[00:00:47] Speaker 05:
Please proceed.

[00:00:51] Speaker 05:
Yes, your honor.

[00:00:54] Speaker 05:
May it please the court.

[00:00:57] Speaker 05:
This case is a textbook example of the critical importance of this court's teaching that claim terms must be construed within the entirety of the specification and that the board cannot construe claims so broadly

[00:01:15] Speaker 05:
as to divorce its constructions from the specification and evidence.

[00:01:20] Speaker 05:
Regrettably, that is what happened here, and so the board's decision should be overturned for at least three alternative, independent reasons.

[00:01:29] Speaker 05:
First, no reasonable interpretation of the claim language in the context of the full specification.

[00:01:38] Speaker 05:
could conclude that the term second lockdown mechanism would be understood by one of ordinary skill in the art to include a setting tool.

[00:01:48] Speaker 05:
Every embodiment in the patent depicts a separate removable setting tool.

[00:01:55] Speaker 05:
This specification repeatedly refers to the setting tool being removed, and it identifies separate third party setting tools

[00:02:05] Speaker 05:
that could be used in conjunction with the claimed invention.

[00:02:10] Speaker 05:
Furthermore, the inventor disparaged the prior design with an integrated setting tool because it had, quote unquote, a high profile, in contrast to the goal of the 053 invention to achieve a, quote unquote, low profile.

[00:02:27] Speaker 05:
The only way to do that is through a separate removable setting tool because neither

[00:02:34] Speaker 05:
of the challenged claims in this case is anticipated by the prior art, which fails to disclose a lockdown mechanism separate from the setting tool, the board's decision should be reversed for that reason alone.

[00:02:48] Speaker 05:
Second, no reasonable interpretation of second lockdown mechanism in the context of the entire specification could conclude that it permits the exclusive use of hydraulic pressure to lock the mantrel into position.

[00:03:04] Speaker 05:
Every embodiment in the patent includes a second lockdown mechanism that uses mechanical locking to lock the mandrel into the operative position.

[00:03:16] Speaker 05:
Even in figure five, where the hydraulic piston is used to initially stroke the mandrel into position, it is ultimately secured, it is ultimately locked by nut 60 and bolts 56 for mechanical.

[00:03:31] Speaker 05:
The abstract itself discloses a quote unquote second mechanical locking mechanism, close quote, which was one of the reasons that the district court construed the claims to require that feature.

[00:03:45] Speaker 04:
I know you were trying to get three points out, but each one is a little longer than you're usually supposed to leave.

[00:03:51] Speaker 04:
Certainly.

[00:03:52] Speaker 04:
So let me turn to the issue of the district court's construction and power integration.

[00:03:56] Speaker 04:
Yes, Your Honor.

[00:03:58] Speaker 04:
Isn't this case distinguishable from power integrations because the district court actually adopted a claim construction that neither party proposed?

[00:04:08] Speaker 04:
I mean, you didn't propose this claim construction, did you?

[00:04:11] Speaker 05:
We did not propose it in the district court, but I don't think that's a relevant distinction.

[00:04:17] Speaker 05:
I think the key point that this court made in power integrations is that, particularly in a system where you have the two different standards, that the board has a responsibility to explain why

[00:04:31] Speaker 05:
the district court's claim construction, and there's no dispute, we're talking about even if it was adopted by the district court, Sue Esponte, it is the district court's construction.

[00:04:41] Speaker 05:
There's no dispute about that.

[00:04:42] Speaker 05:
That the board had an obligation at a minimum to explain why that construction does not come within the broadest reasonable interpretation standard.

[00:04:54] Speaker 04:
Well, I mean, I thought that that's what the board did.

[00:04:56] Speaker 04:
I mean, the board pointed out that it was not proposed by either party.

[00:04:59] Speaker 04:
The board actually looked at it.

[00:05:01] Speaker 04:
But it didn't accept it, correct?

[00:05:03] Speaker 05:
It didn't accept it.

[00:05:04] Speaker 05:
But I don't think the board explained, as power integrations requires, why particularly, specifically, the district court's construction did not come within the broadest reasonable interpretation.

[00:05:19] Speaker 05:
But I think regardless of power integrations, I think our primary argument is that the court doesn't even need to reach the power integrations point.

[00:05:30] Speaker 05:
because the constructions adopted by the board in this case are simply beyond even the broadest reasonable interpretation standard.

[00:05:38] Speaker 05:
But as an alternative, we think, at a minimum, the board's decision should be vacated and it should go back to the board for the board to perform the requisite analysis of power integrations and explain why the district court's construction in this case

[00:05:54] Speaker 05:
is not, does not fit within the rubric of the broadest reasonable interpretation, even assuming that's the standard.

[00:06:03] Speaker 05:
So to respond to your honor's question, we don't think the fact that the district court adopted the construction that it did, sua sponte, allows the board then to not explain where here, as in power gardens, it was critical to the construction.

[00:06:17] Speaker 04:
Didn't the board specifically say that part of the problem with the district court's sua sponte construction was it was really just based on the abstract?

[00:06:24] Speaker 04:
And that wasn't thorough enough analysis?

[00:06:28] Speaker 05:
I don't believe that.

[00:06:30] Speaker 05:
Certainly, the board disagreed with our construction.

[00:06:34] Speaker 05:
I don't think the board went into the level of detail to explain why it didn't fit within broadest reasonable interpretation.

[00:06:43] Speaker 05:
But again, we think the court doesn't need to reach that.

[00:06:48] Speaker 05:
But we don't believe that's a meaningful distinction.

[00:06:53] Speaker 05:
between our case and power integrations.

[00:06:58] Speaker 05:
And just to hit my third point, I think even if this court

[00:07:03] Speaker 05:
were to disagree with us and think that the board's construction pass muster under the broadest reasonable interpretation standard, the board still should be reversed on its resolution of the legal question of enablement in this case.

[00:07:23] Speaker 05:
Unrebutted expert testimony established that it would have been, and the phrase is virtually impossible

[00:07:29] Speaker 05:
at the relevant time for one of ordinary skill to make the invention claimed in the 053 patent using the 118 disclosure.

[00:07:39] Speaker 04:
What do you rely on in the spec to say that the second lockdown mechanism has to be mechanical?

[00:07:47] Speaker 05:
Certainly.

[00:07:49] Speaker 05:
In the specification, the specification disparages, I think first and foremost it disparages a tool that tried to use

[00:07:58] Speaker 05:
Hydraulic pressure for securing the mandolin position explaining that and this is on JA 69 quote.

[00:08:04] Speaker 05:
It was less secure.

[00:08:05] Speaker 04:
Where are you in this fact?

[00:08:11] Speaker 05:
Pardon me, your honor.

[00:08:20] Speaker 05:
in a column 6, less secure than a mechanical lockdown mechanism because it was dependent on maintenance of the hydraulic fluid pressure in the setting tool.

[00:08:33] Speaker 05:
JA68 columns 3 and 4, persons in the industry are generally less inclined to endorse or accept a hydraulic lockdown mechanism.

[00:08:46] Speaker 05:
What line are you?

[00:08:53] Speaker 05:
Thank you.

[00:08:53] Speaker 05:
My apologies, Your Honor.

[00:08:54] Speaker 05:
I'm at lines 9 and 10, 8, 9, 10.

[00:09:01] Speaker 05:
Top of column 3.

[00:09:03] Speaker 05:
Yes, Your Honor.

[00:09:09] Speaker 05:
And moving down to the end of column 3, there exists a need for a lockdown mechanism that provides a broader range of adjustment

[00:09:19] Speaker 05:
while ensuring a secure mechanical lockdown for maximum security.

[00:09:25] Speaker 05:
So combined with, I think, this disparagement that specifically targets the use of hydraulic pressure and speaks of the need to secure mechanical lockdown for maximum security, in addition to the use of mechanical in the specification, sorry, in the abstract, that I think the disparagement in the specification

[00:09:49] Speaker 05:
especially when the specification is viewed in its entirety, forecloses the board's construction as unreasonably divorced from the specification and the record evidence in terms of what one of ordinary skill in the art would understand that to be.

[00:10:08] Speaker 05:
I think a key example of the board's sort of cherry-picking and not reading the specification in its entirety is the board's reliance at JA-12 on a single sentence in the specification that mandrel 72 is locked down in its operative position by the hydraulic force P2.

[00:10:31] Speaker 05:
The board put a lot of stress

[00:10:33] Speaker 05:
on that, but the board's analysis impermissibly ignores the sentence that immediately follows that sentence, which clarifies, quote, this is in column eight, lines 31 through 34, to ensure the mandrel is secured in the operative position.

[00:10:53] Speaker 05:
The nuts are turned against the lower flange, 54, of the mandrel head, 26.

[00:10:57] Speaker 05:
Again, to ensure that's the mechanical locking.

[00:11:01] Speaker 05:
The specification never even suggests an embodiment in which the mandrel is locked in the operative position using anything other than a mechanical locking mechanism.

[00:11:15] Speaker 05:
In that point in the spec, it's nut 60 and lower flange 54.

[00:11:19] Speaker 05:
And that's not surprising, again, because the whole point of the invention

[00:11:24] Speaker 05:
was to meet the industry's need for a device that would ensure a secure mechanical lockdown for maximum security.

[00:11:32] Speaker 05:
And again, that's at the end of column three in the spec.

[00:11:37] Speaker 05:
So we believe if the court agrees with us as to either the construction

[00:11:44] Speaker 05:
of either the construction concerning a setting tool or hydraulic, either of those, with respect to second lockdown mechanism, it should reverse outright.

[00:11:56] Speaker 05:
Because there's no dispute that under our construction and under the construction adopted by the district court, there is no anticipation in this case as a matter of law.

[00:12:05] Speaker 05:
Even if the court were to disagree with us on that point,

[00:12:09] Speaker 05:
We believe that the board reversibly erred on enablement.

[00:12:12] Speaker 05:
And finally, the court needs to reach the issue.

[00:12:15] Speaker 05:
We also believe that the board erred in denying our motion to amend.

[00:12:23] Speaker 05:
The board did not even grapple with the key touchdown of the motion to amend, which is patentability.

[00:12:30] Speaker 05:
It said that we didn't sufficiently explain the written support.

[00:12:36] Speaker 05:
And the board, I think this isn't a case where the board found an explanation unpersuasive.

[00:12:43] Speaker 05:
It simply declined to consider the explanation that was offered.

[00:12:47] Speaker 04:
No, they found that the explanation wasn't provided.

[00:12:51] Speaker 05:
Well, and our position here is that it was provided certainly in the chart.

[00:12:56] Speaker 05:
that was provided and then even if not there at the hearing where counsel for oil states narrowed in response to questions, narrowed the submission to respond to that and the board simply ignored that.

[00:13:11] Speaker 05:
So this would be a very different case if the board had said, well, you know, we found the explanation wanting.

[00:13:18] Speaker 05:
That's not what happened here and we think at a minimum that the board has an obligation to confront the explanation and the reasoning that was offered.

[00:13:27] Speaker 05:
And I'll save the rest of my time for you, Donald.

[00:13:30] Speaker 03:
Very good.

[00:13:33] Speaker 03:
Who's going first, Mr. Feldhaus?

[00:13:35] Speaker 03:
Who's going first?

[00:13:39] Speaker 01:
Good morning.

[00:13:40] Speaker 01:
Please record John Feldhaus for the Pelly Greens Energy Group.

[00:13:45] Speaker 01:
Your Honor, we have some foam boards here with mechanical devices.

[00:13:50] Speaker 01:
I find it's helpful to have some pictures.

[00:13:52] Speaker 01:
So my colleagues will be putting up some foam boards.

[00:13:55] Speaker 01:
And I am ceding five minutes at a time to my colleague from the US Patent and Trademark Office.

[00:14:01] Speaker 03:
OK, so I'm going to derail you for a second.

[00:14:03] Speaker 03:
They're never helpful.

[00:14:04] Speaker 03:
Like, all this fumbling is distracting.

[00:14:06] Speaker 03:
And this is just language from that you have the claim.

[00:14:08] Speaker 03:
And you've got the same color picture you've got in your brief.

[00:14:11] Speaker 03:
OK, Your Honor.

[00:14:11] Speaker 03:
It's not.

[00:14:12] Speaker 03:
OK, sorry about that.

[00:14:13] Speaker 03:
You should refrain from ever bringing in front boards.

[00:14:16] Speaker 03:
Ever.

[00:14:17] Speaker 01:
All right, sorry, Your Honor.

[00:14:19] Speaker 01:
The first issue, Your Honor, has to do with this idea that the second lockdown mechanism should

[00:14:25] Speaker 01:
operate without hydraulic pressure.

[00:14:28] Speaker 01:
What the board found correctly is that the patent repeatedly talks about hydraulic pressure locking a mandrel in position.

[00:14:37] Speaker 01:
The patent in the background talking about the very prior art that we asserted

[00:14:43] Speaker 01:
says that the hydraulic pressure locks the mandrel in position.

[00:14:49] Speaker 00:
Oil States has never really addressed that specific statement in the patent.

[00:14:54] Speaker 00:
Well, does it lock it in position or does it move it into position so that it can be locked?

[00:14:59] Speaker 00:
The mandrel is not separable and the setting tool is used to hydraulically lock the mandrel in an operative position, Your Honor.

[00:15:06] Speaker 01:
It says it hydraulically locks the mandrel in an operative position.

[00:15:10] Speaker 01:
A similar language is used in collimate

[00:15:12] Speaker 01:
with respect to the hydraulic cylinder in the device of the patent.

[00:15:17] Speaker 01:
The mandrel 72 is locked down in its operative position by the hydraulic force P2.

[00:15:24] Speaker 01:
Now, it's true that the patent goes on to say that to ensure that the mandrel is secured in the operative position, nuts 60 are turned down against the flange.

[00:15:33] Speaker 01:
But that is to ensure that it's in the operative position.

[00:15:36] Speaker 01:
just as the abstract talks about a second mechanical locking mechanism is provided to ensure the mandrel is maintained in the operative position in the event that the hydraulic pressure is lost.

[00:15:47] Speaker 01:
And the board also found compelling that there are dependent claims in this very patent that recite exactly that requirement, claim 10.

[00:15:59] Speaker 01:
recites wherein the second lockdown mechanism comprises a mechanical locking mechanism adapted to ensure the mandrel is maintained in the operative position in the event the fluid pressure is lost.

[00:16:11] Speaker 01:
So Oil States acknowledges that the second locking mechanism of claim 10 is an optional feature.

[00:16:18] Speaker 01:
That is precisely the locking mechanism that they would like to bead into claim 1.

[00:16:23] Speaker 01:
Moreover, claim number 8 requires that the second lockdown mechanism have a hydraulic cylinder.

[00:16:30] Speaker 01:
So now we have a claim that says the second locking mechanism includes a hydraulic cylinder, and then another dependent claim off of claim 8 that says that you need a

[00:16:39] Speaker 01:
mechanical locking mechanism to ensure that the mandrel is held in place in the event that hydraulic pressure is lost, Your Honor.

[00:16:48] Speaker 01:
Precisely what Oil States says needs to be included in claim one is this mechanical locking mechanism that's in the dependent claim.

[00:16:57] Speaker 01:
So there is simply no basis to say that there is any clear and unambiguous disclaimer

[00:17:02] Speaker 01:
in a patent that talks about hydraulic crusher locking a mandolin position in a patent where there's a dependent claim that requires precisely the mechanical locking device that they're trying to read into the independent claim.

[00:17:16] Speaker 01:
Moreover, Your Honor, the board found compelling that the inventor knew when to use the term mechanical, when to use the term hydraulic, and when not to.

[00:17:27] Speaker 01:
Claim one specifically does not have any

[00:17:32] Speaker 01:
adjective describing the locking mechanism.

[00:17:36] Speaker 01:
It simply says a second lockdown mechanism.

[00:17:38] Speaker 01:
When the eventor desired to call something mechanical, he knew enough to do so.

[00:17:43] Speaker 01:
When he desired to call something hydraulic, he knew enough to do so.

[00:17:47] Speaker 01:
Claim one clearly does not require either mechanical or hydraulic.

[00:17:51] Speaker 01:
It's broad enough to cover both, Your Honor.

[00:17:54] Speaker 01:
Now, the other issue has to do with this setting tool.

[00:17:57] Speaker 01:
The setting tool

[00:17:59] Speaker 01:
is something that is simply undefined in the patent.

[00:18:05] Speaker 01:
The problem occurs in part because the argument that the second lockdown mechanism must be separate from the setting tool never explains what a setting tool is.

[00:18:17] Speaker 01:
The district court had that same problem and called this limitation of separate from the setting tool to be unhelpful.

[00:18:24] Speaker 01:
And the problem really relates to

[00:18:27] Speaker 01:
The fact that the invention in Figure 6 has a hydraulic cylinder, 70.

[00:18:35] Speaker 03:
Would you mind moving on?

[00:18:37] Speaker 03:
You don't have a lot of time, and I'd like to hear your arguments on enablement, please.

[00:18:40] Speaker 01:
The enablement is simply, Your Honor, the background of the patent clearly refers to precisely the same device that Oil State says was not enabled.

[00:18:53] Speaker 01:
The 851 patent mentioned in Column 2, JA67,

[00:18:57] Speaker 01:
is the U.S.

[00:18:59] Speaker 01:
patent equivalent of the Prior Art Canadian 118 application.

[00:19:04] Speaker 01:
Same disclosure, same device.

[00:19:06] Speaker 01:
So whenever we read in the 053 patent a description of the 851 device, that's the Prior Art device.

[00:19:14] Speaker 03:
But the 851 patent itself isn't Prior Art?

[00:19:18] Speaker 01:
No, the 851 patent is not Prior Art.

[00:19:20] Speaker 01:
The 118 Canadian application was never cited to the examiner, but it is Prior Art.

[00:19:26] Speaker 01:
That's acknowledged.

[00:19:27] Speaker 01:
The issue is, Your Honor, that the 053 patent in describing the 851 device, the device made according to the 851 patent, says very clearly in addition to locking the mandrel in position with hydraulic pressure,

[00:19:44] Speaker 01:
It says that the blowout preventer protector is widely accepted in the industry and the hydraulic setting tool is very convenient for securing a manual of a well tool in the operative position requiring fixed point pack off in the well.

[00:19:57] Speaker 01:
So here is the same inventor in 1999 explaining to the U.S.

[00:20:02] Speaker 01:
Patent and Trademark Office that this prior device worked very well and was well received in the industry.

[00:20:08] Speaker 01:
It wasn't until the litigation that the inventor, who is an employee of oil states,

[00:20:13] Speaker 01:
decided that this device never worked.

[00:20:15] Speaker 01:
But even his testimony today doesn't support the theory that the PriorArt patent published application is not enabling.

[00:20:26] Speaker 01:
The claim has nothing to do with pressure.

[00:20:28] Speaker 01:
It doesn't even have to do with fracking.

[00:20:30] Speaker 01:
The inventor, Mr. Dallas, acknowledged that the 851 device worked at low pressure.

[00:20:37] Speaker 01:
It held at least sand off even the testimony

[00:20:41] Speaker 01:
that Oil States refers to in the October deposition, Mr. Dallas said that he had two tools.

[00:20:48] Speaker 01:
Both were used commercially.

[00:20:50] Speaker 01:
Both were used in fracking operations.

[00:20:52] Speaker 01:
He said they worked fine when the pressures were 3,000 pounds.

[00:20:56] Speaker 01:
They kept the sand off of the wellhead.

[00:20:59] Speaker 01:
They protected the wellhead.

[00:21:00] Speaker 01:
He charged for that use.

[00:21:01] Speaker 04:
Well, he obviously thought that this

[00:21:03] Speaker 04:
this second invention of his was an improvement over the prior art?

[00:21:07] Speaker 01:
Well, he may have thought it was an improvement, but it doesn't mean that the first invention didn't work.

[00:21:13] Speaker 01:
The case law is very clear that the invention doesn't have to work for all purposes.

[00:21:17] Speaker 01:
Mr. Dallas's concern seemed to be that if the well pressure went high, that the first tool maybe didn't work as well.

[00:21:25] Speaker 01:
Now, it's not really clear that it didn't.

[00:21:27] Speaker 01:
The only testimony we have is from Mr. Dallas,

[00:21:30] Speaker 01:
There's no corroborating testimony.

[00:21:32] Speaker 01:
He's clearly a biased witness.

[00:21:34] Speaker 01:
I think our state's council admitted that they looked for a corroborating witness and couldn't find one.

[00:21:39] Speaker 03:
So we really don't know at what point that first device... What was the precise finding of the board regarding enablement?

[00:21:46] Speaker 03:
What did it articulate?

[00:21:48] Speaker 03:
What did it base its decision on?

[00:21:52] Speaker 01:
Well, it based its decision on a number of factors.

[00:21:55] Speaker 01:
One is the statement in the March deposition.

[00:21:59] Speaker 01:
that the device worked at low pressure.

[00:22:01] Speaker 01:
One was an admission by Mr. Dallas that the prior device failed only 50% of the time.

[00:22:09] Speaker 01:
And also the statements in the 053 patent about the device working fine and being well accepted in the industry.

[00:22:18] Speaker 01:
I believe they also relied on Green's expert, Mr. Shappaford, who said that

[00:22:23] Speaker 01:
There will be no problem even designing a device according to the 118 patent that would work at high pressure.

[00:22:31] Speaker 01:
It was just a matter of making the cylinder and surfaces large enough to apply the appropriate pressure.

[00:22:41] Speaker 03:
If an invention fails 50% of the time, do you think that supports enablement?

[00:22:48] Speaker 01:
Absolutely, Your Honor.

[00:22:50] Speaker 01:
The case law is absolutely clear that as long as the invention works reasonably well for its intended purpose, and the intended purpose can be what's in the preamble of the claim.

[00:23:02] Speaker 01:
Here, the preamble of the claim really repeats the language.

[00:23:07] Speaker 01:
The preamble says, an apparatus for securing a handle of a well tool in an operative position requiring fixed point pack-off.

[00:23:14] Speaker 01:
That is exactly what the background

[00:23:17] Speaker 01:
of the 053 patent says that the 851 tool was able to do.

[00:23:22] Speaker 01:
It's very convenient for securing a mandrel of a well tool in the operative position requiring fixed point pack off in the well.

[00:23:32] Speaker 01:
So here the inventor in the background is admitting that this prior tool did exactly what claim one requires.

[00:23:41] Speaker 03:
Now you make an argument in your brief that you think

[00:23:44] Speaker 03:
that we need to change or hold, if it's not a matter of changing, hold that printed publications are presumptively enabled.

[00:23:56] Speaker 03:
I don't hear you making that argument here.

[00:23:59] Speaker 03:
I hear you mostly defending the decision of the board on enablement for this court.

[00:24:05] Speaker 03:
Is it really your position that all printed publications, all of them, not the specific one at issue here, ought to be presumptively enabling?

[00:24:12] Speaker 01:
Well, consistent with the case law, Your Honor, I think that there are district courts that are extending this court's precedent to find that.

[00:24:21] Speaker 01:
And I'm out of time, Your Honor.

[00:24:23] Speaker 01:
May I answer your question?

[00:24:25] Speaker 01:
I don't wish to use up my colleague's time.

[00:24:30] Speaker 01:
I think the issue here, and the only reason I didn't make that argument, I think that it is true that the publication should be presumptively enabled.

[00:24:38] Speaker 01:
in the prior art, but it's not necessary.

[00:24:40] Speaker 03:
All printed publications should be presumptively enabled?

[00:24:43] Speaker 03:
That's the way you frame it in your brief, and so I just want to really understand.

[00:24:46] Speaker 03:
I understand this is a published application of something that was later issued as a patent, but the idea that all printed publications are presumptively enabled?

[00:24:57] Speaker 01:
Well, I think that's an appropriate interpretation of the case law, Your Honor, because the case law does indicate that

[00:25:05] Speaker 01:
Non-patent publications.

[00:25:06] Speaker 03:
Is there anything in our case law that indicates this, or are you only referring to the two district courts?

[00:25:11] Speaker 01:
No, no.

[00:25:12] Speaker 01:
This is, well, in Ray Antor Media, which is this court's precedent, holds that non-patent publications cited by an examiner are presumptively enabling.

[00:25:25] Speaker 01:
So this court has held that non-patent publications cited by an examiner are presumptively enabling.

[00:25:31] Speaker 01:
The court has also held that the

[00:25:34] Speaker 01:
The non-claimed disclosures in U.S.

[00:25:36] Speaker 01:
patents are presumptively enabling both in the patent office and in district court.

[00:25:41] Speaker 01:
So by analogy, it does seem reasonable that printed publications in other contexts other than just prosecution

[00:25:51] Speaker 01:
would be presumptively enabling.

[00:25:53] Speaker 01:
Now we do also clarify that in this particular case that presumption holds even stronger because we have a Canadian application that's directly corresponding to the 851 patent which is presumptively enabled.

[00:26:18] Speaker 02:
Thank you, Your Honor.

[00:26:19] Speaker 02:
May it please the court?

[00:26:20] Speaker 03:
Mr. Halma, I'd like the office's view on this legal question of whether or not all printed publications should be deemed presumptively enabling.

[00:26:29] Speaker 02:
Well, we didn't intervene on that point.

[00:26:32] Speaker 02:
We don't have any position on that point as of right now.

[00:26:35] Speaker 02:
So that's not something we've weighed in on.

[00:26:37] Speaker 02:
The two issues that we weighed in on were the constitutionality issue.

[00:26:41] Speaker 02:
And after the opening brief was submitted in this case,

[00:26:43] Speaker 02:
This court's decision, MCM, resolved that issue.

[00:26:46] Speaker 02:
And I think that issue is now agreed upon as far as this was resolved.

[00:26:50] Speaker 02:
The second point was to defend the board's actions in the motion to amend.

[00:26:55] Speaker 02:
So if you- Yeah, let's talk about the motion to amend.

[00:26:57] Speaker 04:
Yes, absolutely.

[00:26:58] Speaker 04:
There's been a lot of criticism about the board's strictness as it relates to motions to amend.

[00:27:04] Speaker 04:
And so I assume that's why you intervened.

[00:27:07] Speaker 04:
You want to try to defend their strictness.

[00:27:10] Speaker 04:
But what is it exactly that you wanted them to do in this particular instance to justify their motion?

[00:27:19] Speaker 02:
So just to be clear, I think that it's not a fair characterization that the board rejected this on purely procedural grounds, because I think the board did look at the substance here.

[00:27:28] Speaker 02:
in particular with the RIN description, what the board did was it looked at the citations and said, we don't think that they're sufficient for these particular claim terms.

[00:27:38] Speaker 02:
It wasn't for all of the claim terms.

[00:27:39] Speaker 02:
They singled out two different claim terms, one of which the Wellhead Assembly, which doesn't appear anywhere in the specification of a particular claim term.

[00:27:48] Speaker 02:
And the board said, you have to give us something more than just a citation, the big parts of the specification, for us to understand how you link up the specification to a term that is admittedly never

[00:27:58] Speaker 02:
mentioned in the specification.

[00:28:00] Speaker 02:
Part of, I think, the problem with dealing with these motions to amend is that they come at the issue of pionability from the reverse that the court and the pion office is used to, which is that the burden is on the pion owner to prove pionability.

[00:28:14] Speaker 02:
So if you turn it around the other way and somebody submitted citations to a piece of prior art with no explanation, no expert testimony,

[00:28:22] Speaker 02:
It could be that that would be sufficient, but it's not necessarily sufficient.

[00:28:26] Speaker 02:
And if you really wanted to invalidate a pattern, you would really want to explain.

[00:28:32] Speaker 02:
At the very least, give explanation, probably give expert testimony.

[00:28:35] Speaker 02:
Same thing for the written description issue.

[00:28:37] Speaker 02:
And so in this case, the board looked, said we can't understand how you have written description support.

[00:28:42] Speaker 02:
And as a result, you haven't carried your burden.

[00:28:45] Speaker 02:
So it was a substantive issue.

[00:28:48] Speaker 02:
There's a procedural aspect to it, which is that the rules require them to set forth their support for written description.

[00:28:54] Speaker 02:
And I think their position is that set forth means just listing the page and line numbers or the column and line numbers where that support can be found.

[00:29:03] Speaker 02:
But if there was any doubt about what that set forth means, the board issued an order in this case saying that may be enough.

[00:29:10] Speaker 02:
And certainly, in some instances, it might be enough.

[00:29:13] Speaker 02:
But it's not necessarily enough and did cite to a situation where it wasn't enough.

[00:29:18] Speaker 03:
Where does the requirement come from that the patentee has to establish that his amendment would result in patentability?

[00:29:29] Speaker 02:
Well, the board gets that authority from the statute.

[00:29:33] Speaker 03:
We say the board gets that authority from the statute.

[00:29:37] Speaker 03:
Are you saying the statute expressly says in order to amend?

[00:29:40] Speaker 03:
that the patentee would have to establish that this would render his claims patentable?

[00:29:47] Speaker 03:
Or are you saying the board gets the authority to make up the rules?

[00:29:50] Speaker 02:
Well, the board, it's both.

[00:29:52] Speaker 02:
Because the board does get the authority to make up the rules.

[00:29:55] Speaker 02:
It does give the board that authority.

[00:29:56] Speaker 02:
But I think at ProxyCon, this court held that it was proper for it

[00:30:01] Speaker 02:
the board to have Rule 42.20, which puts the burden on the person seeking the amendment.

[00:30:06] Speaker 02:
In this case, it's an amendment seeking the motion.

[00:30:09] Speaker 02:
And it's a motion to amend in this case.

[00:30:11] Speaker 02:
42.20 gives the, Proxcon said 42.20 is a proper exercise of the board's authority and applied it to a motion to amend.

[00:30:23] Speaker 02:
And in that case, they said, yes, this is absolutely reasonable.

[00:30:27] Speaker 02:
for the board to do.

[00:30:27] Speaker 02:
There's nothing arbitrary about the board's decision.

[00:30:29] Speaker 04:
In that case, though, there was no discussion of what the nature of that burden is.

[00:30:34] Speaker 04:
It's simply that the person who wants to amend has to explain why that amendment would be patentable.

[00:30:43] Speaker 04:
But how far do they have to go?

[00:30:46] Speaker 04:
Are you saying that every proposed amendment, you have to define every term used in the claim?

[00:30:56] Speaker 02:
I think that ProxyCon, at the very least, stands for the proposition that the requirements laid out by the board in Idol Free were reasonable.

[00:31:07] Speaker 02:
And the board, in this case, pointed to Idol Free as setting forth the requirements that they have.

[00:31:12] Speaker 02:
In particular, the portion of Idol Free that was endorsed by the ProxyCon case was the determination of patentability with respect to the prior anticipation of business.

[00:31:24] Speaker 02:
It's a pretty straightforward application of the law.

[00:31:27] Speaker 02:
If you want to understand what infringes, or what anticipates, or what's rendered obvious, you have to have a claim construction.

[00:31:32] Speaker 02:
Maybe not every single term needs to be construed.

[00:31:35] Speaker 02:
That may very well be that some terms just have their claim meaning.

[00:31:37] Speaker 02:
They don't need a proper claim construction.

[00:31:38] Speaker 02:
But the board, in this case, pointed to claims in terms that it thought didn't need to be construed, particularly in light of the district court's previous articulation that it thought that at least some of these terms were ambiguous, is what I call them.

[00:31:49] Speaker 02:
This was when they sought to insert the term into

[00:31:53] Speaker 02:
into a claim construction.

[00:31:54] Speaker 03:
And did the patentee have an opportunity to respond to that?

[00:31:56] Speaker 03:
The patentee has the burden of, in order to secure an amendment, it can't predict necessarily what complaints the board is going to have, like the ambiguity of the claim term.

[00:32:07] Speaker 03:
So once the board pointed out the ambiguity, did the patentee have enough opportunity to explain to the board those issues in order to try to secure an amendment?

[00:32:17] Speaker 02:
Well, I think that it's fair to say that they were aware of that ambiguity, because their own expert

[00:32:22] Speaker 02:
There was a dispute between the experts in this case about whether there was a meaning.

[00:32:29] Speaker 02:
And I think their experts said something.

[00:32:31] Speaker 03:
But my question was a yes or no question, Mr. Helm.

[00:32:33] Speaker 03:
Did the patentee have an opportunity to respond to the board having raised that certain claim terms weren't clearly defined?

[00:32:42] Speaker 03:
Is there in the procedures within the PTO an opportunity

[00:32:46] Speaker 03:
for a patentee to offer a response?

[00:32:48] Speaker 02:
Well, they can certainly offer a response in the papers.

[00:32:52] Speaker 02:
They can offer a response at the hearing.

[00:32:53] Speaker 02:
And they certainly took advantage of offering a response at the hearing when they tried to give further explanation.

[00:32:59] Speaker 02:
I guess narrowing is what it is.

[00:33:00] Speaker 03:
There was a hearing to decide whether they should be allowed to amend?

[00:33:04] Speaker 02:
Yes.

[00:33:05] Speaker 02:
They made arguments about their motion to amend at the hearing.

[00:33:09] Speaker ?:
Yes.

[00:33:09] Speaker 02:
That's true.

[00:33:09] Speaker 02:
I see my time is up.

[00:33:13] Speaker ?:
No further questions?

[00:33:20] Speaker 05:
Briefly, just two points, and I promise I'll go through them more quickly this time.

[00:33:26] Speaker 05:
My friend referred to the lack of a definition.

[00:33:31] Speaker 05:
of a setting tool.

[00:33:33] Speaker 05:
I'd like to point the court to the bottom of column 9, top of claim 10, in the patent itself where it defines a setting tool as a device for inserting the mandrel through the wellhead into proximity of the operative position.

[00:33:53] Speaker 05:
Secondly, I'd like to respond to my friend's argument concerning whether the tool worked.

[00:33:59] Speaker 05:
And I think the critical question here

[00:34:02] Speaker 05:
is whether the tool worked as required by the claims of the 053 patent.

[00:34:12] Speaker 05:
And the inventor's testimony on this in his deposition was undisputed that it did not lock

[00:34:20] Speaker 05:
at all, not one single time, not under low pressure, not even in a vacuum.

[00:34:24] Speaker 05:
And let me provide some sites for that.

[00:34:27] Speaker 05:
That's JA 897, 960 through 61, and 990 through 91.

[00:34:34] Speaker 05:
So again, the question isn't whether it worked.

[00:34:36] Speaker 05:
It's whether it functioned as required by the claims of the patent.

[00:34:42] Speaker 05:
And the inventor's testimony was undisputed, that not even at low pressure, it did not lock

[00:34:49] Speaker 05:
It did not lock as required by the patent.

[00:34:52] Speaker 05:
So for all of those reasons, we would request that the court reverse and render, or at the least vacate and remand for the board to apply the proper legal analysis in the first instance.

[00:35:04] Speaker 05:
If there are no further questions.

[00:35:06] Speaker 05:
Thank you, Your Honors.

[00:35:07] Speaker 03:
Thank you, all counsel, for their argument.

[00:35:09] Speaker 03:
The case is taken under fire.