[00:00:22] Speaker ?:
Bye.

[00:01:00] Speaker ?:
All right.

[00:01:33] Speaker ?:
Thank you.

[00:02:22] Speaker ?:
Thank you.

[00:04:08] Speaker ?:
Thank you.

[00:04:47] Speaker 06:
All right.

[00:05:18] Speaker 06:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:05:23] Speaker ?:
God save the United States and this honorable court.

[00:05:26] Speaker 05:
Please be seated.

[00:05:35] Speaker 05:
Good morning.

[00:05:35] Speaker 05:
Our first case for today is 2015-1488, Pentair Water Pool versus Hayward Industries.

[00:05:44] Speaker 05:
Mr. Bromberg, please proceed.

[00:05:50] Speaker 01:
Thank you, Your Honors.

[00:05:51] Speaker 01:
Good morning and may it please the Court.

[00:05:53] Speaker 01:
This case involves fluid heaters and the claimed tube sheet is fully supported by the specification of the 804 patent without restriction on the tube sheet material, so the contrary ruling by the District Court should be reversed.

[00:06:11] Speaker 01:
The Court used flawed analysis and also violated the basic rule that inferences should be drawn in favor of the

[00:06:19] Speaker 01:
non-moving party here, Hayward.

[00:06:22] Speaker 01:
The evidence strongly supported Hayward's position that there was adequate, indeed, full disclosure of the tube sheet of claims 43 to 45 and 47.

[00:06:31] Speaker 01:
The tube sheet is first described in the 804 pet by its function, which is unifying tubes into an integrated assembly.

[00:06:41] Speaker 01:
And no particular material is mentioned because the person of skill in the art would know that heat exchangers and their tube sheets

[00:06:49] Speaker 01:
had been made of meble for over a hundred years.

[00:06:53] Speaker 00:
Is this a circumstance where you sort of got what you asked for with respect to the claim construction and then had to live with the breadth of that construction?

[00:07:05] Speaker 01:
I don't think so, Your Honor.

[00:07:06] Speaker 01:
I think the claim construction fully supported the proposition that there is written description of what's in the claim.

[00:07:17] Speaker 01:
The functional description was in the 692 patent, the original application.

[00:07:23] Speaker 01:
Original claim 29 of that application actually had a tube sheet, a pair of end plates it was referred to, with no restriction as to the material.

[00:07:35] Speaker 05:
That's in the parent patent?

[00:07:37] Speaker 01:
In the parent application.

[00:07:39] Speaker 05:
Because these originally filed claims in this application all limited themselves to stainless tube deal sheets.

[00:07:46] Speaker 05:
stainless steel tube sheets.

[00:07:48] Speaker 05:
Tongue twister.

[00:07:49] Speaker 05:
Every one of the originally filed claims in this application were limited.

[00:07:53] Speaker 05:
Not just to non-corrosive resistant, but to stainless steel.

[00:07:57] Speaker 05:
Am I not remembering it right?

[00:07:59] Speaker 01:
I don't think that's correct, Your Honor.

[00:08:00] Speaker 01:
I think there are some claims that do limit to stainless steel, and there are other claims that don't.

[00:08:06] Speaker 05:
In the originally filed claims associated with this application,

[00:08:11] Speaker 05:
You think that there were tube sheet claims that had no restriction on corrosive resistance?

[00:08:16] Speaker 01:
Do you mean on the 077R?

[00:08:18] Speaker 05:
I mean on this patent that's an issue.

[00:08:20] Speaker 01:
The 804.

[00:08:21] Speaker 05:
The 804.

[00:08:22] Speaker 01:
OK, well, the first application went abandoned.

[00:08:27] Speaker 01:
Then it was renewed in the 077 application, which emerged as the 804 patent.

[00:08:32] Speaker 01:
So there was no patent that came off of the parent application.

[00:08:37] Speaker 01:
So if you look at them together, you see

[00:08:41] Speaker 01:
tube sheets described in the original without restriction as to material.

[00:08:46] Speaker 01:
But not in the original 804 claims?

[00:08:49] Speaker 01:
Not in the claims that were filed in the 077, correct, Your Honor.

[00:08:53] Speaker 05:
077 is the application that led to 804?

[00:08:56] Speaker 01:
Yes, Your Honor.

[00:08:59] Speaker 01:
And in fact, Pentair admits there's no material limitation in the original claim 29 or in Figure 2.

[00:09:06] Speaker 01:
Figure 2 introduces the alternative tube sheet

[00:09:10] Speaker 01:
That's in column 7, sorry, column 8, starting at line 29.

[00:09:19] Speaker 01:
And that was new material in the 077 application.

[00:09:25] Speaker 01:
I'm sorry, that was not new material.

[00:09:27] Speaker 01:
That was new material in the 077 application, but figure 2 in the original was in the 692 and repeated verbatim in the 077.

[00:09:38] Speaker 01:
And that's the one that I quoted that described the tube sheet in terms of its function of collecting the tubes into a unified structure.

[00:09:47] Speaker 01:
So that material is carried forth verbatim.

[00:09:51] Speaker 01:
It provides disclosure of tube sheets made of whatever material would be understood by a person of skill in the art.

[00:10:00] Speaker 01:
And that, in fact, was metal, cast iron, steel, stainless steel.

[00:10:05] Speaker 00:
It doesn't actually use those phrases.

[00:10:08] Speaker 01:
those words.

[00:10:08] Speaker 01:
It does not, Your Honor, but the prior art that's discussed in the patent and that is cited during the prosecution of the patent does use those terms.

[00:10:20] Speaker 00:
But that's the very prior art that you're disparaging.

[00:10:25] Speaker 01:
Not disparaging, Your Honor.

[00:10:28] Speaker 01:
There's no disparagement of the prior art.

[00:10:30] Speaker 01:
It's the district court that said that stainless steel is an essential element

[00:10:37] Speaker 01:
of these claims.

[00:10:39] Speaker 00:
Well, corrosion resistant material.

[00:10:40] Speaker 01:
Corrosion resistant.

[00:10:41] Speaker 00:
It starts with the abstract.

[00:10:42] Speaker 00:
I mean, I know that the abstract doesn't mean much, but when you look at it and the very first place you see anything in this patent talks about how important corrosion resistance is, and then it's repeated over and over and over and over, I don't know how you can say that you're claiming anything other than corrosion resistant material.

[00:11:01] Speaker 01:
Well, Your Honor, there are many places in the specification

[00:11:07] Speaker 01:
where there is not a requirement of corrosion resistance.

[00:11:11] Speaker 01:
And this is a patent where you have some claims directed to the tube sheet, some directed to the burner assembly, some directed to the... Are there many places where it uses the word tube sheet and doesn't include the word stainless steel or corrosion resistance?

[00:11:28] Speaker 03:
Well, it uses the word heat exchanger, Your Honor, because... I'm not talking about the heat exchanger, though.

[00:11:36] Speaker 03:
But the issue is whether the tube sheet itself has to be stainless steel or corrosion resistant.

[00:11:43] Speaker 01:
Right.

[00:11:43] Speaker 01:
And I think, Your Honor, that the heat exchanger is the structure that includes the tube sheet.

[00:11:48] Speaker 01:
And certainly, any person of skill in the art understood that.

[00:11:52] Speaker 01:
And we presented evidence.

[00:11:53] Speaker 03:
Can you answer my question, though?

[00:11:54] Speaker 03:
My question is, are there many places in the patent when you specifically refer to tube sheet that it doesn't include the word stainless steel or corrosion resistant modifying tube sheet?

[00:12:07] Speaker 01:
I think, Your Honor, that there are a couple of places where it refers to the tube sheet metal.

[00:12:13] Speaker 01:
Where?

[00:12:13] Speaker 01:
That's at 9 colon 910.

[00:12:18] Speaker 00:
Pardon?

[00:12:19] Speaker 00:
Column 9?

[00:12:20] Speaker 01:
Column 9.

[00:12:22] Speaker 00:
What lines?

[00:12:34] Speaker 01:
And in the... Where in Column?

[00:12:37] Speaker 00:
Are we supposed to just look at the whole column and know what you're talking about?

[00:12:40] Speaker 01:
My apologies.

[00:12:43] Speaker 01:
There is reference to a flowing of the tube sheet metal in lines 9 to 10.

[00:12:48] Speaker 01:
And there is also fluid deformation of the tube sheet metal referred to in column 13.

[00:12:56] Speaker 01:
But before all of that, before all of that, in column 6, line 34,

[00:13:06] Speaker 01:
You have the sentence, a pair of end plates, 72, 74, are soldered, welded, or otherwise affixed in watertight fashion on each terminal.

[00:13:17] Speaker 01:
So soldering and welding, of course, refers to a metal structure.

[00:13:23] Speaker 00:
And the whole... Well, that's not tube sheets.

[00:13:24] Speaker 00:
That's talking about the end plates.

[00:13:26] Speaker 01:
The end plates are the same as the tube sheets, Your Honor, as you will see in column eight.

[00:13:35] Speaker 01:
line 29, figure 7 shows an alternative tube sheet end plate.

[00:13:40] Speaker 01:
It states there, showing that those are the same things.

[00:13:44] Speaker 03:
Yes, but if you finish reading the rest of those lines, it says the tube sheet is preferably formed from a thin plate or sheet of stainless steel.

[00:13:54] Speaker 01:
Yes, that's correct, Your Honor.

[00:13:56] Speaker 01:
That is a preferred embodiment introduced.

[00:13:58] Speaker 03:
But I understand that if it's mentioned one time,

[00:14:02] Speaker 03:
or maybe a couple times when it's describing one specific example of its preferred embodiment.

[00:14:06] Speaker 03:
But almost every single time it uses the word tube sheet here, it talks about it being a stainless steel tube sheet, starting with the abstract, where it talks about the importance of the corrosion resistance and throughout.

[00:14:18] Speaker 03:
Yes, you can pull out some isolated incidents where it's discussing other aspects of how the tube sheet is formed and the like.

[00:14:25] Speaker 03:
But I don't see, I mean, when you have, what's the standard here?

[00:14:28] Speaker 03:
I mean, isn't it,

[00:14:30] Speaker 03:
Almost everything talks about this tube sheet being stainless steel or corrosion resistant.

[00:14:35] Speaker 03:
Isn't that enough for disclaimer?

[00:14:37] Speaker 01:
I respectfully know, Your Honor.

[00:14:39] Speaker 01:
What would you require?

[00:14:41] Speaker 01:
First of all, what is required to meet the written description requirement... No, I want to know what you think is required for disclaimer.

[00:14:47] Speaker 01:
I will answer your question, if I may.

[00:14:49] Speaker 01:
It's disclosure.

[00:14:50] Speaker 01:
The disclosure is in this patent.

[00:14:52] Speaker 01:
And then if you look for a disclaimer, you have to see an explicit reference to

[00:14:58] Speaker 01:
This invention does not cover... You think you have to have magic words that say, we disclaim X. Not magic, but there has to be enough there so that it's clear that it does not reach to cover the other claims.

[00:15:14] Speaker 03:
Does it have to say something about this patent does not cover?

[00:15:19] Speaker 03:
Or can it say, can basically every single discussion be directed at a specific, more narrow

[00:15:28] Speaker 03:
claim term.

[00:15:31] Speaker 03:
Throughout this, let's assume there aren't any other references.

[00:15:36] Speaker 03:
You've found a few, but there weren't references where they used tube sheet without the word stainless steel.

[00:15:41] Speaker 03:
Every time they used the word tube sheet, they modified it by stainless steel.

[00:15:45] Speaker 03:
But they didn't say this isn't limited to stainless steel.

[00:15:51] Speaker 03:
Would you have a disclaimer there?

[00:15:54] Speaker 01:
I think that would be a tougher case for us, Your Honor, but I think there is disclosure.

[00:15:58] Speaker 01:
that contradicts the determination of a disclaimer.

[00:16:02] Speaker 01:
And of course, this specification... So how do we determine that?

[00:16:06] Speaker 03:
I mean, because I read the specification and it's talking about corrosion resistant materials for the tube sheets.

[00:16:13] Speaker 03:
It uses stainless steel most of the time.

[00:16:15] Speaker 03:
It talks about the importance of corrosion resistance.

[00:16:17] Speaker 03:
That seems to be a pretty important part of this invention.

[00:16:21] Speaker 03:
And I don't see anything but stray references to non-corrosion resistant material.

[00:16:26] Speaker 03:
Doesn't that meet a disclaimer standard?

[00:16:28] Speaker 01:
Your Honor, I believe it does not, respectfully.

[00:16:31] Speaker 01:
And I think if the disclosure is in the patent that supports the claims, of course a patentee is entitled to draw claims to various things.

[00:16:40] Speaker 01:
We presented the proposition that what's really interesting in this patent is the plastic header.

[00:16:47] Speaker 01:
Plastic headers had not been used up to that point over 100 years.

[00:16:51] Speaker 00:
But it repeatedly talks about the fact that the corrosion resistance is really important because we're talking about pool water.

[00:16:59] Speaker 00:
My problem is, and this goes back to my original question, is if I were to construe this claim under Phillips, I would say that the claim requires corrosion resistance.

[00:17:11] Speaker 00:
So then you've got a non-infringement, but you've still got a valid patent.

[00:17:15] Speaker 00:
The problem is you asked for a different claim construction that I think really makes sense, and that's not at issue before us.

[00:17:23] Speaker 00:
So now you've gone and put your patent at risk.

[00:17:27] Speaker 01:
Respectfully, Your Honor, we disagree.

[00:17:29] Speaker 01:
We think that the disclosure is there to support it under the written description standard, that corrosion resistance should not be read into the claims at issue here.

[00:17:39] Speaker 01:
There's one claim that calls for a corrosion resistant tube sheet.

[00:17:43] Speaker 01:
That's claim 46.

[00:17:44] Speaker 01:
And under the doctrine of claim differentiation, what does that claim mean if the other claims all have to include corrosion resistant in them?

[00:17:53] Speaker 01:
There are claims in this patent that cover

[00:17:56] Speaker 01:
tube sheets, corrosion resistant tube sheets, stainless steel tube sheets, and claims that cover plastic headers.

[00:18:04] Speaker 01:
And the combination claims that we're looking at here, 43 to 45 and 47, all cover a plastic header on a heater design.

[00:18:16] Speaker 01:
That was something that had never been seen before in the history

[00:18:20] Speaker 01:
these products although they have been made for over a hundred years.

[00:18:23] Speaker 05:
What does that have to do with whether or not the tube sheet is limited to stainless steel or corrosive resistant material?

[00:18:29] Speaker 01:
Well the inventor is entitled your honor to present a claim that's emphasizing the combination of elements including the new plastic header without restricting the tube sheet.

[00:18:39] Speaker 01:
The tube sheet could be made of cast iron, it could be made of steel, it could be made of stainless steel.

[00:18:45] Speaker 03:
It could be made of that but if you didn't put that in your specification

[00:18:49] Speaker 03:
then you don't get it by adding new broader claims later on.

[00:18:52] Speaker 03:
I mean, the original claims that were associated with this patent did use stainless steel every time it used the word tube sheet.

[00:19:01] Speaker 01:
Well, Your Honor, respectfully, there was not a broadening over what was disclosed in the specification when you understand it from the perspective of a person of skill in the art who knows that you make a

[00:19:16] Speaker 01:
heat exchanger and its tube sheets or end plates out of metal and that had been the practice.

[00:19:22] Speaker 05:
I just want to explore the disclaimer concept with you and let me see if we can figure out basically along a spectrum what kinds of things would amount to disclaimer.

[00:19:34] Speaker 05:
So certainly I would think in order to be reasonable you would agree that if the specification said

[00:19:42] Speaker 05:
make this out of stainless steel, any other metal won't work because it'll be too heavy and it'll corrode, period.

[00:19:49] Speaker 05:
Even if the claim later just said tube sheet and didn't say stainless steel, would that amount to a disclaimer in your mind?

[00:19:56] Speaker 01:
I believe it would, Your Honor.

[00:19:57] Speaker 05:
So even though it's not saying don't make it out of this, that, or the other, it's an implicit disclaimer because it's telling you affirmatively to do something and saying, and it's conveying to the world this is the scope of my invention, this is

[00:20:08] Speaker 05:
I'm aware that you could make it out of other materials.

[00:20:11] Speaker 05:
It's not a matter of being uninformed.

[00:20:13] Speaker 05:
It's a matter of carving them out for a specific reason.

[00:20:16] Speaker 05:
At the opposite end of that spectrum is just repeatedly talking about preferably using stainless steel or preferably using a corrosive resistant material without, for example, disparaging non-corrosive resistant materials.

[00:20:31] Speaker 05:
None of these are your case.

[00:20:33] Speaker 05:
I'm trying to set out two opposite ends of the spectrum

[00:20:36] Speaker 05:
and then we'll like kind of cabin in on your facts and see which end they're, so I just want you to know where I'm going.

[00:20:41] Speaker 05:
So you don't fight me too much on what I think are opposite ends of the spectrum.

[00:20:46] Speaker 05:
So the other opposite end would be this example, right, where just because you refer to something as a stainless steel tube sheet, if you never explain why the stainless steel is important and should be preferred over other materials and don't disparage other things, that wouldn't amount to a disclaimer in your view, right?

[00:21:01] Speaker 05:
Correct.

[00:21:02] Speaker 05:
Yes.

[00:21:03] Speaker 05:
And so what this case is,

[00:21:04] Speaker 05:
There are definitely cases where we've had, where we've said you don't need magic language.

[00:21:09] Speaker 05:
So you don't need to say, no disclaimer.

[00:21:12] Speaker 05:
But usually there's something more than just using it repeatedly in the spec, like there's something like the present invention is, or language that really makes it clear to the world.

[00:21:23] Speaker 05:
Is your argument that there isn't any such language as that in this specification?

[00:21:29] Speaker 01:
Well, there is language that says the present

[00:21:32] Speaker 01:
convention includes, and then it lists a bunch of things.

[00:21:37] Speaker 01:
But it does not say it's limited to that.

[00:21:39] Speaker 01:
That's the only way you can do it.

[00:21:41] Speaker 01:
And even in your FAR spectrum case, Your Honor, if there were language that said you should do it this way, but there is other disclosure in the specification that supports the claims that are presented and approved by the patent examiner.

[00:22:01] Speaker 01:
then I think we do have support.

[00:22:04] Speaker 05:
But the problem is I don't see that other disclosure in this specification.

[00:22:08] Speaker 05:
I think that my colleagues asked you to identify where in the spec you talk about a tube sheet in a manner that isn't limited to stainless steel or at least corrosive resistance, maybe even stainless steel.

[00:22:22] Speaker 05:
And you haven't identified anything for us.

[00:22:24] Speaker 05:
I mean, you pointed to the top of column nine, but that is the continuation of a discussion of a figure

[00:22:31] Speaker 05:
7, which begins with the tube sheet 108 is preferably formed of a thin plate of stainless steel.

[00:22:39] Speaker 05:
And then even at the top of column 9, where you pointed to the word tube sheet, it was always tube sheet 108.

[00:22:43] Speaker 05:
So that's a continuation of that same discussion.

[00:22:46] Speaker 05:
And I think this isn't just a matter of they threw in stainless steel.

[00:22:51] Speaker 05:
This inventor explains all the reasons why stainless steel is important.

[00:22:55] Speaker 05:
It's lighter weight.

[00:22:56] Speaker 05:
And he stresses how lightweight it is.

[00:23:00] Speaker 05:
Plastic might be even lighter weight, but he then disparages plastic a little bit in other places, but for different parts, not tube sheets, I understand.

[00:23:08] Speaker 05:
But I guess I'm struggling with where this lies on that disclaimer spectrum.

[00:23:16] Speaker 05:
It's somewhere more towards the middle, for sure, but the present invention language captures the notion of the corrosive resistance.

[00:23:24] Speaker 05:
It's stressed throughout.

[00:23:26] Speaker 05:
Non-corrosive resistant materials are disparaged.

[00:23:29] Speaker 05:
Maybe that picture taken together, this isn't a case where you just tie the word stainless steel to the tube sheet.

[00:23:34] Speaker 05:
Maybe you have all these other indicia that are enough for a disclaimer.

[00:23:38] Speaker 01:
Well, Your Honor, respectfully, the first time that a tube sheet is mentioned in column six, lines 34, 35, it refers to a pair of end plates.

[00:23:52] Speaker 01:
It describes them by their function, which is to

[00:23:57] Speaker 01:
unify the tubes into an integrated assembly.

[00:24:00] Speaker 05:
Did you say column 6?

[00:24:01] Speaker 05:
A pair of end plates, yes.

[00:24:03] Speaker 01:
A pair of end plates, 7274, are soldered, welded, or otherwise affixed in watertight fashion on each terminal end of the tube set, unifying the tubes into an integrated assembly.

[00:24:15] Speaker 01:
That tells a, there's no restriction on the material there, the first time that there is any mention of a tube sheet.

[00:24:24] Speaker 03:
I don't understand that.

[00:24:25] Speaker 03:
I mean, yes, when you're talking about the descriptions and stuff, in the summary of the invention paragraph in column three, it says the heating changer includes a pair of space-parable parallel stainless steel tube sheets.

[00:24:44] Speaker 01:
Yes, right.

[00:24:44] Speaker 03:
That's correct.

[00:24:46] Speaker 03:
I'm not going to go back from column three to see if it's mentioned before column three, but that's the first time tube sheets are mentioned, or at least before

[00:24:54] Speaker 01:
column 6, and it says stainless steel.

[00:24:57] Speaker 01:
Your Honor, you are correct in the summary of the invention, but when this patent is describing in detail what it's disclosing, the first reference it makes to end plates or tube sheets is in that column 6, where it does not restrict them as to material.

[00:25:14] Speaker 00:
But everything else does.

[00:25:16] Speaker 00:
I mean, even that preference language that you cite in column 8, I agree with the district court that that preference language more

[00:25:23] Speaker 00:
naturally refers to the width and not to the material of the tube sheet.

[00:25:28] Speaker 00:
So I don't think that supports you either.

[00:25:30] Speaker 00:
Everything here talks about how important corrosion resistance is.

[00:25:37] Speaker 00:
So I don't know how you can say that you've invented something without a corrosion resistant element just because you have one statement where it doesn't actually mention the material.

[00:25:52] Speaker 00:
It doesn't mention corrosive material.

[00:25:55] Speaker 00:
It just doesn't mention material at all.

[00:25:58] Speaker 01:
It doesn't mention material at all.

[00:26:00] Speaker 01:
And that leaves it to the person of skill in the art who's been making these devices out of cast iron, which the patent says is not corrosion resistant, and out of other metals, which arguably are corrosion resistant if they serve a purpose for the lifetime of the product.

[00:26:17] Speaker 01:
So we think it is disclosed there.

[00:26:19] Speaker 01:
And, Your Honor, with respect to the reference

[00:26:22] Speaker 01:
in column 8, it starts by saying, figure 7 shows an alternative tube sheet.

[00:26:29] Speaker 01:
An alternative tube sheet.

[00:26:31] Speaker 01:
That language cannot be ignored.

[00:26:33] Speaker 05:
Okay, Mr. Bromberg, we are way over time, so I'm going to have to cut you off for now.

[00:26:38] Speaker 05:
I'll restore a minute or two of rebuttal time, but we need to move on and we need to hear from Mr. Boland.

[00:26:43] Speaker 01:
Thank you, Your Honor.

[00:26:44] Speaker 05:
And Mr. Boland, if you need a little extra time, obviously we'll accommodate because we allowed Mr. Bromberg to go way over.

[00:26:51] Speaker 02:
Thank you, Your Honor.

[00:26:52] Speaker 02:
Okay, I have to ask one big picture business question before we go any further.

[00:26:59] Speaker 05:
Is Pentair a pool heater and spa company?

[00:27:03] Speaker 05:
Yes.

[00:27:04] Speaker 05:
Are you actually arguing for non-infringement purposes that yours doesn't infringe because it corrodes?

[00:27:10] Speaker 05:
And how the heck can you do that as a matter of business judgment?

[00:27:13] Speaker 04:
How in the world can you argue for non-infringement?

[00:27:18] Speaker 04:
Our product doesn't infringe because it's awful.

[00:27:22] Speaker 04:
I'm baffled.

[00:27:23] Speaker 02:
You're talking about claim 46.

[00:27:24] Speaker 02:
Yes.

[00:27:25] Speaker 02:
Yes.

[00:27:27] Speaker 02:
Okay.

[00:27:29] Speaker 02:
I mean, the business people signed off on this?

[00:27:31] Speaker 02:
They had to have, right?

[00:27:32] Speaker 02:
There's a fundamental, there's a fundamental difference.

[00:27:35] Speaker 02:
Okay.

[00:27:36] Speaker 02:
The tube sheet in Pentier's products doesn't touch the water.

[00:27:41] Speaker 02:
Okay.

[00:27:42] Speaker 02:
It's, it's a dry tube sheet design.

[00:27:44] Speaker 02:
So you have the,

[00:27:46] Speaker 02:
Let's say it's a vertical tube sheet with holes in it.

[00:27:49] Speaker 02:
And these heat exchanger tubes come around and they go through the holes.

[00:27:53] Speaker 02:
They go right through the tube sheet.

[00:27:55] Speaker 02:
So the water is within those tubes and not within the, it doesn't pass through the tube sheet material.

[00:28:03] Speaker 02:
It doesn't contact the water on the other side, on either side of the tube sheet.

[00:28:07] Speaker 05:
Do you have a full heater?

[00:28:09] Speaker 02:
Do I?

[00:28:10] Speaker 02:
I do.

[00:28:11] Speaker 05:
There's not a part in there dry.

[00:28:13] Speaker 05:
not a part in that thing that's dry at any given time, when it's operating.

[00:28:17] Speaker 05:
But anyway, all right, I'm going to let you off the hook, because it doesn't really have a lot to do with what we mainly want to talk about.

[00:28:21] Speaker 05:
I would just sort of laughed out loud when I read that part.

[00:28:25] Speaker 02:
Stainless steel is obviously more expensive.

[00:28:28] Speaker 02:
So if Pentair can get away with using carbon steel, which works structurally, fine.

[00:28:34] Speaker 02:
But if it's exposed to the water, sure, it's going to corrode, and it's going to give the same problem that the 804 patent causes.

[00:28:40] Speaker 00:
So how does your water not touch the tube sheet?

[00:28:43] Speaker 00:
I'm shocked.

[00:28:44] Speaker 00:
I mean, this is important to claim 46.

[00:28:48] Speaker 02:
This is important on the issue of non-infringement that we asserted as an alternative ground based on the in-communication with language as well, Your Honor.

[00:28:58] Speaker 02:
So if you have a tube sheet that's like this, and you've got a plastic manifold on one side that houses water with an inlet and an outlet,

[00:29:09] Speaker 02:
and you've got heat exchanger tubes on the other side.

[00:29:14] Speaker 02:
Those tubes, and this is what's described in the 804 patent largely, can come up and then engage the tube sheet and attach to it here so that the water can go through the hole and into the manifold on the other side and circulate through the tubes, through the manifold, in and out of the manifold.

[00:29:38] Speaker 02:
So one side of the tube sheet is wet in an 804 patent type design or some heater type designs.

[00:29:46] Speaker 02:
And it stays.

[00:29:48] Speaker 02:
And it can be wet where the water comes in here, too.

[00:29:51] Speaker 02:
But in Pentair's products, the tube goes right through.

[00:29:55] Speaker 02:
And the tube itself attaches to the plastic manifold, so there's no water circulating against the backside of the tube sheet.

[00:30:06] Speaker 02:
It's called a dry tube sheet design.

[00:30:09] Speaker 02:
versus a wet tube sheet design.

[00:30:11] Speaker 02:
I hope that explains it.

[00:30:12] Speaker 00:
OK.

[00:30:17] Speaker 00:
I'm going to jump right into questions here.

[00:30:19] Speaker 00:
The piece about your argument that I'm not comfortable with is your reliance on this essential elements test.

[00:30:27] Speaker 00:
Is there really such a test?

[00:30:31] Speaker 02:
I wouldn't call it essential elements in quotes.

[00:30:35] Speaker 02:
If we use that term, it may have been a little unclear.

[00:30:39] Speaker 02:
I look at the issue as, when you get into written description, the cases, of course, you look at the four corners.

[00:30:47] Speaker 02:
You take the document that was filed, you match it up with here, what was later claimed, and you make a determination.

[00:30:54] Speaker 02:
Was there possession?

[00:30:56] Speaker 02:
Ariad says possession within the four corners.

[00:31:01] Speaker 02:
So here what you have is a disparagement in the background of cast iron.

[00:31:08] Speaker 02:
corrosion and rusts, et cetera.

[00:31:11] Speaker 02:
The very next paragraph down in the summary, it says, the objects of the present invention and the problems in the prior art are solved by the present invention that it lists A, B, C, D, E, F, G. One of those is stainless steel tube sheets.

[00:31:28] Speaker 02:
That specifically addresses the problem.

[00:31:31] Speaker 02:
And in your, this court's pacing technologies case, Honeywell, Symed, others we cited,

[00:31:38] Speaker 02:
The present invention language, when it's set up just like that, it creates what pacing technology is called a quote unquote unmistakable disclaimer.

[00:31:50] Speaker 02:
Now here in the 804 case, take the 077 application.

[00:31:54] Speaker 05:
But if this is a disclaimer, and if you're right, then why isn't the problem?

[00:31:59] Speaker 05:
I mean, I don't see how this fails written description.

[00:32:02] Speaker 05:
It's just that the claims are not properly construed.

[00:32:05] Speaker 05:
Claim construction is a question of law.

[00:32:07] Speaker 05:
Parties can't stipulate to it.

[00:32:10] Speaker 05:
It has to be the predicate that's decided before infringement or validity.

[00:32:14] Speaker 05:
So I mean, it's kind of like you're making a case for yourself and a case against yourself at the same time, because I don't see how you jump to written description without first construing the claims.

[00:32:24] Speaker 05:
And if you're right about the disclaimer, then the claims are narrow.

[00:32:27] Speaker 02:
This, Your Honor, was how the claims were construed in the infringement contentions that we received from the owner of the patent.

[00:32:34] Speaker 02:
So just like came up in Mr. Bromberg's argument,

[00:32:38] Speaker 02:
Okay.

[00:32:38] Speaker 02:
They want to take a broad claim construction.

[00:32:41] Speaker 02:
Okay.

[00:32:42] Speaker 02:
In our view, they clearly exposed themselves.

[00:32:45] Speaker 02:
In our view, when we picked up this patent and looked at it and looked at the history and we looked at the summary of the invention.

[00:32:52] Speaker 05:
Yeah, I see you have a question.

[00:32:53] Speaker 05:
They do.

[00:32:53] Speaker 05:
They expose themselves and they take a broad claim construction, but it's a question of law.

[00:32:57] Speaker 05:
Now let me morph this a little bit and I recognize this is a different scenario, but what's bothering me is if this were a case of statutory interpretation.

[00:33:05] Speaker 05:
They may be asking us to take a broad view of the statute because that's what they need in order to prevail on whatever kind of claim they've raised.

[00:33:15] Speaker 05:
But we're not necessarily going to accept that broad view of the statute if it's incorrect, and especially if it would result in the statute being unconstitutional, for example.

[00:33:25] Speaker 05:
So why ought I to accept a broad but improper view of the claims that result in their invalidity?

[00:33:34] Speaker 02:
Because that's the

[00:33:35] Speaker 02:
That's the patentee's decision to assert them of that scope.

[00:33:40] Speaker 02:
And it was the party's decisions during the lawsuit to litigate them of that scope.

[00:33:46] Speaker 02:
And there was three years of litigation over that scope all the way through summary judgment where Judge Wu made very specific findings on both the written description

[00:33:56] Speaker 02:
as well as the invalidity prongs, Your Honor.

[00:33:58] Speaker 00:
So why didn't you argue for a narrower claim construction?

[00:34:02] Speaker 00:
That you were more interested in knocking out the patent than in having a finding of non-infringement?

[00:34:08] Speaker 02:
Well, you know, if we had done that, Your Honor, I would have been accused of reading limitations from the specification into the claim.

[00:34:15] Speaker 02:
It's always a two-edged sword, okay?

[00:34:17] Speaker 02:
So you've got in claim 43 and 47, the independent claim, you've just got the tube sheet, unrestricted as to material.

[00:34:27] Speaker 02:
If we go and argue, oh, your honor, that should be construed really narrowly.

[00:34:32] Speaker 02:
Okay.

[00:34:32] Speaker 02:
The specification is all about stainless steel and corrosion resistance.

[00:34:37] Speaker 02:
Okay.

[00:34:37] Speaker 02:
What we're going to hear back is you're reading limitations from the spec into the claims and you've got claim differentiation with claim 46, which specifically calls out corrosion resistance.

[00:34:48] Speaker 02:
So that's where it is.

[00:34:49] Speaker 05:
There's no, it just seems like I understand rock and a hard place.

[00:34:53] Speaker 05:
I get it.

[00:34:53] Speaker 05:
But it seems like the best way to do these things.

[00:34:56] Speaker 05:
is to argue in the alternative.

[00:34:58] Speaker 05:
For you, as a defendant, these claims are narrowed and should be construed as X. And if you're not going to construe them as X and going to construe them broader, then this spec doesn't support it.

[00:35:07] Speaker 05:
Because there's a lot of candidates that claim construction, and among them are, construe a claim so as to assure its validity if there are multiple possible constructions.

[00:35:15] Speaker 05:
And your whole argument is there's a disclaimer in this spec, so it's hard not to

[00:35:19] Speaker 05:
certainly be awfully tempted to reconstitute the claim appropriately.

[00:35:23] Speaker 05:
Now, it would still result in your non-infringement if we agree with you on claim 46, because this claim would devolve into an identical scope, right?

[00:35:32] Speaker 02:
It could well under your hypothetical, Your Honor, yes.

[00:35:38] Speaker 00:
But assuming we can't get to claim construction because it's not before its own appeal, then part of the problem is you

[00:35:47] Speaker 00:
clearly fall somewhere in the middle on Judge Moore's spectrum.

[00:35:52] Speaker 00:
And so what are your strongest points for purposes of a disclaimer?

[00:36:00] Speaker 02:
Sure.

[00:36:02] Speaker 02:
Column 3 clearly disparages cast iron.

[00:36:06] Speaker 05:
Which part?

[00:36:07] Speaker 05:
I mean, take the line, item, number, everything.

[00:36:10] Speaker 02:
Sure.

[00:36:10] Speaker 02:
I'm happy to.

[00:36:10] Speaker 02:
Column 3.

[00:36:18] Speaker 02:
Right at line 39, cast iron has been utilized in heat exchangers for economic reasons, but when subjected to even mildly corrosive liquids, oxidizes or dissolves.

[00:36:34] Speaker 02:
Okay, oxidizes or dissolves means rust.

[00:36:38] Speaker 02:
The district court made a finding that it's undisputed that the tube sheets in Pentair's accused heaters rust.

[00:36:46] Speaker 02:
And that factual finding

[00:36:48] Speaker 02:
hasn't been and can't be shown to be clearly erroneous.

[00:36:52] Speaker 02:
So let's jump into 46 for a minute.

[00:36:54] Speaker 02:
But that's one aspect.

[00:36:55] Speaker 05:
The second aspect is you look at- But is this discussion of cast iron going to the tube sheets?

[00:37:02] Speaker 02:
Sure.

[00:37:03] Speaker 02:
When it says heat exchangers, a heat exchanger is formed of the tube sheets and then the tubes which cross between them, essentially.

[00:37:11] Speaker 02:
So what you then see is the summary of the invention which has been discussed.

[00:37:15] Speaker 02:
And I don't think there's any dispute about it.

[00:37:18] Speaker 02:
the present invention.

[00:37:20] Speaker 02:
And you've got all the disclaimer cases based on the language of the present invention.

[00:37:25] Speaker 05:
Where are you jumping to the present invention?

[00:37:26] Speaker 02:
Okay, sorry, your honor.

[00:37:28] Speaker 02:
Column three, the heading summary of the invention.

[00:37:33] Speaker 02:
Okay, line 54, the problems and disadvantages associated with conventional devices and methods, et cetera, are overcome by, quote, the present invention, which includes

[00:37:47] Speaker 02:
and it goes on and lists the elements.

[00:37:49] Speaker 05:
But it doesn't say anything about a tube sheet or a stainless steel tube sheet or a corrosive resistant tube sheet.

[00:37:55] Speaker 02:
It does at line 64 and 65.

[00:37:56] Speaker 05:
In a different sentence, not containing the present invention language.

[00:38:01] Speaker 05:
But I would respectfully say... And by the way, this is the only complaint I have about your brief, but I do want to point it out because it did jump out at me and bother me.

[00:38:07] Speaker 05:
In this exact point, you put president invention dot, dot, dot, and then the rest of that other sentence about tube sheet.

[00:38:14] Speaker 05:
And I found that to be a disingenuous and over broad claim on your part because you did it in a way that implied it was all part of the same sentence.

[00:38:22] Speaker 05:
Please don't do that again in the future because you've got a very credible position and you don't want to undermine the credibility of your own position by doing something overreaching.

[00:38:31] Speaker 02:
And I would just note that, again, the heading itself is summary of the invention, Your Honor.

[00:38:38] Speaker 02:
And in the next sentence, it talks about the present invention.

[00:38:41] Speaker 02:
And our position that you just referenced was intended to encompass the entire paragraph, which is how we read it as the present invention.

[00:38:51] Speaker 02:
The next aspect that goes to a disclaimer is there's nowhere in the detailed description

[00:38:59] Speaker 02:
that takes the tube sheets.

[00:39:00] Speaker 02:
Well, wait a minute.

[00:39:01] Speaker 05:
If I were to read everything in that whole paragraph as the present invention, then you're going to tell me I should read this patent is limited to a front header, which is plastic, a rear header, which is plastic.

[00:39:12] Speaker 05:
They have to be removable attached.

[00:39:16] Speaker 05:
Do you understand?

[00:39:17] Speaker 05:
I mean, the difficulty with taking a present invention language that appears in one sentence and then applying it to every aspect of the entire paragraph is that would

[00:39:28] Speaker 05:
amount to an awful lot of disclaimer suddenly.

[00:39:31] Speaker 05:
And I don't know if that reaches clear and unmistakable.

[00:39:34] Speaker 05:
Now maybe the difference is, everything else in this patent screams tube sheets are stainless steel.

[00:39:39] Speaker 05:
Maybe that's the answer.

[00:39:41] Speaker 05:
But maybe it's not the magic of that one sentence.

[00:39:45] Speaker 05:
What do you think?

[00:39:46] Speaker 02:
Yeah, Your Honor, again, we think that in this, in the summary, stainless steel tube sheets, a person of ordinary skill in the art, reading that paragraph would come away that that is

[00:39:58] Speaker 02:
the only possible material.

[00:40:01] Speaker 05:
Later references to... And you think it's stainless steel, not even corrosive resistant.

[00:40:05] Speaker 05:
You think it has to be stainless steel?

[00:40:07] Speaker 02:
We asserted that, but we accept corrosion resistance because it reaches the same conclusion.

[00:40:11] Speaker 02:
It's a fine point.

[00:40:14] Speaker 02:
But the rest of the description, it never broadens that description.

[00:40:18] Speaker 02:
It may say tube sheets referring to figure two by the number.

[00:40:25] Speaker 02:
Okay, but for example, whereas Mr. Bromberg pointed to column 8 in the middle, line 29, discussing tube sheets 108, if you go down further at line 61 of column 8, it's very clear that it says stainless steel tube sheet 108.

[00:40:47] Speaker 02:
And we respectfully submit there's no doubt at all

[00:40:50] Speaker 02:
that the specification as a whole discloses only stainless steel for the tube sheets.

[00:40:55] Speaker 02:
And I would note that- Isn't column nine actually better for you?

[00:41:00] Speaker 02:
Yeah, and I'm working my way there, Your Honor, but I was asked to show specifically where we contend the disclaimer comes from.

[00:41:06] Speaker 02:
And column nine then, after that discussion in bottom of eight, line 18,

[00:41:17] Speaker 02:
Those couple sentences, the stainless steel sheet metal tube sheet is used in combination with expanded copper or stainless steel tube sheets and plastic headers and economical corrosion resistant heat exchanger is produced.

[00:41:33] Speaker 02:
And the next sentence goes on to describe the advantages of avoiding stains, stained water and mineral deposits in the pool water.

[00:41:44] Speaker 02:
We also note, as Judge Hughes pointed out, the original claims filed with the 077 were all limited to stainless steel tube sheets.

[00:41:54] Speaker 02:
The court in Gentry Gallery specifically gave that fact some weight in the overall calculus, and we have the site in our brief.

[00:42:04] Speaker 02:
Mr. Bromberg cited the 692 parent application, but the parent is not incorporated by reference

[00:42:13] Speaker 02:
into the 077.

[00:42:16] Speaker 02:
That argument only arose in the reply, so we didn't address it in our intermediate brief.

[00:42:23] Speaker 02:
But this court's president, it's Inrey De Saversky.

[00:42:30] Speaker 02:
It's a CCPA case, 1973, 474, F-second, 671.

[00:42:38] Speaker 02:
Makes clear that merely characterizing an application as a CIP

[00:42:44] Speaker 02:
doesn't serve to incorporate the parent.

[00:42:48] Speaker 02:
And mere reference to a prior application doesn't allow you to rely on the prior application for disclosure support.

[00:43:01] Speaker 02:
And Hayward also argued that certain claims like claims 22 to 42 and

[00:43:11] Speaker 02:
Mr. Bromberg referenced column 13 in his argument.

[00:43:15] Speaker 02:
Those claims didn't exist when the 077 was filed.

[00:43:20] Speaker 02:
So they simply don't count in determining whether there's written description.

[00:43:25] Speaker 05:
I think we have your argument.

[00:43:26] Speaker 05:
Are there any other points you want to touch on that you feel like you haven't had an opportunity to?

[00:43:30] Speaker 05:
Because we let him go over, so I'm willing to be generous.

[00:43:32] Speaker 05:
But if you don't need to, that's good too.

[00:43:35] Speaker 02:
I'm OK here.

[00:43:35] Speaker 02:
Thank you.

[00:43:36] Speaker 05:
OK, very good.

[00:43:40] Speaker ?:
OK.

[00:43:41] Speaker 05:
Mr. Bromberg, how about two minutes of rebuttal time, please?

[00:43:45] Speaker 01:
Thank you, Your Honor.

[00:43:46] Speaker 01:
I agree with Mr. Bolland that stainless steel is more expensive.

[00:43:51] Speaker 01:
And indeed, economical cast iron is an advantage of cast iron.

[00:43:56] Speaker 01:
So it's not disparage for that.

[00:43:59] Speaker 01:
And really, the invention here is a series of inventions.

[00:44:04] Speaker 01:
The plastic header is very important.

[00:44:06] Speaker 01:
Corrosion resistant tube sheet is very important.

[00:44:09] Speaker 01:
You don't have to claim all of them in one claim in order to have a viable claim that is fully supported by the specification.

[00:44:21] Speaker 01:
And on the issue of corrosion resistant, Your Honors, there was no claim construction of that term.

[00:44:32] Speaker 01:
It just didn't come up.

[00:44:33] Speaker 01:
We submitted a declaration from Dr. Clark, an expert in this field for 40 years, who has seen structures in furnaces and fluid heaters and what have you that were so corroded that they crumbled into dust.

[00:44:50] Speaker 01:
And he thought that it's something that does not have that experience where the component lasts for the lifetime of the product, even though it has some surface rust.

[00:45:03] Speaker 01:
still meets the definition of corrosion resistance.

[00:45:06] Speaker 00:
But in column nine, it talks about the importance of corrosion resistance being that the water is not discolored.

[00:45:13] Speaker 00:
That's not the same as completely crumbling into dust.

[00:45:15] Speaker 00:
That is the same as rust, right?

[00:45:18] Speaker 01:
Well, Your Honor, I think that it depends on the structure of the tube sheet.

[00:45:25] Speaker 01:
As Mr. Boland was explaining, you can have a wet tube sheet environment and a dry tube sheet environment where you

[00:45:31] Speaker 01:
don't permit the water to get in touch with the tube sheet metal, and therefore the rust will not get into the water.

[00:45:39] Speaker 01:
So that's another aspect of the invention.

[00:45:43] Speaker 00:
But that's not what column nine talks about.

[00:45:45] Speaker 00:
Column nine talks about tube sheets that are corrosion resistant so that even when the water goes through them, you're not going to discolor the pool water.

[00:45:57] Speaker 01:
That may be, Your Honor, but it also talks about the configuration

[00:46:01] Speaker 01:
with the alternative tube sheet of figure seven where you have the nipples and you put the tubes through.

[00:46:08] Speaker 01:
The tubes are always made of copper, almost always made of copper.

[00:46:12] Speaker 01:
So you put the tubes through them and then you expand the tubes to fit tightly and then the water is going to run through the tube sheet without touching the tube sheet.

[00:46:22] Speaker 01:
So that is a configuration that's explicitly laid out in columns seven, sorry, eight and nine.

[00:46:30] Speaker 01:
as well as soldering or welding those tubes to the tube sheet.

[00:46:35] Speaker 01:
So those are all alternative designs that this invention, this set of inventors put forward as ways to improve.

[00:46:44] Speaker 05:
Okay, Mr. Bromberg, I think we have your argument.

[00:46:46] Speaker 05:
Sorry to cut you off, but we have to move on for today.

[00:46:49] Speaker 05:
The case is taken under submission, and I thank both counsel for their argument.

[00:46:53] Speaker 05:
You don't need to switch sides.

[00:46:55] Speaker 05:
I hope you weren't