[00:00:02] Speaker 03:
All right, we are scheduled for three argued cases this morning.

[00:00:04] Speaker 03:
The first case before the court is docket number 151564, Triple T Golf Inc.

[00:00:12] Speaker 03:
versus TaylorMade Golf Company.

[00:00:15] Speaker 03:
It is a case from the Southern District of California, a judgment by the district court.

[00:00:23] Speaker 03:
Ms.

[00:00:23] Speaker 03:
Tadros, did I pronounce that correctly?

[00:00:26] Speaker 03:
You want to save three minutes for rebuttal?

[00:00:29] Speaker 03:
Yes, ma'am.

[00:00:29] Speaker 03:
OK, you may begin.

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

[00:00:38] Speaker 02:
May it please the Court.

[00:00:40] Speaker 02:
The District Court erred in finding that the scope of Claim 9 of the 660 patent was substantively changed during the ex-party re-examination.

[00:00:50] Speaker 02:
The District Court erred on two grounds.

[00:00:53] Speaker 02:
First, the District Court erred in determining that the weighting elements of Claim 9 were not adjustable.

[00:01:02] Speaker 02:
The district court incorrectly determined that the re-examined claim recited a different path for the weighting strategy.

[00:01:11] Speaker 03:
Let me ask you about the new claim nine.

[00:01:15] Speaker 03:
I understand that everyone is in agreement that the new claim, claim 20, does require adjustability.

[00:01:23] Speaker 03:
Correct.

[00:01:24] Speaker 03:
And when you say that the district court said that the original claim nine wasn't adjustable,

[00:01:31] Speaker 03:
Didn't the district court simply say it didn't require adjustability?

[00:01:36] Speaker 02:
It said that the claim basically did not recite adjustability.

[00:01:40] Speaker 02:
That's what the district court said.

[00:01:41] Speaker 03:
Well, it's a comprising claim, correct?

[00:01:43] Speaker 03:
Correct, Your Honor.

[00:01:45] Speaker 03:
So isn't the answer really that the claim could be adjustable, but it didn't have to be adjustable?

[00:01:51] Speaker 02:
That's the problem, Your Honor, is that it can't.

[00:01:54] Speaker 02:
If it's being read that way, it's being read opposite to what the specification says.

[00:02:00] Speaker 02:
Because the specification requires adjustability of the weighting elements.

[00:02:05] Speaker 02:
Without adjustability of the weighting elements, the invention doesn't operate the way it's supposed to.

[00:02:10] Speaker 02:
So if you're reading it that way, it controverts the actual intent of the invention.

[00:02:17] Speaker 02:
Everything about the invention says that the weighting elements are adjustable.

[00:02:23] Speaker 02:
They have to be adjustable.

[00:02:24] Speaker 02:
in order to operate the golf clubs.

[00:02:26] Speaker 04:
Does the specification say that it requires adjustability?

[00:02:31] Speaker 04:
I like which column and which line.

[00:02:42] Speaker 02:
I beg your pardon?

[00:02:43] Speaker 04:
Which column and which line of the specification?

[00:02:46] Speaker 02:
It's not, Your Honor, it's not specifically in a particular column.

[00:02:50] Speaker 02:
It's throughout the entire specification.

[00:02:53] Speaker 02:
if I may point to some areas.

[00:02:55] Speaker 04:
I thought you said that the specification makes clear that adjustability is required.

[00:03:01] Speaker 02:
Yes, it does.

[00:03:02] Speaker 04:
So what I'm looking for is where in the specification, what do you rely on the specification to support that statement?

[00:03:10] Speaker 02:
There are a few sections.

[00:03:12] Speaker 02:
Let me highlight a few of them for you.

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One of the sections we rely on is

[00:03:20] Speaker 02:
Appendix 241, column 3, beginning at line 10.

[00:03:24] Speaker 02:
One of the things we'd like to highlight is it is a further object.

[00:03:28] Speaker 04:
Which column was that?

[00:03:30] Speaker 02:
Column 3, Appendix 241.

[00:03:32] Speaker 04:
And which line?

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Beginning at line 10.

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Line 10.

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The specification reads, it is a further object to provide a golf club head modified with a hollow interior and having a selectable point access vector distributed

[00:03:48] Speaker 02:
linear or non-linear weights, which may be inserted or removed just through particular preferences, needs, and physiological requirements of a golfer.

[00:03:58] Speaker 04:
I just note here that the interior... That could be done by the manufacturer, right?

[00:04:03] Speaker 02:
I beg your pardon?

[00:04:04] Speaker 04:
That could be done by the manufacturer.

[00:04:08] Speaker 02:
That's the problem, Your Honor.

[00:04:09] Speaker 02:
It says a hollow interior.

[00:04:11] Speaker 02:
The hollow interior,

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You can't have a hollow interior and fixed weights within that hollow interior.

[00:04:18] Speaker 02:
If the interior is hollow, the weights can't be fixed at the point of manufacturer design.

[00:04:24] Speaker 02:
That specifically contradicts a hollow interior.

[00:04:28] Speaker 02:
You can't have a hollow interior and then weights that are fixed at the point of manufacturer design.

[00:04:33] Speaker 02:
I don't understand that.

[00:04:34] Speaker 04:
You start with a hollow interior when you're manufacturing the club, right?

[00:04:39] Speaker 04:
Yes, but... And somebody's got to

[00:04:41] Speaker 04:
At some stage in the game, these various weights have to be fixed.

[00:04:44] Speaker 04:
Otherwise, they'll just flop around.

[00:04:46] Speaker 04:
They won't do any good.

[00:04:47] Speaker 02:
You're right, Your Honor.

[00:04:48] Speaker 02:
They are fixed by the user.

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The user will fix them.

[00:04:51] Speaker 02:
They will attach them or detach them using snap-on or clip-on weights.

[00:04:56] Speaker 02:
So before your shot, you will take your weight.

[00:04:59] Speaker 02:
You will put it wherever you want to put it, with a snap-on or clip-on weights, then take your shot.

[00:05:06] Speaker 02:
If you're happy with your shot, you know, you can stay with that.

[00:05:09] Speaker 03:
If the next time at the next... But you could have weighted clubs that a manufacturer prepares and the golfer themselves can't afterward adjust it, right?

[00:05:20] Speaker 02:
I assume you could, yes.

[00:05:21] Speaker 03:
I mean, that's, I think that's... Isn't that, I mean, you have a little bit of a problem here.

[00:05:25] Speaker 03:
I'm not sure why there was no argument on this, but you've got a claim differentiation problem.

[00:05:30] Speaker 03:
I mean, original claim nine incorporated original claim one, right?

[00:05:34] Speaker 03:
Correct.

[00:05:34] Speaker 03:
And then dependent from claim one,

[00:05:36] Speaker 03:
are claims two, three, four, five, and claims two, three, four, all the way up to six, require golfer replaceable elements.

[00:05:48] Speaker 03:
So if a dependent claim requires a golfer replaceable element, then why should we conclude that the independent claim already had that requirement?

[00:06:02] Speaker 02:
Because the only reason is because that's the only thing that's disclosed in the specification.

[00:06:07] Speaker 02:
So if there's any type of ambiguity, if there's any type of question as to perhaps this is ambiguous, you go back to the specification.

[00:06:18] Speaker 02:
And there's nothing in the specification that would.

[00:06:21] Speaker 03:
Well, we should ignore claims that say things like the method as recited in claim one in which said weighting means comprises golfer replaceable elements.

[00:06:30] Speaker 03:
And that's a very distinct

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dependent claim, is it not?

[00:06:35] Speaker 02:
Which claim are you reading from, Your Honor?

[00:06:36] Speaker 03:
I'm looking at claim three, claim four, claim six.

[00:06:52] Speaker 04:
Those claims clearly seem to say that the golfer has to be able to make these adjustments.

[00:06:58] Speaker 02:
Yes, Your Honor.

[00:06:59] Speaker 04:
So if the dependent claim

[00:07:01] Speaker 04:
which is narrower than the independent claim requires golfer-made adjustments.

[00:07:10] Speaker 04:
The presiding judge was asking you, why wouldn't you look at the independent claim to assume that it doesn't have that limitation?

[00:07:20] Speaker 02:
There may be some ambiguity there, Your Honor, perhaps.

[00:07:23] Speaker 02:
But again, we just rely on Phillips, which says that basically that you cannot

[00:07:30] Speaker 02:
You cannot construe the claims to claim anything that isn't the invention.

[00:07:37] Speaker 02:
And the invention, and Your Honor Judge Cleaver had asked about the covenger, make your pardon, about the weighting elements.

[00:07:46] Speaker 02:
And I just wanted to refer to the section

[00:08:10] Speaker 02:
Pages 14 to 17 of Appellant's Main Brief, which cite to Appendix A227, A240, Columns 1, Line 64 to Column 2, Lines 67, Appendix 241, Column 3, Line 11 to 20, Appendix 241,

[00:08:39] Speaker 02:
column four, lines 48 to 54.

[00:08:41] Speaker 02:
I mean, over and over throughout the specification, the only type of golf club that is disclosed and taught is a golf club in which the waiting elements are movable.

[00:08:55] Speaker 04:
Well, there are many references in the specification and the word part that talk about the golfer being able to make these changes.

[00:09:02] Speaker 05:
Correct.

[00:09:02] Speaker 04:
So no one was denying that.

[00:09:05] Speaker 04:
I think the line of questioning that the presiding judge asked you about it is to say yes.

[00:09:10] Speaker 04:
The claims are drawn in such a way that if a golfer made adjustments, you could sue him for infringement.

[00:09:16] Speaker 04:
But the question was, why couldn't you also sue a manufacturer who made the adjustments themselves and sold the club with fixed weights?

[00:09:27] Speaker 04:
Your argument is that the word selectively

[00:09:31] Speaker 04:
subsection C of claim one selectively implying you're saying that has to mean selected by the golfer, not by the manufacturer.

[00:09:41] Speaker 02:
You're right, Your Honor.

[00:09:41] Speaker 02:
That's what we're saying.

[00:09:42] Speaker 02:
We're saying that everything about this means that it has to be selected by the golfer.

[00:09:46] Speaker 04:
But even if you're right on that, there's an alternative ground on which you lost below, which is the specific amendment you made was not inherent in the original claim.

[00:10:00] Speaker 02:
That's what the trial court found.

[00:10:02] Speaker 04:
Right.

[00:10:02] Speaker 04:
But I mean, so don't you have to address, even if you prevail on the first point, you've got to prevail on the second point as well.

[00:10:09] Speaker 02:
Correct.

[00:10:09] Speaker 02:
Yes.

[00:10:10] Speaker 02:
And if you'd like, I'll address that issue.

[00:10:13] Speaker 04:
Why is it that Figure 5 teaches that the limitation that you added is inherent in the original claim?

[00:10:22] Speaker 02:
Well, Your Honor, we don't believe that we added a limitation.

[00:10:28] Speaker 02:
We believe we clarified the prior language

[00:10:30] Speaker 04:
Right, but isn't your argument that your inherency argument hinges on Figure 5?

[00:10:36] Speaker 02:
No, Your Honor.

[00:10:37] Speaker 02:
Figure 5 is one illustration of a possible waiting strategy.

[00:10:45] Speaker 02:
I'd like to refer your attention, if I may, to page 14 of appellant's reply brief.

[00:10:53] Speaker 00:
But before you go there, I just want to make sure I understand the way

[00:11:00] Speaker 00:
this system works that you've described in the second part of the case.

[00:11:06] Speaker 00:
And I guess let me do it this way, by asking, if you had, using your three by three by three matrix, if you had fixed the X and you moved the Y from Y2 to Y1, but moved the Z from Z1 to Z3, so you've moved up two steps on the Z and down one in the Y,

[00:11:29] Speaker 00:
you could get an increase in backspin, or I guess it would be a decrease in backspin in any event.

[00:11:35] Speaker 00:
Why wouldn't that satisfy claim 9 but not satisfy claim 20?

[00:11:41] Speaker 02:
Your Honor, I'm going to have to refer to the diagram while you ask that question.

[00:11:44] Speaker 02:
I apologize.

[00:11:45] Speaker 00:
You understand what I'm saying.

[00:11:46] Speaker 00:
In other words, I'm saying you increase the Z by more than you decrease the Y. But nonetheless, you decrease the Y. So you have offsetting

[00:11:56] Speaker 00:
effects on the backspin, but the Z increase overshadows the Y decrease.

[00:12:02] Speaker 00:
That would be something that would not satisfy claim 20, it seems to me, but why doesn't it satisfy claim 9?

[00:12:08] Speaker 02:
Because it's outside of the allowable zone.

[00:12:11] Speaker 00:
Well, that doesn't help me much to just say it's outside of the allowable zone.

[00:12:15] Speaker 00:
What in the claim language says that that's not something in the claim language of claim 9 that says that's not permissible?

[00:12:24] Speaker 00:
No, it's not permissible under claim 20.

[00:12:28] Speaker 02:
Well, the claim language, the limitation is at the very beginning, where it says that to modify backspin, you have to provide the weighting elements between the low Y, low Z, and the high Y, high Z. So right there, you've defined your scope.

[00:12:44] Speaker 02:
So that is the same language in both claim 9 and the new claim, claim 20.

[00:12:49] Speaker 02:
And right there, with just that language, you don't need to go any further.

[00:12:53] Speaker 02:
You've defined the allowable scope.

[00:12:57] Speaker 00:
You've said that the weighting strategy must occur between the low y, low z, and the high y, high z. But you're reading between to mean to reference as if it referred to movement between one coordinate and another.

[00:13:13] Speaker 00:
It seems to me that that language is at least equally, perhaps even more,

[00:13:18] Speaker 00:
amenable to a reading that you're talking about the void space weighting means between referring to the space between low y, low z, and high y, high z, not the actual movement along the axis that you're talking about, which would require that you go from y1, z1, 2,

[00:13:48] Speaker 00:
Y3Z3, right?

[00:13:50] Speaker 02:
Well, the way it's supposed to be is that you can move it anywhere from that Y1Z1 to the Y3Z3 and between that.

[00:14:01] Speaker 02:
So depending on what kind of shot you want to affect, depending on whether you want minimum backspin or maximum backspin or a more neutral type position, you would put your weighting elements either in the more neutral, which is the middle layers, or if you want a maximum

[00:14:17] Speaker 02:
Maximum backspin, I believe the maximum backspin is at the lower, the lower Y1 and Z1, and the minimum backspin would be the Y3, Z3.

[00:14:28] Speaker 02:
So before your shot, if you feel like you want a minimum backspin, you would move those weights to the Y3, Z3 coordinates.

[00:14:37] Speaker 04:
I'm curious, how do you move when you're out on the golf course?

[00:14:42] Speaker 04:
You're getting ready and you say, I need a little bit more backspin.

[00:14:46] Speaker 04:
How do you open up the club to make the adjustments?

[00:14:50] Speaker 04:
Aren't the weights inside the cavity?

[00:14:53] Speaker 02:
No, you have the weights.

[00:14:55] Speaker 02:
You carry the weights.

[00:14:57] Speaker 02:
The weights are separate.

[00:14:59] Speaker 04:
And then you stick them on with glue?

[00:15:01] Speaker 02:
Well, clip-on or snap-on weights.

[00:15:05] Speaker 04:
And you clamp them on what?

[00:15:08] Speaker 04:
On the back of the club?

[00:15:09] Speaker 02:
There may be little hooks inside or you can have a little snap-on attachment.

[00:15:14] Speaker 04:
They go on the outside of the head?

[00:15:16] Speaker 02:
No, it's inside the void space.

[00:15:19] Speaker 00:
So inside... So this is a club which has no back in effect, right?

[00:15:24] Speaker 02:
Well, I believe it does have a back, Your Honor, but the void space... How do you get at the void, at the inside?

[00:15:30] Speaker 02:
I think, I haven't seen an actual club, but I think you would just close it.

[00:15:36] Speaker 02:
You know, you have the top, it's the void space that's the invention.

[00:15:42] Speaker 02:
So it's the matrix, the volumetric matrix.

[00:15:44] Speaker 02:
And you have your club head.

[00:15:46] Speaker 02:
And inside the club heads, you might have clips or hooks.

[00:15:53] Speaker 02:
And then the weights are separate.

[00:15:55] Speaker 02:
And the weights can come in.

[00:15:59] Speaker 02:
They've got propeller shapes, or they've got linear or nonlinear type weights.

[00:16:03] Speaker 02:
So you can have something that's like a horseshoe.

[00:16:06] Speaker 02:
Or you can have a propeller that would enter various coordinates

[00:16:11] Speaker 02:
But how you attach it is either a snap-on or clip-on.

[00:16:15] Speaker 02:
There may be other ways.

[00:16:16] Speaker 02:
It's not limited to those ways.

[00:16:18] Speaker 02:
Perhaps there's a more effective way, like a Velcro.

[00:16:23] Speaker 02:
But we've disclosed snap-on and clip-on.

[00:16:27] Speaker 03:
All right.

[00:16:27] Speaker 03:
You're out of time.

[00:16:28] Speaker 03:
I'll restore your three minutes for rebuttal, and we'll give the other side three extra minutes if it's necessary.

[00:16:33] Speaker 02:
Thank you, Your Honor.

[00:16:42] Speaker 06:
Good morning, Your Honor.

[00:16:44] Speaker 06:
The plain language of Claim 9 makes clear that it does not require the weighting means to be adjustable.

[00:16:49] Speaker 06:
The claim simply recited providing a weighting means between a low Y, low Z coordinate and a high Y, high Z coordinate.

[00:16:56] Speaker 06:
The district court did not limit Claim 9 to one that has fixed weights.

[00:17:00] Speaker 04:
It doesn't require, but it does permit.

[00:17:03] Speaker 06:
It does permit.

[00:17:03] Speaker 06:
That's correct.

[00:17:04] Speaker 06:
So you can have a golf club that has golfer adjustable weights that a golfer could

[00:17:09] Speaker 06:
reposition and adjust as they're using it.

[00:17:12] Speaker 06:
Or you can have a golf club that were in the manufacturer, manufactured the club to have either thickened walls as weights.

[00:17:19] Speaker 04:
What's your response to the presiding judge's claim differentiation argument?

[00:17:23] Speaker 06:
I think that's exactly correct.

[00:17:25] Speaker 06:
Why didn't you make it?

[00:17:28] Speaker 06:
In hindsight, we should have made it.

[00:17:29] Speaker 06:
We thought the claim language was so clear that we didn't need to go to the claim differentiation argument.

[00:17:35] Speaker 06:
There's nothing in claim nine.

[00:17:37] Speaker 06:
that would lead a person of ordinary skill in the art to believe that it requires the weighting means to be adjustable.

[00:17:42] Speaker 03:
Well, if you've got a written description that talks about only adjustable mechanisms, then you could read that into the plain language.

[00:17:51] Speaker 03:
Could you not?

[00:17:53] Speaker 06:
Here, I don't think the specification, while it discusses adjustable weights, doesn't limit it to adjustable weights.

[00:17:59] Speaker 04:
And in fact, it has several... It talks at many points about the golfer making the changes.

[00:18:05] Speaker 06:
That's correct.

[00:18:06] Speaker 06:
There's several embodiments, for example, figures 14 and 15, which show weights that don't appear to have the ability for a golfer to adjust those.

[00:18:17] Speaker 06:
There's no discussion in the patent specification whatsoever of how they're attached to the club.

[00:18:22] Speaker 06:
I think the plaintiff's counsel said hooks or clips, but there's no such discussion of that in the patent spec.

[00:18:28] Speaker 06:
And there's no discussion of how a user would move or adjust those weights.

[00:18:33] Speaker 04:
Why don't the figures in 14 and 15 suggest that those are golfer placed the horseshoe and the little triangle are put there by the golfer?

[00:18:43] Speaker 06:
Well, there's no discussion of how those are.

[00:18:45] Speaker 04:
The club is an odd club with a hollow space with no back end on the club.

[00:18:50] Speaker 04:
So you just carry along that little horseshoe and you clip it in.

[00:18:55] Speaker 06:
That could be the case, but the patent specification doesn't say that a golfer could.

[00:18:59] Speaker 04:
You were saying that 14 and 15 are proof that you're fixed.

[00:19:03] Speaker 06:
Well, I think they appear to be fixed.

[00:19:04] Speaker 06:
There's no discussion of being able to move those weights.

[00:19:07] Speaker 04:
But who fixed them, the golfer or the manufacturer?

[00:19:11] Speaker 06:
I would presume the manufacturer here.

[00:19:13] Speaker 03:
But in the detailed description, I mean, the drawings only carry so much weight, or virtually none, actually.

[00:19:18] Speaker 03:
But in the detailed description of these drawings, it doesn't say that they're fixed.

[00:19:23] Speaker 06:
It doesn't say that they're movable either.

[00:19:24] Speaker 00:
What's the best evidence that you can point to from the specification that they can be fixed?

[00:19:33] Speaker 06:
Well, I think if you look in the summary of any, I think there's several.

[00:19:37] Speaker 06:
One is the embodiments that don't actually disclose that the weights are movable.

[00:19:41] Speaker 06:
And two, in the specification and the summary of the invention at A241, column three, it talks about the weights could be, and I think in line eight, could be have an additional integral weights, integral or added weights.

[00:20:00] Speaker 06:
And I think there, they're understanding that

[00:20:03] Speaker 06:
Sometimes the manufacturer will include weights and a lot of times what they do is they thicken the walls of the golf club so that in effect it is a weight.

[00:20:11] Speaker 06:
But then they also have separate attachable adjustable weights.

[00:20:16] Speaker 06:
What line was that?

[00:20:20] Speaker 06:
Column three, line eight, talks about further providing a modifiable sole plate with or without additional integral or added weights.

[00:20:29] Speaker 06:
So integral being the ones that are sort of fixed and maybe a part of the club head.

[00:20:33] Speaker 06:
at the manufacturer level or added weight.

[00:20:37] Speaker 03:
You know, if you were a manufacturer who put weights in here and they were fixed, I could see you arguing that in fact all of these, all this language that talks about the object of the invention where every single time it talks about modifiable weights, I could see you arguing that this has to be golfer adjustable.

[00:21:00] Speaker 06:
Even if you said that this is limited to buffer adjustable weights, it doesn't change the outcome.

[00:21:05] Speaker 06:
As your Honor correctly stated with plaintiff's counsel, the added language to claim 20 further restricts the path of adjustment.

[00:21:15] Speaker 06:
It says that as the Z increases, Y cannot decrease.

[00:21:19] Speaker 06:
So Y must either increase or stay the same.

[00:21:21] Speaker 06:
There's no such language in claim nine.

[00:21:24] Speaker 06:
That was an added limitation in the

[00:21:26] Speaker 06:
Patent owner added that limitation.

[00:21:28] Speaker 04:
The argument below was that that particular specific limitation that was added in the exam was inherent in the original Claim 9, and that was simply done to clarify that it was there.

[00:21:41] Speaker 06:
And their sole support for that are a few attorney-derived illustrations of a Rubik's Cube and references to what are the allowed and forbidden weights that are nowhere in the patent specification.

[00:21:56] Speaker 06:
Nor do they have any, could you read this path of specification and define what they're trying to define as what it means to be between a low-wider?

[00:22:04] Speaker 00:
Well, I think they're making a textual argument here based on the language of claim nine, as I understand it.

[00:22:12] Speaker 00:
And I think that the opposing counsel gave this response when I asked.

[00:22:18] Speaker 00:
So I'd like you to address it.

[00:22:19] Speaker 00:
And the textual argument is from, this is actually claim one, C1.

[00:22:26] Speaker 00:
that to modify backspin providing within said void space waiting means between a low y, low z coordinate to increase backspin to a high y, high z coordinate to a decreased backspin is a description of the path that must be followed.

[00:22:43] Speaker 00:
Your argument, I take it, is that's not a description of the path that must be followed because that would suggest that it has to be going from low y, low z up to high y, high z and therefore

[00:22:56] Speaker 00:
It can't depart from that path by having any decreasing y component.

[00:23:03] Speaker 00:
Explain to me your reading of this language and why you think the plaintiff's reading of the language is wrong.

[00:23:12] Speaker 06:
Well, there's nothing in the patent that says when you go from a low y, low z to a high y, high z that you have to take a straight line, or it's a direct path between the two.

[00:23:21] Speaker 06:
In fact, there's nothing in the specification that actually defines what that means.

[00:23:25] Speaker 06:
And their argument relies on an interpretation in which the weights are... Let me stop you right there if I could.

[00:23:35] Speaker 00:
I gave an example of something that would be a decreasing y with an increasing z, and it would result in having the same effect on the backspin as going from a low y, low z to high y, high z, although perhaps less in total amount of effect on backspin.

[00:23:53] Speaker 00:
Is it your view that my description of the path from Y2 to Y1 along with Z1 to Z3 would fall within the scope of the original claim 9 or not?

[00:24:07] Speaker 06:
Yes, that's correct.

[00:24:08] Speaker 06:
And that goes with our argument that the claim recites that you're putting a weight between a low Y, low Z to a high Y, high Z to affect a change on back.

[00:24:16] Speaker 00:
Between as opposed to along the path between is what you're saying.

[00:24:19] Speaker 00:
In other words, as long as you are somewhere

[00:24:22] Speaker 00:
in the range between these two things, you say it doesn't matter what path you follow.

[00:24:26] Speaker 00:
They're saying, yes, the low Z, low Y, and high Z, high Y has to follow a particular path between the first and the second of those, correct?

[00:24:37] Speaker 06:
That's correct.

[00:24:38] Speaker 06:
And they're not pointing to anything in the claim that says you have to follow that specific path or anything in the specification.

[00:24:44] Speaker 06:
They're relying on attorney-derived arguments and

[00:24:48] Speaker 06:
3D illustrations of a Rubik's Cube that they did not present to the district court.

[00:24:53] Speaker 06:
They've never made these arguments in the two re-exam proceedings we've involved in this patent.

[00:24:57] Speaker 06:
They've just now presented this argument for the first time on appeal.

[00:25:00] Speaker 06:
And there's no support for that in the specification.

[00:25:03] Speaker 06:
The claim simply recites placing a weight between a low Y, low Z and a high Y, high Z. It's like saying you're going to drive from Los Angeles to DC.

[00:25:14] Speaker 06:
What constitutes a city between those two cities?

[00:25:17] Speaker 06:
is Las Vegas between them, but Dallas isn't.

[00:25:22] Speaker 06:
I think what we're saying basically that language means it's just about anywhere within a club head.

[00:25:27] Speaker 06:
They may have meant something else, but they didn't use claim terminology that gets them to where they want to be.

[00:25:37] Speaker 03:
Do you believe that the original claim nine required the three by three by three matrix?

[00:25:43] Speaker 06:
I think that is a

[00:25:48] Speaker 06:
sort of schematic way that they can, a mapping that they can say where they want the weight locations to be.

[00:25:54] Speaker 06:
I think that was supported by the specification if they wanted to limit that in that way in the reexamination, which they did.

[00:26:07] Speaker 06:
I'm not sure that adds a limitation.

[00:26:09] Speaker 06:
It just gives you context of where the weighting locations would be.

[00:26:12] Speaker 00:
I don't understand how the three by three by three matrix works in the real world.

[00:26:17] Speaker 00:
I mean, presumably, you have these little cubes of space, abstract cubes.

[00:26:26] Speaker 00:
Presumably, you could move a weight some degree between one place and another within this matrix.

[00:26:35] Speaker 00:
And it wouldn't leave one of the little cubes.

[00:26:38] Speaker 00:
Or it could move from somewhere close to the line between two of them and move up a little.

[00:26:45] Speaker 00:
What does the 1, 2, 3 contribute?

[00:26:47] Speaker 00:
We're not suggesting that there can only be one location for the weight in each of the little cubes, are we?

[00:26:57] Speaker 00:
In a cell, I guess is what we call them.

[00:26:59] Speaker 06:
I think Plain's argument is actually taking that interpretation.

[00:27:03] Speaker 06:
When they're trying to construe between a low y, low z and a high y, high z, their argument implies that the weight has to be the same size and shape as this cell of a coordinate system.

[00:27:14] Speaker 00:
and can only move.

[00:27:15] Speaker 00:
But that can't be, because the pictures, if they do nothing else, they show us things that are not the same size and shape and location as these cells, right?

[00:27:26] Speaker 06:
That's exactly correct.

[00:27:27] Speaker 06:
I think they show a horseshoe, they show a triangle, they show some linear language.

[00:27:32] Speaker 06:
And their interpretation also requires the lady means to fit entirely within this cell, and that it couldn't overlap or expand multiple coordinates.

[00:27:41] Speaker 06:
And both their embodiments show otherwise,

[00:27:44] Speaker 06:
In the re-examination, the examiner held otherwise.

[00:27:48] Speaker 06:
So I think there's a lot of flaws with their argument.

[00:27:51] Speaker 06:
It's not supported by the spec.

[00:27:52] Speaker 06:
It's not supported by their own embodiments.

[00:28:01] Speaker 06:
And the only other thing I'll say is that how we got here was that in re-examination, they were faced with a rejection of the claim based on a prior reference damage.

[00:28:12] Speaker 06:
in which it has adjustable weights that adjust in the opposite direction as what they've added to the claim.

[00:28:20] Speaker 06:
They specifically amended the claim at the examiner's suggestion and got an allowed claim.

[00:28:28] Speaker 06:
They never argued that this restricted path, whereas the Z increases, the Y does not decrease.

[00:28:36] Speaker 06:
They never argued that was inherent in the claim.

[00:28:38] Speaker 06:
If it was inherent in the claim, they should have argued it to the examiner.

[00:28:42] Speaker 06:
Instead, they accepted the examiner's suggestion and added a modified version of that language to their claim.

[00:28:49] Speaker 06:
And adding narrowing language to a claim during a re-examination results in the claim not being substantially identical to the original claim.

[00:28:59] Speaker 06:
I have nothing further to add.

[00:29:10] Speaker 02:
Your Honor, please record.

[00:29:13] Speaker 02:
Firstly, I would just like to address the issue of the hooks or the clips.

[00:29:17] Speaker 02:
That's on page Appendix 241, column 4, the descriptions of figures 18 and 20, specifically refer to hooks or clips.

[00:29:27] Speaker 02:
So that's one thing.

[00:29:30] Speaker 02:
When Appellee says that the sole plate

[00:29:35] Speaker 02:
provides for integral or added weights.

[00:29:37] Speaker 02:
That's at column three, line eight.

[00:29:41] Speaker 02:
That's the sole place that's being discussed, not the void space.

[00:29:48] Speaker 02:
The other thing I just wanted to mention was Judge Bryson's issue on the path of the weighting strategy.

[00:29:56] Speaker 02:
Neither the original claim nor the re-examined claim

[00:30:01] Speaker 02:
required an increase in the Z-axis.

[00:30:05] Speaker 02:
It didn't define one direction.

[00:30:07] Speaker 02:
It just defined a zone.

[00:30:09] Speaker 02:
And that's what we wanted to try to clarify is that Appellee tries to say that this is a particular direction.

[00:30:17] Speaker 02:
You have to be increasing the Z-axis.

[00:30:19] Speaker 02:
You don't have to be increasing the Z-axis because that language would say in which the Z-axis is increasing.

[00:30:26] Speaker 02:
That's not a limitation that we have.

[00:30:29] Speaker 02:
You don't have to increase the z-axis.

[00:30:31] Speaker 02:
The z-axis could be decreasing.

[00:30:33] Speaker 02:
The language says in which an increase in the z-axis does not correspond to a decrease in the y-axis.

[00:30:40] Speaker 02:
So in other words, if you are increasing your z-axis, the y-axis must stay constant or increased.

[00:30:47] Speaker 02:
It cannot decrease.

[00:30:49] Speaker 02:
You can absolutely go the other way.

[00:30:52] Speaker 02:
You're not limited to that one direction.

[00:30:54] Speaker 02:
That one direction would mean if the added language said in which

[00:30:59] Speaker 02:
the z-axis is increasing.

[00:31:01] Speaker 02:
We're not limiting it to that.

[00:31:02] Speaker 00:
No, but if you do increase the z-axis, you can't decrease the y-axis.

[00:31:08] Speaker 00:
That's correct.

[00:31:09] Speaker 00:
And figure one of Dahman, for example, seems to show an increase in z that's accompanied by a decrease in y. In figure one?

[00:31:20] Speaker 00:
I think it's figure one, is it not, of Dahman?

[00:31:23] Speaker 02:
Of Dahman?

[00:31:26] Speaker 02:
Mm-hmm.

[00:31:26] Speaker 02:
Well, the thing about Dahman is that

[00:31:29] Speaker 02:
And this is the reason the amendment was made.

[00:31:31] Speaker 00:
Figure 1 of Damon is going up in the Z and down in the Y, as far as I can tell.

[00:31:36] Speaker 00:
Is that right?

[00:31:39] Speaker 01:
I wasn't really... Let's see, where is that figure?

[00:31:43] Speaker 01:
Is that A792 that you referred to?

[00:31:45] Speaker 00:
Let me just... I pulled it out.

[00:31:47] Speaker 00:
Let me just... A792, yes.

[00:31:52] Speaker 01:
A792.

[00:31:53] Speaker 02:
I rely, for Damon, I rely on the language, Your Honor.

[00:31:57] Speaker 02:
I rely on the language which says that Damon teaches that, and I'm reading from A798, line 17 to 19.

[00:32:06] Speaker 02:
In order for the golf club head to be stable, it is also important that the masses on either side of the center of the striking surface, i.e.

[00:32:15] Speaker 02:
the sweet spot, is approximately equal.

[00:32:18] Speaker 02:
In other words,

[00:32:19] Speaker 02:
The teaching of Damon was that as the z-axis increases, the y-axis should decrease, because you want that stability.

[00:32:27] Speaker 02:
And so it was brought to the attention of the examiner that it would be helpful.

[00:32:31] Speaker 02:
This teaches away from the strategy of claim 9, because claim 9 teaches that as the z-axis increases, you don't have a corresponding decrease in the y-axis.

[00:32:41] Speaker 02:
The y-axis must either increase or stay constant.

[00:32:45] Speaker 02:
So that was a distinction.

[00:32:47] Speaker 02:
And so this language was added to clarify that that is the way it operates.

[00:32:52] Speaker 02:
So in both claim 9 and claim 20, you can move in either direction.

[00:32:57] Speaker 02:
You don't have to increase the Z-axis.

[00:32:59] Speaker 02:
You don't have to decrease the Z-axis.

[00:33:01] Speaker 02:
The only thing you have to do is stay within that path.

[00:33:07] Speaker 03:
Hey, thank you.

[00:33:08] Speaker 02:
Thank you, Your Honor.