[00:00:00] Speaker 03: We have two cases on the calendar this morning, both patent cases from district courts. [00:00:14] Speaker 03: And the first one is Continental Circuits versus Intel et al., 2018, 1076, and 1103, Mr. Lampton. [00:00:37] Speaker 01: Thank you and may it please the court. [00:00:39] Speaker 01: I'd like to reserve five minutes for rebuttal if I may. [00:00:43] Speaker 01: The invention here addresses a problem of delamination through a unique surface structure. [00:00:48] Speaker 01: Teeth are fangs that dig into the next layer that prevent them from pulling apart unless you break the teeth. [00:00:54] Speaker 01: The claims and the specification detail that structure really. [00:00:57] Speaker 01: For example, claim 100 and claim 122 of the 580 patent specify the depth [00:01:04] Speaker 01: In terms of mils, we specify the up angle required. [00:01:08] Speaker 01: And the dependent claim 122 describes the density of the teeth required. [00:01:12] Speaker 03: This appeal is generally about desmearing, right? [00:01:17] Speaker 03: Double or single? [00:01:18] Speaker 01: No, the appeal is actually about teeth. [00:01:20] Speaker 01: And we think the patent's about teeth. [00:01:21] Speaker 01: And the question is whether you would read into the claim a requirement that you perform desmears, and in particular, read into them a requirement of a double desmear. [00:01:30] Speaker 03: Then I think we'd be able to- Can I count at least four places in the specification [00:01:35] Speaker 03: where it talked about double desmearing in comparison, in contradistinction to the prior art's single desmearing. [00:01:45] Speaker 03: So why was it wrong for the district court to interpret the claim to mean double desmearing? [00:01:52] Speaker 01: I think there's no doubt that the specifications in explaining ways, one technique, for making those teeth refers to specific compositions, things like Shipley-Crimson materials and the [00:02:04] Speaker 01: Ziba-Gaigi product, Probelec XB7081. [00:02:07] Speaker 01: And it says with those particular materials, there's no doubt it says you're not gonna achieve the teeth. [00:02:13] Speaker 01: They won't come about unless you use them in an off-label kind of way. [00:02:16] Speaker 01: They're usually meant for a single pasty smear. [00:02:18] Speaker 01: Unless you do a double pasty smear, you don't take advantage of the non-homogeneities in order to produce these teeth, the cavities of unusual shape that'll hold them together. [00:02:29] Speaker 01: And I think that's actually clear from each of the specific mentions. [00:02:33] Speaker 01: And there's only one that I think is even close to ambiguous. [00:02:35] Speaker 01: But I should walk through that. [00:02:37] Speaker 02: That's the one at the bottom of column 8, top of column 9. [00:02:40] Speaker 01: Yes, actually that is the one that I think is potentially ambiguous. [00:02:43] Speaker 01: And I could start there if you would like, Judge Tarantino. [00:02:47] Speaker 01: But I think that one, to read that one, you have to look at it in the context of the two sentences that precede the one that's being relied on. [00:02:54] Speaker 01: Because it starts out and says, the following process sub-steps, and this is column 8 around line 42. [00:03:01] Speaker 01: The sub-steps of the above mentioned step six describe a generic sequence for AD smear process deformed cavities. [00:03:08] Speaker 01: So we're describing AD smear process deformed cavities, not the claimed or the only way to do that. [00:03:14] Speaker 01: The other thing is it mentions, and this turns out to be important, it says of the above mentioned step six. [00:03:19] Speaker 01: That seems innocuous when you look at it first, but that's a cross-reference all the way back to column five. [00:03:24] Speaker 01: Because column five, around line 37, says step six [00:03:30] Speaker 01: as subsequently discussed in greater detail. [00:03:33] Speaker 01: So column eight is the greater detail that's being promised in column five. [00:03:37] Speaker 01: Involves the etching of cavities, veins, et cetera, to accommodate the teeth. [00:03:42] Speaker 01: And then it continues. [00:03:43] Speaker 01: One technique for forming the teeth is somewhat similar to what has been known as the swell and etch or desmere process, except that contrary to all known teachings of prior art, in effect, a double desmere is utilized. [00:03:54] Speaker 01: So that's merely one technique. [00:03:57] Speaker 01: There's no doubt that each of these statements is describing [00:03:59] Speaker 01: a technique, one way to bring out the clean teeth. [00:04:02] Speaker 01: The question is, do they go further? [00:04:04] Speaker 01: Do they actually come out and say, the only way, read into the entire invention a particular way of achieving them. [00:04:10] Speaker 01: And that particular way is the double D smear. [00:04:12] Speaker 04: Mr. Lamkin, if we agree with you, do you have an enablement problem? [00:04:20] Speaker 01: No, Your Honor. [00:04:20] Speaker 01: I think it's entirely enabled. [00:04:22] Speaker 01: Because to enable, you only need to enable one mode. [00:04:25] Speaker 01: And that's clear. [00:04:26] Speaker 01: And the particular mode that is so evidently enabled here, that there's actually [00:04:30] Speaker 01: gratuitous and frankly devastatingly strong detail is that double de-smear. [00:04:34] Speaker 01: You don't have to enable everyone. [00:04:36] Speaker 01: The guy who invented the structure we call Velcro probably only disclosed one mode of making it. [00:04:41] Speaker 01: And I'm sure that people really improved upon that. [00:04:43] Speaker 01: They made it cheaper and better. [00:04:45] Speaker 01: And those may have been separately patentable. [00:04:47] Speaker 04: But that doesn't... If your claims are not limited to a double de-smear process, then you have to enable the full scope of the claims. [00:04:57] Speaker 01: So I think if we were going to deal with, I think it is actually enabled. [00:05:01] Speaker 01: Each of them is enabled because we actually do say right in the summary of invention other ways as the best modes. [00:05:07] Speaker 01: But that's for another day. [00:05:08] Speaker 01: Enablement is not the way one reads the invention. [00:05:11] Speaker 01: The invention is based on the specification and more importantly, the claims, which nowhere have a double decent process. [00:05:17] Speaker 02: Just one question following up on the enablement point. [00:05:21] Speaker 02: I realize we don't have the enablement issue here, but conceivably, [00:05:25] Speaker 02: At least conceivably, there might be a difference between the product claims and the process claims for enablement. [00:05:32] Speaker 02: Because the product claims, as long as you teach one way to make it, you've made the whole thing. [00:05:36] Speaker 02: At least a scope of enablement question arises about a process. [00:05:40] Speaker 01: I think that may be a fair issue for any issue on remand for enablement. [00:05:43] Speaker 01: But what we have now is just a simple claim construction question, which really should be based on what do the claims say? [00:05:50] Speaker 01: And what does the specification tell you about the meaning of the claims? [00:05:53] Speaker 01: And there's just no word anywhere in the claims that says, surface means double desmeared surface. [00:05:58] Speaker 01: There's nothing that says that. [00:06:00] Speaker 01: And continuing on with column 8, I think, which is kind of the most important piece, it goes on in the second sentence as, although Probalac XB7081, that's that Seba Gagi product that's not homogeneous, apparently was intended for use in the common desmear, swell, and etch process as used in conventional plated through-hole plating lines. [00:06:17] Speaker 01: So we're talking there saying, this is the on-label use. [00:06:20] Speaker 01: The ordinary use of this particular thing, Probelect XB7081, is to go through and do a single v-snear. [00:06:27] Speaker 01: And it says, but Probelect XB71 can alternatively be used in carrying out the present invention. [00:06:32] Speaker 01: So it's one way. [00:06:33] Speaker 01: It's one surface, one epoxy, one resin. [00:06:36] Speaker 01: It'll actually work. [00:06:37] Speaker 01: And then we get to the next sentence. [00:06:38] Speaker 01: And this is where the ambiguity comes in. [00:06:40] Speaker 01: Because at this point, we're only talking about the one technique that we began discussing back in column five. [00:06:46] Speaker 01: It says, for example, the present invention differs from the common desmere process in that sub-steps in the desmere process are repeated as a way of forming the teeth. [00:06:56] Speaker 01: Now, it says repeat sub-steps, not repeat every one of the steps in a desmere. [00:07:01] Speaker 01: And it says it's a way of forming the teeth, not the only way, not the claimed way, not the exclusive way, not the invention. [00:07:09] Speaker 01: And I think read properly in its context, this sentence doesn't come close to saying, [00:07:14] Speaker 01: It's clear we intend to make this particular way of doing it a limitation on the invention as a whole. [00:07:21] Speaker 01: It's merely saying, if you're dealing with Probelec, if you're dealing with this particular way of doing it, we're gonna need to do a second, we can't go on label, we have to go off label, we gotta do it differently, and we're gonna have to do two passes. [00:07:31] Speaker 01: Because if you don't do the second pass, you're not gonna get the teeth, and you're not gonna get the adhesion. [00:07:36] Speaker 01: You also won't infringe on the patent, because you're not gonna have the surface structure that's claimed, but you don't get the invention if you don't do it that way with Probelec. [00:07:44] Speaker 01: I think it's actually particularly clear if you go all the way back to the summary of the invention. [00:07:48] Speaker 01: And the summary of the invention is the thing that describes the invention as a whole. [00:07:51] Speaker 01: It's the most likely thing to describe it. [00:07:53] Speaker 01: Not a single embodiment, not a single way of making it, but the invention as a whole. [00:07:57] Speaker 01: And the summary of the invention doesn't say double de-smear at all. [00:08:02] Speaker 01: It says actually the opposite. [00:08:04] Speaker 01: It goes through for five paragraphs, it describes the teeth in detail, it talks about their depth, their angle, the density, [00:08:11] Speaker 01: how deep they should go without causing any damage to the lower layer. [00:08:17] Speaker 01: And then the next thing it says, it says theorize that the best mode of achieving this is to use non-homogeneous materials. [00:08:26] Speaker 01: So we're talking functioning right on the focusing and on the structure of things like probiotic, your resin. [00:08:31] Speaker 01: And that's actually consistent back with column five where it says, and this is around line 50, non-homogeneous materials and or processes seem to be determinative. [00:08:41] Speaker 01: Non-homogeneous materials seem to be determinative. [00:08:43] Speaker 01: At no point in the spec is it gonna say that a double D smear seems to be determinative. [00:08:49] Speaker 01: Backing up to some reinvention, it says non-homogeneous materials are used because you can take advantage of that non-homogeneity by, and cause an uneven etching, by either doing a slow and or repeated etch. [00:09:07] Speaker 01: A swelled etch, a slowed etch, is not a double D smear. [00:09:11] Speaker 01: The etch itself is only one step in a desmere. [00:09:13] Speaker 01: And a repeated etch isn't a double desmere either. [00:09:17] Speaker 01: The etch is admittedly one of the six steps in the desmere process. [00:09:21] Speaker 01: So it can't be possible to read that summary of invention as saying, hey, the best way to achieve it is a double desmere. [00:09:27] Speaker 01: Slowed etch, not a double desmere. [00:09:29] Speaker 01: It's slowing down one step in a potential desmere. [00:09:32] Speaker 01: Repeated etch, not a double desmere. [00:09:35] Speaker 01: It's repeating one step in the process of a desmere. [00:09:38] Speaker 01: If you kind of tried to read the etch as a de-smear, you'd end up with a circularity problem because later on it says the de-smear has six steps, one of them etching. [00:09:46] Speaker 02: Can I change the subject before your opening time runs out? [00:09:51] Speaker 01: Yes, okay. [00:09:52] Speaker 02: Just ask you something about, confirm something for me with the prosecution history. [00:09:58] Speaker 02: which conceivably might not be enough to meet that really quite high standard to disallow that we probably have operating in this case, because there's no ambiguity of any term in any claim that's being resolved. [00:10:11] Speaker 02: It's just override the claim terms. [00:10:14] Speaker 02: Do I understand right that Intel's argument [00:10:18] Speaker 02: about the prosecution history relied only on paragraph seven of Dr. Wong, not on what your, what the inventors of the Continental said in making its argument about paragraph seven. [00:10:35] Speaker 02: I looked in [00:10:37] Speaker 02: the two marking briefs and then the red brief and I don't see them relying on anything except paragraph seven all by itself which the district court also mentioned and didn't mention anything about your argument based on that. [00:10:52] Speaker 01: Judge Toronto that's consistent with my understanding but I'm not absolutely positive about that answer and so I don't want to say with clarity but I think it's very clear though that when Dr. Wong said that it is a technique he wasn't saying that it's the only technique it's the same exact language of one way for doing it [00:11:07] Speaker 01: and at risk of dipping into my rebuttal, it's important because the reason there was a rejection was the examiner, this is on page 21, 23, said, it's unclear as to how epoxy uses non-homogeneity with the solid content. [00:11:21] Speaker 01: That's the little picture on page 12 of our brief that explains that. [00:11:24] Speaker 01: And Dr. Wan responds and says, look, a technique for doing it is to do two passes. [00:11:29] Speaker 01: And the reason that works is that one pass takes out some of those chunks, and the second pass makes it go digger, it goes deeper. [00:11:36] Speaker 01: And as he said, he says, [00:11:38] Speaker 01: It expands open and created by the first pass, quote, making the structure shown in Figure 1 and recited in the claims. [00:11:44] Speaker 01: It's the structure in Figure 1 that's being mentioned. [00:11:47] Speaker 01: It's the structure that's in the recited claims. [00:11:49] Speaker 01: And it's the structure that we are pursuing in this suit. [00:11:52] Speaker 01: We accordingly ask for the judgment of this report to be reversed. [00:11:55] Speaker 01: Thank you. [00:11:57] Speaker 03: All the time, Mr. Lampton. [00:12:01] Speaker 03: Is it Mr. Mueller or Mueller? [00:12:03] Speaker 00: Mueller, Your Honor. [00:12:04] Speaker 00: Mueller, all right. [00:12:06] Speaker 00: May I please, Your Court, may I proceed? [00:12:08] Speaker 00: Your Honor, with my colleague Kevin Goldman today, I'm here on behalf of Intel and the EBITDA defendants. [00:12:14] Speaker 00: I'd like to start where Judge Lurie began this argument. [00:12:18] Speaker 00: This is about whether the patent claims cover a single-dismere process and products created using a single-dismere process or not. [00:12:26] Speaker 00: That's the issue. [00:12:28] Speaker 00: And although the plaintiff is asserting plain meaning, that's really a label used to refer to coverage of single, [00:12:37] Speaker 00: has the smear and products created using it. [00:12:40] Speaker 02: I'm sorry. [00:12:40] Speaker 02: That's not right. [00:12:41] Speaker 02: The doctrinal point is that when the words of the claim are not even asserted to be ambiguous in the respect that issue, a specially high standard has to be met to find in the spec something that overrides that plain meaning. [00:12:58] Speaker 02: It's a part of a doctrinal point. [00:13:00] Speaker 02: Let's call it clear disavowal. [00:13:01] Speaker 02: Sometimes manifest disavowal, maybe not express disavowal, but it has to be clear. [00:13:07] Speaker 02: And that's what you have to find in the spec or the prosecution history. [00:13:11] Speaker 00: That's right, Your Honor. [00:13:11] Speaker 00: And it couldn't be clearer here. [00:13:13] Speaker 00: And because it couldn't be clearer, the patents don't cover single pass to smear. [00:13:18] Speaker 00: The judge in this case recognized exactly what you said, that there's an exacting standard that needs to be met before claims can be limited in the fashion that we argued they should be limited. [00:13:28] Speaker 00: And he found that exacting standard to be satisfied in this case based on multiple statements. [00:13:33] Speaker 04: And these- What about this statement in column two, lines 25 to 30, that talks about, you know, it's theorized that the best method is to use non-homogeneous materials and techniques, et cetera, that talks about using those kinds of materials with a slow and or repeated etching, not desmearing, [00:14:02] Speaker 04: will form these Ts instead of a uniform etch. [00:14:07] Speaker 04: I mean, that seems to me a pretty clear statement that's directly contrary to what you're arguing. [00:14:15] Speaker 00: It's not. [00:14:16] Speaker 00: And here's why. [00:14:17] Speaker 00: The first is the use of the word slowed in that sentence is the one and only use of the word slowed in the entire patent specification. [00:14:26] Speaker 00: And further statements in the patent specification teach us precisely what these claims cover and do not cover. [00:14:33] Speaker 00: And in particular, on the question of slowing, in column five, line 40 through 47, the patent states, in the final sentence, that is not merely increasing the times and temperatures and other parameters for the dismere process, but instead completing the process a second time. [00:14:50] Speaker 00: So we have a teaching away from adjusting the time and slowing it down. [00:14:55] Speaker 00: And there's not a sentence in this entire specification [00:14:58] Speaker 00: in which there's a teaching of how to slow down any aspect of a disappear process as compared to the prior art. [00:15:04] Speaker 04: But column five is talking about a particular embodiment, whereas column two is making a broader statement about the invention as a whole. [00:15:14] Speaker 00: Your Honor, we believe that that statement in column two refers to repeated etching in the second portion of that sentence. [00:15:21] Speaker 00: And the first part, referring to the word slowed, again, is the only stray reference to the word slowed [00:15:26] Speaker 00: in the entire specification. [00:15:28] Speaker 04: It's not straight. [00:15:30] Speaker 04: It's there. [00:15:31] Speaker 04: It's there, and it's in the summary of the invention. [00:15:34] Speaker 00: It is straight, Your Honor, in the sense that there's no teaching anywhere in the specification as to slow it down as compared to the prior art. [00:15:40] Speaker 00: And I would note, for example, in Column 7, Lines 3 through 7, Patton states, accordingly, the peel strength produced in accordance with the present invention is greater than the peel strength produced by the dismere process of the prior art. [00:15:56] Speaker 00: i.e., a single-passed-dismere process. [00:16:00] Speaker 00: i.e., it doesn't say a fast-dismere process. [00:16:04] Speaker 00: It doesn't say a dismere process that occurs less slowly than the one that we're claiming. [00:16:09] Speaker 00: It says a single-passed-dismere process and draws a distinction to the present invention, not just an embodiment, the present invention. [00:16:18] Speaker 00: And if that word clear enough, in column 8, lines 49 to 52, Patent States, in describing the use of the Proble Act, [00:16:26] Speaker 00: and how it can be used in the present invention. [00:16:28] Speaker 00: For example, the present invention differs from the common disappear process in that sub steps in the disappear process are repeated as a way of forming the teeth. [00:16:38] Speaker 00: And then in column nine, lines one through five. [00:16:43] Speaker 02: To say that the present invention creates a greater peel strength than a single desmear process of the prior art is not to limit the present invention to more than one desmear. [00:16:55] Speaker 02: It just says, what we are doing, whatever that may be, is better than that. [00:17:00] Speaker 00: But you know, what I would say is this, the last part of that sentence is critical. [00:17:03] Speaker 00: It defines the prior art as a single past-to-smear process. [00:17:06] Speaker 00: It uses the word IE. [00:17:07] Speaker 00: It says IE, a single past-to-smear process. [00:17:10] Speaker 02: That's true as a description of the prior art. [00:17:12] Speaker 00: That's right. [00:17:12] Speaker 02: But its complement is not limited to a double these mere processes. [00:17:18] Speaker 00: Well, Your Honor, if there's any ambiguity on that, in column nine, lines one through five, the patent states, in stark contrast with the etch and swell process of the known prior art, however, [00:17:29] Speaker 00: A second pass through the process, sub-steps A through F is used. [00:17:36] Speaker 00: In stark contrast with the etch and swell process of the known prior art, however, a second pass through the process, sub-steps A through F is used. [00:17:47] Speaker 02: The second pass seems to me- I think Mr. Lamkin's point is that all of that discussion, in fact, refers back to the original what's called five or something discussion of an embodiment involved. [00:17:59] Speaker 02: Let's take some old material and we'll do something using that old material that's different. [00:18:04] Speaker 02: And so it's a continuation of that description of embodiment, not something more general. [00:18:08] Speaker 00: Let's say a couple things. [00:18:09] Speaker 00: First of all, the term that's used is not in an embodiment. [00:18:11] Speaker 00: It's the present invention. [00:18:13] Speaker 00: Second, that section of the patent is the detailed description of the drawings. [00:18:17] Speaker 00: not a preferred embodiment section, the drawings are being used to illustrate the present invention. [00:18:21] Speaker 00: Third, there is no embodiment in this patent, none, in which there's a description of slowing down any aspect of this process to arrive at the claimed structures. [00:18:31] Speaker 02: But haven't we said in the particular context of where a clear disavowal is needed in Thorner that the fact that the [00:18:40] Speaker 02: specification describes just one preferred embodiment is not itself enough to meet that standard? [00:18:47] Speaker 00: It's not alone, Your Honor. [00:18:47] Speaker 00: If there were just a description of the double-dismere, but no distinction drawn with the prior art, if there were no criticism of the prior art, this would be a different case. [00:18:56] Speaker 00: That's not what we have here. [00:18:58] Speaker 00: We have not only a single embodiment, but a single embodiment which is given the label, the present invention. [00:19:03] Speaker 00: And not only the present invention, it's drawn, there's a distinction drawn between that present invention and the prior art. [00:19:09] Speaker 00: And it says, in stark contrast with the etch and swell process of the known prior art, a second pass is used. [00:19:17] Speaker 03: Of course, we have to look at the claims, too. [00:19:18] Speaker 03: We have to look at the claims first, of course. [00:19:21] Speaker 03: And a lot of these claims are device claims, not method claims, where the issue is more prominent as to whether it's single or double. [00:19:33] Speaker 00: Three points on that, Your Honor. [00:19:34] Speaker 00: The first is the invention as described in this patent throughout is based on the intertwining of process and the products created by that process. [00:19:42] Speaker 00: The very first sentence after the description of which continuation application this particular patent came from states, and I'm at column one, line 13 through 15, the very first sentence. [00:19:53] Speaker 00: The present invention is directed to methods for making or manufacturing an electrical device and the process, composition, and products thereof. [00:20:01] Speaker 00: Thereof, that is to say using these methods [00:20:04] Speaker 00: That's the first point. [00:20:05] Speaker 00: Second is there's language in all of the claims that refer in some form or fashion to process. [00:20:10] Speaker 00: Now it's true that some of the process steps that are referred to in the product claims refer to conductive layer versus dielectric layer. [00:20:18] Speaker 00: But all of them refer in some form or fashion to processes which are used to create these products. [00:20:23] Speaker 04: So your contention is that the structure claims are product by process claims? [00:20:30] Speaker 00: That's right, Your Honor. [00:20:31] Speaker 00: And I think that's clear from the specification. [00:20:33] Speaker 00: It's clear from claim language. [00:20:35] Speaker 00: And there's more to it than that, Your Honor. [00:20:37] Speaker 00: For further confirmation that these are, in fact, product by process claims, we can look to the declaration that was submitted by the applicants. [00:20:44] Speaker 00: Judge Toronto, to your question, we are not just relying on the declaration in paragraph seven, but the applicant's arguments about that declaration. [00:20:51] Speaker 02: So I looked at least at your two Markman briefs. [00:20:54] Speaker 02: I didn't see any citation. [00:20:57] Speaker 02: the applicant's arguments, and I'm not sure I saw any on your pages 23 to 22 to 24 or whatever those pages are. [00:21:04] Speaker 00: We did brief it below, Your Honor. [00:21:06] Speaker 00: And our brief to Your Honor's is at pages 38 and 39. [00:21:09] Speaker 00: And the portions of the joint appendix that include the applicant's statements begin at page 2069, the Remarks Accompany a Claim Amendment. [00:21:19] Speaker 00: And in that, at page 2069, the applicant stated. [00:21:22] Speaker 02: I'm sorry. [00:21:22] Speaker 02: Show me, can you point to me where in your two markman briefs below? [00:21:26] Speaker 02: you relied on anything except paragraph seven of the Wong Declaration, which wasn't even submitted for purposes of indefiniteness. [00:21:36] Speaker 02: It says, I'm only addressing written description, though it was then used by Continental for an indefiniteness point. [00:21:42] Speaker 00: Well, Your Honor, I don't have the site to the markman briefs below right now. [00:21:45] Speaker 00: We did, in fact, submit the Wong Declaration and the remarks accompanying it to the district court. [00:21:49] Speaker 02: Right. [00:21:50] Speaker 02: That's not my point. [00:21:51] Speaker 02: My point is, I don't think, and I'm looking at page seven of your opening [00:21:55] Speaker 02: brief and page nine, which just refers back to page seven. [00:21:59] Speaker 02: Page seven on the prosecution history paragraph does nothing but quote, I guess, a piece of long declaration seven. [00:22:09] Speaker 02: It doesn't rely on anything about what Continental said about that at the pages that you decided. [00:22:17] Speaker 00: I believe we did fairly point to that. [00:22:20] Speaker 00: And as part of the joint appendix of page 2069, I'm going to quote, [00:22:24] Speaker 00: Paragraph 7, this is the applicant's statement to the examiner. [00:22:27] Speaker 00: Paragraph 7 explains how this would allow the etching process to result in the desired cavity structure. [00:22:34] Speaker 00: As such, the language of claims 1, 2, 14, 16, and 18 is definite. [00:22:39] Speaker 00: So the applicant said in relying on paragraph 7. [00:22:41] Speaker 00: Now paragraph 7 of that Wang Declaration refers to performing two separate swell and etch steps. [00:22:47] Speaker 00: There's a couple of things I would say. [00:22:49] Speaker 00: Each and every claim before the patent office at that time was a product claim. [00:22:55] Speaker 00: Every one. [00:22:56] Speaker 00: They were article manufacturer claims. [00:22:58] Speaker 00: The Wong Declaration was referring to this double etching process as a way of explaining why product claims were definite. [00:23:06] Speaker 00: That was the argument made to the examiner by the applicants using the declaration for support. [00:23:11] Speaker 00: That's the first point. [00:23:13] Speaker 00: The second point is [00:23:14] Speaker 00: Three of the claims that were in the application at that time explicitly referred to first and second etching. [00:23:20] Speaker 00: Those were not the claims that the Wong Declaration paragraph seven were directed to. [00:23:25] Speaker 00: Those were not the claims that the applicants were submitting that declaration in support of only one, two, 12, 14 and 16. [00:23:33] Speaker 02: And that's because the examiner said you have this weird phrase here about use of non homogeneity in etching. [00:23:41] Speaker 02: And I don't know what that means. [00:23:42] Speaker 02: And Wong came back and said, Oh, let me explain it to you. [00:23:46] Speaker 02: We, [00:23:46] Speaker 02: We can dig a little bit out and then we can dig a little bit more out, but it's only, it's not presented as limiting the definition just as teaching the examiner what non-homogeneity has to do with getting the ultimate tooth structure. [00:24:06] Speaker 00: I respect your honor. [00:24:07] Speaker 00: I think that he was explaining why this has definite meaning by specific reference to double etching. [00:24:12] Speaker 00: And he was doing so with respect to claims that did not recite double etching. [00:24:16] Speaker 00: There were other claims that were cited double etching. [00:24:18] Speaker 00: So the expert declaration submitted by Continental Circuits at that time is entirely consistent with the district court's rationale in this case. [00:24:27] Speaker 00: The district court found that the products needed to be created using a particular process based on unequivocal statements in the specification. [00:24:36] Speaker 00: They had an expert who submitted a declaration during prosecution. [00:24:39] Speaker 00: He said exactly the same thing with respect to product claims that did not recite double etching. [00:24:46] Speaker 00: He said, even those product claims require a process that involves double-edging. [00:24:50] Speaker 00: So the expert declaration basically... Well, except, no, he didn't say that. [00:24:53] Speaker 02: He didn't say they require it. [00:24:55] Speaker 02: He said, you, the examiner, have said, I don't understand what this non-homogeneity has to do with what's going on here. [00:25:02] Speaker 02: And he says, take a look at what we have described here. [00:25:07] Speaker 02: Now you'll understand why the non-homogeneity gets chunks and big pebbles out. [00:25:13] Speaker 00: You and I respectfully disagree, and this is at page 2074 of the Joint Appendix. [00:25:17] Speaker 00: I'm going to quote, this is from the Wong Declaration, paragraph seven. [00:25:20] Speaker 00: Last sentence, quote, by forming the irregular recesses in the first etch pass, an opening within the dielectric material would be then enlarged in the second etch pass, making the structure shown in figure one and recited in the claims of the McDermott application. [00:25:37] Speaker 00: He was saying that what was claimed in the McDermott application, those product claims, [00:25:42] Speaker 00: were products that were formed using this process. [00:25:44] Speaker 00: There's not a hint in that declaration of any other way of doing it. [00:25:48] Speaker 00: And he's explicitly referring to the claim language in the application as it stood at that time. [00:25:52] Speaker 00: All product claims and the claims that were cited double-xing were not the ones he was referring to. [00:25:57] Speaker 00: So that expert declaration fits hand in glove with what the district court in this case concluded after reviewing the specification, after finding multiple instances where a stark contrast [00:26:09] Speaker 00: Contrary to all known teachings, this is the language of the specification that was distinguishing between the known prior art, which was defined unequivocally as a single pass to smear, not a fast to smear, a single pass to smear. [00:26:23] Speaker 00: The specification said merely increasing the time or temperature is not enough. [00:26:27] Speaker 00: It said going through the steps and then doing it again is what they described as the president mentioned. [00:26:31] Speaker 00: When you choose words like that in a specification, stark contrast, contrary to all known teachings, [00:26:37] Speaker 00: defining the prior art as a single pass to smear, that has meaning. [00:26:41] Speaker 00: It puts the public on notice as to the meets and bounds of the patent application. [00:26:46] Speaker 00: You can't use claim drafting years later to recapture a single pass to smear. [00:26:51] Speaker 02: Years later, I thought it was undisputed, and I think I looked at this, that the original application dating way back to 1997 had some claims that specifically claimed double D smear and others that didn't. [00:27:05] Speaker 02: So the distinction is hardly a kind of a later rising afterthought. [00:27:09] Speaker 00: There were some claims in the original application that did fit with some of the claim differentiation arguments made by the patentee in this case. [00:27:15] Speaker 00: What I meant is all of the patents in this case date from 2004 and beyond when the original application was in 1997. [00:27:22] Speaker 00: All of the asserted claims in this case were seven years or later after the original application. [00:27:28] Speaker 00: But the bottom line is, [00:27:29] Speaker 00: For two separate grounds, disavowal and present invention, when you use language this strong, contrary to all known teachings, in contrast to the prior art, when you define the prior art as a single past to smear and make that distinction, that has meaning. [00:27:44] Speaker 00: It may be the unusual case in which claims are restricted in this fashion, but that's exactly what the district court said. [00:27:50] Speaker 00: There's an exacting standard to be met to restrict claims in this fashion, and it is met here. [00:27:55] Speaker 00: given those statements over and over again, which define the present invention and distinction to a single past to smear, and call that a stark contrast contrary to all known teachings. [00:28:07] Speaker 00: When you use language like that, you can't claim your claims, recapture that same single past to smear described as the known prior art. [00:28:15] Speaker 03: Thank you, counsel. [00:28:15] Speaker 03: As you may notice, your red light is just on. [00:28:19] Speaker 03: Thank you, Your Honor. [00:28:21] Speaker 03: Mr. Lamkin has some rebuttal time. [00:28:29] Speaker 01: Thank you, Your Honor. [00:28:30] Speaker 01: There's nothing in the claims or the language of the claims that suggests a double de-smear process. [00:28:36] Speaker 01: And the dependent claims refute it, because they would be completely surproofless if you read a double de-smear process into it. [00:28:42] Speaker 01: So Intel, in this case, has an extraordinarily heavy burden of showing that there is an express, a clear intent to limit the claims, limit the entire invention. [00:28:52] Speaker 01: Express is probably not. [00:28:54] Speaker 01: Yes. [00:28:54] Speaker 01: I think clear intent is the language, and I should correct myself on it. [00:28:57] Speaker 01: a clear intent based on manifest words of exclusion to limit the whole invention, not particular embodiments, to a double de-smear process. [00:29:06] Speaker 01: And I don't think it's meant here, because every one of those descriptions is a description of a technique that begins on column five. [00:29:15] Speaker 01: And in fact, it actually begins earlier than column five. [00:29:18] Speaker 02: Can you focus again on Wong paragraph seven? [00:29:24] Speaker 02: Wong didn't submit that, at least according to his own words, to address indefiniteness, but you all used it to address indefiniteness. [00:29:34] Speaker 02: And I don't think Intel actually relied on what you said about it, but you used it for indefiniteness. [00:29:42] Speaker 02: So why don't we not read that paragraph to say, you want to know what this means, here's what it means, it means double these here. [00:29:52] Speaker 02: And I think the reason that indefiniteness came up... Giving him your example wouldn't say, here are the boundaries, which is what you want to do when you respond to an indefiniteness rejection. [00:30:02] Speaker 01: Yeah, I think the difficulty is, although the examiner used the word indefiniteness, the actual words he used explain that he didn't really know how anything took advantage of the non-homogeneity in order to prove the cavities. [00:30:14] Speaker 01: Because the quote is, it's not clear as to what is meant by dialectic material being delivered with solid content. [00:30:18] Speaker 01: Another issue. [00:30:20] Speaker 01: And it is also unclear as to how epoxy uses non-homogeneity with the solid content. [00:30:25] Speaker 01: I don't understand how that works. [00:30:27] Speaker 02: And my response was... And then the next sentence is, I don't know how it can create cavities, but there's no can after the first how. [00:30:34] Speaker 02: The first one is how it does. [00:30:36] Speaker 02: And Wong says, let me tell you how it does. [00:30:39] Speaker 02: I mean, he doesn't quite say it, but... Yes. [00:30:41] Speaker 01: I think he's careful by saying it's a technique. [00:30:44] Speaker 01: And in that technique, as you described, it scrapes out once and it scrapes it deeper, and you get the cavities that are claimed. [00:30:50] Speaker 01: But it doesn't say, this is the limitation to it. [00:30:54] Speaker 01: And if given that we have a burden, it has to be very clear. [00:30:57] Speaker 01: It has to be clear intent to limit the invention to a particular set of limitations that are found nowhere in any of the claims, that are defied by the claims, that are defied by the summary of invention, but defied by the fact that in the specification, it really says, [00:31:12] Speaker 01: one technique for producing these, not the technique or the claim technique. [00:31:16] Speaker 01: When you have that kind of language throughout the specification and the claims, it's an extraordinarily heavy burden, and I don't think it's met based on the fact that the examiner used an indefinite as rejection, and we responded saying it's not indefinite, but the real guts of what was going on is the examiner didn't know how it worked, and we had Dr. Wong explain to him exactly how it worked, which was simply meaning you take advantage of what's determinative, non-homogeneity, [00:31:41] Speaker 01: to produce this different structure that was unknown in the prior right. [00:31:45] Speaker 01: We ask that the district court's judgment be reversed. [00:31:47] Speaker 03: Thank you.