[00:00:11] Speaker 03: we should make these friends. [00:00:17] Speaker 03: Next case for argument is 17-2553, Diebold, Nick Storff versus ITC. [00:00:54] Speaker 03: Well, we thank you for your patience because we realize you had to sit through a lot more time than you anticipated. [00:01:00] Speaker 00: No problem, Your Honor. [00:01:02] Speaker 00: If it would please the Court, I am Patrick Flynn. [00:01:04] Speaker 00: I represent Diebold-Nichdorf and I will certainly, I'm optimistic that anything relevant I would have to say can be said within the time limits. [00:01:15] Speaker 00: I want to start with the question of the invalidity of this patent in particular. [00:01:21] Speaker 00: the indefiniteness of the check standby unit claim element. [00:01:28] Speaker 00: The intervener has sent a letter citing the zero-click case, which I think actually gives us a good starting roadmap for looking at this issue. [00:01:41] Speaker 00: Because it tells us the analytic steps we should take, and the first step is [00:01:46] Speaker 00: Look at the claim language to see what structural words are used, if at all, in the claims and how do they inform that decision. [00:01:53] Speaker 00: Look at the specification and the intrinsic record. [00:01:56] Speaker 00: And then, as necessary, look at the extrinsic record. [00:01:59] Speaker 00: And we can do all three of those things in this record. [00:02:02] Speaker 00: And we come up, as I hope to show you, with the inevitable conclusion that check standby unit is claimed in purely functional terms defined only by what it does. [00:02:14] Speaker 00: And the first thing is the word unit. [00:02:16] Speaker 00: As the briefs made clear, the word unit appears in 13 different elements in the claims, all wildly different functions. [00:02:24] Speaker 00: And so the unit itself, and no one seems to argue this, does not compose any particular structure at all. [00:02:30] Speaker 00: It is a nonce word. [00:02:31] Speaker 00: So then we have the other two words, check and standby. [00:02:35] Speaker 00: And if you look at them individually, check isn't the structure. [00:02:37] Speaker 00: It's what the structure is supposed to operate on. [00:02:40] Speaker 00: And standby isn't a structure. [00:02:42] Speaker 00: It's what's supposed to happen to the check. [00:02:45] Speaker 00: So the words of the claim language itself point us strongly in the direction of a purely functional element. [00:02:52] Speaker 00: So we look at the specification. [00:02:55] Speaker 00: The written description contains only two mentions of check standby unit, one in column two and one in column five. [00:03:03] Speaker 00: One of them tells us where it is, and the other one tells them what it does. [00:03:07] Speaker 00: Neither part of the written description tells us what it is. [00:03:12] Speaker 00: And then we look at figure two, which is the figure describing the structure itself. [00:03:18] Speaker 00: The check standby unit is designated as structure 120. [00:03:22] Speaker 00: That is simply pointing to a line on the belt. [00:03:25] Speaker 04: Now, under... But the administrative law judge basically said that it configured to hold the checks for purposes of until they [00:03:36] Speaker 04: we know whether they have to go back. [00:03:39] Speaker 04: And so the administrative law judge said that in the context of the claim as a whole, you could understand that there is structure that would have to hold the checks, would have to be within the beltway, essentially. [00:03:57] Speaker 04: And why isn't that enough? [00:03:59] Speaker 00: Again, respectfully, Judge O'Malley, that's telling us where it is on the belt and what it does, it holds the check. [00:04:06] Speaker 00: Importantly, when you look at that figure, when you look at that belt, that spot on the belt, even if you include the vertical portion or you just simply point where the arrow is pointing, cannot serve that function because the claims require that you're processing a bundle of sheets, including at least the check, and that you're depositing it on that belt at predetermined intervals. [00:04:27] Speaker 00: yet at the same time you're stopping for indefinite period of time one check to decide whether you're going to complete the verification. [00:04:35] Speaker 00: How you accomplish that with simply a belt on the check with all of those checks coming around is not explained in the patent because there is no structure disclosed that can accomplish that. [00:04:45] Speaker 00: Maybe you lift the check off the belt somehow. [00:04:47] Speaker 00: Maybe you have a second belt, but that's not anywhere in the specification. [00:04:53] Speaker 00: So in the briefing, a great emphasis is put by my adversaries [00:04:58] Speaker 00: on the fact that, well, you had extrinsic evidence. [00:05:00] Speaker 00: You have the testimony of Dr. Howard. [00:05:04] Speaker 00: That testimony is found in the appendix at 3219 to 20, and it is one sentence answering in the written direct testimony, question 189. [00:05:14] Speaker 00: And all that answer says is there is structure because of what its function is. [00:05:20] Speaker 00: More specifically, he said that this would, quote, refer to a physical portion of the cast and check depositing module [00:05:27] Speaker 00: that is comprised of well-known components for holding checks in a standby configuration. [00:05:33] Speaker 00: He might as well have said means for holding checks in a standby configuration, because all that testimony tells us is, again, a purely functional definition. [00:05:44] Speaker 04: Well, I mean, we do have an expert saying that we're just talking about well-known components. [00:05:51] Speaker 00: What's interesting is [00:05:53] Speaker 00: Again, he is not saying any specific components at all. [00:05:56] Speaker 00: He's just saying it could be well-known components. [00:05:58] Speaker 00: What would be relevant is if the term check standby unit appeared somewhere in an extrinsic record. [00:06:05] Speaker 00: Like, for example, in the Greenberg case where you had the tent mechanism and there was evidence outside the record that the tent mechanism was something you could find in a catalog labeled the tent mechanism. [00:06:16] Speaker 00: But the record is clear in this case that the term check standby unit appears only in this patent and nowhere else. [00:06:23] Speaker 00: There is no description whatsoever of check standby unit in the extrinsic record as having a meaning before this patent existed or at the time of the existence of this patent. [00:06:34] Speaker 01: Well, but the testimony of, is it Dr. Howard? [00:06:37] Speaker 01: Dr. Howard. [00:06:38] Speaker 01: Dr. Howard was, to the contrary, he says it does have a well-understood meaning, structurally. [00:06:46] Speaker 01: He doesn't elaborate on that, of course, but he says [00:06:49] Speaker 00: And if that were the rule, if you could evade what is otherwise declared in the extrinsic record as clearly limited only by function, is you could evade that by saying, well, I know what the structure is. [00:07:04] Speaker 00: It's well-known components that would perform this function. [00:07:06] Speaker 00: And that's all. [00:07:08] Speaker 00: Then you would, any expert could say that. [00:07:10] Speaker 04: Why is detent mechanism something that we can look up in a technical dictionary [00:07:18] Speaker 04: why is our ability to look it up there any different than our ability to turn to an expert to say everybody knows what this means? [00:07:26] Speaker 00: Again, the expert didn't say everybody knows what a check standby unit is. [00:07:30] Speaker 00: What the expert said is a check standby unit means components that perform this function. [00:07:36] Speaker 00: That's all the experts said. [00:07:37] Speaker 00: So he said well-known components. [00:07:38] Speaker 00: He said certainly. [00:07:39] Speaker 00: And he, when asked to assume it was means plus function, he gave you a wide range of [00:07:46] Speaker 00: of explanations, a trap door, a suction cup, for example, which theoretically under that assumption would be the narrower of the construction. [00:07:54] Speaker 00: But what we still today don't know, even with all the briefings we sit here in this room, is what is a check-standby unit other than what it does? [00:08:04] Speaker 00: What structures that someone could invent tomorrow or a year from now that could perform this function that would not be covered by this claim? [00:08:13] Speaker 00: That's the problem [00:08:15] Speaker 00: your honors, with allowing functional claim language unbounded by a disclosure in the patent. [00:08:23] Speaker 00: Because as the Halliburton court told us, when you allow that, what that means is you are foreclosing people for inventing new ways of performing that function. [00:08:32] Speaker 04: But what about the diagram? [00:08:33] Speaker 04: I mean, doesn't it look from the diagram that there's sort of an off-ramp here that's provided to hold the checks? [00:08:40] Speaker 00: There isn't. [00:08:41] Speaker 00: There is simply a spot on the belt, that vertical spot. [00:08:44] Speaker 00: And again, the problem I mentioned to your honor earlier is that when you have these other bills coming, maybe cash, maybe more checks, they're all coming on this belt and it's moving. [00:08:56] Speaker 00: And it's kind of like that I Love Lucy episode where Lucy's trying to catch up with the chocolates that are coming on. [00:09:03] Speaker 00: You have to have some way to stop that check, get it off the belt to allow the other ones to process at their predetermined time intervals. [00:09:11] Speaker 00: That can't happen without a structure capable of doing that. [00:09:14] Speaker 00: And there is nothing in that diagram, and certainly nothing in the text, that does that. [00:09:21] Speaker 01: How much would, in your view, Dr. Howard have had to say? [00:09:25] Speaker 01: You say he can't simply stand up and say, this is well known, and then sit down, or in effect sit down. [00:09:32] Speaker 01: How much more would be required by way of extrinsic evidence to satisfy you that there actually is [00:09:39] Speaker 01: a well-known set of well-known components, a physical structure consisting of well-known components? [00:09:47] Speaker 00: Well, there are two things. [00:09:48] Speaker 00: The first thing is, if all he says is it's components that perform the function, he is simply restating a functional test. [00:09:54] Speaker 00: But secondly, if he had... But he said a little more than that. [00:09:57] Speaker 01: He said it's a physical structure consisting of those components. [00:10:01] Speaker 00: If he had a catalog from the time of the patent, if he had a reference book [00:10:08] Speaker 00: that he had it, if he had a machine that was labeled check standby unit. [00:10:12] Speaker 00: But this record is absolutely clear. [00:10:16] Speaker 00: This term was coined by this inventor to clearly try to cover any components that would perform this function. [00:10:26] Speaker 00: But in my remaining few minutes, I wanted to turn to the claim scope issues that are addressed that are also an issue in this case, and where we believe there was error by the commission. [00:10:38] Speaker 00: The first one is the question of tripartite detection of overlapping sheets. [00:10:45] Speaker 00: Now, it bears emphasis that this was the claim element that was required for the patent to be issued. [00:10:51] Speaker 00: It was the point of novelty of this invention to use three sensors to detect overlaps, bearing in mind that at the time that amendment was entered, the claim already required the verification unit to detect abnormalities. [00:11:06] Speaker 00: So it was not enough to detect abnormalities to get this claim allowed. [00:11:11] Speaker 00: The claim had to detect overlaps. [00:11:13] Speaker 00: And in this case, there is no dispute whatsoever about what the accused overlap detectors actually do, which is only detect abnormalities that might be an overlap, but might be something else. [00:11:27] Speaker 00: For example, the photosensors simply detect a sheet that is too long. [00:11:31] Speaker 00: It could be two partially overlapped sheets that haven't separated. [00:11:34] Speaker 00: Or, in fact, it could be a single sheet that's like a store coupon that's stuck in the machine by mistake. [00:11:39] Speaker 01: But isn't that still saying that it detects the overlap? [00:11:45] Speaker 01: I mean, for example, PSA tests are notorious for, they're used to detect prostate cancer, and they're notorious for having some significant amount of false positives. [00:12:00] Speaker 01: But nonetheless, you wouldn't disagree that they detect [00:12:03] Speaker 01: prostate cancer, right? [00:12:06] Speaker 01: Even though there are false positives, why isn't that exactly the argument you're making that if there are false positives, as you're suggesting, that it doesn't detect? [00:12:17] Speaker 00: My difference is not detecting false positives. [00:12:20] Speaker 00: Let me give you a slightly different medical example, Your Honor, if I can. [00:12:23] Speaker 00: Imagine a thermometer. [00:12:25] Speaker 00: It can detect body temperature. [00:12:27] Speaker 01: You wouldn't hesitate to stop before you get to your example. [00:12:31] Speaker 01: How about [00:12:32] Speaker 01: You would agree with me that PSA tests, notwithstanding the false positives, detect prostate cancer, correct? [00:12:39] Speaker 00: They detect, in addition to prostate cancer, and nothing else. [00:12:43] Speaker 00: The PSA, an elevated PSA... But suppose they did. [00:12:46] Speaker 01: I mean, suppose they also detected some kind of other non... Let's say an enlarged prostate, for example. [00:12:57] Speaker 01: Okay, yeah. [00:12:57] Speaker 00: Okay. [00:12:58] Speaker 00: BPH or something. [00:12:59] Speaker 00: If you had a patent that said, [00:13:01] Speaker 00: detecting abnormalities in prostate. [00:13:05] Speaker 00: And then the patent examiner said, no, that's not new. [00:13:07] Speaker 00: You say, I need to discover actual prostate cancer. [00:13:11] Speaker 00: And you added an element requiring a detector for detecting prostate cancer. [00:13:15] Speaker 00: Under that circumstance, I would suggest the PSA test wouldn't. [00:13:18] Speaker 00: But let me give you the thermometer example I had. [00:13:21] Speaker 00: Both a common cold and you've got a plague will produce a fever. [00:13:26] Speaker 00: No one would consider a thermometer [00:13:28] Speaker 00: a detector of bubonic plague, it's actually important to know the difference between those two because the remedies and consequences of not addressing it are very severe. [00:13:38] Speaker 00: So when you have an instrument that the patent office said actually has to detect overlaps and not mere abnormalities, detectors that detect species of abnormalities but not distinguishing between them is not respectfully an overlap detector. [00:13:55] Speaker 03: So you're well into your rebuttal. [00:13:57] Speaker 00: I will sit down now. [00:13:58] Speaker 03: So we're going to hear from the other side. [00:14:00] Speaker 03: Thank you. [00:14:05] Speaker 02: Good afternoon, and may it please the court. [00:14:08] Speaker 03: We're going to rely on you. [00:14:11] Speaker 03: You're splitting the time, and you're checking the first half. [00:14:14] Speaker 03: So we're running the clock at 15. [00:14:17] Speaker 03: OK, thank you. [00:14:19] Speaker 02: I mean, the fundamental problem that Diebold has is a lack of proof. [00:14:23] Speaker 02: They have absolutely no evidence, this is respect to the check stand by unit. [00:14:27] Speaker 02: They have absolutely no evidence in the record that one of ordinary skilled in the arts would not understand the structure that connotes the check stand by unit. [00:14:36] Speaker 04: But where is there evidence that one of skilled in the art would understand that? [00:14:39] Speaker 02: The evidence is Dr. Howard's testimony. [00:14:41] Speaker 02: Dr. Howard testified that an ordinary skilled artist would know, would readily understand that the check stand by unit is the escrow. [00:14:50] Speaker 04: But his testimony is all related to what it would do. [00:14:56] Speaker 04: He said that a procedure would readily understand that a structure in ATM that temporarily holds checks, pending the customer confirming the deposit, is the check standby unit. [00:15:06] Speaker 02: Right. [00:15:08] Speaker 02: But he also gave examples of what it could be. [00:15:10] Speaker 04: And that's actually part of my problem, because he had multiple examples. [00:15:15] Speaker 03: And they weren't limiting. [00:15:16] Speaker 03: I mean, the question is, if it's functional claiming, the problem is, or one of the problems is, is that anything that performs the function would come within it. [00:15:29] Speaker 03: And that's problematic. [00:15:30] Speaker 02: This court's case law is clear that it can include a class of structures. [00:15:35] Speaker 02: So what he mentions is a class of structures. [00:15:37] Speaker 02: He mentions a trap door or a drum. [00:15:40] Speaker 02: It's a class of structures. [00:15:41] Speaker 02: But the inquiry always relates to one of ordinary skill in the arts. [00:15:45] Speaker 03: But did he preclude also any structure, even if he didn't cite it as by way of example, did he preclude any structure whatsoever, even if we can't even think about how wide that is, that performs that function as not being covered? [00:16:00] Speaker 02: I'm achieved, I suppose. [00:16:02] Speaker 02: The concern that generally happens with functional claim is foreclosing other check-signed by units, for example. [00:16:09] Speaker 02: This invention is not directed to a check standby unit. [00:16:12] Speaker 02: The inventors do not purport to have invented a check standby unit, a new check standby unit, or even a modified one. [00:16:19] Speaker 03: Respectfully, I don't think you're responding to my question, or maybe I'm just not clear. [00:16:22] Speaker 02: I'm just trying to make a distinction between the cases where the functional claimant is of concern because it forecloses other inventions versus this case here, where the invention is directed to the ability to process checks [00:16:38] Speaker 02: and cash at the same time. [00:16:40] Speaker 02: That is invention. [00:16:41] Speaker 04: Well, then, the problem is that it is a limitation of the claims. [00:16:45] Speaker 02: That's correct. [00:16:46] Speaker 04: They didn't have to mention the check stamp by unit, even if they wanted to have one in there, right? [00:16:50] Speaker 02: I mean, they had to mention it. [00:16:52] Speaker 02: In describing the invention, they had to necessarily describe how the processing takes place. [00:16:57] Speaker 01: Why did they have to have it as a limitation of their claim? [00:17:00] Speaker 01: Presumably, they thought that that was an important feature of the device for purposes, perhaps, of avoiding invalidity. [00:17:10] Speaker 02: It's an element of the claim, so it is important. [00:17:13] Speaker 02: The distinction I'm trying to draw is that the distinction in this court's case is where the court is very concerned about foreclose and future invention. [00:17:21] Speaker 01: But we have never said that if something is, to my knowledge, correct me if I'm wrong, we've never said that a limitation which is less than central core importance to the invention can be claimed in functional [00:17:39] Speaker 02: In this court, it does allow functional claimant. [00:17:42] Speaker 02: In Greenberg, there are multiple cases where the court does allow functional claimant. [00:17:47] Speaker 01: But Greenberg's decision, the decision in Greenberg was that that was structural. [00:17:52] Speaker 01: It wasn't functional, despite the fact that it described the structure by use of a functional term. [00:17:57] Speaker 02: Which is what the commission found here. [00:18:00] Speaker 02: The commission's finding is that it agreed with the ALJ that it is structural. [00:18:06] Speaker 04: Show me in the specification where [00:18:08] Speaker 04: I can see anything that indicates any kind of even. [00:18:14] Speaker 02: There is a patent incorporated by reference and this is an APPX. [00:18:24] Speaker 02: It's an APPX 5583. [00:18:34] Speaker 02: And that is incorporated by reference. [00:18:37] Speaker 02: I'm sorry, 5583? [00:18:40] Speaker 02: 5583, yes. [00:18:41] Speaker 04: I'm talking about the specification. [00:18:44] Speaker 02: Right, this patent is incorporated. [00:18:46] Speaker 02: It's a patent incorporated by reference here. [00:18:51] Speaker 02: And it does show an element 114. [00:18:59] Speaker 02: Temporary standby unit? [00:19:05] Speaker 02: It's actually on the next page, so 5584. [00:19:08] Speaker 02: No, 5585, excuse me, my apologies. [00:19:13] Speaker 02: And it shows the element 114. [00:19:22] Speaker 02: And that element is referred to in the patterns as the temporary standby unit, which is the check standby unit. [00:19:28] Speaker 02: And this pattern is incorporated by reference in this [00:19:31] Speaker 02: In this 235. [00:19:34] Speaker 03: I'm sorry. [00:19:35] Speaker 03: Okay, so that's where you're referring to figure 2A. [00:19:38] Speaker 03: 2A, correct. [00:19:39] Speaker 03: And we're in the specification, does it tell us what 114 is? [00:19:44] Speaker 02: If you go to column, let's quick search. [00:19:48] Speaker 03: The temporary standby unit, is it column four, line 14, is that what you're talking about? [00:19:53] Speaker 02: That's correct, yes. [00:19:57] Speaker 02: So that shows you that it's a structure. [00:20:00] Speaker 04: So slow down, because none of this was in the briefs. [00:20:03] Speaker 02: I mean, the patent is incorporated by reference. [00:20:07] Speaker 02: Where's the incorporation? [00:20:08] Speaker 02: The incorporation is on the 235 patent, and it's on column five, line one to line three through five. [00:20:28] Speaker 02: It mentions the serial number, which is the serial number for this patent by the same intent. [00:20:33] Speaker 04: So what line are we on? [00:20:36] Speaker 02: Column 5, line 23. [00:20:42] Speaker 02: Column 5, line 3 through 6. [00:20:44] Speaker 02: Actually, it really talks about its U.S. [00:20:49] Speaker 02: patent application serial number, which is incorporated herein by reference. [00:21:03] Speaker 02: And that shows structure. [00:21:05] Speaker 02: I mean, the belt also shows structure. [00:21:07] Speaker 02: 120 also suggests that it is structured. [00:21:09] Speaker 01: Well, that's a description of the sensors, right? [00:21:13] Speaker 01: No, I mean, the patent itself... I understand, but this paragraph is a description of the sensors. [00:21:20] Speaker 01: That is correct. [00:21:21] Speaker 02: Right. [00:21:22] Speaker 02: That paragraph describes the tripartite sense. [00:21:26] Speaker 01: So your argument is that even though that paragraph is directed to the sensors, [00:21:32] Speaker 01: The fact that it references the patent application, which matured into this 422 patent, is the structural reference to which we should look for purposes of determining that this is a description of structure. [00:21:51] Speaker 02: Is that right? [00:21:52] Speaker 02: No. [00:21:52] Speaker 02: What I'm saying is that it indicates that the checks end by unit of structure. [00:21:57] Speaker 02: What the commission is relying on is expert testimony. [00:22:00] Speaker 02: The commission didn't rely on this reference. [00:22:02] Speaker 02: The commission didn't mention that. [00:22:04] Speaker 02: What the commission relied on below was the expert testimony of Dr. Howard. [00:22:08] Speaker 01: In your view, would the... Well, never mind. [00:22:15] Speaker 03: Go ahead. [00:22:16] Speaker 03: You're now into your friend's time, so if you want to... [00:22:29] Speaker 05: Thank you, Your Honors. [00:22:30] Speaker 05: May it please the Court? [00:22:31] Speaker 03: We're struggling here. [00:22:32] Speaker 05: I'd like to pick up on the means plus function issue. [00:22:34] Speaker 05: And I think just... How about this incorporated by reference? [00:22:38] Speaker 05: Well, I think what's relevant to that is it shows... It wasn't in either brief. [00:22:43] Speaker 01: It wasn't mentioned in the brief, Your Honor. [00:22:45] Speaker 01: So I assume that at least at the time the briefs were written, you didn't regard it as a very important point. [00:22:50] Speaker 05: Well, it comes up in response to their insistence on the lack of the structure. [00:22:55] Speaker 05: And I think what it's... [00:22:57] Speaker 05: True. [00:22:57] Speaker 05: I think it's... In their opening brief, you didn't respond by saying, ah, but here's the structure. [00:23:02] Speaker 05: And I think why my friend raises it, it's relevant in this sense, is it shows, confirms what a person of ordinary skill in the art would know, which is this is the type of component which would be an escrow unit, which is referred to as a drum escrow unit, which is what Dr. Howard referred to. [00:23:18] Speaker 05: And if I could just circle back just quickly to zero click, because I think that there's two propositions of law this court reaffirmed in that case that dispose of this issue here. [00:23:27] Speaker 05: One is that when claim terms do not use means, there's a rebuttable presumption that there is not impermissible functional claiming going on, which puts the burden on the challenger to come forward and show that there is. [00:23:41] Speaker 05: And then the other is that the essential inquiry, this court said in zero click and it drew from Greenberg, is whether the words of the claim are understood by persons of ordinary skill and the art to have a sufficiently definite meaning as the name for structure. [00:23:56] Speaker 05: And Dr. Howard, in his testimony, answered that question. [00:24:00] Speaker 05: He did it in the written testimony that my friend referred to at 319 to 320. [00:24:06] Speaker 03: Before you start talking about it, what more does his testimony or anything in the record give us to being that the structure is [00:24:17] Speaker 03: defined by the function? [00:24:19] Speaker 03: Is there any structure capable of performing this function? [00:24:23] Speaker 05: Yes. [00:24:24] Speaker 05: And I'll answer that directly. [00:24:25] Speaker 05: He was asked on page 1631 of the appendix in his written testimony about this, referring to 189, which is, what is this check standby unit? [00:24:35] Speaker 05: And he said, I'm quoting, we've talked about many occasion escrow units. [00:24:40] Speaker 05: These are well-known. [00:24:43] Speaker 05: And then he says, these are clearly [00:24:46] Speaker 05: escrow units, well-known units. [00:24:48] Speaker 05: And escrow units, they make something in their brief that if you Google check standby unit, you don't come up with anything. [00:24:56] Speaker 05: But if you Google ATM escrow units, with one click of your mouse, you would buy an escrow unit, which is typically [00:25:04] Speaker 05: a drum-like structure, Dr. Howard. [00:25:06] Speaker 01: We seem to, on both sides, seem to be invoking the internet exception to the record limitation. [00:25:12] Speaker 05: Well, with respect, Your Honor, I mean, the point is that Dr. Howard's the expert here, one in skill and the art. [00:25:16] Speaker 05: He was skilled in machinery, familiar with ATMs, and he knew exactly what they were referring to. [00:25:21] Speaker 01: But did he? [00:25:23] Speaker 01: I mean, it seems to me what he is saying, and this goes back to Chief Judge Prost's question, is that anything that performs this function is satisfactory. [00:25:33] Speaker 01: He didn't exclude anything. [00:25:34] Speaker 01: In fact, my recollection is that he expressly declined to exclude any structure. [00:25:41] Speaker 05: With respect, I would disagree with that, Your Honor. [00:25:43] Speaker 05: When asked about what this was, he said clearly escrow units. [00:25:46] Speaker 05: That's what he said on 1631. [00:25:47] Speaker 05: The questioning about suction cups and trap doors. [00:25:51] Speaker 05: But escrow units doesn't help me. [00:25:53] Speaker 01: I mean, that's just another functional description. [00:25:57] Speaker 05: I don't think it's not, Your Honor. [00:25:59] Speaker 05: I think it's much more akin to a break or a lock [00:26:03] Speaker 05: or a screwdriver, to one of skill in the art. [00:26:05] Speaker 05: And the way to confirm that is Google ATM escrow unit. [00:26:09] Speaker 05: And you will find a specific structure. [00:26:12] Speaker 05: These are drum-like escrow units. [00:26:13] Speaker 01: And you think this patent is limited to that specific structure? [00:26:17] Speaker 05: Well, I don't know that it is. [00:26:20] Speaker 05: But of course, it doesn't need to be limited to a particular structure. [00:26:22] Speaker 05: This court said that in the live-in world, it can be a variety of structures. [00:26:26] Speaker 05: And Mr. Howard did say that drum-like escrow unit on page 1646 [00:26:32] Speaker 05: The machines that issue in this case do have that drum-like escrow unit. [00:26:35] Speaker 05: You can see that on the diagrams on pages 14 and 17 of the brief. [00:26:40] Speaker 04: Are you saying that if the specification simply said drum-like escrow unit, that would be enough? [00:26:47] Speaker 05: I think it would, just like as if it had said a lock or a break or a filter. [00:26:51] Speaker 04: But it doesn't say any of those things. [00:26:53] Speaker 05: Well, what it says is check standby unit. [00:26:55] Speaker 05: And then the question, the essential inquiry into this course of cases is, would a person of skill and the art understand that? [00:27:02] Speaker 05: And the answer from Dr. Howard was clearly yes. [00:27:04] Speaker 05: They would understand it to be an escrow unit. [00:27:06] Speaker 05: Dr. Sturgis was the witness on the other side. [00:27:10] Speaker 05: He never denied that. [00:27:11] Speaker 05: He didn't deny that a person of skill in the art would understand this to be an escrow unit. [00:27:16] Speaker 05: All he said, and this is critical. [00:27:17] Speaker 05: I would urge the court to look at his testimony on this, which is at pages 13, I'm sorry, 35, 67 to 68. [00:27:27] Speaker 05: All he said was the legal conclusion [00:27:32] Speaker 05: that one skilled in the art would agree with respondents' proposed construction of a check standby unit to be a means plus function phrase. [00:27:40] Speaker 05: That's on page 3668. [00:27:43] Speaker 01: But then it goes on to say that the 235 patent fails to provide any corresponding structure for performing the recited function. [00:27:50] Speaker 01: Right. [00:27:50] Speaker 05: But that's answering a different question. [00:27:52] Speaker 05: And I think that really goes to the second step of the inquiry here, which is, assuming it is a means plus function term, [00:27:59] Speaker 05: then where in the specification is the structure? [00:28:02] Speaker 05: But the threshold step is... Two questions are closely associated, I think. [00:28:08] Speaker 05: I think this Court has described it as a two-step inquiry. [00:28:11] Speaker 01: That's true, but it is a very similar inquiry. [00:28:14] Speaker 05: And if at the first step the Court would conclude that one of skill and the art would understand the words of the claim, check standby unit to have definite structure, as Dr. Howard clearly testified they would, and as their expert [00:28:27] Speaker 05: never even denied that specifically, that one of skill and the art would understand this clearly to be an escrow unit, then that's the end of the inquiry under zero click. [00:28:37] Speaker 05: Because they have the burden. [00:28:38] Speaker 05: They have to rebut that presumption. [00:28:40] Speaker 05: And they've got nothing from their expert saying that a person of skill and the art would not understand this to be the commonly used component in escrow unit. [00:28:49] Speaker 05: And I think one of the confusions here is the term escrow unit. [00:28:54] Speaker 05: And that's not a term that I at least was familiar with before this case or that's used in common parlance. [00:29:00] Speaker 05: But to the person of skill in the art, it is. [00:29:02] Speaker 05: And as I say, with one click of the mouse, you can buy an ATM escrow unit. [00:29:06] Speaker 04: But we don't have a patent that claims an escrow unit, right? [00:29:11] Speaker 04: Or a check standby escrow unit. [00:29:14] Speaker 04: We just have a check standby unit. [00:29:16] Speaker 05: Right. [00:29:16] Speaker 05: And that's why you would go as the essential inquiry to the person of skill in the art and ask them, do you understand what this means? [00:29:22] Speaker 05: Does this term have definite meaning to you? [00:29:24] Speaker 05: And the answer from Dr. Howard was unequivocally yes. [00:29:27] Speaker 05: He said, clearly, it means escrow unit. [00:29:30] Speaker 05: And that is something of one of skill in the art would know. [00:29:32] Speaker 05: It's something you can buy over the internet. [00:29:34] Speaker 05: He referred to it as a drum-like escrow at page 1646. [00:29:39] Speaker 05: That happens to be exactly the structure that is used in both of these machines here. [00:29:43] Speaker 05: You can see it in the diagrams on pages 14 and 17 of our brief. [00:29:47] Speaker 05: It's just like a lock. [00:29:49] Speaker 05: It's like a filter. [00:29:50] Speaker 05: It's like a clamp. [00:29:53] Speaker 05: If the patent here had said, use a wood fastening device, and a person of skill in the art came forward and said, I know exactly what that is. [00:30:01] Speaker 05: That's a screw. [00:30:02] Speaker 05: I think that would be the end of the inquiry. [00:30:04] Speaker 05: And that's basically what Dr. Howard testified to here. [00:30:07] Speaker 01: What do you say about the language from Williamson that refers to a similar argument that the expert testifying as a person knowledgeable in the art [00:30:21] Speaker 01: The court said the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification. [00:30:28] Speaker 05: I think a couple of things, Your Honor. [00:30:29] Speaker 05: One, I think Dr. Howard's testimony is more specific here in terms of the structure, and that was an escrow unit. [00:30:36] Speaker 05: He said that clearly. [00:30:37] Speaker 05: And then the second unrelated thing is that in Williamson, you were talking about computer terms, interface and the like, which is a more abstract, less sort of inherently structural component. [00:30:49] Speaker 05: Here, Dr. Howard was testifying [00:30:51] Speaker 05: about a physical structure, the ATM escrow unit, something that he was familiar with, something that is typically a drum-like escrow unit, which was what he referred to in his testimony. [00:31:02] Speaker 05: And I think here there's no basis for this court to overturn the ALJ's finding on that expert testimony. [00:31:09] Speaker 05: The ALJ heard from both experts. [00:31:11] Speaker 05: Our expert put in testimony as to what a person of skill and the art would understand this to be an escrow unit, clearly a well-known component. [00:31:19] Speaker 05: Their expert was silent on that. [00:31:21] Speaker 05: He didn't deny that a person of skill and the art would understand it to be an escrow unit. [00:31:27] Speaker 05: He didn't deny that that was a well-known component. [00:31:30] Speaker 05: Instead, their expert simply advanced a legal proposition that this was a means plus function term. [00:31:36] Speaker 05: But of course, this court doesn't know any deference to that. [00:31:39] Speaker 05: That's this court's inquiry. [00:31:42] Speaker 05: And the court doesn't need to get to that inquiry, because if the court agrees, as we think it must under the evidence in line of the ALJ's findings, [00:31:50] Speaker 05: that check standby unit does connote a meaning with definite structure because a person of skill in the art would understand that to be an ATM escrow unit, something you could buy off the internet with one click, then that's the end of the inquiry. [00:32:04] Speaker 05: There's definite structure, just as if the patent had referred to a lock, a clamp, or a break. [00:32:09] Speaker 05: If the court has no further questions, we urge it to affirm the commission's determination. [00:32:14] Speaker 05: Thank you. [00:32:15] Speaker 05: Thank you very much. [00:32:19] Speaker 00: I have just a couple of very brief observations. [00:32:22] Speaker 00: To the extent that it's relevant, the check standby unit was added as a limitation during prosecution. [00:32:27] Speaker 00: So it was not something that was there as a side issue. [00:32:31] Speaker 00: And with respect to the overall invention, which is the notion of trying to process a bundle that includes at least a check, the obvious problem of how you handle the deposit of a check in the midst of handling all bundles of things, the check standby unit is an essential part of that problem. [00:32:45] Speaker 00: I want to turn to this continued use of the word escrow and make a couple of observations about it. [00:32:50] Speaker 00: One thing Judge O'Malley pointed out, it's not in the patent, it's not in the claim. [00:32:54] Speaker 00: They did not claim an escrow unit. [00:32:57] Speaker 00: They claimed a check standby unit because they clearly wanted to claim something more than a drum-like structure. [00:33:03] Speaker 00: Indeed, there is no evidence in the record that the drum-like structures you can buy on the internet now were even known or invented at the time of this patent. [00:33:11] Speaker 00: What this inventor may well be trying to do is to claim [00:33:15] Speaker 00: the drum structures that he didn't invent, because they're actually fairly elaborate. [00:33:19] Speaker 00: They allow you to put a number of checks on at the same time, and then decide to pull only one out while leaving all the others. [00:33:26] Speaker 00: They're fairly sophisticated devices. [00:33:28] Speaker 00: There isn't a shred of evidence that this inventor invented that. [00:33:31] Speaker 00: He shouldn't be allowed to claim it. [00:33:34] Speaker 00: And when you look, I do urge you to look at Dr. Sturgis' testimony. [00:33:38] Speaker 00: He does more than stay that recite the legal standard. [00:33:42] Speaker 00: He specifically says this term does not connote [00:33:45] Speaker 00: specific structure. [00:33:46] Speaker 00: Thank you, Your Honor. [00:33:47] Speaker 03: Thank you. [00:33:48] Speaker 03: We thank both sides and the cases.