[00:00:01] Speaker ?:
Thank you.

[00:01:08] Speaker 02:
This case is number 16, 2285.

[00:01:10] Speaker 02:
TFB eliminated against Tremorano.

[00:01:15] Speaker 02:
Mr. Buck.

[00:01:16] Speaker 00:
May it please the court.

[00:01:18] Speaker 00:
There's certain guiding principles that should have governed the claim construction in this case.

[00:01:24] Speaker 00:
One, that there's a secondary opening, which distinguished over the prior art.

[00:01:29] Speaker 00:
Two, that a formed curl slides off the elongate member or free end.

[00:01:34] Speaker 00:
And three, that in the process, there's no obstruction or force that

[00:01:38] Speaker 00:
causes the curl to unwind.

[00:01:41] Speaker 00:
And what that all came to was that the point of that was to distinguish over prior art curling devices, or curlers, just standard curlers that have been used for decades and decades.

[00:01:52] Speaker 00:
And the first issue I'd like to address, which the board got wrong, frankly, is the whole issue of the definition, the IE issue.

[00:02:04] Speaker 00:
If you take a look at the element,

[00:02:08] Speaker 00:
which begins, the length of hair may pass out of the chamber.

[00:02:12] Speaker 00:
That phrase was specifically defined in the specification in column six.

[00:02:20] Speaker 00:
And, you know, I do want to point out that those guiding principles that I just mentioned are in the summary of the invention and are themselves definitional.

[00:02:28] Speaker 00:
In addition to that, in column six, right, we have another definition, which is the IE phrase.

[00:02:34] Speaker 00:
Now, the IE phrase, this Court has found

[00:02:36] Speaker 00:
in various cases, in Edwards, Abbott, SkinMedica, that IE, the, the, the text that follows an IE in the specification is definitional.

[00:02:48] Speaker 00:
And that's exactly what we have here.

[00:02:49] Speaker 00:
And the board rejected that improperly.

[00:02:53] Speaker 00:
So if you take a look at, at, at actually what is said after that IE in column six,

[00:03:00] Speaker 00:
It says that the length of hair slides along the elongate member 20 towards and subsequently off its free end.

[00:03:07] Speaker 00:
There's really no dispute that the board does not contend that there would still be anticipation if that claim construction were accepted.

[00:03:19] Speaker 00:
And so there is no, so if this court agrees with us, that that's definitional.

[00:03:25] Speaker 00:
not just because it follows the IE, but also because it's consistent with the summary of the invention.

[00:03:31] Speaker 00:
And if there's nothing inconsistent elsewhere in the patent, then there is no anticipation and the board has to be reversed.

[00:03:40] Speaker 00:
One point I want to make about that is that this court's law on the meaning of IE in the context of the specification

[00:03:51] Speaker 00:
really requires the court to look at context.

[00:03:53] Speaker 00:
And so some case law that's been cited against us is not inconsistent with this.

[00:03:59] Speaker 00:
So you look at the context and if there's some embodiments that are inconsistent with the text after the IE, then maybe you can look and decide that the IE is not definitional.

[00:04:10] Speaker 00:
But that's not the case here.

[00:04:11] Speaker 00:
Every embodiment is consistent.

[00:04:13] Speaker 00:
There's nothing inconsistent with the text that follows the IE in the specification.

[00:04:19] Speaker 00:
And so there really is no opposition or there's really no contention by my friend across the aisle here that if the court adopts that definition that there still is anticipation.

[00:04:33] Speaker 00:
And so that would require a reversal.

[00:04:39] Speaker 00:
The next issue, unless the court has any questions, there's three primary issues that at least I intended to cover.

[00:04:46] Speaker 00:
Unless the court has any questions about the

[00:04:49] Speaker 00:
I'll move on to the second.

[00:04:55] Speaker 00:
The second argument that I'd like to address is the definition of free end.

[00:05:01] Speaker 00:
What the board did, when I read that definition, it's almost as if the board was defining the term with respect to the prior art and not the patent itself.

[00:05:13] Speaker 00:
And what the board did is it included in the definition of free end

[00:05:19] Speaker 00:
the concept of a different element, which is the abutment, which is a separate element in and of itself.

[00:05:26] Speaker 00:
It also introduced the concept of the abutment being structural for the free end.

[00:05:32] Speaker 00:
That was also incorrect.

[00:05:34] Speaker 00:
A third error made by the board was that in looking at the definition, they really define the term with respect to one embodiment, and that is where the abutment is located at the free end.

[00:05:48] Speaker 00:
The patent and indeed the claim itself permits the abutment to be elsewhere in the device and not just at the free end, but the board's definition, at least the way I read it, requires it to be at the free end.

[00:06:03] Speaker 00:
So it's wrong on that basis.

[00:06:04] Speaker 00:
So there's three different errors that the board made in terms of defining free end.

[00:06:11] Speaker 00:
And so the way we defined it, which is consistent with the summary of the invention, the aims of the patent,

[00:06:18] Speaker 00:
is that the free end is devoid of any structure that would impede the translational release of the hare, which is consistent with the summary of the invention.

[00:06:31] Speaker 00:
And if the board accepts our definition, that's the second ground for finding no anticipation, because there's, that element would not be contained in either of the anticipatory references, the board did not maintain that, nor does Trey Milano.

[00:06:48] Speaker 00:
So that's a second independent basis for finding no anticipation.

[00:06:55] Speaker 00:
Unless there's any questions on that, I'll move on to my third issue.

[00:06:59] Speaker 00:
The third issue has to do with the element that has to do with the adjacency between the free end and the secondary opening.

[00:07:16] Speaker 00:
And what the board found was that in the prior art, as the curler in the prior art, and the prior art is about a curler that's actually inserted into a device, as the curler is being removed, that means that the length of hair is able to pass out of the chamber.

[00:07:41] Speaker 00:
We argued before the board that consistent with the summary of the invention,

[00:07:47] Speaker 00:
that the adjacency requirement of the claim requires that the free end and the secondary opening have to be adjacent at all times.

[00:07:58] Speaker 00:
As the entire length of hair is removed from the device, that adjacency has to be maintained.

[00:08:05] Speaker 00:
Because it just doesn't make sense in the context of this invention or the aims of the invention that once you move the curler slightly away,

[00:08:16] Speaker 00:
from the device that satisfies the element of the claim.

[00:08:21] Speaker 00:
And so this element is not contained in the prior art paths.

[00:08:27] Speaker 00:
And so that's a third independent reason for finding no anticipation.

[00:08:34] Speaker 00:
So unless there's any questions, I don't want to take up more time than I need to.

[00:08:41] Speaker 02:
Well, I think what impressed me about

[00:08:44] Speaker 02:
The argument in the situation is that the rejections were solely on the ground of anticipation.

[00:08:50] Speaker 02:
Yes.

[00:08:51] Speaker 02:
Is that right?

[00:08:51] Speaker 00:
Yes, that's right.

[00:08:52] Speaker 02:
And your argument, which you've just presented, was this element by element.

[00:08:58] Speaker 02:
And I say I saw a weight to your argument that the same device just didn't exist in the prior art.

[00:09:09] Speaker 02:
That's right.

[00:09:11] Speaker 02:
That is the overall thrust of

[00:09:14] Speaker 02:
of your position, is it not that whatever may or may not have been a valid ground for objection as far as anticipation was concerned, the requirements are rigorous?

[00:09:26] Speaker 00:
Yes, that's absolutely correct, Your Honor.

[00:09:30] Speaker 00:
And the thing is, I mean, if you look at this patent as a whole, read everything in context, it's very clear that this patent was intended to

[00:09:41] Speaker 00:
provided an advantage over the prior art of curlers.

[00:09:44] Speaker 00:
The fact that prior art curlers, even though it's incorporated into a device, was used to anticipate these claims is really, it really defeats the aim of the invention that's well documented in the patent.

[00:10:01] Speaker 02:
So, yes.

[00:10:08] Speaker 02:
Mr. Sheldon, I explained what's troubling me about this case.

[00:10:14] Speaker 02:
It would have been perhaps a bit more difficult if there had been an argument about obviousness.

[00:10:20] Speaker 02:
Doesn't the law of anticipation require that the same device in this case is shown with all of the elements in the same order?

[00:10:32] Speaker 03:
I understand that, Your Honor.

[00:10:36] Speaker 03:
The name of the game is the claims.

[00:10:41] Speaker 03:
The claims are broad, intentionally broad.

[00:10:44] Speaker 03:
The specification is intentionally broad.

[00:10:47] Speaker 03:
And in this case, the patentee, to try to capture everything possible, same analogy, claimed a fruit.

[00:10:58] Speaker 03:
And now they're complaining that, well, we didn't mean an apple, we only meant oranges.

[00:11:04] Speaker 03:
Every limitation of the claim is met.

[00:11:07] Speaker 03:
Before I respond to those arguments and respond to the question, there's been two recent developments we'd like the court to take notice of by judicial notice.

[00:11:17] Speaker 03:
And the reason they couldn't have been in our brief, because they just recently occurred by what TF3 has done in the patent office.

[00:11:25] Speaker 03:
And one of them is completely inconsistent with what they've argued to this court.

[00:11:30] Speaker 01:
Whenever it was, when did it occur?

[00:11:34] Speaker 03:
One was an amendment.

[00:11:36] Speaker 01:
Unless it occurred yesterday, if it's important, you could have presented it to us.

[00:11:41] Speaker 03:
We only learned about it this past week in reviewing the foul histories of related patents.

[00:11:48] Speaker 03:
And we checked with the court and said, this is the way to do it.

[00:11:53] Speaker 03:
And we provided these documents as soon as we became aware of them to opposing counsel.

[00:11:58] Speaker 03:
So I request the indulgence of the court.

[00:12:04] Speaker 03:
involves US publication 2015021727, part of this related family.

[00:12:14] Speaker 03:
Denebictus is the patentee, TF3 is the owner.

[00:12:18] Speaker 03:
And the court will notice one of the arguments they've made that the claims should be narrowly construed is you can't consider incorporation by reference of a document that was incorporated by reference, which the board in one instance

[00:12:34] Speaker 03:
did incorporate, used to incorporate by reference.

[00:12:38] Speaker 03:
Contrary to the argument to the court, contrary to the argument to the PTAB, TF3 has actually referred to that document as being incorporated by reference to overcome a prior art rejection in the patent office.

[00:12:53] Speaker 03:
So they're talking one way, one side of their mouth to the patent office in prosecution, another side of their mouth.

[00:13:00] Speaker 03:
So the whole argument that

[00:13:04] Speaker 03:
we only teach one version is inconsistent with what was incorporated by reference at prior publication.

[00:13:12] Speaker 03:
The whole argument to the court is inconsistent with what they're arguing to the Patent Office.

[00:13:17] Speaker 03:
I brought copies of that document if the court would consider it.

[00:13:21] Speaker 03:
So again, we have a completely different position with the Patent Office.

[00:13:28] Speaker 03:
So and candidly, we think the board, in the only one place they had clear error

[00:13:34] Speaker 03:
was when they refused to consider that with regard to whether you have a version which is currently shown in Figure 12 of that incorporated document on the basis that it didn't have a primary and secondary opening.

[00:13:47] Speaker 03:
The board got that wrong.

[00:13:49] Speaker 03:
Figure 12 is based on Figure 11.

[00:13:52] Speaker 03:
Figure 11 currently shows a primary and secondary opening.

[00:13:56] Speaker 03:
And the only difference between Figure 11 and Figure 12 is you can detach the elongate member.

[00:14:02] Speaker 03:
So that's, I think, important.

[00:14:04] Speaker 03:
The other document ties in with the basic broadest reasonable construction argument.

[00:14:11] Speaker 03:
And certainly, the board has a broad reasonable construction.

[00:14:17] Speaker 03:
And the reason for that is coming out of the patent office, a very, very rare case where this court will say the construction was too broad.

[00:14:28] Speaker 03:
The two cases, the three that were cited

[00:14:30] Speaker 03:
They both were clearly distinguishable in that the board construction was inconsistent with the claim language itself.

[00:14:37] Speaker 03:
That is not the case here.

[00:14:39] Speaker 03:
And one of the remedies that TF3, if they thought they should have had a narrower claim, rather than have the public and a small company on the West Coast get dragged to Connecticut for a lawsuit, is to go back to the patent office for reissue, reexamination, or continuation.

[00:14:54] Speaker 03:
And that brings me to the second patent, second document.

[00:14:58] Speaker 03:
U.S.

[00:14:58] Speaker 03:
Patent Nine.

[00:14:59] Speaker 03:
629-434, which issued April 25, 2 TF3, then a Bectis, part of the same family, claim one.

[00:15:08] Speaker 03:
It's substantially identical to claim one here.

[00:15:11] Speaker 03:
The only difference is they added the limitation, which is equivalent to what they're asking now, that the elongate member can't be detached.

[00:15:20] Speaker 03:
That's basically what they're saying.

[00:15:21] Speaker 03:
We want you to read the claim that the elongate member can't be detached.

[00:15:25] Speaker 03:
Well, they expressly did that in another pattern.

[00:15:28] Speaker 03:
So it's unfair to the public, unfair to our little client that T03 is trying to do what's very unusual, patently narrow the claim to catch, you know, to save validity.

[00:15:42] Speaker 03:
It should not, as a matter of public policy, in the broadest reasonable construction, and what the Supreme Court said in the Cuso case, it should not be allowed to do that.

[00:15:51] Speaker 03:
Now, let me respond to the argument.

[00:15:54] Speaker 03:
Seven cases were cited between the parties

[00:15:57] Speaker 03:
on what IE, is it definitional or not.

[00:16:00] Speaker 03:
Four of them went our way, not definitional.

[00:16:04] Speaker 03:
But that's a matter of context, not precedent.

[00:16:07] Speaker 03:
Exactly.

[00:16:08] Speaker 03:
But in a matter of context, the description of that embodiment was exemplary, that type of language was used throughout.

[00:16:19] Speaker 03:
The claim is the same way.

[00:16:21] Speaker 03:
The claim doesn't even require the hair to come out.

[00:16:24] Speaker 03:
The claim doesn't require even to curl hair.

[00:16:28] Speaker 03:
There's a lot of other options that that device can be used for that's in the specification.

[00:16:33] Speaker 03:
The entire specification, all the claims, everything is made, can, exemplary.

[00:16:38] Speaker 03:
This version, right at the beginning of the description of the drawings, exemplary, that very paragraph, that paragraph in column six, describes it.

[00:16:48] Speaker 03:
This embodiment, exemplary, to take one embodiment using broad language in the claims,

[00:16:54] Speaker 03:
and say, oh, we're going to add this limitation with words that aren't even in the specification.

[00:17:00] Speaker 03:
Where does translational appear?

[00:17:03] Speaker 03:
It's just not fair to the public, not fair to our client.

[00:17:06] Speaker 03:
TF3 can do what it did to a continuation, could have moved to amend.

[00:17:11] Speaker 03:
Why come up with a narrow definition when, let me go to the reasonable construction.

[00:17:17] Speaker 03:
Was it unreasonable for the board when you have four out of seven cases that we're aware of, i.e.,

[00:17:23] Speaker 03:
They went the other way.

[00:17:24] Speaker 03:
It's certainly a reasonable construction.

[00:17:28] Speaker 03:
And that's the point.

[00:17:29] Speaker 03:
Did the board make an unreasonable construction?

[00:17:33] Speaker 03:
Now, I want to respond to the argument that even if you accept that construction, there's no anticipation.

[00:17:40] Speaker 03:
We have never conceded that.

[00:17:42] Speaker 03:
Both experts have said, even if you use that definition of free end, there is still meat then.

[00:17:50] Speaker 03:
You can still get the hair off the end.

[00:17:54] Speaker 03:
of that elongate member without taking it out.

[00:17:58] Speaker 03:
I refer you to Mr. Nozenchuk's testimony.

[00:18:03] Speaker 03:
He's the TF3 expert at page 116, line 24, through page 117, line 7, at appendix 1047, where he's asked that.

[00:18:17] Speaker 03:
And we're talking about Hoshini, and we asked

[00:18:20] Speaker 03:
Why do you consider that a free end after the preliminary questions?

[00:18:24] Speaker 03:
Well, it certainly has a lot less obstruction and apparently no supporting device once this is assembled, unlike the other end.

[00:18:33] Speaker 03:
So we think that concedes even under the definition.

[00:18:36] Speaker 03:
And then our expert, Mr. Padoka, during his deposition at page 65, minus 4 to 7, and 18 to 21, says Gunaga and Hoshimi both have a free end.

[00:18:47] Speaker 03:
So the suggestion that

[00:18:50] Speaker 03:
that our client, Trey Milano, has conceded the issue is wrong.

[00:18:56] Speaker 03:
So whether you accept, and I think the board's construction is reasonable.

[00:19:02] Speaker 03:
Basically, the board said free end is an unsupported end in the open position.

[00:19:06] Speaker 03:
How can you disagree with that?

[00:19:08] Speaker 03:
You have a beam.

[00:19:09] Speaker 03:
You have one end, the other.

[00:19:11] Speaker 03:
The other end has to be supported.

[00:19:13] Speaker 03:
And to say nobody has anything to blame other than

[00:19:19] Speaker 03:
TF3 by having such, you know, difficult claim language and trying to argue that a difference between one end of a beam that's free and the other end of the beam is supported is certainly a reasonable construction.

[00:19:38] Speaker 03:
Anybody have any questions?

[00:19:41] Speaker 02:
Thank you, Mr. Sheldon.

[00:19:46] Speaker 03:
I have one more thing.

[00:19:48] Speaker 03:
The argument was made, the functional language is okay in a claim.

[00:19:54] Speaker 03:
Yes, it is.

[00:19:55] Speaker 03:
But in the two cases cited by, in the reply brief, by TF3, the Court says you do it at risk, you're willing to risk, because the prior art, when you claim function, can inherently have that function.

[00:20:13] Speaker 03:
And that's exactly the case here, both Hachini and

[00:20:17] Speaker 03:
have that function where hair comes out.

[00:20:20] Speaker 03:
And the argument that the hair has to come out while the elongate member is still in position is nowhere in the claims.

[00:20:29] Speaker 03:
In fact, the claims don't even require the hair to come out.

[00:20:33] Speaker 03:
It's basically, for prior counsel, I don't think they want it, but the argument of fairness certainly applies here, certainly applies in the Supreme Court's Cuso case.

[00:20:44] Speaker 03:
Fairness to the public.

[00:20:45] Speaker 03:
Draft your claims narrowly.

[00:20:47] Speaker 03:
which is exactly what the Supreme Court did, and don't make middle companies have to guess, oh, are you going to want a broad interpretation or a narrow interpretation?

[00:20:56] Speaker 02:
But you, as I recall, you raised no issue under 112.

[00:21:00] Speaker 02:
Is that right?

[00:21:01] Speaker 03:
Well, that's not correct.

[00:21:03] Speaker 03:
We said to the board that we find the claim difficult to construe.

[00:21:07] Speaker 03:
We'll accept your definition, but we're not waving our argument under 112, and we can't.

[00:21:13] Speaker 03:
In IPR, we do not have that option.

[00:21:15] Speaker 02:
Did the board decide that?

[00:21:16] Speaker 02:
The board decided only on anticipation, though.

[00:21:19] Speaker 02:
Is that correct?

[00:21:20] Speaker 03:
Our other grounds in our original petition were not accepted.

[00:21:24] Speaker 03:
We said it would be obvious.

[00:21:26] Speaker 03:
Anyway, even if it wasn't anticipatory, the board said we're only going to go on anticipation.

[00:21:31] Speaker 03:
It's not like we didn't say it was obvious.

[00:21:33] Speaker 03:
The board limited itself to anticipation.

[00:21:37] Speaker 03:
Does it make it obvious?

[00:21:38] Speaker 03:
Yes.

[00:21:38] Speaker 03:
In my view, the gee whiz is you can get the hair out

[00:21:41] Speaker 03:
a second opening.

[00:21:43] Speaker 03:
That's exactly what Inaga and Hoshini teach.

[00:21:46] Speaker 03:
But the board just took the easy way out, but limited it to anticipation.

[00:21:55] Speaker 02:
Thank you, Mr. Shelton.

[00:21:57] Speaker 02:
Thank you.

[00:21:59] Speaker 02:
Mr. Bradkin.

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

[00:22:00] Speaker 00:
Thank you, Your Honor.

[00:22:01] Speaker 00:
I just have a few points.

[00:22:02] Speaker 00:
I think the fact that Trey Milano comes up here and relies on a patent it issued in 2017 and an application it published in 2015 that are not in a record to make its lead argument, I think that illustrates the weakness of their position.

[00:22:22] Speaker 00:
Council mentioned that there was an application that was incorporated by reference, and that's true, but if you take a look at column two,

[00:22:30] Speaker 00:
of the patent where it describes the present invention summary of the invention actually distinguishes that.

[00:22:34] Speaker 00:
And the board recognized that, that while certain aspects of that application were incorporated by reference, it certainly wasn't with respect to the inventive aspect of these claims.

[00:22:46] Speaker 00:
And you can see that in column two right at the top of the page, lines one through about nine or so, where this invention was distinguished from that incorporated

[00:22:59] Speaker 00:
by reference application.

[00:23:03] Speaker 00:
Council also talked about how the cases on IE for the, I'm sorry, was there, were you, I'm sorry, okay.

[00:23:11] Speaker 00:
Council also talked about how the cases on IE being definitional, and I quote this, went our way.

[00:23:19] Speaker 00:
I think you mentioned it depends on the context.

[00:23:21] Speaker 00:
And, of course, it does depend on the context, right?

[00:23:23] Speaker 00:
And so if IE is used, and this is the body of case law of this Court.

[00:23:28] Speaker 00:
If you read all of the cases together, what you have to, I think, conclude is that IE is definitional.

[00:23:35] Speaker 00:
Unless there's disclosure in the patent, which is directly contrary to it.

[00:23:41] Speaker 00:
Here, everything in the patent is consistent with the language after the IE being definitional.

[00:23:47] Speaker 00:
And one thing I will point out about the Edwards cases, Edwards specifically found that even if that IE definitional phrase is used in connection with a specific embodiment, it's still definitional.

[00:24:03] Speaker 00:
And the thing I'd like to emphasize is every embodiment in that patent is consistent.

[00:24:09] Speaker 00:
And the way the hair flows off of the free end from the elongate member

[00:24:14] Speaker 00:
is the same feature in every embodiment.

[00:24:16] Speaker 00:
It's the only way hair is described as coming out of the instrument.

[00:24:22] Speaker 00:
So it's fully consistent and IE is definitional.

[00:24:31] Speaker 00:
Basically what the board did here was that they tried to read a non-curler patent, a 118 patent, on curler prior art.

[00:24:43] Speaker 00:
And that's just erroneous as a matter of law.

[00:24:46] Speaker 00:
And there is no anticipation.

[00:24:50] Speaker 02:
Thank you.

[00:24:51] Speaker 02:
Thank you both.

[00:24:52] Speaker 02:
The case is taken under submission.