[00:00:00] Speaker 05:
17-1909

[00:00:39] Speaker 05:
Mr. Gunter, you may proceed.

[00:00:51] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:00:53] Speaker 02:
The District Court erred in holding that the asserted claims were not entitled to their earliest effective filing date.

[00:01:01] Speaker 02:
At the lower court level, defendants raised this issue on summary judgment.

[00:01:06] Speaker 02:
And they said that the asserted claims extended the scope of the disclosure of the earliest application.

[00:01:13] Speaker 02:
They raised this on four specific grounds.

[00:01:17] Speaker 02:
First, claims that were not limited to a system that required a washer.

[00:01:22] Speaker 05:
Can you point to the 209 application where it describes a washerless type assembly?

[00:01:29] Speaker 02:
Yes, Your Honor.

[00:01:31] Speaker 02:
I would point to, I believe, the 301 application is the earliest application.

[00:01:36] Speaker 02:
And I would guide the court's attention to figure 41 of the 301 application.

[00:01:42] Speaker 05:
And that is at- You're looking to claim priority to the 209 application, right?

[00:01:48] Speaker 02:
We are looking to get to the earliest application, which is the 301 application.

[00:01:53] Speaker 02:
It's filed in 2009.

[00:01:56] Speaker 02:
This is the application that- OK.

[00:02:02] Speaker 03:
2297 in the record, figure 41?

[00:02:05] Speaker 02:
Yes, Your Honor, figure 49.

[00:02:06] Speaker 03:
And there was an argument below that this was incomplete drawing, et cetera, et cetera?

[00:02:16] Speaker 02:
That was raised by defendants below.

[00:02:18] Speaker 03:
I didn't understand you on appeal to be arguing so much that figure 41 doesn't disclose a washerless application, but that the question of whether or not the structure that would receive it

[00:02:31] Speaker 03:
This goes to the Tronzo issue.

[00:02:34] Speaker 03:
Yes, Your Honor.

[00:02:36] Speaker 03:
Maybe I'm wrong.

[00:02:37] Speaker 03:
Do you still maintain the argument, the factual argument, that Figure 41 shouldn't be taxed because it's incomplete?

[00:02:46] Speaker 02:
We do not believe Figure 41 is incomplete.

[00:02:49] Speaker 02:
We believe that to the extent a washer was required in Figure 41, it would have been shown.

[00:02:54] Speaker 02:
So we believe Figure 41 shows an embodiment in which no washer is required.

[00:03:00] Speaker 02:
We believe this is substantiated again in the corresponding text for Figure 41.

[00:03:07] Speaker 02:
That's at Appendix 2225, in which there was no washer described in the corresponding text.

[00:03:14] Speaker 02:
Now, I think to get to your point, Your Honor, about the Tronzo exception, we equally believe that the Court erred in its understanding and application of the Tronzo exception.

[00:03:26] Speaker 02:
We believe whenever the

[00:03:29] Speaker 02:
Tronzo cases looked at and applied correctly here.

[00:03:32] Speaker 02:
We believe that that case does not apply.

[00:03:34] Speaker 03:
What I really understood you to be saying was you thought this was the Tronzo issue.

[00:03:39] Speaker 03:
You should not have been taken off on summary judgment.

[00:03:41] Speaker 03:
You were entitled to a trial on that issue.

[00:03:44] Speaker 02:
I believe that as an initial matter, I believe that is correct.

[00:03:47] Speaker 02:
I think first and foremost, as a predicate issue, Tronzo was not raised by defendants in their summary judgment.

[00:03:54] Speaker 02:
And we did not have a chance to respond to that specific issue.

[00:03:57] Speaker 03:
Well, the judge knew about it because it shows up in his opinion.

[00:04:00] Speaker 02:
That's correct.

[00:04:01] Speaker 02:
That's correct, Your Honor.

[00:04:02] Speaker 03:
And so on appeal... But even if it is in play, you'd say that the decision should come off after a trial because you want to argue that this is an inappropriate setting in which to apply Tronzo.

[00:04:14] Speaker 02:
That is correct, Your Honor.

[00:04:15] Speaker 02:
We believe that the Tronzo exception does not apply to the facts of this case.

[00:04:20] Speaker 04:
In your opposition, in summary judgment,

[00:04:23] Speaker 04:
on page 40, appendix 3384, there's a confusing footnote that says plaintiff is no longer pursuing infringement allegations against Echo Fasten's Echo 65 system or Echo 44 RNDD system and disputes any allegation of invalidity based on those products.

[00:04:47] Speaker 04:
In asserting your infringement claims initially,

[00:04:51] Speaker 04:
you believe those products caught all the elements of the asserted claims.

[00:04:57] Speaker 04:
And there's case law that says that factual assertions in pleadings are considered judicial admissions.

[00:05:07] Speaker 04:
Isn't that footnote a judicial admission?

[00:05:10] Speaker 02:
So we would say that the footnote goes against a judicial admission.

[00:05:15] Speaker 02:
So to the extent these products and claims were at issue in our infringement contentions,

[00:05:21] Speaker 02:
We were required, this case was in a slightly unusual procedural posture at the lower court.

[00:05:26] Speaker 02:
We had not yet entered claim construction and defendant wanted to go to an early summary judgment.

[00:05:31] Speaker 04:
How is it not a judicial admission of invalidity with respect to those, with respect to the claims asserted against those two products?

[00:05:39] Speaker 02:
Because those products are no longer at issue in this litigation.

[00:05:42] Speaker 02:
Those allegations of infringement are no longer at issue.

[00:05:45] Speaker 02:
We were required by the court.

[00:05:47] Speaker 03:
It was withdrawn, right?

[00:05:50] Speaker 02:
We were required by court order before the summary judgment process began to let the defendants know what claims and products were at issue.

[00:05:58] Speaker 02:
We did that in writing.

[00:05:59] Speaker 02:
And then at the summary judgment level, in writing again, in our responsive pleading, we once more stated that the ECO 65 product was not at issue, and we disputed infidelity based on that.

[00:06:13] Speaker 02:
We believe, therefore, these allegations were never at issue with this litigation.

[00:06:20] Speaker 03:
I think getting back to- Is there any case law that resolves that issue, or would this be the case?

[00:06:28] Speaker 03:
I mean, you're basically arguing that, yes, there is, as Judge Walgus pointed out, there's a statement that's made in your footnote that is potentially pertinent and potentially damaging to your case.

[00:06:40] Speaker 03:
And your argument is that it shouldn't be held against you because the claims were not asserted.

[00:06:47] Speaker 02:
Yes, Your Honor.

[00:06:48] Speaker 03:
Right.

[00:06:48] Speaker 03:
So what I'm saying is,

[00:06:50] Speaker 03:
I couldn't find a case that supports your argument, nor could I find a case that was against you.

[00:06:58] Speaker 02:
And that may be the case you're on the weak side of that.

[00:07:00] Speaker 03:
This issue wasn't litigated below, right?

[00:07:03] Speaker 02:
This issue was not litigated below.

[00:07:05] Speaker 03:
If the cash went back, it would clearly be litigated.

[00:07:08] Speaker 03:
Correct.

[00:07:09] Speaker 03:
And then we would get an answer to the question of whether or not you are able to walk away from the admission on the grounds that the claims were not actually in suit.

[00:07:21] Speaker 02:
Yes, Your Honor.

[00:07:22] Speaker 02:
I would point the court's attention.

[00:07:23] Speaker 03:
We did cite a case... Presumably you would argue that we shouldn't resolve that issue on appeal.

[00:07:28] Speaker 02:
I would agree, Your Honor.

[00:07:29] Speaker 02:
I think that that is not the subject of this appeal at this time.

[00:07:35] Speaker 02:
I would point the court's attention to the Kedeli v. United Trans-U.S.

[00:07:38] Speaker 02:
case.

[00:07:38] Speaker 03:
So a litany of time bombs that are thrown at you from your adversary, right?

[00:07:45] Speaker 03:
Yes.

[00:07:45] Speaker 03:
About whether the chain is broken, other issues?

[00:07:48] Speaker 02:
That's correct.

[00:07:49] Speaker 03:
Presumably those issues would be live if the case went back.

[00:07:53] Speaker 02:
That's correct, Your Honor.

[00:07:55] Speaker 02:
There were a series of arguments raised at the lower court level.

[00:07:58] Speaker 02:
And if I could turn to those... Why didn't you raise the arguments then?

[00:08:03] Speaker 02:
Pardon me, Your Honor?

[00:08:04] Speaker 05:
Why didn't you make the type of response that you're now looking for us to...

[00:08:11] Speaker 05:
to make for you on your behalf.

[00:08:13] Speaker 02:
I believe in our summary judgments of the the defendants raised on four points that there were lack of written description of the earliest application.

[00:08:20] Speaker 02:
Right.

[00:08:20] Speaker 02:
So in our summary judgment response, we attempted to tackle those issues.

[00:08:23] Speaker 03:
But you didn't respond to the question that Judge Wallach put to you here below because the issue hadn't been put to you.

[00:08:30] Speaker 03:
That is correct.

[00:08:31] Speaker 03:
I mean, the notion that you should be taxed for anticipation of your products because of a charge of alleged infringement charge, right?

[00:08:39] Speaker 02:
So defendants raised that in their summary, in their opening summary judgment brief, which is in response, Your Honor Judge Wallach, that was the footnote in response to that argument on the summary judgment level.

[00:08:50] Speaker 02:
And so that was the first time that we said, or excuse me, we said in writing before summary judgment began, and then once again in summary judgment response, we said these issues are, these products are no longer in suit.

[00:09:05] Speaker 03:
And we don't have a ruling from the district court on that issue.

[00:09:08] Speaker 03:
We do not have a ruling.

[00:09:11] Speaker 02:
So if I could point the court's attention back to what I do think that the appeal turned on, and that was the issue of whether... So we don't have a different court opinion also on the recessless claims, right?

[00:09:24] Speaker 02:
That is correct.

[00:09:25] Speaker 03:
And on the judicial end, the anticipation issue the patents were filed too late or to break the chain.

[00:09:37] Speaker 03:
Those issues weren't resolved?

[00:09:38] Speaker 02:
The court did not dispel.

[00:09:39] Speaker 02:
I believe you're referring to the immersion.

[00:09:40] Speaker 02:
uh... issue the court not to sign an immersion issue.

[00:09:46] Speaker 02:
What the court did hold is that the assertive claims to the extent ultimately they found that there was a washerless disclosure however they erred in determining that the washerless disclosure should be limited to the exact bracket type seen in figure 41.

[00:10:00] Speaker 03:
Well that's because of Tronzo.

[00:10:02] Speaker 02:
And that was in part because of Tronzo.

[00:10:05] Speaker 02:
We would argue that Tronzo does not apply and also we would point the court's attention to

[00:10:10] Speaker 02:
The explicit text, once again, this is at 2225.

[00:10:14] Speaker 02:
And this is talking about combinations, sub-combinations, and permutations that are within the scope of the adminsuit.

[00:10:22] Speaker 02:
So we have here, this is not... Boy, the boilerplate language.

[00:10:25] Speaker 02:
We would argue that it's not boilerplate.

[00:10:27] Speaker 02:
This isn't a chemical case.

[00:10:29] Speaker 03:
This is a case, it's a mechanical case with relatively few components, mainly at... That'd be a fact question for persons of ordinary skill in the art to argue back and forth about.

[00:10:39] Speaker 02:
Yes, sir.

[00:10:40] Speaker 02:
And we believe that.

[00:10:41] Speaker 03:
That goes further to your argument that summary judgment was inappropriate here.

[00:10:45] Speaker 02:
Yes, Your Honor.

[00:10:46] Speaker 02:
If the standard was a genuine issue of material fact, we believe that that paragraph is an expressed disclosure of combinations and sub-combinations, which would allow one for nearest to the art to realize that the inventor at the time of filing knew that you could change these brackets amongst each other.

[00:11:03] Speaker 04:
The appellees argue that you never presented arguments on the genus species distinction

[00:11:10] Speaker 04:
for the washerless assemblies below.

[00:11:13] Speaker 04:
Did you?

[00:11:15] Speaker 02:
No, Your Honor.

[00:11:15] Speaker 02:
That was an issue that was raised for the first time by the district court in rendering its opinion.

[00:11:23] Speaker 02:
And that's why in our opening brief, we tried to address that specific argument.

[00:11:29] Speaker 02:
We believe that the general rule, the BillStat rule that a species may be enough to disclose for a later genus would apply here.

[00:11:38] Speaker 02:
Again, if appropriately applied to the factors of this case, we do not believe the Tronzo exception applies.

[00:11:45] Speaker 02:
There are other exceptions to the general rule, one of which is unpredictability.

[00:11:50] Speaker 02:
And again, we don't believe that the unpredictability exception applies.

[00:11:54] Speaker 03:
Our case law certainly suggests that it's a more thorough review than the district court gave you.

[00:12:00] Speaker 02:
I would agree.

[00:12:00] Speaker 03:
On that particular issue.

[00:12:02] Speaker 03:
I would agree, Your Honor.

[00:12:03] Speaker 05:
You're into your rebuttal time, would you like to reserve it?

[00:12:06] Speaker 02:
If I could just raise one other quick point.

[00:12:08] Speaker 05:
Sure.

[00:12:09] Speaker 02:
I would like to touch on the base bracket having at least one mounting hole.

[00:12:14] Speaker 02:
That was one other issue that the court below found that the claims were not supported by the earliest application.

[00:12:21] Speaker 02:
We would ask that the court look at the express language of the patents, and that is a base bracket having at least one mounting hole.

[00:12:30] Speaker 02:
And if we go back to the earliest patent application, there are numerous examples of a base bracket having at least one mounting hole.

[00:12:38] Speaker 02:
So for example, figures 20, 21, 40, and 41 are all examples of the base bracket having at least one mounting hole.

[00:12:47] Speaker 02:
We therefore think we're supported on that.

[00:12:52] Speaker 02:
And the last thing I would like to raise in my opening argument would be the disclosure of the Kreizmann Declaration

[00:12:59] Speaker 02:
This is the only decoration in the record of one of ordinary skill in the art.

[00:13:05] Speaker 02:
The appellees have not disputed that he is one of ordinary skill in the art or that he qualifies as one.

[00:13:11] Speaker 02:
And they also have not rebutted his testimony.

[00:13:13] Speaker 03:
Judge said it was conclusory.

[00:13:15] Speaker 02:
That is correct.

[00:13:15] Speaker 02:
The judge said it was conclusory.

[00:13:17] Speaker 02:
But we would argue that Mr. Kreisler went through a paragraph by paragraph analysis of the four forms raised by the defendants and found that there was a disclosure of a washerless system

[00:13:29] Speaker 02:
a system without a recess, a system that would allow for a Washington people or the flash.

[00:13:34] Speaker 03:
But he didn't talk about the trans issue because it hadn't been raised.

[00:13:38] Speaker 02:
Yes, your honor.

[00:13:39] Speaker 02:
And with that, I will pass the podium.

[00:13:43] Speaker 05:
Okay.

[00:13:47] Speaker 05:
Mr. Davis.

[00:13:48] Speaker 01:
Good morning, police court.

[00:13:56] Speaker 01:
There's no dispute that

[00:13:58] Speaker 01:
All of those claims are invalid, if not entitled to the 2009 application, filing a provisional application.

[00:14:05] Speaker 01:
As to the Figure 41 issue, it absolutely is an incomplete drawing.

[00:14:09] Speaker 01:
I think we established that in the briefing and tried to illustrate that fact.

[00:14:14] Speaker 01:
Bracket 1700 in Figure 41 is illustrated in other figures as having an oblong hole.

[00:14:21] Speaker 04:
How do we get around the fact that

[00:14:23] Speaker 04:
You did not explicitly argue that the washerless embodiments in the 2009 application were inadequate because they only disclosed use of bracket 1700.

[00:14:37] Speaker 01:
The district court ruled on the issue that defendants raised below.

[00:14:42] Speaker 01:
And that was the district court correctly found that D3 had claimed too broadly.

[00:14:48] Speaker 01:
And the reason for that is that I know what they did.

[00:14:52] Speaker 04:
Isn't this a case where D3 is right to hear arguments against it and have an opportunity to respond, having been satisfied?

[00:15:01] Speaker 01:
No, Your Honor, I don't think so.

[00:15:02] Speaker 01:
They had the opportunity to respond at the hearing.

[00:15:05] Speaker 01:
They could have raised issue with the district court's ruling below.

[00:15:10] Speaker 01:
And this issue was squarely in front of the court as to whether embodiments were claimed.

[00:15:17] Speaker 01:
that do not require a washer, we call them the washerless embodiments that are covered by the claims, but we're not disclosing the application.

[00:15:25] Speaker 01:
And one aspect of that is D3 has set forth its position very clearly on appeal, more clearly on appeal than it did below, that in its blue brief at pages 30 and 31, it clearly takes a position that figure 20 embodiments are

[00:15:45] Speaker 01:
claimed both with and without a washer.

[00:15:47] Speaker 01:
The 2009 application and all subsequent applications are very clear that those particular embodiments require a washer to seal, to keep out water, and also they have a recess to protect the washer from the elements.

[00:16:03] Speaker 01:
The 2009 application identified two problems with roof mount assemblies that it was purporting to solve.

[00:16:11] Speaker 01:
One of those problems

[00:16:13] Speaker 01:
was that water could get into the assembly through the hole in the top of the flashing.

[00:16:18] Speaker 01:
The other problem was implied that the washer could deteriorate by being exposed to the elements and so the 2009 application stated that the washer is protected from the elements and it did that by encapsulating the washer above the flashing in a recess.

[00:16:34] Speaker 01:
And a third problem was identified in later applications and that was that

[00:16:39] Speaker 01:
Dielectric effects could be reduced or eliminated by use of the washer, because it could separate components of the roof mount assembly made of different materials.

[00:16:48] Speaker 01:
And all three of those problems relating to roof mount assemblies all revolve around including the washer on top of the flashing.

[00:16:55] Speaker 01:
No other solution was ever disclosed or suggested in any of the applications for the problems that these roof mount assemblies purported to solve.

[00:17:04] Speaker 01:
And that was the issue squarely before the district court

[00:17:07] Speaker 01:
Are they entitled to claim any embodiment without a washer?

[00:17:10] Speaker 01:
And that was exactly the defendant's position.

[00:17:13] Speaker 01:
Any embodiment that is claimed without a washer is beyond the scope of the disclosure.

[00:17:18] Speaker 04:
If we agreed with the district court on the argument you're making now, would we have to address the arguments about later applications breaking the chain record?

[00:17:32] Speaker 01:
No.

[00:17:32] Speaker 01:
You would not have to address that argument.

[00:17:34] Speaker 01:
The washerless argument.

[00:17:36] Speaker 01:
It goes to all but two asserted claims, and the other two claims, 655 Patent Claim 8 and 339 Patent Claim 4.

[00:17:45] Speaker 01:
There's no dispute.

[00:17:46] Speaker 01:
Those claim a washer underneath the flashing, and that was never disclosed in any of the applications until it was first claimed in 2013.

[00:17:54] Speaker 01:
A washer above and below the flashing is arguably disclosed in the district court opinion in a 2012 application, but that's too late.

[00:18:02] Speaker 01:
It's undisputed if they don't get the 2009 date

[00:18:05] Speaker 01:
All the claims are invalid.

[00:18:06] Speaker 01:
Now, if I might address briefly.

[00:18:12] Speaker 03:
Even if we were to affirm on the washer below and on the long haul, you still need the washerless in order to wipe out all the claims.

[00:18:24] Speaker 03:
In order for you to prevail in knocking out all the claims on written description issues, you need us to agree with you that the

[00:18:34] Speaker 03:
application doesn't support Washerless, which means we have to affirm the judge's reading on Tronzo.

[00:18:42] Speaker 01:
That would be sufficient, Your Honor.

[00:18:44] Speaker 01:
However, there are other paths by which the defendants would still prevail on appeal.

[00:18:50] Speaker 01:
First, the district court's analysis under Tronzo, certainly the defendants raised Tronzo as a case, but the analysis was slightly different.

[00:18:59] Speaker 01:
I admit that the defendants proposed in their motion.

[00:19:03] Speaker 01:
Under either analysis, it's fully supported in the record on wash lists.

[00:19:06] Speaker 01:
And the court was asking earlier about the 2007 eco-fasting system.

[00:19:11] Speaker 01:
And that's dispositive of all claims, in our view.

[00:19:13] Speaker 05:
Does the applicability of the expert declaration, is it affected by whether or not Tronzo applies?

[00:19:22] Speaker 01:
No, Your Honor.

[00:19:23] Speaker 01:
That declaration was far too conclusory on any issue to provide sufficient evidence to view a summary judgment motion.

[00:19:30] Speaker 01:
And that's true.

[00:19:30] Speaker 03:
But the Tronzo issue hasn't really been litigated.

[00:19:32] Speaker 03:
The question of how ordinary skilled artisans would look at this situation and whether they would find this was complicated, difficult art, or whether they would find it easier to fit this case into the body of law on genus species.

[00:19:49] Speaker 03:
We haven't had any expert declarations on that topic.

[00:19:54] Speaker 03:
Because it comes out of the blue from the district court judge, because once the district court judge decides that figure 41 does

[00:20:02] Speaker 03:
demonstrate an embodiment of washerless, then in order for him to find that the washerless system is not disclosed adequately for written description, he's got to go to the structure.

[00:20:15] Speaker 03:
And that's what he did.

[00:20:16] Speaker 01:
Well, two points in response to that, Your Honor.

[00:20:19] Speaker 01:
First, the judge at the district court incorrectly found the washerless embodiment disclosed.

[00:20:25] Speaker 03:
It's not shown if he had found it.

[00:20:27] Speaker 03:
Leave that to one.

[00:20:28] Speaker 03:
We don't get to Tronzo if you're right about that.

[00:20:30] Speaker 01:
Yeah, correct.

[00:20:31] Speaker 01:
As to the Tronzo issue, it was cited in the motion papers below.

[00:20:35] Speaker 01:
It was absolutely in play.

[00:20:36] Speaker 01:
The issue in Tronzo is disparagement of the prior art and what solutions were proposed in the application.

[00:20:47] Speaker 01:
In this application, it disparaged the prior art in 2009.

[00:20:51] Speaker 03:
Well, you're telling me that as a matter of law.

[00:20:54] Speaker 03:
What the reference teaches is a question of fact under our jurisprudence.

[00:20:58] Speaker 03:
All I'm saying is I didn't see expert declarations going back and forth on what I'm calling the Tronso issue.

[00:21:06] Speaker 01:
Correct, Your Honor.

[00:21:07] Speaker 01:
There were not competing expert declarations.

[00:21:09] Speaker 01:
The 2009 application itself sets forth the problem in its text that it was purporting to solve in express forms.

[00:21:17] Speaker 03:
But you're saying we can resolve.

[00:21:19] Speaker 03:
You and I don't have to waste your time over this.

[00:21:22] Speaker 03:
You're saying that this court ought to answer the question as a matter of law, whether or not the judge was right on his view of Tronzo, as opposed to sending it back and allowing that issue to be ventilated in front of the jury.

[00:21:36] Speaker 01:
Correct.

[00:21:37] Speaker 01:
That would be one path to affirming the judgment below.

[00:21:40] Speaker 05:
Well, isn't that important?

[00:21:41] Speaker 05:
Because if the court was correct in its reliance on Tronzo, then perhaps there's

[00:21:48] Speaker 05:
support for the decision, for the disregard of the expert declaration.

[00:21:54] Speaker 05:
If the district court was wrong with respect to Tromso, then perhaps the expert declaration does raise a genuine issue of material fact.

[00:22:04] Speaker 01:
No, I would disagree with that, Your Honor, because the declaration was conclusory on every point that it purported to address.

[00:22:10] Speaker 01:
has no facts, no analysis, no reasoning behind it.

[00:22:14] Speaker 01:
And under the 10th Circuit Matheson case we cited in this court's jurisprudence following Arthur A. Collins, that declaration is really worth nothing as far as creating an issue of material fact at summary judgment.

[00:22:25] Speaker 01:
The expert addressed none of the issues.

[00:22:28] Speaker 01:
And going back to the Tronzo issue, if I might, that issue was squarely presented below.

[00:22:32] Speaker 01:
And the expert declaration is really one of the patent applicants.

[00:22:36] Speaker 01:
But in any event, he did not

[00:22:38] Speaker 01:
analyze any text in any of the applications when the basis of the motion was the text in these applications discloses only a washless embodiment.

[00:22:48] Speaker 01:
It's only solving a problem in one way of water getting into the assembly, and that is using a washer.

[00:22:54] Speaker 01:
And every application down the line in the chain was more and more precise about the washer being an important and essential and necessary aspect of these roof mount assemblies that were being claimed.

[00:23:06] Speaker 01:
And the expert did nothing on that, didn't even purport to have read the intervening applications.

[00:23:12] Speaker 01:
He did not address the text in the 2009 application, any of the figures in the remaining applications, to try to raise an issue of fact about what a person of skill in the art would take from the text of the 2009 application and each of the following disclosures, which got more and more precise as time went on.

[00:23:32] Speaker 01:
Up to the 2012 application, where the title

[00:23:35] Speaker 01:
Application is a roof not ceiling assembly.

[00:23:38] Speaker 03:
The abstract refers to... Can you point to us in the record the discussions in the motions below dealing with Tronzo?

[00:23:47] Speaker 03:
Do we have that in our record?

[00:23:52] Speaker 01:
Yes, Your Honor, the summary judgment papers are in the record.

[00:24:02] Speaker 01:
So the

[00:24:07] Speaker 01:
Opening Summary Judgment Motion begins at Appendix 2173.

[00:24:11] Speaker 01:
It appears that the original pagination perhaps was overwritten by the appendix page, making it a bit more difficult to find.

[00:24:45] Speaker 03:
This is your summary judgment motion.

[00:24:57] Speaker 01:
Correct, Your Honor.

[00:25:06] Speaker 03:
Page 16 of the motion, so I can find it.

[00:25:10] Speaker 03:
I'm just trying to see where it's cited and for what proposition.

[00:25:16] Speaker 01:
Correct.

[00:25:17] Speaker 03:
And the idea is not just... Which page would it be here in the record?

[00:25:23] Speaker 01:
It appears that the original pagination on the brief was overwritten by the appendix page sites, Your Honor.

[00:25:28] Speaker 03:
No, no, but you should know the appendix page.

[00:25:34] Speaker 03:
The table of authority shows that Tronzo cited once at page 16 without a pen site.

[00:25:41] Speaker 03:
But I can't... Which one is page 16 and what we have?

[00:25:46] Speaker 05:
2193.

[00:25:47] Speaker 05:
2193.

[00:25:51] Speaker 03:
Thank you.

[00:25:58] Speaker 01:
And that specifically is a site to TRONZO.

[00:26:02] Speaker 03:
But it's not in the context of genus species.

[00:26:10] Speaker 03:
Correct, Your Honor.

[00:26:12] Speaker 03:
So your earlier characterization of this was that there was

[00:26:16] Speaker 03:
luxurious discussion of the genus species issues in the briefing, that doesn't appear to be the case.

[00:26:23] Speaker 03:
Is there any other citation?

[00:26:25] Speaker 03:
What did the other side say anything about Tronzo in its response to the summary judgment motion?

[00:26:33] Speaker 01:
I'm not sure that they did, Your Honor, raise that issue.

[00:26:36] Speaker 03:
So I mean, all I'm quibbling about is that it sure looked to me as if Tronzo as an invalidating

[00:26:44] Speaker 03:
proposition here based on the genus species theory was something that the judge no doubt picked up after having read Tronzo, which you cited for a plain vanilla proposition.

[00:26:58] Speaker 01:
Correct, Your Honor.

[00:26:59] Speaker 01:
However, the Tronzo case is just one in a line of cases.

[00:27:03] Speaker 03:
I understand that.

[00:27:05] Speaker 03:
It seems to me that the case law post-Tronzo suggests that if you're going to use a

[00:27:13] Speaker 03:
genus species theory in the written description environment, it's a rather complicated issue, rather than a simple-minded issue.

[00:27:26] Speaker 01:
Perhaps on another record it would be, your honor.

[00:27:30] Speaker 03:
However, in this context, the issue was clearly presented in the motion was do all the bodies... I agree with you that probably the teeter-totter

[00:27:42] Speaker 03:
The rectangle issue is leaning strongly in your favor, but the question is was there enough evidence to take this to the jury on those issues You don't have to you don't have to put up enough evidence to win to get to the jury in our system Fair enough your honor, but there must be enough evidence to get to the jury and here the

[00:28:07] Speaker 03:
Well, that's something that, you know, the issue's now ventilated.

[00:28:10] Speaker 03:
The panel, I'm pretty sure, will address that issue.

[00:28:15] Speaker 03:
And as to the specifics... In order for you to walk away from here with a victory that wipes out all the claims, assuming, for purposes of argument, we don't buy your concession of infringement and validity by anticipation argument, because it wasn't raised below.

[00:28:32] Speaker 03:
If you need to get rid of the washerless claims across the board, you've got to get us to agree that the judge was right on Tronzo, right?

[00:28:45] Speaker 01:
Or agree that right on our analysis.

[00:28:48] Speaker 03:
Or agree that figure 41, well, just tear that page out of the record and throw it away for purposes of your argument.

[00:28:54] Speaker 03:
You think 41 can't be shown to be to disclose a washerless embodiment.

[00:29:00] Speaker 01:
That's correct, John.

[00:29:01] Speaker 01:
We think we've shown that.

[00:29:02] Speaker 05:
You don't raise Tronzo in its effect in the summary judgment order in your response, correct?

[00:29:10] Speaker 01:
In our response to?

[00:29:12] Speaker 05:
In your red brief.

[00:29:17] Speaker 01:
Well, we do address the district court's opinion in the red brief.

[00:29:21] Speaker 01:
And the court should affirm on that ground, Your Honor.

[00:29:27] Speaker 01:
That was addressed.

[00:29:35] Speaker 01:
I believe that page 21 of the red brief is the beginning of that discussion.

[00:29:42] Speaker 01:
Through about page 23, we discussed the ways in which the district court got it right.

[00:29:49] Speaker 01:
And the only genus that the other side has identified.

[00:29:55] Speaker 01:
It's 23.

[00:30:01] Speaker 01:
Page 23 of the red brief?

[00:30:04] Speaker 01:
Yeah, sure.

[00:30:08] Speaker 01:
is your answer.

[00:30:12] Speaker 01:
Correct.

[00:30:12] Speaker 01:
That's part of the section beginning on page 21.

[00:30:16] Speaker 01:
That's where it is located in the record.

[00:30:18] Speaker 01:
And the only genus identified is supposedly on appeal, a genus of washerless assemblies.

[00:30:25] Speaker 01:
That doesn't make any sense in the context of these patents.

[00:30:27] Speaker 01:
And there's no expert or any other evidence to back that up, that washerless assemblies were part of a genus that solved any of the identified problems.

[00:30:34] Speaker 05:
OK, you're out of time.

[00:30:38] Speaker 05:
We thank you for your argument.

[00:30:42] Speaker 05:
Thank you.

[00:30:43] Speaker 05:
Mr. Gunter.

[00:30:48] Speaker 02:
Thank you, Your Honor.

[00:30:49] Speaker 02:
So if I could address just a few of those points.

[00:30:52] Speaker 02:
I think that the basic premise of whether every embodiment requires a washer, I think the answer to that has to be no, because we have a figure 41 in the underlying specification in which there is no washer.

[00:31:05] Speaker 02:
The district court correctly found on that point

[00:31:08] Speaker 03:
Now, I would point the court's attention... Your adversary says even so.

[00:31:14] Speaker 03:
He said we ought to just throw that out because there's nothing in the specification of this 09 application that suggests that you had any interest whatsoever in a washerless assembly.

[00:31:28] Speaker 03:
And I think that... That they say the purpose for which you heard the argument and what's your responsibility.

[00:31:33] Speaker 02:
Correct, Your Honor.

[00:31:34] Speaker 02:
I think we'd cite to specifically 41 in the corresponding text that don't have a required washer, as well as other language in the 301 application that talks about other ways in which a watertight seal is made.

[00:31:46] Speaker 02:
It talks about an overlay shingle.

[00:31:49] Speaker 02:
It talks about glue and tar being used.

[00:31:52] Speaker 02:
Those are all things that contribute to a watertight seal, like a washer would contribute to a watertight seal.

[00:31:58] Speaker 02:
But it doesn't necessarily mean that a washer must be in every single embodiment

[00:32:03] Speaker 03:
Those structures that you just described wouldn't deal with the problem of environmental deterioration of the effectiveness of the seal, right?

[00:32:14] Speaker 02:
If there was a seal present, if there was a washer present.

[00:32:17] Speaker 03:
No, but I mean if you were using glue or something else you'd have a similar environmental deterioration issue, wouldn't you?

[00:32:24] Speaker 02:
According to the 301 specification, that can be used to prevent water entry.

[00:32:29] Speaker 02:
The entire point is you're not wanting water entry.

[00:32:32] Speaker 03:
Your adversarial argument was there's a double-barreled shotgun in your face here.

[00:32:37] Speaker 03:
One is your water issue, but the other is you want to be able to make certain that whatever you're using to protect the water is itself protected from the environment, which means you have a recess.

[00:32:50] Speaker 03:
The recess is for a washer.

[00:32:54] Speaker 03:
A recessless structure that didn't have a washer in it would be problematic, wouldn't it, for the functioning?

[00:33:01] Speaker 02:
Not necessarily.

[00:33:02] Speaker 03:
I mean, if you had a situation, had a recess that didn't have a washer.

[00:33:06] Speaker 02:
Right.

[00:33:06] Speaker 02:
Not necessarily.

[00:33:07] Speaker 02:
I think there could still be a recess that has the ridge R that does not contain a washer.

[00:33:12] Speaker 05:
But under the description of the apparatus in the 2009 application,

[00:33:21] Speaker 05:
That is all about having a washer and all about having a watertight seal.

[00:33:27] Speaker 05:
Does it make sense to disregard all of that on the basis of one figure?

[00:33:33] Speaker 02:
So on that point, I would say that it's clearly not all about only having a washer because there are embodiments without a washer.

[00:33:40] Speaker 02:
And at the lower level, defendants raised some of these statements found in the earliest application and throughout the chain that

[00:33:48] Speaker 02:
there must be, you know, all embodiments must have a washer.

[00:33:51] Speaker 02:
The district court looked at that and appropriately found that's talking about the specific embodiments that those statements are found in context.

[00:33:58] Speaker 04:
How does the 2009 application contemplate the use of types of attachments in a washerless assembly beyond the use of attachment bracket 1700?

[00:34:10] Speaker 02:
I would think at appendix page 2225 there's a site that combinations and sub-combinations and permutations of these

[00:34:18] Speaker 02:
relatively few mechanical components are within the scope of the 301 application.

[00:34:24] Speaker 05:
Any other questions?

[00:34:26] Speaker 05:
We thank the parties for their arguments