[00:00:00] Speaker 02: Corporation, 2016, 1057. [00:00:03] Speaker 02: Good morning, Your Honor. [00:00:14] Speaker 02: Good morning, Mr. Dunn. [00:00:15] Speaker 02: We'll hear from you when you are ready. [00:00:17] Speaker 04: Your Honor, I know I'm going to need some water. [00:00:24] Speaker 04: Your Honor, if it may please the Court, I'd like to reserve five minutes for a rebuttal. [00:00:30] Speaker 04: Your Honor, we're here on a patent case. [00:00:34] Speaker 04: And the primary reason we're here is I'd like to address the court about overturning portions of the decision below that relate to client construction, which we believe were faulty. [00:00:46] Speaker 04: The case involves a reissue patent. [00:00:48] Speaker 04: It's a very simple product. [00:00:50] Speaker 04: It's a plastic product which is made flat in one piece to clasp [00:00:57] Speaker 04: straps on the back of a woman of her brassiere straps to bring them together. [00:01:02] Speaker 02: It's a very simple product, but apparently... We're dealing with one aspect of the claim relating to an elongated member, right? [00:01:13] Speaker 04: Correct, Your Honor. [00:01:14] Speaker 04: That would be one aspect of the claim. [00:01:15] Speaker 04: And the method claims. [00:01:17] Speaker 04: This is a reissue patent that had been filed. [00:01:19] Speaker 04: Initially the patent had article claims, and then the reissue was filed adding method claims. [00:01:25] Speaker 04: below the court had summary judgment on both the article and the method claims. [00:01:30] Speaker 04: We're not appealing the decision or the result on the article claims. [00:01:33] Speaker 04: We're just appealing the claim construction, if you will, and the decision concerning the method claims of the patent. [00:01:42] Speaker 01: And I would say one of the... When this claim was amended during prosecution to add the elongated member... Elongated member, Your Honor. [00:01:55] Speaker 01: When it was amended, if you look at page 196 of the appendix, the applicant said, applicant has amended claims 12, 13, 15 to recite an elongated member, which is described in the original specification and claims, referring to column three, lines 30 to 40 of the specification. [00:02:20] Speaker 01: And that portion of the specification [00:02:24] Speaker 01: describes an elongated member by reference to the figure which shows no break. [00:02:35] Speaker 01: So why isn't that pretty good evidence out of the applicant's own mouth that there's no break in the elongated member? [00:02:46] Speaker 04: That's correct. [00:02:47] Speaker 04: There is no break disclosed. [00:02:49] Speaker 04: There is no break hinted at or suggested in the patent. [00:02:53] Speaker 04: There is one embodiment, well actually there are two embodiments, but one embodiment simply that's an elastic in the middle. [00:02:58] Speaker 04: But there's no suggestion made below or by this bias that there was any kind of suggestion in the patent that the equivalent structure is encompassed in the literal language of the course. [00:03:09] Speaker 01: So your argument rests on the doctrine of equivalence? [00:03:14] Speaker 04: No, Your Honor, we're resting on the literal language of elongated member does not require, the claim language elongated member does not require that it be one piece or a continuous piece. [00:03:26] Speaker 01: But if you say in the prosecution history when you amend the claim, the elongated member is shown in this figure which doesn't have a break, why isn't that good evidence of how elongated member ought to be construed? [00:03:42] Speaker 04: It is good evidence, but it's not [00:03:46] Speaker 04: When looking at the Doctrine of Equivalence, you don't have to have in the specification all the statements indicating what is or cannot be the equivalent structures. [00:03:55] Speaker 01: Okay, so that was why my question was, so you're really relying on the Doctrine of Equivalence here? [00:04:01] Speaker 04: I'm relying on the Doctrine of Equivalence for sure. [00:04:03] Speaker 04: I also believe there's literal infringement because I believe it's error to take limitations that are in the patent and specification and write them into the claim. [00:04:15] Speaker 04: One of the purposes of a reissue patent is to essentially broaden claims. [00:04:19] Speaker 01: So why is the doctrine of equivalence applicable here when you didn't comply with the Cyprus requirements of evidence and argument? [00:04:30] Speaker 04: Your Honor, I believe we did. [00:04:32] Speaker 04: Our statement of facts, which begin over on the appendix, I believe 267, [00:04:38] Speaker 04: Statement of uncontested facts, we go through all the patents that we noted show the interchangeability of the different equivalent structures and used to draw strap holders that are used to slide up and down. [00:04:52] Speaker 04: We put all these facts before the board below. [00:04:56] Speaker 04: Court below, we cited from the patents in our statement of facts. [00:04:59] Speaker 04: We cited from the patents we read. [00:05:01] Speaker 00: But wasn't that with respect to the Article of Manufacture Claims? [00:05:05] Speaker 00: I'm sorry. [00:05:06] Speaker 00: That argument about the doctrine of equivalence, as I read your pleadings below, the doctrine of equivalence argument is expressly referenced with respect to the Article of Manufacture Claims, which you did not appeal. [00:05:20] Speaker 04: Correct. [00:05:21] Speaker 00: And there is no doctrine of equivalence argument directed to method claim 12. [00:05:27] Speaker 04: We directed an equivalence argument to the elongated member, and the elongated main member, in our brief, on our pages. [00:05:36] Speaker 00: Do you agree, though, that there was no doctrine equivalence argument made specifically with respect to claim 12? [00:05:44] Speaker 00: And where in your readings do you say doctrine? [00:05:47] Speaker 00: That's correct, then? [00:05:48] Speaker 04: That's correct, specifically to 12. [00:05:49] Speaker 04: We argued this. [00:05:51] Speaker 04: elongated member as being equivalent as shown for these various reasons. [00:05:57] Speaker 00: So your position is that you should be able to argue this on appeal, even though you didn't argue claim 12 specifically below. [00:06:03] Speaker 00: But you should be able to now argue claim 12 on appeal because the issue on appeal is elongated member. [00:06:10] Speaker 00: And you had argued doctor of equivalence with respect to elongated member for other claims that aren't on appeal. [00:06:17] Speaker 04: No, Your Honor. [00:06:18] Speaker 04: The other claims, the only claim [00:06:21] Speaker 04: that has the elongated member as the definition for that piece, that element A, the accused device, is Claim 12. [00:06:30] Speaker 04: All the other claims have elongated main member. [00:06:35] Speaker 04: They have different language. [00:06:37] Speaker 04: It was the method claims which broadened out [00:06:40] Speaker 04: the statement of that particular element as being just simply the elongated member. [00:06:46] Speaker 04: And in our brief, we discussed the equivalence of the claim language from both the article claims, elongated main member, and also elongated member. [00:06:55] Speaker 04: We said in our brief that elongated member, it's equivalent to the split. [00:07:01] Speaker 04: The elongated member doesn't require its split. [00:07:04] Speaker 04: It means it's elongated from the end, so you have places to hook the bra straps. [00:07:09] Speaker 04: And the fact that it's split doesn't defect in any way from that method that's being processed. [00:07:14] Speaker 00: But we settled it. [00:07:15] Speaker 00: How would the court know that you're making a doctrine of equivalence argument, not a claim construction literal infringement argument, if you didn't argue doctrine of equivalence with respect to claim 12? [00:07:25] Speaker 04: OK, that's an error. [00:07:30] Speaker 04: And then briefing, we argued doctrine of equivalence for the elongate member, which only appears in claim 12. [00:07:38] Speaker 04: as far as the impact claims. [00:07:40] Speaker 01: What page should you do that at? [00:07:42] Speaker 04: A273 to 277 is what I have on my notes, where we were discussing. [00:07:58] Speaker 04: I have my notes, so I'm not sure if it's closed. [00:08:06] Speaker 04: We argue for the equivalence on all the claims on A273. [00:08:11] Speaker 00: Of course, on page A272, which introduces the text on page A273, it's just referring to claims 1, 3, 5, 6, and 8. [00:08:21] Speaker 00: That's the last sentence on page A272. [00:08:28] Speaker 00: Should we look beyond that? [00:08:31] Speaker 04: Yes, Your Honor. [00:08:32] Speaker 04: I'm sorry. [00:08:32] Speaker 04: My notes are on page. [00:08:47] Speaker 04: In the motion, we did specifically cite that page. [00:09:16] Speaker 02: We need to move on, Mr. Donaldson. [00:09:19] Speaker 04: Your Honor, page 273, 274 is what I referred to before. [00:09:26] Speaker 01: So what about prosecution history estoppel? [00:09:29] Speaker 01: What about prosecution history estoppel? [00:09:32] Speaker 01: When you added this claim term and now you're asking for equivalence, how can you do that? [00:09:39] Speaker 04: Prosecution history estoppel is when you narrow a claim. [00:09:43] Speaker 04: This was not an art rejection or enable or rejection. [00:09:47] Speaker 04: Rejection was we don't understand. [00:09:49] Speaker 04: It's a 112 indefinite rejection based on the weave language, which would weave the bra strap between the two features. [00:09:58] Speaker 04: So the examiner didn't know which elements were the weave at. [00:10:01] Speaker 04: That was an indefinite problem. [00:10:02] Speaker 04: So they changed weave element to the [00:10:06] Speaker 04: elongate number being replacing the weed on it. [00:10:09] Speaker 01: So it wasn't a narrow... What case says that you don't have prosecution history estoppel where you make a claim amendment in response to an indefiniteness rejection? [00:10:17] Speaker 04: That's correct, Your Honor. [00:10:18] Speaker 01: No, no, no, not correct. [00:10:19] Speaker 01: What case says that if you amend a claim to add a claim term in response to an indefiniteness rejection, that that doesn't result in prosecution history estoppel? [00:10:33] Speaker 04: No, there is no case. [00:10:35] Speaker 04: But that amendment has, no, I'm misunderstanding. [00:10:38] Speaker 04: You're correct in your matter of law that if there is an indefinite rejection, prosecution history estoppel could apply. [00:10:44] Speaker 04: There's no exception for indefinite rejection. [00:10:47] Speaker 01: OK, so why doesn't it apply here? [00:10:49] Speaker 04: Because it wasn't a narrowing an amendment. [00:10:50] Speaker 04: It was a clarifying term. [00:10:52] Speaker 04: Weave member is not in the spec. [00:10:54] Speaker 04: We don't know what that means. [00:10:55] Speaker 04: Give us a term that's in the spec so we know what you're talking about. [00:10:58] Speaker 04: That term is a elongate member. [00:10:59] Speaker 04: It wasn't a narrowing amendment. [00:11:01] Speaker 04: It didn't exclude the equivalent. [00:11:03] Speaker 04: When you make a narrowing amendment, a prosecution history stopple, is that you can't now recapture what you gave up when you made a narrowing amendment. [00:11:13] Speaker 01: Elongated member is not narrower than weave member? [00:11:18] Speaker 04: I don't think so if they're defining the same thing. [00:11:22] Speaker 04: Doesn't elongate mean longer than it is wide? [00:11:25] Speaker 04: Yes. [00:11:27] Speaker 04: OK, so in that sense, it's narrower. [00:11:29] Speaker 04: But in that narrowing sense, we did not give up the gap. [00:11:32] Speaker 04: we still, it is longer than it is wide on both products. [00:11:36] Speaker 04: It's longer than it is wide. [00:11:38] Speaker 04: And my main, I got three minutes, my main concern in this case is that we have some clear, I believe, clear errors in claim construction. [00:11:46] Speaker 04: That bringing in, when we had a reissue patent which added method claims, bringing in the details of the article claims to construe the method claims because we're talking about the articles the same product. [00:11:58] Speaker 04: So the method claims were limited [00:12:00] Speaker 04: to elongate main member which extends completely across and doesn't have a gap. [00:12:06] Speaker 04: That was all put into the method claim, added in features to the method claim because they're in the article claim, some of those features. [00:12:13] Speaker 04: They're shown in the embodiment and specification, so it's in the specification so we can put it in. [00:12:17] Speaker 04: And most critically, which I think is very harmful as precedent to be affirmed, is that we took the subject matter of claim 15 and threw it into the independent claim. [00:12:28] Speaker 04: So now that we're making the independent claim an elongate member, it has to extend completely across, which is why claim 15 added to claim 12. [00:12:35] Speaker 02: Mr. Dunn, you're into your rebuttal time. [00:12:37] Speaker 02: Do you want to continue or save it? [00:12:38] Speaker 04: No, Your Honor. [00:12:39] Speaker 04: I'll save it. [00:12:41] Speaker 02: Mr. Springberg. [00:12:47] Speaker 03: Good morning, your honors. [00:12:48] Speaker 03: May it please the court. [00:12:50] Speaker 03: What I'd like to focus on is the issue of why we're here today. [00:12:56] Speaker 03: And it's our client's position that given what happened below and what happened in the briefing here, we should really not be here. [00:13:05] Speaker 03: Because with regard to literal infringement and doctrine of equivalence, there's been express waiver. [00:13:14] Speaker 03: We spoke about doctrine of equivalence just a couple of minutes ago. [00:13:17] Speaker 03: There was clearly a waiver with regard to that. [00:13:19] Speaker 03: Claim 12 was not included in what was being asserted below. [00:13:23] Speaker 03: So that's waived. [00:13:25] Speaker 03: And then with regard to the main portion limitation, and all you need is one limitation that you don't meet and therefore there's no infringement, with regard to the main portion limitation, that came from plaintiff's claim construction that it [00:13:42] Speaker 03: professed down below, and the court adopted it. [00:13:45] Speaker 02: You say, why are we here? [00:13:47] Speaker 02: Even if we agree with you on merits, he's entitled to make this case, even if in your view, or ultimately in our view, he doesn't have much of a case. [00:13:56] Speaker 02: That remains to be seen. [00:13:57] Speaker 03: Yes, Your Honor. [00:13:58] Speaker 03: But what I was trying to say is, this is a frivolous case. [00:14:02] Speaker 02: That's what I thought you were saying. [00:14:04] Speaker 03: And therefore, we believe that we should be compensated for that. [00:14:10] Speaker 03: My client is not a big company. [00:14:12] Speaker 03: And everybody knows how expensive these proceedings are. [00:14:15] Speaker 03: These are major undertakings for small companies. [00:14:18] Speaker 03: And given that you have express waivers with other issues here that should not have been brought up, this should have been a case that should have been resolved below. [00:14:27] Speaker 03: The district court entered an 85-page opinion, which really covered virtually every aspect of this. [00:14:36] Speaker 02: And that should have been enough. [00:14:38] Speaker 02: 85 pages suggests some complexity. [00:14:41] Speaker 03: Yes. [00:14:43] Speaker 03: I think that was the first decision the court had on a patent case and wanted to really lay it out. [00:14:49] Speaker 03: But the rulings were very clear of what was going on below. [00:14:52] Speaker 03: And then when you come here, if you have an issue, that's fine. [00:14:59] Speaker 03: That ends my commentary on it. [00:15:01] Speaker 03: Unless there are some questions, I have nothing further. [00:15:05] Speaker 02: Thank you, Mr. Springup. [00:15:07] Speaker 02: Mr. Dunhurst, in the bottom column. [00:15:09] Speaker 04: Well, yes, Your Honor. [00:15:13] Speaker 02: The point made by Mr. Springott is that this is a frivolous case. [00:15:20] Speaker 02: And you shouldn't have been here. [00:15:22] Speaker 04: You got two points. [00:15:25] Speaker 04: One, the waiver argument is certainly discretionary with the court. [00:15:27] Speaker 04: And we did argue elongate member was equivalent. [00:15:30] Speaker 04: We did argue that below. [00:15:31] Speaker 04: We didn't say elongate member as specifically defined in claim 12. [00:15:35] Speaker 04: But with all the proceedings going forward, it was clear there was elongate main member and elongate member with two different claim structures. [00:15:42] Speaker 04: And the method had a different claim. [00:15:43] Speaker 04: And we used the words elongate member when we were discussing our equivalency. [00:15:49] Speaker 04: Why we're here, we have what I would identify as two really crucial errors. [00:15:57] Speaker 04: One is that a reissue patent is issued for the purpose of essentially broadening an issued patent. [00:16:03] Speaker 04: That's basically why people file reissue. [00:16:04] Speaker 00: In any event, to add method claims. [00:16:07] Speaker 00: Well, there are other issues. [00:16:08] Speaker 04: But it's something that people generally consider is going on with a reissue patent. [00:16:12] Speaker 04: The method claims were broader. [00:16:15] Speaker 04: And to take the article claims and use the claims, the article claims, to narrow the method claims because the same article is being used to me is a clear error and a type of precedent that should not be allowed to survive. [00:16:30] Speaker 02: You're saying you have a real issue. [00:16:33] Speaker 02: My personal concern. [00:16:34] Speaker 02: Whether we agree or not, you're saying it's not frivolous. [00:16:37] Speaker 04: Correct. [00:16:38] Speaker 04: Personally, I think this is a very major important issue that should be determined by this court whether or not you can add in the article limitations into the method claims when the method claims clearly have selected different language which is admittedly broader. [00:16:52] Speaker 04: And then the second part, which I think is a really bad law, is when you add the feature, for example, claim 15 has to extend completely across when it doesn't say that in claim 12. [00:17:04] Speaker 00: And the judge actually said- Does the claim 12 say extending between the strapped retaining members? [00:17:10] Speaker 04: Extending between, correct. [00:17:11] Speaker 04: Correct. [00:17:11] Speaker 04: And then claim 15 adds to completely across. [00:17:13] Speaker 00: So because across is different than extending between to you? [00:17:18] Speaker 04: Yes. [00:17:19] Speaker 04: The two elements that you have an extending between and you have another element, which is on top, which have to weave, which they use the word weave, the broad strap through. [00:17:29] Speaker 04: It doesn't have to have continuous piece in claim 12 in order to perform that method. [00:17:33] Speaker 04: You do need a continuous piece extending completely across when you go to claim 15. [00:17:38] Speaker 04: That's the limitation of claim 15. [00:17:39] Speaker 04: If the throw into claim 12, I think, is dangerous precedent for a lot of patent owners, especially this one. [00:17:47] Speaker 04: But it's a reason for appeal. [00:17:48] Speaker 04: And I would also, well, I got 13 seconds. [00:17:52] Speaker 04: I would say that the waiver arm is discretionary. [00:17:55] Speaker 04: We did argue equivalency on the elongate number below. [00:17:58] Speaker 04: And we do have a fairly substantially good argument that the claim constructer had substantial errors, which should not be repeated. [00:18:05] Speaker 02: Thank you. [00:18:06] Speaker 02: Thank you, Mr. Don. [00:18:07] Speaker 02: We'll take the case number back. [00:18:09] Speaker 04: Thank you. [00:18:20] Speaker ?: The honorable court is adjourned for day to day.