[00:00:10] Speaker 02:
Next case for argument is 162122, TMC fuel injection systems versus Ford Motor Company.

[00:00:41] Speaker ?:
Fuck.

[00:01:22] Speaker 02:
Mr. Ward, whenever you're ready.

[00:01:28] Speaker 03:
Good morning, Your Honors.

[00:01:30] Speaker 03:
John Ward and David Lindemann, Kelly Dry and Warren for Appellant TMC.

[00:01:39] Speaker 03:
The inventor of the patent suit, the 414 patent, Dr. Sho Hau, led the team that invented the inkjet printer.

[00:01:48] Speaker 03:
And when he left industry, he started a consulting firm

[00:01:52] Speaker 03:
to take advantage of his expertise.

[00:01:53] Speaker 04:
Does stating that a system does not use pressure regulators mean that a system potentially could use pressure regulators?

[00:02:00] Speaker 03:
Absolutely, Your Honor.

[00:02:03] Speaker 03:
The claim language says that using this recirculation loop, the fuel return path, eliminates or minimizes the need for using the pressure regulator.

[00:02:17] Speaker 03:
And in fact, the eliminates language is only in claim 38.

[00:02:21] Speaker 03:
all the other claims.

[00:02:22] Speaker 04:
How about the invention does not use pressure regulators or pressure relief valves?

[00:02:28] Speaker 03:
That is the invention.

[00:02:31] Speaker 03:
There are five elements in each of the asserted claims.

[00:02:35] Speaker 03:
The first four were well known in the art.

[00:02:37] Speaker 03:
The fifth is the inventive element and that's the fuel return path.

[00:02:42] Speaker 03:
What Dr. Howe determined based on his experience with the inkjet printing was that by setting up a separate constant

[00:02:50] Speaker 03:
recirculation fuel path away from the pressure regulators in the fuel rail, you could stabilize pressure without having to rely on a pressure regulator.

[00:03:03] Speaker 03:
And so to say that pressure regulators are not needed, that is true.

[00:03:09] Speaker 03:
That is the point of the invention.

[00:03:11] Speaker 03:
But to say that pressure regulators should not or could not be used, that is certainly not what is ever intended by the inventor or what's clear from the

[00:03:21] Speaker 03:
specification or the prosecution history, or most particularly from the claims themselves, both asserted and unasserted.

[00:03:33] Speaker 03:
As I mentioned, the preamble notes that this last element, the inventive element, the fuel return path with flow constraint, minimizes or eliminates the need for a hot fuel return line

[00:03:50] Speaker 03:
and a low-pressure regulator.

[00:03:53] Speaker 03:
The disclaimer issue that brings us here today was first raised by Ford in claim construction.

[00:04:00] Speaker 03:
It was a non-infringement wolf dressed up as a claim construction sheep.

[00:04:06] Speaker 03:
Ford argued that there was a broad disclaimer of any use of pressure regulators anywhere in the system.

[00:04:15] Speaker 03:
That argument was rejected by the district court

[00:04:18] Speaker 03:
It is Markman order.

[00:04:19] Speaker 01:
Now the district court specifically said though, that during claim construction, he didn't consider the prosecution history, which is where all these repeated statements for the disclaimer are, right?

[00:04:32] Speaker 03:
Well, no, your honor.

[00:04:34] Speaker 03:
Actually, the court did say that, but both sides relied on statements from the prosecution history to support their various claim constructions.

[00:04:44] Speaker 01:
Well, I guess my thought is that the district court is allowed to change its mind.

[00:04:48] Speaker 01:
It's allowed to change its claim construction.

[00:04:50] Speaker 01:
That's certainly true.

[00:04:51] Speaker 01:
And if he says he didn't consider in doing the claim construction, I made a mistake, I didn't consider the prosecution history, and then later he does consider it and he changes his claim construction, that's not reversible error on appeal, right?

[00:05:05] Speaker 01:
No.

[00:05:06] Speaker 01:
So the only thing we're really looking at is whether there was an actual disclaimer here, whether his ultimate construction was correct.

[00:05:12] Speaker 03:
Well, that's true, Your Honor, but also I think it's reversible error because the court

[00:05:17] Speaker 03:
didn't rely on the holding of the board, that there was a limited disclaimer, the court instead, for reasons known only to the court, relied on dicta in the concurring opinion.

[00:05:32] Speaker 02:
Wait, you said that it was reversible error because the court did not rely on the board?

[00:05:38] Speaker 03:
The court's claimed that it relied on the board's expertise, but that isn't actually what happened, Your Honor.

[00:05:44] Speaker 02:
But is it reversible error for the court not to rely on the board in this instance?

[00:05:50] Speaker 03:
Well, I think that you get to review this de novo, so you'll make your call.

[00:05:57] Speaker 03:
But the decision of the board was that the claims were not invalid.

[00:06:04] Speaker 03:
The decision was that there was a limited, very limited disclaimer, and it only applied to the

[00:06:15] Speaker 03:
The flow constraint.

[00:06:16] Speaker 03:
TMC had asked for an interpretation of the term flow constraint and the board's decision, the two members of the panel decided there was a limited disclaimer in that the flow constraint in the last element of claims 38 and 40 could not be a pressure regulator.

[00:06:36] Speaker 02:
I'm not clear on this.

[00:06:39] Speaker 02:
How did the majority cabin its finding a prosecution disclaimer?

[00:06:43] Speaker 02:
it certainly had a term limitation that was disputed before it and that was about to applied it to the flow constraints flow constraints so that's what it had to decide because that was the specific limitation but they didn't they they found a broad disclaimer and then they said here's how it applies to this limitation what more did it do no the uh... majority opinion found a limited disclaimer what the

[00:07:13] Speaker 03:
Well, because that's what they were asked to do, right?

[00:07:17] Speaker 03:
They were asked to make a determination to construct the term flow constraint.

[00:07:23] Speaker 03:
Right.

[00:07:23] Speaker 03:
Correct.

[00:07:24] Speaker 03:
And they said, it's in 1872, we determine that there is an express disclaimer of pressure regulators and other forms of incremental regulation as a flow constraint for issue claims 38 and 40.

[00:07:42] Speaker 03:
In the concurring opinion,

[00:07:44] Speaker 03:
Judge McNamara went further.

[00:07:45] Speaker 03:
Judge McNamara looked at me and he says, the way I read it, I would hold a broad disclaimer against the use of any pressure regulators.

[00:07:54] Speaker 02:
But that wasn't the holding of the board.

[00:07:56] Speaker 02:
Yeah, but their holding wasn't inconsistent with that.

[00:07:58] Speaker 02:
They were deciding the case before it.

[00:08:01] Speaker 02:
I mean, if we have a case and we're asked to construe one singular thing and we do it, that doesn't prejudice or necessarily inform or certainly not control

[00:08:14] Speaker 02:
The question here.

[00:08:15] Speaker 03:
Well, TMC was prejudiced, Your Honor, because in the initiation, in the institution decision, this disclaimer issue had been raised by Ford in his petition.

[00:08:27] Speaker 03:
And it was rejected.

[00:08:29] Speaker 02:
So it wasn't before the board.

[00:08:31] Speaker 02:
It was rejected.

[00:08:32] Speaker 02:
This is an IPR, right?

[00:08:33] Speaker 02:
So it wasn't rejected.

[00:08:35] Speaker 02:
It just wasn't instituted.

[00:08:36] Speaker 02:
It was not instituted.

[00:08:38] Speaker 03:
Correct.

[00:08:38] Speaker 03:
So when it was touched upon at the hearing,

[00:08:43] Speaker 03:
And when the board then conducted a completely new analysis and came up with its conclusions in its final decision, that was improper, Your Honor, because it did not allow, first of all, they weren't asked to do this.

[00:08:59] Speaker 03:
Because they were asked to construe.

[00:09:01] Speaker 04:
Well, the concurring opinion, in addition to concurring, is responding to new arguments that you raised during the oral hearing.

[00:09:11] Speaker 04:
Isn't that correct?

[00:09:12] Speaker 03:
Well, that's how the concurring opinion put it.

[00:09:16] Speaker 03:
But none of those arguments had to do with a disclaimer at all, because the disclaimer wasn't an issue pending before the panel at that time.

[00:09:24] Speaker 03:
It was only after the fact that this became an issue.

[00:09:27] Speaker 02:
Well, so that's just kind of the point our panel was making here, which is what relevance is what the board did, given that it wasn't an issue before the board.

[00:09:36] Speaker 02:
I think that's how we started this discussion.

[00:09:39] Speaker 03:
What became the real issue, and you're right, that is how we started.

[00:09:43] Speaker 03:
We've kind of gone in a circle.

[00:09:45] Speaker 03:
The real problem is when the case will go back to the district court, the district court relies on the concurring opinion and finds that it feels that it is compelled to follow this broad disclaimer.

[00:10:02] Speaker 02:
We have a lot of cases this past week, so maybe I'm getting this confused with the other.

[00:10:06] Speaker 02:
Didn't the district court make its own assessment of the prosecution history?

[00:10:11] Speaker 03:
So it said, Your Honor, yes.

[00:10:12] Speaker 02:
Yeah.

[00:10:12] Speaker 02:
So it didn't have two sentences.

[00:10:14] Speaker 02:
I'm relying on the concurrent, so I don't have to do our own analysis.

[00:10:18] Speaker 02:
It certainly made.

[00:10:19] Speaker 02:
We're reviewing the court's analysis.

[00:10:22] Speaker 02:
Forget its reliance.

[00:10:23] Speaker 02:
You're saying it felt compelled that it thought that was binding precedent, and it couldn't deviate from that.

[00:10:31] Speaker 02:
It did its analysis.

[00:10:32] Speaker 02:
That's what we're reviewing.

[00:10:33] Speaker 02:
Why was its analysis incorrect?

[00:10:35] Speaker 03:
Because in the decision, Your Honor, the court says that it feels that it's instructed under precedent to follow the guidance of the board because it has particular expertise.

[00:10:49] Speaker 03:
And then it goes on to say that we agree.

[00:10:52] Speaker 03:
I think it would be the opinion at page four

[00:11:00] Speaker 03:
So that would be either at the back of our initial brief, or I think it's maybe 44 or somewhere around that in the joint appendix.

[00:11:10] Speaker 03:
It's only a five page decision.

[00:11:13] Speaker 01:
What particular language are you relying on?

[00:11:17] Speaker 03:
I should have it in front of me, but I don't.

[00:11:19] Speaker 03:
A particular language that I was concerned about, Your Honor, is that after saying that it should give deference to the board's decision,

[00:11:29] Speaker 03:
The court then said, we agree with the board that pressure regulators should not be or cannot be used in the system.

[00:11:40] Speaker 01:
And then they also say the PTAB found the 414 patents prosecution states and expressed disclaimer of pressure regulators and incremental regulation means of any type.

[00:11:50] Speaker 03:
And that's what the concurring opinion said.

[00:11:54] Speaker 03:
And there may be some language.

[00:11:56] Speaker 01:
There is some language at 1872 talking about, it's in the paragraph, right underneath the paragraph you cited to us earlier, it talks about means of any type.

[00:12:06] Speaker 01:
Eliminating pressure regulators and incremental regulation means of any type from the system.

[00:12:11] Speaker 03:
Yeah, and the problem, Your Honor, is using the term from the system, because it's clear from the decision that that isn't what they did.

[00:12:20] Speaker 03:
They eliminated pressure regulators or incremental regulation of any means from

[00:12:25] Speaker 03:
the flow return path.

[00:12:30] Speaker 02:
And that was clear from... Okay, but can we... I see what you're citing on Appendix 4, but that on Appendix 5, the district court is explaining its claim construction, and it says quite clearly that it reached this conclusion, its prior conclusion, by examining only the words of the claims on the specification.

[00:12:49] Speaker 02:
The court did not consider the prosecution history.

[00:12:52] Speaker 02:
and they amend their construction based on the prosecution history yes that's right so leaving aside the board here because i'm not sure where that gets us i agree with your comment a few minutes ago that's kind of circular why why is to the court here in its years are you saying it misconstrued the prosecution history that's your argument i'm saying that's the board was initially correct in

[00:13:18] Speaker 03:
putting its primary focus on the claims and the specifications.

[00:13:22] Speaker 02:
There's no error in looking at and considering and even relying if it's probative on the prosecution history.

[00:13:30] Speaker 02:
So your argument must be that the prosecution history was not probative or that the court misconstrued it.

[00:13:37] Speaker 03:
Yes, our argument is that the prosecution history was at best ambiguous and also that the unasserted claims that should have been reviewed were not.

[00:13:47] Speaker 03:
by neither the board, nor by the concurring opinion, nor by the court.

[00:13:53] Speaker 03:
You're into your rebuttal.

[00:13:54] Speaker 03:
Thank you.

[00:13:54] Speaker 02:
We'll reserve the remaining director.

[00:13:57] Speaker 02:
Thank you.

[00:14:11] Speaker 00:
Good morning, Your Honors.

[00:14:12] Speaker 00:
Eugene Sokoloff for Ford Motor Company.

[00:14:14] Speaker 00:
May it please the court?

[00:14:15] Speaker 00:
Ford was entitled to summary judgment and not infringement in this case for a very simple reason.

[00:14:21] Speaker 00:
TMC's pretrial memorandum alleged that every accused vehicle included, quote, a pressure regulator.

[00:14:26] Speaker 00:
And in TMC's appeal brief to BTAP, appealing rejection of claims 38 and 40, it argued that its system, quote, eliminated pressure regulators and incremental regulation means of any type from the system.

[00:14:39] Speaker 00:
That's the appendix 502.

[00:14:40] Speaker 00:
And that's the language that my friend on the other side keeps attributing to the concurrence.

[00:14:44] Speaker 00:
That was TMC's language in the prosecution.

[00:14:48] Speaker 00:
And it was also cited in the unanimous opinion by the panel, the PTAB panel, where it said that even under the broadest- Oh, I asked, that's how I started my questioning.

[00:14:57] Speaker 04:
And your friend on the other side said, well, yes, but only in the flow path.

[00:15:03] Speaker 00:
Your honor, I think there's no basis for that in the decision.

[00:15:06] Speaker 00:
I think as the questions to the Apple were tending,

[00:15:12] Speaker 00:
That is where the issue came up.

[00:15:14] Speaker 00:
But if you look at the conclusion here, the PTAB says that even under the broadest reasonable interpretation, that is to say that even giving as much scope and wiggle room as possible.

[00:15:24] Speaker 00:
What pager do you want?

[00:15:25] Speaker 00:
I'm looking at Appendix 1875.

[00:15:27] Speaker 00:
Thank you.

[00:15:29] Speaker 00:
We conclude that the prosecution history states an express disclaimer of pressure regulators and incremental regulation means of any type from the system.

[00:15:38] Speaker 00:
And the last part of that, of course, again, is quoting TMC's own language in its brief to the PTAB.

[00:15:43] Speaker 00:
And that's not the only time that the PTAB referred to this means of any type from the system.

[00:15:50] Speaker 00:
Each of the times that it used that disclaimer against the prior arts afforded cited in its petition, it used the same formulation.

[00:15:56] Speaker 00:
So in 1882, in distinguishing Tukey, it says the disclaimer is a regulation means of any type from the system.

[00:16:03] Speaker 00:
It says the same thing in 1884, distinguishing Ford, in 1893, distinguishing Tukey and Coleman.

[00:16:08] Speaker 00:
So to say that this is something that the concurrence promoted on its own, Your Honor, I respectfully say there's just no basis for that.

[00:16:15] Speaker 01:
And this disclaimer was relied upon by the board in order to be able to say that the prior art didn't meet the claims.

[00:16:21] Speaker 00:
That's right, Your Honor.

[00:16:22] Speaker 00:
It was relied on by the board, and crucially, it was relied on in the initial allowance of these claims.

[00:16:27] Speaker 00:
I mean, just look at the history here.

[00:16:29] Speaker 00:
The final rejection of these claims comes through, and TMC proposes an amendment

[00:16:34] Speaker 00:
that introduces this minimize or eliminate language.

[00:16:36] Speaker 00:
The language that they count on now is being ambiguous enough to embrace their construction.

[00:16:41] Speaker 00:
The examiner did not allow that amendment because it did not place the claims in condition for allowance.

[00:16:47] Speaker 00:
That's at page 377 in the appendix.

[00:16:51] Speaker 00:
This was an invention that entered what the examiner called a field that was very crowded with pressure regulation means of various types.

[00:16:57] Speaker 00:
That's at 291 in the appendix.

[00:16:59] Speaker 00:
And so the only way the TMC could distinguish itself was by saying,

[00:17:02] Speaker 00:
We don't do that.

[00:17:03] Speaker 00:
And they said that again and again, looking at the prior art.

[00:17:08] Speaker 00:
With a very broad brush, not even talking about specific references in the prior art, TMC said, every device cited has at least one pressure regulator.

[00:17:16] Speaker 00:
That's at 534 in the appendix.

[00:17:18] Speaker 00:
They said that the prior art was, quote, not relevant.

[00:17:21] Speaker 00:
It's at 533, because all in prior art contain pressure regulators.

[00:17:24] Speaker 00:
Appendix 423, quote, it cannot be used against TMC's claims, this prior art, because it contains pressure regulators.

[00:17:31] Speaker 00:
That doesn't make any distinction about between the role that pressure regulators play in the systems, what kind of a regulator it is, anything else.

[00:17:38] Speaker 00:
It just says you can't even look at this prior art because it all has the same fatal flaw.

[00:17:43] Speaker 00:
It has a pressure regulator, and our system is different.

[00:17:45] Speaker 00:
What's truly revolutionary, TMC said about our system, is that it, quote, does not adjust pressure at a precise location.

[00:17:54] Speaker 00:
That's at page 534.

[00:17:55] Speaker 00:
It doesn't use any pressure regulator or pressure regulating element.

[00:18:00] Speaker 00:
It's at page 548.

[00:18:01] Speaker 00:
This court's cases say time and again that when that kind of clear disclaimer comes through in the give and take with the Patent Office, what the patentee is telling the public and the reasonable competitor is that their invention does not cover something.

[00:18:15] Speaker 00:
It's telling the world what their claims do not cover, what their invention could not be.

[00:18:19] Speaker 00:
That's what the court said in the mega.

[00:18:21] Speaker 00:
Ford was entitled to rely on those statements.

[00:18:26] Speaker 00:
And the public notice function, I would submit, of the prosecution history would be significantly undermined if a disclaimer this clear were permitted to nevertheless allow TMC to go forward.

[00:18:37] Speaker 00:
If there are no further questions.

[00:18:39] Speaker ?:
Thank you.

[00:18:50] Speaker 03:
My colleague is pointed to the appendix at 1875

[00:18:56] Speaker 03:
for support for the broad disclaimer that Ford has claimed here and that was adopted by the district court, as we say, from the concurring opinion.

[00:19:08] Speaker 03:
Ford cites to the first sentence of the conclusion where it says, we conclude that the prosecution history states an express disclaimer of pressure regulators and incremental regulation means of any type.

[00:19:20] Speaker 03:
That's the broad disclaimer.

[00:19:23] Speaker 03:
But that's not

[00:19:25] Speaker 03:
The holding.

[00:19:25] Speaker 03:
The holding is down at the last sentence of the page.

[00:19:29] Speaker 03:
This disclaimer applies to the fuel return path with flow constraint.

[00:19:35] Speaker 03:
It doesn't apply to the broad system.

[00:19:37] Speaker 02:
No, no, no.

[00:19:38] Speaker 02:
They had to say that.

[00:19:39] Speaker 02:
That was the limitation that was in dispute and was before them.

[00:19:42] Speaker 02:
Right.

[00:19:42] Speaker 02:
They couldn't have ended the opinion with the first statement because they had to say

[00:19:49] Speaker 02:
specifically hone in and say this disclaimer applies to the term limitation in dispute in this case.

[00:19:57] Speaker 02:
What does that prove?

[00:19:59] Speaker 03:
What that proves, Your Honor, our position is that the board majority adopted a limited disclaimer that is in contrast to the broad disclaimer adopted in the concurring opinion where the judge said, I think

[00:20:14] Speaker 03:
that the disclaimer should apply to all pressure regulators used anywhere in the system.

[00:20:18] Speaker 04:
Let me cut to what I consider the chase on this.

[00:20:24] Speaker 04:
In your blue brief, in discussing the district court statement that it didn't consider the prosecution history, you have a footnote at page 23 that says, although the district court indicated that it did not consider the prosecution history when it first construed the claims, Ford in fact cited this evidence.

[00:20:44] Speaker 04:
Are you saying that even though the district court says it did not consider the prosecution history, that it really did?

[00:20:54] Speaker 03:
Well, I think that by that statement the district court was probably indicating that it did not have a copy of the entire file history that it consulted.

[00:21:02] Speaker 03:
But certainly both parties relied on sections of the prosecution history to support their claim construction during the Markman hearing, and that's what the judge reviewed to

[00:21:14] Speaker 04:
In an unsophisticated way, just made a mistake.

[00:21:19] Speaker 03:
No, didn't make a mistake.

[00:21:21] Speaker 03:
I'm just suggesting that she did not necessarily realize that what was in front of her in terms of supporting certain claim terms was portions of the prosecution history.

[00:21:36] Speaker 03:
I know that my time is short, but I would really like to direct the panel's attention to the unasserted claims.

[00:21:44] Speaker 03:
40, only 38 claims eliminate or minimize.

[00:21:49] Speaker 03:
40 only says minimize.

[00:21:50] Speaker 03:
That does not mean you shouldn't be eliminating the pressure regulator.

[00:21:53] Speaker 03:
41 and 42 and 43 all say minimize.

[00:21:59] Speaker 03:
43 is particularly instructive because the last claim elements calls for closing all fuel return lines including closing all excess fuel return lines

[00:22:13] Speaker 03:
from pressure regulators, if there is any.

[00:22:17] Speaker 03:
And lastly, claims 44, 45, and 46 all cover a kit to retrofit cars that are already on the road.

[00:22:27] Speaker 03:
During prosecution, the examiner and the inventor both recognized most cars available in that timeframe in the early 2000s already had one or two pressure regulators in them.

[00:22:38] Speaker 03:
So to be claiming a retrofit,

[00:22:40] Speaker 03:
that could be used with existing cars is certainly not disclaiming pressure regulators.

[00:22:46] Speaker 03:
It's providing a kit that could be used to work with pressure regulators.

[00:22:50] Speaker 03:
Thank you.

[00:22:51] Speaker 02:
Thank both sides.

[00:22:51] Speaker 02:
The case is submitted.

[00:22:52] Speaker 02:
That concludes our proceedings on this board.

[00:22:55] Speaker 03:
All rise.

[00:22:59] Speaker 03:
The honorable court is adjourned for May today.