[00:00:30] Speaker 03:
Nobody wants to stay.

[00:00:37] Speaker 02:
OK, our final case this morning is number 17, 2086, Barco N.V.

[00:00:42] Speaker 02:
versus ISO Corporation.

[00:00:43] Speaker 02:
Mr. Morgan.

[00:00:47] Speaker 00:
Good morning.

[00:00:47] Speaker 00:
May it please the court.

[00:00:48] Speaker 00:
My name is Jeff Morgan.

[00:00:49] Speaker 00:
I'm representing the appellants Barco N.V.

[00:00:52] Speaker 00:
and Barco N.V.

[00:00:54] Speaker 00:
Your Honor, this appeal deals with the rule against recapture under 35 USC.

[00:00:59] Speaker 00:
251.

[00:01:00] Speaker 00:
The central issue on this appeal is whether Barco clearly and unmistakably surrendered all subject matter that did not include a pixel response limitation during the prosecution of the original patent.

[00:01:19] Speaker 00:
We contend that no, it did not make such a clear and unmistakable surrender.

[00:01:26] Speaker 00:
The district court erred

[00:01:27] Speaker 00:
in determining that Barco had made a surrender.

[00:01:30] Speaker 00:
And as a result, the district court erroneously invalidated all of Barco's reissued claims at issue on this appeal.

[00:01:39] Speaker 04:
Looking at a case like Hester, the cooking solely with steam limitation was always in the claim from the very beginning.

[00:01:49] Speaker 04:
And the applicant, to overcome a prior art rejection, said that prior art

[00:01:58] Speaker 04:
uses steam and something else for cooking, infrared.

[00:02:03] Speaker 04:
I'm just solely with steam, therefore give me my patent.

[00:02:07] Speaker 04:
And eventually on the strength of that argument, got a patent.

[00:02:12] Speaker 04:
And then on reissue, basically did away with the restriction on solely with steam.

[00:02:19] Speaker 04:
And this court said, no, based on the way you argued your case during the original prosecution,

[00:02:27] Speaker 04:
you basically surrendered the right to not have the solely with STEAM limitation.

[00:02:36] Speaker 04:
So, you know, why wouldn't that just apply directly to the facts of this case?

[00:02:42] Speaker 04:
You argued, hey, I have a measurement limitation here and there is no reference here that teaches the measurement limitation, so give me my patent.

[00:02:54] Speaker 04:
An examiner withdrew the rejection

[00:02:57] Speaker 04:
So why wouldn't the Hester articulation that you basically surrendered now through your argument focusing on your measurement limitation the right to withdraw the measurement limitation in a reissue claim?

[00:03:15] Speaker 00:
I actually think that Hester helps us in this case rather than hurts us.

[00:03:19] Speaker 00:
Hester is a very clear case of what a patent applicant has to do and say

[00:03:26] Speaker 00:
in order to clearly and unmistakably surrender subject matter.

[00:03:30] Speaker 00:
In Hester, the patent applicant argued 27 times in six different papers over the course of a prosecution of seven years that the solely with steam limitation was critical and very material.

[00:03:46] Speaker 00:
Those were the patent applicant's words to its invention.

[00:03:49] Speaker 00:
That kind of emphatic, deliberate statement

[00:03:53] Speaker 00:
is what this court has always held to be a clear and unmistakable surrender.

[00:03:56] Speaker 04:
We wouldn't want to create a rule that says if you say it 10, 15, 20 times, then now you've given it away.

[00:04:05] Speaker 04:
But if you only say it three or four times, or even once, maybe that's not good enough.

[00:04:11] Speaker 04:
There has to be a different dividing line than that one.

[00:04:16] Speaker 00:
Absolutely, Your Honor.

[00:04:17] Speaker 00:
And this case presents the court with a great example

[00:04:21] Speaker 00:
to give some guidance in this very complicated area of law of what is not a clear and unmistakable surrender.

[00:04:28] Speaker 00:
Clearly, Hester is an extreme example, definitely a clear and unmistakable surrender.

[00:04:33] Speaker 00:
Maybe saying it one time is enough.

[00:04:36] Speaker 00:
But the point is that it has to be clear on the record to an objective reader of the prosecution history that what the patent applicant was doing was deliberately giving up

[00:04:48] Speaker 00:
subject matter.

[00:04:49] Speaker 02:
Why isn't it clear when the patent applicant says, I'm not like the prior art because I have this feature?

[00:04:59] Speaker 00:
Because that is not a clear and unmistakable surrender.

[00:05:04] Speaker 00:
That might beg the question, but merely saying that the patent examiner in this case, who cited Mochizuki against Barco, the patent examiner said Mochizuki, which deals with

[00:05:18] Speaker 00:
a completely different set of technology, has the pixel response limitation.

[00:05:22] Speaker 00:
Barco merely said, no, looking at the passages of Mochizuki that you've cited against us, no, it does not.

[00:05:28] Speaker 00:
That relates to voxels of an ultrasound beam.

[00:05:31] Speaker 00:
That has nothing to do with pixels at all, and it has nothing to do with... No, that's not quite right.

[00:05:37] Speaker 02:
He said two things.

[00:05:39] Speaker 02:
He said it doesn't have a measurement limitation, and then it also said it doesn't have voxels, but in distinguishing

[00:05:47] Speaker 02:
prior with respect to claim 33 only relied on the measurement limitation, right?

[00:05:54] Speaker 00:
Well, the measurement limitation is what the examiner had mistakenly relied on Mochizuki to cite against Barko, so obviously Barko has to traverse that and recite that back to the examiner.

[00:06:05] Speaker 00:
But in doing so, Barker didn't say, my invention, the pixel response limitation, that is something very material or critical to my invention.

[00:06:15] Speaker 00:
It just said, I'm sorry, examiner, you are wrong.

[00:06:17] Speaker 02:
Where does Hester, these other cases, understand your factual distinction where they use the word critical at one point?

[00:06:25] Speaker 02:
But where does the court say that you have to use language like that?

[00:06:29] Speaker 00:
There can be, I think under this court's precedent, no bright line test for what is and is not

[00:06:35] Speaker 00:
a clear and unmistakable surrender.

[00:06:38] Speaker 00:
The context is so very, very important to answer this question.

[00:06:42] Speaker 03:
You think you can't surrender a portion of the limitation that's not critical?

[00:06:47] Speaker 00:
I'm sorry?

[00:06:47] Speaker 03:
You think you can't surrender something that's non-critical?

[00:06:52] Speaker 03:
I think that if you... And what happens if you went in, instead of it being here, you know, something that is important, pixel responsive, some aspect of the claim that's not terribly important, but you

[00:07:02] Speaker 03:
27 times, you say, that's not me.

[00:07:05] Speaker 00:
Right.

[00:07:06] Speaker 03:
And it's not critical.

[00:07:07] Speaker 03:
You still surrendered it, right?

[00:07:10] Speaker 00:
Absolutely, you have.

[00:07:11] Speaker 03:
But only... Criticality is irrelevant.

[00:07:15] Speaker 00:
You have surrendered if the language that the patent applicant uses makes it clear to a person reading the prosecution history that that was what they were doing and that is not our case.

[00:07:25] Speaker 03:
My understanding of your argument here is that what your

[00:07:30] Speaker 03:
a patent prosecutor was trying to tell the examiner, not that your invention was different because you had a pixel response and they didn't, but that the examiner just wasn't very bright and didn't really understand the prior references.

[00:07:46] Speaker 03:
That's my understanding of your argument now.

[00:07:49] Speaker 00:
We're not casting any aspersions.

[00:07:51] Speaker 00:
I know that.

[00:07:52] Speaker 00:
I know that.

[00:07:53] Speaker 03:
But you said the examiner, you were trying to educate the examiner about what the prior art was all about.

[00:07:58] Speaker 00:
Correct.

[00:07:59] Speaker 00:
Mochizuki dealt with rendering stereoscopic images using ultras.

[00:08:04] Speaker 03:
But what an ordinary artisan walking up to basically seven lines and then another seven lines in terms of the examiner's response.

[00:08:19] Speaker 03:
How would the ordinary citizen know that that was the debate, as opposed to a surrender of pixel response?

[00:08:26] Speaker 00:
I think that's a very important consideration.

[00:08:31] Speaker 00:
Because if there is doubt, this court's law errs on the side of the subject.

[00:08:35] Speaker 03:
I'm not saying there's not any doubt.

[00:08:36] Speaker 03:
I mean, I would assume that this would be a different case if, on page 740, when you were putting in your objection,

[00:08:47] Speaker 03:
If you said, please, Mr. Examiner, I want you to understand that I think that there's a correct way to read the prior art references as follows.

[00:08:57] Speaker 03:
You wouldn't have mentioned, right?

[00:09:00] Speaker 03:
In that explication as to what the prior art was, you wouldn't even have mentioned that you had a pixel response, right?

[00:09:06] Speaker 00:
I disagree, Your Honor, because it was the pixel response limitation that the Examiner seized on.

[00:09:13] Speaker 03:
Right.

[00:09:15] Speaker 03:
Just tell me in an English language what you would have said to the examiner as why he was reading the art incorrectly.

[00:09:22] Speaker 00:
I think you could have said exactly what Barkow said here, which is that you've said that Mochizuki has this limitation.

[00:09:29] Speaker 00:
Mochizuki actually has nothing of the sort.

[00:09:33] Speaker 00:
I think that's a, maybe it's a polite way of saying... So Mochizuki had the pixel response?

[00:09:39] Speaker 00:
Mochizuki did not have the pixel response.

[00:09:41] Speaker 00:
That was the examiner's view?

[00:09:42] Speaker 00:
That was the examiner's view, which was incorrect.

[00:09:44] Speaker 00:
And Barco came back and said, Mochizuki has nothing to do with pixels whatsoever.

[00:09:49] Speaker 00:
It's exclusively about voxels.

[00:09:51] Speaker 02:
But if that's all they said, you'd have a good case.

[00:09:54] Speaker 02:
It's not all they said, and it's not even the predominant thing they said.

[00:09:58] Speaker 02:
They said, we have a measurement limitation.

[00:10:01] Speaker 02:
And they used that in claim 33, where they didn't even raise the voxel argument.

[00:10:10] Speaker 00:
Well, both.

[00:10:12] Speaker 00:
Mochizuki was cited against both of the claims, Your Honor, and then I think it's a matter of addressing the examiner's view.

[00:10:21] Speaker 00:
We said it once, we didn't say it twice.

[00:10:24] Speaker 00:
I don't know there should be a rule that for clear and unmistakable surrender, you have to emphatically state what it doesn't show each and every time.

[00:10:33] Speaker 02:
No, but when distinguishing claim 33, it was distinguished on the ground that Mochizuki doesn't have the measurement limitation.

[00:10:42] Speaker 02:
There was no mention of a voxel limitation there.

[00:10:45] Speaker 00:
Correct.

[00:10:46] Speaker 00:
Because Barclay had already said, with response to claim one, that Mochizuki doesn't have a pixel response limitation.

[00:10:55] Speaker 00:
It's only directed to voxels.

[00:10:58] Speaker 02:
So is your contention that any time you say that there are two distinctions, that neither one of them is a surrender?

[00:11:06] Speaker 00:
No, Your Honor, what I'm saying is that whatever the applicant says has to be read in its entirety in context.

[00:11:14] Speaker 02:
Well, if somebody said here, for example, my thing is distinguishable from the prior art, because one, it has a measurement limitation, and two, it's dealing with pixels instead of voxels.

[00:11:30] Speaker 02:
Does that a surrender as to both of us?

[00:11:33] Speaker 00:
No, Your Honor.

[00:11:34] Speaker 00:
Again, it goes to the point that

[00:11:36] Speaker 00:
the surrender has to be clear and unmistakable.

[00:11:38] Speaker 00:
I mean, I would direct the court, it's not presidential, but I would direct the court to the McDermott case, which is a district of New Jersey case, which applied this court's law and found that even with respect to a claim set that originally has a limitation for an oxenger scavenger, that when prior art with alleged oxenger scavengers is cited against you,

[00:12:06] Speaker 00:
the applicant can point out correctly that no, the prior act does not have an oxygen scavenger, without thereby surrendering all subject matter that doesn't have that limitation going forward.

[00:12:19] Speaker 00:
The McDermott case is cited extensively in our briefing.

[00:12:24] Speaker 00:
And the site for that, Your Honors, is 2012 Westlaw 162867

[00:12:33] Speaker 00:
I see that I'm eating into some of my rebuttal time.

[00:12:36] Speaker 02:
You can save your rebuttal time.

[00:12:39] Speaker 04:
That's fine.

[00:12:39] Speaker 04:
Can you just explain what more would the applicant needed to have said here beyond what Barco said that in your estimation would have been enough for a recapture finding?

[00:12:53] Speaker 00:
In order for there to be a clear and unmistakable surrender here, Barco would have had to have said the pixel response limitation is

[00:13:03] Speaker 00:
a very material feature to my invention.

[00:13:06] Speaker 00:
Without that, I don't have patentability.

[00:13:08] Speaker 02:
I thought you conceded in response to Judge Clemenger's question.

[00:13:12] Speaker 02:
It doesn't have to be very material for the invention.

[00:13:15] Speaker 02:
It's just any feature.

[00:13:18] Speaker 00:
Any emphatic statement that says, this limitation is required for my invention, whether it be the most important or a lesser.

[00:13:28] Speaker 00:
But it has to be some kind of a statement that says,

[00:13:31] Speaker 00:
a concession to the public on the record, I am distancing myself from this invitation.

[00:13:40] Speaker 00:
Okay.

[00:13:40] Speaker 00:
Thank you.

[00:13:45] Speaker 02:
Mr. Newton.

[00:13:53] Speaker 01:
May it please the court.

[00:13:54] Speaker 01:
Good morning, Jared Newton for the ISO Appellees.

[00:13:57] Speaker 01:
I'll start with the Hester case because it is directly controlling to the only issue that is properly on appeal, which is whether these arguments distinguishing the prior arc were a clear and unmistakable surrender of claim scope.

[00:14:09] Speaker 01:
And Hester, the patentee did exactly what Barker did in this case.

[00:14:14] Speaker 01:
They had two limitations that they were focused on for distinguishing their claims from the prior arc.

[00:14:20] Speaker 01:
One was cooking solely with steam.

[00:14:22] Speaker 01:
One was cooking with two sources of steam.

[00:14:24] Speaker 01:
The patent examiner cited throughout the prosecution different prior art references against these limitations, one of which disclosed cooking with infrared heat.

[00:14:33] Speaker 01:
And in response to those rejections, what the patentee said was, my invention requires cooking solely with steam or cooking with two sources of steam.

[00:14:40] Speaker 01:
The prior art that you've cited, including this prior art reference that discloses cooking with infrared heat, is different.

[00:14:47] Speaker 01:
And on the basis of those arguments, the claims were allowed.

[00:14:50] Speaker 01:
And it was a clear and unmistakable surrender of any claim scope that did not include those two limitations.

[00:14:55] Speaker 04:
There was a tone in Hester's opinion that seemed to go a little more.

[00:15:02] Speaker 04:
I mean, your summary is accurate, but it's a little on the clinical side.

[00:15:07] Speaker 04:
What was going on in Hester was the opinion describing how the applicant there declared that this particular limitation was critical.

[00:15:19] Speaker 04:
and was very material to the invention.

[00:15:25] Speaker 04:
And so I guess I'm wondering, is there something to be said for when you try to analyze what is the scope of the surrender?

[00:15:35] Speaker 04:
You could, on one level, be surrendering whatever is in the prior art reference being asserted against you.

[00:15:42] Speaker 04:
And maybe in the context of this case, that would mean the applicant surrendered the right

[00:15:48] Speaker 04:
claim in the future or anything to do with loxals.

[00:15:51] Speaker 04:
Then there's another kind of surrender, which would be the ability to withdraw the claim element that you focused on in your arguments.

[00:16:00] Speaker 04:
And why wouldn't it be the case that only in those instances through argument, when you are clinging to a particular limitation as being

[00:16:13] Speaker 04:
material to your invention or critical to your invention or that particular element gives you superior characteristics or is the chief feature of your invention.

[00:16:25] Speaker 04:
In those circumstances, that's when we can say that you have now surrendered the right to withdraw that limitation that you've been notifying the public as being so critical, superior material to your invention as opposed to simply

[00:16:42] Speaker 04:
distinguishing away disclosure in a prior art reference.

[00:16:48] Speaker 01:
In response, the first point is that this issue of scope of surrender is waived.

[00:16:52] Speaker 01:
Barco didn't argue below that there was some narrower scope of surrender besides any scope that does not include the measurement limitation.

[00:17:01] Speaker 01:
And then to answer your question, this goes to the question of whether there's a frequency

[00:17:08] Speaker 01:
or whether there's a magic word requirement that in order to give rise to a full scope of surrender that is equal to the claim limitation you relied on, whether the patentee has to use some magic word or has to say, rely on the limitation a certain number of times.

[00:17:23] Speaker 04:
What I'm trying to get to is in our reissue recapture case law, sometimes the scope of the recapture is focused on what is alleged to be in the prior art.

[00:17:37] Speaker 04:
And then we say,

[00:17:39] Speaker 04:
that, okay, whatever's been alleged to be in the prior art, you've given up, and so you can't have that.

[00:17:45] Speaker 04:
In other instances in our case law, we've said the scope of the surrender is broader than just the alleged reference teaching.

[00:17:55] Speaker 04:
It's the actual ability to withdraw a claim element that you're focused on to overcome that reference disclosure.

[00:18:04] Speaker 04:
That's a much broader form of surrender, and that's the

[00:18:07] Speaker 04:
form that the district court here relied on.

[00:18:11] Speaker 04:
And I'm trying to figure out if it's appropriate in this fact pattern to do that when I didn't quite see the applicant characterize the nature of his invention as hinging on the measurement limitation, the way I saw it in other cases like Hester, Greenland, MBO, et cetera.

[00:18:36] Speaker 01:
I would disagree and say that this case is much closer to Hester and Greenline and NPO.

[00:18:41] Speaker 01:
And if you look at the prosecution history in this case, the relevant pages are appendix 739 and 740.

[00:18:46] Speaker 01:
The patentee, Barco, did rely specifically on the measurement limitation.

[00:18:52] Speaker 01:
It said, our claims recite the measurement limitation.

[00:18:54] Speaker 01:
And each of the three prior art references, not just Mochizuki, but each of the three prior art references that you cited do not disclose it.

[00:19:02] Speaker 01:
And Barco did point to what the examiner had cited from Mochizuki.

[00:19:06] Speaker 04:
So let me just understand the scope of your understanding of recapture law.

[00:19:13] Speaker 04:
If there's a claim with 10 elements, and then the examiner makes a prima facie rejection, relying on a bunch of references to teach the 10 elements, the applicant comes back and says, oh, your rejection is flawed.

[00:19:29] Speaker 04:
It's defective, because none of those references actually teach element number four.

[00:19:35] Speaker 04:
And then the examiner goes back and looks and says, oh, you're right.

[00:19:38] Speaker 04:
OK, here's your patent.

[00:19:41] Speaker 04:
You're saying now at that point in time, the applicant on reissue cannot withdraw element number four from any reissue claim?

[00:19:53] Speaker 01:
Yes, absolutely.

[00:19:54] Speaker 01:
Under GreenLion, under Hester, under NBO, we can't withdraw that.

[00:19:57] Speaker 01:
And if you look at, we talked about Hester and the prior teaching that the patentee had pointed out was infrared heat.

[00:20:03] Speaker 01:
And the court still said the scope of surrender is anything that does not include these two limitations that you relied on.

[00:20:09] Speaker 01:
Green Lion came out the same way.

[00:20:11] Speaker 01:
There, the limitation at issue was the use of this thermal oxide layer that had a TEOS reactant.

[00:20:18] Speaker 01:
And the court, in analyzing the arguments that the patentee made relying on that limitation, said that the representation you're making to the patent office, representation you're making to the public,

[00:20:29] Speaker 01:
is that that component is a necessary component of your claims, and you're surrendering the scope of any claims, any semiconductor device with a thermal oxide layer that does not include that limitation.

[00:20:40] Speaker 01:
It didn't say you're surrendering just what was different in the prior art, which were other thermal oxide layers.

[00:20:46] Speaker 01:
They said you're surrendering any claim scope that does not include that limitation.

[00:20:55] Speaker 01:
Turning back to the issue of clear and unmistakable disclaimer, and this distinction that Barco has drawn between relying on a limitation to distinguish the prior art versus educating the examiner, there's no support in the case law for that distinction.

[00:21:10] Speaker 01:
And you can go back to the Green Line in the Hester cases.

[00:21:13] Speaker 01:
The court didn't say that in Hester, the patentee was informing the examiner about his mistaken understanding of whether cooking with infrared heat is the same thing as cooking with steam.

[00:21:24] Speaker 01:
They said, that's the basis of the distinction you made, and therefore you're surrendering any claim scope that does not include that limitation.

[00:21:31] Speaker 02:
Well, which of those recapture cases talks about a clear and unmistakable surrender?

[00:21:38] Speaker 02:
I don't recall that.

[00:21:41] Speaker 02:
Which case establishes that standard?

[00:21:44] Speaker 01:
So Hester is... No, the language.

[00:21:47] Speaker 01:
The language.

[00:21:48] Speaker 01:
The specific language.

[00:21:49] Speaker 02:
What the cases say is that someone reading the prosecution history would conclude that this was surrendered.

[00:21:55] Speaker 02:
The cases, to my recollection, don't use the words clear and unmistakable.

[00:22:00] Speaker 02:
They do, Your Honor.

[00:22:02] Speaker 02:
Which case?

[00:22:02] Speaker 01:
Green Lion uses it.

[00:22:04] Speaker 01:
I think it cites it cites to NBO and to Medtronic when it uses that standard.

[00:22:09] Speaker 01:
And then Hester didn't use the specific words clear and unmistakable, but they looked at

[00:22:14] Speaker 01:
the prosecution history estoppel context.

[00:22:16] Speaker 01:
And they said that that informs our recapture law.

[00:22:19] Speaker 01:
And they used the language of unmistakable assertions in support of patentability.

[00:22:25] Speaker 01:
And so Hester, because of that statement, unmistakable assertions in support of patentability, Hester's deemed the controlling, as Barco says in his recovery, the seminal case for surrender by argument.

[00:22:40] Speaker 01:
The green line, I can point you to the page in green line.

[00:22:44] Speaker 04:
An MBO at Pinpoint 1314, I see a statement saying, if the patentee surrendered by argument, he must clearly and unmistakably argue that his invention does not cover a certain subject matter to overcome an examiner's rejection based on prior art.

[00:23:06] Speaker 01:
That's right.

[00:23:07] Speaker 01:
And if you look at how MBO applied that standard, they said that,

[00:23:12] Speaker 01:
The scope of surrender in that case, the subject matter that the patentee was saying his invention did not cover, was subject matter that did not include the limitation he had relied on, which in that case was a slightly retracting needle.

[00:23:25] Speaker 01:
And the same thing in Green Lion.

[00:23:26] Speaker 01:
Green Lion recited that same language from NVO.

[00:23:29] Speaker 01:
And it said the subject matter that the patentee is saying his claims do not cover is any subject matter that does not include this TEOS reacting limitation.

[00:23:40] Speaker 01:
And so it's the same thing in this case.

[00:23:42] Speaker 01:
Barco said the only reason, exclusively and deliberately, the only reason our claims are allowed over the prior art is because we recite the measurement limitation.

[00:23:53] Speaker 01:
And the prior art, each of these references that you've cited, does not disclose it.

[00:23:58] Speaker 01:
The only way those statements can be read consistently with green light.

[00:24:02] Speaker 03:
What would your reaction be to a response to the examiner's rejection made by Barco where they came in and said,

[00:24:09] Speaker 03:
want to explain to you what's going on here, we think that you've misread the references."

[00:24:15] Speaker 03:
And they pitched their discussion on that basis and said, perhaps said, by the way, you know, our patent has the pixel response.

[00:24:27] Speaker 03:
But they were clearly saying to the examiner, we're coming back to you, you have misapplied the references.

[00:24:35] Speaker 01:
If those arguments, those hypothetical arguments.

[00:24:38] Speaker 03:
No, if that was the way it had been written up.

[00:24:40] Speaker 01:
If it had been written that way and they're still saying these references do not disclose the measurement limitation, our claims do, then there's no difference.

[00:24:47] Speaker 01:
That's a clear and unmistakable surrender of claim scope under any of these cases that we've been discussing.

[00:24:56] Speaker 01:
And there's not a single controlling federal circuit case that supports this distinction between educating the examiner

[00:25:03] Speaker 01:
Oh, I understand.

[00:25:05] Speaker 03:
I understand that they all have a case to lean on.

[00:25:07] Speaker 03:
They want this to be that case.

[00:25:09] Speaker 03:
Right.

[00:25:10] Speaker 01:
That's correct.

[00:25:11] Speaker 03:
What I'm saying is what's wrong with if they say we're not trying to tell you that we're surrendering any subject matter, we're just trying to explain to you what the prior art is.

[00:25:22] Speaker 03:
I mean, it's evident that their claims have the pixel response limitation in it.

[00:25:26] Speaker 03:
I mean, that's clear.

[00:25:27] Speaker 03:
You don't have to read it.

[00:25:29] Speaker 03:
But what I'm wondering is if it isn't possible to paper up

[00:25:32] Speaker 03:
a communication to an examiner where you're basically saying I'm trying to educate you.

[00:25:38] Speaker 01:
It should not be possible to paper it up if you're still relying on a limitation to distinguish your claims.

[00:25:44] Speaker 01:
You know, if you say the prior art talks about voxels or infrared heat, you know, you might be saying to the examiner, the prior art's, you know, this limitation, this teaching you're relying on is not our limitation.

[00:25:55] Speaker 03:
Was the examiner's rejection anticipation or obviousness?

[00:25:58] Speaker 01:
In this case, it was an obviousness rejection.

[00:26:01] Speaker 01:
And that goes to my point about the other references that the examiner had cited.

[00:26:05] Speaker 01:
Barco went out of his way to say, not only does this one reference that you cited for the measure limitation not disclose it, but these other references that you also cited, they don't cure that deficiency.

[00:26:16] Speaker 01:
They don't disclose the measurement limitations.

[00:26:18] Speaker 01:
So this limitation, and they didn't talk about any teachings from those references.

[00:26:22] Speaker 03:
Well, whatever.

[00:26:22] Speaker 03:
You had an anticipation rejection.

[00:26:25] Speaker 03:
The examiner thought the prior art taught a pixel response, and that's the reason why it was anticipated.

[00:26:31] Speaker 03:
And you came in and responded to the examiner by saying, no, no, no, we don't have a pixel response one.

[00:26:37] Speaker 03:
That we have one, they don't have one.

[00:26:39] Speaker 03:
Is that a surrender?

[00:26:41] Speaker 03:
No, that wouldn't be a surrender.

[00:26:43] Speaker 01:
If it's an anticipation rejection, and the patentee is saying, we require pixel response, and the prior art doesn't have one.

[00:26:50] Speaker 03:
No, you said the examiner read the prior art to have a pixel response in it, and therefore anticipated you.

[00:26:57] Speaker 03:
And you come in and you say, no, no, no, you're wrong.

[00:26:59] Speaker 03:
Prior art doesn't have, we do have the pixel response limitation.

[00:27:02] Speaker 03:
They don't.

[00:27:03] Speaker 03:
That wouldn't be a surrender.

[00:27:06] Speaker 01:
Of course it wouldn't.

[00:27:07] Speaker 01:
I don't see any distinction between anticipation and obviousness.

[00:27:09] Speaker 01:
You're still talking about what does the prior art disclose?

[00:27:13] Speaker 01:
Does it disclose this limitation?

[00:27:15] Speaker 01:
And in both contexts, if you're saying our invention requires this limitation, the prior art doesn't have it, your surrender is a failure.

[00:27:22] Speaker 03:
You say you can't have a broadening reissue.

[00:27:25] Speaker 03:
I mean, they're coming in and saying, you've anticipated me over a prior art reference that has a pixel response in it.

[00:27:33] Speaker 01:
Well, no, I'm saying you can't have a broadening reissue that tries to recapture or tries to omit this one limitation that you said was missing from the prior art.

[00:27:42] Speaker 01:
And that's the recapture rule.

[00:27:44] Speaker 01:
You could have a broadening reissue that maybe you want to add other limitations or take out other limitations that you weren't relying on to distinguish the prior art.

[00:27:51] Speaker 01:
But you can't take out the one, the only one in this case,

[00:27:54] Speaker 01:
that you relied on to get your claims allowed in the first instance.

[00:28:01] Speaker 01:
And I see I've got about a minute left.

[00:28:02] Speaker 01:
So with the last of my time, I want to talk briefly about some of the arguments.

[00:28:08] Speaker 01:
We think this prosecution history is very clear.

[00:28:10] Speaker 01:
It's two pages of the record that are relevant.

[00:28:12] Speaker 01:
And in addition to looking at the arguments Barco did make, it's important to look at what the arguments they did not make.

[00:28:17] Speaker 01:
Because we see some of these after the fact arguments come up in their briefing.

[00:28:21] Speaker 01:
such as Mokuzuki's in a different field or is directed to a different problem or a different solution.

[00:28:26] Speaker 01:
Those are not analogous arguments that are not reflected in the prosecution history.

[00:28:30] Speaker 01:
And this court says very clearly in the Green Lion case that we hold the patentee to the arguments they actually made, not the arguments they could have made.

[00:28:37] Speaker 01:
And there, the patentee said after the fact, it wasn't the TIAAS limitation that distinguished our claims.

[00:28:43] Speaker 01:
It was actually these temperature and pressure characteristics that we had.

[00:28:46] Speaker 01:
And the court said, well, even if there's merit to those arguments,

[00:28:49] Speaker 01:
We're not going to give any attention to him because you didn't say him in prosecution.

[00:28:53] Speaker 01:
And that's the same thing here.

[00:28:55] Speaker 02:
OK.

[00:28:55] Speaker 01:
Thank you, Mr. Morgan.

[00:28:56] Speaker 01:
Thank you very much.

[00:29:06] Speaker 02:
Mr. Morgan?

[00:29:08] Speaker 00:
Thank you, Your Honors.

[00:29:09] Speaker 02:
So in the area of prosecution history at Staple, if I recall correctly, and that's a relevant area comparable to this one,

[00:29:19] Speaker 02:
If you distinguish a piece of prior art on a ground that you didn't need to use to distinguish the prior art, it's still prosecution history is toppled, right?

[00:29:32] Speaker 00:
That's correct, Your Honor.

[00:29:33] Speaker 00:
But I think it's important to note to the court that ASO is asking this court to apply the wrong surrender standard.

[00:29:40] Speaker 00:
ASO is arguing here, as it did at the district court, that all you need to do is make a statement related to patentability

[00:29:48] Speaker 00:
and you've surrendered subject matter.

[00:29:51] Speaker 00:
That is emphatically not the law of this court.

[00:29:53] Speaker 02:
You're arguing that the prosecution history estoppel standard and recapture standard are different?

[00:29:59] Speaker 00:
I'm arguing that the surrender standard for reissue, where it's argument only, that's the sole basis of any alleged surrender, that that standard is more exacting.

[00:30:12] Speaker 02:
Then prosecution history estoppel?

[00:30:14] Speaker 00:
Yes, Your Honor, because the standard for surrender

[00:30:18] Speaker 00:
only by argument is not the same as it is, for example, by a claim amendment, where you just amend the claims, and you're sort of presumed to have surrendered.

[00:30:30] Speaker 02:
Why should the standard be different for prosecution, history, estoppel, and recapture, when we've said that the recapture rule guides us in this area?

[00:30:39] Speaker 02:
I mean, does that prosecution, history, estoppel rule guide us in this area?

[00:30:43] Speaker 00:
They're certainly related, Your Honor.

[00:30:46] Speaker 00:
All I can tell you is that under my reading of this court's precedent in this particular issue, in the reissue surrender context, this court has only held that there's been a surrender by argument only when the patent applicant has made such emphatic statements on the record that no reasonable reader of the record could conclude anything but.

[00:31:12] Speaker 00:
that they had surrendered something.

[00:31:14] Speaker 00:
That fits under a clear and unmistakable rule, right?

[00:31:20] Speaker 00:
Absolutely, Your Honor.

[00:31:21] Speaker 00:
Yes, it does.

[00:31:23] Speaker 00:
And since we are dealing in this case with an alleged surrender by argument only, there were no claim amendments.

[00:31:30] Speaker 00:
There were no narrowing claim amendments here.

[00:31:32] Speaker 00:
In that context, this court's law gives the patent applicant the benefit of the doubt.

[00:31:37] Speaker 00:
If there's any ambiguity about whether or not

[00:31:40] Speaker 00:
what the patent applicant said during prosecution is a surrender or not, then because this court requires clear and unmistakable surrender, there has been no surrender in their favor.

[00:31:51] Speaker 04:
Which case can you point to for that in terms of when it comes to argument?

[00:31:57] Speaker 04:
On some standard, clear and unmistakable.

[00:32:01] Speaker 04:
Here are some example cases from our court where the alleged argument wasn't clear and unmistakable enough.

[00:32:10] Speaker 00:
I would point the court to the Medtronic decision.

[00:32:13] Speaker 00:
A majority of the panel in Medtronic held that there was no clear and unmistakable surrender.

[00:32:20] Speaker 00:
Medtronic's a very complicated case, and the patent applicant said an awful lot of things relating to an awful lot of prior art references in distinguishing its invention over the prior art.

[00:32:34] Speaker 00:
But yet, despite the many statements that the patent applicant in Medtronic made,

[00:32:40] Speaker 00:
Related to patentability, this court held that there was no clear and unmistakable surrender, and therefore no violation of the recapture rule.

[00:32:48] Speaker 02:
OK.

[00:32:49] Speaker 02:
Thank you.

[00:32:49] Speaker 02:
Thank you.

[00:32:50] Speaker 02:
Thank both counsel.

[00:32:51] Speaker 02:
The case is submitted.

[00:32:51] Speaker 02:
That concludes our session for this morning.