[00:00:04] Speaker 01:
I would acknowledge that there could be a federal immunity, but that would be a violation of justice.

[00:00:21] Speaker ?:
Yet, that's not the civil constitution.

[00:00:23] Speaker ?:
It's a traditional act.

[00:00:24] Speaker ?:
If you get into, for example, the legal, the constitutional litigation cases, you have a court.

[00:00:28] Speaker 00:
Okay, our final case this morning is number 17 1391 car versus coal ms.

[00:00:44] Speaker 03:
Coley Your honors may please the court

[00:00:51] Speaker 03:
I'd like to take the issues in our brief slightly out of order, and I hope intuitively it doesn't lead us astray.

[00:00:57] Speaker 03:
But I'd like to start by discussing why the district court, their decision on the ensnarement motion should be reversed, and that the jury verdict finding of willful infringement should be reinstated.

[00:01:09] Speaker 03:
And then I would like to tackle our arguments on literal infringement and prosecution history estoppel.

[00:01:15] Speaker 03:
As the district court's decision on ensnarement motion went, we disagree with the

[00:01:20] Speaker 03:
a couple fundamental paths down this process.

[00:01:24] Speaker 03:
First and foremost, as Your Honors are aware, the starting process on an installment motion is constructing a hypothetical claim, and a hypothetical claim that would be broad enough to encompass the accused product.

[00:01:37] Speaker 03:
Now, in this case, the defendants, the appellees, argued that the doctrine of equivalent subject matter that separated the accused product from the 554 patent was the connection method.

[00:01:48] Speaker 03:
And their connection method in particular included two fasteners and a double-eared connection.

[00:01:54] Speaker 03:
So in construing a hypothetical claim that was broad enough to encompass this doctrine of equivalent subject matter, the district court looked at just that connection method.

[00:02:05] Speaker 03:
But the issue here is that the hypothetical claim, which is for most intents and purposes similar to the 554 patent, is a combination of elements, a lot of different elements that make up

[00:02:19] Speaker 03:
the accused product.

[00:02:20] Speaker 03:
And in this case, elevating the connection mechanism alone and to the disregard of all of the other elements, improperly elevated one aspect of the hypothetical.

[00:02:31] Speaker 00:
Did you submit a proposed hypothetical claim to the district court?

[00:02:35] Speaker 03:
We did not submit a proposed hypothetical claim to the district court, but we argued the hypothetical claim that the defendant submitted to the court and similar to the case.

[00:02:44] Speaker 00:
I mean, the burden of proof is on you to establish infringement.

[00:02:47] Speaker 00:
Don't you have the obligation to come up with a hypothetical claim?

[00:02:51] Speaker 03:
We have an obligation to come up with a hypothetical claim or to agree with the defendants as far as the hypothetical claim that the court considers.

[00:02:58] Speaker 03:
The burden of production, of proving a prima facie case that the hypothetical claim would not be patentable, rested with the defendants.

[00:03:07] Speaker 00:
They had to bring in the prior arc, which they did, and then the burden shifts to you to show that your theory does not ensnare the prior arc.

[00:03:21] Speaker 03:
That's correct, Your Honor.

[00:03:22] Speaker 03:
So the ultimate burden of persuasion rested with Carr to show that the hypothetical claim did not ensnare the prior arc.

[00:03:29] Speaker 03:
Therefore, the doctrine of equivalence should not be limited.

[00:03:32] Speaker 03:
Now, in this case, we submitted evidence.

[00:03:35] Speaker 03:
First and foremost, there was evidence that we submitted showing that the combination of elements was unique, was something that was not in the marketplace.

[00:03:44] Speaker 03:
And this was done by both the testimony of Mr. Carr to the trial and the testimony of Mr. Wentlen.

[00:03:50] Speaker 03:
Now, the appellees cherry-picked testimony and said, well, all these individual elements, a steel channel, pilings,

[00:03:59] Speaker 03:
Caught filling the dock segments with concrete.

[00:04:03] Speaker 03:
The double ear connection.

[00:04:04] Speaker 03:
All these individual elements were in the art and therefore a combination would just be intuitive.

[00:04:11] Speaker 03:
And the evidence that they submitted to the district court was the dock manual, which is essentially an encyclopedia that shows different aspects of a dock that can... But you had no testimony that the combination would have been non-obvious, right?

[00:04:25] Speaker 03:
We did have testimony to the jury, your honor, both in the form of Mr. Carr and his expert, Mr. Wentland, that the combination of elements, which in this case was the 554 patent or the doublier connection, would not have been obvious, would not have worked unique, and that's why the 554 patent was granted.

[00:04:43] Speaker 03:
It's also why the hypothetical claim would not have been obvious, because it includes... There is who wasn't a hypothetical.

[00:04:49] Speaker 00:
You never presented a hypothetical claim.

[00:04:52] Speaker 03:
We presented the hypothetical

[00:04:54] Speaker 03:
claim after the jury verdict to the district court.

[00:04:57] Speaker 03:
So we argued the hypothetical claim to the court as a matter of law, but the evidence, the factual testimony that the court relied upon in coming to this decision came from the jury trial.

[00:05:08] Speaker 03:
And that included the testimony of Mr. Carr and Mr. Wentland that a combination of the elements was not obvious and was unique and was something that was new.

[00:05:17] Speaker 04:
We also brought forth evidence of the district court here, you agree, was acting essentially as the fact finder after the evidence was submitted as to the ensnarement issue.

[00:05:31] Speaker 03:
The district court was acting as a fact finder, but using testimony and evidence that was submitted to the jury.

[00:05:37] Speaker 04:
Right.

[00:05:37] Speaker 04:
So even if you were right that you had Mr. Carr's testimony and Wentland's testimony,

[00:05:47] Speaker 04:
Why did the district court have to decide it was persuasive compared to the encyclopedia teachings together with whatever else there may be?

[00:06:01] Speaker 03:
Well, in this case, Your Honor, the district court, when it's deciding the ensnarement motion, is similar to the PTO.

[00:06:06] Speaker 03:
It has the same burden of establishing an analysis or reason why the combination of elements would have been obvious, why someone

[00:06:14] Speaker 03:
A person of ordinary skill in the art would have just known that all of these elements should be combined together.

[00:06:21] Speaker 00:
Who has the burden there?

[00:06:22] Speaker 03:
The burden of proving whether or not the elements are obvious rested with the appellees.

[00:06:29] Speaker 03:
So they had to present.

[00:06:31] Speaker 00:
No, no.

[00:06:32] Speaker 00:
When you're trying to prove infringement, we're not dealing with invalidity here.

[00:06:36] Speaker 00:
When you're trying to prove infringement, the burden is on you.

[00:06:39] Speaker 00:
Once they bring in the prior art, you say this is the prior art that would be ensnared.

[00:06:44] Speaker 03:
Your Honor is correct as far as the burden of persuasion rests with us.

[00:06:48] Speaker 03:
But in this case, when we're dealing with the finding of obviousness, the party asserting infringement has to articulate some reason or methodology that would motivate a combination of the elements.

[00:07:00] Speaker 03:
And the district court, sitting in this case deciding an installment motion, sits similar to a PTO examiner who, when they find that the hypothetical claim is obvious,

[00:07:10] Speaker 03:
must articulate the motivation or the reason why you would combine the elements together.

[00:07:15] Speaker 00:
But what the district court said was that you hadn't shown that it was not obvious, right?

[00:07:20] Speaker 03:
The district court did say that, Your Honor, and that's why we're here on appeal.

[00:07:23] Speaker 00:
And you had a burden to show that it was not obvious.

[00:07:26] Speaker 03:
We did have a burden to show it was not obvious, and we met that by submitting the testimony of Mr. Carr and Mr. Wentland that the combination of elements was new and unique and was not obvious.

[00:07:36] Speaker 03:
We also submitted secondary considerations

[00:07:39] Speaker 03:
showing copying and showing knowledge by the appellees of Mr. Carr's patented design, and that this evidence was key evidence that the jury used for finding a willful infringement.

[00:07:51] Speaker 03:
It is also secondary considerations that the district court should have used in determining obviousness of the hypothetical claim.

[00:07:59] Speaker 03:
So it is evidence that can be used in both regards, and it was not properly considered by the district court.

[00:08:06] Speaker 03:
So we did submit evidence and analysis to the court

[00:08:09] Speaker 03:
The other aspect of our analysis before the district court is that the appellees presented three prior art patents, the Burquist patent, the Jennings patent, and the Gervasey patent.

[00:08:20] Speaker 03:
All those prior art references were also considered by the PTO in granting the 554 patent.

[00:08:27] Speaker 03:
None of those prior art references have the doublier connection that was heralded by the appellees as the doctrine of equivalent subject matter.

[00:08:38] Speaker 03:
it still would require some kind of articulation by both the appellees and then by the district court that would take all of these aspects of the accused product, which for the most part are the same as the patented design, and swap out the double ear connection.

[00:08:56] Speaker 03:
Again, it comes back to why would someone of ordinary skill and the art make this combination?

[00:09:02] Speaker 03:
We also argued before the district court

[00:09:07] Speaker 03:
we argued in the appeal that the district court should have found literal infringement because of the way that the claims should have been construed to the district court in the motions for summary judgment.

[00:09:19] Speaker 03:
The 554 patent does not limit a side wall to terminate or end where the end wall in this case exists.

[00:09:28] Speaker 03:
And so what had happened in the accused product is that they took

[00:09:31] Speaker 03:
a weld plate and added that to the end of the side wall and thereby put an aperture in the weld plate which would attach dock segments.

[00:09:41] Speaker 03:
They had a different aperture that attached the dock segments to a piling.

[00:09:45] Speaker 03:
We argued that literal infringement could have been found in this case if the court would have construed the claims so that splitting an element into two different pieces does not avoid infringement.

[00:09:57] Speaker 03:
We also argued to the district court in summary judgment and argue on appeal that the defendants and the appellees improperly tried to read a limitation of just one aperture.

[00:10:12] Speaker 03:
One aperture in the product that has to go through both the cylindrical rim and the side wall at exactly the same time.

[00:10:20] Speaker 04:
That wasn't a necessary basis for the non-infringement summary judgment.

[00:10:26] Speaker 04:
That is, you clearly have a pretty good claim differentiation argument about single bolt.

[00:10:33] Speaker 04:
But the basis for the non-infringement or a sufficient basis for the non-infringement, assuming it's correct, is simply that there's not a hole in the sidewall because the plate that attaches and chucks out from the corner of the box is under this patent different from the sidewall.

[00:10:52] Speaker 04:
It's called something different.

[00:10:54] Speaker 03:
Your Honor is correct.

[00:10:55] Speaker 03:
I think the decision on summary judgment as far as a literal infringement dealt with both.

[00:11:00] Speaker 03:
Primarily it was the side wall and the welded end plate and the cork differentiated between the two and thereby found no literal infringement.

[00:11:08] Speaker 03:
But we also did argue the aperture and made the argument of claim differentiation.

[00:11:12] Speaker 03:
So you are correct.

[00:11:13] Speaker 03:
I see that I'm in my rebuttal time.

[00:11:15] Speaker 03:
I'm happy to address any other questions or I may.

[00:11:18] Speaker 00:
OK, I think why don't you save it.

[00:11:21] Speaker 03:
Thank you, Your Honor.

[00:11:26] Speaker 02:
Mr. Robineau.

[00:11:28] Speaker 02:
Thank you, your honor.

[00:11:29] Speaker 02:
May it please the court and counsel.

[00:11:34] Speaker 02:
Appellees submit that this is precisely the type of case that the ensnarement defense was designed to prevent, the type of infringement claim.

[00:11:42] Speaker 02:
In this case, the accused product forgoes the use of one of the limitations of the claim.

[00:11:48] Speaker 02:
And in this case, like in the general American transportation case, it's the very limitation that provided the patentability of the claims.

[00:11:56] Speaker 02:
and instead uses an alleged equivalent feature that was well known in the art both before filing of the application for the patent, at the time of the filing of the application, and since.

[00:12:09] Speaker 04:
Can you address the following?

[00:12:15] Speaker 04:
One version of the argument I think we just heard on the ensnarement is that focusing on the burden of production, not the burden of persuasion,

[00:12:25] Speaker 04:
You didn't put enough in.

[00:12:27] Speaker 04:
And while you put in evidence that the prior art showed each of the elements of the hypothetical claim, everything plus the double-eared connection, you didn't, the argument goes, put in the kind of here's why somebody would have a motivation to put all these things together.

[00:12:51] Speaker 04:
Why is that argument wrong?

[00:12:53] Speaker 02:
We had a couple of arguments, Your Honor, and I think we did present more evidence than the burdens required.

[00:13:00] Speaker 02:
We had two arguments.

[00:13:01] Speaker 02:
We argued below that the DOC manual itself, which the district court agreed disclosed every limitation, just didn't disclose them all in one embodiment.

[00:13:10] Speaker 02:
We argued that that should be anticipatory under the court's rules.

[00:13:14] Speaker 02:
The district court rejected that and instead found that the hypothetical claims are obvious.

[00:13:19] Speaker 04:
And why did the district court reject that?

[00:13:21] Speaker 02:
Because although all the limitations were found, the district court agreed all the limitations were found somewhere in the doc manual, they weren't all in a single embodiment, which was true.

[00:13:32] Speaker 02:
And we argued that the reason that they weren't all in a single embodiment was just the way that the book was structured.

[00:13:36] Speaker 02:
It talked about types of docs, then it talked about fasteners, which is what the double-edged connection is.

[00:13:41] Speaker 04:
So on obviousness, what did you have that showed

[00:13:45] Speaker 04:
what kind of evidence expert or otherwise that said, you would actually put these things together even though they're not shown as part of a single embodiment in the doc manual.

[00:13:54] Speaker 02:
So our fallback position on the doc manual was the doc manual itself teaches practitioners, people who use the doc manual to put together the various parts that it discloses in the doc manual.

[00:14:06] Speaker 02:
So they say, here are the types of docs.

[00:14:09] Speaker 02:
We have a poll doc.

[00:14:10] Speaker 02:
We have a permanent doc.

[00:14:12] Speaker 02:
And then in a later chapter, they say, here are the fasteners.

[00:14:15] Speaker 02:
When you're using this book, you can use a variety of these fasteners.

[00:14:18] Speaker 02:
You get to pick and choose which of the fasteners to use when you build your pole dock or when you build your permanent dock.

[00:14:24] Speaker 02:
And that alone, we said, was an actual express suggestion that you combine the limitations, not by naming the limitation and saying that the double-air connection should be used with a particular dock, but by saying to the practitioner, you can pick and choose any of these solutions when you build your dock.

[00:14:39] Speaker 02:
And the district court did cite that as a motivation to combine

[00:14:43] Speaker 02:
We argued alternative, and this is straight from KSR, that this is the type of case that obviousness is designed to handle, a case where all of the limitations are known in the art, where all of the limitations are used in the hypothetical claim in this case in the manner that they are intended to be used and that they have been used historically, so they're not used in an unusual way.

[00:15:04] Speaker 02:
and they achieve predictable results.

[00:15:06] Speaker 02:
And that's the type of case.

[00:15:07] Speaker 04:
When you say you argued, are you now talking about lawyer argument, or are you talking about some kind of evidence?

[00:15:17] Speaker 02:
It was the briefing before the court.

[00:15:20] Speaker 02:
So it was a lawyer analysis of the evidence, analysis of the doc manual.

[00:15:25] Speaker 04:
I feel like the word analysis is better than argument.

[00:15:26] Speaker 02:
That's right.

[00:15:29] Speaker 02:
Certainly nothing in the doc manual says expressly

[00:15:33] Speaker 02:
This double-eared connection has always been used this way and when you connect the dock segments using this double-eared connection, the predictable results will be X, Y, and Z. But if you read it in context, you can tell that the way that the hypothetical claim calls for the double-eared connection to be used is the same way that the dock manual describes it as being used in various docks at the time before the application was filed.

[00:16:00] Speaker 00:
I thought that our cases had suggested that the only obligation of the accused infringer was to bring in the prior art and to say, here it is, and then that it didn't have the burden further of establishing obviousness, that the burden was on the patentee to establish non-obviousness.

[00:16:21] Speaker 02:
I agree completely, Your Honor, and I think the district court also agreed with that when it set up the

[00:16:25] Speaker 02:
plaintiff had not met his burden of showing that the invention or that the hypothetical claim was non-obvious.

[00:16:31] Speaker 02:
The reason we went into such detail trying to show that every limitation was there and that there was a motivation to combine was just to be on the safe side and make sure that the court was aware that the priority that we had presented did render the hypothetical claims obvious.

[00:16:51] Speaker 00:
Anything further?

[00:16:52] Speaker 02:
I do have your honor.

[00:16:53] Speaker 02:
So I just want to speak very briefly on the ensnarement defense.

[00:16:56] Speaker 02:
I've already covered a lot of it.

[00:16:57] Speaker 02:
The appellant impugns the district court's decision without actually addressing the district court's analysis.

[00:17:03] Speaker 02:
District court followed the process that this court has approved for a long time.

[00:17:09] Speaker 02:
It adopted a hypothetical claim, one that we proposed.

[00:17:13] Speaker 02:
There wasn't any objection below.

[00:17:15] Speaker 02:
There is an objection in the appellant's briefing at this level, but they don't propose any

[00:17:20] Speaker 02:
alternative hypothetical claim nor do they explain how the alleged errors in the hypothetical claim affect the district court's analysis.

[00:17:28] Speaker 02:
The district court then conducted a limitation by limitation analysis.

[00:17:31] Speaker 02:
It didn't just discuss the double ear connection.

[00:17:34] Speaker 02:
It discussed every limitation and found every limitation present.

[00:17:39] Speaker 02:
There was no discussion by the appellant, no criticism of that analysis, no

[00:17:46] Speaker 02:
discussion of any single limitation that wasn't present in the prior art as the district court found.

[00:17:53] Speaker 02:
And finally, the district court considered whether the person of ordinary skill of the art would be motivated to combine, and I think I already addressed that.

[00:17:59] Speaker 02:
He relied on KSR and on the doc manual statements themselves that you can find the references.

[00:18:04] Speaker 02:
There was no analysis below or at this level by the appellant that criticized that analysis.

[00:18:11] Speaker 02:
The appellant didn't present any evidence or any argument that indicated that

[00:18:16] Speaker 02:
The elements from the prior art that meet the limitations of the hypothetical claim would not work for their intended purpose, or that the prior art teaches away from the combination that we're discussing.

[00:18:30] Speaker 02:
And although Ms.

[00:18:30] Speaker 02:
Coley mentioned secondary considerations, there's no evidence below or on appeal regarding any secondary considerations.

[00:18:40] Speaker 02:
Alternatively, and it's in our paper, so I'll just address it very briefly,

[00:18:45] Speaker 02:
Even if the ensnarement defense were not considered, the prosecution history estoppel should bar any doctrine of equivalence claim here.

[00:18:56] Speaker 02:
The first question in any prosecution history estoppel claim is whether there is a narrowing amendment.

[00:19:02] Speaker 02:
And I think there's no dispute here that the patentee narrowed the claims to include the very specific limitation that's at issue here, the connection mechanism.

[00:19:15] Speaker 02:
Then the question is whether the plaintiff can rebut the presumption that is created that the narrowing amendment that the patentee gave up any equivalence.

[00:19:32] Speaker 02:
And in this case, there's simply nothing in the file history itself that indicates any reason, tangential or otherwise, for the amendment.

[00:19:41] Speaker 02:
All we know is that the amendment

[00:19:43] Speaker 02:
narrowed the very specific limitation that is at issue in the doctrine of equivalence.

[00:19:48] Speaker 02:
The district court disagreed with us, but that disagreement was based upon the district court's speculation about the reason for the amendment.

[00:19:55] Speaker 02:
There's nothing in the record itself in the file history that indicates a reason, and as this court said in the Honeywell case in 523F1304, silence does not overcome the presumption.

[00:20:10] Speaker 02:
And finally, I'll just address briefly because I think the court addressed it in Ms.

[00:20:14] Speaker 02:
Coley's argument, the literal infringement argument.

[00:20:16] Speaker 02:
The court granted summary judgment of no literal infringement.

[00:20:19] Speaker 02:
There were two bases that the court granted it on.

[00:20:23] Speaker 02:
First, that the aperture that was in the extension, the welded on extension of the double layer connection is not the sidewall.

[00:20:33] Speaker 02:
And that's supported.

[00:20:33] Speaker 02:
The court said it wasn't the sidewall because

[00:20:36] Speaker 02:
The patent itself addresses this type of an extension and calls it not the sidewall, but calls it an overlapping member.

[00:20:42] Speaker 02:
The claims themselves support this when they say that the sidewalls and the endwalls form a cavity.

[00:20:47] Speaker 02:
Anything outside of that cavity would not be a part of the sidewall.

[00:20:51] Speaker 02:
The second basis for the court's determination that there is no literal infringement is independent, and that's even if the doublet connection is considered part of the sidewall,

[00:21:01] Speaker 02:
The aperture and the double layer connection is not in the portion of the sidewall that's adjacent to the cylindrical rim, which is an independent basis for the literal infringement.

[00:21:09] Speaker 02:
If the panel doesn't have any other questions, I have nothing further.

[00:21:13] Speaker ?:
OK.

[00:21:13] Speaker 02:
Thank you, Mr. Romero.

[00:21:16] Speaker 00:
Ms.

[00:21:16] Speaker 00:
Coley.

[00:21:25] Speaker 03:
Yes, Your Honors.

[00:21:27] Speaker 03:
On rebuttal, I would simply note that we did submit evidence to the district court, which came in through the jury trial.

[00:21:34] Speaker 03:
So again, invalidity was not an issue to the jury trial.

[00:21:37] Speaker 03:
We had infringement.

[00:21:38] Speaker 03:
And as part of that process, testimony came before the jury on a combination of elements.

[00:21:43] Speaker 03:
During the trial, it was a combination of the elements for the 554 patent.

[00:21:48] Speaker 03:
But the jury also heard testimony about how the doctrine of equivalent subject matter

[00:21:54] Speaker 03:
was equivalent to the connection method in the 554.

[00:21:56] Speaker 00:
They didn't hear testimony about obviousness, right?

[00:22:00] Speaker 03:
They heard testimony about how the combination of these elements was new and unique.

[00:22:05] Speaker 03:
So both Mr. Carr and his expert Mr. Wentland testified that it was the combination of elements that was new and that was different, and that it had not been seen before.

[00:22:14] Speaker 00:
Not addressed to the doctrine of equivalence, though, right?

[00:22:18] Speaker 03:
I'm sorry.

[00:22:18] Speaker 00:
Not addressed to the combination in the hypothetical claim, right?

[00:22:22] Speaker 03:
There was testimony about whether the double ear connection, whether the accused product had been seen anywhere in the market.

[00:22:29] Speaker 03:
And the only doc that includes all of these elements is either the 554 patent built by Mr. Carr or the accused product built by Mr. Cole.

[00:22:41] Speaker 03:
There was testimony about other docs that had been built by other builders in Door County.

[00:22:46] Speaker 03:
And that the combination of all of these elements is only present in these two docs.

[00:22:50] Speaker 03:
And that this combination is what led to the issuance of the patent.

[00:22:55] Speaker 04:
Did the parties agree that the evidentiary record for the forthcoming ensnarement decision by the district judge would be limited to what was presented at trial?

[00:23:10] Speaker 03:
No, Your Honor.

[00:23:11] Speaker 03:
There was no agreement on that front.

[00:23:13] Speaker 04:
Did you offer?

[00:23:15] Speaker 04:
Did you ask the district court for an opportunity to submit additional evidence specifically focused on the obviousness question?

[00:23:25] Speaker 03:
Well, Your Honor, yes.

[00:23:26] Speaker 03:
That came up outside the presence of the jury that ensnarement was a legal question.

[00:23:31] Speaker 03:
And so the judge allowed for briefing or submission of evidence after the verdict.

[00:23:35] Speaker 00:
Did you submit any additional evidence?

[00:23:38] Speaker 03:
We did, Your Honor.

[00:23:38] Speaker 03:
We submitted evidence in the form of the trial testimony, which was included in the trial testimony.

[00:23:45] Speaker 00:
I think the question is, did you submit anything other than the trial testimony?

[00:23:49] Speaker 03:
No, Your Honor.

[00:23:50] Speaker 03:
We submitted the trial testimony and then analysis of the prior art patents that had been submitted by the defendants.

[00:23:57] Speaker 00:
Lawyer analysis.

[00:23:58] Speaker 03:
Excuse me?

[00:23:59] Speaker 00:
Lawyer analysis.

[00:24:00] Speaker 03:
Lawyer analysis, yes, Your Honor.

[00:24:02] Speaker 03:
On the flip side, the defendants, the appellees, did not submit any other evidence to show that a combination would have been motivated by a person of ordinary skill in the art.

[00:24:12] Speaker 03:
So they did not submit a declaration of Mr. Cole explaining why he combined these elements together.

[00:24:18] Speaker 03:
They did not submit the declaration of any other expert, nor did they counteract the uncontradicted testimony of Mr. Carr and Mr. Wentland that it was this combination that led to patentability, not just the connection method.

[00:24:32] Speaker 03:
And that goes to the point on prosecution history estoppel.

[00:24:36] Speaker 03:
The defendants and the appellees argue that prosecution history estoppel narrowed the claims of the patent.

[00:24:43] Speaker 03:
untrue.

[00:24:44] Speaker 03:
What happened is that the original claims of the patent were claim number one and claim two, which was a dependent claim on claim one.

[00:24:52] Speaker 00:
Now the two aspects of claim two were... You can't tell from the prosecution history why the claim was narrowed, can you?

[00:25:02] Speaker 03:
It's our position.

[00:25:03] Speaker 00:
I don't know that the claim was narrowed because if you look at dependent claim two, you would naturally... Your position is the claim wasn't narrowed by the addition of this

[00:25:12] Speaker 00:
limitation from the dependent claims?

[00:25:16] Speaker 03:
I'm sorry, Your Honor.

[00:25:17] Speaker 03:
I meant to suggest that the Claim 2 naturally included all of the aspects of Claim 1.

[00:25:22] Speaker 03:
So when the patent examiner allowed... You narrowed the claim, right?

[00:25:27] Speaker 03:
Well, Claim 2 always included all of the aspects of Claim 1.

[00:25:31] Speaker 03:
It was a dependent claim.

[00:25:32] Speaker 03:
So when the patent examiner allowed what became Claim 1, it essentially combined together Claim 1 and Claim 2.

[00:25:39] Speaker 00:
Okay, that's a narrowing amendment.

[00:25:40] Speaker 00:
We've held that specifically in the Honeywell.

[00:25:43] Speaker 03:
In this case, Your Honor, though, if we look at the aspect of whether Claim 2, which became ultimately a combination of Claim 1, it includes all of the same elements.

[00:25:53] Speaker 00:
It includes the aperture in both the... But you can't tell why the narrowing amendment was made, right?

[00:26:00] Speaker 03:
There is no evidence in the record to show why, well, other than the fact that at the time the amendment was made, the examiner was looking at the issue of obviousness or anticipation from the prior art references.

[00:26:11] Speaker 03:
So at that time, it included Berquist, Jennings, and Gervais, which did not include a connection method in the 554 patent.

[00:26:20] Speaker 03:
So the patent owner amended the claims and included claim two and claim one together.

[00:26:26] Speaker 03:
So that's why it was so much.

[00:26:28] Speaker 00:
OK.

[00:26:28] Speaker 00:
I think we're out of time.

[00:26:29] Speaker 00:
Thank you, Ms.

[00:26:30] Speaker 00:
Fowler.

[00:26:30] Speaker 00:
Thank you, Mr. Robinal.

[00:26:33] Speaker 00:
The case is submitted, and that concludes our session for this morning.