[00:00:02] Speaker 02:
Our next case is number 162607 Presidio Components, Inc.

[00:00:20] Speaker 02:
versus American Technical Ceramics, Mr. Cahill.

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May it please the court.

[00:00:46] Speaker 04:
My name is Ron Cahill and I represent American Technical Ceramics Corporation, the defendant and appellant in this case.

[00:00:53] Speaker 04:
Claim one is indefinite because the intrinsic evidence discloses no means to define a fringe effect capacitance that's capable of being determined by measurement.

[00:01:02] Speaker 01:
Why does that have to come from intrinsic evidence if something that, to take an extreme example, everybody in the business knows why in the world would you have to say

[00:01:14] Speaker 01:
in the intrinsic evidence.

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Will all of Nautilus, Dow, and Teva say that the guidance has to come from the intrinsic evidence?

[00:01:23] Speaker 01:
I don't think that they do.

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The Supreme Court reads section 112 paragraph 2 to require that a patent's claims viewed in light of the specification and prosecution history inform those skilled in the art about the scope of the invention.

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In light of what may already be in the heads of the skilled reader.

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Now, if you're talking about a presumed meaning,

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If a claim term has a meaning that everyone in the art understands, that if you go to a textbook and it's there and there's no dispute about it, then that might be true.

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Simply using the name in the patent might be enough.

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That's certainly not the case here.

[00:01:59] Speaker 01:
Well, there was an expert, and I gathered just on one side, that said, you see what the patent says, you've got to be able to measure it.

[00:02:08] Speaker 01:
Here's how my graduate students or my second year engineering students would do it, and there's no evidence to the contrary.

[00:02:16] Speaker 04:
Well, that very expert provided a mountain of evidence to the contrary.

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He testified quite clearly that as of 2002, the... That this wasn't written down somewhere.

[00:02:27] Speaker 01:
That's all he said, right?

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He said it had never been done before, that it hadn't been disclosed in the patent

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or in any publication of any kind.

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But if nobody had any reason to do it before and the second year graduate student or whoever it was that he referred to would upon being presented with the task know how to do it and there's no contrary evidence, what's the uncertainty?

[00:02:56] Speaker 04:
Well the uncertainty is there's no guidance in the patent and that testimony is completely unsupported.

[00:03:03] Speaker 04:
So a person of ordinary skill in the art looks at this.

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And as I understand the expert's testimony and the findings made by the court, it's almost like they testified that you're making a meal and you have a recipe.

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And each technique is known.

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But the recipe isn't there.

[00:03:24] Speaker 02:
I think what the expert said was that loss performance testing

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was something that was disclosed in the past, and that's the methodology that he used.

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And what he also said was that testing the fringe effect, or determining the fringe effect, was not something that had been done before, and that he needed to develop a approach to that, correct?

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So that the basic loss performance testing

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was known.

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I know there's a dispute about whether the industry standard had been established at that time.

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But he said there wasn't an established standard.

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That's hard to quarrel with, it seems to me.

[00:04:07] Speaker 02:
But what he said was nobody had done this before to determine the fringe effect, correct?

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That's correct.

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And he said that it would take his graduate students, whom he actually said were

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above the level of a person skilled in the art six months to a year to do it.

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So is that sufficient that somebody skilled in the art could make a determination six months to a year?

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It doesn't seem to me it's quite the same thing as saying, oh, well, there's an established method.

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Everybody knows about it.

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And I'm just going to use that established method here.

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He's not really saying that.

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He's saying the established method for lost performance testing

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but that hadn't been done to separate out the fringe effect before.

[00:05:00] Speaker 04:
That's right.

[00:05:01] Speaker 04:
He did say those things.

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And insertion loss testing is shown in the patent for capacitors that don't have fringe effect capacitance.

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And the expert agreed that the patent does not teach how to use insertion loss testing to resolve fringe effect capacitance capable of being determined by measurement.

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And he further said, quite loudly,

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that there was no evidence at all in 2002 that insertion loss testing could be used in this way.

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And is it enough?

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I don't think it is.

[00:05:35] Speaker 01:
The purpose of the indefiniteness requirement... Let me just try to separate two things.

[00:05:40] Speaker 01:
I mean one is your argument that the methodology has to be in the intrinsic evidence and it seems to me that that's just not in fact supported by the cases and indeed if you look at the

[00:05:53] Speaker 01:
the discussion on denial of re-hearing on Bach in the Dow case, your most important case, it expressly says there's no categorical such requirement.

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And it doesn't make sense that there be a categorical requirement, that the patent teach people what they can either already know or can reasonably figure out.

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And then the question is, well, OK, he had to figure something out.

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We're now no longer talking about a categorical bar to this kind of evidence.

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And I'm not sure why.

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in this case where you had no contrary evidence to show that there were different methodologies so that as a factual matter it would be like Dow or like Teva or you know the Honeywell-Hyerson case where there were different methodologies and nobody would have any idea which one to use and they might come out differently.

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There are no methodologies at all.

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There are none.

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And

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All of the experts agreed that there are none.

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All of the experts and a third party witness agreed that insertion loss testing doesn't resolve fringe effect capacitance capable of being determined by measurement.

[00:07:04] Speaker 04:
Worse than Dow.

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In Dow, there were three methods that one could go to the art and find.

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Here, there are no methods you could go to the art and find.

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There's a statement in Dow that here, there's nothing in the patent that tells you which of the three methods to pick

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or even if that's the universe of methods.

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Here the universe is wide open.

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We have an expert who says, I'll apply the scientific method and I'll figure it out.

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And my grad students who are above the level of ordinary skill in the art, you know what, it'd take them six months to a year to figure it out.

[00:07:42] Speaker 04:
How is that reasonable guidance?

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I think it's not, and it fails the public notice function.

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Companies like ATC.

[00:07:49] Speaker 02:
That seems to me to be the issue.

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There's nothing in the art that existed at the time that told you how to do testing to determine the fringe effect.

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And he said he had to develop a method and that it would take someone skilled in the arts six months to a year to do that.

[00:08:12] Speaker 02:
The question is whether that provides sufficient guidance

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to satisfy the North-West standard, right?

[00:08:22] Speaker 04:
Right.

[00:08:23] Speaker 04:
Now, in cases where you provide less guidance in the intrinsic evidence, those are cases where it's clear outside of the patent what it means.

[00:08:32] Speaker 04:
Here there's no clarity.

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There is no way to resolve it.

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No one's ever done it.

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The inventors never did it, which is probably why it's not in the patent.

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And there's no literature at all to say that it's even possible.

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And the expert's clear.

[00:08:52] Speaker 04:
In the yellow brief at page 20 and the appendix at page 990, there's nothing in the patent that says a network analyzer can be used to determine whether the external contacts of a multilayer capacitor have a determinable fringe effect capacitance between them, correct?

[00:09:07] Speaker 04:
And the expert says correct.

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There's nothing in the patent that tells you you can do this.

[00:09:12] Speaker 01:
Can I change topics before you?

[00:09:15] Speaker 01:
Sure.

[00:09:16] Speaker 01:
I mean there are a lot of issues in this case so any change of topic would feel like a radical change of topic.

[00:09:24] Speaker 01:
Here's my specific question and I'm going to build in some assumptions.

[00:09:29] Speaker 01:
Let's assume for purposes of this question, this is about the injunction, assume for purposes of this question that there was not sufficient proof of lost profits

[00:09:43] Speaker 01:
A, does the injunction have to go back for reconsideration because the district court relied in part on the presence of lost profits and B, when it goes back may the district court take up-to-date evidence and in particular what I'm thinking of as I understand it this injunction has been in place since November 15th of last year I think that was

[00:10:11] Speaker 01:
judgment day plus 90 days for the so-called sunset provision?

[00:10:15] Speaker 04:
Yeah, actually, I think it was February because it was stayed by this court for several months.

[00:10:20] Speaker 01:
So if it goes back, there's going to be a period of real-world experience about what your 550 customers have been buying since they couldn't buy the 550.

[00:10:34] Speaker 01:
Can the district court update the evidence to look at that?

[00:10:40] Speaker 04:
So in theory,

[00:10:43] Speaker 04:
the court could look at that evidence.

[00:10:48] Speaker 04:
If it's considering anew the issue of whether an injunction should issue, I think it could consider that evidence.

[00:10:55] Speaker 04:
I'm not sure how much weight it would have, but I don't think there would be a preclusion to them considering it.

[00:11:03] Speaker 04:
Now, I agree that if lost profits is reversed, the court should simply remand for further consideration of the injunction.

[00:11:13] Speaker 04:
And perhaps at this point, unless the court has more questions, I'd like to reserve my time for a while.

[00:11:20] Speaker 00:
Where in your brief can I find a discussion that suggests that Dr. Huber's test that he utilized in this case with the insertion loss measurements and the fringe effects capacitance would have taken six months to a year to develop?

[00:11:39] Speaker 00:
Where is that in your brief?

[00:11:40] Speaker 00:
Show me in your blue brief where I can find that.

[00:11:43] Speaker 04:
Where in the brief?

[00:11:46] Speaker 04:
Certainly, I could find it in the record.

[00:11:48] Speaker 00:
Well, let's start with whether you argued it.

[00:11:52] Speaker 04:
I believe we did argue it.

[00:11:53] Speaker 00:
Where?

[00:11:54] Speaker 04:
I don't have the page site in my head.

[00:11:57] Speaker 00:
OK, when you come up on the bottle, I'll expect you to have it at that point.

[00:11:59] Speaker 04:
I will look for it.

[00:12:02] Speaker 00:
OK.

[00:12:02] Speaker 00:
Where is it in the record, just so I know?

[00:12:04] Speaker 00:
Since you said certainly, I can tell you where it is in the record.

[00:12:06] Speaker 04:
It's in the passage.

[00:12:07] Speaker 04:
We asked the court to read the section beginning of page 1008.

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And I believe it's right after that.

[00:12:13] Speaker 04:
My recollection is it's page 1012.

[00:12:15] Speaker 04:
It's right around there.

[00:12:39] Speaker 02:
I believe it's at page 1012.

[00:12:44] Speaker 02:
Okay, Mr. Schatz.

[00:12:46] Speaker 05:
May it please the Court, Brett Schatz on behalf of Persevio Components.

[00:12:50] Speaker 05:
Good morning, Your Honors.

[00:12:51] Speaker 02:
Good morning.

[00:12:51] Speaker 02:
Could we start with the lost profits issue, because I'm a bit confused.

[00:12:58] Speaker 02:
You seem to be saying that the 560, which is the non-impringing alternative, couldn't compete with the 550, but that comparison seems to me to be irrelevant, the correct comparison.

[00:13:14] Speaker 02:
is whether the 560 is an alternative to your client's BB product isn't it?

[00:13:20] Speaker 05:
That's correct your honor.

[00:13:22] Speaker 02:
Well what evidence is there in the record that the 560 wouldn't be competitive with the BB product?

[00:13:32] Speaker 05:
It's in the form of both documentary evidence and

[00:13:35] Speaker 02:
in the form of multiple... Okay, but I want you to show me where there's some testimony that the 560 couldn't compete with the BB.

[00:13:45] Speaker 02:
In other words, that if you took the 550 out of the market, that the BB would be sold instead of the 560.

[00:13:54] Speaker 05:
Sure.

[00:13:55] Speaker 05:
So first of all, it's in ATC's own documentation.

[00:13:58] Speaker 02:
Okay, but where?

[00:14:01] Speaker 02:
I want to see where it says that.

[00:14:02] Speaker 05:
I'll recite the appendix.

[00:14:04] Speaker 05:
First off, 709.

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709.

[00:14:06] Speaker 05:
And 712 through 714.

[00:14:09] Speaker 05:
These are just... Wait, wait, wait, wait, wait.

[00:14:12] Speaker 05:
Okay.

[00:14:12] Speaker 02:
Where does this say in 709?

[00:14:16] Speaker 05:
So let me explain.

[00:14:17] Speaker 05:
These are internal ATC documents where they fail to identify the 560 as a competitive part in this market.

[00:14:25] Speaker 05:
Where?

[00:14:25] Speaker 05:
That's the first example.

[00:14:26] Speaker 02:
Where does it say that?

[00:14:29] Speaker 05:
list the parts that are competitive in the market, and it does not list the 560.

[00:14:34] Speaker 02:
But they're talking about a market that includes the 550.

[00:14:36] Speaker 02:
The 550 is being taken out of the market.

[00:14:42] Speaker 02:
That's the assumption.

[00:14:43] Speaker 05:
I see.

[00:14:43] Speaker 05:
So you're referring then to Vince Thomas's expert testimony.

[00:14:46] Speaker 02:
I want to see testimony where it says that if you take the 550 out of the market, the people will turn to the BB instead of the 560.

[00:14:54] Speaker 02:
Sure.

[00:14:55] Speaker 05:
So Vince Thomas, Presidio's expert witness,

[00:14:58] Speaker 05:
at 1048 and 1049, 1048 and 1049, talked about the framework of his analysis, which is, quote, the 550 product was not in the market, close quote.

[00:15:14] Speaker 05:
And I'll have to give you a couple other pages, because Vince Thomas testified to that repeatedly.

[00:15:19] Speaker 01:
Vince Thomas is the damages expert.

[00:15:21] Speaker 05:
That's right.

[00:15:22] Speaker 05:
Now he is assessing other testimony regarding the

[00:15:27] Speaker 05:
Inferior performance of the 560 parts and I can win but he's comparing it to the 550 that's not relevant.

[00:15:36] Speaker 02:
Where does he say?

[00:15:38] Speaker 05:
that the 560 isn't competitive with the BB Well, first of all Vince time Thomas testified that his testimony was a framework where the 550 product was not on the market He testified to that repeatedly.

[00:15:53] Speaker 05:
So the 550 is off the market

[00:15:56] Speaker 05:
Invinced Thomas is giving his expert opinions about lost profit damages.

[00:16:01] Speaker 02:
Okay, so where does it say that 560 isn't competitive with the BB?

[00:16:06] Speaker 05:
Well, that testimony comes directly from ATC's own witnesses.

[00:16:11] Speaker 02:
Where?

[00:16:11] Speaker 05:
Okay.

[00:16:13] Speaker 05:
I'm going to give you several citations.

[00:16:14] Speaker 02:
No, just start with one.

[00:16:16] Speaker 02:
Give me your best citation.

[00:16:17] Speaker 05:
Okay.

[00:16:19] Speaker 05:
The appendix 735 to 736.

[00:16:21] Speaker 05:
Mr. Rabe,

[00:16:24] Speaker 05:
from ATC.

[00:16:26] Speaker 02:
Hold on a second, 735.

[00:16:29] Speaker 02:
Okay.

[00:16:34] Speaker 05:
Mr. Raeb identifies the 560 as a reduced performance part.

[00:16:41] Speaker 02:
Where does he compare it to the BB?

[00:16:43] Speaker 05:
That would be found at the following citations.

[00:16:47] Speaker 02:
Just give me your best one.

[00:16:49] Speaker 02:
Don't leave me a list.

[00:16:50] Speaker 02:
That doesn't help me.

[00:16:51] Speaker 02:
Give me your best citation as to where

[00:16:53] Speaker 02:
witness compared the 560 to the BB.

[00:16:56] Speaker 05:
697 to 700.

[00:16:57] Speaker 05:
697.

[00:16:59] Speaker 02:
Okay, so where does he address this?

[00:17:12] Speaker 05:
I believe in that excerpt Mr. Rabe did not.

[00:17:14] Speaker 05:
He agreed that ATC as a company did not identify the 560 as a competitive product to Presidio's

[00:17:22] Speaker 05:
buried broadband product.

[00:17:24] Speaker 02:
You mean because someone didn't identify it in the market as competitive to the BB that that means that that's evidence that it's not?

[00:17:34] Speaker 05:
Yeah, he testified it's a reduced performing part and it's not competitive to the Presidio BB part.

[00:17:41] Speaker 02:
Where does he say then?

[00:17:43] Speaker 05:
In the citations would like to give you 697 to 700.

[00:17:49] Speaker 02:
Okay, so where does he say it?

[00:17:58] Speaker 05:
and then 712 to 714.

[00:17:59] Speaker 00:
We're on 697 to 700 and we want you to actually identify the precise language.

[00:18:05] Speaker 05:
Well, the testimony was he was asked to identify the parts that are in this relevant market and he did not identify the 560 as even being in the relevant market.

[00:18:18] Speaker 00:
But that's not

[00:18:19] Speaker 00:
Actually, that's not even what the testimony says.

[00:18:21] Speaker 00:
Do you know what Presidio products are competitive with ATC's UBC products?

[00:18:25] Speaker 00:
That's not, tell me every product in the relevant market.

[00:18:28] Speaker 00:
He's asked about the specific Presidio products, and he says, you're going to test my memory.

[00:18:32] Speaker 00:
It's late in the day.

[00:18:33] Speaker 00:
It's the BB series, I think, but I could be wrong.

[00:18:36] Speaker 00:
Off the top of my head, I just can't remember, frankly.

[00:18:38] Speaker 00:
But the question wasn't, tell us everything, including ATC's other products that might be competitive.

[00:18:44] Speaker 00:
The questioning is very precise.

[00:18:47] Speaker 00:
tell us what presidio.

[00:18:49] Speaker 00:
Did you not bring your appendix?

[00:18:50] Speaker 05:
I did.

[00:18:51] Speaker 05:
We have it here.

[00:18:52] Speaker 05:
But there are several citations where Mr. Rabe testified essentially that the 560 is not in the market because it's a reduced performing part.

[00:19:01] Speaker 02:
Well, it's not in the market at the time that the 550 was being sold.

[00:19:07] Speaker 02:
Where does he say that if you take the 550 out of the market, the sales will go to the BB rather than the 560 because the BB is superior?

[00:19:17] Speaker 05:
Well, with all due respect, that's a hypothetical that a witness, a factual witness would not answer.

[00:19:23] Speaker 05:
But what you have here is a- So you don't have any evidence?

[00:19:26] Speaker 05:
Well, I believe it's 709 and 712 through 714.

[00:19:31] Speaker 05:
Again, he's testifying which products are in the relevant market.

[00:19:37] Speaker 05:
And he didn't refuse to identify the 560 because he had identified that as a reduced performing part.

[00:19:44] Speaker 02:
As compared to the BB?

[00:19:46] Speaker 05:
In one instance, he testified that as to compare to the Presidio BB.

[00:19:50] Speaker 02:
Where?

[00:19:51] Speaker 05:
I believe it... Well, I'm assuming 712 to 714.

[00:19:56] Speaker 02:
Well, you're assuming... I don't want you to assume.

[00:19:58] Speaker 02:
I want you to show me where he gave such testimony.

[00:20:01] Speaker 05:
Okay.

[00:20:29] Speaker 05:
Your honor, I apologize.

[00:20:30] Speaker 05:
I can't put my finger on that precise language.

[00:20:33] Speaker 05:
But the sum of, let's step back and look at the standard of review.

[00:20:38] Speaker 02:
The standard of review, there has to be evidence.

[00:20:40] Speaker 02:
If you can't show us the evidence, you have a problem.

[00:20:44] Speaker 05:
I agree.

[00:20:45] Speaker 05:
And when Evan Slavitt from ATC testifies that the 560 is not as good as the 550 part, that's indicative that this is a reduced performing part.

[00:20:56] Speaker 05:
And that is,

[00:20:57] Speaker 05:
consistent with Mr. Raab's testimony or he testified that it is a reduced performing part?

[00:21:03] Speaker 00:
Well, it's reduced as compared to the 560, but what we don't know is how does it compare to the BB series product that would be the alternative to the 560.

[00:21:16] Speaker 00:
And that's your problem.

[00:21:17] Speaker 00:
Your problem is you've got a market here where there is an alternative

[00:21:22] Speaker 00:
and where ATC has made a very reasonable argument that why would they compete with themselves?

[00:21:27] Speaker 00:
Their 560 product is better performing, probably because they stole your fringe effect capacitance, but it's better performing.

[00:21:35] Speaker 00:
It costs they have a higher profit margin.

[00:21:38] Speaker 00:
So why would they offer an alternative of their own to their own product?

[00:21:42] Speaker 00:
Why not just stick with the 560?

[00:21:43] Speaker 00:
However, if they can't make the 560, they've got this other thing fully developed, sold at least to one customer, and available to step in in place of their 560.

[00:21:53] Speaker 00:
And the problem is this record is devoid of anything that suggests the customer wouldn't buy the 550 and would turn to the BB product instead.

[00:22:02] Speaker 05:
OK, well I would respectfully disagree.

[00:22:04] Speaker 05:
I do think there's evidence in the record.

[00:22:06] Speaker 00:
And you need to point us to it.

[00:22:06] Speaker 05:
And I will try to find the precise citation.

[00:22:09] Speaker 05:
But I do believe Mr. Rabe testified that ATC as a company did not identify the 560 as a performing part in this market.

[00:22:19] Speaker 02:
Let's turn to the definite in this question.

[00:22:22] Speaker 02:
Yes.

[00:22:22] Speaker 02:
Did you have a question?

[00:22:24] Speaker 02:
So we've got this insertion loss testing.

[00:22:29] Speaker 02:
which your expert testified could be used here.

[00:22:32] Speaker 02:
But he said that it would take his graduate students, who have skill above that of the person skilled in the art, six months to a year to do it.

[00:22:45] Speaker 02:
Is that sufficient to make it not indefinite?

[00:22:49] Speaker 00:
He didn't really testify to that, did he?

[00:22:50] Speaker 00:
Don't you want to look at the testimony and refute what Judge Stark has suggested he actually said?

[00:22:55] Speaker 05:
Absolutely.

[00:22:55] Speaker 05:
That's where I'd like to start, because that is

[00:22:58] Speaker 02:
Not at all what dr. Heedner said that was taken out of context what dr. Heedner said what's taking out context he says He says that would take them six months to a year doesn't actually he did not say that and frankly it was somewhat of a joking response In a long-winded answer this is on page 10 well He says do I want to wait six months or a year for them to go through and figure it out no?

[00:23:26] Speaker 05:
And that's not direct testimony that it would take his students or a person of skill in the art six months to a year to figure out.

[00:23:33] Speaker 05:
In fact... What does he say?

[00:23:35] Speaker 00:
Does he only teach grad students?

[00:23:38] Speaker 05:
No, he does not.

[00:23:39] Speaker 00:
He takes all types of students.

[00:23:40] Speaker 00:
Does he say grad students in this passage?

[00:23:41] Speaker 00:
I don't actually see that anywhere.

[00:23:43] Speaker 00:
He just says if I turned a bunch of random students loose on this, it might take them six months to figure out.

[00:23:48] Speaker 00:
But he doesn't say his grad students.

[00:23:51] Speaker 00:
He doesn't say these students would be a skilled artisan, because what was the definition of a skilled artisan?

[00:23:55] Speaker 00:
It was a person with a degree already, right?

[00:23:57] Speaker 00:
That's exactly right.

[00:23:58] Speaker 00:
So a random undergraduate student might take six months, but they're not a person with skill in the art.

[00:24:03] Speaker 00:
And doesn't he testify on the prior page that a person with skill in the art, on the other hand, would know exactly how to do this?

[00:24:08] Speaker 05:
In fact, ATC's own expert admitted that a person of ordinary skill in the art understands the insertion loss measurements that are disclosed in the specification.

[00:24:17] Speaker 02:
Well, surely that's true, but where is the testimony

[00:24:21] Speaker 02:
that someone skilled in the art could develop this testing method in under six months.

[00:24:27] Speaker 02:
Is there such testing on it?

[00:24:28] Speaker 05:
There is.

[00:24:29] Speaker 05:
Dr. Huebner testified to it repeatedly, first of all.

[00:24:33] Speaker 02:
Show me where he testified that it could be done in less than six months.

[00:24:36] Speaker 05:
984 to 985.

[00:24:39] Speaker 05:
Dr. Huebner testified at length.

[00:24:42] Speaker 05:
Not a person of ordinary skill in the art.

[00:24:44] Speaker 02:
Where?

[00:24:44] Speaker 02:
Not at length.

[00:24:45] Speaker 02:
Where?

[00:24:45] Speaker 02:
Where does he say that somebody could do it in under six months?

[00:24:50] Speaker 05:
He testified that a person of ordinary skill in the art already knows how to do it.

[00:24:55] Speaker 02:
No one needs to figure it out because... He never said that somebody knows how to do it.

[00:24:58] Speaker 02:
He said someone could figure it out.

[00:25:00] Speaker 02:
Well... I figured it out.

[00:25:02] Speaker 05:
Actually, I disagree with that, Your Honor.

[00:25:04] Speaker 05:
The testimony from Dr. Keebner is that a person of skill in the art already knows how to undertake insertion loss measurements.

[00:25:11] Speaker 02:
Well, that's true, but he doesn't say that someone skilled in the art would know how to apply insertion loss measurement

[00:25:17] Speaker 02:
to determine the fringe effect.

[00:25:19] Speaker 02:
That's the point.

[00:25:21] Speaker 02:
There's no, you know, there certainly is testimony that people knew how to do insertion loss testing.

[00:25:26] Speaker 02:
That's not the question.

[00:25:27] Speaker 02:
The question is, did someone know how to determine the fringe effect capacitance by doing a form of infringement, infringing loss testing, insertion loss testing?

[00:25:39] Speaker 02:
And he said, I had to develop a method to do it, correct?

[00:25:42] Speaker 05:
Dr. Huebner testified to that directly at 1507.

[00:25:45] Speaker 02:
He said, I had to develop a method, right?

[00:25:47] Speaker 02:
Well, what he said... Yes or no?

[00:25:50] Speaker 05:
He said he knew how to undertake insertion loss measurements, and a person of skill in the art knows how to isolate discrete capacitances like the fringe effect capacitance.

[00:25:59] Speaker 02:
And he testified that he had to figure out how to do it.

[00:26:03] Speaker 02:
There was no established method for determining how to determine the fringe effect.

[00:26:10] Speaker 00:
On page 1011, didn't he testify, I cannot, nor would a posita need to be told what to do.

[00:26:16] Speaker 00:
That's what a posita is.

[00:26:17] Speaker 00:
They can figure it out on their own.

[00:26:19] Speaker 00:
They don't need a publication to figure out.

[00:26:20] Speaker 00:
This is just what engineers do.

[00:26:22] Speaker 05:
And that's exactly what ATC's own expert agreed to as well.

[00:26:25] Speaker 02:
OK, but that's the point.

[00:26:26] Speaker 02:
He had to figure it out.

[00:26:27] Speaker 02:
He wasn't going to an established method for determining the fringe effect capacitance, right?

[00:26:34] Speaker 05:
I think, with all due respect, what he was testifying to is that a person of ordinary skill in the art knows insertion loss measurements,

[00:26:40] Speaker 05:
knows how to undertake them, and there's no dispute about that, and the district court made factual findings to that account.

[00:26:48] Speaker 05:
And that is directly supported by credible expert testimony.

[00:26:52] Speaker 05:
And let's step back and look at where we are here.

[00:26:54] Speaker 05:
The standard of review of those factual findings is clear error.

[00:26:58] Speaker 05:
And when you have sole competing evidence from an expert on ATC's side who the district court found is not credible,

[00:27:10] Speaker 05:
Presidio's position is that is impossible to show clear error in that situation, because there's no counteracting.

[00:27:17] Speaker 02:
Okay, I understand, but I'm just trying to figure out what your witness testified to.

[00:27:21] Speaker 02:
He did testify that insertion loss testing was well known.

[00:27:24] Speaker 02:
He testified that even though there wasn't an industry standard for it, it was well known how to do it.

[00:27:30] Speaker 02:
But then he said to apply that to determine the fringe effect required me to develop a new methodology, right?

[00:27:41] Speaker 05:
No.

[00:27:42] Speaker 05:
At 1507 and 1509, and 1010 through 1012, one of the examples Judge Moore just gave was 1011.

[00:27:52] Speaker 05:
Dr. Huebner testified at length that a person of skill in the art already knows that insertion loss measurements are used

[00:28:00] Speaker 02:
to measure the impact of... You're not responding to my question.

[00:28:03] Speaker 02:
He testified that people knew how to do insertion loss testing, but he did say I had to figure out how to use that methodology to figure out the fringe effect, and that that required me to develop a new methodology.

[00:28:19] Speaker 05:
Respectfully, Your Honor, Dr. Huebert testified that a person of skill in the art knows how to isolate these discrete capacitances, such as fringe effect capacitance.

[00:28:29] Speaker 05:
and use insertion loss measurements to determine their impact.

[00:28:33] Speaker 05:
So a person of ordinary skill in New York already knows how to evaluate.

[00:28:38] Speaker 01:
Am I remembering correctly that the methodology is basically you have a bunch of capacitors in this multi-layer thing.

[00:28:47] Speaker 01:
You kind of knock each one out.

[00:28:49] Speaker 01:
And once you've knocked each thing out by subtraction, that capacitance that remains is what's on the fringe of it.

[00:28:57] Speaker 05:
Well, I think that a person of ordinary skill in the art knows how to isolate discrete capacitances.

[00:29:04] Speaker 05:
And there's no dispute about that.

[00:29:06] Speaker 05:
Keith Anderson, third party witness, testified to that effect.

[00:29:10] Speaker 05:
Dr. Ulrich, ATC's own expert, testified that if you make a change to a capacitor, a person of skill in the art can understand that that change causes a change in the insertion loss measurements.

[00:29:22] Speaker 05:
So there's no dispute here.

[00:29:24] Speaker 05:
I apologize.

[00:29:25] Speaker 05:
I am completely over my time.

[00:29:27] Speaker 05:
I'd like to reserve a few minutes for my cross appeal if possible, but I understand I'm out of time.

[00:29:34] Speaker 02:
We can still answer the question.

[00:29:37] Speaker 05:
Your Honor, I believe I have.

[00:29:38] Speaker 05:
Your question is whether Dr. Kuebner testified whether a person of ordinary skill in the art already knows without having to figure out how to isolate a discrete capacitance.

[00:29:50] Speaker 05:
And the testimony is

[00:29:51] Speaker 05:
Absolutely clear that person.

[00:29:53] Speaker 02:
And then he said that he had to develop a test.

[00:29:56] Speaker 02:
And he said, I could do that because, quickly or whatever, because I'm above the level of ordinary skill in the art.

[00:30:08] Speaker 02:
And then he talks about that it would take six months for someone of skill in the art to do it.

[00:30:16] Speaker 02:
Let's assume that that's his testimony.

[00:30:18] Speaker 02:
I know you don't agree with that.

[00:30:19] Speaker 02:
But let's assume that he testified

[00:30:21] Speaker 02:
that it would take someone skilled in the arts six months to a year to develop the methodology.

[00:30:27] Speaker 02:
Is that sufficient under Nautilus?

[00:30:30] Speaker 05:
Assuming that to be the case, and I completely disagree with that assessment.

[00:30:34] Speaker 03:
OK.

[00:30:34] Speaker 05:
But assuming that's the case, it is absolutely enough, because it provides reasonable certainty to a person of ordinary skill in the art about the scope of the invention.

[00:30:44] Speaker 02:
It is the impact on instruction.

[00:30:45] Speaker 02:
Suppose it took a couple of years to develop a methodology.

[00:30:47] Speaker 02:
Would that make it not indefinite?

[00:30:50] Speaker 05:
If it provides reasonable certainty to a person of skill in New York, there is no timeline where it has to provide this information.

[00:30:58] Speaker 05:
And again, I disagree with the assessment when I make that comment.

[00:31:03] Speaker 02:
OK.

[00:31:03] Speaker 02:
Well, we'll give you two minutes for your cross appeal.

[00:31:06] Speaker 05:
Thank you very much.

[00:31:06] Speaker 05:
I do appreciate that.

[00:31:07] Speaker 05:
I know I'm out of time.

[00:31:08] Speaker 05:
The district court's decision regarding intervening rights should be reversed.

[00:31:13] Speaker 05:
And here's why.

[00:31:14] Speaker 05:
The addition of the phrase, by measurement to the claims,

[00:31:18] Speaker 05:
is not the change in claim scope.

[00:31:21] Speaker 05:
That change did nothing more than exclude theoretical fringe effect capacitance from the scope of the claims.

[00:31:30] Speaker 01:
Certainly the by measurement language is different from the language that was in the ultimate claim construction that Judge Gonzalez had.

[00:31:40] Speaker 01:
Why was that not a substantive difference in the sense that

[00:31:46] Speaker 01:
By your own evidence in the first case, there was a basis for finding coverage that would not qualify under the new claim, even if it's a very small difference.

[00:31:59] Speaker 05:
Sure.

[00:31:59] Speaker 05:
So that's because there were no special interrogatories presented during the first trial.

[00:32:05] Speaker 05:
To speculate about why the jury found infringement in the first trial is just that.

[00:32:11] Speaker 05:
It's speculation.

[00:32:12] Speaker 02:
Well, but at the first trial, the evidence that you put on was the theoretical measurement.

[00:32:17] Speaker 02:
And the other side argued that that wasn't sufficient evidence.

[00:32:21] Speaker 02:
And Judge Gonzales said, yes, that's sufficient evidence to show infringement, correct?

[00:32:26] Speaker 05:
And again, I disagree with that because also presented at trial were the insertion loss measurements of the accused part, the 545 compensator.

[00:32:35] Speaker 02:
No, but is it not the case?

[00:32:38] Speaker 02:
that you presented evidence at the first trial of theoretical measurement as showing infringement.

[00:32:46] Speaker 02:
Is that not the case?

[00:32:47] Speaker 02:
That was part of the evidence that was presented as background to why the 5-4... Okay, and is it not true that Judge Gonzales said that that evidence was sufficient to show infringement, that theoretical measurement?

[00:33:00] Speaker 05:
The district court found that there was sufficient evidence presented at trial... Well, specifically discussing the theoretical measurement,

[00:33:08] Speaker 05:
I respectfully disagree.

[00:33:10] Speaker 05:
The district court cited that the evidence presented at trial was that the 545L was an infringement.

[00:33:22] Speaker 05:
There was evidence that the 545L had very low insertion loss, and Dr. Huebner testified to that.

[00:33:29] Speaker 05:
Now, the district court did say there's sufficient evidence on the record and did cite to Dr. Huebner's testimony

[00:33:37] Speaker 05:
that the fringe effect capacitance is present.

[00:33:42] Speaker 05:
But Dr. Huebner never testified that it's theoretically present.

[00:33:46] Speaker 05:
Dr. Huebner testified that it has an impact on the performance of that part.

[00:33:52] Speaker 02:
But he testified as to the results of the theoretical measurement, right, the formula.

[00:33:56] Speaker 05:
That was one of the things he testified to.

[00:33:58] Speaker 02:
And Judge Gonzales said that that evidence shows infringement.

[00:34:03] Speaker 05:
I think Judge Gonzales said that that is sufficient evidence.

[00:34:07] Speaker 05:
I don't think when she makes that decision, she is stating the claim scope of the claims.

[00:34:13] Speaker 05:
Rather, when Judge Gonzales acknowledges ATC's argument that fringe effect capacitance always exists in theory and therefore can always be calculated and then rejects that argument because that theoretical fringe effect capacitance does not make it determinable as required by the claims, that's indicative

[00:34:37] Speaker 05:
that theoretical fringe effect capacitance was always excluded.

[00:34:41] Speaker 05:
I would also consider or have the panel consider that when reviewing the unamended claims, of course we need to evaluate this in terms of the specification.

[00:34:57] Speaker 05:
The specification recites and all the parties agree that the prior art includes theoretical fringe effect capacitance.

[00:35:06] Speaker 05:
The first time, the first time that the specification talks about the claim for fringe effect capacitance is in the context of figure 10 where it says this, quote, illustrates an alternative device that embellishes the capacitor network described in the theory of operation

[00:35:28] Speaker 05:
of the device of Figure 9.

[00:35:30] Speaker 01:
I'm not sure that it is even theoretically enough to say that the mere use of a theoretical equation distinguishes the two situations.

[00:35:44] Speaker 01:
The question is, what kind of measurement technique might or might not have been covered by the pre-amended claim

[00:35:55] Speaker 01:
that isn't covered by the amended claim.

[00:35:57] Speaker 01:
And lots of measurement techniques use equations in getting to an ultimate measurement.

[00:36:03] Speaker 01:
So the use of an equation all by itself, I don't see why that makes, in fact, a substantive difference.

[00:36:09] Speaker 01:
But wasn't there, in fact, different evidence that Dr. Hugner put on and that Judge Gonzalez found sufficient in the first case, the pre-amended claim, that would not now qualify?

[00:36:25] Speaker 05:
Well, a part of Dr. Huebner's evidence during the first trial was the calculation.

[00:36:33] Speaker 05:
Yes.

[00:36:34] Speaker 05:
But he also presented evidence, and ATC's own documents showed the insertion loss measurements of the 545L, exact the measurements that Dr. Huebner is undertaking in this present case.

[00:36:48] Speaker 02:
But he hadn't developed the methodology to be presented in the second case at the time of the first case.

[00:36:56] Speaker 05:
Insertion loss measurements were always no no no I understand that but as a as a technique for determining the fringe effect He hadn't developed that at the time of the first trial I would suggest that the insertion loss measurements on the 545 L were already part of the case So there was no need to do so I'm and I apologize.

[00:37:18] Speaker 02:
I am way over time There was no need to do so so he hadn't done it yet

[00:37:23] Speaker 02:
There was no need to do so because he had not just the question is, had he done it?

[00:37:28] Speaker 02:
He hadn't done it yet, right?

[00:37:33] Speaker 05:
He hadn't.

[00:37:33] Speaker 05:
He did not undertake his own insertion loss measurements on the 545L because it was already part of the record.

[00:37:40] Speaker 01:
But what to do with these insertion loss measurements?

[00:37:44] Speaker 01:
He has a bunch of insertion loss measurements and he decides to use this one at this stage and this one at this stage and you know it's a 17-step process.

[00:37:53] Speaker 01:
Call that the entire methodology.

[00:37:56] Speaker 01:
That sequence of steps to get to the measurement in this case was not a sequence that he had developed and put together and used in the first case.

[00:38:06] Speaker 01:
I agree.

[00:38:07] Speaker 01:
Yes.

[00:38:08] Speaker 02:
Okay.

[00:38:09] Speaker 05:
Thank you.

[00:38:09] Speaker 05:
Thank you very much for your extended time.

[00:38:13] Speaker 02:
Mr. Cahill.

[00:38:22] Speaker 04:
Thank you.

[00:38:23] Speaker 04:
And thank you for your patience, Judge Moore.

[00:38:26] Speaker 04:
We refer to the six months or a year at least at page 30 of the yellow brief.

[00:38:32] Speaker 00:
And it does say there we were- Of the yellow brief, the reply brief.

[00:38:35] Speaker 00:
So in your argument to this court, you don't make the argument that Judge Dyke makes?

[00:38:41] Speaker 04:
We cited that- I don't make arguments.

[00:38:44] Speaker 04:
I ask questions.

[00:38:46] Speaker 00:
I think that's a matter of interpretation.

[00:38:48] Speaker 00:
Go ahead.

[00:38:49] Speaker 04:
We cited to it many, many times, but I don't think we actually said it's six months or a year until the yellow brief.

[00:38:57] Speaker 00:
OK.

[00:38:57] Speaker 00:
Nowhere in your blue brief, yes.

[00:38:59] Speaker 04:
Excuse me?

[00:38:59] Speaker 00:
It's nowhere in your blue brief, correct?

[00:39:01] Speaker 04:
I haven't been able to find it in the blue brief.

[00:39:03] Speaker 01:
Since my mind, at least, is on this intervening rights issue since we just talked about it, can you explain what you think was held to be and properly covered in the pre-amended claim that's now outside the amended claim?

[00:39:25] Speaker 04:
That would be a calculation of a capacitance between the two end-to-end conductors.

[00:39:34] Speaker 01:
So in that's now that's what Dr. Huebner did here.

[00:39:39] Speaker 01:
He calculated a capacitance in the end and capacitance didn't know he did not calculate it.

[00:39:47] Speaker 04:
No he didn't.

[00:39:48] Speaker 01:
Did he show that a calculation is possible.

[00:39:51] Speaker 04:
He said it was possible, he never did one.

[00:39:53] Speaker 01:
Okay, but the claim doesn't require a number, right?

[00:39:56] Speaker 01:
It just shows that it doesn't say measured at, I don't know, 0.1 farads or something.

[00:40:03] Speaker 04:
It has to be determinable by measurement.

[00:40:05] Speaker 01:
Right, so there was no reason to calculate it.

[00:40:07] Speaker 01:
So what is it that was covered by the pre-amended claim that is now not covered?

[00:40:15] Speaker 04:
Well, it is the proof from Presidio 1.

[00:40:18] Speaker 04:
where you look at the capacitor, you pull all of its various dimensions, you plug those dimensions in the dielectric constant into a formula, and you calculate a capacitance.

[00:40:30] Speaker 04:
That's the sufficient proof, the substantial evidence that supported the jury verdict in Presidio 1.

[00:40:37] Speaker 04:
That exact same argument was made to the Patent Office in reexamination with a piece of prior art that had all the right dimensions in it.

[00:40:46] Speaker 04:
And the Patent Office agreed, and Judge Huff agreed.

[00:40:48] Speaker 04:
that that anticipated the claim.

[00:40:51] Speaker 01:
Right, but if, look, here's my problem.

[00:40:55] Speaker 01:
If the following happened here, it seems to me you lose on intervening rights.

[00:40:58] Speaker 01:
If the following, and the following is, the PTO says, we do BRI, broadest reasonable interpretation, we don't do normal Phillips claim construction, so

[00:41:09] Speaker 01:
In this forum, it's not enough to do what you did in the district court.

[00:41:16] Speaker 01:
We're going to make you put it in the claim.

[00:41:18] Speaker 01:
In some sense, that's the whole purpose of BRI.

[00:41:21] Speaker 01:
If at the end of the day, the language put into the amended claim is absolutely nothing but the claim construction adopted in the district court by Phillips case,

[00:41:31] Speaker 01:
then their scope is the same, what came out of the patent office and what went into the patent office, even though the PTO along the way said, you don't survive on Phillips here.

[00:41:43] Speaker 01:
How is what came out of the PTO narrower than what went into the PTO?

[00:41:50] Speaker 01:
What's within the pre that is not in the post?

[00:41:54] Speaker 04:
Well, it's that calculation by measurement.

[00:41:56] Speaker 04:
And the examiner expressly considered the district court's construction.

[00:42:01] Speaker 04:
It is in the record at 2777.

[00:42:05] Speaker 01:
The examiner said something that might well be, well, we do BRI here, we don't do Phillips.

[00:42:13] Speaker 04:
He actually adopted, he actually looked at the claim construction from the district court that requires the fringe effect capacitance to be determinable.

[00:42:21] Speaker 04:
And he said, well, even if it's determinable, you can derive it using the calculation.

[00:42:26] Speaker 04:
Exactly what Judge Gonzalez found in the post trial motion.

[00:42:30] Speaker 02:
I'm a little confused.

[00:42:31] Speaker 02:
Help me here.

[00:42:32] Speaker 02:
As I understand it, the first trial, the evidence was that there was this theoretical formula and a calculation by the expert based on this theoretical formula, showing that there was a measurable fringe capacity.

[00:42:52] Speaker 02:
But my understanding now is that the patentee is not contending that that is within the scope of the claim, obviously, because that would create anticipation or obviousness problems, that there is agreement.

[00:43:07] Speaker 02:
Is there not at this stage that that theoretical measurement that was satisfactory in the first case wouldn't be within the scope of the claim now?

[00:43:16] Speaker 02:
We certainly agree with that.

[00:43:17] Speaker 02:
Well, don't they agree with it, too?

[00:43:21] Speaker 04:
I think I just heard.

[00:43:23] Speaker 04:
I don't know.

[00:43:26] Speaker 04:
I don't know.

[00:43:27] Speaker 02:
I don't know what they would agree to.

[00:43:31] Speaker 02:
So there were issues here of possible anticipation or obviousness, which if I understand correctly, and I may be wrong about this, but correct me, were dealt with by saying no to that kind of theoretical measurement, which

[00:43:46] Speaker 02:
pre-existed the patent here is not sufficient under the patent that you have to have an actual measurement using the kind of measurement that was developed by their expert, right?

[00:43:59] Speaker 02:
After amendment, that's exactly the case.

[00:44:03] Speaker 00:
Let me ask a slightly different question.

[00:44:05] Speaker 00:
which is during re-examination, not only this capable of being determined by measurement language was added, but also proximity was added.

[00:44:14] Speaker 00:
Prior to the amendment and re-exam, the claim used to say the first and the second contacts have to be located sufficiently close.

[00:44:23] Speaker 00:
After amendment, it expressly says they have to be in an edge-to-edge relationship.

[00:44:27] Speaker 00:
I can't figure out why, for the life of me, that argument wasn't made, because wouldn't that create immediately, unquestionably,

[00:44:34] Speaker 00:
a change in proximity and therefore could solve your entire intervening rights problem.

[00:44:39] Speaker 00:
And we wouldn't be having this complicated discussion about what happened in the first district court, what happened in the PTO, whether the constructions were the same.

[00:44:47] Speaker 00:
Why did you not make this argument?

[00:44:50] Speaker 00:
What am I missing?

[00:44:51] Speaker 00:
Why doesn't this actually cause you to win on this issue easily, and yet you didn't make it?

[00:44:56] Speaker 00:
So what am I missing?

[00:44:58] Speaker 04:
When Presidio amended the claim, they amended the claim to adopt the claim construction.

[00:45:04] Speaker 04:
from Judge Gonzalez, which was also adopted by Judge Huff.

[00:45:09] Speaker 04:
And it included that language.

[00:45:12] Speaker 04:
So they amended in the district court claim construction.

[00:45:15] Speaker 00:
So the first district court required them to be in an edge-to-edge relationship, even though the claim itself only says they have to be located sufficiently close?

[00:45:24] Speaker 04:
That is correct.

[00:45:27] Speaker 04:
So the words that were different, the words that were not part of the claim construction before, were by measurement.

[00:45:35] Speaker 04:
And that's why we focused on that.

[00:45:40] Speaker 02:
Okay, anything else?

[00:45:45] Speaker 02:
Mr. Chancellor will give you one minute on the cross-exam.

[00:45:56] Speaker 05:
Thank you very much.

[00:45:57] Speaker 02:
Could I be clear that you do not now contend that the claim scope here would cover the kind of theoretical measurements that were presented as evidence in the first trial, right?

[00:46:11] Speaker 05:
Correct.

[00:46:11] Speaker 05:
And specifically, it never included that claim language.

[00:46:14] Speaker 05:
That's right.

[00:46:15] Speaker 05:
And that's really spelled out by the specification itself, where there is a signal to a personal skill in the

[00:46:23] Speaker 05:
where the prior art is disclosed as having theoretical fringe effect capacitance.

[00:46:29] Speaker 05:
There is no dispute between the parties that the prior art disclosed in the patent discloses theoretical fringe effect capacitance.

[00:46:37] Speaker 05:
And then there's a transition in connection with figure 10A where it distinguishes that theoretical fringe effect capacitance, that theory of operation

[00:46:51] Speaker 05:
to an impact on insertion loss measurements.

[00:46:55] Speaker 05:
So to a person of skill in the art there is a direct signal that what is in the prior art is theoretical fringe effect capacitance and the claimed invention is not that.

[00:47:07] Speaker 05:
And keep in mind that ATC in this case repeatedly relied upon the fact that theoretical fringe effect capacitance is not in the unamended claims.

[00:47:20] Speaker 05:
This is ATC arguments.

[00:47:22] Speaker 05:
Quote, Judge Gonzales squarely held that even if fringe effect capacitance is always present between the contacts of the multilayer capacitor, it does not necessarily mean that the capacitor has fringe effect capacitance that is, quote, determinable as required by the court's claim construction.

[00:47:44] Speaker 05:
What were you just reading?

[00:47:45] Speaker 05:
That was ATC's argument against summary judgment of infringement.

[00:47:52] Speaker 05:
Here?

[00:47:52] Speaker 05:
I'm sorry?

[00:47:53] Speaker 05:
Here or there?

[00:47:54] Speaker 01:
In this present case.

[00:47:55] Speaker 01:
Right, and that was essentially a quote from the post trial ruling that's at appendix 5334, that Judge Gonzales' post trial ruling rejecting

[00:48:06] Speaker 01:
I mean, upholding the rejection of the anticipation defense.

[00:48:10] Speaker 05:
Yes, that is ATC characterizing Judge Gonzalez's decision.

[00:48:13] Speaker 01:
It's practically a quote.

[00:48:14] Speaker 05:
It's right there.

[00:48:15] Speaker 05:
It is.

[00:48:15] Speaker 05:
And it's at appendix 5592.

[00:48:17] Speaker 05:
And they make a similar argument, I apologize, at 5593.

[00:48:22] Speaker 05:
Quote, indeed, if it did mean that Judge Gonzalez would clearly have held the 356 patent invalid as anticipated by the prior art.

[00:48:33] Speaker 05:
This is ATC.

[00:48:34] Speaker 05:
characterizing and relying upon Judge Gonzales' decision in doing so in the present case as not including theoretical friendship and capacitance.

[00:48:45] Speaker 02:
Okay, I think we're out of time.

[00:48:46] Speaker 02:
Thank you very much.

[00:48:47] Speaker 02:
Thank you.

[00:48:47] Speaker 02:
Thank you, Mr. Schaffer.

[00:48:49] Speaker 02:
I thank both counsels.

[00:48:49] Speaker 02:
The case is submitted.