[00:00:00] Speaker 01: This morning is 171703, Blackbird Tech versus ELB Electronics. [00:00:31] Speaker ?: Yeah. [00:01:00] Speaker 03: Thank you, Your Honor. [00:01:04] Speaker 03: May it please the Court. [00:01:05] Speaker 03: My name is Sean Thompson and I represent Blackbird Technologies. [00:01:08] Speaker 03: Claim 12 of the 747 patent recites a lighting apparatus that is for retrofit with a lighting fixture that has a ballast cover. [00:01:17] Speaker 03: Now a ballast is simply a component in the fixture that controls the flow of electricity to the bulb. [00:01:22] Speaker 03: A ballast cover [00:01:23] Speaker 03: is literally just a cover over that component of the picture. [00:01:25] Speaker 04: The initial matter, this case has to get vacated and remanded because of aqua products on the burden issue, correct? [00:01:33] Speaker 04: Do I have this case mixed up with the other one? [00:01:35] Speaker 03: You're mixing it up. [00:01:36] Speaker 04: I'm mixing it up on the other case. [00:01:37] Speaker 04: Sorry. [00:01:38] Speaker 03: Thank you. [00:01:38] Speaker 03: That was concerning, Your Honor. [00:01:40] Speaker 04: Why didn't I get one of these? [00:01:45] Speaker 03: So claim 12 recites the sliding apparatus for retrofit with a light fixture. [00:01:51] Speaker 03: And the district court construed Claim 12 to require that the lighting apparatus, a particular surface of the housing of the lighting apparatus, referred to as the attachment surface, needed to be secured to the ballast cover of the light fixture into which the apparatus is retrofit. [00:02:08] Speaker 03: We submit that this construction was wrong for three reasons. [00:02:11] Speaker 03: First, nothing in the claim requires that the attachment surface of the apparatus be secured to the ballast cover. [00:02:18] Speaker 03: The claim expressly provides that the attachment surface [00:02:21] Speaker 03: is in fact secured to another component of the device, the illumination surface. [00:02:26] Speaker 03: And there is no language in the claim supporting a requirement that the attachment surface be secured to anything else. [00:02:32] Speaker 03: Second, there's nothing in the specification to support reading in a requirement that the attachment surface be secured to the ballast cover. [00:02:40] Speaker 03: The specification does disclose an embodiment with a device that is configured to be secured to a ballast cover in certain modes of operation, but there is no basis [00:02:51] Speaker 03: to limit claim 12 to the disclosure of that body. [00:02:54] Speaker 01: Well, it has to be secured to something, right? [00:02:57] Speaker 03: I think the device should be secured to something to be installed, yes. [00:03:02] Speaker 01: Well, to accomplish the retrofit function. [00:03:05] Speaker 03: Correct. [00:03:05] Speaker 01: Right? [00:03:05] Speaker 01: It has to be secured to something on the existing light fixture. [00:03:10] Speaker 01: So, point this to anything in the specification or the intrinsic record as to what that something is other than the ballast cover. [00:03:19] Speaker 03: I think the device needs to be secured to the fixture into which it is being retrofit, but I don't think the claim needs to recite how it is secured into the fixture into which it is being retrofit. [00:03:33] Speaker 03: I think this claim is directed to the structure of the device itself, and a person of skill would understand how to install such a device into a lighting fixture. [00:03:43] Speaker 01: I'm sorry, I'm not following you. [00:03:44] Speaker 01: I thought we all agreed that it has to be secured to something on the existing light picture and you're just saying that we don't have to specify what that something is, that something could be anything and everything and that doesn't make any difference to understanding the scope of these claims? [00:04:02] Speaker 03: I don't think it could be anything or everything. [00:04:04] Speaker 03: I think it would be something a person still would understand [00:04:07] Speaker 03: a device like this would be used to retrofit into electricity. [00:04:10] Speaker 01: What would a person skilled in the art understand that something to be? [00:04:15] Speaker 03: I think it could be pins that fit into the housing and provide mechanical support and also electricity to the bulb. [00:04:23] Speaker 03: But to your point, I don't think the claim specifies that, and I don't think it has to. [00:04:28] Speaker 01: I think if you had a claim... Well, what about, can you point us to anything in the intrinsic record that suggests or points us to some reason to think [00:04:36] Speaker 01: this is something other than the ballast cover? [00:04:39] Speaker 03: Sure, Your Honor. [00:04:39] Speaker 03: I think the prosecution history in particular is germane to this point. [00:04:44] Speaker 01: Anything in the specification? [00:04:46] Speaker 03: I think the specification, I think it is the lack of things in the specification that make this point. [00:04:53] Speaker 03: Because the claim language I think is clear that there is an attachment surface and an illumination surface of the housing and that those two surfaces are fastened together. [00:05:02] Speaker 03: I think the district court and defendant's construction reads a limitation into that claim. [00:05:07] Speaker 03: So I think the specification is important insofar as there is nothing in the specification supporting reading that requirement into the claim. [00:05:15] Speaker 03: There are two parts of the specification that I think are relevant here. [00:05:18] Speaker 03: The first is a paragraph in the summary of the invention section appearing at appendix 37, column 3, lines 7 to 10. [00:05:31] Speaker 03: And this was the portion of the specification that the district court in particular zoomed in on, where it reads, the lighting apparatus also includes a fastening mechanism for securing the attachment surface of the lighting apparatus to the ballast cover. [00:05:44] Speaker 03: And this was really the basis of the district court's holding in terms of the specification. [00:05:49] Speaker 03: But it is clear from the problem. [00:05:52] Speaker 04: The only fastening mechanism mentioned in claim 12 is the fastening mechanism for securing the attachment surface. [00:05:58] Speaker 04: attachment surface to the illumination surface. [00:06:01] Speaker 04: That's the only fastening mechanism in Claim 12, correct? [00:06:03] Speaker 03: Correct. [00:06:04] Speaker 04: So whatever fastening mechanism is being referred to in Claim 3, which could be part of that particular preferred embodiment, is simply not claimed at all in Claim 12. [00:06:13] Speaker 03: Correct. [00:06:14] Speaker 03: I think that is particularly clear in light of the prosecution history because Claim 12 originally recited a fastening mechanism for securing the attachment surface of the lighting apparatus to the ballast cover. [00:06:26] Speaker 03: However, that specific limitation was deleted [00:06:29] Speaker 03: during the course of prosecution, and upon amendment read, fastening mechanism for securing the attachment surface of the lighting apparatus to the ballast cover. [00:06:38] Speaker 04: Why was it deleted? [00:06:40] Speaker 03: It is not clear entirely from the record why it was deleted. [00:06:43] Speaker 03: The examiner's amendment that deleted it stated that it was being deleted to resolve section 112 issues. [00:06:49] Speaker 03: At that point, there not had been, excuse me. [00:06:53] Speaker 04: There were no rejections based on 112 in this record that I could find. [00:06:56] Speaker 03: That is correct. [00:06:57] Speaker 03: There were 102 and 103. [00:06:59] Speaker 04: There was an interview. [00:07:00] Speaker 04: And so presumably at that interview there was some discussion which raised some 112 concern. [00:07:04] Speaker 04: And by the way, we don't have any clue whether it was indefiniteness, enablement, written description. [00:07:10] Speaker 04: We have no clue what even the nature of the 112 concern may have been. [00:07:15] Speaker 04: And by the way, this district court said amendments made for non-priority purposes can't affect the scope of a claim. [00:07:22] Speaker 04: That's absolutely wrong as a matter of law, right? [00:07:25] Speaker 04: a narrowing amendment for 112 purposes, enablement, or written description, that absolutely affects the scope of your claim, doesn't it? [00:07:30] Speaker 03: We would agree with that, Your Honor, yes. [00:07:32] Speaker 03: And I think that's the point. [00:07:34] Speaker 03: There is a 102-103 rejection. [00:07:37] Speaker 03: The claim is amended for reasons that have no relation to the issue before the court today. [00:07:42] Speaker 03: There is an examiner's interview. [00:07:44] Speaker 03: And in the written summary of that interview, the examiner states that the examiner's amendment that changes the fastening mechanism limitation is being done to resolve Section 112 issues. [00:07:55] Speaker 03: It is not clear why those are. [00:07:57] Speaker 03: But it is our position, as we presented the district court, that it doesn't matter here why the claim was amended. [00:08:03] Speaker 03: We concede there is nothing in the record beyond the fact that it was amended to resolve Section 112 issues. [00:08:08] Speaker 03: The salient issue, the remaining fact, is that it took out the limitation that is key to this issue. [00:08:14] Speaker 03: There was a fastening mechanism for securing the attachment surface to the elimination surface. [00:08:19] Speaker 03: And we think that bears directly on how a person of skill in the art would read these claims. [00:08:25] Speaker 03: To return to the specification, in column 9, there is an additional set of disclosure regarding the attachment surface, which forms not the basis for the district court's decision, but for many of defendants' arguments appearing in Appendix 40. [00:08:40] Speaker 03: I think it's important to note here that this entire column is directed to a single embodiment, the embodiment depicted in Figure 5. [00:08:49] Speaker 03: And that is an exemplary embodiment [00:08:51] Speaker 03: showing a lighting apparatus that is configured to be secured to a ballast cover in certain modes of operation. [00:08:59] Speaker 03: I would particularly direct the court to column nine. [00:09:06] Speaker 03: Lines 65, I'm sorry. [00:09:25] Speaker 03: line 17 to 20, which expressly state that it is in typical operation that the attachment surface of the device depicted in this embodiment is secured to the bowels cover. [00:09:38] Speaker 03: That this device is only secured to the bowels cover in typical operation necessarily means there are modes of operation in which it is not so secure. [00:09:46] Speaker 01: Can I just ask that you use the words in this embodiment? [00:09:48] Speaker 01: Those were your words, not the words you were reading, right? [00:09:50] Speaker 01: Because I don't see those words. [00:09:53] Speaker 01: in column nine, unless I'm looking at a different citation. [00:09:57] Speaker 03: No, no. [00:09:58] Speaker 03: That is correct. [00:09:59] Speaker 03: But my point is the entire disclosure in column nine is about the embodiment of figure five. [00:10:04] Speaker 01: Right. [00:10:04] Speaker 01: But that's not true of the references to the ballast cover in column three that we were talking about, because that's in the entire summary of the invention. [00:10:12] Speaker 03: Correct. [00:10:13] Speaker 03: And to turn back to that, it's true that that is in the summary of the invention section. [00:10:20] Speaker 03: But if you look at the beginning of the paragraph, [00:10:23] Speaker 03: in which that fastening mechanism line we were discussing earlier appears at Column 2, Line 65 on Appendix 36. [00:10:31] Speaker 03: It says, an energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover is also disclosed. [00:10:40] Speaker 03: And that's what this whole paragraph is about and where that fastening mechanism statement occurs in the context of. [00:10:46] Speaker 03: And that's very different than the language this Court has generally required [00:10:50] Speaker 03: to establish a disavowal, such as defendants argue, or an implied definition. [00:10:55] Speaker 03: It is not talking about the present invention. [00:10:58] Speaker 03: It is not talking about a feature that must be present in all embodiments. [00:11:02] Speaker 03: It's simply talking about the features of advice that are disclosed in the patent. [00:11:07] Speaker 03: And they are. [00:11:07] Speaker 04: And let me ask you a question. [00:11:09] Speaker 03: Yes. [00:11:09] Speaker 04: That paragraph three also talks about the circuit board composing a plurality of light-emitting diodes, right, under the summary of the invention. [00:11:17] Speaker 04: It talks about the lighting apparatus. [00:11:19] Speaker 04: It also includes a circuit board comprising a plurality of light emitting diodes. [00:11:25] Speaker 04: If something other than light emitting diodes were used, that would be OK, right? [00:11:30] Speaker 04: Because CLIN-12 doesn't expressly call for light emitting diodes. [00:11:33] Speaker 04: It doesn't speak to the exact nature of the lighting source. [00:11:38] Speaker 04: It just says, [00:11:39] Speaker 04: an energy-efficient lighting apparatus. [00:11:41] Speaker 04: So the fact that there may be some element disclosed in the summary of the invention does not mean that that element is incorporated into every claim, does it? [00:11:48] Speaker 03: I think that is exactly right. [00:11:49] Speaker 03: However, I would point out that Claim 12 does recite light-emitting diodes. [00:11:52] Speaker 04: Oh, does it? [00:11:53] Speaker 04: I missed that. [00:11:53] Speaker 04: Where is that? [00:11:54] Speaker 04: Oh, yeah, in the last element. [00:11:55] Speaker 04: OK, my bad. [00:11:57] Speaker 04: But the point I was trying to make, I could probably find some other example, is that not every sentence in the summary of the invention is imported into every claim. [00:12:05] Speaker 03: Correct. [00:12:06] Speaker 03: I think that is right. [00:12:07] Speaker 04: It would be different if it said, in the present invention, [00:12:09] Speaker 04: or in the invention as claimed. [00:12:12] Speaker 04: There are magic words that can absolutely trigger an element then being imported into claims. [00:12:19] Speaker 03: Correct. [00:12:20] Speaker 03: We agree with that. [00:12:21] Speaker 04: But the whole summary of the invention, we can't possibly go to a space where the whole summary of the invention is automatically imported into claims, right? [00:12:28] Speaker 03: I would agree with that, Your Honor. [00:12:29] Speaker 03: That would seem bad. [00:12:30] Speaker 03: I would agree. [00:12:31] Speaker 03: Particularly given the phrasing of this, where it is simply talking about features that are disclosed. [00:12:35] Speaker 03: rather than, as you said, an essential element of the President-Elect or any words that have been held sufficient. [00:12:41] Speaker 03: Finally, to return to the question that you asked initially, I'm not sure I finally was able to respond to it, as to whether some sort of attachment mechanism must be recited in the claim. [00:12:52] Speaker 03: I don't think that's true. [00:12:53] Speaker 03: I think of it in more simple terms. [00:12:56] Speaker 03: If you had a light bulb, a claim directed to a light bulb, I don't think it would be necessary, a conventional light bulb that had an Edison screw mount into a lighting apparatus, say, I don't think it would be necessary [00:13:05] Speaker 03: that the claim recite an editing screw mount or would be inoperable or somehow otherwise deficient. [00:13:12] Speaker 03: I think you are not obligated to claim every conceivable element of the device, and this claim recites a complete invention, albeit not one that specifies how it is secured into the lighting fixture. [00:13:26] Speaker 03: I would reserve the balance of my time. [00:13:40] Speaker 02: Good afternoon and may it please the court. [00:13:42] Speaker 02: My name is John Hintz. [00:13:43] Speaker 02: I'm with Maynard Cooper and Gale. [00:13:45] Speaker 02: With me is co-counsel Philip Roebner of the Potter Anderson firm. [00:13:49] Speaker 02: I'd like to begin in talking about the amendment in a couple of different aspects. [00:13:54] Speaker 02: The first would be that the amendment makes no sense. [00:13:56] Speaker 02: It makes no sense from a couple of different standpoints. [00:13:58] Speaker 02: First, there were no section 112 rejections, as the court has already recognized. [00:14:02] Speaker 02: Second, there is not a single word of support for the amendment in the specification. [00:14:07] Speaker 02: Council cannot point to anywhere where the [00:14:10] Speaker 02: Attachment surface is shown or described as being secured to the elimination surface. [00:14:15] Speaker 02: No one knows why the amendment was made, but it did not have the effect of changing what the invention is. [00:14:22] Speaker 02: The invention is, of course, determined by the claims. [00:14:25] Speaker 04: When you say no one knows why the invention was made, a skilled artisan would read the prosecution history. [00:14:30] Speaker 04: And the examiner is the one who fills out the examiner summary, correct? [00:14:34] Speaker 04: It's not even the applicant, so we can't suggest the patentee skewed this somehow. [00:14:37] Speaker 04: It's not the patentee's account, it's the examiner's account. [00:14:39] Speaker 02: Correct. [00:14:40] Speaker 04: And the examiner said this was made for 112 purposes. [00:14:43] Speaker 02: Yes. [00:14:44] Speaker 04: We don't know what his 112 issues were. [00:14:46] Speaker 04: There had been an interview, which is, of course, not transcribed or recorded, and that stinks. [00:14:50] Speaker 04: But he filled out that document. [00:14:53] Speaker 04: The examiner did. [00:14:54] Speaker 04: So wouldn't a skilled artisan read that and walk away with the understanding that I don't know what the examiner's 112 concerns were? [00:15:01] Speaker 04: But the examiner has clearly put on record in this prosecution history that he is requiring a change to these claims for 112 reasons. [00:15:09] Speaker 02: Yes, that is certainly what the record shows. [00:15:11] Speaker 02: But what we are not asking this court to do and what we did not ask the lower court to do is undo the change. [00:15:17] Speaker 02: Blackbird, in their brief, points out how both parties agreed down below, all parties agreed, what fastening mechanism would mean if it wasn't a means plus function element. [00:15:27] Speaker 02: Judge Andrews ruled it was not a means plus function element. [00:15:30] Speaker 02: Therefore, the parties agreed to what this language says. [00:15:33] Speaker 02: Fastening mechanism is for securing the attachment surface to the illumination surface. [00:15:38] Speaker 02: We are not arguing that that should be undone and the word illumination surface should be changed back to ballast cover. [00:15:45] Speaker 02: What we are arguing is that the retrofit aspect that all parties agree is in the preamble and is limiting has to be given some meaning in how this device, how this claimed invention is going to function. [00:15:59] Speaker 02: As Chief Judge, as you recognize, it has to attach to something. [00:16:02] Speaker 02: It's what Judge Andrews said as well. [00:16:04] Speaker 02: And if you'd step back and look at this from what [00:16:07] Speaker 02: The disclosure is you have two disclosures for apparatus. [00:16:12] Speaker 02: One is where the claimed apparatus already has a ballast cover on it with all the other features. [00:16:17] Speaker 02: You remove the ballast cover of the existing fixture and you replace it with the claimed apparatus. [00:16:22] Speaker 02: That's claim one. [00:16:22] Speaker 02: That's not an issue here. [00:16:24] Speaker 02: Claim 12 says you have this apparatus that you secure to the existing lighting apparatus. [00:16:30] Speaker 02: That's retrofit. [00:16:32] Speaker 02: How do you do that? [00:16:33] Speaker 02: Do you secure it with the LED bulbs pointing up to the ceiling so that they can't be visible? [00:16:39] Speaker 02: No. [00:16:40] Speaker 02: You do it the other way. [00:16:41] Speaker 02: You'd secure it by the attachment surface. [00:16:43] Speaker 02: That's what it's for, attaching. [00:16:45] Speaker 02: The lights then point downward. [00:16:47] Speaker 02: That's what Figure 5 shows. [00:16:49] Speaker 02: And we're not saying that Figure 5 is a preferred embodiment that you must incorporate into the claim. [00:16:53] Speaker 02: What we're saying is you look at the claim and look at the embodiments and look at the description and understand what that claim means. [00:17:01] Speaker 02: And we recognize that there are cases that this court decided that say the present invention or other magic words are important. [00:17:08] Speaker 02: I contend that the phrase the summary of the invention or summary of the invention is an important phrase. [00:17:15] Speaker 04: Wait, you think that every single thing in a patent that comes after the word summary of the invention is automatically imported into a client? [00:17:23] Speaker 02: No, and I'm very glad you asked me that. [00:17:24] Speaker 02: Because this patent, it is true. [00:17:27] Speaker 02: If your honor were to look at that summary [00:17:29] Speaker 02: The first several paragraphs line up with claim one. [00:17:31] Speaker 02: The next line up with some independent claims. [00:17:34] Speaker 02: The part we're looking at in column two, line 65, to column three, line seven, is claim 12. [00:17:40] Speaker 02: Everything matches. [00:17:43] Speaker 02: And then it goes on to the other independent and dependent claims. [00:17:45] Speaker 04: How in the world could I create a rule of law? [00:17:47] Speaker 04: Because I see lots of patents. [00:17:49] Speaker 04: I saw one with a summary of the invention the other day. [00:17:51] Speaker 04: What was it? [00:17:52] Speaker 04: Like seven, eight pages long. [00:17:54] Speaker 04: It was a pro se inventor who wrote his own patent. [00:17:56] Speaker 04: It was a disaster. [00:17:58] Speaker 04: That's not typical. [00:18:00] Speaker 04: Summary of the invention, it can't possibly become a rule of law that simply by virtue of something being in the summary of the invention, therefore, has to be imported into the claim. [00:18:08] Speaker 02: I agree completely, Your Honor. [00:18:09] Speaker 02: But I'm saying in this case, those words need to be given meaning. [00:18:13] Speaker 02: And this invention needs to be viewed from the disclosure. [00:18:15] Speaker 02: Why? [00:18:15] Speaker 04: If it's not the rule of law that having something in the summary of the invention, and if all of our cases say, they don't point to the fact just that something's in the summary of the invention. [00:18:25] Speaker 04: They point to the fact that it's in the summary of the invention, and it says, the essential element is. [00:18:30] Speaker 04: the present invention includes they make it clear all of those cases could have simply been resolved on the fact that this happened under the umbrella of the word summary of invention section and we wouldn't have needed to go further and point out that they had very specific language which pulled that element into the claims there's no specific language here that does that uh... i agree your honor and i believe patent practitioners understand that as well and i think few and far between are they now saying words like that when they're trying to get broad disclosures but in this case we believe that [00:19:00] Speaker 02: There is nothing, first of all, that supports the construction that Blackburn is proposing. [00:19:05] Speaker 02: I urge you to look for something that says how the fastening mechanism secures the attachment surface to the illumination surface. [00:19:13] Speaker 02: The drawings don't show it. [00:19:14] Speaker 02: The preferred embodiments don't show it. [00:19:16] Speaker 02: The summary of the invention never explains it. [00:19:18] Speaker 02: That construction cannot be correct. [00:19:20] Speaker 02: But we're not here to talk about enablement and written description. [00:19:24] Speaker 02: If we get remanded, that will be first and foremost. [00:19:26] Speaker 04: Just out of curiosity, doesn't [00:19:29] Speaker 04: Figure six or figure five actually. [00:19:32] Speaker 04: I think it's figure five. [00:19:35] Speaker 04: Figure five or figure six. [00:19:37] Speaker 04: Figure five. [00:19:40] Speaker 04: Actually disclose it because it shows an illumination surface 532 and an attachment surface 530 and it shows that they are attached to each other. [00:19:50] Speaker 04: So while the spec may not use those words, doesn't that figure demonstrate those two surfaces being attached to each other? [00:19:58] Speaker 02: They are two different sides of the housing. [00:20:00] Speaker 02: They are not attached to each other by the fastening mechanism, which is what is required in Claim 12. [00:20:06] Speaker 02: Fastening mechanism is 534. [00:20:07] Speaker 02: I see. [00:20:08] Speaker 02: And the court ultimately construed fastening mechanism to mean fastener. [00:20:14] Speaker 02: So we expect, and your honor is on the right course, we expect if we are remanded that Blackburn is going to take the position that those two vertical lines, which are the sidewalls of the housing, [00:20:24] Speaker 02: are the fastening mechanism. [00:20:25] Speaker 02: But there's clearly no support for that. [00:20:27] Speaker 02: In the figure, 534 is shown as double-sided tape. [00:20:30] Speaker 02: In the specification, there's a description of screws, magnets, and double-sided tape. [00:20:36] Speaker 02: So the two sidewalls of a four-walled housing cannot be the fastening mechanism in and of themselves based upon the description. [00:20:44] Speaker 02: But moreover, the court ultimately ruled below that fastening mechanism means fastener. [00:20:50] Speaker 02: And we heard some argument today about what a fastener is. [00:20:53] Speaker 02: And it's pretty clear what a fastener would be. [00:20:55] Speaker 02: And sidewalls of the housing would not be considered fastener. [00:20:58] Speaker 02: But that's not today's issue. [00:21:00] Speaker 02: But that is where we're headed if we go back on remand. [00:21:02] Speaker 02: And that is why, as I said earlier, we are not advocating rewriting the fastening mechanism element. [00:21:09] Speaker 04: While this patent may not disclose an illumination surface and an attachment surface that are joined together by a fastener, [00:21:19] Speaker 04: This isn't particularly complex technology. [00:21:21] Speaker 04: I mean, any guy that works at Home Depot probably has a pretty good mastery of this stuff. [00:21:27] Speaker 04: Wouldn't pretty much any skilled artisan know how you could join two surfaces together with a fastener? [00:21:35] Speaker 04: I mean, I guess you're saying, this is where we're going if we go back. [00:21:38] Speaker 04: And I'm saying, I don't think you have a prayer of winning that argument, because I think any skilled artisan would probably know that you could have two surfaces that could be joined together with a fastener, whether the fastener's a screw, a bolt, [00:21:48] Speaker 04: Heck, binder clips. [00:21:49] Speaker 04: I mean, just about anything could hold these two surfaces together. [00:21:53] Speaker 04: And so yes, they don't disclose an embodiment that is configured that way. [00:21:56] Speaker 04: But if a skilled artisan would readily know how to do it, I don't see how it would create a 112 problem. [00:22:02] Speaker 02: I submit to go to your issue of how we win. [00:22:06] Speaker 02: How we win is it has to be secured to the ballast cover. [00:22:09] Speaker 04: Oh, I see. [00:22:09] Speaker 04: Yeah. [00:22:10] Speaker 04: So you don't want to go back, because probably it's tough to win on that other argument. [00:22:14] Speaker 04: All right. [00:22:16] Speaker 02: As far as I'm trying to think from my notes what some of the other questions were, the Edison bulb example to me is a red herring. [00:22:24] Speaker 02: We all as lawyers in the court have heard many different examples that have brought up, but this is not the Edison bulb. [00:22:30] Speaker 02: Claim 12 talks about several specific things that need to be included in that claim. [00:22:36] Speaker 02: And for those things to be a part of the claim, they have to be enabled and they have to be supported by the written description. [00:22:41] Speaker 02: And we contend that the only thing [00:22:44] Speaker 02: that is enabled and the only thing supporting the written description that gives retrofit meaning is what we have said before, which is that the attachment surface is the thing that gets attached to the ballast cover to make this device function. [00:23:00] Speaker 04: I don't understand when you say it's the only thing that gives retrofit meaning. [00:23:03] Speaker 04: Everybody agreed that part of the preamble was a limitation, namely that this was a fixture that this was going to be for [00:23:13] Speaker 04: retrofit with an existing light fixture, this particular embodiment or claim apparatus was going to be working with a retrofit light fixture. [00:23:24] Speaker 04: Why doesn't, I don't understand, I'm confused. [00:23:28] Speaker 04: That has meaning in and of itself, regardless of whether you articulate the method of attaching this fixture to the retrofit light fixture. [00:23:37] Speaker 04: That is an independent element, which must be met, regardless of whether you say how it's going to be connected to each other. [00:23:44] Speaker 02: We submit, Your Honor, that Blackboard is correct. [00:23:47] Speaker 02: And I believe the Court mentioned earlier that there is nothing that requires a claim to contain all the embodiments and all the ways of doing something. [00:23:54] Speaker 02: But there is an absolute requirement that when something is claimed, that that thing has to be present for infringement, that thing has to be present for written description, that thing has to be present for enablement. [00:24:04] Speaker 02: And here, the retrofit thing are the two embodiments that I described earlier. [00:24:08] Speaker 02: One, where the ballast cover is already a part of the claimed invention, an existing ballast cover is removed, and the entire invention is put on the existing fixture. [00:24:17] Speaker 02: The second, which is claimed 12, is the ballast cover remains in place, and the claimed invention is somehow secured to the existing lighting fixture, the retrofit. [00:24:29] Speaker 02: And how that is done is by the attachment surface [00:24:31] Speaker 02: being secured to the ballast. [00:24:33] Speaker 04: That's the problem. [00:24:35] Speaker 04: The problem is you don't just want to limit this claim to a particular embodiment that has to be utilized with an existing light fixture and a ballast cover. [00:24:45] Speaker 04: You want to limit this claim to an existing embodiment that has to be used with a retrofit light fixture with a ballast cover and joined to that in a particular way. [00:24:54] Speaker 04: That's what you want to do. [00:24:56] Speaker 02: We are not saying it has to be joined in a particular way in terms of the way the fastener has to be used or what type of fastener has to be used. [00:25:01] Speaker 04: I don't understand. [00:25:02] Speaker 04: Just out of curiosity, what do you all do? [00:25:04] Speaker 04: I mean, do you not have a ballast cover? [00:25:06] Speaker 02: This is a very interesting case in that regard. [00:25:10] Speaker 02: I would not have brought it up when I'm very glad that you asked. [00:25:13] Speaker 02: What we do is we sell tube-shaped light bulbs, fluorescent light bulbs. [00:25:17] Speaker 04: Like my piano bulb. [00:25:18] Speaker 04: Got it. [00:25:19] Speaker 02: that are configured, you take out an existing bulb and you put in our bulbs. [00:25:23] Speaker 02: We don't do anything with ballast covers. [00:25:25] Speaker 04: Well, you're about to have connectors on both ends. [00:25:26] Speaker 02: Correct. [00:25:26] Speaker 04: So it's not like my panel light bulb. [00:25:28] Speaker 04: Well, we have connectors, the two-pin connectors. [00:25:30] Speaker 04: No, the current goes through. [00:25:32] Speaker 04: Got it. [00:25:32] Speaker 04: All right, keep going. [00:25:33] Speaker 04: So you have this bulb. [00:25:34] Speaker 02: You take out the old bulbs. [00:25:36] Speaker 02: I mean, this courtroom does not have the two bulbs, but you take out the two bulbs. [00:25:41] Speaker 04: Sorry, but those two bulbs are not great on your eyes. [00:25:44] Speaker 02: But that's what our clients sell. [00:25:46] Speaker 02: They're the ones that have LEDs inside of them. [00:25:48] Speaker 02: So our tubes have LEDs inside. [00:25:51] Speaker 02: But we're getting onto the non-infringement and infringement arguments. [00:25:55] Speaker 04: I want to know. [00:25:56] Speaker 04: I want to know how in the world you have a ballast cover. [00:26:01] Speaker 02: We don't. [00:26:02] Speaker 04: You don't have a ballast cover. [00:26:03] Speaker 02: We don't remove the ballast cover. [00:26:04] Speaker 02: We say we don't attach to the ballast cover because we just plug in. [00:26:07] Speaker 02: But do you have the ballast cover? [00:26:08] Speaker 02: The existing fixture does have a ballast cover, yes. [00:26:10] Speaker 02: Our products do not. [00:26:11] Speaker 02: Our products are light bulbs. [00:26:17] Speaker 04: You have a housing having an attachment surface? [00:26:19] Speaker 02: We don't believe we have a housing. [00:26:21] Speaker 04: You don't have a housing? [00:26:22] Speaker 04: Well, if you don't have any of that stuff, I don't see what the problem is, why you're so hung up on whether or not the attachment surface fixture or fastener mechanism is pulled into this claim or not through the words attachment means. [00:26:34] Speaker 04: It seems like what you're describing, you've got a multitude of other non-infringement arguments. [00:26:41] Speaker 02: We do, Your Honor. [00:26:42] Speaker 02: But we were, as I say, we were constrained by what this patent says. [00:26:46] Speaker 02: We don't believe that this amendment makes any sense. [00:26:49] Speaker 02: We don't believe it's enabled. [00:26:50] Speaker 02: But we had to live in the Markman context with what this patent says. [00:26:54] Speaker 02: We were not able to present non-imprisonment arguments. [00:26:57] Speaker 04: When you say you don't believe it's enabled, I mean, how can you say that? [00:27:00] Speaker 04: I mean, I hear you. [00:27:01] Speaker 04: And don't answer it, because I don't want to lock you into something he's going to quote below, if this goes below. [00:27:06] Speaker 04: But I mean, I don't know how you can say that. [00:27:09] Speaker 04: It says a fastening mechanism for securing two sides of a surface to each other. [00:27:13] Speaker 04: It doesn't seem that complex as far as enablement goes in light of the simplicity of the technology, even though there may not be an embodiment discourse that does that. [00:27:22] Speaker 04: So I don't answer. [00:27:23] Speaker 04: That's not even a question. [00:27:24] Speaker 04: Keep going. [00:27:24] Speaker 04: Say whatever you want. [00:27:26] Speaker 02: All right. [00:27:27] Speaker 02: Well, I feel compelled to talk a little bit more about the amendment, because I want to make clear. [00:27:32] Speaker 02: I think I've made clear that we are not asking to reinsert what was taken out. [00:27:36] Speaker 02: But what I also want to make clear is that the cases of laryngeal mask and decisioning [00:27:43] Speaker 02: inform what should be done here. [00:27:45] Speaker 02: In laryngeal mask and decisioning, there were claim elements that were removed, and people were asking to put them back in. [00:27:50] Speaker 02: And the court said, of course, we're not going to do that. [00:27:53] Speaker 02: But in both cases, the court did not stop right there. [00:27:55] Speaker 02: The court said, we still need to look at the specification. [00:27:58] Speaker 02: We still need to determine what this claim means. [00:28:00] Speaker 02: And in decisioning, in particular, a per curiam decision, the court said, OK, the word kiosk was taken out. [00:28:07] Speaker 02: There's nothing that requires this method or this apparatus, I'm sorry, for applying for credit [00:28:13] Speaker 02: credit cards, there's nothing about it that requires it being a kiosk. [00:28:18] Speaker 02: But when they went to determine what the word remote interface meant, the court said, well, it can't be a person's personal computer because that's not out and publicly available like a kiosk would have been. [00:28:29] Speaker 02: They didn't say you put the word kiosk back in the claim. [00:28:33] Speaker 02: But what the court said is you look to what the invention was. [00:28:36] Speaker 02: And here the invention is not other than what we've described. [00:28:41] Speaker 02: The invention is attaching this lighting apparatus to the ballast cover of an existing fixture. [00:28:46] Speaker 01: Thank you. [00:28:46] Speaker 02: Thank you. [00:28:56] Speaker 03: So briefly, Your Honor, as to what these bulbs are and how they fit into a light fixture, because I think it's helpful and informs the clean construction issue. [00:29:04] Speaker 03: So these are retrofit LED bulbs, retrofit in the sense that they replace or are for retrofit with [00:29:10] Speaker 03: fluorescent light fixtures. [00:29:12] Speaker 03: That is the retrofit nature. [00:29:13] Speaker 03: So a fluorescent light fixture is something with a ballast. [00:29:17] Speaker 03: And the ballast is the electronic component that controls the current going to a fluorescent bulb. [00:29:22] Speaker 03: And the ballast cover is the aesthetic cover over that component. [00:29:26] Speaker 03: And that's what renders these bulbs retrofit. [00:29:28] Speaker 03: It is not how they attach. [00:29:30] Speaker 03: It is just that they are bulbs for use with a fluorescent lighting fixture. [00:29:35] Speaker 03: That is the retrofit nature of them. [00:29:37] Speaker 03: I would point out that almost all Defendants products, and this is not in the record, and I [00:29:40] Speaker 03: won't spend time with it, but are called retrofit LED bulbs. [00:29:44] Speaker 03: And that is what this technology is about. [00:29:48] Speaker 03: In terms of the summary of the invention. [00:29:49] Speaker 04: You're upgrading fluorescent bulbs with LED bulbs because they save electricity, they're better on the eyes, and that's what this whole retrofit, that's the purpose of this invention, basically. [00:30:00] Speaker 03: Correct. [00:30:03] Speaker 03: The purpose of the invention was recited in Claim 12, yes. [00:30:06] Speaker 00: You're not replacing the fluorescent bulbs, right? [00:30:09] Speaker 00: You're adding two of them. [00:30:11] Speaker 03: The embodiments recited in the specification add to them. [00:30:14] Speaker 03: Claim 12, I don't think, requires that they be removed or that they continue to be there. [00:30:19] Speaker 03: It recites the lighting apparatus for retrofit. [00:30:22] Speaker 00: So the LED bulbs are for safety purposes or lower light, lower power, but mainly for safety, correct? [00:30:31] Speaker 00: If the power goes out, these bulbs come on? [00:30:33] Speaker 03: That's one of the embodiments recited in the specification. [00:30:35] Speaker 04: That's correct. [00:30:36] Speaker 04: Wait a minute. [00:30:37] Speaker 04: Retrofitting an existing light fixture. [00:30:41] Speaker 04: An existing light fixture is only going to have so many holes for bulbs, right? [00:30:47] Speaker 03: Yes. [00:30:49] Speaker 04: So you've got to be talking about taking some of the fluorescent bulbs away and installing LED bulbs in place of them. [00:30:58] Speaker 03: I think generally you would be talking about that, but I don't think the claim is written to require that or to address that. [00:31:04] Speaker 04: Well, there's nothing in the claim that suggests we're going to [00:31:07] Speaker 04: add whole new housing fixtures for additional lights, and that would seem inconsistent with the word retrofit. [00:31:16] Speaker 04: I mean, the retrofit, doesn't it imply that you're taking away something and putting something new in? [00:31:24] Speaker 03: I don't think, I wouldn't agree that it necessarily implies that. [00:31:27] Speaker 03: I think the agreed construction of the preamble, which I think is a relevant limitation for this, is that the bulb is for installation in. [00:31:37] Speaker 03: a lighting fixture that has a balanced cover. [00:31:41] Speaker 03: I think something can be for installation in it in many ways. [00:31:43] Speaker 04: It's for installation in an existing lighting fixture. [00:31:48] Speaker 04: An existing lighting fixture has a predetermined number of slots for light bulbs to be inserted into, correct? [00:31:53] Speaker 04: Correct. [00:31:56] Speaker 04: Go ahead, move on. [00:31:57] Speaker 03: I take your point, but my point is I don't think that's a limitation of the claim that there's no requirement that the user [00:32:05] Speaker 03: remove the bulge to infringe this claim. [00:32:07] Speaker 03: I think this is an apparatus claim that is infringed by the limitations, and so forth. [00:32:13] Speaker 04: Well, an apparatus claim is infringed by the capability. [00:32:15] Speaker 04: So you don't have to actually perform the method to get infringement. [00:32:19] Speaker 03: Correct. [00:32:20] Speaker 03: I do not disagree. [00:32:22] Speaker 03: Finally, one final point. [00:32:26] Speaker 03: My colleague pointed out that even though perhaps not always the summary of the invention should control, it should control here, because it precisely matches the claim. [00:32:35] Speaker 03: the language set forth in there precisely matches the claim, but that's not the case. [00:32:40] Speaker 03: After the amendment, the language set forth in the relevant portion of the summary invention session does not match the claim because the claim does not recite a fastening mechanism for securing the attachment surface of the lighting apparatus to the ballast cover. [00:32:53] Speaker 03: I think that's what makes the amendment so relevant here. [00:32:57] Speaker 03: It would be highly appropriate to read in that limitation to the claim when it has been specifically removed by amendment [00:33:04] Speaker 03: And that's what I think makes that portion of the summary of the invention section non-limiting with respect to claim 12. [00:33:15] Speaker ?: Thank you. [00:33:15] Speaker ?: Thank you.