[00:00:45] Speaker 00: Okay. [00:00:45] Speaker 00: The next case is number 16, 1422, Wildcat licensing against Johnson Controls. [00:00:53] Speaker 00: Mr. Dunner, when you're ready. [00:00:57] Speaker 01: Good morning, Your Honors and may it please the court. [00:01:01] Speaker 01: This appeal turns on three issues. [00:01:04] Speaker 01: I'm going to try to simplify it for the panel. [00:01:09] Speaker 01: There are two legal issues, client construction issues, one involving [00:01:13] Speaker 01: the term fastening location, one involving the term predetermined sequence. [00:01:18] Speaker 01: If the court agrees with my client Wildcat on those two issues, then what is left is a factual issue, whether or not the gas patent provides substantial evidence to support the invalidity holding. [00:01:36] Speaker 01: So let me deal first with the fastening location issue. [00:01:39] Speaker 01: The question is, [00:01:43] Speaker 01: whether or not a fascinating location permits one opening only or more than one opening. [00:01:51] Speaker 01: The board held it permits more than one opening and I suggest that the board is clearly wrong. [00:01:59] Speaker 01: The answer is provided by the claim language itself and it's overwhelmingly confirmed by the specifications of the two patents involved. [00:02:09] Speaker 01: The claim language says [00:02:11] Speaker 01: a plurality of fastening locations, plural. [00:02:15] Speaker 01: And then it says, including at least first and second fastening locations in spaced apart relation. [00:02:22] Speaker 01: That language comes almost exactly from column five of the first pattern, the 573 pattern. [00:02:29] Speaker 01: The other one's identical to it. [00:02:31] Speaker 01: On appendix 84, that language is used. [00:02:35] Speaker 01: It's used in spaced apart relation. [00:02:39] Speaker 01: And they talk about a first fastening location 52A, a second fastening location 52B, a third fastening location 52C. [00:02:48] Speaker 01: There's only one way to construe that. [00:02:51] Speaker 01: It's that they are individual fastening locations. [00:02:55] Speaker 01: In fact, the patent throughout only discloses individual locations. [00:03:01] Speaker 01: And in fact, during the prosecution history, if you look at page 356, [00:03:07] Speaker 01: You'll see that the examiner treated each of those locations as individual locations, talked about a first fascinating location, a second fascinating location, each corresponding to the individual 52A, 52B, and 52C. [00:03:26] Speaker 01: So I suggest on that issue, the evidence is overwhelming that the board was wrong in that interpretation. [00:03:35] Speaker 01: which leads to the predetermined sequence issue. [00:03:38] Speaker 01: The board interpreted that language as a fastening operation performed at one of the first and second fastening locations only after a fastening operation is first performed at the other of the first and second fastening locations. [00:03:54] Speaker 01: Now, that is not a predetermined sequence. [00:03:57] Speaker 01: That language means that it's predetermined with the two locations that you're talking about. [00:04:05] Speaker 01: And in fact, JCI's expert said exactly that on page 1876. [00:04:10] Speaker 01: He said, the sequence of 52A, B, and C is in memory before the operator picks up an adapter bush. [00:04:19] Speaker 01: So if you read that language literally, you will end up concluding that in fact, the predetermined sequence has to be of both of the first and second locations that you're talking about. [00:04:34] Speaker 01: What the board has done is it's read predetermined out of that claim. [00:04:39] Speaker 01: The patent talks about sequence in a number of situations and talks about a predetermined sequence. [00:04:46] Speaker 01: Those are two different terms. [00:04:48] Speaker 01: And in fact, that's exactly what the board has done. [00:04:51] Speaker 01: So on these two claim limitations, it has construed fascinating location wrong. [00:04:57] Speaker 01: It has concluded, I submit, predetermined sequence wrong. [00:05:01] Speaker 01: And so what is the effect of that? [00:05:03] Speaker 01: The effect of that is, I submit, that gas can't possibly provide substantial evidence to invalidate the claims. [00:05:12] Speaker 01: Why? [00:05:12] Speaker 01: Because first of all, the JCI expert that said on page 1590 and 91, gas has no example of one bolt anywhere. [00:05:26] Speaker 01: No example of one bolt anywhere. [00:05:29] Speaker 01: That means that it doesn't disclose a single fastening sequence. [00:05:33] Speaker 01: And moreover, if you read GAS, you will find that in 15 paragraphs, they talk about process sites. [00:05:43] Speaker 01: If you read the board's opinions, it talks continually about process sites. [00:05:48] Speaker 01: It says it's a predetermined sequence of process sites. [00:05:51] Speaker 01: The difference between process sites and predetermined sequence of individual fasteners is that you don't solve the problem [00:06:02] Speaker 01: that is created by not sequencing individual fasteners, if all you're looking at is process sites. [00:06:09] Speaker 01: So you can treat a process site and go to another process site, and you can mix up the individual fasteners any way you want to, or treat them, fasten them any way you want to, not in sequence. [00:06:24] Speaker 01: And that would satisfy the board's claim interpretation. [00:06:28] Speaker 01: And that is totally inconsistent with the concept [00:06:32] Speaker 01: of predetermined sequence. [00:06:34] Speaker 01: Now, I won't take much longer, but I would like to address just a couple of points. [00:06:40] Speaker 01: The board relied on the word comprising and said that, well, because of the word comprising, you can add things to it. [00:06:49] Speaker 01: But the case law, including the Gillette case cited by JCI, makes it clear you can add things to the claim, but you still have to satisfy the claim limitations. [00:07:00] Speaker 01: And so that doesn't get the board any place. [00:07:02] Speaker 01: It doesn't get JCI any place. [00:07:04] Speaker 01: Then they said, well, the Brinson testimony, the expert, a wildcat, basically said, if you use the automobile seat as an example, you can take 52A and you can take 52A prime, or B, we'll call it, of 52B, 52B prime. [00:07:23] Speaker 01: And what the board ignored is the fact that Brinson ended her statement with [00:07:29] Speaker 01: And the board quoted this and then ignored it. [00:07:32] Speaker 01: Quote, as long as the predetermined sequence between the first and second locations is maintained, you still have to maintain those locations, even though you add things to it. [00:07:43] Speaker 01: And the gas patent teaches nothing about that. [00:07:47] Speaker 01: So then the board said, well, in column seven, there is a statement in which the predetermined sequence is discussed. [00:07:56] Speaker 01: The last sentence says, [00:07:58] Speaker 01: This may simply entail ensuring that the driver 30 is active only when in front of the correct one of the fastening locations 52 A to C as indicated by the respective targets 50 A to C. And the board is basically saying that last sentence wipes out the whole concept of predetermined sequence. [00:08:18] Speaker 01: That's essentially what it is saying. [00:08:21] Speaker 01: The problem is that you've got to read that sentence in context. [00:08:24] Speaker 01: And the preceding two sentences talks about [00:08:28] Speaker 01: a predetermined sequence program requiring a predetermined sequence of fastening among the fastening locations 52A to C. According to this feature, the electronic condition controls the sequence of fastening based on the target output and provides a sequence output indicating whether the predetermined sequence has been achieved. [00:08:56] Speaker 01: What that obviously has to mean, if there's a predetermined sequence of two things, each of which has to be in memory before you start, you can't have a user select the first sequence and then the memory select the second one. [00:09:10] Speaker 01: They both must be in memory. [00:09:12] Speaker 01: You have to read that last sentence. [00:09:14] Speaker 01: It's meaning, because otherwise it doesn't make sense, that you know what the first sequence is and then you're looking for the control indicator to tell you [00:09:24] Speaker 01: what the second one is, then it makes sense. [00:09:26] Speaker 01: Otherwise, it makes absolutely no sense. [00:09:28] Speaker 01: That basically is my argument. [00:09:30] Speaker 01: Unless there are questions, I'll reserve the rest of my time for rebuttal. [00:09:34] Speaker 00: No, we will save the rest of your time, Mr. Dunner. [00:09:38] Speaker 00: Let's hear from the other side. [00:09:49] Speaker 00: Mr. Lowry. [00:09:51] Speaker 02: Thank you, Your Honor. [00:09:52] Speaker 02: Matt Lowry, Foley and Lardner for the Petitioner Appellee. [00:09:57] Speaker 02: I guess I'd like to begin with the fastening location. [00:10:00] Speaker 02: Although the board found it met under both interpretations, it's sensible to figure out how it's met in the context of the interpretation. [00:10:06] Speaker 02: So the board found that fastening location, the ordinary meaning is a place or a site of fastening, which is not just supported by dictionary but common sense. [00:10:16] Speaker 02: If you have a board and you want to fasten it at the top and the bottom, it doesn't mean if you [00:10:20] Speaker 02: You only use one nail, two nails, three nails. [00:10:22] Speaker 02: You fasten it at the top of the bottom. [00:10:24] Speaker 02: That's the plain meaning. [00:10:26] Speaker 02: And that was actually supported, as the board found, by the testimony of both experts, that particular construction. [00:10:34] Speaker 02: In response, Wildcat cites the specification, which provides an example with single openings. [00:10:40] Speaker 02: Examples aren't limiting, not in district court litigation, let alone broadest reasonable interpretation. [00:10:46] Speaker 02: And the prosecution history argument [00:10:50] Speaker 02: is probably even more strained. [00:10:52] Speaker 02: What happened there is there was a reference. [00:10:55] Speaker 02: I don't even think it was fastening. [00:10:56] Speaker 02: It was aligning holes with posts. [00:10:59] Speaker 02: And the examiner applied a rejection using individual openings, I suppose. [00:11:06] Speaker 02: And they argued that they didn't contest that. [00:11:09] Speaker 02: And therefore, there was some form of disclaimer. [00:11:11] Speaker 02: Quite the contrary. [00:11:13] Speaker 02: A disclaimer would be if you had ones with multiple openings and you said, our claims don't cover that. [00:11:17] Speaker 02: That would be a disclaimer. [00:11:19] Speaker 02: Here, we just have a rejection. [00:11:20] Speaker 02: not even a claim at issue, the inclusion of a dependent claim, it's not a disclaimer at all. [00:11:28] Speaker 02: And in fact, it would be like reading in a limitation from the prior art. [00:11:31] Speaker 02: The examiner said, here it is. [00:11:33] Speaker 02: I'm applying it this time with individual openings, not saying next time I won't use multiple openings. [00:11:38] Speaker 02: No comment on that. [00:11:39] Speaker 02: And then the applicant makes an amendment without any saying, oh, predetermined sequence means this. [00:11:46] Speaker 02: Fastening location means that. [00:11:47] Speaker 02: There's nothing like that in the record. [00:11:49] Speaker 02: So to call that, [00:11:51] Speaker 02: a disclaimer so that it's only individual openings is to take an individual prior art reference and say, that example gets read into the claim. [00:11:59] Speaker 02: It's not done from the specification. [00:12:01] Speaker 02: It surely shouldn't be done. [00:12:02] Speaker 00: There's no hard and fast rule, is there? [00:12:05] Speaker 00: I mean, if it looks as if the examiner relied on this shift of emphasis, that needs to be considered, does it not? [00:12:14] Speaker 02: Unclear in the context of this case, but as a general matter, yes, Your Honor. [00:12:18] Speaker 02: One would look at the prosecution history [00:12:21] Speaker 02: And the board did and found no disclaimer in addition to the separate labor issues. [00:12:26] Speaker 02: And the reason they did that is because there was nothing that purported to find fastening location as an individual one. [00:12:32] Speaker 02: I mean, it wasn't even applied to that. [00:12:35] Speaker 02: It was a rejection of a broader and different claim. [00:12:38] Speaker 02: And so it's not like there was even a lengthy history and conversation about a single opening being the fastening location, and that's certainly not enough [00:12:47] Speaker 02: to be a clear disavowal in the context of a plain meaning of location site, as the board had found. [00:12:53] Speaker 02: And this would be the end of it. [00:13:06] Speaker 02: There was something that's been said in the briefing, and I think repeated on oral argument here, was that the board read out the word predetermined. [00:13:13] Speaker 02: The board did not do that. [00:13:16] Speaker 02: predetermined is in advance. [00:13:18] Speaker 02: So at A15 in the record, the board says we see this argument that petitioner says predetermined sequence is a sequence determined in advance and we accept that. [00:13:27] Speaker 02: So there was no reading out of predetermined. [00:13:29] Speaker 02: It too was an application of the plain meaning of predetermined. [00:13:34] Speaker 02: And then the board found, notwithstanding the argument that was just made, that predetermined is met in gas. [00:13:43] Speaker 02: They didn't say [00:13:44] Speaker 02: You can start at either one and go to the next. [00:13:47] Speaker 02: What they said was, I have a claim that says a first location and a second location and you have to determine in advance where you start. [00:13:55] Speaker 02: But as long as you do that, it doesn't matter if you pick the second one or the first one, right? [00:13:59] Speaker 02: It's an unremarkable first and second is not an implied ordering. [00:14:04] Speaker 02: It could go either way. [00:14:05] Speaker 02: But they did find that you need to determine it in advance and they looked at the record and they looked at the testimony. [00:14:11] Speaker 02: They found that it's programmed in advance. [00:14:14] Speaker 02: They found in GAS that it's a correct sequence that has to be followed. [00:14:19] Speaker 02: And I would say that's more than just substantial evidence from which they could infer that GAS is predetermined sequence. [00:14:25] Speaker 02: You have to do it one site followed by the next. [00:14:30] Speaker 02: If this court were to conclude that fastening location means individual openings, the board went on and made findings on that. [00:14:38] Speaker 02: And they found two different ways [00:14:40] Speaker 02: that that construction would be met. [00:14:43] Speaker 02: The first finding of the board is that gas discloses predetermining a predetermined sequence of individual openings because the board found that gas discloses that you can have a process site or location that is just a single opening, which would necessarily meet the claim limitations because you go, the sites are predetermined and if it's an individual opening, individual openings are predetermined. [00:15:06] Speaker 02: This finding [00:15:07] Speaker 02: was not challenged in the opening brief by the appellants, which we point out in our responsive brief. [00:15:14] Speaker 02: And we say a reply brief is too late to raise a challenge to this fact finding. [00:15:19] Speaker 02: In the reply brief, they nevertheless do raise a challenge to that fact finding, but they do not address the issue that they hadn't addressed it before, and the reply brief is too late. [00:15:29] Speaker 02: And I would submit that this is typical fact finding. [00:15:31] Speaker 02: There are figures in GOSS where there's a single circle. [00:15:35] Speaker 02: You might say that circle is the site, or you might say [00:15:37] Speaker 02: The circle is a site and in that instance a single opening. [00:15:40] Speaker 02: The board can make its finding and the board did. [00:15:43] Speaker 02: That is a single opening. [00:15:45] Speaker 02: The board went on to say that even if it's not a single opening, we would still find the limitation met. [00:15:54] Speaker 02: So this reasoning of the board is that let's suppose you have a site, the top of the board where you've got two nails and a bottom where you've got two. [00:16:03] Speaker 02: You've got an opening here and an opening here. [00:16:07] Speaker 02: And the order of this one followed by this one is predetermined even if you might do other fastening operations at the individual sites. [00:16:17] Speaker 02: Now for that particular issues, the experts actually agree you can have intervening bolting operations. [00:16:28] Speaker 02: The expert Princeton for Wildcat actually put it in her declaration. [00:16:32] Speaker 02: She said if you, and Mr. Dunner just went through this, but he said look if you have [00:16:37] Speaker 02: A1, A2, A3, and B1, B2, B3. [00:16:42] Speaker 02: You could have the correct sequence if you went A1, A2, A3, B1, B2, B3. [00:16:46] Speaker 02: Or you could go A1, B1, A2, B2. [00:16:50] Speaker 02: And what that shows is that the intervening going to B1 rather than going straight from A1 to A2 says you can have these intervening bolting operations, which is something that the expert for the petitioner agreed with. [00:17:04] Speaker 02: And the board relied on that to make fact findings in this very specific technology context that the intervening operations won't avoid the use of the claim, and certainly not under a broadest reasonable interpretation when applying the testimony of the experts that was put before the board. [00:17:28] Speaker 02: And I believe that unless the court has questions, I can [00:17:32] Speaker 02: yield my remaining time. [00:17:35] Speaker 00: Mr. Lowry, any questions? [00:17:36] Speaker 00: Thank you, Mr. Lowry. [00:17:37] Speaker 02: Thank you, Your Honor. [00:17:41] Speaker 00: Mr. Donner. [00:17:44] Speaker 01: Just a few points. [00:17:45] Speaker 01: One is the argument was made that there's no disclaimer here. [00:17:52] Speaker 01: You'll note that I didn't talk about prosecution history disclaimer. [00:17:56] Speaker 01: That's a hyper-technical point. [00:17:58] Speaker 01: The fact is there was an original claim [00:18:01] Speaker 01: which was broad enough to cover user-selected first choice. [00:18:06] Speaker 01: And then it was amended to put in a predetermined sequence whether or not it's a disclaimer, whether or not the board is bound. [00:18:14] Speaker 01: The fact is it's relevant to the interpretation of a language. [00:18:18] Speaker 01: Secondly, you've heard the point that the board did not read out predetermined. [00:18:25] Speaker 01: It said it must be in advance. [00:18:27] Speaker 01: The board didn't say you need to do both in advance. [00:18:32] Speaker 01: The board didn't say the first one needs to be in memory and predetermined. [00:18:36] Speaker 01: The board didn't say anything like that. [00:18:38] Speaker 01: I suggest you read the board's opinion, and I don't think you'll find the point that was made. [00:18:46] Speaker 01: The point about the experts agreed you can have intervening bolting operations. [00:18:54] Speaker 01: Well, I made a point. [00:18:55] Speaker 01: I didn't hear any response to the point. [00:18:57] Speaker 01: Brinson explained the intervening bolting operations. [00:19:01] Speaker 01: You still have to have the sequence that is the predetermined sequence. [00:19:09] Speaker 01: That was her exact language. [00:19:11] Speaker 01: As long as the predetermined sequence between the first and second locations is maintained, I heard absolutely no response to that. [00:19:19] Speaker 01: The bottom line is the board did read out predetermined if you can [00:19:25] Speaker 01: If the limitation is only that the second follows the first, that doesn't dictate that the first is predetermined. [00:19:32] Speaker 01: It only dictates that the second is predetermined. [00:19:35] Speaker 01: And that I can't think of any better way to describe the situation than to say they're reading that out. [00:19:42] Speaker 01: The last point is the plain meaning point about fastening location. [00:19:47] Speaker 01: You can't rely on plain meaning when you've got claim language, which dictates an opposite result. [00:19:54] Speaker 01: You can't rely on claim meaning when you have to read claims in light of the specification. [00:19:59] Speaker 01: And the specification makes absolutely incontrovertibly clear that you're talking about multiple individual locations, each one multiple locations, which are spaced apart. [00:20:12] Speaker 01: And the only ones that are spaced apart are individual locations. [00:20:15] Speaker 01: I think I've covered the points. [00:20:16] Speaker 01: Unless there are questions, I submit. [00:20:19] Speaker 00: Anything you'd like to add? [00:20:21] Speaker 00: Thank you. [00:20:22] Speaker 00: Thank you both. [00:20:23] Speaker 00: The case is taken under submission.