[00:00:02] Speaker 04:
All right, the case before the court this afternoon is Hill Graham Services versus Mitchell.

[00:00:07] Speaker 04:
Case number 162199, an appeal from United States Patent and Trademark Office.

[00:00:20] Speaker 04:
Mr. Deschaux, you want five minutes for rebuttal?

[00:00:24] Speaker 01:
Yes, Your Honor.

[00:00:25] Speaker 04:
Okay, you can proceed.

[00:00:27] Speaker 01:
Thank you, Your Honor.

[00:00:30] Speaker 01:
May it please the court?

[00:00:32] Speaker 01:
As probably did not escape your honor's notice, I'm not, I wasn't on the briefing for most of it.

[00:00:38] Speaker 01:
I joined in late because the lead counsel on this case, Garrett Leach, had a trial, which actually started today.

[00:00:45] Speaker 01:
With that though, I'll begin with claims 114 and 15.

[00:00:50] Speaker 01:
The issue with 114 and 50 turns on the claim limitation periodically verifies function.

[00:00:58] Speaker 01:
Those three terms.

[00:01:01] Speaker 01:
And the issue, to boil it down a bit further, boils down to what does periodic mean?

[00:01:07] Speaker 03:
Is it your position, as I understand it, that it has to be a regular interval?

[00:01:13] Speaker 01:
Correct, Your Honor.

[00:01:14] Speaker 01:
Yes.

[00:01:14] Speaker 01:
And so the question is that the PTAB concluded that periodic can mean either regular or intermittent.

[00:01:24] Speaker 01:
It is Hilram's position that, given the intrinsic record, periodic

[00:01:31] Speaker 01:
means regular because intermittent was, in a principal argument, intermittent was disclaimed.

[00:01:39] Speaker 01:
And so I don't think that there's any issue that even if we talk about the broadest reasonable interpretation standard, the claims reasonable must mean reasonable within the context of the intrinsic record, including the prosecution history.

[00:01:54] Speaker 04:
I'm having a hard time understanding.

[00:01:56] Speaker 04:
I mean, intermittent versus, I mean,

[00:02:01] Speaker 04:
Periodic can be after intervals of time, but it doesn't necessarily have to be regular intervals of time to be periodic, does it?

[00:02:10] Speaker 01:
Understood, Your Honor.

[00:02:11] Speaker 01:
So there are two issues when we're talking about this signal.

[00:02:14] Speaker 01:
It's like when and how.

[00:02:18] Speaker 01:
But if we focus on periodic, so when is this signal being sent out?

[00:02:23] Speaker 01:
And we look at the prosecution history.

[00:02:26] Speaker 01:
So there's no issue that if we take the dictionary definition in a plain and ordinary meaning in the abstract,

[00:02:31] Speaker 01:
It covers both.

[00:02:32] Speaker 01:
No issue.

[00:02:34] Speaker 01:
Now the question is, did Hillrom disclaim the full scope of that claim term?

[00:02:41] Speaker 01:
And if we look at the prosecution history, and in particular the appendix at 2863 and 64, there's no issue.

[00:02:49] Speaker 01:
But that Hillrom disclaimed the full scope of what periodic can mean.

[00:02:56] Speaker 01:
And so accepting that the full scope means

[00:03:00] Speaker 01:
regular or intermittent.

[00:03:02] Speaker 01:
We read that prosecution history.

[00:03:04] Speaker 01:
Hillrom could not have been clear that that periodic simply does not mean intermittent and must mean regular.

[00:03:14] Speaker 04:
Is it really that it doesn't mean intermittent?

[00:03:17] Speaker 04:
Or is it really that it doesn't mean the kind of check that you

[00:03:24] Speaker 04:
believe is in Coomer.

[00:03:25] Speaker 04:
In other words, I think your juxtaposition between regular and irregular is not really the juxtaposition that you mean.

[00:03:35] Speaker 04:
And that's what I'm trying to understand.

[00:03:36] Speaker 04:
You're trying to say that it can't be just every once in a while when we decide we're going to check it, that we check it.

[00:03:44] Speaker 04:
But that doesn't mean that you couldn't have a module that checks on less than a regular time interval.

[00:03:52] Speaker 01:
No, fair enough.

[00:03:52] Speaker 01:
And that's exactly what Coomer had.

[00:03:54] Speaker 01:
I mean, Kummer basically had modules, if you will, that checked it on an ad hoc or an intermittent basis, checked for functionality on an ad hoc intermittent basis.

[00:04:06] Speaker 01:
And what we took to the position we took in the prosecution history is what Kummer discloses is simply not periodic, because Kummer discloses intermittent checks.

[00:04:20] Speaker 01:
And what we do is regular.

[00:04:23] Speaker 01:
I mean, and that's just clear.

[00:04:25] Speaker 01:
Kummer, and I quote from the prosecution history, I mean, we take a step back and you say, look, if we were representing Hill-Rahman litigation and we tried to assert, look, you know, your period verification happens intermittently and ergo, and therefore, you infringe.

[00:04:42] Speaker 01:
And the question to your honors is, would we get away with an argument like that, given the express disclaimer in the prosecution history, where we say, Kummer does not explicitly disclose

[00:04:53] Speaker 01:
that any self-diagnosis is done on any periodic schedule.

[00:04:58] Speaker 01:
And we both face periodic, just to be absolutely clear about that.

[00:05:02] Speaker 01:
In the system of Kumher, presumably, a module could fail and not be detected until such time as another module attempts to interact with the module.

[00:05:11] Speaker 01:
And then we go on and we say, Kumher's broad description of a self-diagnostic capability does not teach the explicit recitation of a control system

[00:05:22] Speaker 01:
that periodically verifies the functionality of each model present.

[00:05:27] Speaker 04:
But I guess what I'm still pressing at is that the parties keep focusing just on the time frames of the checks.

[00:05:36] Speaker 04:
And you said there's a when and there's a how.

[00:05:39] Speaker 04:
And it's the how of Kummer that has me more stumped than the when.

[00:05:44] Speaker 04:
In other words, Kummer does it because someone or something triggers it.

[00:05:50] Speaker 04:
as opposed to it occurring automatically, regardless of what the intervals are.

[00:05:57] Speaker 01:
Certainly, one interradiation in Coomer does where you have the laptop that's attached to the system.

[00:06:01] Speaker 01:
Right.

[00:06:01] Speaker 04:
But even with the module, the module has to somehow make the decision to break in and do a diagnostic test.

[00:06:09] Speaker 01:
That's correct.

[00:06:09] Speaker 01:
And the only thing the modules, what's disclosed is that they can't.

[00:06:13] Speaker 01:
And there's absolutely no record evidence in Coomer of those modules doing it.

[00:06:19] Speaker 01:
on a regular basis.

[00:06:22] Speaker 01:
So it seems to me that if we take a look at this thing, I mean, the issue really is what the PTAP concluded is that periodically can mean either intermittent or regular.

[00:06:37] Speaker 01:
And you look at the prosecution history and we say, no.

[00:06:41] Speaker 01:
And your honors, if a disclaimer, if disclaimer of full claim scope means anything, it seems to me

[00:06:50] Speaker 01:
This is it.

[00:06:51] Speaker 01:
We say Coomer simply does not disclose.

[00:06:55] Speaker 03:
Was that statement you cited to at 2863, is that from the original prosecution, or is that from the re-exam itself?

[00:07:04] Speaker 01:
It's from the re-exam, and the claims were amended in the re-exam.

[00:07:08] Speaker 01:
And so the claims were amended to add the periodic limitation.

[00:07:13] Speaker 01:
And so it was in the context of that amendment process that the back and forth with the examiner took place, Your Honor.

[00:07:19] Speaker 03:
What about claim 14?

[00:07:20] Speaker 03:
Now claim 14 has the word regular in it.

[00:07:24] Speaker 03:
It makes clear that periodic in that context means regular.

[00:07:28] Speaker 03:
Why isn't there some sort of claim differentiation argument that it's not until claim 14 that periodically means regular intervals?

[00:07:38] Speaker 01:
Your Honor, the answer there is yes, there is the concept of claim differentiation.

[00:07:44] Speaker 01:
And there is the concept.

[00:07:48] Speaker 01:
that if you have two different words used, you're not going to ascribe to them the same meaning.

[00:07:54] Speaker 01:
We understand that.

[00:07:55] Speaker 01:
But that concept does not trump a clear disclaimer of scope.

[00:08:03] Speaker 01:
And so we take a step back.

[00:08:05] Speaker 01:
And there's a Bancorp decision that we cite, 359-1367.

[00:08:11] Speaker 01:
And I quote the court, that inference, however, the inference to which Your Honor just pointed out, is not conclusive.

[00:08:18] Speaker 01:
It is not unknown for different words to be used to express similar concepts.

[00:08:26] Speaker 01:
And so it isn't.

[00:08:29] Speaker 01:
Let me take a step back, Your Honors.

[00:08:32] Speaker 01:
From a specification standpoint, I'm not going to go into the spec and how the spec supports limiting periodic to just one, other than to leave it with the briefing, and to note that there is nothing in the specification

[00:08:47] Speaker 01:
that is inconsistent with the clear, expressed disclaimer that we have in the prosecution history.

[00:08:54] Speaker 01:
I mean, I sound like a broken record here, but in that prosecution history, we say, look, periodic is not, is not, as far as we're concerned and for purposes of our patent, intermittent.

[00:09:09] Speaker 01:
And for the PTO or the PTAB then to come back and conclude, well, yes, it does.

[00:09:14] Speaker 01:
I think it throws the whole disclaimer concept to the wind.

[00:09:19] Speaker 01:
Let me shift gears, if I may, Your Honors, to claims 31 and 32.

[00:09:29] Speaker 01:
As with claims 1, 14, and 15, the issue turns in large part on claim construction, which, as Your Honors obviously know, is de novo.

[00:09:40] Speaker 04:
With 31- But it didn't occur at all.

[00:09:42] Speaker 04:
I mean, it's different.

[00:09:43] Speaker 04:
I mean, we can say it's de novo, but master module wasn't really construed below, right?

[00:09:48] Speaker 01:
That's correct.

[00:09:49] Speaker 01:
It wasn't.

[00:09:50] Speaker 04:
So de novo usually doesn't mean in the first instance.

[00:09:53] Speaker 01:
Well, fair enough.

[00:09:54] Speaker 01:
In which case, we'd have to remand it for a bit more clarification on what it means.

[00:09:59] Speaker 04:
What we do know is that the... Did you ask for construction below?

[00:10:02] Speaker 01:
Well, what we certainly said is that what module is, is yes, we did.

[00:10:05] Speaker 01:
We did state to the PTAB that module means a physical structure that

[00:10:12] Speaker 01:
as recited in Claim 2 requires a, and I want to say microprocessor, but that's wrong.

[00:10:18] Speaker 01:
It's a microcontroller.

[00:10:20] Speaker 01:
You have a transceiver.

[00:10:21] Speaker 01:
It needs to be able to monitor communication.

[00:10:24] Speaker 01:
I mean, there's just no doubt that if you read Claim 2, and by extension 31 and 32, which depend off of Claim 2, they recite what a module, when we're talking about a module, we are talking about a physical structure.

[00:10:38] Speaker 01:
Point number one.

[00:10:40] Speaker 01:
The module that the PTAB relied on, your honors, to find 31 and 32 obvious is the protocol called SDO.

[00:10:54] Speaker 01:
And they basically concluded that the service data object is a module.

[00:11:03] Speaker 01:
I mean, SDO is a protocol.

[00:11:06] Speaker 01:
And that's clear from the prior art references.

[00:11:09] Speaker 01:
I think it's just, I find it, I don't think anyone really disputes that.

[00:11:14] Speaker 01:
And I see that my time, I'm cutting it.

[00:11:16] Speaker 02:
Can I just ask you on that last point?

[00:11:17] Speaker 02:
If it has the same functionality as a hardware module in software, why can't it be equivalent?

[00:11:27] Speaker 01:
Okay.

[00:11:30] Speaker 01:
Two answers.

[00:11:30] Speaker 01:
We don't concede that it has the same functionality.

[00:11:33] Speaker 01:
And there's no finding below, Your Honor, that it has the same functionality.

[00:11:37] Speaker 01:
No finding.

[00:11:37] Speaker 02:
Let's just assume it does.

[00:11:39] Speaker 01:
I'm sorry?

[00:11:40] Speaker 02:
Just assume for purposes of my question, it does.

[00:11:42] Speaker 02:
Because it seems to me you're keying your distinction on the fact that module, in your view, is some kind of hardware, a microprocessor or the like.

[00:11:52] Speaker 02:
What if the protocol has the same functionality, but it's just not hardware?

[00:11:59] Speaker 01:
If we assumed that there is record evidence

[00:12:02] Speaker 01:
that the SDO has the precise same functionality as the master module in 31 and 32.

[00:12:13] Speaker 01:
If we assume that, and there's record evidence of that, I think it's a different story, Your Honor.

[00:12:22] Speaker 03:
Do you think it's a different story, even if it doesn't have a microcontroller and a transceiver?

[00:12:29] Speaker 01:
Oh, no, no, no.

[00:12:29] Speaker 01:
That's precisely my point.

[00:12:31] Speaker 01:
We are going to assume that it has the same functionality, and we don't think it does.

[00:12:35] Speaker 01:
We don't think it can't, precisely for those reasons.

[00:12:38] Speaker 03:
I misunderstood your answer then.

[00:12:40] Speaker 03:
So you're saying, even assuming for a minute that it has the same functionality, there's still an important difference?

[00:12:45] Speaker 01:
Well, what I'm saying is,

[00:12:47] Speaker 01:
If we assume that they have the same functionality, I don't agree that they have the same functionality precisely for the reasons that Your Honor stated, because they can't by virtue of being the physical differences.

[00:12:57] Speaker 01:
An SDO doesn't have the microcontroller.

[00:13:02] Speaker 01:
It doesn't have the capability to pick up and send messages.

[00:13:08] Speaker 01:
It's just a completely different animal.

[00:13:11] Speaker 01:
But if we assume that they're in fact identical, then

[00:13:16] Speaker 01:
OK, like I said, it's a different story.

[00:13:20] Speaker 01:
But there's no record evidence of that.

[00:13:22] Speaker 01:
There's no record evidence.

[00:13:23] Speaker 01:
This entire finding on 3132 rests with the inaccurate proposition that an SDO is a module.

[00:13:34] Speaker 01:
Look at our own patent.

[00:13:36] Speaker 01:
It doesn't say that, the 263.

[00:13:38] Speaker 01:
And if you look at the references, they expressly state the contrary.

[00:13:43] Speaker 04:
All right, you're losing most of the rebuttal time.

[00:13:45] Speaker 01:
Yes, I am, Your Honor.

[00:13:46] Speaker 04:
We'll give you four minutes for rebuttal.

[00:13:48] Speaker 01:
OK, thank you, Your Honor.

[00:13:55] Speaker 00:
May it please the Court, taking Hiram's second argument first about claims 31 and 32 and whether or not we have a module, this argument is really much to do about nothing.

[00:14:07] Speaker 00:
We simply are talking about hardware.

[00:14:11] Speaker 00:
We are not confusing software with hardware.

[00:14:13] Speaker 00:
The board used the shorthand SDO, but what the board meant to say clearly was an SDO module or a module that administers SDO at the board's decision?

[00:14:25] Speaker 04:
That is a key distinction, right?

[00:14:27] Speaker 04:
A module that administers SDO.

[00:14:29] Speaker 04:
So even if your reference talks about what SDO is, I don't see that Zeltwanger discloses something that administers the SDO.

[00:14:41] Speaker 00:
Zeltwanger discloses the CAN open protocol.

[00:14:44] Speaker 00:
There's no dispute about that.

[00:14:46] Speaker 00:
A CAN open protocol is based on an international standard.

[00:14:50] Speaker 00:
That international standard requires a physical layer, a data link layer, which discloses the CAN, and then additional application layers.

[00:14:58] Speaker 00:
That physical layer consists of hardware, of modules.

[00:15:01] Speaker 00:
These are plug-and-play modules.

[00:15:03] Speaker 00:
You can use them from different manufacturers.

[00:15:05] Speaker 00:
That's the whole point of this invention.

[00:15:07] Speaker 00:
But where is that in reference?

[00:15:09] Speaker 00:
That part of the rejection is based on claim two.

[00:15:12] Speaker 00:
Claim two was rejected based on the combination of cummer and can references.

[00:15:18] Speaker 00:
Bosch can teaches the can-open protocol.

[00:15:21] Speaker 00:
The Zeltwanger teaches.

[00:15:22] Speaker 04:
I'm sorry.

[00:15:23] Speaker 04:
The finding with respect to those claims were based solely on Zeltwanger.

[00:15:30] Speaker 00:
That's not true, Your Honor.

[00:15:32] Speaker 00:
At APPX 19, the board said that it is

[00:15:38] Speaker 00:
the combination of cummer and zeltwanger which the board relies on in order to provide a can open SDO module that administers SDO.

[00:15:52] Speaker 04:
What number?

[00:15:53] Speaker 00:
APPX 19.

[00:16:04] Speaker 00:
The second full paragraph.

[00:16:10] Speaker 00:
And in the middle of that paragraph, it says, with respect to the SDO to operating on a module, the examiner found it would have been obvious to one having ordinary skill in the art to make the diagnostic tool of Cummer an SDO module as taught in Zeltwanger.

[00:16:26] Speaker 00:
So that is the combination that the board is relying on.

[00:16:28] Speaker 00:
It is making the diagnostic tool of Cummer into an SDO module as taught by Zeltwanger, which teaches

[00:16:36] Speaker 00:
can open protocol, which administers SDOs using a master module.

[00:16:43] Speaker 04:
So why did you argue in your briefing that you didn't mean any kind of physical structure?

[00:16:51] Speaker 00:
We didn't mean to say that, Your Honor.

[00:16:53] Speaker 00:
The Board might have used the shorthand.

[00:16:55] Speaker 00:
We didn't, and it's pretty clear that that's not what we said.

[00:16:58] Speaker 00:
We used the shorthand SDO to mean an SDO module.

[00:17:02] Speaker 00:
And the board did go on to say that the definition of a module does not exclude an SDO.

[00:17:08] Speaker 00:
But all you have to do is put in the word module after SDO, and it makes complete sense.

[00:17:13] Speaker 00:
It's consistent with what the board is saying.

[00:17:14] Speaker 04:
The whole briefing on this point was set up as a dispute over whether you needed physical structure.

[00:17:19] Speaker 00:
Yes, that is how Hillrom is arguing their case.

[00:17:24] Speaker 04:
Right, and your response was, you don't need physical structure.

[00:17:28] Speaker 00:
Our response was that simply that the definition of module does not exclude a module that administers SDO, an SDO module.

[00:17:36] Speaker 00:
That was the distinction that we were making.

[00:17:39] Speaker 04:
So you're saying SDO and the module, administering SDO can be one and the same thing?

[00:17:45] Speaker 00:
A module that administers an SDO is a module, and that module can function as a master.

[00:17:52] Speaker 00:
And that's exactly what the board is saying at A-19.

[00:17:56] Speaker 03:
What about the point that the module needs to have a microcontroller and a transceiver as modules are defined earlier in claim two, which the claims depend upon?

[00:18:07] Speaker 00:
And we don't disagree with that.

[00:18:09] Speaker 00:
We have modules that have transceivers and microcontrollers.

[00:18:12] Speaker 00:
There's no dispute that Kummer discloses modules that have those.

[00:18:14] Speaker 03:
So your view is that this SDO module that would be encompassed in the combination would naturally have a microcontroller and a transceiver?

[00:18:23] Speaker 03:
Yes.

[00:18:24] Speaker 04:
So you're saying that you concede that your anticipation, that the board's anticipation finding as it relates to Zeltwinger, would not be able to stand.

[00:18:34] Speaker 04:
But you argued that it's obviousness combining Coomer with Zeltwanger?

[00:18:40] Speaker 00:
No, Your Honor.

[00:18:40] Speaker 00:
There isn't an anticipation rejection of claim 31.

[00:18:43] Speaker 00:
There was only an obviousness rejection of claim 31 over the combination of Coomer and Zeltwanger.

[00:18:51] Speaker 04:
Now, is this the entirety of the analysis of the obviousness regarding a motivation to combine the two?

[00:18:58] Speaker 04:
It's like one sense.

[00:19:00] Speaker 00:
The board relies on what the examiner found at A2992.

[00:19:05] Speaker 00:
And it might seem like it's a short analysis, but we have to also keep in mind that there are multiple overlapping rejections based on multiple references that taught the same exact thing, and they don't dispute that.

[00:19:19] Speaker 00:
The board is just using one as an example here.

[00:19:23] Speaker 00:
And it's at A2992.

[00:19:26] Speaker 00:
where the examiner in its ran provides a more fulsome explanation as to the reason to combine zeltwanger and cummer.

[00:19:47] Speaker 00:
And what the examiner explains,

[00:19:49] Speaker 04:
I don't see a more fulsome, I'm not sure that that's the right word, but I don't see a more developed argument.

[00:19:56] Speaker 04:
It's still just, I mean, it may be two sentences, but there's no actual, they don't say why it would have been obvious.

[00:20:03] Speaker 04:
It just says it would have been.

[00:20:05] Speaker 00:
It's very... Your Honor, it goes on to cite column eight of Comer.

[00:20:10] Speaker 00:
Column eight of Comer discloses that Comer is a diagnostic tool and that that tool is functioning as a master

[00:20:18] Speaker 00:
because it accesses and controls all the other modules on the network.

[00:20:23] Speaker 00:
So that tool is functioning as a master of COMER.

[00:20:26] Speaker 04:
But does it really function to control all the other modules versus just have the ability to tap in to a particular module to do a particularly defined test?

[00:20:38] Speaker 00:
It's doing a diagnostic test, and that's what's making it function as the control module or as the master module.

[00:20:44] Speaker 00:
It is testing and diagnosing, which is exactly what

[00:20:48] Speaker 00:
Zaltwanger teaches about testing and diagnosis using the SDO protocol.

[00:20:55] Speaker 00:
And what's even more clear here is that their own specification explains that SDO modules are used in testing and diagnosis.

[00:21:05] Speaker 00:
So what the board is saying is completely consistent with what the prior art teaches and which is completely consistent with what the specification teaches.

[00:21:15] Speaker 04:
I wanted to turn to the other claims.

[00:21:19] Speaker 00:
With regards to periodically claims 1, 4, and 15, it's really hard to understand what it is exactly that what Hilram's argument is.

[00:21:36] Speaker 00:
The board is simply saying that periodic, as Judge O'Malley recognized, means from time to time, continuous, recurring.

[00:21:45] Speaker 00:
And that is what the board found,

[00:21:47] Speaker 00:
The ordinary meaning of the word periodic.

[00:21:49] Speaker 04:
Well, that's part of the problem, is that I see the distinction between this patent claim and Kummer, not so much as whether the checking occurs on regular intervals, but whether it does repeat, whether it is something that is periodic in the sense that it keeps coming back and it keeps occurring, versus Kummer, which has a system

[00:22:17] Speaker 04:
where the check only occurs if a third party decides to make the check or if a module is set up to decide at some point in time to make a check.

[00:22:27] Speaker 04:
So in other words, it's more like the difference between whether something keeps recurring, regardless of the time intervals, or whether something only happens when there's an affirmative choice to make it happen.

[00:22:39] Speaker 04:
That's a very, so it's not as much the claim construction that I'm concerned about.

[00:22:43] Speaker 04:
It's with the application of that claim construction to Coomer.

[00:22:48] Speaker 00:
Coomer discloses that each module performs a diagnostic self-check.

[00:22:54] Speaker 00:
It checks itself at the end of everything.

[00:22:57] Speaker 04:
It can.

[00:22:57] Speaker 00:
It can.

[00:22:58] Speaker 00:
At the end of everything.

[00:22:58] Speaker 04:
When it's triggered to do so.

[00:23:01] Speaker 04:
It has to be triggered to do so.

[00:23:03] Speaker 04:
It doesn't say it happens every time.

[00:23:05] Speaker 00:
It says it happens after every time.

[00:23:08] Speaker 04:
No, it doesn't say that.

[00:23:09] Speaker 04:
You tell me where it says that.

[00:23:10] Speaker 00:
Okay, column 20.

[00:23:28] Speaker 04:
It's able to perform internal diagnostics.

[00:23:31] Speaker 04:
after a model performs its function, it can be performed.

[00:23:39] Speaker 04:
It doesn't say that it regularly does it.

[00:23:42] Speaker 04:
It doesn't say that it always does it.

[00:23:45] Speaker 04:
It says that it's possible.

[00:23:47] Speaker 04:
And then if you look at the mechanisms for the possibility, you've got claims 43 and 44 that describe

[00:23:55] Speaker 04:
those mechanisms.

[00:23:56] Speaker 04:
One is the third party does it through a computer.

[00:23:59] Speaker 04:
The other is that you've got a module that has a data link to permit the diagnostic test.

[00:24:06] Speaker 00:
I think those claims that you're referring to are referring back to column eight of COOMER, which is disclosing the diagnostic tool.

[00:24:15] Speaker 00:
There are two aspects of COOMER that the board is relying on.

[00:24:19] Speaker 00:
The diagnostic tool, which is disclosed in column eight, relates to

[00:24:25] Speaker 00:
this control module or master module disclosure.

[00:24:29] Speaker 00:
Column 20 says that it is doing a self-check after it's being used, or it does the function that it's supposed to do.

[00:24:38] Speaker 04:
But it doesn't say it's doing it every time?

[00:24:40] Speaker 03:
It doesn't say it's doing it regularly?

[00:24:41] Speaker 03:
What's your best site for where it's doing it, where you respond and say that it is doing it periodically or regularly?

[00:24:49] Speaker 00:
That Column 20 outlines

[00:24:55] Speaker 00:
28 through 36, and also column two at lines 25 to 28.

[00:25:12] Speaker 00:
It says the peer-to-peer communication network of the present invention includes embedded self-diagnostic capability.

[00:25:20] Speaker 00:
It checks itself.

[00:25:22] Speaker 00:
The way this functions is that you have individual modules performing different functions, and they all communicate with one another.

[00:25:29] Speaker 00:
And it is not that it performs its function once and then doesn't do it again.

[00:25:34] Speaker 00:
These functions are being utilized continuously, regularly, depending on what the patient is doing.

[00:25:39] Speaker 00:
Where does it say that, though?

[00:25:40] Speaker 00:
It's a hospital bed, just exactly the same invention as a claimed invention.

[00:25:47] Speaker 00:
You've got a patient sitting on a hospital bed using different functions.

[00:25:51] Speaker 00:
Each function is controlled by a different module.

[00:25:54] Speaker 00:
It only makes sense that it's happening recurrently or in a cyclical manner.

[00:25:58] Speaker 03:
But where does it say it?

[00:26:01] Speaker 00:
I think the fact that it is doing a self-check.

[00:26:05] Speaker 00:
This disclosure on column two, internally diagnosing hardware and software failures.

[00:26:10] Speaker 00:
It has to be doing that.

[00:26:11] Speaker 00:
It does not make sense for it to only be doing it once.

[00:26:14] Speaker 00:
It only makes sense for the system.

[00:26:16] Speaker 00:
which is all interconnected, to constantly check and to perform checks and to understand what the other modules are doing so that they can be responsive to those.

[00:26:25] Speaker 00:
So I would say column two, column 20, and then also... If we interpret

[00:26:43] Speaker 02:
periodic, which it seems like your friend wants us to do, as at regularly occurring intervals, or it seems to me they're arguing that they're almost predetermined intervals.

[00:26:55] Speaker 02:
Does Kumher show that?

[00:26:58] Speaker 00:
I believe it does, Your Honor.

[00:27:00] Speaker 00:
I think if it is doing this check every time it completes one of its routine functions, every time

[00:27:06] Speaker 00:
the patient gets out of the bed, it does a check.

[00:27:09] Speaker 00:
Every time the patient uses a sidebar, it does a check.

[00:27:13] Speaker 00:
To me, that's regular.

[00:27:13] Speaker 02:
I guess what I'm trying to get at is whether I really understand, and I'll ask your friend on rebuttal, whether they're talking about periodic in the sense of a time frame or what you're talking about, which is whenever somebody gets out of a bed or whenever somebody uses that function or the like.

[00:27:31] Speaker 02:
Both of them seem to be periodic, but the latter seems

[00:27:37] Speaker 02:
But just to make sure I'm clear, getting out of bed or something like that also seems to be intermittent in the sense that it's not a regularly occurring thing.

[00:27:46] Speaker 00:
Meaning it's not necessarily at regular time intervals.

[00:27:50] Speaker 02:
I'm not sure that Kumar shows regular time intervals.

[00:27:53] Speaker 02:
I don't think it needs to in order to... Well, if they want their claim construed that narrowly, then

[00:28:01] Speaker 02:
It may not, you know, anticipate, but I'm unclear that that's what they mean by regular.

[00:28:10] Speaker 00:
It seems to me that what Hillrom is arguing for is a construction where it is being done at regular intervals of time, but there's nothing in the specification to support that reading of periodic.

[00:28:22] Speaker 00:
If they wanted to and they clearly knew how to, Claim 14 shows you

[00:28:26] Speaker 00:
how to claim something in regular time intervals.

[00:28:29] Speaker 03:
They knew how to do that.

[00:28:30] Speaker 03:
How do you respond to their prosecution history argument?

[00:28:34] Speaker 00:
I don't understand that argument.

[00:28:35] Speaker 00:
First of all, it's not prosecution history.

[00:28:38] Speaker 00:
This is what is happening in ongoing continuous re-examination.

[00:28:42] Speaker 00:
It's not something that happened during the initial prosecution of this.

[00:28:45] Speaker 04:
Well, it has to do with the claims.

[00:28:47] Speaker 04:
If we were looking at the new claims, we would say that that is relevant prosecution history with respect to those new claims.

[00:28:56] Speaker 00:
I mean, perhaps it's indicative of their understanding of what periodic means, but it's not prosecution.

[00:29:05] Speaker 04:
But we wouldn't let them get away with disclaiming it in that context and then trying to claim infringement in another context.

[00:29:14] Speaker 00:
I mean, that's exactly right.

[00:29:15] Speaker 00:
I don't understand their arguments necessarily.

[00:29:18] Speaker 00:
I mean, they chose to use the word periodic in a re-examination where they had every opportunity

[00:29:24] Speaker 00:
to amend their claims to say exactly what it is that they wanted the claims to say, right?

[00:29:29] Speaker 00:
And there is a reason why they chose periodic because it would be so easy for somebody to design around regular intervals, right?

[00:29:38] Speaker 00:
And so there's a reason why they chose periodic over choosing regular intervals.

[00:29:42] Speaker 00:
There is no, and, and, Biana, there is no notice function here.

[00:29:45] Speaker 00:
You've got a pattern of width that has 80 columns, and they're asking us to look at four lines

[00:29:52] Speaker 00:
in one column out of those 80 columns and to infer from that that what they mean by periodic and what they have always meant from the beginning is regular intervals of time.

[00:30:02] Speaker 00:
But there's no way to get there from the claim language itself.

[00:30:07] Speaker 04:
OK.

[00:30:08] Speaker 04:
You're out of time.

[00:30:09] Speaker 04:
Thank you.

[00:30:21] Speaker 01:
Your Honor, I think you had a question for me.

[00:30:24] Speaker 02:
Well, I'm still confused as to what you want us to construe periodic as, because it seems to me that we're kind of playing a little dance between intermittent and periodic, and then inserting the word regular, which isn't any of this.

[00:30:38] Speaker 02:
Do you mean like regularly scheduled pre-programmed time intervals, or do you mean an event that periodically reoccurs, although maybe at different lengths of time?

[00:30:49] Speaker 01:
It's the former.

[00:30:51] Speaker 01:
It's the form where we basically, what you have is a system that on a regular basis, I mean, these modules communicate with one another.

[00:31:02] Speaker 02:
So on a time basis?

[00:31:04] Speaker 02:
Correct.

[00:31:04] Speaker 02:
So if there's another system out there that says do a self-diagnostic every time somebody gets out of bed, and that may happen at one hour the first time, 10 hours the second time, two days the next time,

[00:31:20] Speaker 02:
That's periodic, but that wouldn't infringe your definition of periodic here, because you mean regularly occurring time intervals.

[00:31:29] Speaker 01:
Well, I think, Your Honor, it's a great question.

[00:31:37] Speaker 02:
Well, it's an important question, because you're asking us for what seems to me a very narrow claim construction to save your patent.

[00:31:46] Speaker 02:
But I don't think you should be able to turn around and say,

[00:31:49] Speaker 02:
to save this, you're talking about time intervals, and then you're going to turn around and infringe it against things that aren't regular time intervals that may be periodic events.

[00:32:00] Speaker 01:
I think on the question of, on that question, if this system institutes a check every time a particular event occurs, I would argue that

[00:32:17] Speaker 01:
that falls under the definition of periodic.

[00:32:20] Speaker 01:
Because when a person would get out, there's a signal.

[00:32:24] Speaker 01:
I mean, the issue here is having these modules.

[00:32:27] Speaker 02:
How is that different than intermittent if those intervals are regular?

[00:32:34] Speaker 01:
How is that different from intermittent?

[00:32:36] Speaker 04:
Isn't the problem here that you're choosing odd words?

[00:32:39] Speaker 04:
I mean, it's really the ad hoc or the, you know,

[00:32:45] Speaker 01:
random check that you're... What we say, Your Honor, what we say is this, okay, we cannot, we say in the prosecution history, okay, that Kummer discloses ad hoc.

[00:32:58] Speaker 01:
And we say that is not periodic.

[00:33:03] Speaker 01:
And so if we extend that and we say from an ad hoc perspective... What's different between ad hoc and intermittent?

[00:33:13] Speaker 01:
Well, there is a difference.

[00:33:14] Speaker 02:
I mean, your friend says, and this is I think we all accept, there's no way these beds are going to do one check and never do a check again.

[00:33:22] Speaker 02:
They're going to do a check on an intermittent basis.

[00:33:26] Speaker 01:
And by intermittent, what we mean is it happens from time to time, and it is not associated with a recurring event.

[00:33:37] Speaker 01:
And so I think I've come back to your question, Your Honor, and I think if this thing automatically kicks in every time someone gets out of a bed, I think that is periodic.

[00:33:50] Speaker 01:
I mean, it is.

[00:33:51] Speaker 01:
There's an automatic event that triggers it.

[00:33:53] Speaker 01:
What we mean by intermittent is that it's haphazard.

[00:33:57] Speaker 01:
It's not tied to a single moment in time or a particular event.

[00:34:01] Speaker 01:
It's haphazard.

[00:34:03] Speaker 01:
It can happen at any time.

[00:34:05] Speaker 01:
There is no, because part of the argument we make is that the system that works intermittently won't work because you're going to have these models keep listening for something that isn't there.

[00:34:18] Speaker 01:
And they don't know how to interpret the silence.

[00:34:22] Speaker 01:
Presumably, if you have an event, a consistent event that triggers it, the rest of the system knows when to expect it.

[00:34:30] Speaker 04:
OK, you're out of time.

[00:34:31] Speaker 04:
Is there one last thing you want to say about the other claims?

[00:34:35] Speaker 04:
Quickly.

[00:34:36] Speaker 01:
Well, yeah, on claims 31 and 32, claim 31 was rejected solely on the basis of Zeltwinger, because on the premise that an SDO can be a module, then 31 does not claim the verifying.

[00:34:49] Speaker 04:
How do you respond to the citation that your friend on the other side gave us from the board's finding where it talks about Zeltwinger in conjunction with Kummer?

[00:35:01] Speaker 01:
Well, Zeltwinger in conjunction with Kummer was for purposes of 32.

[00:35:06] Speaker 01:
And so the PTAB did not view Coomer.

[00:35:11] Speaker 01:
The only thing that the PTAB relied on Coomer for was the fact that Coomer does a diagnostic check.

[00:35:18] Speaker 01:
That was it.

[00:35:19] Speaker 01:
And it basically couples up the SDO with the diagnostic check.

[00:35:23] Speaker 01:
But that was it.

[00:35:25] Speaker 01:
That was the basis, if that helps you.

[00:35:26] Speaker 04:
Thank you.

[00:35:27] Speaker 01:
Thank you, Your Honor.

[00:35:28] Speaker 04:
The case will be submitted.

[00:35:31] Speaker 04:
All rise.