[00:00:00] Speaker 05:
Good morning, please be seated, ladies and gentlemen.

[00:00:06] Speaker 05:
Before we begin our scheduled activities this morning, we have a motion to entertain on these pleasant occasions when we welcome our departing law clerks into the community of the bar.

[00:00:22] Speaker 05:
So I will ask Judge Reiner to make a motion.

[00:00:26] Speaker 02:
Thank you, Judge Lorry.

[00:00:29] Speaker 02:
Andrew, could you stand?

[00:00:33] Speaker 02:
So it's been one year since you've joined my chambers as a law clerk.

[00:00:37] Speaker 02:
It must have gone by really fast for you.

[00:00:40] Speaker 02:
You know, they say that time flies when you're having fun.

[00:00:43] Speaker 02:
But the real secret is that it really flies when you're working hard.

[00:00:49] Speaker 02:
So this must have been a real blur for you.

[00:00:52] Speaker 02:
I say that because of your work ethic, which has been steady and you've

[00:01:00] Speaker 02:
The product of that work has been excellent.

[00:01:03] Speaker 02:
And I know that before me, in the will of this court, stands an attorney that will bring honor and distinction to our legal profession.

[00:01:13] Speaker 02:
Thank you.

[00:01:16] Speaker 05:
Judge Hughes, we have to consider this.

[00:01:20] Speaker 02:
Shall we approve?

[00:01:22] Speaker 05:
I think it's OK.

[00:01:23] Speaker 05:
I think anyone of whom it has spoken so well, as Judge Rayner,

[00:01:28] Speaker 05:
It deserves to be a member of the bar.

[00:01:31] Speaker 05:
We grant the motion.

[00:01:33] Speaker 05:
Please take the oath.

[00:01:36] Speaker 03:
Please raise your right hand.

[00:01:37] Speaker 03:
Do you solemnly swear or affirm that you will report to the Senate, attorney, and counsel at this court, of writing and according to law, and that you will support the Constitution of the United States of America?

[00:01:47] Speaker 03:
I do.

[00:01:47] Speaker 03:
Welcome to the bar of the United States Court of Appeals of the Federal Circuit.

[00:01:52] Speaker 05:
Congratulations.

[00:01:56] Speaker 05:
We have on our calendar this morning five appeals, three argued cases, all patent cases, two from the board, one from the district court in Delaware.

[00:02:10] Speaker 05:
And we also have two submitted cases that will not be argued, a case from the Court of Federal Claims, a vaccine case, and a government employee case from arbitrators.

[00:02:23] Speaker 05:
Our first case is in Ray Smith International, 2016, 2303, Mr. Cavill.

[00:02:31] Speaker 05:
Cavill.

[00:02:33] Speaker 01:
Thank you.

[00:02:33] Speaker 05:
Cavill.

[00:02:35] Speaker 05:
Please proceed.

[00:02:49] Speaker 01:
May it please the court.

[00:02:52] Speaker 01:
As used in the 817 patent, the term body has a definite structural term which represents a specific component that is the outer housing of the claim tool.

[00:03:03] Speaker 01:
The claim body is not the mandrel.

[00:03:05] Speaker 01:
It does not include the mandrel.

[00:03:07] Speaker 01:
And it does not include any other specifically identified interior components of the tool.

[00:03:13] Speaker 01:
The term body is used consistently throughout the specification as a separately identified component using the reference numeral 510 every time

[00:03:21] Speaker 01:
The term body is never applied to any other component of the tool within the specification, and it's shown, the body 510, in the figures, as having a separate hatch pattern, distinguishing it from the other components, such as the mandrel.

[00:03:36] Speaker 01:
Even the drawings in the appellee's own brief show that the patent itself teaches what is the body and what is not the body, just as green isn't the same as the color orange, which are the colors that the appellee chose in identifying the body is green and the mandrel is orange.

[00:03:51] Speaker 01:
To be consistent with the argument that the board had taken, that it was just a structural placeholder, or that the examiner had taken, that it could include any component, you would think the appellee would then have to color all components except the arm green.

[00:04:05] Speaker 05:
Well, you have a rejection over Edison.

[00:04:12] Speaker 05:
And when I look at the structure of the Edison product, Figure 1, that also

[00:04:22] Speaker 05:
denominates the body as separate and the mandrel separate.

[00:04:26] Speaker 05:
So why isn't the rejection sound irrespective of how we can screw body?

[00:04:35] Speaker 01:
Oh, the rejection is not sound because of what you've exactly pointed out.

[00:04:39] Speaker 01:
The body in Edison is shown as separate from the mandrel.

[00:04:42] Speaker 01:
It's a different component.

[00:04:44] Speaker 01:
And then there's a component in.

[00:04:45] Speaker 05:
But you just said the body of your invention is separate from the mandrel as well.

[00:04:50] Speaker 01:
Correct.

[00:04:51] Speaker 01:
And in order to make the rejection that the examiner made and the board upheld, they had to take the body and the mandrel and the cam of Edison, which are three separate components, and say, we're going to construe all of those as the body, and then compare that to the specification of the 817 patent, not even the claim.

[00:05:11] Speaker 01:
And so as used in the specification, we can say body is broad.

[00:05:15] Speaker 01:
The claim doesn't include a mandrel, so we can say that

[00:05:18] Speaker 01:
The body in the claim includes everything.

[00:05:22] Speaker 02:
But in both... So your argument is that the construction, although broad, it was unreasonable, is that correct?

[00:05:28] Speaker 01:
That is correct.

[00:05:30] Speaker 02:
Why is it unreasonable?

[00:05:32] Speaker 01:
Well, it's unreasonable because it's incorrect as a matter of law.

[00:05:36] Speaker 01:
You can't have a broadest reasonable interpretation that is inconsistent with the specification, that is inconsistent with how a term is used commonly in the art.

[00:05:45] Speaker 02:
We've seen in the specific... Start with the claims.

[00:05:48] Speaker 02:
Is it inconsistent with the claims?

[00:05:49] Speaker 01:
It is.

[00:05:50] Speaker 01:
It is inconsistent with the claims because the claims say an arm and a body, right, with other specific features, but don't claim... The claim that we were talking about didn't claim other components.

[00:06:02] Speaker 01:
It's a comprising claim, so it doesn't have to list all of the components.

[00:06:05] Speaker 01:
The mandrel is still part of the tool, but it is never part of the body.

[00:06:11] Speaker 01:
And that's consistent with how it is used throughout the specification.

[00:06:15] Speaker 01:
it's consistent with how it's used in Edison.

[00:06:17] Speaker 01:
Edison, in claim one of Edison, it says an arm or cutter, a body, and a mandrel.

[00:06:24] Speaker 04:
Can you, I still don't, I'm baffled by this case because I don't think either of you address what the ramifications of the proper time construction of our body are on the anticipation and the obviousness questions.

[00:06:37] Speaker 04:
You just quibble over the proper construction and leave aside

[00:06:43] Speaker 04:
For me to, I guess, guess from the examiner's decision, what difference it makes.

[00:06:48] Speaker 04:
What difference does it make whether we construe body your way or body the PTAB's way?

[00:06:55] Speaker 01:
So it makes a big difference.

[00:06:56] Speaker 01:
In the 817 patent, one of the inventive features is that the arms have an engagement directly to the body.

[00:07:05] Speaker 01:
And it's described in the specification in appendix 42, column 10, around line 38.

[00:07:12] Speaker 01:
that the interconnection of the arms directly to the body creates a more robust tool, gives it more strength, more surface area contact.

[00:07:20] Speaker 01:
There is no interconnection of channels and engagement between the arms and the body in Edison.

[00:07:27] Speaker 04:
So that gets rid of the anticipation argument?

[00:07:30] Speaker 01:
Correct.

[00:07:31] Speaker 04:
Does it get rid of the obviousness argument?

[00:07:33] Speaker 01:
It does as well, because there's no reference that the patent office, the examiner ever found.

[00:07:38] Speaker 01:
that has any connection between the arm and the body that creates this more rigid structure that is talked about in the patent.

[00:07:45] Speaker 04:
Do they find it would be obvious to create such a structure?

[00:07:49] Speaker 01:
Well, it's a completely different way of building a tool.

[00:07:51] Speaker 04:
That's not answering my question.

[00:07:52] Speaker 04:
I mean, it can be a completely different way of doing it if it would have been obvious to a skilled artisan.

[00:07:58] Speaker 01:
I don't think there's any possibility of obviousness because the base reference is so different.

[00:08:05] Speaker 01:
And if we look...

[00:08:07] Speaker 04:
The examiner did not find it.

[00:08:11] Speaker 04:
So the examiner basically relies on the notion that the body is so broad that the arm or the equivalent of the arm in Edison is connected to the body in both.

[00:08:23] Speaker 02:
That's correct.

[00:08:25] Speaker 02:
So if we reverse on the claim construction, do we have to remand to the board to make a novice determination?

[00:08:33] Speaker 01:
I don't think so, because on this record,

[00:08:36] Speaker 01:
We've been through six office actions in the underlying proceeding, the reexamination.

[00:08:43] Speaker 01:
There is only one reference that the examiner put forward throughout to say, this shows where the body connects to the arms.

[00:08:51] Speaker 01:
And that was Edison.

[00:08:52] Speaker 01:
The other references, Jukes and Wardley, have really nothing to do with the body.

[00:08:56] Speaker 01:
Those are for other issues on the pending claims.

[00:08:58] Speaker 01:
So on this reference, there is nothing.

[00:09:01] Speaker 01:
I think the scope and content of the prior art is not in dispute.

[00:09:05] Speaker 01:
I don't think there's any dispute that what Edison has is the arm attached to a cam sleeve.

[00:09:11] Speaker 01:
The cam sleeve is attached to a mandrel.

[00:09:13] Speaker 01:
The mandrel and the cam sleeve slide within the body, but are not the body.

[00:09:17] Speaker 01:
So I don't think there's a dispute about that unless the claim construction stays as is.

[00:09:23] Speaker 01:
The only issue is claim construction.

[00:09:25] Speaker 01:
Once we get through the claim construction, I don't think the scope and content of the prior art are in dispute.

[00:09:30] Speaker 01:
I don't think the comparison of the claims to the prior art is in dispute.

[00:09:35] Speaker 01:
And the only thing that would be left on obviousness would be secondary considerations, which would be our evidence.

[00:09:40] Speaker 01:
But there's nothing in the record that would support an obviousness rejection if the body is not this generic placeholder that the examiner and the board said it was.

[00:09:54] Speaker 05:
If you want to save the remainder of your time, that's fine.

[00:09:58] Speaker 05:
Or else continue.

[00:10:00] Speaker 01:
No, I think I will save the remainder of my time for everybody.

[00:10:17] Speaker 00:
The claims at issue in this case require a tool with just two elements, a body and a movable arm.

[00:10:34] Speaker 00:
The claims under re-examination are not all of the claims in the patent.

[00:10:39] Speaker 00:
More than half of the original claims in the 817 patent were not subject to re-exam.

[00:10:44] Speaker 00:
And during re-exam, 12 claims were allowed.

[00:10:47] Speaker 00:
So including those added claims, the 817 patent currently has 62 valid claims, most of which limit the tool body to require certain features.

[00:10:59] Speaker 00:
The 30 claims that are issued today are represented by claim 28, which cites no limitations on the body.

[00:11:09] Speaker 00:
The term body is broad, and when you speak of a body, no specific image comes to mind as compared to a part like a piston or a spring or even screw threads.

[00:11:23] Speaker 00:
Even Smith has conceded that the body is broad enough to encompass any shape, any configuration, any function, and further that it can be made of any number of parts.

[00:11:39] Speaker 02:
It seems to me, Counselor, that the specification of the 817 patent consistently refers to the body as separate and independent from the component.

[00:11:55] Speaker 02:
It's a separate component from the overall tool.

[00:11:59] Speaker 00:
Your Honor, the specification does include some discussions of a mandrel and a body.

[00:12:08] Speaker 00:
and numbers them differently in the figures, as we briefed.

[00:12:12] Speaker 00:
The first discussion of a mandrel is at appendix 41, and there is some discussion there.

[00:12:19] Speaker 00:
But the claims don't include a mandrel at all and don't limit the body at all.

[00:12:26] Speaker 02:
But didn't the board kind of concede or agree that the specification, and I'm quoting, describes a body as a discrete element separate from the other elements?

[00:12:38] Speaker 00:
Yes, the board did acknowledge that in these passages on Appendix 41 and 43, that there was some discussion of a body numbered separately from a mandrel.

[00:12:54] Speaker 02:
So if we're required to read claims to a lot of the specifications and the teachings of the overall pen, how is it that we can say that

[00:13:06] Speaker 02:
the interpretation that the board arrived for body was reasonable.

[00:13:12] Speaker 00:
Well, Your Honor, the proper place to start claim interpretation is with the claims.

[00:13:17] Speaker 04:
And while it's true that... Sure, but if there's nothing in the specification that suggests that this broad reading is permissible,

[00:13:28] Speaker 04:
that every time the term is used, it's used in a more narrow way, the specification has to be read together with the claims.

[00:13:36] Speaker 04:
Does it not?

[00:13:38] Speaker 04:
Otherwise, it's unreasonable.

[00:13:43] Speaker 00:
The specification does use the two terms distinctly in certain passages.

[00:13:49] Speaker 04:
Is there any place where it uses it more generally?

[00:13:52] Speaker 00:
Yes.

[00:13:58] Speaker 00:
six and a half columns of the specification.

[00:14:02] Speaker 00:
It discusses body throughout and doesn't mention a mandrel until it gets to the bottom of column seven.

[00:14:12] Speaker 04:
No, I don't think that answers the question.

[00:14:13] Speaker 04:
Does it ever use the body to encompass more than just the, what do they call it, the outer sleeve or whatever?

[00:14:21] Speaker 04:
Or does it

[00:14:22] Speaker 04:
Does it, when it's talking about, does it ever call the entire structure, including the mandrel of the body?

[00:14:31] Speaker 00:
It never specifies that.

[00:14:33] Speaker 00:
No, it never specifies, it doesn't define what a body is.

[00:14:36] Speaker 00:
But it also doesn't define the body as an outer housing or an outer sleeve.

[00:14:42] Speaker 04:
It's a part, right?

[00:14:43] Speaker 04:
I mean, the whole thing is a tool.

[00:14:45] Speaker 04:
They use the word tool to describe the whole thing.

[00:14:48] Speaker 04:
They don't use the word body to describe the whole thing.

[00:14:53] Speaker 04:
And when they do discuss the body and the conduct of the mandrel, they're distinguishing them from each other, are they not?

[00:15:03] Speaker 04:
Yes, I would agree that when the mandrel is discussed, it is... So any time that they're using the two terms together, they treat them separately.

[00:15:14] Speaker 04:
So how could we reasonably read that in the claim to treat them as the same?

[00:15:19] Speaker 00:
Your Honor,

[00:15:21] Speaker 00:
The only reasonable way to read the claim, if you look at the claim in Claim 28, is very broadly, because there are only two elements in the claim at all, and the arm has some limiting features there, but the body is unlimited by any other claim terms.

[00:15:45] Speaker 02:
Well, looking at Claim 28, it says a body.

[00:15:49] Speaker 02:
and at least one pivotal movable arm, it seems that even that language, there's a distinction between a body and the one arm.

[00:15:59] Speaker 00:
Yes, we are not disputing that there is a distinction between the body and the movable arm because the arm is a claimed element.

[00:16:16] Speaker 04:
Hypothetically, if that claim added in one of those other portions, but still didn't include the mandrel, would you then include the mandrel in the body?

[00:16:27] Speaker 00:
No.

[00:16:27] Speaker 00:
Hypothetically, if the body were claimed with the arm and, say, a cam sleeve, then the body would have to be distinct from the cam sleeve and the arm.

[00:16:44] Speaker 04:
But not the mandrel.

[00:16:46] Speaker 00:
No.

[00:16:47] Speaker 04:
But if the mandrel were claimed... That seems pretty much a reach that you're saying the body is everything in the tool except that which is not specifically claimed as part of the body, even though we know that in other parts of the patent and everywhere in the specification, when they talk about the body in connection with another part, the body is always distinct from that other part.

[00:17:15] Speaker 00:
There is a claim in which the body is claimed with a stinger.

[00:17:22] Speaker 00:
However, that's claim 17 on appendix 14.

[00:17:26] Speaker 00:
However, that claim is dependent on a different independent claim, claim one, in which the body is materially different and modified by other elements.

[00:17:43] Speaker 04:
Can I ask you about the obviousness question?

[00:17:45] Speaker 04:
Was there any suggestion by the examiners or anything in the record that would suggest that the claims that were found to be obvious would still be obvious if we adopted a more limited construction of body?

[00:17:59] Speaker 00:
No, the body, the examiner relied on that construction of body throughout examination of the end.

[00:18:07] Speaker 04:
So if we agree with your friend, this is just a reverse.

[00:18:10] Speaker 04:
It's not a remand.

[00:18:12] Speaker 04:
It would be a remand with... Well, a remand to get rid of the invalidity findings, but not to reopen the obviousness question.

[00:18:23] Speaker 00:
I believe, Your Honor, it would be a remand with the construction that you find.

[00:18:29] Speaker 00:
Yes.

[00:18:33] Speaker 00:
There are no further questions.

[00:18:36] Speaker 05:
Thank you, Council.

[00:18:38] Speaker 05:
Mr. Kevil has plenty of response time if you need it.

[00:18:42] Speaker 03:
Thank you.

[00:18:54] Speaker 01:
I think I just want to respond to a few points.

[00:18:57] Speaker 01:
One, counsel said most of the claims have limitations on the body.

[00:19:01] Speaker 01:
And that is incorrect.

[00:19:03] Speaker 01:
Most of the claims just say a body or a tubular body, which in essence is the same thing.

[00:19:08] Speaker 01:
And I don't think the argument that having tubular body in claim one

[00:19:12] Speaker 01:
creates a whole different regimen of the claims where you can't look at the fact that there were dependent claims that have mandrels.

[00:19:18] Speaker 01:
I think to the extent we had said a green body in claim one, it wouldn't add any more structure.

[00:19:24] Speaker 01:
Tubular is really just an adjective.

[00:19:26] Speaker 01:
The body is still the outer housing.

[00:19:29] Speaker 01:
My opponent also said Smith has conceded that the body can be any shape, any configuration, any function.

[00:19:36] Speaker 01:
It still has to be the outer housing.

[00:19:38] Speaker 01:
And I don't know that it can have any function.

[00:19:40] Speaker 01:
But it could have different shapes.

[00:19:41] Speaker 01:
It could be the two-piece body.

[00:19:43] Speaker 01:
Edison shows a two-piece body, which for purposes of construction was easier for the Edison tool.

[00:19:50] Speaker 01:
But it still has to be the body.

[00:19:51] Speaker 01:
It still has to be that specific component.

[00:19:57] Speaker 01:
Judge Yuzhu asked, did the specification ever use the term body to incorporate other parts?

[00:20:02] Speaker 01:
It never does.

[00:20:03] Speaker 01:
And in fact, if you look at appendix 41,

[00:20:06] Speaker 01:
at column 8 around line 36.

[00:20:09] Speaker 01:
It talks about an inner mandrel.

[00:20:11] Speaker 01:
560 is the innermost component of the tool, 500.

[00:20:15] Speaker 01:
And then it talks about how that mandrel has seals that engage with other components.

[00:20:20] Speaker 01:
So it's always referred to as a separate component, as you were pointing out.

[00:20:27] Speaker 01:
I would point out one of the problems that I think the Court has seen, and it shows up in the appellee's brief at page 22,

[00:20:36] Speaker 01:
They say the tool in claim 28, having a body that includes a mandrel, that tool can comprise many other parts, such as the spring, the spring retainer, the spring caps, the driving pistons, and more.

[00:20:48] Speaker 01:
And now we get into, well, what do they fall into, right?

[00:20:51] Speaker 01:
So if we had a claim that said a body, an arm, and a mandrel, where are the spring?

[00:20:57] Speaker 01:
And the spring caps and the retainers, are those now subsumed within the body, or are they subsumed within the mandrel, right?

[00:21:02] Speaker 01:
So there was no requirement, there is no requirement in claiming,

[00:21:06] Speaker 01:
that we have a picture claim that includes every component of the tool in order to distinguish the tools.

[00:21:11] Speaker 01:
So I think with that, if the court has any questions, I'm happy to answer them.

[00:21:16] Speaker 05:
Thank you, Mr. Kevill.

[00:21:16] Speaker 05:
We'll take the case under review.

[00:21:18] Speaker 01:
Thank you, Judge Leary.