[00:00:00] Speaker 02: We have four argued cases before the court this morning. [00:00:04] Speaker 02: The first case, I'm going to have to ask if it's Leak Surveys versus is it FLIR or FLIR? [00:00:12] Speaker 02: How is that pronounced? [00:00:13] Speaker 03: FLIR, Your Honor. [00:00:14] Speaker 02: FLIR versus FLIR Systems Inc. [00:00:16] Speaker 02: Case number 161299. [00:00:19] Speaker 02: Mr. Puckett, you want five minutes for rebuttal? [00:00:22] Speaker 01: I do, Your Honor. [00:00:23] Speaker 02: Okay. [00:00:24] Speaker 02: That's fine. [00:00:25] Speaker 02: You may begin. [00:00:35] Speaker 01: Good morning, and may it please the court, Donald Puckett for Appellant Leak Surveys, Inc. [00:00:40] Speaker 01: I know there are many issues to address today and a very large record, and I know the panel will have many questions. [00:00:45] Speaker 01: I think I can summarize leak surveys positions by articulating just four very succinct points, and I'm going to try to do that in about 60 seconds or less, if I may. [00:00:53] Speaker 01: First, the board's final written decision, like Fleer's IPR petitions below, fundamentally misapprehended the technical problem that is addressed by the leak surveys patents. [00:01:02] Speaker 01: The technical problem was not imaging a gas under some conditions. [00:01:06] Speaker 01: The problem was how to adapt or modify prior art imaging devices to overcome the known deficiencies that made all prior art systems unsuitable for detecting leaks under real world conditions. [00:01:16] Speaker 01: That's the technical problem addressed in these patents. [00:01:20] Speaker 01: Second, the board relied upon fundamentally flawed claim constructions to essentially rewrite the patent claims. [00:01:26] Speaker 01: The board's running constructions eliminate critical elements and realign the patent claims to coincide [00:01:31] Speaker 01: with the board's misguided view of the technical problem. [00:01:34] Speaker 01: The board's erroneous claim construction rendered other findings erroneous, particularly its finding that FLIR had met its burden of proof to show that prior art combinations would disclose or practice all elements of the claims, as well as the board's decision to ignore the extraordinary, compelling evidence of objective factors such as long-held need and the failure of others to solve the same technical problem. [00:01:54] Speaker 01: Third, the board's finding on the motivation to combine are both legally erroneous and not supported by substantial evidence. [00:02:00] Speaker 01: The board misapprehended the evidence regarding principle of operation and intended use, and again, ignored all evidence of secondary considerations. [00:02:08] Speaker 01: There is no competent evidence to support the board's findings, that the combinations would have been an obvious design choice to a person of ordinary skill, or that the post would have expected or predicted the results. [00:02:19] Speaker 01: Fourth, and finally, these errors require that you reverse the board's decision and render judgment for LSI. [00:02:26] Speaker 01: After five IPR petitions and three instituted trials, FLIR has failed to meet its burden of proof [00:02:31] Speaker 01: And we don't believe that they are entitled to another bite at the apple on any sort of remand. [00:02:35] Speaker 02: But all of these points that you're making turn on are agreeing with your claim construction positions, correct? [00:02:44] Speaker 01: Absolutely, that is correct. [00:02:46] Speaker 02: And even either one of them, right? [00:02:49] Speaker 01: I believe that's true. [00:02:51] Speaker 01: OK. [00:02:52] Speaker 01: In fact, Your Honor, I would put the point this way, that if the board's claim constructions are affirmed, [00:02:59] Speaker 01: then the patent claims are anticipated by the Merlin mid-camera. [00:03:05] Speaker 01: And FLIR has essentially taken that position. [00:03:07] Speaker 01: They didn't file it as a 102 reference in the PTAB, perhaps because it was in the prosecution history. [00:03:13] Speaker 01: But the conclusion there would be that after almost nine years of examination, that the patent office allowed claims that are fully anticipated by a device that is thoroughly discussed in the patent specification. [00:03:25] Speaker 04: Well, claim 18 of the 496 wouldn't be anticipated by the Merlin, right? [00:03:30] Speaker 01: That's right. [00:03:30] Speaker 04: So it has a 600 nanometer limit. [00:03:34] Speaker 01: That's correct. [00:03:34] Speaker 01: I was speaking with respect to the independent claims, and they pointed out in their brief that at least there would be one claim that limits the bandwidth of the filter specifically at an upper limit. [00:03:45] Speaker 01: So with respect to that one claim, you're correct. [00:03:48] Speaker 01: But with respect to the others, we would acknowledge that under the board's claim constructions, the Merlin mid-camera with a 2,000 micron filter practices these claims. [00:03:59] Speaker 01: when we all know that it was completely unsuitable for leak detection, unmodified with a filter that wide, that it could only even image a gas under very, very rare conditions with a high delta t, with an integration time adjustment on the camera, where the leak is known so that you can point the device at a fixed stream where you know where it is. [00:04:21] Speaker 04: Well, it all turns on delta t, doesn't it, really? [00:04:23] Speaker 04: I mean, if you have a high enough delta t, it doesn't really matter. [00:04:27] Speaker 04: what other features the camera has or doesn't have, right? [00:04:31] Speaker 01: Yes, with respect to the Merlin MID or many of the other prior systems with a sufficient delta-T. [00:04:36] Speaker 01: There are systems that have been known all the way back since at least Strachan in 1985 that have been able to image a gas under some conditions where there's a high delta-T, of course. [00:04:45] Speaker 01: That's sort of the starting point with the technical problem. [00:04:49] Speaker 01: In the field, very often, in fact, maybe at most times, you don't have a sufficient delta-T. [00:04:55] Speaker 01: The Strunkan system, for example, didn't work when the ambient temperatures fell below about 85 degrees. [00:05:01] Speaker 01: So if you're an oil man in Baytown, Texas, and you want to know where the leaks are, but the ambient temperature is less than 85 degrees, the Merlin MID or any of these other priority cameras aren't going to do you any good. [00:05:11] Speaker 04: But Strunkan says, look, if you have improved detection and improved processing, you can do better than 85 degrees. [00:05:21] Speaker 04: You can go lower. [00:05:22] Speaker 04: And why isn't that exactly what the Merlin MID did? [00:05:27] Speaker 04: Plus putting the filter in the cold refrigerated section with the emission sensor. [00:05:33] Speaker 01: So that is the speculation or prediction, if you will, from Strachan. [00:05:38] Speaker 01: However, we don't believe that if you took the actual filter that was in Strachan, and certainly there's no evidence in the record that would indicate that if you put that in the Merlin MID with a higher detector, that that's actually going to work. [00:05:50] Speaker 01: And here, I believe, is the reason why. [00:05:52] Speaker 01: The filter is too wide, and it's going to suffer from what's referred to as the washout problem that's discussed in the prosecution history. [00:06:00] Speaker 04: The filter in Strachan is too wide. [00:06:02] Speaker 04: The filter in Strachan, if I recall, was in the range of your pet. [00:06:08] Speaker 04: Right? [00:06:09] Speaker 01: No. [00:06:10] Speaker 01: Well, first of all, we need to talk about what's within the range of our patent. [00:06:13] Speaker 04: Well, your range of your patent is a minimum of 100 in one claim or 200 in other claims. [00:06:18] Speaker 04: There are a maximum of 600 in one of the claims and no maximum stated in the other claims other than by implication of saying, well, it won't work very well if it's too wide. [00:06:27] Speaker 04: Right? [00:06:28] Speaker 01: Is that a fair statement? [00:06:30] Speaker 01: With just one little caveat, which is it's not by implication. [00:06:34] Speaker 01: Right? [00:06:35] Speaker 01: There is an imposed limitation. [00:06:37] Speaker 01: that requires the camera to be able to produce a certain result. [00:06:39] Speaker 04: The implication is if it can produce that result, it must have a narrower filter than the Merlin. [00:06:48] Speaker 01: That's your argument. [00:06:50] Speaker 01: It's my argument, and it's also based on evidence that's in the record that the Merlin would not be able to do that with its own filter. [00:06:57] Speaker 01: Now, there is no evidence in the record, and it's not our burden. [00:07:00] Speaker 01: It's our primary point on this appeal, is that they have not met their burden. [00:07:05] Speaker 01: to put evidence in the record that if you take a 500 nanometer filter, which is important, we need to discuss this, it's not 200 nanometers, it's a 500 nanometer filter passband, as that term is used in the patents. [00:07:16] Speaker 01: If you put that into the Merlin mid-camera, there is no evidence in the record, one way or the other, that anyone in this courtroom can begin to know whether it's going to work. [00:07:25] Speaker 01: And I think there's really good evidence. [00:07:26] Speaker 02: But did you really raise an argument with the board about having an upper limit on the width? [00:07:33] Speaker 01: Absolutely. [00:07:34] Speaker 01: Both in our briefs, [00:07:35] Speaker 01: and at the here this was discussed extensively that it was unable to the cameras that had a filter that was too wide would suffer from the washout problem that you would that the ability to detect absorption within the narrow bands of interest would be overwhelmed by infrared radiation that was coming in from these adjacent bands and so that's really the finding the sweet spot the right with the filter is a combination of [00:08:02] Speaker 01: wanting to detect multiple gases of interest. [00:08:05] Speaker 01: So it can't be the sort of microfilters like the 40 nanometer filters in whimmers that are calibrated to one particular gas of interest. [00:08:13] Speaker 01: That's why you get at least about 100 or at least about 200. [00:08:17] Speaker 04: But whimmers are very narrow filters. [00:08:20] Speaker 04: They're in the range of 100, and one of them is 90, I think, right? [00:08:26] Speaker 01: In whimmers. [00:08:27] Speaker 01: The filters that are tested in whimmers, I would have to check, he notes that there have been demonstrated that as small as 40 was good and that the narrower is better. [00:08:38] Speaker 01: That's the teaching from whimmers. [00:08:40] Speaker 01: And so we get, in our patent, we get at least about 100 or at least about 200, specifically so that the camera will be able to detect multiple gases of interest. [00:08:48] Speaker 01: Okay, so that's the lower limit. [00:08:50] Speaker 01: The upper limit then is [00:08:51] Speaker 01: is at some point the filter is going to get too wide and it's going to suffer from the washout problem. [00:08:55] Speaker 04: But isn't this, in terms of going after multiple gases or multiple absorption lines for a single gas, some of which often fall within a fairly narrow range, isn't that just very pedestrian kind of determination from the catalog, well-known catalog of emission absorption lines, to look at the [00:09:18] Speaker 04: at where the lines fall and then design your filter according to which gases you want to pick up. [00:09:23] Speaker 01: Why is that anything new? [00:09:27] Speaker 01: I don't disagree with the idea that detecting multiple gases of interest using a single filter was done. [00:09:34] Speaker 01: I mean, that's Strachan. [00:09:35] Speaker 01: Strachan talks about that and is trying to do it. [00:09:37] Speaker 01: The problem with Strachan is that he sets his filter at 500. [00:09:41] Speaker 01: There's actually two filters in Strachan. [00:09:42] Speaker 01: There's a 500 and a 1,000. [00:09:44] Speaker 01: And he reports the results of the 1,000. [00:09:46] Speaker 01: The view in Strachan is as long as it covers- Well, that's aggregate, not half maximum, right? [00:09:54] Speaker 01: Yes, that's exactly right. [00:09:56] Speaker 01: Pass band or aggregate pass band. [00:09:57] Speaker 04: And your 600 limit is half maximum. [00:10:01] Speaker 01: For that particular claim, that is correct. [00:10:03] Speaker 01: And I believe, I want to check this, but I believe that that particular claim is not operating in the midway region, but is at the larger window. [00:10:11] Speaker 01: But I want to caveat on that, and I don't think that's terribly important. [00:10:16] Speaker 01: The point is that you can have certain applications, like if you're looking for something other than hydrocarbons, for example, where you might use a larger window. [00:10:27] Speaker 01: Or the fact that there is one particular set of claims that impose a numerical upper limit, specifically by talking about the half width at full maximum, doesn't preclude the fact that the independent claims themselves [00:10:44] Speaker 01: impose this results limitation that by nature of the physics will have the practical effect of imposing upper limit on how big the filter can be. [00:10:53] Speaker 01: That's just the physics, and the claim notation that requires you to be able to produce a visible image of the gas under variable ambient conditions will in practice impose an upper limit on the size of the filter. [00:11:04] Speaker 04: But since your claims don't have, except for the claim 18, don't have a maximum, what you're really saying, it seems to me, is that you pick a filter. [00:11:14] Speaker 04: that is above 100 or above 200, but the maximum is determined by whether it works or not. [00:11:20] Speaker 04: That is exactly correct. [00:11:21] Speaker 04: And so if it works, then you are claiming it. [00:11:26] Speaker 01: So for example, if we were trying to prove infringement for a camera, we would test it and see whether it is capable of producing a visible image. [00:11:35] Speaker 04: And if that camera had, let's say, a 1,000 nanometer filter, but it's still imaged gases, you'd say it infringes, right? [00:11:44] Speaker 01: I mean, it has to meet the other limitations of the client, obviously. [00:11:47] Speaker 04: But the other limitations, it images the gas and it has the cold filter and so forth. [00:11:53] Speaker 01: A single filter configuration, for example, like if you use the camera of Sato, for example, the tunable filters, like that's not going to be good enough. [00:12:01] Speaker 04: OK, but a single filter cold in the machine. [00:12:04] Speaker 04: If I have a really good imaging camera, an improvement on the Merlin, and I can use a thousand nanometer filter, wide filter, [00:12:14] Speaker 04: and I get an image of a gas, then you say it infringes, right? [00:12:18] Speaker 01: Yes, but I think the physics isn't right in your hypothetical. [00:12:21] Speaker 01: If you have a 1,000-nanometer filter, it's going to wash out a number. [00:12:24] Speaker 02: Is your argument that somehow this is in the claims even though it's unstated because it is part of the producing a visible image concept? [00:12:34] Speaker 01: Yes, Your Honor. [00:12:34] Speaker 02: But if that's the case, why isn't that a claim construction argument? [00:12:39] Speaker 02: And I understand that you say you discussed with [00:12:42] Speaker 02: And there are plenty of dependent claims that have lots of upper and lower limits. [00:12:50] Speaker 02: But did you discuss it in the context of claim construction relating to the producing a visible image term? [00:12:58] Speaker 01: So no, it was not discussed in terms of claim construction by either side. [00:13:01] Speaker 01: We from our preliminary response and then our full patent owner response have made the argument that they have failed to meet their burden of proof as to this element. [00:13:09] Speaker 01: We think that produce a visible image [00:13:10] Speaker 01: has a very plain and ordinary meaning. [00:13:13] Speaker 01: There's nothing to be construed there. [00:13:14] Speaker 01: I think everyone in this room knows what that means. [00:13:17] Speaker 01: And so the question is, if you take a particular device or a particular proposed combination of prior art references, would it do that? [00:13:24] Speaker 01: And you don't know until you test it. [00:13:26] Speaker 01: FLIR knows how to do this, by the way, because after they learned of David Furry's hot camera and did their business development deal and made the gas find IR, they did testing to see if it would be able to produce a visible image [00:13:39] Speaker 01: under a variable range of ambient conditions. [00:13:41] Speaker 01: They very easily could have taken the filter of Strachan or the filter of Colt and plopped it in their Merlin MID and done a field test in their very sophisticated laboratory. [00:13:49] Speaker 01: Sure, they could have done it in less than a day. [00:13:51] Speaker 01: They chose not to do that, and that's why the evidence isn't in the record. [00:13:54] Speaker 01: You want to get back to claim construction, I didn't mean to get away from that. [00:13:57] Speaker 01: But to answer your Honor's question, we didn't [00:13:59] Speaker 01: address this as a claim construction issue, because we think it's plain and ordinary. [00:14:03] Speaker 01: But we have all along, from our first paper and in every paper, and particularly in the oral argument, have challenged them by saying, you did not meet your burden of proof on this element. [00:14:14] Speaker 01: And the judges at the PTAB, and when I made this argument, never asked FLIR, why didn't you do some testing? [00:14:21] Speaker 01: Why didn't you submit some evidence to show whether your proposed combination would produce a visible image under variable ambient conditions [00:14:27] Speaker 01: or not. [00:14:28] Speaker 01: That's a big point. [00:14:28] Speaker 02: You're weighing into your rebuttal time. [00:14:30] Speaker 02: You're down to one minute left. [00:14:31] Speaker 02: I'll give you two minutes for rebuttal. [00:14:32] Speaker 01: Thank you, ma'am. [00:14:39] Speaker ?: OK. [00:14:39] Speaker 03: Good morning, Your Honors. [00:14:42] Speaker 03: I will get to the filter with this, which seems to be a fair amount of interest. [00:14:45] Speaker 03: But big picture-wise, the board did its job here. [00:14:49] Speaker 03: It thoroughly analyzed the prior art. [00:14:51] Speaker 03: It explained the reasons why this patent is obvious. [00:14:54] Speaker 03: And at a very high level, Strachan in 1985 [00:14:57] Speaker 03: basically instructed one skill, you can take it off the shelf, pass it by our camera. [00:15:02] Speaker 03: He disclosed the bandwidth that hydrocarbon gases absorb and emit radiation three to five microns. [00:15:08] Speaker 03: He said, hey, use a filter that will focus on that bandwidth and filter out all the extraneous wavelengths that we don't care about. [00:15:16] Speaker 03: That's what Strachan said in 1985. [00:15:18] Speaker 03: And he said, you know what, if I have a camera with better detection, I'll get a better result. [00:15:24] Speaker 03: Cameras caught up with Strachan. [00:15:26] Speaker 03: And all that Mr. Fury did here is what Strachan told him to do. [00:15:30] Speaker 03: He took an off-the-shelf Merlin-MID camera that had a cold filter, which was art recognized as the type of filter you want for this type of application because a warm filter will emit radiation. [00:15:42] Speaker 03: And he put a hydrocarbon-specific filter in the Merlin-MID just as Strachan taught 20 years earlier. [00:15:49] Speaker 03: And to no one's surprise, at least those familiar with the prior art, the Merlin-MID, modified in that way, [00:15:56] Speaker 03: was very good at imaging gas because it had a fantastic detector called an N-speed detector. [00:16:02] Speaker 03: And so that detector allows you to pick up smaller delta Ts than the Strachan reference. [00:16:09] Speaker 03: And the board went through all the evidence, relied on the prior art teachings, the express teachings of the prior art, and discussed the testimony of the witnesses and relied on cross-examination testimony of [00:16:21] Speaker 03: LSI's witnesses. [00:16:22] Speaker 02: What's your response to your friend's argument that if you're right that 90% of this patent should have been anticipated by Merlin even without reference to Stratton? [00:16:35] Speaker 02: Right. [00:16:35] Speaker 02: So does that mean that the examiner got it that wrong even though Merlin was fully discussed during the course of the prosecution? [00:16:44] Speaker 03: There were a lot of claims at issue and a lot of the dependent claims had narrow wave bands and filter [00:16:50] Speaker 03: whiffs that the Merlin-Midd would not have anticipated. [00:16:54] Speaker 03: And so did the examiner necessarily get it wrong? [00:16:57] Speaker 03: I don't know. [00:16:58] Speaker 03: I mean, the examiner was focused on a lot of claims. [00:17:00] Speaker 03: A lot of claims had narrowed bandwidth. [00:17:02] Speaker 03: And the focus was on some other prior art. [00:17:04] Speaker 03: Merlin-Midd was never really a major focus. [00:17:06] Speaker 03: The focus was on whimmers, some other prior art where they imaged gas under variable ambient conditions. [00:17:12] Speaker 03: But they would change the filter every now and then. [00:17:14] Speaker 03: And so the way they sold this in the patent office is, hey, use a fixed filter configuration. [00:17:21] Speaker 03: rather than changing filters. [00:17:23] Speaker 03: And you can image gases more than one gas, because they have overlapping absorption bands. [00:17:27] Speaker 03: So I don't want to criticize the examiner, but he probably could have 102'd some of the broader claims. [00:17:33] Speaker 04: But Mr. Puckett is right, is he not, that with respect to, let's say, a 2,000 nanometer range, that unless you have a whopping large delta t, you're going to get no image, even in the rather discerning [00:17:50] Speaker 04: I call it INSB detector. [00:18:00] Speaker 04: That's a fair statement, isn't it? [00:18:04] Speaker 04: If you took the Merlin and pointed it at a leak without changing your filter at all, [00:18:12] Speaker 04: You're not going to get anything unless the leak is coming out really cold or really hot, right? [00:18:17] Speaker 03: I don't think that's necessarily true, Your Honor. [00:18:20] Speaker 03: You're going to need more delta T than you need with a narrow workbook. [00:18:23] Speaker 03: Yeah, that's my point. [00:18:23] Speaker 03: Not a ton of delta T. Well, okay. [00:18:25] Speaker 04: I don't know how much a ton of delta T is, but you need... [00:18:29] Speaker 04: you need to increase the delta t above what would be optimal for leak detection purposes, I would think. [00:18:35] Speaker 03: Absolutely. [00:18:35] Speaker 03: And it's really an academic exercise at this point, because our case is obvious. [00:18:39] Speaker 03: We're not saying that you would use the Merlin MENOD minoflight. [00:18:42] Speaker 03: Our case is that you would listen to Strachan, and you'd put a narrower filter in there to image gas. [00:18:49] Speaker 03: And you would have a reasonable expectation, given the advancements in camera technology, that you're going to image gas at lower delta t's than you did previously. [00:18:58] Speaker 03: That was your reasonable expectation. [00:19:00] Speaker 03: And the evidence in the record is from the witnesses from both sides is that, of course, you would expect that the Myrtle and Myd is going to work better than the Strachan camera. [00:19:07] Speaker 03: It's 20 years more advanced. [00:19:09] Speaker 03: So Your Honor, would somebody still want to use the Myrtle and Myd on myophyte? [00:19:14] Speaker 03: Probably not. [00:19:15] Speaker 03: They would want to do what Strachan told them to do. [00:19:18] Speaker 02: Now, I want you to so, I'm sorry, Your Honor. [00:19:21] Speaker 02: Clearly, you have to have a visible image. [00:19:22] Speaker 02: So why wouldn't producing, why wouldn't the common and ordinary meaning of producing a visible image [00:19:28] Speaker 02: include the concept that you have to have an upper limit on width, because otherwise you're not going to have a visible image. [00:19:36] Speaker 03: I think, common sense speaking, there probably is some practical upper limit somewhere. [00:19:44] Speaker 03: But it's well above the Strachan filters. [00:19:46] Speaker 03: We know that the Merlin camera could image jet exhaust. [00:19:50] Speaker 03: That's 2,000 nanometers wide. [00:19:52] Speaker 03: So he's not at the practical limit. [00:19:54] Speaker 03: He was able to. [00:19:54] Speaker 04: Really, really hot. [00:19:56] Speaker 03: It was really, really hot. [00:19:57] Speaker 03: But let me point to the claims. [00:19:58] Speaker 03: The claims provide some insight on what this practical limit is. [00:20:02] Speaker 03: And we know it's above 600 nanometers at half width or maximum. [00:20:06] Speaker 03: And this is why we know this. [00:20:08] Speaker 03: I'm looking at the 813 patent claim one. [00:20:11] Speaker 03: I'm sorry. [00:20:11] Speaker 03: What is above 600, did you say? [00:20:13] Speaker 03: The practical limit necessarily has to be above 600 nanometers at full width half maximum. [00:20:20] Speaker 03: OK, all right. [00:20:21] Speaker 03: OK, that's the number that they relied on [00:20:24] Speaker 03: when they were talking about the maximum filter width, they were talking about the full width at half maximum. [00:20:28] Speaker 04: Right. [00:20:28] Speaker 04: But the minimums they're talking about, aggregate bandwidth, whatever that means. [00:20:31] Speaker 03: Is at the bottom of the curve. [00:20:33] Speaker 04: Which is indiscernible. [00:20:34] Speaker 03: I mean, you can't, who knows what it is. [00:20:36] Speaker 03: Right. [00:20:37] Speaker 03: So let me just point to claim one and claim 37 of the 813 patent. [00:20:41] Speaker 03: And this will provide some clarity. [00:20:43] Speaker 03: Claim one says that your bandwidth has to be at least about 100 nanometers. [00:20:48] Speaker 03: There is no expressed upward limit. [00:20:50] Speaker 03: Even if you accept LSI's argument that there's a practical upper limit, it's going to be well above the Strachan filter size. [00:20:58] Speaker 03: Because if you go to dependent claim 37, which depends from claim 1, that's where there's an express upper limit. [00:21:06] Speaker 03: It says the claim 37, I'm at A150 of the appendix, the system of claim 1, wherein the passband for the filter configuration has a full width at half maximum transmittance that is [00:21:21] Speaker 03: less than about 600 nanometers. [00:21:25] Speaker 03: The Strachan filters, both of them, are less than 600 nanometers at full width half maximum. [00:21:33] Speaker 03: Both of the Strachan filters meet dependent claim 37. [00:21:35] Speaker 03: And claim 37 narrows claim 1. [00:21:39] Speaker 03: So they have to be within the scope of claim 1, despite whatever upper maximum limit may implicitly exist in claim 1. [00:21:48] Speaker 03: If you look at the record at [00:21:51] Speaker 03: A28, 38, and 39, that's our expert, he testified that the 10% footprints tracking has a 500 nanometer full width at half maximum and that the 5% filter has 200 nanometers at full width half maximum. [00:22:09] Speaker 03: So both of those filters are within the upper limit expressly recited in claim 37. [00:22:14] Speaker 03: So whatever this magic number is, [00:22:19] Speaker 03: It's above 600 nanometers, so it's bigger than the Strachan filters. [00:22:23] Speaker 03: It's wider than the Strachan filters. [00:22:25] Speaker 03: And they never below. [00:22:27] Speaker 03: Their argument below was they provided a bunch of reasons why you wouldn't combine this art. [00:22:32] Speaker 03: Nowhere below did they say, once you put the Strachan filter in the Merlin mid, that it wouldn't work. [00:22:38] Speaker 03: That's new. [00:22:38] Speaker 03: That's new on appeal. [00:22:41] Speaker 03: That argument was not made below. [00:22:50] Speaker 03: So unless your honors have any other... I have a question. [00:22:53] Speaker 04: The secondary considerations are objective considerations. [00:22:57] Speaker 04: The hawk was, seems to me, from the evidence, pretty successful, both in terms of its reception in the leak detection community, if there is one, and also in terms of just the [00:23:19] Speaker 04: the fact that it succeeded where prior efforts, at least it did better than some of the prior efforts, some of the active detectors. [00:23:31] Speaker 04: Why isn't the secondary considerations evidence significant here? [00:23:36] Speaker 03: A couple reasons, Your Honor. [00:23:41] Speaker 03: The first reason is, to the extent anybody was surprised by the performance of the hawk, [00:23:47] Speaker 03: That's a testament to the Prior Art Merlin MID. [00:23:50] Speaker 03: Let's not forget what happened here. [00:23:51] Speaker 03: It was the Prior Art Merlin MID camera that Furey put a custom filter, as taught by Strachan. [00:23:59] Speaker 03: So to the extent people thought this thing worked great, it had to do with the electronics of the camera, the sensor, the image processing. [00:24:07] Speaker 03: This is a very complex piece of machinery. [00:24:09] Speaker 04: But that wasn't the board's basis for discounting the secondary considerations, was it? [00:24:15] Speaker 04: That's your argument, which may or may not be right, but that's not what the board said. [00:24:18] Speaker 03: The board's basis was twofold. [00:24:20] Speaker 03: At 846, the board said that given the strong prima facie case of obviousness, all this other evidence of secondary considerations is not sufficient to overcome it. [00:24:33] Speaker 03: And the board was actually right about that, because at the end of the day, all that Mr. Furey did was take a state-of-the-art camera, Merlin Mitt, prior camera, and put a [00:24:43] Speaker 03: custom hydrocarbon filter in there as Strachan taught. [00:24:46] Speaker 03: We can't run from that. [00:24:48] Speaker 03: And so the board said, cream of fascia case is so powerful here that all this other stuff. [00:24:53] Speaker 02: Even though we've said repeatedly that's not the proper way to do the analysis. [00:24:57] Speaker 03: Well, I think they did it simultaneously. [00:24:58] Speaker 03: I didn't think they came to the decision saying it's obvious and they all the secondary considerations didn't talk me out of it. [00:25:04] Speaker 03: I think they looked at it holistically. [00:25:07] Speaker 03: And I don't remember the exact wording, but what the board said is this is so [00:25:13] Speaker 03: It's so clearly taught by Strachan that these secondary considerations don't persuade us. [00:25:20] Speaker 03: The other thing the board said is they didn't find the secondary considerations commensurate in scope with the claims. [00:25:28] Speaker 03: The Merlin Hawk, the Hawk is not even within the scope of the 496 patent. [00:25:37] Speaker 03: The 496 patent requires at least 200 nanometers. [00:25:40] Speaker 04: Is it 100 nanometers, the hook? [00:25:42] Speaker 03: It's 140 at the base and 64 at half width. [00:25:46] Speaker 04: But that's within what is the claim one of the 496? [00:25:52] Speaker 03: Right, it's within the scope of the 813 patent. [00:25:55] Speaker 04: Of the 813, yeah. [00:25:55] Speaker 03: Right. [00:25:57] Speaker 03: And the claims don't recite any particular performance criteria. [00:26:01] Speaker 03: All the claims require is that you can go out and you can image gas under virulogland, [00:26:06] Speaker 03: It doesn't require to detect any particular leak size. [00:26:10] Speaker 03: It doesn't require you to detect under any specific delta Ts the prior art image under variable ambient conditions. [00:26:19] Speaker 03: Cope did that. [00:26:20] Speaker 03: Strachan did that. [00:26:21] Speaker 03: All the systems tested at the Environ test did that. [00:26:25] Speaker 03: Everybody tested at the detection limit they were looking for. [00:26:28] Speaker 03: So the hawk, the declaration evidence is a little from the petroleum industry, doesn't really match with the Environ report. [00:26:36] Speaker 03: The environment report basically says everybody detected leak at the method 21 limit. [00:26:42] Speaker 04: But it does look like the hawk did best. [00:26:46] Speaker 04: Is that a fair statement, looking at the chart that was presented to us? [00:26:50] Speaker 03: Right. [00:26:50] Speaker 03: I think that's probably a fair statement that it performed best. [00:26:54] Speaker 03: But it didn't blow all the others away. [00:26:57] Speaker 03: In fact, when the FDA implemented the alternative work practice to method 21, they didn't limit it to the hawk. [00:27:05] Speaker 03: Yeah, I'm sorry, the EPA, I'm sorry. [00:27:07] Speaker 03: They didn't limit it to the hawk. [00:27:09] Speaker 03: All the cameras tested it met the alternative work practice. [00:27:12] Speaker 03: So I think that's a fair statement. [00:27:15] Speaker 03: Maybe the hawk did a little better, but it didn't blow the socks off the other systems. [00:27:18] Speaker 03: They all imaged it as. [00:27:20] Speaker 00: Let's go back to the question of the objective rendition of secondary considerations. [00:27:25] Speaker 00: And you argue that the obviousness was so strong, such a strong prima facie case showing of obviousness. [00:27:35] Speaker 00: that the secondary considerations weren't able to overcome that. [00:27:39] Speaker 00: But it seems to me that the more you rely on the strength of obviousness, then the question that pops up and pops up in my mind all the time is, if that's the case, if it's so strong, then why hadn't this concept been thought of before? [00:27:57] Speaker 03: Well, it's an excellent question, Your Honor, and that's just kind of a practical way of looking at it. [00:28:02] Speaker 03: And the answer, I think, is pretty straightforward. [00:28:05] Speaker 03: is the concept was thought of before. [00:28:07] Speaker 03: It was thought by Strachan. [00:28:08] Speaker 03: And basically, the camera caught up. [00:28:11] Speaker 03: The IR camera's technology caught up to Strachan. [00:28:14] Speaker 02: I don't even understand your copying argument, because your copying argument says, well, if all we did was basically take pieces and parts of the prior art, then we're not really copying this combination product. [00:28:27] Speaker 02: But in that case, any time you have an obviousness case, then you'd wipe out copying. [00:28:33] Speaker 02: In other words, it's a circular argument. [00:28:35] Speaker 02: The whole point is if you had to copy that, then it's more likely that you couldn't actually pick it out of the prior art, or at least not so easily. [00:28:48] Speaker 03: I'll try to address that to the best I can understand your honor's question. [00:28:53] Speaker 03: And if I don't get it, I'm sure you'll follow up with me. [00:28:56] Speaker 03: The copying argument, I mean, we can't forget the camera is the FLIR camera. [00:29:01] Speaker 03: He took the FLIR camera. [00:29:03] Speaker 03: and put a hydrocarbon specific filter in there as taught by Strachan. [00:29:09] Speaker 03: The only thing you could argue we copied, we didn't copy our own camera, it was our camera. [00:29:13] Speaker 03: To the extent we copied the concept of putting a hydrocarbon specific filter in there, that concept was disclosed by Strachan 20 years earlier. [00:29:25] Speaker 03: Then why hadn't you done it with the Murrow? [00:29:27] Speaker 03: Well, we weren't in that business. [00:29:28] Speaker 03: These cameras are used for military reasons, all sorts of things. [00:29:33] Speaker 03: Mr. Fury brought a business opportunity to Flair. [00:29:37] Speaker 03: He was somebody out there who was using the old method of detecting gas. [00:29:43] Speaker 03: He was the one out there who was familiar with the people in the industry who had the business contacts, and he came to us and said, hey, your camera. [00:29:53] Speaker 03: I put this filter on here, and I can use my relationships, and we can see if we can't do business with this industry. [00:30:01] Speaker 03: It was a new business opportunity for Flair. [00:30:03] Speaker 03: We just weren't focused on that. [00:30:04] Speaker 04: So the Merlin, if I understand it, came out in 2002? [00:30:08] Speaker 03: The brochure is copyrighted in 2002. [00:30:13] Speaker 03: It came out right around that time. [00:30:15] Speaker 04: And then the Hawk was June of 2003? [00:30:18] Speaker 03: Correct, Your Honor. [00:30:20] Speaker 04: So it was pretty quickly after the Merlin came out that the Hawk was put together. [00:30:28] Speaker 03: Yes, Your Honor. [00:30:30] Speaker 03: You know, and Culp in 1994, he put a cold filter in a passive IR camera and compared it to an active system. [00:30:38] Speaker 03: And he basically was able to image gas at relatively low delta T. So people have been doing it. [00:30:44] Speaker 03: And just the Merlin-Mitt had a better sensor than Culp had and then Strachan had. [00:30:49] Speaker 03: The technologies are just caught up. [00:30:51] Speaker 00: We started the argument, I believe, with the acknowledgment that the case [00:30:56] Speaker 00: turns on the construction, right? [00:30:58] Speaker 00: And I'm interested in the construction of the term leak. [00:31:01] Speaker 00: How does the construction of the term leak that excludes unintended emissions, how does that affect the rest of the case? [00:31:08] Speaker 03: I don't really think it affects us at all. [00:31:10] Speaker 03: It doesn't matter whether you construe leak to be unintended or intended emission. [00:31:15] Speaker 03: And even Ellis, I conceded that below with your argument. [00:31:19] Speaker 03: It's not case dispositive. [00:31:21] Speaker 03: And the reason it's not case dispositive is because Strachan [00:31:24] Speaker 03: discloses detecting leaks. [00:31:27] Speaker 03: Culp discloses detecting fugitive emissions. [00:31:31] Speaker 00: So when I read the pen and I read that the device can detect, let's say, blowouts or flare-outs, isn't a flare-out an intended leak? [00:31:41] Speaker 03: Yes, sir. [00:31:42] Speaker 03: I mean, we think the board got the construction right. [00:31:44] Speaker 03: And I was trying to address the question, if you disagree, does it change anything? [00:31:47] Speaker 03: And it doesn't. [00:31:48] Speaker 03: Yeah, the construction is exactly right. [00:31:51] Speaker 03: Yes, and I think the patent again provides insight into why that's right. [00:31:56] Speaker 03: If you look at the 496 patents, and you go to claims one and claim 11, claim one basically talks about detecting a leak in a component. [00:32:13] Speaker 03: In claim 11, I'm on A100. [00:32:18] Speaker 03: talks about the type of components that you can use the invention of claim one for detecting leaks in. [00:32:24] Speaker 03: And he expressly says in column 30, line 4, you can look at whether or not you've got a blow-off valve leaking. [00:32:32] Speaker 03: To your point, what is the purpose of a blow-off valve? [00:32:36] Speaker 03: To intentionally blow off gas, to blow off leaks. [00:32:40] Speaker 03: And so however you want to use the term leak outside the intrinsic record, in the context of this intrinsic record, [00:32:48] Speaker 03: And if you don't divorce the term leak from this intrinsic record, the record shows you that leak is used broadly to cover both intended and unintended emissions, to image both components that have fugitive emissions and non-fugitive emissions, such as a blow-off valve. [00:33:05] Speaker 02: Okay, you're over your time. [00:33:06] Speaker 03: I'm sorry. [00:33:07] Speaker 02: That's okay, we kept you going. [00:33:09] Speaker 02: So we'll give you four minutes for rebuttal to make up for the differential. [00:33:20] Speaker 01: Thank you, Your Honors. [00:33:21] Speaker 01: If I can start by addressing the Claim 37 argument in the upper boundary. [00:33:26] Speaker 01: Mr. Gabrik is trying to make a claim differentiation argument, if you will. [00:33:30] Speaker 01: It doesn't work here, and the reason why is because if you look at the various figures in the patent, it discloses that there are other gases with overlapping absorption bands that have what's wider than hydrocarbons, for example. [00:33:41] Speaker 01: And so there would be embodiments where, for example, something wider than [00:33:46] Speaker 01: a very narrow water 200 filter would not wash out until you get to some larger upper limit, right? [00:33:55] Speaker 04: What would be that upper limit, given the intrinsic evidence, the figures and so forth? [00:34:00] Speaker 01: Well, so it depends on what you're trying to image. [00:34:03] Speaker 01: And I think the answer is, we really, without doing testing, we don't know. [00:34:06] Speaker 01: We don't know precisely what the upper limit is. [00:34:09] Speaker 04: Give me a rough estimate of what you think the rough, roughly what would be the maximum that the patent covers. [00:34:15] Speaker 01: So with a very highly sensitive detector, like the Merlin MID, when you get not very far outside the overlapping absorption range, then you're going to get washout. [00:34:24] Speaker 01: And so, you know, when you're trying to image hydrocarbons, once that you get to, we're talking about the bottom of the curve now, so the aggregate passband, if we're looking at 300, 350, 400, like not far beyond the overlapping range, it's not going to work anymore. [00:34:38] Speaker 01: because that Merlin mid is going to, the detector, it is very sensitive and it's going to see all those adjacent bands and it's going to come in and wash out the image. [00:34:46] Speaker 04: Remember when they were... If you're interested in the gases that emit and absorb at those adjacent bands and you're not particularly interested in speciation, then that's a good thing, not a bad thing, right? [00:35:00] Speaker 04: If you're picking up those additional bands. [00:35:02] Speaker 01: No, because now if you're outside the overlapping [00:35:07] Speaker 01: the overlapping area, right? [00:35:09] Speaker 01: Now you're getting infrared radiation that's coming in, that's going to wash out what would otherwise produce the image. [00:35:15] Speaker 04: But if the, if the radiation that's coming in is coming in from gases, the emission or absorption lines of gases that you're interested in, then that just increase enhances your image, right? [00:35:27] Speaker 01: No, because that what's coming in is, is from the background. [00:35:31] Speaker 04: Well, I'm, I'm, I'm supposing [00:35:33] Speaker 04: that you have, and these emission and absorption lines are all over the place because every gas has multiple lines. [00:35:40] Speaker 04: So you can well have a range that has multiple lines that you're interested in. [00:35:48] Speaker 04: Now what the maximum of that is as a practical matter, I suppose, depends on what gases you're interested in. [00:35:54] Speaker 04: But I would imagine that that range could be pretty large. [00:36:00] Speaker 01: Perhaps, right? [00:36:01] Speaker 01: And I think that a distinction needs to be drawn between the apparatus and the method claims, because the method claims you can't tell until you use them in practice. [00:36:06] Speaker 01: I'm sorry. [00:36:07] Speaker 02: But that's the problem. [00:36:08] Speaker 02: So your claim construction basically says there's an upper limit that's implied, and the implied upper limit depends on whatever your purpose happens to be. [00:36:18] Speaker 02: So how does one know what the claim really means if it depends on an individual user's purpose? [00:36:24] Speaker 01: Right. [00:36:25] Speaker 01: So with respect to the method claims, since you're not going to [00:36:28] Speaker 01: infringe those until you start undertaking the steps method, then you'll know what you're trying to infringe for those. [00:36:33] Speaker 01: With respect to the apparatus claims, we think that you have to do some testing. [00:36:37] Speaker 01: And so that's what we would do if we were proving infringement in district court. [00:36:40] Speaker 01: And it's what they failed to do in trying to make that their validity case. [00:36:43] Speaker 01: I'm down to my last 45 seconds or so. [00:36:45] Speaker 01: And so I guess I'll close with this. [00:36:48] Speaker 01: Well, there's a reason why Graham says that you look at all of the factors together, including the secondary considerations. [00:36:55] Speaker 01: In hindsight, this patent does appear to be [00:36:58] Speaker 01: a simple substitution. [00:37:00] Speaker 01: But in practice, it was not. [00:37:03] Speaker 01: And the fact that the entire oil and gas industry couldn't figure this out, the fact that the person who developed the Merlin Mid-Camera, Bill Paris, provided testimony that he never thought of it or no one at Indigo thought of it, and importantly, and I hope you'll look at Austin Richards and his publications. [00:37:17] Speaker 01: Before David Furey, he does publications that list every [00:37:21] Speaker 01: application for the rail embed that he can think of, and leak detection is not on there, but as soon as David Furry brings this idea to FLIR, it's there. [00:37:29] Speaker 01: And please look at the Jeff Frank email. [00:37:31] Speaker 01: FLIR's response, they did not see the commercial opportunity before David, but as soon as he brought this to them, they saw the opportunity, and they wanted to copy it and take it to practice. [00:37:40] Speaker 01: Those secondary considerations show that this was not obvious at the time, but even people of extraordinary skill in the art. [00:37:46] Speaker 01: David Furry is an inventor and deserves patent protection. [00:37:49] Speaker 01: Thank you. [00:37:50] Speaker 02: Thank you.