to be limiting. [00:34:26] Speaker 03: And here the argument before this court is that. [00:34:29] Speaker 04: Well, everybody agrees it's limiting to the extent that it provides an antecedent. [00:34:35] Speaker 04: The question is, is it limiting to the extent that it contains, in effect, an additional limitation when there's such actuation? [00:34:42] Speaker 03: Well, one. [00:34:44] Speaker 03: on the antecedent basis, the antecedent basis for said relay coil is the coil or a coil in the phrase that we're construing. [00:34:53] Speaker 03: And secondly, when you go to the specification in figure one, that is a defining aspect of the invention. [00:34:59] Speaker 03: To take this existing component that is used in one embodiment for inducing the inducer motor, taking that existing component, keeping that function, that purpose, and using it for a second one of ignition. [00:35:13] Speaker 03: It is a defining aspect of the invention. [00:35:15] Speaker 00: Thank you. [00:35:15] Speaker 00: We will take the case under advisement.